Madras High Court
M/S.Mrf Limited vs Powermax Rubber Factory on 1 April, 2024
Author: Abdul Quddhose
Bench: Abdul Quddhose
C.S.No.75 of 2021
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on : 18.03.2024
Pronounced on : 01.04.2024
CORAM:
THE HON'BLE MR. JUSTICE ABDUL QUDDHOSE
C.S.No.75 of 2021
M/s.MRF Limited,
Having Regd. Office at
No.114, Greams Road,
Chennai 600 006, Rep. by its
Senior Manager - Sales Planning,
Mr.George Samuel ... Plaintiff
vs.
1.POWERMAX Rubber Factory,
No.38/10, Thandavarayan Street,
Royapettah, Chennai - 600 014.
2.POWERMAX Tyre,
No.38/10, Thandavarayan Street,
Royapettah, Chennai - 600 014. ... Defendants
PRAYER: Plaint under Order IV Rule 1 Original Side Rules, Sections
28, 29, 134 and 135 of the Trade Marks Act, 1999 and Sections 51, 55
and 62 of the Copyright Act, 1957 and Section 7 of the Commercial
Courts, Commercial Division and Commercial Appellate Division of High
Courts Act, No.4 of 2016 for the following reliefs:
https://www.mhc.tn.gov.in/judis
1/74
C.S.No.75 of 2021
a. A perpetual injunction restraining the Defendants, its distributors,
stockists, servants, agents, retailers, representatives or any other person
claiming under/through them, from in any manner infringing the
Plaintiff's Registered Trade Marks 'Muscleman Device', MRF CHEETAH,
MRF SAHARA, MRF SAFARI, PAHALWAN by the Defendant's by
using the Impugned Muscleman logo and the trademarks CHEETAH,
SAHARA, SAFARI or any other mark identical with and/ or deceptively
similar to the plaintiff's Trademarks/Artistic Works and Muscleman
Device, PAHALWAN, MRF CHEETAH, SAHARA, SAFARI in
connection with the defendant's goods/services and/or business or in any
other manner whatsoever;
b. A perpetual injunction restraining the Defendants, their distributors,
stockist's, servants, agents, retailers, representatives or any other person
claiming under/through them from in any manner using the trademarks
'SAHARA', 'CHEETAH', 'SAFARI' and Impugned Muscleman Device,
and/or any other mark which is identical with or deceptively similar to the
Plaintiff's registered Trademarks/Artistic Works Muscleman Device,
PAHALWAN, MRF CHEETAH, MRF SAHARA, SAFARI so as to pass
off the Defendant's goods or services or business or website as that of the
Plaintiff and/or wrongfully associate themselves with the Plaintiff's
business or in any other manner whatsoever,
c. A perpetual injunction restraining the Defendants, his distributors,
stockists, servants, agents, retailers, representatives or any other person
claiming under/through him from in any manner infringing the Plaintiff's
https://www.mhc.tn.gov.in/judis
2/74
C.S.No.75 of 2021
Copyright in the 'MUSCLEMAN DEVICE' filed as Plaint Document No.1
by using the infringing mark/logo as shown in Plaint Document No. 6 or
any other mark/ device/ artistic work with is identical with/ deceptively
similar or any substantial reproduction of the MUSCLEMAN DEVICE'
on or in connection with the business of the Defendants, or in any other
manner whatsoever.
d. The Defendants be ordered to remove all painted displays, and other
display material being used by the Defendants containing Plaintiff's
Trademarks/Artistic Works, 'MUSCLEMAN Device or any other mark
which is deceptively similar and/or is a substantial reproduction thereof
and surrender to Plaintiff the glow sign board, all goods, labels,
catalogues, dyes, blocks, moulds, screen prints, packing materials, bills,
vouchers, literature, publicity material, letterheads, invoices, challans,
visiting cards, job cards, delivery notes, rate list, sign boards, glow signs,
blow ups and all reprographic materials and other materials bearing any
of the plaintiff's trade marks or artistic works of the Plaintiff.
e. A preliminary decree be passed in favour of the Plaintiff directing the
Defendants to render account of profits made by use of trademarks
'SAHARA', 'CHEETAH', 'SAFARI', PAHALWAN and/or Impugned
MUSCLEMAN DEVICE', and a final decree be passed in favour of the
Plaintiff for the amount of profits thus found to have been made by the
Defendants after the latter have rendered accounts;
https://www.mhc.tn.gov.in/judis
3/74
C.S.No.75 of 2021
f. The Defendants be ordered and decreed to pay to the Plaintiffs a sum
of Rs. 25,01,000/- as special damages for acts of Passing Off and
infringement of Trade Mark & infringement of copyright committed by
the Defendants
g. For costs of the suit.
For Plaintiff : Mr.Madhan Babu
For Defendants : Mr.G.N.Shukumar
JUDGMENT
The suit has been filed for infringement, passing off and for
damages in respect of the registered trademarks "Muscleman Device",
MRF CHEETAH, MRF SAHARA and MRF SAFARI and PAHALWAN.
In so far as MRF CHEETAH, MRF SAHARA and MRF SAFARI which
were earlier used by the defendants are concerned, there is no necessity
for this Court to adjudicate on the said infringement since it is an
admitted fact that the defendants have stopped using the trademark
CHEETAH, SAHARA and SAFARI on receipt of the cease and desist
notice and before filing of the suit.
2. This Court will now have to decide only with regard to the
alleged infringement of the Muscleman Device and the trademark
https://www.mhc.tn.gov.in/judis
PAHALWAN by the defendants. This Court will also have to decide as to
whether the plaintiff is entitled for damages as prayed for in the suit. The
plaintiff claims that they have been using the trademark PAHALWAN
and have been using the logo "Muscleman Device" for a long number of
years. They claim that by the long and continuous usage, they have
obtained reputation and goodwill on their own in the tyre segment
market. According to them, the trademark MRF PAHALWAN and logo
Muscleman Device is exclusively associated only with them. They claim
that their trademarks which the defendants were earlier illegally using
viz., CHEETAH, SAHARA and SAFARI are also associated only with
the plaintiff and no one else.
3. According to the plaintiff, prior to the filing of the suit, they
came to know that the defendants, apart from using the plaintiff's
registered trademarks CHEETAH, SAHARA and SAFARI, which they
have stopped using now, was also adopting illegally the device of body
builder which is deceptively similar to the plaintiff's logo and the said
usage by the defendants is not bonafide and is dishonest. The plaintiff
having obtained trademark registrations for their trademarks and they
having been put to use by the plaintiff for a long number of years right
https://www.mhc.tn.gov.in/judis
from 1961 onwards, claim that the defendants' adoption of the impugned
device of the body builder is not bonafide and is dishonest and is an act
of violation / infringement of the plaintiff's trademark / device since the
defendants have stopped using the trademarks CHEETAH, SAHARA
and SAFARI. The plaintiff continues to prosecute the suit for act of
passing off committed by the defendants for adoption of a deceptively
similar logo / device of body builder, which according to the plaintiff, is
not bonafide and is dishonest. The plaintiff claims that there has been an
unexplained disproportionate jump in the turnover of the defendants after
they started using the body builder device which is deceptively similar to
the plaintiff's device for the manufacture and sale of their tyres.
According to the plaintiff, the arrow found in the defendants' body
builder logo has also been copied and is not the original idea of the
defendants. The plaintiff has also disclosed its sales turnover in the plaint
for the past several years prior to the filing of the suit and they claim that
they have a huge sales turnover. They also claim that they have incurred
huge amount of money towards advertisement cost for advertising their
products under the registered trademark and device and any infringement
/ passing off committed by any of the offenders like that of the
defendants will cause huge loss to them. Under the aforementioned
https://www.mhc.tn.gov.in/judis
circumstances, the suit has been filed by the plaintiff.
4. On the other hand, the defendants contend as follows:
a) There can be no copyright in an idea and copyright violation is
confined to the form, manner and alignment and expression of idea by
the author of the copyrighted work;
b) In case of tyre products, strength of tyre is more important.
Therefore, every tyre manufacturer while advertising, will indicate the
strength of tyre by expressing in their logo / device. According to the
defendants, only to show the strength of their tyres, they have created
their body builder logo. According to the defendants, there is no
deceptive similarity between the plaintiff's device mark and that of the
defendants.
5. According to the defendants, their artist has created the
POWERMAX logo but without the picture of tyre by drawing half size
body builder with robo head. They would categorically contend that the
POWERMAX logo is not deceptively similar to that of the plaintiff's
device mark / logo.
https://www.mhc.tn.gov.in/judis
6. According to the defendants, it is always open to any person to
chose an idea as a subject matter and develop it in their own manner and
give an expression to the said idea by drawing it differently from others.
According to them, similarities are bound to occur because a central idea
for both the plaintiff and the defendants are one and the same but such
similarities by themselves cannot lead to an irresistible inference of
piracy.
7. Since the defendants have not reproduced the artistic work of
the plaintiff, as seen from the plaintiff's Muscleman Device, they have not
committed any infringement / passing off. They also categorically
contend that there is no infringement of copyright as well. The
defendants also state that, the plaintiff's trademarks CHEETAH,
SAHARA and SAFARI which were earlier used by the defendants have
now been stopped on receipt of the cease and desist notice and before
filing of the suit by the plaintiff. The defendants contend that they were
not aware that the plaintiff was the registered proprietor of the
trademarks CHEETAH, SAHARA and SAFARI and were the prior user
and therefore, there was no deliberate attempt on their part with
dishonest intention to use the mark CHEETAH, SAHARA and SAFARI.
https://www.mhc.tn.gov.in/judis
8. Immediately after receipt of the legal notice from the plaintiff's
counsel, prior to the filing of the suit, the defendants claim that they had
stopped using the trademarks CHEETAH, SAHARA and SAFARI.
Therefore, the question of claiming damages from the defendants, as
claimed in the plaint, does not arise.
9. Based on the pleadings of both the parties, the following issues
were framed by this Court on 30.09.2021:
"i) Whether the defendant's copy in the Artistic
work "a Half size Body Builder with Robo head" is
the dishonest adoption of the plaintiff's artistic
work?
ii) Whether the label/mark/logo of the defendant "a
Half size Body Builder with Robo head" is identical
with/deceptively similar to the plaintiff's artistic
work "a man holding tyre with lifted hands"?
iii) Whether the use of the label/mark/logo as
adopted by the defendant in respect of its
goods/service amounts to infringement of the
registered trademark of the plaintiff?
https://www.mhc.tn.gov.in/judis
iv) Whether the use of the label/mark/logo as
adopted by the defendant in respect of its
goods/service amounts to infringement of the
copyright of the plaintiff?
v) Whether the use of the label/mark/logo as
adopted by the defendant in respect of its
goods/service amounts to passing off goods?
vi) Whether the defendant is the proprietor of the
label/mark/logo registered as trademark No.
1458006 as assignee and if so, whether the
defendant is entitled to claim any right over the
same as on date?
vii) Whether the defendant is entitled to use the
label/mark/logo by virtue of the alleged assignment
of trademark No. 1458006?"
10. Before the learned Additional Master II, the plaintiff's Senior
Manager - Sales and Planning, Mr.George Samuel was examined as a
witness (PW1) on the side of the plaintiff. The plaintiff's witness George
https://www.mhc.tn.gov.in/judis
Samuel (PW1) has also filed a proof affidavit, reiterating the contents of
the plaint and also the subsequent developments, with regard to the
trademarks CHEETAH, SAHARA and SAFARI. Through PW1, the
following documents were marked as exhibits:
"Ex.P1 is the original authorization letter dated
16.1.2021.
Ex.P2 is the colour print out copy of plaintiffs
Muscleman Device.
Ex.P3 is the photocopy of Copies of the Certificate
of Legal Use and Registration of the Trade Marks
together with the certificates of renewal of the
marks of plaintiff (Original seen verified and
returned.)
Ex.P4 is the photocopies of the certificates of Legal
Use and Registration of the Trade Marks together
with the certificates of renewal of the marks of
plaintiff. (Original seen verified and returned.)
Ex.P5 is the original Chartered accountant's
certificate showing the sales turnover and
expenditure on advertisement for the past few years
https://www.mhc.tn.gov.in/judis
in respect of business of the plaintiff under the
plaintiff's trademarks dated 08.09.2020.
Ex.P6 is the colour print out copy of Plaintiffs Logo
used in connection of MRF Institute of Driver
Development.
Ex.P7 is the colour print out copy Defendant's
infringing trademark and logo.
Ex.P8 is the colour print out copy of a Screen shot
of the defendant's website
http://www.powermaxtyre.com/homepage.
Ex.P9 is the colour print out copy of Defendant's
catalogue on its website.
Ex.P10 is the photocopy of Legal notice issued by
the plaintiff dated 09.07.2020
Ex.P11 is the photocopy of Reply notice issued by
the defendant dated 18.07.2020.
Ex.P12 is the photocopy of legal notice issued by
the plaintiff dated 04.08.2020.
https://www.mhc.tn.gov.in/judis
Ex.P13 is the original of Power of Attorney dated
22.12.2020."
The plaintiff's witness (PW1) was also cross examined by the defendants'
counsel.
11. On the side of the defendants, Mr.Rajesh Jain, partner of the
first and second defendants was examined as a witness (DW1). He has
also filed a proof affidavit, reiterating the contents of the written
statement. Through DW1, the following documents were marked as
exhibits on the side of the defendants:
"Ex.D1 is the copy of the registered Trade Mark
No.1458006 in class 12 for the mark Power max
(marked with objection on the ground that the same
cannot relied upon in legal proceedings as
mentioned in the certificate itself)
Ex.D2 is the copy of the partnership deed of the
2nd defendant dated 01.04.2010 (Objected on the
ground that no witness has signed)
https://www.mhc.tn.gov.in/judis
Ex.D3 is the copy of the: VAT Registration
Certificate in favour of 2nd defendant dated
21.12.2010. (original verified and returned)
Ex.D4 is the copy of the Assignment Deed dated
02.04.2012 (original verified and returned)
(Objected on the ground that no witness has
signed)
Ex.D5 is the copy of the partnership deed dated
29.06.2015(Original seen verified and returned)
(Objected on the ground that no witness has
signed)
Ex.D6 is the copy of the Assignment Deed dated
30.05.2016 (Original seen verified and returned)
Ex.D7 is the print out copy of the Renewal
Certificate dated 18.03.2017 (Affidavit under
Section 65B Indian Evidence Act filed).
Ex.D8 is the print out copy of the GST Registration
Certificate in favour of 1st defendant dated
20.09.2017 (Affidavit under Section 65B Indian
Evidence Act filed).
https://www.mhc.tn.gov.in/judis
Ex.D9 is the print out copy of the GST Registration
Certificate in favour of 2nd defendant dated
20.09.2017 (Affidavit under Section 65B Indian
Evidence Act filed).
Ex.D10 is the download copy of the Trademark
application No.4278170 dated 29.08.2019
(Affidavit under Section 65B Indian Evidence Act
filed).
Ex.D11 is the downloaded copy of Search
Certificate issued under rule 22(1) Trademarks
rules dated 23.10.2020 (Affidavit under Section 65
B Indian Evidence Act filed).
Ex.D12 is the copy of the Sales Turnover
Certificate of the 1st defendant dated 05.03.2021
(Original seen verified and returned)
Ex.D13 is the copy of the Sales Turnover
Certificate of the 2nd defendant dated 05.03.2021
(Original seen verified and returned)
https://www.mhc.tn.gov.in/judis
Ex.D14 is the print out copy of the plaintiffs Logo
(Affidavit under Section 65B Indian Evidence Act
filed).
Ex.D15 is the print out copy of the defendant's
previous Logo (Affidavit under Section 65B Indian
Evidence Act filed).
Ex.D16 is the print out copy of the defendant's
present Logo (Affidavit under Section 65B Indian
Evidence Act filed).
Ex.D17 is the print out copy of Comparative picture
of plaintiff's Logo and defendant's logo (Affidavit
under Section 65B Indian Evidence Act filed).
Ex.D18 is the original of the present product
catalogue of the defendants.
Ex.D19 is the print out copy of present defendant's
website page containing product list (Affidavit
under Section 65B Indian Evidence Act filed).
https://www.mhc.tn.gov.in/judis
Ex.D20 is the Digital copy of Copyright
Registration Certificate dated 22.10.2021 (Affidavit
under Section 65B Indian Evidence Act filed)."
The defendants witness was also cross examined by the plaintiff's
counsel.
12. Heard, Mr.Madhan Babu, learned counsel for the plaintiff and
Mr.G.N.Shukumar, learned counsel for the defendants.
13. Learned counsel for the plaintiff would submit as follows:
a) Eventhough the defendants have stopped using the trademarks
CHEETAH, SAHARA and SAFARI after issuance of the cease and desist
notice by the plaintiff, prior to the filing of the suit, they have not offered
any proper explanation for having adopted the infringed trademarks
CHEETAH, SAHARA and SAFARI;
b) The plaintiff is the registered proprietor of the trademarks
CHEETAH, SAHARA and SAFARI since 1982, 1982 and 1985
respectively, which is prior to even the incorporation of the defendant's
predecessor in 2003. Admittedly, the trademarks CHEETAH, SAHARA
https://www.mhc.tn.gov.in/judis
and SAFARI which were earlier used by the defendants is identical to the
registered trademarks of the plaintiff and were used in respect of identical
goods viz., tyres.
14. The adoption of the plaintiff's trademarks by the defendants in
respect of identical goods is ex-facie dishonest since the plaintiff obtained
registration of their trademarks in the early 1980s itself and a search of
the trademark register would have certainly revealed their existence. It
can therefore be inferred that there has been a deliberate dishonesty on
the part of the defendants to use the plaintiff's registered trademarks and
therefore, the plaintiff is entitled to claim damages for the said illegal
usage.
15. The defendants have also not satisfied the claim protection as
they have not satisfied the requirement for claiming such protection under
Sections 135 (3) (b) and 135 (3) (c) of the Trade Marks Act, 1999 since
their adoption of the plaintiff's trademarks is dishonest.
16. The answers given by the defendant's witness (DW1) to
https://www.mhc.tn.gov.in/judis
question Nos.32, 34 and 35, during the course of his cross examination,
will reveal that the defendant was well aware of the plaintiff's trademarks
and its reputation since 2003 when the defendant's predecessor was
incorporated.
17. The use of the body builder device by the defendants in respect
of its tyre business will certainly amount to the infringement of the
plaintiff's registered trademark, infringement of the Copyright in the
artistic work contained therein as well as the tort of passing off for the
following reasons:
a) The Muscleman Device mark
has been used by the plaintiff since 1961 and registered under
No.418892 as early as on 09.03.1984 and the said registration is valid
and subsisting till date as seen from Ex.P3;
b) The trademarks PAHALWAN has also been used by the
plaintiff in respect of its tyres for the last several decades and has been
https://www.mhc.tn.gov.in/judis
registered under No.542604 as early as on 28.12.1990 much prior to
even the incorporation of the defendants' predecessor Company in 2003;
c) The said PAHALWAN mark of the plaintiff is also a visual
depiction of the plaintiff's trademark Muscleman Device for the purposes
of Section 29(9) of the Trade Marks Act, 1999;
d) The body builder device mark
used by the defendants is identical / deceptively similar to the plaintiff's
Muscleman Device mark
;
e) The use of Muscleman Device or variation thereof by any person
will amount to infringement as well as would amount to committing the
act of tort of passing off.
https://www.mhc.tn.gov.in/judis
18. The plaintiff's Muscleman (Device) has been put to use by the
plaintiff since 1961. The plaintiff has also obtained registration for its
Muscleman Device in the year 1989 and is being used till date. The
defendants have also admitted that they have put to use the torso of the
muscular man holding his hands which is deceptively similar to the
plaintiff's Muscleman Device only from the year 2003 as seen from their
written statement. From the statement made in the written statement, it is
evident that the plaintiff is the prior user and undisputed owner of the
logo / device of the Muscleman Device.
19. The logo containing a torso of a muscular man holding his
hands up is an essential feature of both the plaintiff and the defendant.
Since the defendants have copied the essential feature for its logo viz., the
torso of a muscular man holding his hands up, the plaintiff is entitled for
the injunction reliefs sought for in the plaint.
20. It is settled position of law, where distinctive elements of
registered trademark consist of or included words, the trademark may be
infringed by the spoken use of those words as well as by the visual
representation attracting- Section 29 (9) of the Trade Marks Act, 1999.
https://www.mhc.tn.gov.in/judis
The word 'PAHALWAN' and the Musleman logo of the Plaintiff are
registered depicting the strength, while the defendants by the use of its
Muscleman logo which is similar / identical to that of the plaintiff's device
infringes the plaintiff's device / logo/ marks (artistic works). Mere
addition of arrow, does not render distinctive features to that of
defendants marks.
21. The plaintiff has also popularized its Corporate Trademarks /
Artistic Works through advertisements carried out in all types of media,
including Television, Radio, Newspapers, Magazines and also through
hoardings, participation in trade fairs, motor sports events, by
endorsement of their products by various public personalities. The
goodwill and reputation enjoyed by the plaintiff's products is evident
from the commercial success and the sales turnover.
22. The defendants have failed to defend the suit with clean hands.
It is surprising as to how the defendants who came to the tyre
manufacturing market in the year 2003 itself, can feign ignorance of the
plaintiff's trademarks CHEETAH, SAHARA and SAFARI. They have
used the plaintiff's trademarks and device marks with the dishonest
https://www.mhc.tn.gov.in/judis
intention of riding over the reputation and goodwill of the plaintiff and
make unlawful gains. The defendants are training every nerve to sustain
the dishonest adoption and to continue using the deceptively similar
device as that of the plaintiff and the same has to be necessarily curtailed
by this Court. The test for deciding as to whether one mark is deceptively
similar to another mark, is only a likelihood of confusion and not the
actual confusion. The disputed mark / device is an artistic work created
by the plaintiff whereas, the impugned body builder device / logo of the
defendant is a colour imitation of the plaintiff's device in as much as
essential feature of the plaintiff's device has been copied / adopted by the
defendants viz., body builder in the particular form of having raised arms
on either sides.
23. The defendants are entitled to revisit the use of deceptive
similarity between the subjected devices, on the ground of issue estoppel.
The defendants have admittedly abandoned its earlier device of
https://www.mhc.tn.gov.in/judis
since 2017. The defendants' impugned device of
has been held by this Court while granting an interim injunction in favour
of the plaintiff to be deceptively similar to that of the plaintiff's registered
device
and the said interim order has not been challenged by the defendants and
has attained finality.
24. The tests while deciding the deceptive nature of the marks as
consistently laid down by the decisions of the Honourable Supreme Court
is "likelihood of deception" and "not actual deception" and the approach
has to be from the perspective of average illiterate person with imperfect
recollection. In the present, Court has applied the said test while deciding
https://www.mhc.tn.gov.in/judis
the interlocutory applications and has already come to the conclusion that
the marks are likely to raise confusion and the same has attained finality.
No new evidence has been let in by the defendants to disprove the same
or revisit the said conclusion.
25. In support of his contentions, the learned counsel for the
plaintiff drew the attention of this Court to the following authorities:
a) Kaviraj Pandit Durga Dutt Sharma V.
Navaratna Pharmaceutical Laboratories reported
in AIR 1965 SC 980;
b) Satyam Infoway Ltd. V. Siffynet Solutions (P)
Ltd. reported in (2004) 6 SCC 145;
c) The British India Corpn. Ltd., V. Kharaiti Ram
reported in AIR 2000 Delhi 289;
d) Ayushakthi Ayurveda V. Hindustan Lever
reported in [2003] (4) Mh. L.J 915;
e) Cadila Health Care Ltd., V. Cadila
Pharmaceuticals Ltd. reported in (2001) 5 SCC
73;
https://www.mhc.tn.gov.in/judis
f) Parle Products (P) Ltd. V. J.P. And Co., Mysore
reported in (1972) 1 SCC 618;
g) S.Sudhakar and Shri Lakshmi Agro Foods Pvt.
Ltd V. S.S.P. Durairaj (Firm) and Durairaj
reported in (2008) 36 PTC 150;
h) Corn Products Refining Co. V. Shangrila Food
Products reported in AIR 1960 SC 142;
i) Apex Laboratories Limited v. India
Pharmaceuticals reported in AIR 2017 Mad 126;
j) Vst Industries Limited V. Rudra Ventures
Private Limited reported in 2022 SCC Online Del
41;
k) N.R. Dongree v. Whirlpool Corporation reported
in (1996) 5 SCC 714;
l) Kirit Kumar Girdharlal Doshi V. Wimco Limited
reported in (1998) 18 PTC 459;
m) Chimanlal Narsaji Suhan v. Parasmal Mithalal
Parmar reported in (1997) 17 PTC 388;
n) Colgate Palmolive Company V. Anchor Health
https://www.mhc.tn.gov.in/judis
And Beauty Care Pvt. Ltd reported in 2003 (27)
PTC 478;
o) Bade Miya V. Mubin Ahmed Zahurislam
reported in (2011) 3 Mah LJ 813;
p) Midas Hygenic Industries V. Sudhir Bhatia
reported in 2004 (3) SCC 90;
q) ITC Limited v. Golden Tobacco Limited reported
in 2018 SCC Online Mad 2437;
r) Thangam and another V. Navamani Ammal in
s) Onkar Nath V. The Delhi Administration
reported in (1977) 2 SCC 611;
t) R.Gopalakrishnan V. Venkateswsara Camphot
Works reported in 2000 (4) CTC 222;
u) Baker V. The Master Printers Union of New
Jersey reported in 34 F. Supp. 808 (D.N.J.1940);
v) Boston Athletics Association V. Sullivan
reported in U.S.P.Q. 2D 1690;
w) Hamdard National Foundation V. Hussian
https://www.mhc.tn.gov.in/judis
Dalal reported in 2013 (55) PTC 216;
x) R.G. Anand V. M/s. Delux Flims and others
reported in 1978 (4) SCC 118;
y) Arjun Singh V. Mohindra Kumar & others
reported in AIR 1964 SC 993;
z) Devidayal Rolling Mills V. Prakash Chimanlal
reported in 1993 (2) SCC 470;
aa) Hope Plantations V. Taluk Land Board,
Peermade reported in 1999 (5) SC 590.
26. Per contra, learned counsel for the defendants would submit as
follows:
a) It is settled principle of law that, there can be no copyright in an
idea, subject matter, themes, plots or historical or legendary facts and
violation of copyright in such cases is confined to the form, manner and
alignments and expression of idea by the author of the copyrighted work;
b) Normally, in case of tyre products, strength of tyre is more
important. Therefore, every tyre manufacturer to promote their business
will indicate the strength of their tyre in their advertisement. Hence, body
https://www.mhc.tn.gov.in/judis
builder device adopted by the defendants to show the strength of their
tyres and its idea which cannot be exclusively claimed by any party.
There are other manufacturers of tyres who are also using a similar body
builder device and the plaintiff cannot claim that the body builder device
used by the defendants would amount to committing the tort of passing
off. Every manufacturer will express their idea of strength in their logo /
device for marketing their branded tyre products;
c) Only based on the instructions given to their artist, to promote
their idea, a logo was created by the defendants, which is now challenged
by the plaintiff without any basis. The artist engaged by the defendants
has created POWERMAX logo with the body builder device without the
picture of the tyre by drawing a half sized body builder with a robo head
which is not deceptively similar to that of the plaintiff's logo / device;
d) It is settled principle of law that, it is always open to any person
to choose an idea or subject matter and develop it in their own manner
and give expression to the said idea by treating it differently from others.
That is the reason why, the two artists draw pictures or logos or devices
on the basis of an idea of expressing the strength in their artistic works.
Similarities are bound to occur because a central idea is one and the same
but, such similarities by themselves cannot lead to influence of piracy.
https://www.mhc.tn.gov.in/judis
The idea of showing the strength of the tyre products in both the artistic
works as seen from Ex.P2 and Ex.D16 may be one and the same. But the
expression of the idea of drawing defendants' artistic work by the artist
was developed in an entirely different manner. The plaintiff has not
proved through their oral and documentary evidence that the defendants
have infringed their artistic work MRF logo
Muscleman Device. Therefore, the judgments relied upon by the learned
counsel for the plaintiff have no bearing to the facts and circumstances of
the present case. The burden of proof, to establish that the defendants'
artistic works are infringing the plaintiff's artistic work, is on the plaintiff.
The plaintiff has through their oral and documentary evidence has
miserably failed to prove that the defendants' logo is deceptively similar to
that of the plaintiff's logo Muscleman Device;
e) The defendants had inadvertently used the plaintiff's trademark
CHEETAH, SAHARA and SAFARI without the knowledge that, the
https://www.mhc.tn.gov.in/judis
plaintiff has already obtained trademark registrations for the said marks.
The same has also been recorded in the interim order granted by this
Court in favour of the plaintiff in this suit. Therefore, the question of the
alleged passing off in respect of the trademarks CHEETAH, SAHARA
and SAFARI by the defendants does not arise and therefore, the question
of payment of damages as claimed in the plaint also does not arise.
27. Learned counsel for the defendants, in support of his
contentions, drew the attention of this Court to the following authorities:
a) R G Anand Vs. M/s.Delux Films and Others reported in AIR
1978 SC 1613;
b) Bharat Petroleum Corporation Ltd. and Another Vs. N.R.
Vairamani and Another reported in AIR 2004 SC 4778;
c) Century Traders Vs. Roshan Lal Duggar and Co. and Others
reported in AIR 1978 DELHI 250.
Discussion:
28. The suit has been filed for infringement and passing off in
respect of the trademarks Muscleman Device, MRF CHEETAH, MRF
https://www.mhc.tn.gov.in/judis
SAHARA and MRF SAFARI and PAHALWAN. The suit has also been
filed for infringement of the plaintiff's copyright by the defendants over
the plaintiff's Muscleman Device. The plaintiff has also claimed damages
from the defendants amounting to Rs.25,01,000/-.
29. The following are the undisputed facts:
a) Both the plaintiff and the defendants are tyre manufacturers;
b) The defendants commenced tyre manufacturing business, even
according to them, only in the year 2003, whereas the plaintiff is
admittedly in the tyre manufacturing business since 1961 by using their
mark MRF and ancillary marks;
c) The plaintiff's sales turnover for the tyres sold by them under the
aforesaid marks are huge. The defendants' sales turnover when compared
to the plaintiff's sales turnover is too low and is matchless beyond
comparison;
d) The defendants were earlier using the plaintiff's registered
trademarks MRF CHEETAH, MRF SAHARA and MRF SAFARI, which
they have stopped using, after the plaintiff issued a cease and desist
notice to them prior to the filing of the suit;
e) The plaintiff is also having the benefit of interim injunction
https://www.mhc.tn.gov.in/judis
granted by this Court in O.A.Nos.116 to 118 of 2021 by this Court's
order dated 12.03.2021 restraining the defendants from using a
deceptively similar trademark to that of the plaintiff's trademarks / artistic
work and Muscleman Device, PAHALWAN, MRF CHEETAH,
SAHARA and SAFARI. Eventhough interim injunction is working
against the defendants in so far as the body builder logo alleged to have
been created by the defendants is concerned, which is the subject matter
of consideration in this suit, the defendants are still convinced with their
contention that they are entitled to use their body builder logo as they
claim that it is not deceptively similar to the Muscleman Device of the
plaintiff.
30. Before analysing the dispute, this Court sets out below the
plaintiff's device mark for its Muscleman Device and alleged body builder
device (logo) of the defendants -
Plaintiff's Muscleman Device
https://www.mhc.tn.gov.in/judis
Defendants' body builder device (logo)
31. The plaintiff claims that the body builder logo used by the
defendants is identical / deceptively similar to the plaintiff's registered
Muscleman Device mark. According to them, by the use of the logo of the
torso of muscular man holding up his hand, the defendants have copied
the plaintiff's registered device mark as the plaintiff's mark also contains
the torso of a muscular man holding his hands up. However, the
defendants dispute the said contention of the plaintiff by stating that,
there cannot be copyright over an idea and being a tyre manufacturer in
order to show the strength of the tyre, any tyre manufacturer will have a
similar logo.
https://www.mhc.tn.gov.in/judis
32. The defendants also contend that there are also other tyre
manufactures who are either using an identical logo or similar ones.
Therefore, they contend that there is no deceptive similarity between the
plaintiff's Muscleman Device and the defendants' body builder logo.
Admittedly, the plaintiff has been using the mark MRF eversince 1961.
The muscule man logo has also been used by the plaintiff for its tyre
manufacturing business for a long number of years. They have also
obtained registration for the Muscleman Device under registration
No.418892 as early as on 09.03.1984 which is evidenced by the
trademarks registration certificate (Ex.P3). The trademark PAHALWAN
has also been used by the plaintiff in respect of its tyres for the last
several decades and has been registered under No.542604 as early as on
28.12.1990 as evident from the trademark registration certificate (Ex.P3).
33. Section 29 (9) of the Trade Marks Act, 1999 makes it clear that
where the distinct element of a registered trade mark consist of trademark
or include the words, the trademark may be infringed by the spoken
words of those words as well as by their visual representation. The mark
PAHALWAN is also a visual depiction of the plaintiff's trademark. The
Muscleman Device of the plaintiff comprises of the torso of a muscular
https://www.mhc.tn.gov.in/judis
man holding his hands up and holding on to a large tyre. The plaintiff's
logo is a distinct logo that has been exclusively associated with the
plaintiff's tyres. The sales turnover of the plaintiff for the past several
years, which have been marked as exhibits also reveals that the plaintiff's
goods under the respective trademarks resonate immense goodwill and
reputation among their consumers. The Muscleman logo has also been
registered by the plaintiff under the Trade Marks Act as early as on
28.12.1990. By their long and continuous usage of their Muscleman
Device, their sales turnover for the past several years reveal that the
plaintiff has earned reputation and goodwill for its products and its
respective trademarks, more particularly, their Muscleman Device mark.
The distinct elements of the plaintiff's Muscleman Device as indicated
supra are the torso of a muscular man holding his hands up. The word
mark PAHALWAN and the Muscleman Device logo of the plaintiff are
registered and is contended by the plaintiff that they depict the strength of
their tyres which in the considered view of this Court is acceptable. The
plaintiff is in the business of manufacturing of tyres since 1961, which is
also not disputed by the defendants.
34. On the other hand, even according to the defendants, they
https://www.mhc.tn.gov.in/judis
started manufacturing tyres only in the year 2003. The defendants have
also used the logo torso of a muscular man with robotic head holding his
hands up. Apart from that in their logo they have an arrow. Admittedly,
any consumer who is interested in buying tyres will be acquainted with
the plaintiff's tyres sold under the trademark MRF as the plaintiff is in the
business for a long number of years.
35. By the long and continuous usage of the Muscleman Device,
the consumers will be more familiar with the logo of the plaintiff than
with the logo of the defendants who are comparatively a recent entrant to
the tyre manufacturing business. As seen from the sales turnover of the
defendants when compared to the plaintiff's sales turnover, it is too low
and is match-less beyond comparison.
36. Deceptive similarity has been defined under Section 2 (1) (h)
of the Trade Marks Act, 1999 and is re-produced hereunder:
"2 (1) (h) “deceptively similar”.—A mark
shall be deemed to be deceptively similar to
another mark if it so nearly resembles that other
mark as to be likely to deceive or cause confusion;"
https://www.mhc.tn.gov.in/judis
37. In Ramdev Food Products (P) Ltd. Vs. Arvindbhai Rambhai
Patel and Others reported in 2006 (8) SCC 726 and Bade Miya Vs.
Mubin Ahmed Zahurislam reported in (2011) 3 Mah LJ 813 relied upon
by the learned counsel for the plaintiff it has been held as follows:
a) There can be only one mark, one source and one proprietor. A
person cannot use the mark which would be deceptively similar to that of
the registered trademark. Registration of trademark is envisaged to
remove any confusion in the minds of the public;
b) The Court will have to consider various factors including the
sales turnover pertaining to the plaintiff's business for the purpose of
coming to the conclusion as to whether the defendants have committed an
act of infringement / passing off or not.
38. In the case on hand, by long and continuous usage of the
Muscleman Device mark which uses the torso of a muscular man holding
his hands up, which is also used by the defendants admittedly only from
2003 onwards, this Court is of the considered view, after giving due
consideration to the plaintiff's reputation and goodwill and its huge
https://www.mhc.tn.gov.in/judis
turnover in respect of its sales in India as well as in abroad that, the
public will be deceived if the same Muscleman Device or its equivalent in
any other form is allowed to be used by any other tyre manufacturer who
has commenced their business much later than the year when the plaintiff
commenced its business.
39. The principle of passing off is based on the well settled
proposition that, "nobody has the right to represent his goods as the
goods of somebody else".
40. To succeed in the suit for passing off, the plaintiff will have to
prove the following:
a) Goodwill amongst its customers by the long and continuous
usage of the trademark;
b) Misrepresentation by the defendant to make the customers
believe that the products sold by them are associated with the plaintiff;
c) In case the plaintiff establishes the goodwill and
misrepresentation, the plaintiff is also entitled for special damages.
41. It is also well settled, in a passing off action, what has to be
https://www.mhc.tn.gov.in/judis
established by the plaintiff is the likelihood of confusion in the minds of
the public that the goods or services offered by the defendants are the
goods or services of the plaintiff. In assessing the likelihood of such
confusion, the Courts must follow the "imperfect recollection of a person
of ordinary memory" theory. The above principles are fortified in the
decisions relied upon by the learned counsel for the plaintiff in Kaviraj
Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical
Laboratories reported in AIR 1965 SC 980, Satyam Infoway Ltd. Vs.
Siffynet Solutions (P) Ltd. reported in 2004 (6) SCC 145.
42. Admittedly, the plaintiff's Muscleman Device has been in use
since 1961 and the plaintiff has also obtained registration for their
Muscleman Device under the Trade Marks Act. They have also produced
the registration certificates which have been marked as exhibits on their
side. The same has also not been disputed by the defendants. Admittedly,
plaintiff is the prior user of the Muscleman Device which is the subject
matter of comparison, to that of the defendants' body builder logo in this
suit.
https://www.mhc.tn.gov.in/judis
43. The decisions relied upon by the learned counsel for the
plaintiff in Satyam Infoway Ltd. Vs. Siffynet Solutions (P) Ltd.
reported in 2004 (6) SCC 145 and N.R. Dongree v. Whirlpool
Corporation reported in (1996) 5 SCC 714 it is clear that when it is
evident that if the plaintiff is the prior user and undisputed owner of the
logo / device of the Muscleman Device and they have been in long and
continuous usage and when the defendants' logo is deceptively similar,
the plaintiff is entitled for the grant of injunction against the defendants.
In the case on hand, the defendants have not disputed the fact that the
plaintiff is using the Muscleman Device from the year 1961 and they
have obtained registration under the Trade Marks Act for the said device
in the year 1984. They have also admitted that their business commenced
only in the year 2003. As observed earlier by the long and continuous
usage, the plaintiff's logo which depicts a muscular man with two arms
stretched has earned a reputation and goodwill on its own and the general
public will naturally think that any similar logo containing the torso of the
muscular man and two arms stretched is associated only with the
plaintiff.
https://www.mhc.tn.gov.in/judis
44. Being a prior user of the Muscleman Device and having
obtained registration under the Trade Marks Act, the plaintiff is certainly
entitled for protection from this Court as prayed for in the suit. Further,
Section 29 (9) of the Trade Marks Act, 1999 also gives statutory
protection for the plaintiff in cases where the distinctive elements of a
registered trademark have been copied by the defendants in their visual
representation of their logo. Certainly, the distinctive elements of the
plaintiff's logo are the torso of the muscular man with two arms and the
said distinctive elements have been copied by the defendants, which
would amount to misrepresentation, thereby deceiving the public at large
that the products sold by the defendants using the said logo are
associated with the plaintiff. The plaintiff as seen from the evidence
placed on record through the exhibits marked on their side, more
particularly, Ex.P5 - Chartered Accountant's certificate showing the sales
turnover and expenditure of advertisement for the past few years, the
plaintiff has earned tremendous amount of goodwill amongst its
customers and they have associated their trademarks MRF with their
device marks which includes the Muscleman Device, only with the
plaintiff.
https://www.mhc.tn.gov.in/judis
45. On the other hand, the defendants' sales turnover, as seen from
Exs.D12 to D13 is too low when compared to the plaintiff's sales
turnover. But it is also noticed that there has been a sudden jump in the
defendants' turnover from 2018 - 19 onwards as seen from Exs.D12 and
D13. No explanation has been submitted by the defendants through their
oral and documentary evidence as to how there has been a steep increase
in their sales turnover from the year 2018-19 onwards. The plaintiff
categorically contends that only due to the adoption of a deceptively
similar logo as that of the plaintiff, the defendants' sales turnover has
increased manifold times from the year 2018-19 onwards and the said
statement has to be believed by this Court as there is no contra evidence
produced by the defendants to disprove the same. Judicial notice can also
be taken by this Court to the fact that the plaintiff is in the tyre
manufacturing market for long number of years.
46. Goodwill is an attraction which brings in customers. It is the
one thing which distinguishes an old established business from a new
business. The goodwill of a business must emanate from a particular
centre or source. However, widely extended or diffused its influence may
be, goodwill is worth nothing unless it has power of attraction sufficient
https://www.mhc.tn.gov.in/judis
to bring customers home to the source from which it emanates. Once the
novel mark recognized in the market which distinguishes the goods and
services from others, the owner has acquired reputation in the market
through the use of that mark, it can be construed that the owner is having
a goodwill.
47. In the case on hand, as observed earlier, the plaintiff's
Muscleman Device is a novel logo which has been well recognized in the
market and the said logo has been associated only with the plaintiff and
they have also acquired reputation through the usage of the said logo for
the manufacture and sale of their tyres. Though the defendants claim that
there are other tyre manufacturers in the market, who are using an almost
identical logo as that of the plaintiff, they have not produced any evidence
in support of their contention. No documentary evidence has also been
placed on record by the defendants to prove the said contention. The
defendants partner by name, Mr.Rajesh Jain, has been examined as a
witness (DW1) on the side of the defendants. During his cross
examination, he has admitted that their concern is involved in the tyre
manufacturing business only since 2003. DW1 on 26.07.2022 when he
was cross examined admits that his age was 27 years in 2003. The
https://www.mhc.tn.gov.in/judis
defendants have also not examined any other witness, who was well
aware of the defendants' growth in the tyre manufacturing business since
2003.
48. The defendants' witness (DW1) has also admitted during his
cross examination that the defendants have a different pattern for
identical purposes. The defendants' witness (DW1) has also pleaded
ignorance as seen from answer to question No.18 as to "when such
practice has been adopted by the defendants?". When a specific question
was put to DW1 that "is it correct to state that such use has been atleast
for the last seven years?", the defendants witness (DW1) has answered by
stating that he does not remember. The defendants' witness (DW1) has
also admitted by answering to question No.32 that the plaintiff is well
renowned and a reputed Company.
49. The defendants' witness (DW1) has also given evasive and
vague answers as seen from his cross examination. The defendants'
witness (DW1) has also answered irresponsibly by stating that "I do not
remember to the question as to when and why the defendants started
using the marks CHEETAH, SAHARA and SAFARI". As seen from the
https://www.mhc.tn.gov.in/judis
cross examination of DW1, the defendants' witness is not a proper and
competent witness to give the true picture with regard to the usage of the
body builder logo by the defendants which is deceptively similar to the
plaintiff's registered Muscleman Device. In the oft quoted decision
rendered by the Honourable Supreme Court in the case of Cadila Health
Care Ltd., V. Cadila Pharmaceuticals Ltd. reported in (2001) 5 SCC
73, where similarity between the plaintiff's and the defendant's mark is so
close either visually, phonetically or otherwise and the Court reaches the
conclusion that there is an imitation, no further evidence is required to
establish that the plaintiff's rights are violated. In the case on hand, the
plaintiff is having the benefit of interim injunction from this Court against
the defendants restraining the defendants from using the body builder
logo which was earlier used by the defendants by this Court's order dated
12.03.2021 in O.A.Nos.116 to 118 of 2021 and the said order is still in
force.
50. Prima facie, this Court was satisfied that the defendants' mark
is so close to that of the plaintiff's mark and only thereafter granted an
order of interim injunction. As observed earlier, the torso of a muscular
https://www.mhc.tn.gov.in/judis
man with two arms has been copied by the defendants in their logo
though a robotic head is also found in the defendants' logo that will not
enable the defendants to claim that their logo is completely different from
that of the plaintiff's registered Muscleman Device.
51. The torso of a muscular man and the arms are the distinctive
elements of the plaintiff's Muscleman Device, which has been registered
under the Trade Marks Act. When the essential features of the plaintiff's
Muscleman Device has been copied by the defendants and any layman of
average intelligence and imperfect recollection will certainly be confused
as to whether the defendants' product is also associated with the plaintiff,
the ratio laid down in Cadila Health Care Ltd., V. Cadila
Pharmaceuticals Ltd. reported in (2001) 5 SCC 73 for testing deceptive
similarity has been satisfied by the plaintiff. They have been able to prove
beyond reasonable doubt that the defendants' body builder logo is an
imitation of the plaintiff's Muscleman Device mark as the defendants'
logo also depicts the torso of a muscular man with two arms. Certainly, if
the defendant is allowed to continue using the impugned device, the
general public having average intelligence and imperfect recollection will
https://www.mhc.tn.gov.in/judis
be deceived as they will have an impression that the product of the
defendants is also associated with the plaintiff. The decision rendered in
Parle Products (P) Ltd. V. J.P. And Co., Mysore reported in (1972) 1
SCC 618 decision also comes to the aid of the plaintiff. In the said
decision, the principle "two marks, when placed side by side may exhibit
many and various differences, yet the main idea left on mind by both may
be the same" was applied.
52. In the case on hand also the two marks viz., one the
"Muscleman Device" of the plaintiff and the other the "body builder" logo
of the defendants may have differences but yet the main idea has been
copied by the defendants from the plaintiff's Muscleman Device by using
the torso of a muscular man and the two arms which has been used in the
plaintiff's registered Muscleman Device.
53. The impugned mark bears an overall similarity to the registered
mark of the plaintiff and certainly it would mislead a person to think that
the defendants' products are also associated with the plaintiff. There is
also no flavour of minimum requirement of creativity in the defendants'
https://www.mhc.tn.gov.in/judis
body builder logo which is a requirement as seen from the decision of the
Honourable Supreme Court in Eastern Book Company Vs. DB Modak
reported in AIR 2008 SC 809. When the main idea for the defendants'
logo has been copied from the plaintiff's registered Muscleman Device
mark as held by the Honourable Supreme Court in Eastern Book
Company Vs. DB Modak, there is "no flavour of minimum requirement
of creativity" in the defendants' logo. The presence of an arrow in the
defendants' logo which was not found in the plaintiff's Muscleman Device
will not protect the defendants' logo as the said arrow has been used by
BATA Company for its POWER brand of shoes. DW1 has given an
irresponsible answer to question No.41 where a question was asked "Is it
correct to state that BATA is a shoe brand". The answer given was "I do
not know" and that DW1 has never bought that shoe brand. "Arrow" is
associated only with BATA in respect of its POWER brand and judicial
notice can also be taken note of the said fact. The defendants have also
not produced any documentary evidence and they have also not pleaded
in the written statement as to when their logo was created or by whom it
was created. It is also noticed from the Chartered Accountant's certificate
produced by the defendants which is marked as Exs.D12 and D13 that
https://www.mhc.tn.gov.in/judis
there has been a sudden jump in the defendants' sales from 2018-19
onwards and the sale has increased manifold. In the decision rendered by
the Honourable Supreme Court in the Colgate Palmolive Company V.
Anchor Health And Beauty Care Pvt. Ltd reported in 2003 (27) PTC
478 one of the test to be considered while deciding whether there has
been infringement or passing off on the part of the defendants is to see
whether there is a rise in the sale of the products of the defendants after
the defendants have copied the plaintiff's trademark / logo. In the case on
hand, as seen from the Chartered Accountant's certificates, marked as
Exs.D12 and D13, it is clear that there has been steep increase in the
sales turnover from the year 2018 - 19 onwards. In the year 2017-18, the
total sale turnover of the defendants was Rs.20,63,07,129.50 and in the
year 2018-19, the defendants' total sales turnover suddenly jumped to
Rs.45,56,94,881.38. The sudden jump in the sales turnover has also
weighed in the mind of this Court for coming to the conclusion that the
defendants have dishonestly copied the plaintiff's Muscleman Device
mark for the purpose of misrepresenting to the public that the defendants'
products are also associated with the plaintiff and for the purpose of
making unlawful gains. No proper explanation has also been given by the
https://www.mhc.tn.gov.in/judis
defendants for the sudden jump in their sales from the year 2018-19
onwards.
54. The defendants who are also tyre manufacturers and who claim
that they are in the tyre manufacturing business since 2003, as a prudent
business concern ought to have made a search with the trademark
registry and if they had made such a search it would reveal the existence
of the plaintiff's Muscleman Device and the other trademarks viz.,
CHEETAH, SAHARA and SAFARI. Having not conducted a trademark
search, they cannot now claim to be an honest and concurrent user of the
deceptively similar device mark. The answers given by DW1 for various
questions also does not assist the defendants to contend that they are an
honest and concurrent user.
55. In similar cases, where a search was not made in the
Trademarks Registry, the Delhi High Court as well as the Bombay High
Court in their decisions in the case of The British India Corpn. Ltd., V.
Kharaiti Ram reported in AIR 2000 Delhi 289 and Ayushakthi
https://www.mhc.tn.gov.in/judis
Ayurveda V. Hindustan Lveer reported in [2003] (4) Mh. L.J 915 held
that the defendant cannot be considered to be an honest and concurrent
user. By applying the said decisions to the case on hand, the protection
granted to honest and concurrent user under Section 135 (3) (b) and
Section 135 (3) (c) of the Trade Marks Act, 1999 cannot also be granted
to the defendants as they have not been able to establish through their
oral and documentary evidence that
a) They were not aware of the plaintiff's right in the trademark;
b) When the defendants commenced the use of their logo, they
were not aware of the existence of the plaintiff's Muscleman Device.
56. It is well settled by the following decisions, also cited by the
learned counsel for the plaintiff, that there is no need for placing two
marks side by side to find out any differences in the design. It is enough
if the impugned mark bears an overall similarity to the registered mark
which could possibly mislead a person dealing with the mark:
a) Parle Products (P) Ltd. V. J.P. And Co., Mysore reported in
(1972) 1 SCC 618;
b) Apex Laboratories Limited v. India Pharmaceuticals reported
https://www.mhc.tn.gov.in/judis
in AIR 2017 Mad 126;
c) Satyam Infoway Ltd. V. Siffynet Solutions (p) Ltd. reported in
(2004) 6 SCC 145;
d) Vst Industries Limited V. Rudra Ventures Private Limited
reported in 2022 SCC Online Del 41;
e) Kirit Kumar Girdharlal Doshi V. Wimco Limited
reported in (1998) 18 PTC 459;
f) Chimanlal Narsaji Suhan v. Parasmal Mithalal Parmar
reported in (1997) 17 PTC 388.
57. It is also settled law while deciding the question of similarity
between two marks, the overall similarity should be taken from a
perspective of a man with an average intelligence and imperfect
recollection.
58. The following two authorities have also laid down the said
proposition:
a) Corn Products Refining co, V. Shangrila Food Products
https://www.mhc.tn.gov.in/judis
reported in AIR 1960 SC 142;
b) Aquamatic Case (Harr Reynolds Vs. Laffeaty's) reported in
1958 R.P.C. 387 .
59. Mere publication of a mark does not confer power to the owner
to violate the other party's right. The said principle was also held in the
decision rendered in S.Sudhakar and Shri Lakshmi Agro Foods Pvt.
Ltd V. S.S.P. Durairaj (Firm) and Durairaj reported in (2008) 36 PTC
150. In the oft quoted decision rendered by the Honourable Supreme
Court in Colgate Palmolive Company V. Anchor Health And Beauty
Care Pvt. Ltd reported in 2003 (27) PTC 478, it has been held that there
cannot be dilution and erosion of the uniqueness and distinctiveness of a
well known mark. MRF is a well known mark in the field of manufacture
of tyres and, certainly if the distinctive feature of Muscleman Device is
allowed to be copied, there will be dilution and erosion to their
uniqueness and distinctiveness of the trademark. The defendants have
certainly copied the plaintiff's Muscleman Device, which has enabled
them to ride over the plaintiff's reputation and goodwill and make
unlawful gains as seen from their Chartered Accountant's certificates
https://www.mhc.tn.gov.in/judis
marked as Exs.D12 and D13 which shows a steep increase in their sales
from 2018-19 onwards. A device cannot also be made to look almost
identical to an existing device at a subsequent stage of registration as held
by the Honourable Supreme Court in Midas Hygenic Industries V.
Sudhir Bhatia reported in 2004 (3) SCC 90.
60. Admittedly, the plaintiff has not obtained trademark
registration for their logo and they have obtained trademark registration
only for the mark POWERMAX, that too only on 26.02.2008 as seen
from Ex.D1. Order VIII Rule 3 and 5 of C.P.C. also makes it clear that
the facts which are not expressly denied by the defendants shall be taken
as admitted facts in so far as the marks CHEETAH, SAHARA and
SAFARI are concerned. Except for stating that they have stopped using
the said marks on receipt of the cease and desist notice in their written
statement, the defendants have not expressly denied that they have not
committed the act of infringement in so far as those marks are concerned.
61. Order VIII Rule 3 and 5 of C.P.C. are extracted hereunder:
"3. Denial to be specific.—It shall not be
sufficient for a defendant in his written statement to
https://www.mhc.tn.gov.in/judis
deny generally the grounds alleged by the plaintiff,
but the defendant must deal specifically with each
allegation of fact of which he does not admit the
truth, except damages.
*[3A. Denial by the defendant in suits before the
Commercial Division of the High Court or the
Commercial Court.— (1) Denial shall be in the
manner provided in sub-rules (2), (3), (4) and (5)
of this Rule.
(2) The defendant in his written statement shall
state which of the allegations in the particulars of
plaint he denies, which allegations he is unable to
admit or deny, but which he requires the plaintiff to
prove, and which allegations he admits.
(3) Where the defendant denies an allegation of
fact in a plaint, he must state his reasons for doing
so and if he intends to put forward a different
version of events from that given by the plaintiff, he
must state his own version.
(4) If the defendant disputes the jurisdiction of the
Court he must state the reasons for doing so, and if
he is able, give his own statement as to which Court
ought to have jurisdiction.
(5) If the defendant disputes the plaintiff’s
valuation of the suit, he must state his reasons for
https://www.mhc.tn.gov.in/judis
doing so, and if he is able, give his own statement
of the value of the suit.] "
" 5. Specific denial.—[(1)] Every allegation
of fact in the plaint, if not denied specifically or by
necessary implication, or stated to be not admitted
in the pleading of the defendant, shall be taken to
be admitted except as against a person under
disability:
Provided that the Court may in its discretion
require any fact so admitted to be proved otherwise
than by such admission:
*[Provided further that every allegation of fact in
the plaint, if not denied in the manner provided
under Rule 3A of this Order, shall be taken to be
admitted except as against a person under
disability.]
[(2) Where the defendant has not filed a pleading,
it shall be lawful for the court to pronounce
judgment on the basis of the facts contained in the
plaint, except as against a person under a
disability, but the Court may, in its discretion,
require any such fact to be proved.
(3) In exercising its discretion under the proviso to
sub-rule (1) or under sub-rule (2), the Court shall
have due regard to the fact whether the defendant
https://www.mhc.tn.gov.in/judis
could have, or has, engaged a pleader.
(4) Whenever a judgment is pronounced under this
rule, a decree shall be drawn up in accordance
with such judgment and such decree shall bear the
date on which the judgment was pronounced.] "
62. In R.G. Anand V. M/s. Delux Flims and others reported in
1978 (4) SCC 118 relied upon by the learned counsel for the defendants,
the test to be applied for ascertaining whether there is infringement of a
copyright have been enumerated.
"1. There can be no copyright in an idea, subject
matter, themes, narratives, or historical or
legendary facts, and copyright infringement in such
circumstances is limited to the creator of the
copyright work’s form, method, arrangement, and
presentation of the concept.
2. Where the same concept is developed differently,
it is obvious that because the source is shared,
parallels are sure to appear. In such a situation,
the courts must decide whether the similarities are
on basic or significant parts of the style of
expression used in the copyrighted work. If the
defendant’s work is nothing more than a literal
limitation of the original work with a few
https://www.mhc.tn.gov.in/judis
alterations here and there, it would be a copyright
violation. In other words, for the copy to be
actionable, it must be significant and material,
leading to the judgement that the defendant is
guilty of piracy right away.
3. One of the surest and safest tests to determine
whether or not there has been a copyright violation
is to see if the reader, spectator, or viewer is
clearly of the opinion and gets an unmistakable
impression that the subsequent work appears to be
a copy of the original after having read or seen
both works.
4. There is no concern of copyright violation if the
concept is the same but is presented and treated
differently such that the succeeding work becomes
an entirely new work.
5. Where, however, apart from the similarities
appearing in the two works, there are also
significant and wide dissimilarities that negate the
intention to duplicate the original and the
coincidences appearing in the two works are
manifestly accidental, no copyright infringement
occurs.
6. As a breach of copyright constitutes an act of
piracy, it must be proven by clear and convincing
https://www.mhc.tn.gov.in/judis
evidence after applying the relevant case law
criteria.
7. When the issue is an infringement of a stage
play’s copyright by a film producer or director, the
plaintiff’s task becomes more difficult to show
piracy. It is obvious that, unlike a stage play, a film
has a much broader perspective, a wider field, and
a larger background in which the defendants might
add colour and complexion distinct from the
method in which the original work has represented
the concept by introducing a variety of situations.
Even yet, if the audience leaves the film with the
idea that it is mostly a replica of the original play,
an infringement of the copyright may be deemed
proven."
63. The test enumerated supra, is otherwise known as 'lay
observers test' and is generally used by Courts to distinguish between
ideas and expression in any given cases. As the name suggests, this test is
performed by making an average layman of reasonable intellect peruse
the contended works of the plaintiff and the defendants. Their opinion on
the similarity or dissimilarity of the works is then taken into consideration
while deciding a case. One of the test, is that if the defendant's work is
https://www.mhc.tn.gov.in/judis
nothing more than a literal imitation of the original work with a slew of
alterations, here and there, it would amount to copyright violation. In the
case on hand, except for making some cosmetic changes, the defendants
have copied the main idea of the plaintiff by using a torso of muscular
man and the two arms which is also used in the plaintiff's registered
Muscleman Device.
64. From the foregoing analysis and reasons, it is clear that the
plaintiff has proved through their oral and documentary evidence
supported by various authorities that the defendants have committed an
act of passing off and they have also committed copyright infringement
over the plaintiff's registered Muscleman Device.
65. There is no explanation given by the defendants as to how and
when they started using the other marks viz., CHEETAH, SAHARA and
SAFARI for which the plaintiff has obtained trademark registration. They
have also proved through their oral and documentary evidence that those
marks are exclusively associated with the plaintiff and no one else. The
conduct of the defendants in adopting the marks of the plaintiff's viz.,
CHEETAH, SAHARA and SAFARI is improper and will go to show their
https://www.mhc.tn.gov.in/judis
dishonest intention of copying the registered trademarks of the plaintiff
for making unlawful gains in their identical business viz., tyre
manufacturing business. The defendants cannot escape their liability to
pay damages to the plaintiff despite the fact that they have stopped using
the marks CHEETAH, SAHARA and SAFARI on receipt of the cease and
desist notice from the plaintiff prior to the filing of the suit. Certainly,
they would have made profits by using the marks of the plaintiff viz.,
CHEETAH, SAHARA and SAFARI earlier, for which they cannot be
allowed to go scot-free. When the dishonesty on the part of the
defendants has been established, necessarily, they will have to pay
nominal damages to the plaintiff. Though the plaintiff has claimed a sum
of Rs.25,01,000/- as damages from the defendants, there is no evidence
available on record to prove that they have suffered such a huge loss.
However, in view of the fact that the plaintiff has proved through its oral
and documentary evidence that the defendants have committed an act of
passing off and have also committed Copyright infringement, necessarily,
some amount of nominal damages will have to be awarded in favour of
the plaintiff.
66. This Court after giving due consideration to the reputation of
https://www.mhc.tn.gov.in/judis
the plaintiff and after giving due consideration to the improper conduct of
the defendants, awards nominal damages to the plaintiff' at Rs.5,00,000/-.
67. Accordingly, the issues framed by this Court on 30.09.2021 are
being answered in the following manner:
Issue No.i. The defendant's have dishonestly adopted the Artistic
work "a Half size Body Builder with Robo Head" from the plaintiff's
artistic work found in the "Muscleman Device".
Issue No.ii. The plaintiff has proved beyond reasonable doubt that,
the label/mark/logo of the defendant "a Half size Body Builder with Robo
Head" is identical with/deceptively similar to their artistic work "a man
holding tyre with lifted hands".
Issue No.iii. The use of the label/mark/logo as adopted by the
defendant in respect of its goods/service amounts to infringement of the
registered trademarks of the plaintiff.
Issue No.iv. The use of the label/mark/logo as adopted by the
defendant in respect of its goods/service amounts to infringement of the
copyright of the plaintiff.
Issue No.v. The use of the label/mark/logo as adopted by the
defendant in respect of its goods/service amounts to passing off of goods.
https://www.mhc.tn.gov.in/judis
Issue No.vi. The defendants have not obtained registration for
their body builder logo. They have trademark registration only for the
trademark POWERMAX under registration No.1458006. Hence, they are
not entitled to use their body builder logo.
Issue No.vii. Since issue No.vii is a repetition of issue No.vi, there
is no necessity for this Court to give an answer. But, at the same time,
this Court once again makes it clear that the defendants are not entitled to
use their body builder logo which is deceptively similar to the plaintiff's
"Muscleman Device".
68. For the foregoing reasons, the suit is partly decreed as prayed
for by granting the following reliefs in favour of the plaintiff:
a. A perpetual injunction restraining the Defendants, its
distributors, stockists, servants, agents, retailers, representatives or any
other person claiming under/through them, from in any manner infringing
the Plaintiff's Registered Trade Marks 'Muscleman Device', MRF
CHEETAH, MRF SAHARA, MRF SAFARI, PAHALWAN by the
Defendant's by using the Impugned Muscleman logo and the trademarks
CHEETAH, SAHARA, SAFARI or any other mark identical with and/ or
deceptively similar to the plaintiff's Trademarks/Artistic Works and
https://www.mhc.tn.gov.in/judis
Muscleman Device, PAHALWAN, MRF CHEETAH, MRF SAHARA,
MRF SAFARI in connection with the defendant's goods/services and/or
business or in any other manner whatsoever;
b. A perpetual injunction restraining the Defendants, their
distributors, stockist's, servants, agents, retailers, representatives or any
other person claiming under/through them from in any manner using the
trademarks 'SAHARA', 'CHEETAH', 'SAFARI' and Impugned Muscleman
Device, and/or any other mark which is identical with or deceptively
similar to the Plaintiff's registered Trademarks/Artistic Works Muscleman
Device, PAHALWAN, MRF CHEETAH, MRF SAHARA, MRF SAFARI
so as to pass off the Defendant's goods or services or business or website
as that of the Plaintiff and/or wrongfully associate themselves with the
Plaintiff's business or in any other manner whatsoever,
c. A perpetual injunction restraining the Defendants, his
distributors, stockists, servants, agents, retailers, representatives or any
other person claiming under/through him from in any manner infringing
the Plaintiff's Copyright in the 'MUSCLEMAN DEVICE' filed as Plaint
Document No.1 by using the infringing mark/logo as shown in Plaint
Document No. 6 or any other mark/ device/ artistic work with is identical
with/ deceptively similar or any substantial reproduction of the
https://www.mhc.tn.gov.in/judis
MUSCLEMAN DEVICE' on or in connection with the business of the
Defendants, or in any other manner whatsoever;
d. The Defendants be ordered to remove all painted displays, and
other display material being used by the Defendants containing Plaintiff's
Trademarks/Artistic Works, 'MUSCLEMAN DEVICE' or any other mark
which is deceptively similar and/or is a substantial reproduction thereof
and surrender to Plaintiff the glow sign board, all goods, labels,
catalogues, dyes, blocks, moulds, screen prints, packing materials, bills,
vouchers, literature, publicity material, letterheads, invoices, challans,
visiting cards, job cards, delivery notes, rate list, sign boards, glow signs,
blow ups and all reprographic materials and other materials bearing any
of the plaintiff's trade marks or artistic works of the Plaintiff within a
period of eight weeks from the date of receipt of a copy of this judgment
and decree;
e. The Defendants are directed to pay the Plaintiff a sum of Rs.5,00,000/-
as nominal damages for Passing Off and infringement of Trade Mark &
infringement of copyright;
f. The defendants are directed to pay the costs of the suit to the plaintiff.
01.04.2024
Index: Yes/ No
https://www.mhc.tn.gov.in/judis
Speaking order / Non speaking order
Neutral citation : Yes / No
ab
https://www.mhc.tn.gov.in/judis
List of Witness examined on the side of the Plaintiff:
Mr.George Samuel (PW1)
List of the Exhibits marked on the side of the Plaintiff:
"Ex.P1 is the original authorization letter dated
16.1.2021.
Ex.P2 is the colour print out copy of plaintiffs
Muscleman Device.
Ex.P3 is the photocopy of Copies of the Certificate
of Legal Use and Registration of the Trade Marks
together with the certificates of renewal of the
marks of plaintiff (Original seen verified and
returned.)
Ex.P4 is the photocopies of the certificates of Legal
Use and Registration of the Trade Marks together
with the certificates of renewal of the marks of
plaintiff. (Original seen verified and returned.)
Ex.P5 is the original Chartered accountant's
certificate showing the sales turnover and
expenditure on advertisement for the past few years
https://www.mhc.tn.gov.in/judis
in respect of business of the plaintiff under the
plaintiff's trademarks dated 08.09.2020.
Ex.P6 is the colour print out copy of Plaintiffs Logo
used in connection of MRF Institute of Driver
Development.
Ex.P7 is the colour print out copy Defendant's
infringing trademark and logo.
Ex.P8 is the colour print out copy of A Screen shot
of the defendant's website
http://www.powermaxtyre.com/homepage.
Ex.P9 is the colour print out copy of Defendant's
catalogue on its website.
Ex.P10 is the photocopy of Legal notice issued by
the plaintiff dated 09.07.2020
Ex.P11 is the photocopy of Reply notice issued by
the defendant dated 18.07.2020.
Ex.P12 is the photocopy of legal notice issued by
the plaintiff dated 04.08.2020.
https://www.mhc.tn.gov.in/judis
Ex.P13 is the original of Power of Attorney dated
22.12.2020."
List of Witness examined on the side of the Defendants:
Mr.Rajesh Jain (DW1)
List of the Exhibits marked on the side of the Defendants:
"Ex.D1 is the copy of the registered Trade Mar
No.1458006 in class 12 for the mark Power max
(marked with objection on the ground that the same
cannot relied upon in legal proceedings as
mentioned in the certificate itself)
Ex.D2 is the copy of the partnership deed of the
2nd defendant dated 01.04.2010 (Objected on the
ground that no witness has signed)
Ex.D3 is the copy of the: VAT Registration
Certificate in favour of 2nd defendant dated
21.12.2010. (original verified and returned)
Ex.D4 is the copy of the Assignment Deed dated
02.04.2012 (original verified and returned)
https://www.mhc.tn.gov.in/judis
(Objected on the ground that no witness has
signed)
Ex.D5 is the copy of the partnership deed dated
29.06.2015(Original seen verified and returned)
(Objected on the ground that no witness has
signed)
Ex.D6 is the copy of the Assignment Deed dated
30.05.2016 (Original seen verified and returned)
Ex.D7 is the print out copy of the Renewal
Certificate dated 18.03.2017 (Affidavit under
Section 65 B Indian Evidence Act filed.
Ex.D8 is the print out copy of the GST Registration
Certificate in favour of 1 defendant dated
20.09.2017 (Affidavit under Section 65 B Indian
Evidence Act filed.
Ex.D9 is the print out copy of the GST Registration
Certificate in favour of 2nd defendant dated
20.09.2017 (Affidavit under Section 65 B Indian
Evidence Act filed.
https://www.mhc.tn.gov.in/judis
Ex.D10 is the download copy of the Trademark
application No.4278170 dated 29.08.2019
(Affidavit under Section 65 B Indian Evidence Act
filed.
Ex.D11 is the downloaded copy of Search
Certificate issued under rule 22(1) Trademarks
rules dated 23.10.2020 (Affidavit under Section 65
B Indian Evidence Act filed.
Ex.D12 is the copy of the Sales Turnover
Certificate of the 1" defendant dated 05.03.2021
(Original seen verified and returned)
Ex.D13 is the copy of the Sales Turnover
Certificate of the 2nd defendant dated 05.03.2021
(Original seen verified and returned)
Ex.D14 is the print out copy of the plaintiffs Logo
(Affidavit under Section 65 B Indian Evidence Act
filed.
Ex.D15 is the print out copy of the defendant's
previous Logo (Affidavit under Section 65 B Indian
Evidence Act filed.
https://www.mhc.tn.gov.in/judis
Ex.D16 is the print out copy of the defendant's
present Logo (Affidavit under Section 65 B Indian
Evidence Act filed.
Ex.D17 is the print out copy of Comparative picture
of plaintiff's Logo and defendant's logo (Affidavit
under Section 65 B Indian Evidence Act filed.
Ex.D18 is the original of the present product
catalogue of the defendant's
Ex.D19 is the print out copy of present defendant's
website page containing product list (Affidavit
under Section 65 B Indian Evidence Act filed.
Ex.D20 is the Digital copy of Copyright
Registration Certificate dated 22.10.2021 (Affidavit
under Section 65 B Indian Evidence Act filed."
01.04.2024
ab
https://www.mhc.tn.gov.in/judis
ABDUL QUDDHOSE, J.
ab
pre-delivery judgment
01.04.2024
https://www.mhc.tn.gov.in/judis
