Madras High Court
M/S.Carborundum Universal Limited vs Mr.Kailash Jain on 28 June, 2024
Author: P.Velmurugan
Bench: P.Velmurugan
C.S. No.9 of 2021
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 28.06.2024
Coram:
THE HONOURABLE MR. JUSTICE P.VELMURUGAN
C.S. No.9 of 2021
M/s.Carborundum Universal Limited
Parry House,
No.43, Moore Street
Chennai - 600 001
Represented by its Deputy General Manager-legal
Mr.A.Narayanan ... Plaintiff
Vs.
Mr.Kailash Jain
Proprietor
Divya Diamond Tools,
Nagdevi Commerce Chambers
No.44, Nagdevi Cross Lane,
3rd Floor, Room No.29,
Mumbai - 400 003
maharashtra, India ... Defendant
Prayer: The plaint is filed under Order IV Rule 1 of Original Side
Rules and Order VII Rule 1 of Code of Civil Procedure read with Sections
27, 134 and 135 of the Trademarks Act, 1999 & Proviso 1 to Section 7 of
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C.S. No.9 of 2021
the Commercial Courts, Commercial Division and Commercial Appellate
Division of High Courts Act, 2015, praying to pass a judgment and decree
against the defendant on the following terms:-
a. A permanent injunction restraining the
defendant their/partners, men, servants, agents,
distributors, stockists, successors in business, retailers,
legal representatives, heirs, assigns or any other person
claiming through or under them, from providing,
offering, selling and marketing, advertising by use of
deceptively similar trademark SPEED as that of the
plaintiffs registered trademark SPEED amounting to
infringement or any mark similar to the plaintiffs
registered trademark SPEED or in any other manner
for promoting its products whatsoever,
(b). A perpetual injunction restraining the
defendant, by themselves, its proprietor, servants,
heirs, successors, agents, distributors, stockists,
advertisers, retailers, representatives or any of them
from in any manner passing off and enabling others to
pass off their diamond cutting and polishing tools and
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C.S. No.9 of 2021
for the plaintiff's products by use of identical
trademark SPEED or any other mark similar thereto in
respect of their products or business any other
trademark/label deceptively similar to the plaintiffs
trademark SPEED or in any other manner whatsoever;
(c). Damages to the tune of Rs. 10,00,000/- for
the loss of sale and revenue or such higher amount as
may be claimed by the plaintiff at a later date and as
may be determined by this court upon enquiry.
(d). The defendant be ordered to surrender to the
plaintiff for destruction, diamond cutting and polishing
tools, pouches, prints, dies, blocks, screen prints,
packing and advertising material and any other
material in their possession, which are a substantial
reproduction of the plaintiff's trademark SPEED;
(e). A preliminary decree be passed in favour of
the plaintiff directing the defendant to render accounts
of profits made by them by use of the trademark
SPEED which is identical and/or deceptively similar
and a final decree be passed in favour of the plaintiff
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C.S. No.9 of 2021
for the amount of profits fourd to have been made by
the defendant after the latter has rendered accounts;
(f). For Cost of the suit.
For Plaintiff : Mr.Arun C.Mohan
Sole Defendant : Mrs.G.S.Dhanalakshmi
for Mr.S.T.Raja
for M/s.OM.Sai Ram
JUDGMENT
This suit has been filed by the plaintiff for permanent injuction to
restrain the defendant from infringing the registered trademark of the
plaintiff "SPEED" and for perpetual injunction from passing off. Besides,
other consequential reliefs including damages.
2. The brief averments made in the plaint is that, the plaintiff is a
Company incorporated under the Indian Companies Act. It is a leading
constituent of the US$ 4 Billion worth Murugappa Group of Companies.
The Plaintiff Company is engaged in manufacturing Power Tools,
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Diamond Cuttings and Polishing Tools, Machine Tools, Grindstone,
Abrasives, Refractories, Electro-minerals and Industrial Ceramics. The
plaintiff is the pioneer in coated abrasives, bonded abrasives and tools for
cutting stones in India. Its turnover for the year 2019- 2020 is about 16231
Million INR. During the course of their business, the plaintiff has adopted
various trademarks which includes CARBORUNDUM,
CARBORUNDUM UNIVERSAL, CUMI, CHAMAK, AUTOPAPER,
AJAX, SPEED, JAWAN etc. All these trademarks are reputed and well
received by the trade and public. The trademark "SPEED" was adopted by
the plaintiff in the year 2007, in respect of diamond cutting, polishing
tools, machine tools, hand held tools (mechanically operated). The plaintiff
is the registered proprietor of the mark "SPEED" under class 7. The
registration is valid and in force till date. The mark SPEED has been
openly, extensively and continuously used in respect of diamond cutting
and polishing tools since the year 2007 and extensively renowned
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throughout the trade and public for it quality and durability. The turnover
of the products under the trademark "SPEED" steadily increasing since
2007. For the finance year 2019-2020, the sales turnover is Rs.31.16
crores.
2.1. While so, during the month of October-2020, the plaintiff come
across the defendant's diamond cutting and polishing tool under the mark
"SPEED" in the market. The mark "SPEED" as appearing on the label of
the defendant's product is visually, phonetically and structurally similar to
the plaintiff's registered trademark "SPEED". Arrangement of features as
appearing on the defendant's product and the label is malafide adoption
with intend to infringe the right of the plaintiff by use of the mark SPEED.
They are identical that of the plaintiff's mark and label with the intention to
mislead and confuse the public.
2.2. The plaintiff, immediately caused cease and desist notice to the
defendant, but the defendant did not respond. Hence, the present suit for
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the relief stated.
3. Despite service of summons, since the defendant had not appear
either personally or through counsel, the sole defendant was set ex-parte
and ex-parte decree was also passed by this Court on 07.09.2021.
Subsequently, the ex-part decree was set aside vide order dated 10.08.2023
in A.No.4134 of 2023 in C.S.No.9 of 2021. Though the defendant had filed
an application in A.No.5090 of 2023 to condone the delay of 901 days in
filing the written statement in the present suit, since the delay was beyond
90 days, the said application was dismissed. However, the defendant was
permitted to cross examine the plaintiff's witness and submit arguments.
4. In order to substantiate their claim, one Mr.A.Narayanan, the
General manager-Legal of the plaintiff company filed his proof affidavit
for chief examination reiterating the averments made in the plaint and he
was examined as P.W.1 and also marked 9 documents as Ex.P.1 to Ex.P.9
in which, Ex.P.1 is the photocopy of Board resolution granted by the
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plaintiff in favour of Mr.A.Narayanan dated 03.08.2016, Ex.P.2 is the
photocopy of Certificate of incorporation and certificate of commencement
of plaintiff company dated 21.04.1954, Ex.P.3, is the original invoices
regarding sale of products under the mark SPEED on 2012-2020, Ex.P.4 is
the photocopy of certificate issued by Charted Accountant showing annual
sales figures and sales promotion expenses of plaintiff in respect of the
mark SPEED on 2012-2020, Ex.P.5 is the photocopy of certified copy of
registration certificate for the mark SPEED under No.2358738 in class 7
dated 05.07.2012, Ex.P.6 is the printout of Advertisements and other sales
promotional materials regarding plaintiff's trademark SPEED dated
05.07.2012, Ex.P.7 is the photograph of plaintiff's SPEED label dated
05.07.2012, Ex.P.8 is the photograph of defendant's SPEED label dated
05.07.2012, and Ex.P.9 is the Legal notice issued by the plaintiff's counsel
to defendant dated 08.10.2020.
5. The learned counsel for the plaintiff submitted that though the
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defendant had infringed the trademark of the plaintiff, subsequently after
filing of the present suit, they have stopped and as on date there is no
infringement. However, in order to get appropriate orders restraining the
defendant from infringing the plaintiff's trademark in future, they
continued the suit till date.
6. The learned counsel for the defendant submitted that the plaintiff
has not proved the cause of action as alleged in the plaint and the plaintiff
is not able to establish as to on which date the infringement took place and
also the mode of infringement. Even during cross examination, the plaintiff
could not say as to on what date the infringment took place. It is for the
paintiff to prove his case and the plaintiff cannot take advantage of the
loop hole left by the defendant. Therefore, the suit has to be dismissed.
7. Heard both sides and perused the averments made in the plaint,
the proof affidvit of P.W.1 and also the documents marked on the side of
the plaintiff.
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8. Since the defendant was forfeited from filing the written
statement, there was no oral evidence and pleadings on the side of the
defendant. Therefore, there was no tirable issues. Hence, no isusses were
framed. However, mere non filing of the written statement and the
forefeiture of the defenant would not entitle the plaintiff to get a decree
automatically and the plaintiff has to prove its case.
9. As per the averments made in the plaint and the cause of action,
the case of the plaintiff is that the defendant infringed the trademark of the
paintiff. However, the learned counsel for the plaintiff himself admitted
that subsequent to filing of the present suit, the defendant has stopped
infringing the plaintiff's trademark and they seek appropriate orders to
restrain the defendant from infringing the plaintiff's trademarks in future.
10. Under these circumstances, the plaintiff is entitled to get the
relief of permanent injunction. Accordingly, the defendnat is restrained
from using the trademark of the plaintiff.
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11. Insofar as the other reliefs are concerned, the plaintiff has not
established its claim for other reliefs including damages. Therefore, the
plaintiff is not entiled to other reliefs.
12. Accordingly, this suit is decreed insofar as the relief of
permanent injunction alone is concerned. The suit is dismissed with regard
to the other reliefs.
13. In the result, the suit is decreed in part. No costs.
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Witness examined on the side of the plaintiff;
Mr.A.Narayanan - P.W.1
List of exhibits marked on the side of the plaintiff:
S.No. Exhibits Description of documents
1 Ex.P.1 The photocopy of Board resolution granted by the
plaintiff in favour of Mr.A.Narayanan dated 03.08.2016.
2 Ex.P.2 The photocopy of Certificate of incorporation and
certificate of commencement of plaintiff company dated
21.04.1954.
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S.No. Exhibits Description of documents
3 Ex.P.3 The original invoices regarding sale of products under
the mark SPEED on 2012-2020.
4 Ex.P.4 The photocopy of certificate issued by Charted
Accountat showing annual sales figures and sales
promotion expenses of plaintiff in respect of the mark
SPEED on 2012-2020.
5 Ex.P.5 The photocopy of certified copy of registration certificate
for the mark SPEED under No.2358738 in class 7 dated
05.07.2012.
6 Ex.P.6 The printout of Advertisements and other sales
promotional materials regarding plaintiff's trademark
SPEED dated 05.07.2012
7 Ex.P.7 The photograph of plaintiff's SPEED label dated
05.07.2012.
8 Ex.P.8 The photograph of defendant's SPEED label dated
05.07.2012.
9 Ex.P.9 The Legal notice issued by the plaintiff's counsel to
defendant dated 08.10.2020.
List of witnesses examined on the side of the defendant - Nil
List of exhibits marked on the side of the defendant - Nil
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Index : Yes / No
Speaking Order : Yes / No
Neutral Case Citation : Yes/No
Ksa-2
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P.VELMURUGAN. J.
Ksa-2
28.06.2024
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