Madras High Court
M/S. P.V.S.Knittings vs James Chadwick & Bros. Ltd on 30 April, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2025:MHC:1141
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Order reserved on 21.04.2025
Order pronounced on 30.04.2025
CORAM:
THE HON'BLE MR. JUSTICE SENTHILKUMAR RAMAMOORTHY
C.S.(Comm. Div.) No.182 of 2023 &
(T) OP(TM) No.10 of 2024
M/s. P.V.S.Knittings,
A registered partnership firm
No.3-H, Soosaiyapuram Colony Road,
Rayapuram, Tirupur-641 601. ... Plaintiff and
Petitioner
v.
P. Prakash
Sole Proprietor, trading as M/s. S P S TEX
No.98, 4th Street, Solipalayam,
15 Velampalayam Road,
Tirupur-641 652. ... Defendant and
Respondent
PRAYER in C.S.(CD) No.182 of 2023: This Civil Suit (Comm. Div.)
filed under Order VII Rule 1 CPC read with Order IV Rule 1 OS
Rules read with Sections 27, 28, 29, 134 & 135 of the Trademarks Act,
1999 and Sections 51, 55 & 62 of the Copyrights Act, 1957, praying to
grant a judgment and decree on the following terms:
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a) a permanent injunction restraining the Defendants, by itself, its
partners, men, servants, agents, distributors, stockiest,
representatives or any one claiming through or under them from in
any manner infringing the plaintiff's registered trade mark TWIN
BIRDS under No.3609862 in class 25 or other formative trademarks
by suing a deceptively similar trademark FLY BIRDS or any other
trademark deceptively similar to the plaintiff's registered trade mark
or in any other manner whatsoever;
b) a permanent injunction restraining the Defendants, by itself, its
partners, men, servants, agents, distributors, stockiest representatives
or any one claiming through or under them from in any manner
infringing the plaintiff's copyright in the artistic work depicted in the
TWIN BIRDS label with the use of the two birds device by using the
FLY BIRDS label with the use of the two birds in the same colour
scheme of pink and white which is a substantial reproduction of the
said artistic work or by use of any other label identical or similar to
the plaintiff's artistic work in the TWIN BIRDS label or in any other
manner whatsoever;
c) a permanent injunction restraining the Defendants, by itself, its
partners, men, servants, agents, distributors, stockiest,
representatives or any one claiming through or under them from in
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any manner passing off and/or enabling others to pass off the
Defendants' products under the trademark FLY BIRDS with the use
of the two birds in the same colour scheme of pink and white as and
for the plaintiffs' products by manufacturing, selling, or offering to
sell, distributing, displaying, printing, stocking, using, advertising
their products with a trademark FLY BIRDS or any other trade mark
which is identical or similar to the plaintiff's trademark and trade
dress for their TWIN BIRDS or in any other manner whatsoever;
d) the Defendant be ordered to surrender to Plaintiffs for destruction
of all products, labels, cartons, dyes, blocks, moulds, screen prints,
packing materials and other materials bearing the traDemark FLY
BIRDS or any mark deceptively similar to plaintiffs' registered
trademark 'TWIN BIRDS';
e) a preliminary decree be passed in favour of the Plaintiffs directing
the Defendant to render account of profits made by use of trademark
FLY BIRDS and a final decree be passed in favour of the Plaintiffs for
the amount of profits thus found to have been made by the
Defendant after the latter have rendered accounts; and
(f) for costs of the suit.
PRAYER IN (T)OP(TM) No.10 OF 2024:This Transfer Original
Petition (Trade marks) filed under Sections 47, 57 and 97 of the Trade
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Marks Act, 1999, praying to (a) To cancel and rectify the said
trademark No.3237870 in Class 25 in the Register by expunging all
the entries relating to the said trademark No.3237870 and; (b) the
registered proprietors be ordered to pay the costs of the present
proceedings.
For Plaintiff/ : Mr.Satish Parasaran, Senior Advocate
Petitioner for M/s.R.Sathish Kumar &
Ms.Meha Varshni, Advocates
For Defendant/ : Ms.Chitra Sampath, Senior Advocate
Respondent for Mr. A.K.Rajaraman, Advocate
COMMON JUDGMENT
The suit was filed seeking relief in respect of alleged
infringement of the plaintiff's registered trade mark 'TWIN BIRDS'
bearing Trade Mark No.360862 in Class 25 or other formative trade
marks by using the trade mark 'FLY BIRDS' or any other trade mark
deceptively similar to the plaintiff's registered trade marks. The
plaintiff also seeks relief in respect of alleged passing off by the
defendant by sale of products under the trade mark 'FLY BIRDS'
with the device of two birds by adopting the same colour scheme of
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pink and white as that adopted by the plaintiff for its products under
the trade mark 'TWIN BIRDS'. Apart from the above, the plaintiff has
also sought relief in respect of alleged copyright infringement in
relation to its label comprising the words 'TWIN BIRDS' along with
the device of two birds in a pink and white colour scheme.
2. In (T)OP(TM) No.10 of 2024, the petitioner, i.e. the plaintiff in
the civil suit, seeks rectification of the register of trade marks by
cancelling the entry relating to Trade Mark No.3237870 in Class 25.
Both the suit and the rectification petition are disposed of by this
common judgment.
Pleadings, issues and evidence
3. In the plaint, the plaintiff states that a registered partnership
firm was formed to carry on the business of manufacturing and
marketing hosiery, ready made garments, under garments, knitted
garments and other articles of clothing under various brand names,
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including the renowned 'TWIN BIRDS' and variants thereof. The
plaintiff further states that the said trade mark was adopted by the
founder of the firm in the year 1969 and has been used ever since. In
paragraph 6 of the plaint, the various registrations obtained by the
plaintiff for both word and device marks containing the element
'TWIN BIRDS' are set out. In paragraph 7, the plaintiff states that the
trade mark 'TWIN BIRDS' is used both directly by the plaintiff and
through the plaintiff's licensee, Network Clothing Company Private
Limited ('Network Clothing'). The plaintiff also states that the said
licensee is a registered user of some of the trade marks of the
plaintiff.
4. After setting out details of oppositions filed by the plaintiff to
protect its trade mark at paragraph 11 of the plaint, at paragraph 13,
the plaintiff states that it came across the following registered Trade
Mark No.3237870 in class 25 for apparel:
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According to the plaintiff, the adoption of the impugned trade mark
was dishonest and intended to capitalize on the goodwill and
reputation of the plaintiff. After further referring to the filing of the
rectification petition, the plaintiff states that an ordinary purchaser
with imperfect memory would not be able to differentiate between
the plaintiff's and the defendant's products and that the plaintiff has
suffered substantial loss on account of the use of the impugned mark
by the defendant. After further asserting that there is no delay in
filing the suit inasmuch as the plaintiff became aware of the
defendant's use only in April, 2022, and instituted the present suit in
April, 2023.
5. In the written statement, the defendant asserts that its device
mark is different and dissimilar to the plaintiff's trade mark 'TWIN
BIRDS'. The defendant further states in paragraph 6, with particulars,
that the use of birds is common to trade and that there are more than
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50 active trade marks containing the word 'birds'. In paragraph 7 of
the written statement, the defendant has asserted that the suit is not
maintainable in view of the failure to join a necessary party, namely,
the licensee.
6. The defendant further states that there is a delay of five years
by the plaintiff in the initiation of legal proceedings. After pointing
out that the defendant's trade mark was advertised in the trade mark
journal, the defendant states that the plaintiff is not entitled to relief
on grounds of delay, laches and acquiescence. As regards the use of
the colour 'pink', it is stated that the said colour is used universally in
relation to products pertaining to girls/women. After further
asserting that the plaintiff has not suffered any loss on account of the
use of the impugned mark by the defendant, the defendant prays for
dismissal of the suit.
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7. In the rectification petition, the petitioner asserts that it
adopted and used the trade mark 'TWIN BIRDS' and its variants
since the early 1960s and has continued using the same ever since.
After referring to the impugned trade mark, the rectification
petitioner asserts that the said trade mark was adopted dishonestly.
After further stating that the petitioner qualifies as a 'person
aggrieved', it is stated that the use of the impugned mark is likely to
cause deception or confusion. The user claim of the first respondent
is disputed by pointing out defects in the documents relating to use
of the impugned mark. By further asserting that the registration of
the impugned mark was in violation of both Sections 9 and 11 of the
Trade Marks Act, 1999 (the TM Act), the petitioner states that the said
entry was therefore made without sufficient cause.
8. In the counter statement, the first respondent asserts that the
application for registration was filed on 18.04.2016 by asserting use
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since 01.04.2016, and that the mark was advertised in Trade Mark
Journal No.1884 on 14.01.2019. Thereafter, the trade mark was
registered with effect from 18.04.2016 on 30.05.2019. By further
asserting that the trade marks of the petitioner and the first
respondent are not similar, the said respondent states that the
petitioner has acquiesced in the use of the impugned mark by failing
to initiate any action in spite of being fully aware of the first
respondent's use of the trade mark. Therefore, it is stated that the
entry was made in conformity with applicable provisions of the TM
Act and that no case is made out to rectify the register by expunging
the entry.
9. Upon considering the pleadings, the Court framed the
following issues on 08.01.2024 in the suit:
(a) Whether this Court has the territorial jurisdiction to try the
suit?
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(b) Whether the plaintiff is the registered proprietor of the
trademark 'TWIN BIRDS' and other formative trademarks?
(c) Whether the mark 'FLY BIRDS' is phonetically, visually and
structurally similar to the plaintiff's registered mark 'TWIN BIRDS'?
(d) Whether the suit suffers from delay, laches and
acquiescence?
(e) Whether the term 'BIRDS' is common to readymade
garments trade and whether the plaintiff or defendant can claim
exclusive right over the same?
(f) Whether the plaintiff is the prior user of the term 'BIRDS'?
(g) Whether the defendant is mala fide in adopting 'Pink' and
'White' combination to depict their trademark as the same is common
to cosmetics and feminine products?
(h) Whether the defendant is passing off their products as that
of the plaintiff by using the trademark 'FLY BIRDS'?
(i) To what other reliefs?
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10. By order dated 16.04.2024, the rectification petition was
transferred to the file of this Court to be adjudicated along with the
suit. Evidence was recorded in common in both the rectification
petition and the suit. The plaintiff/rectification petitioner adduced
evidence by examining Mr.M.Ravi, Partner, as PW1. In course of his
examination-in-chief, 31 documents were exhibited as Exs.P1 to P31.
PW1 was cross-examined thereafter by learned senior counsel for the
defendant/respondent. The defendant/respondent adduced
evidence by examining himself as DW1. During his examination-in-
chief, 34 documents were exhibited as Exs.D1 to D34. DW1 was
cross-examined by learned counsel for the plaintiff.
Counsel and their contentions
11. Oral arguments on behalf of the plaintiff were advanced by
Mr.Satish Parasaran, learned senior counsel, and by Mr.R.Sathish
Kumar, learned counsel. Oral arguments on behalf of the defendant
were advanced by Mrs.Chitra Sampath, learned senior counsel,
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assisted by Mr.Rajaraman, learned counsel. Both the contesting
parties filed written arguments.
12. The first contention of Mr.Satish Parasaran was that the
plaintiff is the registered proprietor of the trade mark 'TWIN BIRDS'
and its formative marks. By referring to and relying upon Exs.P1 to
P14, learned counsel submitted that these documents clearly
establish that the plaintiff is the registered proprietor of multiple
trade marks containing the element 'TWIN BIRDS'. He also
submitted that these registrations are not only for device marks but
also for word marks. As regards evidence of use, learned senior
counsel referred to the invoices exhibited collectively as Ex.P18. He
pointed out that the first invoice placed on record by the plaintiff is
invoice dated 30.04.2007 and that this invoice clearly contains the
trade mark 'TWIN BIRDS'. He also pointed out that Ex.P18 includes a
large number of invoices issued by the plaintiff between 30.04.2007
and 24.03.2015. He also referred to invoices issued by Network
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Clothing, the first of these invoices being invoice dated 22.01.2011,
which were also included in Ex.P18.
13. As regards evidence of turnover of the plaintiff from sale of
products bearing the trade mark 'TWIN BIRDS', by referring to the
certificate issued by Mr.Thangavel, Chartered Accountant (Ex.P17),
learned senior counsel submitted that the turn over was
Rs.1,96,27,174/- in financial year 2021-22 and that the turnover of the
licensee, Network Clothing, for the same financial year was
Rs.101,41,48,060/-. In effect, he submitted that the aggregate
turnover of the plaintiff and its licensee for financial year 2021-22
was Rs.103,40,75,234/-.
14. Learned senior counsel next referred to the rival mark 'FLY
BIRDS' and submitted that the application for registration of the said
mark was filed in 2016. By comparing the plaintiff's label with the
defendant's label, learned senior counsel submitted that the marks
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are undoubtedly deceptively similar not only on account of the use of
the common word 'birds' in the two marks but also because of the
commonality of both the device of two birds and the pink and white
colour scheme. Learned senior counsel thereafter referred to the
cross-examination of DW1 with particular reference to the answers to
questions 18 to 19, 39 to 41 and 109 to 117.
15. As regards the invoices filed by the defendant, learned
senior counsel submitted that these invoices appear to have been
created for purposes of the case. With specific reference to invoice
dated 25.4.2017 (Ex.D19), learned senior counsel submitted that the
invoice was issued before the Goods and Services Tax legislations,
such as the Central Goods and Services Tax Act, 2017, came into force
on 01.07.2017. However, he points out that the invoice contains the
GST registration number of the defendant. He also pointed out that
the invoice value in numbers is shown as Rs.18,700/-, whereas, in
words, it is shown as Rs.1,62,787.8. In this connection, by referring to
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the answers of DW1 to question Nos.80 and 82, he pointed out that
DW1 admitted that the same pen was used for signing all these
invoices. Therefore, he contends that the credibility of these invoices
is highly suspect and that materiality and weight should not be
attached thereto.
16. By contending that the defendant failed to produce any
evidence of advertising the impugned trade mark, learned senior
counsel referred to the answer of DW1 to question No.91 and pointed
out that DW1 admitted that the first advertisement was issued in
2022 after the defendant issued a reply to lawyer's notice dated
11.05.2022. The last contention of learned senior counsel was that
Network Clothing was permitted to use the plaintiff's trade mark
under a licence agreement followed by registered user agreement
dated 16.12.2015 [Ex.P16]. Consequently, he submitted that the
plaintiff is entitled to rely upon the evidence of use of the
licensee/registered user.
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17. In support of the above contentions, learned counsel for the
plaintiff, Mr.Sathish Kumar, referred to and relied upon the
following judgments:
(i) Corn Products Refining Co. v. Shangrila Food Products Ltd, AIR
1960 SC 142 (Corn Products), for the proposition that the existence of
registered trade marks on the register does not qualify as evidence of
use.
(ii) Amritdhara Pharmacy v. Satya Deo Gupta (Amritdhara
Pharmacy), AIR 1963 SC 449, in support of the anti-dissection rule.
(iii) Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited,
(2001) 5 SCC 73, wherein the principles laid down in Amritdhara
Pharmacy were cited with approval.
(iv) National Sewing Thread Co. Ltd vs James Chadwick & Bros. Ltd,
AIR 1953 SC 357, wherein the change from the word 'Eagle' to
'Vulture' was held to be insufficient to dispel the conclusion of
deceptive similarity.
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(v) Parle Products (P) Ltd v. J. P. & Co.,( 1972) 1 SCC 618, with
regard to the requirement for examining overall similarity instead of
looking for differences.
(vi) M/S.Heinz Italia & Anr v. Dabur India Ltd., (2007) 6 SCC 1,
with regard to the grant of relief upon finding of dishonesty.
(vii) Neuberg Hitech Laboratories Pvt. Ltd. v. Dr.Ganesan's Hitech
Diagnostic Centre, 2022 SCC Mad 8779, with regard to the spectrum of
distinctiveness.
(viii) R. Gopalakrishnan v. M/S. Venkateshwara Camphor Works,
2000 (IV) CTC 222, with regard to the grant of relief upon a finding of
dishonesty.
(ix) P.M.Palani Mudaliar & Co v. M/S.Jansons Exports, AIR 2017
MAD 105 (Palani Mudaliar), with regard to the requirements for a
finding of publici juris.
(x) National Bell Co. v. Gupta Industrial Corporation, 1970 (3) SCC
665 (National Bell Co.), regarding the requirement of substantial use to
establish that the mark is common to trade.
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(xi) Fatima Tile Works and Another v. Sudarsan Trading Co. Ltd.
and another, AIR 1992 Mad 12, for the proposition that use by an
entity with which the plaintiff has trade connection is acceptable as
evidence of use by the plaintiff.
18. Submissions were made in response and to the contrary by
Mrs.Chitra Sampath, learned senior counsel. Her first submission
was that the defendant applied for registration of the trade mark
'FLY BIRDS' on 18.04.2016 by asserting use since 01.04.2016.
Therefore, she submits that the plaintiff was required to adduce
evidence to establish goodwill and reputation prior to the date of
adoption of the mark by the defendant. By referring to Ex.P18 series
and, in particular, invoice dated 30.04.2007, learned senior counsel
submitted that the invoice discloses use of 'Twin Birds rib trunk'. In
other words, she submitted that these invoices do not contain any
evidence of use of the device mark exhibited by the plaintiff as Ex.P5.
In this connection, she contended that the suit is in respect of alleged
infringement of Ex.P5 and passing off in relation thereto.
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19. As regards the invoices issued by Network Clothing,
learned senior counsel submitted that these invoices were not filed
along with the suit. According to her, if these invoices were genuine
and in the possession, custody, control or power of the plaintiff, these
invoices should have been filed at the time of institution of the suit.
After further submitting that the defendant disputed the invoices,
she pointed out that the originals were not filed by the plaintiff. She
also submitted that the plaintiff is not entitled to rely upon evidence
of use by Network Clothing to establish use by the plaintiff. In
support of this contention, by referring to Ex.P16, i.e. trade mark user
agreement dated 16.12.2015, learned senior counsel submitted that
this agreement sets out the list of registered trade marks that form
the subject of the agreement, and that Trade Mark No.3015072
(Ex.P5) is not mentioned therein. Consequently, learned senior
counsel submitted that the use by Network Clothing of the trade
mark depicted in Ex.P5 was not authorized and that the same cannot
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be relied upon by the plaintiff. In this connection, she further
submitted that Ex.P16 refers to a deed of license dated 01.04.2010, but
the same was not placed on record by the plaintiff. The answer of
PW1 to Question No.14, wherein the witness deposed that only one
agreement was signed with Network Clothing was also relied on by
her.
20. As regards advertisements, learned senior counsel
submitted that the invoices raised by the advertisers are in the name
of Network Clothing and not in the name of the plaintiff. By referring
to the evidence of PW1, learned senior counsel submits that DW1
admitted in response to Questions 10 to 12 that the plaintiff started
using the trade marks only from 04.01.2010. Her next contention was
that the distributor agreements between Network Clothing and third
parties (Ex.P20 series) records that Network Clothing is the owner of
the trade marks. With reference to the certificate issued by the
Chartered Accountants (Ex.P16), learned senior counsel submitted
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that the certificate does not contain any details of advertising
expenditure. In fact, she contends that the sales turnover mentioned
in the certificate indicates that the plaintiff's business was not
affected by the sale of products bearing the impugned mark by the
defendant.
21. By referring to the answer to Question No.113, learned
senior counsel submitted that the plaintiff is targeting English
speaking customers from higher economic strata and that this is
evident from PW1's answer that the plaintiff is targeting Pan-India
and global customers. By contrast, learned senior counsel submitted
that the defendant's customers are local and that this eliminates the
likelihood of confusion or deception. The last contention of learned
senior counsel was that PW1 was unable to specify the date of
knowledge of use of the impugned mark and that he stated, in
response to Question No.46, that only the team was aware of the date
of knowledge of such use.
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22. In support of these contentions, learned senior counsel
referred to and relied upon the following authorities:
(i) Honda Motor Company Ltd. v. Kewal Brothers and others,
MANU/WB/0353/1999, particularly paragraphs 37 and 38 thereof,
regarding the date of adoption of the impugned mark by the
defendant being the relevant date to establish the goodwill and
reputation of the plaintiff.
(ii) Brihan Karan Sugar Syndicate Private limited v. Yashwantrao
Mohite Krushna Sahakari Sakhar Karkhana, MANU/SC/1020/2023,
particularly paragraph 13 thereof, regarding the necessity to prove
expenditure incurred on promotion and advertisement in an action
for passing off.
(iii) Pfizer Products Inc. v. Renovision Exports Pvt. Ltd. And
another, 2024 SCC OnLine Del 3140, particularly paragraph 30 thereof,
with regard to the requirement by a plaintiff in a passing off action to
establish the three elements referred to as the classic trinity test.
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(iv) Definition of bird from the Cambridge Dictionary.
(v) Article in the Brittanica regarding the association of the pink
colour with girls.
(vi) Reference to the colour pink in relation to girls in the
Handbook on Combating Gender Stereotypes published by the
Supreme Court of India.
23. By way of rejoinder, Mr.Sathish Kumar's submissions may
be summarised as follows:
(i) the goods of the plaintiff and the defendant are identical and
the customer base is common.
(ii) The defendant has copied multiple features, such as the
word 'birds', the device of two birds and the pink and white colour
combination.
(iii) It is not material as to who has issued the advertisements;
what is material is that the trade mark was advertised.
(iv) The trade mark applicant can choose to apply for
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registration even many years after commencing use of the relevant
trade mark.
(v) The plaintiff's case is not built only on Ex.P5. It is built on a
range of trade marks containing the element 'TWIN BIRDS',
including the device mark containing the element 'TWIN BIRDS'
along with the pictorial depiction of birds in pink and white colour
combination.
(vi) The TM Act does not contain any restriction regarding
grant of licence in respect of unregistered trade marks. Therefore, the
permission granted to Network Clothing with regard to Ex.P5 trade
mark is not contrary to the TM Act.
(viii) Even if computed from the date of advertisement of the
defendant's trade mark on 14.01.2019, it cannot be said that the
plaintiff had acquiesced as per Section 33 of the TM Act. In view of
the first advertisement by the defendant being published only in
2022, the plaintiff has approached the Court within a reasonable
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period. In any event, delay on the part of the plaintiff will not stand
in the way of grant of relief.
Discussion, analysis and conclusion:
Issue (a)
24. A preliminary issue was framed with regard to the
territorial jurisdiction of the Court. In the plaint, the plaintiff asserted
at paragraph 29 that the defendant's products were available at
Purasawalkam and T.Nagar in Chennai. In support of this assertion,
the plaintiff exhibited invoices dated 25.01.2023 issued by Women's
World, Ranganathan Street, T.Nagar, Chennai, for sale of ankle
leggings bearing the trade mark 'FLY BIRDS'. Similarly, the plaintiff
exhibited invoice dated 25.01.2023 issued by Ranjanas Garments
Private Limited No.238, Purasawalkam High Road, Purasawalkam,
Chennai-600 007, for ladies' full length leggings under the brand
'FLY BIRDS'. These documents establish that the cause of action has
arisen within the territorial limits over which this Court exercises
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jurisdiction. Issue (a) is therefore decided in favour of the plaintiff
and against the defendant.
Issues (b) and (f)
25. Issue (b) relates to whether the plaintiff is the registered
proprietor of the trade mark 'TWIN BIRD' and other formative trade
marks. On a mere perusal of Exs.P1 to P14, which are legal use
certificates relating to multiple trade marks containing the element
'TWIN BIRDS', it is beyond doubt that the plaintiff is the registered
proprietor thereof.
26. Issue (f) pertains to whether the plaintiff is the prior user of
the word 'BIRDS'. In Ex.P1, which is the legal use certificate of Trade
Mark No.258263, it is stated that the application was on 'proposed-to-
be-used' basis. Similar statements are made in Exs.P2 and P3. Ex.P4 is
in relation to the following device mark under trade mark
No.1912151 in Class 25:
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An assertion of use since 04.01.2010 has been made in respect thereof.
Ex.P5 relates to the following device mark:
As in the case of Ex.P4, an assertion of use since 04.01.2010 is made.
27. As evidence of use, the plaintiff exhibited invoices under
Ex.P18. Ex.P18 consists of invoices issued by the plaintiff and by
Network Clothing. The earliest invoice in Ex.P18 is invoice dated
30.04.2007, which was issued by the plaintiff, PVS Knittings. This
invoice is in respect of goods under the name TB Fine Trunk or Twin
Birds S. Rib Trunk. These invoices also contain a device mark. The
device mark of Ex.P5 is seen in invoices issued by Network Clothing,
the earliest being invoice dated 22.01.2011.
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28. Learned senior counsel for the defendant objected to these
invoices on the ground that they were not filed at the time of
institution of the suit. This objection is no longer tenable because
these documents were permitted to be filed with the leave of this
Court in A.No.1715 of 2024 by order dated 26.03.2024. The other
ground of challenge is that originals were not produced. On
examining the invoices, each invoice contains an invoice number,
TIN, CST No. and even Central Excise No. Therefore, there is no
reason to doubt the credibility of these invoices merely because these
invoices were filed at the time of trial and not at the time of
institution of the suit or because originals were not filed.
29. Learned senior counsel for the defendant also contended
that these invoices cannot be relied upon because Network Clothing
was not authorized to use the device mark of Ex.P5 under Ex.P16.
Therefore, this contention should be considered. By way of statutory
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context, it should be borne in mind that, under Section 28 of the TM
Act, the registered proprietor is entitled to sue for infringement and
the joinder of the licensee is not necessary for such purpose. Ex.P16
was executed on 16.12.2015 by and between the plaintiff and
Network Clothing. The first recital is as under:
“WHEREAS the party of the first part has
already executed a Deed of License to exploit and
use their trademarks, applied and pending for
registration as on the date of execution i.e.,
01/04/2010, favouring M/s. NETWORK
CLOTHING COMPANY PRIVATE LIMITED.”
Thereafter, parties have set out a list of 34 registered trade marks in
respect of which Network Clothing has been conferred the status of
registered user. This list of 34 registered trade marks does not include
Ex.P5. On perusal of Ex.P5, it is noticeable that the application for
registration was filed on 22.07.2015, but the registration certificate
was issued on 02.01.2019. Consequently, as on the date of execution
of Ex.P16 agreement, the device mark shown in Ex.P5 was
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unregistered. Given that Ex.P16 was confined to trade marks of the
plaintiff which had been registered as on 16.12.2015, the reason for
non-inclusion of Ex.P5 trade mark is clear.
30. The TM Act defines 'permitted user' in Section 2(1)(r) as
under:
“2. Definitions and Interpretation- 1)In this
Act, unless the context otherwise requires,—
(r) “permitted use”, in relation to a registered
trade mark, means the use of trade mark—
(i)by a registered user of the trade mark in
relation to goods or services—
(a)with which he is connected in the course
of trade; and
(b)in respect of which the trade mark
remains registered for the time being; and
(c)for which he is registered as registered
user; and
(d)which complies with any conditions or
limitations to which the registration of registered
user is subject; or
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(ii)by a person other than the registered
proprietor and registered user in relation to goods
or services—
(a)with which he is connected in the course
of trade; and
(b)in respect of which the trade mark
remains registered for the time being; and
(c)by consent of such registered proprietor
in a written agreement; and
(d)which complies with any conditions or
limitations to which such user is subject and to
which the registration of the trade mark is
subject;”
The above definition reveals that such use may be either by a
registered user or by a person other than a registered user. In both
cases, the definition pertains only to registered trade marks. Since
Ex.P5 trade mark was unregistered as on the date of execution of
Ex.P16, it was permissible for the plaintiff to license the use thereof
without complying with the requirements of Section 2(1)(r) of the TM
Act.
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31. In this connection, it should also be noticed that the plaintiff
is a registered partnership firm and that Mr.M.Ravi is one of the
partners. The said Mr.Ravi is the Managing Director of Networking
Clothing, as is evident from Ex.P16. In fact, Ex.P16 has been executed
on behalf of Networking Clothing by Mr.M.Ravi, Managing Director.
At paragraph 7 of the plaint, the plaintiff stated, in relevant part, as
under:
“...The plaintiff states that they are using
the trademark TWIN BIRDS themselves and also
through their licensee, NETWORK CLOTHING
COMPANY PRIVATE LIMITED. The said
company is also a registered user of some of the
trademarks of the plaintiff and necessary
applications have been filed in the Trade Marks
Registry.”
The above pleading makes it clear that Network Clothing was using
the trade mark 'TWIN BIRD' both as licensee and as registered user
of certain registered trade marks of the plaintiff. In Fatima Tile Works,
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this Court concluded that it is sufficient if the connection between the
proprietor of the mark and the goods is established. In the facts and
circumstances outlined above, such connection has been established
and, therefore, the plaintiff is entitled to rely on evidence of use by
sale through its licensee/registered user, Network Clothing. The
evidence on record, thus, leads to the conclusion that the plaintiff has
used the word mark 'TWIN BIRDS' from 2007 and the device mark of
Ex.P5 from 2011.
32. As evidence of use of the impugned mark, the defendant
has placed on record invoices under Ex.D19. The first of these
invoices is dated 25.04.2017. As such, there is no doubt that the
plaintiff is the prior user of the mark 'TWIN BIRDS' in comparison to
the defendant's first use of the mark 'FLY BIRDS'. As regards invoice
dated 25.04.2017, as contended by learned senior counsel for the
plaintiff, the invoice value in numbers (Rs.18,700/-) does not tally
with the invoice value in words (Rs.1,62,787.8). It is also pertinent to
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notice that the invoice contains the GST registration number of the
defendant although the GST enactments came into force only on
01.07.2017. Since the evidence on record leads to the conclusion that
the plaintiff is the prior user of the mark 'TWIN BIRDS', Issue (f) is
decided in favour of the plaintiff and against the defendant.
Issue (d):
33. This issue relates to whether the suit suffers from delay,
laches and acquiescence. I deal with acquiescence first. Section 33 of
the TM Act, which deals with acquiescence is as under:
“33. Effect of acquiescence.—
(1) Where the proprietor of an earlier trade mark
has acquiesced for a continuous period of five
years in the use of a registered trade mark, being
aware of that use, he shall no longer be entitled
on the basis of that earlier trade mark—
(a)to apply for a declaration that the registration
of the later trade mark is invalid, or
(b)to oppose the use of the later trade mark in
relation to the goods or services in relation to
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which it has been so used, unless the registration
of the later trade mark was not applied in good
faith.
.(2)Where sub-section (1) applies, the proprietor
of the later trade mark is not entitled to oppose
the use of the earlier trade mark, or as the case
may be, the exploitation of the earlier right,
notwithstanding that the earlier trade mark may
no longer be invoked against his later trade
mark.”
As is evident from a plain reading of Section 33, in order to establish
'acquiescence', the defendant should provide 'proof' that the plaintiff
[proprietor of the earlier trade mark] acquiesced for a continuous
period of five years in the use of the registered trade mark in spite of
being aware of such use.
34. The plaintiff applied for registration on 18.04.2016.
However, the plaintiff has not placed on record any evidence of use
prior to 25.04.2017. As indicated earlier, invoice dated 25.04.2017
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does not inspire confidence in view of discrepancies discussed
earlier. In course of cross-examination of DW1, learned counsel for
the plaintiff has also elicited other discrepancies in these invoices
with regard to the use of the same pen for signing the invoices.
Reference may be made, in this regard, to the answers to Questions
80 and 82 during cross-examination of DW1. The defendant's trade
mark was advertised in the trade mark journal on 14.01.2019. Even if
knowledge of such advertisement were to be attributed to the
plaintiff, a continuous period of five years had not elapsed between
14.01.2019 and the date of institution of the suit in 2023. Therefore,
the defendant has failed to establish acquiescence as per Section 33
of the TM Act. It remains to be considered whether there was delay
or laches and, if so, the implications thereof.
35. In the plaint, the plaintiff asserted that it became aware of
the defendant's use of the impugned mark only in April, 2022. On
23.04.2022, the plaintiff filed the rectification application. A lawyer's
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notice was issued by the plaintiff to the defendant on 29.04.2022
(Ex.P23). The defendant replied thereto on 11.05.2022 (Ex.P24). After
obtaining copies of invoices dated 25.01.2023 evidencing sale of
products bearing the impugned mark in Chennai (Ex.P26), the plaint
was presented in April, 2023. In these circumstances, it cannot be
concluded that there was delay and laches in filing the suit. Even
otherwise, while delay and laches would be a material consideration
while deciding whether interim relief should be granted, in an action
for infringement of trade mark and passing off, as held by the
Hon'ble Delhi High Court in M/S. Hindustan Pencils Pvt. Ltd. v. M/s.
India Stationery Products Co. and another, AIR 1990 Del 19, delay per se
will not stand in the way of the plaintiff obtaining relief. Issue (b) is
disposed of on these terms.
Issue (c), (e) and (g):
36. Issue(c) pertains to whether the impugned mark 'FLY
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BIRDS' is phonetically, visually and structurally similar to the
plaintiff's registered mark 'TWIN BIRDS'. In order to consider this
issue, it is pertinent to set out the two device marks.:
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37. The precedents cited at the bar instruct that the comparison
should be made from the perspective of a customer of average
intelligence and imperfect recollection. Such comparison is required
to be made of the marks as a whole on the basis of the overall
impression that the marks would make on the above mentioned
notional person. Both the marks use a common pink and white
colour scheme; both marks contain the word 'birds' prominently; and
both marks contain a pictorial depiction of two birds. This
discussion leads to the clear finding that the rival marks are
deceptively similar and that a consumer would associate the
impugned mark with the plaintiff by assuming a trade connection.
Therefore, Issue (c) is decided in favour of the plaintiff and against
the defendant.
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38. Issue (e) relates to whether the word 'BIRDS' is common to
trade in ready made garments and whether the plaintiff or defendant
can claim exclusive right over the same. While 'BIRDS' is used to
refer generically to all species of avian life and is, therefore, not an
invented word, it would qualify as arbitrary in relation to apparel for
the reason that it is not even suggestive of the nature, quality or
characteristics of apparel. Because the defendant applied for and
obtained registration with effect from 18.04.2016, the question as
whether 'BIRDS' is common to trade should be tested as of the said
date. In paragraph 6 of the written statement, the defendant has
stated that there are several registered trade marks containing the
element 'BIRDS', and a list of about 50 registrations are set out
therein. A similar statement is made in the proof affidavit of DW1,
and the same list is included in the proof affidavit. By way of
documentary proof, the defendant marked Ex.D18. The said exhibit
contains documents relating to the status of these marks. The
documents constituting Ex.D18 relate largely to device marks and a
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few word marks. DW1 was questioned in relation thereto in
questions 18-27. Question and answers 19 and 27 are as under:
Q19: Have you filed any document before the date
of your trademark application for Fly Birds on
18.04.2016 to prove that “birds” was commonly
used in the garment industry before such date?
A: There is a document for LIL Bird and others
prior to 2016 in Ex. D18.
Q27: Therefore, I put it to you that there is no
document to show that when you filed the
trademark application on 18.04.2016 that birds
was common to trade.
A: I deny.
39. On closely examining Ex.D18, it is clear that many of the
marks were applied for and, consequently, registered on a date
subsequent to the date of application by the defendant. In fact, 'Lil
Bird' was applied for and registered after 18.04.2016 and, therefore,
the answer to question 19 by DW1 is contrary to Ex.D18. More
importantly, a large majority are composite device marks containing
other, including pictorial, elements. The Supreme Court held in
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National Bell Co. that a conclusion on common to trade cannot be
drawn unless there is evidence of substantial use by others. The
Division Bench of this Court held in Palani Mudaliar that use by
others should exceed use by the proprietor. Most importantly, any
comparison should be between the rival marks as a whole. When so
compared, the only reasonable inference is that the defendant failed
to establish that the plaintiff's mark is common to the trade or publici
juris. This issue is disposed of on these terms.
Issue (g)
40. Issue (g) pertains to whether the pink and white colour
scheme was adopted mala fide. As contended by learned senior
counsel for the defendant, the colour pink is often associated with
products used by girls/women, and the plaintiff cannot claim
exclusivity to the use of the colour pink or even the combination of
pink and white per se. However, in the case at hand, the defendant
has adopted the impugned device mark consisting of the words 'FLY
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BIRDS' combined with the pictorial device of the birds and the pink
and white combination. Such adoption was in 2016, which is
subsequent to the plaintiff's adoption in 2010 and use in 2011. Given
that the marks are used in respect of identical goods by two parties
based out of the same town, when the two marks are compared as a
whole in context, it appears that the adoption and use of the pink and
white combination is mala fide.
Issue (h)
41. Issue (h) pertains to whether the defendant is passing off its
products as those of the plaintiff by using the impugned mark 'FLY
BIRDS'. As stated earlier, comparison of the two marks as a whole
leads to the conclusion that the marks are deceptively similar. The
plaintiff is the prior user and has placed on record evidence of use at
least from 2011. The plaintiff has also placed on record the Chartered
Accountant's certificate. The said certificate discloses that the
turnover of the plaintiff was Rs.1,96,27,174/- in 2021-22 and that the
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turnover of the licensee/registered user Network Clothing was
Rs.101,44,48,016/- during the same period. The plaintiff has also
placed on record evidence of advertising its mark under Ex.P19. Such
advertisements appear to have been issued between 1995 and 2022.
The evidence on record, therefore, leads to the conclusion that the
plaintiff has established reputation and goodwill.
42. The inference that follows from this discussion is that the
defendant has made a misrepresentation with regard to its goods in
relation to the goods of the plaintiff. This is likely to cause loss to the
plaintiff. Therefore, the classic trinity of reputation and goodwill,
misrepresentation and likely loss stands established. Issue (h) is,
therefore, decided in favour of the plaintiff and against the
defendant.
43. For reasons set out above, the plaintiff is entitled to the
reliefs claimed in the suit both in respect of infringement and passing
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off. Since the defendant appears to have been selling goods bearing
the impugned mark for many years, as regards fully ready apparel
bearing the impugned mark, the orders of permanent injunction shall
not operate for a period of four months from the date of receipt of a
copy of this order so as to enable the defendant to liquidate such
inventory. This is subject to the condition that an affidavit providing
details of such inventory is filed in Court within two weeks from the
date of receipt of a copy of this order after serving a copy thereof on
the plaintiff's counsel. The preliminary decree to provide an account
of profits shall, however, cover such inventory also. As the successful
party, the plaintiff is also entitled to costs towards court fees,
lawyer's fees and other expenses. The defendant is liable to pay an
aggregate sum of Rs.5,00,000/- as costs to the plaintiff.
44. Likewise, for reasons set out above, the entry relating to the
impugned mark in the rectification petition was made in
contravention of Section 11 of the TM Act. Effectively, the entry was
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made without sufficient cause, and rectification is warranted.
45. C.S. (Comm.Div.) No.182 of 2023 is, therefore, decreed as
per prayers (a) to (e) of paragraph 33 of the plaint subject to the
qualification that the permanent injunctions shall not operate to
preclude the sale of fully ready apparel bearing the impugned mark
by the defendant directly, or through authorised distributors,
wholesalers, retailers and the like, for a period of four months from
the date a web copy of this judgment is uploaded. This exemption is
subject to the condition that the defendant files an affidavit before
this Court providing particulars of fully ready apparel bearing the
impugned mark within two weeks from the date the web copy of this
order is uploaded under copy to plaintiff's counsel. The defendant is
also directed to pay an aggregate sum of Rs.5,00,000/- as costs to the
plaintiff.
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46. (T)OP(TM) No.10 OF 2024 is allowed by directing the
Registrar of Trade Marks to cancel the entry relating to Trade Mark
No.3237870 in Class 25 in the Register of Trade Marks. This action
shall be completed within 30 days from the date the web copy of this
judgment is uploaded. There will be no order as to costs.
30 .04.2025
Index : Yes/No
Internet : Yes/No
Neutral
Citation : Yes/No
kal
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Plaintiff's witness:
P.W.1 – Mr.M.Ravi
Documents exhibited by the plaintiff:
Exhibits Documents
Ex.P1 The copy of the trademark registration under No.258623 in
Class 25 dated 23.07.1969 (compared with original)
Ex.P2 The copy of the trademark registration under No.355765 in
Class 25 dated 26.11.1979 (compared with original)
Ex.P3 The copy of the trademark registration under No.360862 in
Class 25 dated 18.04.1980 (compared with original)
Ex.P4 The copy of the trademark registration under No.191251 in
Class 25 dated 23.07.2910 (compared with original)
Ex.P5 The copy of the trademark registration under No.3015072 in
Class 25 dated 22.07.2015 (compared with original)
Ex.P6 The copy of the trademark registration under No.3015073 in
Class 25 dated 22.07.2015 (compared with original)
Ex.P7 The copy of the trademark registration under No.3015074 in
Class 25 dated 22.07.2015 (compared with original)
Ex.P8 The copy of the trademark registration under No.3015075 in
Class 35 dated 22.07.2015 (compared with original)
Ex.P9 The copy of the trademark registration under No.3015076 in
Class 24 dated 22.07.2015 (compared with original)
Ex.P10 The copy of the trademark registration under No.3015077 in
Class 35 dated 22.07.2015 (compared with original)
Ex.P11 The copy of the trademark registration under No.3024985 in
Class 35 dated 04.08.2015 (compared with original)
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Exhibits Documents
Ex.P12 The copy of the trademark registration under No.3105645 in
Class 35 dated 24.11.2015 (compared with original)
Ex.P13 The copy of the trademark registration under No.5226139 in
Class 24 dated 29.11.2021 (compared with original)
Ex.P14 The copy of the trademark registration under No.5226140 in
Class 25 dated 29.11.2021 (compared with original)
Ex.P15 The (series 8 nos) printouts of the GST registrations from
various states in India from the year 2017 to 2022 (65B
affidavit filed)
Ex.P16 The copy of the licence agreement dated 16.12.2015.
(Compared with original)
Ex.P17 The original chartered accountant certificate dated 24.08.2022.
Ex.P18 The copy of the invoices from the year 2007-2022. (The
learned counsel for the defendant has objected that some of the
documents marked are photocopies and originals have not
been produced for comparison)
Ex.P19 The copy of the advertisements from the year 1995-2022. (The
learned counsel for the defendant has objected that some of the
documents marked are photocopies and originals have not
been produced for comparison)
Ex.P20 The (series 18 documents) copy of the said distributor's
agreements. (compared with original except the agreement
dated 25.0.2021)
Ex.P21 The printout of the rectification petition (65B affidavit filed)
Ex.P22 The printout of the photographs of the comparison of the
promotional materials (65B affidavit filed)
Ex.P23 The copy of legal notice sent by the plaintiff to the defendant
dated 29.04.2022.
Ex.P24 The copy of reply notice sent by the defendant to the plaintiff
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Exhibits Documents
dated 11.05.2022.
Ex.P25 The copy of affidavit of the evience filed by the defendant
dated 11.10.2022 (65B affidavit filed)
Ex.P26 The copy of the invoices (2 nos) dated 25.01.2023
Ex.P27 The printout of the colour photos of the plaintiff's trademark
TWIN BIRDS
Ex.P28 The printout of the colour photos of the defendant's trademark
FLY BIRDS
Ex.P29 The copies of the printouts from the website of the
petitioner.(65B affidavit filed)
Ex.P30 The copies of the online status showing petitioner's products
being available online in E-commerce websites. (65B affidavit
filed)
Ex.P31 The copies of the online status of the oppositions (65B
affidavit filed)
Ex.P32 The extract from the register under No.5527640 in class 35 for
the trademark “Fly Birds Device”.
Ex.P33 The opposition is filed for an application under No.5761586 in
class 25 for the trademark Flying Birds by the defendant.
Ex.P34 The opposition is filed for an application under No.53133633
in class 25 for the trademark Fly Birds by the defendant
Ex.P35 The opposition is filed for an application under No.5594624 in
class 25 for the trademark Fly Birds by the defendant
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Defendant's witness:
D.W.1 – Mr.P.Prakash
Documents exhibited by the Defendant:
Exhibits Documents
Ex.D1 The original carton box bearing the name of the plaintiff.
Ex.D2 The photocopy of the certificate of registration -Commercial
Taxes Departments – FORM – D dated 29.04.2015. (Original
produced, compared and returned to the defendant's counsel.)
Ex.D3 The photocopy of the certificate of registration – Commercial
Taxes Departments – FORM – B dated 30.04.2015. (original
produced, compared and returned to the defendant's counsel)
Ex.D4 The printout of the trademark registry, Chennai Examination
Report dated 06.10.2016.
Ex.D5 The printout of the registration certificate Government of India
FORM GST- REG-06 dated 01.07.2017
Ex.D6 The printout of the trademark registry acceptance order copy
dated 31.12.2018
Ex.D7 The printout of the trademark journal advertisement copy
dated 14.01.2019
Ex.D8 The printout of the certificate of registration of trademark
dated 30.05.2019. (the counsel for the plaintiff objects on the
ground that the certificate copy of the registration is not filed.)
Ex.D9 The printout of the central board of film certification dated
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Exhibits Documents
31.12.2021. (The counsel for the plaintiff objects on the
ground that the same is a photocopy oand hence cannot be
marked)
Ex.D10 The printout of Udyam Registration certificate -MSME dated
15.02.2022.
Ex.D11 The photocopy of the legal notice dated 29.04.2022 sent by the
plaintiff
Ex.D12 The office copy of the reply notice sent by the defendant to the
plaintiff dated 11.05.2022.
Ex.D13 The original newspaper Dhina Thanthi dated 14.07.2022.
Ex.D14 The photocopy of the defendant's trademark legal user
certificate
Ex.D15 The original chartered accountants turnover certificate dated
29.05.2023. (The counsel for the plaintiff objected on the
ground that the witness cannot mark the certificate given by
the chartered accountant who is the third party to this suit, the
objection is as regards proof.)
Ex.D16 The printout of the defendant trademark status dated
05.06.2023.
Ex.D17 The printout out of the copyright NO OBJECTION
CERTIFICATE dated 13.06.2023
Ex.D18 The printout of the third parties registered trademark list and
status copies. (The counsel for the plaintiff objects on the
ground that the same contains only the lsit of the trademark
without any details regarding applications, registration
certificate, etc.)
Ex.D19 The printout of the defendant distributors list.
Ex.D20 The original defendants sale invoices from 2017 to 2023. (The
counsel for the plaintiff objects on the ground that the invoices
from 16.06.2022, 25.08.2022, 31.10.2022, 25.01.2023,
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Exhibits Documents
07.02.2023 and 28.03.2023 are only photocopies and hence
cannot be marked.)
Ex.D21 The printout of the television advertisements fly birds brand
SUN TV Network Invoice cum Telecast certificate. (The
counsel for the plaintiff objects on the ground that the same is
a photocopy and hence cannot be marked.)
Ex.D22 The printout of the Chennai Broadcasting Corporation – TV
ads Tax invoices. (The counsel for th plaintiff objects on the
ground that the same is a photocopy and hence cannot be
marked.)
Ex.D23 The printout of the TV News 5 – Shreya Broadcasting Private
Limited – Tax Invoices. (The counsel for the plaintiff objects
on the ground that the same is a photocopy and hence cannot
be marked.)
Ex.D24 The printout of the Television Advertisements – Clippings
Photography.
Ex.D25 The printout of the Distributors/Dealers Showroom Display
Advertisements Photos.
Ex.D26 The printout of the Expo/Exhibition Advertisement
Photography.
Ex.D27 The printout of the Photographs taken at various events
sponsored by the Respondent.
Ex.D28 The printout of Advertisement Van Photography.
Ex.D29 The printout of the Advertisement Hoarding Board
Photography
Ex.D30 The printout of the Carton Box Photography
Ex.D31 The printout of the Product Photography
Ex.D32 The printout of the Other brands using pink and white.
Ex.D33 (Series) 38 Nos) are the original legal user certificates of third
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Exhibits Documents
parties.
Ex.D34 The printout of the Certificate of registration of copyright
bearing diary No.22723/2023-CO/A.
MO1 The product with the tags and pho card along with the
packaging cover for Fly Birds Kurti Pant.
kal 30.04.2025
To
The Registrar of Trade Marks,
Trade Marks Registry,
GST Road, Guindy, Chennai-600 032
India
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SENTHILKUMAR RAMAMOORTHY J.
kal
Pre-delivery common judgment made in
C.S.(Comm. Div.) No.182 of 2023
&
30.04.2025
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