Telangana High Court
M/S Sri Tulasi Industries vs M/S Sri Sapthagiri Industries on 9 June, 2021
Bench: Challa Kodanda Ram
IN THE HIGH COURT FOR THE STATE OF TELANGANA
***
CIVIL MISCELLANEOUS APPEAL No.496 of 2020
Between:
M/s Sri Tulasi Industries
... Appellant
And
1. M/s Sri Sapthagiri Industries and another
... Respondents
Date of Judgment pronounced on : 09.06.2021
THE HON'BLE SRI JUSTICE CHALLA KODANDA RAM
1. Whether Reporters of Local newspapers : Yes / No
May be allowed to see the judgments?
2. Whether the copies of judgment may be marked : Yes / No
to Law Reporters/Journals:
3. Whether The Lordship wishes to see the fair copy : Yes / No
Of the Judgment?
____________________
CHALLA KODANDA RAM, J
2 cma_496_2020
CKR, J
THE HON'BLE SRI JUSTICE CHALLA KODANDA RAM
CIVIL MISCELLANEOUS APPEAL No.496 of 2020
% 09.06.2021
# M/s Sri Tulasi Industries
... Appellant
Versus
1. M/s Sri Sapthagiri Industries and another
... Respondents
< GIST:
> HEAD NOTE:
! Counsel for the Appellant : K. Hema Prakash Rao
^ Counsel for the Respondents : Ashok Ram Kumar
? Cases referred:
1. 2005 (3) PTC 3 (Del)
2. MANU/SC/0197/1964 == AIR 1965 SC 980
3. AIR 1970 SC 1649
4. MANU/TN/0387/2021
5. Civil Appeal No.6390 of 2009
6. AIR 2001 SC 1952
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CKR, J
THE HON' BLE SRI JUSTICE CHALLA KODANDA RAM
CIVIL MISCELLANEOUS APPEAL No.496 of 2020
JUDGMENT:
In this appeal, challenge is to the order dated 08.06.2020 passed
by the learned Principal District Judge, at Mahabubnagar, in I.A.No.2190
of 2019 in O.S.No.210 of 2019, dismissing the application filed by the
appellant/plaintiff under Order 39 Rules 1 and 2 of Code of Civil
Procedure, seeking temporary injunction against the respondents from:
"(a) infringing the exclusive statutory right to the registered trade
mark 'Tasty Gold';
(b) copyright o the appellant to the artistic features including the
colour scheme, layout and the trade dress appearing on the label;
and
(c) passing off their oils bearing the impugned trademarks 'Tasty
Drop' & 'Tasty Plus+' and other aesthetic features including the
colour scheme, layout and trade dress or any mark which is
identical with or similar or deceptively similar to the registered
trademark, 'Tasty Gold' as oils of the appellant's manufacture."
2. It is the case of the appellant/plaintiff that the appellant is a firm
dealing in edible oils under the registered trade mark styled as "TASTY
GOLD"; that the predecessor of the appellant-firm had surveyed the
market and only after satisfying that no other firm has the trade mark
with the unique design and style as depicted in "TASTY GOLD" logo,
obtained the registration vide No.3136998 dated 16.12.2016 in Class-29
under the Trade Marks Act, 1999; that the predecessor of the appellant is
the originator of aesthetic features on the label as appearing in "TASTY
GOLD" logo and enjoys copyright for the trade mark; that the trade mark
was assigned to the appellant firm vide Deed of Assignment dated
11.10.2018 thereby the appellant became the "subsequent proprietors" of
the trade mark; that the appellant firm obtained registration of the
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CKR, J
trademark full label "TASTY GOLD" vide No.4039640 in Class-29 under
the Trade Marks Act; that the appellant has been spending huge money in
promoting its goods which helped in their substantial turnover and also
considerable goodwill and reputation of the trade mark; that to ensure
quality of the edible oils, the appellant periodically sends the same for
testing; that the respondent is a newcomer into the business of edible oils
and located near the appellant firm; that the respondent's application
No.3999625 for registration of mark 'TASTY DROPS' has a mention that
the same is 'proposed to be used' as on 16.11.2018; that the application
of the respondent has been refused by the authorities; that the appellant
having noticed that the respondent is using similar pouches containing the
mark 'TASTY DROPS' amounts to infringement of the rights of the
appellant under the Trade Marks Act and Copyright Act and the
respondent has been passing off his goods as the goods of appellant firm;
that the appellant issued "Cease and Desist" notice dated 15.12.2018 to
the respondent, to which the respondent issued a vague reply dated
25.12.2018; that the appellant filed the suit on 11.11.2019 and an
injunction order was granted against the respondent in I.A.No.2190 of
2019; that after hearing both the parties, the Court below dismissed the
I.A.No.2190 of 2019 and vacated the injunction order.
3. It is the case of the respondent No.1 that it is a partnership firm
registered under the Indian Partnership Act dealing in manufacture,
processing and marketing of edible oils under various trademarks, more
specifically "TASTY DROPS" and "TASTY PLUS+"; that the contention of
the appellant that the trademarks of the respondent are deceptively
similar is false; that the word "TASTY" is a descriptive word and the
appellant cannot claim exclusive right over the same; that the words are
phonetically identical cannot be maintained as the words "Drops, Plus+
are not found in the appellant's trade mark; that the words "Drops" and
"Plus+" are completely different suffixes and are not identical to the word
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CKR, J
"Gold" suffix of the appellant; that the mark of the appellant "Tasty Gold"
is a generic word having individual meaning for each word and such word
is a usual term and can be used by anybody and therefore cannot qualify
for any protection; that the appellant cannot claim monopoly over the
word "Tasty"; that the respondent has not copied on its pouches the
artistic and aesthetic features and design of the appellant and the
respondent's mark pouches contain an artifact of a lady which cannot be
seen in the packaging pouches of the appellant; that as per the Trade
Marks Act, the whole trade mark has to be seen and not the individual
elements inasmuch as the word "Tasty" is only an element of mark of
appellant and not the complete trade mark; that the application of the
appellant vide No.4376849 dated 13.12.2019 for registration of the word
"Tasty" has been objected to and kept pending by the authorities; that
Section 30 of the Trade Marks Act, 1999, limits the rights in the
Registration to use the marks (words)/images (logos) which are common
to trade and adopted by the respondent with honest practices; that the
respondent filed various pouches commonly used in the trade that uses
the words "Tasty" as well as "Gold" as well as the oil and palm seeds,
groundnut, sunflower in common parlance for edible oil; that Section
30(2)(a) clearly exempts the usage of the word which indicates kind,
quality, quantity, intended purpose, value, geographical origin, the time
of production of goods or of rendering of services or other characteristics
of goods or services; that the word "Tasty" is indicative of the
characteristics of the goods being cooked using the oil; that though the
word "Gold" also indicates the quality of the product and does not extend
any protection, the respondent did not choose to use "GOLD" though its
usage is permitted; that a combined reading of Sections 17, 27, 28, 29,
30 clearly establish that there is no infringement of the appellant mark
"Tasty Gold" by the respondent's usage of marks "Tasty Drops" or "Tasty
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Plus+"; that the words "Tasty" and "Gold" being generic in nature, the
appellant cannot claim any protection or monopoly.
4. Heard the learned counsel for the appellant; and the learned
counsel for the respondent.
5. Learned counsel for the appellant contended that the trial Court
erred in observing that there is no prima facie case established by the
appellant in support of exclusive usage of the mark "TASTY GOLD" and
that it erred in observing that the mark "TASTY GOLD" is generic in
nature, by relying on the decision of Delhi High Court in Time
Incorporated v. Lokesh Srivastava1. Learned counsel further
contended that the learned Court below failed to notice the trademark in
the citation relied on by the respondent is "SUGAR FREE" and not "TASTY
GOLD". It that the Court below had failed to appreciate that the suit
relates to grant of injunction and not for declaration and the Court below
had overstepped in holding the mark TASTY GOLD as generic thereby
made it open to public at large for use; that the Court below failed to
assign reason as to how the interim order granted on prima facie case on
11.11.2019 can be vacated where there is no change in prima facie case;
that the Court below ought to have considered the law settled by the
Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna
Pharmaceutical Laboratories2, the marks "NAVARATNA PHARMACY"
and "NAVARATNA PHARMACEUTICAL LABORATORIES", and in Ruston
and Hornsby Ltd v. Zamindara Engg. Co.3, the marks "RUSTON" and
"RUSTAM INDIA" were held to be confusingly similar.
6. Learned counsel for the appellant further contended that the Court
below failed to appreciate the appellant is the registered proprietor of
2005 (3) PTC 3 (Del)
MANU/SC/0197/1964 = = AIR 1965 SC 980
AIR 1970 SC 1649
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trademark "TASTY GOLD" and ignored the provisions of Section 29(3) of
the Trade Marks Act; and the Court below failed to notice the action of
infringement under the Copyright Act basing on the "artistic work"
contained on the pouches used by it for packing edible oils. It is further
contended that the Court below failed to consider the rights of the
appellant firm who is the prior user and has completely ignored the huge
turnovers clocked by it from the year 2000 and that the respondent has
also not denied that the appellant is the prior user of the mark "TASTY
GOLD", and the Court below erred in comparing the registered label
marks Exs.P1 and P13 of the appellant rather than comparing the
appellant's mark and respondent's mark. Learned counsel further
contends that the Court below erred in not taking into consideration the
enormous goodwill that has been built over the mark of the appellant
while deciding the passing off action, and that the Court below failed to
consider that even descriptive mark is entitled for the relief of injunction
under common law.
7. Per contra, learned counsel for the respondent, while supporting
the order of the learned Principal District Judge, submits that the learned
Judge had elaborated the respective pleadings and found that the claim
of the appellant that he is the user of the trade mark TASTY GOLD since
the year 2000 was not established by the appellant and there are a large
number of edible products manufacturers using the words TASTY and
GOLD with respect to their respective products and therefore there is no
distinctness associated with the trade mark TASTY GOLD as espoused by
the petitioner and therefore the Court below had found that there is no
prima facie case made out by the appellant, and had rightly vacated the
ex parte injunction order passed in favour of the appellant on
11.11.2019.
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8. Learned counsel for the respondent would also, by placing reliance
on the judgment of the High Court of Madras in Patanjali Ayurved
Limited v. Arudra Engineers Private Limited4 contend that the
protection afforded in terms of Section 17 of the Trade Marks Act is not
for "individual parts/components" of a trademark but for the "whole and
entire trade mark". Learned counsel places particular reliance on
paragraphs 79, 81, 82 and 83 of the said judgment, which are extracted
hereunder:
"79. Further, even under Section 17 of the Trade Marks Act, 1999,
protection is only afforded to the entire trademark as registered, and
not to mere parts of the trade mark. In the instant case, registration
has been obtained by the plaintiff over the label with the words and
alpha numeral Coronil 92B and Coronil 213 SPL as a composite mark
and not as a word for "Coronil" as envisaged under Section 15.
Therefore, for the purpose of Section 29 (4) of the Trade Marks Act,
1999, the respondent/plaintiff cannot claim monopoly over the word
"Coronil" as it was registered as a part of composite mark. We also
wish to observe that when each part of a label mark is capable of being
individually registered, we cannot dissect and split up into its
component parts and grant an injunction. In this regard, we are
fortified by the decision of the Division Bench of this Court in Rhizome
Distilleries case, mentioned supra and useful reference can be made to
the observations made therein:-
"Conflicting composition marks are to be compared by
looking at them as a whole, rather than breaking the
marks up into their component parts for comparison.
This is the 'anti- dissection' rule.... A mark should not
be dissected or split up into its component parts and
each part then compared with corresponding parts of
the conflicting mark to determine the likelihood of
confusion. It has been held to be a violation of the anti-
dissection rule to focus upon the 'prominent' feature of
a mark and decide likely confusion solely upon that
feature, ignoring all other elements of the mark.
Similarly, it is improper to find that one portion of a
composite mark has no trademark significance, leading
to a direct comparison between only that which
remains."
MANU/TN/0387/2021
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81. Though the respondent's/plaintiff's label registered as a trademark
and incorporates the word "Coronil", it cannot be said that the word
"Coronil" adopted by the appellants/defendants was similar to that of
the registered labels of the respondent/plaintiff.
82. It would have been different if the respondent/plaintiff had obtained
a registration of the word "Coronil" or any other word which was
phonetically similar or identical with the aforesaid word. Therefore, it
cannot be said that the respondent/plaintiff had established a prima
facie for the purpose of grant of interim relief for the alleged
infringement of trademark under Section 29(4) of the Trademarks Act,
1999. That apart, respondent/plaintiff was also required to satisfy
reputation in India and that the use of the offending word as a
trademark by the appellants/defendants was "without due cause" and
was intended to take unfair advantage by using the offending mark and
that such use was detrimental to the distinctive character or reputation
in the registered trademark. These are matters which are to be
determined only after trial.
83. As the respondent/plaintiff had not claimed any monopoly over the
word "Cornonil" by obtaining a separate registration of the aforesaid
word as a word mark, we are of the prima facie view that the impugned
order is liable to be set aside even if respondent/plaintiff may have a
case for dilution of its trademark by the appellants/defendants. In case,
there is dilution of the trademark/label of the respondent/plaintiff, the
respondent/plaintiff can claim damages which has to be determined
only after a trial."
9. Learned counsel for the respondent would further contend, by
placing reliance on the order of the Supreme Court in Bajaj Auto
Limited v. TVS Motor Company Limited5, that in cases relating to
trade marks, the Courts shall endeavour to dispose of the main suit itself
rather than deciding the interlocutory applications and the said rationale
in the Civil Appeal before the Supreme Court would equally apply to the
present CMA as well. It is further contended that as the Court below
found that there is no prima facie case made out by the appellant, the ex
parte interim injunction was vacated and therefore this Hon' ble Court
may dispose of this civil miscellaneous appeal by directing the Court
Civil Appeal No.6390 of 2009
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below to dispose of the Original Suit itself within a specific timeframe as
may be set by this Court and his client is ready to cooperate with the
trial.
10. Having considered the respective pleadings and perusing the
material on record, at the outset, it cannot be said that the appellant had
failed to establish his claim of registered user of the mark TASTY GOLD
from the year 2000. It may be noted that it is not the case of either the
respondent or the finding recorded by the Court below that the trade
mark itself was not registered as pleaded by the respondent, and the
registration of trade mark vide certificate dated 15.06.2019, and the
appellant was using the mark TASTY GOLD at least since the year 2002
as evidenced by few of the sale invoices placed before the Court below
are not in dispute.
11. The case pleaded by the appellant is that the respondent is
marketing similar products that are being manufactured and marked by
the appellant, in the form of pouches/packaging, and the
packaging/pouches are deceptively similar to that of the appellant
thereby passing off the goods as if they are manufactured and marketed
by the appellant.
12. In this context, the prayer sought/relief claimed by the appellant in
the Original Suit No.210 of 2019 requires to be noticed:
"The plaintiff prays that the Hon' ble Court will be pleased to pass a
decree:
(a) granting permanent injunction restraining the defendants, their
servants, subordinates, assignees, licensees, representatives,
stockists, dealers, agents, successors-in-interest and all other persons
claiming under them or acting in concert with them or acting at their
instance from infringing the exclusive statutory right of the plaintiff to
the trademark, TASTY GOLD under the Trademarks Act, 1999.
(b) granting permanent injunction restraining the defendants, their
servants, subordinates, assignees, licensees, representatives,
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stockists, dealers, agents, successors-in-interest and all other persons
claiming under them or acting in concert with them or acting at their
instance from infringing copyright of the plaintiff to the aesthetic
features, colour scheme, layout and the trade dress appearing on the
label under the Copyright Act, 1957.
(c) granting permanent injunction restraining the defendants from
passing off their oils bearing the impugned trademarks, "TASTY
DROPS" and "TASTY PLUS+" and other artistic features, the colour
scheme, the layout and the trade dress or any mark which is identical
with or similar, or deceptively similar to the registered trademark,
TASTY GOLD as oils manufactured by the plaintiff.
(d) granting damages against the defendants for having caused
loss to the business, reputation and goodwill to the registered
trademark and other artistic features appearing on the label of the
plaintiff;
(e) to deliver up for destruction of all the impugned labels of the
defendants containing the trademarks, TASTY DROPS and TASTY
PLUS+ and other artistic features, the colour scheme, the layout and
the trade dress.
(f) costs of the suit;
(g) such other and further reliefs as the nature and circumstances
of the case may require."
13. Having perused the pictures/photographs/images produced by
both the learned counsels, this Court though finds certain dissimilarities,
however, in the light of the factors/parameters laid down by the Supreme
Court in Cadila Health Care Ltd. V. Cadila Pharmaceuticals Ltd6, the
learned Principal District Judge failed to examine and give a finding with
respect to similarities, which were required to be taken into
consideration, as emphasised in paragraph 35 of the judgment, which
reads as under:
"Broadly stated in an action for passing off on the basis of
unregistered trade mark generally for deciding the question of
deceptive similarity the following factors to be considered:
AIR 2001 SC 1952
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a) The nature of the marks i.e. whether the marks are
word marks or label marks or composite marks, i.e.
both words and label works.
b) The degree of resembleness between the marks,
phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they are
used as trade marks.
d) The similarity in the nature, character and
performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the
goods bearing the marks they require, on their
education and intelligence and a degree of care they
are likely to exercise in purchasing and/or using the
goods.
f) The mode of purchasing the goods or placing orders
for the goods and
g) Any other surrounding circumstances which may be
relevant in the extent of dissimilarity between the
competing marks.
14. Further, in paragraph 29 of Kaviraj Pandit (2 supra), the Hon'
ble Supreme Court held as under:
"29. When once the use by the defendant of the mark which is claimed
to infringe the plaintiffs mark is shown to be "in the course of trade,
the question whether there has been an infringement is to be decided
by comparison of the two marks. Where the two marks are identical no
further questions arise; for then the infringement is made out. When
the two marks are not identical, the plaintiff would have to establish
that the mark used by the defendant so nearly resembles the plaintiffs
registered trade mark as is likely to deceive or cause confusion and in
relation to goods in respect of which it is registered (Vide s. 21). A
point has sometimes been raised as to whether the words "or cause
confusion" introduce any element which is not already covered by the
words "likely to deceive" and it has sometimes been answered by
saying that it is merely an extension of the earlier test and does not
add very materially to the concept indicated by the earlier words "likely
to deceive". But this apart, as the question arises in an action for
infringement the onus would be on the plaintiff to establish that the
trade mark used by the defendant in the course of trade in the goods in
respect of which his mark is registered, is deceptively similar. This has
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necessarily to be ascertained by a comparison of the two marks-the
degree of resemblance which is necessary to exist to cause deception
not being capable of definition by laying down objective standards.
The persons who would be deceived are, of course, the purchasers of
the goods and it is the likelihood of their being deceived that is the
subject of consideration. The resemblance may be phonetic, visual or
in the basic idea represented by the plaintiffs mark. The purpose of the
comparison is for determining whether the essential features of the
plaintiff's trade mark are to be found in that used by the defendant. The
identification of the essential features of the mark is in essence a
question of fact and depends on the judgment of the Court based on
the evidence led before it as regards the usage of the trade. It should,
however, be borne in mind that the object of the enquiry in ultimate
analysis is whether the mark used by the defendant as a whole is
deceptively similar to that of the registered mark of the plaintiff."
15. In the case on hand, while the descriptive words used though are
different, the first word TASTY being common in the products of both
appellant and respondent, and the second word being different, and
further the respondent's label on the pouches depict an image of a
woman, the differences are required to be viewed in the light of the
parameters/factors laid down by the Supreme Court as extracted in
paragraph 35 (c), (d) and (e) of Cadila Health Care Ltd (6 supra), and
also paragraph 29 of the judgment of Supreme Court in Kaviraj Pandit
(2 supra).
16. In the present case, the pleading which is not in dispute is that the
appellant is in the business of manufacturing and marketing of edible oils
since the year 2000 and their mark was registered in the year 2000
initially, whereas the respondent commenced the business in edible oils
only in the year 2018 and the respondent had applied for registration of
the trade mark in the year 2018. There is also no dispute that the
respondent is manufacturing and marketing the product in the same
place, within the same area/locality in Kamareddy, and the marketing is
also within the same area. In that view of the matter, at this stage, it
cannot be gain said prima facie that there is no goodwill gained by the
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appellant in the edible oil business since the year 2000 and the
respondent is trying to ride on that goodwill gained by the appellant.
Prima facie it cannot be said that there is no loss that is being caused to
the appellant though the measure of loss is a matter which is required to
be established in the trial.
17. The judgment of the High Court of Madras in Patanjali Ayurved
(4 supra) relied on by the learned counsel for the respondent is
distinguishable on facts, as in that case the products manufactured and
marketed in Patanjali Ayurved (4 supra) were entirely different, one
being an engineering/industrial product, and the other being an immunity
booster. In the present case on hand, the extent to which there is
similarity or dissimilarity between the products of the appellant and
respondent is an aspect that is required to be considered in during the
course of full fledged trial.
18. In the facts of the present case, as stated supra, the learned
Principal District Judge failed to consider the aspects of balance of
convenience, and irreparable loss, and the learned Judge was content
with dismissing the interlocutory application holding that there is no
prima facie case made out.
19. Having regard to the facts placed on record, prima facie, this Court
is of the opinion that there are certain similarities between the registered
trade mark/label of the appellant and the mark being used by the
respondent; and the appellant being a prior user of the trade mark, in
point of time, the appellant cannot be said to have not established some
goodwill in the area/locality of operation of business of appellant and
thus cannot be said to be put to loss and thus the balance of convenience
is in favour of the appellant for continuation of the injunction initially
granted by the learned Principal District Judge, till the disposal of the
main case.
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20. Accordingly, the Civil Miscellaneous Appeal is allowed by setting
aside the impugned order dated 08.06.2020 in I.A.No.2190 of 2019, and
restoring the injunction order passed on 11.11.2019 against the
respondent herein till the disposal of the Original Suit. The learned
Principal District Judge shall dispose of the Original Suit within a period of
six months from the date of receipt of a copy of this order. It is made
clear that the observations made in this civil miscellaneous appeal are
only for the purpose of disposal of the appeal, and the learned Principal
District Judge shall dispose of the Original Suit strictly on merits basing
on the oral and documentary evidence that may be adduced by both the
parties, uninfluenced by the observations made by this Court in this civil
miscellaneous appeal. There shall be no order as to costs. Miscellaneous
petitions, if any pending in this appeal, shall stand closed.
____________________
CHALLA KODANDA RAM, J
09th June, 2021
ksm
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THE HON' BLE SRI JUSTICE CHALLA KODANDA RAM
CIVIL MISCELLANEOUS APPEAL No.496 of 2020
09th June, 2021
Ksm
