M/s. Mohamed Aboobacker Chank Lungi Ltd. vs V. Saraswathi, Sole Proprietrix, Trading as Saraswathi Textiles

Vinod K. Sharma, J.—O.A. No. 404 of 2012: This application under Order XIV Rule 8 of O.S. Rules r/w Order XXXIX Rules 1 & 2 of

the Code of Civil Procedure, has been filed for grant of interim injunction, restraining the respondent/defendant herself, her servants or agents or

any one claiming through her from in any manner infringing the applicant''s/plaintiff''s registered trademarks as shown in the schedule to the plaint

and the trademark label shown in Annexure ""A"" to the plaint by using the offending trademark label shown in Annexure ""B"" to the plaint or any

other mark or marks which are in any way identical or colourable imitation of the plaintiff''s registered trademark labels pending disposal of the suit.

O.A. No. 405 of 2012: This application has been moved under Order XIV Rule 8 of O.S. Rules r/w Order XXXIX Rules 1 & 2 of the CPC for

grant of interim injunction, restraining the respondent/defendant by herself, her servants or agents or any one claiming through her from in any

manner passing off her handloom textile goods/kerchief, lungies etc., bearing the offending trademark label as shown in Annexure ""B"" to the plaint

as and for the applicant''s/plaintiff''s goods with the registered trademark label as shown in Annexure ""A"" either by manufacturing or selling or

offering for sale or in any manner advertising the same pending disposal of the suit.

O.A. No. 406 of 2012: This application under Order XIV Rule 8 of O.S. Rules r/w Order XXXIX Rules 1 & 2 of the CPC has been filed for

grant of interim injunction, restraining the respondent/defendant by herself, her servants or agents or any one claiming through her from in any

manner infringing the plaintiff''s copyright in the artistic work over trademark label ""SANGU"" as shown in Annexure ""A"" to the plaint by using the

offending label or labels Which are in any way deceptively similar to or a colourable imitation of the applicant''s plaintiff''s copyrighted label

SANGU"" with the device of ""CONCH"" pending disposal of the suit.

It is pleaded case of the plaintiff/applicant, that plaintiff/applicant is a leading manufacturer of handloom, textile piece goods, kerchief, lungies,

dhotis etc and is in business since long. The promoters of the plaintiff''s company are descendants of late K.E. Mohamed Aboobacker, who

commenced the business in handloom textiles, particularly lungies and kerchiefs in the year 1927. In the course of the business, plaintiff/applicant

has honestly conceived"" and adopted the trademark ""SANGU"" with the device of ""CONCH"".

That the plaintiff and predecessors have artistically created the Trademark label with Square Red Background on which artistic picture of

CONCH is depicted with further frame like bordering over the square label. The square background and pictorial device of the CONCH forms

essential features of the Trademark label of the plaintiff. Apart from this device of CONCH, it is known in Tamil as SANGU the plaintiff has

always used ""CHANK"" as the Trademark in all its goods. The word mark ""CHANK"" is a kind of pronouncing SANGU which in Tamil means

CONCH. The plaintiff also devised a composite trademark CHANK ECONOMY and SANGU ECONOMY and is using in respect of other

merchandise economical to the general public, which has become extremely popular with the general public and trade.

It is submitted by the applicant/plaintiff, that it also applied for registration of the trademark ECONOMY DELUXE and ECONOMY

SUPERFINE WORD per se which is pending registration in the trademark registry, Chennai. The applicant/plaintiff has obtained series of

registration with regard to the trademarks SANGU, CHANK and the device of ""CONCH"" and the label used under the Trade Marks Act, 1999

in Class 24 and 25.

The details of the marks registered read as under:

it is submitted by the applicants/plaintiff, that by virtue of successive assignment/bequeaths K.A. Mohamed Abdul Kader, grand son of K.E.

Mohamed Aboobacker has become the absolute proprietor of the Trademarks and that K.A. Mohamed Abdul Kader also registered the artistic

work in the Trademark label with peculiar colour scheme and get-up under the Copyright Act vide A-Nos. 52238/93, 52239/93 & 52397/93.

It is further submitted, that the plaintiff/applicant has been using the trademark labels and has done extensive business under the said trademark

label. Mr. K.A. Mohamed Abdul Kader by assignment deed dated 30.06.2000 assigned the trademarks in favour of the plaintiff and that the

plaintiff/applicant has now entered as the subsequent proprietor of the trademarks. Mr. K.A. Mohamed Abdul Kader is one of the promoter

Directors of the plaintiff company and the other promoter Directors namely K.M. Mohamed Yousut and K.M. Umar Farook are sons of late K.E.

Mohamed Aboobacker, the original proprietor of the Trademarks.

That the plaintiff and its predecessors spent huge amount towards advertisements and sales promotional efforts and the textile and hand loom

goods are sold extensively throughout India and also exported to other countries and that there is an ever-increasing demand for the products

under the trademarks. The sale turnover of the plaintiff/applicant since 1991 is as under:

The advertisement expenses during 2000-2005 read as under:

It is the case of plaintiff/applicant, that the public in general always associate any Trademark or Trademark label consisting of the word

SANGU"" with or without any prefix or suffix written in any language or the device or Conch with the goods of the plaintiff alone. The

applicant/plaintiff submits that unscrupulous merchants now want to take advantage of the goodwill and reputation of the plaintiff''s products under

the Trade Mark Labels and have started marketing their products with the Trade Mark Label that are identical or similar in colour combination and

get up as that of the plaintiff''s registered and age old and original trade mark.

It is also case of the applicant/plaintiff, that consuming public in general and illiterate people purchase the fictitious products bearing the offending

Trademarks believing it to be that of the plaintiff. That the plaintiff/applicant, in order to protect its celebrated trademark ""SANGU"" and the device

of CONCH, has filed a number of proceedings both in civil and Criminal against the infringers.

The respondents applied for registration of the Trademark under No. 180332 in respect of textile piece of goods, including Hand Kerchiefs,

Lungies, Sarang, Dhoties, Towels, Scarves, Sarees and Handloom Goods etc. with the device and label mark, which is similar or deceptively

similar to the plaintiff''s popular established and registered Trademark label from the publication in the trademark journal. This application is

opposed by the plaintiff/applicant.

That the defendant''s trademark is a dubious method intelligently adopted by the defendant to trade on the reputation and goodwill of the

plaintiff to make illegal gains by using a mark, which is capable of misleading the innocent and unwary public to persuade them to purchase the

products of the defendant under the offending trademark label.

The defendant with the sole purpose of bringing their label so close and near and resemble in every respect to that of the plaintiff has devised

the trademark label with Red Square Background, Square frame and the device, which is so confusingly and deceptively similar to the device of

the CONCH and CHANKYA, and is also phonetically similar to the plaintiff''s celebrated Trade Mark ""CHANK"".

It is the case of plaintiff/applicant, that the respondent could not have devised the offending Trade Mark label without keeping the plaintiff''s

Trademark by side and with clear intention to imitate and counterfeit the plaintiff''s popular and the celebrated Trade mark label and the registered

Trade mark ""Chank"".

The respondent is in the same field of activity and is carrying on business in the vicinity of the plaintiff, therefore, has the knowledge of the

plaintiff''s Trademark label and the enormous popularity enjoyed by the plaintiff.

The plaintiff/applicant therefore issued legal notice dated 02.03.2011 to the respondent to which reply was sent by the respondent, denying

allegations made in the Cease and Desist notice. However, respondent offered to modify the labels.

It is submitted, that the said modified labels sent by the defendant clearly established the criminal intention of the defendant to trade on the high

popularity and goodwill enjoyed by the plaintiff''s trademark label. The proposed amendment also has not deviated anywhere from the original

offending label, and it has retained all the features except for a change of shade. That, the respondent is using the Trademark ""SANKYA"" for

goods for which the plaintiff is using the Trademark ""SANGU"" and the device of CONCH and the plaintiff has been using the Trademark for the

past more than 80 years.

It is thus submitted, that the general public and the trade would be deceived or confused that the lungies, kerchief and other textile goods

marketed by the respondent to be that of plaintiff. That the respondent, with the ulterior motive, lavishly and virtually copied the plaintiff''s

registered trademark and the registered artistic work under the Copyright Act to unjustly cut the plaintiff''s trade and ruin its reputation built up in all

these years. The plaintiff has maintained high quality in its products and the general public identifies the said Trademark ""SANGU"" with the device

of CONCH to the plaintiff''s high quality products and that the respondent on the other hand is selling the products of inferior quality, thereby not

only infringing applicant''s trademark ""SANGU"" with the device of ""CONCH"", but also ruin the reputation of the applicant''s business and is

playing fraud on the general public. That Warning Notice was also published in the newspapers of Tamil, Telugu, Malayalam and English.

On the pleadings referred to above, the applicant has moved three applications for grant of injunction, as noticed above.

It may be noticed here, that the plaintiff/applicant has made three prayers in O.A. No. 404 of 2012, all the reliefs are being consequential by

invoking Order XIV Rule of the O.S. Rules, again in O.A. No. 405 of 2012, all the three injunctions have been prayed for. Similar is the case

regarding O.A. No. 406 of 2012. It is not explained or understood how three applications are maintainable on the same cause of action praying

similar reliefs.

Once the provisions of Order XIV Rule 5 have been invoked to claim all the three reliefs treating it to be consequential relief, the other two

applications prima facie are not maintainable.

Common counter has been filed by the respondent, by denying all the allegations in the plaint by alleging these to be false and baseless. The

case of the respondent/defendant is that her father in law started production of textile piece goods and other allied goods in 1960s and thereafter in

the year 1980, the husband of respondent/defendant took over from him.

The defendant/respondent took over from husband by establishing Saraswathi Textiles in the year 1993 as a proprietary concern for

manufacturing and marketing of textile and textile piece goods, including handkerchiefs, lungies, sarongs, dhoties, towels, scarves, sarees and

handloom goods.

The textile business is being run by the defendant/non applicant for the past few decades. The defendant claims to have established well in the

business. The defendant/non applicant started marketing the goods under the Trademark ""SANKYA"" from the year 2005 under the trade style

Saraswathi Textiles.

The case of the defendant/respondent is that she is the ardent follower of yoga, having deep interest not only in seeking knowledge from the

ancient scriptures like upanishads various Sutras and the Bhagavad Gita, but also diligently practice the same.

It is the stand in the counter that the word ""SANKYA"" is referred to in a sloka in the Bhagavad Gita in Chapter III, Verse III, Line II, the

sloka being Gnana Yogena Sankyanaam, Karma Yogena Yoginaam.

The meaning of the sloka is way of knowledge for the sankyas and way of action for the yogis. The word Sankya denotes a group of people,

who are knowledgeable about their self and who, with that knowledge, reach God. SANKYA is also one of the six Darshans or Sastras, which

form the basis tenets of Sanathana Dharma or Hinduism.

The case of defendant/respondent is that the defendant adopted the work SANKYA as the Trademark from the above said scriptures from

Bhagavad Gita. It is also the case of defendant/non applicant, that it is the honest adoption of the Trademark for the manufacture and marketing of

textile piece goods, which makes it unique and distinctive, particularly with the characteristic yogic device of one palm placed over another.

The defendant/non applicant has also given the year wise sales turnover from 2005-2006 as also year wise advertisement expenses, which

reads as under:

It is the case of the defendant/non applicant, that in order to obtain statutory protection, the respondent filed a trademark application for the

mark ""SANKYA"" in Class 24 under No. 1980332. The Hon''ble Registrar of Trade Marks in his examination report did not cite the alleged

trademark of the applicant/plaintiff as conflicting. The mark was advertised in Trademark journal No. 1466 dated 10.01.2011 in Pg. 554. The

Trademark application was opposed by the applicant/plaintiff and the defendant/non applicant has filed a counter statement to the opposition, by

the plaintiff.

It is also the case of defendant/non applicant, that the plaintiff did not file its evidence in support of opposition within the prescribed statutory

period, therefore, the opposition filed by the plaintiff/applicant is deemed to have been abandoned and application filed by the defendant/non

applicant will result in registration of the trademark.

It is admitted, that cease and desist notice dated 02.03.2011 was received from the applicant/plaintiff, to which reply was sent on 14.03.2001,

denying allegations. However, in order to arrive at a consensus, two amended labels seeking concurrence from the applicant/plaintiff were sent.

However, instead of filing reply, the plaintiff/applicant has filed the suit.

On merit, it is the case of defendant/non applicant, that the claim of applicant to the word ""ECONOMY"" is not sustainable, as it is the

descriptive word to which nobody can claim exclusive right. It is also pleaded, that the plaintiff/applicant has filed three trade mark applications for

the mark ECONOMY and all these applications are opposed by S. Kumars Limited, Mumbai, who are using the expression ECONOMY for

long years and are well known for the same. This fact has been concealed by plaintiff from this Hon''ble Court, it is also the case of defendant/non

applicant, that the plaintiff/applicant has not placed on record any document, showing successive assignment and plaintiff/applicant does not have

locus standi to file the suit.

it is the case of the defendant/non applicant, that the Trademark of defendant/non applicant is entirely different and there is no phonetic, visual

or structurally similarity between the rival marks. The devices and the two rival marks are elaborated to elucidate the gross differences between

them. The difference is described as under:

It is also the case of respondent, that there are numerous brands, which have a red square with white periphery as their trademarks. That the

defendant/non applicant has no intention to imitate or adopt the trademark similar to that of plaintiff/applicant. The allegations of criminal intention

are denied. It is also denied, that rival Trademarks are phonetically, visually or structural same, as claimed by the plaintiff/applicant. It is the case of

defendant/non applicant, that the red color background and the square shape of the rival labels are descriptive and typical of the trade and

numerous brands have adopted the same, therefore, the plaintiff/applicant cannot claim exclusive right over it.

It is the submission of defendant/non applicant, that the language of her label is Hindi and English, as compared to Tamil and alien language

present in the applicant''s label, which shows that the trade channels and consumers and area of operation of the two parties are drastically

different. The stand of defendant/non applicant is that there is no infringement of the applicant''s trade mark or passing off her goods as that of

plaintiff/applicant. Nor there is any copy right infringement.

On the pleadings referred to above, it is prayed that the applications be dismissed.

Learned counsel appearing on behalf of the plaintiff/applicant vehemently contended, that the predecessors in interest of promoters and the

plaintiff/applicant adopted the Trademark ""SANGU"" with the device of ""CONCH"" with red background, which has been duly registered and

assigned to the plaintiff/applicant by the owners of the Trademark and artistic work, it is the contention of learned counsel for the applicant/plaintiff,

that the defendant/non applicant adopted the trademark deceptively similar to that of plaintiff/applicant, therefore, is guilty of infringement of

Trademark and business of plaintiff/applicant.

It was the contention of learned counsel for the applicant/plaintiff, that the predecessors in interest of plaintiff/applicant had succeeded in the

suit titled K.E. Mohammed Aboobacker Vs. Nanikram Maherchand and Others, , where this Hon''ble Court was pleased to hold, that

predecessor of plaintiff had adopted the Trademark Chank or Sanghu or Conch, duly registered Trademark under six registration. The defendants

in the said case, who had adopted the brand called ""Been Brand"", was held to be deceptively similar to that of plaintiff/applicant, therefore the

interim injunction was granted.

This Court in the said case was pleased to hold as under:

The principles which should govern the Court in granting or withholding a temporary injunction in trade-mark infringement actions are well settled

(See recent decision Henry Hemmings, Ltd. V. George Hemmings, Ltd. As a temporary injunction is merely of a provisional nature and does not

conclude the rights of the parties in any way, the Court will exercise its discretion in favour of the applicant only in strong cases. The plaintiff must

make out a prima facie case in support of his application for the ad interim injunction and must satisfy the Court that his legal right has been

infringed and in ail probability will succeed ultimately in the action. This does not mean, however, that the Court should examine in detail the facts

of the case and anticipate or prejudice the verdict which might be pronounced after the hearing of the suit or that the plaintiff should make out a

case which would entitle him at all events to relief at the hearing. Colman v. Farrow & Cpo., Hoover, Ltd. V. Air-way Ltd., The Upper Assam

Tea Company v. Herbert and Co., Star Cycle Company Ltd. V. b. Frankenburgs, in fact the Court will not ordinarily grant an interlocutory

injunction if a large amount of evidence is necessary to support the plaintiff''s case. The proper course in such a case is to ask for the trial of the

action. The injury must be actual or imminent. Pinel & Cie v. Maison Pinet, Ltd. Where the defendant disputes the plaintiff''s title to the mark or

contends that the plaintiff is not entitled to relief by reason of the acquiescence or delay or other estoppels or of the defendant''s concurrent rights,

the Court will be guided by the balance of inconvenience which may arise from granting ore withholding the injunction as well as the justice of the

cause after considering all the circumstances in the suit. In other words, where the plaintiff''s title is disputed or the fact of infringement or

misrepresentation amounting to a bar to the action or some other defence is plausibly alleged upon the interlocutory motion, the Court in granting or

refusing the interim injunction is guided principally by the balance of convenience that is by the relative amount of damage which seems likely to

result if the injunction is granted and the plaintiff ultimately fails or if it Is refused and he ultimately succeeds; Read Brothers v. Richardson and Co.;

Hommel v. Bauer & Co.

As the grant of temporary injunction is governed by equitable principles, the Court will refuse to interfere summarily by such relief notwithstanding

the plaintiff''s legal rights unless his conduct in the matter is free from blame and there is no acquiescence or other estoppel. The test of

acquiescence required to disentitle the plaintiff to an interim injunction need not be strong as is necessary for the refusal of perpetual injunction at

the hearing. It is necessary that an application for interlocutory injunction should be made immediately after the plaintiff becomes aware of the

infringement of the mark, improper and unexplained delay is fatal to an application for interlocutory injunction. The interim injunction will not be

granted if the plaintiff has delayed interfering until the defendant has built up a large trade in which he has notoriously used the mark. North British

Ruber Company, Ltd. v. Gormully and Jeffery Manufacturing Company, Army and Navy Co-operative Society, Ltd. v. Army Navy and Civil

Service Co-operative Society of South Africa. Ltd., Hayward Bros. Ltd., v. Peakall, Tost Tuypewriter Company Ltd. v. Typewriter Exchange

Company, Royal Warrant Holders'' Association v. Slade & Co., Ltd. On a motion for interlocutory injunction the defendant may offer to give or

the Court may ask for an undertaking and keep an account of the sales until the decree in the suit is passed and the plaintiff may accept undertaking

in lieu of an interlocutory injunction. It is for the Court to decide whether in the given case the relief should be moulded to suit the exigencies of the

case and grant an interlocutory injunction or accept the undertaking by the defendant to keep accounts of the sales until the decree in the suit is

passed. Interim injunction will be limited as closely as possible to what is sufficient to attain that end and it is only granted upon the plaintiff

undertaking to abide by any order of the Court as to damages for the loss, if any, occasioned by it to the defendant should it turn out at the hearing

that it ought not to have been granted. Enforcement of injunction is by committal or attachment or fine or costs. Committal is the proper remedy for

doing a prohibited act and attachment is the proper remedy for neglecting to do some act ordered to be done.

Bearing these principles in mind, if we examine the facts of this case, there cannot be the slightest doubt that the plaintiff is entitled to the interim

injunction asked for. The plaintiff has been exploiting this Conch mark from 1928. In fact, he has himself come to be known as Chank

Aboobacker. The trade-mark which is the subject matter of the controversy was registered in 1944 and it has been again renewed for a period of

fifteen years. The plaintiff has been widely advertising his products. He has opened, many branches and has got an assured sale. It is in these

circumstances that the defendant, who is stated to be a refugee from Karachi, has started using the mark in question from 1956. We have no

evidence worth mentioning about his goods having found a market. His accounts are not forthcoming. His address is nebulous. There is no

ostensible abode for this business. His application itself to have his mark registered has been opposed. But with optimism worthy of a better cause

he has already printed on his butter covers that this trade-mark has been registered. The mark itself, as can be seen by a comparison, is a thorough

imitation, it cannot be got over by saying that it is a snake charmer''s magudi placed on the ground in a horizontal position. If really the defendants

wanted only a magudi to be his trade-mark there was nothing to prevent him from making it vertical or inclined vertically which is the position in

which a magudi is always played. In fact I suggested that this futile litigation could be avoided by a slight alteration of the device, a position which

would avoid confusion and passing off the wares of one as the wares of other. The defendant was averse to making any alteration because that

would apparently defeat his object, viz., to make his wares pass off as the established Chank products of the plaintiff. This is not a case where the

keeping of accounts would meet the ends of justice. It would only give the defendant an opportunity to entrench himself further into the

handkerchief business which he would not otherwise be able to do but for assuming the guise of the plaintiff''s Chank mark.

However, the reading of this judgment shows, that it was in the facts of that case, that the trademark of the defendants, though named ""Been

Brand"", was held deceptively similar to that of plaintiff, as the Been was shown in the lying position, which gave deceptively similar look of Chank

or Sanghu.

Learned counsel for the applicant/plaintiff placed reliance on the judgment of the Hon''ble Supreme Court in Parle Products (P) Ltd. Vs. J.P.

and Co., Mysore, wherein the Hon''ble Supreme Court was pleased to lay down as under:

(i) in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be

considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such

character as to prevent one design from being mistaken for the other, it would be enough if the impugned mark bears such an overall similarity to

the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In the present case the

packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears

such a close resemblance that one can easily be mistaken for the other.

to contend, that in this case also, the Trademark used by the defendant bears an overall similarity to the registered Trademark, which is likely to be

misled by the customers in accepting goods of the defendant to be that of plaintiff/applicant.

The reliance was placed on the judgment of the Hon''ble Supreme Court in National Bell Co. and Gupta Industrial Corporation Vs. Metal

Goods Mfg. Co. (P) Ltd. and Another, to contend, that the plea of defendant, that they have been marketing their product since 2005, cannot be

the ground to come to the conclusion that the plaintiff/applicant has abandoned its right to challenge infringement, specially when immediately on

coming to know of infringement of Trademark, the plaintiff/applicant issued notice and immediately thereafter filed the suit for injunction, restraining

infringement of the Trademark or passing off the goods.

The reliance was also placed on the judgment of the Hon''ble Supreme Court in Mahashian Di Hatti Ltd. Vs. Mr. Raj Niwas, Proprietor of

MHS Masalay, , wherein the Hon''ble High Court of Delhi was pleased to lay down as under:

It is thus settled proposition of law that in order to constitute infringement the impugned trademark need not necessarily be absolutely identical

to the registered trademark of the plaintiff and it would be sufficient if the plaintiff is able to show that the mark being used by the defendant

resembles his mark to such an extent that it is likely to deceive or cause confusion and that the user of the impugned trademark is in relation to the

goods in respect of CS(OS) No. 326/2009 Page 12 of 24 which the plaintiff has obtained registration in his favour. It will be sufficient if the

plaintiff is able to show that the trademark adopted by the defendant resembles its trademark in a substantial degree, on account of extensive use

of the main features found in his trademark. In fact, any intelligent person, seeking to encash upon the goodwill and reputation of a well-established

trademark, would make some minor changes here and there so as to claim in the event of a suit or other proceeding, being initiated against him that

the trademark being used by him, does not constitute infringement of the trademark, ownership of which vests in some other person. But, such

rather minor variations or distinguishing features would not deprive the plaintiff of injunction in case resemblance in the two trademarks is found to

be substantial, to the extent that the impugned trademark is found to be similar to the registered trademark of the plaintiff. No person can be

allowed to sell goods either using the mark of another person or its imitation, so as to cause injury to that person and thereby enrich himself at the

cost of a person who has spent considerable time, effort and money in building the brand reputation, which no amount of promotion or advertising

CS(OS) No. 326/2009 Page 13 of 24 can create unless the quality of the goods being sold under that brand is also found to be good and

acceptable to the consumer. In a case based on infringement of a registered trademark, the plaintiff need not prove anything more than the use of

its registered trademark by the defendant, in such a case, even if the defendant is able to show that on account of use of other words by him in

conjunction with the registered word/mark of the plaintiff, there would be no confusion in the mind of the customer when he come across the

product of the defendant and/or that on account of the packaging, get up and the manner of writing trademark on the packaging, it is possible for

the consumer to distinguish his product from that of the plaintiff, he would still be liable for infringement of the registered trademark.

The logo ""MDH"" in three hexagons written in white colour on red colour background is an integral part of the registered mark/cartons of the

plaintiff company in respect of various spices and condiments. The plaintiff is an established and well-reputed manufacturer and marketer of spices

being sold using the aforesaid logo, it is settled proposition of law that in order to ascertain whether the CS(OS) No. 326/2009 Page 14 of 24

impugned trademark constitutes infringement mark of the plaintiff or not, the two marks are not to be placed side by side. The person coming

across the product of the defendant, bearing the impugned trademark may not necessarily be having the product of the plaintiff bearing his

registered trademark with him when he comes across the product of the defendant with the mark ""MHS"" logo. This is more so in the case of an

average Indian citizen who may not necessarily be well-educated. This proposition of law would apply with a greater force in case of products like

spices which normally are purchased by housewives and domestic helps, who may not care to notice the features which distinguish the trademark

of the defendant from that of the plaintiff. Therefore, if on coming across the product of the defendant bearing the impugned trademark, he forms

an impression that this could be the product of the plaintiff, it may induce, on account of overall similarity of the two trademarks, him to believe that

the product which he has come across was, in fact, the product of the plaintiff or had some kind of an association or connection with the plaintiff.

A comparison of the logo of the plaintiff along with CS(OS) No. 326/2009 Page 15 of 24 the logo of the defendant would show the following

prominent similarities:

(a) The defendant has used three hexagons for writing three different letters as has been done by the plaintiffs in writing the letters ""MDH

(b) The letters ""MHS"" have been written in white colour and so are the letters ""MDH

(c) The background colour used by the defendant for writing the letters ""MHS"" is red and so is the background colour used by the plaintiffs.

(d) There is a white border on the hexagons of the plaintiffs and the same is the position in respect of the hexagons being used by the defendant.

(e) The shape of the letters used by the defendant for writing ""MHS"" is identical to the shape of the letters used by the plaintiff for writing the letters

MDH"".

Thus, the trademark being used by the defendant is visually similar to the trademark being used by the plaintiff. Though phonetically, there may not

be much similarity in the two trademarks on account of use of the letter ""S"" in place of ""D"" and re-arrangement of the letters. CS(OS) No.

326/2009 Page 16 of 24 The last letter in the trademark of the plaintiff is ""H"", whereas it has been made second letter in the trademark of the

defendant. The last letter in the trademark of the plaintiff is ""H"" whereas it is ""S"" in the trademark of the defendant. However, considering the strong

visual similarity, rather weak phonetic similarity, would not be of much consequence and would not permit the defendant to use the logo being

presently used by him.

Admittedly, both the parties are engaged in the similar business as both of them are manufacturing and selling spices. Therefore, the defendant,

in my view, has infringed the registered trademark of the plaintiff by using the aforesaid logo ""MHS"". The adoption and use of the letters ""MHS"" in

the manners stated above appears to be deceptive intended to confuse the consumer and encash upon the goodwill which plaintiff''s trademark

MDH"" enjoys in the market.

to contend, that the Trademark of defendant/non applicant is deceptively similar to that of plaintiff/applicant.

Finally, the reliance was placed on the judgment of the Hon''ble Supreme Court in K.R. Chinna Krishna Chettiar Vs. Shri Ambal and Co.,

Madras and Another, ), laying down that if there is no visual resemblance between the two marks, as ocular comparison is not always the decisive

test. The resemblance between the two marks must be considered with reference to the ear as well as the eye, as there is a close affinity of sound

between Ambal and Andal.

The Hon''ble Supreme Court in this case however held that the word ""Sri"" may be regarded as of common use. However, taking note of the

fact, that the respondent''s mark in that case was Ambal while that of the appellant''s mark was Andal, the two words were held to be deceptively

similar in sound.

The contention of learned counsel for the applicant/plaintiff therefore was that the words ""SANKYA"" and ""CHANGU"" are similar marks and

even the picture of one form or other has been deceptively placed in such a way, that it looks like CHANGU with the intention to pass of their

products as that of plaintiff/applicant. Therefore, the plaintiff/applicant has prima facie case and the balance of convenience is also in favour of the

applicant/plaintiff, and that it is likely to suffer irreparable loss, if the injunction is not granted.

Learned counsel for the defendant/non applicant on the other hand vehemently contended, that the plaintiff/applicant does not have any prima

facie case, therefore, is not entitled to temporary injunction. The defendant/non applicant, though carrying on business in the same vicinity, have

been using the trademark for more than seven years now and has made a name for itself in the market.

It was also the contention of learned counsel for the defendant/non applicant, that there is no similarity whatsoever in the Trademark used by

the plaintiff/applicant and that by the defendant/non applicant.

It is submitted, that the primary distinction is that the photo used by the defendant/non applicant is in bowl form, whereas that of

plaintiff/applicant is Changu, it was contended, that the Changu has no identical similarity with that of SANKYA. That it cannot be said that there is

likelihood of customers to be misled to accept the goods of defendant/non applicant to be that of plaintiff/applicant. That there is no similarity

between the two labels, as detailed above.

Learned counsel for the defendant/non applicant submitted that the judgments on which reliance was placed by the learned counsel for the

applicant/plaintiff do not have any bearing on the facts of the present case, as the law laid down in all these judgments is that in order to hold

infringement of a registered trademark, it is required to be shown, that the trademark should be either deceptively similar or phonetically similar, but

in the present case, the trademark of plaintiff/applicant is neither visually similar to that of defendant/non applicant, nor it is phonetically similar.

Therefore, no prima facie case is made out for interference by this Court.

It was also contended, that even otherwise the suit as framed is not maintainable, as the plaintiff/applicant has not placed on record the Deed of

Assignment, showing the plaintiff/applicant to be the owner of Trademark, as it is admitted case, that the Trademark was under the proprietorship

of K.A. Mohammed Abdul Kader, whereas the plaintiff/applicant is a company, registered under the Companies Act.

On consideration, I find that the applications deserve to be dismissed.

The suit filed by the plaintiff/applicant itself suffers from patent defect. In Para-1 of the plaint, it is pleaded, that the plaintiff is a company

registered under the Companies Act, represented through its Managing Director. The plaintiff/applicant has failed to place on record the resolution

of the company authorizing its Managing Director to file and prosecute the present suit, in absence of resolution or its subsequent ratification by the

Board, it cannot be said that the suit is properly instituted.

The plaintiff/applicant has also not placed on record any copy of assignment, to show the assignment of Trademark in favour of

plaintiff/applicant, though it is pleaded in the application.

It may also be noticed here, that the Trademark of defendant is not deceptively similar to that of plaintiff/applicant, as there is no similarity

between the photograph of Chank and that of defendant/non applicant, as was the case of ""Been Brand and Chank"" as was the case of E.

Mohammed Aboobacker vs. Nanikram Maherchand (supra).

The word ""CHANK"" is not even phonetically similar to SANKYA.

Merely because the defendant/non applicant is using red background in square cannot be said to be infringement of Trademark.

A bare look at both the Trademarks does not leave any manner of doubt, that no customer can be misled to take the goods of defendant/non

applicant to be that of plaintiff/applicant. As already noticed above, if the action of Managing Director of plaintiff is ratified by passing a board

resolution, it can then be said that the suit has been properly filed to entitle the plaintiff/applicant to seek injunction.

Consequently, it can be said, that the plaintiff/applicant has failed to make out prima facie case. Nor balance of convenience is in favour of

plaintiff/applicant. The plaintiff/applicant is also not likely to suffer irreparable loss, as in the event of success, the plaintiff/applicant can always be

compensated by damages. No merits. Dismissed. No costs.