M/S Kaleesuwari Refinery Private Limited v. Sri Vinayaka Agro Industries,
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 03.10.2023
CORAM:
THE HON'BLE MR. JUSTICE ABDUL QUDDHOSE and A. No.2658 of 2022 M/s. Kaleesuwari Refinery Private Ltd., Represented by its Manager (Legal) A. Saravanan ...
Plaintiff vs.
Sri Vinayaka Agro Industries, Survey No.44/1, Block 10, Back to Sisu Hospital, Kandhampatty, Tamil Nadu - 636 005.
...
Defendant Prayer : Plaint has been filed under Order IV Rule 1 of the O.S. Rules r/w Order VII Rule 1 of C.P.C. Rules r/w Sections 134 and 135 of Trade Marks Act, 1999 praying for the following judgment and decree :- i) For a permanent injunction to restrain the Defendant, their men, agents, associates and / or assignees or any person claiming rights from them from infringing the Plaintiff's reputed and well known registered Trade Mark "DHEEPAM" by using the offending trade Mark "V RICH DEEPAM OIL" or any mark or word deceptively similar to the aforesaid Trade Mark of the Plaintiff's for any edible oil marketed by the 1/11
Defendant, their men, agents, associates and / or assignees or any person claiming rights from the Defendant.
ii) For a permanent injunction to restrain the Defendant its men, agents, associates and / or assignees or any person claiming rights from therein from passing-off their inferior product, as that of the Plaintiff's "DHEEPAM" lamp oil by using the offending words "V RICH DEEPAM OIL"or any other words or mark and offending packing Material / Pouch Bottles deceptively similar to the Plaintiff's trade mark "DHEEPAM" and Trade dress for "DHEEPAM".
iii) Direct the Defendant their men, agents, assignees, dealers and / or retailers, distributor to surrender to the Plaintiff all offending "V RICH DEEPAM OIL" bottle / container / packing materials label, advertising materials hoarding, letter heads office stationary and all other goods containing / bearing offending mark / label "V RICH DEEPAM OIL" with distinct color scheme, get up or any other mark visually or phonetically similar to the plaintiff's well known trademark "DHEEPAM" label and bottle/container for destruction by an order of this Court and iv) To pay for the costs of the suit For Plaintiff : Mr.Vijayan Subramanian 2/11
JUDGMENT
This suit has been filed for infringement and passing-off in respect of the registered Trade Mark "DHEEPAM". The plaintiff is the proprietor of the aforementioned Trade Mark which is a registered Trade Mark under the Trade Marks Act, 1999.
2. The plaintiff has filed the suit seeking for the following reliefs :- a) permanent injunction to restrain the defendant from infringing the Plaintiff's reputed and well known registered Trade Mark "DHEEPAM" by using the offending Trade Mark "V RICH DEEPAM OIL" or any mark or word deceptively similar to the aforesaid Trade Mark of the Plaintiff's for any edible oil marketed by the Defendant and b) to restrain the defendants from claiming the rights from passing of the plaintiff's product "DHEEPAM" lamp oil by using the offending words "V RICH DEEPAM OIL" or any other words or mark and offending packing Material / Pouch/Bottles deceptively similar to the Plaintiff's Trade Mark "DHEEPAM"
and Trade dress for "DHEEPAM".
3. The learned counsel for the plaintiff is not pressing the 3rd relief 3/11
sought for by the plaintiff in the plaint, which is to seek for a direction to surrender to the plaintiff all offending "V RICH DEEPAM OIL" bottle/container / packing materials label, advertising materials hoarding, letter heads office stationary and all other goods containing / bearing offending mark / label "V RICH DEEPAM OIL" with distinct color scheme, get up or any other mark visually or phonetically similar to the plaintiff's well known Trade Mark "DHEEPAM" label and bottle/container for destruction by an order of this Court.
4. Since the plaintiff has given up the 3rd prayer, this Court is not dealing with the same in this judgment.
5. The plaintiff has let in oral and documentary evidence before the learned Master in support of their pleadings in the plaint that the defendant has infringed their Trade Mark and the defendant has passed off their goods as if it is theirs. The plaintiff has also disclosed in the plaint various suits filed by them against various offenders of the plaintiff's Trade Mark "DHEEPAM", and its present status which have been enumerated in paragraph No.18 of the plaint, which is extracted hereunder :- 4/11
S. No.
PRODUCT C.S. No's STATUS 1.
Maha Dheepam 407/2015 Disposed 2.
Dheepa Olee 852/2015 Disposed 3.
Swasthik Dheepa Oil 520/2018 Disposed 4.
Dhivya Dheepam 187/2019 Disposed 5.
Maha Dheepam 308/2019 Disposed 6.
Olee Olee Dheepam 309/2019 Disposed 7.
Raha Dheepam 655/2019 Disposed 8.
Sri Deepam 173/2020 Disposed 9.
Deepam 188/2020 Injunction granted 10.
Nandhi Dheepam 250/2020 Injunction granted 11.
Deepam 123/2021 Disposed 12.
Deepam 124/2021 Disposed 13.
SRT Deepam 140/2021 Injunction granted 14.
Deepam 55/2022 Disposed 15.
Deepam 80/2022 Injunction granted 16.
Deepam 81/2022 Injunction granted
6. The plaintiff has also pleaded in the plaint the advertisement expenses incurred by them with regard to their registered Trade Mark "DHEEPAM" in paragraph No.20 of the plaint and the details are as follows :- Year Quantity in Metric Tonnes Value in Crores 2012-13 2,438 27.05 2013-14 3,224 38.31 2014-15 3,564 41.98 2015-16 3,854 45.06 2016-17 3,420 38.27 2017-18 4,033 47.42 2018-19 5,102 60.88 2019-20 4,153 51.81 TOTAL 29,788 350.78 5/11
7. The plaintiff has filed the following documents before the learned Additional Master - IV, which have been marked as Exhibits. The details of the documents filed by the plaintiff, which have been marked as Exhibits before the learned Additional Master IV, High Court, Madras are as follows :- Ex.P1 is the printout of the Application for Registration of Trade Mark "Dheepam", dated 23.04.2012.
Ex.P2 is the printout of the certificate of registration of design No.245127 issued in favour of the plaintiff dated 07.05.2012.
Ex.P3 is the printout of the certificate of registration of Trade Mark No.2320404 issued in favour of the plaintiff's mark "Dheepam", dated 11.06.2018. Ex.P4 is the original board resolution passed by the plaintiff dated 17.03.2021. Ex.P5 is the printout of the certificate of registration of copyright No.A-139256/2021 issued in favour of the plaintiff dated 29.07.2021. Ex.P6 is the printout of the legal usage certificate for the mark "Dheepam" registered as No.2320404, dated 18.04.2022.
Ex.P7 is the office copy of the legal notice sent by the plaintiff to the defendant along with track and trace dated 08.06.2022.
Ex.P8 is the printout of the comparison table showing "Dheepam" lable and "V Rich Deepam Oil" label
8. As seen from the documents marked as Exhibits, the plaintiff is the registered proprietor of the Trade Mark "DHEEPAM" and the certificate of Registration was issued in their favour on 07.05.2012, as seen from Ex.P2. The plaintiff had applied for registration of Trademark "DHEEPAM" on 23.04.2012 and the Registration was obtained on 6/11
07.05.2012. Ex.P3 is the certificate of Registration of Trade Mark in respect of "DHEEPAM" issued in favour of the plaintiff. The same has been issued on 11.06.2018. The copy right in respect of "DHEEPAM" has also been registered in favour of the plaintiff as seen from Ex. P5, dated 29.07.2021. The legal usage certificate for the Trade Mark "DHEEPAM", dated 18.04.2022, which has been marked as Ex.P6 has been issued in the name of the plaintiff. Prior to the filing of the suit, the plaintiff has also issued a legal notice to the defendant dated 08.06.2022 which has been marked as Ex.P7. Ex.P8 is the print out of the comparison table showing "DHEEPAM" label and "V RICH DEEPAM OIL". As seen from the label of the defendant, it is deceptively similar to the plaintiff's label "DHEEPAM".
9. Section 65-B affidavit has also been filed by the plaintiff with regard to Exs.D1 to D3, D5 to D8.
10. Ex.P8 which contains the offending label of the defendant as well as the label of the plaintiff, which the defendant has infringed is reproduced hereunder :- 7/11
8/11
11. As seen from the offending label of the defendant, it is clear that the Trade dress of both the labels are similar and identical in many respects. The plaintiff has also been dealing with the "DHEEPAM" Lamp oil from the year 2009. The defendant has also not entered appearance in this suit despite service of suit summons. The suit is of the year 2022. The maximum period of 120 days available for the defendant to file the written statement has also got expired. Therefore, the question of filing of written statement by the defendant at this stage will not arise. The defendant has already been set exparte by this Court. From the oral and documentary evidence available on record, it is clear that the plaintiff has proved the suit claim by establishing its rights as prayed for in the plaint filed in support of C.S. No.130 of 2022.
Therefore, the suit is decreed as prayed for in respect of prayer Nos.1 and 2 in the plaint with costs. Insofar as the prayer No.3 in the plaint is concerned, the suit is dismissed, since the plaintiff is not pressing the said relief. Consequently, connected application is closed. 03.10.
APPENDIX List of Witness Examined on the side of the Plaintiff:
1. P.W.1 - Mr.A. Saravanan S. No.
Exhibits Description of documents 1.
P1 Ex.P1 is the printout of the Application for Registration of Trade Mark "Dheepam", dated 23.04.2012.
2.
P2 Ex.P2 is the printout of the certificate of registration of design No.245127 issued in favour of the plaintiff dated 07.05.2012.
3.
P3 Ex.P3 is the printout of the certificate of registration of Trade Mark No.2320404 issued in favour of the plaintiff's mark "Dheepam", dated 11.06.2018.
4.
P4 Ex.P4 is the original board resolution passed by the plaintiff dated 17.03.2021.
5.
P5 Ex.P5 is the printout of the certificate of registration of copyright No.A-139256/2021 issued in favour of the plaintiff dated 29.07.2021. 6.
P6 Ex.P6 is the printout of the legal usage certificate for the mark "Dheepam" registered as No.2320404, dated 18.04.2022.
7.
P7 Ex.P7 is the office copy of the legal notice sent by the plaintiff to the defendant along with track and trace dated 08.06.2022.
8.
P8 Ex.P8 is the printout of the comparison table showing "Dheepam" lable and "V Rich Deepam Oil" label 10/11
ABDUL QUDDHOSE, J.
vsi2 and A. No.2658 of 2022 03.10.2023 11/11