IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED : 28.03.2011 CORAM THE HONOURABLE MRS.JUSTICE R.BANUMATHI AND THE HONOURABLE MR.JUSTICE V.PERIYA KARUPPIAH O.S.A.Nos.116 & 58 of 2010 and M.P.Nos. 1 & 1 of 2010 and Cross Objection No.78 of 2010 O.S.A.No.116 of 2010 M/s. SR.Jayamurugan Traders Rep. By its Proprietor Mr.S.Murugesan No.9, Padayachi Street, Ariyagoundampatty, Namagiripet (via) Rasipuram Taluk, Namakkal Distict, Tamilnadu 637 406 ..Appellant. Vs. 1. R.Brihadiswari Trading as R.Brihadiswari Papad Merchant Ezhil Nilai, No.5/8, 4th Rajiv Gandhi Nagar, Kolathur Main Road, Chennai – 600 009. 2. M/s Varalakshmi Trading Company, rep. By its Proprietor Mr.Sesha No.6-C, Senior Street, Namagiripet, Namakkal District, Tamilnadu 637 406 3. M/s. Sri Amman Traders, rep. By tis Proprietress Ms.N.Tamilselvi No.90 (1) Padyachi Street, Ariyagoundampatty, Namagiripet (via) Rasipuram Taluk, Namakkal District, Tamilnadu 637 406. 4. M/s. Sri Kamatchi Traders, Rep. By its Proprietor Mr.K.Nagamanickam, No.166, Bazar Street, Namagiripet (via) Rasipuram Taluk, Namakkal District. Tamilnadu 637 406. https://hcservices.ecourts.gov.in/hcservices/ 5. M/s. Waferserve Ind. Co-op. Society Rep. By its Secretary, Namagiripet, Rasipuram Taluk, Namakkal District, Tamilnadu – 637 406 ..Respondents O.S.A.No.58 of 2010 R.Brihadiswari Trading as R.Brihadiswari Papad Merchant Ezhil Nilai, No.5/8, 4th Rajiv Gandhi Nagar, Kolathur Main Road, Chennai – 600 009. ..Appellant. Vs. 1. M/s Varalakshmi Trading Company, rep. By its Proprietor Mr.Sesha No.6-C, Senior Street, Namagiripet, Namakkal District, Tamilnadu 637 406 2. M/s. Sri.Jayamurugan Traders Rep. By its Proprietor Mr.S.Murugesan No.9, Padayachi Street, Ariyagoundampatty, Namagiripet (via) Rasipuram Taluk, Namakkal Distict, Tamilnadu 637 406 3. M/s. Sri Amman Traders, rep. by tis Proprietress Ms.N.Tamilselvi No.90 (1) Padyachi Street, Ariyagoundampatty, Namagiripet (via) Rasipuram Taluk, Namakkal District, Tamilnadu 637 406. 4. M/s. Sri Kamatchi Traders, Rep. by its Proprietor Mr.K.Nagamanickam, No.166, Bazar Street, Namagiripet (via) Rasipuram Taluk, Namakkal District. Tamilnadu 637 406. 5. M/s. Waferserve Ind. Co-op. Society Rep. By its Secretary, Namagiripet, Rasipuram Taluk, Namakkal District, Tamilnadu – 637 406 ..Respondents https://hcservices.ecourts.gov.in/hcservices/ Cross Objection No.78 of 2010 M/s. Sri Kamatchi Traders, Rep. by its Proprietor Mr.K.Nagamanickam, No.166, Bazar Street, Namagiripet (via) Rasipuram Taluk, Namakkal District. Tamilnadu 637 406. ..Cross Objector. Vs. 1. R.Brihadiswari Trading as R.Brihadiswari Papad Merchant Ezhil Nilai, No.5/8, 4th Rajiv Gandhi Nagar, Kolathur Main Road, Chennai – 600 099. 2. M/s Varalakshmi Trading Company, rep. By its Proprietor Mr.Sesha No.6-C, Senior Street, Namagiripet, Namakkal District, Tamilnadu 637 406 3. M/s. SR.Jayamurugan Traders Rep. By its Proprietor Mr.S.Murugesan No.9, Padayachi Street, Ariyagoundampatty, Namagiripet (via) Rasipuram Taluk, Namakkal Distict, Tamilnadu 637 406 4. M/s. Sri Amman Traders, rep. by tis Proprietress Ms.N.Tamilselvi No.90 (1) Padyachi Street, Ariyagoundampatty, Namagiripet (via) Rasipuram Taluk, Namakkal District, Tamilnadu 637 406. 5. M/s. Waferserve Ind. Co-op. Society Rep. By its Secretary, Namagiripet, Rasipuram Taluk, Namakkal District, Tamilnadu – 637 406 ..Respondents Prayer in OSA.No.116 of 2010 Appeal filed under Order XXXVI Rule 9 of O.S.Rules r/w Clause 15 of the Letters Patent against the fair and decretal order dated 11.12.2009 in O.A.No.696 of 2009 in C.S.No.568 of 2009. Prayer in OSA.No.58 of 2010 Appeal filed under Order XXXVI Rule 11 of O.S.Rules r/w Clause 15 of the Letters Patent against the portion of the order allowing https://hcservices.ecourts.gov.in/hcservices/ the respondents 2 to 4 to use the face of more than one Lion dated 11.12.2009 passed in O.A.No.696 of 2009 in C.S.No.568 of 2009. Prayer in Cross Objection No.78 of 2010 Cross Objection filed under Order XXXVI Rule 22 of C.P.C against the fair and decretal order dated 11.12.2009 in O.A.No.696 of 2009 in C.S.No.568 of 2009. For Appellant in OSA.116/2010 : Mr.Saikrishnan for M/s. Sai Bharath and Illan For Respondents in OSA.116/2010 : Mr.K.Rajasekaran for R1 No appearance for R2 to R5 For Appellant in OSA.58/2010 : Mr.K.Rajasekaran For Respondents in OSA.58/2010 : Mr.Saikrishnan for M/s. Sai Bharath and Illan for R2 and R4 No appearance for R1,R3 & R5 For Cross Objector in Cross Obj.No.78/10: Mr.Saikrishnan for M/s. Sai Bharath and Illan For Respondents in Cross.Obj.78/2010: Mr.K.Rajasekaran for R1 No appearance for R2 to R5 COMMON JUDGMENT (The judgement of the Court was delivered by V.PERIYA KARUPPIAH.,J) O.S.A.No.116 of 2010 is directed against the order dated 11.12.2009 passed in O.A.No.696 of 2009 in C.S.No.568 of 2009 granting injunction restraining the appellant and respondents 2 to 5 from using the face of a single lion in their manufacturing and marketing products. 2. O.S.A.No.58 of 2010 is directed against a portion of the order dated 11.12.2009 passed in O.A.No.696/2009 in C.S.No.568 of https://hcservices.ecourts.gov.in/hcservices/ 2009 granting liberty to 2nd to 4th defendants to use the face of more than one lion as their trade mark in their products. 3. On receipt of the notice in O.S.A.No.58/2010, the third respondent therein has filed Cross Objection No.78 of 2010 against the order dated 11.12.2009 passed in O.A.No.696 of 2009 in C.S.No.568 of 2009. 4. Brief facts of the case are as follows: The suit, C.S.No.568 of 2009 was filed by the plaintiff/appellant in OSA.No.58/2010 against the respondents for the relief of injunction restraining the defendants/respondents from using the trade mark 'Lion' as well as the device, namely, ' face of a single lion. The same plaintiff filed an application in OA.No.696 of 2009 with the following prayer: To grant a permanent injunction restraining the respondents, by themselves, their servants, agents, distributors, or anyone claiming through them from manufacturing, selling, advertising and offering for sale using same or similar get up, and colour scheme used by the respondents/defendants shown in Document Nos.3,4,5,6,7 and 8 and trade mark LION BRAND or TIGER BRAND or any other similar Trade Mark or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in anyway visually or deceptively or phonetically similar to the petitioner's Trade Mark 'LION BRAND PAPPAD' and 'LION BRAND TAPICOWAFERS' as shown in suit Document Nos.1 & 2 or in relation to any pappad items and use the same pouches, packets or use the mark in invoices, letter heads and visiting cards or any other trade literature or by using any other trade marks which is in any way visually, or phonetically similar to the petitioner/plaintiff's pending Trade Mark Registration application Nos.1372651 and 1127490 or in any manner infringe the petitioner/plaintiff's pending registration Trade Mark. 5. The plaintiff has filed the suit stating that the plaintiff had commenced business in the year 1971 as a proprietory concern and has been manufacturing and marketing various goods including the goods of tapioca wafers, appalams etc. carrying the trade mark 'Lion Brand' and in the label, 'the face of a single lion' is found depicted and their product gained popularity in the market as they maintain quality for four decades. The plaintiff has stated that with an intention to pass off the plaintiff's product, the defendants copied the very same trade mark, the configuration, the printing pattern, colour combination etc., of the plaintiff's label and trade mark thereby causing confusion and deception in the market. The plaintiff has further stated that in order to make money on the reputation of the plaintiff, the defendants were acting so. Hence, https://hcservices.ecourts.gov.in/hcservices/ the suit seeking permanent injunction restraining the defendants from using the plaintiffs trade mark 'Lion Brand' and the label ' the face of a single lion'. The plaintiff has also sought for interim injunction. Earlier this Court granted interim injunction on 17.7.2009, against which, the defendants filed the application No.3639 of 2009, with the following prayer: "To vacate the order of interim injunction granted in O.A.No.696 of 2009 in C.S.No.568 of 2009 on 17.7.2009 and dismiss the O.A.o.696 of 2009." 6. Counter affidavit has been filed by the 3rd and 4th defendants, denying the averments in the affidavit, accompanying the application, as well as the plaint stating that the plaintiff cannot claim monopoly over the device, namely, 'the face of a lion' and the word 'lion'. It is a common principle that lion is something known to everybody and the word 'lion' also is being used by everybody and in such a case, the plaintiff alone cannot claim exclusive right over it and simply because the plaintiff has been using it for a long time, it would not enure to his benefit. In Salem area there are number of manufactures of pappad (appallam) and they are doing it as a cottage industry under the common brand of "Lion" for several years and all of a sudden, the plaintiff cannot claim exclusive right over the common trade name and mark and in such a case, the injunction application should be dismissed. 7. The learned single Judge on finding that by using a lion device with the name ' New Lion Brand' would certainly make a common man not to distinguish the defendants product with the plaintiff's product, allowed O.A.No.696 of 2009 and dismissed Application No.3639 of 2009 on 11.12.2009. Hence, OSA.No.116 of 2010 was filed by second defendant against the order of injunction made in O.A.No.696/2009, OSA.58 of 2010 was filed by the plaintiff against a portion of the order in O.A.No.696/2009 granting liberty to 2nd to 4th defendants/respondents to use the face of more than one lion as their trade mark in their products and the Cross Objection was filed by the fourth defendant/3rd respondent in OSA.58/2010 against the order of injunction made in O.A.No.696/2009. 8. Heard, Mr.Sai Krishnan learned counsel appearing for the appellant in O.S.A.No.116 of 2010 and for the Cross Objector in Cross Objection No.78 of 2010 and Mr.K.Rajasekaran, learned counsel appearing for the second and fourth respondents in O.S.A.No.58 of 2010 and for the first respondent in OSA.No.116 of 2010 and Cross Objection No.78 of 2010. 9. For convenience sake, the rank of the parties in the suit is maintained in this judgment. 10. Learned counsel for the second defendant/appellant in https://hcservices.ecourts.gov.in/hcservices/ O.S.A.No.116/2010 and for the second and fourth respondents in O.S.A.No.58 of 2010 would submit in his arguments that the learned Single Judge has come to a wrong conclusion for grant of temporary injunction against the defendants when the learned Single Judge had come to the conclusion to permit the defendants 2 to 4 to have an additional lion face in the existing usage of a single lion face. He would further submit in his arguments that the product namely tapioca wafer has been produced in cottage industries in and around Namagiripettai and the plaintiff herself is also producing the said tapioca wafer from there only and all the products are being sent to North India and are sold there only and almost all the entrepreneurs at Namagiripettai are using the name 'lion brand' and the plaintiff, all of a sudden claims exclusive right over the common trade name and mark which is not maintainable. He would further submit that the plaintiff had filed a suit before the learned Single Judge of this Court suppressing the fact that all the business transactions are only done at Namagiripettai and the products are sold in North India and there was no business transaction held at Chennai. He would further submit that the plaintiff had given a fake address at Chennai in order to file a suit whereas she had given her address only at Namagiripettai in all the covers or packages in which the trade name has been printed. He would therefore submit that the suit filed before this Court is not correct and it has to be filed before the correct jurisdiction. The second defendant had used the name lion brand from 1980 onwards since it was a common trade name used by the manufactures in Namagiripettai and the plaintiff did not object to the same at any point of time. He would also submit that the word ' lion' is a generic word and it cannot be exclusively used by the plaintiff as hers and the word ' lion' is referring to an animal which is used honestly and concurrently by various traders for various products. He would further submit that it is not an invented mark of the plaintiff to claim the proprietory right over the said mark and the plaintiffs are using the said mark honestly for several decades. He would further submit that the plaintiff was aware of the said usage of the mark 'lion brand' by the second defendant and other defendants but she did not take any action against the second defendant or others. It is further submitted that the plaintiff had issued a legal notice in the year 2003 and the same was replied by the second defendant and on receipt of the reply notice, the plaintiff kept quiet and he did not object thereafter. However, after a long delay, the plaintiff had come forward with a suit as if the second defendant and other defendants have infringed the mark of the plaintiff. He would further submit that the plaintiff had acquiesced to the use of the defendants in respect of the lion brand mark to sell their products also. Such acquiescence would estop the plaintiff from claiming any right over the mark. He would also submit that the second defendant has spent huge money for advertising the trade mark 'lion' and the plaintiff had applied for injunction against the single face lion and they have been injuncted which caused much prejudice and hardship. He would further emphasis in his argument https://hcservices.ecourts.gov.in/hcservices/ that the word 'lion' is a publici juris and the usage of the word 'lion' as well as the picture of the lion in the brand need not be injuncted. He would further submit in his arguments that the plaintiff had issued notice to the defendants for which they have replied in the year 2003 itself. The said factum of exchange of notice have not been disclosed by the plaintiff and therefore, she is guilty of committing fraud for suppression of facts. 11. The learned counsel would draw the attention of the Court to a judgment reported in AIR 1979 Madras 157 (National Match Works V. S.T.Karuppanna) for the principle of laches committed by the plaintiff who is asking for relief. He would further cite the judgment of this Court reported in 2004(1) CTC 418 (USV Limited v. Systopic Laboratories Limited) for the principle that the words used in public affecting the community at large could be a common property and any one can make use of it who likes to use the same and the said word would become publici juris. He would also cite the judgement of the Hon'ble Apex Court reported in (1994)1 SCC 1 (S.P.Chengalvaraya Naidu (dead) by LRs. vs. Jagannath (dead) by LRs. and others) for the principle that one who comes to the Court must come with clean hands without suppressing any facts had in between the parties. For the similar proposition of law yet another judgment of the Honourable Apex Court reported in 2010(2) SCC 114 (Dalip Singh Vs. State of Uttar Pradesh and others) has been cited. He would further submit that there would not be any confusion to a common man who is purchasing the tapioca wafer or pappad containing lion brand sachet with the distinct name and address of the parties. He would also submit in his arguments that the second defendant, as per the directions of the learned Single Judge has introduced the entire patterns of sachet and other trade mark with the inclusion of another lion and the said change of pattern of the sachet as well as the other label would not in any way infringe the said trade mark of the plaintiff and therefore, the plaintiff cannot have any grievance over the defendants. He would also submit in his arguments that even otherwise the suppression of facts and the act of omission committed by the plaintiff would disentitle the plaintiff from getting any discretionary relief of injunction from the hands of the learned Single Judge. Therefore, the injunction order passed against the defendants 2 to 4 has to be vacated and the petition for injunction may be dismissed and the appeal be thus, allowed. 12. He would further submit on behalf of the 4th defendant who has preferred the cross appeal in No.78 of 2010 that the fourth defendant had used the name 'sher brand' with the face of a tiger in his label and it would not infringe the mark of the plaintiff. He would also submit that the mark of lion is being used with two more lions in order to distinguish the single face lion used by the plaintiff. Therefore, the injunction order granted by the learned Single Judge has to be set aside. He would also adopt the arguments advanced in OSA.No.116 of 2010 in respect of the other aspects. https://hcservices.ecourts.gov.in/hcservices/ Therefore, he would request the court to allow both appeal in OSA.No.116/2010 as well as the Cross Appeal and to dismiss the appeal preferred by the plaintiff in O.S.A.No.58 of 2010 13. Learned counsel appearing for the plaintiff/appellant in OSA.No.58 of 2010 and for the first respondent in O.SA.No.116/2010 and Cross Objection No.78/2010 would submit in his arguments that the plaintiff had commenced the business in manufacturing tapioca wafer under the name and style of 'lion brand' in the year 1971 and she has commenced the using of the brand name as 'lion brand' with a single face lion and has been using throughout in her business and acquired reputation in the said name. He would further submit in his arguments that the said mark 'lion' with a device of lion in the sachet as well as the labels with two wheels on either side are the specific features of the plaintiff and the plaintiff had applied for the registration of the trade mark and her application has been submitted before the Registrar of Trade Mark and it is pending registration. He would further submit that a publication was effected by the plaintiff in the newspaper even during 2005. He would further submit that the second defendant has used the mark as 'Murugan brand' and 'Anil brand' but had clandestinely used the lion brand belonging to the plaintiff in order to earn unlawful profits by passing off the goods produced by him. He would further submit in his arguments that the plaintiff had applied for registration of copy right with the artistic work with a single face lion accompanying two wheels on either side with colours in the year 2008 and the application was received by the Registrar of Copy Rights Office and it was registered in Nos. A.82860/2008 and A.82857/2008. He would further submit that the defendants cannot infringe the copy rights of using the single face lion with artistic work under the title, lion brand tapioca wafer (in English and Tamil) with the device of lion's face and two wheels. He would further submit that any usage of any single face lion with artistic work under the name of lion brand would certainly infringe the copy right of the plaintiff. He would also submit that the registration of the trade mark is still pending with the single face lion with the lion brand tapioca wafer and therefore,the defendants cannot use the said name as well as the artistic work of lion face with different colours as registered by the copy rights office as their trade name. 14. He would draw the attention of the Court to the judgments of the Hon'ble Apex Court and High Court of Delhi and this Court in support of his arguments. He would submit that since his label has been registered under the Copy Rights Act, the judgments cited by the learned counsel for the defendants would not apply to the present case. He would further submit that if injunction has not been granted against the defendants, there is likelihood of passing off the goods of the defendants as that of the plaintiff in the name of lion brand with a single face lion with the same artistic work on the labels and sachets. He would further submit that the balance of convenience is https://hcservices.ecourts.gov.in/hcservices/ in favour of plaintiff for granting injunction. He would also submit that the learned Single Judge has erred in permitting the defendants 2 to 4 to use another face of lion in trade mark along with the existing single lion with the changes in the colours and artistic work in the sachets and that would not change the circumstances, it would be amounting to permitting the defendants to use the mark of the plaintiff. He would cite the judgment of the Delhi High Court reported in 2009(39) PTC 142 (Kirorimal Kashiram Marketing & Agencies Private Limited Vs. Sachdeva and Sons Industries Private Limited) in support of his arguments that whether it is one deer or 'double' found on the label, it would change the character of the label and both are resembling each other. He would also cite the judgment of this Court reported in 2008(37) PTC 536 Madras (B. Kishore Jain vs. Navaratna Khazana Jewellers), in support of his case that several persons should not use the same word and it would create confusion in respect of the goods. He would further cite the judgment of this court reported in 2006(2) MLJ 839 (Bala Arichandra Tex vs. Bharath Arichandra Tex) for the principle that the use of the word 'Archindra' by two persons cannot be permitted. He would also draw the attention of this Court stating that the Delhi High Court has come to a conclusion that the word 'Panna' is also similar to 'Panda' a polar bear in its judgement reported in 1994(14) PTC 250 (WWF International vs. Mahavir Spinning Mills Limited). He would once again cite the judgment of Delhi High Court reported in 1997(17) PTC 651 (Madanlal Arora Vs. Soni Udhyog) for the proposition that in respect of the words Tiger, Lion are Sher, even unwary customers cannot identify the device Tiger or Lion or Sher if it is used by different persons. He would therefore, request the Court that the use of the name lion brand with a single lion cannot be permitted to the defendants 2 to 4 nor any lion with the existing single lion may be permitted to be included with the change of various colours and change of artistic work and it will not in any way change the trade name of the plaintiff but would resemble the same and the unwary purchasers would be carried away with confusion and the defendants products would be sold under the name of plaintiff's trade mark and artistic work and their goods would be passing off as that of the plaintiff. Therefore, he would request the Court to confirm the injunction order granted in favour of the plaintiff against the defendants and to set aside the permission granted to the defendants 2 to 4 by the learned Single Judge to use the face of more than one lion device as their trade mark with different configuration, colour, combination and the pattern of printing. He would therefore, request the Court to allow the Appeal in O.S.A.No.58 of 2010 and dismiss the appeal preferred by the second defendant in O.S.A.No.2010 and the Cross Objection preferred by the fourth defendant in Cross Objection No.78/2010. 15. We have given anxious consideration to the arguments advanced on either side. https://hcservices.ecourts.gov.in/hcservices/ 16. The undisputable facts are that the plaintiff and the defendants are doing tapioca appallam or pappad, wafer manufacturing within the precinct of Namagiripettai. It is also an admitted fact that the defendants 1 to 4 are the members of the Society namely the 5th defendant . The averments that the plaintiff is also one of the members of the 5th defendant has not been denied by the plaintiff. The said business are being done by the plaintiff and the defendants 1 to 4 as cottage industry and they are selling their products in the North India and there is a overwhelming demand in the North Indian States for these products. 17. It is the case of the plaintiff that the defendants 1 to 4 have adopted the mark 'lion brand' with a single face lion in their sachet, labels and small pockets even though the plaintiff had the right of exclusive user