IN THE HIGH COURT OF JUDICATURE AT MADRAS Dated 9.2.2007 Coram The Hon'ble Mr.Justice P.K.MISRA and The Hon'ble Mr.Justice R.SUDHAKAR O.S.A.No.194 of 2001 MARS INCORPORATED, 6885, Elm Street, McLean, Virginia 22101-3883, United States of America, represented by Power of Attorney Agent, Mr.A.Arulselvan. ... Appellant/Plaintiff vs. MARES CONFECTIONERIES P. LTD., No.7, 5th Cross Street, CIT Colony, Mylapore, Chennai-600 004. ... Respondent/Defendant Appeal filed under Order XXXVI Rule 1 of the Original Side Rules read with Order 41 Rule 1 Civil Procedure Code against the Judgment and Decree dated 9.4.2001 and made in C.S.No.220 of 1995 on the file of this Court. For appellant : Mr.A.A.Mohan For respondent : Mr.K.Azhagu Raman JUDGMENT R.SUDHAKAR,J. The appeal is filed by the plaintiff in C.S.No.220 of 1995 against the Judgment and Decree dated 9.4.2001 of the learned single Judge of this Court. https://hcservices.ecourts.gov.in/hcservices/ 2. The parties are referred to as per their rankings in the suit. 3. The appellant/plaintiff filed the suit for granting (i) a perpetual order and injunction restraining the defendant, their servants, agents, representatives and assigns from infringing plaintiff trade mark "MARS" by use of trade mark "MARES" or any mark similar to plaintiff's trade mark "MARS", (ii) a perpetual order and injunction restraining the defendant, their servants, agents and assigns from passing off the defendant's goods and business as and for the plaintiff's goods and business by use of "MARES' as a trade mark and/or as part of corporate name and trading style by the defendant or by use of any word similar to the plaintiff's trade mark "MARS" as a trade mark and/or as part of trading style by the defendant or in any other manner whatsoever, (iii) a preliminary decree in directing the defendant to render account of profits made by it by the use of "MARES' or any word similar to "MARS' as a trade mark and/or as part of trading style and (iv) directing the defendant to surrender to the plaintiff for destruction of all goods, cartoons, labels, containers, blocks, dies, moulds bearing the word "MARES" or any word similar to "MARS" as a trade mark and/or part of trading style and corporate name by the defendant. 4. As per the plaint averment, the case of the appellant/plaintiff is that the plaintiff is a renowned manufacturer and merchant in various types of foodstuff including non-medicated confectionery, chocolates and snack foods. Plaintiff is a world leader in branded snack foods, petcare products, main meal foods, electronic payment systems and drinks vending. Snack foods, and in particular confectionery was the plaintiff's first business from 1911. Plaintiff's snack foods are enjoyed in over one hundred countries including India. Plaintiff is the registered proprietor in India of the following among other trade marks:- TRADE MARK NUMBER CLASS GOODS MARS 3685 30 Chocolates MARS(STYLISED) 405616 30 Confectionery, biscuits and chocolates MARS(STYLISED) 405656 30 Confectionery, biscuits and chocolates Plaintiff owns the world's four biggest confectionery brands, of which one is the trade mark "MARS". The goods under the trade mark "MARS" as well as the plaintiff's other products are widely advertised in magazines and newspapers, many of which are sold and read in India, on radio and on television. Plaintiff promotes its https://hcservices.ecourts.gov.in/hcservices/ products by an extensive involvement in sports. It was the official sponsor of the Barcelona Olympics in 1992 and "MARS" was the official snack food at the 1990 World Cup in Italy and all the said sporting events received wide television coverage in India and were viewed by millions of viewers in all parts of the country. The goods bearing the trade mark "MARS" have been selling extensively in Indian Sub-continent countries as well as in other South-East Asian countries, such as China, Hong Kong, Japan, South Korea, Thailand, Indonesia, the Philippines, Singapore, Malaysia and Taiwan. Goods under the trade mark "MARS" are available in India in duty free shops at the international airports, in shops located in the Haryana State Tourist Complexes and in shops in and along routes visited foreign tourists and in cities of tourist interest all over the country and direct sales have also been made through "grey channels" in India. By virtue of the excellent quality of the goods sold thereunder, the trade mark "MARS" has become exclusively identified with the plaintiff and its goods worldwide. Plaintiff has established a very wide reputation among the Indian Public. It is further stated that on 11.1.1989, the respondent/defendant, filed an application with the Registrar of Trade Marks for registration of the trade mark "JOOCY BURST" in its name in respect of chewing gum, bubble gum and confectionery (non- medicated). The application was numbered 503728 in class 30. The said application was advertised in the Trade Marks Journal No.1056 dated 1.6.1993. Plaintiff filed a notice of opposition against the defendant's aforesaid application under Section 21 of the Trade and Merchandise Marks Act, 1958 inter alia on the ground that the trade mark "JOOCY BURST" in respect of which the defendant was seeking registration was deceptively similar to the plaintiff's registered trade mark "STARBURST". The said opposition was taken on record and numbered Mas-2924 in the office of the Registrar of Trade Marks at Madras. On 28.1.1994, the plaintiff by its attorneys Messrs.Lall Lahiri & Salhotra sent a notice to the defendant calling upon the defendant to cease and desist from using MARES as part of its trading style and/or as a trade mark and to withdraw its application number 503728 for the trade mark "JOOCY BURST". Since no reply was received, the attorney of the plaintiff sent a reminder to the defendant. On 7.4.1994, the plaintiff's attorney received a letter from the defendant through their advocates, in which all the allegations made in the plaintiff's letter dated 28.1.1994 were denied. Defendant also refused to withdraw its application for registration of the trade mark JOOCY BURST or change its trading style to remove the word MARES therefrom or to confirm that MARES would not be used as a trade mark on foodstuffs such as non-medicated confectionery or similar goods. On 19.8.1994, plaintiff's attorney received an order dated 10.8.1994 of the Assistant Registrar of Trade Marks in the said opposition No.MAS-2924 whereby it was stated that "that the applicants having desired to withdraw their application through their counsel's https://hcservices.ecourts.gov.in/hcservices/ letter dated 27th July, 1994; IT IS HEREBY ORDERED THAT Application No.503728 shall be treated as withdrawn and the opposition thereto bearing No.2924 therefore abates." Plaintiff was also awarded costs of Rs.250.00. 5. It is further stated in the plaint that the word "MARES" which forms the most prominent and distinctive portion of the defendant's trading style and corporate name is deceptively similar to the plaintiff's trade mark and trading style "MARS". Defendant is trading in the same goods as those in which the plaintiff's trade mark and trading style "MARS" has acquired a world wide reputation. The use of the trade mark "MARES" by the defendant as part of its trading style is likely to cause confusion and deception amongst the trade and the public that the defendant is in some manner connected with the plaintiff. The use of the word "MARES" by the defendant amounts to infringement of the plaintiff's registered trade mark "MARS". By using "MARES" as its trading style, the defendant is seeking to pass off its goods as and for the goods of the plaintiff. Defendant is carrying on business under the name and style of "MARES CONFECTIONERIES P. LTD. in Madras within the jurisdiction of this Court. The damages to the plaintiff's goodwill and reputation caused by the use of their trade mark by the defendant cannot be measured in terms of money. For the aforesaid reasons, the plaintiff filed the suit for the relief stated above. 6. Defendant in its written statement has stated that the defendant is unaware about the alleged popularity of the plaintiff all over the world including India. As far as India is concerned the plaintiff is practically unknown and the Director of the defendant had heard of the plaintiff only at the commencement of the present dispute. Defendant's company was incorporated under the Indian Companies Act, 1956 on 26.5.1982 with the certificate of incorporation bearing No.9403 of 1982. Defendant's organization had been created for the purpose of market research activities and the name also was taken therefrom, viz., "MARES" (the letters "MA" to indicate the word "Market" and the letters "RES" to indicate word "Research"). "MARES" was initially a partnership firm having its office at No.13-A, Sriram Nagar West, Madras-600 018 and the above firm was carrying on business in the manufacture and sale, import, etc., of Lollipops, Chocolates, etc. and had also been granted an Import licence under the Government of India, Ministry of Commerce and Industry Order No.17/55 dated 7.12.1955, as subsequently amendment issued under the Imports and Exports (Central) Act 1947 (XVIII of 1947). The partnership firm MARES subsequently became a Private Limited company, with the name "MARES CONFECTIONERIES PRIVATE LIMITED. Clause III(A) of the Memorandum of Association of MARES CONFECTIONERIES PRIVATE LIMITED, indicates the main objects of Company as follows:- https://hcservices.ecourts.gov.in/hcservices/ (1) To manufacture, buy, sell, import and deal Lollipops, Chocolates Toffee and all confectioneries and other bye products and ingredients generally used in those preparations, including Chewing Gums, Bubble Gum, gum base, medicated or otherwise. (2) To act as manufacturer's representations, distributions, stockiest, in all types of goods and merchandise of which the company is authorised to carry on and (3) To undertake and transact every kind of agency business and to engage in export promotions. The items of confectionery manufactured by the defendant are marketed only under the trade mark belonging to Parry's Confectionery Limited, viz., "PARRYS". Several agreements have been executed between Parry's Confectionery Limited and the defendant, indicating the above arrangement over the last decade. Those agreements will reveal that from 1.11.1982 onwards, till the date of filing the written statement (28.1.1997), the property of the defendant has been marketed under the trade name of "Parrys Confectionery Limited(hereinafter referred to "PCL") having their registered office at "Parry House", Second Line Beach, Madras-600 001. The agreement also indicates that PCL have been providing the defendant the basic recipe and the process of manufacture relating to the products to be manufactured and in consideration of PCL permitting the defendant to use their trade mark, the defendant has been paying PCL, royalty as agreed upon between them. These agreements cover all the products of the defendant including Lollipops, Cool Mints, Vox, Mari stick, etc. Defendant manufacture confectioneries, which are then marketed by Parry's Confectionery Ltd., under their trade name and brand name "Parrys". The wrappers containing the product will indicate that the product in question does not carry the defendant's name as its brand name, but only indicate the name of the manufacturer as the defendant, which is a statutory requirement. Therefore, MARES CONFECTIONERIES PRIVATE LIMITED is not a trade mark or a trade name, but is a Company registered under the Indian Companies Act 1956 and consequently there is no question of the defendant copying the plaintiff's trade mark "MARS" or infringing upon it. 7. It is further stated in the written statement that the withdrawal of application No.503728 will not in any manner strengthen the plaintiff's case. The present issue is totally different. As already mentioned MARES CONFECTIONERIES PRIVATE LIMITED is not a brand name or trade name and no item of Confectioneries, Chocolates, Bubble gum, Chewing etc., are marketed under that trade mark. That being so, the question of any confusion being caused does not arise. The product of the https://hcservices.ecourts.gov.in/hcservices/ plaintiff is not used in Madras City, much less in Tamil Nadu or the rest of India. The averments in the plaint that the goods under the trade mark "MARS" are available in India in duty free shops at International Airports and in shops in and along routes visited by Foreign Tourists as also in shops located in the Haryana State Tourist Complex besides in Cities of Tourists interest all over the country and direct sales had been made through "Grey Channels" in India, will not in any way help the plaintiff's case. Continuing its manufacturing operation by the defendant, no prejudice or loss will be caused to the plaintiff. Plaintiff may be very famous in the rest of the world, but the plaintiff has not made any impact either in Madras or the rest of India. Plaintiff acquired the trade mark "MARS" only in May 1983, while the defendant had been registered under the Indian Companies Act even prior to the above date. Plaintiff cannot prevent the defendant from functioning under the Corporate name MARES CONFECTIONERIES PRIVATE LIMITED, especially as the same had been incorporated under the Indian Companies Act, 1956, even before the plaintiff had acquired the trade mark MARS. Hence, he prays dismissal of the suit. 8. On the basis of the above pleadings, the following issues were framed on 10.2.1997 for consideration:- (1) Whether the goods bearing the Trade Mark MARS have been selling extensively in the Indian Sub-continent? (2) Whether the plaintiff has established a very wide reputation among the Indian Public? (3) Whether the word MARES used by the defendant is deceptively similar to the plaintiff's trade mark MARS? (4) Whether using the word amounts to infringement of the plaintiff's Trade Mark MARS and causing confusion and deception among the trade and public? (5) Whether the plaintiff is a Registered Proprietor of the Trade Mark MARS under Nos.3685, 405616 and 405656? 9. The following additional issues were also framed on 29.3.2001 for consideration, 10 days before the pronouncement of the judgment:- https://hcservices.ecourts.gov.in/hcservices/ (1) Whether the power of attorney executed in favour of the applicant is valid and is subsisting? (2) Whether the suit is maintainable? 10. Before the trial Court, C.K.Virmani, Power of Attorney for the plaintiff was examined as P.W.1. One Boota Singh Dhillon, Finance Manager of Masterfood Middle East FZE was examined as P.W.2. Exs.P-1 to P-24 were marked on the side of the plaintiff. One S.Ram Kumar, a Director of the defendant company was examined as D.W.1 and marked Exs.D-1 to D-18 on behalf of the defendant. 11. Considering the above pleadings and also the oral and documentary evidence, the learned trial Judge came to conclusion that the plaintiff's goods having the trade mark 'MARS' have not been selling extensively in the Indian Sub-continent and the plaintiff has not established a very wide reputation among the Indian public, that the word "MARES" used by the defendant is deceptively similar to the plaintiff's trade mark "MARS", that using the word "MARES" by the defendant company amounts to infringement of the plaintiff's trade mark "MARS" and causing confusion and deception among the trade and public and that the plaintiff is a registered proprietor of trade mark "MARS" under No.3685 only. It also held that the power of attorney executed in favour of Virmani, who had signed the plaint, is not valid and not subsisting and hence the suit is not maintainable. Accordingly, the trial Court answered the issue Nos.1 and 2 and the additional issue Nos.1 and 2 against the plaintiff, while the issue Nos.3 and 4 are found in favour of the plaintiff and issue No.5 partly found in favour of plaintiff. Though issue Nos.3 and 4 are found in favour of the plaintiff and issue No.5 partly in favour of plaintiff, the trial Judge dismissed the suit, in view of the finding in respect of the additional issues 1 and 2 that the power of attorney given in favour of Virmani is not valid and not subsisting and the suit is not maintainable. Against the said Judgment, the plaintiff preferred this Original Suit Appeal. 12. The crux of the finding of the learned single Judge, which is relevant, is as follows:- "12....... Mr.C.K.Virmani is the constituted attorney of the board and duly authorised to sign and verify the plaint. The said Virmani examined as P.W.1 has stated in the chief examination that he was the power of attorney for the plaintiff company; that Ex.P1 was the xerox copy of the deed of power of attorney executed by the plaintiff in his https://hcservices.ecourts.gov.in/hcservices/ favour; that it was still subsisting and was not revoked at any point of time; that as per clauses 1 and 2 of Ex.P1, he was authorized to sign, verify and carry on any plaint or suit and he has signed the plaint and his signature in Ex.P1 was attested by a notary public; that he has signed and verified the same as plaintiff's constituted attorney. ......... A perusal of Ex.P1 would reveal that the same was executed by R.A.Steele, Assistant Secretary of the plaintiff company. P.W.1 has categorically stated that he was not aware whether a board resolution was passed authorizing R.A.Steele to execute a power of attorney. No Board resolution authorizing R.A.Steele to execute the power of attorney has been filed by the plaintiff's side. It is a matter of surprise to see that P.W.1 has stated that in the year 1995 he signed the plaint without knowing whether the power under Ex.P1 has been revoked or not, as he did not receive any notice of revocation. Though P.W.1 who has verified and signed the plaint was examined by the plaintiff's side, he has not spoken to about anyone of the facts in the plaint. 13. The plaintiff has examined P.W.2 one Mr.Boota Singh Dhillon, the Finance Manager, who was based at Dubai and who was working with different subsidiaries of the plaintiff company. According to P.W.2, the plaintiff company has executed the deed of power of attorney under Ex.P1 in favour of Virmani P.W.1 and it was signed by R.A.Steele, the Assistant Secretary of the plaintiff company. She has signed in the last page of Ex.P1. The signature in the last page of Ex.P1 has been notarized by a notary public in Sydney, Australia because R.A.Steele was working in Sidney, Australia for the plaintiff company. R.A.Steele was authorized to sign on behalf of the plaintiff and Ex.P1a is the certificate given by the notary public while Ex.P1b is the certificate issued by Almaza Shenouda of the Department of Foreign Affairs and Trade identifying the signature of N.B.Pappas. Ex.P1c is the attestation by the Vice Consul, Consulate General of India, Sydney. A perusal of Ex.P1 would clearly reveal that by the said https://hcservices.ecourts.gov.in/hcservices/ document AMAR RAJ RAJ LALL, ANURADHA SALHOTRA, CHAMUPATI KUMAR VIRMANI AND CHANDER MOHAN LALL were appointed as Attorneys jointly and severally in the name and on behalf of the plaintiff company and it was executed by R.A.Steele, the Assistant Secretary, Mars Incorporated. As seen from the document, she was only an Assistant Secretary of the plaintiff company on 22.6.93 when Ex.P1 was executed by her. No material is placed by the plaintiff to show that the said Assistant Secretary R.A.Steele was authorized to sign on behalf of the plaintiff company. It is contended by the plaintiff's side that the suit was filed in 1995 by the duly constituted attorney of the plaintiff viz., P.W.1 under Ex.P1 deed duly executed and attested known to law and especially under the provisions of Powers of Attorney Act. P.W.1 through whom Ex.P1 was marked has deposed that the plaintiff company is incorporated in U.S.A., but Ex.P1 was sworn to by a notary public in Australia and he has also added that he could not explain how Ex.P1 though executed by a company in U.S.A. was sworn to by a notary in Australia. It is pertinent to point out that the witness has also added that he did not know whether there was any board resolution authorizing R.A.Steele to execute the power of attorney. Curious enough that P.W.1 has stated that in the year 1995, he gave instructions to the counsel to prepare the plaint, but without knowing whether the power under Ex.P1 was revoked or not. Thus it would be clear that the plaintiff has not proved that the Assistant Secretary R.A.Steele was duly authorized by the plaintiff company to execute a power deed as found under Ex.P1. In the absence of the same, it cannot be held that Ex.P1 was a valid one in the eye of law. The plaintiff is unable to explain how Ex.P1 was sworn to by a notary in Australia while the plaintiff company is incorporated in U.S.A. It is contended by the plaintiff's side that P.W.1 was examined for the limited purpose of marking the document under Ex.P1 and identifying him as the power agent who filed the suit. Though Ex.P1 document is marked through P.W.1, he is unable to say that the said power was in force at the https://hcservices.ecourts.gov.in/hcservices/ time of the institution of the suit. While P.W.1 has not spoken any one of the facts or allegations found in the plaint, P.W.2 Mr.Dhillon, Finance Manager based at Dubai has been examined. From his evidence, as narrated above, it would be clear that he is not the competent witness to speak anything about either Ex.P1 document or it was in force at the time of the institution of the suit. It is surprising to note that he has sworn to an affidavit in Dubai in December 1999 to summon P.W.1 Virmani under application No.123/2000. Though it is contended by the plaintiff's side that the power that was executed in favour of Virmani was cancelled in 1999, there is no document of revocation or cancellation placed before the Court. As stated above, the suit was filed by P.W.1 stating that he was the constituted attorney of the plaintiff and duly authorized to sign and verify the plaint. Only on that undertaking the suit was taken on file, and he has filed an affidavit in that regard also. But he is not aware whether the power executed in his favour was in force at the time of the institution of the suit and he has not spoken to anyone of the facts found in the plaint. Thus it would be crystal clear that he does not know whether Ex.P1 document is in force or not. P.W.2 is not a competent person to speak about Ex.P1 document since he was neither connected to nor concerned with the document. 14. As stated above, Ex.P1 document was not an outcome of the resolution of the Board of Directors of the plaintiff company. Admittedly the said document was executed by one Assistant Secretary R.A.Steela. No resolution of the Board of Directors authorizing R.A.Steele to execute the power of attorney in favour of P.W.1 is placed by the plaintiff's side. The plaintiff company is incorporated in U.S.A. and Ex.P1 was sworn to by a notary public in Australia. Without any hesitation it has to be stated that Ex.P1 document is not a properly executed or valid document in the eye of law. The learned counsel appearing for the plaintiff would urge that it was a matter of internal management of https://hcservices.ecourts.gov.in/hcservices/ the company and at the time of the institution of the suit, P.W.1 has a valid power under Ex.P1 document. This contention cannot be accepted. The Court is of the view that in the absence of the resolution of the Board of Directors empowering P.W.1 directly or giving necessary powers to the Assistant Secretary R.A.Steele to execute such a power, the suit filed by P.W.1 was not competent. The initial infirmity what is noticed by the Court with regard to the maintainability of the suit was incurable. During the pendency of the suit, an application was filed by the plaintiff's side for issue of commission to examine Mr.C.K.Virmani at Delhi. When the said application was opposed by the defendant, an additional affidavit was filed by Mr.Arul Selvan, stating that he was the duly constituted power of attorney of the plaintiff and C.K.Virmani was no longer connected with the plaintiff and that in 1999, the plaintiff ceased to retain M/s.Lall Lahiri and Salhotra in which office C.K.Virmani was working. It is pertinent to note that no document was produced evidencing the appointment of Mr.Arul Selvan as the constituted attorney of the plaintiff. After the dismissal of the