In the High Court of Judicature at Madras Dated: 02.09.2009 Coram: The Honourable Mr.Justice M.CHOCKALINGAM and The Honourable Mr.Justice R.SUBBIAH Original Side Appeal No.309 of 2004 and C.M.P.Nos.21142 and 21143 of 2004 Scientific Compounds & Processes Pvt.Ltd., 310, TTK Road, Chennai-600 014 now at "CITADEL" Building, 117, Dr.Radhakrishnan Salai, Office No.2, 1st Floor, Mylapore, chennai-600 004. ..Appellant(Plaintiff) ..vs.. M/s.National Soapnut Works, No.63,3rd Main Road, N.T.Pet, Bangalore-560 002. ..Respondent Original Side Appeal filed under Order XXXVI Rule 1 of Original Side Rules read with Clause 15 of the Letters Patent, against the judgment and decree dated 09.07.2004 made by a learned single Judge of this Court in C.S.No.44 of 1991. For Appellant : Mr.A.Mohan For Respondent : Mr.PerumBulavil Radhakrishnan JUDGMENT (Judgment of the Court was delivered by R.SUBBIAH, J.,) The unsuccessful plaintiff in C.S.No.44 of 1991 is the appellant herein. This appeal is preferred against the judgment of a learned single Judge of this Court dated 09.07.2004 in C.S.No.44 of 1991, whereby the reliefs sought for by the appellant/plaintiff were negatived. 2. The facts, which necessitated for the appellant/plaintiff to approach this court, are as follows: https://hcservices.ecourts.gov.in/hcservices/ (a) The plaintiff filed the suit for permanent injunction restraining the defendant from using the word SAHEENA together with the symbol of two trees and from using the trading style, colour scheme, lettering or using any other trade mark or other mark which is in any deceptively similar to or a colourable imitation of the plaintiff's registered mark SABENA bearing the registration No.317396 in Class 3 of Schedule IV of the Trade and Merchandise Marks Act, 1958 or doing any act or deed calculated to deceive customers and from passing off their goods as the goods of the plaintiff by using the word SAHEENA and directing the defendant to surrender to the plaintiff all cartons, labels, packets, etc., containing the offending mark SAHEENA and also for rendition of true accounts. (b) The appellant/plaintiff herein got engaged in the manufacture and sale of cleaning powder under the brand name SABENA. The brand name SABENA was registered in Class 3 of Schedule IV of the Trade and Merchandise Marks Act, 1958. The trade mark bears the registration No.317386 dated 31.07.1996 in part 'A' of Registrar of Trade Marks. The said trade mark was originally registered in the name of 'Scientific Compounds & Processes', a proprietary concern by its sole proprietor T.G.Raghunath. Subsequently, it was converted into a Private Limited Company. The registration of the trade mark has been renewed from time to time from the year 1976. The renewal has also been advertised in Trade Mark Journal No.992. The said trade mark not only bears the lettering SABENA but also the design of two trees enclosed in a circle and placed above the lettering. Thus, the appellant has become the registered proprietor of SABENA and the appellant has extensive sale of its cleaning powder which are sold in polythene pouches. In the pouches, the letters of SABENA printed boldly and conspicuously in white and red lettering. The appellant has extensive sales of its products. The appellant's cleaning powder is manufactured under strict quality control. The appellant/plaintiff has also incurred a heavy expenditure on advertising its trade mark SABENA and the same is extremely popular in the market. The name SABENA has now come to identify the cleaning powder of outstanding quality. In view of the wide spread success of the cleaning powder manufactured and sold by the appellant, the respondent/defendant has sought to market the cleaning powder under the deceptive name SAHEENA. Apart from the trade name, the polythene bag used by the respondent is also with an identical colour scheme, colour combination and lettering to that of the appellant. The polythene bag/pouch which has been used by the respondent is almost identical and deceptively similar to the appellant's polythene pouches. By using the identical and deceptively similar trade mark in the polythene pouches, the respondent is passing off its goods as that of the appellant's goods. The respondent's adoption of the word SAHEENA as well as the identical colour scheme, emblem and packing on the plastic bag would reveal the fraudulent intention to trade upon and exploit the reputation of the cleaning powder https://hcservices.ecourts.gov.in/hcservices/ manufactured and marked by the appellant and also to gain monetary benefits. This act of the respondent would cause heavy financial loss to the appellant. Hence, the appellant has filed the suit for the reliefs mentioned supra. 3. The case of the appellant was resisted by the respondent stating that the name used by the respondent SAHEENA cannot be said to be deceptively similar name, to that of the plaintiff's trade mark SABENA. Similarly, the pouches which are being used by the respondent cannot be said to be identical to that of the appellant's trade mark. Further, the appellant is selling its cleaning powder in plastic packets having net weight of 500 grams and that the letters of SABENA are printed boldly and conspicuously in white and red lettering and that there are other colours in the plastic packet and that the word "G2 medium to clean anything" and the lettering "beware of imitations". Similarly, the use of the polythene pouch which are being used by the respondent for packing the product cannot be said to be a deceptively similar to that of the appellant's product. The respondent has been using the word SAHEENA right from the year 1969, whereas the appellant's trade mark was registered only in the year 1976. The respondent is the prior user of the mark SAHEENA. When the appellant was seeking the registration of the trade mark SAHEENA, it made a search application before the authorities concerned and by letter dated 22.07.1986, the respondent was informed that the word SAHEENA could be registered and there was no other similar marks in existence. The respondent is the prior user of the cleaning powder and hence at no stretch of imagination, it can be said that the respondent is passing off their goods as that of the appellant by using the word SAHEENA and adopting the colour scheme and lettering of the appellant. Thus, the respondent contended that the appellant/plaintiff is not entitled to the reliefs sought for. 4. The learned single Judge on the above said pleadings, framed 5 issues and on the side of the appellant, the Director of the plaintiff company was examined as P.W.1 and Exs.P-1 to P-5 were marked and on the side of the defendant/respondent, the proprietor of the defendant company was examined as D.W.1 and D.W.2 were examined and Exs.D-1 to D-20 were marked. On an appreciation of the evidence, the learned single Judge has come to the conclusion that the respondent has already been carrying on business even prior to the appellant under the trade mark SAHEENA and under such circumstances, the respondent cannot be restrained from using their trade mark SAHEENA and that the appellant has not proved his case either by oral or by documentary evidence that the respondent is passing off their goods as that of the appellant and negatived the claims made by the appellant. Aggrieved over the same, the present appeal is filed by the plaintiff. https://hcservices.ecourts.gov.in/hcservices/ 5. Advancing arguments on behalf of the appellant/plaintiff, the learned counsel would submit that though eight issues have been framed, the learned single Judge has not recorded his findings on the relevant issue, namely, whether the trade mark of the respondent is deceptively and identically similar to the registered trade mark of the appellant, viz., SABENA. The learned counsel for the appellant has invited the attention of this court to Ex.P-2, the copy of appellant's trade mark registration SABENA under No.317386 in Class 3, which is available in the typed set of papers, and submitted that the appellant has registered their trade mark as early as 31.07.1976, whereas the respondent has registered their trade mark, much later than the registration of the trade mark of the appellant. Though the appellant has registered their trade mark in the year 1976, they have been using the same right from the year 1963. With regard to this, the learned counsel for the appellant has also invited the attention of this Court to the grounds of opposition filed by them under Ex.D-4 before the Registrar of Trade Marks on 16.09.1992, wherein it has been stated by the appellant that they have been marketing the product under the brand name SABENA right from 01.01.1963. Thus, by pointing out the statement made in the grounds of opposition filed before the Registrar of Trade Marks, the learned counsel for the appellant has vehemently contended that it is incorrect to state that the respondent is the prior user of the name SAHEENA. Further, by inviting the attention to Exs.P-4 and P-5, xerox copies of the pouches annexed in the typed set of papers, the learned counsel further contended that the pouches, which are being used by the respondent are similar to that of the appellant and on a cursory look on the two pouches, one can easily come to a conclusion that the respondent is passing off the goods by using the trade mark deceptively and similarly as that of the appellant's trade mark. But the learned single Judge, without looking into those aspects, dismissed the suit. 6. In this regard, the learned counsel for the appellant has relied upon the judgments reported in CORN PRODUCTS REFINING CO., ..vs.. SHANGRILA FOOD PRODUCTS (AIR 1960 SC 142), KAVIRAJ PANDIT DURGA DUTT SHARMA ..vs.. NAVARATNA PHARMACEUTICAL LABORATORIES (AIR 1965 SC 980), K.R.CHINNA KRISHNA CHETTIAR ..vs.. AMBAL AND CO., MADRAS (PTC (SUPP 1)(1) 258 (SC), and CADBURY INDIA LTD., ..vs.. NEERAJ FOOD PRODUCTS (2007 (35) PTC 95 (DEL.). https://hcservices.ecourts.gov.in/hcservices/ 7. Learned counsel for the appellant has also invited the attention of this Court to para 26 of the trial court judgment and contended that the contention of the respondent that they are the prior user of the trade mark SAHEENA is not correct. Learned counsel further contended that what was filed before the trial court by the respondent is only a sales tax registration certificate issued by the Sales Tax Department on 14.10.1969, marked as Exs.D-7 and D-8. But the learned single Judge, by mistakenly has construed the said certificate as a registration certificate of the respondent's trade mark and has come to an erroneous conclusion that the respondent is the prior user of the trade mark SAHEENA and thus, he prayed that the judgment under challenge has to be set aside. 8. Learned counsel for the respondent/defendant put forth his submissions in his sincere attempt of sustaining the judgment rendered by the learned single Judge. 9. The court has paid its anxious consideration on the submissions made by the learned counsel on either side. 10. The main grievance of the appellant is mainly on two-fold; firstly, the learned single Judge, has not dealt with the relevant issue, namely, "Whether the trade mark of the defendant "Saheena" is deceptively, phonetically and visually similar to the registered trade mark "Sabena" of the plaintiff?" and secondly, whether the learned single Judge has come to a conclusion, by wrongly construing the certificate issued by the Sales tax Department dated 14.10.1969, that the respondent are the prior user of the trade mark SABENA without considering the case of the appellant that they have been marketing their product from 1963 under the trade name SABENA and registered the same in the year 1976 ? 11. In the light of the submissions urged by the learned counsel for the appellant, the question that has to be decided in the appeal is whether the trade mark of the respondent "SAHEENA" is deceptively, phonetically and visually similar to that of the appellant's trade mark and whether the respondent has been using the same as the prior user of the trade mark "SAHEENA" ? 12. The answer for both questions has to be derived from the evidence available on record as to among those two, who is the prior user. On a perusal of the materials available on record, we find that from Exs.D-7 and D-8,i.e., the sales Tax registration certificate and the statement of monthly turnover, the respondent https://hcservices.ecourts.gov.in/hcservices/ has been carrying on business under the trade mark SAHEENA from the year 1969 itself. Though a submission was made by the learned counsel for the appellant that the said certificate under Ex.D-7 was mistakenly construed by the learned single Judge as trade mark registration certificate, in our opinion, the said certificate is the decisive evidence to come to the conclusion that the respondent has been using the trade name SAHEENA prior to the appellant. Similarly, Ex.D-8, the statement of monthly turnover filed by the respondent before the authorities concerned, would go to prove that they had been carrying on the business in the name of SAHEENA prior to the marketing of the appellant's product. Though yet another submission was made by the learned counsel for the appellant that they have been marketing the product under the name SABENA right from the year 1963, absolutely, no legal evidence was adduced by the appellant to show that they are the prior users of the trade name SABENA. Therefore, the respondent is having a vested right to use the trade mark SAHEENA, particularly in the circumstances when it has been proved that the respondent has been using the trade name right from 1969. The appellant, who entered into the field subsequently, has no justification to say that the trade mark of the respondent is deceptively and phonetically similar to that of the appellant. 13. Further, on a perusal of the documents, we do not find any similarity between the trade marks of the parties. On a cursory look on Exs.P-4 and P-5, we could easily find the difference in the size of the packets and the style of the letters printed thereon and also the symbols found thereon. 14. The suit was filed in the year 1991. The Director of the appellant company was examined as P.W.1 in the year 2003, i.e.after a lapse of 12 years. All along, there was no interim order in favour of the appellant/plaintiff and the respondent/defendant has been continuously carrying on the business under the trade mark SAHEENA. It is pertinent to point out that P.W.1, in his oral evidence, has not complained of any prejudice having been caused to them by the respondent's usage of SAHEENA, particularly when the appellant has specifically alleged that the adoption of the trade name SAHEENA by the respondent has caused heavy financial loss to them. All these circumstance would clearly indicate that had there been any confusion created in the mind of the consumers about the trade name of the appellant as well as of the respondent, the Director of the appellant, P.W.1, could have very well deposed before the trial court about the prejudice and hardship having been caused to them. Hence, the claim made by the appellant that the trade name used by the respondent is deceptively similar to their trade name is not correct. In view of the same, the respondent had possessed unquestionable right to continue the business with the said trade mark. It is pertinent to point out that the objection raised by the appellant for the registration of the trade mark by https://hcservices.ecourts.gov.in/hcservices/ the respondent was negatived by the Assistant Registrar of Trade Marks by order dated 28.01.1998. 15. Further, the decisions cited by the learned counsel for the appellant have dealt with the goods which had a deceptive and phonetic similarity. But in this case, we do not find any deceptive and phonetic similarity and therefore, we are not inclined to rely upon those decisions, to decide the issue involved in this appeal. Hence, in our opinion, the appellant has not made out a case before the learned single Judge to grant the reliefs sought for in their favour and we do not find any error both factually and legally in the judgment under challenge. Therefore we hold that the appellant has not made out a case before this Court to rebut the finding arrived at by the learned single Judge. Accordingly, the appeal is dismissed. No costs. Connected C.M.Ps.are closed. Gl Sd/- Asst. Registrar //True Copy// Sub Asst. Registrar To The Sub Assistant Registrar, Original Side, High Court, Madras. + 1 cc to Mr. Perumbulavil Radhakrishnan, Advocate SR No.43831 + 1 cc to Mr. A.A.Mohan, Advocate SR No.44232 RL(CO) SR/22.9.209 Judgment in O.S.A.No.309 of 2004 https://hcservices.ecourts.gov.in/hcservices/