IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED : 07.07.2009 CORAM THE HONOURABLE MR.JUSTICE M.VENUGOPAL A.S.NO.1010 OF 2001 Sri Pattatharasiamman Textiles Registered Firm, rep. by its Partner P.Loganathan 73-D West Colony Kumarapalayam, Namakkal District. ..Appellant/Plaintiff Vs. A.Lakshmanan ..Respondent/Defendant Appeal suit filed under Section 96 of the Civil Procedure Code, against the judgment and decree dated 8.6.2001 in O.S.No.2 of 1999 on the file of the Court of Principal District Judge, Erode. For Appellant : Mr.K.Chandra Mouli, S.C. for A.Muthukumar For Respondent : Mr.N.Manokaran J U D G M E N T The appellant/plaintiff has filed this appeal as against the judgment and decree dated 8.6.2001 made in O.S.No.2 of 1999 on the file of learned Principal District Judge, Erode. 2.The short facts of the appellant/plaintiff's case are as below: (i)The appellant/plaintiff, a firm registered under the Indian Partnership Act as two partners (1) N.Nachimuthu and (2) P.Loganathan. The partnership deed has been duly registered on 18.3.1997. The partners of the appellant/plaintiff firm formed the appellant firm in the name and style of "Shri Pattathu Amman Textiles" as per their original partnership agreement dated 29.101980. The business has commenced from 20.10.1980. The firm has been registered under the TN General Sales Tax Act, 1959 and also under Central Sales Tax Act, 1956. https://hcservices.ecourts.gov.in/hcservices/ (ii)The appellant/plaintiff is one of the leading manufacturers and merchants of textile itself goes from the textile town of Kumarapalayam for more than 18 years and they are manufacturing handloom textile lungis and marketing them throughout India. The appellant/plaintiff has acquired considerable Good Will not only among the trading community but also among the purchasing public cents they maintain very high quality of raw materials and yarn for the lungies sold by them. With a view to protect Good Will and reputation of their quality lungies, the appellant in the year 1984 has honestly adopted a distinctive trade mark consistent of a device of an Aeroplane with the word jet brand reputed in English, Tamil and Hindi in blue, red and yellow colour combination. The appellant has applied for the registration of the Trade Mark as per the relevant provisions of Trade and Merchandise Mark Act, 1958 before the Registrar of Trade marks at Chennai on 02.02.1987 in clause 24 in respect of textile cloth which has been numbered as Appl.No.467004. The Trade mark has been registered and has been duly renewed and the same is in force and still remains on the Registrar of Trade Mark. The legal certificate of registration issued by the Registrar of Trade mark has been filed. (iii)The appellant/plaintiff's turn over for the 5 years are mentioned as follows: For the year 1993-94 Rs.2,90,11,360.00 (crores) For the year 1994-95 Rs.2,94,05,129.25 (crores) For the year 1995-96 Rs.2,56,74,784.75 (crores) For the year 1996-97 Rs.3,37,62,860.00 (crores) For the year 1997-98 Rs.2,65,58,875.00 (crores) (iv)After seeing the hard earned Goodwill and reputation of the appellant/ plaintiff Trade mark a few dishonest traders from the textile town of Kumarapalayam recently have started affixing a deceptively similar trade mark as that of the appellant's mark on their products such as lungies of inferior quality and started selling them in the market as that of the appellant. By this act of infringement and passing off, they have not only encroached upon the hard Goodwill of the appellant, but also has brought down the sales figures. The damage caused to the reputation of the appellant/plaintiff's Trade mark cannot be compensated in terms of money alone easily. The respondent/defendant and others have no right to use any Trade mark, which is identical with and or similar to the Trade mark of the plaintiff. (v)The literary population of our country is only 51% and that too English knowing persons are only 19%. Most of the customers of the appellant are purchasing the quality lungies manufactured by it, https://hcservices.ecourts.gov.in/hcservices/ by looking at the device of the Aeroplane, the placement of the words of the label and by the colour combination of the plaintiff's Trade mark. (vi)The appellant/plaintiff recently has noticed that the respondent/ defendant has started selling their inferior quality of lungies deceptively, similar to that of the Trade mark of the appellant and the appellant has issued a warning notice to the trading name of the respondent/defendant on 19.2.1997 and no reply has been sent. (vii)A perusal of the respondent/defendant's label which consists of 'Naya Jet Brand', the manner of placement of the device of Aeroplane, the colour combination of the label in blue, red and yellow the size of the label, the placement of the trading style indicate that the respondent/defendant has dishonestly adopted this deceptively label with a calculated intention to deceive the unwary purchaser of ordinary intelligence. A comparison will show that the respondent/defendant has added only the word "NAYA" as extra in his label by imitating the features of the appellant/plaintiff's label. The respondent/defendant has purposely adopted the trading style similar to that of the appellant. Based on the police complaint dated 15.12.1997 at the Erode Police Station, an FIR No.2286/97 has been registered under Section 78 and 79 of the Trade and Merchandise Mark Act under Section 420 I.P.C. Some incriminating properties were seized by the police and the criminal investigation is pending. On 21.12.1998 the respondent/defendant has filed a suit at the First Additional District Munsif Court, Erode in O.S.No.666 of 1998 praying for the relief of declaration and consequent injunction restraining the appellant/plaintiff in the suit from preventing the respondent/defendant from doing the business under the name and style of 'Naya Jet Brand Lungies' Sri Periyur Amman Textiles, South India with the respondent's label. If the respondent/defendant is not restrained by means of a permanent injunction, the appellant/plaintiff cannot continue their business of selling lungies under the Trade mark of JET Brand and irreparable damage and loss will occur, which cannot be easily compensated in terms of money. The respondent/defendant is liable to pay damages to the appellant/plaintiff. (viii)The damages can be ascertained only on production of accounts of the respondent/defendant from the financial year 1996-97. Yet the appellant tentatively estimates the value of the compensation by way of damages at Rs.1000/- and paying a Court fee for it and it undertakes to pay the difference of Court fees after ascertaining the exact amount of damages. Hence, the suit is laid for the grant of permanent injunction restraining the respondent/defendant, his men, agents, dealers, stockists assigners and others claiming under the respondent/defendant from using or attempting to use or enabling others to use the word NAYA JET, the device of the Aeroplane or in https://hcservices.ecourts.gov.in/hcservices/ combination thereof, and/or in any other Trade mark identical or deceptively similar or in any other manner infringing the appellant/plaintiff's Trade mark registered in Regn.No.467004 in Clause 24 in respect of Textile cloth including lungies and for the relief of permanent injunction restraining the respondent/defendant, his agents, dealers, stockists and claiming others thereunder from passing off, or attempting to pass off or from enabling others to pass off the defendant goods and for an issuance of a direction to the respondent/defendant to produce before the Court all his accounts of sales and profits for determining the ultimate compensation payable by the respondent/defendant to the appellant/ plaintiff as damages etc. 3.The respondent/defendant in the written statement has inter alia taken the pleas that nobody in the public will say that the lungies of the appellant/ plaintiff are superior qualities and the lungies of the respondent/defendant are of inferior one and as a matter of fact, the lungies of the respondent/defendant do have a good reputation and an actual among the public throughout India and that the respondent/defendant has started the business with the 'Naya Jet Brand' label only on 01.2.1997, having entirely different from the quality of the appellant such as 'NAYA JET BRAND' with different colours and figures of the figure brand represented in English, Tamil and Hindi in dark blue, orange, red and yellow colour with the attachment of different figures of the 'NAYA GET BRAND' colour combination and there are lot of differences of the figures of the Jet Brand of the appellant and Naya Jet Brand of the respondent/defendant in all aspects, not only to the figures but also the words and the brand and that the public at present both the literate and illiterate's can easily find out the label of the respondent/defendant, without any difficulty and a wavering mind among and the respondent/defendant has never caused any kind of damages to the appellant/plaintiff not only by bringing down the sales of the appellant lungies etc. and that he has been selling his own brand viz. 'NAYA JET BRAND' till the date on 15.7.1999 and from 16.7.1999 onwards the respondent/defendant is selling the lungies in the name of 'QUEEN JET BRAND' which is entirely different from the quality, quantity and different from that of the appellant's Jet Brand lungies till now, by the firm Sri Ram Lakshman Tex, Sri Periyur Amman Textiles, Komarapalayam and hence, the respondent has any intention to cause any damage to the appellant/plaintiff in any manner and that the appellant/plaintiff is not entitled to seek the relief of injunction in any manner against him and without any valid reason and evidence, the appellant is not entitled to claim the relief of damages from him and also the appellant is not entitled to the relief in directing the respondent/defendant to produce the accounts from the financial year 1996-97 and further the appellant is not entitled to claim a compensation by means of damages at Rs.1000/- etc. https://hcservices.ecourts.gov.in/hcservices/ 4.Before the trial Court, on the side of appellant/plaintiff witness P.W.1 has been examined and Exs.A.1 to A.40 have been marked and on the side of respondent/defendant, witness D.W.1 has been examined and no document has been marked. 5.The trial Court on an appreciation of oral and documentary evidence and after scrutinising the available materials on record has come to the conclusion that the appellant/plaintiff are not entitled to claim the reliefs prayed for and resultantly, dismissed the suit without costs. 6.Aggrieved against the said dismissal of the suit by the trial Court, the appellant/plaintiff has projected this appeal before this Court. 7.The points that arise for determination in this appeal are: 1.Whether the respondent/defendant's trade mark is deceptively similar to that of the appellant/plaintiff's trade mark? 2.Whether the appellant/plaintiff is entitled to the relief of permanent injunction? 3.Whether the appellant/plaintiff is entitled to the relief of damages and if so what is the quantum of damages? 4.Whether the respondent/defendant is liable to produce the accounts from the financial year 1996-97? 8.Contentions, discussions and findings: According to the learned counsel for the appellant/plaintiff, the trial Court has committed an error in coming to the conclusion that the label of the respondent/defendant 'NAYA JET BRAND' is different from the appellant/ plaintiff's label 'JET BRAND' even before discussing the evidence of the case and the comparison of the concerned labels and in fact, the overwhelming oral and documentary evidence in the case will point out that the respondent/defendant has infringed the appellant/plaintiff's Trade mark and this fact of the matter has not been taken note of by the trial Court and moreover, the trial Court has committed an error in assuming that the appellant/plaintiff has got his trade mark registered on 10.3.1999 ignoring the fact that the said date is the one on which a true copy of the entry in the registry of trade marks pertaining to appellant has been furnished and the annexure to Ex.B.39 refers to the date of grant of certificate and the subsequent renewals clearly prove that the appellant's trade mark has been registered as early as in 1987 and thereafter, renewed and this has not been taken note of by the trial Court in a proper perspective and in fact, any purchaser cannot easily differentiate the https://hcservices.ecourts.gov.in/hcservices/ respondent/defendant's lungies with that of the appellant/plaintiff and that the respondent/defendant's label bears a close resemblance to that of the appellant /plaintiff and these facts have not been looked into by the trial Court in a proper manner and added further, on the date of the suit the trade mark of the appellant/plaintiff has already been registered and the same has been renewed in the year 1994 and therefore, prays for allowing the appeal in the interest of justice. 9.The learned counsel for the appellant contends that when once the appellant/plaintiff establish a case that the respondent/defendant has adopted a label of the appellant in a deceptive way then it is the end of the matter and that the appellant/plaintiff is to be given the reliefs prayed for in the suit automatically. In support of his contention that the respondent/defendant has adopted the label of the appellant/plaintiff in a deceptive way and therefore, there is infringement of appellant/plaintiff's registered trade mark by the respondent/defendant, the learned counsel for the appellant relies on the Hon'ble Supreme Court decision Parle Products (P) Limited V.J.P. and Company, Mysore in AIR 1972 Supreme Court 1359 wherein it is observed as follows: "To decide the question as to whether the plaintiffs' right to a trade mark has been infringed in a particular case, the approach must not be that in an action for passing off goods of the defendant as and for those of the plaintiff. 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. It is of no use to note on how many points there is similarity and in how many others there is absence of it. AIR 1965 SC 980, Rel. on; R.F.A.No.170 of 1963, D/- 5-7-1966 (Mys.) Reversed." 10.He also cites the decision of this Court R.Gopalakrishnan V. M/s.Venkateshwara Camphor Works, Coimbatore in 2000 (IV) CTC 222 wherein it is held that 'the appellant's carton is with figure "Lord Krishna" while respondent's carton is with figure "Lord Muruga" and the Gods in both cartons are positioned on Lotus flower with water in https://hcservices.ecourts.gov.in/hcservices/ background and the colour scheme is also identical and the words and sequence in which they are used in carton are also similar and such similarities point that the respondent while designing carton had kept in mind the appellant's carton and similarities cannot be coincidence and the attention to similarities should be more than to dissimilarities when there is dishonesty on the part of person infringing trade mark and the similarities in colour schemes sequence in which are used in both cartons establish dishonesty and that the trade mark is infringed and as such the suit is liable to be decreed.' 11.Another decision of this Court in Godavai Match Industries, Mamasapuram by its Proprietor and 4 others V. The Comorin Match Industries Pvt. Limited, Kovilpatti by its Managing Director 2001 (1) CTC at page 633 is relied on the side of the appellant to the effect that 'plaintiff using label "Kisan" in safety match boxes manufactured and sold by them and the defendants used label "Krise Race" and the plaintiff label contain picture of man shown to be ploughing field in standing posture with two bulls attached to plough under his control with whip in right hand and head gear made on cloth and the defendant label contains picture of man seated on chariot pulled by two bulls under his control and man is shown with whip in right hand and headgear made of cloth and the plaintiffs label contains tiller of soil and defendants label contains man in chariot and the common features alone should be taken into account to decide similarity between two labels and other small differences should not be taken into consideration and the mere fact that several other manufacturers are shown to be using similar label would not deprive plaintiffs of his right if case is made out and common features in both labels will enter in mind of unwary purchaser with imperfect recollection and the Court should have in mind point of view of buyer and buyer's interest alone in deciding infringement and Court should also consider whether registered trade mark are in same goods and also it shall have regard to class of buyers and the market for match box is from people whose illiteracy level is very high and the Court should have in mind man of intelligence below par and unwary purchaser with imperfect collection of memory and the effective impression in mind of buyer who go in for match boxes would be dominant and the unwary purchaser does not have an opportunity of seeing infringed trade marks and registered trade mark side by side and the words found in the label of plaintiff and defendant though totally dissimilar, cannot mean that there would be no confusion in mind of buyer on looking at two labels and the service man in both labels in shown to be having headgear made of cloth and picture of two bulls postioned in same place in same direction controlled by man with whip in right hand and the defendants label is nearly resembling with registered trade mark of plaintiff and there is likelihood of deception or confusion in mind of unwary of purchaser and the plaintiff has statutory right to protect his trade mark.' https://hcservices.ecourts.gov.in/hcservices/ 12.The learned counsel for the appellant draws the attention of this Court M/s.Devi Pesticides Private Limited V. M/s.Shiv Agro Chemicals Industries 2006-3-L.W. 350 and 351 whereunder it is held that 'the Court is satisfied that the applicant has made out that it is a clear case of infringement of their Trademark BOOM PLUS by the respondent by using their Trade mark SUPER BOOM and that the respondent has committed an act of passing off their goods as that of applicant by using their Trademark SUPERBOOM, which is deceptively similar and identical to the plaintiff's trademark BOOM PLUS and by using phonetically similar mark and making the unwary consumers to believe that the product of the respondent originates from that of the applicant, thus committed an act of passing off infringement of trademark.' 13.Countering the submissions of the learned counsel for the appellant, the learned counsel for the respondent submits that the respondent/defendant has commenced his business with the label 'NAYA JET BRAND' on 01.2.1997 which is wholly different from the quality of the appellant/plaintiff such as 'NAYA JET BRAND' with different colours and figures representing in English, Tamil and HIndi in dark blue, orange, red and yellow colour with the attachment of different figures of the 'NAYA JET BRAND' colour combination and there are large differences of the figures of 'JET BRAND' of the appellant/plaintiff and 'NAYA JET BRAND' of the respondent/defendant in all aspects including the words and brand and the device of Aeroplane and the placement of the words on the label and by the colour combination of the respondent/defendant are entirely different from that of the appellant/plaintiff's label and moreover, the respondent/ defendant has been selling his own brand of lungies with the brand name 'NAYA JET BRAND' till 15.7.1999 and from 16.7.1999. He is selling the same under the name of 'QUEEN JET BRAND' which is totally different from the quality and quantity of the appellant/plaintiff's Jet Brand lungies and therefore, the appellant/plaintiff is not entitled to the reliefs prayed for in the plaint inasmuch as the respondent/defendant has not committed any act of infringement of trade mark. 14.Also the learned counsel for the respondent/defendant informs this Court that earlier the appellant/plaintiff has filed a suit O.S.No.131 of 1990 against 8 individuals for selling lungies in the brand name of 'AIR JET BRAND' which has been dismissed by the trial Court etc. 15.The learned counsel for the respondent/defendant cites the decision M/s. National Chemicals and Colour Company and others V. Reckitt and Colman of India Limited and another in AIR 1991 BOMBAY 76 whereunder it is held that 'one cannot compare two marks by putting them side by side and by trying to find out similarities and differences in them and what one has to see is overall impression given by the mark in minds of members of general public.' He also https://hcservices.ecourts.gov.in/hcservices/ relies on the decision in Century Traders V. Roshan Lal Duggar and Company AIR 1978 Delhi 250 wherein it is held that 'In an action for passing off in order to succeed in getting an interim injunction the plaintiff has to establish user of the mark prior in point of time than the impugned user by the defendants. The registration of the mark or similar mark prior in point of time to user by the plaintiff is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry does not prove its user by the persons in whose names the mark is registered and is irrelevant for the purposes of deciding the application for interim injunction unless evidence has been led or is available of user of their registered trade mark. ILR (1976) 1 Delhi 278 and AIR 1965 Bom 35 and AIR 1960 SC 142, Relied on; Order D/- 30.9.1976 (Delhi) in Suit No.381 of 1976, Reversed.' 16.In the instant case on hand, the evidence of P.W.1 and R.W.1 assume significance in the considered opinion of this Court. Indeed, P.W.1 (Partner of the appellant/plaintiff firm) in his evidence has deposed that the appellant/plaintiff from the year 1980 onwards is doing textile business in the name of 'Sri Pattatharasiamman Textiles' by affixing Jet brand label and they are manufacturing cotton lungies and they are doing business in different parts of India like Bihar, Orissa, West Bengal, Kerala, Andra, Karnataka, Tamil Nadu and Pondicherry and their label will be in the form of Aeroplane flying and the public after seeing the label will produce their products and from the year 1984 they have started using the label and they have submitted application bearing No.467004 in the year 1987 and the same has been registered in the year 1994 by allotting the same number and that the trademark has been registered and a legal certificate has been issued in their favour and the labels used by them are Ex.A.1 and A.2 and that the respondent/defendant has manufactured the duplicate labels like that of their labels and by fixing the said duplicate label they are selling the same and the duplicate label is Ex.A.3 and by using the duplicate label the respondent/defendant has benefited immensely and even the educated people are duped and confused in regard to the labels of the respondent and the office copy of the legal notice dated 19.2.1997 is Ex.A.4 and the plaint copy in O.S.No.666 of 1998 on the file of Second Additional District Munsif, Erode is Ex.A.6. 17.P.W.1 during his cross examination has deposed that the appellant/ plaintiff is a partnership firm and he has filed the suit in his capacity as a partner and that he has given a complaint in Crime No.2486 of 1997 before the Erode Town Police and that he has furnished the name and address of 10 textiles and in that the respondent/defendant name does not find a place and that he has filed the original licence in O.S.No.1 of 1999 and the certified copy is Ex.A.39. https://hcservices.ecourts.gov.in/hcservices/ 18.D.W.1/the first defendant in his evidence has stated that he commenced his business in the name of 'NAYA JET' and that till date he has not conducted any sales and involved in the purchase after the commencement of his business under the brand 'NAYA JET' and thereafter, he started his business in the name of 'QUEEN JET BRAND' and in the business there is no