HON’BLE SRI JUSTICE B. PRAKASH RAO AND HON’BLE SRI JUSTICE P. DURGA PRASAD C.C.C.A.No.208 OF 2003 Date: 30-04-2011 Between: Swastiks Instant Food Products ……. Appellant and Swastik Mirch Stores and others ……. Respondents HON’BLE SRI JUSTICE B. PRAKASH RAO AND HON’BLE SRI JUSTICE P. DURGA PRASAD C.C.C.A.No.208 OF 2003 JUDGMENT: (Per BPR, J) The appellant is defendant No.2 who, in this appeal filed under Section 96 of the Code of Civil Procedure, is aggrieved against the judgment and decree, dated 01-05-2003 in O.S.No.73 of 2000 on the file of the X Additional Chief Judge, City Civil Court at Hyderabad in decreeing the suit filed by the respondent No.1, who is the plaintiff, inter alia, seeking for perpetual injunction and damages purportedly under section 105 of the Trade and Merchandise Marks Act, 1958. The plaintiff being the manufacturing concern running under the name and style of M/s. Swastik Mirch Stores situated at Begum Bazar, Hyderabad, which is a registered partnership firm, claims that it is the manufacturer of leading masala spices for the last forty years and as such gained popularity and reputation in the market. The products are consisting of Masalas like mirch powder, turmeric powder, dhania powder, sambar powder, pepper powder, rasam powder, garam masala etc., which are being distributed under the trademark Swastik “ ”. According to the plaintiff, it got registered the trademark in the year 1965 bearing trademark No.232283 and being regularly renewed. Therefore, the plaintiff claims exclusive right to trade in the trademark and name and no other person has got any right. However, it is claimed that in August, 1999, the plaintiff came across masalas infringing its trademark and name by adopting the word “Swastiks” instead of “Swastik”, which is manufactured by the appellant/defendant No.2 which had opened a stall in All India Industrial Exhibition at Hyderabad for selling the infringed trademark goods. The said use by the defendant No.2 is deceptively similar trademark and trade name as that of the plaintiff in respect of the similar goods and products on commercial scale. Hence, it had suffered substantial loss and the entire action on the part of defendant No.2 is wholly illegal. Hence, the suit for injunction and for damages for a sum of Rs.25,000/- and for further direction to the defendants 1 to 3 to handover the stock. The Defendant No.1 did not contest suit and remained ex parte. Whereas the suit was withdrawn by the plaintiff as against defendant No.3. The appellant/Defendant No.2 filed a written statement denying the entire allegations and the claim as set forth by the plaintiff. It was asserted that in fact defendant No.2 is doing the business in masala spices by way of manufacture and distribution with wide range of products etc. under the trademark “swastiks” from the year 1977, which was got registered on 15-11-1977. Therefore, it is the exclusive right of the defendant No.2 to use its trade name Swastiks. Further it was pointed out that one A.C. Venkatachalapathy, the Managing Partner of defendant No.2, started business under the name and style of Swastiks Chemical Industries at Bangalore, by adopting the trademark of Swastiks to distinguish the products from similar products of other manufacturers and using the same, and therefore, the plaintiff cannot claim any exclusive right as such. The details of the products, which have been dealt by defendant No.2, have been given. Subsequently, the business run by A.C. Venkatachalapathy was converted into a partnership firm under the name and style of M/s. Swastiks Instant Food Products Limited, which was subsequently transferred to defendant No.2. No doubt, defendant No.2 had established a shop in All India Industrial Exhibition at Hyderabad and defendant No.1 is the distributor of defendant No.2 in Andhra Pradesh. There is no infringement of any such right by the defendant No.2. It is submitted that the goods manufactured by defendant No.2 are distributed in the southern States including Hyderabad. Therefore, the plaintiff is not entitled to any relief including the damages. Further the suit is a frivolous one with a view to harass the defendants and the Court had no territorial jurisdiction nor the cause of action. With these and other allegations as contained in the respective pleadings, the Court below framed the following issues: 1. Whether the 2nd defendant infringed the registered trademark of the plaintiff? 2. Whether the plaintiff is entitled for permanent injunction as prayed for? 3. To what relief? Later on, both parties went to the trial wherein on behalf of the plaintiff, PW-1 was examined and Exs.A-1 to A-24 were marked. On behalf of the defendants, DWs.1 to 5 were examined and Exs.B-1 to B- 16 were marked. The Court below, on consideration of the evidence and the material on record, while answering issues 1 and 2, held in favour of the plaintiff and decreed the suit holding that defendant No.2 infringed the registered trademark of the plaintiff and therefore, the plaintiff is entitled for perpetual injunction as sought for. Hence, this appeal. Learned counsel appearing for the appellant/defendant No.2 strenuously contended that the plaintiff has hopelessly failed to make out any case to warrant the relief in his favour. Further it is pointed that the suit was filed in the year 2000 and initially the interim application filed by it for interim injunction was dismissed and the same was confirmed in appeal. Therefore, all along there is no injunction operating against the appellant. Later on subsequent to the decree, dated 01-05-2003, which is appealed in this appeal, this Court has granted interim suspension as per the orders in C.M.P.No.13688 of 2003, dated 26-06-2003, and the same is subsisting all along. Thus, according to the appellant, there is no injunction in favour of the plaintiff. Further it was pointed out that there is absolutely no similarity between the trademark of the plaintiff with that of the appellant. It was also pointed that pending this appeal the registration of the plaintiff’s trademark was removed by orders in T.R.A.No.42 of 2003, dated 01- 03-2005 though however in revision, which is pending, there is a stay. Therefore, it is the case of the appellant that there is absolutely no similarity and the plaintiff has not made out the basic ingredients of exclusiveness. Repelling the aforesaid contentions, the learned senior counsel appearing on behalf of the respondents submitted that the plaintiff’s registration relates to way back in the year 1965 and renewed for every seven years and there is ample evidence and even on comparative look at both the marks, it would amply show that there is similarity and which is being infringed by the appellant. Therefore, the Court below was right in decreeing the suit, and thus the findings arrived at by the Court below do not warrant any variance. With these and other submissions in detail as made from both sides and after going through the respective evidence and the material on record produced including the pleadings, the ultimate point, which arises for consideration, is as to whether, on the facts and circumstances, there is any infringement as such of a trademark by the appellant/defendant No.2 and whether consequently the plaintiff would be entitled to the injunction as sought for. As per the claim set forth, the plaintiff pleads ownership of the trademark of Swastik Mirch Stores bearing trademark No.232283, which is a registered trademark for the goods envisaged under Class 30 of the IV Schedule of the Trade and Merchandise Marks Act, 1958 including masalas. Whereas Swastiks Chemical Industries was started by one A.C. Venkatachalapathy under the name and style of a proprietary firm which is one of the partnership firm of the appellant. They obtained registration of the trademark “Swastiks” under trademark No.330673 for Gulab Jamoon Mix “Arrowroot Power in class 30” as evident from Ex.A-1. It is seen from the proceedings relating to the above registered trademark No.330673 class 30 that the transfer of trademark from M/s. Swastiks Chemical Industries to M/s. Swastiks Instant Food Products, which is a partnership firm consisting of A.C. Venkatachalapathy and A.V. Sridhar as partners as per the partnership deed, dated 06-01-1992, was recognized by the competent authority. Further M/s. Swastiks Masalas, Pickles Food Products Pvt. Ltd. was shown as subsequent proprietor by virtue of the assignment deed, dated 12-12-1999. The appellant, as could be gathered from the evidence, obtained trademark for glucose under registration No.479408 as Swastiks on 06-10-1987 and also obtained registration for caster oil under trademark No.546489 as Swastiks on 04-03-1991. In 1992, they constituted a partnership firm by name M/s. Swastiks Instant Food Products and on 07-01-1992 the trademark was assigned from Swastiks Chemical Industries to M/s. Swastiks Instant Food products under a deed of assignment. On 11-09-1998, the appellant applied for trade act for edible oils and fats, pickles and other products of class 29 as per application No.818659. Similarly, on the same day, he applied for trademark of Swastiks for the spices of all kinds and other products in class 30 as per application No.818660. On the same day he also applied for trademark of Swastiks for agriculture, horticulture and forestry products as per application No.818661. According to the plaintiff, he came to know about the use of his trademark when he saw the shop in All India Industrial Exhibition at Hyderabad, in August 1999, where the goods are being sold at Stall No.571 with the mark as Swastiks and manufactured by Swastiks Instant Food Products, Bangalore. On 23-08-1999 the plaintiff issued a legal notice, which is marked as Ex.A-8, to the appellant alleging passing off of spices and infringement of their registered trademark in respect of the spices. The appellant got issued a reply on 18-10-1999, which is marked as Ex.A-9, wherein there is a reiteration that the appellant is running the business for quite number of years and there is vast coverage in different States as well as various advertisements through media, T.V., magazines and leading newspapers etc. On 10-12-1999 M/s. Swastiks Masalas Pickles and Food Products Pvt Ltd was incorporated. On 12-12-1999 the trademarks were assigned from M/s. Swastiks Instant Food Products to M/s. Swastiks Masalas Pickles and Food Products Pvt. Ltd., through an assignment deed. The present suit is filed on 14-02- 2000 and as pointed out by the learned counsel appearing for the appellant, initially the interim application filed for injunction by the plaintiff in I.A.No.194 of 2000 was dismissed by the Court below on 29- 04-2000, and the appeal filed by the plaintiff against the same was dismissed on 23-11-2001 with a direction to expedite the disposal of the main suit. During the course of trial, certain documents have been filed at late stage and the same were received. It is also not disputed during the course of arguments that the Intellectual Property Appellate Board has allowed the appeal in T.R.A.No.42of 2003 on 01-03-2005 directing the Registrar of Trademarks to remove the trademark Swastiks Mirchi Stores bearing No.232283 from the register, which is evident from Ex.B-18. Accordingly, as per Ex.B-19, dated 02-05-2005, the Assistant Registrar of Trademarks, Chennail communicated by proceedings, dated 02-05- 2005 that the registered trademark bearing No.232283 in class 30 was removed in the computer data base of the trademarks register and subsequently, on 06-05-2005, the Registrar of Trademarks, Mumbai, has issued the certified copy of the proceedings stating that the trademark No.232283 registered under class 30 has been removed as per the order of the Intellectual Property Appellate Board, dated 01-03-2005, which is evident from Ex.B-20. These three documents viz., Exs.B-18 to B-20 in regard to the subsequent proceedings, which are later to the filing of the present appeal and during the pendency of this appeal, were sought to be introduced as additional evidence by filing separate applications by the appellant in C.C.C.A.M.P.No.335 of 2005 and C.C.C.A.M.P.No.612 of 2005. Likewise, the appellant also filed C.C.C.A.M.P.No.851 of 2008 to receive the documents i.e., Original Registered Trade Mark bearing No.818660 and Registered Trade Mark No.818659 as additional evidence by marking the same as Exs.B.21 and B.22. Having regard to the direct bearing on the question involved and concerning the very same subject matter, we are of the view that those documents can be received in evidence. Accordingly, C.C.C.A.M.P.No.335 of 2005, C.C.C.A.M.P.No.612 of 2005 and C.C.C.A.M.P.No.851 of 2008 are allowed and those documents are received as additional evidence. Now coming to the evidence, which has been produced from both sides apart from the pleadings as referred to above, it is seen that the plaintiff had examined himself as PW-1 and marked Exs.A-1 to A- 24. PW-1, who is the Managing Partner of the firm, reiterates the allegations as contained in the plaint and refers to the business done in the last forty years with the aforesaid trademark of Swastik and Swastik Emblem, which are popular and the said trademark was registered in the year 1965. Hence, he claims that no other person including defendants 1 and 2 have any manner of right to use the same. Exs.A-2 to A-4 are the pouches filed by him indicating the trademark and name. Exs.A-5 to A-7 are the pouches of defendant No.2 using their trademark without getting their trademark registered. Both the pouches are similar and hence the customers are getting confusion. He states that the quality of the products of the defendant No.2 are inferior when compared to their products. Ex.A-8 is the notice issued by them and the reply received is Ex.A-9. Public were under the impression that it is their product and they are purchasing it. Public also believe that it is their expansion programme at Bangalore. He filed the labels, which are marked as Ex.A-10. In view of the same, the plaintiff filed the present suit for injunction and damages. The sales as shown by D-2 are not correct. Further the pleas taken in the written statement of D-2 are also not correct. In the cross-examination, he stated that in Ex.A-1 only four items i.e., chilli powder, turmeric powder, coriander power and masalas, are shown. He pleads no knowledge as to whether D-2 firm got published in the journal about the registration of the trademark and use of the products. All the suggestions given were denied. He states that he has not filed turnover for each and every item separately. He admits that he has not filed any list of employees nor invoices or bills in proof of their business in Maharashtra, Karnataka and Tamilnadu and other parts of the Andhra Pradesh. He denied that their business is restricted to Hyderabad and its vicinity. He admits that they have not filed the renewal certificates of registration of trademark although for every seven years it is to be renewed. Later on he was recalled and the original partnership deed was filed and it was marked as Ex.A-22 and the trademarks registry renewal was marked as Ex.A-23. In the cross-examination, there is a denial to the suggestion that there is no partnership as claimed by them. On behalf of the defendants, DWs.1 to 5 were marked. DW-1 is the General Manager of D-2. He reiterates his case as set up in the written statement and states that the plaintiff’s firm is restricted to Hyderabad and Secunderabad only, whereas their claim is quite wide. The plea of the plaintiff that the device and trademark used by D-2 is deceptively similar to that of the plaintiff’s trademark is false. Further, it is stated that D-2 has been doing manufacturing and distribution business from 1973 and the products are instant food products such as jamoon mix, rava idly, jalwa mix, masalas like sambar, rasam, garam masala, glucose powder, spices like chilly, dhania, turmeric and similar such products. It is stated that the plaintiff is aware of the business of D-2 and that their manufacturing place is at Bangalore and they are distributing the products not only to southern States but also to northern States. Even for advertisement they spent substantial amounts. They have got 300 distributors through out the country and about 400 employees are working in the entire organization. It is stated that they have registration of the trademark, patent and copyright. Ex.B-2 has been filed consisting of original invoices, challans and bills to show their business. In the cross-examination, nothing much has been extracted on behalf of the plaintiff to dispel the version of D-2. All other details have been given and they remained unrebutted. On behalf of the appellant- D2, DWs.2 to 5 have also been examined and they supported the version of DW-1 all along. The evidence of the witnesses produced on behalf of the defendants amply shows that the business of D-2 is having quite wider coverage and also includes several other items. On appraisal of the evidence from both sides, it is to be seen that except the sole testimony of the plaintiff as PW-1 on his behalf, nothing much nor any independent evidence has been produced to show the effect in any areas. Admittedly and as could be evident from the evidence of DW-1 and other material produced, which has remained unrebutted, it shows that D-2 is from Bangalore where it is a manufacturing company and also has business. Except the alleged similarity as sought to be shown in the name, no other similarities are pointed out by the plaintiff. Even the pouches as produced by the plaintiff do not disclose all other details as normally expected in respect of any of the items and giving the descriptions thereon. Whereas the pouches produced on behalf of the appellant-D2 show all the details including the M.R.P. Therefore, it is the case of the appellant that the pouches, which have been produced on behalf of the plaintiff, are only made for the purpose the suit, but not of the regular use nor general use. Except coming out with the bald assertions and pleas, nothing much has been substantiated by the plaintiff to show as to their own case and the entitlement for the reliefs. In the circumstances, it can be seen that there is no proper material on record to show that there is any such positive mark of the plaintiff, which is of exclusive in its nature to the detriment of others. It has to be seen that, in fact, heavy burden lies on the plaintiff, which totally has remained un-discharged, but not on the appellant to show his own case. Even otherwise, giving a go-bye to the burden also, the evidence and the material on record shows that there is more evidence on behalf of the appellant rather than that of the plaintiff. Further, in view of the subsequent proceedings of the Intellectual Property Appellate Board also, nothing lies in the mouth of the plaintiff to claim exclusiveness of any such right existing in its favour. We have perused the entire judgment of the Court below and the reasons given in respect of its findings. However, except picking out few sentences, there is no proper appreciation of the entire evidence in its core to see as to whether the plaintiff has established his case rather than sift the evidence by shifting the burden on the defendant. In the circumstances, the Court below was not right in appreciating the evidence in proper perspective and on proper angle. Therefore, we are of the view that the plaintiff has in fact, on re-appreciation of the material, totally failed to establish his case and to discharge the burden as normally expected in view of the questions involved. Further, in contra, it is the defendant who has established their claim beyond any shadow and it had been unrebutted. It is also to be taken notice that nothing material has been produced even in rebuttal by the plaintiff subsequent to the evidence and the material produced by the defendant. In view of the same, the Appeal is allowed. The judgment and decree of the Court below, dated 01-05-2003 are set aside and the suit as has been filed and framed by the respondent-plaintiff in O.S.No.73 of 2000 is dismissed with costs. _________________ B. PRAKASH RAO, J _________________ P. DURGA PRASAD, J Date: -04-2011 YCR+GRK