1 IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED : 14.12.2015 CORAM: THE HONOURABLE MR.JUSTICE M.SATHYANARAYANAN Civil Suit No.996 of 2007 1.Wipro Enterprises Limited SP-26, Tiru Vi Ka Industrial Estate, Guindy - Chennai - 600 032. Represented by its Legal Manager, MR.Vishal Mittal (Amended as per order dt. 11.08.2014 in Appl.No.3760/2014) 2.Wipro CHANDRIKA Limited Doddakannelli Sarjapur Road, Bangalore - 560 035. Represented by its Authorised Signatory Mr.Vishal Mittal. .. Plaintiffs V. 1.Oushadha CHANDRIKA India (P) Limited, represented by its Managing Director K.S.Kochumon Azad Road, Irinjalakuda, Kerala. 2.Oushadha CHANDRIKA Research Centre Azad Road, Irinjalakuda, Kerala. 3.Narayana Stores, Jaihind Market Building, 'C' Block, Room No.- 19 Market Road, Thrissur - 680 001. .. Defendants Prayer : Suit filed under Order IV, Rule 1 of the Original Side Rules and Order VII, Rule 1 of the C.P.C. read with Sections 54, 55 & 62 of the Copy Right Act praying for Judgment and Decree for: (a) granting a permanent injunction, restraining the Defendants, by themselves, their servants, agents distributors, or anyone claiming through them from reproducing by selling, advertising and or offering for sale by using the impugned Copyright CHANDRIKA as shown in Document No.2 upon the goods or in any media and use the same in invoices, letter heads and visiting cards or by using any other 2 Copyright which is in any way visually, phonetically or deceptively similar to the Plaintiffs Registered Copyright CHANDRIKA the picture mark as shown in Document No.1 or in any manner infringing the Plaintiffs Copyright as shown in Document No.1. (b) granting a permanent injunction, restraining the Defendants by themselves, their servants, agents, men or anyone claiming through them from manufacturing, marketing, distributing, offering or advertising for sale soaps or any toilet preparation of all kinds using the Mark OUSHADHA CHANDRIKA or CHANDRIKA or its color scheme and get up as shown in Document No.2 in the course of their business and pass of their soaps of all kinds using the Plaintiffs Trade Mark CHANDRIKA or its color scheme and get up of the cartons of the Plaintiff goods as shown in Document No.1 or enable others to pass off by using deceptive marks and names. (c)Directing the Defendants to surrender to the Plaintiffs all the soaps, packing materials, cartons, advertisement materials and hoardings, letter-heads, visiting cards, office stationery and all other materials containing/bearing the Trade Mark CHANDRIKA or OUSHADHA CHANDRIKA and other deceptively similar Trade Marks in respect of soaps. (d) For a preliminary decree in favour of the Plaintiffs, directing the Defendants to render an account of profits made by them by the use of the Trade Mark CHANDRIKA or OUSHADHA CHANDRIKA on the goods referred and for a final decree in favour of the Plaintiff for the amount of the profits found to have been made by the Defendants, after the Defendants have rendered accounts: (e)directing the Defendants to pay to the Plaintiffs the costs to the suit. For Plaintiffs .. Ms.C.Gladys Daniel For Defendants .. Set Ex parte JUDGMENT Since the copyright of the plaintiffs came to be infringed due to the acts of the defendants 1 and 2, the plaintiffs came forward to file the present suit. 2.The Plaintiffs would aver, among other things, that the first plaintiff is a reputed Fast Moving Consumer Goods Company and has been carrying on the business of manufacture and sale of a wide range of retail consumer products 3 including talc, toilet soaps, hair care soaps, baby care products, face wash, fairness cream and lighting products and the first plaintiff is continuously using the trademark CHANDRIKA in respect of its skin care products such as soaps. 3.It is further averred by the plaintiffs that in the year 1939, the trademark CHANDRIKA was conceived by Shri.C.R.Kesavan Vaidyar, who was trading as M/s.S.V. Products and later received registration of the trademark 'CHANDRIKA' under Registration No.177588 in Class 3 in respect of medicated and toilet soaps in the year 1956 and in the year 1965, he gave concurrent rights to Shri.C.K.Manilal trading as M/s.Lal Products and Mr.C.K.Revi trading as M/s.CHANDRIKA Products and both his immediate family members also using the trademark 'CHANDRIKA' for soaps in different geographical locations. There are several other trademark applications which have been made by the members of the CHANDRIKA Family for the trademark CHANDRIKA in respect of goods falling under Classes 3 and 5. It is further averred in the plaint that in the year 2004, the second plaintiff acquired the trademark and copyright CHANDRIKA along with its goodwill, rights and interests vide separate assignment deeds from M/s.S.V. Products, M/s.Lal Products and M/s.Chandrika Products and by virtue of the same, the second plaintiff is the exclusive owner of the registered trademark and copyright CHANDRIKA in India. The second plaintiff, by a Licensed User Agreement dated 10.06.2004, has granted an exclusive license to the first plaintiff, to use the registered Trade Mark and Copyright CHANDRIKA in respect of its products CHANDRIKA Ayurvedic Soaps & CHANDRIKA Soaps in India and other SAARC Countries, the details of which have been given in paragraph 11 of the plaint. 4 The plaintiffs had spent crores and crores every year in promoting the said copyright by way of expenditure on advertisements and the products have been well received by the trade and public and earned tremendous amount of good will and reputation. The details of the turnover and the promotional expenditure are given in paragraphs 14 and 15 of the plaint. 4.It is the specific case of the plaintiffs that in and around August 2007, to their shock and surprise, it was discovered that the defendants were manufacturing and selling soaps under the name/mark CHANDRIKA with the prefix OUSHADHA and the defendants have not only adopted the word CHANDRIKA, but also used the style of writing of the plaintiffs in so far as the manner in which the trademark is displayed on the carton and they have also registered the company in the name and style of OUSHADHA CHANDRIKA India (P) Limited and the plaintiffs are taking steps to initiate proceedings under Section 22 of the Companies Act before the Regional Director of Companies. 5.The grievance of the plaintiffs is that the defendants had substantially reproduced the colour scheme and get up in their carton as used by the plaintiffs with respect to trademark and copyright CHANDRIKA with minor variations and a meticulous examination of the two cartons side by side may reveal minor alterations in the shades and number of colors used and a cursory glance would mislead even the most vigilant purchasers. The plaintiffs, in this regard, had also made a thorough investigation and found that the second defendant is the manufacturer of the sub 5 standard soaps with the impugned copyright and the third defendant is engaged in distributing and selling the soaps. Thus the defendants had committed acts of infringement and are continuing to infringe the copyright of the plaintiffs with a view to practice deception on the public and to encash the tremendous reputation and goodwill earned by the plaintiffs in respect of their 'CHANDRIKA' branded soaps and the adoption of the impugned copyright by the defendants is tainted and dishonest. The deliberate act of misrepresentation on the part of the defendants 1 and 2, is bound to cause confusion and/or deception in the minds of the purchasing public and such acts on the part of the defendants that the use of the impugned copyright to cause members of trade and public to assume that there is some connection in the course of trade between the plaintiffs and the defendants and deceive them into believing that the goods that are being manufactured and marketed by the defendants are that of the plaintiffs and hence filed the suit. 6.Though the defendants have been served, they did not choose to enter appearance and hence, they were called absent and set ex parte. The matter was sent to the learned Additional Master II for recording evidence. On behalf of the plaintiffs, the Senior Accounts Executive was examined as P.W.1 and Exhibits P.1 to P.12 were marked. The following issues were framed for adjudication. 1.Whether the registered copy right CHANDRIKA has been infringed due to the acts of the defendants 1 and 2?; and 2.What other reliefs, the plaintiffs are entitled to? 6 Issue No.1: 7.Heard the submissions of the learned counsel for the plaintiffs and has gone through the contents of the plaint, proof affidavit of P.W.1 as well as Exhibits P.1 to P.12. It is the submission of the learned counsel for the plaintiffs that the registered trademark, viz., CHANDRIKA is sought to be infringed and hence, the plaintiffs are entitled to file the suit under Section 52 of the Copyright Act and further the defendants are also circulating the goods using the impugned trade mark in the City of Chennai. Therefore, adopting the said model, the defendants had violated the intellectual property rights of the plaintiffs and hence prayed for a decree on the suit. 8.This Court has considered the submissions of the learned counsel for the plaintiffs and also perused the pleadings, oral as well as the documentary evidence available on record. 9.A perusal of the Ex.P.2 would show that the Deed of Assignment came into existence on 9th June 2004 between S. V. Products, Lal Products and Chandrika Products and the 2nd Plaintiff. Ex.P.3 is the Legal use certificate in respect of the Trademark Nos.210560, 210561, 359925 and 304121. Ex.P.4 is the License User Agreement dated 10.06.2004 entered into the plaintiffs 1 and 2. Ex.P.5 is the Memorandum and Articles of Association of the plaintiffs. Exs.P.6 & P.7 are the TM-24 and TM-23 in respect of the above said trademarks. Exs.P.8 & P.9 are the advertisements in the trademarks journal at th instance of the plaintiffs. Ex.P.10 is the bill of the defendants dated 04.07.2007. ExP.11 is the cartons used by the plaintiffs. Ex.P.12 is the cartons used by the defendants. 7 10.The defendants, without any valid trademark and with dishonest intention, has infringed the plaintiffs' copyright and the marks/logo/packaging as adopted by the defendants are blatant and specious imitations of the Copyright of the plaintiffs and the defendants 1 and 2 have illegally and wrongfully used the Copyright of the plaintiffs and the plaintiffs are entitled to the Decree as prayed for. 11.In the light of the same, Issue No.1 is answered in affirmative and in favour of the plaintiffs. Issue No.2: The plaintiffs are entitled to the Decree as prayed for. 12.In the result, (i) There shall be a Judgment and Decree in favour of the Plaintiffs granting permanent injunction, restraining the Defendants, by themselves, their servants, agents distributors, or anyone claiming through them from reproducing by selling, advertising and or offering for sale by using the impugned Copyright CHANDRIKA as shown in Document No.2 upon the goods or in any media and use the same in invoices, letter heads and visiting cards or by using any other Copyright which is in any way visually, phonetically or deceptively similar to the Plaintiffs Registered Copyright CHANDRIKA the picture mark as shown in Document No.1 or in any manner infringing the Plaintiffs Copyright as shown in Document No.1; 8 (ii)There shall be a Judgment and Decree in favour of the Plaintiffs granting granting a permanent injunction, restraining the Defendants by themselves, their servants, agents, men or anyone claiming through them from manufacturing, marketing, distributing, offering or advertising for sale soaps or any toilet preparation of all kinds using the Mark OUSHADHA CHANDRIKA or CHANDRIKA or its color scheme and get up as shown in Document No.2 in the course of their business and pass of their soaps of all kinds using the Plaintiffs Trade Mark CHANDRIKA or its color scheme and get up of the cartons of the Plaintiff goods as shown in Document No.1 or enable others to pass off by using deceptive marks and names; (iii)Defendants are directed to surrender to the Plaintiffs all the soaps, packing materials, cartons, advertisement materials and hoardings, letter-heads, visiting cards, office stationery and all other materials containing/bearing the Trade Mark CHANDRIKA or OUSHADHA CHANDRIKA and other deceptively similar Trade Marks in respect of soaps; (iv) A preliminary decree is granted in favour of the Plaintiffs, directing the Defendants to render an account of profits made by them by the use of the Trade Mark CHANDRIKA or OUSHADHA CHANDRIKA on the goods referred and for a final decree in favour of the Plaintiff for the amount of the profits found to have been made by the Defendants, after the Defendants have rendered accounts; and also directing the Defendants to pay the costs to the suit. 14.12.2015 Index : Yes/No Internet : Yes/No Sgl 9 Plaintiffs' side Exhibits:- 1. Ex.P.1 - 20.11.2015 - Authorization Letter 2 Ex.P.2 - 09.06.2004 - The Deed of Assignment dated 09.06.2004 between S.V. Products, Lal Products and Chandrika Products and the 2nd Plaintiff 3 Ex.P.3 - 10.08.2007 - Legal use certificate in respect of Trade Mark registration Nos.210560, 210561, 359925, 304121 4 Ex.P.4 - 10.06.2004 - License User Agreement dated 10.06.2004 between the 2nd plaintiff and the 1st plaintiff 5 Ex.P.5 - 08.03.1982 - Memorandum and Articles of Association of Wipro Chandrika Limited 6 Ex.P.6 - 18.03.2004 - The TM-24 filed in respect of Trademarks A.Nos.210560, 210561, 359925, and 304121 and 4 others 7 Ex.P.7 - 30.06.2004 - The TM-23 in respect of Trademark A.Nos. 210560, 210561, 359925, 304121 and four others 8 Ex.P.8 - 16.06.1990 - The Trademark Journal advertisements in 01.02.1991 respect of Trade Mark A.Nos.395616, 01.09.1998 503956, 454994 9 Ex.P.9 - 2007 - The advertisement of the product CHANDRIKA at instance of the Plaintiffs 10 Ex.P.10 - 04.07.2007 - The bill of the product Oushadha Chandrika of the defendant issued by Narayana Stores on 04.07.2007 11 Ex.P.11 - - The carton of the plaintiff 12 Ex.P.12 - - The carton of the defendant Plaintiffs' side witness:- P.W.1 - Mr.S.Raghavan Defendants' side Exhibits:- Nil Defendants' side witness:- Nil 10 M.SATHYANARAYANAN, J. sgl To 1.Oushadha CHANDRIKA India (P) Limited, represented by its Managing Director K.S.Kochumon Azad Road, Irinjalakuda, Kerala. 2.Oushadha CHANDRIKA Research Centre Azad Road, Irinjalakuda, Kerala. 3.Narayana Stores, Jaihind Market Building, 'C' Block, Room No.- 19 Market Road, Thrissur - 680 001. Civil Suit No.996 of 2007 14.12.2015