IN THE HIGHCOURT OF JUDICATURE AT MADRAS CORAM THE HON'BLE MS.JUSTICE R.MALA A.No.2853 of 2008 and O.A.No.1095 of 2007 in C.S.No.845 of 2007 ORDER : For the purpose of convenience, the parties are referred to as they are ranked in the suit. 2. The plaintiff filed the suit in C.S.No.845 of 2007 for the following reliefs: (a) for permanent injunction restraining the defendant, by himself, his servants or agents or any one claiming through him, from in any manner infringing the plaintiff's registered trade mark "S.BEEDI/S.MARK JADI BEEDIES" together with the letter "S" written in an artistic manner by using the offending trade mark "SRI RAGHAVENDRA SWAMY BEEDIES/R.S.BEEDIES" together with the letter "S" written in an identical artistic manner together with identical colour scheme and get up or any other mark or marks which are in any way identical to the plaintiff's registered trade mark "S.BEEDI/S.MARK JADI BEEDIES" together with the letter "S" written in an artistic manner. (b) for permanent injunction restraining the defendant, by himself, his servants or agents or any one claiming through him, from in any manner infringing the plaintiff's registered copyright over the artistic work "S.BEEDI/S.MARK JADI BEEDIES" together with the letter "S" written in an artistic manner by using the offending artistic work "SRI RAGHAVENDRA SWAMY BEEDIES/R.S.BEEDIES" together with the letter "S" written in an identical artistic work or any other work or works which are in any way identical to the plaintiff's copyrighted artistic work "S.BEEDI/S.MARK JADI BEEDIES" together with the letter "S" written in an artistic manner. (c) for permanent injunction restraining the defendant, by himself, his servants or agents or any one claiming through him from in any manner passing off his "beedies" bearing the offending trade mark and artistic work "SRI RAGHAVENDRA SWAMY BEEDIES/R.S.BEEDIES" together with letter "S" written in an identical artistic manner as and for the celebrated "Beedies" of the plaintiff's, sold under the registered trade mark and copyrighted artistic work "S.BEEDI/S.MARK JADI BEEDIES" together with letter "S" written in an artistic manner either by selling or offering for sale or in any manner advertising the same. (d) to direct the defendant to render a true and faithful account of the profits earned by them through the sale of their "Beedies" bearing the offending artistic work and the trade mark "SRI RAGHAVENDRA SWAMY BEEDIES/R.S.BEEDIES" together with the letter "S" written in identical artistic manner and direct payment of such profits to the plaintiff for passing off committed by the defendant. (e) to direct the defendant to surrender to the plaintiff the entire stock of unused jewel boxes, bill books, labels etc. bearing the offending artistic work and the trade mark labels together with the blocks and dyes for destruction. (f) to direct the defendant to pay to the plaintiff the costs of the suit. 3. Pending disposal of the suit, the plaintiff filed Original Application No.1095 of 2007 in C.S.No.845 of 2007, seeking for ad-interim injunction restraining the defendant, by himself, his servants or agents or any one claiming through him from in any manner passing off his "Beedies" bearing the offending trade mark and artistic work "SRI RAGHAVENDRA SWAMY BEEDIES/R.S.BEEDIES" together with the letter "S" written in an identical artistic manner as and for the celebrated "Beedies" of the plaintiff, sold under the registered trade mark and copyrighted artistic work "S.BEEDI/S.MARK JADI BEEDIES" together with the letter "S" written in an artistic manner, either by selling or offering for sale or in any manner advertising the same. 4. This Court, after considering the arguments of the counsel for the plaintiff, on 24.9.2007, while ordering notice, granted an order of interim injunction, which was subsequently extended until further orders. 5. The defendant has come forward with Application No.2853 of 2008 in C.S.No.845 of 2007, for vacating the interim order of injunction. The averments in the said vacate-injunction application, are as follows: (a) The defendant is manufacturing and selling Beedies, trading under the name and style of "K.Rajender & Sons" from 2000-2001. He adopted a trademark label consisting of "SRI RAGHAVENDRA SWAMY BEEDIES" at its top and in the centre of an artistic work with interwoven alphabets "RS" depicted, which again are placed in a diamond shaped design with the expression "R.S.JADI BEEDI" in various languages on four sides of the diamond design and at the bottom of the label, his trading style "K.Rajender & Sons, Shiva Nagar, Warangal-2 (A.P)" is depicted and all the described matters are surrounded by a border consisting of "RS", all of them are again printed on repeated expressions of "R.S.BEEDIES" as its background. It is further stated by the defendant that his Beedies packed in the label as described above, are demanded, distributed, sold or supplied as "SRI RAGHAVENDRA SWAMY BEEDIES" and also as "R.S.BEEDIES" in the State of Andhra Pradesh. It is further stated that before introducing the mark into the markets, the defendant obtained necessary approval of the label from the Central Excise Department, vide Registration No.AHKPK1153HXMOO1. The defendant also obtained registration of his trade mark in No.1072315 in Class 34, in respect of the Beedies, under the Trade Marks Act, 1999 and the registration is subsisting. (b) It is further stated by the defendant that the plaintiff has come forward with the suit and obtained an ex-parte interim order of injunction, by suppressing the material facts. Hence, the defendant has come forward with the vacate-injunction application. (c) The defendant further stated that the labels of both the plaintiff and the defendant, are visually, phonetically and structurally different and distinct and one can never be mistaken for the other. Even assuming without admitting that the labels are visually similar, the Apex Court held that the ocular test is not always the decisive factor and it is only the phonetic expression that is important in deciding similarity between the competing marks. Applying the said principle, it cannot be said that "R.S.BEEDIES" or "SRI RAGHAVENDRA SWAMY BEEDIES" of the defendant, are identical, similar or deceptively similar to the trade mark "S.BEEDIES" or "S.MARK JADI BEEDIES" of the plaintiff. (d) The defendant further states that this Court has no territorial jurisdiction and the Beedies of the defendant are sold only in the State of Andhra Pradesh, particularly, in the Districts of Khammam, Krishna and Guntur. The suit has been under-valued and the Court fee paid was insufficient in respect of the prayer relating to passing off action. This Court has even no pecuniary jurisdiction. (e) The defendant further states that since a large number of Beedi manufacturers have been using "S" in different artistic works and get up, the letter "S" has become "publici juris" and the plaintiff is not entitled to claim exclusive right over the letter "S". The defendant further states that it is settled law that when a number of persons are using a particular trade mark or a part of trade mark and when that has become "publici juris", the consumers are expected to distinguish one from the other. (f) The defendant further contends that he is the registered proprietor of the label consisting of "SRI RAGHAVENDRA SWAMY BEEDIES" and also "R.S.BEEDIES" and so, he is entitled to claim exclusive right to use the trade mark as long as the registration subsists. The defendant further states that he has been manufacturing and marketing the Beedies under the trade mark "SRI RAGHAVENDRA SWAMY BEEDIES"/"R.S.BEEDIES" from 2000-2001 continuously without interference or interruption from any quarter whatsoever, including the plaintiff, though the goods bearing the trade mark are sold side by side. (g) The defendant further alleges that there is inordinate delay in filing the suit, since the goods bearing the competing marks are being sold side by side from 2000-2001. The plaintiff failed to explain the reason for the delay. The plaintiff kept quiet for more than half a decade from 2000-2001 to 2007, without taking any action, and if really the grievance of the plaintiff is that the marks are identical, it amounts to acquiescence of use of any mark and waiver of the right of the plaintiff, if any, in respect of the said trade mark. The defendant prayed for vacating the interim order of injunction granted in O.A.No.1095 of 2007. 6. The gist and essence of the counter affidavit filed by the plaintiff in the vacate-injunction application, are as follows: (a) The registration or otherwise of the mark of the defendant may not have any relevance in an application for passing off, when the plaintiff has produced enough materials for prima-facie proof that he is the prior user of his trade mark, which has been copied by the defendant. The plaintiff has also taken steps before appropriate authorities for rectification of the trade mark which has been registered in favour of the defendant. (b) It is further stated by the plaintiff that the trade mark "R.S.Beedies" used by the defendant, is deceptively similar in all respects to that of the plaintiff. The plaintiff denied the claim of the defendant that the letter "S" which has been adopted by the plaintiff in an artistic manner and get up, has become "publici juris". In Trade Marks Journal No.1335, dated 1.10.2005, the defendant's trade mark was advertised inviting oppositions to the trade mark by the interested parties, if any, and it was made available to the public only on 14.2.2006. However, the abovesaid publication escaped the attention of the plaintiff and hence, the opposition could not be filed by the plaintiff in time, because of which, the defendant's mark had been registered. (c) It is further averred by the plaintiff that in September 2007, when the plaintiff noticed the sale of the defendant's Beedies with a mark deceptively similar as that of the plaintiff, he took immediate steps and applied for rectification of the mark registered in favour of the defendant and immediately, the plaintiff filed the present suit. Hence, there is no inaction on the part of the plaintiff and as such, there is no acquiescence by the plaintiff. (d) If interim order of injunction is vacated and if the defendant is allowed to trade under the impugned trade mark, the plaintiff would be seriously prejudiced, besides losing the good will and reputation built up by the plaintiff for more than seven decades. The plaintiff prayed for dismissal of the vacate-injunction application. 7. Learned counsel for the plaintiff would contend that the plaintiff is manufacturing Beedies in the name and style of "S.MARK JADI BEEDIES/S BEEDIES" and he is having a registered trade mark; that the defendant is manufacturing the Beedies in the name and style of "SRI RAGHAVENDRA SWAMY BEEDIES/R.S.BEEDIES" and the defendant also used the artistic letter "S" deceptively similar to that of the plaintiff's registered trade mark and hence, the plaintiff was constrained to file the suit, and along with the suit, the plaintiff filed application for interim injunction and also obtained the interim injunction in respect of passing off his trade mark. As against the same, the defendant came forward with the application for vacating the interim order of injunction. Learned counsel for the plaintiff prayed for confirming the order of interim injunction. 8. Learned counsel for the defendant would contend that the defendant is manufacturing the trade mark "SRI RAGHAVENDRA SWAMY BEEDIES" from 2005 and he has registered his trade mark with the Central Excise Department and the trade mark "SRI RAGHAVENDERA SWAMY BEEDI" and "R.S.JADI BEEDI" is found at page No.1 of the typed set of papers, dated 14.11.2009, filed by the defendant, from which, it is also evident that the defendant registered the trade mark; in page 2 of the same typed set of papers, the Trade Marks Registry of the Government of India, has given a Certificate of Registration of Trade Mark, in which also, the trade mark "SRI RAGHAVENDERA SWAMY BEEDIES" is found, and the trade mark was registered in Class 34 under No.1072315 as of the date 8.1.2002. Learned counsel for the defendant further contended that the defendant is manufacturing the Beedies and conducting business only in three Districts in the State of Andhra Pradesh, namely Khammam, Krishna and Guntur, and not in other places. The learned counsel for the defendant further contended that the plaintiff is manufacturing "S" Beedies only at Gudiyatham. In the same typed set of papers, dated 14.11.2009, the defendant has filed a copy of the order dated 31.10.2008 in ORA/178/2007/TM/CH, passed by the Intellectual Property Appellate Board (for short, "IPAB"), Chennai, as per which, a petition was filed by the plaintiff for removal of the trade mark No.1072315 in Class 34 from the Register of Trade Marks or rectification of the Register under Sections 47/57/125 of the Trade Marks Act, 1999 and the said petition was dismissed by the IPAB as per the said order dated 31.10.2008. In the same typed set of papers, dated 14.11.2009, the defendant also filed copies of his invoices from 31.5.2001 to 9.1.2007, which shows that the defendant is doing business even from 2001. But the plaintiff has come forward with suit only in 2007, very belatedly. Learned counsel for the defendant prayed for vacating the order of interim injunction. 9. It is worthwhile to refer Section 2(1)(zb) of the Trade Marks Act, 1999, which defines the "trade mark", as follows: "Section 2(1)(zb): "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and-- (i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark." 10. Learned counsel for the plaintiff argued that since the plaintiff has obtained interim order of injunction in respect of passing off the trade mark, the defendant has been now abstained from doing his business and if the interim order of injunction is vacated, the plaintiff would be put to irreparable loss and therefore, learned counsel for the plaintiff prayed for allowing the application for interim injunction or for confirming the interim order of injunction already granted. 11. Learned counsel for the defendant demonstrated before Court stating that the defendant's trade mark label consists of only "RS" (SRI RAGHAVENDERA SWAMY BEEDIES/R.S.JADI BEEDIES/R.S.BEEDIES) and not "S", but the plaintiff's trade mark is "S" (S.MARK JADI BEEDIES/S.BEEDIES) and hence, both the trade marks are entirely different and distinct and are not similar or identical and hence, the learned counsel for the defendant prayed for vacating the order of interim injunction. 12. Per contra, learned counsel for the plaintiff contended that the plaintiff is doing manufacturing business even before 1947 and sold the products even throughout India and he is also exporting the same to foreign countries. 13. Learned counsel for the defendant relied on the order dated 31.10.2008 passed by the IPAB, referred to above, in which, in paragraph 21, it was observed as follows: "21. A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be acquired, but in all cases it is necessary that the person putting forward the application should be in possession of some proprietary right, which, if questioned can be substantiated. In the instant case, the respondent obtained the registration of the trade mark and it is therefore, for him to establish his proprietary right. It is evident from the records that the respondent has not made a whisper about how he adopted the trade mark and in view of the provisions of section 31 of the Act, the rebuttal of the statutory presumption is to be made by the applicant. We cannot assume that the respondent has dishonestly adopted the trademark. We cannot uphold the applicant's plea that the respondent was fully aware at the time of making application for registration. There is nothing on record to show that the applicant has made advertisements to popularize its mark to assume that the respondent might have come to know the existence/use of the mark of the applicant. The applicant has not attempted to prove that the respondent was aware of its mark and he has malafidely and dishonestly copied its trade mark." Relying on the said order passed by the IPAB, the learned counsel for the defendant prayed for vacating the interim order of injunction. 14. Learned counsel for the defendant also relied on the provisions of Sections 27 and 28 of the Trade Marks Act, 1999 and prayed for dismissal of the injunction application. Sections 27, 28 and 31 of the Trade Marks Act, 1999, which are relevant for the purpose of this case, are extracted hereunder: "Chapter IV: Effect of registration: Section 27: No action for infringement of unregistered trade mark.--(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof." "Section 28: Rights conferred by registration.--(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. (2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor." "Section 31: Registration to be prima facie evidence of validity.--(1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof. (2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration." 15. While considering the arguments of the learned counsel on both sides, admittedly, the defendant got his trade mark registered only on 8.1.2002 in Registration No.1072315 in the Trade Mark Journal No.1,335 and his trade mark label has been mentioned as "SRI RAGHAVENDERA SWAMY BEEDIES" in the name of K.Rajender Trading as "K.Rajender & Sons", 16-10-751, Shiva Nagar, Warangal-506 002, Manufacturers and Merchants" and inside the trade mark symbol, there are multi-lingual wordings including Tamil, called as @Mh;/v!;/khh;f; $ho gPo@/ These are evident from the copy of the Certificate of Registration of Trade Mark, issued by the Government of India, Trade Marks Registry, which is filed in page 2 of the typed set of papers, dated 14.11.2009, filed by the defendant. The defendant also obtained the Registration Certificate issued by the Central Excise Department in which the Registration Number is indicated as "AHKPK1153HXM001" certifying/registering the trade mark of the defendant as "M/s.RAGHAVENDRA SWAMY BEEDI & R.S.JADI BEEDI", indicating as "A Proprietorship Firm" registered for manufacturing of excisable goods at 16-10-751, Shiva Nagar, Warangal, H.O. Warangal, Andhra Pradesh-506 002, and the certificate came into effect from 2003, i.e. issued on 25.2.2003 at Warangal. This is also evident from page 1 of the Central Excise Registration Certificate, filed by the defendant in the said typed of papers. The invoices of the defendant's firm are filed in the same typed set of papers, dated 14.11.2009, filed by the defendant, which indicates that the defendant has been doing business even from 2001 onwards. 16. The defendant, in the very same typed set of papers, dated 14.11.2009, has also filed the order copy of the IPAB, dated 31.10.2008, as referred to above, in which, in paragraph 19, the IPAB observed as follows, in the application filed by the plaintiff for rectification of the Register of the Trade Marks, which was rejected by the IPAB: "19. ... ... The applicant has, except copies of trade marks certificates/certified copies for legal use, has not filed a shred of documents to prove or show its use of the mark in the course of trade. Mere existence of mark on the register cannot be proof of use of the mark. Though the applicant has given handsome sales figures in the application but not an iota of invoice has been filed. The sales statement is not certified by the Chartered Accountant. In the absence of any invoice/document, we are unable to come to a conclusion that the applicant is using the trade mark or that the applicant is in the trade of beedies and the respondent's goods under his trade mark is causing confusion or deception. Without cogent documentary evidence on record, we are not inclined pass any adverse order against the respondent. The applicant has failed to prove its ground of objection under section 11 of the Act." 17. At this juncture, it is appropriate to consider the documents filed by the plaintiff, in his typed set of papers, dated 19.9.2007, filed by the plaintiff along with the suit; in page 4 therein, a copy of the contents of the Trade Marks Journal had been enclosed, from which it is evident that the plaintiff has been doing business from 27.5.1947 and the renewal/registration of the trade mark was done periodically, and one such registration was on 25.10.1985, in Class 34, under No.444677, which is evident from page 1 of the typed set of papers, dated 19.9.2007 and subsequently it was renewed on 16.10.2006, which is evident from page 2 of the typed set of papers filed by the plaintiff, dated 19.9.2007; from page 3 therein, it is also evident that the trade mark was certified on 18.1.1994; and subsequently, the trade mark was renewed from 27.5.2004, which is evident from page 7 of the typed set of papers and also certified on 24.9.2001, which is evident from page 8 of the same typed set of papers. All these show that the trade mark of the plaintiff has been registered/renewed/certified periodically. 18.