1 IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED : 14.12.2015 CORAM: THE HONOURABLE MR.JUSTICE M.SATHYANARAYANAN Civil Suit No.874 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.3759/2014) 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 27(2), 29, 134 and 135 of the Trade Marks Act, 1999 praying for Judgment and Decree for: (a) granting a permanent injunction, restraining the Defendants, by itself, its servants, agents distributors, or anyone claiming through them from manufacturing, selling, advertising and offering for sale using the registered Trade https://hcservices.ecourts.gov.in/hcservices/ 2 Mark CHANDRIKA or OUSHADHA CHANDRIKA upon soaps or any goods or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark with prefix or suffix with the expression CHANDRIKA or any other similar sounding expression which is in any way visually, phonetically or deceptively similar to the Plaintiffs Registered Trade Mark CHANDRIKA or in any manner infringing the Plaintiffs Registered Trademark Nos: 304121, 210561, 210560, 395616, 503956, 503957, 359925 and 454994 for soaps. (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. (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 https://hcservices.ecourts.gov.in/hcservices/ 3 to the suit. For Plaintiffs .. Ms.C.Gladys Daniel For Defendants .. Set Ex parte JUDGMENT 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 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. 2.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 https://hcservices.ecourts.gov.in/hcservices/ 4 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 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 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 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. The plaintiffs had spent crores and crores every year in promoting the said trademark by way of expenditure on advertisements and the products have been well received by the trade and public and tremendous amount of good will and earned a reputation. The details of the turnover and the promotional expenditure are given in paragraphs 14 and 15 of the plaint. 3.It is the specific case of the plaintiffs that in and around August 2007, to the shock and surprise, it was discovered that the defendants were manufacturing and selling soaps under the name/mark CHANDRIKA with the prefix OUSHADHA https://hcservices.ecourts.gov.in/hcservices/ 5 and the defendants have not only adopted the mark word CHANDRIKA, but also used the style of writing of the plaintiffs in so far as the manner in which the trademark/logo 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. 4.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 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 standard soaps with the impugned mark 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 registered trademarks 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 https://hcservices.ecourts.gov.in/hcservices/ 6 'CHANDRIKA' branded soaps and the adoption of the impugned mark 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 marks 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. 5.Though the defendants have been served, they did not choose to enter appearance, hence, they are called absent and set ex parte. The matter was sent to 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 trademark of the first plaintiff has been infringed by the acts of the defendants 1 and 2? 2.Whether the adoption of trademark, color scheme and get up by defendants 1 and 2, is innocent or deliberate? 3.Whether manufacturing and selling of soaps by https://hcservices.ecourts.gov.in/hcservices/ 7 defendants 1 and 2 in cartons are identical with similar to that of the plaintiffs mark and style? 4.Whether the plaintiffs are entitled to decree for permanent injunction as prayed for? 5.Whether the plaintiffs are entitled to preliminary decree as prayed for? Issue No.1: 6.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 on behalf of the plaintiffs that through oral and documentary evidence, the plaintiffs had sustained their case beyond any probabilities that the defendants 1 and 2 have fraudulently and dishonestly, made almost exact imitation. The cartons are identical and undistinguishable and thereby infringed the trademark of the plaintiffs and hence prays for decree in this matter. 7.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. 8.It is not at all in dispute that the second plaintiff https://hcservices.ecourts.gov.in/hcservices/ 8 acquired the trademark CHANDRIKA along with its goodwill, rights, interests and property etc. under the assignment deeds as Ex.P.2 (series) and copies of legal use certificates, marked as Ex.P.3 (series) and it substantiate the case of the first plaintiff by virtue of the fact that the first plaintiff holds 90% of the shares. The second plaintiff, by a Licensed User Agreement Ex.P.4 dated 10.06.2004, had granted an exclusive license to the first plaintiff to use the registered trademark Chandrika in respect of the products CHANDRIKA Ayurvedic soaps & CHANDRIKA soaps in India. The applicants filed the TM 23 and 24 before the Registrar of Trade marks and the orders were also passed and marked as Exs.P.6 and P.7 (series) and the plaintiffs on account of goodwill and reputation, developed a good business and turnover and also spent considerable amounts towards promotional expenditure and the same are evidenced by exhibits. 9.A perusal of the cartons used by the plaintiffs, marked as Ex.P.11 as well as the cartons used by the defendants, marked as Ex.P.12, disclose that they infringed the plaintiffs registered trade style and they also infringed the trademark. The defendants, without any valid reasons whatsoever, have adopted the registered trademark, use of trademark and color scheme which are identical to the plaintiffs. Therefore, in the light of the overwhelming documentary evidence, this Court answers the issue No.1 in favour of the plaintiffs. https://hcservices.ecourts.gov.in/hcservices/ 9 Issue No.2: 10.In the light of the findings given in Issue No.1, it cannot be said that the infringement on the part of the defendants by adopting the trademark, the get up used by the defendants said to be done innocently and Issue No.2 is answered in favour of the plaintiffs. Issue No.3: 11.A comparison of Exs.P.11 and P.12 (series) probablises the case of the plaintiffs that the plaintiffs had registered their trademark and that the defendants 1 and 2 infringed that trademark and the trading style and as a consequence, made the general public to believe that there is some connection between the company of the plaintiffs and company of the defendants. Therefore, issue No.3 is answered in favour of the plaintiffs. 12.In the light of the answers given by Issue Nos.1 to 3 in favour of the plaintiffs, the plaintiffs are entitled to a Decree as prayed for. 13.In the result, (i) There shall be a judgment and decree in favour of the Plaintiffs granting permanent injunction, restraining the Defendants, by itself, its servants, agents distributors, or anyone claiming through them from manufacturing, selling, advertising and offering for sale using the registered Trade Mark CHANDRIKA or OUSHADHA CHANDRIKA upon soaps or any goods https://hcservices.ecourts.gov.in/hcservices/ 10 or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark with prefix or suffix with the expression CHANDRIKA or any other similar sounding expression which is in any way visually, phonetically or deceptively similar to the Plaintiffs Registered Trade Mark CHANDRIKA or in any manner infringing the Plaintiffs Registered Trademark Nos: 304121, 210561, 210560, 395616, 503956, 503957, 359925 and 454994 for soaps; (ii) There shall be a judgment and decree in favour of the plaintiffs 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; (iii) The 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 https://hcservices.ecourts.gov.in/hcservices/ 11 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 the defendants are also directed to pay the costs to the Plaintiffs. 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 https://hcservices.ecourts.gov.in/hcservices/ 12 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 sd/.M.S.N.J 14.12.2015 //Certified to be a true copy// Dated this the day of 2016. S.s/16.06.2016 COURT OFFICER From 25.09.2008 the Registry is issuing certified copies of the Order/Judgment Decree in this format. https://hcservices.ecourts.gov.in/hcservices/