1 IN THE HIGH COURT OF JUDICATURE AT MADRAS (ORDINARY ORIGINAL CIVIL JURISDICTION) SATURDAY, THE 10TH DAY OF DECEMBER, 2011 THE HON'BLE MR. JUSTICE VINOD K.SHARMA O.A. No.378 OF 2010 IN C.S. No.341 OF 2010 1. Mr.A.D.Padmasingh Isaac Trading as Aachi Spices and Foods Old No.4, New No.181/1, 6th Avenue, Thangam Colony, Anna Nagar, Chennai – 600 040. 2. M/s. Aachi Masala Foods (P) Ltd., No.6, Ground Floor, 15th Street, Anna Nagar, 'G' Block, Chennai - 600 040 Represented by its Director, Mr.Ashwin Pandian. ... Applicants/Plaintiffs -Versus- Aachi Cargo Channels Private Limited Door No.9, III Floor, VGP Murphy Squire, No:19, GST Road, St Thomas Mount, Chennai - 600 016. Tamil Nadu ... Respondent/Defendant Original Application praying that this Hon'ble Court be pleased to grant an interim injunction, restraining the Respondent, by himself, his servants, agents, distributors, or anyone claiming through him from manufacturing, selling, advertising and offering for sale using the same name AACHI or used by the Applicants and the trade mark name Aachi Cargo Channels Pvt Ltd or any other similar Trade Mark name or similar sounding expression in any media and use the same in name board, invoices, letter heads and visiting cards or by using any other trade mark/name which is in any https://hcservices.ecourts.gov.in/hcservices/ 2 way visually or deceptively or phonetically similar to the Applicants' trade mark/name AACHI and use the same in pouches, packets or use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other trade mark which is in any way visually, or phonetically similar to the Applicants' registered Trade Mark Nos. 922594, 922595, 1374937, 1340324, 1340325, 1367430, 1372439, 1372440, 1375754, 838786, 976559, 1025302, 1025304, 1025305, 1318493, 1318494, 1318495, 1375755, 1375756, 1380625, 1357284, 1479158, 1479159, 1418281, 1025303, 1415328, 1415329 & 1116254 or in any manner infringing the Applicant's registered Trade Marks referred herein pending disposal of the above suit. This Original application coming on this day before this court for hearing the court made the following order: In a pending suit, the applicant has moved this application under Order XXXIX Rule 1 & 2 of C.P.C., for inteim injunction restraining the respondent, by himself, his servants, agents, distributors, or anyone claiming through him from manufacturing, selling, advertising and offering for sale using the same name 'AACHI' or used by the applicants and the trade mark name Aachi Cargo Channels Pvt. Ltd. or any other similar Trade Mark name or similar sounding expression in any media and use the same in name board, invoices, letter heads and visiting cards or by using any other trade mark/name which is in any way visually or deceptively or phonetically similar to the applicant's trade mark/name AACHI and use the same in https://hcservices.ecourts.gov.in/hcservices/ 3 pouches, packets or use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other trade mark which is in any way visually or phonetically similar to the applicant's registered trade mark Nos.922594, 922595, 1374937, 1340324, 1340325, 1367430, 1372439, 1372440, 1375754, 838786, 976559, 1025302, 1025304, 1025305, 1318493, 1318494, 1318495, 1375755, 1375756, 1380625, 1357284, 1479158, 1479159, 1418281, 1025303, 1415328, 1415329 & 1116254 or in any manner infringing the applicant's registered Trade marks referred herein pending disposal of the suit. 2 In support of the prayer, it is pleaded by the applicant that Mr.A.D.Padma Singh Isaac commenced business in the year 1995 as a proprietary concern. The business of plaintiff/applicant No.1 is of manufacturing and marketing various kinds of masalas and spices. Though business was started in small-scale, over the number of years, the applicants have grown into one of the leading manufacturers and marketers of spices in India, by its sheer high quality and has earned enormous goodwill in the course of its business. 3 The Trade mark "AACHI" is now common household name. The applicants are presently dealing with 130 different products which are detailed hereunder: https://hcservices.ecourts.gov.in/hcservices/ 4 S.No. Product Pack. Grams/Kgs. 1 Cooking Turneric powder 10, 25, 5 Kg. 2 Special Turmeric powder 10,50,500,5,2 0 Kgs. 3 Special chilly powder 20, 50,500, 1 Kg. 4 Daniya powder 10, 20 gms 5 Kuzhambu chilli powder 50, 1, 5 & 10 Kg. 6 Milagu powder 10, 20 7 Seeraka powder 10, 20 8 Garam masala powder 10, 20 9 Biriyani masala powder 20, 50 10 Sukku Malli powder 20, 50 11 Idly chilly powder 20, 50 12 Tamarind Rice paste 10, 13 Tamarind Rice mix powder 20, 50 14 Lemon Rice mix powder 20, 50 15 Tomata Rice mix powder 20, 50 16 Sambar masala 20, 50 17 Rasam Masala 20, 50 18 Butter Milk masala 50, 19 Vatha Kulambu masala 50, 20 Curry Masala powder 20, 50 21 Chicken Masala powder 20, 50 22 Chicken 65 Masala powder 20 gms. 23 Chilli chicken Masala 20 gms. 24 Kadai chicken Masala 20 gms. 25 Pepper chicken Masala 20, 50 26 Mutton Masala powder 20, 50 27 Egg Masala powder 20, 50 28 Fish fry Masala powder 20, 50 29 Fish curry Masala powder 20, 50 30 Fish Kuzhambu Masala powder 20, 50 31 Ginger Garlic paste 50 gms. 32 Tamarind paste 50 gms. 33 Asafoetida Cake 10, 25, 50 https://hcservices.ecourts.gov.in/hcservices/ 5 S.No. Product Pack. Grams/Kgs. 34 Asafoetida powder 5,10,25,50(P) 50 (S) 35 Ghee 20 ml. 36 Computer Sambirani (J) Rs.14/- 37 Computer Sambirani (GT) Rs.14/- 38 Micro Blue 30 ml, 50 ml. 39 Twinkle Blue 100ml,250ml, 75ml 40 Sabash Cleaning powder 200, 500 gms, 1 Kg. 41 Kadugu 50, 42 Kasakasa 50, 43 Milagu 50, 44 Seeragam 50, 45 Sombu 50, 46 Vendayam 50, 47 Black Ellu 50, 48 White Ellu 50, 49 Cooking Turmeric powder 100, 200, 250 gms. 50 Pure Chilly powder 100, 200, 250 gms. 51 Daniya powder 100,200,250 gms. 52 Kuzhambu chilli powder 200, 53 Sambar Masala 100,200,500 gms. 54 Rasam Masala 100, 55 Pepper (Milagu) powder 100, 56 Idly chilly powder 100, 57 Curry Masala powder 100, 58 Chicken Masala powder 100, 200, 500 59 Chicken 65 Masala powder 200, 500 60 Mutton Masala powder 100, 200, 500 gms. 61 Fish Kuzhambu Masala powder 100, 62 Red chilli paste 200, https://hcservices.ecourts.gov.in/hcservices/ 6 S.No. Product Pack. Grams/Kgs. 63 Ginger Garlic paste-Pouch 100, 200 gms. 64 Ginger Garlic paste-Jar 200 gms. 65 Tamarind Paste 200, 300 gms. 66 Asfoetida powder 100, 200, 500 gms. 67 Gingelly oil 1 lt., 50, 100, 200, 500 ml 68 Sunflower Oil 1 lt., 500 ml, 200, 100 ml. 69 Garlic Pickles 40 gms. 70 Lemon Pickles 40 gms. 71 Mango Pickles 40 gms. 72 Brinjal Pickles 40 gms. 73 Puli Kaichal 50, 100, 300 gms. 74 Lemon Rice paste 50, 100, 300 gms 75 Tomato Rice paste 50, 100, 300 gms. 76 Curry leaf rice paste 50, 100, 300 gms. 77 Corriander Rice paste 50, 100, 300 gms. 78 Mint Rice paste 50, 100, 300 gms. 79 Tomato Garlic Rice paste 50, 100, 300 gms. 80 Brinjal Thokku 100, 300 81 Vathakulambu 100, 300 82 Veg. Biriyani Rice mix 100, 300 83 Ghee Rice mix 100, 300 84 Fish Thokku 100, 300 85 Fish Pickles 100, 300 86 Chicken Pickles 100, 300 87 Prawn Pickles 100, 300 88 Fish Kulambu 300, https://hcservices.ecourts.gov.in/hcservices/ 7 S.No. Product Pack. Grams/Kgs. 89 Prawn Kulambu 300, 90 Mixed Veg. Pickles 300, 91 Lemon Pickles 300, 92 Cut Mango Pickles 300, 93 Mango Thokku 300, 94 Avakai Pickles 300, 95 Tomato Pickles 300, 96 Garlic Pickles 300, 97 Lemon Pickles – Bulk 5 Kg. 98 Cut Mango Pickles – Bulk 5 Kg. 99 Mango Thokku – Bulk 5 Kg. 100 Avakai Pickles – Bulk 5 Kg. 101 Tomato Pickles – Bulk 5 Kg. 102 Lemon Pickles – Economy 5 Kg. 103 Mango Pickles – Economy 5 Kg. 104 Ghee 50 ml, 100 ml, 105 Ghee Jar 100 ml, 200ml, 500 ml, 1 ltr. 106 Bajji Bonda powder 200, 500 gms. 107 Masala Rice for Biriyani 200, 500 gms. 108 Instant Gulab Jamun Mix (1+1) 200, 109 Semiya Payasam mix 200, 110 Badam mix 200, 111 Rava Idli mix 200, 112 Rava Dosa mix 200, 113 Rava Upma Mix 200, 114 Adai mix 200, 115 Nutrimalt 200, 116 Nutrimalt-Jar 500, 117 Sathu powder 200, 118 Sathu powder -Jar 500, 119 Golden Fried Onions 100, 120 Dia Rice 1 Kg. https://hcservices.ecourts.gov.in/hcservices/ 8 S.No. Product Pack. Grams/Kgs. 121 Tender Coconut 200 ml. 122 White puttu flour 500 gms. 123 Chemba Puttu flour 500 gms. 124 Appalam 25, 50, 100, 200 gms. 125 Appalam (Kattu) 50, 100, 150, 200gms 126 Atta 500 gms, 1, 5, 10 127 Rava 500, 128 Semiya 180, 450, 900 129 Gram Dhall flour 200, 500 4 The applicants diversified their business activities and are marketing consumber goods. The applicants claims to be the leading manufacturer of packaged masalas, and are advertising their products in all forms of media, such as radio, newspapers, hoardings, television network. The applicants are also winner of many awards. 5 It is the case of the petitioner that Trade mark "AACHI" has become intellectual property of the plaintiffs/applicants and no one can use the said expression "AACHI" for spices and masala, and any other goods or service for which the plaintiffs/applicants are using the mark. 6 As already noticed above, the case of the applicants is that the applicants are using the mark https://hcservices.ecourts.gov.in/hcservices/ 9 "AACHI" since 1995 and had earned lot of goodwill. The applicants have also disclosed the turnover which has increased substantially with the passage of time. 7 It is also pleaded case of the applicants that the applicants have a proprietary right over its mark and unauthorised use of the same mark or similar mark would amount to infringement. The applicants also claims to have filed many other applications for registration of the trade mark. The applicants have also pleaded that though business was started as proprietary concern, but has subsequently being carried on by the Company registered under the Companies Act. 8 It is the case of the applicant that in February 2010, it comes to the notice of the plaintiffs/applicants that the defendant/ respondent company registered as Aachi Cargo Channels Pvt. Ltd. which is blatant infringement of the applicants' registered trade mark "AACHI". The search conducted by the plaintiffs/applicants shows that the respondent company was registered with the Registrar of Companies on 03.07.2008. 9 It is also pleaded that the plaintiffs/applicants are also taking steps to change the name of the defendant/respondent under the provisions of the Companies Act, 1957 by invoking Sec.20 of the said Act. 10 It is pleaded case by the plaintiffs/applicants https://hcservices.ecourts.gov.in/hcservices/ 10 that the word "AACHI" has been consciously taken from the plaintiffs/ applicants' label with the intention to take undue advantage of the goodwill earned by the plaintiffs/applicants. The plaintiffs/applicants have also attached a copy of the certificate issued to the respondent company. 11 It is further pleaded that public of average intelligence mistake the defendant/respondent's company to be an undertaking of the plaintiffs/applicants and therefore, the plaintiffs/applicants have prayed for grant of interim injunction restraining the respondent from using trade mark "AACHI" which is similar to the one registered trade mark of the "AACHI" used by the plaintiffs/applicants. 12 The application is opposed by the defendant/ respondent by filing counter, wherein primary objection taken is with regard to maintainability of the suit in this Court in view of provisions of Sec.134 of Trade mark Act. This objection deserves to be rejected straightaway, as this Court as chartered High Court also act as District Court for the purpose of proceedings under the trade mark Act. 13 The stand of the defendant/respondent is that the mark "AACHI" is not the intellectual property of the plaintiffs/ applicants, which is not the mark created or improvised exclusively by the plaintiffs/applicants. https://hcservices.ecourts.gov.in/hcservices/ 11 Rather, this word is geographical origin and a customary word often used in the current tamil language. Thus, the word "AACHI" cannot be registered as trade mark under Sec.9 (1), (b), (c) & 11 of the Trade Marks Act, 1999. 14 It is also the case of the defendant/non applicant that by using word "AACHI" the plaintiff is misleading the entire public dishonestly.The stand of the defendant/respondent is that in order to claim a word to be intellectual property, it should be a product of mind of the person. The word "AACHI" is not the product of the mind of the plaintiffs/ applicants. It cannot therefore, be said to be an intellectual property of the plaintiffs/applicants as claimed. 15 It is denied by the defendant/respondent that by using the mark "Aachi Cargo Channels Pvt. Ltd." they are committing infringement of the trade mark. The stand of the defendant/ respondent is that neither the plaintiffs/applicants have prima facie case nor the balance of convenience in their favour. The infringement of trade mark is denied on the following grounds; (i) Both the applicants/plaintiffs and the respondent/defendant are operating in two totally different fields unconnected to each other. (ii) There is no similarity of goods manufacturerd or services rendered both by the petitioners and the respondent/ defendant. The applicants/petitioners are said to have processed and marketed food products while the respondent/ defendant is doing the cargo https://hcservices.ecourts.gov.in/hcservices/ 12 service transporting various goods. (iii) There is no nexus between the nature of the trade done by the applicants/plaintiffs and the business service of the respondent/ defendant. The applicants/plaintiffs are said to have manufactured, processed (by one Nazareth Food (P) Ltd.) and marketed food products to the consumer public whereas the respondent/defendant is doing Cargo service namely exporting and importing the various kinds of goods which avocation has nothing to do with any acess to the consumer public. (iv) Infringement of trade mark would be caused only if it was likely to create confusion that business of respondent/defendant was that of the applicants. It is submitted by the defendant/non applicant that there is no infringement of the trade mark at all, as alleged by the applicants/ plaintiffs, therefore, the question of granting an order of ad-interim injunction does not at all arise. 16 It is also the stand of the respondent, that the name of the respondent is duly registered by the Registrar of Companies and the plaintiffs/applicants therefore cannot seek injunction against use of the name of the Company duly registered under the Companies Act. 17 Reply affidavit has been filed to the counter wherein the stand of the respondent/defendant is controverted and the averments made in the application are reiterated. 18 On the pleadings of the parties, it cannot be https://hcservices.ecourts.gov.in/hcservices/ 13 disputed that trade mark "AACHI" is registered trade mark with respect to masala and spices. The pleaded case of the plaintiffs/applicants also shows that 28 trade marks have been registered in the name of the plaintiffs/applicants with respect to different masalas or products. The question to be considered in this case therefore would be "whether this registration is to be treated to be a trade mark qua the specific product or qua the word "AACHI" itself ?" This question is needs to be considered, for the reason that the word "AACHI" in tamil means "grandmother" and therefore, it cannot be said to be a word coined by the plaintiffs/applicants. Thus, it is the general public word of the tamil language. 19 The learned counsel for the plaintiffs/applicants vehamently contended that a general word or name can also be registered as trade mark, and that the registration gives right to use the said word exclusively, in exculsion of others. 20 In support of this contention, the learned counsel for the plaintiffs/applicants relied on the order passed by this Court in the case of Aachi Spices and Foods Pvt. Ltd. and another vs. Aachi trucking Services Pvt. Ltd. (O.A.No.1172 of 2010 in C.S.No.901 of 2001 decided on 25.08.2011) wherein injunction was granted against Aachi Trucking Services Pvt. Ltd. This judgment cannot be treated https://hcservices.ecourts.gov.in/hcservices/ 14 as precedent as being an order passed on interlocutory application and is not a final order in the suit. 21 The learned counsel for the plaintiffs/applicants also placed reliance on the judgment of the Hon'ble Delhi High Court in the case of Montari Overseas Ltd. vs. Montari Industries Ltd. (1996(16) PTC 142 (Del) wherein the Hon'ble Delhi High Court while interpreting Sec.20, 22 was pleased to lay down that in case of registration of the companies with similar or identical name, the remedy with the aggrieved is to approach the civil Court and jurisdiction of the civil Court is not barred by the provisions of the Companies Act. This judgment again cannot advance the case of the plaintiffs/applicants, as the plaintiffs/applicants have not filed a suit for change of the name, but is seeking an injunction under the trade mark act, for infringing the registered trade mark. 22 The pleadings itself shows that the plaintiffs/ applicants were earlier registered under the name of M/s.Nazareth Foods (P) Ltd. and its name was changed to "Aachi Spices and Foods" only on 22.12.2006 whereas the respondent company was incorporated on 03.07.2008. This may give cause of action to the plaintiffs/ applicants to pray for change of name of the company, and as per pleading of the plaintiffs/applicants necessary proceedings have already been taken out by the plaintiffs/applicants. https://hcservices.ecourts.gov.in/hcservices/ 15 23 The plaintiffs/applicants thereafter placed reliance on the judgment of the Hon'ble Punjab and Harayana High Court in the case of M/s.Banga Watch Company vs M/s.N.V.Philliphs, Eindhoven, Holland and another (A.I.R. 1983 PUNJAB AND HARAYANA 418) wherein M/s.Banga Watch Company was restrained from using trade mark 'Phillips' for their watches even though M/s.N.V.Philliphs, Eindhoven, Holland dealing with the watches on the ground of passing off.The judgment was relied upon by the applicant in support of the contention that even name can be treated to be the registered trade mark. This proposition cannot be disputed, but a word describing relationship which is of general use, can give exclusive right to the user is not considered in this judgment. 24 The learned counsel for the plaintiffs/applicants thereafter placed reliance on the judgment of the Hon'ble Division Bench of this Court, in the case of Needle Industries (India) Limited, Chennai vs Sanjay Jaiswal & others [2002(24) PTC 646 (Mad)] wherein this Court was pleased to lay down as under: "The defendants have ofered no explanation whatsoever for the adoption of this mark. It is not a mark invented by the defendans. It is evident that the second defendant having been the dealer of the plaintiff, being familiar with the mark and being well aware of the enormous goodwill attached to that mark, had sought to ride piggyback on the goodwill at the cost of the plaintiff. The defendants' conduct is https://hcservices.ecourts.gov.in/hcservices/ 16 not one which can be regarded as bonafide. The adoption of that trade mark by the defendants was deliberately and consciously done with a view to profit from the goodwill earned by the plaintiff for the mark and label. The fact that the mark has been registered in favour of the first defendant for sewing threads recently does not make any difference, as registration of the mark in a different class is not by itself a complete defence in an action for passing off. While such registration may be permissible, the registration does not confer immunity against an action for passing off." This judgment also cannot help the case of the plaintiffs/applicants.The facts are totally different and even business of the defendants/ respondents has no relevance or concerned with the manufacturing and selling of spices. 25 The learned counsel for the applicant thereafter placed reliance on the judgment of the Hon'ble Bombay High Court in the case of Bajaj Electricals Limited, Bombay v. metals & Allied Products, Bombay and another [A.I.R. 1988 BOMBAY 167] wherein the Hon'ble Bombay High Court was pleased to lay down as under: "In the present case, a Notice of Motion was taken out in a suit for perpetual injunction by the plaintiff company to grant interim injunction restraining the defendants, a partnership firm and its partners, from using its registered mark so as to pass off the defendants' goods as the goods of the plaintiff. The trade name of the plaintiff was widely advertised and gained wide reputation for a number of years, the partners of the defendant https://hcservices.ecourts.gov.in/hcservices/ 17 firm were carrying on their business with the mark consisting of their family name and it was identical and deceptively similar to the trade name of the plaintiff. There was identity of goods, identity of mark and identity of consumer in respect of the goods manufactured by the plaintiff and that of the defendants. The articles of the plaintiff and the defendants were available in the same shop. The defendants were attempting to pass of their goods with the said mark with the with the intention to secure advantage of the reputation earned by the plaintiff. Held that the plaintif was entitled to the interim injunction sought for. The defendants were using their family name not as a trade style but as a trade mark or trade sign. Such user is not permissible. The fact that damages would be suffered by the plaintiff cannot be ignored and the actual sufferance of damages cannot be established on the date of the institution of the suit. (1924)41 RPC277 Rel." This judgment also does not help the case of the plaintiffs/applicants, as in the said judgment, the product was identical to established product name of the plaintiff. Whereas in the case in hand, applicants are not dealing with the business of Cargo. 26 The learned counsel for the plaintiffs/ applicants thereafter placed reliance on the judgment of the Hon'ble Delhi High Court in the case of Amar Singh Chawal Wala vs. Shree Vardhman Rice and Genl. Mills [2009(40) PTC 417 (Del.) (DB) wherein defendants are restrained from using the word "HARA QILLA' being deceptively similar to the product marketed by the appellant, thus again product of https://hcservices.ecourts.gov.in/hcservices/ 18 both the parties was same. 27 The reliance was also placed on the judgment of the Hon'ble Delhi High Court in the case of Apple Computer Inc. vs. Apple Leasing & Industries [PTC (Suppl) (2) 45 (Del)] wherein again the respondents were restrained from using the word "APPLE" being connected with the plaintiff's computers for their computer products. The reading of this judgment again shows, that the reason for coming to the conclusion was that the word "APPLE" and "COMPUTER" were jointly represented the product of the plaintiff's company, whereas in the case in hand, the plaintiffs/applicants is not connected with the Cargo business at all. 28 Finally, reliance was placed on the judgment of this Court in the case of Caterpiller Inc. Illionis, USA vs. Jornage and another [O.S.A.No.166/1997 in C.S.No.785 of 1996 decided on 01.10.1997] wherein the respondents were restrained from using the word "Caterpiller". 29 The reading of the judgment again shows that it was on the facts and circumstances of the said case, that the injunction was granted. 30 On consideration of the pleadings and submission made, this Court does not find, that the plaintiffs/applicants have been able to make out a prima facie case for grant of injuntion. The business of the https://hcservices.ecourts.gov.in/hcservices/ 19 defendant/respondent is altogether different from the one carried on by the plaintiffs/applicants. 31 The word "AACHI" means grandmother in tamil language and therefore cannot be said to be a prima facie intellectual property. The plaintiffs/applicants in view of the registration of the trade mark can certainly seek injunction against use of the word "AACHI" for the products which the plaintiffs/applicants are dealing with. But it does not give monopoly to the plaintiffs/applicants by seeking injunction against the use of the word "AACHI" by others to run the business other than the one, the plaintiffs/applicants are doing. It is pleaded case of the plaintiff/applicant that nobody can use expression "AACHI" for spices and masalas and other goods and servics for which plaintiffs/applicants are using the mark. It is not the case of the plaintiff/applicant that they are in Cargo business. 32 The pleadings of the plaintiffs/applicants shows that the plaintiffs/applicants have registered number of