IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED : 25-07-2011 Coram THE HONOURABLE MRS. JUSTICE R. BANUMATHI and THE HONOURABLE MR. JUSTICE B. RAJENDRAN O.S.A. Nos. 191, 192 and 193 of 2011 and Cross Objection Nos. 121 and 122 of 2011 and M.P. No. 1 of 2011 1. P. Venkat Rao @ Sakthi Dass Editor Chandrabala Publications Pvt Ltd Plot No.944, Opp. Andhra Bank Vivekananda Nagar Colony, Kutapally Hyderabad – 500 072 2. Chandrabala Publications Pvt Ltd Plot No.944, Opp. Andhra Bank Vivekananda Nagar Colony, Kutapally .. Appellants in all the Hyderabad – 500 072 Appeals (Defendants) Versus Chandamama India Limited having branch office at No.2, Ground Floor, Swathi Enclave Door No.5 & 6, AmmanKoil Street Vadapalani, Chennai – 600 026 rep. By its Executive Director .. Respondent in all the Prashanth Sharad Mulekar Appeals (PlaintifF) Chandamama India Limited having branch office at No.2, Ground Floor, Swathi Enclave Door No.5 & 6, AmmanKoil Street Vadapalani, Chennai – 600 026 rep. By its Executive Director .. Cross Objector in both Prashanth Sharad Mulekar the Cross Objection (Respondent) Versus https://hcservices.ecourts.gov.in/hcservices/ 1. P. Venkat Rao @ Sakthi Dass Editor Chandrabala Publications Pvt Ltd Plot No.944, Opp. Andhra Bank Vivekananda Nagar Colony, Kutapally Hyderabad – 500 072 2. Chandrabala Publications Pvt Ltd Plot No.944, Opp. Andhra Bank Vivekananda Nagar Colony, Kutapally .. Respondents in both the Hyderabad – 500 072 Cross Objections (Appellants) Appeals filed under Order XXXVI Rule 1 of Original Side Rules read with Clause 15 of Letters Patent against the common order dated 13.06.2011 passed in Application Nos. 918 to 920 of 2010 in C.S. No. 750 of 2010 on the file of this Court. Cross Objections filed under Order 41 Rule 22 CPC read with Clause 15 of Letters Patent against the common order dated 13.06.2011 passed in Application Nos. 919 and 920 of 2010 in C.S. No. 750 of 2010 on the file of this Court O.S.A. No. 191 to 193 of 2011 For Appellants : Mr. R. Sathish Kumar in all the appeals For Respondents : Mr. G.K. Muthukumar for M/s. G.M.S. Law Associates in all the appeals Cross Objection Nos. 121 and 122 For Petitioner : Mr. G.K. Muthukumar for M/s. G.M.S. Law Associates in both the Cross Objections For Respondents : Mr. R. Sathish Kumar in both the Cross Objections COMMON JUDGMENT B. RAJENDRAN, J The defendants in C.S. No. 750 of 2010 are the appellants in these appeals. These appeals are directed against the common order dated 13.06.2011 passed in Application Nos. 919 and 920 of 2010 in C.S. No. 750 of 2010 by the learned Judge. Since the issue involved in all these appeals are inter-connected and identical, they are disposed of by this common judgment. https://hcservices.ecourts.gov.in/hcservices/ 2. For the sake of convenience, the parties are referred to as per their litigative status in the suit, as plaintiff and defendants. 3. The Plaintiff Chandamama India Limited has filed the suit for the following relief:- "(a) A Permanent injunction restraining the defendants, jointly and severally, their Directors, Editors, Sub/Assistant Editors, Publishers, Printers, Principal Officers, Staff, men, agents, servants, successors and assigns- in- business, representatives or any person claiming through or under them from in any manner using the mark 'CHANDRABALA' as a trademark or trade name or corporate name or trading style, domain name, or from using any other trade mark, trade/corporatename, that is identical with or deceptively similar to the registered trademark "CHANDAMAMA" of the plaintiff under tradmark registration number 887024 in Class 16 or to market, sell, offer for sale, license, advertise, display or indirectly to deal in any goods and/or services, amounting to infringeement of the plaintiff's said registered trademark. (b) A Permanent injunction restraining the defendants, jointly and severally, their Directors, Editors, Sub/Assistant Editors, Publishers, Printers, Principal Officers, Staff, men, agents, servants, successors and assigns- in- business, representatives or any person claiming through or under them from in any manner from infringing the plaintiff's copyright in the artistic work of the rabbit mascot or other artistic works in the plaintiff's CHANDAMAMA magazines and from adopting the colour, font, back ground and get up of the plaintiff's artistic work in an identical/deceptively similar fashion amounting to an unlicensed/unauthorised adaptation of the plaintiff's separate copyright in the said artistic works. (c) A Permanent injunction restraining the defendants, jointly and severally, their Directors, Editors, Sub/Assistant Editors, Publishers, Printers, Principal Officers, Staff, men, agents, servants, successors and assigns-in- business, representatives or any person claiming through or under them from using the mark "CHANDRABALA, the squirrel logo, the trade dress, get up, font or colour combination or any other identical or https://hcservices.ecourts.gov.in/hcservices/ deceptively similar marks in relation to any goods or services amounting to passing off of the plaintiff's well known mark CHANDAMAMA, the rabbit logo and unique trade dress, get up and colour combination (d) The defendants be ordered to pay to theplaintiff a sum of Rs.25,50,000/- by way of damages (e) A preliminary decree be passed in favour of the plaintiff directing the defendants jointly and severally to render a true and faithful account of all profits made by them, using the tradmark "CHANDRABALA" and a final decree be passed in favour of thePlaintiff for the amount of profits thus found to have been made by the defendants, together with interest, after the Defendants have rendered accounts (f) The defendants jointly and severally be directed to deliver-up to the plaintiff for destruction of all packaging, labels, blocks, dyes, all other printmaterials, stickers, signage, visiting cards, letter heads, catalogues, pamphlets, brochures, all other advertising and promotional material, all stationery, and such other material which are used in relation to the 'CHANDRABALA' trademark/trade name/ corporate name/trading style, and the plaintiff's copy right in the artistic work and for costs. 4. The case of the Plaintiff was that in the year 1947, they have started publishing a magazine with a unique and invented mark titled "CHANDAMAMA" which was started by their predecessors exclusively to entertain and educating the young children to impart them about the rich traditions and cultural values and customs prevailing in India. The Plaintiff launched their edition in Telugu and Tamil in the year 1947 followed by versions in Kannada, Hindi, Malayalam, English and other Indian Regional languages. The Plaintiff also adopted the Rabbit Mascot in their magazine in the year 1960 which had earned great reputation in their trade. According to the plaintiff, their magazine is the oldest and only children's magazine in India to be published in 13 regional languages. Further, right from the inception of the tradename "CHANDAMAMA", their magazines have created a profound and strong impact on the dissemination of knowledge pertaining to India tradition, heritage and culture. The Plaintiff's magazine has become one of the oldest and most respected magazines for children in India. The reputation and goodwill which the plaintiff earned by reason of publication of the magazine with the tradename CHANDAMAMA continued even today. The magazine of the Plaintiff contains many pictures/artworks/drawings/sketches and other artistic works, the copyright which vest solely with the plaintiff. According to the plaintiff, they have also obtained registration of their trademark https://hcservices.ecourts.gov.in/hcservices/ CHANDAMAMA for their magazines in clause 16 under No. 887024 with effect from 17.11.1999 which is being renewed and the renewal is subsisting as on date. The Plaintiff would contend that they have copyright in the pictures, artworks, drawings and sketches drawn by famous artists for valuable consideration. According to the plaintiff, the first defendant was engaged by them to create artistic works for several years for a valuable consideration. But during August 2009, the first defendant started the magazine titled "CHANDRABALA" with identical title, get up, size, trade name and trading style of the plaintiff's trademark "CHANDAMAMA" which amounts to copyright infringement, passing off the tradename of the plaintiff and which causes confusion and deception amongst the public and trade. The defendants trade style "CHANDABALA" is almost identical with that of the Plaintiff's trade name "CHANDAMAMA". In view of the marks being deceptively similar, the test of confusion and deception for infringement and passing off are the same. Therefore, the Plaintiff has filed the suit for the reliefs mentioned above. 5. The defendants have filed counter affidavit denying the averments in the applications filed by the plaintiff for interloctuary injunction. According to the defendant, the names "CHANDAMAMA" and "CHANDRABALA" were not similar much less deceptively similar to each other. The first defendant was never an employee of the plaintiff but a freelance artist who has drawn/painted pictures and sketches for several children's magazines for over 40 years. The averment of the plaintiff that the first defendant was trained in arts and had worked mostly on children's magazine with the result the idea to start a children's magazine on his own was floated is unsustainable. The name "CHANDRABALA" was chosen as it denotes Bright and Young. The defendants have not copied even a single picture/sketch of the plaintiff in their magazine and therefore the quesiton of copyright infringement does not arise. The plea of trade dress was not sufficiently pleaded by the plaintiff and therefore, the plaintiff is not entitled to grant of interim injunction. Further, the size of the plaintiff's magazine and that of the defendants are different and hence no monopoly can be claimed by the plaintiff. The artistic works depicited in their magazine were all based on mythology, folklore and ancient Indian stories which are traditional. Therefore, the plaintiff cannot claim monopoly on such ideas and the first defendant, being an artist, cannot be refrained from exhibiting his artistic talents. Inasmuch as the plaintiff is unable to show that a particular picture/sketch/drawing has been copied by the defendants, there cannot be a copyright infringeement. The defendants have taken all precautions before adopting the name "CHANDRABALA". The defendants have also obtained approval from the Registrar of Companies and Registrar of Newspapers, who are both statutory authorities and who are bound to scrutinise the application of the defendants vis-a-vis registered and popular trademarks. Further, the Registrar of Trademarks has also given an examination report upon scrutinising the application for trademark in the tradename of "CHANDRABALA" wherein the Plaintiff's tradename https://hcservices.ecourts.gov.in/hcservices/ "CHANDAMAMA" was not even cited. Therefore, none of the statutory authorities have found prima facie similarity between the two marks. Further, there are several magazines in the market with the trademark "CHANDA" or "CHANDRA" as prefix and that there is no confusion or deception in the minds of the purchasers. The products being magazines and not day to day consumption items, it can safely be held that the customers are able to read atleast the title and that the possibilities of confusion are remote. According to the defendants, even though the plaintiff issued notices to them in August 2009, they did not pursue the matter further. The plaintiff also issued notices during October 2009 and January 2010 without taking any further action. However, aggrieved by the constant threats at the instance of the plaintiff, the defendants have approached the District Court at Ranga Reddy District, Andhra Pradesh and filed O.S.No. 68 of 2010 under Section 142 of the Trademarks Act, 1999. As a counterblast, the plaintiff has filed the present suit and sought for interim injunction against the defendants pending suit. 6. The learned Judge, after notice to the defendants and after hearing both sides found that the plaintiff is the registered proprietor of the trade mark, which is in use for the past 60 years. Further, the plaintiff is also the owner of the copyright in the art work, pictures and sketches drawn in the cover pages and other pages of the magazine "CHANDAMAMA" by artists like the first defendant. Therefore, the learned Judge held that the plaintiff has made out a prima facie case for grant of injunction so as to protect their registered trade mark and the copy right. The learned Judge further held that the likelihood of confusion among the readers is sufficient to grant interim injunction in favour of the plaintiff. Accordingly, by a common order dated 13.06.2011, the learned Judge granted interim injunction as prayed for in Application Nos. 919 and 920 of 2010 in C.S. No. 750 of 2010. Aggrieved by the same, the present Original Side Appeals have been filed by the defendants. The Plaintiffs have also filed Cross Objection Nos. 121 and 122 of 2011 on the ground that there is a overall similarity between the trade dress of the plaintiff and the defendants, but the learned Judge did not grant interim injunction in respect of the relief of trade dress passing off. 7. We have heard the counsel for both sides. Before deciding the rival contentions of the parties, it has to be stated that in so far as O.S.A. No. 192 of 2011 and Cross Objection No. 121 of 2011 are concerned, it was mutually agreed by the parties that the defendants will not utilise the Squirrel Mascot on the left hand side top cover page of their magazine without prejudice to their rights in the suit. The first appellant has also filed an affidavit of undertaking to this effect. Therefore, recording the undertaking given by the first defendant/ first appellant by way of an affidavit, O.S.A. No. 192 of 2011 and Cross Objection No. 121 of 2011 are disposed of accordingly. 8. Before taking into consideration the rival contention of https://hcservices.ecourts.gov.in/hcservices/ both sides, it is necessary to point out certain admitted facts. (i) Both parties are engaged in publication of magazines, which are exclusively meant for children especially depiciting the epics, culture, heritage and tradition of India as well as stories from all over the world (ii) the first defendant/first appellant herein, as a freelancer, was working for the plaintiff/respondent for drawing sketches and pictures and they have been closely associated for the past 30 years before the first defendant started his own magazine (iii) the first defendant/first appellant was not employed under the plaintiff, but he was only a freelancer. Even as admitted by the defendants/appellants, the first defendant was associated with the plaintiff publishing company as a freelancer for 30 years. The first defendant was not a person employed by the plaintiff company for the purpose of making drawings in the magazine published by the plaintiff's company. Thereafter, the first defendant disassociated with the plaintiff's firm and started publishing his own magazine. 9. With this background, we have to analyse the whole case. The contention of the defendants/appellants is that the magazine, which they have started under the tradename "CHANDRABALA" is not in any way similar to that of the trademark of the plaintiff "CHANDAMAMA" or it can be construed that the words appearing in the tradename of the plaintiff as well as defendants namely "BALA" is similar to that of "MAMA" so as to make the public at large to get confused with both the trade names. As far as similarity of trade marks are concerned, there is another distinctive feature in this case. The trade names "CHANDAMAMA" and 'CHANDRABALA" are totally different in sound and meaning. Furthermore, the use of the word "R" with a specific sound marking would totally make the trade name of the defendants' "CHANDRABALA' phonetically different with that of the trade name of the plaintiff "CHANDAMAMA". 10. The learned counsel for the defendants/appellants would mainly contend that the first defendant was a freelancer working with the plaintiff publishing company for the past more than 30 years and he was engaged in drawing for the books and the art pictures drawn by him were appreciated. But at the same time, it is clearly indicated in their publication under the tradename "CHANDABALA" that at no point of time the defendants utilised the books or arts used by him when he was associated with the plaintiff's company . Therefore, the plaintiff cannot claim that merely because the first defendant/first appellant was associated with them, the defendants/appellants have started the same business. Further, there is no deceptive similarity in the two tradenames at all or these two trade marks/names do not cause confusion in the minds of the purchasers. Even for the argument that there is likelihood of confusion is sufficient, the learned counsel for the defendants/appellants would plead that there is never, ever any confusion in the minds of the purchasers because the tradenames "CHANDAMAMA" and "CHANDRABALA" are totally different. The words "CHANDRA" is different from "CHAND" and the words "MAMA" is different from "BALA". The learned counsel for the defendants/appellants would mainly contend that the word "CHANDA" is https://hcservices.ecourts.gov.in/hcservices/ utilised in many other magazines and it is not confined to any particular trade. Further, the defendants/appellants is presently publishing their journals only in Telugu and English version, whereas the plaintiff is publishing their magazine "CHANDAMAMA" in more than 12 languages. Further, the defendants/appellants have already registered their company with the tradename "CHANDRABALA' under the provisions of the Companies Act. According to the learned counsel for the defendants/ appellants, Section 20 (2) of the categorically verify the details of the company to be registered and when there is a similar company naturally their trade name would not have been registered. The defendants company with the trade name "CHANDRABALA" was registered with the Registrar of Companies will give more credence and it also prove that there is no confusion between the two trade names. Further, the appellant also obtained registration under the newspaper registration. Therefore, if there is any unique similarities in the trade name "CHANDAMAMA" and "CHANDRABALA" the authorities would not have registered the trade name of the defendants/appellants and the fact that the newspaper was registered would clearly indicate that there is no confusion in the minds of the purchasers or there is no similarity between the two trade names. In so far as trade mark registration is concerned, the learned counsel for the defendants/appellants would contend that the defendants/appellants have also applied for registeration of their tradename "CHANDRABALA" and initial verification has also been done by the registering authorities. So far, the authorities have not even mentioned that the Plaintiff is an potential objector to the defendants registering their trade name. So, the authorities under the Trade mark Registration does not seem to have any inclination to say there is any similarity between the two trade names. Even under the Companies Act, it is now being verified with the trade mark whether there is any similarity pursuant to the amendment in the Trade Mark Act. Therefore, the Trade Mark is also considered by the Authorities under the Companies Act. 11. According to the learned counsel for the defendants/appeollants, the trade name ""CHANDRABALA" denotes bright and young and therefore also it is different with the tradename of the plaintiff "CHANDAMAMA". Even the words "CHANDA" and "CHANDRA" and "MAMA" and "BALA" are totally different with each other. Further, the word "CHANDRABALA" is written in capital letters whereas the word "CHANDAMAMA" is written sometimes in capital letters andsometimes in small letters by the plaintiff/respondent. 12. When we take into consideration the fact whether the similarities or dissimilarities in these two tradenames by the understanding of purchasers of average intelligence and imperfect recollection, we can definitely come to the conclusion that the words "CHANDAMAMA" and "CHANDRABALA" are totally different and even an ordinary person of average intelligence could easily identify the difference between these two trade names. Even the phonetic difference is vast. Therefore, the conclusion arrived at by the learned Judge that there is deceptive similarity in both the trade names, in our considered view, cannot be accepted. https://hcservices.ecourts.gov.in/hcservices/ 13. On perusal of the definition given to the word "deceptively similar" in Section 2 (h) of the Trade Marks Act, 1999, it is clear that a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. In this regard, the learned counsel for the defendants/appellant relied on the e-mail from blogs to show as to what is the impresson of the people regarding the similarities or dissimilarities between the two trade names "CHANDAMAMA" and "CHANDRABALA" and the resultant opinion is that these two tradenames are totally different. However, at this stage, we are not taking into consideration the same as an evidence and it can be considered only at the time of trial in the suit. But at the same time, when there are totally different phonetical sound with different expression between the two tradenames, definitely, it will not attract the definition given in Sec. 2 (h) of the Trade Marks Act as the tradenames are not deceptively similar to each other or it will cause confusion in the minds of the people. 14. Next, we have to take into account what is the effect of the defendants/ appellants registration in so far as it relates to their magazine. It is pertinent to point out that the defendants/appellants have started their magazine way back in the year 2009. No doubt, a 'cease and desist' notice dated 18.08.2009 was issued by the plaintiffs before instituting the present suit, for which the defendants have given their reply on 23.09.2009 denying the averments contained in the notice dated 08.08.2009 sent on behalf of the plaintiffs. Once again, the plaintiff issued another notice on 22.10.2009, which was also replied to by the defendants on 29.10.2009 which shows that the plaintiff had specifically sought the defendants from infringing their tradename pursuant to the registration of their trade name "CHANDRABALA". In the reply notice, the defendants/appellants have clearly stated that they have no intention to infringe the tradename or trademark of the plaintiff but they would only carry on their trade in the trade name of "CHANDRABALA" which commenced publishing the magazine during August 2009 itself. It is pertinent to point out here that as early as 02.01.2010, the defendants/appellants have filed O.S. No. 58 of 2010 before the Principal District Judge, Ranga Reddy District, Andhra Pradesh for a permanent injunction restraining the plaintiff herein from prohibiting them from carrying on their publication business in the tradename of 'CHANDRABALA". In that suit, the plaintiff was set exparte and an exparte decree was passed. Thereafter, the plaintiff has filed the present suit before this Court. When an exparte decree was passed against the plaintiff in O.S.No. 58 of 2010, without setting aside the same, the plaintiff has filed the present suit which shows the attitude of the plaintiff. In any view of the matter, the plaintiff has not taken any steps from August 2009, the date on which the defendants/appellants started publishing magazine in their tradename "CHANDRABALA" till filing the present suit namely C.S. No. 750 of 2009 on 23.07.2010. The Plaintiff has only now taken steps to set aside the exparte decree passed against them in O.S. No. 58 of 2010 https://hcservices.ecourts.gov.in/hcservices/ on the file of the Principal District Judge, Ranga Reddy District, Andhra Pradesh and the same is pending till date. The respondent/plaintiff has also not explained why they have not filed the same suit before the District Court itself and has chosen to file the suit before this Court. 15. Now, when we analyse the effect of registration, first, the defendants/appellants have registered their trade name as "CHANDRABALA" publications private limited and the Company has been incorporated as early as on 14.10.2009. Thereafter, the defendants/appellants Company also registered itself with the Registrar of Newspapers in India and the title of the newspaper was given as "CHANDRABALA". That was on 25.11.2009. The defendants/appellants company is also registered under the Press and Registration of Books Act, 1867 on 19.04.2010. The authorities have also made a title search in the name of "CHANDRABALA" and from the annexure to the registration, it is evident that the authorities have found very many names namely "Chandraloka", "Chandramalar", "Chandramani", "Chandraprabha", "Chandrapradesh" and so on. Thereafter, the defendants/appellants also applied for registeration of their trade name with the Trade Mark Registry. In fact, there is a guideline for allotment of title even under the Companies Act. As per the guidelines, the authorities under the Companies Act also should verify under Clause 4 titles as to whether