Scientific Compounds & Processes Pvt.Ltd. v. M/s.National Soapnut Works

In the High Court of Judicature at MadrasDated: 02.09.2009Coram:The Honourable Mr.Justice M.CHOCKALINGAMandThe Honourable Mr.Justice R.SUBBIAHOriginal Side Appeal No.309 of 2004and C.M.P.Nos.21142 and 21143 of 2004Scientific Compounds & Processes Pvt.Ltd.,310, TTK Road,Chennai-600 014now at "CITADEL" Building,117, Dr.Radhakrishnan Salai,Office No.2, 1st Floor,Mylapore, chennai-600 004...Appellant(Plaintiff)..vs..M/s.National Soapnut Works,No.63,3rd Main Road,N.T.Pet,Bangalore-560 002...RespondentOriginal Side Appeal filed under Order XXXVI Rule 1 of OriginalSide Rules read with Clause 15 of the Letters Patent, against thejudgment and decree dated 09.07.2004 made by a learned single Judgeof this Court in C.S.No.44 of 1991.For Appellant : Mr.A.MohanFor Respondent : Mr.PerumBulavil Radhakrishnan JUDGMENT(Judgment of the Court was delivered by R.SUBBIAH, J.,)The unsuccessful plaintiff in C.S.No.44 of 1991 is theappellant herein. This appeal is preferred against the judgment ofa learned single Judge of this Court dated 09.07.2004 in C.S.No.44of 1991, whereby the reliefs sought for by the appellant/plaintiffwere negatived.2. The facts, which necessitated for the appellant/plaintiff toapproach this court, are as follows: https://hcservices.ecourts.gov.in/hcservices/ (a) The plaintiff filed the suit for permanent injunctionrestraining the defendant from using the word SAHEENA together withthe symbol of two trees and from using the trading style, colourscheme, lettering or using any other trade mark or other mark whichis in any deceptively similar to or a colourable imitation of theplaintiff's registered mark SABENA bearing the registrationNo.317396 in Class 3 of Schedule IV of the Trade and MerchandiseMarks Act, 1958 or doing any act or deed calculated to deceivecustomers and from passing off their goods as the goods of theplaintiff by using the word SAHEENA and directing the defendant tosurrender to the plaintiff all cartons, labels, packets, etc.,containing the offending mark SAHEENA and also for rendition of trueaccounts.(b) The appellant/plaintiff herein got engaged in themanufacture and sale of cleaning powder under the brand name SABENA.The brand name SABENA was registered in Class 3 of Schedule IV ofthe Trade and Merchandise Marks Act, 1958. The trade mark bears theregistration No.317386 dated 31.07.1996 in part 'A' of Registrar ofTrade Marks. The said trade mark was originally registered in thename of 'Scientific Compounds & Processes', a proprietary concern byits sole proprietor T.G.Raghunath. Subsequently, it was convertedinto a Private Limited Company. The registration of the trade markhas been renewed from time to time from the year 1976. The renewalhas also been advertised in Trade Mark Journal No.992. The saidtrade mark not only bears the lettering SABENA but also the designof two trees enclosed in a circle and placed above the lettering.Thus, the appellant has become the registered proprietor of SABENAand the appellant has extensive sale of its cleaning powder whichare sold in polythene pouches. In the pouches, the letters ofSABENA printed boldly and conspicuously in white and red lettering.The appellant has extensive sales of its products. The appellant'scleaning powder is manufactured under strict quality control. Theappellant/plaintiff has also incurred a heavy expenditure onadvertising its trade mark SABENA and the same is extremely popularin the market. The name SABENA has now come to identify the cleaningpowder of outstanding quality. In view of the wide spread success ofthe cleaning powder manufactured and sold by the appellant, therespondent/defendant has sought to market the cleaning powder underthe deceptive name SAHEENA. Apart from the trade name, the polythenebag used by the respondent is also with an identical colour scheme,colour combination and lettering to that of the appellant. Thepolythene bag/pouch which has been used by the respondent is almostidentical and deceptively similar to the appellant's polythenepouches. By using the identical and deceptively similar trade markin the polythene pouches, the respondent is passing off its goods asthat of the appellant's goods. The respondent's adoption of theword SAHEENA as well as the identical colour scheme, emblem andpacking on the plastic bag would reveal the fraudulent intention totrade upon and exploit the reputation of the cleaning powder https://hcservices.ecourts.gov.in/hcservices/ manufactured and marked by the appellant and also to gain monetarybenefits. This act of the respondent would cause heavy financialloss to the appellant. Hence, the appellant has filed the suit forthe reliefs mentioned supra.3. The case of the appellant was resisted by the respondentstating that the name used by the respondent SAHEENA cannot be saidto be deceptively similar name, to that of the plaintiff's trademark SABENA. Similarly, the pouches which are being used by therespondent cannot be said to be identical to that of the appellant'strade mark. Further, the appellant is selling its cleaning powder inplastic packets having net weight of 500 grams and that the lettersof SABENA are printed boldly and conspicuously in white and redlettering and that there are other colours in the plastic packet andthat the word "G2 medium to clean anything" and the lettering"beware of imitations". Similarly, the use of the polythene pouchwhich are being used by the respondent for packing the productcannot be said to be a deceptively similar to that of theappellant's product. The respondent has been using the word SAHEENAright from the year 1969, whereas the appellant's trade mark wasregistered only in the year 1976. The respondent is the prior userof the mark SAHEENA. When the appellant was seeking the registrationof the trade mark SAHEENA, it made a search application before theauthorities concerned and by letter dated 22.07.1986, the respondentwas informed that the word SAHEENA could be registered and there wasno other similar marks in existence. The respondent is the prioruser of the cleaning powder and hence at no stretch of imagination,it can be said that the respondent is passing off their goods asthat of the appellant by using the word SAHEENA and adopting thecolour scheme and lettering of the appellant. Thus, the respondentcontended that the appellant/plaintiff is not entitled to thereliefs sought for.4. The learned single Judge on the above said pleadings, framed5 issues and on the side of the appellant, the Director of theplaintiff company was examined as P.W.1 and Exs.P-1 to P-5 weremarked and on the side of the defendant/respondent, the proprietorof the defendant company was examined as D.W.1 and D.W.2 wereexamined and Exs.D-1 to D-20 were marked. On an appreciation of theevidence, the learned single Judge has come to the conclusion thatthe respondent has already been carrying on business even prior tothe appellant under the trade mark SAHEENA and under suchcircumstances, the respondent cannot be restrained from using theirtrade mark SAHEENA and that the appellant has not proved his caseeither by oral or by documentary evidence that the respondent ispassing off their goods as that of the appellant and negatived theclaims made by the appellant. Aggrieved over the same, the presentappeal is filed by the plaintiff. https://hcservices.ecourts.gov.in/hcservices/

5. Advancing arguments on behalf of the appellant/plaintiff,the learned counsel would submit that though eight issues have beenframed, the learned single Judge has not recorded his findings onthe relevant issue, namely, whether the trade mark of the respondentis deceptively and identically similar to the registered trade markof the appellant, viz., SABENA. The learned counsel for theappellant has invited the attention of this court to Ex.P-2, thecopy of appellant's trade mark registration SABENA under No.317386in Class 3, which is available in the typed set of papers, andsubmitted that the appellant has registered their trade mark asearly as 31.07.1976, whereas the respondent has registered theirtrade mark, much later than the registration of the trade mark ofthe appellant. Though the appellant has registered their trade markin the year 1976, they have been using the same right from the year1963. With regard to this, the learned counsel for the appellant hasalso invited the attention of this Court to the grounds ofopposition filed by them under Ex.D-4 before the Registrar of TradeMarks on 16.09.1992, wherein it has been stated by the appellantthat they have been marketing the product under the brand nameSABENA right from 01.01.1963. Thus, by pointing out the statementmade in the grounds of opposition filed before the Registrar ofTrade Marks, the learned counsel for the appellant has vehementlycontended that it is incorrect to state that the respondent is theprior user of the name SAHEENA. Further, by inviting the attentionto Exs.P-4 and P-5, xerox copies of the pouches annexed in the typedset of papers, the learned counsel further contended that thepouches, which are being used by the respondent are similar to thatof the appellant and on a cursory look on the two pouches, one caneasily come to a conclusion that the respondent is passing off thegoods by using the trade mark deceptively and similarly as that ofthe appellant's trade mark. But the learned single Judge, withoutlooking into those aspects, dismissed the suit.6. In this regard, the learned counsel for the appellant hasrelied upon the judgments reported in CORN PRODUCTS REFINING CO., ..vs.. SHANGRILA FOOD PRODUCTS(AIR 1960 SC 142),KAVIRAJ PANDIT DURGA DUTT SHARMA ..vs.. NAVARATNAPHARMACEUTICAL LABORATORIES (AIR 1965 SC 980),K.R.CHINNA KRISHNA CHETTIAR ..vs.. AMBAL AND CO., MADRAS(PTC (SUPP 1)(1) 258 (SC), andCADBURY INDIA LTD., ..vs.. NEERAJ FOOD PRODUCTS (2007 (35)PTC 95 (DEL.). https://hcservices.ecourts.gov.in/hcservices/

7. Learned counsel for the appellant has also invited theattention of this Court to para 26 of the trial court judgment andcontended that the contention of the respondent that they are theprior user of the trade mark SAHEENA is not correct. Learnedcounsel further contended that what was filed before the trial courtby the respondent is only a sales tax registration certificateissued by the Sales Tax Department on 14.10.1969, marked as Exs.D-7and D-8. But the learned single Judge, by mistakenly has construedthe said certificate as a registration certificate of therespondent's trade mark and has come to an erroneous conclusion thatthe respondent is the prior user of the trade mark SAHEENA andthus, he prayed that the judgment under challenge has to be setaside.8. Learned counsel for the respondent/defendant put forth hissubmissions in his sincere attempt of sustaining the judgmentrendered by the learned single Judge.9. The court has paid its anxious consideration on thesubmissions made by the learned counsel on either side.10. The main grievance of the appellant is mainly on two-fold; firstly, the learned single Judge, has not dealt withthe relevant issue, namely, "Whether the trade mark of thedefendant "Saheena" is deceptively, phonetically andvisually similar to the registered trade mark "Sabena" ofthe plaintiff?" and secondly, whether the learned single Judge has come toa conclusion, by wrongly construing the certificate issuedby the Sales tax Department dated 14.10.1969, that therespondent are the prior user of the trade mark SABENAwithout considering the case of the appellant that they havebeen marketing their product from 1963 under the trade nameSABENA and registered the same in the year 1976 ? 11. In the light of the submissions urged by the learnedcounsel for the appellant, the question that has to be decided inthe appeal is whether the trade mark of the respondent "SAHEENA" isdeceptively, phonetically and visually similar to that of theappellant's trade mark and whether the respondent has been usingthe same as the prior user of the trade mark "SAHEENA" ?12. The answer for both questions has to be derived from theevidence available on record as to among those two, who is the prioruser. On a perusal of the materials available on record, we findthat from Exs.D-7 and D-8,i.e., the sales Tax registrationcertificate and the statement of monthly turnover, the respondent https://hcservices.ecourts.gov.in/hcservices/ has been carrying on business under the trade mark SAHEENA from theyear 1969 itself. Though a submission was made by the learnedcounsel for the appellant that the said certificate under Ex.D-7 wasmistakenly construed by the learned single Judge as trade markregistration certificate, in our opinion, the said certificate isthe decisive evidence to come to the conclusion that the respondenthas been using the trade name SAHEENA prior to the appellant.Similarly, Ex.D-8, the statement of monthly turnover filed by therespondent before the authorities concerned, would go to prove thatthey had been carrying on the business in the name of SAHEENA priorto the marketing of the appellant's product. Though yet anothersubmission was made by the learned counsel for the appellant thatthey have been marketing the product under the name SABENA rightfrom the year 1963, absolutely, no legal evidence was adduced by theappellant to show that they are the prior users of the trade nameSABENA. Therefore, the respondent is having a vested right to usethe trade mark SAHEENA, particularly in the circumstances when ithas been proved that the respondent has been using the trade nameright from 1969. The appellant, who entered into the fieldsubsequently, has no justification to say that the trade mark of therespondent is deceptively and phonetically similar to that of theappellant.13. Further, on a perusal of the documents, we do not find anysimilarity between the trade marks of the parties. On a cursory lookon Exs.P-4 and P-5, we could easily find the difference in the sizeof the packets and the style of the letters printed thereon and alsothe symbols found thereon.14. The suit was filed in the year 1991. The Director of theappellant company was examined as P.W.1 in the year 2003, i.e.aftera lapse of 12 years. All along, there was no interim order infavour of the appellant/plaintiff and the respondent/defendant hasbeen continuously carrying on the business under the trade markSAHEENA. It is pertinent to point out that P.W.1, in his oralevidence, has not complained of any prejudice having been caused tothem by the respondent's usage of SAHEENA, particularly when theappellant has specifically alleged that the adoption of the tradename SAHEENA by the respondent has caused heavy financial loss tothem. All these circumstance would clearly indicate that had therebeen any confusion created in the mind of the consumers about thetrade name of the appellant as well as of the respondent, theDirector of the appellant, P.W.1, could have very well deposedbefore the trial court about the prejudice and hardship having beencaused to them. Hence, the claim made by the appellant that thetrade name used by the respondent is deceptively similar to theirtrade name is not correct. In view of the same, the respondent hadpossessed unquestionable right to continue the business with thesaid trade mark. It is pertinent to point out that the objectionraised by the appellant for the registration of the trade mark by https://hcservices.ecourts.gov.in/hcservices/ the respondent was negatived by the Assistant Registrar of TradeMarks by order dated 28.01.1998. 15. Further, the decisions cited by the learned counsel for theappellant have dealt with the goods which had a deceptive andphonetic similarity. But in this case, we do not find anydeceptive and phonetic similarity and therefore, we are notinclined to rely upon those decisions, to decide the issue involvedin this appeal. Hence, in our opinion, the appellant has not madeout a case before the learned single Judge to grant the reliefssought for in their favour and we do not find any error bothfactually and legally in the judgment under challenge. Therefore wehold that the appellant has not made out a case before this Court torebut the finding arrived at by the learned single Judge. Accordingly, the appeal is dismissed. No costs. ConnectedC.M.Ps.are closed.GlSd/-Asst. Registrar//True Copy//Sub Asst. RegistrarToThe Sub Assistant Registrar,Original Side, High Court,Madras.+ 1 cc to Mr. Perumbulavil Radhakrishnan, Advocate SR No.43831+ 1 cc to Mr. A.A.Mohan, Advocate SR No.44232RL(CO)SR/22.9.209Judgment in O.S.A.No.309 of 2004