2015 (3) TMI 1197 - SC - Indian Laws

Infringement of trade mark - permanent injunction seeked - Held that - The rights in common law can be acquired by way of use and the registration rights were introduced later which made the rights granted under the law equivalent to the public user of such mark. Thus. we hold that registration is merely a recognition of the rights pre -existing in common law and in case of conflict between the two registered proprietors, the evaluation of the better rights in common law is essential as the common law rights would enable the court to determine whose rights between the two registered proprietors are better and superior in common law which have been recognized in the form of the registration by the Act. When we apply the aforesaid principle to the facts of the present case, we find that the impugned judgment of the High Court, affirming that of the trial court is flawless and does not call for any interference. From the plethora of evidences produced by the Respondent she has been able to establish that the trade mark Truttukadai Halwa has been used of by her/her predecessors since the year 1900. The business in that name is carried on by her family. It has become a household name which is associated with the Respondent/her family. The Court has also noted that the Halwa sold by the Respondent s shop as Truttukadai Halwa is not only famous with the consumers living in Tirunelveli, but is also famous with the consumers living in other parts of India and outside. Reference is made to an article published in Ananda Viketan, a weekly Tamil magazine dated 14.9.2003, describing the high quality and the trade mark Iruttukadai halwa sold by the Plaintiff, the findings and conclusions reached by the Court below is perfectly in order, hence, the same does not call for interference, carries more merit, for, this name has been further acknowledged in a Tamil song from the movie Samy .When the above Tamil cinema song being repeatedly played in the State of Tamil Nadu has also spoken more about the trade mark Truttukadai halwa , it goes without saying that the Plaintiffs trade mark name Truttukadai halwa has become a household name in the nook and corner of this State, therefore, no one can claim as his own the name Truttukadai halwa except the Respondent. The Court is of the considered opinion that allowing the Defendant to use the trade mark Tirunelveli Iruttukadai Halwa will amount to deceiving the public, hence, no one can be permitted to encroach upon the goodwill and reputation of other party, particularly when a specific mark, though may be a descriptive word, has acquired a subsidiary meaning and is fully admitted by the particular company and when a party who cannot be termed as a honest current user of the mark on the reputation and goodwill of the company, it will constitute invasion of the proprietary right, hence, the same cannot be permitted any longer. In a situation like this, it is the bounden duty and obligation of the Court not only to protect the goodwill and reputation of the prior user, but also to protect the interest of the consumers.

Issues Involved:
1. Jurisdiction of the court to hear the suit.
2. Defendant's mala fide intention in using Plaintiff's address.
3. Plaintiff's lack of a logo.
4. Loss of profit, reputation, and goodwill to the Plaintiff.
5. Plaintiff's right of proprietorship.
6. Plaintiff's entitlement to a decree of declaration.
7. Plaintiff's entitlement to permanent injunction.
8. Plaintiff's entitlement to rendition of accounts.
9. Order for destroying items with the Plaintiff's trade mark.
10. Defendant's right to sell halwa using the Plaintiff's trade mark.
11. Reliefs entitled to the Plaintiff.

Detailed Analysis:

1. Jurisdiction of the Court:
The trial court and High Court both affirmed that they had jurisdiction to hear the suit. This was not a point of contention in the judgment.

2. Defendant's Mala Fide Intention:
The courts found that the Defendant's use of the name "Tirunelveli Iruttukadai Halwa" was with mala fide intention to deceive the public and encroach upon the goodwill and reputation of the Plaintiff's established trade mark "Iruttukadai Halwa."

3. Plaintiff's Lack of a Logo:
The Defendant argued that the Plaintiff did not display any name board with the trade mark "Iruttukadai Halwa." However, the courts found that the Plaintiff's trade mark had acquired distinctiveness and goodwill over the years, irrespective of the absence of a logo.

4. Loss of Profit, Reputation, and Goodwill:
The courts held that the Plaintiff had established a significant reputation and goodwill in the trade mark "Iruttukadai Halwa" since 1900. Allowing the Defendant to use a similar name would deceive the public and damage the Plaintiff's established goodwill.

5. Plaintiff's Right of Proprietorship:
The courts recognized the Plaintiff's right of proprietorship over the trade mark "Iruttukadai Halwa," which had been used by her family since 1900 and was registered in 2007.

6. Plaintiff's Entitlement to a Decree of Declaration:
The trial court decreed in favor of the Plaintiff, declaring her exclusive right to the trade mark "Iruttukadai Halwa." This was affirmed by the High Court, which noted the Plaintiff's long-standing use and registration of the trade mark.

7. Plaintiff's Entitlement to Permanent Injunction:
The courts granted a permanent injunction against the Defendant, restraining them from using the trade mark "Tirunelveli Iruttukadai Halwa." The High Court emphasized the need to protect the Plaintiff's goodwill and prevent public deception.

8. Plaintiff's Entitlement to Rendition of Accounts:
The trial court denied the relief of rendition of accounts, and this was not contested further in the higher courts.

9. Order for Destroying Items with the Plaintiff's Trade Mark:
The courts ordered the destruction of all items bearing the trade mark "Tirunelveli Iruttukadai Halwa," used by the Defendant, to prevent further deception and protect the Plaintiff's proprietary rights.

10. Defendant's Right to Sell Halwa Using the Plaintiff's Trade Mark:
The courts held that the Defendant had no right to sell halwa under the name "Tirunelveli Iruttukadai Halwa," as it infringed on the Plaintiff's established trade mark and would deceive the public.

11. Reliefs Entitled to the Plaintiff:
The courts awarded the Plaintiff the reliefs of declaration, permanent injunction, and destruction of infringing items. The Plaintiff was also entitled to costs quantified at Rs. 50,000.

Conclusion:
The Supreme Court upheld the judgments of the trial court and the High Court, recognizing the Plaintiff's prior use and registration of the trade mark "Iruttukadai Halwa." The courts emphasized the importance of protecting the Plaintiff's goodwill and preventing public deception. The Defendant's registration of a similar trade mark was not sufficient to override the Plaintiff's established rights. The appeal was dismissed, and the Plaintiff was awarded costs.

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