Madras HC has injuncted Kute Group from using the name Tirumalaa in marketing, and sale of Products

Tirumala Milk Products Private Limited vs. Swaraj India Industries Limited and Ors

CITATION: O.A.No.330 of 2020 and O.A.No.331 of 2020 in C.S. (Comm. Div.) No.190 of 2020

DECIDED ON: 15.10.2020

The case was argued before Hon’ble Mr Justice C.V.Karthikeyan. The facts of the present case is that The plaintiff, has filed the suit under Sections 134, 135 of the Trade Marks Act, 1999 read with provisions of the Original Side Rules of the Madras High Court and the Code of Civil Procedure, 1908, seeking a judgment and decree against the defendants for permanent injunction from infringement of the plaintiff's registered trademark 'Thirumala' / 'Thirumala Milk' and for a permanent injunction restraining the defendants from passing off their business or milk and dairy products as or for the products of the plaintiff by restraining them by using the plaintiff's trademark 'Thirumala' / 'Thirumala Milk' or any other marks deceptively similar including 'Tirumalaa Daairy' and for a direction against the defendants to deliver up to the plaintiff for the purpose of destruction/erasure all infringing materials bearing the name 'Tirumalaa Daairy' or any other mark deceptively similar to the plaintiff's trademark 'Thirumala' / 'Thirumala Milk' and for a direction against the defendants to pay to the plaintiff a sum of Rs.1,01,00,000/-as damages and also for costs of the suit.

The council for plaintiff argued that the trademark and the name 'Thirumala Milk / Thirumala' are solely and exclusively associated with the plaintiff across all segments of the trade and the general public associate them with the plaintiff's business alone. The plaintiff claimed that the defendants had deliberately and dishonestly adopted the mark 'Tirumalaa Daairy' with the sole intention to mislead the general public and to cash in on the reputation and goodwill of the plaintiff. It was stated that the name is phonetically similar to that of the plaintiff and the product marketed is also the same. It was argued that the adoption of the mark 'Tirumalaa Daairy' by the defendants was a deliberate violation of the plaintiff's proprietary and statutory rights. It was stated that the defendants cannot claim innocence. It was stated that the balance of convenience was in favor of the plaintiff, since the plaintiff has registered their mark.

The council for defendants argued that that this Court has no jurisdiction to try and entertain the suit. It was further stated that the plaintiff has no prima facie case for grant of ad interim or interim injunction. It was also stated that the balance of convenience was not in favor of the plaintiff. It was further stated that the plaintiff would not suffer any injury if the reliefs are not granted. It was further stated that the plaintiff had suppressed material facts and has made misleading statement and therefore the plaintiff was not entitled for any relief. It was argued that the marks should be seen as a whole and the marks registered does not give any monopolistic right over the word 'Thirumala’. It was also stated that in the examination, the plaintiff had taken a stand that the mark 'Thirumala' is distinct from the cited marks 'Thirumala' (word per se) and 'Thirumala' (Telugu). It was also stated that there were about 300 companies using 'Thirumala / Tirumala / Thirumalai' as a part of their Company name / Corporate name. It was therefore stated that the plaintiff cannot monopolize the said words and prevent others from using the same as a part of trademark and trade name.

The court reasoned that he plaintiff has substantial business within the jurisdiction of this Court and they have also had an earlier occasion to institute a suit within the jurisdiction of this Court to protect its trademark. It was also said the defendants have commenced aggressive marketing of the products and have advertised the products. This itself can be termed as passing off. There need not be actual sales of the products, but when there is aggressive advertisement and soliciting of the customers of the plaintiff, and holding out though the products have not been launched, still they are “a name of trust in the dairy sector', it is evident that the intention of the defendants is to encroach and take advantage of the reputation already built by the plaintiff.

It was held that,

“The defendants have changed the names of the 1st and 2nd defendants by including the name 'Tirumalaa Daairy'. They are still phonetically the very same word as used by the plaintiff. They still use the mark 'Tirumalaa' in their pouches. They have also started to advertise the products, advertise their same brand name and have also been directly involved in trying to draw away the existing customers of the plaintiff. These are all acts of infringement. Steps have also been taken to pass off the products of the defendants as that of the plaintiff.” (Para 76)

“The interim injunction already granted will have to be necessarily made absolute till the disposal of the suit. Applications are allowed as prayed for. No order as to costs(Para 77)”

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Kamalini