Defendant is not only using identical Trade mark as well as design of Plaintiff but also passing off its services and looking to similarities”. Therefore, trial Court was of opinion that, Plaintiff is entitled to injunction as prayed for and Defendant is not entitled for vacating interim order granted.

MIPR 2018 (1) 0051 = MANU/KA/2308/2017

 

IN THE HIGH COURT OF KARNATAKA AT BENGALURU

All Well Formulations, Mysore

versus

 

Swathi and Co., Bangalore

MISCELLANEOUS FIRST APPEAL NO. 3831 / 2017(IPR) DECIDED ON: 13.09.2017

Judge

Veerappa, J.

Counsel

For Appellant/Petitioner/Plaintiff: Harikrishna S. Holla, Adv. For Respondents/Defendant: G.R. Praveen Kumar, Adv.

 

Code of Civil Procedure, 1908

Order XXXIX Rule 1

Order XXXIX Rule 2

Order XXXIX Rule 4

Order 43 Rule l(r)

Copyright Act, 1957

Design Act, 2000

Food Safety and Standards Act, 2006

Trade marks Act, 1999

Section 11

Section 27

HEAD NOTE

Trade mark – The trial was the fact taher was an application filed by defendants u/ Order XXXIX Rule 4 of CPC and injuction application by plaintiffs u/Order XXXIX Rules 1, 2 and 4 of Code of Civil Procedure, 1908/CPC. Determining merits of case of grant of injunction it was, Held, Trial Court recorded a finding that, “even the application submitted by Plaintiff for registration of its Trade mark TURKY PLUS PURE OLIVE OIL reveals that, Plaintiff has claimed prior user from 11th November, 2002. But however, fact remains that Plaintiff submitted application for registration of mark on 23rd July, 2015. Defendant is admittedly carrying on business under mark TURKIZ PURE OLIVE OIL PLUS from 2005 as per contents of objections filed against I.A. No. 1. This admission of Defendant pre-supposes that, Plaintiff is also prior user of mark TURKY PLUS PURE OLIVE OIL. Plaintiff has also produced photograph containing picture of tin sold by Defendant by using mark PURE OLIVE OIL. Moreover design, colour and appearance is almost identical with Registered design of Plaintiff. Trial Court, further recorded a finding that, “arguments advanced on behalf of Plaintiff will have to be upheld as Trade mark used by Defendant is deceptively similar with Registered Trade mark of Plaintiff. No doubt, application filed by Plaintiff in earlier suit was dismissed, but said suit was based on prior user of Trade mark Turky Pure Olive Oil and not for Registered Trade mark of Plaintiff Turky Plus Pure Olive Oil. Just because Plaintiff failed in earlier litigation, it cannot be held that, Plaintiff is also not entitled for relief in present suit. Defendant is not only using identical Trade mark as well as design of Plaintiff but also passing off its services and looking to similarities”. Therefore, trial Court was of opinion that, Plaintiff is entitled to injunction as prayed for and Defendant is not entitled for vacating interim order granted. Accordingly, by impugned order allowed application filed by Plaintiff and dismissed application filed by Defendant. Impugned order passed by trial Court is based on prima facie material placed on record. Appeal dismissed.

JUDGMENT

  1. Veerappa, J.
  2. This is Defendant’s Miscellaneous First Appeal against the order dated 27th April, 2017 made in O.S. No. 1265/2017 on the file of the XVIII Addl. City Civil

 

and Sessions Judge, Bengaluru City, (CCH-10), allowing the application filed by the Plaintiff under Order XXXIX Rule 1 and 2 of Code of Civil Procedure, praying to restrain the Defendant, its agents, servants, workers, dealers and any person claiming through or under it from infringing the Plaintiff’s well established and Registered Trade mark/design/tin of Turky Plus Olive Oil in red or green colour tin with unique artistic work, get up and design in respect of its edible oil and passing off the product by using offending Trade mark Pure Olive Oil and tin, till the disposal of the suit and further dismissing LA. No. 2 filed by the Defendant under Order XXXIX Rule 4 of Code of Civil Procedure.

  1. The present Respondent who is the Plaintiff before the Trial Court, filed suit in
    S. No. 1265/2017 against the Appellant/Defendant for permanent injunction
    restraining the Defendant from using the Plaintiff’s well established and Registered
    Trade mark/Copyright/Design/TIN of Turky plus pure Olive Oil by using offending
    Trade mark/Design/Tin Turkiz Pure Olive Oil Plus and for mandatory injunction
    directing the Defendant to remove identical and deceptively similar Trade mark and
    to render accounts and costs, contending that, the Plaintiff has been doing the
    business of manufacturing, marketing and selling of glucose powder, arrow root
    powder, bleach powder, castor oil, edible oil, olive oil etc, since 2001 under several
    brand names of Turkiz Pure Olive Oil etc, with unique logos, writing style,
    appearance, colour combinations, back ground which are invented words by the
    Plaintiff. Plaintiff also obtained licence to run the business, adopted and using the
    Trade mark Turky Plus Pure Olive Oil with unique artistic work, get up tin etc. since
    November, 2002. It is further stated that the Plaintiff applied for registration of the
    Trade mark, brand names with the Trade mark registry and accordingly the Trade
    mark was Registered in Class 29 vide TM No. 3014931 dated 26* December, 2016
    and Trade mark registration certificate was also issued in favour of the Plaintiff.
  2. It is the further case of the Plaintiff that during the year 2001, Plaintiff started the
    business in olive oil under the name and style Turky Plus Pure Olive Oil in 125 ml
    red and green colour tin. The business was largely welcomed by the retail stores of
    same sector and having received such a huge acclamation, Plaintiff decided to
    Register the name and logo under the Trade marks Act, Copy Right Act and Design
    Accordingly Plaintiff obtained registration under the Design Act vide Design
    No. 2742269 for his TIN under the name and style TURKIZ PURE OLIVE OIL.
  3. It is the further case of the Plaintiff that he has been using the Trade mark since
    November, 2002 and earned goodwill and reputation in the market and distributing
    its products in the States of Kerala, Karnataka and Tamil Nadu. The Plaintiff has
    spent extensive amount to establish and protect the goodwill and earned brand
    value associated with the mark such as sole right to use the mark and design, TIN.
    The Plaintiff came to know in the market that the Defendant is also using, producing,
    marketing and importing the same products and doing the businesses with similar
    logo, label, artistic work/design as that of Plaintiff’s Trade mark e., TURKIZ PURE
    OLIVE OIL PLUS. On comparison of both the marks, it is evident that they are
    identical and similar in nature in their font, style, colour combination, background,
    label, logo, design and TIN. The artistic work, logo, get up and TIN has been copied
    verbatim by the Defendant in order to mislead the customers and to encash upon the
    goodwill and reputation earned by the Plaintiff over years. Therefore, use of the
    similar name, font, design, artistic work, get-up by the Defendant amounts to
    infringement of Copyright and Design TIN of the Plaintiff. Therefore, Plaintiff filed
    the suit.
  4. In the said suit, the Plaintiff also filed an application for temporary injunction
    under Order XXXIX Rule 1 and 2 Code of Civil Procedure, reiterating the averments
    made in the plaint.
  5. The Defendant filed objections and contended that the Plaintiff has not come to
    the Court with clean hands and suppressed the real facts of the case. The Defendant
    contended that the Plaintiff had also filed a suit in O.S. No. 6684/2016 for temporary
    injunction which was rejected. Suppressing the said fact, the Plaintiff has filed the
    present suit for similar relief and therefore, the suit is not maintainable. It is further
    contended that the claim of the Plaintiff that it is the Registered proprietor of the
    cylindrical tin having obtained registration of the said design in the year 2000, is
    not correct. It was further contended that the cylindrical tin design is an obsolete
    design and existing on public domain since time immemorial and lacks any novelty.
    The Defendant using the Trade mark Pure Olive Oil since 2015 for the sale of olive
    oil which is imported from Turkey and other European countries and the Defendant
    has acquired vast experience and established high reputation and goodwill and
    has also obtained registration under the Food Safety and Standards Act, as well as
    VAT, and Defendant has designed a particular art work, design and got up for
    marketing olive oil.
  6. It was further contended that the ‘pure olive oil’ is a common generic word and it
    does not qualify as a Trade mark under Section 11 of the Trade marks Act. A large
    number of people have been selling the olive oil under the brand name ‘Pure Olive
    Oil’ and the Trade mark ‘Turky’ is a geographical name and no one can claim
    monopoly in respect of the Trade mark ‘Pure Olive Oil’. The various applications
    submitted by the Plaintiff for registration of the Trade mark have been objected to by
    the Trade mark Registry. Therefore, he sought to dismiss the application.
  7. The Defendant also filed an application under Order XXXIX Rule 4 of Code of
    Civil Procedure to vacate the interim injunction granted in favour of the Plaintiff,
    raising similar contentions as raised in the objection. The said application was
    resisted by the Plaintiff by filing objections, reiterating the averments made in the
  8. The Trial Court, considering both the applications and the objections filed by the
    learned Counsel for the parties, by the impugned order dated 27th April, 2017, allowed
    the application filed by the Plaintiff under Order XXXIX Rule 1 and 2 of Code of
    Civil Procedure and granted temporary injunction as prayed for, and rejected the
    application filed by the Defendant under Order XXXIX Rule 4 of the Code of Civil
    Hence the present appeal is filed by the Defendant.

 

  1. I have heard the learned Counsel for the parties to the lis.
  2. Sri Harikrishna S. Holla, learned Counsel for the Appellant/Defendant
    contended that the impugned order passed by the Trial Court granting injunction in
    favour of the Respondent/Plaintiff is contrary to the material on record. The Trial
    Court failed to notice that the Appellant/Defendant adopted Trade mark ‘Pure Olive
    Oil’ for marketing olive oil in the year 2005. The Respondent/Plaintiff adopted the
    same in the year 2011. Without considering the said aspect of the matter, the Trial
    Court granted temporary injunction in favour of the Plaintiff. He further contended
    that the Trial Court failed to notice that the Plaintiff had filed similar suit in the past
    which was rejected. The said fact is suppressed by the Plaintiff and therefore, Plaintiff
    has not come to the Court with clean hands. On that ground alone, the Trial Court

ought to have rejected the application. He further contended that the Plaintiff has been playing fraud and deceiving gullible consumers and has been selling Helianthus Annulus oil, sesamundicum oil blending it as pure olive oil. On perusal of the application filed by the Plaintiff under TM No. 3014931, 3014932, 2407358, it is evident that the same have been applied in class 29 of Trade marks Act, 1999, which provides for registration of Trade mark in respect of edible oil. The said aspect of the matter is not considered by the Trial Court. Therefore, he sought to set-aside the order passed by the Trial Court, by allowing the present appeal.

  1. Per contra, Sri G.R. Praveen Kumar, learned Counsel for the Plaintiff/Respondent,
    while filing the objections, sought to justify the impugned order passed by the Trial
    Court and contended that the Defendant has not produced any material document
    before the Court to show that Defendant is the prior user of the Trade mark ‘Turkiz’
    and design of tin, the Trial Court has rightly rejected the application for vacating the
    interim order and therefore, the appeal is liable to be dismissed. He further contended
    that the Defendant has adopted the Trade mark in the year 2005, whereas Plaintiff
    adopted the same in the year 2011 is false. The Plaintiff has adopted and has been
    using the Trade mark ‘Turky Plus Olive Oil’ with unique artistic work, get up, TIN
    and design for his brand name since November, 2002. The registration details clearly
    indicates that Turky Plus Pure Olive Oil has class 29, TM No. 3014931 registration
    date 26th December, 2016 and Turky Plus Pure Olive Oil, Class 3, TM No. 3014933 is
    Therefore, he sought to dismiss the appeal.
  2. In view of the rival contentions urged by the learned Counsel for the parties, the
    only point that arises for consideration in the present appeal is:

Whether the Trial Court is justified in allowing the application filed by the Plaintiff under Order XXXIX Rule 1 and 2 of Code of Civil Procedure and dismissing the application filed by the Defendant under Order XXXIX Rule 4 of the Code of Civil Procedure, in the facts and circumstances of the case?

  1. It is the specific case of the Defendant in the present appeal that he is the prior
    user of the Trade mark styled as TURKY PLUS PURE OLIVE OIL from 2005 and the
    Plaintiff is using it from 2011 and therefore, the Trial Court should not have granted
    injunction in favour of the Plaintiff.
  2. It is the specific case of the Plaintiff that he is using the Trade mark since
    November, 2002 and the Defendant has adopted the said Trade mark in the year
    The question as to who is first user of the Trade mark in dispute has to be
    adjudicated after a full-fledged trial.
  3. The Trial Court, considering the entire material on record, recorded a finding
    that, “even the application submitted by the Plaintiff for the registration of its Trade
    mark TURKY PLUS PURE OLIVE OIL also reveals that the Plaintiff has claimed
    prior user from 11th November, 2002. But however, the fact remains that the Plaintiff
    submitted application for registration of the mark on 23rd July, 2015. The Defendant
    is admittedly carrying on business under the mark TURKIZ PURE OLIVE OIL PLUS
    from 2005 as per the contents of the objections filed against l.A. No. 1. This admission
    of the Defendant presupposes that the Plaintiff is also the prior user of the mark
    TURKY PLUS PURE OLIVE OIL. The Plaintiff has also produced the photograph
    containing the picture of the tin sold by the Defendant by using the mark PURE
    OLIVE OIL. On comparison of this photograph with the pictures as shown in the
    design registration certificate of the Plaintiff, it is noticed that Defendant is marketing

Turkiz Pure Olive Oil Plus. The Registered design of the Plaintiff carries the words “guaranteed best quality” which are identically used on the tin belonging to the Defendant. The design, colour and appearance is almost identical with the Registered design of the Plaintiff. The Defendant has also used the word TURKY in the beginning and PLUS in the end which is used by the Plaintiff in its Registered Trade mark. Except to that extent, there are other similarities in the offending mark used by the Defendant which are deceptive in nature”.

  1. The Trial Court, further recorded a finding that, “the arguments advanced on
    behalf of the Plaintiff will have to be upheld as the Trade mark used by the Defendant
    is deceptively similar with the registered Trade mark of the Plaintiff. Though it was
    argued on behalf of the Defendant that the Plaintiff had also filed similar suit and
    same is pending in O.S. No. 6684/2016 and his application for grant of temporary
    injunction was also rejected by this Court. No doubt, the application filed by the
    Plaintiff in the earlier suit was dismissed, but the said suit was based on prior user
    of the Trade mark Turky Pure Olive Oil and not for the registered Trade mark of the
    Plaintiff Turky Plus Pure Olive Oil. The said application was dismissed by relying
    on Section 27 of the Trade mark Act as the suit was for the unregistered Trade mark.
    But the instant suit is based on the registered Trade mark and hence just because the
    Plaintiff failed in the earlier litigation it cannot be held that the Plaintiff is also not
    entitled for the relief in the present suit. The Defendant is not only using the identical
    Trade mark as well as the design of the Plaintiff but also passing off its services and
    looking to the similarities”.
  2. Therefore, the Trial Court was of the opinion that the Plaintiff is entitled to the
    injunction as prayed for and Defendant is not entitled for vacating the interim
    order granted. Accordingly, by the impugned order dated 27th April, 2017, allowed
    the application filed by the Plaintiff and dismissed the application filed by the
  3. The impugned order passed by the Trial Court is based on the prima facie material
    placed on record. Such a finding of fact recorded by the Trial Court cannot be
    interfered by this Court in exercise of appellate jurisdiction under Order 43 Rule l(r)
    of the Code of Civil Procedure. Accordingly, the Miscellaneous First Appeal is
  4. However, it is made clear that taking into consideration the dispute between the
    parties in respect of Trade mark TURKY PLUS PURE OLIVE OIL with unique artistic
    work, it is proper to direct the Trial Court to decide the suit as expeditiously as
    possible, within an outer limit of one year from the date of receipt of certified copy of
    this judgment, subject to cooperation by both the parties.
  5. It is also made clear that any observations made by the Trial Court while granting
    injunction and dismissing the application for vacation of injunction and the
    observations made by this Court while deciding the present appeal, shall not come
    in the way of either of the parties in establishing their respective rights independently,
    in the pending suit. The Trial Court shall proceed strictly in accordance with law
    and pass decree based on the oral and documentary evidence to be adduced and
    produced by the parties to the lis.

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