Court frowns upon bad faith adoption
‘Thirumala’ a sacred town in Chittor district, Andhra Pradesh famous for Lord Venkateswara’s Temple https://en.wikipedia.org/wiki/Venkateswara_Temple,_Tirumala is being subject of trademark tussle between two entities dealing in milk and dairy products. The Plaintiff, Tirumala Milk Products Private Limited (TMPL), registered proprietor of the mark filed the suit at the Madras High Court against the Defendants, Swaraj India Industries Limited (SIIL) and Ors, alleging trademark infringement, passing off and other ancillary reliefs. TMPL seeks to restrain SIIL from using the trademark ‘Thirumala’/’Thirumala Milk’ or any other marks deceptively similar including ‘Tirumalaa Daairy’ . The High Court granted an interim injunction in favour of TMPL which is challenged by SIIL.
TMPL in support of its case contended:
1. They are one of the leading dairy companies in India, engaged in procurement, processing, packaging and marketing of milk and other dairy products under its registered trademark and brand name ‘Thirumala Milk’. 2. The mark ‘Thirumala’ is registered in Class 29 in relation to milk, ghee and butter and ‘Thirumala Milk/Thirumala’ are exclusively associated with them.
3. SIIL’s trademark application for the mark ‘Tirumalla’ in class 29 is opposed by TMPL.
4. Enquiries revealed that SIIL has started publicizing their products under the name ‘Tirumalaa Daairy’ , released promotional videos and have social media presence.
5. SIIL’s adoption is in bad faith, to cash on the reputation and goodwill of TMPL. The rival marks are similar so are the products. Milk suppliers of TMPL had started enquiring about SIIL which evidences confusion in the market.
SIIL counter alleged the following:
A. The Court has no jurisdiction and they are yet to commence the business of manufacturing and selling products under the trademark ‘Tirumalaa Daairy’. No cause of action has arisen and the interim injunction granted should be set aside.
B. There is suppression of material facts by TMPL. In relation to their trademark application for the label mark ‘Thirumala Gold’ in Class 29 for ‘milk and milk products’, the Trademark Registry had raised objections under section 11 citing earlier marks such as ‘Thirumala’s Palm Shakthi’ and ‘Thirumala’s Sun Shakthi’ both with respect to ‘edible oil’. In response to the examination report TMPL denied similarity with aforesaid marks. Further, contended that marks should be seen as a whole and the marks registered does not give any monopolistic right over the word ‘Thirumala’. TMPL has not filed copy of the examination report issued by the Trade Mark Registry.
C. Tirumala/Thirumala is a town in Chittor district, Andhra Pradesh, where Lord Venkateswara’s temple is located and several entities use ‘Thirumala/Tirumala/Thirumalai’ as part of their company name. Thus, TMPL cannot monopolize the said words and prevent others from using the same as part of trademark and trade name. SIIL adopted the name Tirumalla Edible Oils and Foods and incorporated Tirumalla Oil Refinery Private Limited in the year 2015.
D. Adoption is bonafide as SIIL are devotees of Lord Venkateswara of Tirumala. They have not used the same as a trademark in respect of any dairy product but only about to commence use and expended considerable time and expenditure.
With regard to suppression allegation and its response to the examination report, TMPL contended that it was on the basis of the label mark with respect to edible oil and not dairy products. In the instant case SIIL have adopted a deceptively similar mark for identical products. Addition of the letter ‘a’ does not make it different and the marks are phonetically similar and the injunction should be confirmed.
The Court after considering the pleadings, arguments and case laws held:
· Documents show that TMPL has substantial business within the jurisdiction of this Court and YouTube video of the inaugural ceremony of SIIL is visible in Chennai. Moreover, only on written statement being filed, the issue of jurisdiction be actually tested. On the basis of the documents on record and the interpretation given to the words ‘carries on business’ the Judge held that the Court has jurisdiction to entertain the issues raised in the plaint.
· TMPL’s case is that they are the registered proprietor of the trademark ‘Thirumala’ and thus, entitled to statutory protection. The averment that TMPL has been in the business of dairy products for a considerable period of time and the mark ‘Thirumala’ has acquired a secondary meaning needs to be considered.
· On the question of concealment of facts, in the instant case it is to be noted that when TMPL sought registration of their mark ‘Thirumala’, the Registry had raised objection that there were two other players, however, providing different services and in a separate industry. It was in the said circumstances TMPL stated that they have a right to use the word ‘Thirumala’ as their trademark for different industry. Moreover, these are issues to be considered at trial and registration per se would necessitate protection from infringement.
· The averment that there is no cause of action will not hold good. It has to be considered that earlier SIIL were not in the business of dairy products and when they used the mark ‘Tirumalaa’ for other products, TMPL never raised objection. However, when they incorporated ‘Tirumalaa Daairy’, a cause has arisen for TMPL and it is justified.
· The contention that Defendants have not commenced sale of milk and milk products and there can be no issue of passing off is not correct. As they have commenced aggressive marketing and advertised the products, said activities itself can be termed passing off.
· In the instant case, the rival marks are the same. TMPL’s ‘Thirumala’ and SIIL ‘Tirumalaa’ can be pronounced in only one manner and slight difference in spelling is not discernible to the eye.
In view of the above the court confirmed the injunction in favour of TMPL.