Can a person use TM with registering a Trade Mark? The case of Hatsun Agro Product V/S Arogya Rahasya

08 Mar Can a person use TM with registering a Trade Mark? The case of Hatsun Agro Product V/S Arogya Rahasya

It would be extremely naive to presume that the customers and the distribution channel operators would be able to differentiate between the two names and decipher that they emanated from two different companies:Hon’ble Judges/Coram C.V. Karthikeyan, J. in THE HIGH COURT OF MADRAS. No. 2134 of 2020 in C.S. No. 717 of 2019, Decided On: 07.01.2021 by Counsels:For Appellant/Petitioner/Plaintiff: G. Kalyan Jhabakh

The appellants have filed the present suit under Sections 134 and 135 of the Trade Marks Act 1999 and the relevant provisions of the Civil Procedure Code, the Original Side Rules of the Madras High Court and the Commercial Courts Act 2015 seeking protection from infringement of their registered Trademark ‘AROKYA’.

The appellants, Hatsun Agro Product Ltd., are a company incorporated under the Companies Act 1956 primarily engaged in the food processing industry particularly with respect to dairy products. They have an established market in various places in South India, and have expanded their dairy products from ice creams, dairy whitener, skimmed milk powder to ghee, butter, cooking butter, milk, varieties of curd, paneer and buttermilk. The appellants have established goodwill and reputation not only within the country but also outside the country and they export their products to 32 other countries. The appellants state that they have registered their Trademark AROKYA as a word mark not only in English but also in Malayalam and Telugu and also as a device mark in Tamil. The appellants have registered the word mark AROKYA and the device AROKYA in Classes 29, 30, 31 & 32 under the Trade Marks Act, 1999.

The grievance of the appellants is that the respondents have commenced marketing rock salt under the name AROGYA RAHASYA. The usage of the mark AROGYA RAHASYA by the respondents is stated to be with the sole intention to encroach upon the reputation and goodwill built by the appellants for the Trademark AROKYA. The respondents have not registered their mark. However, they use the symbol TM to mislead the general public that their mark is also registered under the Trademarks Act 1999.

The appellants highlight that the respondents have applied for registration in the year 2019 which has been done even after a notice was issued by the appellants calling upon the respondents not to infringe the registered mark of the appellants. It is under these circumstances that the suit has been filed by the appellants seeking protection from infringement of their registered Trademark AROKYA.

The respondents were set ex parte by order dated 24.08.2020 since they did not answer the summons issued to them. The appellants then filed the present application seeking a Summary Judgment in view of the uncontroverted facts stated in the plaint.

The court in the present suit observed that from the records submitted, there was every possibility of the general public being misled into thinking that the product of the respondents was actually a product of the appellants in view of the similarity in the name AROKYA used by the appellants and the name AROGYA used by the respondents. The difference was just a letter. The court asserted that by using the word ‘G’ instead of ‘K’, the respondents cannot claim that they have adopted a totally different trademark. Thus the court held that it would be extremely naive to presume that the customers and the distribution channel operators would be able to differentiate between the two names and decipher that they emanated from two different companies. Even though the respondent had used the mark for the product rock salt, the appellants had registered their mark AROKYA under Clause 30 which also included the product salt. Hence the court was of the opinion that the confusion caused by the respondents by continued usage of the trademark AROGYA RAHASYA could not be permitted to continue.

Further, the decision taken by the respondents to abstain from participating in the judicial proceedings was also to be noted and the court concluded that it was clear that the respondents had no defense to put up against the claim made by the appellants. Thus in view of all the reasons, the court held that the appellants were entitled to a Summary Judgment as provided under Order XIII-A of the Code of Civil Procedure with costs. Accordingly, the application was allowed with costs.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Section 35; Trade Marks Act, 1999 – Section 134, Trade Marks Act, 1999 – Section 135.Disposition:Application Allowed