JUDGMENT
A. Kulasekaran, J.
1. O.A. No. 324 of 2001 has been filed by S.V.S. Oil Mills, represented by its Partner S.V. Chandra Pandian against Rajkumar, trading as Nellai Agro Foods & S.V.S. Oil Mills for interim injunction restraining the respondents from manufacturing, marketing and advertising or offering sale or use the expression S.V.S. as his domain name or website in the electronic media or otherwise for selling their products Palmolein oil or refined edible oil or any kind or other food article using the trademark S.V.S. or trading style S.V.S. Oil Mills or any other cognate or similar goods as the goods of the applicant. O.A. No. 2580/2001 was filed by the respondent to vacate the interim injunction dated 11.4.2001 passed in O.A. No. 324/2001. For the sake of convenient, S.V.S. Oil Mills represented by its Partner S.V. Chandra Pandian shall hereinafter refer to as applicant and S.V.S. Rajkumar is referred to as respondent.
2. The applicant herein has filed a suit for permanent injunction on account of pacing off of the respondent’s palm oil and other goods namely refined oil etc., using the trade mark S.V.S. or similar such expression in the course of manufacture and sale or advertisement in all media and consequential other relief. The applicant further states that they have been manufacturing, marketing, advertising edible oil of various kinds since 1969-1970 by adopting the initial S.V.S. or distinctive style as their trade mark and they have been using it all over India. Their business name and trade mark is one and the same and public used this trademark S.V.S. for buying the applicant’s product. Their annual turnover is about 31 Crores during 1998-1999. The conduct of the respondent to use identical trademark in relation to the very same goods would amount to passing off of the respondent goods as the goods of the applicant. The adoption and use of the said trade mark by the respondent is only for the purpose of exploiting the commercial goodwill attached to the applicant trade mark S.V.S. If the respondent is permitted to apply the trade mark in their business, the applicant would be put to great loss. Originally, the respondent was manufacturing and selling the products under the name and style of Pandian Oil Mills and subsequently changed the name as Nellai Agro Refineries. On 4.2.2001, the respondent changed his previous two trading style of Pandian Oil Mills and adopted the style of S.V.S. and on account of an advertisement by the respondent in Daily Thanthi, the applicant was receiving number of telephone calls. Few days later, the respondent marketed in identical style of writing and containers. The applicant and their predecessors are in the business for over three decades by using the trademark S.V.S. As such, the adoption of the same trade style by the respondent would create confusion in the minds of the purchasers. The suit is based on the registered trademark filed on the basis of exclusive use of the trademark S.V.S. and to protect the commercial goodwill accrued to the three letters S.V.S. The Registrar of Trade Mark imposed a condition of disclaimer for the letters S.V.S. because of the period of user claimed on the date of filing of trade mark application in the year 1973. However, the applicant has been using the same continuously and substantially all over India till date. Originally, the trademark certificate contains seven names, one partner Mrs. Gandhimathi retired, after the final verdict of the Supreme Court, the names of S.V.Sivalinga Nadar, and S.V. Hari Krishnan were removed from the trademark register with their knowledge. The respondent being the son of S.V. Sivalinga Nadar has no right to use the trade name.
3. The respondent in his pleadings stated that the trade mark would show that all the family Members had been trading as S.V.S. Oil Mills in edible refined groundnut oil business and that the registration of this mark shall give no right to exclusive use of the letters S.V.S. by the applicant. The name S.V.S. as it represents S. Yelayuthaperumal Nadar and Sons, hence, nothing wrong in using the three letters SVS by them also. A suit was filed in C.S. No. 1067 of 1987 by the applicant against his father for a declaration that the applicant herein is entitled to exclusive right of the name S.V.S. Oil Mills and also sought for permanent injunction. An application No. 6293/1987 was also filed in the said suit for an interim injunction and the same was also granted on 22.12.87 in favour of the applicant. The same was subsequently vacated by the final order dated 28.03.1988 wherein it was held that there was no similarity between these two trade marks taking into account the common features between the two samples and also the difference between the two labels and that none of the parties can claim exclusive right over the name S.V.S. against the other. The said order was also passed taking into account the clause Nos. 25 & 26 of the Award passed by the arbitrator. Against the said order, O.S.A. No. 48 of 1998 was filed by the applicant, which was also dismissed as withdrawn on 27.10.1993. C.S. No. 1016/1987 was also dismissed as withdrawn which was suppressed in the affidavit by the applicant. Injunction against passing off can be filed only between strangers and not between the same family members. Even to the naked eye, a comparison of the marks of the applicant and the respondent would show substantive differences. No confusion cause between the trade mark of the applicant and the respondent to anybody and hence prayed for vacating the injunction.
4. The point for consideration in this application is whether the injunction granted in O.A. No. 324 of 2001 is liable to be vacated or not?
5. Both the sides have admitted the below mentioned facts:-On 24.3.1969, SVS Oil Mills was registered as a Partnership firm with the Registrar of Firms wherein, S.V.Sivalinga Nadar, S.V. Harikrishna Nadar, S.V. Chandra Pandian Nadar, S.V. Kasilinga Nadar, S.V. Ramachandran Nadar, S.V. Natesan Nadar and C. Gandhimathi were partners. The said Gandhimathi retired from the partnership on 24.11.1982 and the firm was re-constituted on 25.11.1982. Due to some disputes, arbitrators were appointed and an award was passed on 9.7.1984 and the properties were allotted to all the six partners which is evident from clause 4 of the award. Under clause 26, it is evident that the name of S.V. Sivalinga Nadar shall not be used by any other parties except Sivalinga Nadar. In Clause 27, S.V. Chandra Pandian, S.V. Kasilingam, S.V. Ramachandran and S.V. Natesan shall be entitled to use the name of S.V.S. Oil Mills as it represents to as that “S.V.S.” represents S. Velayutha Perumal Sons. S. Velayutha Perumal representing the name of their father of the then partners. After the award was passed, a new deed of partnership was entered into between S.V. Chandra Pandia Nadar, S.V. Kasilinga Nadar, S.V. Ramachandran, S.V. Natesan. In respect of the said award, so many legal proceedings were initiated before this Court by the disputants. Ultimately, in the second run, the Apex Court by order dated 11.1.1998 confirmed the award which become final. However, the auditors appointed by the Court to go into the accounts of the firm, admittedly not filed the report till date. A suit was filed in C.S. No. 1016 of 1987 by the applicant herein against Sivalinga Nadar. In the said suit, in A.No. 6293/1987 interim injunction was granted on 22.11.1982 which was vacated by the final order on 20.3.1988, thereafter, O.S.A. No.48 of 1988 was filed which was dismissed as withdrawn by the applicant herein on 27.10.1993. The suit was also ultimately withdrawn by the applicant on 24.2.1997, as the S.L.P. was pending before the Supreme Court as stated by the applicants, however, this Court has granted leave to both the sides to file a suit afresh and put forth their respective defence.
6. The disputes between the parties are resolved by the award passed by the arbitrator, which was ultimately confirmed by the Apex Court. In clauses 26 and 27 of the award it has been held as follows:
“26. The name of “S.V. Sivalinga Nadar” shall not be used by any of the parties except Sivalinga Nadar himself as business name. Similar restriction shall also apply to the various firewood depots, Ambica Oil Mills, Maligai Stores, Shakti Oil Mills, hitherto run by the firm of Sivalinga Nadar & Bros. 27. Disputants 3, 4, 5 and 6 shall be entitled to use the name of “S.V.S. Oil Mills” as it is represented to us that ‘S.V.S.’ represents S. Velayudha Perumal Sons. The S. Velayudhaperumal representing the name of the father of the disputants.”
7. The learned senior counsel for the applicant argued that the said two clauses 26 & 27 made it clear that the respondents herein have no right whatsoever to use the trade name of S.V.S.
8. Learned counsel for the respondent has taken the defence that the applicant is a disclaimer as such they are not entitled to sought for any relief muchless the relief of passing off. Learned senior counsel appearing for the applicant relied upon the decision reported in Registrar of Trade Mark v. Ashok Chandra Rakhit Ltd., wherein it has been held in para 8 & 9 as follows:
“8. The third thing to note is that the avowed purpose of the section is not to confer any direct benefit on the rival traders or the general public but to define the rights of the Proprietor under the registration. The registration of a trade mark confers substantial advantages on its Proprietor as will appear from the sections grouped together in Chapter IV under the heading “Effect of Registration”. It is, however, a notorious fact that there is a tendency on the part of some Proprietors to get the operation of their trade marks expanded beyond their legitimate bounds. An illustration of an attempt of this is to be found in- ‘re Smokeless Power Co.’s Trade Mark’, 1982 (1) Ch 500 (F).
Temptation has even led some Proprietors to make an exaggerated claim to the exclusive use of parts or matters contained in their trade marks in spite of the fact that they had expressly disclaimed the exclusive use of those parts or matters. Reference may be made to- ‘Geers Ltd. v. Pearman Corder Ltd.’ 1922 (39) RPC 406 (G), commonly called the Banquet case. The real purpose of requiring a disclaimer is to define the rights of the Proprietor under the registration so as to minimize, even if it cannot wholly eliminate the possibility of extravagant and unauthorized claims being made on the score of registration of the trade marks.
9. The last feature of the section is its proviso. That proviso preserves intact any right which the Proprietor may otherwise under any other law have in relation to the mark or any part thereof. The disclaimer is only for the purposes of the Act. It does not affect the rights of the Proprietor except such as arise out of registration. That is to say, the special advantage which the Act gives to the proprietor by reason of the registration of his trade mark do not extend to the parts or matters which he disclaims. In short, the disclaimed parts or matters are not within the protection of the statute.
That circumstance, however, does not mean that the Proprietor’s rights, if any, with respect to those parts or matters would not be protected otherwise than under the Act. If the Proprietor has acquired any right by long user of those parts or matters in connection with goods manufactured or sold by him or otherwise in relation to his trade, he may, on proof of the necessary facts, present an infringement of his rights by a passing off action or a prosecution under the Indian Penal Code. Disclaimer does not affect those rights in any way.”
9. Learned counsel for the respondent argued that even to the naked eye, a comparison of the marks of the respondent with the marks of the applicant would show glaring dis-similarities. In other words, no similarities at all in two marks. In applicant’s mark, below SVS there is an inverted triangle whereas in the respondent mark, it is SVSR in bold letters with a capital R being held up under a crown held by two lines. There is a total absence of the inverted triangle in their mark. The dissimilarities have to be given more important than the alleged phonetic similarity or similarity in using the word SVS and argued that there is no scope for the purchaser being mis-lead.
10. Learned counsel for the applicant also relied on the following decisions:
1. K.R. Chinna Krishna Chettiar v. Sri Ambal & Co., wherein it has been held that whether the proposed trade mark is used in a normal and fair manner if similarity fair and normal user is assumed of the existing registered marks, will there be such a likelihood of deception that the proposed mark ought not to be allowed to be registered is a question which has to be decided on a comparison of the competing works as a whole and their distinctive and essential features. When a dealer sells snuff under a registered trademark and that word “Ambal” is the distinctive and essential feature of the trademark and that word fixes itself in the recollection of an average buyer with imperfect recollection of an average buyer with imperfect recollection, another dealer also dealing in snuff cannot be allowed to get the trade mark registered, of which the word “Andal” is a distinguishing feature as there is a striking similarity between the words “Ambal” and “Andal”. The Court further held that mainly because of distinctive use in both the marks, it cannot be said that the resemblance does not lead to confusion when it is likely that majority of the customers are not able to the understand the distinction between the meaning of the two words. It is further held that the resemblance between the two marks must be considered with reference to the ear as well as the eye and ocular comparison is not always the decisive test. The learned counsel relying upon this states that when a customer approaches a shopkeeper and demands S.V.S. Oil, it will definitely create a confusion in the mind of the shopkeeper as well as the customer while delivering it or receiving it since it is not possible to mention the dis-tinctiveness of a particular oil by both of them. Hence, it will cause confusion in the minds of both of them.
2. B.K. Engineering Co., v. U.B.H.I. Enterprises, , which is a case where the Plaintiffs cycle Bell was under the trade mark B.K. and the defendant used the trade mark BK81 for his cycle bell, the court held that the defendant’s mark deceptively similar and is likely to cause confusion in the mind of the general public. An injunction was granted restraining the defendant from using the said mark.
The above said decisions were relied on by the applicant to show that the ratio laid down in the above decisions would squarely apply to their case.
11. Learned counsel for the respondent relied on the following decisions in support of their case:
In Bengal Waterproof Limited v. Bombay Waterproof Mfg. Co., wherein it was held that
“As act of passing off is an cat of deceit and tort every time when such tor
tuous act or deceit is committed by the defendant, the plaintiff gets a fresh
cause of action to come to the Court by appropriate proceedings. Similarly,
infringement of a registered trademark would also be a continuing wrong so
long as infringement continues. Therefore, whether the earlier infringement
has continued or a new infringement has taken place cause of action for
filing a fresh suit would obviously arise in favour of the plaintiff who is aggrieved by such fresh infringements of trade mark or fresh passing of actions alleged against the defendant. Consequently, in our view even on merits the learned Trial Jude as well as the learned single Judge were obviously in error in taking the view that the second suit of the plaintiff in the present case was barred by Order 2, Rule 2, Sub-rule (3) CPC.”
This judgment not helpful to the respondent, on the contrary supporting the case of the applicant to an extent. However, in the case in hand, this Court has granted leave to both the parties to agitate their claim by a suit afresh.
The learned counsel for the respondent relied upon the judgment in Lakshmi
Narayan Karva and Ors. v. Sathyanarayanan Khubchand, 1974 II MLJ it was held
that:-
“7. As we mentioned earlier, on the insistence of the Assistant Registrar of Trade Marks before registration of the appellants trade mark, the appellants disclaimed the right to exclusive use of the devices of crescent and star with the expression “SALAMMONIAC” and it was only thereafter their application was accepted by the Assistant Registrar by order dated 9th March, 1964 and the application as accepted for registration was advertised in the Trade Marks Journals on 1st June 1964. Having regard to the said disclaimer both the Assistant Registrar in his order on the respondents application for rectification of the register by expunging the appellant’s trade mark, and Maharajan, J., in the judgment in C.M.A. No. 151 of 1969 thought that the only marks which are left are the three letters “RLK” presenting the initials of the proprietors of the business. The Assistant Registrar, while allowing the respondents application has observed that it is not possible for him to come to the conclusion that letters “RLK” have been so extensively used as to have been accepted by the public and trade as a trade mark of the registered proprietor. The learned Judge has observed in his judgment that to register these three letters would certainly have the effect of interfering with the rights of the existing or future firms having the initials “RLK” to attach the initials of their firm name to their good.”
This case also not applicable to the respondent since the arbitrators in their award categorically held that applicant’s firm is entitled to the letters SVS and it was confirmed by the Apex Court of the country.
The learned counsel for the respondent also relied upon the judgment in Ruston and Hornsby Ltd. v. Zamindara Engineering Co., it was held as follows :-
“In an action for infringement where the defendant’s trade mark is identical with the plaintiffs mark, the Court will not enquiry whether the infringement is such as is likely to deceive or cause confusion. But, where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusion or
deception arising from similarity of marks is the same both in infringement
and passing-off actions.”
“This judgment is also not relevant to the facts of the case and in no way
useful to the respondent herein.
In S.M. Dyechem Limited v. Cadbury (India) Limited, AIR 2000 SC
2114 it was held as follows:-
“47. Here the point is in relation to relative strength of the parties on the question of passing off. As discussed under Point 5 the proof of resemblance or similarity in case of passing off and infringement are different. In a passing off action additions, get up or trade-dress might be relevant to enable the defendant to escape. In infringement cases, such facts do not assume relevance (See Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories Ltd., : Ruston and Hornsby Ltd. v. Zamindara Engineering Co., and Wander Ltd. v. Antox India Pvt. Ltd., 1990 Suppl SCC 727).
49. In the same tone, Halsbury (Trade Marks, 4th Ed., 1984 Vol.48 Para 187) says that in a passing off action the “degree of similarity of the mark or other features concerned is important but not necessarily decisive, so that an action for infringement of a registered trade mark may succeed on the same facts where a passing of action fails or vice versa”. As to vice-versa, Kerly says (Para 16.12) an infringement action may fail where plaintiff cannot prove registration or that its registration extends to the goods or to all the goods in question or because the registration is invalid and yet the plaintiff may show that by imitating the mark or otherwise, the defendant has done what is calculated to pass off his goods as those of plaintiff.
This is not relevant to the facts of the case on hand and as such it is not helpful to the respondent. The learned counsel also relied catena of decisions which are not relevant to the present case.
12. Both the learned Counsel relied upon the below mentioned judgment:-
In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 (2) CTC 430 it was held as follows:-
“10. Under Section 28 of the Trade and Merchandise Marks Act on the registration of a trade mark in Part-A or B of the register, a registered proprietor gets an exclusive right to use the trade mark in relation to the goods in respect of which trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by the Act. In the case of an unregistered trade mark, Section 27(1) provides that no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark, Sub-section (2) of Section 27 provides that the Act shall not be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof. In other words, in the case of an un-registered trade marks, a passing off action is maintainable. The passing off action depends upon the principle that nobody has a right to represent his goods as the goods or service under the pretence that they are those of another person. As per Lord Diplock in Erwen Warnink BV v. J. Townend & Sons, 1979 (2) AER 927, the modern tort of passing off have five elements i.e., (1) a misrepresentation (2) made by a trader in the course of trade (3) to prospective customers of his or ultimate consumers of goods or services supplied by him (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.
35. Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:-
(a) The nature of the marks i.e., whether the marks are word marks are label marks or composite marks i.e., both words and label works.
(b) The decree of resemblance between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing the order for the goods, and
(g) Any other surrounding circumstances which may be relevant in the extent of dis-similarity between the competing marks.”
13. In the above said case, the Supreme Court has held that in an action for passing off on the basis of unregistered trade mark for deciding the question of deceptive similarity, the Court shall look into the nature of marks or word or label marks or composite marks i.e., both words and label works; the decree of resemblance between the marks, phonetically similar, nature of goods in respect of which they are used as trademarks, the similarity in the nature, character and performance of the goods of rival traders, class of purchasers who are likely to buy the goods bearing the marks they require, education and intelligence and degree of care they are likely to exercise in purchasing or using the goods, the mode of purchase of the goods or placing order for the goods and any other surrounding circumstances which may be relevant in the extent of dis-similarity between the competing marks. The Supreme Court also cautioned the weightage to be given to each of the aforesaid factors depend upon the facts of each case.
14. In the case on hand, the applicant is marketing their one litre oil in a sealed yellow polythene cover. The letters SVS in a distinctive style by prominently displaying in red on a yellow background. The letter SVS are written in a distinctive style. The said three letters SVS is well known among the consuming public. The said yellow polythene plastic cover is then placed inside a transparent carry bag wherein the letter SVS is visible through the carry bag. The size of the container depends upon the quantity of the oil. The applicant also now sells edible oil in half litre packets, one litre packet/containers. It is stated by the applicant that leading restaurants in Tamilnadu and other parts in the course of demonstration of food packets, the Hotel management display advertisement board informing the public that the food served in the hotel is prepared by using S.V.S. Oil and their trade mark S.V.S. has acquired the status I.S.I. mark for quality. The respondent started re-packing polythene oil using the trade mark SVS with an additional letter “R” in small font. The respondent also manufacture edible oil within two kilometers distance from the applicant’s place of business. It is the case of the applicant that the public and trade believes that the articles manufactured and marked with the trade mark SVS by the respondent is from the applicant. The applicant and respondent produced their respective products before this Court and the Court has seen both the containers and came to the conclusion that the trade mark used by the respondent is similar with that of the trade mark of the applicant. Moreover, the nature of the goods in respect of which a trade mark is used by the respondent is the same kind of edible oil. The class of purchasers mostly belonged to middle class and uneducated who are likely to buy the products bearing the marks they require be deceived. The mode of purchasing the product of the applicant and placing of the order for the goods, they have to necessarily mention the name S.V.S. The applicant has been marketing their products under the name and style of S.V.S. for about 3 decades and the total turn over according to the applicant during 1998-1999 was about Rs. 30,88,85,656/-. Already, I have pointed out that in the award it was held that the respondent is not entitled to use the name S.V.S.
15. The applicant has made out a prima facie case and the balance of convenience is in favour of the applicant. Denial of an injunction will likely result in damages to the applicant herein. Hence, this Court feels that the applicant is entitled to an injunction restraining the respondent from passing off their goods as the goods of the applicant. Accordingly, injunction is granted as prayed for.
16. In the result, O.A. No. 324/2001 is allowed and O.A. No. 2580 of 2001 is dismissed. No costs.