S. SYED MOHIDEEN Vs. P. SULOCHANA BAI

JUDGEMENT

(1.) The Respondent herein is a registered owner of trade mark 'Iruttukadai Halwa'. Though, this trade mark was got registered by the Respondent/plaintiff sometime in the year 2007, as would be noted hereafter, according to the Respondent/plaintiff the business of selling halwa in the aforesaid name was started by her father-in-law way back in the year 1900. When she found that Appellant was also selling halwa under the trade name 'Iruttukadai Halwa', she filed suit for declaration, permanent injunction and other reliefs on the ground that the Appellant had adopted deceptive similar trade mark to confuse the consumers. This suit was decreed by the trial court on 20.04.2011. Insofar as the relief of rendition of accounts is concerned it was denied by the trial court. The Appellant herein filed an appeal against the said decree before the High Court of Madras. The High Court has dismissed the appeal, thereby affirming the decree of the trial court, vide judgment dated 07.06.2013. It is this judgment which is challenged by the Appellant/defendant in the present proceedings. The case set up by the Respondent/plaintiff in her suit was that her father-in-law, Mr. R. Krishna Singh, started the business of selling halwa in the year 1900 at East Car Street, Tirunelveli Town. After the death of Mr. R. Krishna Singh, the Respondent's husband late K. Bijili Singh, who is the son of Mr. R. Krishna Singh, continued the business till his death in the year 2000. After his death, the Respondent, who is the daughter-in-law of late Mr. R. Krishna Singh, continued to carry on the business of selling halwa. It was also claimed that the product of halwa assumed an unique name of 'Iruttukadai Halwa' not only at Tirunelveli in Tamil Nadu region, but also in other parts of India as well as in foreign countries. It was further claimed that from the year 1900 till now, 'Irruttukadai Halwa Shop' would open only at 5.00 p.m. or 5.30 p.m., and would remain open till 10.30 p.m., or 11.00 p.m., each day and only one item is being sold viz., halwa. Since the quality of halwa assumed significance for the reason that even after the consumers purchased the halwa from Iruttukadai and stored the same in their homes, the taste and quality lasted longer and in view of maintaining such good quality, the consumers used to call this shop as 'Irruttukadai Halwa Shop'. In the long run, the word 'Irruttukadai' became the name of the shop. Since the halwa sold by Irruttukadai is considered as high quality and its taste lasts longer, in the beginning of 1900, when the shop was opened, only one oil lamp used to be lit in the centre of the shop. Due to passage of time, today in the place of oil lamp, the shop is illuminated with a 40W bulb. Unlike other shops, no other illumination is made in the shop in question as decoration. While so, the Appellant/defendant's father, zealous for the goodwill enjoyed by the Respondent from the public and the proceeds emanated from the sale of halwa, started a shop in the name of 'Raja Sweets' just opposite to Tirunelveli Railway Station and sold halwa along with savouries. Subsequently, the Appellant also opened one another shop, 5 kilometers away from the Respondent's shop, in the name of 'Nellai Raja Sweets' and sold all other eatables by decorating the shop with fancy lights. However, the proceeds of the Respondent did not show any decline. After sometime, the Appellant again opened yet another shop at No. 1/1 A, Therkku-vasal opposite to Tirunelveli Railway Station in Madurai road in the name of 'Tirunelveli Iruttukadai Halwa' to deceive the public that the Respondent has opened another shop in the above said address by giving advertisement in Tamil Muyrasu newspaper daily on 26.06.2007. Some of the public, after seeing the advertisement made in the above said newspaper daily, started enquiring the Plaintiff/respondent as to whether any other shop has been opened in the name of Iruttukadai Halwa. As the Plaintiff has no other shop, the Plaintiff issued a lawyer's notice on 20.07.2007 calling upon the Defendant not to use the Plaintiffs trade mark for selling their sweet and savouries, since the Plaintiff has also registered under the Trade Marks Act in the name of 'Irruttukadai Halwa'. The Appellant also sent a reply on 30.07.2007 refusing to stop the selling of halwa. On the receipt of the aforesaid reply dated 30.07.2007 refusing to accede to the demand of the Respondent, the Respondent filed the suit for declaration, permanent injunction and rendition of accounts.

(2.) The Appellant defended and contested the said suit by filing the written statement. It was pleaded that it was not open to the Respondent to claim that the halwa manufactured in their shop alone has got the sweet taste, forgetting for a minute that every halwa manufactured in Tirunelveli by using Tamirabarani river. Further, it was also pleaded that when the Appellant having run the halwa shop business for 40 years in the same place in the name of Raja Sweets and the shop of the Defendant is situated five kilometers away from the Plaintiffs shop, the question of cheating the public does not arise at all. When the Appellant alone has got the name board in the style of 'Tirunelveli Iruttukadai Halwa', the Respondent, having not displayed any such name board either in front of their shop or anywhere in Tirunelveli city, there is no question of making allegation that the Appellant is attempting to deceive the public by using the name of the Respondent's shop. Also the carry bag used by the Appellant with the name 'Raja Sweets' has got a different colour with different picture showing the telephone number. Further, it was pleaded that the Appellant also got registered Under Section 25(2) of the Trade Marks Act, 1999 (hereinafter referred to as the 'Act') with the specific name as 'Tirunelveli Iruttukadai Halwa'. Therefore, when the Registrar under the Trade Marks Act has accepted the application filed by the Appellant for registration of his trade mark 'Tirunelveli Iruttukadai Halwa' and issued the trade mark certificate dated 09.04.208, the Respondent has no right to the suit.

(3.) On the basis of aforesaid pleadings, the trial court framed the following issues: