NIRAPARA ROLLER FLOUR MILLS PVT. LTD. REPRESENTED BY ITS MANAGING DIRECTOR, XAVIER CHACKO, Vs. AMMINI KARNAN, PROPRIETRIX, K.K.R. MILLS AND ORS.

JUDGEMENT

(1.) THE defendants in a passing off action aggrieved by the decree of the District Court, Kottayam restraining them from manufacturing, marketing, distributing or displaying any products by displaying the trade mark "Nirapara and Device'' and trade name and brand name "Nirapara" or any other brand name identical, similar or deceptively similar to the trade mark of the respondent plaintiff have preferred this appeal. The parties will be referred to as they were before the District Court.

(2.) IN brief, the case of the plaintiff as pleaded was that the first plaintiff Ammini Karnan who is the mother of the second plaintiff Biju Karnan is the proprietrix of K.K.R. Mills and the second plaintiff Biju Karnan is the proprietor of K.K.R. Flour Mills. The third plaintiff K.K.R. Agro Mills (P) Ltd. is a company of which the Directors are K.K. Karnan, husband of the first plaintiff and father of the second plaintiff as well as plaintiffs 1 and 2. plaintiffs 4 and 5 M/s, K.K.R, Food products and S.N. Food Products respectively are two registered partnership firms of which Sri. K.K. Karnan is the Managing Partner. The first defendant (the first appellant) Nirapara Roller Flour Mills (P) Ltd. was originally incorporated as a company under the Companies Act under the name South Kerala Food Processors (P) Ltd. It was later that the name was changed to the present name Nirapara Roller Flour Mills (P) Ltd. The second defendant Xavier Chacko is the Managing Director and the third defendant Rosamma Xavier and the 4th defendant Sunitha Jose are the Directors of the first defendant Company. The first plaintiff is the Proprietrix of the trade mark "Nirapara and Device" and plaintiffs 2 to 5 are using the said trade mark as assigned by the first plaintiff. The trade mark of the plaintiffs "Nirapara" shows a para filled with paddy and inflorescence of coconut tree in its middle and two paddy shoots at both sides of the para. The general public, customers and consumers have accepted this trade mark as the trade mark of the plaintiffs' products. This is printed upon all packets, jute bags etc. of plaintiffs' products as well as their advertisements. The plaintiffs are manufacturers of rice, rice products, rice flours for various dishes like puttupodi, idiyappom podi, iddali podi, dosa podi, appom podi, palappam podi etc. Sri. K.K. Karnan started business in paddy, rice and rice products in the name and style K.K. Karnan and Company in 1977. His brother K.K. Padmanabhan joined as a partners in the business. Sri. Karnan was doing the business with trade mark "Nirapara" and Sri. Karnan honestly adopted the trade mark "Nirapara and Device" and dissolved the partnership with Sri. K.K. Padmanabhan and continued business with the same trade mark "Nirapara and Device" under the new name S.N. Rice Mills Ltd. by inducting his wife Ammini Karnan as partner. The plaintiffs' products are popularly known with the name Nirapara and Device. Nirapara has become the trade name and brand name of plaintiffs' products. The plaintiffs' products are all of superior quality. They are sold in various parts of Kerala and all other States in India. They are marketed in foreign countries also. Because of their high quality and purity, plaintiffs' products popularly called as Nirapara products are purchased by customers. The trade mark itself is attracting customers for buying various products of the plaintiff. It was the plaintiff who first started to use the trade mark and trade name "Nirapara". The word Nirapara has become the trade name and brand name of the plaintiffs' products. The plaintiffs are enjoying high reputation and goodwill in respect of their products which are being identified by the trade mark "Nirapara and Device". No one has the right to use the trade mark "Nirapara" without the knowledge and assignment from the first plaintiff. The plaintiffs have expended heavily for advertising their products through various media both in India and abroad. The volume of business of the plaintiffs is increasing every year. The plaintiffs have acquired right over trade mark "Nirapara and Device" and the trade name and brand name "Nirapara" belongs absolutely to the plaintiffs.

(3.) IT was a joint written statement which was filed by the defendants. It was contended that the suit is not maintainable. In view of the allegation that K.K. Karnan executed an assignment deed selling the entire right of the unregistered trade mark "Nirapara and Device" along with the goodwill to Smt. Ammini Karnan for an amount of Rs. 1000/ - Sri. Karnan has no locus standi to institute the suit against the defendants. The South Kerala Food Processors Pvt. Ltd. was registered as a private limited company on 12 -4 -1988. In the year 1995 the Directors of that company passed a resolution in terms of Section 21 of the Companies Act changing the name of the company as Nirapara Roller Flour Mills Pvt. Ltd. From the year 1988 onwards the first defendant company is carrying on the business of operating flour mills for wheat, rice or other grains and deal in such products of grains. One of the main object of the company is to manufacture, produce, process, purchase, store, import and also deal in food products out of wheat, paddy, rice, barley etc. Ever since the incorporation of the company they have honestly adopted the trade mark "Nirapara" since 1990 for its business. To the defendants' knowledge no one is using a similar trade mark in respect of wheat products such as maida, sooji and aatta. The defendants have been using the trade mark continuously, extensively and with bonafides ever since 25 -3 -1990 in respect of the above products. Because of this continuous and extensive use, the defendants have obtained a very high reputation. The defendants' trade mark has become exclusively associated with the products of the defendants' company since 1991. The first defendant company filed an application before the Registrar of Trade Marks in the name of South Kerala Food Processors for registration of the word "Nirapara" brand with a device of corn and container full of flour in respect of wheat products such as maida, sooji, aatta, bran and bran flakes. The above application was numbered as 543880 under Clause 30. The application was accepted by amending the goods such as maida, sooji and aatta with disclaimer of word bran device of corn and device of container full of flour. The application submitted by the defendants was advertised as accepted in the Trade Mark Journal dated 1 -7 -1996. Though the opposition filed by the first plaintiff was upheld by the registering authority, the defendants have preferred appeal before the Intellectual Property Appellate Board and the matter has not become final. The defendants have also filed an application for registration of its trade mark Nirapara brand under Clause 31 for registering its products with respect to the production and marketing of bran, bran flakes, cattle and poultry feeds. The Registrar of Trade Mark issued a certificate of registration of trade mark for the trade name and device Nirapara brand. The defendant company is the owner of trade mark Nirapara brand and the company is enjoying the rights conferred by registration as per the the provisions of the Trade Mark Act. The registered owner of the trade mark has the exclusive right to use the trade mark in relation to the goods in respect of which the trade mark is registered. Because of the continuous use of the trade mark Nirapara since 1990 it has attained very high reputation and has become exclusively associated with the aforesaid goods of the company. Because of the superior quality of the goods and marketing skills, the defendant company became very popular and the trade name with its device Nirapara became distinctive of its goods. The plaintiffs never obtained a registration for the trade mark Nirapara either under Clause 30 or Clause 31. From the affidavit filed before the Registrar of Trade Marks it is clear that the plaintiffs have no right over the trade mark. The trade mark "Nirapara" was not adopted by the plaintiffs as alleged in the plaint. The agreement dated 27 -6 -1977 alleged to have been executed between K.K. Karnan and K.K. Padmanabhan reveals the fact that the firm name for marketing their rice products was K.K. Karnan and Company. The plaintiffs have no case of adoption of the disputed trade mark with respect to the defendants' products viz., maida, aatta and sooji. They are also not making any claim over any of the goods mentioned in Clause 31 of the Trade Mark Rules pertaining to bran, bran flakes, cattle and poultry feeds. Even as per the allegations in the plaint adoption of the disputed trade mark by their establishment has reached a stage of fragmentation. The plaintiffs have no right over the trade mark "Nirapara". They have not established that the disputed trade name Nirapara was being used with respect to the goods mentioned therein. The trade mark Nirapara has become distinctive and distinguished with the defendants' products. The defendants have never taken advantage of the popularity and reputation or goodwill enjoyed by the plaintiffs. Even though the trade mark and trade name used by the plaintiffs may be identical and similar to that of the defendants, they have no mala fide intention to pass off their products as that of the plaintiffs by deceiving and confusing the general public and customers. In 1996 itself plaintiffs were aware of the use of the trade name Nirapara by the defendants. Even though a lawyer notice was issued to the defendants regarding this no action was taken in pursuance of that notice. The plaintiffs are therefore guilty of acquiescence and they are not entitled for a discretionary relief of injunction. At this stage the plaintiffs are not entitled to initiate any action. No explanation is given by the plaintiffs for the inordinate delay of 9 years in filing the suit, especially when the defendants have been, in the market for more than 15 years and the defendants sales have gone up to crores of rupees. The first defendant's company's name was changed with the approval of the registrar of companies. The plaintiffs who were aware of this change of name did not take any action under Section 20 of the Companies Act. The first defendant company is having an independent entity and reputation in the market with large number of customers. The suit is liable to be dismissed.