KAALAI MALAR PUBLICATIONS PRIVATE LIMITED Vs. DINAMALAR

JUDGEMENT

(1.) ALL these appeals have arisen in this way :- One T. V. Ramasubbier originally started a Tamil daily under the name and style of 'Dinamalar' at Trivandraum, Kerala State. Thereafter, he shifted his business to Tirunelveli, wherefrom the Tamil daily 'Dinamalar' was published. The words 'Dina' and 'Malar' have been registered with the Registrar of Trade Marks in Class 16 in registration No. 302070 on 13-1-1975. Ramasubbier had left behind five sons by name, R. Venkitapathy, R. Krishnamurthy, R. Lakshmipathy, R. Raghavan and R. Sathyamurthy. The proprietary concern 'Dinamalar' was converted into a firm consisting of Ramasubbier and his five sons. K. Ramasubbu and K. Venkatraman are the sons of Krishnamurthi and L. Ramasubbu and L. Aadimoolam are the sons of Lakshmipathi. Hema, Bhuvaneswari, Sudha, Kalpagam are the wives of K. Ramasubbu, L. Ramasubbu, Adhimoolam and Venkatraman respectively. K. Ramasubbu, Venkatraman, L. Ramasubbu and Adhimoolam are working as Executives in Dinamalar.

(2.) THE above facts are not in dispute. THE case of the respondents/plaintiffs is that the above said four persons know the business secrecies of running a daily newspaper successfully and they tried to float a company under the name and style of Kaalaimalar Publications (P.) Ltd. to bring out a Tamil daily under the name and style of 'Kaalaimalar'. Finding some difficulties in their starting the company, at their instance their wives have formed the company under the name and style of Kaalaimalar Publication Limited. THEy are trying to bring out a daily Tamil Newspaper under the name and style of 'Kaalaimalar'. According to the plaintiffs, by forming the company, the defendants are trying to pass off their company as a unit of the plaintiffs i.e., as a sister concern of Dinamalar. THE plaintiffs have filed a suit in C.S. No. 524 of 1999 seeking the relief of injunction to restrain the defendants namely the appellants herein, from infringing their trademark, from passing off their newspaper and also for infringement of copyright.

(3.) NOW without using the name Dina Malar and the logo of lotus and the picture or photo of T. V. Ramasubbier and his name, if the defendants/appellants are to run a company in the name of Kaalai Malar Publications (P) Limited, it cannot be said that such act of the defendants amounts to passing offThe next contentions of the plaintiffs/respondents are that (i) the defendants/appellants are trying to infringe the trade mark of the plaintiffs, (ii) they are trying to pass off their goods as that of the plaintiffs/respondents and (iii) they are infringing the copy right of the plaintiffs/respondents There is distinction between the infringement action and passing off action. In Ruston and Hornby Ltd. v. Z. Engineering Co., the Apex Court has pointed out that in a passing off action, the issue that would arise is, "Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiffs goods." The Apex Court has also pointed out that in are infringement action, the issue is, "Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiff's registered trade mark." A distinction has to be drawn between the same mark and similar mark. When the same mark is used in a sense the public is deceived into purchasing the defendants goods in the belief that they are the plaintiffs goods. So a registered trade mark is a casualty. It is the duty of the Court to protect the trade mark. In such case, no further question would arise.