TULASI INDUSTRIES Vs. SAPTHAGIRI INDUSTRIES AND ANOTHER

JUDGEMENT

(1.) In this appeal, challenge is to the order dtd. 8/6/2020 passed by the learned Principal District Judge, at Mahabubnagar, in I.A.No.2190 of 2019 in O.S.No.210 of 2019, dismissing the application filed by the appellant/plaintiff under Order 39 Rules 1 and 2 of Code of Civil Procedure, seeking temporary injunction against the respondents from:

(2.) It is the case of the appellant/plaintiff that the appellant is a firm dealing in edible oils under the registered trade mark styled as "TASTY GOLD"; that the predecessor of the appellant-firm had surveyed the market and only after satisfying that no other firm has the trade mark with the unique design and style as depicted in "TASTY GOLD" logo, obtained the registration vide No.3136998 dtd. 16/12/2016 in Class-29 under the Trade Marks Act, 1999; that the predecessor of the appellant is the originator of aesthetic features on the label as appearing in "TASTY GOLD" logo and enjoys copyright for the trade mark; that the trade mark was assigned to the appellant firm vide Deed of Assignment dtd. 11/10/2018 thereby the appellant became the "subsequent proprietors" of the trade mark; that the appellant firm obtained registration of the trademark full label "TASTY GOLD" vide No.4039640 in Class-29 under the Trade Marks Act; that the appellant has been spending huge money in promoting its goods which helped in their substantial turnover and also considerable goodwill and reputation of the trade mark; that to ensure quality of the edible oils, the appellant periodically sends the same for testing; that the respondent is a newcomer into the business of edible oils and located near the appellant firm; that the respondent's application No.3999625 for registration of mark 'TASTY DROPS' has a mention that the same is 'proposed to be used' as on 16/11/2018; that the application of the respondent has been refused by the authorities; that the appellant having noticed that the respondent is using similar pouches containing the mark 'TASTY DROPS' amounts to infringement of the rights of the appellant under the Trade Marks Act and Copyright Act and the respondent has been passing off his goods as the goods of appellant firm; that the appellant issued "Cease and Desist" notice dtd. 15/12/2018 to the respondent, to which the respondent issued a vague reply dtd. 25/12/2018; that the appellant filed the suit on 11/11/2019 and an injunction order was granted against the respondent in I.A.No.2190 of 2019; that after hearing both the parties, the Court below dismissed the I.A.No.2190 of 2019 and vacated the injunction order.

(3.) It is the case of the respondent No.1 that it is a partnership firm registered under the Indian Partnership Act dealing in manufacture, processing and marketing of edible oils under various trademarks, more specifically "TASTY DROPS" and "TASTY PLUS+"; that the contention of the appellant that the trademarks of the respondent are deceptively similar is false; that the word "TASTY" is a descriptive word and the appellant cannot claim exclusive right over the same; that the words are phonetically identical cannot be maintained as the words "Drops, Plus+ are not found in the appellant's trade mark; that the words "Drops" and "Plus+" are completely different suffixes and are not identical to the word "Gold" suffix of the appellant; that the mark of the appellant "Tasty Gold" is a generic word having individual meaning for each word and such word is a usual term and can be used by anybody and therefore cannot qualify for any protection; that the appellant cannot claim monopoly over the word "Tasty"; that the respondent has not copied on its pouches the artistic and aesthetic features and design of the appellant and the respondent's mark pouches contain an artifact of a lady which cannot be seen in the packaging pouches of the appellant; that as per the Trade Marks Act, the whole trade mark has to be seen and not the individual elements inasmuch as the word "Tasty" is only an element of mark of appellant and not the complete trade mark; that the application of the appellant vide No.4376849 dtd. 13/12/2019 for registration of the word "Tasty" has been objected to and kept pending by the authorities; that Sec. 30 of the Trade Marks Act, 1999, limits the rights in the Registration to use the marks (words)/images (logos) which are common to trade and adopted by the respondent with honest practices; that the respondent filed various pouches commonly used in the trade that uses the words "Tasty" as well as "Gold" as well as the oil and palm seeds, groundnut, sunflower in common parlance for edible oil; that Sec. 30(2)(a) clearly exempts the usage of the word which indicates kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services; that the word "Tasty" is indicative of the characteristics of the goods being cooked using the oil; that though the word "Gold" also indicates the quality of the product and does not extend any protection, the respondent did not choose to use "GOLD" though its usage is permitted; that a combined reading of Ss. 17, 27, 28, 29, 30 clearly establish that there is no infringement of the appellant mark "Tasty Gold" by the respondent's usage of marks "Tasty Drops" or "Tasty Plus+"; that the words "Tasty" and "Gold" being generic in nature, the appellant cannot claim any protection or monopoly.