IN THE SUPREME COURT OF INDIA
S. Syed Mohideen v. P. Sulochana Bai
2015 (2) RCR (Civil) 810
Decide on: 17.03.2015
Respondent was a registered owner of trade mark ‘Iruttukadai Halwa’. Respondent was in the business of selling halwa in the aforesaid name since 1900 through it’s father-in-law.
When Respondent 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 deceptively similar trade mark to confuse the consumers.
Respondent’s suit was decreed by the trial court on 20.04.2011. Appellant filed an appeal against the said decree before the High Court of Madras. High Court dismissed the appeal vide judgment dated 07.06.2013.
Against the said judgment, the Appellant filed the present appeal before the Supreme Court.
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.
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.
Carry bag used by the Appellant with the name ‘Raja Sweets’ has got a different colour with different picture
Appellant also got registered under the Trade Marks Act, 1999 the name ‘Tirunelveli Iruttukadai Halwa’. Therefore, the Respondent has no right to the suit.
Not only Respondent was prior user and registered proprietor of the aforesaid trade name but the extent if user was for a period of more than 100 years as the family of the Respondent started using this trade mark way back in the year 1900.
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. Thus, the Respondent has acquired substantial amount of goodwill in the said mark.
As the marks of both the parties were registered, the Hon’ble Supreme Court went into the question, what is the effect of registration of the Appellant’s mark. After going through the scheme of the act, the Court observed that:
“Sub-section (3) of Section 28 with which we are directly concerned, contemplates a situation where two or more persons are registered proprietors of the trade marks which are identical with or nearly resemble each other.”
“between the two persons who are the registered owners of the trade marks, there is no exclusive right to use the said trade mark against each other, which means this provision gives concurrent right to both the persons to use the registered trade mark in their favour.”
“However, what is stated above is the reflection of Section 28 of the Act when that provision is seen and examined without reference to the other provisions of the Act. It is stated at the cost of repetition that as per this Section owner of registered trade mark cannot sue for infringement of his registered trade mark if the Appellant also has the trade mark which is registered. Having said so, a very important question arises for consideration at this stage, namely, whether such a Respondent can bring an action against the Appellant for passing off invoking the provisions of Section 27(2) of the Act. In other words, what would be the interplay of Section 27(2) and Section 28(3) of the Act is the issue that arises for consideration in the instant case. As already noticed above, the trial court as well as High Court has granted the injunction in favour of the Respondent on the basis of prior user as well as on the ground that the trade mark of the Appellant, even if it is registered, would cause deception in the mind of public at large and the Appellant is trying to encash upon, exploit and ride upon on the goodwill of the Respondent herein. Therefore, the issue to be determined is as to whether in such a scenario, provisions of Section27(2) would still be available even when the Appellant is having registration of the trade mark of which he is using. After considering the entire matter in the light of the various provisions of the act and the scheme, our answer of the aforesaid question would be in the affirmative.”
“When we apply the aforesaid principle to the facts of the present case, we find that the impugned judgment of the High Court, affirming that of the trial court is flawless and does not call for any interference. From the plethora of evidences produced by the Respondent she has been able to establish that the trade mark Truttukadai Halwa’ has been used of by her/her predecessors since the year 1900. The business in that name is carried on by her family. It has become a household name which is associated with the Respondent/her family. The Court has also noted that the Halwa sold by the Respondent’s shop as Truttukadai Halwa’ is not only famous with the consumers living in Tirunelveli, but is also famous with the consumers living in other parts of India and outside. Reference is made to an article published in Ananda Viketan, a weekly Tamil magazine dated 14.9.2003, describing the high quality and the trade mark Iruttukadai halwa sold by the Plaintiff, the findings and conclusions reached by the Court below is perfectly in order, hence, the same does not call for interference, carries more merit, for, this name has been further acknowledged in a Tamil song from the movie “Samy”. When the above Tamil cinema song being repeatedly played in the State of Tamil Nadu has also spoken more about the trade mark Truttukadai halwa’, it goes without saying that the Plaintiffs trade mark name Truttukadai halwa’ has become a household name in the nook and corner of this State, therefore, no one can claim as his own the name Iruttukadai halwa’ except the Respondent.”
The Appeal was dismissed with the cost of Rs. 50,000/-.