Madras HC issues Injunction Order Against Kute Group from Using Thirumala Trademark

Madras HC issues Injunction Order Against Kute Group from Using Thirumala Trademark

The single judge bench of the Madras High Court, Justice C.V. Karthikeyan granted an injunction against Kute Group's Tirumalaa Daairy in respect of the use of the words 'Thirumala' and 'Tirumala which are registered marks of the Milk Marketing Company Tirumala Milk Products.

Tirumala Milk Products Company (plaintiff) claimed that their company is a leading Dairy Company in India, with presence in major States such as Tamil Nadu, Karnataka, Andhra Pradesh, Telangana, Kerala, Maharashtra and West Bengal.

The plaintiff stated that they market their vast range of milk and dairy products under the trademark 'Thirumala' and Thirumala Milk' and it is claimed that the said marks have acquired substantial goodwill and reputation in India and it is registered with the mark 'Thirumala' primarily in Class 29.

It was stated that the plaintiff has been selling their product with the name 'Thirumala' represented by 'a droplet of milk', in which the name is in the foreground and the main trademark 'Thirumala' in logo form in the droplet is at the bottom.

The plaintiff filed the suit under Sections 134, 135 of the Trade Marks Act, 1999 read with relevant provisions of the Original Side Rules of the Madras High Court and the Code of Civil Procedure, 1908, seeking a judgment and decree against the defendants for permanent injunction from infringement of the plaintiff's registered trademark 'Thirumala' / 'Thirumala Milk' and for a permanent injunction restraining the defendants from passing off their business or milk and dairy products.

The plaintiff argued that the defendants ventured into the same line of products and opened three units in the State of Maharashtra. On their website, the defendant had mentioned the quote 'a name of trust in the dairy sector' even though they had not even started business.

The plaintiff argued that the defendants clearly used deceptively similar name and branding their dairy products was done with 'the sole intention to mislead the general public and to cash in on the reputation and goodwill of the plaintiff.' It was vehemently asserted that there was every likelihood of confusion and the actions of the defendants were completely mala fide and dishonest.

The defendants argued that the plaintiff had no prima facie case for grant of ad interim or interim injunction. Further, the defendants are yet to commence the business of manufacturing and selling the products under the trademark 'Tirumalaa Daairy'. It was stated that therefore no cause of action has arisen.

The defendants also asserted that the Registrar of Trade Marks had raised objections under Section 11 of the Trade Marks Act, 1999, stating that there were earlier marks 'Thirumala's Palm Shakthi.' The defendants ascertained that marks should be seen as a whole and the marks registered do not give any monopolistic right over the word 'Thirumala.'

The Madras High Court, after hearing the facts of the case ruled that the plaintiff had successfully established a prima facie case for the grant of injunction. The court in its finding stated that the defendants had not denied the plaintiff's specific averment that it had strong presence in Maharashtra and the charge that the defendants attempted to solicit business, which were taken as admitted facts, an prima facie made the act a case of trademark infringement.

The Court considered three key points and granted the injunction: Firstly, the two companies marketed their products under a similar name that raised a likelihood of confusion. Secondly, the defendants continued to use the purportedly infringing mark. Lastly, defendants aggressively marketed the product and was directly involved in drawing away existing customers. The Court also noted that the subsequent changes made to the name of the products by the defendants directly infringes and would certainly cause confusion in the minds of the public as to whether the entities are branches of the plaintiff as they are still phonetically the very same word as used by the plaintiff.

The Court added that the defendants' act of changing their product name to 'Tirumalaa Daairy Ltd.', and 'Tirumalaa Fresh Daairy Farm Pvt. Ltd.' was a ploy to detract the minds of the plaintiff and not with any true intention.

The court recorded "this Court cannot examine whether the amended packaging could be thrust upon the plaintiff or not. As the registered proprietor it is the privilege of the plaintiff to examine whether there is any infringement of their registered trademark.

If they are of the opinion there is no infringement, the matter rests there. If they are of the opinion that there is infringement, then alone can the Court examine the issues. The fact in issue would shift to the altered mark and the said mark will have to be scrutinized in manner know to law. A cursory finding cannot be rendered."

The court finally held that the interim injunction already granted will have to be necessarily made absolute till the disposal of the suit.