The Hon’ble High Court of Madras vide order dated 15.10.2020 injuncted the Kute Group’s Tirumala Dairy from using the name Tirumalaa in marketing and sale of their products.
The said order was passed in response to two applications filed by Tirumala Milk Products Private Limited 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 of permanent injunction from infringement of the Plaintiff’s registered trademark or any other marks deceptively similar to ‘Thirumala’ / ‘Thirumala Milk’ and for a permanent injunction restraining the Defendants from passing off their business of milk and dairy products under the name of ‘Tirumalaa Daairy’. The Plaintiff also sought for a permanent injunction restraining the Defendants from indulging in acts of unfair competition and for a direction against the Defendants to pay to the Plaintiff a sum of Rs.1,01,00,000/- (Rupees One Crore and One Lakh Only) as damages.
The Plaintiff in the present matter brought to the Hon’ble High Court’s notice that it was a dominant dairy product marketer in various South Indian states and in West Bengal and that it had recently expanded its reach to Maharashtra after it entered into an agreement with a company based in Latur to sell the company’s products under the brand name Thirumala across Maharashtra.
Shortly after, the Defendants ventured into the same line of products and opened three units in the State. On their website, the defendants stated that they were ‘a name of trust in the dairy sector‘ though they had not even started business.
The Plaintiff’s argued that the Defendants’ act of using a deceptively similar name to market and brand 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 further asserted that there was every possibility of confusion and the actions of the Defendants were completely mala fide and dishonest.
The Defendants on the other hand submitted that the name the Plaintiff adopted was not a unique nameandwas the name of Lord Venkateshwara’s abode. Also the name Thirumala was used by hundreds of other businesses. The Defendants further submitted that they used this name because they were devotees of the deity and their spiritual guru had advised them to do so.
Ruling that the Plaintiff had established a prima facie case for the grant of injunction, Justice C.V.Karthikeyan found it significant that the defendants had not denied the Plaintiff’s specific averment that it had a strong presence in Maharashtra and the charge that the Defendants attempted to solicit business. These were taken as admitted facts, which prima facie made the act infringement.
The Court rejected the Defendant’s offer to add the group name before the “Tirumalaa” in the Defendants’ mark, terming it a ploy because the group itself proceeded to change their name to Tirumalaa Dairy.
An interim injunction was ultimately granted because the Plaintiff was able to prove the following:
- The two companies marketed their products under a similar name that raised a likelihood of confusion;
- The Defendants continued to use the purportedly infringing mark;
- The Defendants aggressively marketed the product and were directly involved in drawing away customers.
The Hon’ble Judge held that the said injunction would last till the disposal of the original suit that is pending before the High Court.
Order: Tirumala_Milk_Products_Private_Limited_v__Swaraj_India_Industries_Limited___Judgment
