Intellectual Property Rights | Passing Off | Trade Mark

T.V. Venugopal v. Ushodaya Enterprises Ltd. & Anr.

T. V. Venugopal v. Ushodaya Enterprises Ltd. & Anr.

(2011) 4 SCC 85

Brief Facts:

  • Ashika Incense Incorporated, a sole proprietor firm of Appellant was established in 1988 at Bangalore dealing in the manufacturing and selling of the incense stick.
  • Appellant in the year 1993 had honestly and bona fidely adopted the trademark “Eenadu” which means “This land” in Kannada, Malayalam & Tamil and “Today” in Telugu for which the Appellant applied for the trade mark in 1994. Appellant started selling its products in Andhra Pradesh in the year 1995. The registrar issued a certificate on 7th March 1996. Thereafter, an application for registration for copyright was made by the Appellant on 14th March 1997.
  • Respondent was engaged in the business of publishing newspapers in Telugu entitled as “Eenadu” since 1974. Besides publishing newspapers, the Company also dealt in broadcasting, financing, and developing film city. The Respondent was the second-largest regional daily circulating in India and the largest in Andhra Pradesh.
  • Respondent served a cease and desist notice to the Appellant which was replied by the Appellant on 8th March 1995. Respondent in 1999 filed a suit against the Appellant for the infringement of Copyright and passing off in City Civil Court, Hyderabad.
  • The City Court passed an ex-parte ad interim injunction on 24th November 1999 restraining the Appellant from using the expression “Eenadu” for their goods and the same was confirmed on 27th December 1999. Thereafter aggrieved by the said order, Appellant moved the High Court of Andhra Pradesh. The High court suspended the interim injunction.
  • Meanwhile, on 24th July, 2000 trial court partially decreed the suit and injuncted the Appellant from using the words “Eenadu” only in Andhra Pradesh. Both the parties filed an appeal before High Court against the order of the City Civil Court. Appellant’s appeal was allowed and the Respondent’s appeal was dismissed. Respondent then filed a Letters Patent appeal. High Court disposed of the same in the favor of the Respondent stating Copyright Infringement by the Appellant. Aggrieved by the decision of the High Court the Appellant filed an appeal before the Supreme Court.

Appellant’s Contentions:

  • High Court erred in holding that the copyright of the company infringed in the absence of the prayer for infringement.
  • High Court also held the Appellant for the passing off the copyright when the Copyright Act 1957 does not provide for such a remedy.
  • Businesses of the parties are entirely different and there is no question of passing-off.
  • Under the law of dilution, only the marks which have the reputation on the national scale are protected which can be even termed in common parlance as well-known marks.
  • For the action of passing off the test of likelihood of confusion is to be determined. The confusion should be either confusion arising due to get up of the product, confusion as to the sponsorship or affiliation, or confusion arising out of the identical/deceptively similar trademark.
  • The instant suit is governed by the Trade and Merchandise Mark Act, 1958 and not by the Trademark Act, 1999. Hence the concept of a well-known mark, dilution, etc. as provided statutorily in the Act of 1999 does not apply to the instant suit. It is the case of passing off and not dilution.
  • “Eenadu” literally means “Today” or “This Day” and hence is not an invented word but is a generic/descriptive word used in common parlance. 

Respondent’s Contentions:

  • “Eenadu” has acquired a secondary meaning
  • “Eenadu” Group is, inter alia, a publisher of a newspaper which is the second-largest regional daily circulating in India and is the largest in Andhra Pradesh.
  • Appellant has dishonestly adopted the said mark which is evident from the fact that after the adoption of the name “Eenadu” the company accounted for the 90% of their product and when the Appellant was restrained from using the word “Eenadu” in the state of Andhra Pradesh, their sales dropped by 10 times although they continued to sell the product under the name “Ashika”.
  • There are various products and services of Respondent out of which one is Eenadu TV Channel. Therefore the word “Eenadu” is completely associated with the Respondent and in fact is a household name.
  • Law of passing off can be summarized in one short general proposition – no man may pass off his goods as those of another. 
  • Where a trade/business name has acquired the reputation such as it becomes a household name, in such a case, if anyone uses the identical name for their business even though dealing in different goods and services would be guilty of passing off by reaping the profits on the reputation of the plaintiffs and would be restrained.

Supreme Court’s Observations:

  • “Eenadu” newspaper and TV are extremely well known and almost household words in the State of Andhra Pradesh. The word `Eenadu’ may be a descriptive word but has acquired a secondary or subsidiary meaning.
  • Appellant started using the name `Eenadu’ for its Agarbathi and used the same artistic script, font and method of writing the name which obviously cannot be a co-incidence.  
  • In this background, Appellant cannot be referred or termed as an honest concurrent user of the mark “Eenadu”.
  • The adoption of the words “Eenadu” is ex facie fraudulent and mala fide from the very inception. By adopting the mark “Eenadu” in the State of Andhra Pradesh, the Appellant wanted to ride on the reputation and goodwill of the Respondent.
  • Permitting the Appellant to use the mark would result in the approval of the court dishonest, illegal and clandestine conduct of the Appellant.
  • Allowing the Appellant to use the name “Eenadu” for their business would create confusion in the mind of the consumer as they would associate the Appellant’s product with that of the Respondent. In other words, the Appellant wanted to derive the benefit from the reputation and goodwill of the Respondent’s company. In such a situation, it is the bounden duty and obligation of the court not only to protect the goodwill and reputation of the Respondent but also to protect the interest of the consumers.
  • Permitting the Appellant to sell its product in the State of Andhra Pradesh would amount to encouraging the Appellant to practice fraud on the consumers.
  • Permitting the Appellant to carry on his business in the name of `Eenadu’ in the State of Andhra Pradesh would lead to eroding extra-ordinary reputation and goodwill acquired by the Respondent company over a passage of time.
  • Appellant’s deliberate misrepresentation has the potentiality of creating serious confusion and deception for the public at large and the consumers have to be saved from such fraudulent and deceitful conduct of the Appellant.
  • Permitting the Appellant to sell his product with the mark `Eenadu’ would be encroaching on the reputation and goodwill of the Respondent company and this would constitute invasion of proprietary rights vested with the Respondent company.
  • Honesty and fair play ought to be the basis of the policies in the world of trade and business.
  • The law is consistent that no one can be permitted to encroach upon the reputation and goodwill of other parties.

The matter was disposed of with the aforesaid observations and directions.

Author: Pramit Rastogi, ICFAI University, Dehradun

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