Use of 'rising sun' device restrained in part


In Sudhakar v SSP Durairaj (a firm) (Case MIPR 2007(2) 247, April 3 2007), the Chennai High Court has granted an interlocutory injunction in a passing off and infringement action against use of a composite mark featuring a 'rising sun' device on bulk gunny bags of pulses known as dhall. However, the court refused to extend the injunction to use of the mark on consumer retail packaging.

The plaintiff, Mr Sudhakar, carries on business under the company name Shri Lakshmi Agro Foods, and owns a registration for a composite mark containing the word 'UDHAIYAM' and a distinctive device of a rising sun for dhall in Class 30 of the Nice Classification. Sudhakar claimed extensive reputation and goodwill in his composite mark acquired through widespread sales and advertising. He produced evidence that his company has 90% of the market share in respect of dhall sold in the Indian state of Tamil Nadu.

The defendant, SSP Durairaj (a firm), sold dhall under a composite mark comprising of the word 'ARVEE' and the device of a rising sun, which according to Sudhakar was deceptively similar to his registered composite mark.

The Chennai High Court held that the device of the rising sun used on Durairaj's bulk gunny bags containing dhall was deceptively similar to Sudhakar's device. Further, the impugned mark was depicted on Durairaj's gunny bags in such a manner that greater prominence was given to the deceptively similar device than the word mark ARVEE. Accordingly, it issued an injunction preventing Durairaj from using the impugned mark on dhall gunny bags sold in bulk to traders. The court also held that the fact that the device of a rising sun was commonly used by such traders did not prevent the grant of an injunction since Durairaj's device was similar to that of Sudhakar's registered mark in which he had reputation and goodwill.

The court however held that Durairaj's device of a rising sun as used on consumer retail packaging was not deceptively similar to that of Sudhakar. Greater prominence was given to the word mark ARVEE on this packaging. Thus, Durairaj was not restrained from using its version of the mark on this packaging.

Mustafa Safiyuddin, DSK Legal, Mumbai

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