Supreme Court gives boost to owners of marks famous in one state

India
In TV Venugopal v Ushodaya Enterprises Limited (Civil appeal 6314-15/2001, March 3 2011), the Supreme Court has held that allowing the respondent to sell incense sticks under the EENADU mark would “definitely create confusion in the minds of consumers”.

Ushodaya Enterprises Limited, an Indian public limited company incorporated in the state of Andhra Pradesh, is the publisher of the Eenadu Telugu Daily Newspaper. Ramoji Rao is the founder and chairman of the Eenadu-Margadarsi group of companies, which has various business interests in publishing, television broadcasting, hotels, financial services and film production, among others. The first issue of the Eenadu newspaper was published in August 1974. Ushodaya claimed rights in, and ownership of, the trademark EENADU, and also claimed copyright in the masthead of the Eenadu newspaper.
 
TV Venugopal, trading as Ashika Incense Inc in Bangalore, manufactures incense sticks and has been selling them from 1993 under various names, including Ashikavari Eenadu Agarbathis, Eenadu Sandals and Eenadu Durbar Agarbathi. Ashika registered the packaging of its incense sticks, which contained the word 'Eenadu', together with its art work. Upon becoming aware of the fact that Ashika was using the word 'Eenadu', Ushodaya claimed copyright infringement and passing off.
 
Following an appeal from the order of the single judge of the City Civil Court, the case reached the Andhra Pradesh High Court. Ashika then appealed to the Supreme Court.
 
Before the Supreme Court, Ushodaya argued as follows:
  • The word 'Eenadu' had became a household name among the people of Andhra Pradesh state and the Telugu-speaking public in India and abroad;
  • Ushodaya's use of the EENADU mark for its newspapers and its television channels had generated tremendous goodwill; and
  • Ashika was using Ushodaya’s trademark in a fraudulent, deliberate and dishonest manner, and infringed Ushodaya’s copyright in its art work with a view to confusing and misleading the public and to passing off its incense sticks as those of Ushodaya. 
In response, Ashika argued as follows:
  • There was no connection between the business activities of the parties. Therefore, the goodwill and reputation of Ushodaya would not be affected and consumers would not be misled.
  • According to the Telugu to Kannada dictionary, the word 'Eenadu' means 'this time' or 'this land'. Ushodaya could not claim a monopoly with respect to such a descriptive word. 
  • Ushodaya had not registered the trademark EENADU in the class in which the incense sticks would fall.
  • Ashika had obtained copyright registration before Ushodaya registered its own copyright. 
  • The art work of the parties was very different.
  • There was an inordinate delay in filing the suit on Ushodaya's part. Therefore, Ushodaya had forfeited its right, if any, to restrain Ashika from using its art work.
  • 'Eenadu' was used by several other parties for products such as coffee powder, washing powder, matches, appalams, ayurvedic soap, chilli powder and coconut oil. 
  • There had been honest concurrent use of the word 'Eenadu' under Section 12(3) of the Trade and Merchandise Marks Act 1958.
  • Ashika’s packaging was registered with various other art works, including logos, while Ushodaya's copyright covered only 'Eenadu' in Telugu script. Therefore, there was no copyright infringement.
Referring to a number of earlier decisions, the Supreme Court ruled in favour of Ushodaya:
  • Ushodaya’s EENADU mark had acquired an extraordinary reputation and goodwill in the state of Andhra Pradesh.
  • The adoption of the word 'Eenadu' by Ashika was ex facie fraudulent and in bad faith.
  • Although the business activities of the parties were different, Ashika could not use the reputation of Ushodaya to sell its goods, as this may create confusion in the minds of consumers with regard to the source of the incense sticks.
  • Ashika clearly attempted to take advantage of Ushodaya's reputation and goodwill.
The decision demonstrates that third parties will not be allowed to take undue advantage of trademarks that enjoy a high degree of goodwill and reputation in a particular region. The Supreme Court’s ruling will enable the owner of such trademarks to prevent others from using similar marks for different of goods or services to obtain an unfair economic advantage.

Prerak Hora, Nishith Desai Associates - Legal & Tax Counselling Worldwide, Mumbai 

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