Trademark Case Brief – Venugopal v Ushodaya

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Citation – (2011) 4 SCC 85.

Facts:The appellant is the sole proprietor of a firm carrying on business inter alia as manufacturers of and dealers in incense sticks (agarbathis) in the name and style of Ashika Incense Incorporated at Bangalore and adopted the mark ‘Ashika’s Eenadu’. According to the appellant the word `Eenadu’ in Kannada language means `this land’. In Malayalam and Tamil language it conveys the same meaning. In Telugu language it means ‘today’.
The respondent company (i.e. Ushodaya Enterprises) was engaged in the business of publishing a newspaper in Telugu entitled as ‘Eenadu’. The respondent company in the year 1999 filed a suit for infringement of copyrights and passing-off trade mark. The respondent company therein claimed that they have been in the business of publishing a newspaper, broadcasting, financing and developing a film city.

Procedural History:
The Second Additional Chief Judge, City Civil Court, Hyderabad had granted an ex-parte ad interim injunction restraining the appellant from using the expression `Eenadu’. Thereafter, the appellant, aggrieved by the said order, moved the High Court of Andhra Pradesh at Hyderabad. The High Court suspended the interim injunction. The appellant was not injuncted from using the words `Eenadu’ in the entire country other than in the State of Andhra Pradesh by the Trial Court. Aggrieved by the said order of the learned Single Judge, the respondent company filed Letters Patent Appeals before the Division Bench of the High Court. The High Court allowed its appeal.

Issues:
1)
Whether the defendant is passing off the product of the plaintiff by deceiving and causing confusion among the minds of the consumers by using the Mark Eenadu.
2) Whether Eenadu is a common word with generic interpretation literally meaing `Today’ in Telugu and `this land/our land’ in Kannada, Tamil and Malayalam?
3) Whether the Mark is Suggestive or Descriptive and has it acquired distinctiveness?
4) Whether the use of mark Eenadu by the defendant would affect the goodwill of respondent company as they both are involved in entirely different business.

Holding:
The Court found that the respondent company’s mark `Eenadu’ has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. The respondent company’s products and services are correlated, identified and associated with the word `Eenadu’ in the entire State of Andhra Pradesh. `Eenadu’ means literally the products or services provided by the respondent company in the State of Andhra Pradesh. In this background the 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 clearly wanted to ride on the reputation and goodwill of the respondent company. The Court has clearly ruled on the basis of dilution of the trademark “Eenadu” registered to the respondent. A trademark is diluted when its uniqueness is lost owing to its unauthorised use in relation to products that are not identical or similar to the product of the trademark owner.
Use of similar words by a competitor coupled with dishonest intentions and bad faith would empower a court to restrain such user to do justice to the aggrieved party. The protection qua common fields of activity has now been expanded and been interpreted to mean other product lines than what is manufactures by plaintiff and hence common field of activity is not restricted to same products. No one can be allowed to encroach upon the goodwill of other parties.

Applying the TWO STEP TEST to decide whether mark is descriptive of suggestive:
1) How much imagination does it takes by consumer about qualities, characteristics, effects, purpose or ingredients of the products or source is there.
§ More the imagination, more chances that the mark is suggestive.
Here, people in Andhra Pradesh are well aware about the relation between Eenadu Daily newspaper and Eendau Margadasi Group. Eendau daily simply concludes that this may be a news service only.
2) Whether sellers of similar products/services are likely to use or actually do use a term in connection with their goods and services.
§ Yes, it is likely to be used other sellers ex: AP Eenadu, Eenadu weekly, Eenadu’s Exclusive, Real Eenadu, etc.
Hence it’s a descriptive mark
But, in our case, mark ‘Eenadu’ has acquired distinctiveness. It has acquired a secondary meaning during the course of plaintiff’s business practice as the word Eenadu became the household name among the people of Andhra Pradesh and the Telugu speaking public in the other States and the rest of the world.

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