Madras High Court Revives Trademark Dispute Over “Idhayam” Mark, Orders Joint Trial In Connected Cases

The Madras High Court on 5 June revived a series of trademark infringement suits filed by the manufacturer of “Idhayam” sesame oil, holding that the unauthorised affixture of a registered trademark in India on goods intended for export constitutes a valid cause of action under the Trade Marks Act, 1999.

A Division Bench of Justices P. Velmurugan and K. Govindarajan Thilakavadi allowed the appeals, set aside the orders of the Single Judges that had rejected the plaints, and restored the suits for adjudication on merits. It observed:

“This Court finds that the issues relating to the effect of the foreign registration obtained by M/s.Meenakshi Overseas LLC, the alleged infringement said to have occurred within India by affixture of the mark on goods intended for export, the applicability of Sections 29(6), 30(2)(b) and 56 of the Trade Marks Act, and the maintainability of the suits are common and substantially interconnected questions arising in all the connected proceedings,” the Bench observed.

The dispute concerns the “Idhayam” mark, which V.V.V. and Sons has used since 1986 for gingelly oil in India. The plaintiff alleged that Meenakshi Overseas LLC and its job-workers in Coimbatore and Virudhunagar affixed the mark in India on snacks and edible oils meant for export to the United States.

The plaintiff further alleged that the foreign entity obtained its US trademark registration by falsely declaring that the word “Idhayam” had no meaning in any language, even though it is a common Tamil word meaning “heart”.

The defendants relied on their US trademark registration and contended that the plaintiff suppressed earlier unsuccessful proceedings before American courts and the United States Patent and Trademark Office. They also argued that no infringement occurred in India because they marked the goods as “Export Pack” and shipped them exclusively outside the country.

The Single Judges rejected the plaints under Order VII Rule 11 of the Code of Civil Procedure, holding that no cause of action arose and that the plaintiff suppressed material facts.

The Division Bench, however, held that the court, while deciding an application under Order VII Rule 11 CPC, must confine itself to the plaint averments and must not examine the defence or evidence of the defendants. It held that the plaints clearly alleged that the impugned mark was affixed within India and that such allegations, on their face, constitute infringement under Section 29(6) of the Trade Marks Act.

On suppression, the Court held that it must determine issues of alleged concealment only on evidence and cannot conclusively decide them at the stage of Order VII Rule 11 CPC unless the plaint itself reveals such suppression.

The Bench further held that it must apply the bar under Section 11 CPC only when earlier proceedings involve the same issues between the same parties and reach final adjudication by a competent court.

Accordingly, the High Court allowed all appeals, set aside the orders rejecting the plaints, and restored the suits for trial. It directed the Single Judge to frame appropriate issues and conduct a joint or simultaneous trial to avoid conflicting findings.