Madras High Court Restrains Edible Oil Firm, Holds 'CYCLE' Mark Has Reputation Beyond Agarbattis

The Madras High Court has recently restrained an Erode-based edible oil manufacturer from using the trademark "CYCLE", holding that N. Ranga Rao & Sons, the maker of Cycle brand agarbathies, had established that the mark enjoys a reputation beyond incense sticks and is entitled to protection even against use on dissimilar goods.

A Division Bench of Justice P. Velmurugan and Justice K. Govindarajan Thilakavadi partly allowed an appeal filed by N. Ranga Rao & Sons Private Ltd., setting aside a 2021 judgment that had dismissed its trademark infringement suit.

Rejecting the single judge's finding that the company's reputation was confined to agarbathis, the court held,

"We are, therefore, unable to agree with the finding of the learned Single Judge that the appellant had established reputation only in respect of products connected with agarbathies and not in respect of the trademark 'CYCLE' itself."

N. Ranga Rao & Sons said it adopted the trademark "CYCLE" in 1954 for agarbathies and allied products and has registrations for the mark across several classes, including Classes 29 and 30 covering food products. The company sued Erode-based Sree Annapoorna Agro Foods, alleging that its use of the identical mark "CYCLE" for edible oils infringed its registered trademark and also amounted to passing off.

The single judge had dismissed the suit after finding that the distinctiveness associated with the company was limited to "Cycle Brand Agarbathies" and not the word "CYCLE" on its own. The court had also held that incense sticks and edible oils were neither allied nor cognate goods and that Sree Annapoorna Agro Foods had been using the mark for edible oils since 2009.

Challenging that ruling, the company approached the division bench.

The court said the dispute was whether the edible oil manufacturer could lawfully use the identical trademark for a different category of goods.

"The dispute is not about who first adopted the mark. The real issue is whether the respondent is legally entitled to use the identical trademark in respect of different goods.", the court ruled.

The bench also relied on the cross-examination of the proprietor of Sree Annapoorna Agro Foods. Although he claimed to have carried on the edible oil business since 1981 under different brand names, he admitted he had not produced any contemporaneous documents to support that claim and did not explain why he adopted the mark "CYCLE" in 2009.

The court observed, "There is also no evidence to show that the adoption of the mark 'CYCLE' had any connection with the respondent's name, business, family, or any other independent circumstance."

The court further held that the fact the parties dealt in different products did not by itself defeat the infringement claim.

"Therefore, the mere fact that the respondent is dealing in edible oils, whereas the appellant is engaged in a different line of business, cannot by itself defeat the appellant's claim."

After finding that the "CYCLE" mark had acquired substantial reputation in India, that the edible oil manufacturer's use of the identical mark was without due cause and was likely to take unfair advantage of and harm the mark's distinctive character and reputation, the bench held,

"Therefore, the respondent's use of the identical mark is without due cause and is likely to take unfair advantage of, and harm the distinctive character and reputation of, the appellant's registered trademark. Accordingly, the requirements of Section 29(4) of the Trade Marks Act are satisfied."

The court, however, declined relief on the passing off claim after finding that the company had failed to establish the necessary ingredients of passing off. It also rejected the claim for rendition of accounts because no documentary evidence had been produced to establish or quantify the profits allegedly earned from use of the impugned trademark.

The appeal was partly allowed. The 2021 judgment was set aside and the suit was partly decreed. The court permanently restrained Sree Annapoorna Agro Foods from manufacturing, marketing, advertising, selling or dealing in edible oils or any other goods under the trademark "CYCLE", the Cycle device or any identical or deceptively similar mark.

It also directed the business to surrender all unused offending labels, packaging materials, blocks, dies and other materials bearing the impugned mark or device within eight weeks. The claims for passing off and rendition of accounts were rejected.