"EENADU" – When a Common Word Becomes a Household Name: The Supreme Court's Landmark Ruling on Passing Off and Goodwill
Introduction
In the world of intellectual property, one of the most fascinating and contested questions is this: can a word that belongs to everyday language be claimed exclusively by a single business? What happens when a term drawn from common speech acquires such extraordinary association with one enterprise that its use by another, even for a completely different product, amounts to a legal wrong? The Supreme Court of India grappled with precisely this question in T.V. Venugopal v. Ushodaya Enterprises Ltd., decided on 3rd March 2011. The case brought into sharp relief the principles governing passing off, secondary meaning of descriptive marks, dilution of goodwill, and the protection of household names across unrelated product categories. It also raised important questions about honest adoption, dishonest intent, and the duty of courts to protect not only business reputations but also the consuming public from deception. The judgment, delivered by a bench of Justices Dalveer Bhandari and K.S. Panicker Radhakrishnan, remains a significant landmark in Indian trademark jurisprudence.
Factual and Procedural Background
T.V. Venugopal was the sole proprietor of a firm called Ashika Incense Incorporated, based in Bangalore, Karnataka. He was engaged in manufacturing and selling incense sticks, commonly known as agarbathies. He started his business in the year 1988 and, according to him, began using the mark "Ashika's Eenadu" in 1993. He stated that the word "Eenadu" in the Kannada language means "this land" or "our land," and carries the same meaning in Tamil and Malayalam. In Telugu, however, the word means "today." His product was housed in a distinctive rectangular carton with a bottle-green background, sky-blue border, and an oval tricolour design in the centre bearing the word "Eenadu." He applied for registration of this trademark on 10th February 1994 under application number 619177. He also obtained a certificate from the Registrar of Trade Marks under the proviso to Section 45(1) of the Copyright Act, 1957, on 7th March 1996, and subsequently applied for copyright registration on 14th March 1997. By the time the matter reached the Supreme Court, the Appellant's annual business had grown to approximately eleven crore rupees.
On the other side stood Ushodaya Enterprises Ltd., a major media conglomerate based in Andhra Pradesh. The company was the publisher of a widely circulated Telugu-language newspaper titled "Eenadu," which was the largest regional daily in Andhra Pradesh and the second largest regional newspaper in India. The Respondent group was also involved in broadcasting, financing, and other business activities, with the word "Eenadu" being its central brand identity. The television channel ETV, widely associated with the Eenadu group, was among the most popular channels in Andhra Pradesh.
In the year 1995, the Respondent company sent a cease-and-desist notice to the Appellant, to which the Appellant replied on 8th March 1995. Despite this, the Appellant continued his business. In 1999, after the Appellant's sales had grown substantially, Ushodaya Enterprises filed a suit before the Second Additional Chief Judge, City Civil Court, Hyderabad, being Original Suit No. 555 of 1999, claiming infringement of copyright and passing off of trademark. On 24th November 1999, the trial court granted an ex-parte ad interim injunction restraining the Appellant from using the word "Eenadu." This injunction was confirmed on 27th December 1999. The Appellant then moved the High Court of Andhra Pradesh, which suspended the injunction and permitted him to dispose of finished products worth up to one crore rupees and manufacture goods already in process worth up to seventy-eight lakh rupees.
The trial court, on 24th July 2000, partially decreed the suit in favour of the Respondent, restraining the Appellant from using "Eenadu" within the State of Andhra Pradesh but permitting its use elsewhere in the country. The Appellant appealed to the High Court against this partial restriction, while the Respondent appealed seeking an absolute countrywide injunction. A learned Single Judge of the High Court disposed of both appeals by a common judgment dated 29th December 2000, dismissing the Respondent's appeal and allowing the Appellant's appeal. The Respondent company then filed Letters Patent Appeals before a Division Bench of the Andhra Pradesh High Court. By the impugned judgment dated 15th June 2001, the Division Bench allowed the Respondent's Letters Patent Appeals, reversing the Single Judge's order and decreeing the suit in full. The Appellant came before the Supreme Court by way of Civil Appeal Nos. 6314-15 of 2001.
The Dispute
At the heart of the dispute was a deceptively simple question: could a large and reputed media house claim exclusive rights over the word "Eenadu" and prevent a manufacturer of incense sticks from using it as part of his product's name and branding? The businesses were entirely different — one published newspapers and ran television channels, while the other made agarbathies. The Appellant argued that "Eenadu" was a common Telugu word in everyday use, that its meaning in Kannada (his home state) meant "this land," and that no one could monopolise such an ordinary expression. He pointed to multiple third-party uses of "Eenadu" across India for products ranging from turmeric powder, matchsticks, playing cards, ayurvedic soaps, washing powder, coffee, tobacco, hotels, and even a major Telugu feature film produced by UTV, which had been reviewed in the Respondent's own newspaper.
The Respondent countered that while the word may have a literal meaning, it had acquired an extraordinary secondary meaning in the State of Andhra Pradesh, where it had become wholly identified with the Respondent's group of enterprises. Millions of Telugu-speaking people associated "Eenadu" not with the word "today" but exclusively with the Respondent's newspaper and media empire. Allowing the Appellant to sell agarbathies under the name "Eenadu" would inevitably lead consumers to believe that the product came from the house of Eenadu, which amounted to passing off. The deliberate use of the same artistic script, font, and style as used by the Respondent for the word "Eenadu" made the adoption dishonest and mala fide from the very beginning.
A secondary legal dispute arose about which statute governed the proceedings. The Appellant's lawyers argued that since the suit was filed and was pending when the Trade Marks Act, 1999 came into force on 15th September 2003, the case continued to be governed by the Trade and Merchandise Marks Act, 1958 by virtue of Section 159(4) of the 1999 Act. This was significant because the concepts of well-known marks and statutory dilution, which are part of the 1999 Act, would not apply. The case was thus squarely one of passing off under common law, not statutory infringement or dilution.
Reasoning and Analysis of the Judge — Including Judgments Cited and Their Context
The Supreme Court engaged in a thorough examination of the law of passing off, the doctrine of dilution, the concept of secondary meaning in descriptive marks, and the relevance of dishonest intention in trademark disputes. The following is a detailed account of the Court's reasoning, the judgments it considered, and the context in which those authorities were discussed.
On the Governing Law and the Distinction Between Passing Off and Dilution
The Court accepted the Appellant's submission that the case was governed by the Trade and Merchandise Marks Act, 1958, and not the Trade Marks Act, 1999, in view of Section 159(4) of the latter Act, which preserved the application of the old law to pending proceedings. Consequently, the statutory concepts of well-known marks and dilution under the 1999 Act had no direct application.
The Appellant drew a careful distinction between passing off and dilution. He relied on the well-known treatise McCarthy on Trademarks and Unfair Competition (Vol. 2), specifically paragraph 24.70, to argue that the dilution doctrine extends protection beyond the classic "likelihood of confusion" test, applying only where consumers are not confused but the Plaintiff's mark is being eroded. The Court noted this distinction but chose to decide the case on the principles of passing off, which require proof of goodwill and reputation, misrepresentation, and likely damage.
On the Law of Passing Off — Core Principles
The Court extensively discussed the foundational principles of passing off. It relied on Reckitt and Colman Products Ltd. v. Borden Inc. and Ors. reported as 1990 (1) ALL ER 873, in which the court traced the basic principle to Lord Langdale R.'s statement in Perry v. Truefitt (1842) 6 Beav. 66, to the effect that a man must not sell his goods under the pretence that they are the goods of another. In Reckitt and Colman, the court identified the essential elements of passing off: the Plaintiff must show that his goods have acquired a reputation in the market under a distinguishing feature; the Defendant must have made a misrepresentation likely to deceive the public into thinking the Defendant's goods are the Plaintiff's; and the Plaintiff must demonstrate likely damage from such deception. Mere confusion unaccompanied by a deceptive sale was held insufficient.
The three-part formulation from this case — goodwill, misrepresentation, and damage — was treated as settled law by the Supreme Court.
On the Distinction Between Infringement and Passing Off
The Court cited Ruston and Hornsby Ltd. v. The Zamindara Engineering Co. reported as 1969 (2) SCC 727, where the Supreme Court itself had earlier distinguished between the two actions. An infringement action asks whether the Defendant is using the same or a colourable imitation of the Plaintiff's registered trademark; a passing off action asks whether the Defendant is selling goods calculated to lead purchasers to believe they are the Plaintiff's goods. This case was cited to underscore that the present dispute, being one of passing off, required proof of consumer deception, not mere mark similarity.
On the Scope of Passing Off and Goodwill Extending Beyond the Same Product Category
One of the most significant aspects of the judgment was the Court's recognition that the law of passing off had evolved to protect goodwill even where the parties dealt in entirely different goods. The Court referred to Honda Motors Co. Ltd. v. Charanjit Singh and Ors. reported as 101 (2002) DLT 359, where the Delhi High Court had restrained the use of the mark "HONDA" on pressure cookers, holding that the Plaintiff's global reputation in automobiles and power equipment was being exploited. The Delhi High Court in that case had observed that the concept of passing off, being a tort, had undergone significant evolution and no longer required the parties to operate in the same commercial field. Any use of a globally reputed mark that created deception in the public mind, or diluted the Plaintiff's goodwill, was actionable.
The Court also discussed the Respondent's submission, drawn from Kamal Trading Co., Bombay and Ors. v. Gillette U.K. Limited reported as (1988) IPLR 135, that the test for a common field of activity had been updated to focus on "common class of consumers." If the consumers of the Defendant's product could reasonably assume that the product originates from the same source as the Plaintiff's goods, passing off is established.
On Secondary Meaning of Descriptive Marks
The Appellant argued strongly that "Eenadu" was a descriptive or generic word and therefore could not be the subject of exclusive protection. The Respondent countered by citing the secondary meaning doctrine. The Court examined this doctrine through several authorities.
In Reddaway and Co. and Anr. v. Banham and Co. and Anr. reported as 1895-99 All ER 133, the House of Lords had held that the words "camel hair belting" had acquired a secondary meaning in the trade, being understood not as describing the material but as identifying the Plaintiff's manufacture. Even though in its primary sense the term described the composition of the product, in its secondary sense it had come to mean the Plaintiff's goods. The Court approved the House of Lords' observation that a man who uses language which conveys a false idea to those who understand its secondary meaning cannot escape responsibility by pointing to its primary literal truth.
The Court further relied on Godfrey Philips India Limited v. Girnar Food and Beverages (P) Limited reported as (2004) 5 SCC 257, where the Supreme Court had held that a descriptive trademark may be entitled to protection if it has assumed a secondary meaning identifying it with a particular product or a particular source. The Court in the present case applied this principle to find that "Eenadu," whatever its literal meaning, had acquired an unmistakable secondary meaning in Andhra Pradesh, where it was universally understood to mean the Respondent's newspaper and media group.
In the context of domain names, the Court discussed Satyam Infoway Ltd. v. Sifynet Solutions (P) Limited reported as 2004 (6) SCC 145, where the Supreme Court had held that a passing off action seeks to restrain the Defendant from passing off its goods or services as those of the Plaintiff, and is designed to protect both the Plaintiff's reputation and the public. Prior user of the mark is decisive.
The Court also discussed Info Edge (India) Private Limited and Anr. v. Shailesh Gupta and Anr. reported as 98 (2002) DLT 499, where the Delhi High Court had held that even a generic or descriptive word could assume secondary meaning through long user and reputation, and that dishonest use of such a word by a competitor, with bad faith, would justify an injunction.
Office Cleaning Services Limited v. Westminster Office Cleaning Association reported as 1944 (2) All ER 269 was cited for the proposition that a descriptive word could attract protection only upon proof of secondary meaning.
In Halsbury's Laws of England, Volume 48, Fourth Edition, page 190, the Court noted the established statement that a word wholly descriptive of goods can, through association with a particular trader, become capable of constituting a misrepresentation when used by another trader.
On Goodwill Spanning Unrelated Goods — Household Names
The Court carefully surveyed cases involving marks of extraordinary repute that had been protected across product categories. In Daimler Benz Aktiegesellschaft and Anr. v. Hybo Hindustan reported as AIR 1994 DELHI 239, the Delhi High Court had restrained use of the three-pointed star symbol and the name "Benz" in connection with men's undergarments, holding that "Benz" had achieved the status of a household word globally, and that allowing its use on unrelated products would dilute its distinctiveness and debase its reputation. The Court in the present case quoted the Delhi High Court's powerful observation that the trademark law is not designed to protect those who deliberately seek to exploit another's reputation, especially when that reputation extends worldwide.
In Harrods Limited v. R. Harrod Limited reported as (1924) RPC 74, the English court had restrained a moneylending business from trading under the name "R. Harrod Limited," holding that where a well-known fancy name is taken by a Defendant for the purpose of posing as someone else, fraud is evident and court intervention is warranted.
In Harrods Limited v. Harrodian School Limited reported as (1996) RPC 697, the court recognised that erosion of the distinctiveness of a brand name was a form of damage to goodwill, even absent direct commercial competition. However, the court also cautioned against an unacceptable extension of the law of passing off. The Court in the present case cited this authority to acknowledge both the protection of household names and the limits of that protection.
In Mahendra and Mahendra Paper Mills Limited v. Mahindra and Mahindra Limited reported as (2002) 2 SCC 147, the Supreme Court had held that the name "Mahindra" had, over five decades of use, acquired distinctiveness and secondary meaning in trade circles. Any use of a similar name in business would create an impression of connection with the Plaintiff's group and could prejudice the Plaintiff. An injunction was upheld.
The Court discussed Bata India Limited v. Pyare Lal and Co., Meerut City and Ors. reported as AIR 1985 All 242, where the Allahabad High Court had held that the name "Bata" was so well known in the market that its use by the Defendant on foam products was likely to cause deception, even though Bata did not manufacture foam. The intent of the user was held to be a relevant factor.
On Dishonest Adoption and Bad Faith
The Court placed significant emphasis on the manner and intent of the Appellant's adoption of the mark. It referred to Midas Hygiene Industries (P) Ltd. and Anr. v. Sudhir Bhatia and Ors. reported as (2004) 3 SCC 90, where the Supreme Court had held that in cases of infringement or passing off, an injunction must normally follow, and that the dishonest nature of the adoption itself justified relief. Delay by the Plaintiff in approaching court was held not to be a sufficient ground to deny the injunction.
The Court also cited the Division Bench judgment of the Delhi High Court in Madhubhan Holiday Inn v. Holiday Inn Inc. reported as 100 (2002) DLT 306, authored by Dalveer Bhandari J. himself, where it had been held that adoption of the words "Holiday Inn" was ex facie fraudulent and mala fide from inception, as the Appellant had sought to ride on the global reputation of the Respondent. The Court applied identical reasoning to the facts before it.
In N.R. Dongre and Ors. v. Whirlpool Corporation and Anr. reported as (1996) 5 SCC 714, the Supreme Court had affirmed that the adoption of the mark "Whirlpool" by a rival washing machine manufacturer, when business could have been carried on under another name, supported an inference of unfair trading activity aimed at exploiting the Plaintiff's reputation.
On Third-Party Use as a Defence
The Appellant argued that multiple third parties were using "Eenadu" for various products without objection from the Respondent, which showed that the mark was common and that the Respondent had acquiesced in such use. The Court rejected this argument by reference to Ford Motor Company of Canada Limited and Anr. v. Ford Service Centre reported as 2009 (39) PTC 149, where the Delhi High Court had held that permission given in one case or tolerance of third-party use does not offer a licence to others to infringe. The Division Bench in that case relied on Pankaj Goel v. Dabur India Limited reported as 2008 (38) PTC 49 (Delhi) to the same effect. Castrol Limited v. A.K. Mehta reported as 1997 (17) PTC 408 and Prakash Roadline Limited v. Prakash Parcel Service (P) Ltd. reported as 48 (1992) DLT 390 were also cited by the Respondent for the proposition that inaction against some third-party users does not disentitle the Plaintiff from proceeding against a specific Defendant who poses a genuine threat.
On Damage Through Erosion of Distinctiveness
The Court found support for the concept of damage through dilution of distinctiveness in Taittinger and Ors. v. Allbev Limited and Ors. reported as (1994) 4 All ER 75, an English case involving the use of the word "Champagne" for a non-Champagne elderflower drink. The English Court of Appeal had held that allowing the Defendant to use the word "Champagne" would lead to a blurring and erosion of the unique reputation of the champagne houses. The Court approved the reasoning that damage to goodwill could arise from the slow debasement of a distinctive name, even absent specific instances of consumer deception. The Advocaat case, referred to as (1980) RPC 31, was discussed in this context as having identified "depreciation of the reputation attached to the goods" as a relevant head of damage. The Court also cited the New Zealand decision in Wineworths Group Limited v. Comite Interprofessionel du Vin de Champagne reported as (1992) 2 NZLR 327 and the first instance decision in C.I.V.C. v. Wineworths reported as (1991) 2 NZLR 432, which held that the erosion of the distinctiveness of "Champagne" was a form of damage to the goodwill of the champagne houses.
On Limitation and Continuing Tort
The issue of delay in filing the suit was addressed with reference to M/s. Bengal Waterproof Limited v. Bombay Waterproof Manufacturing Company and Anr. reported as (1997) 1 SCC 99, where the Supreme Court had held that passing off is a continuing tort and a fresh cause of action arises each time the tortious act is committed. Section 22 of the Limitation Act, 1963 was noted to provide that in the case of a continuing tort, a fresh period of limitation begins to run at every moment during which the wrong continues. The Court in the present case relied on this to find that the suit was not time-barred and that the Respondent was entitled to relief despite the gap between the initial notice in 1995 and the filing of the suit in 1999.
In Laxmikant V. Patel v. Chetanbhai Shah and Anr. reported as 2002 (3) SCC 65, the Supreme Court had held that a business name, once it acquires goodwill and reputation, becomes a protected property right. Use of a similar name by a competitor creates confusion and has the propensity of diverting customers, thereby injuring the legitimate owner. The Court also cited Ramdev Food Products (P) Limited v. Arvindbhai Rambhai Patel and Ors. reported as 2006 (8) SCC 726, which had dealt with the principle that acquiescence arises only from positive conduct inconsistent with the claim for exclusive rights, and not from mere silence or inaction. In Power Control Appliances and Ors. v. Sumeet Machines Pvt. Ltd. reported as (1994) 1 SCR 708, it was held that the defence of acquiescence requires the Plaintiff to have sat by while another party spent money invading its rights.
In Heinz Italia and Anr. v. Dabur India Limited reported as (2007) 6 SCC 1, the Supreme Court had emphasised that before a party can claim exclusive appropriation of a mark, it must prove that its product had earned a market reputation and that this reputation was sought to be violated. Prima facie evidence of dishonest intention by the Defendant generally leads to an injunction.
The Court also took note of the evidentiary argument raised by the Appellant concerning Wikipedia printouts submitted by the Respondent to prove that "Eenadu" was a household name. Citing the US Court of Federal Claims decision in Taylor Mary Campbell v. Secretary of Health and Human Services reported as 69 Fed. Cl. 775 (2006) and the US Court of Appeals decision in Lamilem Badasa v. Michael B. Mukasey reported as 540 F.3d 909, the Appellant argued that Wikipedia had no evidentiary value in judicial proceedings. The Court did not specifically resolve this point but arrived at its conclusions on the basis of the totality of the evidence on record.
Final Decision of the Court
After carefully analysing the arguments and the body of precedent, the Supreme Court dismissed the appeals filed by T.V. Venugopal and upheld the judgment of the Division Bench of the High Court of Andhra Pradesh, which had decreed the suit in favour of Ushodaya Enterprises Ltd.
The Court recorded comprehensive findings. It held that the Respondent company's mark "Eenadu" had acquired extraordinary reputation and goodwill in the State of Andhra Pradesh, where it had become virtually synonymous with the Respondent's newspaper and media empire. Though "Eenadu" is a common Telugu word meaning "today," it had, through decades of continuous and extensive use, acquired a distinct secondary meaning as identifying the Respondent's products and services. The Court held that the Appellant, being a Karnataka-based company that had begun selling its agarbathies in Andhra Pradesh from 1995, had deliberately adopted the same word "Eenadu" with the same artistic script, font, and style as used by the Respondent. The fact that the Appellant's sales in Andhra Pradesh had jumped to constitute 90% of its total business after adopting the "Eenadu" mark made it unmistakably clear that the adoption was not innocent. The Court found that the Appellant wanted to ride on the extraordinary reputation and goodwill of the Respondent.
The Court held that the Appellant could not be termed an honest concurrent user of the mark. Its adoption of "Eenadu" was ex facie fraudulent and mala fide from inception. Permitting the Appellant to continue would amount to the court stamping its approval on dishonest and clandestine conduct. Consumers who purchased agarbathies marked "Eenadu" would naturally be led to believe that the product originated from the house of the Respondent. Such deception was harmful both to the Respondent's proprietary rights and to the consuming public. Allowing the Appellant to continue would also gradually erode the extraordinary distinctiveness of the Respondent's mark.
The appeals were disposed of in terms of these findings, with the court directing each party to bear its own costs.
Points of Law Settled in the Case
This judgment settled and reinforced several important principles of law. First, a descriptive or commonly understood word can acquire exclusive trademark protection if it has been used extensively over a period of time and has developed a secondary meaning by which the public identifies it with a particular trader and not with its literal meaning. Second, the law of passing off does not require the parties to be in the same trade or deal in the same goods. If a mark has acquired such extraordinary reputation that it has become a household name, any other trader who uses that mark, even for an entirely different product, in order to benefit from the reputation, commits passing off. Third, the dishonest and mala fide adoption of a mark, particularly when accompanied by deliberate use of the same script, font, and artistic style, is a decisive factor in determining whether an injunction should be granted. Fourth, passing off is a continuing tort, and delay in bringing an action does not bar the Plaintiff's claim. Fifth, the use of a disputed mark by third parties does not constitute a defence to passing off and does not entitle any particular Defendant to ride on the Plaintiff's goodwill. Sixth, damage in a passing off action extends beyond direct diversion of customers and includes the gradual erosion or debasement of the distinctiveness of a well-known mark.
Case Details
Title: T.V. Venugopal Vs Ushodaya Enterprises Ltd. and Anr.
Date of Order: 3rd March 2011
Case Number: Civil Appeal Nos. 6314-15 of 2001
Neutral Citation: MANU/SC/0169/2011
Equivalent Citations: JT 2011 (3) SC 225; 2011 (3) KCCRSN 210; MIPR 2011 (1) 219; (2011) 2 MLJ 849 (SC); 2011 (45) PTC 433 (SC); 2011 (3) SCALE 182; (2011) 4 SCC 85; [2011] 4 SCR 1000; 2011 (2) UJ 871
Court: Supreme Court of India
Hon'ble Judges: Justice Dalveer Bhandari and Justice K.S. Panicker Radhakrishnan
Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Suggested SEO Titles for Legal Journal Publication
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- Passing Off Across Unrelated Goods: How Eenadu Became a Protected Household Name in Indian Trademark Law
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Headnote
T.V. Venugopal v. Ushodaya Enterprises Ltd. and Anr. — Civil Appeal Nos. 6314-15 of 2001 — Supreme Court of India — Decided on 3rd March 2011 — Justices Dalveer Bhandari and K.S. Panicker Radhakrishnan — Passing Off — Descriptive Mark — Secondary Meaning — Household Name — Dishonest Adoption — Different Goods — Goodwill and Reputation — Held: The word "Eenadu," though a common Telugu word meaning "today," had acquired extraordinary secondary meaning in the State of Andhra Pradesh through decades of use by the Respondent as the name of a widely circulated newspaper and media enterprise, thereby becoming a household name exclusively identified with the Respondent. The Appellant, a Bangalore-based manufacturer of agarbathies, deliberately adopted the mark "Eenadu" with the same artistic script, font, and style as the Respondent, with the mala fide intention of capitalising on the Respondent's goodwill. Such adoption was ex facie fraudulent, and the fact that the businesses operated in entirely different fields did not preclude a passing off action. The law of passing off had evolved to protect well-known marks across product categories where the consuming public is likely to associate the Defendant's goods with the Plaintiff's enterprise. Third-party use of a mark is no defence to a passing off action. Passing off being a continuing tort, delay in bringing an action does not bar relief. A descriptive word that has acquired a strong secondary meaning is entitled to protection as a trademark and the Plaintiff's goodwill and the consuming public's right not to be deceived are both served by restraining the dishonest user. Appeals dismissed.
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