Xerox Corporation vs Sarita Agarwal & Anr on 2 July, 2018

[Cites 3, Cited by 0]

Delhi High Court

Xerox Corporation vs Sarita Agarwal & Anr on 2 July, 2018

Equivalent citations: AIRONLINE 2018 DEL 1259

1. Present suit has been filed for permanent injunction restraining infringement of trademark, dilution of trademark, passing off, rendition of accounts, damages, delivery up, etc. The prayer clause is reproduced hereinbelow:-

"35. It is, therefore, prayed that this Hon'ble Court may be pleased to grant the following reliefs:

i. An order for permanent injunction restraining the Defendants, their partners, representatives and/or others acting for and on their behalf from manufacturing, selling, offering for sale, advertising or in any manner dealing in goods or services under the mark ZEROX with or without the Defendants' logos, amounting to an infringement of the Plaintiff's trademark XEROX.

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ii. An order for permanent injunction restraining the Defendants, their partners, representatives and/or others acting for them and on their behalf from manufacturing, selling, offering for sale, advertising or in any manner dealing in goods or services under the mark ZEROX, in the business name Zerox India and on the domain www.zeroxindia.com with or without the Defendants' logos in a manner that amounts to passing off their business as that of the Plaintiff under its trademark XEROX.

iii. An order for permanent injunction restraining the Defendants, their partners, representatives and/or others acting for them and on their behalf from manufacturing, selling, offering for sale, advertising or in any manner dealing in goods or services under the mark ZEROX in a manner that dilutes the Plaintiff's well-known trademark XEROX.

iv. An order for rendition of accounts of profits directly or indirectly earned by the Defendants from their infringing activities and wrongful conduct and a decree for the amount so found due to be passed in favour of the plaintiff.

v. An order of mandatory injunction directing transfer the domain http://zeroxindia.com/ to the Plaintiff.

vi. An order for delivery up to the Plaintiff by the Defendants of all infringing material bearing the infringing trademark ZEROX and the Defendants' logos for the purpose of erasure/destruction.

vii. A sum of Rs.1,00,01,363/- for a decree of damages as valued for the purposes of this suit towards loss of sales, reputation and goodwill of the Plaintiff's trademarks caused by the activities of the Defendants.

viii. An order as to the costs of the proceedings.

ix. Any further order as this Hon'ble Court may deem fit and proper in the facts and circumstances of the case."

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2. At this stage, learned counsel for the plaintiff gives up prayers 35

(iv), (vi) and (vii) of the prayer to the suit. The statement made by learned counsel for plaintiff is accepted by this Court and plaintiff is held bound by the same.

3. Vide order dated 15th February, 2018, this Court had granted an ex parte ad interim injunction in favour of the plaintiff and against the defendants. The relevant portion of the ex-parte injunction order is reproduced hereinbelow:-

"Consequently, till further orders, the defendants, their partners, representatives and/or others acting for and on their behalf are restrained from manufacturing, selling, offering for sale, advertising or in any manner dealing in goods or services under the mark ZEROX, in the business name Zerox India and on the domain name www.zeroxindia.com or any other trade mark/trade name similar to the plaintiff's trade mark XEROX in any manner whatsoever."

4. Despite service on the defendant no. 1 on 07th March, 2018 and on the defendant no. on 23rd March, 2018, none has appeared for them. Accordingly, the defendant nos. 1 and 2 are proceeded ex parte.

5. This Court is also of the view that the present suit can be disposed of without any further delay. A Coordinate Bench of this Court in Satya Infrastructure Ltd. and Ors. Vs. Satya Infra & Estates Pvt. Ltd., 2013 SCC OnLine Del 508 has held as under:-

"I am of the opinion that no purpose will be served in such cases by directing the plaintiffs to lead ex parte evidence in the form of affidavit by way of examination-in-chief and which invariably is a repetition of the contents of the plaint. The plaint otherwise, as per the amended CPC, besides being verified, is also supported by affidavits of the plaintiffs. I fail CS (COMM) 492/2018 Page 3 of 9 to fathom any reason for according any additional sanctity to the affidavit by way of examination-in-chief than to the affidavit in support of the plaint or to any exhibit marks being put on the documents which have been filed by the plaintiffs and are already on record. I have therefore heard the counsel for the plaintiffs on merits qua the relief of injunction."

6. The relevant facts of the present case are that the plaintiff is a Fortune 500 company with a global business valued at USD 11 billion and has operations spread over 160 countries with over more than 35,000 employees across the world. It is averred in the plaint that the plaintiff conducts its operations in India through its Indian subsidiary, Xerox India Limited, which was incorporated in 1995.

7. It is stated that the plaintiff, apart from manufacturing photocopying machines, is associated with a number of products and services such as multifunction printers, large volume digital printers and fax machines and their consumables like Toner, and printing technologies. It is stated in the plaint that the plaintiff also provides and markets software such as Xerox Docushare, Xerox MarketPort and FlowPort, offers consulting services, Enterprise Content Management Digital Repository Services and printing outsourcing.

8. It is stated in the plaint that the trademark XEROX is an invented mark as it was uniquely adopted by combining the Greek words for „dry‟ and „writing‟ and is distinctive. It is further stated that the coined word XEROX is also an integral and conspicuous part of the plaintiff‟s trading style as a result of which the said trademark and trade name XEROX is instantly and exclusively recognized/identified with the plaintiff company, its business, goods and services.

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9. It is stated in the plaint that the plaintiff is the registered proprietor of the trademark XEROX in Classes 1, 7, 9 and 16 under the Trade Marks Act, 1999 and is the proprietor of the logo, for which it has filed multiclass applications in India, which are still pending. It is stated that plaintiff was registered in Class 1 in 1952 and under Classes 7 and 9 in 1963.

10. It is stated that the plaintiff also maintains the website www.xerox.com which details the background, products and services of the plaintiff under the trademark and trade name XEROX.

11. It is stated in the plaint that the plaintiff‟s worldwide revenue for the financial year 2016 was USD 10.77 billion and its turnover in India for the same period was Rs. 521 Crores. It is stated that the plaintiff has incurred huge expenditure in advertisement and promotion of its products and services under the trademark and trade name XEROX.

12. Learned counsel for the plaintiff states that in the month of November, 2017, during a routine check of the trademark registry database, the plaintiff came across the defendants' application No.2822964 dated 08th October, 2014 in Class 9 under the trademark . He states that the defendant no.1, in its evidence by way of affidavit accompanying the said trademark application, identifies herself as the sole proprietor of Zerox India and claims that the mark ZEROX was adopted on 01st January, 2000, which has been in continuous use since.

13. Learned counsel for the plaintiff states that such claim of the defendant no.1 is false as the business page of Zerox India maintained by third party websites proclaims, "We Zerox India founded in the year 2004......" and the defendant no.1‟s sales tax registration is also of the CS (COMM) 492/2018 Page 5 of 9 year 2004. He further states that one of the trade websites, on which defendant no.1 advertises its services, also provides the defendants‟ website, i.e. http://zeroxindia.com/ and a WHOIS search for www.zeroxindia.com revealed that the same is registered in the name of defendant no.2.

14. Learned counsel for the plaintiff states that the plaintiff subsequently conducted an onsite investigation which revealed that the defendants were engaged in the business of providing copying and printing services and also manufacture and sell Black Paper Toner, Lamination Roll, Heat Rollers, Printer Cartridges, etc. under the mark ZEROX. He further states that plaintiff's investigator also placed an order and received a consignment containing four containers of toner, under the mark ZEROX along with an invoice. A photograph of one of the products is reproduced hereinbelow:

CS (COMM) 492/2018 Page 6 of 9

15. Learned counsel for the plaintiff states that the defendants are selling their toner-products under the mark ZEROX which, apart from being phonetically identical to the plaintiff‟s trademark XEROX, also has the word ZEROX written in a font which is deceptively similar to the font used by the plaintiff. A comparison of the plaintiff‟s font with that of the defendants is reproduced hereinbelow:

16. He states that the defendants have adopted the mark ZEROX, the red and white colour combination and the accompanying logos with a mala fide motive and with a view to ride on the plaintiff‟s reputations by associating their sub-standard products with the plaintiff‟s trademark.

17. On 15th February, 2018, this Court granted an injunction order and also appointed a Local Commissioner. During the local commission conducted on 07th March, 2018, the defendant no.1 was found selling infringing products and 2082 units were seized. The relevant portion of the Local Commissioner‟s report is reproduced hereinbelow:-

"5. Mr. Singh was given a copy of the Order and explained the nature of the proceedings that were to be undertaken pursuant to the Order. On the request of the Commissioner, Mr. Singh allowed the premises to be searched and did not obstruct in any manner. However, he denied the Commissioner's request for an identity proof, claiming that he did not presently carry any such proof.

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6. Thereafter, the Commissioner began the searching the premises at 12.25 PM. The said search was halted at 12.27 PM as Mr. Sardar Singh left the premises (to contact Mr. Dilip Agrawal through his phone). The search was shortly resumed soon after on his return at 12.32 PM.

7. Meanwhile, at 12.40 PM, the Commissioner, through Mr. Sardar Singh's phone spoke to Mr. M L Sharma (a friend of Mr. Dilip Agrawal). Mr. Sharma inquired about the ongoing process and conveyed to the Commissioner that he will reach the premises in two hours along with Mr. Dilip Agrawal.

8. At 2.06 PM, Mr. Dilip Agrawal and Mr. ML Sharma entered the premises. Mr. Dilip Agrawal confirmed that Mrs. Sarita Agrawal is his wife and he manages the shop. He also stated that his wife is a homemaker and unable to come to premises because of personal reasons. Mr.Agrawal was given a copy of the order and explained the nature of the proceedings. The counsels for the Plaintiff also supplied him with complete set of documents of the captioned suit along with the paper book. Mr. M L Sharma shortly left the premises.

9. The Commissioner after searching the premises discovered numerous products with impugned mark. The details of the inventory of the products are as follows:

         S.No.        Details of Product            Number of Units
         1           Rubber Pieces                  140 Units
         2           Stamps                         5 Units
         3           Machine Parts                  47 Units
         4           Holographic         Stickers   14 Units (Each
                     Packets                        unit containing
                                                    approximately
                                                    100 sheets, and
                                                    each       sheet
                                                    containing    64
                                                    Stickers)


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          5           Unused Quotation Books        78 Units
         6           Visiting Cards                1500       Units
                                                   (approximately)
         7           Unused Packaging Boxes        63 Units
         8           Posters                       215 Units
         9           Packets containing Toner      20 Units
                                      Total        2082 Units

Photographs of various products with the impugned mark are annexed marked as Annexure C (colly).

18. In the opinion of this Court, the defendants have no real prospect of defending the claim, as they have neither entered appearance nor have filed their written statements. Further, the plaintiff is the registered user of the trade marks in question.

19. In view of the above, the present suit is decreed in favour of the plaintiff and against the defendants in accordance with paragraph 35 (i) to

(iii) and (v) of the present plaint along with actual cost. Registry is directed to prepare a decree sheet accordingly. The defendants are directed to hand over the goods seized by the Local Commissioner to an authorised representative of the plaintiff for destruction within four weeks.

20. With the aforesaid observations, present suit and pending application stand disposed of.

MANMOHAN, J JULY 02, 2018 rs/mn CS (COMM) 492/2018 Page 9 of 9

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