Delhi District Court
Having Its Registered Office At: vs Sh. U. K. Sethi on 7 November, 2014
IN THE COURT OF SH SUNIL K. AGGARWAL: ADDL. DISTRICT
JUDGE (CENTRAL) 10: DELHI
TM No. : 80/10
M/s Standard Electricals Ltd.
7A, Hansalaya Building,
15Barakhamba Road,
New Delhi110001.
Having its registered office at:
Standard House,
Nakodar Road, Jalandhar,
Punjab144003. ....Plaintiff
VERSUS
1. Sh. U. K. Sethi,
Super Tech Switchgear Marketing Ltd.
Opp. Radha Swami Satsang Hall,
PTK Bye Pass, G.T. Road,
Jalandhar144004.
2. Super Tech Switchgear Marketing Ltd.
Opp. Radha Swami Satsang Hall,
PTK Bye Pass, G.T. Road,
Jalandhar144004.
3. Super Tech Power Control Pvt. Ltd.,
Super Tech House,
Opp. Radha Swami Satsang Hall,
Pathankot Bye Pass,
TM No. 80 of 2010 Page no. 1 of 25
G. T. Road, Jalandhar144004. .....Defendants
Plaint presented on 06.05.1996
J U D G M E N T:
1. This suit for permanent injunction for restraining infringement of the trademark, copyright, passing off and unfair competition; rendition of account and delivery up of the impugned goods and material has been filed by the plaintiff, a duly incorporated company through Sh. I. A. Sadhwani, Executive Director (Marketing) stating that it was incorporated as IndoAsian Traders Pvt. Ltd. on 10.01.1958. Its name was changed to IndoAsian Switchgears Ltd. on 25.10.1978 and further to I. A. Switchgears Ltd. on 06.08.1990 and lastly to its present name on 26.09.1994. Since beginning, it is engaged in the business of manufacturing and marketing of electrical equipment viz. switchgears, fusegears, distribution boards, rewireable switch fuse units, MCBs, Changeover Switches, Plugs, Sockets etc. and is a market leader in the low tension switchgear industry. It has three state of the art plants at Jalandhar, Delhi and Gurgaon. The plaintiff has been supplying its wares to reputed government agencies and private companies and is also exporting wide range of the products. Plaintiff had adopted the trademark 'STANDARD' in relation to its products since inception in 1958 and it has been continuously and extensively used for last over three decades. Plaintiff is also the proprietor of a device comprising 'S' within a triangle (black on white). The words 'Standard TM No. 80 of 2010 Page no. 2 of 25 Switchgears' appear in two rows beneath the said triangular device. In another representation the trademark 'S' in triangle appears in white on a black background and words 'Standard' and 'India' appear above and below the device. Yet another device mark of plaintiff is 'S' in a triangle set in square device with mark 'Standard' and word 'Switchgear' appear one under the above at the base of triangle. The slogan 'life guards in power' appear in the black rectangular device. The trademark 'Standard' by itself is typically depicted by the plaintiff in a stylized block lettering with a distinctive alphabet 'N', which contains a device symbolic of an electrical current. The plaintiff holds several trademarks registrations vide nos. 4872153, dated 10.03.1980, 355436 dated 16.11.1979 & 310536 dated 02.12.1975 for goods of Class9 and the same have been renewed from time to time and are valid and subsisting.
2. The plaintiff is also the owner of copyright in its product literature and pricelist relating to its products which were prepared after considerable research, labour and investment. On account of the prior adoption of the trademark 'Standard' and distinctive logo devices and continuous usage thereof the plaintiff has substantial goodwill and reputation by maintaining stringent quality standards. The reputation is intangible but invaluable asset and property of the plaintiff which none else is entitled to appropriate. The popularity of goods of the plaintiff under these trademarks can be gauged from the sales figures and advertisement expenses of past 10 years. The domestic sales in 198687 of Rs.8.44 Crores and export of Rs.1.01 Crores and TM No. 80 of 2010 Page no. 3 of 25 advertisement expenses of Rs.2.39 lacs gradually rose to Rs.24.04 crores, Rs. 3.4 crores and Rs.28.82 lacs in 199596 (up to 29.02.1996).
3. Defendant no. 1 was employed as Deputy General Manager (Sales) of the plaintiff up to July, 1992. Sometime in March, 1996, plaintiff learnt that defendant no. 1 has commenced the business of manufacturing and sale of electrical goods particularly switchgears, fuesgears, changeover switches, Power Control Panels etc. under the trademark 'Supertech' in conjunction with a device comprising 'S' in a triangle and another device combining the features of 'S' in a triangle set in a square device with the words 'Suptertech' & 'Switchgears' appearing on the base of triangle one under the other with a rectangular base in the black containing the words 'Power guards'. The plaintiff had also come across a pricelist and pamphlet being circulated by the defendants reflecting that they were unashamedly copied from the plaintiff's literature. The plaintiff without resorting to litigation made an attempt to explore an alternative solution by sending a curt letter to defendant no. 1 on 05.03.1996 seeking the defendants to desist from illegal trading activities. The defendants however refused to give up the use of infringing device mark claiming to have legitimate rights to use the same in their reply dated 09.03.1996 and also alleged defamation and harassment.
4. Form a glance of defendant's products, visiting cards, literature and price list, it is obvious that they had the plaintiff's marks, literature and price TM No. 80 of 2010 Page no. 4 of 25 list before them to aid in the designing and preparation of impugned mark, literature and price list. They have thereby not only infringed the plaintiff's registered trademarks but also run over the copyright in its product literature. Defendant no. 1 had inside knowledge of the plaintiff's statutory and proprietary rights over the marks and adoption of deceptively similar marks and substantial reproduction of plaintiff's copyright material is unpardonable. The malafide of the defendants are thus writ large in their conduct. The defendants further indulged in unfair competition in view of the fact that defendant no. 1 due to his close association with plaintiff knew their clients details to whom the defendants are now circulating their literature and pricelist advertising marks deceptively similar to that of the plaintiff which such clients excursively associate with the goods of plaintiff. Although the damage and injury to the reputation of plaintiff is incapable of assessment in money terms yet the plaintiff must have suffered losses to the extent of Rs. 5 lacs in its business due to unlawful trading activities of the defendants. It is stated the cause of action had arisen in Delhi because the defendant's advertisement was published in Dainik Punjab Kesari which has a substantial circulation here. Further the plaintiff has a place of business in Delhi from where good part of its activities are being carried therefore, this court has territorial jurisdiction for the suit.
5. In a detailed 24 page common written statement the defendants have raised preliminary objections about the suit suffering from unreasonable and undue delay, latches, and acquiescence and therefore it is liable to be TM No. 80 of 2010 Page no. 5 of 25 dismissed. The defendants are marketing electrical equipment including switchgear and fusegear since 10.11.1995 under the trademark/label Supertech with a device of'TS' within a triangle crafted in a unique manner. Defendant no. 3 is the manufacturer and owner of these trademarks since 13.07.1992 within the knowledge of the plaintiff. Moreover, the device of triangle cannot be exclusively claimed by the plaintiff and being common to the trade, it is used by other manufactures such as M/s Havell's Industries using H within a triangle since April, 1942 in which respect their trademark is registered under number 272379 dated 31.05.1971 in class 9. It is contended that the suit suffers from misjoinder and nonjoinder of necessary and proper parties. The trademarks/logo claimed by the plaintiffs are registered in the name of separate entity and therefore the plaintiffs have no locusstandi to maintain the suit. The plaintiff cannot claim to be the registered owner and proprietor of said trademarks/labels nor does their existence help out the plaintiff. It is averred that the suit is based on misstatements, false claims and is otherwise based on bogus, forged, fictitious and manipulated documents and has been filed with motive to harass the defendants. It is also contended that the suit has not been properly valued for the purposes of court fee and jurisdiction and that this court does not have territorial jurisdiction to entertain and try this suit.
6. On merits, it is claimed that defendant no. 1 is a highly qualified Engineer in electrical switchgear industry. After acquiring vast experience of more than 22 years with Government Department and Private Companies of TM No. 80 of 2010 Page no. 6 of 25 repute, he had constituted defendant no. 3 in July, 1992 which conceived and bonafidely adopted the trademark/label 'SUPERTECH' along with a device of a triangle within which the monogram of its trademark 'SUPERTECH' as 'TS' openly and continuously since 13.07.1992 in relation to the said electrical goods. Defendant no. 2 has been marketing the products manufactured by defendant no. 3 as one of its agents, dealer and stockiest throughout the country except Delhi by virtue of their superior quality. These are being widely published through various medium by incurring huge expenditure. The trademark of the defendants therefore has acquired enviable goodwill and valuable reputation in the minds of traders and purchasing public. On the basis of popularity of the products of defendant no. 3 under the trademark 'SUPERTECH', M/s I. A. Switchgear Ltd. of IAS House, Nakodar Road, Jalandhar had approached it for using their products in its panel being manufactured under the said trademark/label and since that company had offered the supplies of their standard marked products on good terms, defendant no. 3 had agreed to purchase them for use in its panels as per the terms contained in letter dated 06.05.1993 and 06.06.1995. The plaintiff therefore had the knowledge of user of the trademarks of the defendants since beginning as both are working in the same city.
7. Defendant no. 3 has been publishing their catalogues, pricelist and other printed material with a view to popularize its products and trademarks amongst more and more people. The sales of Rs.4,92,429/ in 199293 grew to TM No. 80 of 2010 Page no. 7 of 25 Rs.30,54,108/ in 199596 in short span of four years. The advertisement expenses for 199596 were Rs.12,025/. In the New Year special supplement issue of the'Tender World'of 02.01.1994 advertisements of both the parties had been published. While the advertisement of plaintiff was on left side on page 1, that of defendant was on page 33. The defendants also claim to have produced the affidavits of their valued customers including Sh. S. P. Sharma, Director of M/s Youvee Labels Pvt. Ltd., Jalandhar to the effect that he had devised the impugned trademark/label of the defendants and had printed labels, stickers, letterheads and visiting cards etc. 1992. The letters of plaintiff confirm that their products consumed by defendant no. 3 in their panels were verified by their representative before dispatch. It is therefore evident that defendant no. 3 had marketed their products under the impugned trademark/label only after they were inspected and verified by the representative of plaintiff. During 199596 the plaintiff had started supplying defective/substandard goods which could not be consumed by defendant no. 3. When the quality of supplies did not improve despite complaints, defendant no. 3 stopped purchasing from the plaintiff who got annoyed and sent letter dated 05.03.1996 on false and frivolous ground by inserting an advertisement in 'Punjab Kesari' dated 24.02.1996. Although defendant no. 1 had sent its reply dated 09.03.1996 yet the plaintiff filed the present suit on baseless ground and obtained interim injunction by playing fraud on the court despite the knowledge of Caveat Petition filed by the defendants before Ld. District Judge, Jalandhar on 11.03.1996. The plaintiff thus has suppressed having business dealings with the TM No. 80 of 2010 Page no. 8 of 25 defendants and that registration of their trademarks are subject to the restriction not to claim exclusive rights over 'S', 'India' & 'Standard'. The words 'Power Guards' are also common to the trade as M/s Siemen's Ltd. has been using them along with their trademark. While asserting that the trademark/label of both the parties are entirely distinct from each other and there is hardly any similarity, the defendant claimed that the plaintiff was able to obtained exparte interim injunction by playing fraud on the court.
5. It is stated that the plaintiff has come into existence only since 1994 and therefore it cannot be termed as prior adopter of trademark 'STANDARD' and the logo. It is denied that the goods of plaintiff under the alleged trademark/labels have acquired substantial goodwill and reputation in the minds of purchasing public and traders. The sales and advertising figures furnished by the plaintiff are wrong and fictitious. It is denied that the plaintiff came to know about the defendants only in March, 1996 as defendant no. 1 had started manufacturing and selling electrical goods openly since 13.07.1992. The plaintiff having dealt with defendant no. 3 from 1993 to 1995 cannot claimed to have remained oblivious of the presence of goods under trademark/label 'SUPERTECH' along with logo 'TS' within the device of triangle. The genuineness of copies of documents filed by the plaintiff has been seriously doubted. It has been denied that the suit has been properly valued and requisite court fee has been paid by the plaintiff. None of the parties has been residing or working for gain in Delhi. The newspaper in which advertisement of TM No. 80 of 2010 Page no. 9 of 25 defendant's trademark/label was carried, had not been published in Delhi therefore this court has no territorial jurisdiction to entertain and try this suit. On these averments, dismissal of suit with compensatory cost has been urged.
6. In replication, the plaintiff has reaffirmed the contents of plaint and contradicted those of the written statement. The business dealing of plaintiff with defendant no. 3 could not be mentioned due to inadvertence as by then the plaintiff was not aware of the use of composite infringing marks by the defendants. No correspondence exchanged with the plaintiff during the period of such dealings has been produced. Forged and fabricated documents have been filed by the defendants in this case as the advertisement in 'Tender World' dated 02.01.1994 does not bear any trademark/device of the defendants as against their letterhead dated 20.08.1992. The plaintiff has neither stood by nor encouraged the defendants to spend money on its business associated with the infringing marks. As soon as, it came to know of them, a letter dated 05.03.1996 was issued to the defendants. The impugned advertisement of the defendants in the inner page of magazine did not come to the notice of the plaintiff. It is contended that the disclaimer in the registration of the plaintiff does not give right to third parties to filch the whole of mark with impunity. Since the defendants have been advertising in newspapers which have substantial circulation in Delhi, plaintiff has been carrying on its business here and therefore entitled to invoke jurisdiction of this court under Section 62 (2) of The Copyright Act, 1957 readwith Section 20 CPC.
TM No. 80 of 2010 Page no. 10 of 25
7. Vide an exparte order dated 07.05.1996, the defendants were restrained from using trademark 'S' of the plaintiff in a triangle, big square and deceptively similar mark and also from using the catalog with Mark 'S' in a triangle till the next date. Said order was made to continue till further orders on 10.12.1998.
8. An application under Order XXXIX Rule 4 CPC was filed by the defendant for vacating the ad-interim injunction. The plaintiff has filed an application under Order I Rule 10 CPC for impleading Supertech Power Control Pvt. Ltd. as a defendant. Neither these nor the two injunction applications filed by the plaintiff have been formally disposed off but an amended memo of parties showing Supertech Power Control Pvt. Ltd. as defendant no. 3 was filed on 30.07.1996 reflecting its implied acceptance as the move was prompted by the objection of defendants.
9. Parties took about 20 adjournments for holding discussions in order to reach settlement in the case over a period of more than five and half years but were not successful. Following issues therefore were framed on 01.12.2000 on the basis of pleadings:-
1. Whether the is barred by delay, latches and acquiescence? OPD.
2. Whether the plaintiff is guilty of concealment of material facts? OPD.
3. Whether this court does not have the territorial TM No. 80 of 2010 Page no. 11 of 25 jurisdiction to entertain and try the present suit?
OPD.
4. Whether Mr. I. A. Sindhwani is competent and authorized to institute the present proceedings?
OPP.
5. Whether the plaintiff is the proprietor of the trademark 'S' in a triangle or 'STANDARD' with the 'electric current' symbol registered under nos. 487215B, 355436 and 310536 ?
OPP.
6. Whether the use of the device mark containing an initial in a triangle or the trademark 'SUPERTECH' with the 'electric current' symbol by the defendant in relation to its products would result in infringement of the plaintiff's registered trademarks and passing off the defendant's goods as those of the plaintiff? OPP.
7. Whether the plaintiff the owner of the copyright in its products literature and price list including the product codes relating to its products?
OPP.
8. Whether the products literature and price lists comprising the get up, layout and arrangement of features including product codes, colour scheme, get up, layout and arrangement of features of the defendant would lead to infringement of copyright of the plaintiff thereto? OPP.
9. Whether the defendants' activities amount to acts of unfair competition? OPP.
10. Whether the trademark of the defendant is deceptively similar to that of the plaintiff?
TM No. 80 of 2010 Page no. 12 of 25
OPP.
11.Relief.
10. The case was transferred to District Court in November, 2002 on enhancement of its pecuniary jurisdiction since non for the defendants turned up before the transferee court, court notices were sent to the defendants as well as their counsels. While Sh. R. K. Aggarwal, Advocate, Ld. Counsel for the defendants was served for 05.02.2004, defendant no. 1 & 2 were served on 28.07.2004 and 10.06.2004 respectively. On non-appearance of the defendants, they were held ex-parte on 24.08.2005.
11. A box containing the products of parties filed by the plaintiff with plain had not been received in the District Court on transfer of the suit. Requests for retrieving the same were made to the Hon'ble High Court pursuant whereof the box was received in August,2009.
12. In ex-parte evidence, plaintiff has examined Sh. S. R. Arora as PW 1 who has stated its case and proved the memorandum and articles of associations of the plaintiff including the changes brought about in its name as Ex. P-1, Board resolution in favour of Sh. I. A. Sadhwani Ex. P-2, Board resolution dated 08.04.2005 in his own favour Ex. P-2A, Trademark registration certificate Ex. P-3, Copy of form TM-33 for change of name of the proprietor of registered trademark mark 'X', Sales and advertisement expenses statement certified by the Charted Accountant Ex. P-4, Sales invoices Ex. P-4A (collectively), price list circulated by the defendants mark 'Y', letter dated 05.03.1990 of the plaintiff Ex. P-6, reply of the defendants Ex. P-7, visiting card of the defendant, literatures of parties concerning the goods mark 'Z' and Ex. P-9, photographs TM No. 80 of 2010 Page no. 13 of 25 of defendant's packaging Ex. P-10, the products of the parties bearing the trademark in question Ex. P-11 & Ex. P-12. No other witness has been examined by the plaintiff.
13. I have heard Sh. Manish Biala, Adv. Ld. Counsel for the plaintiff and perused written synopsis as well as judicial record. Issue-wise findings of the court are recorded hereunder:-
14. Issue No. 4:-
In his un-rebutted testimony PW 1 has proved the board resolution of which the material extract is Ex. P-2, passed by the plaintiff on 29.03.1996 whereby Sh. I.A. Sadhwani, Executive Marketing Director was authorized to initiate legal proceedings the in the court against defendant no. 2 for restraining it from infringing the plaintiffs' registered trademark. He was further authorized to sign the plaint, make statement and deal with all matters connected therewith. By holding a superior position in the hierarchy of the plaintiff, Sh. Sadhwani was competent to sign and verify the plaint as its principal officer under Order XXIX Rule 1 CPC. Although, he was deputed to initiate proceedings manifestly against defendant no. 2 and that too just for restraining them from infringing the registered trademark of the plaintiff yet the inclusion of other related reliefs in the plaint in which defendant no. 1 & 3 were also joined may not be construed beyond his purview as he was entitled to comprehensively deal with the matter to protect the interest of his employer and take all decisions and steps in that behalf. The institution of suit by Sh. Sindhwani therefore is found to be well within his authorization. The issue is decided in affirmative.
15. Issue No. 5:-
Plaintiff has proved the record of registration certificates no.
TM No. 80 of 2010 Page no. 14 of 25 487215 dated 10.03.1988 in respect of stylized word mark 'STANDARD' inclusive of alphabet 'N' containing symbol of electric current and no. 355436 dated 16.11.1979 for word mark 'S' in a triangle below which standard switchgears is written in two lines and the entire logo is contained in a square, for goods of class-9, collectively as Ex. P-3. The certified copies produced on judicial record are per-se admissible in evidence. The same have not been dented or even attempted by the defendants. It has been claimed that the registration have been renewed from time to time and are valid and subsisting. There is no reason to doubt. Plaintiff therefore is found to be the proprietor of aforesaid two registered trademarks. The certificate of registration of trademark under no. 310536 has not been formally tendered therefore the issue in respect of first two registrations is decided in affirmative.
16. Issue No. 7:-
The plaintiff has not proved any of the price lists of its products just prior to the institution of the suit or even the framing of issues. The literature and prices only of 2005 have been proved as Ex. P-9. In the absence of defendants it cannot be culled that they or either of them or a substantial portion thereof have been copies by the plaintiff either from their literature/price-lists or from the similar document of a third party. The plaintiff having designed their literature and price list in a unique manner, earmarking distinct codes to their products to easily identify them coupled with layout, colour scheme and arrangement of features is the creators and owner thereof. Although, the documents Ex. P-9 were not the subject matter of the suit originally yet the court needs to take into account the developments that have taken place in respect of the subject matter of the suit during its pendency. The literature of price list of earlier years available in judicial record reveals that the presentation thereof has gradually changed of course by keeping the key TM No. 80 of 2010 Page no. 15 of 25 features of products displayed therein constant. The pronouncement in this case about the literature and price lists of 1995-96 therefore would be absolute as the parties and their business has not remained static but is ongoing with necessary changes/modifications. Therefore consideration of documents that have come into existence and produced during pendency of the suit may not be construed extraneous or beyond the scope of the suit. As such the issue is decided in affirmative in respect of documents Ex. P-9.
17. Issue No. 1:-
Plaintiff claims to have become aware of the offending trademarks/label of defendants in or about March, 1996 even through it was dealing with defendant no. 3 from 1993 to 1995. The defendants have not filed any documents indicating that the impugned trademark/label of 'SUPERTECH' and 'TS'were brought to the notice of plaintiff. Copies of their invoices from 1993 till early 1996 do not bear either the trademark or the logo/device. The grievance raised vide letter Ex. P-6 will have to be taken on its face value wherein its Managing Director was agitated on seeing the advertisement of defendants in the issue of Punjab Kesari dated 24.02.1996. No delay and for that matter latches and acquiescence can be attributed to the plaintiff in initiating the present action. Even otherwise, it has been held in 'Midas Hygiene Industries P. Ltd. Vs. Sudhir Bhatia & Ors.,2004(28) PTC 121'.
The issue therefore is decided in negative.
18. Issue No. 2:-
By abstaining from suit proceedings, the defendants failed to establish their assertion of open and regular use of their trademark/ label since 13.07.1992. There is no document to convey that the plaintiffs had the opportunity to become aware of the user of impugned trademark/label by the TM No. 80 of 2010 Page no. 16 of 25 defendants during the period of their dealing with defendant no. 3 from 1993 till the end of 1995. The allegation of forgery in the price list of defendants needed to be substantiated by producing the actual document in use. The newspaper Tender-World of 02.01.1994 was denied by plaintiff at the stage of admission/denial of the documents. It was not tendered by calling a witness from publisher. It is quite possible that the plaintiff did not shuffle end pages of new year special supplement of the business publication and therefore the advertisement of defendant on page 33 escaped notice. No other fact or circumstances have been put forth to assess that the plaintiff had suppressed or concealed the material facts from the court or had come forward with misrepresentation. The issue therefore is decided in negative.
19. Issue No. 8:-
As has been observed in issue no. 7 that the plaintiff has proved its copyright in the products literatures and price lists Ex. P-9 which were published in 2005-06 during pendency of the suit and not the once which may have been produced alongwith the plaint. The defendants must also be bringing new edition of literature of their products and price lists due to enhancement in knowhow, growth in business, market competition and inflation. There is therefore no point in comparing the price list and literature of defendants of 1994-95 with that of Ex. P-9, particularly when the defendants had disowned copies of such documents produced by the plaintiff. The issue thus is disposed off accordingly.
20. Issues No. 6 & 10:-
The plaintiff has relied upon following precedents regarding the legal proposition of infringement and passing off. It has been held in R. G. TM No. 80 of 2010 Page no. 17 of 25 Anand Vs. M/s Deluxe Films, AIR 178 SC 1613 that: there cannot be a copyright in an idea, subject matter, themes, plots or historical or legendary facts. Where the same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur. If the defendants work is nothing but a literal imitation of the copyrighted work with some variations here and there, it would amount to violation of the copyright i.e. the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy.
Further in Ansul Industries Vs. Shiva Tobacco Company, 2007 (34) PTC 392 (Delhi) it was laid that when the question whether a mark causes or is likely to cause deception or confusion arises before a court, the standard applied is not that of a vigilant consumer or a trader, but standard of an unwary normal customer of that product. The court has to consider and examine whether a consumer of a product is likely to be deceived or confused after examining broad and dominant features of the two marks and whether there is overall similarity i.e likely to mislead a purchaser. Both the marks have to be considered as a whole.
Question of confusion cannot be decided by keeping the two marks by each other and noting similarities and differences in them. Question of deception and confusion has to be examined and dealt with from commercial point of view. The law TM No. 80 of 2010 Page no. 18 of 25 gives protection to the proprietor of a trademark if there is likelihood of deception or confusion even when an action for passing off is initiated, the essential features of both the marks are taken into consideration to examine whether the alleged infringer is passing off his goods as that of the other and causing injury to his goodwill and business.
In C. Cunniah & Company Vs. Balraj & Company, AIR 1961 Mad. 111, it was held that: to obtain copyright the expenditure of original skill and labour in execution and not originality of thought are required. Though, pictorial representation of Lord Balasubhramanya in a human form is a subject which is common to everyone still a picture of lord drawn by an artist made up of conventional ideas as to his posture, his form ornaments, the vahanam he uses and the other matters, the picture produced is still the result of skill and labour of the artist and it certainly entitles him to claim copyright in the product of his labour. It is well settled that an infringement could come into existence where the defendants work was taken from the plaintiff's work. In deciding this question, there need not be exact reproduction to support the inference that the defendants work was taken from the plaintiff's work. Indeed every intelligent copying must introduce a few changes.
In M/s Hindustan Radiators Company Vs. M/s Hindustan TM No. 80 of 2010 Page no. 19 of 25 Radiators Ltd., 187 PTC 73 (Delhi) some guidelines for establishing prima facie case for grant of injunction in an action for infringement for trademark and passing off are laid down:
i) that the plaintiff has been using its trading style and trademark for quite a long period and continuously whereas the defendant has entered into the said filed.
ii)that there has not been much delay in the filing of the suit for injunction by the plaintiff.
ii) that the goods of the plaintiff have acquired a distinctiveness and are associated in the mind of the general public as goods of the plaintiff.
iii) that nature of activity of the plaintiff and the defendant is same of similar.
iv) that the goods of the parties to which the trademark of the plaintiff is associated are same or similar.
v) that the user of the said trademark or trade name by the defendant is likely to deceive and cause confusion in the public mind and injury to the business reputation of the plaintiff.
vi) that the sphere of activity and the market of consumption of goods of the parties are the TM No. 80 of 2010 Page no. 20 of 25 same.
viii) that the customers of the plaintiff, interalia, include uneducated, illiterate and wary customers who are capable of being deceived or confused or misled.
In Ramdev Food Products Ltd. Vs. Arvindbhai Rambhai Patel, 2006 (33) PTC, 281 (SC), the essence of passing off has been laid down as:
i)Plaintiff must have established a goodwill and reputation attached to the goods or services which he supplies in the minds of purchasing public.
ii)He must demonstrate a misrepresentation by the defendant to the public whether or not intentional, and
iii)He must demonstrate that he suffers or in a quick time action that he is likely to suffer damage by reason of erroneous belief engendered by the defendant's misrepresentation that the source of his products and that of the products of plaintiff is the same.
Although the defendant may not be using the actual trademark of the plaintiff yet the get up of defendants' goods may be so much like the plaintiffs' that a clear case of passing off could be proved. In an infringement action however, it has to be established that the defendant is improperly using the plaintiff's mark where however the TM No. 80 of 2010 Page no. 21 of 25 competing marks are identical the court will not inquire whether the infringement is such as is likely to deceive or cause confusion.
Reverting to the facts, the trademark 'STANDARD' with symbol of electric current in alphabet 'N'could not have been adopted by defendants in the impugned trademark 'SUPERTECH' with symbol of electric current in alphabet 'U'. The adoption of this unique feature of prior registered trademark of plaintiff by the defendant without furnishing logical explanation dictates that later were prompted by the usage of former. Similarly, the formation of logo 'S' bearing registration no. 355466 and the one belonging to the defendants immediately leave an impression that both pertain to same stable. It would be absurd to discern that the defendants converged upon the idea of styling and formation of their logo akin to the one registered in the name of plaintiff since 16.11.1979. Even though, the word 'S' is crossed by word 'T'in the logo of defendants yet 'S' being dominant in the entire device leaves lasting image. Assessed from the angle of fading memory of consumers, not only the deceptively and confusingly similar device of defendants will be taken as the one pertaining to plaintiff but also the goods will be deemed to be of same origin and standard.
I have seen the rival products Ex. P-11 & Ex. P-12 bearing their respective logos and found them to have striking similarity as to confuse a man of average intelligence. The use of impugned trademark/label by the defendants therefore would tantamount to infringing the prior and established registered trademarks and will have potential of passing off their trade and services as those of the plaintiff or approved by the plaintiff. Both the issues therefore are decided in affirmative.
TM No. 80 of 2010 Page no. 22 of 25 21. Issue No. 9:-
Since the impugned trademark/label are held to be substantially identical and/or confusingly and deceptively similar to that of the plaintiff as seen in Ex. P-3, there will be unfair competition between the parties as the marks are being used for identical goods, targeted at same clientele through common trade circle. The issue therefore is decided in affirmative.
22. Issue No. 3:-
The onus to prove this issue lays on defendants who have vanished since the transfer of suit to the District Courts and therefore failed to discharge its onus. The plaintiff has specified particulars of their local office which finds mentioned in the products, literature and price list and proved at least one invoice no. 1557 dated 20.07.1999, forming part of Ex. P-4A of sale of their goods in Delhi. By virtue of Section 62 (2) of The Copyright Act, 1957, the plaintiff was entitled to raise grievance about copyright violation in the artistic work in their trademark/logo in Delhi. Since the suit is a subject of the Trade & Merchandize Marks Act, 1958, wherein there is no provision akin to that of Copyright Act providing foothold to the plaintiff to invoke jurisdiction of the court of the place where it has business for trademark violation. Although, the advertisement of defendants in Dainik Punjab Kesari dated 24.02.1996 has not been proved by PW 1 and copy thereof was denied by the defendants for want of original yet deeming it to be part of letter Ex. P-6 of the plaintiff and issuance thereof having not been denied in reply Ex. P-7 it cannot be ex-facie disbelieved that the relevant newspaper published in Jalandhar was not available for circulation in Delhi. Since the advertisement prominently specified that the products are approved by PWD(B&R) which tacitly indicates that the products may be sought within the area catered by Public Works Department including Delhi.
TM No. 80 of 2010 Page no. 23 of 25 The plaintiff has not made any endeavour at all to prove the territorial jurisdiction of this court leaving the issue totally on the defendants. Mainly, for the absence of defendants therefore the issue is decided in affirmative.
23. Issue No. 11:-
Just the production of a certificate Ex. P-4 purportedly from Dass & Company, Charted Accountant of Jalandhar on which signatures of the partner have not been specifically identified by PW 1 would not show the growth in the business of plaintiff in order to visualize their goodwill and reputation. PW 1 has not estimated the losses suffered by the plaintiff from March 1996 till the date of grant of injunction by the court, by the sale of products of defendants under impugned trademark/label. Since, the defendants on their part have boasted about their elliptical growth, instead of delving the parties to a cumbersome exercise of taking accounts of more than 15 years old period and thereby putting plaintiff to further expenses in hiring the services of Charted Accountant, it is deemed just to award them token damages of Rs. 1 lac by judicial estimation. Since the injunction order is operated for the last 18½ years, there is no likelihood of any infringing material, equipment or goods being available with the defendants hence the relief of delivery up having become futile, is declined.
In view of above, the suit is decreed in favour of the plaintiff whereby the defendants, their employees, agents, distributors and all other persons acting on their behalf are permanently restrained from manufacturing, selling, offering, advertising and directly or indirectly dealing in electrical equipment including switchgear and fusegear under a device mark containing initial 'S/TS' in a triangle or the mark 'SUPERTECH' with electric current symbol in any of its alphabets or any other mark/label deceptively or TM No. 80 of 2010 Page no. 24 of 25 confusingly similar to the plaintiff's registered trademark 'S' in a triangle or 'STANDARD' with electric current symbol registered vide Ex. P-3 as to amount to infringement thereof.
They are further restrained from so doing in respect of the registered trademarks/label of plaintiff and from reproducing their products literatures, price lists with product codes as may lead to passing off their goods as those of the plaintiffs and from doing any other thing amounting to unfair competition.
The defendants etc. are further restrained from printing, reproducing, ordering, supplying, directly or indirectly dealing with products, literatures and price lists which are imitation or substantial reproduction in terms of get up, lay out and arrangement of features including product codes of the plaintiff, amounting to infringement of the plaintiff's copyright thereto.
The defendants are further liable to pay damages conservatively quantified at Rs. 1 lac. to the plaintiff in lieu of the profits illegally earned by them by sale of their products under infringing trademarks.
In the fact and circumstances of the case, when plaintiff itself did not appear to be eager for early disposal of the suit, the parties are left to bear their respective costs. Decreesheet be accordingly prepared. File be consigned to Record Room.
Announced in the open court
on 7th November, 2014. (Sunil K Aggarwal)
Addl. District Judge (Central)10
Delhi
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