Bangalore District Court
M/S. Hitek Fine Chemicals Pvt vs M/S. Samrat Chem Specialities on 7 October, 2017
IN THE COURT OF THE XVIII ADDL.CITY CIVIL
JUDGE, AT [CCH.NO.10], BANGALORE CITY.
Dated this the 7th day of October 2017
PRESENT
Smt.M.PANCHAKSHARI M.Com., LL.B.
XVIII Addl.City Civil Judge.
O.S.No.2065/2016
Plaintiff/s M/s. Hitek Fine Chemicals Pvt.
Ltd.
Reptd by its Director,
Mr. Karan Kishore Govani,
No.37, Gr.Floor, 9th Cross,
Rangadasappa Layout,
Near Dairy Circle,
Bengaluru- 560 030
(By Sri.G.S., Advocate)
/VS/
Defendant/s: M/s. Samrat Chem Specialities,
Reptd. by is proprietor
Mr. Girish Sidwani,
Shop No.8, H.Manchanahalli,
Near OTIS Ring Road,
Jingani Indl.Area, Jingani,
Bangalore
(By Sri.G.K.S., Advocate)
Date of institution of 11.03.2016
suit
2 O.S.No.2065/2016
Nature of the (suit or Permanent injunctions
pronote, suit for
declaration and
possession suit for
injunction,) etc.
Date of the 28.11.2016
commencement of
recording of the
evidence.
Date on which the 07-10-2017
Judgment was
pronounced.
Year/s Month/s day/s
Total duration: 01 06 26
(M.PANCHAKSHARI)
XVIII Addl.City Civil Judge,
Bangalore.
JUDGMENT
The plaintiff filed this suit against the defendant prays to pass judgment and decree of permanent injunction restraining the defendant, their proprietors or partners, principal officers, servants, agents and representatives from the use, including by advertising directly or indirectly, selling or offering their products or services relating to chemicals used for cleaning and 3 O.S.No.2065/2016 strengthening stones and other incidental business under the trade mark / trade name/ service mark 'MARBLEWONDER' or any other deceptively similar mark, name, device of which the word 'MARBLEWONDER' forms a part and form carrying on any other activities as may be likely to cause confusion or deceive which shall lead to infringement and passing off of the plaintiff's trade mark 'MARBLEWONDER' registered under the application No.1869837 in class 01. Further to restrain defendant, their proprietors or partners, principal officers, servants, agents and distributors and all acting on their behalf from manufacturing, selling, importing exporting, offering to sale, advertising directly or indirectly, carrying on any business and dealing in any manner with the trade mark MARBLEWONDER amounting to dilution of the exclusively and reputation associated with the plaintiff's MARBLE WONDER trade mark and trade name and to encash upon the goodwill and reputation association with the plaintiffs trade mark MARBLE WONDER leading to unfair competition on the part of the defendant and for costs.
2. Case of the plaintiff in brief is as follows:
4 O.S.No.2065/2016It is alleged on behalf of the plaintiff that the plaintiff company was established way back in 1987 by father of plaintiff Kishore Govani and now it is a well known company and a leader in the stone-cleaning and structural enhancement chemical industry. It has wide variety of products for the purpose, catering to the needs of a wide-variety of cements and stones, mainly focusing on the marble industry. They are promoted by qualified technocrats and are associated with them are of excellent quality. It is further contended that the plaintiff is the member of various associations in stone and chemical industry including CDOS(Centre for Development of Stones) and AIGSA (All India Granites and Stone Association). They have worked closely with many large clients in India, The plaintiff is the registered owner of the trade mark MARBLEWONDER which has been extensively used in the market since 1995. The plaintiff uses the same name with respect to one of its main products which has been coined as 'MarbleWonder +' . Due to extensive use of the trade mark MARBLEWONDER all the customers/ clients relates the trade mark MARBLE WONDER to the plaintiff company only. The plaintiff is the registered proprietor of trade mark MARBELWONDER. It is further contended that the 5 O.S.No.2065/2016 immense reputation and goodwill has accrued to the trade mark MARBLE WONDER through its extensive use and advertising, in brochures, periodicals, magazines and online trade listing as 'Marble Wonder' along with Hitek's logo mark. The website of the plaintiff clearly demonstrates the list of products and most importantly their signature product, Marble wonder'+' which is freely accessible to all prospective and current customers, India and worldwide.
3. It is further contended that the defendant has a sales office in Bangalore is engaged in identical business of manufacturing and supplying of chemicals, related to various stones and their cleaning, rust removers, stone cutting and other such incidental businesses. The defendant has been manufacturing and marketing one of their products with similar composition and features to the plaintiff's product MARBLE WONDER with the same name "MARBLE WONDER' The style and manner in which the mark has been represented is infringement and is very similar and deceptive to that of the plaintiff in every aspect including visual, structural, in its basis idea and packaging/colour combination and trade dress as well. The defendants are selling their products from 6 O.S.No.2065/2016 Udaipur and Bangalore offices. The invoices for the sale of product wholly contains the plaintiff's registered trade mark MARBLE WONDER which is identical to that of the plaintiff. It is further contended that the defendant through their illegal activities, are making attempts to encash upon the goodwill and reputation associated with the plaintiff. The defendant to obtain an unfair advantage by creating false impression that its services emanate from the plaintiff or are in the same way affiliated with, or in consonance with the goods of the plaintiff and it create confusion in the minds of the customers. Hence the suit is filed for the above reliefs.
4. The defendant appeared and filed its written statement denying the plaint averments and contended that it is a partnership firm was established under the Indian Partnership Act in the year 2010 in Udaipur Rajasthan under the collective leadership of Mr.Kishore Kumar Sidhwani, Mr.Girish Kumar Sidhwani, Mrs.Harsha Sidhwani and Mrs. Isha Sidhwani. The defendant firm was scaled new heights of success. It is further contended that since from its inception defendant is engaged in to the business of manufacturing, supplying, distributing, selling, 7 O.S.No.2065/2016 marketing of various products which includes chemicals, granite cutting powder, colour pigments, epoxy chemicals, glitters, glitter super plus and alike. The mother product of defendant firm was "GLITTER' at its inception and with frequent research at her own equipped laboratory now manufacturing upto 168 products to serve its clients. All the products of defendant firm has a unique identity and features to use it with different kinds of stones surface as per requirements. The defendant has its own website http;//samratchem.com/ which displays and promotes various products launched by the defendant firm from time to time. It is further contended that the defendant launched a product with the concept of permeation and structural absorption in the style and manner of MARBLEWONDER. The said trade mark. Label was adopted by coining two common dictionary words MARBLE and WONDER. The use of the said words/ trade mark is common to trade/business of stone and granite cutting. There are end number of manufacturers/ suppliers in the said business of marble cutting or stone polishing and granting cutting who are using the said words to represent their services. The defendant adopted the mark for sealing/solidifying the marble in the structure. The 8 O.S.No.2065/2016 label mark adopted and used by the defendant firm prominently reflects the identity of the defendant firm and a fair trade description for its products. The label mark is honestly adopted in the year 2010 and used extensively in regard to the impugned goods. The impugned mark clearly reflects the identity and name of defendant firm with the word SAMRAT prominently written and visible in an artistic and distinctive manner. It is a golden rule of trade mark law that trade mark / label shall be considered as a whole and not in isolation to its certain elements which are common to trade. The name of the defendant which is prominently reflected by the words SAMRAT and the words MARBLE and WONDER indicates the enhanced quality and the description of the products associated with the impugned label mark. They have spent considerable amount of money, skill, time and energy on the production of the impugned goods. The plaintiff has not produced any single document to establish that long and extensive use of the said trade mark/ label prior to the year 2004. It is further contended that the defendant has no intention to ride over or pass off its goods under the veil of the plaintiff mark. If the defendant is restrained from using the impugned label by any mode of either permanent injunction, it 9 O.S.No.2065/2016 shall suffer irreparable loss. Among these ground they prayed to dismiss the suit.
5. On the basis of the above pleadings, my predecessor in office has framed the following issues:
1. Whether the plaintiff proves that it is the registered owner of Trademark MARBLE WONDER?
2. Whether the plaintiff proves that the defendant infringed by adopting the plaintiff's well established trade mark MARBEL WONDER?
3. Whether the plaintiff proves that the defendant has passed off their trade mark MARBLE WONDER?
4. Whether the plaintiff is entitled for the decree of permanent injunctions as sought for?
5. What order or decree?
6. The plaintiff to prove its case got examined its director as PW1, got marked Ex.P1 to P6 and closed its side. Inspite of giving several opportunity the defendant have not cross examined PW1 and have not lead oral or documentary evidence on their behalf.10 O.S.No.2065/2016
7. The learned counsel for the plaintiff filed written arguments and also relied on the list of authorities with regard to infringement and passing off of the trade mark as under:
1.MANU/DE/0781/2009
2. MANU/DE/0152/2009
3. MANU/DE/0013/2016
4. MANU/DE/0454/2013
5. MANU/DE/8251/2006
6. MANU/DE/0319/2009
7. MANU/DE/0675/2007
8. MANU/DE/0104/2005
9. MANU/DE/1559/2006 10.2006(131) DLT 65
11. MANU/DE/8421/2006
8. Perused the written argument and materials placed on record.
9. My findings to the above issues are as under:
Issue No.1: In the affirmative
Issue No.2: In the affirmative
Issue No.3: In the affirmative
Issue No.4: As per final order,
For the following:
11 O.S.No.2065/2016
REASONS
10. Issue Nos.1 to 3: It is the case of the
plaintiff that plaintiff company is engaged in the business of stone-cleaning and structural enhancement chemical industry. It has produced wide variety of products for the purpose, catering to the needs of a wide-variety of cements and stones, mainly focusing on the marble industry. Plaintiff company is the member of various associations in stone and chemical industry including CDOS(Centre for Development of Stones) and AIGSA (All India Granites and Stone Association). It is also contention of the plaintiff that it is registered trade mark owner of the trade name MARBLEWONDER which had been extended in the market since 1995. The plaintiff uses the name with respect to one of its main products which has been coined as 'MarbleWonder+' . Plaintiff product is MARBLEWONDER that work to the vide variety of natural and man made marble stone. It is registered owner of the trade mark MARBLEWONDER having applied on 6.10.2009 is using the trade mark since 7.5.1995 and the certificate is issued with regard to the trade mark MARBLE WONDER.12 O.S.No.2065/2016
11. It is further contended by the plaintiff that defendant has its sales office at Bangalore city, it is engaged in the identical business of manufacturing, supplying of chemicals relating to various stones and their cleaning, rust removers, stone cutting and other such incidental businesses. Plaintiff had recently noticed that defendant had been manufacturing, marketing one of their product with similar composition and features to the plaintiff's product MARBLE WONDER with the same name "MARBLE WONDER' The style and manner in which the mark has been represented on the trade mark is similar and deceptive to that of the plaintiff trade mark. So there is infringement and defendant had copied the plaintiff's registered trade mark MARBLEWONDER.
Plaintiff had discovered that the defendant is selling his products under the brand name MARBLEWONDER and the same is being reflected in their invoices obtained from both Udaipur and Bangalore office. So the impugned use of the plaintiff trade mark also leads to passing off defendant and services and business. So same and similar business activities of the defendant is bound to cause confusion in the minds of the customers as to the source of proposed business and products and shall thereby cause unquantifiable loss 13 O.S.No.2065/2016 to the goodwill of the plaintiff . The defendant through its illegal activities are making cash upon the goodwill and reputation associated with the plaintiff trade mark MARBLEWONDER built over years of hard work.
12. The plaintiff company in order to substantiate its contention got examined his director as PW1. PW1 has sworn to affidavit by way of his examination in chief which is on par with the allegations made in the plaint. It is to be noted that the defendant has not cross examined PW1 to discredit his evidence. The plaintiff has produced 6 documents in support of its case. Ex.P1 is the Board resolution, Ex.P2 is the original copies of 6 purchase orders, Ex.P3 is the product label of the plaintiff, Ex.P4 is the Registration certificate of plaintiff's trade mark, Ex.P5 is the certificate issued by the Charted Accountant relating to the plaintiff's product, Ex.P6 is the quotation with invoice of the defendant to establish that he is using the similar trade mark. Plaintiff had produced the board resolution so as to make out proper authorization of PW1. Ex.P4 is material document ie., registration certificate of plaintiff trade mark which clearly substantiates plaintiff contention that the trade mark MARBLE WONDER had been 14 O.S.No.2065/2016 registered by the plaintiff. Defendant though appeared through its advocate having filed written statement had not opted to cross examine PW1.
13. In the written statement it is contention of the defendant that defendant firm is a partnership firm established in the year 2010in Udaipur of Rajasthan. Since the year of its inception defendant firm is engaged in the business of manufacturing, supplying, distributing, selling, marketing of various products which includes chemicals, granite cutting powder, colour pigments, epoxy chemicals, glitters, glitter super plus and alike. Its mother product was "GLITTER' at its inception and with frequent research at their own equipped laboratory now manufacturing up to 168 products to serve its clients. All the products of defendant firm has a unique identity and features to use it with different kinds of stones surface as per requirements. No where defendant had denied that the plaintiff is the registered owner. So in such circumstances, the oral and documentary evidence of the plaintiff had remained unchallenged and unrebutted. It is substantially proves the plaintiff contention that it is registered owner of the trade mark MARBLEWONDER.
15 O.S.No.2065/201614. Now coming to fact of infringement and passing of plaintiff trade mark MARBLE WONDER plaintiff had produced the very invoices prior to the formation of defendant's company. Ex.P2 purchase orders dtd. 15.3.2004, 22.12.2005, 4.8.2005, 18.7.2006 and 1.8.2007 So these documents makes out that plaintiff is using the trade mark MARBLE WONDER even prior to the establishment of defendant's firm. It is the contention of the defendant that it was established in the year 2010. The invoices of the plaintiff makes out that it is selling its products under trade mark MARBLE WONDER even in the year 2004-05. The purchaser order / bill itself makes out products name. On the other hand, plaintiff had also produced the purchase order placed with defendant's ie., M/s. SAMRAT Chemical Industries whereby their products is also named as MARBLE WONDER. This document is marked as Ex.P6. Plaintiff had proved its contention that it is the prior user of the product and it is also a registered trade mark user of mark MARBLE WONDER. When such being the case as it is registered owner of the trade mark MARBLEWONDER who had stepped the market prior to that of the defendant, it has every right to restrain the defendant from making 16 O.S.No.2065/2016 use of the very same trade mark MARBLEWONDER. On the other hand, plaintiff who had produced the oral and documentary evidence before court had not been rebuted by the defendant. In such circumstances, the unrebutted testimony of the plaintiff has to be accepted. In such circumstances I hold the issue Nos.1 to 3 in the affirmative.
15. Issue No.4: As issue No.1 to 3 are held in affirmative, plaintiff is entitled for the relief of permanent injunction as prayed. Hence I hold the above issue in the affirmative.
16. Issue No.5: In the result I proceed to pass the following:
ORDER Suit of the plaintiff is hereby decreed with costs.
The defendant, their proprietors or partners, principal officers, servants, agents and representatives are hereby restrained from the use, including by advertising directly or indirectly, selling or offering their products or services relating to chemicals used 17 O.S.No.2065/2016 for cleaning and strengthening stones and other incidental business under the trade mark / trade name/ service mark 'MARBLEWONDER' or any other deceptively similar mark, name, device of which the word 'MARBLEWONDER' forms a part and from carrying on any other activities as may be likely to cause confusion or deceive which shall lead to infringement and passing off of the plaintiff's trade mark 'MARBLEWONDER' registered under the application No.1869837 in class 01 by way of permanent injunction., Further the defendant, their proprietors or partners, principal officers, servants, agents and distributors and all acting on their behalf are hereby restrained from manufacturing, selling, importing exporting, offering to sale, advertising directly or indirectly, carrying on any business and dealing in any manner with the trade mark MARBLEWONDER amounting to dilution of the exclusively and reputation associated with the plaintiff's MARBLE WONDER trade mark and trade name and to encash upon the goodwill and reputation association with the plaintiffs trade mark MARBLE WONDER leading to unfair competition on the part of the 18 O.S.No.2065/2016 defendant by way of permanent injunction Draw decree accordingly.
[Dictated to the Judgment Writer, computerised, and print out taken by him, corrected and then pronounced by me in open court, this the 7th day of October 2017].
(M.PANCHAKSHARI) XVIII ADDL. CITY CIVIL AND SESSIONS JUDGE, BANGALORE ANNEXURE List of witnesses examined on behalf of plaintiff/s:
PW.1: Karan Kishore Govani List of documents marked on behalf of plaintiff/s:
Ex.P1 : Board resolution Ex.P2 : Original copies of 6 purchase orders Ex.P3 : The product label of the plaintiff Ex.P4 : Registration certificate of plaintiff's trade mark Ex.P5 : Certificate issued by the Charted Accountant
relating to the plaintiff's product.
Ex.P6 : The quotation with invoice of the defendant.
List of witnesses examined on behalf of defendant/s:
- NIL -
List of documents marked on behalf of defendant/s:
- NIL -
XVIII Addl. City Civil Judge Bangalore City.19 O.S.No.2065/2016
Judgment pronounced in the open court vide separate judgment. The operative portion of judgment reads thus:
ORDER Suit of the plaintiff is hereby decreed with costs.
The defendant, their proprietors or partners, principal officers, servants, agents and representatives are hereby restrained from the use, including by advertising directly or indirectly, selling or offering their products or services relating to chemicals used for cleaning and strengthening stones and other incidental business under the trade mark / trade name/ service mark 'MARBLEWONDER' or any other deceptively similar mark, name, device of which the word 'MARBLEWONDER' forms a part and from carrying on any other activities as may be likely to cause confusion or deceive which shall lead to infringement and passing off of the plaintiff's trade mark 'MARBLEWONDER' registered under the application No.1869837 in class 01 by way of permanent injunction., Further the defendant, their proprietors or partners, principal officers, servants, agents and distributors and all acting on their behalf are hereby restrained from manufacturing, selling, importing exporting, offering to sale, advertising directly or indirectly, carrying on any business and dealing in any manner with the trade mark MARBLEWONDER amounting to dilution of the exclusively and reputation associated with the plaintiff's MARBLE WONDER trade mark and trade name and to encash upon the goodwill and reputation association with the plaintiffs trade mark MARBLE WONDER leading to unfair competition on the part of the defendant by way of permanent injunction Draw decree accordingly.
XVIII Addl.C.C. & S.J., Bangalore