Delhi District Court
Morful Sheikh vs Rafeeq Beedi Factory on 25 November, 2022
IN THE COURT OF DISTRICT JUDGE
(COMMERCIAL-02),
SOUTH, SAKET COURT, NEW DELHI
CS (COMM) 373/2021
Morful Sheikh ..........plaintiff
Trading as Azad Beedi Factory
Village Khoda Band Pur ,
P. O. Arjunpur, P.S. Farakka
Murshidabad, West Bengal - 742202
Versus
Rafeeq Beedi Factory ........defendant no. 1
Mithun Biri Factory ........defendant no. 2
D-1 & D-2 at Sahebnagar, Anantpur,
Murshidabad, West Bengal - 742202
Amin Biri Factory ........defendant no. 3
Md. Rafik ........defendant no. 4
D-3 & D-4 at Sahbnagar, Samserganj,
Murshidabad, West Bengal - 742202
Date of institution : 04.12.2020
Date of arguments : 25.11.2022
Date of judgment : 25.11.2022
JUDGMENT
1. Plaintiff's case in brief, is that it is engaged in the business of manufacture and trade of Bidis and has been carrying on its said business under the sole proprietary firm by the name Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 1 CS (Comm) No. 373/2020 and style of M/s Azad Beedi Factory. In the year as early as 2009 the plaintiff had been duly registered with the Excise Authorities and that it is duly accessed to excise and other taxes has necessary government licenses in relation to his said business. Plaintiff in relation to its said goods and business honestly and bonafidely adopted and started using its following proprietary trade mark, copyrights and trade dresses.
2. In the year 2012, the plaintiff adopted an artistic label in yellow, red, green and blue background and having a peculiar placement art features, lettering style, stylization and unique dress format (referred to as said trade mark/label/trade dress/copyright). It is stated that on the back portion of this artistic label, the plaintiff adopted a trade dress/copyright bearing a green, white and blue/purple background and unique features of placement, stylization, lettering style etc. It is submitted that on both the sides of the artistic labels, the plaintiff has been using the trade mark DEEWANA BIRI and numerical 302 and his bust photograph.
3. It is stated that in the year 2013, the plaintiff on the said trade mark/label/trade dress/copyright started using the trade mark SABINA BIRI and numerical 302 on both the front and back portion thereof and in the year 2018, the plaintiff on the said trade mark/label/trade dress/copyright started using the trade mark SABANA BIRI along with the numerical 302 and his bust photograph on both the front and back portion thereof. It is stated that the said trade mark/label/trade dress/copyright and the numerical 302 and bust photograph is common to all the aforesaid three trade mark/labels.
Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 2 CS (Comm) No. 373/2020
4. Case of plaintiff further is that the plaintiff has been using the said trade mark/labels/trade dress/copyrights, numerical 302 and bust photograph since the year 01.04.2012 and the word/marks since 01.04.2012; with the word/marks since 09.10.2013 and; with the word/mark since 01.06.2018 continuously and commercially in the course of trade in relation to Biris and has built up a valuable trade, goodwill and reputation thereunder. It is stated that both the said trade mark/labels/trade dress/copyrights as well as the words/marks DEEWANA BIRI, SABINA BIRI and SABANA BIRI, numerical 302 and the bust photograph individually and conjointly are trademarks.
5. It is stated that the plaintiff has been honestly, bonafidely, continuously, commercially, openly, exclusively and to the exclusion of others and uninterruptedly in the course of trade and as proprietor thereof has been using in relation to his said goods and business and has built up a valuable trade, goodwill and reputation there under and acquired proprietary rights therein. It is stated that the plaintiff's said goods and business under the plaintiff's said trade mark/labels/trade dress/copyrights as well as the words/marks have been commercially sold traded and distributed across large parts of India and the plaintiff's said DEEWANA BIRI NO.302 trade mark/labels is duly registered in his name under the Trade Marks Act, 1999 as per the following particulars:-
Mark Application Class Status User Date of Valid Disclaimer (Profile No. Claimed registration Upto Name) 2627603 34 Registered 14/11/2023 Yes 01/04/2012 14/11/2013 Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 3 CS (Comm) No. 373/2020
6. It is averred that the said registration is legal, regular and in full force and by virtue thereof the plaintiff has exclusive rights to interalia use and exploit its said registration within the meaning of the Trade Marks Act, 1999. It is stated that the art works involved in the plaintiff said trade mark/labels/trade dress (DEEWANA BIRI, SABINA BIRI and SABANA BIRI, numerical 302 and the bust photograph), and also the formative labels/trade dresses are original art works and the plaintiff is owner/proprietor of the copyright therein within the meaning of the Indian Copyright Act, 1957. It is stated that the plaintiff has filed for its copyright registration under C.C. No.98277 for DEEWANA BIRI NO.302 trade mark/label and the same is pending.
7. Case of plaintiff further is that the plaintiff has achieved handsome sales and turn over running into lakhs of rupees annually under its said trade mark/labels/trade dress/copyrights as well as the words/marks. It is stated that the plaintiffs said trade mark/labels/trade dress/copyrights as well as the words/marks has become distinctive, associated and acquired secondary significance with the plaintiff and its said goods and business and the purchasing public, the trade and industry at large identifies and distinguishes the plaintiffs said goods under the said trade mark/labels/trade dress/copyrights as well as the words/marks as that of the plaintiff and from the plaintiff source and origin alone and regard them as a high quality exclusively as that of the plaintiff. It is stated that the plaintiffs said trade mark/labels/trade dress/copyrights as well as the words/marks is even otherwise and extremely arbitrary, fancy, unique and/or invented trade mark in relation to his said goods and business and Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 4 CS (Comm) No. 373/2020 is consequently, otherwise an inherently strong and distinctive trade mark.
8. It is further stated that the plaintiff is the proprietor and owner of its said trade mark/labels/trade dress/copyrights as well as the words/marks and art works/copyrights including the goodwill and reputation both under the statutory law and under the common law and which are valuable assets of the plaintiff and in view thereof the plaintiff has interalia the exclusive right to the use and exploitation of the said trade mark/labels/trade dress/copyrights as well as the words/marks and to interfere with any rival third party unauthorized use/application thereof or same/deceptively similar thereto or a substantial reproduction thereof.
9. It is pleaded that defendant no. 1, 2, 3 and 4 are engaged in the same business as that of the Plaintiff namely manufacture and trade of Bidis is engaged in the same business as that of the plaintiff namely manufacture & trade of Bidis/Biris and Defendants 1, 2, 3 and 4 are working in unison. It is stated that in relation to the impugned goods, the defendant has adopted and started using the word/trade mark DEEBAN BIRI and numerical 305 as trademarks. It is stated that artistic and stylized labels and trade dresses both big and small Labels bearing red, yellow, green and blue backgrounds containing the word/marks DEEBAN BIRI and numerical 305 artistic stylized and a bust in the big label; green, white and blue/purple background bearing the trademark DEEBAN BIRI and numerical 305 and his burst photograph in the back portion of the Label.
Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 5 CS (Comm) No. 373/2020
10. It is further stated that the aforesaid trade mark and labels are collectively referred to as the impugned DEEBAN BIRI trade mark/labels and/or impugned trade mark/labels. It is stated that the word/mark DEEBAN BIRI and numerical 305 as well as the art features including trade dresses bearing the same are individually and conjointly an essential and distinguishing feature of the impugned trade mark/labels. It is contended that the defendant is using the impugned trade mark/labels/trade dress/copyrights as well as the words/marks including its constituent features as trade mark in relation to its impugned goods.
11. It is pleaded that the impugned DEEBAN BIRI No. 305 trademark/labels adopted and being used by the defendants in relation to its impugned goods is identical with and deceptively similar to the Plaintiff's reputed DEEWANA BIRI No. 302 trademarks/labels in each and every manner including visually, phonetically, structurally, conceptually and in its essential features. It is stated that the impugned art works/copyrights and trade dresses involved in the impugned trade mark/labels are a reproduction/substantial reproduction of the plaintiff's copyrights and trade dresses in the Plaintiff's said trade mark/labels.
12. It is contended that the defendants have adopted and started using the impugned trade mark/ label dishonestly, fraudulently and out of positive greed with a view of take advantage and to trade upon the established goodwill, reputation and proprietary rights of the plaintiff in the plaintiff's said trademark/label.
Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 6 CS (Comm) No. 373/2020
13. It is stated that in about October 2020, the Plaintiff came across the impugned goods of the Defendants, who carrying its impugned activities in Delhi from the premises at Building No. P 2, 3rd Floor, Gali No. 8, Zion Tea, 20 Futa Road, Batla House, Okhla, New Delhi -110025 and the plaintiff made enquiries in the Trade Mark Office which revealed that defendant No. 4 trading as Defendant No. 3 filed an application for registration of the trademark/ label under Trade Mark application No. 4440892 in Class 34 dated 13.02.2020. The application has been filed on a "proposed to be used" basis and is under objections of the Trademark Registry. It is stated that the cause of action has arisen in about January 2021, when the plaintiff came across the impugned goods of the defendant under the impugned SABINA BIRI NO. 302 trade mark/ label/ trade dress in the market and trade and consequently become aware of the defendant's impugned activities. It is stated that the defendants are using, selling, soliciting, manufacturing trading as commercially dealing under the impugned SABINA BIRI NO. 302 trade mark/label/trade dress in relation to its impugned goods in the markets in Delhi and including in the markets within the jurisdiction of this Court. It is stated that this Court further has the jurisdiction under Section 62(2) of the Copyright Act, 1957 as the plaintiff is working for gain as also carrying on its said goods and business under his said trade mark/labels within the jurisdiction of this Court and including from the premises at Building No. P 2, 3rd Floor, Gali No. 8, Zion Tea, 20 Futa Road, Batla House, Okhla, New Delhi - 110025.
Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 7 CS (Comm) No. 373/2020
14. On 05.12.2020, on an application u/o XXXIX rule 1 & 2 CPC exparte interim injunction was granted in favour of plaintiff and defendants were restrained till further orders from using, selling, manufacturing, displaying, publishing, reproducing, exhibiting, advertising or in any other manner or mode dealing in or using the impugned trademark DEEBAN BIRI and numerical 305 by themselves and trademark/labels as per C, C1 and D, D1 or any other trade mark/labels identical with and/or deceptively similar to the plaintiff's trademark DEEWANA BIRI and numerical 302 trademark/labels as per A, A1 and B, B1 in relation to its impugned goods and business of Bidis and related/allied goods and offering services in connection therewith and any other acts or deeds amounting to or likely to infringing the plaintiff's copyrights in the plaintiff's art works/labels being A, A1 and B, B1; violating the plaintiff's common law rights in the plaintiff's said DEEWANA BIRI NO. 302 trademark/labels and trade dress including by way of dilution; passing off and enabling others to pass off their goods and business as that of the plaintiff; infringing the plaintiff's trade mark registration under No. 2627603 in Class 34 in the territories covered thereby and falsification, unfair and unethical trade practices.
15. It may be noted that on 25.02.2021, Sh. Sohail Khan counsel for D-3 and D-4 appeared. On 04.05.2022, Ld. Counsel for plaintiff filed service of summon to defendants by way of publication in a daily newspaper "Anand Bazar Patrika" dated 21.04.2022. Since there was no appearance defendants despite service and publication, they were proceeded exparte.
Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 8 CS (Comm) No. 373/2020
16. This Court has heard submissions advanced by Sh. Siddharth Swain , Learned counsels for the plaintiff and perused the material on record.
17. Ld. Counsel for plaintiff submitted that as there is no appearance of the Defendants, therefore, the claims, rights, evidence of the plaintiff and documents filed by the Plaintiff are deemed to be admitted under the provision of Order XII Rule 2- A CPC. It is submitted that law is well settled that damages in such cases must be awarded, who chooses to stay away from the proceedings of the Court, should not be allowed to enjoy the benefits of evasion of court proceedings.
18. In support of his submissions, counsel for plaintiff relied upon Parsvnath Developers Limited Vs. Vikram Khosla, 2021 SCC OnLine Del 3147; Louis Vuitton Malletier Vs. Iqbal Singh and Ors (2019) 258 DLT 760 ; Time Incorporated vs. Lokesh Srivastava and Anr. (116 (2005) DLT 599); Cartier International AG & Ors Vs. Gaurav Bhatia & Ors. (2016(65) PTC 168)[Del] ; Jockey International Inc and Anr. Vs. R. Chandramohan and Ors. (2014) 211 DLT 757) and Disney Enterprise,Inc and Ors. vs. Dhiraj and Ors (ILR (2014) 3 Del 2150).
19. Ld. counsel for the plaintiff further submitted that this plaint is supported with a verification/affidavit in the form of statement of truth of AR of plaintiff, therefore no exparte evidence is required to be adduced in view of the observations of our Hon'ble High Court in this regard. In support, he relied upon on Imagine Marketing Private Imited vs M/s Green Accessories through its proprietor & Anr. , CS (Comm) 564/2020 decided on Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 9 CS (Comm) No. 373/2020 21.03.2022 wherein Disney Enterprises Inc. & Anr. v. Balraj Muttneja &Ors. [CS (OS) 3466/2012 decided on 20th February, 2014], was quoted while holding that no ex parte evidence would be required. The same has been reiterated by the Court in S. Oliver Bernd Freier GMBH & CO. KG v. Jaikara Apparels and Ors. [210 (2014) DLT 381], as also, in United Coffee House v. Raghav Kalra and Ors. [2013 (55) PTC 414 (Del)]. The relevant observations from the judgment in Disney Enterprises Inc. (supra), are as under:
"3. Though the defendants entered appearance through their counsel on 01.02.2013 but remained unrepresented thereafter and failed to file a written statement as well. The defendants were thus directed to be proceeded ex- parte vide order dated 04.10.2013and the plaintiffs permitted to file affidavits by way of ex- parte evidence.
4. The plaintiffs, despite having been granted sufficient time and several opportunities, have failed to get their affidavits for leading ex-parte evidence on record. However, it is not deemed expedient to further await the same and allow this matter to languish, for the reason that I have in Indian Performing Rights Society Ltd. Vs. Gauhati Town Club MANU/DE/0582/2013 held that where the defendant is ex parte and the material before the Court is sufficient to allow the claim of the plaintiff, the time of the Court should not be wasted in directing ex parte evidence to be recorded and which mostly is nothing but a repetition of the contents of the plaint."
20. In this case, AR of plaintiff Sh. Morful Sheikh s/o late Raithual Sheikh filed his Statement of Truth on 02.12.2020. In his statement of truth, he stated that statements made in paragraphs 1 to 29 of plaint are true and correct to his knowledge as derived from the records of the plaintiff company Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 10 CS (Comm) No. 373/2020 and statements made in paragraphs 30-33 were true to the information received and believed to be true and statement made in paragraph 34 is the prayer and that nothing material has been concealed therefrom based on legal advice and there was no false statement or concealment of any material fact, document on record. He further stated that all documents in his power, possession, control or custody had been disclosed. He further stated that the contents of the documents annexed with the list of documents were the true copies of the documents referred to and relied upon by him
21. Plaintiff has placed on record true representation of the trademark/label/trade dress of the plaintiff Ex. PW1/1; True representation of trademark/label/trade dress of the defendants Ex. PW1/2; status of plaintiff's registered trademarks, registration certificates and related documents Ex. PW1/3; documents related to excise, GST and Government licences Ex.PW1/4; copies of bills, invoices, sale details of the plaintiff's products Ex. PW1/5 and status of defendant no. 3 and 4 trade mark application bearing no. 4440892 in class 34 Ex. PW1/6.
22. After hearing the submissions advanced and perusal of material on record, this Court finds no reason to disbelieve the averment of plaint which has remained unchallenged. Plaintiff has established that he is the proprietor of registered trademarks "DEEWANA BIRI word, stylized, artistic alongwith the numerical 302". Plaintiff has established that the registered trademarks " DEEWANA BIRI No. 302" are well known marks as defined u/s 2 (1) (zg) of the Trademark Act .
Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 11 CS (Comm) No. 373/2020
23. Thus, plaintiff has the exclusive right to use the trademarks and it is shown that defendants are misusing and infringing the trademarks of the plaintiff and passing off its goods as that of the plaintiff. This not only causes loss of profit to the plaintiff but also results in the inferior products and services made available to the public at large , who are deceived by the conduct of the defendant.
24. On appreciation of evidence on record, this Court is satisfied that defendants are using the trademark "DEEWANA BIRI NO. 302" in relation to the above said impugned goods and business of counterfeit goods used by the plaintiff and that there is a high degree of phonetic similarity and degree of resemblances which can very easily create confusion in the minds of members of the general public. The plaintiff being the holder of a registered trademark is entitled to protection against its infringement and the relief claimed.
25. In view of the abovesaid reasons, plaintiff is entitled to a decree of permanent injunction against the defendants from dealing with the goods and services having infringing marks and defendants by itself as also through their individual proprietors, partners, directors, agents, representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on their behalf are restrained from using, selling, manufacturing, displaying, publishing, reproducing, exhibiting, advertising or in any other manner or mode dealing in or using the impugned trademark DEEBAN BIRI and numerical 305 by themselves and trademark/labels as per C, C1 and D and D1 or any other trademark/labels identical with and/or deceiptively similar to the plaintiff's trademark DEEWANA BIRI with numerical 302 Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 12 CS (Comm) No. 373/2020 trademark/labels as per A, A1 and B, B1 in relation to its impugned goods and business of Bidis and related/allied goods and offering services in connection therewith and any other acts or deed amounting to or likely to infringing the plaintiff's copyrights in the plaintiff's art works/labels being A, A1 and B,B1; violating the plaintiff's common law rights in the plaintiff's said DEEWANA BIRI NO. 302 trademark/labels and trade dress including by way of dilution; passing off and enabling others to pass off their goods and business as that of the plaintiff; infringing the plaintiff's trademark registration under No. 2627603 in class 34 in the territories covered thereby and falsification , unfair and unethical trade practices.
26. Ld. Counsel for plaintiff has prayed for costs and has submitted that this Court has jurisdiction to grant nominal damages and punitive over and above any pleadings by the plaintiff.
27. In Jockey International Inc & Anr. Vs R. Chandra Mohan & Ors. 2014 (59) PTC 437 (Del) in para 43, it was held that damages must be awarded in such cases where defendants choose to stay from the proceedings of the Court and that defendants should not be permitted to enjoy the benefits of evasion of Court proceedings. A party who chooses not to participate in Court proceedings and stays away must suffer the consequences of damages as it cannot produce its account books. There is larger public purpose involved to discourage such parties indulging in such rights of deception and even if the same has a punitive element, it must be granted.
28. In the Hero Honda Motors Ltd. vs Shree Assuramji Scooter's case (supra), our High Court observed about the need Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 13 CS (Comm) No. 373/2020 of awarding damages against defendants who chose to stay away from the proceedings of the Court. It was further noted that every endeavour should be made to discourage such parties which indulge in acts of deception.
29. The time has come when the Courts dealing with actions for infringement of trade marks, copy rights, patents, etc. should not only grant compensatory damages but award punitive damages with a view to discourage and dishearten law breakers who indulge in violations with impunity out of lust for money so that they realize that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay punitive damages also, which may spell financial disaster for them. Having regard to the totality of the facts and circumstances noted above, this Court is of the considered view that plaintiff is entitled to lumpsum costs of Rs.1,00,000/- on account of economic and commercial advantage which the defendants tried to gain at the expenses of the enviable reputation which has been created by the plaintiff apart from injunction.
30. Moreover, Plaintiff is entitled to costs towards pleader's fee litigation expenses and Court fees . The present suit was filed on 04.12.2020 and total number of 16 dates of hearing have taken place in this case. Litigation expenses are assessed as Rs.24,000/- and court fees deposited by the plaintiff is Rs. 6700/-.
31. In view of the aforenoted findings, the suit of the plaintiff is decreed. A decree of permanent injunction in favour of plaintiff against the defendants is hereby passed. defendants by itself as also through their individual proprietors, partners, directors, agents, representatives, distributors, assigns, heirs, Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 14 CS (Comm) No. 373/2020 successors, stockists and all other acting for and on their behalf are restrained from using, selling, manufacturing, displaying, publishing, reproducing, exhibiting, advertising or in any other manner or mode dealing in or using the impugned trademark DEEBAN BIRI and numerical 305 by themselves and plaintiff's trademark/labels or any other trademark/labels identical with and/or deceptively similar to the plaintiff's trademark DEEWANA BIRI with numerical 302 trademark/labels in relation to its impugned goods and business of Bidis and related/allied goods and offering services in connection therewith and any other acts or deed amounting to or likely to infringing the plaintiff's copyrights in the plaintiff's art works/labels; violating the plaintiff's rights in the plaintiff's said DEEWANA BIRI NO. 302 trademark/labels and trade dress including by way of dilution; passing off and enabling others to pass off their goods and business as that of the plaintiff; infringing the plaintiff's trademark registration under No. 2627603 in class 34.
32. Moreover, plaintiff is also held entitled to total costs of Rs. 1,30,700/-. Decree sheet be drawn up accordingly. File be consigned to record room.
(Dictated and announced today i.e. On 25th November, 2022) (VINAY KUMAR KHANNA) District Judge (Commercial Court-02) South Disttt., Saket, New Delhi.
Morful Sheikh Trading as Azad Beedi Factory vs Fareeq Beedi Factory ors. 15 CS (Comm) No. 373/2020