Delhi District Court
Krbl Ltd vs Praveen Kumar Buyyani on 14 February, 2025
IN THE COURT OF SH. LOKESH KUMAR SHARMA
DISTRICT JUDGE (COMMERCIAL COURTS)-05,
SOUTH DISTRICT, SAKET COURTS, NEW DELHI
In the matter of
CS (COMM) 284/20
CNR No. DLST01-004788-2020
KRBL Limited
5190, Lahori Gate
Delhi- 110006
Also At: ...Plaintiff
Corporate Office at:
C-32, 5th & 6th Floor
Sector-62, Noida- 201301
(UP)
Versus
PRAVEEN KUMAR BUYYANI
Sai Sakthi Towers,
New NGOS Colony,
Janma Bhoomi Road,
Nizamabad, Subhash Nagar,
Telangana- 503002 .....Defendant No. 1
SHREE LATHA
SLV EXMIS
# 504, Sai Sakthi Towers,
Janma Bhoomi Road,
Nizamabad, Subhash Nagar,
Telangana- 503002 .....Defendant No. 2
SARA FLEXI PACK LLP.
No. 1484, HSIIDC, Rai Industrial Area,
Sonepat-131029,
CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 1 of 44
Haryana .....Defendant No. 3
Institution of the Suit : 08.10.2020
Arguments concluded on : 04.02.2025
Judgment pronounced on : 14.02.2025
JUDGEMENT
1. The present suit has been filed by the plaintiff seeking a decree of permanent injunction against the defendants to restrain further infringement of its trademark and copyright rights, as well as to prevent acts of passing off. In addition, the plaintiff has prayed for the rendition of accounts, damages, and costs of the suit.
2. Brief Facts: As per the Plaintiff, KRBL Limited, who is claiming itself to be a company duly incorporated under the provisions of the Indian Companies Act, 1956, with its registered office at 5190, Lahori Gate, Delhi-110006, was stated to be a market leader engaged in the business of processing, marketing and exporting various kinds of rice, including Basmati Rice. The Plaintiff was further stated to be a global player and marketer with respect to rice (including Basmati) under the trademark INDIA GATE (with device of INDIA GATE). Additionally, its products were stated to be popular for their superior quality CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 2 of 44 and reliability and were in great demand in both domestic and overseas markets The present suit was filed by one Sh. Saumya Sharma, who was stated to be the Senior Manager- Brand & Communication of the Plaintiff, and was stated to have been duly authorized to sign and file the suit on its behalf, being fully conversant with the facts of the case and to perform all other acts necessary for the conduct of the instant suit proceedings, vide resolution passed in his favour.
That in the year 1993, the Plaintiff, through its predecessors, bona fide and honestly adopted and started using the trademark/label INDIA GATE (with the device of INDIA GATE) in relation to said goods and business (referred to as the "said trademark/label," and the term "the said trademark/label" includes the word and device INDIA GATE both individually, collectively, and as a whole).
3. It was stated that Plaintiff was carrying on its business in India as well as overseas, including exports from India to countries such as the Middle East, Australia, European Countries, the USA, South Africa, Canada and Southeast Asian Countries like Singapore, Malaysia etc. The plaintiff's goods and businesses were stated to have achieved global reach since 1993, covering more countries across the globe. The plaintiff's goods were stated to be sold and traded through its extensive marketing, distribution and CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 3 of 44 dealership network, as well as through retail, internet, e-commerce and export. It was stated that the Plaintiff's use of the said trademark/label in foreign countries also constituted its use in India within meaning of Section 56 of the Trade Marks Act, 1999.
It was further averred that the partnership firm of M/s. Khushi Ram Behari Lal (Export Division) at 5190, Lahori Gate, Delhi-110006, had adopted the said trademark/label INDIA GATE with the device of INDIA GATE in relation to its goods and business in the year 1993, used the same continuously in the course of trade, built up a valuable trade, goodwill, and reputation thereunder, and acquired proprietary rights therein. Vide an agreement dated 1st April 1996, the partnership firm was taken over as a going concern with all its assets and liabilities, including the rights related to the trademark/label INDIA GATE with the device of INDIA GATE, by Khushi Ram Behari Lal Limited, a company incorporated under the company laws. All references to the Plaintiff were stated to include its said predecessor-in-title. It was further stated that the name of Khushi Ram Behari Lal Limited was subsequently changed to KRBL Limited.
4. It was averred that Plaintiff had acquired rights in the trademark INDIA GATE under No. 599833 in Class 30 from Mr. Ram Pratap, 81, Reghar Pura, Karol Bagh, New Delhi-110005, vide Deed of Assignment dated 06.08.2019, and that the mark INDIA GATE was subsequently registered in favour of the CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 4 of 44 Plaintiff, KRBL Limited, vide Registration Certificate issued on 12.08.2019, effective from 18.06.1993, and that the Plaintiff's use of the mark INDIA GATE had improved since 01.01.1979.
It was further stated that the plaintiff, in order to seek global protection and in recognition of its rights, had also filed for registration of its said trademark/label INDIA GATE in various countries and regions of the world; it was stated that the trademark/label was duly registered in many countries and regions, including the Middle East, the E.U., North America, Australia, New Zealand, etc., and that registration was also pending in many other countries.
It was stated that Plaintiff's trademark BABAL HIND was duly registered in favour of the Plaintiff under the Trade Marks Act, 1999, under registration no. 1359845 as of 27.05.2005, in relation to rice in Class 30, as advertised in the Trade Mark Journal No. 1339 (S-1) dated 15.02.2006 on page 8314, which was filed on a "Proposed to be used" basis, and that the said filing did not prejudice the Plaintiff's trademark rights or its use thereof, as the Plaintiff had been using the mark in the course of trade.
The word BABAL HIND in Arabic was stated to mean INDIA GATE. The Plaintiff was stated to have been using the said work/trademark (BABAL HIND) in relation to its goods and business for the purpose of export. Plaintiff was further stated CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 5 of 44 to have been using the following trademark registrations in India for its trademark INDIA GATE and BABAL HIND under the Trade Marks Act, 1999:
Trade Number Class Status User Date Valid
Mark Claimed Up to
INDIA 599833 30 Regis- 01.01.1979 18.06.199 18.06.2023
GATE tered 3
BABA 1359845 30 Regis- Proposed to 27.05.200 27.05.2025
HIND tered be used 5
5. It was stated that, in addition to the aforementioned registrations, the plaintiff had also filed other trademark applications. On 22.03.2006, the plaintiff filed a trademark application for the trademark INDIA GATE (Device) under No. 1436477 in Class 30, which was stated to have been refused on technical grounds without any proper decision or adjudication. Against this, the plaintiff filed a request on Form TM-57 to review the refusal decision of the Registrar; however, the plaintiff had not received any decision on the said review petition.
The plaintiff had filed two trademark applications (bearing no. 1425700 & 1425701) for registrations of the trademark INDIA GATE (Device) in respect of goods falling in Classes 33 and 32, respectively, which were refused on technical CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 6 of 44 grounds at an earlier stage. Against these, the plaintiff had also filed a review petition, which was refused on technical grounds vide order dated 04.01.2018. On 19.07.2007, the plaintiff filed a trademark application for the trademark INDIA GATE (Label) under No. 1580377 in Class 30, which was refused on technical grounds without any proper decision or adjudication. The plaintiff had already filed a request on Form TM-15 and sought the statement of grounds for the refusal/decision; however, the plaintiff had not received any statement of grounds for the refusal/decision.
6. It was averred that the said trademark/label of the Plaintiff bore original artistic features of placement, distinctive get-up, makeup, lettering style, etc., and included its artistic features. The word and device INDIA GATE, as well as the artistic features in the said trademark/label, were all individually, collectively, and as a whole essential, material, and distinguishing features of the said trademark/label, and included their respective copyrights therein.
7. It was averred that artistic works involved in the Plaintiff's trademark INDIA GATE were the original artistic works within the meaning of the Indian Copyright Act, 1957, and the plaintiff was the owner and proprietor thereof. The copyright in the said trademark/label was duly registered (under No. A-75495/2006) under the Copyright Act in the name of the Plaintiff. The plaintiff was stated to have been dealing with its said Copyright in the course of CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 7 of 44 trade in relation to its said goods and business, inter-alia, within the meaning of Section 14 of the Copyright Act. The plaintiff's copyright was stated to have been enforceable within the ambit of the Copyright Act, 1957, as well as by virtue of India's membership to the Berne Convention, the Universal Copyright, and the International Copyright Order 1991.
It was stated that the plaintiff had also displayed its said product under the trademark INDIA GATE with the device of INDIA GATE on the internet through its website, namely www.krblrice.com. The said website of the plaintiff was stated to have contained extensive information about the goods and business provided by the Plaintiff under its said trademark INDIA GATE with the device of INDIA GATE. The plaintiff's website, interactive in nature, was stated to have received thousands of visits from people looking for information about the Plaintiff's innumerable and wide spectrum of business and its goods/services, which was not only used to display its products under the brand INDIA GATE but was also used as a tool to carry out its business thereunder.
It was stated that the Plaintiff had already built up a valuable trade under its said trademark/label and had conducted handsome business thereunder. Further, the Plaintiff's goods and business under the trademark/label INDIA GATE (with the device CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 8 of 44 of INDIA GATE) had a presence at all known retailers, such as Big Bazar, Reliance Fresh, Big Apple, Sabka Bazar, etc., at mega malls, and at every nook-and-corner grocery shop. The annual sales figures (domestic and export) in respect of the trademark/brand INDIA GATE were as follows:
Year Export Sales Domestic Sales
(in Crores) (in Crores)
1993-1994 1.07
1994-1995 7.21
1995-1996
1996-1997 2.71
1997-1998
1998-1999 3.21
1999-2000 1.93 5.45
2000-2001 5.70 10.60
2001-2002 10.89 18.60
2002-2003 8.32 33.73
2003-2004 18.09 50.43
2004-2005 36.58 79.00
2005-2006 66.17 183.16
2006-2007 112.44 234.82
2007-2008 214.23 250.07
2008-2009 366.23 275.21
2009-2010 443.29 308.45
2010-2011 374.60 177.69
2011-2012 410.50 243.54
CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 9 of 44
2012-2013 474.52 632.42
2013-2014 691.70 861.11
2014-2015 780.32 977.99
2015-2016 817.25 720.71
2016-2017 697.99 956.62
2017-2018 736.02 1060.51
2018-2019 793.55 1273.93
2019-2020 738.08 1306.22
8. It was stated that the Plaintiff had regularly and continuously promoted its distinctive trademark/label and the goods and business associated with it through extensive advertisements, publicity, promotions, and marketing research. The Plaintiff was stated to have spent enormous amounts of money, effort, skills, and time on these activities, which were conducted through various means and modes, including visual and print media, in leading newspapers, trade literature, and magazines. Additionally, prominent news and entertainment channels, such as STAR T.V, AAJ TAK, NDTV, INDIA T.V., and various regional and local channels across different parts of the country, were utilized for promotion, all of which had tremendous reach, availability, and circulation both in India and overseas. It was also stated that the Plaintiff had engaged in sales promotional activities by participating in exhibitions, offering special discounts, and collaborating with big and renowned retailers in different regions CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 10 of 44 of the country. The advertisement and promotional expenses related to the brand/trademark INDIA GATE incurred by the Plaintiff were as follows:
Year Electronic Media Print Media
2004-2005 17,681,234.00 137,379.00
2005-2006 39,906,836.00 5,180,104.80
2006-2007 50,047,273.00 1,165,158.00
2007-2008 44,368,193.00 1,521,407.50
2008-2009 49,268,271.00 1,551,185.00
2009-2010 70,322,788.00 229,972.34
2010-2011 80,065,599.00 996,132.00
2011-2012 115,825,178.00 2,309,180.00
2012-2013 106,916,630.00 6,887,826.00
2013-2014 152,516,040.00 1,14,40,169.00
2014-2015 222,765,526.24 11,610,461.06
2015-2016 313,340,355.00 13,928,775.08
2016-2017 290,420,929.00 10,256,613.03
2017-2018 250,624,887.00 100,500,087.00
2018-2019 268,104,915.00 95,033,982.00
2019-2020 386,919,704.00 146,636,061.05
9. It was stated that, in October 2010, the plaintiff's brand INDIA GATE CLASSIC had sponsored the successful reality show MASTER CHEF India on Star Plus, featuring Bollywood actors like Akshay Kumar, Ajay Chopra, and Kunal Kapoor. That same CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 11 of 44 year, BIG FM had partnered with INDIA GATE basmati rice to promote ASLI No. 1, recognized as India's first green mimicry talent hunt show, with INDIA GATE serving as the title sponsor. Additionally, the plaintiff had been associated with the movie Satyagrah, released in 2013, which starred Amitabh Bachchan, Ajay Devgan, and Manoj Bajpayee, and featured INDIA GATE Basmati Rice. The plaintiff had conducted video promotions for Satyagrah using the trademark INDIA GATE and had advertised its products on various social media platforms. The plaintiff maintained high-quality standards for its products under the INDIA GATE label and had received multiple awards for its quality as follows.
Year Award
1996-1997 The Plaintiff was awarded by APEDA
for
APEDA Export awards.
1997-1998 The Plaintiff was awarded by APEDA
for
APEDA Export awards.
1999-2000 The Plaintiff was awarded by APEDA
for
APEDA Silver trophy
2001-2002 The Plaintiff was awarded by APEDA
for
CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 12 of 44 APEDA Silver trophy 2002-2003 The Plaintiff was awarded by APEDA for APEDA Silver trophy 2003-2004 The Plaintiff was awarded by APEDA for APEDA Silver trophy 2004-2005 The Plaintiff was awarded by APEDA for APEDA Silver trophy 2005 The Plaintiff earned recognition of a Four Star Export House 2006 The Plaintiff was awarded 'INDIASTAR 2006' for excellence in Packaging in India.
2006-2007 The Plaintiff was awarded by APEDA for APEDA Silver trophy 2007-2008 CONCOR 'Best Exporter' award in the north-central region 2007-2008 The Plaintiff was awarded by APEDA for APEDA Golden trophy 2008-2009 The Plaintiff was awarded by APEDA for APEDA Golden trophy 2009-2010 The Plaintiff was awarded by APEDA CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 13 of 44 for APEDA Golden trophy 2011-2012 The Plaintiff was awarded by APEDA for APEDA Bronze Trophy 2012-2013 The Plaintiff was awarded by APEDA for APEDA Bronze Trophy 2015-2016 The Plaintiff was awarded by APEDA for APEDA Gold Trophy
10. It was stated that, in 2016, the plaintiff set a Guinness World Record for a 550 KG bag of rice under the brand INDIA GATE BASMATI RICE CLASSIC, featured in media like The Hindu and India Today. KRBL Limited was recognized by the Discovery Channel for its role in promoting Basmati rice, exporting to over 82 countries. Their journey from an initial 500 MT export to a 700,000 MT business was highlighted in the special feature "The GOD OF GRAINS," showcasing brands such as INDIA GATE, NUR JAHAN, and UNITY.
11. It was stated that because of the plaintiff's priority in adopting and using the trademark/brand INDIA GATE, it had acquired enviable and enduring goodwill and reputation in India as CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 14 of 44 well as in international markets. The plaintiff's trademark was stated to have become distinctive and associated with the plaintiff's goodwill and business, acquiring secondary significance with the plaintiff and its good and business.
12. It was stated that the plaintiff's goods and business were known, recognized, demanded, sold, and traded worldwide with reference to its trademark INDIA GATE. Members of the trade, industry, consumers, and the general public were well aware of the plaintiff's trademark INDIA GATE and the plaintiff's goods and business associated with it. The plaintiff's trademark was said to be a well-known trademark within the meaning of Section 2(1) (zg) of the Act. Consequently, due to the extensive use and reputation of the plaintiff's trademark, it was recorded as a well- known trademark under Section 2(1)(zg) and Section 11(6) of the Trademarks Act, in accordance with Rule 124(5) of the Trade Mark Rules, 2017. A notification to this effect was published in the official Trade Marks Journal No. 1915 dated 19.08.2019 on page 8330.
13. It was stated that the plaintiff had acquired the exclusive rights to use its trademark, and nobody could have been permitted to use the same or any other deceptively similar trademark or copyrights in any manner whatsoever in relation to any goods or services without the leave and license of the plaintiff. The plaintiff was stated to have taken action against various pirates CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 15 of 44 and infringers who had tried to adopt or use the trademark INDIA GATE or confusingly similar trademarks or trade dress to trade upon the exponential goodwill and reputation of the plaintiff. It was reported that relevant authorities and courts had recognized the plaintiff's rights in the trademark label INDIA GATE (with the device of INDIA GATE) and INDIA GATE CLASSIC (label), and had granted relief to the plaintiff against unscrupulous users. The plaintiff had obtained injunctions in India, as well as in foreign countries, against some habitual infringers.
14. The defendants were stated to have been engaged in the trade and business of manufacturing, processing, selling, exporting, soliciting, advertising, and networking of rice and related, cognate, or allied goods (hereinafter referred to as "the impugned goods and business"). Defendants No. 1, 2, and 3 were stated to have acted in unison and in collusion with one another. However, the plaintiff was stated to have not been aware of the exact relationship, nexus, and constitution of the defendants.
15. The defendants were stated to have adopted the trademarks and labels SUNCON'S BHARAT GATE, BHARAT GATE, and BHARAT GATE (with the device of INDIA GATE) (hereinafter referred to as "the impugned trademarks/labels"), and a bare perusal of the impugned trademarks/labels of the defendants would have shown the identity between the competing marks. It was also stated that the defendants had copied the essential CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 16 of 44 features involved in the plaintiff's copyright, thereby infringing the plaintiff's copyright in its said label. The defendants were stated to have used false descriptions on their impugned goods to wrongly link their goods with the plaintiff. Furthermore, it was stated that the defendants were not the proprietors of the impugned trademarks/labels and had adopted, used, and/or intended to use the same in relation to their impugned goods and business, dealing with them in the course of trade without the leave and license of the plaintiff. The defendants were stated to have no right to use the impugned trademarks/labels in any manner in relation to the impugned goods and business, or for any other goods and business whatsoever, thereby violating the plaintiff's rights therein.
16. It was stated that the defendants, through their malafide adoption and use of the impugned trademarks/labels had violated the plaintiff's rights over its well-known trademark, enabling others to pass off their goods as those of the plaintiff and diluting the plaintiff's proprietary rights. The defendants were stated to have been fully aware of the plaintiff's prior rights and goodwill at the time of its adoption. The visual and conceptual similarities between the rival trademarks/labels were so close that they could have only resulted from deliberate imitation, making the defendants' use malafide and constituting pirated use of the plaintiff's trademark.
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17. It was stated that the defendants had adopted and started using the impugned trademarks/labels dishonestly, fraudulently, and out of greed, with a view to gain an undue advantage and trading upon the well-established, longstanding, and extensive goodwill, reputation, and prior proprietary rights of the plaintiff in the said trademark/label. The plaintiff's trademark/label was stated to have been diluted and eclipsed, and any person not knowing the relationship between the parties would have been confused by the defendants' impugned adoption and use. It was further stated that the plaintiff had suffered huge losses both in business and in reputation, and such losses were incapable of being assessed in monetary terms. The plaintiff was stated to have had no access to the defendants' accounts, and the defendants were stated to be liable to render their accounts to the plaintiff and to compensate the plaintiff for the profits and business earned by the them.
18. The cause of action was stated to have initially arisen in May 2018 when the plaintiffs became aware of defendant no. 2's trademark application under no. 3768355 in Class 30 for the trademark BHARAT GATE. The cause of action arose again in 2018 when the plaintiff opposed the application and the defendants' goods were not available in the market. Additionally, the cause of action had arisen again in the last week of August 2020 when the plaintiff came across the defendants' goods bearing the impugned trademarks/labels in the markets of South Delhi. The cause of action was stated to have arisen again when the plaintiff CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 18 of 44 discovered the trademark application filed by defendant no. 1 under no. 4487980 in Class 30 for the trademark/label SUNCON'S BHARAT GATE. The plaintiff was stated to have been in the process of filing an opposition against the application, as it was advertised in the Trademark Journal in June 2020. It was further stated that the cause of action continued as the defendants persisted in infringing the plaintiffs' trademark and subsisted until the defendants were restrained by an order of permanent injunction granted by this Court.
19. Since the defendants were selling, networking, using, and soliciting their goods and business under the impugned trademarks/labels within the jurisdiction of this court, hence it was stated that this court had the territorial jurisdiction to try and decide the present suit. The plaintiff's proprietary rights were being prejudicially affected in South Delhi, which further established the court's jurisdiction. The plaintiff had credible apprehensions that the defendants would have expanded their operations under the impugned trademarks/labels in South Delhi, and the threat of such use was imminent, giving rise to a substantial part of the cause of action within this Court's jurisdiction. It was further stated that the defendants' infringing activities were likely to have a significant effect on the plaintiff's current and future business in South Delhi. Further, it was stated that there was an undeniable nexus between the cause of action in this suit and the territory of South Delhi, as the defendants' CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 19 of 44 business activities, along with parts of the cause of action for filing the suit, arose within the territorial jurisdiction of this Court under Section 20 of the Code of Civil Procedure, 1908. The plaintiff was stated to have sold goods under the said trademark/label in the South Delhi market through authorized distributors National Pure Products and R.S. Distributors. Additionally, the plaintiff's website was stated to be interactive and accessible within the jurisdiction of this Hon'ble Court. Thus, this court was stated to have territorial jurisdiction under Section 134(2) of the Trade Marks Act, 1999.
20. In light of the aforesaid facts and circumstances, the plaintiff had prayed for the passing of an decree for Permanent Injunction restraining the defendants, their individual proprietors, partners, directors, agents, representatives, distributors, assigns, heirs, successors, stockists, and all others acting for and on their behalf from soliciting, exporting, displaying, advertising, processing, using and/or intended use, selling, and/or dealing in any other mode or manner in the impugned trademarks/labels SUNCON'S BHARAT GATE, BHARAT GATE, BHARAT GATE (with the device of India Gate), or any other trademark which was identical with and/or deceptively similar to the packaging of the plaintiff's trademark/label INDIA GATE (with and/or without the Device of India Gate) in relation to goods, services, and business of rice and other related/allied/cognate goods and services. The plaintiff further sought an order for the CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 20 of 44 rendition of accounts, damages, and a decree for delivery up of all impugned goods, finished or unfinished bearing the impugned mark with costs in their favour against the defendants, along with any other order deemed fit and proper by the court.
21. Vide Order of this Court dated 09.10.2020, an ad- interim ex-parte order of injunction was granted in favour of the Plaintiff and against the Defendants, restraining the Defendants from infringing the Plaintiff's trademarks/label until further orders.
22. Upon service of notice, the defendants had appeared to contest the plaintiff's case on its merits and had filed their written statement on record. In their statement, defendant no. 2 had raised a preliminary objection, alleging that the plaintiff was guilty of making frivolous and vexatious allegations against them. It was further stated that no cause of action had arisen in favor of the plaintiff against the defendants.
23. On merits, it was stated that the plaintiff could not have any exclusive rights in the words "INDIA," "GATE," or "INDIA GATE," as those words were quite generic and non- distinctive in nature. The plaintiff could not have claimed any proprietorship rights in those words or names. It was further contended that the words "INDIA," "GATE," and "INDIA GATE"
were publici juris, belonging to the public at large. The defendants were stated to have had proprietary rights in the trademark CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 21 of 44 "BHARAT GATE" with the device of "TAJ MAHAL" and "INDIA GATE," as it was distinctive in nature and had been coined by defendant no. 1 and 2. Hence, it was stated that the two trademarks
--the plaintiff's and the defendants'--were phonetically and visually distinct. The defendants had denied all allegations except for those either explicitly admitted or constituting matters of record, dismissing the remaining claims as incorrect and baseless.
24. To this written statement of the defendant no. 2, plaintiff had also filed its replication, wherein the preliminary objections taken by the defendants were denied by it and the contents of plaint were reiterated on merits.
25. On the pleading of the parties, the ld. predecessor of this court vide his order dated 12.04.2022, had framed the following issues:
1. Whether the plaintiff is the prior adopter/proprietor of the trademark "INDIA GATE"? OPP.
2. Whether the trademark BHARAT GATE with the device TAJ MAHAL and INDIA GATE is distinguished from the trademark or trade name of the plaintiff, INDIA GATE and is not deceptively similar thereto? OPD-1&2.
3. Whether the defendant is infringing and passing off the trademark/label of the plaintiff "INDIA GATE" by adopting the impugned CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 22 of 44 trademark BHARAT GATE, SUNCON'S BHARAT GATE, BHARAT GATE with device of INDIA GATE? OPP.
4. Whether the plaintiff is entitled to rendition of account from D-1 and D-2? OPP.
5. Whether the Plaintiff is entitled to costs? If so, how much? OPP.
6. Relief.
26. In order to prove its case by preponderance of the probabilities, plaintiff had examined one witness namely Sh. Himalaya Koul, S/o Sh. Virendra Koul, R/o House no. 11/66, Sector-3, Rajendra Nagar, Sahibabad, District Ghaziabad, Uttar Pradesh- 201005, who had placed on record, his affidavit Ex. PW- 1/A in his examination-in-chief, wherein he had reiterated the contents of plaint on solemn affirmation. Besides this, he had also placed on record the following documents: -
1) Ex. PW-1/A to A-5- Coloured photocopies of the product photographs displaying the Plaintiff's trademark/label
2) Ex. PW-1/2- Coloured printout of photographs representing the impugned trademark of defendant.
3) Ex. PW-1/3- Copy of the extract from the Board Resolution, dated 11.08.2020, in favour of Saumya Kumar Sharma as well as the then AR Himalaya Kaul.
CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 23 of 44
4) Ex. PW-1/4A to 4D - Copies of the certificate of incorporation of the Plaintiff's company and the agreement dated 01.04.1996.
5) Ex. PW-1/5A to 5F- Copies of the status, registration certificates, journal copy, deed of assignment, and other relevant documents related to the trademark registration of the Plaintiff in India with respect to the trademark INDIA GATE under No. 599833 in Class 30.
6) Ex. PW-1/6A to D- Printout of the status
page dated 08.09.2020 for trademark BABAL
HIND.
7) Ex. PW-1/7 - Printout of the list of
trademark applications of the Plaintiff.
8) Ex. PW-1/8 - Copy of the copyright
registration certificate under No. A-75495/2006 dated 28.01.2006
9) Ex. PW-1/9 A and B - Copies of certificates from the CA for the sales figures and advertisement figures of the Plaintiff for the trademark INDIA GATE..
10) Ex. PW-1/10/1 to 10/51 - Copies of invoices with respect to the domestic sales of the Plaintiff from 1999 to 2020.
11) Ex. PW-1/11/1 to 11/110 - Copies of invoices with respect to the export sales of the Plaintiff during the period between 1993 and 2018.
12) Ex. PW-1/12/1 to 12/39 - Copies of invoices relating to the advertisements of the Plaintiff's brand.
13) Ex. PW-1/13/1 to 13/81 - Coloured photocopies of newspaper advertisements, magazine advertisements, trade magazine advertisements, and other advertisements since 2002.
14) Ex. PW-1/14 - Printouts of outdoor advertisements with respect to the Plaintiff's brand.
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15) Ex. PW-1/15/1 - Printouts of the awards conferred upon the Plaintiff.
16) Ex. PW-1/16 - Printouts showing the availability of Plaintiff's goods under its brand INDIA GATE on its own website and on third-
party websites.
17) Ex. PW-1/17 - Printouts of the order of the Deputy Registrar of Trademarks & GI dated 31.07.2019 declaring the Plaintiff's trademark INDIA GATE as a well-known mark.
18) Ex. PW-1/18- Printouts of the status page of the Defendant's trademark application and other documents.
The exhibition of all documents was objected to by the learned counsel for the defendant on the ground of mode of proof, as the originals of the documents were not filed along with the plaint, and no leave of the court had been obtained for producing the original documents. However, the learned predecessor, after perusing the certificate under Section 65B of the Evidence Act, ordered the witness to file a proper declaration on oath, fulfilling the requirements of Order XI, Rule 6(3) of the CPC, as amended by the Commercial Courts Act and Section 65B of the Indian Evidence Act, which was accordingly filed by him on 02.05.2023.
During his cross-examination conducted by the Learned Counsel for the Defendants, PW1 had stated that he had joined the Plaintiff company on 22.01.2016 as a Management Executive and was currently heading the Central Research and Audit Cell. He was stated to be taking care of research and development, regulatory CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 25 of 44 affairs including IP and audits related to food standards, supply quality assurance and product development.
In his further cross-examination conducted on 25.04.2024, he had denied the suggestion that he was not working with the plaintiff company as on the date of filing of the present suit. He had stated that he was unaware of any pending litigation between the plaintiff and one Vikram Roller Floor Mills, Delhi and without verification of records, he could not comment on whether the plaintiff had any registration of its trademark "India Gate" in the state of Qatar or not. He could not confirm if plaintiff was holding trademarks registration in its favour regarding all synonyms of "India" or "Gate". Certain questions were posed to PW1 pertaining to the product and packaging of the plaintiff's and defendant's products; however, such questions were disallowed by the court as they pertained to matter of record.
He had admitted that before coming across the brand/trademark "Bharat Gate" of Defendant Nos. 1 and 2, he had come across the word "Bharat Gate." He had denied the suggestion that the Plaintiff had no right to claim any proprietary right in the word "India" and "India Gate" or in the photo of the monument "India Gate." He had denied the suggestion that India Gate was the name of a historical monument and that its registration would not have conferred any exclusive proprietary rights over the word "India Gate." He had further denied the suggestion that the words CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 26 of 44 "India," "Gate," and "India Gate" were public juris (belonging to the public at large). He had admitted that Bharat Gate was not the name of any monument or place. He had denied the suggestion that Bharat Gate was a specially coined word and that Defendant Nos. 1 and 2 had proprietary rights in the word "Bharat Gate".
Formal suggestions were also denied by him as wrong and incorrect including the one that he was deposing falsely.
27. Thereafter Plaintiff's evidence was closed.
28. Despite granting two opportunities to the defendants to adduce their evidence, the defendants had failed to appear on either of the dates; hence, on 23.08.2024, this Court had closed the rights of the defendants to adduce their evidence.
29. I have heard Sh. Shravan Kumar Bansal, Ld. Counsels for the plaintiff, and Ms. Shefali Kishore, Ld. Counsels for the defendants, at length and have gone through the record.
I have gone through the arguments and submissions filed on behalf of the Plaintiff, wherein it has been contended that the Plaintiff was the registered owner of the trademark INDIA GATE, which it had been using since 1993 for rice. The respondents were also stated to have been dealing with rice under the name BHARAT GATE. It has been argued that, while using the CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 27 of 44 name BHARAT GATE for its products, the respondents have infringed the Plaintiff's registered trademark "INDIA GATE"
within the meaning of Section 29 of the Trade Marks Act, 1999, and also an attempt has been made by the respondents to pass off its product as the product of the Plaintiff.
On the contrary, counsel for the Respondents had contended that there was no phonetic or visual similarity between the marks "INDIA GATE" and "BHARAT GATE," and that the Plaintiff could not claim a monopoly over the words "INDIA GATE," as these were words of common usage and were symbol of a national monument. The Plaintiff has further placed its reliance on the judgments of the Hon'ble Supreme Court in Renaissance Hotel Holdings Inc V. B Vijaya Sai (2022) 5 SCC 1, Amritdhara Pharmacy V. Satyadeo Gupta, 1962 SCC Online SC 13 and Kaviraj Pandit Durgadutt Sharma V. Navaratna Pharmaceutical Laboratories, 1964 SCC Online SC 14 as well the judgments of Hon'ble Delhi High Court in South India Beverages Pvt Ltd V. General Mills Marketing Inc, 2014 SCC Online Del 1953, Amar Singh Chawalwala V. Vardhman Rice, 2009 SCC Online Del 1690 and Shree Nath Heritage Liquor Pvt Ltd. V. Allied Blender & Distillers Pvt Ltd, 2015 SCC Online Del 10164.
30. It is pertinent to note that the ad-interim ex-parte injunction granted in favour of the Plaintiff against the Defendants CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 28 of 44 was set aside by this Court on 09.01.2024, thereby vacating the relief previously granted. However, upon challenge, the Division Bench of the Hon'ble High Court of Delhi, vide its order dated 15.01.2025 in FAO(COMM) 24/2024 speaking through HMJ C. Hari Shankar J. was pleased to make the following observations in favour of the Plaintiff:-
21.4. It is settled - indeed, practically axiomatically by now -
that the possibility of likelihood of confusion, for the purpose of trade mark infringement, has to be assessed from the perspective of a customer of average intelligence and imperfect recollection.16 21.5 "Likelihood of confusion", by a consumer of average intelligence and imperfect recollection, is all that is needed.
"Confusion", again, need not extrapolate, in every case, to the consumer mistaking one mark for the other. It is enough - as Section 29(4) itself clarifies - if the similarity between the marks conveys an impression of "association" between them, to the mind of such a consumer. Again, all that is needed is "initial interest confusion"17, without placing the marks side by side. In other words, if, on seeing the defendant's mark some time after the first, the consumer of average intelligence and imperfect recollection is likely to pause, even if for the fraction of a minute, and ponder as to whether it was not the same, or at was not associated with, the plaintiff's mark which he had seen earlier, the tort of infringement stands, ipso facto, committed by the defendant. The following passage from Kerly's Law of Trade Marks and Trade Names, 9 th Edn, was approvingly cited by the Supreme Court, in Parle Products (P) Ltd v J.P. & Co.18.
"Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 29 of 44 if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."
(Emphasis supplied) 21.6 Having reproduced the above passage from Kerly, the Supreme Court, in Parle products, went on to hold:
"9. It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him."
(Emphasis supplied) CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 30 of 44 In view of the express words employed by Section 29(2) of the Trade Marks Act, it is clear that the propensity of the average consumer to accept the defendant's product, if offered to him, owing to the similarity between the plainitiff's and defendant's marks, cited as a definitive test in Parle Products may as much be because she, or he, confuses the defendant's mark for the plaintiffs, as because, owing to the similarity between the two marks, he believes the existence of an association between them. A fascinating study on the contours of confusion is to be found in Shree Nath Heritage.
21.7 The opening sentence in the above paragraph from Parle Products introduces a further concept of "idea infringement". If, in other words, the idea conveyed by one mark is copied by another, it amounts to idea infringement which, too, is prohibited as likely to result in confusion in the mind of the consumer of average intelligence and imperfect recollection, as the above passage from Parle Products holds. The logic is apparent. The human mind captures ideas conveyed by images, or words, and often it is the idea which remains impressed on the mind. The conveying of the same idea by two marks, therefore, clearly results in likelihood of the human mind - especially if average in intellect and imperfect in recollection - confusing one for the other, or at least presuming an association between them. Instances where this Court has held "idea infringement" to exist are to be found in Holyland Marketing (P) Ltd v Vijay Pal Vineet Kumar & Co 19, Hari Chand Shri Gopal v Evergreen International20 , Bvlgari SPA v Notandas Gems (P) Ltd21 and Pernod Ricard India Pvt Ltd v A.B. Sugars Ltd22.
21.8 The House of Lords, in Reckitt & Colman Ltd v Borden Inc.23, also postulated the "trinity" or "triple identity test", which deems infringement to exist where identical (or deceptively similar) marks are used for more or less identical products, having a common market. Similarity of marks, identity/similarity of the goods on which the marks are used, and commonality of market, therefore, predicate a legitimate inference of infringement.
........
CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 31 of 44 21.10 The latter common "Gate" part of the rival marks itself renders them phonetically similar. One need only refer, in this regard, to the oft cited decision in Amritdhara Pharmacy. The Supreme Court was, in that case, concerned with the marks AMRITDHARA and LAXMANDHARA, both used for Ayurvedic medicinal preparations. On the aspect of the likelihood of the two marks to be confused with each other, the Supreme Court held thus:
"7. Let us apply these tests to the facts of the case under our consideration. It is not disputed before us that the two names "Amritdhara" and "Lakshman-dhara" are in use in respect of the same description of goods, namely a medicinal preparation for thealleviation of various ailments. Such medicinal preparation will be purchased mostly by people who instead of going to a doctor wish to purchase a medicine for the quick alleviation of their suffering, both villagers and townsfolk, literate as well as illiterate. As we said in Corn Products Refining Co. v Shangrila Food Products Ltd.24 the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity-of the two names "Amritdhara" and "Lakshmandhara" is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words "Amritdhara" and "Lakshmandhara". We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as "current of nectar" or "current of Lakshman". He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 32 of 44 and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between "current of nectar" and "current of Lakshman". "Current of Lakshman" in a literal sense has no meaning; to give it meaning one must further make the inference that the "current or stream" is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsman will perhaps know Lakshman, the story of the Ramayana being familiar to him; but we doubt if he would etymologise to the extent of seeing the so-called ideological difference between "Amritdhara" and "Lakshmandhara". He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments."
(Emphasis supplied) 21.11 Applying the above principles, it is clear that the mark BHARAT GATE clearly infringes the mark INDIA GATE. Both are used for the same goods. They are phonetically similar.
"Bharat" and "India" convey the same idea, Preambularly and otherwise. Both are used for rice. The triple identity test, too, therefore, stands satisfied.
........
22.2. Assuming such visual differences the marks, seen as images on the packs, exist, they do not serve to mitigate the existence of infringement, and the law in this regard is, again, not res integra. The issue stands concluded by the judgment of the Supreme Court in K.R. Chinna Krishna Chettiar v Shri Ambal & Co 25. In that case, the Supreme Court was dealing with the marks "SRI AMBAL" and "SRI ANDAL", used for snuff in both cases. Ambal and Andal were Hindu divinities, worshipped in the South of India. There is a specific finding by the Supreme Court in the said decision that the two rival marks were visually completely CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 33 of 44 dissimilar. Despite this, the Supreme Court has held that, as "ANDAL" and "AMBAL" were phonetically similar, a clear case of confusion existed. The relevant paragraphs from K.R. Chinna Krishna Chettiar may be reproduced thus:
"7. There is no evidence of actual confusion, but that might be due to the fact that the appellant's trade is not of long standing. There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between Ambal and Andal.
*****
9. The name Andal does not cease to be deceptively similar because it is used in conjunction with a pictorial device. The case of De Cordova v Vick Chemical Co.26 is instructive. From the appendix printed at p. 270 of the same volume it appears that Vick Chemical Company were the proprietors of the registered trade mark consisting of the word "Vaporub" and another registered trade mark consisting of a design of which the words "Vicks Vaporub Salve" formed a part. The appendix at p. 226 shows that the defendants advertised their ointment as "Karsote Vapour Rub". It was held that the defendants had infringed the registered marks. Lord Radcliffe said:
"... a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features".
......
22.4 Thus, infringement is made out where there is deceptive phonetic, visual, or idea similarity between the marks. The CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 34 of 44 presence of any one element, as is sufficient to confuse the consumer, would be sufficient. All other features of distinction would, then, pale into insignificance. The marks, moreover, have to be compared as wholes, taking into account the essential features of the appellant's mark. There is no inherent contradiction in this principle; if the essential features of the appellant's mark stand replicated by the respondent, either by plain copying or usage of features which are confusingly similar, in such a manner as to render the respondent's and appellant's marks, seen as wholes, confusingly similar to each other, the tort of infringement stands committed.
22.5 When one compares, visually, the appellant's INDIA GATE and respondent's BHARAT GATE marks, as used on their respective packs, it is apparent that the respondent has, besides using a word mark which is phonetically similar and representing the same idea as the appellant's mark, also copied the essential features of the appellant's mark. Most tellingly, the figure of the India Gate figures prominently on both the packs. I am, quite frankly, unable to appreciate how the learned Commercial Court could hold that, in the respondent's mark, seen by the eye, the Taj Mahal was prominent, and that the India Gate is visible only when the viewer views the package "with great care and concentration". It appears that the learned Commercial Court might have been referring to some other mark, as, in the respondent's mark, it is the image of the Taj Mahal, if anything, which is disproportionately small as compared to the India Gate, which occupies the entire foreground:
CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 35 of 44 22.6 In any event, applying the K.R. Chinna Krishna Chettiar principle, therefore, the fact that there may be other visual dissimilarities would not make any difference to the aspect of infringement.
22.7 It is relevant to note, in this context, that, in K.R. Chinna Krishna Chettiar, there was no similarity whatsoever, visually, between the rival marks as depicted on the rival products, as is apparent from the following factual recital in the opening paragraph of the judgement:
"...Trade Mark No. 126208 consists of a label containing a device of a goddess Sri Ambal seated on a globe floating on water enclosed in a circular frame with the legend "Sri Ambal parimala snuff"
at the top of the label, and the name and address "Sri Ambal and Co., Madras" at the bottom. Trade mark No. 146291 consists of the expression "Sri Ambal". The mark of which the appellant seeks registration consists of a label containing three panels. The first and the third panels contain in Tamil, Devanagri, Telgu and Kannada the equivalents of the words "Sri Andal Madras Snuff". The centre panel contains the picture of goddess Sri Andal and the legend "Sri Andal"."
Even in the case of marks which had thus no visual similarity between them at all, the Supreme Court held that infringement stood established because of the phonetic similarity between "Ambal" and "Andal". As against this, in the present case, not only is there phonetic similarity between the rival marks; the case is further one of blatant idea infringement, with, further, the most prominent visual feature of the appellant's mark, namely the India Gate, having been slavishly copied by the respondent.
22.8 The reliance, by the learned Commercial Court, on the visual dissimilarities between the appellant's INDIA GATE and respondent's BHARAT GATE marks is, therefore, completely misplaced.
CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 36 of 44
23. "Bharat" being a synonym for India - Munday and Slazenger 23.1 While observing that "Bharat" is a synonym of "India", the learned Commercial Court, unfortunately, fails to notice the most obvious sequitur. "India Gate" has a well-known and well- recognized connotation, being referable to one of our proudest national monuments, in the heart of the Delhi. This is underscored by the pictorial representation of the India Gate on the appellant's package, accompanying the INDIA GATE mark. "Bharat Gate", on the other hand, has no meaning whatsoever, except as a corrupted synonym of "India Gate". The usage, by the respondent, of the figure of the India Gate prominently covering nearly the whole of the packing clearly indicates a deliberate attempt, by the respondent, to deceive consumers into confusing the respondent's product with the appellant's. The use of "Bharat", a synonym for "India" is, obviously, merely a misguided attempt to avoid an allegation of slavish adoption. The case is, therefore, prima facie one of a mala fide and deliberate attempt to capitalize on the goodwill of the appellant. There is no conceivable explanation as to why the respondent used "BHARAT GATE" for rice where the appellant's well-known mark "INDIA GATE" was already in existence. The reason can only be to capitalise on the appellant's goodwill and ensure sales of the respondent's product.
23.2 In such cases, the exordiums of Kekewich J in Munday v Carey29, and of Lindley, LJ in Slazenger & Sons v Feltham & Co.30 squarely apply. In Munday, Kekewich J held:
"...Where you see dishonesty, then even though the similarity were less than it is here, you ought, I think, to pay great attention to the items of similarity, and less to the items of dissimilarity."
Lindley LJ emphasized the rigidity of the approach to be adopted in the case of deliberate copying, in Slazenger, thus:
CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 37 of 44 "One must exercise one's common sense, and, if you are driven to the conclusion that what is intended to be done is to deceive if possible, I do not think it is stretching the imagination very much to credit the man with occasional success or possible success. Why should we be astute to say that he cannot succeed in doing that which he is straining every nerve to do?"
23.3 Applying these principles to the case at hand, as the respondent has deliberately copied the essential features of the appellant's registered INDIA GATE trade mark, by adopting a meaningless, but phonetically similar BHARAT GATE mark which conveys the same idea, "Bharat" being a synonym for "India", the Court was required to concentrate on the similarities between the marks, rather than their minor dissimilarities. Also, in such a case, the Court is required to presume that the attempt at deception, adopted by the respondent, would succeed, rather than otherwise. A clear case of likelihood of confusion, thereby, stands made out.
24 Re. the publici juris finding and the decision in Shree Nath Heritage
24.1 The learned Commercial Court has further held that, as "India" is the name of our country, the appellant could not seek to monopolize it, and that "Gate" is publici juris, over which no exclusive proprietorial rights could be claimed by anyone including the appellant. Ergo, holds the learned Commercial Court, the use, by the respondent, of the mark BHARAT GATE was legitimate, and could not be injuncted by the appellant on the ground that it was a prior registrant and user of the mark INDIA GATE. The learned Commercial Court has also sought, in the process, to distinguish the judgement of the Division Bench of this Court in Shree Nath Heritage on the ground that, there, the two marks had a common first word, "Officer".
CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 38 of 44 24.2 The observation of the learned Commercial Court apropos the decision in Shree Nath Heritage, we may straightaway observe, is vitiated by clear non-application of mind. This Court was, in that case, concerned with two allegedly infringing marks, "Officer's Special" and "Collector's Choice", of the appellant-defendant, vis- à- vis the respondent-plaintiff's mark "Officer's Choice". The learned Commercial Court appears to have overlooked, perhaps inadvertently, the fact that one of the rival marks was "Collector's Choice", which did not involve any Officer.
24.3 In fact, para 63 of the report in Shree Nath Heritage squarely covers this case, and also addresses, once again, the finding of the learned Commercial Court on the aspect of difference in trade dress or visual appearance of the rival marks. It reads:
"63. Since the marks 'Officer's Choice' and 'Collector's Choice'are prima-facie deceptively similar as they convey the same meaning, the impact of different trade dress is highly unlikely to rule out consumer confusion between the two products in this case, especially since consumers expect manufacturers of alcoholic beverages to churn out variants."
Both the observations in this single-sentence paragraph apply to the facts before us. As in the case, the marks INDIA GATE and BHARAT GATE convey the same meaning. Again, as in that case, this renders the marks deceptively similar, so that the difference in trade dress between the marks as visually depicted on the packages of the appellant's and respondent's products would not mitigate the confusion created by the infringement.
31. In view of aforesaid arguments and submissions of the parties as well as evidence appearing on record, my issue wise findings are as under:
CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 39 of 44 Issue No. 1. Whether the plaintiff is the prior adopter/proprietor of the trademark "INDIA GATE"? OPP.
The onus to prove this issue was upon the Plaintiff. Having examined the matter further, this Court is of the view that Petitioner has been able to substantiate his case of 'prior user' of the trademark INDIA GATE which was coined and adopted by the Petitioner in 1993, in relation to its said goods and business. It is a well settled principle of Trademark law that a prior user's rights will override the rights of a subsequent user even though the latter's mark may be a registered trademark. Petitioner has categorically pleaded use of the trademark from 1993 and claimed that the same is prior to that of Respondents. Therefore, in wake of prior use of the trademark by the Petitioner, coupled with several registrations abroad, in support of which registration certificates, whose validity had remained unrefuted and unrebutted, have been filed, as well as the continuous and uninterrupted use of the mark in course of trade in respect of the goods aforementioned, the trademark has become distinctive of the goods of the Petitioner and is associated with him. Accordingly, this issue is answered in affirmative and decided in favour of plaintiff and against the defendants holding plaintiffs to be the prior adopter/proprietor of the trademark "INDIA GATE".
Issue no. 2. Whether the trademark BHARAT GATE with the device TAJ MAHAL and INDIA GATE is distinguished from the CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 40 of 44 trademark or trade name of the plaintiff, INDIA GATE and is not deceptively similar thereto? OPD-1&2.
Issue No. 3. Whether the defendant is infringing and passing off the trademark/label of the plaintiff "INDIA GATE" by adopting the impugned trademark BHARAT GATE, SUNCON'S BHARAT GATE, BHARAT GATE with device of INDIA GATE? OPP.
The onus to prove issue no. 2 was upon the defendants no. 1 and 2, who had failed to discharge the same either by way of cross-examination of PW1 or by adducing any independent evidence in their defence, whereas the onus to prove issue no. 3 was upon the Plaintiff.
In the light of above findings rendered by the Division Bench of Hon'ble High Court and discussed in detail in the preceding paras, the issue no. 2 and 3 are also decided in the favour of the Plaintiff and against the Defendants no. 1 and 2 and thus defendants no. 1 and 2 either themselves or through their principal officers, directors, agents, franchises, servants and all others either acting for or on their behalf, are hereby permanently restrained from soliciting, exporting, displaying, advertising, processing, using and/or intended use, selling, and/or dealing in any other mode or in any manner with the impugned trademarks/labels SUNCON'S BHARAT GATE, BHARAT GATE, BHARAT GATE (with device of India Gate) or any other trademark which is identical with and/or deceptively similar to the packaging of the Plaintiff's trademark/label INDIA GATE (with CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 41 of 44 and/or without Device of India Gate) in relation to goods, services and business of Rice and other related/allied/cognate goods and services and from doing any other acts or deeds amounting to or likely to amount to infringement of Plaintiff's registered trademark and passing off its goods as that of the plaintiff in violation of the plaintiff's trademark/label in INDIA GATE (with Device of India Gate).
However, since no evidence has been adduced on record with respect to defendant no. 3 or its role has otherwise been described in the plaint, hence, the issues are answered in negative qua defendant no. 3.
Issue No. 4. Whether the plaintiff is entitled to rendition of account from D-1 and D-2? OPP.
Issue No. 5. Whether the Plaintiff is entitled to costs? If so, how much? OPP.
The onus to prove issue no. 4 was again upon the Plaintiff, however, since Plaintiff had failed to adduce any evidence on record in the form of its balance sheet or other records to show any actual losses or damages being suffered by it due to business activities of defendants no. 1 and 2, hence, Plaintiff has failed to discharge the onus of this issue, which is accordingly answered in negative and decided against the Plaintiff and in favour of the Defendants no. 1 and 2 holding that Plaintiff is not entitled to any rendition of accounts from defendant no. 1 and 2.
CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 42 of 44 The onus to prove issue no. 5 was also upon the Plaintiff. In light of the above findings, the plaintiff is held to be entitled to the costs of the proceedings, as it was the conduct of the defendants that necessitated and compelled the plaintiffs to file the present suit. Accordingly, this issue is answered in the affirmative and decided in favor of the plaintiff and against defendants No. 1 and 2.
Relief.
32. In view of my findings on the issues above, the suit of the plaintiff is decreed to the extent that the defendants no. 1 and 2 are hereby either themselves or through their principal officers, directors, agents, franchises, servants and all others either acting for or on their behalf, are hereby permanently restrained from soliciting, exporting, displaying, advertising, processing, using and/or intended use, selling, and/or dealing in any other mode or in any manner with the impugned trademarks/labels SUNCON'S BHARAT GATE, BHARAT GATE, BHARAT GATE (with device of India Gate) or any other trademark which is identical with and/or deceptively similar to the packaging of the Plaintiff's trademark/label INDIA GATE (with and/or without Device of India Gate) in relation to goods, services and business of Rice and other related/allied/cognate goods and services and from doing any other acts or deeds amounting to or likely to amount to infringement of Plaintiff's registered trademark and passing off its CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 43 of 44 goods as that of the plaintiff in violation of the plaintiff's trademark/label in INDIA GATE (with Device of India Gate). The costs of suit are also awarded in favour of the Plaintiff. Decree sheet be drawn accordingly.
33. File be consigned to record room after completion of necessary legal formalities in this regard.
ANNOUNCED IN THE OPEN COURT
DATED: 14.02.2025 LOKESH Digitally
by LOKESH
signed
KUMAR SHARMA
KUMAR Date: 2025.02.14
SHARMA 17:27:17 +0530
(Lokesh Kumar Sharma)
District Judge (Commercial Court)-05
South/Saket/New Delhi
CS (COMM) 284/2020 KRBL Limited Vs. Mr. Praveen Kumar Buyyani & Ors. Page no. 44 of 44