Delhi District Court
Shubham Goldiee Masale Pvt. Ltd vs Manish Kumar Varshney on 22 March, 2025
DLND010038222020
IN THE COURT OF MS VINEETA GOYAL,
DISTRICT JUDGE (COMMERCIAL-03),
PATIALA HOUSE, NEW DELHI
CS (Comm) No.: 378 of 2020
CNR No. DLND01-003822-2020
In the matter of:
M/s. Shubham Goldiee Masale Pvt. Ltd.
51/40, Goldiee House,
Nayaganj, Kanpur-208001.
Uttar Pradesh. ........ Plaintiff
Versus
Sh. Manish Kumar Varshney
Trading as Goldi Namkeen
388/7, Nai Basti, Firozabad,
Uttar Pradesh-283203.
K.P. Namkeen Udyog,
D-26, UPSIDC, Jalesar Road,
Firozabad, U.P. ......Defendants
Date of institution of suit : 01.09.2020
Date of Judgment : 22.03.2025
Appearance : Sh. Arpit Pundir, Ld. Counsel for plaintiff.
Sh. B.L. Gupta, Ld. Counsel for defendants.
CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 1 of 31
JUDGMENT
1 The plaintiff has filed the present suit under Section 134 and 135 read with Section 27(2) of the Trade Marks Act, 1999 seeking relief of permanent injunction of trademark, passing off, rendition of accounts, delivery up etc. 2 Briefly, the facts as stated in the plaint are that the plaintiff is a company duly incorporated under the Indian Companies Act, 1956 having its office at 51/40, Goldiee House, Nayaganj, Kanpur, U.P. Sh. Surendra Kumar Gupta, Director in plaintiff has been authorized to institute and file this suit and also to do all acts for its conduct and pursuance including to sign and verify the pleadings, applications, depose on oath and engage advocates.
2.1. It is averred that plaintiff is engaged in the business of manufacturing, marketing and processing of wide range of food products for human consumption including spices, sauces, pickles, noodles, pasta, vermicelli, sarbat, papad, gulab jamun, tea, etc and other allied and related goods. It is the proprietor of the trademark 'GOLDIEE' and GOLDIEE formative trademark/label (hereinreferred as 'suit trademark') in relation to the above goods which is also the HOUSE MARK of the plaintiff. It is claimed that the plaintiff through its predecessors M/s Shubham Industries adopted the said trademark/label in the year 1980 and has been CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 2 of 31 continuously using the same in relation to the above goods in the course of trade. The plaintiff on 01.04.1998 took over the said firm with all its assets and liabilities. In order to acquire statutory rights in the suit trademark/label, the plaintiff had filed various applications for registration under the Act,1999 for the goods as detailed in para 6 of the plaint as detailed below:-
S.No. Trade Mark Application Class and Status with No. and date Goods disclaimer if any of application
1. 367000 30 Registered Disclaimer:
01.10.1980 Spices Registration of this Trade Mark shall give no right to the exclusive use of the device of a boy testing the goods,expression 'Shudata Ki Guarantee' and the device of Star except substantially as shown in the registration on the form of the application.
2.2. It is further claimed by the plaintiff that the goods and business being carried on by the plaintiff under the suit trademark is very extensive and has acquired distinctiveness in the market and trade. The goods of the plaintiff bearing the above trademark CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 3 of 31 are highly in demand in the market on account of their standard, quality and precision. The plaintiff also exports its goods under the said trademark to various countries and the goods have acquired tremendous goodwill and reputation in the markets. Year-
wise sale of plaintiff is detailed in para 9 of the plaint. For the year 2017-18, it was Rs. 6,258,907,653/-.
2.3. The plaintiff further claimed that it has been continuously promoting its goods and business under the suit trademark/label through print, audio/visual media, advertisements and publicity etc. and has spent enormous amount on the same. It is also carrying on its business activities under the suit trademark on the internet through its website www.goldiee.com. The said domain name of the plaintiff is interactive in nature. It is stated that the art work involved in the suit trademark is the original artistic work and plaintiff is the owner and proprietor of the copyright therein within the meaning of the Copyright Act, 1957 as well. The plaintiff's goods under the suit trademark are available to the consumers all over the country through the network of 1200 distributors and C & F agents. The plaintiff has achieved ISO-9001:2000 certification in the year 2005. It's trademark/label is one of the most valuable assets of the plaintiff.
2.4. According to the plaintiff, defendant no.1 trading as GOLDI NAMKEEN (impugned trade mark) at Firozabad and defendant no. 2, K.P Namkeen Udyog at Firozabad, UP, are CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 4 of 31 engaged in the business of manufacturing and marketing of namkeen, tea, coffee, etc (hereinreferred as 'impugned goods'). They have adopted and started using the trademark 'GOLDI' as a word mark and in artistic label form, represented as as shown in para 20 of the plaint in relation to their impugned goods. It is alleged that the impugned trademark being used by the defendants in relation to their impugned goods are identical with and deceptively similar to the plaintiff's trademark/label in each and every respect including phonetically, visually, structurally in its basic idea and in its essential features which the defendants are using to wrongly link the impugned goods with the plaintiff and to wrongly convey to the public and customers that the impugned goods are coming from the source and origin of the plaintiff.
2.5 It is further averred that the defendants are not the proprietor of the impugned trademark/label and have adopted and are using the same in their impugned goods and business without the leave and licence of the plaintiff though, they have no right to use it in any manner. Thus, the defendants are violating the plaintiff's proprietary rights and goodwill in the suit CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 5 of 31 trademark/label/trade name as well as the domain name and thereby passing off and enabling others to pass off their goods and business as that of the plaintiff infringing the plaintiff's trademark/label indulging in unfair and unethical trade practices. Due to the defendants impugned activities, the plaintiff has been suffering huge losses both in business and reputation. The plaintiff has also learnt that the defendants goods are on the social media www.facebook.com and the name of defendant no.2 has been appearing on the impugned goods as manufacturer. Further, on the website of Trade Mark Registry https://ipindiaonline.gov.in/, the plaintiff has found that defendant no.1 has applied for the registration of the impugned trademark/label under no. 4253106 in class 30 on 20.11.2019 for manufacturing of namkeen, tea, coffee etc proposed to be used which application has not yet been published in the Trade Marks Journal for objection. According to the plaintiff, the defendants are soliciting and networking for sales and distribution of the impugned goods under the impugned trademark in the markets of New Delhi and making clandestine and sales to the retailers who are selling the same to unwary customers in the area of New Delhi. Hence, this suit.
3 Pursuant to summons issued, the defendants appeared. They, in their joint written statement denied most of the allegations of the plaint and further denied that defendants have ever adopted any identical or deceptively similar mark of the plaintiff and raised an objection that this Court has no territorial CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 6 of 31 jurisdiction to entertain and try the present suit. It is submitted that the word "Goldi" is generally considered as a commonly used nickname and has been honestly adopted by the defendants since defendant no.1's nickname is 'Goldi'. The device of trademark "Goldi Namkeen" have been honestly, continuously and extensively adopted by defendant no.1 in relation to namkeen, tea and coffee and the said mark / word 'GOLDI' written within a color combination of blue and yellowish golden enclosed within a purple-colored oval shaped representation where word 'Namkeen' has been written below in black stylized font and hence the type of products covered under the mark of plaintiff as compared to that of defendants are mutually exclusive to each other and would lead no confusion among the purchasing public. The alleged mark of plaintiff is being used in respect of spices only. It is further stated that the even the other logo of defendant i.e. 'GOLDI Namkeen' is completely different from the plaintiff's logo. The logo of the defendant is completely distinguishable having a unique colour scheme which associates the mark with the defendant and no one else. It is further submitted that it is not permissible for plaintiff to split the defendant's composite trademark into different components and then separate the word 'GOLDI' used in the composite trademark to compare with plaintiff's trademark for the purpose of alleging deceptive similarity. As an overall expression conveyed by the visual and phonetic elements of the plaintiff's trademark and question of defendant's trademark infringing upon plaintiff's trademark, that too when used for entirely different CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 7 of 31 goods namely namkeen, tea and coffee which are entierly dissimilar to the plaintiff's goods i.e. spices, does not arise. Further, on comparison of the labels employed by the plaintiff containing the mark and the labels of the defendant's employing their mark, the overall impression conveyed to a consumer by both labels are completely different and do not lead to any resemblance of confusion. The plaintiff has miserably failed to analyze and interpret Section 17 of the Trade Marks Act, 1999 in furtherance of which any the plaintiff shall be an exclusive right to use the mark as a whole, however, Section 17 clearly provided that:
"When a trademark consists of several matters, its registration shall confer on the proprietor exclusive right to use of the trade mark as a whole."
3.1 The defendants further submitted that the plaintiff is changing its stands as per its convenience which is evident from record of trademark registry as the plaintiff herein took a completely different stand at the stage of prosecution of its own trademark application. In para 2 of reply to examination report with respect to application no. 2661972 of the plaintiff, it has been mentioned that "that objection raised under Section 11 on the grounds its confliction with cited marks is not maintainable . The applicant's mark 'GOLDIEE label' if compared as a whole is different from cited mark appeared in the examination report. There is no visual or structural similarity between defendant no.1's mark and the cited application. Moreover, the description of CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 8 of 31 goods is also not entirely the same. Accordingly, the said objection be waived. Further, in para 1 of the reply to examination report for application no. 2776291 of the plaintiff, it has been stated "the objection raised under Section 11 on the grounds is "That objection raised under section 11 on grounds its confliction with the cited marks is not maintainable, as the applicant's trademark is a composite mark which contains a logo also and if compared as whole not conflicting with cited marks. Moreover, the goods applied by the applicant's are also different from that of cited mark under nos. 487696 and 1406587 in class 31. Accordingly, the said objection will be waived." Further, in Para 2 of the reply to examination report for application No. 2777098 of the Plaintiff, it has been stated that "That objection raised under section 11 on grounds its confliction with the cited marks is not maintainable. The applicant's mark "GOLDIEE" if compared as a whole is different from cited marks appeared in the examination report, There is no visual or structural similarity between the applicant's mark and other cited applications." Further in Para 2 of the reply to examination report for Application No. 2777101 of the plaintiff, it has been stated that "That objection raised under section 11 on grounds its confliction with the cited marks is not maintainable. The Defendant No. 1 mark "GOLDIEE" if compared as a whole is different from cited marks appeared in the examination report. There is no visual or structural similarity between the applicant's mark and other cited applications. Accordingly, the said objection be waived". Further, in Para 2 of the reply to examination report CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 9 of 31 for Application No. 2777096 of the Plaintiff, it has been stated that: "That objection raised under section 11 on grounds its confliction with the cited marks is not maintainable. The applicant's mark "GOLDIEE" if compared as a whole is different from cited marks appeared in the examination report. There is no visual or structural similarity between the applicant's mark and other cited applications." Further, in Para 1 of the reply to examination report for Application No. 2776288 of the Plaintiff, it has been stated that: "That objection raised under section 11 on grounds its confliction with the cited marks is not maintainable, as the applicant's trademark is a composite mark which contains a logo also and if compared as whole not conflicting with cited marks. Accordingly, the said objection will be waived." Further, in para 2 of the reply to examination report for application No. 2693073 of the plaintiff, it has been stated that " objection raised under section 11 on grounds its confliction with the cited marks is not maintainable. The applicant's mark "GOLDIEE" if compared as a whole is different from cited mark appeared in the examination report. There is no visual or structural similarity between the applicant's mark and the cited application. Moreover, the description of the goods is also different. Accordingly, the said objection be waived. Further, in para 2 of the reply to examination report for Application No. 2693074 of the plaintiff, it has been stated that "that objection raised under section 11 on grounds its confliction with the cited marks is not maintainable. The applicant's mark "GOLDIEE" if compared as a whole is different CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 10 of 31 from cited mark appeared in the examination report. There is no visual or structural similarity between the applicant's mark and the cited application. Moreover, the description of the goods is also different. Accordingly, the said objection be waived." Further, in para 2 of the reply to examination report for Application No. 2544498 of the plaintiff, it has been stated that "the objection raised under Section 11 on grounds its confliction with the cited marks is not maintainable. The applicant's mark GOLDIEE if compared as a whole is different from all cited marks." Further, in para 2 of the reply to examination report for Application No. 2777097 of the Plaintiff, it has been stated: "that objection raised under section 11 on grounds its confliction with the cited marks is not maintainable. The applicant's mark "GOLDIEE" if compared as a whole is different from cited marks appeared in the examination report. There is no visual or structural similarity between the applicant's mark and other cited applications".
3.2. It is further submitted that when the plaintiff while defending itself conveniently took a stand that its trademark "GOLDIEE" is different from the other marks containing "GOLDIE/GOLDY/ GOLDI" per se or / and as formatives, however, now, in order to cause obstructions to the defendants, the plaintiff has stated that it's trade mark "GOLDIEE" is similar to the trade mark "GOLDI NAMKEEN" of the defendant and therefore, plaintiff has taken a contradictory stand. It is submitted that plaintiff cannot be permitted to aprobate and reprobate at the same time and this CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 11 of 31 contradictory stand which has been taken over by course of time by the plaintiff, portrays the gross amount of malafide, dishonesty and ulterior motives in the minds of plaintiff. The defendant further reiterated that goods of defendant are different from that of plaintiff. It is submitted that in past, when the plaintiff itself sought the route of obtaining registration over its trademark on the basis of difference in goods, then the plaintiff in the present case cannot arbitrarily pray for injunction restraining the defendant from using the trademark 'GOLDI Namkeen' in respect of different sets of goods.
3.3 In preliminary submissions, defendants submitted that in the year 2019, defendant no.1 Mr. Manish Kumar Vashney honestly and bonafidely adopted the trade mark "GOLDI NAMKEEN" in relation to namkeen, tea and coffee and the said trade mark is adopted since the word "GOLDI" is used as a nick name of defendant No.1. Defendant no.2 M/s. K.P. Namkeen Udyog is the Sole Proprietorship firm of defendant no.1. It is further stated that the graphical representation of the defendant's mark is completely different from the label / mark of the plaintiff, wherein no consumer of an average intellect can be confused between the same. Since the adoption of said trademark GOLDI Namkeen along with its device, the defendants have been in continuous open and uninterrupted use in the market. Further, on account of superior quality of their goods, the extensive supply chain developed by defendants to ensure maximum availability of CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 12 of 31 their products throughout its consumers and traders in the market have come to associate the defendants as source of goods bearing their trademark and its device.
3.4 The defendants in para-wise reply of the plaint denied the contents of the plaint as wrong and incorrect and asserted that the Trademark Application No.367000 of plaintiff is registered only in respect of 'Spices' under Class 30 which is exclusive of the products manufactured and sold by the defendants. It is further submitted that the adoption of the word 'GOLDI' within the defendant No.1's mark has been completely honest as the mark was adopted after thorough research within the market. It is further stated that the plaintiff has filed the present suit only to cause unnecessary disruption to the defendants by conveniently choosing to change its stance after repeatedly admitting that plaintiff's marks are different from other 'Goldi/Goldiee' formatives which were cited as conflicting trade mark at the stage of prosecution of the plaintiff's own trade mark application. It is stated that the trademark of the defendants is structurally, visually and conceptually different from that of plaintiff and even goods of the defendants are exclusive and altogether different from each other. The plaintiff under the guise of its registration of its trademark is trying to monopolize over the word GOLDI/GOLDIEE which is contrary to the own admissions of plaintiff made before Ld. Registrar while obtaining the registration of its trademark. Defendants prayed that the suit filed by the CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 13 of 31 plaintiff be dismissed with cost.
4. Replication to the written statement of defendants was filed by the plaintiff reiterating the averments made in the plaint and denied the contents of the written statement. The plaintiff further submitted that the adoption of the impugned trademark / label 'GOLDI Namkeen' and / or 'GOLDY' by the defendants is dishonest, malafide and tainted since its inception and the defendants themselves pleaded that the word 'GOLDI' is generally considered as a commonly used nickname but simultaneously applied for the registration of trademark / label 'GOLDI Namkeen' under Application No.4353106 in class 30 in relation to namkeen, tea and coffee on 20.11.2019 claiming user thereby as 'proposed to be used". It is submitted that, at one point of time, the defendants pleaded that the word 'GOLDI' is a common nickname and on the other hand, the defendants filed their application for registration of the trademark / label 'GOLDI Namkeen' in Trademark Registry and hence, the corresponding plea of defendants is self contradictory and defendants have no right to get the trademark / label 'GOLDI Namkeen' under application No.4353106 in Class 30 in relation to namkeen, tea and coffee, registered. It is further submitted that the application for registration of trademark / label 'GOLDI Namkeen' is of recent month and date and the same came within the knowledge of plaintiff so plaintiff protected its marks and filed the suit to safeguard his registered and well known, registered and prior used CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 14 of 31 trademark / label 'GOLDIEE' and 'GOLDIEE' formative trademarks / label.
4.1. It is further averred that the trademark / label 'GOLDI Namkeen' and / or 'GOLDY' and / or word / mark / name of the defendant is identical with and deceptively similar to the registered and well known trademark / label 'GOLDIEE' and 'GOLDIEE' formative trademarks / label of the plaintiff in relation to the goods and business i.e. namkeen, tea and coffee and that the goods of the defendant under the trademark / label 'GOLDI Namkeen' and / or 'GOLDY' are same, allied and cognate in nature. Confusion and deception subsists till the defendant trademark / label 'GOLDI Namkeen' and / or 'GOLDY' exists as the goods of the plaintiff and that of the defendant are eatable items of human consumption.
4.2 It is also stated that the plaintiff adopted its trademarks in the year 1980 and is proprietor of their well known and registered trademark 'GOLDIEE' and 'GOLDIEE' formative trademarks in respect of spices, sauces, pickles, noodles, pasta, vermicelli, sharbat, papad, gulab jamun, tea and other allied and related goods under No.367000 in class 30. On the other hand, the defendants were found indulge in illegal business activities under trademark / label 'GOLDI' and / or 'GOLDY'. The defendants filed their trademark application for registration under No.4353106 in class 30 on 20.11.2019 as 'proposed to be used' meaning thereby that CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 15 of 31 the defendant till 20.11.2019 has no user under the said trademark / label. It is averred that plaintiff is the proprietor of their well known and registered trademark 'GOLDIEE' under No.367000 in class 30 in relation to spices and the said application was filed on 01.10.1980 which was subsequently registered. Plaintiff filed another application for registration under No.696960 in class on 02.02.1996 for trademark 'GOLDIEE' in respect of tea. Simultaneously the plaintiff filed another application under No.703442 in class 30 on 27.03.1996 for trademark 'GOLDIEE (label)' in respect of sandhani heeng and so on. Apart from it, the plaintiff has widely advertised their trademarks in various popular leading newspapers, Radio, FM, TV channels. The registered trademark / label of plaintiff holds tremendous goodwill and reputation across the country on account of prior, honest, senior and continuous user of the same since 01.10.1980 without any hindrance and interruption from any corner whatsoever. The defendant has copied the prominent, integral and essential feature of the plaintiff's trademark / label 'GOLDIEE'. Out of a whole, the defendant has copied 'GOLDI' of the plaintiff's registered trademark / label which is visually and phonetically similar. The act of the defendant dilutes the intellectual property rights of the plaintiff conferred by the registration and vested with the plaintiff on account of prior adoption, honest, senior and continuous user thereof.
5 From the pleadings of the parties, following issues were CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 16 of 31 framed on 01.02.2021 by my Ld. Predecessor:
1. Whether the plaintiff is entitled to equitable relief of permanent injunction as prayed for in para 31 (a) of the prayer clause of the plaint? OPP
2. Whether the plaintiff is entitled to the relief prayed in para 31 (b) of the prayer clause of the plaint? OPP
3. Whether the plaintiff is entitled to delivery up of all the impugned finished and unfinished materials being impugned mark / label 'GOLDI' and / or any other word / mark / label identical with and / or deceptively similar to the plaintiff's trademark 'GOLDIEE' including its blocks, labels, display board, sign boards, trade literatures etc for destruction? OPP
4. Whether the plaintiff is entitled to rendition of accounts of profits earned by the defendants by the impugned trade activities? OPP
5. Relief.
6. In order to establish its case, the plaintiff examined Sh. Nirmal Singh, AR as PW1 who has tendered his evidence by way of affidavit Ex. PW1/A and relied upon documents as under:
1. Copy of Board Resolution Mark A.
2. Representation of the Trade Mark / Label of plaintiff Ex. PW1/1 (colly)
3. Screen shot of plaintiff's web-site showing the range of product of the plaintiff under the subject matter trademark / label Ex. PW1/2 (colly)
4. Representation of impugned trademark / label of defendant Ex. PW1/3 (colly)
5. Screen shot of defendant's presence on social media page facebook Ex. PW1/4 (colly)
6. Status of plaintiff's registered trademarks registration certificates and related documents Ex. PW1/5.
7. Copy of invoice of plaintiff Mark PW1/6 (colly)
8. Copy of bill of advertisement by M/s Barasai Advertisement Limited Mark PW1/7 (Colly)
9. Copy of advertisement details of plaintiff's trademark by Reliance Broadcast Network Limited on BIG FM Mark PW1/8 (colly) CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 17 of 31
10. Copy of advertisement of plaintiff's trademark in various newspaper Mark PW1/9 (colly)
11. Readily available year wise sales of the plaintiff under the said trademark / label Mark PW1/10.
12. Plaintiff's details as available on its web-site Ex. PW1/11 (colly).
13. Copy of application of defendant bearing no.
4353106 in class 30 filed for registration of the impugned trademark / label, status thereof and examination report therein Ex. PW1/12 (colly)
14. Resolution of previous AR Sh. Surender Kumar Gupta Ex. PW-1/13 (colly).
15. Report of Local Commissioner Ex.PW1/14 (colly).
6.1 The PW-1 Sh. Nirmal Singh has also tendered an additional evidence by way of affidavit Ex.PW-1/C. He further relied upon documents as under:
1. Packaging and Leaflets bearing the trademark GOLDIEE Ex. PW1/X1 (colly)
2. Invoices and telecast certificate / details issued by the advertisers of the plaintiff pertaining to subject matter trademarks of year 2014 Ex. PW1/X2 (colly)
3. Invoice of advertisement of trademark GOLDIEE on various TV channels, FM radios along with broadcast certificates of the year 2020-21 Ex. PW1/X3.
4. Advertisement of trademark GOLDIEE in the newspapers such as Amar Ujala, Dainik Jagran, The Inquilab, Nai Duniya, Aaj etc., invoice and related documents thereto of the period 2020-21 Ex. PW1/X4.
5. Board Resolution Ex. PW-1/13 (earlier marked as Mark A)
6. Affidavit under Order XI Rule 6 of the Commercial Courts Act with respect to electronic document Ex.
PW-1/B. 6.2 PW-1 was not cross examined by the defendants despite availing numerous opportunities. It is also relevant to CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 18 of 31 mention here that in defence, the defendants did not lead any evidence rather, record suggests that defendants lastly appeared through their counsel on 08.08.2023. In these premises, right of the defendants to lead evidence was closed vide order dated 22.04.2024.
7. Since the defendants absented themselves from the proceedings, the court was constrained to hear arguments advanced by ld. Counsel for plaintiff. I have heard the arguments advanced by Ld. Counsel for the plaintiff and perused the record. My issue-wise findings are as under:
Issue no.1 and 2:
8. The onus of proving both these issues was on the plaintiff.
8.1 To prove its case, the plaintiff has examined PW-1Sh. Nirmal Singh, who tendered his evidence by way of affidavit as Ex.PW-1/A and additional affidavit Ex.PW-1/C. According to PW-1 since long, plaintiff has been continuously, commercially, openly, exclusively and to the exclusion of others, uninterruptedly and in the course of trade and as proprietor thereof, using its trade mark GOLDIE/GOLDIEE and label in relation to its goods and business and carrying on its said goods and business there under and has built up a valuable trade, goodwill and reputation there under and acquired proprietary rights therein. Ex.PW-1/5 is status of registered trademarks registration certificate and documents of CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 19 of 31 the plaintiff's trademark and label. According to PW-1, Ex.PW-1/1 (colly) and Ex.PW-1/3 (colly) are representation of the trademark / label of the plaintiff and defendant whereas Ex.PW-1/2 (colly) and Ex.PW-1/4 (colly) are screenshots of website of plaintiff and defendant. Ex.PW-1/11 (colly) is plaintiff's details as available on website and Ex.PW-1/12 (colly) is copy of application of defendant bearing No.4353106 in class 30 filed for registration of trademark / label, status thereof and examination report. Ex.PW-1/X1 is packaging and leaflets of plaintiff ; Ex.PW-1/X2 (colly) are invoices and telecast certificates / details issued by the advertisers of the plaintiff pertaining to subject matter trademarks of year 2014 ; Ex.PW-1/X3 is invoice of advertisement of trademark 'GOLDIEE' on various TV channels, FM Radios along with broadcast certificates of the year 2020-21 ; and Ex.PW-1/X4 is advertisement of trademark 'GOLDIEE' in the newspapers such as Amar Ujala, Dainik Jagran, The Inquilab, Nai Dunia, Aaj, etc. invoices and related documents for the period from 2020-21.
8.2 It transpires from the above that it is specific case of the plaintiff that plaintiff is engaged in the business of manufacturing, marketing and processing of wide range of food products including spices, sauces, noodles, pasta, tea and other allied/related goods. Plaintiff is proprietor of trademark GOLDIE and GOLDIE formative trademarks in relation to its said goods and business. Plaintiff has been using the said trademark since CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 20 of 31 1980 continuously and uninterruptedly in relation to its said goods. Its trademark is duly registered in favour of plaintiff in Class 30.
8.3. The grievance of the plaintiff is that defendants are engaged in the business of namkeen, tea, coffee (impugned goods) and have adopted and started using the trademark GOLDI as word mark and in artistic label form for their impugned goods of the defendants through social media page www.facebook.com on 30.07.2020 and thereafter, plaintiff came to know that defendant no.1 had applied the registration of impugned trademark no. 4353106 in Class 30 on 20.11.2019 for the impugned goods as proposed to be used. The plaintiff has alleged that impugned trademark GOLDI being used by defendants in relation to their impugned goods and business are identical with and deceptively similar to the plaintiff's trademark/label.
8.4 As mentioned above, the defendants neither appeared nor cross examined the plaintiff's witness, the deposition of PW-1 remained unchallenged. However, by way of their written statement, the defendants raised principally three points that the word 'GOLDI' is generally considered as nickname and word 'GOLDI Namkeen' has been honest adoption and the said mark comprises of two words GOLDI written with coloured combination of blue and yellowish golden enclosed with a purple color overshade representation below the said representation, the CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 21 of 31 word 'Namkeen' has been written in black stylized font. It was therefore submitted that trademark GOLDI Namkeen is dissimilar when compared with plaintiff's; Next, it is submitted that goods of the plaintiff under the trademark GOLDIE is not similar as identical to the goods in which, the defendants are using the trademark GOLDI Namkeen; Further, the plaintiff has taken contradictory stands in reply to the examination report in application nos. 2661972, 2776291, 2777098, 2777101, 2777096, 2776288, 2693073, 2693074, 2544498 and 2777097, the plaintiff is estopped from contending that two marks are similar to each other.
8.5 It is settled law that in infringement, if the defendant's mark is closely, visually and phonetically similar, then there is no further proof is necessary as held in Kaviraj Pandit Durga Dutt Sharma v/s Navrattana Pharmaceuticals Lab, MANU/SC/0197/ 1964.
8.6 Further, in case of Mex Switchgear Limited v/s Max Switchgear Private Limited, CS (OS)1299/2013, Hon'ble Court observed that essential features of rival marks are to be considered in determining infringement.
8.7. In the case of Oertli v/s Bowman (1957) RPC 388, at page 397, the gist of passing off action was defined by stating that it was essential to the success of any claim to pass off based on the use of given mark or get up that the plaintiff would be able to CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 22 of 31 show that disputed mark or get up has become by user in the country, distinctive of the plaintiff's goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up will be understood by the trade and the public in that country as meaning that the goods are the plaintiff's goods. It is in the nature of acquisition of a quasi-proprietary right to the exclusive use of mark or get up in relation to goods of that kind because the plaintiff having used or made it known that the mark or get up has relation to his goods. Such right is invaded by anyone using the same or deceptively similar mark, get up or name in relation to the goods not of the plaintiff. The three elements of passing off action are reputation of goods, possibility of deception and likelihood of damages to the plaintiff. In our opinion, the same principle which applies to trademark is applicable to the trade name.
8.8 The first point to be considered whether the two marks which are GOLDIE of the plaintiff and GOLDI namkeen of the defendant are deceptively similar. From the perusal of the record, it is evident that plaintiff has been able to prove that it is registered proprietor of trademark GOLDI and prima facie, the mark of the plaintiff and mark of the defendant appears to be similar, both visually as well as phonetically with GOLDI being the dominant part thereof. Mere addition of word 'Namkeen' cannot reduce the deceptive similarity with the mark of plaintiff.
CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 23 of 318.9 It is useful to refer to Subhash Chand Bansal v/s Kadims and Ors, 2012 SCC ONLINE DEL 4326 where Hon'ble Court held that mere use a prefix may not be sufficient to distinguish the two marks. The relevant para is reproduced as under:-
27. Mere use of the prefix KHADIM‟S, would not take the case out of the purview of Section 29 of the Trade Marks Act irrespective of whether the word KHADIM‟S is bigger, equal or smaller than the word KHAZANA. There is a strong possibility of customers findings the shoes and boots etc. being sold under the trademark KHADIM‟S KHAZANA in the stores of defendant no.2 and confusing the same with the trademark of the plaintiff on account of use of the word KHAZANA in the trademark of the defendants.
Moreover, a customer of average intelligence may presume that it is the product of the plaintiff which is being sold in the stores of the defendants and that is why the word KHAZANA is written on the product and/or its packaging or the customers may presume that there is some kind of trade connection between the plaintiff and defendant no.2 and that is why the word KHAZANA is being used as a part of the trademark of the defendants, in respect of identical products.
28. The impugned trademark, to my mind, is at least deceptively similar to the registered trademark of the plaintiff and since the trademark in question is being used in relation to the goods which are covered by registered trademark of the plaintiff, a case of infringement under Section 29(1) of the Trade Marks Act is clearly made out. Even if I proceed on the assumption that impugned trademark is similar though not deceptively similar to the registered trademark of the plaintiff, it was still constitutes infringement within the meaning of Section 29(2) of the said Act since it is being used in CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 24 of 31 respect of the same products which are covered by the plaintiff ‟s registered trademark and as such is likely to cause confusion in the minds of the consumers or they may perceive the impugned trademark to be associated with the registered trademark of the plaintiff.
8.10. The other ground of defence raised by the defendants in the written statement is that goods of the defendants are different, therefore, there is no possibility of confusion being caused due to use of impugned mark by the defendants. In the case of FDC Limited v/s Docsuggest Healthcare, 2017 SCC Online Del 638 , the Hon'ble High Court dealth with the test of determining allied/cognate goods or services, the relevant paras are reproduced as under:-
51...............Allied/cognate goods or services, as understood from the material referred to below, are those goods/services which are not identical, but can be said to be related or similar in nature (See McCarthy on Trademarks and Unfair Competition, Fourth Edition, Vol
5). The Shorter Oxford English Dictionary on Historical Principles Fifth Edition 2002, Vol. 1. defines the term "Allied" as "connected by nature or qualities; having affinity" and the term "Cognate" as "akin in origin, nature or quality". Reference may also be made to New Webster's Dictionary and Thesaurus of the English Language, 1992 which defines "Allied" as "relating in subject or kind" and "Cognate" as "1. adj. having a common ancestor or origin|| (of languages or words) having a common source or root|| (of subjects etc.) related, naturally grouped together.".
Cognate goods/ services can be described, inter alia, as goods or services which have a trade connection - as in glucose and biscuits (See Corn CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 25 of 31 Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC
142) or which are intended for the same class of customers - as in television picture tubes (parts thereof, video tapes and cassettes and television tuners etc.) and televisions, tuners and T.V. Kits (See Prakash Industries Ltd. v. Rajan Enterprises (1994) 14 PTC 31), or are complementary to each other - as in toothbrushes and toothpaste (See HM Sariya v. Ajanta India Ltd. (2006) 33 PTC 4). xxxxxxxxx
53. Now, to determine whether the defendants' services are allied and cognate to plaintiff's goods, it is essential to first discuss the law on similarity in goods/services in trademarks and its development so far.
While the Act is silent on the factors to be considered for similarity in goods/services, the Courts in India -relying upon international cases and literature, have consolidated the guiding principles and factors found relevant in ascertaining the similarity between goods/services. They are as follows:
1. In Assam Roofing Ltd. v. JSB Cement LLP 2015 SCC OnLine Cal 6581, the learned Single Judge in Para 80 observes- "The test of similarity of goods is looked at from a business and commercial point of view. The nature and composition of the goods, the respective uses of the articles and the trade channels through which they are brought and sold all go into consideration in this context". (emphasis supplied)
2. In Kerly's Law of Trade Marks and Trade Names, 15 Edition 2011, the learned Author in Para 9-073 has stated as under : -
"As para.23 of the decision in Canon v. MQM (1999) R.P.C. 117 makes clear, all factors relating to the goods or services themselves must be taken into account. These include, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. It is clear that goods in different classes may nevertheless be considered similar, and likewise that goods or services within the same class may be found to not be similar."
(emphasis supplied) CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 26 of 31
3. In Para 9-075, the Learned Author has mentioned some illustrations on similar goods or services including under Para 9- 078 ""Services offered by Neutral Citation Number:
2023:DHC:2949 beauty salons; solarium services" similar to "business assistance with beauty preparations, sales" and "beauty preparations, perfumery, cosmetics dietetic substances"". The said illustration sources from the case of Beauty Shop Application v. Opposition of Evora BV [1999] E.T.M.R. 20, wherein the Office for Harmonization in the Internal Market (Trade Marks and Designs) also known as the Opposition Division held the defendant's services to be similar to the plaintiff's services and goods by observing that "the goods and services of the conflicting marks could be offered together and be intended for the same public."
4. In British Sugar Plc. v. James Robertson & Sons Ltd. [1996] R.P.C. 281 at 294-297, relied upon in Balkrishna Hatcheries v.
Nandos International Ltd. 2007 SCC OnLine Bom 449 and Advance Magazine Publishers, Inc. v. Just Lifestyle Pvt.Ltd. 2016 SCC OnLine Bom 8417, the court laid down the objective test for similarity of description of goods/services as follows:
(a) "The uses of the respective goods or services;
(b) The users of the respective goods or services;
(c) The physical nature of the goods or acts of service;
(d) The trade channels through which goods or services reach the market;
(e) In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves;
and
(f) The extent to which the respective goods and services are in competition with each other : that inquiry may take into account how those in trade classify goods, for instance whether market research companies, who of course act Neutral Citation Number:
2023:DHC:2949 for industry, put goods or services in the same or different sectors."
5. Kerly 15 ed. while relying upon Canon (supra), further observes in Para 9-065 that the element of distinctive character of a trademark and its reputation is also viewed when determining similarity between the goods and services and whether such similarity is sufficient to give rise to the likelihood of confusion."CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 27 of 31
(Emphasis supplied)
9. In the case in hand, there is no doubt that plaintiff deals with sales of spices while the defendants deal with namkeen, tea and coffee. It cannot be lost sight that goods of both plaintiff and defendants would normally sold at the grocery shop i.e. same supply chain to the same customers. Therefore, considering that both goods of plaintiff are in the category of the food items and having the same supply chain to the same customers, there is likely to cause confusion in the minds of average consumer and that the customers may consider that goods owned by the defendants are as emanating from the plaintiff. Further, it needs to be noted that defendants themselves have sought to claim trade proprietory right in GOLDI Namkeen, it does not lie in their mouth to say that mark GOLDI is a commonly used word and highlights the lack of merit of the defendants' claim of distinctiveness between the marks.
10. Now, adverting to the other point raised by the defendants in the written statement that contradictory stand has been taken by the plaintiff in reply to the examination report in application nos. 2661972, 2776291, 2777098, 2777101, 2777096, 2776288, 2693073, 2693074, 2544498 and 2777097 is estopped from contending that two marks are similar to each other, the defendants did not lead any evidence to prove the defence. There is nothing on record to suggest that defendants are prior user of the trademark GOLDI Namkeen than that of plaintiff. Since the CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 28 of 31 plaintiff used the trademark GOLDI since long back and prior in time, the plaintiff is able to prove by way of preponderence of probabilities that the plaintiff is prior user of trademark GOLDI than that of the defendants, thus a case of infringement of trademark and passing off is made out against the defendants. Morever, a report submitted by Local Commissioner would reveal that goods bearing trademark / label 'GOLDI' were found at the premises of the defendants.
11. As mentioned above, the defendants did not appear before the Court to cross-examine plaintiff's witness / PW-1 and to address arguments for the reasons best known to them. The defendants also did not lead any evidence in their defence. The plaintiff in the form of oral coupled with documentary evidence has successfully established that plaintiff has exclusive right to use trademark and its label in relation to its business. The Local Commissioner's Report as discussed above further reveals that goods bearing the deceptively similar trademark of the plaintiff were found at the premises of the defendants fully establishing that defendants are passing off the goods as that of plaintiffs causing not only loss of profit but also likely to create the impression in the mind of the customers for the goods being related to that of plaintiff's and there is every likelihood of same deceiving unwary customers. In the absence of any rebuttal and considering these facts and circumstances, the plaintiff is entitled to the permanent decree of injunction in terms of Prayers (a) & (b) CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 29 of 31 of Para 31 of the plaint. Accordingly issue no.1 and 2 is decided in favour of plaintiff and against the defendants.
Issue No.3 :-
12 In view of findings given in Issue no.1 and 2, plaintiff is also held entitled to relief of delivery up of the goods for the purpose of destroying the same, which were seized by the Local Commissioner at the time of inspection at the premises of defendant no.2, this issue is accordingly disposed off.
Issue No. 4:-
13 So far as relief of rendition of account is concerned, as noticed above, plaintiff has proved seizure of GOLDI packed material finished bearing the deceptively similar mark of the plaintiff from the premises of defendant no.2. No account books could be recovered from the premises of defendant no.2. This defendants of their own did not produce any account books. In the given situation, Court finds that the plaintiff company is entitled to nominal damages on account of violation of trade mark rights of the plaintiff company. Keeping in view, all the facts and circumstances, the number of the items seized from the premises of the defendants, court holds that plaintiff is entitled to a sum of Rs. 50,000/- from defendants by way of damages. This issue is accordingly adjudicated in favour of plaintiff.
CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 30 of 31Relief 14 As a result of the foregoing findings, suit of plaintiff is hereby decreed in its favour and against defendants with cost. Decree of permanent injunction is hereby passed in favour of plaintiff and against defendants in terms of the prayer 31 (a) &
(b) of the suit. Suit of the plaintiff is also decreed for relief of delivery up, and defendants are directed to deliver to the plaintiff within 30 days from today, the goods with infringed trade mark and label, seized by the local commissioner from the premises of defendants, during inspection, for the purpose of their destruction in the presence of counsel for the plaintiff company. Suit is also decreed in favour of the plaintiff and against the defendants for recovery of nominal damages to the tune of Rs. 50,000/- along with costs.
15 Decree sheet be prepared.
16 File be consigned to record room. Digitally signed by VINEETA VINEETA GOYAL GOYAL Date:
2025.03.22 17:16:57 +0530 Pronounced in the open Court (VINEETA GOYAL) on this 22.03.2025 District Judge (Commercial-03) Patiala House, New Delhi CS (Comm) NO. 378/2020 M/s. Shubham Goldiee Masale P. Ltd. Vs. Manish Kumar & Anr. Page 31 of 31