Delhi District Court
Zino Davidoff Sa vs Ramsons Perfumes Pvt. Ltd. And Anr on 18 May, 2024
IN THE COURT OF AMIT KUMAR : DISTRICT JUDGE
(COMMERCIAL)-08
TIS HAZARI COURTS, CENTRAL: DELHI
(Commercial Case No. 2121/2019 )
CNR No. DLCT01-008596-2019
ZINO DAVIDOFF S A
RUE FAUCIGNY 5,
CH-1700 FRIBOURG,
SWITZERLAND
.....PLAINTIFF
VS
1. RAMSONS PERFUMES PVT. LTD.
A-178, MIDC PHASE-1,
KHAMBALPADA, DOMBIVALI (E)
DIST THANE-421203
2. JAI SHREE BALAJI INDUSTRIES
122/48 MICENTERAL HOPE TOWN,
CENTERAL HOPE TOWN, SELAQUI,
DEHRADUN-248001, UTTARAKHAND
....DEFENDANTS
Date of institution of case : 03.07.2019
Date of arguments : 19.04.2024
Date of pronouncement of judgment : 18.05.2024
JUDGMENT:
1. Present is a suit seeking relief of permanent injunction restraining infringement of the trademark, passing off, unfair trade competition, damages, rendition of account, delivery up etc. on the averments that plaintiff is a corporation organized under the laws of Switzerland and manufacturers various products under the trademark DAVIDOFF, which includes coffee and coffee related products, fragrances, eye wear, watches, cuff links, -1- leather goods etc. In the course of business, plaintiff uses number of distinctive brands such as Cool Water, Champion, Hot Water Horizon, The Game etc. alongwith flagship brand Davidoff. The plaintiff adopted the mark "Davidoff Champion" in the year 2009 which has been extensively used since 2010. The word "Champion" adopted in relation to perfume and fragrances is highly distinctive, being an arbitrary mark. The plaintiff's product Davidoff Champion is marketed in distinctive dumbbell shaped bottle and the distinctive dumbbell shape bottle is also a registered trademark of the plaintiff namely Davidoff Champion 3D. It is claimed that the plaintiff is registered proprietor of Mark "Davidoff Champion" and "Davidoff Champion 3D" in Class 3 since 2009 and 2011 respectively and is owner of several world wide registration of Davidoff Champion in various jurisdiction worldwide.
2. It is claimed that in October, 2018, plaintiff came across defendant's no. 1 trademark application for Mark "Ramsons Champion" in class 3 and plaintiff was shocked to know that defendants are dealing with product Ramsons Bravo with perfume sold in an identical dumbbell shape bottle as plaintiff's Davidoff Champion product. A letter dated 28.11.2018 was written to defendant no. 1 asking them to cease using the word Champion and also stop manufacturing with product Ramsons Bravo in identical dumbbell shape bottle. The defendants sent a reply dated 08.12.2018 seeking six months time to cease dealing with infringing Ramsons Bravo product in identical dumbbell shape bottle. Same was not acceptable and another letter dated 17.01.2019 was sent to the defendants. The plaintiff also filed its opposition with the Trademark Registry against the application -2- for Ramsons Champion mark. Since no further response was received, the present suit has been filed against the defendants seeking permanent injunction, delivery up, damages etc.
3. Common written statement was filed on behalf of both the defendants. It was stated that Champion is a laudatory word and is protected U/s 35 of the Trademark Act and the said expression is used bonafidely by the defendants of the character and quality of their goods. Plaintiff cannot claim any trademark rights in the word Champion as the same is incapable of being used as a trademark being laudatory and generic. The same directly refers to the quality of goods. The plaintiff has concealed relevant facts in the plaint and has malafidely not filed the counter statement filed by the defendant no. 1 before the Trademark Registry and misled this court. The plaint is liable to be dismissed on account of principles of estoppel. The plaintiff deliberately concealed that during the process of obtaining registration of trademark Davidoff Champion, the plaintiff made following averment:
"In addition, we wish to submit that champion is a laudatory word and no entity can claim exclusive rights over the same"
4. It is stated that having taken this stand before the Trademark Registry, the plaintiff cannot now make a U-turn and seek exclusivity in the word Champion as such. It was stated that suit is liable to be dismissed in terms of Section 17 of the Trademark Act. The registration confers on the plaintiff the exclusive right to use the trademark as a whole and not in parts. The stand of the plaintiff that it has statutory right to restrain the use of any mark with Champion is highly misconceived. It was claimed that the defendants use of dumbbell shape perfume was -3- simply to imply that perfume under the mark Ramsons Bravo were appropriate for brave and strong people who use dumbbell to make their body and such use is protected U/s 35 of the Trademark Act. The territorial jurisdiction of this court was also challenged.
5. On facts, it was stated that defendant no. 1 company was incorporated in 2010 and prior to that, its predecessors M/s. Ramsons bonafidely adopted the trade name and trademark Ramsons in 1986 and defendant no. 1 company took over the business activities of M/s. Ramsons by way of transfer deed dated 01.02.2010. In 2010, defendant no. 1 filed application for registration of trademark Ramsons in class 3 and the said trademark was registered and defendant no. 1 continuous to be the proprietor of the trademark "Ramsons". In 2015, defendant no. 1 honestly and bonafidely adopted the trademark Ramsons Champion in reference to its goods denoting that the goods of defendant no.1 were best and winners/champions would use such goods. Defendant no. 1 filed application for protection of its mark Ramsons Champion (label), which was published in the trademark journal dated 13.08.2018. This application has been wrongly opposed by the plaintiff and the opposition proceedings are pending. The defendants adopted another mark Ramsons Bravo and recently started marketing goods under the said mark under the dumbbell shape perfume bottle. It was therefore stated that suit is without cause of action and is liable to be dismissed.
6. In the replication, the contents of the plaint were reiterated.
7. On the pleading of the parties, following issues were framed on 27.11.2021:
-4-1. Whether this court has territorial jurisdiction under Section 135 of the Trademarks Act, 1999? OPP
2. Whether the word CHAMPION is a laudatory word, referring to the character and quality of the goods, and not capable of protection under the provision of Section 35 of the Trademarks Act, 1999? (OPD and OPP as per Order dated 08.03.2022)
3. Whether the suit filed by the plaintiff is barred on the principles of estoppel in view of the stand taken by it at the time of registration of the trademark regarding disclaimer of exclusive rights in the word CHAMPION?
OPD
4. Whether the word CHAMPION in the composite trademark 'DAVIDOFF CHAMPION' is not entitled to a separate protection in view of Section 17 of the Trademarks Act, 1999? OPD
5. Whether the plaintiff has concealed the material facts in the suit, and if so, what is the effect thereof? OPD
6. Whether the word 'CHAMPION' is common to trade or publici juris? OPD
7. Whether the defendants have infringed the plaintiff registered trademark 'DAVIDOFF CHAMPION'? OPP
8. Whether under its trademark 'RAMSONS BRAVO' and 'RAMSON CHAMPION' the defendants have passed off their goods as if they originate from the plaintiff? OPP
9. Whether the plaintiff is entitled to damages, and if so, in what quantum or in the alternative whether the plaintiff is entitled to rendition of accounts of profit earned by the defendants? OPP
10. Whether the plaintiff is entitled to the relief of permanent injunction, and if so, on what terms? OPP
11. Whether the plaintiff is entitled to delivery up or destruction of the infringing material? OPP -5-
12. Who is entitled to the costs, against whom and in what quantum? Onus on parties.
13. Relief
8. The plaintiff to prove its case examined its AR Mr. Rakesh Chhabra as PW1 and one Mr. Nigel AJL Smith as PW2 whereas the defendant examined its director Mr. M.S. Pandey as the sole witness.
9. I have heard the arguments and my issue wise findings are as under:
ISSUE NO. 1:
10. The onus of proving this issue was on the plaintiff. The defendant has challenged the territorial jurisdiction of this court. It was stated for the defendants in the written statement that invocation of the jurisdiction on the basis of alleged availability of the plaintiff's goods by way of online portals is totally misconceived. On the other hand Ld. Counsel for the plaintiff argued that goods of defendant are available in jurisdiction of this court and therefore this court has jurisdiction.
11. In this regard, cross examination of DW1 is relevant. DW1 in the cross examination stated that defendants sell their products on-line as well and same are available on commerce website like Amazon, Flipkart etc. as well as on the website of the defendants www.ramsonsperfumes.com. The goods available on-line can be purchased by anyone from anywhere and it cannot be said that the goods of the plaintiff and defendants cannot be purchased in the jurisdiction of this court. The shops nowadays have been replaced by virtual shops because of technology and it cannot be said that plaintiff and defendant do not carry their business in jurisdiction of this court. Thus it can be said that plaintiff and -6- defendants are carrying on business within the jurisdiction of this court and this court has territorial jurisdiction to try and decide the present matter. Reliance in this regard can be placed on the judgment of our own High Court passed in World Wrestling Entertainment INC Vs. Reshma Collection, MANU/DE/2597/2014. In facts, this issue is decided in favour of the plaintiff.
ISSUE NO. 2:
12. The onus of proving this issue was on the parties. It was submitted by Ld. Counsel for the plaintiff that the word Champion has no connection to fragrances and perfumes and to be a laudatory word, the word should refer to the praise of the product. It was argued that Champion in no manner refer to perfume and this word has been arbitrarily selected by plaintiff for its perfumes. On the other hand, Ld. Counsel for the defendant argued that Champion is a laudatory word denoting the winner and is extremely common to perfumes and fragrances and directly refers to the quality of the goods and otherwise is a not distinctive word and therefore, plaintiff cannot have monopoly over the word Champion which has a dictionary meaning and the law does not permit the plaintiff to claim monopoly over a word, which is a public word. Both the counsels have relied upon plethora of judgments on this aspect.
FINDINGS:
13. Whether the word Champion is a laudatory word or not has to be seen in the context of the fragrances and perfumes. Whether the word signifies the character and quality of the good for which it is used has to be seen. There is no doubt to the fact that Champion is a dictionary word and cannot be monopolized.
-7-The word Champion means a winner. Relevant in this regard is the disclaimer made by plaintiff before trademark registry. The plaintiff itself claimed there that Champion is a laudatory word and cannot be monopolized. It is descriptive of the product fragrance/perfume in the sense that it describes the perfume as winner in the class. The word "Champion" can be equated with the words like "Imperial" and "Pride" used in the context of liquor as argued by Ld. Counsel for the defendant. The word Imperial, Pride, Officer's Choice used in the context of liquor are laudatory words signifying about the quality of the product and the word Champion used in the context of perfume suggest about the quality of perfume being winner/patron/victor/excellent. The word Champion used in the context of perfume or for that matter for any product refers to the winner in that class/product. It is not like word Apple used for computers or Mango for apparels or Crocs for footwear, where there is no reference/relevance to the product. There is difference between a descriptive and arbitrary mark. Though it is correct that no one buys a perfume for the reason that the perfume will make that person a winner, but certainly can presume that this product is champion in its class. That's why plaintiff at the time of registration mentioned that it is a laudatory word and no one can claim proprietary rights on it. Plaintiff can not be permitted to take contrary stand now.
14. Put in the other words, the word Champion is laudatory word used in the context of a particular product be it perfume or any product. Champion is a laudatory word in the context of perfumes. The plaintiff cannot be permitted to blow hot and cold in the same breath. Therefore, it is held that the word Champion -8- is a laudatory word in the context of perfumes, and the issue is decided accordingly.
ISSUE NO. 3 & 4:
15. Both the issues are interconnected and are taken up together. The onus of proving both the issues was on the defendant. Ld. Counsel for the defendant argued that the plaintiff at the time of registration of its trademark Davidoff Champion gave a disclaimer before the Trademark Registry that word Champion is a laudatory word and no entity can claim exclusive right over the same and in view of this disclaimer, the plaintiff is stopped from taking the stand that plaintiff is entitled to protect even the word Champion in its trademark Davidoff Champion. It was also argued that Davidoff Champion is a composite trademark and the word Champion is not entitled to protection in view of Section 17 of the Trademark Act.
16. Ld. Counsel for the plaintiff on the other hand argued that plaintiff is entitled to protection U/s 17 of the Act as the word Champion has acquired distinctiveness by long use in relation to its perfume and therefore, even if there was a disclaimer given by the plaintiff at the time of registration of this trademark, the plaintiff is entitled to protection.
FINDINGS:
17. The plaintiff's registration of trademark Davidoff Champion in Class 3 was obtained vide certificate Ex. PW2/6. It is a word mark "Davidoff Champion" and the plaintiff itself gave a disclaimer that it is a laudatory word and no entity can claim exclusive right over the same. It was for the plaintiff to prove that this mark has acquired sufficiently distinctive character and plaintiff is entitled even to protect word Champion -9- alone. The use of the mark does not automatically translate into distinctiveness. It is to be proved during trial that the same has. Let us see the evidence adduced by the plaintiff to prove whether the mark "Davidoff Champion" has acquired sufficiently distinctive character. PW1 in his evidence proved on record only his power of attorney, the notices exchanged between the parties and the photograph of their products. PW2 on the other hand proved only some extracts from the website. The invoices, the newspaper advertisement, the magazines, sale of Davidoff Champion product, google search report were not proved at all as no certificate U/s 65 B of the Indian Evidence Act was filed. The plaintiff was supposed to prove that its product Davidoff Champion has acquired distinctiveness in the trade and is entitled to protection. Though not, but even if for the sake of arguments, the sales turnover reflected by the plaintiff in its documents is considered to be proved, even then Ex. PW2/3 (colly), shows that the plaintiff's sales in respect of the product "Davidoff Champion" is of only three bottles of 50 ml on 31.07.2015, three bottles of 50 ml on 29.02.2016, two bottles of 90 ml and one bottle of 50 ml on 24.08.2017 and four bottles of 90 ml and six bottles of 50 ml on 03.04.2018. With this meager quantity of sale, which otherwise is not proved in accordance to law, the plaintiff has failed to prove that its product Davidoff Champion has acquired distinctive character in the trade.
18. Some lengthy arguments were made by both the sides whether the word Champion is generic or descriptive. The word generic ordinary means that it has character of or belongs to a class whereas the word descriptive means that it describes the product or the qualities of the product. Whether a word is -10- descriptive or generic depends upon case to case. A word can be generic as well as descriptive. The word Champion by itself means winner and in the present case, it may refer that the product Davidoff Champion is a winner product and can also be descriptive of the product. What has to be kept in mind whether the mark has achieved distinctiveness in view of the evidence placed on record as to whether it reminds the consumer of the trade origin. Differently said does the trade origin get related to the propounder of the mark and none other. As per evidence led in the matter and documents proved on record, the plaintiff has failed to prove that its product has acquired distinctiveness to the extent that whoever hear the word "Champion" in relation to perfume will refer to Davidoff Champion only.
19. Under the present law of Section 17 of the act, a disclaimed mark may become distinctive if it acquires distinctiveness by long use for those in relation to the class, but in the present case, the plaintiff has miserably failed to prove the same. On the other hand, the document Ex. DW1/13 (colly) proved by the defendant shows that the word "Champion" is extensively used in class 3 products and there are several registered trademarks using the word Champion and one of them is also related to perfumes. The letter issued by the Trademark Registry to the plaintiff at the time of trademark application shows that Hindustan Lever Ltd. has registered the word Champion vide application dated 14.09.1989 in class 3 in respect of perfumery as well. Further the word Champion is registered for washing powder by Pushpawati, Champion soap by Damodar Aggarwal, Champion by Bengal Surgical Ltd., Champion Super White by Dau Dayal, Champion by K.N.V. Prasad, Champion by -11- S. Aranganathan. All these are registered in class 3 and it was only after considering all these already registered marks, the plaintiff issued the disclaimer that word "Champion" is a laudatory word and no entity can claim exclusive right over the same. In view of the same, the plaintiff is barred by principle of estoppel from taking a stand contrary to its stand taken.
20. As far as the composite trademark Davidoff Champion is concerned, the jurisprudence in respect of the composite marks has adopted the rule of anti disection, which means that the entire mark has to be read and it cannot be bisected to see which is the dominant mark. Though a mark has to be considered in entirety but it in some cases courts have considered the dominant part of the composite mark. In the present case, counsel for the plaintiff argued that the word "Champion" is the dominant mark of the plaintiff's trademark and is entitled to protection. Plaint shows that the plaintiff has claimed that under its flagship brand Davidoff, the plaintiff has number of distinctive brands such as Cool Water, Champion, The Game, Hot Water, Horizon. In all these products, the plaintiff uses the word Davidoff before the distinctive brand name. Even the witness PW2 admitted in the cross examination that plaintiff has never used the word Champion standalone in respect of its goods. It clearly reflects that the dominant word in the product is "Davidoff" and not the word "Champion". Even the extracts of the website Ex. PW2/2 proved by the plaintiff shows that the plaintiff always use the word Davidoff with its distinctive brands like Run Wild, Cool Water, Coffee etc. It clearly shows that Champion is not the dominant word and even by applying this rule, it cannot be said that plaintiff is entitled to protection of Section 17 of the -12- Trademark Act and as such the word Champion alone is not entitled to protection U/s 17 of the Act. Both the issues are decided against the plaintiff.
ISSUE NO. 5:
21. The onus of proving this issue was on the defendant. It was argued by Ld. Counsel for the defendant that plaintiff has concealed material facts of the counter statement filed by the defendant no. 1 before the Registrar of Trademark in order to conceal the defence of the defendants and mislead this court into passing an ex parte injunction order. Counsel for the plaintiff on the other hand argued that there is no concealment as after the grant of trademark in favour of the plaintiff, the counter statement filed by the defendants looses its significance and further that even if it is held that there was concealment, the same is not material to dislodge the suit.
FINDINGS:
22. In this regard, it is sufficient to mention that every concealment cannot be termed as an act of concealment to dislodge the plaintiff from the suit. It has to be seen whether the concealment of the fact would effect the outcome of the proceedings in the final analysis. Even if it is presumed that the plaintiff deliberately concealed the counter statement filed by the defendant no. 1 before the Trademark Registry, the same would not have effected the outcome of this suit. The issue, therefore, is decided in favour of the plaintiff.
ISSUE NO. 6:
23. The onus of proving this issue was on the defendant. The defendant has raised objection that the word Champion is common to the trade. As already discussed while giving my -13- findings on issue no. 3 and 4 that there several registrations in class 3 for the word "Champion" and one by Hindustan Lever Ltd. is also in respect of perfumes. In view of the evidence led by the parties on record, it is proved that the word Champion is common to the trade and therefore, this issue is decided in favour of the defendant. The disclaimer given by plaintiff further support this finding.
ISSUE NO. 7:
24. The onus of proving this issue was on the plaintiff. On this aspect, it is important to mention the argument raised by defendant regarding authority of PW1 to file this case and depose. It was argued at length on behalf of the defendant that PW1 had no authority to file this case nor to depose on behalf of the plaintiff and therefore, his testimony cannot be read and further PW2 failed to prove any documents on record and therefore, plaintiff has failed to prove its suit. Ld. Counsel for the plaintiff on the other hand argued that the issue of authority of PW1 to institute this case and depose was never raised by the defendant at the time of framing of issues and at this stage, it cannot be re-agitated and otherwise also, there is a presumption U/s 85 of the Indian Evidence Act in respect of the power of attorney executed in favour of PW1 and therefore, testimony of PW1 has to be read.
25. Record shows that the defendant in the written statement raise the issue of the valid authority of PW1 to file this case but this issue was not pressed at the time of framing of issues on 27.11.2021. Record further shows that plaintiff filed an application for correction in the issues in respect of onus of issue no. 1 and 2 and this application was contested and decided on -14- 08.03.2022 but even then the defendant did not press for the issue regarding authority of PW1 and now cannot argue that PW1 had no authority to file this case. Record further shows that written statement on behalf of the defendant was filed by its director but there is no authority in favour of the director to file the written statement or to appear as a witness. Only because DW1 is the director of the defendant, the same does not ipso facto gives any authority to DW1 to file the written statement or to depose. In facts, it cannot be said that PW1 has no authority to depose.
26. Coming to the merits of the issue, it was for the plaintiff to prove that defendant has infringed the plaintiff's trademark Davidoff Champion. As already discussed, the plaintiff has failed to prove that it has exclusive right to use the word Champion. In this regard, the observations of Hon'ble Delhi High court in the case of Rich Products Corporation and Anr. Vs. Indo Nippon Food Ltd. passed in CS (OS) No. 246/2004 dated 19.02.2010 in para 33 and 34 are relevant and the same are reproduced below herein for ready reference:
"33. A conjoint and harmonious reading of the aforesaid provisions of the Trade Marks Act is indicative of the following broad scheme of the Trade Marks Act;
(i) Statutory rights and remedies with respect to an action for infringement of a registered trade mark are governed strictly by the provisions of the Trade Marks Act.
(ii) Notwithstanding the rights and remedies provided under the Trade Marks Act, the Act itself saves common law right of passing off. [See sub-section (2) of Section 27].
(iii) The rights conferred on a proprietor of a registered trade mark even though exclusive in nature, are however, subject to the conditions and limitations set out at the time of registration.
(iv) A trade mark registration confers on the proprietor exclusive right to use the trade mark as a "whole".
(v) There is no exclusivity conferred on the registered proprietor if he chooses to use only „part€ of the whole of such registered mark and such "part" is neither a subject matter of the separate application for registration filed with Registrar of Trade Marks nor is it registered separately.
-15-(vi) A registered proprietor may be able to protect a "part" of a registered trade mark if he is able to show it is not common to trade or that it has obtained a "distinctive character".
(vii) The presumption of validity of a registered mark under Section 31 of the Trade Marks Act (even though rebuttable) applies to "whole" or entirety of mark. The presumption of validity does not ipso facto get attracted to a part of the registered mark.
(viii) If a mark is registered it matters little whether the infringing mark is relatable to the goods in issue once it is held to be identical or deceptively similar to the registered mark, as long as the registered mark has acquired a reputation in India and the use of the infringing mark is made by the infringer without due cause only to take "unfair advantage" and/or in a manner which results in detriment to the distinctive character or repute of the registered trade mark.
(ix) The defendant, can resort to the defence of honest use in accordance with the practices of the industry or commercial trade as long as the use is not such which takes either unfair advantage or is detrimental to the distinctive character or repute of the registered mark.
(x) A registered mark is not infringed where the use of the registered mark is only to indicate the kind, quality, quantity, value, intended purpose or geographical origin or even the time of production of goods and services.
(xi) A defendant can also adopt the defence of a prior continuous user from a date prior to the use or registration of the registered mark.
(xii) The defendant is also not prevented from using the registered mark provided it is used in a bonafide manner by a person as his own name, place of business or as a name or place of business of his predecessors in business; or the registered mark is used genuinely to describe the character and quality of the goods.
(xiii) Lastly, if a registered mark contains within it words, which is, a name or description of an article or substance or services then the right in it ceases the moment the use becomes well known€ and established. It is important to note that the test of well known and established use as provided in section 36 of the Trade Marks Act in respect of a name of description of an article, which forms part of a trade mark, is not confined to the use in the country or by the defendant in a given case.
34. It is now well-settled that in determining whether or not an infringing mark is deceptively or confusingly similar to a registered mark the courts usually follow the following parameters:
(i) they look for similarities rather than dissimilarity. [see Cadila Healthcare (supra)]
(ii) the similarities are not judged by keeping the registered and the infringing mark alongside [see Parle Products (supra)]
(iii) the test of fading memory of a consumer is applied.-16-
(iv) in the absence of cogent evidence the presiding officer, i.e., the Judge may resort to an ocular test with regard to the similarities in the registered trade mark and the infringing mark."
27. Section 17 of the Act gives right to the proprietor to use the trademark as a whole. Sub section (2) is very clear that where a trademark contains a part, which is not the subject matter of a separate application or which is not separately registered or which contains any matter common to trade or otherwise is of non distinctiveness character, the same does not confer any exclusive right in that matter, which forms only a part of the whole trademark. The right to exclusive use is available, subject to limitations and conditions applied to it.
28. In the present case, the plaintiff has claimed that defendant has infringed its trademark Davidoff Champion but as already discussed, the plaintiff gave disclaimer regarding the word Champion at the time of registration of its trademark in respect of word Champion. As already mentioned, the word Champion is common to trade and the plaintiff has failed to prove that it has acquired any distinctiveness in respect of word Champion over a period of time. There is no evidence on record in this regard. The defendant has lodged its product Ramsons Champion and the same is in different packaging, bottle, colour combination etc. It cannot be said that defendant has infringed the plaintiff product. The issue is decided against the plaintiff.
ISSUE NO. 8:
29. The onus of proving this issue was on the plaintiff. As already said, the defendant's product Ramsons Champion has not infringed the plaintiff's product nor any case of passing off is made out as far as the product Ramsons Champion is concerned.
-17-Record shows that plaintiff also has a trademark in respect of the bottle used by the plaintiff for word mark Davidoff Champion 3D. It is a dumbbell shape bottle having unique colour combination, design and printing. The bottle of the product of the defendant namely Ramsons Bravo is a replica of the bottle of the plaintiff's product Davidoff Champion. The two bottles were produced in the court and their photographs, which are undisputed, have also been filed on record. Further DW1 in his cross examination did not give any satisfying reply in respect of use of this bottle for the product Ramsons Bravo. The witness stated that his brothers visited China and there they found that dumbbell design bottles are freely available and the colour scheme of the bottle was decided by the defendant company and they also decided to mention the word e90ml 3.0 FLOZ on the cap of the bottle. The two dots and the circle embossed on the cap of the bottle were also decided by the defendant company. It cannot be a co incidence that the dumbbell shape bottle was chosen from the market in China and then its colour scheme was decided by the defendant company alongwith printing on the bottle, which is exactly as that of the plaintiff. It appears that the defendant tried to pass off their product Ramsons Bravo as that of the plaintiff's product Daviodoff Champion. The law on this subject has been laid down by Hon'ble Supreme Court in the case of Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73. The Hon'ble Supreme Court laid down certain guidelines for deciding the issue of deceptive similarity.
1) The nature of marks (word/label/composite marks)
2) Degree of similarity between the competing marks, including phonetic and visual similarity.
-18- 3) Nature of disputed goods
4) Demography of the area where goods are used and
class of purchasers
5) Mode of purchasing the goods
6) Similarity in the goods
30. In the present case, the packaging of the defendant's product Ramsons Bravo is just replica of the plaintiff's product. Even if the defendants are not using the actual trademark of the plaintiff, the get up of the defendant's product is such that makes a clear case of passing off. The defendant has adopted all the essential features of the bottle of the plaintiff's product Davidoff Champion i.e. the get up, the packing, the writing and the marks on the bottle. The two products are visually similar and it is a case of clear imitation by the defendant of the bottle of the plaintiff. There is no dispute that the consumer of the product does not memorize the features of the product to the core. The consumer has a very vague or general impression of the product and can be confused upon encountering a similar product in the market and is likely to be confused. There is no dispute that the price of the two products is different but the same is not a criteria to hold that there is no passing off. A new consumer may buy the product of the defendant thinking it to be product of plaintiff and that too available at a cheaper price. The defendants have not come out with plausible justification for adopting the dumbbell shape bottle. The argument that dumbbell shape has been used only because brave people make their body with dumbbells does not appear to be valid reason. The defendant in these facts have clearly passed off their product Ramsons Bravo by using the -19- identical bottle as that of the plaintiff's product Davidoff Champion. The issue is decided in favour of the plaintiff. ISSUE NO. 9:
31. The onus of proving this issue was on the plaintiff. Ld. Counsel for the defendant submitted that the defendant has since stopped producing this product Ramsons Bravo and even in reply to the notice issued by the plaintiff, the defendant clearly mentioned that defendant agrees to discontinue the use of bottle design of the product Ramsons Bravo after a period of six months to dispose off the existing stocks and therefore, no damages can be claimed by the plaintiff. In this regard, the report of the Local Commissioner is relevant. The Local Commissioner during his visit found 15 cartons containing 72 bottles each of Ramsons Bravo at the factory of the defendant at Dehradun, which means that the defendants were manufacturing the product Ramsons Bravo at large scale. The original stock details of this product seized by the LC shows a closing balance of 1080 bottles of this product and the outward supply of the product was 8158 of the value of Rs. 7,64,812/-. No objections have been filed to this report. It means that defendant was extensively dealing in this product and therefore, are liable to pay damages to the plaintiff for passing off this product, which are quantified for a sum of Rs. 3 Lac in view of the report of the local commissioner. ISSUE NO. 10:
32. The onus of proving this issue was on the plaintiff. In view of my findings given on the above issues, the plaintiff is entitled to relief of permanent injunction in respect of the dumbbell shape bottle used by the defendant for its product Ramsons Bravo. The defendants are liable to be restrained in selling their product -20- Ramsons Bravo in identical or deceptively similar dumbbell shape bottle used by them.
ISSUE NO. 11:
33. The onus of proving this issue was on the plaintiff. Plaintiff is entitled to delivery up of all the dumbbell shape bottles infringing the trademark of the plaintiff for its trademark Davidoff Champion 3D.
ISSUE NO. 12:
34. In view of my findings given on the above said issues, plaintiff shall be entitled to half of the cost of the suit. RELIEF:
35. In view of my findings given on the above issues, the suit is partly decreed and a decree for permanent injunction is passed in favour of the plaintiff and against the defendants thereby restraining the defendants themselves and through their proprietors, partners, directors, agents, stockists, representatives, assigns, heirs, successors for and on its behalf manufacturing, marketing, using, selling, soliciting, exporting, displaying advertising or in any other manner dealing in perfumes in an identical dumbbell shape bottle as used by the plaintiff for its product Davidoff Champion, which amounts to infringement of the plaintiff registered trademark Davidoff Champion 3D, passing off and violation of plaintiff's dumbbell shape bottle. Defendants are further directed to deliver up all the finished and unfinished dumbbell shape bottles to the plaintiff for the purpose of destruction.
36. The plaintiff is given nominal damages of Rs. 3,00,000/- in lieu of its prayer for rendition of accounts. The plaintiff shall also be entitled to the half of the cost of the suit.
-21-37. Plaintiff is directed to pay deficient court fee, if any, on the damages awarded. Decree sheet be prepared thereafter.
38. Copy of the judgment be sent to all the parties by electronic mode, if available or otherwise.
39. File be consigned to Record Room.
Digitally signed by AMITAMIT KUMAR Date: KUMAR 2024.05.18 14:10:56 +0530 (AMIT KUMAR) District Judge, Comm. Court-08 Central, Tis Hazari Courts Extension Block, Delhi/18.05.2024 -22-