Delhi District Court
Mr. Rupesh Malitrading As M/S Ticonics ... vs Mr. Ashok Kumar Trading Asm/S G.M. ... on 10 October, 2023
IN THE COURT OF SH. REETESH SINGH, DISTRICT JUDGE
COMMERCIAL COURT-04, SHAHDARA,
KARKARDOOMA COURTS, DELHI
CNR No. DLSH01-006026-2022
CS (Comm) No. 519/2022
In the matter of :-
Mr. Rupesh Mali
Trading as M/s Ticonics International
Room No.704, 7th Floor Singhgad
B2D Building, M.P. Mill Compound,
Beside Mahindra Tower Near Twines
Tower Tardeo Mumbai-400034
Maharashtra, India.
............Plaintiff
(Through Ld. Counsel Sh. Junaid Alam and Sh. S. Nithin)
Versus
1.Mr. Ashok Kumar Trading as M/s G.M. Enterprises 10/23, Patel Gari, Vishwas Nagar, Shahdara, Delhi-110032
2. Mr. Arjun Kumar, Proprietor of M/s Khushi Mobile Accessories Shop No.G9, Ground Floor, Sun Metro Complex, Mohamed Hussain Sahib Street, Mount Road, Chennai-600002, Tamil Nadu, India Also at:
Mr. Arjun Kumar, Proprietor of M/s Shubh Laxmi Mobile Accessories G12, Ground Floor, Sun Metro Complex, Mohamed Hussain Sahib Street, Mount Road, Chennai-600002, Tamil Nadu, India ....Defendants (Defendants are ex-parte) CS (Comm) No.519/2022 Page No. 1 /12 Date of institution of the case : 13.09.2022 Date of final arguments : 14.09.2023 Date of judgment : 10.10.2023 EX-PARTE JUDGMENT
1. The plaintiff M/s Ticon International through its Proprietor Sh. Rupesh Mali has filed the present suit against the defendants Sh. Ashok Kumar, Proprietor of M/s G M Enterprises and Sh. Arjun Kumar, Proprietor of M/s Khushi Mobile Accessories praying for grant of:-
• Decree for permanent injunction to restrain the defendants from infringing the registered Mark of the plaintiff "TICON" by using the impugned Mark "TEECON" or any other Mark identical or deceptively similar to the plaintiff's Mark "TICON";
• Decree for permanent injunction to restrain the defendants from using the copyright vested in the artistic work of Mark of the plaintiff "TICON" of the plaintiff by using the impugned Mark "TEECON" or any other Mark identical or deceptively similar to the plaintiff's Mark "TICON";
• Decree for permanent injunction to restrain the the defendants from passing off their goods by using the Mark of the plaintiff "TICON" or the copyright vested in the artistic work of Mark of plaintiff "TICON" of the plaintiff or any other Mark identical or deceptively similar to the plaintiff's Mark "TICON";
• An order for delivery by the defendants to the plaintiff all the offending goods bearing the impugned trademark/artistic work including packaging materials, advertising materials, etc. under the composition and control of the defendants for destruction or erasure purposes; • An order for rendition of accounts of the defendants of business on account of sale of infringing goods by the defendants; • A decree of damages in the sum of Rs. 5,00,000/- against the defendants on account of loss caused to the business and reputation of the plaintiff; and • Costs of the suit.
2. The plaintiff has averred that he is the Proprietor of M/s TICONics International and is engaged in the business of manufacturing, marketing and sale of mobile phones, mobile phone accessories, mobile phones spare parts CS (Comm) No.519/2022 Page No. 2 /12 and other associated products which are detailed in para 2 of the plaint. The plaintiff has averred that he is in the said business since the year 2017 and has been using the following trademark/device/artistic work conceived by him:-
TICON /
3. It is averred that in 2017 plaintiff also started business of marketing and sale of scientific, electric, photographical measuring apparatus for recording, transmission or reproduction of sound images, data processing equipment and computers under the same brand name as depicted above. It is averred that on 17.10.2017 plaintiff applied for registration of the above Marks with the Registrar of Trademark vide application No. 3655718 in respect of scientific, electric, photographical measuring apparatus for recording, transmission or reproduction of sound images, data processing equipment and computers included in Class -09. The said application was published in the Trademarks Journal vide No. 1896-0 dated 08.04.2019. Plaintiff was granted registration of the trademark/device as depicted above vide Certificate No. 2265506 dated 28.08.2019. Plaintiff has averred that it has from time to time file several trademark applications for registration of the trademark/device TICON in respect of products covered under Class-09 with user from the year 2017 which have been published in trademark journals on different dates. The plaintiff has given a tabular statement of such applications, registered and pending in para 4 of the plaint on page 20.
4. The plaintiff has averred that it maintains high standards in the field of marketing and sale of goods due to which the goods of the plaintiff sold under its Marks has acquired goodwill and reputation amongst consumers and members of the trade. It is averred that the trademark of the plaintiff TICON has acquired secondary meaning in the eyes of the customers and the general public. Plaintiff is the exclusive statutory owner of his Mark TICON and has CS (Comm) No.519/2022 Page No. 3 /12 common law rights in the said Mark/device and as such the plaintiff has the exclusive right of use of the same.
5. The plaintiff has averred that he has made substantial investments in publicity and advertisement of his trademark/device/artistic work in print and electronic media. The plaintiff is the owner of the domain name https://ticon.in and www.ticonmobile.business.site which are accessible to the consumers and public at large. The plaintiff is marketing and selling his products on OnLine platforms such as Amazon, Flipkart and India Mart. Presence of the plaintiff is visible on the internet and several third party websites. Long use of the said domain name and publicity has facilitated establishing an identity of the plaintiff in the market. The plaintiff in para 15 of the plaint has tabulated his annual sales figures which as on 31.03.2019 was Rs. 48,09,918/-, as on 31.03.2020 was Rs. 74,59,010/- and as on 31.03.2021 was Rs. 1,31,52,602/-.
6. The plaintiff has averred that he has been very active in protecting his statutory and common law rights in the registered trademark/artistic work/device since the beginning. Plaintiff has averred that in the first week of September 2021, he came to know that a similar trademark "TEECON" bearing application No. 4107330 is registered in favour of the defendant No.2. Upon inquiry it came to light that the trademark application has been filed by the defendant No.2 Sh. Arjun Kumar, Proprietor of M/s Khushi Mobile Accessories regarding goods as mentioned in the application and claiming user as "proposed to be used" and that on 31.08.2021 the said trademark application had been assigned by the defendant No.2 in favour of defendant No.1 Sh. Ashok Kumar. However, the status of the same still records the name of the defendant No.2 as its registered Proprietor. Plaintiff on 10.09.2021 filed an application with the Registrar of Trademark for rectification and cancellation as the said registered mark is invalid in law.
CS (Comm) No.519/2022 Page No. 4 /127. Plaintiff has averred that in the last week of May 2022, his dealer informed that some persons were marketing and selling mobile accessories under the impugned Mark TEECON and the impugned products are available in the markets of Delhi and NCR. Plaintiff conducted market inquiry and came to know that it was the defendant No.1 who was marketing and selling the impugned products with the mark TEECON with the connivance of the defendant No.2. Plaintiff came to know from the trademark registry that the defendant No.2 had filed two separate applications bearing Nos. 4334694 and 4334695 in Class-09 claiming users since 25.08.2019 which have been opposed by some other entities. Defendant No.1 on 28.01.2022 has filed a rectification application and opposition on trademark applications of the plaintiff on false contentions. The Marks adopted by the defendants have been described by the plaintiff in para 20 of the plaint as under :-
8. In para 21 of the plaint, the plaintiff has depicted his own products with his Mark and similar products of the defendants with the impugned marks as under:-
PLAINTIFF / DEFENDANTS ↓ ↓ CS (Comm) No.519/2022 Page No. 5 /12
9. Plaintiff has averred that the dishonest manner in which the defendants have adopted a mark deceptively similar to the Mark of the plaintiff is causing impression in the minds of his consumers that the products being sold by the defendants are associated with the plaintiff. Further the defendants have also registered social media handles-- @teecon mobile accessories on Facebook and @teecon_mobile_accessories_chen on Instagram on which they are advertising, selling, displaying similar products with the impugned mark.
10. The plaintiff has averred that this court will have the jurisdiction to entertain this suit as the plaintiff has been selling its products OnLine through OnLine platforms such as Amazon, Flipkart and India Mart which are interactive websites which are accessible within the jurisdiction of this court. The defendants are also selling, advertising, showcasing and displaying the impugned products bearing the impugned trademark through their profiles on Facebook and Instagram which are also accessible within the territorial jurisdiction of this court.
11. In these facts and circumstances, the plaintiff filed the present suit on 13.09.2022 along with applications including application under Order XXXIX Rules 1 and 2 of the CPC (for ex-parte ad-interim injunction).
12. By order dated 22.09.2022 summons of the suit and notice of the application under Order XXXIX Rules 1 and 2 of the CPC were directed to be issued to the defendants. The defendants were served with the summons on 07.10.2022 and on 19.10.2022 Sh. Sanchit Maheswari, Ld. Counsel put his appearance on their behalf. No written statement was filed by the defendants and as more than 120 days from the date of service had expired, by order dated 09.02.2023 right of the defendants to file written statement was closed by Ld. Predecessor of this Court. Since then, none appeared on behalf of the CS (Comm) No.519/2022 Page No. 6 /12 defendants who were proceeded ex-parte vide order dated 20.04.2023 by Ld. Predecessor of this Court.
13. Sh. Rupesh Mali Proprietor of M/s Rupesh Malitrading examined himself as PW1 and tendered his evidence by way of his affidavit Ex.PW1/A. He placed reliance on the following documents :
(a) Copy of the GST Certificate of the plaintiff's firm vide Ex.PW-1/1(Page Nos. 2-4).
(b) Copy of the Certificate of Import and Export Code vide Ex.PW-1/2 (Page Nos 5-6).
(c) Copy of Bureau of Industrial Standard Registration Certificate vide Ex.PW-1/3 (Page Nos. 7-8).
(d) Copy of Renewal Certificate of the Bureau of Industrial Standard Registration vide Ex.PW-1/4 (Page No. 9).
(e) Copies of Licenses granted by the Bureau of Industrial Standard vide Ex.PW-1/5 (Page Nos. 10-14).
(f) Invoices dated 08.02.2018, 26.03.2018 and 31.05.2018 pertaining to Bureau of Industrial Standard Registration testing and registration fees vide Ex.PW-1/6 (Colly) (Page Nos. 15-17).
(g) Copies of the Equipment Type Approval (ETA) issued by
Ministry of Communications, department of
Telecommunications, Government of India vide Ex.PW- 1/7 (Colly) (Page Nos. 18-35).
(h) Current Status report, registration certificate and journal copy of the Plaintiff's Trade Mark Registration available on the Trade Marks Registry website along with the Journal Copy vide Ex.PW-1/8 Colly)(Page Nos.361-375)
(i) Copy of Legal proceeding Certificate Receipt applied for the Plaintiff's Trade Mark Registrations vide Ex.PW-1/9 (Page No- 386).
(j) Printout of Trade Mark Search Certificate vide Ex.PW-
1/10 (Page Nos. 376-377).
(k) Copy of Copyright Registration Certificate vide Ex.PW-
1/11 (Page No. (378-379).
(l) Printout of web page of https://Ticon.in and https://ticonmobile.business.site vide Ex.PW-1/12 (Page No. 329-338).
(m) Printout of web page on Facebook and Instagram vide Ex.PW-1/13 (Colly) (Page Nos. 339-346).
(n) Printout of web page on India Mart and Udaan vide Ex.PW-1/14 (Colly) (Page Nos. 306-320).CS (Comm) No.519/2022 Page No. 7 /12
(o) Printout of web page on Amazon and Flipkart vide Ex.PW-1/15 (Colly) (Page Nos. 321-328).
(p) Copy of invoices showcasing the plaintiff's advertisement expenses vide Ex.PW-1/16 (Colly) (Page Nos. 302-305).
(q) Copy of the Google search and YouTube search for the mark of the plaintiff vide Ex.PW-1/17 (Colly) (Page Nos. 352-353 and 357-358).
(r) Copies of selected sale bills/invoices raised by the plaintiff and statement of year-wise annual sales figures of the plaintiff from the financial year 2019 to 2021 vide Ex.PW-1/18 (Colly) (Page Nos. 1, 36-301).
(s) Photograph of goods of defendant with the impugned mark vide Ex.PW-1/19 (Page Nos. 380-385).
(t) Printout of Defendants Social media presence on Facebook and Instagram, Google and YouTube search for the mark/goods of the defendants and copy of the impugned goods of the defendants vide Ex.PW-1/20 (Colly) (Page Nos. 347-351, 354-356 and 359-360). (u) Declaration under Order XI Rule 6 (3) of the CPC-cum-
Certificate under Section 65 B of the Evidence Act vide Ex.PW-1/21 (Page Nos. 49-56)
14. PW-1 was not subjected to any cross-examination. The plaintiff after examining himself as PW-1 closed his evidence on 29.08.2023.
15. Arguments were addressed on the suit by Sh. Junaid Alam and Sh. S. Nithin, Ld. Counsels for the plaintiff. In addition, written submission have also been filed. It is submitted that the Mark/device/artistic work adopted by the defendants is deceptively similar to the registered Mark/device/artistic work of the plaintiff. It is submitted that the Mark TICON of the plaintiff and impugned Mark TEECON of the defendants are phonetically similar and with the products of both the parties belonging to Class-09 i.e. mobile phone accessories, in all probability, consumers will associate the impugned products with the impugned Mark/device/artistic work with the plaintiff. It is submitted that plaintiff is therefore entitled to the decrees as prayed for.
16. I may note that during the course of hearing, the Ld. Counsels for the parties accessed the social media handles of the defendants - @teecon mobile CS (Comm) No.519/2022 Page No. 8 /12 accessories on Facebook and @teecon_mobile_accessories_chen on Instagram and demonstrated to this court that the products in Class-09 i.e. mobile phone accessories of the defendants with the impugned marks are available for sale OnLine even today with the prices of products.
17. I have heard the Ld. Counsels for the plaintiff and have perused the record of this case. No written statement was filed by the defendants within 120 days of service of summons due to which their right to do so was forfeited. Defendants stopped appearing in the suit and were proceeded ex- parte. Thus the case set up and evidence led by the plaintiff has gone unrebutted and unchallenged. The documents placed on record by the plaintiff are deemed to have been admitted by the defendants.
18. Ex.PW-1/8 (Colly) are the documents of the plaintiff pertaining to current status report, registration certificate and journal copy of the Plaintiff's Trade Mark Registration available on the Trade Marks Registry along with the Journal Copy. At Page 364 is the Certificate of the Registration issued by Trade Marks Registry as per which the following Mark stands registered in favour of the plaintiff against Trade Mark Number 3655718 dated 12.10.2017 in Class-09:-
19. At page 366 is the Certificate of the Registration issued by Trade Marks Registry as per which the following Mark stands registered in favour of the plaintiff against Trade Mark Number 3696142 dated 06.12.2017 in Class-09:-
20. The defendants have not defended the suit. Plaintiff has however averred that the defendants have a similar Mark TEECON registered against CS (Comm) No.519/2022 Page No. 9 /12 application No. 4107330 in the same Class-09 with claimed user as proposed to be used. In the absence of any evidence to the contrary, plaintiff has proved that it is the prior adopter and user of the Mark TICON in respect of Class-09 mobile phone and mobile phone accessories and that it has a registered Mark prior to that of the defendants.
21. In the case of Parle Products (P) Ltd. J.P. and Co., Mysore AIR 1972 SC1359 the Hon'ble Supreme Court has held that in order to arrive at the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. It would be enough if the offending 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. In the case of Laxmikant V. Patel vs. Chetanbhai Shah (2002) 3 Supreme Court Cases 65 the Hon'ble Supreme Court was pleased to hold that the law does not permit anyone to carry on its business in such a way as would persuade customers or clients in believing that the goods or the services belonging to someone else are his or associated therewith. Whether the person who adopts the offending marks has done so fraudulently or otherwise is not material. It was held that honesty and fair play are the basic policies in the world of business. When a person adopts a name in connection with his business or services which already belongs to someone else, it results in confusion and has the propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury. It was held that the principles for grant of injunction in such matters are the same in respect of any other action i.e. existence of a prima facie case in favour of the plaintiff, balance of convenience in his favour and chances of suffering irreparable injury in the absence of an injunction. It was held that once a case of passing off is made out, generally the practice is to grant a prompt ex-parte injunction. Similarly in the case of CS (Comm) No.519/2022 Page No. 10 /12 Midas Hygiene Industries (P) Ltd. & Anr. vs. Sudhir Bhatia & Ors. (2004) 3 Supreme Court Cases 90 the Hon'ble Supreme Court has held that in cases of infringement either of trade mark or of copyright, normally an injunction must follow.
22. Perusal of the impugned Mark/device/artistic work of the defendants reveals that the same is deceptively similar to that of the plaintiff. The impugned Mark/device of the defendants "TEECON" is also phonetically similar to the the Mark/device of the plaintiff i.e. "TICON". The defendants are in the same line of business as of the plaintiff i.e. Class-09 in respect of products including mobile phones and mobile phone accessories. The plaintiff has unable to prove that the defendants have illegally and unauthorizedly adopted the trademark of the plaintiff. Hence, the plaintiff is entitled to grant of the injunctions/ reliefs as prayed for in paras 31 (a) and 31 (b) of the plaint.
23. Relief 31 (d) is for rendition of accounts. The defendants are ex-parte. As such the sales figures of the defendants in their absence are not available. In similar circumstances, the Hon'ble High Court of Delhi in the cases of Pepsico Inc Vs. PSI Ganesh Marketing CS (OS) 157/2013 decided on 19.05.2014, Cartier International AG Vs. Gaurav Bhatia CS (OS) 1317/2014 on 04.01.2016 and Christian Louboutin SAS Vs. Ashish Bansal CS (Comm.) 503/2016 on 31.07.2018 has been pleased to hold that the plaintiff can be awarded punitive damages. In the facts and circumstances of this case, I deem it appropriate to grant punitive damages to the plaintiff company in the sum of Rs. 2,50,000/- against each defendant.
24. As far as relief 31 (c) is concerned, the same seeks an order for delivery by the defendants to the plaintiff all the offending goods bearing the impugned trademark/artistic work including packaging materials, advertising materials, etc. under the composition and control of the defendants for destruction or CS (Comm) No.519/2022 Page No. 11 /12 erasure purposes. In the present case, the plaintiff did not move any application with the suit under Order XXVI Rule 9 of the CPC for appointment of a Local Commissioner to seize any of the offending/impugned products of the defendants bearing the impugned mark. There is therefore no seized material in this case for which any order can be passed as prayed for in para 31 (c) of the plaint.
25. For the reasons recorded above, suit of the plaintiff is decreed in favour of the plaintiff and against the defendant in terms of prayers 31(a), 31(b) and 31 (d) of the plaint. Plaintiff is held entitled to recovery of punitive damages in the sum of Rs. 2,50,000/- against each defendant. Costs of the suit are awarded in favour of the plaintiff. Decree sheet be drawn accordingly upon deposit of deficient court fees, if any.
26. File be consigned to record room.
Announced in the open (REETESH SINGH)
court on this 10th day DISTRICT JUDGE
of October 2023 (COMMERCIAL COURT)-04
SHAHDARA, KKD COURTS, DELHI
CS (Comm) No.519/2022 Page No. 12 /12