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Delhi District Court

M/S. Shubham Goldiee Masale Pvt. Ltd vs Mr. Nandkishore Madhav Gupta on 30 June, 2023

                  IN THE COURT OF
      SH. PREM KUMAR BARTHWAL, DISTRICT JUDGE
       (COMMERCIAL COURT)-01 SOUTH DISTRICT,
              SAKET COURTS : NEW DELHI

CS (COMM) NO. 339/2021

CNR No. DLST01-005771-2021

M/S. SHUBHAM GOLDIEE MASALE PVT. LTD.
51/40, Goldiee House,
Nayaganj, Kanpur, U.P.            ..... PLAINTIFF

                                          Versus

MR. NANDKISHORE MADHAV GUPTA
1746/30, 37, Old Kamptee Road,
Hanuman Co-OP Society, Kawra Peth,
Nagpur-440018, Maharashtra.                                              ..... DEFENDANT

Date of Institution   : 11.08.2021
Reserved for judgment : 07.06.2023
Date of Judgment      : 30.06.2023

                                    JUDGMENT

1. The plaintiff has filed the present suit U/s 134 & 135 of the Trade Marks Act, 1999 for permanent injunction restraining infringement, passing off, delivery up, rendition of accounts etc. against the defendant.

2. Brief facts, according to the plaintiff, are that it is engaged in the business of manufacturing and marketing of wide range of food products for human consumption including spices and other allied and related goods. It is submitted that the initial business of the plaintiff was with respect to spices and, with the passage of time, the plaintiff expanded its business into various food related items and other goods (hereinafter referred to as the said goods/business).

CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

It is submitted that the plaintiff is the proprietor of trademark GOLDIEE and GOLDIEE formative trademark/labels in relation to the aforesaid goods (hereinafter referred to as the said trademark/label) and word GOLDIEE forms material part of the plaintiff's tradename and the same is also a house mark of the plaintiff. It is submitted that the plaintiff through its predecessors had adopted the trademark/label GOLDIEE in the year 1980 and it has been continuously and uninterruptedly using the same in relation to their business/trade since then. It is submitted that M/s. Shubham Industries was the predecessor of the plaintiff which was taken over by the plaintiff on 01.04.1998 with all its assets and liabilities. It is submitted that the plaintiff has statutory rights in its trademark/label GOLDIEE and GOLDIEE formative marks, GOLDIE, GOLDIEE vide registration no. 69690 dated 02.02.1996 and various other registration in respect of Class 29, 30, etc. as detailed in para 5 and 6 of the plaint.

3. It is submitted that the plaintiff is the proprietor of the said trademark/labels GOLDIEE, GOLDIEE formative marks/labels GOLDIE in relation to the said goods and business on account of honest and bonafide adoption and prior use. It is submitted that the said goods and business being carried on by the plaintiff under the said trademark/label is very extensive and the goods and business thereunder have been practically distributed in major parts of the country. It is submitted that the said goods and business of the plaintiff bearing the said trademark/label are highly demanded in the market on account of their standard quality and precision. It is submitted that the plaintiff also exports its said goods under the said trademark to various countries i.e. Bangladesh, Canada, Europe, Sri Lanka, USA, UAE and Nepal. It is submitted that the plaintiff's goods and business under the said trademark/labels have acquired CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

tremendous goodwill and enviable reputation in the markets and the plaintiff has already built up a handsome and valuable trade thereunder and yearwise sales of the plaintiff from 2000-2001 onwards under the said trademarks/labels are detailed in para 9 of the plaint and the same were Rs.7,692,552,594/- during the year 2019-2020.

4. It is submitted that the plaintiff has been continuously promoting its said goods and business under their said trademark through print, audio/visual media, advertisements and publicity in leading newspapers, distribution of trade literature, trade hoardings and boards etc. and the plaintiff has already spent enormous money and efforts and well known actor Mr. Salman Khan is the brand ambassador of the plaintiff. It is submitted that the activities of the plaintiff are also evident from their website www.goldiee.com and http://www.goldieeonlinestore.com/. It is submitted that the art works involved in the plaintiff's said trademark/labels GOLDIEE and formative trademarks are original artistic works and the plaintiff is the owner and proprietor of the copyright therein within the meaning of the Indian Copyright Act, 1957. It is submitted that the plaintiff has been dealing with its art works/copyright in the course of trade in relation to its said goods and business inter-alia within the meaning of Section 14 of the Copyright Act, 1957 and the plaintiff has copyright registration for one of the formative works/labels under no. A-120994/2017. It is submitted that the plaintiff is a market leader and besides maintaining excellent quality of its said goods and business under the said trademark/label lays tremendous emphasis on innovation. It is submitted that the plaintiff's said goods under the said trademark/labels are available to the consumers all over the country through network of around 1200 distributors and C & F agents. It is submitted that the CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

plaintiff's said goods and services under the said trademark/label are known for their superior quality and reliability and are extremely popular and are in great demand which is ever increasing. It is submitted that the said trademark/label is one of the most valuable assets of the plaintiff and plaintiff is the proprietor thereof as also of its goodwill and reputation under the statutory and common law and in view thereof, the plaintiff has interalia the exclusive rights to the use of the said trademark and nobody can be permitted to use the same or any deceptively similar trademark/labels/copyrights thereto in any manner whatsoever without the leave and license of the plaintiff.

5. According to the plaintiff, the defendant Mr. Nandkishore Madhav Gupta has adopted and intends to use the trademark/label GOLDIBABA (hereinafter referred to as the impugned trademark/label). It is submitted that the defendant is not the proprietor of the impugned trademark/label which is deceptively similar to the plaintiff's trademark/label and has adopted and intends to so and is soliciting and networking to use the same in relation to his impugned goods and business and is otherwise dealing with it in the course of trade without the leave and license of the plaintiff. It is submitted that the defendant has no right to act in such manner in relation to its impugned goods and business or for any other specification of goods and business whatsoever being in violation of the plaintiff's rights therein. It is submitted that the defendant by its impugned adoption and use/intended use of the impugned trademarks, is violating the plaintiff's right in the said trademark and thereby passing off and enabling others to pass off its impugned goods and business as that of the plaintiff as well as diluting the plaintiff's proprietary rights therein. It is submitted that the defendant is fully aware of the plaintiff's rights, goodwill, CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

reputation, benefits and users etc. in the plaintiff's said trademark at the time of his impugned adoption and intended use of the impugned trademark. It is submitted that the resemblance between the rival trademarks is so close that it can hardly occur except by deliberate imitation. It is submitted that the defendant has adopted and intends to so use the impugned trademark dishonestly, fraudulently and out of positive greed with a view to take advantage and to trade upon the established goodwill, reputation and proprietary rights of the plaintiff in the plaintiff's said trademark. It is submitted that by the defendant's impugned adoption and use, deception and confusion in the market is ensuing or is likely to so ensue. It is submitted that due to the defendant's impugned activities/intended use, the plaintiff is suffering huge losses both in business and reputation and such losses being suffered by the plaintiff is incapable of being assessed in monetary terms. It is submitted that the unwary purchasers and trade are being deceived as to the origin of goods or business.

6. According to the plaintiff, in the second week of January 2009, the plaintiff learnt about the defendant and its impugned adoption and intended use of the impugned trademark/label when the plaintiff through its attorneys came to know about the publication in Trade Mark Journal No. 1404-0 dated 16.11.2008 with respect to the trademark application filed by the defendant under no. 1689738 in Class 30 for the impugned trademark/label and in said application, the defendant claimed the user of 01.01.2004 but no goods were found in the market. It is submitted that the plaintiff had filed its opposition on 21.01.2009 and thereafter the defendant filed its counter statement and the plaintiff filed its evidence in support of opposition. It is submitted that in June 2010, the defendant filed its evidence in support of application CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

and in July 2010, the plaintiff filed its rebuttal evidence. It is further submitted that in second week of December 2020, the plaintiff through its attorneys came to know about another trademark application filed by the defendant under no. 47220085 in Class 30 for the impugned trademark/label and in said application, the user claimed by the defendant is "proposed to be used". The plaintiff filed its opposition to such application vide notice of opposition dated 19.12.2020 under no. 1080557 and the defendant has filed its counter statement in the opposition wherein he claimed the user of 2004 whereas the application was filed on "proposed to be user" basis and that no goods were available in the market. It is further submitted that the defendant has now started soliciting/networking from last week of May 2021 to various other dealers/shopkeepers/retailers including in South Delhi area viz. Saket, Mehrauli, Malviya Nagar, Hauz Khas and adjoining areas etc. and such soliciting, networking amounts to user of the impugned trademark by the defendant and resultant infringinging activities by the defendant.

7. Summons of the suit were issued to the defendant and written statement was filed on behalf of the defendant on 07.03.2022 contending that earlier the defendant was doing the business in the name of Bajrang Sweets till 2012 and name of firm was changed to Rahul Gruh Udyog from 2013 to 2017 and to Navya Food Product since 2018 and the defendant is carrying on its business inter-alia of manufacturer and seller of different types of sweets including Son Papdi. It is submitted that the defendant is well known manufacturer of wide range of sweets. According to the defendant, the mark GOLDIBABA was coined and adopted by the defendant in the year 2004 and the defendant has been selling sweets under the mark GOLDIBABA since 2004. It is submitted that the CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

defendant had applied for registration of the trademark GOLDIBABA label bearing Trademark Application Nos. 1689738 and 4720085 in class 30 which were opposed by the plaintiff and by virtue of long and continuous use of the mark GOLDIBABA, it has become highly distinctive qua the defendant. It is submitted that the products with the mark GOLDIBABA has been advertised by the defendant in print media, newspapers, brochures, points of sales and retail stores. It is submitted that on account of long usage, promotion and extensive publicity and advertisement, the defendant's mark has acquired secondary meaning, commands substantial goodwill and reputation and is exclusively identified with the defendant only. It is submitted that the defendant has spent substantial amount of money in carrying out advertisement to promote his firm's brands including mark GOLDIBABA.

8. The defendant has contended that neither the plaintiff nor the defendant have registered office within the jurisdiction of this Court and no cause of action arose within the jurisdiction of this Court. It is submitted that the defendant is carrying on their business only in Nagpur and the product mark GOLDIBABA has not been sold in Delhi by the defendant at any point of time. It is submitted that the defendant has neither any business in Delhi nor they have any intention to sell their products in Delhi. It is submitted that the defendant has not appointed any person as its distributor or to any retailer or any other person for sale in Delhi of the product mark GOLDIBABA or any of its products. It is contended that the defendant is using the mark GOLDIBABA since January 2004 continuously without any interruptions in the market. It is contended that the plaintiff is guilty of delay, latches and acquiescence and as such the plaintiff is not entitled to any relief.

9. It is submitted that the defendant's trademark is a single word CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

i.e. GOLDIBABA with the device of Man and that the defendant's trademark cannot be segregated in two parts since it is a single word. It is contended that the plaintiff's trademarks/labels GOLDIEE are visually, phonetically and structurally different an there is no likelihood of any confusion or deception between the rival marks or the products. It is further submitted that the packaging of the plaintiff as well as of the defendant are entirely different and the defendant's mark is in no manner similar to the get up, design, layout, colour combination, font, writing style, etc. of the plaintiff as alleged therefore, the question of any infringement and passing off does not arise. It is submitted that the defendant is not using the word GOLDI per se and the defendant is always using it as a label i.e. GOLDIBABA and that the defendant is an honest and concurrent adopter and user of the mark GOLDIBABA since January 2004 continuously without any interruptions in the market.

10. According to the defendant, the plaintiff has not disclosed in the plaint/suit that the following marks of the plaintiff have been abandoned :

 S.No       Application                    Mark                   Class                Status
             Number
   1.           708315                 GOLDIEE                      30             Abandoned
   2.           708316                 GOLDIEE                      30             Abandoned
   3.          1687002                 GOLDIEE                      30             Abandoned

11. It is contended that there are large number of persons using trademark or tradename containing the mark GOLDIEE/GOLDY and the plaintiff is not the first person to use the said mark as there are many pre-existing entities using the mark GOLDIEE in their business. It is contended that the similar name already existed in the market much prior to the plaintiff and that the trademark GOLDIEE/GOLDY is very common name in India and nobody can CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

have monopoly over the said marks. It is contended that the plaintiff has copied and adopted this mark which already stood registered in name of many third parties for the same goods and services much prior to the plaintiff. It is contended that the plaintiff has obtained registrations by playing fraud upon the Registrar of Trademarks and the registration granted to the plaintiff are contrary to the Trademark Act and rules and said registration is liable to be revoked/canceled. It is submitted that the present suit is false, frivolous and is based upon conjectures and is liable to be dismissed with exemplary costs.

12. Replication to the written statement has been filed by the plaintiff reiterating the averments made in the plaint and controverting the averments of the defendant.

13. Following issues were framed for adjudication of the present matter:

1) Whether the defendant has infringed the registered trademarks of the plaintiff? OPP

2) Whether the plaintiff is entitled to the damages as prayed for? OPP

3) Relief, if any.

14. On behalf of the plaintiff, PW-1, Mr. Nirmal Singh, Authorized Representative of the plaintiff company has been examined who tendered his evidence affidavit Ex.PW1/A, and has proved the following documents :

1) Ex.PW1/1(colly) :Representation/photograph under the trademark of plaintiff;

2) Ex.PW1/2(colly) :Screenshots from the plaintiff's website & online store;

3) Ex.PW1/3(colly) :Representation of defendants' impugned trademark;

4) Ex.PW1/4A(colly) :Status page, registration certificate, publication in trademarks Journal for CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

application no.2661792;

5)Ex.PW1/4B(colly) :Status page, registration certificate, publication in trademarks Journal for application no.2776291;

6) Ex.PW1/4C(colly) :Status page of the trademarks application no.2777098;

7) Ex.PW1/4D(colly) :Status page, registration certificate, publication in trademarks Journal for application no.3029657;

8) Ex.PW1/4E(colly) :Receipt of Legal Proceedings Certificate;

9) Ex.PW1/5(colly) :Readily available sales figures of the plaintiff Co.;

10) Ex.PW1/6(colly) :Sales invoices of the plaintiff;

11) Ex.PW1/7(colly) :Invoices related to the advertisements of plaintiff's brand & some of the advertisements;

12) Ex.PW1/8(colly) :Earlier order of Hon'ble Delhi High Court in favour of plaintiff;

13) Ex.PW1/9(colly) :Status & TMJ Publication related to defendant's trademark application no.

4720085 and notice of Opposition filed by plaintiff to such application, counter statement of defendant, evidence affidavit in support of Opposition, Evidence affidavit in support of the application and status of defendant's trademark application no. 1689738 & related documents;

14) Ex.PW1/10 :Copy of Board Resolution in my favour;

15) Ex.PW1/11 :Certificate U/s 65-B of Indian Evidence Act.

15. The defendant stopped participating in the proceedings after 23.11.2022 and AR of defendant was absent despite directions passed on 18.01.2023 and 24.02.2023. Even the Ld counsel for the defendant stopped appearing/participating in the proceedings and consequently the defendant was proceeded ex-parte on 28.03.2023. Evidence of the plaintiff was closed vide statement of ld. Counsel for the plaintiff, recorded on 21.04.2023.

16. I have heard the submissions of Mr. Arpit Singh and Ms. CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

Kanupriya, ld. Counsels for the plaintiff at length and have perused the record carefully. During the course of proceedings on 25.05.2023, ld. Counsel for the plaintiff submitted that the prayers made in para 31(b), (c) and (d) of the plaint are not pressed and the same were given up by the plaintiff. My issuewise findings are as under:

1) Whether the defendant has infringed the registered trademarks of the plaintiff?

17. The onus to prove issue no.1 was on the plaintiff and the testimony of PW-1, Mr. Nirmal Singh alongwith the documents proved on record by plaintiff have remained unrebutted and unchallenged in absence of any cross examination by the defendant and there is no reason to disbelieve the same. PW1 has categorically averred in his evidence affidavit Ex. PW1/A that he has been duly authorized by the plaintiff company and the copy of the Board Resolution Ex. PW1/10 has also been proved on record. He has reiterated and reaffirmed the facts narrated in para 29 of the plaint regarding the territorial jurisdiction. The plaintiff in said para 29 of its plaint has asserted that the defendant is soliciting, have intetion to sell/solicit his impugned goods under the impugned trademark in South Delhi area viz, Saket, Malviya Nagar, Hauz Khas, Mehrauli and adjoining areas and the defendant is committing the the acts of infringing the acts of passing of in the markets of South Delhi areas which are affecting or likely to affect the plaintiff's proprietary rights. The defendant has not cared to cross-examine the plaintiff's witness regarding his assertions made in para 29 of the plaint nor the defendant has chosen to enter into the witness box to disprove the plaintiff's case. In the absence of any cross examination of PW1 by the defendant and in view of the CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

uncontroverted and unchallenged testimony of plaintiff's witness, this Court does not find any merits in the defendant's pleading that this Court lacks territorial jurisdiction to entertain the present suit. The plaintiff has proved on record its registration qua the mark GOLDIEE [forming parts of Ex. PW1/4A to Ex. PW1/4D (colly.)]. On the aspect of infringement, the ld. Counsel for plaintiff has placed reliance on the law laid down by the Hon'ble Supreme Court in Durgadutt Vs. Navratna, AIR 1965 SC 980 where it has been held that "when once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are AIR 1965 SC 980 identical no further questions arise; for then the infringement is made out...".

18. Ld. Counsel for the plaintiff has also relied upon Laxmikant Patel Vs Chetanbhai, AIR 2002 SC 275 on the aspect of riding upon the goodwill of plaintiff and passing off. Reliance has been placed upon para 10 of the said judgment which reads that "a person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that he goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."

19. From the uncorroborated and uncontroverted testimony of PW-1 and the documents proved on record establish that the plaintiff is the registered owner of the trademark GOLDIEE for the goods falling in class 29 and 30. Perusal of the defendant's mark (as represented in Ex. PW1/3) and the defendant's attempt to get the mark GOLDIBABA registered vide Application No. 4720085, Ex. PW1/9 for Class 30 goods on proposed to be used basis establish on record that the defendant's mark is deceptively and confusingly similar to the said registered trademark of the plaintiff. Significantly, the said attempt of the defendant is lying opposed before the concerned Trademark Registry. The word GOLDIEE/GOLDI forms prominent and significant part of the rival trademarks. There is a clear phonetic similarity between the two rival marks. PW-1 further stated that any person not knowing clearly the relationship between the parties, is bound to be confused by the defendant's impugned adoption. PW-1 further stated that by adoption and use of the impugned trademark in relation to the impugned goods and business, defendant was taking unfair advantage of plaintiff's trademark and tradename. The defendant has deliberately not chosen to cross-examine the plaintiff's witness or contest the plaintiff's claims and has also not cared to adduce any evidence in its support . Thus, the plaintiff has been able to establish on record its proprietorship claim in respect of its registered mark GOLDIEE/GOLDIE and the plaintiff has also been CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

able to prove the infringement/passing off by the defendant by using the identical/deceptively similar Mark on the scale of preponderance of probabilities. The infringement and passing off action on the part of the defendant is also established from the defendant's own admission in his pleadings that he is using the Mark GOLDIBABA and his application for registration of the mark GOLDIBABA, Ex. PW1/9. In the considered opinion of this court, the adoption of the deceptively similar Mark by defendant is dishonest and motivated by a desire to ride on the vast reputation and goodwill which is enjoyed by the plaintiff and the same stands proved on the scales of preponderance of probabilities in view of the uncontroverted testimony of PW-1 and various documents proved on record. Thus, the issue no. 1 is decided in favour of the plaintiff and against the defendant.

2) Whether the plaintiff is entitled to the damages as prayed for? OPP

20. The ld. Counsel for the plaintiff has argued that plaintiff has already suffered and is likely to suffer further irreparable loss and injury to its goodwill and reputation on account of the acts of infringement and passing off/unfair trade practice committed by the defendant by using deceptively similar Mark. It has been argued that the plaintiff is entitled to punitive as well as compensatory damages and cost incurred by the plaintiff in addition to the decree for permanent injunction. Ld. Counsel for the plaintiff further submits that the underlying principle between 'compensatory damages' and 'punitive damages' has been dealt in various cases by the Hon'ble Superior courts and both punitive and compensatory damages have been granted. It has been submitted that generally, the court passes 'compensatory damages' in cases, where the CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

plaintiff has suffered damages on account of the infringing activities of the defendant and compensatory damages are granted to compensate the loss suffered by the plaintiff, whereas the 'punitive damages' is granted to deter a wrong doer from indulging in unlawful activities.

21. The ld. Counsel for the plaintiff has also placed reliance on the case titled Hero Honda Motors Ltd. Vs. Shree Assuramji Scooters 125 (2005) DLT 504 in which the Hon'ble Delhi High Court took the view that damages should be awarded against defendants who chose to stay away from proceedings of the Court and they should not be permitted to enjoy the benefits of evasion of Court proceedings. The underlying principle for the same is that while defendants who appear in Court may be burdened with damages while defendants who chose to stay away from the Court would escape such damages.

22. The term 'damages' can be taken to be a pecuniary compensation which may be recovered in the courts by any non- breaching party which has suffered loss, detriment, or injury, whether to his person, property, or rights due to the unlawful act or omission or negligence on behalf of another party. The jurisprudence developed on this subject defines three types of damages in IPR regime. They are nominal damages; real damages and extraordinary or punitive damages. Nominal damages are in fact to recognize that the defendant has infringed the plaintiff's rights. They are only token and have nothing to do with the actual damages that the plaintiff might have suffered. To maintain a claim to such damages, the plaintiff has to clear the litmus test of proving his entitlement for injunction.

23. Real damages are the actual damages suffered by the plaintiff on account of the wrongful acts of the defendant. These are CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

basically meant to set back the clock i.e. to restore the plaintiff in nearly the same situation that existed prior to the commission of wrongful act on the part of the defendant. This is easier said than done. In fact, there is no 'rule of thumb' or straight jacket formula to ascertain the exact amount of damages. This requires a scrutiny of balance sheet, book of accounts or host of other exercise to find out. This may require a peep into 'accounts of profit or profit of accounts'. Still such damages may not be ascertainable with a scientific precision or mathematical exactitude.

24. Punitive damages or exemplary damages, are the damages assessed in order to punish the defendant for outrageous conduct or to deter the defendant (and for that matter others too) from engaging in similar obnoxious conduct. For entitlement to these damages, the record must show that the conduct of the defendant was dishonest; intention of the defendant was malafide to take the piggy bank right upon the plaintiff's intellectual property rights and that there is nothing to show that defendant had a reasonable or sufficient cause for doing the wrongful act.

25. Considerable jurisprudence has developed in the recent past to burden the infringers with punitive damages apart from actual damages. Hon'ble High Court of Delhi in Koninklijke Philips N.V. & Anr. Vs. Amazestore and a connected matter decided on 22.04.2019 in CS (Comm) 737 of 2016 has laid down some of the principles which a Court ought to look into while granting punitive damages. The defendant chose not to appear before the Court despite being duly served with summons. While awarding compensatory damages as claimed by the plaintiff's, the Court awarded aggravate/exemplary damages of a total of Rs 1 Crore over and above the compensatory damages on account of the degree of malafide conduct of the defendants. The Hon'ble High Court has CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

also laid down the rule of thumb that should be followed while granting damages can be summarized in a chart as under. The Hon'ble Court has also clarified that the following chart is only illustrative and is not to be read as a statutory provision. It was observed that the Courts are free to deviate from the same for good reason.

No. Degree of malafide conduct Proportionate award

1. First-time innocent infringer Injunction

2. First-time knowing infringer Injunction + Partial Costs

3. Repeated knowing infringer which Injunction + Costs + causes minor impact t the plaintiff Partial damages

4. Repeated knowing infringer which Injunction + Costs + causes a major impact to the plaintiff Compensatory damages

5. 15. Infringement which was Injunction + Costs + deliberate and calculated Aggravated damages (Gangster/scam/ mafia) + wilful (Compensatory + contempt of court additional damages)

26. The defendant has not chosen to controvert the claims of the plaintiff despite being aware about the present case/proceedings and has rather chosen not to cross-examine the plaintiff's witness and has also not proved on record its defence by examining any witness. From the evidence proved on record by the plaintiff and in the light of the factual and legal submissions as discussed above there is substantial force in the contention of ld. Counsel for plaintiff that the defendant has taken undue advantage of the trademark, goodwill and popularity of the plaintiff and has unjustly enriched itself at the plaintiff's cost, expense. It is also axiomatic that the defendant is also causing loss and damage to the gullible customers and in turn putting the reputation and goodwill of the plaintiff at stake. There is every likelihood that having suffered with inferior CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

and spurious goods, the customer would under-rate the plaintiff and this would result in the dilution of the goodwill of the plaintiff. Such acts and omissions of defendant, would cause serious injury to the valuable rights of the plaintiff and would cause incalculable loss to him, without any fault on its part. Ostensibly, such acts of the defendants might also be against the interest of the state exchequer as these might have been done in a clandestine manner without issuing the tax paid bills and without the transactions being carried out in a recorded mode.

27. The acts and omissions of the defendant not only constitute infringement but also passing off the goods of the defendant as if they had originated from the plaintiff. There is no reason to disbelieve the pleadings supported with affidavit and documentary evidence led by the plaintiff and on preponderance of probabilities it appears to be trustworthy and inspires confidence in the mind of this court. Accordingly, the plaintiff has been able to establish its claim for permanent injunction and damages against the defendant on the basis of preponderance of probabilities and the plaintiff is entitled for the said reliefs. Accordingly, the issue no. 2 is also decided in favour of the plaintiff and against the defendant.

Relief.

28. Having regard to the aforesaid discussion, the suit of the plaintiff is hereby decreed as under :

(a) A decree of permanent injunction is hereby passed restraining the defendant by itself as also through its directors/agents, representatives, distributors, assigns, heirs, successors, stockists, dealer, retailers etc. and all others acting on its behalf from manufacturing, marketing, intended to use, soliciting, networking, using, selling, displaying, advertising, or by any other mode or CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

manner dealing in or using the defendant's impugned trademark/label GOLDIBABA or soliciting/using in markets it through any online medium or online websites or through any online platforms or through any social medias or any other identical with and/or deceptively similar word/mark/label to the plaintiff's trademark/labels GOLDIEE, GOLDIE in respect of Class 29 and 30 goods or business or any other allied/related/cognate products and from doing any other acts or deeds amounting to infringement of the plaintiff's registered trademarks/passing off and enabling others to pass off their goods and business as that of the plaintiff.

(b) Compensatory damages in the sum of Rs.1,00,000/ (Rupees One Lakh only) are also awarded in favour of the plaintiff and against the defendant which be paid within two months from the date of the order, failing which the defendant would be liable to pay interest @ 9% per annum till its realization.

(c) Extraordinary/Punitive damages in the sum of Rs.1,00,000/ (Rupees One Lakh only) are also awarded in favour of the plaintiff and against the defendant which be paid within two months from the date of the order, failing which the defendant would be liable to pay interest @ 9% per annum till its realization.

(d) The plaintiff shall also be entitled to the costs of the suits i.e. the court fee, process fee alongwith fee of the Advocate which is assessed to be Rs.33,000/-.

29. Decree sheet be prepared accordingly. File be consigned to the Record Room after necessary compliance.

Announced in the open Court on 30th Day of June 2023 (Prem Kumar Barthwal) District Judge (Commercial Court)-01, South District, Saket Courts/New Delhi.

CS (Comm): 339/2021 M/s. Shubham Goldiee Masale Vs. Mr. Nandkishore Madhav Gupta Pvt. Ltd.

CS (COMM)339/21 SHUBHAM GOLDIEE MASALE PVT. LTD. VS.

NANDKISHORE MADHAV GUPTA

30.06.2023

Present :     None.

              Vide    separate   judgment   dictated,   typed   and

announced in the open court today, the suit of the plaintiff stands decreed alongwith costs in the manner indicated therein. Decree- sheet be prepared accordingly.

File be consigned to record room after necessary compliance.

(Prem Kumar Barthwal) District Judge (Commercial Court)-01 (South)/Saket Courts, New Delhi/30.06.2023