Delhi High Court
Superbrands Ltd. & Ors. vs Superbrand Home Care Products Pvt. Ltd. ... on 25 September, 2009
Author: S. Muralidhar
Bench: S. Muralidhar
IN THE HIGH COURT OF DELHI AT NEW DELHI
IA Nos.13495 of 2008 & 11129 of 2009 in
CS (OS) 2321/2008
Reserved on : 23rd September 2009
Decision on: 25th September, 2009
SUPERBRANDS LTD & ORS ..... Plaintiffs
Through: Mr. Rajendra Kumar and
Ms. Navpreet and
Mr. K.D.Benjamin, Advocates.
versus
SUPERBRAND HOME CARE PRODUCTS PVT.
LTD. & ORS. ..... Defendants
Through: Mr. Manav Kumar and
Mr. Sushant Singh, Advocates.
CORAM:
HON'BLE DR. JUSTICE S. MURALIDHAR
1. Whether Reporters of local papers may be
allowed to see the judgment? No
2. To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported in Digest? Yes
JUDGMENT
S. Muralidhar, J.
IA Nos.13495 of 2008 & 11129 of 2009 in CS(OS) 2321 of 2008
1. These are two applications filed by the Plaintiff under Order XXXIX Rules 1 and 2 CPC. Although the Defendants have not filed a reply to IA No.13495/2008, counsel for the Defendants states that the written statement filed on 27th April 2009 may be treated as a reply to this application as well. The Defendants have, however, filed a reply to IA No. 11122 of 2009 on 22nd September 2009.
IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 1 of 26
2. Plaintiff No.1 Superbrands Ltd. is a company incorporated in Great Britain having its registered office in London in the United Kingdom (UK). Plaintiff No.2 Superbrands India Pvt. Ltd. is a company incorporated under the Companies Act, 1956 having its registered office at New Delhi. The Plaintiff No.3 Anmol Dar was appointed exclusive agent by Plaintiff No.1 by an agency agreement dated 9th August 2002 for operating the SUPERBRANDS concept of Plaintiff No.1 in India and promoting and selling the SUPERBRANDS publications and books specifically in the territory of India. It is stated that the subsequent to his appointment Plaintiff No.3 was authorized by Plaintiff No.1 to incorporate Plaintiff No.2 Superbrands India Pvt. Ltd. as an Indian company for the purposes of performing the agency agreement.
3. It is stated that the genesis of the Plaintiff No.1 was a radio show launched in London with the aim of providing ordinary consumers an insight into the prominent and significant brands they consumed on a daily basis. It is stated that encouraged by the huge success of the said programme, which was brainchild of Mr. Marcel Knobil, it was repackaged by him and the Plaintiff No.1 was created in 1993 as an entity that focussed on promoting the discipline of branding, identifying and paying tribute to exceptional brands. The inaugural book of the Plaintiff No.1 launched for the year 1994 featured famous brands in the area of goods and services. It is stated that since then the programmes run under the SUPERBRANDS name and logo are recognized as a benchmark for brand success. Different juries comprising of professionals from the fields of advertising, marketing, public relations, research and media are put together for different geographical regions. The IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 2 of 26 judges are expected to assess the various brands, for qualifying them as SUPERBRANDS. The criteria is that these brands have established the finest reputation in the respective fields and offer to their customers significant emotional and/or tangible advantages over their competitors. It is stated that SUPERBRANDS concept endeavours to enlighten the public and the trade about the discipline of branding and to encourage appreciation of the brand itself.
4. The Plaintiffs have in the plaint explained the selection process of SUPERBRANDS whereby through the website of Plaintiff No.2 www.superbrandsindia.com visitors choose the categories they are interested in and score the brands listed thereunder. The research agency appointed by Plaintiff No.2 tabulates results wherein brands with an average score of 6 or below get eliminated and the rest move to the next qualifying round. Thereafter a Superbrand Council comprising of marketing and business professionals score the surviving brands and those that achieve a score of six and above in each category are considered to be the only brands that can participate in the SUPERBRANDS concept.
5. The first book outside the UK was published by the Plaintiff No.1 in Australia in 1996. It is stated to have expanded and extended its concept to several countries around the world. The publications of Plaintiff No.1 in each of the operating countries are stated to be a compendium of case studies of the strongest brands of that country. It is stated that some of the world‟s largest and most successful business and consumer names feature in the publication of Plaintiff No.1 and those brands have been accorded the IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 3 of 26 SUPERBRANDS status.
6. In India the Plaintiff No.2 as an exclusive agent of Plaintiff No.1 has operated the SUPERBRANDS programme and has published the SUPERBRANDS publication in two genres namely BUSINESS SUPERBRANDS (for the years 2004 and 2007) and CONSUMER SUPERBRANDS for the years 2005 and 2008. Copies of these publications have been placed on record. It is explained that owners of the selected brands are invited by the Plaintiff No.1 in writing, informing them that their brands have been adjudged SUPERBRANDS by the selection criteria followed by the Plaintiffs. They are then invited to earn the right to advertise and use the SUPERBRAND logo of the Plaintiffs upon or in relation to their products, office stationery, uniform, labels etc. The Plaintiffs explain that the SUPERBRANDS logo relates to the publication of the Plaintiffs as well as the SUPERBRANDS concept and programme as a whole, whereas the SUPERBRAND logo denotes a specific participating brand and is used as such upon specific products that qualify as SUPERBRANDS. The right to use the SUPERBRAND logo is granted on a fixed fee of Rs.6,20,000/- and for the duration of the tenure of the SUPERBRANDS edition. It is stated that as and when a participating brand accepts the invitation, the logo used by it is the SUPERBRAND logo. It is stated that the Plaintiffs have generated revenues to the tune of Rs.18 crores by such activities for the period 2004 to 2008. Some of the most prominent names in the industry in India have participated in the SUPERBRANDS Council.
7. Plaintiff No.1 has been granted registration for the word mark IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 4 of 26 „SUPERBRANDS‟ in Class 16 by the Trade Mark Registry. A certified copy of the certificate of the Registration No. 1149037 dated 29th October 2002 issued on 28th December 2005 has been placed on record. It indicates that the mark has been in use since 1st October 2002.
8. It is stated that the Plaintiffs distribute an average of 10,000 copies of their SUPERBRANDS publications free of cost among the top business managers and leaders as well as researchers, journalists, academicians and libraries. It is stated that some of the most prominent products and services display the SUPERBRAND label and logo. It is stated that SUPERBRANDS mark and logo developed by Plaintiff No. 1 to promote its SUPERBRANDS concept, programme and publications are well known marks and are associated with the Plaintiff No.1 in the relevant trade, among the public and others worldwide including India. In para 21 of the plaint the Plaintiffs have set out the figures of the revenue generated by the Plaintiffs‟ activities and their Indian SUPERBRANDS publications
9. It is stated that in November 2007 the Plaintiff No.2 came across a phenyl product in Jaipur bearing the impugned mark. The label indicated that it was marketed by Defendant No. 4 Priyanjan Overseas Inc. and manufactured by an entity, IN Chemical Industries. It is further stated that the mark used by Defendant No.4 on the product was a blatant imitation of the Plaintiffs‟ world renowned SUPERBRANDS logo and mark. The Plaintiffs through their attorneys served Defendant No.4 with a legal notice on November 16, 2007 drawing its attention to the Plaintiffs exclusive proprietary rights and goodwill in the SUPERBRANDS mark and logo and asking them to IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 5 of 26 forthwith cease and desist from using the impugned mark. The attorneys of the Defendant No.4 replied on 30th November 2007 denying the averments. It is stated that the Plaintiff No.2 further came across a range of other products in the market such as toilet cleaner, naphthalene balls, glass cleaner, dish washers etc. bearing the impugned SUPERBRAND logo and displaying the names of different entities on each product. It also came to the notice of the Plaintiff No.2 that Spencer‟s Retail Ltd. (Defendant No.7) was stocking and selling the impugned products.
10. On making further investigations, the Plaintiffs came to know that Defendant No.1 Superbrand Home Care Products Pvt. Ltd had been incorporated in April 2008 at Jaipur. A declaration by way of an affidavit had been made by Defendant No.2 Mahesh Sharma, the Director of Defendant No.1, to the Registrar of Companies (ROC) at the time of the registration to the following effect:
"SUPERBRAND is not a trade mark or branded name in Home care Products at present. If further find that name is trade mark or branded name we will be (sic) change of (sic) our company name."
11. The Defendant No.2 had also furnished to the ROC a declaration from its Trade Mark lawyers stating that the trade mark SUPERBRAND has been allotted to one M N Marketing of which Defendant No.2 was the proprietor. The search of the records of the Trade Mark Registry showed that the Defendant No.2 had applied for registration of the trade mark SUPERBRAND (Label) under Application No. 1623069 in Class 03 dated 21st November 2007. It appeared that the defendants were using various IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 6 of 26 domain names, www.superbrandproduct.com, www.superbrandproducts.com and www.superbrandindia.in. A WHOIS search of domain names showed that the aforementioned domain names had been registered in the name of the Defendant No.2 as of December 2007. It is pointed out that the labels on the products marketed by the Defendants carry the impugned SUPERBRAND (Logo) in two oval shaped rings with the letters „TM‟ in small font on the right hand top corner of the logo and a declaration to the effect that "SUPERBRAND is a registered trade mark of Priyanjan Overseas copy of it is a punishable offence". The search of the Trade Marks Registry in Mumbai shows that no registration had been granted in favour of the Defendant No.4 M/s. Priyanjan Overseas for the said mark.
12. According to the Plaintiffs the adoption by the Defendants of the mark „SUPERBRAND‟ is identical to the Plaintiffs‟ well known SUPERBRANDS mark and logo and an identical get-up, lay out and colour scheme was dishonest and motivated by a mala fide intention to usurp, trade upon the reputation and goodwill enjoyed by the Plaintiffs in their world famous SUPERBRANDS mark and logo. The Plaintiffs complain of infringement of their registered trade mark in violation of Section 29 (4) of the Trade Marks Act 1999 („TM Act‟). It is submitted that the declaration by Defendant No.4 that the mark SUPERBRAND used by it is a registered trade mark is a knowingly false declaration which is a criminal offence under Section 107 of the TM Act. The use by Defendant No.1 of the impugned SUPERBRAND name as part of its corporate name constitutes infringement of the registered trade mark SUPERBRANDS under Section IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 7 of 26 29 (5) of the TM Act. In terms of Section 20 of the Companies Act 1956 the Defendant No.1 could not have been incorporated with the trade mark of the Plaintiffs being part of its composite corporate name.
13. The Plaintiffs also complain of the infringement of their copyright in the artistic style and writing of the marks SUPERBRAND and SUPERBRANDS. The style and manner of writing of the mark SUPERBRAND on the labels of the Defendants‟ products is identical to the Plaintiffs; the Defendants‟ Superbrands logo (with the words Forever in smaller font in the bottom corner of the logo) is identical in font type and is placed in two oval shaped concentric rings in a manner that is almost identical to the Plaintiffs depiction of the SUPERBRAND logo on the products and services that qualify as SUPERBRANDS. Plaintiff No.1 claims to be the owner of the copyright in the said artistic logo and enjoys exclusive rights to reproduce and communicate the same in any form whatsoever including the right to license the use of the same by others. It is stated that such reproduction and use by the Defendants 1 to 5 without authority or permission of Plaintiff No.1 constitutes a blatant infringement of the copyright of Plaintiff No.1 in the said artistic logo.
14. On the basis of the above averments the suit was filed praying for relief of permanent injunction to restrain the Defendants from infringing the registered trade mark SUPERBRANDS, by using an identical trademark SUPERBRAND or any other confusingly, deceptively similar trade mark in any of the variants of the Plaintiffs trademark SUPERBRANDS as a service mark, trade name, trading style, advertisement slogan or in any other manner IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 8 of 26 in relation to their goods or services. Injunction was sought to restrain the Defendants from using domain names mentioned hereinbefore which were identical and phonetically, structurally, deceptively similar to the registered trademark SUPERBRANDS and domain names of the Plaintiffs. Permanent injunction was sought against the Defendant No.1 directing it to apply to the Registrar of Companies for deletion of the expression SUPERBRAND from its corporate name and substitute the same with some other word. The other prayers were for destruction of the infringing goods, rendition of accounts and damages in the sum of Rs.50 lakhs or such larger amount as may be determined. Along with the suit the Plaintiffs filed an application IA No. 13945 of 2008 under Order XXXIX Rules 1 & 2 CPC seeking an ad interim injunction.
15. On 7th November 2008 while directing the summons/notice to issue the following order was passed by this Court:-
"CS(OS) No.2321/08 and I.A.No.13495/08 Let the plaint be registered as suit.
Issue summons/notice to the defendants on the plaintiff taking steps within five days by all modes prescribed under Order V Rule 9 of the Code of Civil Procedure, 1908, for 21st January,2009 .
Counsel for the plaintiff has drawn my attention to the averments made in the plaint and the fact that petitioner's trade mark SUPERBRANDS is registered in India in class 16 and the said registration was granted on 29th October, 2002. It is also submitted that the defendants have violated the copyright of the plaintiff and have used the same getup and features. Counsel for the plaintiff has also drawn my attention to the correspondence exchanged between the parties and it is submitted that the defendant No.1 in spite of knowing full facts has gone ahead and thereby infringed the trade mark of the IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 9 of 26 plaintiff. Counsel for the plaintiff has also drawn my attention to the photographs of the products of the defendant and the products which are being marketed with the mark SUPERBRANDS.
In view of the facts and circumstances, defendant Nos. 1 to 5 are hereby restrained from introducing and launching new products under the brand name/mark/label ``SUPERBRANDS'` and ``SUPERBRAND forever'` till the next date of hearing. Defendant Nos. 1 to 5 will also not register any new domain name in which the brand name/mark/label `SUPERBRANDS'` and ``SUPERBRAND forever'` is mentioned.
It is clarified that defendant Nos. 1 to 5 can continue marketing products already launched by them under the brand name/mark/label ``SUPERBRANDS'` and ``SUPERBRAND forever'` till the next date of hearing, when further orders will be passed on the interim application. Defendant Nos. 6 and 7 will ensure that ex-parte interim order passed by this Court is complied with. Compliance of Order XXXIX Rule 3 will be made within five days."
16. The Defendants filed their joint written statement along with an application for condonation of delay on 29th April 2009. The delay was condoned on 25th May 2009. Thereafter two applications, viz., IA No. 11129 of 2009 under Order XXXIX Rules 1 & 2 CPC as well as IA No. 11128 of 2009 under Order XXVI Rule 9 CPC were filed by the Plaintiffs on 26 th August 2009. Separately the Plaintiffs also filed CCP (O) No. 104 of 2009.
17. On 31st August 2009 the following order was passed in IA No. 11129 of 2009:-
"IA No. 11129 of 2009 (u/O XXXIX Rules 1 & 2 CPC)
1. Despite service of advance copy of the application on the learned counsel for the Defendants, none appears despite one pass over.IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 10 of 26
2. It is stated by Mr. Sanjay Jain, learned Senior counsel appearing for the applicant/Plaintiff that notwithstanding the order dated 7th November 2008 passed by this Court restraining the Defendants from introducing and launching new products under the brand name/mark/label „SUPERBRAND‟ and „SUPERBRAND forever‟ till the next date of hearing, the Defendants have launched certain new products as mentioned in paragraphs 10.1 and 10.3 of the application. In addition, it is pointed out by learned Senior counsel for the Plaintiff that the label on the products being manufactured and marketed by the Defendants depicts the trade mark „SUPERBRAND forever‟ with the addition of word TM on the top making it appear as if it is a registered trade mark. In addition it is stated that the said mark is that of Priyanjan Overseas, even though it is the Plaintiff who is holding registration in respect of the trade mark „SUPERBRAND‟. It is submitted that all applicants filed hitherto by the Defendants for the said mark have either been withdrawn or rejected. Samples of the products bearing such mark have been shown to the Court. These samples be placed in a container which will remain sealed and be kept in the Registry of this Court with an appropriate identification, till further orders.
3. This Court is satisfied that the Plaintiff has made out a prima facie case for grant of an ad interim injunction restraining the Defendants, jointly and severally, their principal officers, partners, directors, affiliates, employees, servants, agents, distributors, licensees, assignees, successors-in-interest, stockists and all others acting for and on behalf of the said Defendants, from using the impugned trademarks `SUPERBRAND‟ and `SUPERBRAND forever‟ (words and logo) or any other mark or logo confusingly or deceptively similar to the applicants‟ SUPERBRAND mark upon or in relation to any of the products mentioned in paras 10.1. and 10.3 of this application.IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 11 of 26
4. As regards the products mentioned in Para 10.2 of the application, since it is shown to the court that in the labels used on these products the Defendants are claiming to be the registered owner of the trade mark, an ad interim order will issue restraining forthwith the Defendants from continuing to use the trade mark „SUPERBRAND‟ and „SUPERBRAND forever‟ on the products listed in Para 10.2.
5. Issue notice to the Defendants, returnable on 15th September 2009, the date already fixed.
6. After the above order was passed, Mr. Manav Kumar, learned counsel appeared and accepted notice on behalf of the Defendants."
18. I.A. 11128 of 2009 was filed by the Plaintiffs seeking the appointment of Local commissioners to visit the premises of the Defendants to seize the infringing goods. As far as the CCP (O) No. 104 of 2009 is concerned it was noted that according to the Plaintiffs despite the order dated 7th November 2008, the Defendants had launched certain new products using the impugned trade mark and labels „SUPERBRAND‟ and „SUPERBRAND forever‟. Notice was issued to the Defendant Nos. 2 and 3 i.e. Mr. Mahesh Sharma and Mr. Niranjan Sharma respectively.
19. On 22nd September 2009 replies were filed by the Defendants to the IA Nos. 11128 of 2009 and 11129 of 2009 as well as to the contempt petition. These were heard on 23rd September 2009. The Defendants 2 and 3 were present in Court and their statements on oath were recorded in the contempt petition.
IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 12 of 26
20. The submissions of Mr. Rajendra Kumar, learned counsel appearing for the Plaintiffs and Mr. Manav Kumar, learned counsel for the Defendants have been heard.
21. It is urged on behalf of learned counsel for the Plaintiffs that the infringement by the Defendants is both of the registered trade mark as well as the copyright of the Plaintiffs. The Plaintiffs hold registration of the mark SUPERBRANDS in Class 16 effective 29th October 2002. The certificate of registration issued by the Trade Marks Registry shows that the Plaintiff No.1 has used the trade mark in India since 1st October 2002. The Plaintiffs have showed that they have been present in the international market since 1994. The certificate of incorporation dated 25th May 1999 of Superbrands Limited in U.K. and Superbrands India Pvt. Ltd. of 10th December 2002 have been placed on record. The agency agreement between Plaintiff No.3 and Plaintiff No.1 dated 9th August 2002 has also been placed on record. The publication of the Plaintiffs using the trade mark SUPERBRANDS in UK and certain other countries have been placed on record. Copies of the Indian publications Superbrands and Superbrands Business have also been placed on record. They show that several Indian products including cleaners, dishwashers, detergents, soaps etc. have featured in the SUPERBRANDS publication as having been accorded the Superbrands status. The Plaintiffs state that retail outlets in the country (including Defendant No.7) display and market products carrying the SUPERBRAND logo as a quality mark. At pages 1478-1479 of the Plaintiffs‟ compilation of documents are colour photographs of the packaging of some of the known products displaying SUPERBRAND logo.
IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 13 of 26
22. The Plaintiffs have also placed on record at pages 78 to 81 and 1552- 1558 of their compilation of documents photographs of the labels used on the Defendants‟ products that display the logo „SUPERBRAND forever.‟ The marks and logos of the Plaintiffs and the Defendants are as under:
23. What is striking on a visual comparison is that words SUPERBRANDS is written in an identical artistic style as that of the Plaintiffs mark „SUPERBRANDS‟ and SUPERBRAND logo. The Defendants mark is also placed amidst two concentric oval shaped circles. In the Defendants‟ mark, the word mark SUPERBRAND written in the same style as the Plaintiffs‟ mark, is prominent and the word „forever‟ below it is comparatively of a smaller size in a different font that is barely noticeable from a distance. What is also evident is that significant is that the letters "TM" appear on the right hand top corner of the Defendants‟ logo to make it appear as if the Defendants have applied for registration of that trade mark.
24. In response to a query as how the Defendants could possibly display IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 14 of 26 „TM‟ as part of the logo used by them, it was submitted by learned counsel for the Defendants that they had filed applications for registration of the marks which were pending. A statement to this effect also finds place in para 3 of the written statement filed on 27th April 2009 supported by the affidavit of Mr. Niranjan Sharma, Defendant No.3 of the same date. This, however, appears not to be the correct position. The Plaintiffs have placed on record (along with IA No. 11129 of 2009 at pages 78 to 91) the internet search reports of the Trade Marks Registry generated on 22nd July 2009 which show the current status as regards the applications made by the Defendants for registration of the mark „SUPERBRAND forever.‟ Application No. 1391002 made on 13th October 2005 by Mrs. Priyamvada Mahesh Sharma with the address at Rajasthan was shown as having been „withdrawn.‟ Application No. 1391003 dated 13th October 2005 for the mark „SUPERBRAND forever‟ by the same Mrs. Priyanvada Mahesh Sharma is also shown as having been „withdrawn‟. Application No. 1623068 for the mark SUPERBRAND (LABEL) by Mr. Mahesh Sharma on 21st November 2007 was shown as „abandoned.‟ Application No. 1391004 in Class 5 for the mark SUPERBRAND forever by Mrs. Priyamvada Mahesh Sharma made on 13th October 2005 was also shown as having been withdrawn. Application No. 1623069 for the mark SUPERBRAND (LABEL) in Class 3 filed by Mahesh Kumar on 21st November 2007 was also shown as having been abandoned. In para No. 14 of I.A. No.11129 0f 2009 the Plaintiffs have made an averment to the above effect and have submitted that the representation of the Defendants mark with the letters „TM‟ amounts to a false representation under Section 107 of the TM Act. The reply by the Defendants to para 14 of IA No.11129 of 2009 is a point blank denial. In the IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 15 of 26 teeth of the document in the form of the internet search report, showing the status of the Plaintiffs‟ applications, which have not been denied by the Defendants, the stand of the Defendants is untenable. In the considered view of this Court it appears by prima facie that by displaying the letters TM in small font on the right hand corner of the logo SUPERBRAND Forever prima facie constitutes a violation of Section 107 TM Act. It also prima facie constitutes an infringement of the Plaintiffs‟ registered trade mark SUPERBRANDS as well as the Plaintiffs‟ copyright in the artistic work in the said logo.
25. In the contempt proceedings statements were recorded of Mr. Mahesh Kumar, Defendant No.2 and Mr. Niranjan Sharma, Defendant No.3. Mr. Mahesh Kumar produced a copy of the registration certificate in respect of the copyright in relation to the logo „SUPERBRAND forever‟ applied for by M/s. M.N. Marketing. The said application appears to have made on 7th September 2008 and the certificate was issued on 26th February 2009. Significantly the logo in respect of which the registration has been granted displays the letters „TM‟ on the top right hand corner. Considering that this is itself a prima facie violation of Section 107 TM Act the validity of a copyright registration of the artistic work in such logo is doubtful. Mr. Mahesh Sharma was aware of the order dated 7th November 2008 of this Court. He stated that only one new product had been launched thereafter and that too under the mark Big Brand. He stated that the three other products in the pipeline would be marketed under the mark Big Fresh. He undertook not to launch any new product using the mark Superbrand Forever. Mr. Mahesh IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 16 of 26 Sharma has stated on oath that Defendant No.1 was incorporated in 2008. The Plaintiffs have placed on record the certificate of incorporation of the Defendant dated 23rd April 2008. Mr.Mahesh Sharma has in his statement confirmed that M/s.Priyanjan Overseas, M/s.MN Marketing, M/s.Mani Industries are all either sister concerns or connected with the business activities of Defendant No.1 as manufacturers dealers or stockists of its products. A copy of the affidavit of Mr. Mahesh Sharma given to the ROC on 19th March 2008 undertaking to change the name of Defendant No.1 if there was a trademark or brand of the same name has also been placed on record. There is no denial by him that he gave such an affidavit.
26. Defendant No.3 Mr. Niranjan Sharma in his statement in Court on 23rd September 2009 stated that he is the sole proprietor of Defendant No. 4 M/s. Priyanjan Overseas Inc. He stated that he was aware of the order dated 7 th November 2008 passed by this Court. He confirmed all the statements made by Mr. Mahesh Sharma. It will be recalled that a legal notice was sent by the Plaintiffs lawyers on 16th November 2007 asking Defendant No.4 to cease and desist from infringing the registered trade mark „SUPERBRANDS‟ was replied to by its lawyers on 30th November 2007 bluntly denying such infringement. Therefore, Mr. Niranjan Sharma was fully aware of the legal consequences of infringing the Plaintiffs‟ registered trade mark SUPERBRANDS.
27. The incorporation of Defendant No.1 by using the name SUPERBRANDS in April 2008 after the receipt by Defendant No.4 in November 2007 of the cease and desist notice, appears prima facie to this IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 17 of 26 Court to be a dishonest attempt on the part of the Defendants to adopt and thereby infringe the registered trade mark of the Plaintiffs. The depiction of the mark „SUPERBRAND Forever‟ on the products of the Defendants is a virtual imitation of the artistic style and manner of writing of the Plaintiffs mark and logo SUPERBRANDS and SUPERBRAND. Prima facie the Defendants appear to have infringed the copyright of the Plaintiffs in the artistic work in the said logo.
28. It is fairly stated by learned counsel for the Defendants that they have not yet challenged the registration granted to the Plaintiffs of its word mark „SUPERBRANDS‟. It was however sought to be contended that under Section 124 (1) (b) TM Act it is still possible for the Defendants to adopt that course in the event that this Court finds that their plea regarding invalidity of the registration of the Plaintiffs is prima facie tenable. In support of such plea learned counsel for the Defendants submitted that the word mark SUPERBRANDS was merely descriptive and not distinctive. It is submitted that the word „SUPERBRANDS‟ was just a combination of two descriptive words and there was absolutely nothing distinctive about the mark. Reliance is placed upon the judgments of this Court in Austin Nichols & Co. v. Arvind Behl 2006 (32) PTC 133 (Del), M/s. Relaxo Rubber Limited v. Aman Cable Industries 1998 PTC (18) 759, Lowenbrau AG v. Jagpin Breweries Limited 2009 (39) PTC 627 (Del). Referring to Section 29 (4) of the TM Act it is submitted that the Plaintiffs have to show that their registered trade mark has a reputation in India and that since the Plaintiffs have been unable to establish that, they ought not be granted an injunction. Referring to Section 30 (2) of the TM Act it is stated that the use of the logo IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 18 of 26 SUPERBRAND forever in relation to the Defendants‟ goods was only to indicate the quality of the goods and did not amount to infringement.
29. This Court is unable to accept the above submission of learned counsel for the Defendants. It may be recalled that the Defendants themselves applied in October 2005 to the Trade Marks Registry for grant of registration for the marks SUPERBRAND forever and SUPERBRAND (Label). However, these applications were subsequently either withdrawn or abandoned. Having themselves applied for grant of registration for the mark SUPERBRAND, the Defendants cannot be heard to challenge the distinctiveness of the Plaintiffs‟ registered mark SUPERBRANDS. They have also adopted these word marks for their domain names as well. The fact remains the trade mark registration in favour of the Plaintiffs for the mark „SUPERBRANDS‟ subsists. It has not been objected to or sought to be rectified by the Defendants. The rights of a proprietor of a registered mark under Section 28 (1) TM Act have to be given effect to as long as the registration subsists.
30. It is not as if a descriptive mark is not entitled to any protection whatsoever. The mark could be shown as having gained a secondary meaning identifying it with a particular product or being from a particular source [See Godfrey Philips India Limited v. Girnar Food & Bewerages (P) Limited 2005 (30) PTC 1 (SC)]. The mark SUPERFLAME was held to be entitled to protection (See Globe Super Parts v. Blue Super Flame Industries AIR 1986 DELHI 245). Although in McCarthy on Trademarks it is stated that the use of the laudatory prefix „super‟ often will IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 19 of 26 be taken by the customers as merely a description of the user or strength of the product, the Plaintiffs have been able to show prima facie that the concept of SUPERBRANDS envisages the evaluation of the strength of the brand by a select jury of qualified professionals. A qualifying of a brand as a SUPERBRAND is indicative of its quality. When the product displays the SUPERBRAND logo it indicates to the consumer that it is of high quality. When such product is displayed in juxtaposition with the Defendants products which display the infringing mark and logo, written and depicted in the same style and manner as the Plaintiffs‟ mark SUPERBRANDS and logo SUPERBRAND, it is likely to deceive the unwary customer into thinking that the Defendants products either enjoy the same reputation and quality as a SUPERBRAND so certified by the Plaintiffs or that such products emanate from the Plaintiffs.
31. It appears to this Court, and this is the crux of the matter, that the complete give away as far as the Defendants intentions is the identical manner of depiction of the word SUPERBRAND on the labels of its products; in claiming on the label that it is a registered mark and in using the letters TM on the right hand corner of the logo. Notwithstanding their characterization of the Plaintiffs‟ mark as a mere combination of descriptive words, the Defendants attempt has been to blatantly imitate not only the mark but also the manner and style of its depiction. The Defendants persistence with the use of the mark not only on the products manufactured and sold by it but to also use it as part of the corporate name of Defendant No.1, and domain names on the internet, much after the cease and desist notice served on Defendant No.4 is another indication of the dishonest IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 20 of 26 intention of the Defendants to adopt and infringe the registered trademark as well as the copyright of the Plaintiffs.
32. The only ground on which the Defendants can resist an injunction is under Section 34 of the TM Act in which case the Defendants would have to show that they are prior users of the mark. Although the Defendants had several opportunities, at the time of filing the written statement and at the time of filing replies to the present applications, to produce documents to show that they were prior users of the mark „SUPERBRAND forever‟, they have failed to do so. On the other hand the Defendants have themselves placed on record the details furnished by them at the time of filing the applications for grant of the registration for their marks. In each of the applications, Nos. 1391002, 1391003, 1391004 all filed on 13th October 2005, against the Column „period of use‟ Defendant No.4 stated "proposed to be used". The Defendants have produced (at pages 132 to 141 of the Defendants‟ compilation) copies of the bills cash/credit memos for sale of products bearing the mark SUPERBRAND. The earliest of these bills is dated 13th April 2004.
33. As far as the Plaintiffs are concerned they have been able to show presence in the international arena since 1999 at least. As pointed out in Milmet Oftho Industries v. Allergan Inc (2004) 12 SCC 624, the mere fact that the Plaintiffs may not have using the mark in India during the time the infringer began using the mark, "would be irrelevant if they were first in the world market." The Defendants have not able to show that they were marketing their products using the SUPERBRANDS mark or label or logo IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 21 of 26 earlier than 1999. In India the Plaintiffs‟ trade mark registration certificate and the date of incorporation of Plaintiff No.2 show use of the word mark SUPERBRANDS from October 2002. There are copies of the foreign publications of SUPERBRANDS of 2003 and earlier. The Indian publication of SUPERBRANDS is of 2004. For all of the above reasons, it is held that the Plaintiffs have made out a prima facie case for grant of an interim injunction as prayed for.
34. At this stage it must be mentioned that learned counsel for the Defendants at the time of arguments sought to place on record further documents to show that the Defendants were the prior user. This Court declined the request since as it was not considered to be reasonable given that the Defendants had several opportunities to place such documents which must obviously have been in their possession even at the time of filing their written statement.
35. The order dated 31st August 2009 passed by this Court noted that the limited injunction granted on 7th November 2008 which permitted the Defendants to continue marketing the products which were already in the market by that date, did not stop the infringing activities of the Defendants. They did launch one new product i.e. Agarbati using the mark and logo SUPERBRAND Forever. Of course the Defendants 2 and 3 have now undertaken before the court that they will not hereafter use the mark and logo SUPERBRAND Forever on any new product. However, given the conduct of the Defendants and the dishonest attempts by them even after receiving the cease and desist notice to use the mark SUPERBRAND as part IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 22 of 26 of the corporate name of Defendant No.1, and as domain names on the internet, and to continue marketing their products by blatantly imitating the word and style of writing of the Plaintiffs‟ registered mark and logo and the resultant deception and confusion it is likely to cause in the trade, this Court is of the view that the balance of convenience in granting an interim injunction as prayed for by the Plaintiffs is in favour of the Plaintiff. In other words the Plaintiffs have made out a case for grant of an interim injunction against the Defendants using the mark and logo SUPERBRAND Forever in respect of all their products including the 48 products listed in para 8 of IA No. 11129 of 2009 (which is identical to the list in para 2 of the preliminary objections out in the written statement).
36. It is clarified that the present order is a prima facie opinion based on the materials on record at this stage and is not intended to influence the final order that may be passed by the court on an independent assessment of the evidence that emerges during the trial.
37. For all the aforementioned reasons, the two applications IA No.13495 of 2008 and IA No. 11129 of 2009 are disposed of with the following directions:
(i) An interim injunction will issue restraining the Defendants, jointly and severally, their principal officers, partners, directors, affiliates, employees, servants, agents, distributors, licensees, assignees, successors-in-interest, stockists and all others acting for and on behalf of the said Defendants, from infringing or causing infringement of the Plaintiff No.1‟s registered trade mark SUPERBRANDS, by IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 23 of 26 using the identical trademark SUPERBRAND or any other confusingly or deceptively similar trademark in any variants of the Plaintiffs‟ trademark SUPERBRANDS whether singularly or in conjunction with any suffix, prefix or logo, including but not limited to the expression "forever"
(ii) An interim injunction will issue restraining the Defendants, jointly and severally, their principal officers, partners, directors, affiliates, employees, servants, agents, distributors, licensees, assignees, successors-in-interest, stockists and all others acting for and on behalf of the said Defendants, from using the impugned trademarks SUPERBRAND and SUPERBRANDS forever (words and logo) or any other mark or logo confusingly/deceptively similar to the Applicants SUPERBRANDS mark upon or in relation to:
(a) any products manufactured or being manufactured subsequent to the order dated November 7, 2008 of this Court and being marketed by the Defendants or any of them;
(b) any new products introduced and launched subsequent to the order dated November 7, 2008 including but not limited to Henna, Agarbatti, Gulabari, Dishwasher orange, fragranced phenyle.
(iii) An interim injunction will issue restraining the Defendants, both jointly and severally, their principal officers, partners, directors, affiliates, employees, servants, agents, distributors, licensees, assignees, successors-in-interest, stockists and all others acting for and on behalf of the said Defendants, or anyone associated with them from infringing the Applicants registered trade mark SUPERBRANDS and its registered domain name www.superbrandsindia.com by using IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 24 of 26 www.superbrandproduct.com or any other combination of words/letters that may be identical to or phonetically/ structurally/deceptively similar to the registered trade mark SUPERBRANDS of the Applicants as domain names/website addresses and further restrain the Defendants jointly or severally from seeking registration of any identical or confusingly/deceptively similar expressions as domain names whether singularly or in conjunction with any other word used as a prefix or suffix.
(iv) an interim injunction will also issue restraining the Defendants, their partners, affiliates, employees, assignees, successors-in-interest, licensees, distributors, stockists and agents or anyone associated with them from infringing the Applicant No.1 and 2‟s copyright in the artistic work comprised in the font and writing style of projecting its work mark SUPERBRANDS, its colour scheme, get up, lay out and over all configuration and that vesting in its logo depicting an concentric rings within an oval encasing/incorporating the word mark SUPERBRANDS by reproduction/copying, or causing reproduction/copying in an identical or confusingly/ deceptively similar manner whether by print or otherwise.
(v) An interim mandatory injunction will issue directing the Defendant No.1 or its successor-in-interest it to apply within a period of three weeks from today to the Registrar of Companies for deletion of the expression SUPERBRAND from its corporate name and substitute the same with such other word, which does not infringe the Applicant No.1‟s registered trademark SUPERBRANDS in any manner and which does not include the above expression as a distinct word or in IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 25 of 26 conjunction with any other word used as a prefix or suffix.
38. Consequent upon the above directions, the Defendants will immediately write to each of their stockists, retailers and wholesellers informing them of the order passed today asking them to forthwith stop marketing any of the Defendants products using the mark, label or logo SUPERBRAND forever. The Defendants will forthwith withdraw from the market all such products. The Defendants will be permitted to market their products either by using the marks "Big Fresh" or "Big Brand" as undertaken by Defendants 2 and 3 but not depicted or written in any manner deceptively similar to the Plaintiffs‟ mark and logo SUPERBRANDS and SUPERBRAND.
39. The interim injunction in the above terms is made absolute during the pendency of the suit. The applications are disposed of.
S. MURALIDHAR, J SEPTEMBER 25, 2009 rk IA 13495/2008 etc. in CS (OS) No. 2321/2008 Page 26 of 26