Delhi District Court
Krbl Limited vs Manoj Sah on 27 March, 2023
IN THE COURT OF DISTRICT JUDGE
(COMMERCIAL COURT-02)
SOUTH DISTRICT, SAKET COURTS: NEW DELHI
CS (COMM) 385/2019
KRBL Limited ..........plaintiff
Registered Office at 5190,
Lahori Gate, Delhi -110006
Corporate Office at :
C-32, 5th & 6th Floor,
Sector-62, Noida-201301 (UP)
Versus
1. Manoj Sah ........Defendant no. 1
S/o Paras Sah,
Lohapatti, Sursand Bazar,
Sursand, District Sitamarhi,
Bihar-843324
2. Reshma Devi ..... Defendant no. 2
W/o Manoj Sah,
Lohapatti, Sursand Bazar,
Sursand, District Sitamarhi,
Bihar-843324
3. John Doe ..... Defendant no. 3
Date of institution : 27.11.2019
Date of submissions : 06.03.2023
Date of Judgment : 27.03.2023
JUDGMENT
1. This is a suit for permanent injunction seeking to restrain, infringement, disparagement of trademark and damages. Case of the plaintiff in brief, is that it is a duly incorporated Indian company since 1993 engaged in the business of KRBL VS MANOJ SAH & ORS. page no. 1 of 16 processing, marketing and exporting of Rice of various kinds including Basmati Rice. It is stated that plaintiff is the world's largest basmati rice miller and exporter, who has changed the dynamics of basmati rice worldwide and the said fact has also been telecasted by the world renowned Discovery Channel in its exclusive program "GOD OF GRAINS" where the plaintiff's business has been closely observed and put before the world.
2. It is pleaded that in the year 1993, plaintiff through its predecessors, bonafidely and honestly adopted and started using the Trademark/Label INDIA GATE with device of INDIA GATE, in relation to their said goods and business and that since 1993, the plaintiff (through its predecessor or by itself) has been openly and exclusively using the trademark INDIA GATE in relation to its goods and business. It is stated that the trademark INDIA GATE (with or without the device of India Gate) is inherently distincive and the said trademark is being used for rice and its allied and cognate goods/services. It is stated that the trademark INDIA GATE has no reference to the kind of goods it is applied/used for and therefore, it classifies as an arbitrary mark which is entitled to the highest extent of protection and that the arbitrary trademark INDIA GATE with its long and extensive use for past many decades, has acquired a secondary significance with respect to the goods it is used for. It is stated that the trademark INDIA GATE (with or without the device of India Gate) is associated with the plaintiff in respect of the goods it is used for and, therefore, entitled to broadest protection. It is stated that the owing to long standing and extensive use, the plaintiff has built up a valuable trade, goodwill and reputation under its flagship brand INDIA GATE both in India and overseas and KRBL VS MANOJ SAH & ORS. page no. 2 of 16 plaintiff has been carrying on its business in India as well as Overseas through exports from India export of the plaintiff's product in the said trademark/label in foreign country does amount to use in India within the meaning of Section 56 of Trade Marks Act,1999.
3. It is further averred that plaintiff has acquired rights in the Registered Trademark INDIA GATE under no. 599833 in Class 30 from Mr. Ram Pratap, 81, Reghar Pura, Karol Bagh, New Delhi 110005 vide Deed of Assignment dated 06.08.2019 and in view of the said assignment the mark INDIA GATE was subsequently registered in favour of the plaintiff KRBL Limited vide Registration Certificate issued on 12.08.2019 effective from 18.06.1993. It is stated that plaintiff's use in the mark INDIA GATE further improved since 01.01.1979. It is further stated that plaintiff's trademark BABAL HIND is duly registered in favour of the plaintiff under the Trademark Act, 1999 under no. 1359845 as of 27.05.2005 in relation to rice in class 30 and the said registration is valid and has been renewed by the plaintiff from time to time. It is stated that the said application was filed on "Proposed to be used" basis, however, the plaintiff had subsequently started using the said trademark in respect of the goods it was applied. It is stated that the the word BABAL HIND in the Arabic language means INDIA GATE and the plaintiff has been using the said word/trademark BABAL HIND in relation to its said goods and business for the purpose of export.
4. Case of the plaintiff further is that in order to seek global protection and in recognition of its rights, plaintiff also filed applications for registrations of its trademark INDIA GATE (word/device/label) in various countries like Middle East KRBL VS MANOJ SAH & ORS. page no. 3 of 16 countries, E. U., North America, Australia, New Zealand etc.. It is stated that trademark of the plaintiff bears original artistic features of placement, distinctive get up, makeup, lettering style etc., and the terms 'the said Trade Mark/Label' includes its artistic features and the said artistic work falls within the meaning of Indian Copyright Act 1957 and the plaintiff is the owner and registered proprietor thereof. It is stated that copyright in the trademark INDIA GATE is duly registered under NO. A- 75495/2006 under the Copyright Act and also been granted another copy registration under no. A-103239/2013 for the trademark INDIA GATE BASMATI RICE CLASSIC (LABEL) . It is stated that the said copyrights of the plaintiff is enforceable within the ambit of Copyright Act 1957 as well as by virtue of India's membership to the Berne Convention, the Universal Copyright convention and the International Copyright Order 1991.
5. It is stated that plaintiff also displays its wide range of products/variants under the flagship brand/Trademark INDIA GATE on the internet through its website namely, www.krblrice.com and the said website contains extensive information about the goods and business provided by the plaintiff under its trademark INDIA GATE. It is stated that the said website of the plaintiff has thousands of visits from people looking for information about the plaintiff's innumerable and wide spectrum of business and its goods/services and is interactive in nature. It is stated that plaintiff has already built up a valuable trade under its trademark INDIA GATE and conducted business .
KRBL VS MANOJ SAH & ORS. page no. 4 of 16
6. It is also averred that the plaintiff has regularly and continuously been promoting its distinctive trademark and the goods and business thereunder through extensive advertisements, publicities, promotions and marketing research. It is stated that plaintiff has always been engaged in sales promotional activities by participating in exhibitions, giving special discount offer and also participation with big and renowned retailers in different parts of the country. It is stated that plaintiff maintains the highest quality in relation to its product under the trademark/label INDIA GATE with DEVICE OF INDIA GATE. It is stated that plaintiff's trademark INDIA GATE has all become distinctive , associated and acquired secondary significance with the plaintiff and plaintiff's goods and business and the consumers, general public in the trade and industry at large are able to distinguish the plaintiff's goods under the trademark/brand INDIA GATE from the other goods and can also identify the plaintiff's source and origin alone. It is stated that the plaintiff's trademark INDIA GATE is a well known trademark within the meaning of Section (1) (zg) of the Act and the notification to this effect has been published in official Trademark Journal No. 1915 dated 19.08.2019 at page no. 8330.
7. Plaintiff further pleaded plaintiff has been taking action against various pirates and infringers , who tried to adopt/use INDIA GATE or confusingly similar trademarks/trade dress and the present case relates to the international and deliberate, denigration, disparagement and defamation by D-1 and D-2 and different other persons at the website /social media platforms of D-3 to D-5of the plaintiff's product (basmati rice) under the trademark INDIA GATE . It is pleaded that since exact KRBL VS MANOJ SAH & ORS. page no. 5 of 16 particulars of defendants other D-1 and D-2 are not known, D-6 has been impleaded as "John Doe" who would replaced by the exact person upon ascertaining their nature, constitution and whereabouts from D-3 to D-5 or other sources.
8. Case of the plaintiff further is that on 15.11.2019, plaintiff received a phone call from D-1 alleging that the packaging of INDIA GATE Basmati Rice purchased by him contained a dead lizard. The plaintiff informed the concerned sales manager of that area , who contacted the local distributor of Sitamadhi , who sent his employee to verify the exact position. It is stated that the said employee met D-1, who stated that a dead lizard was found but nothing was shown to him despite request. It is averred that on 17.11.2019, plaintiff came to know that fake news of its product basmati rice under the trademark INDIA GATE containing dead lizard in one of its packaging circulated on the social media platforms/websites of Facebook i.e. www.facebook.com and Youtube i.e. www.youtube.com . Thereafter, plaintiff caused search on said websites and found umpteen number of facebook pages including that of online media showing the said video and news based thereon. It is stated that plaintiff also came across news article and could trace out the 'urls' of Youtube, Facebook and other websites, which are provided in paras 30 & 31 of the plaint alongwith screen shots.. It is averred that plaintiff through its distributor in Bihar, could not trace out the actual person. It is pleaded that impugned video titled as "INDIA GATE CHAWAL ME NIKLA GIRGIT"
appeared to be planted by some competitor of plaintiff in collusion and connivance with D-1 and D-2, which was prepared by one Sh. Raju Kumar Soni, news reporter running channel in KRBL VS MANOJ SAH & ORS. page no. 6 of 16 the name of "Breaking News Hit Songs RajuSoni" It is pleaded that D-1 and D-2 are intentionally making false allegations at the behest of some competitor of the plaintiff and a careful watch of the impugned video speaks volume of defendant's falsehood.
9. Case of the plaintiff further is that D-3 Facebook,Inc and D-4 Facebook India are running and managing the website namely www.facebook.com and D-5 YouTube LLC is the platform on which disparaging video and news articles were circulated and displayed. It is averred that D-3 to D-5, who were impleaded as party in the present suit as the impugned activities were being carried on the said defendant's websites over which they had complete control and supervision were ordered to be deleted by this Court. It is pleaded that impugned video and news articles are meant for damaging the tremendous goodwill and reputation of basmati rice under the trademark INDIA GATE at the instance of some competitor . It is stated that plaintiff holds a major market share in domestic as well as foreign rice markets and such defaming activities would cause irreparable harm to the plaintiff's sale of rice. It is averred that bare perusal or watch of the impugned video and news articles clearly give an impression to the common public at large that plaintiff's basmati rice under the trademark INDIA GATE are of extremely inferior quality and without having quality mechanism at place. It is averred that impugned video and news articles are diluting tremendous goodwill and reputation of the plaintiff's product, basmati rice under the trademark INDIA GATE. Hence, the present suit seeking for permanent injunction for restraining the defendants and its agents from infringing, defamation, denigration and disparagement of the Trademark has been filed.
KRBL VS MANOJ SAH & ORS. page no. 7 of 16
10. On 27.11.2019, alongwith the suit, an application u/O XXXIX rule 1 & 2 CPC was moved and Defendant no. 1 and 2 were injuncted from uploading or circulating the videos in question, or any other similar videos, articles or material with web, having any adverse effect upon the reputation and of the plaintiff and defendant no. 3 to 5 were directed to block all the mails, website and articles and other materials , referred to in para 30 of the plaint. It was further directed that identity of D-6 was not known to the plaintiff, D-3 to D-5 would accordingly, ensure that no such mail was either allowed to upload or circulated by any other person/individual in the interest through their websites/applications till next date of hearing.
11. As this suit came within the ambit of Commercial Court Act 2015 therefore, this case was received by way of transfer to this Court on 27.01.2020. On 23.07.2020, Ms. Sanyukta Banerjie counsel for D-5 appeared and e-filed application u/O XXXIX rule 4 CPC. On 29.07.2020, Sh. Ajit Warrier counsel for D-3; Sh. Nayantara counsel for D-4 and Ms. Sanyuka banerjie with Sh. Siddharth Vardhman counsels for D-5 appeared. On that day, D-4 Facebook India was ordered to be deleted from the arrays of parties.
12. It was further ordered that defendant no. 3 and 5 would block/take down all the material/URLs referred in para 30 and 36 respectively of the plaintiff. In case, plaintiff bring to the notice of the Court any further URLs and Court finds/determines specifically that the contents of URL is to be blocked/taken down, the D-3 and D-5 shall block/take down those URLs as well as on receipt of order of this Court. On 16.03.2021, it was noted that on 15.12.2020, D-3 filed statement of admission/denial KRBL VS MANOJ SAH & ORS. page no. 8 of 16 of documents qua documents filed by plaintiff and an affidavit, explaining its inability to furnish email IDs of D-1 and D-2 as directed by this Court vide order dated 29.07.2020; written statement and reply alongwith supporting affidavit to plaintiff's application u/O XXXIX rule 1 & 2. On 05.04.2022, the names of defendants namely, D-3 Facebook Inc (now Meta Platforms Inc) and D-4 Youtube LLC, (now Google LLC) were ordered to be deleted from the array of defendants and D-1 was proceeded exparte. There was also no appearance on behalf of D-2 Reshma Devi despite service of summons, so she was proceeded exparte vide order dated 23.09.2022.
13. This court has heard submissions advanced by Sh. Sudarshan Kumar Bansal with Sh. Saurabh Arora and Sh. Vaibhav Jairath Learned counsels appearing for the plaintiff and perused the material on record.
14. Ld. counsel for plaintiff submitted that the Defendant Nos. 1 and 2, in the mid-week of November, 2019 had made false allegations against the Plaintiff that a dead lizard was allegedly found in the packaging of basmati rice bearing the Plaintiff's INDIA GATE trademark. It is submitted that the said false allegations of the Defendants have been made through various URLs, the contents of which have exhibited as EX. PW 1/19 and the Defendants had not shown any proof of such allegation and had been indulging in disseminating defamatory videos and articles on social media websites, online news portals, print media etc. It is submitted that the conduct of the Defendants No.1 and 2 were prima facie dishonest and malafide and due to the impugned activities of disparagement and defamation committed by the Defendant Nos. 1 and 2, the hard-earned KRBL VS MANOJ SAH & ORS. page no. 9 of 16 goodwill and reputation of the Plaintiff as well as its INDIA GATE trademark have been illegally tarnished and eroded. It is submitted that the contents of the said impugned URLs created serious doubts over the Plaintiff's quality control mechanism and thus, the acts committed by the Defendants prejudiced the reputation, goodwill and trust which the Plaintiff has built amongst its consumers for the past many decades.
15. Ld. Counsel for plaintiff further submitted that the impugned activities of the Defendants amounted to infringement of Plaintiff's INDIA GATE trademark under sections 29(8) and 29 (9) of the Trade Marks Act, 1999. It is submitted that Plaintiff is seeking such an injunction whereby the Defendant No.1 will be permanently restrained from displaying, disseminating, propagating the URLs containing the impugned videos and news articles in relation to Plaintiff's basmati rice under the trademark INDIA GATE either physically or in electronic form. It is further submitted that besides the damages prayed for by the Plaintiff in its Plaint, the Plaintiff is also entitled to punitive damages. Plaintiff has prayed for Rs. 3 lacs as punitive damages and costs of litigation.
16. Ld. Counsel for plaintiff placed reliance on judgments namely, (i) Hamdard National Foundation & Anr. Vs Hussain Dalal & Ors (2013) 202 DLT 291; (ii) Midas Hygiene Industries Pvt Ltd vs Sudhir Bhatia And Ors 2004 (28) PTC 121 SC; (iii) KEI Industries Pvt Ltd Vs Raman Kwatra and Anr. 2022 SCC Online Del 1459 and (iv) Heels vs V. K. Abrol & Anr. 2006 SCC Online Del 1865
17. To prove its case, plaintiff examined Sh. Himalaya Koul s/o Sh. Virendra Koul as PW-1, who placed on record KRBL VS MANOJ SAH & ORS. page no. 10 of 16 Coloured Photocopy of photographs of the product under the Trademark/label/trade-dress/packaging of the plaintiff Ex. PW1/A-1 to A-8; Extract of Board Resolution dated 08.11.2021 Ex. PW1/2; Certificate of incorporation Ex. PW1/3A; Fresh Certificate of incorporation consequent upon change of name Ex. PW1/3B; and agreement dated 01.04.1996 Ex. PW1/3-C; status of registration no. 599833 dated 21.02.2020 Ex. PW/4A; Certificate of Registration certificate of TM application no. 599833 Ex. PW1/4B; Renewal Certificate of TM application no. 599833 Ex. PW1/4C showing renewal from 18.06.2003 to ten years; Second renewal certificate of TM application no. 599833 Ex. PW1/4D showing renewal from 18.06.2013 to ten years; Form TM - M for amendment dated 07.08.2019 Ex. PW1/4E; Deed of Assignment dated 06.08.2019 alongwith consent letter Ex. PW1/4F; Form TM - M for authorization of agent dated 06.08.2019 Ex. PW1/4G; Journal Ex. PW1/4H; receipt dated 25.11.2019 of certified copy u/s 137 of Trademark Ex. PW1/4-I; Form TM-1 dated 23.06.2007 Ex. PW1/4-J; status page dated 08.09.2020 of registration no. 1359845 for trademark BABAL HIND Ex. PW1/5A; Registration certificate dated 27.05.2005 TM application no. 1359845 Ex. PW1/5B; page no. 8314 of TM Journal no. 1339 suppl. (1) dated 15.02.2006 Ex. PW1/5C; receipt dated 26.11.2019 of certified copy u/s 137 of Trademark Ex. PW1/5-D and legal proceeding certificate dated 29.11.2018 Ex.PW1/5-E; copyright registration certificate under no. A- 75495/2006 dated 28.01.2006 Ex.PW1/6; page of official website of plaintiff Ex. PW1/7A and Ex. PW1/7B; certificates from CA for sales figures and advertisement figures of the plaintiff of trademark INDIA GATE Ex. PW1/8A to E; Invoices with respect KRBL VS MANOJ SAH & ORS. page no. 11 of 16 to Domestic Sales of the plaintiff Ex. PW1/9; Invoices with respect to Export sales of the plaintiff Ex. PW1/10; print outs showing availability of plaintiff's goods under its brand INDIA GATE at its own website and third party website Ex. PW1/11; newspaper advertisements, magazine advertisements, trade magazine advertisements since 2002 Ex. PW1/12; events organized/sponsored by the plaintiff company; social media presence and awards conferred to the plaintiff Ex. PW1/13; notification showing publication of declaring plaintiff's trademark INDIA GATE as a well known mark Ex. PW1/14A alongwith page no. 8330 of TM Journal no. 1915 dated 19.08.2019 Ex. PW1/14B, list of well known trademarks as published by Trademark Registry showing plaintiff's trademark INDIA GATE at sl no. 92 of the list Ex. PW1/14C; print out of trademark application no. 1580378 Ex. PW1/15A; status page Ex. PW1/15B; Form TM-M dated 30.09.2019 Ex. PW1/15C; TM 48 dated 20.11.2015 Ex. PW1/15D; of trademark application no. 1580382 Ex. PW1/16A; trademark application no. 1436477 Ex. PW1/17A and ancillary uploadation with respect to the present trademark Ex. PW1/7B; of trademark application no. 1425701 Ex. PW1/18A and ancillary uploadation with respect to the present trademark Ex. PW1/18B and impugned web pages alongwith URLs showing impugned activities of defendant are Ex. PW1/19.
18. This Court has perused the material on record and evidence led by the plaintiff. The testimony of PW-1 has remained unrebutted. This Court finds that plaintiff has succeeded in establishing that plaintiff is the proprietor of registered trademarks "INDIA GATE with device of India Gate"
KRBL VS MANOJ SAH & ORS. page no. 12 of 16 and that the registered trademarks "INDIA GATE with device of India Gate" are well known marks as defined u/s 2 (1) (zg) of the Trademark Act.The aforenoted evidence and the facts brought on record show that the plaintiff has the exclusive right to use the aforenoted trademarks and defendant no. 1 and 2 are misusing and infringing the trademarks of the plaintiff by way of disparagement, denigration and defamation. This not only causes loss of profit to the plaintiff but also results in the tarnishment of goodwill and reputation of plaintiff.
19. On appreciation of evidence on record, this Court is satisfied that defendant no. 1 and 2 are liable to be injuncted from uploading or circulating the videos in question, or any other similar videos, articles or material with web, having any adverse effect upon the reputation and of the plaintiff, who being the holder of a registered trademark is entitled to protection against its infringement, defamation disparagement and denigration.
20. In view of the aforesaid reasons, this Court finds that plaintiff is entitled to a decree of permanent injunction against the defendant no. 1 and 2, their directors, principals, proprietors, partners, officers,employees representatives and all other persons acting through them and on their behalf from displaying, disseminating, propagating the impugned video and news article based thereon in relation to plaintiff's basmati rice under the trademark INDIA GATE either physically or in electronic form which amounted to infringement of plaintiff's registered trademark bearing no. 599833 in class 30 u/s 29 (8) and 29 (9) of the Trademark Act, 1999 and also amounted to denigration, and disparagement as well as dilution of the plaintiff's basmati rice under the trademark INDIA GATE with KRBL VS MANOJ SAH & ORS. page no. 13 of 16 device of INDIA GATE and the goodwill and reputation of the plaintiff. Defendant no. 3 to 5 although deleted from array of parties vide orders dated 29.07.2020 and 05.04.2022, must not provide any support to infringing content as uploaded by defendant no. 1 and 2 and shall take necessary steps to remove and block such infringing content.
21. Rendition of account by the defendants and delivering up of the impugned finished and unfinished goods is not pressed as defendant no. 1 and 2 have failed to appear and are exparte.
22. Ld. Counsel for plaintiff has prayed for costs and damages. Ld. Counsel for plaintiff submitted that this Court has jurisdiction to grant nominal damages and punitive damages over and above any pleadings by the plaintiff. In Jockey International Inc & Anr. Vs R. Chandra Mohan & Ors. 2014 (59) PTC 437 (Del) in para 43, it was held that damages must be awarded in such cases where defendants choose to stay from the proceedings of the Court and that defendants should not be permitted to enjoy the benefits of evasion of Court proceedings. A party who chooses not to participate in Court proceedings and stays away must suffer the consequences of damages as it cannot produce its account books. There is larger public purpose involved to discourage such parties indulging in such rights of deception and even if the same has a punitive element, it must be granted.
23. In Hero Honda Motors Ltd. vs Shree Assuramji Scooter's case (supra), our High Court observed about the need of awarding damages against defendants who chose to stay away from the proceedings of the Court. It was further noted that every endeavour should be made to discourage such parties which KRBL VS MANOJ SAH & ORS. page no. 14 of 16 indulge in acts of deception. The time has come when the Courts dealing with actions for infringement of trade marks, copy rights, patents, etc. even by way of disparagement, defamation and denigration should not only grant compensatory damages but award punitive damages with a view to discourage and dishearten law breakers who indulge in violations with impunity out of lust for money so that they realize that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay punitive damages also, which may spell financial disaster for them. Having regard to the totality of the facts and circumstances noted above, this Court is of the considered view that plaintiff is entitled to lumpsum costs of Rs.1,00,000/- on account of economic and commercial advantage which the defendants tried to gain at the expenses of the enviable reputation which has been created by the plaintiff apart from injunction. Moreover, Plaintiff is entitled to costs towards pleader's fee litigation expenses and Court fees . The present suit was filed on 27.11.2019 and number of hearing have taken place in this case. Litigation expenses are assessed as Rs. 22,000/- and court fees deposited by the plaintiff is Rs. 6500/-.
24. In view of the aforenoted findings, the suit of the plaintiff is decreed. A decree of permanent injunction in favour of plaintiff and against the defendant no. 1 and 2 is hereby passed. Defendant no. 1 and 2, their directors, principals, proprietors, partners, officers,employees representatives and all other persons acting through them and on their behalf from displaying, disseminating, propagating the impugned video and news article based thereon in relation to plaintiff's basmati rice under the trademark INDIA GATE either physically or in electronic form KRBL VS MANOJ SAH & ORS. page no. 15 of 16 which amounted to infringement of plaintiff's registered trademark bearing no. 599833 in class 30 u/s 29 (8) and 29 (9) of the Trademark Act, 1999 and also amounted to defamation, denigration, and disparagement as well as dilution of the plaintiff's basmati rice under the trademark INDIA GATE with device of INDIA GATE and the goodwill and reputation of the plaintiff. Original defendant no. 3 to 5 shall not provide any support to infringing content as uploaded by defendant no. 1 & 2 and shall take steps to remove and block such infringing content.
25. Moreover, in view of the aforenoted discussion, plaintiff is held entitled to total costs of Rs.1,28,500/-. Decree sheet be drawn up accordingly. File be consigned to record room. (Dictated and announced on 27th March ,2023) (VINAY KUMAR KHANNA) District Judge (Commercial Court-02) South Disttt., Saket, New Delhi.
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