Delhi District Court
Shri Ram Niwas Mittal vs M/S H. R. Narrow Fabrics on 25 October, 2012
1
IN THE COURT OF SHRI MAN MOHAN SHARMA
ADDITIONAL DISTRICT JUDGE (CENTRAL) 1 TIS HAZARI
COURTS, DELHI.
T M no.: 101/2011
Unique case ID no. : 02401C0131392006
Shri Ram Niwas Mittal
Sole Proprietor
M/s Ram Niwas Naveen Kumar
2803, IInd Floor, Opposite Fire Station
New Qutub Road,
Delhi. ...Plaintiff
Versus
M/s H. R. Narrow Fabrics
94, Industrial areaA,
Ludhiana, Punjab. ...Defendant/
Counter Claimant
Date of institution of suit : 19.05.1999
Date of institution of counter claim : 12.08.1999
Date of reserving judgment : 11.10.2012
Date of pronouncement : 25.10.2012
Suit under section 105 & 106 of the TMMA
1958 for permanent injunction for passing off and
rendition of a/c and counter claim of defendant
JUDGMENT: This suit has been instituted by the plaintiff in which the TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 1 of 27 2 defendant has not only put a contest to the suit but has also pressed into service its counter claim.
2. The plaintiff has propounded his cause of action on the following bundle of facts:
(i). The plaintiff is the sole proprietor of the business entity/ firm in the name and style of M/s Ram Niwas Naveen Kumar. It is engaged in the business of manufacturing and marketing of Hosiery goods, undergarments, Readymade Garments and Socks (hereinafter referred to as the said goods).
(ii). The plaintiff is the proprietor of the trade mark SMILE LABEL in respect of the said goods. The plaintiff has been using SMILE LABEL in distinctive get up, make up and lettering style and The plaintiff adopted the trade mark SMILE LABEL in November, 1990 in relation to Hosiery goods, Undergarments, Readymade Garments and socks and has been continuously using the same since then up to the present time. The business carried on by the plaintiff is a very extensive one and the goods bearing TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 2 of 27 3 the said trade mark have been distributed in major parts of the country. The plaintiff goods are highly demanded in the market on account of standard quality.
(iii). In order to acquire the statutory rights for the said trade mark, the plaintiff had filed an application for its registration under application No. 774375 in respect of Hosiery Goods and Readymade Garments falling in class25 of the Fourth Schedule of the Trade and Merchandise Marks Act, 1958, which application is still pending.
(iv). The plaintiff claims to be the proprietor of the said trade mark in respect of the said goods on account of its prior adoption and continuous user thereafter. Plaintiff's trade mark SMILE label has already become distinctive and associated with the aforesaid goods on account of its continuous, extensive and exclusive user thereof; the public at large associates the said trade mark to the aforementioned goods of the plaintiff and the plaintiff has been using the said trade mark exclusively and to the TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 3 of 27 4 exclusion of others; plaintiff's goods and his business are dependent on the trade mark SMILE label. The plaintiff has built up a valuable trade under the said trade mark.
(v). The plaintiff is advertising the said trade mark through different media such as advertisement in leading newspapers, trade magazines, distribution of trade literature, trade novelties etc and the plaintiff as such has already spent a substantial amount of money on the publicity of the said trade mark and in consequence thereof the said trade mark enjoys good reputation in the markets.
(vi). Plaintiff's trade mark SMILE label has become sufficiently distinctive in the trade to be capable of protection. The trade mark SMILE label in a way has become synonymous with the business of the plaintiff.
(vii). The defendant is engaged in the business of manufacturing and marketing of Hosiery Goods including undergarments and have started using the trade mark SMILE label in respect thereof. The defendant TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 4 of 27 5 adopted the said trade mark only in the 1st week of May, 1999. The defendant is not the proprietor of the trade mark SMILE label in respect of Hosiery Goods including undergarments. The defendant adopted the trade mark SMILE label in relation to Hosiery Goods including undergarments out of greed with a view to take advantage and to trade upon the reputation of the plaintiff and further with a view to cause deception in the markets and to pass off his spurious goods as that of the plaintiff. The defendant was fully aware about the use and reputation of the plaintiffs trade mark SMILE Label at the time when it adopted the similar trade mark. The defendant adopted the similar trade mark capriciously and fraudulently with ulterior motives. The trade mark adopted by the defendant is similar to the trade mark of the plaintiff. The use of the trade mark SMILE label by the defendant in relation to Hosiery Goods including undergarment is bound to cause deception and confusion in the normal course of business activities of the plaintiff TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 5 of 27 6 and the defendant.
(ix). The plaintiff is enjoying a considerable goodwill in the said trade mark. Any person not knowing the relationship between the parties to this action is bound to be confused by the label such a person might well do business with the defendant thinking that he is dealing with the plaintiff. Both the plaintiff and defendant operate in the same line or business and in the same markets. There is likelihood of confusion between the plaintiff firm and the defendant resulting from the similarity of the trade marks, which is very much obvious. The defendant adopted the same and similar trade mark with improper and sinister motives as the defendant was fully aware about the use and reputation of the plaintiffs said trade mark from the very beginning. The defendant therefore adopted the said trade mark fraudulently and dishonestly. The defendant has no justification to adopt the trade mark SMILE label which is same and similar to the aforementioned trade mark of the plaintiff. The defendant is guilty to passing TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 6 of 27 7 off and is passing off its goods and business as that of the plaintiff. As a result that the spurious goods of the defendant of substandard quality are being passed off as the genuine goods of the plaintiff. The public at large is bound to suffer on account of such nefarious activities of the defendants.
(x). The defendant has not given up the use of the impugned trade mark despite request and intervention of common friends. Dishonesty of the defendant is further apparent from the fact that the defendant is representing the trade mark SMILE Label as registered while the defendant holds no registration in respect thereof. The defendant is committing offence within the meaning of section 81 of the Trade & Merchandise Marks Act, 1958.
(xi). The goods being sold by the plaintiff as well as defendant are same as such there is high probability of confusion. The defendant has not given up the use of the impugned trade mark despite requests by plaintiff and common TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 7 of 27 8 fiends of the plaintiff and the defendants. Plaintiff is suffering losses both in business and reputation. The loss and reputation is incapable of being assessed in monetary terms.
(xii). The cause of action arose in favour of the plaintiff and against the defendants in the fist week of May,1999 when the defendant started using the trade mark SMILE label in relation to Hosiery Goods including Undergarments and started marketing the same in Delhi and other parts of the country in a clandestine and surreptitious manner. The cause of action is continuous one and is accruing every day as the defendant started using the selling his Hosiery Goods and undergarments bearing the impugned trade mark SMILE label. The defendant works for gain in Delhi as the defendant is also selling and marketing his goods under the impugned trade mark in Delhi. The defendant is selling and marketing his goods in a clandestine manner i.e. without issuing formal bills against sale. The defendant also appears to TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 8 of 27 9 have applied for registration of trade mark SMILE in the Trade Mark Registry at New Delhi.
3. The defendant entered appearance and has filed its written statement and also pressed into service its counter claim.
4. In the written statement, the defendant took a host of preliminary objections as under:
(i). Suit is based on malafide, fraud and false/fabricated documents. The various documents pressed into service do not support the claim of the plaintiff as raised in the plaint.
(ii). The defendant is the prior adopter and user of the trade mark 'SMILE' in respect of ready made and under garments since October 1991 and has been using the same continuously and extensively since then in the course of the trade. The same is well within the knowledge of the plaintiff. The plaintiff has propagated his cause of action on false facts. The defendant is prior in use and adoption.
(iii). The plaintiff has concealed the material facts. The TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 9 of 27 10 defendant being prior in adoption and use of the trade mark SMILE in respect of ready made garments and undergarments; has built enviable reputation and the mark has become distinctive of the source of goods of the defendant by the public at large; large, extensive and growing sales; promotion of the trade mark etc. has the case entirely in its favour.
(iv). The trade mark 'SMILE' is not distinctive of the goods and business of the plaintiff.
5. On merits, the defendant denied in the above terms all the averments of the plaint on which have been pressed into service by the plaintiff as foundation of his cause of action. It prayed for the dismissal of the suit.
6. In the counter claim the defendant claimed itself to be a partnership firm. It is averred that the defendant is prior in adoption and use of the trade mark SMILE in respect of ready made garments and undergarments. It has built enviable reputation in the market and the mark has become sourceidentifier/distinctive of the source of goods of the defendant by the public at large. The defendant has large, TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 10 of 27 11 extensive and growing sales. It has been investing substantially in the publicity and promotion of its trade mark. The case of the plaintiff has no legs to stand and on the contrary the boot is on the other leg. It has prayed for the injunction against the plaintiff, rendition of accounts, delivery up etc.
7. The plaintiff filed replication thereby denying the material averments of the written statement of the defendant and reiterating the averments of plaint as true and correct.
8. In the written statement to the counter claim the plaintiff denied all the material averments on which the defendant as a counter claimed has founded its case and made averments similar to his plaint.
9. On completion of pleadings, the following issues have been framed vide the minutes of proceedings dated 26.07.2005:
1) Whether the plaintiff is the proprietor of the trade mark SMILE in respect of hosiery goods, undergarments, Readymade garments, socks? OPP
2) Whether counter claimant is the proprietor of the trade mark SMILE in respect of Readymade garments & undergarment? OPD
3) Whether the use of the mark SMILE on the part of the plaintiff in respect of Hosiery Goods, Readymade Garments, socks and / or are cognate TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 11 of 27 12 or allied goods is likely to cause confusion and deception amounting to passing off? OPD
4) Whether the use of the mark SMILE on the part of the counter claimant in respect of readymade garments & undergarments and / or are cognate or allied goods, is likely to cause confusion and deception amounting to passingoff? OPP
5) Whether the plaintiff is entitled for the relief of rendition of accounts against the counter claimant? OPP
6) Whether the plaintiff is entitled for the recovery of any amount against the counter claimant? If so, to what amount? OPP
7) Whether the counter claimant is entitled for the relief of rendition of accounts against the plaintiff? OPD
8) Whether the counter claimant is entitled for the recovery of any amount against the plaintiff?
If so, to what amount? OPD
9) Relief?
10. The defendant stopped appearing in the case and vide minutes of proceedings dated 03.08.2007, after waiting for it till 2.22 P.M, it had been proceeded as exparte. It did not join the proceedings there after and continued to remain exparte.
11. The plaintiff has examined himself as PW1. The plaintiff has TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 12 of 27 13 tendered in evidence documents Ex.PW1/2 to Ex.PW1/87 on 08.10.2007. The PE was closed on 08.10.2007.
12. I have heard the arguments as advanced by the Ld. Counsel for the plaintiff.
13. Briefly stated, it has been submitted by the Ld. Counsel for the plaintiff that the evidence on record has established the adoption and use of trade mark 'SMILE' by the plaintiff, whereas the defendant has neither impugned the testimony of the plaintiff nor has led its evidence. Therefore the evidence of the plaintiff has gone unchallenged. It is not simply a case of similar trade mark and similar goods but of identical trade mark for the same kind of goods. The plaintiff is prior in use and has a right to prevent passing off under section 27(2) of the Trade & Merchandise Marks Act. The evidence on record conclusively establishes the case of the plaintiff who is entitled for the relief as claimed and the counter claim of the defendant is liable to be dismissed with costs.
14. While addressing the arguments, Ld. Counsel for the plaintiff copiously referred to the pleadings, documentary and oral evidence. Plaintiff has filed detailed written submissions. The plaintiff has cited TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 13 of 27 14 case law in support of its submissions.
15. No other point has been argued or urged.
16. I have considered the submissions, case law cited and the material on record. My findings on the various issues are as under: Issue no. 1: Whether the plaintiff is the proprietor of the trade mark SMILE in respect of hosiery goods, undergarments, Readymade garments, socks?
& Issue no. 2: Whether counter claimant is the proprietor of the trade mark SMILE in respect of Readymade garments & undergarment?
17. The onus of the issue no. 1 is on the plaintiff whereas that of the issue no. 2 is on the defendant. This issue pertains to the question of proprietorship of the trade mark SMILE visàvis readymade garments/undergarments, socks etc.
18. It goes without saying that the goods of the respective parties are allied or cognate goods and they are sold under the same/similar trade channels.
19. PW1 in his oral evidence has deposed regarding the plaintiff being the sole proprietor of the business entity/ firm in the name and style of M/s Ram Niwas Naveen Kumar and engaged in the business TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 14 of 27 15 of manufacturing and marketing of Hosiery goods, undergarments, Readymade Garments and Socks etc. It has further been deposed that the plaintiff is the proprietor of the trade mark SMILE LABEL in respect of the said goods using the same in distinctive get up, make up and lettering style since November, 1990 in relation to Hosiery goods, Undergarments, Readymade Garments continuously and openly. The PW1 has also deposed that the Plaintiff's trade mark SMILE label has become distinctive and associated with the aforesaid goods on account of its continuous, extensive and exclusive user thereof, the public at large associates the said trade mark to the aforementioned goods of the plaintiff.
20. The plaintiff has tendered in evidence Ex. PW1/1 to show the usage and distinctive style and get up of its trade mark SMILE label. Plaintiff has also pressed into service various invoices to prove the usage of the trade mark.
21. The case in hand has to be examined visàvis the parties in dispute and not in rem. Being a civil case the evidence has to be appreciated in the realm of preponderance of probabilities and not on the basis of absolute certainty. Infact, in all human endeavors TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 15 of 27 16 absolute certainty is a myth and the law accepts for it the probability as a working substitute.
22. In Kerala Agro Industries Corporation Limited vs. Beta Engineers 188 (2012) DLT 373 it has been held by the Hon'ble High Court of Delhi that "...a civil case is decided on balance of probabilities. A civil court puts all the evidence which have been led in a melting pot so as to determine the final picture which has to emerge...".
23. 'SMILE' is not an invented word. It is a word of common parlance. If the hierarchy of marks (from weak to strong) is observed in the spectrum of distinctiveness the lineage appears as GENERICDESCRIPTIVESURNAMESUGGESTIVEAR BITRARYINVENTED. Thus the word 'SMILE' when used as a trade mark in respect of the hosiery and allied/cognate goods it is an arbitrary marks. By definition and evolution an arbitrary mark comprise those words, symbols or pictures etc. which are in common linguistic use but which, when used with the goods or service in issue, neither suggest nor describe any ingredients, quality or characteristic of those goods or services. Thus the usage of the word/label mark TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 16 of 27 17 'SMILE' in respect of hosiery and allied/cognate goods is like using 'Apple' for computers, 'Arrow' for shirts and 'Teacher' for scotch. Like these words of dictionary, the word 'SMILE' used a trade mark in respect of hosiery and allied/cognate goods has no connection with the ingredients, quality or characteristic of the goods.
24. Thus the use of the word 'SMILE' by the plaintiff in course of trade for hosiery and allied/cognate goods has become distinctive of the goods it represent from a particular proprietor or source. On the preponderance of probabilities on the basis of the evidence on record, it is the plaintiff who has been able to establish itself as the proprietor of the said trademark in respect of hosiery and allied/cognate goods visàvis the defendant.
25. Thus the issue no. 1 is determined in favour of the plaintiff and issue no. 2 is rendered against the defendant. Issue no. 3: Whether the use of the mark SMILE on the part of the plaintiff in respect of Hosiery Goods, Readymade Garments, socks and / or are cognate or allied goods is likely to cause confusion and deception amounting to passing off?
& Issue no. 4: Whether the use of the mark SMILE on the part of the counter claimant in respect of readymade garments & TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 17 of 27 18 undergarments and / or are cognate or allied goods, is likely to cause confusion and deception amounting to passingoff?
26. A trade mark is not respected for its artistic quality, for its design or some novelty in it. Therefore it stand on different footing visàvis the other IPRs. A trade marks raison d'etre is its ability to distinguish the goods and services of its proprietor, as flowing from that particular person. Thus it is a pointer or a source identifier for goods and services. While other IPRs have a limited life span of monopoly of its proprietor and thereafter they pass into the public domain, it is just the other way round for a trademark. The trade mark remains the monopolistic property of its proprietor perpetually provided its registration is kept alive (if registered) or if unregistered it is used in connection with goods and service continuously. A trade mark is thus a repository of goodwill of its proprietor. With the passage of time there is value addition in the trade mark commensurate with the reputation and goodwill of the business. Thus trade mark and goodwill are more or less synonym of each other.
27. What constitutes passing off has been defined in a catena of case law.
TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 18 of 27 19
28. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980 it has been as held under:
"...While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered, trade mark for the vindication of "the exclusive right to the use of the trade mark in relation to those goods" (Vide S. 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement..."
"...In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is in imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 19 of 27 20 plaintiff have been adopted by the defendant, the fact that the getup, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff."
29. In Ruston and Hornby Ltd. v. Zamindara Engineering Co. AIR 1970 SUPREME COURT 1649 it has been held "In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passingoff actions."
30. In the instant case the mark is the same and the goods are also TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 20 of 27 21 same, similar or allied/cognate goods. Thus the yardstick for determining passing off has to be based on the reality test--as a consumer in the market. If he is likely to be deceived or taken for a ride, then there is deceptive similarity.
31. The goods in the instant case are the same, similar or allied/cognate goods. They are sold through the same trade channels. The goods are used by the public--from cradle to grave. The consumers of the goods are household people and as the goods are not highly priced the level of care and consciousness is not very diligent and the consumer of imperfect recollection and ordinary prudence is likely to confused or deceived. Same mark applied to the similar goods of the plaintiff and defendant is likely cause confusion to the consumer. An ordinary person is likely to be deceived taking the mark of the defendant as that of the plaintiff and possibility of association cannot be ruled out by a consumer of ordinary prudence and imperfect recollection.
32. In passing off action it is not the actual deception that is material. It is the likelihood of deception that is material. It is riding on the goodwill of someone else by creating a deception. It is making TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 21 of 27 22 a gain at the expense of the other.
33. A person is well within his right to sell his goods or render services using any trade name for the purpose as long as he does not cause injury to other person by deceptive or wrongful use of that person's trade mark or trade name. It is not permissible under the law for any other person to sell goods either using the same name or dishonestly imitating the trade mark of another person as to cause injury to that person and unjustifiably enrich himself at the cost of that person who had already been using that name and had acquired a certain reputation with the passage of time and on account of the quality of the goods sold by him.
34. Thus the findings on these issues are returned in favour of the plaintiff and against the defendant.
Issue no. 5: Whether the plaintiff is entitled for the relief of rendition of accounts against the counter claimant?
& Issue no.6) Whether the plaintiff is entitled for the recovery of any amount against the counter claimant? If so, to what amount?
& Issue no.7) Whether the counter claimant is entitled for the relief of rendition of accounts against the plaintiff? TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 22 of 27 23 & Issue no.8) Whether the counter claimant is entitled for the recovery of any amount against the plaintiff? If so, to what amount?
35. In view of the findings on the above issues and the foregoing discussion, the plaintiff is also entitled to rendition of accounts. However the moot question is whether in the facts and circumstances of the case, it would be desirable to proceed for the rendition of accounts. The rendition of accounts is an exercise to venture into finding out the gain which the defendant has made (or the corresponding loss which it has caused to the plaintiff) on account of its acts constituting passing off to the detriment of plaintiff. The purpose of awarding damages or compensation is to put a balm on the injury suffered by the plaintiff on account of tortuous conduct of the defendant.
36. The approach while directing rendition of account is find out the truth so that the clock is set back to restore status quo ante or put the plaintiff at the original position which existed prior to suffering of damage by the plaintiff. However in cases as the instant one, the TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 23 of 27 24 quantum of damages is the most difficult thing to establish. The plaintiff has itself pleaded clandestine sale on the part of the defendant. Thus such sales would not find their reflection in the statement of accounts of the defendant. The other stumbling block is that the best evidence is in the possession of the defendant. The defendant has been playing truant in the instant matter as it is exparte. Thus the best evidence has eluded the Court and for this reason the rendition of accounts is a foregone possibility. The case is very old being of the vintage 1999. Many statues do not envisage preservation of accounts for more than 5 or 7 years. This may also come a hindrance in seeing rendition of accounts.
37. Nevertheless, the circumstantial evidence can be considered to estimate the damages. In the present case the evidence of the plaintiff has not been impugned. I am of the view that as the defendants have passed off their goods for quite some time but the exercise of rendition of very complex in view of the number of transactions involved; categorization/bifurcation of transactions into different slots where the plaintiff's trade mark has been abused and where it has not been abused being a stumbling block; cumbersome calculations involved; TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 24 of 27 25 the case being very old and a host of other factors which all cannot be exhaustively illustrated here, the rendition of accounts may not be feasible. Therefore lumpsum and consolidated damages can be awarded.
38. Some guess work in such circumstances cannot be ruled out to award token damages. Considering the nature of goods and the extent of business, the wide use of its product by the public, goodwill and reputation of the plaintiff, the false stand taken by the defendant and all other attendant facts in my view the interest of justice would be served, if token damages of Rs. 1,00,000/ (Rupees One Lakh Only) are awarded to the plaintiff against the defendant.
39. I, therefore, after considering the material on record grant the following reliefs to the plaintiff:
40. I, therefore, after considering the material on record and findings on the issues, grant the following reliefs to the plaintiff:
(i). A decree of permanent injunction restraining the defendant, its agents, representatives, assigns, officers, partners, servants, administrators etc. from using the mark SMILE either in whole or in part etc. or in any manner substantially similar or nearly resembling TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 25 of 27 26 the plaintiff's trade mark SMILE label in any way in connection with the manufacture, sale, offering for sale, advertising or displaying hosiery goods, undergarments or allied/cognate goods or in any manner as to constitute passing off or to give an impression as if such goods originate from or have the association with the plaintiff or in any other manner likely to cause confusion or deception to the public.
(ii). A decree for a sum of Rs. 1,00,000/ (Rupees One Lakhs Only) as token consolidated damages to the plaintiff payable by the defendant in lieu of a decree for rendition of accounts/claim of damages.
(iii). A decree for orders of delivery up of all the incriminating material like publicity/promotional material, letter heads/printed material, packing material, cartons etc. by the defendant, its agents representatives, assigns, officers, partners, servants, administrators etc. to the plaintiff for destruction.
(v). The plaintiff is awarded costs of this suit.
41. The counter claim of the defendant/counter claimant is dismissed. No costs are awarded to any of the parties in the counter claim.
TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 26 of 27 27
42. The plaintiff shall pay the court fee for damages awarded and after payment of court fee, decree sheet be drawn in the suit TM No. 101/2011 accordingly.
43. The decree in the counter claim vide TM No. 138/2011 be drawn forthwith.
44. A copy of this judgment duly signed be placed in both the files i.e. the suit as well as the counter claim. The respective decree sheets be placed in the concerned files only.
45. After necessary compliance, the file be consigned to the Record Room.
Announced in the Open Court On this 25th day of October 2012 (MAN MOHAN SHARMA) ADJ (Central)1, Delhi TM 101/2011 (Suit) & TM 138/2011 (Counter Claim) Ram Niwas Mittal vs. H. R. Narrow Fabrics Page 27 of 27