Delhi High Court
M/S Rspl Health Pvt Ltd vs M/S M.D Chemicals on 28 July, 2017
Equivalent citations: AIR 2018 (NOC) 223 (DEL.), 2017 (6) ADR 572 (2017) 243 DLT 270, (2017) 243 DLT 270
Author: Yogesh Khanna
Bench: Yogesh Khanna
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on: 18th July, 2017
Pronounced on: 28th July, 2017
+ CS(COMM) No.597/2016
M/S RSPL HEALTH PVT LTD ..... Plaintiff
Through : Mr.Pankaj Kumar, Advocate.
versus
M/S M.D CHEMICALS ..... Defendant
Through : None being ex parte.
CORAM:
HON'BLE MR. JUSTICE YOGESH KHANNA
YOGESH KHANNA, J.
1. This is a suit for permanent injunction, infringement of trademark, passing off, delivery up and damages filed by the plaintiff against the defendant.
2. The plaintiff has alleged:
a) It is a company duly incorporated under the Indian Companies Act, 1956, having its registered office at 109/366, Ram Krishan Nagar, G.T. Road, Kanpur-208012 (Uttar Pradesh) and also having its office at C-1,2 & 3, P.P. Towers - A, 3rd Floor, Netaji Subhash Place, Pitampura, Delhi-
110034. It has filed this suit through Mr.Manoj Singh, its legal manager who has been authorized vide a Board Resolution dated 28.08.2003 to institute this suit. The plaintiff company was originally incorporated on 22.06.1988 as M/s Shri Mahadeo Soap Industries Private Limited. There CS (COMM) No.597/2016 Page 1 of 12 was another company namely M/s Kanpur Trading Company Private Limited which changed its name to M/s KTC Private Limited and it had amalgamated with M/s Leayan Overseas Private Limited on 05.05.2005 and its name was changed to M/s Ghari Industries Private Limited on 16.05.2005 which then was amalgamated with M/s Rohit Surfactants Private Limited on 13.03.2008 and its name was changed to M/s RSPL Private Limited on 26.08.2011 and then it was changed to M/s RSPL Limited;
b) the plaintiff company alleges that through its predecessors it originally conceived, coined and adopted the trade mark/label/trade dress XPERT in the year 1993 in respect of washing soaps, washing powder, detergent cakes, toiletries, bleaching preparations and substances for laundry use, cleaning, polishing, scouring abrasive preparations, perfumery, essential oils, hair lotions, dentifrices (referred as said goods). M/s Nasreena Cottage Industries, 3-6-55/F/10, Indranagar, Ramanthapur, Hyderabad-13 (A.P.) honestly and bonafidely adopted the said trade mark/label/trade dress XPERT in the year 1993 in respect of all kind of detergent for laundry use and cleaning powder. The said trademark/label was registered in their favour M/s Nasreena Cottage Industries vide no.1270731 in class - 3 and it assigned the said trade mark/label XPERT to the present plaintiff under deed of assignment dated 15.07.2013;
c) M/s Kanpur Trading Company also adopted the trade mark GHARI XPERT and/or XPERT in the year 2001 in respect of washing soaps, washing powder, detergent cakes, toiletries, bleaching preparations and substances for laundry use, cleaning, polishing, scouring abrasive preparations perfumery, essential oils, hair lotions, dentifrices.
CS (COMM) No.597/2016 Page 2 of 12The evolution of the above said company to M/s RSPL Limited has already been explained. The family members of the directors of the above said companies have been carrying on the trade and business under different companies/business enterprises with their internal arrangement/agreement and there have been consequential changes in the constitution and association of the companies. M/s RSPL Limited has further assigned the trade mark XPERT and/or XPERT LABEL to the present plaintiff company along with goodwill and reputation;
d) thus plaintiff is an owner and proprietor of the trade mark and copyright of XPERT and/or XPERT LABEL. This mark is being used in a composite label/trade dress either individually or in combination with each other. These trade dress formats serve trade mark functions for the Plaintiff and are trademarks of the Plaintiff. The labels bearing these marks along with other features have a unique get up, make up, color scheme, lettering style, arrangement etc. The trade mark/labels of the Plaintiff comprising of the above marks either individually and/or in combination of each other are hereinafter referred to as the "said trade mark/labels". The plaintiff has been using the said Trade Mark/Label since the year of adoption up to present time continuously, uninterruptedly, as an exclusive proprietor and owner. The plaintiff is prior and senior adopter of the said trade mark/label in relation to said goods and business. The goods manufactured and marketed by the plaintiff are hereinafter referred to as the "said goods". The plaintiff conceived and adopted the trade mark XPERT (word per se, with different prefixes and/or suffixes as well as in artistic label form) which is hereinafter referred to as the "said trade mark/label"in relation to said CS (COMM) No.597/2016 Page 3 of 12 goods. The plaintiff also adopted punch lines "Pehle Istemal Karen Phir Vishwas Karen";
e) the plaintiff is an owner and proprietor of its said trade mark/label and said punch lines on account of honest, bonafide and prior adoption and continuous commercial use thereof. In order to acquire statutory rights, the plaintiff has filed numerous applications for registration of the said trade mark/label, under the provisions of Trade Marks Act, 1999 for various goods and services. Many of the said applications have already been allowed and some of them are still pending, which are likely to be allowed in due course upon completion of all formalities. Details of applications filed by the plaintiff and its predecessors for registration of said trade mark/label along with their respective present status are :-
S.No. Trade Mark Class Application Status
No.
1. X-pert Label 03 1077473 Registered
2. X-pert Label 03 1205486 Registered
3. XPERT Label 03 1270731 Registered
4. X-pert Label 03 1390217 Registered
5. X-pert Label 03 2059382 Pending
6. X-pert Label 03 2170355 Pending
7. Xpert (Scrub 21 2236519 Pending
Pad Label)
f) the plaintiff alleges to represents its trade mark/label in an artistic
manner including in its getup, lettering style, colour scheme, placement of words, artistic features etc. The art work is original within the meaning of the Copyright Act, 1957 and it has also obtained the copyrights thereof registered under number A-67662/2004. The plaintiff has been continuously advertising and promoting its said trade mark/label and said CS (COMM) No.597/2016 Page 4 of 12 punch lines through different means and modes including through print and electronic media i.e., by way of extensive advertisements in national newspapers, magazines and various prominent national TV Channels etc. The plaintiff has also been advertising the said trade mark/label and said punch lines through various other means like hoardings, display boards, distribution of trade literature, trade novelties, etc. Plaintiff's said trade mark label and said punch lines have already become distinctive indicium of the plaintiff and plaintiff's goods and business and are 'well known' within the meaning of section 2(1)(zg) & section 11 of the Trade Marks Act, 1999. That the Plaintiff's said goods and business under the said trade mark/labels are global in character and its sales are worth crores of rupees;
g) the defendant is alleged to be engaged in the business of manufacturing and marketing of all kinds of dish-wash bars and liquids, soaps and cleaning material and allied and cognate products using trademark / label Mr.XPERT in relation to the impugned goods and business and it has the trademark / label/trade dress / colour scheme etc same/similar/identical to the plaintiff trade mark/labels etc. Since the defendant's trade mark label/trade dress is identical and deceptively similar to the trademark /label of the plaintiff and since the defendant has substantially copied the said well known trade mark/label with its all features and artistic work, layout design, lettering style, get up, make up, colour combination and idea thereof in such a manner that not only the ordinary purchaser, but also the big retailers / dealer and distributors are bound to be confused/deceived, it violates the plaintiff's proprietary rights in his said trade mark and copyright involved in the label. Since the CS (COMM) No.597/2016 Page 5 of 12 goods of the defendant are identical to that of the plaintiff and are sold at the shops where the plaintiff is selling its goods to the same class of purchasers, the plaintiff has brought this action for infringement of the registered trademark and for infringing the copyright, besides other reliefs;
h) due to defendant's impugned activities, the plaintiff allegedly has suffered huge losses both in its goodwill and business reputation and such losses can be assessed in the monetary terms and thus, the plaintiff has sought ₹20,01,000/- as damages towards the same. In March 2014 the plaintiff came across the impugned goods of the defendant under the impugned that trademark / label and that the defendant without issue of formal sale bills is carrying out its impugned activities in Delhi, hence suit for injunction and damages have been filed against the defendant.
3. Pursuant to failure on part of the defendant to appear despite service, it was proceeded ex parte vide order dated 31.07.2015. The plaintiff was directed to file ex parte evidence by way of affidavit.
4. The plaintiff has proved its case through its sole witness PW1 Sh.Manoj Singh, who has tendered his evidentiary affidavit as Ex.PW1/A and relied upon the documents Ex.PW1/1 to Ex.PW1/17.
The witness PW1 has proved true representations of its trademark/ label/trade dress as Ex.PW1/1 (Colly); true representations of the impugned trade mark/lable/trade dress of the defendant as Ex.PW1/2 (Colly); copies of documents pertaining the registered trade mark Xpert, No.1077473 in class 03 of the plaintiff as Ex.PW1/3 (Colly); the copies of documents pertaining to registered trademark of the plaintiff under CS (COMM) No.597/2016 Page 6 of 12 No.1205486 in class 03 as Ex.PW1/4; the copies of documents pertaining to trademark registration No.1390217 in class 03 as Ex.PW1/5; the copies of documents pertaining to trademark registration No.1270731 in class 03 as Ex.PW1/6; the copies of documents pertaining to pending trademark applications of the plaintiff as Ex.PW1/7; the copies of plaintiff's copyright registration certificate under No.A-67662/2004 as Ex.PW1/8; the copies of the recordial request on Form TM-23 as Ex.PW1/9; the copy of assignment deed dated 15.07.2013 as Ex.PW1/10; copy of certificate of incorporation of plaintiff company and documents pertaining to chain of its predecessor as Ex.PW1/11; copy of auditor's report of plaintiff company as Ex.PW1/12; copies of bills/documents of plaintiff as Ex.PW1/13; copies of bills pertaining to advertisement of the plaintiff as Ex.PW1/14; copies of advertisement material of plaintiff as Ex.PW1/15; copies of judicial orders passed in favour of the plaintiff as Ex.PW1/16; and boards resolution Ex.PW1/17 in favour of witness to institute this suit.
5. The evidence so led by the plaintiff's witness has duly proved the contents of the plaint and the case set forth by the plaintiff. I have also examined and compared the trade mark/trade dress/label of plaintiff with that of the defendant and am convinced that the plaintiff has proved its case of infringement/passing of against the defendant for grant of decree of permanent injunction in favour of the plaintiff and against the defendant, since the trademark/label/dress of the defendant is deceptively similar to that of the plaintiff's goods - being the same.
CS (COMM) No.597/2016 Page 7 of 126. In Parle Products (P) Ltd. vs. J.P & Co. AIR 1972 SC 1359 it was held that it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. It is of no use to note on how many points there is similarity & in how many points there is absence of it.
Thus the dishonest adoption of Mr.XPERT by the defendant has to be injuncted as identical mark in respect of the two goods is bound to cause deception & confusion. Hence, the relief sought need to be granted. Even otherwise, there is no opposition to the case of the plaintiff, the defendant being proceeded ex parte & has not challenged the claim of the plaintiff.
7. Hence, I pass a decree to restrain the defendant by itself as also through its individual partners/ proprietors, directors, agents, representatives, distributors, assigns, stockiest, dealers, retailers etc., and all other acting for and on behalf of the defendant from manufacturing, selling, using, displaying, advertising, importing/ exporting or by any other mode or manner dealing with the impugned Trade mark/label/trade dress/colour combination Mr.XPERT or any other trade mark/label(s) identical with or deceptively similar to the plaintiff's said XPERT trademark trade dress, colour scheme, artistic features, copyrights etc. in relation to the impugned goods viz: all kind of dishwash bars and liquids, soaps and cleaning material and other allied and cognate goods or from doing any other acts or deeds amounting to infringement of the plaintiff's trademark XPERT and/or XPERT Lable under No.1077473, 1205486, 1270731, 1390217 all in Class 3 and also passing off or otherwise CS (COMM) No.597/2016 Page 8 of 12 violation by way of passing off or the trademark of plaintiff. The defendant is also restrained from disposing off or dealing with their impugned goods and to deliver the impugned finished and unfinished impugned material to the plaintiff.
8. Besides the above the learned counsel for plaintiff has claimed the damages to the extent of `20,010,000/- be also awarded. The plaintiff is more concerned with the punitive damages and rely upon Time Incorporated vs. Lokesh Srivastava & Anr 116 (2005) DLT 599 wherein it was held:-
"This Court has no hesitation in saying that the time has come when the Courts dealing actions for infringement of trademarks, copy rights, patents etc. should not only grant compensatory damages but award punitive damages also 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. In Mathias v. Accor Economy Lodging, Inc. reported in 347 F.3d 672 (7th Cir. 2003) the factors underlying the grant of punitive damages were discussed and it was observed that one function of punitive damages is to relieve the pressure on an overloaded system of criminal justice by providing a civil alternative to criminal prosecution of minor crimes. It was further observed that the award of punitive damages serves the additional purpose of limiting the defendant's ability to profit from its fraud by escaping detection and prosecution. If a tortfeasor is caught only half the time he commits torts, then CS (COMM) No.597/2016 Page 9 of 12 when he is caught he should be punished twice as heavily in order to make up for the times he gets away This Court feels that this approach is necessitated further for the reason that it is very difficult for a plaintiff to give proof of actual damages suffered by him as the defendants who indulge in such activities never maintain proper accounts of their transactions since they know that the same are objectionable and unlawful. In the present case, the claim of punitive damages is of Rs. 5 lacs only which can be safely awarded. Had it been higher even, this court would not have hesitated in awarding the same. This Court is of the view that the punitive damages should be really punitive and not flee bite and quantum thereof should depend upon the flagrancy of infringement."
9. The decision in Time Incorporated (supra) was relied upon by a Co-ordinate Bench of this Court in Jockey International Inc & Anr vs. R. Chandra Mohan & Ors 211 (2014) DLT 757 which read as under:-
"43. I am in agreement with the aforesaid submission of learned counsel for the plaintiff that damages in such cases must be awarded and a defendant, who chooses to stay away from the proceedings of the Court, should not be permitted to enjoy the benefits of evasion of court proceedings. Any view to the contrary would result in a situation where a defendant who appears in Court and submits its account books would be liable for damages, while another defendant who, chooses to stay away from court proceedings would escape the liability on account of failure of the availability of account books. A party who chooses not to participate in court proceedings and stays away must, thus, suffer the consequences of damages as stated and set out by the plaintiffs.CS (COMM) No.597/2016 Page 10 of 12
There is a larger public purpose involved to discourage such parties from indulging in such acts of deception and, thus, even if the same has a punitive element, it must be granted. R.C. Chopra, J. has very succinctly set out in Time Incorporated's case (supra) that punitive damages are founded on the philosophy of corrective justice."
10. The witness of plaintiff has deposed that damages ought to be imposed upon the defendants on account of infringement and passing off its marks, label, logo etc by the defendants and such damages should be exemplary, compensatory and punitive. He has also deposed that plaintiff hold names in the field of the goods stated above and that the monetary value of the immense reputation and goodwill associated with its brands is though incalculable, however it claim `20,01,000/- so as to serve as a deterrent to the defendant and to discourage further infringement of the plaintiff trademark.
11. Thus, given the facts and circumstances of this case where the defendant reclused itself from the proceedings, cannot be permitted to enjoy the benefits of evasion or covert priorities as has been selling the goods, without formal sales bills and have been infringing the plaintiff's mark/label/ trade dress certainly makes the defendant liable to pay the punitive damages to the plaintiff. Hence, a decree for a sum of `2,00,000/- in favour of the plaintiff and against defendant, is passed on account of infringing the registered marks/label/trade dress. The plaintiff shall also be entitled to interest @ 12% pa on the damages so awarded CS (COMM) No.597/2016 Page 11 of 12 from the date of filing of the suit till the date of realisation. Costs of the suit is also awarded to the plaintiff. Decree Sheet be drawn.
YOGESH KHANNA, J JULY 28, 2017 M/RS CS (COMM) No.597/2016 Page 12 of 12