Delhi District Court
M/S Greenply Industries Ltd vs ) M/S Daya Timbers on 11 September, 2015
IN THE COURT OF SH. GURVINDER PAL SINGH
ADDITIONAL DISTRICT JUDGE01 (CENTRAL)
TIS HAZARI COURTS, DELHI
TM88/2011
Unique I. D. No. 02401C0693942008
M/s Greenply Industries Ltd.,
Narain Manzil, 15th Floor,
23 Kasturba Gandhi Marg,
Delhi110001.
......Plaintiff
Versus
1) M/s Daya Timbers,
V443, Yamuna Vihar Road,
Vijay Park, Maujpur, Delhi110053.
2) M/s N.T. Industries,
Khasra No. 324, Village Tatarpur,
Garh Road, Hapur, Ghaziabad, U.P.
.......Defendant
SUIT FOR PERMANENT INJUNCTION, INFRINGEMENT OF
TRADE MARK & COPYRIGHT, PASSING OFF AND
RENDITION OF ACCOUNTS ETC. OF REGISTERED
TRADE MARK "GREEN"
TM88/2011
M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 1 of 29
Date of institution of suit : 07.05.2008
Date of conclusion of arguments : 21.08.2015
Date of pronouncement of judgment : 11.09.2015
JUDGMENT
1. The plaintiff, a company incorporated under the Companies Act through its authorized representative Dr. Rakesh Sharma has filed the present suit for permanent injunction, infringement of Trade Mark and Copyright, passing off and rendition of accounts etc. in respect of registered Trademark "Green" against defendants. Adumbrated in brief the facts of the case of plaintiff are as follows. Plaintiff was one of the reputed and most leading manufacturer and trader of Plywood Products, Block Boards, Laminates, Laminated Sheets, Decorative Plywood, Decorative Laminates etc. and had been producing and marketing the products bearing the distinctive trade marks/brands, namely, GREEN, GREENPLY, GREENWOOD, GREENLAM, GREENGLOSS, GREENMAICA, GREENCLUB etc. and had been marketing extensive publicity and advertisement incurring huge expenditures to popularize TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 2 of 29 and keep the said trademarks/brands alive in the minds of trade and public. Sales turnover of the plaintiff was Rs. 156 Crores during the year 20032004 as against Rs. 143 Crores in the year 20022003. The principal Trademark and/or House Mark/logo of the plaintiff was GREEN, which was being used by plaintiff in all its products. The mark/brand GREEN was connotative and denotative of the plaintiff's business and the customers/consumers and the trade have extensively associated the said trade mark/house mark with the plaintiff. Plaintiff was engaged in business all over India through distributors and dealers network and having wide range of products, namely, Plywood/Block board products, Laminates, Decorative Laminates, Decorative Plywood, Veneer, Particle boards, Partition doors etc. Plaintiff's products were prepared in compliance with stringent quality control standards. The products of the plaintiff encompass a wide and diverse range and were known for reliability, efficacy, excellent quality and having acquired considerable goodwill and reputation in India. Plaintiff averred that due to uninterrupted usage of the aforesaid trademark and due to registration under the Trade Marks Act, 1999, plaintiff besides acquiring a Common Law Right was also vested with the statutory right over the trademark TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 3 of 29 GREEN in respect of Plywood, Block Boards, Laminates, Decorative Laminates and allied goods in different forms. There were several other marks with the word GREEN, either suffix or prefix, had been registered in favour of plaintiff viz., GREEN, GREENPLY, GREENWOOD, GREENLAM, GREENGLOSS, GREENMAICA, GREENCLUB etc., which also stand registered in the name of plaintiff and were subsisting and valid in respect of various goods viz., Laminates, Laminated Products, Wood and Wood substitute. Plaintiff had exclusive right to use the aforesaid trademarks including its parent mark/brand GREEN. Plaintiff was also the owner of various Copyrights, including the artistic work having a distinctive colour scheme, get up, layout with the meaning of Section 2 (c) of the Copyright Act, 1957, in respect of the label with the mark GREEN in different form, get up, colour combination, style, the Copyright subsists thereon. The said artistic work was the original artistic works produced by plaintiff, having been registered with the Registrar of Copyright. Plaintiff had developed, coined, invented and adopted the trademark/house mark GREEN, which was used for a long period. The unique trademark was used by plaintiff and in conjunction TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 4 of 29 with other trademarks of it. Plaintiff's products were having a distinctive connotation and were being sold in a very large scale throughout India. The plaintiff was also exporting a part of its products and also acquired a distinctive reputation outside India also. Plaintiff submitted that trademark GREEN had come to be recognized and associated exclusively with the plaintiff and no one else.
2. On or about 02.05.2008, plaintiff became aware through their representative about the products sold in the market under the trademark ASSAM GREEN TUFF by the defendant, virtually almost identical to that of the plaintiff and the said Plywood products/Block Boards were of inferior quality. On inquiries, plaintiff found that the defendants were using the almost identical trademark under identical label and selling their products in every nook and corner in the market on different outlets. Said products were much inferior to the plaintiff's product and nothing but the imitation of the plaintiff's product. Plaintiff submitted that adoption and use by the defendants of the trademark GREEN and other marks viz., GREEN, GREENPLY, GREENWOOD, GREENLAM, GREENGLOSS, GREENTOUCH, GREENMAICA, TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 5 of 29 GREENCLUB etc., which stood registered in the name of plaintiff and the mark used by defendants i.e., ASSAM GREEN TUUF was almost identical and/or similar to the trademark of the plaintiff amounts to infringement of registered trademark of the plaintiff. Plaintiff further submitted that defendants had also copied the registered artistic work of the plaintiff, which amounts to infringement of Copyright also. The defendants thus by using the identical mark/colour combination of the label etc. and other features of the plaintiff's products adopted a trade dress, which was almost identical to that of the plaintiff. Plaintiff had received complaints from various quarters, specially from its consumers/customers that Plywood Products, Block Boards of inferior quality with the identical mark/brand GREEN are being sold in the market in different outlets within the territory of this Court. Various unscrupulous dealers and distributors including the defendants in order to cause detriment to the plaintiff and its business with the motives and intentions best known to them have done such imitations and passing off the goods of inferior quality as the plaintiff's product. Plaintiff had published a Trademark/Copyright Caution Notice in Ply Gazette in January 2004, cautioning against the misuse and/or infringement of the TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 6 of 29 reputed trademark GREEN. The use by defendant of the trademark ASSAM GREEN TUFF in respect of the same goods amounts to an infringement of the plaintiff's registered trademark. Plaintiff came to know from reliable sources that defendant, in collusion and connivance with some other unscrupulous traders, were manufacturing/marketing the inferior quality of Plywood Products, Block Boards with the falsified/infringed mark ASSAM GREEN TUFF in order to take illicit benefit of the overwhelming reputation enjoyed by the plaintiff's trademark/word GREEN in respect of Plywood Products, Block Boards etc. The unauthorized use of the word/mark ASSAM GREEN TUFF on the Plywood Products, Block Boards etc. was a calculated steps taken by defendant to exploit the reputation involving the mark/name GREEN. The action of defendant invariably amounts to infringement/falsification of plaintiff's well known, reputed and popular brand/trademark GREEN. The usage of the word/mark GREEN by defendant were obviously intended to take unfair advantage of plaintiff's wellreputed trademark GREEN and detrimental to the distinctive character of the plaintiff's registered trademark. The use of such false mark in respect of Plywood TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 7 of 29 and related products led serious confusion and deception in the course of trade, which would prejudicial not only to the parties but disastrous to the consuming public. The consuming public was under the impression that the product originates from the house of the plaintiff and the defendants continued to take undue and unauthorized advantage of the reputation of the plaintiff. Defendants had deliberately misrepresented to the purchasing public by using trademark ASSAM GREEN TUFF that the goods under the impugned mark originate from or were associated with or approved by plaintiff in some manner or the other in order to pass off their goods as those of the plaintiff. The action of defendant tainted with dishonesty since the defendant's real intention was to cause deception and confusion in the minds of the trading people and consumers, besides causing wrongful loss to plaintiff's business. The use of trademark ASSAM GREEN TUFF with identical products, as that of plaintiff by defendants are flagrant violation of plaintiff's exclusive rights of the word GREEN conferred by registration. The adoption of trademark GREEN by the defendants in its products was not just an illegality of a mere technical nature but was definitely an invasion of the legitimate rights of the plaintiff. Resultant had been this suit.
TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 8 of 29
3. In the filed written statement, defendant no1 took preliminary objections viz., (i) plaintiff had not approached this Court with clean hands and suppressed the material facts as well as plaintiff had attempted to mislead the court by making false statements of facts; (ii) suit was vexatious, frivolous, not maintainable against defendant no1 and it was an abuse of the process of court and based on misleading and false allegations; (iii) suit was misconceived, improper, motivated, malafide, without any basis whatsoever; and (iv) M/s N.T. Industries, Khasra No. 324, Village Tatarpur Road, Garh Road, Hapur, Ghaziabad was of the reputed and most leading manufacturer and trader of Plyboards, Block Boards, DONNET doors and other plywood items in class19, trademark of M/s N.K. Industries/brand SAMPOORAN GREEN SURAKSHA and user from 01.04.2008 vide A.N. 1699866 and R.No. 602626 dated 17.06.2008. Defendant denied that the word GREEN had been registered in favour of plaintiff, in fact the word GREEN had been registered in favour of M/s N.T. Industries, Khasra No. 324, Village Tatarpur Road, Garh Road, Hapur, Ghaziabad vide and style SAMPOORAN GREEN SURAKSHA vide registration no. 602626 and ASSAM GREEN TUFF TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 9 of 29 vide No. 1705441. Defendant no1 also specifically denied that plaintiff was having exclusive right to use the above said brand GREEN. Defendant no1 denied that the word GREEN had been coined by plaintiff or plaintiff got is registered for any ply boards, block boards industries. Defendant no1 was not manufacturer but only shopkeeper of small scale. It is also submitted that defendant no1 never used the trademark of plaintiff GREEN, GREEN PLY, GREEN WOOD, GREEN LOAM, GREEN GLASS, GREEN TOUCH etc. Rest of the averments of plaint have been specifically denied by defendant no1 and prayed for dismissal of the suit with heavy cost.
4. Defendant no2 filed separate written statement. Defendant no2 submitted that plaintiff had failed to give any specific details about its sales or advertisement expenses for the period subsequent to 200304 due to ulterior motives and malafide intentions and plaintiff had deliberately tried to conceal such sales figures and advertisement expenses. The word GREEN is incapable of becoming a Trademark or acquiring distinctiveness or capable of distinguishing the products of TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 10 of 29 plaintiff in the market as the same was generic to the trade and business of plywood and plywood products or any product related with wood and wood industry. The word GREEN refers to character and quality of the goods of plaintiff and refers to source of the raw material for manufacturing of plywood. The word GREEN had also fallen into public domain as a large number of manufacturers and traders are using the word GREEN with respect to Plywood, Wood and Wood Products and plaintiff cannot claim any monopoly over the word GREEN on any pretext whatsoever and it is common property of all who are related to or connected with the trade or business of plywood and wood in any other form. Plaintiff had failed to give any information or details pertaining to its copyright. Plaintiff also failed to disclose the name and address of the artist of the alleged artistic work and had also failed to place on record the original work of art and the assignment of such original work of art in its favour. Defendant no2 submitted that for the purposes of adopting and using the trade mark ASSAM GREEN TUFF, he had filed an application for registration of said trademark on 01.07.2008, which is pending. It is submitted that trade mark ASSAM GREEN TUFF of TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 11 of 29 answering defendant was a combination of three words representing various features of defendant no2's product and as such the answering defendant's trade mark was an invented and coined combination of words forming a distinct trade mark. Mere use of the word GREEN alongwith word ASSAM GREEN TUFF cannot be categorized by plaintiff as an infringement of the trademark of the plaintiff. Remaining averments of the plaint have been denied by defendant no2 in toto.
5. Plaintiff filed replications to the written statements of the defendants to controvert the contentions of the written statement and to reiterate the averments of the plaint.
6. From the pleadings of the parties, following issues were framed by my Ld. Predecessor vide order dated 11.01.2012 : ISSUES
1)Whether the use of trade mark 'Assam Green Tuff' by defendant has infringed the trade marks/brands of the plaintiff by the TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 12 of 29 name of Greenply, Greenwood, Greenlam, Greengloss, Greenmaica, Greenclub etc?
OPP
2)Whether the trade marks of the plaintiff are device marks and not word marks?
(Onus on parties as per their pleadings)
3)Whether the defendant has passed off its goods as if they are originating from the plaintiff? OPP
4)Whether the copyright of the plaintiff has been violated by the defendant? OPP
5)Whether the plaintiff is entitled to delivery up etc. of the infringing material(s) from defendant? OPP
6)Whether the plaintiff is entitled to rendition of accounts from defendant? OPP
7)Whether the plaintiff is entitled to any damages against defendant and if so in what terms? OPP
8) Relief(s)?
TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 13 of 29
7. Vide order dated 31.05.2012 of my Ld. Predecessor, the application of plaintiff under Order XXXIX Rule 1 & 2 of CPC was allowed and defendants were restrained from using trademark "ASSAM GREEN TUFF" in respect of plywood and other allied or cognate goods till the final disposal of the suit.
8. Sh. Arif Ali, authorized representative of plaintiff examined himself as PW1 vide affidavit Ex PW1/A. PW1 relied upon documents i.e., (i) authorization letter exhibited as Ex PW1/1; (ii) sales turn over of plaintiff Ex. PW1/2 for the years 20022003; (iii) copies of Trademark Certificate marked as MarkA to MarkE; and (iv) copy of copyright certificate marked as MarkF. PW1 was crossexamined.
9. Sh. Naresh Kumar, proprietor of defendant examined himself as DW1 vide affidavit Ex DW1/A. DW1 was crossexamined.
10. I have heard arguments addressed by Ld. Counsels for the parties and have given thoughts to the rival contentions put forth, pleadings of the parties, evidence, written arguments filed on behalf of TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 14 of 29 defendant no2, relied precedents and have also examined the record of the case. Despite several opportunities afforded to Ld. counsel for plaintiff and ld. counsel for defendant no.1, no written arguments were filed by them. Ld. counsels for the parties argued in terms of pleadings of parties.
11. Ld. counsel for defendant no2 has relied upon : (1) SBL Ltd. Vs. Himalaya Drug Co., AIR 1998, Delhi 126;
(2) Rhizome Distilleries P. Ltd. & Ors. Vs. Pernod Ricard S.A. France & Ors. 2010 (42) PT C 806 (Del); (3) J.K. Oil Industries Vs. Adani Wilmar Ltd.
MANU/DE/0332/2010; and (4) Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952.
12. My issue wise findings are as under : Findings on Issues No(1) & (2)
1) Whether the use of trade mark 'Assam TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 15 of 29 Green Tuff' by defendant has infringed the trade marks/brands of the plaintiff by the name of Greenply, Greenwood, Greenlam, Greengloss, Greenmaica, Greenclub etc?
OPP
2) Whether the trade marks of the plaintiff are device marks and not word marks?
(Onus on parties as per their pleadings) In the course of his crossexamination by Ld. Counsel for defendant no2, PW1 elicited that he was authorized representative with plaintiff company for the purposes of investigation and brand protection but was not employee of the plaintiff company. The suit was instituted under the signatures of Sh. Raman Khanna, the stated authorized representative of the plaintiff. No resolution in favour of said Sh. Raman Khanna has been proved to institute the suit. In terms of averments in the plaint, it is the case of the plaintiff that it had been producing and marketing its Plywood Products, Decorative Laminated Sheets, Decorative Plywood, Decorative Laminates etc. bearing the distinctive trade marks/brands, namely, GREEN, GREENPLY, GREENWOOD, TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 16 of 29 GREENLAM, GREENGLOSS, GREENMAICA, GREENCLUB etc. and had been making extensive publicity and advertisement incurring huge expenditure to popularize and keep the said trade marks/brands alive in the minds of the trade and public. Besides that, it is also the averment in the plaint that sales turn over of the plaintiff was Rs. 156 Crores during the year 20032004 as against Rs. 143 Crores in the year 20022003. Also is the averment of plaintiff that the principal Trademark and/or House Mark/logo of the plaintiff is GREEN, which was being used by plaintiff in all its products and that the plaintiff's mark/brand GREEN is connotative and denotative of the plaintiff's business whereas the customers/consumers and the trade had been extensively associated with the said trade mark/house mark of the plaintiff.
13. It is own version of PW1 to be not employee of plaintiff and only for the purpose of investigation and brand protection he was made the authorized representative of the plaintiff. It is fact of the matter that PW1 has not been associated in the process of manufacture or sale activities of plaintiff company or with the registration of the marks of the plaintiff company. Plaintiff company neither filed original registration TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 17 of 29 certificates, legal proceedings certificates nor proved their photocopies MarkA to MarkE, filed on record. It is not the case of plaintiff company of having lost the primary evidence in the form of original registration certificates, whose copies are MarkA to MarkE or that such original certificates were destroyed, so as to lead secondary evidence with respect to them. No Legal Proceeding Certificate (LPC), as mandated under Section 137 of Trademarks Act,1999 had been produced nor proved. PW1 admitted in crossexamination that word "GREEN" refers to the quality of the wood of the plaintiff product. It is also the candid admission of PW1 in crossexamination that the sale figures mentioned in Ex PW1/2, the copy of balance sheet of date 31.03.2004 were pertaining to several brands of the plaintiff company including the GREEN brand. In the course of plaintiff evidence, the plaintiff has failed to prove on record (1) the goods of defendants to be having infringed trademarks as alleged; (2) the goods of plaintiff with claimed trade marks or copy right; (3) the sales figures directly related to goods of plaintiff whose trademarks were allegedly infringed by defendants
14. Plaintiff has not proved any document to substantiate its TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 18 of 29 claim of open, long or continuous user of alleged trademark "GREEN" in the present case. Plaintiff has also failed to prove any document in support of its claim of alleged reputation in the trade.
15. The trademark "GREEN" per se being a generic word is incapable of becoming a Trademark or acquiring distinctiveness or distinguishing any product and wood, plywood or any allied or cognate goods. The expression "GREEN" is used in combination of several other words/trademarks by various manufacturers and traders for wood products including plywood and as per defendants, has become common to trade and open to trade to use, accordingly, anyone including plaintiff cannot claim monopoly with respect of the same.
16. Claim/assertion of plaintiff that alleged trademark "GREEN" is a well known in the trade is mere bald averment of PW1 not substantiated by any cogent evidence, oral or documentary.
17. In the case of S.B.L. Ltd. Vs. Himalaya Drug Co. (supra), Hon'ble High Court of Delhi held that : TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 19 of 29 "Mc. Carthy on Trade marks and Unfair Competition. (Third Edn. Vol. 2) states : "The name of a product or service itself - what it is - is the very antithesis of a mark. In short, a generic name of a product can never function as a trade mark to indicate origin. The terms "generic" and "trade mark" are mutually exclusive.... The concept of "generic name" and "trade name" are mutually exclusive. Thus, if, in fact a given term is 'generic'. It can never function as a mark to identify and distinguish the products of only one seller.
An abbreviation of a generic name which still conveys to the buyer the original generic connotation of the abbreviated name, is still, "generic". "Acronyms of generic names are often used interchangeable with the full generic name and recognized as equivalent....."
"if the abbreviation is not recognizable as that original generic term, then the abbreviation is like a fanciful mark and protectable."
"As with misspelling of descriptive terms, a misspelling of a generic name which does not change the generic significance to the buyer, is still "generic". TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 20 of 29 'Nobody can claim exclusive right to use any word, abbreviation, or acronym which has become public juris. In the trade of drugs it is common practice to name a drug, by the name of the organ or ailment which it treats or the main ingredient of the drug. Such organ, ailment or ingredient being public Jurisdiction or generic cannot be owned by anyone for use as trade mark.'
18. In the case of Rhizome Distilleries P. Ltd. & Ors. (supra), Hon'ble High Court of Delhi held that : "The jural message, therefore, is clear and unequivocal. If a party chooses to use a generic, descriptive, laudatory or common word, it must realize that it will not be accorded exclusivity in the use of such words. At the most, it may bring a challenge in the nature of passing off and in such an event the Court would look at the rival labels/packagings/trade dresses in order to determine whether a customer possessing a modicum memory and ordinary intelligence may be so confused as to purchase one product believing it to be the other.
24. It is our analysis that no exclusive or proprietary rights can be claimed by either of the parties before us in respect of the word IMPERIAL which is not only in common parlance to be found in every dictionary, but also is laudatory in nature as it alludes to royalty or grandeur. With respect, we are not convinced that IMPERIAL refers only to royalty, empowering only such TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 21 of 29 persons to take litigative umbrage. Illusions of royalty and grandeur are one of the sentiments resulting from imbibing spirits, and, therefore, IMPERIAL may justifiably be seen as descriptive."
19. Section 17 (1) of Trademarks Act 1999 reads as follows : "17. Effect of registration of parts of a mark (1) When a trade mark consists of several matters its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole."
Aforesaid section confers an exclusive right of proprietor of a trademark for its use as a whole. The alleged registration device mark contains several matters including colour, shape of an object etc. and as per Section 17 (1) protection if any, could be extended to the device mark taken as a whole and not any of the word/mark in isolation.
20. Plaintiff company and/or PW1 has failed to prove by cogent evidence that any labels or any article/goods of defendants were identically similar to the goods of plaintiff company bearing claimed marks of plaintiff.
TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 22 of 29
21. In the case of J.K. Oil Industries (supra), it was held by Hon'ble Supreme Court of Delhi that : "8. A conjoint reading of the aforesaid provisions would clearly bring to fore the following :
(i) A mark in the form of a label can be registered;
which is the situation obtaining in the instant case.
(ii) A trade mark registration confers on the proprietor exclusive right to use the trade mark as a "whole", which is in the instant case is in form of a label.
(iii) There is no exclusivity conferred on the registered proprietor if he chooses to use only part of the whole of such registered mark and such "part" is neither a subject matter of the separate application for registration filed with the Registrar nor is it registered separately; and
(iv) Lastly, the registered proprietor may be able to protect a "part" of a registered trade mark if he is able to show it is not common to trade nor that it has obtained a distinctive character."
22. Plaintiff/PW1 has not been able to prove by preponderance of probabilities from any cogent evidence, oral or documentary, that trademark "ASSAM GREEN TUFF" of defendant no2 amounting to TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 23 of 29 infringement as it has not been able to prove that art work, layout pattern, colour combination of any label of trademark "ASSAM GREEN TUFF"
of the defendant had any resemblance with that of art work, layout pattern, colour combination of any label of trademark alleged mark "GREEN" of the plaintiff, which could lead to confusion, deception amongst purchasing consumers or members of the trade.
23. In view of the cumulative effect of the discussions herein above, plaintiff has failed to discharge its onus on this issue. Plaintiff has also not been able to prove that its trademarks were device marks and not wood marks. Issues no1 and 2 are decided in favour of defendants and against the plaintiff accordingly.
Findings on Issue No(3) Whether the defendant has passed off its goods as if they are originating from the plaintiff? OPP
24. Apex Court has laid down following criteria in determining TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 24 of 29 an action of passing of in the case of Cadila Health Care Ltd. (supra), as follows : "42. Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:
a) The nature of the marks i.e. whether the marks are word marks or label marks for composite marks, i.e. both words and label works.
b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they are used as trade marks.
d) The similarity in the nature, character and performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing
orders for the goods and
g) Any other surrounding circumstances which may
TM88/2011
M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 25 of 29
be relevant in the extent of dissimilarity between the competing marks."
25. As has been discussed above in findings of issues no1 and 2, plaintiff/PW1 has failed to prove any resembleness between marks of plaintiff and defendant; class of purchasers likely to buy goods bearing such marks; mode of purchasing the goods; any other surrounding circumstances so as to discharge its onus of defendant having passed off its goods as if they are originating from plaintiff. In led plaintiff evidence, there is no relevant fact proved by plaintiff/PW1 that defendant had passed off its goods as if they were originating from plaintiff. Issue no3 is decided in favour of defendants and against the plaintiff accordingly.
Findings on Issue No(4) Whether the copyright of the plaintiff has been violated by the defendant? OPP
26. Plaintiff has not filed nor proved in plaintiff evidence the registration certificate of its copyright. No cogent evidence has been led TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 26 of 29 by plaintiff/PW1 of defendants having violated the copyright of plaintiff or manner of such violation, the place of its violation or the extent of its violation. In crossexamination, PW1 admitted that no stamp of infringing mark was recovered from DW1 at the time of execution of commission, appointed by the Court. Defendant no1 had no manufacturing unit. PW1 also elicited that they had not verified the address of defendant no2 nor had checked the industry of defendant no2. Only photocopy of the copyright certificate MarkF has been placed on record by PW1 and for want of its original, said photocopy being secondary evidence is inadmissible since there is no proved fact of loss or destruction of the primary evidence of original copyright certificate. Accordingly, plaintiff has failed to discharge its onus on this issue. Issue no4 is decided against the plaintiff and in favour of defendants accordingly.
Findings on Issues No(5), (6) & (7)
5)Whether the plaintiff is entitled to delivery up etc. of the infringing material(s) from defendant? OPP TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 27 of 29
6)Whether the plaintiff is entitled to rendition of accounts from defendant? OPP
7)Whether the plaintiff is entitled to any damages against defendant and if so in what terms? OPP
27. In view of discussions in findings on issues no1, 2, 3 and 4, plaintiff has failed to lead any cogent evidence, orally or documentary for defendant having infringed trademarks of plaintiff or violated copyright of plaintiff or having passed of goods as if they were originating from plaintiff, so as to be entitled for the reliefs claimed in these issues. Even, the copy of balance sheet as on date 31.03.2004 was the sole document with respect to alleged sales turn over of plaintiff company which was brought on record. With respect to Ex PW1/2, PW1 had candidly admitted that sales figures depicted therein pertained to several brands of the plaintiff company including the "GREEN" brand. Plaintiff company/PW1 has not brought on record any cogent and documentary evidence to substantiate its claim of open, long or continuous user of the alleged trademark "GREEN" with respect to the sales figure of the TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 28 of 29 goods with such trademark for the claim/arisen cause of action in its favour. For want of such cogent evidence, plaintiff has failed to discharge its onus on these issues. Issues no5, 6 and 7 are accordingly decided against the plaintiff and in favour of defendants.
RELIEF
28. In view of my findings with respect to the above issues, the suit of the plaintiff is dismissed with costs. Decree sheet be prepared accordingly and file be consigned to record room. Announced in open Court (GURVINDER PAL SINGH) on 11th Day of September, 2015. Addl. Distt. Judge01 (Central) Tis Hazari Courts, Delhi.
(AD) TM88/2011 M/s Greenply Industries Ltd. Vs. M/s Daya Timbers & Anr. Page 29 of 29