Delhi District Court
Manoj Saxena (Sole Proprietor) vs M/S New Pooja Electricals on 10 July, 2012
IN THE COURT OF MS. SEEMA MAINI :
ADJ (3) NORTH: TIS HAZARI COURTS: DELHI
In re :
CS No. 62/2010
Unique Case ID No. 02401C0207602010
In the matter of:
Manoj Saxena (Sole Proprietor)
M/s Dollar Electrical Industries
1808, Electrical Market, Bhagirath Palace,
Chandni Chowk, Delhi-110006. Plaintiff
VERSUS
M/s New Pooja Electricals
#5-1-628, Troop Bazar
Hyderabad-500001 (A.P.)
(Through its Proprietor / Partners) Defendant
Date of filing of the suit : 18.05.2010
Date of reservation for judgment : 09.05.2012
Date of judgment : 10.07.2012
Suit for Permanent Injunction, Infringement of Registered Trade
Mark, Infringement of Copyright, Claim for Damages Etc.
APPEARANCE:
Sh. R.K. Jain and Sh. M.L. Mangla, counsels for the plaintiff.
Sh. Satish Kumar, counsel for the defendant.
JUDGMENT
1. The instant suit has been filed by the plaintiff Sh. Manoj Saxena, Proprietor of M/s Dollar Electrical Industries for permanent injunction, infringement of registered trade mark, infringement of copyright and claim for damages etc. against the defendant M/s New Pooja Electricals.
CS No. 62/102. The brief facts, as stated by the plaintiff, in the plaint are that the plaintiff M/s Dollar Electrical Industries has filed a suit for permanent injunction, infringement of registered trade mark, infringement of copyright and claim for damages etc. against the defendant M/s New Pooja Electricals with a submission that the plaintiff is engaged in the business of manufacturing and selling "Electrical Fittings & Accessories & Luminaries"
for several years, carrying on his business under the name and style of M/s Dollar Electrical Industries, of which the plaintiff is the sole proprietor. Initially M/s Dollar Electrical Industries was a sole partnership concern of Sh. Jagdish Prasad Saxena, since the year 1958, but on 07.01.2004, the plaintiff was inducted as a partner in the said business alongwith Sh. Jagdish Prasad Saxena and on retirement of Sh. Jagdish Prasad Saxena, from the said business on 01.04.2004, the plaintiff took over the entire business of M/s Dollar Electrical Industries, as its sole proprietor.
3. It was stated that the plaintiff's firm had been using a fanciful and distinctive trade mark/logo/label consisting of a distinctive device having alphabet 'D' inscribed in a circle in the middle of the said device, in respect of 'electrical fittings, accessories & luminaries'. It was stated that in the year 1958, the said trade mark/label, was got created, conceived and adopted by Sh. Jagdish Prasad Saxena, the then proprietor of the firm M/s Dollar Electrical Industries, for using the same on the electric goods, on an extensive scale and on an exclusive basis. The plaintiff's firm also obtained the registration of the said distinctive trade mark/logo/label device having the alphabet 'D' inscribed under the Trade Mark Act, under no. 657087 in class-09, in respect of the electrical fittings and accessories, which is valid and subsisting and in force till date.
CS No. 62/104. It was stated that all the assets including trade marks and copyrights as well as the liabilities remained with the plaintiff, who took over the said firm M/s Dollar electrical Industries as its sole proprietor and therefore, the plaintiff also became the proprietor of the said artistic work/label/logo having distinctive device of 'D' as well as, of the registered trade mark no. 657087 in Class-09 consisting of the said 'device of D'. The necessary writing was also executed, regarding the assignment of the copyright in favour of the plaintiff. The necessary request for bringing the name of Sh. Manoj Saxena, trading for M/s Dollar Electrical Industries, as subsequent proprietor of the said registered trade mark no. 657087, has already been filed with the Trade Marks Office, which is pending disposal.
5. It was stated that the trade mark/label 'device of D' appears on each and every product, advertisement, information, brochures & catalogs of the plaintiff, that come into the market and the same is prominent and distinctive, having been used continuously, extensively and exclusively for the last more than five decades by the plaintiff firm since 1958 till date, without any interruption thereof. The said trade mark/distinctive 'device of D ' of the plaintiff, by virtue of long, continuous, extensive and exclusive used for the last more than five decades, has become distinctive and is associated exclusively with the name of the plaintiff, by the trade channels and the purchasing public. The aforesaid goods of the plaintiff under the said trade mark / artistic work 'device of D' have been sold extensively and practically throughout India, through its wide dealer's network, covering even the remote areas. The annual sale of the plaintiff firm under the said trade mark are very extensive and run into several crores of rupees.
6. It was stated that the plaintiff has been extensively advertising CS No. 62/10 its reputed trade mark / art work 'device of D', through various print media including newspapers, magazines, trade journals, sign-boards, brochures, posters, calendars, catalogs, as well as through visual and electronic media and also through various sales promotion schemes including dealer's schemes, and huge amount is being spent by the plaintiff on the said advertisements. The said trade mark/distinctive 'device of D' of the plaintiff has become a well recognized mark, in respect of electrical fittings and the aforementioned goods due to excellent quality and the said trade mark is associated exclusively with the name of the plaintiff and has earned a unique goodwill and reputation amongst the trade channels and the purchasing public. The plaintiff, thus, claimed the sole and exclusive proprietary rights over the said trade mark / art work 'device of D', by virtue of prior adoption coupled with prior long, continuous and extensive user for the last more than five decades and as well as under the Copyright Act by virtue of being the original creator / owner of the said art work and also by virtue of registration of the said trade mark under the Trade Mark Act. It was stated that the use of the said trade mark / logo / label consisting of distinctive device having 'D' inscribed therein and / or any other deceptively similar trade mark in respect of the aforesaid goods by any other person without the permission of the plaintiff, is bound to cause confusion and deception amongst the trade channels and the purchasing public and such misuse shall amount to unfair trade practice and infringement of the proprietary rights of the plaintiff, with respect to the said trade mark.
7. It was further stated that in the first week of May, 2010, the plaintiff came across 'electrical fittings' being manufactured and unscrupulously sold by the defendant bearing the infringing trade mark/label/logo having an identical device as that of the plaintiff, whereby CS No. 62/10 the alphabet 'B' was identically inscribed inside a circle, in the middle of the infringing device. The plaintiff also noticed that the defendant had also malafidely, adopted a violating trade mark 'BOLLAR' in respect of its goods which was deceptively similar to the prior used and reputed trade mark/trade name of the plaintiff namely 'DOLLAR'. The defendant has also identically copied the style of representation and font size while representing 'B' in the infringed device and the defendant also copied the images of the plaintiff's products as appearing on the plaintiff's brochure / visiting cards bearing the infringing trade mark / art-work. It was stated that the said adoption of the infringing artistic label / representation by the defendant on its products, amounts to infringement of plaintiff's proprietary rights with respect to its prior used artistic work / representation protected under the common law as well as under the Copyright Act, 1957.
8. It was also stated that the use of the infringing trade mark as well as the infringing copy right by the defendant in respect to identical goods would result into confusion and deception in the mind of general public and in the trade, as the respective goods of the plaintiff's firm under the said trade mark/art-work 'device of D' and those of the defendant under the infringing trade mark/infringing copyright are likely to be sold int he same shops and to the same class of purchasers. There is a high possibility and probability that unwary purchasers would be mistaken into buying the goods of the defendant, as the genuine goods of the plaintiff, thus causing an uncalled for loss of profits and business to the plaintiff. The defendant is deliberately and knowingly infringing the proprietary rights and registered trade mark 'device of D' of the plaintiff for the reasons that the plaintiff's said trade mark / art-work is well reputed in the market and is being used since 1958, whereas the defendant's goods are on recent origin and therefore there is an attempt on the part of the CS No. 62/10 defendant to pass off its goods as that of the plaintiff by adopting infringing and the deceptively similar trade mark / art-work. The plaintiff has suffered losses in its goodwill, reputation and business, which cannot be ascertained in terms of money but the plaintiff has claimed a sum of Rs. 1,00,000/- as damages from the defendant for the loss suffered by him, reserving its right to claim further actual and additional damages from the defendant, if found due at a later stage.
9. It was stated that the cause of action firstly arose in favour of the plaintiff and against the defendant in the first week of May, 2010 when the plaintiff came to know about the infringing goods of the defendant bearing the infringing art-work and infringing trade mark 'device of B', being sold in the markets in North and Central Delhi. The cause of action is continuing one and is still subsisting till date. This court has the territorial jurisdiction to entertain and try the instant suit u/s 134 (2) of the Trade Marks Act, 1999, as the plaintiff is the registered proprietor of the trade mark 'device of D' in a label form under registration no. 657087 in respect of electrical fittings and accessories. The plaintiff is carrying on its business within the territorial jurisdiction of this court. Further, the plaintiff is the author and owner of the aforesaid artistic work / label / representation under the Copyright Act, which has been infringed by the defendant, therefore this court has the territorial jurisdiction to try and entertain the present suit u/s 62 of the Copyright Act, 1957. The requisite court fee has been paid for the relief of permanent injunction and for damages of Rs. 1,00,000/-, which have been claimed.
10. It is prayed that a decree of permanent injunction be passed in favour of the plaintiff and against the defendant, thereby restraining the defendant, its partners, dealers, distributors, agents and all other persons CS No. 62/10 acting on its behalf, from manufacturing, selling, offering for sale or otherwise dealing in electrical fittings & accessories under the infringing trade mark 'device of B' and / or from using any other deceptively similar trade mark in respect of identical / similar goods, which may constitute infringement of registered trade mark 'device of D' of the plaintiff. A decree of permanent injunction be passed in favour of the plaintiff and against the defendant, thereby restraining the defendant, its partners, dealers, distributors, agents and all other persons acting on its behalf, from infringing the copyright of the plaintiff pertaining to artistic work / label / representation of 'device of D' in any manner whatsoever and from passing off its goods as the goods of the plaintiff. It is also prayed that an order for destruction of all the blocks, dies, finished goods, packing material, bills, advertisement material, stationery and other incriminating material of the defendant bearing the infringing trade mark 'device of D' as well as any other infringing art-work be also passed. It was also prayed that a decree for recovery of damages of Rs. 1,00,000/- for the loss suffered by the plaintiff, be passed alongwith costs of the suit.
11. Written Statement was filed by the defendant, wherein various preliminary objections were taken by the defendant to the effect that the plaintiff has no cause of action to file the present suit, as the defendant is neither the manufacturer nor the dealer of the impugned goods. The defendant is based in Hyderabad and has not supplied / sold any goods in Delhi and therefore all the allegations made by the plaintiff are wrong, false and baseless and hence the suit of the plaintiff is liable to be dismissed. The suit is also not maintainable as it has not been signed, verified and instituted by the duly authorized person. Moreover, the plaintiff has no locus-standi to file the present suit as the plaintiff is not the owner of the trade mark / logo / label / device having alphabet 'D' inscribed CS No. 62/10 therein. It was stated that as per the alleged partnership deed dated 07.01.2004 entered into between Sh. Jagdish Prasad Saxena and the plaintiff, the business of the firm was re-sale of electrical goods and even after conversion of that concern into partnership firm, the business of the continued to be that of re-sale of electrical goods and general items. Further, in the present case the plaintiff is claiming his right in the trade mark / logo / label / device having alphabet "D" inscribed therein under the Trade Marks Act. The alleged partnership deed has been entered into for carrying on the business of re-sale of goods and not for manufacturing the goods with the alleged trade mark / logo / label. Since the said alleged partnership deed does not given any right to the plaintiff to sell any manufactured goods, he cannot claim any right over the said trade mark / logo / label / device for manufacturing and selling any goods bearing the trade mark / logo / label / device under the firm name M/s Dollar Electrical Industries. The suit of the plaintiff is also to be dismissed as the plaintiff cannot claim monopoly over the alphabet 'D" in any manner whatsoever. It was stated that this court does not have the territorial jurisdiction to try and entertain the instant suit.
12. On merits, the assertions made by the plaintiff as regards the business of the plaintiff, his induction as a partner and taking over the entire business, were denied for want of knowledge but it was stated that the plaintiff be put to strict proof of the said averments. It was denied that the defendant was clandestinely selling electrical goods bearing the infringing trade mark, having an identical device as that of the plaintiff, as alleged. It was also denied that any trade mark "BOLLAR" has been adopted by the defendant. It was stated that the defendant is not related in any way either with the manufacture or sale of the goods bearing the trade mark 'BOLLAR' in the market, including at North & Central Delhi. It CS No. 62/10 was stated that the plaintiff is not the registered owner / proprietor of the trade mark 'Device of D' in a label form in respect of electrical fittings and accessories, as alleged. It was stated that the plaintiff is not the copyright holder of the alleged artistic work under the Copyright Act. It was stated that the suit of the plaintiff was false and frivolous.
13. Replication to the Written Statements of defendant, was filed by the plaintiff denying the contents of the Written Statement, and reiterated the contents of the plaint.
14. An application u/o 39 Rule 1 & 2 CPC moved on behalf of the plaintiff was allowed vide order dated 07.03.2011 and an interim injunction was passed in favour of the plaintiff and against the defendant.
15. On the pleadings of the parties, on 22.08.2006, certain issues were framed in the instant suit, however, when the file was taken up for dictating orders, it transpired that erroneous issues had been framed on 22.08.2006, while the vital issues were missing. Therefore, in the presence of counsels of the parties, the issues framed on 22.08.2006 were struck off and the following issues were framed and it was also stated by the parties that no further evidence was to be led :
ISSUES :-
1. Whether the Delhi Court does not have any territorial jurisdiction to try and adjudicate upon the present suit? OPD.
2. Whether the plaintiff is entitled to a decree of permanent injunction, as prayed for in the prayer clause of the plaint? OPP.
3. Whether the plaintiff is entitled to any damages? If so, CS No. 62/10 to what quantum? OPP.
4. Relief.
16. To substantiate his case, the plaintiff entered the witness box as PW1 and tendered his evidence by way of an affidavit, which he proved as Ex. PW1/A. He testified on oath the averments made in the plaint and brought on record the i.e. trade mark registration certificate, copy of which as Ex. PW 1/1 (OSR), copy of trademark renewal certificate as Ex. PW1/2 (OSR), photocopy of the partnership deed is now marked as Mark A, photocopy of dissolution deed which is Marked as Mark B, copy of letter dated 05.011.2009 with copy of TM-24 written to Registrar of Trademarks as Mark C, copy of the registration certificate under Sales Tax as Ex. PW 1/6 (OSR), copy of the certificate granted by Small Scale Industries as Mark D, copies of the invoices through which goods were sold as Ex. PW 1/8 to PW 1/30, purchase orders dated 14.12.1998 and 31.01.2001 as Ex. PW 1/35 and PW 1/36, the copies of various advertisements which appeared in magazine etc as Ex. PW 1/37 to PW 1/84 (OSR), photographs of the wrapper appearing on the product of the plaintiff and defendant as Ex. PW 1/85 to PW 1/91, the original visiting card of the defendant as Ex. PW 1/92.
17. After close of PE, no DE was led by the defendant.
18. I have heard Sh. M.L. Mangla and Sh. R.K. Jain, counsels for plaintiff and Sh. Jogesh Kumar, counsel for the defendant, perused the record and have also considered the rival contentions of the parties. My issue-wise findings are as under :
ISSUE No. 1 :-
Whether the Delhi Court does not have any territorial jurisdiction to try and adjudicate upon the present suit? OPD.CS No. 62/10
19. The onus to prove the said issue was upon the defendant but the said onus was not discharged as the defendant failed to lead any evidence in defence. The defendant did not elucidate or prove as to why the Delhi Court does not have the jurisdiction to adjudicate upon the matter. On the other hand, as per the assertions made by the plaintiff in para no. 16 of the plain as well as in para no. 17 of his affidavit in evidence Ex. PW 1/A, the plaintiff came across 'electrical fittings' being manufactured and unscrupulously sold by the defendant in Delhi, with the alleged violating trade mark / logo / Label / art work in respect of its goods, which are similar / deceptive similar to the trade mark 'Dollar' which belongs to the plaintiff. Therefore, cause of action arose in Delhi, where the plaintiff is having his office. It is the settled preposition of law that one of the place where the plaintiff can file his suit, is the place where the cause of action arose and therefore Delhi Court definitely has the territorial jurisdiction to adjudicate upon the present suit.
Issue no. 1 is accordingly decided in favour of the plaintiff.
ISSUE No. 2 :-
Whether the plaintiff is entitled to a decree of permanent injunction, as prayed for in the prayer clause of the plaint? OPP.
20. Vide the prayer clause in the instant suit, the plaintiff has sought for a decree of permanent injunction for restraining the defendant, its partners, dealers, distributors, agents and all other persons acting on its behalf, from manufacturing, selling, offering for sale or otherwise dealing in electrical fittings & accessories under the infringing trade mark 'device of B' and / or from using any other deceptively similar trade mark in respect of identical / similar goods, which may constitute infringement of registered CS No. 62/10 trade mark 'device of D' of the plaintiff. A decree of permanent injunction is also sought thereby restraining the defendant, its partners, dealers, distributors, agents and all other persons acting on its behalf, from infringing the copyright of the plaintiff pertaining to artistic work / label / representation of 'device of D' in any manner whatsoever and from passing off its goods as the goods of the plaintiff. It is also prayed that an order for destruction of all the blocks, dies, finished goods, packing material, bills, advertisement material, stationery and other incriminating material of the defendant bearing the infringing trade mark 'device of D' as well as any other infringing art-work be also passed. To substantiate that the plaintiff had a good case in his favour for seeking the permanent injunction, the plaintiff has testified on oath that he was the proprietor of M/s Dollar Electrical Industries, being engaged in the business of manufacturing and selling electrical fittings & accessories & luminaries for several years. Initially, M/s Dollar Electrical Industries was a sole proprietorship concern of Sh. Jagdish Prasad Saxena since 1958 but on 07.01.2010, the plaintiff was inducted as a partner in the said business and on retirement of Sh. Jagdish Prasad Saxena from the business on 04.04.2004, the plaintiff took over the entire business of M/s Dollar Electrical Industries, as its sole proprietor. However, only a photocopy of the partnership deed was placed on record as Mark A, while the copy of the dissolution deed was placed on record as Mark B. He also brought on record the registration of the distinctive trade mark / label / logo / art work, which was registered in the year 1958 after the same was adopted by Sh.
Jagdish Prasad Saxena in respect of the said goods and the registration of the distinctive device of alphabet 'D' inscribed in the middle of circle of said device. The registration number of the said trade mark bearing no. 657087 in class-09 was renewed from time to time and the copy of the trade mark renewal certificate has been brought on record as Ex. PW1/2, which is not CS No. 62/10 refuted. It was also testified by the plaintiff that after the dissolution of the partnership on retirement of Sh. Jagdish Parsad Saxena, the plaintiff took over all the assets including the trade mark and copyright of the said firm M/s Dollar Electrical Industries and thus became the owner of the trade mark / logo / label / art work of distinctive 'device of D' and copyright thereof, of M/s Dollar Electrical Industries. The necessary request for bringing the name of Manoj Saxena trading for M/s Dollar Electrical Industries as subsequent proprietor of registered trade mark, was filed by the plaintiff with the Trade Mark Office, which is yet pending disposal. However, the dissolution deed was not brought and proved on record, as per law for the reasons best known to the plaintiff. Therefore, there is no document brought and proved that the plaintiff had become the absolute owner / proprietor of the firm and the trade mark and device in question.
21. The copy of the registration certificate under the Sales Tax Act was brought on record as Ex. PW 1/6, which also shows the name of M/s Dollar Electrical Industries being involved in the manufacturing of electrical fittings. Further more, the registration of the firm M/s Dollar Electrical Industries as Small Scale Industries for the purposes of sales tax has also been brought on record. The invoices Ex. PW 1/8 to PW 1/34, the copies of purchase orders Ex. PW 1/35 and PW 1/36 and various advertisements appearing in certain magazines, were brought on record as Ex. PW 1/37 to Ex. PW 1/84. The photographs of the product of the plaintiff and the defendant were brought on record as Ex. PW 1/85 to PW 1/91, while the visiting card being circulated by the defendant was brought on record as Ex. PW 1/92.
22. However, it is note worthy, that the registration certificate of the CS No. 62/10 trade mark bearing no. 657087 dated 28.02.1995 stands in the name of Sh. Jagdish Parsad Saxena, who was trading as M/s Dollar Electrical Industries and subsequently the trade mark / distinctive 'device of D' / label was also registered alongwith the trade mark bearing no. 657087 vide Ex. PW 1/1, which therefore stands in the name of Sh. Jagdish Parsad Saxena. Therefore, for all practical purposes, the trade mark bearing registration 657087, comprising of distinctive 'device of D', having the letter 'D' inscribed in a circle, in respect of electrical fittings, stood registered in the name of Sh. Jagdish Parsad Saxena and not Mr. Manoj Saxena. None of the registration certificates or the invoices, carry the name of Manoj Saxena as its proprietor, though all the documents brought on record show that distinctive 'device of D' was the trademark of M/s Dollar Electrical Industries, whether a proprietorship concern or a partnership concern. No doubt, in his cross examination, PW 1 was unable to show any document and prove it as per law, that he had either been inducted as a partner alongwith Sh. Jagdish Parsad Saxena in the firm M/s Dollar Electrical Industries or that on its dissolution he became the sole proprietor. No doubt, a copy of the letter by Mr. Manoj Saxena to the Registrar of Trade Mark, for transfer of the trademark 'device of D' / label / logo bearing no. 657087 in class-09 in his name, has been averred to have been made, but even the said request has yet not been acceded to by the Registrar Trade Mark. The fact remains that even the said letter was not proved as per law and therefore admittedly the trademark still stands in the name of M/s Dollar Electrical Industries, under the proprietorship of Sh. Jagdish Parsad Saxena. It is strange and also uncomprehendable as to why the plaintiff Manoj Saxena refrained from bringing on record the original partnership deed and the dissolution deed, copies of which were though, brought on record as Mark A and B, since the said documents would have helped him, go a long way in establishing CS No. 62/10 his case. No explanation was also forthcoming about the whereabouts of the said documents and further more, if the said documents had been registered, the requisite record could have been summoned from the office of Registrar of Firms, if the plaintiff was keen on establishing his case. But for the reasons best known to him, the plaintiff shied away from bringing the said documents on record or proving them as per rules. Inference is therefore, adverse to the plaintiff.
23. It is worthwhile to note that as per the plaintiff he was inducted as a partner on 07.01.2004, while Sh. Jagdish Parsad Saxena retired on 04.04.2004 but the renewal certificate of the trademark shows that the registration of the trademark was extended for a period of 10 years on 28.02.2005 till 28.02.2015 but yet again in the name of Sh. Jagdish Parsad Saxena, trading as M/s Dollar Electrical Industries. Had Mr. Manoj Saxena been inducted as a partner in the said firm, the renewal certificate of the trademark would not have been in the name of only Jagdish Parsad Saxena the proprietor, but in the name of Jagdish Parsad Saxena and Manoj Saxena, the partners of M/s Dollar Electrical Industries. Therefore, none of the documents, which have been brought on record, establish that it was Manoj Saxena, who was dealing as M/s Dollar Electrical Industries and in whose favour the distinctive 'device of D' stood register as a trademark, bearing no. 657087.
24. Further more, it was the testimony of PW 1 that in the first week of May, 2010, the plaintiff came across 'electrical fittings' being manufactured and unscrupulously sold by the defendant under the name & style of M/s New Pooja Electricals, bearing infringing trademark / logo / art work of 'device of B', comprising of alphabet 'B' inscribed in the circle inside the infringing device. If the comparative photographs, wrappers and CS No. 62/10 the advertisements of M/s Dollar Electrical Industries and M/s New Pooja Electricals trading with the name of "Bollar", brought on record as Ex. PW 1/85 to PW 1/91, are scrutinized, the same shows that M/s New Pooja Electricals is carrying a deceptively similar trademark / label device of 'B' as that of M/s Dollar Electrical Industries, which has registered trade mark / 'device of D', registered in its name.
25. During the course of arguments, Ld. Counsel for the plaintiff as referred to section 2 (h), 28 and 29 of the Trade Mark Act, 1999, which for ready reference have been reproduced herein under, besides quoting several authorities, which are as under, for authenticating his contentions.
Sec.2 (h) "deceptively similar" -- A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.
Sec.28 Rights conferred by registration -- (1) Subject to the other provisions of this Act, the registration of a trademark shall, if valid, give to the registered proprietor of the trademark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trademark is registered and to obtain relief in respect of infringement of the trademark in the manner provided by this Act.
(2) -- ...........
(3) -- ...........
Sec. 29 Infringement of registered trade mark -- (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the court of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
In "Midas Hygiene Industries P. Ltd. Vs. Sudhir Bhatia, 2004(28) PTC 121 (SC)", in a case in Trade Mark Act, for infringement CS No. 62/10 and passing off action, where the plaintiff was the prior and prominent user of the phrase 'Laxman Rekha' and defendant was using the phrase 'Magic Laxman Rekha', it has been held by the Hon'ble Apex Court that :-
" The grant of injunction becomes necessary where it is prima-facie appears that the adoption of the mark was dishonest and there was a dishonest intention of passing off the goods by the defendant as that of the plaintiff."
In "Parle Products (P) Ltd. Vs. J.P. & Co. Mysore, AIR 1972 (SC) 1359", Hon'ble Apex Court has held the test for determination of the deceptive similarity between the two products. It was held by the Hon'ble Apex Court that :-
"In order to come to the conclusion, whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to fine out if there are any differences in the design, and if so, whether they are of such character as to prevent one design from being mistaken for the other. 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."
In "M/s Pidilite Industries P. Ltd. Vs. M/s Mittees Corporation & anr. 1988(2) ALR, Delhi 436", in a case under Trade and Merchandise Marks Act, 1958, where the plaintiff was the registered user of the trade mark 'FEVICOL' registered in 1960 and the defendants adopted a similar trade mark "TREVICOL" in 1985 for similar goods, being sold in similar containers having deceptively similar design, it was held by the Hon'ble Delhi High Court that :-
"For granting or refusing a temporary injunction, CS No. 62/10 the Court has to be form an opinion as to whether the plaintiff has a prima facie case. The words "FEVICOL" and "TREVICOL" sound similar and the containers are also similar, and the design on the defendant's containers is also deceptively similar. The plaintiff has been using his trade mark much earlier than the defendants and is spending a huge amount on advertisement, but the defendant has not been doing so and therefore, injunction was granted."
Furthermore, in the said judgment, the Hon'ble Court has further observed that :-
" The suffix "Vicol" is common in the two marks. However, there is difference as regards the prefix. the prefix in plaintiff's trade mark is 'Fe' whereas in the defendant's trade mark it is 'Tre'. However, while pronouncing the two marks taken as a whole sound quite similar. As stated above, the mark is to be compared as a whole and it will not be right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the impugned mark, there does not exist sufficient similarity to cause confusion."
In Century Traders Vs. Roshan Lal Duggar & Co. 1977 PTC, (suppl.) (1) 720(Del)(DB), the Hon'ble Delhi High Court, in a passing off action, under Trade Mark Act, has held that :-
" For claiming relief, it is not necessary to show that the trade mark had been used for a considerable length of time, but a single actual user with an intent to continue such use is enough."
It was further held that :-
"the user of the trade mark by another person, even once, constitute a prima facie cause in favour of the plaintiff and is sufficient for causing the CS No. 62/10 damage to the plaintiff. The right of the plaintiff, in whose name stand the registered trade mark, the right is to be protected and the balance of convenience is in favour of the person who has established a prima facie right to property."
In "Jindal Industries Ltd. Vs. Samana Steels Ltd. 1993(1) PTC, Delhi 509", the Hon'ble High Court, in a case alleging the infringement of trade mark, preferred by the plaintiff company, who was the registered proprietor of trade mark 'JINDAL' in respect of G.I. Pipes and tubes and holding a copyright of a device of map of India, in Class 6, and using the same since 1961, and where defendant was found using a similar and deceptive trade mark 'BINDAL' with a similar device for similar goods, held that :-
"In deciding the similarity between the two marks courts have to approach it from the point of view of a man of average intelligence and imperfect recollection and to such a man overall structural and phonetic similarity is reasonable to cause confusion between them. It does not matter that the two trade marks are surnames of common people. the defendant started the use of the word 'BINDAL' at a much later stage in respect of the same goods. The defendant cannot be permitted to deliberately reap what it has not sown and cannot be allowed to make use of plaintiff's extensive labour and effort. Comparison of the two marks makes it clear that an unwary man is likely to be deceived in considering the pipes of the defendant to be those of the plaintiff, causing loss to the plaintiff."
Similar findings were given by the Hon'ble High Court of Delhi in "Prince Rubber Industries Vs. K.S. Rubber Industries, 1983 PTC (Delhi) 34."
CS No. 62/1026. Reverting back to the case in hand, the registration of the trade mark of the device of 'D' in the name of M/s Dollar Electrical Industries stands established, though in the name of Jagdish Parsad Saxena. The defendant has been using the similar device, but only with the letter 'B' and also the distribution of the electrical fittings and accessories with the name 'BOLLAR'. The term 'DOLLAR' and the term 'BOLLAR' are phonetically identical except for the change of the first letter, which prefixes the term 'OLLAR'. Similarly, the device of 'D' appears in the logo in the center of a circle and is a distinctive mark on the plaintiff's electrical products and is registered in the name of M/s Dollar Electrical Industries since 1958 but the term BOLLAR and 'device of B' which are appearing on the similar electrical goods, clearly and without doubt amounts to be an attempt to pass off the said goods of 'BOLLAR' as that of the plaintiff, there been a deceptive similarity between the two brands. The test which has been laid down by the Hon'ble High Court and the Hon'ble Apex Court, is to see as to whether a common man, who is likely to be the consumer and purchaser of the electrical fittings, is likely to be deceived or confused by the term 'BOLLAR' and the logo of 'B' and is likely to mistake the said product from 'BOLLAR INDUSTRIES' with the device of 'B' as that belonging to the plaintiff's firm 'DOLLAR INDUSTRIES', being the registered user of device 'D'. The answer is undoubtedly in the affirmative. Therefore, there is definitely an infringement of trademark and copyright of M/s Dollar Electrical Industries, which is likely to cause a loss to M/s Dollar Electrical Industries.
27. The further assertion of the plaintiff was that it was the defendant M/s New Pooja Electricals, who was carrying the business of manufacturing and selling of electrical fittings under the name of BOLLAR and was using the infringed trademark of plaintiff, by using distinctive CS No. 62/10 'device of B', which was deceptively similar to distinctive 'device of D' which was owned by M/s Dollar Electrical Industries. The defendant has denied having any nexus with the said logo / 'device of B' or Bollar Industries.
28. The onus to prove its case was upon the plaintiff but the plaintiff failed to discharge the onus which was placed upon him. No document whatsoever, be it in the form of registration of the firm M/s New Pooja Electricals to be dealing in manufacturing and selling of electrical fittings, constitution of the firm, its usage of distinctive name of 'BOLLAR' and user of logo / label 'device of B', which was similar to that of 'device of D', which was owned by M/s Dollar Electrical Industries. No invoice, voucher, sales tax return, income tax return or any other document which would establish the connection of M/s New Pooja Electricals with the usage of "BOLLAR' and user of 'device of B', was placed on record. Even though the photographs, the advertisements and the wrappers Ex. PW 1/85 to PW 1/91 nowhere carry the inscription that Bollar Industries had any connection or nexus with M/s New Pooja Electricals. No doubt, a visiting card of M/s New Pooja Electricals has been placed on record by the plaintiff, having printed on it the term 'BOLLAR' and distinctive 'device of B', but once again the said visiting card was not proved on record as per law, in order to establish that it was M/s New Pooja Electicals, through its proprietor or partners, since this factum was also not proved / clarified by the plaintiff, was instrumental in alleged manufacturing, sale and distribution of electrical fittings with deceptively similar logo and name of Bollar Industries.
29. It is note worthy that the plaintiff has not placed on any any samples of the said electrical fittings, which were being sold under the CS No. 62/10 name of Bollar Industries with the distinctive 'device of B'. Except for laminated photographs, no tangible evidence was placed on record to show said manufacture and sale of electrical fittings, nor has any criminal complaint been made by the plaintiff against the defendant, if that was the case. The defendant may not have adduced any evidence but there was never any requirement for the defendant to do so, as the onus was upon the plaintiff to prove his case and not upon the defendant.
30. It is well settled law that injunctions cannot be granted in the air but it has to be favour of distinctive entity, whose personal right has been infringed by a distinctive entity. In the case in hand, the plaintiff has claimed himself to be the proprietor of M/s Dollar Electrical Industries but has failed to establish himself as the proprietor thereof or that he was ever inducted as partner in the said firm, which continues to run in the name of Jagdish Parsad Saxena and has the registration of the trademark in favour of M/s Dollar Electrical Industries, which is being run by Jagdish Parsad Saxena, till 2015. It has also not been established that any infringement has actually been done or it was the defendant who is responsible for infringement if any and an attempt was made to pass off any electrical fittings with the 'device of B', as products of M/s Dollar Electrical Industries with 'device of D'. The photographs are merely the pictures but no real tangible products were brought on record, which would establish an actual attempt having been made and even if had that been the case, but had made such an attempt to pass off its goods as those of M/s Dollar Electrical Industries, was not established. No shopkeeper, distributor, supplier or agent who were dealing in sale and stocking of electrical goods of defendant, were also produced in the witness box by the plaintiff to show that actually any electrical fittings having been manufactured by alleged Bollar Industries with 'device of B', was brought to them for sale in CS No. 62/10 their shop. Therefore, the plaintiff has miserably failed to establish his case.
31. I cannot restrain myself from observing that in the guise of seeking permanent injunction, it appears that plaintiff Manoj Saxena was actually wanting to somehow, have a finding given in his favour that he was the owner of the trademark and copyright of M/s Dollar Electrical Industries and distinctive 'device of D', rather than actually wanting a restraint order against the defendant. To my mind, the defendant seems to be a fictitious entity and the case also remained a one sided one and appears to be more likely, a collusive suit. However, not wanting to precipitate the matter, no further inquiry is being ordered to be conducted by any independent authority, in this respect.
In the light of my above discussion, I am of the opinion that the plaintiff has failed to establish his case and is therefore not entitled to the decree of permanent injunction as prayed for, as he himself has no concern with M/s Dollar Electrical Industries. Issue no. 2 is accordingly decided against the plaintiff.
ISSUE No. 3 :-
Whether the plaintiff is entitled to any damages? If so, to what quantum? OPP.
32. In view of my findings given on issue no. 2, the instant issue does not survive and is therefore decided against the plaintiff.
Relief :-
33. In view of my findings given on issue no. 2 and 3 above, the CS No. 62/10 plaintiff is not entitled to any relief and accordingly the suit of the plaintiff is dismissed. No orders as to costs. Decree Sheet be prepared accordingly.
File be consigned to Record Room.
Announced in the open court
on 10.07.2012 (SEEMA MAINI)
ADJ-3 (NORTH):DELHI
CS No. 62/10
CS No. 62/10
10.07.2012
Present : Sh. R.K. Jain, counsel for the plaintiff.
Sh. Jogesh Kumar, proxy counsel for counsel for defendant. It is pointed out to the counsels for the parties that the issues which were framed on 17.02.2011 have been erroneously framed, while the vital issues in respect of the relief which is being claimed by the plaintiff, have not been framed and therefore the issues which were framed on 17.02.2011 are struck off. On the basis of the pleadings of the parties, the issues are now framed as under :
ISSUES :-
1. Whether the Delhi Court does not have any territorial jurisdiction to try and adjudicate upon the present suit? OPD.
2. Whether the plaintiff is entitled to a decree of permanent injunction, as prayed for in the prayer clause of the plaint? OPP.
3. Whether the plaintiff is entitled to any damages? If so, to what quantum? OPP.
4. Relief.
No other issue arises or is pressed for.
It is also stated by the counsels for both the parties that no further evidence is to be led by them.
Arguments have already been heard.
Vide my separate judgment of the even date announced in the open court, the suit of the plaintiff is dismissed. No orders as to costs.
Decree Sheet be prepared accordingly.
File be consigned to Record Room.
(SEEMA MAINI) ADJ-3 (NORTH):DELHI CS No. 62/10