Delhi District Court
Omaxe Ltd. & Anr. vs . Omaxe Infraproject Pvt. Ltd. & Ors. on 17 November, 2018
IN THE COURT OF SH. ANIL ANTIL, ADJ05 SOUTH EAST
DISTRICT, SAKET COURTS, NEW DELHI.
TM No. 45/18
Omaxe Ltd. & Anr. Vs. Omaxe Infraproject Pvt. Ltd. & Ors.
1.Omaxe Ltd.
Through its authorized signatory Corporate office:
Omaxe House, 7, LSC, Kalkaji, New Delhi110019 ..........Plaintiff no. 1
2. Mr. Rohtas Goel Chairman and Managing Director Omaxe Ltd.
E7, Ansal Villas, Village Satbari, TehsilMehrauli, New Delhi110074 ..........Plaintiff no. 2 V E R S U S
1. Omaxe Infraproject Pvt. Ltd.
U45201OR2011PTC013231 Reg. Office: Plot No. 29 Arya Palli, KIIT Square C.S. Pur, Bhubaneshwar751024 .......Defendant no. 1
2. Mr. Manoranjan Dash Plot No. 29 Arya Palli, KIIT Square C.S. Pur, Bhubaneshwar751024 .......Defendant no. 2
3. Ms. Sagarika Mishra Plot No. 29 Arya Palli, KIIT Square C.S. Pur, Bhubaneshwar751024 .......Defendant no. 3 TM No. 45/18 Omaxe Ltd. & Anr. Vs. Omaxe Infraproject Pvt. Ltd. & Ors. Page no. 1 of 13
4. Ms. Sarita Sarangi Plot No. 29 Arya Palli, KIIT Square C.S. Pur, Bhubaneshwar751024 .......Defendant no. 4
5. Ms. Mihir Kumar Rath Plot No. 29 Arya Palli, KIIT Square C.S. Pur, Bhubaneshwar751024 .......Defendant no. 5 Date of institution of the suit : 14.03.2018 Date of reserved for judgment : 17.11.2018 Date of pronouncement of judgment: 17.11.2018 SUIT DECREED EXPARTE JUDGMENT
1. The plaintiff has filed the suit for permanent injunction and damages for infringement of trademark, passing off.
2. Plaintiff's version as per averments in the plaint : 2.1 That the case of the plaintiffs as set out in the plaint in nutshell is that plaintiff no. 1 company is a company duly incorporated under the Indian Companies Act, 1956. That plaintiff no. 1 is owner of registered Trademark "OMAXE". That plaintiff no. 1 is wellestablished entity founded in 1989 by plaintiff no. 2 and having businesses of various kinds and is also engaged in business of real estate and is having nationwide presence by the trademark and corporate identity "OMAXE". That from 1989 plaintiff company is TM No. 45/18 Omaxe Ltd. & Anr. Vs. Omaxe Infraproject Pvt. Ltd. & Ors. Page no. 2 of 13 knowb by its trade mark "OMAXE" and "OMAXE" is the corporate identity of the plaintiff company and due to the commitment and perfection in the work, "OMAXE" has always been widely known brand and as a result of it the plaintiff company has been one of the largest business house in India and is also listed on Bombay Stock Exchange (BSE) and National Stock Exchange.
2.2 The details of the registration of trademarks in respect of various classes of goods as well as the registered trademarks have also provided in para 8 of the plaint.
2.3 That the plaintiffs have spent huge amount of funds and resources on advertisement and promotion of products under the trademark and trade name "OMAXE", which are extensively advertised on satellite television, magazines, electronic platforms and newspapers having wide circulation. Plaintiff expanded their wellknown trademark's prominence through its use across domain names, i.e. www.omaxe.com which provide a direct access to information pertaining to the plaintiffs business and its goods/ services under the "OMAXE" trade mark disseminating information to general public.
2.4 That on account of highest standards of quality, safety, innovation and reliability plaintiff has acquired reputation and goodwill in India and the world leader in aforesaid goods.
2.5 That apart from this plaintiff's products are also available in Delhi through its wide network of dealers and distributors in jurisdiction of this court. Jurisdiction is also claimed on the basis of provisions of Section 134 (2) of the T.M. Act, 1999 since plaintiff nos. 1 and 2 are having their TM No. 45/18 Omaxe Ltd. & Anr. Vs. Omaxe Infraproject Pvt. Ltd. & Ors. Page no. 3 of 13 office in South Delhi and works for gain within the territorial jurisdiction of this court.
2.6 That defendant no.1 is a company duly incorporated under the Companies Act, 1956, and have been registered before registrar of companies and is carrying the business of renovation and construction of residential buildings on fee or on contract basis by using the name "OMAXE" and defendant nos. 2 to 5 are the directors of defendant no. 1. 2.7 That defendants in order to use, copy and exploit the corporate identity of plaintiff company have fraudulently in 2013 incorporated their company by using the word "OMAXE" which is the name of plaintiff no. 1 and is also a registered trademark/name of plaintiff no. 1. That defendants misused the trademark of plaintiff "OMAXE" by imitating and dishonestly copying the same trademark "OMAXE" and such acts of defendants have constituted the infringement of plaintiffs trademark.
2.8 That the defendants have adopted and started using the trademark "OMAXE" and logo in relation to their impugned goods and packaging in course of trade and business and has been using the same individually or in combination of each other in logo/label. That the defendants had given false trade description to its impugned goods. The impugned trade mark /label adopted and being used by the defendants in relation to the impugned goods and business is identical and deceptively similar to the plaintiff's said trade mark/label phonetically, visually, structurally, in its basic idea and in its essential features. 2.9 That the Defendants are also using false description on its impugned goods to wrongly link the impugned goods with the plaintiffs and TM No. 45/18 Omaxe Ltd. & Anr. Vs. Omaxe Infraproject Pvt. Ltd. & Ors. Page no. 4 of 13 to wrongly convey to the public and customers that the impugned goods are coming from the sources and origin of the plaintiffs. 2.10 That the defendants are not proprietor of the impugned trademark and has adopted and is so using the same in relation to its impugned goods and business and is otherwise dealing with it in the course of trade without the leave and license of the plaintiffs.
3. Process was issued to the defendants. Defendants were duly served. Despite service neither the defendants appeared nor the WS filed. Hence, defendants were proceeded exparte vide order dated 06.06.2018 accordingly.
4. The plaintiff has led exparte evidence by way of an affidavit, reiterating the averments made in the plaint. In exparte evidence, AR of the plaintiff company Ms. Shubha Singh stepped into the witness box and deposed vide affidavit of evidence exhibited as Ex.PW1/A reiterating the contents of the plaint and relied upon the documents which already stands exhibited as Ex.PW1/1 (1A to EX, 1B) - Ex.PW1/12.
Ex. PW1/1A to PW1/1B, PW1/3A to PW1/3E, PW1/4A to PW1/4G, PW1/7A to PW1/7AR, PW1/8, PW1/11 and PW1/12 all originals seen and returned. Further, certificate under clause 44 TM Act is a photocopy and same be read accordingly.
5. For the sake of brevity and to avoid repetition the contents are not reproduced. The AR of plaintiff relied upon the documentary evidence Ex.
PW1/1 to Ex. PW1/15 i.e.:
S. Particulars of Documents Documents exhibited/marked
No. as
1 Listing certificate issued by NSE and Ex.PW1/1 to Ex.PW1/1B
TM No. 45/18 Omaxe Ltd. & Anr. Vs. Omaxe Infraproject Pvt. Ltd. & Ors. Page no. 5 of 13
BSE to plaintiff no. 1
2 Details of turnover of the plaintiff Ex. PW1/2
company and annual expenditure
incurred byt eh plaintiff company on
advertising and publicity of its
services
3 Bills of Ad agencies towards the Ex. PW1/3A to Ex.PW1/3E
advertisement of plaintiff company
4 Newspaper cuttings having Ex. PW1/4A to Ex.PW1/4G
advertisement of plaintiff company
5 Brochures about plaintiff company Ex. PW1/5
services
6 Copy of certificates of awards and Ex. PW1/6A to Ex.PW6/E
recognitions given to plaintiff
company
7 Details of trade mark applications Ex. PW1/7A to Ex.PW1/AR
filed by plaintiff before Trademark
Authority along with trademark
certificates
8 Copy of MOA and AOA of the Ex. PW1/8
plaintiff company
9. Master data of plaintiff company Ex. PW1/9
showing its date of incorporation
10. Master data of defendant no. 1 Ex. PW1/10
showing its date of incorporation and
its name carrying the word Omaxe and
TM No. 45/18 Omaxe Ltd. & Anr. Vs. Omaxe Infraproject Pvt. Ltd. & Ors. Page no. 6 of 13
Defendant nos. 2 to 5 to be its
directors
11. Legal notice dated 07.04.2017 send to Ex. PW1/11 defendant by the plaintiff company
12. Authority letter Ex. PW1/12
6. Heard. Perused the records meticulously. I am of the considered view, plaintiff is entitled to a decree in his favour and against the defendants for the reasons stated as under.
7. Perusal of the documents and Pleadings filed by the plaintiff transpires that plaintiff's trademark are all registered and valid as on the date of filing of the suit. The registration gives exclusive rights to the plaintiff to protect their rights in said marks and take infringements actions against any party in violation thereof. By virtue of long, extensive and continuous use of trademark, plaintiff's marks have become inseparable and synonymous with the goods and services of the plaintiff.
8. As held by the Hon'ble High court of Delhi in "The Royal Bank of Scotland Group PLC Vs. Sharekhan Limited, 216(2015) DLT 197", that:
'In order to establish infringement, the main ingredients of Section 29 of the Act are that the plaintiff's mark must be registered under the Act; the defendant's mark is identical with or deceptively similar to the registered trade mark; and the defendant's use of the mark is in the course of trade in respect of the goods covered by the registered trade mark. The TM No. 45/18 Omaxe Ltd. & Anr. Vs. Omaxe Infraproject Pvt. Ltd. & Ors. Page no. 7 of 13 rival marks are to be compared as a whole. Where two rival marks are identical, it is not necessary for the plaintiff to prove further that the use of defendant's trade mark is likely to deceive and cause confusion as the registration show the title of the registered proprietor and the things speak for themselves. In an infringement action, once a mark is used as indicating commercial origin by the defendant, no amount of added matter intended to show the true origin of the goods can effect the question. If court find that the defendant's mark is closely, visually phonetically similar, even then no further proof is necessary.'
9. In the present case, comparison of the marks reflects the similarity between the impugned marks of defendants and the marks of the plaintiff; defendant's marks are structurally, visually and phonetically similar and identical to the plaintiff's marks. In fact the two marks are identical in all respects. The plaintiff has successfully established its prior user of the mark/trademark "OMAXE" since 1989, and the defendants have claimed their use of the said mark/trademark "OMAXE" from 2013. The defendants are malafidely and mischievously are using the impugned trademark with intent to ride upon the reputation and goodwill of the plaintiff.
10. That the representation of the marks by the defendant tends to cause confusion in the minds of the general public/customers as to the identity of source. If the defendant is permitted to use the impugned mark which are deceptively and confusingly similar to that of the plaintiff's trademark, it will not only cause wrongful loss to the plaintiff company, but it will also cause grave prejudice and harm to public. Not to mention about loss to the goodwill and reputation of the plaintiff. Besides there is all likelihood TM No. 45/18 Omaxe Ltd. & Anr. Vs. Omaxe Infraproject Pvt. Ltd. & Ors. Page no. 8 of 13 of 'dilution' of the trademark of the plaintiff and in terms thereof plaintiff is entitled to protection under clause 4 of Section 29 Trademarks Act.
11. At this juncture, a useful reference be made to the decision of Hon'ble High Court of Delhi in the case of Montari Overseas Ltd. v. Montari Industries, wherein the Hon'ble Court has held that it is well settled that no companies entitled to carry on business in a manner so as to generate a belief that it is connected with the business of another company, firm or an individual, which the defendants are exfacie guilty of doing.
12. A useful reference to the decision of Hon'ble Supreme Court in Laxmikant V. Patel Vs. Chetanbhat Shah & Anr. (Appeal (Civil) 82668267 of 2001 be also made in this regard wherein the Hon'ble court has held:
"An action for passingoff will then lie wherever the defendant companys name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings; the court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently."
13. In so far as the question of domain name is concerned, a useful reference may be made to the case of Aqua Mineral Ltd. vs. Parmod AIR (2001) Del 463 wherein the Hon'ble High Court analyzing the scope and TM No. 45/18 Omaxe Ltd. & Anr. Vs. Omaxe Infraproject Pvt. Ltd. & Ors. Page no. 9 of 13 intent of the domain name qua the registered trademark/ trade name has held that in common parlance any title or name or mark or brand or identity in any field of activity or a trade name over which a particular individual has the exclusive, prior and lone claim is the domain name or trademark for any kind of activity. Trademark is at par which a territory and the owner of any trademark is placed in the same position of a territory.
14. It was further held that "If an owner or possessor of a trademark has prior and exclusive use and lone claim over the trademark, he attains not only superior title but absolute ownership thereof. This is what is the genesis of the work 'domain' and when the property or the territory or the activity relates to a trade or commerce and has been given the name or mark under which the commercial activities are identifiable with the carried out under the said name the user or owner thereof has a domain over it and therefore such a domain name has the same protection as any trade name has been provided under the Trade and Merchandise Marks Act, 1958.
15. With the advancement of internet communication the domain name has attained as much legal sanctity as a trade name. In ecommerce Domain name serves the same function as trademark, a domain name's function is to identify the goods and services of the owner. Domain name partakes the character of the trademark in the virtual world, where goods are advertise, marketed and sold through the internet. Admittedly, the domain name is registered without conducting an enquiry as to the registration/ use of the trademark.
16. Since, the services rendered in the internet are crucial for any business the domain name needs to be preserved so as to protect such TM No. 45/18 Omaxe Ltd. & Anr. Vs. Omaxe Infraproject Pvt. Ltd. & Ors. Page no. 10 of 13 provider of services against anyone else trying to traffic or usurp the domain name.
17. Be that as it may be, defendants are exparte. Nothing has come on record to disbelieve the case of the plaintiff or to doubt the authenticity and veracity of the document filed on record. The defendant did not come forward to disprove the case of plaintiff his stand. Consequently plaintiff is entitled to a decree for injunction in his favour and against the defendants.
18. Damages 18.1 In the present suit plaintiff is also claiming rendition of account by the defendant and damages including punitive and exemplary damages in terms of prayer clauses (e) of the plaint.
18.2 A reference to the decision of Hon'ble High Court of Delhi titled as " The Heels V. Mr. V. K. Abrol and Anr. , CS (OS) No. 1385 of 2005 decided on 29.03.2006" would be profitable, wherein the Hon'ble court has held:
"This court has taken a view that where a defendant deliberately stays away from the proceedings with the result that on enquiry into the accounts of the defendant for determination of damages cannot take place, the plaintiff cannot be deprived of the claim for damages as that would amount to a premium on the conduct of such defendant. The result would be that parties who appear before the court and contest the matter would be liable to damages while the parties who choose to stay away from the court after having infringed the right of the plaintiff, would go scotfree. This position cannot be acceptable. TM No. 45/18 Omaxe Ltd. & Anr. Vs. Omaxe Infraproject Pvt. Ltd. & Ors. Page no. 11 of 13 No doubt it not possible to give an exact figure of damages on the basis of actual loss, but certain token amounts on the basis of the sales of the plaintiff can certainly be made. The plaintiff is unnecessarily dragged into litigation and the defendants must bear consequences thereof. In fact in such a case both compensatory and punitive damages ought to be granted apart from the costs incurred by the plaintiff on such litigation. In view of the given sales figure of the plaintiff. I consider it appropriates to grant a decree of damages in favour of the plaintiff and against the defendants for a sum of Rs. 3 lakh apart from costs of the suit. ' 18.3 In view of my finding that the plaintiff is entitled to the relief of permanent injunction, also taking in to consideration the proposition of law stated above I am of the view plaintiff is entitled to compensatory and punitive damages to the tune of Rs. 2 lakhs in its favour and against the defendants.
19. Relief.
In view of my above discussion, the present suit is decreed in favour of the plaintiffs and against the defendants in terms prayer clauses (a) to (f) of the plaint with compensatory and punitive damages to the tune of Rs. 2 lakhs. The defendants shall be jointly and severally liable to pay the damages.
The suit stands disposed off as decreed.
Cost of the suit is awarded in favour of the plaintiffs and against Defendants.
TM No. 45/18 Omaxe Ltd. & Anr. Vs. Omaxe Infraproject Pvt. Ltd. & Ors. Page no. 12 of 13 Decree sheet be drawn accordingly.
File be consigned to record room.
Announced in the open court (Anil Antil) today ie. 17.11.2018 ADJ05/(SE)/Saket Court, New Delhi TM No. 45/18 Omaxe Ltd. & Anr. Vs. Omaxe Infraproject Pvt. Ltd. & Ors. Page no. 13 of 13