Delhi District Court
M/S Shubham Goldiee Masale Pvt. Ltd vs M/S Harshit Enterprises on 7 August, 2024
IN THE COURT OF DISTRICT JUDGE
(COMMERCIAL COURT-02)
SOUTH DISTRICT, SAKET COURT, NEW DELHI
CS (COMM) 495/2022
M/s Shubham Goldiee Masale Pvt Ltd. ......Plaintiff
51/40, Goldiee House,
Nayaganj, Kanpur, U.P.
Versus
M/s Harshit Enterprises ..... Defendant No. 1
114/573, Rajiv Nagar,
Vinayakpur, Kanpur-208001, U. P
Rajendra Kumar Tiwari ..... Defendant No. 2
Hans Nagar, J. K. Temple,
Kanpur, Nagar- 208005, U.P.
Date of institution : 29.08.2022
Date of Submissions : 02.08.2024
Date of judgment : 07.08.2024
JUDGMENT
1. Plaintiff's case in brief is that it is a company duly incorporated under the Indian Companies Act, 1956, having its office at 51/40, Goldiee House, Nayaganj, Kanpur, U.P. and it is engaged in the business of manufacturing, marketing and processing of wide range of food products for human consumption including spices, tea and other allied and related Shubham Goldiee Masale vs Harshit Enterprises Page 1 of 13 goods. It is stated that plaintiff is the proprietor of Trademark GOLDIEE, and other GOLDIEE formative trademark/labels in relation to its said goods and business and word GOLDIEE is also forming material part of the plaintiff's Trade Name and the same is HOUSE MARK of the Plaintiff. It is stated that plaintiff through their predecessors adopted the said trademark in the year 1980 and has been continuously and uninterruptedly using the same in relation to their said goods in the course of trade since then.
2. It is stated that in order to acquire statutory rights in the said trademark/label GOLDIEE and GOLDIEE formative marks, , filed various applications for registration thereof under the Trademark Act, 1999. It is stated that activities of the plaintiffs are also apparent from their website www.goldiee.com and https://www.goldieeonlinestore.com/ and the said domain names of the plaintiff contain extensive information about the goods and business provided by the plaintiff under its said trademark. It is stated that the Plaintiff has following trademark registration in India under the Trade Marks Act, 1999:-
Mark User Claimed Date of Discl
(Profile Appl. No. Class Status registration Valid Upto aimer
Name)
703442 30 10/01/1980 27/03/1996 No
Registered 27/03/2026
GOLDIE
E Registered
696960 30 Proposed to 02/02/1996 02/02/2026 No
(Word
Shubham Goldiee Masale vs Harshit Enterprises Page 2 of 13
Mark) be used
367000 30 Proposed to 01/10/1980 No
Registered be used 01/10/2028
GOLDIEE
LABEL
Asso
773762 30 Proposed to 14/02/1997 ciated
Registered 14/02/2027
be used with
GOLDIE 3670
E 00
LABEL
Proposed to
703444 29 Registered be used 27/03/1996 27/03/2026 No
Asso
GOLDIE 1687004 29 Proposed to 14/05/2008 ciated
E Registered be used 14/05/2028 with
[word 7034
mark] 44
4375820 30 Proposed to 26/08/2020
be used
Registered 12/12/2029
3. Case of Plaintiff is that that Defendants are engaged in the business of manufacturing, marketing, trading, soliciting, networking of Spices and allied/related/cognate products. Defendant no. 1 has adopted and started manufacturing, marketing, selling, trading, using the trademark/label/trade dress H.K GOLDJEE, in relation to its impugned goods. Defendant No. 2 has applied for the trademark registration of the impugned trademark H.K. GOLD JEE. It is stated that Defendants are acting in collusion and in connivance with each other. The comparison between the trademark/label/Packaging/trade dress of Plaintiff and the defendants is given below :
Shubham Goldiee Masale vs Harshit Enterprises Page 3 of 13Plaintiff's trademark/label/ Packaging/trade Defendants' trademark/ dress label/Packaging/trade dress
4. It is pleaded that the impugned trademark/label adopted and used by the defendants in relation to their impugned goods and business and packaging thereof are deceptively similar to the plaintiff's said trademark/label/trade name and its packaging.
5. It is further stated that Plaintiff learnt about the Defendants and their adoption of the impugned Trademark/label in the 3rdweek of March 2022, when the plaintiff came across the impugned goods under the impugned trademark in the markets of South Delhi viz. Saket, Mehrauli, Malviya Nagar, Hauz Khas, Sangam Vihar, Ambedkar Nagar and adjoining areas. Thereafter, the Plaintiff carried out a public search in the trademark registry and came across the impugned application filed by Defendant No. 2 under Trademark application no. 4873017 filed for the Shubham Goldiee Masale vs Harshit Enterprises Page 4 of 13 impugned trademark H K GOLD JEE. It is further stated that defendants are selling, marketing, supplying and soliciting the trade of the impugned goods and business under the impugned trademark/label in South Delhi.
6. It is pleaded that cause of action for filing the present suit arose within the territorial jurisdiction of this Court. It is stated that the Defendant's infringing activities are likely to have a dynamic effect on the Plaintiff's business, both current and forthcoming, within the territory of South Delhi.
7. On 29.08.2022, exparte interim injunction was granted in favour of plaintiff u/O XXXIX rule 1 & 2 CPC and Defendants by itself as also through their individual proprietors, partners, directors, agents, representatives, distributors, assignees, heirs, successors, stockists and all others acting for and on their behalf were restrained till next date of hearing from manufacturing, selling, marketing, using, soliciting, networking, intended use, displaying, advertising or by any other mode or manner dealing in or using the defendants' impugned Trademark/label H.K. GOLD JEE or soliciting/using in markets its through any online medium or Online websites or through any online platforms or through any social medias or any other identical with and/or deceptively similar word/mark/label to the plaintiff's Trademarks/labels which is identical/deceptively similar to the plaintiff's trademark/label GOLDIEE, GOLDIE, in relation to their impugned goods and business of Spices and allied/related/cognate products and from doing any other acts or deeds amounting to or likely to Shubham Goldiee Masale vs Harshit Enterprises Page 5 of 13 infringement of the plaintiff's registered Trademarks/labels; passing off and violation of the plaintiff's common law rights in the plaintiff's said Trademarks/labels; violation of the plaintiff's trade name and dilution of the plaintiff's rights and infringement of plaintiff's copyrights in its label/artwork.
8. Summons were served upon the defendants and Sh. Bhhuwneshwar Tyagi Ld. Counsel for defendants appeared on 09.11.2022. He filed written statement alongwith statement of admission denial of documents on behalf of defendants. Replication was filed by Plaintiff on 19.01.2023. On 14.03.2023, the matter was referred for mediation to explore the possibility of settlement but as per mediation report dated 24.04.2023, none appeared for either of parties, therefore, matter was returned to the Court as non-starter. No one was present on behalf of defendants on 19.10.2023 and 05.02.2024, therefore, defendants were proceeded exparte and matter was fixed for exparte evidence.
9. This Court has heard submissions advanced by Sh. Siddharth Swain Ld. Counsel appearing for plaintiff and has perused the material on record.
10. To prove its case, plaintiff examined Sh. Nirmal Singh , who placed on record Ex.PW1/1 (colly.) is representation of the products under the Trademark of the plaintiff; Ex.PW1/2 (colly.) is photographs of the impugned products under defendant's impugned trademark; Ex.PW1/3 (colly.) is status and registration Shubham Goldiee Masale vs Harshit Enterprises Page 6 of 13 certificates of the plaintiff's registered trademark/label under application no. 703442 in Class 30; Ex.PW1/4 is status page of the plaintiff's registered trademark/label under application no.703443 in Class 30; Ex.PW1/5 is status of the plaintiff's registered trademark/label under application no.696960 in Class 30; Ex.PW1/6 (colly.) is status registration certificate and Journal Copies of the plaintiff's registered trademark/label under application no. 367000 in Class 30; Ex.PW1/7 is status page of the plaintiff's registered trademark/label under application no. 703444 in Class 29 (proposed to be used); Ex.PW1/8 (colly.) is status and journal copies of the plaintiff's registered trademark/label under application no. 1687004 in Class 29; Ex.PW1/9 (colly.) is status, registration certificates and journal copies of the plaintiff's registered trademark/label under application no. 2661968 in Class 29; Ex.PW1/10 (colly.) is status, registration certificate and journal copies of the plaintiff's registered trademark/label under application no.773762 in Class 30. Ex.PW1/11 (colly.) is status, registration certificates and journal copies of the plaintiff's registered trademark/label under application no. 2661971 in Class 30; Ex.PW1/12 (colly.) is status, registration certificates and journal copies of the plaintiff's registered trademark/label under application no. 4375820 in Class 30; Ex.PW1/13 (colly.) is status, registration certificates of plaintiff's registered trademark/label under application no.2416751 in Class 30; Ex.PW1/14 (colly.) is status, registration certificates and journal copies of the plaintiff's registered trademark/label under application no.2776287 in Class 29; Ex.PW1/15 (colly.) is status, registration certificates and journal copies of the plaintiff's registered trademark/label under application no.2661971 in Class 30; Ex.PW1/16 (colly.) is status, registration certificates and journal copies of the plaintiff's registered Shubham Goldiee Masale vs Harshit Enterprises Page 7 of 13 trademark/label under application no.773763 in Class 03; Ex.PW1/17 (colly.) is status, registration certificates and journal copies of the plaintiff's registered trademark/label under application no.2776295 in Class 43; Ex.PW1/18 (colly.) is status, registration certificates and journal copies of the plaintiff's registered trademark/label under application no.2776294 in Class 39; Ex.PW1/19 (colly.) is status, registration certificates and journal copies of the plaintiff's registered trademark/label under application no.773762 in Class 30; Ex.PW1/20 (colly.) is registration certificate of the plaintiff's copyright registration under no. A-137659/2021; Ex.PW1/21 (colly.) is legal proceeding certificate of registered trademark no.367000; Ex.PW1/22 (colly.) is legal proceeding certificate of registered trademark no.2661971; Ex.PW1/23 (colly.) is legal proceeding certificate of registered trademark no.696960; Ex.PW1/24 is Copy of receipt w.r.t applying for LPC; Ex.PW1/25 (colly.) is Whois report of plaintiff's website https://goldiee.com/; Ex.PW1/26 (colly.) is company profile as obtained from plaintiff's website; Ex.PW1/27 (colly.) is products of the plaintiff under the trademark/label as displayed on the plaintiff's website www.goldiee.com; Ex.PW1/28 is screenshots from the plaintiff's website and online store www.goldiee.com; Ex.PW1/29 is awards conferred to the plaintiff as obtained from the plaintiff's website www.goldiee.com; Ex.PW1/30 (colly.) is readily available sales figures of the plaintiff company; Ex.PW1/31 (colly.) is sales invoice of the plaintiff; Ex.PW1/32 (colly.) is invoices related to the advertisements of the plaintiff's brand and some of the associated advertisements; Ex.PW1/33 (colly.) is copy of advertisements as published in newspapers; Ex.PW1/34 (colly.) is earlier judicial orders in favour of the plaintiff; Ex.PW1/35 (colly.) is board resolution of the plaintiff company and Ex.PW1/36 is affidavit Shubham Goldiee Masale vs Harshit Enterprises Page 8 of 13 under section 65-B of the Indian Evidence Act in support of the electronic documents placed on record.
11. The defendant in written statement has taken an objection to the territorial Jurisdiction of this case. It is stated that the defendant is operating in Uttar Pradesh and, therefore, this Court does not have jurisdiction. The plaintiff on the other hand claimed that its representatives found defendant's products in the shops of South Delhi. While plaintiff has made its statement on oath through affidavit; the defendant has not cross examined the witness of plaintiff and the statement of witness, therefore, stands unrebutted. In view of unrebutted submission of plaintiff, the territorial jurisdiction of the Court cannot be declined.
12. It is stated in the written statement by the defendant that the trademark being used by the defendants is distinctive from the trademark of the plaintiff. A perusal of the two trademarks kept side by side would show that the trade mark of the defendant as also the get up/tradedress of its products is highly similar to that of the plaintiff. In ITC Limited Vs. Britannia Industries Ltd. O.S.A (CAD) Nos. 134 to 138 of 2023 decided on 08.11.2023, the Hon'ble High Court considered various judgments on the issue of similarity/deceptive similarity held that in order to arrive at conclusion as to whether the products are deceptively similar or not, it cannot be from the view point of a reasonable man but by adopting the standard of an ordinary gullible customer. The Hon'ble Court had held that colour scheme and getup taken together give rise to proprietary Shubham Goldiee Masale vs Harshit Enterprises Page 9 of 13 right of the exclusive use to a party.
13. As stated herein above a perusal of the products of defendants containing the impugned trademark appear to be deceptively similar to the products of the plaintiff.
14. In Cadila Health Care Ld vs Cadia Pharmaceuticals Ltd., 2001 PTC 541 (SC) Hon'ble Supreme Court held as under:
"........for deciding the question of deceptive similarity the following factors are to be considered:
a) The nature of the marks i.e. whether the marks are word marks or label marks or 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 be relevant in the extent of dissimilarity between the competing marks."
15. On the basis of test laid down and the evidence of plaintiff which has remained unrebutted. Plaintiff has succeeded in establishing that GOLDIEE, GOLDIE, are plaintiff's registered trademarks. The plaintiff has the exclusive right to use trademarks and it is shown that defendants Shubham Goldiee Masale vs Harshit Enterprises Page 10 of 13 are misusing and infringing the trademark of plaintiff and passing off their goods as that of the plaintiff. There is high degree of resemblance phonetic as well as visual in the trademark of plaintiff and the one adopted by defendants and testing from the view of the gullible customer, who in the present case would be from all strata of society - the products of plaintiff and defendants being food articles , spices etc. - there is every likelihood that the customers will be misled into buying the products of defendants on account of similarity considering them to be the products of plaintiff or coming from plaintiff. This will not only cause loss of profit to the plaintiff but also results in the inferior products and services being sold to the public at large, who will be deceived by the conduct of the defendants.
16. On appreciation of evidence on record, this Court is satisfied that defendants have adopted the trademark/label H K GOLD JEE and are engaged in the business of providing identical services as that of plaintiff and that there is a high degree of resemblances between the two trademarks which can create confusion in the minds of members of the general public. The plaintiff being the holder of a registered trademark is entitled to protection against infringement against use of impugned trademark by the defendant.
17. In view of the above, this Court holds that plaintiff is entitled to a decree of permanent injunction against the defendants from dealing with the goods and services having infringing marks. Defendants and all others acting for and on Shubham Goldiee Masale vs Harshit Enterprises Page 11 of 13 their behalf are restrained from manufacturing, selling, marketing, using, soliciting, networking, displaying, advertising or by any other mode or manner dealing in or using impugned Trademark/label H.K. GOLD JEE, which is identical/deceptively similar to the plaintiff's trademark/label GOLDIEE, GOLDIE, in relation to their impugned goods and business of Spices and in connection with impugned activities.
18. The plaintiff has sought a decree of damages to the tune of Rs. 3,05,000/-. The defendant stopped appearing after filing Written statement.
19. In Jockey International Inc & Anr. Vs R. Chandra Mohan & Ors. 2014 (59) PTC 437 (Del) in para 43, it was held that damages must be awarded even in such cases where defendants choose to stay away from the proceedings of the Court and that defendants should not be permitted to enjoy the benefits of evasion of Court proceedings. A party who chooses not to participate in Court proceedings and stays away must suffer the consequences of damages as it cannot produce its account books. There is larger public purpose involved to discourage such parties indulging in such rights of deception and even if the same has a punitive element, it must be granted.
20. In the Hero Honda Motors Ltd. vs Shree Assuramji Scooter's 125 (2005) DLT 504 our High Court observed about the need of awarding damages against defendants who chose to stay away from the proceedings of the Court. It was further noted Shubham Goldiee Masale vs Harshit Enterprises Page 12 of 13 that every endeavour should be made to discourage such parties which indulge in acts of deception.
21. Having regard to the totality of the facts and circumstances noted above, this Court is of the considered view that plaintiff is entitled to lumpsum costs of Rs. 1,00,000/- on account of economic and commercial advantage which the defendant tried to gain at the expenses of the enviable reputation which has been created by the plaintiff apart from injunction.
22. In view of the aforenoted findings, the suit of the plaintiff is decreed. A decree of permanent injunction in favour of plaintiff against the defendants is hereby passed. File be consigned to record room.
(Dictated and announced on 07th August 2024 ) (ANURADHA SHUKLA BHARDWAJ ) District Judge (Commercial Court-02) South Distt., Saket, New Delhi Shubham Goldiee Masale vs Harshit Enterprises Page 13 of 13