Delhi High Court - Orders
M/S Hari Chand Shri Gopal vs Evergreen International (Through Its ... on 13 August, 2020
Author: C. Hari Shankar
Bench: C .Hari Shankar
$~1 (original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS (COMM) 315/2020 and I.As. 6837-6841/2020
M/S HARI CHAND SHRI GOPAL ..... Plaintiff
Through: Ms.Prachi Agarwal, Adv.
versus
EVERGREEN INTERNATIONAL (THROUGH ITS
PROPRIETOR) ... Defendant
Through: None
CORAM:
HON'BLE MR. JUSTICE C .HARI SHANKAR
ORDER
% 13.08.2020
(Video-Conferencing)
I.A. 6841/2020 (for exemption from filing court fee) in CS (COMM) 315/2020
1. Ms. Prachi Agarwal, learned Counsel for the plaintiff undertakes to make up the deficiency in payment of court fee by the end of the day. She is permitted to do so.
2. Accordingly, this application is allowed.
I.A. 6840/2020 (for exemption from filing attested affidavit) in CS (COMM) 315/2020
1. Subject to the requisite being done, as stated in this application, within 72 hours of resumption of normal court work, exemption is granted for the present subject to just exceptions.
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 1 of 19 Signing Date:18.08.2020 22:46:502. The application is disposed of.
I.A. 6839/2020 (for leave to file additional documents) in CS (COMM) 315/2020
1. This application, under Order XI Rule 1(4) of the CPC, seeks leave to file additional documents. The plaintiff is granted permission to file additional documents, if any, within a period of four weeks, with copy thereof marked to the defendant. Needless to say, the defendant would have requisite opportunity to admit or deny the said documents.
2. This application is allowed in the aforesaid terms.
CS (COMM) 315/2020
1. Issue summons to the defendant. Summons may be served on the defendant by ordinary process, as well as by email and WhatsApp, following the procedure adopted by this Court in that regard. Proof of service be placed on record before the next date of hearing.
2. Written statement be filed by the defendant within a period of four weeks with advance copy to learned Counsel for the plaintiff, accompanied by affidavit of admission/denial of documents filed by the plaintiff, failing which, the written statement would not be taken on record.
3. Replication, if any, may be filed within four weeks thereof accompanied by affidavit of admission/denial of documents filed by Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 2 of 19 Signing Date:18.08.2020 22:46:50 the defendants, failing which the replication would not be taken on record. Written statement and replication would be taken on record only if accompanied by affidavits as aforesaid.
4. Renotify before the Joint Registrar for completion of pleadings and marking of exhibits on 3rd November, 2020.
I.A. 6838/2020 (for discovery) in CS (COMM) 315/2020
1. Issue notice to the defendant, to file response within a period of four weeks with advance copy to the plaintiff who may file rejoinder thereto, if any, within a period of two weeks. However, the defendant is directed to file before the next date of hearing, the exact quantities of the defendant's chewing tobacco products, sold under the marks "KRISHNA 100", "KRISHNA 351" and "KRISHNA 355", alongwith batch details, manufactured and sold till date, to be filed in a sealed cover before the next date of hearing.
2. Renotify before the Court on 12th October, 2020.
I.A. 6837/2020 (for stay) in CS (COMM) 315/2020
1. This is an application under Order XXXIX Rule 1 and 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as the "CPC"), for grant of interim reliefs. The prayer clause, in this application, reads thus:
"It is therefore respectfully prayed that the following reliefs be granted to the Plaintiff:Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 3 of 19 Signing Date:18.08.2020 22:46:50
i. An order for permanent injunction restraining the Defendant, its proprietor, officers, servants and agents, distributors, wholesalers, dealers, retailers or any other person acting for and on their behalf from manufacturing, selling, offering for sale, advertising directly or indirectly dealing in any manner with tobacco related products including but not limited to chewing tobacco bearing the trademark KRISHNA 100, KRISHNA 355 and KRISHNA 351 which is deceptively similar to the Plaintiffs trademark GOPAL and its variants thereof including but not limited to GOPAL 100, GOPAL ZARDA 100 and/ or the Lord Krishna device, by themselves or accompanied by numerals, or any other trade mark deceptively similar to the Plaintiffs registered trademarks or in any other manner whatsoever as is likely to lead to infringement of registered trademarks thereof or doing any other act as is likely to lead to infringement of registered trademarks of the Plaintiff as set out in para 10 of the Plaint as well as mentioned in the list of the trade mark registrations filed in present proceedings; and ii. An order for permanent injunction restraining the Defendant, its proprietor, officers, servants and agents, distributors, wholesalers, dealers, retailers or any other person acting for and on their behalf from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any manner with tobacco related products including but not limited to chewing tobacco bearing the trademark KRISHNA 100, KRISHNA 355 and KRISHNA 351 which is deceptively similar to the Plaintiffs trademarks GOPAL and its variants thereof including but not limited to GOPAL 100, GOPAL ZARDA 100 and/or the Lord Krishna device/logo, by themselves or accompanied by numerals or any other trade mark thereof or such products which employ a get up, packaging, shape, lay out, colour scheme i.e . trade dress along with its other essential features and arrangement in any material form which may be identical with or deceptively similar to the Plaintiffs trademark/logo GOPAL and its variants thereof including but not limited to GOPAL, GOPAL 100, Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 4 of 19 Signing Date:18.08.2020 22:46:50 GOPAL ZARDA 100 and/or the Lord Krishna device/logo and trade dress in relation to goods and business identical and/or related/ allied products, or doing any other thing as is likely to lead to passing off of the Defendant' s goods and/or business as or for those of Plaintiff's;
iii. An order for permanent injunction restraining the Defendant, its proprietor, officers, servants and agents, distributors, dealers, retailers or any other person acting for and on their behalf from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any manner with tobacco related products including but not limited to chewing tobacco bearing the trade mark KRISHNA 100, KRISHNA 355 and KRISHNA 351 which is deceptively similar to the Plaintiffs trademarks GOPAL and its variants thereof including but not limited to GOPAL 100, GOPAL ZARDA 100 and/or the 'Lord Krishna' Device/Logo, by themselves or accompanied by numerals or any other trade mark thereof or doing any other thing amounting to dilution and tarnishment of the trademarks of the Plaintiff;
iv. An order for permanent injunction restraining the Defendant, its proprietor, officers , servants and agents, distributors, wholesalers, dealers, retailers or any other person acting for and on their behalf from reproducing, printing or publishing any label or packaging, including pouches and boxes which are a colourable imitation or substantial reproduction of the artistic features of the Plaintiffs trademarks/ logos GOPAL and its variants thereof including but not limited to GOPAL 100, GOPAL ZARDA 100 and/or the Lord Krishna device/ logo, by themselves or accompanied by numerals or any other trade mark thereof and the depiction of the same in artistic writing style, lay out, get up, colour scheme along with its other essential features, and arrangement in any material form, and/or the trade dress/packaging of the Plaintiffs products, constituting infringement of the Plaintiffs copyright therein;Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 5 of 19 Signing Date:18.08.2020 22:46:50
v. An order for delivery up of all the impugned material of the Defendant including the products, pouches, containers, dyes, labels, packaging material, stationery, sales promotional literature including business cards or any other material bearing the impugned trade dress and mark(s).
vi. An order directing withdrawal of the Trademark applications filed by the Defendant for the marks KRISHNA 100, KRISHNA 355 and KRISHNA 351 before the Indian Trademark Registry.
vii. A decree for damages of INR 2,00,01,000/- be passed in favour of the Plaintiff and against the Defendant;
viii. An order for rendition of accounts of profits of the Defendant on account of sale of the product under the impugned mark (s) and the sum due be paid to the Plaintiff;
ix. An order for costs of the proceedings against the Defendant and in favour of the Plaintiff; and Any further order as this Hon'ble Court may deem fit and proper under the facts and circumstances of the case may also be passed in favour of the Plaintiff and against the Defendant."
2. The dispute in the suit relates to alleged infringement, by the defendant, of the trademark and the copyright, stated to be vesting in the plaintiff, with respect to its products forming subject matter of this controversy. The plaintiff claims that it is using the word "GOPAL", with or without suffixes, accompanied by a logo of Lord Krishna playing the flute with a cow in the background, in conjunction with the said word, as the trademark, whereunder it has been manufacturing Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 6 of 19 Signing Date:18.08.2020 22:46:50 and selling tobacco products. It is claimed, in the plaint, that the products of the plaintiff are widely sold under the trademark "GOPAL" both in English and Hindi, which was conceptualised in the year 1950, and that the said brand is regarded as one of the premium tobacco brands in India. It is also claimed that the expression "GOPAL" was coined after the name of Shri Gopal Gupta, the chairman of the Gopal group and the partner holding maximum stake in the plaintiff company.
3. It is further claimed that, since 1950, i.e. for almost 70 years as on date, the plaintiff has been using the logo of Lord Krishna playing the flute with a cow in the background - referred to in the plaint, as the "Lord Krishna Device", often in conjunction with the trademark "GOPAL".
4. According to the plaintiff, the plaintiff's products under the "GOPAL" trademark were first launched in 1950, since which time the said trademark along with the accompanying Lord Krishna device/logo, has been continuously and extensively used, across the country. The plaintiff has provided the sales figures, for the year 1995-1996 to 2018-2019, in a tabular form thus:
Year Sales Figures (In Crores)
1995 -1996 12.73
1996-1997 20.11
1997-1998 34.79
1998-1999 51.37
1999-2000 46.83
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2000-2001 100.33
2001 -2002 103.93
2002 -2003 114 .22
2003 -2004 145 .38
2004 -2005 156.45
2005 -2006 172.46
2006 -2007 184.94
2007 -2008 134.72
2008 -2009 154.00
2009 -2010 204.59
2010 -2011 151.9
2011 -2012 161 .74
2012 -2013 144 .01
2013 -2014 136.78
2014 -2015 144.17
2015 -2016 140 .56
2016 -2017 344.42
2017 -2018 335 .35
2018 -2019 376.96
5. The plaintiff has also set out, in para 8 of the plaint, the promotional expenditure incurred by it in promoting its products for the years 1995-1996 to 2018-2019, thus:
Year Advertisement Expenses
(In Crores)
1995 -1996 4 .82
1996-1997 5.01
1997-1998 2.70
1998-1999 3.69
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1999-2000 4.21
2000-2001 4.84
2001 -2002 2.67
2002 -2003 1.39
2003 -2004 1.31
2004 -2005 1.58
2005 -2006 4.44
2006 -2007 2.32
2007 -2008 1.88
2008 -2009 0.82
2009 -2010 0.57
2010 -2011 0.12
2011 -2012 0.35
2012 -2013 1.50
2013 -2014 2.02
2014 -2015 6.75
2015 -2016 2 .72
2016 -2017 2 .26
2017 -2018 14.92
2018 -2019 2.49
6. The plaintiff is, therefore, according to the plaint, the registered proprietor of the trademark "GOPAL" with the Lord Krishna device, with the word "GOPAL" accompanied by various suffixes such as GOPAL 100, GOPAL ZARDA 100, GOPAL 40 etc. Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 9 of 19 Signing Date:18.08.2020 22:46:50
7. The plaintiff claims to have over 100 registrations for chewing tobacco, under the "GOPAL" name with or without suffixes in Class
34. A tabular statement of some such registrations has been provided, thus:
Trade Regn.No. User Date Date of Class Goods S.No. Mark Appn.
331481 01/01/1950 12/12/1977 34 Chewing
Gopal Tobacco
1. (English)
333612 01/01/1950 16/02/1987 34 Chewing
Gopal Tobacco
2. Device
814097 01/04/1961 11/08/1998 34 Chewing
Gopal Tobacco
3. Device
816808 01/06/1950 28/08/1998 34 Chewing
4. Gopal-40 Tobacco
817592 01/06/1950 03/09/1998 34 Chewing
Gopal Tobacco
5. Zarda 100
817599 01/06/1950 03/09/1998 34 Chewing
Gopal Tobacco
6.
zarda 132
916475 01/06/1950 06/04/2000 34 Chewing
Deluxe Tobacco
Gopal
7. zarda,
Krishna
(Device)
916476 01/06/1950 06/04/2000 34 Chewing
Deluxe Tobacco
Gopal
8. Zarda,
Krishna
(Device)
916479 01/06/1950 06/04/2000 34 Chewing
9. Gopal Tobacco
Zarda,
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Krishna
(Device)
2036669 01/06/1950 12/10/2010 34 Chewing
Gopal 100 Tobacco
10.
(Logo)
8. The aforesaid registrations, it is claimed, are renewed and subsisting even as on date. The plaint annexes, with the documents, a complete list of the trademarks, registered in favour of the plaintiff, in relation to tobacco and tobacco related products. As such, the plaintiff asserts that it is entitled to exclusive use of the aforesaid trademarks, in respect of the goods with respect to which they are registered.
9. It is also claimed that the word "GOPAL", with the Lord Krishna device constitutes an original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957. The plaintiff has copyright registrations in this regard, a tabular statement of which is provided in the plaint, thus :
Registration No. Work
A- 12 728/75 Gopal No. 100 label with device of Gopal
A-20600/78 Gopal (Hindi)
A-29956/80 Gopal Zarda label with device of Gopal
A-56140/99 Gopal Zarda (Box Packing), English, Hindi,
Gujarati & Bengali
A-56975/99 GOPAL Zarda Green label (Deluxe) with
device of Lord Krishna, English & Hindi A -57081/99 GOPAL Zarda Green pouch label (with device of Lord Krishna), English & Hindi Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 11 of 19 Signing Date:18.08.2020 22:46:50 A-57006/99 Gopal Zarda No. 132 Label A-77090/2006 Gopal l00 ZARDA with device of Lord Krishna and Letter G A -92887/2012 Gopal 100 Deluxe A-92888/2012 Gopal 100 STAR Deluxe A-97341/2013 Gopal 100 Deluxe A-100792/2013 Gopal 100 A-100786/2013 Gopal 100 Deluxe A-109531/2014 Gopal 100 Tobacco Deluxe A-109604/2014 Gopal 100 Tobacco A complete list of the copyright registrations possessed by the plaintiff has also been filed separately in the documents annexed to the plaint.
10. The plaintiff claims that it has devised a distinctive trade dress, lay out and get up, depicted on the packages wherein it sells the tobacco and tobacco related products, the essential features of which are (i) depiction of the trademark "GOPAL 100" in yellow colour against a green background, (ii) the words "chewing tobacco" written in capitals with a white font below the "GOPAL 100" trademark, (iii) placement of the Lord Krishna device/logo on the left side of the "GOPAL 100" trademark, and (iv) usage of the same image on both sides of the packaging.
11. A pictorial representation of the aforesaid assertion may be provided thus:Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 12 of 19 Signing Date:18.08.2020 22:46:50
It is therefore claimed that continuous usage and reputation have resulted in the "GOPAL" trademark of the plaintiff becoming a well known trademark within the meaning of Section 11(6) of the Trade Marks Act, 1999. The plaintiff also asserts that various judicial orders, protecting the plaintiff's trademarks have been passed by this Court, copies of which are annexed with the documents alongwith the plaint.
12. As against this, the plaint asserts that the plaintiff discovered in July, 2020, that the defendant was manufacturing Deluxe tobacco under the name "KRISHNA 100", in respect of which the defendant has filed an application for registration of the trademark, in Class 34, claiming user since 12th July, 2015, on 12th December, 2019, to which the Registrar of Trademarks has raised objections on the ground that Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 13 of 19 Signing Date:18.08.2020 22:46:50 the trademark was already in prior use.
13. It is also averred, in the plaint, that on 14th April, 2018 and 6th September, 2018, the defendant filed applications for registration of the "KRISHNA 355" and "KRISHNA 351" trademarks, in Class 34, for tobacco and tobacco related products. Thus, points out the plaintiff, the act of infringement on the part of the defendant is not limited merely to the usage of the word "KRISHNA" - which, in the plaintiff's submission, though phonetically dissimilar to "GOPAL"
would conjure up the same mental image of Lord Krishna - but also extends to using suffixes, with the said word, which was a practice devised by the plaintiff.
14. As such, on the ground of conceptual similarity and identical trade dress, the plaintiff submits that there has been blatant infringement of the plaintiff's trademark, by the defendant. It is pointed out that "KRISHNA" and "GOPAL" are both names used for Lord Krishna and that, in the perception of a person of average intelligence and imperfect recollection, there is bound to be confusion regarding the product of the defendant vis-a-vis that of the plaintiff. This would be exacerbated, submits the plaintiff, by the similarity in the trade dress, as reflected on the package wherein the tobacco related products are sold, a comparative tabular depiction whereof is provided in para 29 of the plaint, thus:
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 14 of 19 Signing Date:18.08.2020 22:46:5015. The plaintiff has, in the same para, also set out, in a tabular fashion, the points of similarity in the trade dress adopted by the defendant, vis-a-vis that adopted by the plaintiff, thus:
Elements of deceptively similarity between GOPAL 100 and S.No. KRISHNA 100
1. Identical packaging in a plastic pouch Identical placement and depiction of the marks GOPAL 100
2. and KRISHNA 100 in yellow font wherein GOPAL and KRISHNA are conceptually similar.
3. Identical green background Identical manner of writing 'Chewing tobacco' and 'Deluxe
4. tobacco' in capital letters in white font just below the respective trademarks Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 15 of 19 Signing Date:18.08.2020 22:46:50
16. In these circumstances, the plaint asserts that the defendant is clearly seeking to ride upon the plaintiff's goodwill and reputation with intent to cause confusion. The triple identity test, which has been evolved over the years by several decisions including Teleecare Network India Pvt. Ltd. vs. Asus Technology Pvt. Ltd.1, Ahmed Ommerbhoy v. Gautam Tank 2 , Lal Sons Machines v. Sachar E & M Stores3 and Bihar Tubes Ltd v. Garg Ispat Ltd 4, also stands satisfied as (i) the trade dress of the defendant is deceptively similar to that of the plaintiff, and the trademark of the defendant and the plaintiff are conceptually similar, (ii) the trademarks are used on identical products i.e. tobacco and tobacco related products and (iii) the products are sold through the same trade channels and cater to the same customer base.
17. The plaintiff also submits that the facts also disclose copyright infringement, by the defendant.
18. Ms. Prachi Agarwal submits that an advance copy of this plaint was served, at the email id of the defendant; however, today, there is no appearance on behalf of the defendant.
19. In my view, the facts, as stated hereinabove, make out a prima facie case in favour of the plaintiff, meriting grant of ad interim relief. Though the words "KRISHNA" and "GOPAL" are phonetically 1 262 (2019) DLT 101 2 146 (2008) DLT 174 3 3 1986 Raj LR 165 4 166 (2010) DLT 109 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 16 of 19 Signing Date:18.08.2020 22:46:50 dissimilar, it is the matter of common knowledge that they are synonyms, used to identify Lord Krishna, a prominent deity in the pantheon of Hindu Gods. In fact, the fact that, out of the entire galaxy of Gods in the Hindu religion, the defendant chose Lord Krishna, in relation to tobacco and tobacco related products, the association is not such as one would ordinarily visualize, thereby indicating that the defendant had, prima facie, borrowed the idea from the plaintiff's mark, as it had acquired goodwill over the years.
20. That apart, a comparison of the trade dress adopted by the defendant and the plaintiff, as reflected on the packages wherein they sell the products, clearly reveals that they are, by and large, identical. The defendant has also depicted the words "KRISHNA 100" in a yellow font, in a green background, with the words "tobacco causes cancer" and "quit today call 1800-11-2356" in black and red fonts above the said mark. The placement of the trademark of the defendant, on the package is identical to that of the plaintiff. The background in which the letters "KRISHNA 100" is the same as the background in which the letters "GOPAL 100" figure on the package of the plaintiff and is green in colour. On a visual examination, it is clear that there is every possibility of an unwary purchaser confusing the product of the defendant for that of the plaintiff. As the plaint correctly avers, though there may be no phonetic similarity between the words "KRISHNA" and "GOPAL", there is clear conceptual similarity, resulting in "idea infringement". This fact, seen in conjunction with the deceptively similar trade dress of the plaintiff and the defendant, and the fact that they are manufacturing and clearing Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 17 of 19 Signing Date:18.08.2020 22:46:50 identical products, catering to the same trade channels, available at the same outlets, makes out a prima facie case of applicability of the triple identity test.
21. Inasmuch as the products of the defendant are being sold in the market, and non-grant of injunction would result in such prima facie infringing products continuing to be sold, I am of the opinion that, even on the principles of balance of convenience and irreparable loss, a case for grant of ad interim injunction is made out.
22. In view thereof, issue notice on this application. Notice be served, apart from ordinary process, additionally by email and whatsapp. Proof of service be placed on record before the next date of hearing.
23. Reply to this application be filed by the defendant within a period of four weeks with advance copy to the applicant/plaintiff who may file rejoinder thereto, if any, within two weeks thereof.
24. Renotify before the Court for further hearing and disposal of the application on 12th October, 2020.
25. Till the next date of hearing, there shall be an ad interim order, restraining the defendant, its proprietors, officers, servants and agents, distributors, wholesalers, dealers, retailers or any other person acting for and on their behalf from manufacturing, selling, offering for sale, advertising directly or indirectly dealing in any manner with tobacco Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 18 of 19 Signing Date:18.08.2020 22:46:50 related products including but not limited to chewing tobacco bearing the trademark KRISHNA 100, KRISHNA 355 and KRISHNA 351 and the packaging, which is deceptively similar/identical to the plaintiff's registered GOPAL trademarks and trade dress and/or any other mark, in any manner whatsoever as is likely to lead to infringement of trademark, infringement of copyright, passing off, dilution and tarnishment of plaintiff's GOPAL trademarks including the Lord Krishna device/ logo and trade dress/packaging of plaintiff's products bearing the GOPAL trademarks.
26. Compliance with Order XXXIX Rule 3 be ensured in accordance with the provisions of the CPC.
C. HARI SHANKAR, J.
AUGUST 13, 2020/kr Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS (COMM) 315/2020 Page 19 of 19 Signing Date:18.08.2020 22:46:50