Delhi District Court
M/S Rayat Electrical vs M/S Power Pack Products Pvt Ltd on 2 February, 2008
Suit No. 138/07
IN THE COURT OF SH. SUNIL KUMAR AGGARWAL
ADDL. DISTRICT JUDGE, DELHI
Suit No. 138/07
M/s Rayat Electrical
7/22, Kirti Nagar Industrial Area,
New Delhi 110015
................... Plaintiff
Vs
M/s Power Pack Products Pvt Ltd.
204, Red Rose Building,
49-50, Nehru Place,
New Delhi 110019
............... Defendant
Plaint presented on 05.07.03
JUDGMENT
1. This suit for perpetual injunction for restraining Defendant from infringement of trademark, copy right, passing off and rendition of accounts, was originally filed in the Hon'ble High Court of Delhi. Plaintiff, a registered partnership firm has filed it through its partner Sh. Sukhdev Singh stating that they have been carrying on business of manufacturing and marketing of insulated electrical wires and cables, TV Receiving sets, switches, fuses, cut outs , plugs, sockets , push buttons, fuse boxes , connectors , electric press, electric bells , transformers , buzzers, electric starters , adopters , voltage stabilizers , electric coil, holders, Suit No. 138/07 ..2..
chokes, mixing machines for use in kitchen, washing machines, hair drying machines, conduit pipes and home electrical appliances. Since the year 1982 they have been using the trademark and label ''POWER PACK'' for their products . Their trademark is duly registered under various classes which have been renewed from time to time. Plaintiff has applied for registration of same trademark in respect of ''inverters''. The Plaintiff is also the legitimate registered proprietor of artistic work entitled ''POWER PACK'' which is duly registered under the provisions of Indian Copyright Act, 1957. The products of Plaintiff are sold through out India. The trademark ''POWER PACK'' in relation to these goods has acquired secondary meaning and distinctiveness due to long , extensive, continuous and exclusive user by the Plaintiff coupled with large scale publicity. The name of Plaintiff has acquired high reputation in the market with which its goods have become associated. Which are widely sought after because of their superior quality. Plaintiff in respect of its products sold under said trademark and label have acquired goodwill and enviable reputation. Plaintiff has been issuing caution notices in respect of trademark, in the newspapers for the information of general public, in order to Suit No. 138/07 .. 3 ..
protect its mark. It has recently been learnt that Defendants have adopted the trademark ''POWER PACK'' in respect of ''UPS on line / off line interactive , servo stabilizers, stabilizers, inverters, spike boosters and emergency lights''and are marketing the same. The adoption and use of identical/ deceptively similar trademark by the Defendants amount to infringement of the trademark and Copyright of the Plaintiff and passing of its inferior and sub standard goods of the same classification, nature and description as that of the Plaintiffs. The adoption and use of Plaintiff's trademark amounts to illegal trade activities by the Defendants which is causing confusion and / or deception in the minds of purchasing public, who think that the firm of Defendant and their goods are in one or other way related/ associated with the Plaintiff. Malafide adoption of trademark '' POWER PACK'' and trade name ''Power pack products pvt. Ltd.'' by the Defendant is causing huge loss to the Plaintiff. The goodwill and reputation of Plaintiff is being ruined by the illegal adoption and passing off by the Defendant for their inferior quality goods which are of cognate and allied nature to the goods of Plaintiff. Since pecuniary compensation will not afford adequate remedy to the Plaintiff, Defendant is Suit No. 138/07 .. 4 ..
required to be restrained from perpetuating the illegality. They are further liable to render accounts of profits earned by them on the sale of impugned goods which the Plaintiff till filing of suit estimate to have accumulated to a sum of Rs. 5,00,000/-. Hence, the suit .
2. On enhancement in pecuniary jurisdiction of District Courts, this case was transferred by Hon'bleHigh Court in March , 2004.
3. In Written statement Defendant has taken preliminary objections that the suit had been filed beyond the period of limitation without serving any notice upon the Defendant. Plaintiff is aware of the trade name of Defendants since many years. The suit however has been filed now when Defendant had started manufacturing power inverters which are giving stiff competition to the products of Plaintiff . It is alleged that suit is an abuse of process of law in order to extort money from the Defendant who were not aware of registered trademark of Plaintiff and were themselves carrying on their business without any objections about use of their trade name . It is contended that appropriate Court fee has not been affixed on the plaint. On merits Defendant has denied that the trademark ''POWER PACK'' allegedly of the Plaintiff has acquired Suit No. 138/07 .. 5 ..
secondary meaning and distinctiveness as to be exclusively identified and recognized with their products or the products of identical nature and description. The goods manufactured by Defendant did not carry the trademark of Plaintiff but the trademark / label derived from business style of the Defendant was adopted without there being any intention to breach the mark of Plaintiff or of any other person.
4. While refuting the allegations of deliberately infringing the trademark of copy right of the Plaintiff or passing off their sub standard goods it had been stated that Defendant was using ''PPPOWER PACK''as label and immediately after coming to know of the facts of present case, they have stopped the use of words ''POWER PACK'' in their business and an application has been made before the appropriate authority for change of name of Defendants business and its logo / label. Currently Defendant is doing business in the trade name of PP POWER & SOLUTIONS LTD and the previous trade name has been abandoned altogether. Defendant has denied that they have indulged in illegal trade activities in order to cause confusion in the mind of purchasing public. They themselves Suit No. 138/07 .. 6 ..
have been manufacturing and selling products of high quality which have acquired sufficient reputation in the market/ trade. It has been denied that Defendant is liable to render the accounts or that Plaintiff may be found to be entitled to any sum much less a sum of Rs. 5,00,000/- from them . On these assertions Defendant has sought dismissal of suit with heavy costs.
5. Vide ex-parte interim order dated 07.07.03 passed by the Hon'bleHigh Court Defendants were restrained from using the trademark ''POWERPACK'' in relation to their products namely the inverters and from using the said trademark as their trading style.
6. An application U/o. 8 Rule 1 CPC was filed by the Plaintiff . The same however, was disposed off on 20.04.06 on belated filing of Written statement by the Defendant.
7. Parties availed as many as seventeen opportunities for holding negotiations/ arriving at compromise. An application U/o. 12 Rule 6 CPC was filed by the Plaintiff . When the case matured for its disposal , Defendant started abstaining from the proceedings. They were proceed ex-parte on 30.08.07.
8. Prior thereto four issues were framed on the Suit No. 138/07 .. 7 ..
pleadings of parties on 03.08.06 1 Whether present suit is liable to be dismissed for want of notice ? OPD 2 whether present suit is liable to be dismissed for want of proper Court fees ? OPD
3. Whether Plaintiff is entitled to the relief claimed ?
OPP
4. Relief.
9. In ex-parte evidence Plaintiff has examined its partner Sh. Sukhdev Singh as PW 1 who has filed his affidavit therein proving specimen label Ex. PW 1/1, registration certificates of trademark Ex. PW 1/2 , Certificate of copy right Ex. PW 1/3, some of the sale / purchase bills Ex. PW 1/4 , caution notices and advertisements Ex. PW 1/5, specimen of label used by Defendant Ex. PW 1/B. The affidavit was formally tendered in the Court on 28.11.07
10. I have heard Sh. Ashok Mittal , Advocate Ld. Counsel for the Plaintiff and carefully perused the file.
11. The issue wise findings are recorded hereunder:
12. ISSUE No. 1:
Defendant although has taken a preliminary objection of the suit being not maintainable for want of Suit No. 138/07 .. 8 ..
notice prior to the institution of the suit but no legal provision has been quoted whereby the service of legal notice is condition precedent to the filing of the suit for protection of trademark by a party. It may be a matter of common prudence that before initiating litigation , the adversary party is normally put to caution by sending notice to them therein explaining the grounds on which the conduct of said party is being questioned. Failure thereof however, cannot be termed fatal to the suit itself. Issue is thus decided in negative .
13. ISSUE No. 2:
Plaintiff has valued the suit for purposes of Court fee and jurisdiction in respect of first four reliefs of injunction and delivery of offending material at Rs. 200/- and individual Court fee of Rs. 20/- has been paid for each relief. For the relief of rendition of accounts the suit has been valued for the purposes of Court fee at Rs. 200/- and for the purposes of jurisdiction at Rs. 5,00,000/-. Court fee of Rs. 20/- for said relief has been affixed on the plaint.
14. In Para 17 of the plaint Plaintiff themselves have estimated their entitlement for a sum of Rs. 5,00,000/- on rendition of accounts of profits earned by the Defendant by Suit No. 138/07 .. 9 ..
sale of impugned goods. It is claimed that Plaintiff is entitled to realize said profits from the Defendant till the date of disposal of the suit.
15. Ld. Counsel for Plaintiff has argued that it is the prerogative of Plaintiff to estimate the quantum and value the suit for the purposes of jurisdiction of the Court. The Plaintiff can be asked to pay additional Court fee only on the amount that is ultimately found due from the Defendant on rendition of accounts. Plaintiff has already furnished an undertaking in this behalf in the plaint.
16. It is true that in a suit for accounts the correct amount payable by one party to the other can be ascertained only on examination of the accounts and it is not possible to given an accurate valuation of the plaint at the inception of the suit. Plaintiff in such case can give his own tentative valuation. Having so tentatively valued the suit for the purposes of jurisdiction of Court however, the value for the purposes of Court fee cannot be different . The Defendant in this case has valued the suit for taking accounts at a measly Rs. 200/-. Having exercised the choice by applying their wisdom, the suit cannot be valued differently where the question of payment of Court fee is Suit No. 138/07 .. 10 ..
concerned. Issue is thus decided in favour of the Defendant and against the Plaintiff .
17. ISSUE No. 3:
By the Defendant abstaining from proceedings, the testimony of Sh. Sukhdev Singh, partner of Plaintiff remained unrebutted. From the tone and tenor of the stand of Defendant in their Written statement, it is clear that they perceived the identity of their mark and trade name with the registered trade mark ''POWERPACK''of the Plaintiff. Although they have generally denied the averments of plaint yet conceded that not only the trademark in respect of UPS, Inverters, stabilizers etc has been changed so as not to be deceptively similar to the mark of Plaintiff but also have adopted and altogether different trade name and style of PP Power and Solutions Ltd. Plaintiff, on their part have neither reported the violation/breach of injunction order dated 07.07.03 or the averments of their Written statement, by the Defendant. Defendant has not claimed prior user of the trademark and name ''POWERPACK''nor have produced any document in this behalf. Plaintiff on the other hand has been able to show that they have been using and selling their electrical products with trademark ''POWER Suit No. 138/07 .. 11 ..
PACK'' since or about 1982. As registered owners of the trademark they have right to exclude others from using the same in respect of the same class of articles. Not only the trademark but also the style of its writing is registered under Indian Copyright Act which they are entitled to protect from illegitimate users. The parties have been dealing in electrical goods of which trade channels and prospective purchasers are same. The product of Defendant under the trademark ''POWER PACK'' and for that matter PP Power Pack can easily be passed off as the product of Plaintiff, to the unwary customers. Plaintiff thus has been able to make out a case for grant of injunction against the Defendant in terms of the reliefs claimed in the suit.
18. In view of the Defendant having been proceeded ex-parte, and the matter having become almost 4 ½ years old, it will be quiet difficult to lay hands on their accounts so as to cull out profits earned by them by sale of electrical items by using the impugned trademark. PW 1 has proved a number of caution notices and advertisements reflecting that they have been widely publicizing their products under trademark ''POWER PACK'' . In normal course, the same must have been noticed by the Defendant yet the Defendant Suit No. 138/07 .. 12 ..
having taken posture of not being aware of the Plaintiff's registered trademark and had no reasons for so believing, the case will fall under section 135 of the Trade Marks Act, 1999.
19. Although the actual damages cannot be ascertained in the facts and circumstances of the case, yet the sale of their products by Defendant under the identical trademark of Plaintiff has definitely caused dent to their goodwill and reputation for which exemplary and punitive damages can be awarded. Reliance in this behalf is placed upon Aktiebolaget Volvo Vs A K Bhuva, 2006 (32) PTC 682 (Delhi), Hindustan Pencils Ltd Vs Aparna Enamel Industries, 131 (2006) DLT 65; Castrol Ltd. Vs Manoj Duggal, 2007 (1) R.A.J 570 (Delhi); Lachhman Dass Bihari Lal Vs Ghanshyam Das Jethanand, 2007 (35) PTC 693 (Delhi) and Microsoft Corporation Vs K Mayuri, 143 (2007) DLT 16 .
20. Taking into account the period for which the Defendant may have used the trademark for their products similar to that of Plaintiff, cost of the products, surging market for the electrical items of the type for which impugned trademark was used, estimated profit margin which Plaintiff Suit No. 138/07 .. 13 ..
might have earned by sale of so much quantity of goods besides the expenses incurred for controlling damage to their goodwill and reputation, it is deemed just and expedient to award nominal damages of Rs. 2.5 lacs in favour of the Plaintiff and against the Defendants.
21. The issue is decided accordingly.
22. ISSUE No. 4:
In view of the above findings suit is decreed in favour of the Plaintiff and against the Defendant. The Defendant, their agents, representatives, dealers are restrained from carrying on business as manufacturers or vendors of UPS Online/Offline and line interactive, Servo Stabilizers, Stabilizers, Inverters, Spike Bustors, and emergency light under the trademark and trading style ''POWER PACK'' or under any other trademark identical with or deceptively similar to the said registered trademark of Plaintiff. They are further restrained from passing of their aforesaid goods under the infringing trademark/copy right. The Defendant is also restrained from using the name ''POWER PACK'' as part of their trade name or any other identical name by way of decree of injunction. The Plaintiff is further entitled to recover a sum of Rs. 2.5 lacs from the Defendant by way of Suit No. 138/07 .. 14 ..
damages. Plaintiff will also be entitled to costs of the suit.
23. Plaintiff is directed to make up deficiency in Court fee within two weeks where after decree sheet be prepared.
24. File be consigned to record room.
ANNOUNCED IN THE OPEN (SUNIL KR AGGARWAL) COURT ON DATED: 02.02.08 ADDL. DISTRICT JUDGE DELHI Suit No. 138/07 02.02.08 3:30 pm Present: Proxy Counsel for the Plaintiff .
Vide separate judgment dictated and announced, suit has been decreed ex-parte in favour of the Plaintiff. Plaintiff shall make up deficiency in Court fee within two weeks whereafter decree sheet be prepared. The Plaintiff may obtain their original documents as per rules against receipt.
File be consigned to record room.
(Sunil Kr Aggarwal) ADJ/Delhi 02.02.08