Calcutta High Court
M/S. Proline Inc vs Ramesh Jain on 12 June, 2019
Equivalent citations: AIR 2019 CALCUTTA 285, AIRONLINE 2019 CAL 243
Author: Shekhar B. Saraf
Bench: Shekhar B. Saraf
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
Original Side
Present:
The Hon'ble Justice Shekhar B. Saraf
C.S. No. 73 of 2016
M/S. PROLINE INC.
Versus
RAMESH JAIN
For the Plaintiff : Mr. Sayantan Basu, Adv.
Mr. Prithwiraj Sinha, Adv.
Mr. Gopal Das, Adv.
Mr. Tinkari Jana, Adv.
Mr. Sourav Jana, Adv.
For the Defendant :
Heard on : 11.03.2019, 18.03.2019 & 10.04.2019
Judgment on: 12.06.2019
Shekhar B. Saraf, J.:
1. This suit has been filed by plaintiffs wherein the plaintiff No. 1 is a registered partnership firm incorporated under the Indian Partnership Act, 1932, carrying on business from 4, N.S.C. Bose Road, Malancha (Mahinagar), Kolkata - 700072 and also from 29/1B, Chandni Chowk Street, Kolkata - 700072 of which plaintiff No. 2 and 3 namely Mr. 2 Rajeev Jain and Mr. Sanjay Dugar are partners engaged in the business of dealing in various types of speakers, parts and components thereof. The plaintiff no.4 is a limited liability partnership of which plaintiff No. 5 and 6 namely Mr. Vinod Kumar Jain and Mr. Rahul Agarwal are the partners and carrying on business from 85, N.S. Road, Kolkata - 700146 against the defendant Mr. Ramesh Jain carrying on business under the name of M/s. G.K. Electricals, as a sole proprietor from 45/5A/1, Main Road, East Azad Nagar, Near Agarwal Sweets, Delhi - 110051 [hereinafter referred to as 'said defendant'] for the infringement of the registered trade mark "SWETON" by the said defendant.
2. Plaintiff no. 1 carries on business under the trade mark "SWETON" represented in a composite label. The plaintiff no. 4 is the licensee of the plaintiff no. 1 and has been permitted to use the said trade mark "SWETON" [hereinafter referred to as 'said trade mark'] in respect of speakers, parts and components thereof [hereinafter referred to as 'said goods'].
3. The chronological facts of the instant case are as follows:
a. Mr. Vinod Kumar Jain trading as Veekay Electronics adopted the trademark "SWETON" for the purpose of using the same in respect 3 of various types of speakers, parts and components thereof. The trademark was also used as a label in a composite manner consisting of the word "SWETON" in respect of the said goods and started using the same since 1982 without any interruption. b. Mr. Vinod Kumar Jain applied for the registration of the artistic getup of the label including the distinctive part of the mark "SWETON" as a mark on 26th August, 1996 in respect of speakers of all kinds, parts and components thereof, electrical and electronic goods, which was duly registered on 31st December, 2002 being trade mark no. 725349B in Class - 9 under the Trade Marks Act, 1999 having a retrospective effect from the date of application that is from 26th August, 1996.
c. Mr. Vinod Kumar Jain in order to get the exclusive right over the use of the said mark filed an application on 20th August, 1996 for registration of the same in respect of the said goods. The trademark was registered on 2nd January, 2004 being trade mark no. 725063 in Class - 9 under the Trade Marks Act, 1999 with retrospective effect from the date of application that is from 20th August, 1996. d. On 5th June, 2000 Mr. Vinod Kumar Jain by way of a Deed of Assignment assigned the said trade mark having registration Nos. 4 725349B and 725063 in favour of the plaintiff no. 1. Upon such assignment plaintiff no.1 became the exclusive owner of the said trade mark.
e. On 16th April, 2014 plaintiff no. 1 by way of a license granted plaintiff no. 4 to use the said mark having registration no. 725349 with respect to speakers only.
f. In the month of January, 2016 plaintiffs came to know that the speakers which are not being manufactured by the plaintiffs are being sold in the market under the mark "SWEETON" having a similar label that of the plaintiffs registered trade mark. g. The plaintiffs then purchased few pieces of speakers on 11th January, 2016 from the defendant which was sold by the defendant under the mark "SWEETON" having a similar label to that of the plaintiffs registered trade mark.
4. The Deputy Registrar on the request of the plaintiffs certified that the defendant has not entered appearance either in person or through its advocate as on 1st December, 2017. Thus, by the order of the court 5 dated 12th January, 2018 the matter was fixed for hearing as 'Undefended Suit'.
5. The sole point of consideration before this court is whether the plaintiff is entitled to get the decree prayed for.
6. Mr. Upendra Singh who is working at M/s Octune Electronics LLP (Plaintiff no. 4) as a senior accountant since 2014, has been examined as a witness on behalf of the plaintiffs. Previously the witness worked at Proline Inc. (Plaintiff no. 1) and had left the job in the month of December, 2014. The witness deposed that the plaintiffs are engaged in the business of various types of speakers, parts and components thereof under the trademark "SWETON" represented in a composite label containing the mark "SWETON" which forms the distinctive part of the said trade mark and the same has been marked as Exhibit "A". The witness also recognised the legal certificate with respect to trade mark no. 725349 issued by the Trade Mark Registry on 27th December, 2018 which was shown to him at the time of examination-in-chief and the same has been marked as Exhibit "B".
7. During the course of examination the witness deposed that there was a Deed of Assignment made between Veekay Electronics and Proline Inc. for transferring a number of trade mark as per Schedule 'A' of the Deed 6 of Assignment and the same has been collectively marked as Exhibit "C". It transpires from the original Challans and the Invoice of goods sold by the plaintiffs under the trade mark "SWETON" that the plaintiffs used the said trade mark since 1982 and the sales of which has increased over the years. The plaintiffs have disclosed their sales figure from the year 1982 to 31st January, 2016 and the same has been collectively marked as Exhibit "D". The plaintiffs have also disclosed various advertisement expenses being incurred for the publicity of the said goods sold under the mark "SWETON" due to which goodwill of the said mark has increased consistently over the years which is evident from the sales figure as disclosed by the plaintiffs in paragraph no. 10 of the plaint. The original bills of such advertisement expenses have been collectively marked as Exhibit "E". Due to the retirement of the partners several changes were made in the partnership of the Proline Inc. (plaintiff no. 1), the final reconstitution of the said partnership was done on 6th March, 2014 which was duly updated in the registered trade mark bearing nos. 725063 and 725349B. The said Form TM - 24 has been marked as Exhibit "F" and the partnership deed dated 6th March, 2014 is marked as Exhibit "J".
8. The witness during his examination states that the plaintiff no. 4 is the licensee of plaintiff no. 1 and states that in accordance with the Deed of Licence dated 16thApril, 2014 the licence is valid and subsisting against a licence fee payable by the licensee (plaintiff no. 4) to the 7 licensor (plaintiff no. 1) in advance for an amount of Rs. 1,00,000/- on an annual basis for using the trade mark "SWETON". The said Deed of License is marked as Exhibit "G". The certificate of registration of the trade mark "SWETON" having registration no. 725349B has been marked as Exhibit "H" and also the certificate of registration of the said mark having registration no. 725063 has been marked as Exhibit "I". During the course of examination the witness deposed that the plaintiffs are using the said trade mark "SWETON" which can be seen through a status report as on 3rd January, 2019 of the trade mark "SWETON" having registration no. 725349 and the same has been marked as Exhibit "K". Another status report as on 18th March, 2019 having registration no. 725349 which is a word certificate of the said mark "SWETON", considered as a certificate under Section 65B of the Indian Evidence Act, the same has been marked as "Exhibit "L".
9. The witness during the examination deposed that the plaintiffs went to the shop of the defendant and purchased some goods which were being sold by the defendants under the mark "SWEETON". The copy of the cash memo which got misplaced by the plaintiffs has been marked as Exhibit "N" and the General Diary reported against such cash memo being misplaced by the plaintiffs has been marked as Exhibit "M". The carton in which the defendant sold the goods under the name of "SWEETON" which was not being manufactured by the plaintiffs has been marked as Exhibit "O".
8
10. The plaintiffs at the time of the argument has referred to the following cases:
a. Torrent Pharmaceuticals Ltd. Vs. The Wellcome Foundation Ltd. [2002 (24) PTC 580 (Guj)] b. Rustom and Hornby Ltd. Vs. Zamindara Engineering Co. [AIR 1970 SUPREME COURT 1649] c. Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories [AIR 1965 SUPREME COURT 980] d. N.R. Dongre Vs. Whirlpool Corporation [1996 (16) PTC 583 (SC); 1996 (16) PTC 476 (Del)]
11. I have heard the counsel appearing for the plaintiffs and have perused the materials on record.
12. At this juncture it would be prudent to examine the laws relating to Infringement of Trademark and Passing Off remedy as per the Trade Marks Act, 1999. Infringement of trademark means violation of the exclusive rights granted to the registered proprietor under the Trade Marks Act, 1999 to use the same in relation to the goods or service in respect of which the trade mark is registered. Section 29 of the Trade Marks Act, 1999 lays down the provisions for protection of a registered 9 trademark in case the same is infringed upon by a person not being a registered proprietor or licensee. Section 30 lays down the limits to the provision under Section 29. Whereas, on the other hand passing off of a trademark is a tort actionable under common law and mainly used to protect the goodwill attached with unregistered trademarks. It is formulated on the basic tenet of law that one should not benefit from the labour of another. Section 27 of the Trade Marks Act, 1999 provides that no infringement action will lie in respect of an unregistered trade mark but recognizes the common law rights of the trade mark owner to take action against a person for passing off their goods/services as the goods of another person or as services provided by another person.
13. In view of the pleadings made by the plaintiffs and the documents exhibited during the course of the proceeding and the examination-in-chief of the witness of the plaintiff one Mr. Upendra Singh there are sufficient documents on record to show that the plaintiff no.1 is the registered proprietor of the trademark "SWETON" under registration nos. 725063 and 725349B. The mark which the defendant used to sell the products is "SWEETON" which is not being manufactured by the plaintiffs.
14. Section 2(h) of the Act lays down the definition for deceptive similarity as "A mark shall be deemed to be deceptively similar to 10 another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion." Thus the term deceptive similarity is intrinsically linked with the term likelihood of confusion. The test for deceptive similarity and likelihood of confusion has been laid down in numerous cases by the Apex Court and involves looking at the mark as a composite whole from the view of a consumer of average intelligence and imperfect recollection. If, in such limited frame, an observation of the two marks reveals a likelihood of confusion then the definition under Section 2(h) is satisfied.
15. Upon comparison of the two marks of the plaintiffs and the defendant, "SWETON" and "SWEETON", it is evident that the mark of the defendant is deceptively similar and identical to that of the mark of the plaintiffs. There is only one "E" which is added by the defendant to the plaintiffs mark "SWETON". Such addition of an "E" does not make the mark of the defendant substantially different from that of the plaintiff and it is very easy to create confusion in the mind of the customer. Further the font and color of the infringing mark is similar to that of the registered trademark. Thus when looking at the mark as a composite whole along with the artistic, visual, phonetic and structural standpoints, it is clear that a layman of average intelligence and imperfect recollection will in all likelihood be confused and may attribute the infringing mark to the plaintiffs trademark. Based on the aforesaid observation it is clear that the defendants mark being used in the course of trade is similar to the mark of the registered trademark 11 and the goods for which it is being used is identical to that of the goods for which the registered trademark is used, which drops the present circumstances squarely within Section 29(2)(b) of the Trademark Act, 1999.
16. The use of the mark "SWEETON" by the defendant is from 27th August, 2013 as stated in its application for registration of the mark and is subsequent to the user of the mark "SWETON" by the plaintiffs which is being used since 1982. From the admission of the defendant itself that he has been using the mark since 27th August, 2013, it is sufficient to come to the conclusion that the defendant does not have any right on the mark "SWEETON" superior to that of the mark "SWETON" of the plaintiff. The defendant is thus a subsequent user and the plaintiff is the prior user of the said mark having used it since 1982. The principle of priority in adoption and use over registration is not attracted under the circumstances. There cannot be two identical or similar marks in the market selling identical products and thereby the defendant is restrained from infringing the mark "SWETON" which belongs to the plaintiffs.
17. In the above circumstances the plaintiff is entitled to a decree in terms of prayers (a), (b), (c) and (g) of the plaint.
18. There shall no orders as to costs. The department is directed to draw up the decree expeditiously.
12
19. Urgent photostat certified copy of this judgment, if applied for, should be made available to the parties upon compliance with the requisite formalities.
(Shekhar B. Saraf, J.)