Delhi District Court
M/S Shubham Goldiee Masale Pvt Ltd vs M/S Kwality Trader on 12 July, 2024
-1-
IN THE COURT OF SH. VIDYA PRAKASH
DISTRICT JUDGE (COMMERCIAL COURT)-02, PATIALA
HOUSE COURTS, NEW DELHI
CNR NO.: DLND01-008178-2018
CS(COMM)/ 418/2019
(Old No. : TM No.112/2018)
IN THE MATTER OF:-
M/s Shubham Goldiee Masale Pvt. Ltd.
51/40, Goldiee House
Nayaganj, Kanpur, UP
...PLAINTIFF
VERSUS
M/s Kwality Trader
Bombay Wala Petch, Ghuria Bagh,
Aligarh - 202001
Uttar Pradesh
Also as at:-
Amar Bansal
Bombay Wala Petch, Ghuria Bagh,
Aligarh - 202001
Uttar Pradesh.
...DEFENDANT
Date of Institution : 01-08-2018
Date of reserving judgment : 12-07-2024
Date of pronouncing judgment : 12-07-2024
JUDGMENT
1. Vide this judgment, I shall decide the present suit under S. 134 & 135 of Trademarks Act, 1999, Sec. 55 of the Copyright Act, 1957 for permanent injunction restraining infringement, passing off, delivery up and rendition of accounts etc., filed by plaintiff against the defendant.
CS (COMM)/418/2019 Page 1 of 29 -2-2. At the outset, it must be mentioned that initially, the present suit was filed as non-commercial suit before the concerned Court of Ld. Additional District Judge, Patiala House Courts, New Delhi. During the course of trial, the case was received by this Court by way of transfer, on 07-09-2022 in view of Order No.17016-17031/Judl./ NDD/ PHC/2022 dated 05-7-2022 of the then Ld. Principal District & Sessions Judge, New Delhi District, PHC and consequent upon the directions of Hon'ble Delhi High Court in the case titled as 'Vishal Pipes Limited v. Bhavya Pipe Industry' FAO-IPD No.1/2022 & CM APPLs No. 12-14/2022 dated 03-6-2022.
BRIEF FACTS OF THE CASE:
3. The case of the plaintiff, as set out in the plaint, is that the plaintiff, which is stated to be a company duly registered under the Indian Companies Act, 1956, got instituted the present suit through its one of the directors, namely Sh. Sudeep Som Goenka, who has been duly authorized by the plaintiff company to institute, sign, verify and pursue the present suit. It is stated that the plaintiff company is engaged in the business of manufacturing and marketing of wide range of food products for human consumption including spices and other allied and related goods (hereinafter referred to as the 'said goods and business') under the house mark GOLDIEE. It is claimed that the plaintiff is proprietor of trademark GOLDIEE and GOLDIEE formative trade mark/ label in relation to the said goods and business (hereinafter referred to as the CS (COMM)/418/2019 Page 2 of 29 -3- "said trademarks/ labels") and it is also stated that the word 'GOLDIEE' forms material part of the plaintiff's trade name and the same is housemark of the plaintiff.
4. It is stated that the M/s Shubham Industries is the predecessor of the plaintiff and the plaintiff took over the said firm with all its assets and liabilities on 01-4-1998.
5. It is further stated that the plaintiff through its predecessors have honestly and bonafidely adopted the said trade mark/ label in the year 1980 and have been continuously and uninterruptedly using the same in relation to their said goods in the course of trade since then.
6. The plaintiff company has also claimed that the said trademarks/labels are registered under the provisions of Trade Mark Act, 1999, which are stated to be valid and subsisting till date and the details thereof have been mentioned in Para no.5 of the plaint. Further, the plaintiff company has also claimed that the artworks involved in plaintiff's said trade marks/ labels are original artistic works and the plaintiff is the owner and proprietor of the copyright therein within the meaning of Indian Copyright Act, 1957. Further, it is stated that the plaintiff has been dealing with its art works/ copyright in the course of trade in relation to its said goods and business inter alia within the meaning of S. 14 of the Copyright Act, 1957.
7. It is further stated that said goods and business being carried on by the plaintiff under the said trade marks/ labels is very extensive and the goods and business CS (COMM)/418/2019 Page 3 of 29 -4- thereunder have been practically distributed in major parts of the country. Further, the said trade marks/labels have acquired distinctiveness in the market and trade and are identified with the plaintiff and the said goods and business of plaintiff, as exclusively originating from the plaintiff's source alone. The said goods and business of the plaintiff bearing the said trade mark/ label are highly demanded in the market on account of their standard quality and precision. Thus, it is stated that the said trade marks/labels of the plaintiff have become distinctive indicium of the plaintiff in relation to their said goods.
8. Further, it is the case of the plaintiff that plaintiff's goods and business under the said trade mark/ label have acquired tremendous goodwill and enviable reputation in the markets and the plaintiff has already built up a handsome and valuable trade thereunder. Years-wise sales details thereof have been given in Para no. 7 of the plaint, thereby showing that the plaintiff had turnover of Rs.4,34,40,79,061/- during the year 2000-2001 which increased year to year and was Rs.6,25,89,07,653/- in the year 2017-2018.
9. It is further the case of the plaintiff that the plaintiff has been continuously promoting their said goods and business under the said trade marks/ labels through print, audio/ visual media, advertisements and publicity in leading newspapers, distribution of trade literature, trade hoarding's and board etc. and the plaintiff has already spent enormous amounts of moneys and efforts thereon.
CS (COMM)/418/2019 Page 4 of 29 -5-10. Further, on account of its good quality and standards of manufacturing and untiring efforts in advertising and marketing, the products of the plaintiff under the said trade marks/labels have acquired enviable reputation and goodwill in the markets.
11. Hence, it is claimed that in view of the Plaintiff's proprietary rights both under statutory and common law in its said trademarks, its goodwill & reputation, and its copyrights, the Plaintiff has the exclusive right to the use thereof and nobody can be permitted to use the same or any other deceptively similar trademark/label in any manner whatsoever in relation to any specification of goods without the leave and license of the Plaintiff.
12. It is alleged that the defendant is engaged in the business of manufacturing of hawan samagri, vanaspati for pujan, mild fat, and ghee (non edible oil) for use in pujan samagri, liquid pujan samagri, puja ras and allied / related/ cognate products (hereinafter referred to as ' the impugned goods and business'). It is stated that the defendant has adopted and started using the trademark GOLDIE FRESH / in relation to its impugned goods and business and has been using the same as word mark and in label form (hereinafter referred to as the "impugned trademark/label"). It is stated that apart from sale to the direct customers from their shop/ premises, the defendant is soliciting, networking, supplying the CS (COMM)/418/2019 Page 5 of 29 -6- impugned goods bearing the impugned trademark/ label to the dealers/ retailers/ distributors in the markets of New Delhi viz. Parliament Street, Barakhamba Road, Chanakyapuri, Gole Market, Bengali Market, Connaught Place, etc.
13. It is alleged that the plaintiff learnt about the defendant's impugned trademark/ label in 1st week of April, 2018 when the plaintiff came across the persons networking on behalf of the defendant in New Delhi market. Further, the plaintiff has learnt that the defendant has also applied for registration of the impugned trademark under No.3598755 in Class 03 claiming user of 10-07-2016.
14. Thus, it is alleged that defendant has dishonestly and malafidely adopted and started using impugned trademark/ label 'GOLDIE FRESH' which are visually, structurally identical and/or deceptively and confusingly similar to the registered trademarks/ labels of the plaintiff GOLDIEE thereby causing confusion and deception amongst the unwary purchasing public and traders by making them believe that the origin of those goods is the plaintiff company. It has been averred that by doing so, the defendant is not only damaging the reputation and goodwill of the plaintiff company by passing off its substandard products as that of the plaintiff company but is also causing financial loss to the plaintiff company by reaping unfair advantage of the repute and distinctive character of the trademarks of the plaintiff company.
CS (COMM)/418/2019 Page 6 of 29 -7-15. On these grounds, the plaintiff has filed the present suit against the defendant praying therein, inter alia, that decree of permanent injunction may be passed restraining the defendant and all others acting for and on its behalf from manufacturing, marketing, using, selling, soliciting, importing, exporting, displaying, distributing, advertising or in any manner using the impugned trademark/ label 'GOLDIE FRESH' any other word mark/ trademark/ label which may be identical with and/ or deceptively similar to the plaintiff's said trademark/label GOLDIEE in relation to its impugned goods and business of ghee, desi ghee, spices and related/allied cognate products and from doing any other acts or deeds, thereby infringing plaintiff's registered trademarks, copyright and passing off its products as that of the plaintiff.
16. The suit was accompanied with applications - one under Order XXXIX Rule 1 & 2 CPC and another under Order XXVI Rule 9 CPC seeking ex parte ad interim injunction and appointment of local commissioner respectively. After hearing the counsel of plaintiff, the said applications were allowed, vide common order dated 02-08-2018 passed by Ld. Predecessor of the Court, thereby granting an ex parte ad interim injunction in favour of the plaintiff and against the defendant, and Local Commissioner was also appointed to visit and search the premises of the defendant with certain conditions.
17. Summons of the suit and notice of accompanying applications were issued to the defendant in terms of CS (COMM)/418/2019 Page 7 of 29 -8- relevant orders. The defendant put appearance through counsel. The defendant had also filed the written statement at that point of time.
18. It may be noted that the present case was received by this Court on 07-9-2022, as already noted above in Para No.2, and an application under Order VI Rule 17 CPC was moved on behalf of the plaintiff seeking amendment of the suit, thereby enhancing specified value to be above Rs.3 lacs, so as to bring the present suit within the ambit of the Commercial Courts Act, 2015, in view of the directions of Hon'ble Delhi High Court in case of Vishal Pipes Limited (supra), which was allowed vide order dated 28-11-2022 passed by Ld. Predecessor of this Court and the defendant was directed to file written statement to the amended plaint within 30 days from the date of said order. However, the defendant failed to file any written statement despite grant of sufficient time and eventually stopped appearing in this matter. Consequently, the defendant was proceeded against ex parte, vide order dated 24-02-2023 passed by Ld. Predecessor of this Court.
19. In view of above, the position as emerges on record is that although, written statement was filed by the defendant to the original plaint, yet it failed to file written statement to the amended plaint in conformity with the provisions of the Commercial Courts Act, 2015.
20. It may also be noted that the interim order dated 02-8-2018 was made absolute till the pendency of the present suit CS (COMM)/418/2019 Page 8 of 29 -9- while disposing off the application under Order XXXIX Rules 1 & 2 CPC, vide order dated 09-10-2023 passed by Ld. Predecessor of this Court.
21. In support of its case, the plaintiff company has examined only one witness i.e. its AR namely Sh. Nirmal Singh as PW1. He led examination-in-chief by way of affidavit [Ex.PW1/A] and deposed in terms of the facts of the plaint and relied on the following documents:-
Sr. Document/Particulars Exhibit(s) No.
1. Representation of Trademark/Label Ex. PW1/1 of the Plaintiff. (Colly)
2. Screenshot of Plaintiff's Website. Ex. PW1/2
3. Representation of Defendant's Ex. PW1/3 products.
4. Copy of Registration Certificate & Ex. PW1/4 Status Page for Application no. (Colly) 367000 in class 30.
5. Copy of registration Certificate & Ex. PW1/5 Status page for application no. (Colly) 696960 in class 30.
6. Copy of registration Certificate & Ex. PW1/6 Status page for application no. (Colly) 703442 in class 30.CS (COMM)/418/2019 Page 9 of 29 -10-
Sr. Document/Particulars Exhibit(s) No.
7. Copy of Registration Certificate & Ex. PW1/7 Status page for application no. (Colly) 703443 in class 30.
8. Copy of registration certificate & Ex. PW1/8 Status page for application no. (Colly) 703444 in class 29.
9. Copy of registration Certificate & Ex. PW1/9 Status page for application no. (Colly) 773762 in Class 30.
10. Copy of Registration Certificate & Ex. PW1/10 Status page for application no. (Colly) 773763 in class 3.
11. Copy of Registration Certificate & Ex. PW 1/11 Status page for application no. (Colly) 1687004 in class 29.
12. List of pending Trademark Ex. PW1/12 applications of the plaintiff. (Colly)
13. List of year wise turnover of the Ex. PW 1/13 plaintiff.
14. Copy of plaintiff's product catalogue. Ex. PW 1/14 (Colly)
15. Copy of sale bills/invoices of the Ex. PW 1/15 plaintiff. (Colly)
16. Copy of advertisement Mark A bills/advertisements materials of the (previously CS (COMM)/418/2019 Page 10 of 29 -11- Sr. Document/Particulars Exhibit(s) No. plaintiff's trademark.. mentioned in as Ex. PW 1/16 in Ex.
PW1/A, now de-exhibited as original of the same not produced)
17. Copy of Memorandum and Article of Mark B Association of the plaintiff. (previously mentioned in as Ex. PW 1/17 in Ex.
PW1/A, now de-exhibited as original of the same not produced)
18. Copy of Status of Defendant's Ex. PW 1/18 impugned trademark application (Colly) under no. 3598755 under Class 3.
19. Copy of certification of AGMARK. Mark C (previously mentioned in CS (COMM)/418/2019 Page 11 of 29 -12- Sr. Document/Particulars Exhibit(s) No. as Ex. PW 1/19 in Ex.
PW1/A, now de-exhibited as original of the same not produced)
20. Copy of quality Management System Mark D Certificate issued by MSA (previously Certification Co. Ltd. in favour of the mentioned in plaintiff. as Ex. PW 1/20 in Ex.
PW1/A, now de-exhibited as original of the same not produced)
21. Copy of Certificate of Registration Mark E issued by Hazard Analysis Critical (previously Control point in favour of the mentioned in plaintiff. as Ex. PW 1/21 in Ex.
PW1/A, now CS (COMM)/418/2019 Page 12 of 29 -13- Sr. Document/Particulars Exhibit(s) No. de-exhibited as original of the same not produced)
22. Copy of the document pertaining to Mark F FSSAI license issued in favour of the (previously plaintiff & renewal thereof. mentioned in as Ex. PW 1/22 in Ex.
PW1/A, now de-exhibited as original of the same not produced)
23. Copy of some of the orders passed by Ex. PW1/23 the Hon'ble Court.
24. Copy of extract of Resolution in Ex. PW1/24 favour of Sh. Sudeep Som Goenka.
25. Copy of new resolution dated 7th Ex. PW1/25 April, 2023.
26. Affidavit under Order XI Rule 6 (3) Ex. PW1/26 CPC for electronic record documents.
27. Report of Ld. Local Commissioner. Ex. PW1/27 CS (COMM)/418/2019 Page 13 of 29 -14-
22. On statement of counsel of the plaintiff, the ex parte evidence of the plaintiff was closed on 25-04-2024. After closure of PE, ex parte final arguments were heard.
23. It may be noted here that during the course of final arguments, Ld. Counsel of plaintiff made statement to give up prayers/reliefs regarding restraining the defendant from disposing off or dealing with its assets and rendition of accounts of profits respectively, as prayed in prayer Clause Nos. 29(b) and 29(d) of the amended plaint. Accordingly, the plaintiff was permitted to give up the said reliefs, vide order dated 01-6-2024. In view thereof, the suit survives only with respect to reliefs of permanent injunction whereby the plaintiff has sought permanent injunction against the defendant from using the impugned trademark and also for delivery up.
24. I have heard Ld. counsel of the plaintiff. I have also gone through the material available on record including the plaint and the evidence, oral as well as documentary, led from the side of the plaintiff.
ARGUMENTS OF THE PLAINTIFF
25. Ld. Counsel of plaintiff has argued that the entire testimony of PW-1 has remained unchallenged and un-rebutted from the side of defendant and therefore, the plaintiff company is entitled to the decree, as prayed for. In support of his submissions, Counsel also relied upon the documents [Ex.PW1/1 to Ex.PW1/15, Ex.PW1/18 to Ex.PW1/27 and Mark A to Mark F].
CS (COMM)/418/2019 Page 14 of 29 -15-26. Further, it is submitted by Ld. Counsel of plaintiff that the trademarks/labels GOLDIEE are well known trademarks of the plaintiff and are registered under various classes of the Trademark Rules 2002, which are valid and subsisting in favour of the plaintiff company till date. Further, the art works involved in the trademarks/ labels is original artistic work and the plaintiff holds copyright therein. Further, it is submitted that the plaintiff spends huge amount of money in advertising and promotion of its products and said marks enjoy a huge goodwill and reputation in business community and public in general in India.
27. Further, Ld. Counsel of plaintiff relied upon the report of Local Commissioner and submitted that Ld. Local Commissioner, while executing the commission in terms of the order passed by this Court, had found infringed goods bearing falsified impugned trademark/label from the premises of the defendant in his presence, which establishes that the defendant was involved in the illegal activities. Ld. Counsel of plaintiff submitted that Local Commissioner's Report can be read in evidence in terms of Order XXVI Rule 10(2) CPC and for this purpose, he also relied upon the judgment of our own Hon'ble High Court in case titled as "M L Brother LLP v. Mahesh Kumar Bhrualal Tanna" [CS (COMM) 126/2022, decided on 12th May, 2022].
28. Further, he submitted that the use of impugned trademark/label GOLDIE FRESH as adopted by the defendant, is identical and/ or confusingly or deceptively CS (COMM)/418/2019 Page 15 of 29 -16- similar to the registered trademarks/labels of the plaintiff i.e. GOLDIEE and thus, same amounts to not only committing fraud upon the plaintiff company but also upon the unwary general public, due to which the plaintiff company suffers huge monetary loss and its goodwill and reputation is also at stake and therefore, he urged that the suit may be decreed in favour of the plaintiff and against the defendant, thereby restraining the defendant and all others acting for and on their behalf from using the said impugned trademark/ label.
ANALYSIS & CONCLUSION:
29. I have considered the submissions made on behalf of the plaintiff. I have also duly considered the relevant material available on records.
JURISDICTION
30. Firstly, as regards jurisdiction of this Court, it is submitted by Ld. Counsel of plaintiff that apart from sale to the direct customers from their shop/ premises, the defendant is soliciting, networking, supplying the impugned goods bearing the impugned trademark/ label to the dealers/ retailers/ distributors in the markets of New Delhi viz. Parliament Street, Barakhamba Road, Chanakyapuri, Gole Market, Bengali Market, Connaught Place etc., who are making clandestine and surreptitious sales thereof to unwary consumers. It is further contended that the plaintiff's proprietary rights are being prejudicially affected or likely to be so affected in New Delhi due to the CS (COMM)/418/2019 Page 16 of 29 -17- defendant' impugned activities as it has all the intention to use/ sell/ solicit the impugned/ counterfeit goods under the impugned trademark/ label in the markets of New Delhi. Hence, it is contended that a part or whole of cause of action has arisen within the jurisdiction of this Court within the meaning of S. 20 of CPC.
31. Besides, it is also argued by Ld. Counsel of plaintiff that the plaintiff is also carrying on its said goods and business under its said trademarks/ labels in New Delhi viz. Parliament Street, Barakhamba Road, Gole Market, Bengali Market and Connaught Place, etc. and thus, the plaintiff has extensive goodwill and reputation on account of voluminous sales and advertisement within the territorial jurisdiction of this Court. Thus, it is contended that this Court further has also territorial jurisdiction to entertain and try the present suit within the meaning of S. 134 (2) of the Trademarks Act, 1999 and also under S. 62(2) of the Copyright Act, 1957.
32. The PW1 has categorically deposed in her affidavit in evidence on identical lines of the averments made in the plaint. The whole testimony of PW1 remained unchallenged and uncontroverted as the defendant has neither filed written statement nor has chosen to cross-examine PW1.
33. In view of the foregoing reasons and in the totality of the facts and circumstances of the case, the Court is of the considered opinion that at least part cause of action has CS (COMM)/418/2019 Page 17 of 29 -18- arisen within the territorial jurisdiction of this Court and therefore, this Court has territorial jurisdiction to try and entertain the suit.
PERMANENT INJUNCTION:
34. Hon'ble Supreme Court in case titled as "Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors", reported as MANU/SC/0066/2022, has laid down law with respect to infringement of trademarks, to quote:-
43. The legislative scheme is clear that when the mark of the Defendant is identical with the registered trademarks of the plaintiff and the goods or services covered are similar to the ones covered by such registered trademarks, it may be necessary to prove that it is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trademarks. Similarly, when the trademarks of the plaintiff is similar to the registered trademarks of the Defendant and the goods or services covered by such registered trademarks are identical or similar to the goods or services covered by such registered trademarks, it may again be necessary to establish that it is likely to cause confusion on the part of the public However, when the trademarks of the Defendant is identical with the registered trademarks of the plaintiff and that the goods or services of the Defendant are identical with the goods or services covered by registered trademarks, the Court shall presume that it is likely to cause confusion on the part of the public.
45. It could thus be seen that this Court has pointed out the distinction between the causes of action and right to relief in suits for passing off and for infringement of registered trademarks. It has been held that the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trademark, cannot be equated. It has been held that though an action for passing off is a Common Law remedy being an action for deceit, that is, a passing off by a person of his own goods as those of another; the action for infringement is a statutory right conferred on the registered proprietor of registered trademarks for the vindication of the exclusive rights to the use of the trademarks in CS (COMM)/418/2019 Page 18 of 29 -19- relation to those goods. The use by the Defendant of the trademark of the plaintiff is a sine qua non in the case of an action for infringement. It has further been held that if the essential features of the trademarks of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial in case of infringement of the trademarks, whereas in the case of a passing off, the Defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
47. It could thus be seen that this Court again reiterated that the question to be asked in an infringement action is as to whether the Defendant is using a mark which is same as, or which, is a colourable imitation of the plaintiff's registered trademarks. It has further been held that though the get up of the Defendant's goods may be so different from the plaintiff's goods and the prices may also be so different that there would be no probability of deception of the public, nevertheless even in such cases, i.e. in an infringement action, an injunction would be issued as soon as it is proved that Defendant is improperly using the Plaintiff's mark. It has been reiterated that no case of actual deception nor any actual damage needs to be proved in such cases This Court has further held that though two actions are closely similar in some respects, in an action for infringement, where the Defendant's trademarks is identical with the Plaintiff's trademarks, the Court will not enquire whether the infringement in such as is likely to deceive or cause confusion.
35. It is now well settled law, as also laid down by our own Hon'ble High Court in the case titled as 'Shaw Wallace & Co. Ltd. & Anr. v. Superior Industries Ltd'. 2003 (27) PTC 63 (Del) that an infringement of trademarks is to be seen from the perspective of a layman, to quote:-
12.It is well settled that in an action for alleged infringement of a registered trademarks, if the impugned marked used by the defendant is identical with the registered trademarks of the plaintiff, no further questions have been to be addressed and it has CS (COMM)/418/2019 Page 19 of 29 -20- to be held that there is indeed an infringement. If the mark is not identical, the matter has to be further considered and it has to be seen whether the mark of the defendant is deceptively similar to that of the plaintiff. Deceptive similarity means that the mark is likely to deceive or cause confusion in relation to goods in respect of which the plaintiff got its mark registered. For the purpose of this comparison, the two marks have to be compared, not by placing them side by side, but by asking the question whether having due regard to relevant surrounding circumstances, defendant's mark is similar to that of the plaintiffs, as would be remembered by persons possessed of an average memory with its usual imperfections. On the touchstone of this query, it is to be determined whether the mark of the defendant is likely to deceive or cause confusion. The sequetur to the aforesaid preposition of law, is that, in an action of infringement, for the success by the plaintiff, he need not prove that the whole of his registered trademarks has been copied, but he can also succeed, if, he shows that the mark used by the defendant is similar to the mark of the plaintiff, as it would be numbered by persons possessed of an average memory with its usual imperfection or with its usual imperfection or that its essential particulars or the distinguishing or essential feature has been copied (ILR 197 (II) Delhi 225 Jagan Nath Prem Nath v. Bhartiya Dhoop Karvalaya Para-7).
36. In view of above legal position, lets examine the facts of the case in hand. The averments made in the plaint are duly supported by the documents proved during the course of evidence. PW-1 has deposed on identical lines of the averments made in the plaint and has proved various documents, as already referred to above.
37. In the case titled as "Amrish Agarwal v. M/s Venus Home Appliances Pvt. Ltd." in CM (M) 1059/2018 dated 27-08-2019, passed by Hon'ble Delhi High Court, it was inter alia directed that in trademark infringement matters, the following documents ought to be necessarily filed CS (COMM)/418/2019 Page 20 of 29 -21- alongwith the plaint. The relevant Para no.7 of this judgment is reproduced hereunder:
"7. It is directed that in trademarks infringement matters the following documents ought to be necessarily filed along with the plaint:
(i) Legal Proceedings Certificate (LPC) of the trademarks showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licenses granted, renewals etc.,
(ii) If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trademarks registration certificate, copy of the trademarks journal along with the latest status report from the website of the Trademarks Registry. This should be accompanied by an averment in the pleadings that LPC is applied for.
Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licenses and assignments ought to be pleaded.
(iii) xxxx
(iv) In the case of (ii), the party ought to file the LPC prior to the commencement of the trial, if any aspect of the trademarks registration is being disputed by the opposite side"
38. In this case, the plaintiff has relied upon and has filed copy of Trade Mark Registration Certificates and status reports thereof, which are duly proved by PW-1 as Ex.PW1/4 (Colly.) to Ex.PW-1/11 (Colly.). As per the these documents, it is duly shown, inter alia, that "GOLDIEE"
and its label are duly registered as word mark and device mark in various classes including Class 03 in favour of the plaintiff and/or its predecessors, since long. Further, during the course of final arguments, counsel of plaintiff has stated at Bar that the registration of said trademarks/ word marks/ device marks stand renewed and same are valid till date.
CS (COMM)/418/2019 Page 21 of 29 -22-39. As already noted above, defendant had filed its written statement to the original plaint at the time when the present suit was being tried as a non commercial suit, but failed to file written statement to amended plaint in conformity with the provisions of Commercial Courts Act, 2015 despite grant of sufficient opportunities. The defendant took defence, inter alia, that the plaintiff has concealed from this Court that mark GOLDIEE is already registered vide Trade Mark No.490303 in Class 3 of the Trade Marks Act, 1999 in the name of another company namely Pan Parag India Limited of Kanpur, UP and that mark of the plaintiff is not registered under Class 3 and same is under Opposition No.952895 filed by Pan Parag India Ltd. on 25-8-2018, and thus, no action of infringement of trademark is maintainable under the law.
40. Pertinently, the defendant had also filed status of trademark application No.2693072 submitted by the plaintiff for registration of word mark 'GOLDIEE', which is shown to have been opposed by Pan Parag India Limited of Kanpur, UP. In this regard, it is pointed out by Ld. Counsel of plaintiff from the record that plaintiff has filed list of pending applications for registration of trademarks/ labels and which is duly proved by PW-1 as Ex.PW1/12 where at Sl. No.37, it is duly shown that the TM Application No.2693072 is pending under examination. Thus, the said document would falsify the stand of the defendant that the plaintiff has concealed the fact that said application has been opposed. Moreover, even if the CS (COMM)/418/2019 Page 22 of 29 -23- aforesaid application of the plaintiff was opposed by someone else then, it does not entitle the defendant herein to use impuged trademark/ label GOLDIE FRESH, which is shown to be identical and deceptively similar to the registered trademark of the plaintiff GOLDIEE under various classes. Further, it is no where the case of the defendant, as averred in the written statement initially filed to the original plaint, that the impugned trademarks/ labels are registered in its favour or that it is the licensee of the plaintiff.
41. As far as the fact that defendant had applied for registration of the impugned trademark is concerned, it may be noted that during the course of file arguments, Ld. Counsel of plaintiff, while submitting that the aforesaid application of the defendant for registration of impugned trade mark/label GOLDIE FRESH has already been refused by the Competent Authority vide order dated 29- 10-2021, placed on record copy of said relevant order alongwith status of aforesaid defendant's application. As per same, it is duly shown that the TM Application No.3598755 for registration of trademark / word mark GOLDIE FRESH, filed by the defendant, had not been accepted by the Competent Authority and accordingly, was refused vide order dated 29-10-2021, passed by Sr. Examiner of Trade Marks, Trade Mark Registry, New Delhi which is also reflected in the current status of the aforesaid application. While refusing the application of the defendant, it has been observed, inter alia, that mark CS (COMM)/418/2019 Page 23 of 29 -24- applied for registration is similar with earlier trademarks on records, as mentioned in the examination report and by similarity of mark as well as similarity of goods covered under such mark, there exist a likelihood of confusion in the mind of public. Furthermore, eventually, the defendant stopped appearing in this case and consequently, was proceeded against ex parte. Even, it did not turn up to cross-examine PW-1. Therefore, the entire testimony of PW-1 has gone unrebutted, uncontroverted and unchallenged. In other words, the whole defence raised by the defendant in the written statement to the original plaint, remain unsubstantiated during the course of trial. For all these reasons, the Court is of the view that the case of the plaintiff stood proved against the defendant on the basis of preponderance of probability. It is duly established on record that GOLDIEE is duly registered in favour of the plaintiff as word mark/ device mark, etc.
42. Further, as already noted above, the Local Commissioner had also found infringed goods bearing falsified trademarks/labels GOLDIE FRESH from the premises of the defendant at the time of execution of commission. As per Ld. Local Commissioner's Report, it reveals that the defendant was found present at the premises and introduced himself to ld. Local Commissioner as proprietor of M/s Kwality Trader. On his inspection, Ld. Local Commissioner found infringed goods from both the premises of the defendant, which were seized and handed over to him on superdari.
CS (COMM)/418/2019 Page 24 of 29 -25-43. In the totality of the facts and circumstances of the case, the Court is of the view that the plaintiff has succeeded in proving that the defendant was stocking, distributing and selling goods bearing falsified trademark /trade name/ labels of the plaintiff company and therefore, trademarks and copyright of plaintiff company are required to be protected. Accordingly, the plaintiff is held entitled to decree of permanent injunction whereby the defendant is required to be restrained from using trademark GOLDIE FRESH or any other word mark/device mark/label which may be identical with and/ or deceptively similar to the plaintiff's said word marks/device marks/labels GOLDIEE in relation to impugned goods and business, thereby infringing Plaintiff's registered trademarks, copyright and passing off their products as that of the plaintiff.
DELIVERY UP:
44. As already discussed, infringed goods bearing falsified trademark/ label GOLDIE FRESH, which is identical and/or deceptively similar to plaintiff's registered trade mark/ label GOLDIEE were seized by the Local Commissioner and were returned to the defendant on superdari. Therefore, the defendant is directed to delivery up all above seized infringed goods, besides all other impugned finished and unfinished materials bearing the impugned and violative trade mark/label GOLDIE FRESH or any other trade mark/ label which may be identical and/or deceptive similar to the plaintiff's registered trade CS (COMM)/418/2019 Page 25 of 29 -26- mark/label GOLDIEE for the purpose of destruction and erasure.
DAMAGES:
45. Ld. Counsel of plaintiff submitted that punitive damages may also be awarded in favour of the plaintiff and against the defendant. On bare perusal of plaint, it would be revealed that no such relief is prayed for in the plaint. On similar facts, in case titled as Super Cassettes Industries Pvt. Ltd. v. HRTN Cable Network , 2017 SCC Online Delhi 10943, wherein the defendant was ex parte and did not participate in the proceeding, counsel for the plaintiff had sought punitive damages, which was declined in view of the judgment of Hon'ble Division Bench of Delhi High Court in case titled 'Hindustan Unilever Limited v. Reckitt Benckiser India Limited', ILR (2014) II Delhi 1288.
46. However as per law laid down by Hon'ble Division Bench in case of Hindustan Unilever Limited (supra), there is a need to see as to whether the case of plaintiff falls for exemplary damages. As already noted above, the Local Commissioner while executing the commission seized infringed goods from premises of the defendant in their presence and handed over the same to them on supardari. As per report of Ld. Local commissioner, infringed goods i.e. 36 pieces ½ liter, 18 pieces of 1 liter, 90 pieces of 200 gms [apparently ghee (not edible oil)] bearing impugned trade mark GOLDIE FRESH were seized from the premises of the defendant. Besides, 16 pieces of 1 liter and 32 pieces of ½ liter of Tin Jar were also CS (COMM)/418/2019 Page 26 of 29 -27- found and seized from premises of the defendant. Apart from above, packaging material bearing impugned trademark in large quantities, were also seized from the premises of the defendant. Thus, it is established that the defendant was stocking and selling/ passing off the infringed goods bearing impugned trade mark GOLDIE FRESH which is identical and/or deceptively similar to plaintiff's trade mark / label GOLDIEE, as that of the plaintiff's products thereby causing wrongful loss to plaintiff company and would have earned illegal profits. Further, if the seized infringed goods would have gone to the hands of the consumer/ general public, the reputation/goodwill of the plaintiff company would have gone down in the eyes of consumer/ general public as infringed goods were of average quality and were not up to the quality which is claimed by the plaintiff company. In the case in hand, the defendant did not show up and participate in the proceedings in order to deprive the plaintiff to the benefit of rendition of accounts and therefore, in the totality of the facts and circumstance, I am of the opinion that the plaintiff company is entitled to exemplary damages quantified as Rs.1,00,000/- (Rupees One Lakh only). It is so ordered accordingly.
RELIEF:
47. In the light of the aforesaid discussion, the Court is of the view that the plaintiff has been able to prove its case on the basis of preponderance of probability. Thus, the suit is decreed in favour of the plaintiff and against the defendant and the following reliefs are granted:-
CS (COMM)/418/2019 Page 27 of 29 -28-(i) Suit is decreed in favour of plaintiff and against the defendant qua permanent injunction thereby restraining the defendant by itself as also through its individual proprietors/ partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on their behalf from manufacturing, marketing, using, selling, soliciting, importing, exporting, displaying, distributing, advertising or in any manner dealing in or soliciting or selling/ soliciting through online platforms or online websites or using the impugned trademarks/ labels GOLDIE FRESH or any other word mark/ device marks/ label which may be identical with and/ or deceptively similar to the plaintiff's said trade marks / label GOLDIEE, thereby infringing Plaintiff's registered trademarks, copyright and passing off their products as that of the plaintiff.
(ii) Suit is also decreed in favour of plaintiff and against the defendant qua delivery up of all seized semi finished and finished articles besides all other impugned finished and unfinished materials bearing the impugned and violative trade mark/ label of plaintiff company and superdarinama is hereby cancelled.
(iii) Plaintiff is entitled to recover Rs.1,00,000/- (Rupees One Lakh only) from the defendant towards damages; and CS (COMM)/418/2019 Page 28 of 29 -29-
(iv) Cost of the suit is also awarded in favour of the plaintiff.
48. Decree sheet be prepared accordingly.
49. File be consigned to Record Room, after due compliance.
Digitally signedAnnounced in the open court by VIDYA
on 12th Day of July, 2024. VIDYA PRAKASH
PRAKASH Date:
2024.07.12
16:02:48 +0530
(VIDYA PRAKASH)
DISTRICT JUDGE (COMMERCIAL COURT)-02 PATIALA HOUSE COURTS, NEW DELHI CS (COMM)/418/2019 Page 29 of 29