Delhi District Court
Veekesy Rubber Industries Pvt. Ltd vs Shri Shailesh Poddar on 29 January, 2019
IN THE COURT OF PRAVEEN KUMAR: ADDITIONAL
DISTRICT JUDGE-05 :NEW DELHI DISTRICT,
PATIALA HOUSE COURTS, NEW DELHI.
TM No.53/18
In the matter of :
Veekesy Rubber Industries Pvt. Ltd.
H.17, Kolathara,
P.O. Kozhikode-673665,
Kerala, India. ......Plaintiff
Vs.
1. Shri Shailesh Poddar
H-19/62, Sector-07,
Rohini, Delhi-110085.
2. Shri Banke Bihari Cotfab Pvt Ltd.
H.No.62, 3rd Floor, Block h 19,
Sector-07, Rohini,
Near Metro Station,
Delhi-110085.
Also at :
Plot No.268, Sector-17,
Footwear Park,
HSIIDC, Bahadurgarh-124507,
Haryana. .......Defendants
Date of institution of the case : 07.05.2018
Date of arguments : 10.01.2019
Date of judgment : 29.01.2019
JUDGMENT:
1. This is a suit filed by the plaintiff for grant of permanent TM No.53/18 Page 1 of 12 Veekesy Rubber Industries Pvt. Ltd. vs. Shailesh Poddar and another injunction restraining the defendants from infringement of trademark; infringement of copyright in artistic work, infringement of trade dress, passing off; unauthorized use of trade mark, copyright, tag line/slogan, delivery up; rendition of accounts, damages etc. 2.1 The case of the plaintiff, in brief, is that plaintiff is a company duly incorporated under the Companies Act, 1956. Mr. Mohammed Veluthedath has signed & verified the plaint and has instituted the present suit on behalf of the plaintiff company. He has been duly authorized vide Board Resolution dated 13.2.2018 to institute the present suit. According to plaintiff, the plaintiff-company is a part of the prestigious VKC Group and is engaged in the business of manufacturing and marketing of footwear and is the largest branded PU footwear manufacturer in India. It is further case of the plaintiff that the products of the plaintiff are of extreme high quality and there is vast variety in models of VKC products. The annual group turnover of the plaintiff company recently exceeded INR 1500 crores. The VKC Group has 20 manufacturing units spread across 6 states in India. The plaintiff's products are marketed in India through a widespread dealership network of 439 dealers spread across the length and breadth of India. It is further averred that the plaintiff's products are being exported and sold to various foreign countries around the world.
2.2 It is further case of the plaintiff that plaintiff has invested extensively in creating intellectual property and is original bonafide adopter, originator, proprietor and prior user of well-known label TM No.53/18 Page 2 of 12 Veekesy Rubber Industries Pvt. Ltd. vs. Shailesh Poddar and another trademark VKC Pride, VKC lite and VKC stile. It is further averred that plaintiff is the first to adopt these footprint labels/device marks, copyrights and commercially manufacture and sell footwear. The footprint labels/device marks, copyrights of the plaintiff are in continuous and extensive use since the year 2008. The cartons on which the products of the plaintiff are sold have left a mark in the consumers' minds and products of the plaintiff have become the popular choice today. It is further the case of the plaintiff that plaintiff is the owner of registered Trade Mark/Label VKC in the field of shoes/footwear market and also of copyright in the artistic work of VKC labels which contain design of foot in a unique pattern. The plaintiff has acquired statutory rights under the Trade Marks Act and has obtained registrations for the unique device of footprint/label VKC Pride, VKC Lite and VKC Stile in Class 25 the detail of which has been given in para 15 and 17 of the plaint. It is averred that all copyright registrations are for unique artistic work of VKC labels which contain design of foot in a unique pattern. All the copyrights are original, novel and striking. It is averred that no one other than the plaintiff can use the said artistic work as the plaintiff is the owner of copyright in all artistic works, art work, layout, pattern, style, get up and colour combinations of packaging and labels as per provisions of the Copyright Act, 1957. The plaintiff has also signed Mr. Ajay Devgan, famous Bollywood star and Ms. Kajal Agarwal, popular heroine of Hindi and South Indian movies as its brand ambassadors to represent VKC brand as well as footprint device and on account of the TM No.53/18 Page 3 of 12 Veekesy Rubber Industries Pvt. Ltd. vs. Shailesh Poddar and another wide publicity and advertisement, the sale of the plaintiff's products has reached to its peak.
2.3 It is further case of the plaintiff that defendants are also engaged in the trade of shoes, footwear, sandals, floaters, flip-flop, slippers, PU Sandals and Hawai chappals etc. The defendant no.1 claims to be the director of the defendant no.2. It is averred that in the third week of November 2017 the plaintiff came to know that the defendants are infringing prior used, registered and well known footprint device marks, labels, copyright in artistic work and also its famous carton of the plaintiff by using identical cartons in relation to footwear and causing widespread confusion and deception in market, business fraternity, consumers and general public at large. Plaintiff has given the pictures/images of the cartons of the plaintiff as well as defendants in the plaint. Plaintiff sent a legal notice dated 20.11.2017 to the defendant no.1 in this regard. On the very next day ie on 21.11.2017 the defendant no.1 sent an email stating that they shall stop using the said trade dress and layout on cartons. Defendant no.1 further assured that he has immediately stopped printing and production of impugned products and packaging as that of the plaintiff. As per plaintiff, defendant no.1 did not comply with the requisitions contained in the Cease and Desist notice dated 20.11.2017 and, therefore, again an email dated 6.12.2017 was sent to the defendant to abide by the requisitions but in vain. Defendant no.1 continued using the impugned trade dress/carton/packaging/slogan even after the email sent by the plaintiff in this regard. It is further TM No.53/18 Page 4 of 12 Veekesy Rubber Industries Pvt. Ltd. vs. Shailesh Poddar and another averred that defendants have also copied the tagline/slogan of the plaintiff "My Stride My Pride" by using deceptively similar tagline/slogan "My Style My Fashion". Plaintiff has prayed that suit of the plaintiff be decreed in favour of the plaintiff and against the defendants.
3. Vide order dated 07.05.2018, an ex parte injunction was granted in favour of the plaintiff and against the defendants whereby defendants, its directors, agents etc were restrained from manufacturing, advertising, selling, offering for sale, importing, exporting, directly or indirectly carrying on any business with the impugned, infringed foot print device marks, labels, copyright in artistic work and trade dress of the carton 'hotride' or any other mark, packaging, carton, copyright in artistic work deceptively similar to plaintiff's prior used, registered and well-known foot print device marks, labels, copyright in artistic work 'VKC pride' on various types of footwear or any other allied or cognate goods amounting to infringement of registered trademark of the plaintiff. Defendants were further restrained from using the impugned tagline/slogan 'My Style My Fashion' which is deceptively similar to plaintiff's tagline/slogan 'My stride My pride' till next date of hearing.
4. Defendants were duly served in the present case with the summons of the suit. However, defendants did not appear in the court to contest the case and, accordingly, they were proceeded ex parte vide order dated 31.5.2018 passed by this court.
5. Plaintiff, in order to prove its case, has examined Sh.
TM No.53/18 Page 5 of 12Veekesy Rubber Industries Pvt. Ltd. vs. Shailesh Poddar and another Ajayan Kavil as PW1. PW1 has deposed on the lines of the averments made in the plaint. He has proved Board Resolutions as Ex.PW1/1 and Ex.PW1/2; product brochures/catelogues of various footwear of the plaintiff company as Ex.PW1/4; Registration Certificates/legal use certificate as Ex.PW1/7; online extract for the mark in Class 25 of the plaintiff company as Ex.PW1/8 to Ex.PW1/13; CD containing advertisement videos as Ex.PW1/18; advertisement pages downloaded from the website of the plaintiff company as Ex.PW1/19 collectively; advertisement as Ex.PW1/22; photographs of the plaintiff and defendant cartons as Ex.PW1/25 collectively; legal notice dated 20.11.2017 as Ex.PW1/26; email dated 21.11.2017 as Ex.PW1/27; notice dated 5..2017 as Ex.PW1/28; extract from the MCA website as Ex.PW1/30 collectively; document showing status of trademark application of defendant as Ex.PW1/31; online status of plaintiff's trademark as Ex.PW1/32 and printouts from the defendant website as Ex.PW1/33. Certificate u/S 65B of the Indian Evidence Act has also been placed on record qua the computer generated documents.
6. I have heard Dr. Sheetal Vohra, Ld. Counsel for the plaintiff. Ld. Counsel for the plaintiff states that in view of the evidence led by PW-1, plaintiff has proved its case. In support of her contentions, Ld. Counsel has relied upon judgments - The Timken Company vs. Timken Services Private Ltd., 2013 SCC OnLine Del 2237; Midas Hygiene Industries P. Ltd v. Sudhir Bhatia, (2004) 3 SCC 90; Indian Shaving Products Ltd vs. Gift Pack, MANU/DE/0209/1999; Rolex S.A. vs. Alex Jewellery Pvt. Ltd, 2014 TM No.53/18 Page 6 of 12 Veekesy Rubber Industries Pvt. Ltd. vs. Shailesh Poddar and another SCC OnLine Del 1619; S.Syed Mohideen vs. P. Sulochana Bai, M(2016) 2 SCC 683; Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd, (2001) 5 SCC 73; N R Dongre vs. Whirlpool Corporation, (1996) 5 SCC 714; Subhash Chand Bansal vs. Khadim's, 2012 SCC OnLine Del 4326; Colgate Palmolive Company vs. Anchor Health and Beauty Care Pvt. Ltd, 2003 SCC OnLine Del 1005; Marico Limited vs. Mukesh Kumar, 2018 SCC OnLine Del 10823; Christian Louboutin Sas vs. Ashish Bansal, CS (COMM) 503/2016 decided on 31.7.2018 by High Court of Delhi; Hindustan Unilever Limited vs. Reckitt Benckiser India Limited, 2014 SCC OnLine Del 490; Intex Technologies (India) Ltd vs. M/s AZ Tech (India), 2017 SCC OnLine Del 7392; Agro Tech Foods Ltd. vs. Sudha Churiwal, MANU/DE/1699/2009 and M/s South India Beverages Pvt. Ltd vs General Mills Marketing Inc., 2014 SCC OnLine Del 1953.
7. I have gone through the file. Plaintiff has proved the Certificate of Registration No. 1281380 dated 20.06.2016, No. 2708295 dated 28.03.2014, No. 1281199 dated 20.6.2016; No.2708293 dated 28.3.2014, No.1668351 dated 5.10.2017; No. 2708294 dated 28.3.2014; No.1165765 dated 25.6.2008; No. 1165477 dated 22.4.2014; No.1703398 dated 25.6.2008; No.1703399 dated 25.6.2008; No.1592034 dated 22.2.2016; No. 857915 dated 2.7.2007; 1283182 dated 7.12.2010; No.1340259 dated 9.1.2012; 2064526 dated 7.10.20100 etc and has also obtained copyright in respect of its artistic work of VKC label/cartons vide A-85197/2009, A-85198/2009, A- 85199/2009; A-83466/2008 etc as Ex.PW1/7 collectively. Plaintiff has TM No.53/18 Page 7 of 12 Veekesy Rubber Industries Pvt. Ltd. vs. Shailesh Poddar and another also proved product brochures/catelogues of various footwear manufactured by the plaintiff company as Ex.PW1/4. Plaintiff has also proved advertisement pages and images of the respective cartons of the plaintiff's and defendant's company. In response to the legal notice dated 20.11.2017, the plaintiff received an e-mail dated 21.11.2017- Ex.PW1/27 which reads as under :
"Dear Sir/Mam, I Shailesh Poddar Director of Shri Banke Bihari Cotfab Pvt. Ltd. like to inform you that I will not make these type of boxes and will not use these thing in my business as I was not aware of these registration. And even I already took action when I received you notice to stop immediately printing and production of product wherever I found these things in my material. Regards Shailesh Poddar Sent from my iPhone"
8. Defendants are engaged in the similar field of business as the plaintiff i.e. footwear. From the comparison of the images of the cartons of the plaintiff as well as defendants it is clear that defendants are using the impugned/infringing footprint device marks, labels, copyright in artistic work and trade dress of the carton which is deceptively similar to plaintiff's well known footprint device marks, labels, copyright in artistic work and trade dress of the cartons of the plaintiff. Defendants have also copied the tagline/slogan of the plaintiff "My Stride My Pride" by use of deceptively similar tagline/slogan "My Style My Fashion".
9. The test for substantial similarity involves viewing the product in question through the eyes of the layman. A layman is not TM No.53/18 Page 8 of 12 Veekesy Rubber Industries Pvt. Ltd. vs. Shailesh Poddar and another expected to have the same 'hair-slitting' skills as an expert. A punctilious analysis is not necessary. A layman is presumed to have the cognition and experiences of a reasonable man. Therefore, if a reasonable observer is likely to get confused between the two products then a copyright violation is said to take place. Transposing the said principles in the context of trademark infringement, one may venture to assess similarity and likelihood of confusion between rival marks on the touchstone of the impression gathered by a reasonable observer, who is a layman as opposed to a connoisseur. It is also well settled that while a trademark is supposed to be looked at in entirety, yet the consideration of a trademark as a whole does not condone infringement where less than the entire trademark is appropriated.
10. S.28 of the Trade Marks Act, 1999 confers on the registered proprietor of the Trademark, exclusive right to use of the trademark in relation to the goods or services in respect of which the trademark is obtained. No action for the infringement of the trademark is available if the trademark is unregistered. Infringement, broadly means taking unfair advantage or being detrimental to the distinctive character or reputation of a trademark. Under Section 29 (1) of the Trade Mark Act, 1999 a registered trademark is infringed by a person who is not the registered proprietor of the trademark nor a registered user thereof but who uses in the course of trade, a mark which is identical with or deceptively similar to the trademark, in relation to any goods or services of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being TM No.53/18 Page 9 of 12 Veekesy Rubber Industries Pvt. Ltd. vs. Shailesh Poddar and another used as a trademark.
11. In judgment - Midas (supra) it has been held that if the plaintiff is prior and prominent user and defendant has failed to explain why he adopted the trademark and in case of infringement of copyright, an injunction must follow.
12. Though not referred to or relied upon, in judgment - Time Incorportated vs. Lokesh Srivastava, 2005 (3) PTC 3 (Del) it has been held that the Courts dealing actions for infringement of trade marks, copy rights, patents etc should not only grant compensatory damages but award punitive damages also with a view to discourage and dishearten law breakers who indulge in violations with impunity out of lust for money so that they realize that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay punitive damages also which may spell financial disaster for them. The award of compensatory damages to a plaintiff is aimed at compensating him for the loss suffered by him whereas punitive damages are aimed at deterring a wrong doer and the like minded from indulging in such unlawful activities. Whenever an action has criminal propensity also the punitive damages are clearly called for so that the tendency to violate the laws and infringe the rights of others with a view to make money is curbed.
13. Though not referred to or relied upon, in judgment - Hero Honda Motors Ltd vs. Shree Assuramji Scooters, 2006 (32) PTC 117 (Del.), it has been held that damages should be awarded against the defendant who chose to stay away from the proceedings of the court TM No.53/18 Page 10 of 12 Veekesy Rubber Industries Pvt. Ltd. vs. Shailesh Poddar and another and they should not be permitted to enjoy the benefits of evasion of court proceedings. The rationale for the same is that while defendants who appeared in court may be burdened with damages while defendants who chose to stay away from the court would escape such damages. The actions of the defendants result in affecting the reputation of the plaintiff and every endeavour should be made for a larger public purpose to discourage such parties from indulging in acts of deception.
14. In the present case, defendants did not put in appearance and have deliberately stayed away from the present suit. Initially, even after service of legal notice dated 20.11.2017 sent by the plaintiff, defendant promised to stop manufacturing and selling infringing articles as that of the plaintiff. However, defendant remained indulged in selling the infringed articles to defeat the business of the plaintiff- company. The judgments relied upon by Ld. Counsel for plaintiff are applicable to the facts of the present case.
15. In the facts and circumstances of the case, I am of the considered opinion that plaintiff has proved its case against the defendants. Accordingly, the suit of the plaintiff is decreed in favour of the plaintiff and against the defendants. The defendants are permanently restrained from manufacturing, advertising, selling, offering for sale, importing, exporting, directly or indirectly carrying on any business with the impugned, infringed foot print device marks, labels, copyright in artistic work and trade dress of the carton 'hotride' or any other mark, packaging, carton, copyright in artistic work TM No.53/18 Page 11 of 12 Veekesy Rubber Industries Pvt. Ltd. vs. Shailesh Poddar and another deceptively similar to plaintiff's prior used, registered and well-known foot print device marks, labels, copyright in artistic work 'VKC pride' on various types of footwear or any other allied or cognate goods amounting to infringement of registered trademark of the plaintiff. Defendants are further permanently restrained from using the impugned tagline/slogan 'My Style My Fashion' which is deceptively similar to plaintiff's tagline/slogan 'My stride My pride'. The relief of damages is also granted to the extent of Rs.2 lakh (Rs. Two lakh) as compensatory damages and further a sum of Rs.2 lakh (Rs. Two lakh) as punitive/exemplary damages. Plaintiff shall also be entitled to costs.
16. Decree sheet be drawn accordingly. File be consigned to Record Room after due compliance. Digitally signed by PRAVEEN PRAVEEN KUMAR KUMAR Date: 2019.02.05 03:26:59 +0530 Dictated & announced in open (PRAVEEN KUMAR) court today i.e. on 29.01.2019. Additional District Judge-05, New Delhi District, Patiala House Courts, New Delhi.
TM No.53/18 Page 12 of 12Veekesy Rubber Industries Pvt. Ltd. vs. Shailesh Poddar and another