Delhi District Court
Unique Energos Pvt Ltd vs Rambir Singh on 12 November, 2025
IN THE COURT OF MS SAVITA RAO, DISTRICT JUDGE
COMMERCIAL COURT-01, SOUTH,
SAKET COURTS, DELHI
CS (Comm) No. : 518/2022
DLST010077772022
In the matter of :-
Unique Energos Pvt. Ltd
104, Brij Puri, Choti Line
Yamuna Nagar- 135001
Haryana
............Plaintiff
Vs.
Rambir Singh
Trading as Konark Trading Company
House No. 991, Khasra No. 1760/1
Baba Mohalla, Aya Nagar, New Delhi - 110047
Also at :
Konark Enterprises
Near Yadav Sweets
Village Todapur, New Delhi - 110012
.........Defendant
Date of institution of the case : 06.09.2022
Date of final arguments : 15.10.2025 and 31.10.2025
Date of judgment : 12.11.2025
JUDGMENT
1. This is suit for Permanent Injunction Restraining Infringement and Passing Off of Trademark, Copyright, Delivery CS (Comm) No. 518 of 2022 1/41 up and Rendition of Accounts etc. filed by plaintiff against the defendant. Plaintiff, as stated, is a company carrying on trade and business of manufacturing, marketing, selling and exporting of different specification of batteries. It is a part of Unique Group of companies which had been in business for more than 20 years in respect of plywood, wooden Panels, fertilizers and cement and subsequently it entered in batteries industries in the year 2010. Plaintiff coined, conceived and adopted the trademark/label ADWIN in the year 2010 in relation to said different varieties of batteries and has been using the said trademark/label ADWIN since adoption continuously, extensively, uninterruptedly and exclusively. In order to acquire statutory rights, plaintiff filed several trademark applications for the registration of trademarks ADWIN in multiple classes, many of which are registered and some of them are pending .
2. Plaintiff's trademark/label ADWIN is registered under no. 3747479 & 4946614 respectively in class 09 and plaintiff is claiming exclusive right not only in colour scheme, get up, placement of words but also in the style of fonts of the trademark/label ADWIN. Plaintiff, as stated, has been using the trademark/label ADWIN since the year of adoption up to present time continuously, uninterruptedly as an exclusive proprietor and owner .
3. Plaintiff represents its said trademark/label ADWIN in an artistic manner including the colour scheme, get up, placement of words, style of fonts, colour scheme, layout, placement of words etc and the art work involved in the plaintiff's said trademark/label ADWIN is original within the meaning of the Copyright Act, 1957 and plaintiff is owner and proprietor of the copyright involved in CS (Comm) No. 518 of 2022 2/41 the said artistic work in trademark/label. Further, plaintiff has been advertising. soliciting, displaying and selling the said products under the trademark/label ADWIN through its exclusive websites http: //adwinbattery.com and also through third party online e- commerce market place namely http://www.indiamart.com. The commercials of the said goods under the said trademark/label ADWIN can also be viewed on youtube channels and Facebook page (http://www.facebook.com/adwinbatteries/).
4. Plaintiff's said goods and business are highly demanded in the market and has acquired a vast reputations and has also acquired secondary significance denoting the said goods and business of the plaintiff and is recognized with the plaintiff alone and nobody can be permitted to use or deal with the same/similar trade mark/label ADWIN and copyrights therein either as a trade mark or in any other manner in relation to any of their goods and business without the leave and license of the plaintiff.
5. Defendant, as stated, is engaged in the same nature of business and is carrying on the trade and business of varieties of batteries and other allied and cognate goods. Defendant is engaged in the manufacturing and marketing of impugned goods in the course of trade using the identical trademark/label ARWIN including the colour scheme, font, style, layout, get up, placement of words etc. and has intentionally picked the said trade mark/label of the plaintiff and modified the same to look like the impugned trade mark ADWIN to create confusion between the said trademark of the plaintiff ADWIN and impugned trademark of the defendant ARWIN. Defendant has written deceptive 'R' in the impugned trade mark ARWIN in such a manner that it looks like 'D' of the plaintiff's trademark/label ADWIN. Colour combination used CS (Comm) No. 518 of 2022 3/41 by defendant i.e. green, black is also same as that of the plaintiff which is absolutely identical/replica to that of plaintiff's trademark/label and all the artistic features available in the trademark/label including colour scheme and font style, layout, make up, get up, placement of words etc. of the defendant and that of the plaintiff are identical.
6. Plaintiff became aware of the impugned adoption in the second week of June 2022 when the plaintiff received complaint from the market and came across the impugned goods under the impugned trademark/label, subsequent to which, plaintiff filed rectification petitions against the registration of the defendant. According to the plaintiff, defendant by the dishonest adoption and use of the impugned trade mark/label ARWIN, is infringing plaintiff's registered trademark and copyright and passing off its goods as that of the plaintiffs. Defendant is also violating plaintiff's proprietary rights and is diluting plaintiff's trademark and copyright, due to which plaintiff is suffering huge losses both in business and reputation which are incapable of being assessed in monetary terms. It was stated that defendant is carrying out the impugned trade and business in clandestine and surreptitious manner and selling the goods without issuing proper bills. Unwary purchasers are being deceived as to the origin of goods and defendant is leading to misappropriation of goodwill and reputation that vests exclusively with the plaintiff. Hence, instant suit was filed alongwith application under order 39 rules 1 & 2 CPC r/w section 151 CPC.
7. After filing of the suit, vide order dated 07.09.2022, ex- parte ad-interim injunction was granted in favour of plaintiff and against the defendant.
CS (Comm) No. 518 of 2022 4/418. In written statement filed on behalf of defendant, it was stated that it is admitted case of plaintiff that trademark of defendant is already registered by the Trademark Registry. Thus, defendant has the unhindered non exclusive right to usage of such trademark since 06.04.2019 i.e. the date when the trademark application was filed by the defendant. Registration for the said mark was granted on 11.10.2019, which has not been challenged nor was subjected to rectification proceedings till 3 December 2021.
9. It was stated that when marks are seen as a whole, mark of defendant is completely distinct and different from the mark of plaintiff and are not descriptive in nature. There is vast difference between the two marks and there is no likelihood of confusion. Pronunciation of the suffix of ' ADWIN' and ' ARWIN' are completely different as well as its meaning, leaving no scope for confusion or deception.
10. It was further stated that defendant is an established business concern and is engaged in the business of batteries which is included in class 09. Defendant when adopted the said trademark and when applied for the registration of the same, conducted thorough search and there was no similar trademark in the record of the Trade Mark Registry or in the market and till date, there is no mark same or similar with the said trademark of the defendant for the said goods and services.
11. It was further stated that plaintiff was having knowledge about the defendant's existence since September 2019, however, it was falsely stated in plaint that plaintiff got the knowledge in the month of June 2022, whereas plaintiff filed rectification in the month of December 2021. Plaintiff, as stated, has only tried CS (Comm) No. 518 of 2022 5/41 to piggyback after the pandemic, knowing that small businesses are affected heavily and by getting an injunction against the defendant, they would be in a position to completely destroy the business of the defendant.
12. In replication, contents of written statement were denied and those of plaint were reiterated and reaffirmed.
13. Arguments were addressed on applications under order 39 Rule 1 & 2 CPC and application under order 39 Rule 4 CPC. Vide order dated 18.04.2024, application under Order 39 Rules 1 & 2 CPC was allowed and consequently, application under Order 39 Rule 4 was dismissed. From the pleadings of parties, following issues were framed:
1. Whether defendant has infringed the registered trademark/label/artistic work ADWIN of the plaintiff? OPP
2. Whether defendant by its act, passed off its goods as those of the plaintiff and thus violated the plaintiff's common law rights/proprietary rights? OPP
3. Whether the plaintiff is entitled to a decree of permanent injunction as prayed in para (a) of prayer clause? OPP
4. Whether the plaintiff is entitled to a decree of delivery up of infringing goods of defendant, finished as well as unfinished? OPP
5. Whether the plaintiff is entitled to a decree of rendition of accounts/damages for the profits gained by defendant on account of sale of the infringing goods and the quantum of the same? OPP
6. Relief.CS (Comm) No. 518 of 2022 6/41
14. In plaintiff's evidence, Sh. Amar Kumar, AR of plaintiff was examined as PW1 who filed his evidence by way of affidavit Ex. PW1/1 and relied upon following documents:
1. The representation/photo of the products of the plaintiff bearing trade mark/label of plaintiff as Exhibit PW1/2.
2. The representation/photo of the products of the defendant bearing impugned trade mark/label as Exhibit PW1/3
3. Certificate of incorporation of Plaintiff's Company as Exhibit PW1/4
4. Plaintiff's trademark's online status of trademark application no. 4974812 as Exhibit PW1/5
5. Plaintiff's trademark's online status of trademark application no. 5160030 asExhibit PW1/6
6. Plaintiff's trademark's online status/Registration Certificate/L PC of trademark application no. 4946614 as Exhibit PW1/7
7. Plaintiff's trademark's online status/Registration Certificate/LPC of trademark application no. 4945613 as Exhibit PW1/8
8. Plaintiff's trademark's online status/Registration Certificate/LPC of trademark application no. 3747479 as Ex.
PW1/9
9. Plaintift's trademark's online status of trademark application no. 5230402 as Exhibit PW1/10
10. Plaintiff's trademark's online status of trademark application no. 5230401 as Exhibit PW1/11
11. Plaintiff's trademark's online status/LPC of trademark application no. 2070235 as Exhibit PW1/12 CS (Comm) No. 518 of 2022 7/41
12. Plaintiffs trademark's online status of trademark application no. 4974813 as Exhibit PW1/13
13. Plaintiffs NOC online status of C.C. No. 112296 as Exhibit PW1/14.
14. Board Resclution as Exhibit PW1/15
15. VAT Certificate of Plaintiff as Exhibit PW1/16
16. GST Certificate of plaintiff as Exhibit PW1/17
17. Certificate for Importer-Exporter Code of the Plaintiff as Exhibit PW1/18
18. Invoices of Piairtiff's Goods as Exhibit PW1/19 (Colly)
19. Income Tax Return of the Plaintiff as Exhibit PW1/20 (Colly)
20. Advertisement Material of Plaintiff 's Trademark/Label as Exhibit PW1/21 (Colly)
21. Advertisement Invoices of Plaintiff 's Goods as Exhibit PW1/22 (Colly)
22. Raw material expense Invoices of Plaintiff 's goods as Exhibit PW1/23 (Colly)
23. Sales/turnover Certificate of plaintiff given by CA as Ex. PW1/24
24. Delhi Distributers list of Plaintif as Ex. PW1/25
25. Facebook Advertisement of Plaintiff's Trademark/Label as Exhibit PW1/26.
26. Twitter Advertisement Trademark/Label as Exhibit PW1/27 and Exhibit PW1/28
27. India mart Advertisement of Plaintiff's Trademark/Label as Exhibit PW1/29
28. Master Data of Plaintiff's Company as Exhibit PW1/30 CS (Comm) No. 518 of 2022 8/41
29. Defendant's trademark's online status of trademark application no. 4139793 as Exhibit PW1/31
30. Defendant's trademark's online status of trademark application no. 4632060 as Exhibit PW1/32
31. Defendant's Sales Invoices of impugned goods as Exhibit PW1/33
32. Defendant's warranty card of impugned goods as Ex. PW1/34
33. Defendant's visiting card of impugned goods as Exhibit PW1/35
34. Facebook Advertisement of Defendant's Impugned Trademark/Label as Exhibit PW1/36
35. Copyright Registration of the Plaintiffs Label as Exhibit PW1/37
36. Separate Board Resoiuaon passed in favour of Mr. Aman Kumar as Exhibit PW1/38
15. Sh. Dharmender Kumar, Post Examiner of Trade Marks and GI was examined as PW2 who brough the summoned record i.e. Judgment of Hon'ble High Court dated 31.07.2017 in case titled as Registrar of Trade Marks Vs. Kapoor Saws Manufacturing Co. Ors. (CRP No. 146/2015 and CRP No. 29/2017).
16. Sh. Pankaj Kumar Pandey, (Post-Examiner of Trademark, GI and Copy Right) was examined as PW3 who brought the certified copy of Copy Right Certificate bearing registration no. A-143752/2022 dated 19.10.2022 and exhibited the same as Ex. PW3/A. CS (Comm) No. 518 of 2022 9/41
17. In defendant's evidence, defendant Rambir Singh examined himself as DW1. He filed his evidence by way of affidavit Ex. DW1/1 and relied upon following documents:
1. The copy of Trade mark application status for defendant trade mark application No.4139793 for the mark ARWIN with the device of sun Mark as DW-1/2.
2. The copy of Trade mark application status for defendant trade mark application No.4632060 for the mark ARWIN with the font Mark as DW-1/3.
3. The copy of Trade mark application status for defendant trade mark application No.2070235 for the mark ARWIN with the font Mark as DW-1/4.
4. The copy of Trade mark application status for plaintiff trade mark application No.4946614 for the mark ADWIN Mark as DW-1/5.
5. The copy of Trade mark application status for plaintiff trade mark application No.5230401 for the mark ADWINMark as DW-1/6
6. The copy of Trade mark application status for plaintiff trau mark application No.3692988 for the mark ADWIN Mark as DW-1/7.
7. The copy of Trade mark application status for plaintiff trade mark application No.3577256 for the mark ADDWIN Mark as DW-1/8.
8. The copy of Trade mark application status for plaintiff trade mark application No.4461739 for the mark ADWIN Mark as DW-1/9.CS (Comm) No. 518 of 2022 10/41
9. The copy of rectification filed by the plaintiff for the trade mark application No.4139793 for the mark ARWIN with the device of sun Mark as DW/10.
10. The copy of rectification filed by the plaintiff for the trade mark application No.4632060 as Mark DW/11.
11. The copy of reply to rectification filed by the plaintiff for the trade mark application No.4139793 for the mark ARWIN with the device of sun Mark as DW/12.
12. The copy of reply to rectification filed by the plaintiff for the trade mark application No.4632060 for the mark ARWIN with the font Mark asDW/13.
Issue wise findings are as under :-
18. Issues no. 1 to 3 : Plaintiff, as claimed, is carrying on the trade and business of manufacturing, marketing, selling and exporting of different kinds of batteries and many other related products since 2010. Plaintiff coined, conceived and adopted the trademark ADWIN in 2010 in relation to said goods and business and has been using the said trademark since adoption continuously, extensively, uninterruptedly and exclusively.
19. PW1 deposed that the distinctive and unique trademark/label ADWIN alongwith artistic features including the colour scheme and combination, layout, get up, font theme, placement of words was originally coined, conceived, created and adopted by the plaintiff in 2010 and is being used continuously till now. In order to acquire statutory rights, plaintiff filed several trademark application for registration of trademark ADWIN in multiple classes, out of which many are registered and some of them are pending. Plaintiff relied upon online status of registration and Registration Certificates issued under no. 3747479 and 4946614 under class 09 CS (Comm) No. 518 of 2022 11/41 and claimed exclusive right not only in colour scheme, get up, placement of words but also in the style of fonts of the trademark/label ADWIN. Plaintiff claims to be prior in adoption and user and registered proprietor of said trademark/label in relation to said goods and business. It was also submitted that plaintiff has been continuously advertising and promoting its said trademark/label through different means and modes including newspapers, magazines, television, social media etc. as well as goods of plaintiff are also available online for purchase. Plaintiff became aware of the impugned adoption by defendant in the second week of June 2022 when plaintiff received complaint from the market and came across the impugned goods under the impugned trademark/label. Plaintiff also learnt that defendant had applied for and obtained trademark registration for the label (bearing registration no. 4632060 and 4139793 in class 09) . Defendant's registration, as deposed by PW1, is invalid and contrary to the provisions of the Act and as such the impugned registration is liable to be cancelled/rectified.
20. Plaintiff further claimed that impugned trademark ARWIN was filed by the defendant under no. 4632060 and 4139793 in class 09 on 'Proposed to be used' basis. However, defendant has commenced use of the impugned trademark/label ARWIN which is blatant violation of the proprietory/common law rights of the plaintiff in the said trademark/label ADWIN and artistic features including the colour scheme, font style, placement of words involved in it. It was submitted that defendant has verbatim copied colour scheme, font style and placement of words of the plaintiff whereof plaintiff has exclusive right. Impugned trademark/label ARWIN is identical with and deceptively similar to the CS (Comm) No. 518 of 2022 12/41 trademark/label ADWIN of plaintiff in each and every respect including phonetically, visually and structurally in its basic idea and essential feature as well as in the eyes of ordinary people of average intelligence. It was submitted that defendant adopted and started using the impugned trademark/label in respect of the impugned goods and business out of positive greed and with a view to take advantage and to trade upon the reputation and goodwill of the plaintiff and further with a view to cause confusion and deception in the market and to pass off impugned goods and business as those of the plaintiff and to make easy money at the cost of the goodwill and reputation of the plaintiff. Defendant had been fully aware of the plaintiff's said trademark/label at the time of its impugned adoption and user of impugned trademark/label as both the plaintiff and defendant are engaged in the identical nature of trade and business.
21. In cross examination, PW1 stated that he was informed by his team that the label/trademark ADWIN was being infringed/passed off by the defendant during the years 2021-2022. Plaintiff had received information from local customers and dealers regarding the availability of the plaintiff's batteries at cheaper rates. Those batteries were of defendant's firm ARWIN as rates of plaintiff were unified and the cheaper rates which were being offered in name of ADWIN were not possible. After receiving information of infringement/passing off by the defendant, PW1 contacted their team of lawyers and enquired about the process that could be adopted against the defendant and on the advice given by the counsel, plaintiff firm moved for cancellation of trademark application of defendant as defendant's trademark ARWIN was a registered trademark as well as also filed the present suit .
CS (Comm) No. 518 of 2022 13/4122. PW1 admitted that they had not sent any legal notice/notice of any form to the defendant before filing of the case, though as stated, their delegated representative had contacted Mr. Rambir Singh regarding the violation of trademark. Plaintiff had also got the registration under the Copyright Act prior to registration of the said trademark/label ADWIN.
23. PW1 was not sure/aware, since when defendant had been using the impugned mark ARWIN and answered that it could be possible that defendant had been using the impugned mark since the year when he started his dealings and operations with plaintiff company. Suit has been filed against defendant trading as Konark Trading Company and Konark Enterprises .While PW1 denied that defendant is not related to Konark Enterprises. He averred that Konark Enterprises is related with defendant i.e. Mr. Rambir Singh. Plaintiff had business relationship with defendant prior to filing of the suit as he was dealing with plaintiff in the name of Konark Trading Company and Konark Enterprises, though PW1 could not clearly remember relationship of defendant with both the firms. He stated that the present proceedings have been filed against both Konark enterprises and Konark Trading Company . He denied that they used to manufacture and supply generic batteries to Rambir Singh for his own further branding, badging and selling and due to his good sales, plaintiff has filed the present proceedings against the defendant, though defendant was their distributor and they used to supply him their own batteries which bear the trademark of the plaintiff brand/trademark/label ADWIN for further selling.
24. PW1 specified that the present suit has been filed against defendant trading as Konark Trading Company . He stated that Konark Enterprises as mentioned in the memo of parties might be a CS (Comm) No. 518 of 2022 14/41 sister concern of Rambir Singh or Konark Trading Company although he did not have clear knowledge about the status of Konark Enterprises or who manages the affairs of Konark Enterprises. According to him, defendant was running his business in the name of Konark Enterprises at Village Todapur which was the same place where the Court Commissioner had visited and defendant was present at the address of Konark Enterprises at the time of execution of commission. He also specified that defendant had been infringing on the trademark of the goods manufactured by plaintiff company. Plaintiff had business relationship with defendant prior to filing of the suit. According to him, defendant was dealing with plaintiff both in the name of Konark Trading Company and Konark Enterprises. He denied that Rambir Singh had no relation with Konark Enterprises.
25. PW1 was put Delhi Distributor List of plaintiff company Ex. PW1/25 wherein defendant's name was not mentioned. PW1 stated it to be correct that at the time of providing and ending distributorship, there is proper documentation between the distributor and plaintiff company. He further admitted that no document regarding the distributorship qua the defendant and plaintiff company has been put on record by plaintiff and clarified that they have not mentioned/claimed any distributorship/agency with the defendant. They have not mentioned about their previous relationship and past distributorship agency with Rambir Singh while filing the present case because by that time, the distributorship between Rambir Singh and plaintiff company had ended/dissolved. As stated by PW1, they did not notice/remember to mention the such factum while filing the present case and did not CS (Comm) No. 518 of 2022 15/41 know whether such information was necessary at the time of filing of the present suit.
26. DW1, nevertheless, himself admitted that he is sole proprietor of M/s Konark Trading Company, doing business of batteries since 2013 in Delhi as distributors of different companies but in 2019, he started his own brand/trade mark/label ARWIN. He conceded that there was another proprietorship firm M/s Konark Enterprises which was registered in the name of his son Mr. Shubham Lohia. M/s Konark Enterprises had distributorship of plaintiff's company in the year 2014. Said firm had only distributorship of plaintiff's company brand/trademark/label ADWIN, which is the subject matter of the present suit. He stated that the registered office of the firm M/s Konark Trading company is at Aya Nagar Delhi and registered office of M/s Konark Enterprises is at Village Todapur, Delhi. He was shown warranty card of ARWIN wherein ' Konark Group New Delhi" was mentioned, to which DW1 sought to clarify that there was no such entity at present with the name 'Konark Group', within his knowledge and it was mistakenly and inadvertently mentioned or printed in the warranty card issued with the ARWIN batteries.
27. Although plaintiff conceded that it was not mentioned in the plaint with regard to distributorship of plaintiff with defendant or Konark Enterprises, nevertheless, the fact which emerges on record is that Konark Enterprises as conceded by DW1 himself had distributorship of plaintiff's company . Defendant himself as sole proprietor of M/s Konark Trading company was in the business of batteries since 2013 and as conceded by him, he was operating as distributors of different companies and only in 2019, he started his CS (Comm) No. 518 of 2022 16/41 own brand/trade mark/label ARWIN and started selling his products having trademark/label ARWIN in the mark at around 2020-2021.
28. PW1 asserted that defendant has no right, authority/liberty to use the impugned mark/label ARWIN without the permission/ leave and license of the plaintiff firm. According to PW1, though no complaint was received regarding selling of these products under disguise of plaintiff's products however he sought to clarify that plaintiff's products were deliberately decepted/misrepresented by the defendant. He stated that the plaintiff/s products and trademark/label were well known marks. He admitted that the first time customer might not be aware of plaintiff's product and trademark or that there may be customer/people who might not be aware of plaintiff's mark and to the same customer, defendant might be involved in sale of its own marks. However, he stated that he was not aware about presence of any such customer who was not aware of plaintiff's mark . He stated that he had no objection with the mark of the defendant firm which has sunshine device mark/label. They have only objection to the word/label/trademark ARWIN, which is phonetically similar as per his understanding.
29. DW1 claimed that prior to selling his product having trademark /label ARWIN in the market of Delhi, he had done marketing of his product through virtual mode e.g. facebook, whatsapp etc. As further deposed, he sold his product in different parts of Delhi through his authorized dealer and had also given his product to different retailers/shop owners across Delhi without issuing any invoices as a sample in order to promote his product. He had carried on his business of ARWIN batteries mostly as a replacement of different brand batteries product, which had not been operated due to various issues to safeguard his own CS (Comm) No. 518 of 2022 17/41 relationship and to maintain his goodwill in the market. He had replaced different brand batteries with his own brand batteries ARWIN without issuing proper invoices, as replacement battery needed no bills.
30. According to DW1, he had adopted the trademark/label ARWIN by himself but the label of the trademark ARWIN was designed by some designer. Though he was suggested many different trademarks by different people but he adopted the mark ARWIN. He did not have any knowledge that the plaintiff had filed rectification/cancellation petition on his two trademarks applications no. 4632060 (Ex. DW1/3) and 4139793 ( Ex. DW1/2) before the trademark registry, to which reply had also been filed by his counsel. He denied the suggestion that he was dealer/distributor of plaintiff's goods/products batteries having trademark /label ADWIN or that he was using the goodwill/reputation of the plaintiff trademark/label ADWIN for gaining the undue profit.
31. While disposal of applications under Order 39 Rules 1 & 2 CPC and under Order 39 Rules 4 CPC, it was brought on record that defendant was the highest seller of plaintiff's products since the year 2012. It was noted that while defendant had pleaded that plaintiff had no goodwill pertaining to the impugned mark which needed to be protected, at the same time, it was own submission of defendant that it was the highest seller of the plaintiff's products. Defendant adopted mark ARWIN which is similar to the trademark of the plaintiff for the similar products. LC report refers to the trademark created by defendant ARWIN being similar and look alike of an already in existence trademark of plaintiff i.e. ADWIN in order to deceive and create confusion and possibility of creating confusion amongst customers.
CS (Comm) No. 518 of 2022 18/4132. As conceded by defendant himself, Konark Enterprises which was registered in name of his son had distributorship of plaintiffs company in the year 2014. Defendant had been selling the products of different companies and started his own brand name ARWIN in the year 2019. Defendant was not only aware of the prior user of plaintiff's trademark ADWIN but through another proprietorship firm M/s Konark Enterprises registered in name of his own son, had been selling the products of the plaintiff company and later on decided to use the deceptively similar brand name as that of plaintiff.
33. Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours.
34. In terms of section 29 of Trademarks Act, (1) A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-
(a) its identity with the registered trademark and the similarity of the goods or services covered by such registered trade mark ; or CS (Comm) No. 518 of 2022 19/41
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark (3) In any case falling under clause (c) of sub-section (2), the court shall presume it is likely to cause confusion on the part of the public.
35. Thus, an action for infringement of trademark or more of passing off will lie wherever the defendant's product's name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. Honesty and fair play are, and ought to be, the basic policies in the world of business . When a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else, it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury (Laxmikant V. Patel Vs. Chetanbhai Shah and Anothers (2002) Supreme Court Cases 65)
36. As was observed in Kavi Raj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 and in National Bell Co. v. Metal Goods Mfg. Co., AIR 1971 SC 898:
CS (Comm) No. 518 of 2022 20/41" On registration of a trade mark, the registered proprietor gets, under Section 28, the exclusive right to the use of such trade marks in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of any infringement of such trade mark. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods" .
37. As was observed in American Home Products vs. Mac Laboratories, AIR 1986 SC 137 :
" when a person gets his trade mark registered, he acquires valuable rights by reason of such registration. The registration of the trade mark gives the goods in respect of which it is registered and if there is any invasion of this right by any other persons using a mark which is the same or deceptively similar to the trade mark, one can protect the trade mark by an action for infringement in which an injunction can be obtained".
38. Ld. Counsel for plaintiff made following submissions:
(a) That, by the operation of Section 29 of the Trade Marks Act, 1999, the act of adoption and user by the defendant amounts to infringement of the registered trademark of the plaintiff, the reason being the plaintiff is the registered proprietor of the said trademark/label .
The defendant has malifidely adopted impugned trademark/label for the identical goods. The impugned trademark of the defendant is identical with and/or deceptively similar to the said trademark of the plaintiff. Reliance was placed upon The Himalaya Drug Company Vs. S. B. L. Limited. MANU/DE/5479/2012 wherein the defendant had been restrained permanently for using LIVE - T which was found to be similar to the plaintiff's registered trademark Liv. 52. The judgment deals with the aspect of infringement comprehensively.
CS (Comm) No. 518 of 2022 21/41(b) That, on account of comparison of the trademark/label of the plaintiff and that of the defendant, the use of the impugned trademark/label by the defendant is a clear cut case of infringement of trademark and copyright as well as a case passing off.
Reliance was placed upon following:
K.R. Chinna Krishna Chettiar vs. Shri Ambal & Co.
[MANU/SC/0303/1969] :
"6.......It for the court to decide the question on a comparison of the competing marks as a whole and their distinctive and essential features. We have no doubt in our mind that if the proposed mark is used in a normal and fair manner the mark would come to be known by its distinguishing feature "Andal". There is a striking similarity and affinity of sound between the words "Andal and "Ambal". Giving due weight to the judgment of the Registrar and bearing in mind the conclusions of the learned Single Judge and the Divisional Bench, we are satisfied that there is a real danger of confusion between the two marks.
7. There is no evidence of actual confusion, but that might be due to the fact that the appellant's trade is not of long standing. There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between Ambal and Andal."
Amritdhara Pharmacy vs. Satya Deo Gupta AIR 1963 SC 449:
"7. For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection"
8. To such a man the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandhara' is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words 'Amritdharar' and 'Lakshmandhara'. We do not think that the learned judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the CS (Comm) No. 518 of 2022 22/41 etymological meaning thereof or even consider the meaning of the composite words as 'current of nectar' or 'current of Lakshman'. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he want to purchase. Where the trade relates to goods largely sold to illiterate or badly educate persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between 'current of nectar' and 'current of Lakshman'. 'Current of Lakshman' in a literal sense has no meaning to give it meaning and must further make the inference that the 'current or stream' is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsman will perhaps know Lakshman, the story of the Ramayana being familiar to him; but we doubt if he would etymologise to the extent o seeing the so-called ideological difference between 'Amritdhara' and 'Lakshmandhara'. He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments." Finally, the Hon'ble Supreme Court held that the mark should not be compared by splitting them. The marks should be read as a whole and they should be compared as a whole. The court observed as under:-
"9. ... A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The trade mark is the whole thing the whole word has to be considered. .........."
The Hon'ble Supreme Court in Midas Hygiene Industries P. Ltd. & Anr. Vs. Sudhir Bhatia & Ors. 2004(28) PTC 121 (SC) held that the mark LAXMAN REKA and MAGIC LAXMAN REKHA are similar to each other. Further there was no explanation by the defendant as to why he had adopted the impugned mark MAGIC LAXMAN REKHA. The Supreme Court further observed that in case of infringement of trade mark or copyright the injunction must be granted and even delay in taking action is not a defence against the injunction. The Hon'ble Court goes to observe that:-
"5. The law on the subject is well settled. In cases of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest."
(c) That, plaintiff has indomitable goodwill and reputation and has also filed sale bills/invoices, screenshot of third party website, the sale of the plaintiff. The way the defendant has copied the trademark/label CS (Comm) No. 518 of 2022 23/41 of the plaintiff, the confusion and deception is bound to occur. The plaintiff has suffered huge loss and damages on account of passing off by the defendant.
Reliance was placed upon following:
Century Traders vs. Roshan Lal Duggar & Co.
[MANU/DE/0153/1977 "14. ...in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trademark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction"
"11. ...... A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. Registration under the statute does not confer any new right to the mark claimed or any greater rights than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout the State and it established the record of facts affecting the right to the mark. Registration itself does not create a trademark. The trademark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trademark is superior to priority in registration.
12. For the purpose of claiming such proprietorship of a mark, it is not necessary that the mark should have been used for considerable length of time. As a matter of fact, a single actual use with intent to continue such use of instanti confers right to such mark as a trade mark. It is sufficient if the article with the mark upon it has actually become a vendible article in the market with intent on the part of the proprietor to continue its production and sales. It is not necessary that the goods should have acquired a reputation for quality under that mark. Actual use of the mark under such circumstances as showing an intention to adopt and use it as a trademark is the test rather than the extent or duration of the use. A mere casual, intermittent or experimental use may be insufficient to show an intention to adopt the mark as a trademark for specific article or goods.........."
The Hon'ble Court further in para 18 has discussed the whole concept of passing off in following words.
CS (Comm) No. 518 of 2022 24/41"18. It is of course, essential to the success at any claim in respect of passing off based on the use of a given mark or get up that the plaintiff should be able to show that the disputed mark or get up has become by user in this country distinctive of the plaintiff's goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up will be understood by the trade and the public in this country as meaning that the goods are the plaintiff's goods. The gist of the action is that the plaintiff by using and making known the mark or get up in relation to his goods and thus causing it to be associated or identified with those goods, has acquired a quasi proprietary right to the exclusive use of the mark or get up in relation to goods of that kind which right is invaded by any person who, by using the same or some deceptively similar mark, or get up in relation to goods not of the plaintiff's manufacture, induces customers to buy from him goods not of the plaintiff's manufacture as goods of the plaintiff' manufacture, thereby diverting to himself orders intended for and rightfully belonging to the plaintiff."
19... In our view the proof of actual damage or fraud is unnecessary in a passing off action whether the relief asked for is injunction alone or injunction, accounts and damages. If there is a likelihood of the offending trademark invading the proprietary right, a case for injunction is made out."
Satyam Infoway Ltd. Vs. Sifynet Solutions (P) Ltd. [MANU/SC/0462/2004] :
"13. ......An action for passing off, as the phrase "passing off' itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendant's goods or services are the plaintiff's. The action is normally available to the owner of distinctive trademark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove long user to establish reputation in a passing-off action. It would depend upon the volume of sales and extent of advertisement.
14. The second element that must be established by a plaintiff in a passing-off action is misrepresentation by the defendant to the public. The word misrepresentation does not mean that the plaintiff has to prove any mala fide intention on the part of the defendant. Of course, if the misrepresentation is intentional, it might lead to an inference that the reputation of the plaintiff is such that it is worth the defendant's while to cash in on it. An innocent misrepresentation would be relevant only on the question of the ultimate relief which would be granted to the plaintiff. What has to be established is the likelihood of confusion in the minds of the public (the word "public" being understood to mean actual or potential customers or users) that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such CS (Comm) No. 518 of 2022 25/41 confusion the courts must allow for the "imperfect recollection of a person of ordinary memory".
(d) That, the use of the impugned trade mark by the defendant accordingly amounts to infringement and passing off the said trademark/labe of the plaintiff. The question of passing off, in an action the plaintiff has to merely establish use of the mark prior input of time the length of user is immaterial.
(e) That, in the present case defendant has copied/imitated the original artistic work in the trademark/label of the plaintiff. The acts of the defendant are malafide and the same is evident from a ocular comparison of the trademark /label of the defendant with that of the plaintiff. Such act of the defendant amounts to violation of the copyright of the plaintiff in respect of the artistic feature of the trademark/label. The plaintiff relies on Section 51 of the Trade Marks Act, 1999.
(f) That, as far as artistic features are concerned, the entire scheme of the art work of the label/packaging, flowery design, lettering style, placement of words, colour scheme and combination of the plaintiff has been copied by the defendant and the defendant has no answer to that. The defendant is guilty of the infringement of copyright (Exh. PW3/A) of the plaintiff. In Societe Des Produits Nestle versus Continental Coffee Ltd. [MANU/DE/6737/2011], the defendant had obtained in fact the registration of copyright however the Hon'ble Delhi High Court has observed and enunciated the law as under:-
8. In R.G. Anand v. Delux Films and Ors., AIR 1978 Sc 1613 : PTC (Suppl)(1) 412 (Del)(DB), Supreme Court, inter alia, laid down the following general propositions with respect to the copyrights:
"1. There can be no copyright in an idea, subject matter, themes, plots or historical or legendary facts and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyright work.CS (Comm) No. 518 of 2022 26/41
2. Where the same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur. In such a case the courts should determine whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work. If the defendant's work is nothing but a literal limitation of the copyrighted work with some variations here and there it would amount to violation of the copyright. In other words, in order to be actionable the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy.
3. One of the surest and the safest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen both the work is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original.
4. Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises.
5. Where however apart from the similarities appearing in the two works there are also material and broad dissimilarities which negative the intention to copy the original and the coincidences appearing in the two works are clearly incidental no infringement of the copyright comes into existence."
Supreme Court quoted with approval the following observations made by Copinger in his book on copyright (11th Edition):
"What is protected is not original thought or information, but the original expression of thought or information in some concrete form. Consequently, it is only an infringement if the defendant has made an unlawful use of the form in which the thought or information is expressed. The defendant must to be liable, have made a substantial use of this form; he is not liable if he has taken from the work the essential, ideas however original, and expressed the idea in his own from, or used the idea for his own purpose."
9. Though the defendant has claimed that since no artistic work is involved in this device, which only uses a mug and red colour, I am unable to accept this contention. No one can claim an exclusive right to use red colour or a mug, as a part of his artistic work, But, a mug can be designed and depicted in numerous ways and, therefore, it is difficult to dispute that hard work and labour is involved in designing a mug in a particular way. Copyright is available not in use of a red mug, but in the manner the mug is depicted in the artistic work of the author. It is not as if the plaintiff has used the photograph of some cup available in the market. Here, the mug was designed by Mr. Wolf-rudi von der Emden in a unique shape. Putting a golden line around the mug also involves some artistic work since it involves imaginations and thought on the part of the author/owner to use the golden line on the mug in such a manner so as to create a new design by his CS (Comm) No. 518 of 2022 27/41 work. Since, a mug can be designed and depicted in number of ways, whenever it is designed and depicted in a unique manner in which it is not already available in the market, it is difficult to dispute that this would qualify as an artistic work within the meaning of Section 2 (c) of copyrights Act. In fact, the definition of artistic work given in section 2 (c) of Copyrights Act makes it evident that a drawing would be an artistic work irrespective of whether the work possesses any artistic or not. Therefore, drawing and depicting a cup in a particular manner would be covered in the definition of artistic work.
10. In order to constitute infringement of a copyright in a work, it is not necessary that the impugned work should be verbatim re-production of the work of the plaintiff. It would be sufficient to constitute infringement if a substantial or core part of work of the plaintiff is re-produced by the defendant. The defendant has every right to use the basic idea involved in the work of the plaintiff, but, he is not permitted to express that idea in the same and the same manner in which it has been done by the plaintiff. What has to be seen in such a case is as to whether the defendant has merely made a fair use of the idea or has substantially appropriated the manner in which that idea has been depicted or expressed by the plaintiff. If the courts insist on the work used by the defendant being an absolute replica of the work in which copyright is claimed by the plaintiff, any person seeking to make a dishonest use of the work of the plaintiff would mark some changes here and there while copying the work of the plaintiff, so that in the event of being questioned, he may claim that the work being used by him not being an exact copy of the work of the plaintiff does not constitute infringement of the copyright of the plaintiff. The test to be applied by the Court, wherever infringement of copyright is alleged, is to ascertain not as to whether the work of the defendant is an exact re-production of the work of the plaintiff, but whether a person who comes across the work of the defendant would form an opinion that it was the work of the plaintiffs or not. There is no test laid down to decide as to what constitute re-production of a substantial part of the work. The test which the courts have been applying in such cases is as to effect produced on the mind of the person who has seen the work of the plaintiff and also comes across the work of the defendant. The degree of resemblance between two works must be such that it suggests an impression, in the mind of the observer, that the work of the defendant is, in fact, the work of the plaintiff. The courts, therefore, are required to apply the test called the "lay observe test" and find out whether the object of the defendant appears to be the object of the plaintiff.
11. A comparison of the packaging being used by the defendant which is Ex.PW-1/19 with the packaging being used by the plaintiffs would show that there are a number of striking similarities; firstly, there is a golden ring around the mug in the device being used by the plaintiff as well as in the device being used by the defendant; secondly, the red colour being used in the two devices as well as in the device of the defendant and; lastly, there is froth on the coffee in the two devices. To my mind, the device being used by the defendant is, therefore, a re-production at least of a substantial portion of the work which Mr. Wold-rudi von der Emden had created and later assigned to the plaintiffs. Since it is the plaintiff-company which have CS (Comm) No. 518 of 2022 28/41 been using the aforesaid device before the defendant started using it, the copyright of the plaintiff-company in the aforesaid work has clearly infringed by the defendant.
It would also been important to note there that the defendant has not come forward to explain why it chose to use a device which besides a red mug also has a golden line around the mug, black coffee in the mug and a froth on the coffee poured in the mug. The obvious inference, therefore, is, that the defendant by use of the impugned device wants to create confusion in the mind of the customer that the product being sold by it has some kind of an association with the plaintiff-company and, thereby encash upon the reputation which the trademark of the plaintiff-company enjoys in a large number of countries, including India.
14. In my view, mere registration under Copyright Act does not authorize the defendant to use the trademark of the plaintiff if it is found that the mark being used by him is identical or similar to the registered trademark of the plaintiff or it is proved that use of the impugned mark by him on identical goods is likely to cause confusion or create an impression of association with the registered trademark of the plaintiff. Registration under Copyright Act, in such a situation would be no defence to the charge of infringement and would not take the case out of the purview of Section 29 (1) and (2) of Trademarks Act, 1999.
Moreover, if it is shown that the use of its work by the plaintiff, even if not registered under Copyright Act, 1957, is prior in point of time. The registration obtained by the defendant would not give him a liberty to infringe the copyright of the plaintiff. Once, it is shown that the work of the plaintiff in an artistic work in which a copyright subsists in its favour in terms of Section 14 of Copyright Act, registration of a similar work by the defendant of the whole or a substantial part of the work, of the plaintiff in taking this view, I find support from the decision of this court in Kaira District Cooperative Milk v. Bharat Confectionery Works, PTC (Suppl) (1) 615 (Del). In that case, the plaintiff was using the trademark AMUL in respect of various products such as milk, butter, cheese, chocolates, etc. the defendant in that case was found marketing biscuits under the trademark AMUL. On being sued the defendant resisted on various grounds including that the products being manufactured by it were different form the products being manufactured by the plaintiff and it was the owner of copyright in lettering and design of the mark AMUL as printed style on the wrappers of the defendant was altogether difference from those of the plaintiff and there was no trade connection in the products of the two parties. The contention, however, was rejected by this court noticing that Copyright Act does not provide any procedure for opposition of a proposed registration. The court was of the view that registration obtained under Copyright Act is not any defence for the use of the registered trademark of the plaintiff.
15. For the reasons given in the preceding paragraphs, I am of the considered view that use of the impugned mark by the defendant constitutes infringement not only of the copyright, but also of the trademark of the plaintiff and consequently, the plaintiff is entitled to injunction against use of the aforesaid mark of the defendant tin any manner. ......................"
CS (Comm) No. 518 of 2022 29/41In the above said case the defendant had copied the artistic feature of the trademark/ label and amounts to infringement of copyright of the plaintiff.
Reliance was placed upon N. Ranga Rao & Sons V Anil Garg & Ors., [MANU/DE/2793/2005] and Parle Products (P) Ltd v. J.P. & Co. Mysore, [MANU/SC/0412/1972] , wherein interalia it was observed that:
" The overall visual impression from the colour scheme, the arrangement of the mark, the style of writing of the mark, the general get-up and trade dress leads to the conclusion that there is a clear attempt on the part of the defendants to pass off their goods as that of the plaintiff and, thus, the test laid in Parle Products (P) Ltd.'s case (supra) is clearly satisfied. The ingredients of a passing off action have been very succinctly set out in Yves St Laurent Parfums's case (supra), which sets out that a misrepresentation need not to be crass, but may involve a complex mechanism of misrepresentation. Thus, the representation may operate in a number of ways, no single one of which may be compelling but a combination of which is effective. This is the position in the present case. One only needs to look at two products side by side to see the striking similarity in various combination of factors. It is the overall impression that a customer gets to the source and origin of the goods from visual impression of colour combination, packaging and the get-up, which is of relevance and if an unwary and gullible customer gets confused, it amounts to a passing off as set out in Colgate Palmolive Co. Ltd.'s case (supra). No doubt, there is no monopoly in colour combinations, but what is relevant in the present case is that there is substantial reproduction of the colour combination in a similar pattern in each packet and there are similar six series of packets. The defendants being the second comers owed a duty to name and dress their product in such a manner as to avoid all likelihood of consumers confusing it with the product of the first comer ".
(g) That, in several other judgments by the different High Courts, it was held that the acumen of prudent man is not required to devise the difference of the rival marks/label but the similarity is to be seen from the man of average intelligence and imperfect recollection. Reliance was placed upon following:
Saboo Sodium Chloro Ltd. V Shree Sodium Chloro Pvt. Ltd., [MANU/DE/3002/2005] :CS (Comm) No. 518 of 2022 30/41
"8. A comparison of the two labels shows that both the labels are almost identical with only very minor insignificant difference. Thus, there can be no doubt, on comparison of the two labels that the defendant is seeking to pass off its goods as that of the plaintiff as the plaintiff is a prior user. It happens that defendant have obtained a copyright registration which is alleged to have been obtained by making incorrect statement, contrary to the application filed by the defendant in the Trademark Office and without informing about the plaintiff's application 'TOTA' with the device pending........"
Mohan Meakin Ltd. V A.B. Sugars Ltd., [MANU/DE/3629/2013]: :
"21.......I find a very close phonetic similarity between "OLD MONK" and "TOLD MOM". Those in the know of English language in India are unlikely to pronounce "MONK" as "MANK" as has been contended by the counsel for the defendant. If "MONK" is pronounced as "MONK" only, the possibility of "TOLD MOM" being confused for "OLD MONK" is found to be of a high possibility. The addition of "T" and replacement of "NK" with "M" does not make much of a difference since no stress is placed on the syllables "T" and "NK" in the words "TOLD" and "MONK" respectively while pronouncing the same."
FMI Ltd. V Ashok Jain & Ors., [MANU/DE/0707/2013]:
"12..........I find that the defendant's trademark FREEDOM is deceptively similar to that of the Plaintiff's trademark FREEMANS......... Both the trademarks also have an inherently distinct connotation i.e, the trademark has no relation with the product being sold. In addition, it should be kept in mind that while deciding cases such as the present suit, the Court should view the two trademarks from the eyes of persons with imperfect recollection."
39. Ld. Counsel for defendant submitted that the present suit filed by the plaintiff is merely an exercise of attempting to gain unfair advantage and monopoly in the market by stifling out any competition whatsoever. Trademark of defendant is registered trademark bearing application number 4632060 and 4139793 with the trademark registry, as per the required rules and regulations of obtaining and registering a trademark. No action for infringement lies against a registered proprietor of trademark by another proprietor and he has the unhindered non-exclusive right to usage of such trademark since 6th April 2019 i.e. the date when the CS (Comm) No. 518 of 2022 31/41 trademark application was filed by the defendant. Registration of said mark was granted on 11th of October 2019 which had neither been challenged nor subject to rectification proceedings till 3rd of December 2021. Plaintiff has blatantly misrepresented the date of its knowledge about the mark and business of defendant as June 2022, whereas rectification was already filed in the month of December 2021. Ld. Counsel for defendant further submitted that even otherwise after the ex-parte injunction granted by this court, defendant has stopped user of the brand ARWIN.
40. It may be noted that by taking the plea of registered proprietor of an impugned trademark, defendant cannot claim that there exists no infringement of trademark and ' passing off ' the goods of the plaintiff. Reliance is placed upon Dhani Aggarwal Vs. Mahesh Yadav & Ors. 2023 (93) PTC 575 (Del) 41 wherein it was observed that:
" 41. In S. Syad Mohi Deen, which has been relied upon by the Learned Senior Counsel for the respondents, it has been held that the rights of prior user are superior to that of registration and are unaffected by the registration rights under the Act. Registration merely recognizes the rights which are pre-existing in common law and does not create any rights and in case of conflict between the two registered proprietors, the evaluation of the better rights in common law is essential as the common law rights would enable the court to determine whose rights between the two registered proprietors are better and superior in common law which have been recognized in the form of the registration by the Act. Applying the said principle, the appellant being the prior adopter of the mark certainly has a superior right over the respondents in the said mark and is entitled to protection of the same notwithstanding the registration obtained by the respondents".
41. Plaintiff, in the instant matter, is registered trademark holder for trademark ADWIN/ADWIN Label vide different trademark certificates for different classes, as detailed in plaint. Plaintiff company is engaged in manufacturing, marketing, selling and exporting different kinds of batteries and many other related CS (Comm) No. 518 of 2022 32/41 products under the trademark/label ADWIN since 2010. Defendant's trademark ARWIN is also registered in the name of defendant since 2019. Plaintiff got to know about the registered trademark ARWIN of defendant in 2021-2022 as claimed by plaintiff. Rectification application was filed before the Registrar of Trademarks Act after the plaintiff came across the impugned goods of the defendant under the impugned trademark /label ARWIN .
42. After filing of the case, Local Commissioner was appointed. In terms of report of LC, number of batteries showing confusing/deceptively trademark/label ' ADWIN' AND ' ARWIN' were seized from the premises of defendant after the search and the photographs of infringing articles were also taken. It was mentioned in the report that:
" The LC noticed the front wall in the office of the defendant, decorated with trophies, Awards, Framed Certificates and Photograph of the defendant which was honoured by Unique Energos Pvt. Ltd/Plaintiff company to defendant were at the show rack, made us in confusion about the trademark/label whether it was ARWIN OR ADWIN.......
.....One big store room covered from all corners was equipped with number of batteries showing confusion/deceptively trademark/label ' ADWIN' and ' ARWIN'. There was also a Big Poster pasted on South Wall, showing confusing, deceptively similar trademark/label whether trademark/label ' ADWIN' and 'ARWIN'. Thereafter LC found that the poster was trademark label/ADWIN and there was huge stock of trademark/label ADWIN and ARWIN batteries. That the trademark created by the defendant ARWIN was almost similar and look-alike of an already existence trademark of plaintiff i.e. ADWIN in order to deceive and create confusion and possibility of creating confusion among customers. All batteries in fact were deceptively similar to the product of the plaintiff.
.........
The LC opened the computer/system of the defendant in the computer room with the help of defendant's staff, it was found that there was transaction of defendant company/Konark Enterprises (2021-2022) with plaintiff company/ADWIN Enterprises regarding number of batteries for the period 1st April to 19.09.2022. However, the LC could not find any data of any transaction in the trademark/label ARWIN which raised serious doubt that employees of defendant who were present in the computer room would have cleared the data before our access to their system".CS (Comm) No. 518 of 2022 33/41
43. The photographs of trophies and certificates captured in the office of defendant, photographs of poster of trademark/label ADWIN and Batteries of trademark label/ADWIN captured in store room of defendant as well as photographs of captured data showing transaction of ADWIN Batteries on computer/system of defendant were also filed alongwith the report and it was specifically mentioned that:
"During the search, LC also found details of other companies in available documents i.e. various bills, invoices and warranty cards of trademark/label ARWIN that defendant's company has various transaction with number of companies which clearly showed that defendant is running his present business at other premises or there is involvement/association of various companies with the defendant's company. However, defendant denied having other company premises without any explanation, which also raised serious doubt on the version of the defendant".
44. It is also borne out from the record that the plaintiff is prior user of the word ADWIN. It is also not disputed on record that the defendant is manufacturing/selling similar product i.e. batteries with user of the word ARWIN which is deceptively similar to the trademark/label of plaintiff. As already noted " to sell merchandise or carry on business under such a name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong, actionable at the suit of that other person. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders". " The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff". " A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the CS (Comm) No. 518 of 2022 34/41 business of one who has the property in that name. The law does not permit anyone to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith". Case of plaintiff squarely falls in above noted criteria . There is no answer from the side of the defendant as to why it used this deceptively similar trademark/label when the same was already in the market having already earned goodwill. More so, when defendant had been selling the goods of the plaintiff and was well aware of the product and reputation of the plaintiff in the market. The obvious reason in these circumstances can be to encash the goodwill/name earned by the plaintiff.
45. Hence, it can be concluded that defendant has knowingly, intentionally and dishonestly infringed the impugned trademark/label of plaintiff; passed off its goods and business as that of the plaintiff; infringed the plaintiff's trademark and copyright by using, publishing, copying the deceptively similar name/label . Defendant apparently is guilty of falsification and unfair trade practices. The mis-conduct of the defendant is in complete violation of plaintiff's statutory and common law rights and amounts to infringement of the registered trademark/label and copyright of the plaintiff as well as defendant is guilty of passing off its goods as that of plaintiff. Therefore, plaintiff deserves permanent injunction in its favour. Issues no.1, 2 & 3 stand decided in favour of plaintiff and against the defendant
46. Issues no. 4 and 5: Local Commissioner was appointed in the matter and in terms of report of LC, number of batteries showing confusing/deceptively trademark/label ' ADWIN' AND ' CS (Comm) No. 518 of 2022 35/41 ARWIN' were seized from the premises of defendant after the search. In terms of report of LC, all the articles seized from the premises of defendant were kept in one cardboard box, sealed with the tape except the batteries and were kept in the defendant's premises. LC further issued superdarinama in name of defendant with consent of both the parties. Accordingly, directions are passed against defendant for delivery up of all the impugned finished and unfinished material of defendant bearing the trademark/label 'ADWIN' and 'ARWIN' including any other trademark/label identical with and deceptively similar to it including blocks and labels, display boards, sign boards, trade literature, advertisement material etc. to the plaintiff for purpose of destruction/eraser.
47. Ld. counsel for plaintiff submitted that:
" Plaintiff has prayed for rendition of accounts and in the alternative, damages. In trademark cases the exact damages cannot be calculated unless accounts have been rendered by the defendant . It is submitted that plaintiff has tentatively calculated the damages to the tune of Rs. 3,05,000/-, however, in view of goods seized during the execution of commission, it can be said that the defendant has illegally earned lacs of rupees by their impugned activities. The courts are very much strict in the infringement of intellectual property is concerned" .
48. As regards rendition of accounts of profits earned by the defendant, except for one invoice Ex. PW1/33 in sum of Rs. 2800/-, no other document/material has been placed on record by the plaintiff to assess the sale of impugned goods by defendant. Defendant itself also did not render any statement of account to assess the profits. Hence, no order in this respect is passed.
CS (Comm) No. 518 of 2022 36/4149. With regard to damages, Ld. Counsel for the plaintiff further submitted that the underlying principle between 'compensatory damages' and 'punitive damages' has been dealt in various cases by the Hon'ble courts and both punitive and compensatory damages have been granted. It was submitted that generally, the court passes 'compensatory damages' in cases, where the plaintiff has suffered damages on account of the infringing activities of the defendant and compensatory damages are granted to compensate the loss suffered by the plaintiff, whereas the 'punitive damages' is granted to deter a wrong doer from indulging in unlawful activities.
50. The term 'damages' can be taken to be a pecuniary compensation which may be recovered in the courts by any non- breaching party which has suffered loss, detriment, or injury, whether to his person, property, or rights due to the unlawful act or omission or negligence on behalf of another party. The jurisprudence developed on this subject defines three types of damages in IPR regime. They are nominal damages; real damages and extraordinary or punitive damages. Nominal damages are in fact to recognize that the defendant has infringed the plaintiff's rights. They are only token and have nothing to do with the actual damages that the plaintiff might have suffered. To maintain a claim to such damages, the plaintiff has to clear the litmus test of proving his entitlement for injunction.
51. Real damages are the actual damages suffered by the plaintiff on account of the wrongful acts of the defendant. These are basically meant to set back the clock i.e. to restore the plaintiff in nearly the same situation that existed prior to the commission of wrongful act on the part of the defendant. This is CS (Comm) No. 518 of 2022 37/41 easier said than done. In fact, there is no 'rule of thumb' or straight jacket formula to ascertain the exact amount of damages. This requires a scrutiny of balance sheet, book of accounts or host of other exercise to find out. This may require a peep into 'accounts of profit or profit of accounts'. Still such damages may not be ascertainable with a scientific precision or mathematical exactitude.
52. Punitive damages or exemplary damages, are the damages assessed in order to punish the defendant for outrageous conduct or to deter the defendant (and for that matter others too) from engaging in similar obnoxious conduct. For entitlement to these damages, the record must show that the conduct of the defendant was dishonest; intention of the defendant was malafide to take the piggy bank right upon the plaintiff's intellectual property rights and that there is nothing to show that defendant had a reasonable or sufficient cause for doing the wrongful act.
53. Considerable jurisprudence has developed in the recent past to burden the infringers with punitive damages apart from actual damages. Hon'ble High Court of Delhi in Koninklijke Philips N.V. & Anr. Vs. Amazestore and a connected matter decided on 22.04.2019 in CS (Comm) 737 of 2016 has laid down some of the principles which a Court ought to look into while granting punitive damages. While awarding compensatory damages as claimed by the plaintiff's, the Court awarded aggravate/exemplary damages of a total of Rs 1 Crore over and above the compensatory damages on account of the degree of malafide conduct of the defendants. Hon'ble High Court has also laid down the rule of thumb that should be followed while granting damages, which can be summarized in a chart as under.
CS (Comm) No. 518 of 2022 38/41Hon'ble Court has also clarified that the following chart is only illustrative and is not to be read as a statutory provision. It was observed that the Courts are free to deviate from the same for good reason.
No. Degree of malafide conduct Proportionate award
1. First-time innocent infringer Injunction
2. First-time knowing infringer Injunction + Partial Costs
3. Repeated knowing infringer which Injunction + Costs + causes minor impact t the plaintiff Partial damages
4. Repeated knowing infringer which Injunction + Costs + causes a major impact to the plaintiff Compensatory damages
5. Infringement which was deliberate Injunction + Costs + and calculated (Gangster/scam/ Aggravated damages mafia) + wilful contempt of court (Compensatory + additional damages)
54. From the material placed on record by the plaintiff and in the light of the factual and legal submissions as discussed above, with regard to defendant having taken undue advantage of the trademark, goodwill and popularity of the plaintiff and unjustly enriching itself at the plaintiff's cost and expense, invites the imposition of damages. It is also axiomatic that the defendant is also causing loss and damage to the gullible customers and in turn putting the reputation and goodwill of the plaintiff at stake. There is every likelihood that the customer would be mis-guided with user of the trademark by defendant as the services being provided by plaintiff which would result in the dilution of the goodwill of the plaintiff. Such acts and omissions of defendant, would cause serious injury to the valuable rights of the plaintiff CS (Comm) No. 518 of 2022 39/41 and would cause incalculable loss to it, without any fault on its part.
55. It has been established on record that defendant has infringed the impugned trademark of plaintiff; passed off its goods as that of the plaintiff; infringed the plaintiff's copyright in the said Trademark by adopting the deceptively similar trademark. Suffice it is, if the trademark/label of defendant is likely to cause confusion in mind of general public. Plaintiff, therefore, is entitled for damages from defendant. Further, Local Commissioner was appointed and fees of Rs. 1,00,000/- was incurred by plaintiff towards fees of Local Commissioner, Present suit was filed on 06.09.2022 and total number of about 41 hearings have taken place in the matter. As regards claim of damages, this court is convinced that this is not a case of innocent adoption and defendant's conduct invites the award of damages. Taking a reasonable assessment of the nature of infringement indulged into by defendant, in the opinion of the court, plaintiff is entitled to damages. Accordingly, plaintiff is awarded aggregated sum of Rs. 5,00,000/- (Rs. Five lacs only) as damages, Local commissioner Fees, Other expenses and litigation cost.
56. Relief (Issue no.6) :- Instant suit is accordingly decreed in favour of the plaintiff and against the defendant, thereby :
(1) Defendant is restrained by itself as also through its partners, agents, franchise(s) representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on its behalf, from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trademark/label namely 'ARWIN' or ' ADWIN' including colour scheme, font style, placement of words etc. or any other variant of CS (Comm) No. 518 of 2022 40/41 the Plaintiff's trademark/label which may be identical with and/or deceptively similar to the plaintiff's trademark/label namely 'ADWIN' in relation to impugned goods and business.
(2) Defendant is further restrained by itself as also through its partners, agents, franchise(s) representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on its behalf from passing off its goods under the trademark/label 'ARWIN' or ' ADWIN', by using the same or any other deceptively similar work or mark as part of defendant's trade name or corporate name or trade mark in any manner.
(3) Directions are passed against defendant for delivery up of all the impugned finished and unfinished material of defendant bearing the trademark/label 'ADWIN' and 'ARWIN' including any other trademark/label identical with and deceptively similar to it including blocks and labels, display boards, sign boards, trade literature, advertisement material etc. to the plaintiff for purpose of destruction/eraser.
(4) Defendant is further directed to pay an amount of Rs.
5,00,000/- to the plaintiff towards damages, Local commissioner Fees, Other expenses and litigation cost. If the payment towards decreetal amount is not cleared within one month, thereafter decreetal amount shall be payable alongwith interest at 9% p.a. till realization.
57. Decree sheet be prepared accordingly. After completion of formalities, files be consigned to record room.
savita Digitally signed by
savita rao
rao Date: 2025.11.12
15:45:05 +0530
Announced in the open (SAVITA RAO)
court on 12.11.2025 DISTRICT JUDGE
(COMMERCIAL COURT)-01
SOUTH, SAKET COURTS, DELHI
CS (Comm) No. 518 of 2022 41/41