Delhi District Court
Rspl Health Private Limited vs Stepway International on 20 December, 2025
IN THE COURT OF MS SAVITA RAO, DISTRICT JUDGE
COMMERCIAL COURT-01, SOUTH ,
SAKET COURTS, DELHI
CS (COMM) No. 114/2024
DLST010019362024
In the matter of :
M/s RSPL Health Private Limited
119-121 (Part) Block P & T
Fazalganj, Kalpi Road
Kanpur - 208012 (U.P.)
Corporate Office at :
3rd Floor, C-1,2 and 3
Netaji Subhash Place
Wazirpur District Center
Pitampura, New Delhi - 110034
........PLAINTIFF
Vs.
M/s Stepway International
2nd Floor, H. No. 36, Mohalla no. 15
Jalandhar Cantt. , Jalandhar, Punjab
......DEFENDANT
Date of Institution : 05.03.2024
Date of Arguments: 08.12.2025
Date of Judgment : 20.12.2025
JUDGMENT
1. Instant suit has been filed by plaintiff under section 134 , 135, 29 & 27 of Trade Marks Act for Permanent Injunction 1/21 CS (Comm) No. : 114/2024 Restraining Infringement of Trademarks, Passing Off, Delivery Up and Rendition of Accounts etc. against the defendant on the facts that:
(a) Plaintiff Company is part of RSPL Group of companies, which is the proprietor of various well known trademarks such as GHARI/GHADI Label, XPERT, VENUS, PRO-EASE, RED CHIEF, NAMASTE INDIA etc. in the field of cosmetics, FMGC, Footwear, Wind Energy, Real Estate, Dairy Products etc. Plaintiff, through its predecessors originally conceived, coined and adopted the trade mark/label XPERT in the year 1993 in relation to dish-wash liquid, powder and bars, cleaning preparations, washing soaps, washing powder, detergent cakes, toiletries, bleaching preparations and substances for laundry use, cleaning, polishing, scouring abrasive preparations, etc and allied and cognate goods. The plaintiff intends to reasonably extend and expand its activities under the said trade mark/ label to other specification of goods, in view of the extensive recognition, goodwill and reputation of the said trade mark which has been earned through constant attention towards impeccable quality and standards, and extensive promotions, advertisements and sale. Plaintiff , as stated, acquired the said trade mark with goodwill from its predecessors, details of which are given in the plaint.
(b) Plaintiff is the owner and proprietor of the trade mark and copyright of XPERT and/or XPERT LABEL. Said trade mark XPERT and/or XPERT LABEL is being used word per se, with different prefixes and/or suffixes as well as in artistic label form in composite label/ trade dress formats either CS (Comm) No. : 114/2024 2/21 individually or in combination with each other. These trade dress formats serve trade mark functions for the Plaintiff and are trademarks of the Plaintiff. Plaintiff has been using the said trademark/ label since the year of adoption up to present time continuously, uninterruptedly, as an exclusive proprietor and owner. The plaintiff is prior and senior adopter of the said trade mark/label in relation to said goods and business. Details of plaintiff's trademark registrations for the trademark XPERT under the Trade Marks Act, 1999 are also given in the plaint in tabular format and it is stated that the said list is not the exhaustive list of registrations of subject matter trademark/label. Several applications for registration of subject matter trademark/label are pending at different stages and the registration thereof shall be granted after following due procedure.
(c) Plaintiff represents its said trade mark/label in composite label/ trade dress formats in an artistic manner including in distinct getup, lettering style, colour scheme, placement of words, artistic features etc. These trade dress formats serve trade mark functions for the Plaintiff and are trademarks of the Plaintiff. The labels bearing these marks along with other features have a unique get up, make up, color scheme, lettering style, arrangement etc. The said trade marks/ labels have been undergoing constant changes over the years, in course of trade owing to the demands of trade, aesthetics, need for constant evolution, freshness and changing consumer taste, however, the essential features thereof have been constant and the word XPERT has throughout been the material and essential part of the 3/21 CS (Comm) No. : 114/2024 said trade mark/ label of the plaintiff. The art work involved in the plaintiff's said trade mark/label are original within the meaning of the Copyright Act, 1957. The plaintiff is the owner and proprietor of the copyright involved in the said trade mark/label.
(d) Plaintiff maintains the highest standards of manufacture and trade and invests enormous amount of money and efforts on Research & Development activities. The Plaintiff's said goods are manufactured and traded under strict quality specifications of a very high order, which are scrupulously maintained. The Plaintiff has also been constantly upgrading their facilities in the light of technological advancements. Plaintiff has already built up handsome sales under their said trademark/ label and achieved sales running into crores of rupees.
(e) Plaintiff has been continuously advertising and promoting its said trade mark/label through different means and modes including through print and electronic media i.e., by way of extensive advertisements in newspapers, magazines and various prominent TV Channels etc. The plaintiff has also been advertising the said trade mark/label through various other means like hoardings, display boards, distribution of trade literature, trade novelties, etc. The plaintiff has spent substantial amount of money on the publicity of the said trade mark/label. Plaintiff entered into agreements with famous and eminent stars/actresses for promotion and advertisement of the plaintiff's said well known trade mark/label and for brand promotion. Plaintiff's said goods and business under the said trademark/label have very extensive presence even on other online market places and social CS (Comm) No. : 114/2024 4/21 media web-sites. In view of the above, nobody can be permitted to use or deal with the same/similar trademark/label 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.
(f) Defendant M/s Stepway International is engaged in the business of manufacturing and marketing of Dish wash liquid, Toilet Cleaner, Glass Cleaner, Surface and Floor cleaner and allied and cognate products. Defendant has dishonestly and malafidely adopted the word/mark RID-XPERT and label/logo as their trademark for the impugned goods and started using the same. Word XPERT is forming material and essential part of the impugned trademark of the defendant and the same is identical/deceptively similar to the said trade mark XPERT of the plaintiff. Further, placement of the impugned wordmark in wavy elliptical format in the impugned label/logo has also been copied from the plaintiff's said trademark/label XPERT. Photographs of the impugned goods bearing the impugned trademark were also filed alongwith the plaint.
(g) Impugned trademark is identical/deceptively similar to the said trade mark of the plaintiff. The imitation is in such manner that not only ordinary purchasers but also the big retailers/dealers/distributors are bound to be confused/deceived. The impugned goods under the impugned trademark are also same/similar/allied/cognate to the said goods of the plaintiff. The said goods of the plaintiff are sold at the same shops where the 5/21 CS (Comm) No. : 114/2024 impugned goods of the defendant is being sold. The same class of purchasers are involved in purchasing the goods of the plaintiff and the defendant at the grocery shops/departmental stores and e- commerce websites. Same trade channels are involved for the rival products of the parties. Because of impugned business activity of the defendant, the confusion and deception is being ensued in the market and the trade and amongst the consumers.
(h) Defendant has adopted and is using the impugned trademark in relation to impugned goods fraudulently and with sinister motives and out of positive greed with a view to take advantage and to trade upon the reputation of the said trademark of the plaintiff and further with a view to calculate deception and confusion in the markets and to pass off their impugned goods and business as that of the plaintiff. The defendant is the dishonest and malafide user of the impugned trademark/ label in relation to impugned goods and business.
(i) Defendant is not the proprietor of the impugned trademark and has adopted and is using the same without the leave and license of the Plaintiff. The defendant has no right, authority or liberty to use the impugned trademark in relation to their impugned goods and business or for any other specification of goods and business whatsoever being in violation of the Plaintiff's rights therein. Due to the defendant's impugned activities, plaintiff is suffering huge losses both in business and in reputation and such losses are incapable of being assessed in monetary terms. Unwary purchasers and trade are being deceived as to the origin of goods and business. The defendant's gains are plaintiff's losses. As stated, if the defendants are not restrained CS (Comm) No. : 114/2024 6/21 from continuing the same, plaintiff shall continue to have irreparable losses of business as well as the said act will injure the goodwill of plaintiff's trademarks.
2. In written statement filed on behalf of defendant, it was stated that the suit of the plaintiff is not maintainable as plaintiff has concealed material facts and information from the court. Defendant, as stated, had not been using the trademark Xpert nor the alleged Rid-Xpert logo/label is similar or identical to the brand logo of the plaintiff i.e. XPERT, in any manner.
3. Vide order dated 06.03.2024, ad interim ex parte injunction was granted in favour of plaintiff and the Local Commissioner was appointed with disposal of application under Order 26 Rule 9 CPC. Application under Order 39 Rules 1 & 2 CPC was disposed off vide order dated 09.12.2024 with confirmation of order dated 06.03.2024.
4. Following issues were framed:
1) Whether the plaintiff is entitled for decree of permanent injunction against defendant, as prayed for? OPP
2) Whether the plaintiff is entitled for damages as prayed for? OPP
3) Relief.
Issue-wise findings are as under:
5. Issue No. 1: Plaintiff, as claimed, is owner of various trademarks including trademark/label XPERT which was adopted by the plaintiff in year 1993. Plaintiff obtained registrations for the trademark XPERT under nos. 1270731, 2170335 and 1077473 in class 3. Copy right in the said trademark/label are also duly 7/21 CS (Comm) No. : 114/2024 registered in favour of plaintiff under numbers A-108898/2014 ; A-108871/2014 ; A-67662/2004 and A-111658/2014. Plaintiff, as stated, is the owner and proprietor of copyright involved in the said trademark/label . Plaintiff's business under the said trademark/label is global and plaintiff has built up handsome sales under the said trademark/label. Sales figures of plaintiff under the said trademark/label was brought on record in tabular format in the plaint, in terms of which, sales figures in financial year 2021-2022 was Rs. 270,13,99,785/-.
6. Plaintiff further claimed that defendant is also engaged in the same business of manufacturing and marketing of Dish wash liquid, toiler cleaner, glass cleaner, surface and floor cleaner etc. and has dishonestly and malafidely adopted the word/mark RID-XPERT and label/logo as their trademark for the impugned goods and started using the same.
7. Ld. counsel for plaintiff submitted that Word XPERT is forming material and essential part of the impugned trademark of the defendant and the same is identical/deceptively similar to the trade mark XPERT of the plaintiff. Further, placement of the impugned wordmark in wavy elliptical format in the impugned label/logo has also been copied from the plaintiff's trademark/label XPERT, which is identical/deceptively similar to the trade mark of the plaintiff. Goods of both plaintiff and defendant are being sold at the same shop and same class of purchasers are involved in purchasing the goods of the plaintiff, in which circumstances, CS (Comm) No. : 114/2024 8/21 confusion and deception is being ensued in the market and amongst the consumers. Due to the defendant's impugned activities, plaintiff, as stated, is suffering huge losses both in business and in reputation .
8. Ld. counsel for defendant submitted that defendant had not been using the trademark Xpert nor the alleged trademark ' Rid- Xpert' is identical or similar to the alleged trademark of the plaintiff. It was submitted that at the time of visit of Ld. Local Commissioner, nothing was seized or recovered from the premises of defendant. Ld. counsel for defendant further submitted that though there was no similarity between the two marks but there was no infringement of the trademark, yet defendant has stopped using the said trademark and its products are not available nor reflected on the website. Defendant, as submitted, was not even intending to use the impugned trademark. On the said submission of Ld. Counsel for defendant, considering the possibility of settlement, parties were permitted opportunity to explore the possibility of settlement, however, later on it was brought on record that matter could not be settled between the parties.
9. Contention of Ld. counsel for defendant, to the extent that no such product was found at the time of visit of LC, is found correct in terms of the LC Report. However, report of Ld. LC also mentions about presence of Sh. Vinod Kalra and Sh. Nikhil Sharma, partners of M/s Stepway International, at the said premises who themselves admitted that they were using the logo/trademark bearing Rid-Xpert. They further informed Ld. Local Commissioner that they operate from somewhere else and they had already applied for the trademark of their logo which 9/21 CS (Comm) No. : 114/2024 was under process, which probably was the reason for goods of defendant under the impugned mark not being available at the premises where LC had visited.
10. During the course of arguments, it was pointed out by Ld. counsel for plaintiff that defendant had applied for the trademark of the impugned logo wherein plaintiff had also filed objections to the proposed trademark. Same is now abandoned, as per the status report. Ld. counsel for defendant was enquired whether defendant was earlier using the impugned trademark and later discontinued, to which Ld. counsel for defendant sought time to take instructions from the defendant and inform the court but there was no response from the side of defendant on that aspect. However, Ld. Counsel for defendant later reiterated that defendant had complied with the directions and was not operating under the impugned name/mark.
11. Ld. counsel for plaintiff submitted that defendant had filed the application dated 24.09.2019 for registration of trademark which itself reflected the user since 15.12.2017. Ld. counsel for plaintiff further submitted that user of the impugned product by defendant was extracted from own website of defendant as well as defendant's presence was noticed on the e-commerce websites Flipkart, Indiamart, etc. and presence of defendant's mark was also noted on the social media. Plaintiff, as submitted, had checked Trade India.com where the impugned products were available even after passing of interim order for injunction and as reflected products were still in stock, thereby the contention of defendant, as submitted, was false that they had not been using and are not using the impugned trademark. Ld. Counsel for CS (Comm) No. : 114/2024 10/21 defendant thereafter submitted that they have checked Trade India.com and the impugned products are now not available nor reflected on the website.
12. Though, defendant as brought on record has now stopped using the impugned name, however, it had been manufacturing/selling the product which was deceptively similar to the product of the plaintiff. From the material available on record, it is evident that the similarity between the products of plaintiff and defendant was very striking and an ordinary person may not be able to identify any dis-similarity and would thereby be deceived. The trade dress of original and peculiar work, design, placement, colour pattern, layout, design and getup of the packaging of the product of defendant including use of work ' Xpert' was also very similar to that of plaintiff.
13. 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. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings; the court will have regard to the way in which the business had been carried on or may be carried on in future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in business, an injunction will be granted even if the defendant adopted the name innocently (Kerly Law of Trade Marks and Trade Names).
14. Reliance is placed upon following :
11/21CS (Comm) No. : 114/2024
(a) Devagiri Farms Pvt. Ltd. Vs. Mr. Sanjay Kapur and Anr. , FAO (OS) 274/2014, decided on 01.02.2016 " 7. Tested on the well recognized touchstone of the principle of deception, it would be apparent to the naked eye that any purchaser of tea with the usual imperfect recollection to which all humans are prone to, would be deceived when she/he comes across the tea packed by the appellant.
8. It is the overall get up and similarity which has to be seen and not the minor variations because it is similarity which strikes and not the dissimilarities which distinguish when an ordinary person recollects an object seen in the past".
(b) CS (OS) No. 3/2020, I.A. No. 21/2010 titled as The Timken Company Vs. Timken Services Pvt. Ltd.
" Defendant has also copied the plaintiff's art work, font and orange colour which prima facie amounts to infringement of plaintiff's copyright . There is an uncanny degree of similarity between the plaintiff and defendant's copyright, colour scheme , get up, font and artwork. This would only mean that one of the parties has copied from the other and it has never been the case of the defendant that the plaintiff has copied from them. The plaintiff's copyright has been in continuous and prior use".
(c) 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" .
(d) Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65 " an injunction has to be granted where there is probability of confusion even though the defendant adopted the name innocently. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belong to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, 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 CS (Comm) No. : 114/2024 12/21 diverting the customers and clients of someone else to himself and thereby resulting in injury" .
(e) Punjab Tractors Ltd. v. Pramod Kumar Garg, 85 (2000) DLT 567, " the criteria for determining what is likely to deceive or cause confusion is whether the trade mark by its resemblance to another trade mark already on the register is likely to deceive in the normal course of its legitimate use in the trade and that the goods are such that by virtue of some similarly, affinity or other circumstances the purchasing public will consider them as coming from the same source if marketed under similar trade marks. The approach has to be from a business and commercial point of view and the test of sameness and description should be a business and practical test. In judging the nature and composition of the goods, their respective usages and functions and the trade channels through which they are bought and sold are to be taken notice of" .
(f) Vardhman Properties Ltd. v. Vardhman Devlopers and Infrastructures, 166 (2010) DLT 782, " the plaintiff, a real estate developer, was registered proprietor of the trade mark of 'Vardhman' and the defendant adopted the same for business of booking flats and real estate consultancy. This Court held that acquiescence prima facie does not arise in such situation where there is nothing showing the plaintiff's action, over or otherwise encouraging defendant to continue using the mark. The Court held that once a prima facie case in infringement actions is established, the Courts ordinarily should not withhold relief. The Court restrained the defendant from using the plaintiff's trade mark.
(g) Marvel Tea Estate India Ltd. v. P.M. Batra (Prop) M/s Gurukripa Traders, 2012 (49) PTC 82 (Del.), " in order to prove the case for infringement of trade mark, the plaintiff has to show that the essential features of the registered trade mark which has been adopted by the defendant, has been taken out from the plaintiff's registration. Only the marks are to be compared by the Court and in case the registration is granted in favour of the plaintiff, he acquires valuable right by reason of the said registration".
(h) Himalaya Drug Company v. SBL Limited, 2013 (53) PTC 1 (Del.)(DB), " the rival marks are to be compared as a whole. Where two marks are identical, it is not necessary for the plaintiff to prove further that the use of defendant's mark is likely to deceive or cause confusion as the registration shows the title of the registered proprietor and the things speaks for themselves. If the Court finds that the defendant's mark is closely, 13/21 CS (Comm) No. : 114/2024 visually and phonetically similar then no further proof is necessary. It is not necessary for the plaintiff to adduce evidence of actual deception in order to prove the case of infringement".
15. The term passing off refers to the infringement of trade mark done in such a way that the mark is not only deceptively similar to the trade mark of that other concern but is also capable of creating or is creating confusion for the customers which ultimately results in damage of business of the plaintiff concern. The fundamental principal behind the term passing off is that man cannot sell his goods under the pretence that they are goods of another person. Reliance is placed upon following authorities:
(a) S. Saiyed Meinuddin Vs. P. Sulochna Bai " passing off right is wider remedy than that of infringement. This is because the passing off doctorine operates on the general principal that no person should sell his business as the business of another person. A person may sell his goods or services as such in case of profession under a trading name or style. With the lapse of time such business or services associated with the person acquire reputation or goodwill/which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the 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".
(b) CS (OS) No. 3/2020, I.A. No. 21/2010 titled as The Timken Company Vs. Timken Services Pvt. Ltd.
" The plaintiff has also made out a case of passing off as the use of the trade mark ' Timken' in similar art work, font and colour as that of plaintiff is likely to create confusion in the minds of the users as if the products/services for the defendant have belonged to the plaintiff. The use of mark ' Timken' by the defendant is calculated to mislead and deceive its customers into believing that its products originate from the plaintiff. The object of adopting the trade name or deceptively similar name of another person is to trade upon and derive the financial benefit from the reputation and goodwill of that person. As a consequence the business or the goodwill of the other person suffers damage in terms of financial as well as reputation. That is why the remedy against passing off action is independent of the infringement action arising from the violation of the statutory right to a trade mark" .CS (Comm) No. : 114/2024 14/21
(c) Laxmikant V. Patel v. Chetanbhai Shah (supra) " ....... it is well settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence, though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. The Supreme Court further held that the plaintiff does not have to prove actual damage in order to succeed in an action for passing -off. Likelihood of damage is sufficient. The defendant's state of mind is wholly irrelevant to the existence of the cause of action for passing-off".
16. It is borne out from the record that the plaintiff is prior user of the trademark/label " XPERT". It is also not disputed on record that the defendant was manufacturing/selling similar product i.e. dishwash liquid, toiler cleaner, surface and floor cleaner etc. 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 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".
15/21CS (Comm) No. : 114/2024
17. 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 trade name/label/trade dress/packing when the same was already in the market having already earned goodwill. Hence, it can be concluded that defendant has knowingly and intentionally infringed the impugned trademark/label/logo/trade dress of plaintiff; passed off its goods and business as that of the plaintiff and infringed the plaintiff's trademark. Suffice it is, if the trademark/label/logo of defendant is likely to cause confusion in mind of general public. Considering that defendant has stopped its operations under the impugned trade mark, however, to protect the rights of the plaintiff in future, plaintiff deserves grant of permanent injunction in its favour.
Issue no.1 is decided in favour of plaintiff and against the defendant.
18. Issue no. 2 : Ld. counsel for defendant submitted that during the visit of Ld. Local Commissioner, nothing was found at the premises of defendant . Earlier thereto also, there was not much of user by the defendant, therefore, no case is made out for award of any damages to the plaintiff.
19. Ld. Counsel for plaintiff referred to the trademark application of defendant wherein the user had been claimed since year 2017. It was submitted that even if now there is no user by the defendant, it cannot claim the non user, contrary to its own submission before trademark registry with regard to user claim since year 2017.
20. Ld. Counsel for the plaintiff further submitted that the underlying principle between 'compensatory damages' and 'punitive CS (Comm) No. : 114/2024 16/21 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.
21. 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.
22. 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 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 17/21 CS (Comm) No. : 114/2024 accounts'. Still such damages may not be ascertainable with a scientific precision or mathematical exactitude.
23. 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.
24. As brought on record, 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. Hon'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.
CS (Comm) No. : 114/2024 18/21No. 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)
25. From the material placed on record by the plaintiff and in the light of the factual and legal submissions as discussed above, there is substantial force in the contention of Ld. Counsel for plaintiff that the defendant has taken advantage of the trademark, goodwill and popularity of the plaintiff and has enriched itself at the plaintiff's cost and expenses. There was every likelihood that the customer might have been mis-guided with user of the trademark by defendant and the services being provided by plaintiff might have resulted in the dilution of the goodwill of the plaintiff, though no such figures are available on record. Nevertheless, it is also not the case for award of Punitive damages or exemplary damages to punish the defendant for outrageous conduct or to deter the defendant from engaging in similar conduct. Although at the first instance, it was brought on record that defendant has stopped the operations under the impugned trade mark, nevertheless, by that time plaintiff had already incurred expenses for filing of the case. Local Commissioner was 19/21 CS (Comm) No. : 114/2024 appointed and fees of Rs. 1,00,000/- was incurred by plaintiff, present suit was filed on 05.03.2024 and total number of about 12 hearings have taken place in the matter. Taking a reasonable assessment of the nature of infringement indulged into by defendant, in the opinion of the court, plaintiff is entitled to nominal damages/litigation cost. Accordingly, plaintiff is awarded sum of Rs. 2,00,000/- (Rs. Two lacs only) as damages/litigation cost.
26. Relief (Issue no. 3) : The suit is decreed with cumulative amount of damages and litigation cost in sum of Rs. 2,00,000/- (Rs. Two Lacs only). If the payment towards decreetal amount is not cleared within one month, thereafter decreetal amount shall be payable alongwith interest @ 9 % p.a. till realization.
27. Further, defendant by itself as also through its individual proprietors, partners, directors, agents, representatives, distributors, assigns, heirs, successors, stockists and all others acting for and on its behalf is restrained from soliciting, networking, manufacturing, marketing. using, selling, displaying, advertising or by any other mode or manner (including through any online medium/ websites/platforms/ social media) dealing in or using the impugned word/mark RID-XPERT and label/logo Rid-Xpert or other trademark/label/logo identical with and/or deceptively similar to the plaintiff's said trademark/label XPERT in relation to its impugned goods and business of manufacturing and marketing of Dish wash liquid, Toilet Cleaner, Glass Cleaner, Surface and Floor cleaner and allied and cognate products and/ or from doing any other acts or deeds, amounting to Infringement of the plaintiff's registered CS (Comm) No. : 114/2024 20/21 Trademark/labels and Passing off its goods as that of the plaintiff .
28. Decree sheet be prepared accordingly. File be consigned to record room after completion of necessary formalities.
Digitally signed savita by savita rao Date: rao 2025.12.20 16:22:38 +0530 Announced in the open (SAVITA RAO) court on 20.12.2025 (COMMERCIAL COURT)-01 SOUTH, SAKET COURTS, DELHI 21/21 CS (Comm) No. : 114/2024