Delhi District Court
M/S Vikas Electricals India Through Its ... vs M/S Dev Enterprises Through Its ... on 29 May, 2025
IN THE COURT OF MANOJ KUMAR-I: DISTRICT JUDGE
(COMMERCIAL COURT)-5, CENTRAL DISTRICT, TIS HAZARI,
DELHI
CNR No. DLCT01-004362-2023
CS (Comm) No. 527/2023
In the matter of:
M/s Vikas Electricals (India),
Through its proprietor Mr. Vikas Gupta,
At: 2131/3, Chah Indara, Bhagirath Palace,
Delhi - 110 006. ... Plaintiff
VERSUS
1. M/s Dev Enterprises,
Through its proprietor Mr. Radhey Shyam Sharma,
At: A-12/4-D, Main Rithala Road, Budh Vihar Phase-I,
Delhi - 110 086.
Also at: D-25 B, Block-D, Begum Vihar, Begumpur,
Delhi - 110 086
2. M/s Gagan Electric Company,
Through its proprietor Mr. Tarun Kumar,
At: 2076/2, Chah Indara, Sona Bazar,
Bhagirath Palace, Delhi - 110006 ... Defendants
Date of Institution : 25.3.2023
Date of Reserving judgment : 05.5.2025
Date of pronouncement : 29.5.2025
CS (Comm) No. 527/2023 Page No. 1 of 57
For Plaintiff : Mr. Anmol Chadha, Advocate
For Defendants : Mr. Harsh Goyal, Advocate
JUDGMENT:
This is a suit under sections 134 and 135 of the Trade Marks Act, 1999 (Act 47 of 1999) for permanent injunction, rendition of accounts, delivery up etc. instituted by M/s Vikas Electricals (India) through its proprietor Vikas Gupta against M/s Dev Enterprises and M/s Gagan Electrical Company through their respective proprietors.
2. Facts, as per the plaintiff's version, are that the plaintiff is engaged in the business of sale and marketing of various goods being electrical tapes, domestic PVC tapes, industrial PVC adhesive tapes etc. and has established prominent name in respect of the said goods; that the goods of the plaintiff are being manufactured and sold under the distinctive trade mark/label/packaging/trade dress FIONA; that the plaintiff is the applicant/user of the said trade mark/label packaging/ trade dress in relation to the said business and goods by trade mark application Nos. 4308734 and 5823947; that before establishment of plaintiff, Vikas Gupta, the proprietor of the plaintiff was indulged in management of Rama Bakelite industries, a partnership firm of his father and elder brother; that the said firm is indulged in business of sale and manufacturing of various goods being switches, sockets, pin plugs, ceiling roses, holders, regulators, adopters, wires and cables, extension of cord boxes, switch plates and other electric goods under the name and CS (Comm) No. 527/2023 Page No. 2 of 57 style of FIONA since 2013 and are also registered owner of trade mark FIONA (device) by trade mark applicable No. 2585741 for the above mentioned goods; that the said registration is legal, valid and subsisting on record; that the business of Vikas Gupta's father and elder brother under the said partnership firm being a family business was thereafter carried forward by Vikas Gupta via plaintiff in the year 2017; that the plaintiff has been continuously and extensively carrying on the said business of sale and marketing of the said goods since the year 2017 under the name and style of FIONA having its registered office at 2131/3, Chah Indara, Bhagirath Palace, Delhi-110006; that in the year 2019 the plaintiff bona fidely and honestly coined and adopted the trade mark FIONA in respect of its goods being electrical tape; that the plaintiff immediately started using the same in relation to the said goods and business extensively and entirely since the year 2019 continuously and without any interruption from any other third party; that the said trade mark of the plaintiff has been created and represented in a stylized and artistic format; that the plaintiff's mark has all the ingredients of an invented mark and as such is an extremely strong mark; that the plaintiff has also applied for the word mark as well as device mark for the said mark; that the plaintiff's products, that is electrical tapes, domestic PVC tapes, industrial PVC adhesive tapes, PVC tapes, etc are packed under the said trade marks/labels/packaging/trade dress FIONA in a logo/label that is FIONA; that the said logo/label is also the subject matter of registration under the Trade Marks Act, 1999 and is already registered in CS (Comm) No. 527/2023 Page No. 3 of 57 Class 09; that the plaintiff is using particular logo/label under the said trade mark having a unique design, layout, get up and color scheme; that the plaintiff claims to be the proprietor of the said trade mark/label in respect of aforementioned goods on account of its prior adoption and prior continuous user; that the plaintiff is the owner and proprietor of the said trade mark/label/packaging/trade dress FIONA/ FIONA; that the plaintiff's said trade mark/label/packaging/trade dress FIONA/ FIONA has already become distinctive and associated with the said business and goods on account of its long, continuous, extensive and exclusive user thereof, since its adoption in the year 2019; that the said goods bearing the said trade marks/labels/packaging/trade dress are highly demanded in the markets on account of standard quality; that the public at large associate the said trade marks/labels exclusively and to the exclusion of others to the plaintiff only; that on account of extensive use and quality control, the said goods under the said trade marks/labels of the plaintiff have acquired a vast reputation and goodwill among the public and the trade; that the plaintiff's goods and its business are dependent on the said trade marks/labels; that the plaintiff has effected substantial sales under the said trade marks/labels; that in the years 2012-13, 2013-14, 2014-15, 2015-16, 2016-17, 2017-18, 2018-19, 2019-20, 2020-21, 2021- 22 and 2022-23 the gross turnover of the plaintiff has been Rs.10,18,140/-, Rs.20,06,826/-, Rs.23,58,066/-, Rs.24,35,241/-, Rs.18,72,527/-, Rs.25,37,389/-, Rs.35,18,572/-, Rs.22,02,900/-, Rs.29,38,005/-, Rs.46,78,729/- and Rs.61,43,387/- respectively; that the CS (Comm) No. 527/2023 Page No. 4 of 57 plaintiff has widely advertised the said trade mark/label/packaging/trade dress FIONA/FIONA through different mediums such as advertisements in leading newspapers, trade magazines, distributions of trade literature and trade novelties etc; that the goods of the plaintiff are displayed and sold upon the well renowned website www.indiamart.com; that the plaintiff as such has already spent a substantial sum of money on the publicity of the said trade marks/labels and in consequence thereof the said trade marks/ labels enjoy solid and enduring reputation in the markets; that the plaintiff's said trade mark/label is a well-known trade mark within the meaning of section 2 (1) (zg) of the Trade Marks Act, 1999; that the plaintiff's said trade mark/label/packaging/trade dress FIONA/FIONA has become sufficiently distinctive in the trade to be capable of protection; that the plaintiff has been using the said trade mark/label/packaging/trade dress all along without any interruption or interference from any corner whatsoever; that the aforesaid business carried on by the plaintiff under its aforesaid trade mark/label/ packaging/trade dress is a very extensive one and the plaintiff's good and business bearing the said trade mark/label/packaging/trade dress has been practically distributed throughout the Republic of India; that the sale figures of the plaintiff show the enormous goodwill and sales of the plaintiff and a bare perusal thereof shows that the sale of the plaintiff run into crores and crores of rupees and also it is consistent and steep rise; that the defendants are engaged in the same business and goods as that of the plaintiff, that is manufacturer, wholesaler, distributor, retailer, etc CS (Comm) No. 527/2023 Page No. 5 of 57 of electrical tapes, domestic pvc tapes, industrial pvc adhesive tapes, pvc tapes, laminated sheets, pvc sheets included in class 17; that to the plaintiff's knowledge, the defendant No. 1 is the manufacturer and the defendant No. 2 is the distributor/wholesaler of the impugned products under the impugned trade mark/label/packaging/trade dress; that the defendants have started using the mark/label/packaging/trade dress FIONA identical/deceptively similar packaging as that of the plaintiff in relation to impugned trade mark/label/packaging/trade dress and term that includes not only the label but also its impugned constituents and impugned copyright therein in relation to his impugned goods and business; that the plaintiff's trade mark/labels and the impugned label FIONA of the defendants shows the similarity between the competing label/packaging materials; that the defendants have adopted the same artistic work/trade dress; that the literary work written on the impugned label/packaging of the defendant similarly copies with slight variations here and there; that the overall look of the competing packaging material remains same on the mind of common people and trade at large; that the impugned mark/label/packaging/trade dress is identical with and deceptively similar to the said trade mark/label/packaging/trade dress of the plaintiff; that they are identical with and/ or deceptively similar in each and every respect including visually, structurally, in its basic idea and essential features; that the defendants have substantially copies the said well-known trade mark/label with its all features and artistic work, layout design, lettering style, get up, make up, color combination and CS (Comm) No. 527/2023 Page No. 6 of 57 idea thereof; that the imitation is in exactitude of copying in such manner that not only ordinary purchaser but also the big retailers/dealers/distributors are bound to be confused/deceived; that by the impugned adoption and user, the defendants have infringed and passed off and violate the plaintiff's proprietary rights in his said label and copyright involved in the label; that the impugned goods and business of the defendants are identical to that of the plaintiff; that the impugned goods of the defendants are sold at the shop where the goods of the plaintiff bearing the said artistic work/label are being sold; that the same class of purchasers are involved in purchasing the goods of the plaintiff and the defendant at the electrical goods stores; that same trade channels are involved and because of impugned business activity of the defendants, the confusion and deception are being ensued in the market and the trade; that the defendants are commercially and in the course of trade using the impugned mark/label/packaging/trade dress as a trade mark in relation to its impugned goods and business as also reproducing the impugned trade dress therein on its cartons and boxes; that the defendants are doing so without the leave and license of the plaintiff; that the defendants are not the proprietor of the impugned label/packaging/trade dress and the defendant No.1 holds a registration over the word mark FIONA in class 17 vide TM application No. 4300677, which has been challenged by the plaintiff herein by a rectification petition bearing No. 271236 filed on 01.6.2021 as the defendant No. 1 has adopted the impugned mark/label/ packaging/trade CS (Comm) No. 527/2023 Page No. 7 of 57 dress much after the adoption by the plaintiff herein and with an ill motive to override the reputation and goodwill of the plaintiff's goods and business thereunder; that till date the defendant No. 1 has not filed any counter statement to the above said rectification petition even after expiry of almost two years; that the impugned mark/label/packaging/ trade dress is identical with and deceptively similar respectively to the plaintiff's said trade mark/label/packaging/ trade dress in each and every respect including phonetically, visually, structurally, in basic idea, in its essential features, in its placements as well as in its artistic features; that the defendant's impugned goods and business is also of the same/ similar/allied/cognate nature to the said goods and business of the plaintiff; that the modus operandi of the defendants is that the defendants manufacture, trade and sell inferior goods which are similar replica of the plaintiff's high quality goods; that to bring close intimation of their inferior goods, the defendants give to their inferior goods as close appearance as that of the plaintiff's high quality goods in terms of packaging, combination of colour, get up, design and label to extract undue profits; that the defendant to concede their infringing products as that of the plaintiff dishonestly, sell them in exactly identical carton as that of the plaintiff which make the consumers and traders very difficult to distinguish the defendants' infringing inferior products from the high quality products of the plaintiff; that by its impugned adoption and user of the impugned mark/label/packaging/trade dress, the defendants are (a) passing off and enabling others to pass off their goods and business as CS (Comm) No. 527/2023 Page No. 8 of 57 that of the plaintiff, and thus, the defendants are thereby violating the plaintiff's common law rights in the plaintiff's said trade mark/label/ packaging/ trade dress, (b) not only that, the defendants are further guilty of falsification and unfair and unethical trade practices; that the impugned adoption and user by the defendants is dishonest, tainted, mala fide and fraudulent; that furthermore the defendants adopted and started commercially using the impugned trade mark/label in respect of the impugned goods and business out of 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 calculate deception and confusion in the markets and to pass off their impugned goods and business as that of the plaintiff and to make easy money at the cost of the plaintiff; that the resemblance between the plaintiff's said trade mark/label/packaging/ trade dress and of the impugned mark/label/packaging/trade dress respectively of the defendants is so close that it can hardly occur except by deliberate imitation; that the defendants adopted and started using the impugned mark/label/packaging/trade dress in full knowledge of the plaintiff's said rights; that by its impugned adoption and user of the impugned mark/label/packaging/trade dress, the defendants are disseminating confusion and deception in the markets with the result that the spurious goods of the defendants are being passed off as the genuine goods of the plaintiff; that due to the defendants' impugned activities, the plaintiff is suffering tremendously in business and goodwill and the plaintiff's said proprietary rights are being reduced to a nullity and being CS (Comm) No. 527/2023 Page No. 9 of 57 violated; that innocent purchasers are being deceived and irreparable loss and serious mischief is being caused to the plaintiff and to the consuming public; that in the first week of June 2021, the plaintiff came across the application bearing No. 4300677 of the defendant No. 1 for the registration of the impugned mark in Class 17 on proposed to be used basis dated 23.9.2019 for the impugned goods and being aggrieved of the impugned adoption, the plaintiff filed a rectification against the said application of the defendant No. 1 through its trade mark attorney and launched roving inquires through the trade to ascertain the defendants' activities and whereabouts pertaining to the impugned mark/ label which revealed that the defendants have very recently started the impugned activity under the impugned trade mark/label; that in the second week of February 2023, the plaintiff came across the actual spurious goods (in physical form) bearing impugned mark being sold at various market places including the above-mentioned shops/work places of the defendants; that the defendants' user thereof (if any) at most would be clandestine, surreptitious, sporadic, restricted, minimal and very recent, making it very difficult to detect and very the precise nature of the defendants' activities. It is further averred in the plaint that due to the acts of the defendants a cause of action arose in favour of the plaintiff leading upto the institution of the suit.
3. The suit is contested by the defendants by way of their joint written statement wherein preliminary objections are taken to the effect that the present suit filed by the plaintiff is the abuse of the process of CS (Comm) No. 527/2023 Page No. 10 of 57 law and as such liable to be dismissed with exemplary cost and not maintainable in the eyes of law; that the present suit for trade mark infringement/passing off is not maintainable as the same does not disclose any cause of action and deserves to be dismissed summarily; that the trade mark of the defendant No.1 FIONA is registered as per the Trade Marks Act, 1999 bearing No. 4300677 in Class 17 on 23.9.2019, hence the rigors of section 29 of the Trade Marks Act, 1999 are not attracted; that the present suit suffers from delay, laches and acquiescence; that the defendant has been carrying on his business of selling electrical tapes since 2019, and the present suit was filed in 2023; that the plaintiff has acquiesced to the use of the defendant's use of the trade mark FIONA; that the defendants have built their business over several years and has become a substantial part of his income; that the plaintiff's delay and belated action should not be allowed as it would prejudice the defendant's right to carry on business; that the plaintiff has not come before this court with clean hands and has suppressed true and material facts from this court; that the present suit is filed on the basis of the plaintiff being the prior user whereas the invoices/bills are tampered and fraudulently used in the court of law and in order to seek relief from the court; that the plaintiff's averment that they have been using the trade mark since 2017 is false and the plaintiff is relying upon false and doctored documents to aver the same. In the reply on merits the allegations made by the plaintiff against the defendants are disputed and denied and it is stated that the suit may be dismissed. In their written CS (Comm) No. 527/2023 Page No. 11 of 57 statement the defendants also stated that in the year 2019 the defendant No. 1 conceived of an arbitrary word FIONA and started selling various electrical items such as electrical tapes, domestic PVC tapes, industrial PVC adhesive tapes, PVC tapes etc under the said trade mark; that to secure their rights in the trade mark FIONA the defendant No. 1 applied for the registration of the same with the Registrar of Trade Marks and consequently secured its registration; that the products of the defendant No.1, that is electrical tapes, domestic PVC tapes, industrial PVC adhesive tapes, PVC tapes, etc are packed under the said trade marks/ labels/packaging/trade dress FIONA in a logo/label; that the defendant have been the said FIONA trade marks/labels since 2019 uninterruptedly; that the said trade mark FIONA has become distinctive among the public and has come to be associated with defendant No. 1 due to the high quality products being sold by defendant No. 1; that the defendant No. 1 is the prior registered user of the trade mark FIONA since 2019; that the claim of user of 2017 by the plaintiff is false and based on doctored documents; and that according to the provisions of section 34 of the Trade Marks Act, 1999 the defendant No.1 is the prior and legitimate owner of the trade mark FIONA.
4. No replication to the written statement of the defendants has been filed on behalf of the plaintiff.
5. On 04.11.2023, on the pleadings of the parties following issues were framed, namely:-
1. Whether plaintiff is entitled for a decree of permanent injunction CS (Comm) No. 527/2023 Page No. 12 of 57 restraining the defendants through their proprietors/partners, agents, representatives, distributors, assigns, heirs, successors, stockists, all other acting for and on their behalf etc from using the trade mark/label/packaging/trade dress FIONA or any other trade mark and logos deceptively and confusingly similar to the registered company, as prayed for? OPP
2. Whether plaintiff is entitled for a decree of permanent injunction restraining defendants etc., from passing off the goods as that of the plaintiff's goods, as prayed for? OPP
3. Whether the plaintiff is entitled for preliminary decree of rendition of accounts, as prayed for? OPP
4. Whether the plaintiff is entitled for a final decree of rendition of accounts, as prayed for?OPP
5. Whether plaintiff is entitled for delivery up of all the infringing finished and unfinished materials bearing the infringing and violative trade mark/label of the plaintiff for the purpose of destruction and erasure, as prayed for? OPP
6. Whether the plaintiff is entitled for a decree of damages from the defendant, as prayed for?OPP
7. Relief.
6. In support of its claim the plaintiff got examined PW1 Vikas Gupta, its proprietor, who during his examination-in-chief tendered his affidavit Ex.PW1/A along with documents Ex.PW1/1 (copy of GST Registration Certificate dated 16.7.2017 effective from 01.7.2017), CS (Comm) No. 527/2023 Page No. 13 of 57 Ex.PW1/2 {copy status report of the trade mark application No. 4308734 dated 30.9.2019 qua trade mark FIONA (device)} Ex.PW1/3 {copy status report of the trade mark application No. 5823947 dated 25.02.2023 qua trade mark FIONA (word)}, Ex.PW1/4 {copy of registration certificate of the trade mark application No. 2585741 dated 26.8.2013 qua trade mark FIONA (device) in the name of Rama Bakelite Industries}, Ex.PW1/5 (copies of invoice Nos. 357, 355, 384, 387 and 389 dated 30.3.2019, 27.3.2019, 11.6.2019, 17.6.2019 and 25.6.2019 respectively), Ex.PW1/6 (copies of invoice Nos. 402, 413, 417, 428 and 434 dated 05.8.2019, 10.9.2019, 21.9.2019, 01.11.2019 and 20.11.2019 respectively), Ex.PW1/7 (copies of invoice Nos. 456, 463, 465, 467, 468, 470, 473, 483 and 486 dated 30.1.2020, 06.2.2020, 19.2.2020, 29.2.2020, 29.2.2020, 02.3.2020, 13.3.2020, 18.7.2020 and 25.7.2020, respectively), Ex.PW1/8 (copies of invoice Nos. 501, 506, 514, 537 and 538 dated 17.9.2020, 08.10.2020, 31.10.2020, 28.1.2021 and 28.1.2021 respectively), Ex.PW1/9 (copies of invoice Nos. 551, 553, 574, 586 and 588 dated 19.2.2021, 22.2.2021, 23.2.2021, 15.6.2021 and 18.6.2021 respectively), Ex.PW1/10 (copies of invoice Nos. 604, 613, 631, 635 and 649 dated 19.7.2021, 06.8.2021, 13.9.2021, 30.9.2021 and 12.11.2021 respectively), Ex.PW1/11 (copies of invoice Nos. 656, 658, 669, 671, 677, 687 and 692 dated 27.11.2021, 02.12.2021, 03.1.2022, 05.1.2022, 21.1.2022, 16.2.2022 and 22.2.2022 respectively), Ex.PW1/12 (copies of invoice Nos. 723, 725, 727, 728 and 730 dated 11.4.2022, 18.4.2022, 19.4.2022, 22.4.2022 and 25.4.2022 respectively), CS (Comm) No. 527/2023 Page No. 14 of 57 Ex.PW1/13 (copies of invoice Nos. 751, 753, 755, 760, 761, 770, 774, 778, 784, 786, 795 and 797 dated 10.6.2022, 14.6.2022, 15.6.2022, 29.6.2022, 30.6.2022, 09.7.2022, 12.7.2022, 20.7.2022, 28.7.2022, 01.8.2022, 01.9.2022 and 03.9.2022 respectively), Ex.PW1/14 (copies of invoice Nos. 801, 805, 809, 820, 834, 840, 842, 845, 846, 849 and 850 dated 07.9.2022, 13.9.2022, 19.9.2022, 03.10.2022, 21.10.2022, 28.10.2022, 29.10.2022, 07.11.2022, 09.11.2022, 14.11.2022 and 16.11.2022 respectively), Ex.PW1/15 (copies of invoice Nos. 853, 856, 857 and 859 dated 21.11.2022, 02.12.2022, 02.12.2022 and 08.12.2022 respectively), Ex.PW1/16 (turnover certificate/confirmation of the plaintiff issued by its CA for the period 2012 upto December 2022), Ex.PW1/17 (colly) (photographs of advertisement and screen shots of website www.indiamart.com), Ex.PW1/18 (colly) (emails and WhatsApp chat claimed to have shared between plaintiff and M/s Priya Electricals), Ex.PW1/19 (GST certificate of the defendant No. 1), Ex.PW1/20 (colly) (photographs of plaintiff's goods packaging), Ex.PW1/21 (status report of trade mark application No. 4300677 of the defendant No. 1), Ex.PW1/22 (pen drive containing photographs and videos pertaining to sale of impugned by the defendants at their work place/site recorded by plaintiff), Ex.PW1/23 (GST certificate of the defendant No. 2), Ex.PW1/24 (colly) (photographs of defendants' goods packaging) and Ex.PW1/B (affidavit under Order XI Rule 6 of Commercial Courts Act, 2015 and section 65B of Indian Evidence Act). PW1 Vikas Gupta was cross-examined by counsel for the defendants and thereafter, evidence CS (Comm) No. 527/2023 Page No. 15 of 57 on behalf of the plaintiff was closed.
7. In their defence, the defendants got examined DW1 Radhey Shyam Sharma, the proprietor of the defendant No. 1, who during his examination-in-chief tendered his affidavit Ex.DW1/A along with documents Ex.DW1/1 {copy of registration certificate of the trade mark application No. 4300677 dated 23.9.2019 qua trade mark FIONA (word) in the name of Radhey Shyam Sharma, proprietor M/s Dev Enterprises}, Ex.DW1/2 (copy of tax invoice No. 53 dated 09.3.2019), Ex.DW1/3 (copy of tax invoice No. 54 dated 12.3.2019), Ex.DW1/4 (copy of tax invoice No. 55 dated 14.3.2019), Ex.DW1/5 (copy of tax invoice No. 56 dated 18.3.2019), Ex.DW1/6 (copy of tax invoice No. 244 dated 11.3.2021), Ex.DW1/7 (copy of tax invoice No. 245 dated 12.3.2021), Ex.DW1/8 (copy of tax invoice No. 246 dated 13.3.2021), Ex.DW1/9 (copy of tax invoice No. 247 dated 14.3.2021), Ex.DW1/10 (copy of tax invoice No. 248 dated 15.3.2021), Ex.DW1/11 (copy of tax invoice No. 249 dated 16.3.2021), Ex.DW1/12 (copy of tax invoice No. 250 dated 17.3.2021) and Ex.DW1/13 (copy of record from GST portal). DW1 Radhey Shyam Gupta was cross-examined by counsel for the plaintiff and thereafter, evidence on behalf of the defendant was closed.
8. I have heard counsel for the parties and have gone through the material on record carefully. I have also inspected the articles seized by the Local Commissioner after institution of the suit from the premises of the defendant No. 2. My issue wise findings are as follows:-
Re: Issue No. 1.CS (Comm) No. 527/2023 Page No. 16 of 57
9. Onus of proof qua this issue was on the plaintiff. PW1 Vikas Gupta during his examination-in-chief, by way of his affidavit Ex.PW1/A reiterated the averments made in the plaint. During his examination-in-chief PW1 Vikas Gupta, inter alia, deposed that he was the sole proprietor of the plaintiff having its office at 2131/3, Chah Indara, Bhagirath Place, Delhi. PW1 Vikas Gupta further deposed that he was engaged in the business of sale and marketing of various goods being electrical tapes, domestic PVC tapes, industrial PVC adhesive tapes, PVC tapes etc and had established a prominent name in respect of the said goods. PW1 Vikas Gupta further deposed that his said goods were being manufactured and sold under the distinctive trade mark/label/ packaging/trade dress FIONA. PW1 Vikas Gupta further deposed that he was applicant/user of the said trade mark/label/packaging/trade dress in relation to the said business and goods by trade mark application Nos. 4300677 and 5823947. PW1 Vikas Gupta further deposed that before his establishment, he was indulged in management of Rama Bakelite Industries, a partnership firm of his father and elder brother. PW1 Vikas Gupta further deposed that the said firm was indulged in business of sale and manufacturer of various goods being switches, sockets, pin plugs, ceiling roses, holders, regulators, adopters, wires and cables, extension of cord boxes, switch plates and other electric goods under the name and style of FIONA since 2013 and also were the registered owners of the trade mark FIONA (device) by trade mark application number 2585741 for the above mentioned goods. PW1 Vikas Gupta further deposed that CS (Comm) No. 527/2023 Page No. 17 of 57 by sale of goods distinctive trade mark/label/packaging/trade dress FIONA the sand by advertising the said trade mark in different modes the plaintiff has acquired a massive goodwill and reputation in respect of his business and distinctive trade mark/label/packaging/trade dress FIONA. PW1 Vikas Gupta further deposed that the defendants were engaged in the same business and goods as that of him that is manufacturer, wholesaler, distributor, retailer, etc. of electrical tapes, domestic pvc tapes, industrial pvc adhesive tapes, pvc tapes, laminated sheets, pvc sheets included in Class 17 (hereinafter referred to as the impugned goods and business). PW1 Vikas Gupta further deposed that to his knowledge the defendant No. 1 was the manufacturer and defendant No. 2 was the distributor/wholesaler of the impugned products under the impugned trade mark/label/packaging/trade dress. PW1 Vikas Gupta further deposed that the defendant started using the mark/Label/ packaging/trade dress FIONA identical/deceptively similar packaging material as that of FIONA/FIONA (hereinafter referred to as the impugned Trade mark/Label/packaging/trade dress and term that includes not only the label but also its impugned constituents copyright therein) in relation to his impugned goods and business. PW1 Vikas Gupta further deposed that his trade mark/labels and the impugned label FIONA of the defendants shows the similarity between the competing label/packaging materials. PW1 Vikas Gupta further deposed that the defendant had adopted the same artistic work/trade dress. PW1 Vikas Gupta further deposed that the literary work written on the impugned CS (Comm) No. 527/2023 Page No. 18 of 57 label/packaging of the defendant similarly copied with slight variations here and there. PW1 Vikas Gupta further deposed that the overall look of the competing packaging material remains same on the mind of common people and trade at large. PW1 Vikas Gupta further deposed that the impugned mark/label/packaging/trade dress was identical with and deceptively similar to the said trade mark/label/packaging/trade dress of him. PW1 Vikas Gupta further deposed that in the second week of February 2023, he came across the actual spurious goods (in physical form) bearing impugned mark being sold at various market places including the above-mentioned shops/work places of the defendants. PW1 Vikas Gupta further deposed that the defendants' user thereof (if any) at most would be clandestine, surreptitious, sporadic, restricted, minimal and very recent, making it very difficult to detect and very the precise nature of the defendants' activities.
10. During his cross-examination PW1 Vikas Gupta deposed that he was 12th passed, and did not complete his graduation. During his cross-examination PW1 Vikas Gupta further deposed that he had started working with his father since 2002. During his cross-examination PW1 Vikas Gupta further deposed that he was well conversant with the facts of the case and his affidavit in evidence had been drafted by his counsel on his instructions. During his cross-examination PW1 Vikas Gupta affirmed that he had been using trade mark 'Fiona' since 2013; and voluntarily stated that he had been using trademark under Class 9 with same font and style as in class 17. During his cross-examination PW1 CS (Comm) No. 527/2023 Page No. 19 of 57 Vikas Gupta deposed that his father and brother were using trademark 'Fiona' since 2013; and voluntarily stated that they were living in a joint family. During his cross-examination PW1 Vikas Gupta deposed that they used to sell switches, sockets, plugs, three pin top, pendant holder, multi holder, baton holder, indicator, fuse, full domestic range as they use in boards. During his cross-examination PW1 Vikas Gupta deposed that he had not placed on record any bill pertaining to year 2013. During his cross-examination PW1 Vikas Gupta further deposed that in the year 2013, his father and brother applied for this trade mark (FIONA) in class
9. During his cross-examination PW1 Vikas Gupta affirmed that he had no particular position in M/s Rama Bakelite Industries, which was a partnership firm in which his father and brother were partners. During his cross-examination PW1 Vikas Gupta denied that he was not the owner of trademark 'Fiona' registered by M/s Rama Bakelite Industries. During his cross-examination PW1 Vikas Gupta deposed that no partnership deed was executed in his favour. During his cross- examination PW1 Vikas Gupta further deposed that he did not remember as to when M/s Vikas Electricals (INDIA) was registered. During his cross-examination PW1 Vikas Gupta affirmed that his firm got the GST registration on 01.7.2017. During his cross-examination PW1 Vikas Gupta deposed that he had not placed on record any VAT certificate in order to show his sales before 01.7.2017. During his cross-examination PW1 Vikas Gupta further deposed that electrical tape was mostly sold along with other items. During his cross-examination PW1 Vikas Gupta CS (Comm) No. 527/2023 Page No. 20 of 57 further deposed that there was no bifurcation as to how much the tapes were sold along with other items in his turnover certificate. During his cross-examination PW1 Vikas Gupta further deposed that he did not remember the exact amount of percentage of each goods sold in his turnover certificate. During his cross-examination PW1 Vikas Gupta further deposed that one box of tape containing 30 pieces under his trademark 'Fiona' was sold in Rs.120/- plus GST. During his cross- examination PW1 Vikas Gupta further deposed that he had started using trade mark 'Fiona' since March, 2019. During his cross-examination PW1 Vikas Gupta further deposed that he did not remember as to when the first bill was issued by the plaintiff firm. During his cross- examination PW1 Vikas Gupta further deposed that 99% of the time he used to prepare the bill, and in his absence, during any emergency, his ex-employee, namely, Suresh Singh used to prepare the bills. During his cross-examination PW1 Vikas Gupta further deposed that he used to prepare bills according to the goods sold by him. During his cross- examination PW1 Vikas Gupta further deposed that 99% of the time, there was no correction made in the bills after issuance of the same, whereas in his absence he used to make corrections in the bills issued by his ex-employee, if required. During his cross-examination PW1 Vikas Gupta further deposed that 99% of the time, the exact copy of the bill issued by him was provided to the customer, if no correction was required on the bills issued by his ex-employee. During his cross- examination PW1 Vikas Gupta further deposed that all his bill books CS (Comm) No. 527/2023 Page No. 21 of 57 were hand written. During his cross-examination PW1 Vikas Gupta further deposed that bill Ex.PW1/9, at page No. 160 was correct. During his cross-examination PW1 Vikas Gupta affirmed that in Ex.PW1/9, at page No. 160 the description of the goods stating trade mark and the type of goods were in two different inks and the handwriting was same. During his cross-examination PW1 Vikas Gupta deposed that the said sale was made in cash. During his cross-examination having seen document Ex.PW1/D-1 shown by counsel for the defendants from his own possession PW1 Vikas Gupta deposed that Ex.PW1/D-1 was not in his hand writing, and the did not belong to him or his firm and even the signature at point 'A' in Ex.PW-1/D-1 was not of him. During his cross- examination PW1 Vikas Gupta further deposed that GST number as mentioned in it was also not of his firm. During his cross-examination PW1 Vikas Gupta denied that he kept two bill books of same serial numbers. During his cross-examination PW1 Vikas Gupta deposed that he accepted more of online or cheque payment in his business. During his cross-examination PW1 Vikas Gupta further deposed that M/s Priya Electricals was a manufacturer for his firm since March, 2019 for his brand 'Fiona'. During his cross-examination PW1 Vikas Gupta further deposed that as per his knowledge the defendant started using trademark 'Fiona' since 2022.
11. DW1 Radhey Shyam Sharma during his examination-in- chief deposed that he was the proprietor of M/s Dev Enterprises having its registered address at D-25 B, Block-D, Begum Vihar, Begumpur, CS (Comm) No. 527/2023 Page No. 22 of 57 Delhi- 110086. DW1 Radhey Shyam Sharma further deposed that the defendant No. 2 is represented by Sh. Tarun Kumar, proprietor of M/s Gagan Electric Company who was the distributor of the Electrical tapes in the name of FIONA. DW1 Radhey Shyam Sharma further deposed that he in the year 2019 conceived of an arbitrary word "FIONA" and started selling various electricals items such as electrical tapes, domestic PVC tapes, industrial PVC adhesive tapes, PVC tapes etc under the said trade mark. DW1 Radhey Shyam Sharma further deposed that to secure their rights in the trade mark FIONA the defendant No. 1 applied for the registration of the same with the Registrar of Trade Marks and consequently secured its registration. DW1 Radhey Shyam Sharma further deposed that his products that is electrical tapes, domestic PVC tapes, industrial PVC adhesive tapes, PVC tapes, etc were packed under the said trade mark/labels/packaging/trade dress FIONA in a logo/label. DW1 Radhey Shyam Sharma further deposed that the defendant have been uninterruptedly using the said FIONA trade marks/labels since 2019. DW1 Radhey Shyam Sharma further deposed that the said trade mark FIONA has become distinctive among the public and had come to be associated with defendant No. 1 due to the high quality products being sold by defendant No.1. DW1 Radhey Shyam Sharma further deposed that he was the prior registered user of the trade mark FIONA since 2019. DW1 Radhey Shyam Sharma further deposed that the claim of user of 2017 by the plaintiff was false and based on doctored documents. DW1 Radhey Shyam Sharma further deposed that according CS (Comm) No. 527/2023 Page No. 23 of 57 to the provisions of section 34 of the Trade Marks Act, 1999, he was the prior and legitimate owner of the trade mark FIONA.
12. During his cross-examination DW1 Radhey Shyam Sharma deposed that he was the proprietor of M/s Dev Enterprises. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he was in business through his firm since last 14-15 years. During his cross- examination DW1 Radhey Shyam Sharma further deposed that affidavit Ex.DW-1/A was drafted and prepared by his counsel on his instructions at his office near Model Town. During his cross-examination DW1 Radhey Shyam Sharma further deposed that the said affidavit was attested in Tis Hazari Court but he did not remember the date and month when it was attested. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he run his office from 25-B, Block D, Begum Vihar, Begumpur, Delhi which used to meet his customers. During his cross-examination DW1 Radhey Shyam Sharma further deposed that Ms. Vaishali Sharma was his younger brother's wife. During his cross-examination DW1 Radhey Shyam Sharma further deposed that this address was also used for residential purposes by his younger brother. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he started selling goods under the trademark FIONA in the month of September, 2019. During his cross- examination DW1 Radhey Shyam Sharma further deposed that he did not remember exact month when he applied for the trade mark registration of the said mark in 2019. During his cross-examination CS (Comm) No. 527/2023 Page No. 24 of 57 DW1 Radhey Shyam Sharma again said that he started manufacturing in the month of March, 2019. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he get his packaging material manufactured by M/s Gyan Packers. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he did not remember when did he first place an order for manufacturing his packaging material. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he get the said packaging material designed by a designer but he did not remember his name. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he did not manufacture or sale any other goods except PVC/electrical tapes etc. under the trade mark FIONA. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he did not manufacture or sale any other electrical goods under the said trade mark FIONA. During his cross- examination DW1 Radhey Shyam Sharma further deposed that he did not have packaging of trade mark FIONA for electrical switch and sockets. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he did not hear about any other brand under the name and style of FIONA before he adopted the same in 2019. During his cross-examination DW1 Radhey Shyam Sharma further deposed that tax invoices Ex.DW-1/2 to Ex.DW-1/12 were issued to only one customer namely Gagan Electric Company who was defendant No. 2 in the case. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he did not have any other customer whatsoever CS (Comm) No. 527/2023 Page No. 25 of 57 except defendant No. 2 for the PVC insulation tapes under the trade mark FIONA. During his cross-examination DW1 Radhey Shyam Sharma denied that the description of goods and the brand name FIONA mentioned in the tax invoices were in different handwriting and different ink. During his cross-examination DW1 Radhey Shyam Sharma deposed that he did not have any other relation with defendant No. 2 other than being his customer. During his cross-examination DW1 Radhey Shyam Sharma further deposed that his designer shared the design of his packaging material over WhatsApp and the same was forwarded to M/s Gyan Packers over WhatsApp for printing the same. During his cross- examination DW1 Radhey Shyam Sharma further deposed that he had not placed on record any proof regarding the said WhatsApp conversation or placing of orders with Gyan Packers. During his cross- examination DW1 Radhey Shyam Sharma further deposed that he did not have idea of distance between the shops of plaintiff and defendant No. 2. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he had not raised any complaint or issued any legal notice to the plaintiff that date with respect infringement of his mark FIONA as claimed by him. During his cross-examination DW1 Radhey Shyam Sharma further deposed that Ms. Vaishali Sharma used to print bags with the trade mark FIONA for him. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he did not remember when and how did he share the design of trade mark FIONA with Ms. Vaishali Sharma for printing the above said bags. During his cross-
CS (Comm) No. 527/2023 Page No. 26 of 57examination DW1 Radhey Shyam Sharma denied that the bags and the packaging material under the said mark FIONA was copied by him after seeing plaintiff's packaging material. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he did not remember the length of PVC tapes manufactured by him under the trade mark FIONA. During his cross-examination DW1 Radhey Shyam Sharma denied that he manufactured tapes under the trade mark FIONA lesser than the market standard in length. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he sold tapes under the trade mark FIONA at market standard price. During his cross- examination DW1 Radhey Shyam Sharma further deposed that he did not remember at what price he sold PVC tapes under trade mark FIONA. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he sold PVC tapes under 2 or 3 more brands except FIONA such as Balson, Nice, Jalwa, Rudram and he was selling the same before adopting FIONA. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he used to manufacture and sell PVC tapes under the brand names Balson, Nice, Jalwa, Rudram before adopting FIONA. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he adopted the trade mark FIONA despite dealing in Balson, Nice, Jalwa, Rudram for increasing his sales. During his cross- examination DW1 Radhey Shyam Sharma further deposed that the said trade mark FIONA was outcome of his personal thought. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he CS (Comm) No. 527/2023 Page No. 27 of 57 is 8th passed. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he was well versed with the English language and able to read, write and understand the same. During his cross- examination DW1 Radhey Shyam Sharma further deposed that he did not deal in the brand name Macsun for PVC tapes. During his cross- examination DW1 Radhey Shyam Sharma further deposed that he had total sales of PVC tapes under the trade mark FIONA only amounting to 11 bills Ex.DW-1/2 to Ex.DW-1/12 and no other sale with respect to trade mark FIONA. During his cross-examination DW1 Radhey Shyam Sharma further deposed that M/s Gyan Packers had raised tax invoices with respect of printing of his packaging material to him but he had not placed any such invoice on record. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he had applied trade mark FIONA's registration on 23.9.2019. During his cross-examination DW1 Radhey Shyam Sharma denied that TM registration symbol was printed on his packaging material since the very inception. During his cross- examination DW1 Radhey Shyam Sharma further deposed that he had started using TM registration symbol on his packaging material after issuance of trade mark registration certificate Ex.DW-1/1. During his cross-examination DW1 Radhey Shyam Sharma denied that that plaintiff was prior adopter of the trade mark FIONA for PVC/electrical tapes. During his cross-examination DW1 Radhey Shyam Sharma further denied that he was aware of plaintiff's use or adoption of the trade mark FIONA at the time of applying for the same in trade mark registry.
CS (Comm) No. 527/2023 Page No. 28 of 57During his cross-examination DW1 Radhey Shyam Sharma further denied that he was aware of the use of trade mark FIONA by plaintiff's father since 2013 for the allied goods. During his cross-examination DW1 Radhey Shyam Sharma further denied that he had copied the packaging material including box and carry bag as of the plaintiff. During his cross-examination DW1 Radhey Shyam Sharma further denied that he started selling goods under the trade mark FIONA to override the goodwill and reputation of the plaintiff for the said trademark. During his cross-examination DW1 Radhey Shyam Sharma further denied that the defendant No. 2 had copied the trade mark FIONA from the plaintiff and asked him to manufacture the same for him (the defendant No. 2). During his cross-examination DW1 Radhey Shyam Sharma deposed that Ex.DW-1/2 to Ex.DW-1/12 were filed and uploaded by his firm with the GST portal and he could file the GST return. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he had brought GSTR-1 of all transactions done by the defendant No. 2 with the defendant No. 2. During his cross- examination DW1 Radhey Shyam Sharma further deposed that by 11 bills Ex.DW1/2 to Ex.DW1/12, he had sold the goods under the brand "FIONA" in his life time. During his cross-examination DW1 Radhey Shyam Sharma further deposed that he wanted to reiterate that he had sold goods under the brand name "FIONA" except those invoices. During his cross-examination DW1 Radhey Shyam Sharma further deposed that the invoices Ex.DW1/2 to EX.DW1/12 pertain to the sale CS (Comm) No. 527/2023 Page No. 29 of 57 made by him to the defendant No. 2 of PVC tapes of "FIONA" brand only.
13. From the testimony of PW1 Vikas Gupta and documents Ex.PW1/2 and Ex.PW1/3 tendered by him during his examination-in- chief it has established that he, or his proprietorship concern M/s Vikas Electricals (India) is not a registered proprietor of trade mark FIONA (word and/or device). As per documents Ex.PW1/4 and Ex.DW1/1 produced by the parties the registered proprietor of trade mark FIONA (device) is Rama Bakelite Industries, a partnership firm comprising of Anoop Gupta and Umesh Gupta; and the registered proprietor of the said trade mark FIONA (word) is the defendant No. 1.
14. As per the testimony of PW1 Vikas Gupta though his father and brother had been partners in Rama Bakelite Industries, he was never a partner in the said firm. As per Ex.PW1/4 and other document (at page 76 of the plaintiff's documents) filed by the plaintiff from the records of the Trade Mark Registry, on 26.8.2013 the said firm Rama Bakelite Industries made an application No. 2585741 for registration of trade mark FIONA (device) by claiming its user since 12.8.2013, and the said trade mark in the name of Rama Bakelite Industries was registered on 28.11.2018 in respect of goods in class 9, namely, switches, sockets, pin plugs, ceiling roses, holders, regulators, adopters, wire and cables, extension cord boxes, switch plates and other electric goods. The registration of the said trade mark in the name of Rama Bakelite Industries was renewed upto 26.8.2023.
CS (Comm) No. 527/2023 Page No. 30 of 5715. As per documents Ex.DW1/1 and Ex.PW1/21 filed from the records of the Trade Mark Registry, on 23.9.2019 Radhey Shyam Sharma, proprietor of M/s Dev Enterprises made an application No. 4300677 for registration of trade mark FIONA (word) for use in future, and the said trade mark in the name of Radhey Shyam Sharma, proprietor of M/s Dev Enterprises was registered on 15.8.2020 in respect of goods in class 17, namely, electrical tapes, domestic PVC tapes, industrial PVC adhesive tapes, PVC tapes, laminated sheets, PVC sheets included in class 17. The registration of the said trade mark in the name of Radhey Shyam Sharma, proprietor of M/s Dev Enterprises is in force upto 23.9.2029. The registration of the trade make in the name of Radhey Shyam Sharma is being opposed by the plaintiff who made an opposition application on 01.6.2021. The defendant No. 1, nevertheless, claims that he has been actually using trade mark FIONA since 09.3.2019 (and prior to the plaintiff) when goods by way of tax invoice Ex.DW1/2 were sold by the defendant No. 1 to the defendant No. 2.
16. As per document Ex.PW1/2 produced by the plaintiff, PW1 Vikas Gupta also applied for registration of trade mark FIONA (device), which is absolutely identical to the trade mark already registered in the name of Rama Bakelite Industries by making application No. 4308734 on 30.9.2019 and by claiming user of the said trade mark since 15.3.2019. As per document Ex.PW1/3 filed by the plaintiff, by way of another application No. 5823947, made on 25.2.2023, PW1 Vikas Gupta also applied for registration of trade mark FIONA (word) in his name in CS (Comm) No. 527/2023 Page No. 31 of 57 relation to class 17 goods, namely, electrical tapes, domestic PVC tapes, industrial PVC adhesive tapes, PVC tapes etc. The said two applications Nos. 4308734 and 5823945 made by the plaintiff are still pending before the Trade Mark Registry and are being opposed by Radhey Shyam Sharma, the proprietor of the defendant No. 1.
17. In the plaint it has been claimed by the plaintiff, and deposed by PW1 Vikas Gupta, that the defendants have infringed its trade mark FIONA by applying the same on the goods manufactured by the defendant No. 1 and marketed by the defendant No. 2. As already observed, the plaintiff has applied for registration of trade mark FIONA (word and device) in respect of electrical tapes, domestic PVC tapes, industrial PVC adhesive tapes, PVC tapes etc., in class 9 with the Trade Mark Registry, but the marks have not been registered in its name.
18. As per sub-section (1) of section 27 of Act 47 of 1999 no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. Since in the records of the Trade Mark Registry the trade mark/label/ packaging/trade dress FIONA has not been registered in the name of the plaintiff, therefore, it cannot claim that the defendants have infringed its trade mark FIONA in word or device or any other form including label/packaging/trade dress.
19. In the plaint the plaintiff has also claimed, and PW1 Vikas Gupta has deposed that the defendants have infringed its copyright in trade mark/label/packaging/trade dress FIONA of the plaintiff. As per CS (Comm) No. 527/2023 Page No. 32 of 57 the provisions of the Copyright Act, 1957, copyright, inter alia, exists in original artistic work; and as per section 17 of the said Act the first owner of copyright in artistic work is the author of the work. In the present case no evidence has been adduced by the plaintiff to show that the artistic work in respect of which copyright is being claimed by the plaintiff was created by PW1 Vikas Gupta or assigned in his favour by the first owner. The name of the original author has not been disclosed. Since the plaintiff has failed to show that it is the owner of copyright in trade mark/label/packaging/trade dress FIONA therefore, it cannot be said that the defendants, or anyone of them, have infringed copyright in favour of the plaintiff.
20. In the plaint the plaintiff claims, and it is deposed by PW1 Vikas Gupta, that trade mark FIONA (word and device) is an invented trade mark which is also a well known trade mark in respect of its goods, therefore, it requires protection from misuse by the defendants.
21. Section 2(zb) of Act 47 of 1999 which defines "trade mark"
reads as follow:
(zb) "trade mark" 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 shape of goods, their packaging and combination of colours; and--
(i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between CS (Comm) No. 527/2023 Page No. 33 of 57 the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;
22. Chapter XII of Act 47 of 1999 pertains to offences, penalties and procedure under the said Act, and thus, clause (i) of section 2(zb) is not applicable in the present matter. From a reading of section 2(zb) of Act 47 of 1999 it can be discerned that a trade mark, for protection in law, must be a mark which is capable of distinguishing the goods of one person from those of others; and a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.
23. Section 2(zg) of Act 47 of 1999 which defines "well known trade mark" reads as follow:
(zg) "well known trade mark", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
24. As already observed, trade mark FIONA (device), which is identical to the trade mark claimed by the plaintiff as his property, has already been registered in the name of firm Rama Bakelite Industries since the year 2013. The plaintiff has merely copied the said trade mark CS (Comm) No. 527/2023 Page No. 34 of 57 lying registered in the name of Rama Bakelite Industries, therefore, the claim of the plaintiff that trade marks FIONA (word and device) are invented trade marks is not correct, and cannot be accepted.
25. From a reading of section 2(zg) of Act 47 of 1999 it can be discerned that a well known trade mark means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
26. In the present case, although the plaintiff claims that he has goodwill and reputation in respect of goods and trade mark/label/ packaging/trade dress throughout the Republic of India, but no evidence has been adduced by the plaintiff and no witness has been examined from any section of public, which uses the goods of the plaintiff with trade mark thereon, to show that his mark FIONA has become well known to the substantial segment of the public. In these circumstances, in the absence of any reliable evidence it cannot be said that the trade mark FIONA etc. is a well known trade mark in respect of the goods of the plaintiff.
27. According to the plaintiff, this action is also for passing off arising out of the use by the defendants of the trade mark/label/ packaging/trade dress which is identical with or deceptively similar to CS (Comm) No. 527/2023 Page No. 35 of 57 the plaintiff's trade mark/label/packaging/trade dress.
28. As per sub-section (2) of section 27 of Act 47 of 1999 nothing in Act 47 of 1999 shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.
29. In respect of action for passing off it has been held by the Hon'ble Delhi High Court in Honda Motors Co. Ltd. v. Charanjit Singh and other, 101 (2002) DLT 359 (relied upon by the plaintiff) as follows:
14. In a nutshell, in an action for passing off, the plaintiff has to establish that his business or goods has acquired the reputation he is claiming, by showing that, his trade name has become distinctive of his goods and the purchasing public at large associates the plaintiff's name with them. The plaintiff is, however, not required to establish fraudulent intention on the part of the defendant. Causing of actual confusion amongst the customers is also not to be proved. What is required to be established is the likelihood of deception or confusion in the minds of the public at large.
The likelihood or probability of deception depends on a number of factors, which necessarily, is a question of fact and varies in the circumstances of each case. The plaintiff has also to establish that the defendant's user of the plaintiff's marks, letters or other indicia with regard to his goods is likely to lead to confusion in the minds of public, and such confusion is likely to cause damage or injury to the reputation, goodwill and fair name of the plaintiff. The plaintiff has also to show his prior user of the trade mark, in point of time than the defendant. The plaintiff, however, need not prove actual loss or damage in an action of passing off. Also registration of the trade mark is inconsequential in such an action. (emphasis added)
30. Further it has been held by the Hon'ble Supreme Court in S. Syed Mohideen v. P. Sulochana Bai, (2015) 7 SCALE 136 (relied upon by the plaintiff) as follows:
Section 34 of the Trade Marks Act, 1999 provides that nothing in this Act shall entitle the registered proprietor or registered user to interfere CS (Comm) No. 527/2023 Page No. 36 of 57 with the rights of prior user. Conjoint reading of Section 34, 27 and 28 would show that the rights of registration are subject to Section 34 which can be seen from the opening words of Section 28 of the Act which states "Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor...." and also the opening words of Section 34 which states "Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere......". Thus, the scheme of the Act is such where rights of prior user are recognized superior than that of the registration and even the registered proprietor cannot disturb / interfere with the rights of prior user. The overall effect of collective reading of the provisions of the Act is that the action for passing off which is premised on the rights of prior user generating a goodwill shall be unaffected by any registration provided under the Act. This proposition has been discussed in extenso in the case of N.R. Dongre And Ors. v. Whirlpool Corporation And Anr. wherein Division Bench of Delhi High Court recognized that the registration is not an indefeasible right and the same is subject to rights of prior user. The said decision of Whirlpool [supra] was further affirmed by Supreme Court of India in the case of N.R. Dongre And Ors v. Whirlpool Corporation And Anr.
B. The above were the reasonings from the provisions arising from the plain reading of the Act which gives clear indication that the rights of prior user are superior than that of registration and are unaffected by the registration rights under the Act. Secondly, there are other additional reasonings as to why the passing off rights are considered to be superior than that of registration rights. .
Traditionally, passing off in common law is considered to be a right for protection of goodwill in the business against misrepresentation caused in the course of trade and for prevention of resultant damage on account of the said misrepresentation. The three ingredients of passing off are goodwill, misrepresentation and damage. These ingredients are considered to be classical trinity under the law of passing off as per the speech of Lord Oliver laid down in the case of Reckitt & Colman Products Ltd. v Borden Inc which is more popularly known as "Jif Lemon" case wherein the Lord Oliver reduced the five guidelines laid out by Lord Diploc k in Erven Warnink v. Townend & Sons Ltd. (the "Advocate Case") to three elements: (1) Goodwill owned by a trader, (2) Misrepresentation and (3) Damage to goodwill. Thus, the passing off action is essentially an action in deceit where the common law rule is that no person is entitled to carry on his or her business on pretext that the said business is of that of another. This Court has given its imprimatur to the above principle in the case of Laxmikant v. Patel v. Chetanbhat Shah & Anr.CS (Comm) No. 527/2023 Page No. 37 of 57
31. In S. Syed Mohideen's case (supra) the Hon'ble Supreme Court further held: "D. Fourthly, it is also well settled principle of law in the field of the trade marks that the registration merely recognizes the rights which are already pre-existing in common law and does not create any rights. This has been explained by the Division Bench of Delhi High Court in the case of Century Traders v. Roshan Lal Duggar".
32. In S. Syed Mohideen's case (supra) the Hon'ble Supreme Court also held as follows:
Registration under the statute does not confer any new right to the mark claimed or any greater right 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 trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected." (Emphasis Supplied)"
Same view is expressed by the Bombay High Court in the case of Sunder Parmanand Lalwani and others v. Caltrex (India) Ltd.
33. According to the plaintiff by use of trade mark FIONA (word and device) in respect of its goods it has acquired great goodwill and reputation in respect of the goods originating from it and the trade mark throughout India; and that its trade mark/label/packaging/trade dress has become distinctive of his goods and the purchasing public at large associates the plaintiff's name with them. The plaintiff further claim that its turnover from the year 2012 till institution of the suit supports its claim to goodwill and reputation in respect of its goods and trade mark. The plaintiff also claims that it has spent substantial money on advertisements in newspapers, trade magazines, by distributing trade CS (Comm) No. 527/2023 Page No. 38 of 57 literature and novelties etc., as a result of which since 2013 its trade mark, packaging etc. and goods have acquired unique goodwill and reputation among public who purchase its goods, and the defendants by basking in its reputation and goodwill have been passing off their goods as the goods originating from the plaintiff.
34. The claim of the plaintiff that it is enjoying substantial goodwill and reputation in respect of trade mark and goods since 2013 cannot be accepted. This claim of the plaintiff is based on the premise that since PW1 Vikas Gupta was in family business since 2013 and trade mark FIONA was being used by his father and brother who were running their business in partnership under name and style Rama Bakelite Industries and were selling goods with trade mark FIONA therefore, he has also acquired goodwill and reputation. This claim is not correct. Admittedly, the said firm Rama Bakelite Industries comprised of the father and brother of PW1 Vikas Gupta who was not a partner therein. As per document Ex.PW1/1, PW1 Vikas Gupta started it business under the name and style M/s Vikas Electricals (India) on or about 01.7.2017, and as per his own version he started using trade mark FIONA since 15.3.2019. In these circumstances it cannot be said that the plaintiff had goodwill and reputation in respect of his business, goods and trade mark since the year 2013 or 01.7.2017. The plaintiff cannot ride on the goodwill and reputation of Rama Bakelite Industries.
35. The plaintiff has made false statement in paragraph No. 5 of the plaint, and PW1 Vikas Gupta has deposed falsely in paragraph No. 5 CS (Comm) No. 527/2023 Page No. 39 of 57 of affidavit Ex.PW1/A tendered in his examination-in-chief that the plaintiff has been using trade mark FIONA since 2017, when, as per document Ex.PW1/2, it has claimed that it was using trade mark FIONA (device) since 15.3.2019.
36. The plaintiff also claims huge goodwill and reputation in respect of its goods and trade mark FIONA on the basis of annual turnover, and in this regard relies on document Ex.PW1/16 issued by a Mr. Abhinav Garg, partner in M/s CAN and Associates (Chartered Accountant). Ex.PW1/16 is a confirmation and certificate on the part of the said Abhinav Garg. As per Ex.PW1/16, in the financial years 2012- 13, 2013-14, 2014-15, 2015-16, 2016-17, 2017-18, 2018-19, 2019-20, 2020-21, 2021-22 and 2022-23 (upto December, 2022) Vikas Electricals (India), proprietor Vikas Gupta having its office at 2131/3, Chah, Indara, Bhagirath Palace, Delhi was having turnover of Rs.10,84,140/-, Rs.20,06,826/-, Rs.23,58,066/-, Rs.24,35,241/-, Rs.18,72,527/-, Rs.25,37,379/-, Rs.35,18,572/-, Rs.22,02,900/-, Rs.29,38,005, Rs.46,78,729/- and Rs.61,43,387/- respectively. As per Ex.PW1/16 the said confirmation was issued on the specific request of M/s Vikas Electricals (India), proprietor Vikas Gupta as per records and information and verbal explanation provided by him to M/s CAN and Associates without keeping any responsibility of issuing official.
37. The said document Ex.PW1/16 is hardly of any use to determine the goodwill and reputation of the goods being sold, and trade mark being used, by the plaintiff. As per Ex.PW1/1, PW1 Vikas Gupta CS (Comm) No. 527/2023 Page No. 40 of 57 got registered his business concern M/s Vikas Electricals (India) on or about 01.7.2017; and as per the version of the plaintiff it started using trade mark FIONA from 15.3.2019, whereas document Ex.PW1/16 is also depicting turnover for the period prior to 15.3.2019. Further, as per Ex.PW1/6 in financial years 2018-19, 2019-20, 2020-21, 2021-22 and 2022-23 (upto December, 2022) the plaintiff had turnover of Rs.35,18,572/-, Rs.22,02,900/-, Rs.29,38,005/-, Rs.46,78,729/- and Rs.61,43,387/- respectively, whereas as per invoices issued by M/s Priya Electrical (India) in favour of M/s Vikas Electricals (India), during those financial years it purchased goods worth Rs.85,904/-, Rs.2,36,944/-, Rs.92,512/-, Rs.9,35,434/- and Rs.16,56,607/- from the said M/s Priya Electricals (India). The contents of the said confirmation Ex.PW1/16, it appears, do not showing correct facts. Therefore, on the basis of document Ex.PW1/16 it cannot be said that during the period prior to or after 15.3.2019 the plaintiff was actually having turnover which has been depicted in Ex.PW1/16. Further on the basis of Ex.PW1/16 it cannot be said that turnover was through selling the goods bearing trade mark FIONA.
38. To prove that the plaintiff is having huge reputation and goodwill in respect of trade mark FIONA from 15.3.2019 the plaintiff has also produced copies of seventy three tax invoices Ex.PW1/5 to Ex.PW1/15. As per tax invoice bearing No. 357 dated 30.3.2019 electrical items for a price of Rs.19,022/-, including 18% tax were sold to Shubham Electric, Champaran, Bihar. As per tax invoice bearing No. CS (Comm) No. 527/2023 Page No. 41 of 57 355 dated 27.3.2019 electrical items for a price of Rs.23,673/-, including 18% tax were sold to R.S. Electrical, Siwan, Bihar. As per tax invoice bearing No. 384 dated 11.6.2019 electrical items for a price of Rs.33,276/-, including 18% tax were sold to Mahesh Electric, Bihar. As per tax invoice bearing No. 387 dated 17.6.2019 electrical items for a price of Rs.7,080/-, including 18% tax were sold to Saurav Trading Company, Bihar. As per tax invoice bearing No. 389 dated 25.6.2019 electrical items for a price of Rs.11,800/-, including 18% tax were sold to Inder Electricals, Delhi. As per tax invoice bearing No. 402 dated 05.8.2019 electrical items for a price of Rs.15,500/-, including 18% tax were sold to Aggarwal Traders, Bihar. As per tax invoice bearing No. 413 dated 10.9.2019 electrical items for a price of Rs.7,021/-, including 18% tax were sold to Garg Enterprises, Delhi. As per tax invoice bearing No. 417 dated 21.9.2019 electrical items for a price of Rs.10,600/-, including 18% tax were sold to Karan Electric. As per tax invoice bearing No. 428 dated 01.11.2019 electrical items for a price of Rs.11,800/-, including 18% tax were sold to Maruti Electricals, Darbanga, Bihar. As per tax invoice bearing No. 434 dated 20.11.2019 electrical items for a price of Rs.5,522/-, including 18% tax were sold to Paras Traders, Delhi. As per tax invoice bearing No. 456 dated 30.1.2020 electrical items for a price of Rs.20,000/-, including 18% tax were sold to Adhunik Electric, Jharkhand. As per tax invoice bearing No. 463 dated 06.2.2020 electrical items for a price of Rs.40,085/-, including 18% tax were sold to Patiala General Store, Jammu and CS (Comm) No. 527/2023 Page No. 42 of 57 Kashmir. As per tax invoice bearing No. 465 dated 19.2.2020 electrical items for a price of Rs.18,880/-, including 18% tax were sold to Mittal Sales Corp., Punjab. As per tax invoice bearing No. 467 dated 29.2.2020 electrical items for a price of Rs.25,535/-, including 18% tax were sold to Guru Nanak General Store, Jammu and Kashmir. As per tax invoice bearing No. 468 dated 29.2.2020 electrical items for a price of Rs.11,328/-, including 18% tax were sold to Suhana Electricals Sales and Service, Bihar. As per tax invoice bearing No. 470 dated 02.3.2020 electrical items for a price of Rs.6,136/-, including 18% tax were sold to Jain Tape House, Shastri Nagar, Delhi. As per tax invoice bearing No. 473 dated 13.3.2020 electrical items for a price of Rs.8,874/-, including 18% tax were sold to Patiala General Store, Jammu and Kashmir. As per tax invoice bearing No. 483 dated 18.7.2020 electrical items for a price of Rs.14,200/-, including 18% tax were sold to Sri Durga Enterprises, Bihar. As per tax invoice bearing No. 486 dated 25.7.2020 electrical items for a price of Rs.12,395/-, including 18% tax were sold to Om Sai Madan Electricals, Uttar Pradesh. As per tax invoice bearing No. 501 dated 17.9.2020 electrical items for a price of Rs.16,213/-, including 18% tax were sold to Inder Electricals, Bhagirath Palace, Delhi. As per tax invoice bearing No. 506 dated 08.10.2020 electrical items for a price of Rs.7,930/-, including 18% tax were sold to R.I. Trading, Bhagirath Palace, Delhi. As per tax invoice bearing No. 514 dated 31.10.2020 electrical items for a price of Rs.13,898/-, including 18% tax were sold to Multi Hardware, Assam. As per tax invoice bearing No. 537 dated CS (Comm) No. 527/2023 Page No. 43 of 57 28.1.2021 electrical items for a price of Rs.19,201/-, including 18% tax were sold to Mahinder Electrical, Faridabad, Haryana. As per tax invoice bearing No. 538 dated 28.1.2021 electrical items for a price of Rs.22,769/-, including 18% tax were sold to Dori Lal Dewangan, Chhatisgarh. As per tax invoice bearing No. 551 dated 19.2.2021 electrical items for a price of Rs.16,213/-, including 18% tax were sold to Suhana Electricals, Gopal Ganj, Bihar. As per tax invoice bearing No. 553 dated 22.2.2021 electrical items for a price of Rs.5,310/-, including 18% tax were sold to Mayri Electronics, Gurgaon, Haryana. As per tax invoice bearing No. 574 dated 23.3.2021 electrical items for a price of Rs.13,506/-, including 18% tax were sold to Inder Electricals, Bhagirath Palace, Delhi. As per tax invoice bearing No. 586 dated 15.6.2021 electrical items for a price of Rs.16,815/-, including 18% tax were sold to Shree Balaji Electricals, Jaipur, Rajasthan. As per tax invoice bearing No. 588 dated 18.6.2021 electrical items for a price of Rs.22,800/-, including 18% tax were sold to Swastick Electrical, Guwahati, Assam. As per tax invoice bearing No. 604 dated 19.7.2021 electrical items for a price of Rs.33,644/-, including 18% tax were sold to Sahara Electricals, Bhagirath Palace, Delhi. As per tax invoice bearing No. 613 dated 06.8.2021 electrical items for a price of Rs.16,532/-, including 18% tax were sold to Kalra Electricals, Faridabad, Haryana. As per tax invoice bearing No. 631 dated 13.9.2021 electrical items for a price of Rs.14,160/-, including 18% tax were sold to K.P. Electrical, Delhi. As per tax invoice bearing No. 635 dated 30.9.2021 electrical items for a CS (Comm) No. 527/2023 Page No. 44 of 57 price of Rs.21,240/-, including 18% tax were sold to Vihaan Enterprises, Vishakhapatnam, Andhra Pradesh. As per tax invoice bearing No. 649 dated 12.11.2021 electrical items for a price of Rs.885/-, including 18% tax were sold to a buyer (name of the buyer not legible). As per tax invoice bearing No. 656 dated 27.11.2021 electrical items for a price of Rs.20,667/-, including 18% tax were sold to Inder Electricals, Bhagirath Palace, Delhi. As per tax invoice bearing No. 658 dated 02.12.2021 electrical items for a price of Rs.3,774/-, including 18% tax were sold to Bhagwati Agencies, Bhagirath Palace, Delhi. As per tax invoice bearing No. 669 dated 03.1.2022 electrical items for a price of Rs.11,809/-, including 18% tax were sold to LKC Enterprises, Lajpat Rai Market, Delhi. As per tax invoice bearing No. 671 dated 05.1.2022 electrical items for a price of Rs.5,905/-, including 18% tax were sold to Inder Electricals, Bhagirath Palace, Delhi. As per tax invoice bearing No. 677 dated 21.1.2022 electrical items for a price of Rs.26,571/-, including 18% tax were sold to Sahara Electricals, Delhi. As per tax invoice bearing No. 687 dated 16.2.2022 electrical items for a price of Rs.14,160/-, including 18% tax were sold to K.S. Electricals, Bhagirath Palace, Delhi. As per tax invoice bearing No. 692 dated 22.2.2022 electrical items for a price of Rs.15,250/-, including 18% tax were sold to Khushlani Enterprises, Didwana, Rajasthan. As per tax invoice bearing No. 723 dated 11.4.2022 electrical items for a price of Rs.96,288/-, including 18% tax were sold to Aggarwal Electric Store, Bhagirath Palace, Delhi. As per tax invoice bearing No. 725 dated CS (Comm) No. 527/2023 Page No. 45 of 57 18.4.2022 electrical items for a price of Rs.93,279/-, including 18% tax were sold to Aggarwal Electric Store, Bhagirath Palace, Delhi. As per tax invoice bearing No. 727 dated 19.4.2022 electrical items for a price of Rs.39,117/-, including 18% tax were sold to Hari Om Trading Co., Bhagirath Palace, Delhi. As per tax invoice bearing No. 728 dated 22.4.2022 electrical items for a price of Rs.99,297/-, including 18% tax were sold to M/s Aggarwal Electric Store, Bhagirath Palace, Delhi. As per tax invoice bearing No. 730 dated 25.4.2022 electrical items for a price of Rs.7,080/-, including 18% tax were sold to M/s Kuber Enterprises, Delhi. As per tax invoice bearing No. 751 dated 10.6.2022 electrical items for a price of Rs.6,202/-, including 18% tax were sold to some buyer of Delhi (name of the buyer not legible). As per tax invoice bearing No. 753 dated 14.6.2022 electrical items for a price of Rs.23,667/-, including 18% tax were sold to M/s Popular Sanitary & Electricals, Nagaland. As per tax invoice bearing No. 755 dated 15.6.2022 electrical items for a price of Rs.33,701/-, including 18% tax were sold to M/s Kohli Electricals & Traders, Faridabad, Haryana. As per tax invoice bearing No. 760 dated 29.6.2022 electrical items for a price of Rs.13,633/-, including 18% tax were sold to M/s K.D. Enterprises, Shastri Park, Delhi. As per tax invoice bearing No. 761 dated 30.6.2022 electrical items for a price of Rs.7,021/-, including 18% tax were sold to M/s Komal Enterprises, Mirzapur, UP. As per tax invoice bearing No. 770 dated 09.7.2022 electrical items for a price of Rs.18,408/-, including 18% tax were sold to M/s Popular Sanitary & CS (Comm) No. 527/2023 Page No. 46 of 57 Electricals, Nagaland. As per tax invoice bearing No. 774 dated 12.7.2022 electrical items for a price of Rs.31,001/-, including 18% tax were sold to M/s Kamakhya Trading, Siwan, Bihar. As per tax invoice bearing No. 778 dated 20.7.2022 electrical items for a price of Rs.15,450/-, including 18% tax were sold to M/s Khushlani Enterprise, Didwana, Rajasthan. As per tax invoice bearing No. 784 dated 28.7.2022 electrical items for a price of Rs.5,324/-, including 18% tax were sold to M/s Bhagwati Agencies, Bhagirath Palace, Delhi. As per tax invoice bearing No. 786 dated 01.8.2022 electrical items for a price of Rs.75,225/-, including 18% tax were sold to M/s Chopra Electronics, Delhi. As per tax invoice bearing No. 795 dated 01.9.2022 electrical items for a price of Rs.15,582/-, including 18% tax were sold to Guru Nanak General Store, Jammu and Kashmir. As per tax invoice bearing No. 797 dated 03.9.2022 electrical items for a price of Rs.9,303/-, including 18% tax were sold to Entergy Electrical Industries, Bhagirath Palace, Delhi. As per tax invoice bearing No. 801 dated 07.9.2022 electrical items for a price of Rs.87,261/-, including 18% tax were sold to M/s LKC Enterprises, Lajpat Rai Market, Delhi. As per tax invoice bearing No. 805 dated 13.9.2022 electrical items for a price of Rs.17,714/-, including 18% tax were sold to M/s Sahara Traders, Bhagirath Palace, Delhi. As per tax invoice bearing No. 809 dated 19.9.2022 electrical items for a price of Rs.8,366/-, including 18% tax were sold to M/s Rati Ram Electromart, Delhi. As per tax invoice bearing No. 820 dated 03.10.2022 electrical items for a price of CS (Comm) No. 527/2023 Page No. 47 of 57 Rs.35,428/-, including 18% tax were sold to M/s Sahara Electricals, Bhagirath Palace, Delhi. As per tax invoice bearing No. 834 dated 21.10.2022 electrical items for a price of Rs.12,036/-, including 18% tax were sold to M/s Chopra Electronics, Delhi. As per tax invoice bearing No. 840 dated 28.10.2022 electrical items for a price of Rs.67,904/-, including 18% tax were sold to M/s Inder Electricals, Delhi. As per tax invoice bearing No. 842 dated 29.10.2022 electrical items for a price of Rs.59,047/-, including 18% tax were sold to some buyer of Maheema Agencies, Delhi-6. As per tax invoice bearing No. 845 dated 07.11.2022 electrical items for a price of Rs.28,858/-, including 18% tax were sold to M/s Popular Sanitary & Electricals, Nagaland. As per tax invoice bearing No. 846 dated 09.11.2022 electrical items for a price of Rs.35,428/-, including 18% tax were sold to Sahara Electricals, Delhi. As per tax invoice bearing No. 849 dated 14.11.2022 electrical items for a price of Rs.7,080/-, including 18% tax were sold to Thakral Enterprises, Hissar, Haryana. As per tax invoice bearing No. 850 dated 16.11.2022 electrical items for a price of Rs.8,496/-, including 18% tax were sold to M.K. Electricals, Bhagirath Palace, Delhi. As per tax invoice bearing No. 853 dated 21.11.2022 electrical items for a price of Rs.95,757/-, including 18% tax were sold to M/s LKC Enterprises, Lajpat Rai Market, Delhi. As per tax invoice bearing No. 856 dated 02.12.2022 electrical items for a price of Rs.35,332/-, including 18% tax were sold to Patiala General Store, Jammu and Kashmir. As per tax invoice bearing No. 857 dated 02.12.2022 electrical items for a price of CS (Comm) No. 527/2023 Page No. 48 of 57 Rs.36,108/-, including 18% tax were sold to Kohli Electricals and Traders, Faridabad, Haryana. As per tax invoice bearing No. 859 dated 08.12.2022 electrical items for a price of Rs.84,252/-, including 18% tax were sold to Aggarwal Electric Store, Delhi.
39. As per Ex.PW1/5 to Ex.PW1/15, in the years 2019, 2020, 2021 and 2022, against those invoices the plaintiff sold goods for the price of Rs.1,45,294/-, Rs.1,95,666/-, Rs.2,27,516/- and Rs.12,82,340/- respectively. These figures regarding annual sale of goods in a city like Delhi are not great figures.
40. Further, out of the said seventy three invoices Ex.PW1/5 to Ex.PW1/15, filed by the plaintiff in support of his sale of goods to different persons, nineteen invoices (Nos. 402, 413, 428, 456, 463, 467, 514, 538, 553, 631, 753, 760, 761, 770, 784, 795, 809, 850 and 856) nowhere indicate that by those invoices goods bearing trade mark FIONA were sold to the customers. Twenty six invoices (Nos. 355, 357, 384, 387, 389, 417, 465, 468, 470, 486, 501, 506, 537, 551, 586, 588, 604, 613, 635, 649, 728, 730, 778, 842, 845 and 846) out of those seventy three invoices indicate that word 'FIONA/Fiona' has been interpolated in those invoices, apparently, to take benefit in the present case. The explanation of PW1 Vikas Gupta regarding those 26 invoices is that the invoices were prepared by his ex employee Suresh Singh, which were subsequently corrected by him by putting word FIONA therein. In the absence of any corroborative evidence on the point that the invoices prepared by the employee of the plaintiff were corrected by CS (Comm) No. 527/2023 Page No. 49 of 57 PW1 Vikas Gupta it cannot be accepted that the corrections in those twenty six invoices were made at the time of the sale of goods, when he himself claimed during his cross-examination that that 99% of the time he used to prepare the bill. In the light of these questionable evidence, only at the strength of 28 remaining invoices it cannot be held that by selling goods by applying trade mark/label/packaging/trade dress FIONA the plaintiff had acquired a goodwill and reputation of the scale which spilled throughout the Republic of India and is likely to create confusion in the trade. Further, to corroborate the sale figures acquired by selling the goods with mark FIONA the plaintiff has not filed any document downloaded from the GST portal or has called any evidence from GST department to show that the plaintiff was paying GST corresponding to its sale figures.
41. It is also claimed on behalf of the plaintiff that the plaintiff has acquired extensive goodwill and reputation in respect of its goods and trade marks/label/packaging/trade dress by way of advertisements in newspapers, magazines, by way of distribution of trade literature and trade novelties etc. No newspaper or magazine containing any advertisement regarding trade mark FIONA published at the instance of the plaintiff has been filed in the matter as evidence. The plaintiff has also not provided any figures of the amount spent by it to advertise its goods and trade mark year wise or otherwise. Indeed goodwill and reputation in respect of a trade mark can be acquired by advertisement, but in case of passing off action, where the trade mark is not well known CS (Comm) No. 527/2023 Page No. 50 of 57 trade mark, and which has already been registered in the name of other persons (namely Rama Bakelite Industries and the defendant No.1), albeit in different class, only at the strength of thirty hanging banners put here and there at different parts of this city, without showing as to during which time period and space they were put in this big city, it cannot be held that the plaintiff in respect of his goods and trade mark has acquired such a reputation at the strength of which the defendants can be prevented from carrying on their business.
42. The plaintiff claims that it has been using trade mark FIONA in respect of its goods from 15.3.2019, whereas at the strength of Ex.DW1/2 to Ex.DW1/12 the defendant No. 1 claims that it has been using trade mark FIONA in respect of its goods since 09.3.2019 when first sale by way of invoice Ex.DW1/2 was made to the defendant No. 2.
43. Along with the plaint the plaintiff has filed several invoices issued by Priya Electricals (India) in favour of Vikas Electricals (India), referred to herein above (see: paragraph No. 37 supra). Although the said invoices have not been tendered in evidence by the plaintiff, but in view of the law laid down by the Hon'ble Delhi High Court in M/s. Rudnap Export-Import v. Eastern Associates Co. and others, AIR 1984 Delhi 20 the said invoices can be looked into at the instance of the defendants.
44. As per invoice No. 322 dated 19.3.2019, PVC insulation tape-FIONA was sold by Priya Electricals (India) to Vikas Electricals (India) for a price of Rs.85,904/- (including the sum of Rs.6,552/- on account of SGST and Rs.6,552/- on account of CGST).
CS (Comm) No. 527/2023 Page No. 51 of 5745. As per invoice No. 42 dated 29.4.2019, PVC insulation tape-FIONA was sold by Priya Electricals (India) to Vikas Electricals (India) for a price of Rs.85,904/- (including the sum of Rs.6,552/- on account of SGST and Rs.6,552/- on account of CGST)
46. As per invoice No. 82 dated 31.5.2019, PVC insulation tape-FIONA was sold by Priya Electricals (India) to Vikas Electricals (India) for a price of Rs.65,136/- (including the sum of Rs.4,968/- on account of SGST and Rs.4,968/- on account of CGST);
47. As per invoice No. 130 dated 05.11.2020, PVC insulation tape-FIONA was sold by Priya Electricals (India) to Vikas Electricals (India) for a price of Rs.92,512/- (including the sum of Rs.7,056/- on account of SGST and Rs.7,056/- on account of CGST)
48. As per invoice No. 06 dated 09.4.2021, PVC insulation tape-FIONA was sold by Priya Electricals (India) to Vikas Electricals (India) for a price of Rs.1,45,848/- (including the sum of Rs.11,124/- on account of SGST and Rs.11,124/- on account of CGST)
49. As per invoice No. 36 dated 11.6.2021, PVC insulation tape-FIONA was sold by Priya Electricals (India) to Vikas Electricals (India) for a price of Rs.2,38,100/- (including the sum of Rs.18,160.20/- on account of SGST and Rs.18,160.20/- on account of CGST)
50. As per invoice No. 86 dated 06.8.2021, PVC insulation tape-FIONA was sold by Priya Electricals (India) to Vikas Electricals (India) for a price of Rs.2,75,695/- (including the sum of Rs.21,027.60/- on account of SGST and Rs.21,027.60/- on account of CGST) CS (Comm) No. 527/2023 Page No. 52 of 57
51. As per invoice No. 173 dated 21.2.2022, PVC insulation tape-FIONA was sold by Priya Electricals (India) to Vikas Electricals (India) for a price of Rs.2,75,791/- (including the sum of Rs.21,034.94/- on account of SGST and Rs.21,034.94/- on account of CGST)
52. As per invoice No. 05 dated 06.4.2022, PVC insulation tape-FIONA was sold by Priya Electricals (India) to Vikas Electricals (India) for a price of Rs.2,95,491/- (including the sum of Rs.22,537.44/- on account of SGST and Rs.22,537.44/- on account of CGST)
53. As per invoice No. 29 dated 24.5.2022, PVC insulation tape-FIONA was sold by Priya Electricals (India) to Vikas Electricals (India) for a price of Rs.2,95,491/- (including the sum of Rs.22,537.44/- on account of SGST and Rs.22,537.44/- on account of CGST)
54. As per invoice No. 56 dated 08.7.2022, PVC insulation tape-FIONA was sold by Priya Electricals (India) to Vikas Electricals (India) for a price of Rs.2,95,491/- (including the sum of Rs.22,537.44/- on account of SGST and Rs.22,537.44/- on account of CGST)
55. As per invoice No. 93 dated 08.9.2022, PVC insulation tape-FIONA was sold by Priya Electricals (India) to Vikas Electricals (India) for a price of Rs.2,95,491/- (including the sum of Rs.22,537.44/- on account of SGST and Rs.22,537.44/- on account of CGST)
56. As per invoice No. 133 dated 04.11.2022, PVC insulation tape-FIONA was sold by Priya Electricals (India) to Vikas Electricals (India) for a price of Rs.2,66,208/- (including the sum of Rs.20,304/- on account of SGST and Rs.20,304/- on account of CGST) CS (Comm) No. 527/2023 Page No. 53 of 57
57. As per invoice No. 172 dated 13.01.2023, PVC insulation tape-FIONA was sold by Priya Electricals (India) to Vikas Electricals (India) for a price of Rs.2,08,435/- (including the sum of Rs.15,897.60/- on account of SGST and Rs.15,897.60/- on account of CGST).
58. The said invoices show that during the period 19.3.2019 and 13.01.2023 for a price of Rs.29,61,497/- goods, namely, PVC insulation tape with trade mark/name FIONA already put on them were sold by Priya Electricals (India) to the plaintiff. According to the plaintiff, Priya Electricals (India) was only a manufacturer of its goods who put trade mark FIONA on the goods at its instance, and in this regard the plaintiff relies on Ex.PW1/18. Ex.PW1/18 nowhere indicate that the same is a communication between the plaintiff and Priya Electricals (India). The plaintiff has not placed on record any contract etc. or other material to show that under contract Priya Electricals (India) manufactured the goods for the plaintiff and applied the trade make at its instance or under its permission. In the opinion of the court, had Priya Electricals (India) been only manufacturer who manufactured and delivered goods to the plaintiff under agreement, it would not have charged SGST and CGST from the plaintiff and would not have supplied the goods under conditions: (1) Goods once sold will not be taken back, and (2) interest @ 24% p.a. will be charged if the payment is not made with in the stipulated time. In the absence of any reliable material produced by the plaintiff to show the contrary, the contents of the said invoices show that the transaction between Priya Electricals (India) and CS (Comm) No. 527/2023 Page No. 54 of 57 the plaintiff was that of seller and buyer and not that of manufacturer and the trader at whose instance the goods were manufactured and trade mark was applied by such manufacturer. In these circumstances, on the basis of the said invoices it cannot be ruled out that Priya Electricals (India) put mark FIONA on the goods and sold the same to the plaintiff; and that the goods with mark FIONA, sold to the plaintiff did not originate in market from the plaintiff but from Priya Electricals (India). In such situation there is high probability that in the course of trade the good sold with trade mark FIONA showed connection with Priya Electricals (India) and not with the plaintiff. In these circumstances, it also becomes highly probable that the plaintiff was not the user of trade mark FIONA prior to the defendants, as it claims; and only because the goods sold by the plaintiff were of more value than the goods sold by the defendants it cannot be said that the plaintiff had acquired goodwill and reputation in respect of the trade mark and trade dress etc. of the scale which makes it entitled for a decree of permanent injunction to restrain the defendants from using the trade mark/label/packaging/trade dress FIONA or any other trade mark and logos deceptively and confusingly similar to the said trade mark FIONA. Issue No. 1 is decided against the plaintiff and in favour of the defendants.
Re: Issue No. 2.
59. As during the discussion on issue No. 1 it has been found that the plaintiff has failed to prove the conditions under which it can become entitled for injunction against the defendants for wrong of CS (Comm) No. 527/2023 Page No. 55 of 57 passing off, therefore, the plaintiff is not found entitled for a decree of permanent injunction restraining defendants etc., from passing off their goods as that of the plaintiff's goods. Issue No. 2 is decided against the plaintiff and in favour of the defendants.
Re: Issues No. 3 and 4.
60. As the plaintiff has failed to prove the infringement of its trade mark or copyright, and has also failed to prove the wrong of passing off against the defendants, therefore, the plaintiff is not found entitled for a decree, preliminary or final, for rendition of accounts against the defendants. Issues No. 3 and 4 are decided against the plaintiff and in favour of the defendants.
Re: Issue No. 5.
61. As the plaintiff has failed to prove the infringement of its trade mark or copyright, and has also failed to prove the wrong of passing off against the defendants, therefore, the plaintiff is not found entitled for delivery up of any infringing finished and unfinished materials bearing the infringing and violative trade mark/label of the plaintiff for the purpose of destruction and erasure. Issue No. 5 is decided against the plaintiff and in favour of the defendants. Re: Issue No. 6.
62. As the plaintiff has failed to prove the infringement of its trade mark or copyright, and has also failed to prove the wrong of passing off against the defendants, therefore, the plaintiff is not found entitled for damages against the defendants. Issue No. 6 is decided CS (Comm) No. 527/2023 Page No. 56 of 57 against the plaintiff and in favour of the defendants. Relief.
63. In view of above discussion and my findings on issues No. 1, 2, 3, 4, 5 and 6 the suit is dismissed with costs. Decree sheet be prepared accordingly and after compliance file be sent to records.
Digitally signedPronounced in the open court MANOJ by MANOJ
KUMAR
on the 29th day of May, 2025. KUMAR 15:16:04
Date: 2025.06.02
+0530
(MANOJ KUMAR-1)
District Judge (Commercial Court)-05,
Central District: Tis Hazari: Delhi
CS (Comm) No. 527/2023 Page No. 57 of 57