Delhi District Court
Naseer Ahmed vs Liberty Footwear Company on 4 December, 2012
1
IN THE COURT OF SHRI MAN MOHAN SHARMA
ADDITIONAL DISTRICT JUDGE (CENTRAL) 1
TIS HAZARI COURTS, DELHI.
T.M. No. 97/2011
Unique ID case No. 02401C0786902003
Naseer Ahmed
Sole Proprietor M/s Force Footwear Company
Shoe Market, Agra 282003
...Plaintiff
Versus
Liberty Footwear Company
Railway Road
Karnal (Haryana)
...Defendant
Date of institution : 05.08.1999
Date of reserving judgment : 17.11.2012
Date of pronouncement : 04.12.2012
Suit for permanent injunction and rendition of accounts
JUDGMENT: The parties are on loggerheads over the right to the use of mark 'Force' as the part of their respective trade mark/trade name. The T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 1 of 122 2 plaintiff claims him to be entitled to use the trade mark/name 'FORCE' whereas the defendant is staking its claim to the trade mark 'FORCE 10'.
Pleadings
2. The claim of the plaintiff is that he is the sole proprietor of M/s Force Footwear Company, Shoe market, Agra 282003. The plaintiff has propounded his cause of action on the following bundle of facts:
(i). The plaintiff is engaged in the business of manufacturing and marketing of footwears. He is the Proprietor of trade mark FORCE in relation to the foot wears. The word FORCE is also forming a material part of the plaintiff's trade name viz. FORCE FOOTWEAR COMPANY.
(ii). The predecessors of the plaintiff adopted the trade mark FORCE in relation to foot wears and also the trading style FORCE FOOTWEAR COMPANY in the year 1947 and continuously used the same up to 01.06.1984 where after the said trade mark along with goodwill of the firm was assigned to the plaintiff vide deed of assignment dated 01.06.1984 and thereafter the plaintiff is continuously using the said trade mark. T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 2 of 122 3
(iii). Sh. Ahmed Miyan who is also the father of the plaintiff is the predecessor of the plaintiff company.
(iv). The business carried on by the predecessors and thereafter by the plaintiff company is an extensive one and the goods bearing the said trade mark have been practically distributed in major parts of the country. The trade mark FORCE of the plaintiff has become a distinctive indicium in relation to plaintiff's goods and business. The business and goodwill of the plaintiff are dependent upon the said trade mark FORCE and the same has become sufficiently distinctive in the trade to be capable of protection.
(v). The trade mark FORCE of the plaintiff is duly registered under no. 214292B in relation to foot wears in class25 of the Fourth Schedule of the Trade and Merchandise Marks Act, 1958. The said trade mark is registered w.e.f.13.03.1963; it has been renewed from time to time and its registration is still valid and subsisting.
(vi). The plaintiff has already filed application on form TM24 dated 29.06.1984 in the Trade Marks Office, New Delhi for T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 3 of 122 4 assignment of the said trade mark in his favour in view of assignment deed dated 01.06.1984. The said assignment application is still pending.
(vii). The plaintiff as such has acquired exclusive rights to the use of the said trade mark within the meaning of Section 28 of the Trade and Merchandise Marks Act, 1958.
(viii). Plaintiff's trade mark/trading style has already become distinctive and associated with the aforementioned goods of the plaintiff on account of its long, continuous, extensive and exclusive user thereof. The goods bearing the said trade mark are highly demanded in the markets on account of standard quality and precision. The public at large associates the said trade mark with the goods of the plaintiff alone and that the plaintiff has been using the said trade mark since the year 1947 exclusively and to the exclusion of others. The products of the plaintiff have acquired tremendous goodwill and vast reputation as a high quality product originating exclusively from the plaintiff and that the plaintiff has already built up a valuable trade under the said trade mark.
T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 4 of 122 5
(ix). The plaintiff has widely advertised the said trade mark through advertisement in newspapers, distribution of trade literature, display boards, calendars and trade novelties. The plaintiff has already spent substantial and sizable sum of money on the publicity of the said trade mark and in consequence thereof, the said trade mark enjoys enduring reputation in the market.
(x). The defendant is engaged in the business of manufacturing and marketing of footwear and has adopted the trade mark FORCE10 label in respect thereof. The defendant is not the proprietor of trade mark FORCE10 in relation to foot wears. The defendant is marketing foot wears under the trade mark FORCE10 in Delhi and other parts of the country in a clandestine and surreptitious manner i.e. without issuance of any invoices against sale. The plaintiff and the defendant operate in the same line of business and in the same areas and markets in Delhi and other parts of the country. The said trade mark of the defendant is identical with and deceptively similar to the trade mark of the plaintiff and as such is bound to cause deception and T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 5 of 122 6 confusion in the normal course of business activities of the plaintiff and the defendant. The plaintiff has tremendous goodwill in the business. The plaintiff is always referred to as FORCE HOUSE and his aforementioned goods, therefore, any person not knowing clearly the relationship between the parties to this action is bound to be confused by the defendant's use of trade mark FORCE10 label. Such person might well do business with the defendant thinking that he is dealing with the plaintiff or that some vital and strong links exist between the plaintiff and the defendant.
(xi). The defendant adopted the impugned trade mark FORCE10 in relation to foot wears out of greed and with a view to take advantage and to trade upon the reputation of the plaintiff and further with a view to cause deception and confusion in the markets and to pass off his goods and business as that of the plaintiff. The unwary purchasers are bound to be deceived in dealing and in purchasing the defendant's goods under the impression that it is emanating from the plaintiff's source. There is a likelihood of confusion between the plaintiff T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 6 of 122 7 and the defendant resulting from the sameness, nearness and similarity of trade marks. There is an obvious probability of confusion.
(xii). The defendant is guilty of violating the statutory rights of the plaintiff by infringing and passing off his goods as that of the plaintiff under the impugned trade mark FORCE10 Label. The defendant is fully aware about the business activities of the plaintiff under the trade mark FORCE as well as that of his trade mark being used since the year 1947. The defendant is subsequent in adoption and use of the impugned trade mark FORCE10.
(xiii). The defendant fully knowing the proprietorship of trade mark FORCE in favour of the plaintiff filed a rectification petition in Delhi High Court being CO No. 10 of 1998 against the registered trade mark no. 214282B of the plaintiff and that the said rectification petition is filed under Section 56 of the Trade and Merchandise Marks Act, 1958. The said petition is still pending. The defendant in the said rectification petition has claimed adoption and use of trade mark FORCE10 since the T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 7 of 122 8 year 1990. The said fact clearly illustrates that the adoption and user of trade mark FORCE10 by the defendant is much subsequent to the adoption, use and registration of trade mark FORCE in the hands of the plaintiff. The defendant is also pirating the plaintiff's trading style.
(xiv).Thus the adoption of trade mark FORCE10 is improper, sinister, illmotivated, dishonest and fraudulent and that the defendant by such questionable adoption of the said trade mark is disseminating deception and confusion in the market. The plaintiff is suffering losses both in business and in reputation because of the very inferior quality of goods under the impugned trade mark FORCE10. The loss and reputation is incapable of being assessed in monetary terms. The public is being deceived and defrauded by the impugned activities of the defendant and that the defendant is doing so in order to make illegal gains. The defendant has thus invaded the statutory as well as common law rights of the plaintiff by adopting the said trade mark FORCE10 label. The defendant is T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 8 of 122 9 violating the statutory rights of the plaintiff and is also guilty of passing off his goods as that of the plaintiff.
3. The defendant had been served with the summons of the suit and posed a challenge to the suit by filing its written statement in which it questioned the cause of action on which the plaintiff has instituted his suit. The defendant raised the following preliminary objections:
(i). Plaintiff has no locus stand to file the present suit. As per the plaint the plaintiff is the owner of the registered trade mark FORCE under no. 214282B which is alleged to have been assigned by the registered proprietor thereof who is stated to be the father of the plaintiff. The assignment deed relied upon by the plaintiff is not legal and has in any case not been allowed by the Registrar of Trade Marks for the reasons best known to the plaintiff. According to the plaintiff, he has filed the application in form TM24 on 29.06.1984, which is wrong. In fact, no such application has been filed.
(ii). The suit against the defendant does not lie as the defendant is the registered proprietor of FORCE10 which is being objected to by the plaintiff in the present suit. The said T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 9 of 122 10 registration is under no. 553998 which is valid, subsisting and in force. Thus the defendant is having the statutory right to use FORCE10. The defendant is protected under Section 28 of the Trade and Merchandise Marks Act, 1958. Besides, two more applications of the trade mark FORCE 10 from Liberty have been advertised in the Trade Marks Journals under no. 554196 and 554494.
(iii). The suit suffers from great and unexplained delay, latches and acquiescence. The plaintiff had the knowledge of the use of FORCE 10 by the defendant right from 1990, when the defendant started using the same. The plaintiff had the complete knowledge of not only of his own but also through his dealers etc.
(iv). The defendant has conducted huge sales worth crores of rupees under FORCE 10 and has spent crores of rupees on advertisement and promotion of FORCE 10. The defendant has even sponsored many programs on television and otherwise. The defendant can not be said to be passing off the goods of the plaintiff, even taking the case of plaintiff at face value. The T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 10 of 122 11 defendant is well established in the footwear business and is known for intrinsic quality in the market.
(v). The defendant has already filed the rectification petition against the registered trade mark no. 214282B which has been relied upon by the plaintiff. The registration which has been relied upon by the plaintiff is under challenge. As such no suit lies and in any case the suit is liable to be stayed.
(vi). The plaintiff, or for that matter his predecessor, has not used FORCE as a trade mark. Plaintiff and his alleged predecessor have been using the different trade marks. On the other hand, the defendant is using the mark FORCE 10 only upon the sports foot wears. The plaintiff has not been manufacturing and/or selling the sports footwear. As such also there can not be any confusion in the market as alleged.
(vii). The plaintiff is not a manufacturer of the shoes/footwear. He is merely a reseller of the goods.
(viii). This Court has no territorial jurisdiction to entertain and try the suit.
(ix). The suit has not been filed by the proper and authorised T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 11 of 122 12 person and has not been properly signed and verified.
(x). The suit has not been properly valued for the purpose of Court Fee and jurisdiction and no proper Court Fee has been paid.
(xi). The suit suffers from the infirmity of non joinder of necessary party namely Ahmed Miyan.
(xii). The registration under no. 214282B of the trade mark FORCE of which the plaintiff claims to be the exclusive under is in part B. While the defendant is the registered proprietor of the trade mark FORE 10 in part A under the registration No. 553998. As such also the present suit does not lie.
4. The defendant denied the material factual averments on which the plaintiff his founded his cause of action in above terms and prayed for the dismissal of the suit.
Issues
5. Vide the minutes of proceedings dated 19.01.2009, on the basis of the pleadings, the following issues have been framed:
i) Whether the defendant is guilty of infringing the registered trademark of the plaintiff under number T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 12 of 122 13 214282B in relation to footwear in class 25? If so, its effect? OPP
ii) Whether the defendant is guilty of passing off the goods of the plaintiff by manufacturing the goods under the trademark FORCE 10? If so, its effect? OPP
iii) If issue no. 1 or issue no. 2 or both of them is/are proved in affirmative, whether the plaintiff is entitled to a decree for delivery up as prayed in prayer clause iii of the plaint? OPP
iv) Whether the plaintiff is entitled to a decree of rendition of accounts as prayed for in prayer clause iv of the plaint? OPP
v) Relief.
Witnesses Examined
6. The plaintiff has examined 7 witnesses .
7. The defendant has examined 2 witnesses.
8. I have heard Shri S. K. Bansal, Ld. Counsel for the plaintiff and Shri Manish Biala, Ld. Counsel for the defendant. In the course of T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 13 of 122 14 arguments ld. counsel have copiously read from the pleadings and the evidence on record. A catena of case law has been cited by the Ld. Counsel in support of their submissions. The defendant has also filed written submissions.
Arguments of plaintiff
9. Shri Bansal has opened his arguments with the statement that big fish cannot be permitted to eat the small fish.
10. FORCE is a registered trade mark and is also part of the trade name of the plaintiff. The plaintiff has sued for infringement as well as for passing off. The mark of defendant is FORCE10. The issue of deceptive similarity is an admitted fact.
11. Plaintiff is the owner of trade mark FORCE and the trade name in the name and style of FORCE FOOT WEAR Company. The plaintiff has acquired the trade mark by deed of assignment dated 01.06.1984 (Ex. PW 1/4). The user of the plaintiff is since 1947 through his predecessor/father. The sales figures on record have been from 1982.
12. The plaintiff who appeared as PW1 has not been cross examined visavis the assignment deed, whereas, the other witnesses T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 14 of 122 15 viz. his brothers have been cross examined by defendant regarding the assignment deed.
13. Rights flow from the factum of assignment. Recording of assignment by the Authority concerned only records the same and it does not and can not confer the rights. The plaintiff had applied for the recording of assignment deed with the RTM but the same has not yet been completed. There is evidence regarding this through the witness PW7.
14. The allegations of passing off are in para 9 and 10 of affidavit Ex. PW 1/A. The allegations of infringement are in para 6 of affidavit Ex. PW 1/A. Ex. PW 1/1 is trade mark of labels of plaintiff (four pages), Ex. PW 1/ 2, trade mark no. 214282B dated 13.03.1963 in respect of shoes and Footwear in name of Sh. Ahmad Miyan father of plaintiff trading as FORCE FOOTWEAR Company and Ex. PW 1/ 3 (colly) are the registration certificate and renewal certificates. Ex. PW 1/ 4 (collectively) is the assignment deed dated 01.06.1984 (assignment of trade mark along with goodwill of the Firm, FORCE FOOTWEAR Company). Ex. PW 1/5 is a hand written statement showing year wise sale from 1982 to 1999. The same is unimpugned as PW1 has not been T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 15 of 122 16 cross examined by defendant. Ex. PW 1/6 (collectively) are the various bills.
15. The definition of trade mark includes the trade name as well and even on the basis of trade name rival trade mark can be restrained.
16. The publication of advertisement in Deccan Chronicle dated 11.09.1985 is depicting trade name and trade mark of the plaintiff as well as the goods shows the wide name of the plaintiff. Documents at page 69, 70 of Guntur and 71 of Hyderabad shows the wide reach of the plaintiff. Other documents from Baglore, Vijayawada, Visakhapatnam also depict the same. Page no. 89 dispatch of CForms shows that plaintiff is also liable to pay sales tax. Document at page no. 91 shows t hat a distributor of liberty shoes in Trivendram is willing to sale the products of plaintiff on wholesale and retail basis.
17. Plaintiff has proved on record a number of documents showing consistent use of the trade mark and trade name. Ex. PW 1/9 (colly) are various documents received from various government agencies pertaining to income tax, sale tax etc and referred to the trade name of plaintiff. Some of the documents pertain to year 1962 & 1962.
18. Ld. Counsel for plaintiff has read the cross examination of PW1 T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 16 of 122 17 and stated that the case of plaintiff has been reinforced in the cross examination. The witness has not been questioned about the assignment and therefore that part of evidence and other aspects which have not been impugned in the cross examination are deemed to have been accepted as correct. These various aspects are trade name, income tax, sale tax, notices/assessment, invoices and bills. The merits of registration of plaintiff's trade mark have not been challenged.
19. The sales figures of plaintiff have not been challenged and the cross examination of PW1 and so also the various ITRs/sales Tax documents and assessment orders tendered by PW1 in his evidence. These documents corroborate the statement filed by plaintiff visavis his sales figures and thus by necessary implications established the same.
20. The evidence could either be positive or could be negative (non traversed deposition/documents).
21. Witness PW2 has been cross examined on the point of payment of consideration and the witness has stated that it has not been paid in his presence at the time of singing of assignment deed. This gives no mileage to the defendant as it is the factum of execution of assignment T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 17 of 122 18 deed which is relevant and section 91 and 92 of the Evidence Act are attracted. Even if for the sake of arguments the consideration is not paid but stipulated, the non payment does not vitiate the agreement and at the most gives a right of recover to the assignment. The witness has identified the signatures as well as the signatories.
22. The examination of PW5 strengthens and supports other witnesses and corroborated them in material particular. It sails in the same boat as far as the testimony of PW2 is concerned.
23. Some contradictions or omissions in evidence are bound to arise with the passage of time. These are very natural to a truthful witness. The deed of assignment when put to witnesses PW2 and PW5 in cross examination had been of 28 years of age. The fact that there are minor contradictions rather goes to speak about the genuineness and credibility of evidence of these two witnesses. These two witnesses are the witnesses to the preparation of the documents and therefore their testimony or apparent contradictions in fact are immaterial.
24. PW5 states in this cross examination about thorough discussion of the document of assignment between the parties goes to show consensusadidem.
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25. These two witnesses have not been cross examined if there is a dispute between the plaintiff and his brother or any other interested person visavis the deed of assignment. This omission is fatal to the defendant.
26. As far as the deed of assignment is concerned reading the testimony of PW1, PW2 and PW5 together goes to establish the deed of assignment and the defendant failed to impugn the same.
27. Invoice no. 386/1 dated 16.01.1984 is referred to. Another invoice no. 2 dated 1.04.1989 both bear the trade mark of plaintiff in the particular style.
28. Brand is something which is much more than a trade mark as it may include trade mark, trade name and emotions/values of the holder.
29. DW1, Sh. Adarsh Gupta, claims himself to be a partner of the defendant concerned. His existence as such has not been proved on record and he is merely a ghost witness. Para 2 to 6 of his oral evidence as contained in his affidavit Ex.DW1/A are only boasts or hyperbolic statements.
30. In the written statement in para no. 11 of reply defendant has taken the stand that it has been using the mark FORCE 10 since 1990. T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 19 of 122 20 In para 6 of Ex.DW1/A the third lines reads as: "Atleast since the year1990". Further in his cross examination on 07.08.2012 the witness states that the trade mark has adopted in the year 1991. These variable statements by themselves place a question mark as regards the date of usage of the mark by the defendant. The 'adoption' and 'usage' are quite different things.
31. Paras no. 9, 10 and 11 of Ex.DW1/A have been read over to point out the infirmities in the same and it is submitted that these discredit the testimony of DW1.
32. The defendant has placed reliance on certain computer generated third party documents. These documents cannot be relied upon for want of a certificate under Section 65 B of the Evidence Act.
33. The evidence of DW1 as recorded on 25.05.2012 by way of cross examination goes to show that the same establishes that there are no accounts or tax returns of defendant regarding its trade mark in issue. The witness DW1 has been washed away in his cross examination. The cross examination also shows that the evidence of witness is based on hearsay. It also shows that even if it is presumed that the mark FORCE10 was adopted in the year 1990 no market T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 20 of 122 21 survey or search was done by the defendant. It also shows that at a particular point of time (date not mentioned) the defendant had the knowledge of the plaintiff's trade mark yet it continued with the trade mark FORCE10. The bills are only from 2003 onwards and they are computer generated and not proved in accordance with law.
34. The witness DW2 has admitted in his cross examination that the defendant has hundreds of distributors/dealers spread over India which goes to establish the document tendered in evidence by the plaintiff regarding inquires from one of the distributors/dealer of plaintiff in Kerala showing interest in the defendant's products.
35. The DW1 in his cross examination dated 25.05.2012 has stated that there are about 1415 partners in defendant concern. This shows that he is not aware or his statement is not true.
36. At many places when DW1 has been cross examined he has stated that he can produce the documents. First of all it was the duty of the defendant to produce the documents on which it sought to rely and it is not for the court to ask him to produce the documents to prove his own case.
37. The cross examination of DW1 shows that the search in the T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 21 of 122 22 office of RTM and market search are mutually destructive statement.
38. There is no evidence to prove the sale under the trade mark by defendant from 1991 and at the most the sale documents are from 2003 onwards. CA certificates do not make out any credible evidence in itself.
39. In his cross examination dated 07.08.2012 the witness DW1 had admitted 'It is correct that the mark FORCE and FORCE 10 are identical and similar'. Goods are also same/similar. Thus the point of plaintiff is clinched.
40. Para 10 of the Ex.DW1/A and the cross examination on 07.08.2012 show apparent contradiction. Cross examination of DW1 in the later part of 07.08.2012 is self evident on the aspect of search by the defendant regarding plaintiff's mark and appreciating the same in totality shows the hollowness on the defendant's part.
41. No defence of lack of territorial jurisdiction has been taken by defendant no. 1 in his cross examination. The later part of cross examination dated 07.08.2012 of DW1 clinches the aspect of territorial jurisdiction. Document Ex.DW1/P2 has been admitted by DW1 and this shows the sale in Fatehpuri, Delhi. T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 22 of 122 23
42. Ex. DW1/P1 shows that the trade mark of plaintiff as a registered trade mark.
43. The case law relied upon by the plaintiff has been categorized as to the general principles of civil law as to the appreciation of pleadings, evidence and documents. The other category deal with the trade mark aspects.
44. The law laid down in R.V.E. Venkatachala Gounder Vs. Arulmigu Viswesaraswami and V.P. Temple and Another AIR 2003 SC 4548 to cite that nonchallenge in crossexamination is fatal and thus one gets corroboration by one's own statements. In civil cases high preponderance of probability is enough. There is difference between burden of proof and onus of proof. Burden never shifts whereas onus is a continuous shifting process. Once high degree of probability established onus shifts on defendants. Defendants never discharged its onus. High degree of probability is enough even when there is no direct evidence. It is submitted that in the instant case direct and high degree of evidence establishing high probability is available.
45. Case of Syed Askari Hadi Ali Augustine Imam and Another versus State (Delhi Administration) and Anr. (2009) 5 SCC 528 has T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 23 of 122 24 been relied upon to bring home the point that standard of proof in civil and criminal cases is different. In civil cases preponderances of evidence is enough.
46. If there is no cross examination on a particular point by the opposite party it must be deemed to have accepted truth of the statement. On this aspect law pronounced in Satyendra Kumar Sharma (Shri) vs. Shri Jitender Kudsia 2005 V AD (DELHI) 177 has been relied upon.
47. Plaintiff relies upon Azizullah Khan and Another versus Ghulam Hussein and Another AIR 1924 SIND 97 to cite that awareness can be imputed to an attesting witness to the nature of the documents specially when the parties to the document and the attesting witness are close relatives. This argument is to establish the Deed of Assignment.
48. The case law of Hari Om Vs. State (N.C.T.) 2010 III AD (DELHI) 504 has been relied upon to submit that minor contradictions are not material. Approach of the court ought to be to evaluate testimony as a whole and to see whether it appears to be true or not and whether witness truthful and trust worthy. Minor discrepancies are T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 24 of 122 25 natural, especially when witness comes from lower strata of society and has no temperament to match skills of the experienced lawyers.
49. In Bharwada Bhoginbhai Hirjibhai V/s State of Gujarat AIR 1983 S.C 753 it has been held that too much importance cannot be given to minor discrepancies. Discrepancies which do not go to the root of the matter and shake the basic version of the witness, therefore, cannot be annexed with undue importance. More so, when the all important "Probabilitiesfactor echo in favour of the version narrated by the witness. The Court has given detailed reasons for not giving importance to minor discrepancies. As held in Leela Ram (D) through Duli Chand V/s State of Haryana and Anr. AIR 1999 S.C.3717 evidence is to be considered from the point of view of trustworthiness and must inspire confidence. Thus the minor infirmities in the testimonies of the PWs in the present case do not shatter their testimony. In furtherance of the arguments reliance is placed upon Umapada Kayal v/s State of West Bengal. (2010) I SCC 161 and Pandurang Chandrakant Mhatre & Anr. v/s State of Maharashtra. (2009) 10 SCC 773 wherein it has been held that the witnesses cross examined on irrelevant issues and no cross examination in respect of T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 25 of 122 26 actual incidence must goes against the adversary.
50. Written documents cannot be impugned by oral evidence. In Roop Kumar Vs. Mohan Thedani 2003 (3) SCALE 611 it has been held that written documents can be proved/disproved only by writings itself. Section 91 and 92 of Evidence Act have been relied upon.
51. On the aspects relevant to the trade mark subject first case cited is Cinni Foundation vs. Raj Kumar Sah & Sons & Anr. 2009 (41) PTC 320 (DEL). It has been held that acquisition of title in Trade Mark is by virtue of assignment deed and not dependant upon assignment being registered. Registration of assignment is only to place on record the fact that title has been created. Rgistration by itself does not create title which already stands created on execution of assignment. Assignee immediately on assignment, i.e., by writing acquires rights. It is the act of parties which vests the title and not the registration thereof. On this aspect other case relied upon is M/s Modi Threads Limited vs. M/s Som Soot Gola Factory and Anr. AIR 1992 DELHI 4 wherein it has been held that during pendency of assignment Recordial proceedings, assignee can sue for infringement/passing off. Another case law which follows is Classic T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 26 of 122 27 Equipments (P) Ltd. Vs. Johnson Enterprises and Others 2009 (41) PTC 385 (DEL) which has pronounced that once assigned, assignor ceases to have rights. Collector of Central Excise Vs. Vikshara Trading & Invest. P. Ltd. 2003 (27) PTC 603 (SC) has been relied upon to cite that assignment not registered not fatal
52. The case of Laxmikant V. Patel Vs. Chetanbhat Shah & Anr. 2002 (24) PTC 1 (SC) has been relied upon to cite that trade Mark includes trade name. For passing off prior user and goodwill is necessary. Court will protect goodwill. Passing off will lie when defendants trade mark/trade name is calculated to deceive and divert business. Cause of action cannot be limited to the date of proceedings only. Court will have regard to the way business may be carried out in future. Probability of confusion is enough. Competitor in same business under same name/imitating name would cause injury. Law does not permit any one to carry on his business in such a way as to persuade customers into believing that goods or services belong to someone else or are associated therewith. Fraudulent intent of defendant is not material. Two basic considerations (a) honesty and fair play are basic policies of the world. (b) If deceptive/similar names are T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 27 of 122 28 adopted confusion would arise, customers would be diverted and injury would result.
53. Law pronounced in Heinz Italia & Anr. vs. Dabur India Ltd. 2007 (35) PTC 1 (SC) has been relied upon to submit that plaintiff has to establish prior user and registration prior in point of time is irrelevant. On similar lines follows the case of Pearl Appliances Private Limited vs. Jay Engineering Works Ltd., PTC (Suppl) (1) 390 (Del) wherein the plaintiff being the prior user and the defendant prior in registration since 1974 whereas the plaintiff subsequent in registration since 1983 but the defendant subsequent in use, the plaintiff was granted injunction.
54. In M/s Hitachi Ltd., Vs. Ajay Kumar Agarwal & Ors 1996 PTC (16) (DB) (DEL) DB, the principles of passing off have been discussed. It was a case Hitachi versus Hitachi in which the scripting style and language of trade marks were different and injunction was granted. It was also held that material date of accrual of cause of action is when plaintiff became aware of defendants use. B.K. Engineering Company Vs. U.B.H.I. Enterprises (Regd.) AIR 1985 DELHI 210 is a case of B.K versus B.K. - 81. B.K. Engineering had been the trade T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 28 of 122 29 name of plaintiff; B.K.-81 trade mark of defendant and U.B.H.I - trade name of defendant. It was found to be a case of marks being deceptively similar to trade name of plaintiff. The plea of delay and acquiescence was also rejected stating that there was nothing to show that plaintiff encouraged defendant to go ahead with the impugned trade mark. Defendant's arguments that B.K. is his mother's name did not find favour with the Court and it has held to be untenable. It has been held that likelihood of deception enough; trading must not only be honest but must not even be unintentionally be unfair.
55. Reliance has been placed upon N.R. Dongre and Others Vs. Whirlpool Corporation and Others AIR 1995 DELHI 300 to cite that passing off can be maintained even against a registered trade mark. A registered trade mark can be restrained in a passing off action [Section 27 (2)] based on prior user. Case of P.M. Diesels vs. Thukral Mechanical Works AIR 1988 Delhi 282 is not followed as Section 27(2) not considered therein.
56. In Elolora Industries Vs. Banarasi Dass Goela AIR 1980 DELHI 254 plaintiff's trade mark ELORA was confronted visàvis defendant's trade name ELLORA INDUSTRIES. It was held that T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 29 of 122 30 passing off is made out. The case discussed the entire law of passing off.
57. Relied upon is Girnar Tea and Another Vs. Brooke Bond (India) Ltd. 1990 (2) Arb. L.R 149 (BOM) (DB) in which it has been held that the persons to be deceived are purchasers of the goods; purpose of comparison is to determine essential feature of the mark; plaintiff protected even if for the moment a trader; plaintiff cannot be confined to present mode; sales and reputation cannot be confined to existing customers. It was held that the plaintiff is to be protected even if small dealer compared to giant defendant. Defendant's adoption was fraudulent as there is no explanation as to why he adopted. Defendant was aware of plaintiffs mark at the time of adoption.
58. Kumar Electric Works & Another Vs. Olympia Home Appliances (P) Ltd. 1992 (1) DELHI LAWYER 375 has been relied upon to cite that small fish can be protected against big fish; big fish cannot eat small fish. It is immaterial even if the defendant is a corporate giant.
59. Reliance has been placed upon M/s Hindustan Pencils Pvt. Ltd., Vs. M/s India Stationery Products Co., and Anr. AIR 1990 T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 30 of 122 31 DELHI 19 wherein it has been held that circumstances attending to the adoption of the mark by the defendant at the first instance are of importance. If user at inception is tainted, it cannot be purified subsequently. Revlon Inc., Vs. Sarita Manufacturing Co. 1997 PTC (17) 394 (DEL) has been relied upon to cite that if defendant for no good reason adopts plaintiffs prior marks adoption is dishonest and injunction to follow. Adverse inference to be drawn that it wants to cash on plaintiff's name and reputation. Even if defendant honest concurrent user injunction to issue even if inordinate delay. Interest of general public which is third party in the suit to be protected. Infringers who are aware of plaintiff's prior mark must be aware of the consequences that would follow. Any use by defendant after becoming aware of plaintiffs prior rights is at his own risk and peril.
60. The law pronounced in Bal Pharma vs. Centaur Laboratories 2002 (24) PTC 226 (Bom) (DB) has been cited to show that it is necessary for defendant to take out search. If no search is taken out prior to adoption and use, defendant's user is neither honest nor concurrent. If the defendant subsequently notices prior plaintiff's rights he cannot complain (a) at first instance defendant negligent (b) T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 31 of 122 32 had search taken out and found marked belongs to another and he continues to use it, it is at his risk.
Arguments of Defendant
61. The suit filed by the plaintiff is a counterblast to the rectification petition filed by the defendant in the year 1998, which fact has been very well admitted by the plaintiff in para 11 of the plaint. Thereafter, the proceedings which took place between the parties before the different Forums are as under: Date Details of Proceedings May The defendant filed rectification/cancellation petition 1998 before the Hon'ble High Court of Delhi for the cancellation of the mark "FORCE" of the plaintiff under the Registration No. 214282B in class 25. 27th July The plaintiff filed the present suit against the defendant 1999 before the Hon'ble High Court of Delhi.
14th Nov. The plaintiff also filed a rectification/cancellation 2000 petition for the cancellation of the Mark "FORCE10"
of the defendant" under the Registration No. 553998 (Word Mark) in class 25 before the Hon'ble High Court T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 32 of 122 33 of Delhi.
19th Jan. The Ld. Predecessor of this Hon'ble Court dismissed 2009 the plaintiff's application filed under Order 39 Rule 1 and 2.
21st Dec. The IPAB dismissed the rectification/cancellation 2010 petition filed by the defendant and allowed the rectification/cancellation petition filed by the plaintiff.
14th Feb. The Hon'ble High Court of Delhi stayed the order dated 2011 21st December 2010 passed by IPAB in a Writ Petition bearing WP(C) No. 946/2011 filed by the defendant on the very first date of hearing.
11th Jul. The Hon'ble High Court of Delhi dismissed the appeal 2011 bearing FAO No. 137/2009 filed by the plaintiff against the order dated 19th January 2009 passed by the Ld. Predecessor of this Hon'ble Court while dismissing the plaintiff's application under Order 39 Rule 1 and 2.
The Hon'ble High Court of Delhi also requested the Ld. T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 33 of 122 34 Trial Court to dispose of the present suit expeditiously within one year from the date of order in accordance with law.
62. The Writ Petition bearing WP(C) No. 946/2011 filed by the defendant against the order dated 21st December 2010 passed by the IPAB is still pending before the Hon'ble High Court of Delhi and the next date of hearing in the said Writ Petition is 20th February 2013.
63. The present suit was filed by the plaintiff in the year 1999 and as such is governed by the provisions of the Trade and Merchandise Marks Act, 1958. The Trade Marks Act, 1999 is not applicable in view of the Section 159 (4) of the Trade Mark, 1999 wherein it has been prescribed that "subject to the provisions of section 100 and notwithstanding anything contained in any other provision of this Act, any legal proceeding pending in any Court at the commencement of this Act may be continued in that court as if this Act had not been passed".
64. While dismissing the application of the plaintiff filed under Order 39 Rule 1 and 2, this Court very well opined that the relief T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 34 of 122 35 related to the grant of temporary injunction for infringement of trade mark cannot be granted to the plaintiff. The Ld. Predecessor also opined that the material placed on record including the bills/cash memos/vouchers and advertisements in newspapers etc. do not show that the plaintiff is manufacturing or marketing shoes under the trade name FORCE. Hence, the plaintiff is not entitled for any relief of passing off.
65. The plaintiff has no locus standi to file the present suit. The Assignment Deed on the basis of which the plaintiff is claiming to be the register proprietor of the trade mark FORCE under No. 214282B is not legal. The plaintiff is not the proper and authorized person and the suit has not been properly signed and verified. The suit also suffers from the infirmity of nonjoinder of necessary party namely Ahmed Miyan. The defendant has challenged the Assignment Deed of the plaintiff which is exhibited PW1/4 on the following grounds:
a) Not a registered document. It is merely a document which is signed by the plaintiff and his brother before filing the present suit. It is not even Notarized and attested by any public witness. T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 35 of 122 36
st
b) The alleged Assignment Deed was executed on 1 June 1984 and immediately thereafter, the plaintiff filed a TM24 before the Trade Marks Registry on 29th June 1984 for recordal of the plaintiff's name as the registered proprietor of the mark "FORCE" registered under No. 214282B in place of Mr. Ahmed Miyan. Admittedly, that till date the name of the plain tiff has not been registered in place of Mr. Ahmed Miyan and the said TM24 application is still pending till date. Section 44 (2) of the Act is clear that in case a document or instrument in respect of which no entry has been made in the register shall not be ad mitted in evidence by the Registrar or any Court in proof title to the trade make by assignment. The plaintiff relies upon the case law laid down in Soundarapandian Match Works Vs. M. Ja yarama Chetty and Others; PTC (Suppl) (2) 145 (Mad) and Cott Beverage Inc., A Georgia Corporation v. Silvassa Bot tling Company; 2004(29) PTC679 (Bom).
c) PW6 was summoned by the plaintiff to prove his registered trade mark. It is important to note that the registered trade mark FORCE exhibited PW6/A is in the name of Ahmed Miyan and T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 36 of 122 37 moreover, the letter dated 10th August 2011 Ex. PW6/B written by the Registrar of the Trade Marks Registry has been addressed to Ahmed Miyan instead of the plaintiff. These go to show that plaintiff is not the registered proprietor of the mark "FORCE" registered under No. 214282B.
d) The plaintiff has stated that they filed the recordal of the assign ment deed in 1984 but even after the span of 26 long years, the Registrar has not recorded the name of the plaintiff on the basis of the said Assignment Deed. Moreover, the plaintiff has not placed on record any material to show that he has ever commu nicated with the Trade Marks Registry for the recordal of the said assignment. The plaintiff has also not placed on record any document suggesting that the plaintiff has given any reminder to the Trade Marks Registry asking them why his name is not reg istered in place of Mr. Ahmed Miyan on the basis of the said As signment Deed.
e) In light of all these circumstances and as per the provision of Section 44 only an adverse inference can be drawn against the plaintiff and therefore, it can be easily said that the Registrar has T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 37 of 122 38 refused to register the name of the plaintiff in place of Mr. Ahmed Miyan on the basis of the said Assignment Deed exhibit ed as PW1/4.
f) Further, the plaintiff's trademark FORCE was removed from the Trademark Register in 1998 which fact has not been disclosed in the plaint by the plaintiff for reasons best known to him. There after, the Forms TM12 and TM13 were filed on 22nd February 1999 for renewal and restoration of the trademark removed from the register. It is noteworthy to mention that even at that particu lar time the requests were made in the name of M/s Force Footwear Co. and not in the name of the Plaintiff. Despite mak ing the request, even then no reminder/ communication was sent to the trademark registry with regard to recordal of the Assign ment Deed. This very fact clearly shows that the plaintiff was aware that the Assignment Deed was not considered by the Reg istrar of Trademarks for the reasons best known to him. There fore, the only an adverse inference can be drawn against the plaintiff and the plaintiff cannot claim any proprietary right over the said trademark FORCE on the basis of the Assignment Deed. T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 38 of 122 39
g) The Stamp Duty paid on the said Assignment Deed is not ade quate and, therefore, the same cannot be read as evidence in the present case. The consideration of the said Assignment Deed is Rs.1000/ and the Stamp Paper of Rs.10 had been used which is 1% of the total consideration amount. It is important to note that earlier the Stamp Duty was 8% of the total consideration amount and presently the same is reduced to 6% of the total considera tion amount. It is noteworthy to mention here that the Stamp Duty paid on the Assignment Deed of the trade mark was never 1% of the total consideration amount. It is a settled law that in struments not duly stamped are inadmissible in evidence, there fore, the plaintiff is not the registered proprietor of the mark "FORCE" registered under No. 214282B as claimed by him on the basis of the said Assignment Deed exhibited as PW1/4.
h) The plaintiff has also produced two witnesses, PW2 and PW5, to prove the said Assignment Deed dated 1st June 1984. They are the brothers of the plaintiff mentioned as. They have given con trary statements during their crossexamination as the PW2 has stated that the said Assignment Deed was executed in the pres T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 39 of 122 40 ence of other family members whereas the PW5 has stated that the said Assignment Deed was not executed in the presence of the other family members. The said two witnesses also admitted that no consideration amount was paid by the plaintiff to his fa ther at the time of execution of the said Assignment Deed which also establishes that the said Assignment Deed is forged and fab ricated by the plaintiff to file the present case. The Assignment Deed and reads in one of the paragraph that "in consideration of the amount of Rs.1000 paid by the said Assignee to the Assigner, receipt whereof the said Assignor hereby acknowledges" clearly shows that the said Assignment Deed is also the receipt of Rs. 1000 which is paid by the plaintiff to Mr. Ahmed Miyan. That PW2 and PW5 are also witness to the said receipt whereas in crossexamination they had admitted that no money transaction took place at the time of signing of the Assignment Deed. They have also admitted in their crossexamination that no money was paid by the plaintiff to Mr. Ahmed Miyan. Therefore, there was no consideration for the alleged assignment of trade mark. It is a settled law that an assignment of trade mark without any consid T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 40 of 122 41 eration is void abinitio.
66. The plaintiff is not successful in proving the issue no. 1 as he is not the registered proprietor of the trade mark FORCE. Therefore, the plaintiff has no locus standi to file a suit for infringement. The reliance can be placed upon 28 (1) of the Act which clearly states that the rights conferred by registration are given only to the register proprietor. The definition of Register Proprietor has been given in Section 2(1)(q) of the Act to read that "Register Proprietor", in relation to a trade mark, means the person for the time being entered in the Register as proprietor of the trade mark. Since the plaintiff name is not entered in the register as a proprietor of the trade mark FORCE registered under No. 214282B, his suit is without any authority.
67. As per Section 12(3) of the Act the Registrar has power to register more than one trade marks which are similar or identical to each other. The mark FORCE 10 of the defendant was duly registered by the Registrar without any condition and limitation on the basis of honest and concurrent use by the defendant. Prior to that the mark of the defendant was duly published in the Journal for inviting opposition by the general public. Nobody opposed the said mark of the defendant T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 41 of 122 42 and the same was registered. In the instant case, the defendant has been using the mark FORCE10 since 1990 and has acquired a considerable goodwill and reputation in the market and considering the volume of the business of the defendant, it can be easily said that the defendant is a honest concurrent user of the mark FORCE10 and is entitled to get the benefit of Section 12 (3) of the Act.
68. Section 28(3) TMMA provides that a registered proprietor of the trade mark cannot take an action for infringement of his trade mark against a registered trade mark which is identical or similar to his trade mark. Section 30 which defines the acts not constituting infringement and section 30(1) (d) clearly states that no infringement action lies against the registered proprietor. The defendant is supported by the followings judgments:
(i) P.M. Diesels Private Limited Vs.Thukral Mechanical Works; PTC (Suppl) (2) 863 (Del)
(ii) N. R. Dongre and Ors. Vs. Whirlpool Corporation and Ors.; AIR 1995 DELHI 300
(iii) Soundarapandian Match Works Vs. M. Jayarama Chetty and Others; PTC (Suppl) (2) 145 (Mad) T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 42 of 122 43
(iv) Micolube India Ltd. Vs. Maggon Auto Centre; 2010 (42) PTC 462 (Del.)
69. A plain reading of Section 28(3) and Section 30(1)(d) as well as the above mentioned case laws clearly state that a registered proprietor of the trade mark cannot file a suit for infringement of a trade mark against the registered proprietor. Without prejudice to the aforesaid, it is further submitted that the Plaintiff's claimed trademark under number 214282B is a mark registered in PartB of the register which is thus, a weak mark and prima facie a nondistinctive mark. Further, as per Subsection (2) of Section 29 of the Act, an injunction or other relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the court that the use of the mark of which the plaintiff complains is not likely to deceive or cause confusion or indicating a connection in the course of trade between the goods of the plaintiff and the goods of the defendant. Clearly, the Plaintiff has not been able to produce even an iota of evidence to show their use of the trademark FORCE and consequently any distinctiveness over the same. On the contrary, the defendant has produced voluminous evidence showing their extensive user of their trademark FORCE10 T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 43 of 122 44 which undoubtedly shows that the defendant's use of the mark FORCE10 indicates the source of the goods with the defendant only and therefore, there is clearly no likelihood of confusion or deception. Consequently, in light of subsection (2) of Section 29, the court shall not grant an injunction or other relief in favour of the plaintiff since there is no likelihood of confusion or deception due to the use of the mark FORCE10 by the defendant.
70. Coming to the issue no. 2 it is submitted that the present suit filed by the plaintiff is only an action for infringement of trademark and a plea of passingoff has been only generally taken in the plaint without any specific and particular allegations of passingoff. The plaintiff has clearly pressed for a plea of passingoff as an afterthought only after the defendant filed a petition for cancellation of the trademark "FORCE" of the plaintiff in the year May, 1998.
71. Even otherwise, the plaintiff has failed to establish a case for passingoff in his favour. The plaintiff has not filed a single document including invoice and bill evidencing that the plaintiff is in the business of manufacturing and marketing of footwear bearing the mark FORCE as stated by the plaintiff in his plaint. The plaintiff has not filed or T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 44 of 122 45 shown the product bearing the mark FORCE on any of his footwear or that he is manufacturing/selling the product with the mark of FORCE. While dismissing the temporary injunction application it was observed there is no material to support that the plaintiff is using the mark FORCE on any of the footwear.
72. In an act of passing off, there has to be following essential elements:
a) A person must be an owner of the mark on the basis of which he is claiming the relief under passing off.
b) The user of the mark must be prior in time as compared to the person who is passing off his goods as the goods of the other person.
c) The manner in which the other person has used his marks on his goods.
d) There has to be long, continuous and exclusive use of the mark.
e) The mark of person has acquired distinctiveness. There is great amount of reputation and goodwill which is attached to his mark. T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 45 of 122 46
f) The user of mark of the defendant is likely to deceive and cause confusion in the mind of general public and cause injury to be business reputation of the plaintiff.
73. The plaintiff has miserably failed to place on record any material or documents evidencing that he or his predecessor are using the mark FORCE on any of the footwear since 1947 as claimed by him in para 4 of the plaint. The PW1 has admitted during his crossexamination that he is not using the mark FORCE on any of his invoice. The PW1 further admitted in his crossexamination that he does not specifically mention the trade mark FORCE on any of his invoice. That one of the dealer of the plaintiff who is examined as PW3 also admitted that the bills which are filed along with his affidavit as exhibited PW3/1 to PW3/11 do not bear that the shoes are sold with the impugned mark FORCE. As mentioned herein above the user of the mark is an essence in an action of passing off and mere registration of a trademark without any user has no meaning. It is settled law that entire object of trademark law in conferring ownership rights by registration of trademark is that the trademark becomes distinctive qua the goods on account of the sale of goods with such trademark in the market. If there T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 46 of 122 47 is no sale, there does not arise the issue of distinctiveness, and mere registration without sales with the trademark does not entitle grant of relief of infringement or passing off. The plaintiff (PW1) and his dealer (PW3) have admitted that they are not using the trade mark FORCE on any of their invoice as well as on their products. Even otherwise, it could not have been difficult for the plaintiff to show sales of any products by them under the trademark FORCE had they had any. Therefore, it can be easily said that the plaintiff has no user of the trademark FORCE and has no distinctiveness over the said trademark and is therefore not entitled for any relief of passing off.
74. In support of the above argument the plaintiff relies upon the following judgments:
(i) Smithkline Beecham PLC. & Anr. Vs. Sunil Sarmalkar & Ors.; Delhi High Court Judgment on 05.10.2012 in CS (OS) No. 1181/2003.
(ii) Allergan Inc. & Anr. Vs. Intas Pharmaceuticals; Delhi High Court Judgment decided on 09.10.2012 in CS (OS) No. 1445/2003.
T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 47 of 122 48
(iii) Virumal Praveen Kumar vs. Needle Industries (India) Ltd. & Anr., 2001 (93) DLT 600.
(iv) Fedders Lloyd Corporation Ltd. & Anr. Vs. Fedders Corpora tion & Anr. 119 (2005) DLT 410.
(v) Santosh Devi and Ors. Vs. Ramesh Kumar and Ors.;
2007(34)PTC219(Raj)
75. The relief of passing off cannot be given without comparing the products of both the parties as well as the manner (over all get up) in which the mark is used by the defendant. The comparison is carried out in order to determine the deception or confusion caused to the general public. Since the plaintiff has not placed on record any product bearing the mark FORCE, therefore, no comparison can be done. More so, the plaintiff has admitted that he is not using the trade mark FORCE on any of his product as well as on his invoices, therefore, in the absence of user of the mark FORCE on the products as well as on the invoices, no deception or confusion can be caused in the mind of the general public. In support of the argument reliance is placed upon J.R. Kapoor vs Micronix India; 1994 PTC (14) 260.
T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 48 of 122 49
76. In an act of passing off, one has to prove that the product of the defendant has created confusion in the market in a way that the general public has been deceived by the defendant as he is selling the goods of the plaintiff. There is not even single document placed on record evidencing that the trade mark FORCE10 of the defendant has created any confusion among the general public. Moreover, the plaintiff himself has admitted during his crossexamination that he did not get any kind of communication either from a customer or from a member of a trade suggesting that the trade mark FORCE10 of the defendant had any nexus with the trade mark FORCE of the plaintiff. The plaintiff has further admitted during his crossexamination that he came to know about the trade mark FORCE10 of the defendant only after he received a notice from the Hon'ble High Court of Delhi pertaining to the rectification/cancellation petition filed by the defendant against the registered trade mark FORCE registered under trade mark No. 214282 B. The said admission of the plaintiff vehemently proves that he did not get any communication regarding the confusion or any kind of deception of the mark FORCE10 used by the defendant. Therefore, the plaintiff is not entitled for the relief of passing off. T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 49 of 122 50
77. The relief of passing off is an equitable relief and can be granted to a person who has come to the court with clean hands, honestly and his conduct is fair. In the instant case, the plaintiff has not come to the court with clean hands and suppressed material facts from this Court and therefore, the plaintiff is not entitled to any discretionary relief of passing off. The same can be seen from the following facts:
a) The plaintiff has stated falsely in the plaint that he is engaged in the business of manufacturing of footwear whereas the plaintiff has not placed on record evidencing that he has ever manufac tured any footwear with the impugned mark FORCE.
b) The plaintiff has withheld the very important fact that the Force Footwear Company was a partnership firm in which his father Mr. Ahmed Miyan, brothers and other relatives were partners. The plaintiff has filed the present suit as a sole proprietor of Force Footwear Company but he did not make any averment in the plaint that how a Force Footwear Company became a sole proprietor from the partnership firm. The plaintiff has concealed the said material from this Hon'ble Court for the reasons best T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 50 of 122 51 known to him. Therefore, an adverse inference could be drawn against the plaintiff.
c) The plaintiff has filed a Deed of Assignment which is false and fabricated and not legal, therefore, the plaintiff has approached the court with unclean hands.
d) That the plaintiff has concealed a material fact that the trademark FORCE was removed from the Trademark register and a request was filed for its restoration in Form TM13. There is not even a whisper of the same in the plaint for the reasons best known to the plaintiff. Therefore the plaintiff is not entitled for an equi table relief of passingoff on the ground of concealment of mate rial facts.
e) That the plaintiff has stated in para 8 of the plaint that the defen dant is not the proprietor of the trade mark FORCE10 in rela tion to footwears. The said averment is blatantly false and total ly contrary to the para 11 of the plaint where the plaintiff has stated and admitted that he received a notice of cancellation/rec tification filed by the defendant against the registered trade mark no. 214282B in class 25 of the plaintiff. It is noteworthy to T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 51 of 122 52 mention that in the said petition the defendant has categorically stated that he is the proprietor of the trade mark FORCE10 reg istered under the trade mark no. 553998.
f) The plaintiff has further stated in para 8 that the defendant is marketing footwear under the trade mark FORCE10 in Delhi and other parts of the country in a clandestine and superstitious manner i.e. without issuance of any invoice against sale. The plaintiff himself proved that the said statement made by him un der para 8 are false and frivolous. It is noteworthy to mention that during the crossexamination of DW1, the counsel for the plaintiff put a document exhibit as DW1/P2 which is an invoice issued by one of the dealers of the defendant. It may be noted that the said exhibited document came from the custody of the plaintiff and he put the same to the DW1 who admitted that the said invoice has been issued against the sale of his product bear ing the mark FORCE10.
g) That the present suit filed by the plaintiff is only an action for in fringement of trademark and a plea of passingoff has been only generally taken in the plaint without any specific and particular T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 52 of 122 53 allegations of passingoff which have been pressed as an af terthought only after the defendant filed a petition for cancella tion of the trademark "FORCE" of the plaintiff in the year May, 1998.
78. In support of the above arguments the plaintiff places reliance upon the following judgments:
(i) Udai Chand Vs. Shankar Lal and Ors. (1978) 2 SCC 209
(ii) S.P.C.V. Naidu Vs. Jagannath and Ors. (1994) 1 SCC1
(iii) Satish Khosla Vs. M/s Eli Lilly Ranbaxy Ltd. & Anr. (71) (1998) Delhi Law Times 1 (DB)
(iv) M/s Seemax Construction (P) Ltd. Vs. State Bank of India (AIR 1992 DELHI 197)
79. It is also important to note that plaintiff has filed documents which are exhibited PW1/9 are related to assessment of income tax and sale tax returns filed by the plaintiff. On examination of these documents, it can be seen that some of the documents are in the name of partnership firm called Force Footwear Company whereas the plaintiff has stated in the present suit as he is the sole proprietor of M/s T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 53 of 122 54 Force Footwear Company. The plaintiff has not filed any document on record to suggest as to how he became the sole proprietor of the partnership firm Force Footwear Company. The plaintiff has concealed that said fact and has intentionally not stated even an iota of the same in the plaint or any where during entire proceeding of the captioned matter, therefore, the plaintiff is not entitled for any equitable relief and an adverse inference should be drawn against the plaintiff and the present should be dismissed with exemplary cost.
Plaintiff's arguments in rebuttal
80. The objections taken up now as to the status of plaintiff, whether a partner or otherwise, is foreign to the pleadings in the matter. This fact has to be considered visavis the situation that parties have been litigating in different matter connected to the same subject matter and documents since long. No such defence had ever been raised in the written statement. No cross examination of witnesses of plaintiff on this aspect. This is so even when the documents and pleadings of plaintiff were filed much prior to the cross examination of PWs and were also in the knowledge of defendant on account of the said documents being in the file of matter before IPAB also. The counsel is T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 54 of 122 55 stating at bar that no such plea has been raised before IPAB also.
81. Taking the objection of defendant at face value regarding the non recordal of assignment by the RTM, the trade mark registration stands relegated to the original position where the father of plaintiff has registration in his favour as a proprietor. Thus, the objection regarding partnership pales into insignificance.
82. Notice can be taken of the fact that besides all the nittygritty of documents the father and siblings of the plaintiff ultimately form a family and these types of transactions/conduct are very common in Indian families businesses. In this matter, all the brothers of plaintiff have entered into the witness box and affirmed the assignment in their deposition. The objection as made by defendant is only an after thought. It is sketchy. No positive evidence has come from defendant on this aspect.
83. Right accrued by virtue of the assignment and not by the recordal of the same. Even without recordal or during the pendency of application for recordal the assignee can legitimately prosecuting his right by virtue of assignment.
84. The non recordal of assignment by RTM is for the reason that T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 55 of 122 56 file has been lost in the office of RTM and not due to any default on the part of the plaintiff. The proposition of law is that Act of Court shall prejudice.
85. The objection as to the deficiency in stamp duty on the assignment deed has been answered by filing an affidavit of making a payment of 10 times the amount of stamp duty and the same has been placed on record. Deficiency in stamp duty etc, is a matter between the court and the party concerned and the other side has no right except to raise on objection consequent to which deficiency can be made good.
86. Assuming though no admitting even if the infringement action is not made out, passing off action does subsist and can be the cause of action.
87. The aspect of honest concurrent user has been recognized by law but in a very limited domain.
i) Adoption and user must be honest.
ii) It must be concurrent
iii) There must be some user.
All the conditions must exist together. The absence of one would make the defence nonest. T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 56 of 122 57
88. Honesty on the part of defendant stands discounted on account of prior knowledge of the plaintiff's trade mark/trade name, no search of trade mark/trade name taken out by defendant. Once after becoming aware of plaintiff's trade mark from trade mark office any subsequent use by the defendant is at its own risk and defendant cannot use it as a cause in its favour. (DW1 has admitted in his cross examination that prior to adoption he went to Agra through investigator and the firm name was revealed in the investigation. DW1 has also admitted in his cross examination that the trade mark FORCE was appropriate without stating the basis for the same). Another circumstance in favour of plaintiff is that the defendant's distributors in Kerala/South India has already informed about some products under the brand FORCE.
89. User by defendant has been shown only by placing the advertisement on record. As far as the invoices are concerned only copies have been filed at very late stage and have been of the period 2003 onwards.
90. One other ingredient of honest concurrent user is that the parties are unmindful of the user and existence of the other. This is not the case visàvis the defendant.
T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 57 of 122 58
91. On the aspect of deceptive similarity of FORCE Vs. FORCE 10, the witness DW1 has admitted the similarity in his cross examination when he stated that, it is correct that the mark FORCE and FORCE 10 are identical and similar as per DW1'. This admission against the interest of defendant is fatal.
92. The objections as to no case of passing off have no legs to stand.
Sur Rebuttal
93. In surrebuttal, it has been submitted that the plaintiff has also belatedly attempted to file an affidavit to file the deficient stamp duty. The defendant objects to the same firstly, for the reason that this Court is not the proper forum for rectifying the deficient stamp duty since the Assignment Deed is a document which is filed with the Registrar of Trademarks and not this court and secondly, that the plaintiff cannot be permitted at this stage to file anything afresh document with an attempt to rectify a material defect over a document which is fundamental to the present proceedings. Without prejudice to the aforesaid, however, it is also submitted that this act of the plaintiff clearly amounts to an admission on their part that the Deed of Assignment as originally filed by them was improperly stamped being contrary to the provisions of T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 58 of 122 59 the Stamp Act and on this ground alone, the same ought not to be read into evidence.
94. Ld. Counsel for the defendant refuted the other arguments of rebuttal as advanced by the plaintiff and reiterated his earlier arguments and the case law cited. The case of Sun Pharmaceuticals Industries Limtied vs. Cipla Limited 2009 (39) PTC 347 (Delhi) has been relied upon to define the scope of section 44(2) TMMA as to the discretion of the court to be exercised in accordance with law and depending upon the facts and circumstances of each case.
95. No other point has been argued or urged. No other case law has been cited.
Findings & Reasons
96. I have considered the submissions made and the material on record. My findings on various issues are as under: Issue no.1 Whether the defendant is guilty of infringing the registered trademark of the plaintiff under number 214282B in relation to footwear in class 25? If so, its effect?
& Issue no.2 Whether the defendant is guilty of passing off the goods of the plaintiff by manufacturing the goods under the trademark FORCE 10? If so, its effect? OPP T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 59 of 122 60
97. I am taking up these two issue together on account of the evidence on these issues being interlinked; for the proper appreciation of evidence and to avoid prolixity.
98. Ld. Counsel for the plaintiff has cited a plethora of case law on the aspect of appreciation of pleadings and evidence. In fact the law pronounced in these judgments has become axiomatic and the same has been applied by me in the appreciation of the material on record.
99. To make the things explicit let me discuss some of the relevant aspects. In Smt. Rebti Devi vs. Ram Dutt AIR 1998 SC 310 it has held that once both the sides had lead the evidence question of onus of proof fades into insignificance. However it is to be kept in mind that onus is only the right to begin or open the evidence where as the burden of proof is the subsisting responsibility on the propounder. The distinction between the onus of proof and burden of proof has been brought out finely in the judgment of the Hon'ble High Court Delhi pronounced in UCO Bank vs. The Presiding Officer & Another 1999 LLR 1036 wherein it has held that 'burden of proving rests on the party who substantially asserts the affirmative of the issue and not T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 60 of 122 61 upon the party who denies it, for a negative is usually incapable of proof.'
100. Thus it is the settled law that in the course of trial the burden remains fixed or constant and never shifts or changes. It always remains on the propounder. Nevertheless, the onus of proof is dynamic and it keeps on shifting during the course of trial.
101. Hon'ble the High Court of Delhi in Kerala Agro Industries Corporation Limited vs. Beta Engineers 188 (2012) DLT 373 has been held that "...a civil case is decided on balance of probabilities. A civil court puts all the evidence which have been led in a melting pot so as to determine the final picture which has to emerge..."
102. Cumulatively, the above judgments have laid down the touchstone on which the evidence is to be tested.
103. The plaintiff has claimed infringement as well as passing off. Thus it is necessary to understand their fine features.
104. A fine distinction has been drawn between what are the salient distinguishing features of an action for passing off visàvis an action for infringement in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SUPREME T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 61 of 122 62 COURT 980 as under:
"...While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered, trade mark for the vindication of "the exclusive right to the use of the trade mark in relation to those goods" (Vide S. 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 62 of 122 63 conclusion that there is in imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the getup, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
29. When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of' trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide S. 21). A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 63 of 122 64 not already covered by the words "likely to deceive" and it has some times been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive ". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 64 of 122 65 ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff."
105. In Ruston and Hornby Ltd. v. Zamindara Engineering Co. AIR 1970 SUPREME COURT 1649 it has been held "In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passingoff actions."
106. In this case the trade mark of plaintiff is 'FORCE' whereas that of the defendant is 'FORCE 10'. The word 'Force' is also part of the trade mark of the plaintiff.
107. To prove his cause of action the plaintiff has to establish firstly that he is the registered proprietor (or simply being the prior in adoption and use for the relief of passing off) of the trademark and T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 65 of 122 66 secondly that the defendant has by its acts and omissions has infringed his trademark.
108. PW1 is the plaintiff himself and he has deposed about the ownership of trade mark by his predecessorininterest and the factum of assignment. He has tendered on record Ex.PW1/1 which is the registration certificate of trade mark/labels FORCE in favour of Ahmed Mian, the predecessorininterest of the plaintiff; Ex.PW1/2 is the registered trade mark FORCE of the plaintiff under no. 214282B in Class25 and its renewal is Ex.PW1/3; Ex.PW1/4 is the Assignment Deed in favour of the plaintiff of the Registered Trade Mark Force.
109. The cross examination of PW1 on the aspect of the assignment deed is conspicuous by absence.
110. PW1 has stated in his cross examination that the word 'FORCE' is his brand name; the name of his firm is FORCE FOOTWEAR COMPANY; the trade mark "FORCE" is also his trading style; the footwear manufactured by him are sold all over India; the trade mark "FORCE" is in use since 1947. The witness was asked since when he was using the trade mark "FORCE" to which he replied that he through his predecessors had been using the trade mark "FORCE" since the T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 66 of 122 67 year 1947 and that they had been using the said trade mark continuously since then.
111. Sh. Shamim Ahmad, one of the brothers of the plaintiff, is PW2. While during the cross examination of PW1 the defendant has not touched the aspect of the assignment deed at all, this witness has been extensively cross examined about the same.
112. PW2 has deposed about the execution of the assignment deed Ex. PW1/4. In his cross examination he stated that that the document Ex. PW 1/4 was signed at their residence; the document Ex. PW 1/4 was prepared by one lawyer and was signed at their residence; it was prepared at Agra. He had read the document Ex. PW 1/ 4 before signing.
113. Further in his cross examination PW2 was questioned about the monetary transaction as narrated in Ex. PW1/4. He stated that no money was paid to his father by the plaintiff; no such transaction of money had taken place at the time of signing of the document Ex. PW 1/4.
114. In his cross examination PW2 stated that he was present along with his brother Rais Ahmad, Naseer Ahmad, his father and other T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 67 of 122 68 family members. He denied the suggestion that the document Ex. PW 1/4 was not signed by him in the presence of his brother Rais Ahmad, Naseer Ahmad, his father and other family members. He also denied the suggestion that he had not signed the document Ex. PW1/4 or the document Ex. PW 1/ 4 does not bear his signatures. The handwriting at point X and Y in Ex. PW 1/4 is of his brother Naseer Ahmad but he volunteered to state that he was not sure about it.
115. PW2 further stated that the signature at point Z on Ex. PW 1/ 4 were his. PW2 stated that he was making the signature in the same manner as are at point A, B and C for last 16 years. He denied the suggestion that he had not signed the documents Ex. PW 1/4 at point Z. He admitted that his signatures on affidavit Ex. PW 2/A at point A, B & C are different from his signatures on Ex. PW 1/4 at point Z. He again said there was a resemblance. He stated that he could recognize the signature of his father. He denied the suggestion that the document Ex. PW 1/ 4 was never signed by him and his brothers or that the document Ex. PW 1/ 4 is forged and fabricated. He also denied the suggestion that no such assignment took place between the plaintiff and his father.
T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 68 of 122 69
116. The witness PW5 is Sh. Rais Ahmad another brother of the plaintiff who has deposed about the assignment deed Ex. PW1/4. He stated in his cross examination that he had been residing at 24/234, Nala Nai Basti, Agra (U.P.) since birth.
117. In his cross examination PW5 stated that the document Ex. PW1/4 was prepared by his father as Senior Partner at Agra. PW5 stated that the document Ex. PW 1/4 had been signed by him at his residence and that he had read the document carefully before signing it.
118. About the monetary aspect he stated that no money was paid by the plaintiff to his father. He admitted that no such transaction of money took place between the plaintiff and his father at the time of signing of the document Ex. PW 1/4.
119. PW5 stated in his cross examination that he was not sure whether the document Ex. PW 1/4 had been prepared by a lawyer. The document Ex. PW 1/4 was signed by him in presence of the plaintiff, his brother Shamim Ahmad and his father. He admitted that no other family member was present at the time of signing of the document Ex. PW 1/4. The handwriting at point X and Y on Ex. PW 1/ 4 is of his brother Naseer Ahmad. The document Ex. PW 1/4 was prepared at his T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 69 of 122 70 residence by his father in presence of him and his brothers Naseer Ahmad and Shamim Ahmad. The documents had been typed elsewhere by his father. He stated that document had been thoroughly discussed between his brothers and his father before signing it. He denied the suggestion that he had not signed the Ex. PW 1/4. He denied that the document Ex. PW 1/4 was never signed by him and his brothers. He denied the suggestion that the document Ex. PW 1/4 is forged and fabricated. He also denied that no such assignment took place between the plaintiff and his father.
120. It is the cardinal rule of appreciation of evidence that it has to be appreciated in totality to understand its true and correct import. Distinction is also to be drawn between the minor contradictions and major debacles so that one may not miss the jungle for the trees.
121. Now appreciating the evidence of these three witnesses on this touchstone on the aspect of the execution of the assignment deed Ex. PW1/4 it emerges that but for small variations or contradictions the evidence has remained consistent.
122. Not even a single question has been put to PW1 to impugn the said document and the testimony of PW1 visàvis this document is T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 70 of 122 71 entirely unchallenged. In the evidence of the PW2 and PW5 some contradictions as to who had drafted the said document; who all were present at the time of its execution and some differences in signatures have cropped it. The moot question is whether these discrepancies in themselves are sufficient to strike down the document or whether they are just natural to an ordinary human being whose memory may fade with the passage of time and he may not recollect the things in a picturesque fashion. While appreciating the evidence, it has to be kept in mind that these witnesses are ordinary persons from a small town and have been pitted against the skills of erudite lawyers. On the other hand, the event of execution of the document Ex. PW1/4 is as old as 28 years, thus the witnesses' testimony has to be appreciated in view of the considerable time lag. In this view of the matter the testimony of these witnesses is natural, free flowing and without blemish of being tutored.
123. I am not surprised by the contradictions. Rather I would have been shocked by the absence of contradictions. The absence of variations or contradictions would have ostensibly been suggestive of the witnesses being tutored. These contradictions are not material to T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 71 of 122 72 impugn the assignment deed Ex. PW1/4. These are minor tits and bits which do not malign the document. Thus on the basis of preponderance of probabilities the assignment deed is duly proved.
124. The ownership of the trademark has been claimed by the plaintiff basis on the basis of Assignment Deed purported to have been executed by the predecessorininterest of the plaintiff who is none other than his own father and also the original registered proprietor of the trademark and trade name.
125. The assignment deed has been challenged by the defendant on two counts. Firstly, it has not been registered by the Registrar of Trademarks and as such the bar of Section 44 TMMA is attracted and thus it cannot be read in evidence as conferring any right, title or interest in favour of the plaintiff. Secondly, even if the plaintiff is able to overcome the embargo of section 44 TMMA, there is no due execution of the assignment deed as well as due payment of the stamp duty as a sum of Rs.1000/ has been shown as the consideration thus requiring the payment of advalorum stamp duty at appropriate rates which were prevalent at the contemporary times. T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 72 of 122 73
126. The provision under section 44 TMMA reads as under:
"44. REGISTRATION OF ASSIGNMENTS AND TRANSMISSIONS:-
(l) Where a person becomes entitled by assign ment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Regis trar to register his title, and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register:
Provided that where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent Court. (2) Except for the purpose of an. application before the Registrar under subsection (1), or an ap peal from an order thereon, or an application under Sec. 56 or an appeal from an order thereon, a docu ment or instrument in respect of which no entry has been made in the register in accordance with sub section (1) shall not be admitted in evidence by the Registrar or any Court in proof of title to the trade mark by assignment or transmission unless the T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 73 of 122 74 Registrar or the Court, as the case may be, other wise directs."
127. The case of Soundarapandian Match Works vs. M. Jayarama Chetty and Others PTC (Suppl) (2) 145 (Mad) has been relied upon by the defendant to cite that Section 44 (1) TMMA that non registration of assignment by the Registrar renders the same inoperative and en forceable. On the other hand, another case cited by the defendant as Cott Beverage Inc., A Georgia Corporation v. Silvassa Bottling Company 2004(29) PTC679 (Bom) goes to aid the plaintiff as it has been held in that case that section 44 of TMMA does not create a bar for filing a suit by the assignee whose application is pending disposal for registration; it is in the discretion of the court whether to permit the said unregistered document in evidence or not; however, it cannot be said that the procedure of registration of assignment is a mere formali ty.
128. Sun Pharmaceuticals Industries Limtied vs. Cipla Limited 2009 (39) PTC 347 (Delhi) pronounces that "the assignee immediately on assignment i.e. by writing acquires title to the registered trademark. Section 45(2) couched in peremptory language, is however subject to a T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 74 of 122 75 direction to the otherwise of the court. The ultimate decision, therefore, is of the court, whether to admit into evidence or place reliance on any document of assignment or transmission of trade mark, inspite of the same being not entered in the Register. The legislature has thus after lying down the general rule of an unregistered document of assignment being not admissible in evidence, still left the discretion in the court, to be of course exercised in accordance with law and depending on facts and circumstances of each case. Section 45(2) appears to have been inserted more for the reason of ensuring the enforcement of Section 45(1). In the absence of Section 45(2), assignees of registered trade mark would not have bothered to apply for registration with the Registrar and which would have led to disputes as to who is the registered proprietor. It is in the nature of Section 35 of the Stamp Act prohibiting the courts from admitting into evidence documents not duly stamped. However, the intent there also is not to extinguish the rights under the documents but only to ensure collection of stamp duty. This provision is unlike that of Registration Act, where under there can be no conveyance of title without a registered document. For the same reason, the later part of Section T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 75 of 122 76 45(2), after providing for the prohibition provides "unless the court otherwise directs." Seen in this light the contention of the counsel for the plaintiff that there can be no hiatus and the title as registered proprietor cannot remain in abeyance is well founded."
129. The plaintiff has armored his arguments with a catena of case law. The case of Cinni Foundation vs. Raj Kumar Sah & Sons & Anr. 2009 (41) PTC 320 (DEL) has been relied upon to cite that the acquisition of title in trade mark is by virtue of assignment deed and not dependant upon assignment being registered as registration of as signment is only to place on record the fact that title has been created; registration by itself does not create title which already stands created on execution of assignment; assignee immediately on assignment, i.e., by writing acquires rights; it is the act of parties which vests the title and not the registration thereof. In M/s Modi Threads Limited vs. M/s Som Soot Gola Factory and Anr. AIR 1992 DELHI 4 it has been held that during pendency of assignment recordial proceedings, assignee can sue for infringement/passing off. Classic Equipments (P) Ltd. vs. Johnson Enterprises and Others 2009 (41) PTC 385 (DEL) has been cited to show that once assigned, assignor ceases to have T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 76 of 122 77 rights. Collector of Central Excise vs. Vikshara Trading & Invest. P. Ltd. 2003 (27) PTC 603 (SC) has been relied upon to cite that non registration of assignment is not fatal. In Mirgardshammar India Limited & Ors. vs. Morgardshammar AB 193(2012) DLT 238 (DB) it has been held that upon assignment the assignee becomes the owner of the trademarks and can even sue for infringement even before mark is registered by trademarks registry in his favour as a subsequent proprietor.
130. From the above discussion, the following points emerge as ax iomatic:
(i). Rights are created by execution of assignment deed and not by mere recordal of assignment by the Registrar;
(ii). Recording of assignment is not merely an empty formality and cannot altogether be ignored;
(iii). Courts in the facts and circumstances of a case may con sider whether to admit an unregistered assignment deed in evi dence or not.
131. Regarding the first objection of defendant the law cited by the parties clearly shows that there is discretion vested in the court whether T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 77 of 122 78 to consider the assignment deed sans the registration. As regards the second objection the plaintiff has tried to meet the same that it is ready and willing to pay ten times the deficient stamp duty payable to over come the objection and this would cure the defect. Per contra, it is submitted by defendant that the defect is not curable.
132. It is the settled law that even an insufficiently stamped document can be read in evidence for collateral purpose.
133. No statutory or case law has been cited before me to show that the defect of insufficient stamping is not curable. The raison d'etre which weighed with the Legislature not to admit the insufficiently stamped documents in evidence is to protect the interest of the Rev enue. One cannot deprive the Revenue of its legitimate dues on the one hand while seeking to enforce his rights through the legal system by banking upon an unstamped or insufficiently stamped document.
134. It is the duty of the Courts to balance the rights and obligations of the various stakeholders. There is no material on record to suggest that the nonpayment of appropriate stamp duty on Ex. PW1/4 is with a view to escape the payment of stamp duty. No such suggestion has been given. On the contrary the defendant has tried to set up a case that T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 78 of 122 79 the said sum of Rs. 1000/ as mentioned in Ex. PW1/4 was never paid. In that eventuality, the clause becomes redundant and superfluous. Considering the facts and circumstances and also taking cognizance of the fact that the document is as old as 28 years, in my view the interest of justice would be served if the plaintiff is afforded an opportunity to pay the maximum of stamp duty with the maximum of penalty envis aged under the law i.e. 11 times the stamp duty payable and on the pre sumption that the plaintiff would pay this amount by way of filing of nonjudicial stamp papers of the value of Rs. 880/ within 30 days henceforth, the document is considered as duly stamped. However the nonpayment as above shall amount to the withdrawal of the conces sion extended and the necessary consequences shall be bound to fol low.
135. Another aspect of the matter which is required to be considered is that both the trade marks viz. 'Power' in the case of plaintiff and 'Power 10' in the case of defendant are registered. A look into section 12 of TMMA shows the following position of law: T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 79 of 122 80 "12. PROHIBITION OF REGISTRATION OF IDENTICAL OR DECEPTIVELY SIMILAR TRADE MARKS: (1) Save as provided in subsection (3), no trade mark shall be registered in respect of any goods or description of goods, which is identical with or deceptively similar to a trade mark, which is already registered in the name of different pro prietor in respect of the same goods, or description of goods.
(2) Where separate applications arc made by different persons to be registered as proprietors re spectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the Registrar may defer the acceptance of the application or applica tions hearing a later date until after the determina tion of the proceedings in respect of the earlier ap plication, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any.
(3) In case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, lie may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 80 of 122 81 each other whether any such trade mark is already registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose."
136. While examining the instant issue this Court is conscious of the fact that it has no powers to sit in appeal over the act of the Registrar in registering the trade mark of the defendant and for the challenge of this nature, the remedy lies elsewhere.
137. The evidence of plaintiff as to when and how he noticed the violation of his trademark is relevant. This is necessary to dwell into for a variety of reasons including establishment of cause of action on the part of the plaintiff. Therefore let the evidence of PW1 be explored on this aspect.
138. In his cross examination PW1 had stated that he did not receive any kind of communication from either a customer or a member of trade to suggest that the trade mark "FORCE10" of the defendant had any nexus with his trade mark "FORCE". Here he volunteered to state that he used to go to the market himself and discovered that the defendant had also being using this trade mark "FORCE" which T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 81 of 122 82 affected his sales. PW1 stated that he came to know about the trade mark "FORCE 10" of the defendant for the first time when he had received a notice from the Hon'ble High Court of Delhi pertaining to cancellation/rectification petition being CO No. 10 of 1998 filed by the defendant against registered trade mark no. 214282B in class 25 belonging to the plaintiff. Before that he did not see or came to know about the use of the trade mark "FORCE 10". He stated that his business and reputation is suffering and that the said fact had been mentioned in para no. 11. PW1was asked as to what was the basis of that statement to which he replied that the retailers used to complain about the inferior quality of the defendant's product i.e. footwear sold under the trade mark "FORCE 10" and as a result, his reputation and business used to suffer.
139. PW1 further stated in his cross examination that there is no letter or any kind of communication from any retailer to suggest the inferior quality of the defendant's product being footwear under the trade mark "FORCE 10". Here he volunteered to state that all the complaints were received by him when he visited the market. He stated that he had received complaints from Shoes World, Hyderabad, Men's T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 82 of 122 83 Footwear, Hyderabad, Shoe Worked, Bangalore, Avdesh Enterprises, Bangalore. All these complaints were received by him only after the receipt of the notice of the Hon'ble High Court wherein the defendant sought cancellation/rectification of his trade mark "FORCE" registered under the no. 21422B in class 25. The witness was suggested that he did not receive any complaints as referred above which suggestion was denied by him.
140. The above evidence goes to show that the plaintiff is not categorical about the date of noticing the violation and about how he became cognizant of the violation of his trade mark. Admittedly he has not received any complaint from a customer. He states that he had received complaints from his retailers, but he has not produced any documentary evidence to support this plea like the written complaints, any complaint register maintained in his office in the course of business or any like evidence.
141. Later on the plaintiff/PW1 took a 'U' turn from his earlier stand when he stated that he came to know about the trade mark "FORCE 10" of the defendant for the first time when he had received a notice from the Hon'ble High Court of Delhi pertaining to T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 83 of 122 84 cancellation/rectification petition and that before that he did not see or came to know about the use of the trade mark "FORCE 10". The appreciation of the evidence of the plaintiff as comprehensively and in a meaningful manner shows that his cause against the acts of defendant stand on a very weak footing. He is groping in his dark about the genesis of the violation of his trade mark by the defendant. His version is based solely on his own and selfserving statement, which on the face of it does not inspire confidence.
142. PW1 is also silent about the nature of inferiority pointed out by the persons concerned about the goods of defendant under the brand 'Force 10'. He has pressed into service an opinion or inference without disclosing the basis for the same. No tangible material has been produced by the plaintiff before the Court to substantiate his claim except his oral version. He has not brought into the witness box any independent witness on this aspect.
143. PW3 is Sh. Inder Pal Singh whose testimony makes an interesting reading. PW3 stated in his cross examination that his business is in the name of Chadha Enterprises, of which he is one of the partners. PW3 stated that he had been dealing with the plaintiff for T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 84 of 122 85 the last about 67 years. He has been in the business of whole sale of shoes since 1972, when he joined my father and independently since 1975 after the death of his father. PW3 stated that he has a reasonable knowledge of the trade but could not say that he was a full grown expert.
144. PW3 had relied upon bill dated 31.12.05 Ex. PW 3/1, bill dated 24.11.2006 Ex. PW 3/2 , bill dated 02.02.07 Ex. PW 3/3, bill dated 23.04.07 Ex. PW 3/4 , bill dated 14.06.07 Ex. PW 3/5, bill dated 27.03.08 Ex. PW 3/6, bill dated 27.03.08 Ex. PW 3/7, bill dated 06.06.08 Ex. PW 3/8, bill dated 06.06.08 Ex. PW 3/9, bill dated 26.02.09 Ex. PW 3/10, bill dated 20.02.09 Ex. PW 3/11, ledger entry for the year 200506 Ex. PW 3/12, ledger entry for the year 200607 Ex. PW 3/13, ledger entry for the year 200708 Ex. PW 3/14 and ledger entry for the year 200809 Ex. PW 3/15. Ex. PW 3/1 to Ex. PW 3/ 11 are Objected to by the Ld. Counsel for defendant on the ground that the originals of the same are not filed. The carbon copies are shown which are maintained by the plaintiff. In my view, the carbon copies are admissible in evidence as they have been prepared by the same mechanical process and thus the objection is rejected. The T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 85 of 122 86 original bills received by PW3 from the plaintiff have not been shown and filed on record. Ex. PW 1/ 12 to Ex. PW 1/ 15 are objected to by the defendant on the ground that the same are ledger entries maintained by the plaintiff only and not by the PW3. This objection of defendant is sustained.
145. In his cross examination PW3 had stated that the bills exhibited as Ex. PW 3/1 to Ex. PW 3/7 do not bear the plaintiff's trade mark FORCE; the bill Ex. PW 3/1 to PW 3/ 11 do not describe that the shoes are sold under the plaintiff's trade mark FORCE.
146. PW3 had admitted the suggestion that the goods are supplied to him by plaintiff from Agra. The supplies are sent on orders which are verbal. Mostly the orders are given over the telephone. The person who delivers the goods gives a Receipt but he has not filed any such Receipt with his affidavit. He denied the suggestion that his business concern neither ever purchased any goods from plaintiff nor ever any goods were supplied by plaintiff. Chadha Enterprises works at Shop no. 79, Desh Bandhu Gupta Market, Karol Bagh, Delhi.
147. In his cross examination PW3 admitted the suggestion that the exhibits PW 3/1 to PW 3/11 are the office copies of the bills as per T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 86 of 122 87 record coming from the custody of the plaintiff. The Ex. PW 3/12 to Ex. PW 3/15 are not the records which are produced by him but they are coming from the plaintiff. He stated that he was not the author of Ex. PW 3/12 to Ex. PW 3/15. PW3 stated that he could make an attempt to bring the original bills corresponding to Ex. PW 3/ 1 to Ex. PW 3/11 subject to their availability. Later on he produced the originals of Ex. PW 3/1 to Ex. PW 3/11. He admitted that the bills Ex. PW 3/1 to Ex. PW 3/11 do not bear his signatures. He denied the suggestion that he had never sold the foot wears/shoes with the impugned mark FORCE or that he had not purchased any foot wears from the plaintiff.
148. Witnesses are the eyes and ears of the Court. It is the sacrosanct duty of a witness to depose truthfully so that the end objective of the trial, which is a search for the truth, is attained. Here the witness PW3 has not helped the Court in this process. A witness should not identify himself with the cause of any of the parties, but this witness has done so. He has produced the evidence, which is originating from the custody of the plaintiff. This puts a question mark on his independence and impartiality.
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149. The witness PW3 stated in his cross examination that that he did not know who has drafted the affidavit Ex. PW 3/A; he stated that he had signed the affidavit in good faith; he denied that he had filed the affidavit Ex. PW 3/A along with Ex. PW 3/1 to Ex. PW 3/15 in good faith as he has cordial relation with the plaintiff; he denied the suggestion that he was deposing on the behest of plaintiff on the ground of his cordial relation with him. Though the concept of 'falsus in uno, falsus in omnibus' (false in one, false in all) has no application in the Indian legal jurisprudence, the fact remains that the evidence of a witness has to be appreciated in totality to cull out its true import and meaning.
150. In the instant case, reading the evidence of PW3 as it is, his testimony does not inspire confidence as he is not the author of the documents tendered by him; most of the documents are coming from the custody of the plaintiff and in regard to the same PW3 is only a proxy of the plaintiff and he has stated that he had signed the affidavit in good faith thus showing that he is not the author of his own affidavit and has ostensibly signed the same on the dotted lines. Though he has denied the suggestion that he has deposed on behalf of the plaintiff on T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 88 of 122 89 account of having cordial relations, the circumstances point to the contrary. Thus his statement is belied and shown to be being without any substance. Ostensibly he has just appeared to support the plaintiff and in this process has tendered the record which belonged to plaintiff. Though the witness has denied the suggestion but considering his evidence in totality clearly indicates that he has come to help the plaintiff on account of sharing good relationship only and thus interested in the outcome of the lis.
151. Coming to the effect or likely/potential effect of the use of trade mark 'Force 10' on the plaintiff, on which aspect the evidence of PW1 assumes relevance to the context.
152. In his cross examination PW1 was asked if he could show from the invoices the use of the trade mark "FORCE" to which he replied that his all sales are under the brand of "FORCE". He stated that his bills/invoices do not mention the said trade mark "FORCE" on any invoice. PW1 also stated that he did not specifically mention the trade mark "FORCE" on any invoices as his brand is only FORCE. There is no invoice which bears the trade mark "FORCE". He denied the suggestion that he had never used the trade mark "FORCE" on any T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 89 of 122 90 product. In the cross examination PW1 stated that but for the use of trademarks FORCE10 by the defendant the sales as mentioned in para no. 7 would have increased to a large extent.
153. PW1 also stated in his cross examination that he had placed on record relevant income tax and sales tax documents to substantiate his sales as referred to in para no. 7 of his affidavit Ex. PW 1/5; the said documents are appearing from page no. 12 to page 52; these documents are also exhibited as Ex. PW 1/9 (colly.) from page 12 to 52. PW1 stated that he had not incorporated the details of the advertisement and sales promotion expenses incurred by him, however, he volunteered to add that the bills/invoices with regard to the sales expenses have been placed on record.
154. Ex.PW1/5 is a document showing sales figures of the plaintiff firm. In fact, it is only a statement of plaintiff and not an independent document. Ex.PW1/6 (Colly) are the advertisements in the newspapers, printing bills, letters and orders of various parties issued in favour of the plaintiff. Ex. PW1/8 are the sale bills. Ex. PW1/9 which is Income Tax documents and Sale Tax Assessments orders.
155. The defendant has taken a strong exception to the various tax T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 90 of 122 91 documents of the plaintiff wherein there is shift of the business entity as proprietorship at certain points of time and partnership at certain points of time, but it does not cut much ice in view of the fact that in Indian families the businesses are managed in such way that very fine confinement to the strict rules is seldom seen. With the corporatization of business, there is rigidity of formation of business entities. Thus the standards which may be followed by the defendant many not be strictly followed by plaintiff more so when in traditional families business is closely held contrary to the corporate culture where it is widely held. The evidence of DW1, which would be discussed subsequently, would go to show how even with corporate structure some aspects of the business are closely held through family partnerships vehicles etc. Thus this objection of defendant cuts no ice, when the continuous use of the trade mark is shown through the family. Had the other persons would have been some strangers the things would have been otherwise and the stake of the plaintiff to the trademark would have created ripples in his claim.
156. PW4 is Shri Vinod Kumar S/o Sh. Narain Dass, R/o E21, Kamla Nagar, Agra, U. P, who has been tendered into the witness box T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 91 of 122 92 on the aspect of promotional aspects of the plaintiff trade mark. In his cross examination he had admitted the suggestion that he was not the owner and proprietor of the firm M/s Narain Printing Press. He has been working in the said printing press for the last 30 years. He admitted that his father has been the owner and proprietor of the said printing press, who is still alive. He admitted the suggestion that the Ex. PW 4/1 was signed by his father. He denied the suggestion that he has nothing to do with the Ex. PW 4/1.
157. PW6 is Sh. Bandhu Ram who is Record Keeper from Trade Mark Registry, who is a summoned witness. He stated that he had not brought the complete record for the reason that some record has been lost and some proceedings are pending for reconstruction of various lost filed, but he did not know the exact particulars. He has proved the legal proceedings certificate dated 15.11.11 with respect to application No.214282 in Class25 as Ex.PW6/A. He has tendered the photocopy of the letter dated 10.08.11 along with photocopy of the envelope which was sent to Ahmed Miyan and the same was returned unserved, as Ex.PW6/B. This document was objected to by Ld. Counsel for the defendant on the ground of it being a photocopy and cannot be T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 92 of 122 93 exhibited; and it was observed that merely exhibiting a document does not amount to its proof in accordance with law. In my view the document Ex. PW6/A only goes to show that Shri Ahmed Miyan is the registered proprietor of the trade mark FORCE on the record of the Trade Mark Registry.
158. PW6 stated in his cross examination that he did not have any personal knowledge of the case of which he had brought the record; the entire record which was available has been brought by him and the above two documents are the only record available.
159. PW7 Sh. Rajesh Oberoi is the Assistant Examiner from Trade Mark Registry and has brought the summoned record pertaining to application no.554196 in Class25 and its opposition no. DEL T200/50435. He stated that he could not file the same or its copies on record as the law permits that certified copy of the same can be obtained. On this statement of witness ld. Counsel for plaintiff stated that he would apply for the certified copies and place the same on record and it be considered in accordance with law. In his cross examination the witness was asked if he had placed on record a certificate for use in legal proceedings under registration no. 214282B T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 93 of 122 94 dated 13.03.1963 for the trade mark "FORCE" to which he replied that he had placed on record a certificate for use in legal proceedings as referred above.
160. Now is the turn of the defendant's to pass the test of fire. DW1 is Sh. Adarsh Gupta. His examination in chief is contained in his affidavit which is Ex. DW 1/A. He tendered documents Ex. DW 1/1 to DW 1/5. Ex. DW 1/2 to Ex. DW 1/5 have been objected to by the Ld. Counsel for plaintiff as to mode of proof being photocopies. Ex.DW1/1 (Colly) which are magazines in which advertisements of defendant have been published; Ex.DW1/P1 which are documents relating to the defendant's trade mark running into 14 pages; Ex.DW1/P2 which is retail invoice/cash memo Ex.DW1/2 (colly) which are sales invoices and excise cum commercial invoices. Ex DW1/6 and ExDW1/7 which are Trade Mark Journal advertisement of application.
161. It is noteworthy that while recording the suggestions put to the witness DW1, the printer's devil has crept in. In most of the suggestions the word not is conspicuous by absence. If these are read verbatim, these do violence to both the parties and it is obvious that such could not have been the meaning. Hence, I have read and T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 94 of 122 95 comprehended them in their true constriction which is apparent from the nature of pleadings and evidence.
162. In his cross examination DW1 denied the suggestion that the defendant is a largest manufacturing and selling group in the filed of footwear; or that the defendant's plant is spread over 200 acres and they have 20 branches offices and 350 distributors and over 350 retail stores world wide; or that the defendant having employees over more than 5000 persons; or that he had submitted any detail as regards to the distribution network of the defendant; or that the defendant's products are known and sold globally; or that the defendant is among the top five manufacture of leather footwear; or that the defendant is selling its products outside the India; or defendant has filed any documents which reflects its sale outside India; or that the defendant has exported its product; or that the defendant is having a business worth Rs.300 Crores. These suggestions, according to their true construction, goes to show that the plaintiff is denying the nature, size and extent of the establishment of the defendant which the defendant has been denying.
163. The witness DW1 stated in his cross examination that the invoice no. 11750 dated 22.02.2008 has been issued by Group Company T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 95 of 122 96 Liberty Retail revolution Ltd, which is engaged in the business of retail sale. He denied the suggestion that the said invoice is false and fabricated and was not issued by the defendant. He stated that the said invoice is a computer generated invoice and it requires no signatures; these invoices are issued for retail sale depending on number of transactions and each transaction has separate invoice; each invoice bears TIN number issued by the State Govt. and respective sale tax is deposited on each invoice and sale tax returns are also filed periodically; he denied the suggestion that no sales tax return have been filed by the defendant company; or that the said invoice was ever filed with sale tax department or that he had ever done any sales tax assessment of the said invoices. He admitted the suggestion that he had paid sale tax against the said invoice no. 11750; and that he had paid sale tax by way of challan to the Sale Tax Department. He stated that he had not filed any documents with respect to defendant's sale tax return. He denied the suggestion that he had not done the Sales Tax assessment of the year 2006 or that he had done the sale tax assessment of any of the year. He stated that he was not aware the exact date/year of the issuance of the TIN number of the said bill; the bills are issued T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 96 of 122 97 with TIN number when TIN Number has come into effect; before TIN Number the invoices are issued by the defendant company; before TIN number Sales Tax or Central Sales Tax numbers were written on the invoices. He denied the suggestion that the defendant company not had any sale tax number prior to TIN number. He stated that the defendant has obtained sale tax number since fifties and have been paying necessary sale tax regularly.
164. DW1 further stated in his cross examination himself to be the partner of the defendant company since he was minor and become major in 1979 and since 1979 he has been the major partner. The firm came into existence in 1954 when he was not born and it was formed by founding partners late Sh. Dharam Pal Gupta, Late Sh. Purshotam Das Gupta and late Sh. Raj Kumar Bansal joined the firm in 1959 and now their legal heirs are partners in the defendant firm and are continuing its business under the defendant's firm.
165. Further in his cross examination DW1 stated that he had not filed any tax assessment orders and tax returns. He denied the suggestion that he had never paid any income tax on his income. He denied the suggestion that the invoices were prepared at one particular time and T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 97 of 122 98 the same was stamped at one place and at this stage he volunteered to state that these were computer generated documents and certified by the company.
166. DW1 stated that he is a director in Liberty Retail Revolutions Ltd. by which the invoices were issued. He has not brought the MOA and AOA of Liberty Retail Revolutions Ltd. but volunteered to produce the same. This document belongs to Liberty Group Company. There is a relationship between Liberty Footwear Company and Liberty Retail Revolutions Ltd. There is an agreement for such relationship since about 2003 when Liberty Retail Revolutions Ltd came into existence. Prior to 2003 the sales were also made by other group firms/companies including Liberty Enterprises, Liberty Group Marketing Division and Liberty Shoes Ltd. besides hundreds of distributors/dealers spread across India and out side India. No sales bills prior to 2003 seems to have been filed but the witness stated that he can produce the same.
167. The witness DW1 also stated in his examination that he relied upon documents Ex.DW1/6 which is a CA certificate certifying the sale and advertising expenses of the defendant, Ex.DW1/7(colly) no.8 T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 98 of 122 99 to 332, which are sales invoices, excise cum commercial invoices for the defendant's product; he also relied upon a power of attorney in my favour which is marked as Mark A.
168. DW1 stated in his cross examination that the Liberty Footwear Company is a partnership firm; there are about 1415 partners in the said partnership firm; the partnership firm is a registered partnership firm. DW1 stated that he had not brought the original partnership deed but volunteered to state that he could produce the same as per the directions of the court.
169. Further in his cross examination DW1 denied the suggestion that Liberty Footwear Co. is not a partnership firm and same is registered with the Registrar or that he is not the partner in the said partnership firm. The Liberty Group consists of several group companies/firm such as Liberty Footwear Co.,(Partnership firm), Liberty Enterprises (Partnership firm), Liberty Group Marketing Division (Partnership firm) and Liberty shoes Ltd. and Liberty retails revolutions besides others. He denied the suggestion that the above said group companies are not firms/companies at all. DW1 stated that they have not submitted the copies of partnership deed and companies related T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 99 of 122 100 documents but he can produce the same as per the directions of the court. He denied the suggestion that the defendant started their business in 1954 retail outlet at Karnal under the house mark Liberty. He stated that he has not filed any documents pertaining to year 1954 which reflects the initiation of the defendant firm under its house mark Liberty.
170. DW1 admitted the suggestion as correct that the suit has been filed against Liberty Foot Fear Company and not against the Liberty Retail Revolution Ltd. Liberty Retail Revolution Ltd is a group company and is engaged in retail sale of footwear. There is an agreement between Liberty Footwear Company and Liberty Retail Revolution Ltd and if required by the Court, the same can be produced. He denied the suggestion there is any agreement between the Liberty Footwear and Liberty Retail Revolution Ltd and stated that he did not remember the date and year of the agreement. The bills of Liberty Retail Revolution Ltd is produced as an evidence of the retail sale of the products bearing the mark Force10. He denied the suggestion Liberty Retail Revolution Ltd has authorized him to file the Invoices or that any resolution has been passed by the Liberty Retail T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 100 of 122 101 Revolution Ltd in his favour.
171. Witness DW1 also stated that being the Director of Liberty Retail Revolution Ltd and being a group company, he has access to the records of Liberty Retail Revolution Ltd. He admitted the suggestion that he had not filed any MOA and AOA of Liberty Retail Revolution Ltd.
172. The above cross examination of DW1 shows that it is without any specific direction or objective. In fact, the cross examination of DW1 is at many a times an antithesis of what the plaintiff needed to establish. The case of the plaintiff is that even being a big fish, the defendant has no right to encroach upon its goodwill, exploit his trade mark for its business propagation or gain unjustly on the goodwill of the plaintiff generated over the years. When the plaintiff has argued that a big fish cannot eat the small fish, it is cognizant of the fact that he is the small fish and the defendant is the big fish. Thus in the cross examination of the DW1 the purpose would have been served by eliciting questions about the undue advantage gained by the defendant by using the goodwill and reputation of the plaintiff to his detriment and to the advantage of the defendant. However as the cross T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 101 of 122 102 examination is selfexplanatory it fiercely tended to deny the very size, business model or sales of the defendant and thus it derailed itself on some of very relevant aspects. Thus the cross examination of DW1 has lost its focus from what the plaintiff was required to prove and on the contrary went with vengeance to challenge and deny each and statement made by the witness DW1. The plaintiff without challenging the bills tendered on record visàvis the sale of products under the trade mark 'Force10'could have used the situation to its advantage by establishing that the said sales were achieved by riding upon the goodwill of the plaintiff, however the bus was missed.
173. It is not the business of the plaintiff (and for that matter of the defendant) to question the business model or business process outsourcing of the defendant. Being prudent businessmen, it is open to both the plaintiff and the defendant to adopt the suitable business model commensurate with the scale and size of their business. On person's food may be other person's poison. What may be the suitable model for business for plaintiff may prove to be catastrophic for the defendant and viceversa. On a relative plane both the plaintiff and defendants are the best judge of their business model and none have the T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 102 of 122 103 right to challenge the wisdom of the other.
174. DW1 stated in his cross examination that the defendant has adopted Force10 mark in the year 1991. The mark Force10 was identified after doing the market research and was found appropriate for the range of sport shoes. He has filed an application for registration of mark Force10 before the Registrar of Trade Mark. DW1 stated that he did not remember correctly whether any search was made with the Registrar of Trade Mark prior to the filing of application. He denied the suggestion that the sales figure mentioned in the para 6 does not pertain to the sale of Force10 brand. He also denied the suggestion that he has not sold the products under Force10 brands during the year 199192. There is no sale bill of Force10 of the year 1991 but CA certificate certifying the sales figure is filed on record. He denied the suggestion that similarly for the subsequent years, there is no sale of Force10 brand from the year 1991 to 2002; or that the advertising expenses mentioned in para 6 of affidavit does not pertain to Force10 Brand. CA certificate certifying the advertising expenses for the brand Force10 from the year 1991 is filed on the record. DW1 stated that he did not remember whether the bills for the advertisement are filed or T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 103 of 122 104 not but several magazines and newspapers carrying the advertisement of the product and brand Force10 since 1991 have been filed on record. He denied the suggestion that in magazines and newspapers filed on record are registered with the statutory authority. Each and every newspapers and magazines filed on record is leading and respected publication of India and their registration numbers are duly mentioned on the back page of each of the magazines. He denied the suggestion that the copies of the magazines have been sent to statutory authorities.
175. DW1 admitted the suggestion that the mark Force and Force10 are identical and similar.
176. DW1 admitted the suggestion that Ex. DW 1/2 (page 1 to 29) contains promotional material including bag logo, artwork, booklets, brochures and carrybags and original sample of the same are not produced or that he had not brought the original of the Ex. DW 1/3, Ex. DW 1/4 and Ex. DW 1/5, however, the legal proceeding certificate of the same is already on the record. e denied the suggestion that no tax returns have been filed and no taxes have been paid on the sales figures shown in the Ex. DW 1/6 and he volunteered to state that the same are T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 104 of 122 105 not on record. Ex. DW 1/7 (page 8 to 332) are the computer generated Invoices and are duly certified by the Company; the seal belongs to the company and the concerned officer had signed the same. DW1 stated that he did not know the name of the officer. All the computer generated invoices are authenticated and generated by protected software; the applicable taxes are shown on the Invoices which are duly paid regularly and tax returns are filed timely and assessed time to time. He denied the suggestion that the computers are protected by the softwares and Invoices filed are not computer generated. He admitted the suggestion the application no. 554196 is still pending for registration since 1991. The defendant has filed this application through a Firm namely Delhi Trade Mark Company. DW1 stated that he did not remember whether any examination report for the said trade mark was issued by the trade mark registry. He denied the suggestion that the examination report was issued by the trade mark registry to him or that the application no. 554196 has been withdrawn. He stated that he did not know whether this application has been withdrawn in October, 2001 by the Registrar of Trade Mark.
177. DW1 stated that he did not know whether any examination T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 105 of 122 106 report dated 09.11.195 bearing the mark 214282 was issued to him under application no. 554196. He denied the suggestion that as per examination report dated 09.11.1995, he had any knowledge of plaintiff trade mark Force under no. 214282. He denied the suggestion that the plaintiff trade mark was registered on 09.11.1995 as per Ex. DW 1/ P1. DW1 stated that he had ascertained the continuous non use of the plaintiff trade mark no. 214282, therefore, he filed the rectification against the plaintiff for the said registration in the year 1998. He denied the suggestion that the plaintiff mark is in continuous use since its adoption till date. DW1 stated that he did not remember how he ascertained the non use of the mark by the plaintiff but an examiner was appointed to search and find out in the local market at Agra where the plaintiff is based but no evidence of use was found since adoption of the FORCE mark by the plaintiff. However, it was ascertained that the plaintiff might be using Force as a trading style but no legal existence was available at the establishment or in the market. DW1 stated the he did not recollect the name of the examiner. It was a written report but he had not filed the same, however he could produce the same. The search was confined to Agra only. He denied the T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 106 of 122 107 suggestion that the search was not conducted in Agra.
178. Further DW1 admitted the suggestion that the defendant is selling its product nationwide including the state of Delhi. It seems from the cash memo bearing serial no.398 dated 28.04.2012 that B.C. Enterprises is a dealer of our group and has sold Force 10 product produced by our group under the cash memo and the same is exhibited as Ex. DW 1/P2. He denied the suggestion that the trade mark Force obtained by Mohd. Ahmad Miyan is legal, valid and subsisting in the eyes of law. He denied the suggestion that the trade mark Force of the plaintiff is prior to the trade mark Force10 of the defendant and has been used continuously since its adoption till date. He denied the suggestion that the defendant has used the mark Force10 malafidely and dishonestly. He denied the suggestion that the defendant has no right to use the same. He denied the suggestion that the trade mark of the defendant is similar to the trade mark of the plaintiff.
179. DW2 Sh. Rajesh Oberoi is the Assistant Examiner from Trade Mark Registry New Delhi who is a summoned witness. The summon sent to witness for appearance and production of record is Ex. DW 2/C and DW 2/D. He had brought two legal proceedings certificate dated T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 107 of 122 108 24.05.2012 of the trade mark registrations no. 553998 in class 25(word mark), same is exhibited as DW2/A and trade mark no. 554494 in class 25 (Label) same is exhibited as Ex.DW2/B. Both the trade marks are registered in favour of defendants and the same are still valid and subsisting.
180. In his cross examination DW2 stated that he had not brought the complete file of Ex.DW2/A and Ex.DW2/B and volunteered to state that as per the Act and Rules he has brought the computer generated record available with the office and same are exhibited as Ex.DW2/A and Ex.DW2/B. He was questioned as to what are the source of the information of the above Ex.DW2/A and Ex.DW2/B to which he replied that he had brought the computer data history records of the said two exhibits which are duly certified by the Assistant Registrar of Trade Mark. When questioned as to what is the status of above Ex.DW2/A and Ex.DW2/B he stated that Ex.DW2/A is registered in favor of the defendant and valid up to 08.07.2015 and Ex.DW2/B is also registered in favour of the defendant and valid up to 15.07.2021.
181. As discussed above, both the plaintiff and defendant are the registered proprietors of the trade mark 'FORCE' and 'FORCE 10' T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 108 of 122 109 respectively. The trade name of the plaintiff is 'FORCE FOOTWEAR COMPANY' and that of the defendant is 'LIBERTY SHOE COMPANY'. Thus the plaintiff has its brand value which is repository of its goodwill and reputation in the trade mark 'FORCE' and trade name 'FORCE FOOTWEAR COMPANY'. On the other hand, it has come on record that the brand value of defendant is in its trade name 'LIBERTY FOOTWEAR COMPANY' and having its trade mark 'FORCE 10' amongst other trademarks. Trade marks of both the parties are registered.
182. The defendant has relied upon the case of Smithkline Beecham PLC. & Anr. Vs. Sunil Sarmalkar & Ors. MANU/DE/5025/2012 to cite that the plaintiff is under an obligation to prove its entitlement to the reliefs of infringement and passing off even in cases which are ex parte. The plaintiff is not entitled to judgment unless it proves its case.
183. The above judgment relied upon by the defendant pronounces the axiomatic position of law. I have summed up the legal position in the earlier paras of my judgment by citing the various case law pertaining the appreciation of pleadings and evidence. T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 109 of 122 110
184. The case of Udai Chand Vs. Shankar Lal and Ors. (1978) 2 SCC 209 has been relied upon by the defendant to cite the aspect of concealment of material fact or misrepresentation and its effect. Also cited is S.P.C.V. Naidu Vs. Jagannath and Ors. (1994) 1 SCC1 which has held that non disclosure of relevant and material documents with a view to obtain undue advantage amounts to fraud. Satish Khosla Vs. M/s Eli Lilly Ranbaxy Ltd. & Anr. (71) (1998) Delhi Law Times 1 (DB) has also been relied upon to cite that concealment and non disclosure disentitle plaintiff to the relief. Also relied upon is M/s Seemax Construction (P) Ltd. Vs. State Bank of India AIR 1992 DELHI 197 to cite that in case of suppression of material facts suit liable to be dismissed without going into the merits.
185. I am bound by the law laid down in the judgments relied upon by the defendant. However there is nothing to indicate that the plaintiff has pressed into service any material to deliberately way lay the Court or to suppress the material facts or documents. Whether the documents relied upon by a party do not support the stand of a party or do not propagate his case is a different matter altogether. There has to be dishonest element of concealment, falsehood or half truths which may T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 110 of 122 111 be cognizable and disentitle a party on this count. Weakness of pleas or documents not supporting a particular plea does not attract the mischief.
186. In all human endeavors absolute certainty is a myth. Thus in the legal jurisprudence, probability has been accepted as working substitute. The rival facts have to be tested in a relative manner, on the preponderance of probabilities and not in some absolute manner.
187. In view of the material on record, there is no room to hold that the plaintiff has in any way concealed or crooked as to gain some undue advantage. This plea of the defendant is thus rejected.
188. Further the case of Smithkline Beecham PLC. & Anr. Vs. Sunil Sarmalkar & Ors. MANU/DE/5025/2012 has also been relied upon by the defendant to cite that if there are no sales there cannot be distinctiveness; a trade mark has no meaning even if it is registered, unless it is used in relations to goods and/or services. A trademarks which drops out of the use, dies when there are no goods offered for sale as there is no use of the trademark. Trademarks cannot exist in vacuum. If there is nonuse for a long period of time the mark would loss its distinctiveness or the mark is then permitted to die for non user. T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 111 of 122 112 In another case relied upon by the defendant as Alegran Inc. & Anr. vs. Intas Pharmaceuticals MANU/DE/5186/2012 it has been held that sales being sine qua non to establish a case of passing off, the plaintiff cannot succeed in absence of the same.
189. The defendant has further relied upon the case of Veerumal Praveen Kumar vs. Needle Industries (India) Ltd. & Anr., 2001 (93) DLT 600 to cite that no case for injunction is made out by mere registration when there is long nonuser. The case of Fedders Lloyd Corporation Ltd. & Anr. Vs. Fedders Corporation & Anr. 119 (2005) DLT 410 is also on similar aspect. The law pronounced in Santosh Devi & Ors. vs. Ramesh Kumar & Ors. 2007(34) PTC 219 (Raj) pronounces that non user of mark for a long time disentitles the plaintiff from monopoly over the trademarks.
190. To counter the arguments of defendant plaintiff has relied upon Heinz Italia & Anr. vs. Dabur India Ltd. 2007 (35) PTC 1 (SC) to cite that it is sufficient if the plaintiff establishes prior user and that registration prior in point of time is irrelevant. The case of Pearl Appliances Private Limited vs. Jay Engineering Works Ltd., PTC T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 112 of 122 113 (Suppl) (1) 390 (Del) has also been relied upon on the aspect of prior user citing that in the case in hand the plaintiff being the prior user and the defendant prior in registration since 1974; the plaintiff subsequent in registration since 1983 but the defendant subsequent in use, the question of use got precedence over the aspect of registration and thus the plaintiff was granted injunction.
191. The defendant relied upon J.R. Kapoor vs Micronix India; 1994 PTC (14) 260 to cite that when the phonetic and visual effect of both the logos being not the same there is no question of confusion. The defendant has further relied upon P.M. Diesels vs. Thukral Mechanical Works AIR 1988 Delhi 282 in which case the provisions of Section 28(3) TMMA were found to be applicable as both the parties were the registered proprietor of identical trade mark "Field Marshel"
but in respect of different products.
192. To refute the defendant's arguments case of M/s Hitachi Ltd., Vs. Ajay Kumar Agarwal & Ors 1996 PTC (16) (DB) (DEL) DB, had been relied upon by the plaintiff to cite that in that case the principles of passing off have been discussed. It was a case Hitachi versus Hitachi in which the scripting style and language of trade marks T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 113 of 122 114 were different and injunction was granted. It was also held that material date of accrual of cause of action is when plaintiff became aware of defendant's use. Citing parallel visàvis the case in hand the plaintiff cited B.K. Engineering Company vs. U.B.H.I. Enterprises (Regd.) AIR 1985 DELHI 210 which is a case of B.K versus B.K. -
81. B.K. Engineering had been the trade name of plaintiff; B.K.-81 trade mark of defendant and U.B.H.I - trade name of defendant. It was found to be a case of marks being deceptively similar to trade name of plaintiff. The plea of delay and acquiescence was also rejected stating that there was nothing to show that plaintiff encouraged defendant to go ahead with the impugned trade mark. Defendant's arguments that B.K. is his mother's name did not find favour with the Court and it has held to be untenable. It has been held that likelihood of deception enough; trading must not only be honest but must not even be unintentionally be unfair.
193. Reliance has been placed by the plaintiff upon N.R. Dongre and Others Vs. Whirlpool Corporation and Others AIR 1995 DELHI 300 to cite that passing off can be maintained even against a registered trade mark. A registered trade mark can be restrained in a passing off T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 114 of 122 115 action [Section 27 (2)] based on prior user. In this case Case of P.M. Diesels vs. Thukral Mechanical Works AIR 1988 Delhi 282 is not followed as Section 27(2) not considered therein. Thus the reliance by the defendant on that case law is misplaced.
194. Plaintiff has also relied upon a catena of case law. In Ellora Industries Vs. Banarasi Dass Goela AIR 1980 DELHI 254 plaintiff's trade mark ELORA was confronted visàvis defendant's trade name ELLORA INDUSTRIES and it was held that passing off is made out. Plaintiff also relied upon Girnar Tea and Another Vs. Brooke Bond (India) Ltd. 1990 (2) Arb. L.R 149 (BOM) (DB) in which it has been held that the persons to be deceived are purchasers of the goods; purpose of comparison is to determine essential feature of the mark; plaintiff protected even if for the moment a trader; plaintiff cannot be confined to present mode; sales and reputation cannot be confined to existing customers. It was held that the plaintiff is to be protected even if small dealer compared to giant defendant. Defendant's adoption was fraudulent as there is no explanation as to why he adopted as the defendant was aware of plaintiffs mark at the time of adoption. The plaintiff also cited the case of M/s Hindustan T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 115 of 122 116 Pencils Pvt. Ltd., Vs. M/s India Stationery Products Co., and Anr. AIR 1990 DELHI 19 wherein it has been held that circumstances attending to the adoption of the mark by the defendant at the first instance are of importance; if the user at inception is tainted, it cannot be purified subsequently.
195. Plaintiff has also Bal Pharma vs. Centaur Laboratories 2002 (24) PTC 226 (Bom) (DB) has been cited to show that it is necessary for defendant to take out search and if no search is taken out prior to adoption and use, defendant's user is neither honest nor concurrent. In the same vein the case of Revlon Inc., Vs. Sarita Manufacturing Co. 1997 PTC (17) 394 (DEL) has been relied upon to cite that if defendant for no good reason adopts plaintiffs prior marks adoption is dishonest and injunction to follow; adverse inference to be drawn that it wants to cash on plaintiff's name and reputation. Even if defendant honest concurrent user injunction to be issued even if inordinate delay. Interest of general public which is third party in the suit to be protected. Infringers who are aware of plaintiff's prior mark must be aware of the consequences that would follow and any use by defendant after becoming aware of plaintiffs prior rights is at his own risk and T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 116 of 122 117 peril.
196. The case of N.R. Dongre and Ors vs. Whirlpool Corporation and Others AIR 1995 DELHI 300 has been relied upon by the defendant also. The case of Micolube India Ltd. Vs. Maggon Auto Centre; 2010 (42) PTC 462 (Del.) has been relied upon by the defendant stating that the ld. counsel for the plaintiff Sh. S. K. Bansal had represented the plaintiffs in the cited case. Case has been relied upon on the aspect that when both the parties have obtained registration in their favour regarding same trade mark and rectification application have been filed after the filing of the suit and none of the parties took the permission of the court before filing their respective application. Suit regarding the infringement stayed till the pendency of rectification application but the suit for passing of directed to continue.
197. 'Proof of pudding lies in the eating' goes the saying. Similarly the strength of a trade mark lies in its usage notwithstanding the factum of registration or no registration. On the other hand there is aspect of honest concurrent usage. Thus the respective rights and liabilities of the parties have to be weighed considering the overall circumstances. In these matters, the right of the consumer must also not go unheard in T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 117 of 122 118 the tug of war between the parties as it is also a stakeholder and it is for whom the bells toll.
198. In the case in hand as both the parties have used their respective trade marks on account of their respective registration, the question of infringement does not arise. If the plaintiff has not been able to get his recordal visàvis the assignment deed (on account of the file having been lost etc.) the same is for the reasons beyond its control and this fact should not be taken as a circumstance against him.
199. As far as the evidence on record goes to show in its cumulative effect, the adoption of trade mark 'FORCE 10' by it does not appear to be tainted with an element of dishonesty. It has carried out the investigation prior to its adoption as per DW2 and it has not been suggested to him that the trade name of the plaintiff and its trade mark 'FORCE' figured in the search investigation and despite being cognizant of the same the defendant continued with the adoption of the said trade mark. Thus the element of dishonesty on the part of defendant is conspicuous by absence.
200. If the trade mark of the plaintiff 'FORCE' has behind it the support of the goodwill and reputation of its business concern 'FORCE T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 118 of 122 119 FOOTWEAR COMPANY' the defendant also sails in the same boat. Behind its trade mark 'FORCE 10' is also the goodwill and reputation of its business concern 'LIBERTY FOOTWEAR COMPANY'. It has come in evidence that it has an extensive sales network and outlets. The plaintiff has only given suggestion to refute the defendant's stand but has brought nothing tangible to displace the same. The plaintiff has in so many words admitted to be the giant against whom he has been pitted saying that the big fish cannot eat the small fish.
201. The plaintiff has not brought on record the evidence of any customer who has been taken for a ride by taking the goods originating from the defendant as if they have any association with the plaintiff. The evidence as led on record does not cut much ice in favour of the plaintiff, despite he being the prior adopter of the mark 'FORCE' and the mark of the defendant 'FORCE 10' being the same/similar. It appears that the scale of operation, the trading channels and brand equities of the plaintiff and defendant are so different that the passing off is ruled out in practical terms, though it may have its presence for academic interests on account of phonetic and visual similarity of the rival trade marks.
T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 119 of 122 120
202. Passingoff is a remedy which is based in equity. Considering the outcome of the entire evidence on record, in the facts and circumstances of the case, it cannot be said to be a case of per se passing off on the part of the defendant.
203. However it cannot be denied that the mark 'FORCE 10'of the defendant has a potential of the playing the mischief as due to its visual and phonetic similarity can likely to cause confusion and deception. The factum of registration of trademark is only a shield for the defendant, it cannot be used as a sword. More so, notwithstanding the tugofwar between the parties to the lis, the concerns of the main stakeholder i.e. the ultimate consumer or the public at large must be answered.
204. These issues are answered accordingly.
Issue no.3 If issue no. 1 or issue no. 2 or both of them is/are proved in affirmative, whether the plaintiff is entitled to a decree for delivery up as prayed in prayer clause iii of the plaint? OPP & Issue no.4. Whether the plaintiff is entitled to a decree of rendition of accounts as prayed for in prayer clause iv of the plaint? OPP
205. In view of my findings on the above issues, no tangible or T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 120 of 122 121 perceptible damage has occasioned to the plaintiff on account of the acts and omissions of the defendant, the plaintiff is not entitled to the any relief of delivery up etc. of infringing material or for rendition of accounts. Hence these issues are answered against the plaintiff.
Issue no.5. Relief
206. It is not only the power of the Court but also its sacrosanct duty to mould the relief to meet the ends of justice. This is more so relevant when the court has to protect the public at large so that the consumer is not taken for a ride.
207. In view of my findings on the above issues and in order to safeguard the interest of the plaintiff and also to ensure that the consumers take an informed decision in the matter it is directed as under: "The suit of the plaintiff is decreed thereby passing a decree of mandatory injunction against the defendant, its associates, assigns, agents, administrators etc. that whenever using the trademark 'FORCE 10' on any of its products, packagings, advertisements or T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 121 of 122 122 promotional material etc. the caution that 'the trade mark FORCE 10 has no connection with the trade mark FORCE of FORCE FOOTWEAR COMPANY, AGRA' be printed conspicuously. The caution be printed in a font size of not less that 12 of the font TIMES NEW ROMAN or an equivalent font which is easily readable."
208. The suit of plaintiff is partly decreed in the above terms.
209. Parties to bear their own costs.
210. Decree Sheet be drawn accordingly.
211. File be consigned to the Record Room.
Announced in the Open Court today on 04th day of December 2012 (Man Mohan Sharma) ADJ (Central)1, Delhi T.M. No. 97/2011 Naseer Ahmad vs. Liberty Footwear Company Page 122 of 122