Delhi High Court
Mrs. Rajnish Aggarwal & Ors. vs M/S. Anantam on 26 November, 2009
Author: Manmohan Singh
Bench: Manmohan Singh
* HIGH COURT OF DELHI : NEW DELHI
+ I.A. No. 4251/2009 in CS (OS) No. 602/2009
Reserved on : November 10, 2009
% Decided on : November 26, 2009
Mrs. Rajnish Aggarwal & Ors. ...Plaintiffs
Through : Mr. R.K. Aggarwal with Mr.
Natwar Rai and Ms. Sujatha,
Advs.
Versus
M/s. Anantam ...Defendant
Through : Mr. Sunil Sabharwal, Adv.
Coram:
HON'BLE MR. JUSTICE MANMOHAN SINGH
1. Whether the Reporters of local papers may
be allowed to see the judgment? No
2. To be referred to Reporter or not? Yes
3. Whether the judgment should be reported
in the Digest? Yes
MANMOHAN SINGH, J.
1. By this order, I shall dispose of I.A. No. 4251/2009 filed by the plaintiffs under Order 39 Rules 1 & 2 read with Section 151 of the Code of Civil Procedure, 1908.
2. The present suit has been filed for perpetual injunction restraining passing off and infringement of trade mark, rendition of accounts, damages etc. Plaintiff no. 1 is a permanent resident of Delhi and is the sole proprietor of the trade mark „Anantam‟ registered under CS (OS) No. 602/2009 Page 1 of 15 No. 1248372 dated 7th November, 2003 in Class 24 and No. 1254084 dated 9th December, 2003 in Class 25 with regard to all kinds of readymade garments like handkerchiefs, dhotis, tissues(piece goods, bed and table covers), lungis etc. The business of these goods is being carried out from the trade mark „Anantam‟ from the residence of plaintiff no. 1 which is C-2/29, Model Town, Delhi- 110009.
3. The plaintiff no. 1 has been using the said trade mark since September, 2003. From 1st April, 2004 a partnership firm was constituted by plaintiff no. 1 along with plaintiffs no. 2 and 3 who are her son and daughter respectively and together, the plaintiffs opened up a showroom of readymade garments and apparel in shop no. 8-9, First Floor, Metropolitan Mall, MG Road, Gurgaon, Haryana. A partnership firm by the name of M/s. Anantam was thus created, and the same is plaintiff no. 4 herein.
4. The plaintiffs have submitted that the name Anantam slowly became synonymous for quality, durability and the latest designs so much so that people from all over India and abroad became its customers and with time, plaintiff no. 1 has come to be referred to as Anantam. Further, the plaintiffs‟ products have been advertised on television too. The news channels AAJ TAK and NDTV have taken video shots of the plaintiffs‟ outlet and have aired the same. The increase in sales of the plaintiff no. 4 firm has been from Rs. 1,53,74,331.25 in 2004-05 to Rs. 3,48,50,644/- in 2007-08 i.e. more than double in four years. The plaintiffs have acquired a vast amount of goodwill by the name of CS (OS) No. 602/2009 Page 2 of 15 Anantam.
5. Some time in April, 2007 when an employee of the plaintiffs went to purchase raw material from the market, the same was refused by shopkeepers who stated that the plaintiffs‟ branch at Jaipur had defaulted in making certain payments and hence, the plaintiffs could not purchase any material. The plaintiffs then sent a legal notice dated 5th May, 2007 to the defendant and the defendant replied vide letter dated 6 th August, 2007 stating that it had been using the trade mark Anantam since 2005 with respect to readymade garments, jewellery, purses etc. Due to the continuing wrong of the defendant, the plaintiffs sent another legal notice dated 19th December, 2008 to the former stating that if it did not cease its infringing activities and replied within a week, the plaintiffs would initiate legal proceedings against it. Since no reply was sent by the defendant and the infringing activities continued, the present suit was filed.
6. In the present application, the plaintiffs have submitted that the use of the registered trade mark „Anantam‟ by the defendant in relation to readymade garments, perfumes, watches, hosiery etc. infringes valuable rights of the plaintiffs as sub-standard goods are being sold which are of the same classification, nature and description as the plaintiffs products and in fact, are being sold under an identical mark as the plaintiffs. The use of the mark „Anantam‟ is only to cause confusion and deception in the mind of purchasers and therefore the same is mala fide.
CS (OS) No. 602/2009 Page 3 of 15
7. Further, the defendant‟s reply dated 6th August, 2007 to the plaintiffs‟ legal notice dated 5th May, 2007 states that registration of the former‟s trade mark is pending in Classes 35 and 42. The plaintiffs submit that they will take necessary action and file an opposition to the defendant‟s application.
8. It is the plaintiffs‟ contention that use of an identical mark in respect of goods which are similar in classification and description would surely deceive and confuse the ultimate purchasers. There is no doubt that a person, while buying the goods of the defendant, might think that he/she is in fact buying the plaintiffs‟ goods.
9. It is on account of the defendant‟s deliberate and mala fide use of the plaintiffs‟ registered trade mark that the plaintiffs have filed the present application for an ad-interim injunction restraining the defendant from infringing the plaintiffs‟ trade mark and from passing off its inferior quality goods as those of the plaintiffs. The plaintiffs have also prayed for damages. The plaintiffs submit that balance of convenience is in their favour as they are the prior users of the registered trade mark and prima facie case has also been established. Further, they would suffer irreparable loss and injury if the defendant did not cease production, marketing and sale of its goods under the name „Anantam‟.
10. In its reply, the defendant has stated that the plaintiffs‟ suit ought to be dismissed on account of various reasons mentioned in detail in the written statement. Firstly, the suit as filed by plaintiffs no. 2 to 4 is not maintainable as the plaint has been neither signed nor verified by CS (OS) No. 602/2009 Page 4 of 15 them, nor has any counsel been appointed to represent them. Secondly, plaintiff no. 1 has not authorized the other plaintiffs to use the trade mark registered exclusively in her favour. Thirdly, the present suit has been filed against a non-juristic person as M/s. Anantam is a proprietary concern and neither a legal entity not a juristic person, hence the suit ought to be dismissed. Further, the plaintiffs have concealed material facts from the court as the defendant had informed them about its pending registration applications in its reply dated 6 th August, 2007 and instead of filing an opposition, the plaintiffs kept tracking the progress of the defendant‟s applications and when a certificate of Registration of Trade Mark was issued under No. 1506086 by the Registrar of Trade Marks on 21st November, 2006 (only with regard to class 35) the plaintiffs decided to harass the defendant with the knowledge that the defendant‟s trade mark was under a different class which had no connection to the plaintiffs‟ registered trade mark, which was in totally separate classes. Lastly, the plaintiffs have not complied with the provision contained in Order 39 Rule 3 (b) of the CPC.
11. On merits, the defendant has argued that a perusal of the plaintiffs‟ registered trademarks would show that the name „Anantam‟ has been granted in its simple form without any logo. The trade of the defendant is covered under Classes 35 and 42 and that of the plaintiffs under Classes 24 and 25, which itself reveals the difference between the two. The defendant has contended that the partnership Anantam has been carrying on its work without any legal consent from the concerned CS (OS) No. 602/2009 Page 5 of 15 authority and hence, the same is illegal. Further, the goods being traded under the name „Anantam‟ are the goods of other manufacturers and therefore, their receptivity with the clients does not establish the plaintiffs‟ reputation at all.
12. As per the defendant, its use of the word „Anantam‟ is completely different from the plaintiffs. Further, the defendant has pointed out the long gap between the plaintiffs‟ second legal notice and the defendant‟s reply to its earlier notice i.e. from 6 th August, 2007 to 19th December, 2008. While highlighting this gap, the defendant has contended that the plaintiffs‟ disinclination to proceed with the matter show that the marks used by the parties were not similar and were not causing any deception.
13. The defendant has referred to Section 28 (3) and Section 30 (2) (e) of the Trade Marks Act, 1999 and submitted that the defendant is entitled to use the registered trade mark of the plaintiff even if the same is similar to the plaintiffs‟ trade mark. Further, the plaintiffs‟ place of work is in Gurgaon, Haryana and the defendant‟s place of work is in Jaipur, Rajasthan therefore the situation of confusion would not arise and consumers would not wrongly presume the defendant‟s products to be those of the plaintiffs‟ and due to this reason, this court also has no jurisdiction to entertain the present suit.
14. I have perused the contentions of both parties. Before proceeding to look into the arguments on merit, I shall look into the question of jurisdiction of this court. As per the plaintiffs, this court has CS (OS) No. 602/2009 Page 6 of 15 jurisdiction to entertain the present suit under Section 134 of the Trade Marks Act, 1999 while the defendant‟s contention is that since it has no place of work in Delhi nor does it reside in Delhi, this court cannot try this suit for want of jurisdiction. Section 134 provides as under :
"134. Suit for infringement, etc. to be instituted before District Court (1) No suit--
(a) for the infringement of a registered Trade Mark; or
(b) relating to any right in a registered Trade Mark; or
(c) for passing off arising out of the use by the defendant of any Trade Mark which is identical with or deceptively similar to the plaintiff's Trade Mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain."
15. The defendant‟s argument that its trade mark is also registered under Trade Mark No. 1506086 in Class 35 and therefore, as per Section(s) 28(3) and 30 of the Trade Marks Act, 1999 since both parties are registered users of the name and mark in question, both will be treated as equal and no case of infringement will lie in the present case.
CS (OS) No. 602/2009 Page 7 of 15
16. In my considered opinion, the present issue requires an examination of the Trade Marks Rules, 2002 (hereinafter referred to as „the Rules‟). As per the defendant‟s contention, its trade mark is registered under Class 35 of Schedule IV of the Rules. Schedule IV provides the classes wherein classification of goods and services has been classified. A bare perusal of this Schedule reveals that Class 35 relates to services i.e. to advertising, business management, business administration, office functions. The defendant got the mark „Anantam‟ registered in class 35 in respect of complete family store dealing in readymade garments, hosiery, sarees, suits, cosmetics, perfumes, ladies purses, watches, jewellery and all type of accessories and merchandise goods as well as part of its trading name. Admittedly, the defendant is using the name/ mark and logo of „Anantam‟ on packages, invoices and other printed material etc., as fact which has been admitted by the counsel for defendant during the course of hearing of the interim injunction. After examination of classification of goods it is clear that the goods in which the defendant‟s mark/ name is registered fall in classes 14, 18, 24 and 25 and not in class 35. I do not agree with the learned counsel for the defendant that the defendant has only one shop from where these goods are being sold because of the reason that while selling the merchandise items, the defendant is admittedly using packing material, advertisement products, plastic bags, invoices, sign board and gift packs where the name „Anantam‟ is mentioned, whether as a mark or a name and this has to be considered as a user if the mark/name CS (OS) No. 602/2009 Page 8 of 15 „Anantam‟.
17. It is well settled law that the use of a mark can be by various means and one of them is by way of advertisement or intention to use the mark in question. It is relevant to refer Section 2(2)(c)(i) of the Trade Marks Act, 1999 which provides as follows :
"Section 2 (ii) : In this Act, unless the context otherwise requires, any reference--
(a) ...
(b) ...
(c) to the use of a mark,--
(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) ..."
18. The judgment in J.N. Nichols (Vimto) Ltd. v. Rose and Thistle and Anr., 1994 (14) PTC 83 (Cal) (DB) further illuminates this aspect of the present matter. The relevant portion of the same is reproduced hereinbelow :
"20. Incidentally, it is to be noted that use of the mark does not postulate actual sale of the goods bearing such a mark. 'Use' to my mind can be in any form or way and does not necessarily mean and imply actual physical sale and it is now well settled that even mere advertisement without having even the existence of the goods can be said to be a use of the mark..."
19. Since the defendant is admittedly using the name „Anantam‟ as its mark as well as trade name, therefore, the user of the mark is apparent on the face of it, as already stated as the goods in which registration is granted fall in Classes 14, 18, 24 and 25. Prima facie, I am of the considered view that registration in clause 35 is not correctly granted in accordance with the Trade Mark Rules, 2002, hence, the CS (OS) No. 602/2009 Page 9 of 15 defendant cannot take the benefit of Section(s) 28 (3) and 30 of the Trade Marks Act, 1999 thus, there is no bar to the suit for infringement against the defendant. The plaintiffs are entitled to take the benefit of Section 134 of the Trade Marks Act, 1999 due to the reasons (a) that plaintiffs no. 1 to 3 are actually and voluntarily residing within the local limits of this court‟s territorial jurisdiction, (b) the application for registration of trademark was filed by the plaintiffs in the Delhi Trade Marks office and (c) the plaintiffs are advertising their products on national television channels and are also purchasing material from various manufacturers in Delhi. Hence, at this stage, this court cannot come to the conclusion that it has no territorial jurisdiction.
20. In addition to this, in the recent case of Clinique Laboratories LLC & Anr. v. Gufic Ltd. & Anr., 2009 (41) PTC 41 (Del) wherein the defendant had a similar/identical trade mark registered in the same class, a learned single judge of this court observed the following :
"Registration has been made only prima-facie evidence of the registration otherwise being in accordance with the Act under Section 31(1) as contended by senior counsel for plaintiff but I find that even Section 28(1) while being subject to other provisions of Act, further provides that "registration of the trademark, if valid, give to the registered proprietor" exclusive right to use the trademark. Thus the validity of registration can be gone into, wherever permissible under the Act. Section 124(1)(b) also indicates that it was within the contemplation of the legislature that there could be a suit for infringement of trademark where the defendant takes a plea under Section 30(2)(e) i.e. that use by him is not infringement because of his mark being also registered. The legislature while further providing for stay of suit in such cases, in Sub-section (5) expressly provided that such stay would not preclude the court from CS (OS) No. 602/2009 Page 10 of 15 making any interlocutory order. Section 31 r/w the scheme of 124 leads to an un-escapable conclusion that (A) there can be a suit for infringement against the registered proprietor (B) that upon the defendant taking the plea of his registration and of there being thus no infringement, such suit has to be stayed awaiting the rectification proceedings and (C) the court is empowered in such case to pass any interlocutory order. The court while passing interlocutory order will necessarily have to prima facie adjudicate the validity of the two competing registrations. Upon inquiry, it was informed that the Registrar while trying the rectification application has no power to grant interim relief. The legislature under Section 124(5) has thus empowered the court under Section 124(5) to grant injunction against use of a registered trademark also if the court is satisfied of the invalidity thereof ...
11. Once having reached a conclusion that registration is only prima facie evidence of validity, it is axiomatic that if the court is satisfied otherwise on the basis of material on record and in the facts of the case, the court is empowered to injunct use of registered trademark also ..."
21. Following the above-quoted observation, the learned single judge, as far as this issue was concerned, held as under :
"14. I thus conclude that a suit for infringement of registered trademark is maintainable against another registered proprietor of identical or similar trademark and in such suit, while staying the further proceedings pending decision of the registrar on rectification, an interim order including of injunction restraining the use of the registered trademark by the defendant can be made by the court, if the court is prima facie convinced of invalidity of registration of the defendant's mark."
22. In view of the finding given in the earlier paras above and the case law referred, I hereby hold that a suit for infringement is maintainable in the present case and that this court has got jurisdiction as per the averment made in the plaint.
23. Coming to the arguments on merit, the plaintiffs have a bona fide registered trade mark for their products. The contention of the CS (OS) No. 602/2009 Page 11 of 15 defendant that it is also a bona fide registered trade mark holder is without any substance as the said trade mark has been registered under the wrong class in Schedule IV. I am of the considered view that even otherwise, in an action of passing off, the well settled law in Century Traders v. Roshan Lal Duggar Co., AIR 1978 (Del) 250 will be applicable. In this case it was held that for the purpose of claiming proprietorship of a mark, it is not necessary that the mark should have been used for considerable length of time. A single actual use with intent to continue such use eo instanti confers a right to such mark as a trade mark. Further, in order to succeed in an application for temporary injunction the applicant has to establish user of the aforesaid mark prior in point of time than the impugned user by the non-applicant. Further still, actual damage or fraud is unnecessary in a passing off action whether the relief asked for is injunction alone or injunction, accounts and damages. If there is a likelihood of the offending trade mark invading the proprietary right, a case for injunction is made out.
24. The plaintiffs have been using the duly registered trade mark „Anantam‟ since September 2003. By the defendant‟s own admission, it started using the said mark in 2005. The requisite factum that the plaintiffs have been using the mark prior in time than the defendant has been successfully established. In my opinion, nothing further needs to be said. The plaintiffs have established a prima facie case. Further, balance of convenience is in their favour as they are prior users of the said mark and irreparable injury would be caused to them if the defendant is CS (OS) No. 602/2009 Page 12 of 15 allowed to carry on its infringing activity. Delay, if any, is not fatal in case of infringement of trade mark. In the present case, it is an undisputed fact that the trade mark and name used by the defendant is identical to the plaintiffs‟ and in relation to the same goods, therefore, the question of delay in filing the suit, if any, does not arise. In this reference, in Tata Oil Mills Co. Ltd. Vs. Wipro Ltd., AIR 1986 Delhi 345 this court observed that mere delay in filing of a suit for infringement is not fatal and referred to Sh. Swaran Singh Trading Vs. M/s. Usha Industries (India), 1986 (6) PTC 287 (Del) (DB), the relevant portion whereof is reproduced hereinbelow :
"7. There is then the question of delay. Learned counsel for the respondents had urged that the delay is fatel to the grant of an injunction. We are not so satisfied. A delay in the matter of seeking an injunction may be a ground for refusing an injunction in certain circumstances. In the present case, we are dealing with a statutory right based on the provisions of the Trade and Merchandise Marks Act, 1958. An exclusive right is granted by the registration to the holder of a registered trade mark. We do not think that statutory rights can be lost by delay. The effect of a registered mark is so clearly defined in the Statute as to be not capable of being mis-understood. Even if there is some delay, the exclusive right cannot be lost. The registered mark cannot be reduced to a nullity. The principles governing other types of injunctions are not be readily applied to a case like the present. Of course, if it was a case of a similar mark as opposed to the same mark, the concurrent user coupled with delay might be a ground for refusing an injunction. However, when the same mark is being used, in a sense, the public is deceived into purchasing the defendant‟s good on the belief that they are the plaintiff‟s goods, so a registered trade mark is a casualty, it is the duty of the Court to protect the registered mark. That is the whole concept of registration. So, we cannot refuse an injunction even if there is some delay especially when the mark is the same. To refuse the injunction would tantamount to permit a fraud being practised on unwary customers. This is a matter of CS (OS) No. 602/2009 Page 13 of 15 principles on which the Court cannot refuse the injunction."
25. Further, in Durga Dutt Sharma Vs. Navaratna Pharmaceuticals Laboratories, AIR 1965 SC 980 the test of infringement and passing off is given which reads as under :
"28. ... 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 Section 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 conclusion that there is an imitation, no further evidence is required to establish that the plaintiff‟s rights are violated."
26. In the case of Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia,(2004) 3 SCC 90, the following has been observed :
"5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest."
27. In view of the afore-mentioned, the interim injunction dated 30th March, 2009 is made absolute. It is made clear that the findings in this order shall have no bearing on the final outcome of the suit and shall not prejudice the rights of either party therein. Application disposed of CS (OS) No. 602/2009 Page 14 of 15 accordingly.
List this matter before the Joint Registrar on 18th February, 2010 for admission/denial of documents.
MANMOHAN SINGH, J.
NOVEMBER 26, 2009 CS (OS) No. 602/2009 Page 15 of 15