Delhi District Court
Jagmohan Kumar Trading vs Ram Gopal Shri Niwas on 30 March, 2024
IN THE COURT OF MS VANDANA: ADDITIONAL
DISTRICT JUDGE-8 (CENTRAL), TIS HAZARI, DELHI
TM No. 995/16
CNR No. : DLCT01-000136-2003
In the matter of:
JAGMOHAN KUMAR
Trading as:-
Jugal Kishore Harbans Lal,
578-A, Shradhanand Marg,
Delhi-110006
Also at :
B-40/2, Lawrence Road Ind. Area,
Delhi-110035. ......Plaintiff
Versus
RAM GOPAL SHRI NIWAS
132, Chandra Nagar
Lal Bunglow,
Kanpur. .....Defendant
Date of institution : 20.05.2003
Date of Reserving judgment : 30.03.2024
Date of pronouncement : 30.03.2024
SUIT FOR PERPETUAL INJUNCTION, RESTRAINING
INFRINGEMENT OF TRADEMARK, PASSING OFF,
RENDITION OF ACCOUNTS ETC.
JUDGMENT :
1. FACTS OF THE PLAINT 1.1 As per averments of the plaintiff, the brief facts are that the plaintiff is the firm and claimed itself to be the proprietor TM No. 995/16 Page 1 of 18 of the trade mark HATHI CHHAP with device of an Elephant in respect of its well established business of manufacturing, processing and marketing of Flour (atta), Gram Flour (Besan), Maida, Sooji, Bran, Pulses and other preparations made from cereals for the past several decades and to have got the said trade mark Hathi Chhap with device of an Elephant registered under number 292411 dated 24.11.73 in respect of Gram Flour and vide registration number 366084 in class 30 in respect of Gram Dal. The plaintiff pleaded that the defendant has recently started manufacturing, processing, marketing, selling, offering for sale and advertising the same goods i.e. Dal (Pulses) under the deceptively similar trademark "DOUBLE ELEPHANT" with the devices of two elephants and the adoption and use of the said trade mark on the part of the defendant is in clear and flagrant violation of the plaintiff's legal, vested and statutory rights, hence, the plaintiff filed suit for perpetual injunction, delivery up and rendition of accounts.
2. WRITTEN STATEMENT OF DEFENDANTS 2.1 Written Statement was filed on behalf of the defendant wherein it is stated that the suit of the plaintiff is not maintainable as this court has no territorial jurisdiction to entertain and try the present suit. The suit suffers from long delay, acquiescence and latches as the defendants have been continuously, regularly and extensively using the trademark "Double Hathi" and device since 02.04.1986. It has been further stated that above said fact was very much in the knowledge of the plaintiff yet they have not taken any action whatsoever about the user of the said trademark against them from the said date. It TM No. 995/16 Page 2 of 18 has been further stated by the defendants that even both the parties have been advertising their trademarks in the same newspaper i.e. Vyapar Bharti since 1998-1999. The defendant under the said circumstances have grown up their business from lakhs to crore of rupees and by this time the defendants have sold their product worth of more than 35 crores in respect of pulses under the said trademark. It has been further stated that the two trademarks HATHI CHHAP WITH DEVICE OF THE PLAINTIFF and THE DOUBLE ELEPHANTS WITH DEVICE OF THE DEFENDANT are neither identical nor deceptively similar. On merits, all the allegations made in the plaint were denied in toto.
3. REPLICATION 3.1 Replication to the Written statement of defendant was filed reiterating reaffirmed the averment of the plaint and denying all the contents of the written statement of the defendant.
4. ISSUES 4.1 From the pleadings of the parties and the material available on record, the following issues were framed by the court on 27.03.2006:-
1. Whether the defendant has been passing off his goods infringing the trade mark of plaintiff? OPP
2. Whether plaintiff is prior user of the disputed trade mark? OPP
3. Whether the plaintiff is entitled to the relief of injunction against the defendants, as prayed ?TM No. 995/16 Page 3 of 18
OPP
4. Whether plaintiff is entitled to delivery of the offending and infringing labels, sticker and other packaging material from defendants, as prayed ? OPP
5. Whether plaintiff is entitled to rendition of accounts of defendants, as prayed ? OPP
6. Relief:
5. On 15.02.2012, the following additional issue was also framed:-
1(A) Whether the suit is barred, on account of delay, latches and acquiescence ? If so, to what effect? OPD.
6. PLAINTIFF'S EVIDENCE 6.1 In order to prove its case, plaintiff got examined sole witness i.e. attorney of the plaintiff concerned, Sh. Diwan Chand as PW-1. He proved his affidavit as Ex. PW1/A and relied upon the documents i.e. Ex. P-1 to Ex. P-74.
1. Ex. P-1 is Power of attorney;
2. Ex. P-2 is a registration certificate dated 29.02.1988;
3. Ex. P-3 is a trade mark registry dated 25.09.2008 for renewal of registration of Trade Mark no. 292411 in class 30 has been renewed for a period of ten years from the 24.11.2008. The renewal is being advertised in the trade mark Journal no. 1401.
4. Ex. P-4 certificate of registration bearing Trade Mark No. 365084 dated 12.09.1980 in class 30 under No. TM No. 995/16 Page 4 of 18 366034 of dated 12.09.1980 in respect of gram dal (broken).
5. Ex. P-5 is renewal of registration of trade mark no. 366084 in class 30 has been renewed for a period of ten years from 12.09.2008 in the trade mark Journal no. 1401.
6. Ex. P-6 is certificate of registration in class 30 under No. 484188 as of the dated 13.01.1988 in respect of atta maida sooji bran pulses, cereals included in class 30
7. Ex. P-7 is renewal of registration of trade mark No. 484188 in class 30 for a period of 10 years from 13.01.2009 in the trade mark Journal no. 1404
8. Ex. P-8 is letter of The Registrar of Trade Mark to M/s Worldwide Registrartion.
9. Ex.P-9 is list of registered mark removed from the Register for non payment of renewal fees.
10. Ex.P-10 to Ex.P-55 are Bills/Invoices.
11. Ex. P-56 is Vyapar Bharti Hindi Dainik newspaper dated 18.05.1998 Hathi Brand Aata Besan
12. Ex. P-57 is Vyapar Bharti Hindi Dainik newspaper dated 21.10.1997 having advertisement Hathi Brand Aata Besan Ex. P-58 is Vyapar Bharti Hindi Dainik newspaper dated 11.02.1999 Hathi Brand Aata Besan Ex. P-59 is Dainik Punjab Kesri Delhi dated 16.08.1985 is Vyapar Bharti Hindi Dainik newspaper dated 18.05.1998 Hathi Chhap Atta wa Besan Ex.P-60 is advertisement banner.
Ex.P-61 to Ex.P-71 are the booklet/magazines of Wyapar Bharti.
TM No. 995/16 Page 5 of 18Ex.P-71 is letter dated 10.01.2003.
Ex.P-72 is letter dated 15.01.2003.
Ex.P-73 is polythene of Hathi Brand Besan. Ex.P-74 is Additional Representation 6.2 PW-1 was cross-examined at length by Ld. Counsel for the defendant. No other PW was examined. Thereafter, vide separate statement of Sh. Diwan Chand, attorney of plaintiff concerned, the plaintiff's evidence was closed on 26.11.2011.
7. DEFEDANT'S EVIDENCE 7.1 On the other hand, defendant also examined sole witness i.e. manager of the defendant Sh. Avinesh Kumar Gupta as DW-1. He tendered his evidence by way of an affidavit of dated 04.05.2012. He relied upon the following documents:-
(i) Ex. DW1/1 is photocopies of sales invoices of the defendant for the year 1986;
(ii) Ex. DW1/2 is copy of TM-I and its acceptance;
(iii) Ex. DW1/3 (colly) is the photocopies of sales invoices, sales tax assessment and cutting of newspaper of subsequent years.
7.2 DW-1 was cross-examined at length by Ld. Counsel for the plaintiff. No other DW was examined. Thereafter, vide separate statement of Sh. Virender Sinha, Ld. Counsel for defendant, the Defendant's Evidence was closed on 15.03.2014.
8. I have heard counsel for the plaintiff as well as Ld. Counsel for the defendant and gone through the material on TM No. 995/16 Page 6 of 18 record carefully.
OBSERVATIONS AND FINDINGS OF THE COURT:-
9. I shall decide the legal issue first.
10. Issue No. 1(A) Whether the suit is barred, on account of delay, latches and acquiescence ? If so, to what effect? OPD.
10.1 It is contended by the Ld. Counsel for the defendant that the defendant has placed on record extensive material including advertisements etc. under the mark "Double Elephant"
in Vyaapar Bharti since the year 1998, wherein, the plaintiff as well defendant trademarks were advertised together from which, clearly evince that the plaintiff was having knowledge of defendant's using the mark "Double Elephant" and the plaintiff allowed the defendant to grow without any objection and filed the case in 2003 without any demur or objection.
10.2 On the other hand, the case of the plaintiff is that he came to know about the misuse of his trademark Haathi Chhap in the year 2003 from some shopkeepers.
10.3 On perusal of the case file, it reveals that though the defendant has taken the plea that its mark was advertised continuously since 1998 in Vyapar Bharti, but, Ex. P65 which is of Vyapar Bharti Edition 2000 and Ex. P67 Edition 2001, Ex. P69 edition 2002, does not support the contention of the defendant TM No. 995/16 Page 7 of 18 because as such there is no advertisement of the defendant's "Double Elephant" therein.
10.4 That's one aspect, if we talk about the other aspect regarding 'the knowledge of plaintiff qua using of trademark, "Double Elephant", by defendant', during cross-examination of DW-1, he categorically admitted that defendant has no document to show that the plaintiff is aware of defendant's trading under the impugned trademark. The above said specific admission demolishes the contention of the defendant in this regard.
10.5 Otherwise also, in AIR 1990 Delhi 19 M/s Hindustan Pencils Pvt. Ltd. Vs. India Stationers Products Co. & Anr. (para 31 & 32), it has been held that, "Even though there may be some doubt as to whether latches or acquiescence can deny the relief of permanent injunction, judicial opinion has been consistent in holding that if the defendants acts fraudulently with the knowledge that he is violating the plaintiff rights then in that case even if there is inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied."
10.6 It was also observed in the judgment 1999 PTC (19) 81 Delhi Automatic Limited Vs. RK Dhawan & Anr (para 18 & 16), that, "merely because a particular magazine advertisement of the defendant was published on the cover page can not itself be a case of deduction that the plaintiff was aware of the advertisement of the defendant's mark in the said TM No. 995/16 Page 8 of 18 magazine."
10.7 Considering the above and the admitted fact by the defendant that he could not file any document to show that the plaintiff was already aware about the defendant's trademark, I am of the considered opinion that the defendant has failed to discharge its onus to prove the above said issue. Accordingly, this issue is decided in favour of the plaintiff and against the defendant.
11. Issue No. 2 Whether plaintiff is prior user of the disputed trade mark? OPP & Issue No. 3 Whether the plaintiff is entitled to the relief of injunction against the defendants, as prayed ? OPP 11.1 The case of the plaintiff is that the plaintiff is engaged in the business of flour (Atta), gram flour (besan), maida, sooji, bran, pulses and other preparations made from cereals since 1954. The said business was started by the plaintiff's predecessor in title and was continued by the plaintiff, under the trade mark Hathi Chhap with device of elephant, and has been in extensive and continuous use till date. The plaintiff is the proprietor of trademark Hathi Chhap under No. 292411, dated 24.11.1973, No. 366084 dated 12.09.1980 and No. 484188 dated 13.01.1988 (Ex. PW1/2-9). The said trade marks are registered and subsisting in Class-30. The plaintiff's said mark has been in continuous commercial use since 1954.
TM No. 995/16 Page 9 of 1811.2 It has been contended by the plaintiff that the defendant has recently started manufacturing, processing, marketing, selling, offering for sale and advertising the same goods i.e. Dal (Pulses) under the deceptively similar trademark "DOUBLE ELEPHANT".
11.3 On the other hand, the case of the defendant is that defendant has been continuously using the mark "Double Elephant" in respect of pulses since the year 1986 and there are newspaper cuttings Ex. DW1/3 (colly) (page no's 222-268), in Vyapar Bharti dated December 1998, wherein, the defendant's mark are cited at least since the year 1998 continuously.
11.4 It was argued by the Ld. Counsel for the defendant that it is unclear as to when the plaintiff actually started business of pulses and other items, as the first registration of the mark Hathi Chhap is in respect of pulses since 13.01.1988 and not from 1973, and, therefore there exists a doubtful case as to the plaintiff's commencement and use of the mark Hathi Chhap in respect of pulses except the pulses which are broken pulses.
11.5 Ex.P-2 registration no. 292411 dated 29.02.1988 where the plaintiff's trademark was renewed for a period of 7 years, this was in respect of gram flour (besan). This was again renewed on 25.09.2008 Ex. P-3. Ex.P4 is the certificate of registration of trademark vide registration no. 366084, this was with respect of gram dal (in broken), it is of dated 12.09.1980. This was again renewed on 25.09.2008 for the same class vide Ex. P-5. Ex. P-6 is the trademark no. 484188 TM No. 995/16 Page 10 of 18 in respect of atta, maida, sooji, bran, pulses, as of 13.01.1988 Therefore, no documentary evidence is on record to show as to since when the plaintiff's commenced and use of the mark Hathi Chhap in respect of pulses except the pulses which are broken pulses and used of trademark prior to 13.01.1988. Neither, there is any oral testimony in this regard. In fact, PW-1 failed to depose anything on as to since when they are dealing with business pertaining to pulses.
11.6 The plaintiff has placed reliance upon the trademark Hathi Chhap bearing no. 356084 in respect of Gram Dal. It is noteworthy to mention that the said registration was granted under the provision of Trade and Merchandise Marks Act, 1958. The said registration was confined to the "Gram Dal". As per provisions of Section 29 of the Trade and Merchandise Act, 1958, the said use of the mark "Double Elephant" in respect of pulses which are not covered within the ambit of registration, was not an infringement under the provisions of old Act of 1958. Section 29 of the Old Act merely provides "A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of trade a mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being use as a trade mark." As the concept of 'similar goods' or different goods was not provided under the statutory definition of infringement under the Old Act of 1958, and therefore the use of the mark "Double Elephant"
TM No. 995/16 Page 11 of 18with the device of "Double Elephant" was not an infringement under the provisions of old Act as the registration of the plaintiff was confined to Gram Dal whereas the complaint of the plaintiff is use of the mark "Double Elephant" in respect of pulses which are not falling within the purview of registration. It is submitted that by virtue of provisions of Section 159(5) of the Trade Marks Act, 1999.
11.7 It is further clear that where the use of a registered trademark is not an infringement of registered trademark before the commencement of Act then the continuous user of the mark shall not be infringement. The combined effect of Section 159 (4) and (5) of 1999 Act and Section 29 of 1958 Act would make it amply clear that the present case is not infringement of the trademark. Plaintiff's trademark is registered under the Old Act as the proceedings are continued to be governed by the provisions of Old Act.
11.8 Further, the plaintiff has relied upon certain bills showing that it has been selling Gram Dal since 1976 i.e. Ex.P- 10 to Ex.P-55. All the bills/invoices are carbon copies. It is evident from the record that all those bills are unsigned except 3- 4 bills. PW-1 did not testify anything that these bills were signed by whom. It is well settled law that carbon copy of invoice can be used as primary evidence U/S 64 of Evidence Act, subject to condition that they have been duly signed. However, in the case in hand, not even a single invoice has been placed on record bearing the signatures of both the parties i.e. buyer and the plaintiff/seller. Even, no witness was called to prove the same, TM No. 995/16 Page 12 of 18 neither the buyer nor the accountant. PW-1 i.e. Attorney of plaintiff testified that he is looking after the accounts work of the plaintiff but then also his testimony is entirely silent on issuance of those invoices. Hence, those invoices cannot be relied upon.
11.9 So far as the registration no. 484188 is concerned, the said registration was obtained by the plaintiff on 13.01.1998 as against the same, the defendant is continuously using the trademark prior to the date of 13.01.1998 in respect of pulses. The defendant has filed bills/Sale invoices Ex. DW1/1 (Colly) with respect to pulses and these bills are pertaining to year 1986. Even the advertisement which is of 08.12.1998 itself depicts that the defendant had been dealing in all kind of pulses. There are invoices (Ex. DW1/1 colly. Page no's 1-132), advertisement (Ex. DW1/3 colly page no's 222-268) and sale Tax invoices (Ex. DW1/3 colly page no's 133-222) on record which show defendant's user prior to the said date.
11.10 In view of the above, both the above said issues are decided against the plaintiff and in favour of the defendant.
12. Issue No. 1 Whether the defendant has been passing off his goods infringing the trade mark of plaintiff? OPP
12.1 Passing off action basically refers to the unauthorized use of goods / service and the goodwill attached to another person's business, which would amounts to misrepresentation. In a way, such unauthorized use causes TM No. 995/16 Page 13 of 18 confusion or deception in the market place, which leads to unfair competition.
12.2 In legal parlance, the action of "passing off" takes place when one party misrepresents the goods or services of another person as his or her own. It leads to confusion amongst customers and consumers as well as proves detrimental to the business of the original or legitimate owner of the trademark.
12.3 In the light of the above, in brief, following are the requirements for action of "passing off":-
i. There has to be a misrepresentation of the trademark of the owner.
ii. The misrepresentation has to be made by the concerned person in the course or furtherance of trade. iii. This misrepresentation is made to the prospective consumers or customers who are the ultimate customers of goods or services supplied by the owner. iv. This misrepresentation must have been with ill intention and should have resulted in injury to the business or goodwill of the original owner of the trademark.
12.4 Deceptive similarity refers to the practice of creating trademarks that closely resemblance existence, well known trademark. A mark shall be deemed to be deceptively similar to another mark if it so, nearly resemble to other mark as to be likely to deceive or cause confusion.TM No. 995/16 Page 14 of 18
12.5 Deceptive similarity are of following types:-
(i) Visual similarity (ii) Phonetic similarity (iii) Conceptual similarity 12.6 Reverting to the facts of the case, at first, let
compare the logo of both the parties. Now I shall compare both the trademarks in the light of the above facts and evidence.
(i) Visual similarity:-
The first factor or component to be considered is the Visual similarity of the marks. This would include all visual aspects of the mark, like any common syllables, designs, suffixes, prefixes, shapes, length, etc. With respect to the Logo:-
a) The getup of the plaintiff's logo and the defendant's logo is altogether different as the plaintiff logo depicts only one elephant whereas the defendant's logo depicts two elephants on the label.
b) The postures of elephant of plaintiff and defendant logo are totally different.
c) The plaintiff's elephant is depicted in the standing and sketch from whereas the defendant has two elephants which are running towards each other and the same are also wearing some apparel and are black in colour.
So far as the contents are concerned, they are also visibly different and as such there can not be said to be a cause of any confusion in the mind of the ordinary person regarding, "Double Elephant" and "Haathi Brand".
TM No. 995/16 Page 15 of 18(ii) Phonetic Similarity:-
The aural / phonetic similarity of marks is another component that is considered. Marks are said to be aurally similar when the pronunciation of the marks are identical. That may be based on pronunciation of the marks enunciation or number of syllables or even on the length of the marks.
But in the case in hand, as such there is no phonetic similarity between the two trademarks as "Double Elephant"
sounds completely different from "haathi brand".
(iii) Conceptual similarity :-
Certain marks may not be visually or aurally similar rather might be similar with respect to its concept.
On this account also, the plaintiff's trademark is found to be different altogether from the defendant's trademark. So far as the pictures of elephant is concenred, it is relevant to mention here that the device of elephant has special significant in the trade of eatables as Lord Ganesha is of elephant caricature and for commencement of any business of eateries, it is usual of adopting device of elephant as it denotes strength and power.
12.7 Having observed as above, now, I deem it appropriate to discuss the evidence of the plaintiff on this issue.
Though the plaintiff has alleged that the defendant is using the deceptively similar trademark but PW-1 categorically admitted that the single elephant of plaintiff trademark is different from the "Double Elephant" of defendant's trademark. He further admitted that plaintiff's trademark bearing single elephant is different from the defendant's trademark bearing "Double Elephant" so it is not deceptively similar to each TM No. 995/16 Page 16 of 18 other.
12.8 The plaintiff relied upon following judgments :-
1. AIR 1965 SC 980;
2. AIR 1965 SC 991;
3. AIR 1960 SC 142;
4. 1999 PTC (19) 81;
5. 1999 PTC (DEL) (REG) 89;
6. 2009 (39) PTC 142 (DEL).
12.9 All the above said judgments relied upon by the plaintiff pertain to the fact that in deciding the question of similarity between two Marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man, the overall structural and phonetic similarity and the similarity of idea in two marks is reasonably likely to cause a confusion between them. But this question arises only when the plaintiff has asserted the above, though in the case in hand, PW-1 has himself admitted that the single elephant of plaintiff trademark is different from the "Double Elephant"
of defendant's trademark and that plaintiff's trademark bearing single elephant is different from the defendant's trademark bearing "Double Elephant" so it is not deceptively similar to each other. The plaintiff did not examine any other witness except PW-1 who himself testified that both the Trade Marks are not deceptively similar to each other. As evident from the above admission, the testimony of PW-1 has demolished its own case.TM No. 995/16 Page 17 of 18
12.10 In view of the aforesaid findings, the above said issue is deciding against the plaintiff and in favour of the defendant.
13. Issue no. 4 Whether plaintiff is entitled to delivery of the offending and infringing labels, sticker and other packaging material from defendants, as prayed ? OPP
13.1 The plaintiff has remained fail to lead any evidence to discharge its onus to prove the above said issue, hence, the above said issue is decided in favour of the defendant and against the plaintiff.
14. Issue no. 5 Whether plaintiff is entitled to rendition of accounts of defendants, as prayed ? OPP 14.1 Relying upon the observations made, while discussing the issues no. 1 to 4, which have been decided against the plaintiff, the issue no. 5 is also decided against the plaintiff.
15. In view of my aforesaid findings, the suit of the plaintiff is hereby stands dismissed. No order as to costs. Decree sheet be prepared accordingly.
16. File be consigned to record room afterDigitally due signed by compliance. VANDANA VANDANA Date:
2024.03.30 16:40:38 +0530 Pronounced in the open court (VANDANA) on 30th March, 2024. Additional District Judge-8 Central:Tis Hazari Courts: Delhi.TM No. 995/16 Page 18 of 18