Delhi District Court
Victorinox Ag vs Dinesh Gupta And Ors on 23 March, 2024
IN THE COURT OF AMIT KUMAR : DISTRICT JUDGE
(COMMERCIAL)-08
TIS HAZARI COURTS, CENTRAL: DELHI
(Commercial Case No. 2138/2019)
CNR No. DLCT01-010130-2019
VICTORINOX AG
CH - 6438
IBACH - SCHWYZ,
SWITZERLAND
THROUGH
MEENA BANSAL
CONSTITUTED ATTORNEY
R/O 96, SUKHDEV VIHAR,
MATHURA ROAD, NEW DELHI-110025
.....PLAINTIFF
VS
1. DINESH GUPTA (Since deceased)
75, ASHOKA PARK MAIN,
NEW ROHTAK ROAD,
NEW DELHI-110035
2. KOMAL GUPTA
75, ASHOKA PARK MAIN,
NEW ROHTAK ROAD,
NEW DELHI-110035
3. VICTORIA CROSS INDIA PRIVATE LIMITED
75, ASHOKA PARK MAIN,
NEW ROHTAK ROAD,
NEW DELHI-110035
4. VICTORIACROSS INCORPORATION
16/21, SUBHASH NAGAR,
NERA PARK, NEW DELHI-110027
....DEFENDANTS
Date of institution of case : 29.07.2019
Date of arguments : 28.02.2024
Date of pronouncement of judgment : 23.03.2024
-1-
JUDGMENT:
1. Present is a suit seeking relief of permanent injunction restraining infringement, passing off, delivery up, rendition of accounts, for taking down the contents of impugned website etc. on the averments that the plaintiff "Victorinox AG" is a corporation organized and existing under the laws of Switzerland and is engaged in the business of manufacturing, marketing, selling and trading of various products including multi functional pocket tools, hand operated tools, leather goods, wallets, knives, cutlery, watches, bags, luggage and other goods using the trademark Victorinox alone and in association with well known device "Cross and Shield". The plaintiff company was founded in 1884 as workshop of Karl Elsener in Ibach, Switzerland. In 1891, Elsener co-founded an association of Swiss knife manufacturers and he along with his colleagues delivered knives to Swiss army. In 1909, Elsener named his company "Victoria" in honour of her mother. In 1921, the company was renamed to the present "Victorinox", a portmanteau of Victoria and Inox. During 1908 to 2005, the delivery of knives to Swiss armed forces were shared with Wenger. On 26.04.2005, Victorinox acquired Wenger and on 30.01.2013, Victorinox announced that company will merge Wenger's Knife product lines with Victorinox brand. It is further stated that Promoshirt SM SA, a company organized under the laws of Switzerland through Mr. Ashok Sawhney has assigned its rights in trademark "Victoria Cross" in favour of the plaintiff vide assignment deed dated 07.07.2020. It is stated that the plaintiff has been using trademark Victorinox and device mark Cross and Shield in respect of various goods. The plaintiff has been granted various trademarks in various countries like -2- USA etc. and plaintiff has been granted trademark registration for trademark Victorinox and its mark Cross and Shield in several classes i.e. Class 3, 8, 9, 11, 14, 18, 21, 25, 30 in India. It is claimed that the user of the plaintiff in India dates back to 1984- 85 for its goods in class 8 and after few years, there has been expansion in business for other goods like leather, beach bags, shopping bags, school bags etc. The plaintiff has been since beginning and at least since 1984 is using the distinct and arbitrary trademark "Victorinox" and device mark Cross and Shield in India and has already built up globally valuable trade under the said mark. It is stated that the defendants are engaged in manufacturing and marketing, using, selling, trading and soliciting various goods including bags, bag packs, knifes, shoes, accessories and life style goods and other related products. Defendant no. 1 (since deceased) and defendant no. 2 are associated with defendant no. 3 and 4 and are actively involved in these business activities. The defendants have adopted and started using the trademark "Victoria Cross" and other formative trademarks, labels, and trade name Victoria Cross in relation to their impugned goods. It is claimed that defendant no. 1 Dinesh Gupta (since deceased) gave an undertaking date 17.01.2017 in favour of Mr. Ashok Sawhney and his group of companies to the effect that he would not be using the trademark Victoria Cross in relation to any kind of his business and as such, defendants are not entitled to use the trademark Victoria Cross. It is further claimed that the impugned trademark and trade name adopted by the defendants is identical and deceptively similar to the plaintiff trademark in each and every respect. Defendants have also copied the artistic features involved in the plaintiff trademark and -3- thus infringing the plaintiff copy right involved in its trademark. It is claimed that the defendants are using the impugned trademark dishonestly and to take advantage of established good will and reputation of the plaintiff. The plaintiff came to know about defendant impugned trademark and trade name in second week of July, 2019 when plaintiff came across the trademark applications of the defendant filed in class 8, 16, 18 and 25. The plaintiff have filed objections to the trademark applications of the defendants. By way of the present suit, the plaintiff have prayed decree for permanent injunction restraining the defendants from using its infringing trade name Victoria Cross, rendition of accounts, delivery up etc.
2. The deceased defendant no 1 and defendant no. 2 were husband and wife. Defendant no 3 is a company duly incorporated under the Companies Act 2013 and defendant no 4 is a partnership firm formed on 21st August 2015.
3. In the joint amended written statement filed on behalf of all the defendants, it was stated that the suit is without merits. It was stated the defendant no. 1 Dinesh Gupta passed away on 08.07.2022. Defendant no. 2 is his wife. Arun Singh is the director of defendant no. 3 company and is also a partner of defendant no. 4 partnership firm and has been duly authorized by the company and the firm to file the written statement. It was claimed that in the year 2012, deceased defendant no. 1 and his wife defendant no. 2 adopted and started using the trademark "Victoria Cross" in respect of their goods and business. The said trademark was adopted after extensive market search as well as the search of the e-records of trademark registry. In 2015, defendant no. 1 also created, adopted and started using an artistic -4- work/label Victoria Cross alongwith the device of Plus/Cross and started using the same in respect of the said business. This art work was created by defendant no. 1 after employing great labour and skill and defendant no. 1 claims a copyright over the same and obtained the registration of said art work under the copyright work valid and subsisting till date. In 2015, the partnership firm defendant no. 4 was formed wherein defendant no. 2 alongwith other is the partner. Prior to formation of this partnership firm, defendant no. 1 and 2 gave their no objection for use of trademark "Victoria Cross" as part and trade name to the partnership firm. In 2016, defendant no. 3 company was incorporated by defendant no. 2 and one of the partners of defendant no. 4. At that time, defendant no. 1 and 2 gave their no objection in favour of defendant no. 3 for use of trademark Victoria Cross. Defendant no. 1 also gave permission to use his art work Victoria Cross to defendant no. 3 and 4. It is claimed that the said trademark and label Victoria Cross of the defendants by virtue of high and superior quality and long and extensive user has acquired factual distinctiveness as well as unique good will and reputation in the market. It is claimed that there is no similarity between the trademark of the plaintiff as the trademark Victoria Cross used by the defendants is the combination of two unique common English Dictionary work "Victoria" and "Cross" and the same is entirely different with the plaintiff trademark Victorinox. It was also stated that ever since 2012, the defendants have been honestly and bonafidely and exclusively using their trade name and the present suit is misuse of process of law. It was also claimed that plaintiff has not come to the court with clean hands. The plaintiff in the suit has claimed that it came across -5- defendant trademark in July, 2019 though it was well aware about the user by the defendants even before that. Deceased defendant no. 1 received an e mail from the representative of the plaintiff on 09.02.2019 inquiring about the trademark Victoria Cross, which was duly replied on 11.02.2019 and further on 14.02.2019 by defendant no. 1. Thereafter, e-mails were exchanged between deceased defendant no. 1 and representative of the plaintiff and vide e-mail dated 08.04.2019, the details of the application filed by the defendants before the trademark registry were also provided. The plaintiff deliberately did not file the copies of the trademark applications filed by the defendant. The suit is barred by delay and acquiescence as the plaintiff was aware about the continuous user of the trademark Victoria Cross since 2012-2015. Assignment of rights by Mr. Ashok Sawhney in the trademark Victoria Cross in favour of the plaintiff was disputed. It was also denied that defendant no. 1 gave any undertaking to Mr. Ashok Sawhney and it was stated that the same is forged and fabricated and police complaint has already been lodged.
4. In the replication, it was stated that plaintiff missed out in mentioning the email communications between the plaintiff and defendant no.1 in the suit because of lack of co-ordination between different departments of plaintiff and the same was not deliberate. The other contents of the written statement were denied and of the plaint were reconfirmed.
5. From the pleadings of the parties, following issues were framed on 11.12.2023:
1. Whether plaintiff is entitled to a decree for permanent injunctions as prayed for ? OPP -6-
2. Whether plaintiff is entitled to a decree for delivery up against the defendants ? OPP
3. Whether plaintiff is entitled to a decree of rendition of accounts ? OPP
4. Whether suit is without cause of action as pleaded by the defendants in preliminary submissions and preliminary objections of the written statement?OPD
5. Who is entitled to the cost of the suit? Onus on parties.
6. Relief.
6. The plaintiff to prove its case has examined its AR Smt. Meena Bansal as the only witness whereas Mr. Arun Singh, an authorized representative of defendant no. 3 and 4 appeared as the sole witness for all the defendants.
7. My issue wise findings are as under:
ISSUE NO. 1 and 2:
8. These two issues are inter-connected and are taken up together. The onus of proving these issues was on the plaintiff. PW1 in her testimony proved on record the authorization in her favour as Ex. PW1/18, the trademark labels of the plaintiff as PW1/1 (colly) and PW1/3 (colly), the status of plaintiff registered trademarks in India as Ex. PW1/5 (colly), the legal proceedings certificates of the registered trademarks of the plaintiff as Ex. PW1/19 (colly), the deed of assignment by Promoshirt SM SA in favour of the plaintiff as Ex. PW1/21, the undertaking given by defendant no. 1 to Mr. Ashok Sawhney, to not to use the trademark Victoria Cross in relation to any business as Ex. PW1/24 (colly) and other documents showing the impugned products of the defendants, status of their trademark applications.
-7-In the cross examination, her authority to depose was challenged but she denied that Ex. PW1/18 is a defective authority. She also stated that Ashok Sawhney was duly authorized on behalf of Promoshirt SM SA to assign the Victoria Cross to the plaintiff, however, she failed to remember where this assignment deed was executed or where it was attested. She stated that Mr. Carl Elsener is the general counsel of the plaintiff, who has authorized her to file this case. She denied the suggestion that the undertaking Ex. PW1/24 is a forged and fabricated document.
9. DW1 on the other hand in his affidavit, reiterated the contents of the written statement and proved on record the board resolution in his favour by defendant no. 3 but could not prove any authorization on behalf of defendant no. 4 to depose on behalf of the firm. He proved on record the copy of the trademark application filed by the defendants as Ex. DW1/12 and the certificate of trademark registration in New Zealand as Ex. DW1/13 and the copy of the e-mail communications between plaintiff and defendants as Ex. DW1/17. His cross examination which will be referred later, demolished the case of defendants.
10. It was argued by Ld. Counsel for the plaintiff that the plaintiff is using the trademark Victorinox with Cross Device since 1884 worldwide and in India since 1984-85 for wide range of products including multi function pocket tools, hand operated tools, leather goods, wallets, luggage, bag, fragrance etc. and is using domain name www.victorinox.com since 16.11.1998 and the earliest registration of the plaintiff in India in class 8 is dated 17.05.1984. The plaintiff is the prior adopter and user of the trademark Victorinox and is entitled to its protection. If was further argued that the plaintiff has acquired rights in the -8- trademark Victoria Cross by virtue of assignment dated 07.07.2020 from Promoshirt SM SA and therefore, is the proprietor of trademark Victoria Cross with Device of Cross. The defendants impugned trademark Victoria Cross with Device of Cross is identical and deceptively similar to the plaintiff's trademark and the defendant has been using the trademark Victoria Cross and Device of Cross in relation to similar products as that of plaintiff. It was argued that the defendants have failed to establish any prior user to the registration of plaintiff's trademark. It was argued that there is no malafide on the part of the plaintiff in non mentioning the email communications between the parties, which was prior to filing this suit since there was lack of proper coordination and communication between different department of plaintiff and plaintiff attorney. It was argued that defendants concealed the undertaking issued by defendant no. 1 dated 27.01.2017 in favour of Promoshit SM SA for not using the mark Victoria Cross for which the Hon'ble High Court issued notices U/s 340 Cr.P.C. against defendant no. 1 and 2 for concealing this undertaking. DW1 was not able to prove his authority to act on behalf of defendant no. 3. Defendants have given false statements with regard to incorporation of defendant no. 3, use of impugned mark in New Zealand and with regard to origin of goods on their exhibits including false addresses. Defendant no. 1 was an employee of Ashok Sawhney and was not permitted to do any parallel business during his employment. Defendants raised the false plea of user of the mark in the written statement. Defendants did not file any documents of user of this mark for the period 2012-14. Defendants fabricated their statement for the year 2015-16, 2016-17. This court has -9- jurisdiction to try this case as DW1 admitted that their products are available on Amazon and any one in jurisdiction of this court can purchase the same. The pendency of the application of the defendant before Trademark Registry is no defence. In support of his submissions, counsel for the plaintiff has relied upon plethora of judgments.
11. On behalf of the defendants, it was argued that defendant no. 1 and 2 being husband and wife adopted and started using the trademark Victoria Cross in the year 2012 in respect of goods namely bags, bag packs, wallets, leather goods, pocket tools, knifes etc. and this mark was adopted after extensive search and this word was coined by the defendants. Defendants have filed several applications for registration of trademark Victoria Cross in respect of aforesaid goods pending since 02.05.2012 onwards. The plaintiff did not oppose the said application, which were advertised in the trademark journal as early as in August, 2015. In 2015, defendant no. 1 created an artistic work Victoria Cross alongwith a device of Plus and started using the same in respect of his business and also obtained copyright registration in respect of this art work, which is still valid and subsisting. This trademark Victoria Cross has acquired good will and reputation by virute of superior quality goods and public identifies and associate the trade name Victoria Cross with the name of defendants and none else. It was argued that there was delay and acquiescence on the part of the plaintiff. The plaintiff was well aware about the defendant trademark much prior to second week of July, 2019 as claimed in the suit and therefore suit is liable to be dismissed on this ground. The plaintiff deliberately concealed the emails dated 11.02.2019 and 14.02.2019 exchanged between -10- representatives of the plaintiff and defendant no. 1 and thereafter, email were exchanged between them. The resolution cum authority in favour of PW1 is defective and suit is liable to be dismissed on this ground alone. It was argued that the trademark of the plaintiff and defendants are entirely different, not phonetically, visually and structurally similar in any manner and the same should be read as whole and cannot be dissected. The trademark Victoria Cross comprises of two words Victoria and Cross, which are common English words and even the device of Cross used by the defendants is totally different with that of the plaintiff. The two marks do not depict any commonness of idea. There is also price difference between the two products and the consumers cannot be confused. The plaintiff has relied upon the assignment deed in its favour executed by Promoshirt SM SA but the same cannot be relied upon as is not admissible in evidence as it does not bear any apostille certificate as required for a foreign document. The plaintiff has not produce any single invoice, advertisement or sales figure to show the user of the trademark since 1984-85 or for any point of time in India. The plaintiff has never used the mark Victorinox in respect of any goods/business in India. The plaintiff has cleverly tried to portrait its alleged device as Cross and Shield Device whereas the plaintiff himself referred as the Shield Device. Ld. Counsel for the defendant in support of her submission has also relied upon several judgments.
FINDINGS:
12. I have perused all the judgments relied upon and the material on record. As mentioned earlier, the cross examination of DW-1 is fatal to their case. He stated in the cross examination -11- that defendant no. 3 was incorporated in 2018. DW-1 admitted that it is wrongly mentioned in the written statement that defendant no. 3 was incorporated in 2016. It is mentioned in para 6 on page 5 of the WS that defendant no. 3 company got incorporated by defendant no. 2 (Komal Gupta) with other partners in 2016. Why the defendants raised false plea in this regard is unexplained. Further, DW-1 admitted that deceased defendant no. 1 was an employee of Ashok Sawhney and Sons (HUF) and Ashok Sawhney was the owner of Swiss Military Life Style Product Pvt. Ltd., Ashok Sawhney & Sons (HUF) and Promoshirt SM SA. He also admitted that he himself was employee of Swiss Military Life Style Product Pvt. Ltd. He admitted that he was not allowed to do parallel business during employment. He stated that defendant no. 1 applied for registration of trademark Victoria Cross for the first time in 2012 and it is wrongly mentioned in para 6 of the written statement that defendant no. 1 and 2 adopted and immediately started using the trademark Victoria Cross on extensive scale in 2012. He does not know if defendant no. 2 was using the mark Victoria Cross before formation of defendant no. 4. In that case, the story of defendants that defendant no. 2 is using mark Victoria Cross since 2012 fails. He admitted that no document has been filed on record to show that defendant no. 1 and 2 were using the trademark Victoria Cross from 2012 to 2014 and who was the owner of this trademark in 2012. He admitted that no document has been filed to show that defendant no. 2 is using this trademark individually after 2015 He stated that the undertaking given by defendant no. 1 Ex.PW1/24 (Colly) is fabricated as deceased defendant no. 1 told him that he did not give any such -12- undertaking. He admitted that defendant no. 1 mentioned before Hon'ble High Court that he executed this undertaking though with an understanding between the parties that deed was not to be utilized but was in fact to be destroyed. It shows that execution of the undertaking was not disputed before Hon'ble High Court by defendant no.1 himself. He admitted that defendant no. 3 and 4 are not selling products outside India or in New Zealand. He stated that defendants are only importing and not exporting. He admitted that defendants do not have any office outside India and has no idea about any overseas address. He admitted that defendants have not used the brand Victoria Cross globally and the claim made by the defendants on the website of using this trademark for two decades is incorrect. He admitted that the sales figure mentioned in the written statement for the year 2016-17 is incorrect. He admitted that there cannot be identical sales figures for two years as mentioned in the written statement and one of these is incorrect.
13. As already said, the cross examination of DW1 demolishes the defence raised in the written statement. DW1 more than once admitted in the cross examination that there is no document to show that defendant no. 1 and 2 are using the trademark Victoria Cross from 2012 to 2014. The undertaking given by defendant no. 1 to Ashok Sawhney to not to use the mark Victoria Cross has been proved on record. Though it was argued for the defendant that this is a forged and fabricated document and a police complaint has been lodged but no such complaint has been placed on record. Otherwise also only by lodging a complaint against this undertaking is of no help to the defendants. From the order dated 02.08.2021 passed by Hon'ble High Court in FAO -13- Commercial No. 101/2021, it is clear that defendants never took the stand before Hon'ble High Court that this undertaking is a forged and fabricated document. The Hon'ble High Court observed in para 14 of that order that the defendants herein never challenged the authenticity of this declaration and it prima facie shows that defendant no. 1 was in service of Ashok Sawhney till 31.12.2016 and it is virtually impossible that he would have built a name or reputation in the mark Victoria Cross. The stand of defendant no. 1 before Hon'ble High Court in this FAO was that this declaration was to be kept private and was to be torn ultimately. This defence was negated by Hon'ble High Court. It was never claimed before Hon'ble High Court that this undertaking is a forged and fabricated document and this defence taken before this court appears to be after thought. This undertaking Ex. PW1/24 shows that defendant no. 1 on 27.01.2017 declared that he was working with Ashok Sawhney and his group of companies for last 19 years and was relieved on 31.12.2016. He was not carrying any business activity under the brand Victoria Cross and further undertook not to use the brand Victoria Cross for any kind of business. This undertaking was not challenged even during trial in the cross examination of PW1 except of the suggestion that it is forged and fabricated, which is contrary to the stand before Hon'ble High court. In view of this undertaking, defendant no. 1 has no right to use the mark Victoria Cross and as alleged since 2012. When defendant no.1 stated in this undertaking that he was not carrying any business activity under brand Victoria Cross, then the question of using the same since 2012 by defendants does not arise.
-14-14. Further DW1 admitted in his cross examination that there is no document on record to show that defendant no. 1 and 2 were using the trade mark Victoria Cross from 2012 to 2014. This demolished the theory of the defendants of prior user.
15. Coming to the assignment deed Ex. PW1/21. Through this assignment deed, the plaintiff got the right to mark Victoria Cross from Promoshirt SM SA. This deed was executed on 07.07.2020. This document was challenged by the defendants on the ground that it is a foreign document and is not carrying any apostille certificate as required and cannot be read. This document shows that the stamp paper for execution of this document was purchased in Delhi and it cannot be said that this document was executed out of India. Otherwise also, this document was not challenged in the cross examination of PW1. It was not suggested to the witness by Ld. Counsel for the defendant that this document is forged and fabricated. Even the exhibition of this document during examination in chief of PW1 was not questioned. The defendants, who did not raise any objection when the document was proved, cannot challenge the document during arguments. It is duly proved that the plaintiff got the rights in the mark Victoria Cross from Promoshirt SM SA through Ex. PW1/21.
16. In view of this discussion,that the defendants have failed to prove prior user and plaintiff got assignment in mark Victoria Cross through assignment deed, the only question left is about the similarity between the work Victorinox and Victoria Cross. Both the counsels have cited several judgments in support of their contentions.
-15-17. The judgments relied by Ld. Counsel for plaintiff in this regard are as under:
1. Hitaichi Ltd. vs. Ajay Kumar Agarwal, Manu/DE/0698/1995 (DB) [HITACHI vs HITAISHI]
2. Amrutanjan Ltd. Vs. Amarchand Sobachand, MANU/TN/0364/1979 [AMRUTANJAN vs AMAR'S PAIN BALM]
3. Amba Lal Sarabhai Vs. Sara Pharmaceuticals, MANU/DE/0512/1982 [SARA vs SARALYTE SARAGYL]
4. Ruston & Hornbyvs Zamindara Engineering Co., MANU/SC/0304/1969 (DB) (SC) [RUSTON vs RUSTAM INDIA]
5. K.R. Chinna Krishna Chettiar Vs. Shri Ambal & Co., MANU/SC/0303/1969 (DB) (SC) [AMBAL vs ANDAL]
6. M/s Pidilite Industries Ltd. Vs. Mittees Corporation & Anr., MANU/DE/0249/1988 [FEVICOL vs TREVICOL]
7. Essco Sanitation Vs. Mascot Industries, MANU/DE/0293/1982 [ESSO vs OSSO]
8. Richardson Vicks Ind. Vs. Vikas Pharma, MANU/DE/0389/1989 [VICKS VAPORUB vs VIKAS's PACORUB]
9. M/s Tinna Enterprises Pvt. Vs. International Rubber Industries, MANU/DE/0693/1985 [TINNA vs TANNY]
10. Colgate Palmolive Co. Vs. Sehgal Locks Co. & Ors., MANU/DE/0705/1995 [COLGATE vs COLLEGIATE]
11. R.P. Locks Co. Vs. Sehgal Locks Co. & Ors., MANU/DE/0247/1988 [HARRISON vs. HARICON]
12. Lakme Ltd. Vs. Subash Trading, MANU/DE/0259/1996 [LAKEME vs LIKEME]
13. M/s Girnar Tea Vs. Brooke Bond (India) Ltd., MANU/MH/0877/1990 (DB) [GULNAR vs GIRNAR]
14. Deep Chand Arya Ltd. vs Kiron Soap Works, MANU/DE/0334/1980 [SINAULA vs SINDRELA] -16-
15. Asso Auto Accessories Co. Vs. Ess Pee Auto Enterprises, MANU/DE/0390/1989 [ASSU vs ASCO]
16. Conopco Inc. Vs. Banwari Lal, MANU/DE/0840/1997 [PONDS vs PONAS]
17. Ciba Ltd. Vs. M. Ramalingam & S. Subramaniam, Trading As South India Manufacturing Co. & Ors., MANU/MH/0021/1958 [CIBA vs CIBOL]
18. Vikas Manufacturing Co. Vs. Bharaj Manufacturing Co., MANU/PH/0179/1980 [BEMCO vs VEMCO]
19. Asha Soap Factory Vs. Dhanthak & Co. & Ors., MANU/MH/0285/1983 [BB vs 88]
20. Anglo French Drug Co. Ltd. Vs. Belco Pharma, MANU/PH/0185/1984 (DB) [BEPLEX vs BELPLEX]
21. Amritdhara Pharmacy Vs. Satyadeo Gupta, MANU/SC/0256/1962 (DB) (SC) [AMRITDHARA vs LAKSHMANDHARA]
22. Devi Pesticides Pvt. Ltd. Vs. Shiv Agro Chemicals Industries, MANU/TN/1436/2006 (DB) [BOOM vs BOOM PLUS]
23. Avis International Ltd. Vs. Avi Footwear Industries & Ors., MANU/DE/004/1991 [AVIS vs AEVIS]
24. The Bombay Oil Industries Pvt. Ltd. Vs. Ballarpur Industries Ltd., MANU/DE/0239/1998 [SAFFOLA vs SHAPOLA]
25. B.K. Engineering Co. Vs. UBHI Enterprises & Ors., MANU/DE/0404/1984 (DB) [BK vs BK 81]
26. Mohan Meakin Ltd. Vs. A.B. Sugars Ltd., MANU/DE/3629/2013 [TOLD MOM vs OLD MONK]
27. Shreenath Heritage Liquor Pvt. Ltd. Vs. Allied Blender & Distilled Pvt. Ltd., MANU/DE/1933/2015 (DB) [OFFICER'S CHOICE Vs. COLLECTOR'S CHOICE]
28. Cadbury India Ltd. & Ors. Vs. Neeraj Food Products, MANU/DE/1956/2007 [GEMS vs JAMES BOND]
29. Kamal Kant and Company LLP Vs. Raashree Fragrances India Pvt. Ltd., Case No. CS (OS) No. 1471/2015, reported in MANU/DE/3436/2015 -17-
30. Judgement dated 20.02.2017 in the case titled M/s.
Kamdhedu Ispat Ltd. Vs. Him Steel pvt. Ltd. in FAO 87/2017 [KAMDHENU Vs. KAMAKSHI]
18. The judgments relied by Ld. Counsel for defendants are as under:
1. Nirma Limited Vs. Nimma International and Anr., CS (OS) 1826/20 decided on 07.01.2010 [NIRMA vs NIMSONS]
2. Titan Industries Ltd. Vs. Kanishk Jewellery, Madras High Court, 2003 (26) PTC 145 Mad decided on 18.11.2002 [TANISHQ vs KANISHK]
3. M/s. Hindustan Sanitaryware & Industries Ltd. Vs. M/s. Champion Ceramic, Delhi High Court, FAO 95/2005 decided on 18.01.2011 [HINDWARE HVITREOUS Vs. HIMWARE]
4. Diageo North America, Inc. and Ors. Vs. Shiva Distilleries Limited, Delhi High Court, CS (OS) No. 255/2004 decided on 05.07.2007 [SMIRNOFF Vs. BRISNOFF]
5. Shelke Beverages Private Ltd. Vs. Raiklal Manikchand Dhariwal, Bombay High Court, Appeal No. 8 of 2010 in Notice of Motion No. 3709 of 2009 in Suit No. 2576 of 2009 [MANIKCHAND OSYRICH Vs. OXYCOOL]
6. Three-N-Products Private ... Vs. Emami Limited, Calcutta High Court, MANU/WB/0245/2008 decided on 26.08.2008 [TRADEMARK/LABEL AS A WHOLEHELD DIFFERENT]
7. Gufic Ltd. & Another Vs. Clinique Laboratories, L1c, FAO (OS) 222/2009, Order dated 09.07.2010 [CLINIQUE Vs. SKINCLINIQ]
19. I have perused the case law cited. Every case is based on its on facts. Any infringement apart from parties allegations against each other and the material proved on record, has to be seen from the aspect of common man, who is the consumer. First it has to be seen whether there exists any similarity and if the answer is in the affirmative, then it is required to be seen whether there is any likelihood of the consumer being confused between the two. The comparison of the two trademarks has to be done -18- not only from the aspect of visuality but also from the aspect of phonetic similarity. If the pronunciation of both the words generate the similar phonetic effect, then the same has to be considered. For deciding so, the same has to be done from the aspect of a consumer, who does not go to the market with trademarks in his memory and just has a general impression of the name of the product and if the prominent features of the name in his memory are similar, then he is bound to be confused. The consumer has no side by side comparison of the two trademarks and the similarity test has to be done from the aspect of the consumer. The two trademarks may not be the exact copy of each other but even then can be similar from the aspect of the consumer.
20. The comparison of the two words "Victornix" and "Victoria Cross" has many prominent features which can create confusion and there is likelihood of deception on the level of pronunciation of the two marks more especially in the context of India where majority of the consumers are illiterate and are likely to be deceived more as compared to the western world as far as the phonetically similarity is concerned. The mark Victoria Cross and Victronix are so phonetically similar that the same can cause confusion to the common public. A consumer may not be able to differentiate the fine differences in two marks. Further both the parties before me have common articles to trade. The defendants are dealing in the same products in which the plaintiff is dealing and therefore, the confusion is bound to be more viz a viz in case of different products. So in my considered opinion there is similarity between the two marks, which are subject matter of this case.
-19-21. Coming to the plea of acquiescence as claimed by the defendants, I do not find any delay on the part of the plaintiff in filing this suit. There is no acquiescence in the present matter as argued for the defendants. Further the defendants can take this plea of acquiescence U/s 33 of the Trademark Act only if its user is in good faith. The discussions above show that there is no good faith on the part of the defendants. The defendants concealed the undertaking given by defendant no. 1 Ex. PW1/24. The defendants did not place on record any material to show that they are using this mark since 2012 as claimed and how defendant no. 1 was able to use this mark when he was still in employment of Ashok Sawhney till 2016. The conduct of the defendants is unfair and the defendant cannot take benefit on the plea of acquiescence.
22. Coming to the plea of concealing of emails exchanged between the parties in early 2019. The plaintiffs have already given an explanation that it is a big concern and any correspondence by its employees with defendant no. 1 was not brought to the notice of the attorney. I am of the considered opinion that there was no deliberate concealment on the part of the plaintiff and further even if it is presumed for the sake of argument that it was deliberate, the same was not material enough to dislodge the plaintiff from the suit and therefore, the plea raised by the defendant of not approaching the court with clean hands is not maintainable.
23. Coming to the case of the plaintiff, the plaintiff through the testimony of PW1 has proved on record that plaintiff is the registered owner of the trademark Victorinox and has been extensively using this trademark in India for class 8 since 1984- -20- 85 and thereafter for other classes as well. The arguments of defendants that testimony of PW-1 can not be read as she was not duly authorized is of no force in view of document Ex PW1/18. The application of the defendants for registration of their trademark is lying under objection and they have not been granted any trademark. Plaintiff has also placed on record the documents showing availability of its products in the jurisdiction of this court as well as the availability of the products of the defendant at Amazon. DW1 admitted in the cross examination that any one can purchase its products online including a person in Central Delhi. The plaintiff has also proved the impugned mark of the defendants and as already discussed, the same is similar to the registered trademark of the plaintiff. The plaintiff therefore has proved that it is entitled to protect infringement of its registered Trade Mark. Both the issues are decided in favour of the plaintiff.
ISSUE NO. 3:
24. The onus of proving this issue was on the plaintiff.
Plaintiff during its evidence has proved infringement of its trademark. However, the plaintiff has not proved on record its sales figures nor the sales figures of the defendants have been proved on record as DW1 admitted that the sales figures mentioned by them in the written statement are incorrect as they have shown identical figures for the year 2015 and for the year 2016. Though plaintiff is entitled to rendition of accounts but in view of the evidence led by the parties, where the plaintiff has failed to prove its sales figures and more so, in view of the fact that it was suggested to DW1 that defendants never sold any product under the trademark Victoria Cross during the relevant -21- period ,it would be proper to not to allow rendition of accounts. Plaintiff during the trial did not take any steps to bring on record the books of accounts of the defendants. The plaintiff therefore will be entitled only to damages and not to rendition of accounts. ISSUE NO. 4:
25. The onus of proving this issue was on the defendants. As already discussed, the defendants have failed to prove their case that the suit is without cause of action or is devoid of merits or that deceased defendant no. 1 or his wife defendant no. 2 adopted or started using the trademark Victoria Cross bonafidely since 2012 or soon thereafter. The defendants have also failed to prove that the undertaking given by defendant no. 1 to not to use the trademark Victoria Cross is forged and fabricated. The defendants therefore have failed to prove this issue. The same is decided against them.
ISSUE NO. 5:
26. Since the plaintiff has proved its case and the defendants have failed to prove that suit is without cause of action, the plaintiff is entitled to the cost of the suit. The issue is decided in favour of the plaintiff.
RELIEF:
27. In view of my findings given on the above issues, the suit is decreed and a decree for permanent injunction is passed in favour of the plaintiff and against the defendants thereby restraining the defendants themselves and through their proprietors, partners, agents, representatives, assigns, heirs, successors for and on their behalf manufacturing, marketing, using, selling, soliciting, exporting, displaying advertising or in any other manner dealing in the impugned trademark Victoria -22- Cross and the trade label Victoria Cross or any other trade label deceptively similar to the trademark of the plaintiff Victorinox and device mark Shield and Cross, which amounts to infringement of the plaintiff trademark, passing off and violation of plaintiff trademark and trade label, violation of the plaintiff's trade name and infringement of plaintiff copyright in its art work.
Defendants are further directed to deliver up all the finished and unfinished material bearing the impugned and violative trademark and label to the plaintiff for the purpose of destruction. Defendants are also directed to take down the contents of the infringing goods from the impugned website www.victoriacrossworldwide.com and block its view.
28. The plaintiff is also given nominal damages of Rs. 3,00,000/- in lieu of their prayer for rendition of accounts. The plaintiff shall also be entitled to the cost of the suit. Plaintiff is directed to pay deficient court fees.
29. Copy of the judgment be sent to all the parties by electronic mode, if available or otherwise.
30. Decree sheet be prepared after payment of deficient court fees.
31. File be consigned to Record Room.
Digitally signed by AMITAMIT KUMAR KUMAR Date:
2024.03.23 15:08:49 +0530 (AMIT KUMAR) District Judge, Comm. Court-08 Central, Tis Hazari Courts Extension Block, Delhi/23.03.2024 -23-