Delhi District Court
Lumax Industries Ltd. vs . M/S. Lumax Lights on 1 April, 2015
Lumax Industries Ltd. Vs. M/s. Lumax Lights
In the Court of Additional District Judge02, South District,
Room No. 602, Sixth Floor, Saket Courts Complex, New Delhi
In the matter of :
TM No. 07/2012
Unique ID : 02406C0035362012
Lumax Industries Limited
through Mr. Surinder Kaul, Constituted Attorney
B8586, Mayapuri Industrial Area,
PhaseI, New Delhi110064. ... Plaintiff
Versus
M/s. Lumax Lights,
220, Main Road, Savitri Nagar,
Panchsheel Park, New Delhi - 110017 ... Defendant
Date of Filing : 13.02.2012
Date of Institution : 15.02.2012
Decision Reserved on : 01.04.2015 (Forenoon)
Date of Decision : 01.04.2015
JUDGMENT
{on Suit for Permanent Injunction, restraining infringement of Trade Marks, passing off, dilution of goodwill, unfair competition & delivery up} Plaintiff's Case 1.1 Plaintiff Lumax Industries Limited is a company incorporated and Sh.Surender Kaul, Senior Manager (Legal), is a duly constituted attorney TM No. 07/2012 Page 1 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights by Board resolution dated 27.5.2011 (now Ex.PW1/5) to sign and verify the plaint and to institute the suit on behalf of plaintiff. The plaintiff, along with other group of companies, is well known as LUMAX GROUP, which is one of the most well known corporate group and one of India's leading business entities.
1.2 The other features of the case, as setup in the plaint (but denied by the defendant generally and specifically in its written statement on the ground of want of knowledge), are summarized in paragraph no.2 below.
2.1 Initially, in the year 1945, the plaintiff was a partnership firm by the name Globe Auto Industries, which dealt in automotive components; it adopted the trade mark 'LUMAX' for its business in the year 1969 but in the year 1981, the partnership was converted into private limited company, who took over all assets and liabilities. With effect from 10.12.1981, the plaintiff company Lumax Industries Private Limited was incorporated and in the year 1984, it was converted into a public limited company. In 1985, plaintiff made its first public offer/issue, it is registered and listed with National Stock Exchange and Bombay Stock Exchange. TM No. 07/2012 Page 2 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights 2.2 The other paragraphs no.4 to 20 enumerates about the plaintiff's business activities spread across India and abroad, vis a vis technical agreement with M/s Stanley Electric Company Limited, Japan, extend of consumer base to Maruti Suzuki India Limited, Hero Honda, Mahindra and Mahindra, Toyota and General Motors India. Plaintiff has international consumers including John Deer USA, Vignal Systems - France, Advia - Italy and Nissan Motors. The plaint also explains that it conducts colossal business in the state of art manufacturing facility located at Gurgaon, DaruhedaBawal Haryana, Chinchwad - Chakan Pune, Pant NagarHaridwar, Uttarkhand, SanandGujrat and Bidadi Karnataka vis a vis the sales figure under the Mark LUMAX from period 1972 to 2011, about quality of product and awards won by the plaintiff. In fact plaintiff has also its Research and Development Department being an integral part of its business agenda, plaintiff has its own recognition, development and goodwill, which is well known in India and abroad. Since 1969, when plaintiff's promoter thoughtfully coined trademark LUMAX, it has been in use continuously, extensively and uninterruptedly using the same as trade marks, trade name, house mark and service mark for all its business activities. Mark LUMAX is inherently distinctive and is exclusively associated by consumer as indicative of trade source TM No. 07/2012 Page 3 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights distinguishing goods and services of plaintiff from those of others. It has been so for the last about 43 years.
Moreover, the plaintiff has secured registration under the Trade Marks Act, 1999 for use of mark LUMAX, it variants and most of its group marks, necessary application with trade mark registry was filed on 15.9.1969 in Class 12 group for goods including parts and fittings for land vehicles, the trade mark 'LUMAX' was registered under the Act, 1958 under registration no.259394 (its legal proceeding certificates are now Ex.PW1/8). LUMAX logo was also got registered as an artistic work under the Copyright Act, 1957 vide registration no.2999580 and A58191/2000, (its record is now Ex.PW1/10). The plaintiff also got registered trademark LUMAX vide registration no.426009 dated 21.8.1984, now valid upto 21.8.1984 of Class 11 with regard to light fittings for use in automobiles (its legal proceeding certificates are now Ex.PW1/8). Moreover, the plaintiff has also applied/advertised by various applications enumerated in paragraph no.24 of the petition. 2.3 To say the plaintiff has two registrations for trade mark 'LUMAX' (words per se) and mark LUMAX in various classes, which confers rights of registered proprietor to the exclusive use to restrain user TM No. 07/2012 Page 4 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights of any identical or deceptively registered trademark. Hence, plaintiff has its own goodwill of mark 'LUMAX' to denote its services and business activities in general. The plaintiff has been and prominently carrying print and electronic media including trade Journals, directories, magazines and periodicals which have wide coverage and circulation, besides plaintiff own registered domain names www.lumaxindustries.com, www.lumaxautotech.com, www.lumaxauto.com and www.lumaxdk.com, which carries exclusive information about the business activities of the plaintiff. The plaintiff has spend a great amount of time, money, energy and efforts to promote and advertise its mark LUMAX (as detailed in paragraph 28 of the plaint), besides expenses on research and development (as detailed in paragraph 18 thereof); that is why the mark has attained designation of being 'well known mark'. 2.4 However, in the month of July, 2011, the plaintiff gained knowledge that defendant had started their business activities under the trade mark/trade name Lumax Lights which is comprising and containing plaintiff's mark 'LUMAX' as a whole and bears an identical / deceptive resemblance to the composite mark of plaintiff containing house mark LUMAX. Moreover, when plaintiff came about infringement of its TM No. 07/2012 Page 5 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights trademark, then spot purchases were made and defendant was selling the goods under infringed mark, the plaintiff has purchased goods and defendant issued invoice dated 16.01.2012 (now Ex.PW1/4), which is bearing infringed trade name Lumax Lights. Prior to it the plaintiff also issued cease and desist notice dated 27.7.2011 (now Ex.PW1/3) by registered post and E mail while advising the defendant to stop using plaintiff's trade mark, however, despite service of legal notice the defendant failed to reply or comply the notice.
2.5 The business activity of defendant is contrary to the provisions of statue or common law, its activities of infringing the plaintiff's mark is leading to confusion in the mind of public and likely to result in dilution of goodwill of plaintiff, the defendant is infringing the mark malafide and illegal.
That is why the present suit to restrain the defendant, its directors, partners or proprietor as the case may be, their assignees in business, franchisees, licensees, distributors and agents from selling, offering for sale, advertising, directly or indirectly dealing in identical or similar goods/services under the infringing mark/trading name Lumax Lights, which contains the mark LUMAX as a whole, or any other trade TM No. 07/2012 Page 6 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights mark/trading name as may be identical to or deceptively similar with or containing the trade mark LUMAX or any of the composite marks of the plaintiffs containing the mark LUMAX, amounting to infringement of all or any of the trade marks registered in the name of the plaintiffs, namely, Trade Mark Registration No. 259394 and 426009. Further the plaintiff is also entitled for decree of permanent injunction while restraining the defendant, its directors, partners or proprietor as the case may be, their assigns in business, franchisees, licensees, distributors and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in identical or similar goods/services under the infringing mark / trading name Lumax Lights which contains the mark LUMAX as a whole, or any other trade mark / trading name as may be identical to or deceptively similar with or containing the trade mark LUMAX or any of the composite marks of the plaintiffs containing the mark LUMAX, as may be likely to cause confusion or deception amounting to passing off of the goods / services and/or business of the defendants for those of the plaintiffs, besides mandatory Injunction directing the defendant its directors, partners or proprietor as the case may be, to change its name by deleting the word 'LUMAX' from its trading name. The plaintiff is also entitled for damages and delivery up of infringing goods, stationary, TM No. 07/2012 Page 7 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights hoardings, boards, printing material, dyes, blocks to authorize representative of their destructions.
3.1 By order dated 15.2.2012, an exparte adinterim injunction was granted in favour of plaintiff and against the defendant, then defendant had also appeared. Defendant filed its written statement on 27.4.12 and then by order dated 16.1.2013, the adinterim order dated 15.2.12 was confirmed.
3.2 It has already been narrated in paragraph no.2 above that defendant had denied all the allegations of plaint in its written statement. Moreover the defendant had also made certain explanations and objections in the form of preliminary objections, brief submissions and parawise reply, in nutshell that defendant is not manufacturing, selling or doing any act in the name of Lumax Industries Limited, the plaintiff came to the Court without clean hands and without cause of action.
3.2 The defendant is a retailer of fancy lights, he operates a shop, when he received summons from the court immediately he changed the name of his business and stopped using the name and style TM No. 07/2012 Page 8 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights of his business as Lumax Lights. The defendant in his brief submissions also undertakes not to use the name LUMAX in future. He requested to dismiss the suit.
3.3 Thence, he stopped coming to the court and after adjournments, the defendant was proceeded exparte on 5.2.2014.
4. At the stage of exparte evidence, plaintiff's witness PW1 Sh.Surender Kaul, author of the plaint, stepped into the witness box and then concluded the evidence. The case came for final hearing.
5. At the juncture of final hearing, counsel Ms. Shweta Duggal, Advocate made final submissions {also explaining with regard to prayer clause, paragraph 46(iv), the same has already been recorded in the before lunch session proceedings that the same is not pressed for).
It is submitted, while referring and relying upon the facts and features by way of oral testimony of sole witness / PW1 as well as documentary record that the case of plaintiff stand established. Even the plaintiff has proved by way of photograph that Lumax Light (Ex.PW1/1) shows the shop being operated by the defendant, the defendant is also utilizing plaintiff's trade mark on his visiting card (Ex.PW1/2) and TM No. 07/2012 Page 9 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights defendant had also filed written statement, which infer no other conclusion except that defendant was using plaintiff's trade mark by infringing the rights of plaintiff. Moreover, there were other infringer of plaintiff's trademark, the plaintiff was compelled to file suit against them, the same were either decreed or injunction orders were directed against them, the same have also been enumerated in pleading and also in evidence. It is also submitted that although, plaintiff has led the evidence, however, when there is similarity between the plaintiff's mark and the defendant's mark is so close either visually, phonetically visavis there is correspondence between the two to cease the use of mark, it does not require evidence to establish that plaintiff's rights have been violated, reliance has been placed on Kavi Raj Pandit Durga Datt Sharma vs. Navratna Pharmaceuticals Laboratories 1965 (1) SCR 737. Moreover, reliance is also placed on Time Incorporated vs. Lokesh Srivastava 116 (2005) DLT 599 that in case of infringement of plaintiff's registered trademark and registered copy right, the plaintiff is entitled for punitive / exemplary damages. The plaintiff claims damages of Rs. 2 lacs during oral arguments.
6.1 (Findings) : The contentions are assessed in the light of material on TM No. 07/2012 Page 10 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights record and the statutory provisions of law. Firstly, the plaintiff's plea is considered and allowed that damages / rendition of accounts of Rs. 21 lacs are not pressed for, consequently, the suit is within the pecuniary jurisdiction of present Court.
6.2 Secondly, the following conclusions are drawn :
(i) On plain reading of testimony of author of the plaint/PW1, it is apparent that plaintiff is registered proprietor of trade Mark LUMAX (word perse) in respect of Class 12 vide application no. 259394 qua parts and fittings included in Class 12 for land vehicles and also registered trade mark vide registration no.426009 in respect of light fittings included in Class 11 for use in automobiles (Ex.PW1/8), it remained unchallenged and plaintiff has proved registration of trade marks in its favour.
(ii)The defendant had filed written statement by explaining that immediately on receipt of summons from the court, it has changed its name. The defendant had denied other facts that it has not been manufacturing any article under the trade name or house name of plaintiff. By reconciling the pleadings of the plaintiff and the defendant together, it stand proved that defendants house name M/s Lumax Lights comprises plaintiff's trade mark LUMAX completely, whereas the plaintiff is protected statutorily by the registrations in its favour. Moreover, the defendant was got served with legal notice dated 17.7.2011 (Ex.PW1/3) to resist from using the house name Lumax Lights, since plaintiff has registered mark LUMAX, however, the defendant himself narrates that he stopped using the mark/name LUMAX after receipt of summons from the court, however, he has denied the legal notice. The defendant's written statement is supported by an affidavit but nowhere either in the affidavit or in the written statement, the defendant has mentioned about its new name adopted in place of erstwhile name TM No. 07/2012 Page 11 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights Lumax Lights.
(iii)The photographs of shop of defendant (Ex.PW1/1), visiting card (Ex.PW1/2) show that defendant used name Lumax Lights, which is not only identical but also deceptively similar to plaintiff's registered mark 'LUMAX' and plaintiff has also proved legal notice dated 27.7.2011 (Ex.PW1/3) which was sent and served prior to filing of the suit on 13.2.2012.
(iv)By making bald narrations that defendant has changed name of its establishment would not undo the allegations of plaintiff, which have been established by the plaintiff, since the invoice dated 16.1.2012 (Ex.PW1/4) is subsequent to legal notice dated 27.7.2011, consequently it is held that there is cause of action in favour of plaintiff and against the defendant and the same has also been proved by the plaintiff.
(v) The conclusions drawn in sub paragraph (i) to (iv) above, proved the plaintiff's case of permanent injunction and infringement of plaintiff's trade mark. However, the plaintiff could not establish that the defendant is manufacturer of goods under the mark LUMAX.
(vi)The plaintiff claims punitive damages of Rs. 2 lacs during arguments, while giving up the claim, as mentioned in prayer clause 46(iv). Considering the scale of establishment of defendant, appearing from the photograph, the damages of Rs. 60,000/ would meet both ends of justice, however, the plaintiff would be require to pay the deficient Court fee within one month from today. 6.3 In view of the findings arrived in paragraph no. 6.2 above, the plaintiff suit is decreed in favour of plaintiff and against the defendants as follows:
(a) The plaintiff suit for permanent injunction is decreed in its favour and against the defendant while restraining the defendant, its directors, TM No. 07/2012 Page 12 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights partners or proprietor, their assignees in business, franchisees, licensees, distributors and agents from selling, offering for sale, advertising, directly or indirectly dealing in identical or similar goods/services under the infringing mark/trading name Lumax Lights, which contains the mark LUMAX as a whole, or any other trade mark/trading name as may be identical to or deceptively similar with or containing the trade mark LUMAX or any of the composite marks of the plaintiffs containing the mark LUMAX, duly registered with the Trade Mark Registration No. 259394 and 426009.
(b)The plaintiff suit is further decreed in its favour and against the defendant while restraining perpetually the defendant, its directors, partners or proprietor, their assigns in business, franchisees, licensees, distributors and agents from selling, offering for sale, advertising, directly or indirectly dealing in identical or similar goods/services under the infringing mark / trading name Lumax Lights which contains the mark LUMAX as a whole, or any other trade mark / trading name as may be identical to or deceptively similar with or containing the trade mark LUMAX or any of the composite marks of the plaintiffs containing the mark LUMAX, as may be likely to cause confusion or deception amounting to passing off of the goods / services and/or business of the defendants for those of the plaintiffs.
(c)The plaintiff's suit for mandatory Injunction is decreed in its favour while directing the defendant its directors, partners or proprietor, to change its house name by removing the word 'LUMAX' from its trading name forthwith and
(d)The plaintiff's suit is also decreed for damages of Rs. 60,000/ in its favour and against the defendant. The plaintiff will pay the deficient Court fee within one month from today.
However, for want of proof of other aspect and case of delivery up of infringing goods, stationary, hoardings, boards, printing material, dyes, blocks to authorize representative of their destructions, this request is declined.
Costs of the suit are also allowed in favour of the plaintiff TM No. 07/2012 Page 13 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights and against the defendant. However, decree sheet will be drawn after deposit of deficient Court fee and then it will be executable as per law.
File is consigned to record room.
Announced in the open Court (Inder Jeet Singh) on Wednesday, Additional District Judge02 (South) Chaitra 11, Saka 1937 Saket, New Delhi TM No. 07/2012 Page 14 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights TM No. 07/2012 01.04.2015 Present : Ms. Shweta, Counsel for plaintiff. Defendant is exparte.
Before the arguments started by Ld. counsel for plaintiff, the attention of Ld. counsel was drawn to prayer clause paragraph 46 (iv) that rendition of account of profit and decree for damages for at least Rs. 21 lacs has been claimed, it is asked whether the present Court has pecuniary jurisdiction for the amount claimed and it is explained, firstly, this prayer clause was never pressed for but for punitive damages and secondly, in the valuation paragraph 45, the Court fee was also not affixed or valued either for the purposes of jurisdiction or Court fee with regard to rendition of accounts of Rs. 21 lacs. It is submitted that Court has jurisdiction, while giving up prayer clause (iv), visavis the case has progressed, as this prayer clause was not pressed for in the beginning.
The aforementioned query was raised, as the latter part of submissions were not on record but now it stand clarified and becomes matter of record that paragraph 46(iv) is not pressed for but for punitive damages, which is stated to be independent of paragraph 46(iv).
Hence, arguments are heard.
TM No. 07/2012 Page 15 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights To come up for judgment after lunch session.
(Inder Jeet Singh)
ADJ02 (South), Saket
New Delhi /01.04.2015
Recalled at 4 pm
Present : Ms. Shweta, Counsel for plaintiff.
Defendant is exparte.
Vide separate judgment announced today, the plaintiff suit is decreed in favour of plaintiff and against the defendants as follows :
(a) The plaintiff suit for permanent injunction is decreed in its favour and against the defendant while restraining the defendant, its directors, partners or proprietor, their assignees in business, franchisees, licensees, distributors and agents from selling, offering for sale, advertising, directly or indirectly dealing in identical or similar goods/services under the infringing mark/trading name Lumax Lights, which contains the mark LUMAX as a whole, or any other trade mark/trading name as may be identical to or deceptively similar with or containing the trade mark LUMAX or any of the composite marks of the plaintiffs containing the mark LUMAX, duly registered with the Trade Mark Registration No. 259394 and 426009.
(b)The plaintiff suit is further decreed in its favour and against the defendant while restraining perpetually the defendant, its directors, partners or proprietor, their assigns in business, franchisees, licensees, distributors and agents from selling, offering for sale, advertising, directly or indirectly dealing in identical or similar goods/services under the infringing mark / trading name Lumax Lights which contains the mark LUMAX as a whole, or any other trade mark / trading name as may be identical to or deceptively similar with or containing the trade mark TM No. 07/2012 Page 16 of 14 Lumax Industries Ltd. Vs. M/s. Lumax Lights LUMAX or any of the composite marks of the plaintiffs containing the mark LUMAX, as may be likely to cause confusion or deception amounting to passing off of the goods / services and/or business of the defendants for those of the plaintiffs.
(c)The plaintiff's suit for mandatory Injunction is decreed in its favour while directing the defendant its directors, partners or proprietor, to change its house name by removing the word 'LUMAX' from its trading name forthwith and
(d)The plaintiff's suit is also decreed for damages of Rs. 60,000/ in its favour and against the defendant. The plaintiff will pay the deficient Court fee within one month from today.
However, for want of proof of other aspect and case of delivery up of infringing goods, stationary, hoardings, boards, printing material, dyes, blocks to authorize representative of their destructions, this request is declined.
Costs of the suit are also allowed in favour of the plaintiff and against the defendant. However, decree sheet will be drawn after deposit of deficient Court fee and then it will be executable as per law.
File is consigned to record room.
(Inder Jeet Singh) ADJ02 (South), Saket New Delhi /01.04.2015 TM No. 07/2012 Page 17 of 14