Delhi District Court
Rahul Kapur (Proprietor) vs Manoj Gupta (Proprietor) on 31 May, 2025
IN THE COURT OF SH.AJAY GUPTA
DISTRICT JUDGE (COMMERCIAL COURT)-05
TIS HAZARI COURTS, WEST: DELHI
CNR No. DLWT01-009651-2019
CS (Comm)/577/2019
Sh. Rahul Kapur (Proprietor)
Trading as Royal Field & Co.
At:NA -151, Street NO.6
Vishnu Garden
New Delhi-110018
....PLAINTIFF
Versus
Sh. Manoj Gupta (Proprietor)
Janki Dass & Company
At: 3220-21/1, Prem Market
Gali Charan Dass, Hauz Qazi
Delhi-110006
....DEFENDANT
Date of Institution of Case : 03.12.2019
Date of Arguments : 20.05.2025
Date of Pronouncement of Judgment : 31.05.2025
JUDGMENT
1. Plaintiff has filed the present suit for permanent and mandatory injunction seeking restraining the defendant CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 1 of 27 from infringement/passing off of trademark/word mark, artistic work dilution and also for delivery up, rendition of accounts and damages on the basis of following averments:-
(i) That plaintiff is the manufacturer of all kinds of sanitaryware items and he supplies the goods all over India as well as exports to Nepal and Bhutan.
The father of plaintiff conceived, coined and honesty adopted the trademark/device mark "ROYAL" in the year 1959 and he was using the same without any interruption in respect of various sanitary goods which includes different kinds of bathroom fittings. In the year 1981, father of plaintiff got the said trademark registered under class 11 vide trademark application no. 373705. The father of plaintiff Sh. Sunil Kapoor was running his business in the name of a partnership firm M/s Royal Field & Co and till 2011, the said firm remained a partnership firm though there had been certain changes in the partners of firm. In 2011, the said firm was dissolved and all rights of the said firm were transferred to plaintiff and since 2011, plaintiff is running this firm as its proprietor. The plaintiff got renewed his said trademark uptill 20.03.2029. Vide application no. 4292407, plaintiff also applied for registration of his device mark.
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(ii) That the plaintiff is a registered proprietor of trademark/devicemark 'ROYAL' for all kinds of bath fittings, ventilating, water supply and sanitary purposes etc. was having sale of Rs.7,07,44,715/- during the year 2018-19. The plaintiff is also using the said trademark which is having a unique design, layout, getup and colour scheme and encircled logo and the goods of plaintiff are being purchased by the plumbers and such a section of consumers who are semi-literate and illiterate people who recognize the products from the label and trademark/wordmark easily.
(iii) That the plaintiff has built up unparallel reputation and goodwill in the trademark "ROYAL" and it is quite famous in the market as the plaintiff promote the same through Justdial.com, advertisement on local T.V channels and also catalogues and any use of the said packaging as well as any other mark or packaging deceptively similar to the plaintiff's packaging, would cause confusion and deception in the minds of consumers.
(iv) That plaintiff was shocked when he came across with defendant's products under mark 'ROYAL DIAMOND' in respect of sanitaryware CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 3 of 27 such as bath fittings, water supply and sanitary purposes etc through market sources. The defendant is selling the products under the impugned trademark 'ROYAL DIAMOND' and plaintiff came to know that the entire offending mark 'ROYAL DIAMOND' is identical and/or deceptively similar and copied from plaintiff's registered trademark/wordmark 'ROYAL'. It is stated that there exists a very strong likelihood of confusion in public and general public will assume both the marks are from the same entity as both looks similar.
(v) That the defendant is fully aware about the goodwill and reputation of the plaintiff's trademark and thus, adopted the identical and/or deceptively similar trademark for identical goods and same has been dishonestly copied by the defendant with the sole intention to get benefit from plaintiff's hard earned goodwill and reputation by passing off defendant's spurious and inferior quality goods and it amounts to indulgence of unfair trade practice.
(vi) That the defendant's very adoption of the said mark of the plaintiff has caused losses and injury to the plaintiff as the defendant has adopted the identical mark. The device mark of the defendant is CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 4 of 27 causing deception and confusion in the minds of general public as defendant has cleverly copied the same and by adoption of the same, defendant is infringing as well as passing off, the plaintiff's trademark/wordmark and violating the common law and thus, defendant is illegally representing its association with the plaintiff by selling counterfeit products.
(vii) That defendant desires to usurp the vast reputation and goodwill of the plaintiff and the loss and injury caused to the plaintiff due to said dilution is not capable of being calculated in monetary terms.
(viii) That the similarity in the trademark of plaintiff and mark of defendant is so clear and evident that it appears that it has been the defendant's calculated attempt to deliberately use similar/identical phonetic word and writing style of the trademark in a similar manner and a mere look at the overall label/tags of the defendant at first impression show that it is identical to the plaintiff's reputed and well known label/tags and the general public can associate it with the plaintiff and use of the same by defendant violates the plaintiff's rights as both the goods are sold on the same shelves.
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(ix) On the basis of aforesaid averments, plaintiff has sought decree of permanent injunction, mandatory injunction, rendition of account and in the alternate, the plaintiff has sought decree of damages of Rs.20,00,000/-alongwith interest @ 18% p.a. DEFENDANT' CASE
2. Defendant filed his written statement wherein he sought dismissal of the plaintiff's case on the following grounds:-
Preliminary Objections/Submissions
(i) That the present suit does not disclose any cause of action against the defendant and the same is liable to be dismissed u/o 7 rule 10 & 11 CPC.
(ii) That the defendant is engaged in the business of manufacturing, marketing and trading of the goods i.e. bathroom accessories etc included in class -11 since the year 2004 and he bonafidely/honestly coined and adopted the trademark 'ROYAL DIAMOND' in December 2018 and he has been continuously using the same without any hindrance or objection and defendant has filed two applications bearing no. 4042004 and 4308504 dated 31.12.2018 and 30.09.2019 for registration of CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 6 of 27 the said trademark and device mark both in class
-11 before Trademark Registry.
(iii) That the plaintiff has no exclusive right in the word ROYAL as the word is highly generic in nature and plaintiff cannot claim any exclusive proprietary right of the said word ROYAL as the website of trademark registry clearly reveals that more than 250 persons/entities are using the same in class-11.
(iv) That the plaintiff has not placed on record any single document to show that plaintiff is using the said trademark since the year 1959 through his predecessor.
(v) That the defendant's trademark ROYAL DIAMOND is visually and structurally dissimilar to the trademark/label of the plaintiff and as such no case of infringement and passing off is maintainable. It is further stated that the get up, layout arrangement and colour combination of packaging material of the defendant is completely different and there is no similarity between the two trademarks as such there is no possibility of any confusion or deception among the consumers or the public at large.
CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 7 of 27 Parawise Reply On Merits
(vi) While replying on merits, defendant has refuted the claim of the plaintiff made in the plaint regarding adopting and using the trademark 'Royal' by the plaintiff (including his predecessor) since 1959. Besides, defendant has also denied other claims of the plaintiff regarding his claim qua the infringement and passing off of his trademark and device mark by the defendant. It is stated that in his trademark application no. 4292407 dated 13.09.2019, plaintiff has himself claimed that the said device mark is "proposed to be used' and thus, claim of the plaintiff is absolutely false.
(vii) It is further stated that there is no violation of plaintiff's intellectual rights by the defendant as the device mark 'ROYAL DIAMOND' of the defendant is dissimilar to the device mark of plaintiff. It is denied that trade mark 'ROYAL DIAMOND' is causing confusion or deception in the minds of the purchasing public as well the consumers as defendant has imitated or copied the plaintiff's trademark/word mark/device mark 'ROYAL' to trade upon the plaintiff's earned goodwill.
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(viii) It is stated that there are several persons/entities who are using the word ROYAL for their businesses and the said word is common and nobody can stake claim on the said word and as such the claim of the plaintiff is not maintainable. It is stated that defendant is neither infringing nor passing off the plaintiff's trade mark/device.
(ix) It is stated that the plaintiff has not valued the present suit properly for the purpose of court fee and jurisdiction and no requisite court fee has been paid. Thus, defendant sought dismissal of the present suit.
3. From the pleadings of the parties, the following issues were framed on 20.12.2021:-
ISSUES
(i) Whether the plaintiff is registered proprietor of the trademark 'Royal'? OPP
(ii) Whether the device mark 'Royal Diamond' being used by the defendant is identical and deceptively similar to the mark of plaintiff? OPP
(iii) Whether defendant has infringed the trademark of the plaintiff? OPP CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 9 of 27
(iv) Whether the plaintiff is entitled for permanent injunction against use of trademark 'Royal Diamond' by defendant? OPP
(v) Whether the plaintiff is entitled for damages from the defendant? OPP
(vi) Whether the defendant is liable to provide rendition of account of profit earned or in the alternative liable to pay a sum of Rs.20.00 Lac to the plaintiff? OPP
(vii) Whether the defendant have used the mark of the plaintiff which is registered mark of plaintiff and have passed off his goods as that of plaintiff? OPP
(viii) Whether the device mark 'Royal Diamond' is identically and structurally dissimilar to the mark of plaintiff and the plaintiff is not entitled for infringement and passing off? OPD
(ix) Relief.
4. Perusal of the record shows that in this case, inadvertently issues were again framed on 22.10.2024. Since the relevant issues were already framed, thus, the present judgement is passed on the basis of issues framed on 20.12.2021.
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5. In support of his claim plaintiff has examined himself as PW1. In his affidavit Ex.PW1/A, PW1 has reiterated the claim made by him in his plaint. PW1 has brought on record the following documents:-
(i) Certificate of product Conformity as well as Registration Certificate of proprietorship as Mark A.
(ii) Documents pertaining to the assignment as well as the dissolution deed, partnership deed, dissolution of partnership deed, form TM-24, affidavit showing request for assignment made to the Registrar of Trademarks as well as letters as Mark B.
(iii) True copy of sales figure, annual turnover, invoices as Mark E and certificate of Chartered Accountant as Ex.PW1/3 (Colly.).
(iv) Copy of trademark Certificate and current status as well as copy of application of trademark registration Ex.PW1/4
(v) Receipt of copyright application as Mark C.
(vi) CD ROM of advertisement as well as web page of advertisement at Just Dial.com as Mark D and catalogue as Ex.PW1/6.
(vii) Outer packaging of the defendant's trademark as Ex.PW1/7.
(viii) Outer packaging as well as the stamping on the packaging of products of defendant as Ex.PW1/8 CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 11 of 27 (Colly.)
6. In defence, defendant examined himself as DW1. In his affidavit Ex.DW1/A, DW1 has reiterated the contents of WS and he has brought on record the following documents:-
(i) TM application alongwith TM-A and other documents Ex.DW1/1 (Colly.)
(ii) Delhi Sales Tax Certificate Mark A.
(iii) GST Registration Certificate as Mark C.
(iv) ISO Certificate of Janki Dass & Co as Mark B.
(v) Sale bills/invoices of Janki Dass & Co as Ex.PW1/5 (Colly.).
(vi) Search report of trademark 'Royal' as Ex.DW1/6 (Colly.)
(vii) Online status of plaintiff trademark application no.4292407 alongwith all relevant documents filed by the plaintiff before trademark registry as Ex.DW1/7 (colly.).
(viii) Affidavit u/o XI Rule VI Sub rule III of Commercial Courts Act as Ex.DW1/8.
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7. I have heard the arguments from Ld.Counsel for plaintiff and Ld. Counsel for the defendant. Ld.Counsel for the defendant has relied upon the case laws titled Vajiram & Ravi IAS Study Centre LLP Vs. Vajirao & Reddy Institute Pvt.Ltd. CS(COMM)43/2019, M/s GUFIC Ltd. & Anr Vs. Clinique Laboratories, LLC & Anr. 2010 SCC Online Del 2322: (2010) 3 CCC 106: (2010) 43 PTC 788, Phonepe Pvt.Ltd. Vs. Digipe Fintech Pvt. Ltd. & Ors 2023 SCC Online Mad 5626, Corn Products Refining Co. Vs. Shangrila Food Products Ltd. 1959 SCC Online SC 11: (1960) 1 SCR 968: AIR 1960 SC 142. I have gone through the record of the case and thus, my issues wise finding is as under:-
ISSUE NO.1 TO 4 and 8(i) Whether the plaintiff is registered proprietor of the trademark 'Royal'? OPP
(ii) Whether the device mark 'Royal Diamond' being used by the defendant is identical and deceptively similar to the mark of plaintiff? OPP
(iii) Whether defendant has infringed the trademark of the plaintiff? OPP
(iv) Whether the plaintiff is entitled for permanent injunction against use of trademark 'Royal Diamond' by defendant? OPP CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 13 of 27
(viii) Whether the device mark 'Royal Diamond' is identically and structurally dissimilar to the mark of plaintiff and the plaintiff is not entitled for infringement and passing off? OPD
8. All these issues are interconnected and thus, these are taken up together. The onus to prove these issues was on the plaintiff. In the present suit, plaintiff has claimed himself to be registered owner of trademark "ROYAL" in regard to the sanitaryware goods under class-11 and in order to prove the same, plaintiff examined himself as PW1. He has brought on record the afore detailed documents. Plaintiff has claimed that the aforesaid trademark was originally coined and adopted by his father Sh. Sunil Kapoor who had been using the same since 1959 and subsequently, in the year 1981, this trademark was got registered by him and initially, he was using the same being partner in the firm Royal Field & Co which was finally dissolved on 01.04.2011 and since then all rights of the said firm were transferred to the plaintiff and since then plaintiff is running this firm as its sole registered proprietor. Presently, the said trademark is registered in his name which is valid upto 20.03.2029. He has brought on record all the relevant certificates related to his trademark "ROYAL" as Ex.PW1/4 (colly.) (page no.207 and 208). It is clear from Ex.PW1/4 (page 207) that the said trademark was registered in the year CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 14 of 27 1981 and thereafter, it was got renewed (page 208) and it is valid till the aforesaid date. It is also clear from the renewal certificate that the said trademark was being used by his father since 1959. Plaintiff has placed on record the relevant documents pertaining to the dissolution of the partnership as well as the GST registration certificate, however, these documents were de-exhibited as plaintiff did not produce the original of these documents at the time of evidence. Though, these documents could not be properly brought on record by the plaintiff, however, it is clear from other documents which are related to the application of plaintiff seeking registration of the device mark pertaining to their aforesaid trademark that the plaintiff has been proprietor of M/s Royal Field & Company and this application was made by their Ld. Counsel with the Trade Mark Registry. Thus, it is clear that there is sufficient material on record to show that the plaintiff is a registered proprietor of M/s Royal Field & Company and also that he is the registered proprietor of trade mark "ROYAL".
9. In order to show that plaintiff and prior to him, his father had been using the "Royal" trademark since long, plaintiff also placed on record several invoices, however, same were also de-exhibited for want of originals. Besides the aforesaid invoices, plaintiff also brought on record the turnover certificate issued by their Chartered Accountant concerned as CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 15 of 27 Ex.PW1/3. Though, this document was objected to by the Ld. Defence counsel, however, it is clear that a proper certificate has been issued by the Chartered Accountant concerned, therefore, it can be taken into consideration in regard to the quantum of sale made by the plaintiff qua his products. Thus, it can be said on the basis of the sale figures specified in this document that plaintiff has been using his registered trade mark since long and making sale of the considerable amount every year.
10. As already discussed, plaintiff has established that he is registered proprietor of trademark 'Royal' and besides this he has proved that he is using the same in perpetuity which is also clear from the renewal certificate Ex.PW1/4. Thus, under these circumstances, plaintiff is legally entitled to protect his trademark from any unauthorized/illegal use especially under the same class and for the similar goods. As per plaintiff, defendant is using the similar trademark by adding the word 'diamond' for selling the similar goods. Defendant has not disputed that defendant was doing the business for selling the similar goods (under class 11) by using the trade mark 'Royal Diamond'. Thus, there is no dispute that at the time of filing of the present suit, defendant was using the aforesaid trade mark for selling the goods. It is undisputed that defendant had applied for the registration of the aforesaid trade name, trade CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 16 of 27 mark/device mark, however, same is yet not registered but as far as the trademark Royal is concerned, plaintiff is the registered proprietor of the same. Now it is to be seen whether both the marks are identical/similar or not before discussing the other pleas raised by the defendant in regard to the said trade name. As far as the name is concerned, it is clear that the names are identical, however, the defendant has put up a defence for using the same by claiming that the trademark of plaintiff is generic and therefore, there is no prohibition in using the same by others. It is further claimed by the defendant that the trademark of plaintiff and trade name of the defendant are neither identical nor similar as defendant has added 'Diamond' Word with the Royal, therefore, it is altogether different trade name. It is well settled law that since the defendant himself has sought registration of 'Royal Diamond' as a trademark, therefore, defendant cannot claim that the trademark of plaintiff is generic or descriptive. As already discussed that the plaintiff has been continuously using the trademark 'ROYAL' since 1959 and when it is seen alongwith turnover certificate Ex.PW1/3, it is clear that the trademark of plaintiff has attained lot of goodwill and this is also one of the reasons that defendant also sought registration of the similar trademark though, by adding word 'diamond' to it. Thus, under these circumstance, defendant cannot use the trademark of the plaintiff especially qua the similar goods even by adding the CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 17 of 27 aforesaid word. In this regard this court is supported by the Judgment of Ahmed Oomerbhoy Vs. Gautam Tank & Ors. (2007 SCC Online Del 1685) and DLF Limited Vs. Sohum Shopee Limited (MANU/DE/3829/2015). The relevant para of DLF Limited (supra) is reproduced as under:-
"16. The defendants cannot deny that the trademark EMPORIO enjoys immense goodwill and reputation in the trade and public at large and the trademark EMPORIO is an extremely well-known one deserving the highest degree of protection considering that EMPORIO is a registered trademark for a variety of goods. Therefore, the unauthorized use of a deceptively similar trademark such as SOHUMEMPORIO by an unauthorized trader would inevitably lead to erosion of the distinctiveness of the trademark EMPORIO. There is no plausible justification, whatsoever for the use of the trademark EMPORIO with the prefix SOHUM by the defendants with SOHUM being added to the whole of the plaintiff's trademark EMPORIO. SOHUMEMPORIO and EMPORIO are deceptively similar when compared and the adoption and use of the former by the defendants is malafide.
17. The impugned use of the trademark SOHUMEMPORIO by the defendants not only constitutes acts of misrepresentation, but also leads to misappropriation of the goodwill and reputation that vest in the plaintiff's trademark EMPORIO. It is an attempt by the defendants to derive benefit from the said goodwill and induce the customers to identify the mall of the defendants with that of the plaintiff and enjoy the reputation and goodwill of EMPORIO unlawfully. The adoption and use of the trademark SOHUMEMPORIO would inevitably lead to dilution CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 18 of 27 of the distinctiveness, brand equity, goodwill, and reputation of the plaintiff's trademark EMPORIO...."
11. The plaintiff has also sought restraining of defendant from using his device mark 'Royal'. In this regard plaintiff has brought on record his application dated 13.09.2019 seeking registration of his device mark. Defendant also applied for registration of 'Royal Diamond' device mark on 30.09.2019 and as per record till date none of the applications of defendant has been approved and accepted. Though in the application, it has been stated by the plaintiff that the said device mark is proposed to be used, however, during arguments, Ld. Counsel for plaintiff submitted that plaintiff had been using the said device mark for selling his goods and in this regard plaintiff has brought on record his catalogue as well as the carton and other packaging as Ex.PW1/6 (colly) (page no.221 to 228). It was also submitted that the plaintiff applied for registration in Sept. 2019 but plaintiff had been using the said device mark for selling his goods and therefore, defendant had copied the same and started selling his goods under the same device mark/trademark. It is clear from comparison of both the device marks that the layout of both these device marks are almost identical and only one difference is there in the English alphabet 'O' which is in square shape. The plaintiff has blanked the upper half of the zero while defendant has left it completely CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 19 of 27 blank. However, on visual comparison both appears to be identical and same is sufficient to cause confusion in the mind of the common public. Defendant has not brought on record any evidence to show that the aforesaid device mark is his own creation and the same has been genuinely adopted by him. Defendant has not placed on record any material in this regard. Thus, under these circumstances, it can be very well assumed that he not only used the trademark of plaintiff but simultaneously, copied the device mark as defendant was well aware of the goodwill of the trademark/device mark of plaintiff qua the goods under Class-11. Thus, under these circumstances, it is clear that plaintiff is the prior user of the aforesaid device mark as well. Furthermore, since the plaintiff is the registered proprietor of "Royal" Trademark, therefore, the defendant can neither use the said trademark as his trade name nor even as his device mark. Thus, it is held that the defendant has infringed the trademark of the defendant by using the same as his trade mark and also as his device mark. If the specific case of device mark is taken, even then device mark of the plaintiff is liable to be protected as he is the prior user of the similar device mark. Moreover, it is clear that plaintiff had also filed application for registration of his device mark prior to the defendant though, it may be few days prior to him. Keeping in view of the aforesaid discussed facts and circumstances, it is held that plaintiff is the registered CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 20 of 27 proprietor of trademark 'ROYAL' and also the prior user of his device mark and defendant had infringed the trademark of the plaintiff and has also used his device mark and therefore, besides infringement he is also liable for passing off.
12. It has been further held by Hon'ble High Court in the case of DLF Ltd. (Supra) that when a person starts selling his goods with the passage of time, he may acquire goodwill and therefore, his goodwill becomes a property which is required to be protected. Though, in the present case, it has been proved that defendant knowingly adopted the registered trademark of plaintiff and also copied the device mark. Even otherwise, it is well settled law that defendant is liable for infringement/passing off action even when he has adopted the trademark/device mark innocently. The relevant para of the said Judgement is reproduced as under:-
"22. ........ It was held that the principles which apply to trade mark are applicable to trade name also. Relevant para 10 of the aforesaid judgment reads as under:-
"The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 21 of 27 world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."
In this case, the Apex Court further observed that:
"Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently."
23. In another case of passing off, a Division Bench of this Court in the case of B.K.Engineering Co. VS. Ubhi Enterprises & Anr., reported in 1985 PTC 1, in para 57 inter alia held that trading must not only be honest but must not even unintentionally be unfair".
13. Keeping in view of the aforesaid discussions, defendant is required to be permanent restrained from using the trademark as well as device mark of plaintiff in relation to sale of sanitaryware goods under class-11. All these issues are decided accordingly.
ISSUE NO.7
(vii) Whether the defendant has used the mark of the plaintiff which is registered mark of plaintiff and have passed off his goods as that of plaintiff? OPP CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 22 of 27
14. While deciding the aforesaid issues, it has been held that the defendant has infringed the trademark of the plaintiff and now, it is to be seen whether defendant also sold the goods under the same trademark/device mark. It is clear from the written statement that defendant has himself admitted that he adopted the said trademark in December 2018 and also sought registration of the same in the same month and started using the same from January 2019. It is clear from the record that vide order dated 02.03.2021, defendant was restrained from using the trademark "ROYAL DIAMOND" and against the said injunction order, defendant filed an appeal before the Hon'ble High Court which was withdrawn by the defendant and following observations were made by the Hon'ble High Court :-
'2. After some arguments, Mr. Satish Kumar, who appears for the appellant, seeks leave to withdraw the appeal, with leave to approach the District Judge for permission to sell the goods already manufactured, which bears the impugned mark "Royal Diamond".
3. Furthermore, Mr. Kumar says that he would also like to move an application before the District Judge, whereby, the appellant/defendant is able to place on record suggested alteration to the impugned mark i.e. "Royal Diamond".
4. The appeal is dismissed as withdrawn. Pending application shall also stand closed.
5. The appellant/defendant will have the liberty to move the aforesaid applications as indicted above.
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6. The District Judge will consider the application(s), if any moved, as per law, after giving due opportunity to the respondent/plaintiff to state its case".
15. Thus, it is clear from defendant's admission that defendant had manufactured the goods with the trademark "Royal Diamond" and it is clear from the written statement that defendant has admitted that the said device mark was being used by the defendant for selling the similar goods. Thus, it is clear that defendant was using the trademark and device mark of the plaintiff and also selling the goods and thus, under these circumstances, there is sufficient evidence to hold that defendant was passing off the goods as that of the plaintiff. This issue is decided accordingly.
ISSUE NO.5&6
(v) Whether the plaintiff is entitled for damages from the defendant? OPP
(vi) Whether the defendant is liable to provide rendition of account of profit earned or in the alternative liable to pay a sum of Rs.20.00 Lac to the plaintiff? OPP CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 24 of 27
16. Both these issues are interconnected and thus, these are taken up together. The onus to prove these issues was on plaintiff. It is clear from the aforesaid discussions that defendant was indulged in infringement of plaintiffs trademark by using his trademark as his trade name. Defendant also used the device mark of plaintiff. Thus, under these circumstance, the plaintiff is entitled to the damages for the loss of reputation as well as loss of profit, however, it is clear from the record that plaintiff has not brought on record any evidence related to the same. However, it is clear from the admissions of defendant that the defendant was not only using the trademark/device mark of the plaintiff but also selling the similar products and it is clear from the cross examination of DW1 that some of the distributors of both the parties were same. It is clear from the record that according to plaintiff, he came to know in October 2019 that defendant is selling the impugned goods in the market and thereafter, immediately, in the month of Dec. 2019, he filed the present suit. As per defendant, he is selling the goods under the trade name 'Royal Diamond' since January 2019 which is also clear from his own admission as at the time of passing of injunction order, he was having some stock of the goods which was manufactured by him by using the said trademark/device mark. In order to establish that defendant had substantial increase in his income during 2019, the ITR of defendant for the financial year 2018-19 to 2020-21 were CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 25 of 27 brought on record as Ex.DW1/P1 and there seems to be substantial increase in the income of defendant from 2018-19 and 2019-20 from approx. Rs.5.00 Lac to Rs.6.00 lac. Thus, under these circumstance, it can be said that defendant would have earned some portion of his profit by selling his goods by using plaintiff's trademark/device mark. Thus, under these circumstance and keeping in view of the totality of facts and circumstances, it is held that plaintiff is entitled to the damages of Rs.1,00,000/-. Both these issues are decided accordingly.
17. Keeping in view of the peculiar facts and circumstances of the present case, it is most respectfully observed that the case laws cited by the Ld.defence counsel are not applicable to the present case.
RELIEF
18. In view of the aforesaid discussions and issue wise findings, the plaintiff is awarded following reliefs against the defendant:-
(i) A decree of permanent injunction is passed in favour of the plaintiff and against the defendant and defendant or anyone acting on his behalf is restrained from manufacturing and selling, or advertising in any manner the sanitaryware goods under class 11 by using the trademark "ROYAL". Defendant is also restrained CS(Comm)/577/2019 Rahul Kapur Vs. Manoj Gupta Page no. 26 of 27 from using the device mark "ROYAL DIAMOND" or any other mark, which is deceptively similar to the plaintiff's trademark/device mark, "ROYAL". The device mark of plaintiff and defendant have been depicted in para no.14 of the plaint.
(ii) Defendant is directed to deliver all the infringing goods to the plaintiff within two weeks from the date of Judgement so that plaintiff may properly destroy the same.
(iii) A decree of damages of Rs.1,00,000/- is passed against the defendant. Plaintiff is also awarded interest @ 9% p.a. on the damages w.e.f from the filing of the suit till realization.
Plaintiff is also awarded the cost of the suit.
Decree sheet be prepared accordingly.
File be consigned to record room.
Digitally
Announced in the Open AJAY
signed by
AJAY GUPTA
Date:
Court on 31.05.2025 GUPTA 2025.05.31
16:25:13
+0530
(Ajay Gupta)
District Judge (Commercial Court)-05
West, Tis Hazari Courts Extension
Block, Delhi/31.05.2025
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