Delhi District Court
M/S Guruji Enterprises Private Limited vs M/S K.K. Food Products (India) on 24 January, 2015
IN THE COURT OF MS. VINEETA GOYAL, ADDITIONAL DISTRICT
JUDGE 01, PATIALA HOUSE COURTS, NEW DELHI DISTRICT, NEW
DELHI
TM No. 84/2012
Unique ID no. 02403C0029732012
M/s Guruji Enterprises Private Limited
514, HSIIDC, Kundli,
Sonepat - 131028 ......... Plaintiff
Versus
M/s K.K. Food Products (India)
Shalimar Road,
Murabba Achar Farm,
Kosi Kalan, DelhiAgra NH2,
Mathura Road, Dist. Mathura
(U.P.) 281403 ........ Defendant
Suit presented On : 14.05.2012
Arguments Concluded On : 21.01.2015
Judgment Pronounced On : 24.01.2015
Appearance : Sh.Sanjeev K. Singh counsel for plaintiff.
Sh. Atul Kumar Aggarwal, counsel for defendant.
J U D G M E N T
1. The plaintiff has filed present suit for under Section 134 & 135 of Trade Marks Act 1999 as well as under Section 51 of the Copyright Act, 1957 for relief of permanent injunction to restrain passing off, infringement of trade mark and copyright, delivery up, rendition of accounts etc. against defendant. TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 1 of 39
2. The case disclosed by the plaintiff in the suit can be epitomized as:
a) The plaintiff is a company duly incorporated under the Companies Act, 1956 having its office at 514 HSIDC, Kundli, Sonepat - 131028 and the company was originally incorporated on 10.05.1986. The suit was filed through one of the Directors of the plaintiff company namely Sh. Bal Mukand Sharma.
b) The brand GURUJI was claimed to be developed by the grandfather of the promoter of the plaintiff company who was once upon a time known as "Itrafarosh Vaidyaraj" of Shekhawati (Rajasthan). The father of the promoter Sh. Jagdish Prasadji "Harit" was a learned man, very culturally inclined and was also a Hindi literature scholar, who organized "Miland Mandir" where the stalwarts of Hindi Literature like Pundit Hajariprasad Dwiwedi, Rahul Sankrityayan, Vimal Mitra, Harivansrai Bacchan, Shyamnarayan Pandey and Mahadevi Verma assembled and held Goshthis (literary conferences). At these conferences, Shri Jagdish Prasadji "Harit"
served traditional Indian cold drinks and was lovingly addressed as Guruji. It is said that at a 16day Literary Conference, Shri Jagdish Prasadji "Harit" served 16 different types of traditional Indian cold drinks in the form of 16 different art forms and Pundit Hajariprasad Dwiwedi name him and his drinks as "Guruji Ki Thandai". Later his three sons have promoted the name, choosing different regions of India for their operation and the plaintiff company has originated from the enterprise of one of these sons, who is also the authorized signatory herein. Brand Guruji has captured the imagination of masses by presenting a thick range in the Thandai & Sharbat segment. The product range includes Kesharaia Thandai, Badam Sharbat, Rose Sharbat, Khus Sharbat, Orange Crush and Pineapple Crush, Guruji Thandai, Cold Coffee, Orange, Pineapple, Litchi, Litchi Squash, Mango Panna, Lemon Squash, Guruji Jeera, Brahmi Badam and Keshar Chandan are other fine products. Guruji assures one and all of a wonderful experience with healthy body through its diverse array of Thandai & Sharbat. It is thus that the plaintiff came to adopt and use the trademark / label GURUJI (herein referred to as said Trade Mark / label) for drinks and other eatables (hereinafter referred to as the said products) and has been continuously using TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 2 of 39 the same ever since.
c) The plaintiff has been using the said trademarks / labels since the year of adoption up to present time continuously, uninterruptedly, as an exclusive proprietor and owner. The plaintiff is prior and senior adopter of the said trademarks / labels in relation to said goods and business. The plaintiff also uses the trademark GURUJI is association with the words JAI and Natural. The plaintiff also uses the slogan / punchline "Pure Ka Jor"
in association with the said trademarks / labels and is entitled to the protection of same.
d) The plaintiff claims to be the owner and proprietor of its said trademarks / labels and said punch lines on account of honest bonafide and prior adoption and continuous, commercial use thereof. In order to acquire statutory rights, the plaintiff has filed numerous applications for registration of the said trade mark / label, under the provisions of Trade Marks Act, 1999 for various goods and services. Two of the said applications have already been allowed and some of them are still pending, which are likely to be allowed in due course upon completion of all formalities. The Trade mark application for Trade mark GURUJI no. 797234 was registered in class 32 but owing to inadvertence, could not be renewed but the Plaintiff is taking steps for its renewal. The other Trade mark GURUJI Pure Ka Jor is registered under no. 1653685 for class 29 and subsisting. It is also claimed that the applications for registration of trademarks Jai Guru ji, Natural Guru ji (label) are pending for respective classes.
e) The plaintiff represents that it's said trademarks / labels in an artistic manner including in its getup, lettering style, color scheme, placement of words, artistic features etc. The art work involved in the plaintiff's said trademarks / labels is original within the meaning of the Copyright Act 1957.
The plaintiff is the owner and proprietor of the copyright involved in the said trade mark / label. The plaintiff has also obtained necessary No Objection Certificate of Registrar of Trade Marks under Section 45 of the Copyright Act, 1957 for registration of some of its labels. Said proceedings are pending disposal. The plaintiff is also the author of said punch lines. The said punch lines are also original in character and the plaintiff is the owner and proprietor of the artistic and literary work thereof. Plaintiff holds copyrights in said punch lines. Since the beginning the plaintiff has been commercially TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 3 of 39 using and reproducing all its aforesaid Copyrights in the course of its trade and business. The term "said trade mark / label" and "said punch line" used in the instant suit includes Copyright therein. Hence the plaintiff is the proprietor of the said trademarks / labels and said punch lines both under the statutory as well as under the common law. The plaintiff's said goods and business under the said trade mark / labels are global in character and the plaintiff carries on business there under in many countries of the world including in India where the plaintiff's said products under the said trade mark / labels are commercially available.
f) The purchasing public, the trade and the public at large in India, associate, identify and distinguish the said trade mark / labels and the goods and business there under with the plaintiff and from the plaintiff's source and origin alone. The plaintiff's said goods and business is dependent thereon. The plaintiff's said trade mark / labels have already become distinctive and associated with the plaintiff. The plaintiff's said goods and business there under are highly demanded in the markets and have acquired a vast reputation there under. The said trade mark / labels have acquired secondary significance denoting the said goods and business of the plaintiff and are recognized with the plaintiff alone.
g) The plaintiff maintains the highest standards of manufacture and trade and invests enormous amount of money and efforts on Research & Development activities. The plaintiff's said goods are manufactured and traded under strict quality specifications of a very high order, which are scrupulously maintained. The plaintiff has also been constantly upgrading its facilities in the light of technological advances.
h) The plaintiff has acquired proprietary rights over its said trade mark / labels under statutory as well as the common law and they have become sufficiently distinctive in the trade to be capable of protection. They have become synonymous and distinctive indicium of the plaintiff in relation to the aforementioned goods and business. The plaintiff's said goods and business there under have acquired the status of a high quality product originating exclusively from the Plaintiff's source and origin and recognized as such. Nobody can be permitted to use or deal with the same / similar trade mark / labels and copyrights therein either as a trade mark or in any other manner in relation to any of their goods and business without the leave TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 4 of 39 and license of the plaintiff in view of the plaintiff's proprietary rights therein.
i) The plaintiff maintains highest standard of manufacture and sale of its goods bearing the said trade mark / label. The plaintiff's goods bearing the said trademarks / labels are highly demanded in the markets on account of standard quality and precision. The said goods bearing said trademarks / labels are distributed and sold across the country. The plaintiff has already built up a handsome and valuable trade thereunder. The plaintiff has already commanded handsome sales under the said trade mark / label. The copies of sample sale invoices are filed herewith. The plaintiff has already build up a handsome sale under their said trade mark / labels and achieved sales running into crores of rupees.
j) The sale figures of the plaintiff under the said trademarks / labels are claimed to be for the year 200506 at Rs. 1,21,53,608/, for the year 200607 at Rs.1,71,15,447, for the year 200708 at Rs.2,81,16,944, for the year 200809 at Rs.2,94,62,368, for the year 200910 at Rs.5,05,36,424, for the year 201011 at Rs. 6,37,58,964 and for the year 201112 at Rs. 6,27,43,975.
k) The plaintiff claims to has been continuously advertising and promoting its said trademarks / labels and said punch lines through different means and modes including through print and electronic media i.e., by way of extensive advertisements in national newspapers, magazines and various prominent national TV Channels etc. The plaintiff has also been advertising the said trademarks / labels and said punch lines through various other means like hoardings, display boards, distribution of trade literature, trade novelties, etc. The plaintiff has spent substantial amount of money on the publicity of the said trademarks / labels and said punch lines.
l) In consequence of the above mentioned publicity and advertisement and also having regard to the excellent quality and high standards of the plaintiff's manufacture and sale, plaintiff's goods bearing the said trademarks / labels enjoy solid, enduring and first class reputation in the markets. Plaintiff's said trademarks / labels and said punch lines have already become distinctive indicium of the plaintiff and plaintiff's goods and business. The said trademarks / labels and said punch lines have acquired secondary significance denoting the goods and business of the plaintiff. The public and trade associate, identify and distinguish the said trademarks / TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 5 of 39 labels and said punch lines with the plaintiff's and plaintiff's goods and business alone. In fact the said trademarks / labels and said punch lines have become 'well known' within the meaning of provisions of Section 2 (1) (zg) and Section 11 of the Trade Marks Act, 1999.
m) The defendant is also engaged in the trade of manufacturing and marketing of Thandai and Sharbat (hereinafter referred to as "the impugned goods" and "impugned business"). The defendant is commercially and in the course of trade using the Trade Marks/Labels GURUJI and "SHRI SIDDH GURUJI" a true representation thereof is being filed herewith (hereinafter referred to as the "impugned trade mark / labels") in relation to the impugned goods and business. The impugned trade mark / labels bear the trademarks / labels / trade dress / colour scheme etc., which is same / similar/ identical to the plaintiff's said trade mark / labels in each and every manner.
n) The impugned trade mark / label is identical with and deceptively similar to the said trademarks / labels of the plaintiff. They are identical with and deceptively similar in each and every respect including visually, structurally, in its basic idea and essential features. The defendant has substantially copied and rather counterfeited the said well known trade mark / label with all its features and artistic work, layout design, lettering style, get up, make up, colour combination and idea thereof as well as the punch lines. The limitation is in exactitude of copying in such manner that not only ordinary purchaser but also the big retailers / dealers / distributors are bound to be confused / deceived. By the impugned adoption and user, the defendant has infringed and passed off and also infringing and passing off the enabling other to infringe and pass off and violate the plaintiff's proprietary rights in his said trade mark and copyright involved in the label.
o) The impugned goods and business of the Defendant are also of the same / similar nature as that of the Plaintiff and that by their impugned adoption and use of the impugned trade mark/labels the Defendant is infringing plaintiff's registered trade mark, copy right, passing off and are enabling others to pass off their impugned goods as that of the plaintiff's. The defendant is thus also violating plaintiff's proprietary rights and diluting plaintiff's trademarks and copyrights. The defendant cannot even be exonerated from the charges of falsification, unfair and unethical trade practices.
TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 6 of 39
p) The defendant is not the proprietor of the impugned trade mark/labels and has adopted and is using the same without the leave and license of the plaintiff. The defendant has no right, authority or liberty to use the impugned trade mark/labels in relation to their impugned goods and business or for any other specification of goods and business whatsoever being in violation of the plaintiff's rights therein. The defendant was fully aware of, the rights, users and reputation of the plaintiff in plaintiff's said trade mark/labels including in the plaintiff's trade dress, copyrights and trade name all of which are unique and arbitrary.
q) The defendant adopted and is using the impugned Trade mark/labels, fraudulently and with sinister motives and out of positive greed with a view to take advantage and to trade upon the reputation of the plaintiff therein and further with a view to calculate deception and confusion in the markets and to pass off their impugned goods and business as that of the plaintiff. The impugned Trade mark/ label is bound to cause confusion and deception in the normal course of business activities of the plaintiff and in fact, deception is being actually caused. The plaintiff and in fact, deception is being actually caused. The plaintiff has tremendous goodwill and reputation in its said trade mark/labels and their goods and business there under. Any person not knowing clearly the relationship between the parties to this action is bound to be confused by the Defendant's impugned adoption and use and might well do business with the defendant thinking that he is dealing with the plaintiff or that some strong vital and subtle links exist between the plaintiff and the defendant.
r) The defendant's impugned adoption and user is completely in violation of the plaintiff's proprietary rights in the said trade mark/lable/logo in relation to said goods. The defendant's impugned activities also amount to unfair and unethical trade practice and competition, which on its very face is illegal and contrary to law and thus the plaintiff is aggrieved. The defendant is not the proprietor of the impugned trade mark/label or in any other manner whatsoever including under the law of equity, common law and statutory law in respect of the business or allied/cognate thereto being in complete violation of the plaintiff's rights amounting to interalia, infringement and/or passing off and violation of trade mark/label and copyright and falsification and unfair trade practices. The defendant is doing so without the leave and TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 7 of 39 license of plaintiff.
s) The impugned adoption and user by the defendant is dishonest, tainted, malafide and fraudulent. The defendant adopted and started using the impugned trade mark/label in respect of the impugned goods and business out of positive greed and with a view to take advantage and to trade upon the reputation and goodwill of the plaintiff and further with a view to calculate confusion and deception in the market and to pass off their impugned goods and business as those of the plaintiff and to make easy money at the cost of the plaintiff's goodwill and reputation,. The defendant has been fully aware of the plaintiff's said rights, user and reputation having accrued in relation to the plaintiff's said trade mark/label/ logo at the time of their impugned adoption and user of their impugned trade mark/ lable as both the defendant and the plaintiff are engaged in the same line of business and trade.
t) The resemblance between the plaintiff's said trade mark/label/ logo and that of the defendant's impugned trade mark/label/logo and trade name is so close that it can hardly occur except by deliberate imitation and sheer piracy. The defendant adopted and started using the impugned trade mark/label/logo in full knowledge of the plaintiff's said rights. The unaware purchasers which include each and every section of society including the not so well educated/ gullible people are bound to be deceived in dealing with and purchasing the defendant's impugned goods and business under the impugned trade mark under the impression that it is emanating from the plaintiff's source or that some vital links exist between the plaintiff and the defendant. The defendant has been tempted by the singular reputation of the plaintiff's said trade name and trademarks. By its impugned adoption and user of the impugned trade mark, the defendant is disseminating confusion and deception in the markets with the result that the substandards goods of the defendant are being passed off as the genuine goods of the plaintiff. By the impugned adoption and user, confusion and deception is caused in the market. The defendant's impugned goods and business is identical to that of the plaintiff. Similarly, the defendant's impugned trade mark/label is identical with the deceptive similar to the plaintiff's said trade mark/ label. u) The plaintiff submits that facts and circumstances brought and placed on record clearly establish that the impugned adoption and user by the TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 8 of 39 defendant is improper, sinister, ill motivated, dishonest and fraudulent and the defendant by such questionable adoption and user is disseminating deception and confusion in the markets, business and trade amounting, inter alia, to passing off and infringement. The plaintiff is suffering huge losses both in business and reputation. The losses being suffered by the plaintiff are incapable of being assessed in monetary terms. Defendants' gains are the plaintiff's losses. Unwary purchasers are being deceived as to the origin of goods. The defendant is liable to render their full account to the plaintiff for ascertainment of profits earned by the defendant by their impugned activities and payment thereof to the plaintiff.
v) The plaintiff further claims that in or about the third week of April 2012 it learnt of violations of their said trade mark/labels by the defendant. Being aggrieved the plaintiff launched an inquiry in the markets. Such inquiries reveled that the defendant has just started trading in the impugned trade mark/labels. The plaintiff also learnt that the defendants' impugned activities are surreptitious and clandestine i.e., the defendant is not issuing any formal sales bills with respect to their sales of the impugned goods under the impugned trade mark/ labels. The defendant is carrying out their impugned activities under the impugned trade mark in Delhi, including New Delhi. Earlier also, plaintiff had some inputs that the defendants had been infringing the trademarks/ labels of the plaintiff and sent a legal notice dated 21.06.2010 to the defendants, however, the defendants failed to send any reply. Upon enquiries, it was found that the defendant was not producing any goods under the impugned labels as the plaintiff failed to lay its hands upon any products of the defendants bearing the impugned trademark. However, in the third week of April 2012, the plaintiff has come across actual products of the defendant bearing the impugned trademarks and upon further enquiries, it has come to the knowledge of the plaintiff that the defendant has recently adopted and started using the impugned trademarks/ labels. w) It is the case of the plaintiff that the cause of action has arisen in favour of the plaintiff in or about the third week of April 2012 when the plaintiff laid his hands upon the products of the defendant bearing the impugned trademarks and thereby learnt about the impugned adoption and users of the impugned trade mark/labels by the defendant in relation to the impugned goods. The defendant is selling the impugned goods bearing the TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 9 of 39 impugned trade mark/label within the jurisdiction of this Court and there by continuously violating the said trade mark/ labels and copyrights of the plaintiff. Therefore the cause of action is of recurring nature. The cause of action is still subsisting and is accruing day by day.
x) In the plaint the plaintiff claims that this Court has the jurisdiction to entertain and try the instant suit as the defendant is selling, marketing and soliciting the trade and business in New Delhi within the jurisdiction of this Court in clandestine and surreptitious manner. In addition the plaintiff is also carrying out its said business in New Delhi within the jurisdiction of this court besides other part of India as the plaintiff's said goods under the said trademarks/labels are available in New Delhi within the jurisdiction of this Court through its various exclusive distributors and dealers including M/s. Radha Krishan Store, Bengali Market, Delhi110001. The plaintiff holds excellent goodwill and reputation in New Delhi. This Court also has special power to entertain and try the present suit under Section 62(2) of the Copyright Act, 1957 and Section 134 of the Trademarks Act as the plaintiff is carrying on the business within the jurisdiction of this Court. This court thus has the jurisdiction to try and adjudicate the suit.
3. The defendant upon notice contested the suit and filed Written Statement interalia rebutting the claims of the plaintiff alleging as follows:
(a) The defendant firm is registered in U.P. VAT Department since 01.01.2003. Sh. Kaushal Kishore Mittal is proprietor of defendant firm. The defendant firm is engaged in manufacturing and trading of Achaar, Murabbas, Sharbat, Thandai etc. and is registered under Product Order 1955 vide Licence No. 11651. the licence was renewed for the year 2012 by the office of Deputy Director (F & V P), NR, Ministry of Food Processing Industries.
(b) Defendant further alleges that plaintiff has claimed that the plaintiff company was incorporated in 1986 and since that date it has adopted the name 'Guruji' and is using it. Surprisingly when the plaintiff applied for trademark registration on 01.01.1998 vide application no. 797234 in class 32 it showed that user date as 05.10.1996 instead of 10.05.1986. The defendant TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 10 of 39 firm applied for registration of trademark vide application no. 01858566 in class 32 in the name of 'Natural Shri SiddhGuruji' which is pending for registration since 04.09.2009. The user date claimed by defendant is 01.04.2003.
In the search in trademark registry it is clearly shown that the name Guruji has also been adopted by another firm showing the user date as 01.091983. The claim of the plaintiff that it is the first one who coined the name Guruji is baseless. The term of trademark Guruji of plaintiff had expired in the year 2008. The plaintiff firm had not applied for its renewal and it has been removed from the Registers of Trade Marks in 2009. The plaintiff had applied for fresh registration in the name of 'Jai Guruji' on 23.12.2009 vide application no. 1900335 which is still pending registration. The plaintiff is not the owner of Registered Trademark 'Jai Guruji'. The application for registration vide trade mark no. 2346288 in class 32 in the name of 'Natural Shri Siddh Guruji' filed by defendant on 11.06.2012 is pending registration. The defendant firm also filed application for copyright registration of Artistic work in question and has also received the NOC from the Trademark Registry on 28.06.2012.
(c) The defendant further alleged that the colour, design, trade dress etc. of defendant firm are different from that of plaintiff.
(d) The defendant submits that the averments of the plaintiff that it is continuously using the trademark/ label ever since is not sustainable as there are other prior users as per such report. The plaintiff is not owner and proprietor of said trademark/ label or the first adopter of punch lines/ slogans etc. The mark 'Guruji Pure Ka jor' was registered in class 29 for milk and milk products. It is a different mark in a different class which the plaintiff is claiming to be registered.
(e) The defendant further alleges that the plaintiff holds no copyright in the punch lines. It has obtained NOC from the Registrar and has not obtained any certificate of registration under the Copyright Act 1957.
(f) The defendant further alleges that the plaintiff has claimed that it is user of goods in question since 1986, but it is showing the same figure for the year 200506. The same figure of defendant firm for the year 200203 is Rs.18,365/, for the year 200304 is Rs.1,38,413/, for the year 200405 is Rs. 2,14,380/, for the year 200506 is Rs.2,41,590/, for the year 200607 is Rs. TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 11 of 39 2,29,610/, for the year 200708 is Rs.2,72,918/, for the year 200809 is Rs. 3,46,205/, for the year 200910 is Rs.3,58,801/ and for the year 201011 is Rs.4,67,087/.
(g) The defendant further alleges that it is the defendant who is suffering tremendously in business and the goodwill of defendant.
(h) Rest of the contents of the plaint were denied for want of knowledge and apart from the above, there are general averments that the plaintiff has given wrong facts and concealed the facts.
4. The plaintiff filed replication to the Written Statement and denied all the assertions of the defendant while reiterating and reaffirming the contents of plaint submitted that the plaintiff has been using the said trademarks/labels since the year of adoption up to present time continuously, uninterruptedly, as an exclusive proprietor and owner. The plaintiff is prior and senior adopter of the said trademarks/labels in relation to said goods and business. The plaintiff has not concealed any fact. The plaintiff has made every thing clear in the para 5 of its plaint regarding the removal of the trade mark of the plaintiff from the register. And furthermore removing of the trade mark from the register doesn't take away the proprietary right of the owner of the trade mark. Moreover the protection of passing off of the common law still subsists with the owner of the trade mark viz. plaintiff in this case. The plaintiff has applied for fresh registration in the name of "Jai Guruji"
on 23.12.2009 vide application no.1900335 in class 32 and not class 29 as mentioned by the defendant. Rebutting the contention of the defendant the plaintiff submitted that from any angle or corner or dimension whatsoever the trade mark of the defendant is not different from that of the plaintiff. Neither colour combination nor design nor even trade dress of the defendant is different from that of the plaintiff.TM no. 84/12
M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 12 of 39 The trade mark of the defendant is neither distinctive nor distinguishable. It is of such a nature so as to cause confusion to the consumer as well as public at large. It is also deceptively similar. It is pertinent to note here that the case in question was filed and brought to record to this court on 22.05.2012 and much after that the defendant claims to have obtained NOC. The defendant has filed for registration of his impugned trade mark on11.06.2012 in class 32. The defendant has filed for the registration of his impugned trade mark after knowing about this suit as he has been served by the plaintiff during the execution of the order of the court on 30.05.2012.
5. The following issues were framed after considering the rival case made out of the plaint, Written Statement and the replication:
(i) Whether the defendant has infringed the plaintiff's Trademark and/or passed off their goods as those of the plaintiff?
(ii) Whether the defendant is liable to pay any damages? If so, how much?
(iii) Whether the plaintiff is entitled to rendition of account damages, if so to what extent?
(iv) Relief. 6.0 In order to prove its case the plaintiff examined following witnesses and the crux of plaintiff evidence is reproduced here under: 6.1 Sh. Bal Mukund Sharma allegedly one of the Directors of the plaintiff
company was examined as PW1, who tendered the evidence by way of affidavit Ex.
PW1/A and produced and proved documents i.e Original Board Resolution Ex. PW1/1, certificate of incorporation Ex. PW1/2(OSR), copy of sales tax and VAT TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 13 of 39 registration Ex. PW1/2A(OSR), photographs of packaging / trademark / label of GURUJI (plaintiff) Ex. PW1/3 (colly), copy of plaintiff's trademark application and certificates alongwith additional representation Ex. PW1/4 (colly), copy of no objection certificate Ex. PW1/5 (colly), copy of licence under Food safety and standard Ex. PW1/6(OSR), sale figure / turnover Ex. PW1/7, bill / invoices Ex. PW1/8 (colly), advertisement figure Ex. PW1/9, sample advertisement bills issued in normal course of business and advertisement material Ex. PW1/10(colly), audit report Ex. PW1/11(colly), trademark / label of defendants Ex. PW1/12, office copy of legal notice Ex. PW1/13 and report of local commissioner Ex. PW1/14. This witness made statement inconsonance with the averments made in the plaint. He was cross examined by counsel for defendant.
6.2 During cross examination, this witness deposed that he is in the business of manufacturing thandai and sharbats of gulab, khus, leechi, pineapple, jeera, muffarah, ripe mango, shikanji, aam panna, kesar badam etc. Besides aforesaid items, they are also engaged in manufacturing ready to drink milk items. He is not into manufacturing of any other products other than those described. The manufacturing unit is at 212 and 514, HSIDC, Kundli, Sonepat, Haryana. Besides the aforesaid establishment they have other two manufacturing units at Indore and Calcutta respectively and voluntarily stated that they are three brothers. 6.3 This witness in further cross examination stated that the main ingredients of thandai that they manufacture are sugar, badam, magaj, elaichi, kali mirch, saunf, posta dana, gulab jal, kesar and certain preservatives. These are the contents of TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 14 of 39 thandai that they manufacture as in final product. The main ingredients of sharbat that they manufacture are sugar syrup, pulp and preservatives. And further they possess proprietary rights over trademark / label "GURUJI". 6.4 PW1 in cross examination further stated that he does not remember exact date on which they have acquired proprietary rights. But stated that they have proprietary rights over trademarks and labels. He cannot tell about exact authority who has given us proprietary rights but it was given by government authority. At the time of filing of present suit they have proprietary rights. They have received NOC and Pramaan Patra at the time of issuance of proprietary rights. He cannot tell about the class in which thandai was registered. Again said thandai and sharbat are registered under class 32, milk products in combination with thandai and sharbat are registered under class 29. PW1 in further cross examination stated that their family was carrying on business under the name and style of M/s. GURUJI Thandaiwala at Calcutta since 1986. He was in possession of trademark certificate in year 1986. In year 1986 his brother my brother namely Sh. Sitaram Sharma was looking after business of manufacturing and marketing of thandai and sharbat under trade name GURUJI, thereafter Sh. Radheyshyam Sharma his elder brother started business at Indore under trademark GURUJI, thereafter in year 1993 his father expired and in year 1996 he came to Delhi and in year 1998 they got trademark GURUJI registered and voluntarily stated that they are engaged in the trademark of manufacturing and marketing of thandai and sharbat in tradename GURUJI since 1986. He denied of having knowledge that GURUJI trademark was valid for ten years since registration. He further stated that in the year 2009 he came to know that registration was valid TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 15 of 39 for 10 years and it was to get renewed thereafter. The trademark GURUJI was registered for product in class 32 in year 1986. He filed an application in the Trademarks Registration Authority regarding renewal of trademark GURUJI under class 32. The application is still pending before Trademark Registration Authority. He has not filed any fresh application regarding registration of trademark GURUJI under class 32 after 2009.
6.5 In cross examination PW1 further stated that he has filed suit against defendant for infringement of trademark GURUJI in class 29 and 32. He has an objection as defendant is engaged in marketing of thandai and sharbat and in the course of trading he is using trademark / labels GURUJI. He denied the suggestion that the defendant are not in the trade of manufacturing and marketing milk products. Thandai is a milk product. Some sharbats are milk products and some are not. He stated that it is correct that thandai and sharbat are milk products. Thandai and Sharbat are registered under class 29 and 32. At the time of filing of suit they have registration of trademark GURUJI in class 29 and there was a pending application before Trademark Registry Authority for renewal of trademark GURUJI in class 32. This witness was shown page 17 and 18 (affidavit dated 14.05.2012 annexed with plaint) of judicial record and admitted signatures at point A and B but stated that he cannot say whose signature is on the middle left side of the affidavit at page 18, the same is point C. 6.6 Sh. Ankit Garg, Data Entry Operator, Trademarks Registry, IPO Building, Sector 14, Dwarka, New Delhi was examined as PW2. He produced certified copy TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 16 of 39 of summoned record such as details of trade mark application no. 797234 in class 32 as Ex. PW2/1, entry in the Registers of Trade Mark relating to no. 165368 in class 29 as Ex. PW2/2 and details of trade mark application no. 1900335 in class 32, 1900336 in class 32, 2129419 in class 32 and 2129420 in class 30 as Ex. PW2/3 (colly). This witness was cross examined and during cross examination he stated that all the applicant has to file form TM1 before Registrar of Trademarks. Detailed examination was conducted whether trademark already exist. Objections as per Section 9 of Trademark Act are invited. In case no objection is received, an advertisement is published in journal informing regarding application for particular trademark and objection if any. The advertisement is valid for four months and after considering objection if any received then the matter is referred to opposition section and due hearings were given. In case no objection is received, entire evaluation is done and thereafter trademark is got registered. It is valid for 10 years. To the question that once the trademark is removed what is the process of renewing it, he answered that there are two procedures, one is that fresh filing of application is required and the other is that review of Registrar decision. 6.7 Sh. Deepak Kumar Sinha, Assistant (Copyright) examined as PW3 who produced summoned record pertaining to copyright of artistic work/ label "NATURAL GURUJI LABEL) in the name of plaintiff as Ex. PW3/1 (colly). In his cross examination this witness stated that artistic work "NATURAL GURUJI LABEL) was registered under Copyright Act, on 02.06.2014. The application was moved by applicant on 11.04.2012 again said 26.03.2012. He further stated that after following appropriate procedure such as cooling of period of one month from the TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 17 of 39 date of application, the objection, if any, the registration is done. It is done on the basis of such certificates under Rule 24(3) of the Trade Mark Rules, 2002. 7.0 On the other hand, defendant examined Sh. Subhash Chand father of Sh. Kaushal Kishore Mittal allegedly proprietor of the defendant firm examined as DW1, who tendered the evidence by way of affidavit Ex. DW1/A and produced and proved documents i.e copy of Sale Tax registration certificate, U.P., having Tin no. 09327600892 Ex. DW1/1 (Colly) (OSR) (03 pages), copy of Food Product Processing Licence 31.03.2011 issued by Chief Director cumLicencing Authority, Mathura alongwith renewal licence Ex. DW1/2 (Colly) (OSR), Copy of application no. 01858566 dated 04.09.2009 for Trade mark registration Ex. DW1/3 (Colly) (OSR), Copy of Trade mark no. TM46/70/706/2806/12 for application no. 1858566 in class 32 (Colly)(OSR) Ex. DW1/4, Copy of copyright certificate no. A104317/2013 dated 03.09.2013 issued by Copyright Registry Ex. DW1/5 (OSR), Sale Bills of various dates Ex. DW1/6 (Colly).
7.1 This witness was cross examined by counsel for plaintiff. During cross examination, it was stated that he is not proprietor of M/s. K.K. Food Products (India) and his son Sh. Kaushal Kishore is proprietor of Ms. K.K. Food Products ( India). He was authorized representative and duly authorized to appear, contest, depose in this suit. He denied the suggestion that authority letter was not filed and exhibited. He further denied the suggestion that he has no knowledge about business carried out in the name of M/s. K.K. Food Products ( India). He further stated that the business was started in the year 200203 (financial year). For starting business TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 18 of 39 registration with Sale Tax Office, Food Processing Licence alongwith weight and measure certificate are required. He had applied for registration with Sale Tax Office in the year 200203.
7.2 During the course of cross examination, the document Ex. DW1/1 (colly) (page 20 and 21 of paper book of defendant document) was shown to witness. He admitted that the nature of business is not mentioned in these documents and voluntary stated that as per practice in U.P. the nature of business is not mentioned. 7.3 Further, the documents Ex. DW1/2 (colly) (page 24 & 27 of paper book of defendant document) were shown to witness. He stated that the date of execution of Ex. DW1/2 ( page 24) may be of 31.03.2011. This licence was issued for Achar, Murabba, Sharbat etc. He admitted that word 'Thandhai' is not mentioned. Ex. DW1/2 ( page 27) is the licence of Food processing issued by FPO. It was issued in the year 2007 and renewed in the year 2008 and further admitted that it was issued for pickles, non fruit syrup, non fruit vinegar and Tomato sauce. He denied the suggestion that the licence was not got renewed after the year 2008. 7.4 He also admitted that in the sale tax assessment order passed for the year 200203 by the Sale Tax office, Kosi Kalan, Mathura, the business of sale and purchase of the firm in respect of Achar (pickles) only mentioned. The witness further cross examined by the counsel for plaintiff and stated that the sales tax assessment order for the year 20022003 pertains to the firm K. K. Food Product (India). The aforesaid sales tax assessment order filed at page 43 of the list of TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 19 of 39 documents dated 09.07.2012 is exhibited as Ex.DW1/P1. The sales tax assessment order for the year 20032004, 20042005, 20052006 and 20062007 pertains to the defendant firm. The aforesaid documents filed vide list of document dated 09.07.2012 at page 4447 are exhibited as EX.DW1/P2 (colly.). He admitted that in the sales tax assessment order filed at page 4447 the products Achar, Murabba and Gulkand are mentioned and not Thandai and voluntary stated that all products are not mentioned in the assessment order and only few products are mentioned by the sales tax department on the first page. He further admitted that the documents filed from page 48 to 65 pertains to the assessment of annual tax of the defendant firm under UP VAT Act, 2008 for the year 20072008. The aforesaid pages 48 to 65 are exhibited as EX.DW1/P3 (colly.). he deposed that the only products Achar, Murabba, Khali Dibba, Masale, Namak, Cheeni are only mentioned in the UP VAT Return consisting page 4865 and voluntary stated that he has given all details pertaining to all products including Thandai and Sharbat to the sales tax department, however, the same has not been mentioned. He further admitted that the documents filed from page 68 to 80 pertains to the assessment of annual tax of the defendant firm under UP VAT Act, 2008 for the 20082009. The aforesaid pages 68 to 80 are exhibited as Ex.DW1/P4 (colly). It is correct that the only products Achar, Murabba, Khali Bottle etc. are only mentioned in the UP VAT Return consisting page 6880. He voluntary stated that he has given all details pertaining to my all products including Thandai and Sharbat to the sales tax department, however, the same has not been mentioned. He denied that he has no VAT Return assessment documents and therefore he had have not filed the same. He denied the suggestion TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 20 of 39 that defendant firm has not carried out any business after the year 20082009. He has full knowledge about the business affairs and accounts of the defendant firm. The gross turnover of the sales in the year 20072008 is Rs.1,48,968/. He admitted that the net turnover of the defendant firm in the year 20072008 is Rs.1,48,968/. And further admitted that the gross turnover and net turnover of the firm/company usually remain different. The Ex.DW1/6 contains description of the products and price which for 5 peti products wherein each peti contains 12 bottles. He deposed that the price of the 60 bottles is 3,000/. The invoice at page 84 which is part of DW1/6 contains description of the products and price for 5 peti products wherein each peti contains 12 bottles. The price of these 60 bottle are Rs.3,025/. He admitted the price mentioned in the invoice filed at page 85 is Rs.4,840/ against 8 peties. It is correct that the price mentioned in the invoice filed at page 87 is Rs. 4,500/ against 5 peties. It is correct that the price mentioned in the invoice filed at page 88 is Rs.3,500/ against 5 peties and further admitted that the price mentioned in the invoice filed at page 89 is Rs.1,600/ against 2 peties. Attention of witness is drawn to page no.8 of plaintiff document containing defendants trade mark label/ packaging. He also admitted that the packaging of the product contains manufacturing date as March, 2012 and price Rs.205/. He denied the suggestion that the invoice page 8389 EX.DW1/6 (colly.) are forged and fabricated. But admitted that the name of the products name preserve food, pickle and syrup of sugar are printed. Also admitted that the product Thandai or Sharbat are not printed on invoice. He denied the suggestion that the defendant firm was not manufacturing and selling Thandai and Sharbat and therefore they are not printed on the invoices. TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 21 of 39 8.0 At the conclusion of evidence both the parties to the suit addressed respective arguments which can be summarized as under.
8.1 Ld counsel for plaintiff argued that the plaintiff company was incorporated in year 1996, but the journey of brand Guruji relates back to half a decade and even more as per history of adoption of trademark / label of plaintiff and drew attention to the contents of para 4 of the plaint. The plaintiff has been using the said trade mark since 1996 and through its predecessor since 1986. The plaintiff used the trademark 'Guruji' in association with words Jai and Natural. The plaintiff also uses the slogan / punch line "Pure ka Jor" in association with said trademarks / label. The trademark application for registration of trademark Guruji under registration no. 797234 was registered but the plaintiff argued that owing to inadvertence the registration could not got renewed. The reason of non renewal of trademark is that plaintiff did not receive necessary O3 notice which the trademark registry sends directly to the registered proprietor before the date of renewal. A writ petition before Hon'ble High Court of Delhi is pending adjudication in this regard. The trademark 'Guruji Pure Ka Jor' is registered under no. 1653685 and subsisting. 8.2 Ld counsel for plaintiff further argued that the trademark of plaintiff whether in class 32 or in 29 pertain to Indian cultural beverages which have predominance of fruit extracts and milk. From the point of view of a man of a average intelligence and imperfect recollection, there is every likelihood of confusion and deception owing to similarity between the trademark, packaging and other artistic feature. TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 22 of 39 There are some products which may fall in different classes but the public at large are bound to be confused be the product is in the class 32 or in 29. The defendant is engaged in the trade and business of manufacturing and marketing of aachar, murabbas, thandais and sharbat and claims to be in business since 2003. The defendant is thus subsequent in trade and business insofar as adoption of the impugned trademark is concerned. Even otherwise the documents filed by defendant do not establish the claim of user of defendant because Ex. DW1/2 is the license of food processing issued for pickles, non fruit syrup, non fruit vinegar and tomato sauce. Sales Tax Assessment order Ex. DW1/P1 bears the product aachar, murabba and gulkand and not thandai. Further, UP VAT return Ex. DW1/P3 mentions the product line of the defendant as aachar, murabba, khali dibba, masale, namak, cheeni. Similarly, UP VAT Assessment of annual tax for the year 20082009 Ex. DW1/P4 contains the particulars of product aachar, murabba, khali bottle etc. The aforesaid documents are silent about carrying of business of thandai by defendant. Ld counsel for plaintiff further argued that the invoices Ex. PW1/6 containing description of product and price does not confirm to the contentions of the defendant as on different pages the price of the product has vast variation. 8.3 It is further argued on behalf of the plaintiff that its business turnover is in crores of rupees whereas for the year 20072008 the gross turnover of defendant was for a meager amount of Rs. 1,48,968/.
8.4 The impugned trademark / label of defendant are identical and deceptively similar in each and every respect visually, structurally in its basic idea and essential TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 23 of 39 features as that of plaintiff. The defendant has substantially copied and rather counterfeited the impugned trademark / label with all its features and artistic work, lay out, design, lettering style, getup, make up, colour combination and idea thereof as well as the punch lines. Not only the term Guruji but Natural has been copied by defendant by mentioning Shri Sidh Guruji which is in miniscule and does not make any difference. It has also copied the colour scheme in bottle whereby presence of Kesaria Thandai written in the same font, lettering style and colour scheme has imitated the punch line "Pure Ka Jor" in same colour scheme in white background written in combination of yellow and black colour. The only change the defendant has made is instead of "Ka Jor" has written "& Fresh" which cannot be distinguished by the man of average intelligence and imperfect recollection. Ld counsel for plaintiff argued that the mark should not be compared by splitting them, the marks should be read as a whole and they should be compared as a whole. 8.5 In support of the contention of similarity of trademark, the plaintiff cited case laws titled K.R. Chinna Krishna Chettiar Vs. Shri Ambal & Co. PTC (Suppl) (1) 258 (SC), Amritdhara Pharmacy vs. Satya Deo Gupta AIR 1963 SC 449, Midas Hygiene Industries P. Ltd. & Anr Vs. Sudhir Bhatia & Ors. 2004 (28) PTC 121 (SC), Century Traders Vs. Roshan lal Duggar & Co. AIR 1978 Delhi 250, N.R. Dongre and others Vs. Whirlpool Corporation and Ors., 1996 VI SC, 710, Satyam Infoway Ltd vs. Sifynet Solutions (P) Ltd (2004) 6 SCC 145, Laxmikant V. Patel Vs, Chetanbhai Shah (2002) 3 SCC 65, Societe Des Produits Nestle Vs. Continental Coffee Ltd 2012 (49) PTC 46 (Del.), Parle Products (P) Ltd Vs. J.P. & Co. Mysore, AIR 1972 SC 1359, N. Ranga Rao & Sons Vs. Anil Garg & Ors., 2006 (37) PTC 15 TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 24 of 39 (Del.), Arviva Industries (India) Ltd. Vs. Vikas M. Tulsian & Anr, 2013 (54) PTC 199 (Bom), St. Ives Laborites Inc. Vs. Ivees Soap Works & Ors., 2007 (35) PTC 57 (Del.), Saboo Sodium Chloro Ltd. Vs. Shree Sodium Chloro Pvt Ltd., 2005(31) PTC 658 (Del.), Mohan Meakin Ltd Vs. A.b. Sugars Ltd., 2013 (56) PTC 471 (Del), FMI Ltd Vs. Ashok Jain & Ors., 2013 (54) PTC 429 (Del.) and Asian Paints Ltd Vs. Oriental Oil & Paint Co., 2013 (54) PTC 433 (Bom).
9.0 Repelling aforesaid contentions, Ld counsel for defendant argued that it is settled law that a litigant who does not approach the Court with clean hands is not entitled for any relief from the Court and relied upon cases titled Hari Narain v. Badri Das, [1964] 2 SCR 203, Rajabhai Abdul Rehman Munshi Vs. Vasudev Dhanjibhai Mody, [1964] 3 SCR 480, Udai Chand Vs. Shankar Lal and Ors. [1978] 2 SCC 209, Vijay Syal and Anr. Vs. State of Punjab and Ors. [2003] 9 SCC 401, S.P. Chengalvaraya Naidu (dead) by L.Rs.Vs.Jagannath (dead) by L.Rs. and others, [1994] 1 SCC 1.
9.1 Ld counsel for defendant argued that plaintiff has filed the present suit for infringement of Trade Mark in May 2012 while the Plaintiff was not having a subsisting Trade Mark registration as it expired in year 2008 and was removed in 2009. In fact, the Plaintiff has applied for a fresh trademark only after filing of application for trademark by the Defendant which is an admitted fact on record. 9.2 It was argued on behalf of the defendant that this was within the knowledge of the plaintiff that trademark does not exist at the time of filing of the present suit. TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 25 of 39 No application for renewal or filing of fresh application for registration of trademark has been produced or averred in the plaint by the plaintiff. In such manner the Plaintiff has concealed the material fact that he was not in possession of a registered trade mark, the infringement of which is a subject matter of the present suit. Section 27 of the Trade Marks Act clearly lays down that Court proceedings can only be initiated by a litigant who is in possession of a registered Trade Mark only. 9.3 Ld counsel for defendant further argued that defendant received a reply dated 14.08.2013 through RTI which shows that as per ROC records the registered address of the Plaintiff is 7A, Bentick Street, Room No.205, 2nd floor, Kolkata, West Bengal
- 700001 whereas the Plaintiff in application for Trade Mark at page 9 of documents has mentioned address as 562, Gali Ghanteshwar, Katra Neel, Chandni Chowk, Delhi6 and further in applications for Trade marks at page 12, 15, 17, 19, 20, 21 and Copyright search certificate at page 24 has mentioned address as 212514, HSIDC, Kundali, Sonepat, Haryana. It is further argued that even the invoices contains different registered addresses at Kolkata. The Plaintiff has time and again changed his registered address on his documents without completing the necessary formalities or informing any authority as per his whims & fantasies in gross violation and abuse of the process of law.
9.4 Ld counsel for defendant while drawing attention towards cross examination of PW1 argued that there are contradictory statements of PW1 in evidence. PW1 has stated in his cross examination that 'we possess proprietary rights over trade mark/ label "GURUJI"'. This witness has further stated that he does not remember TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 26 of 39 as to when he acquired the said proprietary rights. But stated that they have proprietary rights over trade marks and labels. This witness has also stated that he cannot tell the exact authority who has given them the proprietary rights but they were given by government authority and at the time of filing of the present suit they have proprietary rights in class 29 and 32. The witness further stated that they received NOC and pramaan patra at the time of issuance of proprietary rights. However, this witness has stated that he cannot tell about the class in which thandai was registered but subsequently stated that thandai and registered under class 32, milk products in combination with thandai and sharbat are registered in class 29. Further this witness made a completely contradictory statement on 28.04.2014 in his further cross examination and stated that it was not in his knowledge that the GURUJI trademark was valid for 10 years since registration and became aware of this fact in 2009 whereafter his trademark registration was to get renewed. It is pertinent to mention here that the present suit has been filed in 2012 and the statement of this witness shows that he was well aware since 2009 that he was not having a valid trademark which fact was concealed from this Court. The Plaintiff was fully aware that he was not in possession of a valid trademark under class 32 at the time of filing of the present suit whereas the Plaintiff has stated in his cross examination on 02.04.2014 that they were having registration and proprietary right over trademark GURUJI under both class 29 and 32 on the date of filing of the present suit.
9.5 Ld counsel for defendant further argued that as per description of classes provided in the Trade Mark Journal wherein the milk and milk products have been TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 27 of 39 provided under class 29 and syrups and other preparations for making beverages are specifically provided under class 32. The Plaintiff was not having any proprietary rights under class 32. The claim of the plaintiff that thandai and sharbat are also milk products and falls under class 29 is totally false.
9.6 Ld counsel for defendant further argued that plaintiff has concealed the fact that Writ petition (C) No.6562/2012 preferred by him against concerned authorities is pending before Hon'ble High Court for adjudication. Ld counsel further argued that word 'Guruji' is a generic term and has acquired that connotation being used since centuries in various fields & contexts and as such it cannot be registered as a Trade Mark individually.
9.7 The Copyright of defendant is prior in date and it is the Defendant who shall be suing the Plaintiff for his Copyright violation. It is further argued that the plaintiff has not pleaded passing of as his grievance against the defendant for which plaintiff is taking relief and relied upon case law titled Parle Products (P) Ltd Vs. J.P. And Co., Mysore (172) 1 SCC 618.
10 In rebuttal Ld counsel for plaintiff argued that the arguments of the defendant hinges upon two things one there is misrepresentation and second one is concealment. The defendant has also referred to the cross examination of PW1 wherein questions with regard to classification of goods / services of the schedule of Trademarks Act 1999 and its registration process has been asked. Any ordinary businessman cannot be expected to know the nitty gritty of the provisions of laws TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 28 of 39 and rules and they are supposed to know on the facts of the case. It is further argued that the plaintiff in para 5 of the plaint and also in the evidence under para 7 specifically mentioned the circumstances under which the registrar Trademark did not get renewed. The plaintiff has neither misrepresented any fact or concealed any material fact from the Court. The plaintiff has categorically disclosed the filing of writ petition before Hon'ble Delhi High court and same is also reflected in the order dated 26.11.2012 whereby the application u/o 39 rule 1 and 2 moved by plaintiff as well as application u/o 39 rule 4 of CPC as decided. The argument that the plaintiff has nowhere in his plaint sought relief for passing off is without substance as the plaintiff in para under the titled of suit as well as in para no. 18, 20 and 25 has specifically averred about the passing off. It is further argued that Sh. Kaushal Kishore Mittal is the sole proprietor of defendant firm and he has never turned up in the witness box nor tendered evidence by way of affidavit. The defendant in its defence examined Sh. Subhash Chand as defence witness DW1 who was not authorised on behalf of defendant Sh. Kaushal Kishore as no authority letter has been exhibited and proved authorising Sh. Subhash Chand to lead evidence and depose to the facts by way of affidavit on behalf of defendant. There is no power of attorney in favour of Sh. Subhash Chand which has been exhibited and proved in the present proceedings and while relying upon case law titled Ram Prasad Vs. Hari Narayan ARI 1998 Rajasthan 185 argued that the evidence of defence witness cannot be looked into.
11. I have considered the record and arguments of the parties. The issue wise findings are as under:
TM no. 84/12
M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 29 of 39 ISSUE NO. 1:
12. The first issue between the parties pertains to both infringement as well as passing off of the trademark/ marks of the plaintiff.
13. In so far as infringement is concerned, the provisions of the Trademark Act are very clear which lays down that infringement can be committed only if there is any subsisting registered trademark in the favour of the plaintiff alleging infringement by the other party. It transpires from the record that the plaintiff was registered owner of the Trade mark GURUJI no. 797234 in class 32 which was registered but was not be renewed. The plaintiff claims that this trademark was not renewed as the fault lies with the Trademark authorities who did not serve proper notice "O' and did not renew the trade mark. In the evidence of PW1, Sh. Balmukand Sharma it is brought on record that a Writ petition has filed against the trademark department for non renewal of the trademark which is pending adjudication. It is also borne out of records that another Trade mark GURUJI Pure Ka Jor is registered under no. 1653685 in class 29 and still subsisting. Further, the applications for registration of trademarks Jai Guru ji, Natural Guru ji (label) are pending for respective classes. The plaintiff has also been able to place on record historical background of its ancestral linage which was into development of the trademark. In this background it is relevant to appreciate that the plaintiff has been able to demonstrate that it is not only a prior user of the trademark GURUJI but has also taken steps to protect its valuable rights in the impugned trademarks either by TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 30 of 39 getting them registered or by getting necessary applications filed. 13.1 The defendant has argued that no case of infringement has been made out because the trademark of the plaintiff is not renewed in class 32 and thus it is open for the defendant to use the trademark. The other objection raised is that the class under which the trademark is registered is 29 which would protect only the natural products derived from egg, milk and milk products and registration under this class would not prevent the defendant from using the trademark for the 'Thandais and Sharbats' which should appropriately fall under class 32 (the registration of which is not renewed for the plaintiff). In these rebuttal arguments the defendant further clarifies that the explanatory notes indicates that class 32 does not include these products in particular milk beverages (milk predominating) (Cl. 29). 14 In rebuttal of the argument of class of registration, the plaintiff contends that for infringement the requirement of the law is that the other party should be using the marks of the plaintiff which are deceptively similar on the products manufactured by the defendant. The argument is further buttressed by contending that the defendants are precluded from using the registered marks of the plaintiff on any products. The plaintiff argues that its product line encompasses a variety of products which contain 'Sharbats and thandais' with milk or without milk and thus in totality these products would fall under class 29.
15 I have given careful consideration to these arguments and refer to the law relating to infringement which can be understood by reading Section 29 of the TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 31 of 39 Trademark Act which explains the exclusive rights granted by virtue of registration under Section 28 of the Act. By mere reading of these provisions, it is clear that a registered trademark is infringed by a person who not being a registered proprietor, uses in the course of trade a mark which is identical or deceptively similar in relation to the goods or services which are identical or similar to that in respect of which the trademark is registered without the permission of the trademark owner. Further, if a person uses a registered trademark in relation to goods and services which are different an distinct from the goods or the services in respect of which the trademark is registered then to be covered by section 29 (4) it requires that registered trademark must have reputation in India and use of mark without due cause would be amounting to taking unfair advantage of or would be detriment to the distinctive character or repute of registered trademark.
16. The law is evident as the protection extended by section 29(4) of the Trademark Act even to dissimilar goods is actually based on Doctrine of dilution which is a type of violation of a trademark in which the defendants use while not causing a likelihood of confusion, blurs distinctiveness or tarnishes the image of plaintiff's trademark. The underline object of this doctrine is that there is presumption that the relevant customers start associating the mark or trademark with a new and different source. It amounts to not only the reducing the force and the value of the trademark but it gradually taper the commercial value of the marks which is not expected in trade and commerce. In this backdrop minor variation of class of registration becomes insignificant.
TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 32 of 39 17 In catena of judgments it has been held that in action based upon infringement, if the mark used by the defendant is visually, phonetically or otherwise so close to the registered trade mark of the plaintiff that it is found to be imitation of the registered trademark, the statutory right of the owner of the registered trademark is infringed. A careful examination of labels of the plaintiff and the defendant show that there is no such mark difference between the two notwithstanding the identity of the aforesaid goods and the trademark; warn the consumer of the two products being different.
18. The provisions of the Trade Marks Act are succinctly clear that if any other person in the course of trade uses a mark which is either identical or deceptively similar in relation to goods would get caught into the trappings of infringement. Under the circumstances of the present case, it is not disputed that the plaintiff is registered owner/ proprietor of the trademark GURUJI PURE KA JOR even though under class 29, it would appropriately arm the plaintiff to protect itself and its products from any kind of deceptively similarity in products by the defendants. The defendants are admittedly manufacturing almost similar products Achar, Murabas , Thandais and Sharbats which use trademarks close/ strikingly similar to that of the plaintiff.
19. When a trade mark is registered, a valuable right gets acquired by reason of such registration and it confers exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered. If there is any invasion of this right by any other person using a mark which is the same or deceptively TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 33 of 39 similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction. Now the plaintiff has a registered trademark GURUJI PURE KA JOR which has also been used on Thandais and sharbats, thus any deceptive use of similar mark and packing of words 'GURUJI' or SHRI SIDH GURUJI on thandai and sharbats by the defendant would be infringement of registered trademark.
20. The controversy between the parties needs to be examined from another perspective because apart from the infringement the plaintiff claims relief for the Passing off also.
21. The law of passing off has been explained by Lord Diplock in Erven Warnink v. J. Townend & Sons (Hull) Ltd. [1980] RPC 31 wherein Lord Diplock has laid down five essential elements which are necessary to be proven as jurisdictional facts for the purposes of establishing the tort of passing off. The said five ingredients are as under: (1) A misrepresentation (2) Made by a trader in the course of trade (3)To his prospective customers (4) Which is calculated to injure the business or goodwill of another trader and (5) Which causes actual damage to a business or goodwill of trader by whom the action is brought?
22. The law of passing off 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 TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 34 of 39 two. Firstly, honesty and fair play are, and ought to be, the basic policies in the 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.
23. It is to be reappreciated that the plaintiff is owner and proprietor of one trade mark GURUJI PURE KA JOR bearing registered no. 1653685 (in class 29) and this registration is subsisting. The other trademark of the plaintiff namely GURUJI no. 797234 in class 32 which was registered but could not be renewed.
24. The first objection raised by the defendant was that the matter of renewal of registration of trademark is subjudice before Hon'ble High Court in a writ petition against the trademark authorities. Since the subject matter is disputed no benefit can be granted. In this regard it is to be appreciated that the writ petition seeks a relief against alleged arbitrary removal and denial to renewal of the trademark. The relief sought in the writ petition will not in any way alter the relief sought under the present suit so far the relief of Passing off is concerned because even the unregistered trademarks are eligible for protection of passing off. For adjudication of the suit, the trademark GURUJI which was earlier registered under no. 797234 in class 32 even if treated as unregistered can be protected against any 'Passing Off'. The plaintiff has successfully demonstrated that his forefathers were engaged in the vocation of making Thandais under GURUJI name. Even at the time of registration of this trademark (which now is unregistered) the plaintiff furnished the date of TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 35 of 39 continuous user from 15.10.1996. There is enough uncontroverted evidence that the turnover of the plaintiff is many folds in comparison to the defendants. The plaintiff have built their name and reputation in the product line and the defendant intends to encash upon the goodwill by adopting phonetically similar trademark and visually akin product packing of the similar kind of products. In this backdrop, the only conclusion which is irresistibly drawn from the packing and phonetically similar names is that the defendants'. The products of the defendant would amount to infringement as well as passing off.
25. The defendant has argued that there are contradiction in the deposition of PW1 to the extent that in cross examination this witness failed to provide details of the date of registration as well as the authority granting the registration etc. I have considered the argument and find that the contradiction pointed out by the defendant are of the nature which can be conclusively verifiable from the documentary record. Such contradictions over the points which are otherwise established based on the documentary evidence are inconsequential.
26. The plaintiff has also claimed copyrights in the artistic and/ or literary work involved in plaintiff's labels and punch lines which has been resisted by the defendant on the argument that the registration to the work of the plaintiff was granted in the year 02.06.2014 in respect of NATURAL GURU JI label while the registration to the defendant was given on 03.09.2013 in respect of NATURAL SHRI SIDDH GURUJI. It is to be appreciated that the registration of copyright under the Copyright Act is optional and not mandatory. It does not confer any rights. TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 36 of 39 Copyright existed whether the registration was done or not and the registration is merely a piece of evidence as to when a certain author started claiming copyright in the artistic or other work. Chapter XI of the Act deals with the infringement of copyright in this respect reference can be given to the section 51 of the Act which provides the various grounds on which copyright in a work shall be deemed to be infringed. Section 55 provides the remedies for infringement of the copyright. A conjoint reading of these sections reveals that nothing in these provisions makes registration compulsory for availing the remedy provided for. In the case in hand the representations of defendant product shows that the defendant has substantially copied the features and artistic work, lay out, lettering style and colour combination as that of the plaintiff providing evidence of copying.
In view of the discussion above the issue number one is decided in the favour of the plaintiff.
ISSUE NO. 2 and ISSUE NO. 3:
27. Both the issues are interconnected thus for the sake of convenience taken together. The issues are whether the defendant is liable to pay any damages and whether the plaintiff is entitled to rendition of account. However, it is settled law that though the plaintiff has not proved the actual damages suffered by it on account of infringement by the defendant but it is open for the court to award punitive damages for the conduct of the defendant with the objective of deterring future egregious conduct with a note of caution emphasizing that the punitive damages must TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 37 of 39 rationally relate to the award of compensatory damages. Both the parties have neither lead any evidence in support of the rival contentions nor any arguments were addressed on these issues. The plaintiff has failed to show some particular benefit which has accrued to the defendant and further failed to prove by leading evidence that it has suffered actual loss. In these set of circumstances no decree for rendition of accounts can be passed in this case, however, damages can be awarded on the basis of estimation. In consideration of totality of circumstances and low turnover of the defendant, it would be expedient if a sum of Rs. 50,000/are awarded as damages in favor of plaintiff against the defendant. The two issues are decided accordingly. RELIEF:
28. The plaintiff is entitled for a decree of permanent injunction restraining the defendant by itself as also through their individual partners/ properties, directors, agents, representatives, distributors, assigns, stockiest, dealers, retailers etc., and all other acting for and on behalf of the defendant from manufacturing, selling, using, displaying, advertising, importing/ exporting or by any other made or manner dealing with the impugned Trade Mark/ lables GURUJI and "SHRI SIDDH GURUJI" or any other trade mark/ label(s) identical with or deceptively similar to the plaintiff's trade mark/label GURUJI and/or GURUJI LABEL, plaintiff's trade dress, colour scheme, artistic features, copyrights, trade name etc. in relation to the impugned goods or goods of allied /cognate nature of sharbats and thandias or from doing any other acts or deeds amounting to infringement of plaintiff's trademark/labels and Passing off or otherwise violation by way of passing off of the TM no. 84/12 M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 38 of 39 plaintiff's said trademark/ labels and also Infringement of plaintiff's copyrights in the artistic and/ or literary work involved in plaintiff's lables and punchlines. The plaintiff is further entitled to a sum of Rs. 50,000/ as damages as ordered. The parties to bear their respective costs. Decree sheet be prepared. File be consigned to record room.
Pronounced in open Court
on 24.01.2015 (Vineeta Goyal)
Additional District Judge01,
NDD/PHC/New Delhi/ 24.01.2015
TM no. 84/12
M/s Guruji Enterprises Pvt Ltd Vs. M/s K.K. Food Products (India) Page no. 39 of 39