Delhi District Court
M/S Jagan Nath & Sons vs M/S Steel Tools India on 17 October, 2014
IN THE COURT OF MS. ANJU BAJAJ CHANDNA
ADDITIONAL DISTRICT JUDGE01 (CENTRAL)
TIS HAZARI COURTS, DELHI
TM68/2011
Unique I. D. No. 02401C0494022010
M/s Jagan Nath & Sons
Sanouri Adda, Saifabadi Road, Patiala
Through its partner Sh. Shiv Shankar
......Plaintiff
Versus
M/s Steel Tools India
1939, Gali Meer Afzal, Lal Kuan,
Delhi110006.
.......Defendant
Date of institution of suit : 28.10.2010
Date of reserving the judgment : 07.10.2014
Date of pronouncement of judgment : 17.10.2014
SUIT FOR PERMANENT INJUNCTION RESTRAINING OFF OF
TRADEMARK, INFRINGEMENT AND PASSING OFF OF
COPYRIGHT, RENDITION OF ACCOUNTS/DAMAGES,
DELIVERY UP ETC.
TM68/2011 1/24
JUDGMENT
1. The plaintiff has brought the present suit against the defendant seeking permanent injunction, restraining passing off of trade mark, infringement and passing off of copyright, rendition of accounts/damages, delivery up etc. under the provisions of Copyright Act, 1957 and Trade Marks Act, 1999.
2. The relevant facts of the case are that plaintiff is a partnership firm duly registered under the provisions of Indian Partnership Act, 1932 and Mr. Shiv Shankar, Mr. Jai Kishan and Mr. Chander Deep are the partners of the firm. The suit has been filed through Sh. Shiv Shankar duly authorised in this behalf. The plaintiff's firm is engaged in the business of manufacturing carpentry hand tools since 1961. It has adopted the trade mark 'CHAND NO. 1 SANAUR' with device of star and half moon including artistic work in respect of carpentry hand tools since 1986, which is registered vide trade mark No. 615913 in class 8. The trade mark including artistic work depicted on the product label of plaintiff in distinctive artistic style and get up is the TM68/2011 2/24 original artistic work and the plaintiff is its first owner and first publisher as such the copyright vests in it.
3. The plaintiff is aggrieved that the defendant has adopted a deceptively similar trade mark as 'CHANDA NO. 1 SANAUR' with device of star and half moon including imitation of artistic work of the plaintiff. The said adoption on the part of the defendant is visually, phonetically and structurally similar or almost identical to the plaintiff's trade mark which is a dishonest work on the part of the defendant. Thus, the defendant has taken undue advantage of the plaintiff's trade mark and unjustly enriching itself riding on the goodwill of the plaintiff. In this manner, defendant's goods are being passed off as if they originate from the plaintiff. It is further stated that impugned identical trade mark/label/infringing artistic script "CHANDA NO.1 SANAUR with device of star and half moon" including artistic work with its infringing artistic script by the defendant is causing confusion and deception due to high degree of phonetic, structural and visual identity between the two competing marks and their artistic scripts. It is further stated that plaintiff attaches great value to its trade mark including artistic work and TM68/2011 3/24 plaintiff is the exclusive proprietor thereof and the goods of plaintiff i.e. carpentry hand tools have been sold throughout the country. The plaintiff has been advertising its products under the said trade mark through pamphlets, circulars, trade journals, banners, wall paintings, boards, newspapers etc. The conduct of the defendant is dishonest, malafide and fraudulent and is only to earn easy and illegal profits by trading upon plaintiff's goodwill and reputation which is extremely valuable intellectual property owned by the plaintiff. The plaintiff served a legal notice dated 31.05.2008 and called upon the defendant to seize and desist from using the said impugned trade mark/label/artistic work to which, the defendant sent reply challenging the proprietary rights of the plaintiff. The defendant has no justification for the adoption of the identical trade mark 'CHANDA NO. 1 SANAUR with device of star and half moon including artistic work in this respect. It is further stated that the illegal trade activities of the defendant are causing irreparable loss, injury and damages to the plaintiff in business, goodwill and reputation and hence the suit is brought. It is prayed that decree of permanent injunction restraining the defendant, its partners or proprietor, assignee etc. from selling, exporting, advertising, directly or indirectly in TM68/2011 4/24 carpentry hand tools under the trade "CHANDA NO. 1 SANAUR with device of star and half moon' delivery of infringing articles and rendition of accounts be passed in favour of plaintiff and against the defendant.
4. Respondent filed written statement taking preliminary objections that suit is not tenable being devoid of legality; not maintainable being filed malafidely with ulterior motive; suppression of material facts and misrepresentation by the plaintiff. It is stated that defendant is the registered proprietor of trade mark 'CHANDA NO. 1 SANAUR with device of star and half moon'. The defendant is using the trade mark 'CHANDA NO. 1 with device' since 1972 without any hindrance or obstacle from any corner and the said trade mark is well known in the field of carpentry hand tools and plaintiff is pirator of the trade mark of the defendant. It is further stated that notice dated 31.05.2008 issued by the plaintiff was duly replied by the defendant on 23.06.2008 and the plaintiff being in the same business is very much aware about the existence of the defendant and had filed the suit after a lapse of so many years to pressurize the defendant. The Mark 'Chand No.1' is a generic word and the plaintiff cannot claim any exclusive right TM68/2011 5/24 to use the said trade mark in his favour. The trademark Chand No. 1 is not an invented word not even acquired a secondary meaning connecting to the products of the plaintiff. The name of the defendant is clearly mentioned on its goods which clearly distinguishes the goods of the plaintiff with the defendant. The defendant being a concurrent and honest user of the mark is not liable to be restrained from using the same. The defendant is the bona fide/honest prior user and registered proprietor of the said trademarks. Both the trademarks are totally different in visual, structural and phonetic aspects. The font, colourscheme and writing style of both the trademarks and the packaging material/style of the goods/services bearing the said trademarks are also completely different. Moreover, the source of the goods/services of defendant is prominently displayed/mentioned on the packaging of the goods of the defendant bearing the trade mark 'Chanda' and as such there is no probability of even a minor confusion or deception among the consumers or the members of the trade regarding the source of the goods/services bearing the trade mark Chanda No. 1 of the defendant. The goods manufactured/sold by both the plaintiff and defendant are carpentry tools and such goods are not purchased by the general public but by the TM68/2011 6/24 carpenters and the persons involved in the business of manufacturing furniture/wooden items and these persons being expert in their trade cannot be misled into purchasing the goods of defendant as for the goods of the plaintiff. There is no infringement of the artistic work of the plaintiff by the defendant as alleged. The artistic label of the defendant is in different font having different colour scheme, different script style and different features. In the defendant's label there is no use of Urdu language as used by the plaintiff and there is clear depiction of the origin of the defendant on the label. The device of star and half moon is a universal and generic device. The said device is commonly used by the members of the trade in relation to their goods and with their trademarks/trade name/label. The said device of star and half moon is incapable of becoming distinctive qua the goods/services of any trader/trading entity or their trade mark and no one can claim the same to be his own trade mark or otherwise. The above said device is public juris and no trader/trading entity could be allowed to use the same exclusively. In other words, no one can be allowed to claim any proprietary right in the said device of star and half moon or a star or a moon, or to claim the said device to be his/its trademark/trade name/logo/label to the exclusion TM68/2011 7/24 of all others. Further, denying the averments of the plaint with respect to the infringement of trade mark, defendant has prayed for dismissal of suit of the plaintiff with heavy costs.
5. Plaintiff filed replication to the written statement reiterating the averments of the plaint and denying those of the written statement.
6. From the pleadings of the parties, following issues were framed vide order dated 28.05.2013 :
1. Whether the suit has been instituted and the plaint signed and verified by a duly authorized person on behalf of plaintiff? OPP
2. Whether the plaintiff has concealed material facts and if so, what are those facts and what is the effect of concealment? OPD
3. Whether the trademark/label 'CHANDA NO.1' with device of a star an half moon and word mark 'CHANDA' of defendant are deceptively similar to the plaintiff's trademark/label 'CHAND NO.1 SANAUR' with device of a star TM68/2011 8/24 and half moon so as to cause deception and confusion in the mind of users? OPP
4. Whether the defendant has infringed the trademark of plaintiff? OPP
5. Whether the defendant has passed off its goods, as if they originate from plaintiff? OPP
6. Whether the packaging adopted by defendant is deceptively similar and substantial reproduction of plaintiff's packaging, so as to violate his copyright etc.? OPP
7. Whether the packaging of plaintiff has no novelty or uniqueness, so as to constitute original artistic work or design? OPD
8. Whether no copyright subsists in favour of plaintiff for want of registration? OPD
9. Whether the plaintiff is entitled to relief of injunction, as claimed? OPP
10.Whether the plaintiff is entitled to delivery up etc. of the infringing material? OPP TM68/2011 9/24
11. Whether the plaintiff is entitled to rendition of accounts from defendant or any damages? OPP
12. Relief(s)
7. In evidence, plaintiff examined its partner PW1: Shiv Shankar vide affidavit Ex. PW1/A. Plaintiff is a partnership firm and PW1 is stated to be one of the partners of the firm. The witness relied upon documents Ex. PW1/1 & 2 (Forms A & C of the firm's registration), Mark PW1/3 (copy of PMT registration), Ex. PW1/4 (Copy of Trade Marks Registration Certificate), Ex. PW1/5 (Copy of Copyright Registration Certificate), Ex. PW1/6 (copy of Registration Certificate under Punjab Value Added Tax Act, 2005), Ex. PW1/7 (colly. copies of sales invoices), Ex. PW1/8 (original product wrapper of plaintiff), Ex. PW1/9 (original product wrapper of defendant), Ex. PW1/10 (photocopy of balance sheet), Ex. PW1/11 (copy of income tax returns), Ex. PW1/12 (purchase bill from Kalra Sales Corporation, Ambala City), Ex. PW1/13 (copy of legal notice dated 31.05.2008), Ex. PW1/14 (reply dated 23.06.2008), Ex. PW1/15 (copy of application for removal of the trade mark 'Chanda'), Mark PW1/16 (colly. photocopy of assessment order TM68/2011 10/24 issued by Department of Trade & Taxes), Mark PW1/17 (colly. Photocopy of consumer details of defendant issued by BSES Yamuna Power Ltd), Mark PW1/18 (photocopy of subscriber's billing and payment of defendant issued by MTNL) and Ex. PW1/19 (copy of application for removal of trade mark CHANDA NO1 with device of Star and half moon). The witness has not been cross examined on behalf of defendant despite opportunities afforded.
8. Thereafter, defendant stopped appearing in the matter and was proceeded against exparte vide order dated 07.10.2014. Evidence of the defendant was also closed in the absence of any affidavit filed in evidence on behalf of defendant.
9. I have heard ld. counsel Sh. Ranjit Singh for the plaintiff and given due consideration to the facts and circumstances of the case, evidence and documents appearing on record.
10. My findings on the above mentioned issues are as follows: TM68/2011 11/24 Issue No. 1: Whether the suit has been instituted and the plaint signed and verified by a duly authorized person on behalf of plaintiff? OPP The plaintiff is a partnership firm and the suit has been filed through PW1 Shiv Shankar, who is stated to be well conversant with the facts of the case. He is one of the partners of plaintiff firm. The witness appeared and produced Form A & C wherein Shiv Shankar is shown as one of the partners. There is no crossexamination of this witness and his testimony and the documents proved have not been challenged. It is therefore, established that suit has been instituted by the duly authorised person on behalf of plaintiff's firm. The issue is decided accordingly.
Issue No. 2: Whether the plaintiff has concealed material facts and if so, what are those facts and what is the effect of concealment? OPD
11. The objection with respect to concealment of material facts has been taken by the defendant in written statement but the defendant has failed to bring any evidence on record on this aspect. The burden has not been discharged and accordingly there is nothing on record to prove any concealment of material facts by the plaintiff. The issue is disposed TM68/2011 12/24 off in favour of plaintiff and against the defendant.
Issue No. 3: Whether the trademark/label 'CHANDA NO.1' with device of a star an half moon and word mark 'CHANDA' of defendant are deceptively similar to the plaintiff's trademark/label 'CHAND NO.1 SANAUR' with device of a star and half moon so as to cause deception and confusion in the mind of users? OPP and Issue No. 4: Whether the defendant has infringed the trademark of plaintiff? OPP
12. Plaintiff has brought the present suit against the defendant on the basis its trade mark 'CHAND NO.1 SANAUR' with device of star and half moon. It is registered trade mark in class 8 in respect of Carpentry Tools and Hand Tools. The date of registration is 19.11.2005 and the application for registration was moved on 05.01.1994.
13. On the other hand, defendant claims his trade mark with with device of star and half moon, registered vide trade mark No. 1128758 in class 8 in respect of hand tools. The date of registration is 01.12.2005 and the application for registration was moved on TM68/2011 13/24 26.08.2002. The defendant's another trade mark is word mark 'CHANDA' which is also registered vide trade mark No. 819853 in class 8 in respect of hand tools and instruments. The date of registration is 12.09.2006 and the application for registration was moved on 18.09.1998.
14. The plaintiff claims to be the user since 1986 while the defendant claims to be the user since 1972. To establish their user both the parties have relied upon various documents, particularly, the copies of the bills. As regards the plaintiff, there are copies of bills dated 13/6/86 (Ex. PW1/7) using the trade mark Chand Sanaur. The invoice dated 19/8/86 (Ex. PW1/7 page 9) specifically indicates the sale under CHAND NO. 1 SANAUR. The bill dated 11/5/88 (Ex. PW1/7 page 10) also sails in the same boat. In some of the bills, the trade mark device is also printed. But the defendant has failed to lead any evidence in order to prove the office copies of the bills so produced on record. The witness of the plaintiff has not been crossexamined and the testimony of the witness has gone unchallenged and unrebutted. The defendant has failed to question the claim of plaintiff with respect to prior use of trade mark TM68/2011 14/24 'CHAND NO. 1 SANAUR' with device of star and half moon.
15. I have also examined the carton of both the parties i.e. Ex. PW1/8 of the plaintiff and Ex. PW1/9 of the defendant. The pleadings of the defendant in written statement, give clear impression that product of the defendant has been subsequent creation after the mark of the plaintiff came up in the market. On examining the carton of defendant Ex. PW/9, I find that same is formed/designed in similarity to that of the plaintiff. The defendant has copied the essential and basic features of the carton and packaging of the plaintiff whereby. An ordinary consumer usually does not have the opportunity to compare two cartons so minutely and closely. There is clear resemblance in both the cartons and it would not be possible for an ordinary person to recall the differences and there is every possibility that consumer would get confused with both the products/cartons. I do not find much differences in the design and essential features of the cartons and, in my opinion, the defendant has adopted/copied the artistic packaging work of the plaintiff company, which amounts to infringement of trademark created by the plaintiff's company. On the basis of above discussion, it is clear that defendant has TM68/2011 15/24 been violating the intellectual property rights of the defendant by using deceptively similar trade mark, device and packaging and both the products are being sold to the same class of customers and very likely to cause confusion in the minds of consumers and users. The defendant has accordingly infringed the trade mark of the plaintiff. The issues are decided in favour of plaintiff and against the defendant.
Issue No. 5 : Whether the defendant has passed off its goods, as if they originate from plaintiff? OPP
16. According to the plaintiff, the defendant is also guilty of passing off its product under the trade mark of the plaintiff. On the other hand, it has been the contention of the defendant that name of the defendant is clearly mentioned on its goods, which clearly distinguishes the goods of the plaintiff with the defendant. I have gone through both the packagings/cartons. The colour scheme of the plaintiff's packaging is in combination of green and yellow. From the top the green starts yielding place to the yellow. Similar is the colour scheme of the defendant's packaging. The carpenter's blade in similar size and way is shown on both the packaging. The place of writing various descriptions TM68/2011 16/24 such as the manufacturer's name and the guarantee etc. are also similar in manner and placed similarly.
17. In an action for passing off on the basis of unregistered trade mark, generally for deciding the question of deceptive similarity, the following factors ought to be considered:
a) The nature of the marks i.e. whether the
marks are word marks or label marks or
composite marks i.e. both words and label
works.
b) The degree of resembleness between the
marks, phonetically similar and hence
similar in idea.
c) The nature of the goods in respect of which
they are used as trade marks.
d) The similarity in the nature, character and
performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy
the goods bearing the marks they require, on
their education and intelligence and a degree
of care they are likely to exercise in
purchasing and/or using the goods.
TM68/2011 17/24
f) The mode of purchasing the goods or placing
orders for the goods, and
g) Any other surrounding circumstances which
may be relevant in the extent of dissimilarity
between the competing marks.
(Relied upon Cadila Health Care Ltd. Vs.
Cadila Pharmaceutical Ltd., 2001 (21)
PTC Supreme Court of India)
18. Carpentry tools are purchased by carpenters who generally have no formal schooling in India and they are in trade on account of it being their ancestral business. Thus they are not in a position to know or read the name of the manufacturer. They make their purchase of tools on the basis of pictorial representation of the packaging visàvis the image they have in their mind. In view of the same the apprehension of confusion and deception cannot be ruled out. This may invite the situation that the goods of defendant may be passed out as those originating from the plaintiff. Thus it would not only jeopardize the business interest of the plaintiff but would also affect the interest of general public. If the goods are not to the satisfaction of the consumer it TM68/2011 18/24 may again adversely affect the goodwill and reputation of the plaintiff and would result in its dilution. The defendant has pleaded acquiescence and laches on the part of the plaintiff. Acquiescence is a facet of delay. There is nothing on record to suggest the same as the plea as made is itself vague and bald. As far as the copyright is concerned the objection of defendant as to the nonregistration of the copyright of plaintiff holds no water as under the law registration of copyright is not mandatory.
19. In view of the above discussion, it is clear that defendant has been passing off the goods under the trade name and artistic packaging of the plaintiff. The plaintiff being prior user, only has got right to use the same. In view of substantial resemblance in both the trade marks, the defendant has clearly passed off its goods under the trade mark of the plaintiff and has encashed upon the goodwill and reputation of the plaintiff in the market. The issue is answered accordingly.
Issue No. 6: Whether the packaging adopted by defendant is deceptively similar and substantial reproduction of plaintiff's packaging, so as to TM68/2011 19/24 violate his copyright etc.? OPP and Issue No. 7: Whether the packaging of plaintiff has no novelty or uniqueness, so as to constitute original artistic work or design? OPD and Issue No. 8: Whether no copyright subsists in favour of plaintiff for want of registration? OPD and Issue No. 9: Whether the plaintiff is entitled to relief of injunction, as claimed? OPP
20. In view of my above discussion to issue no. 3, 4 & 5, it is clear that defendant has violated not only the trade mark and device of the plaintiff but also infringed the valid copyright by adopting the packaging, material of carton, colour combination and getup etc. as that of the plaintiff. The packaging carton of the plaintiff is unique work in view the colour combination, getup, placement of words and style. It can very confidently be said that it is original artistic work or design so far as the packaging of carpentry tools is concerned. The the work has been originated by the plaintiff, the plaintiff is entitled to the copy rights irrespective of the registration. The plaintiff is entitled to the relief of injunction as prayed for. All the issues are decided in favor of plaintiff TM68/2011 20/24 and against the defendant.
Issue No. 10: Whether the plaintiff is entitled to delivery up etc. of the infringing material? OPP
21. During the proceedings of the case, the application of plaintiff u/o 39 Rule 1 & 2 CPC was allowed whereby the defendant has been restrained from using the trade mark which is identical or deceptively similar, whether visually, phonetically or in any other manner to the plaintiff's trade mark/label mark 'CHAND NO. 1 SANAUR with device of star and half moon' including artistic work in respect of carpentry or hand tools. Therefore, defendant is liable to deliver up all the infringing material to the plaintiff for destruction. The issue is answered accordingly.
Issue No. 11: Whether the plaintiff is entitled to rendition of accounts from defendant or any damages? OPP
22. The defendant company having passed off its goods under TM68/2011 21/24 the trade mark and artistic packaging of the plaintiff, is liable to render the accounts in respect of its sales but the defendant has not brought any evidence on record to show as to since when goods are being sold by the defendant and what was the quantity so sold. I, therefore, find it appropriate and reasonable to grant some amount on account of damages to the plaintiff company payable by the defendant. In my opinion, an amount of Rs. 2.5 lakhs would be sufficient to compensate the plaintiff. Accordingly, defendant is directed to pay the amount of Rs. 2.5 lakhs to the plaintiff for passing off its goods under the trade mark of the plaintiff. The issue is answered accordingly. Court fees be filed by the plaintiff on Rs. 2.5 lakhs.
RELIEF(S)
23. The suit of the plaintiff is accordingly decreed in the following manner:
i) That the defendant, its partners or proprietor, assigns in the business, importers, distributors and agents are restrained from selling, exporting, importing, advertising, advertising, directly or indirectly dealing in carpentry hand tools and any other item under the TM68/2011 22/24 impugned trademark ''CHANDA NO. 1 SANAUR with device of star and half moon' or any other trademark as may identical to or deceptively similar with the trade mark ''CHAND NO. 1 SANAUR with device of star and half moon' as may be likely cause confusion or deception amounting to passing off defendant's goods/business for those of the plaintiff;
ii) That the defendant is directed to deliver up all the infringing articles used by the defendant in the course of trade, including boxes, packagings material, advertisement material, dies, papers, articles, literature, labels etc. and any other material containing the impugned trademark "CHANDA NO.1 SANAUR with device of star and half moon' or any other trade mark identical or deceptively similar with the trade mark "CHAND NO. 1 SANAUR with device of star and half moon" to an authorised representative of the plaintiff;
iii) That the defendant is directed to pay the amount of Rs. 2.5 lakhs to the plaintiff for passing off its goods in the trade name of the plaintiff on account of damages; and
iv) The defendant is further directed to handover boxes, packagings material, advertisement material, dies, papers, articles, TM68/2011 23/24 literature, labels etc. infringing material to the plaintiff within one month for destruction and plaintiff is permitted to destroy the same.
24. The suit is disposed off in aforesaid terms. Decree sheet be prepared on payment of court fees by the plaintiff on Rs. 2.5 lakhs. File be consigned to record room.
Announced in open Court (ANJU BAJAJ CHANDNA)
on this 17.10.2014 Addl. Distt. Judge01(Central),
Tis Hazari Courts, Delhi.
TM68/2011 24/24