Delhi District Court
M/S Hsil Limited vs M/S Champion Ceramic on 8 May, 2013
M/s HSIL Limited Vs M/s Champion Ceramic
IN THE COURT OF SH. VIRENDER KUMAR BANSAL:
ADDITIONAL DISTRICT JUDGE, CENTRAL-8, DELHI.
ID No.02401C0094602003
CS No. 107/03
M/s HSIL Limited
Unit No. 301-302, 3rd Floor,
Park Centra, Sector 30, NH8,
Gurgaon-122001, Haryana ... Plaintiff.
VERSUS
M/s Champion Ceramic
Navagam Road, Amarapar,
Thangdh, Distt. Surender Nagar,
Gujarat. ....Defendant.
Date of institution of the suit : 24.03.2003
Date of reserving judgment : 12.04.2013
Date of judgment : 08.05.2013.
JUDGMENT
1. M/s Hindustan Sanitaryware & Industries Ltd (herein after referred as plaintiff) filed the present suit u/Sec. 105 & 106 of the Trade and Merchandise Mark Act 1958 for permanent injunction to restrain infringement of registered trade Mark H- VITREOUS and Hindwere passing off and rendition of account etc. against M/s Champion Ceramic (herein after referred as defendant). Plaintiff alleged that it is in the business of manufacture and sale of a large variety and types of CS No. 107/2003 1 of 59 M/s HSIL Limited Vs M/s Champion Ceramic sanitarywares and installations for water supply since 1960. Plaintiff in the year 1960 coined, invented, adopted and started using the trade mark H-VITREOUS written in highly distinctive and an artistic manner. The word VITREOUS is written across the horizontal bars of the letter 'H'. In the year 1990, the plaintiff further coined, invented, adopted and started using the trade name HINDWARE. The letters HIND were taken from the ist part of the plaintiffs trading style i.e HINDUSTAN while the letters WARE were taken from the second word in the trading style namely the sanitaryware. The said trade mark HINDWARE has been used in conjunction with the words H- VITREOUS since the year 1990. The plaintiff is the proprietor of his said trade mark H-VITREOUS, HINDWARE on account of their prior honest adoption and continuous user thereafter. The plaintiffs trade mark H-VITREOUS with HINDWARE is duly registered under the Trade and Merchandise Marks Act, 1958 under trade mark registration No. 529823-B in Class 11 as of 16th May 1990. The said registration is in respect of installations for water supply and sanitary purposes. The said registration has been renewed from time to time and is legal, regular and still subsisting in law. Plaintiff has exclusive rights to the said trade marks within the meaning of Section 28 & 29 of the Act. The plaintiff is the proprietor of his said trade mark and enjoys, enviable goodwill and reputation both in the Indian and global markets in respect thereof. Plaintiffs said trade CS No. 107/2003 2 of 59 M/s HSIL Limited Vs M/s Champion Ceramic marks and trade names have already become distinctive and associated with the aforesaid goods and business on account of its long continuous, commercial, extensive and exclusive user. Defendant is engaged in the same business as that of the plaintiff namely manufacture and sale of large variety and types of sanitarywares and installations for water supply. Defendant in respect of these goods have adopted and using the trade mark HIMWARE Label. The impugned trade mark of the defendant is identical with and deceptively similar to the said trade mark HINDWARE Label of the plaintiff. The said trade mark is visually and phoetically identical with and deceptively similar and also in its essential and distinguishing feature of mark HINDWARE. By their impugned acts and business under their impugned trade mark, the defendants are infringing the plaintiffs afore-mentioned Registered trade Mark no. 529823-B in class 11 and are also passing off and violating the plaintiff's rights in the plaintiffs trade mark HINDWARE Label. The resemblance between the plaintiffs said trade mark and those of the defendants is so close that it can hardly occur except by deliberate imitation. The defendants adopted and started using the impugned trade mark HIMWARE label dishonestly, fraudulently and in full knowledge of the plaintiff's rights. The unwary purchasers and potential customers are bound to be deceived and confused and are being so deceived and are likely to subscribe to the goods and business of the CS No. 107/2003 3 of 59 M/s HSIL Limited Vs M/s Champion Ceramic defendants believing that they are of the plaintiffs origin or that defendants are licensed/authorised/affiliated to the plaintiff. The trade mark of defendant is bound to create confusion and deception in the normal course of business activities of the plaintiff and the defendants. The nature of the goods and business of the plaintiff and defendant are similar therefore the probability of confusion is the only conclusion. The plaintiff came across an advertisement of the defendants under the trade mark HIMWARE label in trade magazine and thereafter the plaintiff vide registered letter dated 23.05.2002 addressed communication to the defendants calling upon the defendants to cease and desist from the use of imitated trade mark HIMWARE which was duly replied vide letter dated 10.06.2002 asking for the copies of registration which was duly supplied but despite that the defendant refused to comply with the just requisitions of the plaintiff. The defendant has also filed application for registration of trade mark HIMWARE on all-India basis in Class 11 and 19 respectively on 08.04.1999 and 31.03.1999. Thereafter, the present suit seeking permanent injunction and rendition of account.
2. Summons sent to the defendant. Defendant filed the written statement alleging that the court has no territorial jurisdiction to entertain and adjudicate upon this suit. The defendant is actually and voluntarily residing, carrying on business and CS No. 107/2003 4 of 59 M/s HSIL Limited Vs M/s Champion Ceramic personally working for gain in the State of Gujrat. No cause of action has arisen within the territorial jurisdiction of this court. He never appointed any distributor, wholesaler, retailer, agent etc. for goods being manufactured by him within the territorial jurisdiction of this court either prior to the institution of the present suit or even till date. The goods manufactured by the defendants are not available anywhere within the territorial jurisdiction of this court and defendant has never sold its products within the territorial jurisdiction of this court and also the suit has not been properly instituted by a duly authorised person and the suit is not properly valued. There is no similarity, much less deceptive similarity between the alleged mark of the plaintiff, namely "H-VITEROUS HINDWARE" and the trade mark of the defendant i.e. "HIMWARE". The two marks are totally different, visually, structurally and phonetically. The alleged mark of the plaintiff consists of the words "H- VITEROUS" as one component of the alleged mark. The word "HINDWARE" is the other component of the alleged mark of plaintiff. It is submitted that as per the own admission of the plaintiff in the plaint itself, the word "HINDWARE" has been taken after combining extract from the words "HINDUSTAN" and 'SANITARYWARE". The word "HINDUSTAN" being a gaeographical name representing the name of our country India, cannot be monopolised and no intellectual property right can be claimed with respect to the said word. Further, the word CS No. 107/2003 5 of 59 M/s HSIL Limited Vs M/s Champion Ceramic "sanitaryware" is a common trade name, descriptive in nature, neither coined nor invented by the plaintiff. As such, even the word " sanitaryware" cannot be monopolised by anyone. In fact any person manufacturing products relating to sanitary can use the word "SANITARYWARE" as a part of its trading style. The plaintiff cannot claim any exclusive right to use the word "HINDWARE". The mark of the defendant namely "HIMWARE" is a coined and invented name of the defendant. The word "HIM" means 'snow' in English language and "WARE" which has been extracted from the word "sanitaryware" which is a common trade name for the products being manufactured by the defendant. By using the word "HIM" the defendant wants to convey to the general public that its products are as white in colour as snow, indicating superior quality. Besides, the sanitary products of the defendant are made from china-clay which is white in colour to denote which the defendant used his innovation and decided to put the word "HIM" as the first part of his trade mark. The word "HIM" is used along with 'WARE" to convey to the general public an impression that the trade mark "HIMWARE" is a brand name for products such as sanitary fittings and installations etc. There is no structural phonetic or visual similarity between the alleged trade mark of the plaintiff and the trade mark of the defendant. In the alleged mark of the plaintiff, the word " VITEROUS" is found written in capital letters across the horizontal bar of the letter "H". The letter "H" is also CS No. 107/2003 6 of 59 M/s HSIL Limited Vs M/s Champion Ceramic broken in two parts and looks more like an inverted letter "U" below a straight letter "U". The formation of the letter "H" is thus quite peculiar. Besides, the vertical bars of the letter "H" are quite wide in themselves and are dissected by another line and are sharp edged. Below this formation "H VITEROUS", is written the word "HINDWARE" in capital letters and bold font. The font in itself is quite peculiar and thick. On the other hand, the defendant's trade mark is entirely different, structurally, visually and phonetically. The entire word "HIMWARE" is written in a unique font. The thickness of all the letters same. The word "HIMWARE" is written in running small letters except the letter "H" which is in capital. The font is a slanted font except the letter "H" which is straight and disjoint from the rest of the letters. The formation of letter "H" is also unique to the trade mark of the defendant. The defendant has already obtained copyright registration in respect of his trade mark "HIMWARE" and the registration no. is A-58561/2001 dated 6.2.2001 and applied for registration of Trade Marks, Mumbai. The products of the defendants sold under the trade mark "HIMWARE" and achieving huge sales of its products in various regions of the country. The defendant's trade mark does not require to piggy-back. The alleged mark "HIMWARE" has become distinctive in respect of the goods being manufactured by the defendant as a result of long, continuous and extensive use, extensive marketing, network, Voluminous CS No. 107/2003 7 of 59 M/s HSIL Limited Vs M/s Champion Ceramic sales and excellent quality.
3. In reply on merits, it is denied by the defendant that Sh.
A. K. Mohanty has been fully authorized to institute and file the present suit. It is denied that plaintiff has been in said busienss since 1960 or that in 1960 plaintiff coined, invented and adopted and started using the trade mark " H- VITEROUS" or that plaintiff started using the trade mark "HINDWARE" in conjunction with the words " H VITEROUS " in 1990. It is denied that the plaintiff is the proprietor of the mark "H VITEROUS" and HINDWARE. It is denied that the trade mark of the plaintiff has become distinctive and associated with the goods and business of the plaintiff and that the said goods are highly demanded in the market or that plaintiff has built up a valuable trade and that the alleged mark of the plaintiff has become distinctive indicium of the plaintiff. All other averments are denied. It is denied that plaintiff is entitled to the injunction or rendition of accounts.
4. Replication filed by the plaintiff wherein plaintiff denied the averments made int he written statement and re-asserted the facts as mentioned in the plaint.
5. Thereafter, my ld. predecessor heard arguments on the application u/O 39 Rule 1 and 2 CPC and the application was CS No. 107/2003 8 of 59 M/s HSIL Limited Vs M/s Champion Ceramic dismissed vide order dt. 7.2.2005. FAO no.95/05 was preferred against the order which was disposed of by Hon'ble Mr. Justice Mool Chand Garg vide order dated 18.01.2011. The appeal was dismissed. Thereafter, from the pleadings of the parties the following issues were made out.
1. Whether the present suit has been signed verified and instituted by a duly authorities present, on behalf of the plaintiff? OPP
2. Whether present suit has not been valued property for the purposes of court fees and jurisdiction? OPD
3. Whether this court has no territorial jurisdiction to try and entertain the present suit? OPD
4. Whether the plaintiff is entitled for a decree of permanent injunction as prayed in the plaint? OPP
5. Whether the plaintiff is entitled for a decree for rendition of account as prayed in the plaint? OPP
6. Whether the plaintiff is entitled for a decree of mandatory injunction regarding delivery of goods, for the purposes of destruction, as prayed in the plaint? OPP
7. Relief.
6. Thereafter case was fixed for PE. Plaintiff examined Mr. A. K. Mohanty as PW1 who filed his affidavit as Ex. PW1/A and also proved on record the documents Ex. PW1/1 to Ex. PW1/10. Ex. PW1/1 is the Memorandum and Articles of Association of the plaintiff company. The certificate of incorporation is proved as Ex. PW1/2, the Authorization in CS No. 107/2003 9 of 59 M/s HSIL Limited Vs M/s Champion Ceramic favour of Sh. A. K. Mohanti dt. 24.05.2008 is ex. PW1/4, Notarized General Power of Attorney in favour of Sh. A. K. Mohanti is proved as Ex. PW1/5. The Fresh Certificate of Incorporation consequent upon change of name is proved as Ex. PW1/6. The copy of trade mark "H VITREOUS" is proved as Ex. PW1/7, the trade mark registration in class-11 is proved as Ex. PW1/8. The sale figures including its exports is Ex. PW1/9. Defendant's trade mark specimen HIMWARE LABEL was placed on record as Ex. PW1/10. The witness has supported the averments made in the plaint in his affidavit. The certified copy of the trade mark Caution Notice is proved as Ex. PW1/11, certified copy of Pamphlets and Vouchers is proved as ex. PW1/12, Certified copies of Sales Bills are proved on record as Ex. PW1/13 (colly), Certified copy of Pamphlets and Voucher is proved as ex. PW1/14, and certified copies of Sales Bills are proved as Ex. PW1/15.
7. During cross examination, the witness stated that:
" We have received complaints in writing as well as verbally fromt he customers as well as dealers that they purchased product HIMWARE instead of HINDWARE the product of plaintiff thinking that it is also product of the plaintiff. We have not placed any such complaint on record. (Vol. As it was not required after serving notice upon the defendant)."
He denied the suggestion that plaintiff company has no CS No. 107/2003 10 of 59 M/s HSIL Limited Vs M/s Champion Ceramic exclusive right to use this trade mark HINDWARE or that the suit has been filed only to monopolize the market. He also denied the suggestion that plaintiff is not the proprietor of trade marks H VITEROUS and HINDWARE or that it has not rights under the statue over the common law.
8. Sh. Chand Singh, Ahalmad in the court of Sh.
Manmohan Sharma, ld. ADJ-12 was examiend as PW2. He brought the summoned record of suit No. TM-95/2011 titled as M/s Hindustan Sanitary Ware & Industries Ltd. Vs M/s Chalana Plastic. He brought the record with respect to the Trade Mark Caution Notice given in Navbharat Times, Pamphlets and the Vouchers which were taken on record as Ex. PW2/1 to Ex. PW2/4.
9. Sh. V. Krishnamurty was examined as PW3 on behalf of plaintiff. He also supported the case of the plaintiff as alleged in the plaint. He brought the sale bills of the plaintiff company prior to 1997-98 using the trade mark H VITEROUS and HINDWARE and the same was executed as Ex. PW3/1, the export bills of the plaintiff's company under the trade mark as Ex. PW3/2 (colly). He was cross examined. During cross examination he told that he is aware that one case is filed by the plaintiff company against Sh. Sanjay Aggarwal but he does not know about the details of the case. He admitted that the CS No. 107/2003 11 of 59 M/s HSIL Limited Vs M/s Champion Ceramic invoices Ex. PW3/1 does not bear the trade mark of the plaintiff company, however, it bears the name of plaintiff company. However, in Ex. PW3/2, the trade mark is there on page 37. He stated that today he is not carrying any document to show that defendant is selling its products in Delhi Market, however, whenever they visit the Delhi Market they found that product of the defendant being sold. It is wrong to suggest that trade mark of the defendant is structurally and phonetically different from that of plaintiff or that there is no similarity between the two trade marks.
10. Sh. Bandhu Ram, record clerk from the registrar of Trade Mark, Delhi was examined as PW4. He brought the summoned record pertaining to the status of the registered trade mark as well as pending application of the plaintiff's company trade marks. The certified copy of the plaintiff trade mark is proved as Ex. PW4/1, but the other record he could not brought as those were pertaining to Ahmadabad Office and proved the record Ex. PW4/2, Ex. PW4/3 and Ex. PW4/4. He stated that application under number 848841 for the trade mark Himware of the defendant is still under opposition under number AMD-159792. The opposition was filed by Hindustan Sanitaryware and Industries Ltd. The application under number 850416 for the trade mark Himware of the defendant is still under opposition under number AMD-130780. The opposition CS No. 107/2003 12 of 59 M/s HSIL Limited Vs M/s Champion Ceramic was filed by Hindustan Sanitaryware and Industries Ltd.
11. Sh. Ankit Garg from Trade Mark Office was examined as PW5. He brought on record with respect to trade mark stylo under number 1913522 in class 19 in the name of Sanjay Kumar Nava Gam Road, Amarapar, Thangadh, Distt. Surendranagar (Gujarat). The certified copy of the trade mark Stylo along with relevant document was proved as Ex. PW5A and the legal proceedings Ex. PW5/B. Thereafter plaintiff closed evidence.
12. Defendant Sanjay Aggarwal filed his affidavit in evidence supporting the averments made in the written statement and proved the following documents i.e. the registration under the copy right of HIMWARE Ex. DW1/1, the original invoices Ex. DW2/2 to Ex. DW2/10, certified copy of plaint of the Civil Suit (O.S.) no. 542/2011 filed by the plaintiff herein Ex. DW1/11, certified copy of order dated 29.11.2011 passed by Hon'ble High Court in Civil Suit (O.S.) No. 542/11 Ex. DW1/12 and also the certified copy of the written statement filed in above mentioned Civil Suit Ex.DW1/13.
13. During cross examination, he stated that:
" I am selling my goods throughout India. Till date I have not sold any product in Delhi if any customers of Delhi approaches me I will deal CS No. 107/2003 13 of 59 M/s HSIL Limited Vs M/s Champion Ceramic with him business process..........I am having website. The website is accessible throughout the world. I do not know if my website can be assessed in Delhi as I am not residing in Delhi........In the year 1999 the plaintiff was using the trade mark H-vitreous Hindware and was well known in India. The general public recognize the product of the plaintiff by alphabet 'H' and not Hindware. Hindware is not the trade mark of the plaintiff. It is wrong to suggest that Hindware is the essential of the plaintiff trade mark..... I starting using the trade mark "Himware" approximately year 1999. It is wrong to suggest that both the trade mark are not different. It is wrong to suggest that consumer is deceived/confused due to this similarity."
14. Thereafter defendant closed his evidence. Counsel for the plaintiff did not want to lead rebuttal evidence. He also gave the statement. Thereafter, case was fixed for final arguments.
15. I have heard ld. counsel for the plaintiff, ld. counsel for the defendant and perused the record.
16. My issue-wise findings are as under:
ISSUE NO.1
17. Ld. counsel for the plaintiff submitted that the present suit has been signed, verified and instituted on behalf of plaintiff company by Sh. A. K. Mohanty, General Manager who has been duly authorized to institute and file the suit and also to CS No. 107/2003 14 of 59 M/s HSIL Limited Vs M/s Champion Ceramic sign and verify the same. Ld. counsel submitted that Sh. A. K.Mohanty has been examined as PW1. He has proved on record Article of Association as Ex. PW1/1, the certificate of incorporation is proved as Ex. PW1/2, the Authorization in favour of Sh. A. K. Mohanti dt. 24.05.2008 is ex. PW1/4. Ld. counsel submitted that according to this document Ex. PW1/4 the General Power of Attorney was executed in favour of Sh. A.K. Mohanty in his capacity of General Manager (Personnel) on 09.11.2005 in terms of resolution passed by the Board of Directions at their meeting held on 28.10.2005 hold that power of attorney in favour of Sh. A.K. Mohanty is now required to be renewed by cancelling the said Power of Attorney and accordingly this resolution was passed with fresh General Power of Attorney to be executed by the company on 9.11.2005 in favour of Mr. A. K. Mohanty. That Power of Attorney has already been proved on record as Ex. PW1/5. Ex. PW1/5 specifically provides that :
" He is lawful attorney for looking after the affairs of said company at Bahadur Garh in the State of Haryana Clause 7 authorising him to file, institute, prefer, prosecute and defend all the legal actions whether civil or criminal including suit, appeals, applications, petitions or appeals in any court of law, board of ......, in any manner relating to the company and to settle compromise or reflect all of any such matter to petition.....".
18. Ld. counsel submitted that the signatures are of Sh. A. K. CS No. 107/2003 15 of 59 M/s HSIL Limited Vs M/s Champion Ceramic Mohanty on the plaint which he has identified. The Fresh Certificate of Incorporation consequent upon change of name is proved as Ex. PW1/6. Memorandum of Articles of Association is also proved on record as Ex. PW1/1. There is Notarized General Power of Attorney in favour of Mr. A. K. Mohanty, the presumption is therefore attracted that the same was duly executed as alleged and is duly notarized. Ld. counsel submitted that from this it is clear that the suit has been filed and instituted by a duly authorized person on behalf of plaintiff.
19. Ld. counsel for the defendant submitted that the onus was upon the plaintiff to show that the suit has been duly signed, instituted and verified by the duly authorized/competent person. Ld. counsel submitted that the onus has not been discharged. Simply placing on record the General Power of Attorney or the resolution that Mr. Mohanty is authorized, it is not serving the purpose. A resolution has to be there that it has been decided that this suit be filed. In the absence of any such resolution being placed on record it cannot be said that he was authorized to sign, file or institute the present suit. Ld. counsel submitted that even if this General Power of Attorney is seen, though, that is not proved. It clearly shows that he was authorised only for Haryana i.e. for looking after the affairs of the plaintiff company Ceramic division of Bahadurgarh in the State of Haryana and not for this purpose or for Delhi and CS No. 107/2003 16 of 59 M/s HSIL Limited Vs M/s Champion Ceramic therefore, this Power of Attorney does not serve the purpose, even the resolution has not been proved on record. Minutes books has also not been brought on record. It was for the plaintiff to show that Mr. Mohanty is duly authorized but the plaintiff has failed to show and prove the resolution passed to file for the suit and therefore, the suit is liable to be dismissed. Ld. counsel has also referred to Order 29 Rule 1 CPC which reads as under:
" In suit by or against corporation in pleadings may be signed and citified on behalf of the corporation by the Secretary or by any director or other principal officer of the corporation who is able to depose on the facts of the case".
20. Ld. counsel submitted that in the present case Mr. Mohanty is neither the Secretary nor director nor any other principal officer, therefore, he is not covered under Order 29 CPC. Hence, the specific resolution is required in this regard. Ld. counsel in support of his arguments relied upon the judgment cited as Nibro Limited Vs National Insurance Company 41 (1990) Delhi Law Times 633. Ld. counsel submitted that in this judgment it was held that :
"On the analysis of the judgment, it is clear that under order 29 Rule 1 of the Code of Civil Procedure does not authorise the person mentioned therein to institute suit on behalf of the corporation. It only authorises them to sign and verify the pleadings on behalf of corporation."
CS No. 107/2003 17 of 59 M/s HSIL Limited Vs M/s Champion Ceramic
21. Ld. counsel further relied upon the judgment cited as Birla Dlw Ltd. Vs Prem Engineering Works, 1999, Vol. I, AD Delhi, 739 which is reproduces as under:
" We have perused the Power of Attorney on record as well as the evidence recorded in support thereof. The original Power of Attorney is stated to be executed by Shri. M.D. Poddar in the presence of one Sh. G. K. Sureka. It is based on a Resolution of the Board of Directors dated 14.7.1981. Appellant has neither produced on record the Resolution of the Board of Directors which authorised Sh. M.D. Poddar to execute the Power of Attorney, nor Sh. M.D. Poddar or Shri G. K. Sureka appeared as witnesses to prove the execution of the said Plower of Attorney. Mr. Saraogi, on behalf of the plaintiff, in his statement, did not depose anything about either being familiar with the signatures of Shri Poddar or the said Power of Attorney having been executed by Shri Poddar in his presence. The Power of Attorney having been executed by Shri Poddar in his presence. The Power of Attorney was routinely tendered in evidence and exhibited. The question that comes up for consideration is whether a presumption of its due execution and validity can be raised under Section 85 of the Indian Evidence Act? A division Bench of this Court had occasion to consider this aspect in Electric Construction & Equipment Co. Ltd. Vs Jagajit Works (supra). The Division Bench observed as under:
It is useful to note that Section 85 raises a presumption about the execution of a POA provided two conditions are satisfied. Firstly, it must be executed before a Notary Public and secondly. It must be authenticated by him. In CS No. 107/2003 18 of 59 M/s HSIL Limited Vs M/s Champion Ceramic this case, there is no authentication at all. There is no statement of facts by the Notary Public regarding the manner of execution or the persons executing the document. If reference is made to the judgment cited before us, the contrast is striking. In the case of the City Bank, the authentication made by the Notary Public in New York covers nearly two printed pages of the Report and quotes extensively the circumstances in which the General POA was executed. Similarly, in the case of the National & Grindlays Bank Ltd., the authentication shows that the seal of the Bank was impressed on the POA in the presence of the Notary and the same was the genuine seal of the Bank. Thus, it was the authentication that proved both the execution as well as the due authentication of POA and, therefore, satisfied the test laid down in Sec. 85 of the Evidence Act.
11. We are fully conscious of the observations of the Apex Court in United Bank of India Vs Naresh Kumar & Others (Supra) where suits are instituted or defended on public corporations like Bank, public interest should not be permitted to be defeated on mere technicalities. Further, that procedural defects,s which do not go to the root of the matter, should not be permitted to defeat a just cause. The present case is between two privatet parties, where the appellant had instituted a suit for recovery of an advance of Rs. 31,586/- lent to the respondent together with interest on 2.5.1998. The said suit was dismissed on 4.7.1992 and the present appeal was preferred on 1.9.1992. The appellant was fully conscious of the defects and the short-
comings of his case, specially after the impugned judgment. Yet the appellant took no-steps to file any application on record under Order XLI, Rule 27, CPC for leading CS No. 107/2003 19 of 59 M/s HSIL Limited Vs M/s Champion Ceramic additional evidence to prove either the Power of Attorney or the Resolution of the Board of Directors."
22. Ld. counsel also relied upon the judgment cited as Rob Mathys India Pvt. Ltd. Vs Synthes Ag Chur, 1998, Vol. I RAJ (Recent Arbitration Judgment) 396 (Delhi), which reproduced as under:
" 21...... It is well settled that under Section 29 of the Companies Act except where exprress provision is made that the powers of a company in respect of a particular matter are to be exercised by the company in its general body meeting, in all other cases, the Board of Directors are entitled to exercise its power. The individual directors have only such powers as are vested in them by the Memorandum and articles of Association. However, the question to institute a suit on behalf of a company, having far-reaching effect, is not a technical matter. In often affects policy and finance of the company. Thus unless the power of institute a suit is specifically conferred on a particular Director, he has no authority to institute a suit on behalf of the company. Needless to say that such a power can be conferred by the Board of Directors on any person only by passing a resolution in that regard."
23. Ld. counsel submitted that in view of all these judgments it is clear that simply authorising a person to sign, verify and institute the suit or passing a resolution authorising a person to sign and verify or even under Order 29 Rule 1 CPC a person CS No. 107/2003 20 of 59 M/s HSIL Limited Vs M/s Champion Ceramic who is competent to sign and verify does not serve the purpose unless the company also passes resolution to institute the suit. No such resolution is there in the present case that the suit be filed against the defendant herein. Hence, it can be readily inferred in view of the settled law that the present suit has not been properly institute and on this ground itself the suit is liable to be dismissed.
24. Ld. counsel for the plaintiff submitted that in fact the law is well settled on this aspect that there shall be a resolution to institute a suit authorising a particular director, principal officer of the secretary to institute the suit. Ld. counsel relied upon the judgment cited as Nibro Ltd. Vs National Insurance Company Ltd. 41 (1990) DLT, 633 it has been held :
" The plaintiff has not placed on record any resolution passed by the company authorising Sh. G. Jhajhaaria to institute the suit. Sh. G. Jhajharaia did not come forward to make a statement that he was in a position to depose to the facts of the case. In the plaint signed by him, he claims to be a principal officer and director, but there is no evidence on record to indicate that he h ad the authority to institute the suit. The Memorandum and Articles of Association of the plaintiff company are also not placed on record. Even after the suit was instituted by Shri G. Jhajharia, no resolution was passed by the company ratifying this action. No such decision of the Board of Directors is placed on record in the present case. The plaintiff has examined Shri Ashok Kumar Jhajhaaria. He has placed on record CS No. 107/2003 21 of 59 M/s HSIL Limited Vs M/s Champion Ceramic Ext. PW2/1 which is the resolution of the Board of Directors re-appointing Shri G. Jhajharia as the Director but this resolution does not empower Sh. G.Jhajharia as a Director to institute the present suit. Shri Ashok Kumar Jhajharia has stated that he was handling day to day management of the plaintiff company including the insurance part of it. He however does not state that Mr. O.Jhajharia was handling day to day management or was incharge of the insurance claim."
25. Ld. counsel submitted that from this it is clear that the person in that case who filed the suit was not having any authority to institute the suit but here it has been specifically brought on record by bringing the General Power of Attorney Ex. PW1/5 that Mr. Mohanty was having authority not only to sign or verify but also to institute on behalf of the plaintiff company. Therefore, this judgment is of no help to the defendant. Ld. counsel further submitted that similarly in the other judgment relied upon by ld. counsel for the defendant the Power of Attorney which was placed on record was alleged to have been executed by Mr. Sh. M.D. Poddar in the presence of one Shri G. K. Sureka. It was based on the resolution of Board of Directions dated 14.7.1981 but the appellant in that case has neither produced on record the resolution of the Board of Directors who authorized Sh. M. D. Poddar or Shri G. K. Sureka appeared as witness to prove therefore the court observed that the suit has not been properly instituted but here in the present case the resolution passed by the Board of Directions have CS No. 107/2003 22 of 59 M/s HSIL Limited Vs M/s Champion Ceramic already been proved on record. Ld. counsel submitted that similarly in the another case relied upon the the ld. counsel for the defendant, the said suit was filed by one of the director but he was not having any authority to file but here the suit has been filed by the person who was authorized to file the suit through General Power of Attorney and that the General Power of Attorney was executed in in view of the resolution passed which has been proved on record as Ex. PW1/4. Ld. counsel submitted that therefore the plaintiff has discharged its onus.
26. After hearing arguments and going through the record I found that the requirement of law is that as plaintiff is a company and cannot act of its own and therefore there shall be a resolution in pursuance thereof there shall be execution of Power of Attorney. In this case I found that plaintiff has placed on record one resolution, copy of which is placed on record as Ex. PW1/4. The resolution is dated 24.5.2008. As is evident from the document itself that this resolution was passed in the meeting of corporate affairs committee of the directors of the company held on Saturday, the 24.5.2008 at 12.30 at Bahadurgarh wherein it has been resolved:
"RESOLVED THAT a fresh General Power of Attorney, in cancellation of the existing Power of Attorney duly executed by the Company on 9th November, 2005 in favour of Mr. A. K. Mohanty in the capacity of General Manager CS No. 107/2003 23 of 59 M/s HSIL Limited Vs M/s Champion Ceramic (Personnel), be subsequently granted to him in his capacity as Senior General Manager (Personnel) at Bahadurgarh Unit of Company as per the draft placed before the Committee and initialled by the Chairman for the purpose of identification and the same be issue under the signature of Mr. R. K. Somany or Mr. G. L. Sultania, Directors of the Company and that the Common Seal of the Company be affixed thereto in presence of any one of the above Directors of the Company, who do sign the same in token thereof and the said Power of Attorney be registered with the appropriate authority(ies) in accordance with the provisions of relevant law".
27.From this it is clear that on 24.05.2008 in the board meeting, it was resolved that a Power of Attorney be executed in favour of Sh. A. K. Mohanty in cancellation of the existing Power of Attorney duly executed by the company on 09.11.2005. Meaning thereby Power of Attorney should have been executed in favour of Mr. Mohanty in pursuance to this General Power of Attorney that also under the signatures of Mr. R. K. Somani or Mr. G.L. Sultania, directors of the company and the common seal of the company be affixed thereto. The plaintiff has exhibited the Power of Attorney also which is on page 51 to 56 and is exhibited as Ex. PW1/5 and this Power of Attorney reads as under:
" KNOW ALL MEAN BY THESE PRESENTS that Hindustan Sanitaryware and Industries Ltd, a Company incorporated under the CS No. 107/2003 24 of 59 M/s HSIL Limited Vs M/s Champion Ceramic Companies Act, 1956, and h aving its Registered Office at 2, Red Cross Place, Calcutta- 700 001, hereinafter referred to as "the said Company"
SEND GREETINGS:
WHEREAS the said Company at a meeting of its Directors held on 30.10.1999 at A RITUAL, the Oberoi, Dr. Zakair Hussain Marg, New Delhi, Resolved to appoint Shri A. K. Mohanty, presently working as the Dy. General Manager (Personnel) at the Company's Coramic Division-I at Bahadurgarh (Haryana) by religion Hindu, by occupation service-holder and residing at Bahadurgarh, as its true and lawful attorney for looking after the affairs of the said Company's Ceramic Division at Bahadurgarh, in the State of Haryana as hereinafter mentioned".
28. It is important to note that this Power of Attorney was executed on 16.11.1999. No other Power of Attorney has been proved on record. No other Power of Attorney or Resolution has been proved on record by the plaintiff. Now from it, it is clear that Power of Attorney which has been proved on record as Ex. PW1/5 has been executed in pursuance to the resolution passed in the meeting held on 30.10.99 which has not been proved on record and the Power of Attorney executed in pursuance to the Resolution passed on 24.05.2008 has also not been placed on record. Besides that according to the judgment cited as State of Tr.. Vs .. India Pvt. Ltd., it was necessary that the Resolution passed in meeting of Board of Directors delegating its power to Sh. G. L. Sultania authorizing CS No. 107/2003 25 of 59 M/s HSIL Limited Vs M/s Champion Ceramic him to execute the Power of Attorney and institute the suit should have been proved but no such resolution has been placed on record. The rectification could have been there about the act of signing, verifying and institution of the suit on Sh. A. K. Mohanty but no such document has been placed on record that the company has rectified act done by Mr. Mohanty, therefore, in my opinion plaintiff has failed to prove and establish that the suit has been signed, verified and instituted by the duly authorized person after getting the authority from the company. So far as the order 29 CPC is concerned that also does not come to the rescue of the plaintiff as that only authorize to sign, verify and institute but not the authority to take decision to file the suit against the defendant, even otherwise it is not the case of the plaintiff that he is one of the person competent u/O 29 CPC to sign, verify and institute. The onus was upon the plaintiff to prove and establish the same which the plaintiff has failed. Therefore, keeping in view the judgment cited as, in my opinion the plaintiff has failed to discharge the onus on this point. The issue is therefore decided against the plaintiff and in favour of the defendant. ISSUE NO.2
29. Ld. counsel for the defendant submitted that plaintiff has whimsically and arbitrarily fixed the valuation for the purpose of court fee and jurisdiction only to clothe this court with jurisdiction. Ld.counsel submitted that in para no.21 (c) of the CS No. 107/2003 26 of 59 M/s HSIL Limited Vs M/s Champion Ceramic plaint the plaintiff has mentioned that :
" 21. (c). For an order for rendition of accounts of profits earned by the defendant, it is valued for the purposes of Court fee and jurisdiction at Rs. 5,01,000/- as the plaintiff estimates that such an amount shall be found due to the plaintiff from the defendant on rendition of accounts having been gone into. The plaintiff undertakes to pay such additional Court fee as it may be directed by this Hon'ble Court on the defendants rendition of accounts and on ascertainment of the actual amount due to the plaintiff. The value of the suit for the purposes of court fee is Rs. 1000/-. The Court fee paid is Rs.150/-. For purposes of jurisdiction, the value of the suit is 5,02,000/-".
30. Ld. counsel submitted that the sale figure of the plaintiff given in the suit are also available which shows that it is sale turn over in crores and doing its business for the last so many decades, therefore, it is clear that plaintiff has arbitrarily and whimsically valued the suit and in fact should have filed the court fee at least on the valuation assessed by him and not only Rs. 150/-. Ld. counsel in support of his arguments relied upon the judgment cited as Maiden Pharmaceuticals Ltd. Vs Wockhardt Ltd. 157 (2009) Delhi Law Times 65 (DB), Delhi High Court wherein it has been held that:
"52. Therefore, under the circumstances, we find that respondent/plaintiff has arbitrarily and whimsically undervalued the suit for the purposes of Court fees. Even otherwise if the suit is valued at Rs. 20 lakh and above for the purpose of jurisdiction then in our view Court Fees at least on such valuation has to be paid CS No. 107/2003 27 of 59 M/s HSIL Limited Vs M/s Champion Ceramic on the basis of such evaluation. An amount of Rs. 20 lacs is estimated to be founded due to it on accounts being rendered. In the present case, the plaintiff has fixed valuation for the purposes of jurisdiction at Rs. 20 lacs with the sole objective of confer jurisdiction on this Court as this court will have pecuniary jurisdiction only if the valuation of the suit for the purposes of jurisdiction is above Rs. 20 lacs, whereas in normal course, in view of Section1 5 of the Code of Civil Procedure, the pecuniary jurisdiction would lie with the District Judge. This is a peculiar circumstance which has arisen in Delhi as most of other High Court in the country do not have original side jurisdiction and such like suits are files in the Court of District Judge only. Another feature which we have noticed in that such disputes as to Court fees are frequently raised in I.P.R. Litigation mainly by corporations having turnover in crores and occupy valuable time of the court in this avoidable controversy on Court fees. We are also of the view that once the Single Judge finds that Whimsical and arbitrary averments to avoid payment requisite Court fees have been made, henceforth deterrent costs may be imposed on such litigants."
31. Ld. counsel also relied upon the judgment cited as Pfizer Products INC Vs B.L. and Co. & Ors. 129 (2006) Delhi Law Times 327 wherein it is held that:
"12. .........In the present case, the plaintiff himself has valued the turn over into thousands of crores and claims damages for infringement of the trade mark of the plaintiff and passing of. These damages have not been quantified but accounts have been claimed from the defendants for allegedly CS No. 107/2003 28 of 59 M/s HSIL Limited Vs M/s Champion Ceramic using the trade marks improperly and making profits to the detriment of the plaintiff. With such reputation world-wide and the grievance of the plaintiff, it can hardly be stated that the amount which would be found due on rendition of accounts can be said a meagre amount as alleged of Rs. 5,00,050 for purposes of Court fees. The most material fact is that for purposes of suit valuation, the plaintiff in para 42 himself has stated that it is expected that at the time of rendition of accounts the plaintiff shall be entitled to an amount in excess of Rs. 50,00,000/-. This is not only a hope but is based on the turnover of the plaintiff running into thousands of crores. Thus finding in para 24 of the judgment in M/s Commercial Aviation & Travels Vs Vimla Pannalal case (supra) would of little assistance to the plaintiff.
13. I am of the considered view that the valuation for purposes of Court fee made by the plaintiff is clearly arbitrary and the court has reasonable material to come to the conclusion, especially in view of the averment of the plaintiff himself based on his own sales figures, that amount in excess of Rs. 50,00,000/- would be due and payable the plaintiff on rendition of accounts, if the plaintiff succeeds in the suit. Plaintiff is thus required to pay Court fee on the amount of Rs. 50,00,050/-."
32. Ld. counsel submitted that in view of the settled position the suit of the plaintiff is liable to be rejected as he has not valued it properly.
33. Ld. counsel for the plaintiff submitted that plaintiff has value it properly. Plaintiff has specifically mentioned that he is CS No. 107/2003 29 of 59 M/s HSIL Limited Vs M/s Champion Ceramic valuing the suit for the purpose of court fee and jurisdiction as Rs. 501000/- as the plaintiff estimates this amount shall be found to be due to the plaintiff from the defendant but personally he is paying the court fee only Rs. 150/-, 1000/-, however, he is ready to pay the balance if the court comes to the conclusion and ascertain of the actual amount to the plaintiff. Ld. counsel in support of his argument relied upon the judgment cited as Ferner India Ltd. Vs Salbros Enterprises Ltd. 67 (1997) DLT 673.
34. After hearing the arguments and going through the record I found that Section 7 of the Court Fee Act regularize the computation of Court Fee payable in certain suits and Section 7 so far as relevant for the purpose reads as under:
" for accounts -(f) accounts- according to the amount at which the relief is sought is valued in the plaint and Memorandum of Appeal, In all such suits the plaintiff shall stated the amount at which he valued relief sought."
Section 8 provides that the value of suit for determination of the court fee and jurisdiction shall be the same.
35. Section 7 and 8 clearly give liberty to the plaintiff to value its suit for the purpose of jurisdiction and court fee. When plaintiff claims rendition of account in the nature of passing off then it is consequent upon the breach of infringement of the trade mark, he can sue only for undelivered amount as there CS No. 107/2003 30 of 59 M/s HSIL Limited Vs M/s Champion Ceramic may be rendition of account of the party even after the institution of the suit. Plaintiff in suit claims his rights alleging that the same has been infringed consequent upon he seeks for rendition. Under the circumstances, in the Fenner India Ltd. Vs Salbros Enterprises Ltd. 67 (1997) DLT 673, the Devision Bench of Delhi High Court held that he may fix it for the un- settled accounts but it has to be seen that the same valuation shall not be whimsical and arbitrary. In the present case he estimates that he may be entitled to amount of Rs. 5,01,000/- but it is only an estimation and on the amount of 1,000/- he has paid the court fee mentioning that he is ready to pay the court fee to ascertain the actual amount due to the plaintiff, therefore, under the circumstances, in my opinion, it cannot be said that plaintiff has not valued the suit property for the purpose of court fee and jurisdiction. The issue is decided in favour of plaintiff and against the defendant.
ISSUE NO.3
36. Ld. counsel submitted that plaintiff is a registered company carrying on its business throughout India and is dealing in sanitaryware. The plaintiff has alleged in para no.20 that the defendants are carrying on their business activity in Delhi and are infringing, passing off their goods in Delhi. The defendants are marketing their goods in Delhi in a Calandestine and surreptitious manner and therefore this Hon'ble Court has territorial jurisdiction to entertain and adjudicate the present CS No. 107/2003 31 of 59 M/s HSIL Limited Vs M/s Champion Ceramic suit. Ld. counsel submitted that trade mark of the plaintiff is duly registered with the Registrar of trade marks at New Delhi and the document in this regard is Ex. PW1/8. Ld. counsel submitted that even otherwise the defendant does not dispute the averments made by the plaintiff in the plaint about the infringement of the trade mark in Delhi and therefore this court has jurisdiction. Ld. counsel submitted that in written statement the defendant has denied all other averments remained silent with respect to the infringing and passing over their goods in Delhi. Ld. counsel submitted that under the circumstances when the defendant is not denying the averments that portion of pleading shall be treated to be admitted. Ld.counsel further submitted that for filing the suit for injunction is it is not necessary that infringement shall be caused even a threatened sale gives rise to the jurisdiction. Ld.counsel submitted that defendant is not denying that he is not selling the goods in Delhi or he will not sell, rather he is admitting that he is selling the goods all over India. All bills placed on record shows that his goods are sold in Chandigarh, in Orissa, in Karnataka. Rather he states that if any customer from Delhi approaches he will deal with him. Therefore, he is not denying that he will not sell his goods in Delhi. The defendant is also having a interactive website which can be assess in Delhi and therefore, Delhi court also has the jurisdiction. Ld.counsel further submitted that according to the Trade & Merchandise Marks CS No. 107/2003 32 of 59 M/s HSIL Limited Vs M/s Champion Ceramic Act, 1958 Suit for infringement, et., to be instituted before District Court- No suit-
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any court interior to a District Court having jurisdiction to try the suit.
As no specific provisions has been provided in this case, therefore, CPC will follow i.e.Section 20 and Section 20 provides that, "Other suits to be instituted where defendants reside or cause of action arises- Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction-
(a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or
(b) Any of the defendants, where there are more than one, at the time of the commencement of the suit actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case wither the leave of the Court is given, or the defendants why do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution:
or
(c) the cause of action, wholly or in part, arises.
CS No. 107/2003 33 of 59 M/s HSIL Limited Vs M/s Champion Ceramic Ld.counsel submitted that here infringement has taken place in Delhi, therefore, Delhi court also has the jurisdiction.
Ld.counsel in support of his arguments relied upon the judgment cited as Casio India Co.Ltd. Vs. Ashita Tele Systems Pvt.Ltd. Vs. Ashita Tele Systems Pvt.Ltd. 2003(27) PTC 265 (Del), wherein it was held that, "The suit relates to an action of passing off in respect of a domain name of a website. The suit is not in respect of any allegation of any clandestine specific sale of tangible products within the territory. The defendant No.1 admits the sale of CASIO products through the website. It is also not denied that the website can be accessed from Delhi.
Once access to the impugned domain name website, could be had from anywhere else, the jurisdiction in such matters can not be confined to the territorial limits of the residence of the defendant. Further more in a passing off action it is not incumbent upon the plaintiff to prove any actual sale or any particular act of deception, mere likelihood of deception, whereby an average person is likely to be deceived or confused is sufficient to entertain an action for passing off. Therefore, it is not at all required to be proved that any actual deception took place at Delhi.
Accordingly the fact that the web-site of defendant no.1 can be accessed from Delhi is sufficient to invoke the territorial jurisdiction of the Delhi High Court.
Accordingly, the objections with regard to the territorial jurisdiction is without merit and this Court can try and entertain the suit".
Pfizer Enterprises Sari Vs. Cipla Ltd. 2009 (39) PTC 358 (Del) (DB), wherein it was held that, CS No. 107/2003 34 of 59 M/s HSIL Limited Vs M/s Champion Ceramic "Section 134(1) - Territorial jurisdiction - If the plaint discloses that the defendant has violated the plaintiff's Trademark or Copyright in a particular place, the cause of action would arise therein".
Bhatia Industries & Others Vs. Pandey Industries & Others, 2011 (45) PTC 343 (Del), wherein it was held that, "Defendant passing off their goods as that of plaintiff in Delhi, therefore, Delhi court has the jurisdiction"
Plaintiff also relied upon the judgment cited as Banyan Tree Holding (P) Ltd. Vs. A Murali Krishna Reddy & Another, 2010(42) PTC 361 (Del) (DB) and LG Electonics India Pvt.Ltd. Vs.Bharat Bhogilal Patel & Others 2012 (51) PTC 513 Delhi.
37. Ld.counsel for the defendant submitted that cause of action which has been replied by the defendant as under:
"That the contents of para 20 of the plaint are wrong and are denied. This Hon'ble Court does not have the territorial jurisdiction to entertain and adjudicate upon this suit. The defendant is actually and voluntarily residing, carrying on business and personally working for gain in the State of Gujarat. No cause of action has arisen within the territorial jurisdiction of this Hon'ble Court. The defendant states that he has never appointed any Distributor, wholesaler, retailer, agent etc. for goods being manufactured by him within the territorial jurisdiction of this Hon'ble Court, either prior to the institution of the present suit or even till date. The goods being manufactured by the defendant are not available anywhere within the territorial jurisdiction of this CS No. 107/2003 35 of 59 M/s HSIL Limited Vs M/s Champion Ceramic Hon'ble Court. The defendant has never sold its products within the territorial jurisdiction of this Hon'ble Court at any point of time. It is wrong and denied the defendant is marketing his goods in Delhi in a clandestine and surreptitious manner. It is wrong and denied that the alleged registration of the plaintiff's mark at Delhi confers territorial jurisdiction upon this Hon'ble Court to try and entertain the present suit. It is further wrong and denied that the defendant has advertised his products in trade magazines having circulation in Delhi. The plaintiff has made bald allegations without disclosing the name of any such trade magazine".
Ld.Counsel submitted that admittedly defendant is working for gain in State of Gujarat, where he is actually and voluntarily residing and defendant has specifically stated that he has never appointed any distributor, wholesaler, retailer, agent etc.for goods being manufactured by him within the territorial jurisdiction of this court. He has also stated that his goods are not available within the territorial jurisdiction of this court at any point of time. It is also denied that he is marketing his goods in Delhi, therefore, this court has no territorial jurisdiction. Ld.Counsel submitted that even on the basis of the interactive website the cause of action will not arise as there is no evidence on record that by opening the interactive website, any person from Delhi has contacted the defendant or placed any order, therefore, no cause of action had arisen within the territorial jurisdiction of this court and hence this court has no jurisdiction to entertain the suit. Ld.counsel in support of his CS No. 107/2003 36 of 59 M/s HSIL Limited Vs M/s Champion Ceramic arguments relied upon the judgments cited as K.Narayanan & Anothers Vs. S.Murali AIR 2008 SC 3261, wherein it was held that, "A cause of action will arise only when a registered trade mark is used and not when an application is filed for registration of the Trade mark".
Dhodha House Vs.S.K.Maingi 2006 (9) SCC 41, wherein it was held that, "A cause of action will arise only when a registered trade mark is used and not when an application is filed for registration of the trade mark. In a given case, an application for grant of registration certificate may or may not be allowed. The person in whose favour a registratin certificate has already been granted (sic) indisputably will have an opportunity to oppose the same by filing an application before the Registrar, who has the requisite jurisdiction to determine the said question. In other words, a suit may lie where an infringement of trade mark or copyright takes place but a cause of action for filing the suit would not arise within the jurisdiction of the court only because an advertisement has been issued in the Trade Marks Journal or any other journal, notifying the factum of filing of such an application."
P.M.Diesel Ltd.Vs. Patel Field Marshall Inds.2009 (3) RAJ 399 (Del), wherein it was held that, "A bald assertion unsupported by any document regarding sale of goods bearing impugned trade mark by defendant in Delhi does not confer jurisdiction".
A.V.R. Engineers Vs.Sharma Moulding Works & Others, CS No. 107/2003 37 of 59 M/s HSIL Limited Vs M/s Champion Ceramic 2009 (6) R.A.J. 617 (Del), wherein it was held that, "By virtue of provisions of these Acts there are following Fora where disputes can be adjudicated- First, the place at which the defendant actually and voluntarily resides or carries on business - Second, the place at which the cause of action, wholly or in part arises - Lastly, by an amendment to the Copyright Act and the Trade Marks Act, the suit can be instituted at the place where the plaintiff resides and carries on business".
Lilly Icos LLC Vs. Richie Labourtories Ltd. 2009 (41) PTC 297 (Del), wherein it was held that, "The mere fact that a website is accessible in a particular place may not itself be sufficient for the Courts of that place to excercise personal jurisdiction over the owners of the website. However, where the website is not merely passive but is interactive permitting the users not only to have access to the contents thereof but, also subscribe to the services provided by the owners/operators, may in certain circumstances create jurisdiction in the Court of that place where the website is accessible. Where the website is interactive, the level of interactivity becomes relevant and in cases of limited interactivity such interactivity may not be sufficient for a court to exercise jurisdiction."
38. After hearing arguments and going through the record and also the judgments relied upon by both the parties, I found that so far as the legal preposition laid down in the judgments are concerned, there can not be any dispute. But it is to be seen in the facts and circumstances of the present case as to whether any cause of action had arisen within the territorial CS No. 107/2003 38 of 59 M/s HSIL Limited Vs M/s Champion Ceramic jurisdiction of this court. It is a settled law that merely by filing of an application for registration of trade mark will not give rise to any cause of action. The plaintiff has alleged that an advertisement appeared in the trade mark magazine from where they came to know about the infringement of there trade mark in Delhi but that magazine has not been placed on record. Even from this fact also the jurisdiction can not be conferred. Ld.counsel for the plaintiff has submitted that as there is interactive website, therefore it can be assessed from any where including Delhi and therefore, Delhi court also has the jurisdiction. In my opinion this argument does not carry any weight because in that situation the suit can be filed any where. In my opinion unless it is shown that some internet user located within the territorial jurisdiction of this court has assessed the site and entered into some transaction, the same can not conferr the jurisdiction. In the present case no such evidence has been placed on record and hence in my opinion in view of the judgment in Banyan Tree Holding Pvt.Ltd (Supra), this does not conferr the jurisdiction. In the present case plaintiff has alleged that defendant is infringing their trade mark 'Hindware"
and seeking injunction that defendant be restrained. The fact that defendant is using trade mark "HIMWARE" is not disputed and defendant also does not say that he will not sell his product, in Delhi or within the territorial jurisdiction of this court. Rather he has specifically stated that if any customer from CS No. 107/2003 39 of 59 M/s HSIL Limited Vs M/s Champion Ceramic Delhi approached him he will deal with him, therefore, there is any impeading threat of the infringement of the trade mark of the plaintiff by the defendant within the territorial jurisdiction of this court. The injunction can not be claimed only after an Act has already been done but even to prevent the infringement in my opinion, this court got the jurisdiction particularly when the defendant is claiming that he is having good reputation all over India and is selling the goods in whole of India and is also not a averse to having business in Delhi. The record shows that infact defendant is already supplying his goods all over India from Gujrat. The witness of plaintiff has specifically stated that goods are as sale in Delhi which is not specifically denied. Keeping in view all these facts, the issue is therefore decided in favour of the plaintiff and against the defendant that this court has the jurisdiction.
ISSUE NO.4
39. Ld.counsel for the plaintiff submitted that in the present case admittedly plaintiff is having the trade mark H-VITREOUS HINDWARE registered in its name. The registration certificate issued in favour of the plaintiff registered with the concerned authority is on record as Ex.PW1/8. It was issued on 16.5.90 which clearly shows that trade mark "H-VITREOUS HINDWARE" is registered in the name of the plaintiff. Ld.counsel submitted that HINDWARE is an essential part of the trade mark. Ld.counsel submitted that the trade mark which CS No. 107/2003 40 of 59 M/s HSIL Limited Vs M/s Champion Ceramic is registered in the name of the plaintiff was adopted by the plaintiff in respect of the goods i.e. Sainitarywares and Installations for water supply. This trade mark HINDWARE was adopted and coined in the year 1990. The word "HIND" was taken from the Ist part of the plaintiffs trading style i.e. HINDUSTAN while the word "WARE" was taken from the trading style, namely the sanitaryware. The said trade name "HINDWARE" has been used in conjunction with the words H- VITREOUS since year 1990. The plaintiff is honestly, bonafidely and commercially using this and is the exclusive user of the same to the exclusion of others in the course of trade since its adoption till present time and is proprietor thereof. The registration of the trade name in the name of the plaintiff Ex.PW1/8 has been renewed from time to time and is legal, regular and still subsisting in law by virtue of said registration . The plaintiff has got the exclusive right to the trade marks as provided under Sec.28 & 29 of the Act. Ld.counsel submitted that so far as the trade mark of the defendant HIMWARE is concerned he has started using it 2001 and after the trade name HINDWARE was adopted and coined by the plaintiff. Ld.counsel submitted that the defendant has adopted this trade mark knowing fully well about the trade mark of the plaintiff. This adoption of trade mark "HIMWARE" is not a coincidence but deliberate attempt as defendant was knowing the good will and popularity of trade mark "HINDWARE" and CS No. 107/2003 41 of 59 M/s HSIL Limited Vs M/s Champion Ceramic that is why it is so deceptively similar. Hindware is a dealer trade mark is admitted by the defendant. He himself admitted that in the year 1999 the plaintiff was using the trade mark H- VITREOUS HINDWARE and was well known in India. Defendant is not the proprietor of HIMWARE. It is not registered. The fact that the two trade names are i.e.HINDWARE" and "HIMWARE" are deceptively similar is admitted by the defendant when he filed the objections to the application for registration for the plaintiff which is Ex.DW1/P6, wherein the defendant himself has admitted that the trade mark in question is composite in character but its essential feature is HINDWARE and it is mentioned that the mark under the impugned application is identical with or deceptively similar. to the various trade marks containing the words HINDWARE in respect of various goods that is the reason the mark under the impugned application is prohibited within the meaning of Section 11 and in para 14. They have mentioned that the mark sought to be registered as it is not entitled to protection in the court of law. The user of the mark in respect of the goods for which it is sought to be registered will amount to misleading trade description and shall result in passing off, applicants have adopted the impugned trade mark "HINDWARE" with the dishonest intention of passing of their goods as goods associated with others including government. ld.counsel submitted that these objections were filed by the defendant CS No. 107/2003 42 of 59 M/s HSIL Limited Vs M/s Champion Ceramic herein and they themselves admitted that the trade mark of the plaintiff is identical with and deceptively similar with their trade mark. Admittedly the plaintiff is the prior proprietor of the trade mark then the defendant. Ld.counsel submitted that the bills which the plaintiff has placed on record show that he is selling the goods by using the trade mark H-VITREOUS HINDWARE are placed on record which are Ex.PW2/3 and the first bill is of 10.05.97 showing that in any case he has started selling the goods by using this trade mark in 1997 and there are various bills in this regard. Ld.counsel submitted that plaintiff has also placed on record the other documents showing that there are registration of associated trade marks as mentioned in the trade mark registration no.529824 that it is a associated with trade mark no.529823. Similarly trade mark 608202 which is with respect to "HINDWARE" is also shown to be associated with 529824. Ld.counsel submitted that as now "HINDWARE" is separately registered in favour of the plaintiff, therefore, the plaintiff is entitled to the exclusive user of the same. ld.counsel submitted that according to Sec.16 of the Trade Mark Acts provides that such associated trade marks are registered in the name of proprietor then no other person can be allowed to use that trade mark which is likely to deceive or cause confusion. Ld.counsel submitted that in the present case as all these were listed as associated trade mark, therefore, plaintiff is entitled to the protection of the same. Ld.counsel submitted that here it CS No. 107/2003 43 of 59 M/s HSIL Limited Vs M/s Champion Ceramic has to be seen that it is not only the phinetic similarity but the ocular similarity is also there. Ld.counsel submitted that admittedly there is a fanatic similarity between HINDWARE and HIMWARE. But it is not necessary that for a case of infringement there shall be even ocular similarity between two marks. Ld.counsel submitted as H-VITREOUS and HINDWARE are separately registered and "HINDWARE" is an essential feature of trade mark of the plaintiff, therefore, the defendant can not be permitted to infringe the same. Ld.counsel in support of his arguments relied upon the judgment cited as Kaviraj Pandit Durga Dutt Sharma Vs Navratna Pharmacetical Laboratories, AIR 1965, SC 980 wherein it is held that :
"The suit relates to an action of passing off in respect of a domain name of a website. The suit is not in respect of any allegation of any clandestine specific sale of tangible products within the territory. The defendant No.1 admits the sale of 'CASIO' products through the website. It is also not denied that the website can be accessed from Delhi".
Ld.counsel further relied upon the judgment cited as Himalaya Drug Co.Vs. S.B.L.Ltd. 2013(53) PTC , Hitachi Ltd. Vs. Ajay Kumar Aggarwal, 1996 (16) PTC 262 (DB) (Del), wherein it was held that:
" The test of infringement is that the Rival marks are to be compared as a CS No. 107/2003 44 of 59 M/s HSIL Limited Vs M/s Champion Ceramic whole where two rival marks are identical, it is not necessary for the plaintiff to prove further that the use of defendant's trade mark is likely to deceive and cause confusion."
Ld. counsel further relied upon the judgment cited as Century Traders Vs. Roshan Lal Duggar & Co. AIR 1978 DELHI 250 wherein it has held that :
" In an action for passing off in order to succeed in getting an interim injunction the plaintiff has to establish user of the mark prior in point of time than the impugned user by the defendants. The registration of the mark or similar mark prior in point of time to u ser by the plaintiff is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry does not prove its user by the persons in whose name the mark is registered and is irrelevant for the purposes of deciding the application for interim injunction unless evidence has been led or is available of user of their registered trade mark. ILR (1976) 1 Delhi 278 and AIR 1965 Bom 35 and AIR 1960 SC 142, Relied on;
Order D/- 30-9-1976 (Delhi) in Suit No. 381 of 1976, Reversed".
Ld. counsel further relied upon the judgment cited as Prince Rubber Industries Vs. K.S.Rubber Inds. 183 (3) PTC 34 (Del) wherein it has held that " Held: Copyright Act and the Trade and Merchandise Marks Act are two CS No. 107/2003 45 of 59 M/s HSIL Limited Vs M/s Champion Ceramic distinct statutes envisaging distinct right and liabilities. While copyright can be claimed in original literary, dramatic, artistic work etc. under the Trade and Merchandise Marks Act, the registered proprietor of a trade mark is entitled to exclusive user of the distinctive mark.
As the trade mark complained of is similar to the plaintiff's trade mark of plaintiff as a right prima facie to ask for a restraint order against the defendant even if the defendant as a copyright of its artistic work and accordingly interim injunction restraining the defendant from u sing their trade mark 'JHANKAR' and the lable or any other deceptively similar mark or lable so as to create confusion and deception is granted. However this injunction shall not apply to use the word 'JHANKAR' so long as it is used in any other form or on any other lable."
Ld. counsel further relied upon the judgment cited as Kirorimal Kashiram Mktg & Agencies Pvt.Ltd. Vs. Shree Sita Chawal Udyog Mill Tolly 2010 (44) PTC 293 (Del) (DB) wherein it has held that:
"Infringement- Appellants mark DOUBLE DEER- Registered trade mark with figure of two deers facing each other- Respondent using GOLDEN DEER- Both selling same goods i.e. Rice- Single Judge refused injunction stating that labels and devices of two trade marks are different and therefore do not result in confusion; delay and laches; third party users of mark DEER therefore common to trade- Held: Single Judge fallen into error in declining grant CS No. 107/2003 46 of 59 M/s HSIL Limited Vs M/s Champion Ceramic of interim injunction-adoption of respondent not honest- Appellant was prior user of the registered mark- not permissible to copy prominent part of registered mark when adoption of mark is arbitrarily adopted with respect to the product in question- Injunction granted."
Ld. counsel further relied upon the judgment cited as Amar Singh Chawal Wala Vs. Shree Vardhman Rice and Genl.Mills. 2009 (40) PTC 417 (Del) (DB) wherein it has held that:
"Order 39 Rules 1 & 2- Permanent injunction- Apeal- Trade marks in the device of QILLA, the words GOLDEN QUILLA (word per se), LAL QILLA CHAPP ( word per se), LAL QILLA (word and device mark) and the same device in terms of depiction of a fort, failed to show as to how it got inspired to use those words- Plea of honest concurrent use not acceptable- Plaintiff has made out a prima facie case for grant of injunction- Mere fact that the present appeal was pending for over 12 years does not make a difference-
Defendants restrained from using trade mark HARA QILLA or the device of QILLA or any similar mark".
40. Ld.counsel further submitted that so far as the registration of "HIMWARE" under Copyright Act is concerned that does not effect the trade mark as that is only an artistic representation i.e.creation of the defendant but that can not over ride the trade mark which is registered in the name of the CS No. 107/2003 47 of 59 M/s HSIL Limited Vs M/s Champion Ceramic plaintiff as if that is permitted then by getting a copy right registered anybody can say that he is having a copy right. Ld.counsel submitted that trade mark is distinct from the copy right and having a copy right can not confer a right upon the person having registration of copy right to infringe the trade mark. Ld. counsel submitted that plaintiff has discharged the onus and the issue be decided in favour of plaintiff.
41. Ld.counsel for the defendant submitted that there is no similarity between the two trade marks either visible or phonetically or structurally. Ld. counsel submitted that the trade mark of the plaintiff is H- VITREOUS, "HINDWARE" whereas VITREOUS is written in capitals in the middle bar of letter 'H'. The word "HINDWARE" cannot be monopolized by the plaintiff since the word "HIND" is taken from Hindustan the geographical name of our country India and the word "WARE" is taken out from the word Sanitaryware which is common trade name neither coined nor invented by plaintiff. Therefore, the plaintiff cannot be permitted to monopolize the same. It is further submitted that the trade mark of the plaintiff is conjunction of two words i.e. HINDWARE along with VITREOUS written in between capital 'H' where as the trade mark of the defendant is "HIMWARE" where in HIM is taken from snow and WARE is common trade name there is no similarity between the trade mark of the plaintiff and the CS No. 107/2003 48 of 59 M/s HSIL Limited Vs M/s Champion Ceramic defendant as anybody can distinguish between the trade name "H- VITEROUS HINDWARE" and "HIMWARE". Ld. counsel submitted that the case of the plaintiff is that the plaintiff is proprietor of the said trade mark "H-VITEROUS HINDWARE". In para no. 8 of plaint also the plaintiff has specifically mentioned that the trade mark of plaintiff is H-VITEROUS with HINDWARE which is duly registered. Ld. counsel submitted that according to Section 17 of the Trade Marks Act which reads as under:
"17. Effect of registration of parts of a mark- (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.
(2) Notwithstanding anything contained in sub-section (I1), when a trade mark-
(a) contains any part-
(i) which is not the subject of a separate
application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-
distinctive character the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.
29. Infringement of registered trade marks- (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the CS No. 107/2003 49 of 59 M/s HSIL Limited Vs M/s Champion Ceramic trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under the clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
CS No. 107/2003 50 of 59 M/s HSIL Limited Vs M/s Champion Ceramic (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he-
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, which he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee. (8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character, or
(c) is against the reputation of the trade mark.
(9) Where the distinctive element of registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their CS No. 107/2003 51 of 59 M/s HSIL Limited Vs M/s Champion Ceramic visual representation and reference in this section to the use of a mark shall be construed accordingly."
42. From Section 17 and Section 29 of the Trade Marks Act, 1999 it becomes apparently clear that according to Section 17 for the purpose of infringement the entire trade mark as a whole has to be considered for the purpose of considering if there is any infringement or not. Ld. counsel submitted that if the trade mark of plaintiff is read in whole, it makes clear that the use of "HIMWARE" by the defendant in no way infringes the trade mark of the plaintiff. Ld. counsel submitted that so far as the arguments by the plaintiff that the trade mark "HINDWARE" is also now registered that evidence cannot be taken as any evidence beyond pleading is not admissible under law. Ld. counsel in support of his arguments relied upon the judgment cited as State Bank of India and others vs S.N. Goyal (2008) 8 Supreme Court Cases 92. Ld. counsel submitted that those certificates were not even pleaded and therefore cannot be looked into. On the other hand, defendant is having his name HIMWARE registered under the Copyright Act and that certificate is proved on record as Ex. DW1/1. Visually the trade mark of the plaintiff and defendant is totally different when it is taken in totality even then those are totally different and therefore there is no infringement as alleged. Ld. counsel in support of his arguments relied upon the judgments cited as CS No. 107/2003 52 of 59 M/s HSIL Limited Vs M/s Champion Ceramic Carlsberg India Pvt. Ltd. Vs Radico Khaitan Ltd, 186 (2012) Delhi Law Times 368 (DB), Delhi High Court; Rich Products Corporation & Anr. Vs Indo Nippon Food Ltd, 2010 III AD (Delhi) 687 CS (OS) No.246/2004; Gufic Ltd. & another vs Clinique Laboratories, Llc & Anr, 2010 (43) PTC 788 (Del.) (DB); and Super Cassettes Industries Ltd. Vs Union of India & Ors, 2010 VIAD (Delhi)76 W.P. (C) 1263/2005. Ld. counsel submitted that in view of law settled, the plaintiff is not entitled to any relief. Ld. counsel further submitted that even otherwise the plaintiff has filed another suit against the present defendant with respect to his trade mark "HINDWARE" in the Hon'ble High Court and therefore it is clear that he is not praying here only for the infringement of "HINDWARE" which is also not pleaded but he was praying for infringement of his trade mark "H- VITEROUS HINDWARE". Ld. counsel submitted that there is no similarity phonetically, visually or structurally in the two trade marks and prayed that plaintiff is not entitled to any relief as prayed.
43. Ld. counsel for the plaintiff submitted that so far as the contention that he has already filed another suit it is admitted fact that plaintiff has filed another suit but as that suit has been filed on different cause of action, therefore, the same does not effect the same and the plaintiff is within his right to file the suit.
44. After hearing the arguments and going through the CS No. 107/2003 53 of 59 M/s HSIL Limited Vs M/s Champion Ceramic record, I found that it is well settled principle of law that evidence which has been brought on record beyond the pleadings cannot be seen. However court can always take note of the subsequent development which are necessary for just adjudication. It is also not required that pleading be amended for this purpose. In the present case, the plaintiff has alleged that he is proprietor of the trade mark "H-VITEROUS HINDWARE" which has been duly registered under the Trade and Merchandise Act, 1958 vide trade mark registration no. 529823 'B' in clause 11 on 16.5.1990, that has been proved on record as Ex. PW1/8. This certificate clearly shows that the trade mark is "VITEROUS" in capital letters written along with the middle part of capital letter 'H' and "HINDWARE" again in capital letter written at the bottom of letter 'H'. The plaintiff has nowhere alleged that he has applied for registration trade mark "HINDWARE" separately. During the pendency it was registered in his name. The plaintiff has filed another suit for infringement of the same but as that was filed as separate cause of action, therefore, Order II Rule 2 for that reason does not hit as it is not the case of the defendant that all material facts and cause of action are same in both the cases. The plaintiff is having the registered trade mark "H-VITEROUS HINDWARE" admittedly and trade mark of the defendant is "HIMWARE" which is not registered. Plaintiff has alleged that defendant has infringed its trade mark by "HINDWARE"
CS No. 107/2003 54 of 59 M/s HSIL Limited Vs M/s Champion Ceramic knowing very well that it is deceptively similar to the trade mark of the appellant. It is admitted fact that "HINDWARE" is the essential part of trade mark of the plaintiff as admitted by the defendant himself which is also case of the plaintiff. The fact that it is essential part of the trade mark of the plaintiff is admitted in the document Ex. DW1/P-6 in para 7, though it is admitted that the trade mark is " H-VITREOUS HINDWARE"
but its essential feature is "HINDWARE". Now the question is whether "HINDWARE" being part of "H-VITREOUS HINDWARE" is entitled to protection. In my opinion the essential feature of Trade Mark or prominent features are to be considered the case of the Trade Mark. The identification of an essential feature depends partly upon the court's own judgment and partly upon parties. But if the defendants' Mark contains the prominent and essential feature of trademark of plaintiff than it tantamounte to infringment. For finding out the same it is not necessary that one mark is to be seen by superimposing upon other the overall impression has to be seen. The identification here also if we compare the two "HINDWARE"
and "HIMWARE" then they are phonetically similar. A layman will not be able to differentiate between the two. There is some structural dis-similarity in writing, the trade mark "HINDWARE" and "HIMWARE" but they are phonetically so similar that keeping in view the customers approach various sections of the society there is strong possibility of deception amongst them.
CS No. 107/2003 55 of 59 M/s HSIL Limited Vs M/s Champion Ceramic
45. Keeping in view our society and the customers if an order is placed on telephone then "HINDWARE" and HIMWARE will sound similar and there is strong possibility of deception. Ld. counsel has placed reliance upon the judgment cited as Kewal Krishan Kumar Vs O.P Lower Floor Mills, 2003, Vol.26 PPC 175 Delhi, SBL Limited Vs HIM Truck Company, AIR 1998 Delhi 126 but keeping in view that there is phonectic similarity and law does not require that similarity must be not only phonetic but also ocular and structural, therefore, there is every possibility of goods of the defendant being passed as that of the plaintiff and also the fact that plaintiff is having the trade mark registered in this name before the defendant which fact was also known to the defendant when he adopted the trade name HIMWARE knowing very well that "HINDWARE" is Trade Mark of plaintiff. The said Trade Mark is valid subsisting and consequently plaintiff has full right to its exclusive use, in my opinion it amounts to infringement of the right of the trade mark of the plaintiff by defendant. The issue is accordingly decided in favour of plaintiff.
ISSUE NO.5
46. Ld. counsel for the plaintiff submitted that plaintiff is doing business in India as well as out of India. He has placed on record the various bills and the invoices showing sales figure from 1997 onwards exhibited as Ex. PW2/3 and then CS No. 107/2003 56 of 59 M/s HSIL Limited Vs M/s Champion Ceramic sale bills from 1989 Ex. PW3/1 and the exports sales from 1998 Ex.PW3/2 showing that its sales are running in crorers but the defendant by using the deceptively similara trade mark as that of the plaintiff had taken benefit of the goodwill and reputation of the plaintiff, passed his goods as that of the plaintiff and therefore plaintiff is entitled to rendition of account from the defendant. The defendant himself has placed on record the document showing his sales which are Ex PW1/2 to Ex. PW1/10 sales in Orissa, Karnataka, Assam, Chandigarh, Chhatisgarh, Siligudi, Himachal, Rajasthan, U.P and Gujrat. He has also sold his goods in Delhi the details of which has been deliberately suppressed by the defendant. Ld. counsel submitted that keeping in view these bills, it is very much apparent that he must sold goods by infringing the trade mark of plaintiff of more than 10 lakh and for that plaintiff is entitled to rendition of account so that actual sum can be ascertained.
47. Ld. counsel for the defendant submitted that there is no question of rendition of account as there is no infringement of the trade mark. Even otherwise no sale has taken place in Delhi there is no bill and therefore plaintiff is not entitled to any rendition of accounts.
48. After hearing the arguments and going through the record I found that it is not clear that defendant is only using the CS No. 107/2003 57 of 59 M/s HSIL Limited Vs M/s Champion Ceramic trade name "HIMWARE" as plaintiff himself has placed on record the trade name "Stylo" of the defendant. As it is not clear that defendant is selling entire goods only under the trade name "HIMWARE" and it is not possible to find out the actual sales carried out by defendant in this regard under this trade mark but keeping in view the volume of the sales as reflected by the defendant and the plaintiff in my opinion plaintiff is entitled to a sum of Rs. 3 lakh as damages from the defendant. The issue is accordingly decided in favour of plaintiff. ISSUE NO.6
49. Ld. counsel for the plaintiff submitted that plaintiff is entitled to the mandatory injunction of the destruction of all the goods which the defendant is marketing in Delhi under the trade mark "HIMWARE" which is in violation and infringement of trade mark of the plaintiff. Ld. counsel submitted that once it is decided in his favour that there is infringement, therefore, the defendant either shall remove the trade name from the goods or destroy the same or deliver it to the plaintiff for destruction. Ld. counsel for the defendant submitted that there is no question of destruction as there is no sale in Delhi and there is no order so far as other states are concerned. If any goods in Delhi is found that can be removed or destroyed and it is snot the entire production of the defendant which is to be removed or destroyed.
CS No. 107/2003 58 of 59 M/s HSIL Limited Vs M/s Champion Ceramic
50. After hearing the arguments and going through the record, I found that plaintiff is proprietor of Trade Mark "HINDWARE" which is blatantly infringed by defendant. The said Trade Mark is valid, subsisting and consequently plaintiff has full right to its exclusive use and restrain use of identical or deceptively similar mark i.e. "HIMWARE" by defendant. therefore the defendant is directed to remove all his goods with the trade mark "HINDWARE".
RELIEF
51. In view of the finding on the above issues particularly Issue no.1, the suit of the plaintiff is hereby dismissed.
Parties are left to bear their own cost.
Decree sheet be prepared accordingly only after plaintiff pays the deficient court fee.
File be consigned to record room.
Announced in open court On 08.05.2013.
VIRENDER KUMAR BANSAL
ADDL.DISTRICT JUDGE-08
CENTRAL, DELHI
CS No. 107/2003 59 of 59
M/s HSIL Limited Vs M/s Champion Ceramic 08.05.2013.
Present: Counsel for the parties.
Vide separate order, suit of the plaintiff is hereby dismissed. Parties are left to bear their own cost.
Decree sheet be prepared accordingly.
File be consigned to record room.
VIRENDER KUMAR BANSAL
ADDL.DISTRICT JUDGE-08
CENTRAL, DELHI
CS No. 107/2003 60 of 59
M/s HSIL Limited Vs M/s Champion Ceramic CS No. 107/2003 61 of 59 M/s HSIL Limited Vs M/s Champion Ceramic CS No. 107/2003 62 of 59