Delhi District Court
Sh. Rummy Chhabra And Anr vs Packson Impex Ltd on 27 September, 2024
IN THE COURT OF MS. ANURADHA SHUKLA
BHARDWAJ: DISTRICT JUDGE (COMMERCIAL
COURT)-02, SOUTH DISTRICT, SAKET, NEW DELHI
CS (Comm.) No. 9/2023
1. Sh. Rummy Chhabra
R/o. 155-A, Cariappa Marg,
Sainik Farms, New Delhi.
....... Plaintiff no.1
2. M/s. Metro Tyres Ltd.
Regd Office at 201, Square One,
C-2, District Center, Saket Place,
New Delhi-110017.
....... Plaintiff no.2
Versus
1. Packson Impex Ltd.
D-274/277, Phase-VII
Focal Point,
Ludhiana-141010.
.......Defendant
Date of filing of the suit : 04.01.2023
Date of reserving judgment : 06.09.2024
Date of judgment : 27.09.2024
JUDGMENT
1. This is a suit for permanent injunction, restraining infringement of registered mark "VELO", dilution and tarnishment of trademarks, passing off, damage to CS(COMM) 9/23 Page 1 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
reputation and tarnishment of brand equity, damages etc. filed on behalf of plaintiffs against defendant.
2. As per plaint, case of the plaintiffs is that plaintiff no.1 is the registered proprietor of trademark "VELO" which it is using since 1958 in relation to bicycle parts and chain earlier by its predecessors in the business M/S.VELO Industries, and plaintiff no. 2 has acquired the rights and interest of trademark "VELO" along with its goodwill vide deed of assignment dated 5 th February 1988. Subsequently, plaintiff no.2 has assigned the rights and interest of trademark "VELO" along with its goodwill to plaintiff no. 1 and his father Late Shri Man Singh vide deed of assignment dated 22nd December 2005 and order thereon dated 15th January 2013. It is pleaded that plaintiff no.1 executed the license agreement permitting the plaintiff no. 2 to continue using the trademarks.
3. It is pleaded that in the year 1988, plaintiff no.2 has started the manufacture and sale of cycle/rickshaw tyres under the trademark "VELO" and in the year 1993, the plaintiffs further expanded the goods of their manufacture and sale of cycle/rickshaw tubes, Chains & Auto Tyres/Tubes under the trademark "VELO" and have continuously and extensively used the same in the course of trade. It is averred that by virtue of long, continuous and extensive use and vast publicity, the trademark "VELO" of plaintiffs has acquired unique reputation in the minds of CS(COMM) 9/23 Page 2 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
purchasing public and the trade on account of the quality of the products sold under the said mark. It is pleaded that the trademark "VELO" of the plaintiffs has come about to be exclusively identified and recognized by the purchasing public and the trade with the goods of the plaintiffs and none else. In addition to the common law rights to the exclusive use of the trademark "VELO", plaintiffs also hold statutory rights to the exclusive use of the said mark by virtue of registrations granted, details of registrations are given hereunder :
Trade Mark Class Regn./Appl. Journal No. No. VELO 12 431433 1109 VELO 7 479115 1023 VELO TOOFANI 12 579200 1229(s) TAKAT VELO 12 652966 1256 VELO 6 652967 1230 VELO TOOFANI 12 735694 Mega-1 ARJUN VELO 12 907972 1339-1 BRAMHASTRA VELO 12 1072542 1345 Regular VELO 12 1119864 1330 VELO 37 1360364 1347 VELO 12 2928950 1890 SINGHAM
4. It is averred that the above said trademarks stand registered in the name of plaintiff no.1 Shri Rummy CS(COMM) 9/23 Page 3 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
Chhabra and his father Late Shri Man Singh, who died on 23rd June 2021 and a request on Form TM-P dated 27 th August 2021 was filed for bringing on record the name of plaintiff no. 1 as proprietor thereof, which is pending before Registrar of Trademarks. It is stated that plaintiffs have been manufacturing tyres of different types, qualities and applications and in order to identify specific quality of the products, plaintiffs have been using various identification/secondary marks like ARJUN, TOOFANI TAKAT, BRAHAMASTRA & SINGHAM along with and in conjunction with its trademark "VELO".
5. It is stated that by virtue of its quality and promotions, the products of the plaintiffs under the mark "VELO" are recognized by the traders and purchasing public and has acquired the status of well-known mark under Section 2 (1) (zg) of the Trade Marks Act, 1999.
6. It is stated that defendant Packson Impex Pvt. Ltd.
appears to be engaged in the business of manufacture and sale of bicycles and bicycle parts, tyres and tubes, having address at D-274/277, Phase VIII, Focal Point, Ludhiana- 141010 (PB) and has adopted a deceptively similar trademark "VELOMAN" in relation to cycle tyres being manufactured and sold by it. It is submitted that the marks "VELO" and family of "VELO" series of trademarks of the Plaintiff & "VELOMAN" of the Defendant are phonetically, structurally, visually similar, therefore CS(COMM) 9/23 Page 4 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
chances of confusion and deception is a certainty and foregone conclusion. It is pleaded that plaintiffs have also filed opposition against the defendant's trademark VELOMAN under opposition no. 1089302 to application no. 4564625 in class 12 & 1089047 to application no 4564626 in class 35. It is stated that plaintiffs have also filed cancellation petition against the defendant's registered trade mark "VELLUM" under Rect. No.766873 dated 7th October 2022 to registration no 4564627 in class 12 and the said opposition and rectification proceedings are pending before The Registrar of Trademarks, Trade Marks Registry New Delhi, representation of plaintiffs' mark.
7. It is pleaded that defendant has copied whole of the plaintiffs' prior and registered trademark and merely by adding "MAN" as a suffix does not make any difference as it appears to be one amongst Family Marks of the plaintiffs such as "VELO ARJUN", "VELO TOOFANI TAKAT", "VELO BRAHAMASTRA" AND "VELO SINGHAM".
It is pleaded that defendant is committing illegal trade activities on account of the use of plaintiffs registered trademark, copyright and is solely trading upon the reputation of the plaintiffs thereby earning huge profit in an illegal manner and further causing infringement of the plaintiffs' registered trademark under Section 29 of the Trademarks Act, 1999.
CS(COMM) 9/23 Page 5 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
8. It is averred that the nature of the goods in the instant case is such that it is purchased and sold by all types of persons illiterate or semi-literate, possessing an average intelligence. The goods are sold across, in large as well as small shops in village, small towns in rural, urban, semi-urban areas as well as in big cities. It is stated that plaintiffs are suffering huge losses in business as well as in reputation due to the unlawful trade activities of the defendant.
9. The cause of action has been pleaded from September 2022 when the plaintiffs allegedly acquired knowledge of illegal trade activities being carried by defendant, which continued till the suit was filed and interim injunction was granted to the plaintiff. The plaintiffs claim that territorial jurisdiction to entertain the suit is made out as plaintiffs are carrying their business within the territorial jurisdiction of this court and also because the defendant is soliciting its business from within the area falling within the jurisdiction of this court. The goods of the defendant are being offered for sale within the jurisdiction of this court. The plaintiff has sought injunction against the defendant from the use of trademark VELOMAN, trade dress of the plaintiffs or names deceptively similar to the trade-name/trade dress of the plaintiffs. The plaintiffs have also sought a decree of rendition of account, a sum of Rs,20,000/- as damages and an order of delivery up.
CS(COMM) 9/23 Page 6 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
10. After appearance defendant has filed WS. It is stated that M/s.Packson Impex Pvt. Ltd. is engaged in manufacturing of bicycles and bicycles part, tyre and tubes since its incorporation on 12.06.1997. It has trademark Packson since 18.08.2016. In 2021, it adopted trademark 'BABLU INTERNATIONAL'. In the year 2020 it adopted trademarks 'VELOMAN' and 'VELLUM'. The registration was applied vide application no.4564625, 4564626 & 4564627 for the goods falling under class 12 and 35. It is stated that defendant had taken examination report for applications no. 4564625 and 4564626, however, the Registrar did not show plaintiffs' mark VELO in the examination report, which indicates that VELO was not considered similar to VELOMAN of plaintiff.
11. The defendant has challenged territorial jurisdiction of this court on the ground that all the invoices of plaintiff are of Ludhiana. The plaintiffs are carrying business activities from Ludhina Office i.e B-27, Phase IV, Metro Road, Focal Point, Ludhiana-141010, Punjab. It is stated that not a single invoice has been filed by the plaintiffs to show that they are conducting any business in Delhi or in South Delhi. It is stated that plaintiffs have made bald averment that the defendant is selling its goods within the territorial jurisdiction of this court, however, no distributor/shopkeeper has been disclosed in the plaint. It is stated that local commission was also taken for CS(COMM) 9/23 Page 7 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
Ludhiana address of defendant and not anywhere in South Delhi.
12. It is further stated that VELO is generic and descriptive in nature. It is stated that plaintiff has falsely claimed that VELO has become distinctive and is associated with plaintiffs' goods. VELO as per Cambridge Dictionary means bicycles and bike and thus plaintiffs cannot claim any proprietory rights over these words. It is stated that plaintiffs have not placed any document on record in support of their claim of user since 1958. It is stated that the trademark of defendant is different and distinct phonetically, in artistic work or otherwise from trademark of plaintiffs. It is stated that defendant has been using the trademark since 2020. The defendant has denied the contention of plaintiffs' suit on merit.
13. On pleadings, following issues were framed on 11.09.2023:-
1. Whether the plaintiff does not have any cause of action and the claim is based on misleading and erroneous averments? (OPD)
2. Whether the defendant has adopted the trademark PACKSON in 2016 and in due course went on to adopt trademark VELOMAN in 2020. (OPD)
4. Whether the plaintiff is the owner of the series of trademark VELO? (OPP) CS(COMM) 9/23 Page 8 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
5. Whether the defendant's trademark VELOMAN is deceptively similar to the plaintiff's trademark VELO ? (OPP)
6. Whether the plaintiff is entitled for permanent injunction in terms of their clause?(OPP)
7. Whether the plaintiff is entitled for rendition of accounts in respect of profit illegally earned by the defendant? (OPP)
8. Whether the plaintiff is entitled for damages, as claimed? (OPP)
9. Relief.
14. Inadvertently no serial number 3 was given to any issue. The plaintiffs have mentioned two trademarks of defendant i.e VELOMAN and VELLUM, however, the suit has been contested in respect of trademark VELOMAN only.
15. Ld. Counsel for defendant raised the issue of territorial jurisdiction of the court during the arguments although no issue to this effect was framed. Defendant has taken an objection in the WS that plaintiffs have deliberately given their Delhi address in the memo of parties and did not mention their Ludhiana address. It is stated that all the business activities of plaintiffs were being conducted from the Ludhiana office. It was argued by Ld. Counsel for the defendant that all the bills filed by plaintiffs were of Ludhiana. No bill of plaintiffs is having CS(COMM) 9/23 Page 9 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
address of Saket. The principal office of defendant is in Ludhiana. He has placed reliance upon judgment in Indian Performing Rights Society Ltd. Vs. Sanjay Dalia and Ors., MANU/SC/0716/2015. Hon'ble Supreme Court in the aforesaid judgment held that if the plaintiff is residing or carrying on business at a place, where cause of action, wholly or in part, has arisen, he has to file a suit at that place. In the cited judgment the plaintiff of the said case had its head office in Mumbai; the cause of action had also arisen in Mumbai. Hon'ble Supreme Court relied upon the judgment in Advance Magazine Publishers INC. & Anr. Vs. Just Lifestyle Pvt. Ltd., wherein again the registered office of plaintiff was in Mumbai and the magazine was being processed and published in Mumbai. Per contra, in the instant case the registered and principal office of plaintiff no.2 is in Delhi. Plaintiff no.1 is also operating from Delhi. The plea of defendant that all the business of plaintiffs is being carried at Ludhiana is incorrect in view of several invoices relied upon by plaintiffs from different places across country. In the cross-examination no suggestion was given to PW-1 that it has a branch office at Ludhiana or that all the business of plaintiffs is being conducted from Ludhiana or that plaintiffs were not conducting any business from the registered office at Delhi. It was argued by Ld. Counsel for plaintiffs that the sales were also being carried from Saket address of the plaintiffs, which is registered office address of plaintiff no.2. PW-1 stated in his cross examination that he has not CS(COMM) 9/23 Page 10 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
filed any proof of registered office address of plaintiff no.2, however, the same is available on the website of ROC. He also stated that the principal office of Metro Tyres Ltd. was in Saket, Delhi, which is the registered office of the plaintiff. He stated categorically that in all the bills registered office address of Saket is mentioned. No suggestion was given to the witness that it is not selling its product from Delhi or no business is being conducted from the registered office of plaintiff no.2 at Delhi. No suggestion was given to the witness that the plaintiffs are not conducting any business from their principal office in Delhi.
In view of above discussion though no issue in this regard was framed by the court and the defendant had not pressed framing of the issue, the finding in view of above discussion is that territorial jurisdiction of the court is made out.
16. Issue No.1:- Whether the plaintiff does not have any cause of action and the claim is based on misleading and erroneous averments? (OPD)
17. The term 'cause of action' as it emerges from various judicial pronouncements of the courts has acquired a judicial meaning. The word 'cause of action' has not been statutorily defined. 'Cause of action' constitutes the circumstances forming the infraction of the right for the immediate occasion for the action. 'Cause of action' CS(COMM) 9/23 Page 11 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
means the bundle of facts, which it would be necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment of the court. In legal parlance, the expression 'cause of action' is generally understood to mean a situation or state of facts that entitles a party to maintain an action in a court or a tribunal, a group of operative facts giving rights to one or more basis for suing; a fact or situation that entitles one person to obtain a remedy in court from another person. Reliance is placed upon judgment in Naveen Chandra N. Majithia Vs. State of Maharashtra, AIR 2000 SC 2966.
18. Issue no.4:- Whether the plaintiff is the owner of the series of trademark VELO? (OPP)
19. The plaintiffs have examined PW-1 in support of their case. PW-1 Anurag Dwivedi- Company Secretary and AR of plaintiff has filed his affidavit, in para two of which he has given details of registration of trademarks details of which are also provided in para 3 hereinabove. The record shows that the plaintiffs have 11 trademarks having words VELO and the same is dominant part and is constant in all the trademarks. Out of 11, seven registrations are of trademarks VELO itself. One is Velo Toofani Takat; one Velo Toofani Arjun, one Velo Brahamastra and one Velo Singham. The documents have been exhibited by PW-1 as Ex.PW1/2A to 2K.
CS(COMM) 9/23 Page 12 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
20. The document at page 5 shows that device mark Velo is registered in the name of Man Singh and Rummy Chhabra-plaintiff no.1-son of Man Singh vide application no. 431433 for articles under class 12 and the registration is valid till 26.12.2025. Word mark VELO vide application no. 479115 was registered in name of Man Singh and Rummy Chhabra as above and the registration date is of 1984. This Mark is valid till 28.09.2028.. Word mark VELO vide application no. 579200 is registered in same names and the date of registration is 28.09.1987. The mark is valid till 13.08.2026. Word mark VELO vide application no. 652966 is registered in same names and the date of registration is 23.01.1995. The mark is valid till 23.01.2029. Word mark VELO vide application no. 652967 is registered in same names and the date of registration is 23.01.1995. The mark is valid till 23.01.2029. Word mark VELO TOOFANI TAKAT vide application no. 735694 is registered in same names and the date of registration is 08.11.1996. The mark is valid till 08.11.2026. Word mark VELO BRAHAMASTRA vide application no. 907972 is registered in the name of Rummy Chhabra and the date of registration is 06.03.2000. The mark is valid till 06.03.2030. Word mark VELO vide application no.1119864 is registered in the name of Man Singh & Rummy Chhabra and the date of registration is 18.07.2002. The mark is valid till 18.07.2032. Word mark VELO vide application no.1360364 is registered in the name of Metro Tyres Ltd.-plaintiff no.2 and the date of CS(COMM) 9/23 Page 13 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
registration is 30.05.2005. The mark is valid till 30.05.2025. Various registrations therefore, were owned by Mr. Man Singh & Rummy Chhabra since 1985 onwards as per these documents.
21. The plaintiffs are thereafter relying upon Ex.PW1/3 & Ex.PW1/4, which are deeds of assignment. Vide Ex.PW1/3 assignment deed executed in 1988 the erstwhile owners of VELO trademarks had assigned the VELO trademarks registered under application no. 431433 to Metro Tyres Ltd. Vide Ex.PW1/4 Metro Tyres Ltd. had assigned all trademarks VELO as mentioned at page no.32 to Mr. Man Singh and Mr. Rummy Chhabra. None of these documents have been challenged by the defendant in cross-examination of PW-1. The witness in his cross- examination stated that VELO trademark was in use since 1958 and it is written in assignment deed Ex.PW1/3 that the word VELO is in use since 1958. No suggestion has been given to the witness that the assignment deed was incorrect or that the trademark was not in use since 1958 or that it was not assigned to Metro Tyres Ltd. and later to Rummy Chhabra and Man Singh. The Metro Tyres Ltd., therefore, was the owner by way of assignment of all the aforesaid marks from 1958 and had later transferred its rights in the name of Man Singh & Rummy Chhabra vide assignment deed (part of Ex.PW1/4). Plaintiffs are relying upon license agreement (part of Ex.PW1/4), whereby Man Singh and Rummy Chhabra granted the right to continue CS(COMM) 9/23 Page 14 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
using the said trademarks to Metro Tyres Ltd.-plaintiff no.2.
22. Vide Ex.PW1/5 & Ex.PW1/5-A the PW-1 has tendered on records transmission of trademarks in the name of Rummy Chhabra on the death of co-applicant Man Singh. Thus Rummy Chhabra became owner of all the aforesaid trademarks having been transmitted to him on 27.08.2021 after death of Sh.Man Singh.
Defendant in cross-examination did not challenge the registration certificates, in which the name of the owner has specifically been mentioned as Man Singh & Rummy Chhabra. Ld. Counsel for defendant has objected to the exhibition of Ex.PW1/5, which is an application for transfer of trademarks in the name of Rummy Chhabra upon the death of Man Singh and also his wife (parents of Rummy Chhabra). No argument was advanced by the defendant in this regard orally nor is there any mention of it in written submissions. It has not been denied by the defendant or challenged that Man Singh alongwith Rummy Chhabra were the owners of trademarks as per Ex.PW1/2A to 2K (except 1360364 which is in the name of plaintiff no.2). The document Ex.PW1/5 is receipt of instrument of transmission and conveys to the trademark authority that upon the death of Sh. Man Singh and also his wife, the trademark stand transferred in the name of Rummy Chhabra. This document being receipt of submission of application is per se admissible. Even if it is assumed that CS(COMM) 9/23 Page 15 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
Ex.PW1/5 could not have been exhibited, the original of it being with Registrar of trademark, the fact that Rummy Chhabra was co-owner of the trademark alongwith Sh. Man Singh as per the documents Ex.PW1/2A to Ex.PW1/2K, the ownership of Rummy Chhabra in all the trademarks except 1360364 which is in the name of plaintiff no.2 stands proved. Plaintiff no.2 is the owner of trademark vide application no. 1360364.
It was vaguely put to PW-1 that plaintiff no.2 did not have any authority in the plaint as per license agreement Ex.PW1/4. Again there is no valid challenge taken by the defendant to the license agreement having been executed by Man Singh & Rummy Chhabra in favour of Metro Tyres Pvt. Ltd. (part of Ex.PW1/4.). Even if it is accepted that the no authority was transferred to Metro Tyres Pvt. Ltd. vide Ex.PW1/4, plaintiff no.2 is the owner of trademark vide application no. 1360364. It therefore, has cause of action in its favour to file the suit against the defendant for protecting its trademark. This issue therefore, is decided in favour of plaintiffs and against the defendant.
23. Issues no.2: Whether the defendant has adopted the trademark PACKSON in 2016 and in due course went on to adopt trademark VELOMAN in 2020? (OPD) and CS(COMM) 9/23 Page 16 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
Issue no.5:- Whether the defendant's trademark VELOMAN is deceptively similar to the plaintiff's trademark VELO ? (OPP)
24. There is no dispute that defendant had adopted trademark Packson in 2016. This trademark is by no way connected or similar to trademark VELO so that a conclusion could be drawn that by virtue of adopting trademark Packson in 2016 the defendant got right in the use of trademark VELO because of similarities in the two or because of the second being a formative of Packson. Further, as per defendant's own case the defendant started to use trademark Packson in the year 2016 and adopted VELO MAN in 2022 which is much later in time. In his cross examination defendant stated that despite having earlier trademarks Veloman was adopted by him as his son had joined the business and Velo means cycle. The defendant thus having applied for registration of TM VELO MAN gave an evidence contrary to his own defense that trademark Velo cannot be monopolized being a generic term. This argument of defendant shall be discussed in detail later hereunder. The plaintiffs are asserting their right in the trademark VELO and its formative trademarks since 1958 by virtue of long user and continuous registrations. In fact, the plea of defendant that it was using trademark Packson since 2016 and suddenly started VELOMAN in 2022 shows malafide on part of defendant. If it had started using trademark CS(COMM) 9/23 Page 17 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
Packson, the ordinary course would have been to use same or similar trademarks or the formative marks of Packson, since the defendant had four years of user in its favour in the trademark Packson. The defendant has not been able to show any justifiable reason for adoption of trademark VELOMAN after four years of using trademark Packson.
25. Ld. Counsel for the defendant argued that defendant's trademark VELOMAN is not deceptively similar to the trademark of plaintiffs. It was argued by Ld. Counsel for the defendant that the defendant had sought examination report with regards to its two application bearing no.4564625 and 4564626. The registrar of trademark did not cite the mark of plaintiffs and the mark of defendant was accepted, which shows that plaintiffs' mark VELO is not in any manner similar to the defendant's mark/device VELOMAN.
26. If the arguments of Ld. Counsel was to be accepted there would be no need for provisions of opposition/rectification/objection in the Trademark Act. It is an admitted case of parties that the plaintiffs have filed opposition proceedings against the registration of defendant's trademark application no. 4564625 and 4564626. The relevant documents have been exhibited by the plaintiffs as Ex.PW1/7A and 7B. The objections are still being considered by the trademark registry and have not been rejected. There is thus no strength in the argument CS(COMM) 9/23 Page 18 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
of Ld. Counsel for defendant that since the name of plaintiffs was not shown in the examination report, therefore, the trademark of defendant should be considered as not similar to the trademark of plaintiff.
It was argued by Ld. Counsel for the defendant that trademark of defendant is depicted in a stylized manner below encircled 'V' like alphabet in colour combination of red and blue, which mark is visually, phonetically, structurally and conceptually different from the plaintiffs' trademark. The plaintiffs in the instant matter is challenging the word mark VELO. It is the claim of plaintiffs that VELO is the trademark of plaintiffs and VELO word mark also stands in the name of plaintiffs. It was argued that the trademark of defendant has consumed the trademark of plaintiffs VELO completely in its trademark VELOMAN which is not permissible.
27. Ld.Counsel for defendant in support of its contention relied upon the judgment in Vasundhra Jewellers Pvt. Ltd. Vs. Kirat Vinodbhai Jadvani & Anr. 2022 SCC Online Del 3370. The Hon'ble High Court in the cited judgment discussed the anti-dissection rule while stating that "[a] Compare composites as a Whole :
Conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. This is the "anti dissection" rule. The rationale for the rule is that the commercial impression of a composite trademark on an CS(COMM) 9/23 Page 19 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
ordinary prospective buyer is created by the mark as a whole, not by its component parts. However, it is not a violation of the anti- dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole. Thus, conflicting marks must be compared in their entireties. A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important. As the Supreme Court observed: "The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety." The anti- dissection rule is based upon a common sense observation of customer behavior : the typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retains only an overall, general impression created by the composite as a whole. It is the overall impression created by the mark from the ordinary shopper's cursory observation in the marketplace that will or will not lead to a likelihood of confusion, not the impression created from a meticulous comparison as expressed in carefully weighed analysis in legal briefs. In litigation over the alleged similarity of marks, the owner CS(COMM) 9/23 Page 20 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
will emphasize the similarities and the alleged infringer will emphasize the differences. The point is that the two marks should not be examined with a microscope to find the differences, for this is not the way the average purchaser views the marks. To the average buyer, the points of similarity are more important that minor points of difference. A court should not engage in "technical gymnastics" in an attempt to find some minor differences between conflicting marks.
However, where there are both similarities and differences in the marks, there must be weighed against one another to see which predominate.
The rationale of the anti-dissection rule is based upon this assumption: "An average purchaser does not retain all the details of a mark, but rather the mental impression of the mark creates in its totality. It has been held to be a violation of the anti- dissection rule to focus upon the "prominent" feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of the mark. Similarly, it is improper to find that one portion of a composite mark has no trademark significance, leading to a direct comparison between only that which remains."
28. Per contra Ld. Counsel for the plaintiffs in support of his contentions relied upon judgment in Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical CS(COMM) 9/23 Page 21 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
Laboratories AIR 1965 SC 980, wherein the Hon'ble Supreme Court held that "In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get- up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff."
The Hon'ble Court thus categorically held that for the purpose for infringement of registered trademark it is sufficient for the plaintiff to show that there is phonetic and conceptual similarity in the two rival trademarks and the points of distinction would not be of much relevance.
29. In Amritdhara Pharmacy Vs. Satyadeo Gupta, 1963 AIR 449, it was held that "For deceptive resemblance two important questions are: (1) who are the persons whom the CS(COMM) 9/23 Page 22 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks,that it differs from the mark on goods which' he has previously bought, but is doubtful whether that impression is Dot due to imperfect recollection. Let us apply these tests to the facts of the case under our consideration. It is not disputed before use that the two names 'Amritdhara' and 'Lakahmandhara' are in use in respect of the same description of goods, namely, a medicinal preparation for the alleviation of various ailments, Such medicinal preparation will be purchased mostly by people who instead of going to a doctor wish to purchase a medicine for the quick alleviation of ;their suffering, both villagers and townsfolk, literate as well as illiterate. As we said in Corn Products Refining Co. v. Shangrila Food Products Ltd (1); the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandbara' is, in our, opinion likely to deceive or; cause confusion. We must consider, the overall similarity of the two composite words 'Amritdhara' and 'Lakshman- dhara'. We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect CS(COMM) 9/23 Page 23 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meanings of the composite words as 'current of nectar' or current of Lakshman'. He. would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has other vise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the entymological or ideological meaning and, see the difference between 'current of nectar' and current of Lakshman'".
"...A critical comparison of the two names may disclose some points of difference. but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with. a similar name".
30. Applying the principle laid down by Hon'ble Supreme Court in the aforesaid matter the plaintiffs in the instant case are owners of not only VELO but formative marks of VELO like "VELO ARJUN", "VELO TOOFANI TAKAT", "VELO BRAHAMASTRA" AND "VELO CS(COMM) 9/23 Page 24 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
SINGHAM". Any person, who has purchased products bearing trademark VELO or any of the other trademarks of plaintiffs will be more prone into believing that VELOMAN is also the trademark of plaintiffs who own several formative trademarks. The case of plaintiffs thus in my opinion is on a stronger footing than the case cited herienabove since in addition to having the registration of VELO word mark, the plaintiffs also owns VELO formative marks.
Further in Vasundhra (supra) a big consideration before the Hon'ble High Court was that the defendant of the said case went by the name of Vasundhra Mantri. The case of defendant was that defendant had used her own name, which was common name in India and therefore, the plaintiff could not have an exclusive right to use the said name. On the contrary, the trade-name VELO being contested in the instant case is not the name of either plaintiff or defendant It is not a common name though it means bicycle.
31. In view of above discussion and the cited judgments trademark of defendant VELOMAN is held to be deceptively similar to the trademark of plaintiffs 'VELO', "VELO ARJUN", "VELO TOOFANI TAKAT", "VELO BRAHAMASTRA" AND "VELO SINGHAM". Both the issues are decided in favour of plaintiffs and against the defendant.
CS(COMM) 9/23 Page 25 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
32. Issue No.6:- Whether the plaintiff is entitled for permanent injunction in terms of their clause?(OPP)
33. It was argued by Ld. Counsel for the plaintiffs that the trademark being used by defendant is identical and deceptively similar to the mark of the plaintiffs. It was argued that products being manufactured and sold by plaintiffs and defendant are same/similar i.e bicycle tyres and tube etc. Two trademarks VELO and VELOMAN have overall structural and phonetic similarity. The products of plaintiffs are purchased by all kinds of people including the illiterate persons from villages to urban people. He argued that applying the test of confusion and deception to a man of average intelligence and of imperfect recollection trademark of defendant VELOMAN would essentially confuse the purchasers with the trademark VELO and other formative marks of VELO being used by plaintiffs. On the aspect of deceptive similarity it has been concluded in foregoing paras that trademark of defendant in fact, is deceptively similar to the trademark of plaintiffs.
34. It was argued by Ld. Counsel for defendant that VELO is a generic name and cannot be exclusively used by any person/entity. It was stated that word VELO in plain English language means bicycles and is generic and common to trade. Admittedly VELO means bicycles, however, the word VELO is not commonly used to refer to bicycles. Ld. Counsel for the defendant during arguments CS(COMM) 9/23 Page 26 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
stated several times about the searches made on Google. He has relied upon in additional written argument a document of such searches. The document shows that search was made for Velo bicycles and not word VELO. The Hon'ble Delhi High Court when it was referring to word Vasundhara categorically held that Vasundhara was a common name in India and thus exclusive right to use the same could not be granted. As stated hereinabove word VELO is almost unknown to the common public across, as word VELO does not even appear on a common search on the Google platform. On typing of "Velo" even the word VELO does not appear as a dictionary word, the initial searches showing Veloz a medicinal preparation.
35. In Automatic Electric Ltd. Vs. R.K.Dhawan, 1999 SCC Online DEL 27, Hon'ble Court held as under:-
"16. The defendants got their trade mark "DIMMER DOT" registered in Australia. The fact that the defendant itself has sought to claim trade proprietary right and monopoly in "DIMMER DOT", it does not lie in their mouth to say that the word "DIMMER" is a generic expression".
36. Further, Head and Shoulders is a registered trademark of the Procter and Gamble Company. It manufactures Shampoos meant for hair and has been held to be a valid trademark. Similarly the plaintiff is using VELO for cycle/rickshaw tyres; tubes, chains and auto CS(COMM) 9/23 Page 27 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
tyres and tube. For the foregoing reasons this argument of Ld. Counsel for defendant is negated.
37. Ld. Counsel for the defendant argued that there are several entities that have obtained registration of mark VELO and are using the same by adding it as suffix and prefix for their product. In this regard Ld. Counsel relied upon the judgment in Premier SPG and WVG Mills Pvt. Ltd. Vs. Football Association Premier League Ltd. and Another, 2024 SCC Online Del 358, wherein it was held as under:-
"14. A bare perusal of these marks would prima facie indicate that there is no deceptive similarity between the two marks and the only commonality between the same is the use of the word 'PREMIER'. Moreover, the word 'PREMIER' is suffixed by the word 'LEAGUE' in the respondent's mark and has a device of a lion wearing a crown and standing over a football, which is indicative of the nature of the services being provided by the respondent in the industry of football. On the other hand, 'PREMIER' as used in the appellant's mark is of a completely different font and style and has a small flower device on top of the word. Applying the fundamental test as to whether there is a deceptive similarity, in the opinion of this Court, there is none on a bare perusal of the marks. Notwithstanding the prima facie assessment, the appellant's mark is a device mark, and they have no registration in the word 'PREMIER".
CS(COMM) 9/23 Page 28 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
38. The defendant in this regard has relied upon computer generated TM search report Ex.DW1/4. A perusal of the document would show that word VELO is registered in the name of Metro Tyres Pvt. Ltd. Apart from that the common VELO Trademark is Velox as one word belonging to one Paragon Polymer Pvt. Ltd.
Unlike in the cited judgment where trademark Premier was registered as such in conjunction with sporting leagues, the search report filed by defendant does not show that formative combinations of trademark VELO are common to the trade. Most common trademark that appears in the search report Ex.DW1/4 is 'Velocity' which is an independent and a common word and in a way generic also. The use of word VELO for tyres and chains etc as such cannot be compared with the use of premier in Sporting Leagues as held in Premier SPG (Supra).
Ld. Counsel for the plaintiffs on the issue of multiple users having trademark similar to VELO has relied upon the judgment in Corn Products Refining Co. Vs. Shangrila Food Products Ltd., PTC (Suppl) (1) 13 (SC), wherein it was held as under:-
"It is clear however from that case, as we shall presently show, that before the applicant can seek to derive assistance for the success of his application from the presence of a number of marks having one or more common features which occur in his mark also, he has to CS(COMM) 9/23 Page 29 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
prove that those marks had acquired a reputation by user in the market.
"....The series of marks containing the common element or elements therefore only assist the applicant when those marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that Deputy Registrar looked into his register and found there a large number of marks which had either 'Gluco' or 'Vita' as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register".
The defendant thus was required to prove that the trademarks mentioned in the list are popular trademarks or are in continuous use for a long time, since it is a known fact that in many cases people get trademarks registered and never use them. The argument of Ld. Counsel for defendant thus is not valid in view of judgment in Corn Products Refining Co.(supra).
39. It is otherwise settled proposition that mere existence of other similar names does not preclude a CS(COMM) 9/23 Page 30 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
plaintiff from taking action against one defendant. Reliance placed upon the judgment of Hon'ble High Court in Pankaj Goel Vs. Dabur India Ltd. 2008 (38) PTC 49 (Delhi) wherein the court hold that the respondent is not expected to sue all small type infringers who may not be affecting respondent. The plea of defendant that trade- mark VELO in the market of bicycle, chains, tyres, tubes etc. is a common trade-name is not substantiated with evidence and is discarded.
40. The plaintiffs in support of their contention of extensive and continuous user have relied upon the details of sales of its goods using the trademark VELO and family of VELO. The details are mentioned in para 7 & 8 of affidavit of PW-1. The plaintiffs are relying upon certified copy of sale and advertisement and promotion figure as also a few copies of invoices, which are collectively exhibited as Ex.PW1/6(a) & (b). Ld. Counsel for defendant did not question PW-1 on these documents.
Ld. Counsel for defendant has relied upon the judgment in Pidilite Industries Ltd. and Anr. Vs. Vilas Nemichand Jain & Anr., 2015 SCC Online Bom 4801, wherein the Hon'ble Bombay High Court held that mere evidence of extent of use--invoice, financial figures of sales do not show increased use and that something more is necessary to show that the use is such that the mark has become distinctive.
CS(COMM) 9/23 Page 31 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
The plaintiffs by virtue of aforesaid documents and registration in their name have been able to establish their case of prior user. The defendant admittedly started to use trademark VELO MAN in 2020 only. It by no stretch of imagination can claim user prior or more in comparison to the plaintiffs. The documents relied by plaintiffs thus are sufficient to conclude that the plaintiffs are prior users of trademark and are in business since a long long time. In my opinion extensive and continuous use and existence of trademark on record for a period of more than 60 years is sufficient to show that plaintiffs have acquired a distinct right in the trade mark VELO and its formative names.
41. In view of above all it is held that plaintiffs are entitled for permanent injunction in terms of prayer clause of the plaint. The defendant as such is restrained from using trademark VELOMAN or any other mark in words or labels, identical or deceptively similar with the plaintiffs' trademark VELO in any manner for the goods and services falling under class 12. This issue is decided in favour of plaintiffs and against defendant.
42. Issue No.7:- Whether the plaintiff is entitled for rendition of accounts in respect of profit illegally earned by the defendant? (OPP)
43. The onus to prove this issue was on the plaintiffs.
PW-1 has not stated anything in his affidavit regarding CS(COMM) 9/23 Page 32 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
rendition of account. The only sentence stated is that the defendant is using and infringing registered trademark of plaintiffs and is earning huge profit out of it and that plaintiffs are entitled to restrain the defendant from infringing the registered trademark of plaintiffs. It is not stated as to what accounts are needed by the plaintiffs and the purpose of it. The defendant admittedly is doing business under several trademarks viz "PACKSON" and "VELLUM" in addition to "VELOMAN". The plaintiffs have not sought any injunction in respect of trademark "VELLUM" though the same is mentioned in the pleading. Ld. Counsel for the plaintiffs categorically stated during the arguments that plaintiffs are not challenging trademark "VELLUM". No relief in respect of trademark "PACKSON" has been pleaded. In absence of clear and categoric evidence as to what account records do the plaintiffs require, a decree for rendition of account is not made out. This issue is therefore, decided against the plaintiffs for want of best evidence.
44. Issue No.8:- Whether the plaintiff is entitled for damages, as claimed? (OPP)
45. The plaintiffs again have not stated anything in respect of damages part in the entire affidavit and the only statement as stated hereinabove is that defendant is earning huge profits. There is no evidence on how the damages to the extent of Rs.20 lakhs have been computed. The fact, CS(COMM) 9/23 Page 33 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
however, remains that the plaintiffs had applied for appointment of Local Commissioner and the Local Commissioner had visited the place of defendant. During the Local Commissioner's proceedings 14 bundles of 70 pieces tyres, 14 bundles of 50 pieces tyres, 14 bundles of 48 pieces of tyres, one bundle of 200 pieces of tubes and one bundle of 2500 units of labels were seized by the local commissioner from the premises of defendant, which had the trademark VELO MAN. Again the plaintiffs have not led any evidence as to the probable cost of these articles.
46. The fact, however, remains that the defendants did use infringing trademark and must have caused some loss to the plaintiffs. Having regard to the totality of the facts and circumstances noted above, this Court is of the considered view that interest of justice would be served if plaintiffs are granted lumpsum amount of Rs.2,00,000/- as damages on account of economic and commercial advantage which the defendant tried to gain at the expenses of reputation of plaintiffs.
47. The present suit was filed on 04.01.2023. Plaintiffs shall also be entitled to costs. In the circumstances noted above, pleader's fee and litigation expenses are assessed as Rs.1100/- and Court fee deposited by the plaintiffs is Rs.22,900/-. An amount of Rs.1,25,000/- was paid by the plaintiffs towards the Local Commissioner's fee, which they are also entitled to recover under the cost head. This CS(COMM) 9/23 Page 34 of 35 Rummy Chhabra & Anr. vs. M/s. Packson Impex Ltd.
Court finds that plaintiffs are entitled to total costs of Rs.1,94,100/-.
48. Issue No.9:- Relief. The defendant is restrained from using trademark VELOMAN or any other mark in words or labels, identical or deceptively similar with the plaintiffs' trademark VELO in any manner for the goods and services falling under class 12. The plaintiffs are also held entitled for damages to the tune of Rs.2 lakhs and costs to the extent of Rs.1,94,100/-. Decree sheet be drawn up accordingly. File be consigned to record room.
(ANURADHA SHUKLA BHARDWAJ) District Judge(Commercial Court)-02 South, Saket, Delhi.
Announced in open court
on 27.09.2024 Digitally
signed by
anuradha
anuradha shukla
shukla Date:
2024.09.27
16:41:32
+0530
CS(COMM) 9/23 Page 35 of 35 Rummy Chhabra & Anr. vs.
M/s. Packson Impex Ltd.