Delhi District Court
Ssg Pharma Private Limited vs Jwala Kachri Udyog on 26 May, 2020
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IN THE COURT OF MS. NIVEDITA ANIL SHARMA,
DISTRICT JUDGE,
COMMERCIAL COURTS, SHAHDARA,
KARKARDOOMA COURTS, DELHI
CS (COMM) No.154/2019.
SSG Pharma Private Limited
Plot no. 17, Second Floor,
Sachdeva Corporate Tower, Community Centre,
Near Dayanand Vihar Petrol Pump,
Karmkardooma, Delhi-110092.....................................Plaintiff.
Versus
Jwala Kachri Udyog
C-12, Roshan Bagh Industrial Area
Rampur 244901, Uttar Pradesh................................... Defendant.
Date of Institution : 10.10.2018.
Arguments concluded on : 23.05.2020.
Date of Judgment : 26.05.2020.
Appearances: Mr.Prakhar Sharma, counsel for the plaintiff.
None for defendant (The right of the defendant to file
written statement was closed vide order dated
06.05.2019 of the learned predecessor of this Court and
thereafter, none has appeared on behalf of the
defendant)
Suit under Sections 29 and 27 (2) of the Trade Marks Act, 1999 and
Sections 51 and 55 of the Copyright Act, 1957 for permanent
injunction restraining Infringement of Copyright, Passing off of
Trade Mark, Rendition of Accounts, Etc.
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CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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JUDGMENT
1. The proceedings are conducted through video conferencing on Cisco Webex.
2. This matter has been taken up during the period of lockdown due to the Corona Virus Covid 19 pandemic in compliance to the order of the hon'ble High Court of Delhi circulated vide order of the learned Registrar General vide office order No. R-235/RG/DHC/2020.
3. The counsel for the plaintiff SSG Pharma Private Limited (hereinafter referred to as the plaintiff) had been apprised that the next date of hearing in this matter is 12.06.2020 (date given en bloc during lockdown) and as this case was listed for arguments, it has to be taken up through video conferencing on Cisco Webex.
4. The Reader/JJA of the Court had telephonically informed the counsel for the plaintiff about the above on 18.05.2020 and the video conferencing on Cisco Webex was held on 19.05.2020, 21.05.2020, 23.05.2020 and today i..e 26.05.2020.
5. The counsel for the plaintiff had submitted that he has already got the Statement of Truth of the plaintiff prepared and signed by the Director of the plaintiff and attested. He had submitted that he undertakes to file the original Statement of Truth in the Court after the Court reopens after the lockdown is withdrawn.
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6. The counsel for the plaintiff had further submitted that he has sent the pictures of the prepared Statement of Truth on the mobile phone of the Reader/JJA of the Court and this fact has been affirmed by the Reader/JJA.
7. In view of the submissions made, the counsel for the plaintiff had been directed to file the Statement of Truth in the Court on the reopening of Courts.
8. This is a suit for permanent injunction restraining infringement of Copyright, passing off of Trademark, rendition of accounts filed by SSG Pharma Private Limited, the plaintiff against M/s Jwala Kachri Udyog (hereinafter referred to as the defendant).
9. Summons of the case and notice of the application under Order 39 Rules 1 and 2 of the Civil Procedure Code (hereinafter referred to as the CPC) were served upon the defendant and its counsel appeared on 01.11.2018, 06.02.2019 and 06.05.2019 but did not file any written statement and reply within the stipulated period.
10.The right of the defendant to file written statement was closed vide order dated 06.05.2019 of the learned predecessor of this Court and thereafter, none has appeared on behalf of the defendant.
11.The learned predecessor of this Court did not pass any orders on the application of the plaintiff under Order 39 Rules 1 and 2 of the CPC at the time of issuance of summons and after the appearance of CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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the counsel for the defendant and even thereafter.
12.This matter came before the undersigned for the first time on 17.12.2019 (after transfer and creation of the Commercial Court w.e.f. 06.12.2019) at the stage of plaintiff's evidence.
13.In the plaint, the plaintiff has averred that the plaintiff is a private limited company incorporated under the Indian Companies Act, 1956. Mr. Sunil Kumar, son of late Shri Shiv Shanker, is a Director of the plaintiff company and is duly empowered and competent to sign and verify this plaint and to institute these proceedings.
14.The plaintiff is carrying on their old and established business and is working as the manufacturers and merchants of various products such as Ayurvedic Medicinal preparations including Chewable Tablets, Jaljeera, Churn, Digestive Products, Namkeen, Beverages, Sweets, etc. and during the course of trade uses thereupon various distinctive trademarks and labels marks on its different products under its trademark SATMOLA which is also the house mark of the plaintiff company. The predecessor of the plaintiff is one SHIV SHANKER GHORE WALA, Delhi, who adopted the trade mark SATMOLA in the year 1983 in respect of Ayurvedic Medicinal preparations including Chewable Tablets, Jaljeera, Churn, etc. thereafter the said firm continued to expand its products introducing modern and distinctive packaging for the same thereto till the 19 th day of June, 2001 when all the registered as well as unregistered trademarks and copyrights in the packaging which the said firm had CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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acquired in its own name were assigned in favour of the plaintiff company and now the plaintiff company is owner of the same. The said trademark SATMOLA is also a house mark of the plaintiff prominently used on each label mark/packaging of the plaintiff's different variety of products. The plaintiff is manufacturing and selling its goods under various varieties under different trademarks/label marks for its products and has the trademark/house mark SATMOLA mentioned on all such label marks of such products. The plaintiff apart from the other various products in which it deals in as abovementioned is also manufacturing and selling various varieties of Saltish Preparations, Snacks and Namkeens.
15.By the passage of time, the plaintiff company indulged into introducing the new varieties of its Saltish Preparations, Snacks and Namkeens Product and on 16.05.2010 introduced its product SPICY MATAR under the house mark SATMOLA in a highly distinctive unique packaging having original artistic work, get up, layout, combination of colors and pattern. The said product of the plaintiff SPICY MATAR under the mark SATMOLA is being sold under the distinctive label/packaging having original artistic work, colour combination, layout, getup and pattern which has been used continuously, exclusively and extensively since the year 2010 by the plaintiff in the same artistic work and color combination. Initially the said artistic work of SPICY MATAR was launched in the year 2010 by the plaintiff under the title CHATPATI MATAR which was later on changed to SPICY MATAR retaining the same CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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artistic work and color combination.
16.The plaintiff company in order to obtain statutory rights in the said label/packaging of SPICY MATAR under the house mark SATMOLA has also filed application for registration vide Trade Mark Application No. 3938961 in Class 30 under the provisions of The Trade Marks Act, 1999 which is in the process of registration. Such label/packaging of the plaintiff having abovementioned original artistic work also being subject matter of the trademark being a label, packaging and having unique original colour combinations as abovementioned constitute distinctive trademark/label mark of the plaintiff under Section 2 (m) and 2 (zb) of the Trade Marks Act, 1999.
17.By virtue of original artistic work in the getup, layout, pattern and color combination/scheme in the label/packaging of the plaintiff of SPICY MATAR under the house mark SATMOLA as abovementioned there vests copyright protection in it under the provisions of The Copyright Act, 1957.
18.By virtue of the open, continuous, extensive and exclusive use of the label/packaging of SPICY MATAR under the house mark SATMOLA since the year 2010 under the original artistic work, colour combination, getup and layout on the label/packaging of product of plaintiff, public, trade and potential costumers of the product of plaintiff associates such mark and its label/packaging having abovementioned original artistic work, colour combination, CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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getup and layout with plaintiff only and none else. Such label/packaging of SPICY MATAR under the house mark SATMOLA of the plaintiff both individually as well as conjointly has acquired a distinct identity in relation to the goods for which it is being used continuously, extensively and exclusively by the plaintiff exclusively and in exclusion of others. Every consumer of such product i.e. Saltish Preparations, Snacks and Namkeens relates such label/packaging of SPICY MATAR as originating from the plaintiff only. The said product Saltish Preparations, Snacks and Namkeens manufactured and sold by the plaintiff and under their distinctive label/packaging having abovementioned original artistic work, getup, colour combination and layout have acquired a valuable goodwill and reputation in the trade and such goods under the said mark SATMOLA and its label/packaging is exclusively identified as the goods of the plaintiff's only and has become distinctive on account of open, continuous and extensive use thereof. The goods bearing the house mark SATMOLA for SPICY MATAR and its label/packaging bearing distinctive feature as abovementioned is considered as the quality product being manufactured and marketed by the plaintiff's only and is highly demanded. The unwary purchasers recognizes and demands such the product i.e. 'Saltish Preparations, Snacks and Namkeens' of the plaintiff's under the distinctive label/packaging of SPICY MATAR under the house mark SATMOLA through the trademark as well as through its visual appearance of the original artistic work, colour combination, getup etc. as abovementioned on the label mark/packaging of the goods. The said labels/packagings of the CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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product of the plaintiff SPICY MATAR under the house mark SATMOLA is having an original artistic work, colour combination, eye catching get-up, placement, design, etc. has been tremendously successful and have become a major hit in the market and trade. The said product of the plaintiff under its distinctive label/packaging have been in use extensively, exclusively and continuously throughout India since the year 2010 by the plaintiff on a very large scale. Consequently the said product SPICY MATAR of the plaintiff bearing the house mark SATMOLA packed in its aforementioned distinctive label/packaging has come to signify the products originating from the plaintiff company exclusively. No person without the permission or consent of the plaintiff, has any right to use or reproduce the said trademark and/or its labels/packaging of the plaintiff or any other label/packaging which are identical and/or deceptively similar to the said label/packaging of the plaintiff amounting to an infringement of the trademark/label mark and passing off of trademark/label mark and infringement of copyright of the plaintiff.
19.The plaintiff have been popularizing and marketing the said product SPICY MATAR under its trade mark SATMOLA packed in the aforementioned distinctive label/packaging through various media which have been extensively distributed and noticed by a large number of traders and consumers for which plaintiff have spent a considerable amount till date in advertising and other trade promotional activities alone in respect of its product bearing abovementioned trademark SATMOLA and its label/packaging and CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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original artistic work, getup, colour combination layout and pattern.
20.The total annual sales-figures of the plaintiff company for the goods sold by the plaintiff company since the year 2001-2002 are detailed hereinunder:
Year Sale In Rupees Advertisement Expenses
2001 - 2002 3, 13, 56, 413.00 26, 00, 726.74
2002 - 2003 4, 52, 86, 671.00 46, 58, 740.84
2003 - 2004 5, 84, 69, 403.00 65, 98, 576.34
2004 - 2005 7, 01, 12, 777.00 68, 57, 779.45
2005 - 2006 8,45,36,450.00 1,15,89,085.41
2006 - 2007 11,18,85,670.00 1,51,16,412.44
2007 - 2008 11,28,16,238.00 1,14,52,981.00
2008 - 2009 13,87,27,775.00 92,74,382.00
2009 - 2010 18,72,127,17.00 58,57,863.00
2010 - 2011 25,91,88,315.00 25,92,639.00
2011 - 2012 29,22,04,320.00 36,61,000.00
2012 - 2013 30,48,31,124.00 46,72,935.00
2013 - 2014 38,80,99,218.00 46,95,615.00
2014 - 2015 45,02,96,943.00 62,49,787.00
2015 - 2016 42,48,38,712.00 1,95,19,031.00
2016 - 2017 42,29,44,006.00 1,32,31,748.00
2017 - 2018 50,17,12,615.75 2,65,24,452.70
21.The sales figures of the distinctive label mark/packaging for the product SPICY MATAR under the house mark SATMOLA from the year 2010 - 2011 of the goods sold by the plaintiff company are detailed hereinunder:
Year Sale In Rupees
2010 - 2011 3,43,34,211.00
2011 - 2012 2,83,36,031.00
2012 - 2013 2,80,79,502.00
2013 - 2014 6,63,35,087.00
2014 - 2015 6,15,44,297.00
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2015 - 2016 6,06,07,454.00
2016 - 2017 8,41,97,543.00
2017 - 2018 7,89,18,729.00
22.The abovementioned said sale figures clearly establishes the popularity, vast goodwill and reputation which the plaintiff's said product under its label/packaging of SPICY MATAR under the house mark SATMOLA which has acquired amongst the trade and public and is indicative of the tremendous amount of confidence which the trade and public has in respect of the products originating from the plaintiff and in fact is a clear indicator that the said label/packaging of SPICY MATAR individually as well as under the registered trademark SATMOLA of the plaintiff has achieved the status distinctiveness and has attained a secondary significance in favour of the plaintiff in respect of its product.
23.In the last week of September, 2018, the plaintiff, through its sales staff, in the market came across the same goods i.e. Saltish Preparations, Snacks and Namkeens being sold under the same/similar label mark/packaging of MATAR CHULBULI under the mark JWALA by the defendant which is infringement of copyright of the plaintiff's artistic work and passing off of the trademark/label mark/packaging of SPICY MATAR under the house mark SATMOLA. The said same goods i.e. Saltish Preparations, Snacks and Namkeens bearing the impugned identical/deceptively similar label/packaging of MATAR CHULBULI under the mark JWALA is being used by the defendant as is being used by the plaintiff wherein the proprietary rights of the trademark/label CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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mark/packaging vests in favour of the plaintiff in the said mark/label and label/packaging is being clandestinely manufactured, marketed and sold by the defendant herein under the impugned label/packaging without issuing any bills/invoice. The use of the impugned label/packaging by the defendant amounts to infringement of copyright and passing off of trade mark/label mark of plaintiff and is recent in nature and the plaintiff on being apprised of such infringement of copyright and passing off of its trademark, immediately filed the present suit. The impugned trademark/label mark/packaging MATAR CHULBULI under the mark JWALA of the defendants is identical/deceptively same to those of the plaintiffs' and the said fact is evident on a bare perusal of the competing labels/packaging of the parties.
24.The defendant has no right to use the impugned identical label mark/packaging for same goods as the same is identical/deceptively same to the plaintiffs' prior adopted, prior used label/packaging under the provisions of the Trade Marks Act, 1999. The malafide act of the defendant of adopting the impugned label/packaging of MATAR CHULBULI under the mark JWALA which is identical/deceptively same to the label/packaging of SPICY MATAR of the plaintiff is for the malafide purpose of diversifying the business and encash the pre-established market and reputation of the plaintiff to the defendants by riding upon the pre-established goodwill and reputation of the plaintiff under their label/packaging of SPICY MATAR. The defendant has deliberately in order to make easy money adopted the impugned identical label mark/packaging CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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of MATAR CHULBULI under the mark JWALA in an identical/deceptively similar manner to that of the plaintiff's label/packaging of SPICY MATAR in order to deceive the potential customers, public and trade and with a malafide intention to cause confusion and deception in the markets by making them believe that the product of the defendant with impugned characteristics to be that of the plaintiff's or somehow associated with the plaintiff. An impugned label/packaging of the defendant's goods bearing the impugned label/packaging MATAR CHULBULI under the mark JWALA is filed with the plaint. The defendant, in order to make illegal gains and divert the business of the plaintiff under the pre- established goodwill and reputation of its goods under their label mark/packaging's, is clandestinely selling their inferior quality goods under the impugned identical/deceptively same mark/label/packaging at a relatively lower price.
25.The plaintiff has not authorized or granted any permission to the defendant to use their label/packaging of SPICY MATAR or any other label/packaging identical/deceptively similar to that of the plaintiff's label/packaging in which the common law rights of trademark and copyrights vests in favour of the plaintiff. The plaintiff being the proprietor of the prior adopted, prior used and label/packaging of SPICY MATAR, the defendant has no right to use the impugned label/packaging of CHULBULI MATAR as the same is identical/deceptively same to the plaintiffs' prior adopted, prior used and label/packaging within the provisions of Trade Marks Act, 1999.
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26.The defendant by adoption of impugned label mark/packaging of CHULBULI MATAR under the mark JWALA has infringed the copyright and passed off the label/packaging of the plaintiff and also has passed off its goods and business under the impugned label/packaging of CHULBULI MATAR as the goods and business of the plaintiff's.
27.The consumer of the product i.e. 'Saltish Preparations, Snacks and Namkeens' mainly identifies the product through the broad and essential features of the mark and the appearance on the label/packaging of the products. By the use of the impugned label/packaging of CHULBULI MATAR under the mark JWALA which is identical/deceptively same to the label/packaging of SPICY MATAR under the house mark SATMOLA of the plaintiff, it is bound to create and is actually creating confusion and deception in the minds of public and trade, and the consumers are deceived to buy the product of the defendants considering it to be the product of the plaintiff or somehow associated with the plaintiff. By the sale of the goods by the defendants under the impugned label/packaging the defendants are making illegitimate profits which in turn are the losses of the plaintiff. The adoption of the impugned identical label/packaging is resulting in infringement of copyright and passing off of the defendant's goods as those of the plaintiff's and is actuated by malafides and with a malafide intention to encash upon the pre-established goodwill and reputation belonging to the plaintiffs in their prior adopted, prior used and label/packaging of CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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SPICY MATAR.
28.The plaintiff is the exclusive owner, prior adopter, prior user and owner of its label/packaging of SPICY MATAR. Such a malafide use of the impugned label/packaging on behalf of the defendant is an attempt to take an unfair advantage in business and is contrary to honest practices in commercial matters and is further detrimental to the distinctive character of the plaintiff's label/packaging and is further against the reputation of the aforementioned label mark/packaging of the plaintiff besides being infringement of copyright and passing off of trademark/label mark. The defendant has made a misrepresentation in the course of trade to prospective customers which is leading to immense confusion and deception and creating an impression that the defendant's product is in actually or some way connected with the products of the plaintiff. Moreover, in the case of repeat purchases, an intending purchaser having an imperfect recollection of the reputed and renowned product SPICY MATAR of the plaintiff under its label mark/packaging under the trademark SATMOLA prominently is bound to be misled and deceived into buying the product of the defendant under impugned identical/deceptively same label mark/packaging. Such a misrepresentation is calculated to cause damage and injury both to the plaintiff's business and to their goodwill and reputation. The misrepresentation is not only limited to the origin of the goods but also to the quality as well, since the defendant's products are of inferior quality.
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29.The defendant's products has deliberately been manufactured under the impugned identical/deceptively similar label mark/packaging in a lookalike manner as that of the plaintiffs' in order to provide a tool of deception and fraud in the hands of the unscrupulous middlemen to exploit the intending purchaser of the plaintiffs' said product. The plaintiff's and the defendant's goods are of same nature having identical trading channels and sold to the same class of purchasers. The defendant's are therefore guilty of passing off their goods and business under their impugned label/packaging as the goods and business of the plaintiff. The triple identity test of same goods, same mark/label and same trade channel is fully satisfied in the present case.
30.The defendant is obliged to disclose on oath by way of filing unimpeachable documentary evidence the details in regard to the manufacture and sale of their products bearing the impugned label/packaging as well as all documents concerning the production and sale of their aforementioned impugned products including the names and addresses of their stockists, dealers, representatives, agents, etc. alongwith the cost and quantity of the products under the impugned label/packaging sold by the defendants to the said parties. The defendants are also obliged to provide the details of his various movable and immovable assets including the bank account(s) before this Court in order to ensure that the plaintiff's ability to recover costs and other pecuniary remedies, if and when granted by this Hon'ble Court, in favour of the plaintiff are not rendered infructuous. The profits being earned by the defendants by CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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trading upon the goodwill of the plaintiff are the losses of the plaintiff.
31.The cause of action for filing the present suit arose in the last week of September, 2018 when the plaintiff, through its sales staff, in the market came across the same goods i.e. Saltish Preparations, Snacks and Namkeens being sold under the same/similar label mark/packaging of CHULBULI MATAR under the mark JWALA by the defendant which is infringement of copyright and passing off of the trademark of the plaintiff's label/packaging of SPICY MATAR under the mark SATMOLA. The said same goods i.e. Saltish Preparations, Snacks and Namkeens bearing the identical getup, lay out, color combination and artistic work of label/packaging as is being used by the plaintiff wherein the proprietary rights of the trademark and copyright vests in favour of the plaintiff in the said label/packaging is being clandestinely manufactured, marketed and sold by the defendant herein under the impugned label/packaging without issuing any bills/invoice. The use of the impugned label/packaging of CHULBULI MATAR by the defendant amounts to infringement of copyright, passing off of trademark of plaintiff's label/packaging and is recent in nature and the plaintiff on being apprised of such infringement and passing off of its trademark and infringement of copyright immediately filed the present suit. The defendant is not issuing any bill/cash memo on the sale of the goods under the impugned mark/label/packaging. The cause of action is continuing and the same would continue till the defendants and any person acting through them are restrained CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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from dealing with the goods under the impugned label/packaging identical/deceptively same to that of plaintiff's label/packaging of SPICY MATAR under the mark JWALA and original artistic work in its label/packaging which is infringement of plaintiff's copyright, passing off of trademark of the plaintiff and common law rights.
32.This Court has the territorial jurisdiction to try and entertain the present suit under Section 62 (2) of The Copyright Act, 1957 as the plaintiff is the owner of the artistic work and carries on business and works for gain in Delhi i.e. within the jurisdiction of this Court. This Court has the territorial jurisdiction to try and entertain the present suit also in view of Section 20 of Civil Procedure Code, 1908 as the defendant is also carrying on business within jurisdiction of this Court though interactive website i.e. indiamart.com which is accessible within the jurisdiction of this Court.
33.The plaintiff has prayed as follows:-
(i) for a decree of perpetual and permanent injunction restraining the defendants, their proprietor(s)/partner(s)/director(s) (as the case may be), its manufacturers, servants, shopkeepers, agents, dealers, stockiest, exporters or any other person acting on their behalf from manufacturing, selling, advertising or displaying directly or indirectly dealing in Saltish Preparations, Snacks and Namkeens or any other allied and cognate goods under impugned identical/deceptively similar label/packaging of CHULBULI MATAR under the trademark JWALA or any other trademark/label/packaging identical or deceptively similar to that of the plaintiffs' label/packaging of SPICY CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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MATAR under the mark SATMOLA and from doing any other things and acts as are likely to infringe/pass off the label/packaging of the plaintiff.
(ii) for a decree of perpetual and permanent injunction
restraining the defendant, their
proprietor(s)/partner(s)/director(s) (as the case may be), its manufacturers, servants, shopkeepers, agents, dealers, stockiest, exporters or any other person acting on their behalf from manufacturing, selling, advertising or displaying directly or indirectly dealing in Saltish Preparations, Snacks and Namkeens or any other allied and cognate goods under impugned identical/deceptively same label mark/packaging as that of the plaintiff's and from doing any other things and acts as are likely to pass off the impugned goods and business of the defendant under the impugned label mark/packaging as the goods and business of the plaintiff.
(iii) for a decree of perpetual and permanent injunction restraining the defendant, their proprietor(s)/partner(s)/director(s) (as the case may be), its servants, shopkeepers, agents, dealers, stockists, exporters or any other person acting on its behalf from manufacturing, selling, manufacturing, packaing, advertising or displaying directly or indirectly dealing in Saltish Preparations, Snacks and Namkeens or any other allied and cognate goods under the impugned identical/deceptively similar artistic work, getup, layout and colour combination as that of the plaintiff's and from doing any other things and acts as are likely to infringe the plaintiffs' copyright in the original artistic work, colour combinations, getup and layout used on the original packagings/labels of the plaintiff.
(iv) that the defendants be directed to disclose on oath and by way of filing unimpeachable documentary evidence the details about the manufacture and sale of their goods under the impugned identical/deceptively similar label/packaging of CHULBULI MATAR under the mark CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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JWALA alongwith the details of the manufacturers/ stockists/ dealers/ agents/ distributors/ retailers/exporters and the details of their movable and/or immovable assets, as well as all documents concerning the production and sale of its aforementioned goods including the names and addresses of its manufacturers, stockists, dealers, representatives, agents, printers etc. along with the cost and quantity of the products under the impugned mark and label sold by the defendants to the said parties and the details of its various movable and immovable assets including their bank account(s).
(v) for an order for damages and rendition of accounts of profits illegally earned by the defendants by manufacturing and selling of Saltish Preparations, Snacks and Namkeens and allied products under the impugned trademark/label mark/packaging and for a decree for the sum so ascertained.
(vi) for an order for delivery for purposes of destruction of all labels, packagings, cylinders, dies, blocks, pouches, wrappers, cartons, boxes, sale details, export details and any other infringing copies or media used by the defendants in pursuit of their illegal activities under impugned goods in impugned trademark/label mark/packaging.
(vii) For costs in the proceedings;
(viii) For such further relief/reliefs to which the plaintiff's may be entitled looking into the facts and circumstances of the case.
34.On 21.05.2020, during the course of arguments through video conferencing on Cisco Webex, the counsel for the plaintiff had submitted that he has instructions to submit on behalf of the plaintiff that the plaintiff is pressing reliefs mentioned in the prayers in para 30 (i), (ii) and (iii) only and is not pressing the reliefs as CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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mentioned in the prayers in para 30 (iv), (v) and (vi). He had also submitted that he shall submit the same submission in writing by sending the same to the Reader/JJA on Whatsapp.
35.Today i.e. on 26.05.2020, the Reader/JJA of this Court has confirmed that the counsel for the plaintiff has sent his submission regarding the above stated prayers on his Whatsapp account on 21.05.2020.
36.In order to prove its case, the plaintiff has filed the affidavit of Mr.Sunil Kumar, its Director in evidence and examined himself as PW-1.
37.The witness of the plaintiff was not cross examined on behalf of the defendant as none has appeared on behalf of the defendant after 06.05.2019 when the right of the defendant to file written statement was closed vide order dated 06.05.2019 of the learned predecessor of this Court.
38.In his evidence, Mr.Sunil Kumar has proved and exhibited the documents relied upon as follows:
i. The resolution passed by the Board of Directors in favour of Mr.Sunil Kumar as Exhibit PW-1/1.
ii. Copy of the plaintiff's registered trade mark as Exhibit PW-1/2.
iii. The application filed by the plaintiff for registration vide Trade Mark Application No. 3938961 in Class 30 under CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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the provisions of The Trade Marks Act, 1999 which as on today stands registered as Exhibit PW-1/3 (Collectively).
iv. Copies of sales of the plaintiff as Exhibit PW-1/4 (Collec-
tively).
v. Copy of an advertisement done by the plaintiff as Exhibit PW-1/5.
vi. Original label/packaging of the plaintiff as Exhibit PW-
1/6.
vii. The impugned label/packaging of defendant as Exhibit PW-1/7.
39.I have heard the arguments at length and have given my conscious thought and prolonged consideration to the material on record, relevant provisions of law and the precedents on the point. I have also carefully perused the judgment relied upon by the plaintiff i.e. Parle Products (p) Ltd. v. J.P. & Co. Mysore, 1972 AIR 1359; 1972 SCR (3) 289 decided by the hon'ble Supreme Court of India (date of decision : 28.01.1972) wherein it has been observed as follows:
"....Under s. 28(1) of the Trade and Merchandise Marks Act, 1958the registration of a trade mark in Part A or Part B of the register gave to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark was registered and to obtain relief in respect of the infringement of the trade mark in the manner provided by the Act. Under s. 29 (1):
"A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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permitted use, uses in the course of a trade a mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods 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."
The expression '.'deceptively similar" has now been defined under s. 2(d) of the Act of 1958 thus "A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;"
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According to Karly's Law of Trade Marks and Trade (9th edition paragraph 838):
"Two marks, when placed side by side, may exhibit many and various differences vet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side .lm0 (1) [1965] 1 S.C.R. 737. 754 294 for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which. bore tile same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade- marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."
It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the color scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essen- tial features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word "Gluco Biscuits" in one and "Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in, our opinion who has a look at one of the packets to-day may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs goods, he might easily mis- take the defendants' wrapper for the plaintiffs if shown to. him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendants' wrapper is deceptively similar to the plaintiffs' which was registered. We do not think it necessary to refer to the decisions referred to at the Bar as in our view each case will have to be, judged on its own features and it would be of no use to note on how CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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many points there was similarity and in how many others there was absence of it..."
40.In his affidavit and his evidence recorded before the Court, Mr.Sunil Kumar has deposed on the lines of the plaint and has reaffirmed and reiterated the averments made in the plaint. His evidence remains uncontroverted and unrebutted as the defendant has failed to appear before the Court and has failed to cross examine him. Therefore, his claim as elaborated in the plaint and his evidence can be presumed to have been admitted as correct by the defendant.
41.Also, the defendant has not examined in any witness as none has appeared on behalf of the defendant after 06.05.2019 when the right of the defendant to file written statement was closed vide order dated 06.05.2019 of the learned predecessor of this Court.
42.It is clear on perusal of original label/packaging of the plaintiff (Exhibit PW-1/6) and the impugned label/packaging of defendant (Exhibit PW-1/7) that they are very similar. The impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case the packets are practically of the same size, the color scheme of the two wrappers is almost the same; the design on both though not completely identical bears such a close resemblance that one can easily be mistaken for the other. The same appears to be deceptively similar to the mark of the plaintiff as it so nearly resembles that other mark as to be likely to deceive or cause confusion.
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43.Also, during the trial of the case, the application filed by the plaintiff for registration vide Trade Mark Application No. 3938961 in Class 30 under the provisions of The Trade Marks Act, 1999 was allowed and the trademark of the plaintiff was registered (Exhibit PW-1/3 (Collectively).
44.It is clear from the record including the evidence led by the plaintiff that the impugned the trademark/tradename mark/label/packaging of the plaintiff adopted and being used by the defendant in relation to its impugned goods appears to be identical with and deceptively similar to the plaintiff's above-said the trademark/tradename Spicy Matar word/mark/label/packaging of the plaintiff. The size of the packet, the colour combination/scheme, style, water mark etc. of the product of the defendant is deceptively similar to the trademark of the product of the plaintiff. It is also clear that the product of the plaintiff SPICY MATAR under the mark SATMOLA is being sold under the distinctive label/packaging having original artistic work, colour combination, layout, getup and pattern which has been used continuously, exclusively and extensively since the year 2010 by the plaintiff in the same artistic work and color combination. Initially the said artistic work of SPICY MATAR was launched in the year 2010 by the plaintiff under the title CHATPATI MATAR which was later on changed to SPICY MATAR retaining the same artistic work and color combination. By virtue of original artistic work in the getup, layout, pattern and color combination/scheme in the label/packaging of the plaintiff of CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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SPICY MATAR under the house mark SATMOLA as abovementioned there vests copyright protection in it under the provisions of The Copyright Act, 1957. By virtue of the open, continuous, extensive and exclusive use of the label/packaging of SPICY MATAR under the house mark SATMOLA since the year 2010 under the original artistic work, colour combination, getup and layout on the label/packaging of product of plaintiff, public, trade and potential costumers of the product of plaintiff associates such mark and its label/packaging having abovementioned original artistic work, colour combination, getup and layout with plaintiff only and none else. Such label/packaging of SPICY MATAR under the house mark SATMOLA of the plaintiff both individually as well as conjointly has acquired a distinct identity in relation to the goods for which it is being used continuously, extensively and exclusively by the plaintiff exclusively and in exclusion of others. Every consumer of such product i.e. Saltish Preparations, Snacks and Namkeens relates such label/packaging of SPICY MATAR as originating from the plaintiff only.
45. It is also clear from the record including the evidence led by the plaintiff that the defendant does not have any right to use the label/packaging of product of plaintiff and has infringed the trademark and copyright of the plaintiff.
46.The judgment in re Parle Products (Pvt) Ltd. relied upon by the plaintiff is squarely applicable to the given facts.
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47.Therefore, it is clear from the above discussion that the plaintiff has been able to successfully prove its claim against the defendant.
48.The plaintiff has been able to show that the defendant had infringed the registered trade mark of the plaintiff and the suit of the plaintiff should be decreed and an injunction granted restraining the defendant from selling or using in any manner whatsoever its produce similar in appearance to the registered trade mark of the plaintiffs on their packets.
49.Accordingly, the case is hereby decreed in favour of the plaintiff and against the defendant and decree is passed in favour of the plaintiff as follows:
i. a decree of perpetual and permanent injunction restraining the defendants, their proprietor(s)/partner(s)/director(s) (as the case may be), its manufacturers, servants, shopkeepers, agents, dealers, stockiest, exporters or any other person acting on their behalf from manufacturing, selling, advertising or displaying directly or indirectly dealing in Saltish Preparations, Snacks and Namkeens or any other allied and cognate goods under impugned identical/deceptively similar label/packaging of CHULBULI MATAR under the trademark JWALA or any other trademark/label/packaging identical or deceptively similar to that of the plaintiffs' label/packaging of SPICY MATAR under the mark SATMOLA and from doing any other things and acts as are likely to infringe/pass off the label/packaging of the plaintiff.
ii. a decree of perpetual and permanent injunction
restraining the defendant, their
proprietor(s)/partner(s)/director(s) (as the case may be), its manufacturers, servants, shopkeepers, agents, dealers, CS (Comm) No.154/2019. SSG Pharma Private Limited v. Jwala Kachri Udyog. -:: Page
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stockiest, exporters or any other person acting on their behalf from manufacturing, selling, advertising or displaying directly or indirectly dealing in Saltish Preparations, Snacks and Namkeens or any other allied and cognate goods under impugned identical/deceptively same label mark/packaging as that of the plaintiff's and from doing any other things and acts as are likely to pass off the impugned goods and business of the defendant under the impugned label mark/packaging as the goods and business of the plaintiff.
iii. a decree of perpetual and permanent injunction
restraining the defendant, their
proprietor(s)/partner(s)/director(s) (as the case may be), its servants, shopkeepers, agents, dealers, stockists, exporters or any other person acting on its behalf from manufacturing, selling, manufacturing, packaing, advertising or displaying directly or indirectly dealing in Saltish Preparations, Snacks and Namkeens or any other allied and cognate goods under the impugned identical/deceptively similar artistic work, getup, layout and colour combination as that of the plaintiff's and from doing any other things and acts as are likely to infringe the plaintiffs' copyright in the original artistic work, colour combinations, getup and layout used on the original packagings/labels of the plaintiff.
50.As regards the other reliefs elaborated in the prayers in para 30
(iv), (v) and (vi), the same stand dismissed as not pressed by the plaintiff in view of the submissions made by the counsel for the plaintiff on 21.05.2020.
51.There is no orders as to costs.
52.The decree sheet be prepared accordingly.
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53.Further, it is made clear that the original Statement of Truth be filed by the plaintiff on the reopening of Courts after the lockdown is withdrawn and the judgment and the decree shall be operational only thereafter.
54.After completion of formalities, the Ahlmad/JA of the Court shall consign the file to the record room.
Announced through video (NIVEDITA ANIL SHARMA) conferencing on Cisco Webex on District Judge, this day of 26th day of May, 2020. Commercial Court, Shahdara, Karkardooma Courts, Delhi. 26.05.2020.
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