Delhi District Court
Yug Bite And Vittles Pvt Ltd vs Kings Roll on 25 February, 2022
In the Court of Shri Sanjiv Jain,
District Judge (Commercial Court-03), Patiala House Courts
New Delhi
CS (COMM) No. 292/2020
Yug Bite and Vittles Pvt Ltd
RZ-1053, Street No. 5/8
Main Sagarpur,
New Delhi-110046 ............ Plaintiff
Versus
1. Kings Roll
Shop No. GF-16,
Bhawishya India Tower,
Opp 10th Avenue, Gaur City-2,
Uttar Pradesh
........ Defendant no.1
2. Pradeep Kumar
J-3, Sector 18,
Noida, Gautam Buddha Nagar,
Uttar Pradesh- 201301 ........ Defendant no.2
Date of institution : 28.02.2020
Date of reserving judgment : 25.02.2022
Date of decision : 25.02.2022
JUDGMENT
1. The plaintiff Yug Bite and Vittles Pvt Ltd has filed the suit for permanent injunction restraining defendant no.1 i.e. Kings Rolls from infringing its trademark 'ROLLSKING', for CS (COMM) No. 292/2020 Yug Bite and Vittles Pvt Ltd v/s Kings Roll and Others Page 1 of 11 damages and delivery up etc.
2. Briefly, the facts as alleged in the plaint are that the plaintiff, engaged in the business of food products since 20.10.2011 has been using the trademark since 06.01.2014. It has been supplementing the trademark 'RollsKing' with its device mark . The consuming public recognizes its trademark. Its brand stands for quality which the consumers can trust. Its sales in the year 2018-2019 were Rs. 9.64 crores. It also sells its products online through Swiggy, UberEats and Zomato.
3. It is stated that the defendant no.2 who owns all the rights and title of the trademark have given special rights to the plaintiff to use the said trademark (details mentioned in para 13 of the plaint). It is stated that the key elements in the trademark as detailed in para 14 of the plaint, constitute the trade dress of proprietor/plaintiff which is distinctive in nature and it sets apart the products of defendant no.2 and its registered users from the others in the market. The rights CS (COMM) No. 292/2020 Yug Bite and Vittles Pvt Ltd v/s Kings Roll and Others Page 2 of 11 holders spend huge amount of time and money in building its market and popularize its trademark across India. By virtue of extensive sales and sales promotions, the trademark is exclusively associated with the rights holders. The trademark is a well known trademark as defined under Section 2 (z) (g) of the Trademarks Act, 1999.
4. It is alleged that in the month of July, 2019, the plaintiff came to know of unauthorized use of trademark akin to that of the plaintiff. It issued legal notice upon the defendant no.1 dated 13.07.2018 but defendant no.1 did not respond to the notice. Thereafter, its investigator visited the premises of the defendant and met Sh. Sunil who informed him that Rajeev Aggarwal is the proprietor of defendant no.1. He also came to know that defendant no.1 has been infringing the trademark for more than six months. The only change it made in the word mark is the change of order of the words from 'RollsKing' to 'KingsRoll' as detailed in para 24 of the plaint. It is alleged that this has been done by the defendant in a blatant attempt to pass off its goods CS (COMM) No. 292/2020 Yug Bite and Vittles Pvt Ltd v/s Kings Roll and Others Page 3 of 11 as those of the plaintiff to trade upon the reputation of the right holders and mislead the general public into believing that the products are either same or associated with the right holders. It is alleged that the impugned mark adopted by the defendant no.1 is structurally, phonetically and visually similar to that of the right holders. It is also alleged that defendant is selling the similar type of products as being sold by the right holders. A cursory glance would confirm the unmistakable impression of the right holders copyright in the defendant no.1's mark . It has copied all the substantial elements of the right holders copyright with an intention to mislead the public. It is alleged that the matter relates to serving of edible products to the public and any issue with such products can have serious repercussions on the public health as the defendant no.1's products do not go through the same quality control that the right holders products go. It is alleged that because of the impugned products of defendant no.1 bearing the impugned mark, the reputation of the right holders is at stake, they have suffered incalculable losses which the defendant no.1 is liable to compensate by paying the damages.
5. On an application of the plaintiff under Order 39 Rule 1 and 2 CPC, this court vide order dated 29.02.2020, keeping in view CS (COMM) No. 292/2020 Yug Bite and Vittles Pvt Ltd v/s Kings Roll and Others Page 4 of 11 the facts and circumstances of the case, finding the case of the plaintiff prima facie strong on merits and observing that in case injunction is not granted, it would suffer irreparable loss, injury and damage to its business, granted adinterim injunction restraining defendant no.1 from passing off the plaintiff's trademark and manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in rolls, wraps and other food products made by plaintiff that infringe the plaintiff's trademark .
6. Pursuant to the service of summons of the suit, defendant no.1 put its appearance on 14.08.2020, however, it did not file the written statement and its right to file the written statement was forfeited vide order dated 22.07.21. Defendant no.2 is the proforma defendant.
7. To prove its case, plaintiff examined Sh. Pradeep Kumar, AR of the plaintiff as PW-1. He tendered his affidavit Ex.PW-1/1 in evidence and proved the copy of legal proceedings certificate for trademark no. 4121852 and 3767901 Ex.PW-1/2 and Ex.PW-1/3, details of registered user agreements for its trademark Ex.PW-1/4, brochure and advertising materials of defendant Ex.PW-1/5, photographs of defendant no.1's store CS (COMM) No. 292/2020 Yug Bite and Vittles Pvt Ltd v/s Kings Roll and Others Page 5 of 11 displaying the impugned mark Ex.PW-1/6, E-invoice Ex.PW- 1/7, printouts from third party website demonstrating defendants use of impugned trademark Ex.PW-1/8, print out from the website of Ministry of Corporate Affair Ex.PW-1/9, original brochures and advertising materials of right holders Ex.PW-1/10, printouts from website of right holders Ex.PW- 1/11, print outs from third party websites Ex.PW-1/12, legal notice Ex.PW-1/13. Letter of authority in the name of Ravi Kumar Ex.PW-1/14, affidavit of investigator Ex.PW-1/15, certificate under Section 65B of the Evidence Act Ex.PW-1/16 and Board resolution Ex.PW-1/17.
8. I have heard Ld. Counsel Sh. S.K Bansal for the plaintiff and perused the record.
9. A perusal of testimony of PW-1 and the documents reveals that defendant no.2, the proforma defendant was the registered proprietor of the trademark . It was registered on 14.09.2019 vide certificate of registration of trademark under Section 23 (2) of the Act and Rule 56 (1) of the Rules. He had claimed the user of the said mark since 06.01.2014. The registration was issued for the category of goods/products under Class 43 as evident from the document Ex.PW-1/3. Vide CS (COMM) No. 292/2020 Yug Bite and Vittles Pvt Ltd v/s Kings Roll and Others Page 6 of 11 application for registration of registered user/variation of registered user Ex.PW-1/4, he had allowed the plaintiff to use the said trademark. Defendant no.2 had also entered into registered user agreement with the plaintiff appointing the plaintiff as the registered user of the said trademark vide dated 11.02.2021. He had also given an application to the registrar of trademarks along with the affidavit in this aspect.
10. The documents placed by the plaintiff Ex.PW-1/5, Ex.PW-1/6, Ex.PW-1/7 and Ex.PW-1/8 show that the defendant no.1 who is also in the same trade has been using the similar mark by using the first word 'KINGS' against the 'ROLLS' being used by the plaintiff. In the second word it has been using the word 'ROLL' while the plaintiff's second word is 'KING'. If the two marks are placed together, it would lead to deceptive similarity. It appears that the defendant no.1 has used this mark to pass off its goods as that of the plaintiff to ride upon the goodwill and reputation of the plaintiff. This fact is very much clear from the comparison table made by the plaintiff in para 24 of the plaint. The fonts are similar, letter 'O' is similar, the crown device is deceptively similar and deck of cards is also deceptively similar. On taking the defendant no.1's mark as a whole, it is evident that the intention of the defendant no.1 is to mislead the public making it believe that the products are either the same or associated with each other. The defendant no.1's mark is CS (COMM) No. 292/2020 Yug Bite and Vittles Pvt Ltd v/s Kings Roll and Others Page 7 of 11 structurally, phonetically and visually similar to that being used by the plaintiff under the authority of defendant no.2. The products being sold by defendant no.1 are identical in nature. The products in question are the edible products and the quality of the products matter as these products have affect on the public health. The plaintiff has also filed the legal proceeding certificates Ex.PW-1/2 and Ex.PW-1/3 showing the details of registered user agreement of the trademark Ex.PW-1/4. The plaintiff had appointed an investigator and his report Ex.PW- 1/15 is very clear as to the infringement made by the defendant no.1 within an attempt to pass off its goods as those of the plaintiff by copying the same design, colour, font including writing style. The very act of the defendant no.1 amounts to infringement of common law rights and trademark of the plaintiff which appears to have been done to make unjust monetary gain with an intention to pass off its products as those of the plaintiff's products.
11. The High Court of Delhi in the case of Skechers USA Inc and Ors v/s Pure Play Sports, I.A No. 6279/2016 in CS (Comm) 573/2016 referring the case of Colgate Palmolive Company & Anr. V. Anchor Health and Beauty Care Pvt. Ltd., MANU/DE/1000/2003: 2003 (27) PTC 478 (Del) and Gorbatschow Wodka KG V. John Distillers Limited, MANU/MH/0630/2011 : 2011 (47) PTC 100 Bom has held:
CS (COMM) No. 292/2020 Yug Bite and Vittles Pvt Ltd v/s Kings Roll and Others Page 8 of 11 "11. In Colgate (supra), the Court after referring the detailed submissions of the parties and taking note of the decisions relied upon on other side observed as follows:
"52. It is the overall impression that customer gets as to the source and origin of the goods from visual impression of color combination, the container, packaging etc. If illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, color combination words if the first glance of the article without going into the minute details of the colour and getup, it amounts to passing off. In other combination, getup or lay out appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one's own goods as those of the other with a view to encash upon the goodwill and reputation of the latter".
12. I am of the view that plaintiff has proved its case and is thus entitled to an equitable relief of permanent injunction. The suit of the plaintiff is accordingly decreed. The defendant no.1, its partners, promoters, proprietors, servants, agents, affiliates, sister concerns and all others in active concert or participation with them from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in products that are identical or deceptively similar to the plaintiff's trademark amounting to or likely to infringe plaintiff's aforesaid registered trademark, its product packaging or trade dress so as to pass off their goods and business as those of the plaintiff as CS (COMM) No. 292/2020 Yug Bite and Vittles Pvt Ltd v/s Kings Roll and Others Page 9 of 11 prayed for in prayer Clauses 33 (a) and 33 (b) of the plaint.
13. Now coming to the damages, though the plaintiff has not filed any document to substantiate its claim for damages but there is no denial of the fact that because of the impugned activities of the defendant no.1, the plaintiff has suffered loss in its business and reputation since in such like business, the customers and trade channels are the same. In the instant case, the defendant no.1 had tried to encash the goodwill and reputation of the plaintiff by passing off its goods as that coming from the source and origin of the plaintiff.
14. In the case of Hero Honda Motors Ltd v/s Shree Assuramji Scooters, 2006 (86) DRJ 113, it was observed that the time has come when the courts dealing actions for infringement of trademarks,copyrights etc should not only grant compensatory damages but award punitive damages also with a view to discourage and dishearten law breakers who indulge in violations with impunity out of lust for money so that they realize that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay punitive damages also, which may spell financial disaster for them. It was held that in such cases, damages must be awarded and the defendant who chooses to stay away from the CS (COMM) No. 292/2020 Yug Bite and Vittles Pvt Ltd v/s Kings Roll and Others Page 10 of 11 proceedings of the court, should not be permitted to enjoy the benefits of evasion of court proceedings.
15. In the instant case also, the defendant no.1 has stayed away from the proceedings after its appearance. I am of the view that the plaintiff is entitled to compensatory and punitive damages to the extent of Rs. 50,000/- as a consequence of infringement of the trademark of the plaintiff/defendant no.2 (right holder) by the defendant no.1.
16. The suit of the plaintiff is accordingly decreed. The plaintiff shall also be entitled to the cost of the proceedings.
17. Decree sheet be prepared accordingly.
18. File be consigned to record room.
Announced through video conferencing today i.e. 25.02.2022.
(SANJIV JAIN) District Judge(Commercial Court-03) New Delhi / 25.02.2022 CS (COMM) No. 292/2020 Yug Bite and Vittles Pvt Ltd v/s Kings Roll and Others Page 11 of 11