Bangalore District Court
Bundl Technologies Private Limited vs Chandrasinh Dhirubha Rathod on 8 January, 2024
IN THE COURT OF LXXXIII ADDL.CITY CIVIL & SESSIONS
JUDGE, BENGALURU. (CCH-84)
PRESENT: Sri.S.J.Krishna, B.Sc., LL.B.,
LXXXIX Addl.City Civil &
Sessions Judge, Bengaluru
C/c LXXXIII Addl.City Civil &
Sessions Judge, Bengaluru.
Dated: 8th JANUARY 2024
Com.O.S.No.178/2023
PLAINTIFF : Bundi Technologies Private Limited,
No.55, Sy.No.8-14, I &J Block,
Embassy Tech village,
Outer Ring Road, Devarabisanahalli,
Bengaluru-560103.
(By Sri.Vivek Yavagal, Advocate)
-Vs-
DEFENDANTS : 01. Mr. Chandrasinh Dhirubha Rathod,
Partner,
Ultimate Confectionery Company,
Plot No.21, A &B, Haripar Pal,
Industrial Area Haripar Pal Village,
Opp: Motel the Village,
Kalawad Road, Rajkot,
Gujarat-360005.
02. Mr.Rajendrasinh Dhirubha Rathod,
Partner,
Ultimate Confectionery Company,
Plot No.21, A & B, Haripar Pal,
/2/
Com.OS.No.178/2023
Industrial Area Haripar Pal Village,
Opp: Motel the Village,
Kalawad Road, Rajkot,
Gujarat, PIN-360005.
03. Mr.Jaydip Chandrasinh Rathod,
Partner,
Ultimate Confectionery Company,
Plot No.21, A & B, Haripar Pal,
Industrial Area Haripar Pal Village,
Opp: Motel The Village,
Kalawad Road, Rajkot,
Gujarat, PIN-360 005.
04. Mr.Jayvirsinh Rajendrasinh Rathod,
Partner,
Ultimate Confectionery Company,
Plot No.21, A & B, Haripar Pal,
Industrial Area Haripar Pal Village,
Opp: Motel The Village,
Kalawad Road, Rajkot,
Gujarat, PIN-360 005.
05. Mr.Rajesh Anandbhai Chavda,
Partner,
Ultimate Confectionery Company,
Plot No.21, A &B, Haripar Pal,
Industrial Area Haripar Pal Village,
Opp: Motel The Village,
Kalawad Road, Rajkot,
Gujarat, PIN-360005.
06. Ultimate Confectionery Company,
5-B, Maninagar,
Mavdi Plot, Rajkot,
Gujarat, PIN-360004.
Also at:
Plot No.21, A & B, Haripar Pal,
Industrial Area Haripar Pal Village,
/3/
Com.OS.No.178/2023
Opp: Motel The Village,
Kalawad Road, Rajkot,
Gujarat, PIN-360 005.
(Exparte)
Date of Institution of suit : 03.02.2023
Nature of suit : Permanent injunction and
(suit on pronote, other reliefs
suit for declaration
and possession suit for
injunction, etc.,)
Date of commencement of : 16.06.2023
recording of evidence
Date of judgment : 08.01.2024
Total duration : Year/s Month/s Day/s
00 11 05
(S.J.KRISHNA)
C/c LXXXIII ADDL.CITY CIVIL &SESSIONS
JUDGE, BENGALURU. (CCH-84)
JUDGMENT
The plaintiff has filed this suit against the defendants praying the Court to grant :
(a) a decree for permanent injunction restraining infringement of trademark by the defendants, their principal officers, partners, directors, agents, franchisees, servants and all others acting for and on their behalf, from manufacturing products, selling, using, advertising, registering, applying the trademark Swiggy in full or in /4/ Com.OS.No.178/2023 parts and/or any deceptively similar mark to plaintiff's well-known trade mark Swiggy.
(b) a Decree for Permanent Injunction restraining passing off by the defendants, their principal officers, partners, directors, agents, franchisees, servants and all other acting for and, on their behalf, from manufacturing products, selling, using, advertising, registering, applying the trademark Swiggy in full or in parts and/or any deceptively similar mark to plaintiff's well-known trade mark Swiggy.
(c) a decree for rendition of accounts of profits illegally earned by the defendants by reason of infringement and passing off of the plaintiff's trade mark.
(d) a decree for payment of damages of ₹.10 lakhs by the defendants in favour of the plaintiff.
(e) a decree of costs in the present proceedings in favour of the plaintiff companies and against the defendants and such other orders.
The summary of the case of the plaintiff is as follows:
02. The Plaintiff is a Company doing business in the name of SWIGGY and has filed this suit against the illegal and unauthorized adoption and apprehension of use of plaintiff's well-known trademark by the defendants for the purpose of deceiving and/or duping members of the general public and trade by misrepresenting /5/ Com.OS.No.178/2023 themselves to be associated with the plaintiff and/or acting on their behalf and thereby the defendants in all likelihood intend to or may already be inducing unsuspecting members of the public to partake in a scam pertaining to SWIGGY name in the form of manufacturing chocolate and confectionery products, wafers, namkeen, farsan and fryums, coffee, tea, coco and artificial coffee, rice, tapioca and sago;
flour and preparations made from cereals, bread, pastries and confectionery, edible ices; sugar, honey, treacle; yeast, baking- powder, salt, mustard; vinegar, sauces (condiments), spices, ice (frozen water) and the defendants aim to not only infringe the registered trademarks of the plaintiff and unlawfully use the goodwill of plaintiff's business to enrich themselves, but also cheat the members of the public by means of misrepresentation and impersonation.
03. The plaintiff's good name and reputation will be misused in order to facilitate illicit gains and ride on the coattails of the plaintiff's goodwill and the defendants by registering to use trademark of the plaintiff are attempting to perpetrate various types of misuse and misrepresentations not limited to manufacturing/ proposing to manufacture and sale of confectionery under the brand name 'SWIGGY' and/or deceptively similar brand names.
/6/ Com.OS.No.178/2023
04. The plaintiff launched its business in the year 2014 as a food ordering and delivery platform. The plaintiff operates online marketplace platform, through its website and application for mobile and handheld devices named 'SWIGGY' that enables transactions between participant restaurants and customers, dealing in restaurant services and also enabling delivery and other allied services.
05. In August 2020 the plaintiff augmented its food delivery offering by launching its quick commerce offering 'SWIGGY INSTAMART' that has also gained immense popularity in the market. The plaintiff's mobile App under the trade mark 'SWIGGY' is one of the leading and most popular and successful food and drinks delivery applications in India ranking No.2 according to the Google play store ranking and App store rankings. The plaintiff's 'SWIGGY' mobile application has received 10 crores plus downloads on the Google play store and has a rating of 4.5. The popularity of the plaintiff's services under the trade mark 'SWIGGY' is evidenced by the fact that their official facebook page has around 10 lakhs likes and followers, the official Twitter Account has around 2 lakh followers, the official instagram page has around 4 lakhs followers, the YouTube channel has more than 2.5 lakh subscribers and the official LinkedIn page has more than 12 lakhs followers as on December 15, 2022.
/7/ Com.OS.No.178/2023
06. The plaintiff's immense goodwill and reputation coupled with the impeccable recognition among the consumers and members of the trade, the plaintiff's trade mark 'SWIGGY' has been officially declared as a 'well-known trade mark' under the Trade Marks Act 1999 by the Trade Marks Registry. Owing the years of market presence and extensive pan India promotion and advertising, the plaintiff's trade mark 'SWIGGY' is indeed well- known and recognized by a majority section of the public. The trade mark of the plaintiff is distinctive and exclusively associated with the plaintiff on account of various factors.
07. The plaintiff has widely promoted trade mark and trade name 'SWIGGY' and has advertised the same by way of print, television, digital and outdoor campaigns for the various products and services offered under the said brand and the plaintiff's trade marks such as 'Swiggy Instamar', 'Swiggy One', 'Swiggy Genie', including the highly popular and well recognized logo are conspicuously displayed on their website, mobile application, packing, food delivery agent's apparel, bags etc. The plaintiff's well-known trade mark 'SWIGGY' is visible to the general public and relevant customers on numerous hoardings, boards and posters placed in public places.
/8/ Com.OS.No.178/2023
08. In view of substantial resources, time and money invested by the plaintiff in advertising, publishing and promoting their brand nation-wide including through its website and social media platforms, the services of the plaintiff under its trade mark 'SWIGGY' have acquired an enviable reputation and goodwill throughout India. The plaintiff has spent substantial sums of money, totally more than ₹.5,100 Crores, in promoting and advertising their services under the trade mark. The immense popularity and success of the plaintiff and its trade marks is also demonstrated by the fact that the revenue turnover of the plaintiff has tremendously increased from year to year.
09. The plaintiff has over the years received millions of dollars as investment by numerous venture and growth capital investment funds. The plaintiff has raised almost 3.3 billion US Dollors in equity funding from various marquee foreign and domestic investors, including the likes of Naspers, Softbank, Accel Partners, Elevation Partners, Norwest Venture Partners, amongst others. These investments have made the plaintiff one of the most valuable food tech companies in India. As a result of wide outreach and extensive business, the plaintiff under the trade mark and trade name 'SWIGGY' has managed to find its place among the list of the world's 'Top 10 e-commerce based food delivery companies'. The plaintiff has been actively sponsoring various events ranging from /9/ Com.OS.No.178/2023 tech to entertainment at distinct levels starting right from the grassroots and ranging to national television. The plaintiff has been active and vigilant in enforcing and protecting its rights in its well- known trade mark 'SWIGGY'.
10. In addition to the established trade mark rights, the plaintiff is also the owner of trade dress and copyright in the artistic work including but not limited to the logo, font, style of writing, colour combination, stylised 'S' in the logo and more.
11. The defendants No.1 to 5 are the partners of defendant No.6 and the defendant No.6 is engaged in manufacturing of chocolates, chocolate coated nuts, masala items etc. Further the defendant No.6 is exporter, manufacturer, wholesaler and supplier of confectioneries such as roasted almond, chocofarm raisins, chocolate raisin, handmade chocolate, cranberry chocolate etc. The defendants No.1 to 5 being the partners of defendant No.6 are responsible for making day to day business decisions. It is thus apparent that any business decision including but not limited to regular and routine work, are taken by the defendants No.1 to 5 in their capacity as the business partners. At the time when the defendants applied for registration of the SWIGGY mark in favour of defendant No.6, the plaintiff's service was widely known and used across the country and further the term SWIGGY is a unique word /10/ Com.OS.No.178/2023 and does not bear resemblance to any generic word in English or any other major Indian language and therefore cannot have been honestly coined and/or adopted by the defendants, four years after adoption by the plaintiff. It is believed that the defendants No.1 to 5 despite complete knowledge of the plaintiff's well-known trademark SWIGGY, made an application before the Trademark Registry for registration of deceptively similar and identical mark 'SWIGGY' on 'proposed to be used' basis for exporting, manufacturing, wholesaling and supplying confectioneries. It is pointed out that the defendants' registered mark and device 'SWIGGY' finds no mention on its products or its website as on date i.e. after more than 4 years of registration of the same.
12. In the year 2020, the plaintiff during a routine due diligence to check any third party misuse and instances of dilution for SWIGGY became aware of defendant No.6 had fraudulently registered the impugned mark on 'proposed to be used' basis bearing Registration No.3732365, that incorporated the plaintiff's well-known trade mark SWIGGY. The plaintiff immediately wrote to defendant No.6 through email dated 31/1/2020, requisitioning them to cease and desist from using future use of the plaintiff's trade mark SWIGGY as part of the impugned mark. The defendant No.6 replied to the plaintiff's email dated 28/2/2020 stating that the impugned mark was coined by them in 2018, that the goods under the impugned mark are different from those of interest to the /11/ Com.OS.No.178/2023 plaintiff; and that the impugned mark is entirely different from one another. The plaintiff through counsels responded to the reply letter dated 24/4/2020, reiterating its prior rights in the well-known trade mark SWIGGY, requisitioning the defendant No.6 to stop using the plaintiff's trade mark SWIGGY as part of the impugned mark and immediately cancel its registration for the impugned mark under Registration No.3732365 by filing a request with the Indian Trade Marks Registry, Ahmedabad and that the plaintiff challenged their claim of 'coining' the word 'SWIGGY's'. As no response was received to the rejoinder, the plaintiff decided to pursue appropriate remedies under law against the defendants. However, owing to the onset of the COVID 19 pandemic in early 2020, and the related complications caused by the pandemic to the plaintiff's business and operations, the plaintiff had to devote its finite resources to guiding its business through multiple waves of the pandemic and unfortunately could not immediately pursue further action against the defendants.
13. The defendant No.6 has registered the impugned mark which consists of the term SWIGGY which is identical to the petitioner's trade mark SWIGGY and that the same was done with a clear intention of trading upon the immense goodwill of the plaintiff which it has built in the eyes and minds of the general masses of India. The term SWIGGY in the impugned mark is followed by an /12/ Com.OS.No.178/2023 apostrophe S, which further draws association with the plaintiff and that the impugned goods are originating from the plaintiff, which is not the case. The plaintiff has extended its services into a number of segments, the term SWIGGY along with an artistic device of a rabbit holding a chocolate stick may be perceived among the masses as an extension of the plaintiff's services into manufacturing segment more relatable to kids.
14. Even at the time when the defendant No.6 had applied for registration of the captioned mark, the plaintiff's website and app were widely popular and extensively used by consumers all throughout India and given the unique nature of the mark, had acquired a distinctive identity with the services of the plaintiff. The defendants are clearly attempting to step upon the coat tails of the plaintiff's widely acknowledged goodwill and reputation. Any use of impugned mark by the defendants is highly likely to give an impression to the public at large that the impugned mark has a connection with the plaintiff's well-known trade mark SWIGGY. The impugned mark prominently features the term SWIGGY which simply gives the impression that it is associated or has some nexus with the plaintiff's well-known trade mark SWIGGY and its business under the same. That upon considering the fact that the plaintiff is a very large and well-known marketplace, brand and features numerous household and daily needs goods for sale on its platform, /13/ Com.OS.No.178/2023 the public at large is likely to get deceived that the defendants' products i.e. confectionery emanate from the plaintiff, especially considering that the plaintiff through its mobile app and website is already delivering large scale edibles including but not limited to confectionery items. With the massive popularity of the trade mark SWIGGY, the consumers are bound to believe that the plaintiff has launched its line of confectionery specifically since the plaintiff's delivery executives are visible all-around cities wearing the SWIGGY logo T-shirts. In contrast to the plaintiff, the defendants do not have any brand recognition or market reputation of their own. That an average consumer with imperfect recollection is therefore likely to associate the goods of the defendants with the plaintiff. Accordingly plaintiff suffers due to the illegal acts of the defendants. That being unable to fund any product bearing on any e-commerce website or the defendants' own website, in order to confirm the extent of the usage of impugned mark, the plaintiff deputed M/s. InstaQuest Consulting Private Limited, an independent investigating agency, to make inquiries about the defendants' business, presence in the market and claims as made under their trade mark application. That information was gathered through internet searches and on-site visits to defendants premises and nearby areas to gauge the extent of usage of the impugned mark. That through investigation it was revealed that the defendant No.6 is a partnership firm and is in the business of manufacturing and /14/ Com.OS.No.178/2023 supplying of chocolate flavoured dry fruits, roasted dry fruits, and flavoured dry fruits for the past 10 years under their brand name "Chocofarm" and soon plan to launch chocolates under the trademark SWIGGY's.
15. Interestingly, the investigating agency was also informed that the plaintiff takes defendants' permission before using their well-known trade mark SWIGGY. That upon investigation, no product with the impugned mark or use of the impugned mark was found at the defendants' premises. The impugned mark was not even found on the brochure provided to him and the details of affidavit capturing the information gathered during investigation is filed in the present proceedings.
16. The conduct of the defendants thus clearly reflects their malafide intention behind addition of the device of a rabbit holding a chocolate stick to the plaintiff's well-known trade mark SWIGGY. It is apparent and indisputable that the defendants do not intend to create a separate brand value for themselves, but instead misuse the goodwill and reputation of the plaintiff. The defendants intends in a scheming manner to adopt the well-known trademark of the plaintiff for its line of products, in order to dupe and confuse the consumers and common public of its association with the plaintiff company and its well-known trademark SWIGGY. The action of the defendants substantiates the malafides of the defendants, to ride /15/ Com.OS.No.178/2023 upon the well-known stature, goodwill and well-established reputation of the plaintiff and make unjust profits. That the defendants are not trying to create any independent brand recognition for their mark and are preparing to try to push their products into the market under the plaintiff's well-known trade mark SWIGGY in order to pass off its goods as that of the plaintiffs and dupe the unsuspecting public at large.
17. The adoption by the defendants claiming to be the proprietor of the impugned mark thereof is completely malafide and dishonest and is contrary to the existing law. The defendants are bound to have been aware of the overwhelming goodwill and reputation of the plaintiff's services under the well-known trade mark SWIGGY. The defendants with a dishonest and malafide intention to ride upon and benefit from the plaintiff's hard-earned reputation and goodwill, has registered a mark which is identical to the plaintiff's well-known and prior trade mark SWIGGY. The defendants have registered the mark SWIGGY'S being fully aware of the plaintiff, its business, its trademark registrations, its goodwill and reputation and clearly intends to misinform and misguide the public at large by their intended use and launch of the products under the mark so registered and claiming itself to be the prior registered users of the plaintiff's well-known trademark.
/16/ Com.OS.No.178/2023
18. The plaintiff has additionally filed petition U/S.47 and 57 of Trade Marks Act for removal of the defendants infringing trade mark from the register and cancellation of registration bearing No.3732265 in Class 30 before the Hon'ble High Court of Gujarat and the Hon'ble High Court was pleased to issue notice to the defendant No.6 and the Trade Marks Registry, Ahmedabad returnable on 20/2/2023. The plaintiff is likely to suffer incalculable loss on account of defendants' intended act of infringement and passing-off plaintiffs well-known trade mark SWIGGY. The defendants with an intent of riding on the coattails of plaintiff's well established reputation and goodwill across the country, are threatening to cause the plaintiff substantial loss of business earnings as well as a considerable erosion of goodwill, in addition to the proven phenomenon of 'cascading effect', the ill-effects of which are extreme hard to mitigate, to say the least. Great harm has already been caused to the plaintiffs by unscrupulous entities such as the defendants, who display scant regard for the law and the multilaterally administered regime for the protection of intellectual property rights. Hence the plaintiff ha filed the present suit against the defendants.
19. In spite of service of suit summons through RPAD, the defendants remained absent and are placed exparte.
/17/ Com.OS.No.178/2023
20. Sri.Satyavrat Sharma, the Authorized Signatory of the Plaintiff adduced his evidence as PW1. He has exhibited Ex.P1 to Ex.P14 and closed his evidence.
21. After the conclusion of the trial, I have heard the arguments addressed by the learned counsel for the plaintiff. The Plaintiff has also submitted written submissions in support of their case. The learned counsel for the plaintiff has relied on the following decisions in support of his case:
Sl.No. Names of parties Citation
01. HTC CORPORATION Vs. Mr.L V DEGAO 2022:DHC:1229
&
ORS
02. Mr L V DEGAO & ORS V. 2022:DHC:3062-DB
HTC CORPORATION
03. L V DEAGAO & ORS VHTC SLP(C)DIARY
CORPORATION & ORS No(S)35069/2022
dated:13.04.2023
04. Daimler Benz Aktiegesellschaft AIR 1994 Delhi 239
and Ors. Vs.Hybo Hindustan
05. Midas Hygiene Industries P.Ltd. (2004)3SCC90
& Ors Vs. Sudhir Bhatia & Ors
06. BPI Sports LLC V Saurabh Gulati DHC:C.O.(COMM.
& Anr IPD-TM) 16/2021
& I.A.13589/2021
07. Neon Laboratories Ltd., Vs. (2016) 2 SCC 672
Medical Technologies Ltd., & Ors.
08. Abdul Rasheed & Ors. Vs. E L Baik Food MANU/IC/0035/2015 Systems Co.,
09. Russell Corp.Australia Pty.Ltd., Vs. C.O.(COMM.IPD-
Ashok Mahajan TM) 164/2022
10. Nokia Corporation & Ors. Vs.Movie MANU/DE/3461/
/18/
Com.OS.No.178/2023
Express & Ors. 2017
11. Jockey International Inc & MANU/DE/1312/2014
Ors. Vs. R.Chandra Mohan & Ors.
22. I have gone through the materials available on record.
23. The following points arise for my determination:
01. Whether the plaintiff proves that the defendants by using impugned trade mark have infringed upon the "SWIGGY", registered trade mark of the Plaintiff?
02. Whether the plaintiff proves that the impugned trade mark of the defendants is identical and deceptively similar to the "SWIGGY", registered trade mark of the Plaintiff?
03. Whether the plaintiff is entitled for compensatory and punitive damages? If so what is the quantum of compensation?
04. Whether the plaintiff proves that it is entitled for the relief of rendition of accounts of profits earned by the defendants by reason of infringement and passing off of the Plaintiff's Registered Trade Mark?
05. Whether the plaintiff is entitled for the injunctive reliefs as prayed in the plaint?
06. What Order/decree?
24. My findings on the above points are as follows:-
Point No. 1 to 3 & 5: In the AFFIRMATIVE Point No.4 : In the NEGATIVE;
Point No.6 : As per final order
for the following
/19/
Com.OS.No.178/2023
REASONS
25. Point No.1 to 5: The plaintiff has filed this suit against the defendants praying the Court to grant :
(a) a decree for permanent injunction restraining infringement of trademark by the defendants, their principal officers, partners, directors, agents, franchisees, servants and all others acting for and on their behalf, from manufacturing products, selling, using, advertising, registering, applying the trademark Swiggy in full or in parts and/or any deceptively similar mark to plaintiff's well-known trade mark Swiggy.
(b) a Decree for Permanent Injunction restraining passing off by the defendants, their principal officers, partners, directors, agents, franchisees, servants and all other acting for and, on their behalf, from manufacturing products, selling, using, advertising, registering, applying the trademark Swiggy in full or in parts and/or any deceptively similar mark to plaintiff's well- known trade mark Swiggy.
(c) a decree for rendition of accounts of profits illegally earned by the defendants by reason of infringement and passing off of the plaintiff's trade mark.
(d) a decree for payment of damages of ₹.10 lakhs by the defendants in favour of the plaintiff.
/20/ Com.OS.No.178/2023
(e) a decree of costs in the present proceedings in favour of the plaintiff companies and against the defendants and such other orders.
26. Before proceeding with the facts of the case it is germane to determine the jurisdiction of the Court to entertain the suit.
27. Section 6 of Commercial Courts Act, 2015 determines jurisdiction of Commercial Courts, which reads as under:
[Section : 6] Jurisdiction of Commercial Court: The Commercial Court shall have jurisdiction to try all suits and applications relating to a commercial dispute of a Specified Value arising out of the entire territory of the State over which it has been vested territorial jurisdiction.
Explanation.- For the purposes of this section, a commercial dispute shall be considered to arise out of the entire territory of the State over which a Commercial Court has been vested jurisdiction, if the suit or application relating to such commercial dispute has been instituted as per the provisions of Sections 16 to section 20 of the Code of Civil Procedure, 1908.
A commercial dispute encompasses a dispute relating to trademarks as provided under Section 2(1)(xvii) of the Commercial Courts Act, 2015 which reads that /21/ Com.OS.No.178/2023 "intellectual property rights relating to registered and unregistered trademarks, copyright, patent, design, domain names, geographical indications and semiconductor integrated circuits";
28. The Plaintiff has filed the suit for the relief of injunction and damages. The Plaintiff has valued the suit reliefs at ₹.10,03,000/- and has paid Court Fee of ₹.62,775/- thereon. The dispute is a commercial dispute as enshrined under Section 2(1)(xvii) of Commercial Courts Act, 2015 and of more than specified value. In view of Section 6 and 2(1)(xvii) of Commercial Courts Act, 2015, this Court has inherent jurisdiction to try the Suit.
29. The defendants are carrying on their business at Rajkot, Gujarat. In order to determine the territorial jurisdiction to try the suit it is necessary to refer to Section 134 of Trade Marks Act, 1999, which reads as under:
TRADEMARKS ACT, 1999 [Section:134] Suit for infringement, etc., to be instituted before District Court (1) No suit-
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use /22/ Com.OS.No.178/2023 by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and
(b) of sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.
Explanation.-For the purposes of sub-
section (2),"person "includes the registered proprietor and the registered user.
30. In view of Section 134(2) of Trade Marks Act, 1999, this Court has territorial jurisdiction to try the suit as the Plaintiff has its registered office within the territorial jurisdiction of this Court.
31. Sri.Satyavrat Sharma, the Authorized Signatory of the Plaintiff adduced his evidence as PW1. He has exhibited Ex.P1 to Ex.P14 and closed his evidence. The PW1 has reiterated the plaint averments in his affidavit evidence.
/23/ Com.OS.No.178/2023
32. The allegation of the plaintiff that the defendants have dishonestly adopted its trade mark thereby infringed the trade mark of the plaintiff is to be considered in the backdrop of settled principles of comparison.
a) Where the two marks are identical no further questions arise; for then the infringement is made out.
b) When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark is likely to deceive or cause confusion and in relation to goods in respect of which it is registered.
c) Where common marks are included in the trade marks to be compared or in one or in one of them, the proper course is to look at the marks as a whole and not to disregard the parts which are common.
d) The question whether the two marks are as similar as likely to cause confusion or deceive is one of the first impression. It is for the Court to decide this question;
e) The question has to be approached by applying the doctrine of fading memory, i.e. from /24/ Com.OS.No.178/2023 the point of view of a man of average intelligence having imperfect recollection.
f) Whether the overall visual and phonetic similarity of the two marks is likely to deceive such man or cause confusion that he may mistake the goods of the Defendant for those of the plaintiff;
g) The other questions are:
i. Who are the persons who are likely to be deceived, and ii. What rules of comparison are to be adopted in judging whether such resemblance exists.
iii. No one can copy an essential part or predominant part of a trade mark and the benefit of prior use doctrine will also be available to an essential/prominent /predominant part of trade mark i.e. an important part of a trade mark of another person.
33. It is the case of the plaintiff that it is doing business under the Trade Mark and Trade name 'SWIGGY' and has a domain name www.swiggy.com. The plaintiff has commenced its business as a food ordering and delivering platform in 2014. The Plaintiff operates an online marketplace platform through /25/ Com.OS.No.178/2023 its website and application for mobile and handheld devices under name SWIGGY. The plaintiff through its dedicated service has earned public recognition and popularity. The Plaintiff has launched its quick commerce offering "Swiggy Instamart" which has gained tremendous popularity. The business of the plaintiff under the well known Trade Mark 'SWIGGY" is present across 500+ cities, pan India, and has approximately 2,50,000+ restaurant partners, 5,000+ employees and 3,50,000 delivery executives across the country.
34. The plaintiff has launched its mobile application for delivery of food and drinks under the Trade Mark 'SWIGGY". On account of plaintiff's services the said Mobile Application is ranked No:2 in the Country. The plaintiff's mobile application has 4.5 rating and has 10,00,000 followers in the official Facebook page; 4,00,000 followers in the official Instagram page; 2,00,000 followers in Twitter account and in YouTube has more than 2,50,000 subscribers and 12,00,000 followers in official Linkedin Page as on 15.12.2022.
35. The Plaintiff is the owner of domain name www.swiggy.com since 2013. The plaintiff is the owner of numerous other SWIGGY and formative domain names. The plaintiff has secured registrations in respect of word mark 'SWIGGY" and 'SWIGGY" logo marks and other "SWIGGY' /26/ Com.OS.No.178/2023 formative marks in various classes in India. The Plaintiff has furnished a few of such registrations as per Ex.P3. A perusal of Ex.P3 shows that the Plaintiff has obtained registration of its Trade Marks as under:
Registration Status &
Trade Filing
No. validity Class
Mark Date
date
2773664 SWIGGY 14.07.2014 Registered Class-43
14.07.2024
3077443 13.10.2015 Registered Class-39
13.10.2025
30748340 SWIGGY 13.10.2015 Registered Class-39
13.10.2025
4237629 SWIGGY 17.07.2019 Registered Cass-35
17.07.2029
4237630 SWIGGY 17.07.2019 Registered Class-38
17.07.2029
4237631 SWIGGY 17.07.2019 Registered Class-9
17.07.2029
3078323 13.10.2015 Registered Class-30
13.10.2025
36. From the recitals of Ex.P3 Certificates it is evident that the plaintiff has obtained Registration of its trade marks 'SWIGGY" under different classes to render different services /27/ Com.OS.No.178/2023 provided under respective classes.
37. The Plaintiff has exhibited Audit report for the financial year 2021-22 as per Ex.P12. From the plaint averments and the entries in the Audit Report shows that the expenditure incurred by the plaintiff towards advertisement has been increased from INR 0.265 Cr. in April 2014-March 2015 to INR 1,884.5 in April 2021- March 2022. The revenue turnover of the plaintiff has been a staggering INR 3,557 in April 2021-March 2022 from INR 0.0741 in April 2014-March 2015. The materials available on record show that the business of the plaintiff has been ascending year after years.
38. The Plaintiff has exhibited Ex.P7/ copy of notification issued by the Trade Mark Registry in the Trade Marks Journal No.2065 dated:15.08.2022. At serial No:15, the name of the plaintiff is notified among well known Trade Marks.
39. The Plaintiff has exhibited WIPO UDRP ORDER DATED:27.11.2018 as per Ex.P10. In a dispute between the Plaintiff and Domain By Proxy, LLC/Somprakash Sinha Roy case No.D2018-2166, WIPO Administrative Panel vide order dated:27.11.2018 passed an order that the disputed domain name <swiggy.fit> be transferred to the Complainant i.e., the Plaintiff herein.
/28/ Com.OS.No.178/2023
40. From the above materials it is evident that the plaintiff has been in the business since 2013. The Plaintiff has earned tremendous good will, reputation, popularity and public recognition apart from having good turnover added that the Trade Marks of the Plaintiff has been recognized as one of the Well-known marks. The Plaintiff being the Registered User of Trademark 'SWIGGY" and its variant has a statutory right to protect the same from being misused by other players.
41. It is the contention of the plaintiff that the defendants No.1 to 5 are the partners of defendant No.6 and the defendant No.6 is engaged in manufacturing of chocolates, chocolate coated nuts, masala items etc. Further the defendant No.6 is exporter, manufacturer, wholesaler and supplier of confectioneries such as roasted almond, chocofarm raisins, chocolate raisin, handmade chocolate, cranberry chocolate etc. The defendants No.1 to 5 being the partners of defendant No.6 are responsible for making day to day business decisions. It is thus apparent that any business decision including but not limited to regular and routine work, are taken by the defendants No.1 to 5 in their capacity as the business partners. At the time when the defendants applied for registration of the SWIGGY mark in favour of defendant No.6, the plaintiff's service was widely known and used across the country and further the term SWIGGY is a unique word and does not bear resemblance to any generic /29/ Com.OS.No.178/2023 word in English or any other major Indian languages and therefore cannot have been honestly coined and/or adopted by the defendants, four years after adoption by the plaintiff. The defendants No.1 to 5 despite complete knowledge of the plaintiff's well-known trademark SWIGGY, made an application before the Trademark Registry for registration of deceptively similar and identical mark 'SWIGGY' on 'proposed to be used' basis for exporting, manufacturing, wholesaling and supplying confectioneries. Ex.P4 shows that the defendants have obtained Registration of their Trade Mark on 19.01.2018 valid up to 19.01.2028 under Class 30 having Trade Mark No:3732365.
42. The Plaintiff is contending that the defendants' registered mark and device 'SWIGGY'S' finds no mention on its products or its website as on date i.e. after more than 4 years of registration of the same.
43. The plaintiff came to know about the fraudulent use of impugned Mark on 'proposed to be used' basis bearing Registration No.3732365, that incorporated the plaintiff's well- known trade mark SWIGGY. The plaintiff immediately wrote to defendant No.6 through email dated 31/1/2020, requisitioning them to cease and desist from future use of the plaintiff's trade mark SWIGGY as part of the impugned mark. The defendant No.6 replied to the plaintiff's email dated 28/2/2020 stating that the /30/ Com.OS.No.178/2023 impugned mark was coined by them in 2018, that the goods under the impugned mark are different from those of interest to the plaintiff; and that the impugned mark is entirely different from one another. The plaintiff through counsels responded to the reply letter dated 24/4/2020, reiterating its prior rights in the well-known trade mark SWIGGY, requisitioning the defendant No.6 to stop using the plaintiff's trade mark SWIGGY as part of the impugned mark and immediately cancel its registration for the impugned mark under Registration No.3732365 by filing a request with the Indian Trade Marks Registry, Ahmedabad. The plaintiff has challenged the claim of the defendant that they have coined the word 'SWIGGY'S'. As no response was received to the rejoinder, the plaintiff decided to the pursue appropriate remedies under law against the defendants. However, owing to the onset of the COVID 19 pandemic in early 2020, and the related complications caused by the pandemic to the plaintiff's business and operations, the plaintiff had to devote its finite resources to guiding its business through multiple waves of the pandemic and unfortunately could not immediately pursue further action against the defendants. The Plaintiff has exhibited the e-mail correspondence exchanged between the plaintiff and defendant as per Ex.P9.
44. In order to determine the claim of the plaintiff it is useful to refer to Section 28 of Trade Marks Act, 1999 which /31/ Com.OS.No.178/2023 confers following rights upon registration of Trade Mark.
Section 28 of TRADE MARKS ACT, 1999 reads as under:
[Section : 28]Rights conferred by registration (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trademarks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trademarks shall not(except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trademarks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
/32/ Com.OS.No.178/2023
45. Thus by virtue of Section 28 of Trade Marks Act, 1999 the plaintiffs have acquired statutory rights regarding the use of their trade mark "SWIGGY". It has been more than ten years since the plaintiff is carrying on the business under the Trade Mark "SWIGGY".
46. The Ex.P4 shows that the defendants have also obtained registration for their Trade Mark "on proposed to be used" basis Bg.Regn.No:3732365 under Class 30 for manufacturing chocolate and confectionery products, wafers, namkeens, farsan, and fryums, coffee, tea, coco and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bead, pastries and confectionery; edible ices; sugar, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments); spices; ice (frozen water), on 19.01.2018.
47. A comparison of the Registered Trade Mark of the Plaintiff and the Registered Trade Mark of the defendants goes to show that the impugned mark is created by adding an artistic device mark i.e. a rabbit holding a chocolate stick circled by words SWIGGY with apostrophe S.
48. Now a question crops up whether the defendants are protected by Section 28 of the Trade Marks Act, 1999 as they have got their Trade Mark registered with the /33/ Com.OS.No.178/2023 competent Authority.
49. Section 29 of Trade Marks Act, 1999 enumerates the incidents of infringement of Trade Marks, which reads as under:
TRADEMARKS ACT,1999 [Section : 29]Infringement of registered trademarks (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark;
Or (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likelyto cause confusion on the part of the public, or which is likely to have an /34/ Com.OS.No.178/2023 association with the registered trade mark.
In any case falling under clause (c) of sub- section (2), the court shall presume that it is likely to cause confusion on the part of the public.
A registered trade mark is infringed by a person who, not being a registered proprietor ora person using by way of permitted use, uses in the course of trade, a mark which-is identical with or similar to the registered trade mark; and is used in relation to goods or services which are not similar to those for which the trade mark is registered;
and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
For the purposes of this section, a person uses a registered mark, if, in particular, he- (a) affixes it to goods or the packaging thereof;
offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trademark;
imports or exports goods under the
/35/
Com.OS.No.178/2023
mark; or
uses the registered trade mark
on business papers or in advertising. A registered trade mark is infringed by a person who applies such registered trademark to material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
A registered trade mark is infringed by any advertising of that trademark if such advertising- takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or is detrimental to its distinctive character;
or is against the reputation of the trademark.
Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
50. The Hon'ble High Court of Delhi has explained the factors to be considered when two persons are claiming that they are the registered users of their respective /36/ Com.OS.No.178/2023 Trademarks.
51. Two persons may have the same Trade Mark registered in their name: (i) for identical or (ii) similar of (iii) different goods;
a) Ordinarily if two Trade Marks are validly registered, both the registered proprietors can use the Trade marks to the exclusivity of third parties, but cannot assert their rights against each other;
b) However in certain situations, registration of the later Trade Mark may be refused registration or cancelled. These situations are:
(i) when deception or confusion results; (ii) there is dishonest user, (iii) subsequent use without due cause, (iv) there is bad faith, or (v) dilution of the distinctiveness of a prior registered Trade Mark may occur;
c) Therefore, these factors would be relevant to decide whether the subsequent user/registered proprietor should be restrained from using his Trade mark, even if it was registered;
d) Certain other aspects would also aid this determination, for example, (i) whether user is only to indicate origin of the /37/ Com.OS.No.178/2023 goods, (ii) the reputation of the Trade Mark,
(iii) whether it is "Well-Known", (iv) whether the prior user has established acquisition of distinctiveness, or (v) whether he had acquiesced in the latter's user of the same Trade Mark and if so, to what effect.
52. The materials available on record show that the Plaintiff is the prior user of the Registered Trade Mark. Subsequently, the defendant has adopted the impugned mark.
53. The term SWIGGY in the impugned mark is followed by an apostrophe S, which further draws association with the plaintiff and that the impugned goods are originating from the plaintiff, which is not the case. The plaintiff is providing services in various segments. A look at the impugned mark would give an impression to an ordinary prudent customer that the plaintiff has adopted another Trade Mark in addition to its several Trade marks. The prominent words SWIGGY in the impugned mark would justify such impression. It is significant to note that by the time the defendants applied for registration of their impugned mark the plaintiff has already established in the market and its Registered Trade Mark had already attained popularity and public recognition. An ordinary prudent customer has no reason to inquire whether the impugned mark belongs to the plaintiff or other players.
/38/ Com.OS.No.178/2023 The unique nature of Registered Trade Mark of the plaintiff had acquired a distinctive identity with the services of the plaintiff. In such circumstances adoption of impugned mark by the defendants is clearly establishes the apprehension of the plaintiff that the defendants are piggy riding on the plaintiff's good will and reputation.
54. The plaintiff had engaged the services of M/s.InstaQuest Consulting Private Limited, an independent investigating agency, to make inquiries about the defendants' business, presence in the market and claims as made under their trade mark application. The Plaintiff has exhibited the affidavit sworn to by Mr.Vincent Jose, the director of M/S.InstaQuest Consulting Private Limited. Mr.Vincent Jose has deposed that through investigation it was revealed that the defendant No.6 is a partnership firm and is in the business of manufacturing and supplying of chocolate flavoured dry fruits, roasted dry fruits, and flavoured dry fruits for the past 10 years under their brand name "Chocofarm" and soon plans to launch chocolates under the trademark SWIGGY's.
55. Mr.Vincent Jose has stated that he was informed that the plaintiff takes defendants' permission before using their well-known trade mark SWIGGY. That upon investigation, no product with the impugned mark or use of the impugned mark was found at the defendants' premises. The impugned mark /39/ Com.OS.No.178/2023 was not even found on the brochure provided to Mr.Vincent Jose.
56. A perusal of the affidavit filed by Mr.Vincent Jose shows that the defendants have been using the impugned mark which is deceptively similar to the Registered Trade Mark of the Plaintiffs. It is evident that the defendants have adopted the impugned mark with an intention to take undue advantage of the good will, reputation and market of the plaintiff. The adoption of impugned mark by the defendants confuses the consumers and common public of its association with the plaintiff company and its well-known trademark SWIGGY. The defendants instead of creating their own independent brand recognition are trying to bank upon the Plaintiff's well-known trade mark SWIGGY in order to pass off their goods as that of plaintiffs and dupe the unsuspecting public at large.
57. The Plaintiff has exhibited Ex.P5 copy of the Petition filed under Section 47 and 57 of Trade Marks Act for the removal of the defendants infringing trade mark from the register and cancellation of registration bearing No.3732265 on class 30 before the Hon'ble High Court of Gujarat and the Hon'ble High Court was pleased to issue notice to the defendant No.6 and the Trade Marks Registry, Ahmedabad returnable on 20/2/2023.
/40/ Com.OS.No.178/2023
58. Now, the plaintiff has filed the present suit to protect their interest. The plaintiff is likely to suffer incalculable loss on account of defendants' intended act of infringement and passing-of plaintiffs well-known trade mark SWIGGY. The defendants by adopting the impugned mark to take shelter under the plaintiff's well established reputation and goodwill across the country, are threatening to cause the plaintiff substantial loss of business earnings as well as a considerable erosion of goodwill, in addition to the proven phenomenon of 'cascading effect', the ill-effects of which are extreme hard to mitigate. The plaintiff will be put to irreparable loss and injury if the defendants are allowed to continue their illegal acts. The defendants have no respect for rule of law. Under law the plaintiff is entitled to protect its rights as prior registered user of its Trade Mark.
59. From the materials available on record it is evident that the defendants are not the Honest Concurrent users of the impugned mark. In spite of issuance of legal notice, the defendants have not desisted from using the impugned mark whch amounts to infringement of registered Trade Mark of the plaintiff, which is not a countenance in law.
/41/ Com.OS.No.178/2023
60. Section 135 of Trade Marks Act, 1999 provides remedy for the aggrieved registered Trade Mark holder for the breach of his rights, which reads as under:
TRADEMARKS ACT,1999 [Section: 135]Relief in suits for infringement or for passing off(1) The relief which a court may grant in any suit for infringement or for passing off referred to in Section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery up of the infringing labels and marks for destruction or erasure.
The order of injunction under sub- section (1) may include an ex parte injunction or any interlocutory order for any of the following matters, namely:-
(a) For discovery of documents;
(b) preserving of infringing goods,
documents or other evidence which are related to the subject-matter of the suit;
(c) restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.
(d) Notwithstanding anything contained in sub-section (1), the court shall /42/ Com.OS.No.178/2023 not grant relief by way of damages (other than nominal damages) or on account of profits in any case-
(e) where in a suit for infringement of a trade mark, the infringement
complained of is in relation to a certification trademark or collective mark; or
(f) where in a suit for infringement the defendant satisfies the court-
(i) that at the time he commenced to use the trade mark complained of in the suit, he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was a registered user using by way of permitted use; and
(ii) that when he became aware of the existence and nature of the plaintiff's right in the trade mark, he forthwith ceased to use the trade mark in relation to goods or services in respect of which it was registered; or
(b) where in a suit for passing off,the defendant satisfies the court-
(i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trademark of the plaintiff was in use; and
(ii) that when he became aware of the existence and nature of the plaintiff's trade mark he forthwith ceased to use the trade mark complained of.
61. The evidence of PW1 remained unchallenged as the /43/ Com.OS.No.178/2023 defendants remained exparte. The evidence of plaintiffs available on record shows that the defendants by using the impugned mark, which is identical and deceptively similar to the registered trademark of the plaintiffs "SWIGGY" are causing loss of reputation, goodwill and also the plaintiffs' established business.
62. As per Section 135 of Trade Marks Act, 1999 the defendant is entitled to plead and prove the exceptions carved out in that section to resist the claim of the plaintiffs. The defendants have failed to appear before the Court and contest the case of the plaintiff by placing their defense on record. Thus the defendants have failed to canvass the exceptions carved out in Section 135 of Trade Marks Act,1999. In such circumstances,the Court has no option but to accept the case put forth by the Plaintiff.
63. The Plaintiffs are contending that the unwary customers are being deceived as to the origin of goods or business. The plaintiff has no access to the accounts of the defendants and the defendants are liable to render their accounts to the plaintiff and to make good to the plaintiffs loss of business, which the defendants has wrongfully earned.
64. The plaintiff is claiming the relief of rendition of accounts as also damages against the defendants. In view of Section 135(1) /44/ Com.OS.No.178/2023 of the Act, the plaintiff is not entitled to claim both the relief of damages and rendition of accounts. In this regard it is useful to refer to the following decisions:-
Titan Industries vs Nitin P. Jain And Anr. on 6 December, 2005 126 (2006) DLT 132..
2006 (32) PTC 95 Del A claimant who has been successful in an action for trade mark infringement or passing of may not have sufficient knowledge of the defendant's activities to make an informed decision as to whether he should seek an inquiry as to damages or an account of profits. In such a case he may seek disclosure before making his election: Island Records v.Tring. Disclosure given in such circumstances should be limited to that which is necessary for the claimant to make an informed decision within a reasonable time; he is not entitled to all the disclosure which would be given in the inquiry, and in appropriate circumstances an audited schedule of infringing dealings may be a substitute for documentary disclosure."
18. Thus Section 106(1) of the Act has made no change in the common law principle but as only put the existing principle into statutory form. Even, in India, this rule that a successful plaintiff in an action for infringement could elect between an inquiry as to damages /45/ Com.OS.No.178/2023 and an account of profits is followed since the decision in Kinmond v. Jackson reported as (1878) 3 Cal. In Juggilal Kamalapat v. The Swadeshi Mills Co.Ltd. reported as (1929) 50 I.A.1 the court opined that a plaintiff who originally claimed an account of profits may give up this claim subsequently at the trial and ask for damages instead.
19. No doubt, in view of the aforesaid provisions normally the plaintiff should have made the two prayers, namely, for damages and rendition of accounts, in the alternative as under
the Act the plaintiff could be given only one of the two reliefs. However, since the infringement under the Copyright Act, 1957 is also alleged, the manner in which the two reliefs are worded, cannot be faulted with. I, therefore, do not find any mrit in this application which is accordingly dismissed.
E-Merge Tech Global Services P Ltd vs Mr.M.R.Vindhyasagar 31 December, 2007 IN THE HIGH COURT OF JUDICATURE AT MADRAS ORDERS RESERVED ON :10.12.2021 PRONOUNCING ORDERS ON : 15.12.2021 Civil Suit No.258 of 2020 (Comm.Suits)
29. What is important to notice is the fact that the Supreme Court had refused to resort to order an account of profits where the damages were indentifiable in the normal way. This has a /46/ Com.OS.No.178/2023 direct bearing on the case at hand, since there exists unrebutted material providing a legitimate basis on which the Court can base its conclusion to assess damages. This Court also finds that there is nothing "exceptional" in the facts of this case so as to warrant a deviation from the general principle.
30. To complete the picture this Court also notices that the principle that a plaintiff ought to elect between an account of profits or damages has been reiterated by the Bombay High Court in J.C. Eno. Ltd. v. Vishnu Chemical Co., AIR 1941 Bom 3 :
"In Edn. 6 of Kerly on Trade Mark, at p.
517, it is said that the plaintiff may, in general, make his choice of either an account and payment to him of the profits which the defendant has gained by his wrongful conduct, or an enquiry as to, and payment of, the damages occasioned to the plaintiff by reason of it, https://www.mhc.tn.gov.in/judis C.S.No.258 of 2020 and (1905) 22 RPC 341 [('05) 22 RPC 341 : 92 LT 511 : 21 TLR 418, Weingarten Bros. v. Charles Bayer & Co.] is relied upon in support of that proposition. Towards the end of his judgment at p. 351, Lord Macnaghten said: Ever since the case in (1863) 1 DE GJ & S. 185 [(1863) 1 De GJ & S. 185 : 9 Jur (NS) 479 : 7 LT (NS) 768 : 11 WR 328 : 137 RR 202, Edelsten v. Edelsten.] it has been the established rule that a plaintiff succeeding in a case of this sort may at his option take an inquiry as to damages or an inquiry as to profits. I do not see any ground for /47/ Com.OS.No.178/2023 departing from that practice in the present case."
31. In Lim OO Tong v. Tan Kah Cheng, 2013 SCC OnLine MYCA 264, the Malaysian Court of Appeal has taken a similar view, and had observed as under:
"It must also be emphasised that the right to an account of profits is entirely distinct from the right to damages. Unlike an award of damages, an account of profits is restitutionary because the plaintiff need not have suffered any loss. What the Plaintiff needs to prove is that the Defendant is the accounting party and that the latter is owing the Plaintiff certain sums though the quantum is uncertain, for it is subject to inquiries before the court. A claim for damages and an account of profits are alternative and inconsistent remedies between which the plaintiff must elect."
https://www.mhc.tn.gov.in/judis C.S.No.258 of 2020
32. From the aforesaid decisions, it is clear that the contention of the learned counsel for the plaintiff that the Plaintiff Company is entitled to both compensatory damages as well as an account of profits cannot be accepted. The question then is : have the plaintiff's made out any exceptional case to deviate from the general principle and seek for an account of profits? This Court is of the considered view that an order directing an account of profits developed in response to cases where the loss suffered could not be measured adequately or if measured could/would not adequately place the plaintiff in /48/ Com.OS.No.178/2023 the same position as if the breach had not occurred. In such a situation, the Court was empowered to justly compensate the plaintiff by assessing damages with reference to the gains made by the defendant instead of conventionally assessing it with reference to the loss caused to the plaintiff.
65. In view of the ratio of above decisions, it is clear that the plaintiff was required to opt for either of reliefs i.e, damages or rendition of accounts. In this case, the plaintiff has not exercised any such option. The relief of rendition of accounts is an equitable relief and the relief of damages is a common law remedy as such I am of the opinion that the plaintiff is not entitled for the relief of rendition of accounts.
66. The plaintiff is contending that on account of illegal acts of defendants, they have suffered loss of business, goodwill, reputation and proprietary rights in its registered trade mark. The defendants are liable to pay damages to the plaintiff which the plaintiff conservatively and in a restricted manner claims to the tune of ₹.10,00,000/- even though the plaintiff is entitled to claim much more.
67. It is obvious from the circumstances of the case that the plaintiff has no access to the accounts of the business of the defendant. The plaintiff is unable to gauge /49/ Com.OS.No.178/2023 the loss caused to it on account of deceptive use of its registered trade mark by the defendants in terms of money. In such circumstances the plaintiff is entitled for compensation.
68. The Plaintiff has made out a case for grant of damages. The law has recognized three types of damages viz.,
1) Compensatory damages,
2) Nominal damages and
3) Punitive damages.
69. Generally compensatory damages are awarded to restore the position of plaintiff who has suffered loss on account of tortuous acts of tort feasor. The Nominal damages are awarded to the plaintiff in recognition of breach of his legal right and where he is unable to prove loss suffered by him on account of tortuous acts of defendant. The Punitive damages are awarded with a view to punish willful, malicious and oppressive acts of the wrong doer and as a preventive step to deter others from indulging in such things.
70. In the case on hand the plaintiff is able to establish that it has been in the business since 2013 and /50/ Com.OS.No.178/2023 has developed good rapport and good will and has established a reputed position in the food tech industry. The Plaintiff is unable to prove with accounts the loss suffered by them for want of particulars of the accounts maintained by defendant. As long as the defendants continues to use impugned mark the loss suffered by the plaintiff both pecuniary and non-pecuniary continues and emboldens others to follow the foot prints of the defendants. In such circumstances the plaintiff will be put to irreparable loss and injury which cannot be compensated in terms of money.
71. In this regard I rely upon the following decisions of Hon'ble High Court of Delhi.
TIME INCORPORATED Vs. LOKESH SRIVASTAVA AND ANOTHER (2005)4 Civil LJ 238 DELHI HIGH COURT " The award of compensatory damages to a plaintiff is aimed at compensating him for the loss suffered by him whereas punitive damages are aimed at deterring a wrong doer and the like minded from indulging in such unlawful activities. Whenever an action has criminal propensity also the punitive damages are clearly called for so that the tendency to violate the laws and infringe the rights of others with a view to make money is curbed. The punitive damages are founded on the philosophy of corrective /51/ Com.OS.No.178/2023 justice and as such, in appropriate cases these must be awarded to give a signal to the wrong doers that law does not take a breach merely as a matter between rival parties but feels concerned about those also who are not party to the lis but suffer on account of the breach."
".... This Court has no hesitation in saying that the time has come when the Courts dealing actions for infringement of trade marks, copy rights, patents etc. should not only grant compensatory damages but award punitive damages also with a view to discourage end 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 able to pay punitive damages also, which may spell financial disaster for them."
2. MICRO SOFT CORPORATION Vs. Mr.KIRAN AND ANOTHER(2007)5 ILR(Delhi) 200 "33.The legal position in India with respect to granting damages in cases of infringement of trade marks and copyrights has been progressive.The Courts have now started granting the relief of damages with the view that a defendant cannot escape damages as a consequence of its disappearing from the legal proceedings. The Claimant has a right to damages regardless of the defendant's state of mind, and that is so regardless of whether the /52/ Com.OS.No.178/2023 cause of action is of a registeredmark,or passing off".
3. MICRO SOFT CORPORATION Vs. Mr.RAJENDRAPAWAR "22. Perhaps it has now become a trend of sorts, especially in matters pertaining to passing off, for the defending party to evade Court proceedings in a systematic attempt to jettison the relief sought by the plaintiff. Such flagrancy of the defendant's conduct is strictly deprecatory, and those who recklessly indulge in such shenanigans must do so at their peril, for it is now an inherited wisdom that evasion of Court proceedings does not de facto tantamount to escape from liability. Judicial Process has its own way of bringing to task such erring parties whilst at the same time ensuring that the aggrieved party who has knocked the doors of the Court in anticipation of justice is afforded with adequate relief,both in law and in equity. It is here that the concept of awarding punitive damages comes in to perspective."
"26.Particularly relevant to note is the case of Mathias V Accor Economi Lodging, Inc, cited at 347 F.3d 672 (7 th Cir.2003), where this Court, while elucidating the factors underlying the grant of punitive damages, observed that one of the functions of punitive damages is to relieve the pressure on an overloaded Criminal justice System by providing a Civil alternative to criminal prosecution of minor crimes. It was /53/ Com.OS.No.178/2023 further observed that the award of punitive damages serves the additional purpose of limiting the defendant's ability to profit from its fraud by escaping detection and prosecution".
MANU/DE/3461/2017 NOKIA CORPORATION AND OTHERS Vs. MOVIEEXPRESS AND OTHERS
31. It has been well settled by this Court in Hero Honda Motors Ltd., V.Shree assuramji Scooters [MANU/DE/2501/ 2005:2006 (66)DRJ113] " a defendant who chooses to stay away from the proceedings of the Court should not be permitted to enjoy the benefits fo evasion of Court proceedings. Any view to the contrary would result in a situation where a defendant who appeas in Court ad submits its account books would be liable for damges, while a party which chooses to stay away from the court proceedings would escape the liability of damages as stated and set out by the plaintiff. It is also well settled that where a defendant deliberately stays away from the proceedings with the result that an enquiry into the accounts of the defendant for determination of damages cannot take place, the plaintiff cannot be deprived of the claim for damages as that wold amount to a premium on the conduct of such defendant. The result would be that parties who appear before the court and contest the matter would be liable to damages while the parties who choose to stay away from the court after having infringed the right of the /54/ Com.OS.No.178/2023 palitniff, would go scot free".
32. In Jockey International Inc & Anr V.R.Chandra Mohan & Ors MANU/DE/1312/201 : (2014)DLT 757 THE Court noted as under:-
"43. I am in agreement with the aforesaid submission of learned counsel for the plaintiffs that damages in such cases must be awarded adn a defendants, who chooses to stay away from the proceedings of the court, should not be permitted to ejoy the benefits of evasion of court proceedings. Any view to the contrary would result in a situation where a defendant who appears in court and submits its account books would be liable for damages, while another defendant who, chooses to stay away from court proceedings would escape the liability on account of failure of the availability of account books. A party who chooses not to participate in court proceedings and stays away msut, thus, suffer the consequences of damages as stated and set out by the plaintiffs. There is a larger public purpose involved to discourage such aprties from indulging in such acts of deception and, thus, even if the same has a punititive element, it msut be granted. R.C.Chopra, J. Has very succinctly set out in Time Incorporated's case (supra) that punitive damages are founded on the philosophy of corrective justice."
72. In view of the proposition enunciated in the above precedents it is evident that the defendants who /55/ Com.OS.No.178/2023 have evaded their appearance before the Court cannot escape their liability to pay damages to the plaintiff. In the absence of books of accounts of the defendant, the plaintiffs are entitled for the damages as quantified by them in the plaint.
73. In view of the ratio of the above cited decisions I am of the view that the plaintiffs are entitled to be compensated not only as a remedy for breach of their legal right but also to deter defendants and such other person/s indulging in infringement of trade mark and passing off. Thus, the Plaintiffs are entitled for the compensation of ₹.10,00,000/- apart from injunctive reliefs prayed in the plaint. Accordingly, I answer point Nos.1 to 3 an 5 in the Affirmative, Point No.4 in the NEGATIVE.
74. Point No.6 :In view of the findings on the above points, I pass the following:
ORDER The Suit filed by the plaintiff is hereby decreed with costs on the following terms:
The defendants or any person/s claiming through or under the defendants is/ /56/ Com.OS.No.178/2023 are hereby restrained by way of permanent injunction from indulging in any activities in any manner which results in infringement of registered trade mark of plaintiff i.e., "SWIGGY";
The defendants or any person/s claiming through or under the defendants is/ are hereby restrained by way of permanent injunction from unlawfully passing off and diluting the distinctive registered trade mark of the plaintiff "SWIGGY" or any other mark/ s which is similar to the trade mark of the Plaintiff;
The defendants are jointly and severally liable to pay a ₹.10,00,000/-
(Rupees Ten Lakhs only) as compensation to the plaintiff.
The prayer of the plaintiff for rendition of accounts by the defendants is hereby dismissed.
Draw decree accordingly.
The office is hereby directed to send a copy of the judgment to the plaintiffs through email as per Order XX Rule 1 CPC as /57/ Com.OS.No.178/2023 amended by Section 16 of Commercial Courts Act, 2015.
(Dictated to the Stenographer, corrected, signed and then pronounced by me in the open court on 8th day of January 2024) (S.J.KRISHNA) C/c LXXXIII ADDL.CITY CIVIL &SESSIONS JUDGE, BENGALURU.
(CCH-84) ANNEXURES List of witnesses examined for the plaintiff:
PW Sri.Satyavrat Sharma List of documents exhibited on behalf of the plaintiff:
Sl.No. Particulars of documents Ex.P.
1. Copy of Board Resolution Ex.P.1
2. Copy of letter of authority Ex.P.2
3. Certificate of 6 registered trade marks of the Ex.P.3 plaintiff.
4. Certificate of registered trade mark of the Ex.P.4 defendant.
5. Certified copy of rectification petition Ex.P.5 filed before Hon'ble High Court of Gujarat.
6. Certified copy of Hon'ble High Court Ex.P.6 dated 16/1/2023.
7. Printout of notification issued by trade mark Ex.P.7 registry in the trade marks journal No.2065 dt.15/8/2023.
8. Printout of list of registration in favour of Ex.P.8 /58/ Com.OS.No.178/2023 plaintiff for SWIGGY trade marks.
9. Printout of the correspondences exchanged Ex.P.9 between the plaintiff and the defendants between 31/1/2020 and 24/4/2020.
10. Printout of WIPO UDRP order dated 27/11/2018 Ex.P.10
11. Copies of news paper articles. Ex.P.11
12. Printout of audit report of the plaintiff for Ex.P.12 the financial year 2021-22.
13. Printouts of extract from the defendant's website. Ex.P.13
14. Affidavit of Mr.Vincent Jose. Ex.P.14 List of witnesses examined for the defendant/s:
NIL List of documents marked for the defendant/s:
NIL (S.J.KRISHNA) C/c LXXXIII ADDL.CITY CIVIL & SESSIONS JUDGE, BENGALURU.
(CCH-84) * * * * po