Delhi District Court
Larsen & Toubro Limited vs Radheshyam Singh on 17 March, 2021
IN THE COURT OF SH. AJAY GARG, ADDITIONAL DISTRICT
JUDGE1, NEW DELHI DISTRICT, PATIALA HOUSE COURTS,
NEW DELHI
CS (Comm) No. 564/19
CNR No. DLND010011702017
In the matter of
1. Larsen & Toubro Limited
Head Office: L&T House, Ballard Estate,
Mumbai400001, India.
Corporate Office:
9th Floor, Ambadeep Building, 14,
Kasturba Gandhi Marg,
New Delhi110001
2. General Industrial Controls Private Limited
T107, MIDC, Bhosari, Pune411026.
................ Plaintiffs
Versus
1. Radheshyam Singh
R.D. Electricals, 27/30, Ezra Street,
Chitpur, Barabazar Market, Kolkata700001.
2. Pradeep Jain,
Peekay Associates
22 & 32, Ezra Street, Kolkata 700001.
...............Defendants
Suit presented on : 31.01.2017
Arguments concluded on : 03.03.2021
Judgment pronounced on : 17.03.2021
CS No (Comm.). 564/19 Page 1 of 15
JUDGMENT
1. The present suit filed under Section 134, 135 & 27 of Trade Marks Act, 1999 and Section 51 of the Copyright Act, 1957 for permanent injunction restraining the defendants from infringement & passing off the Trade Mark, violation of copyright, rendition of accounts, delivery up and damages etc. The suit has been instituted by the plaintiff averring that plaintiff nos.1 & 2 are the companies duly incorporated under the provisions of Companies Act, 1956, having its registered office at L&T House, Ballard Estate, Mumbai400001 and T107, MIDC, Bhosari, Pune411026. Ms. Gauri Srivastava is the authorized representative of the plaintiffs who has been authorized vide power of attorney dated 26.02.2015 & 18.05.2016. Plaintiff no.1 is a technology, engineering, construction and manufacturing company. It is one of the largest and most respected companies in India's private sector. More than seven decades of a strong, customerfocused approach and the continuous quest for world class quality have enabled it to attain and sustain leadership in all its major lines of business. L&T has an international presence with a global spread of offices. A trust on international business has been overseas earnings grow significantly. It continues to grow its global footprint with offices and manufacturing facilities in multiple countries. The company's businesses are supported by a wide marketing and distribution network and have established a reputation for strong customer support. The new structure is built around multiple businesses that serve the needs of different industries like CS No (Comm.). 564/19 Page 2 of 15 Hydrocarbon, heavy engineering, L&T construction, power, electrical & Automation, machinery and industrial products, information technology, financial services, shipbuilding and railway projects. The plaintiff is market leader in electrical and electronic products and systems. The plaintiff was founded in Bombay (Mumbai) in 1938 by two Danish engineers, Henning HolckLarsen and Soren Kristina Toubro. Both of them were strongly committed to developing India's engineering capabilities to meet the demands of industry. The Evolution of L&T into the country's largest engineering and construction organization is among the most remarkable success stories in Indian industry. The plaintiff has been using the word/mark Larsen & Toubro and L & T as a trade mark in relation to its said goods and business. The plaintiff over a period of time has been using its said trademark in various stylized/artistic formats/labels which have been created and are being created over a period of time viz Larsen & Toubro, L & T, LT, LT, LK (hereinafter collectively referred to as "the said trademarks").
Since 1938, the plaintiff no.1 has been honestly and bona fidely, continuously, commercially, openly, exclusively and to the exclusion of others, uninterruptedly and in the course of trade and as proprietor thereof using its said trademark in relation to its said goods and business and carrying on its said goods and business thereunder and has built up a valuable trade, goodwill and reputation thereunder and acquired proprietary rights therein. The plaintiff no.1 said trademark Larsen & Toubro, LT and L&T formative trademarks are duly registered CS No (Comm.). 564/19 Page 3 of 15 in India under the Trade Mark Act, 1999.
The plaintiff no.2 is the registered proprietor of trademark
(i)GIC/GIC under registration No. 1922955 in class 9 relation to electromechanical control for electronic goods, products such as analog time switch, auto reset synchronous timers and programmable time switches. The plaintiff no.2 also presents its said mark/label in an artistic manner including in its get up, lettering style, colour scheme, placement of words, artistic features etc. Art work involved in plaintiff's said trade mark/label is original within the meaning of Copyright Act, 1957. Therefore, the plaintiff no.2 is also the owner and proprietor of the copyright involved in the said trade mark/label. The manufacturing and packaging of these products are done by GIC i.e. plaintiff no.2 and marketed by plaintiff no.1 in India on the basis of mutual understanding, consent and agreement etc. The aforesaid products manufactured by the plaintiffs and labeling and packaging thereof distinctly bears the names of plaintiff nos. 1 and 2 respectively. It is also mentioned on the product that the products are manufactured by plaintiff no.1 and marketed by plaintiff no.2.
The defendants are engaged in selling, manufacturing, marketing, purveying, supplying, soliciting trade of various analog time switches, electrical and electronics goods and other allied/related products (hereinafter referred as "the impugned goods" & impugned business"). To the best of the plaintiffs' knowledge, the defendants are acting in collusion and in connivance of each other. The defendants have CS No (Comm.). 564/19 Page 4 of 15 adopted and started using the trademark viz Larsen & Toubro, Larsen, Toubro, L&T, LT, LT, LK, (i)GIC/GIC in relation to their impugned goods and business and has been using the same individually or in combination of each other in logo/label form. The defendants are giving false trade description to their impugned goods. The impugned trademarks adopted and being used by the defendants in relation to their impugned goods and business are identical with and deceptively similar to the plaintiffs' said trademarks in each and every respect including phonetically, visually, structurally, in its basic idea and in its essential features. The defendants have also copied the artistic features involved in the plaintiffs' trademark and are thus, infringing the plaintiffs' copyrights involved in its said trademarks. The defendants are using all kind of false description on its impugned goods to wrongly link the impugned goods with the plaintiffs and to wrongly convey to the public and customers that the impugned goods are coming from the source and origin of the plaintiffs. The impugned goods and business thereunder are also of the same/similar /allied/cognate to that of the plaintiffs. It is further averred that the defendants are not the proprietor of the impugned trademarks and having adopted and are using the same in relation to their impugned goods and business and are otherwise dealing with it in the course of trade without the leave and license of the plaintiffs. The defendants have no rights to use it in any manner in relation to its impugned goods and business or for any other specification of goods and business whatsoever being in violation of the plaintiffs' rights therein. The defendants by their CS No (Comm.). 564/19 Page 5 of 15 impugned adoption and user of the impugned trademarks are violating the plaintiffs' aforesaid trademarks and thereby passing off and enabling others to pass off their goods and business as that of the plaintiffs as well as diluting the plaintiffs' proprietary rights therein. The defendants are further infringing the plaintiffs' said trademarks which is inter alia duly registered under different numbers. The defendants cannot even be exonerated from the charges of falsification, unfair and unethical trade practices. The defendants are fully aware of the plaintiffs' rights, goodwill, reputations, benefits and users etc. in the plaintiffs' said trademarks at the time of his impugned adoption and user of the impugned trade mark. The defendants have adopted and started using the impugned trademarks dishonestly, fraudulently and out of positive agreed with a view to take advantage and to trade upon the established goodwill, reputation and proprietary rights of the plaintiff in the plaintiffs said trademarks. Due to defendants' aforesaid activities, the plaintiffs are suffering huge losses in business and in reputation and such losses are incapable of being assessed in monetary terms. Apart from the sales to the direct customers from their respective shop/premises, defendants are supplying the impugned goods bearing the impugned trademark to the dealers/retailers/distributors in the markets of New Delhi viz parliament street, Barakhamba, Chanakyapuri, Gole Market, Khan Market, Bengali Market, Connaught Place etc. The plaintiffs learnt about the defendants' impugned trademarks in the fourth week of January, 2017 when the plaintiffs came across the impugned goods of the defendants in New CS No (Comm.). 564/19 Page 6 of 15 Delhi markets.
2. Upon filing of the present suit, summons were issued to the defendants and the defendants were duly served and on 25.04.2017, Sh. Vivek Aggarwal, ld. counsel for the defendants appeared. Thereafter, none appeared on behalf of defendants nor any written statement was filed and hence, they were accordingly proceeded against exparte vide order dated 07.06.2017.
3. In order to substantiate the case, the plaintiffs examined their Authorized Representative Ms. Gauri Srivastava as PW1. She tendered her evidence by way of affidavit Ex.PW1/A. She also relied upon the following documents:
1. Ex.PW1/1 (colly.) is representation of the trademark//label of the plaintiff.
2. Ex.PW1/2 is counterfeit packaging/trademark of the defendants.
3. Mark D is incorporation certificate of company (mentioned in affidavit as Ex.PW1/3).
4. Ex.PW1/4 (colly.) are copies of trademark legal proceeding certificates/registration certificates of plaintiff.
5. Mark A is copy of advertisement of the plaintiff.
6. Ex.PW1/5 (colly.) is copy of power of attorneys.
7. Mark B is copy of documents showing the invoices of the plaintiff.
8. Mark C is copy of documents showing the address of the plaintiffs in Delhi and within the jurisdiction of the court.CS No (Comm.). 564/19 Page 7 of 15
9. Ex.PW1/6 is certificate under Section 65B of Indian Evidence Act.
4. Submissions heard. Record perused. Considered.
5. Ld. Counsel for the plaintiff submits that the evidence of PW1 remains unchallenged and documents have not been refuted. He further submits that from the facts of the case it is evident that the plaintiff has been using the word/mark Larsen & Toubro and L & T as a trademark in relation to its goods and business.
6. The objective of the Trade Mark Act, 1999 is to provide for registration and better protection of trademarks for goods and services and for the prevention of the use of fraudulent marks. In this background it is relevant to refer to the definition of Goods as provided under section 2(j) of The Trade Mark Act, 1999 which is reproduced hereunder:
(j) "goods" means anything which is the subject of trade or manufacture;
6.1 It is thus imperative that alleged infringer must be either manufacturing or trading the goods bearing trademarks of the plaintiff. The word trade in this provision would necessarily mean reselling the goods for profit.
7. In the present case after scanning the entire gamut of evidence in the documents proved on record fully established that plaintiffs are the owner of registered trademark "Larsen & Toubro, Larsen, Toubro, L&T, LT, LT, LK and (i)GIC/GIC. PW1 in his evidence CS No (Comm.). 564/19 Page 8 of 15 has brought registration certificate of trademark Ex.PW1/4 (colly.).
8. This witness categorically stated that defendant is not the proprietor of impugned trademark and have been adopting and using the same in relation to impugned goods and business. The defendants have not come forward to controvert the version of plaintiffs' witness. The defendants were fully aware of plaintiff's rights, goodwill, reputation etc. and had adopted and started using the impugned trademark / labels dishonestly with a view to take advantage and to trade upon the established goodwill, reputation and proprietary rights of the plaintiffs. In order to constitute an infringement, the act complained of must fulfill the following requirements :
(i) The mark used by the person must be either identical with or deceptively similar to the registered trademark.
(ii) The goods in respect of which it is used must be specifically covered by the registration
(iii) The use made by the mark must be in the course of areas covered by the registration.
(iv) The use must be in such manner as to render it likely to be taken as being used as a trademark.
9. Section 29 of the Trade Mark Act, 1999 defines infringement of a registered trademark in the following terms :
29. Infringement of registered trade marks.--
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which CS No (Comm.). 564/19 Page 9 of 15 the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of--
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of subsection (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which--
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part CS No (Comm.). 564/19 Page 10 of 15 of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. (6) For the purposes of this section, a person uses a registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, 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.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive 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.
10. The law of passing off provides a remedy against a false representation tending to deceive customers into believing that the goods, which the defendant was selling pertain to the plaintiff. The false representation may be by statement or by conduct i.e. by adopting the CS No (Comm.). 564/19 Page 11 of 15 distinctive mark, name, design, get up or appearance of another person's goods. The test is to ascertain as to whether the conduct of defendant is such as to tend to mislead the public to believe that the goods of the defendants are sourced from the plaintiff.
11. Section 29 (3) of the Trademarks Act, 1999 provides for raising a presumption to the effect that use of registered trademark by a person, not being a registered proprietor or permissive user, is likely to cause confusion regarding association with the registered trademark, in context of identity of the goods or services, on the part of the public.
12. Coming to the present case, a perusal of the record shows that evidence adduced by the plaintiffs has remained unrebutted and un controverted. Since plaintiffs are the registered proprietor of the impugned trade mark and the mark used by the defendants is deceptively identical, it amounts to infringement and passing off. Further even the report of Ld. Local Commissioner appointed by this court vide order dt. 31.01.2017 fructify the claim of plaintiff that defendant is liable for infringement of plaintiff's trademark. Therefore, the Court holds that the plaintiffs have been successful in establishing that the defendants have infringed the registered trademark of the plaintiff and have passed off their impugned goods to be that of the plaintiffs.
Further as far as claim of damages is concerned, Ld. counsel for the plaintiff submitted that the plaintiff is entitled to exemplary and punitive damages to the amount of Rs.5 lacs because where the CS No (Comm.). 564/19 Page 12 of 15 defendant stays away from the proceeding intentionally, the plaintiff cannot be deprived of the claim for damages. The plaintiff is unnecessarily dragged into litigation and the defendants must bear consequences of deteriorating the goodwill of the plaintiff irrespective of his abstinence from the proceedings. In support of his contentions, he relied upon "The Heels V. Mr. V.K. Abrol & Anr. [CS(OS) No.1385 of 2005]" wherein it was held by the Hon'ble Delhi High Court that :
"This court has taken a view that where a defendant deliberately stays away from the proceedings with the result that on 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 would 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 plaintiff , would go scotfree. This position cannot be acceptable. No doubt it not possible to give an exact figure of damages on the basis of actual loss, but certain token amounts on the basis of the sales of the plaintiff can certainly be made. The plaintiff is unnecessarily dragged into litigation and the defendants must bear consequences thereof. In fact in such a case both compensatory and punitive damages ought to be granted apart from the costs incurred by the plaintiff on such litigation. In view of the given sales figures of the plaintiff, I consider it appropriates to grant a decree of damages in favour of the plaintiff and against the defendants for a sum of Rs.3 lakh apart from costs of the suit."
In Time Inc V. Lokes Srivastava & Anr. 2005 (30) PTC 3 Del, it was held by the Hon'ble Delhi High Court that:
CS No (Comm.). 564/19 Page 13 of 15"The time has come when the courts dealing with actions for infringement of trademarks, copyrights, patents 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."
Relief.
13. In view of the findings recorded above, the suit of the plaintiffs is decreed to the extent that the defendants, its promoters, proprietors, shareholders, directors, its agents, servants, employees, successors, assignees, licensees etc. or any other person claiming through or under the defendant no.1 is hereby permanently restrained from using the trademark 'Larsen & Toubro, L & T, LT, LT, LK and (i)GIC/GIC and/or any other word/mark deceptively/confusingly/phonetically similar to the plaintiff's trade mark 'Larsen & Toubro, L & T, LT, LT, LK and
(i)GIC/GIC' as part of their business; trade mark, trade name and/or domain name/email in relation to their business, goods, and/or services for selling, distributing or promoting or offering for sale any products whatsoever or in any manner whatsoever. Further, in view of the law laid down by the Hon'ble Delhi High Court in the case titled as The Heels V. Mr. V.K. Abrol & Anr. (Supra) and Time Inc V. Lokes Srivastava & Anr. (Supra) and considering the fact that defendants deliberately avoided to contest the matter, the plaintiffs are held entitled to CS No (Comm.). 564/19 Page 14 of 15 appropriate damages which is assessed at Rs.1,00,000/ (Rupees One Lakh Only) in the facts and circumstances of the instant case to be paid by both the defendants jointly and severally.
However, since the defendants are exparte and no specific evidence has been led for rendition of accounts, the same cannot be ascertained. Accordingly, the relief of rendition of accounts stands declined as not established.
Decreed accordingly.
No order as to cost. Decree sheet be prepared after payment of deficit court fee, if any.
File be consigned to record room after necessary compliance.
Pronounced in open Court (Ajay Garg)
on 17.03.2021 Additional District Judge01,
Patiala House Courts, New Delhi
CS No (Comm.). 564/19 Page 15 of 15