Delhi District Court
Suit No. 572/08/07 vs M/S J.S.R. Enterprises on 31 August, 2010
IN THE COURT OF SHRI HARISH DUDANI,
ADDITIONAL DISTRICT JUDGE15 (CENTRAL) : DELHI
Unique I.D. No.0240IC0724962007
Suit No. 572/08/07
M/s. Groversons
2666/2, Ist Floor, Beadonpura,
Karol Bagh, New Delhi - 110005 ............Plaintiff
(Through its partner Shri Rakesh Grover)
Versus
M/s J.S.R. Enterprises,
33/29, Bhikam Singh Colony,
Gali no. 10, Vishwas Nagar,
Shahdara, Delhi - 110 032. .......Defendant
(Through its proprietor/partners)
Date of Institution : 30.07.2007
Date of reserving judgement : 26.08.2010
Date of Decision : 31.08.2010
J U D G E M E N T
1. This is a suit for infringement of registered trade mark, infringement of copyright, passing off, claim for damages etc. The facts relevant for disposal of the suit are as under.
2. The plaintiff has filed the abovenoted suit stating therein that the plaintiff is a partnership firm duly registered under the Indian Partnership Act, 1932. Shri Rakesh Grover is one of Suit No. 57/08/07 page 1 of 73 the partners of the plaintiff firm and he is fully conversant with the business of the plaintiff as well as with the facts of the present case and is competent and duly authorized to sign, verify and institute the present suit for and on behalf of the Plaintiff. The plaint is signed and verified by Shri Rakesh Grover on behalf of the plaintiff firm. The plaintiff is engaged in the business of manufacturing and selling Hosiery including undergarments for the last more than two decades. The plaintiff has been using a fanciful and distinctive trademark "PARIS BEAUTY" represented in a special and particular manner, in respect of its aforesaid goods since the year 1982. The Defendant concern was originally started by Shri Narain Dass, an expartner of plaintiff and by virtue of an oral settlement between the two partners of the plaintiff, it was settled that to distinguish the goods of two concerns, the plaintiff shall use the words "GROVERSONS" alongwith the trade mark "PARIS BEAUTY" whereas Shri Narain Dass shall use the words "JSR" along with the trade mark "PARIS BEAUTY".
3. It is stated that in the plaint that trade mark "PARIS BEAUTY" of the plaintiff is represented in a special and particular manner alongwith the trade mark "GROVERSONS" and is duly registered under the Suit No. 57/08/07 page 2 of 73 provisions of the Trade Marks Act under No. 407738 in class25 and the said trade mark also forms the subject matter of various registered composite trade marks under Nos. 600999, 601000 and 601002 being used alongwith the Housemark "GROVESONS" by the plaintiff. The Plaintiff was using the said artistic style since the year 1982 up to the month of January, 2005. In the month of January, 2005, plaintiff got prepared an artistic work pertaining to packing wrappers/bags/cartons of 'undergarments' to be sold under the trade mark "PARIS BEAUTY" along with Housemark "GROVERSONS". The said artistic work consisted primarily of the following distinguishing features :
a) Trade mark "GROVERSONS" placed at the top of the trade mark "PARIS BEAUTY", both being represented in a particular size and font;
b) Trade mark "PARIS BEAUTY" placed inside a special enclosure/device having pink background. The said device/enclosure consists primarily of straight lines at top, leftside and rightside edges giving it a semirectangular look and at the bottom of such enclosure, the device of a 'wave' enjoins the left and right bottom sides of such device.
4. It is stated in the plaint that artistic work being got prepared by the plaintiff is an original artistic work in the form of a Suit No. 57/08/07 page 3 of 73 distinctive device having a distinctcolored background, arrangement and representation of trade marks "GROVERSONS" along with trade mark "PARIS BEAUTY", getup and layout and, as such, the plaintiff, being the lawful owners, prior and exclusive users of the aforesaid artistic work, claims a copyright over the aforesaid artistic work. The purchasing public identifies the aforesaid goods of the plaintiff by the trade mark "PARIS BEAUTY" as well as from the aforesaid artistic work particularly semieducated and illiterate purchases who also buys/identified these goods with the aforesaid artistic work, design, getup, colour combination and layout. The said artistic work being used by the Plaintiff on the packing wrappers/cartons/bags, by virtue of prior, long, continuous, extensive and exclusive user for the last more than two years has become distinctive and the same is associated exclusively with the name of the plaintiff alone by the trade channels as well as the purchasing public. The plaintiff is the registered proprietor of the trade mark under no. 1377019 of dated 11082005 in class25 and nobody else without the permission and consent of the plaintiff can use the said registered trade mark or any essential features thereof and any illegal and unauthorized use shall amount to infringement of registered Suit No. 57/08/07 page 4 of 73 trade mark of the plaintiff. The products of the plaintiff under the packing wrappers/cartons/bags bearing the aforesaid artistic work, the trade mark "PARIS BEAUTY" and house mark "GROVERSONS" are being sold throughout the India by itself as well as through its appointed dealers and distributors. The total sales figures of the plaintiff for the year 200405 remained as Rs. 12,00,56,063.01, for the year 200506 as Rs. 10,97,62,044.84 and for the year 200607 as Rs. 14,92,07,722.00. The Plaintiff has also been spending huge amount to promote and popularize the aforesaid artistic work by way of advertisement and publicity through various print media including newspapers, magazines, tradejournals, signboards, brochures, stickers, posters, calendars, catalogues, leaflets, etc. and through electronic media including television, radio etc. and advertisement expenses of the plaintiff for promoting and popularizing its aforesaid goods including trade mark "PARIS BEAUTY" and housemark "GROVERSONS" are for the year 200405 as Rs. 43,59,224.16, for the year 200506 as Rs. 40,59,671.00 and for the year 200607 as Rs. 58,08,122.00.
5. It is stated that in the month of April 2007, the plaintiff came across the identical goods of the defendant though bearing Suit No. 57/08/07 page 5 of 73 the trade mark "JSR PARIS BEAUTY" but bearing the infringing artistic work. The plaintiff has no objection to the use of the trade mark "PARIS BEAUTY" by the defendant but the plaintiff was shocked to note that the defendant had blatantly copied the aforesaid artistic work of the plaintiff. The plaintiff issued a cease and desist notice dated 2304 2007 to the defendant but the defendant gave a false and frivolous reply dated 17052007 stating that they are the proprietors of the said artistic work and issued a cross notice to the plaintiff to stop using the said artistic style. Hence the present suit for decree of permanent injunction restraining the defendants from manufacturing, selling, offering for sale or otherwise dealing in Hosiery & ready made garments including undergarments and other allied and cognate goods and from infringing the copyright of the plaintiff in any manner including on all goods, packing cartons/boxes, advertisements etc. pertaining to the aforesaid artistic style and for restraining the defendants from infringing the registered trade mark No. 1377019 in class25 and for restraining the defendants from passing off its goods as the goods of the plaintiff by the use of artistic work of the plaintiff. The plaintiff has also prayed for an order for destruction of all the blocks, dies, packing material, Suit No. 57/08/07 page 6 of 73 bills, stationery and other incriminating material bearing the infringing copyright and for decree to a sum of Rs. 1,00,000/ as damages along with cost of the suit.
6. The defendant has filed written statement and has contested the suit. In the written statement, defendant has taken the objection that suit is liable to be dismissed as the same suffers from unreasonable delay and latches on the part of the plaintiff. Plaintiff has never disclosed that their application no. 1377019 in class 25 is pending before the Trade Mark Registry for registration. So the plaintiff misled and concealed the material facts before the Court. The defendant's products are marketed under trade mark JSR PARIS BEAUTY and the get up, origin and the visual presentation of the marks of the product is such that no confusion and deception of any kind between the goods of the parties can arise. Defendants have mentioned the name of firm on each label. The marks of the parties are totally different in size, colour, depiction of the mark, price, nature of the products and end use of the product. The marks of the parties are vastly different visually and no consumer can be misled by the defendants goods if he intends to purchase the goods of the plaintiff. The device of lady lying in the relaxing position was published in logo book titled "The Big Suit No. 57/08/07 page 7 of 73 Book of Logos by David E. Carter". The Plaintiff has kept the device mark published in this book as model or guide for preparing the impugned label. The plaintiff has copied either from the artistic work published by defendant or has used "The Big Book of Logo" as model or guide. The plaintiff is not the originator proprietor and owner of the mark. The defendants are the prior users of the impugned trade mark/label JSR PARIS BEAUTY. The suit of the plaintiff is not maintainable as the Plaintiff is not entitled to use the artistic work as a trade mark as alleged by the plaintiff. The defendant is using the said artistic work prior to the plaintiff and defendant has honestly and bonafidely adopted the said artistic work and there is a significance in the said artistic work because it shows the sketch of the lady lying in a relaxable and in comfortable position and the same sketch or artistic work relates to the products and goods of the defendant. The said device of lady in a relaxing position is common for women's wear followed by the charming slogan "Naya Josh, Jai Tarang, Anubhav Kare Apka Ang Ang". The plaint has not been signed, verified and filed by an authorized person.
7. In the written statement, the Defendant has denied that Shri Rakesh Grover is authorized to file the present suit or he is Suit No. 57/08/07 page 8 of 73 authorized to sign and verify the pleadings of the present suit. It is denied that the plaintiff is a partnership firm duly registered under the Partnership Act. It is stated that in the year 1982, the plaintiffs were users of PARIS BEAUTY in a different manner as pleaded in the present case. The alleged registered trade mark No. 447738 in Class 25 in respect of ready made garments including brasseries and hosiery goods also belongs to the defendant. The plaintiff and the defendant were using the trade mark "PARIS BEAUTY" together. By virtue of an agreement made in the court both the parties were allowed to use the trade mark "PARIS BEAUTY" with any prefix or suffix. The trade mark "PARIS BEAUTY" is registered under No. 340426 in Class 25 in the name of Shri Chaman Lal Grover and Shri Narain Das. Shri Narain Das expired on 16.01.1993 leaving behind five legal heirs, namely, Smt. Gopal Devi (wife), Smt. Chander Kant Arora (daughter), Smt. Veena Khanna (daughter), Shri Jagdish Chander Wadhwa (son) and Shri Ramesh Chander Wadhwa (son). As per the agreement recorded between the parties in Suit no. 192 of 91 on 2804 1993 it was agreed that both the parties shall not permit the use of the trade mark "PARIS BEAUTY" to the third party without the written consent of both the parties and both the Suit No. 57/08/07 page 9 of 73 parties shall be at liberty to use the trade mark "PARIS BEAUTY" along with any prefix or suffix.
8. It is stated in the written statement that Plaintiff have copied the device of the lady shown in a particular manner in the label placed on record of the defendant. The defendants are using the said design since the year 2001 with different trade marks. The defendant is using the said artistic work prior to the plaintiff and same was adopted by defendant honestly and bonafidely. The device of lady is not a dominating feature in deciding the matter of trade mark and copyright. The essential features are to be compared which are "GROVERSONS" and "JSR PARIS BEAUTY" not the device of the lady. The sales and advertisement expenses of the defendant for the year 20042005 remained as Rs. 21,92,177.16 and Rs. 10,692.00, for the year 20052006 as Rs. 22,23,942.00 and Rs. 21,500.00 and for the year 2006 2007 as Rs. 33,25,950.30 and Rs. 33,600.00 respectively. The adoption of the artistic work by the defendant does not amount to any infringement of the plaintiff's proprietary rights and Defendant is not infringing the plaintiff's mark. It is denied that plaintiff has suffered loss in good will, reputation and business by the activities of the respondent. It is stated that suit is liable to be dismissed.
Suit No. 57/08/07 page 10 of 73
9. The plaintiff has filed replication to the written statement of defendants. In the replication, the plaintiff has reiterated the contents of plaint and has controverted the allegations of the defendant as alleged in the written statement. It is stated that the defendants were using an entirely different monogram since the year 1981 and it was only in the month of April 2007 that the defendants started using the infringing logo and immediately thereafter the present suit has been filed by the plaintiff. It is stated that plaintiff was not duty bound to disclose the pendency of their trade mark application no. 1377019 which has been registered as of now. The said application was duly advertised in the Government Trade Mark Journal for inviting public objections and nobody including the defendants filed any objections thereto thereby admitting the proprietorship of the plaintiff with regard to their trade mark no. 1377019. It is denied that defendants are prior user of their impugned monogram/artistic work as alleged. It is prayed that suit may be decreed.
10. From the pleadings of the parties, following issues were framed by my ld. Predecessor on 27.07.2009.
(1) Whether the defendants are prior user of the Suit No. 57/08/07 page 11 of 73 impugned trade mark / label JSR Paris Beauty as alleged ? OPD.
(2) Whether the suit is barred by delay, acquiescences and latches on the part of the plaintiff as alleged?
OPD.
(3) Whether the suit of the plaintiff is not maintainable as alleged ? OPD.
(4) Whether the defendant is infringing the copyright of the plaintiff as alleged ? OPP.
(5) Whether the defendant has infringed the registered trademark no.1377019 in class 25 filed with Trade Mark Registry as alleged? If so, its effects? (6) Whether the defendant is passing off its goods as the goods of the plaintiff as alleged ? OPP (7) Whether the plaintiff is entitled for decree of injunction as prayed for ? OPD (8) Whether the plaintiff is entitled for decree of injunction as prayed for ? OPD (9) Relief.
11. In order to prove its case, plaintiff examined Shri Rakesh Grover, one of the partners of plaintiff as PW1 and Shri Bandhu Ram, Record Keeper, Trade Marks Registry as PW
2.
Suit No. 57/08/07 page 12 of 73
12. Defendant examined Shri Ramesh Chander, partner of defendant as DW1, Shri Nagender Gupta, publisher of magazine Aap Biti Kahaniya as DW2, Shri Om Prakash Aggarwal, proprietor of Lady Fair Shop as DW3, Shri Rupesh Singhal, proprietor of Santosh Offset as DW4.
13. I have heard ld. Counsel for parties and carefully perused the record. My findings on the specific issues are as follows: Issue Nos.1 & 4
14. Since both these issues involve common discussion of facts and law, hence, for the sake of brevity both these issues are being taken up together. The case of the plaintiff is that the defendant concern was originally started by Shri Narain Dass, an expartner of the plaintiff and by virtue of oral settlement between the two partners of the plaintiff, it was settled that to distinguish the goods of two concerns, the plaintiff shall use the words 'GROVERSONS' alongwith the trade mark 'PARIS BEAUTY' and whereas Shri Narain Dass shall use the words 'JSR' alongwith the trade mark 'PARIS BEAUTY' and the plaintiff has been using a fanciful and distinctive trade mark 'PARIS BEAUTY', represented in a special and particular manner,in respect of its aforesaid Suit No. 57/08/07 page 13 of 73 goods since the year 1982 and the plaintiff was using said artistic style in which trademark 'PARIS BEAUTY' was represented in a special and particular manner alongwith trademark 'GROVERSONS' upto the month of January 2005 and in the month of January 2005 the plaintiff got prepared artistic work pertaining to packing wrappers/bags/cartons of undergarments to be sold under the trade mark 'PARIS BEAUTY' alongwith housemark 'GROVERSONS' which consists distinguishing features i.e. trademark 'GROVERSONS' placed at the top of the trademark 'PARIS BEAUTY' and both are being represented in a particular size & font and the trademark 'PARIS BEAUTY' was placed inside a special enclosure/device having pink background and the said device/enclosure consists primarily of straight lines at top, leftside and rightside edges giving it a semi rectangular look and at the bottom of such enclosure, the device of a 'wave' enjoins the left and right bottom sides of such device.
15. In para 8 of preliminary objection of amended written statement, the defendant has pleaded that the defendant is using said artistic work prior to the applicant and the same was adopted honestly and bonafidely and there is a significance in the said artistic work because it shows the Suit No. 57/08/07 page 14 of 73 sketch of the lady lying in a relaxable and in comfortable position. In para 5 of reply on merits of amended written statement, the defendant has pleaded that they are using said design since the year 2001 with different trademarks and the plaintiffs have copied the device of the lady shown in a particular manner in the label placed on record of the defendant.
16. The case of the plaintiff is that in January 2005 the plaintiff got prepared impugned artistic work in respect of trade mark GROVERSONS PARIS BEAUTY. However, the defendant has pleaded that the impugned artistic work was adopted by the defendant in the year 2001 and the plaintiff has copied the same which depicts the device of lady shown in a particular manner which is described by plaintiff as depicting a wave at the bottom of the enclosure. In order to prove its contention that the defendant adopted impugned artistic work in 2001, the defendant has examined Shri Ramesh Chander Wadhwa, partner of defendant as DW1 who adduced evidence by way of affidavit Ex.DW1/A. In para 4 of affidavit Ex.DW1/A, the defendant has stated that in the year 2001, the defendant adopted another representation of the said trade mark JSR PARIS BEAUTY and since the year 2001 the defendant has also used the said new Suit No. 57/08/07 page 15 of 73 representation. In para 4 of affidavit Ex.DW1/A, the defendant has stated that the defendant has filed on record bills of the sales of its products under new representation since the year 2001 and the same are marked Ex.DW1/2 to Ex.DW1/23 and the defendant has advertised in October 2001 and November 2002 issues of magazines of 'Aab Beeti Kahaniyan' for its product PARIS BEAUTY and it depicted two representation of brand JSR PARIS BEAUTY and bill dated 08.09.2001 is Ex.DW1/26 and the advertisement as appearing in October 2001 issue of Aab Beeti Kahaniyan is Ex.DW1/27 and the bill dated 01.10.2002 is Ex.DW1/28 and advertisement as appearing in November 2002 issue of Aap Beeti Kahaniyan is Ex.PW1/29. In order to prove that the defendant published advertisements with new logo in October 2001 and November 2002 issue of Aap Beeti Kahaniyan, the defendant examined Shri Nagender Gupta, publisher of magazine Aap Beeti Kahaniyan as DW2.
17. The contention of learned counsel for the plaintiff is that cover pages of October 2001 and November 2002 issues of Aap Beeti Kahaniyan have been forged by the defendant in order to prove its case that they have been using the impugned logo since the year 2001 and cross examination of DW1 and DW2 reveals the same.
Suit No. 57/08/07 page 16 of 73
18. Learned counsel for the plaintiff has further contended that DW1 has admitted in his cross examination that Shri Nagender Gupta was known to him previously. Learned counsel for plaintiff has contended that on account of proximity with Shri Nagender Gupta, cover pages of October 2001 and November 2002 issues of Aap Beeti Kahaniyan have been changed in order to prove its case by the defendant. DW1 stated in the cross examination that he knew Shri Nagender Gupta since the year 198384. In the cross examination, DW1 was put question to the effect as to why he chose Aap Beeti Kahaniyan only for publishing of advertisement of impugned logo to which DW1 replied in his cross examination that Shri Nagender Gupta had started his new publication i.e. Aap Biti Kahaniyan and for that purpose he came to him for advertisement and he gave him advertisement of defendant with impugned logo. In order to prove that advertisements were issued in October 2001 and November 2002 issues of Aap Biti Kahaniyan, the defendant has relied on bill dated 08.09.2001 Ex.DW1/26 and bill dated 01.10.2002 Ex.PW1/28 which are for a sum of Rs.3,000/(Rupees three thousand only) each. DW1 stated in the cross examination that he had paid about Rs.15,00/ (Rupees fifteen hundred only) for publication of Suit No. 57/08/07 page 17 of 73 advertisement in the year 2001 in Aap Biti Kahaniyan. DW1 denied the suggestion in cross examination to the effect that the defendant had not given any advertisement in Aap Biti Kahaniyan in October 2001 and November 2002 issues and the covers of the said magazines Ex.DW1/27 and Ex.DW1/29 have been fabricated subsequently in order to create evidence for this case and that is the reason the same have been filed on a subsequent stage.
19. The contention of learned counsel for the plaintiff is that the defendant had not filed said magazines i.e. Ex.DW1/27 and Ex.DW1/29 at the time of settlement of issues and the same were filed by the defendant subsequently. The contention of plaintiff is that the said documents i.e. bills Ex.DW1/26 and Ex.DW1/28 and covers of the October 2001 and November 2002 issues of magazine Aap Biti Kahaniyan were forged subsequently by the defendant i.e. during the pendency of the case and that is the reason the same were not filed till the time of settlement of issues and thereafter the defendant filed application u/o 8 rule 1(A) (3) CPC in the Court on 11.03.2010 and the said application was allowed vide order dated 17.03.2010 which proves that documents have been fabricated subsequent to the filing of the case.
20. DW2 Shri Nagender Gupta adduced evidence by way of Suit No. 57/08/07 page 18 of 73 affidavit Ex.DW2/A. DW2 stated in the cross examination that he started publishing Aap Biti Kahaniyan in the year 2000 and thereafter he again stated that he has been publishing Aap Biti Kahaniyan since the year 1999. DW2 further stated in the cross examination that he is running Shakti Pustak Bhandar which is owned by him and Aap Biti Kahaniyan and Shakti Pustak Bhandar are different concerns and Shakti Pustak Bhandar is not a publisher and it only sells books. DW2 stated in the cross examination that on comparison of conditions of new magazine and old magazine one can make out that it which is old and which is new. In the cross examination DW2 was confronted with Ex.DW4/P1 which is January 2002 issue of Aap Biti Kahaniyan which was published by him and inside cover page of the same bears advertisement of M/s Shakti Pustak Bhandar. DW2 denied suggestion of the plaintiff in the cross examination to the effect that all the issues of Aap Biti Kahaniyan which were published till date, the inside cover pages bear advertisement of Shakti Pustak Bhandar and advertisement of no other product or concern or company. DW2 denied suggestion of plaintiff in the cross examination to the effect that October 2001 and November 2002 issues of Aap Biti Kahaniyan had also advertisement of Shakti Suit No. 57/08/07 page 19 of 73 Pustak Bhandar on the inside cover page and the cover pages of Ex.DW1/27 and Ex.DW1/29 have been fabricated by him at the instance of defendant in order to create evidence for this case. Part cross examination of DW2 was recorded on 29.07.2010 and his further cross examination was deferred and he was directed to produce copies of issues of Aap Biti Kahaniyan for the year 2001, 2002 and from January 2009 till date. On 31.07.2010, DW2 appeared for further cross examination and he stated that he has brought all 12 issues of Aap Biti Kahaniyan for the year 2001 and 12 issues for the year 2002 and he had also brought 11 issues of Aap Biti Kahaniyan for the year 2009 as issue for the month of August, 2009 was not published and he had brought 7 issues of Aap Biti Kahaniyan from January 2010 to July 2010. PW2 admitted in the cross examination that advertisement on the inside cover page of September 2001 issue of Aap Biti Kahaniyan Ex.DW2/D1 is of Shakti Pustak Bhandar and thereafter DW1 admitted in the cross examination that there is a difference in the paper quality of cover pages of September 2001 issue and October 2001 issue of Aap Biti Kahaniyan which is Ex.DW2/D2 which have been brought by him on that day. DW2 stated in the cross examination that September 2001 Suit No. 57/08/07 page 20 of 73 issue of Aap Biti Kahaniyan i.e.Ex.DW2/D1 and October 2001 issue i.e. Ex.DW2/D2 which have been brought by him are in his possession since the date of their publication. Thereafter, DW2 admitted in the cross examination that Ex.DW2/D2 which is October 2001 issue of Aap Biti Kahaniyan is looking newer and better than Ex.DW2/D1 which is September 2001 issue. However, in order to explain the difference in cover pages of September 2001 issue i.e. Ex.DW2/D1 and October 2001 issue i.e. Ex.DW2/D2, the DW2 voluntarily stated in the cross examination that cover pages of Ex.DW2/D2 is laminated and is giving shine. Thereafter, DW2 admitted in the cross examination that inside cover pages of Ex.DW2/D1 and Ex.DW2/D2 are not laminated. Thereafter, DW2 was put specific question in the cross examination to the effect that inside cover page of Ex.DW2/D2 i.e. October 2001 issue is clean and looking new as compared to Ex.DW2/D1 which is September 2001 issue as the same has been printed recently to which, the DW2 replied by stating that it is correct that inside cover page of Ex.DW1/D2 is looking clean and new and in order to explain the same he further submitted that it is on account of cleaner design of inside cover page of Ex.DW2/D2. In the cross examination DW2 Suit No. 57/08/07 page 21 of 73 further admitted that inside cover pages of Ex.DW2/D1 and Ex.DW2/D2 have been printed on white background and inside cover page of Ex.DW2/D2 i.e. October 2001 issue, (on which advertisement of defendant appears) is more whiter than Ex.DW2/D1. Again in order to explain the same, the DW2 voluntarily stated that it is on account of quality of paper. Thereafter, DW2 admitted in the cross examination that inside cover page of Ex.DW2/D2 which is October 2001 issue of Aap Biti Kahaniyan is giving a new and cleaner look as compared to inside cover page of Ex.DW2/D3 which is December 2001 issue of the same magazine. DW2 further admitted in the cross examination that there is advertisement of Hamraz Clinic on backside inner page of Ex.DW2/D1, Ex.DW2/D2 and Ex.DW2/D3 and all of them have been printed on white paper and contents of said advertisement on all of them are same and ink used for printing all of them is also same. Thereafter, DW2 admitted in the cross examination that advertisement of Hamraz Clinic as appearing on Ex.DW1/D2 is looking cleaner and newer as compared to Ex.DW2/D1 and Ex.DW2/D3. DW2 further admitted in the cross examination that as per first inside page of Ex.DW2/D2 which is October 2001 issue of Aap Biti Kahaniyan in which advertisement of defendant with Suit No. 57/08/07 page 22 of 73 impugned logo was allegedly published, it is apparent that the some cover has been torn from the same.
21. In order to explain the tearing marks as appearing on first page of Ex.DW2/D2, the DW2 stated in the cross examination that at times two cover pages are pasted on account of inadvertence and if one is removed the impression of tearing of the cover page will be visible. The aforesaid cross examination of DW2 regarding October 2001 issue of Aap Biti Kahaniyan Ex.DW2/D2 vis a vis September 2001 issue i.e. Ex.DW2/D1 and December 2001 issue i.e. Ex.DW2/D3 shows that cover page of October 2001 issue which bears advertisement of defendant has been published on a different paper than the other issues of the same magazine as published in the same year and the same gives impression that the same is new which throws doubt on the the October 2001 issue of Aap Biti Kahaniya as relied by defendant as the same reveals that cover page of the October 2001 issue has been changed by the defendant by incorporating a new cover page, thereby showing that the said issue had the advertisement of the defendant. The aforesaid conclusion is further fortified by the admission of DW2 in the cross examination that there are tearing marks on the first inside page and last page on the magazine Suit No. 57/08/07 page 23 of 73 Ex.DW2/D2 which suggests that some cover has been torn from the same and a new cover has been pasted. Moreover, the explanation of DW2 to the same that at times two cover pages are pasted on account of inadvertence and if one is removed the impression of tearing of the cover page will be visible, is not acceptable because in case two covers are pasted and outer cover is removed then tearing marks would appear on the outer cover and not on the first page and last page of the magazine.
22. DW2 was further cross examined regarding November 2002 issue of Aap Biti Kahaniyan Ex.DW2/D5 which was produced by him vis a vis other issues of Aap Biti Kahaniyan magazine which were produced by him i.e. May 2002 issue of Aap Biti Kahaniyan Ex.DW2/D6. DW2 also admitted in the cross examination that it is apparent from the first inside page and back last page, of Ex.DW2/D5 which is November 2002 issue of Aap Biti Kahaniyan, that a previous cover page has been torn from the same and new cover page has been pasted on the same. DW2 tried to explain the same by voluntarily stating what he has stated in respect of October 2001 issue i.e. Ex.DW2/D2 that at times two cover pages are pasted and one cover page has to be removed Such explanation of DW2 is not acceptable as in case two Suit No. 57/08/07 page 24 of 73 cover pages are pasted and the upper cover page is removed, its tearing impression will be visible on the cover page and not on the inside pages of magazine. Moreover, tearing impressions are visible only on two issues of the magazine which have been produced by DW2 i.e. Ex.DW2/D2 which is October 2001 issue and Ex.DW2/D5 which is November 2002 issue of Aap Biti Kahaniyan. DW2 has not explained as to why said tearing marks are visible on aforesaid two issues only of said magazine on which reliance has been placed by defendant and not on the other issues of said magazine. Perusal of magazines i.e. Ex.DW2/D2 and Ex.DW2/D5 which are October 2001 and November 2002 issues of Aap Biti Kahaniyan magazine on which reliance has been placed by the defendant clearly shows that the cover pages of said magazines have been changed in order to prove that said magazines contain advertisements of the defendant with impugned logo. The falsity of the case of the defendant is further corroborated by bills Ex.DW1/26 and Ex.DW1/28. Both said bills i.e. Ex.DW1/26 dated 08.09.2001 and Ex.DW1/28 dated 01.10.2002 are for a sum of Rs.3,000/ (Rupees three thousand only) each. However, DW1 stated in the cross examination that he had paid a sum of Rs.15,00/ (Rupees Suit No. 57/08/07 page 25 of 73 fifteen hundred only) for publication of advertisement in the year 2001 and the payment in respect of bill Ex.DW1/26 was made in cash. DW1 admitted in the cross examination that amount of bills Ex.DW1/26 and Ex.DW1/28 is Rs.3,000/ (Rupees three thousand only) each. DW2 stated in the cross examination that he demands a sum of Rs.4,000/ (Rupees four thousand only) for full page advertisement on the inside cover of Aap Biti Kahaniyan, however, he settles for a lesser amount also. In the cross examination conducted on 31.07.2010 DW2 stated that he used to charge about Rs.1500/ (Rupees fifteen hundred only) for full page advertisement on inside cover page and he does not remember as to bill of how much amount was raised to defendant in respect of advertisements submitted by them in Aap Biti Kahaniyan in October 2001 and November 2002. It is to be noted that in bills Ex.DW1/26 and Ex.DW1/28 amount of advertisement has been mentioned as Rs.4,000/ (Rupees four thousand only) and thereafter certain discounts have been given and total amount is shown as Rs.3000/ (Rupees three thousand only). However, DW1 stated in the cross examination that he had paid a sum of Rs.1500/ (Rupees fifteen hundred only) for advertisement in respect of October 2001 issue. It is also to be noted that Suit No. 57/08/07 page 26 of 73 DW2 stated in the cross examination conducted on 29.07.2010 that he demands Rs.4,000/ for full page advertisement on inside cover of Aap Biti Kahaniyan, however, he settles for a lesser amount also. Thereafter in the cross examination conducted on 31.07.2010, DW2 stated that he raised bills of Rs.4,000/ each in the year 2001 and 2002 to the defendant. Statement of DW2 to the effect that in the year 2001 and 2002 he raised bills of Rs.4,000/ each to the defendant and on the date of cross examination on 29.07.2010 also he demands the same sum i.e. Rs.4,000/ for the same kind of advertisement in the same magazine does not appear to be plausible because even after a period of eight to nine years the DW2 has been demanding same amount for publishing advertisement in his magazine. In view of discrepancies as appearing in the statement of DW1 and DW2 regarding bills Ex.DW1/26 and Ex.DW1/28, it was open for the DW2 to have proved carbon copy of said bills in order to prove that the same were issued on the dates as mentioned on the said bills and have not been fabricated however, the defendant has not adopted said course for the reasons best known to defendant.
23. In the cross examination DW2 was put a question to the effect that how many days in advance the advertisement Suit No. 57/08/07 page 27 of 73 and its material is to be supplied for publication in a particular issue and DW2 gave answer to the said question by giving explanation that if advertisement is given in October 2001 issue, the same is published on 4th September and advertisement is to be booked alonwith material about ten days before 4th September. As per aforesaid answer of DW2, October 2001 issue and November 2002 issue of Aap Biti Kahaniyan on which reliance has been placed by the defendant were published on04.09.2001 and 04.10.2002 respectively and said advertisements would have been booked at least 10 days before 04.09.2001 and 04.10.2002 and bills in respect of the same would have been raised on the dates of their booking i.e. ten days before 04.09.2001 and 04.10.2002. However, the bills in respect of October 2001 issue of Aap Biti Kahaniyan magazine is dated 08.09.2001 which is Ex.DW1/26 and if explanation of DW2 is accepted then said bill dated 08.09.2001 Ex.DW1/26 has been issued subsequent to the publication of October 2001 issue which was published on 04.09.2001. Accordingly, bill Ex.DW1/28 which is dated 01.10.2002 has also been issued just three days before the publication of November 2002 issue which was published as per statement of DW2 on 04.10.2002. This part of testimony of DW2 throws doubt Suit No. 57/08/07 page 28 of 73 on the bills Ex.DW1/26 and Ex.DW1/28. The testimonies of DW1 and DW2 regarding publication of advertisement of defendant in October 2001 and November 2002 issues of Aap Biti Kahaniyan prove that the said issues on which reliance has been place by defendant have been forged subsequent to the filing of suit in order to create evidence for this case.
24. The defendant has placed reliance on bills Ex.DW1/2 to Ex.DW1/23 which are from 31.01.2001 to 27.02.2006. DW1 admitted in the cross examination that in Ex.DW1/2 to Ex.DW1/23 impugned logo has not been used. DW1 also admitted in the cross examination that in bills Ex.DW1/2 to Ex.DW1/23 there is no mention of sale of product under the trade mark JSR PARIS BEAUTY. Contention of learned counsel for the plaintiff is that perusal of bills Ex.DW1/2 to Ex.DW1/23 which have been filed by defendant on record shows that defendant has changed its stationery over the period of time and even if defendant takes excuse that they were using old stationery and on that account impugned logo does not appear on the same would not be acceptable as once there were changed stationery then in the stationery which was printed subsequent to alleged adoption of new logo the said impugned logo should have been printed on Suit No. 57/08/07 page 29 of 73 the subsequent bills but the same has not been printed which shows that the defendant had not adopted impugned logo since the year 2001 as alleged. A careful perusal of the bills Ex.DW1/2 to Ex.DW1/23 as filed by defendant which are from 31.01.2001 to 27.02.2006 shows that bills Ex.DW1/2 to Ex.DW1/7 have been prepared on the stationery bearing the same format and thereafter the bills Ex.DW1/8 and Ex.DW1/9 which are for the year 2002 are in different format. Thereafter for bills Ex.DW1/10 to Ex.DW1/19 which are from 10.01.2002 to 25.03.2004, the same kind of stationery in same kind of format has been used but the impugned logo has not been printed on them. The bills Ex.DW1/20 to Ex.DW1/23, which are from 05.12.2005 to 27.02.2006, have been printed in a different format as compared to previous bills and even mobile numbers have been printed on the said bills and in the said bills, also impugned logo has not been printed by the defendant. The defendant has failed to explain that in case they got their bills printed many times during the period 2001 to 2006, then why impugned logo was not printed on the same. Although, the defendant claimed to have used the same since the year 2001, however Ex.DW1/2 to Ex.DW1/23 do not prove case of the plaintiff that they have Suit No. 57/08/07 page 30 of 73 been using the impugned logo since the year 2001. The defendant has also relied on Ex.DW1/36 and Ex.DW1/37 which are photographs of pens bearing the trademark of defendant. DW1 has also relied on publicity material Ex.DW1/32 to Ex.DW1/35 which are calenders for the years 2001 and 2002 and telephone diaries. DW1 admitted in the cross examination that it is not mentioned in Ex.DW1/34 to Ex.DW1/37 as to in which year they were printed. DW1 admitted in the cross examination that they have not filed any bill in respect of payments in respect of Ex.DW1/32 to Ex.DW1/37. The defendant has not succeeded in proving that Ex.DW1/32 to Ex.DW1/37 were published during the period 2001 to 2006 and by the same the defendant had advertised the impugned logo.
25. The defendant examined Shri Om Parkash Aggarwal as DW3, who is stated to be dealer of the defendant, in order to prove that goods under impugned logo were being sold by defendant through said Shri Om Prakash Aggarwal/DW3 who is proprietor of Lady Fair Shop. DW3 has placed reliance on packing material Ex.DW3/1 and carton Ex.DW3/2 bearing the impugned logo and bills Ex.DW3/3 to Ex.DW3/16. DW3 admitted in the cross examination that in the bills Ex.DW3/3 to Ex.DW3/16 JSR PARIS BEAUTY is Suit No. 57/08/07 page 31 of 73 not mentioned in contents of these bills and that the products as mentioned on the body of the said bills are of JSR PARIS BEAUTY. DW1 and DW3 both admitted in the cross examination that impugned logo has not been there on Ex.DW3/3 to Ex.DW3/16 which are for the period from 03.04.2001 to 22.06.2005. Ex.DW3/1 and Ex.DW3/2 do not bear any date as to when the same were printed. DW3/1 and DW3/2 also do not prove the case of the defendant that the same were printed in the year 2001 or prior to user of impugned logo as claimed by plaintiff.
26. In order to prove that the defendant has been using impugned logo since the year 2001 on its cartons, the defendant examined Shri Rupesh Singhal as DW4. DW4 has relied on the cartons/packaging material which are Ex.DW4/1 to Ex.DW4/5 and bills Ex.DW4/6 to Ex.DW4/48. In the cross examination DW4 admitted that on the packaging material Ex.DW4/1 to Ex.DW4/5 it is not mentioned that it is printed by Santosh Offset, which is proprietorship concern of DW4. Thereafter, DW4 voluntarily stated in the cross examination that however Ex.DW4/3 to Ex.DW4/5 bear their logo at point A. DW4 further stated in the cross examination that he has not filed any document on record to show that logo as appearing at point A on Suit No. 57/08/07 page 32 of 73 Ex.DW4/3 to Ex.DW4/5 belongs to him. DW4 admitted in the cross examination that logo, on which he has placed reliance, at point A on Ex.DW4/3 to Ex.DW4/5 is not appearing on his bills which are Ex.DW4/6 to Ex.DW4/24 which are for the period from13.10.2000 to 24.05.2004. The logo at point A as appearing on Ex.DW4/3 to Ex.DW4/5 is appearing on the bills Ex.DW4/25 to Ex.DW4/48 which are for the period from 25.05.2005 to 01.08.2007. If cartons Ex.DW4/3 to Ex.DW4/5 are seen in the light of bills Ex.DW4/25 to Ex.DW4/48, the same would prove that the cartons Ex.DW4/3 to Ex.DW4/5 which are stated to be bearing logo of M/s Santosh Offset which is proprietorship concern of DW4 have been printed after 25.05.2005 in pursuance of the bills Ex.DW4/25 to Ex.DW4/48. The evidence as adduced by the defendant does not prove the case of the defendant that it has been using the impugned logo since the year 2010.
27. In written statement, the defendant has taken contrary pleas regarding date of date of adoption of impugned logo by defendant as on the one hand the defendant has stated that they adopted this logo in the year 2001 and on the other hand the defendant stated that said logo was published in book titled "The Big Book of Logos" by David E. Carter. In Suit No. 57/08/07 page 33 of 73 order to prove its case that the defendant adopted the impugned logo in the year 2001, the defendant has relied on fabricated evidence in the form of magazine Aap Biti Kahaniyan which are Ex.DW1/27 and Ex.DW1/29 but the defendant could not succeed in establishing that the impugned logo was adopted by the defendant in the year 2001 or prior to the year 2005. The act of the defendant in fabricating false evidence in order to secure discretionary relief from the Court is such which disentitles the defendant of any relief. In Gandhi Scientific Company v. Gulshan Kumar, 2009 (40) PTC 22 (Del.) our own Hon'ble High Court observed that party who is seeking the discretionary relief has to approach the Court with clean hands.
28. In S.P. Chengalvaraya Naidu v. Jagannath, AIR 1994 SC 853 it was held the principle of "finality of litigation" cannot be pressed to the extent of such an absurdity that it becomes an engine of fraud in the hands of dishonest litigants. It was further held that courts of law are meant for imparting justice between the parties and one who comes to the court, must come with clean hands. Hon'ble Supreme Court was further pleased to hold that a person whose case is based on falsehood, has no right to approach the court and he can be summarily thrown out at any stage of the Suit No. 57/08/07 page 34 of 73 litigation.
29. The plea of the defendant that plaintiff copied the artistic work of the impugned logo from book titled The Big Book of Logos by David E. Carter i.e. Ex.DW1/47 was considered by my learned predecessor his in order dated 20.03.2009 by which application u/o 39 rules 1 & 2 CPC was disposed of and my learned predecessor was pleased to observe that if the said logo published in "The Big Book of Logos by David E. Carter" is seen from its horizontal angle, the same would certainly look completely different from the impugned artistic work and the same looks like the device of a human body - may be of a man or may be of a woman and if the same is seen from its vertical angle, it will be altogether a different impression. It was further observed that if the same is compared with the impugned artistic work, the impugned artistic work cannot be said to be an exact reproduction or replica of the device published in the said book. My learned predecessor was pleased to observe that it may be that the plaintiff or the artist of the plaintiff had taken an idea for adopting the impugned artistic work from the said book but, however, as rightly contended by the learned counsel for the plaintiff during the course of arguments at bar, a man cannot possess copyright in respect of an idea. In the Suit No. 57/08/07 page 35 of 73 circumstances, I find no force in the contention of defendant that plaintiff is a pirator having copied the artistic work in respect of the impugned logo from The Big Book of Logos by David E. Carter copy of which is on record as Ex.DW1/47. The defendant has failed to prove that the defendant is using impugned logo since the year 2001 or prior to the adoption of the same by the plaintiff and that the plaintiff has copied the same from The Big Book of Logos by David E. Carter.
30. The defendant has raised objection to the effect that the plaintiff has not succeeded in proving that the plaintiff possesses copyright in respect of said logo. Learned counsel for the defendant has raised various contentions that the plaintiff has not examined person who is author of said copyright and first owner of the said copyright has also not been produced and the plaintiff has not proved that copyright in respect of the impugned artistic work was assigned to plaintiff in accordance with provisions of Copyright Act and that on that account the plaintiff is not entitle to claim copyright in respect of the impugned logo. It is to be noted that this is not a suit filed by a person against the plaintiff thereby claiming that the plaintiff has violated his copyright in respect of the artistic work of the impugned Suit No. 57/08/07 page 36 of 73 logo. Rather this is a suit in which the plaintiff has sought relief regarding infringement of its copyright in respect of the impugned logo by defendant on the ground that the plaintiff is the prior user and adopter of the same. The defendant unsuccessfully tried to raise plea that the defendant adopted the impugned logo in the year 2001. If case of the defendant was that the defendant adopted impugned logo in the year 2001 then by said defence, it is the defendant who is author or the first owner in respect of artistic work of the impugned logo. In para 4 of affidavit Ex.DW1/A, the defendant has stated that defendant had instructed Shri Mohinder Khanna artist/designer to create the representation which has an indication or corelation with a female body since the goods marketed were using by females and he created/designed various representations and finally a representation displaying figure of a female lying in relaxing position was selected and adopted by defendant. DW1 stated in the cross examination that he had made payments to Shri Mohinder Khanna for preparation of said design, however, he has not filed any bill by which payments to Shri Mohinder Khanna was made in respect of said bill. Although, the defendant has pleaded that the impugned logo was got prepared by them from Shri Mohinder Khanna but the defendant has Suit No. 57/08/07 page 37 of 73 neither examined said Shri Mohinder Khanna nor any document has been filed on record which would prove that the design in question was prepared by Shri Mohinder Khanna at the instance of defendant. The defendant has raised contention that the plaintiff has not proved that they are author or first owner of the copyright in respect of the artistic work but by the same analogy the defendant has also not succeeded in proving that the defendant got impugned logo designed from Shri Mohinder Khanna.
31. The defendant has not adduced any evidence to the effect that the defendant who is again not a natural person got the impugned logo prepared from any artist and the said artist assigned the artistic work of impugned logo to defendant by virtue of which the defendant has become first owner. Once the defendant has not succeeded in proving that the defendant is prior user and adopter of the impugned logo then it is not open for the defendant to plead that the plaintiff is not the owner of the same on the plea that it is prepared by third person and the said third party has not been examined by plaintiff and said third person did not assign any right to the plaintiff. In support of its contention, the defendant has relied on decision in Tucker Fastners Ltd. vs. Solsons Exports Pvt. Ltd. & Anr., 2009 (39) PTC 389 Suit No. 57/08/07 page 38 of 73 (CB). However, the facts of said case are not applicable to the present case as in the present case there is no claim against the plaintiff by any person claiming himself to be author or first owner of the copyright in respect of the impugned logo. The plea of the defendant is that during cross examination, PW1 stated that impugned logo was got designed by plaintiff through advertising agency namely M/s Rediffusion but M/s Rediffusion has not appeared in the witness box to prove that they designed the impugned logo and impugned logo was assigned by them to plaintiff. However, it is also to be noted that although, PW1 stated in the cross examination that they got the logo designed from M/s Rediffusion, however, M/s Rediffusion has not approached this Court with plea that the plaintiff has committed piracy of their logo or that the plaintiff is not entitle to use the said logo as they hold copyright in respect of the same. Moreover, in the cross examination of PW1, learned counsel for the defendant has referred to advertisement of the plaintiff as appearing in magazine Ex.PW1/24, Ex.PW1/25 and Ex.PW1/26 and wherein expression RediffusionDY & R/Del/GSPL is mentioned at point A. PW1 stated in the cross examination that he does not understand for what GSPL stands. Thereafter, learned Suit No. 57/08/07 page 39 of 73 counsel for the defendant has given suggestion to PW1 to the effect that GSPL stands for Groversons Apparels Private Limited. The cross examination of PW1 on the advertisements of plaintiff as appearing on Ex.PW1/24 to Ex.PW1/26 in which RediffusionDY & R/Del/GSPL is mentioned clearly proves that plaintiff has not concealed regarding design of impugned logo by its author as claimed by plaintiff and in that case if M/s Rediffusion or any person claiming to be author of said artistic work could have challenged the action of plaintiff. In the circumstances, I find no force in the contention of learned counsel for the defendant that the suit of the plaintiff cannot succeed as author of said artistic work has not been examined or that the plaintiff has not proved that they have not been assigned copyright in respect of the said artistic work of the impugned logo.
32. Another plea of the defendant is that bills on which the plaintiff has relied do not prove the user of impugned logo by the plaintiff. The plaintiff has filed on record bills Ex.PW1/6 to Ex.PW1/23. The impugned logo on which the plaintiff has placed reliance does not appear on bills Ex.PW1/6 to Ex.PW1/14. PW1 stated in the cross examination that impugned logo was not printed on the aforesaid bills Suit No. 57/08/07 page 40 of 73 Ex.PW1/6 to Ex.PW1/14 as the plaintiff was using its old stationery. However, the impugned logo has been printed on bills Ex.PW1/15 to Ex.PW1/23 which are from 30.12.2006 to 28.02.2007. Learned counsel for the defendant has contended that the said bills are fabricated and same do not prove the case of the plaintiff. However, the plaintiff has also placed reliance on advertisements of plaintiff as appearing in ExPW1/24 to Ex.PW1/28 which are for the period from September 2005. The originals of aforesaid magazines were produced by the PW1 in the examination in chief and defendant has failed to rebut the claim of the plaintiff that advertisements bearing impugned logo were published by plaintiff in magazines Ex.PW1/24 to Ex.PW1/28. Moreover, it is also to be seen that the defendant has not disputed that the plaintiff is not user of impugned logo, rather plea which was taken by defendant was that the defendant was either prior adopter of the same or the plaintiff has copied the same from The Big Book of Logos by David E. Carter. In the circumstances, contention of learned counsel for defendant that plaintiff has not proved sales through invoices as relied on, has no force, in view of admission of defendant regarding sales of products by defendant under the impugned logo. Rather, DW1 was put question in the Suit No. 57/08/07 page 41 of 73 cross examination to the effect that goodwill of the plaintiff is much higher as compared to that of defendant to which DW1 replied stating that saleswise it is correct. In the circumstances plea of defendant to the effect that the plaintiff has not succeeded in proving sales of its products under impugned logo has no force.
33. Another contention of the defendant is that device as appearing in the impugned logo is of a female in relaxing position and it is descriptive of goods in question as both the parties are manufacturing innerwear for the females. The device as appearing in the impugned logo is claimed by the plaintiff as of waves. The perusal of impugned logo shows that on the top it is depicted by vertical line or flat surface and there are curves on bottom part of the said device. In the circumstances, the contention of defendant that it depicts a female in relaxing position cannot be accepted as in that case there would have been curves on the top position and not a flat surface or the vertical line on the top and moreover, if contention of defendant is considered that it depicts a female in relaxing position, in that case, there should have been curves on the top and bottom of the said device and not straight line.
34. The comparison of the impugned device as used by both the Suit No. 57/08/07 page 42 of 73 parties shows words 'Paris Beauty' have been mentioned in their logos by both the parties and words Groversons are mentioned on the top of the said device by plaintiff and defendant has mentioned words JSR on the said device in its logo. Below impugned device, the plaintiff has mentioned words "All day comfort inner wear" and the defendant has mentioned words "SOFT COMFORT INNER WEAR" below said device. As discussed above, in terms of agreement between parties, both the parties are entitled to use word "PARTIS BEAUTY" with any prefix or suffix and in pursuance of said agreement, the plaintiff is using words "GROVERSONS PARIS BEAUTY" and the defendant is using words "JSR BEAUTY PARIS" in order to distinguish its products.
35. In Associated Electronic & Electrical Industries vs. Sharp Tools, AIR 1991 Kant 406, it was held :
26. .....................As rightly pointed out by the Copyright Board that there can be no copyright in the word or words, but the right can only be in the artistic manner in which the same is written, and in this case the works were totally dissimilar......................................
36. In Associated Electronic and Electrical Industries (Bangalore) Pvt. Ltd. v. M/s. Sharp Tools, Kalapatti, AIR Suit No. 57/08/07 page 43 of 73 1991 Karnataka 406 it was held:
"23.One of the surest test to determine whether or not there has been a violation of copy right is to see if the reader, spectator, or the viewer after having read or seen both the works would be clearly of the opinion that get an unmistakble impression that the subsequent work appears to be a copy of the first. In other words, dealing with the question of infringement of copy right of the applicant's work by the respondent's work, the court is to test on the visual appearance of the object and drawing, design, or artistic work in question and by applying the test viz., 'lay observer test' whether to persons who are not expert in relation to objects of that description, the object appears to be a reproduction. If to the 'lay observer', it would not appear to be reproduction, there is no infringement of the artistic copy right in the work."
37. Section 2(m) of the Copyright Act, 1957 provides that infringing copy means in relation to a literary, dramatic, musical or artistic work a reproduction thereof otherwise then in the form of a cinematographic film. Section 14 (a) of the Copyright Act, 1957 reads as under :
14. Meaning of copyright. For the purposes of this Act, "copyright" means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely :
(a). in the case of a literary, dramatic or musical Suit No. 57/08/07 page 44 of 73 work, not being a computer programme,
(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public;
(iv) to make any cinematograph film or sound recording in respect of the work;
(v) to make any translation of the work;
(vi) to make any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation
of the work, any of the acts specified in relation to the work in subclauses (i) to (vi);
38. Section 51 of the Copyright Act, 1957 envisages when copyright in work shall be deemed to be infringed. In particular Cl.(b) states that copyright shall be deemed to be infringed when any person.
(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or
(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports into India, any infringing copies of the work.
39. Section 52 of the Copyright Act, 1957 enumerates the act, which shall not constitute an infringement of copyright.
40. In Associated Electronic (supra) it was observed:
"21. In the decision relied upon by the respondent AIR Suit No. 57/08/07 page 45 of 73 1961 Madras 111 (C.cunniah and Co. v. Balraj) the Madras High Court applying the test of resemblances, Ganapati Pillai, J. observed:
"A copy is that which comes near to the mind of every person seeing it. Applying this test, where the question is whether the defendant's picture is a copy of colourable imitation on the plaintiff's picture the design of resemblance between the two pictures which is to be judged by the eye, must get the suggestion that it is the plaintiff's picture. One picture said to be a copy of another picture finds a place in the reproduction."
41. In R. G. Anand vs. M/s Delux Films, AIR 1978 SC 1613, it was held that in order to be actionable the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy. The comparison of the label of the plaintiff and that of the defendant shows that a person who has seen the artistic work in the label of the plaintiff, on seeing the artistic work as appearing on the label of the defendant shall form an impression that the label of the defendant is copy of the label of the plaintiff. Accordingly, both these issues are decided in favour of the plaintiff and against the defendant. Issue No.2
42. The case of the plaintiff is that in January 2005, the plaintiff got prepared artistic work pertaining to packing Suit No. 57/08/07 page 46 of 73 wrappers/bags/cartons of undergarments to be sold under the trademark PARIS BEAUTY alongwith housemark GROVERSONS and in the month of April 2007 the plaintiff came across the identical goods of the defendant bearing the infringing artistic work and the plaintiff noted that the defendant has copied the artistic work of the plaintiff and plaintiff issued a cease and desist notice dated 23.04.2007 and the defendant sent reply to the same dated 17.05.2007.
43. The plaintiff examined Shri Rakesh Grover as PW1 who adduced evidence by way of affidavit Ex.PW1/A. PW1 has relied on notice dated 23.04.2007 which was sent by plaintiff to defendant and same is Ex.PW1/37 and the reply to the same sent by defendant is Ex.PW1/38. In reply Ex.PW1/38, the defendant has only stated that the defendant is prior user of the alleged artistic work and plaintiff seems to have copied the same. However, in Ex.PW1/38, the defendant has not stated that as since when they have been using the impugned logo. In findings on issue No.1 above, it has been held that the defendant has failed to prove that defendant adopted the impugned logo in the year 2001 or prior to adoption of artistic work in impugned logo by the plaintiff. Moreover, in the cross examination of PW1, the defendant has not given any suggestion to the effect that the Suit No. 57/08/07 page 47 of 73 defendant has been using the impugned logo since the year 2001. The suggestion which has been given to PW1 in the cross examination by defendant is to the effect that plaintiff has not used new logo since the year 2005 and the plaintiff has tried to prove that it has been using new logo since the year 2005 on the basis of false evidence. In the cross examination of PW1 no suggestion has been given to the effect that contents of para 8 of affidavit Ex.PW1/A are false, wherein it is mentioned that in April 2007, the plaintiff came across the identical goods of the defendant though bearing the trade mark "JSR PARIS BEAUTY" but bearing the aforesaid infringing artistic work. No suggestion was given to PW1 in the cross examination that the plaintiff is infringing the artistic work of defendant and that the plaintiff was aware of use of artistic work by defendant much prior to April 2007.
44. The defendant has failed to rebut the case of the plaintiff that the plaintiff came across the identical goods of the defendant bearing the impugned artistic work in April 2007. The present suit was filed on 28.07.2007. In the circumstances, it cannot be said that the suit is barred by delay, acquiescences and latches on the part of the plaintiff.
Suit No. 57/08/07 page 48 of 73
45. In Midas Hygiene Industries P. Ltd. & Anr. vs. Sudhir Bhatia & Ors., 2004 (28) PTC 121 (SC) it was observed that the Division Bench inspite of noting the factors which have been set out by the learned Single Judge has vacated the injunction merely on the ground that there was delay and latches in filing the suit and it was held that mere delay in bringing action is not sufficient to defeat grant of injunction in such cases.
46. The defendant has also not proved that plaintiff acquiesced in any manner regarding use of impugned logo by defendant after plaintiff came to know about activities of the defendant. This issue is accordingly decided in favour of the plaintiff and against the defendant.
Issue No.3
47. The contention of the defendant is that in the plaint, the plaintiff has stated that plaintiff is a registered partnership firm but plaintiff has not proved said fact. In para 1 of the plaint, the plaintiff has stated that the plaintiff is an Indian partnership firm duly registered under The Indian Partnership Act, 1932 and Shri Rakesh Grover is one of the partners of the plaintiff firm and he is fully conversant with the business of the plaintiff. Shri Rakesh Grover appeared Suit No. 57/08/07 page 49 of 73 in the witness box as PW1 and adduced evidence by way of affidavit Ex.PW1/A. In para 1 of affidavit Ex.PW1/A, Shri Rakesh Grover has reiterated the contents of para 1 of plaint. The contention of learned counsel for the defendant is that even partnership certificate has not been filed on record by the plaintiff. Trademark certificate under No.1377019 dated 11.08.2005 in class25 which has been filed by plaintiff on record as Ex.PW1/5 shows that the plaintiff is a partnership firm and Shri Rakesh Grover is one of the partners of the said firm. The plaintiff has relied on Trademark certificate under No.1377019 dated 11.08.2005 in class25 Ex.PW1/5. The proprietary details which are mentioned in Trademark certificate under No.1377019 dated 11.08.2005 in class25 Ex.PW1/5 are that name of proprietor is Shri Rakesh Grover, category is Partnership Firm, partners are Ms. Kanika Grover and Ms. Karuna Grover and trading as Groversons. Hence, as per Trademark certificate under No.1377019 dated 11.08.2005 in class25 ExPW1/5, the said trademark is registered in the name of partnership firm, of which Ms. Kanika Grover, Ms. Karuna Grover and Shri Rakesh Grover have been shown as partners. Moreover, this contention of the learned counsel for the defendant is of no avail in view of decision of Suit No. 57/08/07 page 50 of 73 Hon'ble Supreme Court in the case of Haldiram Bhujiawala and Another v. Anand Kumar Deepak Kumar and Another, 2000 (3) SCC 250 wherein it was held that an action for passing off can be maintained by an unregistered firm.
48. Moreover, in Central Bank of India vs. Tarseema Compress Wood Manufacturing Company and others, MANU/MH/0039/1997 it was held that anybody can come and give evidence in Court provided that he is acquainted with the facts of the case and no power of attorney or authorisation is necessary for any witness to give evidence in Court. PW1 Shri Rakesh Grover has stated in para 1 of his affidavit Ex.PW1/A that he is fully conversant with the facts of the case. In the cross examination of PW1 no suggestion were given to the effect that he is not conversant with the facts of the case as stated in para 1 of affidavit Ex.PW1/A. In the circumstances and in view of Central Bank of India vs. Tarseema Compress Wood Manufacturing Company and others (Supra) also the PW1 was competent to appear as witness in this case.
49. Another contention of learned counsel for the defendant is that affidavit has not been proved by PW1 in accordance with law. Learned counsel for defendant has relied on V.R. Suit No. 57/08/07 page 51 of 73 Kamath vs. Divisional Controller, Karnataka State Road Transport Corporation and others, AIR 1997, Karnataka
275. PW1 stated in the cross examination that his Advocates Shri R.K. Jain and Shri M.L. Mangla were present when he signed affidavit Ex.PW1/A and the same was signed by him in the chamber of his advocates. In the cross examination of PW1, learned counsel for defendant has not given any suggestion to the effect that affidavit Ex.PW1/A was not signed in presence of Oath Commissioner who attested affidavit Ex.PW1/A. Moreover, authority as relied by learned counsel for the defendant i.e. V.R. Kamath vs. Divisional Controller, Karnataka State Road Transport Corporation and others (supra) is not applicable to the present case as in affidavit Ex.PW1/A, Oath Commissioner has issued necessary certificate thereby giving details regarding swearing in affidavit by deponent and identification by the counsel and no suggestion has given to PW1 in cross examination that Oath Commissioner had not entered necessary particulars in register. Moreover, it was open for the defendant to have summoned appropriate records of Oath Commissioner who had attested affidavit Ex.PW1/A in order to prove that no such record as contemplated by the decision in V.R. Suit No. 57/08/07 page 52 of 73 Kamath vs. Divisional Controller, Karnataka State Road Transport Corporation and others (Supra) has been noted by said Oath Commissioner. In findings on issue No.4 above, it has been held that the defendant is infringing copyright of the plaintiff, hence, contention of defendant that suit is not maintainable has no force. This issue is accordingly decided in favour of plaintiff and against the defendant.
Issue Nos.5 & 6
50. Since both these issues involve common discussion of facts and law, hence, for the sake of brevity both these issues are being taken up together. In para 8A of the amended plaint, the plaintiff has stated that the plaintiff is registered proprietor of the trade mark under No.1377019 of dated 11.08.2005 in class25. In para 8A of reply to amended plaint in written statement, the defendant has stated that the plaintiff has not pleaded and disclosed the application No.1377019 in class 25 and plaintiff has concealed material particulars from this Court. The plaintiff has filed on record Trademark certificate under No.1377019 dated 11.08.2005 in class25 ExPW1/5 as per which impugned mark GROVERSONS PARIS BEAUTY with device has been Suit No. 57/08/07 page 53 of 73 registered. Contention of defendant is that in said certificate, the plaintiff claimed user since 01.01.1982 and plaintiff has deliberately made false claim of user since 1982 in order to mislead the Registrar for grant of Certificate. PW1 in cross examination stated that registration in respect of Ex.PW1/5 was applied on 11.08.2005. Thereafter PW1 admitted in cross examination that in certificate Ex.PW1/5, date of user is mentioned as 01.01.1982. Thereafter, PW1 voluntarily stated in cross examination that it was by mistake mentioned as 01.01.1982 in Ex.PW1/5 and subsequently they got same corrected by moving application. PW1 stated in cross examination that said mistake on Ex.PW1/5 was noticed on receipt of certificate. Thereafter he stated that he is not aware whether said application for correction mark A made to Registrar was allowed or not. Contention of defendant is that plaintiff would have also filed evidence before Registrar for grant of certificate Ex.PW1/5 and in that evidence also plaintiff would have mentioned the date of user since 01.01.1982. The defendant has raised plea of giving false evidence by plaintiff before Registrar of Trade Marks, thereby mentioning incorrect particulars, however, no such records have been summoned by defendant in order to substantiate its contention.
Suit No. 57/08/07 page 54 of 73
51. Defendant has challenged the registration which has been granted to plaintiff vide Trademark certificate under No.1377019 dated 11.08.2005 in class25 ExPW1/5 by which GROVERSONS PARIS BEAUTY with device has been registered, on the ground that the same is in violation of section 9 (3) (c) and section 11 (3) (b) of Trade Marks Act, 1999 and in view of section 15 & 17 of the Trade Marks Act, 1999, the plaintiff is not entitle to exclusive right over the same. The contention of learned counsel for the plaintiff is that in view of provisions of section 31 of the Trade Marks Act, 1999, registration is prima facie evidence of validity and pleas regarding invalidity of the registration in view of section 9 and 11 of The Trade Marks Act, 1999, which have been raised by defendant are to be adjudicated by the Registrar as per section 21 of the Trade Marks Act, 1999 and moreover, the defendant had filed an application u/s 124 of the Trade Marks Act, 1999 and the same was allowed by learned Predecessor of this Court and now it is for the Registrar to decide on validity of the registration which has been granted to plaintiff vide Trademark certificate under No.1377019 dated 11.08.2005 in class25 ExPW1/5.
52. The plea of the defendant is that the plaintiff has played Suit No. 57/08/07 page 55 of 73 fraud by mentioning the date of user as 01.01.1982 in obtaining Trademark certificate under No.1377019 dated 11.08.2005 in class25 ExPW1/5. Plea of the plaintiff is that they have not played in fraud while obtaining Trademark certificate under No.1377019 dated 11.08.2005 in class25 ExPW1/5 and it is on account of mistake that date of 01.01.1982 has been mentioned. The case of the plaintiff as stated in para 3 of the amended plaint is that the plaintiff has been using trade mark PARIS BEAUTY since the year 1982 and in para 4 of amended plaint, the plaintiff has specifically stated that the plaintiff was using previous artistic style since the year 1982 upto the month of January 2005 and in para 5 of amended plaint, the plaintiff has stated that in the month of January 2005, plaintiff got prepared artistic work containing impugned logo. Hence, the entire case of the plaintiff is that they have been using artistic work as contained in impugned logo since the year 2005. Moreover, PW1 himself voluntarily stated in cross examination that they noticed mistake in certificate Ex.PW1/5 and they accordingly filed application before Registrar. Learned counsel for the defendant has himself contended that as per section 20 (2) of the Trade Marks Act, Act 1999, application is to be advertised for correcting the said error. Hence, as Suit No. 57/08/07 page 56 of 73 per plea of defendant itself, Registrar is required to take necessary steps in terms of section 20 (2) of the Trade Marks Act, 1999 in case there is error in application for registration of trademark.
53. PW1 stated in the cross examination that he knows that mark is published in Trade Mark Journal before Registration. The defendant has not proved that application of Trademark certificate under No.1377019 dated 11.08.2005 in class25 ExPW1/5 was not published in Trade Mark Journal before Registration and on that account the defendant was precluded from challenging the claim as made by plaintiff in said application. It was open for defendant to have filed application u/s 21 of the Trade Marks Act,1999 within three months from the date of advertisement. In case the Registrar proceeded to readvertise application, in terms of section 20, the same is also again open for opposition in terms of section 21 of the Trade Marks Act, 1999. Various contentions as raised by defendant in respect of trademark certificate Ex.PW1/5 were considered by our own Hon'ble High Court in J.K. Oil Industries v. Adani Wilmar Limited, 2010 (42) PTC 639 (Del.) wherein it was held: "7.1 Section 2(1)(m) defines a "mark" to include, Suit No. 57/08/07 page 57 of 73 amongst others, a device, brand, heading and label. The expression "trade mark" has been defined in Section 2(1)(zb) to mean: a mark capable of being represented graphically and, which is capable of distinguishing the goods or services of one person from those of the others and may include shape of goods, their packaging and combination of colours. Section 17 confers on the proprietor of a registered trade mark which consists of several matters, exclusive right to use of the trade mark taken as a "whole". Subsection (2) of Section 17 makes it clear that notwithstanding anything contained in subsection (1) of Section 17:
where a trade mark contains (a) any part which is not the subject matter of a separate application by the proprietor for the registration of a trade mark; or
(b) which is not separately registered by the proprietor as a trade mark; or (c) which contains any matter which is common to the trade or is otherwise of a nondistinctive character - the registration of the mark shall not confer any exclusive right in respect of the matter which forms only a "part" of the "whole" of the trade mark, which is registered. Section 28 articulates the rights which are conferred on the proprietor of a registered mark; which of course, is subject to the other provisions of the Trade Marks Act. Section 29 sets out what would constitute infringement of a registered trade mark. Section 30 refers to the "limits on the effect of a registered trade mark".
Subsection 2(b) of Section 30 specifically alludes to the fact that a mark is not infringed if, the trade mark is used in relation to goods and services bearing in mind the conditions and limitations Suit No. 57/08/07 page 58 of 73 subject to which it is registered. The statutory effect of acquiescence for a continuous period of five years by the proprietor of the registered trade mark is set out in Section 33 of the Trade Mark Act.
8.A conjoint reading of the aforesaid provisions would clearly bring to for the following:
(i) A mark in the form of a label can be registered; which is the situation obtaining in the instant case.
(ii) A trade mark registration confers on the proprietor exclusive right to use the trade mark as a "whole"; which is in the instant case is in form of a label.
(ii) There is no exclusivity conferred on the registered proprietor if he chooses to use only part of the whole of such registered mark and such "part" is neither a subject matter of the separate application for registration filed with the Registrar nor is it registered separately: and,
(iv) Lastly, the registered proprietor may be able to protect a "part" of a registered trade mark if he is able to show it is not common to trade nor that it has obtained a distinctive character."
54. As per certificate Ex.PW1/5, the impugned trade mark GROVERSONS PARIS BEAUTY with device has been registered. Moreover, it is not plea of the defendant that the plaintiff is using part of said mark as registered vide Certificate Ex.PW1/5, rather it is the plaintiff who has approached this court in order to restrain the defendant from using part of mark which has been registered in favour of Suit No. 57/08/07 page 59 of 73 the plaintiff. The contention of the defendant that impugned logo is descriptive of the goods in question also has no force as it has been held in findings on issue Nos.1 and 4 above that the impugned logo does not depict the female in relaxing position. Moreover, the plea of the plaintiff regarding invadility of mark has no force in view of decision of our own Hon'ble High Court in Superbrand Ltd. & Ors. vs. Superbrand Home Care Products Pvt. Ltd. & Ors., MANU/DE/2470/2009 wherein it was held that rights of a proprietor of a registered mark under Section 28(1) have to be given effect to as long as the registration subsists.
55. The defendant has raised plea that he has been using impugned mark since 2001 and at the same time the defendant has challenged the registration of the plaintiff vide application No.1377019 in class25 but the defendant has neither pleaded nor proved that if the defendant was prior user of the mark, in that case whether the defendant has taken any steps for getting mark with the impugned device registered. The defendant has raised plea that the plaintiff has made misrepresentation by stating date of user as 01.01.1982 in its registration which was granted vide certificate Ex.PW1/5 but it was open for the defendant to have filed appropriate application u/s 21 of the Trade Marks Suit No. 57/08/07 page 60 of 73 Act, 1999 before Registrar when the application of plaintiff No.1377019 dated 11.08.2005 in class25 was published prior to acceptance of registration but the defendant did not adopt that course. During present proceedings also the defendant has taken leave of the Court for filing application u/s 124 of The Trade Marks Act, 1999 for rectification of proceedings and the same was allowed vide order dated 20.03.2009. Hence, till the question that whether the certificate Ex.PW1/5 has been granted by playing fraud or there is error in same which can be corrected by adopting due procedure, the said registration granted in favour of the plaintiff is continuing in view of decision of our own Hon'ble High Court in Superbrand Ltd. & Ors. vs. Superbrand Home Care Products Pvt. Ltd. & Ors. (Supra).
56. The defendant has raised plea that he adopted impugned logo in the year 2001. However, the defendant has not succeeded in proving that the defendant adopted impugned logo prior to user of the same by the plaintiff. Although, the defendant raised plea that he adopted the mark prior to plaintiff, however, the defendant has not proved as to how the defendant adopted said mark and who had prepared artistic work in respect of the same and if the defendant had adopted said mark prior to plaintiff then why the defendant Suit No. 57/08/07 page 61 of 73 has not applied for registration of the same.
57. In Ansul Industries Vs. Shiva Tobacco Company, 2007 (34) PTC 392 (Del.), it was held :
"Honesty of adoption at the initial stage itself has to be established to take benefit of concurrent registration under Section 12(3) of the Act. If the user at the inception is dishonest, subsequent concurrent user will not purify the dishonest intention. Commercial honesty at the initial stage of adoption is required. What is protected is innocent use of a mark by two or more persons unknown to each other and unaware of the mark used by the other. Adoption must be honest, bona fide and without any knowledge on the part of the adopter. The onus and burden is on the defendant to show that the user and adoption at the initial stage was honest."
58. On one that the defendant has not succeeded in proving that the defendant had adopted the impugned logo prior to Suit No. 57/08/07 page 62 of 73 plaintiff and on the other hand the defendant has also failed to prove that when defendant adopted said impugned logo it was adopted honestly by the defendant and adoption of same by plaintiff was not within the knowledge of the defendant and the same was got designed by the defendant itself. The defendant has failed to prove that adoption of impugned logo by the defendant was bonafide.
59. In Corn Products Vs. Shangrila Food Products, AIR 1960 SC 142, the Hon'ble Supreme Court observed : "The question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the Court to decide that question. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole."
Further, it is held in the said ruling as follows :
"Again in deciding the question of similarity between the two marks, we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such Suit No. 57/08/07 page 63 of 73 a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them."
60. In Future Logistics Pvt. Ltd. rep. by its Director Mr. S. Edwin Rajamohan vs. Future Logistics Solutions Pvt. Ltd., MANU/TN/1255/2009 Hon'ble High Court of Madras observed that:
"11.Mahesh Chandra, J of Delhi High Court in Hindustan Radiators Company v. Hindustan Radiators Limited 1987 PTC 73 has detailed the broad principles governing the infringement of passing off as follows:
a) that plaintiff has been using its trading style and trade mark for quite a long period and continuously whereas the defendant has entered into the said filed only recently,
b) that here has not been much delay in the filing of the suit for inunction by the plaintiff,
c) that the goods of the plaintiff have acquired a distinctiveness and are associated in the mind of the general public as goods of the plaintiff,
d) the nature of activity of the plaintiff and the defendant is same or similar,
e) that the goods of the parties to which the trade mark of the plaintiff is associated are same or similar,
f) that the user of the said trade mark or trade name by the defendant is likely to deceive Suit No. 57/08/07 page 64 of 73 and cause confusion in the public mind and injury to the business reputation of the plaintiff,
g) that the sphere of activity and the market of consumption of goods of the parties are the same,
h) that the customers of the plaintiff, inter alia, include uneducated, illiterate and wary customers who are capable of being deceived or confused or misled.
15. The Supreme Court in Ramdev Food Products (P) Ltd. v. Arvindbhal Rambhal Patel MANU/SC/3725/2006 : 2006 (33)PTC281(SC) has held as follows:
88. In a case of this nature, the test for determination of the dispute would be the same where a cause of action for passing off arises. The deceptively similar test, thus, would be applicable herein.
89. The doctrine of passingoff is a common law remedy whereby a person is prevented from trying to wrongfully utilise the reputation and goodwill of another by trying to deceive the public through "passingoff"
his goods.
90. In Kerly's Law of Trade Marks and Trade Names, supplement pp.42 and 43, para 1602, the concept of passingoff is stated as under:
The law of passingoff can be summarised in one short general proposition that no man may pass off Suit No. 57/08/07 page 65 of 73 his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number.
Firstly, he must establish a goodwill or reputation attached to the goods or services which he supplies in the minds of the purchasing public by association with identifying 'getup' (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services or offered to the public, such that getup is recognised by the public as distinctive, specially of the plaintiff's goods or services.
Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to a belief that the goods or services offered by him are the goods or services of the plaintiff.
Thirdly, he must demonstrate that he suffers or, in a quick time action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that Suit No. 57/08/07 page 66 of 73 the source of the defendant's goods or service is the same as the source of those offered by the plaintiff."
61. It is not in dispute that both the parties are manufacturing same kinds of products and by way of settlement, between the parties recorded in Court vide order Ex.DW1/D1, both the parties are entitle to use trademark PARIS BEAUTY alongwith any prefix or suffix and in terms of said settlement, the plaintiff has been using the trade mark GROVERSONS PARIS BEAUTY and the defendant has been using trademark JSR PARIS BEAUTY, the trade mark PARIS BEAUTY is common to trademark of both the parties. Hence, the adoption of impugned logo by the plaintiff distinguishes the products of plaintiff from that of the defendant. In the cross examination, DW1 was put specific question to the effect that goodwill of plaintiff's trademark is higher as compared to that of the defendant to which DW1 answered by stating that saleswise it is correct. DW1 also admitted in the cross examination that reputation of the plaintiff productwise is higher than that of the defendant. The comparison of sales figures of both the parties and figures as filed by both parties regarding expenditures on Suit No. 57/08/07 page 67 of 73 advertisements would reveal that the plaintiff is selling its products in higher volume as compared to defendant and advertisement expenditure of plaintiff is also higher than that of defendant. There is admission of DW1 in the cross examination to the effect that reputation of the plaintiff is higher than that of the defendant. In the circumstances, the contention of defendant that plaintiff had copied the impugned logo from the defendant has no force and moreover, a party who has higher reputation in market would not adopt mark of any other party in order to sell its products as that of that party who has lesser goodwill or reputation in the trade. These circumstances also prove that the defendant had adopted the impugned logo in order to pass off its goods as that of the plaintiff. Both these issues are accordingly decided in favour of the plaintiff and against the defendant.
Issue No.7
62. By way of present suit the plaintiff has prayed for decree of permanent injunction whereby restraining the defendant from manufacturing, selling, offering for sale or otherwise dealing in hosiery & readymade garments including undergaments and other allied and cognate goods from Suit No. 57/08/07 page 68 of 73 infringing copyright of the plaintiff as per impugned logo in any manner and from infringing trade mark No.1377019 in class25 registered in favour of the plaintiff and for restraining the defendant from passing of its goods as goods of the plaintiff by using of the artistic work as contained in impugned logo. In findings on issue Nos.4, 5 and 6 above, it has been held that the defendant is infringing the copyright of the plaintiff in artistic work in impugned logo and the defendant has also infringed the registered trade mark No.1377019 in class 25 and defendant is passing off its goods as that of the plaintiff. Hence, the plaintiff is entitle for decree of injunction as prayed.
Issue No.8
63. By way of present suit the plaintiff has also prayed for decree of damages for a sum of Rs.1,00,000/ (Rupees one lakh only). In para 17 of the plaint, the plaintiff has stated that because of illegal activities on the part of the defendant, the plaintiff has suffered and is continuously suffering losses in its goodwill, reputation and business which cannot be ascertained in terms of money, however, the plaintiff has claimed Rs.1,00,000/ as damages from the defendant for the loss incurred by plaintiff. The defendant has denied that Suit No. 57/08/07 page 69 of 73 the plaintiff has suffered any losses on account of use of artistic work in impugned logo by the defendant. Contention of learned counsel for defendant is that the plaintiff is not entitled to decree of a sum of Rs.1,00,000/ as claimed as plaintiff has not proved that sales of the plaintiff were effected on account of user of impugned logo by defendant and in the circumstances, damages/loss cannot be calculated and cannot be awarded to plaintiff. However, learned counsel for plaintiff has contended that defendant himself has admitted that they were conducting sales using impugned logo and in the circumstances, it was not necessary for the plaintiff to prove the losses which was suffered by plaintiff in its sales.
64. In the findings on issue Nos.4, 5, & 6 above, it has been held that the defendant has infringed copyright of plaintiff in respect of artistic work of impugned logo and the defendant also infringed registered trade mark No.1377019 in class 25 and the defendant is passing off its goods as that of the plaintiff as alleged. However, the plea as raised by defendant is that the plaintiff has not proved that sales of the plaintiff were effected on account of impugned logo by the defendant. It is not the case wherein the defendant had denied user of impugned logo, rather, the plea of the Suit No. 57/08/07 page 70 of 73 defendant is that they have been using the impugned mark since the year 2001 (which the defendant could not succeed in proving), however, in the aforesaid discussion, it was held that the defendant has infringed copyright and trade mark of the plaintiff. The defendant has himself led evidence to prove that he had been making substantial sales of his goods using the artistic work as in impugned logo and in order to corroborate its contention, the defendant has examined DW1 and DW3 and the defendant has even relied on bills i.e. Ex.DW1/2 to Ex.DW1/23 and Ex.DW3/3 to Ex.DW3/16. This is not the case wherein the defendant had denied making any sales using the impugned logo and thereby not deriving profits from the said sales, rather the defendant himself has pleaded and tried to prove its case that they have made substantial sales using the impugned mark and for that purpose the defendant has filed aforesaid bills on record. There is admission of the defendant himself of having made substantial sales and thereby earning profits by use of the artistic work in impugned logo. In the circumstances, once the defendant has claimed that they have made substantial sales of its product using the artistic work in impugned logo and have earned profits from the same, it is not open for the defendant now to plead that the Suit No. 57/08/07 page 71 of 73 plaintiff has not proved the actual loss which has been caused to plaintiff on account of user of impugned logo by defendant. The defendant has filed Ex.DW1/1 which shows the sales of the defendant from the year 2001 to 2007 and as per same in the year 200607 the defendant had made total sales of Rs.33,25,950.30. It was open for the defendant to have proved break up of sales of its various trademarks and the defendant could have proved that sales of the defendant under impugned logo were not substantial or that they have not earned profits of Rs.1,00,000/ using the impugned logo. In the circumstances, the plaintiff is entitle to decree of damages for a sum of Rs.1,00,000/ (Rupees one lakh only) as prayed. This issue stands answered accordingly.
Issue No.9: Relief
65. In view of aforesaid discussion and findings on the above issues, the suit of the plaintiff is decreed for decree of permanent injunction and the defendant, its agents, dealers, distributors, stockists, partners, proprietors and all other persons acting on behalf of defendant are restrained from selling, offering for sale or otherwise dealing in hosiery & readymade garments including undergarments and other Suit No. 57/08/07 page 72 of 73 allied and cognate goods so as to infringe the copyright of the plaintiff as appearing at point A on Ex.PW1/3, by putting on their goods, packing cartons/boxes, advertisements, etc. and from passing of its goods as that goods of plaintiff by user of artistic work as appearing at point A on Ex.PW1/3 and from infringing the registered trade mark No.1377019 in class25 registered in favour of plaintiff. The plaintiff shall also be entitled to decree for a sum of Rs.1,00,000/ (Rupees one lakh only) on account of damages which shall be paid by the defendant within one month from today failing which the plaintiff shall be entitled to simple interest at the rate of 8% per annum on the said amount. The plaintiff shall also be entitled to cost of the suit. Decreesheet be prepared accordingly. File be consigned to record room. (Announced in the open st court on 31 August, 2010) (HARISH DUDANI) Addl. District Judge15 (Central) Delhi Suit No. 57/08/07 page 73 of 73