Delhi District Court
M/S Bongchie India Pvt Ltd vs Sunny Goel on 4 October, 2023
1
In the Court of Dig Vinay Singh, District Judge (Commercial Court)-03
West, Tis Hazari Extension Building, Delhi
In re:
CS (Comm.) 24/2023
CNR No. DLWT01-000059-2023
M/s BONGCHIE India Pvt. Ltd.
Through its Authorised Representative
Mr. Shankar Goel
Registered office at :
2151/9B, New Patel Nagar,
New Delhi - 110008 ..... Plaintiff
Vs.
Sunny Goyal
S/o Sh. Shiv Narayan Shah
R/o Agoriya Bazar, Bhajju Sah Lane,
Ramna, Muzaffarpur, Bihar - 842002 .... Defendant
Date of institution : 04.01.2023
Date of arguments : 22.09.2023
Date of judgment : 04.10.2023
JUDGMENT
1. This is a commercial suit under the Commercial Courts' Act, 2015. The plaintiff has filed this suit for permanent injunction restraining infringement of trade mark, dilution and tarnishment of its trade mark, unfair competition, rendition of accounts, damages and delivery up against the sole above named defendant.
2. It is averred in the plaint that the Plaintiff is a company incorporated under the Companies Act, 1956, founded in 2014. It is one of the leading manufacturer and distributor of pre-rolled cones, rolling paper and Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 1 of 16 2 smoking accessories in India by the brand name of "BONGCHIE". The said trade name is owned by the plaintiff and is claimed to be globally renowned brand with distinguished identity which has earned enormous goodwill and reputation to the plaintiff with sales turn over exceeding ₹ 36 Crores. Plaintiff claims that it is the proprietor of trade mark (label) "BONGCHIE" which was adopted in the year 2014 for the above mentioned products of the plaintiff. It is claimed to be extremely popular amongst the consumers and the members of the trade, who instantaneously associate the said trade mark and trade dress with that of the plaintiff and the consumers purchase the product by mere reference to the presence of plaintiff's trade mark and unique trade dress with which they are innately familiar with. Plaintiff also claims that on account of long, continuous and extensive use of the trade mark, coupled with high standards maintained by plaintiff, both the public as well as the members of the trade, identify, recognise and associate the said trade mark exclusively with the plaintiff. Plaintiff got the trade mark "BONGCHIE" registered under Class 34 vide application no. 2811914 dated 18.09.2014. The plaintiff has also applied for registration of the word mark "BONGCHIE", in addition to the already registered trade mark (label) vide another application no. 5497102 dated 20.06.2022 seeking protection since 16th March, 2014, which has been accepted by the Trademarks Registry. Plaintiff claims that any subsequent adoption or use of a trade mark or trade dress which is deceptively similar or identical in relation to identical goods, similar goods or even unrelated goods, without the authorisation of the plaintiff, not only causes confusion and deception, but is also contrary to the protection required to the plaintiff's trade mark. Such an unauthorised use is bound to lead consumers to falsely believe that such product is sourced from plaintiff and it results in passing off such product as that of the plaintiff.
Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 2 of 16 3 2.1. The plaintiff came to know that the defendant has unlawfully and dishonestly adopted an identical mark by the name "BOOMCHIE", which has ex-facie visual and phonetically deceptive similarity to the plaintiff's trade mark "BONGCHIE". The trade mark of the plaintiff and the defendant are mentioned in para no. 11 of the plaint by depicting the screen shot / picture of both the trade marks, which indeed reveals visual similarity and also phonetic similarity if one speaks the words. It is as follows;
PLAINTIFF'S TRADEMARK DEFENDANT'S IMPUGNED MARK 2.2. The defendant too is engaged in the business of manufacturing, distributing and selling of cigarette rolling paper and the defendant adopted the impugned trade mark "BOOMCHIE" (label) on 23.02.2022. Plaintiff claims that the defendant deliberately, to misuse and ride the good will and reputation of the plaintiff, adopted that impugned trade mark with deceptive similarity, including phonetical, and also the structural and Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 3 of 16 4 similarity in basic idea and essential features. Defendant also filed trade mark application no. 4341409 dated 23.02.2022 on proposed to be used basis seeking registration of the impugned trademark "BOOMCHIE" in class 34, which was opposed by the plaintiff on 22.08.2022. Legal notice dated 26.09.2022 was sent to the defendant and defendant even gave reply dated 14.10.2022, but did not desist from using the impugned trade mark. Plaintiff claims that the defendant is using the impugned trademark intentionally, to pass off the defendant's goods as that of the plaintiff, which is likely to cause confusion amongst the consumers and members of the trade, and the act of the defendant is not co-incidental or innocent, but it is deliberate and malicious. The jurisdiction of this Court is claimed U/s 134(2) of the Trade Marks Act, 1999.
2.3. Plaintiff prays a decree of permanent injunction restraining the defendant and his agents, servants etc. from using the impugned trademark in any manner or using any other deceptively similar and identical trademark/label. Though, in the suit the plaintiff also prayed decree of disposing of the impugned goods etc. and delivery up of the infringing material etc. as also rendition of accounts and withdrawal of the application dated 23.02.2022 of the defendant, but during arguments the counsel for plaintiff confined the prayer in this case to permanent injunction only.
3. The sole defendant of this case was served with the summons for settlement of issues through registered AD post on 27.03.23 and also through e-mail on 23.05.2023. The sole defendant did not appear at any stage of the present matter after his date of service till now. The defendant was proceeded ex-parte on 08.06.2023.
4. Thereafter, plaintiff lead ex-parte plaintiff evidence and examined Sh.
Shankar Goel as PW1. Shankar Goel tendered his evidence by way of Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 4 of 16 5 affidavit Ext. PW1/A and relied upon the documents, Ext. PW1/1 which is a resolution in his favour; Ext. PW1/2 which is copy of the sales bills for the products sold by the plaintiff under his registered trademark; legal notice dated 26.09.2022 sent by the plaintiff to the defendant Ext. PW1/3. The rest of the documents were marked by the plaintiff. The evidence of the plaintiff is in lines to the averments contained in the plaint.
5. Since the sole defendant of this case remained ex-parte and chose not to contest the suit, the averments of the plaintiff in the plaint and the deposition of PW1 have remained absolutely unrebutted and uncontroverted.
6. Plaintiff has relied upon the case of Cadila Healthcare Limited Vs. Cadila Pharmaceuticals Limited decided by Hon'ble Supreme Court in Appeal (C) No. 2372 of 2001 decided on 26.03.2001, which was a case of a passing-off action.
7. Plaintiff also relies upon the case of Consitex S. A. Vs. Kamini Jain & Ors.
2011 SCC OnLine Del 2947, Decided by Hon'ble Delhi High Court on 18.07.2011 in CS (OS) No. 629 of 2011, wherein dealing with the question of phonetic similarity it is held as follows;
"15. The concept of aural confusion is statutorily embodied in Section 29(9) of the Trademarks Act, 1999 in so far as it states that "Where the distinctive elements of a registered trademark consist of or include words, the trade mark may be infringed by spoken use of the words as well as their visual representation and the reference in this section to the use of the mark shall be construed accordingly." In view of the fact that the Legislature has included the spoken use of the words as an infringing activity, it is clearly evident that the pronunciation of the trade mark is clearly a determining criteria in ascertaining infringement.
Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 5 of 16 6
16. Section 29(2) of the Trademarks Act, 1999 recognizes the concept of likelihood of association, wherein the consumer is likely to believe that the Defendants' mark has an association/affiliation/connection with the Plaintiff or that the Defendants have the approval of the plaintiff to use the said trade mark.
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18. The Division Bench of the Bombay High Court in the case of Encore Electronics Ltd. v. Anchor Electronics and Electricals Pvt. Ltd. 2007 (35) PTC 714 has dealt with a similar point about the phonetically similarity between two trademarks "Encore" and "Anchor" The same reads as under: -
"The phonetic similarity between "Anchor" on the one hand and "Encore"
on the other, is striking. The two marks are phonetically, visually and structurally similar. The overall impression conveyed by a mark as a whole, has to be assessed in evaluating whether the mark of the defendant is deceptively similar to the mark of the plaintiff. Phonetic similarity constitutes an important index of whether a mark bears a deceptive or misleading similarity to another. The phonetic structure indicates how the rival marks ring in the ears. Courts in a country such as ours whose culture is enriched by a diversity of languages and scripts have to consider how the rival marks are spelt and pronounced in languages in which they are commonly used. Counsel for the Defendant submits before the Court that while "Encore" is a word of French origin, 'Anchor' is a word of English usage and the pronunciation of the two words must differ. The submission misses the point. The case before the Court is not about how an Englishman would pronounce 'Anchor' or a Frenchman would pronounce "Encore" The Court must consider the usage of words in India, the manner in which a word would be written in Indian languages and last but not least, the similarity of pronunciation if the rival marks are used. The manner in which the 'a', as in 'anchor' is pronounced by an Englishman or Notting Hill may well appear to be discerning traveller to Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 6 of 16 7 be distinct from a Frenchman's pronunciation of the 'e' in 'encore' on a fashionable by lane near Champs Elysees. That is no defence to an action in our Courts for passing off. For the ordinary consumer in Ahmedabad and her counterpart in Mumbai's shopping streets, the 'a' in 'anchor' and the 'e' in 'encore' are perilously and deceptively similar. The Court must assess the makeup of an Indian consumer and, associated with that, the cultural traits that underlie the spelling and pronunciation of words. The case of the Plaintiff is that in Guajarati as well as in Hindi, there is no even a subtle distinction between the manner in which 'Anchor' and "Encore" would be pronounced and we find merit in the submission. The overall impact in terms of phonetical usage is one of striking similarity. The test is not whether a customer who wishes to buy the product of the plaintiff is likely to end up buying the product of the Defendant. The test is whether the ordinary customer is likely to be led to believe that 'Encore' is associated with the mark and the trading style of the plaintiff. The phonetical, visual and structural get up of the two words is so strikingly similar as to lead to a likelihood of deception. The question of deception is a matter for the Court to determine, particularly at the interlocutory stage. (para 9).
19. Thus, in Section 29(2) is read with Section 29(9) the legislature has included the spoken use of the words also, therefore, it is evident that the pronunciation of the trade mark is clearly a determining criteria in ascertaining infringement.
20. In the case of Laxmikant V. Patel v. Chetanbhat Shah; (2002) 3 SCC 65, the Supreme Court observed:
"The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 7 of 16 8 or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."
The Apex Court further observed:
"Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently."
21. In the case of Aristoc Ld. v. Rysta Ld.;62 RPC 65 wherein the trade mark 'RYSTA' was held to be deceptively similar to 'ARISTOC' the House of Lords came to the conclusion that both sounds are very similar. Similarly in the case of Pidilite Industries Pvt. Ltd v. Mittes Corporation; 1989 PTC 151 this Court held that the trade mark "Trevical" is similar to "Fevicol" Further in the case of The Bombay Oil Industries v. Ballrapur Industries Ltd.; AIR 1989 Del 77 decided by this Court, it was held that the two trade marks "Shapola" and "Saffola" are similar. In the case of Bulova Accutron Trade Mark Application; [1969] RPC 102, the trade mark 'Bulova Accutron was held to be similar to 'Accurist'. Similarly, in Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449, the Apex Court held that the trade mark 'Amritdhara' is similar to 'Lakshmandhara'. In yet another case of Tata Iron & Steel Co. Ltd. v. Mahavir Steels; 47 (1992) DLT 412 this court came to the conclusion that the trade mark 'Tisco' and 'Fisco' are deceptively similar and issued the interim injunction against the defendant. Similar view was taken by the Division Bench of this court in the case of Castrol Ltd. v. A.K. Mehta reported in 2003 (27) PTC 600 (Del) wherein two marks CASTROL and BESTROL were held to be similar. In the case of Oil Mill Co. v. Wipro Ltd.; AIR 1986 Delhi 345, it has been held by this Court that the two trade marks Dubble and Bubble are deceptively similar with each other.
22. In the case of K.R. Chinna Krishna Chettiar v. Sri Ambal & Co.; AIR 1970 SC 146, wherein the rival trade marks of the parties were Ambal and Andal, the Supreme Court held that there is striking similarity and affinity Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 8 of 16 9 of sound between the two trade marks. The Supreme Court in paras 10 and 12 of the judgment considered the ocular comparison test which read as under:
"10. There is no evidence of actual confusion, but that might be due to the fact that the appellant's trade is not of long standing. There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between Ambal and Andal.
12. The name Andal does not cease to be deceptively similar because it is used in conjunction with a pictorial device. The case of Decordova v. Vick Chemical Coy., 1951-68 RPC 103 is instructive. From the Appendix printed at page 270 of the same volume it appears that Vick Chemical Coy. were the proprietors of the registered trade mark consisting of the work "Vaporub" and another registered trade mark consisting of a design of which the words "Vicks Vaporub Salve" formed a part. The appendix at page 226 shows that the defendants advertised their ointment as "Karsote vapour Rub" It was held that the defendants had infringed the registered marks. Lord Radcliffe said:"...... a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features."
23. Learned counsel for the plaintiff has also argued on the question of dilution. He argued that the defendant's use of the impugned marks in the course of the same trade and for the same products is bound to cause serious prejudice to the ability of the trade mark ZEGNA to exclusively identify the plaintiff and its group companies and their products leading to grave dilution of the trade mark ZEGNA. Additionally, the Defendant's use of the impugned marks is bound to lead to tarnishment, diminution, weakening and eventual erosion of the goodwill, reputation and the positive associations linked to the plaintiff's trade mark ZEGNA.
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27. The legal effect of Registration Registration of a mark gives the registered proprietor the exclusive right to use the registered mark (Section 28 of the Trademark Act, 1999) and the use of an "identical" or "deceptively similar" mark by another without any permission/authority amounts to infringement of the registered mark (Section 29 of the Act).
A. In the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories; AIR 1965 SC 980, it was held:
"The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods"
"If the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial."
B. In the case of American Home Products v. Mac Laboratories; AIR 1986 137 it was held as follows:
"When a person gets his trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark give him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can project his trade mark by an action for infringement in which he can obtain injunction...."
C. In the case of National Bell Co. v. Metal Goods Mfg. Co.; 1971 AIR SC 898, it was held as under:
"On registration of a trade mark the registered proprietor gets under section 28 the exclusive right to the use of such trade marks in relation to Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 10 of 16 11 the goods in respect of which the trade mark is registered and to obtain relief in respect of any infringement of such trade mark."
D. In the case of Avis International v. Avi Footwear; AIR 1992 Delhi 22 it was observed as follows:
"In my view violation of the exclusive statutory rights is illegal activity, to hold otherwise will negate the statutory provisions of the Trade and Merchandise Marks Act."
8. In the case Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories [AIR 1965 SC 980], the respondent, who manufactured medicinal products, had got the word "Navaratna" registered as a trade mark. The appellant who was carrying on the business in the preparation of Ayurvedic pharmaceutical products under the name of "Navaratna Kalpa" applied for registration of the words "Navaratna Kalpa" as a trade mark for his medicinal preparations. The objection of the respondent to the proposed registration prevailed. With regard to the difference between an action for passing off and action for infringement of trade mark, following was observed in para 28;
"While an action for passing off is a common law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of 'the exclusive right to the use of the trade mark in relation to those goods' (vide Section 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing-off action would also be such in an action for infringement of the Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 11 of 16 12 same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, 'if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff."
9. Secondly, while dealing with the question of burden of proof in an action for infringement of trade mark, in Durga Dutt Sharma case (supra) following was observed in para 29;
"29. When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be 'in the course of trade', the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (vide Section 21). A point has sometimes been raised as to whether the words 'or cause confusion' introduce any element which is not already covered by the words 'likely to deceive' and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words 'likely to deceive'. But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 12 of 16 13 the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks -- the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff."
10. In the case of Meta Platforms v. Noufel Malol, 2022 SCC OnLine Del 1988, following was observed;
"27. This Court in Tata Sons Ltd. (supra) has held that a well- known trade mark is a mark which is widely known to the relevant general public and enjoys a comparatively high reputation amongst them. It further held that when a person uses another person's 'well-known trade mark', he tries to take advantage of the goodwill that such a 'well-known trade mark' enjoys. Such an act constitutes as unfair competition. It also causes dilution of a 'well-known trade mark' as it loses its ability to be unique and distinctively identified and distinguish as one source and consequent change in perception which reduces the market value or selling power of the product bearing the well-known mark. The Court further laid down the factors that a Court needs to consider for determining whether the trade mark is a 'well-known trade mark' or not, as under:
"13. Trademarks Act, 1999 does not specify the factors which the Court needs to consider while determining whether a mark is a well known mark or not, though it does contain factors which the Registrar has Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 13 of 16 14 to consider whether a trademark is a well known mark or not. In determining whether a trademark is a well known mark or not, the Court needs to consider a number of factors including (i) the extent of knowledge of the mark to, and its recognition by the relevant public; (ii) the duration of the use of the mark; (iii) the extent of the products and services in relation to which the mark is being used; (iv) the method, frequency, extent and duration of advertising and promotion of the mark; (v) the geographical extent of the trading area in which the mark is used; (vi) the state of registration of the mark; (vii) the volume of business of the goods or services sold under that mark; (viii) the nature and extent of the use of same or similar mark by other parties; (ix) the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry and (x) actual or potential number of persons consuming goods or availing services being sold under that brand. A trademark being well known in one country is not necessarily determinative of its being well known and famous in other countries, the controlling requirement being the reputation in the local jurisdiction."
28. Applying the above test and parameters to the facts of the present case, it cannot seriously be disputed that the marks of the plaintiff are well- known in India. Its user base and its reach are evident from the documents that have been filed by the plaintiff. The plaintiff also has obtained registrations of its marks for various classes of goods and the use of a similar mark without due cause would certainly amount to unfair competition, which is detrimental to the distinct character and reputation of the plaintiff's 'Facebook' marks.
29. The plaintiff therefore, has been able to make the test as set out in Section 11(6) and Section 11(7) of the Act as also by this Court in Tata Sons (supra) for it to be declared as a 'well-known trade mark', as defined under Section 2(1)(zg) of the Act.
30. Section 29(4) of the Act, which has been reproduced hereinabove, states that a registered mark is infringed by a proprietor or a person who uses the same or a similar mark without the permission of the registered proprietor in relation to goods or services which may not be similar to Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 14 of 16 15 those for which the trade mark is registered, however, because of such mark being a well-known mark, obtains an unfair advantage as the use of such mark is detrimental to the distinct character or reputation of the registered trade mark.
31. In the present case, though there is some distinction between the marks of the plaintiff and of the defendants, the overall visual representation adopted by the defendants, clearly depicts the mala fide intent of the defendants in obtaining unfair advantage by the use of the mark similar to that of the plaintiff and also leads to the dilution of the mark of the plaintiff. It can lead to an unwary consumer being at least interested in taking note of the defendants as having some kind of connection with the plaintiff. The mala fide intent of the defendants is also evident from the fact that upon the knowledge of the ad-interim injunction passed by this Court, the defendants changed the mark from 'facebake' to 'facecake' thereby changing only one alphabet, however, chose not to appear before this Court to defend the suit in spite of service."
11. In the present case, perusal of the reply given by the defendant to the notice of the plaintiff reveals that the defendant did not dispute the registration of trademark of the plaintiff, as mentioned in para 8 of his reply, wherein it is mentioned that the registration is matter of record but the defendant denied that the trademark of the plaintiff is phonetically, structurally, visually or artistically same as of the trademark of the defendant. The defendant also admitted in his reply that on 23.02.2022 the defendant conceived and adopted the impugned trademark "BOOMCHIE" in respect of cigarette rolling papers.
12. Perusal of the trademark of the plaintiff and the impugned trademark of the defendant namely "BONGCHIE" and "BOOMCHIE" clearly reveals that the impugned trademark of the defendant is phonetically similar to the trademark of the plaintiff. It is also apparently structurally and visually similar. Though, some letters of English here & there are different, the Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 15 of 16 16 similarity between the registered trademark of the plaintiff and the impugned trademark is striking. It is settled legal position that the flow of impression conveyed by a trademark as a whole has to be assessed in evaluating whether the trademark of the defendant is deceptively similar to the trademark of the plaintiff.
13. In such circumstances, the plaintiff is entitled to decree of permanent injunction, as prayed. Accordingly the defendant, his servants, agents, distributors, representatives and anyone acting for or on his behalf are permanently restrained from using, manufacturing, selling, offering for sale, advertising or displaying (including in audio, print, visual media or otherwise), directly or indirectly or dealing in any other manner or mode with the impugned trademark/label "BOOMCHIE" (label/word) and/or any other trademark identical with or deceptively similar to the plaintiff's trademark/label "BONGCHIE" in relation to their impugned goods i.e. CIGARETTE ROLLING PAPER' and other allied/cognate goods/business.
14. Plaintiff shall be entitled to the cost of the suit also. Decree sheet be prepared accordingly.
15. A copy of the judgment be supplied to the plaintiff as well as the defendant through electronic modes in compliance of Order 20 Rule 1(1) of CPC. File be consigned to the record room.
Announced in the open Court
on 04th day of October, 2023 Digitally
DIG signed by DIG
VINAY SINGH
VINAY Date:
2023.10.04
SINGH 14:08:11
+0530
Dig Vinay Singh
District Judge (Commercial)-03
West, Tis Hazari, Delhi (r)
Judgment CS (Comm.) 24/2023 CNR No. DLWT01-000059-2023 M/s BONGCHIE India Pvt. Ltd. Vs. Sunny Goel dated 04.10.2023 Page 16 of 16