Delhi District Court
M/S Orient Electric Ltd vs Sanmuk Industries on 9 November, 2023
IN THE COURT OF SH. AJAY KUMAR JAIN:
DISTRICT JUDGE COMMERCIAL COURT 03 - SOUTH EAST
DISTRICT, SAKET COURTS, NEW DELHI.
CS (COMM) 56/21
M/S ORIENT ELECTRIC LTD.
Through its Authorized Representative
240, Okhla Industrial Estate, Phase-III,
New Delhi - 110020 ......Plaintiff
Versus
SANMUK INDUSTRIES
Plot No. 220-221, Khasra No. 156,
Poothkhurd, Near Bawana Industrial Area,
New Delhi- 110039 ....Defendant
Date of Institution : 12.01.2021
Date of final arguments heard : 12.09.2023
Date of Judgment : 09.11.2023
Ex-Parte Judgment:
1.Vide this ex-parte judgment, I shall decide the suit under section 134 & 135 of Trade Marks Act; section 55 of Copyright Act for permanent injunction restraining infringement, passing off, delivery up, rendition of accounts etc, filed by plaintiff.
2. Brief facts of the case that Plaintiff, Orient Electric Limited, is a distinguished name in the Indian fan industry for more than 60 years and is a leading air cooler brand in India with a distribution network comprising more than 4000 dealers, 1,25,000 retail outlets and a service network covering 450 cities. The Plaintiff is the registered proprietor of Design No. 298201 dated October 06, 2017; Design No. 323456-002 dated November CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 1 of 19 08, 2019; and 323456-003 dated November 08, 2019 under the Designs Act, 2000 in respect of its range of air coolers.
3. The Plaintiff has been manufacturing/ marketing/ distributing/ selling air coolers using these Registered Designs under the name "Ultimo" since April, 2018. It is pertinent to mention that not only have the Plaintiff's Products garnered significant repute and goodwill amongst its consumers across India but have also generated revenue of more than Rs. 44 Crores. Further, the Plaintiff had expended a substantial sum of more than Rs. 3 Crores for the marketing and promotion of the Plaintiff Products across print and social media and through endorsements by the Plaintiff Company's brand ambassador, Mr. M.S. Dhoni.
4. The feature of novelty and uniqueness in the Registered Design of the Plaintiff resides inter alia in its overall shape, configuration and surface pattern making the said design aesthetically appealing and attractive. The characteristic features used by the Plaintiff to impart distinctive design to its products are highlighted herein below:
The Plaintiff's Products/ Registered Designs have a unique shape, configuration and surface pattern; the configuration of the Plaintiff's Products/ Registered Designs is in a compact cuboidal shape such that the vents of the Air Coolers are in the top half of the front view with a border (in a different colour) framing/ surrounding the vents; the surface pattern of the Plaintiff's Products/ Registered Designs has an interplay of stepped up and stepped down elements with a unique trapezium shaped indent in the bottom half of the front view (under the Air Cooler vents) with a Water Level Indicator in the middle; the Plaintiff's Products have an aesthetically appealing duo-tone colour in two variants: (i) blue-grey and orange; and
(ii) blue-grey and light grey; the Plaintiff's Products / Registered Designs CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 2 of 19 have control buttons on the top of the products. There is also a curve in the colored border at the top resembling the shape of a trapezium; the Plaintiff's Registered Design also has a unique structure where the top of the product is curved such that the back is longer than the front; the Plaintiff's Products / Registered Designs have extra vents on either side of the products; minimal yet clean and bold graphic elements make the Plaintiff's Products stand out in cluttered market place/against the competition.
5. The Defendant, Sanmuk Industries, has been manufacturing/ marketing/ selling air coolers under the name "Lexus Simply Luxury", having identical design to the Plaintiff's Registered Designs (hereinafter "Infringing Products"). The Defendant is selling the Infringing Products on its own website as well as third party e-commerce websites, including India Mart and has been actively advertising them on Facebook, without authorisation or consent of the Plaintiff.
6. The Infringing Products are a fraudulent imitation of the Registered Designs with deceptively similar features to the Registered Designs such as similar length/ width ratio; similar shape and configuration; similar surface patterns; deceptively similar panels around the grid of the Air Cooler vents; deceptively similar two-tone color combination; similar placement of control buttons at the top; similar placement of vents on the sides of the Air Coolers; similar trapezium shaped indents with a water level indicator in the middle at the bottom of the Air Cooler vents.
7. Detailed photo comparison of the Registered Designs and the Plaintiff's Products using the Registered Designs with that of the Infringing Products is as hereunder:
CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 3 of 19 Plaintiff's Registered Design Defendant's Infringing Product
8. Detailed descriptive comparison of the essential elements of the Plaintiff's Products / Registered Designs with that of the Defendant's Infringing Products is as hereunder:
CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 4 of 19 Plaintiff's Registered Design Defendant's Infringing Product The Plaintiff's Products using the Identical shape, configuration Registered Designs have a unique and surface patter has been shape, configuration and surface adopted by the Defendant. pattern.
The configuration of the Plaintiff's The configuration of the Products / Registered Designs is in a Defendant's Infringing Products compact cuboidal shape such that the is identical such that the vents of vents of the Air Coolers are in the top the Air Coolers are in the top half of the front view with a border half of the front view with a (in a different colour) framing / border (in a different colour) surrounding the vents. framing / surrounding the vents.
The surface pattern of the Plaintiff's The surface pattern of the Products / Registered Designs has a Defendant's Infringing Products CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 5 of 19 unique trapezium shaped indent in also has an identical trapezium the bottom half of the front view shaped indent in the bottom half (under the Air Cooler vents) with a of the front view (under the Air water level indicator in the middle. Cooler vents) with a water level indicator in the middle.
The front legs / wheels of the
Infringing Product are also
identically placed as the
Registered Designs of the
Plaintiff.
The Plaintiff's products using the The Defendant's Infringing
Registered Designs come in two duo- Products come in similar two tone coloured variants: (i) blue-grey duo-tone coloured variants: (i) and orange; and (ii) blue-grey and blue and yellow; and (ii) blue light grey. and light grey.
CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 6 of 19 The Plaintiff's Products / Registered The Defendant's Infringing Designs have control buttons on the Products also have similarly top of the products. There is also a placed control buttons on top of curve in the colored border at the top the products. There is also an resembling the shape of a trapezium. identical curve in the colored border at the top resembling the shape of a trapezium.
The Plaintiff's Register Design also The Defendant's Infringing has a unique structure where the top Product also has the identical of the product is curved such that the structure where the top of the back is longer than the front. product is curved such that the back is longer than the front.
The Plaintiff's products / Registered The Plaintiff's products / CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 7 of 19 Designs has extra vents on either side Registered Designs has similar of the products. extra vents identically placed on either side of the products.
9. The Defendant is misrepresenting and passing off the Infringing Products as that of the Plaintiff. Further, the actions of the Defendant also amount to piracy/ infringement of the Registered Designs of the Plaintiff. The Defendant has blatantly copied and imitated the unique features of the Plaintiff's Products. Immediately upon being made aware of the aforesaid acts of the Defendant, the Plaintiff through its Counsel issued a Cease and Desist Notice dated 14.10.2020, calling upon the Defendant to refrain from manufacturing, marketing and selling the Infringing Products. However, despite of the receipt of the said Notice, the Defendant not only failed to respond to the same but has also not stopped his illegal activities thereby making it liable for infringement and passing off the Plaintiff's Products. Thus, the present suit.
10. Vide order dated 26.07.2022, the defendant was declared ex-parte, thereafter, the matter was listed for ex-parte PE. Plaintiff examined PW-1 who tendered his affidavit of evidence. PW-1 During evidence, exhibited following documents :
1. Copy of Authority Letter in favour of Mr. Dheeraj Ex. PW-
CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 8 of 19 dated 17.03.2021 and copy of Board Resolution 1/1 (Colly) dated 30.03.2018
2. Copies of the certificates of registration along with Ex. PW- the copy of respective designs under the aforesaid 1/2 (Colly) registrations
3. Copies of the Web-extracts/ Photographs of the Ex. PW- plaintiff's products under the name and stule of 1/3 (Colly) 'Ultimo' using the registered designs
4. Copies of the promotional materials in respect of Ex. PW- the plaintiff's products using the registered desings 1/4 (Colly)
5. Copies of the web-extracts of the defendant's Ex. PW- website displaying the photographs of the 1/5 (Colly) defendant's infringing products
6. Copies of the web-extracts of the said websites Ex. PW- demonstrating the infringing products 1/6 (Colly) manufactured/marketed/sold by the defendant
7. Copies of the web-extracts evidencing the Ex. PW- marketing and promotion of the infringing products 1/7 (Colly) by the defendant
8. Copy of the said cease and desist notice along with Ex. PW- its proof of service and the tracking reports and the 1/8 (Colly) email dated October 15, 2020 through which the notice was also sent to the official email address of the defendant
9. Copy of the web-extracts from 'IndiaMart' Ex. PW- demonstrating that the infringing products 1/9 (Colly) manufactured by the defendant are being offered for sale by third party sellers in New Delhi, along with the promotional emails sent by 'IndiaMart' <[email protected]> demonstrating the availability of the infringing products manufactured by the defendant
11. Ld. counsel for the defendant submitted that design of the infringing products are a fraudulent imitation of the Plaintiff's registered designs. A CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 9 of 19 bare comparison of the designs of air coolers sold by the Defendant and the Registered Designs of the Plaintiff demonstrate that the design of the Infringing Products is a fraudulent imitation of the Plaintiff's Products. It is submitted that the essential features of the Plaintiff's Registered Designs have been fraudulently applied by the Defendant to the same class of goods (Air coolers), which is evident of the Defendant's mala fide and bad faith intent. Therefore, the Defendant by way of manufacturing, marketing and sale of the Infringing Products, which are deceptively similar to that of the Plaintiff's Registered Designs infringed the Registered Design of the Plaintiff.
12. This Hon'ble High Court of Delhi in Dart Industries Inc. v. Polyset Plastics Pvt. Ltd. [(2018) 75 PTC 495] in Para 36 held that a deliberate imitation of a registered design would be a fraudulent imitation and thus amount to infringement. The relevant part of the judgment is given as follows: -
"36. To find the extent of similarities in design, I may refer to Alert India v. Naveen Plastics, 1997 PTC (17) (Delhi), which note:
"36. Thus for determining whether two designs are identical or not, it is not necessary that the two designs should be exactly the same. The main consideration to be applied is whether the broad features of shape, configuration, pattern etc. are same or nearly the same and if they are substantially the same then it will be a case of imitation of the design of one by the other."
and in Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd., 1996 PTC (16) the Court held as follows:
"26. In a later portion of the judgment it was said:
"...fraudulent imitation seems to me to be an imitation which is based upon, and deliberately based upon, the registered design and is an imitation which may be less apparent than an obvious imitation; that is to say, you may have a more subtle distinction between the registered design and a fraudulent imitation and yet the fraudulent imitation, although it is different in some respects from the original, and in respects which render it not obviously an imitation may yet be an imitation, imitation perceptible when the two designs are closely scanned and accordingly an infringement."
CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 10 of 19
28. The petitioner's complaint is relatable solely to the shape of the containers and not to the mode of manufacture. The shape of a drinks bottle or a carton is clearly project able as a registered design even though the purpose behind the shape is to persuade a customer to purchase the contents of the bottle or carton rather than the packaging itself. See Morris & Quest: Design, the Modern Law & Practice para 11.4.2.)"
13. The Hon'ble High Court of Bombay in Whirlpool of India Ltd. v. Videocon Industries Ltd., [(2014) 60 PTC 155] made the following observations regarding the tests that are to be applied in deciding what constitutes an obvious imitation: -
"29. Section 22(1) of the Act defines what constitutes piracy of a registered design. Under the Act, the use of either the registered design or a fraudulent or obvious imitation thereof by the Defendant amounts to an act of piracy and/or infringement.
30. The question of what tests are to be applied in deciding what constitutes an obvious imitation and/or is actionable is no longer res integra. This question has been considered in several judicial pronouncements. The leading decisions on the point are the decisions in the case of Castrol India Limited v. Tide Water Oil Co.(I) Limited [(1996) 16 PTC 202] and Kemp & Co. v. Prima Plastics Limited [101 (1) BLR 65]. In both the decisions, the Kolkata High Court and the Bombay High Court have laid down the following propositions as constituting the test to decide whether there is obvious imitation and/or piracy of a registered design.
Castrol India Limited v. Tide Water Oil Co.(I) Limited : (supra)
(i) The word 'imitation' does not mean 'duplication' in the sense that the copy complained of need not be an exact replica.
(ii) The Court is required to see in particular as to whether the essential part or the basis of the Plaintiff's claim for novelty forms part of the infringing copy.
(iii) The similarity or difference is to be judged through the eye alone and where the article in respect of which the design is applied is itself the object of purchase, through the eye of the purchaser.
(iv) The Court must address its mind as to whether the design adopted by the Defendant was substantially different from the design which was registered. The Court ought to consider the rival designs as a whole to see whether the impugned design is substantially different from the design sought to be enforced. (The test laid down on Benchchairs Ltd. C. Chair Center Ltd. was cited with approval).
(v) 'Obvious' means something which, as soon as one looks at it, strikes one as being so like the original design/the registered design, CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 11 of 19 as to be almost unmistakable. Fraudulent imitation is an imitation which is based upon, and deliberately based upon, the registered design and is an imitation which may be less apparent than obvious imitation, that is to say, one may have a more subtle distinction between the registered design and a fraudulent imitation and yet the fraudulent imitation, although it is different in some respects from the original, and in respects which render it not obviously an imitation may yet be an imitation perceptible when the two designs are closely scanned and accordingly amounts to infringement. (The test laid down in Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd. was cited with approval.
Kemp & Co. v. Prima Plastics Limited : (supra)
(i) If the visual features of shape, configuration pattern designs are similar or strikingly similar to the eye, it is not necessary that the two designs must be exactly identical and same. The matter must be looked at as one of substance and essential features of the designs ought to be considered.
(ii) In a given case, where the registered design is made up of a pattern which has no one striking feature in it, but it appeals to the eye as a whole, it may very well be that another design may be an imitation of it which makes the same appeal to the eye notwithstanding that there are many differences in the details. (The opinion of Farwell J. in Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd. was cited with approval).
(iii) In comparing rival designs the Court is required to see whether the impugned design/product is substantially different to the design which is sought to be enforced."
14. It is pertinent to mention that even this Hon'ble Court was pleased to record in its order dated 26.02.2021 that on perusal of the comparison of the designs of the Defendant vis-à-vis the Registered Designs of the Plaintiff, it was noticed that the broad features and shape, configuration, colour combination i.e. two-tone i.e. two tone colour combination and ornamentation etc. are substantially identical or nearby the same as that of the Plaintiff.
15. A bare comparison of the Plaintiff's Products using the Registered Designs and the Infringing Products of the Defendant would reveal that the Infringing Products being manufactured by the Defendant are seeking to misrepresent and pass-off the Infringing Products as that of the Plaintiff.
CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 12 of 19 It is submitted that the manufacture, distribution and sale of the Infringing Products by the Defendants was done to deceive an ordinary consumer with average intelligence/ imperfect recollection into believing that the Infringing Products originate from or are affiliated or associated with the Plaintiff. The multiple similarities between the Plaintiff's Products and the Infringing Products as illustrated above are highly likely of creating confusion amongst the customers as to the source of the Infringing Products as that of the Plaintiff. It is further submitted that the Infringing Products have a trade dress, shape, size, configuration and pattern similar to that of the Plaintiff's Products sold under the name "Ultimo". This was deliberately done by the Defendant to take advantage of the popularity and reputation of the Plaintiff built over years. The Hon'ble Gujarat High Court in Troikaa Pharmaceuticals Ltd. v. Pro Laboratories (P) Ltd. (2008) 49 (3) GLR 2635 has held that the test to determine whether two designs are identical is that the designs have to be judged by the eye and that every design has to be compared as a whole with all its features. The relevant portion of the judgment is as follows: -
"28. Considering the rival submissions, statutory provisions and authorities cited by both the parties, the Court is of the view that D Shape Tablet may. not be considered to be new or original in its plain sense. However, its application is equally important. In Saunders v. Wiel (supra) it is held that new or original design not previously did not require novelty in the idea of the design but novelty in the application of the design to some article of manufacture. There is no doubt about the fact that English alphabet 'D' is not new or original. However its application on the Tablet can certainly assume some sort of novelty and this novelty cannot be destroyed by its having been taken from a source common to mankind Apart from the dispute regarding D Shape Tablet being new or original further dispute is also raised with regard to its prior publication and if it is established that such D Shape Tablet is previously published in that case also registration of plaintiffs design may be cancelled. On behalf of the defendant, again very strenuous efforts have been made to show that D Shape Tablets were previously published by FEMHURT and Pfizer CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 13 of 19 Ltd. This was sought to be established on the basis of certain brochures and pamplets etc. before the Court. On behalf of the plaintiff a serious dispute was raised on the authenticity as well as their reliability of such documents. In Vikas Jain v. Aftab Ahmad (supra) (AIR 2007 (NOC) 2149) the Delhi High Court has clearly made a distinction while considering the defence of prior publication taken by the defendants to succeed. The Court held that it must be shown that the very design that is utilised by the plaintiff has been published in India or in any other country prior to date of registration of the plaintiffs design. The test of ascertaining whether the two designs are identical is that the designs have to be judged by the eye and each design has to be compared to a whole with all its component features, important and unimportant. It is open for the plaintiff to demonstrate that even if the plaintiffs design is regarded as having been inspired by some previous designs, the plaintiff has introduced sufficient novelty so as to constitute a new and/or original design.
Previously published designs of other Companies have not been produced before the Court except in pictures and photos. The plaintiffs D Shape tablets as well as defendant's D Shape tablets are produced which are more or less similar. The defendant's D Shape tablets are similar in shape as well as in colour with that of the plaintiff. It would certainly create deception in the mind of ultimate user."
16. Defendant is also liable for passing off the Infringing Products as that of the Plaintiff's. It is a well settled law that for assessing a claim of passing off, the Plaintiff must satisfy the three probandas of the Classical Trinity: (i) reputation and goodwill in the goods; (ii) misrepresentation by the Defendants; and (iii) damage. The Hon'ble High Court of Bombay in Cello Household Products v. Modware India, (2017) 3 AIR Bom R 499) has held in Paras 10 and 11 as follows: -
"10. The tests for the reliefs in infringement and passing off often overlap. Similarity in the two products is undoubtedly common ground. If one should find, therefore, that Modware's product is confusingly and deceptively similar to that of Cello's registered design, ordinarily an injunction on the cause of action in infringement should follow. The defences are few and well-known. These would include saying that the design is known to the prior art; there is prior publication or, perhaps, that the plaintiffs' only claim, correctly read, is neither of novelty nor originality but of merely cobbling together several pre-existing known designs, or mosaicing. Indeed, these are CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 14 of 19 the principal defences that Mr. Tolia for Modware takes.
11. Slightly different considerations arise when assessing the claim in passing off. Here, as in any passing off action, a plaintiff must satisfy all three probanda of the so-called Classical Trinity : (i) reputation and goodwill in the goods; (ii) misrepresentation by the Defendants; and (iii) damage. This posits that similarity is demonstrated to begin with; that done, the question then is not so much whether it is confusing, but whether it is calculated to deceive. Passing off is an action in deceit; the deceit lies in the misrepresentation; and the misrepresentation must be as to source, i.e., to deceive the average consumer into believing the defendant's product is the plaintiff's. There need not be fraud, and intention is irrelevant. It is well-settled that actual damage does not have to be proved. The mere likelihood of damage, viz., that damage was reasonably foreseeable, suffices. Reputation and goodwill are also slightly different concepts. This has been the subject of some debate in international cases but this need not detain us today because Cello claims both reputation and goodwill and does not seek to treat the two as synonymous. There is some authority for the proposition that there must be a sale, because without a sale there is no misrepresentation; and, too, for the proposition, that there must be some prima facie evidence of misrepresentation, this not being a presumption. That material can come in different forms, and one of this might be to show the extent of copying and its exactitude, or to show that elements other than those in which protection is claimed have also been copied."
17. The reputation of the Plaintiff is evident from the fact that it is a distinguished name in the Indian fan industry for more than 60 years and has established itself as a one stop brand for lifestyle electrical solutions which include fans, lighting, home appliances and switch-gears. It is the largest manufacturer and exporter of fans from India and has been declared as "Superbrand" for Air Coolers category and has also won the Frost & Sullivan award for Metal Cooler innovations. The Plaintiff has earned a significant goodwill and repute in its products incorporating the Registered Designs sold under the name "Ultimo". Further, the Plaintiff has generated huge revenue from its products as mentioned above. Not only is the Defendant deceiving the general public as to the origin of the Infringing CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 15 of 19 Products as that of the Plaintiff, but is also generating profits at the cost of the Plaintiff.
18. It is submitted that the Plaintiff is also entitled to receive damages in the amount of Rs. 1,50,000/- (Rupees One Lakh and Fifty Thousand Only) payable for piracy of each of the three registered designs of the Plaintiff along with damages in the amount of Rs. 1,50,000/- (Rupees One Lakh and Fifty Thousand Only) payable for passing off, loss of goodwill and reputation caused by the illegal and unauthorised piracy of the Registered Designs of the Plaintiff, amongst other reliefs as this Hon'ble Court deems fit.
Arguments heard. Record perused.
19. The case of the plaintiff is that the plaintiff products/registered designs have a unique shape, configuration and surface pattern and the defendant is manufacturing, marketing/selling the air coolers under the name Lexus Simply Luxury having identical design to the plaintiff's registered design. The infringed products are a fraudulent imitation of the registered design with deceptively similar features to the registered designs. The same is explicit on comparison of the photographs of the products. The defendant is found to be misrepresenting and passing off the infringing products as that of the plaintiff's and the actions of the defendant also amounts to piracy/infringement of designs. The defendant despite cease and desist notice dated 14.10.2020, not refrained from manufacturing, marketing and selling the infringing products.
20. From the pleadings and evidences on record which remained unrebutted and unimpeached, the plaintiff able to prove that plaintiff is registered proprietor of Plaintiff's Products/ Registered Designs have a unique shape, configuration and surface pattern; a compact cuboidal shape CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 16 of 19 such that the vents of the Air Coolers are in the top half of the front view with a border (in a different colour) framing/ surrounding the vents; the surface pattern of the Plaintiff's Products/ Registered Designs has an interplay of stepped up and stepped down elements with a unique trapezium shaped indent in the bottom half of the front view (under the Air Cooler vents) with a Water Level Indicator in the middle; the Plaintiff's Products have an aesthetically appealing duo-tone colour in two variants:
(i) blue-grey and orange; and (ii) blue-grey and light grey; the Plaintiff's Products / Registered Designs have control buttons on the top of the products. There is also a curve in the colored border at the top resembling the shape of a trapezium; the Plaintiff's Registered Design also has a unique structure where the top of the product is curved such that the back is longer than the front; the Plaintiff's Products / Registered Designs have extra vents on either side of the products; minimal yet clean and bold graphic elements make the Plaintiff's Products stand out in cluttered market place/against the competition.
21. On appreciation of evidence on record, this Court is satisfied that the designs of the infringing products are fraudulent imitation of the plaintiff's registered designs. A bare comparison would create a confusion amongst the consumers regarding the source of infringing products. Defendant is also found to liable passing off the infringing products.
22. In view of the above, plaintiff is entitled to a decree of permanent injunction against the defendant from dealing with the goods and services having infringing marks and defendant is hereby restrained from manufacturing, marketing, using, selling, soliciting, importing, exporting, displaying, advertising or by any other mode or in any manner using the impugned name "Lexus Simply Luxury", having identical design to the CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 17 of 19 Plaintiff's Registered Designs and are permanently injuncted from using in any form or manner registered trademarks of the plaintiff, passing off, infringement of copyright, in relation to using any deceptively similar trademark to the plaintiff's trademark.
Damages and Costs
23. Now coming to the relief of damages. Ld. Counsel for plaintiff requested damages for an amount of Rs. 1,50,000/- towards piracy of each of the three registered designs alongwith damages for an amount of Rs. 1,50,000/- towards for passing off loss of goodwill and reputation caused by illegal and unauthorized piracy of the registered designs of the plaintiff alongwith cost of litigation. The defendant remained ex-parte, therefore, the extent of the damages cannot be ascertained, however, the plaintiff is suffered the damages, therefore, the plaintiff is in total entitled nominal damages of Rs. 50,000/- towards piracy, passing off loss of goodwill and reputation caused by illegal and unauthorized piracy of the registered designs of the plaintiff.
Relief
24. Having regard to the afore noted discussion, the suit of the plaintiff is decreed. A decree of permanent injunction in favour of plaintiff against the defendant is hereby passed and defendant is restrained from dealing with the goods and services having infringing marks and defendant is hereby restrained from manufacturing/ marketing/ selling air coolers under the name "Lexus Simply Luxury", having identical design to the Plaintiff's Registered Designs and are permanently injuncted from using in any form or manner registered trademarks of the plaintiff, passing off, infringement of copyright, in relation to using any deceptively similar trademark to the plaintiff's trademark.
CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 18 of 19
25. A further decree in the sum of Rs. 50,000/- towards compensatory damages and Rs. 25,000/- towards punitive damages is hereby passed in favour of plaintiff and against the defendant. Plaintiff is also entitled to costs of Rs. 10,000/- (inclusive of Court fees.). Decree sheet be drawn up accordingly. File be consigned to record room.
Announce in the open court on 09th November, 2023 (Ajay Kumar Jain) District Judge(Commercial Courts- 03), SE/Saket Courts/Delhi CS (COMM) 56/21 M/s Orient Electric Ltd. Vs. Sanmuk Industries Dt. 09.11.2023 pg. 19 of 19