Delhi District Court
M/S Oriental Aromatics Ltd vs Subodh Jain on 14 March, 2023
IN THE COURT OF MS SAVITA RAO, DISTRICT JUDGE
COMMERCIAL COURT-04, SHAHDARA,
KARKARDOOMA COURTS, DELHI
CNR No. DLSH01-002080-2019
CS (Comm) No. : 156/2020
In the matter of :-
M/s Oriental Aromatics Ltd.
Regd. Off: 133, Jehangir Building
2nd Floor, M.G. Road, Fort,
Mumbai - 400001
............Plaintiff
Vs.
Subodh Jain
Trading as : M/s S.S. Enterprises,
96, Dharampura, Near Palika Market
Ghaziabad - 201001
Also At :
3245, First Floor, Bahadurgarh Road
Near Azad Market, Delhi - 110006
......... Defendant
Date of institution of the case : 29.03.2019
Date of final arguments : 19.01.2023, 10.02.2023,
23.02.2023 and 06.03.2023
Date of judgment : 14.03.2023
JUDGMENT
1. This is suit u/s 14 & 135 of Trade Marks Act and u/s 55 of Copyright Act for permanent injunction, restraining infringement, passing off, delivery up and rendition of account etc. filed by plaintiff company against the defendant. Plaintiff is a company duly incorporated under the Indian Companies Act and is engaged in the business of manufacturing and marketing all CS (Comm) No. 156 of 2020 1/31 kinds of fine fragrance, flavours, synthetic camphor, incense stick, terpene chemicals and other allied and cognate goods. As stated, plaintiff company conceived and adopted the trade mark/label "
SARASWATI CAMPHOR AND DEVICE OF SARASWATI" in the year 1967 in relation to said goods and business. Plaintiff company in order to expand their business and in sync with the modern time has conceived and adopted the Trademark/ label "
SARASWATI CAMPHOR AND DEVICE OF SARASWATI "
label and its logo (as mentioned in the plaint) with different artistic features, getup, colour scheme and combination layout and trade dress to look more impressive and modern in the market equipped with the same entrusted quality.
2. Plaintiff company, as stated, is the owner and proprietor of said Trademark/Label on account of honest, bonafide and prior adoption and continuous and commercial use thereof and since the year 1967, it has been continuously, openly, exclusively and uninterruptedly using the said trade mark/label in relation to its said goods and business and carrying on its said goods and business there under and has built up a valuable trade, goodwill and reputation thereunder and acquired proprietary rights therein. As further stated, plaintiff's trademark SARASWATI CAMPHOR/ LABEL is registered in class 3 in India under the provisions of Trade Marks Act.
3. Plaintiff has regularly and continuously been promoting its said distinctive trademark SARASWATI CAMPHOR (word mark) and Label and the goods and business thereunder through extensive advertisements, publicities, promotions and marketing research and has been spending enormous amount of money, efforts and time thereon. Due to its continuous efforts and highest CS (Comm) No. 156 of 2020 2/31 standard of quality, plaintiff company has built up a handsome market under the said SARASWATI CAMPHOR (word mark) and Label and achieved sales running into crores of rupees.
4. Defendant with malafide intention and to pass on its products as those of the plaintiff, deliberately adopted the SARASWATI CAMPHOR (word mark) and Label and intentionally copied the entire artistic work of packaging/trade dress of plaintiff in same colour combination, writing pattern, colour scheme of the letters and printing style of camphor packets to pass on its inferior quality goods as superior goods of the plaintiff. The pictorial representation of the trademark, trade dress, colour scheme, design, label of defendant was also filed alongwith the plaint.
5. Defendant adopted the impugned trademark/label/packaging/trade dress only with a view to trade upon the tremendous goodwill and reputation of plaintiff's trademark/label/packaging/trade dress. Defendant is violating the plaintiff's aforesaid trademark/label/packaging /trade dress by passing off its goods and business as that of the plaintiff as well as diluting the plaintiff's rights therein. On account of defendant's impugned activities, plaintiff is suffering tremendously in business and goodwill and the plaintiff's said proprietary rights are being violated. The innocent purchasers are being deceived and irreparable loss and serious mischief is being caused to the plaintiff and to the consuming public. The loss to the plaintiff cannot be calculated in terms of money nor it can be so compensated.
6. It was only on 27.03.2019 that plaintiff got the call from one person who was part of the inspection conducted by Food and CS (Comm) No. 156 of 2020 3/31 Safety Officer, Ghaziabad (who was also impleaded as Defendant no.2 but was directed to be deleted from array of parties vide order dated 02.11.2021), on the complaint made by one company for manufacturing of inferior and/or fake quality of ajinomoto under their brand Golden Crown. Surprisingly, Food and Safety Officer, Ghaziabad and other person accompanied by the company personnel's, shocked to know that huge quantity of counterfeited/fake " SARASWATI CAMPHOR" were also being manufactured by Defendant in the same premises. Plaintiff's representative immediately reached the said premises of defendant and verified the counterfeited/fake " SARASWATI CAMPHOR"
in presence of Food and Safety Officer, Ghaziabad. Subsequently, Food and Safety Officer, Ghaziabad completed their inspections/proceedings due to non availability of owner/defendant and sealed the premise under their seal and affixed the notice informing the search and seizure on the main gate of the premises. On 28.03.2019, plaintiff approached the concerned Police Station Kotwali for lodging complaint in respect of infringement and passing off of trademark and copyright but concerned SHO refused to take complaint on the basis of locked premises of defendant. Thereafter, plaintiff approached Food and Safety Officer, Ghaziabad for de-sealing the premises of defendant but plaintiff was informed that since defendant was not available, premises cannot be de-sealed.
7. Hence, instant suit against defendant was filed by the plaintiff against the defendant with submission that if defendant was not restrained from continuing the said activities, plaintiff shall continue to have irreparable losses of business as well as the said act will injure the goodwill of plaintiff's trademarks. Thus, CS (Comm) No. 156 of 2020 4/31 the plaintiff, as stated, is entitled for order of injunction, restrainment order and delivery up of all the impugned finished and unfinished materials bearing plaintiff's trademark and rendition of accounts of profits earned by defendants by their impugned illegal trade activities alongwith cost of proceedings.
8. In written statement filed on behalf of defendant, it was stated that defendant has not used any identical and/or trademarks and logos deceptively and confusingly similar to alleged trademark of plaintiff on any apparel and packaging material as was alleged by the plaintiff. As stated, defendant is merely working as manufacturer of casting soda for 15-20 years i.e. without any logo or sticker and plaintiff has miserably failed to place on record any single document or survey report or proof that the plaintiff or alleged investigator had conducted any survey on 27.03.2019 or that the huge quantity of counterfeited/fake "
SARASWATI CAMPHOR" were also being manufactured by the defendant. Plaintiff did not lodge any complaint in respect of infringement and passing off of Trademark or that property/premises of defendant was seen by defendant no.2 (deleted from array of parties vide order dated 02.11.2021). Plaintiff has not filed any single document in respect of the ownership and occupation of the premises as alleged by the plaintiff.
9. It was further stated that no counterfeit goods were seized from the property of defendant and the photographs placed on record by Local Commissioner alongwith report do not show any label or logos on the alleged duplicate items/goods. Moreover, no photographs of the premises were filed to show that the alleged duplicate labels/logos were manufactured at the premises or CS (Comm) No. 156 of 2020 5/31 factory of defendant. It was further stated that defendant was not present at the alleged premises at the time of inspection and sealing of the premises and as per Local Commissioner's Report, it is not clarified " who is the owner of the property? and " who is the occupant of the property in question" ?
10. It was further stated that there is no single document attached with the plaint to prove that the people who were present at the premises were employees of defendant . Even there is no statement of any neighbours and Local Police. It was denied that plaintiff company is the owner and proprietor of artistic features involved in the trademark SARASWATI CAMPHOR LABEL ( word mark) and label and holds copyright therein or that defendant has committed any infringement of trademark of plaintiff company or is guilty of passing off its goods as that of plaintiff company.
11. Application under order XIII-A Rule 3 CPC r/w sec. 151 of CPC was filed on record. It was submitted by counsel for plaintiff that subsequent to grant of ex-parte injunction and appointment of Local Commissioner, on 30.03.2019 commission proceedings were duly exeucted by Ld. Local Commissioner wherein huge quanity of impugned goods bearing the impugned trademark/label/trade dress SARASWATI CAMPHOR LABEL, which was identical and/or similar to the plaintiff's registered trademark/label/trade dress SARASWATI CAMPHOR LABEL were found which were accordingly seized by Ld. Local Commissioner. Defendant upon appearance though filed written statement but the same is devoid of any substantial claims against the plaintiff. Moreover, as the aforesaid injunction order dated 29.03.2019 is very much valid and subsisting and as defendant CS (Comm) No. 156 of 2020 6/31 has no real prospect of successfully defending the claim and there is no other compelling reason why the claim should not be disposed off before recording oral evidence, this court has power to pronounce judgment against the defendant as specified in order XIII-A Rule 3 CPC. For the abovesaid, reliance is placed by Ld. counsel for plaintiff upon Ahuja Radios Vs. A.Karim CS(COMM) no. 35/2017 and Sandisk LLC Vs. Ishu Narang, CS (COMM) no. 857/2016.
12. While placing reliance upon Carier International A.G. & Ors. Vs. Gaurav Bhatia & Ors. 2016 SCC Online Del 8 and Sandisk LLC Vs. B-One Mobile & Ors. 2019 SCC Online Del 8022, it was further submitted by Ld. counsel for plaintiff that lots of energy and resources are spent in litigating by the plaintiff against the defendant who infringed the registered Trademark/label/Trade dress SARASWATI CAMPHOR and DEVICE OF SARASWATI of plaintiff. Further, defendant tried to encash upon the goodwill and reputation of plaintiff by passing off his inferior and poor qualiy goods as that of plaintiff's brand.
13. Ld. counsel for plaintiff further made following submissions:
(a) That the defendant is an infringer who has been indulging in trading the counterfeiting goods and manufacturing counterfeit products under the impugned trademark/label/trade dress SARASWATI CAMPHOR LABEL, which fact is categorically evident from the report of Local Commissioner. Defendant has averted in written statement that defendant has not used any identical and/or trademarks and logos deceptively and confusingly similar to the alleged trademarks of the plaintiff on any apparel and packaging material , whereas report of Local CS (Comm) No. 156 of 2020 7/31 Commissioner finds mention that " upon comparing the same with the packing/wrapper present at the said premises and found prominent difference between the both in respect of design and colour" .
(b) That, it is diligently clear from the execution photographs of commission which prominently depict indistinct and vivid evidence of the impugned goods found at the premises of defendant.
(c) That defendant has falsely stated in written statement that defendant is merely working as manufacturer for 15-20 years without any logos or sticker and he has also refused that any counterfeit goods were seized from defenant's premises. whereas in terms of report of Ld. LC, impugned goods were seized from defenant's premises in 16 plastic bags and an inventory report was duly prepared. That, defendant further denied that the photographs placed on record by LC alongwith the reprot does not show any label/logos on the alleged duplicate items/goods, which is absoluely preposterious to avert, when the LC's report alongwith relevant facts cogitate otherwise.
(d) That, defendant since has no real prospect of defending the claim, thereby, being aggrieved by the same, defendant having mala-fide intention to linger on the present proceedings, filed the written statement without any merits or defence to claim, which is yet another tactics of the defendant to vex the plaintiff by delaying the justice.
(e) That, it is merely a derivative technique of defendant by stating wrong, false and frivolous facts in written statement which is evidentiary noticeable and observable as per report of the LC, wherein sufficient photographical evidence is already on CS (Comm) No. 156 of 2020 8/31 record alongwith huge quantities of impugned goods seized by the Ld. Local Commissioner at the time of commission executed at defendant's premises. Hence, it is determined that defendant has sheer malice in his activites and actions, by disagreeing strong evidence available and submitted by Ld. LC.
14. Reliance was placed by Ld. Counsel for plaintiff upon following judgments:
(1) Mallcom (India) Limited & Ors. Vs. Rakesh Kumar & Ors., 2019 IVAD (Delhi) 76 ".... (N) The defendants, though have pleaded having adopted the mark honestly and bona fide but have not explained as to why the defendants would invent a word for their shoes. No issue thus arises on the plea of the defendants, of honest and bona fide adoption of the mark by the defendants.
(o). Even otherwise, once the two marks are found to be similar/deceptively similar, howsoever honest the adoption by the defendants may be of the mark, will have no bearing on the grant of relief of injunction .
27. The plaintiffs are thus found entitled to summary judgment for the relief of permanent injunction restraining infringement of trade mark, copyright and passing off " .
(2) Hindustan Pencils Pvt. Ltd. Vs. M/s India Stationery Products Co. I.A. No. : 2275 of 1998 in Suit no. 941 of 1988, " 32...Where the plaintiff, is guilty of acquiescence, there different considerations may apply. Acquiescence may mean an encouragement by the plaintiff to the defendant to use the infringing mark. It is as if the plaintiff wants the defendant to be under the belief that the plaintiff does not regard the action of the defendant as being violative of the plaintiff's rights. Furthermore, there should be a tacit or an express assent by the plaintiff to the defendant's using the mark and in a way encouraging the defendants to continue with the business. In such a case, the infringer acts upon an honest mistaken belief that he is not infringing the trade mark of the plaintiff and if, after a period of time when the infringer has established the business reputation, the plaintiff turns around and brings an action for injunction, the defendant would be entitled to raise the defence or acquiescence. Acquiescence may be a good defence even to the grant of a permanent injunction because the defendant may legitimately contend that the encouragement of the plaintiff to the defendant's use of the mark in effect amounted to the abandonment by the plaintiff of his right in favour of the defendant and, over a period of time, the general public has CS (Comm) No. 156 of 2020 9/31 accepted the goods if the defendant resulting in increase of its sale. It may, however, be stated that it will be for the defendant in such cases to prove acquiescence by the plaintiff. Acquiescence cannot be inferred merely by reason of the fact that the plaintiff has not taken any action against the infringement of its rights.
(3) LT Foods Limited Vs. Saraswati Trading Company, CS (Comm) no. 413/2021:
" 19. The purpose of law of infringement and passing off is not only to protect rights of the proprietors of the marks but also to protect the consumers from being mislead into dealing with and /or buying the goods of one for the other.
20. As far as back as in Hindustan Pencils (P) Ltd. Vs. India Stationery Products Co. MANU/DE/0383/1989 : AIR 1990 Del 19, Justice Kirpal, as his lordship then was, held that though in an action for infringement of trade mark if the interim injunction is not granted, the plaintiff when ultimately succeeds can always be compensated by awarding damages for the loss suffered but during the period the defendant is allowed to continue to infringe the trade mark, it is the consumer or the purchaser who alone suffers and who ultimately cannot be compensated; therefore, in order to curb the menace of manufacture, production and sale of spurious goods and the blatant violation of intellectual property, it will be proper fir the court to take into consideration the interest of the general public. It was held that the right of the public not to be deceived or confused may turn the scales in favour of a preliminary injunction. It was yet further held that even though there may be some doubt as to whether laches or acquiescence can deny the relief of permanent injunction, judicial opinion has been consistent in holding that if the defendant acts fraudulently with the knowledge that he is violating the plaintiff's right, then in that case, even if there is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied.
21. The aforesaid dicta in Hindustan Pencils (P) Ltd. (supra) was followed by High Court of Gujarat in Rupa & Co. Ltd Vs. Dawn Mills Co. Ltd. MANUGJ/0004/1998: AIR 1998 Guj 247 and by this court in Ansul Industries Vs. Shiva Tobacco Company MANU/DE/7486/2007 : 2007 (34) PTC, 392, Beiersdorf A.G. Vs Ajay Sukhwani MANU/DE/1631/2008 : 2009 (39) PTC 38 and Apollo Tyres Ltd. Vs. Pioneer Trading Corporation MANU/ DE/2374/2017 : 2017 (72) PTC 253
22. While referring to Power Control Appliances Vs. Sumeet Machines Pvt. Ltd. Mnu/sc/0646/1994 : (1994) 2 scc 448, it was observed that it is settled principle of law relating to trade mark that there can be only onemark, one source and one proprietor; it cannot have two origins. While referring to Synthes AG Chur Vs. rob Mathys India (P) Ltd., it was further observed that " in the interest of general public, the defenant cannot be allowed to use the trade marks and try to use the name and reputation of the plaintiffs for its business" ; and consequently restraining the defendant from doing anything which was likely to cause confusion, deception and amount to passing off of the goods and business of the defendant for those of the plaintiff ;a party cannot be permitted to bask in the warmth and make illicit profit from a reputation built by another and that it is necessary to protect the interest" .CS (Comm) No. 156 of 2020 10/31
(4) South India Beverages Pvt. Ltd. Vs. General Mills Marketing Inc. FAO (OS) 398/2014: MANU/SC/0763/2001 Laxmikant V. Patel Vs. Chetan Bhai Shah and Anr. :
" 10. ..a person may sell his good or deliver his services such as in case of a profession under a trading name or style. With the lapse of time, such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the name or by imitating that name results in injury to the business of one who has the property in that name. 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".
(5) Devagiri Farms Pvt. Ltd. Vs. Mr. Sanjay Kapur and Anr. , FAO (OS) 274/2014, decided on 01.02.2016 " 7. Tested on the well recognized touchstone of the principle of deception, it would be apparent to the naked eye that any purchaser of tea with the usual imperfect recollection to which all humans are prone to, would be deceived when she/he comes across the tea packed by the appellant.
8. It is the overall get up and similarity which has to be seen and not the minor variations because it is similarity which strikes and not the dissimilarities which distinguish when an ordinary person recollects an object seen in the past".
(6) Parle Products (P) Ltd. Vs. J.P. and Co. Mysore, Civil Appeal no. 1051 of 1967, decided on 28.01.1972, AIR 1972 SC 1359, MANU/SC/0412/1972.
" 6......The expression " deceptively similar" has now been defined under section 2 (d) of the Act of 1958, thus:
A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;
7.. To decide the question as to whether the plaintiff's right to a trademark has been infringed in a particular case, the approach must not be that in an action for passing off goods of the defendants as and for those of the plaintiff. According to this, Court in Durga Dutt Vs. Navratna Laboratories MANU/SC/0197/1964: (1965) 1 SCR737.
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 CS (Comm) No. 156 of 2020 11/31 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 trademark 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 the infringement.
In the above case, the court further pointed out:
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. Expresses in another way, if the essential features of the trademark 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 ; wheres 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.
8...According to Karly's Law of Trade Marks and Trade (9th Edition paragraph 838):
Two marks, when placed side by side, may exhibit many and various differences yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might by simply a game of football. It would be too much to expect that persons dealing with trade-marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own.
9...It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with CS (Comm) No. 156 of 2020 12/31 one, to accept the other if offered to him. In this case, we find that the packets are practically of the same size, the court scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background, there is a farm house with a fence. The word " Glucose Biscuits" in one and " Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets to-day may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs' goods, he might easily mistake the defendant's wrapper for the plaintiffs' if shown to him sometime after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendant's wrapper is deceptively similar to the plaintiffs' which was registered".
(7) CS (OS) No. 3/2020, I.A. No. 21/2010 titled as The Timken Company Vs. Timken Services Pvt. Ltd.
" A fair and honest trader will not give a misleading name to its product to the continuing detriment of the plaintiff who has built up their goodwill in the business after years of hard work. It is this intangible right to property which the law seeks to protect. Mere concurrent user is not sufficient in law. It must be honest. The mark is said to be in use as against the mark which is admittedly registered. The presumption available in law in favour of the registered trade mark must necessarily flow from the facts of the case . To establish honesty, the efforts made by the defendant, who says that the mark is honestly used, must be such, which will satisfy the conscience of the court that the user was honest. Such defendant carries a higher degree of obligation of being more diligent in establishing the case of honesty, especially when such user is put against the mark which is the registered trade mark.
As was further observed that " defendant has also copied the plaintiff's art work, font and orange colour which prima facie amounts to infringement of plaintiff's copyright . There is an uncanny degree of similarity between the plaintiff and defendant's copyright, colour scheme , get up, font and artwork. This would only mean that one of the parties has copied from the other and it has never been the case of the defendant that the plaintiff has copied from them. The plaintiff's copyright has been in continuous and prior use".
(8) Kavi Raj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 and in National Bell Co. v. Metal Goods Mfg. Co., AIR 1971 SC 898 CS (Comm) No. 156 of 2020 13/31 " 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 the goods in respect of which the trade mark is registered and to obtain relief in respect of any infringement of such trade mark. 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".
(9) American Home Products vs. Mac Laboratories, AIR 1986 SC 137 " when a person gets his trade mark registered, he acquires valuable rights by reason of such registration. The registration of the trade mark gives the goods in respect of which it is registered and if there is any invasion of this right by any other persons using a mark which is the same or deceptively similar to the trade mark, one can protect the trade mark by an action for infringement in which an injunction can be obtained" .
(10) Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147 " the plaintiff has been using the word 'Mahindra' and 'Mahindra & Mahindra' in its companies/business concerns for a long span of time extending over five decades. The name has acquired distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name 'Mahindra' with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiff's group of companies. Such user may also affect the plaintiff prejudicially in its business and trading activities".
(11) Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65 " an injunction has to be granted where there is probability of confusion even though the defendant adopted the name innocently. 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 belong 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 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" .
(12) Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia, 2004 (28) PTC 121 (SC), CS (Comm) No. 156 of 2020 14/31 "in cases of infringement either of trade mark or of copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The Court further held that grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest".
(13) Milment Oftho Industries v. Allegran Inc., 2004 (28) PTC 585 (SC), " even if there is no sale of goods in India, the plaintiff is entitled to injunction as long as the plaintiff is the prior user in the and transborder reputation is established. The ultimate test is who is first in the market".
(14) Daimler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Del 239 "the trade mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation with reference to goods, especially so when the reputation extends worldwide".
(15) Aktiebolaget SKF v. Rajesh Engineering Corporation, 1996 (16) PTC 160 (Del.) " the different explanations of the respondent for using the impugned trade mark does not strengthen its case but detracts from the truthfulness of the explanation. The use of the trade mark by the respondent, therefore, is not bona fide, and is a colourable imitation of the appellant's trade mark. Since the adoption of the mark was dishonest, the alleged use of the same will be of no consequence.
(16) Baker Hughes Ltd. v. Hiroo Kushalani, 74 (1998) DLT 715 " there can be an informed class of purchasers who have a degree of knowledge and a sense of discrimination more substantial than that of an ordinary purchaser, but the mere fact that the customers are sophisticated, knowledgeable and discriminating does not rule out the element of confusion if the trade marks/trade names/corporate names of two companies are identical or if the similarity between them is profound. In several cases it has been held that initial confusion is likely to arise even amongst sophisticated and knowledgeable purchasers under a mistaken belief that the two companies using the same corporate name, trading name or style are inter-related. It is this class of buyers who are likely to think that there is some sort of association between the products of two different companies when they come across common or similar trade names or corporate names or trading styles used by them. The sophistication of a buyer is no guarantee against likely confusion. The court further held that in some CS (Comm) No. 156 of 2020 15/31 cases, however, it is also possible that such a purchaser after having been misled into an initial interest in a product manufactured by an imitator discovers his folly, but this initial interest being based on confusion and deception can given rise to a cause of action for the tort of passing off as the purchaser has been made to think that there is some connection or nexus between the products and business of two disparate companies".
(17) B.K. Engineering Co. v. Ubhi Enterprises (Registered) 27 (1985) DLT 120 " fair and honest trader will not give a misleading name to his product to the continuing detriment of the plaintiff who has built up his goodwill in the business after years of hard work. It is this intangible right to property which the law seeks to protect".
(18) M/s Lupin Laboratories v. M/s Jain Products, AIR 1998 Bom 312, " mere concurrent user is not sufficient in law. It is must be honest. The presumption available in law in favour of the registered trade mark must necessarily flow from the facts of the case. To establish honesty, the efforts made by the defendant, who says that the mark is honestly used, must be such which will satisfy the conscience of the Court that the user was honest. Such a defendant carries a higher degree of obligation of being more diligent in establishing the case of honesty, especially when such user is put against the mark which is the registered trade mark".
(19) Alfred Dunhill Limited v. Kartar Singh Makkar, 1999 (19) PTC 294 (Del.) " the real test is whether defendants have any right to represent their business as the business of plaintiff. It ultimately leads to the question as to why defendants were using the trade name 'Dunhill' to their products. The defendants have not offered any explanation whatsoever as to why the mark 'Dunhill' was being used by them. The name 'Dunhill' is neither parental name of defendants nor in any way connected with them. The mark 'Dunhill' is attributable to the surname of Alfred 'Dunhill'. All of the goods marketed by plaintiff company are sold under the trade mark and trade name 'Dunhill'. The trade mark and trade name 'Dunhill' has become distinctive of the plaintiff's goods as a result of substantially exclusive and continuous use in commerce since 1893. Thus, the use of the trade name 'Dunhill' by defendants is indicative of their intent. The defendants' desire to market their goods under the name of mark 'Dunhill' is to trade upon and encash on the name, fame, reputation, image and good will acquired by the plaintiff company".
(20) Jolen Inc. v. Doctor & Company, 98 (2002) DLT 76, CS (Comm) No. 156 of 2020 16/31 " when a party after copying a trade mark comes out with an explanation as to its invention which is unbelievable or may be plausible, its attempt to synchronize combination of words is a mere after-thought and an act of searching excuses and explanation. It is natural for the parties who have copies trade mark to try and explain its conduct and to look out for means to explain derivation of words so adopted. If trade mark having element of prior continuance and use has been copied, no amount of explanation even if it is plausible is capable of defending infringement of copyright of such prior use. The Court further held that there is an uncanny degree of similarly between the plaintiff and defendant's trade mark, colour scheme, get up, lay out of the container and the carton etc. which could only mean that one of the parties has copied from the other and it has never been the case of the defendant that the plaintiff has copied from them. The defendants have quagmired themselves to invent explanation. The Court further held that the explanation of the defendant in choosing the impugned trade name is highly implausible, farfetched and wholly unconvincing and the dishonesty in choosing the name and the ill design to trade and cash upon the reputation and goodwill of the plaintiff is pronounced ad prominent. The Court held that passing off involves elements of misrepresentation and deceit. The object of adopting the trade name or deceptively similar name of another person is to trade upon and derive the financial benefit from the reputation and goodwill of that person. As a consequence the business or the goodwill of the other person suffers damage in financial as well as in terms of reputation. That is why the remedy against passing off action is independent of the infringement action arising from the violation of the statutory right to a trade mark".
(21) Hamdard National Foundation v. Abdul Jalil, 2008 (38) PTC 109 (Del.), " the balance of convenience lies in favour of the plaintiff and ad interim injunction is granted. The defendant took a calculated risk in using the 'Hamdard' word and eye mark; indeed its use of the eye mark points to an attempt to "free ride" on the plaintiff's reputation. The Court further held that unless injuncted, the plaintiff would continue to suffer commercially".
(22) Punjab Tractors Ltd. v. Pramod Kumar Garg, 85 (2000) DLT 567, " the criteria for determining what is likely to deceive or cause confusion is whether the trade mark by its resemblance to another trade mark already on the register is likely to deceive in the normal course of its legitimate use in the trade and that the goods are such that by virtue of some similarly, affinity or other circumstances the purchasing public will consider them as coming from the same source if marketed under similar trade marks. The approach has to be from a business and commercial point of view and the test of sameness and description should be a business and practical test. In judging the nature and composition of the goods, their respective usages and functions and the trade channels through which they are bought and sold are to be taken notice of" .
CS (Comm) No. 156 of 2020 17/31(23) Sony Kabushiki Kaisha v. Mahaluxmi Textile Mills, 2009 (41) PTC 184 (Cal.), " if a person is the holder of a trade mark which has acquired a wide reputation transcending international barriers even though in respect of a specified class or category of goods, that trade mark cannot be allowed to be violated by another person in respect of different category of goods because that other person will be deliberately using the trade mark of the former with an intent to get some undue advantage because of its reputation and goodwill".
(24) Beiersdorf A.G. v. Ajay Sukhwani, 156 (2009) DLT 83, " misrepresentation cannot exist in vacuum and is co-relatable to the extent, value and nature of goodwill of the plaintiff. Greater the goodwill, greater is the need to protect and wider is the cover and the field of protection. The Court further held that looking at the similarly of the two marks, fraudulent adoption of the said mark by the defendants, the nature and extent of the goodwill of the plaintiff, nature and difference of trade by itself is not sufficient to defeat the suit for passing off. Damage/loss can be presumed as a natural consequence of misrepresentation.
(25) Rolex SA v. Alex Jewellery Pvt. Ltd. 2009 (6) R.A.J. 489 (Del.) " plaintiff was the proprietor of a well-known registered trade mark 'Rolex' in respect of watches and the defendant started using the mark in respect of artificial jewellery. This Court held that the 'Rolex' in respect of watches and the defendant started using the mark in respect of artificial jewellery. This Court held that the 'Rolex' was a well-known trade mark and has also reputation in India and therefore, the defendant was restrained under Sec. 29 (4) (c) of the Trade Marks Act from using the trade mark "Rolex".
(26) Vardhman Properties Ltd. v. Vardhman Devlopers and Infrastructures, 166 (2010) DLT 782, " the plaintiff, a real estate developer, was registered proprietor of the trade mark of 'Vardhman' and the defendant adopted the same for business of booking flats and real estate consultancy. This Court held that acquiescence prima facie does not arise in such situation where there is nothing showing the plaintiff's action, over or otherwise encouraging defendant to continue using the mark. The Court held that once a prima facie case in infringement actions is established, the Courts ordinarily should not withhold relief. The Court restrained the defendant from using the plaintiff's trade mark.
CS (Comm) No. 156 of 2020 18/31(27) Marvel Tea Estate India Ltd. v. P.M. Batra (Prop) M/s Gurukripa Traders, 2012 (49) PTC 82 (Del.), " in order to prove the case for infringement of trade mark, the plaintiff has to show that the essential features of the registered trade mark which has been adopted by the defendant, has been taken out from the plaintiff's registration. Only the marks are to be compared by the Court and in case the registration is granted in favour of the plaintiff, he acquires valuable right by reason of the said registration".
(28) Ozone SPA Private Limited v. Ozone Club, 2010 (42) PTC 469 (Del.) " the registered proprietor of the trade mark 'Ozone' was running a spa whereas the defendant adopted the same trade mark for running fitness center, health club and gymnastics. The plaintiff's trade mark was a well- known trade mark within the meaning of Section 2(1) (zg) and had acquired goodwill and reputation and, therefore, the case was covered under Section 29 (4) of the Trade Marks Act for protection of the mark in respect of dissimilar goods as well" .
(29) Himalaya Drug Company v. SBL Limited, 2013 (53) PTC 1 (Del.)(DB), " the rival marks are to be compared as a whole. Where two marks are identical, it is not necessary for the plaintiff to prove further that the use of defendant's mark is likely to deceive or cause confusion as the registration shows the title of the registered proprietor and the things speaks for themselves. If the Court finds that the defendant's mark is closely, visually and phonetically similar then no further proof is necessary. It is no necessary for the plaintiff to adduce evidence of actual deception in order to prove the case of infringement".
(30) LT Foods Limited v. Sulson Overseas Pvt. Ltd. (192) 2012 DLT 373, "the foundation of the law of infringement of the trade mark, copyright and of passing off is honesty. No one shall be permitted to enrich himself on the goodwill and reputation built up or earned by anyone else".
15. Ld. counsel for defendant, per contra, submitted that the application for passing of summary judgment is not maintainable because plaintiff has not come to the court with clean hands and has suppressed the material facts. As stated, defendant has taken the following valid defence and there are so many triable issues which can be proved by leading the evidence:
CS (Comm) No. 156 of 2020 19/31(a) That plaintiff has no valid cause of action to file the present suit against defendant.
(b) That plaintiff has not valued the suit and not paid the proper court fees with plaint in respect of the prayers. There is no amount of valuation and court fees mentioned in respect of permanent injunction and rendition of account.
(c) That plaintiff has failed to place on record any single document in support of his contentions and allegations leveled against the defendant that he has used any impugned trade mark or copyright.
(d) That as per the allegations of plaintiff, counterfeit goods were seized from defendant's premises but no photographs have been placed on record in respect of the premises of defendant and there is no evidence that defendant manufactured or sold any impugned trademark or copyright of plaintiff.
(e) That plaintiff also failed to disclose the name of the person who was present at the alleged spot at the time of inspection by LC and no where mentioned about the presence and status of defendant at the alleged premises
(f) That plaitniff is required to prove all the averments made by him in plaint alongwith relevant documents and it cannot seek blank/simplictor order in his favour without proving the allegations and legal right of defendant will be violated by summary judgment.
(g) That it is settled law, as was set out in case titled as Indian Performing Right Vs. Mr. Badal Dhar Choudhary CS (OS) no.
1014/2004 that while exercising inherent jurisdiction under the provisions of CPC, the vague injunction may not be issued and vague injunction can be abuse of process of court and such vague CS (Comm) No. 156 of 2020 20/31 and general injunction of anticipatory nature can never be granted scope and extent of such order need to be categorically stated to avoid any sort of misuse of legal machinery.
16. Ld. Counsel for defendant placed reliance upon S.P. Chengalvaraya Naidu Vs. Jagannath AIR 1994 SC , Policy Bazar Web Aggregator Vs. Acko General Insurance Limited :
CS (Comm) no. 260/2019, Smithkline Beecham Consumer Vs. G.D. Rathore and Ors. 2002 (25) PTC 243 Del and Modella Wollen Ltd. Vs. Modella Knitwears Ltd.
MANU/DE/0724/1995 wherein interalia it was noted that " the courts of law are meant for imparting justice between the parties and the one who comes to the court must come to the court with clean hands and the party who approaches the court with unclean hands and suppresses the material facts, will not be entitled for an order of injunction ".
17. Vide order dated 29.03.2019, Local Commissioner was appointed in the matter to visit the premises of defendant i.e. Subodh Jain trading as M/s S.S. Enterprises,96, Dharampura, Near Palika Market, Ghaziabad - 201001. Since the premises had been sealed by Food and Safety Office, Ghaziabad, they were directed to deseal the premises of defendant for execution of the order and after execution, to reseal the premises. Ld. Local Commissioner found the huge quantity of deceptively similar/counterfeit products. In terms of Report of Ld. Local Commissioner, original packing/wrapper from AR of the plaintiff company was obtained and was compared with the packing/wrapper found at the premises of defendant in which Ld. LC found prominent difference between the both in respect of design and colour (Original/genuine packing/wrapper supplied CS (Comm) No. 156 of 2020 21/31 by the AR and the impugned packing/wrapper were attached with the report). List of inventory of said impugned empty wrappers, finished packets, empty cartoons were prepared, same were seized and photographs of the proceedings were also taken.
18. Both the wrappers filed alongwith the report of Ld. Local Commissioner and also separately filed by plaintiff, bear the same tradename/trademark and the identical presentation except for small variation in colour . Trademark Proprietor's name, as reflected upon the seized material, also have the same presentation in the words 'CAMPHOR AND ALLIED PRODUCTS LIMITED' but with difference in the address. The comparison of both the wrappers reveal the deceptive similarity between both, sufficient to cause confusion in the mind of public.
19. Report of Ld. Local Commissioner is also piece of evidence which was unrebutted on record. Though defendant has stated that the plaintiff has not filed any document on record to prove that the alleged counterfeit products were being manufactured by defendant, nevertheless, the recovery had been affected from the premises of defendant. Defendant has not disputed with regard to address/premises where the recovery has been affected, as not belonging to him.
20. The term 'passing off' refers to the infringement of trade mark done in such a way that the mark is not only deceptively similar to the trade mark of that other concern but is also capable of creating or is creating confusion for the customers which ultimately results in damage of business of the plaintiff concern. The fundamental principal behind the term 'passing off ' is that a CS (Comm) No. 156 of 2020 22/31 person cannot sell his goods under the pretence that they are goods of another person.
21. Reliance is placed upon following authorities:
(a) S. Saiyed Meinuddin Vs. P. Sulochna Bai " passing off right is wider remedy than that of infringement. This is because the passing off doctorine operates on the general principal that no person should sell his business as the business of another person. A person may sell his goods or services as such in case of profession under a trading name or style. With the lapse of time such business or services associated with the person acquire reputation or goodwill/which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit anyone 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".
(b) CS (OS) No. 3/2020, I.A. No. 21/2010 titled as The Timken Company Vs. Timken Services Pvt. Ltd.
" The plaintiff has also made out a case of passing off as the use of the trade mark ' Timken' in similar art work, font and colour as that of plaintiff is likely to create confusion in the minds of the users as if the products/services for the defendant have belonged to the plaintiff. The use of mark ' Timken' by the defendant is calculated to mislead and deceive its customers into believing that its products originate from the plaintiff. The object of adopting the trade name or deceptively similar name of another person is to trade upon and derive the financial benefit from the reputation and goodwill of that person. As a consequence the business or the goodwill of the other person suffers damage in terms of financial as well as reputation. That is why the remedy against passing off action is independent of the infringement action arising from the violation of the statutory right to a trade mark" .
(c) Wander Ltd. v. Antox India (P) Ltd, 1990 Supp. SCC 727, " passing-off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business".
(d) Bengal Waterpoof Ltd. v. Bombay Waterproof Manufacturing CO., (1997) 1 SCC 99 " an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed, the person deceived would naturally have a CS (Comm) No. 156 of 2020 23/31 fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit.
Similarly, whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. The Supreme Court further held that in cases of continuous causes of action or recurring causes of action, bar of Order 2 rule 2 Sub-rule (3) cannot be invoked. Section 22 of Limitation Act, 1963 lays down that, 'in the case of continuing breach of contracts or in the case of a continuing tort, a fresh period of limitation begins to run to every moment of the time during which the breach or tort, as the case may be, continues."
(e) Laxmikant V. Patel v. Chetanbhai Shah (supra) " where there is probability of confusion in business, an injunction has to be granted even though the defendants adopted the name innocently, passing off cases are often cases of deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence, though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. The Supreme Court further held that the plaintiff does not have to prove actual damage in order to succeed in an action for passing -off. Likelihood of damage is sufficient. The defendant's state of mind is wholly irrelevant to the existence of the cause of action for passing-off".
22. Question therefore is whether the use of the mark can bring misconception in the mind of general public with regard to the identity of plaintiff and defendant. From the material available on record, it is evident that the similarity between the products of plaintiff and defendant is very striking and an ordinary person may not be able to identify any dis-similarity and would thereby be deceived. The trade dress of original work, design, placement, layout, design and getup of the packaging of the product of defendant is very similar to that of plaintiff.
23. Plaintiff is the registered trademark holder of mark SARASWATI CAMPHOR/ LABEL, being registered in class 3 in India under the provisions of Trade Marks Act vide applications no. 275783, 2758975 and 2758976 and is the user of the trademark since 1967. Besides the protection for the registered trade mark, CS (Comm) No. 156 of 2020 24/31 here it is the case where the packaging of the product of the plaintiff has been imitated, apparently, to give the confusion as the product belongs to plaintiff. Therefore, this is a case not merely for infringement of trademark but also of 'passing off ' the product of the defendant as that of plaintiff. An action for infringement of trademark or more of 'passing off' will lie wherever the defendant's product's name, presentation, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses.
24. Honesty and fair play are, and ought to be, the basic policies in the world of business . When a person adopts 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.
25. "The legal and economic basis of tort is to provide protection for the right of property which eixsts not in a particular name, mark or style but in an established business, commercial or professional reputation or goodwill. So to sell merchandise or carry on business under such a name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong, actionable at the suit of that other person. This form of injury is commonly, though awkwardly, termed that of passing off one's goods or business as the goods or business of another and is the most important example of the wrong of injurious falsehood. The gist of the conception of passing off is that the goods are in the effect telling a falsehood about themselves, are saying something about themselves which CS (Comm) No. 156 of 2020 25/31 is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders" (Salmond and Heuston in Law of Torts).
26. " Gist of 'passing off' action was defined in Oertli Vs. Bowman (1957) RPC 388 , (at page 397), that it is essential to the success of any claim to passing off based on the use of given mark or get up that the plaintiff should be able to show that the disputed mark or get-up has become by user in the country distinctive of the plaintiff's goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up will be understood by the trade and the public in that country as meaning that the goods are the plaintiff's goods. It is in the nature of acquisition of a quasi proprietary right to the exclusive use of the mark or get up in relation to goods of that kind because of the plaintiff having used or made it known that the mark or get up has relation to his goods. Such right is invaded by anyone using the same or some deceptively similar mark, get up or name in relation to goods not of plaintiff. The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff ".
27. According to Kerly, 'passing off' cases are often cases of deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wad Low in Law of Passing off states that the plaintiff does not have to prove actual damage in CS (Comm) No. 156 of 2020 26/31 order to succeed in an action for passing off. Likelihood of damage is sufficient. As to how the injunction granted by the court would shape depends on the plaintiff's distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under the name.
28. Ld. counsel for defendant submitted that the legal right of defendant will be violated by the summary judgment .
29. Grounds for summary judgment -" The Court may give summary judgment against plaintiff or defendant on a claim if it considers that :-
(a) the plaintiff has no real prospect of succeeding on the claim or defendant has no real prospect of successfully defending the claim, as the case may be; and
(b) there is no other compelling reason why the claim should not be disposed off before recording of oral evidence".
30. As is borne out from the record that the plaintiff is prior and registered user of the word mark/trade mark/label " SARASWATI CAMPHOR AND DEVICE OF SARASWATI " and huge quantity of deceptively similar/counterfeit products were recovered from the premises of defendant. As already noted "to sell merchandise or carry on business under such a name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong, actionable at the suit of that other person. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders". " The three elements of 'passing off' action are the reputation of goods, possibility of deception and CS (Comm) No. 156 of 2020 27/31 likelihood of damages to the plaintiff". " A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit anyone 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".
31. Case of plaintiff squarely falls in above noted criteria . There is no answer from the side of the defendant as to why he used this deceptively similar trade name/label/trade dress/packing when the same was already in the market having already earned goodwill. The obvious reason in these circumstances can be to encash the goodwill/name earned by the plaintiff.
32. It is apparent that the defendant has no real prospect of resisting the decree of injunction sought by the plaintiff. The fact that the plaintiff is the registered proprietor of the trade mark in question is not disputed and there is no assertion that the defendant is entitled to use the same. The defendant also has little prospect of succeeding in its defence that he was not dealing in the counterfeit products bearing the marks of the plaintiff since the recovery has been affected from the premises belonging to the defendant.
33. Hence, it can be concluded that defendant has knowingly, intentionally and dishonestly infringed the impugned trademark/trade dress of plaintiff; passed of its goods and business as that of the plaintiff; infringed the plaintiff's trademark and copyright by using, publishing, reproducing the same and defendant apparently is guilty of falsification and unfair trade practices. The mis-conduct of defendant is in complete violation of plaintiff's CS (Comm) No. 156 of 2020 28/31 statutory and common law rights and amounts to infringement of the registered trademark/trade dress and copyright of the plaintiff. Therefore, plaintiff deserves permanent injunction in its favour against the defendant.
34. Plaintiff though had prayed for claim of damages /rendition of account etc. against the defendant. However, vide statement recorded on 06.03.2023, Ld. counsel for plaintiff restricted his claim only qua order of permanent injunction alongwith costs incurred by plaintiff in the present matter and did not press for grant of other reliefs, as was mentioned in prayer clause of plaint and application seeking summary judgment. In these circumstances, no damages are awarded in favour of plaintiff.
35. Local Commissioner was appointed and fees of Rs. 2,00,000/- was incurred by plaintiff towards fees of Local Commissioner, besides the amount of Rs. 35,0000/- towards travel and food/Pocket expenses. Present suit was filed on 29.03.2019 and total number of about 40 hearings have taken place in the matter. Considering the abovesaid, plaintiff is awarded aggregated sum of Rs. 3,50,000/- as litigation cost.
Relief :-
36. Instant suit is accordingly decreed in favour of plaintiff and against the defendant, thereby :
(1) defendant is restrained by itself as also through its partners, agents, franchise(s) representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on its behalf from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trademark/trade dress namely 'SARASWATI CAMPHOR AND DEVICE OF SARASWATI' or any other variant of the Plaintiff's CS (Comm) No. 156 of 2020 29/31 trademark/trade dress which may be identical with and/or deceptively similar to the plaintiff's trademark/trade dress 'SARASWATI CAMPHOR AND DEVICE OF SARASWATI" in relation to impugned goods and business.
(2) Defendant is further restrained by itself as also through its partners, agents, franchise(s) representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on its behalf from passing off its goods under the trademark SARASWATI CAMPHOR AND DEVICE OF SARASWATI" or Trade Dress of the packaging of plaintiff, by using the same or any other deceptively similar work or mark as part of defendant's trade name or corporate name or trade mark in any manner.
(3) Defendant is further restrained by itself as also through its partners, agents, franchise(s) representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on its behalf from diluting the goodwill and reputation of plaintiff or indulging in unfair trade practices and competition by using the trademark SARASWATI CAMPHOR AND DEVICE OF SARASWATI" or any other deceptively similar word or mark as a trademark or part of defendant's trade name or corporate name, or by using any deceptively similar packaging or trade dress in any manner.
37. Defendant is further directed to pay an amount of Rs. 3,50,000/- (Rs. three lacs fifty thousand only) to the plaintiff towards litigation cost. If the payment towards decreetal amount/litigation cost is not cleared within one month, thereafter CS (Comm) No. 156 of 2020 30/31 decreetal amount shall be payable alongwith interest at 12% p.a. till realization.
38. Decree sheet be prepared accordingly. After completion of formalities, files be consigned to record room.
SAVITA Digitally signed by SAVITA
RAO
RAO Date: 2023.03.14 13:56:39
+0530
Announced in the open (SAVITA RAO)
court on this 14th day DISTRICT JUDGE
of March 2023 (COMMERCIAL COURT)-04
SHAHDARA, KKD COURTS,
DELHI
CS (Comm) No. 156 of 2020 31/31