Delhi District Court
M/S Reino Industrial Organics Pvt. Ltd vs M/S Refnol Resins & Chemicals Ltd on 31 January, 2015
IN THE COURT OF SH. GURVINDER PAL SINGH
ADDITIONAL DISTRICT JUDGE01 (CENTRAL)
TIS HAZARI COURTS, DELHI
TM67/2011
Unique I. D. No. 02401C0269312005
M/s Reino Industrial Organics Pvt. Ltd.,
B93, Mayapuri Industrial Area, PhaseI,
New Delhi110064.
......Plaintiff
Versus
M/s Refnol Resins & Chemicals Ltd.,
Plot No.23, PhaseIII, GIDC, Naroda,
Ahmedabad.
.......Defendant
SUIT FOR PERPETUAL INJUNCTION FOR RESTRAINING
INFRINGEMENT OF REGISTERED TRADE MARK NO. 428103,
554206, 441817 AND 502188, PASSING OFF, RENDITION OF
ACCOUNTS ETC.
Date of institution of suit : 01.04.2005
Date of reserving the judgment : 24.02.2005
Date of pronouncement of judgment : 31.03.2015
TM67/2011
M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 1 of 32
JUDGMENT
1. Plaintiff company has filed this suit for perpetual injunction, seeking restraining of defendant company from manufacturing, selling or otherwise dealing in chemicals and all other goods including industrial oils, greases and lubricant oil under the trade mark Refnol or any other deceptively similar or identical mark similar to registered trade marks of plaintiff Nos. 428103, 554206, 441817 and 502188. Perpetual injunction has also been sought for restraining defendant from using name REFNOL RESINS & CHEMICALS LTD. or any other identical and/or deceptively similar name. Perpetual injunction also has been sought for restraining the defendant from passing off chemicals and all other allied goods under the trade mark Refnol or company name REFNOL RESINS & CHEMICALS LTD. Delivery of offending, counterfeiting, goods such as chemicals and other goods and incriminating materials bearing infringed trade mark entitled Refnol or company name REFNOL RESINS & CHEMICALS LTD. has also been sought by the TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 2 of 32 plaintiff for destruction and/or erasure purposes. Besides that, rendition of account of profits of defendant of sales of infringed goods described aforesaid and decree for the amount so found due on the basis of sales made has also been sought by the plaintiff against the defendant.
2. It is the case of the plaintiff that it has been carrying on their old and established business of manufacturing and marketing of goods including chemicals and chemical products for industrial use, chemical paste for removal of carbon, cleaning, polishing, scouring and abrasive preparations, chemicals for removal and cleaning soaps etc. for last many years. Plaintiff invented, adopted and used the trade marks/label REINOL, RIOREINOL (hereinafter referred to as 'said trade marks') in respect of the said goods from the last many years.
3. As per plaintiff, the said trade marks were registered in the name of plaintiff as : TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 3 of 32 Trade No. Date Class Goods User Mark/Label REINOL 428103 5.10.1984 1 Chemicals and 1984 chemical products for industrial use, chemical paste for removal of carbon, soot etc. REINOL 554206 10.7.1991 3 Cleaning, polishing, 1991 scouring and abrasive preparations, chemicals for removal and cleaning soaps.
RIO 441817 16.8.1985 1 Chemicals and 1985
REINOL Chemical Products
for industrial use,
chemical paste for
removal of carbon,
soot etc.
RIO 502188 12.12.1988 1 Chemical and 1988
REINOL Chemical products
Label for industrial use,
chemical paste for
removal of carbon,
soot etc.
4. It is also the case of the plaintiff that much pain was taken to TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 4 of 32 popularize its said trade marks and the said products under the impugned trade marks connotes and denotes the goods and merchandise of the plaintiff origin and none else. The sale of aforesaid goods of plaintiff under the trade marks runs in crores of rupees. On account of superior quality of the goods manufactured and marketed by the plaintiff and also on account of user of said trade marks the plaintiff has acquired unique reputation and enviable goodwill in public and trade. The aforesaid goods bearing the said trade marks in any form and manner had come to be exclusively identified and associated with the plaintiff amongst the public and trade; said trade marks have become well known and famous trade marks on account of extensive user.
5. On 11.08.2000, plaintiff came to know that the defendant had applied for registration of trade mark Refnol in respect of the goods viz. Industrial oils and greases and lubricants from advertisement in Trade Mark Journal No. 1223 at page 567, dated 16.05.2000 in Class1. On 17.08.2000, plaintiff filed opposition against the said application No. 574121. The Registrar of Trade Marks canceled the advertisement of application No.574121, advertised in Trade Marks Journal 1223 dated TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 5 of 32 16.05.2000 of defendant vide order dated 29.11.2004 and held that said goods were not covered in Class1 and as such amended application in respect thereof shall be reexamined in Class4. On 10.12.2004, plaintiff came to know that defendant had applied for registration of trade mark Refnol in respect of the goods viz. Chemicals when plaintiff came into knowledge of corrigenda published in Trade Marks Journal No. 1319, page 1739, dated 16.05.2004 and then the plaintiff filed notice of opposition on 17.12.2004 before Registrar of Trade Marks, which is still pending and said opposition petition is admitted as No. AMD185091.
6. The adoption and use of the trade mark Refnol and name of the company as REFNOL RESINS & CHEMICALS LTD. by the defendant in respect of their said products amounts to infringement of plaintiff's registered Trade Marks Nos. 428103, 554206, 441817 and 502188, piracy and passing of the well known said trade marks under the provisions of Trade Marks Act, 1999.
7. Despite knowledge of well known and reputed trade mark of REINOL and RIOREINOL of plaintiff, defendant deliberately with the TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 6 of 32 dishonest and malafide intention adopted the deceptive similar trade mark Refnol in respect of similar goods as well as allied goods and also as a part of its company name REFNOL RESINS & CHEMICALS LTD. only to trade upon and benefit from the plaintiff's hard earned goodwill and reputation and to earn profits in illegal manner by passing off their goods and business as and for the standard goods and business as of the plaintiff for which they were not entitled under the law. The product of the defendant chemicals, industrial oils, greases and lubricants are identical/similar or cognate or allied to that of the plaintiff's product. Alleging defendant to be guilty of infringement of registered trade marks besides passing off their products and business as and for quality products and business of the plaintiff, plaintiff alleged to have suffered damages in his trade and reputation, so filed the present suit.
8. Defendant after service of summons appeared and filed written statement taking preliminary objections viz. i) the defendant company was formed in the year 1980 as REFNOL OIL REFINERIES PVT. LTD., whose name was changed in the year 1992 as REFNOL TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 7 of 32 RESINS & CHEMICALS PVT. LTD. and then to REFNOL RESINS AND CHEMICALS LTD. in the year 1994; was much prior in the business than the plaintiff and had been using Refnol as its trading style continuously and uninterruptedly since 1980, whereby trade mark Refnol was essential and prominent feature of the defendant and has also acquired distinctiveness; ii) the word Refnol stands for Refinery and Oil lubrication, corresponding to the defendant's refine waste lubricating oils business, which word was conceived and invented by defendant for such works and is associated/related with the defendant only; iii) the trade mark/trade name Refnol has been inextricably attached with the defendant since its inception and had acquired great amount of distinctiveness on account of its continuous and massive use, same has also acquired secondary meaning among the purchasing public and the trade, who would associate the products of trade mark Refnol with that of defendant only; iv) the Refnol was granted export house status from 1999 to 2004 by the Government of India and the company had a strong market presence in Middle East countries, Africa, Europe and Far East Countries. The company and its products are identified by its name TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 8 of 32 Refnol in the export market. The company is the sole distributor for South Asia, Gulf Cooperative Council, Egypt and Kenya for marketing the Textile Processing, Enzymes for well known Enzyme company from the Europe besides manufacturing and marketing its own range of Garment Wash Textile Auxiliaries handled by dedicated team.
9. Defendant also claimed of having no knowledge of plaintiffs business of various goods and denied plaintiff had invented, adopted and used the trade mark REINOL, REOREINOL. Defendant also denied the plaintiff of having acquired enviable goodwill and reputation in respect of his trade marks or such trade marks having become well known and famous. Defendant averred that the Registrar of Trade Marks vide order dated 29.11.2004, on request of defendant on form TM16 ordered to read applicants name for the registration of Refnol as REFNOL RESINS & CHEMICALS LTD. and the class to be read as Class4 instead of Class1 as amended accordingly. The same order further stated that interlocutory petition dated 20.11.2001 filed by petitioner/opponents is dismissed and the opposition bearing No. AMD56723 abated. It was stated that plaintiff had tried to mislead the court.
TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 9 of 32
10. The defendant claimed to have been prior user of trade mark/trade name Refnol, so was entitled to use it for industrial oil, greases and lubricants and had applied for registration of their trade mark Refnol on 27.05.1992 under No. 574117 in respect of chemicals claiming user since 1991 and application no. 574121 in respect of industrial oil, greases and lubricants claiming user since 1991. Rest of the averments of the plaint have been specifically and categorically denied. It has been prayed by the defendant for dismissal of the suit.
11. Plaintiff filed replication to the written statement of the defendants denying the contentions contained therein and reiterating those of the plaint.
12. From the pleadings of the parties, following issues were framed by my Ld. Predecessor vide order dated 10.07.2012 :
1)Whether the defendant has been the inventor, prior in adoption and use of Trade Mark Refnol for wastage lubrication oils and other related tools? OPD TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 10 of 32
2)Whether the Trade Mark of the defendant is deceptively similar to the Trade Mark of the plaintiff as REINOL and RIOREINOL?
OPP
3)Whether the plaintiff is entitled to injunctions as claimed against defendant?
OPP
4)Whether the plaintiff is entitled to delivery up etc. of the infringing/counterfeit material against the defendants? OPP
5)Whether the plaintiff is entitled to rendition of accounts against defendants ? OPP
6)Relief.
13. Sh. Anil Kapur, Managing Director of plaintiff company has been examined as PW1 vide affidavit Ex PW1/A in plaintiff evidence. PW1 relied upon documents i.e. i) the board resolution dated 31.05.2004 exhibited as Ex P1; ii) certificate of incorporation dated 25.06.1984 exhibited as Ex P2; iii) registration certificates of trade marks of plaintiff company exhibited as Ex P3 to P6; iv) Legal Proceeding Certificates TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 11 of 32 relating to Trade Marks exhibited as Ex P7 to P10; v) the statement of sales figures of plaintiff company exhibited as Ex P11; vi) sales invoices of plaintiff company exhibited as Ex P12 to 44; vii) relevant pages of Trade Mark journal No. 1223 and 1225 (supplement) exhibited as Ex P45 and P46; viii) relevant page of Corrigenda published in Trade Mark journal No. 1319 exhibited as Ex P47; ix) copy of order dated 04.09.2006 of Assistant Registrar of Trade Mark exhibited as Ex P48. PW1 had been crossexamined.
14. Sh. Vikas Aggarwal, attorney/Senior General Manager of defendant company has been examined as DW1 vide affidavit Ex DW1/A in defendant evidence. DW1 relied upon documents i.e. i) board resolution dated 14.02.2014 exhibited as Ex DW1/1; ii) the year wise sales figures from 198081 to 200304 exhibited as Ex DW1/6; iii) the year wise statement of expenses incurred on Sales Promotion and Advertisement from 198081 to 200304 exhibited as Ex DW1/7. DW1 had been crossexamined.
15. I have heard arguments addressed by Sh. A.K. Goel, Ld. TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 12 of 32 Counsel for plaintiff; Sh. Manish Biala, Ld. counsel for defendant and have given thoughts to the rival contentions put forth, pleadings of the parties, evidence, relied precedents and have also examined the record of the case as well as written arguments filed on behalf of both the parties.
16. Ld. Counsel for plaintiff argued in terms of the pleadings and submitted that not only plaintiff was prior user of trade marks REINOL and RIOREINOL, but said trade marks were also registered, as described in the plaint and proved in evidence of PW1. Also was submitted that from the evidence on record, defendant has failed to prove of being prior user of mark Refnol in respect of aforesaid case, whereas in own applications and relevant pages of trade mark journals Ex P45 and Ex P46, the defendant claimed user of mark Refnol since 1991 and 1992, respectively, which proved the falsehood of defendant. Ld. counsel for plaintiff relied upon "i) Precious Jewels & Anr. Vs. Varun Gems, 2013 (53) PTC 233 (Del.) (DB); ii) Hitachi Limited Vs. Ajay Kumar Aggarwal & Ors., FAO (OS) No. 169 of 1994 decided on 31.03.1994 by Delhi High Court; iii) Lilly ICOS LLC & Anr. Vs. Maiden TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 13 of 32 Pharmaceuticals Lim., 2009 (39) PTC 666 (Del.); iv) Sun Pharmaceuticals Industries Ltd. Vs. Cipla Ltd., 2009 (39) PTC 347 (Del.); v) Hindustan Petroleum Corpn. Ltd. Vs. H.P. Oil Corporation Ltd., 2004 (28) PTC 362 (Bom); vi) M/s Sarabhai International Ltd. & Anr. Vs. M/s Sara Exports International, (1985PTC105) High Court of Delhi; vii) Adode System, Inc & Anr. Vs. Mahindra Saxena & Anr. CS (OS) No. 782/2002, decided on 07.07.2009 by Delhi High Court; and
viii) Lachhman Das Behari Lal Vs. Ghanshyam Das Jetha Nand & Others, 2007 (35) PTC 693 (Del)", praying for grant of the reliefs claimed for.
17. Ld. Counsel for defendant argued in terms of the pleadings in the written statement submitting Refnol was coined and adopted by defendant in year 1980 when defendant company was registered and even no suggestion to contrary has been given to DW1 in crossexamination. Also was argued that Refnol (Refnol) has been arbitrarily derived by the defendant from refinery and oil lubrication as a distinctive acronym corresponding to their line of business, so it has been coined, invented TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 14 of 32 and conceived by defendant. Counsel for defendant also relied upon Section 34 of the Trademarks Act, 1999, which prohibits even a registered proprietor to restrain a prior user from using their mark, but gives a statutory protection to a prior user to use its mark without any restraint from any other person including a registered trademark proprietor. Reliance was placed upon Rikhab Chand Jain & Anr. Vs. T.T. Enterprises Pvt. Ltd., 2013 (54) PTC 489 (Del). Also was argued that rival marks were used in respect of completely different class of goods, so plaintiff is not entitled for the claimed reliefs.
18. My issue wise findings are as under : Findings on Issue No(1) Whether the defendant has been the inventor, prior in adoption and use of Trade Mark Refnol for wastage lubrication oils and other related tools? OPD
19. Sole witness of defendant, namely, DW1 in his evidence failed to prove any invoice or receipts of goods with mark Refnol from year 1980 onwards. Year wise sales figures from year 198081 to year TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 15 of 32 200304 Ex DW1/6, brought on record by DW1 alongwith statement of expenses incurred in sales promotion and advertisement from year 198081 to year 200304 as Ex PW1/7 were not followed by any final accounts of these financial years to be proved on record to put forth the genuineness and correctness of these figures, which were alleged by plaintiff to be forged and fabricated. There was no impediment in the way of the defendant to prove from its final accounts such sales figures and expenses incurred in sales promotion and advertisement. Defendant was a company incorporated in terms of the Companies Act and its final accounts were necessarily required to be audited. No such books of accounts were either produced or proved. Even in Ex P45 i.e. relevant page of Trade Journal 1223, where application of defendant was published, it was claim of defendant of adoption and use of mark Refnol in class1 goods since 1991. Also in Ex P46 i.e. relevant page of Trade Journal No. 1225 (Suppl.) in respect of publication of application no. 574117, the defendant claimed user of mark Refnol in respect of said goods of class1 since 1992. Claim of defendant of user of the impugned trade mark Refnol for goods in question from 1980s falls flat on the ground. PW1 has placed on record and proved the invoices Ex P12 to TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 16 of 32 Ex P44, issued by plaintiff company, which are from the year 1996 to year 2001, in respect of the use of trade mark REINOL and RIO REINOL for chemicals and chemical products for industrial use, chemical paste for removal of carbon, soot, etc., cleaning, polishing, scouring and abrasive preparations, chemicals for removal and cleaning soaps etc. Though, PW1 has failed to prove the invoices with respect to sale of goods with the claimed trade mark REINOL and RIOREINOL for period prior to year 1996, but in view of the invoices Ex P12 to Ex P44 proved on record by plaintiff, it is proved on record that the plaintiff was using the trade mark REINOL and RIOREINOL prior to adoption and use of trade mark Refnol by defendant for wastage lubrication oils and other related tools. Since, the defendant company has miserably failed to prove to be prior user of trade mark Refnol prior to use of registered trade marks REINOL and RIOREINOL by plaintiff, the defendant can derive no benefit from law laid in case of T.T. Enterprises Pvt. Ltd. (supra). Mere nondenial of incorporation of defendant company with Registrar of Companies in itself would not suffice to presume defendant to be prior user of trade mark Refnol in absence of TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 17 of 32 any cogent and admissible evidence of sale of goods bearing such trade mark Refnol with effect from year 1980. More so, defendant company itself claimed user of said mark Refnol since years 1991 and 1992 as per its given publications Ex P45 and Ex P46 respectively. Defendant cannot gain anything from doctrine of nontraverse embodied in Order VIII Rule 5 of Code of Civil Procedure or from law laid on that aspect in case of Asha Kapoor Vs. Hari Om Sharda, 171 (2010) DLT, 743 relied upon by defendant's counsel, in the fact of the matter accordingly. Issue no.1 is decided against the defendant and in favour of the plaintiff.
Findings on Issue No(2) Whether the Trade Mark of the defendant is deceptively similar to the Trade Mark of the plaintiff as REINOL and RIOREINOL?
OPP
20. PW1 has proved - i) registration certificate of Trade Mark REINOL under No.428103 dated 05.10.1984 Ex P3 in class1 in respect of chemicals and chemical products for industrial use, chemical paste for removal of carbon, soot etc.; ii) registration certificate of trade mark TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 18 of 32 REINOL under No. 554206 dated 10.07.1991 Ex P4 in class3 in respect of cleaning, polishing, scouring and abrasive preparations, chemicals for removal and cleaning soaps; iii) registration certificate of trade mark RIOREINOL under no. 441817 dated 16.08.1985 Ex P5 in class1 in respect of chemicals and chemical products for industrial use chemical paste for removal of carbon soot etc. and iv) registration certificate of trade mark RIOREINOL (label) under no. 502188, dated 31.03.1995 Ex P6 in class1 in respect of chemicals and chemical products for industrial use, chemical paste for removal of carbon, soot etc.
21. PW1 has also proved legal proceeding certificates i) Ex P7 relating to trade mark REINOL registered under no. 554206 in class3 in respect of cleaning, polishing, scouring and abrasive preparations, chemicals for removal and cleaning soaps; ii) Ex P8 relating to trade mark RIOREINOL registered under no. 441817 in class1 in respect of chemicals and chemical products for industrial use, chemical paste for removal of carbon soot, etc.; iii) Ex P9 relating to trade mark RIO REINOL (label) registered under no. 502188 in class 1 in respect of TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 19 of 32 chemicals and chemical products for industrial use chemical paste for removal of carbon, soot etc. and iv) Ex P10 relating to trade mark REINOL (label) registered under no. 670476 in class1 in respect of chemicals and chemical products for industrial use, chemical paste for removal of carbon, soot etc.
22. PW1 has also proved the relevant page of Trade Journal no. 1223 Ex P45 in respect of publication of application of defendant under no. 574121 for registration of mark Refnol in class1, wherein, user was claimed by defendant from 1991 in respect of industrial oils. PW1 also proved relevant page of Trade Journal No. 1225 (Suppl.) Ex P46 in respect of publication of application of defendant under no. 574117 for registration of Refnol Z in class1, wherein, user was claimed by defendant from 1992 in respect of chemicals. PW1 also proved relevant page of corrigenda Ex P47 in Trade Journal no. 1319 in respect of publication of application of defendant under no. 574117 to be treated as application for registration of mark Refnol, which was got published by defendant.
TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 20 of 32
23. The trade marks of plaintiff are REINOL and RIO REINOL. Defendant has adopted the mark Refnol. It makes out difference of only one alphabet i.e. 'F' in defendant's mark in place of 'I' of plaintiff's trade mark. The nature of goods of plaintiff are such that the purchaser or prospective purchaser of such goods, would be those who work in industry as labourers etc., an unwary class of purchaser having mind of imperfect recollection, not otherwise, but only with regard to the facet of differentiation in trade mark REINOL of plaintiff and mark Refnol of defendant on similar class of goods. It brings into fore every likelihood of causing of confusion in the minds of public and/or prospective purchaser (s) to infer goods with mark Refnol to be goods manufactured by plaintiff company under the marks REINOL and RIOREINOL in view of the striking visible similarity amongst the two, whereby mark Refnol of defendant is deceptively similar to marks of plaintiff namely, REINOL and RIOREINOL, containing prominent part REINOL. Issue no2 is accordingly decided in favour of plaintiff and against the defendant.
TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 21 of 32 Findings on Issue No(3) Whether the plaintiff is entitled to injunctions as claimed against defendant?
OPP
24. PW1 has proved on record that plaintiff was holder of following certificates Ex P3, Ex P4, Ex P5, Ex P6 and the legal proceedings certificates Ex P7, Ex P8 and Ex P9 Trade Regn. No. Date Class Goods User Mark/legal proceedings certificate REINOL 428103 05.10.1984 1 Chemicals and 1984 (Ex P3 i.e. cheimical regn. products for certificate) industrial use chemical paste for removal of carbon, soot etc. REINOL 554206 10.07.1991 3 Cleaning, 1985 (Ex P4 i.e. polishing, regn. scouring and Certificate and abrasive TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 22 of 32 Trade Regn. No. Date Class Goods User Mark/legal proceedings certificate Ex P7 i.e. preparations Legal chemicals for proceedings removal and certificate) cleaning soaps RIOREINOL 441817 16.08.1985 1 Chemicals and 1985 (Ex P5 i.e. Chemical regn. products for Certificate and industrial use Ex. P8 i.e. chemical paste Legal for removal of proceeding carbon, soot etc. certificate) RIOREINOL 502188 12.12.1988 1 Chemicals and 1985 (Label) Chemical (Ex P6 i.e. products for regn. industrial use, Certificate and chemical paste Ex P9 i.e. for removal of Legal carbon, soot etc. Proceeding certificate) TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 23 of 32
25. PW1 has also proved on record the sales invoices Ex P12 to Ex P44, which are of period from 1996 to 2001 in respect of sale of goods bearing trade marks REINOL and RIOREINOL of class1 and class3 goods pertaining to chemical and chemical products for industrial use, carbon, chemical paste for removal of soot etc.; cleaning, polishing, scouring and abrasive preparations; chemicals for removal and cleaning soaps.
26. In view of findings on Issue no2 above, it has already been held that the defendants mark Refnol is deceptively similar to plaintiff's marks REINOL and RIOREINOL. In view of findings of Issue no1 above, it has already held that plaintiff is prior user of its registered trade marks REINOL and RIOREINOL in comparison of use of trade mark Refnol by defendant. The defendant had accordingly subsequently adopted and used the deceptively similar mark Refnol and trade name containing word Refnol. PW1 has also proved the relevant page of Trade Journal Ex P45, elicited herein above, wherein defendant had given the publication of application for registration of mark Refnol in TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 24 of 32 class1 goods. PW1 has also proved relevant page of Trade Journal Ex P46, elicited herein above, wherein defendant had given publication of application for registration of mark Refnol Z in class1 good. Till date, the defendant has not succeeded for getting his mark Refnol registered in the class1 and class3 goods.
27. In the case of Hitachi Limited (Supra), it was held that the word "HITACHI" and "HITAISHI" are pronounced almost the same way and an average or ordinary purchaser will not be able to know the difference between the two when he goes to the market to buy the said product. This is likely to cause deception and confusion in his mind. Defendant/Respondent was restrained from using trade mark "HITAISHI" accordingly.
28. In the case of Lilly ICOS LLC & Anr. (supra), it was held that trade mark 'MCALIS' of defendant had striking similarity and affinity of sound with trade mark 'CIALIS' owned by plaintiff. Also was held that defendant had no justification whatsoever to adopt and use deceptively similar trade mark with the swril device as well as the trade TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 25 of 32 dress of the tablet, so the exparte adinterim injunction was made absolute.
29. In view of above discussions, plaintiff is held entitled for the reliefs of injunction as claimed in paragraph19 (i) and (iii) in respect of the prayer clauses, but only in respect of the class1 goods viz. chemicals and chemical products for industrial use, chemical paste for removal of carbon, soot etc. and class3 goods viz. cleaning, polishing, scouring and abrasive preparations, chemicals for removal and cleaning soaps. Reliance placed upon the cases of Hitachi Limited (Supra); Lilly ICOS LLC & Anr. (Supra). Issue no.3 is decided in favour of the plaintiff and against the defendant accordingly.
Findings on Issues No(4) & (5)
4)Whether the plaintiff is entitled to delivery up etc. of the infringing/counterfeit material against the defendants? OPP
5)Whether the plaintiff is entitled to rendition of accounts against defendants ?
OPP TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 26 of 32
30. The use of deceptively similar trade mark Refnol of defendant is clearly illegal and in violation of legal rights of plaintiff for use of registered trade mark REINOL and RIOREINOL for class1 and class3 goods, elicited above, which causes financial damage not only to the plaintiff but also amounts to deception to public at large.
31. In Microsoft Corporation Vs. Kiran, 2007 (35) PTC 748 (Del), it has been held that 'willfully, intentionally and flagrantly violating the copyrights and trademark' is deliberate and calculated infringement.
32. In Microsoft Corporation Vs. Kamal Vahi & Ors., CS (OS) No. 817 of 2004, it was observed that compensatory damages are awarded based on a calculation of a percentage of revenue that would have been earned if the defendants had not indulged in the infringing activity.
33. In Amarnath Sehgal Vs. Union of India, 2005 (30) PTC 253 (Del), it was observed that compensatory damages may be paid TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 27 of 32 where the acts and commissions of the defendants violate the established rights of the plaintiffs.
34. In Microsoft Corporation Vs. Deepak Raval, MIPR 2007 (1) 72 in CS (OS) No. 529 of 2003, it was observed that where the defendants fail to respond and are recklessly indifferent as to whether or not the goods they are selling counterfeit, dishonest intention may be inferred and the defendants can be said not to be "honest traders".
35. The primary purpose of the damages is to restore losses to the plaintiffs. However as tort litigation has evolved, I find that the concept of damages is not limited to compensation for loss and damages alone. Three kinds of damages are being awarded by courts, which include nominal damages, exemplary damages and compensatory damages.
36. Punitive damages, also commonly referred to in English as exemplary damages, are designed to punish and not to compensate. In general, punitive damages are awarded for socially deplorable conduct, TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 28 of 32 such as fraud or malicious, reckless, or abusive action. Since the early 1900s, punitive damages have been available only for tort but not for a contract. Punitive damages are discretionary and are never given as a matter of right.
37. In the case of Time Incorporated Vs. Lokesh Srivastava, 2005 (30) PTC 3 (Del), the Court has expressly recognized third type of damages as punitive damages apart from compensatory and nominal damages. The Court has made some relevant observations discussing the aspect of punitive damages. The court held that :
"The award of compensatory damages to a plaintiff is aimed at compensating him for the loss suffered by him whereas punitive damages are aimed at deterring a wrong doer and the like minded from indulging in such unlawful activities....."
"This Court has no hesitation in saying that the time has come when the Courts dealing actions for infringement of trademark, copy rights, patents etc. should not only grant compensatory damages but award punitive damages also with a view to discourage and dishearten law breakers who indulge in violations with impunity out of lust for money so that they realize that in case they are caught, they would be liable not only to reimburse the TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 29 of 32 aggrieved party but would be liable to pay punitive damages also, which may spell financial disaster for them."
The court justified the grant of punitive damages on the basis of flagrancy of infringement which is the doctrine delivered from US law.
38. The defendant company having passed off its goods aforesaid under the trade mark Refnol, deceptively similar to REINOL and RIOREINOL, the registered trade marks of plaintiff, is liable to render the accounts in respect of its sales but the defendant has not brought any admissible evidence on record to show as to since when the infringed goods are being sold by the defendant and what was the quantity so sold.
39. On record, there is no cogent evidence, led by either of the parties in respect of the quantum of profits earned by the defendant company by use of its trade mark Refnol for class1 and class3 goods aforesaid, which were deceptively similar to the goods bearing trade TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 30 of 32 marks of REINOL and RIOREINOL of plaintiff. I, therefore, find it appropriate and reasonable to grant some amount of damages to plaintiff company payable by defendant company in lieu of prayer of rendition of accounts of infringing/counterfeit material. In my opinion, an amount of Rs. 1.5 Lakhs would be sufficient to compensate the plaintiff. Accordingly, defendant is directed to pay an amount of Rs. 1.5 Lakhs to the plaintiff. The Issues No. 4 and 5 are decided accordingly. Court fees be filed by the plaintiff on Rs.1.5 Lakhs.
RELIEF (S)
40. The suit of the plaintiff is decreed in following terms :
i)The defendant, its directors, its members, servants, agents, representatives, dealers are restrained from selling or otherwise dealing in class1 goods viz. chemicals and chemical products for industrial use, chemical paste for removal of carbon, soot etc. and class3 goods viz. cleaning, polishing, scouring and abrasive preparations, chemicals for removal and cleaning soaps under the trade mark Refnol or any other trade mark identical and/or deceptively similar to the plaintiff's registered trade marks REINOL and RIOREINOL which amounts to infringement of TM67/2011 M/s Reino Industrial Organics Pvt. Ltd. Vs. M/s Refnol Resins & Chemicals Ltd. Page 31 of 32 registered trade marks Nos. 428103, 554206 441817 and 502188 of plaintiff;
ii)The defendant, its directors, its members, servants, agents representatives, dealers are restrained from passing off class1 goods viz. chemicals and chemical products for industrial use, chemical paste for removal of carbon, soot etc. and class3 goods viz. cleaning, polishing, scouring and abrasive preparations, chemicals for removal and cleaning soaps under the trade mark Refnol deceptively similar to plaintiff's trade mark REINOL and RIOREINOL and
iii)The defendant is directed to pay the amount of Rs.1.5 Lakhs as damages to the plaintiff.
41. The suit is disposed off in above terms.
42. Decree sheet be prepared on payment of court fees by plaintiff on Rs. 1.5 Lakhs. File be consigned to record room. Announced in open Court on 31st Day of March, 2015. (GURVINDER PAL SINGH) Addl. Distt. Judge(Central)01, (AD) Tis Hazari Courts, Delhi.
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