Delhi District Court
Also At vs Mr. S. Riyaz Khan on 30 January, 2023
IN THE COURT OF MS. VINEETA GOYAL:
DISTRICT JUDGE (COMMERCIAL COURT)-02
SOUTH-EAST DISTRICT, SAKET COURT, NEW DELHI
CS NO. - 353/2019
CNR No. : DLSE01-008095-2018
In the matter of:
MARICO LIMITED
A public limited company registered under
the Companies Act, 1956 having its
Registered Office At 7th Floor,
Grande Palladium 175, CST Road, Kalina,
Santa Cruz (East) Mumbai - 400098
Also At :
Unit no. JA 1101, 11th Floor,
DLF Tower -A, Jasola Vihar,
New Delhi - 110025
............plaintiff
VERSUS
MR. S. RIYAZ KHAN
TRADING AS M/S ARMA ENTERPRISES,
144, Bharath Nagar, Thanisandra Main Road,
Dr. Shivram Karanth Nagar Post,
Bangalore - 560077
.......defendant
Suit presented On : 01.10.2018
Judgment Pronounced On : 30.01.2023
CS NO. 353/2019
MARICO LIMITED Vs. MR. S. RIYAZ KHAN
Page no. 1 of 33
Appearance: Sh. Rahul Chaudhary along with Ms. Sharika Viz, Ld.
Counsel for plaintiff.
Defendant ex-parte.
JUDGMENT
1. The plaintiff has filed a suit for permanent injunction for infringement of trademark, copyright, passing off, delivery up, damages, cost of proceedings, etc. against the defendant.
2. Facts as averred in the plaint are that plaintiff was incorporated in year 1988. It was earlier known as Marico Foods Ltd. and changed its name to Marico Industries Ltd. in the year 1989. Thereafter, in the year 2009, it's name was changed to the present plaintiff, Marico Ltd. It is stated that plaintiff is one of the leading players in FMCG Market in India and possibly touches the lives of one out of every three Indian with its wide portfolio of trusted brands like PARACHUTES, PARACHUTE ADVANCED JASMINE, NIHAR SHANTI AMLA SAFFOLA, MEDIKER LIVON, REVIVE, SILK & SHINE, MARICO'S HAIR and SET WET among others. As of today, the plaintiff has presence in 25 countries across the markets of Asia, United States, Canada, Australia, New Zealand and Africa. It is one of the well-known and renowned company in India and has won many awards in business excellence some of which are NDTV Profit Best Business Leadership Award, Business Today Innovation Book, CNBC TV-18 Best Performance CFO Award, one of the top CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 2 of 33 5 winners of most prestigious CIO Asia Award, Rank 553 in the Forbes list as per details contained in para no.6 of the plaint.
2.1. It is averred that trademark PARACHUTE was adopted in year 1948 by the plaintiff's predecessors in interest, Bombay Oil Industries Ltd., an Indian company (herein referred as BOIL). The said mark is used for Coconut Oil and is the flagship brand of plaintiff. It has been extensively and continuously used since the year 1948 by the plaintiff and the said mark enjoys enormous loyalty in urban, semi-urban and rural markets of the country.
2.2. It is averred that work mark PARACHUTE is registered in classes 3 and 29 under no(s). 399592 and 399523 respectively as of 03.01.1993. The plaintiff is also owner registrations of labels/trade dress/packaging for the brand PARACHUTE which have been either acquired from the plaintiff's predecessors or filed by the plaintiff as per details contained in para no. 8 of the plaint. It is stated that registration no(s). 2425321, 2425322 in class 29 have been granted with the colour combination of blue, dark blue & green as the distinctive features of the mark. The registration no. 2425320 in class 29 has been granted with a colour combination of blue & white as the distinctive feature of the mark. It is stated that above-mentioned trademark registrations have been renewed from time to time and are valid and subsisting as on date. By virtue thereof, the plaintiff has the exclusive right to use the aforesaid trademark inter alia in respect of goods for which the aforesaid trademarks are registered.
CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 3 of 33 2.3. It is averred that in and about the year 1974, the plaintiff's predecessors in title devised a label having a blue colour background with the device of a coconut tree in green on the two opposite panels. Superimposed on the device of a coconut tree is an expression "PARACHUTES COCONUT OIL" in bold wide letter in English on one panel and in Devnagri (Hindi) on the other panel. Under the said expression appeared the device of the parachute in a circle with a white border. The plaintiff's predecessors in title applied for the said label mark on 27.06.1980 with a user claim since December, 1948 bearing no. 363235 in class 29. The said registration is valid and subsisting. It is stated that upto 1979, the plaintiff's predecessors in title sold coconut oil in tin containers bearing the above label. It also started selling coconut oil in blue plastic bottles printed with said label in year 1979.
2.4. It is averred that plaintiff was the exclusive user of PARACHUTE marks for a period of 10 years from 26.09.1990 in accordance with duly signed agreement between plaintiff and Bombay Oil Industries Ltd. In the terms of said agreement, the plaintiff incurred expenditure on advertisement and promotion of PARACHUTE branded goods including edible oil. The brand PARACHUTE and PARACHUTE with extensions was assigned to the plaintiff in the year 2000 and the plaintiff has taken on record as the subsequent proprietor of the said trademark in respect of almost all the registration of the mark.
CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 4 of 33 2.5. It is further averred that in the year 1997, the plaintiff appointed Shining Strategic Designs Pvt. Ltd. to give a new vibrant look to the goods sold under the PARACHUTE trademark. It came up with a new look and new logo. The device was reminiscent of a flag and therefore, is identified by Marico as " The Flag Device". It conceptualized a special kind of beauty, a living, breath taking timeless beauty each colour reflecting a particular characteristic of the product to be sold under the device. The blue reflected vastness and serenity, green reflected health, nourishment and earth, white stands for purity and tranquility. It is also stated that plaintiff created an original artistic work showing an open coconut water gushing out in year 1997. The above label constitutes original "artistic works" within the meaning of Section 2(c) of Copyright Act, 1957 and the plaintiff, therefore is the owner of the Copyright in the said distinguishing features and element of said labels thereby having exclusive rights to use or reproduce the feature thereof in material form. It is stated that aforesaid flag device, created by Sh. Shombit R. Sengupta was made a part of an artistic label together with words Coconut Dream written in a circle device and the work Coconut Oil. The plaintiff also holds copyright registration in the said artistic work which is registered since August 19, 2003 vide copyright registration no. A-64997/2003. This copyright registration is owned by plaintiff in both Hindi and English languages.
2.6. It is further averred that year 2004, the plaintiff introduced a new packaging in respect of its PARACHUTE branded edible oil. The new packing was identical in all aspect excepts that the Coconut Dream Circle device was CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 5 of 33 replaced with artistic work of "Broken Coconut Device". The plaintiff is the owner of copyright in the said distinguishing features and elements of the said labels thereby having exclusive right to use and to reproduce the features thereof in any material form. This packaging has been in the continuous use since the year 2004 and has become exclusively identified with the plaintiff. The plaintiff has also continuously and extensively used the trademark PARACHUTE bearing the label/trade dress comprising of the unique and distinctive PARACHUTE LABELS, FLAG DEVICE, BROKEN COCONUT DEVICE, the placement of elements as well as unique and distinctive colour combination of the label. It is averred that coconut oil under the trademark PARACHUTE is sold in the bottles of 100ml, 200 ml, 250 ml, 400 ml, 500 ml, as well as jar of 1 Lt. etc. The one liter bottle has a shape different from other bottles. It is stated that edible coconut oil has 50% share of all coconut oils in India and is in extensive use and widely advertised such that its trade dress is exclusively identified with the plaintiff and has an enviable reputation and its revenue and sale promotion expenses is running into lacs for the period 1990- 91 to 2014-15 as per details mentioned in para no.19 of the plaintiff.
2.7. It is further averred that in the past, plaintiff has been vigilant in protecting its brand PARACHUTE and its trade dress/packaging and has initiated various opposition/litigation proceedings against third party infringer. The plaintiff trademark PARACHUTE and its PARACHUTE label have also been declared as well-known trademark by Hon'ble Bombay High Court in case of Marico Ltd. & Anr. Vs. Radhen Corporation & Anr. It is stated that the CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 6 of 33 plaintiff's trademark/labels have attained status of being a well-known trademark and are therefore, liable to all the protection granted to well-known trademark under the Trade Marks Act, 1990.
2.8. It is further averred that in or around February 2017, the plaintiff became aware of the application no. 3228602 dated 05.04.2016 filed by the defendant for registration of mark Paratouch published in trademark journal 1766-0 dated 10.10.2016. The said application was filed in respect of goods namely "Oils for Hair Conditioning, hair Oil" allegedly claiming use since 21.03.2012. The plaintiff proceeded to file an opposition against the said application on 09.02.2017 since the impugned mark was deceptively similar to the plaintiff's flag device. The said notice of opposition was served on the defendant by the Trade Mark Registry vide letter dated 04.04.2017. As the defendant failed to file a counter-statement within the prescribed period, an order was passed on 30.08.2017 by the Registrar of Trade Marks "abandoning the said application". This application was associated with another application i.e. no. 2430486 for the mark Paratouch, it was filed by defendant on 21.11.2012. The records of trademark registry has revealed that no response to the examination report was filed by the defendant within the prescribed time period and accordingly vide order dated 31.03.2016, the application was abandoned. To the best of plaintiff belief there was no use of impugned mark by the defendant at the relevant time. It is stated that recently the plaintiff became aware that defendant is selling impugned products on www.amazon.com. The defendant was extensively advertising and selling the CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 7 of 33 products under the impugned marks. The plaintiff engaged the services of a professional investigator to find out the extent of defendant impugned use. The investigation begin with the search on the internet, records of Registrar of Companies and records of tax registrations which revealed that the defendant was found present on an online portal at the link http://www.indiamart.com/paratouch coconut oil wherein its describe itself a manufacturer and supplier of hygienically formulated and premium quality range of coconut oil, deepam oil ; the defendant was also found to be obtaining a website www.parichayaoil.co.in ; website also mentions Paratouch as its name ; the impugned products are available for purchase on www.amazon.com and the products are being sold under the name Parichaya on www.amazon.com but the images of both the impugned products are displayed. It was during the course of investigation, the plaintiff came to know about defendant's second product, Parichaya was also infringing upon the trade-dress/label of the plaintiff. It is stated that defendant were also found to be infringing on large magnitude owing to their sales now visible on www.amazon.com. Further the plaintiff conducted a search on the Trade Mark Register which reveals that apart from the above two applications another application for mark Parichaya was filed by the defendant on 25.08.2018 i.e. application no. 3926379 in class 3 before the Trade Mark Registry. The status of this application currently displays 'mark for exam'. The plaintiff will oppose the application as and when the same is advertised in the trademarks journal.
2.9. It is averred that a comparative representation containing the trade CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 8 of 33 dress of plaintiff's products and the defendant shows that defendant has slavishly copied the trade dress and all the essential features of the plaintiff's well-known trade products PARACHUTE in order to encash upon the goodwill of the plaintiff and make illegal profits by selling such products openly in the market. Such use of by the defendant of the plaintiff's mark is clear violation and infringement of plaintiff's intellectual property rights. The similarities of the trade dress of product PARATOUCH and PARICHAYA COCONUT OIL of the defendant with the trade dress of plaintiff's product PARACHUTE are such that an unwary purchaser with imperfect recollection who knows that plaintiff's product sold under the trademark PARACHUTE in the trade dress is bound to get confused as to the origin of said goods and the use of deceptively similar trade dress amounts to infringement of plaintiff's statutory rights under the Trade Marks and Copyright.
2.10. It is submitted that defendant's adoption and unauthorized use of impugned label and trade dress under the trademarks PARATOUCH and PARICHAYA COCONUT OIL constitute infringement of trademark; infringement of copyright; passing off and acts of unfair competition. The cause of action accrued to the plaintiff when the plaintiff first learnt about defendant's impugned products. The cause of action is a continuing one and each time the defendant's manufacture or sells the impugned products, afresh cause of action arises in the favour of plaintiff and against the defendant. This court has territorial jurisdiction to try and entertain the present suit. On these grounds a prayer was made that defendant, its partners, principals, officers, CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 9 of 33 employees, agents, distributors, suppliers, affiliates, subsidiaries, franchises, licensees, representatives, group companies and assignees be permanently restrained from manufacturing or authorizing the manufacture distributing, from exporting, selling, offering for sale, advertising, promoting, displaying and/or using products namely PARATOUCH and PARICHAYA COCONUT OIL or any other product bearing any other trademark/label/trade dress/ packaging/bottle shapes and bottle designs identical or deceptively and/or confusingly similar to the plaintiff's registered trademark namely PARACHUTE and plaintiff's mark/trade dress/labels/packagings/ bottle shapes including PARACHUTE (label) which amounts to infringement of plaintiff's registered trademark/ label, plaintiff's copyright in its work and passing off. It is also prayed that defendant including partners, principals, officers, employees, agents, distributors, suppliers, affiliates, subsidiaries, franchises, licensees, representatives, group companies and assignees be ordered by a decree of mandatory injunction to recall all the impugned products and/or any marketing, promotional and advertising material that bear or incorporate the impugned mark/labels/packaging/trade dress/bottle shapes or any other mark deceptively and confusingly similar to the plaintiff's, delivery up, disclose to the plaintiff the full details, withdraw the application no. 3926399 filed for registration of mark PARICHAYA and disclose to the plaintiff any other trademark and/or copyright applications/ registrations for the impugned trademark/label/trade-dress/packaging/ bottle shapes along with damages.
3. When the suit came up for hearing before this court on 08.10.2018, CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 10 of 33 summon was issued to the defendant and on the same day ex-parte ad interim injunction was granted against the defendant restraining him from manufacturing, supplying, distributing, selling, or trading in the infringing product under the PARATOUCH and PARICHAYA with flag device and broken coconut device or any identical of deceptively similar trademark/logo by any other mode including through its own website or through e-commerce website etc. or any other registered mark of plaintiff in any other form/manner and/or deceptively and confusingly similar to the plaintiff's PARACHUTE labels, flag device, broken coconut device and other registered marks of the plaintiff, in relation to oil products and other allied/cognate products finished and unfurnished impugned product, raw material, dyes, blocks, molds, packing material, boxes, brochures, promotional material, and/or other goods. On the same day while disposing off application u/o XXVI Rule 9 & 10 of Code of Civil Procedure, 1908, Local Commissioner was appointed to visit the premises of the defendant and to seize all the products and make an inventory of the goods bearing the impugned trademark PARATOUCH and PARICHAYA with flag device and broken coconut device found at the premises of the defendant. The commission was duly executed in terms of aforesaid orders and report was filed in the court. The goods were taken into possession and those were released on superdari to the defendant.
4. Pursuant to summons issued, written statement was filed by defendant inter alia raising preliminary objections that this court does not have territorial jurisdiction to entertain and try the present suit. The suit is liable to CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 11 of 33 be dismissed as the present case of passing off is not maintainable as per Designs Act, 2000 which is a complete Code in itself and the protection under it is totally statutory in nature. It is stated that suit is hit by doctrine of estoppels by laches and acquiescence. It is stated that plaintiff is not entitled for any damages because defendant is a small enterprise and having total sale of approximately Rs.13,00,00/- from 01.04.2018 till filing of written statement and defendant has not earned more than Rs.1,00,000/- and the plaintiff is not entitled for damages of Rs.10,00,000/- from the defendant. On merits, the contents of the plaint were denied. It is stated that defendant is an Indian National Trading under the name and style M/s Arma Enterprising, a manufacturer and seller of coconut oil sold under the trademarks PARATOUCH and PARICHAYA. It is denied that packaging used on coconut oil sold under the marks PARATOUCH and PARICHAYA is identical to the packaging/trade dress to that of the plaintiff's products sold under the trademark Parachute. The defendant, however, admitted that application(s) No. 2430486 and 3228602 and other application for mark PARICHAYA were filed by the defendant on 25.08.2018 before the Trademark Registry i.e. application no. 3926379 in Class-03. It is denied by the defendant that by virtue of registration and provision of the Trade Mark Act, 1999 only the plaintiff has the exclusive right to use Parachute (labels) which are duly registered with the Trade Mark Registry. The defendant has prayed that the suit of the plaintiff deserves dismissal.
5. The plaintiff filed replication to the written statement filed by the CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 12 of 33 defendants whereby the objections made by the defendant are refuted and pleadings made in the plaint are re-affirmed.
6. On pleadings of parties, following issues are framed:-
i) Whether this court does not have territorial jurisdiction to try the present suit? (OPD).
ii) Whether this suit is barred by limitation, estoppel and laches?
iii) Whether the suit is duly signed, verified and instituted by an authorized person? (OPD).
iv) Whether the plaintiff is registered proprietor of the trademark, trade dress/packaging for the brand 'Parachute'?(OPP).
v) Whether the plaintiff is owner of copyright in respect of devices, as shown in para no. 13 to 16 of the plaint? (OPP).
vi) Whether the defendant is infringing trademark, trade dress and packaging in respect of trademark 'Parachute'?(OPP).
vii) Whether the defendant is passing off its goods as that of the plaintiff?(OPP).
viii) Whether the defendant has infringed copyright of the plaintiff in respect of devices, as shown in para no.13 to 16 of the plaint? (OPP).
ix) Whether the plaintiff is entitled to a decree of permanent injunction restraining the defendant from infringing its trademark, trade dress and packaging in respect of trademark 'Parachute'? (OPP).
x) Whether the plaintiff is entitled to decree of permanent injunction restraining the defendant from infringing its copyright, as mentioned in para CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 13 of 33 no. 13 to 16 of the plaint? (OPP).
xi) Whether the plaintiff is entitled to the reliefs as mentioned in the prayer clause 40(B)(i) to (iv)? (OPP).
xii) Whether the plaintiff is entitled to a decree of damages in the sum of Rs.10,00,000/-?(OPP).
xiii) Relief
7. In order to prove its case, plaintiff examined Sh. Manish Bathri, who proved his evidence as PW1 and exhibited documents; Board Resolution Ex PW1/1, Copy o Board Resolution of Prashant Khetan Ex PW1/2(OSR), Deed of Assignment Ex PW1/4, Certified copies of Registration Certificate of plaintiff's Trademark PW1/5 to Ex PW1/12 (colly), Copy of Registration Ex PW1/13, No Objection Certificate issued by Shining Strategic Designs Pvt Ltd. Ex PW1/14, Print outs from the website of the plaintiff company showing history of plaintiff's company Ex PW1/15, Print out of annual reports of plaintiff's company from taken from plaintiff's website Ex PW1/16, Original Certificate from M/s Welling and Associates Ex.PW1/17(OSR), Print Out of various Awards received by plaintiff Ex.PW1/18, Photograph of plaintiff's product Ex PW1/19 (OSR), Photocopy of Trademark Journal No. 1766, dated 10.10.2016 along-with notice of opposition dated 09.02.2017 filed against defendant's trade mark application Ex PW1/20 and Ex PW1/21 respectively, Print Out of order dated 30.08.2017 abandoning the application no. 322 Ex PW1/22(OSR), Print Out of online status of application no. 2430486 Ex. PW1/23(colly), Order dated 31.03.2016 Ex PW1/24, Print out of defendant's CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 14 of 33 products from Amazon.com- Ex PW1/25(colly), Print out of defendant's products from Indiamart.com Ex PW1/26(colly), Print Out of defendant's products advertisement from the website exportersindia.com Ex PW1/27(colly), Print Out of defendant's products advertisement from the website indianyellowpages.com Ex PW1/28, Print out of online status of application no. 2926379 Ex PW1/29(colly), Print out of copy of order dated 30.03.2019 of Trade Mark Registry Ex PW1/30, Original invoice bearing no. 431 dated 17.09.2018 of defendants products Ex PW1/31, Original Delivery receipt of the Courier of the said order in Delhi Ex PW1/32, Original products of the defendants delivered to the plaintiff Ex PW1/33, Photographs of defendant's products Ex PW1/34(OSR), Copy of Visiting Card of defendant19) Ex PW1/35, Report of Local Commercial Court Act, 2015 ExPW1/36 and Certificate under Section 65B of Indian Evidence Act. The defendant did not cross-examine this witness as after settlement of the issues, the defendant choose not to appear and preferred to proceed ex-parte on 03.12.2020.
8. I have heard the argument advanced by the Ld. Counsel for plaintiff and gone through the record. My issue-wise findings are as under:
Issue no. i, ii & iii.
9. The defendant has filed written statement but has chosen to not participate in the trial and has not filed documentary evidence, nor has he controverted the plaintiff's evidence. The onus of aforesaid issues was on the defendant. The written statement disclosed that defendant has alleged that CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 15 of 33 defendant has not carrying on business nor residing in Delhi and plaintiff has not filed any single invoice to support its contention that cause of action has arising within the jurisdiction of this court. On the other hand, plaintiff has asserted that defendant is selling their products on e-commerce portal, websites i.e. www.amazon.com, www.indiamart.com/paratouchcoconutoils. as well as the other products on placing order directly with him. The plaintiff has positively asserted that the said website(s), wherein the defendant's goods are being offered is targeting the customers in Delhi. Products of the defendant have been ordered by a customer in New Delhi directly with the defendant and delivered by the defendant at Lajpat Nagar, New Delhi which is within the jurisdiction of this court. The plaintiff has also placed on record a printout of various e-commerce websites including www.amazon.com Ex.PW1/25(Colly.) and www.indianmart.com Ex.PW1/26(Colly.). The perusal of these websites prima facie show that these websites are interactive websites in as much as these websites permit customers/viewers to ask for price, and further specifically mention about the product's descriptions, and deliverable place 'Delhi' and described itself as manufacturer and supplier of the hygienically formulated premium range of coconut oil and Deepam oil. The plaintiff has also placed on record in original invoices bearing no. 431 dated 17.09.2018 of defendant products Ex.PW1/31 along with original delivery receipt of the courier of said order in Delhi Ex.PW1/32 and the products of the defendant delivered to the plaintiff Ex.PW1/33. Hon'ble Supreme Court in Saleem Bhai & Ors. Vs. State of Maharashtra & Ors. AIR 2003 SC 759 and Kamala & Ors (2008) 12 SCC 661 has held that averments in the plaint have to be believed at CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 16 of 33 this stage. Accordingly, in the present case, the "purposeful availments" as well as "Sliding scale" and "effects" tests as stipulated in Banyan Tree Holding Pvt. Ltd. Vs. Murali Krishna Reddy and Ors. 2010 (42) PTC 361 (Del) are satisfied. In view of the aforesaid, this court has territorial jurisdiction to entertain and decide the present suit.
9.1. So far as issue no. ii) is concerned, the defendant in written statement stated that there is delay by the plaintiff in approaching the court as the plaintiff has admitted to be aware about the filing of application by the defendant on 21.11.2012 in respect of oil for hair conditioning, the hair oil vide application number 2430486 as per para 24 of the plaint for registration of Trademark and copyright. However, the plaintiff has contended that since the defendant did not respond to the examination report within the prescribed period and accordingly vide order dated 31.03.2016, the application was abandoned. The plaintiff has placed on record print out of online status of application vide no. 2430486 Ex.PW1/23. The plaintiff has also stated that in and around February 2017, the plaintiff became aware of the application no. 3228602 dated 05.04.2016 filed by the defendant claiming use since 21.03.2012. But, the plaintiff has filed notice of opposition as soon as he became aware. As the defendant failed to file the counter-statement to the said notice of opposition within the prescribed time period of two months from the date of receipt, an order Ex.PW1/22 was passed by the Registrar of Trademark abandoning the said application in Class 3. The issue of delay and acquiescence has been considered by the courts in various matters.
CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 17 of 33 Acquiescence means an encouragement by the plaintiff to the defendant to use the infringing mark. It implies positive acts that not merely silence or inaction. Acquiescence may be good defence even to grant of permanent injunction because the defendant may legitimately contended that encouragement of the plaintiff to the defendant for use of mark in effect amounted to the abandoning by the plaintiff of the right in the favour of defendant, and over a period of time, the general public had accepted the goods of the defendant. However, it is well-settled that acquiescence cannot be inferred merely on account of the fact that plaintiff had not taken any action in infringement of its right. The law is also well-settled that in case of infringement either of trademark or copy right, normally an injunction must follow mere delay in bringing action. It is sufficient to defeat grant of injunction in such a case. The grant of injunction also becomes necessary if it prima facie appears that adoption of mark was dishonest. In case of Rolex Sa vs. Alex Jewellary Pvt. Ltd. & ors decided on 9 th April, 2009, it was observed as under 24-25 para:
" 24..... Even if the defendant, at the time of commencing the use, did not know of the inherent risk in adopting the well-known trade mark, the defendant, at least, immediately on applying for registration and on opposition being filed by the plaintiff became aware of the perils in such use. Thus, use by the defendant of the mark is for short time only and use during the period of CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 18 of 33 opposition is of no avail..............."
" 25......With respect to latches, acquiescence and waiver, such defence is available only when some positive act of encouragement is shown on the part of the plaintiff. Not only no such positive act shown in the present case but the opposition filed by the plaintiff to the application for registration of the defendant ought to have warned the plaintiff that the plaintiff is not allowing the defendant to use the mark...."
9.1.1. The arguments in the present case, as raised by the defendant in the written statement is without any force and same is rejected because in the present case in February 2017, the plaintiff proceeded to file an opposition against the defendant for the use of impugned trademark similar to the plaintiff's flag device. Consequently, in the present case, the defence of delay and acquiescence is contrary to the fact and untenable in law.
9.2. In so far as issue no. iii) is concerned, the plaintiff has examined Sh. Manish Bathri, Authorized Representative of the plaintiff company who deposed that plaint was signed, verified and the present suit was duly instituted on behalf of plaintiff, Sh. Prashant Khaitana. He has seen his signatures during the course of business and his association with him and he can identify the same. He also deposed that Sh. Prashant Khaitana was duly authorized by a CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 19 of 33 Board Resolution dated 06.08.2018. He proves Board Resolution in favour of Sh. Prashant Khaitana Ex.PW1/2 on record. There is not rebuttal to the above document.
9.3. In these circumstances, the aforesaid objection raised by the defendant in the written statement have no legal basis and nothing has been brought on record that can persuade this court to decide the aforesaid issues in favour of defendant. Therefore, all the aforesaid issues are decided against the defendant and in favour of the plaintiff.
Issue(s) no. iv to x
10. All these issues are being taken up together being interconnected for the sake of convenience. The plaintiff has examined Sh. Manish Bathri, AR of the plaintiff. He has been authorized to depose evidence in the present suit vide Board Resolution dated 12.01.2021 and the same has been exhibited as PW1/1. This witness in his examination-in-chief by way of affidavit has proved certified copies of registration certificate for plaintiff's trademark registration numbers 399593, 1033844, 1033842, 2423238, 2425320, 3425321 & 2425322 as Ex.PW1/5 to Ex.PW1/12 for class 29 & 3 respectively. He has also deposed that plaintiff also owned a copyright registration in the original artistic work bearing copyright registration number A-64997/2003 and original artistic work was created by Sh. Shombit R. Sengupta, an employee of Shining Strategic Designs Pvt. Ltd. He proved copy of registration certificate and no objection CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 20 of 33 certificate issued by Shining Strategic Designs Pvt. Ltd. Ex.PW1/13 & Ex.PW1/14. This witness has also proved printouts from the website of plaintiff's company showing history of plaintiff company Ex.PW1/15. Plaintiff has placed on record printouts of annual report of the plaintiff company from the year 1991-2017 Ex.PW1/16 (colly.) and certificate from M/s Welling and Associates, Chartered Accountants showing annual sale and expenses incurred on advertising and sale promotions of brand Parachute for the financial year 1991 to 2014-15 Ex.PW1/17 running into crores of rupees. This witness was not cross-examined by the defendant for the reasons best known to him.
10.1. The evidence of the plaintiff has not been rebutted, and accordingly it is proved that plaintiff is the registered owner of the trademark 'PARACHUTE'. Further, the documents placed on record and the deposition of PW1, elucidate that plaintiff is the proprietor of various devices, marks/labels/trade-dress/packaging for the brand PARACHUTE. The labels in question also constitute original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957 and the plaintiff is the owner of the copyright in the said distinguishing features and elements of the said labels thereby having exclusive right to use or reproduce the features thereof.
10.2. Section 29(2) of the Trade Marks Act, 1999 stipulates the condition when usage by a person amounts to infringement of a registered trademark. Section 29(2)&(3) reads as follows :
CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 21 of 33 " 29. Infringement of registered trade marks :-
(2) a registered trademark is infringed by a person who is not being a registered proprietor or a person using by way of permitted use/uses in the course of trade, a mark which because of -
(a) its identity with the registered trade mark and the similarities of the goods of services covered by such registered trade mark,
(b) its similarity to the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of public, or which is likely to have an association with the registered trade mark.
(2) In any case, falling under clause (c) of the sub-section 2, the court shall presume that it is likely to cause confusion on the part of public.
10.3. In the present case, on the issue of infringement, the plaintiff contended that defendant has copied the plaintiff's product and the comparative chart highlighting the similarities between the plaintiff's and defendant's product is set out in para no. 31 of the plaint :-
The defendant uses the same Pantone Shade 285C for its PARATOUCH and PARICHAYA Coconut oil bottle as is viewed by plaintiff for its PARACHUTE Coconut oil;
Use of "Flag Device" similar to plaintiff's flag device to depicts it trademark "PARATOUCH AND PARICHAYA" with same element i.e. CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 22 of 33 consisting of tree device and bottle with the same shades of green and dark blue within the bottle;
The word PARATOUCH AND PARICHAYA is also written in a white font on a dark blue background;
Blue coloured bottle and unique shape of bottle; Use of identical words "100% Pure Coconut Oil" at a place identical to that of plaintiff;
Use of tree device inside the flag device is identical to the plaintiff's tree device inside the flag device;
Use of deceptively similar device of "Broken Coconut with water gushing out at a place" identical to that of plaintiff's product.
While referring to the above similarities between the plaintiff's and defendant's production, during the course of arguments, attention of the court is drawn to the witness to the photographs of plaintiff's product Ex.PW1/19 and defendant's product Ex.PW1/34.
10.4. It is undisputed that plaintiff is registered proprietor of trademark PARACHUTE in India and the said trademark is also registered in various classes i.e. 29 and 3 as per details mentioned in para 6 of the affidavit of PW1.
The plaintiff also owns a copyright registration in its original artistic work as per details mentioned in para 7 of the affidavit of PW1. By virtue of these registration, the plaintiff has exclusive right to use the same. It has also argued that the defendant has used word PARATOUCH and PARICHAYA which are deceptively similar to PARACHUTE. It has been consistently observed in CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 23 of 33 various decisions that when comparing conflicting composite marks, the court must look at them as a whole rather than breaking them down into their component pieces for comparison. This is called "anti-dissection" rule. But having noted that the "anti-dissection rule" and its facets, it is important to consider that, in applying this rule, the Court was also expected to consider the "dominant mark" test, under which, if any part of the plaintiff's mark is found to be dominant, the court must consider whether the defendant has infringed on that dominant part of the plaintiff's mark. The court did not break the anti- dissection rule by identifying a dominating part of the plaintiff's mark and determining whether it was infringed by the dominant part of the defendant's mark, according to the court. This principle was observed in the case of South India Beverages Pvt. Ltd. Vs. General Mills Marketing Inc [ 2015 (61) PTC] [4], as follows:
"While a mark must be examined in its totality, it is allowed to assign greater or lesser value of "dominance" to a particular piece or element of a mark in the case of composite marks. As a result, a 'dominant mark' is a component of a composite mark that has a higher prominence than the other constituent pieces."
10.5. In the present case, the word PARACHUTE though is a composite word and applying, "anti-dissection rule" it cannot be split but the defendant has attempted to adopt its initial character in the words PARATOUCH and PARICHAYA with a intention to make use of the Calligraphy of the plaintiff. A CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 24 of 33 deceptively identical calligraphy and alliteration would result into sufficient deception in the minds of a person of ordinary prudence. Thus it appears that trademark used by the defendant is deceptively similar to the trademark of the plaintiff and use of trademark PARATOUCH and PARICHAYA by defendant would likely to cause confusion and deception.
10.6. The controversy between the parties needs to be examined from another perspective because apart from infringement, the plaintiff claimed relief from passing off. The law of passing off has been explained by Lord Diplock in Erven Warnink VS. Jtown & Sons (Hull) Ltd. 1980 RPC 31 wherein it has laid down five essential elements which are necessary to be proven as jurisdictional facts for the purpose of establishing the thought of passing off. The said five ingredients are as under 1) misrepresentation, 2) made by a trader in course of trade. 3) to his prospective customers, 4) what is calculated to injure the business or goodwill of another trader and 5) which causes actual damages to his business or goodwill or trade by whom the action is brought or in a quitmit action will probably do so. The law of passing off does not permit any one to carry on his business in such a way as would persuade the customer or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reason are two. Firstly, honestly 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 CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 25 of 33 confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
10.7. In the instant case, the trademark of the plaintiff is 'PARACHUTE' and the related product is coconut oil. At this juncture, before proceeding further, it would be relevant to appreciate the features which are claimed to be associated with the trademark and trade dress of the product. For the sake of the convenience, based on the arguments advanced by the plaintiff are highlighted as under :-
Trademark and Dress Features
1. The Blue Colour of the Bottle has been associated with the trademark of the plaintiff.
2. The appearance of the pictorial form of flag device consisting of coconut tree above trade mark PARACHUTE.
3. At the bottom, the broken coconut kernel out of which water is gushing.
4. The works 100% Pure Coconut Oil below the broken coconut.
10.8. It is argued by the plaintiff that the products of the defendant are CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 26 of 33 using all the four features above but the words used are PARATOUCH and PARICHAYA in place of PARACHUTE. It has been argued that even these words are written in format which can be easily mistaken to be the product of the plaintiff.
10.9. It needs to be appreciated that the nature of the product is Coconut Oil which is widely used by the common public and is sold over the retail counters. The similarities above on applying the test of a person of "
imperfect recollection and ordinary memory" would show that the goods of the defendant are likely to be passed off as those of the plaintiff.
10.10. The likelihood of deception or confusion about the products of the plaintiff and defendant can be ascertained by examining the following factors:-
a) The nature of the marks and in the present case, the Blue bottle of identical shape used by the defendant is sufficient to create a confusion in the minds of the customers because the goods of the plaintiff has been marketed in these coloured bottles. But the adoption of colour is compounded by using similar marks discussed below.
b) The degree of similarity between the competing marks is very high in this case. The defendant has not only used but also placed the same words and figures in the packaging dress of its goods while using flag device consisting of Coconut tree and broken coconut with gushing water. It also has identical words 100% Pure Coconut Oil at deceptively identical place.
CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 27 of 33
c) The nature of the goods in the present case is Coconut Oil which is used by all variety of customers which may be persons of less than ordinary prudence or illiterate who are picking products based on their colours or pictorial representation only. This would mean that the class of purchasers of coconut oil is wide, and the degree of case which they would be expected to exercise while purchasing the goods also can be extremely low.
d) The mode of purchasing the goods and placing orders in the case of retail buying would be over the counter.
10.11. The factor above create a perfectly fertile ground for passing off the goods of the defendant as the goods of the plaintiff. It is well settled that the "Confusion" refers to the state of mind of the customer who, on seeing the mark, thinks that it differs from the mark on the goods which he has previously bought, but is doubtful whether that impression is not due imperfect recollection. The question is one of first impression. The matter has to be examined from the point of view of a person of average intelligence and imperfect recollection. It has to be seen as to how such a purchaser would react to the trademark, the association which he would form and how he would connect the trademark with the goods he would be purchasing. The market is driven by the end consumers of the products and services which may be a layman. A trademark is successful if it is able to make roads in the minds of the end users. The probability of conflict of trademark has to be understood from the commonsense of a layman or perception of a man on the top of a Clapham Omnibus. The above-mentioned similarities are sufficient enough to create CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 28 of 33 confusion in the minds of the customers and are deceptive in nature which would pass off the goods of the defendant as those of the plaintiff. There is a possibility of confusion to unwary purchasers and in view of the above discussion, the plaintiff has successfully demonstrated that it is engaged in relation of Coconut oil under the mark "PARACHUTE". There is enough uncontroverted evidence that turn over of plaintiff is manifold. The plaintiff has built its name of reputation in the product line and defendant intends to en cash upon the goodwill, by adopting similar trademark/trade dress/ packaging of the plaintiff of similar kind of products. In these circumstances, the only conclusion which is irresistibly drawn that defendant is infringing trademark and copyright of the plaintiff in respect to trademark/trade dress/packaging & device as well as passing off. These issues are accordingly adjudicated in favour of the plaintiff and against the defendant.
Issue no. xi
11. The onus to prove this issue was upon the plaintiff.
In so far as prayer 40 (i, iii & iv) are concerned, these reliefs were not argued and pressed for by the plaintiff at the time of arguments and therefore this prayer of the plaintiff is accordingly rejected.
11.1. In so far as prayer 2 is concerned, the seized goods were released on superdari by the Local Commissioner to the defendant. The said goods are liable to be destroyed. The plaintiff's are thus entitled to a decree of delivery up of all the infringing products so that the same can be destroyed, this issue is CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 29 of 33 accordingly adjudicated.
Issue no. xii
12. On this issue, Ld. Counsel for the plaintiff has argued that in the present plaint punitive damages to be awarded so as to compensate to the plaintiff and the plaintiff is also entitled for the cost of litigation of Rs.9,11,198/- which includes legal fee and administrative charges. Ld. Counsel for the plaintiff submits that after putting appearance and filing of written statement, the defendant has deliberately stayed away from the proceedings and there are many precedence wherein damages have been awarded by Hon'ble Delhi High Court. In case of Cartier International AG & Ors. vs. Gaurav Bhatia & Ors. CS (OS no. 1317/14) wherein following observations were made:
"55. It appears from the conduct of the defendants who have deliberately stayed away from the present proceedings with the result that an enquiry into their accounts for determination of damages could not take place.
56. It is well settled that damages in such cases must be awarded and a defendant, who choose to stay away from the proceedings of the court, should not be permitted to enjoy the benefits of evasion of court proceedings. Any view of the contrary would result in a situation where the defendants who appears in court and submits its accounts books which be liable for damages, while a CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 30 of 33 party which chooses to stay away from court proceedings would escape the liability on account of failure of the availability of account books.
57. A party who chooses not to participate in court proceedings and stay away must, thus, suffer the consequences of damages as stated and set out by the plaintiffs as the court in the present case are dealing with counterfeiting products. It is rank case of dishonestly where the piracy committed by the defendants is apparent on the face of the record. It is just like printing of duplicate currency. The counterfeiter can never be allowed to do such illegal activities. Cheating can never be condoned by court unless the accused is punished."
12.1. In case of Jockey inc and Anr. Vs. R. Chandra Mohan & Ors. 2014 (59) PTC 437 (Del), the Hon'ble High Court by passing a decree of injunction in favour of plaintiff awarded damages of Rs.3,00,000/-.
12.2. It is trite to say that defendants have chosen to stay away from the present proceedings, stringent action is required so as to convey the message in public that there should not be proliferation of spurious goods in the market, the plaintiff is awarded damages to the tune of Rs.1,00,000/- from defendant. The present suit was filed on 01.10.2018 and total 32 hearing have taken place in this case. Plaintiff shall also be entitled to the costs. Having regard to the totality of the aforesaid facts and circumstance, pleader's fee and litigation expenses are assessed as Rs.2,50,000/- and court fee deposited by the plaintiff is Rs.10,000/-. This court finds that plaintiff is entitled to a cost of CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 31 of 33 Rs.2,60,000/- (inclusive of court fee).
Relief
13. In view of above discussion, a decree for permanent injunction is passed in favour of plaintiff and against the defendant restraining the defendant, its agents, representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on their behalf from manufacturing, marketing, using, selling, trading, soliciting, importing, exporting, displaying, advertising, purveying, intending to sell/solicit or online market places or online websites or through social media or by any other mode or manner dealing in the products under the PARATOUCH and PARICHAYA, which Flag Device and broken coconut device or/any identical of deceptively similar trademark/logo by any other mode or in any form and manner and/or using marks deceptively and confusingly similar to the plaintiff's PARACHUTE/label, FLAG DEVICE, BROKEN COCONUT DEVICE and any other registered marks of the plaintiff in relation to oil products and allied/cognate/related products, finished or unfinished products, raw material, dyes, blocks, mold, promotional material, and/or other goods and from doing any other acts or deals amounting to or likely to infringe, pass off or violates the plaintiffs aforesaid trademark/copy right along with damages for a sum of Rs. 1,00,000/- (Rupees One Lac Only) to be recoverable from the defendant. A decree is also passed in favour of the plaintiff and against the defendant to hand over the seized goods released by the Local Commissioner on superdari CS NO. 353/2019 MARICO LIMITED Vs. MR. S. RIYAZ KHAN Page no. 32 of 33 to the defendant so that the same can be destroyed by the plaintiff. The plaintiff is also entitled costs of Rs.2,60,000/- (inclusive of court fee) of the present proceedings.
14. Decree sheet be prepared accordingly.
15. File be consigned to record room.
Pronounced in the open Court (Vineeta Goyal)
on 30th January, 2023 District Judge
(Commercial Court)-02
South-East District, Saket, Delhi
30.01.2023
CS NO. 353/2019
MARICO LIMITED Vs. MR. S. RIYAZ KHAN
Page no. 33 of 33