Delhi District Court
M/S Greenply Industries Ltd vs M/S New Krishna Glass & Hardware on 22 September, 2021
-1-
IN THE COURT OF SH. GURDEEP SINGH, DISTRICT
JUDGE-(COMMERCIAL COURT)-02, WEST DISTRICT,
TIS HAZARI COURTS, DELHI.
CNR NO.: DLWT01-009887-2018
CS(COMM.) NO.: 415/2019
IN THE MATTER OF:
M/S GREENPLY INDUSTRIES LTD.
10, MANSAROVER GARDEN RESIDENTIAL SCHEME,
REKHA ENCLAVE, MAIN ROAD,
KIRTI NAGAR, DELHI - 110015
...PLAINTIFF
VERSUS
M/S NEW KRISHNA GLASS & HARDWARE
NEAR GUWAHATI COMMERCE COLLEGE
BACK SIDE OF AUNTY'S SHOP, RGB ROAD
GUWAHATI, ASSAM - 781021
...DEFENDANT
Date of Institution : 31.10.2018
Date of reserving order : 13.09.2021
Date of pronouncement of order : 22.09.2021
JUDGMENT/ 22.09.2021
1.Vide this judgment I shall decide present suit for permanent and mandatory injunction restraining infringement of registered trade mark, infringement of copyright, unfair competition, rendition of accounts, delivery up etc. against the defendant.
2. The case of the plaintiff in brief as set out in the plaint is that plaintiff is a company incorporated under the Companies Act, 1956 and is one of the market leaders in the fields of plywood, veneer, decorative laminates etc. and has been rated as one of the most reputed plywood, CS (COMM) No.: 415/2019 Page 1 of 12 -2- decorative plywood and allied products' company in India by leading business magazines like Forbes Global, The Economic Times, Far Eastern Economic Review and Asia Money. Plaintiff has claimed itself to be the proprietor/owner of various trademarks / trade dress including GREEN and GREEN PLY etc. which is registered in favour of plaintiff under various classes and stated to be valid and subsisting till date and details thereof have been mentioned in para 9 of the plaint. Besides, it is also claimed that plaintiff has copyright in the original artistic work contained in the label/getup of the products GREEN in India, by virtue of various deeds of copyright assignments of Copyright. It has been claimed that on account of its high quality and standards of manufacturing and extensive advertising and promotion through magazines, newspapers, journal, television and other mediums, the goods of the Plaintiff bearing trademarks/ trade dress GREEN have acquired enviable reputation and goodwill in India. Further on account of their long and continuous use, the plaintiff company's trademark GREEN have become exclusively indicative of the plaintiff's goods. The plywood, laminates, and other allied products bearing various trademarks including GREEN are bought and sold as the quality goods originating from the plaintiff company. The sales turnover details and the expenses incurred on advertising by the plaintiff are huge.
3. Further, it is averred that in addition to the statutory rights mentioned above, the Plaintiff has also acquired common law rights in said trade marks and the plaintiff product CS (COMM) No.: 415/2019 Page 2 of 12 -3- under the said trademarks are well recognized for their distinctive characteristic all over India. As a result thereof, the public and the member of the trade have come to associate GREEN with the plaintiff to the exclusion of all others.
4. Therefore, it has been averred that the plaintiff is having the exclusive rights to use the said trademarks with respect to its products and therefore noone is entitled to use the said trademark without a license or assignment by the plaintiff.
5. It is alleged that plaintiff became aware that defendant is using trade name / trademark GREEN FOREST and accordingly the Plaintiff got survey of the market done in this regard and thereafter it came to the light that the defendant is indulging in the act (s) of manufacturing, stocking, sale and marketing of the impugned brand /mark GREEN FOREST with respect to plywood and allied products, which is deceptively similar to the marks of the plaintiff specially their house mark GREEN. That even during recent market survey in the first week of October, 2018, the defendant continued to use the brand name GREEN FOREST and was found having large stock of plywood, block board, and other allied products bearing the impugned mark GREEN FOREST in Hathras and other parts of country. Defendant is not only making the retail sales but are also supplying the impugned goods bearing the impugned trademarks to various other dealers/shopkeepers/ retailers in the areas of Delhi CS (COMM) No.: 415/2019 Page 3 of 12 -4- specially West Delhi, who are making the clandestine and surreptitious sales thereof to the unscrupulous traders and manufacturers of the counterfeit products of the plaintiff under the said trademark/ label in the markets of Delhi like Tilak Nagar, Hari Nagar, Rajouri Garden, Ranjit Nagar etc. It is further alleged that goods being sold by the defendant bearing falsified trademarks/ trade dress GREEN FOREST are not the genuine product made by the plaintiff company and are of very cheap/ inferior quality that could perhaps be harmful to health of consumers. That defendant by falsifying the trademarks GREEN FOREST are deceiving the purchasing public and also causing huge monetary loss to the plaintiff company and is also diluting goodwill and reputation of trademarks of the plaintiff company.
6. It is averred that the Defendant adopted the impugned trademark GREEN FOREST which are similar / identical and / or deceptively similar in its outlook, artistic work, color combination etc. of the Plaintiff's trademark GREEN popularly known as GREEN only with a view to trade upon the tremendous goodwill and reputation of the Plaintiff's said trademark/copyright and therefore the very adoption of impugned trademark/copyright by the defendant is dishonest and tainted with malafide intentions. It has been further averred that by doing so, the defendant is not only damaging the reputation and goodwill of the plaintiff company by passing off his substandard products as that of the plaintiff company but is also causing financial loss to the plaintiff company by CS (COMM) No.: 415/2019 Page 4 of 12 -5- reaping unfair advantage of the repute and distinctive character of the trademark of the plaintiff company.
7. It is further averred that the cause of action arose in the first week of October, 2018 when it came to knowledge of the plaintiff that the defendant were using trademark/ trade dress GREEN FOREST as their mark and cause of action again arose when the plaintiff got survey conducted by the plaintiff wherein the defendant was found having large stock of impugned products. Thereafter the cause of action is still accruing on a continuous basis as the defendant is still conducting its impugned business activity under the impugned trademark.
8. Further it is averred that this Court has jurisdiction as defendant is supplying their impugned goods bearing impugned trademark to the dealers and distributors in the market of Delhi like Tilak Nagar, Hari Nagar, Rajouri Garden, Ranjit Nagar etc. Which fall within the territorial jurisdiction of this Court.
9. On these facts, it is prayed inter alia order for permanent injunction be passed restraining the defendant from manufacturing, exporting, offering for export, selling, offering for sale or advertising directly or indirectly in India or overseas in the product namely plywood products, block boards, laminates, laminated sheets, decorative plywood, decorative laminates etc. under the trade mark of GREEN FOREST or any other deceptively similar variant thereof amounting to infringement of registered trade CS (COMM) No.: 415/2019 Page 5 of 12 -6- mark, copyright of plaintiff namely GREEN, and delivery up all goods and rendition of accounts.
10. On an application under S. 135 of the Trade Marks Act, 1996 read with Order XXVI Rule 9 CPC read with S. 151 CPC seeking ex parte order for appointment of Local Commissioner, vide order dated 01.11.2018, my learned predecessor had appointed Local Commissioner with certain directions to conduct visit the premises of the defendant and further summon of the suit and notice of the application were also directed to be issued. Thereafter in pursuant to the said order, Local Commissioner executed the commission proceeding, seized the infringed goods and filed report. As per report of Local Commissioner, he found 223 infringed goods/products bearing the falsified trademarks GREEN FOREST, at the premises of the defendant which were seized and returned to defendant on superdari.
11. After service of summons, counsel for defendant appeared on 12.3.2019 and filed vakalatnama. However, written statement had not been filed and vide order dated 11.2.2020 the right of defendant to file written statement was closed. Thereafter matter was adjourned for management hearing/ final arguments. Vide order dated 13.9.2021 it was observed that lastly the counsel for defendant had appeared on 27.8.2019 and thereafter none appeared on behalf of defendant and on 11.2.2020, the right of defendant was closed to file written statement, however, there is no formal order of proceedings defendant CS (COMM) No.: 415/2019 Page 6 of 12 -7- ex parte, however, his presence is being marked as 'defendant is ex parte'.
12. However, even on the same day i.e. 13.9.2021, none appeared on behalf of defendant despite wait and repeated calls, therefore he was proceeded ex parte. Ld. Counsel for plaintiff submitted that plaint is duly supported by affidavit and requested for final arguments. In view of request and judgment of Hon'ble High Court of Delhi in case titled Shri Ved Prakash Garg Trading as M/s Parul Food Products v. M/s Gurudev Industries, CS (Comm) 1219/2018 dated 20.12.2018, the case was adjourned for ex parte final arguments. It is relevant here to quote the observation of Hon'ble High Court:-
6.This Court is of the view that the present suit can be disposed of without any further delay. A Coordinate Bench of this Court in Satya Infrastructure Ltd. And Ors. v. Satya Infra & Estates Pvt. Ltd. 2013 SCC Online Del 508 has held as under:-
"I am of the opinion that no purpose will be served in such cases by directing the plaintiffs to lead ex parte evidence in the form of affidavit by way of examination-in-chief and which invariably is a repetition of the contents of the plaint. The plaint otherwise as per the amended CPC, besides being verified is also supported by affidavits of the plaintiffs. I fail to fathom any reason for according any additional sanctity to the affidavit by way of examination-in-chief than to the affidavit in support of the plaint or to any exhibit marks being put on the documents which have been filed by the plaintiff and are already on record. I have therefore heard the counsel for the plaintiffs on merits qua the relief of injunction."
13. I have heard Sh. P. R. Chaterjee, counsel for plaintiff. I have gone through the same.
CS (COMM) No.: 415/2019 Page 7 of 12 -8-Mandatory Injunction
14. Ld. Counsel for plaintiff submitted that including various trademarks, the plaintiff company has also registration and copy right in trademark / wordmark 'GREEN' under class 19 and 20 in respect of plywood and wood etc. which is valid and subsisting as on date. He further submitted that there are various judgments to the effect that even if trademarks / wordmarks are descriptive in nature, the injunction can be granted if same is registered and in support of his submission cited judgment of Hon'ble Apex Court in case titled as T. V. Venugopal v. Ushodaya Enterprises Ltd. & Anr. dated 03.3.2011 in civil Appeal No. 6314-15 of 2001. He also cited judgment of our own Hon'ble High Court in case titled as Sunil Mittal & Anr. v. Darzi On Call, CS (Comm.) No. 1381/2016 dated 19.4.2017 and Info Edge (India) Pvt. Ltd. And v. Shailesh Gupta & Anr. 98 (2002) DLT 499.
15. Ld. Counsel for plaintiff has filed the documents viz. Copy of special power of attorney of Ankush R Khanna and other company documents, various trademark registrations and copyright certificates alongwith renewal certificates, copy of annual report, pictures of the infringing product, orders passed by various courts in similar matters and rent agreement of plaintiff co. which are duly supported by affidavit.
16. As per Trademark registration word mark 'Green' is registered in favour of plaintiff company which is valid as on date in class 19 and 20 in respect of goods which CS (COMM) No.: 415/2019 Page 8 of 12 -9- include wood, board wood, plywood and block boards etc. The plaintiff has also filed statement of audited standalone financial results for the quarter and year ended 31.3.2018 and audited consolidated financial report for the year ended 31.3.2018.
17. In this case, Local Commissioner was also appointed to visit the premises of the defendant with certain direction and the Local Commissioner in pursuant to this court order, executed commission and seized 223 infringed goods / ply board on which trade mark GREEN FOREST was displayed. Further despite service of summons and knowing the legal proceedings, the defendant chose not to turn up nor file written statement and hence the averments made in the plaint gone unrebutted.
18. Therefore the plaintiff has succeeded in bringing on record that the trademark GREEN is registered in his favour and the defendant was found using trademark GREEN FOREST, which is deceptively similar to Plaintiff's registered trademark GREEN and was passing off his products as that of plaintiff. Accordingly, I am of the opinion that defendant is guilty of infringing of trademark and copyright of plaintiff and passing off his products bearing impugned trademark GREEN FOREST which is deceptively similar to the plaintiff marks GREEN. Thus, the defendant is restrained from using impugned trademark GREEN FOREST or any other trademark which may be identical and /or deceptively similar to the registered CS (COMM) No.: 415/2019 Page 9 of 12 -10- trademarks of Plaintiff's GREEN in respect of similar goods i.e. plywood.
Delivery up
19. As already discussed, 223 products i.e. ply board bearing falsified trademarks/label GREEN FOREST were seized by the Local Commissioner and returned to defendant on superdari. It is directed that the defendant shall hand over the same to the plaintiff at his own expenses and plaintiff shall blacken the mark GREEN FOREST and shall hand over to Forest Department near his place of business under acknowledgment.
20. Further keeping in view number of infringed products seized from the defendant, I am of the opinion that he was selling his products bearing falsified trade mark and have earned illegal profit and caused financial loss to the plaintiff. Accordingly in order to compensate plaintiff, as prayed, Rs.1 lacs would be just and reasonable. Accordingly, plaintiff is entitled to recover Rs.1 lacs from the defendant against the illegal profit gained by the defendant and loss caused to the plaintiff by infringing his trademarks.
Rendition of Accounts
21. It is submitted by Ld. Counsel for the plaintiff that since defendant did not participate in the proceedings, therefore his account could not be sought and rendition of accounts is not possible in such circumstances. As conceded by Ld. CS (COMM) No.: 415/2019 Page 10 of 12 -11- Counsel for plaintiff relief of rendition of account cannot be granted.
Relief
22. As discussed above, suit is decreed in favour of plaintiff and against the defendant qua permanent injunction thereby restraining defendant, its associates, agents etc. from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing or using the impugned trademark GREEN FOREST or any other identical with and/ or deceptively similar word/mark/label/device to the plaintiff's said trade mark/label GREEN in relation to their impugned goods i.e. plywood, wood etc. and allied products and from doing any other acts or deeds which is amounting to infringement of trademarks and copyrights of the plaintiff as well as amounting to passing off the goods of the defendants as that of the plaintiff.
23. Further suit is also decreed in favour of plaintiff and against the defendant qua delivery up of all seized material and it is directed that the defendant shall hand over the same to the plaintiff at his own expenses and plaintiff shall blacken the mark Green Forest and shall hand over to Forest Department near his place of business under acknowledgment. Superdarinama is cancelled.
24. Further plaintiff is entitled to recover Rs.1 lacs from the defendant against the illegal profit gained by the defendant and loss caused to the plaintiff by infringing his trademarks.
CS (COMM) No.: 415/2019 Page 11 of 12 -12-25. Accordingly suit is decreed in favour of the plaintiff and against the defendant with actual cost of suit and fee of the advocate which is assessed at Rs.22,000/-.
26. Decree sheet be prepared accordingly after payment of deficit court fee, if any.
27. File be consigned to the record room.
Digitally signed by GURDEEP SINGH GURDEEP Date:
SINGH 2021.09.22
15:35:25
+0530
(GURDEEP SINGH)
DISTRICT JUDGE (COMMERCIAL COURT)-02
WEST DISTRICT/THC/22.09.2021
CS (COMM) No.: 415/2019 Page 12 of 12