Delhi District Court
M/S P.K.J. Cosmetics Pvt. Ltd. vs . M/S Rspl Limited. on 4 January, 2012
TM No. 142/11 M/s P.K.J. Cosmetics Pvt. Ltd. Vs. M/s RSPL Limited. 04.01.2012 ORDER
Vide this order I shall dispose off an application filed on behalf of plaintiff U/o 39 Rule 1 and 2 CPC as well as U/o 39 Rule 4 CPC.
2. It is submitted by Ld. Counsel for the plaintiff that M/s P.K.J. & company are partnership firm, is the predecessor-in-title of the plaintiff company who was engaged in the same business. The said firm M/s P.K.J. & company assigned all rights in the trade mark " V ENUS " to M/s P.K.J. & Company vide deed of assignment dated 25.11.1991 and since then the plaintiff company M/s P.K.J. Cosmetics Ltd is running the said business.
3. It is submitted that plaintiff is manufacturing and marketing ' H a ir removing soap ' under the trade mark/label VENUS. It is submitted that the business carried out by the plaintiff under the said trade mark/label is very extensive and the goods appearing the said mark/label have been practically distributed in major parts of the country. It is submitted that plaintiff has a registered trade mark VENUS which was acquired on 18.02.1964 in class 03 in respect of ' H a ir removing soap ' (Liquid and Powder). Another trade mark with regard to advertising, distribution, marketing relating to the hair removing soap, hair removing liquid and hair removing powder was registered on 21.02.05 in clause 35.
TM No. 142/11 1It is further submitted that another application with regard to VENUS GOLD dated 28.05.2009 with regard to manufacture of toilet soap and cosmetics is pending with the Registrar of Trade Mark.
4. It is further submitted that the plaintiff's goods and business under the trade mark VENUS has acquired tremendous goodwill and envious reputation. The mark of the plaintiff has already built up a handsome and valuable trade name. It is further submitted that the plaintiff has been continuously promoting its sale of the said goods and business under its said trade mark through different Media and modes such as advertisement, newspaper, trade magazine distribution of trade literature, trade novelties and through sales promotional schemes. It is submitted by the plaintiff that the mark used by the defendant in relation to their impugned goods and business is identical with and deceptively similar to the plaintiff's trade mark/label VENUS in other aspects including phonetically, visually, structurally and in its essential features.
5. It is further submitted that the defendant has adopted and started using impugned trade mark dishonestly, fraudulently and out of positive greed with a view to take advantage and to trade upon the established goodwill/reputation and proprietors right of the plaintiff's in the plaintiff's said trade mark/label. It is further submitted that impugned adoption by the defendant and its use causes a deception and confusion in the market. It is further submitted by the plaintiff that by the act of the defendant, the plaintiff's said mark are being diluted and eclipsed thereby. It is TM No. 142/11 2 further submitted that any person not knowing clearly the relationship between the parties to this action is bound to be confused by the defendant's impugned adoption and use and agreed well do business with the defendant thinking that he is dealing with the plaintiff or that some strong vital and subtle links exists between the plaintiff and the defendant. It is further submitted that due to the defendant's impugned activities the plaintiff has suffered huge losses both in business and in reputation and such losses are not capable of being assessed in monetary terms. Unwary purchasers and traders are being deceived as to the origin of goods or business. Defendant gain are plaintiff's losses. The plaintiff has no excess to the defendant's account and the defendant's are liable to render their accounts to the plaintiff and to make good to the plaintiff the profit and business earned by them.
6. It is further submitted though the plaintiff learnt about the defendant's impugned trade mark in the month of November 2003 but at the time plaintiff had no excess to the impugned goods bearing the trade mark VENUS of the defendant and only in the month of October, 2010, plaintiff came to know about the goods and sent a legal notice dated 24.09.2011. It is further submitted that defendant appears to confuse and tempted by the singular reputation of the plaintiff and by its impugned adoption and user of impugned trade mark the defendant is disseminating confusion and deception in the market with the result that the spurious goods of the defendant are being passed off as the genuine goods of the plaintiff and submitted that in this eventuality defendant's and their TM No. 142/11 3 agents be restrained from using the trade mark in question till final disposal of the case and interim injunction be passed in favour of the plaintiff and against the defendant.
7. On the other hand, it is submitted on behalf of defendant that defendant is itself the proprietor of the registered trade mark VENUS/VENUS (Label) in class 03 registered under no. 985537 dated 23.01.01 and 150893, 150894 and 150895 all dated 21.06.2007. It is further submitted that defendant also holds a registered copyright in respect of one of its earlier packaging label and the artistic work was duly registered under number A-61016/2002 dated 10.04.02. It is further submitted that even otherwise the two respective artistic label, one each of the plaintiff and the defendant are poles apart and there is not even any iota of similarity between the two. It is further submitted that a bare perusal of the two, clearly make out that get up, placement, design, colour-combination etc of the defendant's label is completely distinct and different from that of the plaintiff. It is further submitted that although plaintiff claimed a huge sale running in crores but the plaintiff has failed to file on record any substantial evidence in the form of invoices of sale, advertisement material, sale figures, advertisement-expenses etc, but even prima facie failed to establish on record any kind of goodwill/reputation in favour of the plaintiff's said product and in the absence of which passing off claim is not maintainable at all.
8. It is further submitted that the plaintiff for a big part of its existence is not conducting any business and therefore, there is no TM No. 142/11 4 question of any alleged goodwill/reputation having accrued in favour of the plaintiff in respect of its alleged trade mark VENUS. It is further submitted that plaintiff has suppressed material fact about the sale with regard to the goods bearing trade mark VENUS in question. Not even a single invoice of sale has been filed by the plaintiff from the year 1984 to 1994 and thereafter for the years 2002, 2003, 2004, 2005 and 2007 also has not been placed on record. It is further submitted that plaintiff has never manufactured any goods under the trade mark VENUS apart from " H air Removing Soap " and even plaintiff does not have a license to manufacture any other product. It is further submitted by the defendant that defendant had inspected the records of the office of Sub Registrar of companies and came to know that the plaintiff's company was incorporated in the year 2000 and vide Directors report dated 25.10.2000 for the year ended 31.03.2000 it was stated that the company did not commence any commercial operations and same was the position in the year 2001-2002 in which also the plaintiff's company did not commence any business. It is further submitted that in the directors report dated 02.09.2003 for the year ended 31.03.2003 it was stated that plaintiff's company achieved a turnover for Rs. 2,13,921/- and incurred a loss of Rs. 32,140/- and similarly in the directors report dated 16.08.04 in the year ended 31.03.2004 it was stated that the plaintiff company achieved a turnover for Rs. 5,23,260/- and earned a profit of Rs. 42,570/- for the whole year, similarly in the directors report dated 03.09.2005 in the year ended 31.03.2005 it was stated that the plaintiff company achieved a turnover for Rs. 6,61,842/- and incurred a loss of Rs. 33,755, similarly in the directors report dated TM No. 142/11 5 05.08.2008 in the year ended 31.03.2008 it was stated that the plaintiff company for the year ended 31.03.2007 had achieved a turnover for Rs. 1,54,503/- and incurred a loss of Rs. 20,500/-, similarly in the directors report dated 05.08.2009 in the year ended 31.03.2009 it was stated that the plaintiff company achieved a turnover for Rs. 10,33,254/- and earned a profit of Rs. 21,009/60.
9. It is submitted by Ld. Counsel for the defendant that plaintiff company in the last 10 years has earned a total profit of Rs. 63,579/60 and the corresponding loss suffered by the company is Rs. 86,395/- and resultantly there is no question of any goodwill or reputation assigned by the plaintiff and thereby dishonestly used by the defendant and taken benefit of the same by the defendant. It is further submitted by Ld. Counsel for the defendant that it is admitted by the plaintiff that he came to know about the impugned trade mark VENUS of the defendant in the year 2003 but he never filed any suit in the year 2003 and are rather waited for development of the business of the plaintiff and the suit of the plaintiff is also not maintainable on account of delay, laches and acquiescence.
10. It is further submitted by Ld. Counsel for the plaintiff that it is the case of the plaintiff that his application for the registration of trade mark VENUS GOLD in class 03 in respect of toilet soap and cosmetics which was filed by the plaintiff on 28.05.2009 is still pending under the registry which falsify the claim of the plaintiff that he is using the trade mark VENUS not only in respect of hair removing soap but also with respect to toilet soaps also. It is TM No. 142/11 6 further submitted that since the plaintiff had never acquired license from the concerned Drug Department regarding the manufactures of all the claims specified in plant. He cannot manufacture and trade in toilet soaps
11. It is further submitted that the defendant is hundred ' s of time bigger than the plaintiff and therefore, it is un-imaginable that the defendant would have tried to imitate the plaintiff in respect of the goods in question. It is further submitted that it is un- imaginable that the defendant would adopt the trade mark of the plaintiff with positive greed with a view to take advantage and to trade upon the established goodwill, reputation and proprietory rights of the plaintiff. It is submitted that visa-a-versa could be true. It is further submitted that the defendant has stated upon affidavit that he has never manufactured hair removing soap with trade mark VENUS and will never manufacture or trade the hair removing soap with the trade mark VENUS.
12. Heard. Considered. Document perused carefully.
13. Both plaintiff and defendant had registered trade mark in respect of the goods in question i.e. VENUS. Plaintiff has a trade mark VENUS for manufacturing and dealing with the goods and is dealing in hair removing soap. On the other hand, defendant also had a trade mark and is manufacturing and marketing toilet soap under the trade name VENUS. The suit in question may be discussed as " p assing off " action on the alleged infringement of the plaintiff's trade mark and the use of certain labels by the TM No. 142/11 7 defendant. It is pleaded that defendant is one of the leading manufacturer and seller of the goods in question and trade mark VENUS was adopted by the defendant in the year 2001 which has continuously and exclusively being used in the course of trade and said mark has widely been advertised by the defendant and has come about to be identified and recognized by the member of the trade as well as the public with the genuine and quality product of the defendant.
14. It is further pointed out by Ld. Counsel for the defendant that since defendant is also having a registered trade mark and being a registered proprietor, the defendant has an exclusive statutory right to use the trade mark in view of Section 28 of the Trade Marks Acts and plaintiff is not entitled to maintain an account against him for infringement of trade mark. Ld. Counsel for the defendant has further pointed out that in view of Section 30 (e) of the Act, plaintiff is not entitled to prevent the use of registered trade mark VENUS from the part of the defendant. It is further submitted that in view of Section 31 of the Act registration of trade mark VENUS in the name of the defendant is prima facie evidence of validity and at the stage of interim application only, prima facie view is to be taken and this factor prevails in favour of the defendant.
15. On the other hand, Ld. Counsel for the plaintiff had rebutted all the allegations levelled by the defendant by submitting that plaintiff had a registered trade mark VENUS. It is further submitted that although the sale of the plaintiff are not as high as TM No. 142/11 8 that of the defendant but being a small in business, defendant had no right to ousts him from the business. It is further submitted by Ld. Counsel for the plaintiff that although he came to know about the trade mark of the defendant in the year 2003 but thereafter he filed a number of applications before the registrar for opposing his trade mark and few of the applications of the defendant were removed thereafter Ld. Counsel for the plaintiff is not in a position to dispute the submission of account of financial report of the director of the plaintiff company with regard to the turnover of the profits and losses incurred by the plaintiff.
16. I have given my utmost consideration to the submissions made by both the counsel. I am of this opinion that at this distance of time it would not be appropriate to grant injunction in favour of the plaintiff in the facts and circumstances of this case and while adopting this course of action I am influenced by the following facts:-
a) The defendant had adopted the trade mark VENUS in the year 2001 and defendant is having a established with significant sales and create a market of its own with wide sales network. Defendant has claimed and file documents in respect of thereof.
(b) Defendant has also established a huge business and is also spending substantially on account of publicity. The sales figure of the defendant is running in multiple crores, thereafter, at this juncture it would not be appropriate to injunt the defendant.
(c) The defendant had alleged that the plaintiff came to TM No. 142/11 9 know about the adoption and use of the trade mark VENUS by the defendant at least in the year 2003, this is even admitted by the plaintiff. The plaintiff slept over the matter and acquiesced thereof. No doubt in certain cases even if the action is delayed injunction can still be granted, more so when the adoption of the trade mark by the defendant is dishonest but in the present case which appears prima facie that the plaintiff has allowed the defendant to grow by leaps and bounds and the defendant is not a fly by night company but is a well established industrial user, it may not be appropriate to injunct the defendant.
(d) The trade mark of the defendant is a registered trade mark. It is because of this reason the defence of infringement of trade mark is not available to him prima facie and case of the plaintiff is limited to passing off and infringement of copyright. In this case, since the defendant's trade mark is registered one and coupled with other factors it would not be a wise step to grant interim injunction against the defendant.
(e) Since the defendant appears to be a established company with establishment and substantial turnover, in case the plaintiff ultimately succeeds, the plaintiff can alway be compensated in terms of damages and it would not be difficult to recover those damages from the defendant.
In the case of Ciba Geigy Ltd Vs. Sun Pharmaceutical Industries 1997 (17) PTC 364, Hon ' b le Supreme Court held that :-
" . ...If damages is the measure recoverable at common law TM No. 142/11 10 would be adequate remedy and the defendant would be in a financial position to pay them, no interlocutory injunction should normally be granted, however strong the plaintiff's claim appeared to be at that stage.... "
In the case of Shri Gopal Engg. & Chemical Works Vs. M/s. POMX Laboratory I.A. 10526/91 in suit No. 3049/91 decided on 04.03.1992 wherein the Hon ' b le High Court held that:
" L ong Delay in filing application demonstrates lack of need for speedy relief. Not appropriate to grant interim injunction "
17. Upon facts and circumstances, the application U/o 39 Rule 1 and 2 CPC is dismissed. Consequently, application U/o 39 Rule 4 is disposed off in terms of the above.
18 Defendant may file written statement within three weeks from today by serving an advance copy upon the plaintiff.
List the case for replication, admission/denial of documents, if any, and for framing of issues for the date already fixed i.e. 16.02.2012.
Announced in the open court.
(Neelam Singh) ADJ-02 /South Saket Courts,New Delhi 04.01.2012/SS TM No. 142/11 11 TM No. 142/11 M/s P.K.J. Cosmetics Pvt. Ltd. Vs. M/s RSPL Ltd.
04.01.2012
Present: Counsel for the plaintiff.
Counsel for the defendant.
Vide my separate order, the application U/o 39 Rule 1 and 2 CPC is dismissed. Consequently, application U/o 39 Rule 4 is disposed off.
Defendant may file written statement within three weeks from today by serving an advance copy upon the plaintiff.
List the case for replication, admission/denial of documents, if any, and for framing of issues for the date already fixed i.e. 16.02.2012.
(Neelam Singh) ADJ-02 /South Saket Courts,New Delhi 04.01.2012/SS TM No. 142/11 12