Delhi High Court
Procter & Gamble Company vs Joy Creators & Others on 21 February, 2011
Author: V.K. Jain
Bench: V.K. Jain
THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on: 15.02.2011
Judgment Pronounced on: 21.02.2011
+ CS(OS) No. 2085/2008
Procter & Gamble Company .....Plaintiff
- versus -
Joy Creators & Others .....Defendants
Advocates who appeared in this case:
For the Plaintiff: Mr. Peeyoosh Kalra with Mr.
Kamal Sharma, Advs.
For the Defendant: None.
CORAM:-
HON'BLE MR JUSTICE V.K. JAIN
1. Whether Reporters of local papers may
be allowed to see the judgment? Yes
2. To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported Yes
in Digest?
V.K. JAIN, J
1. This is a suit for permanent injunction, rendition
of accounts, damages and delivery up of the infringing
material. The plaintiff is a fortune 500 company, having
business operations in 80 countries, dealing in a large
number of products and employing 1,38,000/- persons.
CS(OS)No. 2085/2008 Page 1 of 29
The plaintiff company is also engaged in the business of
manufacturing and selling skin care and personal cleansing
products, including anti-aging moisturizer under the
trademark OLAY. The plaintiff company is also using the
trademarks OLAY TOTAL EFFECTS and TOTAL EFFECTS in
respect of anti-aging products. The plaintiff holds
registration in respect of trademark OLAY TOTAL EFFECTS
in Class 3 of Schedule 4 of Trademarks Act, 1999 in respect
of Foundation, Make-up Base, Skin Moisturizing Cream,
Lotions and Gels, Skin Whitening Preparations, Facial and
Skin Masks, Skin Tonners, Cleansers and Astringents, Eye
Masks, Eye Gel Patch, Eye Creams, Lotions and Gels, Skin
and Body Massage Creams, Soaps (excluding soaps for
fabric use), Perfumeries, Essential Oils, Dentifrices,
Shampoo, Conditioners, Hair Styling Preparations, Hair
Care Preparations and Hair Colouring Preparations. It also
holds registration in respect of the trademark OLAY in Class
3 of the same Schedule. The plaintiff claims turnover of
$236 million, $282 million and $344 million for the years
2005-2006, 2006-2007 and 2007-2008 respectively in
respect of products sold under the name OLAY TOTAL
EFFECTS/TOTAL EFFECTS. The plaintiff company claims
CS(OS)No. 2085/2008 Page 2 of 29
to have incurred expenditure amounting to $89 million, $99
million and $111 million respectively during the aforesaid
years, on brand support activities undertaken by it across
the world. It is further alleged that the plaintiff launched its
products under the trademark OLAY TOTAL
EFFECTS/TOTAL EFFECTS in India in the year 2007 and
has been giving wide publicity to such products, which had
sale amounting to Rs.266.65 million in India during the
period from 1st July, 2007 to 30th July, 2008. The plaintiff
company has incurred expenditure of Rs.263 million in
India alone on promotion of the aforesaid trademarks.
2. It is alleged that in or about April, 2008, the
plaintiff company came across an advertisement of
application No.1224385 for registration of the label, which
contains the mark JOY ULTRA LOOK TOTAL EFFECTS in
respect of Soap, Perfumery Essential Oils, Hair Lotions and
Creams, Dentifrices etc., claiming use of the aforesaid
mark/label since April, 2001. The plaintiff filed a notice of
opposition to the registration sought by the defendants and
the opposition proceedings are stated to be pending. It is
further alleged that on carrying investigation, the plaintiff
came to know that the defendants are conducting business
CS(OS)No. 2085/2008 Page 3 of 29
throughout the country including Delhi using the above
referred trademarks and defendant Nos. 1 and 2 have also
licensed the aforesaid mark to defendant No.3, which is
manufacturing and marketing products bearing the
offending label. It is further alleged that the words TOTAL
EFFECTS are being used by the defendants only in respect
of anti-aging/age defying products and the adoption of the
mark TOTAL EFFECTS in respect of identical products
cannot be a mere co-incidence and indicates a dishonest
and fraudulent intention on their part to derive pecuniary
benefits from using the impugned mark/label. The plaintiff,
thus, claims infringement of its registered and well known
trademark OLAY TOTAL EFFECTS. The plaintiff has sought
injunction restraining the defendants from using the
trademark TOTAL EFFECTS or any other mark deceptively
similar to the trademark of the plaintiff. It has further
sought an injunction restraining the defendants from
passing off the plaintiff‟s trademarks OLAY TOTAL
EFFECTS/TOTAL EFFECTS and from applying and
obtaining registration in respect of the impugned trademark
or any deceptive variation thereof. The plaintiff has also
sought damages amounting to Rs.50 lakhs besides seeking
CS(OS)No. 2085/2008 Page 4 of 29
rendition of accounts and delivery up of the infringing
packaging material etc.
3. The defendants filed the written statement
contesting the suit. They took a preliminary objection that
this Court has no territorial jurisdiction to try the suit since
defendant No.1 does not carry any activity nor does it sell
any product in Delhi. On merits, it has been admitted that
the defendants are engaged in the business of
manufacturing, marketing and selling cosmetic products
including soap, perfumery, essential oils, hair lotions and
creams, dentifrices etc. The defendants claim to be leading
manufacturers and traders in respect of various cosmetic
products, carrying business since 1988-89 and extensively
selling various products under the trademark JOY. It is
alleged that the defendants adopted the label JOY ULTRA
LOOK TOTAL EFFECTS with the words ULTRA LOOK being
given prominence on the label and the word JOY being
written above the word ULTRA LOOK. It is also pointed out
that the words TOTAL EFFECTS written below the words
ULTRA LOOK are much smaller in font size. The present
label is alleged to have been adopted by the defendants in
the year 2001. The defendants claim to have incurred
CS(OS)No. 2085/2008 Page 5 of 29
advertisement expenditure of Rs.69,76,797/-,
Rs.46,53,621/- and Rs,64,46,355/- in the years 2005-2006,
2006-2007 and 2007-2008 respectively. They also claim to
have incurred Rs.2.5 crores towards advertisement and
publicity expenses between 1st April, 2008 and 28th
February, 2009. It is also alleged that the defendants had
sale of Rs.12,26,57,801/- in the year 2006-07,
Rs.19,41,41,916/- in the year 2007-08 and
Rs.31,66,82,164.55 between 1st April, 2008 and 28th
February, 2009. It is further alleged that on receipt of
notice from the plaintiff, the defendants, without prejudice
to their rights and contentions, agreed to delete the words
TOTAL EFFECTS on the plaintiff withdrawing the suit and
not claiming any damages or costs. The plaintiff, however,
refused to withdraw the suit. It is also claimed that the
defendant Nos.3 and 4 have no connection with defendant
Nos. 1 and 2 and have been wrongly joined as parties to this
suit only with a view to raise jurisdiction of this Court. It is
further alleged that the defendant Nos. 1 and 2 are the prior
user of the words TOTAL EFFECTS and, therefore, have a
superior right of use of the trademark TOTAL EFFECTS.
4. Defendant No.4 was proceeded ex-parte vide order
CS(OS)No. 2085/2008 Page 6 of 29
dated 18th December, 2008. Defendant Nos. 1 to 3 were
proceeded ex parte vide order dated 24th January, 2011.
5. Vide interim order dated 1st October, 2008, this
Court restrained the defendants from using the trademark
TOTAL EFFECTS or any other deceptive variation thereof,
singularly or in conjunction with any other word in relation
to their products and services. The interim order was made
absolute on 24th January, 2011.
6. The plaintiff has filed affidavit of its constituted
attorney Mr. Cyril Abrol by way of ex parte evidence. In his
affidavit by way of evidence, Mr. Abrol, supported the case
set up in the plaint and stated on oath that the plaintiff
company had sale of $236 million, $282 million and $344
million for the years 2005-2006, 2006-2007 and 2007-2008
respectively in respect of products sold under the name
OLAY TOTAL EFFECTS/TOTAL EFFECTS and had incurred
expenditure amounting to $89 million, $99 million and
$111 million respectively during the aforesaid years, on
brand support activities. He also stated that the plaintiff
company had sale of Rs.266.65 million in respect of the
products bearing trademark OLAY TOTAL EFFECTS/TOTAL
EFFECTS during the period 1st July, 2007 to 30th June,
CS(OS)No. 2085/2008 Page 7 of 29
2008 and had incurred expenditure of Rs.263 million
towards promotion of the brand in India, availing the
services of former Miss Universe Sushmita Sen for the
purpose.
He further stated that the products involved in the
present suit are cosmetic preparations, which are akin to
pharmaceutical preparations, requiring higher degree of
judicial protection, so that there is no confusion to the
ordinary customer.
7. Exhibit PW1/5 (Colly) is the certificate issued by
the Trademark Registry in respect of registration
Nos.903943 and 895212. Vide registration No.895212 the
Word Mark OLAY has been registered in the name of
plaintiff company in respect of lip moisturizers and
conditioners, liquid and powder foundation, make-up base,
skin moisturizing creams, lotions, and gels, skin whitening
preparations, facial and skin masks, skin toners, cleansers
and astringents, eye masks, eye creams, lotions and gels,
skin and body massage creams, soaps, perfumeries,
essential oils, dentifrices, shampoos, conditioners, hair
styling preparations, hair care preparations and hair
coloring preparations included in Class 03. Vide
CS(OS)No. 2085/2008 Page 8 of 29
registration No.903943 the Word Mark OLAY TOTAL
EFFECTS has been registered in the name of the plaintiff
company in respect of foundation, make-up base skin,
moisturizing creams, lotions and gels, skin whitening
preparations, facial and skin masks, skin toners, cleansers
and astringents, eye masks, eye gel patch, eye creams,
lotions and gels, skin and body massage creams, soaps,
(excluding soaps for fabric use), perfumeries essential oils,
shampoos, conditioners, hair styling preparations, hair care
preparations and hair colouring preparations. The
registration of the aforesaid trademarks in favour of the
plaintiff has not been disputed in the written statement of
defendant Nos. 1 to 3.
8. Exhibit PW1/17 (Colly), which includes
promotional material of defendant No.1 would show that the
defendant has been using the words, TOTAL EFFECTS etc.
on its packaging. A perusal of Exhibit PW1/14, which is an
advertisement of the defendant Ram Autar Gupta, who is
using the trade name JOY CREATORS would show that he
had sought registration of the label bearing JOY ULTRA
LOOK TOTAL EFFECTS in respect of soap, perfumery
essential oils, hair lotions and creams and dentifrices for
CS(OS)No. 2085/2008 Page 9 of 29
sale in India and for export. A perusal of the packing in
which age defying solution is sold by defendant N.3 Joy
Beauty Care Private Limited would show that the words
JOY, ULTRA LOOK and TOTAL EFFECTS have been used on
the bottle. A perusal of the invoice Exhibit PW1/19 would
show that the defendant No.4 SKS Instruments (India) sold
U.L. Foundation (Total Effects) in Delhi on 9th June, 2008.
9. Section 28 of Trade Marks Act, 1999 gives to the
registered proprietor of the trade mark the exclusive right to
the use of the trade mark in relation to the goods or services
in respect of which the trade mark is registered and to
obtain relief in respect of infringement of the trade mark in
the manner provided by this Act. The action for
infringement is, thus, a remedy provided by Trade Marks
Act to the registered proprietor of a registered trade mark in
case there is an invasion of the statutory right provided to
him for use of that trade mark in relation to the goods for
which the trade mark has been registered in his name.
Section 29(1) of Trade Marks Act, 1999 provides that a
registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which is
CS(OS)No. 2085/2008 Page 10 of 29
identical with, or deceptively similar to, the trade mark in
relation to goods or services in respect of which the trade
mark is registered and in such manner as to render the use
of the mark likely to be taken as being used as a trade
mark.
10. It is also a settled proposition of law, which was
reiterated by Supreme Court in Kaviraj Pandit Durga Dutt
Sharma v. Navaratna Pharmaceutical Laboratories,
PTC (Suppl) (2) 680 (SC), that if the defendant resorts to
colourable use of a registered trade mark such an act of the
defendant would give rise to an action for passing off as well
as for infringement. In an action based upon infringement
of a registered trade mark if the mark used by the defendant
is visually, phonetically or otherwise so close to the
registered trade mark of the plaintiff that it is found to be an
imitation of the registered trade mark, the statutory right of
the owner of the registered trade mark is taken as infringed.
In such a case, if it is found that the defendant has adopted
the essential features of the registered trade mark of the
plaintiff, he would be liable even if he is able to establish
that on account of packaging, get up and other writings on
his goods or on the container in which the goods are sold by
CS(OS)No. 2085/2008 Page 11 of 29
him, it is possible to clearly distinguish his goods from the
goods of the plaintiff. On the other hand in a case of
passing off if it is shown that on account of these factors it
is very much possible for the purchaser to identify the origin
of the goods and thereby distinguish the goods of the
defendant from the goods of the plaintiff, the defendant may
not be held liable.
11. In Corn Products Refining Co. vs. Shangrila
Food Products Ltd. 1960 (1) SCR 968, the Supreme Court
observed that the question whether two competing marks
are so similar as to be likely to deceive or cause confusion is
one of first impression and it is for the court to decide it.
The question has to be approached from the point of view of
a man of average intelligence and imperfect recollection.
12. In Parle Products (P) Ltd. v. J.P. & Co., Mysore,
AIR 1972 SC 1359, Supreme Court inter alia observed as
under:-
According to Karly‟s Law of Trade
Marks and Trade Names (9th Edition
Paragraph 838) "Two marks, when
placed side by side, may exhibit
many and various differences, yet
the main idea left on the mind by
both may be the same. A person
acquainted with the one mark, and
not having the two side by side for
CS(OS)No. 2085/2008 Page 12 of 29
comparison, might well be deceived,
if the goods were allowed to be
impressed with the second mark,
into a belief that he was dealing with
goods which bore the same mark as
that with which he was acquainted.
It would be too much to expect that
persons dealing with trademarked
goods, and relying, as they
frequently do, upon marks, should
be able to remember the exact
details of the marks upon the goods
with which they are in the habit of
dealing. Marks are remembered
rather by general impressions or by
some significant detail than by any
photographic recollection of the
whole. Moreover, variations in
detail might well be supposed by
customers to have been made by the
owners of the trade mark they are
already acquainted with for reasons
of their own.
It is therefore clear that in order to
come to the conclusion whether one
mark is deceptively similar to
another, the broad and essential
features of the two are to be
considered. They should not be
placed side by side to find out if
there are any differences in the
design and if so, whether they are of
such character as to prevent one
design from being mistaken for the
other. It would be enough if the
impugned mark bears such an
overall similarity to the registered
mark as would be likely to mislead a
person usually dealing with one to
accept the other if offered to him.
CS(OS)No. 2085/2008 Page 13 of 29
13. It is not necessary that in order to constitute
infringement, the impugned trademark should be an
absolute replica of the registered trademark of the plaintiff.
When the mark of the defendant is not identical to the mark
of the plaintiff, it would be necessary for the plaintiff to
establish that the mark being used by the defendant
resembles his mark to such an extent that it is likely to
deceive or cause confusion and that the user of the
impugned trademark is in relation to the goods in respect of
which the plaintiff has obtained registration in his favour. It
will be sufficient if the plaintiff is able to show that the
trademark adopted by the defendant resembles its
trademark in a substantial degree, on account of extensive
use of the main features found in his trademark. In fact,
any intelligent person, seeking to encash upon the goodwill
and reputation of a well-established trademark, would make
some minor changes here and there so as to claim in the
event of a suit or other proceeding, being initiated against
him that the trademark being used by him, does not
constitute infringement of the trademark, ownership of
which vests in some other person. But, such rather minor
variations or distinguishing features would not deprive the
CS(OS)No. 2085/2008 Page 14 of 29
plaintiff of injunction in case resemblance in the two
trademarks is found to be substantial, to the extent that the
impugned trademark is found to be similar to the registered
trademark of the plaintiff. But, such malpractices are not
acceptable and such a use cannot be permitted since this is
actuated by a dishonest intention to take pecuniary
advantage of the goodwill and brand image which the
registered mark enjoys, it is also likely to create at least
initial confusion in the mind of a consumer with average
intelligence and imperfect recollection. It may also result in
giving an unfair advantage to the infringer by creating an
initial interest in the customer, who on account of such
deceptive use of the registered trademark may end up
buying the product of the infringer, though after knowing,
either on account of difference in packaging etc. or on
account of use of prefixes or suffixes that the product which
he is buying is not the product of the plaintiff, but is the
product of the defendant.
14. As held by the Supreme Court in Amritdhara
Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449, whether
a trade name is likely to deceive or cause confusion by its
CS(OS)No. 2085/2008 Page 15 of 29
resemblance to another mark already registered is a matter
of first impression and the standard of comparison to be
adopted in judging the resemblance is from the point of view
of a man of average intelligence and imperfect recollection.
What is important to keep in mind that the purchaser does
not have both the marks lying side by side for comparison
and, therefore, chances of deception are rather strong.
15. Every person has a legal right to sell his goods or
render services using any trade name for the purpose. With
the passage of time the goods sold or the services rendered
by him, as the case may be, may acquire certain reputation
or goodwill in the market which becomes the property of
that person and needs to be protected by the court. It is not
permissible for any other person to start selling goods or
rendering services either using the same name or imitating
that name so as to cause injury to that person and enrich
himself at the cost of the person who has already been
using that name and whose mark has acquired a certain
reputation with the passage of time and on account of the
quality of the goods sold or services rendered by him. Any
attempt on the part of a person to enrich upon the goodwill
CS(OS)No. 2085/2008 Page 16 of 29
generated by any other person needs to be curbed by the
court whenever approached by the aggrieved party in this
regard.
In a case based on infringement of a registered
trademark, the plaintiff need not prove anything more than
the use of its registered trademark by the defendant. In
such a case, even if the defendant is able to show that on
account of use of other words by him in conjunction with
the registered word/mark of the plaintiff, there would be no
confusion in the mind of the customer when he come across
the product of the defendant and/or that on account of the
packaging, get up and the manner of writing trademark on
the packaging, it is possible for the consumer to distinguish
his product from that of the plaintiff, he would still be liable
for infringement of the registered trademark. Of course, use
of a registered trademark or an essential part of it, whether
alone or in conjunction with some other words would
constitute infringement only when the product and/or
service in respect of which the impugned trademark is used
fall in the same category in which registration has been
granted to the plaintiff.
CS(OS)No. 2085/2008 Page 17 of 29
16. The defendants are manufacturing/selling age
defying foundation, which is a cosmetic product to be
applied on skin, under the brand name JOY ULTRA LOOK
TOTAL EFFECTS. The plaintiff company is an established
and very well reputed manufacturer and marketer of various
products including age defying products under the brand
name OLAY TOTAL EFFECTS. Thus, both the parties are
engaged in the same business, as far as the
manufacture/sale of age defying foundation is concerned.
The words TOTAL EFFECTS are an essential and integral
component of plaintiff‟s registered trademark OLAY TOTAL
EFFECTS. The defendants have virtually lifted two of the
three words out of the registered word trademark OLAY
TOTAL EFFECTS of the plaintiff-company and are using
those two words as part of their trademark JOY ULTRA
LOOK TOTAL EFFECTS. It is, therefore, difficult to dispute
that the defendants by use of the words TOTAL EFFECTS as
an essential part of their trademark JOY ULTRA LOOK
TOTAL EFFECTS have infringed the registered trademark
OLAY TOTAL EFFECTS of the plaintiff. It is true that words
TOTAL EFFECTS are only a part of the composite trademark
of the defendants, but, that to my mind would make no
CS(OS)No. 2085/2008 Page 18 of 29
difference since an essential and integral part of the
plaintiff‟s registered trademark is being used by them for
selling their product. Neither deletion of a part of a
registered trademark nor the prefix or suffix of another word
to it would validate the use of the registered mark by an
unlicensed user, once it is shown that the part used by the
infringer is an essential part of the registered trademark.
Another important aspect in the case before the Court is
that the words TOTAL EFFECTS use the last two words in
the mark of the plaintiff as well as of the defendant, which
in turn, indicates that adoption and use of these two words
from the mark of the plaintiff was deceptive, intended to
confuse the consumer and encash upon the goodwill
enjoyed by plaintiff‟s trademark OLAY TOTAL EFFECTS. The
trademark JOY ULTRA LOOK TOTAL EFFECTS, on account
of incorporation of the words TOTAL EFFECTS in it has
become deceptively similar to the registered trademark
OLAY TOTAL EFFECTS of the plaintiff company.
17. It is also in the interest of the consumer that a well
established brand or an essential component of that brand
is not allowed to be used by another person. A person
CS(OS)No. 2085/2008 Page 19 of 29
purchasing age defying foundation being sold under the
name OLAY TOTAL EFFECTS may not necessarily
remember all the words used in the trademark and,
therefore, when he comes across another product being sold
under the trademark JOY ULTRA LOOK TOTAL EFFECTS,
on account of imperfect recollection and he is not having the
product of the plaintiff bearing the trademark OLAY TOTAL
EFFECTS with him at that time, he may get an impression
that both the products emanate from the same source and
that is why both of them are using the words TOTAL
EFFECTS as part of the trademark under which they are
being sold. This may cause confusion in the mind of the
consumer even if he does not purchase the product of the
defendant on a careful scrutiny of the trademark under
which it is being sold or on account of packaging of the
product of the defendant being different from the packaging
of the product of the plaintiff.
18. In K.R. Chinna Krishna Chettiar vs. Shri Ambal
and Co., Madras and Anr., AIR 1970 SC 146, the
respondents were the two registered trademarks. The first
mark consisted of a label containing a device of a goddess CS(OS)No. 2085/2008 Page 20 of 29 Sri Ambal seated on a globe floating on water enclosed in a circular frame with the legend "Sri Ambal parimala snuff" at the top of the label, whereas the other mark consisted of expression "Sri Ambal". The appellant before Supreme Court was seeking registration of a label containing three panels. The first and the third panels contained equivalents of the words "Sri Andal Madras Snuff", whereas the central panel contained the picture of goddess Sri Andal and the legend "Sri Andal". Sri Andal and Sri Ambal are separate divinities. The question before the Court was whether the proposed mark of the appellant was deceptively similar to the respondents‟ mark. Noticing that the word Ambal was an essential feature of the registered trademarks, the Court was of the view that the name Andal proposed to be used by the appellant did not cease to be deceptively similar because it was used in conjunction with a pictorial device. Supreme Court referred to the case of De Cordova and Ors. v. Vick Chemical Coy. (1951) 68 R.P.C.103 where Vick Chemical Coy were the proprietors of the registered trade mark consisting of the word "Vaporub" and another registered trade mark consisting of a design of which the words "Vicks Vaporub Salve" formed a part. The defendants advertised CS(OS)No. 2085/2008 Page 21 of 29 their ointment as 'Karsote vapour Rub" and the Court held that the defendants had infringed the registered marks. The view taken by Lord Radcliffe that "a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features" was affirmed by the Supreme Court. The appeal was accordingly dismissed by Supreme Court, despite the fact that the words Ambal and Andal had distinct meanings. In the case before this Court, the defendants have used the words "TOTAL EFFECTS" without even attempting any change in those words, as an essential component of their trademark "JOY ULTRA LOOK TOTAL EFFECTS". The infringement by the defendants, therefore, is more serious than the infringement in the case of K.R. Chinna Krishna Chettiar (supra) In Atlas Cycle Industries Ltd. vs. Hind Cycles Limited: ILR 1973, Delhi 393, the plaintiff was the registered proprietor of the trademark "EASTERN STAR" in respect of bicycles. The defendant was found selling cycles under the trademark "ROYAL STAR". The stand taken by the defendant was that the word trademark ROYAL STAR CS(OS)No. 2085/2008 Page 22 of 29 was not likely to cause confusion or deception or was not any infringement of appellant‟s trademark EASTERN STAR since the word STAR was common to the trade and was being used by several cycle manufacturers. It was observed by this Court that when the words EASTERN STAR and ROYAL STAR are uttered, a person of average intelligence and imperfect memory was likely to remember only the sound and word STAR and those likely to be deceived or confused between the two names or mark and, therefore the two marks had an overall structural and phonetic similarity and consequently, their use in respect of the same kind of goods viz. cycles will cause confusion or deception within the meaning of Section 29 of the Trade and Merchandise Marks Act, 1958.
In Ansul Industries vs. Shiva Tobacco Company:
2007(34) PTC 392, the appellant was marketing tobacco under the name 'Udta Panchhi', whereas the respondent was manufacturing/selling chewing tobacco under the trade name 'Panchhi Chaap'. Noticing that the word „Panchhi‟ in the mark 'Udta Panchhi' and 'Panchhi Chaap' enjoys prominence and is the focal point of two marks, it was held CS(OS)No. 2085/2008 Page 23 of 29 by this Court that despite the getup and colour of packing being different, there was likelihood of deception and confusion on account of phonetic similarity of the word „Panchhi‟ in both the marks.
19. Though it was alleged in the written statement of defendant Nos. 1 to 3 that they were prior user of the words "TOTAL EFFECTS", they have not come forward to prove the claim made by them. In fact, they have themselves admitted that they had agreed to delete the words "TOTAL EFFECTS"
from their trademark provided the plaintiff agreed not to claim damages. This clearly shows an admission on the part of the defendants that they are not entitled to use the words "TOTAL EFFETS" as a part of their trademark.
20. For the reasons given in the preceding paragraphs, the plaintiff is entitled to injunction against use of the trademark JOY ULTRA LOOK TOTAL EFFECTS or any other deceptively similar name by the defendants in respect of anti-ageing foundation or any other product for which registration has been obtained by the plaintiff for the word mark OLAY TOTAL EFFECTS.
CS(OS)No. 2085/2008 Page 24 of 29
21. Neither the relief of injunction nor the relief of delivery up of infringing material was pressed during the course of arguments. The learned counsel for the plaintiff, however, insisted on award of punitive compensatory damages and in this regard, he placed reliance on the decisions of this Court in Time Incorporated v. Lokesh Srivastava & Anr., 2005 (30) PTC 3 (Del), Microsoft Corporation v. Deepak Raval, MIPR 2007 (1) 72, Hero Honda Motors Ltd. V. Shree Assuramji Scooters, 2006 (32) PTC 117 (Del), General Electric Company v.
Mr.Altamas Khan and Others (CS(OS) No.1283/2006 decided on 18.12.2008), Indian Performing Right Society Ltd. V. Debashis Patnaik and Others, 2007 (34) PTC 201 (Del), Microsoft Corporation v. Yogesh Papat and another, 2005 (30) PTC 245 (Del.), The Coca Cola Company and another v. Dwarkadhish Khandelwal Trading as Mewar Soda Water Factory, MIPR 2007 (3) 188, Asian Paints (India) Ltd. V. Balaji Paints and Chemicals and Others, 2006 (33) PTC 683 (Del.), SAP AG and another v. Somaya Kanti Dutta and another, 2008 (36) PTC 598(Del), Larsen and Toubro Ltd. v. Chagan Bhai Patel, MIPR 2009 (1) 194, Relaxo Rubber Ltd and CS(OS)No. 2085/2008 Page 25 of 29 another v. Selection Footwear and another, 1999 (19) PTC 578, Adobe Systems Inc. and another v. Mr. P. Bhoominathan and another, 2009 (39) PTC 658 (Del) and Microsoft Corporation and another v. Mr. A. Jain and others, 2008 (36) PTC 346 (Del.). In the case of Time Incorporated (supra), this Court observed that punitive damages are founded on the philosophy of corrective justice and as such, in appropriate cases these must be awarded to give a signal to the wrong doers that the law does not take a breach merely as a matter between rival parties but feels concerned about those also who are not party to the lis but suffer on account of the breach. In the case of Hero Honda Motors (supra), this Court noticing that the defendant had chosen to stay away from the proceedings of the Court felt that in such case punitive damages need to be awarded, since otherwise the defendant, who appears in the Court and submits its account books would be liable for damages whereas a party which chooses to stay away from the Court proceedings would escape the liability on account of the failure of the availability of account books. CS(OS)No. 2085/2008 Page 26 of 29
22. In Microsoft Corporation vs. Deepak Raval:
MIPR 2007 (1) 72, this Court observed that in our country the Courts are becoming sensitive to the growing menace of piracy and have started granting punitive damages even in cases where due to absence of defendant, the exact figures of sale made by them under the infringing copyright and/or trademark, exact damages are not available. The justification given by the Court for award of compulsory damages was to make up for the loss suffered by the plaintiff and deter a wrong doer and like-minded from indulging in such unlawful activities.
In Larsen and Toubro Limited vs. Chagan Bhai Patel: MIPR 2009 (1) 194, this Court observed that it would be encouraging the violators of intellectual property, if the defendants notwithstanding having not contested the suit are not burdened with punitive damages.
23. Also, the Court needs to take note of the fact that a lot of energy and resources are spent in litigating against those who infringe the trademark and copyright of others and try to encash upon the goodwill and reputation of other brands by passing of their goods and/or services as those of CS(OS)No. 2085/2008 Page 27 of 29 that well known brand. If punitive damages are not awarded in such cases, it would only encourage unscrupulous persons who actuated by dishonest intention, use the well-reputed trademark of another person, so as to encash on the goodwill and reputation which that mark enjoys in the market, with impunity, and then avoid payment of damages by remaining absent from the Court, thereby depriving the plaintiff an opportunity to establish actual profit earned by him from use of the infringing mark, which can be computed only on the basis of his account books. This would, therefore, amount to putting premium on dishonesty and give an unfair advantage to an unscrupulous infringer over those who have a bona fide defence to make and therefore come forward to contest the suit and place their case before the Court.
24. For the reasons given in the preceding paragraph, the defendants are hereby restrained from manufacturing, selling or marketing age defying foundation or any other product in respect of which the plaintiff holds the registered word mark OLAY TOTAL EFFECTS. The plaintiff is also CS(OS)No. 2085/2008 Page 28 of 29 awarded punitive damages amounting to Rs.1,00,000/- each against defendants No.2 & 3.
Decree sheet be prepared accordingly.
(V.K. JAIN) JUDGE FEBRUARY 21, 2011 Vk/bg CS(OS)No. 2085/2008 Page 29 of 29