Bombay High Court
Pidilite Industries Ltd vs Mayur Stationery Mart And 11 Ors on 9 April, 2013
Author: S. J. Kathawalla
Bench: S.J. Kathawalla
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
SUIT NO. 1730 OF 2011
WITH
NOTICE OF MOTION NO. 2165 OF 2011
Pidilite Industries Limited, a company registered )
under the Companies Act, 1956, and having its )
registered office at Regent Chambers, 7th Floor, )
Jamanalal Bajaj Marg, Nariman Point, )
Mumbai - 400021
ig )...Plaintiff
Vs.
1. Mayur Stationary Mart, a firm/ concern, having )
its address at 18/20, Kazi Sayad Street, Masjid )
Bunder, Mumbai - 400 003 )
2. Rupal Stationary Mart, a firm / concern, having )
its address at 13, Kazi Sayad Street, Masjid )
Bunder, Mumbai - 400 003 )
3. Suyash Enterprises, a firm / concern having its )
address at 136, Shukrawar Peth, Shinde Ali, )
Pune - 411 002 )
4. Mr. Sandeep Mehta, having his address at )
Suyash Enterprises, 136, Shukrawar Peth, )
Shinde Ali, Pune - 411 002 )
5. Om Num Sunlite Marketing, a firm / concern )
having its address at 654, Priya Apartment, )
Shop No.1, Budhwar Peth, Near Poona )
Bakery, Pune - 411 002 )
6. Mr. Naresh Jain, having his address at )
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Om Num Sunlite Marketing, 654, Priya )
Apartment, Shop No.1, Budhwar Peth, Near )
Poona Bakery, Pune - 411 002 )
7. Maheshwari Traders, a firm / concern, having )
its address at 971, Budhwar Peth, Near )
Police Chowki, Pune - 411 002 )
8. Mr. Ashok Sarada, having his address at )
Maheshwari Traders, 971, Budhwar Peth, )
Near Police Chowki, Pune - 411 002 )
9. Jainam Traders, a firm / concern, having its )
address at 1663, Sukrawar Peth, Laxmi
Narayan Market, Pune - 411 002
)
)
10. Mr. Ajit Kothari, having his address at )
Jainam Traders, 1663, Shukrawar Peth, )
Laxmi Narayan Market, Pune - 411 002 )
11. Primer Stationery, a firm/ concern, having its )
address at 617-Raviwar Peth, Opp. Ramsukh )
Market, Pune - 411 002 )
12. Mr. Hiren Shah, having his address at )
Primer Stationery, a firm/ concern, having its )
address at 617-Raviwar Peth, Opp. Ramsukh )
Pune - 411 002 )... Defendants
Mr. Kalpesh Joshi for the Plaintiff.
None for the Defendants.
CORAM : S.J. KATHAWALLA, J.
DATE : 9
TH APRIL 2013
ORAL ORDER:
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1) This is an action taken by the Plaintiff against the Defendants who are engaged in counterfeiting activities by manufacturing importing and/or selling counterfeit products and also against the infringement of Trademark, Copyright, and passing off committed by the said Defendants. However, pursuant to the undertaking given by Defendant Nos. 3 to 12 on 6 th March 2013, the Plaintiff has withdrawn all claims and allegations made against the said Defendant Nos. 3 to 12 in the above suit. This Suit has appeared under the caption "For Ex-parte Decree" against Defendant Nos. 1 and 2 ("the said Defendants"). Though time was granted to the said Defendants, they failed to file their Written Statement and the Suit is therefore placed for Ex-parte Decree.
2) The Plaintiff has tendered the evidence of one Satish B. Barve, Authorized Nominee of the Plaintiff which is taken on record and marked 'X' collectively for identification. The deponent, Mr. Satish B. Barve, has produced the Authorization by way of Resolution dated 8 th November, 2012, passed by the Board of Directors in his favour. The said Original Resolution is annexed to the Compilation of the documents of the Plaintiff at Sr. No.29, page Nos. 49 and 50.
3) The Plaintiff has stated that it is an existing company incorporated under the Indian Companies Act, 1913, having its registered office at the above mentioned address. The Plaintiff has stated that through its subsidiaries and/or affiliates, it has a worldwide presence and is world-renowned in the field of adhesives and sealants, construction and paint chemicals, automotive chemicals, art materials, industrial adhesives, industrial and textile resins and organic pigments and preparations, since 1959. The Plaintiff is particularly engaged in ongoing research, discovery, development and creation of various products and has acquired a worldwide reputation for safe and high quality products. The products emanating from the Plaintiff and sold under its well ::: Downloaded on - 02/08/2016 17:27:29 ::: KPP -4- known and famous brands are known in India and several other countries for their superior and high quality and technical excellence. The Plaintiff has stated that it is the prior adopter, honest bonafide user and the registered proprietor of several well known trademarks viz. FEVICOL, FEVISTIK, FEVI KWIK, FEVICRYL, FEVI BOND, FEVIART, FEVIGUM, FEVITITE, M-SEAL and DR.FIXIT. Each of these trademarks has been continuously used by the Plaintiff since a long time upon and/or in relation to the aforementioned goods and the same have become distinctive of the goods of the Plaintiff by virtue of continuous use and registration.
4) The Plaintiff has further stated that the trademark PIDILITE is its house mark and the same appears on all its said Products and moreover, the same occupies a leading, essential and prominent feature of the Plaintiff's corporate and business name. Over years of continuous use in relation to the aforementioned products, the Plaintiff has coined, invented and adopted several trademarks, which are represented in distinctive artistic layout, getup and colour scheme. Each of these trademarks is distinctive, and has, by virtue of continuous use and publicity, come to be exclusively identified with the Plaintiff and no-one else. One of the many well known products of the Plaintiff is a glue stick sold in a distinctive packaging under the trademark FEVISTIK ("the said trademark") and further bearing the two elephants' device which the Plaintiff has been using continuously from the year 1984 till present date. Since its adoption in October 1984, the Plaintiff has used the said trademark openly, widely and extensively all across India and the said trademark has been widely publicized by the Plaintiff through various mediums of publicity. The Plaintiff has stated that the said trademark has become distinctive of its aforementioned Products in the trade and the Plaintiff has thus acquired valuable common law rights therein.
5) The Plaintiff has filed the present suit against the said Defendants for ::: Downloaded on - 02/08/2016 17:27:29 ::: KPP -5- infringement and passing off of the Plaintiff's statutory and common law rights in its said trademark; for infringement of Plaintiff's registered copyright and for damages caused to the Plaintiff by the Defendant's unlawful conduct.
6) The Plaintiff has stated that it is the registered proprietor of the said mark under No. 428130 in class 1 dated 8 th October 1984 under the Trademarks Act, 1999 for "synthetic resin adhesives for industrial purposes". The said registration is valid and subsisting and renewed upto 23 rd August 2015. The original registration certificate in respect of the said mark along with its Renewal Certificate are annexed at Sr. Nos. 1 and 2 respectively to the Compilation of Original documents of the Plaintiff.
7) The Plaintiff is also the registered proprietor and owner of the said trademark under no. 428129 and 559209 in Class 16 dated 8 th October, 1984 and 26th September, 1991. The said registrations are valid, subsisting and in force. The Original Registration Certificate in respect of the said mark bearing registration nos. 428129 and 559209 in class 16 along with its Renewal Certificate are annexed at Sr. Nos. 3 to 5 respectively to the Compilation of Original documents of the Plaintiff.
8) The Plaintiff is also the registered proprietor of the two elephants' device under No. 354039 dated 3rd October, 1979 and 1298961 dated 28 th July, 2004 in class 1. The said registration is valid and subsisting. The Original Registration Certificate in respect of the said marks bearing registration nos. 354039 and 1298961 in class 1 along with its Renewal Certificate are annexed at Sr. Nos. 6 to 8 respectively to the Compilation of Original documents of the Plaintiff. The Plaintiff states that the said two elephants' device has been popularized distinctly over the years through various sales promotion measures and is a well known trademark and people across the ::: Downloaded on - 02/08/2016 17:27:29 ::: KPP -6- country recognize this mark as exclusively associated with the Plaintiff.
9) The Plaintiff has stated that it is the registered proprietor of the FEVISTIK (label) under No. 446235 in class 16 dated 02 nd December 1985, under Nos. 908946 dated 10th March 2000 and 1512412 dated 12 th December 2006 in class 1. The said registrations are valid, subsisting and in force. The Original Registration Certificate along with its Renewal Certificate evidencing that it is duly renewed, valid and subsisting are annexed at Sr. Nos. 9 and 12 to the Compilation of Original documents of the Plaintiff. The Mark bearing No. 1512412 dated 12th December, 2006, in class 1 for "FEVISTIK" for the Plaintiff's Glue Stick is the main and primary mark which has been blatantly violated by the said Defendants. The Plaintiff has also annexed the Legal Proceedings Certificate in respect of Mark No. 1512412 dated 12 th December 2006 in class 1 at Sr. No. 28A to the compilation of documents.
10) The Plaintiff has stated that it is the registered proprietor and owner of the corporate name PIDILITE which is registered under numbers 308287, 437301, 631810, 691367, 1026412 all in class 1, 308286 in class 2 and 398192, 631814, 691358 and 1027843 all in class 16. The registration certificates in respect of the above PIDILITE Registrations along with their Renewal Certificate evincing that the same are duly renewed, valid and subsisting are annexed at Sr. Nos. 13 to 22 respectively to the Compilation of Original documents of the Plaintiff.
11) The Plaintiff has stated that the Plaintiff is also the owner of the copyrights in the artistic work comprised in the distinctive FEVISTIK labels. The said distinctive FEVISTIK labels have been registered by the Plaintiff under the Copyright Act, 1957 under copyright registration Nos. A- 73184/2005 dated May 13, 2005 and A-73001/2005 dated May 10, 2005. The extracts from the Register of Copyrights pertaining to the said ::: Downloaded on - 02/08/2016 17:27:29 ::: KPP -7- registrations under nos. A-73184/2005 dated May 13, 2005 and A-
73001/2005 dated May 10, 2005 respectively are annexed at Sr. Nos. 23 and 24 to the Compilation of Original documents of the Plaintiff. The Plaintiff states that besides FEVISTIK, the distinctive two elephants' device is also an original artistic work within the meaning of the Copyright Act, 1957. The said distinctive two elephants' device has been registered by the Plaintiff under the Copyrights Act, 1957 under copyright registration No. A- 73966/2005 dated June 15, 2005. The extract from the Register of Copyrights pertaining to the said registration under no. A-73966/2005 dated June 15, 2005 is annexed at Sr. No. 25 to the Compilation of the Original documents of the Plaintiff.
12) The Plaintiff has stated that the FEVISTIK products have also been marketed by the Plaintiff on an extensive basis in a distinctive packaging as depicted in Exhibit 'K ' to the Plaint.
13) The Plaintiff has stated that due to superior quality of the FEVISTIK products and in view of the extensive sales and promotional expenditure incurred by the Plaintiff, the FEVISTIK Products sold in Distinctive FEVISTIK Packaging have been exclusively associated by the members of the trade, consumers, stockists, retailers and the public at large with the Plaintiff only and no one else and the Plaintiff has acquired a unique and valuable reputation and exclusive goodwill therein. The reputation and goodwill of the trademark FEVISTIK extends far and wide and much beyond the scope of the actual goods manufactured by the Plaintiff and the very mention of the word FEVISTICK or two distinctive Elephants in the stationary market would ordinarily be correlated with the Products of the Plaintiff and none else. The Plaintiff has stated that it has been selling its products under the said trademark FEVISTIK through a network of dealers all over India. Owing to such long use, registration and the unique goodwill and reputation generated ::: Downloaded on - 02/08/2016 17:27:29 ::: KPP -8- therein, the use of the trademark FEVISTIK, the Distinctive FEVISTIK Labels, Distinctive Elephants' Device, the corporate name Pidilite and the Distinctive FEVISTIK Packaging have acquired a distinctive connotation as being Products of the Plaintiff exclusively and any use of the said trademark by any person, other than the Plaintiff and without the Plaintiff's permission, will lead to confusion and deception amongst the purchasing public and the trade.
14) The Plaintiff has stated that it has always been vigilant and diligent in protecting its trademark FEVISTIK from being copied and infringed. The Plaintiff has stated that somewhere around May 2011, it came across the counterfeit/ infringing products being imported or sold or distributed by the said Defendants in packaging material which is an imitation of, and in appearance, identical with, its FEVISTIK products. The Plaintiff apprehends that the counterfeit/ infringing products of the Defendants are not made under the same quality control requirements as that of the Plaintiff and are not of the same superior quality as that of the Plaintiff's FEVISTIK products.
The Plaintiff has further stated that while it has been protecting its said trademark FEVISTIK, on 26th May 2011 it has lodged a complaint against the said Defendants with The Deputy Commissioner of Police, Zone II, Mumbai and thereafter Police raided the premises of the said Defendants and also seized counterfeit FEVISTIK products. Also, an FIR was lodged on 1 st June 2011. The photocopy of the duly acknowledged copy of the said complaint dated 26th May 2011 and a photocopy of the FIR dated 1 st June 2011 are annexed at the "Sr. No 26 and 27" respectively to the compilation of the original documents of the Plaintiff. From the aforesaid it is clearly evident that the Plaintiff has tried its best to curb and stop its valuable Intellectual Property Rights in the said trademark from being usurped.
15) The Plaintiff has stated that on a bare perusal of the Counterfeit
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Products of the Defendants, it is apparent that the same is a counterfeit of the FEVISTIK products of the Plaintiff. The impugned mark FEVISTIK depicted/ used on the Counterfeit Products is identical or similar to the Plaintiff's various registrations for FEVISTIK/ FEVISTIK labels. The impugned device of two elephants used on the Counterfeit Products is identical or similar to the Plaintiff's registration for the two elephants' device. The unauthorized use of the impugned marks on or in relation to the Counterfeit Products amounts to infringement of the Plaintiff's aforesaid registered marks. The Counterfeit Products also falsely state that they are imported by 'Pidilite Industries Limited'. The unauthorized use of the impugned marks 'Pidilite' in the aforesaid manner amounts to infringement of the Plaintiff's PIDILITE Registrations. The Plaintiff is the copyright owner in respect of the Distinctive FEVISTIK Labels and the Distinctive Elephants' Device. The Counterfeit Products unauthorizedly contain a reproduction or a substantial reproduction of the Distinctive FEVISTIK Labels and Distinctive Elephants' Device. The same has been copied from the Plaintiff and amounts to infringement of the Plaintiff's copyrights. By manufacturing / importing and/ or selling the Counterfeit Products, the Defendants are misrepresenting their goods as those of the Plaintiff's and causing damage to the Plaintiff and to the goodwill and reputation of the Plaintiff's business and are also diluting the distinctiveness of the Plaintiff's distinctive get up, lay out, look & feel and colour scheme comprised in the Distinctive FEVISTIK Packaging of the Plaintiff and also diluting the Plaintiff's distinctive mark FEVISTIK and device of two elephants. Such misrepresentation has been done deliberately so as to ride upon the reputation and goodwill of the Plaintiff. Further, such misrepresentation is causing/ likely to cause confusion and deception in the minds of the trade, public and consumers. In doing so the obvious intention of the Defendants is to infringe and pass off their goods as original goods of the Plaintiff's.
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16) I have gone through the averments made in the plaint and the documents annexed to the affidavit of evidence and Compilation of documents of the Plaintiff and also heard the Learned Advocate for the Plaintiff. The document at Sr. Nos. 1 to 5 shows that the Plaintiff is the registered Proprietor of the trademark "FEVISTIK" since 8th October 1984. The document at Sr. Nos. 6 to 8 shows that the Plaintiff is the registered Proprietor of the trademark "TWO DISTINCTIVE ELEPHANTS DEVICE" since 3rd October 1979. The document at Sr. Nos. 9 to 12 shows that the Plaintiff is the registered Proprietor of the trademark "DISTINCTIVE FEVISTIK LABELS" since 2 nd December 1985. The document at Sr. Nos. 13 to 22 shows that the Plaintiff is the registered Proprietor of the corporate name "PIDILITE" since 9 th September 1975. The document at Sr. Nos. 23 to 25 shows that the Plaintiff is the Proprietor of the trademark "DISTINCTIVE FEVISTIK LABELS" since 13 th May 2005 under the Copyright Act. The document annexed at Sr. No. 26 reveals the Complaint filed by the Plaintiff with the Deputy Commissioner of Police against the Defendants. The document at Sr. No. 27 shows the FIR lodged against the said Defendants. Both the said documents go on to reveal that the Plaintiff has been vigilant and proactive at all times to protect its well-known trademark FEVISTIK from being usurped by infringers. The Plaintiff has obtained Legal Proceedings Certificate in respect of Trademark bearing No. 1512412 and annexed at Sr. No. 28A Page No. 47 and 48 of the Compilation of the documents tendered in Evidence.
17) In assessing the similarity of the rival products in the present case, no oral evidence is necessary. Comparison of the Plaintiff's product with that of the Defendant's impugned product shows that the Defendant's product is phonetically, visually and structurally deceptively similar to the Plaintiff's registered trademark FEVISTIK. Hence the use of the impugned product by the Defendants constitutes infringement of the famous and registered trademark FEVISTIK of the Plaintiff. The Defendants have also ::: Downloaded on - 02/08/2016 17:27:30 ::: KPP -11- used a colour scheme, getup, lay out, style, look and feel in relation to the Packaging which is identical to the original colour scheme, getup, lay out, style, look and feel as used by the Plaintiff for its famous and well known trademark FEVISTIK. The products of the Defendants are counterfeit products. Hence, copying, simulation and resemblance of the counterfeit products with those of the Plaintiff's FEVISTIK products is illegal and constitutes infringement of the Plaintiff's registered trademark and copyright in its original mark of FEVISTIK. The Plaintiff has also established that it has acquired sufficient reputation and goodwill in its mark to successfully maintain an action for passing off.
18) The Plaintiff has led evidence of one Mr. Satish B. Barve by filing his affidavit in lieu of examination-in-chief. The witness confirms the correctness of the contents of the affidavit.
19) There is nothing on record that militates against anything that has been averred in the plaint and deposed to by the witness.
20) The said Defendants were served with the writ of summons and an affidavit of Bailiff dated 6th September 2011 proving service of the writ of summons, which is on record. However, the said Defendant Nos. 1 and 2 have not filed any written statement. The evidence of the witness is thus uncontroverted.
21) In the circumstances, the Plaintiff has established that the acts of manufacturing, importing and/ or selling the Counterfeit Products by the said Defendants are misrepresenting their goods as those of the Plaintiff's and/ or are misrepresenting that the Counterfeit Products are that of the Plaintiff's, causing damage to the Plaintiff and to the goodwill and reputation of the Plaintiff's business and amount to infringement of the Plaintiff's well known trademarks FEVISTIK registered under Nos. 428130 in class 1, ::: Downloaded on - 02/08/2016 17:27:30 ::: KPP -12- 428129, 559209 both in class 16, Device of Two Elephants registered under Nos. 354039 and 1298961 both in class 1, FEVISTIK (Label) registered under Nos. 446235 in class 16, 908946, 1512412 in class 1 and PIDILITE registered under Nos. 308287, 437301, 631810, 691367, 1026412 all in class 1, 308286 in class 2 and 398192, 631814, 691358, and 1027843 all in class 16 under Section 23(2) Rule 65 (I) read with Section 2(1)(zb) of the Trademarks Act, 1999 and also amount to passing off under Section 27(2) of the Trademarks Act, 1999. The Plaintiff has further established that the use of label by the Defendants amounts to infringement of the Plaintiff's registered copyright under Section 51 of the Copyright Act, 1957.
Accordingly, the suit is decreed in terms of prayer clauses (a), (b), (c) (d) and (e). As regards prayer clause (f), the Defendant Nos.1 and 2 are directed to pay Rs. 5,00,000/ as and by way of punitive damages to the Plaintiff within 4 weeks of receipt of this order. These punitive damages are awarded to the Plaintiff considering the nature of infringement and with a view to dissuade others from indulging into such activities. Notice of Motion is also accordingly disposed of.
22) The Court Receiver shall destroy all the seized products in presence of the Plaintiff's representative and after such destruction, the Court Receiver shall be discharged of his duties.
23) The Office shall return the compilation of original documents to the Advocate for the Plaintiff upon the Advocate for the Plaintiff handing over a true copy of this Order along with photostat copies of the said compilation of documents duly certified as true copies.
(S. J. KATHAWALLA J.) ::: Downloaded on - 02/08/2016 17:27:30 :::