Delhi District Court
Shubham Goldiee Masale Pvt Ltd vs Ashok Nenumal Katariya on 31 July, 2024
-1-
IN THE COURT OF SH. VIDYA PRAKASH
DISTRICT JUDGE (COMMERCIAL COURT)-02, PATIALA
HOUSE COURTS, NEW DELHI
CNR NO.: DLND01-012014-2019
CS(COMM)/ 436/2019
(OLD NO. : TM NO. 81/2019)
IN THE MATTER OF:-
M/S SHUBHAM GOLDIEE MASALE PVT. LTD.
51/40, GOLDIEE HOUSE
NAYAGANJ, KANPUR, UP
...PLAINTIFF
VERSUS
ASHOK NENUMAL KATARIYA
32/33, KUKREJA NAGAR
JARIPATKA, NAGPUR
MAHARASHTRA - 440014
...DEFENDANT
Date of Institution : 11-07-2019
Date of reserving judgment : 18-07-2024
Date of pronouncing judgment : 31-07-2024
JUDGMENT
1. Vide this judgment, I shall decide the present suit under S. 134 & 135 of Trademarks Act, 1999, Sec. 55 of the Copyright Act, 1957 for permanent injunction restraining infringement, passing off, delivery up and rendition of accounts etc., filed by plaintiff against the defendant.
2. At the outset, it must be mentioned that initially, the present suit was filed as non-commercial suit before the concerned Court of Ld. Additional District Judge, Patiala CS (COMM)/436/2019 Page 1 of 23 -2- House Courts, New Delhi. During the course of trial, the case was received by this Court by way of transfer, on 27-07-2022 in view of Order No.17016-17031/Judl./ NDD/ PHC/2022 dated 05-7-2022 of the then Ld. Principal District & Sessions Judge, New Delhi District, PHC and consequent upon the directions of Hon'ble Delhi High Court in the case titled as 'Vishal Pipes Limited v. Bhavya Pipe Industry' FAO-IPD No.1/2022 & CM APPLs No. 12-14/2022 dated 03-6-2022.
BRIEF FACTS OF THE CASE:
3. The case of the plaintiff, as set out in the plaint, is that the plaintiff, which is stated to be a company duly registered under the Indian Companies Act, 1956, got instituted the present suit through its one of the directors, namely Sh. Surendra Kumar Gupta, who has been duly authorized by the plaintiff company to institute, sign, verify and pursue the present suit. It is stated that the plaintiff company is engaged in the business of manufacturing and marketing of wide range of food products for human consumption including spices and other allied and related goods (hereinafter referred to as the 'said goods and business') under the house mark GOLDIEE. It is claimed that the plaintiff is proprietor of trademark GOLDIEE and GOLDIEE formative marks/ labels in relation to the said goods and business (hereinafter referred to as the "said trademarks/ CS (COMM)/436/2019 Page 2 of 23 -3- labels"). It is also stated that the word 'GOLDIEE' forms material part of the plaintiff's trade name and the same is housemark of the plaintiff.
4. It is stated that M/s Shubham Industries is the predecessor of the plaintiff and the plaintiff took over the said firm with all its assets and liabilities on 01-4-1998.
5. It is further stated that the plaintiff through its predecessors has honestly and bonafidely adopted the said trade mark/ label in the year 1980 and has been continuously and uninterruptedly using the same in relation to its said goods in the course of trade since then.
6. The plaintiff company has also claimed that the said trademarks/labels are registered under the provisions of Trade Mark Act, 1999, which are stated to be valid and subsisting till date and the details thereof have been mentioned in Para no.5 of the plaint. Further, the plaintiff company has also claimed that the artworks involved in plaintiff's said trade marks/ labels are original artistic works and the plaintiff is the owner and proprietor of the copyright therein within the meaning of Indian Copyright Act, 1957. Further, it is stated that the plaintiff has been dealing with its art works/ copyright in the course of trade in relation to its said goods and business inter alia within the meaning of S. 14 of the Copyright Act, 1957.
7. It is further stated that said goods and business being carried on by the plaintiff under the said trade marks/ labels is very extensive and the goods and business CS (COMM)/436/2019 Page 3 of 23 -4- thereunder have been practically distributed in major parts of the country. It is further stated that the plaintiff is also carrying on its business activities under the said trademark on the internet through its website namely www.goldiee.com (hereinafter referred to as domain name/website). It is stated that said domain name of the plaintiff is interactive in nature and the plaintiff has been using this Domain name in the course of trade and as a proprietor thereof globally in relation to its said goods and business under the said trademark/label.
8. Further, the said trade marks/labels have acquired distinctiveness in the market and trade and are identified with the plaintiff and the said goods and business of plaintiff, as exclusively originating from the plaintiff's source alone. The said goods and business of the plaintiff bearing the said trade mark/ label are highly demanded in the market on account of their standard quality and precision. Thus, it is stated that the said trade marks/labels of the plaintiff have become distinctive indicium of the plaintiff in relation to their said goods.
9. Further, it is the case of the plaintiff that plaintiff's goods and business under the said trade marks/labels have acquired tremendous goodwill and enviable reputation in the markets and the plaintiff has already built up a handsome and valuable trade thereunder. Years-wise sales details thereof have been given in Para no. 7 of the plaint, thereby showing that the plaintiff had turnover of Rs.1,25,66,929/- during the year 1987-1988, which CS (COMM)/436/2019 Page 4 of 23 -5- increased year to year and was Rs.6,25,89,07,653/- in the year 2017-2018.
10. It is further the case of the plaintiff that the plaintiff has been continuously promoting its said goods and business under the said trade marks/ labels through print, audio/ visual media, advertisements and publicity in leading newspapers, distribution of trade literature, trade hoarding's and board etc. and the plaintiff has already spent enormous amounts of moneys and efforts thereon.
11. Further, on account of its good quality and standards of manufacturing and untiring efforts in advertising and marketing, the products of the plaintiff under the said trade marks/labels have acquired enviable reputation and goodwill in the markets.
12. Hence, it is claimed that in view of the plaintiff's proprietary rights both under statutory and common law in its said trademarks, its goodwill & reputation, and its copyrights, the plaintiff has the exclusive right to the use thereof and nobody can be permitted to use the same or any other deceptively similar trademark/label in any manner whatsoever in relation to any specification of goods without the leave and license of the plaintiff.
13. It is alleged that the defendant is engaged in the business of manufacturing and sale of Namkeen and Sweets, Namkeen of all types and allied/related/cognate products (hereinafter referred to as "the impugned goods & business").
CS (COMM)/436/2019 Page 5 of 23 -6-14. It is stated that the defendant has adopted and started using the trademark 'Golden Goldy'/ in relation to his impugned goods and business and has been using the same as word mark and in label form (hereinafter referred to as the "impugned trademark/label"). It is stated that apart from sale to the direct customers from their shop/ premises, the defendant is soliciting, networking, supplying the impugned goods bearing the impugned trademark/ label to the dealers/ retailers/ distributors in the markets of New Delhi viz. Parliament Street, Barakhamba Road, Chanakyapuri, Gole Market, Bengali Market, Connaught Place, etc.
15. It is alleged that the plaintiff learnt about the defendant's impugned trademark/ label in 4th week of May, 2019 when the plaintiff came across the persons networking on behalf of the defendant in New Delhi market. Further, the plaintiff has learnt that the defendant has also applied for registration of the impugned trademark under No.3179346 in Class 30 claiming user of 01-04-2015.
16. Thus, it is alleged that the defendant has dishonestly and malafidely adopted and started using impugned trademark/ label 'Golden Goldy'/ which are visually, structurally identical and/or deceptively and CS (COMM)/436/2019 Page 6 of 23 -7- confusingly similar to the registered trademark/ label GOLDIEE and formative marks GOLDIE thereby causing confusion and deception amongst the unwary purchasing public and traders by making them believe that the origin of those goods is the plaintiff company. It has been averred that by doing so, the defendant is not only damaging the reputation and goodwill of the plaintiff company by passing off its substandard products as that of the plaintiff company but is also causing financial loss to the plaintiff company by reaping unfair advantage of the repute and distinctive character of the trademarks of the plaintiff company.
17. On these grounds, the plaintiff has filed the present suit against the defendant praying therein, inter alia, that decree of permanent injunction may be passed restraining the defendant and all others acting for and on his behalf from manufacturing, marketing, using, selling, soliciting, importing, exporting, displaying, distributing, advertising or in any manner using the impugned trademark/ label 'Golden Goldy' and/or any other word mark/ trademark/label which may be identical with and/ or deceptively similar to the plaintiff's said trademark/label GOLDIEE and formative trademarks GOLDIE in relation to his impugned goods and business of Namkeen, Sweets and Namkeen of all types and related/ allied cognate products and from doing any other acts or deeds, thereby infringing plaintiff's registered trademarks, copyright and passing off his products as that of the plaintiff.
CS (COMM)/436/2019 Page 7 of 23 -8-18. The suit was accompanied with applications - one under Order XXXIX Rule 1 & 2 CPC and another under Order XXVI Rule 9 CPC seeking ex parte ad interim injunction and appointment of local commissioner respectively. After hearing the counsel of plaintiff, the said applications were allowed, vide common order dated 19-07-2019 passed by Ld. Predecessor of the Court, thereby granting an ex parte ad interim injunction in favour of the plaintiff and against the defendant, and Local Commissioner was also appointed to visit and search the premises of the defendant with certain conditions.
19. Summons of the suit and notice of accompanying applications were issued to the defendant in terms of relevant orders. The defendant put appearance through counsel.
20. Pertinently, in pursuant to Court's order, the Local Commissioner had executed the commission and filed his detailed report. As per same, it is revealed that the defendant was not available at the given premises at the time of execution of commission, whereas his wife met and subsequently, his son also arrived there. Thereafter, they entered into the house, which was purely residential house. However, no goods, material, pamphlet, letterhead or anything incriminating was found out at the spot.
21. It may be noted that the defendant had filed written statement having title as "Reply/ Objection on behalf defendant under S. 134 and 135 of Trademarks Act, 1999;
CS (COMM)/436/2019 Page 8 of 23 -9-Section 55 of Copyright Act, 1957 in the suit for permanent injunction restraining infringement, passing off; delivery up; rendition of accounts, etc., filed by the plaintiff", wherein he took various preliminary objections, inter alia, that the defendant neither run any business in the name of 'Golden Goldy' nor has ever opened any bank account in the name of 'Golden Goldy' and also that the defendant has never conducted any business by using the name of 'Golden Goldy' for his business. It is further stated that when the defendant learnt about the trade name of 'Golden Goldy' having been already allotted to the plaintiff, the defendant immediately took steps to cancel this trade mark of 'Golden Goldy' and thus, no infringement was committed by the defendant. It is stated that this Court had appointed Local Commissioner in the above said matter and Local Commissioner had conducted the inspection of registered address of the defendant but did not find any business activity being carried out by the defendant, which could suggest that defendant is running any business using the trade mark of 'Golden Goldy' and the premises was found to be a residential house which clearly exhibits that absolutely no such business activity was conducted by the defendant under the said trade mark. However, in 'Parawise Reply', the defendant merely stated like 'Para no.1 is vehemently denied and strictly any such proof is required '
22. It may be noted that on 14-01-2020, the defendant himself made statement on Oath before the Court, inter alia, that he CS (COMM)/436/2019 Page 9 of 23 -10- had applied for trade mark 'Golden Goldy' in respect of goods of Class 30 and during the pendency of the said application, objections were filed on behalf of plaintiff company. Further, he stated that he had not been dealing in the trademark 'Golden Goldy' and only filed the application and he had also withdrawn his application for registration of trade mark 'Golden Goldy' vide application dated 18-08-2019 and he is no more interested in dealing in the trade mark 'Golden Goldy' and has no objection that injunction order is made absolute. On the basis of such statement, the injunction order dated 19-07-2019, was made absolute vide order dated 14-01-2020 passed by Ld. Predecessor of this Court.
23. It may be noted that the present case was received by this Court on 27-07-2022, as already noted above in Para No.2, and an application under Order VI Rule 17 CPC was moved on behalf of the plaintiff seeking amendment of the suit, thereby enhancing specified value to be above Rs.3 lacs, so as to bring the present suit within the ambit of the Commercial Courts Act, 2015, in view of the directions of Hon'ble Delhi High Court in case of Vishal Pipes Limited (supra), which was allowed vide order dated 22-11-2022 passed by Ld. Predecessor of this Court and the defendant was directed to file written statement to the amended plaint within 30 days from the date of said order. However, since none had been appearing on behalf of the defendant since long, the defendant was proceeded against ex parte, vide CS (COMM)/436/2019 Page 10 of 23 -11- order dated 20-02-2023 passed by Ld. Predecessor of this Court.
24. In view of above, the position as emerges on record is that although, written statement was filed by the defendant to the original plaint, yet he failed to file written statement to the amended plaint in conformity with the provisions of the Commercial Courts Act, 2015.
25. It may be noted that on an application moved on behalf of plaintiff for substitution of AR, in place of previous AR Sh. Surender Kumar Gupta, new AR Sh. Nirmal Singh, was allowed to be substituted, vide order dated 18-3-2024, passed by this Court.
26. Thereafter, in support of its case, the plaintiff company has examined only one witness i.e. its AR namely Sh. Nirmal Singh as PW1. He led examination-in-chief by way of affidavit [Ex.PW1/A] and deposed in terms of the facts of the plaint and relied on the following documents:-
Sr. Document/Particulars Exhibit(s)
No.
1. Representation of Trademark/Label of Ex. PW1/1
the plaintiff. (Colly)
2. Screenshots Plaintiff's website. Ex. PW1/2
(Colly)
3. Representation of Defendant's Ex. PW1/3
products.
4. Copy of plaintiff's products, Ex. PW1/4
CS (COMM)/436/2019 Page 11 of 23
-12-
Sr. Document/Particulars Exhibit(s)
No.
Catalogue, Brochers etc. (Colly)
5. Copy of registration Certificate & Ex. PW1/5
Status page of plaintiff applications in (Colly)
various class.
6. Copy of sale bills/invoices of the Ex. PW1/6
plaintiff. (Colly)
7. Copy of advertisement bills/ Mark A
advertisement materials of the
plaintiff's trademark.
8. Copy of quality management System Mark B
Certificate issue by MSA Certification
Co. Ltd. in favour of plaintiff.
9. Copy of certificate of registration Mark C
issued by Hazard Analysis Critical
Control Point in favour of plaintiff.
10. Copy of the documents pertaining to Mark D
FSSAI License issued in favour of the
plaintiff & renewal thereof.
11. Online status of defendant's impugned Ex. PW1/12 trademark application under no.
3179346 in Class 30 as downloaded from official website of trademark registry.
12. Copy of extract of Resolution. Ex. PW1/13 CS (COMM)/436/2019 Page 12 of 23 -13- Sr. Document/Particulars Exhibit(s) No.
13. Copy of new resolution dated Ex. PW1/14 07.04.2023.
27. On statement of counsel of the plaintiff, the ex parte evidence of the plaintiff was closed on 18-03-2024. After closure of PE, ex parte final arguments were heard.
28. It may be noted here that during the course of final arguments, Ld. Counsel of plaintiff made statement to give up prayers / reliefs regarding restraining the defendant from disposing off or dealing with his assets and rendition of accounts of profits respectively, as prayed in prayer Clause Nos. 29(b) and 29(d) of the amended plaint. Accordingly, the plaintiff was permitted to give up the said reliefs, vide order dated 02-5-2024. In view thereof, the suit survives only with respect to reliefs of permanent injunction whereby the plaintiff has sought permanent injunction against the defendant from using the impugned trademark and also for delivery up.
29. I have already heard Ld. counsel of the plaintiff.
I have also gone through the material available on record including the plaint and the evidence, oral as well as documentary, led from the side of the plaintiff.
ARGUMENTS OF THE PLAINTIFF
30. Ld. Counsel of plaintiff argued that the entire testimony of CS (COMM)/436/2019 Page 13 of 23 -14- PW-1 has remained unchallenged and un-rebutted from the side of defendant and therefore, the plaintiff company is entitled to the decree, as prayed for. In support of his submissions, Counsel also relied upon the documents [Ex.PW1/1 to Ex.PW1/6, Ex.PW1/12 to Ex.PW1/14 and Mark A to Mark D].
31. Further, it is submitted by Ld. Counsel of plaintiff that the trademarks/labels GOLDIEE are well known trademarks of the plaintiff and are registered under various classes of the Trademark Rules 2002, which are valid and subsisting in favour of the plaintiff company till date. Further, the art works involved in the trademarks/ labels is original artistic work and the plaintiff holds copyright therein. Further, it is submitted that the plaintiff spends huge amount of money in advertising and promotion of its products and said marks enjoy a huge goodwill and reputation in business community and public in general in India.
32. Further, he submitted that the use of impugned trademark/label 'Golden Goldy' as adopted by the defendant, is identical and/ or confusingly or deceptively similar to the registered trademarks/labels of the plaintiff i.e. GOLDIEE and thus, same amounts to not only committing fraud upon the plaintiff company but also upon the unwary general public, due to which the plaintiff company suffers huge monetary loss and its goodwill and reputation is also at stake and therefore, he urged that the suit may be decreed in favour of the plaintiff and against the defendant, thereby restraining the defendant and all CS (COMM)/436/2019 Page 14 of 23 -15- others acting for and on his behalf from using the said impugned trademark/ label.
ANALYSIS & CONCLUSION:
33. I have considered the submissions made on behalf of the plaintiff. I have also duly considered the relevant material available on records.
JURISDICTION
34. Firstly, as regards jurisdiction of this Court, it is submitted by Ld. Counsel of plaintiff that apart from sale to the direct customers from their shops/ premises, the defendant is soliciting, networking, supplying the impugned goods bearing the impugned trademark/ label to the dealers/ retailers/ distributors in the markets of New Delhi viz. Parliament Street, Barakhamba Road, Chanakyapuri, Gole Market, Bengali Market, Connaught Place etc., who are making clandestine and surreptitious sales thereof to unwary consumers. It is further contended that the plaintiff's proprietary rights are being prejudicially affected or likely to be so affected in New Delhi due to the defendant' impugned activities as he has all the intention to use/ sell/ solicit the impugned/ counterfeit goods under the impugned trademark/ label in the markets of New Delhi. Hence, it is contended that a part or whole of cause of action has arisen within the jurisdiction of this Court within the meaning of S. 20 of CPC.
35. Besides, it is also argued by Ld. Counsel of plaintiff that the plaintiff is also carrying on its said goods and business CS (COMM)/436/2019 Page 15 of 23 -16- under its said trademarks/ labels in New Delhi viz. Parliament Street, Barakhamba Road, Gole Market, Bengali Market and Connaught Place, etc. and thus, the plaintiff has extensive goodwill and reputation on account of voluminous sales and advertisement within the territorial jurisdiction of this Court. It is further stated that the plaintiff is also carrying on its business activities under the said trademark on the internet through its website namely www.goldiee.com which is stated to be interactive in nature, through which goods are being sold and purchased and delivered to various places including places within the territorial jurisdiction of this Court. Thus, it is contended that this Court further has also territorial jurisdiction to entertain and try the present suit within the meaning of S. 134 (2) of the Trademarks Act, 1999 and also under S. 62(2) of the Copyright Act, 1957.
36. The PW1 has categorically deposed in his affidavit in evidence on identical lines of the averments made in the plaint. The whole testimony of PW1 remained unchallenged and uncontroverted as the defendant has neither filed written statement nor has chosen to cross-examine PW1.
37. In view of the foregoing reasons and in the totality of the facts and circumstances of the case, the Court is of the considered opinion that at least part cause of action has arisen within the territorial jurisdiction of this Court and therefore, this Court has territorial jurisdiction to try and entertain the suit.
CS (COMM)/436/2019 Page 16 of 23 -17-PERMANENT INJUNCTION:
38. Hon'ble Supreme Court in case titled as "Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors", reported as MANU/SC/0066/2022, has laid down law with respect to infringement of trademarks, to quote:-
43. The legislative scheme is clear that when the mark of the defendant is identical with the registered trademarks of the plaintiff and the goods or services covered are similar to the ones covered by such registered trademarks, it may be necessary to prove that it is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trademarks. Similarly, when the trademarks of the plaintiff is similar to the registered trademarks of the defendant and the goods or services covered by such registered trademarks are identical or similar to the goods or services covered by such registered trademarks, it may again be necessary to establish that it is likely to cause confusion on the part of the public However, when the trademarks of the defendant is identical with the registered trademarks of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by registered trademarks, the Court shall presume that it is likely to cause confusion on the part of the public.
45. It could thus be seen that this Court has pointed out the distinction between the causes of action and right to relief in suits for passing off and for infringement of registered trademarks. It has been held that the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trademark, cannot be equated. It has been held that though an action for passing off is a Common Law remedy being an action for deceit, that is, a passing off by a person of his own goods as those of another; the action for infringement is a statutory right conferred on the registered proprietor of registered trademarks for the vindication of the exclusive rights to the use of the trademarks in relation to those goods. The use by the defendant of the trademark of the plaintiff is a sine qua non in the case of an action for infringement. It has further been held that if the essential features of the trademarks of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or CS (COMM)/436/2019 Page 17 of 23 -18- marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial in case of infringement of the trademarks, whereas in the case of a passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
47. It could thus be seen that this Court again reiterated that the question to be asked in an infringement action is as to whether the defendant is using a mark which is same as, or which, is a colourable imitation of the plaintiff's registered trademarks. It has further been held that though the get up of the defendant's goods may be so different from the plaintiff's goods and the prices may also be so different that there would be no probability of deception of the public, nevertheless even in such cases, i.e. in an infringement action, an injunction would be issued as soon as it is proved that defendant is improperly using the plaintiff's mark. It has been reiterated that no case of actual deception nor any actual damage needs to be proved in such cases This Court has further held that though two actions are closely similar in some respects, in an action for infringement, where the defendant's trademarks is identical with the plaintiff's trademarks, the Court will not enquire whether the infringement in such as is likely to deceive or cause confusion.
39. It is now well settled law, as also laid down by our own Hon'ble High Court in the case titled as 'Shaw Wallace & Co. Ltd. & Anr. v. Superior Industries Ltd'. 2003 (27) PTC 63 (Del) that an infringement of trademarks is to be seen from the perspective of a layman, to quote:-
12.It is well settled that in an action for alleged infringement of a registered trademarks, if the impugned marked used by the defendant is identical with the registered trademarks of the plaintiff, no further questions have been to be addressed and it has to be held that there is indeed an infringement. If the mark is not identical, the matter has to be further considered and it has to be seen whether the mark of the defendant is deceptively similar to that of the plaintiff. Deceptive similarity means that the mark is likely to deceive or cause confusion in relation to CS (COMM)/436/2019 Page 18 of 23 -19- goods in respect of which the plaintiff got its mark registered. For the purpose of this comparison, the two marks have to be compared, not by placing them side by side, but by asking the question whether having due regard to relevant surrounding circumstances, defendant's mark is similar to that of the plaintiffs, as would be remembered by persons possessed of an average memory with its usual imperfections. On the touchstone of this query, it is to be determined whether the mark of the defendant is likely to deceive or cause confusion. The sequetur to the aforesaid preposition of law, is that, in an action of infringement, for the success by the plaintiff, he need not prove that the whole of his registered trademarks has been copied, but he can also succeed, if, he shows that the mark used by the defendant is similar to the mark of the plaintiff, as it would be numbered by persons possessed of an average memory with its usual imperfection or with its usual imperfection or that its essential particulars or the distinguishing or essential feature has been copied (ILR 197 (II) Delhi 225 Jagan Nath Prem Nath v. Bhartiya Dhoop Karvalaya Para-7).
40. In view of above legal position, lets examine the facts of the case in hand. The averments made in the plaint are duly supported by the documents proved during the course of evidence. PW-1 has deposed on identical lines of the averments made in the plaint and has proved various documents, as already referred to above.
41. In the case titled as "Amrish Agarwal v. M/s Venus Home Appliances Pvt. Ltd." in CM (M) 1059/2018 dated 27-08-2019, passed by Hon'ble Delhi High Court, it was inter alia directed that in trademark infringement matters, the following documents ought to be necessarily filed alongwith the plaint. The relevant Para no.7 of this judgment is reproduced hereunder:
"7. It is directed that in trademarks infringement matters the following documents ought to be necessarily filed along with the plaint:CS (COMM)/436/2019 Page 19 of 23 -20-
(i) Legal Proceedings Certificate (LPC) of the trademarks showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licenses granted, renewals etc.,
(ii) If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trademarks registration certificate, copy of the trademarks journal along with the latest status report from the website of the Trademarks Registry. This should be accompanied by an averment in the pleadings that LPC is applied for.
Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licenses and assignments ought to be pleaded.
(iii) xxxx
(iv) In the case of (ii), the party ought to file the LPC prior to the commencement of the trial, if any aspect of the trademarks registration is being disputed by the opposite side"
42. In this case, the plaintiff has relied upon and has filed copy of Trade Mark Registration Certificates and status reports thereof, which are duly proved by PW-1 as Ex.PW1/5 (Colly.). As per the these documents, it is duly shown, inter alia, that "GOLDIEE" and its label are duly registered as word mark and device mark in various classes including Class 30 in favour of the plaintiff and/or its predecessors, since long. Further, during the course of final arguments, counsel of plaintiff stated at Bar that the registration of said trademarks/ word marks/ device marks stand renewed and same are valid till date.
43. As far as the fact that the defendant had applied for registration of the impugned trademark is concerned, the same already stands withdrawn/ cancelled as already stated by the defendant in written statement as well as in his statement made before the Court at the stage of hearing on CS (COMM)/436/2019 Page 20 of 23 -21- injunction application, vide application dated 18-08-2019. Further at the stage of final hearing, Ld. Counsel of plaintiff has also filed status of trademark application no.3179346 made by defendant, which also shows that same is abandoned. In any case, the act of defendant in filing trademark application no.3179346 applying for registration of mark 'Golden Goldy', would go to show that he had actually been using the said impugned mark and thus, it fortifies the case putforth by the plaintiff herein. Furthermore, eventually, the defendant stopped appearing in this case and consequently, was proceeded against ex parte. Even, he did not turn up to cross-examine PW-1. Therefore, the entire testimony of PW-1 has gone unrebutted, uncontroverted and unchallenged. In other words, the whole defence raised by the defendant in the written statement to the original plaint, remained unsubstantiated during the course of trial. For all these reasons, the Court is of the view that the case of the plaintiff stood proved against the defendant on the basis of preponderance of probability. It is duly established on record that GOLDIEE is duly registered in favour of the plaintiff as word mark/ device mark, etc.
44. In the totality of the facts and circumstances of the case, the Court is of the view that the plaintiff has succeeded in proving that the defendant was stocking, distributing and selling goods bearing falsified trademark /trade name/ labels of the plaintiff company and therefore, trademarks and copyright of plaintiff company are required to be CS (COMM)/436/2019 Page 21 of 23 -22- protected. Accordingly, the plaintiff is held entitled to decree of permanent injunction whereby the defendant is required to be restrained from using trademark 'Golden Goldy' or any other word mark/device mark/label which may be identical with and/ or deceptively similar to the plaintiff's said word marks/device marks/labels GOLDIEE in relation to impugned goods and business, thereby infringing plaintiff's registered trademarks, copyright and passing off his products as that of the plaintiff.
DELIVERY UP:
45. As already discussed, as per report of Ld. Local Commissioner, no infringed goods, material, pamphlet or anything incriminating material were found at the given premises of defendant. Thus, nothing was seized from the premises of the defendant. Therefore, no direction is required to be given in this regard.
RELIEF:
46. In the light of the aforesaid discussion, the Court is of the view that the plaintiff has been able to prove its case on the basis of preponderance of probability. Thus, the suit is decreed in favour of the plaintiff and against the defendant and the following reliefs are granted:-
(i) Suit is decreed in favour of plaintiff and against the defendant qua permanent injunction thereby restraining the defendant by himself, as also through its individual proprietors/ partners, agents, CS (COMM)/436/2019 Page 22 of 23 -23- representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on their behalf from manufacturing, marketing, using, selling, soliciting, importing, exporting, displaying, distributing, advertising or in any manner dealing in or soliciting or selling/ soliciting through online platforms or online websites or using the impugned trademarks/ labels 'Golden Goldy' or any other word mark/ device marks/ label which may be identical with and/ or deceptively similar to the plaintiff's said trade marks / label GOLDIEE, thereby infringing plaintiff's registered trademarks, copyright and passing off their products as that of the plaintiff.
(ii) Cost of the suit is also awarded in favour of the plaintiff.
47. Decree sheet be prepared accordingly.
48. File be consigned to Record Room, after due compliance.
Digitally signedAnnounced in the open court by VIDYA
on 31st Day of July, 2024. VIDYA PRAKASH
PRAKASH Date: 2024.07.31
14:35:17 +0530
(VIDYA PRAKASH)
DISTRICT JUDGE (COMMERCIAL COURT)-02
PATIALA HOUSE COURTS, NEW DELHI
CS (COMM)/436/2019 Page 23 of 23