Delhi High Court
Bata India Limited vs M/S B.S.R. Stylish Walk on 11 September, 2017
Author: Manmohan
Bench: Manmohan
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 128/2017 & I.A. 6385/2015
BATA INDIA LIMITED ..... Plaintiff
Through: Mr.Neeraj Grover, Advocate
versus
M/S B.S.R. STYLISH WALK ..... Defendants
Through: None
% Date of Decision: 11th September, 2017
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
JUDGMENT
MANMOHAN, J (Oral):
1. Present suit has been filed for permanent injunction restraining infringement of trademark, copyright, passing off, unfair competition, delivery up and recovery of damages. The prayer clause in the suit is reproduced hereinbelow:-
"(a) a decree of permanent injunction restraining the defendant, its proprietor /partners, as the case may be, their servants/agents, representatives and/or others acting for and on their behalf from carrying on their business under the name and style of "BATA Showroom" or using the mark BATA and/or any other marks as may be identical and/or deceptively similar to the plaintiff's registered trade mark BATA on the hoarding and/or signage of its shop and/or on the invoices, packing bags CS(COMM) 128 /2017 Page 1 of 8 and/or visiting cards etc. amounting to infringement thereof in any manner whatsoever.
(b) a decree of permanent injunction restraining the defendant, its proprietor/partners, as the case may be, their servants/agents, representatives and/or others acting for and on their behalf from reproducing the artistic work of plaintiff's mark BATA written in red artistic fond in a white background on its signage and/or boards and from reproducing the artistic representation of the mark BATA on any packing bags, visiting cards, invoices amounting to infringement of the copyright of the plaintiff in respect thereof.
(c) a decree of permanent injunction restraining the defendant, its proprietor/partners, as the case may be, their servants/agents, representatives and/or others acting for and on their behalf from representing/carrying on their business in the name and style of "BATA Showroom"
and/or using the mark BATA and/or any other marks as may be identical and/or deceptively similar to the plaintiff trade mark/trade name BATA on the hoarding and/or signage of its shop and/or on the invoices, packing bags and/or visiting cards etc. amounting to passing off and/or unfair competition.
(d) an order of delivery up of all the infringing material bearing the trade mark BATA including hoarding, signage(s), boards, invoices, stationery, visiting cards and/or other publicity material bearing the impugned mark BATA etc. for the purposes of destruction/erasure.
(e) A decree in favour of the Plaintiff and against the Defendant, its partners/proprietors as the case may be for recovery of an amount of Rs.20,05,000/- as damages for committing the illegal activities of infringement of trade mark, passing off & unfair competition.
CS(COMM) 128 /2017 Page 2 of 8(f) For an order of costs of the proceedings including the counsel fee.
(g) Such further orders as this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case may also be passed in favour of the Plaintiff and against the Defendants."
2. At the outset, learned counsel for plaintiff gives up prayers (d) and (e) of the prayer clause to the suit. The statement made by learned counsel for plaintiff is accepted by this Court and plaintiff is held bound by the same.
3. Vide order dated 26th March, 2015 this Court granted an ex- parte ad interim injunction in favour of the plaintiff and against the defendant. This court further appointed a Local Commissioner to visit the premises of the defendant. The relevant portion of the ex-parte injunction order is reproduced hereinbelow:-
"Accordingly, till further orders, defendant, its proprietor/partners/directors, their servants/agents, stockiest(s), dealers, representatives and/or others acting for and on their behalf are restrained from carrying on business in the name and style of M/S. BATA SHOWROOM and using the mark BATA and/or any other marks as may be identical and/or deceptively similar to the plaintiff's mark BATA on the hoarding/signage of its shop and/or on the stationery and/or visiting cards and/or as firm's name etc. and are also restrained from reproducing the artistic work of the plaintiff's mark BATA written in red artistic font in a white background on its signage and/or or boards and from reproduce the artistic representation of the mark BATA in red colour on any stationery, visiting cards, invoices am amounting to infringement of copyright of the plaintiff in respect thereof and from representation their business and store as the CS(COMM) 128 /2017 Page 3 of 8 BATA exclusive retail outlet....."
4. The Local Commissioner seized a number of infringing items/products. Since the defendant did not appear despite service, it was proceeded ex-parte vide order dated 11th April, 2017.
5. In the plaint, it has been averred that the plaintiff was incorporated in India as the Bata Shoe Company Private Limited in the year 1931 and in the year 1973 it changed from Private Limited Company to a Public Limited Company, namely Bata Shoe Company Limited. It is contended that the plaintiff is the largest retailer and leading manufacturer of footwear in India and is a part of the Bata Shoe Organization. In addition to its large presence in India, Bata group operates across five continents managed by four regional business units; and globally Bata Group runs around 40 production facilities across 26 countries and manages a retail presence in over 120 countries.
6. Plaintiff has also acquired statutory registrations in the mark BATA in India in various classes including Class 25. Plaintiff has also extracted the sales figure of its products under its trade mark/ trade name BATA in the plaint. It has been further averred in the plaint that the plaintiff company practices a distinctive and unique selling policy wherein it primarily sells its products through its self owned and/ or exclusive retail outlets / showrooms which are established in all major cities and towns in India; and such exclusive retail outlets sell only BATA products and use exclusive stationery and sign boards of the plaintiff's registered trade mark/ trade name BATA as authorized by CS(COMM) 128 /2017 Page 4 of 8 the plaintiff in such a manner which clearly conveys an idea to the public that such stores are exclusively BATA outlets.
7. Learned counsel for the plaintiff states that the defendant is engaged in the sale of footwear under different third party brands including but not limited to merchandise of the plaintiff, but is neither the authorised distributor nor the whole seller on behalf of the plaintiff and the defendant was never appointed as a dealer and/or distributor and/or whole seller of the plaintiff.
8. Learned counsel for plaintiff further states that in order to pass off its business and store as those of the plaintiff company the defendant has adopted the name and style of BATA SHOWROOM as its firm name and trading style without any authorisation from the plaintiff. He also states that defendant is using the artistic work of the plaintiff's mark BATA written in red artistic font in a white background on its signage and/or boards, packing bags, visiting cards, invoices amounting to infringement of the plaintiff's copyright subsisting therein.
9. Learned counsel for plaintiff further states that the defendant subsequent to the ex parte injunction order changed its trading style to M/s B.S.R Stylish Walk from BATA SHOWROOM and vide order dated 16th March, 2016 this Court allowed the plaintiff's amendment application to bring the M/s B.S.R Stylish Walk on record.
10. The plaintiff has filed its ex-parte evidence by way of affidavit of Mr. Manoj Goswami (PW1). The plaintiff's witness has proved the registration certificates of the plaintiff's trademarks as Ex.PW1/5A to Ex.PW1/5E, Ex.PW1/5G to Ex.PW1/5W and Ex.PW1/5Z to CS(COMM) 128 /2017 Page 5 of 8 Ex.PW1/5AI. The PW1 has further proved the pictures of awards and accolades received by the plaintiff as Ex.PW1/7. The witness has also proved the plaintiff's mark BATA as well known mark as Ex.PW-1/8.
11. Having heard learned counsel for plaintiff as well as having perused the papers, this Court is of the view that due to extensive worldwide use over substantial period of time, the plaintiff's BATA mark and BATA logo have acquired reputation and goodwill in the marks globally as well as in India.
12. From the evidence on record, it is apparent that without any explicit permission or authorisation to use the plaintiff's trademark and trade name, the defendant had malafidely copied the trademark BATA of the plaintiff and was engaged in the sale of footwear under the name and style of BATA SHOWROOM (currently known as M/s B.S.R Stylish Walk). The relevant portion of the Local Commissioner's report dated 22nd July, 2015 is reproduced hereinbelow:-:-
"6. During the inspection, I found that the entire Invoice/billing system of the Defendant was working on bar code scanning system and most of the articles in the said premises carried Bar Code stickers with the name BATA Showroom written on it. I examined the computer system at the billing counter and upon due satisfaction that the billing in shop of the defendant was being generated by a software installed in the CPU of the computer, I shut down the same and caused the same to be sealed to preserve the evidence contained therein.
xxx xxx xxx
8. On further inspection of the said premises, it was CS(COMM) 128 /2017 Page 6 of 8 noticed that there was a flexi board inside the said premises which had the plaintiff's Trademark BATA printed on it. The said flexi board was removed and sealed.
9. That the undersigned also found that certain handbags in the said premises were kept on display with the tag "A product of Bata Showroom". The said infringing articles were sealed after putting the same in Carton Boxes. The defendant's carry bag with plaintiff's trademark printed on it was also found. All the said carry bags were also put in a carton and sealed.
10. That lastly it was also noticed that the main board at the entrance of the said premises carried the trademark of the Plaintiff. At the request of the representatives of the Defendant, only the Trademark of the plaintiff with the name BATA was removed from the main board and the space was covered with cloth. The removed material of the trademark was also placed inside a box and was sealed."
13. Further, as the plaintiff's evidence has gone unrebutted, said evidence is accepted as true and correct. The Supreme Court in Ramesh Chand Ardawatiya Vs. Anil Panjwani, AIR 2003 SC 2508 has held as under:-
"33. .........In the absence of denial of plaint averments the burden of proof on the plaintiff is not very heavy. A prima facie proof of the relevant facts constituting the cause of action would suffice and the court would grant the plaintiff such relief as to which he may in law be found entitled. In a case which has proceeded ex parte the court is not bound to frame issues under Order 14 and deliver the judgment on every issue as required by Order 20 Rule 5. Yet the trial court should scrutinize the available pleadings and documents, consider the CS(COMM) 128 /2017 Page 7 of 8 evidence adduced, and would do well to frame the "points for determination" and proceed to construct the ex parte judgment dealing with the points at issue one by one. Merely because the defendant is absent the court shall not admit evidence the admissibility whereof is excluded by law nor permit its decision being influenced by irrelevant or inadmissible evidence."
14. Consequently, the allegation that the trademark, logo and label BATA used by defendant amounts to infringement of plaintiff's trademark and copyright, is correct. The use of the impugned mark by the defendant was bound to cause incalculable losses, harm and injury to the plaintiff and immense public harm.
15. Accordingly, present suit is decreed in accordance with the paragraph 43(a), (b) and (c) of the plaint along with the actual costs incurred by the plaintiff. The cost shall amongst others include the lawyers' fees, local commissioner's fee as well as the amounts spent on purchasing the court fees. Registry is directed to prepare a decree sheet accordingly.
MANMOHAN, J SEPTEMBER 11, 2017 rs CS(COMM) 128 /2017 Page 8 of 8