Delhi District Court
Rspl Health Pvt Ltd vs Arun And Company And Ors on 8 January, 2025
-1-
IN THE COURT OF SH. VIDYA PRAKASH
DISTRICT JUDGE (COMMERCIAL COURT)-02
NEW DELHI DISTRICT, PATIALA HOUSE COURTS
NEW DELHI
CNR NO.: DLND010121142018
CS (COMM.)/437/2019
[OLD NO.:- TM NO.148/2018]
IN THE MATTER OF:
M/S RSPL LIMITED
Regd. Office : 119-121(PART)
BLOACK P & T, FAZALGANJ
KALPI ROAD, KANPUR -208012
UTTAR PRADESH
... PLAINTIFF
VERSUS
1. M/s Arun & Company
53, Manu Vihar Road
No.9-F2, V.K.I. Area
Jaipur, Rajasthan
2. M S Industries
53, Manu Vihar Road
No.9-F2, V.K.I. Area
Jaipur, Rajasthan
3. Grahlaxmi Detergents
B-64, Transport Nagar
Agra Road
Jaipur, Rajasthan
... DEFENDANTS
Date of Institution : 10-10-2018
Date of reserving Judgment : 08-01-2025
Date of pronouncing Judgment : 08-01-2025
JUDGMENT
1. Vide this judgment, I shall decide the present suit under S. 134 & 135 read with S. 27(2) of the Trademarks Act, CS (COMM.)/437/2019 Page 1 of 32 -2- 1999 and Sec. 51 of the Copyright Act, 1957 for permanent injunction restraining infringement of trade mark and copy right, passing off, delivery up and rendition of accounts etc., filed by plaintiff against the defendants.
2. At the outset, it must be mentioned that initially, the present suit was filed as a non-commercial suit before the Court of Ld. Additional District Judge, Patiala House Courts, New Delhi. During the course of trial, the case was received by this Court by way of transfer, on 25-07-2022 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 as under:-
3.1 The plaintiff, which is claimed to be a company duly registered under the Indian Companies Act, 1956, got instituted the present suit through Sh. Manoj Singh, AGM-Legal, who has been duly authorized by the plaintiff company to institute, sign, verify and pursue the present suit, by virtue of Board Resolution dated 15-12-2014. Further, the plaintiff company is part of the RSPL Group of Companies.CS (COMM.)/437/2019 Page 2 of 32 -3-
3.2 It is averred that the plaintiff through its predecessors, originally conceived, coined and adopted the trade mark XPERT in the year 1993 and since then, has been using the same as word mark and in artistic label form in respect of washing soaps, washing powder, detergent cakes, toiletries, bleaching preparations and substances for laundry use, cleaning, polishing, scouring abrasive preparations, etc. and allied and cognate goods (hereinafter referred to as the 'said goods').
3.3 It is further averred that the plaintiff no.1 acquired the said trade mark/label with goodwill from its predecessors and details thereof have been given in Para no. 4 of the amended plaint. Therefore, it is stated that the plaintiff conceived and adopted the trademark XPERT (word per se, with different prefix and/or suffixes as well as in artistic label form), trade mark / label / trade dress/ colour-
combination [hereinafter referred to as the 'said trade mark/ label/ trade dress/ colour combination']. It is also stated that the plaintiff also adopted punch lines " Bartano ko kare chutki mein chakachak" [hereinafter referred to as the 'said punch line']. Thus, the plaintiff has claimed itself to be owner and proprietor of said trade mark/ label and punch line and stated that said trade marks/ label have been registered under CS (COMM.)/437/2019 Page 3 of 32 -4- various classes under the provisions of Trade Mark Act, 1999, which are stated to valid and subsisting as on date in favour of the plaintiff and details thereof have been provided in Para No. 8 of the amended plaint.
3.4 It is also claimed that the artistic work involved in the plaintiff' said trade mark/ labels/ artistic work/ trade dress is an original artwork within the meaning of the Copyright Act, 1957 and the plaintiff is the owner and proprietor thereof. Plaintiff has also claimed that the copyrights in the said trade mark/label are also duly registered in its favour under numbers A-67662/2004 and A-108898 of 2014 under the provision of the Copy Right Act, 1957. Further, it is also averred that the plaintiff is also the author of the said punch lines, which are also original in character and the plaintiff is the owner and proprietor of the artistic and literary work thereof. It is averred that the plaintiff has been commercially using and reproducing all its aforesaid Copyrights in the course of its trade and business.
3.5 It is claimed that since its adoption through its predecessors, the plaintiff has been continuously, commercially, openly, exclusively and to the exclusion of others, uninterruptedly and in the course of trade and as proprietor thereof, using its said Trade Mark/Label as Trade Mark in relation to its said goods and business and is carrying on its CS (COMM.)/437/2019 Page 4 of 32 -5- said goods and business thereunder and has built up a valuable trade, goodwill and reputation thereunder and has acquired proprietary rights therein.
3.6 It is further averred that the plaintiff maintains the highest standards of manufacture and trade of said goods and business. The plaintiff's said goods are manufactured and traded under strict quality specifications of a very high order, which are scrupulously maintained. The plaintiff has also been constantly upgrading its facilities in the light of technological advancements. It is further claimed that the plaintiff's said goods and business under the said trade mark/ label/ packaging/trade dress is global in character and the plaintiff carries on its said goods and business thereunder in many countries of the world besides India, where the plaintiff's said products under the said trade mark/label/packaging/trade dress are commercially available on large scale in every nook and corner.
3.7 It is also claimed that the plaintiff has been continuously promoting the said business & goods under the said trademark/label and said punch lines through different means and modes including visual, audio and print media viz: through advertisement in national newspapers, magazines, and various prominent national TV channels etc. and the plaintiff has already spent enormous amounts of money on its publicity thereof. It is also averred that CS (COMM.)/437/2019 Page 5 of 32 -6- the plaintiff entered into an agreement with famous and eminent star/ actress Madhuri Dixit and Priyanka Chopra for promotion and avertisement of the plaintiff's said well-known trade mark/ label and for brand promotion.
3.8 It is also claimed that the said trademarks/ labels/ trade dress and the copyrights therein, have already become distinctive indicium of the plaintiff and its said goods and business thereunder and the purchasing public, traders and public at large associates, identifies and distinguishes the said trade marks with the plaintiff and the plaintiff' said goods and business alone. Further, it is claimed that said trade marks/ label have become well-known trademarks within the meaning of Section 2 (1) (zg) and Section 11 of the Indian Trade Marks Act, 1999.
3.9 Hence, it is stated that on account of its good quality and standards of manufacturing and untiring efforts in advertising and marketing, the goods of the plaintiff under the said trade mark/ label/ trade name/ trade dress/ copyrights, have acquired enviable reputation and goodwill in business community and public in general and in view of the plaintiff' proprietary rights both under statutory and common law in its said trademarks/ label/ trade dress /colour combination, and their goodwill & reputation, the plaintiff has the exclusive right to the use thereof and nobody can be permitted to use the CS (COMM.)/437/2019 Page 6 of 32 -7- same or any other deceptively similar trade mark/ label/ trade name/ trade dress in any manner whatsoever in relation to any specification of goods without the leave and license of the plaintiff.
3.10 It is alleged that the defendants, who are allegedly acting in collusion and connivance with each other, are engaged in the goods and business of manufacturing, marketing, sale and trade of dishwash bar, dishwash cake, detergent cake, detergent powder, washing powder, liquid soap and all kinds of cleaning preparations and allied and cognate products (hereinafter referred to as the 'impugned goods and business').
3.11 Further, it is alleged that the defendants are commercially and in the course of trade using the label/ trade dress/ colour-combination [hereinafter referred to as the 'said impugned trade mark/ label/ trade dress/ colour combination'] in relation to impugned goods and business.
3.12 It is further alleged that the plaintiff became aware of the impugned adoption and alleged use of the impugned trade mark/ label / trade dress in the last week of August, 2018, when it came across the impugned goods of the defendant in the market.
CS (COMM.)/437/2019 Page 7 of 32 -8-3.13 On enquiry, it was revealed that the defendant is carrying on its impugned activities in clandestine and surreptitious manner from his premises and that too without issuing formal sale bill. The defendant is not only making the retail sales but is also supplying the impugned goods bearing the impugned trade marks/ label/ trade dress to various other dealers/shopkeepers/retailers in New Delhi, who is making the clandestine and surreptitious sales thereof to the ultimate unwary consumers in New Delhi viz. Connaught Place, Vasant Kunj, Naraina, Gole Market etc. 3.14 It is further averred that apart from selling their goods through offline, the defendants have also been soliciting, dealing, networking the impugned goods under the impugned label/trade-dress/colour-combination through their website www.grahlaxmidetergents.com.
3.15 Hence, it is alleged that the defendants have dishonestly and malafidely adopted impugned Trade Mark/ Label/ trade-dress/colour-scheme which is identical and /or deceptively and confusingly similar to plaintiff's CS (COMM.)/437/2019 Page 8 of 32 -9- trade mark/ label/ trade dress / colour combination , thereby causing confusion and deception amongst the unwary purchasing public and traders by making them believe that the origin of those goods is that of the plaintiff. It has been averred that by doing so, the defendants are not only damaging the reputation and goodwill of the plaintiff by passing off their substandard products as that of the plaintiff but are also causing financial loss to the plaintiff by reaping unfair advantage of the repute and distinctive character of the said trademark/ label/ trade dress of the plaintiff.
4. On these grounds, the plaintiff has filed the present suit against the defendants praying therein, inter alia, that decree of permanent injunction may be passed restraining the defendants and all others acting for and on their behalf from using the impugned Trade Mark/ Label/ trade-dress/colour-scheme or any other trade mark/ label/ trade dress/ colour scheme which may be identical and /or deceptively and confusingly similar to plaintiff's trade mark/ label/ trade dress/ colour combination in relation to similar goods, thereby infringing plaintiff's registered trademarks, CS (COMM.)/437/2019 Page 9 of 32 -10- copyright and passing off their products as that of the plaintiff.
5. The suit was accompanied with applications - one under Order XXXIX Rules 1 & 2 CPC and another under Order XXVI Rule 9 CPC seeking ex parte ad interim injunction and ex parte order for appointment of local commissioner to visit and search the premises of the defendant. After hearing counsel of the plaintiff, the said applications were allowed, vide common order dated 15-10-2018 passed by Ld. Predecessor of this Court, thereby granting 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 as mentioned therein.
6. In pursuant to the said order, Ld. Local Commissioner had executed the commission and filed her detailed report on record, according to which, impugned goods bearing impugned trade mark/ label/ trade dress were found from the premises of defendants and after preparing inventory thereof, same were handed over to the defendants on superdarinama in terms of relevant order. Further, it is also reported that owner of the premises of the defendants are same.
7. After being served with the summons of the suit and notice of accompanying applications, the defendants put their appearance through counsel. It may be noted that despite taking number of adjournments to settle the dispute, the matter could not be settled between the parties. Further, on CS (COMM.)/437/2019 Page 10 of 32 -11- account of outbreak of Covid-19, the matter got adjourned en bloc in view of direction of Hon'ble Delhi High Court and the then Ld. Principal District & Sessions Judge, New Delhi District, Patiala House Courts, New Delhi and subsequently, was taken up through virtual/ hybrid mode.
8. At this juncture, it may also be noted that the present case was received by this Court on 25-7-2022, 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 not objected to by the opposite side and consequently, same was allowed vide order dated 07-12-2022, passed by Ld. Predecessor of this Court thereby directing the defendants to file written statement to amended plaint within 30 days from the date of said order. However, despite availing number of opportunities, the defendants failed to file written statement to the amended plaint and consequently, their right to file written statement was closed vide order dated 09-10-2023, passed by Ld. Predecessor of this Court.
9. In view of above, the position as emerges on record is that no written statement either to the original plaint or even to the amended plaint, is filed by either of the defendants.
CS (COMM.)/437/2019 Page 11 of 32 -12-10. Further, the interim order dated 15-10-2018 was made absolute till the pendency of the suit by disposing off application under Order XXXIX Rules 1 & 2 CPC moved by plaintiff seeking ad interim injunction, vide order dated 09-10-2023, passed by Ld. Predecessor of this Court.
11. Since none was appearing on behalf of defendants for the last so many dates, the defendants were proceeded against as ex parte, vide order dated 22-7-2024, passed by this Court.
12. In support of its case, the plaintiff company has examined only one witness i.e. its AR namely Sh. Manoj 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 has relied on the following documents:-
Srl. Document/Particulars Exhibit(s) No
1. True representation of Trade Ex. PW1/1 Mark/Label/Trade Dress of the (Colly) plaintiff.
2. Photographs/representation of the Ex. PW1/2 impugned trademark/label of the defendants and Screenshot of impugned Trademark/Label of the defendants from the defendant's website.
3. Copies of the documents Ex. PW1/3 pertaining to registered mark of CS (COMM.)/437/2019 Page 12 of 32 -13- Srl. Document/Particulars Exhibit(s) No the plaintiff under no. 1077473 in Class 03.
4. Copies of the documents Ex. PW1/4 pertaining to registered trademark of the plaintiff under no. 1205486 in Class 03.
5. Copies of the documents Ex. PW1/5 pertaining to registered trademark of the plaintiff under no. 1390217 in Class 03.
6. Copies of the documents Ex. PW1/6 pertaining to registered trademark of the plaintiff under no. 1270731 in Class 03.
7. Copies of the documents Ex. PW1/7 pertaining to pending trademark applications of the plaintiff.
8. Copy of plaintiff's copyright Ex. PW1/8 registration certificate under no. (OSR) A-67662/2004.
9. Copies of the recordial request on Ex. PW1/9 form TM-23.
10. Copy of deed of assignment dated Ex. PW1/10 15.07.2013. (OSR) CS (COMM.)/437/2019 Page 13 of 32 -14- Srl. Document/Particulars Exhibit(s) No
11. Copy of certificate of Ex. PW 1/11 incorporation of the plaintiff (OSR) company and the copies of the documents pertaining to chain of the plaintiff and its predecessor.
12. Copies of auditor report of the Ex. PW1/12 plaintiff company.
13. Copies of the bills/documents of Ex. PW 1/13 the plaintiff. (Colly)
14. Copies of the bills pertaining to Ex. PW 1/14 advertisement of the plaintiff.
15. Copies of the advertisement Ex. PW 1/15 materials of the plaintiff.
16. Copy of Resolution. Ex. PW 1/16 (OSR)
17. Affidavit under Order XI Rule 6 Ex. PW 1/17 (3) CPC for electronic record documents.
13. The ex parte evidence of the plaintiff was closed on 12-09-2024. After the closure of PE, final arguments were heard.
14. It may be noted here that during the course of final arguments, Ld. Counsel of plaintiff made statement to CS (COMM.)/437/2019 Page 14 of 32 -15- give up prayers/reliefs as prayed in Prayer Clause Nos. 38(b) and 38(d) of the amended plaint regarding restraining the defendants from disposing off or dealing with his assets and rendition of accounts of profits respectively. Accordingly, the plaintiff was permitted to give up the said reliefs, vide order dated 13-12-2024. In view thereof, the suit survives only with respect to reliefs of permanent injunction whereby the plaintiff has sought permanent injunction against the defendants from using the impugned trademark, as also for delivery up.
15. I have 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
16. In support of his case, Ld. Counsel of plaintiff has advanced the following arguments :-
16.1 The entire testimony of PW-1 has remained unchallenged and un-rebutted from the side of defendants and therefore, the plaintiff company is entitled to the decree, as prayed for, and in that regard, has relied upon the documents duly proved by PW1 as Ex.PW1/1 (Colly.) to Ex.PW1/17.
16.2 The trademark/label XPERT is well known trademark of plaintiff and registered in India under various classes of the Trademark Rules 2002, CS (COMM.)/437/2019 Page 15 of 32 -16- which are valid and subsisting in favour of the plaintiff company till date.
16.3 The art works involved in the trademark/ label/ trade dress is original artistic works and the plaintiff holds copyright therein.
16.4 The plaintiff spends huge amount of money in advertising and promotion of its products and said mark enjoys a huge goodwill and reputation in business community and public in general in India and across the world.
16.5 Ld. Local Commissioner, while executing the commission in terms of the orders passed by this Court, had found certain infringed goods from the premises of the defendants, which establishes that the defendants were involved in the illegal activities, for which he has relied upon the report filed by Ld. Local Commissioner.
16.6 Local Commissioner's Report can be read in evidence in terms of Order XXVI Rule 10(2) CPC and for this purpose, he also relied upon judgment of our own Hon'ble High Court in case titled as " M L Brother LLP v. Mahesh Kumar Bhrualal Tanna" [CS (COMM) 126/2022, decided on 12th May, 2022].
16.7 The defendants have malafidely and dishonestly adopted and using the impugned trade mark/ word CS (COMM.)/437/2019 Page 16 of 32 -17- mark which is identical and /or deceptively similar to trade mark/label/ trade dress/ colour combination XPERT / in all material particulars such as layout design, colour scheme, get up, arrangement of artistic features, lettering style, etc. and hence, the use of impugned trademark /label/ trade dress/ colour scheme in similar goods as adopted by the defendants, is identical and/or confusingly or deceptively similar to the registered trademark of the plaintiff i.e. XPERT 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 defendants, thereby restraining the defendants and all others acting for and on their behalf from using said impugned trade-mark/ label.
17. In support of his contentions, Ld. Counsel of plaintiff has also relied upon judgment of our own Hon'ble High Court passed in case titled as "RSPL Health Private Limited v. M/s Deep Industry" bearing I.A. 10669/2014 and I.A. No.:12699/2014 in CS(OS) No. 1660/2014, decided on 10-11-2014, wherein impugned trade mark/ label/ trade dress CS (COMM.)/437/2019 Page 17 of 32 -18- of defendant POSH was held to be deceptively similar to trade mark / label/ trade dress of plaintiff XPERT except the brand name, and hence, the defendant was injuncted from using the said impugned trade mark/ trade dress POSH.
ANALYSIS & CONCLUSION:
18. I have considered the submissions made on behalf of the plaintiff. I have also duly considered the relevant material available on records.
JURISDICTION:
19. Firstly, as regards jurisdiction of this Court, it is submitted by Ld. Counsel of plaintiff that the defendants have been making clandestine and surreptitious sales, offering for sale, manufacturing, marketing, and is also supplying, purveying, displaying, and soliciting, have intention to sell/ solicit, their impugned goods and business under the impugned trade mark/ label/ trade dress/ colour scheme in New Delhi area. Thus, the defendants are also committing the impugned acts of infringement and passing off in the markets of New Delhi viz. Connaught Place, Gole Market, Vasant Kunj, Bengali Market, Naraina, Mandir Marg etc. through various dealers and distributors within the jurisdiction of this Court. It is further contended that the plaintiff's proprietary rights are being prejudicially affected or are likely to be so affected in New Delhi due to the defendants' impugned activities as they have all the intention to use/ sell/ solicit the impugned goods under the impugned trade mark/ label/ trade dress/ colour combination in the market of New Delhi. Apart from CS (COMM.)/437/2019 Page 18 of 32 -19- above, it is also contended that impugned goods of the defendants are not only available in New Delhi through offline markets but are also been solicited/ networked through their websites www.grahlaxmidetergents.com which is stated to be interactive in nature and thus, accessible through any place including the area within the territorial jurisdiction of this Court, and, therefore, it is stated that whole or part cause of action has arisen within the territorial jurisdiction of this Court within the meaning of S. 20 CPC and thus, this Court has territorial jurisdiction to try and entertain the present suit.
20. Further, it is contended that the plaintiff is also carrying out its said business under the said trademark/label through its dealers/distributors within the territorial jurisdiction of this Court. The goods of the plaintiff are also sold, purchased, available and delivered through its website www.ghadidetergent.com and also through online marketplaces like Amazon and Big Basket etc. which are interactive in nature and freely accessible within the 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.
21. The PW1 has categorically deposed in his affidavit in evidence on the identical lines of the averments made in the plaint.CS (COMM.)/437/2019 Page 19 of 32 -20-
22. The PW1 has categorically deposed in his affidavit in evidence on the identical lines of the averments made in the plaint, inter alia that the goods of the plaintiff are also sold, purchased, available and delivered through its website www.ghadidetergent.com and also through online marketplaces like Amazon and Big Basket, which are interactive in nature and freely accessible within the jurisdiction of this Court. PW1 has also proved photographs/ representation of impugned trade mark/ label of the defendants and screenshot of impugned trade mark/ label of the defendants from the defendants' website as Ex.PW1/2.
23. The whole testimony of PW1 remained unchallenged and uncontroverted as the defendants have neither filed written statement, nor have chosen to cross-examine PW1.
24. Therefore, in view of the law as laid down by Hon'ble Delhi High Court in cases titled as "Banyan Holding (P) Ltd. v. A Murali Krishna Reddy & Anr." reported as 2009 SCC OnLine Del 3780 ; "World Wrestling Entertainment, Inc. v. Reshma Collection & Ors." reported as 2014 (60) PTC 452 (Del.) (DB); and "Burger King v. Tekchand", reported as 2018 (76) PTC 90 (Del.), the Court is of the considered opinion that the plaintiff has been able to satisfy the test of purposeful availment its goods under the registered trade mark/ label within the territorial jurisdiction of this Court, as stipulated in the said judgments delivered by Hon'ble Delhi High Court.CS (COMM.)/437/2019 Page 20 of 32 -21-
25. In view of the foregoing reasons and in the totality of the facts and circumstances of the case and in view of the above cited judgments and keeping in view the fact that evidence of PW1 remained unchallenged and uncontroverted, the Court is of the considered opinion that at least part of cause of action has arisen within the territorial jurisdiction of this Court and therefore, this Court has got territorial jurisdiction to try and entertain the suit.
PERMANENT INJUNCTION:
26. At the outset, it may be mentioned that during the course of arguments, Ld. Counsel of plaintiff, in all fairness, has conceded that this case pertain to trade dress and plaintiff has no objection in use of the word mark 'Grah Sobha Plus' by the defendants in different colour combination except darkish pink.
27. 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 trade mark, to quote:-
43. The legislative scheme is clear that when the mark of the Defendant is identical with the registered trade mark of the plaintiff and the goods or services covered are similar to the ones covered by such registered trade mark, 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 trade mark. Similarly, when the trade mark of the plaintiff is similar to the registered trade mark of the Defendant and the goods or services covered by such registered trade mark are identical or similar to the goods or services covered by such registered trade mark, it may again be necessary to establish that it is CS (COMM.)/437/2019 Page 21 of 32 -22- likely to cause confusion on the part of the public However, when the trade mark of the Defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the Defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that 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 trade mark. 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 trade mark for the vindication of the exclusive rights to the use of the trade mark 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 trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or 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 trade mark, 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 trade mark. 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 trade mark is CS (COMM.)/437/2019 Page 22 of 32 -23- identical with the Plaintiff's trade mark, the Court will not enquire whether the infringement in such as is likely to deceive or cause confusion.
28. Further, 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) has laid down the principle as to how infringement of trade mark is to be seen, to quote:-
12.It is well settled that in an action for alleged infringement of a registered trade mark, if the impugned marked used by the defendant is identical with the registered trade mark of the plaintiffs, 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 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 trade mark 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).
29. In view of above law, 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.CS (COMM.)/437/2019 Page 23 of 32 -24-
PW-1 has deposed on identical lines of the averments made in the plaint and has proved various documents, as already referred to above.
30. In the case titled as "Amrish Agarwal Vs 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 directed, inter alia, that in trademark infringement matters, the following documents ought to be necessarily filed along with the plaint. The relevant Para no.7 of this judgment is reproduced hereunder:
"7. It is directed that in trade mark infringement matters the following documents ought to be necessarily filed along with the plaint:
(i) Legal Proceedings Certificate (LPC) of the trade mark 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 trade mark registration certificate, copy of the trade mark journal along with the latest status report from the website of the Trade Mark 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 trade mark registration is being disputed by the opposite side"
31. In this case, the plaintiff has relied upon and has filed copies of documents pertaining to registered trade mark of the plaintiff, which are copy of Certificates of Registration and /or LPC of Trade Marks/labels and status thereof, CS (COMM.)/437/2019 Page 24 of 32 -25- which are duly proved by PW-1 as Ex.PW1/3, Ex.PW1/4, Ex.PW1/5, Ex.PW1/6 and Ex.PW1/7 respectively. Further, PW-1 has also proved copy of documents pertaining to copyright registration, and copies of recordial request in form TM-23 and Copy of Deed of Assignment dated 15.07.2013 as Ex.PW1/8, Ex.PW1/9 and Ex.PW1/10 respectively. Further, during the course of final arguments, counsel of plaintiff has stated that the registration of said trade marks/ label/ device mark stands renewed and is valid till date. According to above-mentioned documents, it is duly shown that GHADI XPERT (label), X-PERT DISHWASH BAR (device), XPERT with label etc. are registered as device mark/ label in favour of plaintiff and/or its predecessors.
32. As already noted above, despite grant of sufficient opportunities, the defendants failed to file written statement either to the original plaint or to the amended plaint. Moreover, none has appeared on behalf of defendants to cross-examine PW1. Therefore, the entire testimony of PW-1 has gone un-rebutted, uncontroverted and unchallenged and thus, the case of the plaintiff stood proved against the defendants on the basis of preponderance of probability. It is duly established on record that the trademark/label XPERT is duly registered in favour of the plaintiff and also that same is valid and subsisting as on date in favour of the plaintiff.
33. Further, as already noted above, the Local Commissioner had also found infringed goods bearing impugned CS (COMM.)/437/2019 Page 25 of 32 -26- trademarks / label / trade dress from the premises of the defendants at the time of execution of commission. Local Commissioner's Report as available on record,would reveal that at the premises of defendant no.3 i.e. Grah Laxmi Detergents, Sh. Som Dev Goel, who was stated to be younger brother of owner of the said premises, was found present. In his presence, the said premises was search and infringed goods bearing impugned trade mark/ label/ trade dress were found and inventory thereof was prepared, according to which, 17 pcs of 230 grams + 20 grams, 4 pcs of 200 grams + 25 grams, 3 pieces of 450 grams + 50 grams were seized and were handed over to said Mr. Som Dev Goel on Superdari in terms of relevant order. Thereafter, Ld. Local Commissioner also executed the commission at the premises i.e. A-53, Manu Vihar, Road No.9-F2, VKI Area, Jaipur, Rajaasthan, which is the address of defendant nos. 1 and 2. She was accompanied with Mr. Som Dev Goel. In his presence, the said premises was also searched and infringed goods bearing impugned trade mark/ label/ trade dress were found and inventory thereof was prepared, according to which, packing material 1000 pcs were seized and were handed over to said Mr. Som Dev Goel on Superdari in terms of relevant order. Ld. Local Commissioner also reported that the owner of both the aforesaid premises were same and in this premises, the defendants wwere running a factory.
34. Thus, it is shown that the premises were searched in the presence of the defendants' younger brother and infringed CS (COMM.)/437/2019 Page 26 of 32 -27- goods bearing impugned trade mark/ label/ trade dress were seized from the premises of the defendants.
35. Since, the commission was executed in the presence of the defendants, it cannot be believed that they were not having any knowledge of proceedings going on before this Court and the orders passed therein. Moreover, they initially appeared before the Court, however, failed to file written statement either to the plaint or to the amended plaint, as already noted above. Subsequently, they stopped appearing and consequently, they were proceeded against ex parte and thus, the report of Ld. Local Commissioner also remained uncontroverted and unchallenged.
36. In totality of the facts and circumstances of the case, the Court is of the view that the plaintiff has succeeded in proving that the defendants were manufacturing, stocking, distributing and selling goods bearing falsified trademark /trade name/ trade dress / colour combination which are deceptively and confusingly similar to the plaintiff's registered trade marks / label/ trade dress/ colour combination and therefore, trademark and copyright of plaintiff company is required to be protected. Accordingly, the plaintiff is held entitled to decree of permanent injunction whereby the defendants are liable be restrained from using trade mark/ label / trade dress/colour CS (COMM.)/437/2019 Page 27 of 32 -28- scheme or any other trade marks/ label / trade dress/ colour scheme which may be identical with and/ or deceptively similar to the plaintiff's said trade mark /label/ trade dress/ colour scheme in relation to similar goods, thereby infringing plaintiff's registered trademark, copyright and passing off their products as that of the plaintiff. However, since admittedly there is no similarity between the word mark 'Grah Sobha Plus' as used by the defendants and word mark 'Xpert' as used by the plaintiff, therefore, no injunction is being granted thereby restraining the defendants from using the word mark 'Grah Sobha Plus'.
DELIVERY UP:
37. As already discussed, infringed goods bearing falsified trademark/label/ trade dress/ colour scheme of plaintiff company were seized by the Local Commissioner and were returned to the defendants on superdari. Therefore, the defendants are directed to delivery up all above seized infringed goods, besides all other impugned finished and unfinished materials bearing the impugned and violative trade mark/ label / trade dress / colour combination to the plaintiff company for the purpose of destruction and erasure.
CS (COMM.)/437/2019 Page 28 of 32 -29-DAMAGES:
38. Ld. Counsel of plaintiff submitted that punitive damages may be awarded in favour of the plaintiff and against the defendants. In support of his submissions, Ld. Counsel of the plaintiff has relied upon judgment of Hon'ble Delhi High Court in case of 'LT Foods Limited v. Saraswati Trading Company' decided on 11-11-2022 having neutral citation: 2022/DHC/004806.
39. However on bare perusal of the plaint, it reveals that no such relief is sought in the plaint. On similar facts, in case titled as Super Cassettes Industries Pvt. Ltd. v. HRTN Cable Network, 2017 SCC Online Delhi 10943, wherein the defendants were ex parte and did not participate in the proceeding, counsel for the plaintiff had sought punitive damages, which was declined in view of the judgment of Hon'ble Division Bench of Delhi High Court in case titled 'Hindustan Unilever Limited v. Reckitt Benckiser India Limited', ILR (2014) II Delhi 1288.
40. However, as per law laid down by Hon'ble Division Bench in case of Hindustan Unilever Limited (supra), there is a need to see as to whether the case of plaintiff falls for exemplary damages.
41. As already noted above, the Local Commissioner, while executing the commission, found and seized infringed goods from premises of the defendants in their presence and handed over the same to them on superdari. It is evident from the said report that the defendants were CS (COMM.)/437/2019 Page 29 of 32 -30- manufacturing, stocking and selling/ passing off the infringed goods bearing impugned trade mark / label/ trade dress as that of the plaintiff' products, thereby causing wrongful loss to plaintiff company and would have earned illegal profit. Further, if the seized infringed goods would have gone to the hands of the consumer/ general public, the reputation/goodwill of the plaintiff company would have gone down in the eyes of consumer/ general public as infringed goods were of average quality and were not up to the quality which is claimed by the plaintiff company.
42. In the case in hand, the defendants did not show up and participate in the proceedings in order to deprive the plaintiff to the benefit of rendition of accounts. Accordingly, keeping in view the overall facts and circumstances of the case including the quantum of infringed goods bearing impugned trademarks / labels as found by Ld. Local Commissioner while executing the commission and the relevant averments appearing in Para No.34 of the amended plaint to the effect, the plaintiff came across impugned products of the defendants under the impugned Trade Mark/Label in the last week of August, 2018 in New Delhi Area, whereas, the present suit has been filed in the month of October, 2018, the Court is of the opinion that the plaintiff company is entitled to exemplary damages quantified as Rs.2,00,000/- (Rupees Two Lacs only) is to be recovered from defendants. It is so ordered accordingly.
CS (COMM.)/437/2019 Page 30 of 32 -31-RELIEF:
43. 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 defendants and the following reliefs are granted:-
43.1 Suit is decreed in favour of plaintiff and against the defendants qua permanent injunction thereby restraining the defendants by themselves as also through their individual proprietor/ partners, agents, representative, 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 trademark / trade name/ trade dress/ colour scheme or any other word mark/ mark/ trade mark/ label/ trade dress which may be identical with and/ or deceptively similar to the plaintiff's said trade mark / label in relation to similar goods, thereby infringing plaintiff's registered trademark, copyright and passing off their products as that of the plaintiff.CS (COMM.)/437/2019 Page 31 of 32 -32-
However, there is no injunction restraining the defendants from using the word mark 'Grah Sobha Plus' in different colour scheme / trade dress except darkish pink.
43.2 Suit is also decreed in favour of plaintiff and against the defendants qua delivery up of all seized semi finished and finished articles besides all other impugned finished and unfinished materials bearing the impugned and violative trade mark/ label of plaintiff company and superdarinama is hereby cancelled.
43.3 Plaintiff is entitled to recover Rs.2,00,000/- (Rupees Two Lacs only) from the defendants towards damages; and 43.4 Cost of the suit is also awarded in favour of the plaintiff.
44. Decree sheet be prepared accordingly.
45. File be consigned to Record Room, after due compliance.
Digitally signed by VIDYA VIDYA PRAKASH
Announced in the open court PRAKASH Date:
on 8th Day of January, 2025. 2025.01.08
16:22:28 +0530
(VIDYA PRAKASH)
DISTRICT JUDGE (COMMERCIAL COURT)-02
PATIALA HOUSE COURTS, NEW DELHI
CS (COMM.)/437/2019 Page 32 of 32