Delhi High Court
M/S S. Oliver Bernd Freier Gmbh & Co. Kg vs M/S Jaikara Apparels & Anr on 22 April, 2014
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 22nd April, 2014.
+ CS(OS) 1712/2005
M/S S. OLIVER BERND FREIER GMBH
& CO. KG ......Plaintiff
Through: Mr. Pankaj Kumar, Adv.
Versus
M/S JAIKARA APPARELS & ANR ........ Defendant s
Through: None.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The plaintiff has instituted the present suit under Section 134 & 135
of the Trade Marks Act, 1999 for the relief of permanent injunction to
restrain passing off and infringement of its trade mark S. OLIVER, and for
ancillary reliefs of delivery up and rendition of accounts, pleading:
(I) that the plaintiff is a company duly organized under the laws of
Germany, and engaged in the business of manufacture and trade of a wide
range of fashion and lifestyle products which principally include clothing,
readymade garments and fashion accessory products;
(II) that the plaintiff, since the year 1979, has been continuously and
commercially using the trade mark S. OLIVER in the course of trade as
CS(OS) No.1712/2005 Page 1 of 9
proprietor thereof, in relation to the said goods and business, and has built
up a globally valuable goodwill/reputation thereunder;
(III) that the plaintiff's trademark S. OLIVER is duly registered in favor
of the plaintiff in India under the Trade Marks Act, 1999 in relation to
articles of clothing (Class 25) since 29.12.1989;
(IV) that with the advent of e-commerce, the internet and trade
thereunder, the plaintiff has also adopted the said trade mark S. OLIVER
as an essential and material part of its Email ID and Domain Name;
(V) that the plaintiff is the proprietor of the said Trade Mark, Trade
Name and Domain Name by virtue of the aforementioned registration
under the Trade Marks Act in its favor, as well as under common law;
(VI) that the said Trade Mark, Trade Name and Domain Name are also
Well-Known Trade Marks within the meaning of Section 2(1)(zg) of the
Trade Marks Act;
(VII) that the plaintiff's said Trade Mark, Trade Name and Domain
Name, as well as the goodwill/reputation thereunder, has a strong
presence in India, inasmuch as its goods (including through e-commerce)
have been available in India from the very beginning and have been
CS(OS) No.1712/2005 Page 2 of 9
retailed in India at least for the last about 10 years (at the time of
institution of the suit in 2005);
(VIII) that in or about August 2003, the plaintiff learnt of the impugned
adoption, with respect to the same goods, of the trade mark OLIVER by
the defendant no. 1 M/s Jaikara Apparels, the sole proprietorship firm of
defendant no. 2 Sh. Vimal Thakral, when the defendants impugned trade
mark was advertised under the Trade Mark Journal;
(IX) that the plaintiff accordingly filed a Notice of Opposition to the
impugned trade mark of the defendants and which was pending before the
Registrar, Trade Marks at the time of institution of the suit; and,
(X) that upon being subsequently advised that injunction and other
related reliefs can only be granted in a separate action in a Court of Law,
the plaintiff decided to institute the present suit for the aforementioned
reliefs.
2. Summons in the suit were issued on 15.12.2005 and a Local
Commissioner appointed at the instance of the plaintiff to visit the premises
of the defendants and make an inventory of the goods and packages with the
impugned trade mark/label.
CS(OS) No.1712/2005 Page 3 of 9
3. The defendants thereafter filed a written statement whereunder they
claim to have adopted the impugned trade mark/label in the year 1992 and
assert to have used it continuously on an extensive commercial scale since
then, without reference, aid or inspiration from the plaintiff. They have thus
defended their use of the impugned trade mark/label on the basis of the law
of honest adoption, honest and concurrent user, and special circumstances.
The defendants have also accused the plaintiff of delay and laches and
alleged that the plaintiff knew about the impugned trade mark/label of the
defendants in August, 2002 itself (as opposed to August, 2003 claimed by
the plaintiffs in the plaint), when the defendant had filed a Notice of
Opposition against an application moved by the plaintiff before the
Registrar, Trade Marks. The defendants have further pleaded that the
disputes between the parties regarding the impugned trade mark being
pending before the Registrar Trade Marks, this Court should stay its hands
from granting an injunction with respect thereto. Lastly, the defendants have
objected to the jurisdiction of this Court on the ground that the plaintiff's
goods have no presence in India.
4. The plaintiff filed a rejoinder wherein it has clarified that it learnt of
the adoption of the impugned trade mark/label of the defendant in August,
CS(OS) No.1712/2005 Page 4 of 9
2003 only and not in August, 2002 as suggested by the defendants in their
written statement. It has otherwise denied all the averments in the written
statement and reiterated the pleas taken in the plaint.
5. The parties to the suit thereafter took several adjournments in an
attempt to settle the matter and as a result, the suit dragged on for nearly
seven years after admission/denial of documents was completed on
08.09.2006. Finally, this Court on 09.05.2013, upon there being no
appearance on behalf of the defendants despite the matter having been
passed over, directed the defendants to be proceeded ex-parte and granted
an injunction against the defendants selling their goods under the impugned
trade mark/label, till the disposal of the present suit. However, the plaintiff
has still not tendered its ex-parte evidence till now and therefore when the
matter has been listed today, I have in light of my judgment in Indian
Performing Rights Society Vs. Gauhati Town Club MANU/DE/0582/2013
-wherein I have held that where the defendant is ex parte and the material
before the court is sufficient to allow the claim of the plaintiff, the time of
the court should not be wasted in directing ex parte evidence to be recorded
and which mostly is nothing but a repetition of the contents of the plaint -
CS(OS) No.1712/2005 Page 5 of 9
perused the pleadings and the documents to ascertain whether the plaintiff is
entitled to a decree forthwith.
6. The plaintiff has, inter alia, relied upon the following documents in
support of its case:
(I) The Label/Trade Mark/Representation of the plaintiff
(Annexure - P1);
(II) The Label/Trade Mark of the defendants (Annexure D1). The
said document stands admitted by the defendant and has thus been
exhibited as Ex P1/D1;
(III) Trade Mark Registration in favor of the plaintiff and Renewal
Certificates thereof (Annexure P2);
(IV) Copies of Certificate of Registration of the plaintiff in other
parts of the world (Annexure P3);
(V) Sales Figures and Promotional Expenses of the plaintiff
(Annexure P4 and Annexure P5 respectively);
(VI) Copy of the Trade Mark Journal in which the defendants
application of the trade mark OLIVER was advertised and the Notice
of Opposition filed thereto by the plaintiff; and,
(VII) Copies of Bills/Invoices in support of user of plaintiff's
trademark S.OLIVER in India.
7. The defendants on the other hand, have inter alia filed copies of its
list of dealers, sales figures, sales tax registration certificates, advertisement
CS(OS) No.1712/2005 Page 6 of 9
bills, packing material/stickers and bills/invoices under the trade mark
OLIVER since the year 1992.
8. There is also on record the report of the Local Commissioner
appointed by this Court vide order dated 15.12.2005. The Local
Commissioner in his report has recorded the discovery of several stitched
suits, trousers, tags, buttons, labels and other packaging material under the
brand name OLIVER in one of the premises of the defendants.
9. I would first deal with the primary relief of restraining the defendants
from passing off and/or infringing the trade mark of the plaintiff. A
comparison of the labels/trade marks of the plaintiff and the defendant
(Annexure P1 and Ex P1/D1 supra respectively) reveals little similarity.
However, it cannot be denied that the two trademarks are phonetically
nearly identical. In fact, both the trademarks sound the same, barring the
prefix 'S' to the trademark of the plaintiff, which in any case is highly
susceptible to be ignored, neglected or overlooked. Such similarity is all the
more deceptive considering that both parties are dealing in the same goods.
It may be noted that the Supreme Court in K.R. Krishna Chettiar Vs. Shri
Ambal & Co. (1969) 2 SCC 131 clarified that ocular comparison is not
always the decisive test and that the resemblance between two marks must
CS(OS) No.1712/2005 Page 7 of 9
be considered with reference to the ear as well as the eye. There is thus, in
my opinion, on account of the close affinity of sound between the two trade
marks, a very high likelihood of the public confusing the goods of the
defendant as having an association with those of the plaintiff.
10. It is also evident from the documents on record that the registration of
the trademark by the plaintiff in 1989 precedes the adoption by the
defendant of its trademark in 1992. Further, the plaintiff has also established
the presence of its goods in India vide the bills/invoices raised by it on
Indian retailers. Once deceptive similarity with respect to a registered
trademark is evident, there is also no reason for the Court to refuse
injunction merely because the Registrar, Trade Marks is seized of the matter
pertaining to the challenge by the plaintiff to the application for registration
of the defendant's trademark. I also do not find the plaintiff to be guilty of
such delay or laches so as to preclude it from the relief of infringement of
trademark within the meaning of Section 29 of the Trade Marks Act.
Reference in this regard may also be made to Ansul Industries Vs. Shiva
Tobacco Company 2007 (34) PTC 392 (Del.) where this Court, after an
extensive review of case law on this subject, concluded that mere delay is
not sufficient to defeat grant of injunction in cases of infringement of
CS(OS) No.1712/2005 Page 8 of 9
trademark since delay cannot be a bar to enforce and claim a legal right.
Accordingly, a decree in terms of prayer paragraph 31(a)(i) is passed
forthwith.
11. However, it has to be kept in mind that the defendant has also been
using its trademark continuously on a considerable commercial scale since
as far back as 1992 with little similarity in the visual appearance of the
label/trademark used with that of the plaintiff. There is thus a high
possibility of the impugned adoption being innocent and without any motive
to ride on the goodwill/reputation of the plaintiff. In such circumstances, I
do not deem it appropriate to saddle the defendants with damages or
rendition of accounts and believe the grant of injunction to be sufficient in
the facts of the present case.
12. The suit is accordingly decreed in the aforesaid terms. The plaintiff
having not rendered any assistance in the expeditious disposal of the suit; no
costs.
Decree sheet be prepared.
RAJIV SAHAI ENDLAW, J.
APRIL 22, 2014 'aa' CS(OS) No.1712/2005 Page 9 of 9