Delhi High Court
Deere And Co. And Anr vs S. Harcharan Singh And Anr on 5 March, 2015
Author: Hima Kohli
Bench: Hima Kohli
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 3760/2014 and I.A. 24477/2014 (u/O XXXIX R 1
and 2 CPC), I.A. 376/2015 (u/O XXIII R 3 CPC)
Decided on: 05.03.2015
IN THE MATTER OF:
DEERE AND CO. AND ANR ..... Plaintiffs
Through: Mr. Pravin Anand, Advocate with
Ms. Vaishali Mittal, Neha Reddy and
Mr. Sidhant Chamola, Advocates
versus
S. HARCHARAN SINGH AND ANR .... Defendants
Through: Mr. Aman Bhalla, Advocate
CORAM
HON'BLE MS.JUSTICE HIMA KOHLI
HIMA KOHLI, J.(Oral)
1. The plaintiffs have filed the present suit for permanent injunction for restraining infringement of trade marks, passing off trade dress, unfair competition, rendition of accounts, delivery up and damages etc. against the defendants.
2. Mr. Pravin Anand, learned counsel for the plaintiff submits that the plaintiff no.1 is a company organized and existing under the Law of the State of Delaware, USA. The plaintiff no. 2 is a company existing under the law of India, having its principal place of business at CS(OS) 3760/2014 Page 1 of 22 Pune. The Deere Group is commonly referred to as the „John Deere‟ after its founder and Chairman, Mr. John Deere. The plaintiff No.1 was established in the year 1837 and it traces its origin to a blacksmith shop in Grand Detour, Illinois, U.S.A where Mr. John Deere had invented the first commercially successful steel plow, allowing pioneer farmers to cut clean furrows through the sticky Midwest prairie soil.
3. The plaintiff No.1 claims to be one of the largest and leading agricultural and construction equipment manufacturer in the world including India, primarily having four business segments namely „Agricultural Equipment‟; „Commercial & Consumer Equipment‟; „Construction & Forestry‟ and „Finance.‟ The plaintiffs are listed as a Fortune 500 company and ranked amongst the top 100 companies therein, employing over fifty five thousand staff members in twenty seven countries worldwide, including the United States, Australia, Turkey, Canada, United Kingdom, China, France, Germany, Spain, Italy, India, Poland, Mexico, Morocco and South Africa.
4. The plaintiffs had first adopted the trademark „John Deere‟ in the year 1837 and ever since had used the said trademark continuously and extensively. The plaintiffs‟ logo essentially comprises of a „leaping deer‟ in conjunction with the trade mark „John Deere‟. The CS(OS) 3760/2014 Page 2 of 22 earliest illustration of the plaintiffs‟ goods with the arbitrary green and yellow scheme (hereinafter referred to as the John Deere Trademark/Trade Dress) is of a plow in the 1905 Deere and Weber catalog.
5. In the year 1910, the plaintiffs had started making use of a particular combination of the colours Green and Yellow in relation to its agricultural implements in a unique and distinct manner which was further adopted for tractors in the year 1918. It is stated that the manner of use of this combination of colours was such that it included the body of the vehicle being substantially painted „Green‟ with the seat and the wheels of the vehicle being substantially painted „Yellow‟ in the manner depicted herein below:
6. It is further submitted that in the year 1956, the colours "Green" and "Yellow" were also defined in the internal standards, laid down by CS(OS) 3760/2014 Page 3 of 22 the plaintiffs which clearly depicted the colours and the scope of their application on the agricultural equipment. Further, the plaintiffs make use of "sample plates" which are maintained under defined conditions in order to compare the original colours used by the plaintiffs with the use of colours on agricultural equipment in the present day. It is submitted that by virtue of continuous and extensive use of the green and yellow colour scheme for its products by the plaintiffs, the consumers and members of the trade alike associate the above mentioned colour scheme solely with the products of the plaintiffs.
7. Learned counsel states that the plaintiffs have been investing huge amounts of money and energy in promoting their John Deere trademarks including the colour marks and logo and have put in unparalleled efforts to advertise and promote the said trademarks including trade dress in order to ensure that their trademarks secure and maintain the vast goodwill and reputation that is vested in them through the decades, until the present day.
8. The plaintiffs have built a reputation in India of its well known CS(OS) 3760/2014 Page 4 of 22 John Deere trademarks and the unique green and yellow colour scheme and logo. This is evidenced from the fact that its agricultural equipment especially Tractors, Harvesters and Combines have been featured in several Hollywood movies and TV shows such as "A Summer Catch" (2001), "Burn Notice" (2007), "SeaBiscuit" (2003) and "The Longest Yard" (2005). The plaintiffs‟ tractors have also featured in Indian movies such as "Govindudu Andarivadele" (Telugu) and TV shows such as the widely acclaimed "Satyamev Jayate" (2014) wherein the plaintiffs‟ tractor was used by the famous Bollywood actor, Aamir Khan as a part of the theme song for the show.
9. The plaintiffs claim to have sold their products in the Indian agricultural market, including first sales of equipment in India at least six decades ago. It is submitted that the plaintiffs had entered directly into the Indian market in the year 1997 with the incorporation of its wholly owned subsidiary, John Deere India Private Limited, the plaintiff No. 2. Plaintiff No. 2 claims to have tie-up agreements for research and development of a business model for delivering high quality premier agricultural mechanization services with EM3 Agri services Private Limited (Delhi). Plaintiff No. 2 has had agreements with IIT Delhi for collaborative research projects for Master‟s Degree or Ph.D to CS(OS) 3760/2014 Page 5 of 22 provide industrial exposure to the faculty and students of IIT Delhi.
10. As a result of its continued efforts to expand its business activities across the world including in India, the plaintiff No. 1 had entered into a Joint Venture Agreement with Larsen & Toubro Limited, an engineering company of high repute in India. Through this Joint Venture, the plaintiffs have engaged in various activities such as the establishment of a green field project in the year 1999 in addition to establishing a state of the art manufacturing plant for the John Deere 5000 series tractors at Sanaswadi, near Pune. Subsequently, in the year 2005, the plaintiff No. 1 had acquired nearly all the shares of the said Joint Venture, whereby a new enterprise, John Deere Equipment Private Limited was established in India. The plaintiffs further expanded their presence in India with the incorporation of John Deere Financial India Private Limited in the year 2011.
11. The plaintiffs claim to be one of the leaders in the Indian Tractor market and have achieved a pan-India presence through their 18 area offices, 4 divisional offices and more than 400 authorized dealers spread across the country. Learned counsel for the plaintiffs submits that the plaintiffs are the largest exporters of tractors from India and these tractors are exported to the USA, Mexico, Turkey, North and CS(OS) 3760/2014 Page 6 of 22 South Africa, and South East Asia. The plaintiffs have also entered into a partnership with the State Government of Gujarat to benefit the marginalized tribal farmers. The plaintiffs‟ partnership with the Government of Gujarat was the first of its kind in the agricultural industry in India which is stated to be positively impacting an estimated 50,400 marginalised farmer families. Learned counsel also refers to the fact that Mr.Narendra Modi, the Prime Minister of India, had as the Chief Minister of the State of Gujarat, signed a PPP with the plaintiffs on farm mechanisation in the year 2011. The photograph of Mr. Narendra Modi showing him sitting on the plaintiffs‟ tractor has been filed along with the list of documents. The plaintiffs claim that they have a presence over the internet and their websites being www.deere.com, www.johndeereclassic.com and www.deere.co.in are easily accessible to persons across the world including those in Delhi and other parts of India. The plaintiffs‟ unique and distinct green and yellow colour scheme and logo is displayed extensively and constitutes the basic colour scheme and layout of the aforecited websites.
CS(OS) 3760/2014 Page 7 of 22
12. Learned counsel submits that the plaintiffs have invested huge sums of money in promoting and advertising their John Deere trademarks and unique trade dress in India. The advertising/promotional expenses of the plaintiffs in India for the period 2008 - 2012 (in million INR) are as below:-
Year Promotional Expenditure
2008-09 666.63
2009-10 888.56
2010-11 866.81
2011-12 1,351.02
2012-13 1,097.28
13. The vast promotion of the John Deere Trademarks including Trade Dress has resulted in enormous sales of the plaintiffs‟ products in India. The sales figures of the plaintiffs in India for the period 2008
-2013 (in million INR) are as follows:-
Year Sales Figures
2008-09 18,600.56
2009-10 21,262.83
2010-11 32,978.86
2011-12 39,862.36
2012-13 41,330.90
14. The plaintiffs‟ „John Deere trade marks‟ are registered over 20 countries. It is submitted that in India, the plaintiffs‟ use of its „John Deere trade marks‟ dates back to year 1943. A list of the plaintiffs‟ CS(OS) 3760/2014 Page 8 of 22 registrations for its „John Deere trademarks/ trade dress‟ in India is as under:-
# Trade Mark Class Date of application Trade
Registration Mark
Number
1. 224850 7 12th October, 1964
2. 1551757 28 20th April, 2007
3. 1551758 28 20th April, 2007
4. 1551759 7 20th April, 2007
5. 1551760 7 20th April, 2004
6. 1551761 7 20th April, 2007
7. 1551762 12 20th April, 2007
8. 1551763 12 20th April, 2007
9. 1551764 12 20th April, 2007
10. 1551765 28 20th April, 2007
15. Mr. Anand submits that the plaintiffs‟ „John Deere‟ trade Marks including trade Dress are well known trade marks in India for several reasons, including the fact that the plaintiffs‟ trademark „John Deere‟ and the logo read with the characteristic green and yellow colour scheme and the trade dress have gathered an enviable reputation and worldwide recognition amongst the general public and CS(OS) 3760/2014 Page 9 of 22 the members of the trade alike. The plaintiffs‟ logo of the animated version of the leaping deer has been recognised by the United States Court of Appeals as a well-known mark in the judgment dated 21.11.1994, in the case of Deere & Company vs. MTD Products, Inc. Similarly, vide judgment dated 28.10.2009 delivered by the Appellate Court of the European Union, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) had recognised the plaintiff‟s registered trademark, representing the combination of the colours, green and yellow for agricultural equipments. In January, 2014, a Chinese newspaper, "China Daily" had reported the verdict of the Beijing Intermediate Court, wherein not only was the colour combination of green body and yellow wheels recognised as a symbol of the John Deere tractors, it was also reported that the case filed by the plaintiffs was the first law suit of its kind in China involving infringement on a trademark related to colour combination, where the Court held that the plaintiff was entitled to monetary compensation from the infringer company to the tune of $74,340. The logo of the plaintiffs has the distinction of being included by the International Trademark Association (INTA) in its list of famous/well known trademarks recognised by jurisdictions worldwide. CS(OS) 3760/2014 Page 10 of 22
16. As for the defendants herein, it is the case of the plaintiffs that in the month of October 2014, they had become aware that the defendants are manufacturing and selling lookalikes of the plaintiffs‟ farm equipment including but not limited to Tractors, Harvesters and Combines under their trading name/mark "SURINDERA" across India and they have made use of the plaintiffs‟ logo and adopted a trade dress which bears a striking resemblance with the plaintiffs‟ registered trademarks (the colour marks) including trade dress as highlighted below:-
Plaintiff's Products Defendant's Impugned Products 3 1 2 CS(OS) 3760/2014 Page 11 of 22 4
17. It is contended by Mr. Pravin Anand, learned counsel for the plaintiffs that the defendants have infringed the registered trade mark of the plaintiffs by using the logo and trade dress that bears a striking resemblance with the plaintiffs‟ registered trademarks (the colour marks).
18. It is submitted that the plaintiff No.1 is the registered proprietor of the John Deere Trademark / Trade dress in relation to the unique green and yellow colour scheme and logo and the defendants have blatantly copied the impugned marks in relation to their agricultural vehicles without any authorization from the plaintiffs. Further, the manner of use of this colour combination by the defendants‟ is also deceptively similar to that adopted by the plaintiffs, i.e. the body of the vehicle being painted in Green with the wheels CS(OS) 3760/2014 Page 12 of 22 and the seat of the vehicle being painted in Yellow . It is therefore urged that the manner of use of the colour scheme by the defendants is quite similar to that of the plaintiffs.
19. Learned counsel for the plaintiffs contends that such a deceptively similar adoption of the plaintiffs‟ trademark and trade dress by the defendants is bound to cause confusion in the minds of the consumers that the defendants‟ agricultural vehicles are emanating from the plaintiffs or that they have been granted license by the plaintiffs in relation to their products or that the plaintiff have endorsed defendants‟ business.
20. The Court has considered the submissions made by learned counsel for the plaintiffs. Before proceeding further, it is imperative to consider the following definitions under the Trademarks Act, 1999 (hereinafter referred to as the „Act‟):
Section 2(m) of the Act reads as under:
"mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof"CS(OS) 3760/2014 Page 13 of 22
Section (zb) of the Act reads as under:
"(zb) trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours"
21. Under the Act, well known trademarks can be protected even without registration or use in India. As per Section 29(4) of the Act, a registered trademark is infringed by a person who not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which- (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark.
22. Section 2(1)(zg) of the Act defines well known trademarks as follows:-
"well known trademark in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services."CS(OS) 3760/2014 Page 14 of 22
23. Section 11(6) and 11(8) of the Act lay down the particulars for taking cognizance of a trademark (which also includes shape marks, trade dress and overall get up of the product) to be a „well known trademark‟. These principles have been enunciated in the case of General Electric Company vs. J. Singh and Ors., reported as 2011 II AD (Delhi) 18.
24. The aforesaid provisions make it apparent that a colour/colour combination can become a trademark if they are distinctive and exclusively associated with the trader. Once the same is registered, exclusive rights are granted under Section 28 of the Act and a party is entitled to initiate infringement proceedings if the case falls within the four corners of Section 29 of the Act and in those circumstances, the aggrieved party can obtain an injunction order under section 135 of the Act.
25. As was pointed out by the predecessor Bench while passing an interim order in favour of the plaintiffs herein in I.A. 24477/2014, the courts in India have recognized some trademarks as well known in several cases, like Daimler Benz and another vs. Hybo Hindustan reported as AIR 1994 Delhi 239 - for BENZ; the well known alcohol manufacturing company, Shaw Wallace, had successfully enforced its trademark rights, especially the numerical part of its brand name CS(OS) 3760/2014 Page 15 of 22 "5000" in the case of Shaw Wallace & Co. vs. Superior Industries Ltd reported as 2003 (27) PTC 63 (Del) and same was the view taken in the case of Tata Sons Ltd vs. Manoj Dodia reported as 2011(46) PTC 244 (Del). In respect of a trade dress, the Courts have opined that deceptively imitating the get up, layout and artistic features of the plaintiff‟s goods adversely harms the reputation and goodwill enjoyed by it. This view has been consistently taken in numerous cases including Reckitt & Colman Products Limited vs. Borden Inc and Ors. reported as (1990) R.P.C. 341, Colgate Palmolive Company and Another vs. Anchor Beauty Health and Beauty Care Pvt. Ltd reported as 2003(27) PTC 478 (Del), and Perfetti Van Melle S.P.A. and Anr. vs. Om Prakash Khushwant and Anr. reported as 2013(54) PTC 288 (Del).
26. In the case of Sodastream Ltd. v. Thorn Cascade Co Ltd. reported at 1982 RPC 459, the plaintiffs therein were marketing gas cylinders of grey colour under their trade mark, „Sodastream‟ and the defendants therein were marketing their black coloured cylinders under their own trade mark, „Thorn Cascade‟. While granting an interlocutory injunction order in favour of the plaintiffs, it was observed that the attempt of the defendants to refill the plaintiffs‟ grey coloured gas cylinders, even with their own trade mark amounts to CS(OS) 3760/2014 Page 16 of 22 passing off as the grey coloured cylinder is distinctive of the plaintiffs in respect of which they enjoyed a reputation to the exclusion of others.
27. In another case, Hoffmann-La Roche and Co. A.G. v. D.D.S.A. Pharmaceuticals Limited, reported in 1972 RPC 1, the plaintiffs therein manufactured and marketed chlordiazepoxide in distinctive black and green capsules bearing the word "Roche" on each capsule. The defendants also marketed and advertised the drug, chlordiazepoxide in black and green capsules which were identical to those of the plaintiffs except that they bore the letters "DDSA" instead of the plaintiffs‟ name. The plaintiffs were granted interlocutory injunction restraining the defendants from passing off capsules of the patented drug as the goods of the plaintiffs. It was held that the attempt on the part of the defendants in marketing capsules in almost identical form as those of the plaintiffs, was calculated to cause damage to the plaintiffs. It was further held that there was a likelihood of confusion as both the capsules contained the same drug and the public was hardly concerned with the identity of the party manufacturing the capsules as long as the capsules contained the same substance and had the same effect.
28. Coming to the instant case, the plaintiffs herein have filed CS(OS) 3760/2014 Page 17 of 22 several documents in support of their submission that the „John Deere‟ trademark and logo and their „John Deere‟ trade dress are unique and distinctive in nature and due to the extensive sales and advertisements, the relevant section of the public immediately associates „John Deere‟ trademark as well as the overall trade dress and the get up as those belonging to the plaintiffs. Several documents have been filed by the plaintiffs to demonstrate the said position, including the snapshots of their website relating to adoption and use of the John Deere Trademarks and products, copies of the documents evidencing the long history of the plaintiffs‟ products and their green and yellow colour scheme from the year 1910 till the present day, documents evidencing the use of the colours Green and Yellow by the plaintiffs for their agricultural equipments in accordance with their internal standards since the year 1956, documents evidencing sale of the plaintiffs‟ products in Delhi, copy of the brochure of the Third International Exhibition & Confernece on Agri-Machinery & Equipment, 2013 evidencing the active organizing of trade fairs in Delhi by the plaintiffs, copy of the press release of the Agrimach Trade Fair, 2013 evidencing the plaintiffs‟ sponsorship of the event in New Delhi, copy of the Directory of the Tractors Manufacturing Association CS(OS) 3760/2014 Page 18 of 22 evidencing the plaintiffs‟ active participation in the Indian Agricultural Industry, copies of documents evidencing the sales and promotional literature of the plaintiffs‟ specific to India, copies of newpaper articles evidencing the wide publicity of the plaintiffs‟ prodcuts in India, copy of extract of the book titled, "CENTRESTAGE" showing the Prime Minister of India, Mr. Narendra Modi sitting on the John Deere tractor evidencing the plaintiffs‟ partnership with the Government of Gujarat to help marginalised farmers, copy of the brochure of the Maharashtra Trade Technology Sumit and technology platform, 2013 evidencing the plaintiffs‟ active participation in the Indian Agricultural Industry, copies of the registration certificates for the plaintiffs‟ trademarks in India, list of trademark registration held by the plaintiffs‟ across the world and the list of trademark registrations held by the plaintiffs for the JohnDeere Trademarks in various countries.
29. Having regard to the several factors referred to hereinabove, including the well known status of the „John Deere‟ trademark and trade dress, knowledge and recognition of the mark in the relevant section of the public, the duration, extent and geographical areas of use of the plaintiffs‟ trademark and the record of successsful enforcement of the statutory and common laws rights vested in the plaintiffs throughout the world, including India, this Court is of the CS(OS) 3760/2014 Page 19 of 22 opinion that the plaintiffs have established beyond reasonable doubt that their John Deere trademarks including the colour marks and logo are extremely well known marks amongst the members of the trade and the public at large. The long duration for which the plaintiffs have put the aforesaid trademark, trade dress and logo to use, the widespread geographical areas of the said use, knowledge in the public domain about the plaintiffs‟ trademark, the goodwill and reputation earned by them due to the extensive promotion and advertisement of their products, continuous use of the plaintiffs‟ trademark and sales made under the said mark in India and in other countries and the numerous registrations obtained by the plaintiffs in respect of the said trademark all go to establish the fact that the trademark including the colour marks and logo used by the plaintiffs have indubitably acquired the status of well known marks.
30. It is also relevant to note that during the pendency of the present suit, the plaintiffs and the defendants have entered into an amicable settlement. Defendant no. 1, who is the authorised representative of the defendants, had presented himself in Court along CS(OS) 3760/2014 Page 20 of 22 with his counsel on 21.01.2015 when the compromise application, registered as I.A. 376/2015 was taken up for consideration. On the said date, learned counsel for the defendants had submitted that the defendant No.1, partner of the defendant No.2/firm had signed the compromise application and sworn the affidavit in support of the said application of his own free will and volition and the defendants did not have any objection to the suit being decreed in terms of the settlement arrived at between the parties and recorded in the application.
31. In the compromise application, the defendants have acknowledged the plaintiffs‟ exclusive proprietary rights vested in the trademark including the colour marks and the logo including the trade dress as a well known trademark. The defendants have also acknowledged the plaintiffs‟ rights vested in the unique trade dress and they have agreed to cease making use of the said trade dress in relation to their agricultural equipments. The defendants have further undertaken that they shall not submit any application before the Trademark Registry for registering their trademark, trade dress and trade logo. On the basis of the undertakings given by the defendants to the plaintiffs, the plaintiffs have agreed to forgo their claims of damages, rendition of accounts and delivery up, as prayed CS(OS) 3760/2014 Page 21 of 22 for in para 35(iii) to (v) of the plaint. Both parties state that the present suit may be decreed in terms of clause (i) and (ii) of para 35 of the plaint.
32. Mr. Neeraj Panchal, constituted attorney of the plaintiffs, who has also sworn the affidavit in support of the plaint and the defendant No.1, Mr. Harcharan Singh, partner of the defendant No.2/firm have signed the compromise application which is supported by their respective affidavits. Counsels for both the parties confirm the fact that their clients have arrived at a settlement with each other of their own free will and volition. Accordingly, the said application is taken on record. The defendants shall remain bound by the undertaking given in the application.
33. The suit is decreed in favour of the plaintiffs and against the defendants in terms of clauses (i) and (ii) of para 35 of the plaint, while leaving the parties to bear their own costs.
34. The suit is disposed of, along with the pending application.
(HIMA KOHLI)
MARCH 05, 2015 JUDGE
rkb/ap/mk
CS(OS) 3760/2014 Page 22 of 22