Calcutta High Court
Kitply Industries Limited vs S. Manikanandan & Ors on 5 November, 2019
Author: Ashis Kumar Chakraborty
Bench: Ashis Kumar Chakraborty
1
ORDER SHEET
GA 2392 OF 2019
WITH
CS 202 OF 2019
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
ORIGINAL SIDE
KITPLY INDUSTRIES LIMITED
Versus
S. MANIKANANDAN & ORS.
.........
BEFORE:
The Hon'ble JUSTICE ASHIS KUMAR CHAKRABORTY Date : 5TH November, 2019.
Mr.Ranjan Bachawat, Adv.
Mr. Debnath Ghosh, Adv.
Mr. Meghajit Mukherjee. Adv.
............ petitioner.
The Court : The petitioner, as the plaintiff in a suit for infringement of trademark and copyright has filed this application praying for various orders against the respondents, the defendants in the suit.
The petitioner was originally established as a partnership firm and in the year 1982, it was converted into a private limited company. Subsequently, the petitioner was changed into a public company. At all material times, the petitioner carried and still carries on the business of manufacturing and marketing of diverse range of plywood, block boards, ply boards, laminates and other allied products. The petitioner claims to be 2 known through out India for its plywood products and block boards. The petitioner is the proprietor of various trademarks of its diverse products. The primary trade marks owned and used by the petitioner are the trade marks 'KIT' and its varient, 'KITPLY', which comprises the leading element 'KIT'. The trade marks 'KIT' and 'KITPLY' are claimed to be coined and invented words adopted by the petitioner in the year 1982 and have been used by the petitioner uninterruptedly since then. The petitioner also owns and uses various associated/formative trade marks, comprising the leading and identifying element 'KIT', such as 'KITCOM', 'KIT-2000', 'KIT BOARD', 'KIT MICA', 'KITPLY ROYALE', 'KITPLY VISTA' etc. The trademark 'KITPLY' being a variant of the primary trademark 'KIT' is used by the petitioner per se as a part of its trading name, as well as in many stylised forms including "Kitply with leaves on top" which is an artistic level. The petitioner is the owner of the copyright in the artistic works/levels used by it and it has disclosed certificates of registration of copyright of two art works comprising "KITPLY". The trade marks of the petitioner are distinctive of its products and such trade marks are claimed to be exclusively associated with the petitioner.
The petitioner has disclosed the copies of registration certificates of its trade marks 'Kitply (label)', 'KITBOARD GOLD (word)', 'KITPLY GOLD' (word), 'KITSTAR', 'Kitmica', 'KITPLY', 'KIT 2000', all in class 19 of the NICE Classification of Goods and Services, employing the leading and identifying feature 'KIT'.3
It is asserted that through the use for 35 years, the trademarks 'KIT' and 'KITPLY' have become the household names across the country and attained the status of well-known trade marks and the petitioner is entitled to protect their said trade marks.
The petitioner has also disclosed copies of the stickers, comprising its brands 'KIT'/'KITPLY' affixed on its products including plywood. The petitioner has disclosed the sale figures of its various products of the brands 'KIT'/'KITPLY', as well as a certificate issued of its Chartered Accountant certifying the huge expenditure incurred by it on account of promotional and advertisement activities towards sale in respect of its various products bearing the trademarks 'KIT' and 'KITPLY'.
It is claimed the trade marks owned and used by the petitioner, containing 'KIT', as the leading and identifying feature have acquired immense goodwill and reputation and are solely and extensively associated with the petitioner and the petitioner is entitled to protect its said well- known trade marks. The trade marks 'KIT' and 'KITPLY' and its family of trade marks have, by virtue of extensive and continuous use of several decades, come to be associated extensively with the petitioner and their business activities. The 'KIT' trade marks owned and used by the petitioner, containing 'KIT', as the leading and identifying feature are claimed to have acquired immence goodwill and reputation and are solely and exclusively associated with the petitioner. the petitioner has also disclosed the year wise sales figures.4
From certain newspaper advertisements, the petitioner has come to know that the respondent no. 3 is selling plywood products under the purported trade marks "Kit Décor Perfect Ply", "Kit Prestige Perfect Ply", "Kit Platinum Perfect Ply" and "Kit Prime Tested Wood". In the advertisement published in the newspaper, the respondent no.3 prominently potrayed it's trade name "Kit Décor Plywood Industry", which comprises the trade mark "KIT" owned and used by the petitioner both as a part of their flagship trade marks. Further, the respondent no. 2 has filed trade mark applications comprising the leading and identifying element 'KIT', namely "Kit Prime Tested Wood" and "Kit Fine PF DOORS & PLY" and " Kit Bond Tested Wood".
The petitioner has also disclosed the website www.kitdecors.com, of the respondent no. 3 through which the latter is actively advertising its trade name "Kit Decor Plywood Industry", which comprises of the trade mark 'KIT' owned and used by the petitioner as a trade mark and as a part of its trading name. The aforementioned domain name, being www.kitdecors.com, also infringes the Petitioner's statutory rights and common law rights of its trade mark KIT.
The petioners has further disclosed documents showing the respondent no. 2 has applied for registration of two trade marks in respect of goods under class 19, namely "Kit Prime Tested Wood" and "Kit Fine PF DOOR & PLY". The Petitioner is opposing the said applications of the respondent no. 2 for obtaining registration of the said trade marks before the Registrar of Trade Marks.5
The petitioner has disclosed copies of the sample products bearing the marks "Kit Decor", "Kit Prestige" and "Kit Platinum". It is asserted that the respondents have blatantly copied and/or imitated the trademark "KIT" of the petitioner, in an attempt to trade upon the petitioner's goodwill. Further, through newspaper advertisements, the respondent no. 3 has itself claimed that it is selling plywood at cheaper prices under the marks "Kit Decor Perfect Ply", "Kit Prestige Perfect Ply", "Kit Platinum Perfect Ply", "Kit Prime Tested wood". Even the respondent no.1 has, in its counter statements to the petitioner's notice of opposition claimed that he is selling products under the marks "Kit Decor Perfect Ply", "Kit Prestige Perfect Ply", "Kit Platinum Perfect Ply", all of which are substantially identical and/ or deceptively similar to the petitioner's trade marks "KIT" and "KITPLY". The photographs of the sample products bearing marks comprising 'KIT', as being sold by the respondents have also been disclosed in the petition.
On further searches being undertaken on the internet, the petitioner has found that the profile of the respondents on the website https://www.indiamart.com,being https://www.indiamart.com/company/67855414/ on which the mark/ name, "Kit Décor", prominently features. On such website the respondents are openly advertising and/or offering for sale products such as plywood using the mark/ name "Kit Décor" and prospecting customers all over India both within and outside the jurisdiction of this Court. Such profile also prominently bears the name of the respondent no. 2. Extracts downloaded from the website 6 www.indiamart.com showing the above have also been disclosed in this application.
The petitioner claims that the respondent nos. 1,2 and 3 are carrying on business together and/ or in collaboration with each other, and they have been infringing the registered aforementioned trade marks of the petitioner.
The petitioner is actively involved in taking steps which are aimed at conserving the environment and for such efforts it has been rewarded in the past. In order to make its customers and traders aware of such efforts, the petitioner, uses the tagline "Only Plywood company, Protecting Environment with man-made forests", on its products / labels, since the 1990's. The respondents have further ventured into copying the entirety of such tagline and manner of writing the same and have depicted such phrase in a similar manner and by doing so, the respondents have infringed the copyright of the petitioner in the literary work. In this regard, the petitioner produced before this Court the samples of one of its products and the sample of the product of respondents with the trade mark "Kit Prestige marine perfect ply".
According to the petitioner, the goods involved in this case are the same goods and are sold through the same trade channels and are also purchased by the same set of purchasers and it is evident that by using the impugned trade marks, the respondents are not only infringing the petitioner's aforementioned trade marks, they are also infringing the 7 petitioner's copyright in the literary work "Only plywood company Protecting Environment with man made forests".
On the basis of the above allegations , learned Senior Counsel for the petitioner urged that the petitioner has made out a prima facie case to protect their registered trade marks comprising "KIT" and "KITPLY" and there is great urgency in the matter for passing ex-parte orders of injuction. I have considered materials placed me. From the documents in the application, I am satisfied that the petitioner has prima facie substantiated that the respondents are infringing its aforementioned trade marks, as well as the copyright mentioned above and from a side by side comparision of the smple products of the petitioner and the respondents it appears that respondents have also infringed the petitioner's registered copyrights including the tagline "only plywood company, Protecting Enviorment with man-made forests". The blance of convenience wholly lies in favour of the petitioner for passing ex-parte orders of injuction. Accordingly there shall be an ad interim order in terms of prayers (a) and
(b) of the Notice of Motion till November 29, 2019.
The petitioner shall forthwith serve copies of the application and this order on each of the respondents by Speed Post with A/D and file an affidavit of service on the retrunable date fixed on November 27, 2019.
(ASHIS KUMAR CHAKRABORTY, J.) 8