Delhi District Court
M/S Bikanerwla vs M/S Bikaner on 11 October, 2012
1
IN THE COURT OF SHRI MAN MOHAN SHARMA
ADDITIONAL DISTRICT JUDGE (CENTRAL) 1
TIS HAZARI COURTS, DELHI.
TM. No. 107/2011
Unique I. D. No. 02401C1083982007
M/s Bikanerwla
10181/32,
Chowk Gurdwara Road,
Karol Bagh,
New Delhi110 005
...Plaintiff
Versus
1. M/s Bikaner
E115, Sec1, Dwarka
Opp. Mahalaxmi Apartments,
New Delhi110 075
2. M/s Bikaner
Shop no.18, Nathu Singh Market,
Vasant Kunj,
New Delhi.
3. M/s Bikaner
Sec1, R. K. Puram,
Near Kashmiri Market
New Delhi
..Defendants
M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 1/39
2
Date of institution of suit : 29.10.2007
Date of reserving the judgment : 09.10.2012
Date of pronouncement of judgment : 11.10.2012
JUDGMENT
Alleging violation of its trade mark, copyright and ancillary rights the plaintiff has instituted the instant suit in which the cause of action has been propounded on the following bundle of facts:
(i). M/s Bikanervala is a partnership firm consisting of Sh. Chetan Lal, Smt. Meera Devi, Sh. Radhey Mohan, Sh. Ramesh Kumar, Sh. Kailash Chand (HUF), Smt. Naurati Devi, Smt. Sushila Devi, Sh. Bhagirath Aggarwal, Smt. Pravesh Lata & Smt. Kanchan Devi as its partners and the same is duly registered under the provisions of the Indian Partnership Act 1930 having its office premises at 1018182 Chowk, Gurudwara Road, Karol Bagh, New Delhi110005. Sh. Baidyanath Mishra S/o Sh. Deo Nandan Mishra is the power of attorney holder of the plaintiff firm and is duly authorized by a power of attorney dated 17.10.2007 to file such a suit, sign & verify the pleadings and depose to the facts of the same and do all other acts for the conduct of the present suit.
M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 2/39 3
(ii). The plaintiffs, have through their forefathers been in the business of manufacturing and marketing ethnic foods including sweets and namkeens for the last almost 100 years and have inherited a vast treasure of recipes of traditional Indian sweets and namkeens developed and perfected down the generations.
(iii). In the year 1981 the plaintiff established a major outlet in the capital at Karol Bagh, under a coined trade name/trade mark BIKANERVALA and on account of the goodwill and reputation generated by the plaintiff by its untiring efforts for more than two and half decades the said name has been a runaway success amongst the trade and public and since then the plaintiff has grown by leaps and bounds and today is one the major market leaders in traditional sweets and namkeens in India along with its associate firms/companies/franchisees and a number of retail outlets spread far and wide.
(iv). On account of the extensive and wide use of the said trade name/trade mark BIKANERVALA, the same has become a household name which is recognized and hailed by one and all as a source of superior and impeccable quality goods originating M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 3/39 4 from the plaintiff firm exclusively. From a humble beginning in the 20th century to having almost a dozen large group entities/franchisees, it has been a long and diligent road to tread for the plaintiff and the plaintiff is continuing its efforts along with its other associate concerns to widen its consumer base throughout the country and abroad.
(v). The plaintiff has inherited the secret knowledge and the expertise in the preparation of traditional Indian sweets and namkeens and have been catering to a large crosssection of consumers including major commercial institutes, industrial sectors and other government/semi government undertakings.
(vi). Since the year 1981 the plaintiff has been using the name BIKANERVALA extensively and exclusively in respect of sweets, namkeens and other allied and cognate products. From time to time the plaintiff firm has constantly added more varieties and choices to its existing menu and from being a traditional sweetmeat seller has expended its business and those of its licensees/franchisees by combining the sale f its sweetmeat preparations with other North/South Indian food/snack foods, M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 4/39 5 including Salads, Chinese Noodles and Italian Pizzas, Confectionery, etc in a sit in restaurant and it today qualifies to be well known trade mark of which a judicial notice can also be taken.
(vii). The plaintiff in the year 1992 adopted a distinctive and eye catching artistic label titled 'BIKANERVALA' which artistic lable in its essential features consists of (i) alternate parallel strips of red and yellow in a rectangle, below which the trade mark/trade name/artistic work BIKANERVALA of the plaintiff firm is written in what ensconced in a red rectangle (ii) the trade mark/trade name BIKANERVALA of the plaintiff in itself is used in a unique script in as much as each of the alphabets are written in a uniform thick font in white on a read background having each alphabet in a distinctive rounded font, as opposed to pointed in an ordinary script and such colour combination it itself also constitutes a separate trade mark of the plaintiff and distinctively stands out. The aforesaid artistic work of the plaintiff has been duly registered with the office of Registrar of Copyrights under no. A58102/2000 and the said registration is M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 5/39 6 valid and subsisting and in full legal force.
(viii). The plaintiff also applied for the registration of one of its trade mark/label BIKANERVALA on that 1st day of January, 2004 in the office of the Registrar of Trade Marks, New Delhi under no. 1258663 in class30 in respect of sweets, namkeens, biscuits, cakes, pastry, icecreams, confectionery, etc. and the said trade mark/label of the plaintiff is duly registered and consequently the plaintiff has a statutory right to its exclusive use. The plaintiff apart from the above, has obtained several other registrations in respect of its aforementioned mark including registration no. 1256078 in class41 in respect of providing of food and drink and restaurant services. The trade mark BIKANERVALA of the plaintiff is also pending registration under no. 1258661 dated 01.01.2004 in class30.
(ix). The plaintiff's products manufactured under the trade mark/trade name/artistic label BIKANERVALA strictly follow the international standards of hygiene and freshness and undergo regular laboratory checks in respect of the quality of raw materials and seasonings used. Further, due to highly advanced M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 6/39 7 manufacturing plants, fully automated processing units and high quality in house packaging, the plaintiff's products have acquired the reputation of being products of top most quality both in the eyes of trade as well as the general public at large. Consequently, the products bearing the trade mark/trade name/artistic label BIKANERVALA accompanied by its various packagings including the one the subject matter of this annexed as AnnexureA to the plaint have come to signify the products originating from the plaintiff firm exclusively.
(x). The plaintiff has been advertising its products under the trade mark/trade name/artistic label BIKANERVALA in various newspapers, magazines, electronic media and other promotional literature which has been extensively noticed and distributed to a large number of traders/institutions/industrial sectors and the general public at large throughout the country and abroad.
(xi). On account of the superior quality of the said goods and due to the continuous prior use of the said trade mark/trade name/artistic packaging BIKANERVALA the said trade mark/trade name/artistic packaging has acquired an enviable M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 7/39 8 reputation and valuable goodwill in the eyes of traders and general public at large and the said goods are exclusively associated with the plaintiff. By virtue of extensive and prior use of the said trade mark/trade name/artistic packaging BIKANERVALA along with its distinctive getup, lay out, placement, design, colour combination, etc. the plaintiff has acquired the exclusive right to sue and/or to reproduce the said trade mark/trade name/artistic packaging and the use of the said trade mark/trade name/artistic packaging or any other deceptively similar trade ark/trade name/artistic packaging or any other deceptively similar trade mark/trade name/artistic packaging or any other deceptively similar trade mark/trade name/artistic packaging by any one else without the leave, license or consent of the plaintiff would constitute a violation of the plaintiff's rights amounting to infringement of trade mark, copyright and passing off.
(xii). The plaintiff in association with its sister concerns and franchisees/licensees has conducted sales in respect of its various aforementioned products bearing the trade mark/trade M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 8/39 9 name/artistic work 'BIKANERVALA' for an amount of more than Rs.400 Crores till date through its various retail outlets, franchisees, restaurants and other packed food products and namkeens. The said sales figure clearly establish the popularity, vast goodwill and reputation which the plaintiff's said products have acquired amongst the trade and public and is indicative of the tremendous amount of confidence which the trade and public has in respect of the products originating from the plaintiff firm and in fact is a clear indicator that the said trade mark/trade name 'BIKANERVALA' of the plaintiff has achieved the status of being a well known trade mark. That the said trade mark/trade name/artistic packaging in itself has also assumed a secondary significance in favour of the plaintiff in respect of sweets, namkeens, snack goods etc. so much so that a judicial notice of the said fact can also be taken.
(xiii). It came to the knowledge of the plaintiff for the first time in the 3rd week of October, 2007 that the defendant no.1 had recently commenced its similar business activities as those of the plaintiff under the name and style of 'Bikaner' and that too in a M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 9/39 10 deceptively similar artistic manner. Further enquiries made by the plaintiff revealed that the defendant no.1 had also two other associated firms namely defendant no. 2 and 3 who were also using the same name in an identical deceptively similar artistic manner as that of the plaintiff. The fact that all the three defendants are interconnected to each other is plainly evident from the fact that each of the poly bags are identical in all respect except the difference in the addresses of the defendants. All the infringing poly bags of the defendants have adopted the deceptively similar trade name/trade mark as that of the plaintiff and have also adopted an identical colour combination of red and white as well as the same writing font as is being used by the plaintiff. On the whole the two competing packaging are deceptively similar in as much as the defendants have retained every distinctive feature of the plaintiff's packaging except the suffix 'Vala' which to a person of average observation is bound to give an impression that the defendants business/products are connected in the course of trade with the plaintiff or that the defendants are a licensee/franchisees of the plaintiff which facts M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 10/39 11 is misleading and false. The said false impression is further reinforced by the deliberate use of the expression 'Lajawab Swad Ab Apke Pass'..... ' India's most popular taste' by the defendants.
(xiv). The plaintiff has never condoned the said infringing activities of the defendants and nor has the plaintiff ever acquiesced in the said illegal user of the defendants infringing artistic packaging/trade name/trade mark. Further, enquiries made by the plaintiff have revealed that the defendants even have no connection whatsoever with the city of Bikaner in Rajasthan and therefore the very adoption of the impugned name "BIKANER" in the trading style of the defendants is perse malafide and fraudulent amounting to a false trade description also.
(xv). As aforementioned on a bare perusal of the infringing poly bags of the defendant it is at once apparent that the defendant have fraudulently, knowingly and mischievously reproduced each and every distinctive feature of the plaintiff's aforementioned artistic packaging with a view to cause M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 11/39 12 confusion/deception and to earn unlawful and illegal profits. (xvi). The adoption and use of the impugned packaging by the defendants which is deceptively similar to the reputed and prior adopted/used packaging of the plaintiff in respect of similar/identical products i.e. sweets, namkeens and snack foods, etc. is bound to lead to confusion and deception amongst the purchasing public and trade. The defendants have made a misrepresentation in the course of trade to prospective customers which is likely to lead to immense confusion and deception and create an impression that the defendants products are in some way connected with the products of the plaintiff. Such a misrepresentation is calculated to cause damage and injury both to the plaintiff's business and to its goodwill and reputation. The misrepresentation is not only limited to the origin of the goods but also to the quality as well, since the defendants products are of much inferior quality. The plaintiff's and the defendants' goods are of a cognate and allied nature, having identical trading channels and sol to the same class of purchasers. The defendants are therefore guilty of passing off their goods and business as M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 12/39 13 those of the plaintiff.
(xvii). The plaintiff has always been vigilant about its right in the trade mark/trade name/artistic font BIKANERVALA and has always diligently prevented the misuse and infringement of its trade mark/trade name/artistic mark by filing appropriate legal action against the infringer from time to time and had been successful in restraining the illegal designs to such infringer. (xviii). Under the scheme of the copyright Act 1957 and the provisions contained there under, the offence of infringement of copyright is complete if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion that the subsequent work appears to be a copy of the original on a causal comparison of the two competing artistic works. That it is equally well established that there might be and there will be obvious differences deliberately introduced to avoid a possible charge of infringement of copyright. The law is that if the Court on a consideration of all the relevant circumstances and the comparison of the competing artistic labels comes to a conclusion that basically and in substance one is the reproduction M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 13/39 14 of the other, further modifications or variations will not alter the effect of infringement. The copyright Act, 1957 being a complete code in itself, any infringement under the said Act is liable to be injuncted forthwith without there being any other additional requirement as prescribed under the provisions of the trade mark Act, 1999 or the principles of common law.
(xix). It is an established principle under the provisions of the Trade Marks Act, 1999 and common law that in order to come to the conclusion that one mark is deceptively similar to another the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design fro being mistaken for the other. It would be enough if the impugned mark bears such an over all similarity to the earlier mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. It is further settled principle of law that marks are remembered rather by general impression or by some significant detail then by any photographic recollection of the M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 14/39 15 whole. Moreover, variation in detail might well be supposed by customers to have been made by the owners of the marks with which they are already acquainted for reasons of their own. (xx). The use of the deceptively similar packaging by the defendants is not only likely to cause confusion and deception but is actually causing confusion and deception due to a high degree of phonetic, structural and visual similarity between the two competing packaging/names. The defendants have justification for the adoption of the impugned packaging except to encash upon the tremendous goodwill and reputation of the renowned, reputed and prior used trade mark/trade name/artistic packaging "BIKANERVALA' of the plaintiff.
(xxi). Apart form the civil liability which the defendants have entitled due to its aforementioned illegal and unlawful activities, the defendants are also liable to be prosecuted for commitment of criminal offences under the provisions of the copyright Act 1957, the Trade Marks Act, 1999 and the Indian Penal Code 1860.
(xxii). It is an established principle of law that trading must be M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 15/39 16 honest and fair. The law of passing off and infringement is designed to protect traders from any sort of unfair competition which consists in acquiring for oneself by means of false and misleading names/packaging the benefit of reputation already acquired by a rival trader which in this case, belongs to the plaintiff.
2. The defendant put a contest to the suit by filing a joint written statement.
3. In their written statement the defendants took various preliminary objections. The defendants pleaded that the suit is suit is false, frivolous, and vexatious; the plaintiff has concealed the material facts from the Court; the defendant's trade mark and related packaging material having distinctive colour schemes, get up, design, and lay out; the defendants has been openly, continuously, and extensively manufacturing, selling, and marketing its products bearing the trade mark OMBIKANER since the year 2002 and there is not even a single instance of confusion amongst the trade and public; due to continuous and extensive use, the trade mark OMBIKANER has become distinctive and exclusively associated with the defendant and M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 16/39 17 recognized by the trade and public as well known trade mark; the defendants therefore acquired proprietary rights in the trade mark OMBIKANER and is entitled to the exclusive right to use in relation to its products; the defendant has effected large and ready sales of its products and has spent a considerable sum on advertisement and sales promotion expanses; the defendant has acquired valuable reputation and goodwill in the said products and it is exclusively connoting and denoting to the members of the trade and public the defendant's products and none else.
4. On merits, the defendants denied all the allegations, contentions, and averments made by the plaintiff on which it had founded its cause of action stating the same to be false, frivolous and misconceived.
5. The defendants pressed into service explanatory facts to refute the claim of the plaintiff stating that the institution of suit by the plaintiff has been stated to be dishonest and with ulterior motives of encashing upon the goodwill and reputation of the defendants' trademark OMBIKANER. The act of the plaintiff speaks volumes about the apparent dishonestly on the part of the plaintiff. The plaintiff's intention to restrict the defendant for using their mark is M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 17/39 18 contrary to the fair business ethics, and the said act could be termed as nothing but an attempt to take an undue advantage of the defendant's long acquired, hard earned goodwill and reputation. Defendant's trade mark OMBIKANER is distinctive and capable of being distinguishing the defendant's goods from goods of others and more particularly from the plaintiff's goods. If any relief granted to the plaintiff will interfere with and prejudicially affect the defendant's commercial interest and would dilute the distinctive character acquired by the defendant's said trademark. The defendants have made out a very strong case for the refusal of the present suit. Even otherwise, it is a fit case for the exercise of the discretion of the Court in favour of the defendants and against the plaintiff. In view of the extensive, exclusive, and open use and reputation of the trade mark OMBIKANER, the defendants prayed for the discretion of the Court in their favour and against the plaintiff. The defendants prayed for the dismissal of the suit.
6. The plaintiff filed a replication in which the averments of the written statement were denied and the averments of the plaint were reiterated as true and correct.
7. With the available pleadings, the following issues were framed M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 18/39 19 vide minutes of proceedings dated 24.10.2008:
1. Whether the defendants are guilty of infringing the artistic label BIKANERVALA of the plaintiff registered under no. A58102? OPP
2. Whether the defendants are guilty of infringing the registered trade mark BIKANERVALA of the plaintiff registered under no. 1258663 in class 30 and 1056078 in class 42?
OPP
3. If issue nos. 1 and 2 are proved in affirmative, whether the plaintiff is entitled to the reliefs of injunction as prayed for in the suit? OPP
4. Whether the plaintiff is entitled to a decree for rendition of accounts? If so, to what amount? OPP
5. Whether the plaintiff is entitled to a decree for delivery up for purposes of destruction of impugned poly bags, labels, dies, boxes, cartons, paper bags, menu card, wrappers, banners, M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 19/39 20 hoardings and any other infringing copies or media used by the defendant? OPP
8. The plaintiff had examined Shri Baidyana Mishra, its Attorney as PW1. The witness has been cross examined by the defendants extensively. PE was closed on 04.05.2012 and the matter was posted for evidence of the defendant. The defendant did not lead any evidence despite opportunity and infact had abandoned appearing since 08.08.2012.
9. I have heard Shri R. K. Jain, Ld. Counsel for the plaintiff. No final arguments have been addressed by the defendants.
10. During the course of arguments Ld. Counsel for the plaintiff copiously read from the pleadings, evidence and documents to bring home his points of arguments.
11. Briefly stated, it has been submitted by the Ld. Counsel for the plaintiff that that it is thoroughly proved on the record that the defendants are guilty of infringing the artistic label BIKANERVALA of the plaintiff as well as are guilty of infringing the registered trade mark BIKANERVALA of the plaintiff. They have used the word Bikaner as their trade mark and the colour scheme of their packaging M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 20/39 21 is using the same combination of red and yellow in same/similar hues. This is apparent on mere look at the packaging of the plaintiff which is Ex. PW1/13 and that packaging of the defendants as Ex. PW1/16 to 18. The testimony of PW1 could not be impugned by the defendants despite long cross examination which has been done on two days. The violation of plaintiff's trade mark and copyright has been writ large on the part of the defendants and there is every likelihood and apprehension of the public being misled into buying the goods of the defendant under the garb of being the goods of the plaintiff. Thus the public is likely to be deceived. The defendant has presence in prominent locations like Dwarka, Vasant Kunj and R. K. Puram and thus apprehension of considerable damage to the goodwill of the plaintiff is threatened as well as the monetary loss the consequences of which will have a far reaching effect. Ld. Counsel for the plaintiff did not press the claim for rendition of accounts or damages.
12. No other point has been argued or urged. No case law has been cited.
13. I have considered the submission and examined the material on records. My findings on the various issues are as under: M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 21/39 22 Issue no. 1: Whether the defendants are guilty of infringing the artistic label BIKANERVALA of the plaintiff registered under no. A58102?
& Issue no. 2. Whether the defendants are guilty of infringing the registered trade mark BIKANERVALA of the plaintiff registered under no. 1258663 in class 30 and 1056078 in class 42?
14. There issues being interrelated are being taken up together.
15. The examination in chief of PW1, Sh. Baidyanath Mishra, is contained in his affidavit which is Ex. PW1/A. The witness has relied upon documents Ex. PW1/1 to Ex. PW1/20.
16. The examination in chief as contained in the affidavit which is Ex. PW1/A, is same as per the plaint. PW1 has been extensively cross examined.
17. Regarding the affidavit and its contents a suggestive question has been put in the cross examination and PW1 has stated admitted as correct that he has signed the affidavit filed in evidence after understanding the contents thereof.
18. PW1 has stated in his cross examination that he has been working with the plaintiff since October, 2007; his designation is Asst. Manager.
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19. PW1 has stated in his cross examination that he has not lodged a complaint regarding the misplacement of Power of Attorney dated 17.10.07. He volunteered to state that after filing of the affidavit and on scrutiny of papers, he had come to know that the original of the Power of Attorney MarkA dated 17.10.07 had been filed in another trade mark matter filed by the plaintiff. PW1 further stated in the cross examination that he did not recollect the exact date when he had filed the affidavit in evidence in this Court and volunteered to add that he had brought the certified copy of the said Power of Attorney obtained from the Court where the said had been filed. The same was shown to the Ld. Counsel for the defendant for comparison with MarkA. The record does not show any objection on the part of the defendants to the same.
20. In his cross examination PW1 further stated that eExcept one or two ladies partners all others are active partners in the plaintiff Firm. He also stated that he had not placed any documents except the deed of partnership where the signatures of all the partners appear on the same documents. He admitted the suggestion that the partnership deed dated 19.01.07 was not executed in his presence. However, he denied the M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 23/39 24 suggestion that he can not identify the signatures of the partners of the plaintiff firm or that he had never seen them signing and writing.
21. The power of attorney as tendered on record is Ex. PW1/1. It is given by one partner of plaintiff namely Shri Ramesh Kumar. The partnership deed Ex. PW1/2 shows that the plaintiff has ten partners of which Shri Ramesh Kumar is the one. As a partner is principal for himself and agent of all other partners, the power of attorney as tendered on record as Ex. PW1/1 has been validly given and executed. In fact PW1 had stated in his cross examination that he has not filed any written authorization in favour of Sh. Ramesh Kumar and he volunteered to state the position of law that every partner has inherent powers from other partners to do the things unless prohibited in the partnership deed.
22. A third party cannot impugn a document to which it is not a party by any oral evidence. If the document is to be impugned it is only through some other document. In fact, there is no specific denial in the written statement of the fact that M/s Bikanervala is a partnership firm consisting of Sh. Chetan Lal, Smt. Meera Devi, Sh. Radhey Mohan, Sh. Ramesh Kumar, Sh. Kailash Chand (HUF), Smt. M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 24/39 25 Naurati Devi, Smt. Sushila Devi, Sh. Bhagirath Aggarwal, Smt. Pravesh Lata & Smt. Kanchan Devi as its partners or that Sh. Baidyanath Mishra S/o Sh. Deo Nandan Mishra is the power of attorney holder of the plaintiff firm and is duly authorized by a power of attorney dated 17.10.2007 to file such a suit, sign and verify the pleadings. Thus between the parties this aspect is a nonissue. Taking a collective assessment of the evidence on record, on preponderance of probabilities, the partnership deed and the power of attorney is duly proved in the context of the present suit.
23. Further in his cross examination, the PW1 stated that he has not placed on record any documents showing that the plaintiff has been in the business of manufacturing of sweets and namkeen for the last 100 years. However the written statement reveals that there is no specific denial of this fact by the defendants.
24. PW1 stated in his cross examination that the representative of the plaintiff firm had collected the poly bags Ex. PW 1/16 to Ex. PW 1/18 from the shops of the defendants, however he stated that he can not tell as to how the said bags were obtained as to whether by purchasing some articles or on some pretext. In my view, how the M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 25/39 26 evidence has been obtained is immaterial. It is the settled law that evidence does not become tainted even when obtained by tainted or illegal means. The sanctity of evidence in both the cases remains0 the same albeit for the illegal acts some other legal consequences may be present, as provided by the law. The law on this aspect has been enunciated in the judgments of R. M. Malkani vs. State of Maharashtra AIR 1973 SC 157 and Court on its Own Motion vs. State & Ors. 151(2008) DLT 695 (DB) and a catena of case law.
25. A suggestion has been given to PW1 that the plaintiff itself got printed the said bags to create a cause of action and that the same are fabricated one. No such case has been set up in the written statement by the defendants and they cannot improve their case in the evidence. PW1 also denied the suggestion that that the defendants were using some other poly bags for packing and carrying the sweets which were different and having no resemblance with the polybags, Ex. PW 1/3, being used by the plaintiff. Now the moot question is what are those 'some other poly bags'. No such case has been set up in the written statement, no 'some other poly bags' have been placed on record by the defendants and the witness PW1 is not confronted with any such M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 26/39 27 'some other poly bags'.
26. PW1 has denied the suggestion that the ploy bags being used by the defendant had no deceptive similarity with the poly bags being used by the plaintiff.
27. PW1 stated in his cross examination that notice was given to the defendant for the infringement of trade mark of the plaintiff but I do not recollect whether the copy has been placed on record or not. He denied the suggestion to the contrary.
28. Further in his cross examination PW1 stated that he had stated in the plaint about the details of 22 cases against different person(s)/firms but he has not placed on record the documentary proof of the said litigations and that he I could not tell the present status and stage of all the above pending cases filed by the plaintiff. PW1 denied the suggestion that the plaintiff has been harassing the parties by filing false and frivolous suits and extorting undue money.
29. PW1 stated that he had seen and compared the mark being used by the defendant before filing of the suit. However he could tell orally the name of the defendant firm. He denied the suggestion that the plaintiff was not even aware of the name of the defendant and had M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 27/39 28 falsely dragged him into the litigation or that the suit has been filed against a wrong person. He also denied the suggestion that the defendant was using the name 'Om Bikaner' or that the suit has been filed against the defendant being a rival trader just in order to harass him and extract undue money from them. PW1 also stated that it was wrong to suggest that everybody is entitled to use the Trade Mark ' Bikaner' being a generic term. He stated that he was not presently aware and could not tell without consulting the relevant record whether the trade mark application no. 1258661 dated 01.01.2004 in class 30 has been abandoned. PW1 further denied the suggestion that the suit of the plaintiff is not maintainable and it has been filed in order to harass the defendant or that the defendants have never invaded the proprietary rights of the plaintiff.
30. Ex. PW1/10 is the registration certificate of the plaintiff's trade mark and it is in force till 01.01.2014. Ex. PW1/9 is the copyright registration of the the plaintiff in respect of the artistic design. Ex. PW1/13 is the plastic/polythene packing of the plaintiff which has its unique colour combination with its trade mark and special get up and design. Though the word 'Bikaner' is a geographical indicator and has M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 28/39 29 reference to the origin of sweets and namkeens, it is not subject to monopoly by a single person as it is in public domain. No one can claim an exclusive right in a single colour as such an act would amount to deprivation of the public at large to the use of such colour, but a combination of colours in a special get up, shape/pattern or design can be subject matter of exclusivity of ownership or monopoly. As such the exclusive right of the plaintiff to the word mark 'Bikanervala' or copyright in the artistic work is established and the plaintiff is entitled to use the same to the exclusion of others. There is ample evidence on record that the plaintiff has constantly and continuously used its trade mark and artistic design which is manifested by bills, advertisements, promotions etc.
31. A trade mark is in fact a pseudo intellectual property. This is for the reason that a trade mark is not respected for its artistic quality or for the novelty of its presentation. A trade mark owes its justification to its ability to distinguish the goods and services of its proprietor, as flowing from that particular person. Thus it is a source identifier for the goods and services. While other IPRs have a limited life span of monopoly of its proprietor and thereafter they pass into the public M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 29/39 30 domain, it is just the other way round for a trademark. The trade mark remains the monopolistic property of its proprietor in perpetually (provided its registration is kept alive, if registered, or if unregistered it is used in connection with goods and service continuously). A trade mark, thus in the course of its usage, becomes the repository of goodwill of its proprietor. With the passage of time there is value addition in the trade mark commensurate with the promotion, quality of goods or services and host of other factors relevant to the reputation and goodwill of the business. Thus trade mark and goodwill become more or less synonyms of each other.
32. Plaintiff's case is of infringement as well as passing off. Now the question arises as to what is 'infringement' and what constitutes 'passing off'. A fine distinction has been drawn between what are the salient distinguishing features of an action for passing off visàvis an action for infringement in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SUPREME COURT 980 as held under:
"...While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 30/39 31 another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered, trade mark for the vindication of "the exclusive right to the use of the trade mark in relation to those goods" (Vide S. 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is in imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, 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 M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 31/39 32 would be immaterial; whereas in the case of 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.
29. When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of' trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide S. 21). A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has some times been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive ". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks the degree of resemblance which is necessary to exist to cause deception not being M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 32/39 33 capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff."
33. In Ruston and Hornby Ltd. v. Zamindara Engineering Co. AIR 1970 SUPREME COURT 1649 it has been held "In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusion or M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 33/39 34 deception arising from similarity of marks is the same both in infringement and passingoff actions."
34. In Parle Products (P) Ltd. v. J. P. and Co., Mysore AIR 1972 SUPREME COURT 1359 it has been held:
'In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. It is of no use to note on how many points there is similarity and in how many others there is absence of it."
35. Thus the yardstick is based on the reality test--as a consumer in the market. If he is likely to be deceived or taken for a ride, then there is deceptive similarity. Thus, these are the broad features of a particular mark, its general or overall impression that is the relevant consideration. These are the broad features and not the meticulous details that remain in the mind of the consumer. There is also the factor M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 34/39 35 of imperfect recollection at play. Thus side by side comparison of two marks is not the true test. The numerical count of similarities or dissimilarities is also immaterial.
36. In the instant case the use by the defendants of the similar word in its mark as 'Bikaner' ; using the same two colours of similar hues i.e. red and yellow in its packaging and the overall dressup or the décor of its packaging on white background gives an impression of the packaging of the plaintiff to an ordinary prudent man of normal intelligence and faulty of imperfect recollection. The overall getup and aura of the mark of the defendants visàvis the mark of the plaintiff is so similar that an ordinary person is likely to be deceived taking the packaging of the defendant as that of the plaintiff and possibility of association cannot be ruled out by a consumer of ordinary prudence and imperfect recollection.
37. In passing off action it is not the actual deception that is material. It is the likelihood of deception that is material. It is riding on the goodwill of someone else by creating a deception. It is making expense at the cost of other. It is passing one's own goods or service as if they come from some other source. 'Thou shall not steal', says the M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 35/39 36 Bible. This applies to trade marks and trade names. It is not permissible under the law for any other person to start selling goods or rendering services either using the same name or dishonestly imitating the trade mark of another person as to cause injury to that person and unjustifiably enrich himself at the cost of that person who had already been using that name and had acquired a certain reputation with the passage of time and on account of the quality of the goods sold or services rendered by him. Any attempt on the part of a person to enrich himself by riding upon the goodwill generated by any other person needs to be curbed by the court whenever approached by the aggrieved party in this regard.
38. In view of the material on record and above discussion the infringement of trade mark, passing off and infringement of the copyright on the part of the defendants is made out on preponderance of probabilities.
39. Thus the finding on these issues is returned in favour of the plaintiff and against the defendants.
Issue no. 3. If issue nos. 1 and 2 are proved in affirmative, whether the plaintiff is entitled to the reliefs of injunction as prayed for in the suit?
M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 36/39 37
40. In view of the findings on the issue nos. 1 and 2 and also on the aspect of passing off the entitlement of the plaintiff for the reliefs of injunction is a logical corollary.
Issue no. 4. Whether the plaintiff is entitled to a decree for rendition of accounts? If so, to what amount?
41. As this relief has not been pressed by the plaintiff, the issue has lost its substratum.
Issue no. 5. Whether the plaintiff is entitled to a decree for delivery up for purposes of destruction of impugned poly bags, labels, dies, boxes, cartons, paper bags, menu card, wrappers, banners, hoardings and any other infringing copies or media used by the defendant?
42. In view of the findings on the above issues, more particularly the issue nos. 1 and 2, this issue is answered in favour of the plaintiff.
RELIEF
43. I, therefore, after considering the material on record and findings on the issues, grant the following reliefs to the plaintiff:
(i). A decree of permanent injunction restraining the defendants, their agents, representatives, assigns, officers, partners, servants, M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 37/39 38 administrators etc. from infringing the plaintiff's artistic label 'BIKANERVALA' copyright registered under NO. A58102/2000 either in whole or in part etc. in any manner deceptively similar or nearly resembling the plaintiff's artistic work in any way so as to constitute its substantial reproduction or infringement of the plaintiff's copyright.
(ii). A decree of permanent injunction restraining the defendants, their agents, representatives, assigns, officers, partners, servants, administrators etc. from using the word mark 'BIKANERVALA' its logo/artistic work either in whole or in part etc. in any manner substantially similar or nearly resembling the plaintiff's trade mark in connection with the business of sweets, namkeens etc. or similar business in any manner so as to constitute the infringement of the plaintiff registered trade mark or in such manner as to the deceptively similar (either phonetically, visually or pictorially or any combination thereof) so as to constitute passing off of their goods of sweet/namkeen etc. (or any allied or cognate goods) as if they originate from the plaintiff or to show any association with the plaintiff.
(iii). A decree for orders of delivery up of infringing and other M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 38/39 39 incriminating material like publicity/promotional material, letter heads/printed material, packing material, boards/banners etc. by the defendants, their agents representatives, assigns, officers, partners, servants, administrators etc. to the plaintiff for destruction.
(iv). The plaintiff is awarded costs of this suit, which I quantify at Rs. 30,000/ (Rupees Thrity Thousand Only) consolidated.
44. Decree sheet be drawn accordingly.
45. After necessary compliance, the file be consigned to the Record Room.
Announced in the Open Court On this 11th day of October, 2012 (MAN MOHAN SHARMA) ADJ (Central)1, Delhi M/s Bikanervala vs. M/s Bikaner & Ors. TM. No. 107/2011 Page 39/39