Delhi District Court
M/S Jai Products vs M/S Amber Enterprises on 19 February, 2020
IN THE COURT OF DISTRICT JUDGE
(COMMERCIAL COURT2)
SOUTH DISTRICT, SAKET COURTS, : NEW DELHI
TM No. 26/11 47/2016
M/s Jai Products ..........plaintiff
2938, Arya Pura,
Old Sabzi Mandi,
Delhi110 007
Versus
M/s Amber Enterprises ..........respondent no. 1
9940, Nawab Ganj,
Azad Market,
Delhi110006
M/s Rajshri Confectionery ..........respondent no. 2
9940, Nawab Ganj,
Azad Market,
Delhi110006
Date of institution of suit : 04th December 2010
Date of arguments : 15th February 2020
Date of judgment : 19th February 2020
JUDGMENT
1. This is a suit for permanent injunction restraining the defendant and his agents for using the Trademark CHHOTA DON MOONG DAL LABEL & CHHOTA DON NAMKEEN HARA MATTAR PACKAGING LABELS or any other M/s Jai Products vs. M/s Amber Enterprises & Anr. Page 1 of 13 TM 26/11 47/16 Packaging/Trade Mark/Label identical with or deceptively similar thereto in relation to their impugned goods and business of Namkeens & Confectionery Products and related/allied products and infringing the registered trade marks of the plaintiff and from passing off the goods of the defendants as that of the plaintiff.
2. Case of the plaintiff is that it is engaged in the business of manufacturing and marketing of Namkeens and Confectionery, Saunf, Sugar Boiled Confectionery, Biscuits and other allied and related goods and it adopted the Trade Marks JAI MOONG DAL LABEL and JAI NAMKEEN HARA MATTER LABEL in the year 2003. It is further stated that the plaintiff has trade mark registration in India under no. 1389295 in class 30. It is further stated that the plaintiff has Copyright registration for JAI MOONG DAL LABEL under no. A97886/2013 and Copyright Registration for JAI NAMKEEN HARA MATTER LABEL under no. A96787/2013. It has also been stated that the plaintiff's said trade mark/labels have become distinctive and associated with the goods of the plaintiff on account of its long, continuous extensive and exclusive user since its adoption in the year 2003. It has also been stated that the Plaintiff has handsome sales since its inception, adoption and users thereof and that the plaintiff has also widely advertised its products under the said trade marks/labels and plaintiff's said trade mark/labels are well known within the meaning of Section 2 (1) (zg) of the Trade Marks Act, 1999. It was also stated that the plaintiff's said trade marks/labels have become sufficiently distinctive in the trade to be capable of protection. That it was also contended that due to plaintiff's M/s Jai Products vs. M/s Amber Enterprises & Anr. Page 2 of 13 TM 26/11 47/16 statutory as well as common law rights, goodwill, reputation, all the exclusive rights, no one can be permitted to use the same or any other deceptively similar trade mark/label/copyright thereto as that of the plaintiffs without the leave and license of the plaintiff.
3. It is also the case of plaintiff that the defendants M/s. Amber Enterprises & M/s Rajshri Confectionery are also engaged in the same business and goods of the plaintiff i.e. manufacturing and marketing confectionery including Namkeens and other allies and related goods. It is the case of plaintiff that in the month of July, 2010, it came to its knowledge that the defendant has started using the impugned trade mark/label CHHOTA DON MOOONG DAL LABEL and CHHOTA DON NAMKEEN HARA MATTER LABEL with color combination and packaging similar / identical with the trade mark / label/color combination / packaging of the plaintiff. The defendants are stated to be selling their goods in Delhi and in the other parts of the country. It is also contended by the plaintiff that the defendant is not the proprietor of the said impugned trade mark /label with impugned color combination packaging and the defendant has imitated and adopted the overall getup of the plaintiffs trade mark/ label / color combination / getup / packaging, out of greed and with a view to take advantage and to trade upon the tremendous goodwill and reputation of the plaintiff and to cause deception and confusion in the market and to pass off their spurious goods as that of the plaintiff.
M/s Jai Products vs. M/s Amber Enterprises & Anr. Page 3 of 13 TM 26/11 47/16
4. It is stated that the defendants, by their acts, have been violating the proprietary rights of the plaintiff and this infringement is causing huge losses to the plaintiff, both in the business as well as reputation. It is further stated that on 16.10.2010, plaintiff also issued a Cease and Desist Notice to the defendants which was responded by them through vague and ambiguous reply in the first week of November, 2010. It is contended that the defendants are carrying out their business, under the impugned trademark/labels, in the South Delhi i.e. within the territorial jurisdiction of this Court. Consequently, having left with no option, plaintiff filed the present suit for grant of permanent injunction restraining the defendants from infringement of its registered trademark, passing off, infringement of copyright, rendition of accounts, damages and delivery up etc.
5. On 06.12.2010, Learned Predecessor of this Court passed an exparte interim order whereby the defendants and their representatives were restrained from using, selling, soliciting, exporting, displaying, advertising by visual, audio, print mode or by any other mode or manner or dealing in or using the impugned labels bearing the artistic features or colour combinations on their packaging which may be identical with and / or deceptively similar on their packaging in relation to the business of Namkeens & Confectionery Products and related/allied products and from doing any other acts or deed amounting to or likely to Infringing and/or violating plaintiff's copyrights in the said trade mark/label JAI MOONG DAL LABEL & JAI NAMKEEN HARA MATTER LABELS.
M/s Jai Products vs. M/s Amber Enterprises & Anr. Page 4 of 13 TM 26/11 47/16
6. On service of summons, defendants appeared before the court through their counsel Sh. Jagdish Kumar, Advocate on 24.01.2011. On 04.04.2011, defendants filed Written Statement. Thereafter, plaintiff filed an application for amendment of the plaint under Order VI Rule 17 CPC on 06.08.2011 which was allowed by the Learned Predecessor of this court on 22.09.2011.On 19.11.2012, plaintiff filed replication. Vide order dated 31.01.2013, application under Order XXXIX Rule 1 & 2 CPC was disposed off and the interim order dated 06.12.2010 was made absolute.
7. Another application filed by the plaintiff on 05.03.2014 was disposed off subject to cost of Rs.3000/ on the plaintiff and the parties were allowed to file amended pleadings. Defendants filed amended Written Statement alongwith the same an application under Order VII Rule 10 & 11 CPC was filed and plaintiff also filed an application under Order XIII Rule 1 read with Order VII Rule 14 CPC. Then, perusal of the record shows that w.e.f. 21.11.2015 till 07.07.2017, many adjournments were obtained by the parties for exploring the possibility of settlement. On 07.07.2017, it was informed that the settlement talks did not make any headway and Court heard argument on the application under Order VII rule 10 & 11 CPC moved by the defendants seeking rejection of the plaint on the ground of territorial jurisdiction. The said application was dismissed on 07.10.2017.
8. Defendants vide their written statement took the preliminary objections with regard to the maintainability of the suit on the grounds of absence of any cause of action; that there is no similarity either visual, as well as phonetic in the trademarks M/s Jai Products vs. M/s Amber Enterprises & Anr. Page 5 of 13 TM 26/11 47/16 of the parties; that defendants are the prior user of the trademark CHHOTA DON; and that colour combination, getup of the pouches and packaging material and even the font of the plaintiff's as well as defendants' trademarks are easily distinguishable and as such there is no question of any confusion and deception.
9. On merit, defendants denied the allegations made by the plaintiff while submitting that the trademark "CHHOTA DON" is being used by them exclusively, openly, uninterruptedly, and continuously for the last 5 years being the prior user of the same along with the alleged colour schemes; that the source of the products of the defendants are clearly written on the packaging material and even the writing style of "CHHOTA DON" is entirely different from the plaintiff; that the defendants never used the trademark of the plaintiff at any point of time; that the defendants vide their reply to the notice of the plaintiff, requested the plaintiff to withdraw the legal notice and not to initiate any action; and that this Court has no territorial jurisdiction since neither the plaintiff nor the defendants have their place of work within the jurisdiction of this Court and even the plaintiff has not filed any documentary evidence to prove that the defendants' goods are being sold within the jurisdiction of this Court. Defendants have prayed for dismissal of the suit.
10. On 23.12.2017, following issues were framed by the Learned Predecessor of this court:
1. Whether the plaintiff is the registered owner of the trademark/label/packaging Jai Moong Dal with Label? OPP M/s Jai Products vs. M/s Amber Enterprises & Anr. Page 6 of 13 TM 26/11 47/16
2. Whether the plaintiff is proprietor of the Copyright Jai Moong Dal with Label and Jai Namkeen Hara Mattar Labels?
OPP
3. Whether the plaintiff is entitled to common law right of the Trademark/label/trade name Jai Moong Dal with Label and Jai Namkeen Hara Mattar Labels? OPP
4. Whether the defendants are guilty of infringement of Trademark as well as copyright and passing off? OPP
5. Whether the plaintiff is entitled to any damages and/or rendition of account, if so, at what rate?OPP
6. Relief.
11. To prove its case, plaintiff produced Sh. Sumit Rohira, PW1 to tender his affidavit in evidence on 17.05.2018. Plaintiff closed its evidence and since no one appeared on behalf of the defendants, defendants were proceeded exparte on 06.02.2019 and the case was listed for final arguments. After six adjournments, the case was received by way of transfer by this court on 10.02.2020.
12. This court has heard arguments advanced by Mohd. Sazid, counsel for the plaintiff and perused the materials available on record. Issuewise findings of this Court are as under:
ISSUE NO.1 Whether the plaintiff is the registered owner of the trademark/label/packaging Jai Moong Dal with Label? OPP M/s Jai Products vs. M/s Amber Enterprises & Anr. Page 7 of 13 TM 26/11 47/16
13. Onus to prove this issue is on the plaintiff. In the plaint it has been pleaded by the plaintiff that it had adopted the trademark Jai Moong Dal with Label & Jai Namkeen Hara Matter with Label and has been using the same since the year 2003. PW1 Sh. Sumit Rohira, in his deposition, has stated that to acquire the statutory rights over the trademark/ label Jai Moong Dal with Label & Jai Namkeen Hara Matter with Label, plaintiff had filed applications for registration with the Trademark Registry. Ex.PW1/3 representation sheet along with status report with regard to the trademark Jai Moong Dal with Label shows that the said trademark stands registered in favour of the plaintiff vide Trade Mark No.1389295 under class
30. However, with regard to the trademark Jai Namkeen Hara Mattar with Label, it has been deposed by PW1 that the registration application is still pending.
14. Testimony of PW1 has remained unrebutted and unchallenged as defendants have failed to appear to cross the said witness. No evidence was led by the defendants to disprove the version of the plaintiff. In the absence of any cross examination or any positive evidence on behalf of the defendants, this issue is decided in favour of the plaintiff.
ISSUE NO.2 Whether the plaintiff is proprietor of the Copyright Jai Moong Dal with Label and Jai Namkeen Hara Mattar Labels?
OPP
15. Onus to prove this issue was on the plaintiff. Plaintiff has claimed to have M/s Jai Products vs. M/s Amber Enterprises & Anr. Page 8 of 13 TM 26/11 47/16 acquired the copyrights over the trademark/ label Jai Moong Dal with Label & Jai Namkeen Hara Matter with Label. PW1 Sh. Sumit Rohira has deposed that plaintiff is the owner and proprietor of the artistic features involved in the above trademark / label/ packaging in a distinctive getup, make up and in an artistic manner and holds copyright therein. He deposed that the artistic features of the said trademarks/ labels are original in character. He further deposed that Jai Moong Dal with Label is duly registered as Artistic Work under No.A97886/2013 and Jai Namkeen Hara Mattar Label is registered as Artistic Work No.A96787/2013. Copies of the request on Form No.TM60 were placed on record as MarkA.
16. Defendants claimed that they have been using the trademark CHHOTA DON with Label with regard to his business and the same is entirely different from the plaintiff's trademark. Testimony of PW1 has gone unrebutted and unchallenged since the defendants did not cross examine the said witness. Even no evidence was led by the defendants in support of their contentions. Consequently, this issue is also decided in favour of the plaintiff.
ISSUE NO.3 Whether the plaintiff is entitled to common law right of the Trademark/label/trade name Jai Moong Dal with Label and Jai Namkeen Hara Mattar Labels? OPP
17. Onus to prove this issue was also on the plaintiff. In this regard, counsel for plaintiff submitted that original sale bills/invoices of the plaintiff and its dealers/distributors, original purchase bills/invoices of the plaintiff, original M/s Jai Products vs. M/s Amber Enterprises & Anr. Page 9 of 13 TM 26/11 47/16 advertisement/promotion material of the plaintiff with respect to its trademark/lable/packaging alongwith copy of Form DVAT 06 are filed on record as Ex. PW1/10 (colly.) to Ex. PW1/13 (colly.) These documents prove the user of the plaintiff, reputation and goodwill thereto and thus, the common law right of the plaintiff. Testimony of PW1 has gone unrebutted and unchallenged since the defendants did not cross examine the said witness. Even no evidence was led by the defendants in support of their contentions. Consequently, this issue is decided in favour of the plaintiff.
ISSUE NO.4 Whether the defendants are guilty of infringement of Trademark as well as copyright and passing off? OPP
18. Onus to prove this issue was again on the plaintiff, PW1 has stated that the defendant has adopted and started using the impugned trademark/label CHHOTA MOONG DAL LABEL and CHHOTA DON NAMKEEN HARA MATTAR LABEL after copying it from the plaintiff's trademark/label and defendants have been infringing the registered trademark of the plaintiff and registered copyright of the plaintiff as well as are passing off its goods as that of the plaintiff and violating the plaintiff's statutory and common law right. Testimony of PW1 has gone unrebutted and unchallenged. No evidence was led by the defendants in support of their contentions. In the result, this issue is also decided in favour of the plaintiff. M/s Jai Products vs. M/s Amber Enterprises & Anr. Page 10 of 13 TM 26/11 47/16 ISSUE NO.5 Whether the plaintiff is entitled to any damages and/or rendition of account, if so, at what rate?OPP
19. Onus to prove this issue was on the plaintiff. It is submitted that prayer was for rendition of accounts from defendants so there was no relief asked for the damages and it is for the Court to grant punitive as well as compensatory damages, which the Courts are regularly granting. Plaintiff has not specified as to how much loss was caused to it and even there is nothing on record to show the loss caused by the defendant to the plaintiff. Ld. Counsel appearing for the plaintiff submits that in exparte cases where defendant has deliberate stayed away from the proceedings, there are many precedents wherein damages have been awarded by Hon'ble Delhi High Court and one of them is Cartier International AG & Others vs Gaurav Bhatia & ors. CS (OS) No.1317/2014 wherein following observations were made:
"55. It appears from the conduct of the defendants who have deliberately stayed away from the present proceedings with the result that an enquiry into their accounts for determination of damages could not take place.
56. It is well settled that damages in such cases must be awarded and a defendant, who chooses to stay away from the proceedings of the Court, shold not be permitted to enjoy the benefits of evasion of Court proceedings. Any view to the contrary would result in a situation where the defendant who appears in Court and submits its account books would be liable M/s Jai Products vs. M/s Amber Enterprises & Anr. Page 11 of 13 TM 26/11 47/16 for damages, while a party which chooses to stay away from Court proceedings would escape the liability on account of failure of the availability of account books.
57. A party who chooses not to participate in Court proceedings and stay away must, thus, suffer the consequences of damages as stated and set out by the plaintiffs as the Court in the present case are dealing with counterfeiting products. It is rank case of dishonestly where the piracy committed by the defendants is apparent on the face of the record. It is just like printing of duplicate currency. The counterfeiter can never be allowed to do such illegal activities. Cheating can never be condoned by the Court unless the accused is punished.
58. SubSection (1) of Section 135 of the Trade Marks Act, 1999 provides that relief may be granted in any suit for infringement or for passing off includes injunction and at the option of the plaintiff, either damages or an account of profits. The plaintiffs have chosen the route of damages. The plaintiffs in the present matter while establishing in evidence have been able to prove the damages suffered by them. Materials have been filed and proved accordingly. The damages which they claim are attributable to flagrant infringement."
20. In the present case also defendants have failed to appear and no accounts are rendered by defendants, therefore, having regard to the totality of facts and circumstances, this Court is of the view that lump sum damages @ Rs. Two lakhs would be sufficient to compensate the complainant for the loss. Consequently, this M/s Jai Products vs. M/s Amber Enterprises & Anr. Page 12 of 13 TM 26/11 47/16 issue is decided accordingly in favour of the plaintiff. RELIEF
21. In view of above said findings of the aforesaid issues, this Court finds that plaintiff is entitled to the decree of permanent injunction restraining the defendants by itself as also through its individuals proprietor, partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on their behalf from using selling soliciting, exporting displaying, advertising by visual, audio print mode or by any other mode or manner or dealing in or using the impugned CHHOTA DON MOONG DAL LABEL & CHHOTA DON NAMKEEN HARA MATTER PACKAGING LABELS or any other packing/trademark/label identical with and/or deceptively similar thereto in relation to their impugned goods and business of Namkeens & Confectionery Products and related/allied products and from doing any other acts or deed amounting to or likely to finding and/or violating plaintiff's copyrights in the said trade mark/label JAI MOONG DAL LABEL & JAI NAMKEEN HARAMATTER LABELS as well as decree for damages in the sum of Rs. Two lakhs. Order accordingly. Decree sheet be prepared. File be consigned to record room.
(announced in the
open Court
on 19th February 2020) VINAY KUMAR KHANNA
District Judge
(Commercial Court02)
South Distt., Saket, New Delhi
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TM 26/11 47/16