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Delhi District Court

Sh. Amar Tulsiyan vs Harshil Jayeshbhai Shah on 30 September, 2022

         IN THE COURT OF DISTRICT JUDGE
              (COMMERCIAL COURT-02)
     SOUTH DISTRICT, SAKET COURTS: NEW DELHI

                        CS (COMM) 379/2020

Sh. Amar Tulsiyan                                          ..........plaintiff
Proprietor Wizard Fragrances
402, Gallantt Landmark,
Vijay Chowk, Bank Road,
Gorakhpur, Uttar Pradesh - 273001 (UP)

Versus

Harshil Jayeshbhai Shah                                     ......defendant
Flat no. 202, Tower-G, The Garden City,
Sadhu Vasvani Raod,
Rajkot-360005,Gujarat .

                                     Date of institution      :       09.12.2020
                                     Date of submissions      :       30.09.2022
                                     Date of judgment         :       30.09.2022


                       JUDGMENT

1. This is a suit for permanent injunction for restraining the defendant and its agents from infringing the Trademark "NIINE, NINE and 9". Case of the plaintiff in brief, is that since 2017, plaintiff honestly and bonafidely adopted trademarks NIINE, NINE & 9 for expansion of his business in relation to certain food products and personal hygiene products and applied for registration thereof under the provisions of Trade Marks Act, 1999 on 07.07.2017 in relation to goods and services failing in different class. Subsequently, some more applications for registrations of the said trademarks for different goods and services were filed. It is stated that plaintiff has trademark Amar Tulsiyan vs Harshil Jayeshbhai Shah 1 registration in India under the Trade Marks Acct, 1999. Plaintiff executed a Licence Agreement dated 11.05.2018 in favour of M/s Shudh Plus Hygiene Products 403, Gallant Landmark, Vijay Chowk, Bank Road Gorakhpur, Uttar Pradesh-273001 with respect to use of trademarks NIINE, NINE and 9 for the goods falling in class 5 and 39. It is stated that M/s Shudh Plus Hygiene Products is a Partnership Firm having partners namely Mr. Amar Tulsiyan, Mr. Gaurav Bathwal and Mr. Sharat Khemka. It is stated that plaintiff is also Managing Director of K.G. Pan Products Pvt. Ltd. and Shudh Plus Hygiene Product Private Ltd. It is further stated that after requisite statutory requirements and preparation, the said goods and services of the plaintiff were launched by the plaintiff under the said trademark/trade dress/packaging combination of colors through M/s Shudh Plus Hygiene Products after entering into Agreement on 11.05.2018.

2. Case of the plaintiff is further that M/s Shudh Plus Hygiene Products is mere licensee/permitted user of the plaintiff. Any such use of the said trademark trade dress/packaging combination of colors by M/s Shudh Plus Hygiene Products shall be deemed to be used by the plaintiff as per Section 48(2) of the Trade Marks Act, 1999. It is stated that since July, 2017, the plaintiff has been honestly, bonafidely and in the course of trade using the said trademarks continuously, commercially, openly and exclusively in the course of business as proprietor thereof. It is stated that plaintiff has built up a valuable trade, goodwill and reputation there under. It is averred that plaintiff promotes and advertises it's said goods and services under his said trademarks through his domain name http://www.niine.com and that plaintiff maintains a formidable presence on the Internet and said Amar Tulsiyan vs Harshil Jayeshbhai Shah 2 trademarks on the plaintiff's said website/domain name. It is stated that the said website contains extensive information about the goods and services rendered and provided by the plaintiff under his said trademarks. It is stated that the plaintiff is the sponsor for the said trademarks of the IPL TEAM RAJASTHAN ROYALS.

3. It is further the case of the plaintiff that the defendant is engaged in the business of manufacturing, marketing and supplying of Sanitary Pads, sanitary preparations for medical purposes, Hygienic products, personal hygiene products. hygienic aids, sanitation aids, sanitation products, medicinal products FMCG (fast moving consumer goods) products, disinfectants: lifestyle products and allied/related/cognate goods and services. It is stated that the defendant has adopted and intends to use the trademark Nine Plus. It is submitted that impugned trademark is deceptively similar to the plaintiff's trademark NIINE, NINE, 9 and defendant has adopted and intends to use and is soliciting and networking to use the same in relation to his impugned goods and business and is otherwise dealing with it in the course of trade without the leave and license of the plaintiff. It is stated that the defendant has no right to act in such manner in relation to its impugned goods and business or for any other specification of goods and business whatsoever being in violation of the plaintiff's rights therein. It is stated that plaintiff learnt about the defendant and his impugned adoption and intended use of the impugned Trade Mark Nine Plus in the last week of September, 2020 when the plaintiff through its attorney came to know about the trademarks application filed by the defendant under no. 4567105 in Class 05 Amar Tulsiyan vs Harshil Jayeshbhai Shah 3 for the impugned trademark. It is stated that defendant has filed applications in every class with the intention to hoard registration as well as to ride upon the goodwill and reputation with intention to launch the impugned products under the impugned trademark soon. It is further stated that plaintiff is entitled to take appropriate step to file opposition/s to such application/s. It is stated that on further enquiry, it was found that the defendant has started soliciting about its products under the impugned trademark in the markets of South Delhi area. It was also revealed that the defendant has ordered for packaging for the goods under the impugned trademark.

4. It is pleaded that defendant is soliciting/networking to various other dealers/shopkeepers/retailers including in South Delhi area viz. Saket, Mehrauli, Malviya Nagar, Hauz Khas and adjoining areas etc. It is stated that such soliciting, networking amounts to user of the impugned trademark by the defendant and that this amounts to the impugned infringing activities. It is averred that the impugned trade mark adopted and intended to be so used by the defendant in relation to their impugned goods and business are identical with and deceptively similar to the plaintiff's said trade mark in each and every respect including phonetically visually, structurally in its basic idea and in its essential features. It is stated that defendant intends to use all kind of false description on its impugned goods to wrongly link the impugned goods with the plaintiff and to wrongly convey to the public and customers that the impugned goods are coming from the source and origin of the plaintiff. It is further stated that the impugned goods and business thereunder are also of the same/similar/allied/cognate to that of the plaintiff's. Such Amar Tulsiyan vs Harshil Jayeshbhai Shah 4 soliciting, networking amounts to user of the impugned trademark by the defendant and this amounts to the impugned infringing activities. It is stated that the cause of action is explained in para 28 of the plaint. It is stated that the plaintiff is having prima facie case, balance of convenience in its favour and there is irreparable loss and injury due to the acts and conduct of the defendant. Hence, present suit for permanent injunction for restraining the defendant and its agents from infringing the Trademark has been filed.

5. On 09.12.2020 an application u/o XXXIX rule 1 & 2 CPC was moved and on 10.12.2020 exparte interim injunction was granted in favour of plaintiff and defendant by himself as also through his agents, representatives, distributors, assignees, heirs, successors, stockists and all other acting for and on their behalf was restrained, till next date of hearing, from soliciting, networking, manufacturing, marketing, intended use, using, selling, displaying, advertising or by any other mode or manner dealing in or using the defendant's impugned trademark Nine Plus or soliciting/using it through any online medium or online websites or through any online platforms or through any social medias or any other identical with and/or deceptively similar word/mark/label to the plaintiff's trademarks NIINE, NINE, 9 in relation to their impugned goods and business of Sanitary, Pads, sanitary preparations for medical purposes, hygienic products, personal hygiene products, hygienic aids, sanitary aids, sanitation aids, sanitation products, medicinal products, FMCG (fast moving consumer goods) products, disinfectants; lifestyle products and allied/related/cognate goods and services and from doing any other acts or deeds amounting to or likely to Amar Tulsiyan vs Harshil Jayeshbhai Shah 5 infringement of the plaintiff's trademarks; Passing off and violation of the plaintiff's common law rights in the plaintiff's said trademarks and violation and dilution of the plaintiff's rights in its trademarks.

6. It may be noted that defendant never appeared before this Court despite service. On 08.03.2021, counsel for plaintiff filed affidavit regarding compliance of Order XXXIX Rule 3 CPC alongwith postal receipts. He also filed track report to show that defendant was served on 18.12.2021. Since, there was no appearance on behalf of defendant despite service, he was proceeded exparte on 28.03.2021.

7. This court has heard submissions advanced by Sh. Siddharth Swain and Sh. Arpit Singh , Learned counsels appearing for the plaintiff and perused the material on record.

8. Ld. Counsel for plaintiff submitted that in view of the plaintiff's extensive user extensively, exclusively, distinctly and sales thereof and promotions advertisement thereto and in view of statutory rights of trademark registrations and copyright protections and resultant reputation, goodwill and all the statutory rights and common law rights, the plaintiff is entitled for decree in terms of reliefs prayed in the plaint against the defendant. It is further submitted that as defendant is exparte and rendition of account is not possible and thus, plaintiff is entitled for compensatory as well as punitive damages. Ld. Counsel for the plaintiff has placed reliance upon judgments of Polo Lauren Company vs Rohit S. Bajaj and ors. (CS (OS) 1763/2005; American Home Products Corporation vs Mac Laboratories Pvt ltd. AIR 1986 SC 137; Midas Hygiene Industries Pvt Ltd. Vs Sudhir Bhatia 2004 (73) DRJ 647 (SC) and Century Traders vs Amar Tulsiyan vs Harshil Jayeshbhai Shah 6 Roshan Lal Duggar AIR 1978 DELHI 250 for the decree of permanent injunction in view of infringement of trademarks, copyrights and passing off by the defendant in favour of plaintiff and against the defendant. It is prayed that the defendant be permanently injuncted from using the impugned trademark/label NinePlus or any other mark i.e. confusingly and deceptively similar to that of the plaintiff's trademark NIINE, NINE and 9.

9. To prove its case, plaintiff examined Sh. Inish Roy s/o Sh. Gulshan Roy as PW-1, who tendered in evidence his affidavit as Ex. PW1/A and relied upon Representation of trademark/label of plaintiff Ex. PW1/1; Representation of the defendant's impugned trademark Ex. PW1/2; status, Registration, respective pages of trademark Journal (showing advertisement/publications of the registered trademarks) of the plaintiff's registered trademark/label under application no. 3587036 in class 05 Ex. PW1/3 to Ex.PW1/3B ; list of plaintiff's trademarks is Ex. PW1/4; the list of plaintiff's copyright applications Ex. PW1/5 and applications dated 02.07.2019; 02.07.2019; 08.07.2019; 08.07.2019; 11.07.2019; 11.07.2019 alongwith respective NOCs are Ex. PW1/5A to Ex. PW1/5F; copy of Readily available sales figures of the plaintiff Ex. PW1/6 and Ex. PW1/6A; copy of computer print out of 36 Sales invoices and bill of supply of the plaintiff (during the period between 2018­2019) with respect to the NINE and NINE Brand Ex. PW1/7­1 to 7­36; copy of licence agreement dated 11.05.2018 executed between plaintiff and M/s Shudh Plus Hygiene Products Ex. PW1/8; copy of the screenshots from the plaintiff's website www.niine.com Ex. PW1/9 and 9 A; copy of Amar Tulsiyan vs Harshil Jayeshbhai Shah 7 advertisement bills at page 79 to 238A (during the period between 2016, 2018­2019) related to the plaintiff's brand Ex. PW1/10­1 to 10­160; copy of advertisements at page no. 239 to 311 of the plaintiff's brand Ex. PW1/11­1 to 11­72 ; copy of the Special Power of Attorney dated 04.11.2019 executed in favour of Sh. Inish Roy by the plaintiff Ex. PW1/12; status page of defendant's impugned trademark under application no. 4567105 in class 05 Ex. PW1/13 and copy of the notice of opposition filed by the plaintiff against defendant's impugned trademark under Application no. 4567105 in class 05 Ex. PW1/14. PW­1 deposed that the original documents are in the Head office in Gorakhpur.

10. This Court has perused the material on record and evidence led by the plaintiff . The testimony of PW-1 Sh. Inish Roy has remained unrebutted. In this case, interim order was granted on 10.12.2020. Plaintiff has established that plaintiff is the proprietor of registered trademarks "NIINE, NINE and 9". Plaintiff has established that the registered trademarks "NIINE, NINE, and 9 " are well known marks as defined u/s 2 (1) (zg) of the Trademark Act. It has been shown that the plaintiff has the exclusive right to use the aforenoted trademarks and defendant is misusing and infringing the trademarks of the plaintiff and passing off its goods as that of the plaintiff. This not only causes loss of profit to the plaintiff but also results in the inferior products and services made available to the public at large , who are deceived by the conduct of the defendant. On appreciation of evidence on record, this Court is satisfied that defendant has adopted the trademark Nine plus, in relation to the above said impugned goods and business of counterfeit goods used by the plaintiff and there is a high degree of phonetic similarity and Amar Tulsiyan vs Harshil Jayeshbhai Shah 8 degree of resembleness which can very easily create confusion in the minds of buyer and members of the general public. The plaintiff being the holder of a registered trademark is entitled to protection against its infringement and the relief claimed.

11. Therefore, in view of the above, this Court finds that plaintiff is entitled to a decree of permanent injunction against the defendant from dealing with the goods and services having infringing marks and defendant by himself as also through his agents, representatives, distributors, assignees, heirs, successors, stockists and all other acting for and on their behalf is restrained from soliciting, networking, manufacturing, marketing, intended use, using, selling, displaying, advertising or by any other mode or manner dealing in or using the defendant's impugned trademark Nine Plus or soliciting/using it through any online medium or online websites or through any online platforms or through any social medias or any other identical with and/or deceptively similar word/mark/label to the plaintiff's trademarks NIINE, NINE, 9 in relation to their impugned goods and business of Sanitary, Pads, sanitary preparations for medical purposes, hygienic products, personal hygiene products, hygienic aids, sanitary aids, sanitation aids, sanitation products, medicinal products, FMCG (fast moving consumer goods) products, disinfectants; lifestyle products and allied/related/cognate goods and services and from doing any other acts or deeds amounting to or likely to infringement of the plaintiff's trademarks; Passing off and violation of the plaintiff's common law rights in the plaintiff's said trademarks and violation and dilution of the plaintiff's rights in its trademarks.

12. Ld. Counsel for plaintiff further submitted that the cost incurred by the plaintiff in pursuing this litigation is approximately Rs. 3,60,000/- lakhs which includes legal fee and administrative charges of Rs. 3,00,000/- and Rs. 60,000/- respectively. He submitted that in the Polo/Lauren Company vs Rohit S. Bajaj's case, the observation made by our Hon'ble High Court were as under:

"14. The last aspect to be considered is the issue of damages for loss of reputation and business as also the cost of the present proceedings. It is trite to say that the defendant has deliberately stayed away from the present proceedings with the result that an enquiry into the accounts of the defendant for determination of damages cannot take place. However, the infringement of the trademark of the plaintiff is not in dispute. The plaintiff has claimed damages to the tune of Rs.50,00,000/- for loss of sale and reputation payable to the plaintiff. The attention of this Court has been drawn to a number of judgments in this behalf where dealing with similar situations, damages have been awarded."

13. The time has come when the Courts dealing actions for infringement of trade marks, copy rights, patents, etc. should not only grant compensatory damages but award punitive damages with a view to discourage and dishearten law breakers who indulge in violations with impunity out of lust for money so that they realize that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay punitive damages also, which may spell financial disaster for them.

14. In Jockey International Inc & Anr. Vs R. Chandra Mohan & Ors. 2014 (59) PTC 437 (Del) in para 43, it was held that damages must be awarded in such cases where defendant chooses to stay from the proceedings of the Court and that defendant should not be permitted to enjoy the benefits of Amar Tulsiyan vs Harshil Jayeshbhai Shah 10 evasion of Court proceedings. A party who chooses not to participate in Court proceedings and stays away must suffer the consequences of damages as it cannot produce its account books. There is larger public purpose involved to discourage such parties indulging in such rights of deception and even if the same has a punitive element, it must be granted.

15. In Cartier International AG & others vs Gaurav Bhatia & ors. CS (OS) No. 1317/2014 decided on 04.01.2016, it has been observed that it appears from the conduct of the defendants who are deliberately stayed away from the present proceedings with the result that an inquiry into their accounts for determination of damages could not take place and it is well settled that damages in such cases must be awarded and the defendant who chooses to stay away from the proceedings of the Court should not be permitted to enjoy the benefits of evasions 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 for damages while a party which choose away from the Court proceedings would escape the liability on account of failure of liability of account books. A party who chooses not to participate in Court proceedings and stay away must suffer the consequences of damages as stated and set out by the plaintiff as the Court is dealing with the counterfeit products. It is rank case of dishonesty where the piracy committed by the defendant is apparent on the face of 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. The Amar Tulsiyan vs Harshil Jayeshbhai Shah 11 damages which plaintiff claim are attributable to flagrant infringement.

16. The present suit was filed on 09.12.2020. Total number of 14 hearings have taken place in this case. Plaintiff is entitled to costs towards pleader's fee litigation expenses, Court fees and on account of economic and commercial advantage which the defendant tried to gain at the expenses of the enviable reputation which has been created by the plaintiff apart from injunction. Having regard to the totality of aforesaid facts and circumstances, this Court is of the view that plaintiff is entitled to lumpsum costs of Rs 2,00,000/- .

17. Having regard to the afore noted discussion, the suit of the plaintiff is decreed. A decree of permanent injunction in favour of plaintiff against the defendant is hereby passed and defendant is restrained from dealing by as also through his agents, representatives, distributors, assignees, heirs, successors, stockists and all other acting for and on their behalf is restrained, from soliciting, networking, manufacturing, marketing, intended use, using, selling, displaying, advertising or by any other mode or manner dealing in or using the defendant's impugned trademark Nine Plus or soliciting/using it through any online medium or online websites or through any online platforms or through any social medias or any other identical with and/or deceptively similar word/mark/label to the plaintiff's trademarks NIINE, NINE, 9 in relation to their impugned goods and business of Sanitary, Pads, sanitary preparations for medical purposes, hygienic products, personal hygiene products, hygienic aids, sanitary aids, sanitation aids, sanitation products, medicinal products, FMCG (fast moving consumer goods) products, Amar Tulsiyan vs Harshil Jayeshbhai Shah 12 disinfectants; lifestyle products and allied/related/cognate goods and services and from doing any other acts or deeds amounting to or likely to infringement of the plaintiff's trademarks; Passing off and violation of the plaintiff's common law rights in the plaintiff's said trademarks and violation and dilution of the plaintiff's rights in its trademarks. Moreover, plaintiff is also entitled to costs of Rs.2,00,000/- (inclusive of Court fees.). Decree sheet be drawn up accordingly. File be consigned to record room.

(Dictated and announced in the open Court today i.e. 30th September, 2022) (VINAY KUMAR KHANNA) District Judge (Commercial Court-02) South Disttt., Saket, New Delhi.