Tuesday, August 20, 2013

TRADE MARK DJARUM BLACK


COMMENT: In this Judgment, the Hon’ble Delhi High Court has laid down the following important proposition.

 From the report of local commissioner, it was clear that the defendant was selling the goods of the plaintiff. On this ground, the Hon’ble Delhi High Court has returned the finding that for the purposes of Section 62 of CA, this by itself is sufficient to show that the Plaintiff is carrying on business within the jurisdiction of this Court. Consequently, the objection as regards the territorial jurisdiction to entertain the suit is rejected. (Para 13)

 
The contents of the judgment has been given herein below:
 
 
                        IN THE HIGH COURT OF DELHI AT NEW DELHI

                                           CS (OS) No. 1133 of 2012

PT DJARUM ..... Plaintiff Through: Mr. Saif Khan with Ms. Divya Vijan

Bajaj and Ms. Ayushi Kiran, Advocates.

 
Versus

 
CHANDER SHEIKHAR MARWAH & ORS ..... Defendants

Through Mr. Joseph Koshy, Advocate for D-1 to 3.

 
CORAM: JUSTICE S. MURALIDHAR
 

ORDER

 
13.08.2013

IA Nos. 7561 of 2012 (u/O XXXIX Rules 1 & 2 CPC) & 12401 of 2012 (u/O XXXIX Rule 4 CPC)

1. By this order this Court proposes to dispose of IA No. 7561 of 2012 under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure 1908 ('CPC') filed by the Plaintiff and I.A. No.12401 of 2012 under Order XXXIX Rule 4 CPC filed by the Defendant Nos. 1 to 3.

2. The background facts have been set out in paras 6 to 8 of the order dated 25th April 2012 passed by the Court which reads as under:

"6. As per the plaint, Plaintiff company is based in Indonesia and was founded in the year 1951. The Plaintiff is one of the largest cigarette and tobacco manufacturers in Indonesia. Plaintiff is engaged in the business of developing, manufacturing and marketing a variety of kretek cigarettes that are internationally recognized for their unique blend of the finest tobacco and premium quality cloves. Plaintiff claims that it has a strong international presence in the global cigarette industry and it sells more than 10 million cigarettes every day to its customers in more than 30 countries across the world. The Plaintiff has also incurred large expenditures over a period of time in publicizing its products and achievements.

7. Learned counsel for the Plaintiff submits that Plaintiff has been selling cigarettes under various names and the present case pertains to the Plaintiff s trade mark DJARUM BLACK, which is a filtered kretek cigarette, which was introduced for the first time in August, 1996. Counsel further submits that the Plaintiff has applied for registration of the trade mark BLACK (label) in India in relation to cigars and cigarettes containing tobacco and cloves in Class 34. Counsel next submits that the Plaintiff s BLACK (DJARUM BLACK) kretek cigarettes were introduced in a package having a unique get up, layout, colour scheme and arrangement of features, which comprises of an overall black background and the trade mark BLACK prominently appearing in a distinct logo script and pre-fixed with the Plaintiff's corporate name/trading style DJARUM. The Plaintiff has described the essential features of its trade mark in the plaint. Counsel also submits that the products of the Plaintiff are sold worldwide and the same have acquired tremendous reputation and goodwill amongst the customers and members of the trade all over the world.

8. Learned counsel for the Plaintiff submits that Plaintiff has learnt that Defendants have recently launched in the month of February, 2012, an identical product under the impugned mark BLACK EYE, which comprises of the Plaintiff's well-known trade mark. Counsel further submits that Defendants have adopted an identical packaging comprising of an identical get up, lay out, colour scheme and arrangement of features as that of the Plaintiff's product. Counsel for the Plaintiff has drawn the attention of the Court to the labels of the Plaintiff and Defendants, which have been scanned in the plaint and also filed along with the list of documents, to show that the similarity between the trade mark of the Plaintiff and the defendants. Counsel next submits that adoption of the name of the trade dress by the Defendant is identical and it is a deliberate attempt on the part of the Defendants to ride over the goodwill and reputation of the Plaintiff. Counsel, in these circumstances, prays for ex parte ad interim injunction."

3. By the said order dated 25th April 2012, the Court restrained the Defendants, their servants, agents, employees, stockists, dealers, partners from (i) reproducing, printing or publishing any label or packaging, including cartons and boxes, which are a colourable imitation or substantive reproduction of the Plaintiff's trade mark DJARUM BLACK, which would amount to an infringement of copyright, (ii) selling, exporting, advertising, in any manner whether directly or indirectly using the impugned mark BLACK EYE or any other mark comprising of the word BLACK. By the same order dated 25th April 2012, this Court appointed Local Commissioners ('LCs') to visit the premises of the Defendant Nos. 2 and 3, located in Punjab, and of the Defendant No. 4, located in New Delhi.

4. The LC who visited the premises of Defendant No.4, filed a report on 8th May 2012. At the premises the LC met Mr. Prabhat Kumar Gupta who introduced himself as the proprietor of Defendant No.4, Ratan Trading Company. The visiting card given by him has been annexed with the report of the LC which shows that Defendant No.4 has been dealing in all kinds of bidi, cigarette and tobacco. The inventory-cum-seizure memo was prepared at the site and a total of 10 boxes (each box containing 200 filter cigarettes) bearing mark/label IJM BLACK EYE were seized at the premises of the Defendant No.4. The seized materials were packed and sealed in one carton which was duly signed by the LC in the presence of both the Plaintiff and the Defendant 4 and thereafter released to Mr. Prabhat Kumar Gupta on superdari. In para 8, the LC observed as under: "That during the commission proceedings, I also found that the Defendant was also selling the cigarette of the Plaintiff company, i.e., DJARUM BLACK."

5. The two LCs who visited the premises of the Defendant Nos. 2 and 3 submitted a report on 17th May 2012. It is inter alia stated that in the premises of Defendant No. 2, the LCs found the following infringing cigarettes depicting the name 'BLACK EYE':

"1. 109 cartons each containing 10 packets of 20 cigarettes each bearing the impugned trade mark 'BLACK EYE', i.e., 21800 cigarettes.

2. Inner cigarette packaging material in relation to impugned mark 'BLACK EYE', numbering approx.

18,000 (Annexure B to the "On the Spot Proceedings").

3. Outer carton packaging material in relation to impugned mark 'BLACK EYE' approx. 1000 in number (Annexure C to the 'On the Spot Proceedings')."

6. It was further observed that Defendant No.1 claimed to be the owner of Defendants 2 and 3 but after copies of the Court's order dated 25th April 2012 were shown to him, he stated that he was not the Director of Defendant Nos. 2 and 3 and in fact his son, Mr. Ankush Marwah, sitting by his side, was the Director. Enclosed with the LCs' report are specimen samples of the packs in which the infringing products of the Defendant Nos. 2 and 3 were being sold.

7. In the written statement filed by the Defendants 1 to 3, a preliminary objection as to the territorial jurisdiction of the Court to entertain the suit has been taken. Secondly, it is stated that Defendant 4 has no relationship with Defendants 1 to 3, who are located in Punjab, and has been made party only because he is carrying on business in Delhi. It is submitted that there is no documentary proof that Defendants 1 to 3 had made supplies to the Defendant No.4. It is further contended that the one invoice from a pan shop in Delhi produced by the Plaintiff is insufficient to show that the Defendants 1 to 3 have any outlet or branch office of their own within the local jurisdiction of the Court. It is further submitted that on the basis of Section 62 of the Copyright Act, 1957 ('CA'), the Plaintiff has no place of business within the local jurisdiction limits of this Court.

8. Mr. Saif Khan, learned counsel appearing for the Plaintiff drew the attention of the Court to the documents placed on record which showed that the Defendants are engaged in the manufacture and sale of kretek cigarettes under the impugned mark BLACK EYE comprising of the Plaintiff's well-known trade mark BLACK in a packaging comprising of an identical get up, layout, colour scheme and arrangement of features as that of the Plaintiff's cigarettes. He pointed out that the Plaintiff's products are sold worldwide through the Plaintiff's integrated distribution network supported by its international partners in several countries including United Kingdom, Malaysia, South Africa, Japan, Netherlands, etc. He submitted that as a result of long and continuous use since 1996, coupled with extensive sales spanning a wide geographical area, the trade mark BLACK had acquired reputation and goodwill amongst the customers and the members of the trade all over the world. The Plaintiff's sales turnover in relation to the trade mark DJARUM BLACK from 2007 to 2011 aggregated to USD 31,650,011. The goodwill and reputation of the Plaintiff's trade mark BLACK also extended to India where the DJARUM BLACK products were widely sold since 2009. The Plaintiff's trade mark has been extensively used in India through distributors in Chennai, Gandhidham and Kolkata, and retail stores and shops all over the country. The sales of the Plaintiff's products bearing the trade mark DJARUM BLACK in India from 2009 to 2012 aggregated to USD 222,620. Copies of invoices illustrating worldwide sale including sales in India of DJARUM BLACK have been placed on record. It is submitted that the design of the packaging of the Plaintiff's trade mark BLACK was created at the instance of the Plaintiff by Mr. Julius Aditya Kristianto. It constituted 'an original artistic work' within the meaning of Section 2 (c) of the CA. Mr. Kristianto assigned the copyright to the Plaintiff under a Deed of Assignment dated 2nd January 1995, a copy of which has been placed on record. It is submitted that the unauthorized reproduction of the packaging by the Defendants 2 and 3 would amount to an infringement of the said copyright in the said packaging.

9. The Plaintiff has applied for registration of trade mark BLACK (label) in India in Class 34 and the said application is pending. On carrying out a search in the Trade Marks Registry it found that Defendant No.2 had also filed an application for registration of the mark BLACK EYE in Class 34 in respect of cigarettes and smoker articles as of 17th February 2011 on a 'proposed to be used' basis. Defendant No.2 had also applied for registration of the BLACK formative marks, viz., BLACK SQUARE, BLACK PANTHER and BLACK COAST respectively as of 17th February 2011.

10. It is submitted that the Plaintiff's products are sold in Delhi and it is carrying on business within the jurisdiction of this Court. The products of Defendants1 to 3 are being sold in Delhi through Defendant No.4.

11. It may be noted at this stage that Defendant No.4 has not been appearing throughout in this proceeding and even today despite a pass over. Defendant No.4 is, therefore, set ex parte.

12. Mr. Joseph Koshy, learned counsel for the Defendants 1 to 3 reiterated the objection as regards the jurisdiction. He also submitted that there was nothing to show that Defendants 1 to 3 had any connection with Defendant No.4. Defendants 1 to 3 were not carrying on business within the jurisdiction of this Court. The Plaintiff had not placed on record any document to show that it is carrying on business within the jurisdiction of this Court.

13. The above submissions have been considered. The report of the LC makes it clear that Defendant No.4 was selling in Delhi not only the impugned goods of the Defendants 2 and 3, but also the Plaintiff's products. For the purposes of Section 62 of CA, this by itself is sufficient to show that the Plaintiff is carrying on business within the jurisdiction of this Court. Even if Defendants 1 to 3 are not in a business relationship with Defendant No.4, there is no doubt that their products are being sold by Defendant No.4 in Delhi. Consequently, the objection as regards the territorial jurisdiction to entertain the suit is rejected.

14. On merits of the case, it appears prima facie that this is a case of infringement by the Defendants 1 to 3 of the copyright of the Plaintiff in its packaging apart from passing off the Plaintiff's trade mark. The front and back view of the packaging of the products (clove cigarettes) of the Plaintiff and the Defendants 2 and 3 are as under:

Packaging of the Plaintiff's product

Packaging of the Defendants' product

15. The black cigarette wrapper used by the Defendants 1 to 3 to pack the same product i.e. clove cigarette, is no different from that of the Plaintiff as can be seen from the photographs thereof placed on record by the Plaintiff. This Court is prima facie satisfied that the Defendants 1 to 3 have adopted a dishonest imitation of the Plaintiff's trade dress/packaging by constituting the Plaintiff's trade mark comprising of an identical red 'Triangular Device' in place of the letter 'A' in the Plaintiff's mark . Further, it is plain that the Defendants 1 to 3 have substantially reproduced the message inscribed on the Plaintiff's packaging which reads as under:

"Djorum Black is recognized for its blend of the finest Virginia tobaccos and cloves in unique black wrapping. Let the confidence of IJM bring you a distinctive smoking experience."

16. The Court is prima facie satisfied that the consumers and the trade alike are likely to be misled into believing that the Defendants' clove cigarettes CS (OS) No. 1133 of 2012 Page 8 of 10 bearing an identical trade dress/packaging under the impugned mark emanate from or are connected with the Plaintiff, apart from causing confusion or deception in the course of the trade as to the source or origin of the goods. Consequently, the interim order passed by this Court on 25th April 2012 is made absolute during the pendency of the suit.

17. IA No. 7561 of 2012 is disposed of and IA No. 12401 of 2012 is dismissed.

CS (OS) No. 1133 of 2012

18. None appears for Defendant 4. Consequently, Defendant 4 is proceeded ex parte.

19. After hearing learned counsel for the parties, the following issues are framed:

(i) Whether the Court has jurisdiction to try and entertain the present suit? OPD

(ii) Whether the suit is liable to be dismissed on account of delay, laches and/or acquiescence? OPD

(iii) Whether the Plaintiff is the owner of the copyright subsisting in the artistic work in the packaging of its DJARUM BLACK cigarettes as described in paragraph 10 of the plaint? OPP

(iv) Whether the Plaintiff is the proprietor of the goodwill and reputation in the trade mark 'BLACK' in the distinctive logo script/label mark comprising of the 'Red Triangular' device, in relation to its cigarette and tobacco products and if, to what effect? OPP

CS (OS) No. 1133 of 2012 Page 9 of 10 (v) Whether the use of the Defendants' packaging amounts to infringement of the Plaintiff's copyright subsisting in the artistic work in the packaging of its DJARUM BLACK cigarettes? OPP

(vi) Whether the use of the manner of presentation of the impugned mark 'BLACK EYE' in an identical logo script/label mark, comprising of the Red Triangular Device, and a deceptively similar packaging by the Defendants in respect of cigarette and tobacco products amounts to passing off? OPP

(vii) Whether the Plaintiff is entitled to the relief of permanent injunction as prayed for in paragraph 23 of the plaint? OPP

(viii) Whether the Plaintiff is entitled to the relief of delivery up, rendition of accounts of profits and damages against the Defendants and if so, to what extent? OPP

(ix) Relief.

20. List the matter before the Joint Registrar on 21st November 2013. By that date the parties will file their respective list of witnesses and affidavits by way of examination-in-chief of those witnesses.

21. List before the Court after conclusion of the evidence.

S. MURALIDHAR, J.

AUGUST 13, 2013

 

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