Sunday, December 23, 2018

RANVIR SINGH BIJNARIA VERSUS ASHOK KUMAR AND OTHERS





$~13
*                    IN THE HIGH COURT OF DELHI AT NEW DELHI

+                   CS (COMM) 228/2018 & I.A. Nos. 186791/2015, 18793/2015

MR. RANVIR SINGH BIJNARIA ..... Plaintiff Through Mr.S.K.Bansal with Mr.Ajay Amitabh Suman, Mr.Vinay Kumar Shukla and Mr.Kapil Kumar Giri, Advocates.



versus



MR ASHOK KUMAR AND OTHERS

Through           Ex parte


..... Defendants


%

Date of Decision: 18th December, 2018


CORAM:
HON'BLE MR. JUSTICE MANMOHAN


J U D G M E N T

MANMOHAN, J: (Oral)

1.                 Present suit has been filed for permanent injunction restraining infringement, passing off, delivery up, rendition of accounts, transfer of domain names and blocking infringing websites and URL(s). The prayer clause in the present suit is reproduced hereinbelow:-

“(a) Issue an ad-interim injunction restraining the defendant no.1 to 7 by themselves as also through their

individual proprietors/partners/principles, agents, representatives, distributors, assigns, heirs, successors, stockiest and all others acting for and on their behalf from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned Trade Mark/Label EASY SLIM and impugned domain names namely www.originaleasyslimtea.com,


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www.originalslimtea.in, www.easyslimtea.co, www.slim-tea.co.in, www.easy-slim-tea.com and www.dealnation.in or any other word/mark/Trade Mark/Label/Domain Names which may be identical with and/or deceptively similar to the plaintiff‟s said trade mark/Label/Domain Names, with the word EASY SLIM in relation to their impugned goods and business of Ayurvedic health product, Ayurvedic Medicinal product, Ayurvedic Weight Loss preparation including Ayurvedic weight loss tea and allied and cognate products and from doing any other acts or deeds amounting to or likely to:
(i)                Infringement of plaintiff‟s registered Trade Marks under no.1352828 in class 05.

(ii)             Passing off and violation of the plaintiff‟s rights in the plaintiff‟s said Trade Mark/Label EASY SLIM.

(iii)           Violation of plaintiff‟s proprietary rights in its said domain name namely www.easyslim.com

(b)   Restraining the defendant nos.1-6 from disposing off or dealing with their assets including their premises at the addresses mentioned in the Memo of Parties and their stocks-in-trade or any other assets as may be brought to the notice of the Hon‟ble Court during the course of the proceedings and on the defendants‟ disclosure thereof and which the defendants are called upon to disclose and/or on its ascertainment by the plaintiff as the plaintiff is not aware of the same as per Section 135(2)(c) of the Trade

Marks Act, 1999 as it could adversely affect the plaintiff‟s ability to recover the costs and pecuniary reliefs thereon.

(c)      For an order for delivery up of all the impugned finished and unfinished materials bearing the impugned and violative impugned Trade Mark/Label/Domain Name or any other word/mark which may be identical with or deceptively similar to the plaintiff‟s said Trade Mark/Label/Domain Name including its blocks, labels, display boards, sign boards, trade literatures and goods etc. to the plaintiff for the purposes of destruction and erasure.


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(d)  For an order for rendition of accounts of profits earned by the defendant no.1 to 6 by their impugned illegal trade activities and a decree for the amount so found in favour of the plaintiff on such rendition of accounts.

(e)   Or in the alternative to the rendition of accounts, for a decree of Rs.20,01,000/- (Rupees Twenty Lakh and One Thousand Only) on account of damages sustained by the plaintiff due to the impugned acts of the defendant no.1 to 6.

(f)   Pass an order directing defendant no.7 (Department of Telecommunications, Government of India) and defendant no.8 (Department of Electronics & Information Technology) to secure blocking of the Web Pages/URL(s)/

Listings mentioned in Schedule „A‟ filed along with the documents.

(g)    Pass an order directing transfer of domain names –

www.originaleasyslimtea.com, www.originalslimtea.in, www.easyslimtea.com and www.easy-slim-tea.com to the control of the plaintiff and pass specific directions to the Registrar of these domain names to secure compliance of such transfer.

(h)  For an order for cost of proceedings, AND

(i)   For such other and further order as this Hon‟ble Court may deem fit and proper in the facts and circumstances of the present case.”


2.                 Vide order dated 08th September, 2015 this Court granted an ex parte

ad interim injunction in favour of the plaintiff. The relevant portion of the ex-parte injunction order is reproduced hereinbelow:-

“…… Accordingly, till the next date of hearing, defendant nos. 1

to 6 are restrained from online sale of their products in deceptively similar packaging as that of the plaintiffs‟ packaging including colour combination, trade dress and manner of writing
„Easy Slim   Tea”  and  also  from  using  the  domain   names


CS (COMM) 228/2018

Page 3 of 8




www.originaleasyslimtea.com, www.originalslimtea.in, www.easyslimtea.co, www.slim-tea.co.in or any other deceptively similar domain name as that of the plaintiffs‟ domain name, i.e., www.easyslim.com. Defendant nos. 1 to 6 are also restrained from online sale of deceptively similar products as that of the plaintiffs or otherwise.

Compliance of Order 39 Rule 3 CPC be made within one week.

Dasti.”

3.                 Since despite service by way of publication, the defendant nos. 1 to 6 did not enter appearance or file their written statements, they were proceeded ex-parte on 16th November, 2017.

4.                 Vide order dated 24th January, 2018, the defendant no.8 was deleted from the array of parties. The defendant no.7 is a proforma defendant.

5.                 Today, learned counsel for the plaintiffs states that he gives up prayer 64(b) to (f) of the plaint.

6.                 The contentions and submissions advanced by learned counsel for the plaintiffs are as under:-

i.            The plaintiffs are engaged in the business of manufacture, distribution and sale of Ayurvedic medical products, Aryurvdic health preparation, Ayurvedic weight loss preparation, skin care and fairness products and other allied/related products.

ii.            In 2005, the plaintiffs honestly and bonafidely conceived, coined and adopted the trademark/label EASY SLIM in relation to their goods and business. The word/mark EASY SLIM is an invented mark and is entitled to the highest degree of protection.

iii.            The plaintiffs are the registered owners of the trademark/label EASY SLIM under Class 05 of the Trade Marks Act, 1999. By virtue of

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extensive and continuous use the said EASY SLIM trademark/label has come to be exclusively associated with the plaintiffs’ business and goods.

iv.            The plaintiffs have been using the trademark EASY SLIM word per se in a stylized manner and the same amounts to an “original artistic work” within the meaning of Section 2(c) of the Copyright Act, 1957 and the plaintiffs are entitled to copyright protection under the provisions of Section 14 of the Copyright Act, 1957.

v.            The plaintiffs are also the registered owners of the domain name www.easyslim.com since 2002.

vi.            In June, 2015, the plaintiffs, learnt about various domain names, website and counterfeiters which were engaged in the same business as the plaintiffs. The defendants are using the plaintiffs’ trademark/label/domain name EASY SLIM as an essential and material part of their domain names/websites and/or are selling fake counterfeit products under the trade mark EASY SLIM or under a mark, essential feature of which is EASY SLIM. Details of the impugned websites is reproduced hereinbelow:-

a.      www.originaleasyslimtea.com

b.     www.originalslimtea.in

c.      www.easyslimtea.co

d.     www.slim-tea.co.in

e.      www.dealnation.in

vii.            The domain name www.originaleasyslimtea.com belongs to defendant no. 1, impugned domain name www.easyslimtea.co belongs to defendant no. 2, impugned domain name www.slim-tea.co.in belongs


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to defendant no. 3, impugned domain name www.slim-tea.co.in belongs to defendant no. 4 and the defendant no. 5 sells products of the defendant no. 6. The impugned domain name www.dealnation.in belongs to defendant no. 6 on which the impugned goods under the trademark EASY SLIM are displayed and sold.

viii.            The plaintiffs placed an order for purchase of the impugned product which was delivered in Delhi. Upon inspection of the product, it was ascertained to be counterfeit.

ix.            The use of impugned EASY SLIM websites by the defendants is a violation of the statutory and common law rights of the plaintiffs. The defendants, through the impugned websites have been dishonestly and fraudulently selling their products with the view to take advantage and trade upon the goodwill, reputation and proprietary rights of the plaintiffs’ trademark/label/domain name EASY SLM.

x.            The defendants use of the trademark EASY SLIM is bound to cause confusion and deception in the mind of the public that the defendants’ goods are somehow associated with the plaintiffs.

7.                 The plaintiffs filed their ex parte evidence by way of affidavit of Mr.Rishi Bansal (PW-1) the Constituted Attorney of the plaintiffs. The plaintiffs’ witness (PW-1) has proved coloured representation of the plaintiffs’ product under the trademark EASY SLIM as Ex.PW1/1 and

coloured representation of the impugned trademark of the defendants along with corresponding bills showing purchase of the impugned products as Ex.PW1/2. The plaintiffs’ witness PW-1 has also proved copies of the documents pertaining to the registered trademark of the plaintiffs under



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Class 05 of the Trade Marks Act, 1999 as Ex.PW1/3 and the schedule list of web pages/url(s)/listings belonging to the defendants as Ex.PW1/4. PW-1 has proved the WHOIS status of the plaintiffs’ website as Ex.PW1/5 and documents taken from the plaintiffs’ website as Ex.PW1/6. The plaintiffs’ witness has also proved the WHOIS status and the documents taken from the website of the defendant nos. 1 to 6 as Ex.PW1/7, documents showing advertisements of the plaintiffs’ trademark as Ex.PW1/8 and copy of compliance statement as Ex.PW1/9. The plaintiffs’ witness has also proved copy of license agreement for a unified license as Ex. PW1/10 and copy of license agreement for provision of internet service as ExPW1/11. PW-1 has further proved copy of legal policies of domain registrars taken from their website as Ex.PW1/13.
8.                 This Court is of the view that the plaintiffs are the prior user and prior registered proprietors of the trade mark EASY SLIM and due to extensive use, the plaintiffs’ mark EASY SLIM has acquired reputation and goodwill in India. Moreover, as the defendants are selling/ using the plaintiffs’ EASY

SLIM for its impugned domain names and counterfeit products bearing the plaintiffs’ EASY SLIM trademark/label, it is a clear case of infringement of the plaintiffs’ registered trade mark.

9.                 In the opinion of this Court, the defendants have no real prospect of defending as they have neither entered appearance nor filed a written statement. In any event, the plaintiffs’ evidence has gone unrebutted.

10.            In view of the aforesaid the suit is decreed in favour of the plaintiff and against the defendants in accordance with paragraph 64 (a) and (g) of

the plaint along with costs. The costs shall amongst others include lawyers’ fees as well as the amounts spent on purchasing the Court fees. Registry is


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directed to prepare a decree sheet accordingly. Consequently, the present suit and application stand disposed of.



MANMOHAN, J
DECEMBER 18, 2018
KA/mn




















































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