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IN THE
HIGH COURT OF DELHI AT NEW DELHI
+
CS(COMM) 1307/2016
M/S.
KHUSHI RAM BEHARI LAL .....
Plaintiff Through Mr. Ajay Amitabh Suman with Mr. Kapil Kumar Giri and Mr.
Pankaj Kumar, Advocates
versus
P.V.
KANAKARAJ TRADING AS
KALPATHARU
TRADING CO.
Through None
..... Defendant
%
Date of Decision : 05th
December, 2017
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
J U D G M E N T
1.
Present suit has been filed for
permanent injunction restraining infringement of copyright, passing off,
delivery up etc. The prayer clause in the suit is reproduced hereinbelow:-
(a)
For a decree of permanent injunction restraining all the defendant by
themselves as also through their individual proprietors, partners, directors,
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 trademark TAJ MAHAL WITH DEVIDE OF TAJ MAHAL and/or any
other trademark/label, identical
CS(COMM)
1307/2016 Page 1 of 7
and/or
deceptively similar thereto in relation to their impugned goods and business of
rice and related/allied products and from doing any other acts or deeds
amounting to or likely to:
(i)
Infringe the plaintiff’s copyright in the said trademark/label TAJ MAHAL
label (device of TAJ MAHAL)
(ii)
Passing off and violation of plaintiff’s common law right in the said
trademark/label TAJ MAHAL label (device of TAJ MAHAL).
(iii)
Dilution
of plaintiff’s goodwill and reputation to the
plaintiff’s
well known trademark/label said trademark/label TAJ MAHAL label (device of TAJ
MAHAL).
(b)
Restraining the defendant from disposing off or dealing with its assets
including its shops and premises as mentioned in the memo of parties of the
plant and its stocks-in-trade or any other assets a may be brought to the
notice of this Hon’ble Court during the course of the proceedings and on the
defendant disclosure thereof and which the defendant 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 relief(s) thereon.
(c)
For an order for delivery up of all the impugned finished and unfinished
materials bearing the impugned an violative trademark TAJ MAHAL with device of
TAJ MAHAL or any other deceptively similar trademark/label including its
blocks, labels, display boards, sign boards, trade literatures and goods etc.
to the plaintiff for the purposes of destruction and erasure.
CS(COMM)
1307/2016 Page 2 of 7
(d)
For a decree for grant of damages in the sum of Rs.20,01,000/- (Rupees
Twenty Lakh and One Thousand only) from the defendants to the plaintiff.
(e)
For an
order for cost of proceedings.
(f)
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.
On 19th December, 2013, this Court
granted an ex parte ad interim injunction in favour of the plaintiff and
against the defendant. The relevant portion of the said order is reproduced
hereinbelow:-
“Accordingly, the defendant is restrained by way of ex parte ad interim injunction from selling or
dealing with the product rice or allied products using the trade mark TAJ MAHAL
on the device TAJ MAHAL till further orders. It is clarified that defendant may
sell the products after changing the packaging and without using the impugned
trade mark.
Plaintiff shall comply with provisions of Order XXXIX Rule 3 CPC within
a period of 3 weeks from today.”
3.
On 16th September,
2016 the defendant’s
applications being
I.A.No.5529/2014 under order VII Rule 11 CPC and
I.A.No.8938/2014
under Order XXXIX Rule 4 CPC were dismissed
and the ex
parte interim injunction was
confirmed. The relevant
portion
of the said order is reproduced hereinbelow:-
“11. At
the present stage, when the matter is yet to go to trial, the Court cannot
insist that the full particulars of where precisely the Defendant was found
selling its products in Delhi have to be set out in the plaint itself. That
would be a matter for evidence. Consequently, this
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Court is
unable to accept the plea of the Defendant that the averments in the plaint are
insufficient for the Court to entertain the action of passing off of the
trademark of the Plaintiff.”
4.
Despite
entering appearance and
having filed the
written
statement, the defendant stopped appearing after 7th February, 2017. Accordingly, it
was proceeded ex parte vide order dated 3rd August, 2017 and the plaintiff led its ex-parte evidence.
5.
Mr. Ajay Amitabh Suman, learned
counsel for the plaintiff states that the plaintiff is engaged in the business
of processing and marketing Basmati rice including exports thereof. He states
that the plaintiff is the prior adopter and user of the mark TAJ MAHAL along
with TAJ MAHAL device in relation to rice since the year 1978.
6.
He further states that the plaintiff has filed an
application dated
27 th February, 1989 for registration
of the mark TAJ MAHAL claiming user since 1st July, 1978. However, the same is pending consideration on account of
objections raised by third parties.
7.
Mr. Suman states that the plaintiff’s label bears
the original
artistic feature created by the plaintiff and the
same constitutes an original artistic work within the meaning of the Copyright
Act, 1957. He states that since the adoption of the mark TAJ MAHAL along with
TAJ MAHAL device, the plaintiff has been continuously and exclusively using the
same to the exclusion of others.
8.
Learned counsel for the plaintiff
states that the defendant is using the mark/label TAJ MAHAL along with device
TAJ MAHAL in relation to same product i.e. rice dishonestly and fraudulently in
order
to take advantage of the plaintiff’s established reputation and
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goodwill.
9.
He
states that the
defendant had fraudulently
applied for
registration of the impugned mark/device on 15th April, 2010 claiming use since
11th January, 2000.
10.
Having perused the paper book,
this Court is of the opinion that the plea of the mark being public juris raised by the defendant in
its written statement cannot be accepted as no evidence in this regard has been
led by the defendant.
11.
This Court is also of the view that the plaintiff on the
basis of the bills/invoices filed by it in support of the present plaint and
exhibited as Ex. PW1/8 (Colly) has been able to establish prior use of the mark
TAJ MAHAL with device TAJ MAHAL atleast since 1980.
12.
This Court is further of the view
that though the defendant in its written statement has claimed use of the mark
TAJ MAHAL with device TAJ MAHAL since 2000, yet it has not filed any document
to establish the same and the only document relied upon by the defendant is its
application for registration of the impugned mark/device filed in 2010.
13.
This Court is also of the opinion that the defendant’s
mark TAJ
MAHAL with device TAJ MAHAL is bound to cause
confusion and deception among the public at large, consumers, business and
trade circles and is likely to suggest that there is some nexus between the
plaintiff and defendant. The mark/device of the plaintiff as well as the
defendant is reproduced hereinbelow:
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1307/2016 Page 5 of 7
Plaintiff’s Mark Defendant’s
Mark
14.
In any event, as the averments in
the plaint have not been rebutted by the defendant nor did the defendant bother
to put forth its stand in spite of ample opportunities given by this Court,
they are deemed to have been admitted.
15.
In the opinion of this Court the triple identity test is
satisfied as the
defendant has made use of a deceptively similar mark i.e. TAJ MAHAL as well TAJ
MAHAL device in relation to identical goods (rice) having identical trade
channels (products sold vide same
trade channels).
16.
However, as far as the prayer
with regard to the damages is concerned, this Court is of the opinion that
since the plaintiff has not led any evidence with respect to the quantum of
damages suffered by the plaintiff, the same cannot be granted in light of the
Division Bench
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1307/2016 Page 6 of 7
judgment of this Court in Hindustan Unilever Limited Vs. Reckitt
Benckiser
India Limited, 2014 (57) PTC 495 [Del][DB]. In fact, this Court
recently in Super Cassettes Industries Private Limited Vs.
HRCN Cable Network, CS(COMM) 48/2015 dated 09th October, 2017 has held as under:-
“19. However, this Court is not
satisfied on the evidence led in the present case that the compensation awarded
is inadequate in the circumstances having regard to the three categories in Rookes v. Barnard, [1964] 1 All ER 367
and also the five principles in Cassell
& Co. Ltd. v. Broome, 1972 AC
1027. In the event punitive damages are
awarded in the present case, it would be an ad-hoc judge centric award of
damages, which the Division Bench specifically prohibited in Hindustan Unilever Limited (supra)…”
17.
Keeping in view the aforesaid
facts, mandate of law and the persistent conduct of the defendant in selling
products bearing the mark TAJ MAHAL with device TAJ MAHAL, the suit is decreed
in terms of prayers (a) and (e) of the prayer clause along with the actual
costs incurred by the plaintiff. The cost shall amongst others include
the
lawyers’ fees, local commissioner’s fee as well as the amounts
spent on purchasing the court fees. Registry
is directed to prepare a
decree
sheet accordingly.
MANMOHAN, J
DECEMBER 05, 2017
KA/DK
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