Delhi High Court
M/S Saurabh Agrotech (P) Ltd vs M/S. Motive Agro Oils Pvt. Ltd. & ... on 25 April, 2013
F-16$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 473/2009
M/S POLYFLOR LIMITED Versus SH. A.N. GOENKA (P) LTD. ..... Plaintiff Through: Mr. Ajay Amitabh Suman, Advocate.
versus
M/S. MOTIVE AGRO OILS PVT. LTD. & ANR. .....Defendants Through: None.
% Date of Decision: 25th April, 2013.
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
JUDGMENT
MANMOHAN, J (Oral):
1. The amended plaint in the present suit has been filed with the following prayers:-
"26. (a) For a decree of permanent injunction restraining the defendant by itself as also through its individual proprietors, partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all others 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 trade mark/label ASHOKA or any other Trade Mark/Label identical with and/or deceptively similar to the said trademark/label ASHOKA of the plaintiff in relation to their impugned goods and business of edible oil (mustard oil) and related/allied products and from doing any other acts or deeds
CS(OS) 473/2009 Page 1 of 6 amounting to or likely to:-
(i) passing off and violation of the plaintiff's right in the said trademark/label ASHOKA.
(ii) falsification of plaintiff's trademark and indulgence in unfair and unethical trade practices.
(iii) infringement of the plaintiff's registered trademark ASHOKA under no.1324290 in class 29.
(b) Restraining the defendants from disposing off or dealing with its assets including its premises at M/s Motive Agro Oils Pvt. Ltd., Hapur-245101, U.P. and Regd. Office at C-99B, Kanti Nagar Old, Delh-51 including its stocks-in-trade and such other assets as may be brought to the knowledge of this Hon'ble Court during the course of the proceedings and on its ascertainment by the plaintiff and/or disclosed by the defendants, as the plaintiff is not aware of the same, as per Section 135(2)(c) of the Trade Marks Act, 1999 as it would adversely effect the plaintiff's ability to recover costs and accounts of profits.
(c) For an order for delivery up of all the impugned finished and unfinished materials bearing the impugned and violative trade mark/label ASHOKA, 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.
(d) For an order for rendition of accounts of profits earned by the defendants 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) In the alternative a decree for grant of damages of Rs.20,01,000/- (Rupees Twenty Lakh and One Thousand only) from the defendants, jointly and severally to the plaintiff.
CS(OS) 473/2009 Page 2 of 6 (f) For an order for cost of proceedings, and (g) 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. Mr. Ajay Amitabh Suman, learned counsel for plaintiff fairly states that he does not wish to press prayers (b), (c), (d), (e) and (f) of the prayer clause. The said statement is accepted by this Court and plaintiff is held bound by the same.
3. On 10th November, 2009, this Court dismissed the injunction application filed by the plaintiff on the ground that plaintiff's trade mark ASHOKA was no longer registered and prima facie a case of passing off was not made out.
4. Subsequently, on 14th September, 2010, defendants were proceeded ex parte. Thereafter, ex parte evidence by way of an affidavit was filed by the plaintiff.
5. Today, the position is that the plaintiff is the owner of the registered trade mark ASHOKA vide Registration Certificate No.1324290 in class 29 which has been exhibited as Ex.PW1/34. Plaintiff has also led evidence to show that it has been using the mark ASHOKA continuously since the year 1975 for a wide range of edible oils like Mustard and Vegetable oil. The plaintiff has placed on record its VAT invoices, bills, trade literature, advertisements to show continuous use of the trade mark ASHOKA since the year 1975.
6. In the plaint, it is stated that in the beginning of December, 2008, plaintiff learnt that defendant had dishonestly adopted the plaintiff's trade mark ASHOKA. Mr. Ajay Amitabh Suman, learned counsel for plaintiff
CS(OS) 473/2009 Page 3 of 6 submits that both the trade marks in question are identical and/or deceptively similar in all respects including phonetically. He states that defendants have copied the essential features of the plaintiff's trade mark. In support of his submission, he relies upon the judgment of the Supreme Court in K.R. Chinna Krishna Chettiar Vs. Shri Ambal and Co., Madras and Anr., AIR 1970 SC 146, wherein it has been held as under:- "3. ..................
The words, Ambal and Andal, have such great phonetic similarity that they are undistinguishable having the same sound and pronounciation. In whatever way they are uttered or spoken, slowly or quickly perfectly or imperfectly, meticulously or carelessly and whoever utters them, a foreigner or a native of India, wherever they are uttered in the noisy market place or in a calm and secluded area, over the phone or in person, the danger of confusion between the two phonetically allied names is imminent and unavoidable..................
xxx xxx xxx
6. ......It is for the court to decide the question on a comparison of the competing marks as a whole and their distinctive and essential features. We have no doubt in our mind that if the proposed mark is used in a normal and fair manner the mark would come to be known by its distinguishing feature "Andal". There is a striking similarity and affinity of sound between the words "Andal" and "Ambal". Giving due weight to the judgment of the Registrar and bearing in mind the conclusions of the learned Single Judge and the Divisional Bench, we are satisfied that there is a real danger of confusion between the two marks."
7. Having heard learned counsel for the plaintiff and having perused the ex parte evidence as well as documents placed on record, this Court is of the opinion that plaintiff has proved the facts stated in the plaint and has also
CS(OS) 473/2009 Page 4 of 6 exhibited the relevant documents in support of its case. Since the plaintiff's evidence has gone unrebutted, said evidence is accepted as true and correct.
8. This Court is also of the opinion that the triple identity test is satisfied in the present case inasmuch as the competing trade marks, products and class of purchasers are the same. In Jain Electronics Vs. Cobra Cables P. Ltd. & Ors., 2011(45) PTC 52 (Del), this Court has held as under:- "11. With there being a registered trade mark "Cobra" in the name of Respondent No.1, which has not been opposed by the Petitioner till date, there can be no doubt that grant of registration in respect of an identical mark in favour of the Petitioner would cause deception and confusion. The mark has been registered in favour of Respondent No.1 in respect of goods which included electrical apparatus. The Petitioner is seeking registration of an identical mark in respect of voltage stabilizers. It was sought to be urged that Respondent No.1's goods were electric cables whereas the Petitioner's were voltage stabilizers and therefore the goods were different. There can be no doubt that the electric cables are used in voltage stabilizers as well. The trade channel is essentially the same. The goods are available usually in the same place as well. Use of an identical mark in respect of the two goods is bound to cause deception and confusion in the market. The Deputy Registrar and the IPAB concurrently concluded that the triple identity test stood satisfied in the present case, particularly since the description of the goods is the same, the area of the sale and the trade channel are the same. This Court concurs with the said view. The registration in favour of Respondent No.1 dates back to 1980, whereas the Petitioner's invoices, all of which do not show use of the mark in relation to goods, is only since 1984. In the circumstances, the plea of concurrent user is not available to be taken by the Petitioner."
9. Consequently, as the trade mark, goods and class of purchasers are same, there is every possibility of confusion and deception. Further, this
CS(OS) 473/2009 Page 5 of 6 Court has considered the essential feature of both the trade marks in question and finds that the essential features are common.
10. Moreover, as the plaintiff is the prior adopter and continuous user of the mark ASHOKA, this Court is of the opinion that plaintiff is entitled to a decree of permanent injunction. Accordingly, the present suit is decreed in terms of prayer 26(a)(i), (ii) and (iii) of the plaint. Registry is directed to prepare a decree sheet accordingly.
MANMOHAN, J
APRIL 25, 2013
js
CS(OS) 473/2009 Page 6 of 6
