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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,
CS (COMM)
228/2018 Page 1 of 8
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.
(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.
CS (COMM)
228/2018 Page 2 of 8
(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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228/2018 Page 4 of 8
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
CS (COMM)
228/2018 Page 5 of 8
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
CS (COMM)
228/2018 Page 6 of 8
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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228/2018 Page 7 of 8
directed to prepare a decree sheet accordingly. Consequently, the
present suit and application stand disposed of.
MANMOHAN, J
DECEMBER 18, 2018
KA/mn
CS (COMM)
228/2018 Page 8 of 8
