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