Inter Ikea Systems BV Vs Ikea Furniture Pvt. Ltd.

IN THE HIGH COURT OF DELHI

CS (OS) 523/2008

Decided On: 26.03.2014

Appellants: Inter Ikea Systems BV

Vs.

Respondent: Ikea Furniture Pvt. Ltd.

Judges/Coram:

G.S. Sistani, J.

Counsels:

For Appellant/Petitioner/Plaintiff: S.K. Bansal, Ajay Amitabh Suman and Pankaj Kumar, Advs.

JUDGMENT

G.S. Sistani, J.

1. Plaintiff has filed the present suit for permanent injunction restraining infringement of trade mark, passing off, delivery up, damages etc.

2. Summons in the suit and notice in the application under Order XXXIX Rules 1 and 2 were issued on 24.03.2008. Fresh summons were issued to the defendant on 30.04.2008, 12.11.2008 as also on 25.02.2009. As per the order dated 30.04.2009, summons sent through ordinary process were received back unserved with a report that the defendant was unavailable on the given address. Vide order dated 31.08.2010 the defendant was directed to be served by way of publication in the daily newspaper "The Hindu" (Chennai edition). Despite service through publication, none appeared for the defendant and accordingly, vide order dated 01.02.2011 the defendant was proceeded ex parte.

3. Plaintiff has filed ex parte evidence by way of affidavit of PW-1, Ms. Surbhi Bansal, Constituted Attorney of the plaintiff. The ex parte evidence by way of affidavit of PW-1 is marked as Ex. PW-1/A.

4. In her affidavit, PW-1 has deposed that the plaintiff is the worldwide owner of the IKEA trademarks and the IKEA Concept which it franchises to its franchisees for the operation of the IKEA Stores in which a wide range of furniture, accessories, bathrooms and kitchen fittings, home and office furnishing products; stationery including paper and paper articles; tools and implements are sold and also for the purpose of running and managing of retail stores and offering services in connection therewith and allied goods and services falling in Classes 2, 8, 11, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 31, 35, 36, 39, 41, and 42 as detailed and described in Fourth Schedule appended to Trade Marks Act. 1999.

5. PW-1 has further deposed that the plaintiff is the proprietor of their celebrated and internationally renowned Trade Mark IKEA (word per se, stylized, as a device, in Hindi and local languages) as also of their trade name M/s. Inter IKEA Systems BV of which the word/mark IKEA forms a significant, material and a key constituent (hereinafter jointly and collectively referred to as the "said trade mark/trade name" and to be construed, understood and interpreted in this manner). The Representation of the plaintiff's Trade Mark IKEA is placed on record and the same is being exhibited as EXHIBIT- PW1/1.

6. PW-1 has further deposed that the artworks involved in the various stylized and device formats of the said trade mark have been created over a period of time and the plaintiff owns the copyrights therein by virtue of they being original artworks. All references to the plaintiff's said trade mark/trade name include the respective artworks involved. The true representation of said Trade Mark of the Plaintiff has been given below:

7. PW-1 has next deposed that the founder of the plaintiff coined, conceived and adopted the trade mark IKEA in about the year 1943. Ever since its bonafide and honest adoption in about the year 1943, the plaintiff has been honestly, commercially and in the course of trade using the said trade mark/trade name in relation to its said goods and business and has built up a globally valuable and enduring trade, goodwill and reputation thereunder. IKEA is a rare, coined, unique word having all the trappings of an invented mark and is an inherently strong mark.

8. PW-1 has also deposed that the plaintiff initially around the year 1943 started using his said trade mark/trade name in relation to pens, wallets, picture frames, table runners, watches, jewellery and nylon stocking etc. and in about the year 1947 the plaintiff started using the same in relation to furniture. Ever since then the plaintiff has been expanding and extending the use thereof to a wide range of its goods and business and intends to further expand the use thereof over a period of time and to cover more and more countries of the world and across all regions and territories.

9. It has further been deposed by PW-1 that as of now the plaintiff's said goods and business under its said trade mark/trade name are branded and sold in over 75 countries of the world and across all continents and regions including in India where in addition to its actual use the plaintiff also enjoys its trans border reputation and use. The plaintiff's said goods are sold and traded through its extensive marketing network including through retail, internet, e-commerce and its affiliates/subsidiaries.

10. PW-1 has next deposed that the plaintiff immensely values and guards its Intellectual Property Rights. A list of plaintiff's registered trade mark IKEA in different classes is placed on record and the same is marked as MARK - A (COLLY). Status report of the plaintiff's trademark IKEA under nos. 471123, 471124, 471125, 616434, 7742408, 772410, 772411, 772412, 772413, 772414, 772415, 772416, 772417, 772419, 772420, 772421, 772422, 772423, 772424, 772425 are placed on record and the same are exhibited as EXHIBIT-PW1/8. PW-1 has also deposed that the plaintiff has placed on record the list of pending applications for registrations of the plaintiff's trademark and the same is marked as MARK-B (COLLY) and copies of registration certificates of the plaintiff's in different countries and details thereof are marked as MARK - C (COLLY).

11. Ms. Surbhi Bansal, PW-1 has next deposed that the sales for the IKEA Group for the financial year 2004 (1 September 2004 - 31 August 2005) are 14.8 billion Euros and for the financial year 2006 (1 September 2005 - 31 August 2006) are 17.3 billion Euros. The sale of the plaintiff has been steadily increasing. The Plaintiff's said Trade Mark IKEA stood amongst the top 50 Brands in the BEST GLOBAL BRANDS 2010. Copy of Invoice bearing No. IKI/BA7/208110 dated 16.10.2007 is being exhibited as EXHIBIT- PW1/9.

12. PW-1 has further deposed that the Plaintiff is an international home products company whose franchisees sell ready-to-assemble furniture such as beds and desks, appliances and home accessories. The company's franchising network is the world's largest furniture retailer and Plaintiff has regularly and continuously been promoting the said distinctive trade mark/trade name and the goods and business there under through extensive advertisements, publicities, promotions, marketing and marketing research and the plaintiff has been spending enormous amounts of money, efforts, skills and time thereon. The plaintiff has been doing so through various means and modes including through the visual and print media, in leading newspapers, trade literature & magazines, over the internet etc. and all of which have tremendous reach, availability and circulation world over including in India. Copies of advertisements and other sales promotional literature of the plaintiff as published and circulated are placed on record and the same is collectively exhibited as EXHIBIT- PW1/6 (COLLY).

13. PW-1 has also deposed that the plaintiff's said trade mark/trade name have acquired enviable and enduring goodwill, reputation and users in India as also in the international markets.

14. PW-1 has next deposed that the plaintiff's said goods and business are known, recognized, demanded, sold and traded world over with reference to its said trade mark/trade name. The members of the trade, industry, the consumers and general public at large in India and world over are well aware of the plaintiff, the plaintiff's said trade mark/trade name and the plaintiff's said goods and business thereunder. PW-1 has further deposed that the plaintiff's said trade marks/trade name are well known Trade Marks within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999. Brochure of the plaintiff is placed on record and the same is being exhibited as EXHIBIT-PW1/3 and EXHIBIT-PW1/4.

15. PW-1 has also deposed that plaintiff's said trade mark/trade name has become distinctive, and is associated with the plaintiff and plaintiff's said goods and business only. The purchasing public, the trade and industry at large in India and world over identify and distinguish the plaintiff's said goods under the said trade mark/trade name with the plaintiff and from the plaintiff's source and origin alone and regard them as a high quality product exclusively as that of the plaintiff.

16. It has further been deposed by PW-1 that the Plaintiff has adopted the said Trade Mark IKEA as an essential and material part of its Domain Name viz www.IKEA.com as well.

17. PW-1 has also deposed that M/s. Ikea Trading (India) Pvt. Ltd., is an Indian subsidiary/affiliate of the plaintiff in India. It has further been deposed by PW-1 that the said Indian subsidiary of the plaintiff is one of the 40 odd superstar trading houses in India. This is a special status accorded by the Government for companies with trading activities in excess of INR 7 billion (USD 140 million) per year. IKEA INDIA is a major regional buying center for the IKEA GROUP, specializing in purchases of textiles and fabrics from South Asia comprising India, Pakistan, and Sri Lanka.

18. PW-1 has next deposed that in view of the plaintiff's proprietary rights both statutory and common law in its said trademark/trade name/domain name, its goodwill and reputation, the plaintiff has the exclusive rights to the use thereof and nobody can be permitted to use the same or any other deceptively similar trade mark/trade name/domain name thereto in any manner whatsoever, in relation to any specification of goods without the leave and license of the plaintiff.

19. PW-1 has further deposed that the defendant M/s. IKEA Furniture Private Ltd., No. 1 and 2, Balaji Nagar II ST, Royapettah, Chennai-14 is apparently engaged in the same trade and business as that of plaintiff namely manufacture of furniture etc.

20. PW-1 has also deposed that the defendant has adopted and started using or intends to use, in relation to its impugned goods and business an identical trade Mark/ trade name IKEA (hereinafter referred to as the "impugned Trade Mark/ Trade Name) and the impugned trade mark/ trade name as copied and imitated by the defendant is identical with and deceptively similar to the plaintiff's said trade marks/trade name IKEA in each and every respect including phonetically, structurally, in its basic idea and in its essential features. The impugned goods and business there under are of the same/similar/allied/cognate nature and description as that of the plaintiff.

21. PW-1 has further deposed that the defendant by the adoption and use of the impugned trade mark is violating the plaintiff's statutory and common law right in the said trademark and trade name and thereby infringing plaintiff's registered trademark(s) and passing off and enabling others to pass off their goods and business as that of the plaintiff as well as diluting the plaintiff's proprietary rights and goodwill and reputation therein.

22. Ms. Surbhi Bansal, PW-1 has further deposed that the defendant is fully aware or ought to be aware of the plaintiff's rights, goodwill, reputations, benefits and users etc. in the plaintiff's said trade mark, trade name & domain name at the time of their impugned adoption and use of the impugned trademark. The resemblance between the rival trade mark / trade name is so close that it can hardly occur except by deliberate imitation.

23. It has further been deposed by PW-1 that the defendant has adopted and started using the impugned trade mark/ trade name dishonestly, fraudulently and out of positive greed with a view to take advantage and to trade upon the established goodwill, reputation and proprietary rights of the plaintiff in the plaintiff's said trade mark/ trade name. By the defendant's impugned adoption and use, deception and confusion is ensuing and/or is likely to so ensue in the market and amongst the general public at large. The plaintiff's said trade mark is otherwise being diluted and eclipsed thereby and any person not knowing clearly the relationship between the parties to this action is bound to be confused by the defendant's impugned adoption and use and might well do business with the defendant thinking that he is dealing with the plaintiff or that some strong, vital and subtle links exist between the plaintiff and the defendant. The defendant intends to encash upon the hard earned goodwill of the plaintiff.

24. PW-1 has further gone on to depose that due to the defendant's impugned activities, the plaintiff is suffering/ought to suffer massive losses and damage both in business and in reputation and as such these losses and damage are unliquidated; monetarily being incapable of exact and accurate assessment. Unwary purchasers and trade persons are being confused and deceived/likely to be deceived as to the origin of goods and business. It has further been deposed that the defendant in view of its impugned business activities is liable to pay damages to the plaintiff to the tune of minimum Rs. 20,000,01/-.

25. PW-1 has also deposed that the plaintiff in the month of August, 2007 launched inquiries through the trade to ascertain the defendant's activities under the impugned trade mark/trade name. The said enquiries revealed that the defendant has so far not started using the impugned trade mark/trade name in the course of trade on its vendible impugned goods and business and nor has the plaintiff so far come across any of the impugned vendible goods under the impugned trade mark/trade name in the market, however, the defendant is soliciting trade, distribution and marketing networks in relation to the impugned goods under the impugned trade mark/trade name in Delhi and other parts of the country. The defendant has all the intention of commercially using the impugned trade mark/trade name in relation to the impugned goods/business if not already so used. The defendant's user, thereof if any would be clandestine, surreptitious, sporadic, restricted, minimal and very recent and that too without issuing any formal bills and invoices making it very difficult to detect and verify the precise nature of the defendant's activities and therefore the defendant's use of impugned trade mark/trade name, if any, is void ab-initio.

26. I have heard counsel for the plaintiff and carefully perused the documents which have been placed on record along with the affidavit by way of evidence of PW-1. Plaintiff has proved the copies of its trade mark registration certificates in different classes in India which have been marked as Mark-A(Colly). Plaintiff has also proved its copies of legal proceeding certificates which have been exhibited as Ex. PW-1/14. Plaintiff has also proved its pending applications for registration in India and the same are marked as Mark-B (Colly). Further, plaintiff has proved the copies of registration certificates of the plaintiff in different countries across the world which have been marked as Mark-C (Colly). Plaintiff has also proved the copies of advertisements and other sales promotional literature of the plaintiff which is exhibited as Ex.-PW-1/6 (Colly) as also its brochure which has been exhibited as Ex. PW-1/3 and Ex. PW-1/4. Plaintiff has also proved the downloaded documents from its website which is exhibited as Ex.-PW-1/5. In addition to the above, plaintiff has also placed reliance on copies of news reports showing commencement of plaintiff's activities in India which are exhibited as Ex. PW-1/13.

27. On the basis of the documents placed on record, plaintiff has been able to prove that the plaintiff is the registered proprietor of the trade mark "IKEA" not only in India but is the worldwide owner of its "IKEA" trade marks which is evident from the certificates of registrations placed on record. Plaintiff has also established that the plaintiff has created various stylized and device formats of the said trade mark over a period of time and hence the plaintiff owns the copyright therein by virtue of them being original artworks. Plaintiff is an international company that deals in ready-to-assemble furniture, home accessories etc. Plaintiff has also established that the trade mark "IKEA" was coined by the plaintiff as far back as in the year 1943, which is evident from the timeline displayed by the plaintiff on its website. Furthermore, the plaintiff has been able to establish that over a period of time, the plaintiff has diversified not only with respect to its products and services but also in terms of its presence and business operations in various countries world over, including India. By virtue of its presence across more than 70 countries in the world, which is evident from the perusal of its sales promotional literature placed on record, plaintiff has been able to prove that it enjoys trans border reputation and boasts of an extensive marketing network through internet, retail, e-commerce and its affiliates/subsidiaries. Further, the plaintiff has established that ever since its adoption, the plaintiff has been using the said trademark regularly and continuously and in fact, the plaintiff has been promoting the said mark along with the goods sold there under through extensive advertisements, publicity, promotions and marketing by way of publication/broadcast through print/visual media including leading newspapers, magazines etc. In addition to the above, plaintiff has also placed reliance on the an article published in the magazine, "The Business Week", wherein, the plaintiff company has been rated among the top 50 brands in the year 2002 as also in the year 2010. The plaintiff has successfully established that the plaintiff's trade mark has acquired an enviable and enduring goodwill, reputation and users not only in India but across numerous countries inasmuch as the plaintiff's goods are known, recognized, demanded, sold and traded worldwide with reference to its trade name/trade mark IKEA. The evidence of the plaintiff remains unchallenged and un-rebutted.

28. In the case of Evergreen Sweet House Vs. Ever Green and Ors. reported at MANU/DE/0959/2008 : 2008 (38) PTC 325 (Del), it was observed as under:

15. Section 29(1) deals with a situation where the defendant uses a mark, which is identical or deceptively similar to that of the plaintiff, in respect of the same goods or services, and in such manner that it is likely that such use is taken as being an use as a trademark. This amounts to infringement. To fall within Section 29(1), the defendant's use of the mark must be so that it is likely that the public assumes that the said mark is used as a trademark. Section 29(2) deals with three situations; one where the defendants mark is identical to that of the plaintiff and in respect of similar goods. Two, where the marks are similar and in respect of goods which are identical or similar. Three, the marks as well as the goods are identical. Infringement does not take place if only one of the three ingredients are satisfied; the plaintiff has to prove that use by the defendant is likely to cause confusion on the part of the public or is likely to have an association with the registered mark.

29. Having regard to the evidence on record and comparing the impugned trademark of the defendant with that of the plaintiff, I am of the view that the impugned trade mark of the defendant "IKEA" is identical to that of the plaintiff in each and every respect including phonetically, structurally, in its basic idea and in its essential features. Furthermore, the defendant is engaged in the same trade/line of business as the plaintiff namely manufacture of furniture etc. It has been established by the plaintiff beyond reasonable doubt that the said distinctive trade mark "IKEA" has come to be associated with the plaintiff and plaintiff's goods for a long time now and the purchasing public and the industry at large distinguishes and identifies the goods under the said trade mark as originating from the plaintiff. In light of the above, in my view, adoption of an identical mark by the defendant, that too in the same line of business, is malafide and illegal as it is bound to cause confusion and deception in the minds of public at large with respect to the source of the goods originating from the defendants and many existing/prospective consumers may assume a commercial link/nexus between the plaintiff and the defendant and otherwise also adoption of the impugned mark by the defendant will lead to dilution of the trade mark of the plaintiff if the quality of products originating from the defendant is inferior to that of the plaintiff. Furthermore, by projecting such a commercial connection or relationship with the plaintiff, the defendants would be encashing on the hard earned goodwill and reputation established by the plaintiff over the period of years and passing off their goods as those of the plaintiff.

30. The plaintiff has also claimed damages on account of illegal profits earned by the defendant along with delivery up of the goods bearing the trade mark "IKEA" or use of the said mark as their trade name or a constituent of their trade name.

31. Order sheets show that despite service of summons, the defendant has deliberately stayed away from the present proceedings to ensure that an enquiry into their accounts for determination of damages cannot take place. In the case of Tata Sons Ltd. v. Hoop Anin & Ors. reported at MANU/DE/6907/2011 : 188 (2012) DLT327 punitive damages to the tune of 5 lacs were awarded to the plaintiff. Relevant paras of the judgment are reproduced below:

9. The plaintiff has also claimed Rs. 20,05,000/- as damages from defendants No. 1 & 2. Dealing with the damages, this Court in Tata sons Ltd. v. Manoj Dodia & Ors. (supra) inter alia observed as under:

The promotion and building of a Trade Mark, particularly a mark which is used in relation to a variety of good and/or services, requires considerable efforts, skill and expenses. The brands are not built in a day, it takes years to establish a brand in the market. Moreover, brand equity can be earned only if the quality of the product sold and/or services provided under that name are consistently found to be of superior quality. No amount of marketing efforts and promotional expenditure can build a brand, particularly in the long run, if the quality of the product/service does not commensurate with the marketing efforts. The brands, particularly well known brands, themselves are now becoming highly valuable and in fact are being sold as standalone products. The companies which invest heavily in brand building and back them up by quality products are bound to suffer not only in reputation but also in financial terms, on account of diminution in the value of the brand as well as sale of their products/services, if the brands are not given adequate protection by the Courts, by awarding punitive damages against the infringers. Also, a soft or benevolent approach while dealing with such persons, is also likely to prejudicially affect the interests of the consumer, who may pay the price which a premium product commands in the market, but may get an inferior product on account of such unscrupulous persons using trademarks of others for their own commercial benefit, at the cost not only of the trade mark owner, but also the consumer who purchases their product.

32. Another purpose behind awarding punitive damages is to deter those who may be waiting in the wings and may be tempted to imitate the trade mark of others, in case those who are sued before the Courts are not made to pay such damages as would really pinch them. Awarding token damages may, therefore, not serve the desired purpose. Our country is now almost in the league of advanced countries. More and more foreign companies are entering our markets, with latest products. They would be discouraged to enter our country to introduce newer products and make substantial investments here, if the Courts do not grant adequate protection to their intellectual property rights such as patents, trademarks and copyright. Most of the products sold by these companies are branded products, the marks on them having trans-border reputation and enjoying tremendous brand equity. It is, therefore, becoming increasingly necessary to curb such trade mark piracies lest they drive away the huge foreign investment our country is attracting. The Court should not give premium to dishonesty and unfair practices by those who have no compunctions in blatantly using the trademark of others for making unearned profits.

See also Hero Honda Motors Limited v. Rafiq Memon [MANU/DE/1086/2012 : 2012 (52) PTC 449 (Del.)]; Gora Mal Hari Ram Ltd. Vs. Ashique Exports [MANU/DE/7387/2011 : 2012 (50) PTC 428 (Del.)]; Relaxo Rubber Limited and Anr. Vs. Selection Footwear and Anr. [MANU/DE/0179/1999 : 1999 PTC 578].

33. I am in agreement with the aforesaid submission of learned counsel for the plaintiff that damages in such cases must be awarded in order to provide adequate protection to such brands that take years and decades to establish their brand names in the public domain and also to deter such blatant indulgence in infringing activities by people. Also, in my view, a defendant, who chooses to stay away from the proceedings of the Court, should not be permitted to enjoy the benefits of evasion of court proceedings. R.C. Chopra, J. has very succinctly set out in Time Incorporated v. Lokesh Srivastava and Anr. reported at MANU/DE/0104/2005 : 2005 (30) PTC 3 (Del) that punitive damages are founded on the philosophy of corrective justice. A party who chooses not to participate in court proceedings and stays away must, thus, suffer the consequences of damages as stated and set out by the plaintiff. There is a larger public purpose involved to discourage such parties from indulging in such acts of deception and, thus, even if the same has a punitive element, it must be granted.

34. For the reasons stated above, the plaintiff has made out a case for grant of decree as prayed in the plaint. Accordingly, the suit is decreed in favour of the plaintiff and against the defendant in terms of para (a) of the prayer. Plaintiff is also entitled to damages to the tune of Rs.2 lakhs.

35. Decree sheet be drawn up accordingly.

Amber Food Products Vs Dilip Kirplani and Ors.

2006(33)PTC118(Del)

IN THE HIGH COURT OF DELHI

C.S. (OS) No. 1443/2005 and I.A. No. 5556/2005

Decided On: 15.05.2006

Appellants: Amber Food Products

Vs.

Respondent: Dilip Kirplani and Ors.

Judges/Coram:

Manju Goel, J.

Counsels:

For Appellant/Petitioner/Plaintiff: Ameet Datta and Neha Ahuja, Advs.

For Respondents/Defendant: S.K. Bansal and Ajay Amitabh Suman, Advs.

JUDGMENT

Manju Goel, J.

1. Defendant NOs. 1, 2 and 3 were served on 3.11.2005 and defendant NOs. 4 & 5 were served on 8.11.2005. Till date no written statement has been filed. The application under Order VIII Rule 10 CPC seeks a decree. The defense counsel wants adjournment to file a reply to the application. The defendant has not so far filed any written statement and if an adjournment is granted now to file a reply to the application under Order VIII Rule 10 CPC the sole purpose of the provisions of Order VIII Rule 10 CPC as it stands after amendment will be defeated. Therefore, the prayer for adjournment is, rejected.

2. Having heard the counsel for the parties I pass the following judgment.

The plaintiff has filed the suit seeking injunction against the defendants to restrain them from reproducing the artistic feature, get up, arrangement, lay out, colour scheme of the plaintiff's packaging in "smooth milk" which may amount to infringement of the plaintiff's copy right in respect of labels of the plaintiff's product being sold under the trade marks 'smooth milk'. An injunction has also been asked to restrain the defendants from manufacturing, selling or offering for sale, advertising, distributing, exporting, directly or indirectly dealing in goods similar to that of the plaintiff's packaging containing the essential features of the plaintiffs 'smooth milk' packaging. The plaintiff made the following prayer in the plaint:

(a) An order of permanent injunction restraining the Defendants, their servants, officers and agents and any other person acting on their behalf from manufacturing, selling, offering for sale, advertising, distributing, exporting, directly or indirectly from substantially reproducing the artistic features, get up, arrangement, lay out, colour scheme of the plaintiff's packaging in the "SMOOTH MILK" artistic work amounting to infringement of copyright of the Plaintiff therein;

(b) An order of permanent injunction restraining the Defendants, their servants, officers and agents and any other person acing on their behalf, from manufacturing, selling, offering for sale, advertising, distributing, exporting, directly or indirectly dealing in goods similar to that of the Plaintiff's packaging containing the essential features of the Plaintiff's "SMOOTH MILK" packaging and/or its get up, arrangement, layout, colour scheme/combination as set out in the plaint or doing any other act leading to the passing off of their goods and business as that of the plaintiffs;

(c) An order for delivery up of the labels, stationery articles, blocks, dies and any other material bearing the impugned get-up/layout for the purpose of destruction/erasure;

(d) An order for rendition of accounts of profits illegally earned by the Defendant on accounts of the use of the impugned get-up/lay out and a decree for the amount so found due to be passed in favour of the Plaintiff;"

3. Although the prayer A & B are not very happily drafted one can gather the intention of the plaintiff to seek an injunction against infringement of copyright. There is no prayer for restraining the defendants from selling their product under the trade name 'smooth milk' used by the plaintiff or 'smooth butter' adopted by the defendants. Accordingly the plaint has to be examined keeping in view this prayer.

4. The plaintiff alleges in the plaint that the plaintiff has been manufacturing, marketing and selling toffees and confectionaries under various brand names as Soft Fruits, King Size, Milky Toffees, Coco Bourbon, Paki Kery, Coconut, Buter Eclair, Elaichi, Aampapad, Badam Malai, Milk Mara, Pista Malai, Bambaiya Aam, Butter Cream and 'Smooth Milk'. The plaintiff has been selling these products at Madhya Pradesh as well as at various cities across India and has considerable reputation. The trade mark 'smooth milk' was adopted in the year April, 2005. The candies marketed and sold under this trade name became instantly popular in Delhi. The sales figure between April to August, 2005 was Rs. 33,600. The labels of 'smooth milk' have distinctive get up, colour scheme and lay out. The distinctive feature of the packaging are:

a. The colour scheme of yellow, blue, brown and white.

b. On the front panel the 'smooth milk' label appears in blue colour with a red border around the words 'smooth milk' as well as around the plaintiff's trade name Amber.

c. The panel shows milk flowing out of jug over the candies spread on the base.

d. Around the middle of the panel is brown band with words Delicious Caramel Candy written in a stylized manner.

e. The candies are small and round in shape.

5. The plaintiff has copy right over the design of the label. The plaintiff is a prior user of this label. The art work of the label was designed in February, 2005. The transfer of rights for using the label was obtained from the designer. The defendants have dishonestly copied the trade label of the plaintiff and are thereby causing confusion in the minds of its consumers. The defendants are selling identical products and are holding out their products to be variant of the products of the plaintiff and are trying to pass off their own products as those of the plaintiffs. The defendants are aware that the plaintiff has adopted this label for selling his candies and has dishonestly adopted the same. The plaintiff therefore, seeks prayer mentioned above.

6. The plaintiff has submitted the labels used by the defendants for selling their products Delicious Caramel Candy under the trade marks 'smooth butter'. The plaintiff has also submitted the wrapper of its own product of Delicious Caramel Candy. The two wrappers are deceptively similar to one another to any casual observer. Both the wrappers have the same colour combination. The words 'smooth' in the two wrappers are almost similar and appear to be reproduction of each other. The style in which 'smooth milk' and 'smooth butter' are written are also deceptively similar. There are of course distinction between the two wrappers. While the plaintiff's wrapper/label shows milk flowing out of a jug, the defendants' wrapper shows that the jug from which the milk is flowing out is held by a man with a red apron on his waist and a blue cap. But the man does not occupy the centre space and he is almost at the left edge of the label and, therefore, the similarity of milk flowing out of a jug in the two labels is quite striking. Both the labels have the same band of brownish colour on which the same words "Delicious Caramel Candy" are written. Just as the plaintiff has used its name Amber on the top left hand corner, the defendants have also written their trade name Vijaya at the top left hand corner. The Caramels on the two labels are also some what similar. Thus, although the two labels are not identical they are deceptively similar. The defendants cannot dispute that there has been a conscious effort to copy the plaintiff's label. To any person of ordinary prudence the infringement of copy right is apparent. No evidence is required to be led to prove that the defendants have infringed copy right of the plaintiff in the label of 'smooth milk'.

7. If the defendants use this label it will not only infringe the plaintiff's copy right but may also amount to passing off their product as those of the plaintiff's.

8. In view of the above the plaintiff is entitled to injunction to restrain defendants from continuing to use the label 'smooth butter' or any label which may be similar to the plaintiff's label of 'smooth milk' as the same will amount to infringement of plaintiff's copy right. The plaintiff is also entitled to restrain the defendants from selling his product under his wrapper or label deceptively similar to 'smooth milk'. However, the plaintiff's claim for damages is not sound. How the damages have been suffered has not been made out in the plaint. Hence, the prayer for damages has to be dismissed.

9. The plaintiff is also entitled to an order of delivery up all the labels, stationery articles etc. used for manufacturing the labels as also for accounts to identify the profit illegally earned by the defendants by using the label. The suit is accordingly decreed. The defendants are restrained from using their label of 'smooth butter' or any other label which may be similar to the label of the plaintiff amounting to infringement of copy right by the plaintiff in the label of 'smooth milk'. The defendants are also restrained from selling their product with the label similar to the plaintiff's label of 'smooth milk'. Decree for mandatory injunction is also granted directing the defendants to deliver up the infringing labels as well as other articles which may carry the same lay out or get up of the label to the plaintiff. The defendants shall render true and correct accounts of profits earned by the sale of products under the labels 'smooth butter' within two months hereof, falling which the Court will appoint a Local Commissioner to go into accounts.

Balar Marketing Pvt. Ltd. Vs N. Ramu Devi

MIPR2007(3)456, 2008(36)PTC289(Del)

IN THE HIGH COURT OF DELHI

IA No. 12460/2007 and CS (OS) 1942/2006

Decided On: 31.10.2007

Appellants: Balar Marketing Pvt. Ltd.

Vs.

Respondent: N. Ramu Devi

Judges/Coram:

Badar Durrez Ahmed, J.

Counsels: 

For Appellant/Petitioner/plaintiff: Ajay Amitabh Suman, Adv

For Respondents/Defendant: Sandeep Kumar, Adv.

JUDGMENT

Badar Durrez Ahmed, J.

1. This is a joint application filed on behalf of the plaintiff and the defendant under Order 23 Rule 3 read with Section 151 of the Code of Civil Procedure, 1908 for recording the compromise/settlement arrived at between the parties and for decreeing the suit in terms thereof.

2. The plaintiff had instituted the suit in respect of its trademarks "KUNDAN" and "KUNDAN CAB" in respect of electric accessories and fittings including electric switch gears, main switches, fuse unit wires and cables. The defendant had adopted the mark "KHUMAN CAB" in respect of the same goods. Now, the parties have settled the disputes whereby the defendant has acknowledged that the plaintiff is the proprietor of the trademarks "KUNDAN" and "KUNDAN CAB" in respect of the said goods. The defendant has also undertaken not to directly or indirectly manufacture any of the goods in question under or using the imitation labels or any other packaging material and /or wrapper bearing the trade marks "KUNDAN CAB", "KHUMAN CAB" and "KHUMAN CAB LABEL" or any other deceptively similar trademark as that of the plaintiff. It has also been agreed that the defendant shall not use any artistic work, colour scheme, getup or layout which is similar to that of the plaintiff's artistic work, colour scheme, getup or layout in respect of the said goods. The defendant has also undertaken to withdraw the application for registration of the trademark "KHUMAN CAB" which she had filed before the Trade Mark Registry. The parties have agreed that the suit may be decreed in terms of paragraph 26 (i) (a), (b) and (c) of the plaint. The plaintiff has agreed to give up all the other reliefs claimed by it in the plaint. The parties have also agreed that they shall be bound by the terms of this settlement and that it also binds their agents, representatives, legal heirs and all other persons claiming under them.

3. The application has been signed by Smt. N. Ramu Devi, who is the proprietor of the defendant concern. It has also been signed by Mr Paras Jain, who is a director in the plaintiff company. The application is also signed by the respective counsel for the parties. The application is also supported by affidavits of the said Smt. N. Ramu Devi and Mr Paras Jain.

4. I have examined the contents of the compromise/settlement, arrived at between the parties and I find the same to be lawful. Accordingly, the compromise is taken on record. The suit is decreed in terms of paragraph 26(i) (a), (b) and (c) of the plaint. The suit is dismissed in respect of the other prayers. This application is marked as Ext. C-1 and shall form part of the decree. The formal decree be drawn up.

This application, the suit and other pending applications stand disposed of. The next date of 16.11.2007 stands cancelled.

Arihant Tea Company Vs Jayshree Tea and Industries Ltd.

2009(110)DRJ401, 2009(40)PTC267(Del)

IN THE HIGH COURT OF DELHI

C.M. (M) 903/2008 and C.M. 10911/2008

Decided On: 22.04.2009

Appellants: Arihant Tea Company

Vs.

Respondent: Jayshree Tea and Industries Ltd.

Judges/Coram:

Manmohan, J.

Counsels: 

For Appellant/Petitioner/plaintiff: Ajay Amitabh Suman, Adv

For Respondents/Defendant: Nitin Gupta, Adv.

JUDGMENT

Manmohan, J.

1. Present petition has been filed under Article 227 of the Constitution of India challenging the order dated 4th June, 2008 whereby Additional District Judge dismissed petitioner/plaintiff's application filed under Order 6 Rule 17 CPC.

2. Learned Counsel for petitioner states that in view of coming into force of new Trade Marks Act, 1999 with effect from 2003, petitioner had applied for registration of its mark under class 35 in the category of services. In July, 2007 petitioner/plaintiff received a new certificate of registration under class 35 and consequently, in November, 2007 it filed an application under Order 6 Rule 17 CPC for adding relief of infringement in an already pending passing off suit. He submitted that by way of the amendment application, petitioner/plaintiff wanted to bring on record the said subsequent event and at this stage, trial court could not have gone into merits or demerits of the proposed amendment - as it did.

3. Learned Counsel for respondent/defendant, however, submitted that if the amendment were to be allowed, it would amount to introducing a new cause of action. In this context, he relied upon a judgment of Hon'ble Supreme Court in the case of Alka Puri Cooperative Housing Society Ltd. v. Jayantibhai (deceased) Thr. LRs. He further stated that though petitioner/plaintiff claims to have filed its application for registration in the year 2004, it did not bring this fact to the knowledge of the trial court till November, 2007. He lastly submitted that as trial had already commenced in the matter, present amendment application should not be allowed.

4. It is well-settled that Order 6 Rule 17 CPC gives power to the Court to allow such amendments which are necessary for the purpose of determining the real question in controversy between the parties. In the present case, petitioner/plaintiff is claiming protection of its mark and by virtue of the amendment application, petitioner/plaintiff only wants to bring on record subsequent event that its mark has been registered under class 35 of new Trade Marks Act, 1999. In my opinion, the amendment sought for is necessary for adjudication of the matter in controversy between the parties. The proposed amendment would also prevent multiplicity of litigation between the same parties. Moreover, the aforesaid judgment of Hon'ble Supreme Court cited by respondent/defendant is inapplicable as I am of the view that by way of proposed amendment, there will be no change in the fundamental/basic character of the suit which is primarily aimed at protecting petitioner/plaintiff's mark 'Birla Tea'.

5. As far as respondent/defendant's submission that petitioner should have earlier brought to the notice of trial court that it had applied for registration under class 35, I am of the view that there is a separate statutory procedure provided for registration of a mark. Under the said procedure there is no requirement or obligation on the part of petitioner/plaintiff to bring the fact of it having applied for registration to the notice or knowledge of trial court. In any event, it is pertinent to mention that before a registration certificate is issued, statutory procedure provides for an advertisement in a trade mark journal. Therefore, I am of the view that this objection is meaningless.

6. Respondent's other objection that amendment cannot be allowed at this stage as trial has commenced is untenable in law, as I am of the view that after the 2002 amendment of CPC, court has power to allow amendment after trial has commenced if the court comes to the conclusion that in spite of due diligence a party could not have raised the matter before commencement of trial. Since in the present case, petitioner/plaintiff has applied for amendment within four months of it having received a registration certificate, I am of the view that there is no delay in filing amendment application and consequently, this objection of respondent/defendant is misconceived.

7. Consequently, in view of the aforesaid discussion, present petition is allowed and petitioner/plaintiff is directed to file an amended plaint within a period of four weeks from today. Trial court will permit defendant/respondent herein to file an amended written statement within a further period of six weeks. With the aforesaid observations, present petition and pending application stand disposed of.

Event and Entertainment Management Association Vs Union of India & Ors.

2012(52)PTC380(Del)

IN THE HIGH COURT OF DELHI

W.P. 6410/2008 and CM No. 12254/2008 (for Stay)

Decided On: 02.05.2011

Appellants: Event and Entertainment Management Association

Vs.

Respondent: Union of India & Ors.

Judges/Coram:

Dr. S. Muralidhar, J.

Counsels:

For Appellant/Petitioner/Plaintiff: Mr. S.K. Bansal with Mr. Vikas Khera, Mr. Ajay Amitabh Suman, Mr. R.K. Jha and Mr. Akshay Shrivastav, Advocates

For Respondents/Defendant: None

ORDER

S. Muralidhar, J.

1. The Petitioner is a Society registered under the Societies Registration Act, 1860. It is an association of members from all over India engaged in the business of organising events, functions and entertainment shows like road shows, music concerts/shows, brand promotion activities, dealer meet and other social events. It is stated that while organising the aforementioned events and functions the members of the Petitioner association on instructions from their respective clients make arrangements for playing music recorded on tapes, compact discs, DVDs and other storage devices. They also makes arrangements for performance of live music as well as singing of literary works in the forms of songs by well known artistes. It is stated that Super Cassettes Industries Ltd. ("SCIL"), Respondent No. 5, is in the business of, inter alia, distributing public performance licences and sound recordings, songs, musical titles, etc. in which SCIL claims copyright. SCIL issues licences in respect of such works and collects licence fees/royalties from members of the Petitioner association. The Petitioner's case is that SCIL is not a registered copyright society in terms of Section 33 of the Copyright Act, 1957 ("the Act") and without such licence cannot carry on the business of issuing and granting public performance licences.

2. The immediate provocation for the present writ petition is a Circular dated 4th March 2008 issued by the Commissioner of Police, Delhi in which, after reproducing Section 51 of the Act, the following directions were issued:

It is emphasized upon all concerned that whenever any complaint is received from M/s. Super Cassettes Industries Ltd., in respect of violation of the provisions of Copyright Act, 1957, the same may be attended to and police assistance may be provided as we are doing in cases of Phonographic Performance Ltd., and Indian Performance Right Society Ltd.

3. The Petitioner's case is that the said Circular is without the authority of law and has been issued at the behest of SCIL. It is not based on any particular provision of the Act. It is unconstitutional inasmuch as the power of the Police under Section 64 of the Act is sought to be invoked by SCIL for interfering with the legitimate business activities of the Petitioner and its members. Elaborating on the above submission, Mr. S.K. Bansal, learned counsel appearing for the Petitioner refers to the provisions of the Act and in particular to Sections 51, 52 and 64 thereof. It is submitted that the power vested in the Police officer under Section 64(1) to seize without warrant all copies of a work in respect of which infringement of copyright is being or is likely to be committed has to be based on a prima facie satisfaction that there is such infringement. It cannot be a mechanical exercise based only on the written complaint of the owner of a copyright. It is pointed out that during the preliminary investigation by the police, the alleged infringer might rely on Section 52 of the Act to show that in fact there is no infringement. It is further submitted that the Police machinery cannot be made to act at the behest of certain privileged copyright owners. Every complaint under the Act has to be dealt with by the Police in accordance with law. It is pointed out that on account of the impugned Circular, the Petitioner and its members are subjected to harassment by the Police at the behest of SCIL. It is submitted that the impugned Circular violates the fundamental rights of the members of the Petitioner association under Articles 14, 19(1)(g) and 21 of the Constitution. It is submitted that the impugned Circular is without the authority of law.

4. Pursuant to the notices issued in this writ petition, a counter affidavit has been filed on behalf of Respondent Nos. 1, 3 and 4 where apart from a bare denial of the aforementioned writ petition no attempt is made to provide a legal justification for the impugned Circular. The counter affidavit merely reproduces Sections 33, 34, 34A and 35 of the Act.

5. In the counter affidavit filed on behalf of SCIL, it is stated that SCIL collected licence fees/royalties when approached by event managers for issuance of a licence. It is denied that SCIL has illegally or unauthorisedly collected royalty for use of copyrighted works by the members of the Petitioner association. Referring to the proviso to Section 33 of the Act, it is contended that there is no restriction or mandatory requirement for the owner of a copyright to become either the member of the society or form a society for carrying on the business of grant of licence. It is stated that SCIL seeks help of the Police only in terms of the Act to prevent piracy of its copyrighted works.

6. None has appeared on behalf of the Respondents. Consequently, this Court has gone by the stand taken in their respective counter affidavits.

7. The Act provides both for civil and criminal remedies for infringement of copyright. While Section 55 deals with the civil remedies, the criminal remedies are provided under Sections 63 and 64 of the Act. Section 63 postulates filing of the criminal case before a criminal court followed by a trial and resultant punishment, if any. Section 64 empowers the Police to seize infringing copies which are then produced before a Magistrate. In terms of Section 64(2) of the Act, a person having an interest in any copy of the work so seized, may within 15 days of such seizure make an application to a Magistrate for restoration to him of such copies. Upon such application, the Magistrate is required to hear the application and the complainant and make such further inquiry before passing any order on the application.

8. In order that the power to seize in terms of Section 64 of the Act is not exercised in an arbitrary and whimsical manner, it has to be hedged in with certain implied safeguards that constitute a check on such power. Consequently, prior to exercising the power of seizure under Section 64(1) of the Act the Police officer concerned has to necessarily be prima facie satisfied that there is an infringement of copyright in the manner complained of. In other words, merely on the receipt of the information or a complaint from the owner of a copyright about the infringement of the copyrighted work, the Police is not expected to straightway effect seizure. Section 52 of the Act enables the person against whom such complaint is made to show that one or more of the circumstances outlined in that provision exists and that therefore there is no infringement. During the preliminary inquiry by the Police, if such a defence is taken by the person against whom the complaint is made it will be incumbent on the Police to prima facie be satisfied that such defence is untenable before proceeding further with the seizure.

9. The impugned Circular is in the form of a direction to "all concerned" which necessarily means members of the police force. It is to the effect that whenever a complaint is received from SCIL "the same may be attended to and police assistance may be provided." A reference is also made in the impugned Circular to a similar practice being adopted in receipt of complaints from the Phonographic Performance Ltd. and the Indian Performance Rights Society Ltd. The impugned Circular has to be understood as requiring the Police to act in accordance with law and nothing more. The impugned Circular is bad in law inasmuch as it impliedly directs the police force to treat complaints received from SCIL as class requiring special attention. To the extent the impugned circular privileges the complaints from SCIL over other complaints from owners of copyright it is unsustainable in law for the simple reason that there has to be equal protection of the law in terms of Article 14 of the Constitution.

10. The Police is not expected to act differently depending on who the complainant is. All complaints under the Act require the same seriousness of response and the promptitude with which the police will take action. Likewise, the caution that the Police is required to exercise by making a preliminary inquiry and satisfying itself that prima facie there is an infringement of copyright will be no different as regards the complaints or information received under the Act. The apprehension of the Petitioner that the impugned Circular is not an innocuous one and that it privileges complaints received from SCIL over other complaints of violations of the Act cannot be said to be unfounded. As long the police are discharging their statutory duties in accordance with law, there is no need for circulars such as the impugned one.

11. Accordingly, this Court set asides the impugned Circular dated 4th March 2008 to the extent that it requires the Police force in Delhi to treat complaints received from SCIL about violation of the Act as a class requiring a special treatment. The complaint received from SCIL will be treated as any other complaint received from any other copyright owner under the Act. The writ petition and the pending application are allowed in the above terms, but in the circumstances, with no order as to costs.

DANDI SALT P.LTD.& ANR VS INDO BRINE INDUSTRIES LTD.& ORS.-SC

IN THE SUPREME COURT OF INDIA

Petition(s) for Special Leave to Appeal (Civil) No(s).33463/2012

(From the judgement and order dated 09/10/2012 in AFO No.242/2012 of The

HIGH COURT OF GUJARAT AT AHMEDABAD)

Date of Order: 14.12.2012

These Petitions were called on for hearing today.

Appellant: M/S DANDI SALT P.LTD.& ANR 

Vs.

Respondent: M/S INDO BRINE INDUSTRIES LTD.& ORS.

(With prayer for interim relief and office report)

WITH S.L.P.(C)...CC NO. 20246 of 2012

WITH I.A. 1 (C/Delay in filing SLP and office report)

Hon'ble Judges: 

HON'BLE MR. JUSTICE D.K. JAIN, HON'BLE MR. JUSTICE MADAN B. LOKUR,  JJ.

Counsels: 

For Appellant/Petitioner/Plaintiff:

Mr. S.K. Bansal, Adv., In SLP 33463/12 Mr. Ajay Amitabh Suman, Adv., Mr. Suwarn Rajan, Adv., Mr.Rakesh Kumar,Adv.-on-Record, In CC 20246/12 Mr. Arjun Garg, Adv.-on-Record, Mr. Anand Shankar Jha, Adv.,

For Respondents/Defendant: 

Mr. P.S. Narasimha, Sr. Adv., Mr. Annam D.N. Rao,Adv., Mr. A. Venkatesh, Adv., Ms. Neelam Jain, Adv., ms. Mansha Monga, Adv.,

UPON hearing counsel the Court made the following

ORDER

Delay condoned.

Having heard learned counsel for the parties at some length, we are of the view that instead of going into the merits of the impugned orders at this stage, it would be expedient and proper if the trial Court is ..2/- : 2 : directed to dispose of the applications filed by the parties under Order 39 Rules 1 and 2 as also under Rule 4 of Order 39, C.P.C. in Regular Suit Nos. 3 and 2 of 2011 expeditiously. 

We may note that by the impugned orders dated 9th October, 2012 and 6th July, 2012, the High Court has directed the trial Court to dispose of the said applications within a period of 60 days/six months from the date of receipt of copy of their orders. We are, however, informed that the said applications have not even been taken up for consideration.

Under the circumstances, we direct the trial Court to dispose of the said applications as expeditiously as possible but in any case, not later than four weeks from the date of receipt of copy of this order. Learned counsel appearing for the parties assure us that their clients shall not seek adjournment and shall render full cooperation in the disposal of the said applications.

The special leave petitions stand disposed of accordingly.