Jay Industries vs Deepak Shah And Anr.
1997 Latest Caselaw 9 Del

JUDGMENT

A.K. Srivastava, J.

(1) This is a suit for perpetual injunction, restraining infringement of trade mark, copyright, passing off and rendition of account seeking following reliefs:

"(I)for perpetual injunction restraining the defendants, their servants, agents, dealers, stockists, and all other persons on their behalf from manufacturing, selling or otherwise dealing in Ignition switches and other automobile parts used in motor land vehicles under the trade mark Jay or any other trade mark identical and/or deceptively similar to the plaintiff's registered trade mark JAY.

(II)for perpetual injunction restraining the defendants, thier servants, agents, representaties, dealers and all other persons on their behalf from using the artistic work on their cartons entitled Jay for marketing their products of Ignition Switches and other automobile parts for land motor vehicles which is registered in the name of the plaintiff under the Copyrights Act, 1957 or any other artistic work which is identical and/ or deceptively similar to that of the registered artistic work of the plaintiff.

(III)for perpetual injunction restraining the defendants, their servants, agents, representatives, dealers and all other persons on their behalf from passing off their aforesaid goods/products under the trade mark Jay in the cartons entitled Jay bearing the artistic work of the plaintiff's cartons or any other trade mark/artistic work which may be identical and/or deceptively similar to those of the plaintiff.

(IV)for delivery upon affidavits by defendants to the plaintiff of all the infringing finished and unfinished goods, cartons bearing the mark Jay, dies, blocks, labels, wrappers and all other incriminating material bearing the infringing trade mark Jay and artistic work entitled Jay under the possession and/or control of the defendant for destruction and/or erasure purposes.

(V)for rendition of accounts of profits earned by the defendant on the sales of the said goods under the infringing trade mark and copyrights of the plaintiff in the artistic work of cartons, registered in its name and a decree for the amount so found due on the basis of sales made during the period prior to the institution of the present suit till the date of injunction order/decree.

(VI)Costs of the proceedings.

(VII)Such other or further relief or reliefs as to which this Hon'ble Court may deem fit and necessary in the facts and circumstances of the case."

(2) The case of the plaintiff is that it is a registered partnership firm and Shri P.C Mindha is one of its partners who is well aware with the facts of the case and is competent and authorised to file, institute, verify, depose and prosecute this suit.

(3) The plaint case is that the plaintiff firm has since 1967 been regular and continuous in using the trade mark 'JAY' in respect of locks of all kinds, starting device for motor engines for land vehicles, meters, cut-outs, signalling apparatus for indicating lights, electric switches for use in automobiles and parts and fittings for use in motor land vehicles, manufactured and sold by the plaintiff firm; that the plaintiff firm is the registered proprietor in respect of trade mark "JAY" under No. 261531B as of 24.12.69 in class 9 in respect of meters, signalling apparatus for indicating lights, electric switches and cut-outs (electric) used in automobiles, advertised in the Trade Mark Journal No. 543 dated 16.1.72 at page No. 1043; No. 327372 as of 27.7.77 in respect of locks of ail kinds; No. 355835 as of 27.11.79m class 12 in respect of starting device for motor engines for land vehicles, which all have been renewed from time to time and are still subsisting in the Register of Trade Marks, photocopies whereof are Annexures A, B & C on the record; that the plaintiff has been using distinctive cartons in respect of its aforesaid goods which are artistic and unique and are duly registered under the provisions of the Copyright Act, 1957 under Certificate Nos. A-25647/79, A-25649/79, A-25650/79, A-25656/79, A-29803/80, A-29812/80, A-29813/80, A-29814/80, A-29827/80, A-29848/80, A-29849/80, A-29871/80, A-30061/80, A-30216/80, A-30217/80 and A-30218/80; that the plaintiff-firm is also in collaboration with Godrej Company, who has authorised to use their trade mark "GODREJ in respect of their lock barrels supplied by them wherein the key bears the emblem "JAY" embossed on one side and the emblem "Lock by Godrej embossed on the other side and Annexures X & Y are the cartons used by the plaintiff Company and Annexure Z is a statement of sales and advertisement figures bearing the trade name and cartons "JAY"; that the plaintiff has given wide publicity of its trade mark 'JAY' and cartons entitled 'JAY' and has earned unique goodwill and reputation in the public and the trade, which is exclusively associated with the plaintiff and no one else; that on receiving complaints from the market that spurious goods bearing its trade "JAY" were being sold in the market, it filed a complaint in the month of June, 1990 under Sections 78 and 79 of the Trade and Merchandise Marks Act, 1958 and under Sections 63 and 64 of the Copyright Act, 1957 against the unknown persons in the Court of the Chief Metropolitan Magistrate, Delhi and obtained a general search/seizure warrant from the Court; that in pursuance of the search warrant the premises of the defendants were searched on 24.9.1991 and spurious goods were seized.

(4) The claim of the plaintiff is that the defendants have no right to use its trade mark and cartons entitled 'JAY' and use of it by the defendants are illegal and have been done with the sole intention of deceiving and/or misleading the trade and members of the public causing them to believe that its goods bearing the trade mark and cartons entitled 'JAY" were the goods manufactured by the plaintiff.

(5) Hence the suit. After service, the defendants put appearance on first service through their Counsel Mr. Kamal Nijhawan, Advocate on 22.1.1993. Learned Counsel sought time for filing the written statement and the same have not been filed. The defendants put appearance through their Counsel up-till 23.5.1996 and thereafter neither the defendants nor their Counsel appeared. Thus the suit proceeded ex parte on 15.12.1996. The plaintiff has not filed any original document except Ext. P-1 and Ex. P.2 as mentioned by the Joint Registrar in his order dated 18.3.96.

(6) I have gone through the contents of the plaint, affidavit and the exhibited documents on the record. The case of the plaintiff, in my opinion, is proved and the suit can be decreed partly.

(7) Learned Counsel for the plaintiff has given up his prayers (iv) and (v) for delivery upon affidavit and rendition of accounts.

(8) In view of above the prayers (iv) and (v) are rejected as given up. The suit is partly decreed to the effect that the defendants, their agents, representatives, dealers, servants and all other persons on their behalf are restrained from manufacturing, selling or otherwise dealing in Ignition switches and other automobile parts used in motor land vehicles under the trade mark 'JAY' or any other trade mark identical and/or deceptively similar to the plaintiff's registered trade mark 'JAY'; from using the artistic work on his cartons entitled 'JAY' for marketing his products of Ignition Switches and other automobile parts for land motor vehicles which is registered in the name of the plaintiff under the Copyright Act, 1957 or any other artistic work which is identical and/or deceptively similar to that of the registered artistic work of the plaintiff; and from passing off his product under the trade mark 'JAY' in the cartons entitled 'JAY' bearing the artistic work of the plaintiff's cartons or any other trade mark/artistic work which may be identical and/or deceptively similar to those of the plaintiff. Rest of the prayers are not allowed.

(9) The plaintiff shall be entitled to the proportionate costs ex parte.