Horlicks Limited And Ors. vs Bimal Khamrai And Anr.
2002 Latest Caselaw 169 Del

JUDGMENT

D.K. Jain, J.

1. The plaintiff-companies have filed the present suit for permanent injunction restraining infringement of trade mark and copy right, passing off, damages, rendition of accounts etc., inter alia, praying for : a decree restraining the defendants, their servants, agents and representatives from manufacturing, selling and offering for sale, advertising, directly or indirectly, dealing in chocolates, sweets, confectionery or other related goods under the trade mark 'Horlioks' or under any other trade mark which is deceptively similar to the plaintiffs' trade mark 'Horlicks'; from producing, printing or publishing any label or packaging which is a colourable limitation or substantial reproduction of plaintiffs' 'Horlicks' packaging; delivery up of all the goods, dies, blocks, wrappers etc. bearing the impugned mark and labels ; rendition of accounts of profits earned by the defendants on account of misrepresentation of their goods under the impugned marks and for damages on account of use of impugned mark 'Horlioks'.

2. Plaintiff No. 1, namely, M/s. Horlicks Limited are engaged in the business of manufacture of wide range of energy boosting food products, malted biscuits, toffees etc. and is the proprietor of the trade mark of 'Horlicks' in respect of the said goods. Plaintiff No. 3, namely, M/s. SmithKline Beecham Consumer Healthcare Limited, manufactures and markets products under the trade mark 'Horlicks' in India with the express authorisation of plaintiff No. 2, namely, M/s. SmithKline Beecham Asia Pvt. Limited, who is the licensee of the said trade mark under license agreement dated 3 February 1997 executed in their favor by plaintiff No. 1. It is claimed that plaintiffs launched their business under the said trade mark in the year 1986 and have thereafter spent substantial amounts on the advertisement of the products under the said trade mark. As a result of extensive sales promotion and advertising campaigns carried out by them, the trade mark 'Horlicks' is an extremely well known brand in India and is singularly identifiable with the plaintiffs. It is claimed that the total marketing and promotional expenditure in respect of 'Horlicks' range of products since 1992 exceeds Rs. 50 crores. The stand of the plaintiffs is that by virtue of their prior adoption, user and registration of the trade mark 'Horlicks' and long continuous and extensive user thereof in India in respect of food products, their trade mark has attained a valuable goodwill and substantial reputation is attached thereto.

3. It is averred that in the month of August 1998, during the course of investigation commissioned by the plaintiffs against another party, the plaintiffs came to know that the defendants had adopted the trade mark 'Horlioks' and the Horlicks look like label for marketing their products. It is alleged that the defendants' wrappers with a trade mark 'Horlioks' are identical to the plaintiffs' trade mark 'Horlicks' and, therefore, amounts to infringement of the registration in their favor. It is also pleaded that defendants' adoption of plaintiffs' distinct 'Horlicks' label also amounts to infringement of copy right of plaintiff No. 3. The plaintiff-companies have thus filed the present suit for injunction, passing off, infringement of copy right, etc.

4. The suit was registered on 27 October 1998. On the same day by an ex parte ad interim injunction the defendants were restrained from manufacturing and selling and offering for sale, advertising, directly or indirectly dealing in chocolates, confectionery or other related goods under the trade mark 'Horlioks' or any other mark deceptively similar to the plaintiffs' trade mark 'Horlicks'. A Local Commissioner was also appointed to prepare an inventory of the goods and to take into custody all infringing goods.

5. Summons/notice in the suit and the injunction application could not be served on the defendants by ordinary process and, therefore, on plaintiffs moving an application for substituted service, vide order dated 4 February 2000, it was directed that the defendants may be served by way of publication. The defendants were accordingly duly served by publication and affixture. Since they remain unrepresented, by order dated 13 September 2001, the defendants were proceeded against ex pane. The plaintiffs were required to prove their case by leading evidence by way of affidavit.

6. An affidavit of Shri P.N. Haridas, Company Secretary of plaintiff No. 2 has been filed by way of an ex parte evidence and the relevant documents have been proved and exhibited. He has proved the authority and signatures of Mr. Debjit Gupta, Constituted Attorney of plaintiff No. 1 and that of Shri Partha S. Mukherjee, attorney of defendant No. 3. He has proved the powers of attorney executed in favor of plaintiff Nos. 1 and 3. The deponent has further proved the averments in the plaint. He has testified as to how the plaintiffs came to know about the infringement of their registered trade mark and copy right and the deceptive use of trade mark 'Horlicks' by the defendants.

7. The deponent has also proved the agreement executed in favor of plaintiff No. 2 by plaintiff No. 1 as also various registrations in favor of the plaintiffs. The turnover of 'Horlicks' biscuits since the year 1991 to the tune of over Rs. 90 crores has been proved on the basis of the original annual report of plaintiff No. 2 company for the year ending 1996. He has also proved the specimen packaging of defendants' product under the impugned trade mark 'Horlioks' as Ex. P-10. He has also deposed that in the earlier suits for injunction filed against various companies by the plaintiffs, injunction orders have been passed and in fact in most of the cases the suits have been decreed in favor of the plaintiffs and against the defendants, mainly in terms of compromises and the undertakings given by the defendants.

8. In view of the evidence adduced on behalf of the plaintiffs, which remains un-rebutted, it is established that the defendants have been using the offending trade mark 'Horlioks' and packing cartons/packing boxes which are identical/deceptively similar to that of the plaintiffs copyright and trade mark 'Horlicks' and are passing off their products as that of the plaintiffs. The evidence adduced by the plaintiffs also establishes that by manufacturing and marketing their products under the said trade mark, the defendants have caused losses to the plaintiff whereas the defendants have earned profits on that account by encashing on the reputation and goodwill of the plaintiffs.

9. The plaintiffs have placed on record and proved their own packing style and the labels. On a visual comparison of their trade mark with that of the defendants' mark, one finds that the defendants' mark is deceptively similar to that of the plaintiffs' mark. The use of the offending mark by the defendants appears to be a flagrant and blatant attempt on the part of the defendants to imitate the plaintiffs' trade mark with a view to deceive the unwary purchasers and exploit and encash on their goodwill in order to pass off their products as that of the plaintiffs. The law does not permit any one to carry on his business in such a way as would persuade the customers in believing that the goods belonging to someone else are his or are associated therewith. It is wholly irrelevant whether the latter person does it fraudulently or otherwise. According to Kerly's law of Trade Mark and Trade Names, where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.

10. The plaintiffs are, therefore, entitled to the grant of injunction prayed for. Accordingly, a decree for permanent injunction is passed in favor of the plaintiffs and against the defendants in terms of prayers (i), (ii) and (iii) of para 21 of the plaint, with a direction to the defendants to destroy all the dies, blocks, wrappers, cartons, labels etc. as prayed for in prayer (iv) of para 21 of the plaint.

11. So far as the prayers (v) and (vi) of para 21 of the plaint, relating to rendition of accounts and damages, is concerned, learned counsel for the plaintiffs states that she gives up all other claims made in the plaint against the defendants.

12. The suit is accordingly decreed in the aforenoted terms with costs. Decree sheet be drawn up accordingly.