Horlicks Limited And Ors. vs Uttam Sadhukan
2002 Latest Caselaw 760 Del

JUDGMENT

D.K. Jain, J.

1. In this suit for permanent injunction restraining infringement of trade mark and copy right, passing off, damages, delivery up etc., a decree is sought restraining the defendant, his servants, agents and representatives from : (i) manufacturing, selling and offering for sale, advertising, directly or indirectly, dealing in chocolates, sweets, confectionery or other related goods under the trade mark 'Horlicks' or mark 'Horlieks' or under any other mark which may be deceptively similar to the plaintiffs' trade mark 'Horlicks'; (ii) re-producing, printing or publishing any label or packaging which is a colourable imitation or substantial reproduction of plaintiffs' 'Horlicks' packaging; (iii) manufacturing and selling and offering for sale confectionery or any other goods under the trade mark 'Horlicks' or 'Horlieks' or any other mark deceptively similar to plaintiffs trade mark 'Horlieks', get up with a lay out, colour scheme and arrangement of features that resemble the plaintiffs 'Horlicks' product packaging in any manner whatsoever or doing any other thing so as to cause confusion or deception amounting to passing off of the goods and business of the defendant as and for those of the plaintiffs; (iv) delivery up of all the goods, dies, blocks, wrappers etc. bearing the impugned mark and labels; (v) rendition of accounts of profits earned by the defendant on account of misrepresentation of their goods under the impugned marks, and for damages on account of use of impugned mark 'Horlicks'/ 'Horlieks'.

2. Plaintiff No. 1, namely, M/s. Horlicks Limited is 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 '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, which permits plaintiff No. 2 to authorise use of the trade mark upon the "contract products". It is claimed that plaintiffs launched their business in India under the said trade mark in the year 1943 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 compaigns carried out by them, the trade mark 'Horlicks' has become 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. It is also claimed that plaintiff No. 3 is the owner of copyright to the artistic work in the 'Horlicks' label.

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 defendant had adopted the trade mark 'Horlicks' and its look alike label "Horlieks" for marketing his products. It is alleged that the defendant's wrappers with a mark 'Horlieks' and 'Horlicks' are identical to the plaintiffs' trade mark 'Horlicks' and, therefore, amount to infringement of the registration in their favor. It is also pleaded that defendant's 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 defendant was 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 'Horlicks' or "Horlieks" 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 were duly served on the defendant but since the defendant remained un-represented, vide order dated 28 September 1999 he was proceeded against ex parte. 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 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. He has also proved the powers of attorney executed in his favor and said Mr. Debjit Gupta. 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' and 'Horlieks' by the defendant.

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 defendant's product under the impugned trade mark 'Horlieks' as Ex. p-4. 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 defendant has been using the plaintiffs' trade mark 'Horlicks' and the offending trade mark 'Horlieks' and packing cartons/packing boxes which are identical/deceptively similar to that of the plaintiffs' copyright and trade mark 'Horlicks' and is passing off his products as that of the plaintiffs. The evidence adduced by the plaintiffs also establishes that by manufacturing and marketing his products under the said trade mark, the defendant has caused losses to the plaintiffs whereas the defendant has 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 defendant's mark, one finds that the defendant's mark is deceptively similar to that of the plaintiffs' mark. The use of the offending mark by the defendant appears to be a flagrant and blatant attempt on the part of the defendant 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 his 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 defendant 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 defendant in terms of prayers (i), (ii) and (iii) of para 21 of the plaint, with a direction to the defendant 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, are concerned, learned counsel for the plaintiffs states that he gives up all other claims made in the plaint against the defendant.

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