Hindustan Penciles Ltd. vs Dharam Pal Jain And Sons
2003 Latest Caselaw 615 Del

JUDGMENT

H.R. Malhotra, J.

1. This is suit brought by the plaintiff seeking decree for perpetual injunction restraining the defendant from infringement of the trademark of the plaintiff in respect of the stationery goods with the trademark NATARAJ.

Facts as set out in the plaint are as under:

The plaintiff adopted the trademark NATARAJ with the device of NATARAJ with respect to stationery goods in the year 1961. Plaintiff's claim for proprietorship of the following registered trademark.

Trademark NATARAJ with the device of NATARAJ under No. 260466 dated 6.11.1969 claiming user since 22.2.1961 in respect of pencils, refills for propelling pens and pencils, pen sharpeners, pens, fountain pens, erasers, pins, clip and stapples included in Class 16. Device of NATARAJ under registration No. 283730 dated 27.10.1972 in respect of pencils of all kinds, erasers, refills for propelling pens and pencils, pencil sharpeners, fountain pens, pins, clips, wire stapples for stappling presses and pins.

2. According to the plaintiff the above said trademarks are valid and subsisting on the registration of trademarks. It is stated in the plaint that the plaintiffs' sale of stationery goods under the trademark NATARAJ with the device of Nataraj inclusive of Nataraj plasto 621 erasers with the distinctive colour scheme and getup is substantial and their goods are being sold in every hook and corner of India. They have a factory at Kalyan, Bombay. The plaintiffs have sold goods under the above said trade marks and label of considerable value and their sale figures are given in Annexure "A". It is further stated in the plaint that plaintiff is spending large sums of money on sale promotion and advertisement through various media of advertisement such as radio, television, etc. The amount so spent is also given in Annexure "A". It is averred in the plaint that the plaintiff's drawing erasers used in stationery are sold in cartons like Annexure "B" filed with the plaint. The said carton contains the trademark "NATARAJ" and the device of NATARAJ. The said carton has a red colour background. On the top the words NATARAJ ERASER are written. Immediately under the said slogan the picture of a woman and student has been shown. On the right hand side the device of NATARAJ has been depicted. At the bottom the trademark NATARAJ PLASTO 621 ERASER and underneath thereof another slogan Champion Partner of Nataraj pencil has been written on the background of red colour carton having black parallel lines. On the right hand side the eraser has been shown and underneath thereof the portion of pencil is depicted. One side of the said panel of the said carton like Annexure "B" contains the name and address of the plaintiff and another panel contains slogan "It erases without a trace".

3. The above said carton like Annexure "B" is a distinctive/artistic carton within the meaning of Section 2(c) of the Copyright Act. The said artistic carton has been adopted by the plaintiff since the year 1961. The all essential, features of the said carton are exclusively associated with the plaintiff and no one else. The said carton hence, is an original artistic work of the plaintiff and is protectable under the Copyright Act. The plaintiff is entitled to reproduce the same.

4. What else is stated in the plaint that on account of the superiority of the goods, long, extensive and continuous user and wide advertisement the plaintiff's trademark NATARAJ and the device of NATARAJ as well as distinctive carton like Annexure "B" have become very popular with the stationery trade and the members of the public associate with the product of the plaintiff by its trademark as well as carton like Annexure "B" and numeral 621. The said packing carton like Annexure "B" have become very popular with the stationery trade and the members of the public who recognise the colour scheme, getup and layout of the said packing carton of the goods of the plaintiffs and with no one else. The said packing material of the plaintiff like Annexure "B" and its getup, layout, colour combination and arrangement of features in which the erasers are packed and sold denotes and connotes the erasers manufactured by the plaintiffs alone. That among the purchaser of erasers are school going children and semi-literate persons who recognise the plaintiff's erasers with the plaintiff's trade mark, getup, layout and colour combination and arrangement of packing carton like Annexure "B" in which the erasers are sold.

5. It is further stated in the plaint that the carton used by the plaintiff is original work which is covered under Section 2(e) of the Copyright Act. The plaintiff says that the copyright subsists in the said carton like Annexure "B". It is averred in para No. 8 that in the month of May 1995 the plaintiff came to know that the defendants have brought into the market erasers exactly in the same carton as that of the plaintiff which is of similar size, background, colour scheme and arrangement of features having a similar panels and slogans for use of erasers which have also been copied from the plaintiff's packing material carton like Annexure "B". The defendants have adopted the picture of a lady as well as student exactly in the same manner and have also used the slogan like "Champion, partner of scholar Pencil, so silky, smooth it erases without a trace". The picture of pencil as well as erasers has also been placed at the same place as that of the plaintiff. The background of the carton as well as blacklining on the bottom portion of the carton are exactly same which have been taken from the artistic work of the plaintiff's carton like Annexure "B".

6. It is further stated in the plaint that the adoption of the offending carton like Annexure "X" by the defendant is a deliberate attempt on the part of the defendant to trade upon the plaintiff's name, reputation, goodwill and long standing which is evident and a rank case of dishonest means. The plaintiff stated in the plaint that defendant is also committing infringement of plaintiff's copyright claimed in the carton like Annexure "B". It is further averred in para No. 12 of the plaint that by adoption of the carton of similar size having similar colour scheme, writing, getup as well as deceptively similar numeral 921 the defendant is passing off their goods as the goods of the plaintiff. The plaintiff averred that the defendant is habitual of copying the reputed trade marks and copyrights of various companies.

7. Summons of the suit were sent to the defendants. Despite service, no one was present on behalf of the defendants and they were proceeded ex parte on 27th January, 1995.

8. Plaintiff was called upon to proof his case by adducing evidence. They have filed an affidavit of one Mr. B.J. Sanghvi, Director of the plaintiff Company.

9. I have heard learned Counsel for the plaintiff and also perused the affidavit in the form of evidence besides documentary evidence in support of the claim. The plaintiff has proved on record that they are the registered proprietor to the trade mark NATARAJ with the device of NATARAJ under the Registration No. 260466 and also proprietor of device of NATARAJ under the Registration No. 283730 dated 27th October, 1972 in respect of pencils of all kinds, erasers, refills for propelling pens and pencils, pencil sharpeners, fountain pens, pens, pins, clips. Plaintiff has also been able to show about the amounts spent by them, sale promotion and advertisement through various media of advertisements is proved on record as Ex. P1 and the amount so spent by them have been proved on record as Ex. P1. Consequently, they have become entitled to the decree for permanent injunction as claimed in the suit.

10. Accordingly decree for permanent injunction is passed in favor of the plaintiff and against the defendants restraining the defendants himself, his servants, agents, stockists and all other persons on his behalf from infringing the registered trade mark of the plaintiffs. Further decree for permanent injunction is passed in favor of the plaintiff and against the defendants restraining the defendant himself, his servants, agents, stockists and all other persons on his behalf from infringing the plaintiff's copyright work by using of the carton like Annexure "X" which is deceptively similar to the plaintiff's carton like Annexure "B" and further decree is also passed restraining the defendant, his servants, agents, stockists and all other persons on his behalf from selling erasers in carton like Annexure "X" thereby passing off and enabling others to pass off its goods as the goods of the plaintiff and for permanent injunction restraining the defendants from using the numeral mark 921 which is deceptively similar with the plaintiff's numeral 621.

11. However, decree for damages was not claimed by the plaintiff nor any evidence led to this effect, therefore, this part of the claim is declined.