Hindustan Pencils Ltd. vs Vipin Trading Company
2005 Latest Caselaw 1466 Del

JUDGMENT

Swatanter Kumar, J.

1. The plaintiff - Hindustan pencils Limited - has filed the present suit for permanent injunction, infringement of copyright, passing off, damages, rendition of accounts and delivering up of the infringing material.

2. The plaintiff is stated to be a public limited company incorporated under the Indian Companies Act with registered office at Mumbai and Mr. P.N. Thanawala is stated to be empowered to sign and verify the plaint and institute the present suit on behalf of the plaintiff.

3. The plaintiff claims to be an established manufacturer of pencils and other stationery items. The plaintiff has adopted and has been using trademark 'NATARAJ' with a particular design and device of 'NATARAJ' in a particular designed label having red background and the word 'NATARAJ' written in a particular chracteristic style. Being the owners of the registered trademark, they claim the following registrations in their favor:

(a) Trademark NATARAJ with the device of NATARAJ under No. - 225923 as of 14.12.1964 claiming user since 22.7.1961 in respect of writing pencils:

(b) Trademark NATARAJ with the device of NATARAJ under No. - 260466 dated 6.11.69 claiming user since 22.7.1961 in respect of pencils, refills for propelling pens and pencil sharpeners, pens, fountain pens, erasers and pins, clips and staples included in class-16;

(c) Trademark NATARAJ Black lead label Along with the device of NATARAJ registered under No.- 352478 as of 17th August, 1979 in respect of Black lead pencils included in class- 16.

It is stated in the plaint that all the above trademarks are old trademarks and their registration is valid and subsisting on the Registry of Trademarks. It is also stated in the plaint that the plaintiff is also the registered proprietor of the copyright under No. -A-25427/79 in respect of carton of 'NATARAJ' black lead pencils.

4. The plaintiff claims to have spent huge amounts on publicity and have large sales in all over India. According to them, during the first week of August, 2002, they came to know that defendant had introduced into the market pencils under the mark Reynolds with the device of Ganesh, a carton like Annexure-X, which is a copy of the design of the plaintiff and, in any case, is deceptively similar. This is an infringement of the registered copyright. The colour scheme of the defendant's carton is the same as that of the carton of the plaintiff. However, the carton of the defendant is comparatively dull to that of the plaintiffs. The defendant, with a dishonest and mala fide intention and with a view to trade upon the goodwill and reputation of the plaintiff, has introduced the said pencils under the said trademark of Reynolds in the carton, which is apparently a copy of the plaintiffs carton and is an infringement of their rights available to them under the statute and in common law. On these facts, they have claimed a decree for permanent injunction restraining the defendant from manufacturing, marketing offering for sale directly or indirectly in pencils in carton like 'X', which is similar to the plaintiffs carton mark 'A' annexed along with the plaint. They have further prayed for other reliefs as afore noticed.

5. The defendant could not be served in the ordinary manner and thus the plaintiff was allowed to serve the defendant by way of publication in the edition of 'Statesman' and also by affixation on the last known address of the defendant vide order dated 17th May, 2005. On 30th May, 2005, it was recorded by the Joint Registrar that service has been effected on the defendant by way of publication in the paper 'Statesman' dated 04.05.2005. The service was complete and they were ordered to be proceeded against ex-parte vide order of the Court dated 09th August, 2005. The plaintiff was also granted liberty to file affidavit by way of ex-parte evidence. Affidavit on behalf of the plaintiff has been filed wherein averments made in the plaint have been reiterated. It is specifically stated that the defendant has infringed the registered copyright of the plaintiff and is selling pencils and the box of carton deceptively similar to that of the plaintiffs. The copies of the carton of the plaintiff and the defendant have been placed on record. It has been stated that the trademark and the copyright of the plaintiff are registered.

6. In support of the case, the plaintiff has also filed a number of documents on record. A mere glance at both the cartons clearly shows that the clour scheme and style of the plaintiffs carton has been copied by the defendant and it is deceptively similar to that of the plaintiff. Merely writing of Reynolds in place of 'NATARAJ' would not save the defendant from infringement of the registered copyright of the plaintiff. It may not be the case of infringement of trademark but is certainly an infringement of the copyright and design of the plaintiff. Under trademark No. 283730, the plaintiff has registered its product and the carton. The pencils, being sold by the defendant, have also been placed on record along with the pencils/products of the plaintiff. Even they are deceptively similar.

7. The counsel for the plaintiff has relied upon various interim orders passed by this Court in different suits against different defendants as well as the decree passed against one Satyaprakash Sharma in Suit No. 702/1995 in similar circumstances. Reliance has also been placed by the counsel for the plaintiff on the Judgments in Laxmikant v. Patel, V. Chetanbhat Shah and another, , Burroughs Welcome (India) Ltd. v. Uni-Sole Pvt. Ltd. and another, 1999 PTC (19) 188 and M/s Anglo-Dutch Paint, Colour and Varnsh Works Pvt. Ltd., v. M/s. India Trading House, AIR 1977 41 cases to contend that once it is proved that there is infringement of a registered trademark, design and copyright of the carton and the action of the defendant is intentional, dishonest and is intended to trade on the goodwill of the plaintiff, the plaintiff would be entitled to injunction. The principles enunciated in these Judgments are no longer matter of any dispute. In fact, these principles are squarely applicable to the facts and circumstances of the present case. The contention of the plaintiff has to be accepted that the defendant is intentionally infringing the legal rights of the plaintiff even under the common law.

8. As far as relief of damages is concerned, the same cannot be granted to the plaintiff as plaintiff has led no evidence worth the name much less an evidence which could be relied upon in granting a relief of compensation of damages of Rs. 5 lakhs to the plaintiff. This relief is thus declined. However, a decree for permanent injunction is passed in favor of the plaintiff and against the defendant restraining the defendant from manufacturing, offering for sale, directly or indirectly dealing in pencils in carton marked 'X', which is deceptively similar to the plaintiffs carton marked 'A' on record. Further, a decree for mandatory injunction is passed in favor of the plaintiff and against the defendant. A decree for prohibition again is also passed in favor of the plaintiff and against the defendant, restraining them from selling the infringing goods and from passing off their aforesaid goods in such cartons as that of the plaintiff. The plaintiff would also be entitled to proportionate costs.