Delhi High Court
Kamdhenu Ispat Limited vs Kamdhenu Industrial Service on 28 March, 2007
Equivalent citations: MIPR 2007 (2) 129, 2007 (35) PTC 50 Del
Author: G Mittal
Bench: G Mittal
JUDGMENT
Gita Mittal, J.
Page 1165
1. The present suit has been filed by plaintiff alleging violation of its proprietary rights in the trade mark and trade name Kamdhenu by the defendant by dishonest intention and infringement of this registered mark. The suit has been filed by M/s Kamdhenu Ispat Ltd., a company registered under the Companies Act, 1956 through Shri Arvind Gupta, its company secretary who is stated to be its authorised official by resolution of the Board of Directors. The plaintiff has clarified that it is using the trade mark and trade name Kamdhenu since the year 1991. The plaintiff has asserted to be enjoying an established reputation in the market in relation to its goods by this trade mark and trade name in respect of which it has conducted extensive promotional activities as well. The plaintiff has alleged in the plaint that its application for registration of trade mark Kamdhenu was pending in certain categories. The plaintiff has contended that it also employs a unique lettering style and colour combination in respect of the trade mark which is its original artistic work within the meaning of the Indian Copyright Act, 1957 and as such, the plaintiff is the owner and proprietor of the same as well.
2. The suit has been necessitated as the plaintiff came to know of activities of the defendants through the industrial directory 'Thomas Register of Indian Manufacturers, 2004' wherein the factum of the defendant's engagement in manufacturing and marketing of steel and stainless steel fastners under the trade mark and trade name Kamdhenu Industrial Service became known to it. It has been submitted that the goods of the defendant are the same or in any case are cognate goods as those of the plaintiff and its trade mark and trade name was identical to that of the plaintiff. Even the get up, make up and artistic manner of the trade mark as adopted by the defendant was a colourable imitation and deceptively similar to that of the plaintiff, establishing the deliberate act of dishonest imitation on the part of the defendant.
3. In these circumstances, bearing in mind the resemblance between the trade mark and trade name of the plaintiff and the defendant, the present suit has been filed seeking the following reliefs:
(i) For decree for permanent injunction restraining the defendants by themselves and through their directors, partners, servants, agents, assigns, successors, representatives, distributors and all other acting for and on behalf from manufacturing, marketing, selling offering for sale, advertising or displaying directly or indirectly or using or dealing in any mode or manner in Steel and Stainless Steel fasteners or goods of same/similar/allied/cognate descriptions and nature under the impugned Trade Mark/Trade Name KAMDHENU/KAMDHENU INDUSTRIAL SERVICE or any other Trade Mark/Trade Name identical Page 1166 with or deceptively similar thereto in relation to impugned goods and goods of same/similar/allied/cognate description or from doing any other acts or deeds amounting to or resulting in:
(a) Infringement of the plaintiffs registered trade mark KAMDHENU.
(b) Passing off and violation of the Plaintiff's common law rights in their trade mark KAMDHENU (ANNEXURE P-1)
(c) Passing off and violating the Plaintiff's common law rights in their trade name M/s Kamdhenu Ispat Ltd.
(ii) Restrain the defendants from disposing of or dealing with its assets including its shops and premises including at Panbaug, Chakla, Andheri Kurla Road, Andheri (E) ? 400099, Mumbai and such other assets as may be brought to the knowledge of this Hon'ble Court during the course of the proceedings and on its ascertainment by the Plaintiff, as the Plaintiff is not aware of the same, as per Section 135(2)(c) of the Trade Marks Act, 1999 as it would adversely effect the Plaintiff's ability to recover costs and accounts of profits.
(iii) For an order of rendition of accounts of the defendants by their aforesaid impugned trade activities and a decree to the Plaintiff on the amount so ascertained.
(iv) For an order for delivery up of all the impugned finished and unfinished goods bearing the trade mark KAMDHENU including poly packs, cartons, packing material, carry bags, sticker, blocks, dies or any other incriminating material including display boards and sign boards and trade literature to the plaintiff for the purpose of destructions/erasure.
4. The defendant was duly served with the summons of the suit and entered appearance through counsel on 16th January, 2006. However, no written statement was filed and there was also no appearance for the defendant thereafter on the several dates when the matter was listed. There are also two communications from the defendants dated 2nd January, 2006 as well as 8th January, 2006 on record which show that the defendant was duly served and was aware of the pendency of the suit. As there was no appearance and no defense to the suit, by an order dated 29th August, 2006, the defendant was directed to be proceeded ex parte. The plaintiff was also directed to file its evidence by way of affidavit and it has filed the affidavit of Shri Arvind Gupta in support of its case.
5. From a perusal of the evidence placed by the plaintiff on record, the afore-noticed facts have been duly established on record. The plaintiff has established that it is using the trade mark and trade name Kamdhenu bona fide and in the course of its business since the year 1991. The business carried on by the plaintiff is extensive and various categories of goods of the plaintiff bearing the trade mark Kamdhenu are being distributed all over the country. The plaintiff has placed before this Court its sales figures since the year 1995 till 2004 The same reflects an increase from Rs.7,84,09,004 in 1995-1996 to Rs.75,90,29,372.00 in the year 2003-2004 The plaintiff has also placed before this Court the copies of the various advertisements and distribution literatures, hoardings etc. placed by it in different publications and different places promoting sales and distributions of its goods.
Page 1167
6. At the time of filing of the suit, the trade mark Kamdhenu was registered in favor of the plaintiff in class 06 in the Fourth Schedule of the Trade Marks Act, 1991 under registration number 717214 which certificate has been proved on record as Exh. P-1. The plaintiff has pointed out in the plaint and its affidavit by way of evidence that various applications for registration were pending for completion of formalities. However, during the pendency of the suit, more than 25 applications of the plaintiff for the trade mark Kamdhenu have been registered in different classes. The details of the registration of these applications require to be noticed and read thus:
S.No. Trade Mark Application No. Class As of Date Status
1 Kamdhenu 1297688 1 22.7.04 Registered (J.No.1328 Sipp.2)
2 Kamdhenu 1241248 2 06.10.03 Registered (J.No.1324 Supp.1)
3 Kamdhenu 1297686 3 22.07.04 Registered (J.No.1328 Supp.2)
4 Kamdhenu 1297685 4 22.07.04 Registered (J.No.1328 Supp.2)
5 Kamdhenu 717214 6 05.06.96 Registered (J.No.Mega-6)
6 Kamdhenu Lebel 853414 6 28.4.96 Registered (J.No.1307-S-2)
7 Kamdhenu Label 872188 6 19.08.97 Registered (J.No.Mega-6)
8 Kamdhenu Label 1184260 6 17.03.03 Registered (J.No.1329-S-1)
9 Kamdhenu 1127300 6 09.08.02 Registered (J.No.)
10 Kamdhenu Nilkanth 1306998 6 06.09.04 Registered (J.No.1328-V)
11 Kamdhenu 1302269 7 13.08.04 Registered (J.No.1328 Supp.3)
12 Victoria 1312948 14 05.10.04 Registered (J.No.1327 Supp.5)
13 Kamdhenu 1302262 10 13.08.04 Registered (J.No.1328-3)
14 Kamdhenu 1312380 13 01.10.04 Registered (J.No.1328 Supp.4)
15 Kamdhenu 1312381 14 01.10.04 Registered (J.No.1328 Supp.4)
16 Kamdhenu 1312382 15 01.10.04 Registered (J.No.1328 Supp.4)
17 Kamdhenu 1312383 16 11.10.04 Registered (J.No.1328 Supp.4)
18 Kamdhenu 1140629 19 03.10.03 Registered (J.No.Mega-4)
19 Kamdhenu 1166866 19 16.01.03 Registered (J.No.Mega-6)
20 Kamdhenu 1296715 23 19.07.04 Registered (J.No.1328)
21 Kamdhenu 1296714 24 19.07.04 Registered (J.No.1328)
22 Kamdhenu 1296713 25 19.07.04 Registered (J.No.1328)
23 Kamdhenu 1296716 26 19.07.04 Registered (J. No.1328)
24 Kamdhenu 1296717 27 19.07.04 Registered (J. No.1328)
25 Kamdhenu 1314267 28 11.10.04 Registered (J. No.1328-Supp.3)
26 Kamdhenu 1341307 29 28.02.05 Registered (J. No.1331)
27 Kamdhenu 1127301 30 19.08.02 Registered (Journal No.mega-6)
28 Kamdhenu 1314281 34 11.10.04 Registered (J.No.1328 Supp.5)
29 Kamdhenu 1314264 35 11.10.04 Registered (J. No.1328 Supp. 5)
30 Kamdhenu 1314265 36 11.10.04 Registered (J. No.1328 Supp.5)
31 Kamdhenu 1240486 37 30.9.03 Registered (J. No.1327-Supp.1)
7. The lettering style and colour combination adopted by the plaintiff in respect of its trade mark Kamdhenu is registered under the Copyright Act, 1957 and Page 1168 as such, the plaintiff is the owner and has exclusive proprietary rights therein under the provisions of the Copyright Act, 1957.
8. The defendant has adopted the trade name Kamdhenu Industrial Service which is identical to the trade mark and trade name of the plaintiff which would certainly result in creating confusion and deception in the minds of the public who would carry a belief that the business of the defendant is associated with that of the plaintiff. The plaintiff has also established that the adoption of such trade mark and trade name by the defendant is subsequent and without the knowledge, permission or consent of the plaintiff and that the same is dishonest, mala fide and fraudulent. Certainly, by these acts which the plaintiff has complained of, the defendant is infringing the legal, exclusive and proprietary rights of the plaintiff in the trade mark and the trade name. These actions of the defendant are also causing dilution of the plaintiff's established goodwill and reputation in the market.
9. There is no dispute to the averments of the plaintiff or the evidence placed by it before this Court. The plaintiff has placed reliance on the principles laid down by this Court in 2004 (28) PTC 121 (SC) entitled Midas Hygiene Industries P. Ltd. and Anr. v. Sudhir Bhatia and Ors. and entitled Century Traders v. Roshal Lal Daggar and Co. and Ors. which apply to the facts of the instant case.
10. In view of the foregoing discussion, the plaintiff has certainly established entitlement to protection of its trade mark and trade name from such dishonest adoption and use by the defendant and a judgment in its favor.
11. Accordingly, I hereby pass a decree for permanent prohibitory injunction in favor of the plaintiff and against the defendant restraining the defendant, by themselves and through their directors, partners, servants, agents, assigns, successors, representatives, distributors and all others acting for and on their behalf from manufacturing, marketing, selling, offering for sale, advertising or displaying directly or indirectly or using or dealing in any mode or manner Steel and Stainless Steel fasteners or goods of same/similar/allied/cognate descriptions and nature under the impugned Trade Mark/Trade Name KAMDHENU/KAMDHENU INDUSTRIAL SERVICE or any other Trade Mark/Trade Name identical with or deceptively similar thereto in relation to impugned goods and goods of same/similar/allied/cognate description or from doing any other acts or deeds amounting to or resulting in either infringement of the plaintiffs registered trade mark KAMDHENU or in passing off and violation of the Plaintiff's common law rights in their trade mark KAMDHENU and trade name M/s Kamdhenu Ispat Ltd.
12. There is no material before this Court with regard to the sales of the defendant etc. Consequently, the prayer for a decree for rendition of the accounts is hereby declined.
The plaintiff shall be entitled to the costs of the suit.
