I.T.C. Limited vs M/S Deepak Garments & Others
2008 Latest Caselaw 2282 Del

     *IN THE HIGH COURT OF DELHI AT NEW DELHI

+                     CS(OS) No.135/2004



%18.12.2008                             Date of decision: 18.12.2008


I.T.C. LIMITED                                       ....Plaintiff

                      Through: Mr Sushant Singh, Advocate


                                   Versus



M/S DEEPAK GARMENTS & OTHERS                         .... Defendants

                      Through: Ex parte.


CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

1.     Whether reporters of Local papers may
       be allowed to see the judgment?       NO

2.     To be referred to the reporter or not?        NO

3.     Whether the judgment should be reported
       in the Digest?                        NO


RAJIV SAHAI ENDLAW, J.

1. The plaintiff engaged inter-alia in the business of branded

apparel under the trademark WILLS SPORT & JOHN PLAYERS

instituted this suit for permanent injunction against four

defendants for restraining them from dealing in garments bearing

the trademark WILLS SPORT & JOHN PLAYERS & ITC, in

combination or individually and for the ancillary reliefs of

accounts, damages, delivery etc. Vide ex-parte order dated 17th

February, 2004, the defendants were restrained from selling,

marketing or distributing the wearing apparel with the plaintiff‟s

trademarks and logos WILLS SPORT, JOHN PLAYERS & ITC or

any other trademark or logo deceptively similar to that of the

plaintiff‟s. The said order was made absolute during the pendency

of the suit, vide order dated 17th January, 2007. The defendants

No. 1,2&4 on being served with the summons of the suit

separately filed their written statements. The defendant No.3,

however, failed to appear in spite of service and was vide order

dated 29th March, 2006 proceeded against ex-parte. The plaintiff,

at the time of institution of the suit, had applied for registration of

trademark WILLS SPORT & JOHN PLAYERS and JOHN PLAYER

and during the pendency of the suit the said registration was

granted. The plaintiff applied for amendment of the plaint to

incorporate the said fact in the plaint and the application of the

plaintiff for amendment was allowed on 29th March, 2006. The

defendants 1,2&4 did not file any written statement to the

amended plaint and adopted the written statements earlier filed by

them, to the amended plaint also.

2. On the pleadings of the plaintiff and the defendants

No.1,2,&4, on 17th January, 2007, the following issues were

framed:-

"1. Whether the plaintiff is the proprietor of the trademark and copyright in respect of WILLS SPORT, WILL SPORT LOGO, JOHN PLAYERS in respect of readymade garments, shirts, jeans, trousers, etc.?

2. Whether the defendants are passing off their goods as that of the plaintiff?

3. Whether the defendants are infringing the trademark and WILL SPORT and JOHN PLAYERS of the plaintiff?

4. Whether the defendants are infringing the logo in respect of WILL SPORT amounting to infringement of copyright of the plaintiff?

5. Relief."

3. The defendants No.1,2&4 however also failed to appear

thereafter and were vide order dated 15th November, 2007also

proceeded against ex-parte.

4. The plaintiff led ex-parte evidence by filing the affidavit by way

of examination in chief of its constituted attorney Mr. Rajiv Ohri.

The defendants remain ex-parte. The counsel for the plaintiff has

also filed synopsis for submissions.

5. Though issues as aforesaid were framed when the defendants

No.1,2&4 were contesting the suit but they also having been

proceeded against ex-parte, the issues need not be dealt with

separately.

6. The witness of the plaintiff has proved as Exhibit P1, the

registration certificates showing the plaintiff as the registered

proprietor of the device WILLS SPORT with „W‟, however, without

any right to the exclusive use of letter „W‟ or the word SPORT, in

relation to clothing, footwear, headgear for sale in India and for

export and also in relation to leather goods, accessories, animal

skins etc. of the word JOHN PLAYER for bleaching preparations and

other substances for laundry use etc. of the device WILLS SPORT,

with „W‟ for sporting equipment, games play things, supporting

articles, decorations etc. as well as for clothing, footwear, headgear

for sale in India and for export of the device JOHN PLAYER for

sporting equipment, games, gymnastics, without any right to the

exclusive use of the PLAYERS. It, thus, stands established that the

plaintiff is the registered proprietor of WILLS SPORT, WILLS

SPORTS LOGO & JOHN PLAYERS.

7. The plaintiff had approached this court on learning of the sale

of counterfeit WILLS SPORT & JOHN PLAYERS shirt, jeans,

trousers and other clothing at the premises owned by the

defendants. Though, it was the case in the plaint that the plaintiff

through a notary public had purchased the goods bearing infringing

trademark from the defendants but the said public notary was not

examined by the plaintiff. It was further the case of the plaintiff that

the inquiries of the plaintiff had revealed that the defendant No.1

M/s Deepak Garments functioning from 90 & 157, Sarojini Nagar

Market, New Delhi was the manufacturer and the fabricator of the

infringing goods, the said goods were being sold through the

defendant No.2 M/s Guru Nanak Trading Co. at shop No. 82,

Sarojini Nagar Market, New Delhi, and the defendant No.3 M/s

Mini Fashion Street at 199 Sarojini Nagar Market and the

defendant No.4 M/s Shanker Garments at Shop No. 77-A, Sarojini

Nagar Market, New Delhi. It was also the case of the plaintiff that

the defendant No.1 was also selling the infringing goods from its

shop in the market. It was on these pleas that the four defendants

were joined in this suit. That the defendant No.1 in its written

statement filed by Mr. Vinod Kumar Gupta, S/o Mr. Abdh Bihari

Gupta r/o 74/2, New Law Shashtri Nagar, Delhi (affidavit is

attached to written statement of defendant No.2) inter-alia stated

that there was no firm by the name of M/s Deepak Garments at

shop No.90 and averred that he was carrying on business of Dry

Cleaning in the name and style of M/s Blue Bird Dry Cleaners at

shop No.90, Sarojini Nagar Market, New Delhi. He denied the rest

of the contents of the plaint. The defendant No.2 M/s Guru Nanak

Trading Co. in its written statement filed through Mr. Iqbal Singh

S/o Mr. Mohinder Singh, R/o Flat No.148, Sarojini Nagar Market,

New Delhi as sole proprietor (affidavit attached to written

statement of defendant No.1) stated that no firm by the name of

Guru Nanak Trading Co. exists at shop No.82, Sarojini Nagar

Market, New Delhi and stated that in fact a tent house in the name

and style of M/s Guru Nanak Tent House under the proprietorship

of Mr. Iqbal Singh aforesaid was being run from shop No.82. He

further pleaded that he had given a part of the said shop No.82 on

rent to one Mr. Ajay Kumar S/o Late Mr. Kishori Lal R/o G-82/101A,

Paschim Vihar, New Delhi who was conducting his business of

selling garments from the said shop. The said Mr. Iqbal Singh also

denied the rest of the contents of the plaint. The defendant No.4

M/s Shankar Garments in its written statement filed through Mr.

Dharmender Kumar S/o Mr. Sumar Mal R/o 11/15, 3rd Floor, West

Patel Nagar, Delhi as sole proprietor denied the contents of the

plaint and denied having dealt with the trademark/device aforesaid

of the plaintiff.

8. The sole witness of the plaintiff in his deposition reiterated the

contents of the plaint with respect to the defendants and proved

nothing further. It is, however, significant that the plaintiff had

along with the suit filed an application for appointment of two local

commissioners to visit the premises of defendant No.1 M/s Deepak

Garments at 90 & 157, Sarojini Nagar Market and the premises of

the defendant No.2 M/s Guru Nanak Trading Co. at shop No.82,

Sarojini Nagar Market. This court vide ex-parte order dated 17th

February, 2004 appointed the local commissioners to visit the

aforesaid premises and to make an inventory of the goods carrying

the infringing trademarks and logo.

9. The local commissioner appointed to visit the premises of the

defendant No.1 M/s Deepak Garments at 90&157, Sarojini Nagar,

New Delhi filed a report stating the infringing goods were found

only in shop No.90 but not in shop No.157. The local commissioner

also mentioned having met one Mr. Ajay Kumar, an employee in the

said shop No.90 and an employee Mr. Kamal at shop No.157.

10. The local commissioner appointed to visit the premises of the

defendant No.2 M/s Guru Nanak Trading Co. at shop No.82

reported that on reaching the shop, one Mr. Ajay who introduced

himself as an employee was met in the shop; the said Mr. Ajay had

called Mr. Iqbal Singh described as the owner of the business; the

said Mr. Iqbal Singh co-operated and the local commissioner found

infringing goods which were left in the superdari of the said Mr.

Iqbal Singh only.

11. Though no objections to the aforesaid reports of the local

commissioner have been filed but the defendant No.2 M/s Guru

Nanak Trading Co. in its written statement stated that he had

described himself to the local commission as the owner of the

building and not as the owner of the business and the local

commissioner had forced him to sign the superdarinama. The

defendant No.1 in its written statement, however, did not deal with

the visit of the local commissioner.

12. From the aforesaid reports of the local commissioner, which

there is no reason to doubt, especially in the face of the defendants

having neither filed any objections thereto nor contested the same,

show that at least the aforesaid Sh. Iqbal Singh carrying on

business at 82, Sarojini Nagar Market, New Delhi and M/s Deepak

Garments carrying on business at 90, Sarojini Nagar Market were

indulging in the activities complained by the plaintiff and with

respect to which the suit for injunction has been filed. The presence

of the same person Mr. Ajay at the time of visit by the local

commissioners to both the premises also establish the common

connection at least between the defendants No.1&2. The plaintiff

has thus become entitled to the decree for injunction against the

defendants No.1&2.

13. As far as the defendants No.3&4 also are concerned, in view

of the unrebutted statement of the witness of the plaintiff, the

plaintiff has become entitled to injunction against them also. I may

record that the witness of the plaintiff has proved as Exhibit P-2,

the photographs of the plaintiff‟s products with the trademark and

device aforesaid of the plaintiff and as Exhibit P-4 the photographs

of the infringing products. From the perusal thereof it is evident

that the trademark, logo, trade dress of the plaintiff is being

counterfeited by the defendants. The witness of the plaintiff has

also purported to prove as Exhibit P-3 the affidavit of one Mr.

Rakesh Chhabra of having purchased the infringing goods from the

defendant No.3 at 199, Sarojini Nagar Market, New Delhi but the

deponent of the affidavit having not been examined, I do not

consider the said document to have been proved in accordance with

law.

14. As far as the relief of damages is concerned, for no explicable

reason the plaintiff while applying for appointment of local

commissioner did not apply for commissioner to be appointed with

respect to the premises of the defendants No.3&4. As aforesaid,

the witness of the plaintiff has also save to his bare statement not

led any evidence to show the constitution of the defendants No.3&4

nor expanded the case as set out in the plaint or in any further. I,

therefore, do not consider the plaintiff to have made out any case

for recovery of any damages from the defendants No.3&4.

However, as far as the defendant No.2 is concerned, though he has

in his written statement purported to explain the infringing goods

found in his shop by the local commission by pleading that the

business therein was being carried out by his tenant, neither has

the said stand been proved nor is it believable. The plaintiff has

thus become entitled to the relief of the damages against said Mr.

Iqbal Singh, proprietor of defendant No.2. Similarly the local

commissioner visiting the premises No.90, Sarojini Nagar Market,

New Delhi also found the infringing goods. The plaintiff had not

disclosed the constitution of M/s Deepak Garments. However, Mr.

Vinod Kumar Gupta, who has filed the written statement on behalf

of the defendant No.1 and who has claimed to be carrying on

business at 90, Sarojini Nagar Market, New Delhi is found to have

indulged in infringing goods, even though he has denied carrying on

business in the name and style of Deepak Garments and has

claimed to be carrying on business in the name of Blue Bird Dry

Cleaners in the said premises.

15. The counsel for the plaintiff has relied upon Microsoft

Corporation Vs. Yogesh Papat 2005 (30) PTC 245 (Del) where

this court has held that the plaintiff would be entitled to damages

for the reason that it would be futile to direct the defendants to

render accounts for the reason of the defendants carrying on

business surreptitiously. Similarly, in Time Incorporated Vs.

Lokesh Srivastava 2005 (30) PTC 3 (Del) also it was held that

wherein infringement is found, punitive damages should follow to

discourage such law breakers.

16. As aforesaid, the goods seized by the local commissioner,

were as directed given on Superdari to Mr. Iqbal Singh & Mr. Ajay

Kumar. The plaintiff is permitted to take the requisite steps for

taking the said goods from the superdar and for destruction of the

same.

17. Considering the nature of the goods, in the present case

namely garments which normally in the markets such as the

Sarojini Nagar are sold in the region Rs.300 to 500/-, and further

since the infringement is stated to have continued for a short

period, I deem it appropriate to award plaintiff punitive damages

against the aforesaid Mr. Iqbal Singh and Mr. Vinod Kumar Gupta

respectively in the sums of Rs.1 lac each.

18. The suit of the plaintiff is thus decreed for permanent

injunction in terms of para 46 (i) to (iii) of the plaint. A decree for

recovery of damages in the sum of Rs.1 lac each is also passed

against the aforesaid Mr. Iqbal Singh believed to be carrying on

business in name and style of defendant No.2 and Mr Vinod Kumar

Gupta believed to be carrying on business in the name and style of

defendant No.1. The plaintiff shall also be entitled to proportionate

costs from the defendants. Decree sheet be prepared.

RAJIV SAHAI ENDLAW (JUDGE)

December 18, 2008 PP