United Breweries Ltd. vs Indo Agro Industries
2008 Latest Caselaw 1618 Del

          THE HIGH COURT OF DELHI AT NEW DELHI

+             CS(OS) No.524/2005

                         Date of decision :      11.09.2008

IN THE MATTER OF :
#UNITED BREWERIES LTD.                        ..... Plaintiff

!                    Through : Ms. Gurkamal, Adv.

                versus

$INDO AGRO INDUSTRIES                         ..... Defendant

^                    Through : None.

CORAM

* HON'BLE MS.JUSTICE HIMA KOHLI

     1.

Whether Reporters of Local papers may be allowed to see the Judgment?

2. To be referred to the Reporter or not?

3. Whether the judgment should be reported in the Digest?

HIMA KOHLI, J. (O R A L)

The present suit is instituted by the plaintiff against

the defendant for rendition of accounts, permanent injunction

against infringement of trademark, copyright and passing off.

The suit was registered on 25.4.2005 and summons were issued

to the defendant returnable for 17.5.2005. On the same date, an

interim order was passed on an application filed by the plaintiff

under Order 39 Rule 1 & 2 of CPC being I.A. No.3013/2005

restraining the defendant, its agents, distributors, dealers, etc.,

from using the trademark "KINGFRESHER" or any other similar or

deceptively similar trade name on their beverages and other

products. They were also restrained from using logo which may

be deceptively similar to the logo of the plaintiff.

2. The defendant was duly served with the summons

which were refused. As the summons were refused, vide order

dated 8.5.2006, the defendant was directed to be proceeded

against exparte and the plaintiff was directed to file its exparte

affidavit by way of evidence thereafter, which has been done.

3. At the outset, counsel for the plaintiff states that the

plaintiff be permitted to pay ad valorem court fee on the plaint by

valuing the relief for permanent injunction at Rs.25.00 lacs. She

undertakes to deposit the court fee on the aforesaid amount

within four weeks from today. Subject to the aforesaid

undertaking, the following judgment is being passed while

making it clear that till the plaintiff deposits the court fee, the

decree sheet shall not be drawn in its favour.

4. It is the case of the plaintiff that the defendant has

been infringing the trademark and copyright of the plaintiff in

respect of its trademark, "KINGFISHER" and the plaintiff‟s logo.

The plaintiff has instituted the present suit against the defendant

seeking the relief of permanent injunction restraining the

defendant from using the trade name "KINGFRESHER" or any

other similar or deceptively similar trade name and from

infringing and passing off their products as that of the plaintiff‟s

and a decree of permanent injunction restraining the defendant

from using a logo deceptively similar to the logo of the plaintiff.

5. The plaintiff has also sought the relief of rendition of

accounts against the defendant in respect of the sale of its

products and the profits earned by the defendant under the

trademark, "KINGFRESHER" or any other trademark similar or

deceptively similar as that of the plaintiff‟s trademark

"KINGFISHER" and for a consequential decree in the amount

found due and payable to the plaintiff. The last relief sought by

the plaintiff is for the costs of suit.

6. The brief facts of the case are that the plaintiff is a

company incorporated under the Companies Act. Mr. S.R.

Gopalan is the authorized signatory of the plaintiff company. He

is also the deponent of the affidavit filed by way of evidence. An

extract of the Resolution of the Board of Directors of the plaintiff

in favour of Shri S.R. Gopalan dated 15.3.2005 is marked as

Ex.PW-1/1. Shri S.R. Gopalan is authorized and competent to

institute, sign, verify and prosecute the suit on behalf of the

plaintiff company.

7. It is stated by the witness that the plaintiff is primarily

engaged in the business of brewing, manufacturing and selling of

beer, non-alcoholic malt beverages and mineral water/packaged

drinking water under the trademark "KINGFISHER". A photocopy

of the bottle of the plaintiff with the trademark "KINGFISHER" is

marked as Ex.PW-1/2. The old and new labels of the plaintiff in

respect of the trademark, "KINGFISHER" are marked as Ex.PW-

1/3 and Ex.PW-1/4. It is deposed by the witness that the

trademark "KINGFISHER" was got registered by the plaintiff in

various forms on various dates in Class 32 with the Trademark

Registry. The details of the said registrations find mention in

para 3 of the plaint and in para 3 of the aforesaid affidavit filed

by way of evidence. It is stated that the said trademarks were

renewed from time to time and the advertisements in respect of

the renewals were duly published. Copy of the certificates or

registration and the renewal certificates are marked as Ex.PW-1/5

to Ex.PW-1/17. Counsel for the plaintiff has also produced the

originals thereof in the Court for perusal.

8. It is further stated that the trademark "KINGFISHER"

was also got registered by the plaintiff in Class 33 with respect to

the products, Whisky, Brandy, Gin, Rum, Vodka and all other

alcoholic beverages (except beer) included in Class 33 and the

same was duly registered by the Trademark Registry on

12.1.1998. A copy of the certificate is marked as Ex.PW-1/18.

9. Counsel for the plaintiff further states that the plaintiff

enjoys a copyright in the artistic work i.e. „Kingfisher Premium

Lager Beer‟ which is registered with the Copyright Office. The

certificate of registration is marked as Ex.PW-1/19. It is stated on

behalf of the plaintiff that the plaintiff is a registered proprietor of

the trademark "KINGFISHER" and has the exclusive rights in

respect of various alcoholic, non-alcoholic beverages and

packaged drinking water. The said trademark is being used by

the plaintiff continuously, uninterruptedly and extensively

throughout India ever since the year 1965. As a result, the said

trademark has acquired a distinctiveness in the mind of the

public, due to the long, continuous and uninterrupted usage, and

the same is solely and exclusively associated by the public with

the plaintiff company. The said trademark has also generated

goodwill and reputation in the market and the public associates

the same with the plaintiff company alone. It is stated that only

the plaintiff company can claim monopoly over the use of the

word, "KINGFISHER", to the exclusion of others.

10. In support of her contention that the sale of the

product bearing the trademark, "KINGFISHER" has continuously

increased over the years, counsel for the plaintiff refers to para

10 of the affidavit of the witness, wherein the sale volumes for

the period of 5 years w.e.f. 1999-2000 to 2003-2004 have been

set out. The sale volumes for the period of five years for sale of

packaged drinking water under the trademark, "KINGFISHER" are

also set out in the said para. The details of the promotional and

advertisement expenses incurred by the plaintiff for the said

period of five years are given para 11 of the affidavit. Copies of

the same are collectively marked as Ex.PW-1/20 (colly.).

11. Counsel for the plaintiff submits that on 6.1.2005, the

plaintiff discovered that the defendant had been selling its non-

alcoholic beverages under the trade name, "KINGFRESHER". It is

further stated that the use by the defendant of the said

trademark with respect to various alcoholic/non-alcoholic

beverages results in gross infringement of the registered

trademark of the plaintiff and is an attempt to piggy back on the

goodwill of the plaintiff. It is further stated that the name

"KINGFRESHER" has been intentionally chosen by the defendant

to deceive the buying public and to create confusion in the

market.

12. It is submitted that the defendant is working in the

same field of activity and the territory operation of both the

parties coincides, thus the defendant is a rival of the plaintiff. It

is stated that two competing marks, "KINGFISHER" and

"KINGFRESHER" are phonetically similar and further that the

defendant has also copied the distinctive and essential features

of plaintiff‟s logo mark, which includes the use of a bird by the

name of "KINGFISHER" with a similar colour scheme and style on

the said logo, which from a distance, looks almost identical. It is

thus contended that the defendant has infringed not only the

trademark, but also the copyright of the plaintiff with respect to

the said logo. The particulars of the infringing label of the

defendant is marked as Ex.PW-1/21.

13. Counsel for the plaintiff submits that the illegal

adoption and usage by the defendant of the deceptively similar

trademark and the deceptively similar logo amounts to a

dishonest and mala fide attempt to cheat and deceive the public

at large and ride on the goodwill and reputation of the plaintiff in

the market. It is further stated that the dishonest intention of the

defendant is apparent from the fact that it is trying to pass off its

product as the product of the plaintiff in the market. Based on

the aforesaid submissions, the present suit has been instituted.

14. I have perused the affidavit by way of evidence filed

on behalf of the plaintiff and the documents placed on the record.

The averments made in the affidavit and the material placed on

the record remain unrebutted in the absence of the defendant.

Consequently, it is held that the plaintiff has established before

the Court that it is the owner of the trademark, "KINGFISHER"

and has a copyright in the logo marked as Ex.PW-1/3.

15. On the basis of the evidence proved by the plaintiff,

the plaintiff has also established that the defendant has been

indulging in the illegal activity of infringing the registered

trademark and copyright of the plaintiff in respect of the product

in question and the aforesaid act of the defendant is blatant,

deliberate and malafide actuated with the intention of riding on

the goodwill and reputation of the plaintiff in the market and a

devious attempt to cause confusion and deception in the mind of

the public at large. Vide order date 25.4.2005, a Local

Commissioner was appointed to visit the premises of the

defendant and prepare an inventory of the infringing products,

and to sign the books of account. Though the Local

Commissioner went to the premises of the defendant, he filed his

report that the receptionist at the premises informed him that

though the office of the defendant existed at the given address

till few months ago, they left the same and that she did not have

any new address of the defendant available with her.

16. On the basis of the unrebutted evidence placed on the

record, it is held that the plaintiff is entitled to grant of a decree

of permanent injunction in its favour and against the defendant.

Accordingly, the defendant, its agents, distributors, dealers,

servants, representatives and assigns are restrained from using

the trade name, "KINGFRERSHER" or any other similar or

deceptively similar name and from infringing and passing off their

products including alcoholic/ non-alcoholic beverages under the

trademark "KINGFRESHER" and/or any other deceptively similar

mark as that of the plaintiff‟s, namely, "KINGFISHER". The

defendant, its agents, distributors, dealers, servants,

representatives and assigns are also restrained from using the

logo of the plaintiff (Ex.PW-1/3) or any other logo which is

deceptively similar to that of the plaintiff‟s logo.

17. Insofar as the relief of rendition of accounts and a

consequential decree on the basis of the aforesaid accounts is

concerned, counsel for the plaintiff states that in view of the fact

that the defendant was proceeded against exparte, there is no

material on the record by way of production of books of accounts,

ledgers, etc., to establish the volume of sales of the infringing

product or the profits earned by it under the trademark,

"KINGFRESHER" or any other deceptively similar mark as that of

the plaintiff. Moreover, the said records could also not be

summoned as the only address of the defendant available with

the plaintiff, was also changed by the defendant, as per the

report filed by the Local Commissioner, without leaving a

forwarding address. However, while not pressing the said relief,

she submits that reasonable costs be awarded in favour of the

plaintiff in respect of the present litigation. She submits that it is

on account of the infringing acts of the defendant that the

plaintiff was compelled to approach this Court and institute the

present proceedings and that by refusing to accept the summons

and by keeping away from the Court, the defendant cannot

escape its liability to pay costs. She also adds that apart from

court fee and counsel‟s fee, the plaintiff also paid a sum of

Rs.20,000/- to the Local Commissioner towards his fee. The

contention of the counsel for the plaintiff is well founded and

accepted.

18. In these circumstances, the suit is decreed in favour of

the plaintiff and against the defendant in terms of prayers (a) and

(b) of the prayer clause in the plaint alongwith costs of the

proceedings which are quantified at Rs.50,000/-.

19. Decree sheet be drawn up accordingly, but upon the

plaintiff paying the deficient court fee.

SEPTEMBER 11, 2008                          HIMA KOHLI, J.
sk/mk/`ns‟/KA