The Gillette Company & Another vs Mr. Bhisham & Another
2009 Latest Caselaw 334 Del

     *IN THE HIGH COURT OF DELHI AT NEW DELHI

+                  CS(OS) 1286/2004

%02.02.2009              Date of decision: February 02, 2009

THE GILLETTE COMPANY & ANOTHER ......Plaintiffs
                         Through:    Ms. Mamta Rani Jha, Advocate


                                 Versus

MR. BHISHAM & ANOTHER                           .......   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 plaintiffs instituted the present suit for restraining the

defendant No.1 from carrying on business in the name and style of

defendant No.2 of manufacturing, selling, advertising etc. tooth

brushes or other products under the trademark GILLETTE &

MACH 3 or under any other name as may be deceptively similar to or

infringe the trademark of the plaintiffs. The plaintiffs also claim the

ancillary reliefs of rendition of accounts, delivery, damages etc. Vide

ex-parte order dated 10th November, 2004, the defendants were

restrained from manufacturing, selling, offering for sale directly or

indirectly tooth brushes bearing the mark GILLETTE & MACH 3. On

the application of the plaintiffs court commissioner was also

appointed to visit the premises of the defendants and to prepare an

inventory of the infringing goods.

2. The court commissioner appointed by the court filed a report

stating that an employee of the defendants was found at the

premises on 16th November, 2004; that the defendant No.1 spoke to

the court commissioner on telephone but did not come to the

premises; the court commissioner found a large volume of tooth

brushes and packaging material bearing the mark GILLETTE &

MACH 3 and as per inventory submitted along with the report. The

said goods were given on superdari to the employee of the

defendants.

3. The defendants, however, could not be served and were not

found, including at the place earlier visited by the court

commissioner. It appears that the defendants after the visit of the

court commissioner wound up their business from the said place.

Ultimately, the defendants were ordered to be served by publication

and upon their failure to appear were on 6th March, 2007 proceeded

against ex-parte and remain ex-parte.

4. The plaintiffs have led their ex-parte evidence by filing the

affidavits by way of examination in chief of their Assistant Secretary

Mr. Carl J. Roof.

5. It is the case of the plaintiffs and in evidence that the plaintiff

No.1 an American Company has been carrying on business as

manufacturers and traders of a variety of personal grooming

products including gels, shaving foams, safety razors, blades, tooth

brushes, toiletries, etc. under the trademark GILLETTE & Oral B.

The plaintiff No.1 is the owner of trademark GILLETTE used in India

also since 1986 for shaving blades, razors, shaving cream, shaving

brush etc. The trademark registrations of GILLETTE in the name of

the plaintiff No.1 in relation to shaving brushes, shaving cream,

shaving soap, brushes, surgical, medical, dental, instruments etc.

have been proved as Exhibit PW1/5 to Exhibit PW1/7. The plaintiff

No.2 is an Indian Company and a subsidiary of plaintiff No.1 and is

licenced to use the said trademark. The trademarks GILLETTE &

MACH 3 are deposed/proved to be well-known trademarks having

trans border reputation and having huge sales. The plaintiffs have

been spending large amount of monies on advertisements to enhance

the sales under the said trademarks of the said products.

6. The defendants are deposed/proved to have commenced

marketing tooth brushes under the trademark GILLETTE & MACH 3,

taking advantage of the reputation and to ride on the goodwill, of the

plaintiffs. The colour photographs of the defendants' tooth brushes

have been proved as Exhibit PW1/18. The court commissioner has

also along with the report filed the photographs and the packing

material and which show that the defendants not only copied the

trademark of the plaintiffs but have also copied the manner and style

of writing the said trademark. Anybody seeing the tooth brushes of

the defendants is likely to believe that the same are from the same

stable from which the well known and reputed safety razors, blades,

shaving cream, gels etc. under the same trademark are emanating,

i.e. of the plaintiffs and are likely to purchase the same believing the

same to be having the same class and quality as the other products

of the plaintiffs. It is significant that though the trademark

GILLETTE is not registered with respect to the tooth brushes but

the plaintiffs are also carrying on business of manufacture and sale

of tooth brushes though under the name Oral B but since the

plaintiffs are in the business of tooth brushes, a purchaser is likely to

be deceived into believing that the tooth brush of the defendants is

in fact of the plaintiffs. There is even otherwise similarity in the two

goods within the meaning of Section 29 (2) of the Trade Marks Act,

1999; both occupy same shelf in houses, hotels and are generally

also sold from the same shelf.

7. Needless to state that the evidence of the witness of the

plaintiffs as well as the report of the court commissioner remain un-

rebutted.

8. I, therefore, find the plaintiffs to have established the case for

grant of permanent injunction in terms of paragraphs 37 (i) to (iii) of

the plaint. Though a large quantity of infringed goods were found by

the court commissioner and given on superdari to the employee of

the defendant No.2, the counsel for the plaintiffs has rightly stated

that since the defendants have moved from the premises where the

court commissioner visited and could not be found, no purpose

would be served in directing the relief of delivery of goods. The

counsel for the plaintiffs, however, pressed for relief of damages and

costs.

9. The witness of the plaintiffs has stated that the defendants

have caused damage in excess of Rs.25 lacs to the plaintiffs.

10. Though there is no evidence of since when the defendants

were carrying on the infringing business and what was the volume of

its sales, but considering the quantities found by the court

commissioner and following the principle laid down in Microsoft

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

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 and in

Time Incorporated Vs. Lokesh Srivastava 2005 (30) PTC 3 (Del)

holding that where infringement is found, punitive damages should

follow to discourage such law breakers, damages in the sum of Rs.5

lac are awarded to the plaintiffs and against the defendants.

11. Accordingly, a decree for in terms of prayer paragraphs 37 (i)

to (iii) of the plaint and a decree for recovery of damages in the sum

of Rs.5 lac is passed in favour of the plaintiffs and against the

defendants. The plaintiffs shall also be entitled to costs of the suit.

Counsel's fees assessed at Rs.25,000/-.

RAJIV SAHAI ENDLAW, J

February 02, 2009 PP