M/S St. Ives Laboratories Inc. vs Mr. Sunny Bakshi & Another
2009 Latest Caselaw 425 Del

     *IN THE HIGH COURT OF DELHI AT NEW DELHI

+                  CS(OS) 362/2007

% 06.02.2009               Date of decision:6th February, 2009

M/S ST. IVES LABORATORIES INC.                      .......       Plaintiff
                         Through:     Mr. S.K. Bansal and Mr. Shashi P.
                                      Ojha, Advocates, Advocate

                                 Versus

MR. SUNNY BAKSHI & 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 plaintiff a company incorporated under the laws of USA

instituted the present suit with respect to its trademark/labels

SWISS FORMULA, ST. IVES, device of VILLAGE, its trade dress,

colour scheme, artistic features, copyrights, trade name etc. and

claimed the decree of permanent injunction against the defendant

No.1 carrying on business in the name and style of defendant No.2

from infringing the aforesaid trade mark, trade dress, copyright of

the plaintiff and or from passing off their goods as that of the

plaintiff. The ancillary reliefs of delivery, rendition of accounts,

damages, costs etc. are also claimed. Vide ex-parte order dated 27th

February, 2007 this court finding a prima-facie case in favour of the

plaintiff, restrained the defendants, their agents and representatives

from manufacturing, selling, using, displaying, advertising,

exporting, importing or otherwise dealing with the trade make ST.

IVES, device of VILLAGE and trade dress or any other

trademark/label identical with or deceptively similar to the plaintiff's

trademark/labels on any product. On an application of the plaintiff a

commissioner was also appointed to visit the premises of the

defendants and to take into custody the infringing goods and to sign

the account books etc.

2. The commission issued as aforesaid by the court was executed

and the commissioner has filed a report dated 12th March, 2007. The

commissioner has reported having found in the shop of the

defendants at Gaffar Market substantial volumes of products bearing

the trademark ST. IVES with the device of VILLAGE and which were

found by the representatives of the plaintiff accompanying the

commissioner to be counterfeit of the original products of the

plaintiff.

3. The defendants on being served with the summons of the

suit/notice of the application for interim relief appeared on 11th May,

2007 through advocate who informed that the defendants did not

want to file a written statement and only wanted to make a

statement to the court. On 28th May, 2007 the counsel for the

defendants informed that the defendants wanted to make a

statement before the court that the defendants were not using the

trademark of the plaintiff nor intend to do so. The said statement of

the defendants was controverted by the counsel for the plaintiff who

also pressed for a decree for damages besides that of permanent

injunction which was being conceded by the defendants. In the

circumstances, the defendants were directed to file written

statement. However, the defendants did not file the written

statement and also stopped appearing before the court and were

vide order dated 14th January, 2008 proceeded against ex-parte and

remain ex-parte. The interim order aforesaid was made absolute

during the pendency of the suit and the plaintiff directed to lead ex-

parte evidence. The plaintiffs have filed affidavit by way of

examination in chief of Mr. Gary P. Schmidt its Secretary, affirmed

and verified at Illinois, USA. Exhibit marks were put on the

documents referred to in the affidavit. Considering that the case of

the plaintiff is not being controverted by the defendants and the

defendants had in fact conceded to the relief of permanent

injunction, the personal appearance of the aforesaid witness of the

plaintiff is exempted.

4. It is the case of the plaintiff and is in evidence that the plaintiff

is engaged in the business of cosmetics, personal care and toiletry

products. The plaintiff coined and conceived the distinctive

trademark containing the marks SWISS FORMULA, ST.IVES and a

device of VILLAGE and trade dress formats. The plaintiff in or about

1985 also adopted the trademark APRICOT SCRUB. The plaintiff has

proved as Exhibit PW1/1 the photograph of its product APRICOT

SCRUB in which besides the mark APRICOT SCRUB trademark

ST.IVES and a device of VILLAGE is also prominently displayed. The

plaintiff has proved as Exhibit PW1/2 its copyright registrations with

respect to APRICOT SCRUB, ST.IVES label, artistic work of a

VILLAGE logo and the artistic work of ST.IVES, APRICOT SCRUB

label, the artistic work of ST. IVES, SWISS FORMULA, APRICOT

SCRUB. The plaintiff has proved as Exhibit PW1/3 and PW1/4 its

trademark registrations of ST. IVES and of the label. The aforesaid

registrations are in relation to various cosmetic products. The

witness of the plaintiff has deposed about similar registrations in

other countries also and of the huge sales of the plaintiff's products

all over the country and of the monies spent by the plaintiff in

advertising and building its goodwill and popularizing its aforesaid

trademark/trade dress.

5. The witness of the plaintiff has proved as Exhibit PW1/D-1 the

photograph of the product being marked by the defendants and

which forms the cause of action for the suit. It is clear from the

same that the defendants have copied the trademark ST. IVES and

the device of a VILLAGE of the plaintiff as well as the label and trade

dress of the plaintiff. In fact, the defendants' product is also shown

to be manufactured by the plaintiff only and is a counterfeit of the

product of the plaintiff.

6. The plaintiff has, therefore, established the case for grant of

the relief of permanent injunction in terms of para 36 (a) of the

plaint. As noticed herein above, the defendants had also conceded to

suffer a decree for permanent injunction but the compromise could

not be effected owing to the plaintiff's insistence on the defendants

paying damages also and the defendants refusing to consent to the

same.

7. The counsel for the plaintiff has in arguments also urged for

the relief of damages as well.

8. In my view, the operators such as the defendants frequently

change their place of business and do not keep any account books of

such surreptitious activities. No purpose would be served directing

the defendants to render accounts. However 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. The defendants having

indulged in an action of infringement, passing off cannot avoid

liability in damages merely for the reason of remaining ex-parte.

Accordingly, besides the relief of permanent injunction, a decree for

damages in the sum of Rs.5 lac is also passed in favour of the

plaintiffs and against the defendants.

9. Accordingly, the suit of the plaintiff is decreed for the relief of

injunction as prayed for in para 36(a) and for recovery of Rs.5 lac

from the defendants jointly and severally. The plaintiff shall also be

entitled to costs of the suit. Counsel's fees assessed at Rs.30,000/-.

RAJIV SAHAI ENDLAW (JUDGE) February 6, 2008 PP