Larsen & Toubro Limited vs Chagan Bhai Patel
2009 Latest Caselaw 32 Del

     *IN THE HIGH COURT OF DELHI AT NEW DELHI

+                  CS(OS) 1600/2007

%                                Date of decision: 09.01.2009

LARSEN & TOUBRO LIMITED                              ....     Plaintiff
                       Through: Mrs. Purnima Seth & Mr. Darpan
                                 Wadhwa, Advocates.

                               Versus

CHAGAN BHAI PATEL                                    ..... Defendant
                       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 being the registered proprietor of the trademark /

trade name LARSEN & TOUBRO, on coming to know of the

application of the defendant for registration of the mark LARSON in

relation to plywood, veneer wood, venners, wood panelling, wood

pulp board, timber, partitions not of metal, mouldable wood, door

frames not of metals, door panels not of metals, doors not of metals,

building timber, boards not of metal in class 19, instituted this suit

for permanent injunction to restrain the defendant from using in

relation to its business the mark/logo LARSON or any other similar

mark or name deceptively similar to that of plaintiff and for

restraining the defendant from passing off its goods and business as

that of the plaintiff. Ancillary reliefs of damages and delivery were

also claimed.

2. Vide ex parte order dated 31st August, 2007, the defendant was

restrained from using in relation to any of its business/ goods/

services/products including those in class 19, the mark LARSON or

any other deceptively similar mark. A Court Commissioner was also

appointed to visit the premises of the defendant to seize and take the

infringing material into custody.

3. The defendant, in spite of being served with the summons of

the suit, failed to appear. Though initially the counsel for the

plaintiff informed that the defendant had approached for settlement

but subsequently it was informed that the defendant had failed to

contact the plaintiff also and on 30th November, 2007 the defendant

was ordered to be proceeded against ex parte and the order dated

31st August, 2007 aforesaid confirmed during the pendency of the

suit.

4. The plaintiff has led ex parte evidence. The defendant remains

ex parte. A perusal of the application of the defendant advertised

before acceptance in the Trademark Journal has been proved as

Exhibit PW1/6. The same shows that the defendant intends to write

the name LARSON in capitals and has claimed use of the aforesaid

name/mark since 1st November, 2002. The plaintiff has proved

notarized copy of its certificate of registration which it was

permitted to do as Exhibit PW1/3. The plaintiff also writes LARSEN

in capitals. The plaintiff is engaged in a large number of businesses

and services including construction related business. The mark of

the plaintiff is a well known mark. The witness of the plaintiff has

deposed that the plaintiff came to be known by the said mark/name

in conjunction with TOUBRO since the same were the names of the

partners of the firm which was the predecessor-in-interest of the

plaintiff.

5. There is no difficulty in coming to the conclusion that use by

the defendant of name/mark LARSON in relation to building related

goods only is an attempt to take advantage of the reputation and

goodwill of the plaintiff and to pass off its goods and business as that

of the plaintiff, to its illegal enrichment and to the detriment of the

plaintiff. The name LARSEN AND TOUBRO is so well known, so as

to lead a person to believe that LARSON alone also may be related to

the plaintiff. It is significant that LARSEN or LARSON are not

surnames or names in India and not only has the defendant failed to

appear to explain /justify the choice of such name but there appears

to be no explanation whatsoever for the same, except as aforesaid.

6. The defendant is at Chattisgarh. However, the territorial

jurisdiction of this court has been invoked on the basis of the plaintiff

carrying on business at Delhi and Section 134(2) of the Trade Marks

Act.

7. The counsel for the plaintiff has relied upon a number of

judgments related to names viz Kirloskar Diesel Recon P Ltd v

Kirloskar Proprietary Ltd AIR 1996 Bombay 149, Mahendra and

Mehendra Paper Mills Ltd v Mahindra and Mahindra Limited

2002(2) SCC 147, M/s K.G. Khosla Compressors Limited v

Khosla Extraktions Limited AIR 1986, Delhi 181 as well as of

Division Bench of this court dated 8th February, 2008 in FAO(OS)

601/2006 wherein on the plea of the plaintiff herein only, the

opposite party therein was restrained from using the trademark

/name LNT/ELENTE or other deceptively similar mark. However,

need is not felt to deal with in detail with the said judgments as the

plaintiff is found to be entitled to the relief of permanent injunction.

8. The court commissioner appointed by this court has reported

that he found the stickers bearing the name/mark LARSON which

were deposed to be used on plywood and block board whenever the

defendant received orders for ISI brand goods. No goods bearing

the infringing trademark were found. From Exhibit PW1/6 aforesaid,

it transpires that the defendant has been using the impugned

trademark for five years prior to the institution of the suit. Though

no evidence on assessment of damages has been led but the

defendant having been found to have adopted the mark LARSON

without any basis and having failed to give any explanation for the

same and held as aforesaid to have adopted the same in an attempt

to take advantage of the reputation and goodwill of the plaintiff, it

would be encouraging such violators of intellectual property, if the

defendant notwithstanding having not contested the suit is not

burdened with punitive damages. Though nothing has been deposed

/ disclosed as to what happened to the application of the defendant

for registration, the said act of the defendant also shows that had the

plaintiff not been vigilant, the defendant may have even succeeded in

registering a mark intended to deceive. The defendant is thus for his

such act, is burdened with punitive damages in the sum of Rs 5 lacs

inclusive of costs of this suit. In view of the court commissioner's

report that only stickers infringing name/mark are affixed to the

goods, no useful purpose would be served in ordering delivery.

9. The suit of the plaintiff is decreed in terms of the prayer

paragraphs (a) and (b) of the plaint and a decree for damages in the

sum of Rs 5 lacs inclusive of costs is also passed in favour of the

plaintiff and against the defendant.

The decree sheet be drawn up.

RAJIV SAHAI ENDLAW (JUDGE) January 09, 2008 M