Ardath Tobacco Company Ltd vs Mr Munna Bhai & Ors
2009 Latest Caselaw 45 Del

     *IN THE HIGH COURT OF DELHI AT NEW DELHI

+                 CS(OS) 141/2004

%                                 Date of decision : 09.01.2009

ARDATH TOBACCO COMPANY LTD                         .......      Plaintiff
                        Through: Mr Pravin Anand and Mr M.S. Bharath,
                                 Advocates

                               Versus

MR MUNNA BHAI & ORS                                ....... Defendants
                              Through: Ex parte.


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

1.    Whether reporters of Local papers may YES
      be allowed to see the judgment?

2.    To be referred to the reporter or not?    YES

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


RAJIV SAHAI ENDLAW, J.

1. The plaintiff, engaged in the business of manufacture and

sale of internationally known cigarettes STATE EXPRESS 555,

instituted the present suit for restraining the defendants No. 1 to 3,

vendors/ stockist of cigarettes at Calcutta and defendants No 4 to 6

the vendors/stockiest of cigarettes at Delhi from dealing in the

cigarettes under the label PEACOCK but the packaging and trade

dress whereof is identical or deceptively similar to that of the

plaintiff's cigarettes. Besides the defendants No 1 to 6, the plaintiff

sought the order in the nature of "John Doe" as adopted by the

American, English, Canadian and Austrian courts and which, Hon'ble

Mr Justice Dalveer Bhandari of this court (as his Lordship then was),

in ex parte order dated 14th June, 2002 in IA No.5628/2002 in CS(OS)

1072/2002 held to be applicable and justified by Indian Courts as

well. Thus Ashok Kumars were impleaded as defendants No 7 to 23.

2. Vide ex parte order dated 19th February, 2004, the

defendants were restrained from manufacturing, selling, stocking or

dealing in cigarettes under a label, carton or packaging material

deceptively similar to the label, carton and packaging material and

artistic work as of the STATE EXPRESS 555 of the plaintiff. The

defendant No.1 had initially appeared through counsel and also filed

a counter affidavit in this court. However, the said counsel

subsequently after duly notifying the defendant No.1 and upon the

failure of the defendant No.1 to instruct, sought discharge and the

defendant No.1 was on 13th December, 2005 proceeded against ex

parte. The defendants No 2 and 3 also failed to appear in spite of

service and were vide order dated 12th July, 2006 ordered to be

proceeded against ex parte. The defendant No.5 died during the

pendency of the suit and his legal heirs were ordered to be

substituted vide order dated 21st August, 2006. The defendants 4

and 6 and the legal heirs of defendant No.5 compromised the matter

with the plaintiff and decrees in terms of the said compromise were

passed against them. Thus the suit survives against the three

Calcutta defendants only.

3. Vide ex parte order dated 19th February, 2004 (supra) this

court had also appointed two court commissioners, one for visiting

the premises of the defendants 4 to 6 in Delhi and the other for

visiting the premises of the defendants 1 to 3 at Calcutta as well as

any other premises (probably on the basis of "John Doe" order

(supra)) where the impugned goods were suspected to be stocked.

The Court Commissioners appointed to visit the premises of the

defendants 1 to 3 against whom only the suit survives, at Calcutta,

not only found the infringing goods in the premises of the defendants

1 to 3 but also in some other neighbourehood premises and the

Court Commissioner as directed took possession of all the infringing

goods and delivered the same to counsel for the plaintiff.

4. That even though the Court Commissioner had found

infringing goods in the premises of the defendant No.1 as well but

the defendant No.1 though since ex parte, in his counter affidavit

filed earlier did not deal at all with the visit by or the report of the

Court Commissioner. He merely denied dealing in the infringing

goods; no objections were filed to the report of the Court

Commissioner which the plaintiff, in its ex parte evidence, has

tendered into evidence. Col J.K. Sharma constituted attorney of the

plaintiff has in his affidavit by way of examination in chief by way of

ex parte evidence proved the trademark registrations of the plaintiff

and the device i.e., WORD MARK 555 of the WORD 555 of the device

of a sunburst medallion with 555 engrossed therein as exhibit

PW1/22, PW1/23 and PW1/24 respectively and the request to the

Registrar, Trademark has been proved as exhibit PW1/25 to PW1/28.

From the same it is proved that the plaintiff is the registered

proprietor of the aforesaid word/device all, inter alia, in relation to

cigarettes. The said witness has also proved the original cigarette

packet/carton under the mark STATE EXPRESS 555 of the plaintiff

as Exhibit PW1/29 and the original packet/carton impugned in the

present suit as Exhibit PW1/30.

5. A mere perusal of Exhibit PW1/29 and PW1/30 shows that the

cigarettes being marketed/stocked by the defendants have copied

the trade dress of the same goods of the plaintiff. The plaintiff's

packet is recognizable as cream coloured whereon the numerals 555

are written in golden upon a navy blue background. These are

engrossed in a circle outlined by a golden ghost line all around its

periphery. The circle device appears to be emanating sunrays in

golden colour in bright contrast to the dark centre. The said

sunburst device and colour of the packaging are in distinctive

features of the plaintiff's trade dress and packaging and by which

the plaintiff's trademark / name is known and a customer/buyer of

the plaintiff's product identifies the same by the aforesaid trade

dress. The packaging of the defendants is in the same colour as of

the plaintiff and bears the same purple circle with a golden outline

and golden sun rays around it as on the plaintiff's packaging. Even

though the packet of the plaintiff does not bear the numerals 555

and the mark/name STATE EXPRESS but an unwary customer is

likely to mistake the packaging aforesaid of the same goods being

marketed by the defendants as that of the plaintiff.

6. Sale of cigarettes in India is unique / different from the

Western countries. In Western Countries sale of loose cigarette is

not the norm. On the contrary, in India sale of loose cigarettes is a

norm and the buyers of a full packet of cigarettes are comparatively

few. Any action for infringement of trademark in relation to

cigarettes in this country has to be viewed/tested in this light. The

vendors of loose cigarettes would pick up a cigarette packet from

unlit or hardly visible shelf or drawer in their dingy and small

shops/cells and extract one or two cigarettes therefrom and hand

over to the customers. Such customers do not thus normally get to

see the packet or the whole of it and may get to see only the colour

or the trade dress of it and by it they identify the same. The

individual cigarettes themselves do not have the trade name or the

manufacturer's name boldly written and hardly does a buyer of loose

cigarettes takes care to see the same. In such circumstances, the

colour of the packaging and the trade dress assumes special

significance. The packaging of the cigarettes being marketed by the

defendants may not fool or deceive a buyer of a packet but has all

potential of deceiving or confusing buyer of loose cigarettes and who

as aforesaid constitute a large section of the buyers of the said

product. Viewed in the aforesaid light, the packaging impugned is

clearly an attempt to pass off or sell the goods other than those of

the plaintiff as of the plaintiff.

7. The defendants No. 1, 2 and 3 are however, merely the

stockist or vendors of the said cigarettes and not manufacturers

thereof. It is the case of the plaintiff that the said cigarettes are

manufactured in Myanmar and are smuggled into India through the

border and in violation of other laws. It is for this reason that the

plaintiff is able to only prohibit their sale in India by the

vendors/stockiest such as the defendants but not in a position to act

against the manufacturers.

8. The defendants being the small vendors as aforesaid and

having not contested the suit, the counsel for the plaintiff has fairly

stated that he is pressing for only nominal damages against them.

The infringing goods found by the Court Commissioner at the

premises of the defendants 1, 2 and 3 as well as some other

neighbouring premises have already been seized and delivered to the

counsel for the plaintiff. The said goods are ordered to be destroyed

by the plaintiff. The plaintiff is awarded punitive damages in the

sum of Rs 25,000/- against each of the defendants No.1 to 3.

9. Though in the plaint reliance was also placed on "John Doe"

order as aforesaid and in pursuance whereto the premises of others

besides the defendants 1, 2 and 3 were also raided and infringed

goods found there from also seized, the plaintiff having not brought

any other person against whom the order may be extended, till the

disposal of the suit, the suit is decreed against the defendants 1, 2

and 3 only for the relief of permanent injunction in terms of para 24

(i) (ii) and (iii) of the plaint and a decree for recovery of damages in

the sum of Rs 25,000/- from each of the defendants 1 to 3 is also

passed in favour of the plaintiff. The plaintiff shall also be entitled to

proportionate costs of the suit from the defendants 1 to 3.

The decree sheet be drawn up.

RAJIV SAHAI ENDLAW (JUDGE) January 09, 2008 M