Star Bazaar Pvt. Ltd. vs Trent Ltd.
2009 Latest Caselaw 4253 Del

               * IN THE HIGH COURT OF DELHI AT NEW DELHI

                                                             Date of Reserve:8th October, 2009
                                                              Date of Order: October 22, 2009

IA No. 13278/2008 (u/O 39 R 1&2) & IA No. 3465/2009 (u/O 39 R 4)
in CS(OS) No. 2296/2008
%                                                                22.10.2009


        Star Bazaar Pvt. Ltd.                          ... Plaintiff
                         Through: Mr. Sudhir Chandra, Sr. Advocate with
                         Mr. Sunil Magon, Mr. C.S.Patney &
                         Mr. Bhagabati Prasad, Advocates

                 Versus


        Trent Ltd.                                           ... Defendant
                              Through: Mr. Dushyant Dave, Sr. Advocate with
                              Mr. Neeraj Kishan Kaul, Sr. Advocate with
                              Mr. Sanjeev K. Kapoor, Mr. Vikram Bajaj &
                              Mr. Kumar Mihir, Advocates

JUSTICE SHIV NARAYAN DHINGRA

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

2. To be referred to the reporter or not?

3. Whether judgment should be reported in Digest?

ORDER

Plaintiff is a company having its corporate name as "Star Bazaar Pvt.

Ltd." an is also carrying on business of retail in the name and style of "Star Bazaar"

in a departmental store at South Delhi area (and at no other place in the country).

The plaintiff was incorporated as a company on 12th March, 2003. It is pleaded by

the plaintiff that it has been running the departmental store from the date of its

incorporation. The plaintiff has laid a claim in the suit of acquiring goodwill on

account of efficient sales, marketing policy and competitive rates of goods and has

given its sales figures for the financial year from 1st April 2004 onwards till 31st

March, 2008 (four financial years). The plaintiff's contention is that in August, 2008

Mr. Naveen Malhotra Director of the plaintiff company was on a business trip to

Mumbai when he came across an advertisement in the Daily English Edition of

Bombay Times, The Times of India that the defendant was having a retail store in

Andheri (West), where it was running the business under the name and style of "Star

Bazaar" and defendant was in the same line and trade as the plaintiff. Plaintiff also

learnt through a press release dated 21st August 2008 of defendant that the

defendant intended to open its retail outlet in Delhi also using the trade style of "Star

Bazaar". The Plaintiff submits stand that it was not aware of the defendant's "Star

Bazaar" prior to August, 2008 and later search revealed that defendant had been

using the name "Star Bazaar" for its different stores in that part of the country. The

Defendant had one such store in Ahmedabad also. The Plaintiff also learnt that the

defendant had got trademark "Star India Bazaar" registered in Class 42 and claimed

that "Star India Bazaar" was being used by the defendant since 26.12.2003.

2. The Plaintiff pleaded that "Star Bazaar" was an invented and coined

word of the plaintiff and it could not have been used by anyonelse. The defendant

adopted the mark "Star Bazaar" just to pass off its goods as those of the plaintiff.

The defendant with fraudulent intention copied the mark of the plaintiff being used in

Delhi and used it mala fidely for its own business. It is stated that this was likely to

cause confusion and deceive the consumers into believing that the Star Bazaars or

Star India Bazaars of defendant were affiliated, connected or associated with the

plaintiff. This was likely to cause a dent in the sales, goodwill and reputation of the

plaintiff as the consumers were likely to be deceived in believing that "Star Bazaar"

or "Star India Bazaar" departmental stores opened or likely to be opened by the

defendant at various places as that of the plaintiff's.

3. The plaintiff claims that it advertised trading name "Star Bazaar" in the

region of Delhi, Gurgaon and NOIDA etc. The defendant was a very big

monopolistic house known as TATA Limited and the plaintiff company has been

buying various goods being sold by the defendant off the shelf and on counter from

its retail showrooms, therefore the defendant was supposed to have constructive

knowledge of the trademark of the plaintiff. The defendant has dishonestly adopted

and used the trademark "Star Bazaar" for past many years. The confusion and

deception being caused by defendant was bound to result into loss to the plaintiff

and purchasing public was bound to believe that goods being sold by "Star Bazaar"

or "Star India Bazaar" of the defendant were originating from the house of the

plaintiff as the trade channel of both the parties was same. Thus, the defendant

intended to encash the goodwill of the plaintiff.

4. The Plaintiff has brought this suit for claiming damages on ground of

passing off and prayed for restraining defendant from using trade mark "Star Bazaar"

or "Star India Bazaar".

5. In response to this, the defendant has submitted that passing off suit

brought by the plaintiff was not maintainable as the plaintiff had failed to establish

the basic requirements of passing off suit; one that a goodwill or reputation was

attached to the goods and services which plaintiff supplies, in the mind of the

purchasing public, by associating them with the identifying get up (namely "Star

Bazaar") in such a manner that the said get up was recognized by the public as

distinctive. Secondly, the plaintiff had failed to demonstrate that any

misrepresentation by the defendant to the public leading or likely to lead the public to

believe that the goods or services offered by the defendant were that of the plaintiff

thus, the defendant could not be accused of misrepresentation so as to pass off its

goods and services for that of plaintiff more so when the defendant had been in

business since 2004-05 in various parts of the country including Ahmedabad,

Mumbai (Dahisar, Andheri), Bangalore and the trademark was registered in the

name of the defendant way back in 2003 and defendant was trading with its own get

up and had not passed off its goods and services as that of the plaintiff at any point

of time. Thirdly, the plaintiff could not establish any damage or likelihood thereof

because of alleged misrepresentation. It is stated that the defendant had been in

business of supplying goods and services under the get up "Star Bazaar" for almost

a year prior to filing of the suit. Prior to that the defendant was trading under the get

up "Star India Bazaar" and these facts have been concealed by the plaintiff.

6. The defendant had given a chart of its advertisements costs and total

sales for the financial year starting from 2004 to 2008 (four financial years). The

defendant has also given the total floor area of its four existing stores and has also

given details of its walk-in stores. The defendant submitted that defendant's

advertisements appeared openly and widely in newspapers/magazines and the

newspapers carried out news reports regarding opening of the stores by the

defendant in the various parts of the country. The defendant has been selling and

offering its goods and services under the trade name "Star India Bazaar" between

2004 and 2007 and from September, 2007 under the get up "Star Bazaar" to millions

of consumers spread across the country in the cities of Mumbai, Bangalore and

Ahmedabad. Thus, the defendant enjoyed good reputation and goodwill in the get

up "Star Bazaar" and "Star India Bazaar". The defendant was a TATA enterprise

and the goodwill acquired by it, was based on high quality of goods and services

associated with the TATA group. The plaintiff cannot claim any exclusivity in respect

of the name of "Star Bazaar" anywhere in India. The defendant also submitted that

the plaintiff had remained inactive almost for five years when the defendant was

doing business under the name of "Star India Bazaar"/"Star Bazaar" and it is only in

November, 2008 that the plaintiff filed the instant suit and thus the plaintiff has to be

stopped from raising any objection against the defendant's use of word "Star Bazaar"

or "Star India Bazaar".

7. On merits, it was stated that the allegation made by the plaintiff about

the defendant's adopting "Star Bazaar" as a trade name in order to take benefit of

the goodwill of the plaintiff were false to the knowledge of the plaintiff. It is also

denied that the plaintiff was carrying on business since 12th March, 2003 or the

plaintiff was proprietor of trademark "Star Bazaar" or that the word "Star Bazaar" was

a coined word. It is stated that it was defendant who had coined the trade name

"Star Bazaar" and "Star India Bazaar" for its hyper market stores and also made

applications to the trademark registration authorities for registration of the

trademarks. The defendant had created a niche in the market and had built an

impeccable and immense reputation throughout the country by using its trade name

"Star Bazaar"/" Star India Bazaar". The customers visited the stores of defendant

because of the reputation of defendant for quality products. It is also stated that the

defendant invested huge amount of money in promoting market for its "Star

Bazaar"/" Star India Bazaar" since 2003 and also advertised its mark in leading

newspaper/journals all over the country as well as in electronic media. It is denied

that the "Star Bazaar" being run by the plaintiff in Delhi was having any great

goodwill or reputation among the consumer public. The defendant furnished all

information and documents as demanded by the Registrar of Trademark regarding

registration of the trademark "Star India Bazaar" and the said trademark was

registered in the name of the defendant after due notice to all concerned through the

trademark journal. The plaintiff having failed to raise objection against the

registration of trademark cannot now make allegations against the defendant

regarding misuse of the trademark more so when the trademark of the defendant

was registered in December, 2003 itself. The defendant has prayed for rejection of

the suit.

8. At the time of considering grant of interim relief, the Court has to

consider whether prima facie plaintiff has been able to establish the facts as alleged

by the plaintiff regarding its stake on the mark "Star Bazaar" and secondly, whether

the defendant was deliberately trying to pass off its goods as those of the plaintiff.

9. Passing off is not defined in the Trademark Act. It is referred to in sub

section 27(2), 134(1)(c) and section 135 of the Trademark Act. The general principle

of law of passing off is that no man is entitled to represent his goods or business as

being the goods or business of another, whether such representation is made by the

use of any mark, name, sign or symbol, device or other means. It is therefore, an

actionable wrong for any person to pass off its goods or business as the goods or

business of another by whatever means that result may be achieved. Though the

basic principle for an action of passing off is that "A man is not to sell his own goods

under the pretence that they are the goods of another man" however, it is a

prerequisite of any successful passing off action that the plaintiff's goods have

acquired a reputation in the market and are known by some distinctive features. It is

also important prerequisite that the misrepresentation made by defendant to the

customers has deceived or is likely to deceive and that the plaintiff is likely to suffer

damage by such deception. In a passing off action, the task for the Court, even at

interim injunction stage, is to consider whether it is established prima facie that a

substantial number of potential customers for the claimant's goods or services have

been misled or likely to be misled into purchasing the defendant's goods or services

in the belief that they are of the claimant's. Thus, the deception for the action of

passing off has to be of the nature that the goods/services are in effect telling a

falsehood about themselves and are saying something about themselves which is

calculated to mislead. The law on this matter is designed to protect traders against

that form of unfair competition which consists in acquiring for onself, by means of

false or misleading devices, the benefit of the reputation already achieved by rival

traders.

10. It is to be seen if the plaintiff has been able to establish prima facie

that the defendant was encashing on the reputation of the plaintiff and was passing

off its own goods as that of the plaintiff. It is not disputed that the plaintiff was having

only one store in the country i.e. in Delhi. It is also not disputed that the defendant

and plaintiff almost simultaneously started stores in two different regions of the

country. While the plaintiff started a store in Delhi, the defendant started stores in

Mumbai, Ahmedabad and Bangalore. Both, the plaintiff and the defendant had filed

their figures of sales of the years 2004-2008. The plaintiff had not filed figures of

sales for the financial year 2003-04 which simply shows that the plaintiff had not

established its business prior to financial year 2004-05. The plaintiff company was

registered in 2003 and it seems it started business in 2004. Similarly, it seems to be

that defendant who adopted trademark "Star India Bazaar" in 2003 started its

business in 2004. From the material which is placed on record by the defendant this

is apparent that defendant had spent heavily on advertisements of its trademark

while there is not much of spending by the plaintiff on advertisement and making its

trade name popular. The defendant had been spending on advertisements right

from the very beginning when it adopted the trademark "Star India Bazaar". It

cannot be presumed that the defendant had spent huge amounts for creating a

market for the plaintiff in Mumbai, Ahmedabad & Bangalore. It is obvious that the

defendant was unaware of plaintiff having opened a Bazaar in the name of "Star

Bazaar" in Delhi in 2004 and the defendant in fact was popularizing its own

trademark "Star India Bazaar" in Mumbai and surrounding region in 2004 unaware of

the plaintiff's "Star Bazaar". Similar seems to be the case of the plaintiff. Though

the defendant had obtained registration for its trademark in the name of "Star India

Bazaar" and the trademark of defendant could only be registered after it was

advertised in trademark journal inviting objections, but it seems that the plaintiff had

no knowledge of it nor it had intention to get its own trade name "Star Bazaar"

registered as a trademark. It did not take notice of defendant's trademark and

started business in the name of "Star Bazaar" only in Delhi. It is therefore, a case of

concurrent use of one trade mark by two parties in two different parts of the country,

unaware of each other.

11. Prima facie, it is not a case where defendant wanted to encash the

reputation of the plaintiff. Prima facie in 2004 when the plaintiff adopted the name

"Star Bazaar", the plaintiff must not have created a goodwill just by opening the store

as goodwill is created over a period after winning the confidence of customers

whereas the defendant was associated with a large group and was carrying with it

the reputation and goodwill of that large group i.e. TATA group and was in a position

to encash on the goodwill of that group from the day one. Therefore, it does not

seem to be a case where defendant would have thought of encashing the goodwill of

the plaintiff's mark "Star Bazaar" which was not even known to the defendant. The

defendant who had been doing business in the name of "Star India Bazaar" later on

also started its stores in the name of "Star Bazaar" in 2007. There is no evidence

that shift of defendant from "Star India Bazaar" to "Star Bazaar" was because of

goodwill being enjoyed by the plaintiff in Mumbai, Ahmedabad or Bangalore. In fact

the name of the plaintiff may not be even known in other regions of the country since

plaintiff had only one outlet in South Delhi. The plaintiff does not have a chain of

store even in Delhi or around Delhi what to talk of other parts of the country.

Therefore, there is no presumption in favour of the plaintiff and against the defendant

that the defendant had wanted to encash the goodwill of plaintiff. Rather, the

defendant's spending on advertisements would show that the defendant had been

trying to build up a goodwill and reputation for itself through its trade mark "Star India

Bazaar" and "Star Bazaar" in the country.

12. I, therefore consider that prima facie it is not a case where the

defendant can be even prima facie accused of passing off its goods as that of

plaintiff and an injunction can be granted against the defendant on the basis of

passing off. I, therefore, find no force in the application (13278/2008) under Order

39 Rule 1 & 2 CPC, the application is hereby dismissed. Application (IA No.

3465/2009) under Order 39 Rule 4 CPC for vacation of the interim injunction order

dated 3.11.2008 is allowed.

Both the applications stand disposed of.

CS(OS) No. 2296/2008

List on 22nd December, 2009 for framing of issues.

October 22, 2009                                             SHIV NARAYAN DHINGRA, J.
vn