Delhi High Court
Superbrands Ltd. & Ors. vs Superbrand Home Care Products ... on 25 September, 2009
Author: S. Muralidhar
IN THE HIGH COURT OF DELHI AT NEW DELHI
IA Nos.13495 of 2008 & 11129 of 2009 in
CS (OS) 2321/2008
Reserved on : 23rd September 2009
Decision on: 25th September, 2009
SUPERBRANDS LTD & ORS ..... Plaintiffs
Through: Mr. Rajendra Kumar and
Ms. Navpreet and
Mr. K.D.Benjamin, Advocates.
versus
SUPERBRAND HOME CARE PRODUCTS PVT.
LTD. & ORS. ..... Defendants
Through: Mr. Manav Kumar and
Mr. Sushant Singh, Advocates.
CORAM:
HON'BLE DR. JUSTICE S. MURALIDHAR
1. Whether Reporters of local papers may be
allowed to see the judgment? No
2. To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported in Digest? Yes
JUDGMENT
S. Muralidhar, J.
IA Nos.13495 of 2008 & 11129 of 2009 in CS(OS) 2321 of 2008
1. These are two applications filed by the Plaintiff under Order XXXIX
Rules 1 and 2 CPC. Although the Defendants have not filed a reply to IA
No.13495/2008, counsel for the Defendants states that the written statement
filed on 27th April 2009 may be treated as a reply to this application as well.
The Defendants have, however, filed a reply to IA No. 11122 of 2009 on
22nd September 2009.
2. Plaintiff No.1 Superbrands Ltd. is a company incorporated in Great
Britain having its registered office in London in the United Kingdom (UK).
Plaintiff No.2 Superbrands India Pvt. Ltd. is a company incorporated under
the Companies Act, 1956 having its registered office at New Delhi. The
Plaintiff No.3 Anmol Dar was appointed exclusive agent by Plaintiff No.1
by an agency agreement dated 9th August 2002 for operating the
SUPERBRANDS concept of Plaintiff No.1 in India and promoting and
selling the SUPERBRANDS publications and books specifically in the
territory of India. It is stated that the subsequent to his appointment Plaintiff
No.3 was authorized by Plaintiff No.1 to incorporate Plaintiff No.2
Superbrands India Pvt. Ltd. as an Indian company for the purposes of
performing the agency agreement.
3. It is stated that the genesis of the Plaintiff No.1 was a radio show launched
in London with the aim of providing ordinary consumers an insight into the
prominent and significant brands they consumed on a daily basis. It is stated
that encouraged by the huge success of the said programme, which was
brainchild of Mr. Marcel Knobil, it was repackaged by him and the Plaintiff
No.1 was created in 1993 as an entity that focussed on promoting the
discipline of branding, identifying and paying tribute to exceptional brands.
The inaugural book of the Plaintiff No.1 launched for the year 1994 featured
famous brands in the area of goods and services. It is stated that since then
the programmes run under the SUPERBRANDS name and logo are
recognized as a benchmark for brand success. Different juries comprising of
professionals from the fields of advertising, marketing, public relations,
research and media are put together for different geographical regions. The
judges are expected to assess the various brands, for qualifying them as
SUPERBRANDS. The criteria is that these brands have established the
finest reputation in the respective fields and offer to their customers
significant emotional and/or tangible advantages over their competitors. It is
stated that SUPERBRANDS concept endeavours to enlighten the public and
the trade about the discipline of branding and to encourage appreciation of
the brand itself.
4. The Plaintiffs have in the plaint explained the selection process of
SUPERBRANDS whereby through the website of Plaintiff No.2
www.superbrandsindia.com visitors choose the categories they are interested
in and score the brands listed thereunder. The research agency appointed by
Plaintiff No.2 tabulates results wherein brands with an average score of 6 or
below get eliminated and the rest move to the next qualifying round.
Thereafter a Superbrand Council comprising of marketing and business
professionals score the surviving brands and those that achieve a score of six
and above in each category are considered to be the only brands that can
participate in the SUPERBRANDS concept.
5. The first book outside the UK was published by the Plaintiff No.1 in
Australia in 1996. It is stated to have expanded and extended its concept to
several countries around the world. The publications of Plaintiff No.1 in
each of the operating countries are stated to be a compendium of case studies
of the strongest brands of that country. It is stated that some of the world‟s
largest and most successful business and consumer names feature in the
publication of Plaintiff No.1 and those brands have been accorded the
SUPERBRANDS status.
6. In India the Plaintiff No.2 as an exclusive agent of Plaintiff No.1 has
operated the SUPERBRANDS programme and has published the
SUPERBRANDS publication in two genres namely BUSINESS
SUPERBRANDS (for the years 2004 and 2007) and CONSUMER
SUPERBRANDS for the years 2005 and 2008. Copies of these publications
have been placed on record. It is explained that owners of the selected
brands are invited by the Plaintiff No.1 in writing, informing them that their
brands have been adjudged SUPERBRANDS by the selection criteria
followed by the Plaintiffs. They are then invited to earn the right to advertise
and use the SUPERBRAND logo of the Plaintiffs upon or in relation to their
products, office stationery, uniform, labels etc. The Plaintiffs explain that
the SUPERBRANDS logo relates to the publication of the Plaintiffs as well
as the SUPERBRANDS concept and programme as a whole, whereas the
SUPERBRAND logo denotes a specific participating brand and is used as
such upon specific products that qualify as SUPERBRANDS. The right to
use the SUPERBRAND logo is granted on a fixed fee of Rs.6,20,000/- and
for the duration of the tenure of the SUPERBRANDS edition. It is stated
that as and when a participating brand accepts the invitation, the logo used
by it is the SUPERBRAND logo. It is stated that the Plaintiffs have
generated revenues to the tune of Rs.18 crores by such activities for the
period 2004 to 2008. Some of the most prominent names in the industry in
India have participated in the SUPERBRANDS Council.
7. Plaintiff No.1 has been granted registration for the word mark
„SUPERBRANDS‟ in Class 16 by the Trade Mark Registry. A certified
copy of the certificate of the Registration No. 1149037 dated 29th October
2002 issued on 28th December 2005 has been placed on record. It indicates
that the mark has been in use since 1st October 2002.
8. It is stated that the Plaintiffs distribute an average of 10,000 copies of
their SUPERBRANDS publications free of cost among the top business
managers and leaders as well as researchers, journalists, academicians and
libraries. It is stated that some of the most prominent products and services
display the SUPERBRAND label and logo. It is stated that
SUPERBRANDS mark and logo developed by Plaintiff No. 1 to promote its
SUPERBRANDS concept, programme and publications are well known
marks and are associated with the Plaintiff No.1 in the relevant trade, among
the public and others worldwide including India. In para 21 of the plaint the
Plaintiffs have set out the figures of the revenue generated by the Plaintiffs‟
activities and their Indian SUPERBRANDS publications
9. It is stated that in November 2007 the Plaintiff No.2 came across a phenyl
product in Jaipur bearing the impugned mark. The label indicated that it was
marketed by Defendant No. 4 Priyanjan Overseas Inc. and manufactured by
an entity, IN Chemical Industries. It is further stated that the mark used by
Defendant No.4 on the product was a blatant imitation of the Plaintiffs‟
world renowned SUPERBRANDS logo and mark. The Plaintiffs through
their attorneys served Defendant No.4 with a legal notice on November 16,
2007 drawing its attention to the Plaintiffs exclusive proprietary rights and
goodwill in the SUPERBRANDS mark and logo and asking them to
forthwith cease and desist from using the impugned mark. The attorneys of
the Defendant No.4 replied on 30th November 2007 denying the averments.
It is stated that the Plaintiff No.2 further came across a range of other
products in the market such as toilet cleaner, naphthalene balls, glass
cleaner, dish washers etc. bearing the impugned SUPERBRAND logo and
displaying the names of different entities on each product. It also came to the
notice of the Plaintiff No.2 that Spencer‟s Retail Ltd. (Defendant No.7) was
stocking and selling the impugned products.
10. On making further investigations, the Plaintiffs came to know that
Defendant No.1 Superbrand Home Care Products Pvt. Ltd had been
incorporated in April 2008 at Jaipur. A declaration by way of an affidavit
had been made by Defendant No.2 Mahesh Sharma, the Director of
Defendant No.1, to the Registrar of Companies (ROC) at the time of the
registration to the following effect:
"SUPERBRAND is not a trade mark or branded
name in Home care Products at present. If further
find that name is trade mark or branded name we
will be (sic) change of (sic) our company name."
11. The Defendant No.2 had also furnished to the ROC a declaration from its
Trade Mark lawyers stating that the trade mark SUPERBRAND has been
allotted to one M N Marketing of which Defendant No.2 was the proprietor.
The search of the records of the Trade Mark Registry showed that the
Defendant No.2 had applied for registration of the trade mark
SUPERBRAND (Label) under Application No. 1623069 in Class 03 dated
21st November 2007. It appeared that the defendants were using various
domain names, www.superbrandproduct.com,
www.superbrandproducts.com and www.superbrandindia.in. A WHOIS
search of domain names showed that the aforementioned domain names had
been registered in the name of the Defendant No.2 as of December 2007. It
is pointed out that the labels on the products marketed by the Defendants
carry the impugned SUPERBRAND (Logo) in two oval shaped rings with
the letters „TM‟ in small font on the right hand top corner of the logo and a
declaration to the effect that "SUPERBRAND is a registered trade mark of
Priyanjan Overseas copy of it is a punishable offence". The search of the
Trade Marks Registry in Mumbai shows that no registration had been
granted in favour of the Defendant No.4 M/s. Priyanjan Overseas for the
said mark.
12. According to the Plaintiffs the adoption by the Defendants of the mark
„SUPERBRAND‟ is identical to the Plaintiffs‟ well known
SUPERBRANDS mark and logo and an identical get-up, lay out and colour
scheme was dishonest and motivated by a mala fide intention to usurp, trade
upon the reputation and goodwill enjoyed by the Plaintiffs in their world
famous SUPERBRANDS mark and logo. The Plaintiffs complain of
infringement of their registered trade mark in violation of Section 29 (4) of
the Trade Marks Act 1999 („TM Act‟). It is submitted that the declaration by
Defendant No.4 that the mark SUPERBRAND used by it is a registered
trade mark is a knowingly false declaration which is a criminal offence
under Section 107 of the TM Act. The use by Defendant No.1 of the
impugned SUPERBRAND name as part of its corporate name constitutes
infringement of the registered trade mark SUPERBRANDS under Section
29 (5) of the TM Act. In terms of Section 20 of the Companies Act 1956 the
Defendant No.1 could not have been incorporated with the trade mark of the
Plaintiffs being part of its composite corporate name.
13. The Plaintiffs also complain of the infringement of their copyright in the
artistic style and writing of the marks SUPERBRAND and
SUPERBRANDS. The style and manner of writing of the mark
SUPERBRAND on the labels of the Defendants‟ products is identical to the
Plaintiffs; the Defendants‟ Superbrands logo (with the words Forever in
smaller font in the bottom corner of the logo) is identical in font type and is
placed in two oval shaped concentric rings in a manner that is almost
identical to the Plaintiffs depiction of the SUPERBRAND logo on the
products and services that qualify as SUPERBRANDS. Plaintiff No.1 claims
to be the owner of the copyright in the said artistic logo and enjoys exclusive
rights to reproduce and communicate the same in any form whatsoever
including the right to license the use of the same by others. It is stated that
such reproduction and use by the Defendants 1 to 5 without authority or
permission of Plaintiff No.1 constitutes a blatant infringement of the
copyright of Plaintiff No.1 in the said artistic logo.
14. On the basis of the above averments the suit was filed praying for relief
of permanent injunction to restrain the Defendants from infringing the
registered trade mark SUPERBRANDS, by using an identical trademark
SUPERBRAND or any other confusingly, deceptively similar trade mark in
any of the variants of the Plaintiffs trademark SUPERBRANDS as a service
mark, trade name, trading style, advertisement slogan or in any other manner
in relation to their goods or services. Injunction was sought to restrain the
Defendants from using domain names mentioned hereinbefore which were
identical and phonetically, structurally, deceptively similar to the registered
trademark SUPERBRANDS and domain names of the Plaintiffs. Permanent
injunction was sought against the Defendant No.1 directing it to apply to the
Registrar of Companies for deletion of the expression SUPERBRAND from
its corporate name and substitute the same with some other word. The other
prayers were for destruction of the infringing goods, rendition of accounts
and damages in the sum of Rs.50 lakhs or such larger amount as may be
determined. Along with the suit the Plaintiffs filed an application IA No.
13945 of 2008 under Order XXXIX Rules 1 & 2 CPC seeking an ad interim
injunction.
15. On 7th November 2008 while directing the summons/notice to issue the
following order was passed by this Court:-
"CS(OS) No.2321/08 and I.A.No.13495/08
Let the plaint be registered as suit.
Issue summons/notice to the defendants on the plaintiff taking
steps within five days by all modes prescribed under Order V
Rule 9 of the Code of Civil Procedure, 1908, for 21st
January,2009 .
Counsel for the plaintiff has drawn my attention to the
averments made in the plaint and the fact that petitioner's trade
mark SUPERBRANDS is registered in India in class 16 and
the said registration was granted on 29th October, 2002. It is
also submitted that the defendants have violated the copyright
of the plaintiff and have used the same getup and features.
Counsel for the plaintiff has also drawn my attention to the
correspondence exchanged between the parties and it is
submitted that the defendant No.1 in spite of knowing full facts
has gone ahead and thereby infringed the trade mark of the
plaintiff. Counsel for the plaintiff has also drawn my attention
to the photographs of the products of the defendant and the
products which are being marketed with the
mark SUPERBRANDS.
In view of the facts and circumstances, defendant Nos. 1 to 5
are hereby restrained from introducing and launching new
products under the brand name/mark/label
``SUPERBRANDS'` and ``SUPERBRAND forever'` till the
next date of hearing. Defendant Nos. 1 to 5 will also not
register any new domain name in which the brand
name/mark/label `SUPERBRANDS'` and ``SUPERBRAND
forever'` is mentioned.
It is clarified that defendant Nos. 1 to 5 can continue
marketing products already launched by them under the brand
name/mark/label ``SUPERBRANDS'` and ``SUPERBRAND
forever'` till the next date of hearing, when further orders will
be passed on the interim application. Defendant Nos. 6 and
7 will ensure that ex-parte interim order passed by this Court is
complied with. Compliance of Order XXXIX Rule 3 will be
made within five days."
16. The Defendants filed their joint written statement along with an
application for condonation of delay on 29th April 2009. The delay was
condoned on 25th May 2009. Thereafter two applications, viz., IA No. 11129
of 2009 under Order XXXIX Rules 1 & 2 CPC as well as IA No. 11128 of
2009 under Order XXVI Rule 9 CPC were filed by the Plaintiffs on 26 th
August 2009. Separately the Plaintiffs also filed CCP (O) No. 104 of 2009.
17. On 31st August 2009 the following order was passed in IA No. 11129 of
2009:-
"IA No. 11129 of 2009 (u/O XXXIX Rules 1 & 2 CPC)
1. Despite service of advance copy of the application on the
learned counsel for the Defendants, none appears despite one
pass over.
2. It is stated by Mr. Sanjay Jain, learned Senior counsel
appearing for the applicant/Plaintiff that notwithstanding the
order dated 7th November 2008 passed by this Court restraining
the Defendants from introducing and launching new products
under the brand name/mark/label „SUPERBRAND‟ and
„SUPERBRAND forever‟ till the next date of hearing, the
Defendants have launched certain new products as mentioned in
paragraphs 10.1 and 10.3 of the application. In addition, it is
pointed out by learned Senior counsel for the Plaintiff that the
label on the products being manufactured and marketed by the
Defendants depicts the trade mark „SUPERBRAND forever‟
with the addition of word TM on the top making it appear as if
it is a registered trade mark. In addition it is stated that the said
mark is that of Priyanjan Overseas, even though it is the
Plaintiff who is holding registration in respect of the trade mark
„SUPERBRAND‟. It is submitted that all applicants filed
hitherto by the Defendants for the said mark have either been
withdrawn or rejected. Samples of the products bearing such
mark have been shown to the Court. These samples be placed in
a container which will remain sealed and be kept in the Registry
of this Court with an appropriate identification, till further
orders.
3. This Court is satisfied that the Plaintiff has made out a prima
facie case for grant of an ad interim injunction restraining the
Defendants, jointly and severally, their principal officers,
partners, directors, affiliates, employees, servants, agents,
distributors, licensees, assignees, successors-in-interest,
stockists and all others acting for and on behalf of the said
Defendants, from using the impugned trademarks
`SUPERBRAND‟ and `SUPERBRAND forever‟ (words and
logo) or any other mark or logo confusingly or deceptively
similar to the applicants‟ SUPERBRAND mark upon or in
relation to any of the products mentioned in paras 10.1. and
10.3 of this application.
4. As regards the products mentioned in Para 10.2 of the
application, since it is shown to the court that in the labels used
on these products the Defendants are claiming to be the
registered owner of the trade mark, an ad interim order will
issue restraining forthwith the Defendants from continuing to
use the trade mark „SUPERBRAND‟ and „SUPERBRAND
forever‟ on the products listed in Para 10.2.
5. Issue notice to the Defendants, returnable on 15th September
2009, the date already fixed.
6. After the above order was passed, Mr. Manav Kumar,
learned counsel appeared and accepted notice on behalf of the
Defendants."
18. I.A. 11128 of 2009 was filed by the Plaintiffs seeking the appointment of
Local commissioners to visit the premises of the Defendants to seize the
infringing goods. As far as the CCP (O) No. 104 of 2009 is concerned it was
noted that according to the Plaintiffs despite the order dated 7th November
2008, the Defendants had launched certain new products using the impugned
trade mark and labels „SUPERBRAND‟ and „SUPERBRAND forever‟.
Notice was issued to the Defendant Nos. 2 and 3 i.e. Mr. Mahesh Sharma
and Mr. Niranjan Sharma respectively.
19. On 22nd September 2009 replies were filed by the Defendants to the IA
Nos. 11128 of 2009 and 11129 of 2009 as well as to the contempt petition.
These were heard on 23rd September 2009. The Defendants 2 and 3 were
present in Court and their statements on oath were recorded in the contempt
petition.
20. The submissions of Mr. Rajendra Kumar, learned counsel appearing for
the Plaintiffs and Mr. Manav Kumar, learned counsel for the Defendants
have been heard.
21. It is urged on behalf of learned counsel for the Plaintiffs that the
infringement by the Defendants is both of the registered trade mark as well
as the copyright of the Plaintiffs. The Plaintiffs hold registration of the mark
SUPERBRANDS in Class 16 effective 29th October 2002. The certificate of
registration issued by the Trade Marks Registry shows that the Plaintiff No.1
has used the trade mark in India since 1st October 2002. The Plaintiffs have
showed that they have been present in the international market since 1994.
The certificate of incorporation dated 25th May 1999 of Superbrands Limited
in U.K. and Superbrands India Pvt. Ltd. of 10th December 2002 have been
placed on record. The agency agreement between Plaintiff No.3 and Plaintiff
No.1 dated 9th August 2002 has also been placed on record. The publication
of the Plaintiffs using the trade mark SUPERBRANDS in UK and certain
other countries have been placed on record. Copies of the Indian
publications Superbrands and Superbrands Business have also been placed
on record. They show that several Indian products including cleaners,
dishwashers, detergents, soaps etc. have featured in the SUPERBRANDS
publication as having been accorded the Superbrands status. The Plaintiffs
state that retail outlets in the country (including Defendant No.7) display and
market products carrying the SUPERBRAND logo as a quality mark. At
pages 1478-1479 of the Plaintiffs‟ compilation of documents are colour
photographs of the packaging of some of the known products displaying
SUPERBRAND logo.
22. The Plaintiffs have also placed on record at pages 78 to 81 and 1552-
1558 of their compilation of documents photographs of the labels used on
the Defendants‟ products that display the logo „SUPERBRAND forever.‟
The marks and logos of the Plaintiffs and the Defendants are as under:
23. What is striking on a visual comparison is that words SUPERBRANDS
is written in an identical artistic style as that of the Plaintiffs mark
„SUPERBRANDS‟ and SUPERBRAND logo. The Defendants mark is also
placed amidst two concentric oval shaped circles. In the Defendants‟ mark,
the word mark SUPERBRAND written in the same style as the Plaintiffs‟
mark, is prominent and the word „forever‟ below it is comparatively of a
smaller size in a different font that is barely noticeable from a distance.
What is also evident is that significant is that the letters "TM" appear on the
right hand top corner of the Defendants‟ logo to make it appear as if the
Defendants have applied for registration of that trade mark.
24. In response to a query as how the Defendants could possibly display
„TM‟ as part of the logo used by them, it was submitted by learned counsel
for the Defendants that they had filed applications for registration of the
marks which were pending. A statement to this effect also finds place in para
3 of the written statement filed on 27th April 2009 supported by the affidavit
of Mr. Niranjan Sharma, Defendant No.3 of the same date. This, however,
appears not to be the correct position. The Plaintiffs have placed on record
(along with IA No. 11129 of 2009 at pages 78 to 91) the internet search
reports of the Trade Marks Registry generated on 22nd July 2009 which
show the current status as regards the applications made by the Defendants
for registration of the mark „SUPERBRAND forever.‟ Application No.
1391002 made on 13th October 2005 by Mrs. Priyamvada Mahesh Sharma
with the address at Rajasthan was shown as having been „withdrawn.‟
Application No. 1391003 dated 13th October 2005 for the mark
„SUPERBRAND forever‟ by the same Mrs. Priyanvada Mahesh Sharma is
also shown as having been „withdrawn‟. Application No. 1623068 for the
mark SUPERBRAND (LABEL) by Mr. Mahesh Sharma on 21st November
2007 was shown as „abandoned.‟ Application No. 1391004 in Class 5 for the
mark SUPERBRAND forever by Mrs. Priyamvada Mahesh Sharma made on
13th October 2005 was also shown as having been withdrawn. Application
No. 1623069 for the mark SUPERBRAND (LABEL) in Class 3 filed by
Mahesh Kumar on 21st November 2007 was also shown as having been
abandoned. In para No. 14 of I.A. No.11129 0f 2009 the Plaintiffs have
made an averment to the above effect and have submitted that the
representation of the Defendants mark with the letters „TM‟ amounts to a
false representation under Section 107 of the TM Act. The reply by the
Defendants to para 14 of IA No.11129 of 2009 is a point blank denial. In the
teeth of the document in the form of the internet search report, showing the
status of the Plaintiffs‟ applications, which have not been denied by the
Defendants, the stand of the Defendants is untenable. In the considered view
of this Court it appears by prima facie that by displaying the letters TM in
small font on the right hand corner of the logo SUPERBRAND Forever
prima facie constitutes a violation of Section 107 TM Act. It also prima
facie constitutes an infringement of the Plaintiffs‟ registered trade mark
SUPERBRANDS as well as the Plaintiffs‟ copyright in the artistic work in
the said logo.
25. In the contempt proceedings statements were recorded of Mr. Mahesh
Kumar, Defendant No.2 and Mr. Niranjan Sharma, Defendant No.3. Mr.
Mahesh Kumar produced a copy of the registration certificate in respect of
the copyright in relation to the logo „SUPERBRAND forever‟ applied for by
M/s. M.N. Marketing. The said application appears to have made on 7th
September 2008 and the certificate was issued on 26th February 2009.
Significantly the logo in respect of which the registration has been granted
displays the letters „TM‟ on the top right hand corner. Considering that this
is itself a prima facie violation of Section 107 TM Act the validity of a
copyright registration of the artistic work in such logo is doubtful. Mr.
Mahesh Sharma was aware of the order dated 7th November 2008 of this
Court. He stated that only one new product had been launched thereafter and
that too under the mark Big Brand. He stated that the three other products in
the pipeline would be marketed under the mark Big Fresh. He undertook not
to launch any new product using the mark Superbrand Forever. Mr. Mahesh
Sharma has stated on oath that Defendant No.1 was incorporated in 2008.
The Plaintiffs have placed on record the certificate of incorporation of the
Defendant dated 23rd April 2008. Mr.Mahesh Sharma has in his statement
confirmed that M/s.Priyanjan Overseas, M/s.MN Marketing, M/s.Mani
Industries are all either sister concerns or connected with the business
activities of Defendant No.1 as manufacturers dealers or stockists of its
products. A copy of the affidavit of Mr. Mahesh Sharma given to the ROC
on 19th March 2008 undertaking to change the name of Defendant No.1 if
there was a trademark or brand of the same name has also been placed on
record. There is no denial by him that he gave such an affidavit.
26. Defendant No.3 Mr. Niranjan Sharma in his statement in Court on 23rd
September 2009 stated that he is the sole proprietor of Defendant No. 4 M/s.
Priyanjan Overseas Inc. He stated that he was aware of the order dated 7 th
November 2008 passed by this Court. He confirmed all the statements made
by Mr. Mahesh Sharma. It will be recalled that a legal notice was sent by the
Plaintiffs lawyers on 16th November 2007 asking Defendant No.4 to cease
and desist from infringing the registered trade mark „SUPERBRANDS‟ was
replied to by its lawyers on 30th November 2007 bluntly denying such
infringement. Therefore, Mr. Niranjan Sharma was fully aware of the legal
consequences of infringing the Plaintiffs‟ registered trade mark
SUPERBRANDS.
27. The incorporation of Defendant No.1 by using the name
SUPERBRANDS in April 2008 after the receipt by Defendant No.4 in
November 2007 of the cease and desist notice, appears prima facie to this
Court to be a dishonest attempt on the part of the Defendants to adopt and
thereby infringe the registered trade mark of the Plaintiffs. The depiction of
the mark „SUPERBRAND Forever‟ on the products of the Defendants is a
virtual imitation of the artistic style and manner of writing of the Plaintiffs
mark and logo SUPERBRANDS and SUPERBRAND. Prima facie the
Defendants appear to have infringed the copyright of the Plaintiffs in the
artistic work in the said logo.
28. It is fairly stated by learned counsel for the Defendants that they have not
yet challenged the registration granted to the Plaintiffs of its word mark
„SUPERBRANDS‟. It was however sought to be contended that under
Section 124 (1) (b) TM Act it is still possible for the Defendants to adopt
that course in the event that this Court finds that their plea regarding
invalidity of the registration of the Plaintiffs is prima facie tenable. In
support of such plea learned counsel for the Defendants submitted that the
word mark SUPERBRANDS was merely descriptive and not distinctive. It
is submitted that the word „SUPERBRANDS‟ was just a combination of two
descriptive words and there was absolutely nothing distinctive about the
mark. Reliance is placed upon the judgments of this Court in Austin Nichols
& Co. v. Arvind Behl 2006 (32) PTC 133 (Del), M/s. Relaxo Rubber
Limited v. Aman Cable Industries 1998 PTC (18) 759, Lowenbrau AG v.
Jagpin Breweries Limited 2009 (39) PTC 627 (Del). Referring to Section
29 (4) of the TM Act it is submitted that the Plaintiffs have to show that their
registered trade mark has a reputation in India and that since the Plaintiffs
have been unable to establish that, they ought not be granted an injunction.
Referring to Section 30 (2) of the TM Act it is stated that the use of the logo
SUPERBRAND forever in relation to the Defendants‟ goods was only to
indicate the quality of the goods and did not amount to infringement.
29. This Court is unable to accept the above submission of learned counsel
for the Defendants. It may be recalled that the Defendants themselves
applied in October 2005 to the Trade Marks Registry for grant of registration
for the marks SUPERBRAND forever and SUPERBRAND (Label).
However, these applications were subsequently either withdrawn or
abandoned. Having themselves applied for grant of registration for the mark
SUPERBRAND, the Defendants cannot be heard to challenge the
distinctiveness of the Plaintiffs‟ registered mark SUPERBRANDS. They
have also adopted these word marks for their domain names as well. The
fact remains the trade mark registration in favour of the Plaintiffs for the
mark „SUPERBRANDS‟ subsists. It has not been objected to or sought to be
rectified by the Defendants. The rights of a proprietor of a registered mark
under Section 28 (1) TM Act have to be given effect to as long as the
registration subsists.
30. It is not as if a descriptive mark is not entitled to any protection
whatsoever. The mark could be shown as having gained a secondary
meaning identifying it with a particular product or being from a particular
source [See Godfrey Philips India Limited v. Girnar Food & Bewerages
(P) Limited 2005 (30) PTC 1 (SC)]. The mark SUPERFLAME was held to
be entitled to protection (See Globe Super Parts v. Blue Super Flame
Industries AIR 1986 DELHI 245). Although in McCarthy on
Trademarks it is stated that the use of the laudatory prefix „super‟ often will
be taken by the customers as merely a description of the user or strength of
the product, the Plaintiffs have been able to show prima facie that the
concept of SUPERBRANDS envisages the evaluation of the strength of the
brand by a select jury of qualified professionals. A qualifying of a brand as a
SUPERBRAND is indicative of its quality. When the product displays the
SUPERBRAND logo it indicates to the consumer that it is of high quality.
When such product is displayed in juxtaposition with the Defendants
products which display the infringing mark and logo, written and depicted in
the same style and manner as the Plaintiffs‟ mark SUPERBRANDS and logo
SUPERBRAND, it is likely to deceive the unwary customer into thinking
that the Defendants products either enjoy the same reputation and quality as
a SUPERBRAND so certified by the Plaintiffs or that such products emanate
from the Plaintiffs.
31. It appears to this Court, and this is the crux of the matter, that the
complete give away as far as the Defendants intentions is the identical
manner of depiction of the word SUPERBRAND on the labels of its
products; in claiming on the label that it is a registered mark and in using the
letters TM on the right hand corner of the logo. Notwithstanding their
characterization of the Plaintiffs‟ mark as a mere combination of descriptive
words, the Defendants attempt has been to blatantly imitate not only the
mark but also the manner and style of its depiction. The Defendants
persistence with the use of the mark not only on the products manufactured
and sold by it but to also use it as part of the corporate name of Defendant
No.1, and domain names on the internet, much after the cease and desist
notice served on Defendant No.4 is another indication of the dishonest
intention of the Defendants to adopt and infringe the registered trademark as
well as the copyright of the Plaintiffs.
32. The only ground on which the Defendants can resist an injunction is
under Section 34 of the TM Act in which case the Defendants would have to
show that they are prior users of the mark. Although the Defendants had
several opportunities, at the time of filing the written statement and at the
time of filing replies to the present applications, to produce documents to
show that they were prior users of the mark „SUPERBRAND forever‟, they
have failed to do so. On the other hand the Defendants have themselves
placed on record the details furnished by them at the time of filing the
applications for grant of the registration for their marks. In each of the
applications, Nos. 1391002, 1391003, 1391004 all filed on 13th October
2005, against the Column „period of use‟ Defendant No.4 stated "proposed
to be used". The Defendants have produced (at pages 132 to 141 of the
Defendants‟ compilation) copies of the bills cash/credit memos for sale of
products bearing the mark SUPERBRAND. The earliest of these bills is
dated 13th April 2004.
33. As far as the Plaintiffs are concerned they have been able to show
presence in the international arena since 1999 at least. As pointed out in
Milmet Oftho Industries v. Allergan Inc (2004) 12 SCC 624, the mere fact
that the Plaintiffs may not have using the mark in India during the time the
infringer began using the mark, "would be irrelevant if they were first in the
world market." The Defendants have not able to show that they were
marketing their products using the SUPERBRANDS mark or label or logo
earlier than 1999. In India the Plaintiffs‟ trade mark registration certificate
and the date of incorporation of Plaintiff No.2 show use of the word mark
SUPERBRANDS from October 2002. There are copies of the foreign
publications of SUPERBRANDS of 2003 and earlier. The Indian publication
of SUPERBRANDS is of 2004. For all of the above reasons, it is held that
the Plaintiffs have made out a prima facie case for grant of an interim
injunction as prayed for.
34. At this stage it must be mentioned that learned counsel for the
Defendants at the time of arguments sought to place on record further
documents to show that the Defendants were the prior user. This Court
declined the request since as it was not considered to be reasonable given
that the Defendants had several opportunities to place such documents which
must obviously have been in their possession even at the time of filing their
written statement.
35. The order dated 31st August 2009 passed by this Court noted that the
limited injunction granted on 7th November 2008 which permitted the
Defendants to continue marketing the products which were already in the
market by that date, did not stop the infringing activities of the Defendants.
They did launch one new product i.e. Agarbati using the mark and logo
SUPERBRAND Forever. Of course the Defendants 2 and 3 have now
undertaken before the court that they will not hereafter use the mark and
logo SUPERBRAND Forever on any new product. However, given the
conduct of the Defendants and the dishonest attempts by them even after
receiving the cease and desist notice to use the mark SUPERBRAND as part
of the corporate name of Defendant No.1, and as domain names on the
internet, and to continue marketing their products by blatantly imitating the
word and style of writing of the Plaintiffs‟ registered mark and logo and the
resultant deception and confusion it is likely to cause in the trade, this Court
is of the view that the balance of convenience in granting an interim
injunction as prayed for by the Plaintiffs is in favour of the Plaintiff. In other
words the Plaintiffs have made out a case for grant of an interim injunction
against the Defendants using the mark and logo SUPERBRAND Forever in
respect of all their products including the 48 products listed in para 8 of IA
No. 11129 of 2009 (which is identical to the list in para 2 of the preliminary
objections out in the written statement).
36. It is clarified that the present order is a prima facie opinion based on the
materials on record at this stage and is not intended to influence the final
order that may be passed by the court on an independent assessment of the
evidence that emerges during the trial.
37. For all the aforementioned reasons, the two applications IA No.13495 of
2008 and IA No. 11129 of 2009 are disposed of with the following
directions:
(i) An interim injunction will issue restraining the
Defendants, jointly and severally, their principal
officers, partners, directors, affiliates, employees,
servants, agents, distributors, licensees, assignees,
successors-in-interest, stockists and all others acting
for and on behalf of the said Defendants, from
infringing or causing infringement of the Plaintiff
No.1‟s registered trade mark SUPERBRANDS, by
using the identical trademark SUPERBRAND or any
other confusingly or deceptively similar trademark in
any variants of the Plaintiffs‟ trademark
SUPERBRANDS whether singularly or in conjunction
with any suffix, prefix or logo, including but not
limited to the expression "forever"
(ii) An interim injunction will issue restraining the
Defendants, jointly and severally, their principal
officers, partners, directors, affiliates, employees,
servants, agents, distributors, licensees, assignees,
successors-in-interest, stockists and all others acting
for and on behalf of the said Defendants, from using
the impugned trademarks SUPERBRAND and
SUPERBRANDS forever (words and logo) or any
other mark or logo confusingly/deceptively similar to
the Applicants SUPERBRANDS mark upon or in
relation to:
(a) any products manufactured or being manufactured
subsequent to the order dated November 7, 2008
of this Court and being marketed by the
Defendants or any of them;
(b) any new products introduced and launched
subsequent to the order dated November 7, 2008
including but not limited to Henna, Agarbatti,
Gulabari, Dishwasher orange, fragranced phenyle.
(iii) An interim injunction will issue restraining the Defendants,
both jointly and severally, their principal officers,
partners, directors, affiliates, employees, servants, agents,
distributors, licensees, assignees, successors-in-interest,
stockists and all others acting for and on behalf of the
said Defendants, or anyone associated with them from
infringing the Applicants registered trade mark
SUPERBRANDS and its registered domain name
www.superbrandsindia.com by using
www.superbrandproduct.com or any other combination
of words/letters that may be identical to or phonetically/
structurally/deceptively similar to the registered trade
mark SUPERBRANDS of the Applicants as domain
names/website addresses and further restrain the
Defendants jointly or severally from seeking registration
of any identical or confusingly/deceptively similar
expressions as domain names whether singularly or in
conjunction with any other word used as a prefix or
suffix.
(iv) an interim injunction will also issue restraining the
Defendants, their partners, affiliates, employees,
assignees, successors-in-interest, licensees, distributors,
stockists and agents or anyone associated with them from
infringing the Applicant No.1 and 2‟s copyright in the
artistic work comprised in the font and writing style of
projecting its work mark SUPERBRANDS, its colour
scheme, get up, lay out and over all configuration and
that vesting in its logo depicting an concentric rings
within an oval encasing/incorporating the word mark
SUPERBRANDS by reproduction/copying, or causing
reproduction/copying in an identical or confusingly/
deceptively similar manner whether by print or
otherwise.
(v) An interim mandatory injunction will issue directing the
Defendant No.1 or its successor-in-interest it to apply
within a period of three weeks from today to the
Registrar of Companies for deletion of the expression
SUPERBRAND from its corporate name and substitute
the same with such other word, which does not infringe
the Applicant No.1‟s registered trademark
SUPERBRANDS in any manner and which does not
include the above expression as a distinct word or in
conjunction with any other word used as a prefix or
suffix.
38. Consequent upon the above directions, the Defendants will immediately
write to each of their stockists, retailers and wholesellers informing them of
the order passed today asking them to forthwith stop marketing any of the
Defendants products using the mark, label or logo SUPERBRAND forever.
The Defendants will forthwith withdraw from the market all such products.
The Defendants will be permitted to market their products either by using
the marks "Big Fresh" or "Big Brand" as undertaken by Defendants 2 and 3
but not depicted or written in any manner deceptively similar to the
Plaintiffs‟ mark and logo SUPERBRANDS and SUPERBRAND.
39. The interim injunction in the above terms is made absolute during the
pendency of the suit. The applications are disposed of.
S. MURALIDHAR, J
SEPTEMBER 25, 2009
rk
