Societe Des Produits Nestle, S.A. ... vs M/S. Prayag Nutri Products ...
2011 Latest Caselaw 3974 Del

*              HIGH COURT OF DELHI : NEW DELHI

                                   Judgment pronounced on: 16.08.2011

+                    CS(OS) No.900/2008


SOCIETE DES PRODUITS NESTLE, S.A. & ANR.
                                      .......Plaintiffs
                Through: Ms. Mamta Rani with Mr. Sumit
                         Rajput, Adv.


                                   Versus


M/S. PRAYAG NUTRI PRODUCTS PRIVATE LTD. & ANR.
                                  .....Defendants
                Through: NEMO.

Coram:
HON'BLE MR. JUSTICE MANMOHAN SINGH

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

2. To be referred to Reporter or not?                      Yes

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

MANMOHAN SINGH, J.

1. The plaintiffs have filed the present suit for permanent

injunction restraining infringement of its registered trademark, copyright,

passing off, dilution, rendition of accounts of profits and delivery up etc.

2. Plaintiff No. 1 is a company existing under the laws of

Switzerland, having its registered office at 1800, Vevey Canton of Vaud,

Switzerland. The plaintiff No.2, Nestle India Limited, is a company

incorporated under the Companies Act, 1956, having its registered office

at M-5A, Connaught Circus, New Delhi.

3. It is averred in the plaint that the Nestle is a leading

manufacturer of chocolate and confectionery and one of its products is

marked as MUNCH which is used by the plaintiffs in relation to wafer

biscuit with chocolate layer. In India these products are manufactured by

plaintiff No.2. It is also stated that plaintiff No.1 is the proprietor of the

trademark MAGGI and plaintiff No.2 is its licensee. Apart from the

common law proprietary right, plaintiff No.1 also has right to the

exclusive use of the trademark MAGGI internationally as well as in

India. The detail of the registration of plaintiffs' trademark MAGGI in

India is given below:

     Mark     Regn No.      Dated         Class              Goods

 MAGGI        253467      06.12.1968      30        Seasonings for soups,
 (word)                                             sauces, gravies, meat
                                                    and vegetable products
                                                    for     food,    flours,
                                                    vermicelli,   spaghetti,
                                                    macaroni,       sauces,
                                                    spices and condiments
 MAGGI        578343      03.08.1992      30        Farinaceous products
 (word)                                             and cereals and related
                                                    products
 MAGGI        578342      03.08.1992      29        Meat and meat products
 (word)

4. It is averred in the plaint that in April, 2008 the plaintiffs

came to know that the defendants are selling substandard wafer biscuits

covered with choco layer in infringing packages under the trademark

MAGIC which is deceptively similar to and an imitation of the

trademark MAGGI and MUNCH packaging pertaining to the plaintiffs.

5. The case of the plaintiff is that the plaintiffs are also engaged

in the business of manufacturing and selling, amongst others, various

culinary products such as noodles, sauce, soups etc. under the trade mark

MAGGI in various international markets since 1974. These goods, in

India, are being manufactured and sold by the plaintiff No.2. The

plaintiff No.1 is the proprietor of the trade mark MAGGI having

exclusive right to use thereof and the plaintiff No.2 is its licensee,

authorized to use thereof in India.

6. It is stated in the plaint that on account of extensive amount of

sales promotion campaigns undertaken by the plaintiffs with regard to the

trademark MAGGI it has acquired formidable goodwill and reputation

amongst number of public and trade and has become household brand

name of the plaintiffs. The said trademark MAGGI is known

internationally.

7. The case against the defendant is that the defendant has

adopted and used the trademark MAGIC in the packaging which is

deceptively similar to the plaintiffs' registered trademark MAGGI and

NESTLE MUNCH packaging. The defendants are selling their choco

coated wafer under the trademark MAGIC and in packaging it is similar

to the plaintiffs packaging in terms of its colour combination, layout,

getup and arrangement of features.

8. The case of the plaintiffs is that the two trademarks MAGGI

and MAGIC are deceptively similar as the defendants are using the

trademark MAGIC in the similar fashion which is visually similar to the

font, colour, style of the trademark MUNCH. The plaintiff is claiming

the copyright in the packaging of MUNCH within the meaning of

Section 2(c) of the Copyright Act, 1957. It is stated that the design was

created by the author namely Mr. Prasanta Mukherjee in the course of his

employment with JWT, an advertising agency engaged by the plaintiffs

for consideration. Both the author as well as the advertising agency has

assigned the copyright in the artistic in favour of the plaintiff No.2. The

said documents are marked as Ex. PW-1/6. As regards the trademark is

concerned it is stated by the plaintiffs that the said trademark has been

widely advertised in modern media and is being used in the distinctive

packaging for the last several years in relation to the wafer, biscuit with

choco layer. The plaintiffs have given the statement of annual sales

figures as well as promotion expenditure in the affidavit adduced as

evidence. The contention of the plaintiffs is that the defendants are

selling spurious and substandard wafer biscuit covered with choco layer

in the infringing packaging under the trademark MAGIC which is

deceptively similar to the trademark MAGGI and MUNCH packaging

pertaining thereto of the plaintiffs.

9. When the ex party order was passed against the defendants on

12.05.2008, the court also appointed the Local Commissioner to visit the

premises of the defendants. The report of the Local Commissioner dated

19.05.2008 reveals the huge recovery of the infringing goods and

packaging from the premises of the defendants. The details of the same

are given as under:

SL. No.         IMPUGNED PACKAGING                 QUANTITY (KG)
                        MAGIC
      1.          Magic Laminates (Re.1)                 464.01

      2.             Magic Laminates (Re.1)             505.422

      3.             Magic Laminates (Re.2)              459.74

      4.     MAGIC Primary Packaging (Re.2)              470.00

      5.        MAGIC Final Packing (Re.2)               276.00

                             Total                      2175.17

10. The said report of the Local Commissioner is exhibited as

PW-1/9. Admittedly the trademark MAGGI is a registered trademark

for variety of goods including food article. The way the defendant is

using the trademark MAGIC with the similar colour combination, getup

and layout and arrangement of features, it is clear that the same have

been taken up from the plaintiffs MUNCH packaging and, therefore,

when it is used in the fashion the defendants are using even the mark

MAGIC becomes deceptively similar to the mark of the plaintiffs mark

MAGGI. In case the mark adopted and used by the defendants is

allowed there would be confusion and deception in the market. There is

no doubt that the said act is done by the defendants with mala fide

intention for the purpose of en-cashing the goodwill and reputation of the

plaintiffs' trademark MAGIC and NESTLE MUNCH packaging.

11. Thus, the conduct of the defendants is not honest as the

defendants have apparently kept in mind the trademark MAGGI and the

packaging of the MUNCH before their adoption and user. No valid

justification has been given by the defendants for the same. The

defendants were proceeded ex parte vide order dated 02.09.2009 and the

interim order was also made absolute. The plaintiffs have adduced the ex

parte evidence by filing of an affidavit of Venita Gabriel who has referred

the following documents:

(a) Power of attorney dated 10.08.2008 marked as Ex. PW1/1 and PW1/2.

              (b)      Packaging of NESTLE MUNCH marked as Ex.
              PW-1/3.
              (c)      The legal proceedings certificate of the trademark

MAGGI bearing registration No. 578343 in Class 30 is marked as Ex. PW-1/4 and the registration No. 578342 as Ex. PW-1/5.

(d) The assignment of copyright in favour of plaintiff No.2 is marked as Ex. PW-1/6.

(e) The infringing packaging of the defendant marked as Ex. PW-1/7.

(f) The investigation report dated 28.04.2008 marked as Ex. PW-1/8.

(g) The report of the Local Commissioner marked as Ex. PW-1/9.

12. After having considered the pleadings, the documents and the

evidence adduced by the plaintiff this court is fully satisfied that the

plaintiffs have made a strong prima facie case for passing off permanent

injunction against the defendants. Even otherwise, the evidence and

averments made by the plaintiffs in the plaint have been un-rebutted.

13. In these circumstances, the suit of the plaintiffs is decreed in

terms of prayer A to D of para 27 of the plaint. As far as the destruction

of the goods are concerned which are lying at the premises of the

defendant the same shall be destroyed by the defendants in the presence

of the representative of the plaintiffs by fixing a date and time for the

purpose of the destruction.

14. It is now almost well settled by this court starting from Time

Incorporated v. Lokesh Srivastava & Anr. 2005 (30) PTC 3 that the

court should make its endeavours to deprecate the dishonesty especially

to discourage the law breakers who have also willfully absent themselves

from the court. This has been done by the courts by awarding punitive

damages which has its genesis from American concept of punitive

damages which is akin to the penalty or having penal effect in the damage

jurisprudence. The said damages are discretionary but are awarded in the

cases where the court find that the defendants conduct are ex facie

dishonest.

15. In view of the above, the plaintiffs are entitled for the punitive

damages to the tune of Rs. 2 lac. The plaintiffs are also entitled for the

cost of the suit.

MANMOHAN SINGH, J.

AUGUST 16, 2011 dp