Procter & Gamble Company vs Joy Creators & Others
2011 Latest Caselaw 1001 Del

         THE HIGH COURT OF DELHI AT NEW DELHI

%                     Judgment Reserved on: 15.02.2011
                      Judgment Pronounced on: 21.02.2011

+ CS(OS) No. 2085/2008


Procter & Gamble Company                       .....Plaintiff

                            - versus -

Joy Creators & Others                       .....Defendants

Advocates who appeared in this case:
For the Plaintiff:      Mr. Peeyoosh Kalra with Mr.
                        Kamal Sharma, Advs.

For the Defendant:            None.

CORAM:-
HON'BLE MR JUSTICE V.K. JAIN

1.

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

2. To be referred to the Reporter or not? Yes

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

V.K. JAIN, J

1. This is a suit for permanent injunction, rendition

of accounts, damages and delivery up of the infringing

material. The plaintiff is a fortune 500 company, having

business operations in 80 countries, dealing in a large

number of products and employing 1,38,000/- persons.

The plaintiff company is also engaged in the business of

manufacturing and selling skin care and personal cleansing

products, including anti-aging moisturizer under the

trademark OLAY. The plaintiff company is also using the

trademarks OLAY TOTAL EFFECTS and TOTAL EFFECTS in

respect of anti-aging products. The plaintiff holds

registration in respect of trademark OLAY TOTAL EFFECTS

in Class 3 of Schedule 4 of Trademarks Act, 1999 in respect

of Foundation, Make-up Base, Skin Moisturizing Cream,

Lotions and Gels, Skin Whitening Preparations, Facial and

Skin Masks, Skin Tonners, Cleansers and Astringents, Eye

Masks, Eye Gel Patch, Eye Creams, Lotions and Gels, Skin

and Body Massage Creams, Soaps (excluding soaps for

fabric use), Perfumeries, Essential Oils, Dentifrices,

Shampoo, Conditioners, Hair Styling Preparations, Hair

Care Preparations and Hair Colouring Preparations. It also

holds registration in respect of the trademark OLAY in Class

3 of the same Schedule. The plaintiff claims turnover of

$236 million, $282 million and $344 million for the years

2005-2006, 2006-2007 and 2007-2008 respectively in

respect of products sold under the name OLAY TOTAL

EFFECTS/TOTAL EFFECTS. The plaintiff company claims

to have incurred expenditure amounting to $89 million, $99

million and $111 million respectively during the aforesaid

years, on brand support activities undertaken by it across

the world. It is further alleged that the plaintiff launched its

products under the trademark OLAY TOTAL

EFFECTS/TOTAL EFFECTS in India in the year 2007 and

has been giving wide publicity to such products, which had

sale amounting to Rs.266.65 million in India during the

period from 1st July, 2007 to 30th July, 2008. The plaintiff

company has incurred expenditure of Rs.263 million in

India alone on promotion of the aforesaid trademarks.

2. It is alleged that in or about April, 2008, the

plaintiff company came across an advertisement of

application No.1224385 for registration of the label, which

contains the mark JOY ULTRA LOOK TOTAL EFFECTS in

respect of Soap, Perfumery Essential Oils, Hair Lotions and

Creams, Dentifrices etc., claiming use of the aforesaid

mark/label since April, 2001. The plaintiff filed a notice of

opposition to the registration sought by the defendants and

the opposition proceedings are stated to be pending. It is

further alleged that on carrying investigation, the plaintiff

came to know that the defendants are conducting business

throughout the country including Delhi using the above

referred trademarks and defendant Nos. 1 and 2 have also

licensed the aforesaid mark to defendant No.3, which is

manufacturing and marketing products bearing the

offending label. It is further alleged that the words TOTAL

EFFECTS are being used by the defendants only in respect

of anti-aging/age defying products and the adoption of the

mark TOTAL EFFECTS in respect of identical products

cannot be a mere co-incidence and indicates a dishonest

and fraudulent intention on their part to derive pecuniary

benefits from using the impugned mark/label. The plaintiff,

thus, claims infringement of its registered and well known

trademark OLAY TOTAL EFFECTS. The plaintiff has sought

injunction restraining the defendants from using the

trademark TOTAL EFFECTS or any other mark deceptively

similar to the trademark of the plaintiff. It has further

sought an injunction restraining the defendants from

passing off the plaintiff‟s trademarks OLAY TOTAL

EFFECTS/TOTAL EFFECTS and from applying and

obtaining registration in respect of the impugned trademark

or any deceptive variation thereof. The plaintiff has also

sought damages amounting to Rs.50 lakhs besides seeking

rendition of accounts and delivery up of the infringing

packaging material etc.

3. The defendants filed the written statement

contesting the suit. They took a preliminary objection that

this Court has no territorial jurisdiction to try the suit since

defendant No.1 does not carry any activity nor does it sell

any product in Delhi. On merits, it has been admitted that

the defendants are engaged in the business of

manufacturing, marketing and selling cosmetic products

including soap, perfumery, essential oils, hair lotions and

creams, dentifrices etc. The defendants claim to be leading

manufacturers and traders in respect of various cosmetic

products, carrying business since 1988-89 and extensively

selling various products under the trademark JOY. It is

alleged that the defendants adopted the label JOY ULTRA

LOOK TOTAL EFFECTS with the words ULTRA LOOK being

given prominence on the label and the word JOY being

written above the word ULTRA LOOK. It is also pointed out

that the words TOTAL EFFECTS written below the words

ULTRA LOOK are much smaller in font size. The present

label is alleged to have been adopted by the defendants in

the year 2001. The defendants claim to have incurred

advertisement expenditure of Rs.69,76,797/-,

Rs.46,53,621/- and Rs,64,46,355/- in the years 2005-2006,

2006-2007 and 2007-2008 respectively. They also claim to

have incurred Rs.2.5 crores towards advertisement and

publicity expenses between 1st April, 2008 and 28th

February, 2009. It is also alleged that the defendants had

sale of Rs.12,26,57,801/- in the year 2006-07,

Rs.19,41,41,916/- in the year 2007-08 and

Rs.31,66,82,164.55 between 1st April, 2008 and 28th

February, 2009. It is further alleged that on receipt of

notice from the plaintiff, the defendants, without prejudice

to their rights and contentions, agreed to delete the words

TOTAL EFFECTS on the plaintiff withdrawing the suit and

not claiming any damages or costs. The plaintiff, however,

refused to withdraw the suit. It is also claimed that the

defendant Nos.3 and 4 have no connection with defendant

Nos. 1 and 2 and have been wrongly joined as parties to this

suit only with a view to raise jurisdiction of this Court. It is

further alleged that the defendant Nos. 1 and 2 are the prior

user of the words TOTAL EFFECTS and, therefore, have a

superior right of use of the trademark TOTAL EFFECTS.

4. Defendant No.4 was proceeded ex-parte vide order

dated 18th December, 2008. Defendant Nos. 1 to 3 were

proceeded ex parte vide order dated 24th January, 2011.

5. Vide interim order dated 1st October, 2008, this

Court restrained the defendants from using the trademark

TOTAL EFFECTS or any other deceptive variation thereof,

singularly or in conjunction with any other word in relation

to their products and services. The interim order was made

absolute on 24th January, 2011.

6. The plaintiff has filed affidavit of its constituted

attorney Mr. Cyril Abrol by way of ex parte evidence. In his

affidavit by way of evidence, Mr. Abrol, supported the case

set up in the plaint and stated on oath that the plaintiff

company had sale of $236 million, $282 million and $344

million for the years 2005-2006, 2006-2007 and 2007-2008

respectively in respect of products sold under the name

OLAY TOTAL EFFECTS/TOTAL EFFECTS and had incurred

expenditure amounting to $89 million, $99 million and

$111 million respectively during the aforesaid years, on

brand support activities. He also stated that the plaintiff

company had sale of Rs.266.65 million in respect of the

products bearing trademark OLAY TOTAL EFFECTS/TOTAL

EFFECTS during the period 1st July, 2007 to 30th June,

2008 and had incurred expenditure of Rs.263 million

towards promotion of the brand in India, availing the

services of former Miss Universe Sushmita Sen for the

purpose.

He further stated that the products involved in the

present suit are cosmetic preparations, which are akin to

pharmaceutical preparations, requiring higher degree of

judicial protection, so that there is no confusion to the

ordinary customer.

7. Exhibit PW1/5 (Colly) is the certificate issued by

the Trademark Registry in respect of registration

Nos.903943 and 895212. Vide registration No.895212 the

Word Mark OLAY has been registered in the name of

plaintiff company in respect of lip moisturizers and

conditioners, liquid and powder foundation, make-up base,

skin moisturizing creams, lotions, and gels, skin whitening

preparations, facial and skin masks, skin toners, cleansers

and astringents, eye masks, eye creams, lotions and gels,

skin and body massage creams, soaps, perfumeries,

essential oils, dentifrices, shampoos, conditioners, hair

styling preparations, hair care preparations and hair

coloring preparations included in Class 03. Vide

registration No.903943 the Word Mark OLAY TOTAL

EFFECTS has been registered in the name of the plaintiff

company in respect of foundation, make-up base skin,

moisturizing creams, lotions and gels, skin whitening

preparations, facial and skin masks, skin toners, cleansers

and astringents, eye masks, eye gel patch, eye creams,

lotions and gels, skin and body massage creams, soaps,

(excluding soaps for fabric use), perfumeries essential oils,

shampoos, conditioners, hair styling preparations, hair care

preparations and hair colouring preparations. The

registration of the aforesaid trademarks in favour of the

plaintiff has not been disputed in the written statement of

defendant Nos. 1 to 3.

8. Exhibit PW1/17 (Colly), which includes

promotional material of defendant No.1 would show that the

defendant has been using the words, TOTAL EFFECTS etc.

on its packaging. A perusal of Exhibit PW1/14, which is an

advertisement of the defendant Ram Autar Gupta, who is

using the trade name JOY CREATORS would show that he

had sought registration of the label bearing JOY ULTRA

LOOK TOTAL EFFECTS in respect of soap, perfumery

essential oils, hair lotions and creams and dentifrices for

sale in India and for export. A perusal of the packing in

which age defying solution is sold by defendant N.3 Joy

Beauty Care Private Limited would show that the words

JOY, ULTRA LOOK and TOTAL EFFECTS have been used on

the bottle. A perusal of the invoice Exhibit PW1/19 would

show that the defendant No.4 SKS Instruments (India) sold

U.L. Foundation (Total Effects) in Delhi on 9th June, 2008.

9. Section 28 of Trade Marks Act, 1999 gives to the

registered proprietor of the trade mark the exclusive right to

the use of the trade mark in relation to the goods or services

in respect of which the trade mark is registered and to

obtain relief in respect of infringement of the trade mark in

the manner provided by this Act. The action for

infringement is, thus, a remedy provided by Trade Marks

Act to the registered proprietor of a registered trade mark in

case there is an invasion of the statutory right provided to

him for use of that trade mark in relation to the goods for

which the trade mark has been registered in his name.

Section 29(1) of Trade Marks Act, 1999 provides that a

registered trade mark is infringed by a person who, not

being a registered proprietor or a person using by way of

permitted use, uses in the course of trade, a mark which is

identical with, or deceptively similar to, the trade mark in

relation to goods or services in respect of which the trade

mark is registered and in such manner as to render the use

of the mark likely to be taken as being used as a trade

mark.

10. It is also a settled proposition of law, which was

reiterated by Supreme Court in Kaviraj Pandit Durga Dutt

Sharma v. Navaratna Pharmaceutical Laboratories,

PTC (Suppl) (2) 680 (SC), that if the defendant resorts to

colourable use of a registered trade mark such an act of the

defendant would give rise to an action for passing off as well

as for infringement. In an action based upon infringement

of a registered trade mark if the mark used by the defendant

is visually, phonetically or otherwise so close to the

registered trade mark of the plaintiff that it is found to be an

imitation of the registered trade mark, the statutory right of

the owner of the registered trade mark is taken as infringed.

In such a case, if it is found that the defendant has adopted

the essential features of the registered trade mark of the

plaintiff, he would be liable even if he is able to establish

that on account of packaging, get up and other writings on

his goods or on the container in which the goods are sold by

him, it is possible to clearly distinguish his goods from the

goods of the plaintiff. On the other hand in a case of

passing off if it is shown that on account of these factors it

is very much possible for the purchaser to identify the origin

of the goods and thereby distinguish the goods of the

defendant from the goods of the plaintiff, the defendant may

not be held liable.

11. In Corn Products Refining Co. vs. Shangrila

Food Products Ltd. 1960 (1) SCR 968, the Supreme Court

observed that the question whether two competing marks

are so similar as to be likely to deceive or cause confusion is

one of first impression and it is for the court to decide it.

The question has to be approached from the point of view of

a man of average intelligence and imperfect recollection.

12. In Parle Products (P) Ltd. v. J.P. & Co., Mysore,

AIR 1972 SC 1359, Supreme Court inter alia observed as

under:-

According to Karly‟s Law of Trade Marks and Trade Names (9th Edition Paragraph 838) "Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with the one mark, and not having the two side by side for

comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted.

It would be too much to expect that persons dealing with trademarked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own.

It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.

13. It is not necessary that in order to constitute

infringement, the impugned trademark should be an

absolute replica of the registered trademark of the plaintiff.

When the mark of the defendant is not identical to the mark

of the plaintiff, it would be necessary for the plaintiff to

establish that the mark being used by the defendant

resembles his mark to such an extent that it is likely to

deceive or cause confusion and that the user of the

impugned trademark is in relation to the goods in respect of

which the plaintiff has obtained registration in his favour. It

will be sufficient if the plaintiff is able to show that the

trademark adopted by the defendant resembles its

trademark in a substantial degree, on account of extensive

use of the main features found in his trademark. In fact,

any intelligent person, seeking to encash upon the goodwill

and reputation of a well-established trademark, would make

some minor changes here and there so as to claim in the

event of a suit or other proceeding, being initiated against

him that the trademark being used by him, does not

constitute infringement of the trademark, ownership of

which vests in some other person. But, such rather minor

variations or distinguishing features would not deprive the

plaintiff of injunction in case resemblance in the two

trademarks is found to be substantial, to the extent that the

impugned trademark is found to be similar to the registered

trademark of the plaintiff. But, such malpractices are not

acceptable and such a use cannot be permitted since this is

actuated by a dishonest intention to take pecuniary

advantage of the goodwill and brand image which the

registered mark enjoys, it is also likely to create at least

initial confusion in the mind of a consumer with average

intelligence and imperfect recollection. It may also result in

giving an unfair advantage to the infringer by creating an

initial interest in the customer, who on account of such

deceptive use of the registered trademark may end up

buying the product of the infringer, though after knowing,

either on account of difference in packaging etc. or on

account of use of prefixes or suffixes that the product which

he is buying is not the product of the plaintiff, but is the

product of the defendant.

14. As held by the Supreme Court in Amritdhara

Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449, whether

a trade name is likely to deceive or cause confusion by its

resemblance to another mark already registered is a matter

of first impression and the standard of comparison to be

adopted in judging the resemblance is from the point of view

of a man of average intelligence and imperfect recollection.

What is important to keep in mind that the purchaser does

not have both the marks lying side by side for comparison

and, therefore, chances of deception are rather strong.

15. Every person has a legal right to sell his goods or

render services using any trade name for the purpose. With

the passage of time the goods sold or the services rendered

by him, as the case may be, may acquire certain reputation

or goodwill in the market which becomes the property of

that person and needs to be protected by the court. It is not

permissible for any other person to start selling goods or

rendering services either using the same name or imitating

that name so as to cause injury to that person and enrich

himself at the cost of the person who has already been

using that name and whose mark has acquired a certain

reputation with the passage of time and on account of the

quality of the goods sold or services rendered by him. Any

attempt on the part of a person to enrich upon the goodwill

generated by any other person needs to be curbed by the

court whenever approached by the aggrieved party in this

regard.

In a case based on infringement of a registered

trademark, the plaintiff need not prove anything more than

the use of its registered trademark by the defendant. In

such a case, even if the defendant is able to show that on

account of use of other words by him in conjunction with

the registered word/mark of the plaintiff, there would be no

confusion in the mind of the customer when he come across

the product of the defendant and/or that on account of the

packaging, get up and the manner of writing trademark on

the packaging, it is possible for the consumer to distinguish

his product from that of the plaintiff, he would still be liable

for infringement of the registered trademark. Of course, use

of a registered trademark or an essential part of it, whether

alone or in conjunction with some other words would

constitute infringement only when the product and/or

service in respect of which the impugned trademark is used

fall in the same category in which registration has been

granted to the plaintiff.

16. The defendants are manufacturing/selling age

defying foundation, which is a cosmetic product to be

applied on skin, under the brand name JOY ULTRA LOOK

TOTAL EFFECTS. The plaintiff company is an established

and very well reputed manufacturer and marketer of various

products including age defying products under the brand

name OLAY TOTAL EFFECTS. Thus, both the parties are

engaged in the same business, as far as the

manufacture/sale of age defying foundation is concerned.

The words TOTAL EFFECTS are an essential and integral

component of plaintiff‟s registered trademark OLAY TOTAL

EFFECTS. The defendants have virtually lifted two of the

three words out of the registered word trademark OLAY

TOTAL EFFECTS of the plaintiff-company and are using

those two words as part of their trademark JOY ULTRA

LOOK TOTAL EFFECTS. It is, therefore, difficult to dispute

that the defendants by use of the words TOTAL EFFECTS as

an essential part of their trademark JOY ULTRA LOOK

TOTAL EFFECTS have infringed the registered trademark

OLAY TOTAL EFFECTS of the plaintiff. It is true that words

TOTAL EFFECTS are only a part of the composite trademark

of the defendants, but, that to my mind would make no

difference since an essential and integral part of the

plaintiff‟s registered trademark is being used by them for

selling their product. Neither deletion of a part of a

registered trademark nor the prefix or suffix of another word

to it would validate the use of the registered mark by an

unlicensed user, once it is shown that the part used by the

infringer is an essential part of the registered trademark.

Another important aspect in the case before the Court is

that the words TOTAL EFFECTS use the last two words in

the mark of the plaintiff as well as of the defendant, which

in turn, indicates that adoption and use of these two words

from the mark of the plaintiff was deceptive, intended to

confuse the consumer and encash upon the goodwill

enjoyed by plaintiff‟s trademark OLAY TOTAL EFFECTS. The

trademark JOY ULTRA LOOK TOTAL EFFECTS, on account

of incorporation of the words TOTAL EFFECTS in it has

become deceptively similar to the registered trademark

OLAY TOTAL EFFECTS of the plaintiff company.

17. It is also in the interest of the consumer that a well

established brand or an essential component of that brand

is not allowed to be used by another person. A person

purchasing age defying foundation being sold under the

name OLAY TOTAL EFFECTS may not necessarily

remember all the words used in the trademark and,

therefore, when he comes across another product being sold

under the trademark JOY ULTRA LOOK TOTAL EFFECTS,

on account of imperfect recollection and he is not having the

product of the plaintiff bearing the trademark OLAY TOTAL

EFFECTS with him at that time, he may get an impression

that both the products emanate from the same source and

that is why both of them are using the words TOTAL

EFFECTS as part of the trademark under which they are

being sold. This may cause confusion in the mind of the

consumer even if he does not purchase the product of the

defendant on a careful scrutiny of the trademark under

which it is being sold or on account of packaging of the

product of the defendant being different from the packaging

of the product of the plaintiff.

18. In K.R. Chinna Krishna Chettiar vs. Shri Ambal

and Co., Madras and Anr., AIR 1970 SC 146, the

respondents were the two registered trademarks. The first

mark consisted of a label containing a device of a goddess

Sri Ambal seated on a globe floating on water enclosed in a

circular frame with the legend "Sri Ambal parimala snuff" at

the top of the label, whereas the other mark consisted of

expression "Sri Ambal". The appellant before Supreme Court

was seeking registration of a label containing three panels.

The first and the third panels contained equivalents of the

words "Sri Andal Madras Snuff", whereas the central panel

contained the picture of goddess Sri Andal and the legend

"Sri Andal". Sri Andal and Sri Ambal are separate divinities.

The question before the Court was whether the proposed

mark of the appellant was deceptively similar to the

respondents‟ mark. Noticing that the word Ambal was an

essential feature of the registered trademarks, the Court

was of the view that the name Andal proposed to be used by

the appellant did not cease to be deceptively similar because

it was used in conjunction with a pictorial device. Supreme

Court referred to the case of De Cordova and Ors. v. Vick

Chemical Coy. (1951) 68 R.P.C.103 where Vick Chemical

Coy were the proprietors of the registered trade mark

consisting of the word "Vaporub" and another registered

trade mark consisting of a design of which the words "Vicks

Vaporub Salve" formed a part. The defendants advertised

their ointment as 'Karsote vapour Rub" and the Court held

that the defendants had infringed the registered marks. The

view taken by Lord Radcliffe that "a mark is infringed by

another trader if, even without using the whole of it upon or

in connection with his goods, he uses one or more of its

essential features" was affirmed by the Supreme Court.

The appeal was accordingly dismissed by Supreme Court,

despite the fact that the words Ambal and Andal had

distinct meanings. In the case before this Court, the

defendants have used the words "TOTAL EFFECTS" without

even attempting any change in those words, as an essential

component of their trademark "JOY ULTRA LOOK TOTAL

EFFECTS". The infringement by the defendants, therefore,

is more serious than the infringement in the case of K.R.

Chinna Krishna Chettiar (supra)

In Atlas Cycle Industries Ltd. vs. Hind Cycles

Limited: ILR 1973, Delhi 393, the plaintiff was the

registered proprietor of the trademark "EASTERN STAR" in

respect of bicycles. The defendant was found selling cycles

under the trademark "ROYAL STAR". The stand taken by

the defendant was that the word trademark ROYAL STAR

was not likely to cause confusion or deception or was not

any infringement of appellant‟s trademark EASTERN STAR

since the word STAR was common to the trade and was

being used by several cycle manufacturers. It was observed

by this Court that when the words EASTERN STAR and

ROYAL STAR are uttered, a person of average intelligence

and imperfect memory was likely to remember only the

sound and word STAR and those likely to be deceived or

confused between the two names or mark and, therefore the

two marks had an overall structural and phonetic similarity

and consequently, their use in respect of the same kind of

goods viz. cycles will cause confusion or deception within

the meaning of Section 29 of the Trade and Merchandise

Marks Act, 1958.

In Ansul Industries vs. Shiva Tobacco Company:

2007(34) PTC 392, the appellant was marketing tobacco

under the name 'Udta Panchhi', whereas the respondent

was manufacturing/selling chewing tobacco under the trade

name 'Panchhi Chaap'. Noticing that the word „Panchhi‟ in

the mark 'Udta Panchhi' and 'Panchhi Chaap' enjoys

prominence and is the focal point of two marks, it was held

by this Court that despite the getup and colour of packing

being different, there was likelihood of deception and

confusion on account of phonetic similarity of the word

„Panchhi‟ in both the marks.

19. Though it was alleged in the written statement of

defendant Nos. 1 to 3 that they were prior user of the words

"TOTAL EFFECTS", they have not come forward to prove the

claim made by them. In fact, they have themselves admitted

that they had agreed to delete the words "TOTAL EFFECTS"

from their trademark provided the plaintiff agreed not to

claim damages. This clearly shows an admission on the part

of the defendants that they are not entitled to use the words

"TOTAL EFFETS" as a part of their trademark.

20. For the reasons given in the preceding paragraphs,

the plaintiff is entitled to injunction against use of the

trademark JOY ULTRA LOOK TOTAL EFFECTS or any other

deceptively similar name by the defendants in respect of

anti-ageing foundation or any other product for which

registration has been obtained by the plaintiff for the word

mark OLAY TOTAL EFFECTS.

21. Neither the relief of injunction nor the relief of

delivery up of infringing material was pressed during the

course of arguments. The learned counsel for the plaintiff,

however, insisted on award of punitive compensatory

damages and in this regard, he placed reliance on the

decisions of this Court in Time Incorporated v. Lokesh

Srivastava & Anr., 2005 (30) PTC 3 (Del), Microsoft

Corporation v. Deepak Raval, MIPR 2007 (1) 72, Hero

Honda Motors Ltd. V. Shree Assuramji Scooters, 2006

(32) PTC 117 (Del), General Electric Company v.

Mr.Altamas Khan and Others (CS(OS) No.1283/2006

decided on 18.12.2008), Indian Performing Right Society

Ltd. V. Debashis Patnaik and Others, 2007 (34) PTC 201

(Del), Microsoft Corporation v. Yogesh Papat and

another, 2005 (30) PTC 245 (Del.), The Coca Cola

Company and another v. Dwarkadhish Khandelwal

Trading as Mewar Soda Water Factory, MIPR 2007 (3)

188, Asian Paints (India) Ltd. V. Balaji Paints and

Chemicals and Others, 2006 (33) PTC 683 (Del.), SAP AG

and another v. Somaya Kanti Dutta and another, 2008

(36) PTC 598(Del), Larsen and Toubro Ltd. v. Chagan

Bhai Patel, MIPR 2009 (1) 194, Relaxo Rubber Ltd and

another v. Selection Footwear and another, 1999 (19)

PTC 578, Adobe Systems Inc. and another v. Mr. P.

Bhoominathan and another, 2009 (39) PTC 658 (Del) and

Microsoft Corporation and another v. Mr. A. Jain and

others, 2008 (36) PTC 346 (Del.). In the case of Time

Incorporated (supra), this Court observed that punitive

damages are founded on the philosophy of corrective justice

and as such, in appropriate cases these must be awarded to

give a signal to the wrong doers that the law does not take a

breach merely as a matter between rival parties but feels

concerned about those also who are not party to the lis but

suffer on account of the breach. In the case of Hero Honda

Motors (supra), this Court noticing that the defendant had

chosen to stay away from the proceedings of the Court felt

that in such case punitive damages need to be awarded,

since otherwise the defendant, who appears in the Court

and submits its account books would be liable for damages

whereas a party which chooses to stay away from the Court

proceedings would escape the liability on account of the

failure of the availability of account books.

22. In Microsoft Corporation vs. Deepak Raval:

MIPR 2007 (1) 72, this Court observed that in our country

the Courts are becoming sensitive to the growing menace of

piracy and have started granting punitive damages even in

cases where due to absence of defendant, the exact figures

of sale made by them under the infringing copyright and/or

trademark, exact damages are not available. The

justification given by the Court for award of compulsory

damages was to make up for the loss suffered by the

plaintiff and deter a wrong doer and like-minded from

indulging in such unlawful activities.

In Larsen and Toubro Limited vs. Chagan Bhai

Patel: MIPR 2009 (1) 194, this Court observed that it would

be encouraging the violators of intellectual property, if the

defendants notwithstanding having not contested the suit

are not burdened with punitive damages.

23. Also, the Court needs to take note of the fact that a

lot of energy and resources are spent in litigating against

those who infringe the trademark and copyright of others

and try to encash upon the goodwill and reputation of other

brands by passing of their goods and/or services as those of

that well known brand. If punitive damages are not

awarded in such cases, it would only encourage

unscrupulous persons who actuated by dishonest intention,

use the well-reputed trademark of another person, so as to

encash on the goodwill and reputation which that mark

enjoys in the market, with impunity, and then avoid

payment of damages by remaining absent from the Court,

thereby depriving the plaintiff an opportunity to establish

actual profit earned by him from use of the infringing mark,

which can be computed only on the basis of his account

books. This would, therefore, amount to putting premium

on dishonesty and give an unfair advantage to an

unscrupulous infringer over those who have a bona fide

defence to make and therefore come forward to contest the

suit and place their case before the Court.

24. For the reasons given in the preceding paragraph,

the defendants are hereby restrained from manufacturing,

selling or marketing age defying foundation or any other

product in respect of which the plaintiff holds the registered

word mark OLAY TOTAL EFFECTS. The plaintiff is also

awarded punitive damages amounting to Rs.1,00,000/-

each against defendants No.2 & 3.

Decree sheet be prepared accordingly.

(V.K. JAIN) JUDGE

FEBRUARY 21, 2011 Vk/bg