M/S Giani Gurcharan Singh & Sons vs Madhusudhan Singh And Another
2011 Latest Caselaw 860 Del

         THE HIGH COURT OF DELHI AT NEW DELHI

%                     Judgment Reserved on: 9.2.2011
                      Judgment Pronounced on: 14.2.2011

+           CS(OS) No. 1233/2009

M/s Giani Gurcharan Singh & Sons               .....Plaintiff

                            - versus -

Madhusudhan Singh and Another                 .....Defendants

Advocates who appeared in this case:
For the Plaintiff: Mr. Ajay Amitabh Suman, Adv.
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 injunction, delivery up of

infringing material and rendition of accounts or in the

alternative for damages.

2. The plaintiff is a partnership firm engaged in the

business of manufacturing and marketing of edible items

including milk and dairy products, ice creams, faluda, milk

shakes etc. The plaintiff claims to have adopted through its

predecessors the trademark/trade name/label GIANI'S in

the year 1960 and using the same since then. The plaintiff

also claims to be the proprietor of the artistic features

involved in the trademark/trade name/label GIANI'S. the

trademark has been registered in the name of the plaintiff in

respect of flour and preparations made from cereals

including faluda as well as in respect of milk and other

dairy products. The plaintiff claims sale of Rs.34,90,040/-,

36,03,980/- and 49,649,30/- during the years 2006-07,

2007-08 and 2008-09 respectively. It is also claimed that

on account of continuous and extensive user since 1960,

the goods/services and business being carried under the

trademark GIANI'S have come to be identified and

associated exclusively with the plaintiff. The plaintiff claims

to have incurred substantial expenditure on promoting and

advertising its products as well as the trademark and trade

name adopted by it.

3. It is alleged that the defendants have adopted and

started using the trade name GIAN'S in respect of edible

items including milk and dairy products, ice creams, faluda,

milk shakes etc. Mr. Madhusudhan Singh, defendant Nof.1

is alleged to be the proprietor of defendant No.2 M/s

GIAN'S. It is also alleged that the trademark adopted by the

defendant is deceptively similar to the trademark of the

plaintiff on account of phonetically, visually and structurally

similarity and by using the trademark GIAN'S, the

defendants have infringed the registered trademark of the

plaintiff and they are also passing of their goods and

business as that of the plaintiff. It is further alleged that

members of the public including house wives and person in

village and semi rural areas are being deceived in dealing

with and purchasing the defendants goods/services and

business under the impression that they emanate from the

plaintiff or there exists some link between the plaintiff and

defendants and thereby the defendants are creating

confusion and deception in the market. The plaintiff has

sought permanent injunction restraining the defendants

from using the trademark GIAN'S and from manufacturing,

selling, offering for sale or advertising any product bearing

the aforesaid trademark or some other mark deceptively

similar to the trademark of the plaintiff as also from passing

of their goods as those of the plaintiff. The plaintiff has also

sought delivery up of all the packaging material, cartons

and goods etc. for the purpose of destruction and erasure of

the mark GIAN'S. The plaintiff has further sought rendition

of accounts and in the alternative, damages amounting to

Rs.20,01,000/- from the defendants.

4. The defendants were proceeded ex parte vide order

dated 6th October, 2009.

5. The plaintiff has filed an affidavit of its partner

Shri Param Jeet Singh by way of ex parte evidence. In his

affidavit, Mr. Param Jeet Singh has staetd that the plaintiff

through its predecessors adopted the trademark/trade

name/label GIANI'S in the year 1960 and has been

continuously using the same since then. According to him,

the word GIANI'S is an essential key material of the trade

name of the plaintiff firm. He has further stated that the

business being carried out by the plaintiff is quite extensive

and its products are being distributed in major parts of the

country. He has claimed that the goods/services and

business under the aforesaid trademark/trade name/label

is identified as the goods/services/business originating from

the plaintiff and have become associated with it on account

of long and continuous user since 1960. According to him,

the goods/services of the plaintiff are highly in demand on

account of their standard and quality and the aforesaid

trademark/trade name/label has acquired tremendous

goodwill and enviable reputation in the market. According

to him, the plaintiff had sale of Rs.34,90,040/-, 36,03,980/-

and 49,649,30/- during the years 2006-07, 2007-08 and

2008-09 respectively and it has been spending enormous

amount on publicity by way of advertising, trade hoardings

etc.

6. Mr. Param Jeet Singh has further stated that the

defendants are engaged in the same business in which the

plaintiff is engaged and they have adopted and started using

the trademark/trade name/label GIAN'S in respect of

edible items including milk and dairy products, ice creams,

faluda, milk shakes etc. He has further stated that the

plaintiff had come across the goods of the defendant being

sold under the impugned trademark/trade name/label

GIAN'S in the beginning of May, 2009 and sent a legal

notice to him, which was not replied to.

7. The case of the plaintiff against the defendants is

based upon infringement of their registered trade mark as

well as on passing off. 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. In a case based on infringement of this statutory

right it is necessary for the plaintiff to prove that his

registered trade mark has been used by the defendant,

though no such use is required to be established in an

action for passing off. 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 of 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.

8. 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.

9. A person is well within his 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 had already been

using that name and had 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.

10. 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.

11. 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.

12. It is not necessary that in order to constitute

infringement, mark should be an absolute replica of the

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 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.

13. A perusal of mark 'A' (Colly.) which are the copies

of Registration No. 622601 and 622602 dated 21st March,

1994 would show that the mark GIANI'S is registered in the

name of the plaintiff Giani Gurcharan Singh & Sons under

Class 30 in respect of milk and other dairy products as well

as in respect of flour and preparation made from cereal. Ice

creams, in my view, would be covered under dairy products.

Hence, the plaintiff is the registered proprietor of the

trademark GIANI'S in respect of ice-creams.

14. The defendants are engaged in the business of

selling ice-creams under the name GIANI'S, as would be

seen from a perusal of Ex.PD-1. Thus, both the parties are

engaged in the same business, i.e., of selling ice-creams,

etc. one using the trademark GIANI'S and the other using

the trademark GIAN'S. A comparison of the trademark of

the defendant GIAN'S with plaintiff's registered trademark

GIANI'S would show that visually and structurally the

trademark being used by the defendant is same to the

trademark being used by the plaintiff. The design of the

letters being used by the defendant is identical to the design

of the letters being used by the plaintiff and the first

impression which one forms on seeing the defendant's

trademark GIAN'S is that it so resembles the registered

trademark GIANI'S of the plaintiff, that there is a likelihood

of deception being practiced on the customer. Even

phonetically, there isn't much difference between the

trademark GIANI'S and GIAN'S.

15. 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. A person having purchased ice-cream, etc.

being sold by the plaintiffs under the trademark GIANI'S, on

coming across the ice-creams, being sold by the defendants

using the trademark GIAN'S is likely to easily believe that

the ice-cream being sold using the trademark GIAN'S was

the same which is being sold using the trademark GIANI'S.

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. A

person purchasing ice-creams being sold under the

trademark GIANI'S is not expected to remember all the

letters used in the trademark and when he comes across the

ice-creams being sold under the trademark GIAN'S, he, on

account of imperfect recollection and his not having the ice-

cream, bearing the trademark, i.e., with him at that time

may easily purchase the ice-cream being sold by the

defendant in a mistaken belief that he was buying the

product of the plaintiff firm. The letters GIAN'S are the

essential features and primary components of the plaintiff's

registered trademark GIANI'S and use of these very letters

by the defendant for selling the same product is likely to

give an impression that both the products were emanating

from the same source or that the products being sold under

the trademark GIAN'S had some trade link or association

with the products being sold under the trademark GIANI'S.

16. In Cadila Health Care Ltd. vs. Cadila

Pharmaceuticals Ltd. (2001) 5 SCC 573, the Supreme

Court, inter alia, observed that its decisions in the last four

decades had clearly laid down that what had to be seen in

the case of a passing off action was the similarity between

the competing marks and to determine whether there was

likelihood of deception or causing confusion.

17. The defendant has not come forward to contest the

suit and tell the Court as to why he chose to use the mark

GIAN'S in particular. The obvious inference, therefore, is

that on account of the mark GIAN'S being similar to the

well-known and reputed mark GIANI'S of the plaintiff, the

defendant wants to encash on the reputation and goodwill,

enjoyed the brand of the plaintiff in the ice-cream market.

18. The plaintiff has been using its registered

trademark GIANI'S for last more than 50 years. The

plaintiff has large turnover from sale of ice-creams under its

registered trademark GIANI'S. The plaintiff claims

substantial expenditure incurred on building and promoting

its trademark GIANI'S. A certain reputation, therefore, has

come to be associated with the trademark GIANI'S of the

plaintiff and the ice-creams being sold by it using this

trademark. If a person, who has earlier consumed ice-

creams, being sold by the plaintiff under its trademark

GIANI'S comes across ice-creams being sold under the

trademark GIAN'S, it is likely to cause confusion and he

may purchase the ice-cream being sold by the defendant on

the assumption that he was purchasing the ice-cream being

sold by the plaintiff under the trademark GIANI'S. This is

more likely in case of unwary customer or a customer living

in a semi-urban or rural area, or a person who though living

in an urban area is not very well informed, and, therefore,

while purchasing a product like an ice-cream, is not likely to

attach much importance to the absence of the letter 'I' in the

trademark of the defendant. Such a customer, therefore,

can be easily persuaded to purchase the ice-cream being

sold by the defendant by representing to him that this was

the same ice-cream which the plaintiff is selling under the

trademark GIANI'S. Hence, there is a genuine likelihood of

the defendant being able to pass his products as those of

the plaintiff on account of his using the mark GIAN'S.

19. The case of the plaintiff is that on account of the

high quality of its products, the customers consuming the

ice-creams sold by it expect them to be a high standard and

superior quality. If the ice-cream being sold by the

defendant is purchased by the customer on a misconception

that he was purchasing the product of the plaintiff and it

later transpires that the quality of the product is not as

good as the quality of the product being sold by the plaintiff,

this may not only damage the brand equity and reputation

of the plaintiff, but, may also adversely affect the interest of

the consumer, who pays for and wants the ice-cream, being

sold by the plaintiff but gets an inferior product. It is,

therefore, in the interest not only of the plaintiff but also of

the customer that such confusion and deception is not

allowed to continue and the consumer gets what he wants

to buy and pays for. I, therefore, hold that the plaintiff has

been able to prove not only infringement of its copyright and

also that the defendant is passing off his products as those

of the plaintiff. The plaintiff is, therefore, entitled to

injunction against use of the trademark GIAN'S by the

defendant in respect of ice-cream and other milk and dairy

products as also in respect of flour and cereal products.

20. Though the plaintiff has also claimed delivery up of

infringing material and rendition of accounts, these reliefs

were not pressed during arguments. The learned counsel

for the plaintiff, however, pressed for award of punitive

damages, actual damage has not been proved by the

plaintiff.

21. In Times Incorporated v. Lokesh Srivastava &

Anr., 2005 (30) PTC 3 (Del), 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 Hero

Honda Motors Ltd. vs. Raj Scooters in CS (OS) No.

851/2004 Decided On 29.11.2005, 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 to 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. 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.

22. For the reasons given in the preceding paragraphs,

the defendant No.1 is restrained from manufacturing,

selling or offering for sale, distributing or promoting in any

manner, any milk or milk product, including ice-creams as

well as any flour or cereal products, using the trademark

GIAN'S or any other mark similar to the registered

trademark GIANI'S of the plaintiff. Taking into

consideration all the fact and circumstances of the case,

punitive damages, amounting to Rs 20,000/- are also

awarded to the plaintiff. The name of defendant No.2,

which is only a trade name adopted by defendant No.1, is

deleted from the array of defendants. Decree sheet be

prepared accordingly.

(V.K. JAIN) JUDGE

FEBRUARY 14, 2011 vk/bg