Delhi High Court

Itc Ltd. vs Patna Garments And Ors. on 25 January, 2011

Author: J.R. Midha

2
*IN THE HIGH COURT OF DELHI AT NEW DELHI

                     +     CS(OS)No.2018/2003

                            Date of Decision : 25th January, 2011
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      ITC LTD.                                     ..... Plaintiff
                          Through : Mr. Sushant Singh,
                                    Ms. Parveen Prakash Chandra
                                    Arya,
                                    Mr. Tejinder Singh,
                                    Ms. Cherry Bhatnagar, Advs.
                     versus

      PATNA GARMENTS AND ORS.                    ..... Defendants
                  Through : None.

CORAM :-
HON'BLE MR. JUSTICE J.R. MIDHA

1.      Whether Reporters of Local papers may              YES
        be allowed to see the Judgment?

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

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

J.R. MIDHA, J. (Oral)

1. The plaintiff has filed this suit for permanent injunction for

restraining the defendants from infringement of trademark,

respect of their trademark WILLS SPORT and the label WILLS

SPORT (LOGO).

2. The summons of this suit were duly served on the

defendants who entered appearance and filed their respective

written statements. On 20th July, 2006, the suit was decreed

against defendant No.3 in respect of prayers 46(i), (ii) and (iii).

The suit thereafter continued against defendants No.1 and 2.

3. Defendants No.1 and 2 also initially agreed to settle this

case with the plaintiff and the case was listed for reporting the

settlement from 5th February, 2007 to 27th February, 2009.

However, defendants No.1 and 2 stopped appearing thereafter

and were proceeded ex-parte on 8th May, 2009.

4. The plaintiff examined one witness to prove its case.

PW-1 deposed that the plaintiff adopted the trademark WILLS

SPORT in 1999 and started using the same in respect of the

branded apparel in July, 2000. The plaintiff is the registered

proprietor of the trademark WILLS SPORT in Classes 18, 25 and

28. The copy of the trademark registration certificate bearing

No.1107013 in respect of trademark WILLS SPORT in Class 25

has been proved as Ex.P-2. The plaintiff's trademark WILLS

SPORT was declared as the most admired Brand launch of the

year at the Images Fashion Awards 2001. In Images Fashion

Awards 2002, WILLS SPORT was declared as the most admired

Women's wear brand of the year. The brand name WILLS

SPORT is associated with upmarket luxury image by the

customers worldwide. The plaintiff apparels are extensively

advertised on television and print media. The plaintiff has

good reputation and goodwill in India. The plaintiff's trademark

WILLS SPORTS is a well known trademark. The certificate of the

Chartered Accountant regarding the total sales, advertising and

marketing expenses of the plaintiff has been proved as Ex.P-3.

The WILLS SPORT (LOGO) is duly registered under the

proved as Ex.P-4. The plaintiff is also registered proprietor of

the artistic work (Logo) ITC bearing No.A-5630/70 dated 8th

June, 1970 proved as Ex.P-5. The plaintiff has used the

trademark WILLS SPORT continuously since its adoption. The

photographs of the samples products of the plaintiff have been

proved as Ex.P-6.

5. In October, 2003, the plaintiff came across counterfeit

shirts, jeans, trousers and other clothing at the premises owned

by the defendants bearing counterfeit trademark WILLS SPORT.

The plaintiff through Notary Public purchased samples of the

said shirts, jeans and trousers on 23rd October, 2003 and 24th

October, 2003. The Notarial report along with the affidavits has

been proved as Ex.P-7. On making inquiry, the plaintiff came

to know that defendant No.1 was the manufacturer and

fabricator of the infringing goods and was selling the same in

the market through its own retail outlet as well as through

defendants No.2 and 3. The defendants are using identical

LOGO as that of the plaintiff which is violative of the plaintiff's

been proved as Ex.P-8. The stickers and labels used by the

defendants have been proved as Ex.P-9.

6. Vide ex-parte ad-interim injunction order dated 21st

November, 2003, the defendants were restrained from selling,

marketing or distributing the wearing apparels with the

plaintiff's trademark and logo WILLS SPORT or any other

trademark or logo deceptively similar to that of the plaintiff.

This Court also appointed the Local Commissioners to visit the

offices/sites of the defendants, whereupon the Local

Commissioners visited the premises of the defendants on 27 th

November, 2003. The Local Commissioners found infringing

items from the premises of defendants No.1 and 2. The ex-

parte ad- interim injunction was made absolute by this Court

vide order dated 8th May, 2009. Defendants No.1 and 2 have

not cross-examined the plaintiff's witnesses and have also not

led any evidence in support of their defence.

7. On the basis of the unrebutted testimony of the plaintiff's

witness, the plaintiff has succeeded in proving its case. The

plaintiff is the registered proprietor of the well known

trademark and copyright WILLS SPORT and WILLS SPORT

(LOGO) and, therefore, the defendants No.1 and 2 have no

right to use said trademark and copyright. The defendants

No.1 and 2 have infringed the plaintiff's trademark and

Local Commissioners appointed by this Court which clearly

proves that the defendants had infringed the trademark and

reports of the Local Commissioners.

8. The plaintiff has sought punitive damages from

defendants No.1 and 2. The learned counsel for the plaintiff

has referred to and relied upon the judgments in the cases of

Intel Corporation vs. Dinakaran Nair, 2006 (33) PTC 345

(Del), Time Incorporated vs. Lokesh Srivastava, 2005

(30) PTC 3 (Del), Adidas - Salomon AG vs. Jagdish Grver,

2005 (30) PTC 308 (Del) and Microsoft Corporation vs.

Yogesh Papat, 2005 (30) PTC 245 (Del). The findings of

this Court in the case of Intel Corporation vs. Dinakaran

Nair (supra) are as under:-

"13. The only other question to be examined is the claim of damages of Rs.20 lakh made in Para 48 (iii) (repeated) of the plaint. In this behalf, learned counsel has relied upon the Judgments of this Court in Relaxo Rubber Limited & Anr. v. Selection Footwear Anr., 1999 PTC (19) 578, Hindustand Machines v. Royal Electrical Appliances, 1999 PTC (19) 685 and CS(OS) 2711/1999 M/s. L.T. Overseas Ltd. v. M/s. Guruji Trading Co. & Anr. decided on 7.9.2003. In all these cases, damages of Rs.3 lakhs were awarded in favour of the plaintiff. In Times Incorporated v. Lokesh Srivastava & Anr., 2005 (30) PTC 3 (Del) apart from compensatory damages even punitive damages were awarded to discourage and dishearten law breakers who indulge in violation with impunity. In a recent Judgment in Hero Honda Motors Ltd. v. Shree Assuramji Scooters, 125 (2005) DLT 504: 2006(32) PTC 117 (Del) this Court has taken the view that damages in such a case should be awarded against defendants who chose to stay away from proceedings of the Court and they should not be permitted to enjoy the benefits of evasion of Court proceedings. The rationale for the same is that while defendants who appear in Court may be burdened with damages while defendants who chose to stay away from the Court would escape such damages. The actions of the defendants result in affecting the reputation of the plaintiff and every endeavour should be made for a larger public purpose to discourage such parties from indulging in acts of deception.

14. A further aspect which has been emphased in Time Incorporated case (supra) is also material that the object is also to relieve pressure on the over-loaded system of criminal justice by providing civil alternative to criminal prosecution of minor crimes. The result of the

actions of defendants is that plaintiffs, instead of putting its energy for expansion of its business and sale of products, has to use its resources to be spread over a number of litigations to bring to book the offending traders in the market. Both these aspects have also been discussed in CS (OS) No.1182/2005 titled Asian Paints (India) Ltd. v. Balaji Paints and Chemicals & Ors. decided on 10.03.2006. In view of the aforesaid, I am of the considered view that the plaintiff would also be entitled to damages which are quantified at Rs.3 lakhs.

15. A decree is thus passed in favour of the plaintiff and against the defendants in terms of the para 48(1) to (iii) of the plaint and the plaintiff is also entitled to a decree for damages for a sum of Rs.3 lakh against the defendants jointly and severally."

9. In the facts and circumstances of the case, the suit is

decreed in favour of the plaintiff and against defendants No.1

and 2 in terms of prayers in clause 46 (i), (ii) and (iii).

Following the aforesaid judgments, a decree of punitive

damages in the sum of Rs.5 lakhs is also passed in favour of

the plaintiff and against defendants No.1 and 2. The plaintiff

shall also be entitled to future interest on the damages at the

rate of 7.5% per annum from the date of the judgment till

realization. The plaintiff shall also be entitled to the costs. The

decree sheet be drawn accordingly.

J.R. MIDHA, J

JANUARY 25, 2011 mk