Casio Keisanki Kabushiki Kaisha vs Rakesh Sethi And Ors
2011 Latest Caselaw 3534 Del

         THE HIGH COURT OF DELHI AT NEW DELHI

%                    Judgment Pronounced on: 26.07.2011

+           CS(OS) No.929/2005

CASIO KEISANKI KABUSHIKI
KAISHA                                   ......           Plaintiff

                            - versus -


RAKESH SETHI AND ORS                           .....Defendants

Advocates who appeared in this case:
For the Plaintiff:      Mr.Abhai Pandey & Ms.Swati
                        Setia, Advocates

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?                         No.

2. To be referred to the Reporter or not?                  No.

3. Whether the judgment should be reported                 No.
   in Digest?

V.K. JAIN, J. (ORAL)

1. This is a suit for injunction, damages and delivery

up of the infringing products and material. The plaintiff

which is also trading as Casio Computer Company Limited,

is registered in Japan. The plaintiff also has a subsidiary

company incorporated in India. The plaintiff company was

founded by Late Kashio Tadao in April, 1946 and claims to

be the inventor of world's first compact, all electric

calculator. The plaintiff company is manufacturing a large

number of products including calculators. The plaintiff is

the owner of the trademark CASIO which was adopted and

is being used by it since 1957. The plaintiff company has

presence all over world, including in India, and had sale of

yen 382154 million, 440567 million and 523528 million in

the year 2001-2002, 2002-03 & 2003-04 respectively, and

claims to be spending huge amounts in promotion and

publicity of its products, being sold under the trademark

CASIO. The trademark CASIO is registered in India in

various classes including class 9 in respect of electronic

computing installations and apparatus; electric and

electronic apparatus for use in the calculation and

furnishing of data and statistical information; apparatus for

recording, tabulating, reproducing, translating or classifying

data; calculating copying, billing and sorting machines,

printing apparatus and parts and fittings for all the

aforesaid goods; tapes prepared for use in recording data by

means of electric or electronic impulse, and spools and

cases for such tape; and punched cards for use in data

processing, all for use in or with electronic computing

installations and apparatus. The plaintiff company had sale

of Rs 19.45 crores, Rs. 19.12.crores and Rs 16.97 crores in

the year 2002-2003, 2003- 2004 and 2004-2005

respectively from calculators alone in India. The market

price of various models of calculators being manufactured

and sold by the plaintiff company in India is as under:-

               MODEL                MRP
                                     (In Rupees)

2. It is alleged that on receiving complaints of inferior

quality calculators being available in the Indian market

under the trademark CASIO, the plaintiff company

commissioned a survey in November 2004 in the New Lajpat

Rai Market, Delhi, which is the wholesale market for

electronic goods. The investigation in April, 2005 confirmed

that defendant No.1, trading under the name and style of

M.K.Traders, was selling calculators to the defendant Nos. 2

to 5 under the trademark CASIO. The investigator appointed

by the plaintiff company purchased models of fx 350 MS

and fx 82MS from defendant no.1, fx 570MS from defendant

Nos. 2 to 3, fx 100MS from defendant No.4 and fx 991Ms

from defendant No.5. These calculators look like those of the

plaintiff company and were being sold under the trademark

CASIO. The price at which the defendants were selling these

calculators is also a clear indicator that these calculators

are counterfeit calculators. It is also claimed that the quality

of this counterfeit calculator is inferior and a number of

important features are missing from them. It is further

claimed that the layout of the keys and the nuts of the

calculators purchased from the defendants is different from

that of the genuine CASIO calculators manufactured by the

plaintiff. The calculators of the plaintiff have batteries

working at 1.5V and have only one battery whereas the

calculators purchased from the defendants have batteries

which work at 3V, normally with two 1.5V batteries or one

3.0V lithium battery. In plaintiff's calculators, key

operations are stored in a buffer but such A feature is

absent in the defendants calculators.

3. It is also alleged that by using the plaintiff's

reputed and well known trademark CASIO with regard to

the counterfeit calculators, the defendants are blatantly

passing off their products as that of the defendants besides

infringing the registered trademark of the plaintiff company.

It is also alleged that the defendants have adopted the

trademark CASIO with the mala fide intention of trading

upon the tremendous reputation and goodwill which the

plaintiff's products enjoy in the market.

4. The plaintiff has sought injunction restraining the

defendants from manufacturing, selling or advertising

calculators or any other product under the trademark

CASIO or any other product which is similar to its

trademark CASIO. The plaintiff has also sought direction

to the defendants to disclose the source of counterfeit

calculators and list of customers. It has also sought a

mandatory injunction directing the defendants to advertise

a public apology for the misuse of the plaintiff's trademark.

The plaintiff is also claiming delivery up of infringing

product and other material bearing the trademark CASIO,

besides rendition of accounts in respect of the profits

illegally earned by the defendants on account of use of

trademark Casio. However, the learned counsel for the

plaintiff states that the plaintiff's company is pressing only

for relief for perpetual injunction, restraining the defendants

from manufacturing, selling, advertising or promoting any

calculator bearing the trademark CASIO or any other

trademark identical with or deceptively similar in the

aforesaid trademark manufactured by the plaintiff company.

5. Defendant No.5 had filed the written statement,

contested the suit but later on compromised with the

plaintiff. In view of the settlement between the plaintiff and

defendant No.5, the suit was decreed in terms of the prayers

made in para-26 (i), (ii),(iii) and (v) of the plaint. Defendants

1 to 4 were proceeded ex parte vide orders dated

18.07.2006.

6. The plaintiff has filed affidavits of its attorney Mr.

Vedant Pujari as well as the affidavit of Mr. Maheshwar

Kumar by way of evidence. In his affidavit by way of

evidence, Mr. Maheshwar Kumar has stated that he was

engaged by the plaintiff for conducting a survey in New

Lajpat Rai Market in April, 2005 to verify the availability of

counterfeit CASIO calculators. During his investigation, he

visited the Shop of M.K. Traders at 14B/6, Moolchand

Market near Gauri Shankar Mandir, Chandani Chowk and

met Mr. Rakesh Sethi who claimed to be the owner of the

shop and handed over his business card, which is Annexure

A to his affidavit. On enquiry about CASIO calculators, Mr.

Rakesh Sethi informed me that he was the wholesale

supplier of calculators in various markets and could supply

any quality of counterfeit CASIO calculators. Mr. Rakesh

Sethi took him to his godown at 7B/1, Pleasure Garden,

behind Gauri Shankar Mandir, New Lajpat Rai Market,

Chandani Chowk, Delhi where a huge stock of counterfeit

CASIO calculators had been stored. He purchased CASIO

branded fx-82MS & fx350MS calculators from Mr. Sethi for

a price of Rs 300/-. Mr. Sethi issued him the receipt which

is Annexure -B to the affidavit. The photographs of the

counterfeit calculators purchased by him from Mr. Rakesh

Sethi are Annexure-C at C-1 to the affidavit. He has

further stated that he also visited with Mr. Sethi at Shop

No.188, P.G.Market, Ground Floor, near Gauri Shankar

Mandir, New Lajpat Rai Market, Chandani Chowk, Delhi

where he met Mr. Amit Sachdeva who introduced himself

as the owner of the shop and also gave him his business

card which is Annexure -G to the affidavit. Mr. Sachdeva

showed him a range of fx series of CASIO calculators and he

purchased a CASIO branded fx-100MS calculator from him

for a price of Rs.185/- without a cash receipt. The

photograph of the calculator is Annexure-H to his affidavit.

The investigator also visited Kapoor Electronic, 384, New

Lajpat Rai Market, Chandani Chowk, Delhi and met Mr.

Sandeep Kapoor who introduced himself as the owner of the

shop. Mr. Kapoor gave him his business card which is

Annexure-E to his affidavit. On enquiry, Mr. Kapoor

informed me that each piece of Casio calculator would cost

Rs190/-, whereas on bulk purchase the price would be

Rs.150/- per piece. He purchased one fx-570 calculator

from Mr. Kapoor without a cash receipt. The photograph of

that calculator is Annexure -F to the affidavit of the witness.

During conversation Mr. Kapoor informed him that he could

arrange large quantity of these calculators. On later visit to

the shop of Mr. Kapoor, he found that the name of the shop

had been changed by him from Kapoor Electronics to

Ruchika Corporation.

7. In his affidavit by way of evidence, Mr. Vedant

Pujari has stated that he is the constituted attorney of the

plaintiff company vide power of attorney Ex.PW1/1. He has

also supported on oath the case of the plaintiff company as

set up in the plaint and has stated that the trademark

CASIO is being used by the plaintiff company since the year

1957 in respect of the calculators of various types and is a

coined word of the plaintiff company and has no obvious

meaning. He has further stated that this trademark is

associated solely and exclusively with the plaintiff-company

and also forms a key, essential and dominant part of its

corporate name and trading style. People all over the world

recognize the trademark as well as corporate name CASIO

as belonging to the Casio Group. According to the witness

CASIO calculators are being imported and marketed in India

by Casio India Company Ltd. which had sale of Rs.19.45

crores, 19.12 crores and 16.97 crores in the year 2002-

2003,2003-2004 and 2004-2005 respectively, from

calculators alone. He has further stated that the MRP of

models fx-82M, fx-350MS, fx 100MS and fx 570MS are Rs

375/-, Rs375/- , Rs545/- and Rs 615/- respectively in

India. He has claimed that the defendants are selling

counterfeit CASIO products and the price at which they are

selling these calculators is also a clear indication of their

being counterfeit products. According to him these

calculators are not of the same quality as that of the

plaintiff and a number of important features are missing

from them. He has also stated that the defendants have not

been authorized by the plaintiffs to sell CASIO calculators

and the packaging as well as labeling on their calculators is

also different from that of the plaintiff. According to the

plaintiffs, difference between plaintiffs' products and the

products of the defendants can be ascertained from a

comparison of the photographs filed in the Court.

8. Ex.PW-1/12 (Colly) are the documents evidencing

registration of the word trade mark CASIO in the name of

the plaintiff Company in respect of various products

including calculators. It is thus evident that the plaintiff is

the registered proprietor of the trade mark CASIO in India in

respect of calculators.

9. I see no reason to disbelieve the evidence of Mr.

Mahesh Kumar who was appointed as the investigator by

the plaintiff Company to carry out survey in new Lajpat Rai

Market and verify the availability of fake calculators being

sold under the trade mark CASIO. The deposition of Mr.

Mahesh Kumar coupled with the documents collected by

him would show that defendant No.1 Mr. Rakesh Sethi was

carrying business under the name and style of M/s.

M.K.Traders and he had sold one fx 350 MS and fx 82 MS

calculators to the witness for Rs.150/- each. The deposition

of the investigator coupled with the deposition of Mr. Vedant

Pujari would show that the products purchased by the

investigator from defendant No.1 were not genuine

calculators manufactured by the plaintiff company and were

in fact counterfeits products bearing the registered trade

mark 'Casio' of the plaintiff company. As stated by Mr.

Pujari, some essential features provided in the genuine

calculators manufactured by the plaintiff company are

absent in these calculators. The price at which these

products were purchased by the investigator also indicates

that they cannot be genuine CASIO products. The MRP of

fx 82 MS is Rs.375/- whereas that of fx 350 ms is Rs.375/-.

Had the product sold by defendant No.1 to the investigator

being genuine products, he could not have sold them at

Rs.150/- per calculator. The packaging and labeling of

these calculators is also different from that of the plaintiff.

It thus stands established that defendant No.1 has been

selling calculators bearing the registered trade mark CASIO

of the plaintiff company on the calculators which were not

manufactured by the plaintiff- company. He has thereby

infringed the registered trade mark of the plaintiff company.

10. The deposition of the investigator shows that he

purchased one fx 100 MS calculator from defendant No.4

Amit Sachdeva for Rs.185/-. The deposition of the

investigator and Mr. Pujari coupled with the photographs of

the calculator purchased from this defendant would show

that this calculator though bearing the trade mark CASIO of

the plaintiff company is not a genuine CASIO product and

has not been manufactured by the plaintiff company. By

selling this product, defendant No.4 has also infringed the

registered trade mark CASIO of the plaintiff company. It is

also evident from the affidavit of the investigator that

defendant No.3 Sandeep Kapoor also sold one fx-570 MS

calculator to him for Rs.190/- and also expressed

willingness to provide these calculators in large number at a

short notice. This calculator is also a counterfeit CASIO

product, as is evident from the deposition of the investigator

and Mr. Pujari. Not only certain key features of the genuine

calculator are missing from this calculator, the price at

which it had been sold is also indicative of its being a

counterfeit product. As far as defendant No.4 - Mr. Deepu is

concerned, he appears to be a partner of Kapoor Electronics

as is evident from the business card which is Annexure 'E'

to the affidavit of investigator. This business card indicates

that both Sandeep Kapoor as well as Deepu had been

carrying business under the name and style of Kapoor

Electronics, at New Lajpat Rai Market, Chandni Chowk,

New Delhi. Since the calculator was purchased from the

premises of Kapoor Electronics, both defendants No.2 & 3,

have infringed the registered trade mark of the plaintiff

company by selling a counterfeit calculator bearing the

registered trade mark CASIO of the plaintiff company.

11. The use of the trade mark CASIO on the

counterfeit calculators also amounts to passing off those

products as those of the plaintiff on account of use of the

trademark CASIO on them, the purchaser of these products

from the defendants would naturally presume them to be

genuine CASIO product manufactured by the plaintiff

company. The obvious intention of the defendants in selling

calculators bearing the trade mark 'Casio, despite the same

not being genuine product manufactured by the plaintiff

company, is to encash on the tremendous reputation and

goodwill which the brand CASIO enjoys throughout the

world including India, in respect of the calculators. It

cannot be disputed that CASIO is almost a household name

as far as the calculators are concerned and the products

manufactured by the plaintiff are considered to be highly

reliable and of superior quality. If the quality of the

counterfeit products being sold by the defendants under the

trade mark CASIO is not found to be as good as the quality

of genuine product manufactured and sold by the plaintiff

company, this is likely to dilute the brand value of the trade

mark CASIO and cause immense damage to the reputation

and goodwill which this brand enjoys in the market. The

consumer buying a fake product on the assumption that it

was a genuine product manufactured by the plaintiff

company, may, on finding the quality to be inferior, assume

that the quality of the product being manufactured and sold

by the plaintiff company has gone down and that, in turn,

may substantially impair the business interests of the

plaintiff company. Even otherwise, it is in the interest of the

consumer as well that he does not buy a fake product

bearing the trade mark CASIO in a mistaken belief that he

was purchasing a genuine product.

12. For the reasons given in the preceding paragraph, I

hold that defendants No.1 to 4 have not only infringed the

registered trade mark of the plaintiff company, but have

also passing off fake product as genuine products of the

plaintiff company.

ORDER

A decree of perpetual injunction with costs is hereby,

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

to 4 restraining them from manufacturing, selling,

promoting or advertising any calculator bearing the trade

mark CASIO or any other mark identical with or deceptively

similar to the trade mark CASIO, unless it is a genuine

calculator manufactured by the plaintiff company.

Decree sheet be drawn accordingly.

(V.K. JAIN) JUDGE JULY 26, 2011 'hk'/'sn'