Delhi High Court
Greaves Cotton Limited vs Mr. Mohammad Rafi & Ors. on 3 June, 2011
Author: V. K. Jain
THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on: 25.05. 2011
Judgment Pronounced on: 03.06.2011
+ CS(OS) No. 395/2008
Greaves Cotton Limited .....Plaintiff
- versus -
Mr. Mohammad Rafi & Ors. .....Defendants
Advocates who appeared in this case:
For the Plaintiff: Mr. Saurabh Banerjee, Advocate
For the Defendant: Mr. Dinesh Mehra, Advocate
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 & mandatory
injunction, damages, rendition of accounts and delivering
up of infringing material. The plaintiff company is engaged
in the manufacture of a wide range of industrial products
including diesel engines, generating sets, agro equipments,
construction equipments and road construction
CS(OS)No. 395/2008 Page 1 of 28
equipments. It is claimed that the word/mark „GREAVES‟ is
an essential and prominent feature of plaintiff‟s trade name,
corporate name and business style and the trademark
„GREAVES‟ is the surname of the founder of the plaintiff‟s
predecessor „GREAVES COTTON AND COMPANY LIMITED‟.
Other groups companies of the plaintiff are Greaves Leasing
Finance Limited, Greaves Midwest Engineering Company
Limited, Crompton Greaves Limited, Dee Greaves Limited,
Piaggio Greaves Vehicles Limited and Greaves Farymann
Diesel GMBH. It is also alleged that „GREAVES‟ is the
principal trademark of the plaintiff company and is
exclusively associated with the products, business and
activities of the plaintiff company and its
subsidiary/associate companies. The plaintiff company
holds the following registrations in its favour:
Sl.No. Trademark Goods Class
1. Greaves Care Machines and machine tools, 7
(Label) motors (except for vehicles),
machine couplings and belting
(except for vehicles), large size
agricultural implements,
incubations (diesel generating
sets)
2. Greaves Engines Diesel oil engines (for use in 7
(Label) motor land vehicle) and parts and
fittings thereof
3. Greavespart (with Diesel oil engines (for use in 12
CS(OS)No. 395/2008 Page 2 of 28
an artistic logo of motor land vehicle) and parts and
Phoenix inside a fittings thereof
geometric device)
4. Greaves Limited Unwrought and partly wrought 6
(with an artistic common metals and their alloys,
logo of Phoenix metallic pipes and tubes, cables
inside a geometric and wires (non-electric) and parts
device) thereof
5. Greaves Engines Diesel oil engines (for use in 12
motor land vehicle) and parts and
fittings thereof
6. Greaves Parts of internal combustion 7
engines for water crafts, diamond
drill bite, diamond drilling
machines, diamond grinding
wheels and parts included in
Class 7 or internal combustion
engines, motor driven centrifugal
pumping sets, diesel driven pump
sets and steam traps.
7. Greavespart Diesel oil engines (for use in 7
motor land vehicle) and parts and
fittings thereof
2. The plaintiff company has set out the sales figures
of pumps of different descriptions during the period 2003 to
2007 as under:
(Rs. in lacs)
Model 2003-04 2004-05 2005-06 2006-07
18637 22356 21167 19885
MK12
MK25 3424 4126 3925 6628
MK20 2675 4936 6711 6348
The plaintiff company claimed to have incurred
advertising expenditure during the period 2002-03 to 2006-
07 as under:
CS(OS)No. 395/2008 Page 3 of 28
Year Advertising Expenses
(Rs. in lacs)
2002-03 9.09
2003-04 23.54
2004-05 36.47
2005-06 48.13
2006-07 51.74
3. It is alleged that defendant No.1 who is the
proprietor of defendant No.2, made an application for
registration of the trademark „GREAVES INDIA‟ claiming use
of aforesaid mark since 1.12.2004 in respect of self priming
pump, monobloc pump, jet pump, shallow well pump,
coupled pump, high head coupled pump, diesel pump,
which are exactly of the same type as the pumps of the
plaintiff company. The plaintiff company sent a legal notice
dated 26.12.2007 to the defendant No.1 calling upon it to
cease and desist from using the aforesaid mark. In his
reply, the defendant claimed to have acquired popularity
and publicity through use since 1.12.2004.
It is alleged that defendant No.1 is engaged in a
business which is similar to the business of the plaintiff
company and is dealing in products as that of the plaintiff
CS(OS)No. 395/2008 Page 4 of 28
company, the use of the aforesaid mark by the defendant
No.1 would result in causing deception in the market and is
likely to lead the purchaser to believe that the products
being sold under the marks „GREAVES INDIA‟ are
manufactured, sold and marketed by the plaintiff company
or that the use of the aforesaid mark has been
licensed/authorized by the plaintiff company.
4. The plaintiff has sought permanent injunction
restraining the defendant No.1 from manufacturing,
exporting, selling, marketing or advertising his
products/goods/services under the name „GREAVES INDIA‟
or in other name which is deceptively similar to the name
„GREAVES‟ of the plaintiff company. The plaintiff has also
sought mandatory injunction directing the defendant No.1
to withdraw its application for registration of the mark
„GREAVES INDIA‟. The plaintiff has further sought for
rendition of accounts.
5. The defendant No.1 has contested this suit. It is
alleged in the Written Statement that the defendant No.1
has been using the trademark „GREAVES INDIA‟ since
November, 2004 and has also applied for its registration. It
is also alleged that the quality, price and packaging of the
CS(OS)No. 395/2008 Page 5 of 28
products of the defendant No.1 are entirely different from
that of the plaintiff company and the same are clearly
distinguishable by the consumers. It is also claimed that
the trademark of the defendant is altogether different from
trademark of the plaintiff company.
6. The following issues were framed on the pleadings
of the parties:
1. Whether the plaintiff is the registered owner of
the trademark „GREAVES‟? - OPP
2. Whether the defendants have been using the
trademark „GREAVES INDIA‟ since December,
2005 and if so, its effect? - OPD
3. Whether the defendants had any right to adopt,
use and apply for the registration of the
impugned mark „GREAVES INDIA‟? - OPD
4. Whether the defendants are guilty of
infringement and passing off its product as
those of the plaintiff by choosing a mark which
incorporates the plaintiff‟s registered trademark
„GREAVES‟? - OPP
5. Whether the plaintiff is entitled to rendition of
accounts and damages, if so, to what extent? -
OPP
6. Relief.
Issue No. 1
CS(OS)No. 395/2008 Page 6 of 28
7. Exh. PW-1/5 to PW-1/9 are various registrations
in favour of the plaintiff company. Vide certificate Exh. PW-
1/5 the mark „GREAVES CARE‟ (LABEL) has been registered
in Class 7 in respect of Machines and Machine tools, Motors
(Except for vehicles), machine couplings and belting (except
for vehicles), large size agricultural implements, incubators
(diesel generating sets); vide certificate Exh. PW-1/6, the
mark „GREAVES‟ has been registered in Class 7 in respect
of parts of internal combustion engines for water-crafts,
diamond drill bits, diamond, truers and dressers, diamond
drilling machines, diamond grinding wheel and parts
included in Class 7 of internal combustion engines motor
driven centrifugal pumping set, diesel driven pumps sets
and steam taps; vide certificate Exh. PW-1/7, the mark
„GREAVES-ENGINES‟ has been registered in Class 12 in
respect of Diesel oil engines (for use in motor land vehicles)
and parts and fittings thereof included in Class 12; vide
certificate Exh. PW-1/8, the mark/label bearing the name of
„GREAVES COTTON & CO. LTD.‟ has been registered under
Class 7 in respect of diesel oil engines (not for use in Motor
Land Vehicles) and parts and fittings thereof included in
Class 7 and vide certificate Exh. PW-1/9, the mark/label of
CS(OS)No. 395/2008 Page 7 of 28
„GREAVESPART‟ has been registered under Class 12 in
respect of Diesel Oil Engines (for use in Motor Land
Vehicles) and parts and fitting thereof included in Class 12.
Thus, the plaintiff company is the registered
proprietor of the aforesaid trademarks. The issue is decided
accordingly.
Issues No. 2 to 4
8. These issues are interconnected and can be
decided together. In his affidavit by way of evidence, the
defendant No.1 Mr. Mohammad Rafi (DW-1) has stated that
his products are entirely different and are not in any
manner related or connected with the consumer class of the
plaintiff company. He further stated, that the term
„GREAVES‟ itself is not sufficient to make the mark
„GREAVES INDIA‟ deceptive and confusing. He also stated
that he is also making motor pumps in the name of „POWER
FLOW‟ and he has already applied for registration of the
trademark „GREAVES INDIA‟. He claimed that he has
stopped sale and marketing of products under the trade
name GREAVES INDIA after the injunction.
In his cross examination, he admitted that he used
to manufacture and trade in self priming pump, monobloc
CS(OS)No. 395/2008 Page 8 of 28
pump, jet pump, shallow well pump, coupling pump, high
head pumps, diesel pumps under the trade name
„GREAVES INDIA‟, though he stopped using the aforesaid
mark after injunction by this Court.
9. PW-1 Mr. Vinod Kumar Agarwal, who is the only
witness produced by the plaintiff company has stated in his
affidavit by way of evidence that „GREAVES‟ is the principal
trademark of the plaintiff and is exclusively associated with
its product and its business activities. He has further
stated that the goods manufactured by the plaintiff under
the trademark „GREAVES‟ are offered for sale in every part
of the country and also exported to several other countries.
According to him, the plaintiff company besides other
products also manufactures engines, sold under the model
name MK-12, MK-20 & MK-25. MK-12, according to the
witness, is a pump being assembled with various models of
None Self Priming pumps (monobloc and coupled) and is
also being used with many other applications whereas MK-
20 is a single cylinder, air cooled engine, being assembled
with various models of Non Self Priming pumps (monobloc).
According to him MK-25 is a single cylinder, air cooled
engine and this engine is also being coupled with Self
CS(OS)No. 395/2008 Page 9 of 28
Priming Pumpset and is being used for other applications as
well. He has stated that the plaintiff company had sale of
Rs. 18637 lac, Rs. 22356 lac, Rs. 21167 lac, Rs. 19885 lac
for MK 12 Pumps, Rs. 3424 lac, Rs. 4126 lac, Rs. 3925 lac,
Rs. 6628 lac for MK 25 and Rs. 2675 lac, Rs. 4936 lac, Rs.
6711 lac, Rs. 6348 lac for MK-20 Pump for the years 2003-
04, 2004-05, 2005-06 & 2006-07 respectively. According to
him the plaintiff company incurred advertising expenditure
of Rs. 9.09 lac, Rs. 23.54 lac, Rs. 36.47 lac, Rs. 48.13 lac &
Rs.51.74 lac for the years 2002-03, 2003-04, 2004-05,
2005-06 & 2006-07. He has further stated that the
defendant No.1 in his application seeking registration of
trademark „GREAVES INDIA‟ has claimed use of the
aforesaid mark in respect of self priming pumps monobloc
pump, jet pump, shallow well pump, coupled pump, high
head coupled pump, diesel pump, which are exactly of the
same type as are the pumps of the plaintiff company.
10. 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
CS(OS)No. 395/2008 Page 10 of 28
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.
11. 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
CS(OS)No. 395/2008 Page 11 of 28
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.
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.
CS(OS)No. 395/2008 Page 12 of 28
The question has to be approached from the point of view of
a man of average intelligence and imperfect recollection.
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.
CS(OS)No. 395/2008 Page 13 of 28
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, 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
CS(OS)No. 395/2008 Page 14 of 28
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
CS(OS)No. 395/2008 Page 15 of 28
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.
13. 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.
14. 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
CS(OS)No. 395/2008 Page 16 of 28
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.
15. 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.
16. The learned Counsel for the plaintiff has relied
upon Ruston & Hornsby Ltd. vs. Zamindara Engineering
Co. PTC (Suppl.) (1) 175 (SC) and KSB Aktiengesellschaft
& Ors. vs. KSB Global Limited 2011 (45) PTC 103 (Del.)
whereas the Counsel for the defendant has relied upon
K.Narayanan & Anr. vs. S.Murali (2008) 10 SSC 479.
In the case of K.R.Narayanan (supra), it was held
that a mark ought to be registered, before a person can
claim its infringement, and a proposed registration, which
may or may not be granted, does not confer a cause of
action to the person who has applied for its registration. I
fail to appreciate how this judgment can be of any help to
the defendant No.1 when the mark "GREAVES" and
"GREAVES (Label)" are already registered in favour of the
plaintiff company in various classes including Class 7,
which includes centrifugal pump sets and diesel driven
pump sets.
In KSB Aktiengessellschaft (supra), the plaintiff
company was using "KSB" as part of its corporate name.
Plaintiff No. 2 in that case was also exporting goods under
the trademark "KSB" and/or under the trade name "KSB" &
Logo. The defendant was using "KSB" as a part of its trade
name. It was contended on behalf of the defendant that no
infringement was made out on its part as it was using the
words "Global Limited" as suffix to the word "KSB". The
contention was however, rejected by this court noticing that
the parties were in similar line of business and holding the
rival marks were deceptively similar. The Court felt that a
lay consumer could by association relate the origin of
defendant‟s goods to that of the plaintiff.
17. In Ruston & Hornsby Ltd. (supra), the appellant
was registered proprietor of trade mark "RUSTON" in Class
7 in respect of the diesel internal combustion engines. The
respondent was found using the trademarks "RUSTAM" and
„RUSTAM INDIA". The High Court held that use of the word
"RUSTAM" by the respondent constituted infringement of
"RUSTOM INDIA" on the ground that the plaintiffs products
were manufactured in England whereas the defendant was
manufacturing them in India and the suffix "INDIA" would
be a sufficient warning that the engines sold was not a
"RUSTON" engine manufactured in England. Setting aside
the decision of the High Court, Supreme Court held that if
the respondent trade mark „RUSTOM" was deceptively
similar to that of the appellant‟s trade mark "RUSTON", the
mere addition of word "INDIA" to the respondent‟s trade
mark was of no consequence and the appellant was entitled
to succeed in its action for infringement of trade mark.
18. As noted earlier, the defendant No.1 himself has
admitted in his cross examination that he was
manufacturing monoblock pumps, jet pumps, shallow well
pumps, coupling pumps, high head pumps, and diesel
pumps under the trade name „GREAVES INDIA‟. It has also
come in deposition of PW-1, that the defendants are
manufacturing self priming pump, monobloc pump, jet
pump, shallow well pump, coupled pump, high head
coupled pump, diesel pump etc. and in his application for
registration also the defendant No.1 has claimed use of the
mark "GREAVES INDIA" in respect of the above referred
products which according to PW-1 are exactly of the same
type as are the pumps of the plaintiff company. It thus,
stands proved that the mark "GREAVES INDIA" is being
used by the defendant No.1 in respect of the same products
for which the mark Greaves is being used by the plaintiff
company. The defendant before this Court has thus, been
manufacturing and selling the same product under the
trade name "GREAVES INDIA", which the plaintiff company
has been manufacturing and selling under its registered
trade mark "GREAVES". By using the word "GREAVES
INDIA" the defendant No.1 lifted and adopted the whole of
the registered trademark of the plaintiff company, thereby
causing infringement of that trade mark. Mere use of the
word "INDIA" would make no difference since the word
"GREAVES" is not only an essential but also the main
component of the trademark "GREAVES INDIA" being used
by the defendant No.1. Use of the word "INDIA" as a suffix
and not as a prefix is also a strong indicator that the
defendant No.1 wanted to encash upon the popularity,
goodwill and reputation of the word "GREAVES" engines not
only in India but in many other countries. In fact had the
defendant No.1 used the word "INDIA" as prefix even that,
in my view would have constituted infringement, in facts
and circumstances of this case. It would be pertinent to
note here that the defendant No.1 has not given any reason
or explanation for use of the word "GREAVES" which is the
most essential component of his trademark. During cross
examination, he could not even give any meaning to the
word "GREAVES". This clearly shows that the adoption of
the word "GREAVES" by the defendant was dishonest,
actuated with the intention to encash upon the tremendous
reputation which the registered trademark of the plaintiff
enjoys in the market. It would also be appropriate to note
here that "GREAVES" is not a dictionary word and is alleged
to be the surname of the founder of the plaintiff company.
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.
19. It also in interest of the consumer that a well
established brand such as "GREAVES" is not to be allowed
to be used by another person. A person purchasing
pumping sets being sold by the plaintiff company under the
name "GREAVES", when he comes across the product of the
defendant No.1 being sold under the trade name "GREAVES
INDIA", on account of imperfect recollection and his not
having the product of the plaintiff with him at that time,
may form an impression that both the products emanate
from the same source and that is why both of them are
using the word "GREAVES" for selling similar products.
This may cause confusion in the minds of the consumers.
Also, if the quality of the product of the defendant No.1 is
not found to be as good as the quality of the product of the
plaintiff, the consumer may feel cheated; he having paid the
price which the product of the plaintiff commands in the
market and he may also form an opinion that the quality of
the product of the plaintiff had gone down and that is why
the product purchased by him was found to be of inferior
quality.
For the reasons given in the preceding paragraphs,
the plaintiff is entitled to injunction against use of the
trademark "GREAVES" by the defendant No.1. The plaintiff
is also entitled to mandatory injunction directing the
defendant No.1 to withdraw his application submitted to
trade mark registry for registration of the mark "GREAVES
INDIA". The issues are decided against the defendant No.1
and in favour of the plaintiff.
20. The relief of delivery up of infringing material was
not pressed during the course of arguments. The learned
counsel for the plaintiff, however, insisted on award of
punitive compensatory damages.
In Time 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 the
case of Hero Honda Motors Ltd. V. Shree Assuramji
Scooters, 2006 (32) PTC 117 (Del), 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.
21. 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.
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. The issues are
accordingly decided in favour of plaintiff and against the
defendant No. 1.
In view of my finding on other issues, the plaintiff
is entitled to injunction and damages as stated above in this
judgment.
ORDER
A decree for perpetual injunction is hereby passed
restraining the defendant No.1 from manufacturing selling,
offering for sale advertising or promoting any self priming
pump, monobloc pump, jet pump, shallow well pump,
coupled pump, high head coupled pump, diesel pump under
the trade mark "GREAVES INDIA" or any other mark which
is identical or deceptively similar to the registered
trademark „GREAVES" of the plaintiff. A decree for
mandatory injunction is also passed directing the defendant
No.1 to withdraw its application No. 1387589, submitted by
it to trademark registry for the registration of the trademark
"GREAVES INDIA", within six weeks. A decree for damages
amounting to Rs.1 lac is also passed in favour of the
plaintiff and against defendant No.1. The defendant No. 2 is
not a legal entity and is only a trade name adopted by
defendant No.1. Hence, the suit against defendant No.2 is
dismissed. If the amount or damages is not paid within six
weeks, the plaintiff will also be entitled to pendente lite and
future interest @ 6% p.a. on the amount of damages. The
plaintiff will also be entitled to proportionate cost of the suit.
(V.K. JAIN)
JUDGE
JUNE 03, 2011
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