M/S Mahashian Di Hatti Ltd. vs Mr. Raj Niwas, Proprietor Of Mhs ...
2011 Latest Caselaw 2378 Del

         THE HIGH COURT OF DELHI AT NEW DELHI

%                    Judgment Reserved on:   27.4.2011
                     Judgment Pronounced on: 04.05.2011

+           CS(OS) No. 326/2009

M/S MAHASHIAN DI HATTI LTD.                     .....Plaintiff

                            - versus -

MR. RAJ NIWAS, PROPRIETOR OF MHS MASALAY
                                   .....Defendant

Advocates who appeared in this case:
For the Plaintiff:      Ms. Kiran Suri, Mr. Purvesh
                        Buttan and Ms. Aparna Mattoo,
                        Advs.
For the Defendant:      None.

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

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 reported Yes in Digest?

V.K. JAIN, J

1. This is a suit for permanent injunction, damages

and delivery up of infringing material.

The plaintiff company is engaged in the business of

manufacturing and selling "spices & condiments", which are

being sold under its registered logo (comprising „MDH‟

within three hexagon device, on red colour background).

The plaintiff claims to be using the aforesaid logo trademark

since 1949 in respect of various spices titles as "Kashmiri

Mirch", "Kasoori Methi", "Meat Masala", "Chat Masala",

"Sambar Masala", "Kitchen King" and "Khushbudar

Masala".

2. The aforesaid logo trademark is registered in the

name of plaintiff company since 31st May, 1991 and the

plaintiff company claims its use throughout the world. This

is also the case of the plaintiff company that on account of

long, continuous and extensive sale, sale promotion and

wide publicity given to the products under the aforesaid logo

and excellent quality of the products, the plaintiff company

enjoys tremendous goodwill and reputation not only in India

but worldwide, in respect of the goods sold under its

registered logo trademark. The plaintiff company claims

sale of Rs. 181,90,67,134/-, Rs.217,24,30,303/- and

Rs.252,79,37,137/- and advertisement and publicity

expenses of Rs.10,56,00,000/-, Rs.12,34,00,000/- and

Rs.9,14,57,886/- in the years 2005-06, 2006-07 and 2007-

08 respectively. During this period, the plaintiff company

claims sales of Garam Masala, Chana Masala, Meat Masala,

Kitchen King and Haldi powder weighing 2960748 Kg.,

3931290 Kg., 2359890 Kg., 3798234 Kg and 1467072 Kg

respectively.

3. The defendant has been using a logo „MHS‟ within

hexagen device with red colour background on carton is

alleged to be similar to those being used by the plaintiff

company. The case of the plaintiff is that this is being done

with the sole intention to pass off the goods of the defendant

as those of the plaintiff and amounts to not only

infringement of its registered trademark but also passing off

the goods of the defendant as those of the plaintiff. This is

also the case of the plaintiff that the defendant had no

justification for adopting the alphabets „MHS‟ with hexagen

device with red colour background and the use of the

aforesaid mark by the defendant is likely to cause confusion

and deception as the goods of the defendant are likely to be

purchased by the consumer in a mistaken belief that they

are the goods of the plaintiff company or its affiliate and the

public is likely to be deceived as regards the source of the

goods. The plaintiff company has accordingly sought an

injunction restraining the defendant from using the

infringing logo „MHS‟ or any other trademark identical with

or deceptively similar to plaintiff‟s registered trademark

„MDH‟ logo. It has also sought injunction restraining the

defendant from passing off its goods as those of the plaintiff

besides seeking destruction of the infringing material and

damages amounting to Rs.20 lakhs.

4. The defendant filed written statement contesting

the suit and took preliminary objection that the suit is not

maintainable since he had applied for registration of the

trademark „MHS‟ and there was no objection from the

plaintiff with respect to the aforesaid registration. On

merits, it is stated that the trademark „MDH‟ logo has no

similarity with the logo of the defendant since „MDH‟ and

„MHS‟ sound differently. It is also claimed that the letters

„MHS‟ denote the first names of the family members of the

defendant. „M‟ stands for the name his late father Shri

Meghram, „H‟ and „S‟ stand the name of his sons

Hanshuman and Saurabh. It is also pointed out that the

defendant is using a pretty girl for advertising its products

whereas the plaintiff is using Mr. Mahashey Ji himself, who

is aged about 85 years. It is further alleged that the

defendant has been advertising its products for the last two

years without any protest from the plaintiff.

5. A perusal of the record shows that on 27th March,

2009 defendant appeared in the Court along with his

counsel and stated that he would not use the impugned

mark „MHS‟ logo in respect of spices, condiments

manufactured and marketed by him and was ready to suffer

a decree for injunction against him. Learned counsel for the

plaintiff took adjournment for visiting the business premises

of defendant to take possession of the infringing packing

material and dyes and then to move a joint compromise

application. On 4th May, 2009, the learned counsel for the

defendant took an adjournment to call the defendant for

recording his statement in terms of the compromise

suggested by defendant itself on 27 th March, 2009.

However, on 18th May, 2009, the defendant was represented

by another counsel, who stated that defendant was not

ready for any settlement. When this matter was taken up

on 22nd November, 2010, his counsel stated that in fact

defendant might not be willing even to contest the suit and

might admit the claim of the plaintiff. It was directed that

in case the defendant remains present in Court on the next

date of hearing, he need not pay costs of Rs.10,000/- ,

which was imposed on him on that day, on account of his

failure, to file documents, though it was incorrectly typed in

the proceedings that a last opportunity was being given to

defendant to file written statement within four weeks,

subject to payment of Rs.10,000/- as costs. In fact, the

cost was imposed on account of failure of the defendant to

file documents and another opportunity to file documents

was given to him, subject to payment of Rs.10,000/- as

further costs. It would be pertinent to note here that a costs

of Rs.3000/- imposed on the defendant on 25 th February,

2010 had also not been paid. When the matter was taken

up on 4th February, 2011, it was noticed that defendant had

not paid costs amounting to Rs.13,000/- and he was given

one last and final opportunity to pay the costs within two

weeks failing which the written statement filed by him was

to stand rejected on account of non-payment of costs. The

written statement filed by the defendant stands rejected for

non-payment of costs.

6. The plaintiff examined Mr. Sanjeev Bhardwaj by

way of ex-parte evidence. In his affidavit, Mr. Bhardwaj has

affirmed on oath the case set up in the plaint and has

stated that „MDH‟ logo was adopted by the plaintiff company

in the year 1949 on an international level and is being used

by it for selling „species & condiments‟ under various titles

such as "Kashmiri Mirch", "Kasoori Methi", "Meat Masala",

"Chat Masala", "Sambar Masala", "Kitchen King" and

"Khushbudar Masala". He has further stated that for the

last many years, large quantity of its products is being sold

by the plaintiff company throughout the world under the

trademark „MDH‟ logo either itself or through its affiliated

companies. He has further stated that „MDH‟ logo of the

plaintiff company has been extensively advertising in the

newspapers as well as on television and has become a

household name not only in India but also in Dubai, United

Kingdom, USA, European countries and Pakistan.

According to him, the plaintiff company had sale of Rs.

181,90,67,134/-, Rs.217,24,30,303/- and

Rs.252,79,37,137/- and advertisement and publicity

expenses of Rs.10,56,00,000/-, Rs.12,34,00,000/- and

Rs.9,14,57,886/- in the years 2005-06, 2006-07 and 2007-

08 respectively. He claims that the plaintiff company came

to know about the logo adopted by the defendant when the

newspaper Vyapar Kesar dated 26th December, 2008 was

brought to its notice.

7. Ex.PW-1/3 is the certificate of registration of

trademark logo „MDH‟ in favour of the plaintiff company in

Class 30 in respect of saffron (seasoning). Ex. PW-1/8 is

the certificate of registration of the label/packaging bearing

the logo „MDH‟ of the plaintiff company being used in Jal

Jeera masala. Ex.PW-1/9 is the registered packaging of the

plaintiff bearing the logo „MDH‟ being used in respect of Pav

Bhaji masala. Ex.PW-1/10 is the registered label/packaging

using the logo „MDH‟ for selling Chana masala. Ex.PW-1/11

is the registered label/packaging of the plaintiff bearing the

aforesaid logo, being used for selling Chunky Chat masala.

Ex.PW-1/13 is the registered label/packaging of the plaintiff

in respect of Tava Fry stuffed vegetables masala bearing the

aforesaid logo. Ex.PW-1/14 is the registered

label/packaging of the plaintiff in respect of Pani Puri

masala. Ex.PW-1/15 is the registered label/packaging of the

plaintiff in respect of Dal Makhani masala. Ex.PW-1/16 is

the registered label/packaging of the plaintiff in respect of

Shahi Paneer masala.

8. 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.

9. 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.

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 thus settled proposition of law that in order to

constitute infringement the impugned trademark need not

necessarily be absolutely identical to the registered

trademark of the plaintiff and it would be sufficient if the

plaintiff is able to show 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. No person can be allowed to sell

goods either using the mark of another person or its

imitation, so as to cause injury to that person and thereby

enrich himself at the cost of a person who has spent

considerable time, effort and money in building the brand

reputation, which no amount of promotion or advertising

can create unless the quality of the goods being sold under

that brand is also found to be good and acceptable to the

consumer. 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.

13. The logo „MDH‟ in three hexagons written in white

colour on red colour background is an integral part of the

registered mark/cartons of the plaintiff company in respect

of various spices and condiments. The plaintiff is an

established and well-reputed manufacturer and marketer of

spices being sold using the aforesaid logo. It is settled

proposition of law that in order to ascertain whether the

impugned trademark constitutes infringement mark of the

plaintiff or not, the two marks are not to be placed side by

side. The person coming across the product of the

defendant, bearing the impugned trademark may not

necessarily be having the product of the plaintiff bearing his

registered trademark with him when he comes across the

product of the defendant with the mark „MHS‟ logo. This is

more so in the case of an average Indian citizen who may

not necessarily be well-educated. This proposition of law

would apply with a greater force in case of products like

spices which normally are purchased by housewives and

domestic helps, who may not care to notice the features

which distinguish the trademark of the defendant from that

of the plaintiff. Therefore, if on coming across the product of

the defendant bearing the impugned trademark, he forms

an impression that this could be the product of the plaintiff,

it may induce, on account of overall similarity of the two

trademarks, him to believe that the product which he has

come across was, in fact, the product of the plaintiff or had

some kind of an association or connection with the plaintiff.

14. A comparison of the logo of the plaintiff along with

the logo of the defendant would show the following

prominent similarities:

(a) The defendant has used three hexagons for writing

three different letters as has been done by the plaintiffs in

writing the letters „MDH‟.

(b) The letters „MHS‟ have been written in white colour

and so are the letters „MDH‟

(c) The background colour used by the defendant for

writing the letters „MHS‟ is red and so is the background

colour used by the plaintiffs.

(d) There is a white border on the hexagons of the

plaintiffs and the same is the position in respect of the

hexagons being used by the defendant.

(e) The shape of the letters used by the defendant for

writing „MHS‟ is identical to the shape of the letters used by

the plaintiff for writing the letters „MDH‟.

Thus, the trademark being used by the defendant

is visually similar to the trademark being used by the

plaintiff. Though phonetically, there may not be much

similarity in the two trademarks on account of use of the

letter „S‟ in place of „D‟ and re-arrangement of the letters.

The last letter in the trademark of the plaintiff is „H‟,

whereas it has been made second letter in the trademark of

the defendant. The last letter in the trademark of the

plaintiff is „H‟, whereas it is „S‟ in the trademark of the

defendant. However, considering the strong visual

similarity, rather weak phonetic similarity, would not be of

much consequence and would not permit the defendant to

use the logo being presently used by him.

15. Admittedly, both the parties are engaged in the

similar business as both of them are manufacturing and

selling spices. Therefore, the defendant, in my view, has

infringed the registered trademark of the plaintiff by using

the aforesaid logo „MHS‟. The adoption and use of the letters

„MHS‟ in the manners stated above appears to be deceptive

intended to confuse the consumer and encash upon the

goodwill which plaintiff‟s trademark „MDH‟ enjoys in the

market.

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

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

respondents had 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.

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

well-established brand such as „MDH‟ or its colourable

imitation, as is made out from the manner in which the logo

„MHS‟ has been used by the defendant, should not be

allowed to be used by another person in such a deceptive

manner. The consumer, on account of the confusion

created in his mind, from use of the logo „MHS‟ in the

manner it has been used by the defendant may end up

purchasing the product of the defendant believing the same

to be that of the plaintiff. If the quality of the product of the

defendant is found to be inferior to that of the products of

the plaintiff that would result not only in diminishing the

brand value which plaintiff‟s trademark „MDH‟ enjoys in the

market, but would also be detrimental to the interest of the

consumer. Considering the manner in which the trademark

„MHS‟ has been used by the defendant, the defendant will be

able to pass off his case as those of the plaintiff. Therefore,

the act of the defendant constitutes not only infringement,

but also the passing off.

18. Though the defendant has claimed that there was

no protest from the plaintiff when he applied for registration

of the trademark „MHS‟, this is found to be incorrect since

the plaintiff did file Notice of Opposition, a copy of which

has been filed by it. Hence, it cannot be said that the

plaintiff has acquiesced in the use of the trademark „MHS‟

by the defendant or has otherwise condoned the use in any

manner. As regards use of a pretty girl by the defendant for

advertising its products as against Mr Mahashyaji himself

appearing in the advertisement of the plaintiff, I am of the

view that it would be of no consequence considering the

similarities in the two trademarks used on their respective

cartons.

During the course of arguments, the learned

counsel for the plaintiff pressed not only for injunction, but

also for grant of punitive damages though no other relief

was pressed by her.

19. In the case of 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.

20. 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.

21. 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 off 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.

22. For the reasons given in the preceding paragraphs,

the defendant is hereby restrained from manufacturing,

selling or marketing any spices or condiments using the

impugned logo „MHS‟ or any other trademark which is

identical or deceptively similar to the registered logo

trademark „MDH‟ of the plaintiff. The plaintiff is also

awarded punitive damages amounting to Rs 1 lakh against

the defendant.

Decree sheet be drawn accordingly.

(V.K. JAIN) JUDGE MAY 04, 2011 bg