Delhi High Court
M./S. Gora Mal Hari Ram Ltd. vs M/S. Ashique Exports Pvt. Ltd. on 14 November, 2011
Author: G. S. Sistani
$~04.
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 2353/2007
% Order delivered on: 14.11.2011
M./S. GORA MAL HARI RAM LTD. ..... Plaintiff
Through : Mr. Sushant Singh and Mr. P.C.
Arya, Advs.
versus
M/S. ASHIQUE EXPORTS PVT. LTD. ..... Defendant
Through
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J. (ORAL)
1. Plaintiff has filed the present suit for permanent injunction,
infringement of trade mark, damages, delivery up.
2. On the first date of hearing i.e. 30.11.2007 while granting ex parte ad
interim injunction summons in the suit and notice in the application
were issued. On 1.12.2008 the defendant entered appearance.
Thereafter written statement was filed. As none appeared on behalf
of the defendant on 4.2.2009, 25.2.2009 and 4.3.2009, defendant was
proceeded ex parte on 4.3.2009 and injunction order was made
absolute. Subsequently, I.A.No.5713/2009 was filed by the defendant
seeking recall of the order dated 14.3.2009, which application was
allowed on 14.9.2009. Thereafter on 24.5.2010 the defendant was
again proceeded ex parte. Plaintiff has filed ex parte evidence of one
Mr. Vinod Kumar, Director of the plaintiff company. Copy of the
Resolution in his favour is marked as Exhibit PW-1/1. In the said
affidavit Mr. Vinod Kumar has deposed that plaintiff is the proprietor
of the registered trade mark 555 vide registration no.11989 in Class 3
in respect of soap and detergent powder for laundry use. The said
trade mark has been continuously renewed from time to time and is
valid and subsisting in the register of Trade Mark Registry. A copy
of the trade mark registration certification in favour of the plaintiff
company has been exhibited as PW-1/2. This witness has further
deposed that registered trade mark 555 is being used by the plaintiff
uninterruptedly since the year 1924. The said trade mark enjoys an
enviable goodwill and reputation in the market on account of its
perpetual, long continuous use. The product of the plaintiff is distinct
on account of its packaging material, which is evident from the huge
sales of the said goods. It is further deposed that the said trade mark
of the plaintiff is a well known mark and is a household name with
regard to washing soap/detergent powder for washing clothes. The
annual turnover by way of sales of the company runs into crores of
rupees. The sale and advertisement figures have been exhibited as
Ex.PW-1/4. The sales figures for the years 1991-92 upto the year
2006-2007 are as under:
YEAR Sales in Cores of Rupees
1991-92 22.29
1993-94 21.87
1994-95 28.73
1995-96 28.36
1996-97 32.98
1997-98 30.76
1998-99 39.25
1999-00 57.60
2000-01 53.92
2001-02 56.81
2002-03 70.97
2003-04 67.25
2004-05 62.26
2005-06 65.70
2006-07 59.22
3. This witness has also deposed that plaintiff has incurred large
amounts on advertisements and promotion of its products in the
newspapers, televisions, hoardings, slides, radio. The expenditure
incurred on advertisement in the last fifteen years are as under:
YEAR Sales in Cores of Rupees
1991-92 47.07
1993-94 90.93
1994-95 47.60
1995-96 21.05
1996-97 37.45
1997-98 44.55
1998-99 61.01
1999-00 64.23
2000-01 76.21
2001-02 36.94
2002-03 31.11
2003-04 40.83
2004-05 41.06
2005-06 45.60
2006-07 21.26
4. It is next deposed by this witness that on account of the fact that
plaintiff has been continuously promoting its goods and business
under the trade mark 555, plaintiff has spent enormous amounts of
money on its publicity and further on account of its excellent quality
and high standards of manufacturing, the trade mark of the plaintiff
has acquired a secondary meaning which denotes the plaintiff and its
goods exclusively. A copy of the sample/packaging material has
been exhibited as Ex.PW-1/3. This witness also deposed that
defendant is engaged in manufacturing and marketing bar soaps
under the identical trade mark 555 of the plaintiff. A copy of
packaging material used by defendant has been exhibited as PW-1/5.
This witness has further deposed that defendant has filed an
application no.1019883 dated 25.6.2005 for registration of a closely
resembling mark Super Wash 555 in Class 3 in respect of Washing
Soap. The said application for the mark Super Wash 555 was
advertised in Trade Marks Journal No.1338 and was made available
in the public only on 4.5.2006. The said application was opposed by
the plaintiff by filing of notice of opposition bearing no.MAS-
230855. Copy of notice of opposition has been exhibited as Ex.PW-
1/6.
5. Learned counsel for the plaintiff submits that trade mark of the
plaintiff has become distinctive indicium of the plaintiff and the
plaintiff's said goods and business thereunder. The purchasing public
and members of the trade, associate and identify the goods of the
plaintiff with the plaintiff as the said trade mark of the plaintiff has
become synonymous with the goods and business of the plaintiff.
Counsel further submits that since the plaintiff is the proprietor of the
said trade mark both - under statutory law and under common law -
nobody can be permitted to use or deal with the trade mark 555 or
any other identical or deceptively similar trade mark and also the
essential feature in relation to the allied and cognate goods. Counsel
next submits that defendant has adopted and used the trade mark of
the plaintiff 555 out of greed and with a view to take advantage and
to confuse the members of public and, thus, defendant is guilty of
infringement of trade mark under Section 29 of Trade Marks Act.
Counsel also submits that impugned adoption of the trade mark by
defendant is dishonest, tainted, ill-motivated and with a view to
confuse and deceive public. It is submitted by learned counsel for the
plaintiff that defendant is trying to encash in on the hard built
reputation and goodwill of the plaintiff under the trade mark 555 and
wishes to ride on the goodwill of the plaintiff. Plaintiff, thus, also
prays for punitive damages.
6. Learned counsel for the plaintiff submits that numeral and alphabet
can acquire distinctiveness and status of a well known trade mark.
Counsel for the plaintiff has relied upon National Bell Company and
Gupta Industrial Corporation v. Metal Goods Manufacturing
Company Ltd. and Anr., reported at AIR 1971 898, wherein the
Apex Court had held that numerical trade mark '50' is worthy of
protection. Counsel further submits that once the plaintiff has been
able to show that trade mark 555 is a registered trade mark the
plaintiff is entitled to protection under Section 29 of Trade Mark Act.
7. Learned counsel for the plaintiff has further relied upon Kaviraj
Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical
Laboratories, reported at AIR 1965 SC 980, wherein the Apex Court
while drawing out a distinction between the infringement and passing
off has held that in case of infringement of an identical trade mark no
further question would arise to be proved by the plaintiff.
8. Learned counsel for the plaintiff has also relied upon Time
Incorporated v. Lokesh Srivastava and Anr., reported at 2005 (30)
PTC 3, wherein this Court has held that time has come when the
Court should grant punitive damages in order to teach lessons to the
law breakers who have chosen to earn on the reputation of others.
9. I have heard counsel for the plaintiff and also examined the affidavit
by way of evidence filed by the plaintiff. There is no rebuttal to the
evidence, which has been led by the plaintiff. Plaintiff has been able
to establish that trade mark 555 is a registered trade mark of the
plaintiff and defendant has adopted and used the trade mark of the
plaintiff 555 out of greed and with a view to take advantage and to
confuse the members of public and, thus, defendant is guilty of
infringement of trade mark under Section 29 of Trade Marks Act. In
the case of Hero Honda Motors Ltd. vs. 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. In
Microsoft Corporatin 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. I am satisfied that in case the
suit is not decreed there is every likelihood of deception and
confusion amongst the public. I am also satisfied that it is a fit case
for grant of punitive damages. Accordingly, plaintiff would be
entitled to punitive damages in the sum of Rs.5.00 lakhs.
10. Suit is accordingly decreed with costs. Let a decree sheet be drawn
up accordingly.
G.S.SISTANI,J
NOVEMBER 14, 2011
msr
