M/S. Eicher Goodearth Ltd. & Anr. vs American Automobiles & Ors.
2011 Latest Caselaw 5754 Del

*    IN THE HIGH COURT OF DELHI AT NEW DELHI


+     CS(OS) 1213/2003 and IA Nos.6470/2003 (under Order
      XXXIX Rules 1 and 2 CPC) and 13395/2010 (under Order IX
      Rule 13 read with Section 151 CPC)


M/S. EICHER GOODEARTH LTD. & ANR.        ..... Plaintiffs
              Through: Ms. Prathiba M. Singh, Ms. Archana
                       Sahadeva and Ms. Chandrika Gupta,
                       Advocates.

             versus

AMERICAN AUTOMOBILES & ORS.             ..... Defendants
            Through: Defendant No.1 is ex parte.

%                       Date of Decision : NOVEMBER 28, 2011

CORAM:
HON'BLE MS. JUSTICE REVA KHETRAPAL

                        ORDER (ORAL)

: REVA KHETRAPAL, J.

1. The plaintiffs have filed the present suit for permanent

injunction seeking to restrain acts of infringement of its trademark

"EICHER", copyright in the packaging, passing off, acts of unfair

competition, dilution, damages, rendition of accounts of profit,

delivery up, etc. against the defendant Nos.1 to 3.

2. The plaintiff No.1 - M/s. "EICHER" Goodearth Ltd. is the

parent/promoter Company of the "EICHER" Group of Companies.

The plaintiff No.2 was promoted by the plaintiff No.1 in the year 1986

in technical and financial collaboration with Mitsubishi Motors

Corporation of Japan for the manufacture of commercial vehicles (in

the light, medium and heavy segment) at Pitampur in Madhya

Pradesh. The Memorandum of Association of the plaintiff No.2

Company is Ex.PW1/3.

3. The present suit relates to the misuse of the well-known and

registered trade mark of the plaintiff "EICHER" by the defendants as

also of the registered logo of the plaintiffs and their packaging in

relation to motor parts. It is alleged that the products being sold by

the defendants are such an identical reproduction that it is almost

impossible at first sight to distinguish between the genuine and the

counterfeit products. In fact, the products marketed/ manufactured

by the defendants are an exact replica of the plaintiffs' products. The

defendants have copied the mark "EICHER", the logo of the plaintiffs,

the writings on the product packaging, the mascot of the plaintiffs'

product, and, in fact, the defendants have reproduced each and every

feature of the plaintiffs' product packaging.

4. On completion of the pleadings of the parties, the following

issues were framed by this Court (Hon'ble Mr. Justice Swatanter

Kumar) for adjudication:-

"1) Whether the use of the Trademark "EICHER" by the defendants constitutes infringement of the registered trademark "EICHER" belonging to the plaintiffs? OPP

2) Whether the use of the trademark "EICHER" by the defendants in identical carton, packaging, trade dress for identical products is bound to lead to confusion and deception amongst the customers in the market and hence lead to passing of and acts of unfair competition? OPP

3) Whether the carton/packaging used by the defendants is identical to that of the carton/packaging of the plaintiffs and hence results in infringement of copyright of the plaintiffs? OPP

4) Whether the use of words "EICHER" or any other mark deceptively similar and use of identical packaging by the defendants results in dilution of the brand equity of the plaintiffs' mark? OPP

5) Whether the plaintiffs are entitled to a decree for rendition of accounts? If so, to what effect and to what extent? OPP

6) Whether the plaintiff is entitled to damages as stated in the plaint? OPP

7) Relief."

5. At the outset, it may be mentioned that a settlement was arrived

at between the plaintiffs and the defendant No.2 and by an order dated

05.03.2010 passed by this Court (Hon'ble Mr. Justice S. Ravindra

Bhat), the suit was decreed against the defendant No.2. Further, in

view of the undertaking furnished by the defendant No.3, the instant

suit by an order dated 22.11.2010 was decreed qua the defendant No.3

as well. The defendant No.1 was proceeded ex parte by order dated

14th July, 2011 and hence the present suit is being pressed only qua

defendant No.1.

6. The defendant No.1 - American Automobiles carries on

business for profit and gain by manufacturing and selling auto parts

like fuel filters and oil filters in a packaging which, as stated

hereinabove, the plaintiffs allege is an exact replica of the plaintiffs'

product packaging. The fuel filters are packed in cartons and the oil

filters in polybags. Allegedly, the logos and devices used on both are

identical as also the manner of writing of the mark. Allegedly also,

the colour combination is also identical.

7. The plaintiffs further allege that it is in the month of April, 2003

that the plaintiffs acquired knowledge that the defendants No.1 to 3

were manufacturing/marketing automobile parts like oil filters, fuel

filters, gear lever bushing kit and other automobile parts under the

mark "EICHER" with an identical packaging.

8. In order to substantiate their case, the plaintiffs led their

evidence by way of affidavit of Mr. Vijay Bhatt, Deputy Manager-

Legal in the plaintiff No.1 Company - Ex.PW1/A.

9. PW1 Mr. Vijay Bhatt proved on record the Power of Attorneys

dated 26.05.2003 authorizing him to do all acts in relation to the

present case on behalf of the plaintiff Nos.1 and 2, which are exhibited

as Ex.PW1/1 and Ex.PW1/2 respectively. A certified copy of the

Memorandum of Association of the plaintiff No.2 Company was

proved by him as Ex.PW1/3. He stated on oath that the plaintiff No.1

and the plaintiff No.2 are part of the "EICHER" Group of companies

popularly known as the "EICHER" Group, which was started in 1959

and proved on record the profile of the "EICHER" Group as

Ex.PW1/4. He stated that the "EICHER" Group is a significant

player in the Indian automobile industry with an annual turnover of

`14,732 million in the financial year 2002-03. "EICHER" Group has

multi-product business interests in manufacturing and marketing of

tractors, light and heavy commercial vehicles, automotive gears,

motorcycles, generating sets, diesel engines; and in exports of

vehicles, aggregates, garments, components, accessories and spare

parts business and management services,. "EICHER" Group has over

4,300 employees located in nine manufacturing facilities and thirty

three marketing offices all around the country. The Group's products

are brought to the customers through its network of over 800 dealers

and distributors and 900 vendors spread throughout the country.

10. PW1 Mr. Vijay Bhatt further deposed that the trademark

"EICHER", word per se was adopted by the plaintiff in the year 1959.

The word "EICHER" does not have any dictionary meaning and on

account of its long, continuous and extensive use since adoption has

become indelibly associated with the goods and business of the

plaintiffs as well as the whole "EICHER" Group. The word

"EICHER" is the most important and conspicuous feature of the trade

name/trading style of the plaintiffs and their associated Group

companies. Further, the word "EICHER" is the only trade name

and/or house mark by the plaintiffs and its Group of Companies in

respect of the various goods and services provided by them.

11. It also emerges from the testimony of the aforesaid witness that

the plaintiff No.1 and its Group Companies carry on business under

the trademarks and trade names in which the word "EICHER" forms a

prominent part. The plaintiff No.1 is the proprietor of the registered

trademark "EICHER" and all the Group Companies use the said mark

by virtue of authorization/licence from the plaintiff No.1. The mark

"EICHER" has been registered in India and abroad under various

classes. The "EICHER" logo is also registered with the Copyright

Office in India. The details of the trademark registrations and

copyright registrations of the plaintiffs have been proved on record by

PW1 as Ex.PW1/6 and Ex.PW1/7. According to the said witness, the

plaintiffs have also registered their trademark with some overseas

countries, namely, Tanzania (Zanzibar), Tanzania (Tanganyika),

South Africa, Zimbabwe and Kenya.

12. According to PW1 Mr. Vijay Bhatt, the exports of the plaintiffs

over the years have been to various countries including, inter alia,

UK, USA, Austria, Canada, Bangladesh, Nepal, Indonesia, Kenya,

UAE, Bahrain, South Africa, Nigeria, Mauritius, Poland, Zambia, Sri

Lanka, Singapore, Saudi Arabia, Holland, Syria, Oman, Maldives,

Sudan and many other countries. Thus, the plaintiffs are earning

precious foreign exchange for the country. The reputation of the

plaintiffs and their Group Companies is not confined to the boundaries

of our country but has earned a worldwide reputation as well.

13. As per the plaintiffs' witness (PW1), the defendants are using

an identical packaging, identical colour combination and identical

writings on the packaging. The cartons/polybags of the defendants are

so similar to the plaintiffs' cartons/polybags that even from a close

look at the infringing products it is impossible to differentiate between

the defendants' and the plaintiffs' products. The intention of the

defendants' is completely dishonest and is a deliberate attempt to pass

off their products as those of the plaintiffs', to make use of the

plaintiff's goodwill and reputation. The absolute dishonesty of the

defendants is further evident from the fact that the defendants have

even printed the 3D hologram on their cartons/polybags which is a

mark of genuineness of the product along with the quote, "Spurious

spares are injurious to the health of your vehicle". The chances of

confusion are further aggravated from the fact that even the product

inside the cartons/polybags of the defendants is an exact replica of the

plaintiffs' product and it would be impossible for any consumer to

differentiate between the two products. In this context, the plaintiffs'

product carton (Ex.PW1/8) and the plaintiffs' poly pouch (Ex.PW1/9)

and the defendant No.1's product carton (Ex.PW1/10) and poly pouch

(Ex.PW1/11) placed on record were proved by the witness. In order

to demonstrate the similarity between the plaintiffs' and the defendant

No.1's product cartons and poly pouches, the witness in his affidavit

by way of evidence tabulated the similarities as follows:-

           PLAINTIFFS'               DEFENDANT NO.1'S
           CARTON                    CARTON
               Light Blue base            Light Blue base



            Picture of the Mascot      Picture of the Mascot
           Master Mechanic, Raju      Master Mechanic, Raju
           with the quote, Master     with the quote, Master
           Mechanic Raju says,        Mechanic Raju says,
           "Spurious spares are       "Spurious spares are
           injurious to the health    injurious to the health
           of your vehicle".          of your vehicle"
           Picture of the Mascot      Picture of the Mascot
           Master Mechanic, Raju      Master Mechanic, Raju

with the quote in Hindi, with the quote, in Hindi, Master Mechanic Raju Master Mechanic Raju Ka Kehana Hai, "Nakli Ka Kehana Hai, "Nakli spare parts aapke spare parts aapke wahan ke swasth ke liye wahan ke swasth ke liye hanikarak hain". hanikarak hain".

           The words Genuine          The words Genuine
           Parts along with the       Parts along with the
           "EICHER"          Logo     "EICHER"          Logo
           written in a yellow        written in a yellow
           coloured oval with a       coloured oval with a
           black and red border       black and red border
           The 3D Hologram            3D Hologram
           Picture of 3 "EICHER" Picture of 3 "EICHER"
           Truks/Lorries         Trucks/Lorries
           The mark "EICHER"          The mark "EICHER"
           along with the horse       along with the horse
           logo. The MRP tag is       logo. The MRP tag is

pasted below it with the pasted below it with the name of the company name of the company "EICHER" Motors Ltd. "EICHER" Motors Ltd.

           Top and Bottom View        Top and Bottom View




            The words "EICHER"         The words "EICHER"
           Genuine Parts" written     Genuine Parts" written
           in white along with the    in white along with the
           words        GENUINE       words        GENUINE
           PARTS written in a         PARTS written in a

yellow oval with a black yellow oval with a black and red border. and red border.

The code written on the The code written on the product is IB 002939. product is IB 002939.

14. In the backdrop of the evidence of the aforesaid witness, Ms.

Prathiba M. Singh, the learned counsel for the plaintiffs submits that

the adoption by the defendant No.1 of the plaintiffs' mark and

identical packaging as that of the plaintiffs is completely unjustifiable,

more so, as the plaintiffs' products have already existed in the market

for almost 50 years. She submits that the defendant No.1 has in fact

consciously and deliberately adopted the plaintiffs' mark and

packaging only in order to ride on the coat tails of the well established

reputation of the plaintiffs and to encash upon the plaintiffs'

marketing efforts and goodwill. The learned counsel submits that the

defendant No.1's act of adoption of the plaintiffs' mark and packaging

establishes the intention of the defendant No.1 to boost the sale of its

counterfeit products by misleading the general public into believing

that the products of the defendant No.1 originate from the plaintiffs by

causing confusion.

15. In view of the aforesaid, in my opinion, the plaintiffs have

succeeded in establishing that the acts of the defendant No.1 constitute

passing off and acts of unfair competition, infringement of registered

trademark and infringement of copyright and dilution of trademark

and brand equity of the plaintiffs. I am fortified in coming to the

aforesaid conclusion from the fact that a perusal of Ex. PW1/14, the

report of the learned Local Commissioner Mr. N.N. Dhingra,

Advocate appointed by this Court by order dated 30th May, 2003, who

visited the premises of the defendant No.1 establishes that the

infringing products were in fact found in the premises of the defendant

No.1.

16. Resultantly, the plaintiffs are held entitled to a decree of

permanent injunction as prayed for and the defendant No.1, its

partners/proprietors as the case may be, promoters, principals,

directors, agents, distributors, packing agents, employees, retailers,

etc. are restrained from manufacturing, selling, offering for sale,

distributing or in any manner using the trade mark "EICHER" or any

other mark which is identical or deceptively similar to the plaintiffs'

registered trade mark "EICHER" in relation to any automobile parts

including oil and fuel filters, gear lever bushing kit and are further

restrained from using any identical/deceptively similar material,

phraseology on the cartons, get up, layout arrangement, packaging,

colour combination etc. in relation to the aforementioned products and

from doing any other thing as may constitute passing off and/or

infringement of trademark/copyright.

17. CS(OS) 1213/2003 and IA Nos.6470/2003 and 13395/2010

stand disposed of accordingly. The plaintiffs shall be entitled to costs

in the sum of ` 1 lacs against the defendant No.1.

REVA KHETRAPAL (JUDGE) November 28, 2011 km