Marico Limited vs M/S Hind Cosmetics
2011 Latest Caselaw 4682 Del

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*       IN THE HIGH COURT OF DELHI AT NEW DELHI

+       CS(OS) 380/2008

%                               Order delivered on: 22.09.2011

        MARICO LIMITED                           ..... Plaintiff
                  Through:      Ms.Anuradha Salhotra and Ms.Doyel
                                Sengupta, Advocates

                    versus

        M/S HIND COSMETICS                    ..... Defendant
                  Through:

        CORAM:
        HON'BLE MR. JUSTICE G.S.SISTANI

           1. Whether the Reporters of local papers may be allowed to see
              the judgment?
           2. To be referred to Reporter or not?
           3. Whether the judgment should be reported in the Digest?

G.S.SISTANI, J. (ORAL)

1. Plaintiff has filed the present suit for permanent injunction, account

of profits, infringement of trademarks under Sections 29, 134, 135

of the Trademarks Act and for passing of and damages. Plaintiff is a

limited company incorporated under the Companies Act, 1956.

2. Summons were issued in the suit and notice in the application.

While issuing summons, this court had restrained defendants from

using "MANJAL" or any other similar name as a trademark in relation

to the same or similar goods and also to offer for sale such goods

bearing the same kind of packaging or design which is deceptively

similar so as to cause confusion in the minds of the general public.

A local commissioner was also appointed to enter the premises of the defendant, to take charge, possession and control of the

impugned goods bearing the trademark, "MANJAL" or any other

mark similar to plaintiff‟s product. The local commissioner visited

the premises of the defendant, seized the goods and handed over

the goods to the defendant on Superdari. After service the

defendant entered appearance, however, no written statement was

filed neither defendant was represented by any counsel, on the

subsequent dates. Accordingly, defendant was proceeded ex parte

on 14.01.2009.

3. The plaintiff has filed ex parte evidence of Mr.Agnimitra Sinha, the

Head-Legal of the plaintiff (PW-1). In the affidavit the witness has

deposed that the suit was signed and verified by one Mr.Amit Rai,

who was working with the plaintiff as the legal manager. He

confirmed the signatures on the plaint and supporting affidavit as

those of Mr.Agnimitra Sinha.

4. The witness has deposed that the plaintiff is a leading manufacturer

and merchant of inter alia various consumer products for the past

over 20 years and is a leading provider of skin care services and

global branded player in "Beauty and Wellness Solutions". The

products of the plaintiff are widely sold all over India with the

plaintiff‟s marketing and distribution network which reaches persons

even in far flung areas of the country. The plaintiff‟s distribution

network covers every Indian town with a population of over 20,000/-

persons. The witness has also deposed that the plaintiff is the

owner of various trademarks in respect to diverse products in India and abroad. Some of the well known trademarks owned by the

plaintiff are SAFFOLA, PARACHUTE, SWEEKAR, HAIR AND CARE,

MEDIKER, NIHAR, REVIVE, KAYA SUNDARI, SILK-N-SHINE, MANJAL,

etc. The witness has further deposed that by virtue of their

extensive use, publicity and promotion over the decades the above

said trademarks have established enormous and enviable reputation

and goodwill in India and are associated exclusively with the

plaintiff. The plaintiff is also the proprietor of the trademark MANJAL

in respect of herbal bath soap registered in India under No.1109980

in class 3 as on 07.06.2002 in respect of ayurvedic bath soap. The

said trademark was registered in the name of Oriental Extractions

Pvt. Ltd. which was subsequently assigned to the plaintiff vide deed

of assignment dated 03.01.2006 together with goodwill of the

business. Copy of the assignment deed has been exhibited as Ex.P-

2. It has also been deposed that the plaintiff got assignment deed

adjudicated by the Collector of Stamps Pondicherry and the

Collector adjudicated the same vide its order dated 20.12.2007 and

the stamp duty was paid in Pondicherry on 02.01.2008. A copy of

the challan has been exhibited as Ex.P-3. The application for

recordal of the plaintiff as a subsequent proprietor of trademark

MANJAL was filed by the plaintiff with the Registrar Trademark,

Chennai and the said application is pending. Copy of the said

application has been exhibited as Ex.P-4. A copy of the receipt of

the said application having been filed has been exhibited as Ex.P-5.

Shri Sinha has further deposed that by virtue of the aforesaid assignment of the registered trade-mark MANJAL, the plaintiff has

the exclusive right to use the trademark MANJAL in relation to the

goods for which the mark is registered namely ayurvedic bath soap.

The original certified copy of the registration certificate for the mark

MANJAL under registration No.1109980 is marked as Ex.P-6. As per

the evidence the gross turnover of the goods sold under the

trademark MANJAL for the financial year 2005-06 and 2006-07 are

reproduced below:

                       YEAR        VOLUME         GROSS     ADVT.
                                                TURNOVER EXPENSES
                     2005-06     229            249      38
                     2006-07     1298           1463     517

5. The original certificate from the Chartered Accountant showing all India

annual sales figure and sales promotional figure of the plaintiff under

the trademark MANJAL has been marked as Ex.P-7. It has also been

deposed that the plaintiff‟s reputation and goodwill in the mark MANJAL

has not come only from sales alone. The plaintiff‟s goods under the

trademark MANJAL are advertised in a wide variety of Media including

newspaper and print media as well on the radio and in the recent years

the mark has been advertised on television and the plaintiff has spent

Rs.555 lacs from the year 2005 to 2007 on the promotion of its goods

under the trademark MANJAL. The original certificate dated 19.02.2008

from M/s.Bates David Enterprises along with advertisements titled

„Renuka‟ and „Arangetram‟ have also been filed by the plaintiff and are

marked as Ex.P-8 & 9 respectively. As per Sh.Sinha plaintiff learnt that

the defendant was selling bath soaps under the trademark MANJAL along with word NICE in clear infringement of the plaintiff‟s exclusive

rights in its trademark MANJAL and the defendant had not only lifted

the entire word MANJAL, mark of the plaintiff, but had also adopted the

device of the plant on the packaging which was deceptively similar to

the plaintiff‟s packaging, as shown in the plaint. The original earlier

packaging and the recent packaging of the plaintiff‟s soap under the

mark MANJAL have been exhibited as Ex.P-10 and Ex.11 and the

original packing of the defendant‟s soap has been exhibited as Ex.P-12.

The witness has also deposed that a cease and desist letter was sent to

the defendant on 31.07.2006 copy of which has been marked as Ex.P-

13. By a reply issued on behalf of the defendant dated 22.08.2006 the

defendant refused to comply with the requisitions contained in the

communication of the plaintiff. The reply dated 22.08.2006 has been

exhibited as Ex.P-14.

6. Counsel for the plaintiff submits that in view of the evidence filed by

the plaintiff which has gone unrebutted, the present suit of the plaintiff

be decreed.

7. I have heard counsel for the plaintiff. Having regard to the evidence on

record, the plaintiff has been able to establish the essential ingredients

of section 29(1) of the Trademarks Act in view of trademark MANJAL,

which is registered in India under No.1109980 in class 3 as on

07.06.2002 in respect of ayurvedic bath soap. The certified copy of the

registration has been filed which is exhibited as Ex.P-6. Documents

placed on record also establish that plaintiff is the subsequent

proprietor of the aforesaid trademark which was duly assigned in favour of the plaintiff vide a deed of assignment marked Ex.P-2 and an

application in the form of TM-24 for recordal of the plaintiff as the

subsequent proprietor has also been filed with the Registrar of

Trademarks, which is marked as Ex.P-4. Counsel has relied upon

Astrazeneca U.K. Ltd. and And Vs. Orchid Chemicals &

Pharmaceuticals Ltd. 2006 (32) PTC 733 DEL, Grandlay Electricals

(India) Ltd. Vs. Vidya Batra 1998 PTC (18) 646 (Del), Sun

Pharmaceuticals Ltd. Vs. Cipla Ltd. 2009 (39) PTC 347 (Del.) and

Nirma Limited Vs. Nimma International & Anr.

CS(OS)No.1826/2008 PTC 2010 (42) 307 (Del.), in support of her

contention that the suit for infringement can be brought by the

subsequent proprietor during the pendency of the recordal of the

assignment. The user of the trademark by a person who is not a

registered proprietor or a person, who has not been authorized to use

trademark, is also a necessary ingredient which has been duly satisfied

by the plaintiff, as the defendant, M/s.Hindi Cosmetic is neither

registered proprietor nor permitted user of the mark MANJAL.

Comparing of both the marks showed that the mark of the defendant is

identical or deceptively similar to the trademark of the plaintiff and in

fact defendant has used the identical registered trademark as that of

the plaintiff being MANJAL and is being used in the course of trade and

he is also affixing the same name to identical goods. Counsel for the

has relied upon Kaviraj Pandit Dutt Sharma Vs. Navaratna

Pharmaceuticals Laboratories AIR 1965 SC 980, wherein it has been

held that "Where the two marks are identical, no further question arise for, then the infringement is made out." In the case of Ruston and

Hornby Ltd. Vs. Zamindara AIR 1970 SC 1649, it has been held that

"In an infringement action the issue is : Is the defendant using a mark

which is the same as or which is colourable imitation of the Plaintiff's

registered trade mark."

8. Having regard to the fact that plaintiff is a registered proprietor of the

trademark MANJAL and also the fact that based on the assignment

deed, the plaintiff has also applied to the Registrar Trademark for

recordal of the plaintiff as the subsequent proprietor. The plaintiff has

also prayed for damages in the sum of Rs.5.0 lakhs. In the case of

Time Incorporated vs. 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. 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.

9. For the reasons stated hereinabove, the present suit is decreed.

Plaintiff would be entitled to damages of Rs.2.0 lakhs.

10. The goods seized by the Local Commissioner which are lying with

defendant, shall be destroyed by the defendant in the presence of the

representative of the plaintiff.

I.A. No.2586/2008 (STAY)

11. In view of the order passed in the suit, application stands disposed

of.

G.S.SISTANI,J SEPTEMBER 22, 2011 ssn