Delhi High Court
Malhotra Book Depot & Ors vs Mata Basanti Devi School Of ... on 27 April, 2012
Author: G. S. Sistani
13.
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 2639/2010
% Judgment dated 27.04.2012
MALHOTRA BOOK DEPOT & ORS ..... Plaintiffs
Through : Mr.Sidhant Goel, Mr.Sanjeet Goel and
Mr.Mohit Goel, Advs.
versus
MATA BASANTI DEVI SCHOOL OF BIOSCIENCES
& BIOTECHNOLOGY ..... 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, restraining
infringement of trademarks, passing off, dilution of goodwill, unfair
competition, rendition of accounts of profits/ damages, delivery up against
the defendant.
2. Summons was issued in the suit and notice was issued in the application
to the defendants on 24.12.2010. This court on 04.05.2011 restrained the
defendant from using the trademark „MBD‟ in relation to its school
activities with the clarification that the defendant would be entitled to use
the full name as "Mata Basanti Devi" School. The defendant was
proceeded ex parte on 04.05.2011 as none had chosen to appear on behalf
of the defendant nor written statement was filed.
3. In support of their case, plaintiffs have filed affidavit by way of evidence
of Sh.Rohit Mehta, which is exhibited as Ex.PW-1/A and the Special
Power Of Attorneys dated March 26, 2010 executed by plaintiffs No. 1 to
5 in favour of PW-1, are collectively exhibited as Ex-PW 1/1 (Colly).
4. PW-1 has deposed that plaintiff No. 1 is a partnership firm formed and
registered under the laws of the Republic of India; and Ms.Satish Bala
Malhotra, Ms.Monica Malhotra Kandhari and Ms.Sonica Malhotra are
partners in the Plaintiff firm having its registered offices at Adda
Hoshiarpur, Jalandhar City, Punjab, India and its branch offices at 6,
Gulab Bhawan, Bahadur Shah Zafar Marg, New Delhi - 110002.
Certified copy of the Registered Partnership Deed of the Plaintiff No.1 is
on record from pages no. 11 to 14, of the documents file, filed by the
Plaintiffs vide list of documents dated August 24, 2011 and the same are
exhibited as Ex.PW-1/2.
5. PW-1 has also deposed that plaintiff No. 2 to 5, are companies duly
incorporated and existing under the laws of the Republic of India having
its registered offices at Gulab Bhavan, 6 - Bahadur Shah Zafar Marg, New
Delhi - 110002. Certified copies of the Certificates of Incorporation of the
Plaintiff No.2 to Plaintiff No.5 Companies are on record and the same are
collectively exhibited Ex.PW-1/3).
6. Sh.Rohit Mehta has deposed that the plaintiff No.1 to plaintiff No.5
("Plaintiffs"), which, together with other companies, form part of the
"MBD Group", are one of India‟s leading business entities and the MBD
Group is itself one of the largest Groups with more than five decades of
experience; and all the group companies use the corporate name / house
mark MBD, in some form or the other, for their business activities.
Copies of brochures, introductory material of the Plaintiffs and their
business activities under the trade mark MBD and other composite marks
containing the mark MBD are exhibited as Ex.PW-1/4. The print outs
from the website www.mbdgroup.com, www.mbdzephyr.com,
www.mbdalchemie.com and www.mbdneopolis.com detailing the
business activities of the plaintiffs under the trade mark MBD and other
composite marks containing the mark MBD are collectively exhibited as
Ex.PW-1/5.
7. PW-1 has deposed that the plaintiff No. 1 first used the mark MBD in the
year 1956 and has been continuously and extensively been using the same
till date, along with plaintiff No. 2 to 5 and other group companies. It has
also been deposed by this witness that the plaintiff No. 1 started with
activities in the publishing sector in the year 1956, under the house mark
MBD, and today the plaintiff No. 1 is Asia‟s largest publishers and
printers of academic text books, reference books, children‟s books and
technical, commerce, science and management books; and the plaintiffs,
together with other group companies, have more than 32 branch offices in
India alone and currently have approx. 3,000 employees, a network of
around 1,000 distributors and 10,000 booksellers.
8. PW-1 has also deposed that the MBD Group, through plaintiff No.1, owns
India‟s largest publishing house under the trade-mark MBD, with more
than five decades of experience. With more than 500 subject experts
developing content in almost all the regional languages of India, the group
trading under the trade mark/ house mark MBD, is one of the largest
content providers in education. PW-1 has also deposed that the plaintiffs
are the only group which publishes books for all classes, all subjects, in
all languages, all education boards in India and in most of the major
languages spoken worldwide. Under the trade mark MBD, the group also
prints technical books and children‟s books under various imprints
popular in India as well as abroad. Plaintiff No.1 specializes in production
of school level books such as textbooks, reference books, help books and
study material for recapitulation in English and Indian regional languages.
9. This witness has also deposed that the Plaintiff No.1, along with other
group companies of the MBD Group, has also acquired specialization in
publishing text books and reference books for students at graduate and
post graduate levels and for those pursuing a career in medical (covering
exhaustively anesthesia and intensive care; anatomy and physiology;
cardiology and cardiac surgery; dentistry, dermatology, ENT,
gastroenterology and hepatology, haematology, and oncology; neurology,
obstetrics and gynaecology, ophthalmology, orthopaedics, pathology,
paediatrics, primary care, radiology and imaging, surgery, urology,
electronic media), engineering and other technical areas.
10. PW-1 has also deposed that there are more than 8000 titles currently
under the trade mark MBD and the same are increasing daily. The
publishing house of the MBD Group, functioning under the trading name
of plaintiff No.1, publishes and exports books to North American
Countries, Europe, Gulf Countries and South Asian Countries. A few of
the major business entities of the MBD Group in the publishing industry,
including the plaintiff‟s, are Holy Faith International Pvt. Ltd., Modern
Publishers, Oxbridge, Creative, MBD International, etc. All these entities
are using the trade mark / house mark MBD for their business activities.
11. PW-1 has also deposed that with the futuristic vision of Late Mr. A.K.
Malhotra, the MBD Group, has diversified into various other industries
including the paper manufacturing industry, hospitality, real estate, mall
development and management. This witness has also deposed that the
MBD Group of companies is today well respected amongst the
competitors for their leadership initiatives and quality services & products
and are considered as market leaders in all their business activities. PW-1
has deposed that the MBD Group, through plaintiff No. 3, has also
expanded its business activities in the field of on-line education, i.e.,
education on the web, including, e-teaching, e-training; business of
software, content services, BOP services and IT business etc; and all these
services are being provided under the trading name / trade mark MBD
ALCHEMIE.
12. Mr.Rohit Mehta has deposed that the plaintiffs are one of the fastest
growing companies in India in the field of education, printing and
publishing and in a short span of time, the plaintiffs have established an
enviable reputation and track record for adopting latest techniques in
education in schools, introducing world-class quality products in the field
of education, hence the plaintiff No.3 has adopted the mark MBD as a
house mark.
13. PW-1 has deposed that the MBD Group has successfully established itself
in the hospitality industry through its maiden venture, viz., The Radisson
MBD Hotel (Five Star), Noida; and that the hotel is fully owned and
managed by the MBD Group and is the first five star hotel in Noida.
Under brands like MADE IN INDIA, RED, S-18, THE CHOCOLATE
BOX, ESPACE and GIGABYTE, all owned and managed by the
Plaintiffs, the MBD Group is promoting and operating hotel services,
world class & award winning restaurants and food courts. The same are
located in major cities of India like Delhi, Mumbai, Bangalore, Chennai,
Hyderabad, Jalandhar and Ludhiana and in all these centres, they are
operated under the house mark MBD.
14. PW-1 has deposed that the MBD Group has also made its foray into
premium and luxury mixed use developments primarily entailing hotel,
retail and entertainment under brand names like MBD NEOPOLIS, MBD
ZEPHYR, MBD PRIVE which are currently under operation and
construction in Jalandhar, Ludhiana and Bangalore with planned presence
in Hyderabad, Chennai, Mumbai, Delhi and Goa. Under the trade mark
MBD NEOPOLIS & NUOVO, the MBD Group caters to international
designers having the best labels like Fendi, Tommy Hilfiger, Van Cleef
Arpel, Canali, Kimaya, etc. The luxury retail targets under the trade mark
MBD ZEPHYR which includes brand names like Saks, Channel, Hermes,
Gucci, Jimmy Chao, Louis Vutton, Christian Dior, Escada.
15. PW-1 has also deposed that the consolidated sales turnover of the
plaintiff No.1 since the financial year 1982-83 to 2009-10 is Rs.
682,72,28,836.21/- (Crores). The annual turnover of the plaintiffs
combined for the year 2009-10 was approximately Rs.200 Crores. The
approx. annual turnover of the plaintiffs for the past five financial years is
given herein below :
YEAR Plaintiff Plaintiff Plaintiff Plaintiff Plaintiff
No.1 No.2 No.3 No.4 No.5
(Crore) (Crore) (Lakh) (Crore) (Crore)
2004-05 43.27 27.46 --- --- 12.76
2005-06 52.87 89.05 --- --- 17.17
2006-07 56.20 55.78 --- --- 46.57
2007-08 61.23 67.56 11.76 --- 56.25
2008-09 64.13 70.49 2.47 --- 55.05
2009 - 10 74.20 54.08 1.31 --- 57.09
TOTAL 351.90 364.42 15.54 --- 244.89
16. PW-1 has also deposed that the above figures of the annual turnover have
been obtained from the books and accounts of the plaintiffs maintained in
the ordinary course of business. A certified copy of a certificate from the
chartered account / auditor of the plaintiff No.1 detailing the annual sales
turnover from the financial year 1983-84 to 2009-10 are exhibited as
Ex.PW-1/6. Certified copies of the account statements, including balance
sheets, of all the plaintiffs are collectively exhibited as Ex.PW-1/7. Copies
of some sales invoices are (collectively on record from page nos. 751 to
775 (Volume - IV) of the documents filed by the plaintiffs vide list of
documents dated December 24, 2010 and are) collectively exhibited as
Ex. PW 1/8.
17. PW-1 has also deposed that in the year 1956 the plaintiff No.1
thoughtfully coined the trade mark MBD by taking the first alphabets of
its name MALHOTRA BOOK DEPOT and the mark MBD has been
exclusively and continuously used by the plaintiff ever since, in the
capacity of a trade mark / house mark in relation to all its leading business
activities. The trade mark MBD is inherently distinctive and is
exclusively associated by consumers as indicative of trade source
distinguishing goods and business in the course of trade of the plaintiffs
from those of others. PW-1 has also deposed that the trademark MBD
has been internationally used by the plaintiff No.1 and by all the other
plaintiffs under a license from Plaintiff No.1.
18. Mr.Rohit Mehta has deposed that the trade mark MBD has also been
prominently appended by the plaintiffs as an essential feature to most of
its other leading trade marks / trade names like MBD NEOPOLIS, MBD
ZEPHYR, MBD ALCHEMIE, MBD GROUP, etc., and thus the trade
mark MBD has come to be associated as a house mark and the said use of
over five and a half (5 ½) decades has generated colossal sales volumes
for the plaintiffs and unprecedented and unmarked reputation/goodwill in
the domestic as well as international markets.
19. PW-1 has also deposed that, during this course of time the trade mark
MBD has become a household name certainly in India, if not to that
extent internationally, along with its various other affiliate / subsidiary
companies, namely:
S. NAME OF COMPANY
NO.
1. Holy Faith International Pvt.
Ltd.
2. Modern publishers
3. Oxbridge international Pvt.
Ltd.
4. M.Gulab Singh & Sons Pvt.
Ltd.
5. Holy Faith Exports
6. MBD Exports
7. D S Enterprises
8. MBD Properties Pvt. Ltd.
9. MBD Hotels Pvt. Ltd.
10. Dove Impex (India) Pvt. Ltd
11. MBD Graphics
12. MBD Creation
13. MBD Enterprises Pvt. Ltd.
14. MBD Overseas
15. Sonica Papers Converters &
Printers
20. It is also deposed by PW-1 that the plaintiffs have extensively used MBD
as a trade mark / corporate name / house mark and all the above
companies have a strong presence in India and in neighboring countries.
It is also deposed by this witness that without prejudice to the fact that the
mark MBD is inherently distinctive being an arbitrarily coined mark, the
plaintiffs have also acquired common law rights in the collective
collocation and arrangement of the letters "M", "B" and "D" through
continuous and extensive use over all these years.
21. Mr.Rohit Mehta has deposed that the plaintiffs have secured registrations
under the Trade Marks Act, 1999 (the "Trade Marks Act") for exclusive
use of the trade mark MBD, its variants and most of its group marks. The
plaintiffs have successfully obtained six (6) registrations for the mark
MBD or containing the mark MBD as a prominent feature, namely :- i)
Registration No. 325406 dated 18.5.1977 in class 16 for the word mark
MBD; ii) Registration No. 462795 dated 07.11.1986 in class 16 for the
word mark MBD Sure Shot; iii) Registration No. 632634 dated 1.7.1994
in class 16 for the word mark MBD Safalta Ka Sadhan (Hindi); iv)
Registration No. 1478047 dated 11.08.2006 in class 42 for the mark MBD
ZEPHYR; v) Registration No. 1338755 dated 16.02.2005 in class 41 for
the mark MBD NEOPOLIS Where The Experience Never Ends
(Stylized); vi) Registration No. 1338756 dated 16.02.2005 in class 42 for
the mark MBD NEOPOLIS Where The Experience Never Ends
(Stylized). PW-1 has further deposed that the registered trade-marks, as
aforesaid, are duly renewed, subsisting and conclusively valid under the
provisions of the Act. Certificates for use in legal proceedings and
Registration Certificates, along with their renewal certificates are
collectively exhibited as Ex.PW-1/9.
22. Mr.Rohit Mehta has deposed that the MBD Group boasts of a trade mark
portfolio of approximately two hundred and fifty (250) trade mark
applications, out of which approximately one hundred and forty (140)
applications have been filed for registration of trade-marks bearing the
mark MBD. All these applications are pending registration and are at an
advanced stage of the process. Copies of the trade mark applications filed
for registration by the plaintiffs for the trade mark MBD and other
composite marks containing the house mark MBD are collectively
exhibited as Ex.PW-1/10. PW-1 has also deposed that all the applications,
pending or registered, bearing the trade mark MBD of the plaintiffs, have
been reproduced below in a consolidated list:
Plaintiff No.1 (Malhotra Book Depot)
Sl. Trade Mark Regn. No. Cla Dated Status
N / ss
o. Appl. No.
1. MBD (word 325406 16 18.5.197 Register
mark) 7 ed
2. MBD Sure 462795 16 7.11.198 Register
Shot 6 ed
3. MBD Safalta 632634 16 1.7.1994 Register
Ka Sadhan ed
(Hindi)
4. MBD Logo 01148149 16 5.11.200 Pending
5. MBD 1811844 16 27.04.20 Pending
6. MBD 1879218 08 03.11.20 Pending
7. MBD 1879219 09 03.11.20 Pending
8. MBD 1879220 21 03.11.20 Pending
9. MBD 1879221 28 03.11.20 Pending
10 MBD 1879222 29 03.11.20 Pending
11 MBD 1879223 30 03.11.20 Pending
12 MBD 1879224 35 03.11.20 Pending
13 MBD 1879225 36 03.11.20 Pending
14 MBD 1879226 37 03.11.20 Pending
15 MBD 1879227 38 03.11.20 Pending
16 MBD 1879228 40 03.11.20 Pending
17 MBD 1879229 41 03.11.20 Pending
18 MBD 1879230 42 03.11.20 Pending
19 MBD (word 1943440 08 30.03.20 Pending
20 MBD (word 1943441 09 30.03.20 Pending
21 MBD (word 1943442 21 30.03.20 Pending
22 MBD (word 1943443 28 30.03.20 Pending
23 MBD (word 1943444 29 30.03.20 Pending
24 MBD (word 1943445 30 30.03.20 Pending
25 MBD (word 1943446 35 30.03.20 Pending
26 MBD (word 1943447 36 30.03.20 Pending
27 MBD (word 1943448 37 30.03.20 Pending
28 MBD (word 1943449 38 30.03.20 Pending
29 MBD (word 1943450 40 30.03.20 Pending
30 MBD (word 1943451 41 30.03.20 Pending
31 MBD (word 1943452 42 30.03.20 Pending
32 MBD 1953125 08 20.04.20 Pending
Hindi
33 MBD 1953126 09 20.04.20 Pending
Hindi
34 MBD 1953127 14 20.04.20 Pending
Hindi
35 MBD 1953128 16 20.04.20 Pending
Hindi
36 MBD 1953129 21 20.04.20 Pending
Hindi
37 MBD 1953130 28 20.04.20 Pending
Hindi
37 MBD 1953131 29 20.04.20 Pending
Hindi
38 MBD 1953132 30 20.04.20 Pending
Hindi
39 MBD 1953133 35 20.04.20 Pending
Hindi
40 MBD 1953134 36 20.04.20 Pending
Hindi
41 MBD 1953135 37 20.04.20 Pending
Hindi
42 MBD 1953136 38 20.04.20 Pending
Hindi
43 MBD 1953137 40 20.04.20 Pending
Hindi
44 MBD 1953138 41 20.04.20 Pending
Hindi
45 MBD 1953139 42 20.04.20 Pending
Hindi
46 MBD 1953140 08 20.04.20 Pending
Punjabi
47 MBD 1953141 09 20.04.20 Pending
Punjabi
48 MBD 1953142 14 20.04.20 Pending
Punjabi
49 MBD 1953143 16 20.04.20 Pending
Punjabi
50 MBD 1953144 21 20.04.20 Pending
Punjabi
51 MBD 1953145 28 20.04.20 Pending
Punjabi
52 MBD 1953146 29 20.04.20 Pending
Punjabi
53 MBD 1953147 30 20.04.20 Pending
Punjabi
54 MBD 1953148 35 20.04.20 Pending
Punjabi
55 MBD 1953149 36 20.04.20 Pending
Punjabi
56 MBD 1953150 37 20.04.20 Pending
Punjabi
57 MBD 1953151 38 20.04.20 Pending
Punjabi
58 MBD 1953152 40 20.04.20 Pending
Punjabi
59 MBD 1953153 41 20.04.20 Pending
Punjabi
60 MBD 1953154 42 20.04.20 Pending
Punjabi
Plaintiff No. 2 (Bright Enterprises Pvt. Ltd.)
Sl. Trade Mark Regn. Cla Dated Status
No No. ss
. / Appl.
No.
1. MBD ZEPHYR 1478046 16 11.08.20 Pending
2. MBD ZEPHYR 1478047 42 11.08.20 Register
06 ed
3. MBD ZEPHYR 1740522 16 16.10.20 Pending
Luxury &
Surprise
4. MBD ZEPHYR 1740523 42 16.10.20 Pending
Luxury &
Surprise
5. MBD ZEPHYR 1879190 36 03.11.20 Pending
6. MBD ZEPHYR 1879191 37 03.11.20 Pending
7. MBD PRIVE 1879203 08 03.11.20 Pending
8. MBD PRIVE 1879204 16 03.11.20 Pending
9. MBD PRIVE 1879205 21 03.11.20 Pending
10. MBD PRIVE 1879206 29 03.11.20 Pending
11. MBD PRIVE 1879207 30 03.11.20 Pending
12. MBD PRIVE 1879208 42 03.11.20 Pending
13. MBD ZEPHYR 1879217 35 03.11.20 Pending
14. MBD ZEPHYR 1953193 16 20.04.20 Pending
15. MBD ZEPHYR 1953194 42 20.04.20 Pending
16. MBD PRIVE 1953197 08 20.04.20 Pending
17. MBD PRIVE 1953198 16 20.04.20 Pending
18. MBD PRIVE 1953199 21 20.04.20 Pending
19. MBD PRIVE 1953200 29 20.04.20 Pending
20. MBD PRIVE 1953201 30 20.04.20 Pending
21. MBD PRIVE 1953202 42 20.04.20 Pending
22. MBD AUREA 1967836 16 19.05.20 Pending
23. MBD AUREA 1967837 36 19.05.20 Pending
24. MBD AUREA 1967838 37 19.05.20 Pending
25. MBD AUREA 1967839 42 19.05.20 Pending
26. MBD 1967844 16 19.05.20 Pending
27. MBD 1967845 36 19.05.20 Pending
27. MBD 1967846 37 19.05.20 Pending
28 MBD 1967847 42 19.05.01 Pending
Plaintiff No.3 (MBD Alchemie Pvt. Ltd.)
Sl. Trade Mark Regn. No. Cla Dated Status
N / Appl. ss
o. No.
1. MBD 1513380 16 14.12.200
ALCHEMIE 6 Pending
igniting
excellence in
education
2. MBD 1516326 41 23.05.200 Pending
LMS
3. MBD 1832110 09 23.06.200 Pending
(Stylized)
4. MBD 1832111 16 23.06.200 Pending
(Stylized)
5. MBD 1832112 28 23.06.200 Pending
(Stylized)
6. MBD 1832113 38 23.06.200 Pending
(Stylized)
7. MBD 1832114 41 23.06.200 Pending
(Stylized)
8. MBD 1832115 09 23.06.200 Pending
(Stylized) (col)
9. MBD 1832116 16 23.06.200 Pending
(Stylized) (col)
10 MBD 1832117 38 23.06.200 Pending
(Stylized) (col)
11 MBD 1832118 28 23.06.200 Pending
(Stylized) (col)
12 MBD 1832119 41 23.06.200 Pending
(Stylized) (col)
13 MBD 1953161 09 20.04.201 Pending
14 MBD 1953162 16 20.04.201 Pending
15 MBD 1953163 28 20.04.201 Pending
16 MBD 1953164 38 20.04.201 Pending
17 MBD 1953165 41 20.04.201 Pending
Plaintiff No.4 (A.K.M. Enterprises Pvt. Ltd.)
Sl. Trade Mark Regn. Clas Dated Status
No. No. / s
Appl.
No.
1. MBD 1338754 16 16.02.200 Pending
Where The
Experience
Never Ends
Stylized
2. MBD 1338755 41 16.02.200 Register
NEOPOLIS 5 ed
Where The
Experience
Never Ends
Stylized
3. MBD 1338756 42 16.02.200 Register
NEOPOLIS 5 ed
Where The
Experience
Never Ends
Stylized
4. MBD 1879185 16 03.11.200 Pending
(Stylized) (col)
5. MBD 1879186 35 03.11.200 Pending
(Stylized) (col)
6. MBD 1879187 36 03.11.200 Pending
(Stylized) (col)
7. MBD 1879188 37 03.11.200 Pending
(Stylized) (col)
8. MBD 1879189 42 03.11.200 Pending
(Stylized) (col)
9. MBD 1953203 16 20.04.201 Pending
10 MBD 1953204 35 20.04.201 Pending
11 MBD 1953205 36 20.04.201 Pending
12 MBD 1953206 37 20.04.201 Pending
13 MBD 1953207 42 20.04.201 Pending
14 MBD 1953208 16 20.04.201 Pending
LOGO (B/W)
15 MBD 1953209 35 20.04.201 Pending
LOGO (B/W)
16 MBD 1953210 36 20.04.201 Pending
LOGO (B/W)
17 MBD 1953211 37 20.04.201 Pending
LOGO (B/W)
18 MBD 1953212 42 20.04.201 Pending
LOGO (B/W)
20 MBD 1953213 16 20.04.201 Pending
LOGO
(Colored)
21 MBD 1953214 35 20.04.201 Pending
LOGO
(Colored)
22 MBD 1953215 36 20.04.201 Pending
LOGO
(Colored)
23 MBD 1953216 37 20.04.201 Pending
LOGO
(Colored)
24 MBD 1953217 42 20.04.201 Pending
LOGO
(Colored)
Plaintiff No.5 (MBD Printographics Pvt. Ltd.)
Sl. Trade Mark Regn. Class Dated Status
N No. /
o Appl.
No.
1. MBD 1811845 16 27.04.09 Pending
PRINTWELL
Pure Perfection
& Logo (col)
2. MBD 1811846 16 27.04.09 Pending
PRINTWELL
Pure Perfection
& Logo (b/w)
3. MBD 1811847 16 27.04.09 Pending
WRITEWELL
And „W‟
Stylized (col)
4. MBD 1811848 16 27.04.09 Pending
WRITEWELL
And „W‟
Stylized (b/w)
5. MBD 1953155 16 20.04.10 Pending
PRINTWELL
6. MBD 1953156 16 20.04.10 Pending
WRITWELL
7. MBD 1953157 16 20.04.10 Pending
PRINTWELL
in Hindi
(Colored)
8. MBD 1953158 16 20.04.10 Pending
PRINTWELL
in Punjabi
(Colored)
9. MBD 1953159 16 20.04.10 Pending
WRITWELL
in Hindi
(Colored)
10 MBD 1953160 16 20.04.10 Pending
. WRITWELL
in Punjabi
(Colored)
23. PW-1 has also deposed that the plaintiffs are the registered proprietors of
the mark MBD and other variants, as demonstrated above, thereby having
right to use thereof under Section 28 of the Trade Marks Act, 1999 and
the use of an identical or deceptively similar trade mark by an
unauthorized user amounts to infringement of plaintiff's registered trade
mark under Section 29 of the said Trade Marks Act, 1999; and apart from
constituting infringement, the impugned use also amounts to criminal
offence under the Trade Marks Act, 1999.
24. PW-1 has also deposed that the above evidences, that the plaintiffs have
always placed significance on the goodwill of the mark MBD to denote its
goods and services; and in fact, all printed material, such as text books,
guides, question banks, etc., only use the mark MBD. The trade name
MBD has also been used prominently as a house mark for many
titles/trade marks in relation to all its leading brand names as illustrated in
the earlier paragraphs. To evidence the prominence of the mark MBD in
all the leading brand names of the plaintiffs and the MBD Group, a
pictorial representation of the same is provided herein below:-
25. PW-1 has also deposed that apart from the statutory rights which have
accrued in favour of the plaintiffs in the trade mark / house mark MBD, as
demonstrated above, the plaintiffs have also acquired common law rights
to the exclusive use of the trade mark / house mark MBD, i.e., either
independently or conjunctively with other marks or trading names; and
the plaintiffs have expended a great amount of time, money and effort to
promote and advertise the trade mark MBD, all its variants and the
composite marks to which MBD has been appended as a house mark, in
all and every possible manner. Print outs of a few media releases
covering the activities of the plaintiff under the trade mark MBD and
other composite marks containing the house mark MBD are collectively
exhibited as Ex.PW 1/11.
26. Mr.Rohit Mehta has deposed that the trade mark MBD and other
composite marks containing the mark MBD, prominently feature in print
and electronic media including trade journals, directories, magazines and
periodicals having, which have wide coverage and circulation and also
have a voluminous presence on cyber space with domain names like
mbdgroup.com, mbdneopolis.com, mbdalchemie.com and
mbdzephyr.com; and that the sales, promotional and advertisement
expenses incurred by the plaintiffs, on promotion of the trade mark MBD
and other composite marks containing the mark MBD as a house mark,
are as follows:-
YEAR Plaintiff Plaintiff Plaintiff Plaintiff Plaintiff
No.1 No.2 No.3 No.4 No.5
(Crore) (Crore) (Lakh) (Lakh) (Lakh)
2004-05 1.44 1.32 NIL NIL NIL
2005-06 3.56 1.45 NIL 1.20 0.13
2006-07 2.36 1.76 NIL 5.96 NIL
2007-08 2.29 2.38 10.51 5.36 1.63
2008-09 4.79 4.01 30.37 0.20 0.13
2009 - 3.64 4.31 190.81 0.03 .05
TOTAL 18.08 15.23 231.69 12.75 1.94
27. PW-1 has further deposed that the invoices for the promotional activities
carried out by the plaintiffs for the trade mark MBD and other composite
marks containing the house mark MBD in Electronic Media are
collectively exhibited as Ex.PW-1/12. Copies of the Invoices for
registration of domain names of the plaintiffs are collectively exhibited as
Ex.PW-1/13. Copies of the invoices for the promotional activities carried
out by the plaintiffs for the trade mark MBD and other composite marks
containing the house mark MBD in Print Media are collectively exhibited
as Ex.PW-1/14.
28. PW-1 has also deposed that the trade mark MBD has become a single
source identifier; and the mark MBD has attained the designation of being
a „well known mark', as defined under the Act, due to the following
factors:
(a) The mark MBD has been used by the Plaintiffs for more than
five decades and is subject matter of honest adoption;
(b) The mark MBD is distinctive of the Plaintiffs goods/services
and has been registered in favour of the Plaintiffs in several
variants;
(c) The mark MBD has been subjected to extensive, open,
continuous, uninterrupted use, with enormous volumes of sale
of the goods / services under the said trade mark;
(d) The prominent placement of the mark MBD in the market and
industry, coupled with the promotional efforts initiated by the
Plaintiffs.
Thus, any adoption or use of the mark MBD or of any deceptively similar
mark in relation to identical and/or similar goods will not only cause
confusion and deception to the public, but will also be contrary to the
protection required to be afforded to a well-known mark, dilute its image
and be generally misleading to consumers and members of the trade.
29. PW-1 has also deposed that the defendant as per the information received
by the plaintiffs, is an education institution; and the plaintiffs in the month
of December 2010, acquired knowledge of the fact, through an
advertisement published on cyber space and through a web link
advertising the infringing mark, that the defendants were using the name
MBD School of Biosciences & Biotechnology ("infringing mark"). PW-
1 has also deposed that the plaintiffs are aggrieved by the usage of the
mark MBD in the infringing mark MBD School of Biosciences &
Biotechnology by the defendant for their business activities as the same
contains the trade mark MBD as a whole and bears an identical /
deceptive resemblance to the composite marks of the plaintiffs bearing the
house mark MBD, viz., MBD Alchemie, MBD Zephyr, MBD, Neopolis,
MBD Prive, etc. This witness has also deposed that the photographs
depicting use of the infringing mark by the defendant and printouts of the
web pages demonstrating usage of the infringing mark are collectively on
record from page nos. 17 to 24 (Volume - I) of the documents filed by the
plaintiffs vide list of documents dated December 24, 2010 and are
collectively exhibited as Ex.PW-1/15.
30. Sh.Rohit Mehta has also deposed that the defendant school is affiliated to
the Dr.B.R. Ambedkar University, Agra as "Mata Basanti Devi School of
Biosciences & Biotechnology" and not as MBD School of Biosciences &
Biotechnology. This witness has next deposed that the defendants‟
adoption of an abbreviation which is identical to the registered trade mark
of the plaintiffs is intentional. Print Out of the list of schools affiliated to
the Dr.B.R.Ambedkar University, Agra, obtained from the website of the
University, i.e., from http://www.dbrau.ac.in/college_detail.pdf is on
record from page nos. 25 to 52 (Volume - I) of the documents filed by the
plaintiffs vide list of documents of December, 2010 and are exhibited as
Ex.PW-1/16.
31. Sh.Rohit Mehta has also deposed that the adoption and user of the mark
MBD, as a whole, by the defendant for its business activities constitutes
infringement of the statutory rights of the plaintiffs under the Trade Marks
Act in the mark MBD and all the composite marks bearing the house
mark MBD. PW-1 has also deposed that the manner of display and use of
the infringing trade mark unequivocally suggests that prominence has
been given to the mark MBD and it is also bound to cause confusion.
PW-1 has also deposed that the defendant has adopted and used the
impugned mark with mala fide intentions in order to obtain undue
monetary benefits in view of the substantial goodwill and reputation
attached to the Plaintiff and its other group companies.
32. PW-1 has further deposed that the infringing mark "MBD School of
Biosciences & Biotechnology" by the defendant is contrary to the
provisions since:
(i) The Plaintiffs are the prior adopters and users of the trade mark /
house mark MBD, which is arbitrary, fanciful, invented and a
coined mark and thus inherently distinctive. The mark MBD has
been registered by the Plaintiffs as a word mark and also
conjunctively as a composite mark. Due to its continued use, the
mark MBD has become a household name, which is associated
exclusively with the Plaintiffs. Any use or adoption of an identical
or deceptively similar mark, such as the infringing mark, would
be without any basis and would be construed to be originating
from the Plaintiffs;
(ii) The infringing mark, namely, MBD School of Biosciences &
Biotechnology, contains the Plaintiffs well-known and widely
used mark MBD as a whole. The manner of use of the infringing
marks suggests that prominence has been given to the mark MBD.
This evidences the mala fide motive of the Defendant to use an
identical mark to that of the Plaintiffs for promoting and passing
off its own services as that of the Plaintiffs;
(iii) The trade mark MBD (per se) has been registered, and applied for
registration, by the plaintiffs in various classes with user claim
since the year 1956. Furthermore, all the variants of the trade-
mark MBD, along with composite marks of the Plaintiffs, which
contain the mark MBD, are also registered and/or are pending
registration. Thus, adoption and user of the infringing mark by the
defendant would violate the statutory and common law rights of
the plaintiffs in the mark MBD and other composite marks
containing the mark MBD;
(iv) The trade mark MBD is an essential feature of the Plaintiffs
trading activities and the use of the infringing mark by the
defendant leads to gross colorable imitation of the trade mark
MBD and other composite marks of the Plaintiffs, resulting in
deceptive similarity, likelihood of confusion, infringement,
dilution of goodwill, unfair competition and / or passing off;
(v) The Defendants infringing mark is phonetically, visually,
structurally, and otherwise, identical and / or deceptively similar
to the registered trade mark MBD, and other composite marks of
the Plaintiffs, bearing the mark MBD. The infringing mark is
similar in idea and contains an identical collocation and
arrangement of words to that of the Plaintiffs marks. The
competing marks are liable to be confused for each other on
account of imperfect recollection by unwary consumers;
(vi) The services, for which the infringing mark is being used by the
Defendant, are cognate and allied to the goods and services of the
Plaintiffs. It is noteworthy that the Plaintiff No.1 is, inter alia, in
the business of publishing and selling educational books, and
thus, the target consumers are likely to be the same and overlap,
which would increase the possibility of confusion and deception;
(vii) Since its adoption in the year 1956, the Plaintiffs have made long,
continuous and prior use of its mark MBD, and other composite
marks. Considering that the consumers are not equipped with
photographic memory, the services of the Defendant will be
presumed by the public to be under the license of the Plaintiffs or
a logical and legitimate business expansion of the Plaintiffs;
(viii) The Defendant‟s adoption of the infringing mark is mala fide and
dishonest. On a bare perusal of the infringing mark, it is evident
that the Defendant has laid prominence on the mark MBD,
whereas the other parts of the infringing mark are insignificant.
Considering that the trade mark MBD of the plaintiffs, is the
symbol point of attraction and point of identification, by which
their goods/services are known and marketed, use of the same by
the defendant for its business activities is bound to lead to
confusion and deception amongst the consumers and in their
trade.
33. PW-1 further goes on to state that due to the illegal adoption & use of the
infringing mark, the plaintiffs are suffering and are likely to continue to
suffer dilution, diminution and eventual erosion of the goodwill and
reputation of their mark MBD and all other composite marks adopted and
used by the plaintiffs which contain the mark MBD as a whole.
34. I have heard counsel for the plaintiffs and perused the plaint and the
accompanying documents and the evidence led by the plaintiffs. The
evidence of the plaintiffs remained unrebutted. In this case, vide order
dated 04.05.2011 interim orders were granted in favour of the plaintiff
and against the defendants. Thereafter defendant was proceeded ex parte
and plaintiff was directed to file affidavit by way of evidence.
35. Plaintiff has filed affidavit of PW-1 (Rohit Mehta). As per the affidavit
the MBD group is one of the largest group with more than five decades of
experience and all the group companies use the corporate name/house
mark MBD in some form or the other for their business activities. Copies
of brochures and other materials have been placed on record and the same
has been exhibited as Ex.PW1/4. The print outs have also been exhibited
as Ex.PW-1/5. It has been established by the evidence that plaintiff no.1 is
the prior user of the mark "MBD" since the year 1956, has more than 32
branch offices in India alone, has approximately 3000 employees, a
network of around 1000 distributors, and 10,000 book sellers. The
plaintiff no.1 has been using the trademark continuously and extensively
along with plaintiff no.2-5 and other group companies. It has also been
proved that group companies of the MBD Group, have also acquired
specialization in publishing text books and reference books for students at
graduate and post graduate levels and for those pursuing a career in
medical, engineering and other technical areas. It has also been proved
that plaintiff no.1 publishes and exports books to North American
Countries, Europe, Gulf countries and South Asian countries. The
plaintiff has obtained six registrations for the mark MBD, details of which
is given in the affidavit by way of evidence and the certificates for use in
legal proceedings and registration certificates, along with renewal
certificates are proved and collectively exhibited as Ex.PW-1/9. Invoices
for the promotional activities carried out by the plaintiffs for the trade
mark MBD and other composite marks containing the house mark MBD
in Electronic Media are proved and are collectively exhibited as Ex.PW-
1/12. Copies of invoices for registration of domain names of the plaintiffs
are collectively proved and marked as Ex.PW-1/13. Copies of invoices
for the promotional activities carried out by the plaintiff for the mark
"MBD" and other composite marks containing the house mark MBD in
print media are proved and collectively marked as Ex.PW-1/14. The
evidence also establishes that the mark MBD has been subjected to
extensive, open, continuous, uninterrupted use, with enormous volume of
sale and the plaintiff has spent enormous amounts for the promotion and
on advertisement of the mark. The photographs depicting use of the
infringing mark by the defendant and printouts of the web pages
demonstrating usage of the infringing mark have been proved and are
collectively exhibited as Ex.PW-1/15. The adoption of the defendants of
an abbreviation identical to the registered trade mark of the plaintiff is
intentional. It is also established that the motive of the defendants to use a
mark identical to that of the plaintiffs for promoting and passing off its
own services as that of the plaintiffs is mala fide and dishonest and with a
view to ride upon the goodwill and reputation of the plaintiff.
36. Counsel for the plaintiff also prays for damages @ Rs.21,00,000/- for loss
of reputation and business as also the cost of the present proceedings. It is
trite to say that the defendant has deliberately stayed away from the
present proceedings with the result that an enquiry into the accounts of
the defendant for determination of damages cannot take place. The
infringement of the trademark of the plaintiff is not in dispute. Counsel
for the plaintiff in support of his case has drawn attention of this court to a
number of judgments ['M/s L.T. Overseas Ltd. v. M/s Guruji Trading
Co. and Anr. [CS (OS) No. 2711/1999; and Relaxo Rubber Limited and
Anr. v. Selection Footwear and Anr., 1999 PTC 578. Counsel has also
placed reliance on Time Incorporated v. Lokesh Srivastavaand Anr.,
2005 (30) PTC 3 (Del) where apart from compensatory damages of
Rs.5 lakhs, punitive damages have also been awarded. Justice R.C.
Chopra, has set out in Time Incorporated's case (supra) that punitive
damages are founded on the philosophy of corrective justice.
37. For the reasons stated above, the plaintiff has made out a case for grant of
decree as prayed in the plaint. Accordingly, the order dated 24.12.2010 is
confirmed and the suit is decreed in favour of the plaintiff and against the
defendant in terms of para 33 (i), (ii), (iii) & (v) of the plaint with costs
and damages to the tune of Rs.5.00 lakhs. Let a decree sheet be drawn up
accordingly.
G.S.SISTANI, J
APRIL 27, 2012
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