Delhi High Court
Premier Tissues India Ltd. vs Rolia Tissues Industries & Anr. on 22 February, 2012
Author: Manmohan Singh
.* HIGH COURT OF DELHI : NEW DELHI
+ I.A. No.10846/2011, I.A. No.12084/2011 and
I.A. No.12085/2011 in CS (OS) No.1672/2011
% Judgment decided on : 22.02.2012
Premier Tissues India Ltd. ..... Plaintiff
Through: Mr. Vijay Pal Dalmia, Adv. with
Mr. Vikas Mishra, & Ms. Christine
Chiramel, Advs.
Versus
Rolia Tissues Industries & Anr. ..... Defendants
Through: Mr. A.K. Goel, Adv. with Mr. Praveen
Kumar, Adv.
Coram:
HON'BLE MR. JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J.
1. The brief facts of the case are that the plaintiff, a company
incorporated in India under the provisions of the Companies Act, 1956
having its registered office at No.230, II Floor, 15th Cross, Sampige
Road, Malleswaram, Bangalore- 560003 has filed the present suit for
permanent injunction restraining the defendants from infringing the
registered trademark "PREMIER" and copyright of the plaintiff,
passing off, dilution, unfair trade practice and damages.
2. By way of this order, I propose to decide the following three
applications:
a) I.A. No.10846/2011 under Order XXXIX Rules 1 & 2 of
the Code of Civil Procedure, 1908 filed by the Plaintiff.
b) I.A. No.12084/2011 under Order XXXIX Rules 1 & 2
of the Code of Civil Procedure, 1908 filed by the Defendants.
c) I.A. No.12085/2011 under Order XXXIX Rule 4 of the
Code of Civil Procedure, 1908 filed by the defendants.
3. The plaintiff company through its predecessor "First Aryco
India Ltd." had adopted a trade mark "PREMIER" on 10.01.1997 for
manufacturing and marketing of a wide range of tissue paper products
namely Tissues, Tissue Paper, Facial Tissues, Hanky Packs, Kitchen
Towels, Toilet Tissues, Jumbo Rolls, Pop Up Napkins, Specialty
Napkins. (Cocktail, Luncheon, Dinner), Serviettes, C-Fold Hand
Towels, Napkins, Pop U Dispensers, Soap Dispensers etc.
4. It is averred in the plaint that the plaintiff manufactures and
exports a wide range of tissue paper products including tissue papers,
napkins, jumbo rolls, kitchen rolls, toilet rolls, etc. (herein after referred
to as the "tissue paper products") and sells and markets the said
products under various brands including "PREMIER". The plaintiff has
been using the said trademark since 1998. The tissue paper products of
the plaintiff are packed, marketed and sold in packings/boxes having
peculiar artwork, layout, pattern, get up, special fonts, design
placement, colour combination, wordings and descriptions which form
an original work of art that is exclusively owned by the plaintiff and
accordingly, all rights under the Copyright Act, 1957 also exclusively
vest with the plaintiff. The trademark "PREMIER" is prominently
written on all the boxes/packings/labels etc.
5. One of the products of the plaintiff i.e. Special Face Tissues
is packed, marketed and sold under the trademark "PREMIER" in
packings/boxes having peculiar artwork, layout, pattern, get up, special
fonts, design placement, colour combination, wordings and descriptions
which form an original work of art which is exclusively owned by the
plaintiff and accordingly all rights under the Copyright Act, 1957 also
vest with the plaintiff. On the top right of the box of "Special Face
Tissues", the face of a lady is depicted and placed in the background
and submerged in the background colour of the box of the product
along with the trademark "PREMIER" and some descriptive words. On
the front left portion of the packing/box of the product, the front photo
of a happy child , on the right front portion, the facial portion of a
happy child, on right front portion the facial portion of a smiling aged
lady and on the left portion of the packing/box, the photo of smiling
faces and a bust of a happy couple are depicted, placed and submerged
with the background colour of the box of the product along with the
trademark "PREMIER" and some descriptive words.
6. It is stated by the plaintiff that the entire artwork of the
packing/box of PREMIER "Special Tissue" having peculiar artwork,
layout, pattern, get up, special fonts, design placement and colour
combination (hereinafter referred to as the "Special Tissue Box") also
form a trademark, which has become distinctive and capable of
distinguishing the same in the market from others. The "Special Tissue
Box" of the plaintiff is also exclusively associated with the plaintiff by
the trade and purchasing public and is also protectable under the
provisions of the Trade Marks Act, 1999 as well as the Copyright Act,
1957. The plaintiff has registered its trademark "PREMIER" which is
prominent and distinctive of the products of the plaintiff. The details of
the registration of the trademark are given in para 16 of the plaint.
7. It also stated that the plaintiff has also been using another
trademark "ROYAL" and the same is also registered under the
Trade Marks Act, 1999 in Class 16 in respect of tissue paper products.
The plaintiff has also registered the domain name
http://www.premiertissues.com.
8. It is further averred that sometime in the first week June,
2011 the plaintiff came to know that the defendants are engaged in
unauthorized manufacturing, packing and marketing of tissue papers
under the trademark "PREMIUM" in packing/boxes which are
deceptively similar to the trademark "PREMIER" and "PREMIER
SPECIAL TISSUE BOX" the artwork, layout, pattern, get up, fonts,
design placement and colour combination of the defendants‟ boxes is
also deceptively similar to the plaintiffs‟ boxes. According to the
plaintiff, its investigation revealed that the said infringing tissue boxes
of the defendant are being sold in various shops and by roadside
vendors in Delhi as well as other parts of the country.
9. Further, the plaintiff came to know that the defendants are
engaged in large scale manufacturing of tissue paper products under the
trademark "PREMIUM" in boxes and packing having deceptively
similar artwork, layout, pattern, get up, fonts, design placement and
colour combination as that of the plaintiffs‟ boxes particularly
"PREMIER SPECIAL TISSUE BOX" and are advertising their
products on http://www.premiumtissues.net/about-rolia.html and
http://www.roliatissues.com/.
10. As per the plaintiff, defendant Nos.1 and 2 in
collaboration with each other, are misleading the customers and general
public by using the impugned trademark "PREMIUM" and a bare
comparison of the packing/box of the defendants will show
that the defendants are trying to pass of their spurious goods as that of
the plaintiff by creating deception and confusion in the market and in
the minds of the purchasing public. The said infringing activities of the
defendants have resulted in infringement of the registered trademark
"PREMIER" and registered copyright of the plaintiff.
11. The plaintiff avers that it is the prior and lawful user
of the trademark "PREMIER", "PREMIER SPECIAL TISSUE
BOX" and the copyright in the artwork, layout, pattern, get up,
fonts, design placement and colour combination of the
plaintiffs‟ "PREMIER SPECIAL TISSUE BOX" and it has statutory as
well as common law rights vested in it to prevent any
misappropriation and misuse of its trademark and copyright in any
manner.
12. Case of the Defendants
12.1 Defendant left M/s. Wintex Tissues in the year 1993 and
thereafter, started his own business of foils under trademark „PRIME‟
in the year 1994 (having different kinds of art works for foils) and of
tissue paper etc. in the year 1995 under the trade mark ROLIA
PREMIUM/PREMIUM as the proprietor under taking style M/s. Rolia
Tissues and thereafter opened another firm M/s. Rolia Tissues
Industries.
12.2 The defendant extended his business to tissue paper in
1995. Defendant developed the box of the ROLIA PREMIUM
TISSUES and prepared rough sketch artwork in 1995 in house with
the help of employees of the firm and thereafter, through the help of
computer graphics and other artwork were added. The font of the
PREMIUM is one of the known fonts which is openly available for use
on computer/internet and was taken from there and said font is generic
and is not an original artistic work. The defendants claims copyright
over the said carton being first to prepare the same. The said name was
initially used on small scale and thereafter, since 1997 on a larger scale.
12.3 The defendants mainly supplied since 1996-97 to the
GIANT SUPER STORE and HOME STORES LTD. (SABKA
BAZAR) on very low rates i.e. about 1/3rd of the marketing price with
good quality of products. Defendants were not required to give
advertisements as his products were being sold by Super Stores. The
advertisements were made by the said Super Stores through various
media suitable to them like in house display/pamphlets/newspapers
etc.
12.4 The defendants have four/five types of boxes for facial
tissues and 20/30 different packaging for other goods. Said original
packaging are filed by the defendants. The plaintiff has not challenged
the rest of the packaging of the defendants.
12.5 Defendants are prior user of trademark/packaging ROLIA
PREMIUM TISSUE, ROLIA PREMIUM and PREMIUM since the
year 1995.
12.6 Defendants‟ trade mark "ROLIA PREMIUM TISSUES" is
registered under No.1594703 dated 24.08.2007 and the same is still
valid, subsisting and in full force. However, the defendants have
right over the word PREMIUM on account of long prior user.
12.7 Defendants are continuously and openly using the said
trade marks ROLIA PREMIUM TISSUE, PREMIUM TISSUE,
ROLIA PREMIUM and PREMIUM since 1995.
12.8 Defendants herein are a honest, bonafide, prior and
exclusive users of the trade mark ROLIA PREMIUM TISSUE,
ROLIA PREMIUM and PREMIUM since 1995 in northern India.
Defendants are the owners of copyright in its various artistic
packaging/outer packing including the one in dispute etc. of ROLIA
PREMIUM TISSUE, ROLIA PREMIUM and PREMIUM which is an
original artistic work consisting of unique get up, colour combination,
font, design, placement, literary work etc. and also the defendants are
the prior user of said artistic packaging in respect of the said goods.
12.9 The defendants came from a very poor family, having rural
background, not having many resources, left the job before starting his
business and could not maintain complete start years records as was
informed that a firm is not required to preserve records for more than 6
years. The defendants‟ main sale is to two big super stores namely
Giant Super Stores and Home Stores Ltd. (SABKA BAZAR). The
defendant has hope that the said super stores will provide him
necessary oral as well as documentary evidence. The SABKA
BAZAAR has changed hands to Wadhwa Group who had shifted all
the documents to its Bombay office. Both the super stores have also
filed supporting affidavits in this regard. However, the defendants
have filed available unimpeachable documentary evidence and first bill
filed is dated 06.07.1997.
13. The defendants have also filed counter-claim against the
plaintiff on account of prior user. The defendants have sought an
injunction against the plaintiff and have filed the application under
Order XXXIX, Rules 1 & 2 CPC (being I.A. No.12084/2011).
14. Large number of documents have been filed by both parties
along with their pleadings as well as during the course of hearing of
interim applications.
15. When the suit along with interim application was listed first
time before the Court, partial interim order was passed to the following
effect in the presence of the defendants:
"Mr Goel has handed over the set of documents
and states that the defendants are using the different
cartons which are available at page nos. 36 to 39 in
the copies of the documents supplied by him. On
the other hand, the plaintiff has filed the four
cartons/packaging material allegedly used by the
defendants which is almost identical with the
cartons/packaging of the defendants. Since the
colour, scheme, getup, layout and arrangement of
features of the said cartons filed by the plaintiff and
the defendants which are available at page no. 24 to
26 of the list of documents are similar, the
defendants are restrained to use the said
cartons/packaging material which are available at
page nos. 24 to 26 of the documents file."
16. Both the parties have referred large numbers of decisions in
support of their respective submissions. However, both the parties
during the hearing of interim applications have not denied the
following facts relating to subject matter of the present case:
(a) That the trade marks "PREMIER" and "PREMIUM"
used by the parties are deceptively similar as admitted in
their pleadings.
(b) Most of the packaging used by the parties is similar.
(c) Goods in question are same and are available in the same
market.
(d) Both the parties are claiming prior user and are seeking
injunction against each other.
17. It has now become necessary for the court to examine the
relevant issue as to which party has documentary proof and has
cogent, reliable and unimpeachable documentary evidence in order to
come to the positive conclusion of prior user of the trade mark and
trade dress in question as claimed by both parties.
18. While coming to conclusion, the Court has to keep in mind
the conduct of the parties not only on the date of suit, but also prior
point of time when the respective claims were made by the parties in
various authorities and other places.
19. The learned counsel appearing on behalf of both the parties
have admitted that incase both parties would continue to use trade
marks and trade dress, as they have been using, there would be
confusion and deception. Scanned copies of some of the packaging
used by the parties are shown as under:-
Plaintiff :
A
Defendants :
Plaintiff :
B
Defendants :
Plaintiff :
C
Defendants :
Plaintiff :
D
Defendants :
20. Law relating to passing off action is quite well settled in
order to succeed in getting an interim injunction. Party claiming
prior/earlier user of the mark in question has to established prior user
in time by production of cogent and clear evidence. As far as the case
of infringement is concerned, Supreme Court in the case of Kaviraj
Pandit Durga Dutta Sharma Vs. Navaratna Pharmaceutical
Laboratories; AIR 1965 SC 980 at 990 has laid down as under :
"the action for infringement is a statutory remedy conferred on
the registered proprietor of a registered trade mark for the
vindication of "the exclusive right to the use of the trade mark in
relation to those goods"..........In an action for infringement, the
plaintiff must, no doubt, make out that the use of the defendant‟s
mark is likely to deceive, but where the similarity between the
plaintiff‟s and the defendant‟s mark is so close either visually,
phonetically or otherwise and the court reaches the conclusion
that there is in imitation, no further evidence is required to
establish that the plaintiff‟s rights are violated. Expressed in
another way, if the essential features of the trade mark of the
plaintiff have been adopted by the defendant, the fact that the
get-up, packing and other writing or marks on the goods or on
the packets in which he offers his goods for sale show marked
differences, or indicate clearly a trade origin different from
that of the registered proprietor of the mark would be
immaterial......"
Therefore, I am of the view that it is not necessary at this
interim stage to refer and discuss all decisions relied upon by the
parties when both parties are not disputing the settled proposition of
law regarding prior user and infringement of trade marks, copyright and
passing off as according to themselves one party has infringed the
rights of another party.
The Plaintiff's arguments
21. The first commercial use of the trade mark PREMIER is
since 1998 in respect of goods mentioned above. The history of the
incorporation and its subsequent developments is as under :
a. Initially "First Aryco India Ltd.", incorporated in the year 1997,
on 10.01.1997.
b. Premier Aryco India Ltd., incorporated on 19.03.1998.
c. Name of Premier Aryco India Ltd., changed to Premier Tissues
India Ltd. on 04.03.2005.
d. The present name of the plaintiff company is Premier Tissues
India Ltd.
22. The details of the publicity in the media including
newspapers are as under :
a. Economic Times dated 30.01.1998.
b. Business Line dated 30.01.1998.
c. The Hindu dated 30.01.1998.
d. Indian Express dated 29.01.1998.
e. Deccan Herald dated 29.01.1998.
The other details and documents are also filed alongwith
list of documents dated 29.09.2011.
23. Plaintiff predecessor "First Aryco India Ltd." applied for
the registration of the trade mark "PREMIER" as per the details given
below :
S. No. Trade Mark Registration Date of Class Status Reference
No. Application
1. PREMIER 783229 23.12.1997 16 Registered, Page No.1-6
(label) renewed of the list of
and valid documents
till date dated
11.07.2011
filed by the
plaintiff
2. PREMIER 783230 23.12.1997 16 Registered, Page No.1-6
renewed of the list of
and valid documents
till date dated
11.07.2011
filed by the
plaintiff
24. Premier Aryco India Ltd. was incorporated on 19.03.1998
and its name was changed to Premier Tissues India Ltd. on 4.3.2005.
25. According to the plaintiff, the total annual turnover under
the trade mark/name is approximately Rs.176,57,25,000/- (One
hundred and Seventy Six Crore Fifty Seven Lac Twenty Five
Thousand).
26. It is submitted by the plaintiff that the plaintiff has also
spent a considerable amount of sum of Rs.2,08,00,000/- (Rs. Two
Crores, and Eight Lac only) on advertisement of its products under the
trade mark „PREMIER‟. All the advertisements including the
advertisement of the plaintiff‟s products under the trade mark
„PREMIER‟ including the advertisement in the January 15, 2001 issue
of Femina Magazine, shows that the products of the plaintiff were
being sold throughout India including Delhi.
27. The plaintiff‟s products were also sold to Wipro, Infosys,
Taj Group of Hotels, Meridien Group of Hotels, Manipal Hospitals,
Apollo Hospitals etc. who are its institutional buyers.
28. The plaintiff has filed various original bills of its products
under the trade mark „PREMIUM‟, for the period starting from
30.04.1999 upto 31.07.2006. The plaintiff has also filed some of the
copies of Form 3, which is statement of monthly turnover and tax paid
in advance, before the authorities for the period starting from October,
1998 to March 2002. All the abovementioned forms and bills
mentioned following numbers for the payment of sales tax :
i. KST No.72720074 dated 07.10.1998.
ii. CST No.72770077 dated 07.10.1998.
29. It is stated by the plaintiff that in the year 2010 Avantha
Group took over the plaintiff company, and there was a change in the
management of the Company. During the course of its business the
plaintiff company several times upgraded its billing systems,
incorporating new software and statutory changes to meet the
exigencies of its operations. It is also stated that when the Company
was taken over by the Avantha Group, to streamline the operations of
the plaintiff company, it was decided to feed the past records of bills
into the billing system. However, while feeding the data pertaining to
the past bills, the plaintiff‟s employees did not realize that due care
was required to be taken for feeding the billing information in the
computerized accounting system by taking care of various statutory
and other changes relating to shifting from state sales tax/CST to VAT
system as well as changes in the name of the plaintiff company. It is
submitted that inadvertently the entire exercise resulted in faulty data
conversion leading to anomalies and errors in billing system.
According to the plaintiff, when for the purpose of filing this suit, the
copies of bills were demanded by the counsel for the plaintiff, the
accounts department of the plaintiff company inadvertently gave the
printouts of the bills which were not properly fed into the computer
system. Relying upon such print outs, the plaintiff filed the bills
alongwith the suit. The plaintiff later on realized its mistake on
pointing out by its counsel and thereafter, put strenuous efforts to dig
out the old records which resulted in the discovery of some of the
original bills pertaining to the sale of the goods under trade mark
„PREMIER‟.
30. Similar situation arose in the case of Pioneer Nuts and
Bolts Pvt. Ltd. v. Goodwill Enterprises: 2009 (41) PTC 362 (Del.)
(DB) wherein the prior user was claimed by the parties. The relevant
paras of the said judgment are as under:
"12. The question was whether the Defendant had made out a
case for prior use. The learned Single Judge noted that trade
mark registration was given to the Plaintiff in 2005 with effect
from 1998 and 2002. Copyright registration was obtained in
2005. Although the earliest use of the disputed mark was
claimed by the Plaintiff to be 1996, the invoices and bills
produced were of the years 2004 onwards. The income tax and
sales tax returns from 1996 onwards mentioned the Plaintiff‟s
income and sales but not its products. On the other hand, the
Defendant had been able to show three advertisements, two of
26.12.1993 and one of 1999, trade enquiries of 1993, 1994 and
1995 and different invoices pertaining to Calcutta and Madras.
The Plaintiff‟s case was that the Defendant was a squatter and
merely advertising the mark but never using it. Referring to the
judgment in Revlon Inc. v. Sarita Manufacturing Company, AIR
1998 Delhi 38: 1997 (17) PTC 394 (Del.), it was held by the
learned single Judge that the dissemination of knowledge of a
trade mark in respect of a product through advertisement in
media amounts to use of the trade mark whether or not the
advertisement is coupled with the actual existence of the product
in the market. The learned single Judge negatived the argument
of the Plaintiff about the advertisements produced by the
Defendant amounting to no credible evidence of user.
13. The other issue was of prior user. The learned single Judge
relied on the copies of the partnership deeds where Harpreet
Singh was shown as partner of the firm from 1991 in relation to
the business and the product. Reliance was placed on the
judgment in Swaran Singh v. Usha Industries (India), AIR 1986
Del 343: 1986 (60 PTC 287 (Del) (DB) and Mocolube India
Ltd. v. Maggon Auto Centre, 2008 (36) PTC 231 (Delhi) to hold
that the Plaintiff has been able to establish prima facie existence
of registration in its favour, in relation to the subject marks, with
effect from 1998 and 2002. Yet there was no credible evidence
of proof of the use of the mark from that period; the materials
were sketchy. It was held that the Plaintiff had not produced any
material to show that it had used the mark prior to 1998. On the
other hand, the Defendant has "prima facie shown that the mark
was advertized in 1993 and 1999 and trade enquiries through
original letters, indents, etc. existed in 1993, 1994, 1995
onwards". The issuance of telegraphic name „TUFF‟ by the
Postal Department in 1994, 1995 was also noticed and it was
held that the Defendant was "prima facie continuously using the
marks since 1993 at least, enabling it to the benefit of Section 34
of the Act." Accordingly the injunction was refused.
23. Turning to the case on hand, the Defendant has been unable
to show that its goods bearing the mark TUFF were at any point
of time since 1991 and prior to 1996 available in the market.
There is absolutely no evidence placed on record by the
Defendant to show that it has actually sold its goods using the
mark „TUFF‟ or „TUFF & TUFF‟ even thereafter. For proving
prior user, the Defendant repeatedly referred to the two
newspaper advertisements inserted by it in 1993, the six trade
enquiries between 1994 and 1995 emanating from these
advertisements. Between 1993 and 1995, there were seven
indents of John and John Traders and one indent of Bolt House.
There is also a letter from John and John Traders asking the
Defendant to send goods from outside. Then we have the grant
by the Postal Department of the telegraphic address „TUFF‟ to
the Defendant.
24. In light of the law as explained in the aforementioned
decisions as applied to the facts of the present case, the
advertisements issued in the newspapers can hardly constitute
the proof of service on the user of the mark from those dates.
Likewise, the grant of a telegraphic address, or the soliciting of
business, or the receipt of trade enquiries cannot by themselves
satisfy the legal requirement of the defendant having to show
that it used the marks, earlier than the Plaintiff did, in relation to
goods.
25. As regards the filing of trade mark applications, the
unilateral self-serving declaration by the Defendant in some of
them of user since 1991 cannot constitute evidence of the
commencement of use from that date. The opposition to the
Defendant‟s applications has still not been disposed of and no
registration as such has been granted to the Defendant.
Therefore, this does not carry the case of the Defendant any
further. In any event the claims of user made in the applications
by the Defendant have been inconsistent. In the application No.
942787 filed on 27.7.2000, user was claimed since 1.4.1995. In
application No. 1301515 filed on 10.8.2004, it was stated
"proposed to be used". In application No. 1302920 filed on
16.8.2004, the user was claimed since 1.1.1991 and in
application No. 1365632 filed on 21.6.2005, the user was
claimed since 17.6.2005. These inconsistent positions taken by
the Defendant creates more difficulties for it about the claim of
prior user."
31. Let me now consider the rival submissions of the parties and
documentary evidence in relation to the trade marks PREMIER and
PREMIUM and their packaging material :
(a) THE DATE OF APPLICATION AND USER CLAIMED BY
THE PARTIES IN THE TRADE MARK REGISTRY.
Plaintiff Defendants
Two registered trade marks The defendants‟ application
PREMIER/PREMIER label of ROLIA PREMIUM
under Nos.783230 and 783229 TISSUES bearing
in Class 16 as of 23.12.1997 No.1594703 in Class 16 is
claiming user since dated 24.08.2007 claiming
23.12.1997. user since 17.08.2005. The
said mark was registered
with the disclaimer whereby
defendant No.2 claimed no
exclusive right for the word
PREMIUM TISSUE.
As referred above, in case a party has agreed to the
disclaimer and obtained the registration with disclaimer, no benefit of
registration within the meaning of Section 28 can be derived as the
registration is subject to the disclaimer. From the date of registrations
of the parties and as per record of Trade Marks Office, it is clear that
the defendants are subsequent on both counts i.e. on the date of
application and the user claimed in the Trade Mark Registry. Mr.
Ashok K. Goel, learned counsel appearing on behalf of defendants
has tried to justify that the user of 2005 as claimed by the defendants
by saying that it was a wrong advice given by the Trade Mark Agent
and now application for amendment of user has been filed in the trade
mark registry. The submission has no force as when the application
was filed by the defendants admittedly, the user claimed was 2005. It
is immaterial at this stage to submit that now the application for change
of user has been filed.
32. Advertisement of Trade Mark
a) Plaintiff : The plaintiff has filed various advertisements by
way of publicity of trade mark PREMIER in the media including
newspapers, news items and in the magazines since the year 1998.
b) The following documents are filed :
a) Copy of the newspaper article of several newspaper of the year
1998 which features the name of the predecessor of the plaintiff
and corporate name/mark "PREMIER".
b) Fresh certificate of incorporation consent on change of name
highlighting the claim of the plaintiff and use of the corporate
name/mark "PREMIER".
c) Original Femina Magazine dated 15.01.2001 featuring the
advertisement of mark "PREMIER" with the font and writing
style in question of the plaintiff.
d) Internet Print-out of WHOIS record highlighting the creation of
the domain name www.premiertissues.com on 07.09.2001 filed
with list of documents dated 11.07.2011 by the plaintiff.
e) Advertisement in Femina Magazine dated 15.08.2007,
12.09.2007, 26.09.2007, 10.10.2007, 16.07.2008, 13.08.2008,
14.01.2009 filed with list of documents dated 11.07.2011 by the
plaintiff.
c) Defendants : There is not a single advertisement in the
newspaper or in any known magazine as cogent and clear evidence
filed from the date of user claimed by the defendants or prior to the
user claimed by the plaintiff. Hence, it is clear that on advertisement of
their products, the defendants are not able to establish the prior user.
33. Sales and Advertisement Figures
Plaintiff : The plaintiff has filed the sale and advertisement figures
pertaining to the trade mark PREMIER since 1999-2000 to 2010 as
mentioned in para 12 of the written arguments and for last year, the
total annual turnover of the plaintiff‟s products was about
Rs.176,57,25,000 (One Hundred and Seventy Six Crores Fifty Seven
Lac Twenty Five Thousand) and they are selling their products to
various well known clients in India.
34. In order to show prior user the defendants have produced
the sale figures by way of certificate issued by the chartered
accountant Narinder Handa and Associates from the year 1997-98 to
2010-2011 filed alongwith list of documents dated 30.08.2011. The
defendants have also filed acknowledgement slip of income tax return
of defendant No.1 for the assessment years 1998-99, 1999-2000 and
2000-2001 alongwith list of documents dated 26.07.2011. But these
documents do not indicate about the use of mark PREMIUM except
that two firms (defendants) were carrying on business of tissue
papers. The defendants have also filed the certificate issued by
Central Bank of India in the name of the defendants firm about the
transaction in the Bank since 21.2.2009, but, the mark PREMIUM was
not mentioned.
35. The defendants have also referred to many documents filed
by them but in order to show prior user of the trade mark PREMIUM in
relation to the goods the following documents are relied upon :
a) Bill dated 06.07.1997 in respect of sale under trademark
ROLIA PREMIUM issued by the defendants duly received by
GIANT THE SUPER MARKET.
b) Bill dated 12.10.1997 issued by the defendants which is counter
signed by Sh. Ajit Mayor duly supported by an affidavit.
c) Bill dated 30.01.1998 in respect of sale under trademark
PREMIUM issued by the defendants duly received by GIANT
THE SUPER MARKET.
d) Bill dated 06.09.1998 in respect of sale under trademark
PREMIUM issued by the defendants and duly received by
GIANT THE SUPER MARKET.
e) Alleged packaging/sheet of the defendants‟ mark PREMIUM
dated Jan 1998.
f) Sales figure of M/s. Rolia Tissues industries from financial
years 1997-98 to 2010-11 duly certified by Chartered
Accountant.
g) Original copy of the certificate issued by Central Bank of India,
Badarpur Branch, New Delhi for the opening of the Bank
Account of M/s. Rolia Tissues on 21.02.1997.
h) Original copy of the Income Tax Acknowledgement Form,
showing for the financial year 1997-98 of the defendants under
the firm name Rolia Tissues Industries.
i) Original copy of the challan showing payment of the income tax
for the financial year 1998-99 of the defendant No.1.
j) Original copy of the computation of the income for the financial
year 1998-99 of the defendants under the firm name M/s. Rolia
Tissues Industries.
k) Original copy of the Saral Form showing filing of income tax
return of Sh. Durgesh Saxena for the financial year 2000-2001.
36. In support of documents referred to above, the defendants
have also referred to two affidavits of Mr. Ajit Mayor, Ex. Managing
Director of M/s. Ajit Mayor and Company and Mr. Majid Khan Ex.
Assistant Manager of M/s. Home Store India Ltd.
37. As regard documents i.e. certificate issued by Central Bank
of India, Income Tax acknowledgement for the years 1997-98, 1998-
99, challan showing the payment of the income tax, sale figures and
certificate issued by the chartered accountant are concerned, the same
have already been discussed in earlier paras that none of the
documents show about the use of the trade mark PREMIUM in
question . These documents only indicate that there was a firm during
this period in the year 1995-96 under the name and style of Rolia
Tissues Industries who was carrying on its business of selling tissues
papers but, these documents do not indicate in any manner that the
trade mark PREMIUM is being used as mentioned on these documents.
38. The original bills dated 6.7.1997, 12.10.1997, colour copies
of box cover sheet of the defendants for the period January, 1998, do
not contain local sales tax and central sales tax numbers. These bills
were issued by Rolia Tissues which have been filed in order to prove
prior user of the trade mark PREMIUM. There is not a single
document on record by the defendants of third party, like post card,
inland letter, newspaper advertisement, copy of magazines or any other
document in the nature of cogent and clear evidence, though there is a
third party evidence available on record from the period 2005 which is
subsequent to the user of the plaintiff.
39. This court is of the view that since the defendants are
claiming the prior user and are also seeking the interim injunction
against the plaintiff, it has become more necessary for the defendants to
file clear and cogent evidence which could not be challenged at this
prima facie stage. The same is missing in the present case. It is
necessary in the present case due to the fact as the defendants
themselves have claimed in the Trade Mark Registry on 17.5.2005
(the specific date of user is given). It is also pertinent to mention
here that when the application of defendant was examined under
Rule 37 of the Trade Marks Rules, 2002, at that time, the plaintiff‟s
trade mark PREMIER was already in existence/pending for
registration. At that time the defendants themselves gave up its
exclusive rights to the use of the mark PREMIUM and accepted the
condition of the Registrar and disclaimed its registration.
40. If the defendants got the prior user as claimed in the year
1995 in the present case, then, why the defendants did not claim the
same user in the Trade Mark Registry in their application No.1594703
in Class 16. It was the most appropriate stage to put their claim of
user. Even in the second application bearing No.1955501 filed by the
defendants, the user claimed was 01.10.1999. Therefore, prima facie,
it is clear that the defendants were/are taking inconsistent stand about
the user at different stages. It has rather created doubt in the mind of
Court, if at this stage any application for change of user has been filed
in Trade Mark Registry. As discussed, there is no clear, cogent and
undisputed evidence produced by the defendants to show the prior user
claimed by them. On the other hand, the plaintiff‟s documents, like
advertisements and news report, are available on record from the year
1998 for user claimed by the plaintiff.
41. As far as the two affidavits filed by the defendants are
concerned, both the companies are not in existence any more. The
affidavits are filed by Ex. Managing Director of Ajit Mayor and
Company Pvt. Ltd. and Ex. Assistant Manager of M/s. Home Store
India Ltd. These affidavits have been filed by the defendants in
support of claim of longer and prior user and the same cannot be given
due credence as these affidavits would have to be tested at the time of
trial. The identity, authority and authenticity of the deponents cannot
be given due credence at this stage unless they are supported with
solid evidence.
42. The defendants have challenged the validity of documents
filed by plaintiff by stating that these cannot be looked into. But, this
Court is of the view that apart from the documents challenged, there
are large number of other documents available on record which are
cogent and clear evidence of prior user i.e. from the year 1998.
43. In view of the above, it appears from the record that two
set of packaging are almost similar. Both marks, PREMIER and
PREMIUM are deceptively similar. The defendants could not have
designed their packaging without placing the packaging of the plaintiff.
Prima facie, it is clear that it is a case of violation of vested rights of
the plaintiff and pirator thereof cannot become rightful owner in any
manner. Thus, the plaintiff has made out a strong case of injunction.
44. Under these circumstances, I am of the considered view that
the plaintiff has been able to make a strong prima facie case for
infringement of trade mark, copyright and passing off. The balance of
convenience also lies in favour of the plaintiff and against the
defendants. Incase the defendants/counter claimant is not stopped from
using the mark and trade dress in the similar packaging, the plaintiff
will suffer irreparable loss and injury, which cannot be compensated in
terms of money. Therefore, plaintiff‟s application, being I.A.
No.10846/2011 under Order XXXIX, Rules 1 and 2 read with Section
151 CPC, is allowed. The defendants, their dealers, retailers, servants,
agents or any one acting for and on their behalf, are restrained from
using the trade mark PREMIUM and/or any other trade mark, which is
deceptively and confusingly similar to the plaintiff‟s registered trade
mark PREMIER as well as similar packaging/trade dress amounting to
infringement of copyright and passing off their goods as that of the
plaintiff in respect of tissues of all kinds, or any other allied and
cognate goods. It is clarified that the finding arrived by this Court
about the defendants‟ user is tentative and prima facie view which shall
have no bearing when the matter would be considered after the trial on
merit.
45. The applications filed by defendants, being I.A.
No.12084/2011 under Order XXXIX Rules 1 and 2 read with Section
151 CPC and I.A. No. 12085/2011 under Order XXXIX Rule 4 read
with Section 151 CPC, are dismissed.
MANMOHAN SINGH, J.
FEBRUARY 22, 2012
