M/S Marc Enterprises Pvt. Ltd. vs M/S Victor Industries
2012 Latest Caselaw 4360 Del

         IN THE HIGH COURT OF DELHI AT NEW DELHI

                          CS(OS) No. 1592/2006



M/s Marc Enterprises Pvt. Ltd.                   ..Plaintiff
                            Through Mr.Pankaj Kumar, Mr.
                            VikasKhera, Mr.Harshvardhan,
                            Advocates


                                 - versus -

M/s Victor Industries                               .....Defendants
                                 Through none

CORAM:-

HON'BLE MR JUSTICE KAILASH GAMBHIR



1.

This is a suit for permanent injunction restraining infringement,

rendition of accounts, damages and delivery up of all the impugned

goods. The plaintiff is a Private Limited Company duly registered

under the Companies Act, 1956, having its registered office in

Delhi. The plaintiff Company is also engaged in the business of

manufacturing Electrical accessories & fittings, Electrical

equipment, Electrical Appliances, Electrical & Electronic Apparatus

& Instruments, and Domestic Wares etc. It is the case of the

plaintiff Company that the plaintiff company since 1981, bonafidely

and in due course of trade and business adopted, coined, conceived

and created the trademark „MARC‟. The plaintiff trade mark /label/

logo MARC is depicted in unique style, font and placing of

alphabets. The art work involved therein is an original artistic

works within the meaning of Indian Copyright Act, 1957 and

plaintiff is the owner and proprietor thereof. The plaintiff is

carrying on an extensive business/ trade under this trade mark/

logo/ label and the goods bearing the same have been practically

distributed in major parts of the country. The plaintiff has been

dealing with his said copyright in his said trademark /label/ logo

inter aliaSection 14 of the copyright Act in respect of his said goods

and business. The Plaintiff holds registration in respect of

trademark „MARC‟, the table below gives the classification of the

items bearing the said trademark and the respective category

under which they have been registered under the Trademark Act,

1999:

REGISTRATION     CLASS/ GOODS                                      STATUS    REGISTRATION

NO                                                                           DATE

420735B          09/ insulated electric wires and cables, Registered         16.04.1984

television, receiving sets, switches, fuses,

cut out plugs, socket, push buttons, fuse

bosses, connectors, electric press, volt

records, tape records, cassettes, electronic

instruments, chokes, electric

transformers, electric bells and buzzers,

stabilizer, electric starters, adopters,

voltage stabilizer, electric terminal,

domestic electrical appliances,

instruments, electric accessories and parts

thereof, electrical coil holders, conduit

pipes.

420736 11/ toasters, Hot plate for cooking, Registered 16.4.1984

electric tandoors, electric pressure

cookers, electric ovens, milk cookers,

electric bulbs, holders, table cookers,

electric bulbs, holders, table lamps, fans,

refrigerators, room air conditioners,

geysers, room heaters, electric hot acses,

ventilators, room coolers, desert coolers,

Heating elements, lighting fixtures and

fittings, installations, fluorescent tubes.

420737B 07/ Washing machines, mixing and Registered 16.4.1984

grinding machines for kitchen use,

sewing machine, hair drying machine,

water pumps, electric motors (not for

land vehicles) all being goods included in

class 7

2. The Plaintiff further submits that the abovementioned

registered trademark is renewed from time to time and it is

stillsubsisting, legal and valid. It is further submitted that the

plaintiff has been continuously promoting his said goods and

business under his said trade mark through different means and

modes including advertisements and publicity in leading

newspapers, distribution of trade literature, trade hoarding and

boards etc. The Plaintiff‟s claims to have enjoyed a solid enduring

and first class reputation in the markets and in support of the same

the Plaintiff hadalso enumerated and furnished sales figures of

their business for the last 10 years. Their Sales Figure as appearing

at page 6 of the plaint right from 1981 upto 2004 indicate their

business has flourished over the years and the sales have rapidly

increased to Rs.14- Rs.15 crores. The plaintiff‟s business turnover

being Rs.14, 65, 02,583 in the year 2003-2004, the plaintiff claim to

have maintained the highest standards of business and trade of the

said goods and business. The Plaintiff has already expelled

enormous amounts of money in the publicity/advertising/marketing

thereof.

3. It is furthersubmitted that in or about November, 2005, the

plaintiff company came across an advertisement in the monthly

magazine vidyutbazaar.com, wherein the defendants had

prominently displayed the impugned trade mark alongside

impugned goods and solicited dealer‟senquiry. The Defendants M/s

Victor Industries having Regd office at 2/206, Ashirwad Industrial

Estate, Ram Mandir Road, Goregaon(W)., Mumbai 400104 is

apparently engaged illegally in the business of Electrical goods

including electrical switches and accessories under the trademark

MARC, However the Plaintiff also made a submission that the exact

constitution of the whereabouts of the Defendant is not known to

the Plaintiff and they shall be called upon to disclose the same. The

said goods of the Defendants are same/ similar as to that of the

Plaintiff and the impugned trademark is identical and deceptively

similar to the trademark /label/ logo of the Plaintiff in each and

every respect including the get up, make up , artistic manner/font

etc.

4. The plaintiff through their counsel issued upon the defendant

cease and desist notice dated 28.02.2006 and the defendants

replied to the alleged notice via email which is further alleged to be

vague, baseless, and illegal by the Plaintiff. It is further submitted

by the plaintiff that on carrying on an inquiry in the market and

trade and during the enquiry it was revealed that the defendants

have just recently, in the end of November have started using the

impugned trademark/ label/ logo on its vendible articles i.e. the

impugned goods. The plaintiff came to know that the defendants

are conducting business in a clandestine and surreptitious manner,

without issuing any formal bills and invoices against the sales of

their impugned goods. It is also the case of the Plaintiff that he is

carrying on the said business throughout the country using the

above referred trademark, which is also being illegally

manufactured and marketed by the defendant bearing the

offending label. The adoption of the mark „MARC „in respect of

identical products cannot be a mere coincidence and indicates a

dishonest and fraudulent intention from the outset on the part of

the defendant to derive pecuniary benefits from using the

impugned mark/label. The plaintiff, thus, claims infringement of its

registered and well known trademark "MARC". The plaintiff has

sought injunction restraining the defendants from using the

trademark "MARC" or any other mark deceptively similar to the

trademark of the plaintiff. The plaintiff has further sought for an

injunction restraining the defendants from passing off the plaintiff‟s

trademarks "MARC" and from applying and obtaining registration

in respect of the impugned trademark or any deceptive variation

thereof. The plaintiff has also sought damages besides seeking

rendition of accounts and delivery up of the infringing packaging

material etc.

5. The defendants have failed to appear to contest the present suit

despite being duly served.

6. The plaintiff has filed affidavit of Sh. Pramod Jain, authorized

Signatory of the plaintiff company, by way of ex parte evidence. In

the ex parte evidence adduced by the plaintiff, Mr Pramod Jain has

supported on oath, the case setup by the plaintiff company in the

plaint. He has also tendered documents Ex.PW1/1 to Ex. PW1/10 in

evidence filed with the plaint. The plaintiff engaged themselves in

the business of manufacturing electrical accessories and fittings

etc. since 1981. The plaintiff in the year 1981 bonafidely, in the

course of trade and business adopted, coined, conceived and

created the Trade mark "MARC" and began their operations in the

year 1981 and their business has since grown in leaps and

bounds,as a result, the Plaintiff has achieved remarkable success as

well as goodwill. The Plaintiff got registered their trade mark with

the registrar of Trade mark in 1984. The Plaintiff‟s trade mark/

label/ the logo MARC is depicted in unique lettering style within

the meaning of Indian Copyrights Act, 1957.He has also stated that

the trademark/label is being used by the plaintiff openly,

continuously and extensively since the year 1981 and it has

acquired a secondary meaning connoting and denoting to the

members of trade and customers at large that thesaidtrademark is

exclusively identified with the plaintiff. He has also mentioned that

the defendant was offering services from premises having their

registered office at 2/206 Ashirwad Industrial Estate, Ram Mandir

Road, Goregaon (W)., Mumbai-400104. It is further submitted by

the plaintiff that it is apparent that the defendant is illegally

engaged in the business of Electrical goods including electrical

switches and accessories under the Trade mark MARC, which is

exhibited as EX.PW1/D-1.

7. ThePW1/1 filed the ex parte evidence affidavit on 03.10.2008

and placed certain documents on record, Ex.PW 1/1 is the copy of

registration certificate and by virtue of the said registered

trademark the plaintiff has exclusive rights over the same inter alia

within the meaning of Section 29 Trademarks Act 1999 .The

plaintiff has also filed number of applications for the registration of

trademark/ label/ logo MARC in different classes of wider

specification of goods which is exhibited as Ex. PW 1/2,in favour of

the Plaintiff, Representation/brochure of the trademark exhibited

as Ex. PW 1/3(colly). The Plaintiff had further filed supplementary

evidence by way of affidavit along with the certified copies of

certain original documents marked as Ex. PW 1/B. Ex. PW1/7 is the

certified copy of the Central Excise Registration Certificate etc.

Ex.PW1/5 is the certified copy of the Trademark Registration

Certificate bearing no. 911681 in class 09. Whereas, the renewal

certificate bearing no.420736 is exhibited as Ex. PW1/6. The letters

from Bureau of Indian Standards are also filed with the list of

documents filed along with the plaint and are exhibited as Ex.

PW1/8.

8. The deposition of PW-1 Pramod Jain, coupled with Ex. PW-1/4

shows that the plaintiff has established and flourished since the

time he adopted the trademark MARC. The invoices, the renewal

certificates of registration certificate MARC have also been

exhibited along with the Plaintiff‟s evidence, and the sales figures

adhered in the plaint by the plaintiff, shows that they have had a

large turnover in the years 1999-2000, 2003-04, from the sales

being rendered by them and they incurred huge expenditure during

those years on advertising the services being offered by them,

through various advertisements and publicity in the newspaper, is

also marked as Mark „F‟ in the list of documents, at pages 25-84

wherein certain invoices of sale are also attached. Since the

defendant has chosen to remain ex parte and has not come forward

to controvert the oral and documentary evidence produced by the

plaintiff, this Hon‟ble Court finds no reason to disbelieve the claim

of the plaintiff that the trademark „MARC‟, on account of its

continuous and extensive use by the plaintiff through various

agencies set up by him and the expenses incurred by him in

promoting the trademark, it has come to be associated with the

plaintiffs and the services being offered under the brand name

MARC have come to be identified as the whole sellers of electrical

goods and services being offered by the plaintiff. I see no reason

to disbelieve the claim of the plaintiff that they have been

recognized in providing comprehensive impugned goods through a

team of dedicated and well trained professionals.

9. The Registration Certificate dated 13.10.1989 marked as Ex. PW

1/ 1 in the list of documents, issued by Registrar of Copyrights,

shows that the plaintiff is the registered owner of the

work.Annexed to the certificate, Page 2 of the same, which in

fact, is anannexure to the document, shows that the copyright has

been claimed and registered in the artistic work involved in writing

the words MARC which have been written in a particular unique

style and particular getup, using a distinctive font for the purpose.

The sketch of electrical goods like geyser and other fittings drawn

by the plaintiff has been shown and marked as Ex. PW 1/ 3 at

pages1 and 4 in the list of documents, shows the comparison of the

two marks exhibited as Ex PW1/3 and PW-1/D-1 respectively, It is,

therefore, difficult to dispute that the work in respect of which

copyright has been granted to the plaintiff is a result of an idea

conceived by them expressed in a unique way, using a lot of skill,

labour and ingenuity in the process and, therefore, qualifies as an

artistic work within the meaning of Section 2(c)(i) of Copyright Act.

The work of the plaintiff has been recognized by Registrar of

Copyright, by granting requisite registration in their favour. Prima

facie, registration of such a work under Copyright Act covered at

least substantial evidence of it being an artistic work within the

meaning of the Act. No one can claim copyright in general in the

picture or sketch of a mark depicting the designs of electrical

goods in their exclusive way. However, a lot of skill and labour is

involved in conceiving, conceptualizing and producing such a work

and, therefore, a particular picture or sketch may constitute an

artistic work in which copyright can be claimed by its author. No

one has a right to reproduce any such work using the essential

features of that work.

10. It is not necessary that in order to constitute infringement of a

copyright, the impugned work should be an exact or verbatim copy

of the original work and it will be sufficient if it is shown that

though not a verbatim copy of the original work, the impugned

work resembles to it in a substantial degree by extensive use of the

main feature, which are found in the work in respect of which

copyright is claimed. In fact any intelligent person copying a work,

in which the copyright vests in another person, would make some

changes here and there so as to claim that his work does not

constitute infringement of the work in which a copyright subsists in

favour of another person. But, such rather minor dissimilarities

between the work of the plaintiff and the impugned work would not

deprive the plaintiff of injunction in case degree of resemblance in

the two works is substantial and there is an attempt to encash upon

the goodwill of a well-established work.

11. In Parle Products (P) Ltd. v. J.P. & Co., Mysore,

AIR 1972 SC 1359, Supreme Court inter alia observed as under:-

"According to Karly's Law of Trade Marks and Trade Names (9th Edition Paragraph 838) "Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with the one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. It would be too much to expect that persons dealing with trademarked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own"

12. It is therefore clear that in order tocome to the conclusion

whether onemark is deceptively similar toanother, the broad and

essentialfeatures of the two are to beconsidered. They should

beplaced side by side to find out if there are any differences in

thedesign and if so, whether they are ofsuch character as to

prevent onedesign from being mistaken for theother. It would be

enough if theimpugned mark bears such anoverall similarity to the

registeredmark as would be likely to mislead aperson usually

dealing with one toaccept the other if offered to him.

13. The above referred observations in Parle Products Case

(supra) made by the Hon‟bleSupreme Court in respect of a

trademark would equally apply in the case for infringement of a

registered trademark as well. The plaintiff has, thus, been able to

prove infringement of her copyright as also that the defendant by

using the mark "MARC" is passing off their sale / services in the

electrical upholstery related services as those being offered by the

plaintiff. The case of the plaintiff finds further strength from the

fact that the defendant irrespective of being duly served upon him,

failed to contest his case, proves the prima facie malafide

intentions of the defendant.

14. The relief of rendition of account was also pressed during the

course of arguments by the plaintiff. The plaintiff has also claimed

damages to the tune of Rs.20lacs. No actual damages have been

proved by the plaintiff and the only prayer made during the course

of arguments was to award punitive damages. At this stage the

plaintiff invited my attention to the decision of this Court inAsian

Paints (India) Ltd V. Balaji Paints and Chemicals &Ors. 2006

(33) PTC 683 (Del). In the case of Asian Paints (Supra), this

Court observedthat

"11. The learned counsel for the plaintiff submits that apart from the relief claimed for in paras (a) to

(d) of para 33 of the plaint, the plaintiff is also entitled to damages. In this behalf, learned counsel

for the plaintiff has relied upon the judgments of this court in Relaxo Rubber Limited and Anr. v.

Selection Footwear and Anr. 1999 PTC (19) 578, Hindustan Machines v. Royal Electrical Appliances 1999 PTC (19) 685 and CS (OS) 2711/1999 L.T. Overseas Ltd. v. Guruji Trading Co. and Anr. decided on 7.9.2003. In all these cases, damages of Rs.3 lakhs were awarded in favour of the plaintiff. In Time Incorporated v.

LokeshSrivastava and Anr. 2005 (30) PTC 3 (Del),it was observed that apart from compensatory damages even punitive damages were awarded to discourage and dishearten law breakers who indulge in violation with impunity. In a recent judgment in Hero Honda Motors Ltd. v.

Shree Assuramji Scooters 125 (2005) DLT 504 this court has taken the view that damages in such a case should be awarded against defendants who chose to stay away from proceedings of the court and they should not be permitted to enjoy the benefits of evasion of court proceedings. The rationale for the same is that while defendants who appeared in court may be burdened with damages while defendants who chose to stay away from the court would escape such damages. The actions of the defendants result in affecting the reputation of the plaintiff and allendeavoursshall be made for a larger public purpose to discourage such parties from indulging in acts of deception.

12. A further aspect which has been emphasised in Time Incorporated case (supra) is also material in the present case. The object is also to relieve a pressure on the over-loaded system of criminal justice by providing civil alternative to criminal prosecution of minor crimes. The result of the actions of defendants is that plaintiffs, instead of putting its energy for expansion of its business and sale of products, has to use its resources to be spread over a number of litigations to bring to book the offending traders in the market. In view of the aforesaid, I am of the considered view that the plaintiff would also be entitled to damages which are quantified at Rs.3 lakhs."

15. A party which chooses to stay away from the Court

proceedings cannot escape from his liability, on account of the

failure of the availability of account books. Also, the Court needs to

take note of the fact that a lot of energy and resources are spent in

litigating against those who infringe the trademark and copyright

of others and try to encash upon the goodwill and reputation of

other brands by passing off their goods and/or services as those of

that well-known brand.

16. In the backdrop of the said facts, this Hon‟ble Court is of the

view that the Plaintiffs have a bonfide case in their favour, and the

aforesaid submissions clearly stipulate the defendant‟s malafide

intent and lust for money by copying the Plaintiff‟s mark without

putting any effort or hard work of his own. Therefore, without

sowing the seeds, the defendant has no right to enjoy the flavour of

the ripened fruit.At the same time, such law breakers shall be

discouraged from indulging in such acts of deception and be made

to pay heavy punitive damages. In the present case, the defendant

has categorically infringed upon the legal right of the plaintiff to

use the trade mark "MARC" in respect of electrical fittings and

accessories, whereby, it is transpired that the reputation and

goodwill of the plaintiff have suffered at the very outset for years.

17. For the reasons given in the preceding paragraphs, a decree for

permanent injunction is hereby passed, therebyrestrainingthe

defendants from using the words MARC as a part of its corporate

name, further restraining the defendant from printing, publishing,

marketing, selling, advertising, soliciting, offering for sale,

advertising or displaying directly or indirectly or using or dealing in

any mode or manner in electrical goods including electrical

switches and accessories or/ goods of same nature as described

under the impugned trade mark "MARC" registered vide

registration no. 420735B in class 9, 420736 in class 11, and 420

737B in class 7 of the Trade marks Act as well as the Copyright of

the Plaintiff‟s Trade mark „MARC‟ (logo) in the artistic features and

lettering style of the same.

18. The plaintiff is also entitled to a decree of punitive damages

against the defendants which I quantify at Rs. 5,00,000/-.

19. Decree sheet be prepared accordingly.

KAILASH GAMBHIR, J July 24, 2012