M/S Harjee Foods & Anr vs M/S Barbino Enterprises Pvt Ltd. & ...
2013 Latest Caselaw 1502 Del

*      THE HIGH COURT OF DELHI AT NEW DELHI

+                        C.S (O.S) 473/2005

                                         Date of Decision: 02.04.2013

M/S HARJEE FOODS & ANR                               .......Plaintiffs
                 Through:             Ms. Bitika Sharma with Ms.
                                      Chandrika Gupta, Advs.

                                Versus

M/S BARBINO ENTERPRISES PVT LTD. & ANR
                                     ......Defendants
                 Through: Nemo.

CORAM:
HON'BLE MR. JUSTICE M.L. MEHTA

M.L. MEHTA, J. (Oral)

1. This is a suit filed by the plaintiffs for permanent injunction, passing off, rendition of accounts, delivery-up and damages, with respect to the plaintiffs‟ marks "KIDO" and "KIDCO", allegedly being used by the defendants for confectionery items and sweets, candies, toffees, etc.

2. The plaintiff no.1 is a registered partnership firm, which has been using the marks KIDO and KIDCO for wafers, biscuits, candy, confectionery, sweets, toffees and various other products since the year 1999. Plaintiff no.2, Mrs. Paramjeet Kaur, is the sole proprietress of SPS Sweets and was given permission in the year 2003, by plaintiff

no.1, to use and manufacture under the mark KIDO. The mark KIDO is a registered trademark under class 30 vides Registration No. 1038080.

3. The plaintiffs submit that they supply wafers, confectionery, sweets etc under the said marks to various institutional buyers like Northern Railway and schools like St. John School, St. Mary Convent School, Army School etc. The plaintiffs contend that due to the extensive use of the marks KIDO and KIDCO, they have established a good reputation for themselves. It is submitted that the plaintiffs have also promoted the marks KIDO and KIDCO by advertising in various newspapers, through publicity in schools and by sponsoring various community activities. That on knowing about use of the mark KIDO by the defendants, the plaintiffs obtained a search report from the Registrar of Trademarks, which revealed that defendant no.2 had also applied for registration of the trademark KIDCO and that its application is still pending. It is contended that the application of the defendant no.2 was filed subsequent to that of the plaintiffs‟. The plaintiffs contend that since the trademark KIDO is registered, they enjoy complete statutory protection of the mark under the Trademarks Act 1999. It is submitted that the use of the trademarks KIDO and KIDCO by the defendants is in an identical fashion and used for the same class of goods. The plaintiffs contend that since the customers are usually young children, there is a higher chance of confusion between the plaintiffs‟ marks and the infringing mark of the defendants‟. In view of the above, the plaintiffs have prayed for a permanent

injunction, delivery up, rendition of accounts and damages to the tune of Rs. 21,00,000 (Rupees Twenty One Lakhs only).

4. The defendant no. 2 is a company which is engaged in the business of manufacture and sale of confectionery in Pakistan. Defendant no.1 is an agent of defendant no.2 and is engaged in selling the products of defendant no.2 in India. The defendants deny the averments made in the plaint and submit that they have been using the said mark KIDCO since the year 1993. They subsequently got the trademark registered in Pakistan in the year 1996. Owing to this fact, the defendants contend that it is the plaintiffs who are copying their trademark. As regards the registration of the plaintiffs‟ trademark KIDO, the defendants submit that they have filed a rectification before the Intellectual Property Appellate Board in order to oppose the using of deceptively similar and identical trademark KIDO, by the plaintiffs.

5. On the first date of hearing, a Local Commissioner was appointed to visit the premises of the defendant no.1 and to prepare an inventory of the goods bearing the mark KIDCO upon confectionery, candies, wafers, biscuits and other allied goods as well as in regard to packing material, dyes, brochures etc. The Local Commissioner visited the premises of defendant no.1 and prepared an inventory of the infringing products. Photographs of the infringing products were also taken by the representative of the plaintiff and are on record.

6. The Court framed the following issues on 16.04.2007:

a) Whether the plaintiff is the registered proprietor and owner of the trademark KIDO and KIDCO in relation to confectionery, sweets, toffees, candies, sweets chocolates etc.?

       (OPP)

       b)      Whether the use of the mark KIDCO and KIDO by the

defendants in relation to confectionery, sweets, toffees, candies sweets chocolates or any other cognate product constitutes infringement of trademark KIDO belonging to the plaintiff? (OPP)

c) Whether the use of the KIDCO/KIDO by the defendants in relation to confectionery, sweets, toffees, candies sweets chocolates or any other cognate product constitutes passing off of the defendants‟ products as that of the plaintiff? (OPP)

d) Whether the trademark KIDCO is being used by the defendants‟ since 1993 and if so has attained trans-border reputation? (OPD)

e) Whether the plaintiff is entitled to any damages? If so, the extent thereof? (OPP)

f) Whether the plaintiff is entitled to rendition of accounts?

If so, the period thereof? (OPP)

g) Relief (OPP)

7. It is pertinent to note that this Court, vide order dated 16.04.2007, granted a temporary injunction u/O XXXIX Rules 1 and 2,

restraining the defendant no.1 from importing from defendant no.2 and from selling and marketing any products under the trademarks KIDO and KIDCO within the territory of India. The defendants have been subsequently proceeded ex parte vide order dated 10.11.2009.

8. The plaintiffs lead evidence by way of affidavits of two witnesses. The first witness Sh. Gurdit Singh is the managing partner and the authorized signatory of the plaintiff no.1 firm. In his deposition, Sh. Gurdit Singh reiterated all the averments as set out in the plaint. Relying on the invoices of plaintiff no.1, showing the sales of various KIDO and KIDCO products, witness stated that these trademarks had obtained a good reputation in the market due to extensive use. He further stated that the plaintiffs have applied for registration of the trademark KIDO and that the same was advertised in the trademark journal Mega 4 dated 25.10.2003. The trademark KIDO was subsequently registered under class 30 vide registration no. 1038080. The witness also deposed that the mark KIDO was also registered under the Copyright Act vide registration no. A-64653/2003. He stated that the Registrar of Trademarks had also issued a no objection certificate for registration of the mark KIDCO under the Copyright Act.

9. The second witness Sh. Satwant Singh Dang deposed on behalf of his wife, Mrs. Paramjeet Kaur, sole proprietress of plaintiff no.2. In his affidavit of evidence, he stated that the plaintiff no.1 had given permission to plaintiff no.2 in 2003 to use the mark KIDO and to

manufacture under the same name. He also restated all the averments of the plaint.

10. Out of the seven issues framed, one is to be proved by the defendants and the rest six are to be proved by the plaintiffs.

11. The first issue is whether the plaintiffs are the registered proprietors and owners of the trademarks KIDO and KIDCO. It is seen that the originals of two trademark certificates have been placed on record. One trademark registration number 1038080 is registered under class 30 goods with respect to biscuits, bread and namkeen. The second trademark registration number 967051 is registered again under class 30 goods, qua biscuits and confectionery. Both the above mentioned certificates are for the registration of the trademark KIDO. Thus, it is amply clear that the plaintiff is the registered proprietor and owner of the trademark KIDO.

12. As regards the trademark KIDCO, the plaintiffs have placed on record a no objection certificate with respect to Copyright registration in respect of the label KIDCO. Further, in the search report obtained by the plaintiffs on coming to know of the use of the mark KIDCO by the defendants, it is seen that the status of the application for registration of the plaintiffs‟ trademark KIDCO is "Advertised bef acc". This term is to be understood with reference to Section 20(1) of the Trade Marks Act, 1999. According to this provision, on acceptance of the application for registration of a trademark, the trademark is then advertised in any Trade Mark Journal. Subsequent to this

advertisement, objections to the registration of the trademark are to be made within the prescribed time given under the Trade Marks Act. The term „Advertised bef acc‟ means advertisement before acceptance. This connotes that the trademark of the plaintiff KIDCO was in the process of registration and not yet registered. Thus, the plaintiff cannot claim statutory rights under the Trade Marks Act, but can only claim proprietary rights under common law by establishing that the said mark being in continuous use by the plaintiff has obtained reputation and goodwill in the market.

13. In proof of the goodwill attached to the plaintiffs‟ trademark KIDCO, the plaintiffs have placed on record invoices for the sale of KIDCO products between various periods of time. It is seen that a large number of traders and enterprises purchase the products of the plaintiffs. Further, the plaintiffs have also placed on record a letter sent from the General Manager/ Catering of Northern Railway to the plaintiff no.1 for supply of two-piece packs biscuits for Rail Yatri Niwas. This establishes that the plaintiffs‟ products, sold under the marks KIDO and KIDCO have attained reputation and goodwill in the market. Thus, the first issue is decided in favour of the plaintiffs.

14. Before answering the second and third issue, I find it necessary to address the fourth issue which deals with the question as to whether, the defendants‟ claim of having registered the trademark KIDCO in Pakistan, which was being used by them since the year 1993, results in a trans-border reputation. The defendants claim that since they have

been using the trademark KIDCO since the year 1993, the plaintiffs were in fact the ones infringing on their trademark. Although the defendants have contended this submission in their written statement, they have not proved the same. For want of proof, the fourth issue stands decided against the defendants.

15. The second and third issues can be dealt with together. The issue here is whether the acts of the defendants constitute infringement and passing off. The defendant no.2 is a Pakistan based company, which imports its products to India through defendant no.1. From the report of the Local Commissioner, it is seen that the defendant no.2 intends to start selling its products in India. The mark used on the defendants‟ products is KIDCO, written exactly in the same manner as that of the plaintiffs‟ trademark KIDCO, with the figure of a child in place of the letter „I‟. Further, the class of goods in which the defendants are trying to sell their products is the same as that of the plaintiffs‟. Owing to the fact that the class of goods is confectionery, the majority of customers would be children. There can be no doubt that there would be confusion in their minds especially when both trademarks look exactly similar. Further the plaintiffs have been able to prove that they have attained good reputation in the market. Thus, with regard to the trademark KIDCO, I find that the defendants‟ acts constitute passing off. It is pertinent at this juncture to refer to Section 27 of the Trade Marks Act which reads as under:

"27. No action for infringement of unregistered trade mark. (1) No person shall be entitled to institute any proceeding to

prevent, or to recover damages for, the infringement of an unregistered trade mark.

(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof."

This provision makes it very clear that infringement of trademark can only be attributed to those marks which are registered. But this does not preclude a person from protecting his unregistered trademark under the act of passing off. Thus, since the mark KIDCO has not been registered as yet, I do not find the defendants‟ acts to be one of infringement.

16. However with regard to the registered mark of the plaintiff KIDO, I do not find the defendants‟ infringing mark deceptively similar to this. Thus, in answer to the second and third issues, I find that the defendants‟ act of using the trademark KIDCO constitutes acts of passing off.

17. In light of the factual matrix and the observations made above, I deem it fit to decree the suit in part. I hereby pass an order of permanent injunction, restraining the defendants from importing their products under the trademark KIDCO and from selling and manufacturing their products under the same mark within the territory of India. There is nothing on record brought by the plaintiff to establish that the defendants were importing or manufacturing their products under the trade mark KIDCO after the injunction passed by the Court

vide order dated 16.04.2007. That being the state of affairs, it would be taken that there was no import or sale of the products by defendants under the trademark KIDCO at least after the operation of the injunction against them. Thus, I would pass an order of rendition of accounts of the defendant No.1 upto the date of injunction order. With regard to damages, since an interim injunction was operating against the defendants, restraining them from selling and manufacturing their products in India, the plaintiffs cannot be said to have suffered any loss and thus their prayer for damages is dismissed.

18. The suit is decreed partly as indicated above. Decree be drawn accordingly.

M.L. MEHTA, J.

APRIL 2, 2013 rmm