Delhi High Court
Anchor Health & Beauty Care Pvt. ... vs Shivam Hygienes India Pvt. Ltd. on 7 November, 2013
Author: Vipin Sanghi
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Judgment reserved on: 11.10.2013
% Judgment delivered on: 07.11.2013
+ CS(OS) 2290/2006 and I.A. No. 13796/2006
ANCHOR HEALTH & BEAUTY CARE PVT.LTD...... Plaintiffs
Through: Ms. Suhasini Raina & Mr. Ashutosh
Kumar, Advocates.
versus
SHIVAM HYGIENES INDIA PVT. LTD. ..... Defendant
Through:
CORAM:
HON'BLE MR. JUSTICE VIPIN SANGHI
JUDGMENT
VIPIN SANGHI, J.
1. The plaintiff has filed the present suit alleging infringement of its
trademark ANCHOR by the defendant and, conse quently, seeking a decree
of permanent injunction to restrain the defendant, it principal officers,
family members, stockists, servants, agents and anyone acting for and on its
behalf from using the said mark, or the device, or any other mark or device
that is identical or deceptively similar, or is a colorable imitation of the
plaintiffs' mark and device for a range of products such as Tea, Amla, Gulab
Jal, Coffee, salt, etc., which may result in infringement of copyright and the
registered trademark, or passing off, or may amount to acts of unfair
competition and dilution of the plaintiff's registered trademark and
copyright. The plaintiff also seeks a decree of rendition of accounts of
profits/ damages against the defendant and for a decree for the amount found
due upon accounts being taken. The plaintiff prays for an order of delivery
of all the material of the defendants bearing the impugned mark, packaging
material, pouches, moulds, dyes, shells, cartons, packaging and publicity
material etc. for destruction/ erasure.
2. The plaintiff No.1 Anchor Health & Beauty Care Pvt. Ltd.- a
company incorporated under the Companies ct, 1956, and plaintiff No.2
Anchor Kenwood Electricals are claimed to belong to the ANCHOR group
of companies. Whereas the plaintiff No.1 was incorporated as a company,
plaintiff No.2 is a proprietory concern of Sh.S.D. Family Trust. The
plaintiffs state that the said group was started in the year 1963 with the
trademark and logo ANCHOR by Mr. Damji Lalji Shah and his brother Mr.
Jadavji Lalji Shah. The initial range of products offered by the plaintiffs
were switches, which were manufactured from a small unit in Mumbai.
However, over the past 45 years the group had spread, and is claimed to be a
truly Indian Multinational having a large range of products.
3. The plaintiffs claim that they entered into the Fast Moving Consumer
Goods (FMCG) market in the year 1996 by introducing Anchor White Tooth
Paste, Gel Tooth Paste, Dyna Soap and confectionery items. The plaintiffs
claim that they have a large range of products including electrical
accessories, lighting appliances, fittings, cosmetics and toilet preparations,
soaps, tooth brushes and tooth pastes, medicinal and pharmaceutical
preparations, kitchen wares, etc. It is claimed that the plaintiffs' business
under the mark ANCHOR with the device of ANCHOR has grown manifold
and the plaintiffs' business is one of the most successful business houses in
India. The total turnover of the group under the mark/ name ANCHOR is
claimed to be Rs.900 Crores. The plaintiffs' claim that they have 18
manufacturing units at 5 locations and employs more than 10,000 people.
They claim to have 65 branch offices and over 3 lakh retail outlets in almost
every nook & corner of the country. The plaintiffs claim to have entered
into collaboration with multinational companies to procure technology for
their products. The plaintiffs claim that their products are sold not only in
India, but are also exported in various other countries including Nepal and
Dubai. The plaintiffs claim that they have distribution set ups in countries
like Dubai, Oman, Saudi Arabia, etc. The registered mark and device of the
plaintiffs are as follows:
4. The plaintiffs claim user of their mark ANCHOR in a large number of
classes and for a large specification of goods since the year 1963. The class
wise registration claimed to have been obtained by the plaintiffs for its mark
ANCHOR and the device aforesaid is as follows:
S. T.M. No. Class Date Name of proprietor
No
1 906487 3 29.02.00 Anchor Health &
Beauty Care Pvt. Ltd.
2 1194576 3 25.04.03 Anchor Health &
Beauty Care Pvt. Ltd.
3 1256961 3 23.12.03 Anchor Health &
Beauty Care Pvt. Ltd.
4 544807 4 06.02.91 Anchor Electronics &
Electricals Pvt. Ltd.
5 323287 5 24.02.77 Anchor Industries
6 509584 7 02.05.89 Anchor Electronics &
Electricals Pvt. Ltd.
7 544811 7 06.02.91 Anchor Electronics &
Electricals Pvt. Ltd.
8 345728 9 13.02.79 Anchor Industries
9 275559 9 14.10.71 Victor Industries
10 352513 9 18.08.79 Anchor Industries
11 331093B 9 30.11.77 Anchor Industries
12 834120 9 28.12.98 Anchor Kenwood
Electricals
13 309182 9 13.10.75 Calico Industries
14 834119 9 28.12.98 Anchor Kenwood
Electricals
15 328261 9 27.08.77 Anchor Industries
16 631549 9 22.06.94 Anchor Electricals
Pvt. Ltd.
17 631548 9 22.06.94 Anchor Electricals
Pvt. Ltd.
18 544817 10 06.02.91 Anchor Electronics &
Electricals Pvt. Ltd.
19 215818 11 30.05.63 Anchor Kenwood
Electricals
20 352514 11 18.08.79 Anchor Industries
21 631553 11 22.06.94 Anchor Electricals
Pvt. Ltd.
22 834123 11 28.12.98 Anchor Kenwood
Electricals
23 834121 11 28.12.98 Anchor Kenwood
Electricals
24 631552 11 22.06.94 Anchor Electrical
Pvt. Ltd.
25 328262 11 27.08.77 Anchor Industries
26 345729 11 13.02.79 Anchor Industries
also trading as Calico
Industries
27 544809 13 06.02.91 Anchor Electronics &
Electricals Pvt. Ltd.
28 544808 14 06.02.91 Anchor Electronics &
Electricals Pvt. Ltd.
29 509588 14 02.05.89 Anchor Electronics &
Electricals
30 544816 15 06.02.91 Anchor Electronics &
Electricals Pvt. Ltd.
31 544815 18 06.02.91 Anchor Electronics &
Electricals Pvt. Ltd.
32 529288 19 08.05.90 Anchor Electronics &
Electricals
33 328260 20 27.08.77 Anchor Industries
34 309834 21 10.11.75 Anchor Industries
35 631554 21 22.06.94 Anchor Health &
Beauty Care Pvt. Ltd.
36 631555 21 22.06.94 Anchor Health &
Beauty Care Pvt. Ltd.
37 1256960 21 23.12.03 Anchor Health &
Beauty Care Pvt. Ltd.
38 529287 22 08.05.90 Anchor Electronics &
Electricals
39 544813 24 06.02.91 Anchor Electronics &
Electricals Ltd.
40 544876 27 07.02.91 Anchor Electronics &
Electricals Pvt. Ltd.
41 509583 28 02.05.89 Anchor Electronics &
Electricals
42 544874 29 07.02.91 Anchor Electronics &
Electricals Pvt. Ltd.
43 1192936 30 21.04.03 Anchor Health &
Beauty Care Pvt. Ltd.
44 1018844 30 20.6. 01 Anchor Health &
Beauty Care Pvt. Ltd.
45 122950 30 1.09.03 Anchor Health &
Beauty Care Pvt. Ltd.
46 544872 31 07.02.91 Anchor Electronics &
Electricals Pvt. Ltd.
47 544868 32 07.02.91 Anchor Electronics &
Electricals Ltd.
48 544869 33 07.02.91 Anchor Electronics &
Electricals Pvt. Ltd.
49 1330222 35 05.01.05 Anchor Health &
Beauty Care Pvt. Ltd.
50 1334218 35 25.01.05 Anchor Electronics &
Electricals Pvt. Ltd.
51 1334807 38 28.01.05 Anchor Electronics &
Electricals Pvt. Ltd.
52 1330221 38 05.01. 05 Anchor Health &
Beauty Care Pvt. Ltd.
53 1335137 39 31.01. 05 Anchor Electronics &
Electricals Pvt. Ltd.
54 1335140 42 31.01. 05 Anchor Electronics &
Electricals Pvt. Ltd.
5. The plaintiffs claim that the mark ANCHOR is registered in a large
number of countries and applications for registration are pending in several
countries. The countries where the said mark is registered in favour of the
plaintiffs, or where registrations are pending are stated to be as follows:
"AUSTRALIA, AZERBAIJAN, BAHRAIN, BANGLADESH,
BHUTAN, BRAZIL, BRUNEI, CANADA, CHINA, ESTONIA,
EUCADOR, EUROPE, GUINEA (GUYANA), HONG KONG,
INDONESIA, JORDAN, IRAQ, ISRAEL, KAZAKHSTAN,
KENYA, KOREA, KYRGYSTAN, LEBANON, LYBIA, LATVIA,
LITHUANIA, MALAYSIA, MYANMAR, NEPAL, NEW
ZEALAND, OMAN, PAKISTAN, PARAGUAY, PERU, QATAR,
RUSSIA, SAUDI ARABIA, SIERRA LEONE, SRI LANKA,
SOUTH AFRICA, SUDAN, SYRIA, TUNIJIA, THAILAND,
SINGAPORE, TAIWAN, TAJIKISTAN, TUNISIA,
TURKMENISTAN, TANZANIA, U.A.E., UGANDA, URUGUAY,
U.S.A., UZBEKISTAN, VIETNAM, YEMEN."
6. The claim of the plaintiffs is that apart from the statutory rights in the
trademark ANCHOR, the plaintiffs also enjoy common law rights in their
mark and logo owning to such extensive, long and continuous use. The
plaintiffs claim that owing to the diverse business interest of the plaintiffs in
a wide range of products being marketed under the mark ANCHOR, the use
of the said mark for any product, especially a FMCG would be associated
with the plaintiffs immediately. The plaintiffs also claim registration of its
copyright in its mark, logo and label under the following details:
Date Registration No. Name of the proprietor
14.03.1997 A-53808/97 Anchor Kenwood Electricals
P. Ltd.
29.08.2002 A-62188/02 Anchor Kenwood Electricals
29.08.2002 A-62189/02 Anchor Kenwood Electricals
29.08.2002 A-62192/02 Anchor Kenwood Electricals
7. The grievance of the plaintiffs is that the defendants were found to be
using the trademark ANCHOR along with a device similar to that of the
plaintiffs in respect of Tea. The plaintiffs have placed on record the
packaging material used by the defendants to market their CTC Tea under
the brand ANCHOR with the device of ANCHOR. The defendants have
used the mark ANCHOR and the device in the following manner:
8. The plaintiffs have disclosed that the defendant applied for
registration of its mark ANCHOR on 21.10.2004 claiming user since
01.01.1999 to which the plaintiffs had filed its opposition. On the premise
that the use of the aforesaid mark and logo by the defendant amounts to
infringement of the plaintiffs registered trademarks and infringement of its
copyright, amount to passing off, the plaintiff has preferred the present suit.
9. Summons was issued in the suit on 12.12.2006. The Court also
passed an ex-parte order of injunction restraining the defendant, its principal
officers, family members, stockists, servants, agents, etc. from using the
trade name ANCHOR or its logo/ device or any other mark and device
which is identical, or deceptively similar to that of plaintiffs' trademark
ANCHOR for selling tea or cognate goods. The Court also appointed Local
Commissioners to visit the premises of the defendant and make and
inventory of infringing products which bear the mark and device ANCHOR
and which are identical/ similar to the plaintiffs' mark and device. Several
other directions were also issued to the Local Commissioners.
10. On 18.01.2007, the defendant entered appearance through counsel and
sought time to file written statement. Four weeks time was granted for the
said purpose. However, the same was not filed. On 02.04.2007, learned
counsel for the defendant stated that the parties are negotiating a
compromise and that he had communicated the terms of settlement to
learned counsel for the plaintiffs. On 19.04.2007, adjournment was sought
on behalf of learned counsel for the defendant. Thereafter the defendant
stopped appearing in the matter. The defendant did not file any written
statement. Consequently, the right to file the written statement was closed
on 14.12.2007. The plaintiffs were granted time to file affidavit by way of
evidence with documents. The plaintiffs filed the evidence of Mr. Mayur S.
Gala, S/o Mr. Shanti Lal Gala towards examination-in-chief, which was
tendered before the learned Joint Registrar on 21.07.2011 as Exhibit PW-
1/A. The said witness also exhibited several documents which shall be
referred to, wherever necessary. The witness exhibited a few more
documents on 14.05.2013. Some of the original documents were seen and
returned by the learned Joint Registrar. Even at that stage the defendant did
not appear to cross-examine the plaintiffs' witness.
11. The deposition of the plaintiffs' witness is in tune with the averments
made in the plaint. The same has not been controverted and I see no reason
for not accepting the same. The original packaging and carton used by the
defendant is Exhibit PW-1/8. The copies of the registration certificates of
the mark ANCHOR in favour of the plaintiffs are Exhibit PW-1/4 (Colly.).
These are a large number of registrations running into about 86 pages.
Amongst the registrations exhibited as PW1/4, are trademark registration
certificate dated 07.02.1990 in Class 29 for "Tinned Canned Preserved,
Frozen, Vegetables, Fruit, Food, Jellies, Jams, Cashews, Walnuts, Dry
Fruits, Pickles, Pulps, Sea Food", trademark registration certificate dated
07.02.1991 in Class 32 in respect of "Aerated Water, Essences for
Beverages, Fruit Juices, Mineral Water, Syrups", trademark registration
certificate dated 21.04.2003 in Class 30 for "Chocolates, Tea, Coffee,
Confectionary, Spices.....". Also exhibited as PW1/4 are the plaintiff's
registrations in respect of a wide variety of goods ranging from pillow
covers, carpets, rugs, games, alcoholic beverages, ropes, awnings, cookers,
electronics, jewellery, electric fans, lamps, tubes etc. Copies of the foreign
registrations obtained by the plaintiffs are Exhibit PW-1/5. The plaintiffs
also claim common law rights in its mark and logo. Owing to its extensive
long and continuous use, the plaintiffs claim that it enjoys enormous brand
equity and is reckoned with well-known marks in India. Exhibit PW-1/3
(Colly.) are the letters dated 14.06.2008 selecting ANCHOR as a super
brand 2006-07 on the cover of the magazine "Engineering Review" of July
2006. The original brochure of the plaintiffs is Exhibit PW-1/2. Exhibit
PW-1/6 are the various advertisements issued by the plaintiffs pertaining to
the mark ANCHOR. Exhibit PW-1/7 are the copies of the copyright
certificates in respect of copyright registration for the mark/ logo/ label
ANCHOR. Exhibit PW-1/10 (Colly.) is the extract from the trademark
journal in respect of the application made by the defendant for registration
of the said mark. Exhibit PW-1/11 (Colly.) are copies of the oppositions
filed by the plaintiffs. Exhibit PW-1/12 (Colly.) is the status reports in
respect of the applications made by the defendant-which show that the same
are opposed. The report of the Local Commissioner appointed by this Court
Mr. Yoginder Pal Singh dated 21.12.2006 is Exhibit PW-1/9. Along with
the report, the Local Commissioner has filed on record the sample packets
recovered from the defendant which contain the same packaging as filed by
the plaintiffs.
12. In support of her submission, learned counsel for the plaintiffs has
relied upon the following judgments where the Court granted injunctive
relief against the use of similar mark in unrelated/ different goods:
(i) Tata Sons Ltd. Vs. Tata Industrial Recruitment, 164 (2009) DLT 95:
2009 (41) PTC 753 (Del);
(ii) Aktiebolaget Volvo and Ors. Vs. Kishore Purohit and Ors., 2011
(45) PTC 207(Del);
(iii) Tata Sons Ltd. Vs. Manoj Dodia and Ors., 2011 (46) PTC 244 (Del);
(iv) T.V. Venugopal Vs. Ushodaya Enterprises Ltd. and Anr., (2011) 4
SCC 85;
(v) General Electric Company Vs. Mr. J. Singh & Ors., 2011 II AD
(Delhi) 18;
(vi) Mahendra & Mahendra Paper Mills Vs. Mahindra & Mahindra
Ltd., (2002) 2 SCC 147;
(vii) Daimler Benz Aktiegesellschaft and Anr. Vs. Eagle Flask Industries
Ltd., 1993 (27) DRJ 615;
(viii) Bata India Limited Vs. Pyare Lal & Co., Meerut City and Ors., AIR
1985 All 242;
(ix) Hamdard National Foundation Vs. Abdul Jalil, 2008 (38) PTC 109
(Del); and
(x) Bharati Cellular Ltd. and Anr. Vs. Jai Distillers P. Ltd., 2006 (33)
PTC 220 (Bom).
13. In General Electric Company (supra), relying upon the decision in
Tata Sons (supra), the Court observed that "In the case before this Court,
the mark of the plaintiff GE (monogram) irrespective of the form in which it
is written and the circle in which the letters are enclosed, will be
pronounced as GE. The mark used/proposed to be used by the defendant
being GE, there is absolute phonetically similarity between the two marks. It
can therefore hardly be disputed that the mark GE used/proposed to be used
by the defendants is similar to the mark GE (monogram) of the plaintiff. If a
person goes to the mark seeking to buy a product of the plaintiff company he
would ask for the product of GE and if a product bearing the trademark GE,
in plain letters of English alphabets is offered to him, he is likely to take it as
a product of the plaintiff company irrespective of the fact that neither the
letters GE are written in a stylized form in which the letters in the trademark
GE (monogram) of the plaintiff nor are they enclosed in a circle. To him
what matters are the letters GE."
14. In the present case, the impugned mark adopted by the defendant
bears the same word "ANCHOR" as that of the plaintiff. Owing to the fact
that the plaintiff's mark is associated with FMCG products like soaps ,
toothpastes etc, amongst other goods, the use of the word "ANCHOR" by
the defendant in respect of FMCG products, like tea in the instant case, is
likely to mislead a consumer into believing that the defendant's product is
offered by the plaintiffs. A consumer with imperfect memory is likely to
remember the name "Anchor" and associate the defendant's goods with
those of the plaintiffs, even if the logo of the defendant isn't identical to the
plaintiff's trademark, but bears a close resemblance to it. What is of greater
significance is the use of the word "ANCHOR" by the defendant.
15. The products sold under the impugned mark are available at the same
stores, on the same shelves, where the plaintiff offers for sale its FMCG
goods and therefore there exists a high likelihood of confusion amongst
consumers. Reference may be made to Hamdard National Foundation
(supra), where the Court observed -
"29. The goods are to some extent dissimilar; yet there is
likelihood of confusion or deception, on account of overlapping
trade channels. The plaintiff's argument that both its goods and
those of the defendant can be purchased from the same traders,
cannot be brushed aside. If this is taken together with the fact
that the plaintiff's Hamdard brand is also host to an entire
range of food products such as soft drink concentrates and
recipes, like Rooh Afza, etc, which are sold commonly across
the country, even in grocery or small departmental and utility
stores, which also sell foodgrains, the plaintiff's apprehensions
are not fanciful. In these circumstances, the court is of the
opinion that the plaintiff has been able to establish, prima facie,
that though the goods are dissimilar, the degree of
resemblance, and nature of products is such that the defendants
goods are likely to be confused with that of those of the
plaintiffs, and the latter is likely to suffer from such injurious
association."
16. In my view, the observations in Hamdard National Foundation
(supra) squarely apply to the facts of the present case. As already discussed
above, the plaintiff has valid and subsisting registrations in various classes
in respect of goods such as jams, jellies, tinned foods, confectionary items
etc which are offered for sale in the same stores as the defendant's product
i.e. tea. Furthermore, the plaintiff also has a valid registration in Class 30
which includes tea. Therefore, there is no doubt that there exists great room
for deception.
17. Notably, even in cases where the goods offered under the impugned
mark are not cognate to the plaintiff's goods, the Courts have leaned in
favour of preventing a party from riding on another's goodwill to mislead
the consumers.
18. In Bata India Limited (supra), the plaintiffs' trademark "Bata" was
registered in respect of canvas, rubber, leather shoes etc. The defendants
were using the impugned mark "Batafoam" in respect of mattresses, sofas,
cushions etc. The Court restrained the defendant from using the impugned
mark observing that "the user of the name 'Bata' to any product may give
rise in the mind of "unwary purchaser of average intelligence and imperfect
recollection" that it is a product by the plaintiff. It is this impression which
may ultimately cause damage to the reputation of the plaintiff. It amounts to
an invasion of his right vis a vis the name 'Bata'. The moot point to be
considered in an action for passing off where goods marketed by the
defendants are likely to cause an impression in the mind of the purchaser
that he is buying the goods of 'Bata'. If it creates this impression, it would be
a case for the grant of a temporary injunction for the duration of the suit. If
this is not done, the plaintiff may suffer an irreparable injury."
19. Learned counsel for the plaintiffs also places reliance on the following
cases where Courts have granted damages in ex-parte matters:
(i) Time Incorporated Vs. Lokesh Srivastava & Anr., 2005 (30) PTC 3
(Del);
(ii) Microsoft Corporation Vs. I. Sadiq Batcha & Ors., 2009 (40) PTC
477 (Del); and
(iii) St. Ives Laboratories INC Vs. Sunny Bakshi & Anr., 2009 (41) PTC
231 (Del).
20. In Time Incorporated (supra), the Court observed as follows-
"1........ In Mathias v. Accordingly Economy Lodging, Inc.
reported in 347 F.3d 672 (7th Cir. 2003) the factors underlying
the grant of punitive damages were discussed and it was
observed that one function of punitive damages is to relieve the
pressure on an overloaded system of criminal justice by
providing a civil alternative to criminal prosecution of minor
crimes. It was further observed that the award of punitive
damages serves the additional purpose of limiting the
defendant's ability to profit from its fraud by escaping detection
and prosecution. If a tortfeasor is caught only half the time he
commits torts, then when he is caught he should be punished
twice as heavily in order to make up for the times he gets away.
This Court feels that this approach is necessitated further for
the reason that it is very difficult for a plaintiff to give proof of
actual damages suffered by him as the defendants who
indulge in such activities never maintain proper accounts of
their transactions since they know that the same are
objectionable and unlawful. In the present case, the claim of
punitive damages is of Rs. 5 lacs only which can be safely
awarded. Had it been higher even, this court would not have
hesitated in awarding the same. This Court is of the view that
the punitive damages should be really punitive and not flee bite
and quantum thereof should depend upon the flagrancy of
infringement." (emphasis
supplied)
21. In view of the aforesaid discussion, and the aspects that the
trademarks are identical and logos are confusingly and deceptively similar
and are being used by the defendant in respect of cognate goods, in my
view, the plaintiffs have made out a case for grant of injunctive relief, as
prayed for in the plaint and for award of damages against the defendant.
Accordingly, the suit is decreed in terms of prayer (a) of para 25 of the
plaint. A further decree is passed in favour of the plaintiffs and against the
defendant for Rs.5 Lakhs towards damages. The plaintiffs shall also be
entitled to costs, which are quantified at Rs.25,000/-.
(VIPIN SANGHI)
JUDGE
NOVEMBER 07, 2013
BSR
