Hindustan Pencils Private Ltd. vs Gautam Pencil Industries
2013 Latest Caselaw 4974 Del

        IN THE HIGH COURT OF DELHI AT NEW DELHI

                           CS (OS) No. 1075 of 2011

                                      Reserved on: October 8, 2013
                                      Decision on: October 29, 2013

        HINDUSTAN PENCILS PRIVATE LTD.           ..... Plaintiff
                     Through: Mr. Sushant Singh with Mr. P.C.
                     Arya, Mr. V.K. Shukla and Mr. R.C.
                     Pandey, Advocates.

                           versus

        GAUTAM PENCIL INDUSTRIES                         ..... Defendant
                    Through: None.

        CORAM: JUSTICE S. MURALIDHAR

                           JUDGMENT

29.10.2013

CS (OS) No. 1075 of 2011 & IA No.7181 of 2011 (under Order XXXIX Rules 1 and 2 CPC)

1. Hindustan Pencils Private Limited ('HPPL') has filed this suit seeking a permanent injunction restraining the Defendant M/s. Gautam Pencil Industries from infringing the Plaintiff's registered trade mark 'PLATINUM' and also for passing off the goods and business of the Plaintiff as that of Defendant. Other incidental reliefs also have been sought.

2. The case of the Plaintiff is that it is a well established manufacturer of pencils and stationery items since 1957. In 1958, the Plaintiff

adopted the mark 'APSARA' in respect of various stationery goods and has been using the said mark continuously and extensively along with the sub-brands like 'APSARA', 'APSARA PLATINUM PENCIL', 'APSARA GOLD' etc. Exhibit PW-1/3 (collectively) are the certificates of registration issued in favour of the Plaintiff both under the Copy Right Act, 1957 as well as the Trade Marks Act, 1999 ('TM Act') in respect of 'APSARA GOLD PENCIL', 'APSARA' and other marks in Class 16 i.e. pencils, erasers, sharpners etc. Exhibit Pw-1/7 is the certificate of registration of the trade mark 'APSARA PLATINUM' under No. 1249571 in Class 16. The application is dated 14th November 2003 and the certificate is dated 7th November 2005. It is submitted that the artistic work of the mark 'APSARA PLATINUM PENCIL' consists of alternate dark gray and black colour strips of which there are two broad black strips positioned alternatively. On one of the broad black strips the brand stamping of the Plaintiff is done in silver colour foil. There is also a black colour line on one tip which is continued across the pencil. It is submitted that the artistic work is recognised by the public at large and is associated exclusively with the Plaintiff's product. It is accordingly submitted that the colour scheme, layout, colour combination and arrangement of feature in the pencil are exclusively associated with the Plaintiff. It is also claimed to be an original artistic work under Section 2(c) of the Copyright Act, 1957. The Plaintiff claims to have spent a large amount on sales promotion and advertisements.

Likewise, the essential feature of the packaging of the APSARA PLATINUM PENCIL' has also been set out in para 16 of the affidavit of evidence dated 7th March 2013 on behalf of the Plaintiff.

3. The Defendant, which is a partenership firm with Mr. Ashok Kumar and Mr. Gautam as partners, is stated to be engaged in manufacturing and marketing stationery items including pencils. The Plaintiff states that in March 2011, it came across pencils under the trade mark 'GAUTAM PLATINUM' containing a packaging identical to that of the Plaintiff's 'APSARA PLATINUM PENCIL'. It is stated that the use of a deceptively similar packaging as that of 'APSARA PLATIUM PENCIL' by the Defendant is a blatant violation of the Plaintiff's rights in the registered trade mark 'APSARA PLATINUM PENCIL'.

4. In para 20 of the affidavit dated 7th March 2013, the Plaintiff has set out the Plaintiff's mark/trade dress as well as the Defendant's mark/trade dress side by side. It appears that the offending product 'GAUTAM PLATINUM' has an identical colour combination, layout, arrangement of features, and over all trade dress when compared with that of the Plaintiff's 'APSARA PLATINUM'. It is also seen that the Defendant is using a gray colored packaging which is deceptively similar to the Plaintiff's packaging and that the essential features of the Plaintiff's packaging have been copied by the Defendant.

5. While directing issuance of summons in the suit on 4th May 2011, the Court had also granted an interim injunction restraining the Defendant from manufacturing, selling, offering for sale, advertising directly or indirectly the trade mark 'PLATINUM' as a part of their trade mark/trade dress and packaging. The interim injunction has continued ever since. The Defendant has been set ex parte by an order dated 10th January 2013. The affidavit dated 7th March 2013 of ex parte evidence has been filed by the Plaintiff and proved in accordance with law.

6. There is no contest to the suit and the affidavit of evidence of the Plaintiff stands uncontroverted. The Plaintiff has thus been able to prove the averments in the plaint. There is, therefore, no difficulty in decreeing the suit as prayed for in terms of paras 26(i) to (v). The Plaintiff is entitled to also institute proceedings for damages in accordance with law on the basis of the details that may be obtained by it from the Defendant.

7. As regards the prayers for damages by the Plaintiff, the Court is not satisfied that sufficient material has been placed on record for grant of such relief.

8. The suit is decreed in the above terms. The application is disposed of.

S. MURALIDHAR, J.

OCTOBER 29, 2013/dn