Delhi High Court
J & P Coats Ltd & Anr vs Rahul Gupta & Ors on 29 April, 2014
$~ 24
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 3447/2012
% Judgment dated 29.04.2014
J & P COATS LTD & ANR ..... Plaintiff
Through: Ms.Anuradha Salhotra and
Mr.Sumit Wadhwa, Advocates
versus
RAHUL GUPTA & ORS ..... Defendant
Through: Mr.Sushant Singh and Mr.Tajinder
Singh, Advocates
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J (ORAL)
1. Plaintiffs have filed the present suit for permanent injunction,
infringement of trade mark, passing off, account of profits under the
Trade Marks Act, 1999 against the defendants.
2. Defendant no.1 is present in court today submits that he has no objection
if a decree is passed, provided only nominal damages are imposed. He
also submits that he has stopped manufacturing the impugned goods and
even changed his line of business. It is also submitted by the defendant
no.1 that he is now working in a private firm and there is no question of
his supplying any goods to defendants no.2 and 3. Defendant no.1 also
states that he has not infringed the trademark of the plaintiff nor he will do
so in future. The statement made by defendant No.1 is accepted and taken
on record. Defendant No.1 shall remain bound by the statement made in
court today. Defendant no.1 also agrees to pay Rs.50,000/- as damages
CS(OS) 3447/2012 Page 1 of 4
to the plaintiff within four weeks from today.
3. Learned counsel for the plaintiff on instructions from the authorised
representative of the plaintiffs submits that offer of Rs.50,000/-, as
damages, is not acceptable to the plaintiffs. A prayer is made for higher
damages.
4. I have heard learned counsel for the parties and considered their rival
submissions. The plaintiffs have filed the present suit for permanent
injunction, infringement of trade mark, passing off, accounts of profits
under the Trade Marks Act, 1999. The plaintiffs are the registered
proprietor of the trade mark „MOON‟. The plaintiffs learnt that
defendants had made an application for registration of the word „MEEN‟
with respect to similar goods. The packaging material was also of
identical blue colour.
5. While issuing summons in the suit and notice in the application for stay, a
Local Commissioner was also appointed. As per the report of the Local
Commissioner, no goods were found at the premises in question.
Defendant no.1, who has appeared in person, has made a categorical
statement that neither he has infringed the trade mark of the plaintiffs nor
will he do so in future. Defendant no.1 has also agreed that the suit may
be decreed in favour of the plaintiffs and against the defendants keeping
in view his financial status and background and also the fact that the suit
is at the initial stage, costs of Rs.50,000/- should be accepted for the act of
passing off decree.
6. Section 135 (3) of the Trade Marks Act reads as under:
"(3) Notwithstanding anything contained in sub-section (1), the
court shall not grant relief by way of damages (other than nominal
damages) or on account of profits in any case--
CS(OS) 3447/2012 Page 2 of 4
(a) where in a suit for infringement of a trade mark, the
infringement complained of is in relation to a certification trade
mark or collective mark; or
(b) where in a suit for infringement the defendant satisfies the
court--
(i) that at the time he commenced to use the trade mark
complained of in the suit, he was unaware and had no
reasonable ground for believing that the trade mark of the
plaintiff was on the register or that the plaintiff was a
registered user using by way of permitted use; and
(ii) that when he became aware of the existence and nature of
the plaintiff‟s right in the trade mark, he forthwith ceased to
use the trade mark in relation to goods or services in respect
of which it was registered; or
(c) where in a suit for passing off, the defendant satisfies the
court--
(i) that at the time he commenced to use the trade mark
complained of in the suit he was unaware and had no
reasonable ground for believing that the trade mark of the
plaintiff was in use; and
(ii) that when he became aware of the existence and nature of the
plaintiff‟s trade mark he forthwith ceased to use the trade mark
complained of."
7. Somewhat similar question had up for consideration before a Division
Bench of this Court in the case of Societe Des Products Nestle S.A. &
Anr. V. Satya Prakash Maheshwari & Ors., reported at 2009 (39) PTC
129 (Del.)(DB), wherein a Division Bench of this Court held as under:
"14. A perusal of Section 135 (b) of the Trade Marks Act, 1999
lays down that if at the time of commencement of the use of trade
mark in the suit, a party was unaware and had no reasonable ground
for believing that the trademark of the plaintiff was on the register
or when he becomes aware of the existence and nature of the
plaintiff„s right in the trade mark forthwith ceases to use the said
trade mark in relation to such goods, the Court shall not grant relief
by way of damages (other then normal damages) or on account of
profits. Thus there is a clear mandate in a case of the present nature
where the parties were not aware that there mark was offending a
CS(OS) 3447/2012 Page 3 of 4
registered trade mark of appellant and at the threshold admitted
their mistake. The grant of damages even nominal or rendition of
account would not only have been against the law but also
unjustified and harsh. In our view, the respondent no.1 is only a
small time operator who has accepted his mistake on the very first
instance without wasting the time of the Court and therefore, we
agree with the view of the learned Single Judge in not granting the
damages nominal or punitive to the appellant on the basis of the
admission of infringement of its trademark by respondent no.1. The
judgment which has been relied upon by the learned counsel for the
appellant in Hero Honda‟s case (supra) is distinguishable from the
facts of the present case inasmuch as that was a case in which the
respondent had not admitted that it had indulged in violation of any
trademark and further the status of the parties would also not
comparable with the status of parties in the present case and
accordingly merely on account of the fact that damages to the tune
of Rs.5,00,000/- (Rupees Five Lacs) had been granted in the said
case, could hardly be said to be a ground for grant of damages in
the present case. Similarly, the second judgment also cited by the
learned counsel for the appellant is also not applicable in view of
clear admission made by the Respondents on two different dates
and Section 8 of The Evidence Act and Order 12 Rule 6 C.P.C. in
the present case."
8. In my view, the case in hand is on a better footing as defendant no.1 has
agreed to pay damages in the sum of Rs.50,000/-. Having regard to the
status of the defendants, the statement made in Court that a decree be
passed in the case, his having changed his line of business and having
joined prime service, in the facts of this case I accept the offer of the
defendants.
9. The suit is decreed in above terms, with damages of Rs.50,000/- to be
paid within four weeks from today.
G.S.SISTANI, J
APRIL 29, 2014
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