Havells India Ltd & Anr vs T.T Plyboards & Ors
2014 Latest Caselaw 6545 Del

$~59
*        IN THE HIGH COURT OF DELHI AT NEW DELHI
+        CS(OS) 3770/2014
%                                          Date of decision :8th December, 2014

         HAVELLS INDIA LTD & ANR                        ..... Plaintiffs
                      Through : Ms.Pratibha M. Singh, Sr. Adv. with
                                Mr.Sudeep Chatterjee and Ms. Deepthi
                                Alexander, Advs.

                            versus

         T.T PLYBOARDS & ORS                                        ..... Defendants
                      Through :            Counsel (appearance not given) along
                                           with defendant No.3 in person

         CORAM:
            HON'BLE MR. JUSTICE G.S.SISTANI

G.S.SISTANI, J. (Oral)

I.A.24544/2014 & I.A.24545/2014

1. Exemption allowed subject to all just exceptions.

2. Applications stand disposed of.

I.A. 24546/2014

3. Let deficient court fee be filed within one week from today.

4. Application stand disposed of.

CS(OS) 3770/2014

5. Plaintiffs have filed the present suit for permanent injunction restraining violation and infringement of rights in the trade mark/logo/ label "HAVELLS", infringement of copyright, passing off and dilution, damages/rendition of accounts, delivery-up etc.

6. Counsel for defendants No.1 to 3 have entered appearance. The matter was passed over at the request of counsel for defendants No.1 to 3 to enable her to take instructions in the matter. At the second call, the defendants No.1 to 3 are represented through their counsel and also defendant No.3 is present in Court who submits that he is the managing partner and duly authorised to make a statement to bind the defendant No.1.

7. The plaintiff is a company engaged in the electrical and power distribution equipment business. The company was incorporated in the year 1983, however, the mark "HAVELLS" which is a coined word had been adopted by the plaintiffs' predecessors in the year 1942. Plaintiffs are the registered proprietor of trade mark "HAVELLS" as also the "HAVELLS" LOGO. The details of registration of the same have been extracted in the paragraph 8 of the plaint. The plaintiff also owns the copyright registration of "HAVELLS", details of which have been provided in paragraph 8 of the plaint. Various products are manufactured and sold by the plaintiff, details of which have been provided in paragraph 11 of the plaint. The plaintiff has a global network and has 91 branches in 50 countries. Its fourteen state-of-the-art manufacturing plants are located in India and abroad. Plaintiff claims that the products of the plaintiff are globally acclaimed products, synonymous with excellence and precision in the electrical industry. The plaintiff also boasts of having a 20,000 strong global distribution network which provides service to customers. List of plaintiff's well established customers include Reliance, Air Force, DDA, Apollo Cancer Hospital, Indian Oil Corporation, CPWD, Airport Authority of India, Tata Consultancy Services, BHEL, BSNL and other private well-known operators, details of which have also been provided in

the plaint. It is also the case of the plaintiff that large amounts are spent by the plaintiff for promotion of its products. The sales and sale promotion figures have also been extracted in paragraph 17 of the plaint. The plaintiff has also spent large amounts of money in brand promotions and sponsorship activities.

8. The counsel for the plaintiffs submits that the plaintiffs learnt that the defendants are manufacturing and selling plywood under the name of HAVELLS PLY. A legal notice was issued to the defendants. In reply thereto the defendants assured that they would discontinue the trademark "HAVELLS" and also withdraw the trademark application. Copy of this communication was also placed before the trademark registry. However, whether inadvertently or for any other reason, the trademark registry issued a certificate in favour of the defendant on the basis of which the defendant again started its business activity.

9. The defendant No.3, who is present in Court and also identified by his counsel, submits that the defendant is not interested in carrying out business with the trademark "HAVELLS". The defendant would also make a formal request to the trademark registry for withdrawing the certificate provided the plaintiff cooperates in quashing the FIRs registered against defendants and at their instance and does not claim damages and further the defendants are permitted to take back their goods which have been seized and allowed to sell the same after they have been defaced. Ms. Pratibha, learned senior counsel for the plaintiffs, has no objection to the same.

10. I have heard learned counsel for the plaintiffs and also perused the plaint, application and the documents filed along with the plaint.

11. In the case of Tata Sons Ltd v Manoj Dodia and Ors. reported at

2011(46)PTC244(Del), following observations were made by another bench of this court with respect to the factors that ought to be looked into while considering what constitutes a "well-known mark":

"13. Trademarks Act, 1999 does not specify the factors which the Court needs to consider while determining whether a mark is a well known mark or not, though it does contain factors which the Registrar has to consider while determining whether a trademark is a well known mark or not. In determining whether a trademark is a well known mark or not, the Court needs to consider a number of factors including (i) the extent of knowledge of the mark to, and its recognition by the relevant public; (ii) the duration of the use of the mark; (iii) the extent of the products and services in relation to which the mark is being used; (iv) the method, frequency, extent and duration of advertising and promotion of the mark; (v) the geographical extent of the trading area in which the mark is used;

(vi) the state of registration of the mark; (vii) the volume of business of the goods or services sold under that mark; (viii) the nature and extent of the use of same or similar mark by other parties; (ix) the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry and (x) actual or potential number of persons consuming goods or availing services being sold under that brand."

[Also See Rolex S A v Alex Jewellery (P) Ltd. reported at 2009 (41) PTC 284 (Del).]

12. The plaintiff has been able to prima facie show to the Court that the plaintiff has been using "HAVELLS" which is an arbitrary and invented word which requires the highest degree of protection. Plaintiff has also been able to establish that the trademark "HAVELLS" has been used since the year 1942 by the predecessors of the plaintiff. The plaintiff has spent large amounts in protecting its trademark. The plaintiff has also spent large amounts in promotion and advertisements of its trade mark.

The sale figures also show that on account of its pre-eminence in quality, the plaintiff has generated enormous goodwill in the trademark. Further on account of its extensive use over a long period of time, a wide geographical tremendous publicity and immense popularity, the trademark of the plaintiffs can well be defined as a well-known trademark within the definition of Section 2(1) (zg) of the Trade Marks Act, 1999.

13. In view of the above mentioned factors, the plaintiffs have established beyond reasonable doubt that their trade mark "HAVELLS" is a "well known" mark amongst the members of the trade and the public at large. Having considered the fact that on account of the long duration, for which the said mark has been put in use by the plaintiff; the wide extent of the geographical area of use; the knowledge of the trademark "HAVELLS" to the general public; its goodwill and reputation due to extensive promotion, publicity, advertisement; the extensive sales made by the plaintiffs under the mark in India as well as other countries; and the numerous registrations obtained by the plaintiffs for the said mark, establish that the mark "HAVELLS" used by the plaintiffs has undoubtedly acquired the status of a "well known mark".

14. In view of the stand taken by the defendants, the present suit is decreed in favour of the plaintiffs and against the defendants in terms of paragraph 51(a), (b) and (c) of the plaint. The plaintiffs give up the relief of damages. Defendants shall surrender the certificate with the trademark registry within two weeks from today. The goods seized pursuant to the FIR shall be released in favour of the defendants. The goods shall be defaced in a manner that the trademark "HAVELLS" is removed in the presence of the representative of the plaintiffs. The defendants would be free to make a petition for quashing of the FIR registered at the instance

of the plaintiffs and the plaintiffs undertake to the Court that they would have no objection in case the FIR is quashed and if necessary the representative of the plaintiff will remain present in appropriate Court of jurisdiction. The plaintiff will also sign an affidavit to be filed alongwith the petition for quashing the FIR No.265/2014, Police Station Yamuna Nagar.

15. Present suit is decreed in above terms and all disputes qua this trademark with respect to the defendants stand settled.

I.A.24543/2014 (O 39 R 1 & 2 CPC)

16. In view of the order passed in the suit, the application stands disposed of.

17. Let a copy of this order be given DASTI to both the parties under the signatures of Court Master. Copy of this order be sent to the Registrar, Trade Marks.

G.S.SISTANI, J DECEMBER 08, 2014 ns