Delhi High Court
M/S Parle Agro Pvt Ltd & Anr vs Anmol Lifeline on 16 December, 2014
$~20
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision : 16th December, 2014
+ CS(OS) 3178/2011
M/S PARLE AGRO PVT LTD & ANR ..... Plaintiff
Through: Mr.Piyush Joshi, Adv.
versus
ANMOL LIFELINE ..... Defendant
Through: Mr.Parikshit P Angad, Adv.
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J. (ORAL)
1. Plaintiff has filed the present suit for permanent and mandatory injunction
to restrain defendants from infringement of trademark and copyright, and
for relief of damages/rendition of accounts and delivery up.
2. Summons in the suit and notice in the application under Order XXXIX
Rules 1 & 2 were issued on 19.12.2011, 30.01.2012, 30.03.2012 and
21.05.2012. Counsel for the defendant entered appearance on 29.08.2012
and sought time to file written statement. None appeared for the defendant
on 05.11.2012, 11.02.2013 and 24.07.2013, consequently, defendant was
proceeded ex parte vide order dated 24.07.2013.
3. Plaintiffs have filed affidavit by way evidence of Mr.Sanjiv Kiyawat
(PW1), Manager Accounts of the plaintiff company. A copy of the power
of attorney dated 12.07.2010 in favour of Mr.Sanjiv Kiyawat has been
exhibited as Ex.PW1/1.
4. PW1 has deposed that plaintiff no.1 is private limited company
incorporated in India and plaintiff no.2 form is a unit of plaintiff no.1.
Plaintiff no.1 and plaintiff no.2 are hereinafter collectively referred to as
the plaintiffs. The office of plaintiff no.2 is responsible for administrating
and monitoring the sales related issues for Northern India.
5. PW1 has also deposed that the plaintiff no.1 company started its business
more than two decades ago and is today the pioneer in the fruit beverages
industry in India with many brands under its banner, namely the oldest
and most well known trademark "FROOTI", "APPY", and "APPY FIZZ"
and also packaged drinking water manufactured, marketed and sold under
the well known trademark "BAILLEY". The expression "BAILLY" is not
only used as a word mark but has also been extensively used as label mark
containing the word "BAILLEY". The label has been created as an artistic
work and possesses all the necessary ingredients of copyright as well. The
label of plaintiff‟s product "BAILLEY" with its device has been exhibited
as Ex.PW1/3.
6. PW1 has further deposed that plaintiff no.1 adopted the trademark
"BAILLEY" in the year 1992 for its packaged drinking water and has
been using the said trademark extensively and continuously since then.
The plaintiff no.2 merged with the plaintiff no.1 with effect from
November 1, 2003 and since then became a unit of plaintiff no.1. Over the
years the trademark "BAILLEY" has gained immense popularity and
goodwill and people relate and associate the said trademark with the
plaintiff no.1 company. The Amalgamation Order of Parle Agro Pvt. Ltd.
ad M/s Explicit Trading and Marketing dated 12.08.2004 has been
exhibited as Ex.PW1/4.
7. PW1 has next deposed that the plaintiff no.1 has obtained the registration
of the trademark "BAILLEY" in class 29 and 32. Besides, the device and
label of "BAILLEY" is also registered in class 32 in favour of the plaintiff
no.1. The details pertaining to plaintiff‟s no.1 trademark registered in
India are as follows:
Sl. Trade Mark Trade Class Date of Status
No. Mark registration
No.
1. PARLE BAILEY 584190 32 05.11.1992 Registered
(Label)
2. PARLE 621903 32 15.03.1994 Registered
BAILLEY
AQUA (label)
3. BAILLEY 647221 32 30.11.1994 Registered
AQUA
4. PARLE 749335 32 30.07.1997 Registered
BAILLEY
MINERAL
WATER (label)
5. PARLE 749336 32 30.07.1997 Registered
BAILLEY (word)
6. PARLE 749338 29 30.07.1997 Registered
BAILLEY(word)
7. PARLE 767884 32 08.10.1997 Registered
BAILLEY SODA
(label)
8. PARLE 1001757 32 09.04.2001 Registered
BAILLEY
AQUA (label)
9. PARLE 1119236 32 16.07.2002 Registered
BAILLEY
AQUA (label)
10. BAILLEY 1538518 32 16.07.2002 Registered
NATURALE
(label)
11. BAILLEY 1538520 32 09.03.2007 Registered
NATURALE
(word)
12. PARLE AGRO 1654182 32 15.02.2008 Registered
BAILLEY (word)
13. BAILLEY (word) 1654181 32 15.02.2008 Registered
The certificates for legal proceedings with respect to each of the
above mentioned trademarks have been exhibited as Ex.PW1/5(colly).
8. It has also been deposed that the trademark "BAILLEY" and its variants
have been filed by the plaintiff no.1 and the same are pending:
Sl. Trade Mark Trade Class Date of Status
No. Mark No. registration
1. BAILLEY SODA 2120824 32 24.03.2011 Pending
(label)
2. BAILLEY SODA 1643086 32 18.01.2008 Opposed
WITH RIBBON
(label)
3. BAILLEY WITH 2561764 32 09.07.2013 Pending
PARLE AGRO
REFRESHING
INDIA (label)
4. BAILLEY (word) 2561766 32 09.07.2013 Pending
5. BAILLEY 2561767 32 09.07.2013 Pending
NATURAL
MINERAL
WATER
6. BAILLEY (word) 2561771 16 09.07.2013 Pending
9. PW1 has further deposed that the products of the plaintiffs are
manufactured with the highest and most stringent quality standards as
notified by the Government of India through the statutes of BIS and
FSSAI.
10. PW1 has next deposed that the reputation and respect enjoyed by the
plaintiffs‟ trademark "BAILLEY" all over India the sale of the said
products has increased by leaps and bounds over the past several years. It
has also deposed that the plaintiffs have been spending huge amounts on
advertisements and sales promotion of its product sold under the
trademark "BAILLEY". The sales and advertisement figures of the
plaintiffs product bearing the trademark "BAILLEY" and "BAILLEY"
device/label have been detailed in the affidavit as under:
In Cases Retail Bulk Total Total
(MRP
value)
Rs.lakhs
200,6 2,170,973 61,364 3,305,254 3,305
2007 2,292,810 990,136 3,662,319 3,662
2008 3,009,889 1,756,064 5,200,099 5,200
2009 6,796,076 2,260,562 9,393,548 9,394
2010 10,076,894 3,402,339 13,698,617 16,438
2011 till 8,576,042 3,558,865 12,304,545 14,765
oct.
TOTAL 32,913,684 12,029,330 47,564,382 52,765
Institutional sales figures of the plaintiff‟s product "BAILLEY" for
the last eight years:
Year Quantity sold Value of Advertisement
by pale agro Quantity sold Expense by
pvt. Ltd. (Rs. In lakhs) Parle Agro Pvt.
(cartoons/Jar) Ltd. (Rs. In
lakhs)
2003-04 3,163,506 1,119,62 7.21
2004-05 3,109,346 1,290,50 1.39
2005-06 3,297,368 1,588,77 22.26
2006-07 1,657,162 1,103,47 12.29
2007-08 597,776 397,53 43.89
2008-09 279,202 146,52 42.25
2009-10 92,872 81.00 14.36
2010-11 114,844 105.56 16.62
TOTAL 12,312,036 5832.97 160.26
BAILLEY ADVERTISEMENT FIGURE FOR LAST FIVE YEARS:
PERIOD PARLE GROUP TOTAL IN LAKHS
2006-07 12.29 12.29
2007-08 43.89 43.89
2008-09 42.25 42.25
2009-10 14.36 14.36
2010-11 16.62 16.62
TOTAL 129.41 129.41
The certificate of the Chartered Accountant certifying the said sales
and advertisement expenses of the plaintiff‟s product bailey for the year
2005-06 to 2010-2011 has been exhibited as Ex.PW1/6. The Tax Invoices
with respect to the sale of packaged drinking water under the trademark
"BAILLEY" by the plaintiff from its office located at New Delhi have
been exhibited as Ex.PW1/7. The list of employees of the plaintiff at its
Delhi office has been exhibited as Ex.PW1/8.
11. PW1 has also deposed that the plaintiff‟s trademark "BAILLEY" and
"BAILLEY" device/label since the last many years have been extensively
advertised in several leading magazines, newspaper, television and other
media which have huge circulation in India.
12. PW1 has further deposed that any use of identical or deceptively similar
marks by another trader not connected to the plaintiffs, in respect of the
same goods is bound to cause confusion and deception in the minds of the
consuming public and members of trade leading them to falsely believe
that such third party goods originate from the plaintiffs or have some
nexus of affiliation with them. As a result of the aforesaid factors and due
to long and continuous use, extensive advertising and sales promotion,
associated goodwill and reputation earned under the product identification
mark "BAILLEY", coupled with unbeatable quality associated with the
plaintiffs, the said mark has become easily identifiable by the members of
the public and trade as originating from the plaintiffs alone.
13. PW1, Mr.Sanjiv Kiyawat has also deposed that plaintiff no.1 also has a
website with the URL, which is www.parleagro.com which mentions
about the popularity of its popular product "BAILLEY". The printouts
from the plaintiff‟s website www.parleagro.com have been exhibited as
Mark-1.
14. PW1 has next deposed that the plaintiffs were shocked when on
30.11.2011 their on field sales staff brought to its attention about a
packaged drinking water product being sold in the local markets which
was almost identical/phonetically and deceptively similar to the plaintiff‟s
registered trademark "BAILLEY". Not only did the defendant‟s product
bear a deceptively similar trademark but also had a striking visual
resemblance to the plaintiff‟s label having an identical colour scheme, get
up and lay out. The label on the defendant‟s product displayed the name
of the defendants as the manufacturer. A label of defendant‟s infringing
product has been exhibited as Ex.PW1/9.
15. PW1 has further deposed that the defendant by adopting the deceptively
similar trademark "BAILLAY" has taken undue advantage of the
plaintiff‟s reputation and goodwill. Defendant is also trying to pass off its
products as those emanating from the plaintiff thereby making
unreasonable profit from such sale. The adoption of a trademark
"BAILLAY" by the defendant is dishonest and fraudulent with the prior
knowledge of the plaintiff‟s trademark. Defendant‟s trademark
"BAILLAY" is likely to create confusion in the minds of the unwary
including children.
16. PW1 has also deposed that by using the impugned trademark the
defendant has not only infringed the registered trademark but also the
copyright of the plaintiff no.1. The colour combination, layout and the
scheme of the defendant‟s label is deceptively similar to that of the
plaintiff‟s label and is likely to create confusion in the minds of the
consumers as well as traders as the channels of trade are similar or rather
identical.
17. PW1, Mr.Sanjiv Kiyawat, has further deposed that the use of the
impugned trademark by the defendant is likely to dilute the distinctive
character of the plaintiff‟s trademark "BAILLEY" and the extensive and
unquantifiable loss of plaintiffs‟ reputation and goodwill strikes at the
very root of the plaintiffs‟ existence and is not measurable in terms of
money and cannot be adequately compensated monetarily.
18. I have heard counsel for the plaintiff and carefully perused the documents
which have been placed on record alongwith the affidavit by way of
evidence which has been filed. The label of plaintiff‟s product
"BAILLEY" with its device has been exhibited as Ex.PW1/3. The
certificates which can be used in legal proceedings for registered marks of
the plaintiff have been exhibited as Ex.PW1/5(colly). Sales and
advertisement expenses of plaintiff‟s product "BAILLEY" for the year
2005-06 to 2010-11 have been exhibited as Ex.PW1/6. Tax Invoices with
respect to the sale of the packaged drinking water under the trademark
"BAILLEY" have been exhibited as Ex.PW1/7. The printouts from the
plaintiff‟s website www.parleagro.com have been exhibited as Mark-1.
Label of defendant‟s infringing product has been exhibited as Ex.PW1/9.
19. On the basis of the documents placed on record, the plaintiffs have
established that plaintiff no. 1 is the owner of the trademark, label
"BAILLEY" with its device and the plaintiffs have the exclusive right to
use the same. Plaintiffs have also established that on account of huge
amount spent on advertisement of "BAILLEY" packaged drinking water
in India, plaintiffs have been able to generate vast turnover for years and
that during the past many years, the plaintiffs have built up an unparallel
reputation and goodwill with respect to their trademark, label
"BAILLEY" with its device. Plaintiffs have also established that the trade
mark "BAILLEY" used for packaged drinking water is distinctive and is
identified with plaintiffs only. Plaintiffs have also established that the
defendants by using the trademark "BAILLAY", which is identical and/or
deceptively similar to plaintiffs‟ mark "BAILLEY", in respect of
packaged drinking water, are causing infringement of rights in the
trademark and copyright of the plaintiffs.
20. In Parle Products (P) Ltd. v. J.P. & Co., Mysore reported at AIR 1972
SC 1359, Supreme Court inter alia observed as under:
According to Karly's Law of Trade Marks and Trade Names (9th Edition
Paragraph 838):
"Two marks, when placed side by side, may exhibit many and
various differences, yet the main idea left on the mind by both may
be the same. A person acquainted with the one mark, and not
having the two side by side for comparison, might well be
deceived, if the goods were allowed to be impressed with the
second mark, into a belief that he was dealing with goods which
bore the same mark as that with which he was acquainted.
It would be too much to expect that persons dealing with
trademarked goods, and relying, as they frequently do, upon marks,
should be able to remember the exact details of the marks upon the
goods with which they are in the habit of dealing. Marks are
remembered rather by general impressions or by some significant
detail than by any photographic recollection of the whole.
Moreover, variations in detail might well be supposed by customers
to have been made by the owners of the trade mark they are already
acquainted with for reasons of their own.
It is therefore clear that in order to come to the conclusion whether
one mark is deceptively similar to another, the broad and essential
features of the two are to be considered. They should not be placed
side by side to find out if there are any differences in the design and
if so, whether they are of such character as to prevent one design
from being mistaken for the other. It would be enough if the
impugned mark bears such an overall similarity to the registered
mark as would be likely to mislead a person usually dealing with
one to accept the other if offered to him."
21. While examining the question of misrepresentation or deception,
comparison has to be made between the two trademarks as a whole. Rules
of Comparison was explained by Justice Parker in the following words:
"You must take the two words. You must judge of them, both by
their look & by their sound. You must consider the goods to which
they are to be applied. You must consider the nature & kind of
customer who would be likely to busy those goods. In fact, you
must consider all the surrounding circumstances; and you must
further consider what is likely to happen if each of those trade
marks is used in a normal way as a trademark for the goods of the
respective owners of the marks. If, considering all those
circumstances, you come to the conclusion that there will be
confusion- that is to say, not necessarily that one man will be
injured & the other will gain illicit benefit, but that there will be
confusion in the mind of the public which will lead to confusion in
the goods- then you may refuse the registration, or rather you must
refuse the registration in that case."
22. In a recent judgment delivered by another bench of this court, Mind Gym
Ltd.v. Mindgym Kids Library Pvt. Ltd CS (OS) 1029/2013, decided on
21.03.2014, plaintiffs who were carrying on business under the trade
mark „MIND GYM‟ sought permanent injunction against the defendants
restraining them from infringing and/or passing off the plaintiff's rights by
using the trademark „MINDGYM‟ as part of latter‟s corporate
name/trademark. Following observations were made by the court:-
"9........
(ii) In the case of Evergreen Sweet House Vs. Ever Green and
Ors., 2008 (38) PTC 325 (Del), it was observed as under:
15. A mark, is said to be deceptively similar to another
(Section 2(1) (h), Trademarks Act, 1999) if it so nearly
resembles that other mark as to be likely to deceive or cause
confusion. Section 29(1) deals with a situation where the
defendant uses a mark, which is identical or deceptively
similar to that of the plaintiff, in respect of the same goods or
services, and in such manner that it is likely that such use is
taken as being an use as a trademark. This amounts to
infringement. To fall within Section 29(1), the defendant's use
of the mark must be so that it is likely that the public assumes
that the said mark is used as a trademark. Section 29(2) deals
with three situations; one where the defendants mark is
identical to that of the plaintiff and in respect of similar
goods. Two, where the marks are similar and in respect of
goods which are identical or similar. Three, the marks as well
as the goods are identical. Infringement does not take place if
only one of the three ingredients are satisfied; the plaintiff has
to prove that use by the defendant is likely to cause confusion
on the part of the public or is likely to have an association
with the registered mark.
[Emphasis Supplied]"
23. I am of the view that the impugned trademark of the defendant is identical
and deceptively similar to the plaintiffs‟ trademark. The use of the word
"BAILLAY" by the defendant is likely to dilute the distinctive character
of the plaintiffs‟ trademark "BAILLEY" and the same is likely to erode
the goodwill and reputation of the plaintiffs among its existing as well as
potential customers in the market. The adoption and use of the identical
and/or deceptively similar trademark by the defendant in relation to
identical products amounts to an infringement of the plaintiffs‟ statutory
rights in the registered trademark "BAILLEY". Furthermore, the
defendant in a mala fide, dishonest and an unethical manner are encashing
upon the goodwill and reputation of the plaintiffs‟, established by the
latter over the period of many years.
24. In the case of Laxmikant V. Patel Vs. Chetanbhai Shah And Another,
reported at (2002) 3 SCC 65, Apex court made following observation:
"..........The law does not permit any one to carry on his business
in such a way as would persuade the customers or clients in
believing that his goods or services belonging to someone else are
his or are associated therewith. It does not matter whether the latter
person does so fraudulently or otherwise. The reasons are two.
Firstly, honesty and fair play are, and ought to be, the basic policies
in the world of business. Secondly, when a person adopts or intends
to adopt a name in connection with his business or services which
already belongs to someone else it results in confusion and has
propensity of diverting the customers and clients of someone else
to himself and thereby resulting in injury."
25. In view of the above, the plaintiffs are entitled to a decree of permanent
injunction against the defendant from manufacturing, selling, distributing,
offering for sale, advertising directly or indirectly their goods under the
trademark "BAILLAY" along with its label device or any other trademark
which is deceptively/confusingly similar or identical to plaintiffs‟
trademark "BAILLEY", in terms of prayer (i), (ii) and (iii) of paragraph 1
of the prayer clause.
26. The plaintiffs have also claimed damages along with delivery up of the
defendant‟s goods, articles, pillow packs, stickers, hoardings, cartons,
boxes, pamphlets, broachers, advertising materials, papers, stationery and
other material bearing the impugned trademark "BAILLAY". Plaintiffs
have also claimed rendition of accounts. However, plaintiffs restrict their
claim to punitive damages.
27. In Microsoft Corporation v. Deepak Raval reported at MIPR 2007 (1) 72,
this Court observed that in our country the Courts are becoming sensitive
to the growing menace of piracy and have started granting punitive
damages even in cases where due to absence of Defendant, the exact
figures of sale made by them under the infringing copyright and/or
trademark, exact damages are not available. The justification given by the
Court for award of compulsory damages was to make up for the loss
suffered by the plaintiff and deter a wrong doer and like-minded from
indulging in such unlawful activities.
28. In Larsen and Toubro Limited v. Chagan Bhai Patel reported at MIPR
2009 (1) 194, this Court has observed that it would be encouraging the
violators of intellectual property, if the Defendants notwithstanding
having not contested the suit are not burdened with punitive damages.
29. In case of Time Incorporated v. Lokesh Srivastava and Anr., reported at
2005 (30) PTC 3 (Del), the court has recognized third type of damages as
punitive damages apart from compensatory and nominal damages. The
court has held that:
"The award of compensatory damages are aimed at deterring a
wrong doer and the like minded from indulging in such unlawful
activities."
"This Court has no hesitation in saying that the time has come when
the Courts dealing actions infringement of trademark, copy rights,
patents etc. should not only grant compensatory damages but award
punitive damages also with a view to discourage and dishearten law
breakers who indulge in violations with impunity out of lust for
money so that they realize that in case they are caught, they would
be liable not only to reimburse the aggrieved party but would be
liable to pay punitive damages also, which may spell financial
disaster for them."
30. For the reasons stated above, the plaintiffs have made out a case for grant
of decree as prayed in the plaint. Accordingly, the order dated 19.12.2011
is confirmed and the suit is decreed in favour of the plaintiffs and against
the defendant. Plaintiffs are also entitled to damages to the tune of Rs.1.00
lac.
31. Decree sheet be drawn up accordingly.
G.S.SISTANI, J
DECEMBER 16, 2014 ssb
