Delhi High Court
Mitsubishi Corporation & Anr vs Dharmesh Shah & Anr on 18 December, 2014
$~25
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 889/2014
% Judgment dated 18.12.2014
MITSUBISHI CORPORATION & ANR ..... Plaintiffs
Through : Ms.Vaishali Mittal & Ms.D Neha
Reddy, Advocates
versus
DHARMESH SHAH & ANR ..... Defendants
Through
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J (ORAL)
1. The plaintiffs have filed the present suit for permanent injunction,
restraining infringement of trademarks, passing off, rendition of accounts,
delivery up, dilution, damages against the defendants.
2. While issuing summons in the suit and notice in the application for stay
on 28.03.2014 this court had restrained the defendants from selling,
offering for sale, advertising, directly or indirectly dealing in any manner
with respect to any goods in general using the impugned mark
„MISTUBEESHI‟ and device or any other deceptively similar
mark to the Plaintiff‟s "MITSUBISHI" trademarks as well as the device
or doing any other thing so as to infringe the Plaintiff‟s Trade Marks
or device.
3. As none has appeared for the defendants despite service, defendants are
proceeded ex-parte.
CS(OS) 889/2014 Page 1 of 10
4. The Plaintiffs who trace their origins back to 1870, have shown that they
have a wide spread presence across the world and in India; that there is a
great amount of good will and reputation attached to the high quality,
efficacy of the products of the Plaintiff.
5. The Plaintiffs have also shown that they are the proprietors and holders of
the mark "MITSUBISHI" and device and have held the mark for 135
years which has earned them the trust and confidence of their customers
worldwide.
6. The Plaintiff has submitted the following documents to show their
ownership and usage over the mark "MITSUBISHI" and the device ;
a. Documents about the origin and history of the Plaintiffs and its
usage of the MITSUBISHI mark.
b. Documents detailing the activities of MITSUBISHI
Corporation, MITSUBISHI Paper Mills Limited and other
MITSUBISHI companies.
c. Documents detailing the list of the Plaintiffs‟ worldwide
registrations and copies of some of the registration and renewal
certificates.
d. Documents showing the Plaintiffs‟ registered Trademarks in
India with the Registration No. 386868 under Class 16.
e. Documents showing the Offices of the Plaintiffs worldwide
including in India.
f. Copies of advertisements in magazines of paper related
products.
g. Sales invoices of Mitsubishi Paper in India.
CS(OS) 889/2014 Page 2 of 10
7. The Plaintiffs have shown that they operate an advanced paper
manufacturing company which manufactures and sells real-art-paper,
which is the highest quality coated paper for printing. Further, the
Plaintiffs have shown that they produce and develop not only printing
paper, printing plate materials and printing systems supporting offset and
other printing, but also supply the media for almost all recording formats,
such as pressure-sensitive, thermal, magnetic, electrographic, silver halide
photography and inkjet paper.
Comparison of the Plaintiffs' Trademarks and the Defendants impugned
marks
Plaintiff's trademark Defendants' impugned mark
MITSUBISHI 1 MISTUBEESHI
2
MITSUBISHI
CS(OS) 889/2014 Page 3 of 10
Distinctive features of the
S. No. Plaintiff's MITSUBISHI Defendants' trademark
Trademarks
1. Deceptively similar
trademark with only slight
difference in spelling
2. Identical use of a red three
diamond device
3. Phonetic similarity
8. The Plaintiffs have shown that the Defendants, with respect to their paper
rolls business have adopted and are using a deceptively similar mark
„MISTUBEESHI‟ and the three diamond‟s device which is
identical to the Plaintiff‟s registered MITSUBISHI and Trade Marks.
The Plaintiffs further showed the Defendants mala-fide intention to ride
upon the Plaintiff‟s goodwill in the MITSUBISHI Trade Marks by the
fact that the Defendant has sought to gain proprietorship in the impugned
mark „MISTUBEESHI‟ under application no. 1607490 in class 16 and
application no. 1607488 in class 16 for , which are deceptively
similar and nearly identical to the Plaintiff‟s registered trademarks
„MITSUBISHI‟ and .
9. The Plaintiffs have shown from the affidavit of the investigator that the
Defendants being well aware of the Plaintiff‟s rights in the mark
„MITSUBISHI‟ as well as in the three diamond device , were not
only using the impugned marks with respect to their products, but are also
flagrantly expanding their range of products under the impugned marks.
CS(OS) 889/2014 Page 4 of 10
10. The Plaintiffs have shown that as a result of their wide spread presence
across the world and in India, there exists great amount of good will and
reputation attached to the high quality, efficacy of the products of the
Plaintiff and the well known trademarks MITSUBISHI and in the
relevant class of the public in India. Further the Plaintiffs‟ have shown
that the Defendants‟ unauthorised and intentional use of the deceptively
identical and similar trademark amount to passing off the Plaintiff‟s
trademark MITSUBISHI and the device has caused irreparable injury
and huge monetary loses to the Plaintiff.
11. It is the view of this court that it is a settled proposition of law that a well-
known and reputed trademark gets diluted when the consumer capacity to
associate it with the Plaintiff‟s products is diminished. Overwhelming
goodwill and reputation enjoyed by a particular trademark is worthy and
deserving of a wide scope of protection. The stronger the Plaintiff‟s
trademark, the greater the protection it deserves. The blatant and
unrestricted use of identical trademarks as those belonging to the
Plaintiffs‟ by the Defendants in relation to their products will inevitably
lead to the gradual whittling away and eventual erosion of the uniqueness
and exclusivity associated with the Plaintiff‟s trademarks by reducing
their capacity to identify and distinguish the goods of the Plaintiff as
originating from a particular source. In the event that the Defendants‟
activities are not curbed, they will also prompt others to imitate the
Plaintiff‟s well-known trademarks thereby leading to their further
dilution.
12. In the case of Laxmikant V. Patel Vs. Chetanbhat Shah and Anr.
reported at AIR 2002 SC 275 the following observations were made by
the Supreme Court with respect to the adoption of deceptively similar
marks:
CS(OS) 889/2014 Page 5 of 10
"10. A person may sell his goods or deliver his services such as in
case of a profession under a trading name or style. With the
lapse of time such business or services associated with a
person acquire a reputation or goodwill which becomes a
property which is protected by courts. A competitor initiating
sale of goods or services in the same name or by imitating
that name results in injury to the business of one who has the
property in that name. 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 he 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."
12. Reliance has also been placed on the case Ruston & Hornsby Ltd. Vs.
The Zamindara Engineering Co. reported at AIR 1970 SC 1649 where
the following observations were made by the Supreme Court:
"6. In an action for infringement where the defendant's trade mark
is identical with the plaintiff's mark, the Court will not enquire
whether the infringement is such as is likely to deceive or cause
confusion. But where the alleged infringement consists of using
not the exact mark on the Register, but something similar to it, the
test of infringement is the same as in an action for passing off. In
other words, the test as to likelihood of confusion or deception
arising from similarity of marks is the same both in infringement
and passing off actions.
7. In the present case the High Court has found that there is a
deceptive resemblance between the word "RUSTON" and the
word "RUSTAM" and therefore the use of the bare word
CS(OS) 889/2014 Page 6 of 10
"RUSTAM" constituted infringement of the plaintiff's trade mark
"RUSTON". The respondent has not brought an appeal against the
judgment of the High Court on this point and it is, therefore, not
open to him to challenge that finding. If the respondent's trade
mark is deceptively similar to that of the appellant the fact that the
word 'INDIA' is added to the respondent's trade mark is of no
consequence and the appellant is entitled to succeed in its action
for infringement of its trade mark."
13. In Rolex Sa vs. Alex Jewellery Pvt. Ltd. and Ors. reported at 2009(41)
PTC 284 (Del), the following was observed by this court:
"16. Yet another provision in the Act, though for the guidance of
the Registrar but in relation to well known trademarks is to be
found in Section 11(6) of the Act. Upon testing the trademark
of the plaintiff on the touchstone of the ingredients of the said
provision also, I find the said trademark of the plaintiff to be
satisfying the test of a well known trademark. The documents
filed by the plaintiff i.e., the advertising done in the media in
India since 1947 and particularly in years immediately
preceding the suit, registrations obtained show that relevant
section of the public in India had knowledge of the trademark
ROLEX in relation to the watches. The pleadings of the
plaintiff and which are not contested also show that the
plaintiff for the last nearly one century has been using the said
trademark spread over nearly the entire developed/developing
world. The advertisements of the plaintiff had appeared in the
magazines in this country even when there were import
restrictions. The plaintiff has filed documents to show
registration of the trademark in a large number of countries
and also to show successful enforcement of its rights with
respect to the said trademark.
20. Over the years and very quickly in recent times, the
international boundaries are disappearing. With the advent of
the internet in the last over ten years it cannot now be said
that a trademark which is very well known elsewhere would
not be well known here. The test of a well known trademark
in Section 2(zg) is qua the segment of the public which uses
such goods. In my view any one in India, into buying
expensive watches, knows of ROLEX watches and ROLEX
has a reputation in India. Not only so, to satisfy the
needs/demands of consumers in different countries, the well
known international brands which were earlier available at
prices equivalent to prices in country of origin and which
owing to the exchange rate conversion were very high, have
adapted to the Indian situation and lowered prices. A large
number have set up manufacturing facilities here and taken
out several variants. Thus, merely because today the price of a
ROLEX watch may be much higher than the price of items of
jewellery of the defendants as argued, cannot come in the way
of the consumer still believing that the jewellery is from the
house of the plaintiff. Also, there can be no ceiling to the
price at which the defendants will continue to sell their
jewellery. The defendants have claimed to be selling rolled
gold jewellery; with the price of gold soaring, there is no
certainty that the pieces of artificial jewellery of the
defendants would not also be in the same range as the watches
of the plaintiff. Even otherwise, the trend in modern times has
been towards artificial/semi precious jewellery. In fact, the
attraction to gold is confined to this part of the world only. In
India also today there are several brands of artificial
jewellery/semi precious jewellery whose brand value and/or
prices are quite comparable to the gold jewellery of the
conventional gold smiths."
14. The Plaintiffs‟ have shown the court that in the present matter it is clear
that the Defendants have adopted the impugned trademarks
MISTUBEESHI as well as the device in relation to their
products with the sole intention of enjoying the benefits that flow from the
tremendous reputation and goodwill that exists in favour of the Plaintiff‟s
identical trademarks. The Defendants are obviously well aware of the
international reputation and goodwill acquired by the Plaintiff in the
trademark MITSUBISHI as well as the device and have no
justification for adopting the said marks.
15. This court is of the view that the Plaintiffs have proved beyond doubt that
the plaintiff is the registered proprietor of the trademark MITSUBISHI as
well the device and hence the plaintiffs are entitled to exclusive
rights of usage.
16. Taking account the plaint, duly supported by an affidavit and documents
on record and comparing the impugned product of the defendants, I am of
the view that the defendants have copied the trademarks of the plaintiff
with the intention to make their products deceptively similar. The
defendants, thus, are guilty of infringing the registered trademarks and
passing off their goods as those of the plaintiffs and thus encasing on the
Plaintiffs‟ goodwill and reputation.
17. The plaintiffs have also claimed damages from the defendants on account
of illegal activities carried out by the latter.
18. I am of the view that damages in such cases must be awarded and a
defendant, who chooses to stay away from the proceedings of the Court,
should not be permitted to enjoy the benefits of evasion of court
proceedings. R.C. Chopra, J. has very succinctly set out in Time
Incorporated v. Lokesh Srivastava and Anr., reported at 2005 (30) PTC
3 (Del) that punitive damages are founded on the philosophy of corrective
justice. [Also see Hero Honda Motors Ltd. v Rafiq Memon reported at
2012 (52) PTC 449 (Del), Gora Mal Hari Ram Ltd. v Ashiqe Exports
reported at 2012 (50) PTC 428 (Del.), L.T. Overseas Ltd. v Guruji
Trading Co. reported at 2005 (31) PTC 254 (Del.), Relaxo Rubber Ltd.
and Anr. v Selection Footwear and Anr. reported at AIR 2000 Del 60].
19. 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 18.12.2014
is confirmed and the suit is decreed in favour of the plaintiffs. Plaintiffs
are also entitled to the damages to the tune of Rs.1 lakh.
I.A. 5758/2014 & I.A. 12355/2014
20. In view of the order passed in the suit, the present applications stand
disposed of.
G.S.SISTANI, J
DECEMBER 18, 2014
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