Delhi High Court
Pioneer Hi-Bred International, ... vs M/S Pioneer Agrovision Limited & ... on 23 December, 2014
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Order delivered on : 23rd December, 2014
+ CS(OS) No.1626/2013
PIONEER HI-BRED INTERNATIONAL, INC. & ORS.
...Plaintiffs
Through Ms. Pratibha M. Singh, Sr.
Adv. with Mr.Sudeep Chatterjee
and Ms. Jaya Nandelia, Adv.
Versus
M/S PIONEER AGROVISION LIMITED & ORS. ...Defendants
CORAM:
HON'BLE MR.JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J.
1. The plaintiffs have filed the present suit for permanent
injunction restraining violation and infringement of rights in the trade
mark/ trade name/ logo/ label 'PIONEER' , domain name, passing off
& dilution, damages/rendition of accounts, delivery-up, etc.
2. It is averred in the plaint that the plaintiff No.1, Pioneer Hi-Bred
International, Inc. is the world's leading developer, producer, and
supplier of agricultural seeds and advanced plant genetics to the
agricultural industry. It produces, markets, and sells hybrid seed,
corn hybrids, improved varieties of sorghum, sunflower, soybean,
alfalfa, canola and wheat, as well as forage and grain additives. It
sells its products under the brand "PIONEER" in more than 90
countries worldwide. It also develops, produces, and markets a full
line of high-quality agricultural seeds and forage and grain additives
and provides agronomic services to customers in countries
throughout the world.
Since its founding, plaintiff No. 1 has engaged in extensive
research and development in the field of plant genetics which has
resulted in the development of many improved varieties of seeds that
produce greater yields for farmers. Thus, the Company's research
and development efforts have directly and significantly increased the
efficiency of crop production worldwide. To further aid farmers in
increasing their yields, plaintiff No.1 also conducts research and
development in the area of agronomics and educates farmers in
improved agricultural techniques.
3. It is averred by the plaintiffs that all the products of the plaintiffs
under the brand "PIONEER" are built on leading "elite germplasm".
Further, the products are backed for agronomics support and
services so as to help in increasing the farmers' productivity. The
packaging of almost every unit of the plaintiffs' products sold
throughout the world bears the famous "PIONEER" mark.
The plaintiff No. 2 Company develops seed technology and
works on genetically modified crops. Their primary genetically
modified crops are hybrids of corn, sorghum, sunflower, and canola.
The plaintiff No. 2 Company maintains about 75 production locations
worldwide. Plaintiff No.3 is a permissive user of the plaintiff no.1 for
the mark PIONEER. It is a part of the plaintiff No.1's group
companies and a wholly owned subsidiary of plaintiff No. 2.
4. In India the plaintiffs focus mainly on crop seeds and offer
individual products to the agricultural farmers for all types of
conditions. The products that are developed and sold in India include
cotton, rice, corn, sunflower, mustard and pearl millet. The plaintiffs
have over 400 people employed and is present in more than 50
locations all over India. The plaintiffs have 15 production locations
covering over 45,000 hectares of land and has arrangements with
more than 22,000 farmers. The plaintiffs have approximately 3.5
million customers in India; 60% are farmers with less than 1 hectare
of agricultural land; 20% are farmers who have 1 to 2 hectares of
agricultural land. Plaintiffs have a distribution channel of more than
20,000 retailers and 1,600 distributors of its products in India.
5. It has been stated in the plaint that the plaintiffs are a part of
the DUPONT group of companies and have used the name
"PIONEER" as a trademark and as a prominent part of the trade
name since the year 1935 and the said mark is thus over 78 years
old. The said mark has extensive global use since the 1970s.
6. The plaintiffs have their research operations spread all across
India for Mustard (Gurgaon), Cotton (Hyderabad), Rice (Hyderabad,
Lucknow, Nizamabad, Burdhman), Corn (Bangalore, Vijaywada,
Udaipur). The plaintiffs also have collaborations with various State
Governments like Uttar Pradesh, Gujarat, Orissa, Rajasthan and
Jharkhand to create a sustainable structure for adoption of Hybrid
Seeds and Improved Crop Management Practices. Besides
Government organizations, the plaintiffs also partners with NGO's
and other Farm Organisations helping in small and marginal farmers
to increase the agricultural productivity. Plaintiffs provide services to
the farmers from the selection and distribution of seeds until the post-
harvest including grain procurement market linkage.
7. The trademark "PIONEER" is a registered trademark of the
plaintiffs in India as well as in a number of other countries. In India,
the said mark is also registered in a large number of vernacular
languages in Class 31. The details of the trademark registrations in
favour of the plaintiffs are as under:
S. No. Trademark Reg. Reg. date Exhibit No.
No.
EX. PW
1. PIONEER 269686 25.1.1971
(pg. 24)
EX. PW
2. 352439 16.8.1979
(pg. 30)
EX. PW
3. 537300 28.4.2000
(pg. 37)
EX. PW
4. 519487 7.11.1989
(pg. 41)
EX. PW
5. 519485 7.11.1989
(pg. 45)
EX. PW
6. 537301 28.4.2000
(pg. 49)
EX. PW
7. 519486 7.11.1989
(pg. 53)
EX. PW
9. 519489 7.11.1989
(pg. 58)
EX. PW
10. 537299 28.4.2000
(pg. 62)
8. The total worldwide sales for the year 2012 alone were in
excess of USD 7 billion and in India the total sales for the year 2012
were in excess of USD 100 million. The plaintiffs have spent in
excess of USD 87 million on advertising worldwide which includes
the advertising spent in India in excess of USD 7.5 million.
9. It is submitted that the plaintiffs stumbled upon the website
namely www.exportsindia.com wherein the defendant No.1 had
advertised its business. Thereafter, the plaintiffs made enquiries. It
came to the knowledge of the plaintiffs that the defendant No.1 is not
only involved in the business of agricultural based products under the
name of Pioneer Agrovision Ltd. but is also operating Jewellery
outlets by the name of Pioneer Gold Bazar and Pioneer Gold Ltd.
Infact, the defendant No.1 has also registered websites by the names
of www.dooarsonile.co.in, www.krishipanna.org, and
www.pioneergoldbazaar.com. Further the defendant No.1 on its
website claims to be using the domain
www.pioneerbamboostick.com. It is however submitted that the said
website is available and not booked by any entity. The defendant
No.1 is also claiming itself to be PIONEER GROUP. The word and
mark "PIONEER" is used on their brochures, visiting cards, factory,
websites as well as on its products. Further the defendant No.1
claims to be into the business of EMU farming under the name
PIONEER.
10. The plaintiffs thereafter got a preliminary investigation done and
found that the defendant No.1 is also using the Trademark
"PIONEER" for its agricultural products including bamboo sticks,
incense sticks, rice mill, jute mill, packed drinking water, EMU
farming. Thereafter, in the first week of April, 2013, the plaintiffs
issued a Cease and desist notice to the defendant No. 1 asking the
defendant No.1 to immediately stop using the mark "PIONEER". It is
further submitted that it had also come to the Plaintiffs' knowledge
that the Defendant No.1 had also applied for the trademark "PG
WITH PIONEER GROUP" in Class 31 vide application No.2393235.
The plaintiffs in the said notice had also called upon the defendant
No. 1 to immediately withdraw the said trademark application. It is
further submitted that the defendant No.1 herein chose not to reply to
the said legal notice. Hence the plaintiffs had no other option but to
file the present proceedings.
11. On 23rd August, 2013, ex-parte ad-interim injunction was
passed against the defendants restraining them from using the
trademark/trade name/logo 'PIONEER' 'PIONEER GROUP',
'PIONEER AGROVISION', 'PIONEER'S GOLD BAZAAR', 'PIONEER
GOLD LIMITED' or any other deceptively similar mark or name or
logo in relation to the agricultural goods and services. The
defendants were served through courier on 8th October, 2013, vide
email 3rd September, 2013 and by Dasti on 26th December, 2013.
The plaintiffs have filed affidavit of service on 18th December, 2013
and 30th January, 2014.
12. However, despite of service of summons and notice, the
defendants did not appear before Court till date and have also failed
to contest the suit. The evidence of the plaintiffs have gone
unrebutted. There is no cross-examination of plaintiffs' witnesses.
13. It appears to the Court that in view of case established, due to
extensive use and advertising of the trademark "PIONEER"
internationally as well as in India by the plaintiffs, the mark is
exclusively associated with the plaintiffs and their business and is a
well known mark under Section 11(6) and 2(1)(zg) of The
Trademarks Act, 1999. The mere mention of the mark PIONEER,
particularly in relation to agricultural products, creates an immediate
exclusive association with the plaintiffs and the products sold by the
plaintiffs. The mark "PIONEER" enjoys trans-border reputation which
is identified with the plaintiffs and its group companies and no one
else. The mark "PIONEER" has become synonymous with the
plaintiffs and the goods sold by them under the mark. The word
"PIONEER" is exclusively associated with the plaintiffs and the same
has acquired secondary significance and distinctiveness.
14. The plaintiff's trademark PIONEER satisfies the tests to qualify
as a well-known mark as laid down in various judicial
pronouncements (Tata Sons Ltd v Manoj Dodia and Ors. (2011
(46) PTC 244 (Del)); Rolex S A v Alex Jewellery (P) Ltd. (2009 (41)
PTC 284 (Del)). Further, the plaintiffs have been using the mark
continuously, extensively and uninterruptedly since the year 1935,
the plaintiffs have consistently spent large amounts of money in
protecting, promoting and advertising the mark PIONEER. The sale
figures also show that on account of its pre-eminence in quality, the
plaintiffs have generated enormous goodwill in the trademark. Further
on account of extensive use over a long period of time, a wide
geographical tremendous publicity and immense popularity, the
trademark of the plaintiffs can therefore well be defined as a well-
known trademark within the definition of Section 2(1) (zg) of the Act.
15. It is evident that the defendant No. 1 has deliberately adopted
the plaintiffs' mark PIONEER so as to confuse the consumers and
the farmers and to mislead them into believing that the defendant
No.1's products and the business is connected with the plaintiffs or
originates from the plaintiffs. The manner in which the defendant
No.1 is using the mark PIONEER not merely as a trade mark but also
as a part of the business name and also as a domain name
establishes the complete dishonesty in the adoption and continued
use of the same. The adoption of the mark PIONEER is likely to
create confusion and deception as to source, affiliation and
sponsorship.
16. The defendant No.1's intention is to encash upon the reputation
and goodwill of the plaintiffs' mark. The use of the mark PIONEER is
a dishonest attempt by the defendant No.1 to misuse the reputation
of the mark and ride piggyback upon the plaintiffs enormous goodwill.
There can be no other explanation whatsoever for the defendant
No.1 in adopting an identical mark.
17. In view of case established by the plaintiffs and evidence
produced the plaintiffs are entitled for a decree for permanent
injunction.
18. The suit of the plaintiffs is decreed to the following effect :
i) It is declared that the mark PIONEER of the plaintiffs is a
well-known mark with respect to agricultural goods and
services including seeds.
ii) A decree of permanent injunction is passed restraining the
defendants No.1 and 2, family members, partners/promoters
as the case may be, directors, servants, agents, franchisees
or any one acting for and on their behalf in any manner using
the mark/name/logo/terminology PIONEER, PIONEER
GROUP, PIONEER AGROVISION, PIONEER'S GOLD
BAZAAR, PIONEER GOLD LIMITED either as a trade mark,
trading style/ name of firm, logo or in any other manner
including the domain name www.pioneergoldbazaar.com,
www.pioneerbamboostick.com,
[email protected],
[email protected], or any other mark/
name/ domain name containing a word identical or
deceptively similar to the plaintiffs' mark PIONEER in relation
to any goods or services or in any other form whatsoever
especially in relation to agricultural goods and services so as
to result in violation of plaintiffs' statutory and common law
rights.
iii) Decree for delivery up of all the infringing material bearing the
mark/logo/name is also passed in favour of the plaintiffs and
against the defendants PIONEER, PIONEER GROUP,
PIONEER'S GOLD BAZAAR, PIONEER GOLD LIMITED
including brochures, pamphlets, signboards, visiting cards,
moulds, dyes, name plates/plaques, packaging materials,
stickers and any other material or printed matter bearing the
impugned mark for the purposes of destruction and erasure.
iv) It is directed to the Registrar of Trade Marks to reject the
defendant's Trade Mark Application for the mark "PG With
Pioneer Group" bearing trademark application number
2393235 in Class 35 or any other such trademark application
of the defendant which is identical with or deceptively similar
to the plaintiffs' registered trademark PIONEER.
v) In view of abovementioned facts and circumstances, the
plaintiff is entitled for the punitive damages to the tune of
Rs.5 lac from the defendants in view of settled law that in
order to obtain relief of punitive damage, the same are not to
be proved.
19. The suit is decreed with cost. Decree be drawn accordingly.
(MANMOHAN SINGH)
JUDGE
DECEMBER 23, 2014
