Delhi High Court
Societe Des Produits Nestle, S.A & ... vs Montu Sadhu & Ors. on 4 July, 2014
$~14
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 3500/2012
% Date of decision : 4th July, 2014
SOCIETE DES PRODUITS NESTLE, S.A & ANR.... Plaintiffs
Through : Mr.Manish K.Mishra and Ms. Kritika Seth,
Advs.
versus
MONTU SADHU & ORS ..... Defendants
Through : None
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J. (Oral)
1. Present suit has been filed by the plaintiffs for permanent injunction
restraining infringement of trademark, copyright, dilution, unfair
competition, rendition of accounts of profits/damages and delivery up.
Summons were issued in the suit on 19.12.2012, 21.01.2013, 23.04.2013,
13.11.2013, 25.03.2014 and on 30.05.2014. Service report is awaited. It
may noticed that in this case while issuing summons in the suit a local
commissioner was appointed. On the spot proceedings report filed by the
local commissioner shows that a copy of the order was handed over to the
defendants. In fact, the Election Commission cards of the defendant no. 1
and defendant no. 3 have also been placed on record. The report also
shows that the copy of the order was served upon the defendants which
show that the defendants have knowledge about the filing of the suit and
the next date of hearing in the matter. The proceedings were also video-
graphed, CD of which has been placed on record.
2. In my view, defendants have been duly served. Despite service defendants
have chosen not to enter appearance. The defendants are therefore
proceeded ex-parte.
3. Counsel for the plaintiffs submits that the plaint is duly supported by an
affidavit and the plaint should be read as evidence on behalf of the
plaintiffs. The plaint is duly supported by the affidavit of Ms. Venita
Gabriel, Constituted Attorney of the plaintiffs. She has averred in the
plaint that the plaintiff no. 1, Société des Produits Nestlé, S.A., is a
company incorporated under the laws of Switzerland having its registered
office at 1800, Vevey, Canton of Vaud, Switzerland. The plaintiff No. 2,
Nestlé India Limited, is a Company incorporated under The Companies
Act, 1956 having its registered office at M-5A, Connaught Circus, New
Delhi - 110 001.
4. It has further been averred in the plaint that the plaintiffs, which includes
its predecessors in business, belong to the „NESTLÉ Group‟ (hereinafter
referred to as NESTLÉ). The beginning of „NESTLÉ‟ was made in the
year 1867 when Henri Nestlé founded a small business in Switzerland to
manufacture Kindermehl, the first ever milk food manufactured for young
children. In 1904, Nestlé added chocolate to its range of food products
pursuant to an agreement with the Swiss General Chocolate Company.
Today, Nestlé is the world's biggest food and beverage company,
producing healthy and enjoyable food products for every stage of life.
5. It has also been averred in the plaint that since the year 1867, Nestlé has
diversified into a large range of businesses including infant foods and
dietetic products, milk and dairy products, breakfast cereals, desserts,
snacks, ice creams, chocolate, confectionery, bouillon's soups, seasonings,
prepared dishes, canned food, pasta, sauces, yogurts, frozen foods, soluble
coffee, roast & ground coffee, chocolate-based and malted drinks, tea,
fruit juices, cereal drinks, mineral water, pet foods etc.
6. It has further been averred that one of the plaintiffs‟ products sold under
internationally famous trade mark is KITKAT. The said trade mark was
adopted by the predecessor-in-title of the plaintiffs namely, Rowntree
Mackintosh of U.K. in the year 1935 and has been extensively and
commercially used since 1937 and advertised in international markets in
several countries in relation to "crisp wafer fingers covered with milk
chocolate" (hereinafter referred to as "wafer bar").
7. In the plaint it has also been averred that the international goodwill and
reputation that has been acquired by the trade mark KITKAT is evident
from the fact that for the year 2002 alone, the sales of KITKAT wafer
bars by the Company amounted to 150,000 tons for a Net Profit of Sales
of 1 billion Swiss Francs. Yearly worldwide consumption of KITKAT
wafer bars is approximately 4.7 billion, being equivalent to 150 KITKAT
wafer bars eaten every second. In 1987 itself, it was estimated that 30
million KITKAT wafer bars were sold in 100 countries every week. In
2004 sales amounted to more than £ 170 million. In 2005, there were
over 800 million 2 finger KITKAT bars sold in the UK i.e. over 2 million
bars everyday.
8. It has also been averred that according to the book "SUPERBRANDS -
An insight into 100 of Britain's strongest brands", KITKAT is estimated
to be worth over £220 million and is sold in more than 100 countries
around the world from Iceland to the Far East. The achievements of the
brand are as under:
In 1999, KITKAT chalked up its 14th consecutive year as the UK‟s
best-selling confectionery brand with sales of over £225 million
and volume sales of four-finger KITKAT up by 7% compared with
the previous year. KITKAT continues to be the UK‟s best selling
confectionery brands;
KITKAT has won numerous awards for advertising creativity and
marketing effectiveness including silver awards at the Cannes
International Advertising Festival in 1991 and 1992;
KITKAT was awarded Gold in the "1993 Epica Awards" and
Grand Prix in the "1990 Eurobest Competition";
In 1995, KITKAT won Gold with its Burger King promotion in the
ISP Promotional Awards;
In 2005, there were over 800 million 2 finger KITKAT bars sold in
the UK i.e. over 2 million everyday;
In 2006, KITKAT bagged the platinum award at the marketing
effectiveness awards. The Judge rated it as Asia‟s most effective
piece of marketing in 2005;
In a sponsorship deal with Nestlé Rowntree, York City Football
Club‟s ground has been renamed as KITKAT crescent.
The book "SUPERBRANDS" also gives an insight into the creation of the
brand KITKAT and its red and white logo.
9. The plaint also discloses that the trade mark KITKAT is a coined mark
which has no meaning whatsoever either in any dictionary or in common
parlance. The said trade mark, therefore, always conveyed one and only
one meaning, i.e., a brand indicating a connection in the course of trade
between the product bearing the brand and its proprietor - origin
associated with the plaintiffs.
10. It has also been averred in the plaint that KITKAT first appeared on
television in 1957 with the theme "Have a Break - Have a KITKAT".
Over 50 different kinds of television commercials have appeared for the
brand since the first broadcast in the year 1957 till 1998. Further, with
huge advertising and sales promotion, the sales of KITKAT also
increased dramatically. For 14 consecutive years, from 1985 till 1999,
KITKAT was the largest and best selling confectionery brand in UK and
still continues to maintain its position till date.
11. Further, it has been averred in the plaint that from its introduction, the
plaintiffs‟ KITKAT was sold practically all over the world. Therefore, it
is not surprising that the plaintiffs‟ predecessors applied for protection of
its rights in various countries all over the world by registering it, with the
appropriate authorities. Some of the oldest registrations for KITKAT
(other than that for India, which were secured way back in the year 1942),
are mentioned as below:-
Country Registration No. Year of
Registration
Australia A-484081 26.11.1940
Hong Kong 19501355 21.8.1950
Ireland 52188 6.8.1937
Kenya 7562 19.11.1956
Nigeria 16340 10.02.1965
Singapore 406169 02.04.1940
South Africa 284757 13.9.1957
South West Africa 428258 22.4.1958
(erstwhile Namibia)
United Kingdom 842542 05.12.1962
KITKAT is registered in close to 150 countries worldwide. It is but
obvious, that the appropriate trade mark authorities have considered the
mark to be distinctive and thus, capable of being registered. Moreover, the
plaintiffs and its predecessors have fiercely protected the KITKAT trade
marks by ensuring that the same are renewed on a regular basis and are
valid and subsisting. Protection List showing worldwide registration has
been filed.
12. The plaint also discloses that KITKAT wafers were always available in
India by way of import from 1940s onwards from Rowntree, U.K as well
as through the grey channel. The market created by KITKAT wafers in
India in the early 1940s, led to Rowntree, U.K. applying for registration of
the trade mark KITKAT in India. The trade mark KITKAT has been
registered in India since 1942 in respect of chocolate, confectioneries,
chocolate biscuits, etc. under trade mark registration No. 8982 in class
`30‟. There are various registrations in favour of the plaintiff no.1 with
respect to the trade mark KITKAT, however, the plaintiffs have relied
upon the following trade mark registrations. The details whereof are
mentioned as below:
Sl. Trademark Registration Class Goods Renewal
No. No. & date status
1. KITKAT 8982 30 Cocoa, 1.12.2016
1.12.1942 chocolates,
confectionery,
chocolate
biscuits
2. 899449 30 Cocoa and 24.01.2020
24.01.2000 preparations
having a base of
cocoa,
chocolate,
chocolates,
confectionery,
sweets, candies,
sugar etc.
3. 899450 30 Cocoa and 24.01.2020
24.01.2000 preparations
having a base of
cocoa,
chocolate,
chocolate,
confectionery,
sweets, candies,
sugar, etc.
4. 899451 30 Cocoa, and 24.01.2020
24.01.2000 preparations
having a base of
cocoa,
chocolate,
chocolates,
confectionery,
sweets, candies
etc.
5. 1171579 30 Preparations 04.02.2013
04.02.2003 having a base of
cocoa,
chocolate,
chocolate
products,
confectionery,
sweets; sugar;
candies, toffees,
etc.
The abovementioned registrations are valid and subsisting and thus, being
the registered proprietor of the trade mark KITKAT, the plaintiff no. 1
has a statutory right of exclusive use thereof under the provision of
Section 28(1) of The Trade Marks Act, 1999, (hereinafter referred to as "
the Act") including having right to obtain relief against infringement
thereof.
13. It has further been averred in the plaint that the goodwill and reputation
possessed by the trade mark KITKAT in India can be gauged from the
fact that its local manufacture in India was commenced in the year 1995
through plaintiff no.2 "Nestlé India Ltd" and the sale of locally
manufactured KITKAT in the year 1995 itself was in the range of Rs. 17
Crores. The publicity and advertisement expenses incurred by Nestlé
India Limited, for the period August, 1995 to December 1995 was Rupees
3 crores. The sales of KITKAT between 1982 and 1989 in India are as
follows. That even prior to its being manufactured locally in India in
1995, KITKAT wafer bars were being sold throughout the world
including India for past several decades. These figures relate to export
from plaintiffs‟ predecessor in business to India and do not account for the
grey market channel:-
EXPORT TO INDIA - 1982-1989
YEAR TONNES
1982 0.1
1983 0.3
1984 0.2
1985 1.8
1986 1.2
1987 1.1
1988 3.2
1989 4.0
14. The sales and promotional figures pertaining to sales of KITKAT in India
by plaintiff no.2 "Nestle India Limited", the licensee of plaintiff no.1 are
as follows:
SALES & PROMOTIONAL FIGURES OF KITKAT IN INDIA
YEAR SALES PROMOTIONAL
(RS. CRORES) FIGURE
(RS. CRORES)
15. It has also been averred in the plaint that the plaintiff no.2 has been
extensively advertising the trade mark KITKAT in India through various
media including television commercials, newspapers, magazines,
hoardings, sponsorships of events, business, etc. at huge advertising and
sales promotional cost. Thus on account of prior adoption, continuous and
genuine substantial commercial use, extensive and intense advertising
campaign, nationwide marketing network, enormous sales and
painstaking quality control, the trade mark KITKAT has come about to
acquire enviable goodwill and reputation amongst the members of the
public and the trade, becoming a "well known household brand" in India.
In fact, the trade mark KITKAT has been recognized and included in the
list of well-known trade marks by the Trade Mark Registry. Printout from
the website of the Trade Marks Registry has been filed.
16. The plaint also discloses that KITKAT has always been marketed by the
plaintiffs as well as its licensee all over the world including India in an
unique and distinct trade dress/get up and logo comprising a predominant
colour combination of red and white. The characteristic features of the
plaintiffs KITKAT packaging are as follows:
a) a bright red packaging;
b) the mark KITKAT written in a stylized manner, with the letters
„K‟ represented in capital letters and the suffixes "it" and "at"
represented in small letters;
c) the trade mark KITKAT is represented in red colour along with a
thin white line appearing within each letter creating a three
dimensional shadow effect against white background;
The trade mark KITKAT appears within a white oval device
having a red border with white outline contiguous thereto,
hereinafter referred to as „logo‟. An illustration of plaintiffs‟
KITKAT logo is represented hereunder:
The „logo‟ including the distinctive red and white colour combination and
get up of KITKAT has acquired distinctiveness indicating trade origin of
source as trade mark of the plaintiffs. The KITKAT/ KITKAT logo has
been used and advertised consistently, extensively and continuously in
over 150 countries including India in its distinctive trade dress of red and
white. The plaintiffs launched extensive advertising and promotional
campaigns incurring huge expenses over past several decades so as to
strengthen the impression of KITKAT/ KITKAT logo and its association
with the plaintiffs‟ business in the minds of consumers at large.
17. It has further been averred in the plaint that the KITKAT logo and colour
combination of red and white constitutes key, essential and distinguishing
visual features of plaintiffs‟ trade mark KITKAT and the same constitute
original "artistic work" within the meaning of Section 2(c) of The
Copyright Act, 1957. The said artistic work was designed at instance of
the plaintiffs through an advertising agency engaged by the plaintiffs for
consideration paid. The plaintiffs are, therefore, the owners of copyright
in KITKAT logo, thereby having an exclusive statutory right to use or
reproduce it in any material form under the provision of Section 14 of The
Copyright Act, 1957. The copyright in KITKAT logo is protected in
India by virtue of the International Copyright Order, 1958 as well as the
subsequent International Copyright Order, 1991 which have been issued
by the Government of India exercising its powers conferred under Section
40 of The Copyright Act, 1957. By virtue of the said order and on account
of Switzerland being signatory to the "Berne Convention" and the
"Universal Copyright Convention", the copyright in KITKAT logo is
protected in India in favour of plaintiffs. The use, reproduction or
colourable imitation thereof by any unauthorized person amounts to
infringement of copyright of the plaintiffs under the provisions of Section
51 of The Copyright Act which is liable to be injuncted under Section 55
and also constitutes a cognizable offence under Sections 63 and 64 of the
said Act, punishable with imprisonment upto 3 years and penalty upto Rs.
2 lakhs.
18. It has also been averred in the plaint that the defendant no. 1, Mr. Montu
Sadhu is trading as M/s Montu Confectionery i.e. defendant no.2 and is
the owner of the same, the defendant no.3 Mrs. Putul Sadhu is the wife of
the defendant no.1 and is trading as M/s Putul Trading Company, the
defendant no.4 herein. The trading address of all the defendants are same,
located at C-16, Near Subhas Sammilani Club, Old Naba Naritala, P.O.
Buxaroh, Howraha-711110. The defendants are involved in
manufacturing and selling substandard and spurious confectionery
including candies, toffees etc. under the impugned trade
marks KETKET & KIT-KET and their packaging to the consumers at
large. The impugned trade marks KETKET & KIT-KET and their
packaging are outright and fraudulent imitations of plaintiffs‟ trade mark
KITKAT and its packaging.
19. Further, it has been averred in the plaint that it came to the knowledge of
the plaintiffs in the first week of December, 2012, through their field force
that the defendants are selling confectionery under the impugned trade
marks KETKET & KIT-KET in the packaging which are slavish and
colourable imitation of plaintiffs‟ trade mark KITKAT and its packaging.
20. It is also stated in the plaint that the plaintiff no. 2 engaged the services of
a professional investigator namely, Mr. Rakesh Kumar Sharma and
entrusted him with the task of finding out the details of the manufacturers,
sellers and distributors/dealers of spurious confectioneries, details of the
persons involved and their complete names and addresses since the details
were not specified on the impugned KETKET & KIT-KET packaging.
Mr. Sharma carried out a detailed investigation and submitted his report to
the plaintiff no.2 vide investigation report dated 14.12.2012. From the
investigation report, the plaintiffs came to know about the defendants‟
role of manufacturing, distributing, selling and dealing in the impugned
products under the impugned trade marks KETKET & KIT-KET and
their packaging and confirmation of their addresses. The details of the
defendants and their role are given in the investigation report dated
14.12.2012. The same has been filed.
21. It has also been averred in the plaint that the perusal of the defendants‟
confectionery, toffees, chocolates, candies packaging as depicted herein
below clearly establishes the fraudulent conduct and malafide of the
defendants:
i) The defendants have adopted the trade marks KETKET &
KIT-KET for their candies/toffees which are an outright
imitation of plaintiffs‟ well-known trade mark KITKAT.
The impugned marks KETKET & KIT-KET are
structurally as well as phonetically deceptively similar to the
plaintiffs‟ trade mark KITKAT;
ii) The defendants have further deliberately imitated the
distinctive KITKAT logo and have written KETKET &
KIT-KET in an identical manner within a white oval device
having a red border with white outline contiguous thereto;
22. It has further been averred in the plaint that the impugned trade marks
KETKET & KIT-KET and the packaging pertaining thereto by the
defendants, in relation to the aforementioned goods, amounts to
misrepresentation and misappropriation of plaintiffs‟ goodwill in the trade
mark KITKAT and its packaging. Such act constitutes unfair
competition and dilution. The sales of infringing goods by the defendants
are also acts of "misbranding" and sale of "spurious goods" are also
violations under the provisions of „The Prevention of Food Adulteration
Act, 1954‟.
23. Further it has been averred in the plaint that the defendants are actually
committing multiple offences and a fraud upon members of purchasing
public. Considering that the goods in question are edible articles having
direct bearing on the health of the consumers and the fact that such goods
are manufactured and marketed without any quality control or mechanism
to maintain quality or safety or hygiene of the products, the defendants are
conspiring and abetting sale of adulterated confectionery in infringing
trade marks KETKET & KIT-KET and their packaging. The defendants
are enabling other dishonest retailers to make further misrepresentation to
consumers, about the source and origin of such goods by deliberately
using trade marks KETKET & KIT-KET and their packaging which are
phonetically, structurally and visually deceptively similar to the plaintiffs‟
well-known trade mark KITKAT and its packaging.
24. Reading of the plaint also shows that the trade mark KITKAT is
registered under The Trade Marks Act, 1999. The use of the impugned
trade marks KETKET & KIT-KET and their packaging by the
defendants, which are phonetically, structurally and visually deceptively
similar with the trade mark KITKAT of the plaintiffs, constitutes
infringement of plaintiffs‟ registered trade mark. As per search taken of
the Trade Marks Register, the impugned trade marks KETKET & KIT-
KET are not registered trade marks in favour of the defendants. The
defendants are hence guilty of infringing plaintiffs‟ statutory right of
exclusive use of the trade mark KITKAT. The trade mark KITKAT
enjoys immense goodwill and reputation and such damage to the goodwill
and reputation of the brand KITKAT of the plaintiffs, unless injuncted
immediately, will be irreparable, colossal and beyond any monetary
compensation.
25. It has also been averred in the plaint that the use by the defendants of the
trade marks KETKET and/or KIT-KET is absolutely illegal and is
detrimental to the rights of the plaintiffs. The trade mark KITKAT is
exclusively associated with the plaintiffs and the use by the defendants
thereof and their colourable imitation would result in diminution and
whittling away of the value of the plaintiffs‟ trade marks. The public is
also likely to make a connection between the goods and business of the
defendants and the plaintiffs. This would result in „Dilution by Blurring‟
and also constitutes "infringement" of plaintiffs‟ registered trade mark.
The use of the impugned trade marks KETKET and/or KIT-KET and
their packaging by the defendants which have overall deceptive similarity
with the plaintiffs‟ trade mark KITKAT and its packaging, is deliberate,
calculated and designed to confuse the consumers, particularly, the semi
literate or illiterate ones predominantly children.
26. It has further been averred in the plaint that the defendants are causing
irreparable damage and injury to the plaintiffs on account of their illegal
trade activities, which is beyond quantification or compensation. The
plaintiffs believe that they are entitled to compensatory as well as penal
damages calculated to be at least Rupees 20 lakhs which must be paid by
the defendants.
27. I have heard counsel for the Plaintiffs and carefully perused the
documents which have been placed on record along with the plaint duly
supported by affidavit which has been treated as affidavit by way of
evidence on the averment of the counsel for the plaintiffs. The evidence of
plaintiffs has gone unchallenged and unrebutted. Trademark registration
certificates of the trademark "KITKAT" in favor of plaintiffs have been
filed along with the plaint. Protection List showing worldwide registration
of the trademark "KITKAT" in favor of plaintiffs has been filed.
Wrappers of the products of plaintiffs and defendants have been filed
along with the plaint.
28. In compliance to the Order dated 19.12.2012 a local commissioner visited
the premises of the defendants. On checking the premises local
commissioner found 22,000 rectangular wrappers of Re. 1 chocolate,
6,000 rectangular wrappers of Rs. 2 chocolate, 19,000 square wrappers of
Re. 1 chocolate, 1000 small wrappers of 50 paisa chocolate, 480 pieces of
Re. 1 KETKET toffee, 48 pieces of Rs. 2 KETKET toffee, 288 pieces of
KETKET "NOW BIG" pickets, 48 pieces of 50 paise KETKET chocolate,
120 pieces of Rs.2 KETKET and 24 pieces of KETKET chocolate in blue
packaging.
29. On the basis of the documents placed on record, the plaintiffs have
established that plaintiff no. 1 is the owner of the trademark "KITKAT"
and the plaintiffs have the exclusive right to use the same. Plaintiffs have
also established that the KITKAT logo and colour combination of red
and white constitutes key, essential and distinguishing visual features of
plaintiffs‟ trade mark KITKAT and the same constitute original "artistic
work" within the meaning of Section 2(c) of The Copyright Act, 1957 and
the plaintiffs are the owners of copyright in KITKAT logo, thereby
having an exclusive statutory right to use or reproduce it in any material
form. Plaintiffs have also established that on account of prior adoption,
continuous and genuine substantial commercial use, extensive and intense
advertising campaign, nationwide marketing network, enormous sales and
painstaking quality control, the trade mark KITKAT has come about to
acquire unparallel goodwill and reputation amongst the members of the
public and the trade, becoming a "well known household brand" in India.
Plaintiffs have also established that the trade mark KITKAT used for
wafer bars is highly distinctive and is identified with plaintiffs only.
Plaintiffs have also established that the defendants by using the trademark
KETKET & KIT-KET and the packaging, which is identical and/or
deceptively similar to plaintiffs‟ mark KITKAT and the logo, in respect
of candies, toffees etc, are causing infringement of rights in the trademark
and copyright of the plaintiffs.
30. In Corn Products Refining Co. v. Shangrila Food Products Ltd.
reported at 1960 (1) SCR 968, the Supreme Court observed that the
question whether two competing marks are so similar as to be likely to
deceive or cause confusion is one of first impression and it is for the court
to decide it. The question has to be approached from the point of view of a
man of average intelligence and imperfect recollection.
31. 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."
32. 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 Pionotist case, 1906
(23) RPC 774, in the following words:
"You must take the two words. You must judge of them, both by
their look and 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 buy 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 and 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."
33. In a very 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]
34. I am of the view that the impugned trademark of the defendants is
deceptively similar to the plaintiffs‟ trademark. The use of the words
KETKET & KIT-KET by the defendants is likely to dilute the
distinctive character of the plaintiffs‟ trademark KITKAT 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
defendants in relation to identical products amounts to an infringement of
the plaintiffs‟ statutory rights in the registered trademark KITKAT. I am
of the opinion that the defendants are also guilty of passing off as by using
an deceptively similar mark as that of the plaintiffs, the defendants are
misrepresenting to the purchasing public that it is selling its goods in
association with/in connection with the plaintiffs and thus causing
confusion as to the source of the goods and passing off his goods as that
of the plaintiffs. Furthermore, the defendants 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.
35. The plaintiffs have also claimed compensatory and penal damages on
account of illegal profits earned by the defendants. However, plaintiffs
have limited their claim to punitive damages.
36. 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.
37. 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.
38. In the case of Time Incorporated v. Lokesh Srivastava and Anr reported
at 2005 (30) PTC 3 (Del), apart from compensatory damages of Rs.5
lakhs, punitive damages were also been awarded.
39. I am in agreement with the aforesaid submission of learned counsel for
the plaintiff 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. Any
view to the contrary would result in a situation where a defendant who
appears in Court and submits its account books would be liable for
damages, while another defendant who, chooses to stay away from court
proceedings would escape the liability on account of failure of the
availability of account books. A party who chooses not to participate in
court proceedings and stays away must, thus, suffer the consequences of
damages as stated and set out by the plaintiffs. There is a larger public
purpose involved to discourage such parties from indulging in such acts of
deception and, thus, even if the same has a punitive element, it must be
granted. R.C. Chopra, J. has very succinctly set out in Time
Incorporated's case (supra) that punitive damages are founded on the
philosophy of corrective justice.
40. 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 19.12.2012
is confirmed and the suit is decreed in favour of the plaintiffs and against
the defendants. Plaintiffs are also entitled to damages to the tune of
Rs.5.00 lacs.
41. Decree sheet be drawn up accordingly.
(G.S.SISTANI)
JUDGE
JULY 04, 2014
msr
