Cisco Technology, Inc. vs Santosh Tantia & Ors.
2014 Latest Caselaw 2778 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                      Judgment delivered on: May 29, 2014

+                         CS (OS) No. 1389/2008

       CISCO TECHNOLOGY, INC.                  ...Plaintiff
                    Through   Mr.Nishchal Anand, Adv.

                          versus

       SANTOSH TANTIA & ORS                              ...Defendants
                    Through             Defendants already ex parte.

       CORAM:
       HON'BLE MR. JUSTICE MANMOHAN SINGH

MANMOHAN SINGH, J. (ORAL)

1. The present suit has been filed by the plaintiff for permanent injunction, restraining infringement of trademark, passing off, damages, rendition of accounts of profits, delivery up etc. against the defendants.

2. The brief facts are that the plaintiff is a company registered under the laws of USA having its registered corporate office at 170 West Tasman Drive, San Jose, California 95134 USA. It has been stated that the plaintiff and its group companies are the leading worldwide providers of networking solutions. Cisco has, since 1984, been a world leader in the development and manufacture of routers and switches, that is to say, computer hardware components using which computers network between each other, and which, in particular, regulate and control data exchange on the internet.

3. The trademarks CISCO and the Bridge Device (hereinafter referred to as the "said trademarks") were adopted by the plaintiff in the year 1984 and have been in use continuously and extensively since 1984, although in January, 2007, Cisco introduced a new version of the "Bridge Device"

trademark and is in course of slowly phasing out the version of the "Bridge Device" trademark.

4. The plaintiff claims to be the owner of the said trademarks worldwide and contends that trademarks CISCO is an invented trademark and is capable of the highest degree of protection.

5. It is alleged by the plaintiff that they have been leaders in the development of Internet Protocol (IP) based networking technologies. Today, networks are an essential part of business, education, government and home communications, and Cisco's IP based networking solutions are the foundation of these networks.

6. The said trademarks CISCO and the Bridge Device appear on all Cisco products, the sales of which run into several billion US dollars annually. The said trademarks are also advertised globally and are well known. The details of the global annual sales of the products bearing the said trademarks is given in para 7 of the plaint, of which net sales for the period ending July, 2005 are stated to be US$ 24.801 billion.

7. The products bearing the said trademarks are contented to have been sold in India for several years. The plaintiff set up their group company in India in 1995 to provide research and development and marketing support.

8. It has been stated that the products bearing the said trademarks have been advertised in India for several years and the general public in India, particularly those involved in the field of Information Technology, is well aware of the reputation of the said trademarks. The details of the annual sales of the products bearing the said trademarks with respect to India is given in para 8 of the plaint, of which net sales for the period 2004-2005 are stated to be US$ 292.5 million.

9. The annual expenses of advertising and promoting products bearing the said trademarks, the details of the same are given in para 9 of the plaint,

of which said expenses of the period ending July 2005 are stated to be US$ 4,721 million.

10. Apart from the rights in common law that have accrued to the plaintiff in favour of the trademarks, the plaintiff is the registered proprietor of the various trademarks in India details of which are given in para 11 of the plaint. Out of these trademark CISCO has been registered bearing registration No. 1227393 in class 16 and bearing registration No. 122731 in class 9 both since 27th August, 2003; the trademark CISCO SYSTEMS has been registered bearing registration No. 690651 in class 9 both since 14th December, 1995.

11. The plaintiff is also the registered proprietor of the trademark in class 9 in several countries worldwide including but not limited to the following countries:

Australia, Benclux, Canada, Chilc, China, Columbia, Costa Rica, The Czech Republic, The European community, Germany, Hong Kong, Israel, Italy, Japan, South Korea, Malaysia, Mexico, New Zealand, Panama, Peru, Philippines, Poland, Romania, Russia, Saudi Arabia, Switzerland, Turkey, United States of America, United Kingdom and Vietnam.

12. Ex parte evidence by way of affidavit of Ms. Jennifer Louis (PW-1) has been produced by the plaintiff.

13. It has been deposed in the affidavit that the said trademarks were adopted in the year 1984 and have continuously and extensively been in use since.

13.1. It has been stated that Plaintiff's trade name and the trademark are synonymous with the Internet and networking as well as with the productivity improvements that Cisco's Internet business solutions provide. Cisco's hardware, software, and service offerings are used to create

networking solutions by for companies involved in nearly all fields of business activity.

13.2. The Plaintiff has invested greatly in advertising its products bearing the trademarks and has been rewarded by sales running into several Billion dollars annually. The Plaintiff Company has established its trademarks to be well-known marks in India, falling under the definition of a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999. In fact, "CISCO" was ranked 13th in the category of 'Best Global Brands' by Interbrand for the year 2013.

14. It is specifically mentioned by the plaintiff that the Defendant Nos. 1 and 2 are engaged in, inter alia, in the sale, purchase, import, marketing and trading of used, new and refurbished systems hardware including but not limited to switches, routers and networking cards bearing the trademarks of the Plaintiff. The Defendants are offering for sale and selling networking products that bear the trademarks of the Plaintiff but such products do not originate from Cisco thereby infringing the Plaintiff's statutory rights recognized under the Trade Marks Act as well as their common law rights by passing-off their goods as that of the Plaintiffs. Defendants mix genuine products with counterfeit products.

15. The Plaintiff conducted an investigation into the activities of the Defendants and during such investigation purchased a WIC 1T Card (a networking card) from the Defendants that avowedly originated from Cisco. The Investigator sent the product purchased from the Defendants to the Plaintiff's representatives for examination. On an inspection of the product, which is a WIC-1T Interface Card bearing Serial Number 34221067 the Plaintiff was shocked to learn that the said product was a counterfeit product. The Report prepared by the Plaintiffs representative has been placed on record.

16. On 24th July, 2008, this Court granted an ex parte ad interim injunction restraining the Defendants, their employees, servants, agents, partners/proprietors, officers, associates, sister concerns, etc. from infringing the Plaintiff's trademark rights till further orders. The Defendants were proceeded ex parte vide an order dated 1st October 2008 and the interim injunction was made absolute.

17. Vide the order dated 24th July, 2008, this appointed a local commissioner to visit and search the premises of the Defendants for any infringing goods and seize the same. The local commissioner visited the premises of the Defendants on 25th July, 2014 along with the Plaintiff's representatives and was successful in seizing counterfeit goods bearing the Plaintiff's registered trademarks.

18. The case of the plaintiff is that the products being sold by the Defendants under the Plaintiff's trademarks CISCO and the BRIDGE DEVICE neither originate from Cisco nor have they been manufactured under the consent or license of Cisco and hence, the Defendants are guilty of misrepresentations and passing off such products as having originated from Cisco.

18.1. The unauthorized use of the trademark CISCO by the Defendants also amounts to infringement of the Plaintiff's trademark registration Nos. 1227393 in class 16 and 1227391 in Class 9 for the trademark CISCO and trademark registration Nos. 690651 and 1267035 in Class 9 for the trademark CISCO SYSTEMS.

18.2. Due to the high quality of Cisco products and the stringent testing that they go through before making it to market, Cisco products are used in mission-critical networks such as hospitals, air traffic control systems, military organizations and national security networks. Counterfeit products tend to be untested and of a lesser quality, thereby making them more prone

to failure. Allowing counterfeit products into critical network infrastructure places that infrastructure at a greater risk of failure e.g. from an electrical surge in untested poor quality products and causing network downtime. Whatever the failure, the resulting loss to the network can potentially have catastrophic effects on the public at large.

18.3. Such acts of the Defendants are not only capable of causing consumers dissatisfaction and grave threat to life but also erode the goodwill and reputation of the Plaintiffs' trademark CISCO and the BRIDGE DEVICE amounting to passing off of their goods as that of the Plaintiff. The acts of the Defendants also lead to huge losses to not only the Plaintiff but also the authorized channels of trade including the distributors and vendors who are authorized to sell genuine Cisco products by the Plaintiff.

19. It is the case of the plaintiff before this court that the trade mark CISCO is a well-known trade mark within the meaning of Section 2(1)(zg) of the Act. The plaintiff has filed the copies of the registration certificate, invoices and recognition of the trade mark in many countries of the world including India.

20. The aspect of determination of well-known trade mark has been considered by this Court in some recent cases. In the case of Bloomberg Finance LP vs. Prafull Saklecha & Ors. 2013 (56) PTC 243 (Del), it was observed in Para 31-44, 48-51 that:

"31. As regards infringement, Section 29 of the TM Act 1999 sets out the different situations in which infringement of a registered mark can result. Section 29 of the TM Act 1999 reads as under:

29. Infringement of registered trademarks. (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the

trade mark in relation to goods or services respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-

(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.

(6) For the purposes of this section, a person uses a registered mark, if, in particular, he-

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trademark on business papers or in advertising.

(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee. (8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-

(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

(b) is detrimental to its distinctive character; or

(c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly."

32. Section 29 of the TM Act contemplates the owner/proprietor of the registered trade mark alleging infringement of the said mark by another person who is neither a registered proprietor in relation to the goods and services for which the mark is registered, nor has permission to use such mark in the course of his trade. Under Section 29(1)infringement results if the mark is "identical with or deceptively similar to" the registered trade mark and is in relation to the goods and services for which the trademark has been registered. The use of infringing or impugned mark must render it "likely to be taken as being used as a trade mark".

33. Under Section 29(2)(a) infringement occurs where the impugned mark is identical with the registered trademark and the goods or service for which the impugned mark is being used is similar to the goods and services covered by the registered mark. Under Section 29(2)(b) infringement occurs where the impugned mark is similar to the registered mark and the goods and the services for which is used is identical with or similar to the goods and services for which the registered mark is used. Under Section 29(2)(c) infringement occurs where the impugned trade mark is identical to the registered trade mark and the goods or services for which the impugned mark is used is also identical to the goods/services covered by the registered trade mark.

34. An additional requirement in the above three situations for infringement to result is that the use of the impugned trademark "is likely to cause confusion on the part of the public" or "is likely to have an association with the registered trade mark". Under Section 29(3) when the impugned trademark is identical to the registered trademark and the goods/services for which it is used are also identical to the goods or services for which the registration has been granted then "the Court shall presume that it is likely to cause confusion on the part of the public".

35. Therefore, under Section 29(1), (2) and (3) for infringement to result (i) the impugned mark has to be either similar to or identical with the registered mark and (ii) the goods or services for which the impugned mark is sued has to also either be identical with or similar to the goods or services for which registration has been granted. The scenario is different as regards Section 29(4) of the TM Act 1999. For infringement to result under Section 29(4), the following conditions are required to be fulfilled:

(i) the person using the impugned mark is neither a registered proprietor in relation to the goods and services for which the mark is registered nor is using it by way of permitted use

(ii) the impugned mark must be used in the course of trade

(ii) the impugned mark has to be either similar to or identical with the registered mark

(iii) the impugned mark is used for goods or services different from those for which registration has been granted;

(iv) the registered trade mark has a reputation in India;

(iv) the use of the impugned mark is without due cause, and takes unfair advantage of or is detrimental to,

(a) the distinctive character of the registered trade mark; or

(b) the reputation of the registered trade mark.

36. The expression 'mark' has been defined in Section 2(m) of the TM Act to include "a device brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination there of."(emphasis supplied) Therefore, for the purpose of Section 29(4), the use of a mark as part of a corporate name would also attract infringement. In other word's, if the registered mark is used by a person, who is not the registered proprietor of such mark or a permitted user, as part of the corporate name under which he trades then also infringement would also result. What is however important is that the registered trade mark must be shown to have a reputation in India and should be shown to have been used by the infringer 'without due cause". Further, it should be shown that such adoption or use has resulted in the infringer taking unfair advantage of the registered mark or is detrimental to the distinctive character or repute of the registered trade mark.

37. Section 29(4) is also distinct from Section 29(1) to (3) of the TM Act in another important aspect. The element of having to demonstrate the likelihood of confusion is absent. Perhaps to balance out this element, the legislature has mandated the necessity of showing that (a) the mark has a reputation in India (b) that the mark has a distinctive character (c) the use by the infringer is without due cause. In other words, the legislative intent is to afford

a stronger protection to a mark that has a reputation without the registered proprietor of such mark having to demonstrate the likelihood of confusion arising from the use of an identical or similar mark in relation to dissimilar goods and services. The words 'detriment' in the context of the 'distinctive character' of the mark brings in the concept of 'dilution' and 'blurring'. In the context of 'repute' they are also relatable to the concept of 'tarnishment' and 'degradation'. The words "takes 'unfair advantage" refers to 'free- riding' on the goodwill attached to mark which enjoys a reputation. The disjunctive 'or' between the words 'distinctive character' and 'repute' is designedly inserted to cater to a situation where a mark may not have a distinctive character and yet may have a reputation.

38. Section 2(zg) of the TM Act defines a 'well known trade mark' in relation to any goods or services to mean 'a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or service would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.' Under Section 11(9)(i) and

(v), for the purposes of registration of a well-known mark it is not necessary for such mark to have been used in India or be well- known to the public at large in India. It must be well known to a substantial segment of the relevant public.

39. It may not be necessary for the proprietor of a registered mark to show that it is a 'well-known trademark' as defined in Section 2(zg) although if in fact it is, it makes it easier to satisfy the 'reputation' requirement of Section29(4) of the TM Act. The presumption of distinctiveness attached to a registered mark is a rebuttable one. At the interim stage, either of these elements should be shown prima facie to exist. Whether in fact these elements are satisfied would depend on the evidence led by the parties at trial.

40. It may be noticed at this stage that even prior to the TM Act 1999 the Supreme Court in N.R. Dongre v. Whirlpool Corporation 1996 PTC (16) recognised the concept of cross-border reputation when it upheld the decision of the Division Bench of this Court which granted a temporary injunction in favour of a Plaintiff based abroad. The Division Bench of this Court followed the decision in Apple Computer Inc. vs. Apple Leasing & Industries 1992 (1) ALR

93, and held that it was not necessary to insist that a particular plaintiff must carry on business in a jurisdiction before improper use of its name or mark can be restrained by the court. The main consideration was "the likelihood of confusion and consequential injury to the plaintiff and the need to protect the public from deception. Where such confusion is prima facie shown to exist, protection should be given by courts to the name or mark".

41. Turning to Section 29(5) of the TM Act 1999, it is seen that it relates to a situation where (i) the infringer uses the registered trademark "as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern" and (ii) the business concern or trade is in the same goods or services in respect of which the trade mark is registered. If the owner/proprietor of the registered trade mark is able to show that both the above elements exist then an injunction restraining order the infringer should straightway follow. This is in the nature of a per se or a 'no-fault' provision which offers a higher degree of protection where both the above elements are shown to exist. For the purpose of Section 29(5) of the TM Act 1999, there is no requirement to show that the mark has a distinctive character or that any confusion is likely to result from the use by the infringer of the registered mark as part of its trade name or name of the business concern.

42. However, in a situation where the first element is present and not the second then obviously the requirement of Section 29(5) is not fulfilled. The question is whether in such a situation the owner or proprietor of the registered trade mark is precluded from seeking a remedy under Section 29(4) of TM Act, 1999 if the conditions attached to Section 29(4) are fulfilled.

43. In the considered view of this Court, given the object and purpose of Section 29(1) to (4), Section 29(5)cannot be intended to be exhaustive of all situations of uses of the registered mark as part of the corporate name. Section 29(5) cannot be said to render Section 29(4) of the TM Act, 1999 otiose. In other words, the legislature may not be said to have intended not to provide a remedy where the registered trade mark is used as part of the corporate name but the business of the infringer is in goods or services other than those for which the mark is registered.

44. The Statement of Objects and Reasons of the TM Act 1999 explain that sub-section (5) of Section 29 "seeks to prevent a person from adopting someone else's trade mark as part of that person's trade name or business name by explicitly providing that such action shall also constitute an infringement under this Act. This provision will bring this clause in harmony with the proposed amendments to Sections 20 and 22 of the Companies Act, 1956." Sections 20 and 22 of the CA have been amended to provide that where the name of a company resembles a registered trade mark, then the registration of the company in that name can be refused. The ROC is expected to gather information from the TM Registry. Under Section 22(5) of the CA, the owner of the registered trade mark can apply to have the name of a company that is purportedly infringing the mark cancelled. All of this only strengthens the conclusion that where Section 29(5) offers a high degree of protection where both the elements envisaged in that provision exist, it is not meant to preclude the owner of a registered mark remediless when only the first and not the second element exists."

"48. In Mahendra & Mahendra Paper Mills Limited v. Mahindra & Mahindra Limited (2002) 2 SCC 147, the case before the Supreme Court pertained to the grant of an injunction against the Defendant using, in any manner, as a part of its corporate name or trading style the words Mahindra & Mahindra or any word(s) deceptively similar to Mahindra or and/or Mahindra & Mahindra so as to pass off or enable others to pass off the business and/or services of the Defendant as those of the Plaintiffs or as emanating from or affiliated or in some way connected with Plaintiffs. The Defendant contended that its products were in no way similar to that of the Plaintiffs and that the business carried on by it did not overlap with the business of any of the companies enlisted by the Plaintiffs. The Supreme Court held that by using the Plaintiffs trademark as a part of its corporate name, the Defendant had committed the fraud of passing off its business and/or services as that of the Plaintiffs.

49. In Kalpataru Properties Private Limited v. Kalpataru Hospitality & Facility Management 2011 (48) PTC 135 (Bom.), the issue was whether an action in passing off was maintainable where the Plaintiff's registered mark was used as part of the Defendant's corporate name and the goods and services dealt with by the parties were in different classes. Following Mahendra and Mahendra, the Court held that a passing off action was maintainable in the case of

a well known mark even if the goods and services being dealt with by the parties are not similar.

50. Recently, in Red Hat Inc. v. Mr. Hemant Gupta 2013 1 AD (Delhi) 130, this Court, while dealing with a case which involved the use of a registered trademark as part of its corporate name by the Defendant, held that the Plaintiff could seek a remedy for an infringement under Section 29(4) as well as Section29(5) of the TM Act 1999.

51. The legal position emerging as a result of the above discussion may be summarised as under:

(a) Section 29(5) of the TM Act 1999 relates to a situation where (i) the infringer uses the registered trademark "as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern" and (ii) the business concern or trade is in the same goods or services in respect of which the trade mark is registered.

(b) This is in the nature of a per se or a 'no-fault' provision which offers a higher degree of protection where both the above elements are shown to exist. If the owner/proprietor of the registered trade mark is able to show that both the above elements exist then an injunction order restraining order the infringer should straightway follow. For the purpose of Section 29(5) of the TM Act 1999 there is no requirement to show that the mark has a distinctive character or that any confusion is likely to result from the use by the infringer of the registered mark as part of its trade name or name of the business concern.

(c) However, in a situation where the first element is present and not the second then obviously the requirement of Section 29(5) is not fulfilled. Where the registered trade mark is used as part of the corporate name but the business of the infringer is in goods or services other than those for which the mark is registered, the owner or proprietor of the registered trade mark is not precluded from seeking a remedy under Section 29(4) of TM Act 1999 if the conditions attached to Section 29(4) are fulfilled.

(d) Given the object and purpose of Section 29(1) to (4), Section 29(5) cannot be intended to be exhaustive of all situations of uses of the registered mark as part of the corporate name. Section 29(5) cannot be said to render Section 29(4) otiose. The purpose of Section 29(5) was to offer a better protection and not to shut the door of Section 29(4) to a registered proprietor who is able

to show that the registered mark enjoying a reputation in India has been used by the infringer as part of his corporate name but his business is in goods and services other than that for which the mark has been registered.

(e) A passing off action is maintainable in the case of a well known mark even if the goods and services being dealt with by the parties are not similar."

21. In another matter of Rolex Sa vs. Alex Jewellery Pvt. Ltd. and Ors. 2009(41) PTC 284 (Del), it was observed as under:

"15. Section 2(4)(c) defines a well known trademark as the one which in relation to any goods, means a mark which has become so to the substantial segment of the public which uses such goods that the use of such mark in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person using the mark in relation to the first mentioned goods. In my view the segment of the public which uses the watches of the category/price range as the watches of the plaintiff, ROLEX is a well known trademark. The said segment of the public if comes across jewellery/artificial jewellery also bearing the trademark ROLEX is likely to believe that the said jewellery has a connection to the plaintiff.

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"

"24. The goods of the plaintiff may lose their sheen to the strata of the society for which they are intended if such strata finds the goods in the same brand name even though not from the house of the plaintiff being available for a much lower price. The goods of the plaintiff would then cease to be a status symbol or a fashion statement. Undoubtedly, the same would be to the detriment of the plaintiff. Having found a prima facie case in favour of the plaintiff and irreparable injury to be caused to the plaintiff by allowing the defendant to continue using the trademark, I also find the element of balance of convenience to be satisfied in the present case. The registration of the mark of the plaintiff is over 90 years prior to the claimed commencement of the use by the defendant. Even if the

defendant, at the time of commencing the use, did not know of the inherent risk in adopting the well known trade mark, the defendant, at least, immediately on applying for registration and on opposition being filed by the plaintiff became aware of the perils in such use. Thus, use by the defendant of the mark is for short time only and use during the period of opposition is of no avail. The mark has got no relation to the jewellery being marketed by the defendants. Unless the defendant is deriving any advantage of the goodwill/brand value of the plaintiff and which it is not entitled to, it ought not to make any difference in the business of the defendants if the said jewellery is sold under a mark other than ROLEX."

22. From the material placed on record, it is evident that the plaintiff has proved its case in view of the statements made in the plaint. The evidence of PW 1 has gone unrebutted. Considering the overall facts and circumstances of the case, I am of the considered view that the plaintiff has been able to make out a prima facie strong case for infringement of trade mark CISCO as the said trade mark is a well-known trade mark and is being used by the plaintiff not only in India but in many countries of the world. Therefore, this Court is of the considered view that the plaintiff is entitled for a decree for permanent injunction in terms of prayer (a) of para 27 of the plaint.

23. As far as the reliefs of damage and rendition of account are concerned, the Court has previously granted both exemplary and punitive damages against the Defendants in ex-parte matters of similar nature. In Time Incorporated Vs. Lokesh Srivastava & Anr., 2005 (30) PTC 3 (Del.) while awarding punitive damages of Rs. 5 lakhs in addition to compensatory damages also of Rs. 5 lakhs, Justice R.C. Chopra observed that "time has come when the Courts dealing in actions for infringement of trademarks, copyrights, patents etc., should not only grant compensatory damages but also award punitive damages with a view to discourage and dishearten law breakers who indulge in violation with impunity out of lust for money, so that they realise 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." 23.1. This Court in Microsoft Corporation Vs. Rajendra Pawar & Anr., 2008 (36) PTC 697 (Del.) decided on 27th July, 2007 has held "Perhaps it has now become a trend of sorts, especially in matters pertaining to passing off, for the defending party to evade court proceedings in a systematic attempt to jettison the relief sought by the plaintiff. Such flagrancy of the Defendant's conduct is strictly deprecatory, and those who recklessly indulge in such shenanigans must do so at their peril, for it is now an inherited wisdom that evasion of court proceedings does not de facto tantamount to escape from liability. Judicial process has its own way of bringing to tasks such erring parties whilst at the same time ensuring that the aggrieved party who has knocked the doors of the court in anticipation of justice is afforded with adequate relief, both in law and in equity. It is here that the concept of awarding punitive damages comes into perspective."

23.2. In Microsoft Corporation Vs. Ms. K. Mayuri & Ors., 2007 (35) PTC 415 Del., this Court has held "The practice of grant of exemplary damages needs to be strengthened particularly in those cases where flagrant infringement is found. Such an exercise of power is not to be fettered by any requirement that the plaintiff must show some particular benefit which has accrued to the defendant or that the plaintiff must satisfy the court by leading evidence that he has suffered actual loss. In a case where the plaintiff proves such actual loss, he would be entitled to the same. However, even without such a proof, in case of flagrant infringement, the court has the complete discretion to make such award of damages as may seem appropriate to the circumstances, so that it acts as deterrent. In some cases, it is not possible to prove the actual damages, namely, that there is a normal rate of profit or that there is a normal or establish licensed royalty. Yet, clearly, the damages have to be assessed."

23.3. This Court in The Heels Vs. V.K. Abrol & Anr., CS(OS) 1385/2005 decided on 29th March, 2006 while granting damages has held "This court has taken a view that where a defendant deliberately stays away from the proceedings with the result that an enquiry into the accounts of the

defendant for determination of damages cannot take place, the plaintiff cannot be deprived of the claim for damages as that would amount to a premium on the conduct of such defendant. The result would be that parties who appear before the court and contest the matter would be liable to damages while the parties who choose to stay away from the court after having infringed the right of the plaintiff, would go scotfree. This position cannot be acceptable."

23.4. Relying on the above cited cases this court in the case of Disney Enterprises Inc. v. Mr. Rajesh Bharti & Ors., CS(OS) 1878/2009 decided on 13th February,2013 awarded compensatory damages of Rs. 2,00,000/- and punitive damages of Rs. 3,00,000/- against the Defendants. 23.5. Further, it has been observed in Mathias Vs. Accor Economy Lodging Inc., 347 F. 3d 672 , that one of the functions of punitive damages is to relieve the pressure on an overloaded criminal justice system by providing a civil alternative to criminal prosecution of minor crimes. It was further observed that the award of punitive damages serves the additional purpose of limiting the Defendant's ability to profit from its fraud by escaping detection and prosecution.

24. There are various intellectual property cases wherein this Court has granted damages to the Plaintiffs. The said matters represent various industries ranging from software to automotives, chocolates to pharmaceuticals, stationary to luxury brands, etc. In view of the above mentioned case laws and facts of the present case, the plaintiff is granted damages of Rs. 5 lac against the defendants and the cost of the suit is quantified at a sum of Rs. 20,000/-.

25. The suit of the plaintiff is decreed to the effect that the defendants, their employees, servants, agents, partners/proprietors, directors, officers, associate or sister concerns, marketing officers or any person and/or entity acting under their authority, as the case be, are hereby restrained permanently from manufacturing, selling, offering for sale, manufacturing,

advertising, importing, causing the manufacture, refurbishing, or in any manner dealing with any hardware components, computer or electrical/electronic products bearing the trademark CISCO of the plaintiff or any other trademark/tradename deceptively similar thereto amounting to infringement of the said trademark.

26. Decree be drawn accordingly.

(MANMOHAN SINGH) JUDGE MAY 29, 2014