Delhi High Court
Eicher Motors Limited vs Sanjiv Kumar Khatoi & Anr on 30 January, 2015
Author: Indermeet Kaur
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Judgment:30.01.2015
CS(OS) 214/2011
EICHER MOTORS LIMITED ......Plaintiff
Through: Mr.Sudeep Chaterjee and Ms.Pritika
Sharma, Advocate.
Versus
SANJIV KUMAR KHATOI & ANR. .......Defendants
Through: None.
CORAM:
HON'BLE MS. JUSTICE INDERMEET KAUR
INDERMEET KAUR, J. (oral)
1 The present suit has been filed by the plaintiff Eicher Motors
against the two defendants for infringement of their trademark
ENFIELD, ROYAL ENFIELD and BULLET and infringement of
copyright in the logos and their website, passing off and damages.
2 The plaintiff is a leading automobile manufacturer and selling
various types of two-wheelers including bikes, automobile parts and
components through its unit Royal Enfield. The plaintiff has the
registered trademark ENFIELD, ROYAL ENFIELD and BULLET as
CS(OS) 214/2011 Page 1 of 6
also logos and the website of the plaintiff as also has the unique style of
writing the aforenoted word ENFIELD and BULLET which are well-
known marks of the plaintiff, constitute an artistic work and are
protected under the Indian Copyright Act. Its business relates back to
the year 1955. The history of ROYAL ENFIELD has been detailed in
the plaint establishing its business reputation not only nationally but also
internationally. The website of the plaintiff royalenfield.com. is
extremely distinctive and has a particular look and feel. The basic
background of the website is in black. It has various images of the bikes
manufactured by the plaintiff and the several distinctive features of the
website of the plaintiff include the history of the company, details of the
various models and use of other distinctive expressions.
3 Defendant no.1 has registered the domain name
www.royalfieldmotorcycle.co.cc . The exact details of defendant no.1
are not currently available with the plaintiff. Defendant no.2 has the
domain name (www.co.cc) owned by a company who offers free sub
domain redirection services and with whom the impugned website
www.royalenfieldmotorcycle.co.cc is registered. Defendant no.1 on this
website has used almost all the features of the plaintiff's bike i.e.
CS(OS) 214/2011 Page 2 of 6
Enfiled, Royal Enfield and Bullet as also the original features from the
plaintiff's website on his website. The images have also been occupied.
The defendant's website is completely interactive. Various other
advertisements have also been put up on this website. It would appear
that the defendant no.1's website is affiliated or sponsored by the
plaintiff, which is not the real position.
4 Accordingly a prayer for permanent injunction has been made
restraining the defendants from using the trademark of the plaintiff and
passing off any other acts of unfair competition and from using domain
name royalenfieldmotorcycle.co.cc and the website therein.
5 In the course of the proceedings, ex parte injunction had been
granted in favour of the plaintiff and against the defendants on
01.02.2011
restraining them from using, transferring, alienating or
offering for sale or creating any third party interest in the domain name
and from using images, distinctive expressions and features of the
plaintiffs website so as to result in infringement of trademark, passing
off, infringement of copyright of the plaintiff. This was confirmed on
01.8.2011. Since none had appeared for the defendants, they were
proceeded ex parte.
6 Documentary evidence including distinctive features of the
plaintiff's website i.e. contents, images, and logos have been proved on
record as Ex.PW-1/5. The trademark registration certificates in favour
of the plaintiff of ENFIELD, ROYAL ENFIELD and BULLET have
collectively been proved as Ex.PW-1/6 and Ex.PW-1/7. The invoices
showing the sales of the company and the advertisements at national and
international level have been proved as Ex.PW-1/8 and Ex.PW-1/10.
On oath it has been reiterated that the defendant website is an interactive
website and the use of the mark ENFIELD, ROYAL ENFIELD and
BULLET on the said website and part of its domain name has resulted
in infringement of the registered trademark of the plaintiff. It has been
reiterated that the defendant no.1's website cannot be distinct from the
plaintiff's website. Damages have also been prayed for.
7 The plaintiff has proved its case. He is entitled to the decree as
prayed for. Accordingly, a decree of permanent injunction is passed in
favour of the plaintiff restraining defendant no.1, his family members,
agents, assignees from using the domain name
www.royalenfieldmotorcycle.co.cc or any other name containing the
plaintiff's registered trademark ENFIELD, ROYAL ENFIELD and
BULLET and distinctive logo, styles and artistic works and the look and
feel of the plaintiff's website which in any manner may amount to
infringement of plaintiff's trademark and infringement of his copyright.
8 Plaintiff has also prayed for damages. Submission is that the
plaintiff having a worldwide reputation and goodwill has suffered a loss
in reputation by the defendant's infringement upon his domain name and
his website.
9 In 2006 (33) PTC 683 (Del) Asian Paints (India) Ltd. Vs. Balaji
Paints and Chemicals and Ors. where the defendant was ex parte; in a
claim for damages a Bench of this Court had granted Rs.3 lacs as
damages to the plaintiff including costs of the suit. This Court is
inclined to follow the ratio of the said judgment which while granting
damages in this context had noted as under:
"The result of the actions of defendants is that plaintiffs, instead
of putting its energy for expansion of its business and sale of products,
has to use its resources to be spread over a number of litigations to
bring to book the offending traders in the market."
10 Plaintiff is accordingly entitled to damages quantified at Rs.1 lac.
The aim is to deter the wrong doer from indulging in such unlawful
activity. Cost of the suit also be granted in favour of the plaintiff. Suit
is decreed and disposed of in the above terms.
11 Decree sheet be drawn up.
12 File be consigned to record room.
INDERMEET KAUR, J
JANUARY, 30, 2014
ndn
