Deere And Co. And Anr vs S. Harcharan Singh And Anr
2015 Latest Caselaw 1956 Del

*     IN THE HIGH COURT OF DELHI AT NEW DELHI

+     CS(OS) 3760/2014 and I.A. 24477/2014 (u/O XXXIX R 1
      and 2 CPC), I.A. 376/2015 (u/O XXIII R 3 CPC)

                                                Decided on: 05.03.2015

IN THE MATTER OF:
DEERE AND CO. AND ANR                            ..... Plaintiffs
                   Through: Mr. Pravin Anand, Advocate with
                   Ms. Vaishali Mittal, Neha Reddy and
                   Mr. Sidhant Chamola, Advocates

                        versus

S. HARCHARAN SINGH AND ANR                       .... Defendants
                   Through: Mr. Aman Bhalla, Advocate

CORAM
HON'BLE MS.JUSTICE HIMA KOHLI


HIMA KOHLI, J.(Oral)



1.

The plaintiffs have filed the present suit for permanent injunction

for restraining infringement of trade marks, passing off trade dress,

unfair competition, rendition of accounts, delivery up and damages

etc. against the defendants.

2. Mr. Pravin Anand, learned counsel for the plaintiff submits that

the plaintiff no.1 is a company organized and existing under the Law

of the State of Delaware, USA. The plaintiff no. 2 is a company

existing under the law of India, having its principal place of business at

Pune. The Deere Group is commonly referred to as the „John Deere‟

after its founder and Chairman, Mr. John Deere. The plaintiff No.1 was

established in the year 1837 and it traces its origin to a blacksmith

shop in Grand Detour, Illinois, U.S.A where Mr. John Deere had

invented the first commercially successful steel plow, allowing pioneer

farmers to cut clean furrows through the sticky Midwest prairie soil.

3. The plaintiff No.1 claims to be one of the largest and leading

agricultural and construction equipment manufacturer in the world

including India, primarily having four business segments namely

„Agricultural Equipment‟; „Commercial & Consumer Equipment‟;

„Construction & Forestry‟ and „Finance.‟ The plaintiffs are listed as a

Fortune 500 company and ranked amongst the top 100 companies

therein, employing over fifty five thousand staff members in twenty

seven countries worldwide, including the United States, Australia,

Turkey, Canada, United Kingdom, China, France, Germany, Spain,

Italy, India, Poland, Mexico, Morocco and South Africa.

4. The plaintiffs had first adopted the trademark „John Deere‟ in the

year 1837 and ever since had used the said trademark continuously

and extensively. The plaintiffs‟ logo essentially comprises of

a „leaping deer‟ in conjunction with the trade mark „John Deere‟. The

earliest illustration of the plaintiffs‟ goods with the arbitrary green and

yellow scheme (hereinafter referred to as the John Deere

Trademark/Trade Dress) is of a plow in the 1905 Deere and Weber

catalog.

5. In the year 1910, the plaintiffs had started making use of a

particular combination of the colours Green and Yellow in relation

to its agricultural implements in a unique and distinct manner which

was further adopted for tractors in the year 1918. It is stated that the

manner of use of this combination of colours was such that it included

the body of the vehicle being substantially painted „Green‟ with the

seat and the wheels of the vehicle being substantially painted „Yellow‟

in the manner depicted herein below:

6. It is further submitted that in the year 1956, the colours "Green"

and "Yellow" were also defined in the internal standards, laid down by

the plaintiffs which clearly depicted the colours and the scope of their

application on the agricultural equipment. Further, the plaintiffs make

use of "sample plates" which are maintained under defined conditions

in order to compare the original colours used by the plaintiffs with the

use of colours on agricultural equipment in the present day. It is

submitted that by virtue of continuous and extensive use of the

green and yellow colour scheme for its products by the plaintiffs, the

consumers and members of the trade alike associate the above

mentioned colour scheme solely with the products of the plaintiffs.

7. Learned counsel states that the plaintiffs have been investing

huge amounts of money and energy in promoting their John Deere

trademarks including the colour marks and logo and have

put in unparalleled efforts to advertise and promote the said

trademarks including trade dress in order to ensure that their

trademarks secure and maintain the vast goodwill and reputation that

is vested in them through the decades, until the present day.

8. The plaintiffs have built a reputation in India of its well known

John Deere trademarks and the unique green and yellow colour

scheme and logo. This is evidenced from the fact that its

agricultural equipment especially Tractors, Harvesters and Combines

have been featured in several Hollywood movies and TV shows such as

"A Summer Catch" (2001), "Burn Notice" (2007), "SeaBiscuit" (2003)

and "The Longest Yard" (2005). The plaintiffs‟ tractors have also

featured in Indian movies such as "Govindudu Andarivadele" (Telugu)

and TV shows such as the widely acclaimed "Satyamev Jayate" (2014)

wherein the plaintiffs‟ tractor was used by the famous Bollywood actor,

Aamir Khan as a part of the theme song for the show.

9. The plaintiffs claim to have sold their products in the Indian

agricultural market, including first sales of equipment in India at least

six decades ago. It is submitted that the plaintiffs had entered directly

into the Indian market in the year 1997 with the incorporation of its

wholly owned subsidiary, John Deere India Private Limited, the plaintiff

No. 2. Plaintiff No. 2 claims to have tie-up agreements for research

and development of a business model for delivering high quality

premier agricultural mechanization services with EM3 Agri services

Private Limited (Delhi). Plaintiff No. 2 has had agreements with IIT

Delhi for collaborative research projects for Master‟s Degree or Ph.D to

provide industrial exposure to the faculty and students of IIT Delhi.

10. As a result of its continued efforts to expand its business

activities across the world including in India, the plaintiff No. 1 had

entered into a Joint Venture Agreement with Larsen & Toubro Limited,

an engineering company of high repute in India. Through this Joint

Venture, the plaintiffs have engaged in various activities such as the

establishment of a green field project in the year 1999 in addition to

establishing a state of the art manufacturing plant for the John Deere

5000 series tractors at Sanaswadi, near Pune. Subsequently, in the

year 2005, the plaintiff No. 1 had acquired nearly all the shares of the

said Joint Venture, whereby a new enterprise, John Deere Equipment

Private Limited was established in India. The plaintiffs further

expanded their presence in India with the incorporation of John Deere

Financial India Private Limited in the year 2011.

11. The plaintiffs claim to be one of the leaders in the Indian Tractor

market and have achieved a pan-India presence through their 18 area

offices, 4 divisional offices and more than 400 authorized dealers

spread across the country. Learned counsel for the plaintiffs submits

that the plaintiffs are the largest exporters of tractors from India and

these tractors are exported to the USA, Mexico, Turkey, North and

South Africa, and South East Asia. The plaintiffs have also entered into

a partnership with the State Government of Gujarat to benefit the

marginalized tribal farmers. The plaintiffs‟ partnership with the

Government of Gujarat was the first of its kind in the agricultural

industry in India which is stated to be positively impacting an

estimated 50,400 marginalised farmer families. Learned counsel also

refers to the fact that Mr.Narendra Modi, the Prime Minister of India,

had as the Chief Minister of the State of Gujarat, signed a PPP with the

plaintiffs on farm mechanisation in the year 2011. The photograph of

Mr. Narendra Modi showing him sitting on the plaintiffs‟ tractor has

been filed along with the list of documents. The plaintiffs claim that

they have a presence over the internet and their websites being

www.deere.com, www.johndeereclassic.com and www.deere.co.in are

easily accessible to persons across the world including those in Delhi

and other parts of India. The plaintiffs‟ unique and distinct green

and yellow colour scheme and logo is displayed extensively

and constitutes the basic colour scheme and layout of the aforecited

websites.

12. Learned counsel submits that the plaintiffs have invested huge

sums of money in promoting and advertising their John Deere

trademarks and unique trade dress in India. The

advertising/promotional expenses of the plaintiffs in India for the

period 2008 - 2012 (in million INR) are as below:-

                     Year        Promotional Expenditure
                   2008-09               666.63
                   2009-10               888.56
                   2010-11               866.81
                   2011-12              1,351.02
                   2012-13              1,097.28

13. The vast promotion of the John Deere Trademarks including

Trade Dress has resulted in enormous sales of the plaintiffs‟ products

in India. The sales figures of the plaintiffs in India for the period 2008

-2013 (in million INR) are as follows:-

                     Year              Sales Figures
                   2008-09              18,600.56
                   2009-10              21,262.83
                   2010-11              32,978.86
                   2011-12              39,862.36
                   2012-13              41,330.90

14. The plaintiffs‟ „John Deere trade marks‟ are registered over 20

countries. It is submitted that in India, the plaintiffs‟ use of its „John

Deere trade marks‟ dates back to year 1943. A list of the plaintiffs‟

registrations for its „John Deere trademarks/ trade dress‟ in India is as

under:-

      #         Trade Mark      Class   Date of application       Trade
                Registration                                      Mark
                  Number
          1.      224850          7     12th October, 1964


          2.      1551757        28       20th April, 2007

          3.      1551758        28       20th April, 2007

          4.      1551759         7       20th April, 2007


          5.      1551760         7       20th April, 2004

          6.      1551761        7        20th April, 2007
          7.      1551762        12       20th April, 2007

          8.      1551763        12       20th April, 2007

          9.      1551764        12       20th April, 2007
          10.     1551765        28       20th April, 2007

15. Mr. Anand submits that the plaintiffs‟ „John Deere‟ trade Marks

including trade Dress are well known trade marks in India for several

reasons, including the fact that the plaintiffs‟ trademark „John Deere‟

and the logo read with the characteristic green and

yellow colour scheme and the trade dress have gathered an enviable

reputation and worldwide recognition amongst the general public and

the members of the trade alike. The plaintiffs‟ logo of the animated

version of the leaping deer has been recognised by the United States

Court of Appeals as a well-known mark in the judgment dated

21.11.1994, in the case of Deere & Company vs. MTD Products, Inc.

Similarly, vide judgment dated 28.10.2009 delivered by the Appellate

Court of the European Union, the Office for Harmonisation in the

Internal Market (Trade Marks and Designs) had recognised the

plaintiff‟s registered trademark, representing the combination of the

colours, green and yellow for agricultural equipments. In January,

2014, a Chinese newspaper, "China Daily" had reported the verdict of

the Beijing Intermediate Court, wherein not only was the colour

combination of green body and yellow wheels recognised as a symbol

of the John Deere tractors, it was also reported that the case filed by

the plaintiffs was the first law suit of its kind in China involving

infringement on a trademark related to colour combination, where the

Court held that the plaintiff was entitled to monetary compensation

from the infringer company to the tune of $74,340. The logo

of the plaintiffs has the distinction of being included by the

International Trademark Association (INTA) in its list of famous/well

known trademarks recognised by jurisdictions worldwide.

16. As for the defendants herein, it is the case of the plaintiffs that

in the month of October 2014, they had become aware that the

defendants are manufacturing and selling lookalikes of the plaintiffs‟

farm equipment including but not limited to Tractors, Harvesters and

Combines under their trading name/mark "SURINDERA" across India

and they have made use of the plaintiffs‟ logo and adopted

a trade dress which bears a striking resemblance with the plaintiffs‟

registered trademarks (the colour marks) including trade dress as

highlighted below:-

Plaintiff's Products Defendant's Impugned Products

17. It is contended by Mr. Pravin Anand, learned counsel for the

plaintiffs that the defendants have infringed the registered trade mark

of the plaintiffs by using the logo and trade dress that bears

a striking resemblance with the plaintiffs‟ registered trademarks (the

colour marks).

18. It is submitted that the plaintiff No.1 is the registered proprietor

of the John Deere Trademark / Trade dress in relation to the unique

green and yellow colour scheme and logo and the

defendants have blatantly copied the impugned marks in relation to

their agricultural vehicles without any authorization from the plaintiffs.

Further, the manner of use of this colour combination by the

defendants‟ is also deceptively similar to that adopted by the plaintiffs,

i.e. the body of the vehicle being painted in Green with the wheels

and the seat of the vehicle being painted in Yellow . It is therefore

urged that the manner of use of the colour scheme by the

defendants is quite similar to that of the plaintiffs.

19. Learned counsel for the plaintiffs contends that such a

deceptively similar adoption of the plaintiffs‟ trademark and trade

dress by the defendants is bound to cause confusion in the minds of

the consumers that the defendants‟ agricultural vehicles are

emanating from the plaintiffs or that they have been granted license

by the plaintiffs in relation to their products or that the plaintiff have

endorsed defendants‟ business.

20. The Court has considered the submissions made by learned

counsel for the plaintiffs. Before proceeding further, it is imperative to

consider the following definitions under the Trademarks Act, 1999

(hereinafter referred to as the „Act‟):

Section 2(m) of the Act reads as under:

"mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof"

Section (zb) of the Act reads as under:

"(zb) trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours"

21. Under the Act, well known trademarks can be protected even

without registration or use in India. As per Section 29(4) of the Act, a

registered trademark 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.

22. Section 2(1)(zg) of the Act defines well known trademarks as

follows:-

"well known trademark in relation to any goods or services, means 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 services 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."

23. Section 11(6) and 11(8) of the Act lay down the particulars for

taking cognizance of a trademark (which also includes shape marks,

trade dress and overall get up of the product) to be a „well known

trademark‟. These principles have been enunciated in the case of

General Electric Company vs. J. Singh and Ors., reported as 2011 II

AD (Delhi) 18.

24. The aforesaid provisions make it apparent that a colour/colour

combination can become a trademark if they are distinctive and

exclusively associated with the trader. Once the same is registered,

exclusive rights are granted under Section 28 of the Act and a party is

entitled to initiate infringement proceedings if the case falls within the

four corners of Section 29 of the Act and in those circumstances, the

aggrieved party can obtain an injunction order under section 135 of

the Act.

25. As was pointed out by the predecessor Bench while passing an

interim order in favour of the plaintiffs herein in I.A. 24477/2014, the

courts in India have recognized some trademarks as well known in

several cases, like Daimler Benz and another vs. Hybo Hindustan

reported as AIR 1994 Delhi 239 - for BENZ; the well known alcohol

manufacturing company, Shaw Wallace, had successfully enforced its

trademark rights, especially the numerical part of its brand name

"5000" in the case of Shaw Wallace & Co. vs. Superior Industries Ltd

reported as 2003 (27) PTC 63 (Del) and same was the view taken in

the case of Tata Sons Ltd vs. Manoj Dodia reported as 2011(46) PTC

244 (Del). In respect of a trade dress, the Courts have opined that

deceptively imitating the get up, layout and artistic features of the

plaintiff‟s goods adversely harms the reputation and goodwill enjoyed

by it. This view has been consistently taken in numerous cases

including Reckitt & Colman Products Limited vs. Borden Inc and Ors.

reported as (1990) R.P.C. 341, Colgate Palmolive Company and

Another vs. Anchor Beauty Health and Beauty Care Pvt. Ltd reported

as 2003(27) PTC 478 (Del), and Perfetti Van Melle S.P.A. and Anr.

vs. Om Prakash Khushwant and Anr. reported as 2013(54) PTC 288

(Del).

26. In the case of Sodastream Ltd. v. Thorn Cascade Co Ltd.

reported at 1982 RPC 459, the plaintiffs therein were marketing gas

cylinders of grey colour under their trade mark, „Sodastream‟ and the

defendants therein were marketing their black coloured cylinders

under their own trade mark, „Thorn Cascade‟. While granting an

interlocutory injunction order in favour of the plaintiffs, it was

observed that the attempt of the defendants to refill the plaintiffs‟ grey

coloured gas cylinders, even with their own trade mark amounts to

passing off as the grey coloured cylinder is distinctive of the plaintiffs

in respect of which they enjoyed a reputation to the exclusion of

others.

27. In another case, Hoffmann-La Roche and Co. A.G. v. D.D.S.A.

Pharmaceuticals Limited, reported in 1972 RPC 1, the plaintiffs

therein manufactured and marketed chlordiazepoxide in distinctive

black and green capsules bearing the word "Roche" on each capsule.

The defendants also marketed and advertised the drug,

chlordiazepoxide in black and green capsules which were identical to

those of the plaintiffs except that they bore the letters "DDSA" instead

of the plaintiffs‟ name. The plaintiffs were granted interlocutory

injunction restraining the defendants from passing off capsules of the

patented drug as the goods of the plaintiffs. It was held that the

attempt on the part of the defendants in marketing capsules in almost

identical form as those of the plaintiffs, was calculated to cause

damage to the plaintiffs. It was further held that there was a likelihood

of confusion as both the capsules contained the same drug and the

public was hardly concerned with the identity of the party

manufacturing the capsules as long as the capsules contained the

same substance and had the same effect.

28. Coming to the instant case, the plaintiffs herein have filed

several documents in support of their submission that the „John Deere‟

trademark and logo and their „John Deere‟ trade dress are

unique and distinctive in nature and due to the extensive sales and

advertisements, the relevant section of the public immediately

associates „John Deere‟ trademark as well as the overall

trade dress and the get up as those belonging to the plaintiffs. Several

documents have been filed by the plaintiffs to demonstrate the said

position, including the snapshots of their website relating to adoption

and use of the John Deere Trademarks and products, copies of the

documents evidencing the long history of the plaintiffs‟ products and

their green and yellow colour scheme from the year 1910 till the

present day, documents evidencing the use of the colours Green and

Yellow by the plaintiffs for their agricultural equipments in accordance

with their internal standards since the year 1956, documents

evidencing sale of the plaintiffs‟ products in Delhi, copy of the brochure

of the Third International Exhibition & Confernece on Agri-Machinery &

Equipment, 2013 evidencing the active organizing of trade fairs in

Delhi by the plaintiffs, copy of the press release of the Agrimach Trade

Fair, 2013 evidencing the plaintiffs‟ sponsorship of the event in New

Delhi, copy of the Directory of the Tractors Manufacturing Association

evidencing the plaintiffs‟ active participation in the Indian Agricultural

Industry, copies of documents evidencing the sales and promotional

literature of the plaintiffs‟ specific to India, copies of newpaper articles

evidencing the wide publicity of the plaintiffs‟ prodcuts in India, copy

of extract of the book titled, "CENTRESTAGE" showing the Prime

Minister of India, Mr. Narendra Modi sitting on the John Deere tractor

evidencing the plaintiffs‟ partnership with the Government of Gujarat

to help marginalised farmers, copy of the brochure of the Maharashtra

Trade Technology Sumit and technology platform, 2013 evidencing the

plaintiffs‟ active participation in the Indian Agricultural Industry, copies

of the registration certificates for the plaintiffs‟ trademarks in India,

list of trademark registration held by the plaintiffs‟ across the world

and the list of trademark registrations held by the plaintiffs for the

JohnDeere Trademarks in various countries.

29. Having regard to the several factors referred to hereinabove,

including the well known status of the „John Deere‟ trademark and

trade dress, knowledge and recognition of the mark in the relevant

section of the public, the duration, extent and geographical areas of

use of the plaintiffs‟ trademark and the record of successsful

enforcement of the statutory and common laws rights vested in the

plaintiffs throughout the world, including India, this Court is of the

opinion that the plaintiffs have established beyond reasonable doubt

that their John Deere trademarks including the colour marks and

logo are extremely well known marks amongst the members

of the trade and the public at large. The long duration for which the

plaintiffs have put the aforesaid trademark, trade dress and logo to

use, the widespread geographical areas of the said use, knowledge in

the public domain about the plaintiffs‟ trademark, the goodwill and

reputation earned by them due to the extensive promotion and

advertisement of their products, continuous use of the plaintiffs‟

trademark and sales made under the said mark in India and in other

countries and the numerous registrations obtained by the plaintiffs in

respect of the said trademark all go to establish the fact that the

trademark including the colour marks and logo used by

the plaintiffs have indubitably acquired the status of well known

marks.

30. It is also relevant to note that during the pendency of the

present suit, the plaintiffs and the defendants have entered into an

amicable settlement. Defendant no. 1, who is the authorised

representative of the defendants, had presented himself in Court along

with his counsel on 21.01.2015 when the compromise application,

registered as I.A. 376/2015 was taken up for consideration. On the

said date, learned counsel for the defendants had submitted that the

defendant No.1, partner of the defendant No.2/firm had signed the

compromise application and sworn the affidavit in support of the said

application of his own free will and volition and the defendants did not

have any objection to the suit being decreed in terms of the

settlement arrived at between the parties and recorded in the

application.

31. In the compromise application, the defendants have

acknowledged the plaintiffs‟ exclusive proprietary rights vested in the

trademark including the colour marks and the logo

including the trade dress as a well known trademark. The defendants

have also acknowledged the plaintiffs‟ rights vested in the unique

trade dress and they have agreed to cease making use of the said

trade dress in relation to their agricultural equipments. The defendants

have further undertaken that they shall not submit any application

before the Trademark Registry for registering their trademark, trade

dress and trade logo. On the basis of the undertakings given by the

defendants to the plaintiffs, the plaintiffs have agreed to forgo their

claims of damages, rendition of accounts and delivery up, as prayed

for in para 35(iii) to (v) of the plaint. Both parties state that the

present suit may be decreed in terms of clause (i) and (ii) of para 35

of the plaint.

32. Mr. Neeraj Panchal, constituted attorney of the plaintiffs, who

has also sworn the affidavit in support of the plaint and the defendant

No.1, Mr. Harcharan Singh, partner of the defendant No.2/firm have

signed the compromise application which is supported by their

respective affidavits. Counsels for both the parties confirm the fact

that their clients have arrived at a settlement with each other of their

own free will and volition. Accordingly, the said application is taken on

record. The defendants shall remain bound by the undertaking given

in the application.

33. The suit is decreed in favour of the plaintiffs and against the

defendants in terms of clauses (i) and (ii) of para 35 of the plaint,

while leaving the parties to bear their own costs.

34. The suit is disposed of, along with the pending application.

                                                     (HIMA KOHLI)
MARCH 05, 2015                                          JUDGE
rkb/ap/mk