Delhi High Court
Hamdard National Foundation ... vs Abdul Jalil & Ors on 16 November, 2015
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Order delivered on: 16th November, 2015
+ CS(OS) 1240/ 2004
HAMDARD NATIONAL FOUNDATION (INDIA) & ANR .... Plaintiffs
Through Mr. Achuthan Sreekumar, Adv.
versus
ABDUL JALIL & ORS ..... Defendants
Through Defendants are ex-parte
CORAM:
HON'BLE MR.JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J.
1. The plaintiffs have filed the suit for permanent injunction,
restraining infringement of trademark, copyright, passing off, rendition
of accounts of profits, delivery up, etc. against the defendants.
2. Evidence by way of affidavit of Mr. Javed Akhtar, PW-1 has been
tendered as PW-1/A. PW-1 is the Deputy Manager, Legal of Hamdard
Dawakhana (Wakf) also trading as Hamdard (Wakf) Laboratories, the
plaintiff No. 2 in the present suit and is also the Constituted Attorney
of plaintiff Nos. 1 and 2.He has access to the books and records of the
plaintiffs and is fully conversant with all spheres of its business
activities.
3. Photocopies of the Power of Attorney in favour of PW-1 have
been exhibited as Ex. PW-1/3. The original Power of Attorney has not
been filed, as it is required in numerous proceedings all over the
country. He identifies his signatures on the plaint and verification.
4. It has come on record that plaintiff No.1 is a charitable
institution registered under the Societies Act (XXI of 1860), having its
registered office at 2A/3 Asaf Ali Road, New Delhi. A copy of the
registration along with Memorandum of Association of plaintiff No.1
has been exhibited as Ex. PW-1/4. Plaintiff No.2 is a wakf registered
under the Wakfs Act, 1954 with its registered office at Hamdard Marg,
Delhi-110006. A copy of the Wakf Deed of the plaintiff No.2 has been
exhibited as Ex. PW-1/5.
5. The plaintiffs belong to the well-renowned, reputed and much
acclaimed Hamdard Group which traces its glorious and illustrious
history to as far back in 1906, when Hakeem Hafiz Abdul Majeed, a
well-known Unani practitioner set up a small Unani clinic under the
name HAMDARD DAWAKHANA.
6. In 1948, the company Hamdard Dawakhana was converted from
a commercial enterprise into a charitable trust, Hamdard Dawakhana
(Wakf). Since then, along with the development of Unani medicine and
therapeutics, the concepts of service and charity have been the prime
motivations that have spurred on the organization to higher levels of
diversification and growth.
7. Plaintiff No.2 is not merely a Dawakhana but is also a multi-
purpose medical and social institution that is dedicated to the cause of
scientific investigation and social service.
8. Plaintiff No.1 was created in 1964 to disburse the profits of
Hamdard Dawakhana (Wakf) and for tackling the nation's health and
educational problems and promoting social and cultural activities that
went on to contribute towards the creation of several educational and
cultural institutions, including the world renowned Jamia Hamdard
University at Hamdard Nagar, New Delhi. An original brochure of the
plaintiffs entitled "A story of faith, hope and charity" has been
exhibited as Ex. PW-1/6.
9. Plaintiff No.1 is the proprietor of the trademark HAMDARD. The
trademark HAMDARD has been conspicuously and pervasively used in
respect of the entire range of the goods and services offered by the
Hamdard Group, as a result of which the trademark HAMDARD has
come about to be recognized as the house mark of the Hamdard
Group. Plaintiff No.1 is also the proprietor of the family of marks
comprising of the word/mark HAMDARD including HAMDARD & Eye
Device, HAMDARD BALM, HAMDARD MANJAN, HAMDARD HAJIAN,
HAMDARD MARHAM, HAMDARD GRIPE WATER and various other
marks.
10. Besides being the trademark/ house mark of the Hamdard
Group, the word HAMDARD also forms an integral and conspicuous
part of the trade name of the plaintiffs. A copy of the product brochure
of the plaintiffs, showing usage of the trademark/trade name
HAMDARD has been exhibited as Ex.PW-1/7.
11. Plaintiff No.1 has through a Deed of Agreement, which is fully
valid and subsisting, permitted plaintiff No.2 to use various trademarks
comprising of the word/mark HAMDARD. Copy of the Deed of
Agreement has been exhibited as Ex. PW-1/8.
12. Presently, plaintiff No.2 is using the trademark/ house mark
HAMDARD in relation to a wide range of products including inter-alia
Unani and ayurvedic medicines, syrups and non-alcoholic sweetened
beverages being manufactured for the mass market. Some of the well-
known products being manufactured and marketed by the plaintiffs
under the trademark/ house mark HAMDARD include Rooh Afza,
Sualin, Safi, Cinkara, Naunehal, Pachnol, Roghan Badam Shirin,
Joshina, Hamdard Gripe Water. Original product packaging showing
usage of the trademarks HAMDARD and HAMDARD & Eye Device have
been exhibited as Ex. PW-1/9.
13. The plaintiffs adopted the trademark HAMDARD & Eye Device in
the year 1958 and altered it in the year 1968 in the manner and form
as depicted hereunder;
14. Since October 1958, the trademark HAMDARD & Eye Device in
its original or the altered form has been pervasively used by the
plaintiffs in relation to the entire range of products including inter alia
pharmaceutical and medicinal preparations, infants and invalid foods,
medicated plasters and disinfectants, forestry products, perfumery,
toilet preparations (non-medicated), depilatory preparations,
cosmetics and hair oils (non-medicated), preparations made principally
from cereals and sugar for food for human consumption, honey, yeast
for food, vinegar and spices (other than poultry spices), books,
periodicals, magazines (publications), bulletins and printed literature.
15. Consequently, the trademark HAMDARD & Eye Device has also
come about to be recognized as the house mark of the plaintiffs'
products. Original copies of sale invoices showing usage of the mark
HAMDARD & Eye Device from 1988 has been exhibited as Ex. PW-
1/10.
16. By virtue of bonafide and prior adoption of the trademark/ house
mark/ trade name HAMDARD and HAMDARD & Eye Device, as also due
to the long, continuous and extensive use thereof, plaintiff No. 1 is the
proprietor of the said trademarks. It is deposed that by virtue of the
plaintiffs long, continuous and extensive use, the word HAMDARD has
acquired the secondary significance as being the source identifier of
the plaintiffs' goods and services. It is claimed that under these
circumstances, the plaintiffs are entitled under the common law to the
sole, exclusive and undisturbed use of the trademarks HAMDARD and
HAMDARD & Eye Device as well as the right to prevent the misuse of
the said trademarks by any other person, whether as a trademark or
as a corporate name/ trading style.
17. In addition to the common law rights that subsist in favour of
the plaintiffs, the plaintiffs are also the registered proprietor of the
trademarks/ house marks HAMDARD and HAMDARD & Eye Device as
per the provisions of the Trade Marks Act, 1999. The details of the
various registrations for the aforesaid trademarks subsisting in favour
of the plaintiffs have been mentioned here as under:
Trademark Reg.No. Date Class Goods
HAMDARD MANJAN 15442 06/05/43 03 Tooth powder
(Stylized)
HAMDARD 127448 23/01/47 03 All goods in class 3
HAMDARD & Device 171667 12/11/55 03 Cosmetics, toilet
preparations (not
medicated), tooth
powder and kajal
for toilet purposes.
HAMDARD & Eye Device 188102 16/12/58 03 Perfumery, toilet
preparations (not
medicated),
depilatory
preparations,
cosmetics and hair
oils (non-
medicated) included
in class 3
HAMDARD HAIR OIL 241957 05/05/67 03 Hair oil
HAMDARD & Device 248186 28/03/68 03 Cosmetics, toilet
preparations (not
medicated), tooth
powder and kajal
for toilet purposes.
HAMDARD ZUL AMLA 279777 11/07/73 03 Hair oil and
preparation for
cleaning hair.
MAULHAYAT HAMDARD & 2995 03/08/42 05 A specific for
Device tuberculosis
HAMDARD 2996 03/08/42 05 Pharmaceutical
preparations
NAUNEHAL HAMDARD & 2999 03/08/42 05 Specific for infants
Device
HAMDARD-I-HAJIAN 15456 06/05/43 05 Medicine
(Stylized)
HAMDARD MARHAM 15473 06/05/43 05 Medicine
(Stylized)
HAMDARD(Stylized) 127443 23/01/47 05 Articles included in
class 5
HAMDARD & Device 131495 07/11/47 05 Pharmaceutical
preparations
HAMDARD & Device 171668 12/11/55 05 Pharmaceutical and
medicinal
preparations,
infants' and
invalids' foods,
medicated plasters
and disinfectants.
HAMDARD & Eye Device 188105 16/12/58 05 Pharmaceutical and
medicinal
preparations,
infants' and
invalids' foods,
medicated plasters
and disinfectants.
HAMDARD & Eye Device 248185 - 05 -
NAUNEHAL GRIPE SYRUP 293076 21/12/73 05 Medicinal
HAMDARD preparations being
gripe syrup for
infants
HAMDARD GRIPE WATER & 249978 18/06/68 05 Gripe water
Device (medicinal)
HAMDARD 248167 28/03/68 09 Sound reproducing
apparatus and
optical instruments.
HAMDARD & Eye Device 248183 - 09 -
HAMDARD & Eye Device 188104 16/12/58 10 Surgical and
medical instruments
and apparatus
HAMDARD 127477 23/01/47 16 Goods included in
class 16
HAMDARD & Eye Device 188106 16/12/58 16 Books, periodicals,
magazines
(publication),
bulletins and
printed literature.
HAMDARD 248164 28/03/68 18 Traveling handbags
HAMDARD 248157 28/03/68 20 Embroidery, laces,
ribbons and
buttons.
HAMDARD 248162 28/03/68 21 Domestic utensils
included in class 21
HAMDARD & Eye Device 248179 28/03/68 21 Domestic utensils
included in class 21
HAMDARD & Eye Device 248176 28/03/68 26 Embroidery, laces,
ribbons and
buttons.
HAMDARD 248155 28/03/68 28 Sporting articles
(not included in
other classes)
HAMDARD & Eye Device 248175 28/03/68 28 Sporting articles
(not included in
other classes)
HAMDARD 127446 23/01/47 29 Goods included in
class 29
HAMDARD & Eye Device 248174 28/03/68 29 Edible oils and
Vanaspati
(Hydrogenated
edible oil)
HAMDARD 127445 23/01/47 30 Goods included in
class 30
HAMDARD & Eye Device 188103 16/12/58 30 Preparations made
principally from
cereals and sugar
for food for human
consumption,
honey, yeast for
food, vinegar and
spices (other than
poultry spices)
HAMDARD & Eye Device 188100 16/12/58 31 Forestry products
(not in other
classes)
HAMDARD 127444 23/01/47 32 Goods included in
class 32
HAMDARD & Eye Device 188101 16/12/58 32 Non-alcoholic
drinks, syrups
for making
beverages, sherbets
and other
preparations for
making beverages.
HAMDARD 248154 28/03/68 33 Alcoholic drinks
included in class 33
HAMDARD & Eye Device 248173 - 33 -
HAMDARD 248153 28/03/68 34 Chewing tobacco
HAMDARD & Eye Device 248172 28/03/68 34 Chewing tobacco
18. Certificates for use in legal proceeding for the trademark
HAMDARD under Nos. 15442, 127448, 171667, 241957, 248186,
279777 in Class 03; 2995, 2996, 2999, 15456, 131495, 171668,
249978 in Class 05; 188106 in Class 16; 127446 in Class 29; 127445
in Class 30; 188100 in Class 31; and 127444, 188101 in Class 32 have
been exhibited as Ex. PW-1/11 to Ex. PW-1/29 respectively.
19. As a result of the continuous and extensive use by the plaintiffs
of the trademarks HAMDARD and HAMDARD & Eye Device in relation
to the diverse range of products, spread over almost hundred years,
the said trademarks have acquired immense reputation and goodwill.
The impeccable reputation and goodwill acquired by the trademark
HAMDARD is reflected in the annual sales figures of various products
sold by the plaintiffs under the trademark HAMDARD, the details of
which have been mentioned herein below:-
YEAR SALES FIGURES (IN RS.)
1985 21,05,56,210/-
1986 23,19,07,567/-
1987 25,75,34,450/-
1988 30,41,93,938/-
1989 34,94,20,680/-
Copies of annual accounts of the plaintiffs for the year 1979-80
and 2006-07, showing the financial performance have been exhibited
as Ex. PW-1/30 and Ex. PW-1/31 respectively.
20. It is claimed that the plaintiffs have over a hundred year
association with the trademark/ trade name/ house mark HAMDARD
and have also expended vast amounts of resources in the form of
money, time and effort in promoting and advertising the trademarks
HAMDARD and HAMDARD & Eye Device. The trademarks HAMDARD
and HAMDARD & Eye Device have acquired a distinct identity and
personality associable solely with the plaintiffs. Copies of
advertisement receipts as received from various advertising agencies
pertaining to advertisements placed by the plaintiffs have been
exhibited as Ex. PW-1/32.
21. Copies of advertisements of various products of the plaintiffs
under the trademark HAMDARD have been exhibited as Ex. PW-1/33.
Copies of articles and news-reports as published in relation to the
plaintiffs have been exhibited as Ex. PW-1/34.
22. It is averred that due to prior and bonafide adoption, long,
continuous, extensive and exclusive use, promotion and publicity in
relation to a vast range of goods and services, accrual of most
impeccable reputation and goodwill, the trademark/house mark
HAMDARD and HAMDARD & Eye Device have come about to acquire
the status of well-known and famous trademarks.
23. It is averred that the use by any third party in relation to any
product would inevitably lead to passing off and also infringement of
the plaintiffs' registered trademarks as per the provisions of the Trade
Marks Act, 1999. Moreover, it would also lead to dilution by erosion of
the distinctive and exclusivity enjoyed by the plaintiffs' trademark/
house mark/ trade name HAMDARD.
24. In March 1992, the plaintiffs came across the defendants'
advertisement in the monthly Magazine Al-Tauiyah, under the trade
name and mark HAMDARD, in relation to basmati rice. Original copy of
March 1992 issue of Al-Tauiyah Magazine containing the defendants'
advertisement has been exhibited as Ex. PW-1/35.
25. It is alleged that the said advertisement contained the word
HAMDARD along with the Eye Device that are the registered
trademarks of the plaintiffs. A cease and desist letter was issued to the
defendants on 20th March, 1992 calling upon them to forthwith cease
from using the trademark HAMDARD and also withdraw all products
from the market bearing the said trademarks. Copy of the cease and
desist letter has been exhibited as Ex. P- 1.
26. The plaintiffs in October 2000, came across an advertisement of
the defendants' trademark application for registration of the trademark
HAMDARD BRAND DEHRADOONI BASMATI RICE and Device under No.
517277 dated 22nd September, 1989 in Class 30, which was advertised
before acceptance in the Trade Marks Journal No. 1232 at page no.
2640 in respect of "Rice for sale in India and also for export."
27. The said application was filed on "Proposed to be used" basis. A
copy of the relevant extract of the Journal notification of the
defendants' application No. 517277 in Class 30 has been filed and is
exhibited as Ex. PW-1/36. The plaintiffs accordingly, in January 2001
filed a Notice of Opposition against the defendants' application for
registration of the trademark HAMDARD BRAND DEHRADOONI
BASMATI RICE & Device. A copy of the Notice of Opposition has been
exhibited as Ex. PW-1/37.
28. The Assistant Registrar of Trade Marks vide its order dated 23rd
July, 2004 had allowed the opposition of the plaintiffs and refused
registration to the defendants' application for the trademark HAMDARD
BRAND DEHRADOONI BASMATI RICE & Device.
29. The operative part of the said order has been reproduced herein
below:
"Having heard the arguments and going through the
evidence filed by both applicants and opponents I have
come to the conclusion that the mark HAMDARD is not
invented word but has adopted secondary meaning by virtue
of its long and extensive use and also extensive
advertisement. The mark has acquired lots of reputation.
The applicants adopted the mark not only as a word mark
but also the enclosure eye Design with HAMDARD in its
center. Though the opponents are not direct dealing in the
sale of rice but the use of the word HAMDARD in the same
style does create confusion and general public associate the
name HAMDARD especially in Eye Design with the
opponents. In the circumstances the applicants are not
entitled for the benefit of the acquiescence as the very
adoption of the mark is not honest. If the adoption is
dishonest howsoever long is the user section 12(3) of the
Trade Marks Act cannot be invoked. Therefore, the
opposition succeeds and the application is refused
registration."
A certified copy of the order dated 23rd July, 2004 passed by the
Assistant Registrar of Trade Marks has been exhibited as Ex. P- 2.
30. As rightly held by the Tribunal, defendants' adoption and use of
the trade name and marks HAMDARD and HAMDARD & Eye Device is
clearly dishonest and malafide. Having failed to adduce any plausible
explanation for the adoption of the said marks, it is a correct finding
that the defendants adopted the mark with an ulterior motive to
misappropriate and trade upon the plaintiffs' reputation and goodwill in
the said trademarks and to pass off their goods and business as that of
the plaintiffs.
31. Such an intention of the defendants was bad as they have not
only adopted the plaintiffs' registered trademark/house mark
HAMDARD but have also copied the Eye Device that has been
designed, created and used by the plaintiffs for the past several
decades.
32. The use of the word/mark HAMDARD by the defendants is bound
to confuse the purchasing public who would be misled to believe that
the defendants' goods originate from the plaintiffs or have some
connection, association, endorsement or approval with or by the
plaintiffs and also confirm with the same high level of quality and
customer satisfaction as the plaintiffs' products.
33. The defendants are guilty of misrepresentation as regards the
trade origin and quality of their products that amounts to passing off.
Further, it is stated that the unauthorized use of an identical trade
name and marks by the defendants amounts to an infringement of the
plaintiffs' registered trademarks as detailed hereinabove under the
provisions of Section 29 of the Trade Marks Act, 1999.
34. From a mere look at the impugned composite mark, it is evident
that the defendants have blatantly copied the plaintiffs' Eye Device,
which is an artistic work within the meaning of Section 2(c) of The
Copyright Act 1957. Plaintiff No.1 is the owner of the copyright in the
said Eye Device. The defendants' reproduction of the said artistic work
HAMDARD & Eye Device amounts to an infringement of the plaintiffs'
copyright in the said artistic work.
35. The illegal trade activities of the defendants are bound to cause
incalculable harm and injury to the business, goodwill and reputation
of the plaintiffs. All profits earned by the defendants in pursuance of
its illegal activities are the plaintiffs' losses and amount to unjust
enrichment to the defendants.
36. The defendants' own admission in its written statement, is that
its annual sales under the trademark HAMDARD and HAMDARD & Eye
Device is more than Rs.2 crores.
37. The average percentage of net profit of sales, on such goods by
the industry standards is 10% to 20%. Therefore, even assuming
lower end of the range for the purpose of calculation of damages in
this case, the profits accruing to the defendants on net sales for the
last three years (2001-2004) alleged to be approximately Rs. 6 crores
(Rs. 2 crores x 3 years), are around Rs. 60 lakhs. It is therefore
submitted that even on the basis of the aforesaid simple calculation,
which does not take into account the damage to the reputation and
goodwill of the plaintiffs, on account of use of identical trademarks
HAMDARD and HAMDARD & Eye Device by the defendants, plaintiffs'
Company is entitled to damages of around Rs. 60 lakhs although the
suit is presently valued for purposes of damages at Rs.5,00,000.
38. The defendant's sale figures were not audited or certified by a
chartered accountant and hence lack credibility. I am taking these on
the face value for the purpose of calculation of the approximate sum of
the profits of the defendants under the impugned trademark which are
directly the losses of the plaintiffs. Under these circumstances, the
suit of the plaintiffs is decreed in terms of prayer clause 28 (a) to (d)
of the plaint. Counsel for the plaintiffs has agreed to give up the
prayer of damages and rendition of accounts. The same are
accordingly rejected.
39. The plaintiffs are only entitled for costs.
40. Decree be drawn accordingly.
41. The suit and pending applications are disposed of.
(MANMOHAN SINGH)
JUDGE
NOVEMBER 16, 2015
