Dlf Limited vs Sohum Shoppe Limited & Ors
2015 Latest Caselaw 7371 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                      Judgment Pronounced on: 28th September, 2015

+                        CS(OS) No.1236/2012
       DLF LIMITED                                       ..... Plaintiff
                         Through   Mr.Aditya Shankar, Adv. with
                                   Mr.Naman Joshi & Mr.Mohit
                                   Mudgal, Advs.

                         versus

       SOHUM SHOPPE LIMITED & ORS           ..... Defendants
                  Through Defendants are ex parte.

       CORAM:
       HON'BLE MR.JUSTICE MANMOHAN SINGH

MANMOHAN SINGH, J.

1. The plaintiff has filed the suit for permanent injunction restraining infringement of trademark, passing off, unfair competition, dilution for rendition of accounts of profits/damages, delivery up etc. against the defendants.

2. The defendants were proceeded ex-parte earlier. The plaintiff has produced evidence by way of affidavit of Mr.Manish Kumar, authorized representative of the plaintiff. Board Resolution in his favour has been proved as Ex.PW-1/1. The ex-parte order dated 19th October, 2014 has not been set-aside, as no steps were taken despite of knowledge.

3. It is alleged in the suit that DLF Group was founded in 1946 with a vision which seeks to usher in better tomorrow by providing

people with improved quality of life and living standards. The plaintiff has developed as many as 21 urban townships in Delhi such as Krishna Nagar in East Delhi, South Extension, Greater Kailash, Hauz Khas, Rajouri Garden, Model Town, Ankur Vihar and Dilshad Extension II in Ghaziabad, UP, "DLF Qutab Enclave Complex" now known as DLF City in Gurgaon etc. The plaintiff ventured into Group Housing Projects in the year 1982, community shopping centers -in the year 1989, "A" grade office spaces in the year 1991, organized retail complexes in the year 2002. In the year 2003, the business and activities of the plaintiff and its group companies expanded across 11 cities in India and in the year 2004, the plaintiff launched 125 acre cyber city and IT Parks across various metros. Later, in the year 2005, the plaintiff also launched its hotel business.

4. It is averred in the plaint that the development business of plaintiff includes Homes and Commercial Complexes. The Homes business caters to 3 segments of the residential market - Mid- Income, Luxury and Super Luxury. The product offering involves a wide range of products including condominiums, duplexes, row houses and apartments of varying sizes.

The Retail-Malls and Commercial Complexes SBU (Strategic Business Unit) is a major thrust area for the plaintiff. Currently, the plaintiff is actively creating new shopping and entertainment spaces all over the country. The company has approximately 24 million sq.ft of rental business through office and operational mall segments. The rental business has 21.82 m.s.f of area under construction as of 31st March, 2012 with approximately 43 m.s.f. available for potential

development (including area under construction). These include categories of prime downtown shopping districts, shopping centers and super luxury malls amongst others. The plaintiff is India's largest real estate company in terms of revenues, earnings, market capitalization and developable area. It has a 62-year track record of sustained growth, customer satisfaction and innovation.

5. "EMPORIO" was India's first luxury mall and it began operating in the year 2008. It has successfully combined retail and leisure o offer a day out destination. The trademark "EMPORIO" was subject of extensive launch coverage in print media all over India and even outside India, such as in Dubai, since 2004, inviting investment and bookings from well-known brands from all over the world. Copies of the print media advertisements pertaining to the trademark of the plaintiff for the period 2004-2010 have been exhibited as Ex.PW 1/3. Copies of the plaintiff's brochure pertaining to its mall EMPORIO have been exhibited as Ex. PW 1/4.

6. The plaintiff has claimed having received various awards and recognition for its luxurious mall under the trademark "EMPORIO" which include, inter alia, a. Company of the Year award for DLF and Iconic Project 2008 award for DLFEMPORIO conferred by the Global Initiative for Restructuring Environment & Management at the Urban Planning and Real Estate Leadership Summit, 2008. b. Most Admired Specialty Mall (Metros) award for 2009, 2010, and 2011 conferred by Images Group.

c. Imint award for being the Most Admired Specialty Mall (Metros) for 2010 and 2011 conferred by Shoppers 85 Consumers Insight.

Copies of the sample certificates of awards received by DLFEMPORIO have been exhibited as Ex. PW 1/5.

7. The trademark of the plaintiff "EMPORIO" has been extensively promoted through various means including newspapers, magazines, hoardings, events, flyers, sales promotional material etc. at huge pecuniary expense of Rs.12.58 crores from 2004 onwards till date of filing of the present suit. The plaintiff also maintains a website with the name of www.dlfemporio.com which gives the full details about the plaintiff's mall. People can also email enquiries and send in queries at [email protected] The screen shots showing the website of the plaintiff having depiction of its trademark EMPORIO has been reproduced herein below:

Copies of the printouts from the plaintiff's website www.dlfemporio.com have been exhibited as Ex. PW 1/6.

8. The information about the brand name EMPORIO of the plaintiff is also featured on various websites like www.luxurionworld.com,www.businessworld.in, www.indiaretailing.com, etc. A search on Google of the word "EMPORIO" shows the plaintiff's website as the top link which shows that the plaintiff's trademark has garnered the attention of the market and is popular amongst consumers in India. The plaintiff's mall gets approximately 4500 hits per month and has a Wikipedia entry providing details of the plaintiff's mall. The screenshots of the aforementioned search and Wikipedia entry have been depicted herein below:

9. It is claimed that the plaintiff's mall EMPORIO has also been advertised by word of mouth across the country as well as internationally by visitors of the mall. Various retailers operating out of the mall also indirectly advertise the plaintiff's mall. The plaintiff's trademark EMPORIO possesses formidable goodwill and reputation in the trade, and amongst consumers which is evident from the statement of annual sales as well as promotional and advertisement expenses pertaining thereto have been reproduced here as under:-

Copies of the sample promotional invoices pertaining to the trademark of the plaintiff have been exhibited as Ex. PW 1/7.

10. It is the testimony of PW-1 that on account of prior adoption, long and continuous use, extensive advertising, promotional events, breath-taking interiors, renowned architects, world-class facilities, world famous brands under one roof, extensive marketing network, enormous sales, and painstaking quality control undertaken by the plaintiff, the trademark "EMPORIO" has acquired huge goodwill and reputation amongst the consumers, traders, and the public at large. Thus, the brand "EMPORIO" has become synonymous with a luxury mall and it is one of a kind belonging to the plaintiff only. Copy of the sample agreement pertaining to EMPORIO since 2005 has been exhibited as Ex. PW 1/8.

On account of long usage since 2004-05, and its premium ultra luxurious quality, the brand EMPORIO has acquired high degree of distinctiveness and recognition amongst consumers and is considered a "well known" trademark which requires protection of the widest extent and beyond limitation or constriction of category of goods or services that it is used for. Such goodwill and reputation constitutes a valuable intellectual property right that is owned by and exclusively belongs to the plaintiff and the same needs to be protected by this Court against misuse, misappropriation, or dilution by unscrupulous and dishonest traders, who use them to derive unethical and unlawful benefit therefrom and to practice deception on consumers at large.

11. The plaintiff in order to accord statutory protection and to prevent misappropriation, dilution, and misuse, the plaintiff (includes

predecessors in title and business) applied for and has obtained registration of the trademark "EMPORIO" in India as follows:

 Registration      Class       Registration   Goods
 No./Trademark                 Date

 1390256           37          07.10.2005     Building construction;
 EMPORIO                                      repair; installation services,
                                              commercial retail property. development
                                              services, restoration of retail premises,
                                              building of fair stalls and shops, cleaning of
                                              shops, conversion of shop premises, repair
                                              of shop fitments, shop fitting.

 1389933           35          06.10.2005     The bringing together, for the benefit of
 EMPORIO                                      others, of a variety of goods, enabling
                                              customers to conveniently view and
                                              purchase those goods in a wholesale or
                                              retail outlet; arranging of or conducting
                                              exhibitions. events, shows for advertising,
                                              business,        retailing,      wholesaling.
                                              supermarket,     hypermarket, malls, sales
                                              management
                                              services; television, radio and outdoor
                                              advertising, advertising, business,
                                              business management.
                                              research, information
                                              advisory.

 1389919           19          06.10.2005     Building materials (non-metallic); non-
 EMPORIO                                      metallic rigid pipes for building; asphalt.
                                              Pitch     and      bitumen;     nonmetallic
                                              transportable buildings; monuments, not of
                                              metal.



Copies      of    the      trademark     registration       certificates       mentioned

hereinabove have been exhibited as Ex. PW 1/9. Copy of the search report of the trademark EMPORIO in Class 37 has been exhibited herewith as Ex. PW 1/10.

The registrations mentioned hereinabove are valid and subsisting in favour of the plaintiff. The plaintiff is the registered

proprietor of the trademark as mentioned hereinabove, having exclusive statutory right to use thereof.

12. Defendant No.1, Sohum Shoppe Ltd. is a company incorporated under the Companies Act, 1956, having its registered office at Shopper's Point, 4th Floor, H.B. Road, Fancy Bazar, Guwahati - 781001, Assam. The defendants No. 2 to 4 are directors of defendant No. 1 as reflected from the website of the Registrar of Companies. The defendants are engaged in the business of multi-brand outlet and have been carrying on its business under the trademark and trade name SOHUM SHOPPE to which the plaintiff has no objection. However, the grievance of the plaintiff is that the defendants have launched a multi-brand mall under the trademark SOHUMEMPORIO. Copies of the print outs from the website of the Registrar of Companies showing the details of defendant Nos. 2 to 4 have been exhibited as Ex. PW 1/11.

13. The plaintiff aggrieved by the said use of the defendants has filed the present suit, as the defendants have taken the entire trademark EMPORIO with the prefix SOHUM of the plaintiff. It is established on record that the adoption and use of the impugned trademark SOHUMEMPORIO by the defendants is evidently dishonest, malafide and fraudulent in nature. The defendants have appropriated the same in order to confuse and deceive the consumers, traders, and public at large and for monetary benefit. The consumers who are familiar with EMPORIO mall of the plaintiff could reasonably associate EMPORIO mall of the defendants with the prefix SOHUM as a variation or a branch of the plaintiff's mall

EMPORIO in a different state, i.e. Assam on account of imperfect recollection.

14. It is alleged that the trademark used by the defendants, namely EMPORIO with the prefix 'SOHUM', is deceptively similar to the plaintiff's reputed trademark EMPORIO and the same cannot be a matter of coincidence. The impugned adoption is deliberate and the defendants ought to be credited with the success that they propose to achieve by such instrument of deception. The defendants are conspiring, advertising, and using the impugned trademark EMPORIO with the prefix SOHUM for its mall, which is deceptively similar to the mall of the plaintiff, despite the fact that there is no connection whatsoever between the plaintiff and the defendants' malls.

15. Having heard the learned counsel appearing on behalf of the plaintiff, it is very clear that the trademark EMPORIO is registered under the Trade Marks Act, 1999. The use of the impugned trademark EMPORIO with the prefix SOHUM by the defendants is still phonetically and structurally deceptively similar to the trademark EMPORIO of the plaintiff and it amounts to infringement of the plaintiff's registered trademark. The defendants are hence guilty of infringing the plaintiff's statutory right of exclusive use of the trademark EMPORIO under Section 29 of the Act. Reliance is placed on Kedar Nath v. Monga Perfumery & Flour Mills Delhi-6 AIR 1974 Delhi 12 where it was held that the trademark adopted by the defendant's Vijay Sudershan is similar to the plaintiff's trademark Sudershan.

16. The defendants cannot deny that the trademark EMPORIO enjoys immense goodwill and reputation in the trade and public at large and the trademark EMPORIO is an extremely well-known one deserving the highest degree of protection considering that EMPORIO is a registered trademark for a variety of goods. Therefore, the unauthorized use of a deceptively similar trademark such as SOHUMEMPORIO by an unauthorized trader would inevitably lead to erosion of the distinctiveness of the trademark EMPORIO. There is no plausible justification, whatsoever for the use of the trademark EMPORIO with the prefix SOHUM by the defendants with SOHUM being added to the whole of the plaintiff's trademark EMPORIO. SOHUMEMPORIO and EMPORIO are deceptively similar when compared and the adoption and use of the former by the defendants is malafide.

17. The impugned use of the trademark SOHUMEMPORIO by the defendants not only constitutes acts of misrepresentation, but also leads to misappropriation of the goodwill and reputation that vest in the plaintiff's trademark EMPORIO. It is an attempt by the defendants to derive benefit from the said goodwill and induce the customers to identify the mall of the defendants with that of the plaintiff and enjoy the reputation and goodwill of EMPORIO unlawfully. The adoption and use of the trademark SOHUMEMPORIO would inevitably lead to dilution of the distinctiveness, brand equity, goodwill, and reputation of the plaintiff's trademark EMPORIO.

From the material placed on the record, it is clear that that the use of the impugned trademark EMPORIO with the prefix SOHUM by the defendants result in blurring. The theory of "dilution by blurring" is that if one small user can blur the sharp focus of a famous mark to uniquely signify one source, then another will do so. There will come a point when significant injury is caused by the cumulative effect, not just by one user. If the customers or prospective customers seek the trademark EMPORIO with the prefix SOHUM having no connection with the plaintiff, a situation would arise where the unique and distinctive significance of the trade mark EMPORIO to identify and distinguish the plaintiff's merchandise will be diluted and weakened. Thus, the use by the defendants of the trademark SOHUMEMPORIO is absolutely illegal and is detrimental to the rights of the plaintiff. The trademark EMPORIO is exclusively associated with the plaintiff and the use thereof by the defendants and their colourable imitation would result in diminution and whittling away of the value of the plaintiff's trademark EMPORIO. The public is also likely to make a connection between the goods and business of the defendants and that of the plaintiff. This would result in "dilution by blurring" causing irreparable prejudice, damage and injury to the plaintiff.

18. The test of comparison of the marks side by side is not a sound one since a purchaser will seldom have the two marks actually before him when he makes his purchase. The eye is not an accurate recorder of visual detail and that marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole. While judging the question as

to whether the defendant has infringed the trademark by colourable imitation of the mark or not, the Court has to consider the overall impression of the mark in the minds of general public and not by merely comparing the dissimilarities in the two marks.

19. In K.R. Chinna Krishna Chettiar v. Sri Ambal & Co., AIR 1970 SC 146, the Supreme Court held that ocular comparison is not always the decisive test. Resemblance between the two marks must be considered with reference to the ear as well as to the eye. In this case, the Registrar held that the sound of "AMBAL" does not so nearly resemble the sound of "ANDAL" in spite of certain letters being common to both the marks, as to be likely to cause confusion or deception. The Registrar thus found that the marks were not deceptively similar. But on appeal both the Single Judge and Division Bench found deceptive similarity. The Supreme Court, dismissed the appeal, and held that there was a striking similarity and affinity of sound between the word "Andal" and "Ambal" and held that there was a real danger of confusion between the two marks.

20. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980, it was held in Para 28 that:

"28. The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. We have already pointed out that the suit by the

respondent complained both of an invasion of a statutory right under s. 21 in respect of a registered trade mark and also of a passing off by the use of the same make. The finding in favour of the appellant to which the learned Counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and other features and their general get-up together with the circumstance that the name and address of the manufactory of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent's claim that the appellant had passed off his goods as those of the respondent. These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of that mark or a colourable limitation thereof. While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods (Vide s. 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable limitation of a trade mark in a passing off action would also be such in an action for infringement of

the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that use of the defendant's mark is likely to deceive, but were the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an limitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the make would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff."

21. This concept of goodwill and the insistence of localized business has been traditional concept of passing off which sometimes is called as classic case of passing off. However, this concept of passing off has undergone changes due to advent of technology and modernization. For the said reason the tendency to insist localized goodwill has been transformed into proving reputation of a global character. All this would mean that courts entertaining the case of passing off can discount the localized existence of goodwill and the business in the territory specific if the substantial nature of reputation has been proved which has some kind of nexus in the territory where the protection is sought and the said concept in the modern language is called trans-border reputation whereas the

goodwill is always local in character, the concept of reputation is dynamic and is all encompassing. The reputation of a person can transcend boundaries by virtue of its advertisement in the newspapers, media circulation, expatriate reputation due to cultural akin ness and all other relevant factors which connect one countries business with that of another. This has been aptly explained by the Division Bench of this Court in the case of N.R.Dongre v. Whirlpool Corporation, AIR 1995 Delhi 300 wherein the S. Jagannath Rao, J. speaking for the Bench has approved the concept of trans-border reputation in the following words:-

"(25) Thus a product and its trade name transcend the physical boundaries of a geographical region and acquire a trans border or overseas or extraterritorial reputation not only though import of goods but also by its advertisement. The knowledge and the awareness of the goods of a foreign trade and its trade mark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial."

22. The test of confusion and deception in order to prove the case of passing off has been very well discussed in the case of Laxmikant V. Patel vs. Chetanbhai Shah And Another, a judgment delivered by the Supreme Court, reported in (2002) 3 SCC 65, wherein the Apex Court while considering a plea of passing off and grant of ad interim injunction held in no uncertain terms that a person may sell his goods or deliver his services under a trading name or style which, with the passage of time, may acquire a reputation or goodwill and may become a property to be protected by the Courts. It

was held that a competitor initiating sale of goods or services in the same name or by imitating that name causes injury to the business of one who has the property in that name. It was held that honesty and fair play are and ought to be the basic policy in the world of business and when a person adopts or intends to adopt a name which already belongs to someone else, it results in confusion, has the propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury. It was held that the principles which apply to trade mark are applicable to trade name also. Relevant para 10 of the aforesaid judgment reads as under:-

"The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."

In this case, the Apex Court further observed that:

"Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently."

23. In another case of passing off, a Division Bench of this Court in the case of B.K.Engineering Co. vs. Ubhi Enterprises and Anr.,

reported in 1985 PTC 1, in para 57 inter alia held that trading must not only be honest but must not even unintentionally be unfair.

24. Thus, it appears to the Court that the plaintiff has made a strong case of passing off in its favour. In case the defendants are allowed to use the similar name, it would amount to passing off their business and services as that of the plaintiff. No justification has been given by the defendants to use similar name. It appears that the defendants were aware about the name, goodwill and reputation of the plaintiff's name EMPORIO at the time of its adoption. Thus, such user by the defendants is tainted and dishonest.

25. Earlier the plaintiff has taken actions against the unauthorized use of its registered trademark EMPORIO and had also instituted civil suit against third party using CITY EMPORIO for mall. This Court in CS (OS) No. 2040 of 2011 granted injunction in favour of the plaintiff restraining the other party from using the trade mark CITY EMPORIO or any other trademark which may be deceptively similar to the plaintiff's trademark EMPORIO and the suit was disposed of in favour of the plaintiff.

26. The jurisdiction in the suit has been invoked by the plaintiff to entertain and try the present suit under the provisions of Section 134 of The Trade Marks Act, 1999 since the plaintiff is carrying on business at Delhi and within the territorial jurisdiction of this Court. The cause of action has also arisen within the local limits of this Court as the defendants are propagating their business and advertising their mall through sponsored articles in newspaper including the newspaper The Telegraph (Calcutta Edition) having

circulation in Delhi apart from sponsoring articles in e-newspapers which can be accessed from the local limits of this Court. The defendants are evidently targeting the public at large located at Delhi and promoting their mall and business for economic gains.

27. Accordingly, the suit of the plaintiff is decreed in terms of prayers (a) and (b) of para 30 of the plaint, thereby injunction restraining the defendants, their directors or assigns in business, franchisees, licensee, distributors and agents from using the impugned trade mark SOHUM EMPORIO either upon the mall, its website or in the course of the trade in advertising, selling, offering for sale, directly or indirectly dealing in real estate business or any other products as may be identical to or deceptively similar with the plaintiff's registered trademarks EMPORIO amounting to infringement of plaintiff's registered trade mark as enunciated in the plaint and passing off their business as that of the plaintiff. Punitive damages

28. With regard to the relief of damages as claimed by the plaintiff in para 30(d) of the plaint, this 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."

29. Further, 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."

30. In view of the facts of the present case, this Court is of the opinion that in the present case Rs.2 lac as punitive damages be granted in favour of the plaintiff and against the defendants in terms of para 30(d) of the plaint. Ordered accordingly.

31. The other reliefs are not pressed by the plaintiff. The same are accordingly rejected.

32. Decree be drawn accordingly.

(MANMOHAN SINGH) JUDGE SEPTEMBER 28, 2015