Delhi High Court
Mother Dairy Fruit & Vegetable ... vs S.K. Raheem & Anr on 24 December, 2016
$
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 7th December, 2016
Pronounced on:24th December, 2016
+ CS (OS) 2399/2010
MOTHER DAIRY FRUIT & VEGETABLE PVT. LTD
...... Plaintiff
Through: Mr. Nischal Anand, Advocate with
Mr. Aman Taneja, Advocate
Versus
S.K. RAHEEM & ANR ..... Defendants
Through: Ex-parte
CORAM:
HON'BLE MR. JUSTICE R.K.GAUBA
JUDGMENT
1. This suit was instituted in November, 2010 seeking the reliefs
of permanent injunction, damages, rendition of accounts, delivery up,
etc. by the plaintiff company it being a wholly owned subsidiary of
National Dairy Development Board (NDDB), a body corporate
constituted under the National Dairy Development Board Act, 1987,
having its registered office at "Mother Dairy", Patparganj, Delhi-110
092, within the jurisdiction of this court.
2. The claim in the suit is founded, inter alia, on the trademark
"MOTHER DAIRY", registered in the name of the plaintiff for sale of
its various products in the nature of liquid milk, dahi (curd), ice
creams, dairy whitener and butter etc., it having been originally
adopted in 1974 and registered in different classes as under:-
TRADE/LABEL MARK REG CLASS
NO
1307520 29 & 30
1308506 30
1308507 30
1308508 30
1308509 30
1308510 30
947721 30
956470 29
956474 30
1160157 30
MOTHER DAIRY - 1196582 29
SUNDAY MAGIC -
JAMAICAN ALMOND
FUDGE
MOTHER DAIRY - 1196584 29
SUNDAY MAGIC
HAZELNUT SWIRL
MOTHER DAIRY- 1196585 29
SUNDAE MAGIC
COFFEE EXCESS
MOTHER DAIRY - 1196586 29
SUNDAE MAGIC
SHAHI MEVA MALAI
MOTHER DAIRY - 1196587 30
SUNDAE MAGIC
COFFEE EXCESS
MOTHER DAIRY - 1196588 30
SUNDAE MAGIC
HAZELNUT SWIRL
MOTHER DAIRY - 1196588 30
SUNDAE MAGIC
HAZELNUT
3. The plaintiff also relies on its trademark/logo which has been in
use for marketing its products since 2003, prominently displayed and
visible on all its goods serving to act as a corporate device/symbol,
created on its behalf by a consultant for remuneration, the plaintiff
having expended considerable resources towards the promotion and
advertisement of its goods thereunder, it being the first owner of the
copyright in the artistic work of the "MOTHER DAIRY (Blue Logo)"
as under:-
4. As per the averments made in the plaint, the plaintiff company
was financed by NDDB for manufacturing and marketing of milk and
milk products under the Operation Flood programme of the Central
Government and was commissioned in the year 1974 and has emerged
as a brand at the national level through its sales and distribution
networks, sourcing significant part of its requirements of liquid milk
from dairy cooperatives, its constant endeavor being to ensure that
milk producers and farmers regularly and continuously receive market
prices for their products offered at competitive prices and to uphold
institutional structures that empower milk producers and farmers
through processes that are equitable.
5. It claimed that the processing of milk at the facilities of the
plaintiff is controlled by process automation whereby state-of-the-art
microprocessor technology is adopted to integrate and completely
automate all functions of the milk processing areas thereby ensuring
high product quality, reliability and safety, it being an IS/ISO-9002,
IS-15000 HACCP and IS-14001 EMS certified organization, its
Quality Assurance Laboratory (QAL) having been certified by
National Accreditation Board for Testing and Calibration Laboratory
(NABL) of the Department of Science and Technology, Government
of India. The network for distribution and sale of the plaintiff is
described in the suit as inclusive of around 14,000 retail outlets and
845 exclusive outlets, its market share in the branded sector in Delhi
alone being to the extent of 66%.
6. The plaintiff claimed that for purposes of variants of its popular
milk products - such as full cream milk, standardized milk, toned
milk, doubled toned milk, skimmed milk and cow milk, it uses unique
packaging with respect of the wave design that includes the afore-
quoted logo.
7. The cause of action for the present suit against the defendants
was claimed on the averments that in June, 2010, the plaintiff came
across certain products sold and offered for sale or marketed by the
defendants bearing the mark "VINAY MILK" and label/logo and
packaging/trade dress which bears a striking similarity to the trade
mark/logo and trade dress/packaging of the plaintiff‟s products. The
said similarity, described in the plaint to be confusing and deceptive is
illustrated by the scanned images of the two marks as under:-
MOTHER DAIRY's LOGO VINAY MILK's LOGO
8. It is the plaintiff‟s case that defendant no.1 is engaged in
manufacture, sale and distribution of the impugned products under
identical or deceptively similar trade mark/label/logo in
packaging/trade dress that is blatant rip off of the one of the plaintiff,
having a manufacturing facility in the locality in the city of Hyderabad
while defendant no.2 appears to be an agency engaged for marketing
the said impugned products. The plaintiff, prior to institution to a suit
had sent a „cease and desist‟ notice dated 13.07.2010 to the defendants
informing them about the plaintiff‟s right to the trade marks/logo and
about its packaging/trade dress requiring the infringing activity to be
stopped. The plaint stated that the first defendant sent a vague reply
dated 03.08.2010 expressing willingness to change the packaging of
their products but vaguely denying the case of the plaintiff about the
deceptive similarity. This was followed by a fresh communication by
the plaintiff dated 21.08.2010 reiterating the claim to the rights under
the registered trade mark and the copy right to the logo and the
packaging/trade dress to which the defendants failed to give any
response.
9. The plaintiff instituted the suit, inter alia, alleging that the
impugned acts of the defendants in copying and slavishly reproducing
the trademark/logo/label and packaging of the plaintiff so intended to
harm prejudice to the plaintiff business, rights and interests,
amounting to tarnishing and dilution of its trade mark, it being an
attempt to pass off all the goods of the defendants as those of the
plaintiff, have continued and been persisted with.
10. Thus, the plaintiff prayed for reliefs in the nature of permanent
injunction to restrain the defendants, their partners or proprietors, their
principal officers, servants and agents from manufacturing, selling,
offering for sale or distribution, advertising, directly or indirectly
dealing in milk products or goods of any description bearing or using
on its product packaging / label the Mother Dairy trademark/label or
any mark/label that is identical to the plaintiff‟s trademark or any
other mark/label which is deceptively similar to the plaintiff‟s
trademark/label amounting to infringement of registered trademarks
and/or in any manner whatsoever doing any other thing as may be
likely to cause confusion or deception amounting to passing off their
products and business as and for those of the plaintiff; and from
infringing the plaintiff‟s copyright in the artistic work in its Mother
Dairy logo including the artistic work in its product packaging/trade
dress by reproducing the said artworks in any manner for its products
amounting to infringement of copyright or from using in any manner,
the impugned mark or any other deceptively similar mark or any
identical mark as that of the plaintiff‟s Mother Dairy trademark/label
including its logo/packaging so as to take unfair advantage of or to the
detriment of the distinctive character and reputation of the plaintiff‟s
registered and well known trademark including but not limited milk
products and goods of any description, so as to cause dilution or
tarnishment of the plaintiff‟s trademark and/or causing initial interest
of confusion. The plaintiff also prayed for a direction to the
defendants for delivery up of all printed matter, including packaging,
stationery, dyes, blocks, cartons, labels, etc. bearing the impugned
trademark and packaging as mentioned in the plaint to the authorized
representative of the plaintiff for the purposes of destruction/erasure,
and further for rendition of accounts of profits made by the defendants
on account of use of the impugned trademark besides a decree for the
amount so found due along with damages in the sum of
Rs.20,00,100/-, in addition to costs of the suit.
11. By order dated 26.11.2010 while issuing summons on the plaint
to the defendants, an ad interim ex parte injunction was granted on the
application (IA No.15899/2010) under Order 39 Rules 1 and 2 of the
Code of Civil Procedure, 1908 (CPC) in the following terms:-
".....the defendants are hereby restrained from copying
the plaintiff's logo Mother Dairy with the distinctive blue
and white colour combination and also restrained from
marketing any packaging identical or similar to that of
the plaintiff, till the next date of hearing. It is clarified
that the defendants are free to otherwise market their
products under the VINAY MILK logo but in no manner
representing similarity with the plaintiff's mark. ..."
12. The proceedings recorded on the file of this civil suit indicate
that defendant no.1 was duly served and had even put in appearance
through counsel on 08.02.2011. In spite of the opportunities granted,
no written statement was filed on his behalf. The subsequent
proceedings reveal that the counsel engaged by defendant no.1
pleaded no instructions and sought to be discharged of his
responsibility. In spite of the court notice, defendant no.1 would not
appear. Thus, while the counsel who was engaged by him was
discharged by proceedings recorded on 10.04.2013, the defendant no.1
was set ex parte by proceedings dated 28.02.2015. Defendant no.2
also failed to appear in spite of service and, thus, was proceeded ex
parte vide order dated 28.07.2014.
13. By order dated 14.05.2015, the plaintiff was thereafter called
upon to prove its case by adducing ex parte evidence.
14. The plaintiff examined its solitary witness Mr. Naveen Nischal
Rastogi (PW-1), Deputy General Manager (Legal), on the strength of
his affidavit (Ex.PW-1/A). By the said affidavit in evidence, the
plaintiff‟s witness has proved the averments in the plaint, to which
there is no contest. In these circumstances, there is no reason why the
case of the plaintiff should be disbelieved. It may be noted here that
the plaintiff has proved that it is the owner of the trade mark
"MOTHER DAIRY" it being registered in its favour (vide Ex. PW1/9
to 26), and also has secured the copyright registration of the blue
trademark/logo, i.e., vide Ex. PW-1/28). The evidence
establishes that the "MOTHER DAIRY (Blue logo)" even without the
text therein has acquired distinctiveness to establish a connection with
the products of the plaintiff in the minds of the consumers. Therefore,
along with the trademark "MOTHER DAIRY", the "MOTHER
DAIRY (Blue Logo)" too has acquired the status of a "well known"
trademark.
15. As noticed earlier, the afore-mentioned trademark "MOTHER
DAIRY", and the "MOTHER DAIRY (Blue Logo)" are used by the
plaintiff on the packaging of its diverse range of products, promotional
material. The logo/mark adopted by the defendants, it being
(vide Ex.PW-1/37) is clearly deceptively and confusingly similar to
the logo/mark used by the plaintiff on its products and, thus, infringes
the rights of the latter. The possibility of confusion being caused by
the defendants‟ adoption of the impugned mark which is deceptively
similar to the plaintiff‟s MOTHER DAIRY (blue logo) and the trade-
dress used for its packaging is very high, inter alia, because the
defendant is selling identical products under a deceptively similar
trademark and packaging, through the same trade channels.
16. The plaintiff has, thus, proved that the defendants by their
adoption and use of the impugned mark and the packaging/trade dress
have intended to pass off their goods as those of the plaintiff in clear
violation of the plaintiff‟s common law as well as statutory rights in
the MOTHER DAIRY (blue logo) trademark and the trade dress used
for its milk products resulting in harm and prejudice to the plaintiff‟s
business, rights and interests apart, from amounting to tarnishment and
dilution of its reputation and goodwill entailing for it huge losses and
damages.
17. Thus, a case for permanent injunction against copying or
infringing of plaintiff‟s trademark and logo "Mother Dairy" with the
distinctive blue and white colour combination and packaging identical
or similar to that of the plaintiff has been brought home against the
defendants. Permanent injunction to that effect is, thus, granted in
favour of the plaintiff and against the defendants. It is, however,
clarified that the defendants are not injuncted to otherwise market their
products under the trade name "VINAY MILK", the restraint order
being only against user of logo having similarity to the one of the
plaintiff‟s mark.
18. As noted above, the defendants did not appear to contest the suit
in spite of due notice. The dis-interest showed by the defendants in
defending the impugned acts in these proceedings was to the extent
that even written statement was not filed by either of them. No
accounts were rendered voluntarily by the defendants. The plaintiff
did not take any steps to have the premises of the defendants inspected
to gather the printed matter including packaging, stationery, dyes,
blocks, etc. or have the same inventorized or seized or to summon the
account books of the defendants at the stage of trial. It rather relied on
the affidavit of its solitary witness (PW-1) whereby there is no
material submitted on the basis of which existence of such infringing
material could be confirmed or the profits that might have been
unlawfully earned by the defendants from the sale or marketing of the
infringing products could be computed. Thus, there is nothing before
the court on which the losses suffered by the plaintiff could be
assessed or damages to that extent granted. A vague declaration by
PW-1 in (para 46 of) his affidavit (Ex.PW-1/A) that the plaintiffs have
suffered damages to the tune of at least Rs.20 lacs is not supported by
any material. In these circumstances, no relief in the nature of
direction for delivery up, payment of the profits made by the
defendants by use of the infringing mark/logo/trade dress or for
damages can be granted.
19. The suit is partly decreed in above terms with costs in favour of
the plaintiff.
20. Decree sheet be drawn accordingly.
(R.K. GAUBA)
JUDGE
DECEMBER 24, 2016
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