Delhi High Court
World Book Company (P) Ltd vs World Book Inc & Anr. on 12 May, 2016
Author: Sanjeev Sachdeva
*IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on: 29th February, 2016
Judgment Delivered on: 12th May, 2016
+ FAO(OS) 15/2015
WORLD BOOK COMPANY (P) LTD ..... Appellant
Versus
WORLD BOOK INC & ANR. .....Respondents
Advocates who appeared in this case:
For the Appellant: Mr Tapan Chaudhary, Advocate.
For the Respondents: Mr Amarjit Singh, Mr Manik Dogra and Mr Anshuman Sharma,
Advocates.
CORAM:
HON'BLE MR. JUSTICE BADAR DURREZ AHMED
HON'BLE MR. JUSTICE SANJEEV SACHDEVA
JUDGMENT
SANJEEV SACHDEVA, J
CM No. 13503/2015 ((correction of name of advocate in the order
dated 16.04.2015)
This is an application filed by the appellant seeking correction
of the name of the advocate of the appellant in the order dated
16.04.2015.
The application is allowed, the name of the advocate of the
Appellant Mr. Tapan Chaudhary shall be read in the order dated
16.04.2015 as having appeared for the appellant in place of Mr
=====================================================================
A.A.Aughssian and Mr Sumit Sarna, Advocates. The application is
disposed of.
FAO(OS) 15/2015
1. The appellant, defendant in the suit, has filed the present appeal
impugning the order dated 15.10.2014, whereby the learned Single
Judge has confirmed the ad interim order dated 27.05.2013, by which
order the appellant had been restrained from using the trademark
"WORLD BOOK" or any other mark that is deceptively similar to the
plaintiff's registered trademark "WORLD BOOK" in respect of
printing/publishing of books and other reference materials and
educational products either in print or in software version as also on
their website. By the said order, the learned Single Judge has held
that use of the words "WORLD BOOK" as part of the corporate name
and use of the domain name "worldbookcompany.in" is likely to
cause confusion and deception.
2. The respondents had filed the subject suit for permanent
injunction, damages for infringement of the trademark "WORLD
BOOK" and passing off, dilution against the appellant. On
27.05.2013, an ex-parte ad interim injunction, as referred above, was
granted in favour of the respondents.
3. The contention of the respondents (plaintiffs in the suit) was
that the respondent No.1 is a publisher of encyclopedias and other
=====================================================================
reference materials in over 30 countries worldwide and in more than
12 languages. Respondent No.2, a company incorporated in India,
was responsible for sales, marketing and distribution of goods and
services under the trademark/trade name "WORLD BOOK". As per
the respondents, they are the largest selling print encyclopedia in the
world and are well known in the business of publishing encyclopedias
and other educational reference materials. Since its adoption in 1917,
the respondents' "WORLD BOOK" encyclopedia is considered as the
number one selling print encyclopedia in the world. In addition to the
use as a trademark, the mark "WORLD BOOK" forms part of the
corporate identity and trading style of respondent No.1 as also its
subsidiaries/affiliate companies throughout the world. It is contended
that their encyclopedias and other reference materials under the
trademark/trade name "WORLD BOOK" are available in print,
software version as also online and are accessible on
'worldbookonline.com'.
4. It is contended that the respondents have registration of
trademark "WORLD BOOK" in over 27 countries in the world and in
India. The respondents are registered proprietors of the trademark
"WORLD BOOK" in respect of a wide variety of goods and services
and the said marks are valid and subsisting. It is contended that the
products and services of the respondents under the said trademark
have been commercially available in India since 1993.
=====================================================================
5. With regard to the appellant, it was contended that it was only
in the first week of September 2012 that the respondents discovered
that the appellant had registered a Company under the name of
"WORLD BOOK COMPANY PVT. LTD". It was also discovered
that the appellant had registered a domain name
'worldbookcompany.in'. It is contended that the use of the
trademark/trade name "WORLD BOOK" by the appellant amounted
to an infringement of the registered trademark of the respondent.
6. Per contra, the defence taken by the appellant in the written
statement is that the words "WORLD BOOK" are commonly used
words found in the English dictionary and no one can have exclusive
rights to use these words which are not coined. It is contended that
there is no confusion or deception. It is further contended that the
respondent No.2 was registered in India only after the registration of
the appellant. The appellant is in the business of printing and
publishing books and the respondents only deal in publishing
encyclopedias and, as such, there was no question of any resemblance
or deception.
7. The learned Single Judge, after a detailed examination of
various judgments of the Supreme Court, this Court and other High
Courts, has confirmed the order dated 27.05.2013 restraining the
appellant from using the trademark "WORLD BOOK" or any other
mark deceptively similar to the respondents' registered trademark
=====================================================================
"WORLD BOOK" in respect of printing/publishing of books and
other reference material and educational products either in print or in
software version as also on their website.
8. The learned Single Judge has noticed the law that infringement
of a registered trademark is caused by the use of the mark which is
identical or nearly resembling the registered trademark in respect of
the same, similar or different goods in terms of the provisions of the
Trademarks Act. The remedy of infringement is statutorily conferred
upon the registered proprietor. Passing of action is an action in
common law which is essentially the protection of goodwill and
reputation which the person has created by virtue of carrying out the
business activities under a particular name and style or under a brand
name and the said action is an action against deceit, and to prevent
any misrepresentation caused amongst public. It is immaterial
whether the misrepresentation is innocent or deliberate. Actual
deception is not necessary. Even an innocent user may amount to
deception.
9. The learned Single Judge has held that it is an admitted position
that the respondent No.1 is the registered proprietor of the trademark
"WORLD BOOK" in respect of a wide variety of goods and services.
A reference has been made to various registration certificates
worldwide. The learned Single Judge has further noticed that material
has been placed on record to show that the product and services under
=====================================================================
the trademark "WORLD BOOK" have been commercially available
in India since 1993. Extensive advertisements and promotions have
been carried out by the respondents of their products under the
trademark "WORLD BOOK" in various countries including India. It
has been noted that the appellant is in similar type of business of
publishing books. A reference has been made to Section 29(5) of the
Act to hold that in case a registered trademark is used by a party, who
is not the registered proprietor thereof, as a dominant and essential
feature of the corporate name and trading style, it amounts to
infringement. The Single Judge has rejected the contention of the
appellant that they had incorporated the Company with the name
"WORLD BOOK" prior to incorporation of the respondent No.2, as
meritless. The contention has been rejected based on the various
documents placed on record by the respondents. The respondents have
placed on record sale invoices that prima facie establish its use,
goodwill and reputation of the trademark "WORLD BOOK" from
dates much prior to the date of incorporation of the appellant
Company. Distribution agreement dated 01.07.1993 has also been
placed on record whereby non-exclusive distribution rights were
granted for the Territory of India including Jammu & Kashmir.
Besides, agreement dated 25.02.2004 has also been placed on record
to establish user in India of the subject trademark. Copies of invoices
evidencing sale of respondents' publication from the year 1997 in
India have also been produced. News articles published in various
=====================================================================
journals, newspapers have been relied upon by the respondents.
Reliance has been placed on World Book Encyclopedia special
volume Indian edition, 1999. Excerpts of India Today dated
21.06.1999 and other documents pertaining to 2006-2007 have also
been placed on record. Based on the documentary evidence produced
on record, the learned Single Judge, prima facie, found that the
respondents were not only prior in adoption and use of the mark
"WORLD BOOK" in respect of and in relation to publication business
but the said mark had widely been used and was highly reputed in the
field of publication. The learned Single Judge further found that the
respondent No.2 was a wholly owned subsidiary of respondent No.1
and the mere fact that it was incorporated few months later than the
incorporation of the appellant was of no consequence.
10. The learned Single Judge has rejected the contention of the
appellant that the mark "WORLD BOOK" is disclaimed in the
respondents' trademark "WORLD BOOK". It is no longer res integra
that the trademark has to be considered as a whole and where a
distinctive mark is registered as a whole, disclaimer in respect of part
of the mark would merely imply that it does not confer any exclusive
statutory rights to the proprietor of the mark to claim the use of
disclaimed word. The respondents are claiming rights in the mark
"WORLD BOOK" as a whole and not in the disclaimed portion
"Book" per se. The learned Single Judge has held that there is no
=====================================================================
justification on the part of the appellant to use the trademark
"WORLD BOOK" as a part of its corporate name.
11. Relying on various judicial pronouncements, the learned Single
Judge has held that a domain name is more than a mere internet
address. It identifies the internet site to those who reach it, much like
a name identifies a person, corporate name identifies a corporate
identity. Domain names are also entitled to protection as a trademark.
Prima facie, the learned Single Judge has held that use of the domain
name 'worldbookcompany.in' is also likely to cause confusion and
deception in the minds of unwary customers.
12. We find that the learned Single Judge has extensively
considered the law on the subject. Sufficient material has been placed
on record by the respondents to show priority in use. The respondent
No.1 has been using the said trademark since the year 1917. The
respondent No.1 has registrations in over 27 countries and is
admittedly the prior adopter and user of the mark "WORLD BOOK".
The presence of the respondents in India prior to the appellant has
been prima facie established by the extensive material placed on
record. The adoption and use of the identical trademark "WORLD
BOOK" by the appellant would clearly cause confusion in the minds
of unwary purchasers.
13. On the basis of the material placed on record and the
=====================================================================
examination of law, the learned Single Judge has arrived at the
conclusion that the respondents have been able to show a strong prima
facie case for grant of an ad interim injunction. We agree with the
learned Single Judge and therefore, no ground for interference with
the impugned order is called for. The use of the mark "WORLD
BOOK" by the appellant is likely to cause confusion. Even the use of
the mark "WORLD BOOK" as a part of the corporate name and part
of its domain name is likely to cause confusion and deception. Even
if one were to assume that the adoption by the appellant was honest,
the same cannot be permitted to continue as there is a likelihood of
confusion. Publishing of encyclopedias and publishing books are
similar activities. It cannot be said that the two are different and
unrelated in the trade. The submission of the appellant that the
appellant and respondents are in different fields of work and deal with
different products is not sustainable.
14. In view of the above, we find no merit in the appeal, which is
dismissed, leaving the parties to bear their own costs.
SANJEEV SACHDEVA, J.
MAY 12, 2016 BADAR DURREZ AHMED, J.
st
=====================================================================
