Delhi High Court
Insecticides (India) Limited vs Raja Pathak & Anr on 25 October, 2016
$~14.
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 1639/2015
% Judgment dated 25th October, 2016
INSECTICIDES (INDIA) LIMITED ..... Plaintiff
Through Mr. Shobhit Agarwal, Advocate
versus
RAJA PATHAK & ANR .... Defendants
Through None
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S. SISTANI, J (ORAL)
1. None for the defendants. None was present on the last date of hearing.
Defendants are accordingly proceeded ex parte.
2. The plaintiff has instituted the present suit praying inter alia for
permanent injunction against the defendants restraining them from
infringing its trademark, copyright, passing off, rendition of accounts,
delivery up, damages etc.
3. Counsel for the plaintiff states that the plaintiff is a public limited
company, founded in the year 1996 and as on date, it is one of the
premier names in the crop protection industry. With more than 120
formulation products and 15 technical products, the plaintiff
manufactures all types of weedicides, fungicides and plant growth
regulators for all types of crops and for households. The plaintiff
claims to be investing heavily in the research and development
('R&D') for the advancement of its manufacturing facilities and it has a
state of the art in-house R&D Centre at Chopanki, Rajasthan. The
CS(OS) 1639/2015 Page 1 of 9
plaintiff‟s manufacturing plants are compliant of ISO 9001:2008, ISO
14001:2004 and OHSAS 18001:2007 standards.
4. Counsel for the plaintiff submits that the plaintiff manufacturers and
markets its products under various distinctive trademarks and labels
like „Lethal‟, „Lethal Super‟, „Lethal Super-505‟, „Victor‟, „Miltaf‟,
„Prism‟, „Milthion‟, „Monocil‟, „Hijack‟ etc. One of the most popular
trade mark of the plaintiff is „Lethal‟. Under the said mark „Lethal‟ a
range of products are sold and marketed by the plaintiff under many
variants of the mark including „Lethal‟, „Lethal Super‟, „Lethal line‟,
„Lethal Super-505‟, „Lethal TC‟, „Lethal Instant Action‟, „Lethal RTU‟
etc. Learned counsel submits that the mark „Lethal‟ was originally
adopted by one Montari Industries Limited in the year 2002, whereafter
all rights, title and interest including the goodwill in the said mark was
assigned in favour of the plaintiff by way of a Deed of Assignment
dated 10.03.2003.
5. Counsel for the plaintiff submits that the plaintiff is the registered
proprietor of the „Lethal‟ range of trademarks in India as detailed in
para 9 of the plaint. In addition to the said registrations, the plaintiff‟s
application for the trademark „Lethal Super - 505‟ (Label) is pending
for registration since July, 2003.
6. While issuing summons, this Court had restrained the defendant from
manufacturing, selling, distributing any product bearing the mark
„Lethal Supar-505‟ or any other identical or deceptively similar
trademark.
7. Defendants had entered appearance and also filed their written
statement. In the order of 12.10.2015, it was observed by the Joint
Registrar that although the written statement has been filed, no
application for condonation of delay has been filed. This was also
CS(OS) 1639/2015 Page 2 of 9
noticed by the Joint Registrar on the next date of hearing and the matter
was placed before the Court. On 18.11.2015, the matter was adjourned
on the ground that the parties were negotiating an out of court
settlement.
8. On 04.12.2015, the following order was passed:
"Learned counsel appearing on behalf of defendants in view
of order passed on 18 th November, 2015 submits that his
clients are agreeable to pay the fee of the Local
Commissioner of Rs. 75,000/- as well as the cost of the suit to
the tune of Rs. 25,000/-. He is also agreeable for decree of
permanent injunction. Let affidavit be filed in this regard
within one week from today. At the same time, learned
counsel for the plaintiff seeks one week time to take
instructions in view of the suggestion given by the learned
counsel for the defendants."
(Emphasis Supplied)
9. On the next date of hearing, i.e. 17.12.2015, the defendants resiled from
the statement given by their counsel and the following order was
passed:
"Learned counsel for the defendants states that as far as the
decree for permanent injunction is concerned, her clients are
ready but they are not in a position to pay Rs. 1 lac towards
the cost and damages. Thus the matter has to be decided on
merits. Learned counsel for the plaintiff seeks time to take
instructions in this regard."
(Emphasis Supplied)
10. When the matter came up for hearing on 16.05.2016, the Court
suggested that defendant should pay Rs. 50,000/- to the plaintiff while
suffering a decree of injunction. Thereafter, both counsel had sought an
adjournment to take instructions and the matter was listed for
26.09.2016.
11. On 26.09.2016, none was present on behalf of the defendant. None is
present even today.
CS(OS) 1639/2015 Page 3 of 9
12. The written statement filed by the defendants has not been taken on
record owing to the delay in filing and in the absence of an application
for condoning the same as noticed in the order dated 12.10.2015. Since
the defendants have not filed the written statement nor are being
represented, the plaintiff prays that the present suit may be decreed
under Order 8 Rule 10 of the Code of Civil Procedure.
13. I have heard the counsel for the plaintiff and perused the material on
record.
14. The plaintiff has filed the present suit seeking protection of his mark
„Super Lethal-505‟ and copyright in the label of the „Super Lethal-505‟
bottle, which the plaintiff claims to constitute original artistic work.
The plaintiff markets insecticide under the said brand. In January 2015,
the plaintiff learnt that the defendants were engaged in sale of
counterfeit products under the mark „Lethal Supar-505‟. Further the
product being offered by the defendants is a slavish imitation of the
plaintiff‟s label including the get-up, the colour pattern, etc. The
primary difference between the marks of the two products is of merely
one single letter, the „e‟ is replaced by „a‟ in the product of the
defendants, i.e. the plaintiff‟s product bears the brand „Lethal Super-
505‟ while the defendants‟ bears the brand „Lethal Supar-505‟. A
Local Commissioner was also appointed in the matter, whose report
affirms the contents of the plaint.
15. The plaintiff is the registered proprietor of the mark „Lethal Super‟
having the registration no. 1143625 dated 16.10.2002.
16. In respect of comparison of marks for determining infringement, a
coordinate bench of this Court in The Royal Bank of Scotland Group
PLC v. Sharekhan Limited, 216 (2015) DLT 197 after taking into
consideration numerous judicial pronouncement, it was held as under:
CS(OS) 1639/2015 Page 4 of 9
"35. 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 marks are
remembered by general impression or by some significant
detail rather than by any photographic recollection of the
whole. While judging the question as to whether the
defendants have infringed the trade mark 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.
36. In order to establish infringement, the main ingredients
of Section 29 of the Act are that the plaintiff's mark must be
registered under the Act; the defendant's mark is identical
with or deceptively similar to the registered trade mark; and
the defendant's use of the mark is in the course of trade in
respect of the goods covered by the registered trade mark.
The rival marks are to be compared as a whole. Where two
rival marks are identical, it is not necessary for the plaintiff
to prove further that the use of defendant's trademark is
likely to deceive and cause confusion as the registration
shows the title of the registered proprietor and the things
speak for themselves. In an infringement action, once a mark
is used as indicating commercial origin by the defendant, no
amount of added matter intended to show the true origin of
the goods can effect the question. If Court finds that the
defendant's mark is closely, visually and phonetically similar,
even then no further proof is necessary.
Test of comparison of rival marks
37. (i) In Pianotist Co. Ltd.'s application, 1906 (23) R.P.C.
774, it was observed as follows :
"You must take the two words. You must judge of them,
both by their look and by their sound. You must
consider the goods to which they are to be applied.
You must consider the nature and kind of customer
who would be likely to buy those goods. In fact, you
must consider all the surrounding circumstances; and
you must further consider what is likely to happen if
each of those trade marks is used in a normal way as a
CS(OS) 1639/2015 Page 5 of 9
trade mark for the goods of the respective owners of
the marks. If, considering all those circumstances, you
come to the conclusion that there will be a confusion-
that is to say, not necessarily that one man will be
injured and the other will gain illicit benefit, but that
there will be a confusion in the mind of the public
which will lead to confusion in the goods-then you may
refuse the registration, or rather you must refuse the
registration in that case."
...
(iii) In the case of Sandow Ltd.'s Application, 31 R.P.C. 205
it was clarified that among the surrounding circumstances to
be taken into account, one of considerable importance is the
imperfect recollection a person is likely to have of a mark
with which he is only vaguely acquainted. While approving
the above tests for comparison of the two word-marks, the
Supreme Court held in F. Hoffmann-La Roche & Co. Ltd. Vs.
Geoffrey Manner & Co. Pvt. Ltd. (1969) 2 SCC 716 that:
"It is also important that the marks must be compared
as whole. It is not right to take a portion of the word
and say that because that portion of the word differs
from the corresponding portion of the word in the
other case there is no sufficient similarity to cause
confusion. The true test is whether the totality of the
proposed trade mark is such that it is likely to cause
deception or confusion or mistake in the minds of
persons accustomed to the existing trade mark."
(iv) In the case of Tokalon Ltd. v. Devidson and Co. 32
R.P.C. 133, it was observed that:
"...We are not bound to scan the words as we would in
a question of compatriotic literarum. It is not a matter
for microscopic inspection, but to be taken from the
general and even casual point of view of a customer
walking into a shop."
...
(vii) In the decision reported in AIR 1951 Bom 147, James
Chadwick & Bros. Ltd. v. The National Sewing Thread Co.
Ltd. Chagla C.J. and Bhagwati, J.; referring to the words
"likely to deceive or cause confusion" in section 10 of the Act
observed as follows:-
"Now in deciding whether a particular trade mark is
likely to deceive or cause confusion, it is not sufficient
merely to compare it with the trade mark which is
already registered and whose proprietor is offering
opposition to the registration of the former trade mark.
What is important is to find out what is the
distinguishing or essential feature of the trade mark
already registered and what is the main feature or the
main idea underlying that trade mark, and if it is found
that the trade mark whose registration is sought
contains the same distinguishing or essential feature
or conveys the same idea, then ordinarily the Registrar
would be right if he came to the conclusion that the
trade mark should not be registered. The real question
is as to how a purchaser, who must be looked upon as
an average man of ordinary intelligence, would react
to a particular trade mark, what association he would
form by looking at the trade mark, and in what respect
he would connect the trade mark with the goods which
he would be purchasing. It is impossible to accept that
a man looking at a trade mark would take in every
single feature of the trade mark. The question would
be, what would he normally retain in his mind after
looking at the trade mark? What would be the salient
feature of the trade mark which in future would lead
him to associate the particular goods with that trade
mark?"
..."
(Emphasis Supplied)
17. Applying the law to the facts of the present case, it is seen that the good
are identical and the marks are extremely similar. The only difference
pertains to one alphabet/character. Even further, upon analysis of the
bottles of the plaintiff‟s and the defendants‟, as shown in paragraphs 11
and 20 of the plaint as well as the report of the local commissioner, it is
clear that the shape and the get-up of the label/bottle of the product of
the defendants is also a slavish imitation of that of the plaintiff.
Therefore, there can be no doubt that the use of the mark „Lethal Supar-
505‟ by the defendants is likely to cause confusion with the mark of the
plaintiff „Lethal Super‟; especially when the goods are the same. I am
of the view that the adoption and use of the mark by the defendants was
to free-ride upon the reputation of the plaintiff.
18. In view of the aforegoing and in view of the categorical stand taken by
the learned counsel for the defendant on 04.12.2015, the present suit is
decreed in favour of the plaintiff.
19. On 04.12.2015, the counsel for the defendant had submitted that his
clients were willing to pay the fee of the Local Commissioner of Rs.
75,000/- as well as cost of the suit to the tune of Rs. 25,000/- and were
ready to suffer a decree for permanent injunction. But on the next date
of hearing, the counsel partially resiled from his previous statement to
the extent that the defendants were no longer ready to pay damages.
Even otherwise, in the absence of a written statement, the averments
made in the plaint are taken to be correct. I have tested the averments
of the plaint and considered their correctness.
20. In the case of Relaxo Rubber Limited & Anr. v. Selection Footwear &
Anr., AIR 2000 Del 60, injunction and damages were granted under
Order VIII Rule 10 in a case for infringement of copyright and trade
mark.
21. The present suit is also a commercial suit within the definition of the
Commercial Courts, Commercial Division and Commercial Appellate
Division of High Courts Act, 2015 and it was the clear intention of the
legislature that such cases should be decided expeditiously and should
not be allowed to linger on. Accordingly, if the defendant fails to
peruse his case or does so in a lackadaisical manner by not filing his
written statement, the courts should invoke the provisions of Order VIII
Rule 10 to decree such cases.
22. Resultantly, having been satisfied with the averments made and duly
supported by documents, no written statement being on record and the
statement made by the counsel for the defendants to the effect that the
defendants are ready to suffer a decree for injunction, I deem it a fit
case to for invoking the provisions of Order VIII Rule 10 of the Code
of Civil Procedure.
23. The counsel for the plaintiff has agreed to restrict his claim of damages
to Rs. 1,00,000/- and it is decreed accordingly.
24. Accordingly, the present suit is decreed in favour of the plaintiff and
against the defendant in terms of paras 33 (a), (b), (c) and (d) of the
plaint with punitive damages of Rs. 1 lakh in terms of the judgment in
Time Incorporated v. Lokesh Srivastava & Anr., 2005 (30) PTC 3
(Del); Microsoft Corporation v. Rajendra Pawar & Anr., 2008 (36)
PTC 697 (Del.).
G.S.SISTANI, J
OCTOBER 25, 2016
//P
