Drs Logistics (P) Ltd & Anr vs Sandeep Chohan Alias Sandeep ...
2017 Latest Caselaw 5096 Del

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*     IN THE HIGH COURT OF DELHI AT NEW DELHI
%                                      Reserved on: 04th September, 2017
                                     Pronounced on: 15th September, 2017

+     CS(COMM) 109/2016

      DRS LOGISTICS (P) LTD & ANR               ..... Plaintiffs
                    Through : Mr.Pradyuman Dubey, Advocate.

                           versus

      SANDEEP CHOHAN ALIAS
      SANDEEP KUMAR & ORS                     ..... Defendants
                  Through : None being ex parte.


CORAM:
HON'BLE MR. JUSTICE YOGESH KHANNA

YOGESH KHANNA, J.

1. This is a suit for permanent injunction, infringement of trademark, rendition of accounts, passing off and also for damages filed by the plaintiffs against the defendants.

2. The present suit was instituted by the plaintiffs to restrain the defendants No.1 to 3 from misusing and infringing the plaintiffs' registered trade trademarks, passing off themselves and their services as they are having highly reputed services and committing acts of unfair competition against the Plaintiffs, including but not limited to, by using trademarks, trade names and domain names that are virtually identical and deceptively and confusingly similar to the domain names, trade name

and trademarks of the plaintiffs. The said defendants offer services identical to the plaintiffs and therefore, the present case is covered under the provisions of Section 29(3) of the Trade Marks Act, 1999 (hereinafter referred to as „the Act). The case of the plaintiffs in brief is:- a. the „plaintiff No.1 is the registered proprietor/owner of, interalia, the trade mark "AGARWAL PACKERS & MOVERS" ("plaintiffs' Trade Mark"), bearing registration no. 1275683 under Class 39 for the services of Transporters and goods carriers, packers and storage of goods and travel arrangement services. The other trademarks belonging to the plaintiff No.1 which, along with the above mentioned trade mark, form the subject matter of this suit;

b. the plaintiff No. 2 is a group/ sister company of the plaintiff No.1 and has been using the above mentioned trademarks as a licensee of the plaintiff No.1 since the year 2009-10 under a license agreement dated 23.07.2009;

c. the plaintiffs are India's largest packing, logistics and transportation service provider with a pan India presence. The services provided by the plaintiffs include, packing and transportation services for goods and luggage of all kinds and description to and from any place within India, and abroad, by any mode of transport. In addition to relocation services plaintiffs also provide public and passenger carriers and services of booking cargo/ luggage via road, rail, air and sea transport, and act as wharfingers, warehouse keepers, clearing and forwarding agents and contractors for packing, loading and unloading of goods, luggage and cargo;

d. the use of the plaintiffs' trade mark was commenced in the year 1988 by the plaintiff No.1's predecessor in interest and title, M/s.Agarwal Packers & Movers, a partnership firm, which was registered in 1991. In the same year the plaintiff No.1 was also incorporated by the then partners of M/s. Agarwal Packers & Movers under the name, "DRS Transport (P) Ltd.", which, later changed to its current name in the year 2006. The plaintiff No.1 also, immediately after its incorporation, commenced its business under the plaintiffs‟ trademark. Subsequently, by virtue of an agreement dated 01.04.1993 the above-mentioned partnership firm and its business was merged with the plaintiff No.1. Owing to the said background, the plaintiff No.1 is entitled to claim use of the plaintiffs' Trade Mark since 1988;

e. the plaintiffs' trade mark is also registered in several international jurisdictions, details of which are given in para 6 of the amended plaint; f. not only are the plaintiffs the undisputed market leaders in their field in the country, but have also brought a lot of innovations to the industry. The goodwill and reputation attached to the plaintiffs and the plaintiffs' trade mark is, inter alia, evidenced by the ever increasing turnover achieved by them over the years as well as the expenditure incurred by them in advertising and promoting the said mark. Details of such turnover and expenditure are given in paras 14 and 15 of the amended plaint and have been duly certified by a chartered accountant. The plaintiffs have also filed and proved numerous advertisements issued by them, unsolicited media articles about them and the letters of appreciations received by them from their customers. The plaintiffs have also been conferred several awards by their peers and industry

associations and have been named in the Limca Book of Records as the largest movers of household goods in the country in the years 2013 and 2014;

g. due to continuous and extensive use of the Plaintiffs' trade mark by the plaintiffs, and by virtue of the excellent services provided by the plaintiffs to their customers, the plaintiffs' Trade Mark is associated solely with the plaintiffs by the public at large. The plaintiffs' trade mark has acquired secondary meaning in the trade and is now indelibly imprinted in the public memory as referring to the plaintiffs; h. not only this, the plaintiffs' Trade Mark has also been adjudged by this Court vide order dated 04.04.2013 in CS(OS) No.1131/2008 to be a 'well-known' trade mark in India, as defined in Section 2(l)(zg) of the Act. The plaintiffs' Trade Mark is thus entitle to the protection accorded to well known trade marks in law.

i. in addition to their trademarks, the plaintiffs also use the domain names "agarwalpackers.com", "agarwalmoversgroup.com" and "agarwalpackers.co.in" as source identifiers of their business and to maintain websites with facilities to make online bookings of plaintiffs' services;

j. the defendants No.1 to 3 have unleashed their infringing and offending activities upon the plaintiffs by registering and using a plethora of trade marks, trade names and domain names, which are identical, virtually identical and deceptively similar to the plaintiffs' trade mark, the plaintiffs' domain names and the trade name of the plaintiff No. 2. Each of the offending trade marks, trade names and domain names of the said defendants is a variation of the plaintiffs' Trade Mark and one of

them is identical to the plaintiffs' Trade Mark and the domain name of the plaintiff No. 2. The offending trade marks used by the defendants are:

AGARWAL PACKERS AND MOVERS, AGARWAL PACK 'N' MOVE The offending trade names used by the defendants are:

AGARWAL PACK 'N' MOVE PVT. LTD.

AGARWAL PACK 'N' MOVE LTD.

The offending domain names used by the defendants are:

AGARWALPACKNMOVE.COM AGARWAL-PACKNMOVE.COM AGARWALPACKNMOVE.IN AGARWALPACKNMOVE.CO.IN AGRWALPACKNMOVE.NET.IN AGARWALPACKANDMOVE.NET.IN AGARWALPACKERSNMOVERS.NET.IN;

k. the defendants Nos.4 to 6 herein are ICANN accredited domain name registrars with whom the various offending domain names of the defendant Nos.1, 2 and 3 are registered. The plaintiffs are seeking directions against the above mentioned defendants Nos.4 to 6 to block and/ or transfer the offending domain names to the Plaintiffs in order to prevent further misuse of the said offending domain names by any other third party;

l. it is submitted that offending activities of the defendants No.1 to 3 are not only causing irreparable harm and injury to the plaintiff as providers of quality services, but are also injurious to public interest. This is so because the unwary customers would entrust their household

belongings and other valuable articles to the defendants No.1 to 3 believing them to be the plaintiffs when the said defendants simply do not have the skill, experience and resources to provide the quality of services that the public has come to expect from the plaintiffs. The said defendants are therefore liable to be permanently restrained in terms of the prayers made in the amended plaint. The plaintiffs have also filed an email showing the actual modus operandi of the defendants No.1 to 3, which is also a proof of the said defendants offering services in gross violation of the Plaintiffs' rights. Further, printouts from the websites maintained at said defendants' offending domain names have also been filed along with the Suit and a perusal of them shows that most of the domain names are used to host identical websites. Deception is thus writ large in the defendants' activities.

3. The defendants were served with the summons of the suit but they did not appear and were proceeded ex parte vide order dated 04.08.2014.

4. During evidence, the plaintiff has examined its sole witness PW1 Sh.Ramesh Aggarwal, who has proved his affidavit Ex.PW1/X and relied upon the documents Ex.PW1/1 to Ex.PW1/33.

The witness PW1 has proved the copy of board resolution in his favour by the plaintiff company as Ex.PW1/1; the copy of Certificate of Incorporation dated 19.06.2006 in the changed name of plaintiff as Ex.PW1/2; for want of originals, the documents marked as Ex.PW1/3, Ex.PW1/4, Ex.PW1/5 and Ex.PW1/8 were de-exhibited and were marked as Mark A to Mark D respectively; copies of trademark registration certificate and certified copy of entry in the register pertaining to trademark are Ex.PW 1/6, Ex.PW1/7, Ex.PW1/9 respectively; a copy of

the copyright registration certificate under the registration number A- 101150/2013 dated 24.11.2012 in the artistic work of its logo is Ex.PW1/10; copy of license agreement dated 23.07.2009 is Ex.PW1/11; copies of the registration certificates is Ex.PW1/12; a copy of partnership deed executed on 01.08.1990 is Ex.PW1/13; a certificate issued by chartered accountant verifying the annual turnover of the plaintiff‟s company is Ex.PW1/14; the copies of few sample copies of advertisements and unsolicited media reports issued by the plaintiff is Ex.PW1/15; copies of the unsolicited letters of appreciation received by the plaintiff from its customers are Ex.PW1/16; documents evidencing excellence with the plaintiff‟s name and trademark manifested in several awards and recognitions are exhibited and marked as Ex.PW1/17; copy of the judgment dated 04.04.2013 passed in CS(OS) No.1131/2008 which hold it a well known trade mark in India is exhibited as Ex.PW1/18; Copies of sample webpage from websites of which plaintiffs are proprietors and registrants are exhibited as Ex.PW1/19; Printouts from online database "whois.com" are Ex.PW1/20; Copies of caution notices issued in leading newspaper and publications bewaring the general public of the impostors is Ex.PW1/21; Copy of printout of the webpage from google.com showing the search result is Ex.PW1/22; Copy of printout from website www.agarwalpackersnmovers.net.in is Ex.PW1/23; copies of printout of search result obtained from website www.mca.gov.in pertaining to the name of "Agarwal pack N Move" is Ex.PW1/24; Copy of printout obtained from website whois.com and showing the details in respect of four domain names and copy of printout obtained from the websites available at the four domain names are Ex.PW1/25, Ex.PW1/26

and Ex.PW1/27 respectively; copy of printout from the website google.com showing the use of trademark "Agarwal Packers and Movers" and the domain name www.AGARWAL-PACKNMOVE.COM is Ex.PW1/28; Copy of printouts of screen shots and webpages obtained from the website available at the above mentioned domain name is Ex.PW1/29; and also printouts from the website whois.com showing the registration details of the domain name WWW.AGARWAL- PACKNMOVE.COM is Ex.PW1/30; Copy of printouts from website whous.com showing the registration details of the domain name WWW.AGARWALPACKANDMOVE.NET.IN and printouts of screen shots and webpages obtained from the above domain name is Ex.PW1/31 and Ex.PW1/32 respectively; Copy of electronic records such as email dated 01.04.2014 along with quotation provided by the defendant No. 1 is Ex.PW1/33.

5. In the circumstances, where the plaintiffs have proved the contents of the plaint; the user of present name of the company and it being the prior user, the adoption of its trade name and trademark by the defendants clandestinely would certainly be illegal and would affect the reputation of the plaintiff being in same business. The defendant has not put up their defence, they being ex parte.

6. The matter concerns identical corporate/trade name of both the parties, is also included in the definition of "mark" under Section 2(l)(m) of the Act. Both parties are in the same field of activity. The mark/name is therefore both 'arbitrary' as well as 'fanciful' making it highly distinctive and deserving of protection from later adopters/usurpers like

the defendant since it comes within the highest protectable categories of trademarks.

7. In Evergreen Sweet House Vs. Ever Green and Ors., 2008 (38) PTC 325 (Del), it has been observed as under:-

"14. Marks are often classified III categories of generally increasing distinctiveness; they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. The last three categories are entitled to trademark protection because they are inherently distinctive and can serve to identify a particular source of a product."

8. Thus, in view of the above evidence and in view of the decisions so relied upon by the learned counsel for plaintiffs, viz Dr. Reddy's Laboratory Ltd. vs. Reddy Pharmaceuticals Ltd, 2013 (56) FTC (DEL); Mahindra & Mahindra Paper Mills Ltd. vs. Mahindra & Mahindra Ltd, (2002) 2 SCC 147; Midas Hygiene Industries v. Sudhir Bhatia, (2004) 3 SCC 90, the suit is liable to be decreed against the defendants.

9. Hence, in view of above, the suit of the plaintiff is decreed against the defendants in terms of paras (A) to (C) of Prayer Clause of the plaint which are as under :-

A. Passing a decree of permanent injunction restraining the Defendants Nos.1, 2 and 3, their partners, directors, proprietors, associates, agents, officers, employees, representatives, franchisees, promoters, online promoters, advertisers and sponsors and any other persons claiming through or under the Defendants Nos. 1, 2 and 3 from:

(i) Infringing the Plaintiff No.1‟s registered trademarks 'AGARWAL PACKERS & MOVERS', 'AGARWAL DOMESTIC/ INTERNATIONAL PACKERS & MOVERS' and 'AGARWAL HOUSEHOLD PACKERS & LOGISTICS' by using the marks AGARWAL or AGARWAL PACKERS AND MOVERS or AGARWAL PACK N MOVE or AGARWALPACKANDMOVE or AGARWALPACKERSNMOVERS or any other trade mark or trade name or domain name identical or confusingly or deceptively similar to, or incorporating whole or in part, the Plaintiff No.1 's above mentioned registered trademarks or the Plaintiffs' house mark AGARWAL, as, or as part of, their trade mark(s),trade name(s) and domain names(s), or in any other manner whatsoever, so as to infringe the above mentioned registered trademarks of the Plaintiff No.1;

(ii) Diluting the Plaintiff No. 1's registered and well-known trademark 'AGARWAL PACKERS & MOVERS' by using the marks AGARWAL or AGARWAL PACKERS AND MOVERS or AGARWAL PACK N MOVE or AGARWALPACKANDMOVE or AGARWALPACKERSN MOVERS or any other trade mark or trade name or domain name identical or confusingly or deceptively similar to, or incorporating whole or in part, the Plaintiff No.1's above mentioned registered trade mark, as, or as part of, their trade mark(s), trade name(s), and domain names(s), or in any other manner whatsoever;

(iii) Passing off their services and business as and for the services and business of the Plaintiffs and from indulging into any activities whatsoever so as to give to the members of public and trade an impression of existence of any association or connection or affiliation

between the Defendants Nos. 1, 2 and 3 and the Plaintiffs, including but not limited to by using the trade mark "AGARWAL PACKERS AND MOVERS" or the offending trade mark "AGARWAL PACK N MOVE" or the offending trade names "AGARWAL PACK N MOVE PVT. LTD. and "AGARWAL PACK N MOVE LTD." or the offending domain names"AGARWALPACKNMOVE.COM", "AGARWALPACKNMOVE.COM"

"AGARWALPACKNMOVE.IN", "AGARWALPACKNMOVE. CO. IN"

"AGRWALPACKNMOVE.NET.IN"

"AGARWALPACKANDMOVE.NET.IN" and 'AGARWALPACKERSNMOVERS.NET.IN'.

B. Passing a decree of mandatory injunction directing the Defendants No.1, 2 and 3, their partners, directors, proprietors, associates, agents, officers, employees, representatives/franchisees, promoters, online promoters, advertisers and sponsors and any other persons claiming through or under the Defendants No.1, 2 and 3 to at their own expense:

(i) deliver to the Plaintiffs or the Plaintiffs' authorized representatives all materials, including but not limited to packing boxes, cartons, or any other packaging materials, letterheads, writing pads, or any other stationary items, company seals or stamps, labels, signs, signboards, hoardings, advertisements or any other promotional materials, in their possession and control bearing the marks AGARWAL or AGARWAL PACKERS AND MOVERS or AGARWAL PACKNMOVE or AGARWALPACKANDMOVE or AGARWALPACKERSNMOVERS or any other trade mark or trade name or domain name identical or

confusingly or deceptively similar to, or incorporating whole or in part, the Plaintiff No.1 's above mentioned registered trademarks or the Plaintiffs' house mark AGARWAL;

(ii) Permanently delete or transfer to the Plaintiffs the offending domain names WWW.AGARWALPACKNMOVE.COM, WWW.AGARWAL- PACKNMOVE.COM,WWW.AGARWALPACKNMOVE.IN.,WWW.A GARWALPACKNMOVE.CO.IN;

WWW.AGARWALPACKNMOVE.NET.IN;

WWW.AGARWALPACKANDMOVE.NET.IN;

WWW.AGARWALPACKERSNMOVERS.NET.IN; or any other domain names registered by or at the instance of the Defendants Nos. 1, 2 and 3 that may be identical or confusingly or deceptively similar to, Or incorporating whole or in part, the Plaintiff No. 1's registered trade marks 'AGARWAL PACKERS a MOVERS', 'AGARWAL DOMESTIC/ INTERNATIONAL PACKERS AND MOVERS' and 'AGARWALHOUSEHOLD PACKERS a LOGISTICS' or the Plaintiffs' house mark AGARWAL, or the Plaintiffs' domain names WWW.AGARWALPACKERS.COM.,WWW.AGARWALMOVERSGR OUP.COM and' WWW.AGARWALPACKERS.CO.IN.

C. Passing a decree of mandatory injunction directing:

(i) the Defendant No. 4 to permanently delete or block or transfer to either of the Plaintiffs, the domain name WWW.AGARWALPACKNMOVE.COM;

Hence, the decree per paras A to C of the prayer clause is passed in favour of the plaintiffs and against the defendants.

11. Besides the above the learned counsel for plaintiffs has claimed the damages to the extent of `20,00,000/-. The plaintiff is more concerned with the punitive damages and rely upon Time Incorporated vs. Lokesh Srivastava & Anr 116 (2005) DLT 599. The decision in Time Incorporated was relied upon by a Co-ordinate Bench of this Court in Jockey International Inc & Anr vs. R. Chandra Mohan & Ors 211 (2014) DLT 757 which read as under:-

"43. I am in agreement with the aforesaid submission of learned counsel for the plaintiff that damages in such cases must be awarded and a defendant, who chooses to stay away from the proceedings of the Court, should not be permitted to enjoy the benefits of evasion of court proceedings. Any view to the contrary would result in a situation where a defendant who appears in Court and submits its account books would be liable for damages, while another defendant who, chooses to stay away from court proceedings would escape the liability on account of failure of the availability of account books. A party who chooses not to participate in court proceedings and stays away must, thus, suffer the consequences of damages as stated and set out by the plaintiffs. There is a larger public purpose involved to discourage such parties from indulging in such acts of deception and, thus, even if the same has a punitive element, it must be granted. R.C. Chopra, J. has very succinctly set out in Time Incorporated's case (supra) that punitive damages are founded on the philosophy of corrective justice."

12. The witness of plaintiffs has deposed that damages ought to be imposed upon the defendants on account of infringement and passing off.

13. Thus, given the facts and circumstances of this case where the defendants reclused itself from the proceedings, cannot be permitted to enjoy the benefits of evasion or covert priorities as he has been selling the goods and has been infringing the plaintiff‟s mark/domain name /trade name etc. which certainly makes the defendant liable to pay the punitive damages to the plaintiff. Hence, a decree for a sum of `3,00,000/- in favour of the plaintiff and against defendant, is passed on account of infringing the registered mark/domain name /trade name. The plaintiff shall also be entitled to interest @ 12% pa on the damages so awarded from the date of filing of the suit till the date of realisation. Costs of the suit is also awarded to the plaintiff. Decree Sheet be drawn.

YOGESH KHANNA, J SEPTEMBER 15, 2017 Mn