Kent Ro Systems Ltd & Anr vs M/S Kentech Ro Systems & Anr
2017 Latest Caselaw 5201 Del

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*     IN THE HIGH COURT OF DELHI AT NEW DELHI
%                                      Reserved on: 11th September, 2017
                                     Pronounced on: 19th September, 2017

+     CS(OS) 3011/2014

      KENT RO SYSTEMS LTD & ANR                  ..... Plaintiffs
                   Through : Mr.Jaishankar  Bhardwaj         and
                             Mr.Abhishek Kotnala, Advocates.

                            versus

      M/S KENTECH RO SYSTEMS & ANR              ..... Defendants
                   Through : None being ex parte.

CORAM:
HON'BLE MR. JUSTICE YOGESH KHANNA

YOGESH KHANNA, J.

1. The plaintiffs have filed this suit for infringement, passing off, damages, dilution etc to restrain the defendants from adopting and using the mark KENTECH or any other mark containing the word KENT or KENTECH as part of defendants' trading name, domain name and otherwise.

2. The suit is premised on the ground that the impugned mark infringes the statutory or common law rights of the plaintiffs in their well known mark KENT. In brief the case of the plaintiffs is:

a) plaintiff No.2 - Mr.Mahesh Gupta is the chairman and managing director of plaintiff No.1 and is a registered proprietor of the trademark KENT. The mark was first adopted by the plaintiffs in the year 1988 in

respect of oil apparatus and thereafter in respect of mineral water purifiers in the year 1999;

b) plaintiffs are considered as market leaders in respect of mineral water purifiers. Plaintiff No.1 with the vision of providing pure drinking water, revolutionized the mineral water purifier market by introducing modern technology, including reverse osmosis based purifiers and zero water wastage technology. Plaintiff No.2 was granted a patent for its revolutionary technology and the products of the plaintiff confirm to WHO standard and have been recognized by the UNESCO and other standard setting agencies;

c) the trademark-KENT of the plaintiff qualifies as a well known mark under the provisions of the Trade Marks Act, 1999 for the following reasons:

i) it was adopted in the year 1999 in respect of mineral water purifiers and plaintiffs used KENT in conjunction with formative elements, with the mark KENT retaining the essential feature thereof;

ii) KENT stands registered in India and abroad in relevant classes;

iii) plaintiffs have extensively advertised their KENT mark and undertaken sponsorship activities that promote the said mark;

iv) KENT has received several awards and recognitions;

v) the products under mark KENT are sold across the world;

vi) plaintiffs have been active in enforcing rights in their KENT mark.

d) plaintiffs learnt about the defendants' activities in september 2014 through their website www.kentechro.com through which the later were trading under the impugned mark and assembling and selling the domestic water purifying products, industrial RO plans etc.

3. Following dates are relevant to be mentioned before I proceed further:-

a) on 29.04.2014, ex parte ad interim injunction restraining the defendants from using the impugned mark in respect of their business was passed by this Court in favour of the plaintiffs;

b) on 09.02.2015 the defendants were duly served in this case;

c) upon their failure to appear, the defendants were proceeded ex parte in this case on 10.08.2015;

d) in October, 2015 the plaintiffs filed the ex parte evidence of Mr.Surya Narayan Pati;

e) on 17.03.2016 the witness was examined and evidence was closed.

f) on 16.09.2016, the ex parte order was made absolute and case was fixed for final ex parte arguments.

4. The plaintiffs has proved its case through its sole witness PW1 Sh.Surya Narayan Pati, the authorized representative of plaintiffs who has proved his affidavit Ex.PW1/X and relied upon the documents Ex.PW1/1 to Ex.PW1/10. The originals of Ex.PW1/1, Ex.PW1/3, Ex.PW1/4, Ex.PW1/4, Ex.PW1/9 and Ex.PW1/10 were seen and returned. The computer print outs were filed alongwith the requisite certificate under Section 65B of the Indian Evidence Act, 1872.

5. The witness PW1 reiterated the case of the plaintiffs and had proved the copies of registration certificate of KENT as Ex.PW1/1; the print outs taken from the website of defendants as Ex.PW1/2; copies of promotional material/brochures of KENT products as Ex.PW1/3; copy of certificate of chartered accountant for advertisement expenses as Ex.PW1/4; copies of online advertisements of plaintiffs KENT mark products as Ex.PW1/5; copies of printout taken from the website of plaintiffs as Ex.PW1/6; copies of online advertisements of defendants products sold under the infringing mark as Ex.PW1/7; copy of certificate of incorporation of plaintiff No.1 as Ex.PW1/8; copy of board resolution in favour of witness as Ex.PW1/9; and copy of general power of attorney in favour of witness as Ex.PW1/10.

6. From the pleadings and evidence of PW1, the plaintiffs have proved that the adoption and use of the impugned mark by the defendants subsumes the registered KENT mark of plaintiffs amounts to a violation of the plaintiffs statutory and common law rights under the Act. The impugned mark is deceptively similar to the plaintiffs' registered KENT trademark. Even the products sold by the defendants are identical to the products offered by the plaintiffs under their KENT mark and hence confusion is inevitable. The defendants therefore, by using KENT mark on its identical products thus violate section 29(1) read with section 29 (2) (b) of the Act.

7. The acts of the defendants in adopting and using the identical/ deceptively similar impugned mark in respect of identical goods has caused and will continue to cause irrepairable damage and loss to the

plaintiffs business under its KENT mark. Further, the impugned mark which forms a part of their trading name, infringes the rights of the plaintiffs under Section 29 (5) of the Act. The defendants are rather dealing in the goods which are identical to the goods of the plaintiff.

8. It is also settled law in infringement cases, if Court finds that the defendant's mark is closely, visually and phonetically similar, then no further proof is necessary as held in Kaviraj Pandit Durga Dutt Sharma vs Navarattana Pharmaceutical Lab. AIR 1965 SC 980.

9. In Mex Switchgears Pvt Ltd vs Max Switchgears Pvt Ltd CS (OS) 1299/2013 this Court observed that the essential features of rival marks are to be considered in determining infringement.

10. The adoption of the impugned mark by Defendants is mala fide, calculated to take advantage of the reputation and goodwill earned by Plaintiffs' KENT mark. Such acts of the Defendants are bound to cause deception and confusion resulting in damage to Plaintiffs' reputation and goodwill. The Defendants are, therefore, attempting to pass-off their goods under the Impugned mark as those of the Plaintiffs. All ingredients of passing-off also stand satisfied. It is also settled law that passing off is maintainable even in cases of a well know mark. (Bloomberg Finance LP v. Prafull Saklecha & Ors. CS (OS) 2963/2012 - Paragraph 51).

11. The Defendants' domain name <kentechro.com> also amount to an infringement of the statutory and common law rights of the Plaintiff in their registered KENT mark. It is settled law that domain name may have all the characteristics of a trademark and could found an action for

passing off. (Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) 6 SCC 145- Para 16).

12. For reasons aforesaid, the suit of the plaintiff is decreed for permanent injunction restraining the defendants, its directors, partners or proprietor as the case may be, its assigns in business, franchisees, licensees, distributors and agents from using, adopting, selling, offering for sale, advertising, directly or indirectly dealing in identical or similar goods/services under (a) the infringing trade name, namely, "KENTECH RO PRIVATE LIMITED"; and (b) the infringing domain name, namely, <www.kentechro.com>; (c) any other trade mark, trade name, service mark, house mark or composite mark identical or deceptively to the word KENT or KENTECH, amounting to infringement of trademarks under trade mark registrations as detailed in para 16 of the plaint.

13. Further, the defendants its directors, partners or proprietor as the case may be, its assigns in business, franchisees, licensees, distributors and agents are also restrained from using, adopting, selling, offering for sale, advertising, directly or indirectly dealing in identical or similar goods/services under (a) the infringing trade name, namely, "KENTECH RO PRIVATE LIMITED"; and (b) the infringing Domain Name, namely, <www.icentechro.com>; (c) any other trade mark, trade name, service mark, house mark or composite mark identical or deceptively to the word KENT or KENTECH amounting to passing off of the goods / products of the defendants for those of the plaintiffs;

iii) the suit for mandatory injunction is also decreed against the Defendants, directing the defendants to immediately transfer to the

Plaintiffs, at its own cost, the infringing domain name <www.kentechro.com>. and,

iv) the suit is also decreed against the defendants directing delivery up of all the goods, stationery, hoardings, boards, printed material, dies, blocks, etc., including the defendants infringing products, namely, the RO water purifiers, bearing the infringing trade name KENTECH, to an authorized representative of the plaintiffs for destruction.

14. Besides the above the learned counsel for plaintiffs have claimed the rendition of accounts of profit illegally earned by defendants or in the alternate damages to the extent of `21,00,000/- be also awarded. The plaintiffs are 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 plaintiffs that damages in such cases must be awarded and a defendants, 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 defendants who appears in Court and submits its account books would be liable for damages, while another defendants 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."

15. Under the given 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 has been selling the goods and has been infringing the plaintiffs' mark/trade dress certainly makes the defendants liable to pay the punitive damages to the plaintiffs. Hence, a decree for a sum of `3,00,000/- in favour of the plaintiffs and against defendants, is passed on account of infringing the registered marks/label etc. The plaintiffs 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 plaintiffs. Decree Sheet be drawn.

16. At last, in view of the nature of disputes between the parties, Registry is directed to re-number it as a Commercial Suit and while doing so retain both the numbers. Needless to state the decree sheet shall contain the new numbers.

YOGESH KHANNA, J SEPTEMBER 19, 2017 M