Delhi High Court
Shri Ved Prakash Garg Trading As ... vs M/S Gurudev Industries on 20 December, 2018
35
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 1219/2018 & I.A. Nos. 15189/2018 AND 15191/2018
SHRI VED PRAKASH GARG TRADING AS
M/S PARUL FOOD PRODUCTS ..... Plaintiff
Through: Mr. Umesh Mishra, Advocate
versus
M/S GURUDEV INDUSTRIES ..... Defendant
Through: None
% Date of Decision: 20th December, 2018
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
JUDGMENT
MANMOHAN, J: (Oral)
1. It is pertinent to mention that the present suit has been filed for permanent
injunction restraining infringement of trademark and passing off of trade mark,
copyright, damages, delivery up, etc. The prayer clause is reproduced
hereinbelow:-
"32. It is, therefore, most respectfully prayed to this Hon‟ble Court
that a decree be passed in favour of the plaintiff and against the
defendant to the following effects:-
(a) That this Hon‟ble Court may kindly be pleased to restrain the
defendant, its proprietor, partners, associates, sister concerns,
dealers, distributors, manufacturers through itself and through
servants, agents, assigns and representatives and all others acting
for and on its behalf from marketing, selling, offering for sale,
advertising directly and indirectly dealing in impuged goods
included in Class-30 bearing the impugned trademark/label
FREEFUN or any the trademark as may be identical with or
deceptively similar to plaintiff‟s said trademark FUNFINE, which
results I infringement of the said trademark of plaintiff.
(b) That this Hon‟ble Court may kindly be pleased to restrain the
defendant, its proprietor, partners, associates, sister concerns,
dealers, distributors, manufacturers through itself and through
servants, agents, assigns and representatives and all others acting
for and on its behalf from marketing, selling, offering for sale,
advertising directly and indirectly dealing in impugned goods
included in Class-30 bearing the impugned trademark/label
FREEFUN or any other trademark as may be identical with or
deceptively similar to plaintiff‟s said trademark/label FUNFINE,
which results in passing off of the said trademark/label of plaintiff.
(c) That this Hon‟ble Court may kindly be pleased to restrain the
defendant, its proprietor, partners, associates, sister concerns,
dealers, distributors, manufacturers through itself and through
servants, agents, assigns and representatives and all others acting
for and on its behalf from marketing, selling, offering for sale,
advertising directly and indirectly dealing in impugned goods
included in Class-30 bearing the impugned trademark/label
FREEFUN or any other artistic work as may be identical with or
deceptively similar to plaintiff‟s said artistic work FUNFINE,
which results in infringement of the said artistic work of plaintiff.
(d) That this Hon‟ble Court may kindly be pleased to restrain the
defendant, its proprietor, partners, associates, sister concerns,
dealers, distributors, manufacturers through itself and through
servants, agents, assigns and representatives and all others acting
for and on its behalf from marketing, selling, offering for sale,
advertising directly and indirectly dealing in impugned goods
included in Class-30 bearing the impugned trademark/label
FREEFUN or any other artistic work as may be identical with or
deceptively similar to plaintiff‟s said artistic work FUNFINE,
which results in passing off of said artistic work of plaintiff.
(e) For an order for delivery by the defendant to the plaintiff all the
offending goods bearing the impugned trademark/label/artistic
work including the packaging materials, advertising materials,
publicity materials, stationery, account books and other
incriminating materials under the possession and control of the
defendant for destruction or erasure purposes.
(f) Pass a decree of damages in favour of the plaintiff and against the
defendant on account of loss to the business and reputation caused
to the plaintiff by illegally and unlawfully using the trade
mark/label/artistic work FUNLINE by the defendant.
(g) for an order for costs of the proceedings in favour of the plaintiff
and against the defendant.
(h) Pass such other or further orders as this Hon‟ble Court may deem
fit and proper in the facts and circumstances of the preent case."
2. Vide order dated 02nd November, 2018, this Court granted an ex parte ad
interim injunction in favour of the plaintiff and against the defendant. The relevant
portion of the ex-parte injunction order is reproduced hereinbelow:-
"Consequently, till further orders, the defendant, its
proprietors, partners, agents, assigns, representatives, heirs, servants,
dealers, distributors, manufacturers, franchisees and/or anyone acting
for and on its behalf are restrained from using the impugned
trademark/label/artistic work FREEFUN or any other
trademark/label/artistic work, which is identical or
deceptively/confusingly similar to the plaintiff‟s registered
trademark/label/artistic work FUNFINE, in any manner whatsoever."
3. On 02nd November, 2018, this Court also appointed a Local Commissioner.
During the execution of the local commission, the defendant was found to be
infringing the plaintiff's trademark and was found in possession of 2472
infringing products and 2 infringing packaging rolls. The relevant portions of the
Local Commissioner's report is reproduced hereinbelow:-
"6. After inspecting the entire premises, the undersigned proceeded
to seal the infringing goods i.e. Puff Packets and Packaging Rolls
bearing the trademark/label - "FREEFUN" which were found in the
Defendant‟s premises. The undersigned prepared an Inventory after
counting the infringing goods, and sealed them in White-coloured
sacks, in the presence of the representatives of the Plaintiff, Mr. Achal
Jain, and the Police officials. A total number of 2472 Puff Packets
and 2 Packaging Rolls bearing the mark "FREEFUN" were sealed in
5 separate sacks, each sack marked and signed by the undersigned.
(Typed Copy of the Inventory is annexed herewith as ANNEXURE-C).
xxx xxx xxx
Serial Details of the Description Quantity of the Remarks
No. Package of the infringing
containing the infringing goods
infringing goods goods
1. FREEFUN Puffs Puff Packets 72 x 12 = 864
(Sack marked as
„FF-1‟)
2. FREEFUN Puffs Puff Packets 72 x 12 = 864
(Sack marked as
„FF-2‟)
3. FREEFUN Puffs Puff Packets 72 x 8 = 576
(Sack marked as
„FF-3‟)
Packaging Label Rolls
Roll (Sack marked
as „FF-4‟)
5. FREEFUN Puffs Puff Packets 24 x 7 = 168
(Sack marked as
„FF-5‟)
Total: 2472 Packets &
2 Packaging Rolls
4. Since despite service of the injunction order by the Local Commissioner,
the defendant has not entered appearance nor filed a written statement.
Consequently it was proceeded ex-parte yesterday.
5. At the outset, learned counsel for plaintiff gives up prayers in prayer 32 (e)
and (f) of the plaint. The statement made by learned counsel for plaintiff is
accepted by this Court and the plaintiff is held bound by the same.
6. This Court is of the view that the present suit can be disposed of without
any further delay. A Coordinate Bench of this Court in Satya Infrastructure Ltd.
and Ors. Vs. Satya Infra & Estates Pvt. Ltd., 2013 SCC OnLine Del 508 has held
as under:-
"I am of the opinion that no purpose will be served in such
cases by directing the plaintiffs to lead ex parte evidence in the form
of affidavit by way of examination-in-chief and which invariably is a
repetition of the contents of the plaint. The plaint otherwise, as per the
amended CPC, besides being verified, is also supported by affidavits
of the plaintiffs. I fail to fathom any reason for according any
additional sanctity to the affidavit by way of examination-in-chief than
to the affidavit in support of the plaint or to any exhibit marks being
put on the documents which have been filed by the plaintiffs and are
already on record. I have therefore heard the counsel for the
plaintiffs on merits qua the relief of injunction."
7. The relevant facts of the present case as set out in the plaint are:-
i. The plaintiff is engaged in the business of manufacturing and
marketing of puffs, namkeen, biscuits, rusk, chips and confectionary goods
since 2005 under the mark FUNFINE.
ii. The plaintiff conceived and adopted the trademark/label/artistic work
FUNFINE in 2005 and has since been continuously, extensively and openly
using the same.
iii. The plaintiff is the registered proprietor of the trademark FUNFINE
under Class 30 of the Trade Marks Act, 1999 and has several applications
for other formative FUNFINE marks pending.
iv. The plaintiff has been using the artistic work FUNFINE, having
unique colour combination, layout and lettering style since 2005 and the
same amounts to an "original artistic work" within the meaning of Section
2(c) of the Copyright Act, 1957. The plaintiff is the registered proprietor of
the original artistic works FUNFIN and is entitled to copyright protection
under the provisions of Section 14 of the Copyright Act, 1957.
v. The annual sales generated by the plaintiff in the financial year
2017-18 was Rs. 13,88,74,144.07/-.
vi. In the third week of October, 2018, in the course of a routine market
survey in Delhi and NCR, the plaintiff's sales person discovered the
defendant's puff packet bearing the trademark/label FREEFUN, the
packaging bearing a mark/label identical to that of the plaintiff's
trademark/label FUNFINE along with lettering style and overall trade dress
of the product. The defendant is a proprietorship firm, which conducts
business on a large scale and the defendants' products are available in Delhi
as well. A pictorial representation of the plaintiff's and defendants' goods is
reproduced herein below:-
vii. The defendant's trademark/label/artistic work FREEFUN is
identical/ deceptively similar to that of the plaintiff's
trademark/label/artistic work FUNFINE and is likely to cause confusion
and/or deception in the minds of the consumers that the defendant's
products originate from the plaintiff. The defendant has adopted an
identical/ deceptively similar trademark/label/artistic work FREEFUN to
that of the plaintiff's to take advantage of the goodwill and reputation of the
plaintiff.
8. This Court is of the view that the plaintiff is the prior user and prior
registered proprietor of the trademark/label/artistic work FUNFINE and due to
extensive use, the plaintiff's trademark/label/artistic work FUNFINE has acquired
reputation and goodwill in India.
9. In the opinion of this Court, the defendant has no real prospect of defending
the claim, as they have not entered appearance nor filed a written statement.
Moreover, as the defendants are selling products bearing the
trademark/label/artistic work FREEFUN which is identical/ deceptively similar to
that of the plaintiff's trademark/label/artistic work FUNFINE as is apparent from
the report of the Local Commissioner on record, it is a clear case of infringement
of the plaintiffs' registered trade mark/trade dress/ get-up/colour combination.
10. In view of the above, the present suit is decreed in favour of the plaintiff
and against the defendant in accordance with paragraph 32 (a) to (d) of the prayer
clause of the present plaint along with actual cost and court-fees paid. The costs
shall amongst others include lawyers' fees as well as the amounts spent on
purchasing the Court-fees. The defendant is directed to hand over infringing
goods seized by the Local Commissioner to the plaintiff for destruction within 14
days of passing the order. Registry is directed to prepare a decree sheet
accordingly. Consequently, the present suit and application stand disposed of.
MANMOHAN, J
DECEMBER 20, 2018
mn/js
