Mobile Telesystems Ojsc And Anr. vs Mr. Bhagat Singh And Anr.
2018 Latest Caselaw 1463 Del

14
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*        IN THE HIGH COURT OF DELHI AT NEW DELHI

+        CS(COMM) 371/2018 & I.As. 3872/2015

         MOBILE TELESYSTEMS OJSC AND ANR.          .....Plaintiffs
                      Through: Mr. Shantanu Sahay, Advocate with
                               Mr. Aasish Somasi, Advocate.
                      versus
         MR. BHAGAT SINGH AND ANR. ..... Defendants
                      Through:     None.

%                                Date of Decision: 05th March, 2018.
CORAM:
HON'BLE MR. JUSTICE MANMOHAN

                               JUDGMENT

MANMOHAN, J (Oral)

1. Present suit has been filed against the defendants for permanent injunction, restraining infringement of trademarks, copyrights, passing off, dilution and tarnishment, rendition of accounts, damages and delivery up. The prayer clause in the present suit is reproduced hereinbelow:-

"43. In the light of the aforesaid, it is humbly prayed that this Hon‟ble Court may be pleased to grant:

a. An order for permanent injunction restraining the Defendants, their partners or proprietor, as the case may be, their principal officers, servants and agents, distributors, and all others acting on their behalf, from manufacturing, selling, importing, exporting, offering for sale, advertising, directly or indirectly dealing in any manner with products bearing the trademark MTS which is deceptively similar to the Plaintiffs‟ trade marks; and b. An order for permanent injunction restraining the Defendants, their partners or proprietor, as the case may be,

their principal officers, servants and agents, distributors, and all others acting on their behalf, from manufacturing, selling, importing, exporting, offering for sale, advertising, directly or indirectly dealing in any manner with products which are look alikes of the Plaintiffs‟ products amounting to passing off of Defendants‟ products as that of Plaintiffs products; and c. An order for permanent injunction restraining the Defendants, their partner or proprietor, as the case may be, their principal officers, servants and agents, distributors, and all others acting on their behalf, from manufacturing, selling, importing, exporting, offering for sale, advertising, directly or indirectly dealing in any manner with products which are look alikes of the Plaintiffs‟ products amounting to dilution of Plaintiffs‟ trademarks; and d. An order for permanent injunction restraining the Defendants, their partners or proprietor, as the case may be, their principal officers, servants and agents, distributors, and all others acting on their behalf, from manufacturing, selling, importing, exporting, offering for sale, advertising, directly or indirectly dealing in any manner using the Plaintiffs‟ original art-works and other original works protected under copyrights act; and e. An order for the delivery-up or destruction of all impugned materials of the Defendants, including the products, container boxes, labels, wrappers, stickers or any other material of the Defendants using the distinctive MTS trademark; and

f. An order for rendition of accounts of profits illegally earned by the Defendants on account of use of the MTS trademarks and trade dress, and a decree for the amount so found be passed in favour of the Plaintiffs; and

g. An order declaring that the Plaintiffs trademark MTS is well known in India for Telecommunication services and associated products/goods; and h. An order for costs in the present proceedings; and

Any other order that this Hon‟ble court may grant in favour of the plaintiffs in light of the facts and circumstances of the present suit."

2. On 25th February 2015, this Court granted an ex parte ad interim injunction in favour of the plaintiffs and against the defendants. The relevant portion of the said order is reproduced hereinbelow:-

"Accordingly, till the next date of hearing, the defendants, their partners, proprietors, principal officers, servants and agents are restrained from manufacturing, selling, offering for sale, distributing, advertising and directly or indirectly dealing in mobile phones or any other similar goods bearing the mark „MTS‟ which is the registered mark of the plaintiffs."

3. On 08th February, 2017, the defendants were proceeded ex parte. Today, learned counsel for plaintiffs states that he has instructions only to press the prayers a, b, c, d and h of para 43 of the plaint. The statement made by learned counsel for plaintiffs is accepted by this Court and plaintiffs are held bound by the same.

4. Learned counsel for the plaintiffs states that in view of the judgment of this Court in Satya Infrastructure Ltd. & Ors. Vs. Satya Infra & Estates Pvt. Ltd., the present suit should be decreed qua the reliefs in paragraph 38(a), (b) and (f) of the plaint. The relevant portion of the judgment in Satya Infrastructure Ltd. & Ors. (Supra) relied upon by learned counsel for the plaintiffs is reproduced hereinbelow:-

"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."

5. The contentions and submissions advanced by the learned counsel for the plaintiffs are as under:-

(i) The Plaintiff No.1, Mobile TeleSystems OJSC is a company organised and existing under the laws of Russian Federation and Plaintiff No.2, Sistema Shyam TeleServices Private Limited is a joint venture company of Plaintiff No.1 in India. Plaintiff No.1 is the registered owner of the trademarks (trademarks No.2069415, 2069422, 2069425, 1954386) in Classes 16, 37, 39 and 42, MTS,

, as well as the copyright and common law rights that subsist in these original works.

(ii) Plaintiff No.1 is a well recognised brand in the telecommunications industry across the world. With over 100 million subscribers across the world and over 10 million subscribers in India alone, it is one of the largest providers of telecommunication services. The brand was further recognised as the 89th most powerful brand in the world by Milward Brown in its annual Brandz ranking of 2008 of powerful brands of the world. Plaintiff No.1 is the recipient of several awards and honours that are a testament to its brand recognition and superior quality of telecommunication services.

(iii) The plaintiffs have acquired a substantial brand recognition and

goodwill in India. Furthermore, the logos and

adopted by the plaintiff No.1 in 2006 are original artworks first created for and by the plaintiff No.1 in Russian Federation.

(iv) In the month of January 2015, the plaintiffs received information from various market sources that counterfeit mobile phones bearing the plaintiffs‟ logo and brand "MTS Striker" were being sold in the markets of Delhi. In particular, credible information was received that large quantities of those mobile phones were being sold in Karol Bagh, New Delhi.

(v) The defendant No.1 i.e. Mr. Bhagat Singh is the proprietor of M/s. Singh Telecom. The defendant No.2 i.e. M/s. Singh Telecom is a shop wherein mobile phones of various companies were being sold. Pursuant to the information, an investigator, Mr. Devender Sardanan (hereinafter called the „investigator‟) was directed to investigate and identify the shop.

(vi) On 06th February, 2015, the investigator visited the said shop in order to purchase the counterfeit MTS Striker mobile phones and purchased seven MTS Striker Mobile Phones for Rs.550/- each only. A hand written receipt was provided to the investigator as proof of purchase. The investigator determined the same to be counterfeit

based on various identifying criteria such as cost, quality and the logo appearing on the packaging.

(vii) The defendants by adopting an identical/deceptively similar mark for identifying their various goods including mobile phones, have eroded the distinctiveness of the plaintiffs famous and well known brand. The inferior quality of the defendants goods also pose a threat to the plaintiffs‟ brand. The defendants by passing off their goods under identical marks have misrepresented to the customers and infringed plaintiffs‟ statutory and common law rights.

6. In the opinion of this Court, the defendants have no real prospect of defending the claim as they have neither entered appearance nor filed their written statement or denied the documents of the plaintiffs. Further, the plaintiffs are the prior registered user of the trade marks and logo in question.

7. In view of the above, the suit is decreed in favour of the plaintiffs and against defendants in terms of paragraph 43 a, b, c, d and h of the plaint along with the actual costs. The costs shall amongst others include the lawyer's fees as well as the amount spent on Court-fees. Registry is directed to prepare a decree sheet accordingly.

8. Consequently, the present suit and application stand disposed of.

MANMOHAN, J MARCH 05, 2018 js