Delhi High Court
Ht Media Limited & Anr vs Sandeep Singh & Ors on 23 March, 2018
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 284/2017
HT MEDIA LIMITED & ANR ..... Plaintiffs
Through Ms. Julien George with
Mr. Dhavish Chitkara,
Advocates
versus
SANDEEP SINGH & ORS ..... Defendants
Through None
% Date of Decision: 23rd March, 2018.
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
JUDGMENT
MANMOHAN, J (Oral):
1. Present suit has been filed for permanent injunction restraining
infringement of trademark, copyright, passing off, unfair business
practice, rendition of accounts, damages, etc. The prayer clause in the
suit is reproduced hereinbelow:-
"30. It is therefore most respectfully prayed that this
Hon‟ble Court may please grant the following reliefs in
favour of the Plaintiffs and against the Defendants:
a) Pass a decree of permanent injunction restraining
the Defendants, their Directors, principal Officers,
Partners, Proprietors, financers, Domain keepers,
Publishers, editors, employees, reporters, servants,
agents and/or any one claiming under them from in
any manner whatsoever, using the mark
„SHINE.COM" or any deceptive variant thereof
which is identical and/or similar to the Plaintiffs
trademark "SHINE" and "SHINE.COM", in respect
of their services or any other products or services
thereby amounting to infringement of trademark
and/or passing off;
b) Pass a decree of permanent injunction restraining
the Defendants, their Directors, principal Officers,
Partners, Proprietors, financers, Domain keepers,
Publishers, editors, employees, reporters, servants,
agents and/or any one claiming under them from
directly or indirectly using the proprietary data and
information, in any manner, and reproducing the
same, thereby amounting to infringement of the
copyright of the Plaintiff, residing in the literary
work.
c) An order of permanent injunction directing the
Defendants to transfer the email accounts
[email protected] and
[email protected] and any other email
account bearing the trademark SHINE being
operated by the Defendants, in favour of the
Plaintiffs;
d) An order of Rendition of Accounts of profits illegally
earned by the Defendants by reason of Passing off
their online job portal services and/or
business/services as those of the Plaintiff‟s and a
decree be passed against the Defendants in the exact
sum of the amount so ascertained;
e) An order for delivery up of all infringing materials
including letter heads, seals etc. bearing the
impugned marks, labels, patches, tags etc. and of
blocks, dies, stationery and any other printed matter
bearing the trademark SHINE.com to the authorised
representative of the Plaintiffs.
f) An order of Decree of Damages of Rs.20,00,000/- be
passed in favour of the Plaintiff and against the
Defendants, running from such date as this Hon‟ble
Court may deem fit and proper.
g) An order of legal costs and costs of the present
proceedings be awarded in favour of the Plaintiff
and against the Defendants."
2. At the outset, learned counsel for plaintiffs gives up prayers (d),
(e) and (f) of the prayer clause to the suit. The statement made by
learned counsel for plaintiffs is accepted by this Court and the
plaintiffs are held bound by the same.
3. Vide order dated 20th March, 2015 this Court granted an ex-
parte ad interim injunction in favour of the plaintiffs and against the
defendants, which was confirmed vide order dated 9th August, 2016
till disposal of the suit. This Court further appointed three Local
Commissioners to visit the premises of the defendants. The relevant
portion of the order dated 20th March, 2015 is reproduced
hereinbelow:-
"...Accordingly till the next date of hearing, the
defendants, their directors, principal officers, partners,
employees, agents and etc. are restrained from using the
mark "SHINE.COM" or any other deceptive variant
identical or similar to that of the plaintiff‟s mark "SHINE"
and "SHINE.COM" in relation o the services offered by
plaintiff amounting to infringement/passing off of the
trademark of the plaintiff"
4. Since the defendants neither appeared despite service nor filed
the written statement, defendant nos. 1 and 3 were proceeded ex parte
on 09th August, 2016 and defendant no.2 was proceeded ex-parte on
10th January, 2017.
5. In the plaint, it has been averred that the plaintiff no.1 is the
leading media house of the country engaged in print media, radio,
internet etc., and that the plaintiff no.2 is a subsidiary of the plaintiff
no.1. It is stated that the plaintiff no.2 acquired the domain name
"SHINE.COM" in the year 2007 and formally launched the website in
2008, and has since continued to use the trademark "SHINE" with
respect to recruitment services. It is stated that the trademarks
"SHINE.COM" and "SHINE" have been registered under various
classes with the registrar of trademarks. It is further stated that within
five years of the launch of the website www.shine.com by the
plaintiff, it has crossed 10 million registered candidates.
6. It is stated that the trademark "SHINE" is an arbitrary
trademark with regard to recruitment services thereby making the
aforesaid trademark a distinctive one. It is stated that by the virtue of
the extensive use, the trademark "SHINE" is exclusively associated
with the plaintiffs.
7. It is stated in the plaint that the plaintiffs‟ computer database on
its website www.shine.com, contains original content and was
prepared with independent skill and labour, thereby making it an
„original literary work‟ within the meaning of Section 2(o) of the
Copyright Act, 1957.
8. It is averred in the plaint that the plaintiffs had a turnover of Rs.
2,405 lacs for the year 2013-14. It is further stated that the plaintiffs
have been continuously advertising and promoting its said trademark
and the expenditure on advertising and promotion for the year 2013-14
was Rs. 2,168 Lacs.
9. Learned counsel for the plaintiffs states that in November, 2014,
the plaintiffs, through few of their subscribers, came to know that the
defendants were using the plaintiffs‟ trademark and passing off their
services as that of the plaintiffs. He states that the plaintiffs received
complaints stating that the defendants approached subscribers,
portraying themselves to be representatives of the plaintiffs and made
false promises of confirmed job opportunities in exchange for money.
He further states that the defendants were communicating to the
subscribers on false letter heads bearing the plaintiffs‟ mark
"SHINE.COM" and were making communications from email
accounts i.e., [email protected] and
[email protected], in view to mislead subscribers into
believing that the defendants were acting on the plaintiffs‟ behalf.
10. Learned counsel for the plaintiff states that upon further
investigation, the plaintiffs found that the defendant no.3 is a
subscriber of SHINE.COM database. He states that the defendants
subscribed to the services of the plaintiffs, to gain access to the
plaintiffs‟ database containing contact details of various candidates
and other proprietary information of the plaintiffs.
11. Learned counsel for the plaintiffs states that the defendants have
misused the computer database and proprietary data of the plaintiffs.
He further states that the defendants have caused confusion and
deception in the minds of the users, who have assumed a connection
between the plaintiffs and the defendants and deposited money with
the defendants.
12. The plaintiffs have filed their ex-parte evidence by way of
affidavit of Mr. Anup Sharma (PW1), to prove the facts in the plaint.
13. The PW1 has proved the registration certificates/applications of
the plaintiffs‟ trademarks as Ex.PW1/7(Colly).The PW1 has proved
documents reflecting use of the trademark "SHINE" and
"SHINE.COM" as Ex PW1/9. The PW1 has also proved complaints
forwarded to the plaintiffs by its subscribers as Ex. PW1/11(Colly).
14. Having heard learned counsel for plaintiffs as well as having
perused the papers, this Court is of the opinion that in view of the
registrations of the plaintiffs‟ mark as well as extensive use over
substantial period of time of the said marks, the plaintiffs‟ have
acquired reputation and goodwill in the marks in India.
15. From the evidence on record, it is apparent that without any
explicit permission or authorisation to use the plaintiffs‟ trademark,
the defendants have malafidely infringed the trademarks "SHINE"
and "SHINE.COM" of the plaintiffs.
16. Further, as the plaintiffs‟ evidence has gone unrebutted, said
evidence is accepted as true and correct. The Supreme Court in
Ramesh Chand Ardawatiya Vs. Anil Panjwani, AIR 2003 SC 2508
has held as under:-
"33. .........In the absence of denial of plaint averments
the burden of proof on the plaintiff is not very heavy. A
prima facie proof of the relevant facts constituting the
cause of action would suffice and the court would grant
the plaintiff such relief as to which he may in law be
found entitled. In a case which has proceeded ex parte
the court is not bound to frame issues under Order 14
and deliver the judgment on every issue as required by
Order 20 Rule 5. Yet the trial court should scrutinize the
available pleadings and documents, consider the
evidence adduced, and would do well to frame the
"points for determination" and proceed to construct the
ex parte judgment dealing with the points at issue one by
one. Merely because the defendant is absent the court
shall not admit evidence the admissibility whereof is
excluded by law nor permit its decision being influenced
by irrelevant or inadmissible evidence."
17. Consequently, the use of that the trademarks "SHINE" and
"SHINE.COM" by defendants amounts to infringement of copyright
as well as passing off of plaintiffs‟ trademark. The use of the
impugned mark by the defendants has caused loss and injury to the
plaintiffs and immense public harm.
18. Accordingly, present suit is decreed in accordance with the
paragraph 30(a), (b), (c) and (g). The cost shall amongst others
include the lawyers‟ fees, local commissioner‟s fee, publication
charges as well as the amounts spent on purchasing the court fees.
Registry is directed to prepare a decree sheet accordingly.
MANMOHAN, J
MARCH 23, 2018
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