Havells India Ltd vs Arise India Ltd & Anr
2018 Latest Caselaw 5354 Del

18
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*     IN THE HIGH COURT OF DELHI AT NEW DELHI

+     CS(COMM) 124/2017 & I.A. 21987/2014

      HAVELLS INDIA LTD                          ..... Plaintiff
                    Through:                     Mr. Sudeep Chatterjee
                                                 Ms. Nupur Lamba
                                                 Ms. Drishti Chatterjee

                           Versus

      ARISE INDIA LTD & ANR                      ..... Defendants
                     Through:                    Ex-parte


%                                Date of Decision: 6th September, 2018

CORAM:
HON'BLE MR. JUSTICE MANMOHAN

                            JUDGMENT

MANMOHAN, J: (Oral)

1. Present suit has been filed for permanent injunction restraining infringement of registered design bearing no. 215989, passing off, unfair competition, damages/rendition of accounts, delivery up, etc. The prayer clause in the suit is reproduced hereinbelow:-

"A. Pass a decree of permanent injunction restraining the Defendants, their C&F Agents, dealers, distributors, retailers, representatives agents and assigns from in any manner manufacturing and/or selling the DIAMOND Series range of ceiling fans or any other fans which constitute infringement of registered design No. 215989;

B. Pass a Decree of permanent injunction restraining the Defendants their C&F Agents, dealers, distributors, retailers, representatives agents and assigns from in any manner manufacturing and/or selling ceiling fans, as also from promoting the infringing range of ceiling fans using the identical website features, colour series, get-up, layout as that of the Plaintiff's FUSION-2 & CANDY range of ceiling fans so as to result in passing off, unfair competition and piracy;

C. Pass a Decree of delivery up of all the infringing products, including ceiling fans and parts thereof, packing of DIAMOND series ceiling Fans, Brochures, pamphlets, price list and any other material bearing infringing designs for the purpose of destruction and erasure;

D. Pass a decree of damages and/or rendition of accounts to the tune of Rs. 25 lakhs. The Plaintiff undertakes to file additional court fee if on appropriate rendition of accounts by the Defendants a higher amount is found to be due and is direction by this Hon'ble Court.

E. Any such further order as this Court may deem fit and appropriate in the present facts and circumstances of the present case be passed in favour of the Plaintiff and against the Defendants."

2. Vide order dated 07th July, 2014, an ad-interim ex-parte injunction order was passed. The relevant portion of the said order is reproduced hereinbelow:-

"I have heard counsel for the plaintiff and perused the plaint, application and the supporting documents. I am satisfied that this is a fit case for grant of ex parte ad interim injunction. Accordingly, till the next date of hearing, defendants, their C&F Agents, dealers, distributors, retailers, representatives, agents and assignees are restrained from selling the impugned DIAMOND series of ceiling fans or any other fans which are either identical or deceptively similar to

the plaintiff's FUSION-2 and CANDY series or which are a colourable imitation or a substantial reproduction of plaintiff's design, get-up, layout, trade dress, pattern, shape, configuration and packaging in their FUSION-2 and CANDY series."

3. On 07th July, 2014, the learned Predecessor of this Court also appointed two Local Commissioners. During the local commission, defendant no.3-Mr. Ghanshyam Singh, owner/manufacturer at Universal Appliances (India) was found to be in possession of the counterfeit products infringing the plaintiff's trademark.

4. This Court confirmed the interim order of injunction in favour of the plaintiff vide order dated 05th September, 2014.

5. The learned counsel for the plaintiff states that the plaintiff had previously filed a suit against the defendant no.3 being CS (OS) 3157/2012. He further states that vide order dated 27th May, 2015, the present matter was settled with defendant no. 3 in view of the joint compromise application filed by the parties under Order XXIII Rule 3.

6. The defendant nos. 1 and 2 entered appearance and filed their written statement. Since the defendants had not filed any documents, the plaintiff was not in a position to conduct admission/denial of documents. In fact, multiple opportunities were granted to the said defendants to place on record their documents as reflected in the orders dated 02nd May, 2018, 01st June, 2018 and 10th August, 2018. However, none has been appearing on the behalf of said defendants since 02nd May, 2018. Today also none appears for defendant nos. 1 and 2. Accordingly, they are proceeded ex-parte.

7. Learned counsel for the plaintiff 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 49 (a) and (b) 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."

8. The relevant facts of the present case as pointed out by the learned counsel for the plaintiff are as under:-

I. The plaintiff is engaged in the electrical and power distribution equipment business. The plaintiff is a $1.3 billion Fast Moving Electrical Goods (FMEG) company. The plaintiff is the market leader in the manufacturing and trading of various types of fans.

II. In 2008, the plaintiff's Centre for Research and Innovation Department (CRI) created a new and original design range of fans under the series FUSION-2 bearing original design, trade dress, get-up, lay-out, pattern, shape, configuration, colour scheme giving it a unique and aesthetic appearance for its ceiling fans. The unique features of the series are:-

 Triangular Wedges  Unique Conical Canopies  Contrasting Coloured Blades

III. The plaintiff is a registered proprietor of the design bearing No. 215989 with respect to ceiling fans sold under the brand FUSION - 2 series.

IV. The plaintiff also sells it's highly popular range of ceiling fans under the range of CANDY series since 2007, having a unique trade dress, get-up, lay-out, pattern, shape, configuration, colour scheme. The plaintiff's ceiling fans under the brands FUSION-2 and CANDY have acquired enormous amount of goodwill due to their aesthetic and rich appearance and are in extensive use amongst all classes of purchasers including domestic purchasers, shops, showrooms, malls, hotels, restaurants, etc. The plaintiff's fans sold under the FUSION-2 and CANDY series due to their get up have acquired distinctiveness as well as secondary meaning as to their source.

V. The total sales of the fans under the brand of CANDY series in the year 2009-2014 was 30,000 units and the sales figure for FUSION-II series at the time of filing the suit for the financial year 2013-2014 was Rs. 14 crore.

9. Learned counsel for the plaintiff states that the plaintiff in March, 2012, discovered that the defendant no.1 was marketing and selling its range of ceiling fans under the brand DIAMOND MF and DIAMOND TJ,

identical to ceiling fans as that of the FUSION-2 and CANDY series of the plaintiff. Subsequently, the plaintiff issued a cease and desist notice dated 19th March, 2012 to the defendants and vide reply dated 09th April, 2012, the defendants assured the plaintiff that there will be no sale or marketing of the impugned products. He also states that defendant nos. 1 and 2 are traders and distributors and defendant no.3 was the manufacturer of the impugned products.

10. Learned counsel for the plaintiff states that the plaintiff was of the bonafide belief that the impugned products had been withdrawn from the market. However, subsequently, the market representatives of the plaintiff learnt that the products of the defendants were being advertised in the June, 2014 edition of Sourcing Electrical & Lighting magazine.

11. Learned counsel for the plaintiff also states that the plaintiff in order to ascertain the exact nature of infringement by the defendants visited the website of the defendants i.e., www.ariseindialtd.com and it was revealed that they had again started marketing and manufacturing its ceiling fans in an identical design, get up, layout, trade dress, pattern, shape and configuration as that of FUSION-2 and CANDY series of ceiling fans of the plaintiff.

12. Learned counsel for the plaintiff states that not only is the overall appearance and features of the defendants fans identical to the plaintiff's range of FUSION-2 and CANDY series, even the colour scheme of the defendant no.1's fans is identical to that of the plaintiff's. The aforesaid essential features pointed out by learned counsel for plaintiff are reproduced hereinbelow:-

13. Learned counsel for the plaintiff states that the essential/unique features have been imitated/dishonestly adopted by the defendants. The aforesaid essential features pointed out by learned counsel for plaintiff are reproduced hereinbelow:-

a) Identical lower canopy that results in a perfect cone which is

unique to the plaintiff's registered design;

b) Identical blades;

c) Identical triangular wedges upon blades;

d) Differential and colour combination (contrasting);

e) Colour series being identical;

f) Identical circular Dome in the middle of the fan with a gold coloured rim contrasting with the Rod which consists of the motor;

g) Similar measurements.

14. Learned counsel for plaintiff further states that the adoption of the plaintiff's FUSION-2 and CANDY series by the defendants was with the intent to dilute the distinctive design of the plaintiff's brand.

15. In the opinion of this Court, the defendants No.1 and 2 have no real prospect of defending their claim. Further, the plaintiff is the registered proprietor of the design in FUSION-II series.

16. Accordingly, present suit is decreed in accordance with the paragraph 49 (a) and (b) of the plaint along with the actual costs incurred by the plaintiff. The cost shall amongst others include the lawyers' fees, local commissioners' fee as well as the amounts spent on purchasing the court fees. Registry is directed to prepare a decree sheet accordingly.

MANMOHAN, J SEPTEMBER 06, 2018 rn/as