Xerox Corporation & Anr vs P K Khansaheb & Anr
2019 Latest Caselaw 3160 Del

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*     IN THE HIGH COURT OF DELHI AT NEW DELHI
                                 Date of decision: 12th July, 2019.
+              CS (COMM) 1196/2016 and I.A. 7727/2019
      XEROX CORPORATION & ANR                        ..... Plaintiffs
                    Through: Ms. Shwetasree Majumder and Ms.
                             Eva    Bishwal,    Advocates          (M:
                             8130676006).
                    versus
      P K KHANSAHEB & ANR                          ..... Defendants
                    Through: Mr. Ravi Gupta, Sr. Advocate, Mr.
                             N.K. Bhardwaj, Mr. Bikash Ghorai
                             and Mr. Sachin Jain, Advocates (M:
                             9810147174).
      CORAM:
      JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)

1. The present suit has been filed by the Plaintiff seeking permanent injunction restraining infringement of trademark, passing off, dilution, tarnishment, damages etc. The Plaintiff claims ownership in the trademark XEROX which was coined by Haloid Company, the predecessor of the Plaintiff-company, in the year 1948. As per the Plaintiff, the said mark has been used extensively across the globe including in India. The word mark XEROX is an invented mark which has been coined by the Plaintiff by combining the Greek words for „dry‟ and „writing‟. Plaintiff No. 1, i.e., Xerox Corporation, conducts its operations in India through Xerox India Limited, i.e., Plaintiff No. 2, which was incorporated in 1983. The trademark XEROX is registered in respect of goods in various classes in India, including Classes 1, 7 and 9, with the earliest trademark dating back to 1952. Details of the above-mentioned registrations are provided below:

                                  REGN.     DATE OF
          TRADEMARK      CLASS                          STATUS
                                  NO.       FILING
             XEROX         01    155627    22.09.1952   Registered
             XEROX         01    217823    18.09.1963   Registered
             XEROX         07    217824    18.09.1963   Registered
             XEROX         09    217825    18.09.1963   Registered
          XEROX THE
          DOCUMENT         09    546220    27.09.1991   Registered
           COMPANY

2. The Plaintiff claims that the mark XEROX has become a well-known trademark and remains a coveted property of the Plaintiff. The grievance of the Plaintiff is that Defendant No. 2, Parle Products Private Limited, a company which manufactures biscuits and confectionery, launched an advertisement in 2006 for its mango candy "Kachha Mango Bite". In the said advertisement, Defendant No. 2 used the tag line "KACHE AAM KA ZEROX". According to the Plaintiff, the use of the word ZEROX is violative of the Plaintiff‟s trademark rights in the mark XEROX. Accordingly, the Plaintiff issued a legal notice dated 10th January, 2006, calling upon the Defendants to withdraw the said advertisement. The Defendants thereafter modified their advertisements by doing a voice over on the word ZEROX in the script by using the word "PHOTOCOPY". However, the by-line continued to read as "KACHE AAM KA ZEROX". In 2007, the Defendants modified their advertisement again by using the phrase "Kache Aam Ka Copy" in the voice-over as well as the by-line.

3. After a span of 6 to 7 years, in December, 2013, the Defendants re- launched the television commercial for their product "Kachha Mango Bite" by again using the word ZEROX in the by-line and voice-over. At this stage,

the Plaintiff sent a legal notice dated 21st January, 2014 to the Defendants. Reply was received on 30th January, 2014 by which the Defendants sought additional time to file a reply. Finally, on 25th April, 2014, the Defendants replied by refusing to acknowledge the Plaintiff‟s proprietary rights in the word XEROX. The Defendants also threatened the Plaintiff with legal proceedings. This led to the filing of the present suit. The reliefs prayed for in this suit are as under:

"i) Pass and pronounce a decree of permanent injunction restraining the Defendants, its principle officers, directors, partners, representatives, franchises, stockists, dealers and agents or any other person claiming under or through them or acting in concert with them or otherwise from using the mark ZEROX or any other trademark deceptively/ confusingly similar to the Plaintiff's mark in any form of advertisement whether in print or visual media, or in any other manner as may lead to infringement of the Plaintiff's registered trademark XEROX;

ii) Pass and pronounce a decree of permanent injunction restraining the Defendants, its principle officers, directors, partners, representatives, franchises, stockists, dealers and agents or any other person claiming under or through them or acting in concert with them or otherwise from using the mark ZEROX or any other trademark deceptively/ confusingly similar to the Plaintiff's mark in any form of advertisement whether in print or visual media, or in any other manner as may lead to deceive or cause confusion resulting in passing off the Defendant's products or business for the products or business of the Plaintiff;

iii) Pass and pronounce a decree of permanent injunction restraining the Defendants, its principle officers, directors, partners, representatives, franchises, stockists, dealers and agents or any other

person claiming under or through them or acting in concert with them or otherwise from using the mark ZEROX in any form of advertisement whether in print or visual media, or in any other manner as may lead to dilution of the Plaintiff's trademark XEROX;

iv) Pass and pronounce a decree of permanent injunction restraining the Defendants, its principle officers, directors, partners, representatives, franchises, stockists, dealers and agents or any other person claiming under or through them or acting in concert with them or otherwise from using the mark ZEROX in any form of advertisement whether in print or visual media in conjunction with the product Parle Kachha Mango Bite as may lead to tarnishment of the Plaintiff's trademark XEROX;

v) Pass a final money decree of Rs. 25,00,000/-

towards damages in favor of the Plaintiffs and against the Defendants or in such higher sum as may be ascertained pursuant to the accounts being rendered;

v) An order for costs of the suit; and

vi) Any further and other reliefs as the nature and circumstances of the case may require."

4. The suit was listed on 13th August, 2014 on which date an ex-parte ad interim order was granted, directing the Defendants not to use the mark ZEROX or any other mark deceptively/confusingly similar to the Plaintiff‟s trademark. The operative portion of the said order reads as under:

"I have heard learned senior counsel for the plaintiffs and also perused the plaint, application and the documents filed along with the plaint. I am satisfied that it is a fit case for grant of ex parte ad interim injunction. Accordingly, till the next date of hearing, defendnats, their principal officers, Directors, partners, representatives, franchises, stockists, dealers and agents, or any other person claiming under or through them or acting in concert with them or

otherwise are restrained from using the mark ZEROZ (sic ZEROX) or any other trade mark deceptively/confusingly similar to the plaintiffs' trade mark in any form of advertisement whether in print or visual media, or in any other manner.

Plaintiff shall comply with the provisions of Order XXXIX Rule 3 CPC within four days from today."

5. The said interim order was continued until further orders. The Defendants have moved an application under Order XXXIX, Rule 4 which is still pending. In the meantime, admission/denial of documents was concluded. Issues were framed on 16th May, 2017. The Plaintiff filed its affidavit in evidence along with a large number of additional documents which were exhibited by the Joint Registrar. This exhibition of documents was challenged by the Defendant which led to the order dated 3 rd December, 2018, allowing the documents to be taken on record. The matter was carried in appeal by the Defendant vide order dated 27th May, 2019. The appeal was disposed of with the direction that the application filed by the Plaintiff for taking the additional documents on record would be heard. Plaintiff‟s witness was also partially crossed examined in the meantime on 17th January, 2019.

6. Today, the matter has been listed before this Court pursuant to the order of the Division Bench. Counsel for the Plaintiff has submitted that there are various valid reasons why the documents could not be filed and in any case, since one of the issues framed is in respect of competency of the Plaintiff‟s constituted attorney and the fact that the Defendant has challenged advertising by the Plaintiff, the Plaintiff had to file additional documents. Learned counsel for the Defendants opposes the additional

documents taken on record.

7. However, on enquiry by this Court, ld. counsel for the Defendants states that the advertisement which was running for its product "Kachha Mango Bite" has since been stopped and is not likely to be re-launched in any manner. The television commercial is also off air and the by-line is also not being used. The Plaintiff, as recorded in order dated 3rd December, 2018, had agreed not to press for damages and costs if the Defendants agreed not to re-telecast the television commercial and withdraw the oppositions filed against the Plaintiff‟s trade marks. The relevant portion of the order dated 3rd December, 2018 is set out below:

"25. In this matter, mediation was explored earlier. On the last two hearings, i.e. on 16th October, 2018 and 23rd October, 2018, the matter was adjourned in order to enable the Defendant to seek instructions. This was due to the fact that the Plaintiff had made an offer for settlement to the Defendant i.e. that if the Defendant agrees not to re-telecast the television commercial using the word ZEROX or XEROX and withdraw the oppositions filed against the Plaintiff's trade marks, the Plaintiff would be willing to give up its claim for damages and costs. However, the Ld. Counsel for the Defendant has, upon instructions, submitted that the Defendant wishes to contest the matter on merits. The Plaintiff's offer for settlement and the Defendant's stand is being recorded in order to enable the Court to determine costs under Section 35(3)(d) of the Commercial Courts Act as also Chapter XXIII Rule 2 of the DHC (OS) Rules (as amended on 1st November, 2018), in respect of costs of the suit."

8. Mr. N.K. Bhardwaj appearing for the Defendants submits that the Defendants do not have any intention of re-telecasting the commercial by

using the impugned tag line "KACHE AAM KA ZEROX". The Plaintiff has already agreed to give up damages and costs.

9. Considering the stand of the Plaintiff and the Defendants, this Court is of the opinion that under the provisions of Order XV-A as amended by the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015, no issue in fact survives in as much as the cause of action in the present suit is in respect of the television commercial which uses the work ZEROX. Since the Defendants do not intend to use the word ZEROX, the Defendants are directed to not launch the impugned television commercial with the word ZEROX or any other mark identical/similar to the Plaintiff‟s mark XEROX. The Defendants shall also withdraw the oppositions filed to the Plaintiffs‟ mark XEROX within a period of four weeks. No issue remains for being adjudicated in the present suit.

10. If the Defendants at any future point intend to use the word XEROX or ZEROX or any other similar mark in advertising or in any other manner, the Defendants shall give at least one month advance notice to the Plaintiff- companies. The Defendants are at liberty to use the words "Kachha Mango Bite" which is the Defendants own trademark, in respect of which there is no order passed by this Court in this matter.

11. The suit is decreed in the above terms. Decree sheet be drawn.

PRATHIBA M. SINGH JUDGE

JULY 12, 2019 MR