Delhi High Court

Freemans Measures Pvt Ltd vs Mankaran Bhandari & Ors on 22 December, 2020

        IN THE HIGH COURT OF DELHI AT NEW DELHI

                               Judgment delivered on: December 22, 2020

+      CS(COMM) 981/2016, I.A. 16792/2013

       FREEMANS MEASURES PVT LTD
                                                                   ..... Plaintiff

                                    Through:   Ms. Diva Arora, Adv.


                      versus

       MANKARAN BHANDARI & ORS.
                                                                ..... Defendants

                                    Through:

       CORAM:
       HON'BLE MR. JUSTICE V. KAMESWAR RAO
                                 JUDGMENT

V. KAMESWAR RAO, J

1. The present suit has been filed by the plaintiff against the

defendants seeking permanent injunction, restraining infringement of

Registered Design, Infringement of Trade Marks, Copyright passing off,

rendition of accounts and damages, with the following prayers:

"a) An order of permanent injunction restraining the Defendants, its principal officers, servants, agents, representatives, dealers and all others acting for and on its behalf, from making, selling, offering for sale, advertising, directly or indirectly dealing in measuring tapes being an obvious and fraudulent imitation of the designs of the Plaintiffs measuring tapes amounting to infringement of

Plaintiffs registered design Nos. 188502 and/ or 180562 and / or 189251 respectively;

b) an order for permanent injunction restraining the Defendant, its wholesalers, distributors, partners or proprietors, as the case may be, its officers, servants and agents from manufacturing, selling, exporting, importing, offering for sale, distributing, advertising, directly or indirectly dealing in measuring tapes or goods of any description bearing the trademark "Mi-19" and/ or any deceptively similar mark to the Plaintiff's trademarks "Hi- WIDE", "Hi-16", "Hi-19" and/ or "Hi-25", amounting to infringement of the Plaintiff's registered trademark "Hi- WIDE" under Nos. 1009497, "Hi-16" under Nos. 1008739, "Hi-19" under No. 1008740 and "Hi- 25" under No. 1008741 in class 9 respectively;

c) an order for permanent injunction restraining the Defendant, its wholesalers, distributors, partners, or proprietor as the case may be, its officers, servants and agents from using, manufacturing, selling, exporting, importing, offering for sale, distributing, advertising, directly or indirectly dealing in any packaging and/ or label or any material that contains any artistic work with a get up, layout, colour combination, arrangement of features and text that is identical and/ a substantial reproduction of the get up, layout, colour combination, arrangement of features of the artistic work and text of the Plaintiffs "Hi-WIDE" and/or "Hi-16" and/ or "Hi-19" and/ or "Hi-25" and "CENTIFLEX" amounting to infringement of the Plaintiffs copyright therein;

d) an order for permanent injunction restraining the Defendant, its directors, wholesalers, distributors, partners, or proprietor as the case may be, its officers, servants and

agents from manufacturing, selling, exporting, importing, offering for sale, distributing, advertising, directly or indirectly dealing in measuring tapes or other goods bearing trademark "Mi-19" and/ or "CONFLEX" or any deceptively similar mark/label(s) including, but not limited to "Hi- WIDE" and/or "Hi-16" and/or "Hi-19" and/ or "Hi-25" and "CENTIFLEX", including any identical / similar trade dress/packaging as that of the Plaintiff's "Hi-WIDE" and/or "Hi-16" and/or "Hi-19" and/ or "Hi-25" and "CENTIFLEX" or bearing the striking features of the Plaintiffs' measuring tapes so as to misrepresent their products as those of the Plaintiff and from doing any other thing as may cause confusion or deception leading to passing off of the Defendant's goods and business as those of the Plaintiff;

e) For an order for the delivery up on affidavit to the Plaintiffs representative of all the Defendant's inventory of door springs, plates, moulds, dies, blocks, films, negatives and printed matter such as packaging, cartons, stationery, etc. for the purposes of destruction;

f) An order of damages in the sum of Rs. 20,05,000/- in favour of the Plaintiffs and against the Defendant;

g) For an order for rendition of accounts to ascertain the actual profits earned by the defendant by the sales of toothbrushes bearing the impugned design and a decree be passed for the amount found due in favour of the Plaintiffs on such rendition of accounts;

h) For an order for the cost of the proceedings;"

2. The Plaintiff is a company incorporated on November 16, 1984

under the Companies Act, 1956 having its principal place of business and

registered office at GT Road, Jugiana Ludhiana Punjab. Thereafter the

Company became a deemed public company and converted into a public

ltd. company until January 12, 2004 when the Plaintiff was converted into

a Pvt. Ltd. company. The present suit has been filed through Mr. Samir

Nayar as the Constituted Attorney. The Power of Attorney has been filed

along with the suit.

3. Defendant No. 4 is Ambika Overseas incorporated under the

Companies Act, 1956 on April 17, 1996 having its principal place of

business and registered office at Ambika House, Model House Road,

Basti Sheikh, Jalandhar City 144002 Punjab. Defendant No. 1 -

Mankaran Bhandari is the chairman of defendant No. 4 Company and

defendant No. 2 and defendant No. 3 Randhir Bhandari and Sameer

Bhandari respectively are sons of defendant No. 1 and also directors of

defendant No. 4 Company.

4. It is the case of the plaintiff that defendant No. 4 i.e., Ambika

Overseas is an entity engaged in dealing in measuring tapes, tools, etc.

which is claimed to be identical to the plaintiff's registered design number

180562, 188502 & 189251 and in label marks/trade dresses that are a near

identical reproduction of the plaintiff's product packaging/trade

dress/label mark for its goods sold under the well-known trademarks 'Hi-

Wide', 'Hi-16', 'Hi-19', 'Hi-25' and 'CENTIFLEX' respectively.

5. Plaintiff stated that it is one of the first measuring tape

companies in India with roots going back to 1950 and has since been in

the business of supplying high quality tools and products. Plaintiff

company presents itself as being the only Indian Company offering a

comprehensive range of tapes of various models and designs in steel tape

measure, tape rule and fibreglass tape measure.

6. The plaintiff has also stated that it has acquired a major share in

the Indian market due to its high quality of product. Plaintiff has

submitted that it is amongst the few companies to get an EEC approval

which goes to testify that the plaintiff's products are competent in the

International markets and comply with International Quality Standards.

The plaintiff also has an ISO-9001-2008 Certification by the American

Quality Assessors and has established its brand in over 60 countries

around the world. The plaintiff company is also the first Indian company

to obtain the ISI Mark in the measuring tape industry as per IS 1269: Part

1: 1997 and IS 1269: Part 2: 1997.

7. The plaintiff submitted that, in the present case the plaintiff

company has dealt with specially two of its better-known products/

designs which are sold under the mark Hi-16' and 'Fiber Plastika'.

Plaintiff's product Hi-16' is a measuring tape bearing Design Registration

no. 188502 (Exh.PW 1/10) dated March 21, 2002, which has been duly

renewed and is currently valid and is sold under the trademark Hi-16'. The

shape, configuration and surface pattern are distinctive and unique to the

plaintiff's measuring tape sold under the trademark 'Hi-16'. Plaintiff has

another Design registration no. 180562 (Exh.PW 1/12) dated October 12,

1999 (and the same has been duly renewed and is currently valid) for its

Hi-16' product i.e., a measuring tape bearing novel and distinctive

features in shape and configuration.

8. It is the case of the plaintiff that the Design Registration No.

189251 (Exh.PW 1/14) pertains to the 'Fiber Plastika' product. Plaintiff

has also obtained registrations of designs with respect to the parts of the

measuring tapes i.e., the shape and configuration of the Tape Winder.

9. The Plaintiff has stated that it has been using the steel measuring

tape under the design number 180562 since November, 1999 and steal

measuring tape under the design No. 188502 since April, 2002 and the

Fibre Measuring Tapes under design no. 189251 since June 2002. The

plaintiff has stated that they have marketed and promoted the said

products in India and abroad on a substantial scale and have said to have

been met with unprecedented success and further stated that the design of

the aforesaid measuring tapes has come to be exclusively identified with

the plaintiff by the members of the trade and the public in general. The

plaintiff has contended that they have earned substantial good will and

reputation inter alia in the designs of the said measuring tapes; due to its

creation of the said designs, the same have acquired a secondary meaning

in the eyes of the public denoting them as the goods of the plaintiff.

10. Plaintiff has stated that it has well known trademarks i.e., 'Hi'

series of label marks/ trade dress such as 'Hi-Wide', 'Hi-16', 'Hi-19', 'Hi-

25' and 'CENTIFLEX' (Exh.PW 1/19) under Class 9 and stated that the

plaintiff has been manufacturing tapes under the said trademarks and that

these trademarks have been exclusively associated with the plaintiff. It has

stated that the defendants have infringed upon the same, since the

trademarks have used distinctive colour schemes, layout, get up, fonts and

the said label marks/ trade dresses have exclusively been associated with

the plaintiff company's products. Another application numbered 1009498

for registration of the 'Hi-Wide' device/label under class 9 pending before

Registrar of Trade Marks.

11. The plaintiff has stated in the plaint that it has coined the

arbitrary mark 'Hi-Wide' and has been using the same in respect of its

goods since 1999 continuously and extensively. That apart, the plaintiff

also uses a series of marks with the prefix 'Hi' in combination with

various numbers for example 'Hi-16', 'Hi-19' and 'Hi-25' under the

umbrella trademark of the plaintiff company 'GK FML' in respect of its

products. In addition it is stated that common law rights exist in favour of

the plaintiff due to the adoption of innately distinctive trademarks 'Hi-

Wide', 'Hi-16', 'Hi-19' and 'Hi-25', of which the plaintiff has been the

long, extensive, and continuous user of. The plaintiff has also stated that

these trademarks have been duly renewed and are subsisting and has

stated that by virtue of the said registrations the plaintiff has the exclusive

right to use the trademarks in relation to the goods in respect of which the

trademark is registered and seek relief in respect of the infringement of the

registered trademark as provided by the Trademarks Act, 1999

(Trademarks Act for short). The Plaintiff had provided the details of their

registered trademarks, which are reproduced hereunder:

      Trademark       Class   Registration No.        Date of             Goods
                                                    registration


       Hi-WIDE         9         1009497         15th May 2001     Measuring tapes,
                                                                   snap off cutter,
                                                                   torpedo level and tie
                                                                   hanger and other
                                                                   measuring
                                                                   instruments, falling
                                                                   in class 9


         Hi-16         9         1088739         20th March 2002   Measuring tapes,
                                                                   snap off cutter,
                                                                   torpedo level and tie
                                                                   hanger and other
                                                                   measuring
                                                                   instruments, falling
                                                                   in class





          Hi-19        9         1088740     20th March 2002   Measuring tapes,
                                                              snap off cutter,
                                                              torpedo level and tie
                                                              hanger and other
                                                              measuring
                                                              instruments, falling
                                                              in class


         Hi-25        9         1088741     20th March 2002   Measuring tapes,
                                                              snap off cutter,
                                                              torpedo level and tie
                                                              hanger and other
                                                              measuring
                                                              instruments, falling
                                                              in class

12. In addition to the aforementioned the plaintiff submitted that it

also used its registered house mark/ label mark i.e. 'GK-FML' on most of

its products, the house mark being 'GK FML AKVN Enterprise' registered

under No.1369625 in Class 9 and label mark 'GK FML Standard

Measures' also under Class 9.

13. Plaintiff stated that it had been using the label mark/trade dress

in respect of its products under the registered trademark 'Hi-Wide' since

1999 along with the series of label marks / trade dress under the registered

trademark 'Hi-16', 'Hi-19' and 'Hi-25' in respect of its products with

minor/ slight modifications/ variations in the label mark /trade dress in

respect of variants of measuring tapes in order to indicate size, width, etc.

The applications for the said label marks and its variants are pending

before the Registrar of Trade Marks.

14. Plaintiff also claimed that it has copyright, as per section 2 (c) of

the Copyright Act 1957 (hereinafter Copyright Act) over its trade/label

mark and trade dress, the colour combination, layout, get up and the

lettering style used on the logo, i.e., white base along with black and white

alphabets, font style, letters in black and white colour and words written in

English and Urdu bearing plaintiff's trademark 'Hi-Wide', 'Hi-16', 'Hi-

19' and 'Hi-25'.

15. Plaintiff has also claimed to have been using the mark

'CENTIFLEX' since the year 2000. The plaintiff also claims that the

product bearing the mark 'CENTIFLEX' bearing colour combination,

layout, get up and lettering style used on the logo, i.e., yellow base,

orange, blue and white alphabets, bearing the trademark 'CENTIFLEX'

constitute original artistic work under section 2 (c) of the Copyright Act.

16. The plaintiff in the plaint has submitted its sales' figures which

have grown from Rs.1,48,000 in the year 2003-04 to Rs.4,04,030 in the

year 2010-2011. The plaintiff has spent over a sum of Rs.7,64,000 till date

on advertisement and promotion of its said products.

17. The plaintiff claimed that measuring tapes under the trademarks

'Hi-Wide', 'Hi-16', 'Hi-19', 'Hi-25' and 'CENTIFLEX' bearing the

unique and distinctive label marks/trade dress respectively are sold

throughout India and overseas and have acquired reputation and goodwill,

due to the excellent quality, distinctive packaging, colour combination,

stylised manner of writing, etc. The plaintiff submitted that as a result of

continuous and extensive use of both the said label mark/ trade dresses

over a long period of time spanning a wide geographical area coupled

with promotion and publicity the said trademarks enjoy a reputation and

goodwill in the market and have acquired the status of a 'well known'

trademark and that the products under the said marks are associated solely

and exclusively with the plaintiff and no one, else by the members of the

trade and public in general.

18. The plaintiff has submitted that the cause of action arose in the

first week of March 2012, when the plaintiff was shocked to learn of a

label mark/ trade dress of defendant No. 4's products bearing the mark

and label of 'Mi-19' with respect to measuring tapes which the plaintiff

claims to be deceptively similar to the Plaintiff's 'Hi-Wide', 'Hi-16', 'Hi-

19' and 'Hi-25'; the plaintiff stated that the defendants had made

minor/insignificant changes in the impugned label. Thereafter plaintiff

submitted that another cause of action arose when they came across

defendant No. 4's advertisement published in the Yellow Pages wherein

the defendants had shown steel measuring tapes identical to the plaintiff's

registered design numbers 188502 and 180562 used under the mark 'Hi-

16'; additionally, submitted that the defendants were also copying

plaintiff's registered design under number 189251 the mark 'Fiber

Plastika'. The plaintiff has further taken a stand in the plaint that the cause

of action is present and subsisting.

19. Furthermore, it was also submitted by the plaintiff, that the label

mark/trade dress of defendants' products under the mark 'CONFLEX' is

also infringing the plaintiff's label mark/trade dress of its measuring tapes

bearing the mark 'CENTIFLEX'. The plaintiff had also contended that the

defendant had no plausible explanation to adopt such deceptively similar

marks and label marks/trade dress but with a mala fide intention to come

close to the plaintiff's product and were also infringing and passing off

various registered designs, trademarks and its copyright, in violation of

the plaintiff's intellectual property.

20. The plaintiff stated that since it had believed that the defendants

had no plausible explanation to adopt such a deceptively similar mark/

trade dress, and it has done so with mala fide intention in order to ride on

the plaintiff's goodwill. In the month of April 2012, plaintiff is stated to

have commissioned an investigator in order to find out about the activities

of the defendants. The investigator is stated to have visited the shops of

defendants' dealer i.e., Dewan Chand Madan Lal & Sons located at

Hakim Baqa Street, Hauz Kazi, Delhi; where the investigator met one

Neeraj Aggarwal, who stated that they are dealers/agents of the defendants

and that they sell products in Delhi, the investigator was also stated to

have been informed about the launch of their measuring tapes in about one

or two months. The plaintiff has also filed the visiting cards and brochures

herewith.

21. The plaintiff has argued that it is clear to any observer when

judged solely by the eye, the design of the defendants' product under the

mark 'Mi-19' is a fraudulent and obvious imitation of the plaintiff's

products under the trademark 'Hi-16' which are subject matter of

registered designs and stated that the defendants have tried to imitate the

plaintiff's registered design nos. 188502 and 180562. The plaintiff further

stated when solely judged by the eye, the design of defendants' product

under the trademark 'Fibertex' is a also a fraudulent imitation of the

registered design of the plaintiff's products sold under the trademark

'Fiber Plastika' which is also a matter of a registered design No 189251

and therefore stated that the use of same shape, configuration, surface

pattern, composition of lines, colours is too similar to be a mere

coincidence, it was stated that the distinctive pattern is also a key factor in

the consumer's decision to purchase the products. The plaintiff then goes

on to argue that there is no difference between, any of the essential

features of the plaintiff's registered designs and that of the defendants'

impugned product designs and that this amounts to an infringement of

plaintiff's prior statutory rights. It was also contended that this was an

attempt by the defendants to borrow the fruit of plaintiff's labour and ride

on their goodwill and reputation in order to divert to itself the business

generated by success of the plaintiff's products which the plaintiff stated

amounted to infringement of their design as well as passing off its

products as those of the plaintiff.

22. The plaintiff argued that this adoption by the defendants of the

marks and labels/ trade dress 'Mi-19' and 'CONFLEX' which are

confusingly and deceptively similar trademarks/label marks to the

plaintiff's trademarks/label marks 'Hi-WIDE', 'Hi-16', 'Hi-19' and 'Hi-

25' and 'CENTIFLEX' are rendered even more dishonest as the

trade/dress/get up etc. are absolutely identical to that of the plaintiff's

marks. The plaintiff has argued that there is a clear case of infringement of

trademark and copyright along with passing off and dilution. The

argument advanced by the plaintiff has been that the slavish imitation and

reproduction of the overall get up, layout, arrangement of features, colour

schemes etc. is too similar to be a coincidence and appears as if an attempt

is made out to counterfeit the plaintiff's aforementioned trademarks.

23. It was argued by the plaintiff that the colour combination, get up

of and the lettering style, i.e. white base, font style and lettering of the

words in black and white, red rectangles on the logo, 'Hi-Wide' and/ or

'Hi-16' and/ or 'Hi-19' and/ or 'Hi-25' in black colour renders the said

label as an original artistic work within the meaning of Section 2 (c) of the

the aforesaid labels and is entitled to all the exclusive rights that flow from

such ownership as set out in section 14 of the Copyright Act. The plaintiff

argues, similarly the copyright of artistic work with the mark

'CENTIFLEX' comprising of the colour combination, layout, get up of

and the lettering style, i.e., yellow base, font style and lettering of the

words in yellow, black and white, belongs to the plaintiff.

24. It is the case of the plaintiff that the features of the designs of the

plaintiff's measuring tapes are non-functional and that the said designs

have come to be exclusively associated with the plaintiff and are identified

by the customers as belonging to the plaintiff only, it was also submitted

that the distinctive pattern is also a key factor in the consumer's decision

to purchase the products.

25. It is the case of the plaintiff that there is no difference between

any of the essential features of the plaintiff's registered designs and that of

the defendants' impugned product designs. It has been submitted that the

said designs have come to be exclusively be associated with the plaintiff

and by replicating the plaintiff's novel shaped measuring tapes made of

steel and fibre; the defendants have tried to divert business through

misrepresentation. The plaintiff has argued that the defendants have

imitated the overall get up, layout, arrangement of features, colour

scheme, etc. Which they state is not a mere coincidence and that the

defendants have no reason to adopt such labels or marks. Further it has

been submitted that products of the plaintiff and the defendants are sold in

markets in rural and semi-rural areas where people are not educated and

hence confusion is bound to occur between the products of the plaintiff

and defendants. It has been further argued, that the infringement of the

plaintiff's rights by the defendants is itself a ground to show that huge

pecuniary damage is likely to be caused to the plaintiff's business as a

result of defendant's activities.

26. Plaintiff has stated in the plaint that the defendants have not yet

launched their infringing products and hence the present suit is in quia

timet in nature and states that if the defendant is allowed to go unchecked,

they would acquire sufficient production capacity to manufacture and

launch products bearing the designs of plaintiff's products. The plaintiff

apprehends the usage of designs No. 188502, 180562 and 189251 under

the proposed marks and labels/trade dress 'Mi-19' and 'CONFLEX'. The

plaintiff admits that to the best of his knowledge that the defendants have

not put the impugned designs, label marks/trade dress and marks 'Mi-19'

and 'CONFLEX' to any use in any manner, whatsoever in India and

further states that the equity is in favour of the plaintiff and that the

defendants would not be harmed or prejudiced by an order of this court

wherein the defendants are restrained from using the marks 'Mi-19' and

'CONFLEX' before their launch or commencement of manufacture and

sale of measuring tapes under the said designs, marks or labels.

27. The defendants in their written statement, the amendment of

which was allowed vide order dated July 16, 2013 have stated that

defendant No. 4 manufactures over 400 types of tools e.g., hand-tools,

non-sparking tools, power-tools, measuring tapes, tool kits, toolboxes,

tool-chests, tool-cabinets, tool-trolley, etc. and has established itself in the

Indian trade market and also supplies goods to over 80 countries and that

defendant No. 4 had established itself in a substantial position in the

domestic and international market.

28. The defendants have stated that in the month of September 2011,

defendant No. 4 got into an agreement with M/s. APT Manufacturers Pvt.

Ltd. based in Ludhiana, wherein all the machinery along with dies, jigs

and fixtures were bought over by defendant no. 4 and it was also agreed

that M/s. APT Manufacturers Pvt. Ltd. would hand over the plant and

machinery in running condition; M/s. APT Manufacturers Pvt. Ltd.,

defendant No. 4 avers was also a well-established name in the hand tool

industry.

29. It is the case of the defendants that they have never used the

mark 'CONFLEX' for any of their products and neither they have any

intention to use that mark in the future, therefore the question of

infringement of the plaintiff's mark 'CENTIFLEX' does not arise and

therefore any action of passing off holds no merit.

30. Defendant No. 4 denies that the measuring tapes of the

defendant No. 4 are identical to that of plaintiff's registered design nos.

180562, 188502 & 189251 respectively and also denies that the trade

dress of the products of defendant No. 4 are nearly identical reproduction

of the plaintiff's product packaging/ trade dress/ label mark for its goods

sold under the trademarks 'Hi-Wide', 'Hi-16', 'Hi-19' and 'Hi-25' and

'CENTIFLEX'. Moreover, it was stated that the designs of the tools bear

no resemblance to plaintiff's registered designs and the same are distinct.

The defendants have repeatedly stated in their written statement that they

have never used and do not intend to use the marks 'Mi-19' and

'CONFLEX'. Hence the all allegations of infringement of trademark,

design and copyright made by the plaintiff against the defendants are

baseless and that the defendants are using the marks namely 'A-13', 'A-

16', 'A-19' where 'A' stands for 'Ambika' and denominations 13/16/19

stands for the width of the steel tape. These marks are itself unique and

distinct and in appearance and bear no resemblance to that of the

plaintiff's marks and labels and the question of infringement, passing off,

dilution or tarnishing holds no merit.

31. While continuously denying the contents of the plaint the

defendants state that M/s. APT Manufacturers Pvt. Ltd., had been using

the said label/mark trade dress since 2005, whose machinery, dies, jigs,

were bought over by defendant No.4 through assignment deed. M/s. APT

Manufacturers Pvt. Ltd. had filed an application before Registrar of Trade

Marks for registration of mark 'FIBERTEX' and further stated that the

term itself had been coined by M/s. APT Manufacturers Pvt. Ltd.

32. The defendants submitted that shape of the measuring tape

manufactured by the plaintiff is not novel or original and that the shape of

the measuring tape manufactured by the plaintiff has been used by every

other measuring tape manufacturer in every part of the world. Therefore,

the shape of measuring tape cannot be solely attributed to the plaintiff's

product and denies that the defendants have tried to ride on the goodwill

of the plaintiff. The defendants have also denied using the steel tapes

under design No. 180562, 188502 and Fibre measuring tapes under design

No.189251.

33. The defendants have stated that they have never launched the

allegedly infringing products. They have also stated, they would be

harmed and prejudiced by an order of this court since defendants have

never used the impugned mark. The defendants had no knowledge of the

products or marks of the plaintiff and moreover the defendants have been

using their own marks 'A-13', 'A-16', 'A-19' where 'A' stands for

'Ambika' and the label mark/ trade dress bear absolutely no visual

similarities with that of the plaintiff's. A person of ordinary intelligence

and imperfect recollection would not misunderstand the defendants'

marks and labels marks/trade dress to that of the plaintiff. Even though the

products of the plaintiff's and the defendant's products are sold in the

markets of rural and semi-rural areas where people are not educated,

confusion would not occur since the products bear no visual similarities

and the defendant No.4 also holds a reputation in the market.

34. The defendants have stated that the impugned products have not

been used by the defendants and therefore there is no question of a huge

undeserved profits being made by the defendants by riding on the

plaintiff's goodwill. It has also been stated that there is also no

incalculable loss or damages caused to the plaintiff's business, goodwill,

reputation either in India or abroad. On the contrary this suit has been

filed only to harass the defendants and that the plaintiff has also failed to

show how the manufacture or sale of the product would cause any damage

to the plaintiff.

35. In the instant case the defendants have stated to have launched

tapes under its mark 'FIBERTEX' but not steel tapes and hence there

would be no question of losses caused to the plaintiff, and stated that the

products themselves bear no resemblance to each other and the question of

deceptive similarity has no merit. Defendants further pray that the present

suit be dismissed on account of defendants not using the impugned marks

'Mi-19' and 'CONFLEX' including no intention of using them in the

future.

36. The plaintiff thereafter filed a replication to the written

statement and explained relationship between the plaintiff and M/s. APT

Manufacturers Pvt. Ltd. wherein the plaintiff denied the agreement

entered in September, 2011 between defendant No.4 and M/s. APT

Manufacturers Pvt. Ltd. based in Ludhiana where all the machinery along

with dies, jigs and fixtures were bought over by defendant No.4. Plaintiff

also stated that M/s. APT Manufactures Pvt. Ltd. did not have any right to

license/assign the trademark or designs to the defendants.

37. The plaintiff stated that the plaintiff company itself was

previously owned by family members of a joint and undivided Hindu

Family amongst whom some disputes had arisen and the matter was

referred to the Company Law Board. The Company Law Board as per

order dated November 04, 2008 based on the Memorandum of

Understanding, dated October 16, 2008 ('MoU' hereinafter) executed

between Mr. Samir Nayar (MD of plaintiff company) and Mr. Navneet

Nayar of M/s. APT Manufacturers Pvt. Ltd. settled their disputes which

included the use of the trademark and designs of the plaintiff and

restrictions thereof. The plaintiff stated that aforesaid MoU clearly

provided for the use of trademark and designs of the plaintiff by M/s. APT

Manufacturers Pvt. Ltd.. Wherein M/s. APT Manufacturers Pvt. Ltd. were

allowed to use the following brands, designs as long as the control,

management and majority shareholding of APT Manufacturers Pvt. Ltd.

remains with Mr. Navneet Nayar:

i. Hi-16 with Lock 3M ii. Record iii. Record 676 iv. PVC Engineer v. Engineer Steel

38. The plaintiff also stated that the MoU also provides that in case

of majority control, management and majority shareholding of M/s. APT

Manufacturers Pvt. Ltd. does not remain with Mr. Navneet Nayar or his

family members and therefore the common brand name, trademarks and

the designs of the models mentioned above will not be used by M/s. APT

Manufacturers Pvt. Ltd.. Plaintiff also stated that the assignment and

license related to the above items shall stand terminated and same shall

revert to the plaintiff exclusively and that in such a case, M/s. APT

Manufacturers Pvt. Ltd. would not have any right whatsoever in relation

to above brand name, trademarks and designs of the models which will

exclusively belong to the plaintiff. The plaintiff had contended that the

parties also entered into a license agreement dated September 01, 2004

whereby the plaintiff had granted a non-transferable irrevocable and

exclusive license to M/s. APT Manufactures Pvt. Ltd. to use certain

trademark and design Nos. 188502 and 180562. The plaintiff stated that

the unauthorised use of the plaintiff's registered designs being No.

188502, 180562 and 189251 by the defendants amounts to infringement of

the plaintiff's registered designs and the plaintiff has argued that therefore

M/s. APT Manufacturers Pvt. Ltd. did not have any right to transfer/

assign/ license any of the trademarks or the designs of measuring tapes

including but not limited to 188502, 180562 and 189251 to any third party

whatsoever and the defendants cannot claim any right from M/s. APT

Manufacturers Pvt. Ltd.

39. Plaintiff stated that, the defendant's statement that they have

absolutely no intention to use the said mark in the future may be recorded.

It was submitted that the defendants had published an advertisement in the

magazine the Yellow Pages bearing products with the impugned designs,

label marks and marks 'Mi-19' and 'CONFLEX'. Further also submitted

that a photograph of the defendant's mark 'CONFLEX' had also been filed

along with the Yellow Pages advertisement. Plaintiff stated that it was

evident from the above that the defendants have used the mark

'CONFLEX' and were guilty of deliberately making contrary statements

in order to mislead the court.

40. The plaintiff submitted that the label mark/trade dress of the

products of the defendants under the mark 'CONFLEX' is also infringing

the plaintiff's label mark/ trade dress of its measuring tapes bearing mark

'CENTIFLEX'. Further it was submitted that the defendants have only

changed the Mark 'Mi-19' to 'A-19' and the label/trade dress of its

products 'Mi-19' after order dated May 14, 2012. The plaintiff submitted

that prior to the aforesaid order, the defendants were using substantially

similar trade dress/ labels for its products and nearly identical marks,

photographs of which have been filed; even the modified trademark and

trade/dress label is deceptively similar to that of the plaintiff.

41. The plaintiff contended that defendants were using the mark

'Mi-19' prior to the order dated May 14, 2012 and it was only after the

said order the defendants changed their mark from 'Mi-19' to 'A-19' and

changed the trade dress/ label of its measuring tapes. The plaintiff

reiterated that even the modified/amended trademark and trade dress/ label

is deceptively similar to that the plaintiff's trademarks and trade dress and

label.

42. The plaintiff contests the averment made by the defendants

wherein they have denied using the marks 'Mi-19' and 'CONFLEX' since

they published advertisements in the magazine Yellow Pages bearing the

products with the impugned designs and requested that the statement of

the defendants stating that they would abstain from future use may be

recorded. It was further submitted that M/s. APT Manufacturers Pvt. Ltd.

did not have any right to license/ assign any trademark or designs that

belong to the plaintiff to the defendants. Further it was submitted that the

design of the product under the mark 'A-19' is identical to the design of

the plaintiff's product under the mark 'Hi-16'.

43. Plaintiff stated that the registered designs of the plaintiff Nos.

180562, 188502 & 189251 were not common to trade and that there are

numerous parties which are using different trade designs in respect of

measuring tapes and that photographs of third parties' designs have been

filed in these proceedings and that plaintiff had taken action against third

parties who violated its intellectual property rights.

44. It was the plaintiff's submission that M/s. APT Manufacturers

Pvt. Ltd. did not have any right whatsoever to assign/license any brand

name, trademarks and designs of the models and the said trademarks and

designs belong solely and exclusively to the plaintiffs. Therefore, the

defendants cannot claim any right whatsoever from M/s. APT

Manufacturers Pvt. Ltd.; it is the case of the plaintiff that only the

plaintiff's measuring tapes have this particular type of shape and

configuration and additionally, a comparison of the plaintiff's products

which are the subject matter of prior registered designs and the

defendant's impugned products are identical in all the respects and the

defendants have made every effort to imitate the plaintiff's registered

designs and the same cannot be a mere coincidence. It is evident that

impugned product of the defendant under the mark 'A-16' and

'FIBERTEX' constitutes an infringement of prior statutory rights vested in

the plaintiff with respect to registered designs nos. 180562, 188502 and

189251.

45. Plaintiff stated that if the defendants had never launched the

infringing products and had never used the impugned marks, then the

questions of the defendants being prejudiced by an order of this Court

would not arise. Plaintiff states that it is highly unlikely that the

defendants were not aware of plaintiff and its products, since the plaintiff

has been in business since the 1950s and the defendants are in the same

industry for 35 years. It was submitted that the defendants had adopted the

nearly identical marks and trade dress/solely with a view to trade upon the

vast repute of the plaintiff's trademarks i.e., trademarks 'Hi-Wide', 'Hi-

16', 'Hi-19', 'Hi-25' and 'CENTIFLEX'.

46. As per order dated July 27, 2016 the following issues were

framed by this Court:

I. Whether the Plaintiff is the registered property of the designs of its measuring tapes registered under No.188502 dated 21st March 2002; registration No.180562 dated 12th October 1999 and registration No.189251 dated 19th June, 2002? OPP

II. Whether the Plaintiff is the registered proprietor of the trademark/label marks 'Hi-WIDE', 'Hi-19' and 'Hi-25'? OPP

III. Whether the Plaintiff is the proprietor of the trademark 'CENTIFLEX'? OPP

IV. Whether the Plaintiff is the owner of the copyright in the artistic work and literary work/text of the Plaintiff's products sold under the trademarks 'Hi-WIDE', 'Hi-16', 'Hi-19', 'Hi25' and 'CENTIFLEX'? OPP

V. Whether the Plaintiff's designs of its measuring tapes sold registered under No.188502 dated 21st March 2002; registration No.180562 dated 12th October 1999 & registration No.189251 dated 19th June 2002 respectively are not new, novel and has been prior published before the grant of the said registrations?

OPD

VI. Whether the designs of the measuring tapes manufactured by the Defendants bear resemblance to the Plaintiff's registered designs as enumerated in the plaint? OPP

VII. Whether the trademarks/label marks of the measuring tapes manufactured by the Defendants are similar to the Plaintiff's trade dress/label mark in respect of the Plaintiff's measuring tapes sold under the marks 'Hi-WIDE' and/or 'Hi-16' and/or 'Hi-19' and/or 'Hi-25' and 'CENTIFLEX'? OPP

VIII. Whether the Defendants' use of a design of a measuring tape under the mark 'Mi-19' is identical/substantially similar to the Plaintiff's prior registered design under No.188502 dated 21 st March 2002 and registration No.180562 dated 12thOctober 1999 constitutes infringement of the Plaintiff's registered design under No.188502 dated 21 st March 2002 and registration No.180562 dated 12th October 1999 and if so, to what effect? OPP

IX. Whether the Defendants' use of a design of a measuring tape under the mark 'Fibertex' is identical/substantially similar to the Plaintiff's prior registered design under No.189251 dated 19th June 2002 constitutes infringement of the Plaintiff's registered design under No.189251 dated 19th June 2002 and if so, to what effect? OPP

X. Whether the use of marks 'Mi-19' by the Defendants and/or amounts to infringement of the Plaintiff's registered trademarks 'Hi-WIDE', ' Hi-16', 'Hi-19' and 'Hi-25'? OPP

XI. Whether the Defendants have infringed the plaintiff's copyright in respect of trademarks 'Hi-WIDE' and/or 'Hi-16' and/or 'Hi- 19' and/or 'Hi-25' and 'CENTIFLEX'? OPP

XII. Whether the Defendants' use of the design 'Mi-19' and/or 'Fibertex' and the trademarks 'Mi-19' and/or 'CONFLEX' amounts to passing off their goods and services of the plaintiff? OPP

XIII. Whether the use of the marks 'Mi-19' and 'CONFLEX' or any deceptively similar marks that of the Plaintiff's trademarks/label marks, 'Hi-WIDE' and/or 'Hi-16' and/or Hi-19' and/or 'Hi-25' and 'CENTIFLEX' by the Defendants amounts to passing off their goods and services as that of the Plaintiffs? OPP

XIV. Reliefs, if any? OPP

47. Having heard the learned counsel for the plaintiff and perused

the record. At the outset, I may state that the defendants were proceeded

ex-parte after framing of the issues. The plaintiff's witness has filed his

examination-in-chief (PW-1) and proved on record, the documents which

are exhibited as Exh.PW-1/1 to PW-1/4 and PW-1/6 to PW-1/34 with one

document marked X2.

48. I may also state that during the proceedings in the instant suit, as

per order dated September 02, 2013 in I.A.13741/2013, it was clarified on

behalf of the plaintiff that the plaintiff has not made any prayer with regard

to the trademark 'FIBER PLASTIKA' being used by the defendants for

their products. It was also stated that they are not opposed to the use of the

terms 'FIBERTEX' by the defendants.

49. The examination-in-chief of the plaintiff's witness has gone

unrebutted. The witness has proved the affidavit and the documents as

exhibited along with affidavit a reference of which is made above. My

issue wise findings are as under:

Issue No. I

50. In regard to this issue, the plaintiff has exhibited the registration

of the designs of its measuring tapes under No.188502 dated March 21,

2002 (Exh.PW-1/10); registration No.180562 dated October 12, 1999

(Exh.PW-1/12) and registration No.189251 dated June 19, 2002 (Exh.PW-

1/14). The registration of the designs through exhibits being unrebutted by

the defendants, the registration of designs vide registration Nos. 188502,

180562 and 189251 stands duly proved. This issue is decided in favour of

the plaintiff.

Issue No. II

51. In support of this issue, the plaintiff has exhibited trademarks/

label marks registration with respect to 'Hi-WIDE', 'Hi-16', 'Hi-25' by

way of Exh.PW-1/22 (Colly) (at pages 37, 39 and 41 of the documents).

The said documents in the absence of any cross examination, stands

proved. This issue is decided in favour of the plaintiff.

Issue No. III

52. Insofar as the issue No. III is concerned, the plaintiff has not

filed on record any document with regard to the registration of the mark

'CENTIFLEX' in its favour but has placed a document which is Exh.PW-

1/24 wherein the marks 'CENTIFLEX' has been appropriately depicted. In

the absence of any cross examination, it is proved that the plaintiff is the

proprietor of the trademark 'CENTIFLEX'. This issue is decided in favour

of the plaintiff.

Issue No. IV

53. Insofar as the issue No. IV is concerned, learned counsel for the

plaintiff has stated that the plaintiff is the owner of the copyright in the

trademarks and the artistic work / text of the plaintiff product sold under

the trademark 'Hi-WIDE' (Exh.PW-1/21), 'Hi-16' (Exh.PW-1/13), 'Hi-25'

(Exh.PW-1/21) and 'CENTIFLEX' (Exh.PW-1/24). The said documents

having not been contested by the defendants, it is proved on record that the

plaintiff has copyright in the works comprising of the artistic work / text

under the trademarks 'Hi-WIDE', 'Hi-16', 'Hi-25' and 'CENTIFLEX'.

This issue is decided in favour of the plaintiff.

Issue No. V

54. In support of the designs in measuring tapes the plaintiff has

relied upon the registration certificates depicting registration with Nos.

188502 dated March 21, 2002 (PW-1/10), 180562 dated October 12, 1999

(PW-1/12) and 189251 dated June 19, 2002 (Exh.PW-1/14). It is clear that

the designs being new and novel and have been registered. The onus being

on the defendants, they have not appeared to prove this issue that designs

are not novel. This issue is decided against the defendants.

Issue Nos. VI and VIII

55. On a comparison of the documents at Exh.PW1/26 (defendants

design Mi-19) with Exh.PW-1/10 (plaintiff's design) and the Exh.P1

(defendants' design) with Exh.PW-1/15 (plaintiff's design) and document

P3, it is clear that the measuring tapes manufactured by the defendants at

Exh.1/26 and Exh.P1 bears resemblance with the registered design of the

plaintiff. But the design with regard to the product of the defendants

bearing trade / label mark 'CONFLEX' at Exh.P3 does not resemble the

design of the plaintiff's product at Exh.PW-1/24. These issues are partially

decided in favour of the plaintiff.

Issue No.VII

56. On a comparison of the documents at Exh.PW-1/11 with

Exh.PW-1/26, Exh.PW-1/13 with Exh.P2 and Exh.PW-1/21 with Exh.P2,

it is clear that the trademarks of the measuring tapes manufactured by the

defendants are similar to the trademarks / label marks in respect of the

plaintiff's measuring tapes sold under the marks 'Hi-WIDE', 'Hi-16' and

'Hi-25'.

57. Insofar as the trademark/label mark CENTIFLEX is concerned,

on a comparison of documents, Exh.PW-1/24 and Exh.P3, I do not see any

similarity in the trademark / label mark. To the aforesaid extent, this issue

is decided in favour of the plaintiff.

Issue No. IX

58. On a comparison of the documents at Exh.PW-1/15 (plaintiff's

product) with the trademark 'FIBERPLASTIKA' and the document Exh.P1

which is defendants' product, under the trade name 'FIBERTEX', it is clear

that the design of the defendants is similar/identical to the plaintiff prior

registered design under registration No.189251 dated June 19, 2002

(Exh.PW-1/14) and constitute infringement of the plaintiff's registered

design under the said registration no. This issue is decided in favour of the

plaintiff.

Issue No. X-XIII

59. It is the case of the plaintiff and so stated in the affidavit filed by

plaintiff's witness which is unrebutted, that the plaintiff trades in the well-

known trade/label marks i.e. 'Hi' series such as 'Hi-WIDE', 'Hi-16', 'Hi-

19', 'Hi-25' and 'CENTIFLEX' and that they had been manufacturing and

selling its steel measuring tapes under the trademarks 'Hi-WIDE', 'Hi-16',

'Hi-19', 'Hi-25' and 'CENTIFLEX' and that the said marks are used in

distinctive colour schemes, layout, get up, fonts and the said label marks

/trade dresses and the same have come to be exclusively associated with

the plaintiff company's products. It was the plaintiff's submission that the

mark 'Hi-WIDE' is a coined and an arbitrary mark and that they have been

using the said trademark in respect of its goods since 1999 continuously;

additionally, plaintiff also uses a series of trademarks with the prefix 'Hi'

in combination with various numbers such as 'Hi-16', 'Hi-19' and 'Hi-25'

under the trademarks of the plaintiff company 'GK FML'. Exh.P6 price list

of the plaintiff admitted by the defendant.

60. The plaintiff buttresses his arguments on the combined long,

extensive and continuous user in addition to being a registered proprietor

of the trademarks 'Hi-WIDE', 'Hi-16', 'Hi-19' and 'Hi-25' in India, in this

regard the plaintiff has relied on the trademark registrations as exhibited as

Exh.PW 1/19. The plaintiff's witness also stated in the affidavit that the

plaintiff company had filed an application for registration of 'Hi-WIDE'

device/label mark before the Registrar of Trade Marks dated May 15, 2001

in class 9, which was pending before the Registrar of Trade Marks and

extract from the trademark journal no. 1339 dated February 1 st, 2006 has

been marked as Exh.PW 1/20.

61. It is also stated in the affidavit that the plaintiff uses its

registered house mark/ label mark 'GK-FML' on most of its products;

according to the plaintiff's witness the said house mark / devise mark 'GK

FML AKVN' is also registered as under No. 1369625 in class 9 as well as

the label mark GK FML Standard Measures under no. 1426203 also in

class 9. The label mark/ trade dress in respect of its products 'Hi-WIDE',

'Hi-16' and 'Hi-25' have been exhibited as Exh.PW 1/21.

62. It was stated that the plaintiff's 'Hi-WIDE' trademark/label mark

and trade dress, the colour combination, layout, get up and lettering style

used in the logo, i.e., white base, black and white alphabets, font style and

letters in black and white colour, words written in English and Urdu

bearing the plaintiff's mark 'Hi-WIDE' and/or 'Hi-16' and 'Hi-19' and/or

'Hi-25' constitute an original artistic work within the meaning of the

WIDE'.

63. The plaintiff's witness has stated that the mark 'CENTIFLEX'

and the label mark/ trade dress in respect of its products under the mark

'CENTIFLEX' have been in use by the plaintiff since the year 2000. The

plaintiff's products sold under the mark 'CENTIFLEX' bearing the colour

combination, layout, get up and the lettering style used on the logo, i.e.,

yellow base orange, blue and white alphabets, font style and letters in

white, yellow and white colour bearing the trademark 'CENTIFLEX'

constitute an original artistic work within the meaning of the Copyright

Act which has been exhibited as Exh.PW 1/24.

64. In support of the statement that the products of the plaintiff have

acquired substantial reputation and goodwill the plaintiff has submitted the

total amount spent on advertisement and promotion of its product 'Hi-16'

during the period from 2009-10 till 2013-14, which has been marked as

Exh.PW 1/25.

65. As per the plaintiff's witness, the measuring tapes under the

trademarks 'Hi-WIDE', 'Hi-16', 'Hi-19', 'Hi-25' and 'CENTIFLEX'

bearing the unique and distinctive label marks / trade dress respectively are

sold throughout India and abroad and have acquired an enviable reputation

and goodwill due to its excellent quality, distinctive packaging, colour

combination, stylized manner of writing, etc. It was also his submission

that the measuring tapes bearing the unique and distinctive label marks/

trade dresses are the highest selling brands of the plaintiff and are

considered as the largest selling tapes in India. According to him, as a

result of continuous and extensive use the plaintiff's label marks / trade

dresses coupled with promotion and publicity the said trademarks have

acquired the status of a 'well-known' trademark and that the products 'Hi-

WIDE', 'Hi-16', 'Hi-19', 'Hi-25' and 'CENTIFLEX' are associated solely

with the plaintiff and no one else by the members of the trade and public in

general.

66. The plaintiff's witness has stated that the label mark / trade dress

of the defendant No. 4's product bearing the mark 'Mi-19' exhibited as

Exh.P2 which he stated is deceptively similar to the plaintiff's 'Hi-WIDE',

'Hi-16', 'Hi-19', and 'Hi-25' label mark/trade dress when the plaintiff

learned of the label mark/ trade dress of the defendant. Thereafter the

plaintiff came across the advertisement of defendant No. 4 published in the

Yellow Pages which has been exhibited as Exh.P4 wherein the said

product 'Mi-19' had been advertised, which according to the plaintiff is

deceptively similar to the marks 'Hi-WIDE', 'Hi-16', 'Hi-19', and 'Hi-25'.

67. As per the plaintiff's witness the registered design of the

plaintiff under no 189251 dated June 19, 2002 (Exh.PW1/14) was for the

product 'FIBER PLASTIKA' was also infringed by the defendants' product

under the mark 'FIBERTEX' as exhibited as Exh.PW1/15.

68. As per the affidavit filed by the plaintiff's witness the

defendant's 'Mi-19' was deceptively similar to the plaintiff's 'Hi-WIDE',

'Hi-16', 'Hi-19', and 'Hi-25' label marks/ trade dress, to which the

defendants had made minor changes/insignificant changes in the impugned

label that it infringes the plaintiff's series of 'Hi' marks and labels/trade

dress such as 'Hi-WIDE', 'Hi-16', 'Hi-19', and 'Hi-25' the defendants

have admitted the label mark/trade dress of their product as exhibited as

Exh.P2 and the advertisement as published by them Exh.P4.

69. With regard to the label mark / trade dress of the defendants'

product under the mark 'CONFLEX' is also infringing the plaintiff's label

mark / trade dress of its measuring tapes bearing the mark 'CENTIFLEX'

he has exhibited the defendants' impugned product as Exh.P3

70. Having noted the statements and documents relied upon by the

plaintiff it is also necessary to take into account the stand of the defendants

in their written statement wherein they have in paragraph 8 stated as under:

"It is submitted that the Defendants have never used and do not intend to use the marks 'Mi-19' and 'CONFLEX'. Hence the allegations of infringement of trademark, design and copyright made by the Plaintiff against the Defendants are absolutely baseless. It is further submitted that the Defendants are using the series of marks namely A-13, A-16, A- 19 where 'A' stands for 'Ambika' and denominations 13/16/19 stand for width of the Steel Tape."

So, it follows that the defendants have categorically stated they shall

not use the marks 'Mi-19' and 'CONFLEX'. The said statement is taken on

record. These issues have been decided accordingly.

Issue No. XIV

71. Accordingly, the suit is decreed in terms of prayers (a) and (b).

Prayers (c) and (d) are granted in favour of the plaintiff with respect to the

products sold under the marks 'Hi-WIDE', 'Hi-16', 'Hi-19' and 'Hi-25';

however, in terms of the findings hereinabove the plaintiff has not been

able to prove its case with respect to infringement of its mark

'CENTIFLEX' by the defendants use of the mark 'CONFLEX', it may be

stated here however that the statement of the defendants in terms of the

averments made in the written statement in paragraph 8 are taken on