J & P Coats Ltd & Anr. v. Rahul Gupta & Ors.

1. Plaintiffs have filed the present suit for permanent injunction, infringement of trade mark, passing off, account of profits under the Trade Marks Act, 1999 against the defendants.

2. Defendant no.1 is present in court today submits that he has no objection if a decree is passed, provided only nominal damages are imposed. He also submits that he has stopped manufacturing the impugned goods and even changed his line of business. It is also submitted by the defendant no.1 that he is now working in a private firm and there is no question of his supplying any goods to defendants no.2 and 3. Defendant no.1 also states that he has not infringed the trademark of the plaintiff nor he will do so in future. The statement made by defendant No.1 is accepted and taken on record. Defendant No.1 shall remain bound by the statement made in court today. Defendant no.1 also agrees to pay Rs.50,000/- as damages 2014:DHC:2220 to the plaintiff within four weeks from today.

3. Learned counsel for the plaintiff on instructions from the authorised representative of the plaintiffs submits that offer of Rs.50,000/-, as damages, is not acceptable to the plaintiffs. A prayer is made for higher damages.

4. I have heard learned counsel for the parties and considered their rival submissions. The plaintiffs have filed the present suit for permanent injunction, infringement of trade mark, passing off, accounts of profits under the Trade Marks Act, 1999. The plaintiffs are the registered proprietor of the trade mark „MOON‟. The plaintiffs learnt that defendants had made an application for registration of the word „MEEN‟ with respect to similar goods. The packaging material was also of identical blue colour.

5. While issuing summons in the suit and notice in the application for stay, a Local Commissioner was also appointed. As per the report of the Local Commissioner, no goods were found at the premises in question. Defendant no.1, who has appeared in person, has made a categorical statement that neither he has infringed the trade mark of the plaintiffs nor will he do so in future. Defendant no.1 has also agreed that the suit may be decreed in favour of the plaintiffs and against the defendants keeping in view his financial status and background and also the fact that the suit is at the initial stage, costs of Rs.50,000/- should be accepted for the act of passing off decree.

6. Section 135 (3) of the Trade Marks Act reads as under: “(3) Notwithstanding anything contained in sub-section (1), the court shall not grant relief by way of damages (other than nominal damages) or on account of profits in any case— (a) where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certification trade mark or collective mark; or (b) where in a suit for infringement the defendant satisfies the court—

(i) that at the time he commenced to use the trade mark complained of in the suit, he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was a registered user using by way of permitted use; and

(ii) that when he became aware of the existence and nature of the plaintiff‟s right in the trade mark, he forthwith ceased to use the trade mark in relation to goods or services in respect of which it was registered; or

(c) where in a suit for passing off, the defendant satisfies the court—

(i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was in use; and

(ii) that when he became aware of the existence and nature of the plaintiff‟s trade mark he forthwith ceased to use the trade mark complained of.”

7. Somewhat similar question had up for consideration before a Division Bench of this Court in the case of Societe Des Products Nestle S.A. & Anr. V. Satya Prakash Maheshwari & Ors., reported at 2009 (39) PTC 129 (Del.)(DB), wherein a Division Bench of this Court held as under:

8. In my view, the case in hand is on a better footing as defendant no.1 has agreed to pay damages in the sum of Rs.50,000/-. Having regard to the status of the defendants, the statement made in Court that a decree be passed in the case, his having changed his line of business and having joined prime service, in the facts of this case I accept the offer of the defendants.