Full Text
HIGH COURT OF DELHI
Date of Decision: 27th November, 2024
EASTMAN AUTO AND POWER LTD. .....Plaintiff
Through: Mr. Gaurav H. Sethi, Mr. Deeptanshu Chandra and Mr. Rahul Pawar, Advs.
HOUSE .....Defendant
Through: None
JUDGMENT
1. The present suit has been filed by the plaintiff against the defendant seeking permanent injunction restraining infringement of trade mark, passing off, unfair competition, rendition of accounts, damages and delivery up.
2. The plaintiff is aggrieved on account of the defendant’s unauthorised adoption and use of the mark EASTPOWER/, on the ground that the same infringes upon the trademark of the plaintiff “EASTMAN”/ /, being deceptively similar to the plaintiff’s prior adopted trademark used in relation to identical goods i.e. batteries.
3. Case as canvassed on behalf of the plaintiff, is as under: 3.[1] The plaintiff company is a part of the renowned “Eastman Group” and is one of the leading battery manufacturers in India, having its annual turnover of approximately Rupees Two Thousand Four Hundred Crores. The plaintiff is the leader in supplying high-quality industrial products particularly the car, truck, two-wheeler and inverter batteries. 3.[2] The plaintiff has honestly and in a bona fide manner conceived and adopted an inherently distinctive wordmark EASTMAN in the year 1982 with the formation of the Eastman Industries Limited (EIL) and obtained registration for the trademark EATSMAN in the year 2007 under Class 99 and device mark in the year 2017 under Class 9. 3.[3] The wordmark EASTMAN and /, device mark stands registered in plaintiff’s name in India and several other jurisdictions. 3.[4] The plaintiff’s marks have been used continuously and extensively by the plaintiff so much so that the existing customers, general public, retailers, distributors and relevant members of the trade identify and associate the products under the plaintiff’s mark exclusively with the plaintiff. 3.[5] Defendant is one Mr. Amritpal Singh, the purported proprietor of the defendant and appears to be engaged in the business of selling batteries including non-standardized infringed products with the name and style of “EASTPOWER”, at least since September 2023, as per the information available with the plaintiff. 3.[6] The plaintiff, in November/December 2023, came across defendant’s products which were being offered for sale with a vendor. The nonstandardized products therein contained the impugned mark which is deceptively similar to the plaintiff’s prior, distinctive and well-known trademark. 3.[7] The defendant has committed infringement with a mala fide intent to misrepresent the customers of the plaintiff and sell deceptive and infringed products in the markets, causing irreparable damage to the reputation and goodwill of the plaintiff. 3.[8] Thus, the present suit has been filed.
4. This court notes that vide order dated 08th January, 2024, an ex parte ad-interim injunction order was passed in favour of the plaintiff and against the defendant, whereby, the defendant was restrained from using plaintiff’s mark EASTMAN, and any other mark which is confusingly similar to plaintiff’s said marks.
5. Vide order dated 01st August, 2024, it was recorded that the ordinary summons of the defendant were reported to have been refused by the defendant on 24th April, 2024. Thus, the defendant was deemed to be served.
6. Further, vide order dated 09th September, 2024, it was recorded that despite being served on 24th April, 2024, the defendant has not filed the written statement. Thus, the right of the defendant to file written statement stood closed.
7. Subsequently, noting that neither the defendant had appeared before this Court despite service, nor any written statement had been filed, the defendant was proceeded ex-parte vide order dated 21st November, 2024.
8. It is to be noted that the plaintiff adopted its mark in the year 1982, and is being used extensively by the plaintiff, since then. Further, device mark was adopted, and is being used by the plaintiff, since 2017. The registrations of the plaintiff, as given in the plaint, are as follows:
9. In order to determine whether the impugned trademark adopted by the defendant is identical to the trademark of the plaintiff, it would be apposite to refer to the two trademarks, which are as under: Plaintiff’s trademark Defendant’s trademark
10. The aforesaid comparison of the rival marks reflects the stark visual and structural similarity between the rival marks, which clearly indicates that the defendant has blatantly copied the integral aspects of the plaintiff’s mark, to make it appear nearly identical to the plaintiff’s mark. The word EASTMAN has been replaced with the word EASTPOWER. The defendant’s tagline reads as “UNLIMITED ENERGY”, whereas, the tagline in plaintiff’s original mark reads as, “ENERGY UNLIMITED”. Thus, it can be seen that the defendant has merely reversed the order of the words contained in the plaintiff’s tagline. Further, there is similarity in the scheme and arrangement of the mark, including the background colour. Further, the SUN sign appearing on the registered mark of the plaintiff, has been reproduced exactly, except for a change in the colour.
11. A perusal of the two marks makes it abundantly clear that the defendant has mischievously adopted the infringing mark in order to mislead the general public in respect of identical description of goods. Such deliberate copying of the plaintiff’s registered trademark, shows the defendant’s dishonest adoption, as being in the same line of business, the defendant cannot claim ignorance of the prior registered trademark of the plaintiff.
12. Attention of this court has been drawn to the investigation report dated 13th December, 2023, wherein, it has been stated that the investigator had met with Mr. Amrit Pal Singh, i.e. owner of Akai Battery House. He stated that the defendant had been engaged in the manufacture and supply of E-rickshaw batteries for about 1 year. It was also informed that they have been using the mark EASTPOWER for about last two months. Thus, it is manifest that the plaintiff is the prior adopter of the mark and the defendant has adopted a deceptively similar mark, which is bound to cause confusion.
13. The adoption and use of the impugned mark by the defendant for similar goods, will inevitably cause confusion and deception amongst unwary customers and members of the trade, about the source, association and origin of the goods bearing the impugned mark. Confusion and deception is also likely on account of imperfect recollection on the part of the consumers at large and members of trade, who did not have the benefit of side by side comparison of the competing marks.
14. This Court notes that the defendant, despite having been served on 24th April 2024, has chosen to stay away from the proceedings, and has not rebutted the averments set out in the plaint.
15. Further, the defendant’s failure to file its written statement and the closure of defendant’s right to file the same vide order dated 09th September, 2024, demonstrates the lack of defence of its infringing activities and the mala fide adoption of the mark of the plaintiff. Thus, this court notes that there is no real prospect of the defendant to successfully defend the claims raised against it.
16. Thus, in view of the similarity of the marks of the plaintiff and defendant, and considering the fact that the defendant has failed to take any requisite steps to contest the present suit despite having suffered an ad interim injunction order, it is evident that the defendant has no defence to put forth. Accordingly, the plaintiff is entitled to a decree under Order VIII Rule 10 of Code of Civil Procedure, 1908 (“CPC”).
17. A Coordinate Bench of this Court, while expounding upon the scope of Order VIII rule 10 CPC, in the case of Christian Broadcasting Network, INC Versus CBN News Private Limited, 2018 SCC OnLine Del 11666, has held as follows: “xxx xxx xxx
13. The scope of Order 8 Rule 10 CPC in commercial suits particularly under the New Commercial Courts, Commercial Division and Commercial Appellate Division of the High Court Act, 2015 has being examined by this court in Nirog Pharma Pvt. Ltd. v. Umesh Gupta, (2016) 235 DLT 354. This court held as follows: “11. Order VIII Rule 10 has been inserted by the legislature to expedite the process of justice. The courts can invoke its provisions to curb dilatory tactic, often resorted to by defendants, by not filing the written statement by pronouncing judgment against it. At the same time, the courts must be cautious and judge the contents of the plaint and documents on record as being of an unimpeachable character, not requiring any evidence to be led to prove its contents. ……….
28. The present suit is also a commercial suit within the definition of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 and it was the clear intention of the legislature that such cases should be decided expeditiously and should not be allowed to linger on. Accordingly, if the defendant fails to pursue his case or does so in a lackadaisical manner by not filing his written statement, the courts should invoke the provisions of Order VIII Rule 10 to decree such cases.” xxx xxx xxx” (Emphasis Supplied)
18. Considering the aforesaid discussion and the documents placed on record, this Court is further of the view that the present is a fit case for awarding costs in favour of the plaintiff and against the defendant, as the plaintiff was constrained to file the present suit on account of the infringing activities being carried out by the defendant.
19. Thus, Supreme Court in the case of Vinod Seth Versus Devinder Bajaj and Another, (2010) 8 SCC 1, while holding that costs are imposed to compensate the legal expenses incurred by a successful party, who was compelled to approach the Court on account of default of the other party, has held as follows: “xxx xxx xxx
45. Before concluding, it is necessary to notice the reason why the High Court was trying to find some way to protect the interests of the defendants, when it felt that they were being harassed by the plaintiff. It made the impugned order because it felt that in the absence of stringent and effective provision for costs, on the dismissal of the suit, it would not be able to compensate the defendants for the losses/hardship suffered by them, by imposing costs. If there was an effective provision for levy of realistic costs against the losing party, with reference to the conduct of such party, the High Court, in all probability would not have ventured upon the procedure it adopted. This draws attention to the absence of an effective provision for costs which has led to mushrooming of vexatious, frivolous and speculative civil litigation.
46. The principle underlying levy of costs was explained in Manindra Chandra Nandi v. Aswini Kumar Acharjya [ILR (1921) 48 Cal 427] thus: (ILR pp. 440-41) “… We must remember that whatever the origin of costs might have been, they are now awarded, not as a punishment of the defeated party but as a recompense to the successful party for the expenses to which he had been subjected, or, as Lord Coke puts it, for whatever appears the Court to be the legal expenses incurred by the party in prosecuting his suit or his defence. … The theory on which costs are now awarded to a plaintiff is that default of the defendant made it necessary to sue him, and to a defendant is that the plaintiff sued him without cause; costs are thus in the nature of incidental damages allowed to indemnify a party against the expense of successfully vindicating his rights in court and consequently the party to blame pays costs to the party without fault. These principles apply, not merely in the award of costs, but also in the award of extra allowance or special costs. Courts are authorised to allow such special allowances, not to inflict a penalty on the unsuccessful party, but to indemnify the successful litigant for actual expenses necessarily or reasonably incurred in what are designated as important cases or difficult and extraordinary cases.” xxx xxx xxx” (Emphasis Supplied)
20. In view of the aforesaid, in exercise of the power of the Court under Order VIII Rule 10 CPC, the following directions are issued: i. The suit is decreed in favour of the plaintiff and against the defendant in terms of paragraph 31 (a), (b) and (c) of the plaint. ii. The plaintiff is entitled to cost of the suit. iii. The plaintiff is directed to file affidavit of cost within a period of two months from today. iv. As and when the affidavit is filed, the same shall be placed before the Taxing Officer for the purposes of computation of cost.
21. With the aforesaid directions, the present suit, along with the pending application, stands disposed of. MINI PUSHKARNA, J NOVEMBER 27, 2024