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HIGH COURT OF DELHI
Date of Decision: 08th November, 2024
ICONIC IP INTERESTS LLC & ANR. .....Plaintiffs
Through: Mr. Urfee Roomi, Ms. Janaki Arun, Ms. Anuja Chaudhury, Mr. Ritesh Kumar and Ms. Vanshika Bansal, Advocates
Through:
JUDGMENT
1. The present suit has been filed seeking relief of permanent injunction restraining the defendant from infringing the trademark and copyright of the plaintiffs, passing off their goods as that of the plaintiffs and other ancillary reliefs.
PLEADINGS IN THE PLAINT
2. Plaintiff no.1-Iconic IP Interests LLC is engaged in the business of licensing intellectual property rights to businesses and collecting royalties from such businesses. It is a subsidiary of Highlander Partners L.P., a Dallas, U.S.A. based private investment firm.
3. Plaintiff no.2-The Hershey Company is one of the largest chocolate and sugar confectionery manufacturers in the world. It was founded in 1894.
4. In the year 1996, Huhtamaki Finance B.V., a predecessor of the plaintiff no.1, and Hershey Chocolate and Confectionery Corporation, a subsidiary company of the plaintiff no.2, entered into a license agreement with respect to the ‘JOLLY RANCHER’ marks, which was subsequently amended in 1999. Pursuant to the amendment, Hershey Chocolate and Confectionery Corporation was granted an exclusive license to use the ‘JOLLY RANCHER’ mark and its variations in relation to confectionery and candy, including lollipops, worldwide, including in India. Hershey Chocolate and Confectionery Corporation further sub-licensed the right granted to it to the plaintiff no.2.
5. Subsequently, in the year 2018, Huhtamaki Finance B.V. transferred all right, title and interest in the ‘JOLLY RANCHER’ mark and its variations to the plaintiff no.1. Owing to this transfer, the plaintiff no.1 became the licensor in the license agreement that continues to be valid and subsisting to date.
6. The plaintiff no.1 has registered the marks in numerous countries around the world, including the United States of America, Canada, the United Kingdom, New Zealand, the European Union, Australia and Singapore. The earliest registration of the mark ‘JOLLY RANCHER’ dates back to the year 1991 in the United States of America. Further, the plaintiff no.1 is the registered proprietor of the following trademarks in India:
1. JOLLY RANCHER 1471719 30 20th July,
2. JOLLY RANCHER AWESOME TWOSOME 2391250 30 6th September,
3. JOLLY RANCHER SQUEEZERS 2616582 30 9th January, The Certificates of Registrations and Certificates for use in Legal Proceedings are filed as document no. 31 of the documents filed along with the plaint. All the aforesaid registrations remain valid and subsisting.
7. Sometime in the year 2013, the plaintiff no.2, through the plaintiff no.2's Indian Subsidiary, started manufacturing lollipops bearing the plaintiffs’ ‘JOLLY RANCHER’ marks at its manufacturing facility in Chittoor, Andhra Pradesh and continues to do so till date.
8. The plaintiff no.2 adopted the ‘JOLLY RANCHER’ packaging having distinct features and colour scheme depending upon the flavour of the lollipop. It is averred in the plaint that due to long and continuous use, the plaintiff no.2 owns a copyright over the packaging of the products bearing the mark ‘JOLLY RANCHER’ under the Copyright Act, 1957. The images of packaging of the said products are given in paragraph 10 of the plaint.
9. Over the years, the plaintiff no.2 has expanded its online presence by launching separate official social media pages and accounts on Facebook (which has more than 1.[7] million followers), Twitter (which has around 84K followers), Instagram (which has more than 250K followers), three of the world's most popular and trafficked social networking sites. The plaintiff no.2’s products bearing ‘JOLLY RANCHER’ marks feature prominently on the above-mentioned sites. As a result, the ‘JOLLY RANCHER’ trademarks enjoy immense reputation and goodwill among consumers.
10. The plaintiff no.2’s products bearing the mark ‘JOLLY RANCHER’ had annual sales of Rs. 51 crores (approx.) in the year 2021-2022 in India. During the period 2012-2022, the sales of plaintiff no.2’s products bearing the mark ‘JOLLY RANCHER’ in India are given in paragraph 45 of the plaint. The plaintiff no.2’s marketing expenses for the aforesaid products during the period 2014-2022 in India are given in paragraph 46 of the plaint.
11. The defendant-Sarju Confectionery LLP is engaged in the business of manufacturing, marketing and selling chocolate and candy, including lollipops under the mark ‘JOKY RAMPER’.
12. In early 2023, the plaintiffs came across the impugned products of the defendant bearing the ‘JOKY RAMPER’ mark and an almost identical packaging. The impugned products were being sold by the defendant through its website located at http://www.sarjus.com/, on IndiaMart, and through brick and mortar stores, etc. The images of the said packaging are provided in paragraph 13 of the plaint.
13. On 17th March, 2023, the plaintiffs’ Indian representative sent a legal notice to the defendant demanding, inter alia, immediate cessation of use of the defendant’s ‘JOKY RAMPER’ mark and packaging. Since no reply was forthcoming, the plaintiffs’ Indian representative sent a reminder letter dated 27th March 2023 via email seeking a response to its aforesaid legal notice. However, it elicited no response from the defendant.
14. Accordingly, the plaintiffs filed the present suit on 20th September, 2023 seeking to restrain the defendant from carrying on its infringing activities.
PROCEEDINGS IN THE SUIT
15. On 21st September, 2023, this Court granted an ex parte ad interim injunction in favour of the plaintiffs restraining the defendant from manufacturing, selling and advertising the impugned products bearing ‘JOKY RAMPER’ mark and packaging. This Court also appointed a Local Commissioner to visit the defendant’s premises.
16. The Local Commissioner successfully conducted the commission on 25th September, 2023 at the defendant’s premises. A total of 10,660 lollipops bearing the infringing marks and packaging were seized by the Local Commissioner.
17. Via order dated 15th March, 2024, the Joint Registrar noted that the defendant was duly served through courier, email and WhatsApp on 7th March, 2024. Despite this, the defendant did not enter appearance and no written statement was filed on behalf of the defendant.
18. Since the written statement was not filed by the defendant within the maximum permissible period of 120 days, the right to file the same was closed on 21st August, 2024.
19. The plaintiffs now seek a decree in terms of Order VIII Rule 10 of the Code of Civil Procedure, 1908 (hereinafter, ‘CPC’). In this regard, Mr. Roomi, counsel for the plaintiffs, relied upon the judgment of this Court in Satya Infrastructure Ltd. & Ors. vs. Satya Infra & Estates Pvt. Ltd., 2013 (54) PTC 419 (Del) [CS(OS) 1213/2011, decided on 07.02.2013].
ANALYSIS AND FINDINGS
20. I have heard the submissions of Mr. Urfee Roomi, learned counsel for the plaintiffs and also perused the material on record.
21. In Satya Infrastructure (supra), a Coordinate Bench of this Court held as follows:
22. The plaint has been duly verified and is also supported by the affidavit of the plaintiffs. In view of the fact that no written statement has been filed on behalf of the defendant, all the averments made in the plaint have to be taken to be admitted. Further, since no affidavit of admission/denial has been filed on behalf of the defendant in respect of the documents filed with the plaint, in terms of Rule 3 of the Delhi High Court (Original Side) Rules 2018, the same are deemed to have been admitted. Therefore, in my opinion this suit does not merit trial and the suit is capable of being decreed in terms of Order VIII Rule 10 of CPC.
23. From the averments made in the plaint and the evidence on record, the plaintiffs have been able to prove that they are the registered proprietors of the trademarks ‘JOLLY RANCHER’. The plaintiffs also have a copyright over the trade dress and packaging of their products bearing the aforesaid mark.
24. The plaintiffs have placed on record images of the defendant’s impugned products to show that the defendant is indulging in infringement and passing off of the plaintiffs’ registered mark, ‘JOLLY RANCHER’. The similarities between the plaintiffs’ products and the defendant’s impugned products are set out below: The defendant’s ‘JOKY RAMPER’ packaging The plaintiffs’ ‘JOLLY RANCHER’ packaging
25. The comparison above categorically shows that the lollipop wrappers are identical in terms of colour combination and arrangement of letters, marks and figures. The similarities are highlighted below: a. The overall colour scheme of both the packaging is blue at the top and a change of colour at the base which matches the flavour of the lollipop. b. The stylization of the word marks of both the parties is nearly identical. Both the marks are written in a white stylized font with a blue shadow and are slanted a bit to the left. The word ‘JOKY’ in capital letters is placed right above ‘RAMPER’ in small letters, similar to the placement of ‘JOLLY RANCHER’. c. In the rectangular yellow device, beneath the word ‘RAMPER’, the word ‘lollipop’ is written in capital letters. It is identical to the plaintiffs’ packaging. d. Additionally, the word marks are placed on the top centre of the packaging of both the parties. e. In both the wrappers, the pictorial depiction of lollipop and fruits corresponding to the flavour is deceptively similar.
26. Furthermore, the defendant is using a word mark which is nearly identical, and bears phonetic, structural and visual similarities to that of the plaintiffs. Hence, the defendant has replicated the contents, colour scheme, and the ‘JOLLY RANCHER’ trademark of the plaintiffs' packaging.
27. Based on the discussion above, a clear case of infringement of trademark and copyright is made out. The defendant has taken unfair advantage of the reputation and goodwill of the plaintiffs’ trademark/artistic work and has also deceived the unwary consumers of their association with the plaintiffs by dishonestly adopting the plaintiffs’ registered mark without any plausible explanation. Therefore, the plaintiffs have established a case of passing off as well.
28. At this stage, it may be relevant to note that the defendant did not appear before the Court, despite service of summons on 7th March, 2024 via courier, email and WhatsApp. Further, no communication on behalf of the defendant has been placed on record in respect of the allegations of the plaintiffs in this suit. Hence, the right to file written statement for the defendant was closed on 21st August 2024.
29. Since 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 it has no defence to put forth on merits.
RELIEF
30. In view of the foregoing analysis, a decree of permanent injunction is passed in favour of the plaintiffs in terms of prayer clauses 79(a), 79(b), 79(c), 79(d) of the plaint. The said clauses read as follows: “(a) An order for permanent injunction restraining the Defendant, its partners, officers, managers, employees, agents, dealers, licensees, or any persons/entities that are related or affiliated to the Defendant, as the case may be, and all others, acting for and on behalf of the Defendant, from manufacturing, offering for sale, selling, displaying, advertising, marketing, whether directly or indirectly, and whether on the Internet or otherwise, lollipops and any other candy or confectionery items bearing the Defendant's JOKY RAMPER Mark and Packaging, or any other mark and/or packaging that is identical/deceptively similar to the Plaintiff's JOLLY RANCHER Marks and Packaging; (b) An order for permanent injunction restraining the Defendant, its partners, officers, managers, employees, agents, dealers, licensees, companies and retailers, stockists or any persons/entities that are related or affiliated to the Defendant, as the case may be, and all others, acting for and on behalf of the Defendant, from doing any act that amounts to trademark infringement of the Plaintiff's registered JOLLY RANCHER Mark, as detailed in paragraph 50 of the plaint;
(c) An order for permanent injunction restraining the Defendant, its partners, its officers, managers, employees, agents, dealers, licensees, companies and retailers, stockists or any Defendant, from doing any act that amounts to infringement of the copyright in the Plaintiff's JOLLY RANCHER Packaging;
(d) An order for permanent injunction restraining the Defendant, its partners, directors, officers, managers, employees, agents, dealers, licensees, companies and retailers, stockists or any Defendant, from passing-off its lollipops under the Defendant's JOKY RAMPER Mark and Packaging and any other candy and confectionery items as those of the Plaintiff or that may suggest a connection or association with the Plaintiffs JOLLY RANCHER Marks and Packaging ”
31. Counsel for the plaintiffs does not press for the reliefs as sought in prayer clauses 79(e) and 79(f) with respect to delivery up and rendition of accounts.
32. Insofar as the reliefs of damages and costs sought in prayer clauses 79(g) and 79(i) are concerned, reference may be made to the judgment in Hindustan Lever Ltd. v. Satish Kumar, 2012 SCC OnLine Del 1378. The relevant observations are set out below:
33. In the present case, the plaintiffs sent a legal notice dated 17th March 2023 and a reminder letter dated 27th March, 2023 to the defendant. Despite the said notices, the defendant continued to use the impugned mark ‘JOKY RAMPER’. From the affidavit filed by the plaintiffs’ investigator on 19th September, 2023, it emerges that the defendant has been using deceptively similar marks and packaging of various other prominent candy manufacturers.
34. As per the report of the Local Commissioner appointed in the present case, large quantities of infringing products were seized.
35. Taking a holistic view, the actions of the defendant are clearly aimed at capitalizing on the plaintiffs’ goodwill and reputation.
36. In light of the foregoing analysis, I am of the view that the defendant’s conduct warrants the imposition of both costs and damages. Thus, in addition to the decree passed in the terms above, the plaintiffs are also awarded damages of INR 2,00,000/-.
37. For the purposes of calculation of costs, the plaintiffs have filed their bill of costs on 7th November, 2024. It is directed that the representatives of the plaintiffs shall appear before the taxation officer on 2nd December, 2024, who shall determine the actual costs incurred by the plaintiffs in the present litigation.
38. Taking into account that these are ex parte proceedings where the defendant is not contesting the suit and the suit is being decreed in a summary manner, I am not inclined to examine the prayer clause 79(h) with regard to declaration of the plaintiffs’ mark “JOLLY RANCHER” as a wellknown trademark.
39. However, the plaintiffs shall have the right to agitate this issue in other proceedings in future.
40. Let the decree sheet be drawn up.
41. All pending applications stand disposed of. AMIT BANSAL, J NOVEMBER 8, 2024