JK Cement Limited v. Ankur Agarwal & Ors.

1. None has appeared for the defendants. It is noted that defendant nos. 1 and 2 had put in appearance, after service. However, no written statement has been filed on their behalf. Defendant no. 3 was also served, as recorded in the order dated 16th February, 2024. However, none appeared for defendant no. 3, despite service and no written statement came to be filed on behalf of defendant no. 3 also. The rights of defendant nos. 1 and 2 to file their written statement, was closed vide order dated 21st September, 2023. The right of defendant no. 3 to file written statement was closed, vide order dated 8th May, 2024. Thus, no written statement has come to be filed on behalf of the defendants, despite lapse of statutory period. Accordingly, the defendants are proceeded ex-parte.

2. The present suit has been filed praying for permanent injunction for restraining the defendants from using, manufacturing or selling under the trademark J&K, trade name Jay Kay Industries and under any trademark/ label/packaging/trade dress/trade name, which is identical with or deceptively similar to the plaintiff‟s trademark/label/packaging/colour combination/ trade dress/ trade name „JK‟ in relation to goods, i.e., cement, wall putty and other allied/cognate goods/business.

3. The facts canvassed in the plaint, are as follows: 3.[1] The plaintiff is an affiliate of the multi-disciplinary industrial conglomerate JK organisation, which was founded over hundred years ago, by late Lala Juggilal Singhania and late Lala Kamlapat Singhania. The abbreviation „JK‟ denotes „Juggilal Kamlapat‟. 3.[2] The trademark JK was adopted and has been in use, since the year 1974 for various goods by the plaintiff, including, cement and other goods introduced time to time, such as wall putty, building materials, grey cement, white cement, gypsum plaster, tile adhesive, wood finishes, non-metallic rigid pipes for building, asphalt, pitch, bitumen, etc. 3.[3] The plaintiff is associated with JK organisation, which is an eminent industrial group in India. The JK organisation has different companies for different businesses, apart from plaintiff-company. The trademark JK was adopted as a prefix to the names of manufacturing and trading companies of the family more than a century ago. The list of companies under the trademark JK, as given in the plaint, is as follows: a) JK Cement Limited b) JK Cotton Limited c) Jaykay Enterprises Ltd., d) JK Traders Limited, e) JK Paints and Pigments Ltd., f) JK Cement (Western) Ltd., g) Jaykaycem (Central) Ltd., h) Jaykaycem (Northern) Ltd., i) Juggilal Kamlapat Holdings Ltd., j) JK Tyre and Industries Ltd. k) JK Lakshmi Cement Limited l) JK Fenner India Limited m) JK Paper Limited n) JK Agri Genetics Limited o) JK Risk Managers and Insurance Brokers p) JK Lakshmipat University 3.[4] The plaintiff is the registered proprietor of the trademark JK and its several variants in India. The list of trademark registrations, in favour of the plaintiff, as given in the plaint, is as follows: 3.[5] By virtue of the excellent quality and extensive sales of the products of the plaintiff, the trademark JK has acquired a handsome and valuable goodwill and reputation. The intending purchasers identify and recognize the products of the plaintiff by the trademark JK. 3.[6] On account of continuous, regular, open, extensive and use of the registered trade mark JK and its said variants, label/packaging/artistic work and trade name in respect of its goods and services, the said trade mark JK, its variants, its said label/packaging/artistic work, and trade name, have come to be associated with the name of the plaintiff. People in trade as well as general public consider the said goods under the trade mark JK, its variants and its said label/packaging/artistic work/trade name as the goods manufactured and marketed by the plaintiff and none-else. 3.[7] The unwary purchasers recognizes the products, i.e., Cement, White Cement, Wall Putty, Gypsum Plaster, Tile Adhesives, Grouts and Wood Finishes and many more products of the plaintiff under their respective mark JK and its variants through the trademark as well as through its visual appearance of the label/packaging, original artistic work, colour combination, getup, layout, placement, trade name etc. of the plaintiff. 3.[8] On 01st September, 2022, the plaintiff from its marketing team through its distributors received complaints of and enquiries about the goods i.e., Cement/Wall Putty being sold by defendant nos. 1 & 2 under the impugned identical/deceptively similar trade mark 'J&K' under impugned deceptively similar label/packaging/colour combination/trade dress over which the name of defendant no. 3 under impugned trade name Jay Kay Industries, is mentioned as manufacturer on the impugned label/packaging and which are being sold by the defendants in clandestine and surreptitious manner without issuing invoice and causing confusion in the markets as to be associated with the plaintiff. 3.[9] Further the plaintiff on 09th September 2022 came across the website on which defendant nos. 1 and 2 are soliciting, marketing and selling their impugned goods, i.e., Cement/Wall Putty under the impugned trademark 'J&K' under impugned deceptively similar label/packaging/colour combination/trade dress on website www.ankurpaints.com which is an interactive website of the defendant nos. 1 and 2 connecting buyers and sellers. The defendants are working in connivance and nexus with each other for the manufacturing and sale of the impugned goods under the impugned mark/label/colour combination/trade name.

3.10 A trade mark application, bearing no. 4783607 in Class 19, was filed by defendant nos. 1 & 2 on the „proposed to be used‟ basis for registration of, in respect of goods, i.e., Wall Putty, Cement, Cement for Building and Plasters. The plaintiff herein filed opposition application, in respect of the said application of the defendants, vide Opposition No. 1103314.

3.11 The defendants are not the proprietor of impugned trade mark 'J&K' and impugned label/packaging/colour combination/trade name, which is deceptively similar to the registered trademark JK, its label/packaging/ colour combination/trade name.

3.12 The defendants‟ dishonest and malafide intentions are further apparent and evident from the fact that in order to come as close as possible to the trademark JK of the plaintiff and create complete deception and association with the plaintiff‟s goods and business, the defendants have also adopted the impugned deceptively similar label/packaging/colour combination, as well as impugned trade name Jay Kay Industries. Hence, the present suit has been filed.

4. This Court notes that despite service, no written statement has been filed on behalf of the defendants. The statutory period for filing the written statement is already over. No plausible defence has come on record on behalf of the defendants. Thus, this Court has proceeded to hear the matter.

5. At the outset, this Court notes the comparison between the two packaging/label of the plaintiff as well as the defendants, which is as follows:

6. It is noted that on a plain comparison of the products of the plaintiff and defendants, it is evident that the defendants have adopted the trademark 'J&K', and trade name Jay Kay Industries, which is identical/deceptively similar to the label/trade name/packaging/colour combination/trade dress of the plaintiff. Such deceptive similarity is likely to deceive the public into purchasing the defendants‟ products, under the impression that it is emanating from the plaintiff‟s source. Thus, the malafide and dishonest intention of the defendants, to ride upon the goodwill and reputation of the plaintiff, is apparent.

7. Thus, the defendants are guilty of violating the statutory as well as common law rights of the plaintiff, by subsequently using impugned identical/deceptively similar trade mark, impugned identical/deceptively similar label/packaging/colour combination/trade dress/trade name, in relation to the same, cognate and allied goods.

8. This Court also notes that the defendants had filed application for registration of their trademark device with the Trademark Registry, with the user detail as „proposed to be used‟. The said application has since been abandoned. The status of the application of the defendant, showing the same as abandoned, is reproduced as under:

9. Considering that no written statement has been filed on behalf of the defendants, despite lapse of statutory period, this Court exercises its authority under Order VIII Rule 10 of the Code of Civil Procedure, 1908 (“CPC”).

10. A Coordinate Bench of this Court in the case of The Christian Broadcasting Network, INC Versus CBN News Private Limited, 2018 SCC OnLine Del 11666, has propounded the scope of Order VIII Rule 10 CPC in relation to commercial suits, the relevant portion of which, reads as under: “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.”