Full Text
HIGH COURT OF DELHI
HEIFER PROJECT INTERNATIONAL ..... Plaintiff
Through: Ms. Julien George and Mr. Arjun Gadhoke, Advocates.
Through: None.
JUDGMENT
1. This lawsuit, instituted by Heifer Project International (Plaintiff), seeks inter-alia permanent injunction against Heifer Project India Trust (Defendant No. 1) and Late Mr. Pran K Bhatt (Defendant No. 2), in his capacity as the Managing Trustee of Defendant No. 1. Through this legal action, the Plaintiff aims to safeguard their intellectual property rights in the mark “HEIFER”, leaping cow device mark “ ”, oval logo- “ ”, by preventing the Defendants from using any trademarks and logos that are deceptively similar or nearly identical to their own. PLAINTIFF’S CASE
2. The Plaintiff’s case as put forth by counsel for the Plaintiff, can be summarised as follows:
2.1. Plaintiff was incorporated in the year 1953 and is an Arkansas nonprofit corporation under the Arkansas Nonprofit Corporation Act of 1993. Plaintiff was originally incorporated under the laws of the State of Indiana, USA, in 1953 and is the surviving corporation following a merger between HPI, Inc. and Heifer Project International, Inc. in the year 1997. Its mission is to alleviate hunger, poverty, and environmental degradation by: (i) supporting people in sustainable development and the stewardship of the environment through responsible management of animal resources and training in farming with livestock; (ii) local resource development assistance; (iii) educating people about the root causes of hunger and poverty; (iv) developing veterinary services and training in animal nutrition; and (v) conducting any other nonprofit activity that is not inconsistent with law. Plaintiff has conducted several projects in over 51 countries including India and carries out various charitable projects including but not limited to projects in the nature of disaster rehabilitation, environmental protection and peace, etc.
2.2. The Plaintiff adopted a unique and uncommon word “Heifer” in the year 1953 as its corporate name and identity for its activities and continued to use the same continuously and uninterruptedly, as or in connection with, its trade names, corporate name, and trademarks. Subsequently, the Plaintiff coined and adopted two trademarks namely “Heifer International” and “Heifer Project” in relation to its activities. Furthermore, they adopted a device mark of a leaping cow “ ”, which was placed in the left-hand top corner of the “Heifer International” trademark and a pictorial mark having the shapes of several animals namely a cow, a goat etc. in an oval device “ ”, which was also used jointly with “Heifer International” (collectively referred to as ‘Plaintiff’s marks’).
2.3. At the time initiation of this lawsuit, all five of these marks were registered with the United States Patent & Trademark Office (US PTO), affirming Plaintiff’s legal claim to their use. However, the Court now notes that three of the five registrations bearing registration no. 2159113, 2235711 and 158216 now stand cancelled.
2.4. That apart, the copyright for these artistic creations is held by Plaintiff, extending globally and also within India. To further strengthen its trademark portfolio, Plaintiff also successfully registered four ‘Heifer’ trademarks with the Indian Trademark Office, ensuring comprehensive protection of its intellectual property. The said marks were granted registration during the pendency of the present suit. Details of the said registrations are as follows:
2.5. Plaintiff’s engagement in widespread promotional activities, through the dissemination of advertisements on websites, brochures, pamphlets, and catalogues both internationally and domestically, underscores the extensive use and recognition of these trademarks. The operation of the website, www.heifer.org, further exemplifies Plaintiff’s proactive measures in establishing and maintaining its presence within the digital domain, thereby reinforcing its trademark rights.
2.6. Furthermore, since its inception, Plaintiff has achieved global recognition, including in India, through its distinctive trade/service marks “Heifer,” “Heifer International,” and “Heifer Project,” along with its logo marks. This recognition is attributed to the successful completion of numerous projects both within India and internationally, which has Sl No. Trademark Application no. Class Date of registration User details 1 1271907 36 and 11.03.2004 31.12.1986 2 HEIFER INTERNATIONA L 1271908 36 and 11.03.2004 31.12.1986 3 HEIFER PROJECT 1271011 36 and 08.03.2004 01.01.1986 4 1271012 36 and 08.03.2004 01.01.1986 culminated in the marks acquiring substantial reputation and goodwill worldwide.
2.7. The Plaintiff, has a longstanding history of significant contributions in India, having been actively involved in funding, fundraising, and educational services since 1955. The specifics of the projects undertaken and financed by the Plaintiff in India are detailed in paragraph no. 9 of the plaint. It is important to note that after decades of contributing to various initiatives, the Plaintiff resolved to streamline their activities and programs through a dedicated Indian entity. Consequently, Defendant No. 1, the Trust, was established with the Plaintiff’s support on 24th December 1992. Nonetheless, it is essential to recognize that the Plaintiff also spearheaded several projects in India independently prior to 1992.
2.8. The “Heifer Project” mark, along with the other Heifer marks and logos, has become synonymous with the high-quality ethical programs, and teachings in various countries, including India. The mark “Heifer Project” has evolved to not only symbolize the high-caliber initiatives undertaken by the Plaintiff but also to become synonymous with Plaintiff’s corporate identity itself.
2.9. Defendant No. 1, (“Defendant Trust”), a non-profit charitable trust, was formed on 24th December, 1992, with its headquarters located in New Delhi. It operates under the name ‘Heifer Project - India Trust,’ but is more widely recognized as ‘Heifer Project India.’ In 1997, the Late Mr. Pran Bhatt, Defendant No. 2, became associated with the Defendant Trust, assuming the role of ‘Country director- India’ and was simultaneously appointed as the ‘Managing Trustee’. Prior to this engagement, Defendant No. 2 was employed by the Plaintiff, with their professional relationship governed by a series of contracts periodically executed and renewed by Plaintiff. However, the contractual relationship between Plaintiff and Defendant No. 2 ceased on 30th June, 2003, when Plaintiff opted not to renew their contract. PLAINTIFF’S ALLEGATION: INFRINGING ACTIVITIES AND CONTRACTUAL BREACH BY THE DEFENDANTS
2.10. The Plaintiff granted Defendant Trust permission to utilize the “Heifer” and “Heifer Project” names and associated logo, even prior to the formation of the Defendant Trust. This authorization was contingent upon a broad agreement that Defendant Trust could employ these trademarks and logo if they operated in a manner that was harmonious and cooperative with Plaintiff’s mission and facilitated Plaintiff’s activities within India. This cooperative arrangement included Plaintiff’s commitment to funding specific projects in India through Defendant Trust. In return, Defendant Trust was obligated to regularly report on the progress and financial details of the projects financed by the Plaintiff. A fundamental aspect of the agreement was the explicit understanding that the Defendant Trust would utilize the “Heifer” and “Heifer Project” trademarks within India, strictly in accordance with the Plaintiff’s instructions, thereby functioning as a licensee of the Plaintiff. This stipulation underscored the Trust’s responsibility to represent the Plaintiff’s interests in India, ensuring that the use of the trademarks conformed to the Plaintiff's guidelines and objectives.
2.11. In 2002, Defendant No. 2 began to deviate from his contractual obligations under his employment agreement, showing a marked reluctance to adhere to Plaintiff’s basic requirements for reporting and accountability. Despite numerous discussions addressing these concerns and Defendant NO. 2’s assurances to rectify the issues, he ultimately failed to fulfill his responsibilities. As a consequence, his contract to serve as the Country Director for India was not extended beyond 30th June, 2003. Nevertheless, Defendant No. 2 maintained his role as Managing Trustee of Defendant Trust, during which he directed the Trust’s operations in a manner that was both whimsical and arbitrary.
2.12. In light of the aforementioned issues, and with its image, reputation, and goodwill at stake, the Plaintiff, on 9th October, 2003, notified Defendant Trust, through a letter that it would be suspending all project funding in India. Additionally, Plaintiff explicitly instructed Defendant Trust to cease the use of the “Heifer Project” trademark, trade name, and logo. This instruction was based on the terms of the agreement which stipulated Defendant’s right to use these marks was contingent on continuous funding from the Plaintiff for projects in India and satisfactory financial reporting of such projects by the Defendant. Defendants were further instructed to return all materials, cash, and other properties belonging to Plaintiff. Despite these instructions, Defendants persisted in their use of the marks “Heifer” and “Heifer Project” and associated logo/ oval device mark containing the pictures of several animals (collectively referred to as ‘Impugned marks’). As a result of this defiance, Plaintiff was compelled to issue a Cease-and-Desist notice on 11th March, 2004, through their lawyer to Defendant Trust. In turn, the Defendant Trust, responding via their attorneys on 17th April, 2004, presented numerous arguments and firmly declared their intention to continue utilizing the “Heifer Project” mark in India.
2.13 The Defendants’ continued utilization of Plaintiff’s marks evidences a clear and dishonest intention to infringe upon these marks. This deceitful strategy is ostensibly designed to attract subscriptions, donations, or grants from the public and various organizations, leveraging Plaintiff’s established reputation for their benefit. Defendants’ refusal to cease the use of these trademarks constitutes a flagrant infringement attempt, directly undermining the goodwill and reputation that Plaintiff has meticulously built over the years. The malafide intent behind these actions is further highlighted by Defendant No. 2’s move to register the “Heifer” trademark in his own name, an act that starkly illustrates the dishonesty in their operations. This duplicity is blatantly reflected in their use of Plaintiff’s marks on their letterhead and other stationery materials, including the word ‘Heifer’ and the oval mark ‘ ’ on its letterhead, all of which are employed in a manner that is unequivocally in bad faith and malafide. Defendants are dishonestly using the said stationery and other basic materials as that of Plaintiff. Such use is completely illegal and unlawful and constitutes infringement of trademark and copyright of Plaintiff’s marks. The said letterhead evidences the use of the trademark “Heifer Project” and the oval device mark “ ” on the Defendant Trust’s letter head despite issuance of letters dated 09th October, 2003 and 11th March, 2004 by Plaintiff. The above-said facts establish, beyond any doubt, the malafide intention of Defendants to continue its use of the Plaintiff’s mark and logo in their operation.
2.14. Defendants are infringing the registered trademarks of Plaintiff and illegally usurping the enormous goodwill and reputation built by Plaintiff since 1953. In particular and more specifically, Defendants are guilty of the following acts: (a) continuous usage of the trademarks and logos of Plaintiff by Defendants after the expiry of the contract and withdrawal of permission to use the said marks; and (b) conveying to the public that Defendants are in some manner still connected and/ or are a part of / with Plaintiff. Thus, the actions of Defendants clearly constitute infringement of trademark and copyright. Defendants do not have any right to use or apply for the registration of the Impugned marks or have any right to carry on any business activities thereunder.
DEFENSE OF DEFENDANTS, PER WRITTEN STATEMENT
3. The Defendants articulated several defences in their written statement, asserting reasons for the dismissal of the suit, which are summarized as follows: 3.[1] Defendants challenged the validity of the institution of the present suit and sought dismissal on the ground of lack of proper authorization in favour of the signatory who instituted the suit on behalf of the Plaintiff. Central to their argument is the Power of Attorney, dated 20th September, 2004. This document, which facilitated the initiation of this lawsuit, expressly authorized Mr. Pankaj Srivastava to represent the Plaintiff in the legal capacity. A careful examination of this Power of Attorney reveals that Mr. Srivastava was appointed as Plaintiff’s advocate, a role that is in conflict with the legal standards that prohibit an advocate from serving simultaneously as a ‘Constituted Attorney’ for an entity. Based on this interpretation, the lawsuit, as filed, lacks legal standing and should therefore be deemed not maintainable. 3.[2] Defendant Trust was formed by three like-minded individuals namely Brig. Brij Chandra, Mr. J. B. Singh and Mr. Hanuman Prasad. Immediately upon formation of the Trust, the Defendant Trust applied for Foreign Contribution (Regulation) Act, 1976 (‘FCRA’) license to the Ministry of Home Affairs, Government of India. Attention of this court is drawn to the rules and regulations in regard to grant of FCRA license, which clearly stipulates that such a certificate shall only be granted to registered Indian NGOs, trusts and other organizations which receive independent foreign contributions. The Income-Tax Department granted 100% exemption to Defendant Trust after scrutinizing their accounts. Right since the inception of Defendant Trust, Plaintiff and the said Trust have worked in co-operation with each other with the clear understanding that both entities are distinct and separate entities. The mutual co-operation and understanding extended to collection of funds by Plaintiff from donors internationally for and on behalf of Defendant Trust. It was clearly understood that all donations concerning India were to be sent to Defendant Trust, who could also independently collect donations again for utilization of the funds for charitable purposes in India alone.
3.3. While initially these funds were transferred to the Defendant Trust, over a period of time, a large part of these funds started getting siphoned elsewhere and did not reach the Defendant Trust. This eventually became the cause of discontentment between the two parties. Nonetheless, the manner in which activities have been conducted in the past has given rise to the situation where the donor community, desirous of donating funds for Indian projects, associates the name ‘HEIFER’ with the Defendant Trust. Even for the donation to Plaintiff outside India, for projects in India, the donor expects the funds to reach the Defendant Trust.
3.4. Furthermore, the word ‘HEIFER’ has not been coined by Plaintiff. On the contrary, ‘Heifer’ is a common dictionary and descriptive word, which means a “young cow” and is thus incapable of being used as a trademark by Plaintiff.
3.5. The Plaintiff’s website wrongly displays that they are working in India, when in fact they have no operations in India whatsoever. Moreover, when the Plaintiff has taken a stand before this Court that they have severed relationship with the Defendants, this stand ought to be communicated to the donors as well.
3.6. Additionally, the Plaintiff has never worked in India on a continuous or regular basis. Its activities in India, if any, have at best been sporadic and intermittent, which could not entitle it to claim any user or rights as alleged in the instant suit. This is supported by the fact that the Plaintiff has failed to disclose the amounts raised and disbursed by it for its alleged activities in India.
3.7. It is denied that the Defendant Trust was established with the support of Plaintiff. It is pertinent to note that the Plaintiff has failed to provide the particulars of the alleged support extended by it towards the formation of the Trust. Clause 4 (v) of the Trust Deed, as highlighted by Plaintiff, lays no obligation over Defendant Trust except to work in harmony and cooperation with Plaintiff as is evident from a mere reading of the said provision.
COURT PROCEEDINGS
4. On the basis of the pleadings and supporting documents, following issues were framed on 27th July, 2009:-
5. The Plaintiff examined Mr. Mahendra Lohani, Plaintiff Witness 1 [PW-1]. Defendants produced oral evidence of Late Mr. Pran Bhatt, Defendant Witness 1 [DW-1].
6. On 25th March, 2022, Defendants’ counsel informed the Court that Defendant No. 2 had passed away. The subsequent order dated 14th December, 2022 records as follows:
Although no death certificate confirming Defendant No. 2’s death was placed on record, the Plaintiff did not contest the aforesaid statement and, in fact, sought time to decide their next course of action considering this development. Additionally, there has been no attempt by the Plaintiff to implead his legal representatives, as evidenced by the Court records. Given that no legal representatives were brought in to represent Defendant No.2, the suit is considered abated against him. Nonetheless, the facts and evidence are also being analyzed against him as he was the managing trustee of Defendant Trust.
7. After the discharge of counsel for Defendants, there has been no representation on behalf of Defendant No.1 since 12th April, 2023. Accordingly, the Court has heard arguments of the Plaintiff and considered the oral and documentary evidence led by both parties and has proceeded to determine the following issues: ISSUE NO. 1 ‘Whether this Hon’ble Court has the territorial jurisdiction to try and entertain the present suit? OPD’
8. The Plaintiff has asserted that this Court has territorial jurisdiction as Defendant Trust’s registered office is located in Delhi, where both Defendants are engaged in business activities. It is also contended that the cause of action arose in Delhi, as the Defendants are conducting their infringing activities under the Impugned marks within this territory. Consequently, this Court is vested with territorial jurisdiction under Section 20(c) of the Civil Procedure Code (‘CPC’) to adjudicate the instant lawsuit. Conversely, the Defendants, in paragraph 20 of their joint written statement to the amended plaint, challenge the territorial jurisdiction of this court. They argue that the Delhi office of Defendant Trust was relocated to Noida in 2002, prior to the institution of this suit. They also assert that no cause of action has accrued within this Court’s jurisdiction.
9. The original letter dated 24th March, 2004 [Ex P-9 (Admitted Document)] evidences usage of Plaintiff’s marks by the Defendants on its letterhead. This document also makes a specific mention of Defendant’s Delhi address and does not specify any Noida Address. The relevant portion of the document is reproduced hereunder for ease of reference: During the cross- examination recorded on 22nd April, 2015, Late Mr. Pran K Bhatt, Defendant No. 2, [DW-1], admitted that the above document [Ex P-9] is the letterhead of Defendant Trust as evidenced from the following response to the question put to him:
10. The reply dated 17th April, 2004 [Ex P-8 (Admitted Document)] which was sent on behalf of Defendants, in response to the Cease and Desist Notice dated 11th March, 2004 issued by Plaintiff, categorically states as under:- “We write on behalf of and on instructions of our client Heifer Project India Trust of the address Post Box: 4244, Greater Kailash, New Delhi - 110048, India.” [Emphasis Supplied] Furthermore, the said document reveals that a copy of the reply was marked to the Delhi address and there is no mention of any Noida address: “Mr. Pran Kishore Bhatt, Managing Trustee Heifer Project India Trust, Post Box:4244, Greater Kailash New Delhi-110048”
11. Besides, during cross-examination conducted on 22nd April, 2015, DW-1 – Late Mr Pran Bhatt, deposed that Defendant Trust operated three bank accounts, which contained the funds collected under the infringing mark “HEIFER”, and those were located within the territorial jurisdiction of this Court. The said deposition is as follows:
2005. Q. Were all funds received as donations by Defendant No. 1 deposited into the abovementioned bank accounts?
12. The Defendants have in their joint written statement to the amended plaint, claimed that Defendant Trust’s address was shifted to Noida in the year 2002 and to prove the same, reliance had been placed on a copy of the official communication issued to the Income Tax Department on 2nd September 2002 along with the postal receipt to prove the dispatch. The said communication marked as ‘Mark A’ reads as follows: Although in the above communication, it has been stated that in the near future Defendants desire to be corresponded on their new address, however, at the same time it is also mentioned “However, you may correspond with us on post box address for sending the ordinary mail only i.e., Post box 4244, Greater Kailash, New Delhi.” This indicates that the Defendants continued their business activities in Delhi and had not ceased their activities in Delhi.
13. Thus, based on the evidence presented by the parties, it is proved that both Defendants were still operating from Delhi even after their alleged shifting of office to Noida in 2002. The infringing use of the trademark “HEIFER” occurred within Delhi, within the territorial jurisdiction of this court. Thus, the cause of action for infringement falls within the jurisdiction of this Court. Accordingly, Issue No.1 regarding territorial jurisdiction is resolved in favour of the Plaintiff and against the Defendant Trust.
14. The suit is signed, verified and instituted by Mr. Pankaj Srivastava, who is duly authorised to do under Powers of Attorney dated 20th September, 2004 and 31st August, 2005. In their joint written statement to the amended plaint, the Defendants deny his authority and raise following objections: “Preliminary submissions and objections
19. The suit is further vitiated and liable to be dismissed on the short ground that by way of the aforesaid Power of Attorney dated September 20, 2004, on the basis of which the present suit has been filed, the said Mr. Pankaj Srivastava was authorized to act in the capacity of Advocate of the Plaintiff. This fact stands proved by a mere perusal of the impugned power of attorney. It is submitted that it is settled law that an Advocate cannot act in dual capacity of an Advocate as well as a Constituted Attorney of an entity. The suit as filed is thus not maintainable.” xxx xxx xxx Reply on Merits
2. The averments in the corresponding paragraph are wrong and vehemently denied. The submissions made in paragraph 19 of the preliminary objections may kindly be read as part and pareel of this paragraph. In view thereof, it is vehemently denied that Mr. Pankaj Srivastava is duly authorized by a Power of Attorney of the Plaintiff or that he is competent to institute and maintain the present proceedings for and on behalf of Plaintiff and to sign and verify pleadings, applications and documents in the present case.”
15. In light of the Defendants’ assertions, the burden to prove the issue in question was assigned to the Defendants. During the trial, the Defendants’ reinforced their objection and contested the authorization purportedly granted to Mr. Pankaj Srivastava. The Defendants’ witness, Late Mr. Pran Bhatt, submitted an affidavit as evidence (referenced as DW-1/A). In paragraphs 3 to 6 of this affidavit, he specifically alleges that the lawsuit was initiated without the authorization from the Plaintiff by two individuals, described as “busybodies,” namely Mr. Pankaj Srivastava and Mr. Mahendra Lohani.
16. The Defendants’ objections focused specifically on the validity of the Power of Attorney granted to Mr. Srivastava, rather than his familiarity with the facts of the case or his competence. Beyond mere denials in the written statement and contesting the authority of Mr. Pankaj Srivastava and Mr. Mahendra Lohani, the Defendants have not discharged the burden of proof to resolve the issue in their favour. However, given that this matter pertains to the initiation of the lawsuit, the court must also determine whether the Plaintiff has adequately shown that the suit was validly instituted.
17. In the instant case the evidence presented reveals that the Plaintiff, established in 1953, functions as a non-profit corporation under the Arkansas Non-Profit Corporation Act of 1993. Mr. Pankaj Srivastava’s authority to initiate this lawsuit stems from Powers of Attorney dated 20th September, 2004, and 31st August, 2005, which were executed by Ms. Jo Luck. Although these POAs, purportedly executed by Ms. Jo Luck, have conclusively not been proved, yet there exists ample evidence on record to affirm that the suit was validly initiated. Notably, Ms. Jo Luck’s role as the CEO within the Plaintiff’s organization was confirmed during the crossexamination of the Defendants’ witness on 22nd April, 2015 as highlighted by the following responses:
18. In trial, Mr. Mahendra Lohani (Vice President of Asia/South Pacific Programs, Heifer Project International) was specifically authorized to testify in this case under Plaintiff’s Directive No. 2011-010 [Ex. PW-1/A], highlighting the Plaintiff’s awareness of the filing and its continued interest in prosecuting the lawsuit. The Defendants’ argument is therefore a baseless endeavour to confuse and detract from the factual basis of the case. This is further established during the cross-examination of the Late Mr. Pran K Bhatt (Defendant No. 2) recorded on 22nd April, 2015 which reads as follows:
Pankaj Srivastava and Mr. Mahendra Lohani and not the Plaintiff, while in subsequent paragraphs you further state that as per Mr. Lohani's evidence he does not know Mr. Srivastava. How can two persons who do not know each other jointly institute a suit against the Defendants?
19. We must now also address the Defendants’ contention that the suit filing is improper because it was initiated based on an invalid Power of Attorney dated 20th September, 2004. They argue that this document authorized Mr. Pankaj Srivastava solely to act as the Plaintiff’s advocate—a fact that is verifiable by reviewing the said Power of Attorney itself. Furthermore, they argue that it is a well-established principle that an advocate cannot simultaneously serve as both an advocate and a Constituted Attorney for the same party. Consequently, they contend that Mr. Srivastava’s action of filing this suit while serving in these dual capacities is legally untenable.
20. The court finds the Defendants’ contention unconvincing. There is no established legal prohibition against an advocate serving as an attorney for the purpose of filing a lawsuit. Moreover, it is important to note that the Power of Attorney dated 20th September, 2004, explicitly authorized Mr. Pankaj Srivastava to act on behalf of the Plaintiff in the capacity of a constituted attorney, not as their advocate. The Plaintiffs have appointed M/s King Stubb & Kasiva, represented by Ms. Navina K., as indicated in the Vakalatnama, to serve as their legal counsel. This clear distinction confirms that Mr. Srivastava’s role was appropriately confined to that of a constituted attorney only, thereby rendering the Defendants’ argument legally untenable.
21. To conclude, the Plaintiff has successfully proved that the Plaint was signed, verified, and instituted by a competent person. This issue is thus resolved in favour of the Plaintiff and against the Defendant Trust. Issue No. 3 ‘Whether the Defendant No. 1 has infringed the trademark, trade name and corporate name HEIFER of the Plaintiff? OPP’
22. The crucial question in this case is whether the Defendant Trust has infringed upon the Plaintiff’s trademark, trade name, and corporate identity, “HEIFER.” The Plaintiff has proved its status as the registered proprietor of trademarks with registration numbers 1271907, 1271011, 1271908, and 1271012 in India. The certificates of registration for these marks have been duly proved by Plaintiff’s witness (PW[1]) as Exhibits PW-1/16 to PW-1/19. The pleadings and documents mentioned above unequivocally establish the Plaintiff as the rightful owner and proprietor of the “HEIFER” trademark, trade name, and corporate identity, encompassing logos and other associated marks. Furthermore, in the cross-examination of DW-1 on 23rd April, 2024, Defendant No.2 confirmed Plaintiff’s registration of the “HEIFER” trademark within Indian jurisdiction, highlighting the Defendants’ lack of challenge with regards to the Plaintiff’s rights over its registered marks in India. Additionally, DW-1 acknowledged that the Defendants had not filed any cancellation petition against the Plaintiff’s trademark registration, thereby affirming the Plaintiff’s unchallenged ownership of the trademark rights. The relevant evidence recorded on 23rd April, 2015, as borne from the testimony of DW-1 is as follows:
23. We must take note of one of the objectives of Defendant Trust, as clarified in Clause 4 of its Trust Deed, was “To work in harmony and cooperation with “Heifer Project International” organisation and facilitate its working in India” [Ex. PW-4 (Admitted document)]. The aforenoted objective indicates a broad understanding between the Plaintiff and the Defendant Trust for the grant of permissive use of the trademark “Heifer” and “Heifer Project” and logo. Specifically, this entailed the Defendant Trust working in harmony and cooperation with the Plaintiff and facilitating its working in India.
24. Given the uncontested trademark rights of the Plaintiff and the objectives outlined in Defendant No. 1’s Trust Deed, it is clear that the Defendant Trust’s use of the Plaintiff’s trademarks without explicit permission constitutes an infringement of those trademark rights. The credibility of the defence presented by Defendant No. 2, on behalf of Defendant Trust, is significantly undermined by DW-1’s admissions during cross-examination. DW-1 acknowledged his lack of awareness regarding the origins of Defendant Trust’s adoption of the Impugned marks. The cross examination conducted on 21st April, 2015 and 22nd April, 2015 revealed DW-1’s limited involvement with Defendant Trust:
Coordinator and was also simultaneously appointed as Trustee of Heifer Project India Trust along with three others who were already there as trustees. Till this case is pending, I am connected with the Defendant NO. 1. Presently, Defendant No. 1 is not in existence as far as programme activities are concerned in the field.
25. Although the Defendants have relied upon an FCRA license — which is only issued to registered Indian NGOs, trusts, and other organizations receiving foreign contributions — as proof of their autonomy, there is sufficient evidence on record to show that a relationship with the Plaintiff was established from the very inception of the Defendant Trust and the same continued for a stretch of time. The evidence produced during trial, also proves that Defendant No. 2 was an employee of Plaintiff. The Defendant Trust was sending financial reports and accounts to Plaintiff for the funds received by it. Defendant No. 2 had often referred to Plaintiff as being the Headquarters managing the affairs of Defendant Trust, thereby evidencing the supervisory power of Plaintiff over the Defendants. The relevant portion of the cross examination of DW-1 dated 22nd April, 2015 is reproduced for ease of reference:
26. Thus, even if it is accepted that the Defendant Trust is an independent legal entity, this does not negate the fact that a relationship existed between the Plaintiff and Defendant Trust. This relationship could be characterized as that of a licensor and licensee, specifically concerning the lawful use of the Plaintiff’s trademarks.
27. That apart, during the deposition on 22nd April, 2015, Late Mr. Pran
28. Defendants have also admitted to taking funds from the general public even after the termination of their relationship with the Plaintiff. On 23rd April, 2015, DW-1 admitted this fact, as follows:
29. The legal defences presented by Defendants cannot withstand scrutiny once it is factually established that their role was limited to that of a licensee for the use of Plaintiff’s marks. The admitted document marked Exhibit P-9, a letter dated 24th March, 2004, provides compelling evidence of the Defendants’ infringement. This letter, which prominently features the Plaintiff’s marks, was clearly used by the Defendants to solicit contributions from various donors. Such usage, of nearly identical trademark used for identical services subsequent to express revocation of permission, constitutes clear infringement. This unauthorized and illegal appropriation of the Plaintiff’s registered trademark also demonstrates the Defendants’ disregard for the Plaintiff’s intellectual property rights.
30. Indeed, the present case is a classic instance of ‘triple identity.’ The Impugned trademarks are nearly identical, as are the areas of operation, and the segments of the public they target. Therefore, the Defendants’ use of these nearly identical and deceptively similar marks is certain to cause deception and confusion among the general public. Besides, the Defendants have persistently engaged in activities that unlawfully exploit Plaintiff’s reputation and goodwill. Even after the termination of their contractual relationship and the explicit withdrawal of rights to use the Plaintiff’s trademarks and logos, Defendants have unauthorisedly continued use of their deceptively similar marks. This defiance not only violates the agreement but also misleads the public and the relevant stakeholders regarding the nature of Defendants’ affiliation with Plaintiff. Defendants have further compounded their infringement by falsely representing their relationship with Plaintiff. They have insinuated to the public and stakeholders that they remain affiliated or integrally connected with Plaintiff, thereby undermining Plaintiff’s brand/ trademark integrity and causing confusion about its unique identity in the marketplace. Defendants lack any legal right or justification to the use of contested marks, or applying for their registration of identical marks for conducting any business activities.
31. Thus, it becomes unequivocally clear that Defendants have engaged in the infringement of Plaintiff’s trademark, trade name, and corporate identity, “HEIFER.” This infringement contravenes Plaintiff’s established legal rights governing trademark usage rights, particularly in cases where prior authorization has been explicitly withdrawn.[1] Defendants’ continued utilization of the “HEIFER” mark, post-revocation, constitutes a clear violation of Plaintiff’s intellectual property rights, affirming the untenability of their defence.
32. To conclude, the Plaintiff has proved that the Defendant Trust has infringed the trademark, trade name and corporate name HEIFER of the Plaintiff. This issue is thus resolved in favour of the Plaintiff and against the Defendant Trust.
ISSUE NO. 4 ‘Whether the Plaintiff is entitled to the relief of permanent injunction or mandatory injunction as prayed for? OPP’
33. For the aforesaid reasons, Plaintiff is entitled to a permanent injunction restraining Defendant Trust, and anybody acting on their behalf from infringing the trademarks, tradename and corporate name of the Plaintiff or any part thereof and/or any other name which is deceptively similar to the trademark “HEIFER and/ or the leaping cow device mark “ ” and/or the oval logo- “ ”, ISSUE NO. 5 ‘Whether the Plaintiff is entitled to the relief of rendition of accounts and damages and if so for what period and for what amount? OPP’
34. The Plaintiff in their written note of submission dated 22nd January, 2024 has prayed for compensatory and punitive damages to the following effect: “The Plaintiff humbly prays before this Hon’ble Court to also award punitive damages and legal costs, over and above any compensatory damages that are due in favour of the Plaintiff, due to the deliberate and egregiously illegal acts of infringement of the Defendants.” Furthermore, the Plaintiff, in the prayers made in the amended plaint has also sought for rendition of accounts. Section 135(1) of the Trademarks Act, 1999 allows one to ‘either’ seek damages ‘or’ an account of profits and not both. While damages are a matter of right, the account of profits is an equitable remedy, and the Court has a discretion whether or not to grant it.[2] Furthermore, the relief of rendition of accounts is granted only in exceptional cases.[3] The Plaintiff has failed to make a case as to why the present suit is an exceptional case which deserves the relief of rendition of accounts. Furthermore, the Plaintiff has not led any empirical evidence of profit that the Defendants may have made on account of the use of the Impugned marks.[4] For the foregoing reasons, in the opinion of the court, this is not a fit case for the grant of relief of rendition of accounts. However, this Court cannot gloss over the Defendant Trust’s Morgardshammar India Limited and Ors. vs. Morgardshammar 2012 SCC OnLine Del 4945 Titan Industries v. Nitin P. Jain and Anr., (2005 SCC OnLine Del 1311) E-merge Tech Global Services P Ltd. v. MR Vindhyasagar and Anr. in CS No. 258/2020 Burberry Ltd v. Aditya Verma, 2022 SCC OnLine Del 882. Tata Sons Limited v. Rama Nerusu 2010 SCC OnLine Del 430 conduct which has been deliberate and egregiously illegal in use of the Impugned marks after the revocation of the permission by the Plaintiff. Thus, the Plaintiff is entitled to award of nominal damages and legal costs.
RELIEFS
35. In light of the aforementioned facts and circumstances, the suit is decreed in favour of the Plaintiff and against the Defendant Trust in the following terms: -
36. Decree sheet be drawn up.
37. Disposed of, along with all pending applications.
SANJEEV NARULA, J APRIL, 23 2024 d.negi