Full Text
HIGH COURT OF DELHI
CS(COMM) 118/2022 & I.A. 16998/2023
MONSTER ENERGY COMPANY ..... Plaintiff
Through: Mr. Saif Khan, Mr. Shobhit Agarwal and Mr. Prajjwal Kushwaha, Advs.
Through: Ms. Bhawana Nanda, Adv. For D-1
JUDGMENT
04.09.2023
1. The plaintiff is the proprietor of the following registered trademarks: S.No. Trademark Application No. Class Date of Application Status
1. MONSTER 1457869 32 25/05/2006 Regd.
2. 1458027 32 26/05/2006 Regd.
3. 1869533 9, 16, 18,25 05/10/2009 Regd.
4. MONSTER ENERGY 2473447 5, 32 06/02/2013 Regd.
5. 2684521 32 21/02/2014 Regd.
6. 3786533 32 23/03/2018 Regd.
7. MONSTER RIPPER 2069857 5, 32 20/12/2010 Regd.
8. MONSTER REHAB 2166259 5, 30,32 27/06/2011 Regd.
9. MONSTER DETOX 2330422 5, 30,32 11/05/2012 Regd.
10.
MONSTER REHABITUATE 2369012 5, 30,32 24/07/2012 Regd.
11.
MONSTER ENERGY ULTRA BLUE 2557809 5, 32 02/07/2013 Regd.
12.
MONSTER ENERGY ULTRA RED 2630427 5, 32 20/11/2013 Regd.
13.
MONSTER ENERGY ULTRA 2860571 5, 32 10/12/2014 Regd.
14. 3461397 12 18/01/2017 Regd.
15. 2417469 14 25/10/2012 Regd.
16. 2672370 22 04/02/2014 Regd.
17. 2850372 29, 30 25/11/2014 Regd.
18.
19.
JAVA MONSTER 1460434 32 08/06/2006 Regd.
20. X-PRESSO MONSTER 2050720 5, 32 08/11/2010 Regd.
21.
MONSTER GIRL 3906269 32 03/08/2018 Regd.
22.
ENERGY ULTRA
23. 3754375 32 15/02/2018 Regd.
24.
MONSTER MEAL DEAL 3708323 29, 30, 21/12/2017 Regd.
25. 3653917 5, 29, 30, 32, 10/10/2017 Regd.
26.
MONSTER HYDRO 3554854 32 23/05/2017 Regd.
27.
JAVA MONSTER 1460434 32 08/06/2006 Regd.
2. Under the aforesaid marks, the plaintiff is packing and selling energy drinks and energy beverages. The plaint also contains assertions vouchsafing the plaintiff’s goodwill and reputation, both nationally as well as internationally. The plaintiff also carries out its operations through the websites www.monsterenergy.com, www.monsterbevcorp.com and www.monsterarmy.com. These websites prominently feature the mark of the plaintiff. The plaint also provides the earnings of the plaintiff by use of the mark which, during the year 2020 alone is to the tune of $ 10 million.
3. The plaintiff is aggrieved by the use, by the defendant, of the identical mark MONSTER, with an identical logo, as well as a deceptively similar device mark, whereunder the defendant has been selling sportswear, sports apparels and associated products, the following photographs of which are provided in para 28 of the plaint.
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4. The aforesaid products, submits Mr. Khan, were being sold both physically as well as online, through various e-commerce platforms. The screenshot of the sale of the defendant’s products on Flipkart is also provided in para 29 of the plaint.
5. Mr. Khan submits that the defendant’s products are not products which can be regarded as inexpensive, as they are in the nature of sportswear and sports equipment. Besides, Mr. Khan points out that, with clear dishonesty, the defendant has applied for registration of the mark with the Registry of trademarks on 5 July 2019 on proposed to be used basis.
6. Predicated on these assertions, the plaintiff has approached this Court by means of the present suit, seeking a decree of injunction, restraining the defendant as well as all others acting on his behalf from using the mark, either as a word mark or as a device mark with a lettering and style similar to that of the plaintiff, and from using the mark for which the defendant has applied for registration either in respect of sportswear or sports apparel in respect of any goods whatsoever.
7. The plaint was accompanied by IA 2795/2022 under Order XXXIX Rules 1 & 2 of the Code of Civil Procedure, 1908 (CPC), seeking interlocutory injunctive reliefs.
8. On 18 February 2022, this Court issued summons in the suit and passed ex parte interlocutory orders restraining the defendant in the following manner:
9. A local Commissioner was also appointed to visit the premises of the defendant and effect search and seizures. The report of the learned local Commissioner reveals that 145 articles, which bore infringing marks, were found in the premises of the defendant, all of which were inventorised and seized and continue to remain seized till date.
10. Consequent to issuance of summons, the defendant appeared before the Court on 8 July 2022 and submitted that he does not wish to continue use of the impugned mark either as a word mark or as a device mark. The matter was referred to mediation by the Delhi High Court Mediation and Conciliation Centre before which, apparently, the defendant did not appear.
11. The defendant has, thereafter, been absent from the proceedings on all dates of hearing till 26 May 2023, when his Counsel appeared and made a statement that his client had no intention of using the impugned mark.
12. It is clear, on the face of it, that the defendant has copied the registered trademark of the plaintiff, both in word and device form. The mere insertion of the figure above the word, in the defendant’s mark does not mitigate, in any fashion, the fact of infringement or of the defendant consciously seeking to pass off its products as those of the plaintiff. The word clearly constitutes the prominent, and dominant, feature of the impugned mark. A customer of average intelligence and imperfect recollection, who knows of the plaintiff’s mark, and encounters, later, the defendant’s mark, is bound to regard both as belonging to the same person, with a mere figure of a monster added over the word by way of embellishment.
13. The defendant has filed an affidavit dated 23 August 2023 during the pendency of these proceedings, which reads thus: “AFFIDAVIT ON BEHALF OF THE DEFENDANT I, Vineet Deshwal, Trading as Radha Krishna Enterprises, R/o C- 38, Wonder City 1, Newar MIET College, NH-58, Meerut, Uttar Pradesh – 250002, India, currently at New Delhi, do hereby solemnly affirm and declare as under:i. I say that I am the Defendant in the present suit filed by the Plaintiff under the provisions of Trade Marks Act, 1999 and the Copyright Act, 1957 in addition to under common law. ii. I say that I had been, as proprietor of the entity M/s Radha Krishna Enterprises, engaged in the business of manufacturing, marketing, selling and commercially dealing in sporting products i.e. Cricket kits including cricket bats, batting leg guards, batting gloves, kitbag, thigh guards, arms guards, abdominal guards, cricket helmets, balls and other related/cognate products under identical and/or confusingly similar marks, including “MONSTER” and. iii. I say that I have stopped being engaged in the business of marketing, selling and commercially dealing in sporting products under identical and/or confusingly similar marks, including “MONSTER” and. iv. I say that I do not wish to continue the use of the mark “MONSTER” and and I am willing to return the seized products to the manufacturer from whom they have been sourced as I am no longer carrying on such trade/ business activity. v. I say that I undertake to remove all the billboards, signage and/or hoardings bearing the impugned mark/device/ trade dress. vi. I say that I am currently working on a contractual basis on a project as ‘the supervisor’ for supervising the Water Lines being inducted on project at a daily wage of Rs 600/-. vii. I say that there is no false statement or concealment of any material fact, document or record and I have included information that is according to me relevant for the present suit. viii. I say that I am aware that for any false statement or concealment, I shall be liable for action taken against me under the law. Sd. Deponent VERIFICATION: Verified at New Delhi on this 23 day of AUG 2023 that the contents of the above affidavit are true and correct to the best of my knowledge and nothing material has been concealed therefrom. Sd. Deponent”
14. Ms. Bhawana Nanda, learned Counsel who appears for Defendant 1 submits that her client is no longer using the impugned mark and does not intend to use the said mark. She, however, has no knowledge of the status of the Application No. 4226409 filed by the defendant with the Registrar of Trademarks, seeking registration of the impugned mark.
15. In view of the aforesaid affidavit, Mr. Khan seeks that the suit may be decreed and leaves it to the Court to fix appropriate costs, keeping in view the facts of the case.
16. The prayer clause in the suit reads thus:
17. In view of the aforesaid, the present suit is decreed in the following terms:
(i) There shall be a decree in terms of prayers (a) to (d) in the suit reproduced supra.
(ii) The defendant is also directed to deliver up, to the plaintiff, all the material which stands seized by the learned Local Commissioner on 24 February 2022 within a period of ten days from today.
(iii) In view of the facts of the case, no order for rendition of profits or for damages is being passed.
(iv) However, as the defendant acted with clear dishonesty, with the transparent intent of copying the plaintiff’s mark and passing off its goods as those of the plaintiff, it is not possible for the Court to let the defendant of unconditionally. Though the affidavit filed by the defendant states that he is now earning only ₹ 600/- per day, I am in agreement with Mr. Khan that the said statement is inherently unbelievable, especially given the fact that the defendant was, in the past, selling sportswear and sports goods using the impugned mark on online platforms including Flipkart. The affidavit filed by the defendant does not place on record any details regarding the earnings from such sales.
18. In view of the aforesaid, the defendant shall be liable to pay punitive costs to the plaintiff a sum of ₹ 1,00,000/- by way of a crossed cheque within a period of four weeks from today.
19. The suit stands decreed in the aforesaid terms.
20. Let a decree sheet be drawn up by the Registry accordingly.
21. In view of the statement made on behalf of learned Counsel for the defendant, the plaintiff is permitted to approach the Registry of Trademarks with the order passed today. On the basis of this order the Registry of Trademark shall forthwith proceed to pass orders treating Application No. 4226409, for registration of the mark, as not pressed.
C.HARI SHANKAR, J SEPTEMBER 4, 2023