Full Text
HIGH COURT OF DELHI
Date of Decision: 21st February, 2023
BATA INDIA LTD. ..... Plaintiff
Through: Ms. Rhea Dube and Mr. Pulkit Gupta, Advocates.
Through: None
JUDGMENT
1. Plaintiff seeks inter alia a decree of permanent injunction restraining the Defendant from infringing and passing off Plaintiff’s registered trademarks “POWER” and “ ” [hereinafter “subject marks”]. The Plaintiff’s case
2. Plaintiff was originally incorporated in India as Bata Shoe Company Private Limited in the year 1931. Thereafter, in 1973, it was transformed in to a Public Limited Company and was rechristened as Bata India Limited. Plaintiff is also part of the global Bata Shoe Organisation and claims to be the largest retailer and leading manufacturer of footwear in India, with numerous factories and manufacturing units as well as approximately 1400 retail stores operating in India. Their factory at Batanagar is India’s first shoe manufacturing unit to receive the ISO 9001 certification in the year
1993.
3. During the course of their business in early 1970’s, Plaintiff adopted the subject marks, which were used independently as well as in conjunction with each other. The plaint, at paragraph No. 9, sets out registration details of subject marks in respect of various goods and services. Plaintiff has generated over Rs.480 crores from the sale of products under the subject marks, with expenditure on publicity ranging to around Rs.77 crores in
2018. Subject marks have also been promoted by well-known sporting personalities such as Mr. Kapil Dev, Mr. Sachin Tendulkar and Ms. Smriti Mandhana.
4. Plaintiff claims that by virtue of the several multi-class registrations of subject marks subsisting under their name, unauthorised adoption or use of any other mark confusingly or deceptively similar thereto would amount to infringement of Plaintiff’s registered trademarks and is thus liable to be restrained under the provisions of the Trade Marks Act, 1999. Cause of Action
5. In January 2020, Plaintiff contends that it became aware of sale of duplicate footwear under its registered marks – “POWER” and “ ” in some weekly markets of Delhi, such as the Friday market in R.K. Puram, New Delhi. Thereafter, Plaintiff conducted market enquiries which revealed that Defendants were dealing in counterfeit goods, which either bore the Plaintiff’s registered marks or “PAWER” mark [hereinafter, “impugned mark”], giving an impression that said goods were manufactured by Plaintiff. Their representatives procured samples of infringing goods from such markets and on further enquiry as to the source of such goods, they learnt about Defendant – M/s DVS Shoe Factory, which was manufacturing and selling the counterfeit products in the market, and also through websites like www.indiamart.com. Noticing this, Plaintiff’s representatives placed an order from Defendant’s shop for twelve pieces of footwear under the impugned mark. The copies of invoices proving the sale have also been placed on record.
6. In above circumstances, Plaintiff seeks protection of its statutory and common law rights asserting that Defendant’s adoption of the impugned mark depicts a malafide intention to mislead the public, and take advantage of Plaintiff’s goodwill. Proceedings in the suit
7. On 19th February, 2020, finding the competing marks to be visually, phonetically and structurally identical, an ex-parte ad-interim injunction was granted in favour of Plaintiff and against Defendant, restraining Defendant from manufacturing, selling, offering for sale or otherwise dealing in goods bearing the subject marks or the impugned mark “PAWER” or any other mark identical or deceptively similar to the subject marks.
8. Vide the same order, the Court also appointed a Local Commissioner to visit the premises of the Defendant. The Local Commissioner executed the commission on 03rd March, 2020,[1] and seized the infringing products, which were released to Defendant on superdari. The inventory sheet annexed with Local Commissioner’s report, records seizure of the following: S No.
TYPE OF GOODS NO.
OF GOODS
1. ‘POWER’ Sport Shoes (featuring work mark + logo) x12 (pairs)
2. ‘POWER’ Sport Shoes (featuring word mark + logo) x13 (pairs)
3. Stickers to be affixed on shoes with ‘POWER’ (3.[5] inches thick, with word mark + logo) x[1] Roll with approximately 10,000 stickers
4. Sole with ‘POWER’ (bottom soles with logo and word mark) x100
5. Sole with ‘POWER’ (bottom soles with logo and x100
6. Sole with ‘POWER’ (bottom soles with logo and x33
9. On 01st September, 2022, Defendant appeared, but failed to file their written statement within the condonable time period provided under the Code of Civil Procedure, 1908 [“CPC”], as applicable to commercial suits. It appears that inadvertently, Local Commissioner’s report mentions 03rd February, 2020, the same was executed on 03rd March, 2020 (as per ‘On The Spot Proceedings’). Thus, their right file a written statement was closed, and both parties were referred to Delhi High Court Mediation and Conciliation Centre. Unfortunately, no settlement has come through.
10. Ms. Rhea Dube, counsel for Plaintiff, states that since Defendant has not filed a written statement and there is sufficient proof of infringement, as discernible from the report of the Local Commissioner, the Court can proceed to pass a judgment against the Defendant. Analysis
11. The Court has considered the afore-noted and the material placed on record. A comparison of the rival products is as follows: Plaintiff’s products Defendant’s products
12. Photograph of goods seized by Local Commissioner is as under:
13. From a perusal of the pictures reproduced in the plaint as also the Local Commissioner’s Reports, it is evident that impugned products bear Plaintiff’s registered “POWER” and “ ” marks, without express authorisation from the Plaintiff. The parties are engaged in the same business, for same products, which is conducted through same trade channels. On comparison of the rival products, no noticeable differences are discernible. An average consumer, intending to purchase Plaintiff’s goods, would be misled into buying Defendant’s counterfeit products, which would in turn, result in dilution of Plaintiff‘s goodwill and reputation and violation of its statutory rights emanating from registration of the subject marks.
14. Plaintiff’s case is further supplemented by the substantial volume of infringing goods seized by the Local Commissioner from the Defendant’s premises, details whereof are set out hereinabove. This clearly demonstrates that Defendant is indulging in sale and distribution of counterfeit goods of Plaintiff’s “POWER” / “ ” products. Moreover, stickers with subject marks found at Defendant’s premises, in absence of any explanation, only indicate Defendant’s intention to paste the stickers on counterfeit goods manufactured by them or their representative. Thus, a clear case of passing off Plaintiff’s marks is made out. There is likelihood of confusion and deception; use of subject marks by Defendant is bound to cause palpable losses, harm and injury to the Plaintiff as also the public.
15. As already noted, Defendant was actively participating in the proceedings and parties even attempted mediation. However, they chose not to contest the suit, and their right to file a written statement has also been closed. Under Order VIII Rule 10 of CPC, the Court is empowered to decide the suit on the basis of pleadings and Local Commissioner’s report, which can also be read in evidence as per Order XXVI Rule 10(2) of the CPC. Considering the facts of the present case, the Court is of the view that no exparte evidence is required to be led. Therefore, the present suit is decreed under Order VIII Rule 10 read with Order XIII-A of the CPC, as applicable to commercial suits, and Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022, as follows: i. The suit is decreed in favour of the Plaintiff and against the Defendant terms of prayers (a) to (d) and (f) mentioned in paragraph No. 44 of the plaint. ii. The goods siezed by the Local Commissioner, which are lying on superdari with Defendant, details whereof are recorded in the Report of Local Commissioner dated 03rd March, 2020 (as reproduced hereinabove) are directed to be handed over to counsel for Plaintiff and/or authorised representative for Plaintiff, forthwith. In the event it is possible to remove the impugned “PAWER” mark/ label and Plaintiff’s “POWER” and “ ” marks from the counterfeit goods, the same be removed and donated by the Plaintiff to the Blind Relief Association, Delhi [address: Lala Lajpat Rai Road (Lal Bahadur Shastri Marg) near the Oberoi Hotel, New Delhi- 110003]. However, if removal of impugned marks from the footwear is impracticable, said goods shall be destroyed by Plaintiff’s representative(s), in compliance with extant rules/regulations. iii. As regards damages, the Court is of the opinion that present is not a case of innocent adoption, especially since Defendant chose not to put forth any defence and maintained silence, which can only be indicative of their guilt. Relying on the judgement in Philip Morris Products S.A. & Anr v. Sameer & Ors.[2] and after making a reasonable assessment of damags on the basis of the volume of seizure made, as well as the nature of infringing activities, nominal damages to the tune of Rs. 2,00,000/- are awarded in favour of the Plaintiff and against the Defendant.
16. Since Plaintiff has incurred costs for executing the commission and also bore the court fee, in view of the judgement of the Supreme Court in Uflex Ltd. v Government of Tamil Naidu,[3] as well as in terms of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules,
2018, read with Delhi High Court Intellectual Property Division Rules, 2022, Plainitff is entitled to actual costs, recoverable from the Defendant. Plaintiff shall file their bill of costs in terms of Rule 5 of Chapter XXIII of Delhi High Court (Original Side) Rules, 2018 on or before 30th March, 2023. As and when the same is filed, the matter will be listed before the Taxing Officer for computation of costs.
17. Suit is decreed in above terms. Registry is directed to draw up the decree sheet.
18. Suit and all pending applications are disposed of.