Full Text
HIGH COURT OF DELHI
Date of Decision: 16th January, 2023.
M/S EUREKA FORBES LIMITED ..... Plaintiff
Through: Ms. Rajeshwari H., Mr. Mukund Cherukuri and Ms. Sugandh Shahi, Advocates.
Through: Defendant proceeded ex-parte vide order dated 30.01.2015.
JUDGMENT
1. Plaintiff, a company engaged inter alia in the field of water purification systems, is registered proprietor of trademark "AquaSure" (or AquaSure in conjunction with addendum words) under several classes including but not limited to Class 32 of the Trade Marks Act, 1999.
2. Plaintiff is aggrieved by Defendant's manufacturing and marketing of packaged drinking water with the brand name 'AquaSure', 'AQUASURE', 'AQUA SURE' and seeks permanent and mandatory injunction restraining infringement of Plaintiff’s registered trademarks and copyright, and passing off, apart from rendition of accounts, damages, delivery-up, and compensation among other ancillary reliefs.
DESCRIPTION OF PARTIES
3. Plaintiff’ is a specialist in various water technologies in the field of water purification systems, including, but not limited to Ultra Violet (UV) and Reverse Osmosis (RO), sold under the brand names 'Aquaguard', 'AquaSure' and 'Forbes'. Plaintiff is a market leader across India and accounts for more than 70% market share in the water purification segment and operates across 135 cities in India while having further expanded into 1515 towns and 400 smaller towns through Franchise Direct Operations (FDO) with 13,425 dealers. Plaintiff's goodwill and reputation of its name and products has been achieved over the course of the last four decades. On account of its long, continuous and extensive use, the public as well as members of the trade identify and associate the mark 'AquaSure' exclusively with Plaintiff’s products.
4. Plaintiff and its fully owned subsidiary companies have been granted registration of trademark 'AquaSure' (or AquaSure in conjunction with addendum words) [hereinafter "AquaSure Marks"] under several classes which are renewed periodically in favour of Plaintiff. Details of trademark registrations are provided at page 9 of the plaint. Plaintiff also has copyright registrations which are enumerated at page 11 of the plaint.
5. Registration of afore-said trademarks and copyrights gives Plaintiff the exclusive right to use, apply, produce and sell products with all said subsisting trademarks and copyrights, and no one else. Plaintiff has generated wide publicity for its brands, 'Aquaguard', 'Forbes', 'AquaSure' which now hold considerable reputation and goodwill in the market. Plaintiff has been bearing substantial expenditure towards advertisement costs on a year on year basis, evidencing consistent efforts being put forth to continuously enhance the goodwill and reputation of its marks and products. Details of spends in advertising and promotional expenses on Plaintiff's products are provided at page 14 of the plaint, which totaled to Rs. 19,91,71,121 in 2008-2009 across mediums of print and TV/ radio.
6. Defendant has its head office at B-18/7, Butibori, MIDC, Nagpur, Maharashtra - 440 108 [hereinafter ‘Defendant’s premises’] and is engaged in the manufacturing and marketing of packaged drinking water. Defendant had filed an application for registration of a device mark ' ' containing the word 'AquaSure' under Class 32 and is using the brand names 'AquaSure' and 'AquaSureTM '. INTERIM ORDERS & LOCAL COMMISSIONER’S REPORT
7. Ex-parte ad-interim injunction was granted in favour of Plaintiff on 27th August, 2010, in the following terms: “…the defendant, its proprietors, directors, distributors, dealers, advertisers, agents, stockists, representatives, successors-in-business, assigns or anyone claiming through or under them are hereby restrained from using the mark “AquaSure”, “Aqua Sure”, “AQUASURE”, “Aquasure” and/or any other mark or label, which is identical/deceptively similar to the plaintiff’s trademark “AquaSure”, till the next date of hearing.”
8. Vide afore-said order, a Local Commissioner was appointed, who visited the Defendant’s premises and filed a report on 18th September, 2010 recording that infringing goods bearing Plaintiff’s mark ‘AquaSure’ were found at Defendant’s premises. Post inventorizing and sealing of said goods, the same were returned to Defendant on superdari.
9. Although Defendant filed its Written Statement on 10th November, 2010, however it stopped participating in the proceedings and failed to file an affidavit of admission/denial in respect of Plaintiff’s documents, despite multiple opportunities, leading to closure of their right on 21st November
2014. Subsequently, Defendant was proceeded ex-parte in terms of order dated 30th January, 2015. Plaintiff thereafter filed ex-parte evidence by way of affidavit Ex.PW-l/A and exhibited documents Ex.PW-1/1 to Ex.PW-1/32. DEFENDANTS’ CONTENTIONS
10. Defendant has contested the suit on following grounds:
10.1. Defendant bonafidely conceived and adopted its mark and has been continuously using the same since 01st April, 2008.
10.2. Plaintiff failed to disclose as to how it can assert any exclusive rights in the use of the expression 'AQUA' and/or 'AQUA SURE', where such term has been in widespread commercial use by various third parties in trade and in public domain. The expression 'AQUA SURE' per se, has descriptive connotations and no exclusive rights over the same can be claimed by Plaintiff and neither has any such right been granted to Plaintiff.
10.3. Plaintiff has deliberately concealed a number of its registrations for the mark 'AQUASURE' which have been advertised and/or registered by 'AQUASURE' has been disclaimed by Plaintiff themselves whereas Plaintiff is claiming an exclusive right on the same.
10.4. Plaintiff has failed to disclose or make out any elements of passingoff so as to sustain a cause of action against Defendant.
10.5. Comparison of Defendant's and Plaintiff's labels reveal that there is no similarity between the artistic representations and the same are completely different.
ANALYSIS
11. Plaintiff has valid and subsisting registrations in respect of the trademarks set out in this order at paragraph 4, and by virtue of Section 28 of the Trade Marks Act, 1999, it has the exclusive right to use the marks in relation to the goods in respect of which marks have been registered.
12. In July 2010, Plaintiff discovered that Defendant was engaged in the sale of packaged water bottles bearing the mark “AquaSure”, which is alleged to be deceptively similar to Plaintiff’s marks and infringing upon its registered trademarks as also amounting to passing off. Plaintiff’s marks and Defendant's label have been reproduced below:
13. Court is also informed that Defendant’s application for registration of device mark viz. ‘ ’ in Class 32, under application number 1873841 stands refused by Registrar of Trademarks.
14. Defendant has neither controverted Plaintiff’s evidence nor lead any evidence to prove their defence. They have also not produced any documents to substantiate their stand in the Written Statement. Nonetheless, the Court has examined the defences raised in the Written Statement. Essentially, it is stated that Plaintiff concealed disclaimers imposed by Plaintiff, which entails that Plaintiff cannot claim any rights over the term 'AQUASURE' per se. While there is merit in Defendant’s contention that in absence of exclusive rights over the term 'AQUASURE', especially in Class 32 which pertains to mineral and aerated waters et al, infringement is not made out. Nonetheless, Plaintiff can succeed on the claim of passing off as the disclaimer does not affect Plaintiff’s right to seek other remedies under law as held by the Supreme Court in Registrar Of Trade Marks v. Ashok Chandra Rakhit Ltd.[1]
15. To establish the tort of passing off, Plaintiff must show that they have established goodwill or reputation in their product or service, and there must be misrepresentation on part of Defendant leading to confusion amongst the consumers as to origin of the goods. Lastly, Plaintiff must also prove that they have suffered loss or damage as a result of such misrepresentation. (1955) 2 SCR 252
16. The registration of AquaSure Marks granted in favour of Plaintiff has been proved under Exhibits PW-1/1 to PW-1/19. Plaintiff’s witness has proved documents that show expenditure incurred for advertising and promotion of Plaintiff’s products with “AquaSure” marks and other copyright and trademark registrations in Plaintiff’s favour, which establish the goodwill of Plaintiff’s “AquaSure” marks. Plaintiff is the prior user of the trade mark “AquaSure”, as evidenced by its trademark registrations, and has been selling products which are allied and cognate to the goods of the Defendant being water purification systems prior to the Defendant even entering the market.
17. The report of Local Commissioner filed on 18th September, 2010 proves misrepresentation on part of Plaintiff. It is settled legal position that the Local Commissioner’s report can be read in evidence in terms of Order XXVI Rule 10(2) of CPC.[2] Defendant has failed to adduce any explanation for adoption of its mark “AquaSure”. Plaintiff has registration in various classes and sells a wide range of products under the AquaSure Marks including allied and cognate goods. As noted, Plaintiff is the prior user of the AquaSure Marks. Further, in Defendant’s label, as extracted above, the uppercase ‘A’ and ‘S’ are being depicted in a stylised manner which is deceptively similar to Plaintiff’s marks, extracted above. The natural corollary to misrepresentation, is damage to the Plaintiff’s goodwill. In light of the aforesaid and, long and uninterrupted use of the mark “AquaSure” by Plaintiff, this Court finds that Defendant’s usage of Plaintiff’s marks amounts to passing off. Plaintiff is thus entitled to restrain Defendant’s activities by way of a decree of permanent injunction. In view of the above and considering the judgements of this Court in Disney Enterprises Inc. and Anr. v. Balraj Muttneja and Ors.,[3]
KG. v. Jaikara Apparels and Ors.4, the Court is of the opinion that Plaintiff has made out a case for grant of partial decree of permanent and mandatory injunction.
18. Plaintiff has further alleged that the packaging used by the Defendant for its packaged water bottles is infringing its copyright registrations. Provisions of the Copyright Act, 1957, do not envisage copyright protection for a word per se and it can only be for the artistic manner in which the word is written. In order to determine if there is infringement of copyright, the artistic works of the Plaintiff and Defendant have to be compared. The comparison is as follows: PLAINTIFF’S ARTISTIC WORKS DEFENDANT’S LABELS ML Brother LLP v. Maheshkumar Bhuralal Tanna, 2022 SCC OnLine Del 1452. CS(OS) 3466/2012 dated 20th February, 2014. 210 (2014) DLT 381.
19. A perusal of Plaintiff’s artistic works and Defendant’s label/artistic work reveals that there is no similarity between the two and Plaintiff has failed to establish a claim for infringement of copyright.
20. It is also directed that goods handed over to Defendant on superdari by the Local Commissioner, details whereof are recorded in their Report filed on 18th September, 2010, are directed to be destroyed by Defendant forthwith, in the presence of a Plaintiff’s representative.
21. Plaintiff is not entitled to the reliefs given under prayers (a)(i) to (iii) as Plaintiff does not have registration and exclusive right in the mark “AquaSure” and also because Plaintiff has failed to make out a case for copyright infringement.
22. Ms. Rajeswari, counsel for Plaintiff, on instructions, stated that Plaintiff does not wish to press for the relief of damages. In view of the foregoing, facts and circumstances and law discussed above, the suit is decreed in favour of Plaintiff and against the Defendant, in terms of paragraphs (b) to (c) and (g) of the Prayer clause of the plaint.
23. Suit is decreed in above terms. No order as to costs. Registry is directed to draw up the decree sheet.
24. Suit and pending applications are accordingly disposed of.