Full Text
HIGH COURT OF DELHI
Date of Decision: 10th January, 2023
GIAN CHAND AGGARWAL ..... Plaintiff
Through: Mr. Umesh Mishra, Advocate
Through: None.
Defendants proceeded ex-parte vide order dated 04th August, 2022.
JUDGMENT
1. The Plaintiff has filed the instant suit seeking permanent injunction restraining Defendants from infringement and passing off of its registered trademarks “ ”/ “ ” and copyright in artistic work/ label viz. “ ”,[1] and other ancillary reliefs of delivery up, damages and costs. THE PLAINTIFF’S CASE
2. The Plaintiff is engaged in the business of producing and marketing all grades of Plaster of Paris [“P.O.P”] under its marks “AGGARWAL PLASTER”/ “ ”/ “ ”, which was conceived and adopted by it in the year 2008 and has been in continuous commercial use ever since.
3. Plaintiff first applied for registration of its mark “ ” on 07th July, 2010, however, due to error on the part of trademark attorney in entering the user date, said application was abandoned.[2] Hereinafter, “Plaintiff’s marks” and “Plaintiff’s copyright”, respectively. Trademark Application No.1990304. Thereafter, Plaintiff preferred another application [No. 2012484] on 23rd August, 2010 for said mark under class 19, which was allowed and the mark was registered in Plaintiff’s favour with the condition that goods under the mark will be sold in the state of Rajasthan only. Under Trademark Application No. 2912500, Plaintiff also secured registration of “ ” mark in class 19 in respect of P.O.P, ready-mix plaster, gypsum compound, gypsum tiles, w.e.f. 28th February, 2015. Goods under this mark are sold across India, including Delhi.
4. Since its inception, Plaintiff has maintained highest standards in manufacturing, marketing and selling of superior quality efficient goods under Plaintiff’s marks, resulting in goodwill and reputation among the consumers and members of the trade. Increased demand of Plaintiff’s products is evident from its annual sales figures for the financial years 2008-09 to 2019-20, which run into several crores of rupees. Plaintiff has also incurred substantial expenses for publicity and advertisement of its products via print and electronic media. It also has a strong online presence through its website, Justdial.com and e-commerce websites such as Indiamart. Plaintiff’s marks have acquired a secondary meaning, denoting that the goods are manufactured and sold exclusively by Plaintiff, and none else. DEFENDANTS’ IMPUGNED ACTIVITIES
5. In the second week of October, 2020, Plaintiff was informed by its salesperson that Defendant No. 1 – HD Enterprises manufactures and trades in identical class of goods under the mark and packaging “ ” and “ ” [hereinafter, “impugned marks”] in Delhi, through its dealer / distributor M/s Dinesh Traders (Defendant No. 2). Upon further enquiry, it was found that on 04th October, 2019, Defendant No. 1 preferred application No. 4312556 for registration of the mark “SA SUPER AGGARWAL GYPSUM PLASTER WITH DEVICE”/ “ ” mark in the same class i.e., class 19 on a proposed-to-be-used basis. Said application has been opposed by Plaintiff before the Trademarks Registry.
6. Defendants are intentionally and fraudulently selling goods under impugned marks, which are an obvious imitation of Plaintiff’s marks, and the same is likely to mislead the public into believing that the goods originate from Plaintiff. Defendants are well-aware of Plaintiff’s goodwill and must be restrained from violating the Plaintiff’s vested rights in its registered marks.
COURT ORDERS AND LOCAL COMMISSIONERS’ REPORTS
7. On 12th November, 2020, an ex-parte ad-interim injunction was granted in favour of the Plaintiff, as follows:
8. Two Local Commissioners were appointed to visit Defendants’ premises for seizing goods that are deceptively similar to that of Plaintiff’s. They executed the commission on 21st November, 2020 and seized - (a) 114 bags of gypsum plaster weighing 25 kilograms each from the premises of Defendant No. 1, that bore the impugned marks and (b) 32 bags of POP, weighing 25 kilograms each, from the premises of Defendant No. 2, which too carried the impugned marks.[3]
9. Summons were served to Defendants in December, 2020. Although a written statement on behalf of Defendant No. 1 has been filed on 13th April, 2021, its counsel has not entered appearance since 27th May, 2022. For Defendant No. 2, no appearance has been recorded since 16th April, 2021. Accordingly, vide order dated 04th August, 2022, Defendants were proceeded exparte.
CONTENTIONS OF DEFENDANT NO. 1
10. In its written statement, Defendant No. 1 has raised following defences:
10.1. Defendant No. 1’s mark is entirely dissimilar to Plaintiff’s registered marks. Plaintiff has adopted colour combination of red and blue whereas Defendant No. 1 is using a combination of yellow and blue colours on its label/ device mark; Plaintiff’s brand name is only “AGGARWAL PLASTER” while Defendant No. 1’s is “SA SUPER AGGARWAL GYPSUM PLASTER WITH DEVICE”. The style of both marks is also different. It is settled law that a mark must be looked at as a whole and in the present case, mark of said Defendant cannot cause public confusion in any way.
10.2. The only commonality between the concerned marks is the word “AGGARWAL”, which is a common surname and Plaintiff cannot have any monopoly over the same. Reliance is placed on judgement of this Court in Prathiba M. Singh v. Singh and Associates.[4]
10.3. There are several marks registered in the same class, with “AGGARWAL” as suffix or prefix, as listed at page No. 6 of the As per Reports of Local Commissioners dated 05th January, 2021 and 08th January, 2021, respectively. Judgement dated 14th October, 2014 in CS(OS) 1173/2012. written statement. Reliance is placed on M/s Nandhini Deluxe v. M/s Karnataka Co-operative Milk Producers Federation Ltd.,[5] to contend that proprietor of a trademark cannot enjoy monopoly over the entire class of goods.
10.4. In SBL Ltd. v. Himalayan Drug Company,[6] it has been held that nobody can claim exclusive right over use of any word, abbreviation or acronym which has become publici juris.
10.5. Defendant No. 1 has been selling several goods falling under class 19 in the market since January, 2019 and has acquired substantial goodwill, reputation and distinctiveness among the consumers, as is evidenced by sales figure from January, 2019, which is approximately Rs. 2,92,282/-.
10.6. Plaintiff has its registered office in Rajasthan and thus, the Court lacks territorial jurisdiction to entertain the present suit. Jurisdiction has been invoked on a mere statement of Plaintiff’s salesperson that goods are being sold in Delhi, which is only to mislead the Court.
10.7. The impugned mark pertains specifically to ‘gypsum plaster’, while Plaintiff uses its marks in relation to P.O.P. There is thus, no likelihood of confusion.
ANALYSIS
11. The Court has considered the afore-noted contentions and analysed the competing marks.
12. The jurisdiction of this Court has been invoked as the impugned goods have been found to be sold by Defendant No. 1 through its distributor viz. Defendant No. 2, within the territory of Delhi. This assertion is also supplemented by seizure of 32 bags of impugned products by the Local Commissioner, from Defendant No. 2’s premises situated in New Delhi. Thus, cause of action has arisen partly in Delhi and this Court has the jurisdiction to entertain the present suit. That apart, Defendant No. 2 carries on business in Delhi, which fact endows the Court with territorial jurisdiction over the present case, in terms of Section 20 of the Code of Civil Procedure, 1908 [“CPC”].
13. For deciding the case on merits, a comparison chart of Plaintiff’s registered marks and impugned marks is provided below: Plaintiff’s registered marks Impugned marks
14. The impugned marks are evidently deceptively similar to Plaintiff’s registered marks. Notwithstanding the difference in colour scheme adopted by parties (i.e., red-blue by Plaintiff and yellow/ orange-blue by Defendants), the overall look and feel of impugned products is likely to cause public deception. The contention of Defendant No. 1 that its mark “SA सुपर अग्रवाल” is entirely different from Plaintiff’s “अग्रवाल”, does not find favour with the Court. Word “सुपर” is written above “अग्रवाल” in a small print, which, at first glance, may not be visible to the consumers. Likewise, “SA” is not placed prominently on the impugned marks and as such, is not sufficient to distinguish the two products. In fact, the dominant feature of the impugned mark is “अग्रवाल”, which is written in identical font style and size as Plaintiff’s. Further, placement of words “जिप्सम प्लास्टर” in a blue colourfilled rectangle box on the impugned product is imitative of Plaintiff’s positioning of “प्लास्टर” on its goods. Therefore, holistically, the impugned marks render a commercial impression that said products originate from Plaintiff and thus, infringe Plaintiff’s registered marks. Defendant No. 1’s defence that its marks are specific to gypsum plaster, while Plaintiff utilises its registered marks in respect of P.O.P is unmerited. Albeit, Plaintiff’s registration under Application No. 2012484 is for P.O.P to be sold solely in the State of Rajasthan and under Application No. 2912500 is in respect of P.O.P., ready-mix plaster, gypsum compound and gypsum tiles, gypsum plaster is an allied and cognate good, falling under the same class (class 19). Therefore, mention of ‘gypsum plaster’ on impugned mark does not absolve infringement of Plaintiff’s registered marks by Defendants, particularly when Plaintiff also sells gypsum plaster under similar packaging and its use predates use by Defendants. It is well settled that if Defendants have adopted the broad and essential features of Plaintiff’s registered marks, such as the overall get-up, packaging and lettering style, marked differences in broad colour scheme, words appearing thereon etc., become immaterial.[7]
15. Defendant No. 1’s allegation that Plaintiff is seeking to monopolise the surname “AGGARWAL” is misconceived. Plaintiff has not asserted exclusive rights over the word “AGGARWAL”, but has built its case on Defendant replicating the unique aesthetic and features of its registered device mark/ label. Thus, Defendant NO. 1’s reliance on the judgement of this Court in Prathiba M. Singh See: Parle Products (P) Ltd v. J.P. and Co., Mysore, (1972) 1 SCC 618 and Kaviraj Pandit Durga Dutt Sharma v. Navratana Pharmaceutical Laboratories, (1965) 1 SCR 737. (Supra) and list of formative marks of “AGGARWAL” surname registered in the same class is flawed and cannot sustain. In the case of Nandhini Deluxe (Supra), Respondent therein had challenged the registration of “NANDHINI DELUXE” in favour of the Appellant on the ground that same is deceptively similar to its “NANDINI” mark. The impugned registration was upheld by the Supreme Court noting that although there was phonetic similarity between the two, visually, the logos adopted by parties were altogether different and there were hardly any similarities when the marks were seen in totality. One of the key factors that swayed the Court in Appellant’s favour was that the marks were applied to different categories of goods and style of business of the parties were altogether different, thus, eliminating the risk of public confusion. The present case is distinguishable from said judgement since the competing marks are not only phonetically alike, but also resemble visually in a manner that would lead an average consumer to associate the goods of Defendant with the Plaintiff.
16. In SBL Limited (Supra), it was held that no person can claim exclusive right to use any word, abbreviation or acronym which has become publici juris. The test however, is to see whether the customers who purchase the concerned products would be guided by the use of such words or would ignore it and give emphasis to prefixes or suffixes or words used in association therewith. As discussed above, Defendants have adopted “AGGARWAL” with prefix “SA” and “SUPER”; however, the font and placement of the same is such that they become insignificant for consumers to ignore “AGGARWAL” and give emphasis to “SA” and “SUPER”, when viewing Defendants’ products.
17. Besides the afore-noted unsustainable contentions, Defendant NO. 1 has not raised any argument or controverted Plaintiff’s rights in its registered marks. In the written statement, there is a bald denial of Plaintiff’s goodwill and reputation, and unsubstantiated assertions of accumulation of goodwill equivalent to Plaintiff, by Defendant No. 1. Defendant No. 1’s use of impugned marks in January, 2019 is subsequent to Plaintiff, who has been continuously and commercially using its mark since 2008, as is evidenced from its invoices, bills and advertisement material. In view of the admissions made in the written statement qua use of the impugned marks, the Plaintiff is entitled to a judgement under Order XII Rule 6 of the CPC. The law is well-settled, admissions can be constructive and while scrutinising the pleadings, regard may be given to the facts and circumstances of the case. Since apart from the afore-noted contentions, Defendants have raised inconsequential objections that do not affect the root of the matter, invoking Order XII Rule 6 of the CPC and finding subsequent adoption of nearly identical mark by Defendant No. 1 to be dishonest and intended to ride on Plaintiff’s reputation, the Court is inclined to injunct the Defendants.[8]
18. Although Plaintiff is not to lead ex-parte evidence in terms of Order XXVI Rule 10(2) of CPC and the judgement in ML Brother LLP v. Maheshkumar Bhuralal Tanna, reports of Local Commissioners can be read into evidence.[9]
19. Following the judgements in Disney Enterpises Inc. & Anr. v. Balraj Muttneja and Ors.10 and S. Oliver Bernd Freier GMBH & CO. KG v. Jaikara Apparels and Ors.,11 there is no compelling reason to direct recording of oral ex-parte evidence. The Court is thus satisfied that present is a fit case for passing of a summary judgement under Order XIII-A of CPC, as amended by Commercial Courts, Commercial Division and Commercial Appellate Division of the High Court Act, 2015, read with Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022, which empower this Court to pass a summary judgment, without recording evidence, if it appears that the Defendants have no real prospect of defending the claim.
RELIEF
20. Following prayers are sought in the plaint: See: Delhi Jal Board v. Surendra P Malik, 2003 SCC OnLine Del 292, Col. (Retd.) Dalip Singh Sachar v. Major General (Retd.), Prabodh Chander Puri, 2007 SCC OnLine Del 728 and M/s Rajesh & Co. v. M/s Ravissant Pvt. Ltd., judgement dated 18th April, 2012 in CO.
APPEAL No. 35/2012.
210 (2014) DLT 381. 2013 (55) PTC 414 (Del).
21. Counsel for Plaintiff, on instructions, has stated that Plaintiff does not wish to press the claim for damages, and has prayed for a decree of permanent injunction and award of costs in Plaintiff’s favour.
22. Accordingly, the suit is decreed in favour of Plaintiff and against the Defendants, in terms of paragraph 33(a), (b), (d), (e) and (g) of the plaint.
23. The impugned goods handed over to the Defendants on superdari by the Local Commissioners, details whereof are recorded in the Local Commissioners’ Reports dated 05th January, 2021 and 08th January, 2021, are directed to be destroyed by the Defendants forthwith, in the presence of Plaintiff’s representative.
24. Plaintiff has deposited court fees and also incurred the expense of executing the commission, and thus in view of the judgment of the Supreme Court in Uflex Ltd. v. Government of Tamil Nadu,12 as well as the provision of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules, 2018 read with Delhi High Court Intellectual Property Division Rules, 2022, Plaintiff is entitled to actual costs, recoverable jointly and severally from Defendants. Plaintiff shall file its bill of costs in terms of Rule 5 of Chapter XXIII of the Delhi High Court (Original Side) Rules, 2018 on or before 15th March, 2023. As and when the same is filed, the matter will be listed before the Taxing Officer for computation of costs.
25. Suit is decreed in these terms. Registry is directed to draw up the decree sheet.
26. Suit and pending applications are accordingly disposed of SANJEEV NARULA, J JANUARY 10, 2023 nk (Corrected and released on 06th February, 2023)