KLEENOIL FILTRATION INDIA PVT LTD v. UDIT KHATRI & ORS.

Delhi High Court · 09 Jan 2023 · 2023:DHC:187

C. Hari Shankar

CS(COMM) 72/2022

civil appeal_dismissed

AI Summary

The Delhi High Court decreed the plaintiff's suit for trademark infringement and passing off against defendants who failed to contest, granting permanent injunctions restraining use of the marks "KLEENOIL" and "CLEANOIL" and dealing in counterfeit products.

Full Text

Neutral Citation Number : 2023/DHC/000187

CS(COMM) 72/2022
HIGH COURT OF DELHI
CS(COMM) 72/2022 & I.A. 1590/2022, I.A. 1673/2022
KLEENOIL FILTRATION INDIA PVT LTD ..... Plaintiff
Through: Ms. Nancy Roy, Adv.

VERSUS

UDIT KHATRI & ORS. .... Defendants
Through: None

CORAM:

HON'BLE MR. JUSTICE C.HARI SHANKAR

JUDGMENT

(ORAL)
09.01.2023

1. Summons, in the present suit, were issued by this Court on 31st January 2022. Despite service, the defendants have remained absent and have chosen not to file any written statement or response either to the suit or to the interlocutory applications filed therein.

2. In the circumstances, Ms. Nancy Roy, learned Counsel for the plaintiff, seeks that the suit be decreed under Order VIII Rule 10 of the Code of Civil Procedure, 1908 (CPC).

3. By my order dated 5th January 2023, I have held that it is permissible for the court to, in an appropriate case, decree the suit on the basis of the averments in the plaint, on perusal of the plaint, the court does not find any issue on which an affidavit by way of evidence should be directed to be filed and which may appear to be contested.

4. Ms. Nancy Roy submits that as no such issue is involved in the present case, the suit may be decreed in terms of the prayers contained therein.

5. The plaintiff holds valid registrations of the marks in Class 12 w.e.f. 2nd April 1990 and in Class 7 w.e.f. 8th March 1995. The registrations are stated to be valid and subsisting as on date. The registration is in respect of oil filtration equipment. The photographs of the plaintiffs‟ product bearing the registered trade mark of the plaintiff are provided in the plaint thus:

6. The plaint also asserts that the plaintiff‟s goodwill in the mark has been incrementally increasing over a period of time. The sales figures relating to sales of the plaintiffs‟ products bearing the plaintiffs‟ mark, in India, during the period 2010 to 2020 have been provided, in para 13 of the plaint, thus: Years Sales Figures (in INR) 2010-2011 2,21,41,217.14 2011-2012 2,54,28,979. 77 2012-2013 2,61,37,080.01 2013-2014 3,28,51,700.50 2014-2015 3,92,13,033.40 2015-2016 3,58,60,065.16 2016-2017 4,57,88,487.83 2017-2018 4,44,72,429.93 2018-2019 6,25, 71, 07.71 2019-2020 6,13,49,575.63

7. The plaintiff also claims to have been incurring considerable amounts towards promotional and advertisement of its product, to the extent that, in 2019-20, expenses incurred on this score were to the tune of ₹ 4,21,457. Various new products, using the plaintiff‟s registered mark, have been launched from time to time, as per the assertions in the plaint.

8. The plaint also sets out various other encomiums and commendations that the plaintiff have, over a period of time, been awarded.

9. The defendant, it is alleged, is distributing and selling branded oil filter cartridges, using the brand “KLEENOIL”. It is also alleged that Defendant 3 is, inter alia, importing counterfeit “KLEENOIL” branded oil filtration machines and cartridges, which it supplied to Defendants 1 and 2.

10. The plaint alleges that Defendant 1, who was a former employee of the plaintiff, was seeking to capitalise on the plaintiff‟s goodwill by manufacturing and marketing products similar to those of the plaintiff, under a phonetically deceptive mark “CLEANOIL”. Comparative photographs of the plaintiff‟s product and the counterfeit product being sold by Defendant 1 using the “KLEENOIL” mark of the plaintiff are also provided, in para 51 of the plaint, thus:

11. The plaint refers to various other aspects in which the defendants are seeking to imitate the plaintiffs and convey an impression that their products are the products of the plaintiffs.

12. In these circumstances, the plaintiff has approached this Court, seeking (i) a permanent junction, restraining the defendant from manufacturing, selling, offering for sale, marketing, exporting, importing, supplying, distributing, labelling, packaging or otherwise dealing in any manner with any product bearing the word mark “KLEENOIL” or the mark, the logo “ ” either on any physical article or in any promotional material including advertisements, online or offline, (ii) manufacturing, selling, offering for sale, marketing, exporting, importing, supplying, distributing, or otherwise dealing with oil filter cartridges or any other product bearing the mark “CLEANOIL” or any other mark which is phonetically or otherwise similar to the plaintiff‟s registered “KLEENOIL” mark, apart from damages and costs.

13. Summons were issued in this suit on 31st January 2022. There has, however, been no appearance on behalf of the defendants. Nor has any written statement been filed on behalf of the defendants to the suit.

14. The right of the defendants to file written statement was closed on 10th November 2022.

15. Having heard learned Counsel and perused the material on record, it is clear that the defendants are indeed guilty both of (i) infringing the plaintiff‟s registered “KLEENOIL” mark, by using the unregistered “CLEANOIL” mark for identical goods and of (ii) dealing in counterfeit products of the plaintiff under the “KLEENOIL” mark.

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16. The averments in the plaint having not been traversed by way of any written statement, this is a case in which the plaint straightaway be decreed under Order VIII Rule 10 of the CPC.

17. The prayer clause in the plaint reads thus: “IN THE PREMISES STATED ABOVE, IT IS THEREFORE,MOST RESPECTFULLY PRAYED THAT, THIS HON'BLECOURT MAY BE PLEASED TO GRANT THE

FOLLOWINGRELIEFS TO THE PLAINTIFF-

A. The Defendants, their directors, group companies, principals, partners, manufacturers, sellers, retailers, wholesalers, dealers, officers, importers, exporters, employees, agents, distributors, suppliers, affiliates, subsidiaries, franchisees, licensees, representatives, and assigns be restrained by a permanent injunction from: i. Manufacturing or authorizing the manufacture, selling, offering for sale, marketing, exporting, importing, retailing, supplying, distributing, exhibiting, labelling, packaging, advertising, promoting, displaying, stocking, storing, dealing in and/or using, in any manner whatsoever, the counterfeit and impugned products and impugned oil filter cartridges, as depicted in Paragraph Nos. 2, 36, 50, 51, 55 and 57 of the Plaint, or any other product bearing the marks KLEENOIL and, or any other mark or logo, which is identical or deceptively and confusingly similar to the Plaintiffs earlier trade marks KLEENOIL and, also as mentioned under Paragraph No.4, 7 and 12 of the Plaint, either as a trade mark or part of a trade mark, or as a label or part of a label, or as a logo or part of a logo, or in any other manner whatsoever, in relation to any goods or services, or in relation to any promotional, marketing or advertising material or any other material used or intended to be used for labelling or packaging or for advertising any goods or services, thereby amounting to passing off the Defendants „counterfeit and impugned products as that of the Plaintiffs product KLEENOIL. ii. Manufacturing or authorizing the manufacture, selling, offering any manner whatsoever, the counterfeit and impugned products and impugned oil filter cartridges, as depicted in Paragraph Nos. 2, 36, 50, 51, 55 and 57 of the Plaint, or any other product bearing the marks KLEENOIL and, or any other mark or logo, which is identical or deceptively and confusingly similar to the Plaintiffs earlier trade marks KLEENOIL and, also as mentioned under Paragraph No.7 of the Plaint, either as a trade mark or part of a trademark, or as a label or part of a label, or as a logo or part of a logo, or in any other manner whatsoever, in relation to any goods or services, or in relation to any promotional,marketing or advertising material or any other material used or intended to be used for labelling or packaging or for advertising any goods or services, thereby amounting to infringement of the Plaintiffs registered trade marks. iii. Manufacturing or authorizing the manufacture, selling, offering any manner whatsoever, the impugned products or impugned oil filter cartridges bearing impugned marks CLEANOIL and CLEANOIL Equivalent, or any other product bearing the impugned marks or any other mark or logo, which is identical or deceptively and confusingly similar to the Plaintiffs earlier trade marks KLEENOIL and also as mentioned under Paragraph No.2, 36, 50, 51, 55 and 57 of the Plaint, either as a trademark or part of a trade mark, or as a label or part of a label, or as a logo or part of a logo, or in any other manner whatsoever, in relation to any goods or services, or in relation to any promotional, marketing or advertising material or any other material used or intended to be used for labelling or packaging or for advertising any goods or services, thereby amounting to infringement of the Plaintiffs registered trade marks, and passing off the Defendants' impugned products as that of the Plaintiffs product KLEENOIL. iv. Using, or attempting to use, or asserting any right to use, or claiming proprietorship, or applying to register any mark which is identical or deceptively and confusingly similar to the Plaintiffs earlier trade marks KLEEN OIL and. v. Disposing off or dealing with its assets, including the properties mentioned in the cause title of the Plaint, in a manner which may adversely affect the Plaintiffs ability to recover damages, costs or other pecuniary remedies that may be finally awarded to the Plaintiff.

B. The Defendants, their directors, group companies, principals, partners, manufacturers, sellers, retailers, wholesalers, dealers, officers, importers, exporters, employees, agents, distributors, suppliers, affiliates, subsidiaries, franchisees, licensees, representatives, and assigns be directed by a decree of mandatory injunction: i. Make a full and fair disclosure of all stocks of the counterfeit and impugned products - finished or unfinished, which are inter alia manufactured, distributed, sold, imported and/or exported by the Defendants as well as of oil filters, cartridges, cartridges rolls, bands, discs, labels, stickers, wrappers, packages, boxes, cartons, stationery, posters, brochures, business cards, business envelopes, letterheads, cartons, publicity material, pamphlets, hoardings, signboards, name boards, on-pack advertising, packaging and promotional material, and/or any other material, whatsoever, bearing the impugned marks or any other mark or label which is identical or deceptively and confusingly similar to the Plaintiffs earlier trade marks; and deliver/surrender the same, to the Plaintiff or its attorneys or nominated representative(s)for destruction. ii. Recall all the counterfeit and impugned products are inter alia manufactured, distributed, sold, imported and/or exported by the Defendants and/or any marketing, promotional and advertising materials and/or any other goods or material, whatsoever, bearing the impugned marks or any other mark which is identical or deceptively and confusingly similar to the Plaintiffs earlier trade marks from the physical and online marketplace; and deliver/surrender the same, to the Plaintiff or its attorneys or nominated representative(s) for destruction. iii. Remove all advertisement and promotional material of the counterfeit/impugned products, from all forums of print and digital media including but not limited to social media websites, ecommerce platforms and website of the Defendants. iv. Make a full and fair disclosure on oath, to the Plaintiff ofany trade mark or copyright application(s) or registration(s)for the impugned marks or any other mark or label which is identical or deceptively or confusingly similar to the Plaintiffs intellectual properties and take immediate steps to withdraw such application(s) and/or surrender such registration(s). v. Make a full and fair disclosure on oath, to the Plaintiff of the full details such as constitution, names and addresses of the importer(s) or party(s) which are supplying the counterfeit and impugned products to the Defendants in India. vi. Make a full and fair disclosure on oath, to the Plaintiff of the full details such as constitution, names and addresses of any other person(s) or party(s) enabling, procuring, aiding or assisting or otherwise involved in the inter alia manufacturing, marketing, distributing, selling, exporting, importing, supplying, packaging and labelling of the impugned products or connected with the Defendants' offending activities. vii. Make a full and fair disclosure on oath, to the Plaintiff, and also provide a complete discovery of any and all documents (including packaging) and information relating to all sales and transactions concerning inter alia manufacture, import, marketing, distribution and sale of the counterfeit and impugned products, including full particulars of all party(s) or person (s) from whom the Defendants have sourced or purchased or imported or to whom the Defendants have inter alia sold or exported the counterfeit and impugned products. viii. Make a full and fair disclosure on oath, to the Plaintiff, of all the banking records, phone records, electronic mails which are in the name of the Defendants and/or are connected with the Defendants or any such records which the Plaintiff may require to examine in order to identify and/or obtain particulars of the parties connected with the inter alia manufacture, sale, distribution, marketing, import, export of the counterfeit and impugned products. ix. Make a full and fair disclosure on oath, to the Plaintiff of the full and complete address details of the manufacturing units, depots, warehouses, storage units, printing units, godowns or factories or any other locations, that is owned and/or being operated, either directly or indirectly by the Defendants, where the counterfeit and impugned products are manufactured, labelled, packaged, stocked and/or stored by the Defendants. x. Make a full and fair disclosure on oath, to the Plaintiff, onoath the details of the procedure, manufacturing process, involved and/or used by the Defendants and/or by anyother party connected therewith, for inter alia manufacture, sale, distribution, marketing, import, export of counterfeit and impugned products.

C. The Defendants be called upon to allow inspection of its accounts to assist in ascertaining the amount of profits made by them and/or damages including exemplary and penal damages suffered by the Plaintiff on account of the Defendants' offending activities and a decree is passed in favour of the Plaintiff and against the Defendants for the amount found due.

D. Declare and pronounce the Plaintiffs earlier trade marks

E. Costs of the suit be awarded to the Plaintiff; and

F. Any other relief which the Hon'ble Court deems proper in the facts and circumstances of the case be allowed in favor of the Plaintiff and against the Defendants.”

18. The suit accordingly stands decreed in terms of prayers (i) and

(iii) in the plaint.

19. Learned Counsel for the plaintiff has, on instructions, undertaken not to press for damages but presses for costs. The plaintiff would be entitled to actual costs in the suit, for which purpose the plaintiff may apply for costs before the Taxation Officer within one week from today. For the said purpose, the matter would be listed before the concerned Taxation Officer on 19th January 2023.

20. The suit stands decreed in the aforesaid terms. Let a decreesheet be drawn up by the Registry. Miscellaneous applications also stand disposed of.

C.HARI SHANKAR, J JANUARY 9, 2023 rb/dsn

KLEENOIL FILTRATION INDIA PVT LTD v. UDIT KHATRI & ORS.

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