Full Text
HIGH COURT OF DELHI
Date of Decision: 15th July, 2019
TATA SONS LTD. ..... Plaintiff
Through: Mr. Pravin Anand, Advocate with Mr. Akshay Agarwal and Mr. Achuttam, Advocates (M: 9899926591).
Through: Mr. Ashok Kotnala, Advocate for Contemnor No. 2 (M: 9599158309).
JUDGMENT
1. The present suit is for permanent injunction restraining infringement of registered trademarks, passing off, dilution and tarnishment of trademarks, damages, rendition of accounts, delivery up, etc. The suit has been filed by M/s Tata Sons Limited, which is now known as M/s Tata Sons Private Limited. The Plaintiff was established in 1917 and is the promoter and principal investment holding company of the House of TATA, which had a turnover of more than 100 billion US dollars in 2013-14. Tata is one of the most well-known brands of India and is engaged in the business of a wide range of goods and services including industrial core sectors, pioneering textiles, iron & steel, power, chemicals, hotels and automobile industries in India. It has also expanded into a large number of IT services including computer software, electronics, as also financial services. The trademark TATA is registered in favour of the Plaintiff in a large number of 2019:DHC:3365 classes including in Class 5.
2. Defendant No. 2, M/s Vardhman Chemicals, is owned by Mr. Prakash Yadav, the Defendant No. 1. He operates various shops under the name of Vardhman Chemicals. The said M/s Vardhman Chemicals used to distribute its products through M/s Tonic House - Defendant No.4. The grievance of the Plaintiff is that the Defendants started using the trademark TATAZYME and TATA GOLD for various agricultural products. An investigator had been deputed to investigate the activities of the Defendants and had submitted a report from which it is clear that the Defendants were using the marks TATA and TATA GOLD.
3. The Plaintiff had issued notice dated 24th August, 2009 to the Defendants, which was replied to vide letter dated 3rd September, 2009. Vide the said letter, Defendant No. 1 on his behalf and on behalf of Defendant No. 2 gave an undertaking that they would not use the mark TATAZYME in respect of its bio-products and that they would also change the packaging of the product. The relevant portion of the said letter reads as under:
4. Thus, it was agreed by Defendants No. 1 and 2 that they would not use the mark TATAZYME and also change the packaging. However, on a follow up enquiry, the Defendants were found to be using the trademarks TATAZYME and TATA GOLD, leading to the filing of the present suit. On 27th February, 2015, this Court had granted an ex-parte ad interim injunction restraining the Defendants from using the impugned marks and had also appointed Local Commissioners. The Local Commissioners were appointed to visit the premises of M/s. Vardhman Chemicals at two addresses and M/s. Tonic House at one address. M/s. Tonic House is Defendant No.4 and Defendant No.3 is the proprietor thereof. The said Defendant Nos.[3] & 4 are retailers of M/s. Vardhman Chemicals as per the Plaintiff.
5. One of the Local Commissioners, who visited the premises of M/s. Vardhman Chemicals has reported that when he reached Indore, Mr. D. S. Bhagel, SHO of the concerned police station refused to cooperate and even refused to acknowledge receipt of the order. Under such circumstances, the Local Commissioner was forced to go to the premises to execute the commission. At the premises of M/s. Tonic House, the Local Commissioner was informed that the main owner of the shop was Mr. Anurag Sankala and M/s. Tonic House was merely a retailer of M/s. Vardhman Chemicals. Relevant portion of the Local Commissioner’s report is set out herein below:
The products found at M/s. Tonic House were then inventorized. Thereafter, the Local Commissioner was told that the shop of M/s. Vardhman Chemicals was closed. When Defendant No.1 - Mr. Prakash Yadav was contacted, he refused to come. Paragraphs 7 & 8 of the report are set out herein below:
Defendant No.1 was told by Mr. Anurag Sankala about the visit of the Local Commissioners and in fact, Defendant No.1 informed Mr. Sankala that he would reach the Deodhar Complex address soon. The said extract of the Commissioner’s report is set out below:
6. The second Commissioner visited the second address of M/s. Vardhman Chemicals. The shop was found closed. Only photographs were taken. At the said site, Mr. D.S. Bhagel was present. He refused to sign the application for breaking open the lock and claimed that he did not understand the order of the Court. Telephone number of Mr. Prakash Yadav has been mentioned in the report as 9826099896. The Local Commissioner also spoke to him. He assured the Local Commissioner that he would reach the site but did not turn up. In effect therefore, both the Commissioners had to return without executing the commission in respect of M/s. Vardhman Chemicals and Mr. Prakash Yadav.
7. In the application under Order XXXIX Rule 2A CPC, alleging noncompliance of the orders and contempt, the Plaintiff has extrapolated the Commissioners’ reports to highlight as to how the SHO did not cooperate and was extremely hostile and Defendant No.1 also did not allow the Commissioners to execute the commission by opening the premises. Thus, the directions are sought that both Mr. D.S. Bhagel and Defendant No.1 Mr. Prakash Yadav ought to be punished for their acts of contempt.
8. On 17th August, 2016, the following issues were framed in the suit and thereafter evidence was led by the Plaintiff. “(i) Has the Plaintiff proved that it is the owner of the registered trade mark TATA and the other marks set out in para 15 of the plaint? OPP
(ii) Is the Plaintiff entitled to a permanent injunction to restrain the Defendants from manufacturing, selling, offering for sale, distributing, advertising, directly or indirectly dealing any business of agricultural products namely organic manures, pesticides, fertilizers and high crop yielding stimulants in any whatsoever using any trademark/name/description/ device/ domain name bearing the trademark TATA/TATAZYME/ TATA GOLD/ SUPERTATAZYME or any mark/name confusingly or deceptively similar to the Plaintiffs well-known trademark TATA amounting to infringement of the registered trademarks mentioned in paragraph 15 of the plaint as well as the other registered trademarks mentioned in the list of TATA word mark registrations filed in the present proceedings? OPP
(iii) Is the Plaintiff entitled to a injunction to restrain the Defendants from manufacturing, selling, offering for sale, distributing, advertising, directly or indirectly dealing any business of agricultural products namely organic manures, pesticides, fertilizers and high crop yielding stimulants in any whatsoever using any trademark/name/description/ device/ domain name bearing the trademark TATA/TATAZYME/ TATA GOLD/SUPERTATAZYME or any mark/name confusingly or deceptively similar to the Plaintiffs wellknown trademark TATA amounting to passing off of the Defendants' services/goods as that of the Plaintiff? OPP
(iv) Is the Plaintiff entitled to delivery up of all the goods (tangible and intangible), bearing the impugned mark/device, dies, blocks, cartons, labels, and any other infringing material to the authorized representatives of the Plaintiff for the purposes of destruction? OPP
(v) Is the Plaintiff entitled to damages in the sum of
(vi) Relief.”
Vide order dated 17th November, 2017, it was noticed that Defendant No.1 did not file the affidavit in evidence and therefore costs of Rs. 5,000/- were also imposed on Defendant No.1. Finally, on 25th April, 2018, the Joint Registrar placed the matter before Court as Defendant No.1 had not filed any evidence.
9. Notice was issued in the contempt application but Mr. Bhagel and Defendant No.1 - Mr. Prakash Yadav did not appear despite service. Bailable warrants were issued on 9th May, 2018 against Mr. Bhagel and Mr. Prakash Yadav. On the same day, Defendant Nos. 3 and 4 stated that they have no objection if the suit is decreed in accordance with paragraph 46(i) and (ii) of the Plaint. The said Defendants also paid costs of Rs. 25,000/. Insofar as Mr. Prakash Yadav and Mr. D.S. Bhagel were concerned, bailable warrants in the sum of Rs.5, 000/- each were issued to them. On 18th March, 2019, Mr. D.S. Bhagel, Dy. Superintendent of Police, Rajpur, District Badhwani, Madhya Pradesh was present in person in Court and was permitted to file a reply affidavit within four weeks. Since there was no appearance for Mr. Prakash Yadav, the bail bonds furnished by him were directed to be forfeited and non-bailable warrants were issued against him. On 20th March, 2019, Defendant No. 1 moved for recall of the non-bailable warrants, which were recalled, subject to payment of costs. Ld. counsel for Defendant No. 1 confirms that costs of Rs. 50,000/- have been deposited with the AIIMS Poor Fund Account. He has placed on record the bank statement of Defendant No. 1’s wife, Smt. Meera Yadav, confirming the said deposit. On 11th July, 2019 the adjournment was sought on behalf of Mr. Yadav by proxy counsel.
10. Today, Mr. Prakash Yadav – Defendant No.1 was present in Court and his statement has been recorded. The said statement is set out herein below: “Statement of Mr. Prakash Yadav son of Mr. Bhagwati Prasad Yadav, aged about 54 years, R/o 66/B, Vaibhav Nagar, Kanadia Road, Indore-452016. On S.A. I was using the trademarks TATA and TATAZYME earlier in respect of plant growth promoters. Apart from these trademarks, I also used the trademarks SUPER PAUSHAK-G, DHANVARSHA, BIOMAGIC, SUPER DHANZYME, KARISHMA. My office address is B-9, B. C. Chamber, 47, Jarora Compound, Indore-
452001. The address at Tonic house, Shop No. 2 Deodhar Complex, Chhawani, Indore-452001 belongs to Mr. Anurag Sankala. He also used to make SUPER TATAZYME. I have no connection with that particular premises. I have no connection with Mr. Anurag Sankala. When the Local Commissioner called me, I informed him that I was out of station. I was told by the Local Commissioner that the locks would be broken open. I did not object to the same. Since the last four years, I have not been using the trademark TATAZYME. M/s. Vardhman Chemicals is my firm. The photograph at page 53 of the documents showing title Vardhman Chemicals belongs to my shop. The visiting card at page 54 does not belong to me. The photograph at page 55 also belongs to my firm. The product at page 56 does not belong to my firm. The photograph of a bottle at page 58 belongs to my firm. The photographs of bottles at pages 61 and 63 do not belong to my firm. I admit that I had engaged ld. counsel Mr. Sameer Athawale.”
11. A perusal of the above statement shows that Mr. Prakash Yadav has made several false statements. The incorrect and false statements made by him are as under:
1) That he is not connected with M/s. Tonic House or Mr. Anurag Sankala – “The address at Tonic house, Shop No. 2 Deodhar Complex, Chhawani, Indore-452001 belongs to Mr. Anurag Sankala. He also used to make SUPER TATAZYME. I have no connection with that particular premises”. The Local Commissioner report clearly shows that Mr. Anurag Sankala is the retailer of M/s. Vardhman Chemicals of which Mr. Prakash Yadav is the proprietor. During the execution of the commission, Mr. Anurag Sankala was continuously in touch with Mr. Yadav. They knew each other very well. In the written statement filed by Defendant Nos.[3] & 4, it is stated that Defendant No.4 is an independent retailer of Defendant Nos.[1] & 2 and that as soon as they came to know the facts, they immediately removed the infringing goods from the shop. This written statement is duly supported by an affidavit of Mr. Shivratan Sankhla. Thus, the statement of Mr. Prakash Yadav that he is not connected with M/s. Tonic House or Mr. Anurag Sankala is wrong and is also contrary to the established facts on record.
2) That he was out of station when the Local Commissioner called him– “When the Local Commissioner called me, I informed him that I was out of station” This is again clearly a false statement because Mr. Prakash Yadav was repeatedly telephoned by Mr. Anurag Sankala in the presence of the Local Commissioner and he informed that he will reach the premises soon. Extract of the Local Commissioner’s report is set out above. Even the second Local Commissioner contacted Mr. Prakash Yadav on his mobile number 9826099896 and he informed the Local Commissioner that he will reach within 20 minutes but never turned up. Thus, Defendant No. 1’s statement that he was out station, is blatantly false. [[
3) That he does not use the trademark TATA GOLD – “The product at page 56 does not belong to my firm. The photograph of a bottle at page 58 belongs to my firm” The photographs at pages 56 and 58 are extracted below: As is evident from the photographs, page 56 is the front view of the TATA GOLD product and page 58 (DW 1/3) is the rear view of the TATA GOLD product. In his statement today, Defendant No. 1, Mr. Prakash Yadav, denies the bottle and label at page 56 and but admits the rear view of the label at page 58 (DW 1/3). This is also clearly a false statement. Admitting one and denying the other clearly shows the dishonest conduct of Mr. Yadav.
12. The conduct of Mr. Prakash Yadav clearly constitutes contempt. In Louis Vuitton Malletier v. Omi, (2018) 251 DLT 472, a Ld. Single Judge of this Court has held that in case of false and misleading statements being made before the Court, the Court can invoke its contempt jurisdiction. Following the judgment of the Supreme Court in Dhananjay Sharma v. State of Haryana, (1995) 3 SCC 757, the Court observed that the swearing of false affidavit in judicial proceedings results in obstruction of the administration of justice and reveals the parties intention to pervert the course of justice. The relevant portion of the judgment is as under:
36. In any event, the Apex Court in Leila David v. State of Maharashtra, (2009) 10 SCC 337 has held, “Although, Section 14 of the Contempt of Courts Act, 1971, lays down the procedure to be followed in cases of criminal contempt in the face of the Court, it does not preclude the court from taking recourse to summary proceedings when a deliberate and willful contumacious incident takes place in front of their eyes and the public at large…”
37. In the opinion of this Court, the present case is a case of contempt in the face of the Court and therefore, Section 14 of the Act, 1971 applies.” Recently, in Pratibha v. Kanwar Singh Tanwar and Others [RFA 695/2016, Decided on April 15, 2019] this Court has observed as under:
63. Considering the settled law, as contained in the above judgments, there is no doubt that Mrs. Pratibha is liable to be punished for contempt of Court … …
65. In the overall facts and circumstances of the present case, Mrs. Pratibha is held guilty of contempt of Court. Her conduct, clearly, constitutes even civil contempt, which can be punished by this Court under the provisions of the Contempt of Courts Act, 1971. It is contempt on the face of the court. She is held guilty of contempt of Court and is sentenced to simple imprisonment for a period of three months.” The SLP (Civil) No. 13538/2019 against the above order was dismissed by the Supreme Court on 10th June, 2019.
13. In the present case too, Defendant No.1 is clearly making false statements before the Court and deliberately misleading the Court. Even the Local Commissioner’s Report shows that Defendant No.1 has deliberately failed to cooperate in the execution of the Local Commission. The conduct of Mr. Yadav constitutes contempt in the face of the court. Thus, Mr. Prakash Yadav is held guilty of contempt.
14. Mr. Prakash Yadav has already made a statement that he has stopped use of the mark TATA. His distributors have already been injuncted by this Court by permanent injunction in accordance with paragraph 46(i) and (ii) of the Plaint. Accordingly, there shall be a decree against Defendant Nos. 1 and 2 in terms of paragraph 46(i) and (ii) of the Plaint.
15. Coming to damages, the present is a case of deliberate violation and infringement of the mark TATA. Defendants 1 and 2 are habitual offenders. They were put to notice in 2006 and after giving undertakings continued to misuse the mark TATA in various forms including by using the marks TATAZYME and TATAGOLD. To make matters worse, deliberate misstatements and false statements have been made by Mr. Prakash Yadav, who is the proprietor of M/s. Vardhman Chemicals - Defendant No.2, today in court. The statements which are blatantly false and misleading have already been extracted above. Under principles akin to Section 105 of the Trade Marks Act, 1999, which provides for increased punishment for second or subsequent convictions, this Court is of the opinion that even in civil cases, such defendants who indulge in habitual infringement ought to be punished with higher damages. The Plaintiff has incurred legal costs since 2006 to stop violation of the mark TATA. The suit is thus decreed against Mr. Prakash Yadav for a sum of Rs. 20,00,000/-, out of which Rs.10,00,000/- would be payable to the Plaintiff and Rs.10,00,000/- would be payable to the AIIMS Poor Fund Account No. 10874588424 with SBI, Ansari Nagar, New Delhi (IFSC Code: SBIN0001536). The payment shall be made before the next date of hearing.
16. The suit is decreed. Decree sheet be drawn up.
17. None has appeared for Mr. D.S. Bhagel, Dy. Superintendent of Police, Rajpur, District Badhwani, Madhya Pradesh. List on 26th August, 2019 for further orders on the contempt application.
PRATHIBA M. SINGH JUDGE JULY 15, 2019 MR