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IN THE HIGH COURT AT CALCUTTA
SUGATO MAJUMDAR, J.
Marico Ltd. & Another - Appellant
Versus
J.K. Enterprises
- Respondent
CS. No. 128 of 2004
Decided On : 31-01-2024
Trade-mark Infringement - Trade-mark Infringement - Companies Act 1956 - [Order VIII Rule 10 of the Code of Civil Procedure, 1908, Modula India Vs. Kamakshya Singh Deo, Balraj Taneja & Anr. Vs. Sunil Madan & Anr., C.N. Ramappa Gowda Vs. C.C. Chandregowda, Shantilal Gulabchand Mutha Vs. Tata Engineering and Locomotive Company Ltd. & Anr.] - The court discussed the scope of Order VIII Rule 10 of the Code of Civil Procedure, 1908 and its discretionary nature. It emphasized the need for the court to be cautious and ensure that the facts pleaded in the plaint are proved before passing judgment. The court highlighted that the discretion to pronounce judgment or pass other appropriate orders depends on the nature and merit of each case, and there is no mandatory requirement to pass judgment solely based on the plaint in the absence of a written statement.
Fact of the Case:
The Plaintiff, a registered proprietor of the trade-mark 'NIHAR', alleged trade-mark infringement and passing off by the Defendants. The Defendants did not contest the suit, leading to it being treated as undefended. The Plaintiff argued that judgment should be passed solely based on the plaint.
Finding of the Court:
The court exercised its discretion under Order VIII Rule 10 and held that the Plaintiff's case was not proved, as essential documents were withheld and no evidence was adduced. Consequently, the suit was dismissed as not proved.
Issues: The main issue was whether the court should pass judgment solely based on the plaint in the absence of a written statement, and whether the Plaintiff's case was proved.
Ratio Decidendi: The court emphasized the discretionary nature of Order VIII Rule 10 and the need for caution in passing judgment based on the plaint. It highlighted the requirement for the Plaintiff to prove the facts pleaded in the plaint before judgment can be pronounced.
Final Decision: The suit was dismissed as not proved.
JUDGMENT
1. The instant suit was originally instituted by M/s Hindustan Lever Ltd., a company registered under the Companies Act 1956, being the original Plaintiff no. 1 along with M/s Indexport Ltd., a company registered under the Companies Act 1956, against the Defendant alleging infringement of trade-mark.
2. The original Plaintiff no. 1 was owner of the band ‘NIHAR’ and used to market perfumed coconut oil under the said brand-name and trade-mark ‘NIHAR’. The word ‘NIHAR’ appeared on the labels and packages in a distinctive style, get-up, write-up and in distinctive colour scheme. The word was used in conjunction with a device of two coconut-trees one full coconut and another half coconut. The original Plaintiff no. 1 had been selling the product from the year 1995.
3. On or about 17th February, 2006, the Plaintiff No. 1 executed a deed of assignment in favour of the present Plaintiff M/s Marico Ltd., a company registered under the Companies Act 1956, whereby the original Plaintiff no. 1, M/s Hindustan Lever Ltd. transferred, assigned and conveyed all its rights, titles and interests in the trade-mark ‘NIHAR’, for valuable consideration in favour of the present Plaintiff as aforesaid. By virtue of the aforesaid assignment, the present Plaintiff became the owner of the trade-mark ‘NIHAR’ together with the good-will in India. The present Plaintiff is manufacturing and marketing coconut oil under the mark ‘NIHAR’. The original Plaintiff M/s Hindustan Lever Ltd. got the trade-mark registered in its name. Subsequent to assignment the present Plaintiff made application for registration of the trade-mark ‘NIHAR’ in its name and got it so registered. As such presently, the present Plaintiff is the registered proprietor of the trade-mark ‘NIHAR’. The present Plaintiff also substituted itself in place of the original plaintiffs.
4. In the second week of February 2004 the original Plaintiff No. 1 came to know that the Defendant no. 1 had been selling coconut oil in plastic packets having deceptive similarity, trade-dress, get-up, colour scheme and dimension with that of the original Plaintiff no. 1. The original Plaintiff purchased a packet of the deceptively similar coconut oil from the Defendant no. 3 at Bhagwati Store, 13A, Bidhan Sarani, Kolkata – 700006. In or around the month of November 2009 the present Plaintiff came to know that the Defendant no. 1 has marketing and selling double filtered coconut oil 200ml. jars bearing deceptively similar mark ‘Nihal’. The style, colour scheme and writing type of the packages of the coconut oil of the Defendants are deceptively and confusingly similar to that of the Plaintiff. In doing so, the Defendants are motivated with mala-fide object to deceive and confuse the consumers and pass-off their product as that of the Plaintiff.
5. The original Plaintiff instituted the instant suit praying for permanent injunction restraining the Defendants from passing off, along with others; decree for delivery up and destruction of labels, packages, cartons, and boxes of the Defendants similar to or in colourable imitation of those of the Plaintiff along with other prayers in view of infringement of trade-mark and passing off.
6. In spite of service of summons of Defendants did not contest the suit for which the suit became an undefended one, in terms of the order dated 20th June 2023. The Learned Counsel for the Plaintiff submitted that since no claim for damages is there, no evidence was required and proceeded with argument.
7. The first limb of argument of Mr. Sen, the Learned Counsel appearing for the present Plaintiff is that since the Defendants did not contest the suit and did not file written statement, this Court under Order VIII Rule 10 of the Code of Civil Procedure, 1908, shall pass judgment on the basis of the plaint. Referring to Kaira District Co-operative Milk Producers Union Ltd. & Anr. Vs. Maa Tara Trading Co. & Ors. [AIR 2022 Cal 377] and Shyam Sel Power Ltd. Vs. Atibir Industries Company Ltd.
The discretionary nature of Order VIII Rule 10 and the requirement for the Plaintiff to prove the facts pleaded in the plaint before judgment can be pronounced.
The court emphasized the discretionary power under Order VIII Rule 10 of the Code of Civil Procedure, 1908 and the need for evidence to prove the plaintiff's case, highlighting the importance of esse....
Each act of trademark infringement constitutes a fresh cause of action, allowing the aggrieved party to file a new suit for ongoing violations.
The court found that an ex parte judgment can be granted under Order VIII Rule 10 CPC if the defendant fails to respond, ensuring that the plaintiffs' rights under their registered trademarks are uph....
A court may decree a suit without a defendant's written statement if no contested issues exist in the plaint, but it must exercise discretion and ensure facts are clear and unimpeachable.
To establish trademark infringement, the plaint must demonstrate use 'in the course of trade'; mere display of a mark without commercial activity does not satisfy this requirement.
Trademark infringement occurs when a mark is deceptively similar to a registered trademark, causing confusion among consumers.
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