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High Court Of Delhi
ROYAL BISCUITS PRIVATE LIMITED - Appellant
Versus
SETHI BAKERS AND CONFECTIONERS - Respondent
Interim Application 6743 of 1991
Decided On : 08/30/1991
TRADEMARK - INFRINGEMENT - COPYRIGHT ACT, 1957 - SECTION 62(2) - TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTION 12(3) AND SECTION 28 - INFRINGEMENT OF REGISTERED TRADEMARK AND COPYRIGHT - JURISDICTION OF DELHI COURTS - PRIMA FACIE CASE - CONFIRMATION OF INJUNCTION TILL DISPOSAL OF SUIT.
Fact of the Case:
Plaintiff, the proprietor of the registered trademark "royal" and copyright holder of the labels used for packaging biscuits, filed a suit against the defendant for infringement of trademark and copyright. The defendant had adopted the trademark "royalty" and labels similar to the plaintiff's, leading to confusion among consumers. The plaintiff sought a permanent injunction restraining the defendant from using the infringing trademark and labels.
Finding of the Court:
The court held that the plaintiff had a prima facie case to show that the Delhi Courts had territorial jurisdiction to try the suit, as the defendant had not controverted the fact that it was carrying on business in Delhi in its reply to the legal notice served by the plaintiff. The court also held that the defendant had infringed the plaintiff's registered trademark and copyright, as the defendant's trademark and labels were deceptively similar to the plaintiff's. The court further held that the defendant's application to register its trademark did not entitle it to infringe the plaintiff's registered trademark.
Issues: 1. Whether the Delhi Courts had territorial jurisdiction to try the suit. 2. Whether the defendant had infringed the plaintiff's registered trademark and copyright.
Ratio Decidendi: 1. The court held that the plaintiff had a prima facie case to show that the Delhi Courts had territorial jurisdiction to try the suit, as the defendant had not controverted the fact that it was carrying on business in Delhi in its reply to the legal notice served by the plaintiff. The court also relied on Section 62(2) of the Copyright Act, 1957, which allows a plaintiff to file a suit for infringement of copyright at a place where the plaintiff is carrying on business. 2. The court held that the defendant had infringed the plaintiff's registered trademark and copyright, as the defendant's trademark and labels were deceptively similar to the plaintiff's. The court relied on the principles of trademark infringement and copyright infringement.
Final Decision: The court dismissed the defendant's application to vacate the injunction and allowed the plaintiff's application to confirm the injunction till the disposal of the suit.
( 1 ) AT the outset, I may mention that Counsel for defendant has stated that the application filed under Order 39 Rule 4 Civil Procedure Code , by the defendant be treated as a reply to the application filed by the plaintiff (I. A. 3445/91) and both the applications may be disposed of together.
( 2 ) I have heard arguments for deciding these two applications.
( 3 ) PLAINTIFF has instituted the present suit seeking permanent injunction restraining the defendant from manufacturing selling, offering for sale, advertising and displaying directly or indirectly dealing in biscuits and other allied goods under the trade mark "royalty" logo, packing labels or any other trade mark or packing label identical with or deceptively similar to the plaintiff s trade mark "royal" logo and its label and for other reliefs flowing from the same cause of action. The case set up by the plaintiff, in brief, is that plaintiff company is the proprietor of trade mark "royal" on account of its adoption and continuous user since 1982 in respect of manufacture and sale of biscuits. The plaintiff also claims to be the owner and proprietor of "royal" labels being used by the plaintiff for the purpose of packing the biscuits and the said labels are stated to have a distinctive get up, make up, colour scheme and lettering style. It is pleaded that the plaintiff has been invariably using the devise of bust portrait of the Prince wearing a crown inside the circles in those labels and plaintiff pleaded that the art work involved in the said labels together with the composition of the colour scheme are original in character and a copyright has been obtained in respect of the same by getting it registered under the Indian Copyright Act, 1957. The specimen of the plaintiff s labels were filed as Annexure a and b with the plaint. The plaintiff claimed that its business has been very extensive one and the goods of the plaintiff under the said trade mark packed in the said labels have been sold and distributed in major parts of the country including the States of Jammu and Kashmir, Himachal Pradesh, Punjab, Haryana, U. P. , Rajasthan and Union Territories of Delhi and Chandigarh. It is also pleaded that the plaintiff s trade mark "royal" has been duly registered under the Trade and Merchandise Marks-Act, 1958, since February 16, 1982.
( 4 ) SO, plaintiff pleaded that the said trade mark as well as the get up, make up, colour scheme and lettering style of the labels have already become distinctive and associated with the aforesaid goods of the plaintiff on account of their long, continuous, exclusive and extensive user of the goods bearing the said trade mark packed in said labels stand associated with the name of the plaintiff as coming from the source of the plaintiff and have achieved lot of reputation in the market as standard quality goods. The plaintiff has then given the figures of the sales of the year 1982 to 1990 in para 7 which are substantial. Presently, the sales of the plaintiff are to the tune of Rs. 2,63,18,012. 49 paise for the year 1989-90. The plaintiff also claims to have widely advertised said trade mark and lables in different newspapers, trade magazines and thus, the said trade mark and the labels are stated to have become synonym with the business of the plaintiff.
( 5 ) IT is pleaded that the defendant has recently set up his business of manufacturing and selling the biscuits and defendant has deliberately adopted the trade mark "royalty" and had also adopted the similar labels as that of the labels of the plaintiff with a view to take undue advantage of the reputation of the plaintiff earned in the trade, by using the trade mark "royalty" and the said labels. It is pleaded that the defendant s trade mark "royalty" is phonetically and visually similar to the trade mark "royal" of the plaintiff and similarly, the labels of the defendant are also similar to the labels of the plaintiff in its get up, make up, colour scheme and lett
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