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1987 Supreme(Del) 29
High Court Of Delhi
GEORGE LILINGTON AND COMPANY LIMITED - Appellant
Versus
SUBHAS CHEMICALS - Respondent
Interim Application 2819 of 1986
Decided On : 01/21/1987
ANUP SINGH, H.P.SINGH, V.K.Kapur
The defendant is liable to render accounts for the sale of all cement paint, not just those sold under the infringing trademark, and the defendant has the burden of proving that the profits made by him were unrelated to the use of the infringing trademark.
Headnote:
TRADEMARK - INFRINGEMENT - ACCOUNTING - SCOPE - BURDEN OF PROOF - INJUNCTION - AMENDMENT OF DECREE - JURISDICTION OF COURT - SECTION 152 CPC - INHERENT POWER OF COURT - DISCRETION OF COURT - CORRECTION OF MISTAKES - INADVERTENCE - MISCONCEIVED INJUSTICE.
Fact of the Case:
The plaintiff filed a suit against the defendant for infringement of trademark, artistic copyright work, and passing off. The plaintiff sought permanent injunction, rendition of accounts, and delivery of offending materials. The court granted a decree in favor of the plaintiff, including an order for rendition of accounts for the sale of cement paint under the infringing trademark SNOWCEM/showcem for the past three years.
Finding of the Court:
The court held that the defendant was liable to render accounts for the sale of all cement paint, not just those sold under the infringing trademark. The court also held that the defendant had the burden of proving that the profits made by him were unrelated to the use of the infringing trademark.
Issues: 1. Whether the defendant was liable to render accounts for the sale of all cement paint, or only those sold under the infringing trademark? 2. Who had the burden of proving that the profits made by the defendant were unrelated to the use of the infringing trademark?
Ratio Decidendi: 1. The court held that the defendant was liable to render accounts for the sale of all cement paint, not just those sold under the infringing trademark, because the profits made by the defendant were within his special knowledge and the burden of proving that profits made by him were unrelatable to use of the infringing trade mark lies on the defendant. 2. The court held that the defendant had the burden of proving that the profits made by him were unrelated to the use of the infringing trademark because such profits were within the special knowledge of the defendant.
Final Decision: The court dismissed both applications filed by the defendant, one for amendment of the decree and the other for stay of proceedings before the Local Commissioner and for directions regarding accounts to be produced by the defendant.
( 1 ) THESE two applications were filed by the defendant after decree was passed in suit on 9th September, 1985. In the suit, the plaint if, prayed :-
(A) "for permanent injunction and order of this Hon ble Court restraining the defendants themselves, their servants, agents, stockists and all other persons on their behalf from using the offending mark SNOWCEM/showcem in respect or cement paint or any other trade mark which is an infringement of the plaintiffs registered trade mark no. 89847 in class 2. (b) For permanent injunction and order of this Hon able Court restraining the defendants themselves, their servants agents and all other persons on their behalf from infringing the plaintiffs registered "artistic copyright work nos. A 32022/81, A 32766/81, A 32768/81, A 32770/81 and A 32857/81. (c) For permanent injunction and order of this Hon ble Court restraining the defendants themselves, their servants, agents, stockists and all other persons on their behalf from using the offending trade mark SHOWCEM/snowcem and the impugned drums and bags having the infringing colour scheme, get up and design and diagonal lines in respect of cement point so as to pass off their cement paint as the cement paint of the plaintiff s manufacture. (d) For delivery upon affidavit by the defendants to the plaintiffs all the offending stationery, wrappers, shade cards, drum, bags, and other material bearing the offending trade mark SNOWCEM/showcem and the infringing get up, colour scheme and design for purposes of destruction and/or obliteration as the case may be. (e) For rendition of accounts into the profits made by the defendants since the adoption of the offending SNOWCEM/showcem and for the past three years on the sale of cement paint and decree for the amount so found due to the plaintiff. "
( 2 ) DECREE was granted to the plaintiff, as per prayer made in para 23 (a) to (e) of the plaint. For rendition of accounts a Local Commissioner was appointed by order made on 9th September, 85 with a direction "to go into the accounts of the defendant in respect of any sale of cement paint under the trade mark SNOWCEM for the last three years. Before the Local Commissioner, controversy arose between the parties with rerd to statement of accounts directed to be furnished by the defendant.
( 3 ) THE plaintiff wanted the Local Commissioner to examine books of account and record for sale of all cement paint by the defendant during three years preceding the suit on the plea that the defendant did not indicate trade mark used by him in sale vouchers, cash memos, their other accounts,and, that the entire" sale of cement paint by defendant was actually under trade mark SHOWCEM/snowcem. The defendant produced his bill book,cash book, and ledger for the period October, 81 to October 84, before the Local Commissioner on 5-4-86. Counsel for defendant had no objection to the Local Commissioner examining those books and permitting the plaintiff to take notes from portions where trade mark SHOWCEM/snowcem was mentioned. On 5th April, 86 the Local Commissoner examined some of the books and adjourned further proceedings to 17th September, 1986. Plaintiff wanted hooks produced by defendant to be kept by Local Commissioner, but the Local Commissioner directed them to be produced again at the next hearing.
( 4 ) ON 7th April, 86, counsel for parties agreed that a statement of accounts be given for three years in question, and, that "this statement should show the sales of SHOWCEM/snowcem/ cement paints. " Later, counsel for defendant said that he will "only show sales under SHOWCEM/snowcem of cement paint. " According to him, the Local Commissioner could not go beyond the order of the Court which was restricted to accounts in respect of sale of cement paint under the trade mark SNOWCEM/showcem.
( 5 ) THE Local Commissioner disagreed with the position taken by the defendant and directed him to furnish a statement of sale of SHOWCEM/ SNOWCEM cement paint.
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