Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2012 Supreme(Del) 1627

IN THE HIGH COURT OF DELHI AT NEW DELHI
A.K. PATHAK, J.
M/S FRIENDS OVERSEAS : Plaintiff
Versus
SWADI PRODUCT U.K. LTD. & ORS. : Defendants
I.A. No. 6094/2010 (u/O 39 R 1 & 2 r/w Sec. 151 CPC by Plaintiff) and I.A. No. 8683/2010 (u/O 39 R 4 CPC r/w Sec. 151 CPC by defendant no. 1) in CS(OS) 889/2010
Decided On : 2 July, 2012

Advocates Appeared:
Mrs. Pratibha M Singh, Mr. Jaspreet Singh Kapur and Mr. Ashwin Kumar, Advocates
Mr. Gurvinder Pal Singh, Mr. Gaurav B., Mr. Nitin Monga, Mr. Mishal Viz and Mr. Mahender, Advocates

The main legal point established in the judgment is the protection of copyright and trade mark rights against dishonest adoption and infringement, as well as the recognition of prior user rights under common law, even against subsequent registered proprietors.

Headnote:
Copyright Infringement - Trade Mark - SWADI HOMEMADE - Trade Mark Act, 1999 - Section 9(1)(d), Order 39 Rules 1 and 2, Section 151 of the Code of Civil Procedure, 1908 - [Section 9(1)(d), Order 39 Rules 1 and 2, Section 151 of the Code of Civil Procedure, 1908]
Fact of the Case:

Plaintiff filed suit for permanent injunction against copyright infringement, passing off, and unfair competition. Defendants were accused of using the mark 'SWADI HOMEMADE' with malafide intentions, copying the plaintiff's packaging, and infringing the plaintiff's copyright in the logo and packaging.
Finding of the Court:

The court found that the defendants' adoption of the mark 'SWADI HOMEMADE' was not honest and for malafide reasons. The defendants were found guilty of infringing the plaintiff's copyright in the logo, label, and packaging. The court also rejected the defendants' contention that the mark 'SWADI' was descriptive and not registrable.
Issues: Copyright infringement, passing off, unfair competition, trade mark registrability, joint ownership of trade mark, compliance with injunction order
Ratio Decidendi: The court held that the defendants' adoption of the mark 'SWADI HOMEMADE' was dishonest and for malafide reasons, leading to infringement of the plaintiff's copyright. The court also ruled that the mark 'SWADI' was not merely descriptive and could be protected. Additionally, the dissolution of the partnership firm vested all assets, including the trade mark, in the plaintiff. The court also found that the plaintiff had a cause of action in India under Section 56 of the Trade Mark Act, 1999, even for goods exported from India.
Final Decision: The defendants were restrained from using the trade mark 'SWADI HOMEMADE' or any deceptively similar mark, logo, or packaging in India, pending the disposal of the suit.

JUDGMENT

A.K. PATHAK, J.

1. Plaintiff has filed this suit for permanent injunction restraining infringement of copyright, unfair competition, passing off, trade dress infringement and damages/rendition of accounts of profits, against the defendants.

2. Mr. Pamaljeet Singh is sole proprietor of M/s Friends Overseas (plaintiff). In fact, sole proprietorship firm has no separate legal entity and is a creation of its sole proprietor, thus, any reference made to sole proprietorship firm shall mean and include sole proprietor and vice versa. It appears that initially defendant no. 1-company was formed by one Mr. Amrik Singh, who is brother of Mr. Pamaljeet Singh, for marketing the products manufactured by the plaintiff under the trade name “SWADI”, in United Kingdom. Earlier defendant no. 1 was known as M/s Golden Trading Company, United Kingdom. Plaintiff had been manufacturing and exporting the goods under the mark “SWADI” to defendant no. 1 in United Kingdom. Some disputes arose between the brothers which led to stoppage of import by defendant No.1 from the plaintiff. Later on, defendant no. 2 has been established by Mr. Kuldeep Singh, another brother of the plaintiff. Now defendant no.2 is manufacturing the same products under the mark “SWADI” and exporting to the defendant no.1.

3. Mr. Ajay Narang is sole proprietor of defendant no. 3-M/s Frontline Pack World. Earlier, M/s Friends Overseas was a partnership firm in which Mr. Ajay Narang, proprietor of defendant no. 3, was one of the partner. Partnership firm was dissolved vide Deed of Dissolution dated 4March, 2008. Thereafter, defendant no. 3 started sole proprietorship firm and is now supplying packaging material to defendant no.2.

4. It is alleged in the plaint that the plaintiff is engaged in the business of trading and export of rice, pulses, spices atta, maida, suji, besan, tea, coffee etc. under the trade mark “SWADI HOMEMADE”. Plaintiff had been exporting the said products under the said name/mark/label to M/s Golden Trading Company, U.K., now defendant no.1. In turn, defendant no. 1 used to market the said goods in United Kingdom. Some differences arose between the plaintiff and defendant no.1 over the payments resulting in stoppage of export of goods by the plaintiff to defendant no.1. However, owing to the superior quality of plaintiff?s goods as well as popularity of plaintiff?s mark “SWADI” in United Kingdom, defendant no. 1 has changed the name of its company to “SWADI HOMEMADE PRODUCT” and further established defendant no. 2 in India through his other brother Mr. Kuldeep Singh. Defendant no. 2 started purchasing packaging material from erstwhile partner of the plaintiff, that is, defendant no.3. Defendants have started using the mark “SWADI HOMEMADE” with malafide intentions. Defendants have misappropriated the plaintiff?s well known mark/label “SWADI HOMEMADE”, inasmuch as, copied the artistic get up, layout and trade dress of the plaintiff?s product.

5. The mark “SWADI” as well as “SWADI HOMEMADE” was coined by the plaintiff for manufacturing and exporting the plaintiff?s goods in the year 2004. However, actual exports began in the year 2006. Plaintiff had applied for registration of the mark/label “SWADI” vide application no. 1512369 dated 12December, 2006 in respect of goods falling under Class 30 and the said application is pending for registration before the Trade Mark Registry. Plaintiff has spent considerable amount in advertisements in relation to its products under the said mark/label, as a result whereof, marks “SWADI” and “SWADI HOMEMADE” have become synonymous to the products of plaintiff, inasmuch as, have attained enormous reputation and goodwill in India as well as abroad. Purchasers recognize products of plaintiff by the trade mark “SWADI HOMEMADE”. Plaintiff has also advertised its products through its website www.swadiproducts.com. Plaintiff is the owner of copyright in the original artistic work in respect of packaging/label/logo relating to sa

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