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2013 Supreme(Del) 248
IN THE HIGH COURT OF DELHI AT NEW DELHI
MANMOHAN, J.
PERFETTI VAN MELLE S.P.A. & ANR. - Plaintiffs
Versus
OM PRAKASH KHUSHWANT & ANR. - Defendants
CS(OS) 1568/2009
Decided On : 28th February, 2013.
Mr. Sushant Singh with Mr. P.C. Arya and Ms. Geetika Kapur and Mr. U.K. Shukla, Advocates
The defendants' actions constituted infringement of trademark, passing off, and violation of the Copyright Act, leading to the court's decision in favor of the plaintiffs.
Headnote:
TRADEMARK - Infringement of Trademark - Copyright - Passing Off - [Trade Marks Act, 1999, Section 29(4); Copyright Act, 1957, Section 51] - The court found that the defendants infringed the plaintiff's trademark and indulged in passing off by adopting a mark deceptively similar to the plaintiff's registered trademark. The court also held that the defendants violated the Copyright Act by imitating the artistic work of the plaintiff's label without permission.
Fact of the Case:
The plaintiffs filed a suit for permanent injunction against the defendants, alleging infringement of trademark, trade dress, copyright, passing off, and damages. The defendants were found to have adopted a mark deceptively similar to the plaintiff's registered trademark and imitated the artistic work of the plaintiff's label without permission.
Finding of the Court:
The court found that the plaintiffs proved their case and the defendants infringed the plaintiff's trademark, indulged in passing off, and violated the Copyright Act. The court decreed the suit in favor of the plaintiffs and awarded damages and costs.
Issues: Infringement of trademark, passing off, violation of the Copyright Act, damages, costs
Ratio Decidendi: The defendants' adoption of a mark deceptively similar to the plaintiff's registered trademark and imitation of the artistic work without permission constituted infringement, passing off, and violation of the Copyright Act.
Final Decision: The suit was decreed in favor of the plaintiffs, and damages to the tune of Rs.2,00,000/- were awarded. The plaintiffs were also held entitled to the costs of the suit.
MANMOHAN, J (Oral):
1. Present suit has been filed for permanent injunction restraining infringement of trade mark, trade dress, copyright, passing off and damages against the defendants.
2. In the plaint the plaintiffs have claimed that they are the registered owner of the well known trade mark CENTER FRESH and the defendants have been using the trade mark Super Fresh with a nearly identical label which is a colourable imitation of the artistic work comprising the label and wrapper of CENTER FRESH.
3. In the plaint it is stated that the plaintiffs had given cease and desist notice and in response thereto, defendants on 4th February, 2005 had given an undertaking that they would not use any of the plaintiffs’ trade mark including CENTER FRESH. However, as the defendants did not abide by their undertakings, plaintiffs filed the present suit.
4. On 25th August, 2009, this Court granted not only an ad interim injunction restraining the defendants from infringing the plaintiffs’ trade mark CENTER FRESH but also appointed a Local Commissioner. The Local Commissioner in her spot report has stated as under:-
Inventory
1) Labels to be affixed on plastic jars lying loose in the premises– about 2000 pieces;
2) Big cartons in which plastic jars are packed – 70 pieces;
3) Loose wrappers lying in rolls are 24 in number. These rolls are packed in 4 (four) gunny bags; each gunny bag bearing 6(six) rolls each and one gunny bag containing six rolls weighs about 35 kgs.
4) Loose gums lying packed in plastic containers, packed in cardboard cartons: Each plastic jar contains 150 pieces and each cardboard carton contains about 70 plastic jars.
5) All seized products have been sealed in 4 (four) gunny bags, which have been signed by me along with date.”
5. As the defendants did not appear despite service, they were proceeded ex parte on 27th July, 2011 and the ad interim order dated 25th August, 2009 was confirmed till disposal of the suit.
6. In the evidence filed by way of affidavit, plaintiffs’ witnesses have deposed that the plaintiffs conceived, coined and adopted the trade mark CENTER FRESH with regard to chewing gum in the year 1997. It is stated that the trade mark CENTER FRESH was registered on 27th November, 1981 vide Registration Certificate No. 383561. It is further stated that on 30th October, 1995, the plaintiffs’ composite label comprising trade mark CENTER FRESH as well as other features like colour scheme, get up and device was also registered vide Certificate No. 684849. The plaintiffs’ witnesses have also proved the annual turnover of chewing gum under the trade mark CENTER FRESH since the year 2001.
7. Mr. Sushant Singh, learned counsel for the plaintiffs states that the defendants have adopted the mark Super Fresh with an identical colour scheme and get up which is nothing but a material reproduction and colourable imitation of the plaintiffs trade mark CENTER FRESH. He submits that the mark Super Fresh being deceptively similar to CENTER FRESH also infringes the copyright of the plaintiffs.
8. Having heard learned counsel for the plaintiffs and perused the ex parte evidence as well as document placed on record, this Court is of the opinion that plaintiffs have in fact proved the facts stated in the plaint and have also exhibited the relevant documents in support of their case. Since the plaintiffs’ evidence has gone unrebutted, said evidence is accepted as true and correct.
9. This Court is also of the view that subsequent adoption of the mark Super Fresh by the defendants amounts to infringement of the plaintiffs’ trade mark inasmuch as the plaintiffs are the registered proprietor of the trade mark CENTER FRESH vide Registration Certificates dated 27th November, 1981 and 30th October, 1995 and the defendants have, without permission of the plaintiffs, subsequently adopted the mark Super Fresh.
10. This Court has compared the broad and essential features of the plaintiffs’ trade mark and the defendants’ mark and is of
