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2017 Supreme(Del) 3124
IN THE HIGH COURT OF DELHI AT NEW DELHI
MANMOHAN, J.
VIRGIN ENTERPRISES LIMITED & ANR. - Plaintiffs
Versus
VIRGIN FOODS & FEEDS PVT LTD & ORS. - Defendants
CS(COMM) 824 of 2016
Decided On : 28-08-2017
For the Plaintiffs :Mr. R.K. Jain, Advocate with Dr. Amitabha Sen and Ms. Malyashree Sridharan, Advocates.
The central legal point established in the judgment is the recognition of the plaintiff's mark as a well known trade mark and the application of relevant provisions of the Trade Marks Act, 1999 to restrain the defendants from using a deceptively similar name/mark.
Headnote:
Trade Mark Infringement - Well Known Trademark - Trade Marks Act, 1999 - Section 2(1)(zg), Section 20, Section 22 - The court held that the plaintiff's mark VIRGIN is a well known trade mark as defined under Section 2(1)(zg) and other relevant provisions of the Trade Marks Act, 1999. The judgment referenced the rights of the owner of a well known trademark as laid down in Tata Sons Ltd. versus Manoj Dodia & Ors., 2011 (4) R.A.J 181 (Del) and the jurisdiction of the Civil Court in cases of passing off of a name as discussed in Montari Overseas Limited versus Montari Industries Limited, ILR 1997 Delhi 64. The court concluded that the defendants were restrained from using any of the VIRGIN marks or logos or any other mark of the plaintiffs or domain name and company name deceptively similar to that of the plaintiffs.
Fact of the Case:
The suit was filed for permanent and temporary injunction restraining infringement of trade mark, passing off, rendition of accounts and other miscellaneous reliefs. The plaintiff sought to restrain the defendants from using the name/mark VIRGIN, claiming it to be causing irreparable loss and damage to the plaintiff's well known trade mark.
Finding of the Court:
The court found that the plaintiff's mark VIRGIN is a well known trade mark and that the defendants were causing confusion and deception among the public by using a name deceptively similar to that of the plaintiffs.
Issues: The issues involved trade mark infringement, passing off, and the use of a well known trade mark by the defendants.
Ratio Decidendi: The court relied on the provisions of the Trade Marks Act, 1999, particularly Section 2(1)(zg), Section 20, and Section 22, to establish the well known status of the plaintiff's trade mark and the rights of the owner of a well known trademark. The court also considered the jurisdiction of the Civil Court in cases of passing off of a name.
Final Decision: The suit was decreed in favor of the plaintiffs, and the defendants were restrained from using any of the VIRGIN marks or logos or any other mark of the plaintiffs or domain name and company name deceptively similar to that of the plaintiffs.
MANMOHAN, J.
1. Present suit has been filed for permanent and temporary injunction restraining infringement of trade mark, passing off, rendition of accounts and other miscellaneous reliefs. The prayer clauses in the suit are reproduced hereinbelow :-
"a. Grant an order for permanent injunction restraining the Defendants, their partners, directors, principal officers, servants, agents and representatives from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in advertising services or any other related services under their company/corporate name "VIRGIN FOODS & FEEDS PVT. LTD.", or under any other mark/s deceptively similar to the Plaintiff's well known trademark VIRGIN and/or company name amounting to infringement of the Plaintiff's "VIRGIN" trademark;
b. Issue direction to the directors of the Defendant No.1 company to apply to the Regional Director and Registrar of Companies, Ministry of Corporate Affairs, Hyderabad to change the company name of the Defendant No.1 by deleting the term/name VIRGIN from its company name;
c. In the alternative, issue a direction to the Regional Director and Registrar of Companies, Ministry of Corporate Affairs, Hyderabad to direct the Defendants to change the company name of the Defendant No.1 by deleting the term/name VIRGIN from its company name;
d. Grant a decree of damages to the tune of Rs.21,00,000 in favour of the Plaintiffs and against the Defendants on account of loss of sales, reputation and goodwill of the Plaintiffs' trademark caused due to the Defendants;
e. Direct the Defendants to render a true account of all the profits earned by them using the impugned mark/name/domain name "VIRGIN FOODS AND FEEDS PVT. LTD." and further direct the Defendants to pay to the Plaintiff such amount as may be found due and payable on such account being taken;
f. Costs of the suit and incidental expenses throughout may kindly be awarded to the Plaintiffs and against the Defendants; and
g. Any other just and equitable reliefs/orders in Plaintiffs' favour in the interest of equity and justice may kindly be passed."
2. At the very outset, the learned counsel for the plaintiffs stated that he wished to press prayers ‘a’ and ‘b’ of the plaint only. He specifically gave up his claim for damages and rendition of accounts.
3. On 28th October, 2015, this Court granted an ex parte ad interim injunction in favour of the plaintiffs and against the defendants. The relevant portion of the said order is reproduced hereinbelow:-
"Till further orders, the defendants, their partners, principal officers, servants, agents and representatives are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in advertising services or any other related services under their company/corporate name "VIRGIN FOODS & FEEDS PVT LTD", or under any other marks deceptively similar to the plaintiffs' well known trademark "VIRGIN" and/or company name amounting to infringement of the plaintiffs' "VIRGIN" trademark."
4. Since the defendants did not enter appearance despite service, they were proceeded ex parte vide order dated 28th October, 2015 and the ex parte interim injunction was confirmed on 4th May, 2017.
5. Mr. R.K. Jain, learned counsel for plaintiffs stated that the plaintiff No. 1 is the prior user and adopter of the trade mark VIRGIN and is the registered proprietor of over 3,000 VIRGIN trade marks worldwide including India.
6. He stated that the plaintiffs’ trade mark VIRGIN is a well known and famous trade mark having trans-border reputation and the Trade Marks Registry has recently added the plaintiffs’ mark in the list of Well Known Trademarks.
7. Mr. R.K. Jain stated that the estimated total world-wide turnover figures for the VIRGIN branded companies for the years 2012 to 2014 are as follows :
| YEAR | TURNOVER (£ Billions) |
| 2012 | 14.9 |
