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2018 Supreme(Del) 68
IN THE HIGH COURT OF DELHI AT NEW DELHI
MANMOHAN, J.
Maya Sharma - Plaintiff
Versus
Unique Law Publication House & Ors. - Defendants
CS(COMM) 551 of 2018
Decided On : 02-04-2018
Advocate Appeared:
For the Plaintiff : Mr. Pavit Singh Katoch, Mr. Rajat Jain
The main legal point established is that the use of deceptively similar marks for identical goods and trade channels constitutes trademark infringement and passing off under the Trade Marks Act, 1999.
Headnote:
Trademark Infringement - Passing Off - Unique - [Trade Marks Act, 1999, Section 27(2)(b), Section 29(1), Section 29(2), Section 29(4)] - The court found that the defendant had infringed the plaintiff's trademark 'Unique' and 'Unique 20' and engaged in passing off. The court relied on the evidence presented by the plaintiff to establish the use and reputation of the trademarks and concluded that the defendant's use of deceptively similar marks for identical goods and trade channels constituted infringement and passing off. The court decreed the suit in favor of the plaintiff and awarded costs.
Fact of the Case:
The plaintiff filed a suit seeking permanent injunction and rendition of accounts for trademark infringement, passing off, and unfair trade competition. The plaintiff alleged that the defendant had copied the plaintiff's trademarks 'Unique' and 'Unique 20' for law books, leading to confusion and deception in the market.
Finding of the Court:
The court found that the plaintiff had established the use and reputation of the trademarks and that the defendant's use of deceptively similar marks for identical goods and trade channels constituted infringement and passing off. The court decreed the suit in favor of the plaintiff and awarded costs.
Issues: The issues included prior adoption and use of the trademark, similarity of the defendant's marks to the plaintiff's trademarks, passing off, deception and confusion in the market, and infringement of the plaintiff's copyright in the writing style or artwork of the trademarks.
Ratio Decidendi: The court relied on the evidence presented by the plaintiff to establish the use and reputation of the trademarks. It applied the triple identity test to determine infringement and passing off, and concluded that the defendant's actions were unjustified.
Final Decision: The court decreed the suit in favor of the plaintiff, granting a permanent injunction and costs, and directed the defendants to deliver infringing material for destruction.
Manmohan, J.
1. Present suit has been filed for permanent injunction restraining passing off, dilution, unfair trade competition and rendition of accounts. The prayers made in the plaint are reproduced hereinbelow:-
"(a) A decree of permanent injunction restraining the Defendants, their promoters, partners, family members, dealers, distributors, retailers, representatives, franchisees, agents, servants, successor in title or anyone acting for and on their behalf from passing off the books published and sold by them by using the trademark "Unique" or "Unique 20" or trade dress of the Plaintiff or any trademark comprising the word "Unique" or as a part of their trade name/business identity including "Unique Law Publication House" or in any other similar or deceptively similar manner with respect to any of their businesses, products or services, and further from diluting the goodwill of the Plaintiff or indulging in any unfair Trade practices;
(b) Pass an order directing the defendants to deliver and hand over all infringing material including Books, boxes, labels, packing material, publicity material, stationery, bill books, blocks and plates or any other printed material etc., bearing the Trade Mark/trade dress/word "Unique" or "Unique 20" or comprising the Trade mark/trade dress/Word "Unique" as a part of any trademark, trade name or business identity, to the Plaintiff or any other person as may be appointed by this Hon'ble Court for the purpose of destruction;
(c) Pass a preliminary Decree directing the Defendants to render true and faithful accounts of the business carried on and profits generated by them by passing off, adopting unfair trade practices and diluting the goodwill of the Plaintiff by using the trademark "Unique" in similar or deceptively similar manner as a part of their trademark, trade name, and further on rendition of accounts, determine the quantum of profits earned by them, and consequently on such determination pass a final decree in favour of the plaintiff for the amount of profit illegally earned by the Defendants;
(d) Cost of suit may please be allowed in favour of plaintiff and against the defendants;
(e) Any other or further orders/directions may be passed in favour of the plaintiff and against the defendants that this Hon'ble Court may deem fit and proper in the facts and circumstances of the instant case."
2. At the outset, learned counsel for plaintiff gives up prayers (b) and (c) of the plaint. The statement made by learned counsel for plaintiff is accepted by this Court and plaintiff is held bound by the same.
3. It is pertinent to mention that on 12th January, 2015, this Court granted an ex-parte ad interim injunction in favour of the plaintiff and against the defendants. The relevant portion of the said order is reproduced hereinbelow:-
"In my view the plaintiff has made out a prima facie case in its favour. Balance of convenience is also in favour of the plaintiff and against the defendants. The defendants are restrained by an ex parte ad interim injunction from publishing, selling or dealing in any manner whatsoever with books, material etc using the trademark Unique or Unique 20 or any other trademark deceptively similar to the trademark of the plaintiff. The plaintiff shall comply with order 39 Rule 3 CPC within three days from today."
4. On 4th February, 2015, the defendant nos. 1, 2, and 3 entered appearance and the matter was referred for mediation to Delhi High Court Mediation and Conciliation Centre. However, the mediation proved to be a non starter. Defendant no.1 filed its written statement on 31st January, 2015 and defendant nos. 2 and 3 filed their written statements on 3rd March, 2015. The aforesaid injunction order was confirmed on 05th April, 2016.
5. Since defendants last appeared on 26th April, 2017, before the Joint Registrar, they were proceeded ex parte vide order dated 01st March, 2018.
6. It is the plaintiff's case that the plaintiff as sole proprietor of Nitin Prakashan c
