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2022 Supreme(Del) 531
IN THE HIGH COURT OF DELHI AT NEW DELHI
PRATHIBA M. SINGH, J.
Mondelez India Foods Pvt. Ltd. and Anr. - Plaintiffs
Versus
Neeraj Food Products - Defendant
CS (Comm) No. 393 of 2018
Decided On : 26-07-2022
Advocate Appeared:
For the Plaintiffs : Ms. Prakriti Vaishney.
Point of Law : It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.
Headnote:
Civil Procedure Code, 1908 - Order XXIII Rule 3 - Delhi High Court Intellectual Property Division Rules, 2022 - Delhi High Court (Original Side) Rules, 2018 - Commercial Courts Act, 2015 - Commercial Suit - Seeking permanent and mandatory injunction - Damages for infringement of trademark and copyright, passing off, unfair competition and other reliefs - Identical colour scheme - CADBURY GEMS’/‘GEMS’ products - Identical colour scheme, layout, and arrangement - Suit was filed against M/s. Neeraj Food Products which is a sole proprietary - Case of Plaintiffs is that Defendant launched a chocolate product under mark ‘JAMES BOND’ with an identical colour scheme, layout, and arrangement as that of Plaintiffs’ ‘CADBURY GEMS’/‘GEMS’ products - Rival packagings of Plaintiffs and Defendant are set out below - Present suit was listed for first time when summons and notices were issued to Defendant - Initially, Defendant had entered appearance, but thereafter, stopped appearing in matter - Vide order, Defendant was proceeded against ex parte - An application was then moved on behalf of Defendant seeking setting aside of the ex parte proceedings - The Plaintiffs have further spent a substantial amount of money towards litigation costs, including court fee, counsels’ fees and miscellaneous expenses - In terms of Act, 2015 and Rules, 2018 read with Rules, 2022, this is a fit case for grant of actual costs. (Para 36)
Finding of the Court :
The impugned packaging of the Defendant’s product sold under mark ‘JAMES BOND’/‘JAMEY BOND’ has clearly infringed the Plaintiffs’ rights in the mark ‘CADBURY GEMS’, as also, copyright in respect of products sold under the said mark - An interim injunction has been operating in the present suit since 25th May, 2007. For some time, contempt was alleged by the Plaintiff and an application under Order XXXIX Rule 2A CPC was sought to be filed. However, at the time of final arguments, no submission has been made to effect that the Defendant’s products continued to be available in the market. Accordingly, the reliefs sought in respect of delivery up and for recall of the Defendant’s products are not granted at this stage. However, if the Plaintiffs finds any infringing products in the market, they are free to seek execution of the decree, seeking delivery up, at that stage - Present suit is decreed in terms of reliefs of permanent and mandatory injunction as sought in paragraphs (A) and (B) of prayer clause as set out in the Plaint - Insofar as the relief of damages as sought in paragraph (C) of the prayer clause is concerned, present is a fit case for award of damages - Accordingly, in view of flagrant violation of Plaintiffs’ rights, damages to tune of Rs.10 lakhs are awarded in favour of Plaintiffs - Accordingly, actual costs of Rs.15,86,928/- are awarded in favour of Plaintiffs, in terms of relief as sought in paragraph (D) of the prayer clause as set out in Plaint - Let statement of costs filed by Plaintiffs be taken on record - Defendant shall pay costs and damages to Plaintiffs.
Result : Suit is decreed.
JUDGMENT :
Prathiba M. Singh, J.
Factual Background of the Case:
1. The present suit has been filed seeking permanent and mandatory injunction and damages for infringement of trademark and copyright, passing off, unfair competition and other reliefs. The Plaintiff No.1 - Mondelez India Foods Private Limited (formerly Cadbury India Ltd.) and Plaintiff No.2 - Cadbury Schweppes Overseas Limited claim ownership in the mark ‘CADBURY GEMS’/‘GEMS’ which is the subject matter of the present suit.
2. The Plaintiff No. 1 began its operations as a trading company in the year 1947 and is stated to be the market leader in the field of confectionary chocolate products worldwide, including in India. Some of the leading brands of the Plaintiffs include ‘CADBURY DAIRY MILK’, ‘CADBURY GEMS’, ‘CADBURY 5 STAR’, ‘BOURNVITA’ and ‘CADBURY PERK’ and brands of newer products like, ‘CADBURY BYTES’, ‘CADBURY CHOCKI’, ‘CADBURY DELITE’, and ‘CADBURY TEMPTATIONS’.
3. The suit was filed in August, 2005 against M/s. Neeraj Food Products which is a sole proprietary concern of Mr. Charan Das. The case of the Plaintiffs is that the Defendant launched a chocolate product under the mark ‘JAMES BOND’ with an identical colour scheme, layout, and arrangement as that of the Plaintiffs’ ‘CADBURY GEMS’/‘GEMS’ products. The rival packagings of the Plaintiffs and the Defendant are set out below:
4. In the suit, the Plaintiff seeks the following reliefs:
“(A) the Defendant, its proprietor, partners, directors, servants, agents, distributors, franchisees, representatives and assigns be restrained by a permanent injunction restraining them from:
(i) using the trade mark JAMES and/or JAMES BOND and/or any other trade mark deceptively or confusingly similar to the Plaintiffs' registered trade mark GEMS or in any other manner infringing the registered trade mark GEMS of the Plaintiff;
(ii) using the pillow-packs attached as Annexure 'B' to the unamended plaint or any other packaging whatsoever which is deceptively or confusingly similar to the pillow-packs of the Plaintiffs attached as Annexure 'A' to the unamended plaint;
(iii) in any other manner whatsoever passing off their goods as and for the goods of the Plaintiffs;
(iv) substantially reproducing in material form the copyright in the artistic work of the pillow packs, a representation of which is attached Annexure 'A' to the unamended plaint.
(B). A decree of a mandatory injunction be passed thereby directing that the Defendant, its directors, principles, proprietor, partners, directors, employees, agents, distributors, franchisees, representatives and assigns to:
(i) hand over to Plaintiffs or their nominated representative all goods, packaging and promotional material, stationery and any other material whatsoever bearing the trade mark JAMES BOND and/or the offending pillow packs and/or any other trade marks deceptively or confusingly similar to the Plaintiffs' trade mark GEMS;
(ii) recall all the products, marketing, promotional and advertising materials bearing the trade marks JAMES BOND and/or the offending pillow packs and/or any other trade marks deceptively or confusingly similar to the Plaintiffs' trade marks GEMS and hand over the same to the attorneys or representatives of the Plaintiffs;
(iii) to deliver to the Plaintiffs' attorneys or representatives for destruction all products, labels, prints, packages, moulds, blocks, cylinders, plates, dies, wrappers, receptacles and advertisements in its possession or under its control bearing the trade marks JAMES BOND and/or the offending pillow packs and/or any other trade marks deceptively or confusingly similar to the Plaintiffs' trade mark GEMS;
(C) The Defendants be called upon to allow inspection of their accounts to assist in ascertaining damages and a decree be passed in favour of the Plaintiffs and against the Defendant for damages suffered by Plaintiffs by virtue of use
