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2012 Supreme(Del) 3344
IN THE HIGH COURT OF DELHI
G.S. SISTANI, J.
Peretti Van Melle Benelux B.V. - Appellant
Versus
Ramkrishna Food Products - Respondent
CS(OS) 2099 of 2003
Decided on : 06-03-2012
Advocate Appeared:
Mr. Sushant Singh, Advocate
Headnote:
MENTOS - Trademark Infringement - Trade and Merchandise Marks Act, 1958, Trade Marks Act, 1999 - The judgment discusses the plaintiff's claim for permanent injunction, infringement of copyright, passing off, and damages against the defendants. The court confirms the interim order restraining the defendants from using the trademark MENTOS. The court finds that the plaintiff is the prior adopter and user of the trademark MENTOS, and the defendants have imitated the plaintiff's label. The court declares the plaintiff as the copyright holder of the label and establishes a case of passing off. The court decrees the suit in favor of the plaintiff and awards damages of Rs. 5.0 lacs.
Fact of the Case:
The plaintiff filed a suit for permanent injunction, infringement of copyright, passing off, and damages against the defendants, alleging that the defendants illegitimately obtained registration of the trademark MENTOS without any intention to use it and intended to sell it for profit. The plaintiff provided evidence of its extensive international adoption and use of the trademark MENTOS since 1929, including registrations in various countries. The defendants were restrained from using the trademark by an interim order. The defendants stopped appearing in the proceedings and were proceeded ex parte.
Finding of the Court:
The court found that the plaintiff is the prior adopter and user of the trademark MENTOS, and the defendants imitated the plaintiff's label. The court declared the plaintiff as the copyright holder of the label and established a case of passing off. The court decreed the suit in favor of the plaintiff and awarded damages of Rs. 5.0 lacs.
Issues: The issues included the maintainability of the suit against the registered proprietor based on common law remedy of passing off, the defendants' claim of continuous use of the trademark MENTOS, and the defendants' defense based on trademark registration.
Ratio Decidendi: The court held that the suit against a registered proprietor is maintainable on the ground of prior use and trans-border reputation, and mere registration does not establish use. The court also found that the defendants' claim of continuous use of the trademark MENTOS was false, and the defendants' inaction not to contest the proceedings indicated their defense based solely on trademark registration. The court established a case of passing off based on the nature of the marks, degree of resemblance, nature of the goods, similarity in the nature and performance of the goods, class of purchasers, mode of purchasing, and other relevant circumstances.
Final Decision: The court decreed the suit in favor of the plaintiff, confirming the interim order and awarding damages of Rs. 5.0 lacs. The plaintiff was declared as the prior adopter and user of the trademark MENTOS, and the defendants were restrained from using the trademark.
JUDGMENT :
G.S. Sistani, J.
Plaintiff has filed present suit for permanent injunction, infringement of copyright, passing off and damages etc. against the defendants.
2. Summons in the suit and notice in the application were issued on 09.12.2003. The defendants were restrained from selling, assigning or creating any third party interest in the registered trade mark "MENTOS". The interim order granted, continues till date. The defendants entered appearance and filed their written statement. Thereafter since the defendants stopped appearing in the matter, defendants were proceeded ex parte by an order dated 04.02.2009. The plaintiff has filed affidavit by way of ex parte evidence.
3. The facts of the case as set out in the plaint are that the plaintiff, earlier known as Van Melle Nederlands B.V., is presently a part of the Perfetti Van Melle Group who are renowned manufacturers and sellers, inter alia, of confectionery items including candies, toffees, mints, breath fresheners, chewing gum, bubble gum, etc., under various world famous trademarks. The above goods of the plaintiff, and/or its associate or group companies are available in over 130 countries of the world including India, under famous and well known trademarks such as MENTOS, ALPENLIEBE, COFITOS, CHLO-RMINT, FRUITTELLA, CENTER FRESH, CENTER SHOCK, ETC. The plaintiff's predecessors-in-title had honestly coined and adopted the inherently distinctive trademark MENTOS in the year 1929. The candy manufactured and sold by the plaintiff and its associate/group companies under the mark MENTOS has a chewy, sugar coated hard mint cover and a soft centre. It is submitted that prior to 1950, MENTOS of the plaintiff's were sold in bags and loose, and thereafter, in cylindrical paper packs. The product, MENTOS, was first introduced in the Netherlands and thereafter in the markets all over the world, and the product has become immensely popular. In order to accord statutory protection to the expression MENTOS, the plaintiff had applied for and/or registered the said trademark in several countries of the world, as detailed in the plaint. The registrations of Benelux dates back to 1967, 1970, 1971 and 1972. The plaintiff is the registered proprietor of the trademark MENTOS in India under registration no.410587 in Class 30 as of 13th September, 1983 under the Trade and Merchandise Marks Act, 1958. The said Indian registration covers "bonbons, chews, peppermint, toffees, licorice articles and other articles" all included in class 30.
4. That the plaintiff filed application for registration of the trademark MENTOS in label format on 8.5.1997 under number 756010 in class 30 of the Fourth Schedule of the then prevailing Trade and Merchandise Marks Act, 1958. By virtue of international adoption since the year 1929 and international registrations which dates back to the year 1967, 1970, 1971 and 1972 in the respective countries and in India since the year 1983, plaintiff claims itself to be the prior adopter, prior user, and prior registered proprietor of the said well known trademark MENTOS worldwide and in India in respect of chewing gum etc. Mr.Sushant Singh, submits that the said trademark has earned considerable goodwill and reputation and sale of the goods under the said trademark runs into multi crores of rupees, as detailed in para 15 of the plaint.
5. The cause of action of the plaintiff in the present case emanates from the trademark application, which was filed by the Plaintiff in the year 2001. At the examination stage, the conflicting mark of the Defendants bearing no.331030 for the mark MENTOS was cited which stood already registered. The said trademark was applied by the defendant on the basis of proposed use. During a market survey, it was revealed that no product of the defendants under the trademark MENTOS existed in the market. It is submitted that the defendants have obtained registration of the said trademark illegitimately without any intention to use the same and the said t
