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IN THE HIGH COURT OF DELHI AT NEW DELHI
Sanjeev Narula, J.
Indiyaa Distribution Network Llp – Appellant
Versus
Tvc Life Sciences Ltd. – Respondent
CS(COMM) 115 of 2016
Decided On : 12-01-2023
Trademark Infringement - SANDHI SUDHA - Drugs and Cosmetics Act, 1940, Trademarks Act, 1999 - The court discussed the infringement of the mark 'SANDHI SUDHA' by the defendants and the grant of permanent injunction in favor of the plaintiff. The court analyzed the similarity of marks, the priority of use, and the plaintiff's entitlement to injunction for passing off. The court also considered the defendants' contentions and their subsequent non-representation in the proceedings.
Fact of the Case:
The plaintiff sought a permanent injunction against the defendants for passing off its mark 'SANDHI SUDHA'. The plaintiff's predecessor-in-interest had coined and adopted the mark in 2008 for an ayurvedic joint pain relief oil. The defendants contested the suit, claiming that the impugned mark was not deceptively similar and that the plaintiff had acquiesced to their use of the mark.
Finding of the Court:
The court found that the impugned mark was deceptively similar to the plaintiff's mark and granted a permanent injunction in favor of the plaintiff. The court also noted the defendants' non-representation in the proceedings and their admission of use of the impugned mark since 2011.
Issues: The issues included the similarity of marks, the plaintiff's entitlement to injunction for passing off, the defendants' contentions regarding the use of the impugned mark, and the defendants' non-representation in the proceedings.
Ratio Decidendi: The court held that the impugned mark was deceptively similar to the plaintiff's mark, and the plaintiff was entitled to a permanent injunction. The court also considered the defendants' non-representation as a factor in reaching its decision.
Final Decision: The suit was decreed in favor of the plaintiff, granting a permanent injunction against the defendants. The court also disposed of all pending applications.
JUDGMENT
Sanjeev Narula, J. (Oral)--Plaintiff seeks a decree of permanent injunction restraining Defendants from passing off its mark "SANDHI SUDHA", and other ancillary reliefs of damages, rendition of accounts and destruction of infringing goods.
2. The suit was originally filed by Telemart Shopping Network Private Ltd., a teleshopping company incorporated in 2006. During pendency of the suit, said company assigned the mark "SANDHI SUDHA" along with its goodwill and copyright to one partnership firm viz. Teleworld Marketing vide assignment deed dated 24th October, 2016. Thereafter, Teleworld Marketing assigned the mark to Indiyaa Distribution Network LLP on 05th January, 2018, who has been substituted as a Plaintiff on 08th March, 2019.
CASE OF THE PLAINTIFF
3. Plaintiff's predecessor-in-interest coined and adopted the mark "SANDHI SUDHA" in 2008 with respect to an ayurvedic joint pain relief oil, and commenced its commercial use since January 2009. The mark comprises of two words "SANDHI", taken from Sanskrit language and "SUDHA", which is taken from the name of Plaintiff's promoter/Director - Mr. Sudhanshu Sharma. Plaintiff's product has been duly approved for manufacturing by Licencing Authority and Director for Ayurvedic and Unani Sciences, under the Drugs and Cosmetics Act, 1940. The business operations of Plaintiff have transcended geographical boundaries, and its products are available in UK, Dubai, Sri Lanka, Qatar, Nepal etc. In 2011, Plaintiff slightly changed the composition of the oil and commenced sale of a relatively premium oil, under the mark "SANDHI SUDHA PLUS".
4. Plaintiff had applied for registration of the mark "[IMG]" vide application No. 2031828 in class 5 on 01st October, 2010, which is pending under opposition by a third-party.
5. Plaintiff's products are manufactured in strict compliance with high-quality standards and are popular amongst its customers. It has expended heavily towards advertisement and promotion of its mark through various media, including online, details whereof are set out in the plaint. Several celebrities have endorsed Plaintiff's brand from time to time. All this is evidence of accrual of substantial goodwill and reputation to Plaintiff. Its annual sales figures ranged up to Rs.27,17,092/- for "SANDHI SUDHA" and Rs.19,35,01,794/- for "SANDHI SUDHA PLUS" in financial year 2013-14. Plaintiff's predecessor is the largest teleshopping company in India and the mark "SANDHI SUDHA" has acquired a secondary meaning; products sold thereunder are exclusively associated with the Plaintiff.
6. In order to expand its operations and to make its products available in retail stores, Plaintiff issued an advertisement in Kanpur Edition of Amar Ujala newspaper on 15th November, 2014 inviting applications from persons interested in dealership of "SANDHI SUDHA" products. At that stage, Plaintiff was informed that on 06th November, 2014, a similar advertisement was issued by Defendants in Bareilly Edition of Dainik Jagran newspaper for the product "SANDHEE SUDDHAM" [hereinafter, "impugned mark"]. On further investigation, on 19th November, 2014, Plaintiff came across Defendants' websites where products under the impugned mark were being offered for sale. The Plaintiff's representative then ordered impugned products from Defendant No. 2's website which, despite following up with the customer service team multiple times, were never received, even though payment was made prior to delivery. Furthermore, Defendant No. 1 applied for trademark registration of the disputed mark under application No. 2153564, but it was declined.
7. Defendants' mark is visually, phonetically and structurally similar to Plaintiff's "SANDHI SUDHA" and that use of impugned mark would lead to deception and confusion amongst consumers and members of the trade. Therefore, Defendants must be injuncted from using the impugned mark.
PROCEEDINGS TILL DATE
8. Considering the Plaintiff's submissions, on 03rd December, 2014, upon for
The main legal point established in the judgment is the entitlement of the plaintiff to a permanent injunction for passing off its mark 'SANDHI SUDHA' and the consideration of the defendants' non-rep....
Merely riding on strength of his trade mark registration, is indulging in conduct which is not transparent.
Court emphasizes that prior use and goodwill in trade names give rise to rights that protect against passing off and copyright infringement.
The defendant was entitled to the benefit of defense under Section 35 of the Act as it had been using the mark 'VASUNDHARA' in a bona fide manner since 2001.
The plaintiff failed to establish exclusive rights over the common name 'VASUNDHRA', resulting in dismissal of the injunction application due to lack of a prima facie case.
The court established that the rights of the prior user of a trademark are superior to those of a subsequent user, emphasizing the elements of goodwill, misrepresentation, and damage in passing off c....
The judgment emphasizes that the exclusive right to use a trade mark is limited to what has been registered and cannot extend to common names. It also highlights the importance of distinctiveness, go....
The court affirmed the registered trademark holder's rights against similar marks and clarified standards for proving prior use and confusion under trademark law.
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