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IN THE HIGH COURT OF DELHI AT NEW DELHI
Sanjeev Narula, J.
M/s. Erd Technologies Pvt. Ltd. – Appellant
Versus
Shree Ambeshwar Mobile Centre – Respondent
CS(COMM) 103 of 2020
Decided On : 30-01-2023
Trademark Infringement - Mobile Phone Accessories - Trademarks Act, 1999 - Copyright Act - [Section 29 of the Trademarks Act, 1999] - [Section 37(a) to (e) of the plaint] - The Defendants were found to be infringing the Plaintiff's trademarks and passing off their products as those of the Plaintiff, leading to irreparable harm to the Plaintiff's business, goodwill, and reputation. The Court decreed the suit in favor of the Plaintiff, granted a permanent injunction, and ordered the delivery of counterfeit goods for destruction. The Plaintiff was also awarded costs in accordance with relevant legal provisions.
Fact of the Case:
The Plaintiff sought permanent injunction and other reliefs against the Defendants for trademark and copyright infringement, passing off, and delivery up of counterfeit goods. The Defendants were found to be selling products bearing the Plaintiff's registered marks without authorization, leading to public confusion and deception.
Finding of the Court:
The Court found that the Defendants' actions constituted infringement and passing off under the Trademarks Act, 1999. The Defendants' failure to contest the suit and file written statements resulted in the Court decreeing the suit in favor of the Plaintiff and granting a permanent injunction. The Court also ordered the delivery of counterfeit goods for destruction and awarded costs to the Plaintiff.
Issues: Trademark and copyright infringement, passing off, unauthorized sale of counterfeit goods, failure to contest the suit and file written statements.
Ratio Decidendi: The Defendants' unauthorized sale of products bearing the Plaintiff's registered marks constituted infringement and passing off under the Trademarks Act, 1999. The Court decreed the suit in favor of the Plaintiff and granted a permanent injunction based on the Defendants' failure to contest the suit and file written statements.
Final Decision: The suit was decreed in favor of the Plaintiff, granting a permanent injunction and ordering the delivery of counterfeit goods for destruction. The Plaintiff was awarded costs in accordance with relevant legal provisions.
JUDGMENT
Sanjeev Narula, J. (Oral)--Present suit has been filed seeking inter alia, permanent injunction restraining infringement of registered trademark and copyright, passing off, delivery up, damages and costs.
2. Plaintiff-company is engaged in the business of manufacturing, marketing and selling of mobile phone batteries, travel chargers, car chargers, power banks, USB cables, universal battery charger, etc. under its registered trademark "[IMG]" and other formative variants thereof, registered under various classes [hereinafter collectively, "Plaintiff's marks"]. Since 1998, Plaintiff's predecessor continuously and extensively used the said marks. Following the amalgamation of the Plaintiff with its predecessor company, the ownership and legacy in said marks and copyrights vested therein have now been transferred to the Plaintiff.
3. Particulars of Plaintiff's trademark registrations are set out at paragraph No. 11. In addition to registrations in India, Plaintiff, through its predecessor has also secured registrations of its marks in several countries, including China, Nepal, Hong Kong, Sri Lanka etc.
4. Plaintiff has expended heavily towards sale and promotion of its products and has generated substantial revenue therefrom, details whereof are mentioned in paragraphs No. 16 and 17 of the plaint.
5. In February, 2020, the Plaintiff, through its distributor/dealer/retailer, became aware of Defendants No. 1 and 2 indulging sale of counterfeit goods/products under their registered marks. Following that, Plaintiff demanded discontinuation of sale of counterfeit products that violated their trademarks through its distributors; however, Defendants persisted in selling the infringing goods without issuing authorised invoices. Taking note of above circumstances, on 05th March, 2020, an ex-parte ad-interim injunction was granted in favour of Plaintiff, to the following effect:
"7. Mark/label `ERD'/[IMG] or any other mark or name similar or deceptively similar thereto in respect of mobile phone batteries, The defendants till further orders are restrained from using the trade travel chargers, car chargers. Power Banks, USB cables, universal battery charger, LED lights, CCTV power supplies, etc. included in Class-9 or other similar goods in any manner whatsoever. The defendants are also restrained from infringing the copyright and from adopting the trade dress of the aforesaid products of the plaintiff."
6. Amongst the two Local Commissioners appointed by order dated 05th March, 2020, one has seized infringing products [50 pieces of PC-22 (White) Micro USB Data Cable] bearing Plaintiff's registered marks, whose origin or source was unascertainable.1[ Local Commissioner Report filed vide Index No.-D-1060489 on 12th November, 2020.]
7. Defendants' counsel appeared on one or two occasions but did not file their vakalatnama. Defendants have failed to file written statement(s), despite multiple opportunities, resulting in closure of their right to do so vide order dated 22nd August, 2022. Eventually, by order dated 02nd November, 2022, they were proceeded ex-parte. In the interregnum, ex-parte interim injunction dated 05th March, 2020 was made absolute on 14th December, 2020.
8. In above facts, counsel for Plaintiff, on instructions, does not press for damages and only seeks the relief of decree of permanent injunction against the Defendants and award of costs.
9. The comparison of Plaintiff's product packaging/trade dress bearing their marks and Defendants' impugned products is as follows:
| Plaintiff's Products | Impugned products of Defendants |
| [IMG] | [IMG] |
| [IMG] | [IMG] |
| [IMG] | [IMG] |
| [IMG] | [IMG] |
10. The impugned mark and packaging are identical to Plaintiff's, without any noticeable differences. Both the parties are dealing in same class of electronic goods, through common trade channels. Defendants No. 1 and 2 are selling products bearing Plaintiff's registered mark-[IMG] without authorisation or permission from the Plaintiff, which a
Infringing activities and lack of defense by the Defendant can lead to the award of damages and costs in favor of the Plaintiff.
The court applied the summary judgment procedure in commercial disputes to ensure timely resolution and emphasized the need for a realistic prospect of success in defending the claim.
Summary judgment can be granted in commercial disputes when the defendant lacks real prospects of successfully defending the claim.
Trademark infringement occurs when identical trademarks are used on counterfeit goods, leading to public confusion and deception.
The central legal point established in the judgment is the entitlement of the plaintiff to statutory protection and the grant of injunction for infringement under the Trademark Act, 1999.
Failure to contest a case can lead to deemed admissions of all facts mentioned in the plaint, and evidence presented by the Plaintiffs can satisfy the test required to prove infringement.
The court established that the trademark `LIMCEE` is protected against imitation by `LICMEE`, highlighting the importance of protecting goodwill and enforcing trademark rights.
Deceptive similarity between trademarks and packaging can lead to a finding of trademark infringement under the Indian Trademarks Act, 1999, Section 29.
Trademark infringement and passing off under the Trade Marks Act, 1999, and the seriousness of counterfeiting in eroding brand value and misleading consumers.
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