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IN THE HIGH COURT OF DELHI
Jayant Nath, J.
GS1 India - Appellant
Versus
Global Barcodes SL - Respondent
CS(COMM) 147 of 2020 and IA Nos. 4076 of 2020, 4837 of 2020, 4838 of 2020, 7552-7553 of 2020, 10762-10763 of 2020 and 10921 of 2020
Decided On : 12-01-2021
Permanent injunction granted against unauthorized use of trademark and misleading barcodes, affirming the plaintiff's rights as the sole authorized issuer in India, resulting in an award of damages for infringement.
Headnote:(A) Trade Marks Act, 1999 - Sections 27, 29 - Infringement of registered trademark - Permanent injunction granted against defendant for the use of 13-digit barcodes starting with '890' leading to confusion among consumers; plaintiff holds valid registration for the trademark and is the only licensed authority in India for barcodes beginning with '890' - Plaintiff demonstrated that defendant misleads customers into believing they are compliant with GS1 standards, resulting in trademark infringement. (Paras 6 and 7)
(B) Jurisdiction and powers of the court - The court deemed it appropriate to grant a decree under Order 8 Rule 10 CPC due to the defendant's failure to appear or file a response. (Paras 1, 6, and 7)
Facts of the case:
This suit was filed by a society registered for maintaining global standards in barcodes, alleging that the defendant was infringing its registered trademark by selling barcodes that confused customers about their origin and compliance. The plaintiff has sought several forms of injunction and damages due to deception caused by the defendant.
Findings of Court:
A decree for permanent injunction against the defendant was granted, along with a monetary award for damages amounting to Rs. 20 lakhs.
Issues: The main issues included whether the defendant's actions constituted trademark infringement and the appropriateness of the court's jurisdiction in the case of a non-appearing defendant.
Ratio Decidendi: The court found that the defendant's unauthorized use of a similar trademark created confusion, justifying the issuance of a permanent injunction and damages due to the misleading nature of the barcodes.
Result: The suit was disposed of in favor of the plaintiff.
ORDER
This hearing is conducted through video-conferencing.
1. Despite service of advance copy, none has appeared for defendant No.1. Defendant No. 1 is proceeded ex parte.
2. This suit is filed seeking the following reliefs:
"(A) A decree for permanent injunction restraining Defendant No. 1, its proprietors, partners, affiliates, franchisees, officers, servants, agents, distributors, representatives and anyone acting for or on their behalf from using, selling, offering for sale, issuing or allocating 13-digit barcode numbers starting with `890' or any deceptively similar marks thereto in any manner and for any goods or services leading to confusion as to origin or association or mistaken impression as to certification regarding compliance with GS1 standards (GS1 General Specification), amounting to infringement of Plaintiff's registered trademark bearing no. 1293152;
(B) A decree for permanent injunction restraining Defendant No. 1, its proprietors, partners, affiliates, franchisees, officers, servants, agents, distributors, representatives and anyone acting for or on their behalf from representing to the public or making any statements that it is in any manner affiliated to, associated with or authorized by the Plaintiff leading to confusion as to origin or association amounting to passing off;
(C) A decree for permanent injunction restraining Defendant No. 1, its proprietors, partners, affiliates, franchisees, officers, servants, agents, distributors, representatives and anyone acting for or on their behalf from representing to the public or making any statements that it is in any manner affiliated to, associated with or authorized by the Plaintiff leading to tarnishment of and dispute to the Plaintiff's reputation;
(D) An order directing the Defendant Nos. 2 and 3 and any other relevant website hosting service provider to block/ take down or remove the domain name and the website hosted at websites www.indiabarcodeshop.com and https://indiabarcodes- store.com/;
(E) An order directing the Defendant Nos. 6 and 7 to block/take down or remove the domain name and website hosted at www.free-barcodesshop.com;
(F) An order directing the Defendant Nos. 4 and 5 to issue directions to issue directions to Internet Service Providers to block access to the websites www.indiabarcodeshop.com, https://india-barcodes-store.com/ and www.free-barcodesshop. com;
(G) A decree for damages of Rs. 2,00,01,000/-(rupees two crore one thousand only) in favour of the Plaintiff to be paid by Defendant No. 1, including through the proprietors of Defendant No. 1;
(H) An order for costs of the proceedings;
(I) Any further order as this Hon'ble Court may deem fit and proper in the facts and circumstances of the case."
3. On 29.05.2020 this court had passed an interim order in favour of the plaintiff where the factual background of the case had been narrated. Relevant paras of the said order are reiterated. The same read as follows:
"5. Plaintiff is a society registered under the Societies Registration Act set up in 1996 by several industry bodies and statutory bodies like Bureau of Indian Standards, Federation of Indian Chambers of Commerce and Industry (FICCI), Associated Chambers of Commerce and Industry of India (ASSOCHAM), Confederation of Indian Industry (CII). Plaintiff holds a license from the global body namely GSl which was set up by various countries coming together to maintain global standards as also database of the barcodes issued in compliance of the standard set up by GSl, the global body. The plaintiff company, the only licensed body in India, is named GS1 India and has been allocated the code 890' which is used for further allocation along with ten other digits to various manufacturers, suppliers who want their products to be certified with a barcode so as to ascertain the country of origin as also the manufacturing, supplying units of the product. Once the plaintiff allocates the bar code, the same is entered
