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2006 DIGILAW 480 (DEL)

HINDUSTAN PENCILS LTD. v. PARAG WRITING AIDS

2006-03-09

SWATANTER KUMAR

body2006
JUDGMENT Swatanter Kumar, J.- The plaintiff is a company registered under the Companies Act, 1956 having its Registered Office at 510, Himalaya House, 79, Pal ton Road, Mumbai. Mr. P.N. Thanawala is the Constituted Attorney of the Company and is duly authorised to sign, verify and institute the present suit on behalf of the plaintiff company. Plaintiff claims to be the proprietor of various well known trademarks i.e. NATARAJ, APSARA. NONDUST. PLASTO, SPEED BIRD. NATTY, APSARA PLATINUM, etc. According to the plaintiff the carton used in respect of trademark SPEED BIRD pencils as given in Annexure A is distinctive/artistic carton having special colour scheme, getup, arrangement and layout and constitute original artistic work under Section 2( c) of the Copyright Act. 1957. which has been designed and drawn by the plaintiff for the first time in India in the year 1998 and since then they have been using the same. The said carton has been designed by using a combination of yellow and blue colour with the matter written over with white and black ink. The background of the carton is in yellow colour with thin white stripes drawn predominantly over the front and back portion of the carton, with picture of a bird in front depicted in black colour. The plaintiff has designed the carton in a specific manner, having transparent space for showing the pencil inside the box. 2. The plaintiff has used the trademark SPEED BIRD and has acquired great reputation of its own in the market. The plaintiff-company has a huge turnover. It has incurred huge expenditure on advertisements through various media such as radio television. newspapers, magazines, etc. This all has resulted in establishment of its trademark SPEED BIRD and particularly in relation to the pencils and the cartons used for that purpose with a defined colour scheme all over the country. The plaintiff has further stated that in November, 2004, it came to know that the defendants had introduced into the market pencils under the trade mark EAGLE in a carton like Annexure X attached to the plaint which was similar in colour design, shape to the carton used by the plaintiff and was thus, infringing the rights of the plaintiff. The plaintiff has further stated that in November, 2004, it came to know that the defendants had introduced into the market pencils under the trade mark EAGLE in a carton like Annexure X attached to the plaint which was similar in colour design, shape to the carton used by the plaintiff and was thus, infringing the rights of the plaintiff. The adoption and/or use of the carton like Annexure X on the part of the defendant is dishonest, mala fide, tainted and solely with a view to trade upon the goodwill and reputation of the plaintiff. The defendants in the suit [CS (OS) No. 148/2004] has introduced in the market pencils under the trademark EAGLE in a similar carton and which is a deceptive copy of the carton of the plaintiff. 3. The defendants were ordered to be served by affixation at the last known address and they had been served and ride order dated IIth April. 2005 the Joint Registrar had put up the matter before the Court. It may also be noticed that defendants were also served by publication in the statement on 31st March. 2005. and vide order dated 19th May. 2005 passed by the Court, the defendants were ordered to be proceeded against ex parle. Liberty was granted to the plaintiff to file ex parte evidence and the suit was then ordered to be listed for final hearing. Ex parte evidence was filed by the plaintiff by way of affidavit. In the affidavit filed on behalf of the plaintiff, besides reiterating the averments made in the plaint, the documents on record have been exhibited as Ex. PW 1/2 to Ex. PW 1/4. The plaintiff has also filed on record the carton used by the plaintiff being Ex. P3 which has been deceptively copied by the defendant, and Ex. P4 is the carton of pencils being sold under the trade name of , Eagle by the defendant. Both of them at first instance looked alike in colour scheme and design. Of course, expression used Eagle is different than the expression Speed Bird. Even the bird copied by the defendant has been shown on a globe. The affidavit of the witness Ex. Both of them at first instance looked alike in colour scheme and design. Of course, expression used Eagle is different than the expression Speed Bird. Even the bird copied by the defendant has been shown on a globe. The affidavit of the witness Ex. PW 1/A fully supports the case of the plaintiff and clearly makes out a case for infringement and copyright of the design of the plaintiff and that of passing off as the defendant is selling its goods as if they were the goods of the plaintiff. 4. Learned Counsel appearing for the plaintiffrelied upon thejudgments of this Court in the cases of American Home Products v. Mac Laboratories, AIR 1986 SC 137 ; Hindustan Pencils Limited v. Vipin Trading Company, 125 (2006) DLT 596=2005 (I) PTC 665 (Del.); Ms. Anglo-Dutch Paint, Colour and Varnish Works Pvt. Ltd. v. M/s. India Trading House, AIR 1977 Delhi Page 41 and Vicco Laboratories v. Hindustan Rimmer, Delhi, AIR 1979 Delhi 114, in support of the contention that the defendants are infringing the copyright of the plaintiff and are passing off their goods as goods of the plaintiff. The contention of the learned Counsel for the plaintiff that the use of the expression Eagle per se tantamounts to infringement of the trademark can hardly be sustained. The plaintiff has made out a clear case for infringement of copyright, design and passing off. As far as the prayer of the plaintiff for the relief of rendition of accounts is concerned, the affidavit of the witness is silent. There are no specific averments in the plaint and in any case during the course of arguments, the learned Counsel appearing for the plaintiff has not pressed for grant of relief of rendition of accounts. The case of Hindustan Pencils Limited v. Vipin Trading Company (supra), is quite similar to the present case. For the reasons aforestated, the suit of the plaintiff is decreed in terms of prayers (b), (c) and (e), while prayer (d) is declined as not pressed. The plaintiff has not been able to make out a case for grant of prayer (a). 5. The suit of the plaintiff is, thus, decreed in the above terms and the plaintiff would be entitled to proportionate costs. CS (OS) No. 150/2004 6. Though, the defendant in this suit is different, but the plaintiff is the same. The plaintiff has not been able to make out a case for grant of prayer (a). 5. The suit of the plaintiff is, thus, decreed in the above terms and the plaintiff would be entitled to proportionate costs. CS (OS) No. 150/2004 6. Though, the defendant in this suit is different, but the plaintiff is the same. The distinguishing facts of the present case from CS (OS) No. 148/2004 is that, that case was restricted to the case of infringement of copyright, design and no case for infringement of trademark was made out. In this suit the plaintiff has sought an injunction against the defendant for infringement of its trademark, as the defendant is using the mark "SPEED WORLD" which is deceptively similar to the trademark of the plaintiff i.e. "SPEED BIRD". The packing carton of the defendant has the same colour scheme, getup which is similar to that the plaintiff. Besides infringing the trademark and copyright of the plaintiff, defendant is passing of their goods as goods of the plaintiff and are causing loss to the plaintiff. In this regard the documents Ex. PW 1/1 to Ex. PW 1/5 are relevant documents. The evidence led by the plaintiff has remained unrebutted and there is no reason before the Court to disbelieve the evidence produced by the plaintiff. 7. The judgments relied upon by the plaintiff equally supports the case of the plaintiff in the present suit also. The plaintiff has led positive evidence to show their investments on advertisements and quality of their goods. The defendants have not been given or assigned any right of interest by the authority to use the trademark or the copyright of the plaintiff in the design, colour scheme and getup of the cartons, used for sale of these pencils. The affidavit of Mr. P .N. Thanawala, further specifies that the various registered trademarks of the plaintiff have reputation and quality all over the country, and the sample of the defendants carton is Ex. PW 1/4. The print on the carton leaves no doubt in the mind of the Court that the defendant is infringing the trademark and copyright of the plaintiff. In view of this discussion the suit of the plaintiff is decreed in terms of prayers (a), (b), (c) and (e). PW 1/4. The print on the carton leaves no doubt in the mind of the Court that the defendant is infringing the trademark and copyright of the plaintiff. In view of this discussion the suit of the plaintiff is decreed in terms of prayers (a), (b), (c) and (e). The relief of rendition of accounts is declined as it is not pressed during the course of arguments and even otherwise, there is no evidence on record to substantiate this claim. The suit is decreed in the above terms. 8. The plaintiff would be entitled to proportionate costs. Suit decreed.