Research › Search › Judgment

Delhi High Court · body

2012 DIGILAW 2349 (DEL)

Cargill India Pvt. Ltd. v. Pramod Gavali

2012-07-26

REVA KHETRAPAL

body2012
JUDGMENT : Reva Khetrapal, J.:— 1. The plaintiff has filed the present suit for permanent injunction seeking to restrain the defendants from infringing its registered trademark "SHUBH", copyright in the packaging/label pertaining thereto, passing off, delivery up, damages and rendition of accounts. 2. The plaintiff — Cargill India Private Limited is engaged in the business of refining, packaging and trading of edible oils and other related products. The plaintiff owns various world-class refineries in Orissa, Gujarat and Maharashtra. 3. The plaintiff was originally incorporated in the name of Parakh Foods Ltd. in the year 1979 and was renamed Cargill Foods India Limited in the year 2006. Subsequently, Cargill Foods India Limited amalgamated alongwith four other companies into Cargill India Private Limited with effect from 22.09.2008. 4. The subject matter of the present suit is the plaintiffs brand of refined soyabean oil "SHUBH" registered in India vide trademark registration No. 1053461 in Class 29 with effect from 19.10.2001, which was originally granted to Parakh Foods Ltd. (plaintiffs predecessor) and in respect of which the plaintiff has filed a TM-33 before the Registrar of Trademarks for recording its name as the subsequent proprietor. The plaintiff adopted the trademark "SHUBH" in the year 2001 and has continuously and extensively used it since then. It is averred that the trademark "SHUBH" has acquired substantial reputation and goodwill amongst the relevant class of consumers and the trade. The plaintiff packs its products in a polypack bearing a distinctive get up, layout, arrangement of features and colour schemes, which was designed by Mr. Ravi Songirkar for the plaintiff for valuable consideration. The copyright in the artistic work in the get up is owned and registered in the name of the plaintiff vide registration No. A-65104/2003. 5. The plaintiff, it is stated, has invested a considerable amount of time, effort and resources in building up the image and reputation of the trademark/label mark "SHUBH" for the relevant product and has incurred substantial expense on publicity and sales promotion. The sales turnover figures of the plaintiffs "SHUBH" soyabean oil from 2001 till 2008 is set out in para 6 of the plaint as shown below:- Year Sales (in Rupees) 2001-2002 100,698,560.75 2002-2003 198,000,787.98 2003-2004 250,286,411.40 2004-2005 290,947,396.99 2005-2006 305,318,972.00 2006-2007 277,699,892.00 2007-2008 277,052,317.50 2008-(Apr to Oct 2008) 429,193,670.00 6. The sales turnover figures of the plaintiffs "SHUBH" soyabean oil from 2001 till 2008 is set out in para 6 of the plaint as shown below:- Year Sales (in Rupees) 2001-2002 100,698,560.75 2002-2003 198,000,787.98 2003-2004 250,286,411.40 2004-2005 290,947,396.99 2005-2006 305,318,972.00 2006-2007 277,699,892.00 2007-2008 277,052,317.50 2008-(Apr to Oct 2008) 429,193,670.00 6. In the month of September, 2008, the plaintiffs representative came across a refined soyabean oil being sold under the trade name "LABH" and in a polypack identical in get up, layout, arrangement of features and colour scheme, to the polypack of the plaintiff. As per the details given on the back of the polypack, the product was found to be packaged by the defendant No. 2, M/s. Suneet Industries, owned by the defendant No. 1. It is alleged that the packaging of the defendants' "LABH" soyabean oil is a startling and unabashed imitation of the plaintiffs packaging of its "SHUBH" soyabean oil. It is further alleged that the defendants' dishonest intention is also evident from the fact that they have adopted the trade name "LABH" for an identical product, knowing fully well that the word "LABH" is inherently complementary, inter-connected and inseparably used with the plaintiffs trade name "SHUBH" in cultural and religious context as "SHUBH LABH". 7. Despite service of summons, there was no appearance on behalf of the defendants, who were proceeded ex parte on 12.05.09. The plaintiff then filed ex parte evidence by way of affidavits of Shri Jay Ashar, PW-1 and Shri Sachin Dugad, PW-2. 8. PW-1, Shri Jay Ashar, Constituted Attorney of the plaintiff, tendered in evidence his affidavit by way of evidence exhibited as Exhibit PW1/A. Certified copy of the Board Resolution dated December 01, 2008 passed by the plaintiff authorizing PW-1 to give evidence in the present suit is exhibited as Exhibit PW1/1. Certified copy of fresh certificate of incorporation consequent upon change of name issued by Registrar of Companies is exhibited as Exhibit PW-1/2; Copy of certificate for use in legal proceedings dated 16.10.2008 in respect of the trademark in question is exhibited as Exhibit PW-1/3. Certified copy of TM-33 filed by the plaintiff before the Registrar of Trademarks to be recorded as subsequent proprietor of the trademark "SHUBH" is exhibited as Exhibit PW-1/4. Sample invoices of the sale of the product under the trademark "SHUBH" are exhibited as Exhibit PW-1/5. Certified copy of TM-33 filed by the plaintiff before the Registrar of Trademarks to be recorded as subsequent proprietor of the trademark "SHUBH" is exhibited as Exhibit PW-1/4. Sample invoices of the sale of the product under the trademark "SHUBH" are exhibited as Exhibit PW-1/5. Copy of Certificate of Registration in the packaging under registration No. A-65104/2003 is exhibited as Exhibit PW-1/6. Original polypack of plaintiffs product "SHUBH" and that of defendant's product "LABH" are exhibited as Exhibits PW-1/7 and PW-1/9 respectively. Print-outs from the internet pertaining to plaintiff company and its products under the trademark "SHUBH" are exhibited as Exhibit PW-1/8. 9. According to PW-1, the defendants have adopted the trademark "LABH" in respect of soyabean oil with a view to trade on the name and reputation of the plaintiffs trademark/label mark "SHUBH". Not only the word "SHUBH" and "LABH" are inherently complimentary and used inseparably in India in cultural and religious context, the packaging used by the defendants in respect of trademark "LABH" is identical to that of plaintiffs packaging under the trademark "SHUBH". The distinctive features of plaintiffs packaging, which constitute the artistic work registered under No. A-65104/2003 include a yellow and red colour scheme; placement of the trademark "SHUBH" in yellow colour in English and Hindi language respectively on red coloured oval devices in the upper and lower portions of the front panel; red polka on a yellow background on the reverse of the pack and two parallel arcs made from the top to the bottom with red polka dots on either side of the front of the pack. As per PW-1, the defendants have deliberately and dishonestly copied all the said features by replacing the trademark "SHUBH" with trademark "LABH" in order to derive an unfair advantage from the plaintiff company's trademark "SHUBH" by making a calculated and willful misrepresentation to the trade and consumers that the defendants' goods are those of the plaintiffs or in some manner connected with the plaintiffs. The adoption of the impugned trademark "LABH" and identical packaging by the defendants, it is contended, is an undisguised attempt to pass off their goods as those of the plaintiffs. 10. The adoption of the impugned trademark "LABH" and identical packaging by the defendants, it is contended, is an undisguised attempt to pass off their goods as those of the plaintiffs. 10. PW-2, Shri Sachin Dugad, in his affidavit by way of evidence, Exhibit PW-2/A, stated that in the last week of September 2008, he noticed that a refined soyabean oil by the name of LABH whose packaging was identical to the refined soyabean oil SHUBH was available in the market and on instructions from the plaintiff, he had purchased the LABH soyabean oil from a shop in Baramati, Pune, the packaging whereof has been exhibited as Exhibit PW-1/9. 11. On the basis of the aforesaid evidence, the learned counsel for the plaintiff submits that the adoption by the defendants of packaging identical to that of the plaintiffs in respect of identical goods is totally unjustifiable and unsustainable in law. The counsel for the plaintiff further claims that the adoption of identical packaging has caused monetary loss to the plaintiff and pecuniary damages be awarded in favour of the plaintiff and against the defendants. Reliance is placed by the counsel for the plaintiff on the following judgments to contend that the defendants cannot be allowed to evade liability by way of accounts by absenting themselves from the Court and in cases where defendants have been proceeded ex parte, the plaintiff has been entitled to punitive damages against the defendants: • Indian Performing Right Society Ltd v. Debashis Patnaik And Ors. 2007 (34) PTC 201 (Del.) • Himalaya Drug Company v. Sumit 2006 (32) PTC 112 (Del.) • Relaxo Rubber Limited And Anr. v. Selection Footwear And Anr. 1999 (19) PTC 578 (Del.) • L.T. Overseas Ltd. v.Guruji Trading Co. And Anr. 2005 (31) PTC 254 (Del.) • Hero Honda Motors Ltd. v. Shree Assuramji Scooters 2006 (32) PTC 117 (Del.) 12. This Court has heard th.i buraed counsel for the plaintiff and scrutinized the record. A look at the respective packaging of the plaintiff and the defendant, Exhibits PW-1/7 and PW-1/9, leaves no manner of doubt that the defendants have substantially reproduced the distinctive features plaintiffs packaging, which is certain to cause confusion or deception in the minds of potential customers who would be misled into buying the defendants' goods believing them to be those of the plaintiff. Though the adoption of tradename "LABH" per se does not amount to infringement of plaintiffs trademark "SHUBH", the defendants' act in adopting the packaging identical to that of the plaintiffs in respect of identical goods constitutes infringement of plaintiff s copyright therein, passing off, and acts of unfair competition. 13. Resultantly, the plaintiffs are held entitled to a decree of permanent injunction in their favour and the defendant No. 2, M/s. Suneet Industries, its owner (the defendant No. 1), its principal officers, agents, servants, dealers, distributors, and all other representatives are restrained from manufacturing, packing, selling, offering for sale, advertising or directly or indirectly dealing in soyabean oil or any other edible oil under the packaging which is identical to or substantial reproduction of plaintiffs' "SHUBH" packaging and are further restrained from printing or publishing any packaging or label which is identical to or substantial reproduction of plaintiffs' "SHUBH" packaging as may constitute passing off and/or infringement of plaintiffs copyright. 14. So far as the relief of damages is concerned, this Court has time and again awarded punitive damages in cases relating to infringement of trademark, copyrights, patents etc. in order to deter those who undermine the law and has also rightly held that the defendant who chooses to absent himself from the proceedings must suffer the consequences. Following observations made by a learned Single Judge of this Court in the case of Hero Honda Motors Ltd. (supra) are apposite: "18. I am in agreement with the aforesaid submission of learned counsel for the plaintiff that damages in such cases must be awarded and a defendant, who chooses to stay away from the proceedings of the Court, should not be permitted to enjoy the benefits of evasion of court proceedings. Any view to the contrary would result in a situation where the defendant who appears in Court and submits its account books would be liable for damages, while a party which chooses to stay away from court proceedings would escape the liability on account failure of the availability of account books. A party who chooses to not participate in court proceedings and stay away must, thus, suffer the consequences of damages as stated and set out by the plaintiff. Of course, this would not imply that the plaintiff would be entitled to any figure quoted by it which may be astronomical. The figure of Rs. A party who chooses to not participate in court proceedings and stay away must, thus, suffer the consequences of damages as stated and set out by the plaintiff. Of course, this would not imply that the plaintiff would be entitled to any figure quoted by it which may be astronomical. The figure of Rs. 5 lakhs as damages can hardly be said to be astronomical keeping in mind the nature of deception alleged by the plaintiff which not only causes direct loss to the plaintiff, but also affects the reputation of the plaintiff by selling sub-standard goods in the market where the public may be deceived in buying the goods thinking the same to be that of the plaintiff. There is a larger public purpose involved to discourage such parties from indulging in such acts of deception and, thus, even if the same has a punitive element, it must be granted. R.C. Chopra, J. has very succinctly set out in Time Incorporated^ case (supra) that punitive damages are founded on the philosophy of corrective justice. That was the case where the publishers of Time Magazine had come to Court and one of the factors which weighed while awarding punitive damages was that the readers had been sufferers of the infringement of the mark of the plaintiff. The only difference is that in the present case it is the consumer of the products of the plaintiff, who have suffered as a consequence of the infringement of the mark and logo of the plaintiff by the defendant. 19. The second aspect emphasized in Times Incorporated's case (supra) has also material bearing as the object is to relieve the pressure on over-loaded system of criminal justice by providing civil alternative to criminal prosecution of minor crimes. The defendant could have been prosecuted for such counterfeiting, but the plaintiff has considered appropriate to confine the relief to civil proceedings. 20. Learned counsel for the plaintiff also rightly points out that instead of the plaintiff utilising its energy for expansion of its business and sale of its products, the resources have to be spread over a number of such litigations to bring to book the offending traders in the market. In such a case, both compensatory and punitive damages ought to be granted apart from the costs incurred by the plaintiff in such litigation." 15. In such a case, both compensatory and punitive damages ought to be granted apart from the costs incurred by the plaintiff in such litigation." 15. In view of the aforesaid legal position, the plaintiffs are held entitled to punitive damages to the tune of Rs. 5 lakhs and also to the costs of the suit payable by the defendants. 16. CS (OS) 2628/2008 stand disposed of accordingly.