HETTICH MARKETING UND-VERTRIEBS GMBH & ANR. vs. ANUSHKA GILL & ORS.

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* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ CS(OS) 229/2015

HETTICH MARKETING UND-
VERTRIEBS GMBH & ANR. ..... Plaintiffs
Through: Mr. Siddhant Chamda with Ms. Vaishali
Mittal, Advocates.

versus

ANUSHKA GILL & ORS. ..... Defendants
Through: None

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% Date of Decision: 12 July, 2017

CORAM:
HON'BLE MR. JUSTICE MANMOHAN

J U D G M E N T

MANMOHAN, J (oral):
1. The present suit has been filed for permanent injunction, restraining
passing off, damages, rendition of accounts and delivery up. The prayer
clause in the suit is reproduced hereinbelow:-
i. “An order for permanent injunction restraining the
Defendants, their partners or proprietor as the case may be,
their principal officers, servants and agents, distributors,
their sister entities and all other acting on their behalf, from
manufacturing, selling, offering for sale, advertising,
importing or exporting directly or indirectly dealing in any
manner with respect to furniture fittings and any cognate or
allied goods and services under the trademarks Quadro and
Innotech , or any other trademark deceptively similar
CS (OS) 229/2015 Page 1 of 9




thereto amounting to
a. Passing off of the Defendant‟s products and services as
those emanating from the Plaintiffs by using the
trademarks Quadro and Innotech or any other trademarks
deceptively similar thereto as set out in paragraph 28
above;
b. Dilution of the Plaintiffs‟ trademarks Quadro and
Innotech as set out in paragraph 29 above;
c. Unfair competition on part of the Defendant vis a vis the
Plaintiff‟s trademarks Quadro and Innotech as set out in
paragraph 29 above;

ii. An order for the delivery-up to the Plaintiffs of all goods of
the Defendants including the products, their packaging,
container, boxes, labels, wrappers, stickers, and stationery
or any other material of the Defendants bearing the
Plaintiffs‟ trademarks Quadro and Innotech ;

iii. A order for rendition of accounts of profits illegally earned
by the Defendant on account of use of the Plaintiff‟s
trademarks Quadro and Innotech, and a decree for the
amount so found be passed in favour of the Plaintiff;

iv. An order for damages; and

v. An order for costs in the present proceeding; and

Any other orders as this Hon‟ble Court may deem fit and proper
in the facts and circumstances of the present case”.

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2. On 28 January, 2015, this Court granted an ad interim ex parte order
restraining the defendants from manufacturing, selling, offering for sale,
advertising, directly or indirectly dealing in any manner including as part of
a domain name with furniture fittings, hardware products and/or any other
goods and/or services under the trademarks ‘Innotech’ and ‘Quadro’.
3. Since despite service, the defendants did not enter appearance, they
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were proceeded ex parte vide order dated 25 May, 2016.

CS (OS) 229/2015 Page 2 of 9




4. The relevant facts are that plaintiff No.1, Hettich Marketing and
Vertriebs GmbH is a company incorporated under the laws of Germany.
It is the registered proprietor of the trade mark HETTICH and
(HETTICH logo). Plaintiff No.1 commenced its operations in 1888 and
started manufacturing furniture fittings in 1928. Plaintiff No.2, HETTICH
India Pvt. Ltd., incorporated in India is a subsidiary of plaintiff No.1. It was
formed as a result of a joint venture agreement between a group company of
plaintiff No.1 and another Indian Company.

5. Today, plaintiffs and their Hettich Group of Companies are stated to
be global leaders in the furniture fitting industry and have a wide product
range including drawer systems, telescopic channels etc.
6. The present suit concerns two trade marks of the plaintiffs, namely,
INNOTECH (used in relation to drawer systems) and QUADRO (used for
runner extensions for furniture fittings). These marks have been adopted
and used by the plaintiffs since 1995 and 1980 respectively and the
applications filed in India for these trade marks are as follows:-

7. Plaintiffs have also secured numerous registrations for these trade
marks in several countries of the world. Evidence has been led in support of
registration of QUADRO in twelve countries and that of INNOTECH in
nine countries respectively. Plaintiffs have also secured registrations in other
countries for these marks. While Ex.PW1/10 (Colly) are International
CS (OS) 229/2015 Page 3 of 9




registration certificates for the marks in question; Ex.PW1/19 is an
application for registration of the mark QUADRO in India and Ex.PW1/18
is application for registration of the mark INNOTECH in India.
8. Defendant No.3 and defendant No.4 are sister concerns engaged in the
hardware furniture industry. Defendant No.1 is the business head of
defendant No.3, while defendant No.2 is the Director of defendant No.4
company.
9. Mr. Siddhant Chamda, learned counsel for plaintiffs states that the
plaintiffs have taken steps towards promoting and advertising their furniture
fittings under the said trade marks. Documents in support of such
promotional activities relied upon by him are as follows:-
(i) Ex.PW1/14 (Colly) - plaintiffs' brochures advertising their
products INNOTECH and QUADRO for furniture fittings.

(ii) Ex.PW1/15 (colly) - Catalogues, diaries and other
promotional material of the plaintiffs in relation to their
QUADRO and INNOTECH products.

10. Consequently, according to him, plaintiffs' products under these trade
marks enjoy tremendous goodwill and reputation amongst the consuming
public, so much so that these marks are associated solely and exclusively
with the plaintiffs. According to him, the numerous positive reviews and
recognition of plaintiffs' products under these marks stand testament to such
goodwill. He, in particular, relies upon Ex.PW1/16 which is an extract from
the website www.larson.co.za and Ex.PW1/17 which is an article published
in Panel, Wood and Solid Surface.
11. Mr. Siddhant Chamda also states that the plaintiffs have made
extensive sales of these products in India. He states that in 2014, plaintiffs
CS (OS) 229/2015 Page 4 of 9




earned revenues of INR 35 crores and INR 28 crores from the sale of
QUADRO and INNOTECH respectively. Therefore, according to him, the
extensive market presence and goodwill enjoyed by the plaintiffs under
these trade marks stand to suffer harm and injury through actions of third
party entities who misuse these trade marks for their products. Documents
in support of sales made by plaintiffs are Ex.PW1/20 (colly), Ex.PW1/21
(colly) and Ex.PW1/22 (colly).
12. Mr. Siddhant Chamda states that the plaintiffs first learnt of
defendants in October, 2014 and their use of QUADRO and INNOTECH
marks for furniture fittings.
13. Mr. Siddhant Chamda points out that plaintiffs had purchased a
product under the mark QUADRO from defendants as well as catalogues
and price lists which show the use of both the trade marks in relation to
furniture fittings. These products were also advertised on third party
websites by the defendants. Documents filed in support of the same are
Ex.PW1/23, Ex.PW1/24 and Ex.PW1/25.
14. Mr. Siddhant Chamda states that plaintiffs had addressed cease and
desist letters to the defendants requiring them to stop making use of the
plaintiffs' trade marks. The defendants admitted the plaintiffs' proprietary
rights and assured that references to these marks will be removed from third
party websites as well as their brochures and other stationery. He, however,
states that the defendants did not act upon these assurances and misuse of
the plaintiffs' trade marks continued on third party websites.
15. He states that a visit to the defendants' premises in January 2015
confirmed that defendants were continuing to use the QUADRO trade mark
and were making sales of products despite having assured the plaintiffs
CS (OS) 229/2015 Page 5 of 9




otherwise. In support of his contention, he relies upon Ex.PW1/27 which is
the correspondence exchanged between the parties before the suit and
Ex.PW1/29 which is an extract from a website showing continued
advertisement of the mark QUADRO despite assurances given by
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defendants and sale invoice dated 19 January, 2015 wherein the runner
extension has been mentioned as Sairento but the product bears the label
QUADRO.
16. Having heard learned counsel for the plaintiffs and having perused the
paper book, this Court is of the view that the plaintiffs have satisfied the test
for passing off, as the plaintiffs have established the existence of goodwill
and reputation in their trademarks as well as misrepresentation by the
defendants, inasmuch, as though the defendants admitted plaintiffs'
proprietary rights in the trade marks, yet they chose to continue misusing
them commercially. Consumers were bound to be confused into thinking
that defendants' products emanate from the plaintiffs since the marks were
used for identical good (QUADRO for runner extensions and INNOTECH
for drawer systems), which cater to the same class of customers.
17. Also damage has been caused to plaintiffs as not only would
consumers be mistaken into purchasing the defendants' products (leading to
a shrinking market size for plaintiffs), but any dissatisfactory performance in
quality of defendants' products would also be attributed to plaintiffs. (See
Ex.PW1/30).
18. This Court is also of the view that defendants abovementioned actions
as well as their wilful misuse of plaintiffs' marks despite assurances to the
contrary, amounts to unfair competition.

CS (OS) 229/2015 Page 6 of 9




19. The fact that defendants chose not to enter appearance in the suit
despite receipt of summons as well as having written to plaintiffs' counsel
complaining against the filing of the present lawsuit also goes against them.
20. Consequently, the plaintiffs are entitled not only to compensatory
damages, but also to punitive damages owing to the defendants illegal acts
of passing off and infringement.
21. In fact, this Court in Disney Enterprises, Inc. Vs. Mr. Rajesh Bharti
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& Ors., CS (OS) 1878/2009 decided on 13 February, 2013 has held as
under:-
“16. Further, this Court in Microsoft Corporation Vs.
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Rajendra Pawar & Anr., CS(OS) 530/2003 decided on 27 July,
2007 has held “Perhaps it has now become a trend of sorts,
especially in matters pertaining to passing off, for the defending
party to evade court proceedings in a systematic attempt to
jettison the relief sought by the plaintiff. Such flagrancy of the
defendant‟s conduct is strictly deprecatory, and those who
recklessly indulge in such shenanigans must do so at their peril,
for it is now an inherited wisdom that evasion of court
proceedings does not de facto tantamount to escape from
liability. Judicial process has its own way of bringing to tasks
such erring parties whilst at the same time ensuring that the
aggrieved party who has knocked the doors of the court in
anticipation of justice is afforded with adequate relief, both in
law and in equity. It is here that the concept of awarding
punitive damages comes into perspective.”
17. This Court is also of the view that before award of
damages it is not necessary that the plaintiff must show some
particular benefit has accrued to the defendant or that the
plaintiff must satisfy the Court by leading evidence that it has
suffered actual loss. In Microsoft Corporation Vs. Ms. K.
Mayuri & Ors., 2007 (35) PTC 415 Del. , this Court has held
“The practice of grant of exemplary damages needs to be
strengthened particularly in those cases where flagrant
CS (OS) 229/2015 Page 7 of 9




infringement is found. Such an exercise of power is not to be
fettered by any requirement that the plaintiff must show some
particular benefit which has accrued to the defendant or that the
plaintiff must satisfy the court by leading evidence that he has
suffered actual loss. In a case where the plaintiff proves such
actual loss, he would be entitled to the same. However, even
without such a proof, in case of flagrant infringement, the court
has the complete discretion to make such award of damages as
may seem appropriate to the circumstances, so that it acts as
deterrent. In some cases, it is not possible to prove the actual
damages, namely, that there is a normal rate of profit or that
there is a normal or establish licensed royalty. Yet, clearly, the
damages have to be assessed.”
18. In Disney Enterprises Inc. & Anr. Vs. Harakchand
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Keniya & Ors., CS (OS) 1254/2007 decided on 24 October,
2011 wherein the defendants were engaged in selling the
counterfeit party hats and other party decoration products
bearing the DISNEY characters, this Court while stating that the
plaintiffs are the proprietor of the trademark in question and the
said trademarks have been infringed by the defendants, awarded
damages to the tune of Rs. 2,00,000/- against the defendants.
19. In fact, punitive damages have the effect of deterring not
only the defendant from repeating the offence, but also deterring
others from committing the same, preserving peace, inducing
private law enforcement; compensating victims for otherwise
uncompensable loss and payment of the plaintiff‟s counsel fees.
In Time Incorporated Vs. Lokesh Srivastava & Anr., 2005 (30)
PTC 3 (Del.) while awarding punitive damages of Rs. 5 lakhs in
addition to compensatory damages also of Rs. 5 lakhs, Justice
R.C. Chopra observed that “time has come when the Courts
dealing in actions for infringement of trademarks, copy rights,
patents etc., should not only grant compensatory damages but
also award punitive damages with a view to discourage and
dishearten law breakers who indulge in violation with impunity
out of lust for money, so that they realise that in case they are
caught, they would be liable not only to reimburse the aggrieved
party but would be liable to pay punitive damages also, which
may spell financial disaster for them.” In the said case the court
CS (OS) 229/2015 Page 8 of 9




held that the defendants‟ magazine which used the Hindi
translation of the word „Time‟ with the distinctive red border,
was a slavish imitation of the plaintiff‟s trademark and held the
defendants are liable for infringement.”

22. Accordingly, the present suit is decreed in accordance with para
34(i)(a) as well as cost assessed by the plaintiff in its cost form. The
plaintiffs are also held entitled to compensatory damages of Rs.50,000/- and
punitive damages of Rs.50,000/-. Registry is directed to prepare a decree
sheet accordingly.

MANMOHAN, J
JULY 12, 2017
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CS (OS) 229/2015 Page 9 of 9