Full Judgment Text
*IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) No.135/2004
%18.12.2008 Date of decision: 18.12.2008
I.T.C. LIMITED ….Plaintiff
Through: Mr Sushant Singh, Advocate
Versus
M/S DEEPAK GARMENTS & OTHERS …. Defendants
Through: Ex parte.
CORAM :-
HON’BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. Whether reporters of Local papers may
be allowed to see the judgment? NO
2. To be referred to the reporter or not? NO
3. Whether the judgment should be reported
in the Digest? NO
RAJIV SAHAI ENDLAW, J.
1. The plaintiff engaged inter-alia in the business of branded
apparel under the trademark WILLS SPORT & JOHN PLAYERS
instituted this suit for permanent injunction against four
defendants for restraining them from dealing in garments bearing
the trademark WILLS SPORT & JOHN PLAYERS & ITC, in
combination or individually and for the ancillary reliefs of
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accounts, damages, delivery etc. Vide ex-parte order dated 17
February, 2004, the defendants were restrained from selling,
marketing or distributing the wearing apparel with the plaintiff‟s
trademarks and logos WILLS SPORT, JOHN PLAYERS & ITC or
any other trademark or logo deceptively similar to that of the
CS(OS) No.135/2004 Page 1 of 10
plaintiff‟s. The said order was made absolute during the pendency
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of the suit, vide order dated 17 January, 2007. The defendants
No. 1,2&4 on being served with the summons of the suit
separately filed their written statements. The defendant No.3,
however, failed to appear in spite of service and was vide order
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dated 29 March, 2006 proceeded against ex-parte. The plaintiff,
at the time of institution of the suit, had applied for registration of
trademark WILLS SPORT & JOHN PLAYERS and JOHN PLAYER
and during the pendency of the suit the said registration was
granted. The plaintiff applied for amendment of the plaint to
incorporate the said fact in the plaint and the application of the
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plaintiff for amendment was allowed on 29 March, 2006. The
defendants 1,2&4 did not file any written statement to the
amended plaint and adopted the written statements earlier filed by
them, to the amended plaint also.
2. On the pleadings of the plaintiff and the defendants
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No.1,2,&4, on 17 January, 2007, the following issues were
framed:-
“1. Whether the plaintiff is the proprietor of the trademark
and copyright in respect of WILLS SPORT, WILL SPORT
LOGO, JOHN PLAYERS in respect of readymade
garments, shirts, jeans, trousers, etc.?
2. Whether the defendants are passing off their goods as
that of the plaintiff?
3. Whether the defendants are infringing the trademark
and WILL SPORT and JOHN PLAYERS of the plaintiff?
4. Whether the defendants are infringing the logo in
respect of WILL SPORT amounting to infringement of
copyright of the plaintiff?
5. Relief.”
CS(OS) No.135/2004 Page 2 of 10
3. The defendants No.1,2&4 however also failed to appear
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thereafter and were vide order dated 15 November, 2007also
proceeded against ex-parte.
4. The plaintiff led ex-parte evidence by filing the affidavit by way
of examination in chief of its constituted attorney Mr. Rajiv Ohri.
The defendants remain ex-parte. The counsel for the plaintiff has
also filed synopsis for submissions.
5. Though issues as aforesaid were framed when the defendants
No.1,2&4 were contesting the suit but they also having been
proceeded against ex-parte, the issues need not be dealt with
separately.
6. The witness of the plaintiff has proved as Exhibit P1, the
registration certificates showing the plaintiff as the registered
proprietor of the device WILLS SPORT with „W‟, however, without
any right to the exclusive use of letter „W‟ or the word SPORT, in
relation to clothing, footwear, headgear for sale in India and for
export and also in relation to leather goods, accessories, animal
skins etc. of the word JOHN PLAYER for bleaching preparations and
other substances for laundry use etc. of the device WILLS SPORT,
with „W‟ for sporting equipment, games play things, supporting
articles, decorations etc. as well as for clothing, footwear, headgear
for sale in India and for export of the device JOHN PLAYER for
sporting equipment, games, gymnastics, without any right to the
exclusive use of the PLAYERS. It, thus, stands established that the
plaintiff is the registered proprietor of WILLS SPORT, WILLS
SPORTS LOGO & JOHN PLAYERS.
CS(OS) No.135/2004 Page 3 of 10
7. The plaintiff had approached this court on learning of the sale
of counterfeit WILLS SPORT & JOHN PLAYERS shirt, jeans,
trousers and other clothing at the premises owned by the
defendants. Though, it was the case in the plaint that the plaintiff
through a notary public had purchased the goods bearing infringing
trademark from the defendants but the said public notary was not
examined by the plaintiff. It was further the case of the plaintiff that
the inquiries of the plaintiff had revealed that the defendant No.1
M/s Deepak Garments functioning from 90 & 157, Sarojini Nagar
Market, New Delhi was the manufacturer and the fabricator of the
infringing goods, the said goods were being sold through the
defendant No.2 M/s Guru Nanak Trading Co. at shop No. 82,
Sarojini Nagar Market, New Delhi, and the defendant No.3 M/s
Mini Fashion Street at 199 Sarojini Nagar Market and the
defendant No.4 M/s Shanker Garments at Shop No. 77-A, Sarojini
Nagar Market, New Delhi. It was also the case of the plaintiff that
the defendant No.1 was also selling the infringing goods from its
shop in the market. It was on these pleas that the four defendants
were joined in this suit. That the defendant No.1 in its written
statement filed by Mr. Vinod Kumar Gupta, S/o Mr. Abdh Bihari
Gupta r/o 74/2, New Law Shashtri Nagar, Delhi (affidavit is
attached to written statement of defendant No.2) inter-alia stated
that there was no firm by the name of M/s Deepak Garments at
shop No.90 and averred that he was carrying on business of Dry
Cleaning in the name and style of M/s Blue Bird Dry Cleaners at
shop No.90, Sarojini Nagar Market, New Delhi. He denied the rest
of the contents of the plaint. The defendant No.2 M/s Guru Nanak
Trading Co. in its written statement filed through Mr. Iqbal Singh
S/o Mr. Mohinder Singh, R/o Flat No.148, Sarojini Nagar Market,
New Delhi as sole proprietor (affidavit attached to written
CS(OS) No.135/2004 Page 4 of 10
statement of defendant No.1) stated that no firm by the name of
Guru Nanak Trading Co. exists at shop No.82, Sarojini Nagar
Market, New Delhi and stated that in fact a tent house in the name
and style of M/s Guru Nanak Tent House under the proprietorship
of Mr. Iqbal Singh aforesaid was being run from shop No.82. He
further pleaded that he had given a part of the said shop No.82 on
rent to one Mr. Ajay Kumar S/o Late Mr. Kishori Lal R/o G-82/101A,
Paschim Vihar, New Delhi who was conducting his business of
selling garments from the said shop. The said Mr. Iqbal Singh also
denied the rest of the contents of the plaint. The defendant No.4
M/s Shankar Garments in its written statement filed through Mr.
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Dharmender Kumar S/o Mr. Sumar Mal R/o 11/15, 3 Floor, West
Patel Nagar, Delhi as sole proprietor denied the contents of the
plaint and denied having dealt with the trademark/device aforesaid
of the plaintiff.
8. The sole witness of the plaintiff in his deposition reiterated the
contents of the plaint with respect to the defendants and proved
nothing further. It is, however, significant that the plaintiff had
along with the suit filed an application for appointment of two local
commissioners to visit the premises of defendant No.1 M/s Deepak
Garments at 90 & 157, Sarojini Nagar Market and the premises of
the defendant No.2 M/s Guru Nanak Trading Co. at shop No.82,
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Sarojini Nagar Market. This court vide ex-parte order dated 17
February, 2004 appointed the local commissioners to visit the
aforesaid premises and to make an inventory of the goods carrying
the infringing trademarks and logo.
CS(OS) No.135/2004 Page 5 of 10
9. The local commissioner appointed to visit the premises of the
defendant No.1 M/s Deepak Garments at 90&157, Sarojini Nagar,
New Delhi filed a report stating the infringing goods were found
only in shop No.90 but not in shop No.157. The local commissioner
also mentioned having met one Mr. Ajay Kumar, an employee in the
said shop No.90 and an employee Mr. Kamal at shop No.157.
10. The local commissioner appointed to visit the premises of the
defendant No.2 M/s Guru Nanak Trading Co. at shop No.82
reported that on reaching the shop, one Mr. Ajay who introduced
himself as an employee was met in the shop; the said Mr. Ajay had
called Mr. Iqbal Singh described as the owner of the business; the
said Mr. Iqbal Singh co-operated and the local commissioner found
infringing goods which were left in the superdari of the said Mr.
Iqbal Singh only.
11. Though no objections to the aforesaid reports of the local
commissioner have been filed but the defendant No.2 M/s Guru
Nanak Trading Co. in its written statement stated that he had
described himself to the local commission as the owner of the
building and not as the owner of the business and the local
commissioner had forced him to sign the superdarinama. The
defendant No.1 in its written statement, however, did not deal with
the visit of the local commissioner.
12. From the aforesaid reports of the local commissioner, which
there is no reason to doubt, especially in the face of the defendants
CS(OS) No.135/2004 Page 6 of 10
having neither filed any objections thereto nor contested the same,
show that at least the aforesaid Sh. Iqbal Singh carrying on
business at 82, Sarojini Nagar Market, New Delhi and M/s Deepak
Garments carrying on business at 90, Sarojini Nagar Market were
indulging in the activities complained by the plaintiff and with
respect to which the suit for injunction has been filed. The presence
of the same person Mr. Ajay at the time of visit by the local
commissioners to both the premises also establish the common
connection at least between the defendants No.1&2. The plaintiff
has thus become entitled to the decree for injunction against the
defendants No.1&2.
13. As far as the defendants No.3&4 also are concerned, in view
of the unrebutted statement of the witness of the plaintiff, the
plaintiff has become entitled to injunction against them also. I may
record that the witness of the plaintiff has proved as Exhibit P-2,
the photographs of the plaintiff‟s products with the trademark and
device aforesaid of the plaintiff and as Exhibit P-4 the photographs
of the infringing products. From the perusal thereof it is evident
that the trademark, logo, trade dress of the plaintiff is being
counterfeited by the defendants. The witness of the plaintiff has
also purported to prove as Exhibit P-3 the affidavit of one Mr.
Rakesh Chhabra of having purchased the infringing goods from the
defendant No.3 at 199, Sarojini Nagar Market, New Delhi but the
deponent of the affidavit having not been examined, I do not
consider the said document to have been proved in accordance with
law.
14. As far as the relief of damages is concerned, for no explicable
reason the plaintiff while applying for appointment of local
CS(OS) No.135/2004 Page 7 of 10
commissioner did not apply for commissioner to be appointed with
respect to the premises of the defendants No.3&4. As aforesaid,
the witness of the plaintiff has also save to his bare statement not
led any evidence to show the constitution of the defendants No.3&4
nor expanded the case as set out in the plaint or in any further. I,
therefore, do not consider the plaintiff to have made out any case
for recovery of any damages from the defendants No.3&4.
However, as far as the defendant No.2 is concerned, though he has
in his written statement purported to explain the infringing goods
found in his shop by the local commission by pleading that the
business therein was being carried out by his tenant, neither has
the said stand been proved nor is it believable. The plaintiff has
thus become entitled to the relief of the damages against said Mr.
Iqbal Singh, proprietor of defendant No.2. Similarly the local
commissioner visiting the premises No.90, Sarojini Nagar Market,
New Delhi also found the infringing goods. The plaintiff had not
disclosed the constitution of M/s Deepak Garments. However, Mr.
Vinod Kumar Gupta, who has filed the written statement on behalf
of the defendant No.1 and who has claimed to be carrying on
business at 90, Sarojini Nagar Market, New Delhi is found to have
indulged in infringing goods, even though he has denied carrying on
business in the name and style of Deepak Garments and has
claimed to be carrying on business in the name of Blue Bird Dry
Cleaners in the said premises.
15. The counsel for the plaintiff has relied upon Microsoft
Corporation Vs. Yogesh Papat 2005 (30) PTC 245 (Del) where
this court has held that the plaintiff would be entitled to damages
for the reason that it would be futile to direct the defendants to
CS(OS) No.135/2004 Page 8 of 10
render accounts for the reason of the defendants carrying on
business surreptitiously. Similarly, in Time Incorporated Vs.
Lokesh Srivastava 2005 (30) PTC 3 (Del) also it was held that
wherein infringement is found, punitive damages should follow to
discourage such law breakers.
16. As aforesaid, the goods seized by the local commissioner,
were as directed given on Superdari to Mr. Iqbal Singh & Mr. Ajay
Kumar. The plaintiff is permitted to take the requisite steps for
taking the said goods from the superdar and for destruction of the
same.
17. Considering the nature of the goods, in the present case
namely garments which normally in the markets such as the
Sarojini Nagar are sold in the region Rs.300 to 500/-, and further
since the infringement is stated to have continued for a short
period, I deem it appropriate to award plaintiff punitive damages
against the aforesaid Mr. Iqbal Singh and Mr. Vinod Kumar Gupta
respectively in the sums of Rs.1 lac each.
18. The suit of the plaintiff is thus decreed for permanent
injunction in terms of para 46 (i) to (iii) of the plaint. A decree for
recovery of damages in the sum of Rs.1 lac each is also passed
against the aforesaid Mr. Iqbal Singh believed to be carrying on
business in name and style of defendant No.2 and Mr Vinod Kumar
Gupta believed to be carrying on business in the name and style of
CS(OS) No.135/2004 Page 9 of 10
defendant No.1. The plaintiff shall also be entitled to proportionate
costs from the defendants. Decree sheet be prepared.
RAJIV SAHAI ENDLAW
(JUDGE)
December 18, 2008
PP
CS(OS) No.135/2004 Page 10 of 10