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HT Media Limited & Another v/s K. Satish Kumar & Another

    CS.(COMM). No. 372 of 2018

    Decided On, 30 May 2018

    At, High Court of Delhi

    By, THE HONOURABLE MR. JUSTICE MANMOHAN

    For the Plaintiffs: Dhavish Chitkara, Advocate. For the Defendants: None.



Judgment Text

Oral:

1. Present suit has been filed for permanent injunction restraining infringement of trademark, copyright, passing off, unfair business practice, rendition of accounts, damages, etc. The prayer clause in the suit is reproduced hereinbelow:-

'a) Pass a decree of permanent injunction restraining the Defendants, their Directors, principal Officers, Partners, Proprietors, financers, Domain keepers, Publishers, editors, employees, reporters, servants, agents and/or any one claiming under them from, in any manner whatsoever, using the mark 'FRESHERSHINE' or any deceptive variant thereof which is identical and/or similar to the Plaintiffs trademark 'SHINE' and 'SHINE.COM', in respect of their online job portal services, linkedin, google plus page, other social media accounts and/or any other products or services;

b) An order of permanent injunction directing stop the operation and transfer of the domain name/website located at the URL www.freshershine.com, www.freshershine.net and www.freshershine.in or any other identical or similar domain name operated by Defendants’ in favour of the Plaintiff;

c) An order of Rendition of Accounts of profits illegally earned by the Defendants by reason of passing off the online job portal services and/or business/services as those of the Plaintiff’s and a decree be passed against the Defendants in the exact sum of the amount so ascertained;

d) An order of Decree of Damages of Rs. 20,00,100/- be passed in favour of the Plaintiff and against the Defendants, running from such date as this Hon’ble Court may deem fit and proper;

e) An order of legal costs and costs of the present proceedings be awarded in favour of the Plaintiff and against the Defendants;'

2. At the outset, learned counsel for plaintiffs gives up prayers (c) and (d) of the plaint. The statement made by learned counsel for plaintiffs is accepted by this Court and the plaintiffs are held bound by the same.

3. Since the defendants neither appeared despite service nor filed the written statement, the defendants were proceeded ex parte on 14th March, 2018.

4. In the plaint, it has been averred that the plaintiff no.1 is a leading media house of the country engaged in print media, radio, internet etc., and that the plaintiff no.2 is a subsidiary of the plaintiff no.1. It is stated that the plaintiff no.2 acquired the domain name 'SHINE.COM' in the year 2007 and formally launched the website in 2008, and has since continued to use the trademark 'SHINE' with respect to recruitment services. It is stated that the trademarks 'SHINE.COM' and 'SHINE' have been registered under various classes with the registrar of trademarks. It is further stated that within five years of the launch of the website www.shine.com by the plaintiff, it had crossed 10 million registered candidates.

5. It is stated that the trademark 'SHINE' is an arbitrary trademark with regard to recruitment services thereby making the aforesaid trademark a distinctive one. It is stated that by the virtue of the extensive use, the trademark 'SHINE' is exclusively associated with the plaintiffs.

6. It is averred in the plaint that the plaintiffs had a turnover of Rs. 2,405 lacs for the year 2013-14. It is further stated that the plaintiffs have been continuously advertising and promoting its said trademark and the expenditure on advertising and promotion for the year 2013-14 was Rs. 2,168 Lacs.

7. Mr. Dhavish Chitkara, learned counsel for the plaintiffs states that in April, 2014, the plaintiffs through their business/marketing team learnt that the defendant no.2 had launched an online job portal services under the name 'FRESHERSHINE'. In fact, defendant nos.1 & 2 are entities/companies engaged in the business of providing education, training, jobs via the website www.freshershine.com, www.freshershine.in and www.freshershine.net. Mr. Dhavish Chitkara states that the plaintiffs entered into an arrangement with the defendants, whereby the traffic of the website www.freshershine.com was diverted to the plaintiffs’ website www.shine.com.

8. Learned counsel for the plaintiffs states that subsequent to entering into the abovementioned arrangement, the plaintiffs received enquiries from market sources seeking to know if the plaintiffs have any association and /or affiliation with the defendants. Realising the confusion being caused by the website of the defendants, plaintiffs immediately ceased to have any relationship with the defendants and thereafter issued a legal notice dated 15th September, 2014, to the defendants calling them to cease and desist from using the mark 'SHINE' in any manner. He further states that upon receiving the legal notice, the defendants on 30th September, 2014 sent a reply informing the plaintiffs that the defendants are providing services under mark 'FRESHERS HINE' and not 'FRESHER SHINE'. Plaintiffs sent a rejoinder to the reply to the legal notice on 14th October, 2014 informing about the blatant adoption of the mark 'FRESHERSHINE' by the defendants.

9. Learned counsel for the plaintiffs states that the malafides of the defendants are clear as on receipt of the cease and desist notice, the defendants changed its mark and removed the first letter 'S' from the word 'SHINE' and placed the same at the last of the word 'FRESHER' thereby presenting as 'FRESHERS HINE'.

10. The plaintiffs have filed their ex-parte evidence by way of affidavit of Mr. Anup Sharma (PW1), to prove the facts in the plaint.

11. The PW1 has proved the registration certificates/applications of the plaintiffs’ trademarks as Ex.PW1/7(Colly).The PW1 has proved documents reflecting goodwill, reputation and use of the trademark 'SHINE' and 'SHINE.COM' as Ex PW1/9.

12. Having heard learned counsel for plaintiffs as well as having perused the papers, this Court is of the opinion that in view of the registrations of the plaintiffs’ mark as well as extensive use over substantial period of time of the said marks, the plaintiffs’ have acquired reputation and goodwill in the marks in question in India.

13. From the evidence on record, it is apparent that without any explicit permission or authorization to use the plaintiffs’ trademark, the defendants have infringed the trademarks 'SHINE' and 'SHINE.COM' of th

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e plaintiffs. Further, as the plaintiffs’ evidence has gone unrebutted, said evidence is accepted as true and correct. 14. Consequently, the use of that the trademarks 'SHINE' and 'SHINE.COM' by defendants amounts to infringement of copyright as well as passing off of plaintiffs’ trademark. The use of the impugned mark by the defendants has caused loss and injury to the plaintiffs and immense public harm. 15. Accordingly, present suit is decreed in accordance with the paragraph 25(a), (b) and (e). The cost shall amongst others include the lawyers’ fees as well as the amounts spent on purchasing the court fees. Registry is directed to prepare a decree sheet accordingly.
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