w w w . L a w y e r S e r v i c e s . i n

H.T. Media Ltd. & Another v/s Susheel Kumar & Others

    Civil Suit (Comm) No. 323 of 2018 & Interlocutory Application No. 11071 of 2014

    Decided On, 22 May 2018

    At, High Court of Delhi


    For the Appearing Parties: Dhavish Chitkara, Advocate.

Judgment Text

1. The plaintiffs have filed this suit for permanent injunction, infringement of trademark, passing off, damages, rendition of accounts against the defendants.

2. The brief facts leading to the filing of this suit, as alleged, are:-

a) the Plaintiff No.1 being a media house engaged in the business of print media, radio and internet services enjoys a leadership position in the English and Hindi Newspaper market. The Plaintiff No.2 being a subsidiary of the Plaintiff No.1, acquired and adopted the domain name "SHINE.COM" by Mr.Alan Rambam;

b) the Plaintiffs are the registered proprietors of the Trademarks "SHINE" and "SHINE.COM". The Plaintiffs have filed Trademark Applications in the relevant classes;

c) the defendants No.1, 2 and 3 are the entities/companies engaged in the business of providing education, training, jobs via the website, wwwclick2shine.com, wwwsuccess4career.in and wwwsuccess4career. Defendants No.4 & 5 are operating and managing the said domain name, thereby infringing the Plaintiffs' Trademark and passing off their services as that of the Plaintiffs by adopting/using the aforesaid websites;

d) an ad-interim ex-parte injunction order was passed by this Court on 30.05.2014 in favor of the Plaintiffs and against the Defendants;

e) the Defendant No.5 is himself the subscriber of the Plaintiffs. After taking knowledge of the Plaintiffs' database and the proprietary information, the Defendants have willfully deceived the other subscribers of the Plaintiffs, representing themselves to be the associate/affiliate of the Plaintiffs and made false promises of confirmed job opportunities in various multinational companies;

f) upon receiving the knowledge of the Defendants' domain name "CLICK2SHINE.COM", the Plaintiffs sent a Legal Notice dated 28.01'.2014. Upon receipt of the said notice, the Defendants ceased to use the domain name and deactivated the website;

g) in April 2014, the Plaintiffs found the Defendants have restored the website wwwclick2shine.com and it again sent a Legal Notice dated 23.04.2014 calling upon the Defendant No.4 to cease and desist from using the mark "CLICK2SHINE" in any manner;

h) the Defendants have made money upon the expense of the Plaintiff by charging money from the interested subscribers. Further, for the purposes of computation of damages the Plaintiffs have placed reliance on the vast sums of money on the promotion of the Trademark "SHINE" and "SHINE.COM"

i) the Plaintiffs' have also stated that irreparable damage have been caused to the Plaintiffs' goodwill and reputation. The Plaintiffs have further pleaded for damages suffered in consequence to the same have amounted to a total sum of '20.00 Lac;

j) the Defendants are also liable to pay punitive damages for the obvious and willful infringement of the Plaintiffs' Trademark for its contemptuous conduct; hence this suit.

3. Upon due service by way of publication in Hindustan Times Newspaper the defendants were proceeded ex parte and matter was posted for ex parte evidence vide order dated 04.08.2017.

4. During the course of evidence, the plaintiff has examined sole witness PW1 Shri Anup Sharma who tendered his affidavit of evidence as Ex.PW1/A and relied upon the documents Ex.PW1/1 to Ex.PW1/17 wherein the documents Ex.PW1/5 de-exhibited and marked as Mark A being the photocopy.

5. Before proceeding further, let me go through the documents exhibited by the witness. Ex.PW1/1 and Ex.PW1/2 are the copies of power of attorney by the plaintiffs No.1 & 2 respectively in favour of the witness - Shri Anup Sharma; Ex.PW/3 and Ex.PW1/4 is the power of attorney by both the plaintiffs respectively at the time of filing of this suit; Ex.PW1/5 has been de exhibited and marked as Mark A for want of original; Ex.PW1/6 is the registration certificate bearing Nos.1672387 and 1672389 in favour of the plaintiffs; Ex.PW1/7 is the status of above registration numbers on the Trademark Website; Ex.PW1/8 is the copy of order passed by this Court on 18.04.2013 for restructuring and arrangement between the plaintiffs No.1 & 2; Ex.PW1/9 is extract of impugned website used by the defendants; Ex.PW1/10 is the legal notice dated 28.01.2014 sent to the defendants; Ex.PW1/11 is the online inactive status of the defendants' web addresses; Ex.PW1/12 and Ex.PW1/13 are the online status of the different domain names of the defendants; Ex.PW1/14 is the customer service agreement between the plaintiffs and defendant No.5; Ex.PW1/15 is the legal notice dated 23.04.2017 issued to the defendant No.5; Ex.PW1/16 are the documents regarding goodwill and reputation of the plaintiffs; and Ex.PW1/17 is the requisite certificate under Section 65B of the Indian Evidence Act, 1872 pertaining to the different electronic records in the form of printout, copies and extracts of records as mentioned above.

6. The acts of the defendants in adopting and using the identical/ deceptively similar impugned mark and web address in respect of identical services has caused and will continue to cause ir-repairable damage and loss to the plaintiffs business. Further, the impugned website which forms a part of their trading name, infringes the rights of the plaintiffs under Section 29 (5) of the Act. The defendants are rather dealing in the services which are identical to the services of the plaintiffs.

7. It is also settled law in infringement cases, if the defendant's mark is closely, visually and phonetically similar, then no further proof is necessary as held in Kaviraj Pandit Durga Dutt Sharma vs Navarattana Pharmaceutical Lab, (1965) AIR SC 980.

8. In Mex Switchgears Pvt Ltd vs Max Switchgears Pvt Ltd CS (OS) 1299/2013 this Court observed that the essential features of rival marks are to be considered in determining infringement.

9. From the perusal of the record above, the plaintiffs have been able to prove the defendants adoption and using of counterfeit domain name or registered trademark, trade dress, deceptively similar domain name, unequivocally amounts to the infringement of the plaintiffs registered domain name, trademark, trade dress etc and amounts to passing of their goods and business as this is without authorization/affiliation by the plaintiffs and hence, the plaintiffs is entitle to a decree for reliefs prayed in sub paras (a) to (d) of prayer clause (para No.28)of the plaint viz.:-

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 anyone claiming under them from in any manner whatsoever, using the mark "CLICLK2SHINE" 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 or any other products or services thereby amounting to infringement of trademark and/ or passing off;

b) 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 anyone claiming under them from directly or indirectly using the proprietary data arid information, in any manner, and reproducing the same, thereby amounting to infringement of the copyright of the Plaintiff residing in the literary work;

c) an order of permanent injunction directing transfer of the domain name/website located at the URL wwwclick2shine.comin favour of the Plaintiff;

d) 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 anyone claiming under them from using the proprietary information/ data of the plaintiff, in any manner, including on its websites wwwsucess4career.in and wwwsuccess4career.com. provided under the customer services agreement dated 26.12.2013;.

The suit is decreed against the defendants in terms of prayers above.

10. The plaintiffs have also suffered immense loss to goodwill and reputation and hence are entitled to a grant of damages not only in terms of compensatory damages but also in the form of punitive damages.

11. The learned counsel for the plaintiff on the issue of punitive and compensatory damages has relied upon Hindustan Unilever Limited vs. Reckitt Benckiser, (2014) 207 DLT 713 wherein reliance was placed on Rookesv Barnard, (1964) 1 AllER 367.

12. It is also submitted the Court must also grant punitive damages taking into account the mala fide conduct of the defendants, which is clearly not proportional to the quantum of actual damages that the plaintiffs have proven through documentary evidence filed in the suit on the following factors viz defendants despite service, chose not to contest the present proceedings; and it has been in contempt of the injunction order dated 30.05.2014 and have using the impugned online websites.

13. Besides above the learned counsel for plaintiffs have claimed the rendition of accounts of profit illegally earned by defendants or in the alternate damages to the extent of '20.00 Lac. The plaintiffs are also concerned with the punitive damages and relied upon Jockey International Inc & Anr vs. R. Chandra Mohan & Ors, (2014) 211 DLT 757 which read as under:-

"43. I am in agreement with the aforesaid submission of learned counsel for the plaintiffs that damages in such cases must be awarded and a defendants, 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 a defendants who appears in Court and submits its account books would be liable for damages, while another defendants who, chooses to stay away from court proceedings would escape the liability on account of failure of the availability of account books. A party who chooses not to participate in court proceedings and stays away must, thus, suffer the consequences of damages as stated and set out by the plaintiffs. 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 elemen

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t, it must be granted. R.C. Chopra, J. has very succinctly set out in Time Incorporated's case that punitive damages are founded on the philosophy of corrective justice." 14. Under the given facts and circumstances of this case where the defendants reclused themselves from the proceedings, cannot be permitted to enjoy the benefits of evasion or covert priorities as has been using the domain websites and have been infringing the plaintiffs' trademark certainly makes the defendants liable to pay the damages to the plaintiffs. Hence, a decree for a sum of '10.00 Lac in favour of the plaintiffs and against defendants, is passed on account of infringing the registered marks, trade dress and violating interim order. The plaintiffs shall also be entitled to interest @ 10% pa on the damages so awarded from the date of filing of the suit till the date of realisation. Costs of the suit is also awarded to the plaintiffs and against the defendants. The defendants are jointly and severally liable to pay the damages and costs to the plaintiffs. Decree Sheet be drawn. IA No.11071/2014 15. In view of above order, the application stands disposed of.