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Royal Biscuits Private Limited, Plaintiff v/s Sethi Bakers and Confectioners, Defendant

    I.A.'s Nos. 3445 of 1990 and 6743 of 1991 in Suit No. 1024 of 1991

    Decided On, 30 August 1991

    At, High Court of Delhi

    By, THE HONOURABLE MR. JUSTICE P.K. BAHRI

    For the Appearing Parties : K. G. Bansal, S. K. Bansal, K. R. Chawla, Kirti Uppal, Advocates.



Judgment Text

Mr. P. K. Bahri, J.


For the At the outset, I may mention that Counsel for defendant has stated that the application filed under Order 39 Rule 4 C.P.C. by the defendant be treated as a reply to the application filed by the plaintiff (I.A. 3445/91) and both the applications may be disposed of together.


2. I have heard arguments for deciding these two applications.


3. Plaintiff has instituted the present suit seeking permanent injunction restraining the defendant from manufacturing selling, offering for sale, advertising and displaying directly or indirectly dealing in biscuits and other allied goods under the trade mark "ROYALTY" logo, packing labels or any other trade mark or packing label identical with or deceptively similar to the plaintiff's trade mark "ROYAL" logo and its label and for other reliefs flowing from the same cause of action. The case set up by the plaintiff, in brief, is that plaintiff company is the proprietor of trade mark "ROYAL" on account of its adoption and continuous user since 1982 in respect of manufacture and sale of biscuits. The plaintiff also claims to be the owner and proprietor of "ROYAL" labels being used by the plaintiff for the purpose of packing the biscuits and the said labels are stated to have a distinctive get up, make up, colour scheme and lettering style. It is pleaded that the plaintiff has been invariably using the devise of bust portrait of the Prince wearing a crown inside the circles in those labels and plaintiff pleaded that the art work involved in the said labels together with the composition of the colour scheme are original in character and a copyright has been obtained in respect of the same by getting it registered under the Indian Copyright Act, 1957. The specimen of the plaintiff's labels were filed as Annexure 'A' and 'B' with the plaint. The plaintiff claimed that its business has been very extensive one and the goods of the plaintiff under the said trade mark packed in the said labels have been sold and distributed in major parts of the country including the States of Jammu and Kashmir, Himachal Pradesh, Punjab, Haryana, U.P., Rajasthan and Union Territories of Delhi and Chandigarh. It is also pleaded that the plaintiff's trade mark "ROYAL" has been duly registered under the Trade and Merchandise Marks Act, 1958, since February 16, 1982.


4. So, plaintiff pleaded that the said trade mark as well as the get up, make up, colour scheme and lettering style of the labels have already become distinctive and associated with the aforesaid goods of the plaintiff on account of their long, continuous, exclusive and extensive user of the goods bearing the said trade mark packed in said labels stand associated with the name of the plaintiff as coming from the source of the plaintiff and have achieved lot of reputation in the market as standard quality goods. The plaintiff has then given the figures of the sales of the year 1982 to 1990 in para 7 which are substantial. Presently, the sales of the plaintiff are to the tune of Rs. 2, 63, 18, 012.49 paise for the year 1989-90. The plaintiff also claims to have widely advertised said trade mark and labels in different newspapers, trade magazines and thus, the said trade mark and the labels are stated to have become synonym with the business of the plaintiff.


5. It is pleaded that the defendant has recently set up his business of manufacturing and selling the biscuits and defendant has deliberately adopted the trade mark "ROYALTY" and had also adopted the similar labels as that of the labels of the plaintiff with a view to take undue advantage of the reputation of the plaintiff earned in the trade, by using the trade mark "ROYALTY" and the said labels. It is pleaded that the defendant's trade mark "ROYALTY" is phonetically and visually similar to the trade mark "ROYAL" of the plaintiff and similarly, the labels of the defendant are also similar to the labels of the plaintiff in its get up, make up, colour scheme and lettering style and also in the depiction of the bust portrait of a Prince wearing a crown inside the circle. So, it is pleaded that the unwary customers, who are ordinary persons, are bound to be misled in purchasing the goods of the defendant under the said trade mark and the labels thinking them to be the goods of the plaintiff which are of high quality, and thus it is pleaded that the defendant had not only infringed the registered trade mark and the copyrights of the plaintiff by adopting the said trade mark 'ROYALTY' and having the similar labels but is also guilty of passing off his goods as those of the plaintiffs with a view to earn high profits for defendant's goods.


6. Alongwith the suit, an application was given for grant of temporary injunction and at the time of the admission of the suit, a temporary injunction was granted restraining the defendant from distributing, selling or advertising its biscuits or other alied goods under the trade mark "ROYALTY" logo and under the labels which are similar to the trade mark and labels of the plaintiff or which are deceptively similar to the plaintiff's trade mark and the labels.


7. The defendant filed the application under Order 39 Rules 4 seeking vacation of the stay order. It is pleaded by the defendant that no part of the cause of action has accrued within the territorial jurisdiction of Delhi Court, so this Court has no jurisdiction to deal with the matter and that plaintiff is guilty of concealing material facts and thus, the Court should vacate the ex-parte injunction. It is pleaded that defendant firm is a partnership firm having its business from Chandigarh and defendant is carrying on the said business for the last 20 years and that the plaintiffs trade mark "ROYAL" is not registered with any device of bust portrait of a Prince wearing a crown inside the circle whereas the defendant has been using the logo "ROYALTY" with the bust portrait of a woman from June 1989. It is controverted by the defendant that there was any similarity of the trade mark and the labels of the defendant with the trade mark and labels of the plaintiff. It is also pleaded that there was no originality in the art work of the label of the plaintiff and no copyright could be obtained by the plaintiff in respect of the said label. Plea is taken that defendant has adopted its trade mark under the bona fide belief that its trade mark does not violate the registered trade mark of the plaintiff and a report was also obtained in this respect from the Registrar of the Trade Mark.


8. Now the first question to be decided is whether the plaintiff has a prima facie case to show that Delhi Courts have terriorial jurisdiction to try the suit. The Counsel for plaintiff has pointed out that before filing the suit, a legal notice was served on the defendant in which plaintiff had clearly averred that the defendant is marketing and selling its goods in Delhi and this fact was not controverted by the defendant in its reply given to the notice. So, he has argued that keeping in view these facts and also the averments of the plaintiff in the plaint that defendant is carrying on business in Delhi by marketing the goods in Delhi, the Delhi Courts have territorial jurisdiction to try the suit.


9. Learned Counsel for defendant, on the other hand, has argued that plaintiff has not placed any material on the record which could show that defendant had ever marketed its goods in Delhi and he has argued that mere fact in reply to the notice the defendant did not controvert the averments of plaintiff made in the notice that defendant was selling the biscuits in Delhi, does not mean that defendant is estopped from asserting this fact now. It is not the question of defendant being estopped from taking any plea in the pleadings. The question is of deciding the point at the initial stages in order to see that the plaintiff has prima facie case. So, keeping in view these facts, I hold that plaintiff has been able to show prima facie that Delhi Courts have territorial jurisdiction to try the suit in view of defendant not controverting this fact in reply to the notice that defendant is carrying on business at Delhi. It has also been argued by learned Counsel for plaintiff that under Section 62(2) of the Copyright Act, the plaintiff, who is carrying on business at Delhi, can bring the suit for infringement of the copy right at Delhi. The learned Counsel for defendant placed reliance on Brooke Bond India Ltd. v. Balaji Tea (India) Pvt. Ltd. (1990 (2) Arb LR 35), wherein a single Hon'ble Judge of the Madras High Court expressed the view that although Section 62(2) of the Copyright Act entitles that plaintiff to file a suit in, the District Court having jurisdiction at the place of the business of the plaintiff, yet this provision should be sparingly resorted so that a small trader is not put to unnecessary hardship and disadvantage by being dragged to a distant place. In the said case, the defendant was resident of Raipur. Further, in Glaxo Operations UK Ltd. v. Samrat Pharmaceuticals 1984 (4) PTC 66, 1984 AIR(Del) 265, 1984 RLR 291 this Court has taken the view that Section 62(2) of the Copyright Act enables the plaintiff to bring the suit at a place where plaintiff is carrying on business. In the said case also, the suit was brought for infringement of the trade mark as well as the Copyright of the plaintiff. This judgment was noticed in case of Brooke Bond India Ltd. but was not followed. However, I respectfully follow the view expressed in the case of Glaxo Operations (supra). The provisions of Section 62(2) of the Copyright Act admit of no two interpretations. This provision gives the right to the plaintiff to institute a suit under the Copyright Act at a place where plaintiff is carrying on business. However, it may also be mentioned that Chandigarh is not at a distance from Delhi so that it could be said that by facing trial in this suit at Delhi, defendant would be suffering any hardship. I may also refer to Tata Oil Mills Co. Ltd. v. Reward Soap Works 1983 AIR(Delhi) 286), where also the suit was brought for infringement of Copyright and the trade mark. In the said case, the court held that under Section 62 of the Copyright Act, suit could be brought at a place where the plaintiff is carrying on business and in that case also, there was a specific averment in the plaint that the defendant was selling his goods within the territorial jurisdiction of the Court and that averment was accepted for granting the temporary injunction. In view of above discussion, I, prima facie, hold that the Delhi Courts have territorial jurisdiction to try this suit.


10. I have examined the specimen labels of the plaintiff and the labels of the defendant. It is evident that defendant has, prima facie, adopted the colour scheme of the plaintiff's label and as also the way of writing the letters and has also put a bust portrait of a Prince with a crown in a circle as it appears in the labels of the plaintiff. The defendant has definitely, prima facie infringed the Copyright of plaintiff in the said labels.


11. As far as the registered trade mark of the plaintiff's concerned, by writing the trade mark "ROYALTY" in the same way as the trade mark "ROYAL" of the plaintiff is being written, the defendant appears to have also infringed the trade mark logo of the plaintiff. An unwary customer, while going in the market to purchase the biscuits of the plaintiff under the trade mark "ROYAL" can be easily deceived in purchasing the goods of the defendant under the trade mark "ROYALTY" treating the defendant's goods as those of the plaintiff. In Smith and Wellstood v. The Carron Company ( 1896 (4) RPC 108), one of the registered trade marks was "Mistress" and the opposite party adopted the trade mark "New Mistress". It was held that there is an infringement of the registered trade mark. In the said case also, one of the registered trade marks was "Fortress". The opposite party started using the trade mark "Fort". It was held that it again amounts to infringement of the trade mark of the plaintiff and the injunctions were granted.


12. So, prima facie, I hold that defendant infringed th

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e registered trade mark and copyright of the plaintiff. The defendant's trade mark is not registered. Mere fact that defendant is taking steps to get its trade mark registered does not entitle the defendant to infringe the registered trade mark of the plaintiff. In Metro Playing Card Co. v. Wazir Chand Kapoors 1972 AIR(Delhi) 248), it was held that no doubt registration may be granted for concurrent uses as provided by Section 12(3) of the Act but till registration is granted, the plaintiff's trade mark cannot be allowed to be infringed by the defendant as otherwise a statutory right which plaintiff has as a registered proprietor under Section 28 of the Trade and Merchandise Marks Act, 1958 would be violated, as registration of a trade mark is a prima facie evidence of its validity. 13. So, I hold that there is no merit in the application of defendant and the injunction already granted in favour of the plaintiff is liable to be confirmed till the disposal of the suit. I dismiss the application of the defendant (I.A. 6743/91) whereas I allow the application of the plaintiff (I.A. 3445/91) and confirm the injunction order already granted till the disposal of the suit. Suit No. 1024/91 14. Put up before the Deputy Registrar on September 16, 1991, for further proceedings. Injunction granted.
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