The
Tis Hazari, Court in Delhi in the case of
M/S. Orient Bell Limited Vs M/S. Royal Marketing & M/S. Orient
Cera Tiles, granted a permanent injunction in favor of M/S Orient Bell
Limited (hereinafter referred to as the ‘Plaintiff’) restraining M/S. Royal
Marketing and M/S. Orient Cera Tiles (hereinafter collectively referred to as
the ‘Defendants’ and individually as ‘Defendant no. 1’ and Defendant no. 2
respectively) from passing off goods bearing their trademark and copyright ‘Orient’,
infringement of the same in any manner and a mandatory injunction for the
destruction/erasure of labels, blocks, dies etc.
Brief Facts
Ø The Plaintiff was initially incorporated on May 18, 1997,
as Orient Ceramics and Industries Ltd., which was later merged on February 7,
2012, with Bells Ceramics Ltd. after obtaining orders from Hon'ble Court at
Gujarat. It is the registered proprietor of the mark ‘ORIENT’ for its business
of manufacturing tiles.
Ø In January 2002, the Plaintiff came to know about
the infringement of his trademark Orient
by Defendant No. 1. It is alleged that Defendant no. 2 is supplying tiles to Defendant
no. 1 and to other shops at Delhi.
Ø It is further alleged that Defendant no. 2 has
created impression in the market that his goods are connected with the Plaintiff
and thereby passing off the goods by infringing the registered trademark of the
Plaintiff. Additionally, the trade name adopted by Defendant no.2 is alleged to
be identically and deceptively similar to the corporate name of the Plaintiff.
Ø Thus, the Plaintiff filed this suit for permanent
injunction restraining infringement of trademark, passing off, infringement of
copyright, damages, delivery up etc. against the Defendants.
Issues
Ø Whether the Plaintiff is entitled to relief of
permanent injunction against both the Defendants and its agents for passing off
and infringement of the trademark ORIENT by way of manufacturing, exporting,
selling, exhibiting etc. in the said name?
Ø Whether the Plaintiff is entitled to mandatory
injunction against the Defendants and their agents as to delivery of labels,
blocks, dies, strips, cartons, stationery, literature or any other printing
material bearing impugned trademark and copyright and for their
destruction/erasure?
Ø Whether Plaintiff is entitled to damages for a sum
of INR 10 lakhs (USD 15600 approx.) against both the Defendants for such infringement
of trademark and copyright?
Plaintiff’s Contention
Ø The Plaintiff claimed to be using the mark uninterruptedly
and continuously since the year 1982 in respect of tiles which is painted on
reverse side of each tile.
Ø The Plaintiff submitted that it has acquired substantial
goodwill and reputation and has spent large amounts on publicity and
advertisement of his trademark. The advertising expenses runs into multiples of
lakhs since the year 1995-96.
Ø It claimed to be holding registration of copyright
as Orient Tiles vide no. A-68840/2005.
Ø The Plaintiff further submitted that the tiles are
purchased by both illiterates and literates that causes confusion. In addition,
the act of the Defendants has harmed the reputation and goodwill of the Plaintiff.
It stated that the loss cannot be calculated in money.
Ø It was contended that the triple test of identical
goods, identical trademark/trade name and identical trade channel are satisfied
in the present case and dishonest motive and mischief of the Defendants are
revealed.
Defendant’s Contention
Ø The Defendants failed to appear and to disprove the
case of the plaintiff in evidence.
Ø However certain averments were made by them in the
written statement. These averments were:
o Defendant no. 2 through the written statement submitted
that the trade of the Defendant is in existence since the year 1995 and the Plaintiff
is non-suited on ground of acquiescence.
o The trade name ‘Orient’
is a generic name and the Plaintiff cannot have monopoly over it. The Plaintiff
himself has commenced his business only from the year 1997 and at that time the
Defendant’s business was in existence in fans and cement.
o The Defendants contented that there are more than
100 companies doing business under the name of Orient. It stated that there is
no likelihood of deception as there is a huge price difference in the products
of Plaintiff and the Defendants.
o The Defendants further stated that the word Orient
is written differently. They write Orient Cera Tiles in bold letters and the Plaintiff
writes Orient Walls. In addition, the cartons and boxes both of them are
different.
o The expense on advertisement and volume of sale does
not entitle the Plaintiff with monopoly over the word Orient when the Defendant
itself is in existence since the year 1996. It is submitted that the first user
is not the only criteria for determining the right and entitlement in the
intellectual property rights. There is difference both in quality and price of
which the buyers can clearly make distinction. Accordingly, Defendant no. 2 has
denied the claim of the Plaintiff and prayed for dismissal of the suit.
Court’s Decision
Ø While dealing with issue no. 1 the Court held that ‘the proprietor of an unregistered trademark
whose mark is unauthorisedly used by another cannot, however, sue for the
infringement of such trade mark. His only remedy lies in bringing a passing-off
action, an inconvenient remedy as compared to an infringement action.’
Ø The Court also differentiated between passing off
action and infringement. It opined that ‘in
a passing-off action the Plaintiff will have to prove that his mark has by user
acquired such reputation as to become distinctive of the Plaintiff's goods so
that if it is used in relation to any goods of the kind dealt with by the Plaintiff,
it will be understood by the trade and public as meaning that the goods are the Plaintiff's goods. In
an infringement action, the Plaintiff is not required to prove the reputation
of his mark. Further, under Section 37 a registered mark is assignable and
transmissible either with or without goodwill of the business concerned while
under Section 38 an unregistered trade mark is not assignable or transmissible
except in the three cases set out in Section 38(2).’
Ø The Court agreed that ‘the Plaintiff is using the said mark ORIENT which is also signified by
the name of the Plaintiff company which is M/s. Orient Ceramics and Industries
Ltd. Plaintiff company is using the name since the year 1977 when it was
incorporated and in the year 1982 it had adopted the trademark name ORIENT.’
It further stated that ‘the Plaintiff
must show the actual infringement on the date of filing of the suit. The Plaintiff
company filed the suit on February 22, 2002, by which time the said mark ORIENT
was in use. As per claim of the Plaintiff, the mark ORIENT for plastic flushing
cistern has date of registration on June 26, 2001. The other trademarks of the Plaintiff
are dated after the year 2002, i.e. after the date of filing of the suit. As
per the case of the Plaintiff, the Defendant no. 2 is manufacturing Cera Tiles
in the name of ORIENT on or before the filing of the suit. Thereby the case of
the Plaintiff falls under category of passing off mark ORIENT with the
plaintiff and not the infringement of trademark in favour of plaintiff bearing
date of registration as 01.08.2005.’
Ø Regarding damages, the Court pointed out that the Plaintiff could have shown its figure of
net profit made from the year 1995 till the date of filing of the present suit.
Since the Plaintiff failed to do that, the total damages are awarded in favor
of the Plaintiff and against both the Defendants for a sum of INR 2 lakhs (USD
3120 approx.) out of which INR 1 Lakh (USD 1560 approx.) are in the nature of
compensatory damage and INR 1 Lakh (USD 1560 approx.) are in the nature of
punitive damage.
Thus,
the suit was decreed in favor of the Plaintiff with relief of permanent
injunction against both the Defendants and its agents who are restrained in
passing off goods in the trademark and copyright ORIENT and its infringement of
trademark and copyright by way of manufacturing, exporting, selling, exhibiting
etc. in the said name.
