ITC Limited vs Om Garments and Others

Rajiv Sahai Endlaw, J.—The plaintiff engaged, inter alia, in the business of branded apparel under the trademark WILLS SPORT and JOHN PLAYERS has instituted the suit for permanent injunction against four defendants for restraining them from dealing in garments bearing the trademark WILLS SPORT and JOHN PLAYERS and ITC in combination or individually and for the ancillary reliefs of accounts, damages, delivery etc. Vide ex parte order dated 17th February, 2004 the defendants were restrained from selling, marketing or distributing the wearing apparels with the plaintiff''s trademark and logos WILLS SPORT and JOHN PLAYERS and ITC or any other trademark or logo deceptively similar to that of the plaintiff.

The defendant No. 1 on being served with the summons of the suit appeared on 2nd September, 2004. The defendants 2 and 4 failed to appear inspite of service and were proceeded against ex parte on 17th January, 2005. However, on 28th April, 2005 the defendants 2 to 4 were ordered to be served again. The defendants 2 to 4 neither filed the written statement nor appeared. The defendant No. 4 was proceeded against ex parte on 13th February, 2006. The defendant No. 1 filed a written statement and to which replication was filed by the plaintiff. However, the defendants 1, 2 and 3 also failed to appear thereafter and vide order dated 7th February, 2007 were proceeded against ex parte and the application of the plaintiff for amendment of the plaint to incorporate therein the factum of registration of its trademark during the pendency of the suit allowed. The ex parte ad interim order was made absolute and the plaintiff was ordered to file ex parte evidence.

The plaintiff has filed affidavit by way of examination in chief of its constituted attorney Mr Rajiv Ohri. The defendants remain ex parte. The ex parte arguments of the Counsel for the plaintiff have been heard.

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 latter "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.

The plaintiff had approached this Court on learning of sale of counterfeit WILLS SPORT & JOHN PLAYERS shirt, jeans, trousers and other clothing at the premises of the defendants. It is the case of the plaintiff that the defendant No. 1 is the manufacturer of the said infringing clothing and selling the same though its own outlet as well as through defendant No. 2 M/s Sameer Fashion and defendant No. 3 M/s Shekhar Collection. It was further the case of the plaintiff that the defendant No. 4 M/s Pushpanjali is the printer of the labels and stickers bearing the counterfeit trade mark and logo aforesaid of the plaintiff. Though it was the case in the plaint that the plaintiff through a notary public has purchased the goods bearing the infringing trademark from the defendants but the said notary public was not examined by the plaintiff.

The written statement on behalf of the defendant No. 1 has been filed by one Mr Mukesh s/o Shri Lekh Raj r/o 9658/11, Multani Dhanda, Phararganj, New Delhi. He has stated that he carries on business of selling odd garments on the pavement in front of shop being run under the name of M/s Singhal Fabrics in property No. 7022 Tank Road, Karol Bagh, New Delhi. He has stated that neither he nor anyone else was carrying on business in the name and style of defendant No. 1 M/s Om Garments in property No. 7020 or 7021 or 7022 Tank Road, Karol Bagh, New Delhi. He stated that they were three different buildings bearing municipal No. 7020, 7021 and 7022, while 7020 and 7021 are adjacent to each other, 7022 is separated from the other two buildings by a big park; he thus pleaded that the address of the defendant No. 1 of 7020 - 7022 Tank Road, Karol Bagh, New Delhi was not the correct address; he further pleaded that the summons of the suit in the name of defendant No. 1 were forcibly served on him. He otherwise denied the contents of the plaint and denied the title of the plaintiff to the marks/label as well as the factum of the business as averred in the plaint being carried on by the defendants. The plaintiff in its replication reiterated its stand in the plaint.

So far as the relief of permanent injunction is concerned, the defendants having chosen not to contest the suit, the averments of the plaintiff in the plaint and the unrebutted statement of the witness of the plaintiff is to be believed and the plaintiff has become entitled to a decree of permanent injunction as claimed in para 47 (i) (ii) (iii) of the plaint. However, as far as the claim of the plaintiff for delivery, rendition of accounts and damages is concerned, it is seen that the plaintiff had at the time of institution of the suit applied for appointment of Local Commissioner to visit the premises of the defendant No. 2 M/s Sameer Fashion at Shop No. 16/126, Gali No. 11/2, Tank Road, Karol Bagh, New Delhi and of the defendant No. 4 M/s Pushpanjali at 11701/1, Sant Nagar, Karol Bagh, New Delhi only. Even though the averments of the plaintiff were that the defendant No. 1 was the manufacturer/fabricator of the infringing goods but neither was inspection of his premises nor the inspection of the premises of the defendant No. 3 M/s Shekhar Collection sought. The Local Commissioner appointed to visit the premises of the defendant No. 2 M/s Sameer Fashion has reported that he was met by one Khurshid Alam at the said shop who introduced himself as an employee; that he found infringing goods in the said shop as described in the report; that the aforesaid Khurshid Alam during the commission proceedings was in touch with the owner of the shop described as Mr Samir but who did not visit the shop at that time. The Local Commissioner also reported that the aforesaid Khurshid Alam and neighbourhood shopkeepr wanted the local commissioner to record lesser than the found quantity of infringing goods and upon his failure to oblige, refused to sign the commission proceedings. In the absence of any challenge by the defendant No. 3, the said report is entitled to be believed and acted upon.

The other local commissioner appointed to visit the premises of the defendant No. 4 M/s Pushpanjali has reported that he was met one Shri Triveni Singh who stated that he was earlier selling the logos of WILLS SPORT about 8-9 months prior to the visit of the commissioner and had stopped doing same. No infringing lables/logos were found in his premises also.

In spite of the defendant No. 1 having in his written statement denied the existence of any entity as the defendant No. 1 and having raised other serious issues with respect to the existence of the address also as described of the defendant No. 1, the sole witness of the plaintiff has in his deposition besides reiterating the contents of the plaint not made any effort whatsoever to meet the said pleas taken in the written statement. Even though the defendant No. 1 may have been proceeded ex parte but he having filed the written statement raising pleas going to the root of the matter, it was incumbent upon the witness of the plaintiff to clarify the position. The failure of the plaintiff to apply for a commissioner to visit the premises of the defendants 1 and 3 also raises doubts. The plaintiff having not led any evidence is not found entitled to any claim for delivery, rendition of accounts or damages or costs against the defendants 1 and 3. As far as the defendant No. 4 is concerned, though Shri Triveni Singh on behalf of the defendant No. 4 admitted having earlier sold the infringing labels, on the date of the commission, no infringing labels were found with him. There is also no complaint that he is in violation of the interim order of this Court. In the circumstances, I do not find the plaintiff entitled to any relief other than of injunction against the defendant No. 4 also. As far as the defendant No. 2 M/s Sameer Fashion is concerned, not only does it stand established from the report of the Local commissioner that he was dealing in infringing goods but his conduct at the time of execution of the commission was also improper and malafide. He did not allow the Local Commissioner to seal the goods. Thus, notwithstanding the order of this Court, the infringing goods remained available for sale with the defendant No. 2. The plaintiff has thus become entitle to relief of damages against the defendant No. 2 only. However, though permitted in law under Order 30 of the CPC to sue in the name in which the person is carrying on business, there is no evidence whatsoever of the constitution of the defendant No. 2 M/s Sameer Fashion. For the said reason, no useful purpose will be served in passing a decree for rendition of accounts.

Following the dicta of this Court in Microsoft Corporation Vs. Mr. Yogesh Papat and Another, and in Time Incorporated Vs. Lokesh Srivastava and Another, , the plaintiff is found entitled to damages against defendant No. 2. Considering the nature of the impugned goods vis John player which are sold in the markets such as Sarojini Nagar and Karol Bagh in the region of Rs. 300/- and Rs. 500/- per piece and further since the infringement is stated to have continued for a short period, I deem it appropriate to award punitive damages to the plaintiff against the said M/s Sameer Fashion in the sum of Rs. 1 lac only. The suit of the plaintiff is thus decreed in favour of the plaintiff and against the defendant for the reliefs stated in paras 46 (i) (ii) (iii) of the plaint. A decree for recovery of damages in sum of Rs. 1 lac is also passed in favour of the plaintiff and against the defendant No. 2 M/s Sameer Fashion at Shop No. 16/126, Gali No. 11/2, Tank Road, Karol Bagh, New Delhi. The plaintiff shall also be entitled to costs of the suit from the defendants.

The decree sheet be prepared accordingly.