Xerox Corporation vs Sarita Agarwal & Anr

,,

MANMOHAN, J:Â (Oral)",,

Present suit has been filed for permanent injunction restraining infringement of trademark, dilution of trademark, passing off, rendition of accounts,",,

damages, delivery up, etc. The prayer clause is reproduced hereinbelow:-",,

It is, therefore, prayed that this Hon’ble Court may be pleased to grant the following reliefs:",,

i. An order for permanent injunction restraining the Defendants, their partners, representatives and/or others acting for and on their behalf from",,

manufacturing, selling, offering for sale, advertising or in any manner dealing in goods or services under the mark ZEROX with or without the Defendants'",,

logos, amounting to an infringement of the Plaintiff's trademark XEROX.",,

ii. An order for permanent injunction restraining the Defendants, their partners, representatives and/or others acting for them and on their behalf from",,

manufacturing, selling, offering for sale, advertising or in any manner dealing in goods or services under the mark ZEROX, in the business name Zerox India",,

and on the domain www.zeroxindia.com with or without the Defendants' logos in a manner that amounts to passing off their business as that of the Plaintiff,,

under its trademark XEROX.,,

iii. An order for permanent injunction restraining the Defendants, their partners, representatives and/or others acting for them and on their behalf from",,

manufacturing, selling, offering for sale, advertising or in any manner dealing in goods or services under the mark ZEROX in a manner that dilutes the",,

Plaintiff's well-known trademark XEROX.,,

iv. An order for rendition of accounts of profits directly or indirectly earned by the Defendants from their infringing activities and wrongful conduct and a,,

decree for the amount so found due to be passed in favour of the plaintiff.,,

v. An order of mandatory injunction directing transfer the domain http://zeroxindia.com/ to the Plaintiff.,,

vi. An order for delivery up to the Plaintiff by the Defendants of all infringing material bearing the infringing trademark ZEROX and the Defendants' logos for,,

the purpose of erasure/destruction.,,

vii. A sum of Rs.1,00,01,363/- for a decree of damages as valued for the purposes of this suit towards loss of sales, reputation and goodwill of the Plaintiff's",,

trademarks caused by the activities of the Defendants.,,

viii. An order as to the costs of the proceedings.,,

ix. Any further order as this Hon'ble Court may deem fit and proper in the facts and circumstances of the case.""Â",,

 2. At this stage, learned counsel for the plaintiff gives up prayers 35 (iv), (vi) and (vii) of the prayer to the suit. The statement made by learned counsel",,

for plaintiff is accepted by this Court and plaintiff is held bound by the same.,,

Vide order dated 15th February, 2018, this Court had granted an ex parte ad interim injunction in favour of the plaintiff and against the defendants. The",,

relevant portion of the ex-parte injunction order is reproduced hereinbelow:-,,

Consequently, till further orders, the defendants, their partners, representatives and/or others acting for and on their behalf are restrained from",,

manufacturing, selling, offering for sale, advertising or in any manner dealing in goods or services under the mark ZEROX, in the business name Zerox India",,

and on the domain name www.zeroxindia.com or any other trade mark/trade name similar to the plaintiff’s trade mark XEROX in any manner,,

whatsoever.""Â Â",,

Despite service on the defendant no. 1 on 07th March, 2018 and on the defendant no. on 23rd March, 2018, none has appeared for them.Â",,

Accordingly, the defendant nos. 1 and 2 are proceeded ex parte.Â",,

This Court is also of the view that the present suit can be disposed of without any further delay. A Coordinate Bench of this Court in Satya Infrastructure,,

Ltd. and Ors. Vs. Satya Infra & Estates Pvt. Ltd., 2013 SCC OnLine Del 508 Â has held as under:-",,

“I am of the opinion that no purpose will be served in such cases by directing the plaintiffs to lead ex parte evidence in the form of affidavit by way of,,

examination-in-chief and which invariably is a repetition of the contents of the plaint. The plaint otherwise, as per the amended CPC, besides being verified, is",,

also supported by affidavits of the plaintiffs. I fail to fathom any reason for according any additional sanctity to the affidavit by way of examination-in-chief,,

than to the affidavit in support of the plaint or to any exhibit marks being put on the documents which have been filed by the plaintiffs and are already on,,

record. I have therefore heard the counsel for the plaintiffs on merits qua the relief of injunction.â€​,,

The relevant facts of the present case are that the plaintiff is a Fortune 500 company with a global business valued at USD 11 billion and has operations,,

spread over 160 countries with over more than 35,000 employees across the world. It is averred in the plaint that the plaintiff conducts its operations in",,

India through its Indian subsidiary, Xerox India Limited, which was incorporated in 1995.",,

It is stated that the plaintiff, apart from manufacturing photocopying machines, is associated with a number of products and services such as multifunction",,

printers, large volume digital printers and fax machines and their consumables like Toner, and printing technologies. It is stated in the plaint that the plaintiff",,

also provides and markets software such as Xerox Docushare, Xerox MarketPort and FlowPort, offers consulting services, Enterprise Content Management",,

Digital Repository Services and printing outsourcing.,,

It is stated in the plaint that the trademark XEROX is an invented mark as it was uniquely adopted by combining the Greek words for „dry‟ and,,

„writing‟ and is distinctive. It is further stated that the coined word XEROX is also an integral and conspicuous part of the plaintiff‟s trading style as a,,

result of which the said trademark and trade name XEROX is instantly and exclusively recognized/identified with the plaintiff company, its business, goods",,

and services.Â,,

It is stated in the plaint that the plaintiff is the registered proprietor of the trademark XEROX in Classes 1, 7, 9 and 16 under the Trade Marks Act, 1999",,

and is the proprietor of the logo, for which it has filed multiclass applications in India, which are still pending. It is stated that plaintiff was registered in Class 1",,

in 1952 and under Classes 7 and 9 in 1963.,,

It is stated that the plaintiff also maintains the website www.xerox.com which details the background, products and services of the plaintiff under the",,

trademark and trade name XEROX.,,

It is stated in the plaint that the plaintiff‟s worldwide revenue for the financial year 2016 was USD 10.77 billion and its turnover in India for the same,,

period was Rs. 521 Crores. It is stated that the plaintiff has incurred huge expenditure in advertisement and promotion of its products and services under the,,

trademark and trade name XEROX.,,

Learned counsel for the plaintiff states that in the month of November, 2017, during a routine check of the trademark registry database, the plaintiff came",,

across the defendants' application No.2822964 dated 08th October, 2014 in Class 9 under the trademark .Â",,

He states that the defendant no.1, in its evidence by way of affidavit accompanying the said trademark application, identifies herself as the sole proprietor of",,

Zerox India and claims that the mark ZEROX was adopted on 01st January, 2000, which has been in continuous use since.Â",,

S.No.,Details of Product,Number of Units

1,Rubber Pieces,140 Units

2,Stamps,5 Units

3,Machine Parts,47 Units

4,"Holographic                      Stickers

Packets","14 Units (Each unit containing

approximately 100 sheets, and each

           shee

containing       64

Stickers)

5,Unused Quotation Books,78 Units

6,Visiting Cards,"1500

              Â

Units

(approximately)

7,Unused Packaging Boxes,63 Units

8,Posters,215 Units

9,Packets containing Toner,20 Units

                                         Â

Total",,2082 Units