$~ IN THE HIGH COURT OF DELHI AT NEW DELHI Reserved on: …€¦ · the trade mark "AGARWAL PACKERS...

CS (COMM) No.109/2016 of 14

$~

* IN THE HIGH COURT OF DELHI AT NEW DELHI

% Reserved on: 04th

September, 2017

Pronounced on: 15th

September, 2017

+ CS(COMM) 109/2016

DRS LOGISTICS (P) LTD & ANR ..... Plaintiffs

Through : Mr.Pradyuman Dubey, Advocate.

versus

SANDEEP CHOHAN ALIAS

SANDEEP KUMAR & ORS ..... Defendants

Through : None being ex parte.

CORAM:

HON'BLE MR. JUSTICE YOGESH KHANNA

YOGESH KHANNA, J.

1. This is a suit for permanent injunction, infringement of trademark,

rendition of accounts, passing off and also for damages filed by the

plaintiffs against the defendants.

2. The present suit was instituted by the plaintiffs to restrain the

defendants No.1 to 3 from misusing and infringing the plaintiffs'

registered trade trademarks, passing off themselves and their services as

they are having highly reputed services and committing acts of unfair

competition against the Plaintiffs, including but not limited to, by using

trademarks, trade names and domain names that are virtually identical

and deceptively and confusingly similar to the domain names, trade name

CS (COMM) No.109/2016 of 14

and trademarks of the plaintiffs. The said defendants offer services

identical to the plaintiffs and therefore, the present case is covered under

the provisions of Section 29(3) of the Trade Marks Act, 1999 (hereinafter

referred to as „the Act). The case of the plaintiffs in brief is:-

a. the „plaintiff No.1 is the registered proprietor/owner of, interalia,

the trade mark "AGARWAL PACKERS & MOVERS" ("plaintiffs' Trade

Mark"), bearing registration no. 1275683 under Class 39 for the services

of Transporters and goods carriers, packers and storage of goods and

travel arrangement services. The other trademarks belonging to the

plaintiff No.1 which, along with the above mentioned trade mark, form

the subject matter of this suit;

b. the plaintiff No. 2 is a group/ sister company of the plaintiff No.1

and has been using the above mentioned trademarks as a licensee of the

plaintiff No.1 since the year 2009-10 under a license agreement dated

23.07.2009;

c. the plaintiffs are India's largest packing, logistics and

transportation service provider with a pan India presence. The services

provided by the plaintiffs include, packing and transportation services for

goods and luggage of all kinds and description to and from any place

within India, and abroad, by any mode of transport. In addition to

relocation services plaintiffs also provide public and passenger carriers

and services of booking cargo/ luggage via road, rail, air and sea

transport, and act as wharfingers, warehouse keepers, clearing and

forwarding agents and contractors for packing, loading and unloading of

goods, luggage and cargo;

CS (COMM) No.109/2016 of 14

d. the use of the plaintiffs' trade mark was commenced in the year

1988 by the plaintiff No.1's predecessor in interest and title, M/s.Agarwal

Packers & Movers, a partnership firm, which was registered in 1991. In

the same year the plaintiff No.1 was also incorporated by the then

partners of M/s. Agarwal Packers & Movers under the name, "DRS

Transport (P) Ltd.", which, later changed to its current name in the year

2006. The plaintiff No.1 also, immediately after its incorporation,

commenced its business under the plaintiffs‟ trademark. Subsequently, by

virtue of an agreement dated 01.04.1993 the above-mentioned

partnership firm and its business was merged with the plaintiff No.1.

Owing to the said background, the plaintiff No.1 is entitled to claim use

of the plaintiffs' Trade Mark since 1988;

e. the plaintiffs' trade mark is also registered in several international

jurisdictions, details of which are given in para 6 of the amended plaint;

f. not only are the plaintiffs the undisputed market leaders in their

field in the country, but have also brought a lot of innovations to the

industry. The goodwill and reputation attached to the plaintiffs and the

plaintiffs' trade mark is, inter alia, evidenced by the ever increasing

turnover achieved by them over the years as well as the expenditure

incurred by them in advertising and promoting the said mark. Details of

such turnover and expenditure are given in paras 14 and 15 of the

amended plaint and have been duly certified by a chartered accountant.

The plaintiffs have also filed and proved numerous advertisements issued

by them, unsolicited media articles about them and the letters of

appreciations received by them from their customers. The plaintiffs have

also been conferred several awards by their peers and industry

CS (COMM) No.109/2016 of 14

associations and have been named in the Limca Book of Records as the

largest movers of household goods in the country in the years 2013 and

2014;

g. due to continuous and extensive use of the Plaintiffs' trade mark by

the plaintiffs, and by virtue of the excellent services provided by the

plaintiffs to their customers, the plaintiffs' Trade Mark is associated

solely with the plaintiffs by the public at large. The plaintiffs' trade mark

has acquired secondary meaning in the trade and is now indelibly

imprinted in the public memory as referring to the plaintiffs;

h. not only this, the plaintiffs' Trade Mark has also been adjudged by

this Court vide order dated 04.04.2013 in CS(OS) No.1131/2008 to be a

'well-known' trade mark in India, as defined in Section 2(l)(zg) of the

Act. The plaintiffs' Trade Mark is thus entitle to the protection accorded

to well known trade marks in law.

i. in addition to their trademarks, the plaintiffs also use the domain

names "agarwalpackers.com", "agarwalmoversgroup.com" and

"agarwalpackers.co.in" as source identifiers of their business and to

maintain websites with facilities to make online bookings of plaintiffs'

services;

j. the defendants No.1 to 3 have unleashed their infringing and

offending activities upon the plaintiffs by registering and using a plethora

of trade marks, trade names and domain names, which are identical,

virtually identical and deceptively similar to the plaintiffs' trade mark,

the plaintiffs' domain names and the trade name of the plaintiff No. 2.

Each of the offending trade marks, trade names and domain names of the

said defendants is a variation of the plaintiffs' Trade Mark and one of

CS (COMM) No.109/2016 of 14

them is identical to the plaintiffs' Trade Mark and the domain name of the

plaintiff No. 2. The offending trade marks used by the defendants are:

AGARWAL PACKERS AND MOVERS,

AGARWAL PACK 'N' MOVE

The offending trade names used by the defendants are:

AGARWAL PACK 'N' MOVE PVT. LTD.

AGARWAL PACK 'N' MOVE LTD.

The offending domain names used by the defendants are:

AGARWALPACKNMOVE.COM

AGARWAL-PACKNMOVE.COM

AGARWALPACKNMOVE.IN

AGARWALPACKNMOVE.CO.IN

AGRWALPACKNMOVE.NET.IN

AGARWALPACKANDMOVE.NET.IN

AGARWALPACKERSNMOVERS.NET.IN;

k. the defendants Nos.4 to 6 herein are ICANN accredited domain

name registrars with whom the various offending domain names of the

defendant Nos.1, 2 and 3 are registered. The plaintiffs are seeking

directions against the above mentioned defendants Nos.4 to 6 to block

and/ or transfer the offending domain names to the Plaintiffs in order to

prevent further misuse of the said offending domain names by any other

third party;

l. it is submitted that offending activities of the defendants No.1 to 3

are not only causing irreparable harm and injury to the plaintiff as

providers of quality services, but are also injurious to public interest. This

is so because the unwary customers would entrust their household

CS (COMM) No.109/2016 of 14

belongings and other valuable articles to the defendants No.1 to 3

believing them to be the plaintiffs when the said defendants simply do

not have the skill, experience and resources to provide the quality of

services that the public has come to expect from the plaintiffs. The said

defendants are therefore liable to be permanently restrained in terms of

the prayers made in the amended plaint. The plaintiffs have also filed an

email showing the actual modus operandi of the defendants No.1 to 3,

which is also a proof of the said defendants offering services in gross

violation of the Plaintiffs' rights. Further, printouts from the websites

maintained at said defendants' offending domain names have also been

filed along with the Suit and a perusal of them shows that most of the

domain names are used to host identical websites. Deception is thus writ

large in the defendants' activities.

3. The defendants were served with the summons of the suit but they

did not appear and were proceeded ex parte vide order dated 04.08.2014.

4. During evidence, the plaintiff has examined its sole witness PW1

Sh.Ramesh Aggarwal, who has proved his affidavit Ex.PW1/X and relied

upon the documents Ex.PW1/1 to Ex.PW1/33.

The witness PW1 has proved the copy of board resolution in his

favour by the plaintiff company as Ex.PW1/1; the copy of Certificate of

Incorporation dated 19.06.2006 in the changed name of plaintiff as

Ex.PW1/2; for want of originals, the documents marked as Ex.PW1/3,

Ex.PW1/4, Ex.PW1/5 and Ex.PW1/8 were de-exhibited and were marked

as Mark A to Mark D respectively; copies of trademark registration

certificate and certified copy of entry in the register pertaining to

trademark are Ex.PW 1/6, Ex.PW1/7, Ex.PW1/9 respectively; a copy of

CS (COMM) No.109/2016 of 14

the copyright registration certificate under the registration number A-

101150/2013 dated 24.11.2012 in the artistic work of its logo is

Ex.PW1/10; copy of license agreement dated 23.07.2009 is Ex.PW1/11;

copies of the registration certificates is Ex.PW1/12; a copy of partnership

deed executed on 01.08.1990 is Ex.PW1/13; a certificate issued by

chartered accountant verifying the annual turnover of the plaintiff‟s

company is Ex.PW1/14; the copies of few sample copies of

advertisements and unsolicited media reports issued by the plaintiff is

Ex.PW1/15; copies of the unsolicited letters of appreciation received by

the plaintiff from its customers are Ex.PW1/16; documents evidencing

excellence with the plaintiff‟s name and trademark manifested in several

awards and recognitions are exhibited and marked as Ex.PW1/17; copy

of the judgment dated 04.04.2013 passed in CS(OS) No.1131/2008 which

hold it a well known trade mark in India is exhibited as Ex.PW1/18;

Copies of sample webpage from websites of which plaintiffs are

proprietors and registrants are exhibited as Ex.PW1/19; Printouts from

online database “whois.com” are Ex.PW1/20; Copies of caution notices

issued in leading newspaper and publications bewaring the general public

of the impostors is Ex.PW1/21; Copy of printout of the webpage from

google.com showing the search result is Ex.PW1/22; Copy of printout

from website www.agarwalpackersnmovers.net.in is Ex.PW1/23; copies

of printout of search result obtained from website www.mca.gov.in

pertaining to the name of “Agarwal pack N Move” is Ex.PW1/24; Copy

of printout obtained from website whois.com and showing the details in

respect of four domain names and copy of printout obtained from the

websites available at the four domain names are Ex.PW1/25, Ex.PW1/26

CS (COMM) No.109/2016 of 14

and Ex.PW1/27 respectively; copy of printout from the website

google.com showing the use of trademark “Agarwal Packers and

Movers” and the domain name www.AGARWAL-PACKNMOVE.COM

is Ex.PW1/28; Copy of printouts of screen shots and webpages obtained

from the website available at the above mentioned domain name is

Ex.PW1/29; and also printouts from the website whois.com showing the

registration details of the domain name WWW.AGARWAL-

PACKNMOVE.COM is Ex.PW1/30; Copy of printouts from website

whous.com showing the registration details of the domain name

WWW.AGARWALPACKANDMOVE.NET.IN and printouts of screen

shots and webpages obtained from the above domain name is Ex.PW1/31

and Ex.PW1/32 respectively; Copy of electronic records such as email

dated 01.04.2014 along with quotation provided by the defendant No. 1 is

Ex.PW1/33.

5. In the circumstances, where the plaintiffs have proved the contents

of the plaint; the user of present name of the company and it being the

prior user, the adoption of its trade name and trademark by the

defendants clandestinely would certainly be illegal and would affect the

reputation of the plaintiff being in same business. The defendant has not

put up their defence, they being ex parte.

6. The matter concerns identical corporate/trade name of both the

parties, is also included in the definition of "mark" under Section 2(l)(m)

of the Act. Both parties are in the same field of activity. The mark/name

is therefore both 'arbitrary' as well as 'fanciful' making it highly

distinctive and deserving of protection from later adopters/usurpers like

CS (COMM) No.109/2016 of 14

the defendant since it comes within the highest protectable categories of

trademarks.

7. In Evergreen Sweet House Vs. Ever Green and Ors., 2008 (38)

PTC 325 (Del), it has been observed as under:-

"14. Marks are often classified III categories of

generally increasing distinctiveness; they may be

(1) generic; (2) descriptive; (3) suggestive; (4)

arbitrary; or (5) fanciful. The last three categories

are entitled to trademark protection because they

are inherently distinctive and can serve to identify

a particular source of a product."

8. Thus, in view of the above evidence and in view of the decisions

so relied upon by the learned counsel for plaintiffs, viz Dr. Reddy's

Laboratory Ltd. vs. Reddy Pharmaceuticals Ltd, 2013 (56) FTC (DEL);

Mahindra & Mahindra Paper Mills Ltd. vs. Mahindra & Mahindra Ltd,

(2002) 2 SCC 147; Midas Hygiene Industries v. Sudhir Bhatia, (2004) 3

SCC 90, the suit is liable to be decreed against the defendants.

9. Hence, in view of above, the suit of the plaintiff is decreed against

the defendants in terms of paras (A) to (C) of Prayer Clause of the plaint

which are as under :-

A. Passing a decree of permanent injunction restraining the Defendants

Nos.1, 2 and 3, their partners, directors, proprietors, associates, agents,

officers, employees, representatives, franchisees, promoters, online

promoters, advertisers and sponsors and any other persons claiming

through or under the Defendants Nos. 1, 2 and 3 from:

CS (COMM) No.109/2016 of 14

(i) Infringing the Plaintiff No.1‟s registered trademarks 'AGARWAL

PACKERS & MOVERS', 'AGARWAL DOMESTIC/

INTERNATIONAL PACKERS & MOVERS' and 'AGARWAL

HOUSEHOLD PACKERS & LOGISTICS' by using the marks

AGARWAL or AGARWAL PACKERS AND MOVERS or

AGARWAL PACK N MOVE or AGARWALPACKANDMOVE or

AGARWALPACKERSNMOVERS or any other trade mark or trade

name or domain name identical or confusingly or deceptively similar to,

or incorporating whole or in part, the Plaintiff No.1 's above mentioned

registered trademarks or the Plaintiffs' house mark AGARWAL, as, or as

part of, their trade mark(s),trade name(s) and domain names(s), or in any

other manner whatsoever, so as to infringe the above mentioned

registered trademarks of the Plaintiff No.1;

(ii) Diluting the Plaintiff No. 1's registered and well-known trademark

'AGARWAL PACKERS & MOVERS' by using the marks AGARWAL

or AGARWAL PACKERS AND MOVERS or AGARWAL PACK N

MOVE or AGARWALPACKANDMOVE or AGARWALPACKERSN

MOVERS or any other trade mark or trade name or domain name

identical or confusingly or deceptively similar to, or incorporating whole

or in part, the Plaintiff No.1's above mentioned registered trade mark, as,

or as part of, their trade mark(s), trade name(s), and domain names(s), or

in any other manner whatsoever;

(iii) Passing off their services and business as and for the services and

business of the Plaintiffs and from indulging into any activities

whatsoever so as to give to the members of public and trade an

impression of existence of any association or connection or affiliation

CS (COMM) No.109/2016 of 14

between the Defendants Nos. 1, 2 and 3 and the Plaintiffs, including but

not limited to by using the trade mark "AGARWAL PACKERS AND

MOVERS" or the offending trade mark "AGARWAL PACK N MOVE"

or the offending trade names "AGARWAL PACK N MOVE PVT. LTD.

and "AGARWAL PACK N MOVE LTD." or the offending domain

names"AGARWALPACKNMOVE.COM",

"AGARWALPACKNMOVE.COM”

"AGARWALPACKNMOVE.IN",

"AGARWALPACKNMOVE. CO. IN"

"AGRWALPACKNMOVE.NET.IN"

"AGARWALPACKANDMOVE.NET.IN" and

'AGARWALPACKERSNMOVERS.NET.IN'.

B. Passing a decree of mandatory injunction directing the Defendants

No.1, 2 and 3, their partners, directors, proprietors, associates, agents,

officers, employees, representatives/franchisees, promoters, online

promoters, advertisers and sponsors and any other persons claiming

through or under the Defendants No.1, 2 and 3 to at their own expense:

(i) deliver to the Plaintiffs or the Plaintiffs' authorized representatives all

materials, including but not limited to packing boxes, cartons, or any

other packaging materials, letterheads, writing pads, or any other

stationary items, company seals or stamps, labels, signs, signboards,

hoardings, advertisements or any other promotional materials, in their

possession and control bearing the marks AGARWAL or AGARWAL

PACKERS AND MOVERS or AGARWAL PACKNMOVE or

AGARWALPACKANDMOVE or AGARWALPACKERSNMOVERS

or any other trade mark or trade name or domain name identical or

CS (COMM) No.109/2016 of 14

confusingly or deceptively similar to, or incorporating whole or in part,

the Plaintiff No.1 's above mentioned registered trademarks or the

Plaintiffs' house mark AGARWAL;

(ii) Permanently delete or transfer to the Plaintiffs the offending domain

names WWW.AGARWALPACKNMOVE.COM, WWW.AGARWAL-

PACKNMOVE.COM,WWW.AGARWALPACKNMOVE.IN.,WWW.A

GARWALPACKNMOVE.CO.IN;

WWW.AGARWALPACKNMOVE.NET.IN;

WWW.AGARWALPACKANDMOVE.NET.IN;

WWW.AGARWALPACKERSNMOVERS.NET.IN; or any other

domain names registered by or at the instance of the Defendants Nos. 1, 2

and 3 that may be identical or confusingly or deceptively similar to, Or

incorporating whole or in part, the Plaintiff No. 1's registered trade marks

'AGARWAL PACKERS a MOVERS', 'AGARWAL DOMESTIC/

INTERNATIONAL PACKERS AND MOVERS' and

'AGARWALHOUSEHOLD PACKERS a LOGISTICS' or the Plaintiffs'

house mark AGARWAL, or the Plaintiffs' domain names

WWW.AGARWALPACKERS.COM.,WWW.AGARWALMOVERSGR

OUP.COM and' WWW.AGARWALPACKERS.CO.IN.

C. Passing a decree of mandatory injunction directing:

(i) the Defendant No. 4 to permanently delete or block or transfer to

either of the Plaintiffs, the domain name

WWW.AGARWALPACKNMOVE.COM;

Hence, the decree per paras A to C of the prayer clause is passed in

favour of the plaintiffs and against the defendants.

CS (COMM) No.109/2016 of 14

11. Besides the above the learned counsel for plaintiffs has claimed the

damages to the extent of `20,00,000/-. The plaintiff is more concerned

with the punitive damages and rely upon Time Incorporated vs. Lokesh

Srivastava & Anr 116 (2005) DLT 599. The decision in Time

Incorporated was relied upon by a Co-ordinate Bench of this Court in

Jockey International Inc & Anr vs. R. Chandra Mohan & Ors 211 (2014)

DLT 757 which read as under:-

“43. I am in agreement with the aforesaid

submission of learned counsel for the plaintiff that

damages in such cases must be awarded and a

defendant, 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 defendant who appears in

Court and submits its account books would be

liable for damages, while another defendant 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 element, it must be granted. R.C. Chopra,

J. has very succinctly set out in Time

Incorporated's case (supra) that punitive damages

are founded on the philosophy of corrective

justice.”

12. The witness of plaintiffs has deposed that damages ought to be

imposed upon the defendants on account of infringement and passing off.

CS (COMM) No.109/2016 of 14

13. Thus, given the facts and circumstances of this case where the

defendants reclused itself from the proceedings, cannot be permitted to

enjoy the benefits of evasion or covert priorities as he has been selling

the goods and has been infringing the plaintiff‟s mark/domain name

/trade name etc. which certainly makes the defendant liable to pay the

punitive damages to the plaintiff. Hence, a decree for a sum of

`3,00,000/- in favour of the plaintiff and against defendant, is passed on

account of infringing the registered mark/domain name /trade name. The

plaintiff shall also be entitled to interest @ 12% 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 plaintiff. Decree Sheet be drawn.

YOGESH KHANNA, J

SEPTEMBER 15, 2017 Mn

$~ IN THE HIGH COURT OF DELHI AT NEW DELHI Reserved on: …€¦ · the trade mark "AGARWAL PACKERS...

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