HERO INVESTCORP PRIVATE LIMITED & ANR. vs ASHOK KUMAR AND ORS
$~21
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 20th February, 2024.
+ CS(COMM) 605/2022, I.A. 14143/2022
HERO INVESTCORP PRIVATE LIMITED & ANR. ….. Plaintiffs
Through: Mr. Zeeshan Khan, Mr. Akshey Bhardwaj, Advocates.
versus
ASHOK KUMAR AND ORS ….. Defendants
Through: None.
CORAM:
HON’BLE MR. JUSTICE SANJEEV NARULA
JUDGMENT
SANJEEV NARULA, J. (Oral):
1. The Plaintiffs, owners of the trademark HERO, /, have filed the present suit seeking various remedies including permanent injunction restraining Defendants from selling counterfeit Hero genuine 4t plus motorcycle engine oil, which bear the Plaintiffs marks and identical packaging.
2. Defendants No. 2-4 were served through newspaper publication on 22nd March, 2023 and Defendants No. 5-11 through courier. Despite being served with summons in the suit and being restrained by an ex-parte ad-interim injunction order on 2nd September,2022, the Defendants have failed to contest the present proceedings. The time to file their written statement has also since expired, as recorded in orders dated 23rd March 2023 and 11th August, 2023.
3. The matter is now before the Court for final disposal.
The Plaintiffs Case
4. The Plaintiff Nos.1 and 2 are Group Companies carrying on their business under the house mark HERO. The trademark HERO is also used as label and device marks [Collectively referred to as HERO marks]. They are engaged in the business of manufacturing and selling of various automative products and services under the trademark HERO. One such product of the Plaintiffs is the Hero genuine 4t plus motorcycle engine oil [hereinafter, HERO Oil] which is designed to cater to modern driving behaviour and road conditions in India. It is averred that HERO Oil’s superior quality results from extensive research by the Plaintiffs, and their unique elements, sets HERO oil apart, making it distinct and superior to others.
1. Top of Form
5. The Plaintiffs have spent considerable amount of money towards promoting and popularizing the products/services under the HERO Marks. The annual sales and advertisement figures pertaining to Plaintiffs HERO oil for the past few years are as follows:
6. The Plaintiffs have also received various accolades for their products under the HERO marks as delineated in paragraph 21 of the Plaint.
7. Plaintiff No.1 is the registered proprietor of trademark HERO and its variants. The specifics of Plaintiff No.1s trademark registrations are as follows:
8. Additionally, Plaintiff No.1 has filed trademark application bearing No. 5074884 for the mark “HERO GENUINE OIL” on 05.08.2021 in class 4. The current status of the application, as reflected on the Trademarks Registry portal, is ‘accepted and advertised.’
9. Plaintiffs are the owners of the original artistic work as defined in Section 2(c) of the Copyright Act 1957, subsisting in the HERO marks, featuring distinctive and imaginative styles, depicted as under:
Top of Form
a.
b.
Furthermore, the Plaintiffs are also the proprietor of Copyright in original artistic work on the packaging and labels of the Plaintiffs’ HERO oil comprising of distinctive arrangement of features, get-up, artwork and layout, which are represented as under:
10. Plaintiff No. 2 is the registered proprietor of the unique shape of the bottle, which is the subject matter of the suit, under design registration Nos. 311300 and 311301 in classes 09 and 01 respectively.
11. In August, 2022, the Plaintiffs learned of the Defendants sale of counterfeit HERO oil. As per the Plaintiffs information, Defendants No.2 and 3 are the manufacturer and distributor of counterfeit HERO Oil respectively. Defendants No. 4 -11, who are wholesalers, are engaged in the sale of counterfeit HERO oil.
Proceedings till date
12. At the preliminary stage, on 2nd September 2022, the Court granted an ad interim ex parte injunction restraining Defendants from infringing upon, the Plaintiffs registered HERO marks or any other identical/ deceptively similar marks, as well as, infringement of Plaintiffs Copyright in HERO device marks and label. Furthermore, 7 Local Commissioners were appointed to visit the premises of the Defendants to seize and inventorize the infringing goods.
13. During the execution of the Commission, the Local Commissioners, recovered infringing goods, details whereof are as follows:
Defendant(s)
Defendants Addresses
Quantity sized
Defendant 2
Mr. Abdus Samad
Below Shahi Guest House, 112 B,
Mahatma Gandhi Road,
Kolkata
No goods were found
Near Sufi Palace restaurant
Mahatma Gandhi Road,
Kolkata
The locks could not be broken due to nature of locks and therefore, the commission could not be conducted.
Opposite Sufi Palace restaurant
Mahatma Gandhi Road ,
Kolkata
195 empty Hero bottles of 900 ml
+ 1 empty carton +loose oil was found.
However, due to a mob of 40-50 people who surrounded the LC and Plaintiffs representative the goods could not be taken away.
Defendant 3
Mr. Waseem
Near Sufi restaurant,
Madan Mohan BR Street,
Burra Bazar,
Kolkata
The LC entered the premises. No goods found
Near 92A, Madan Mohan BR Street,
Burra Bazar,
Kolkata
5100 empty Hero bottles were found. (4500 empty bottles found by Mr Shivam Sachdeva and 600 bottles were found by Mr. Sharavan Niranjan)
Madan Mohan BR Street,
Burra Bazar,
Kolkata
Local comission could not be executed as there was a mob who interfered with its execution.
Near 55 Madan Mohan Burman Streen, Phoolbagan Calcutta Welfare association, Kolkata
No Hero products were found during the visit.
Defendant 4
M/s Bengal Enterprise
61, Bus Stand Alampur (New Kolora)
Howrah – 711302 West Bengal
NIL
Defendant 5
M/s Ma Kali Oil Centre
61, Bus Stand Alampur (New Kolora)
Howrah – 711302 West Bengal
55 sealed bottles and packed of 900 ml
Defendant 6
M/s New Auto Point – 1
Argori Madrasha Road Andul,
, Hawrah – 711302 West Bengal
NIL
Defendant 7
M/s New Auto Point – 2
Argori Madrasha Road Andul,
Hawrah – 711302 West Bengal
70 sealed and packed bottles of 900ml
Defendant 8
M/s Lokenath Traders
Dhulogarh Chowrasta, Sankrail
Howrah – 711302 West Bengal
211 sealed and packed bottles of 900ml
Defendant 9
M/s Maa Tara Motors
Dhulogarh Chowrasta, Sankrail
Howrah – 711302 West Bengal
NIL
Defendant 10
M/s The Auto Point
Domjur Fokan Dakan
Howrah – 711405 West Bengal
133 bottles of 900 ml of infringed material
Defendant 11
M/s Auto Point
Bankra Kabarpara
Howrah – 711403 West Bengal
NIL
Analysis and findings
14. A visual representation of the comparison of the genuine products with the infringing products is as follows:
15. The above-noted comparison demonstrates that the Defendants have infringed the rights of the Plaintiffs by adopting and using an identical mark with respect to identical goods. Additionally, the Defendants have copied the Plaintiffs product description in addition to the almost identical packaging. To show that the Defendants are selling counterfeit products, the Plaintiff has also provided a chart showing the differences in the packaging of the Plaintiff and the Defendants products, which is as follows:
Therefore, as per Section 29(2)(c) of the Trade Marks Act, 1999, the Defendants are infringing the Plaintiffs trade mark. Further, the Defendants have imitated and blatantly copied each aspect of the Plaintiffs’ labels, logo and packaging, which are the original literary work of the Plaintiffs and such use amounts to infringement of the original artistic copyright vested with the Plaintiffs under the Copyright Act, 1957.
16. The findings of the reports of the Local Commissioners also clearly indicate that the Defendants No. 2,3,5,7,8 and 10 were actively involved in the sale, distribution, and manufacturing of counterfeit HERO Oil, thereby infringing upon the Plaintiffs’ registered HERO marks.
17. As already observed above, all Defendants have already been served in the suit. However, despite said service, they have not appeared before the Court to contest these proceedings. Their defence was closed by the Joint Registrar through orders dated 23rd March 2023 and 11th August, 2023.The Defendants have clearly refrained from contesting the case. Due to the absence of any specific denials, the allegations of trademark and copyright infringement, in conjunction with the supportive evidence, fall within the ambit of deemed admissions of all facts mentioned in the plaint.1 Though the Court has the discretion to require further proof, the Plaintiffs have, through the documents presented on record, satisfied the test required to prove infringement. The reports submitted by the Local Commissioners, which can be read into evidence,2 provide unassailable substantiation implicating Defendants No. 2, 3, 5,7,8 and 10 in the direct sale of counterfeit HERO oil bearing the Plaintiffs registered HERO marks. Therefore, the Court deems it appropriate to dispense with the requirement of leading ex-parte evidence.3
18. Given that the Defendants have not submitted their defence to the present suit, despite sufficient knowledge of the proceedings, the present suit is liable to be decreed in favour of the Plaintiffs, as per Order VIII Rule 10 read with Order XIII-A of the Code of Civil Procedure, 1908, as applicable to commercial suits, read with Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022.
Reliefs
19. Accordingly, the suit is decreed in terms of paragraph No. 36(a), (b) (c) of the Plaint. The goods seized by the Local Commissioners, which are lying on superdari with the Plaintiffs, details whereof are recorded in the reports of the local commissioners, are permitted to be destroyed in accordance with law.
20. As regards claim of damages, this Court is convinced that this is not a case of innocent adoption, and Defendants conduct invites the award of damages. Taking a reasonable assessment of the volume of seizure made, nature of counterfeiting, and the fact that there was an interference by a mob during the execution of the local commission in Defendant Nos. 2 and 3s premises, in the opinion of the Court, Plaintiffs are entitled to nominal damages, recoverable from the Defendants No. 2,3,5,7,8 and 10 in the following proportions:
Name of the Defendant
Amount of Damages to be paid
Defendant No.2, Mr. Abdus Samad
2,00,000/-
Defendant No.3, Mr Waseem
2,00,000/-
Defendant No.5, M/s Ma Kali Oil Centre
1,00,000/-
Defendant No.7, M/s New Auto Point – 2
1,00,000/-
Defendant No. 8, M/s Lokenath Traders
1,00,000/-
Defendant No. 10, M/s The Auto Point
1,00,000/-
21. Plaintiffs are also entitled to actual costs recoverable from Defendants No. 2,3,5,7,8 and 10, in terms of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules, 2018 read with Delhi High Court Intellectual Property Division Rules, 2022 from the Defendants. Plaintiffs shall file their bill of costs in terms of Rule 5 of Chapter XXIII of the Delhi High Court (Original Side) Rules, 2018 on or before 31st March, 2024. As and when the same is filed, the matter will be listed before the Taxing Officer for computation of costs.
22. Decree sheet be drawn up.
23. The suit, along with pending applications, is disposed of.
SANJEEV NARULA, J
FEBRUARY 20, 2024
ab
1 Refer: Balraj Taneja v. Sunil Madan, (1999) 8 SCC 396.
2 See: ML Brother LLP v. Mahesh Kumar Bhuralal Tanna, 2022 SCC OnLine Del 1452.
3 See: Disney Enterprises Inc. and Anr. v. Balraj Muttneja and Ors., 2014 SCC OnLine Del 781, Cross Fit LLC v. RTB Gym and Fitness Centre, 2022 SCC OnLine Del 2788, and The Indian Performing Right Society Ltd. v. Gauhati Town Club, 2013 (134) DRJ 732.
—————
————————————————————
—————
————————————————————
CS(COMM) 605/2022 Page 2 of 2