HIMALAYA GLOBAL HOLDINGS LTD & ANR. vs RAJASTHAN AUSHDHALAYA PRIVATE LIMITED & ANR.
$~26
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 433/2024 & I.A. 30284/2024, I.A. 35522/2024, I.A. 46699/2024
HIMALAYA GLOBAL HOLDINGS LTD. & ANR. …..Plaintiffs
Through: Mr. Vishal Nagpal, Ms. Suhrita Majumdar and Mr. Debjyoti Sarkar, Advocates
Mob: 9810228369
versus
RAJASTHAN AUSHDHALAYA PRIVATE LIMITED & ANR.
…..Defendants
Through: Ms. Maheravish Rein, Advocate with Ms. Shamshravish Rein, Mr. Aldanish Rein and Mr. Ankush Kalra, Advocates
Mob: 9899210868
Email: shamshravish@gmail.com
CORAM:
HON’BLE MS. JUSTICE MINI PUSHKARNA
O R D E R
% 25.02.2025
MINI PUSHKARNA, J (ORAL)
I.A. 46699/2024 (Application under Order VIII Rule 10 read with Section 151 CPC)
1. The present suit has been filed seeking permanent injunction restraining infringement of plaintiffs trademarks and logo, Liv.52 and against defendants use of the infringing marks, Liv-333 and , along with other incidental reliefs.
2. The present application under Order VIII Rule 10, read with Section 151 of the Code of Civil Procedure, 1908 (CPC), has been filed on behalf of the plaintiffs, seeking pronouncement of judgment against the defendants pursuant to closure of the defendants right to file written statement.
3. The case set up by the plaintiffs, is as follows:
3.1 The plaintiffs are a leading global herbal health and personal care organization founded in the year 1930 that deals in several well-known products and brands like Liv.52 under their reputed trademark HIMALAYA.
3.2 The fanciful HIMALAYA logo, was conceived, developed and adopted by the plaintiffs in the year 2001. The plaintiffs are the registered proprietors of the HIMALAYA trademarks and logos, the details of which, as given in the plaint, are reproduced as under:
3.3 The aforesaid HIMALAYA logos have become iconic in consumer consciousness and have garnered significant reputation and goodwill from their long, extensive and continuous use. Further, the plaintiffs have also obtained copyright registrations in their HIMALAYA marks, the details of which, as provided in the plaint, are reproduced as under:
3.4 The plaintiffs product under the mark Liv.52, is a natural remedy for improving liver function, which was adopted by the predecessors-in-interest of the plaintiffs in the year 1955, and has been in open, continuous and extensive use ever since. The said product is sold under the HIMALAYA trademark and is available in the market in different variations such as Liv.52 Syrup, Liv.52 DS Syrup, Liv.52 Tablets, Liv.52 DS Tablets, Liv.52 Drops, Liv.52 HB Capsules, Liv.52 Protec Liquid, Liv.52 Protec-PPS, Liv.52 Pet Liquid, Liv.52 Vet, Liv.52 Protec Poultry, Liv.52 Protec, Liv.52 Furglow Liquid, etc.
3.5 The infringing goods bearing the impugned marks Liv-333 and are manufactured by defendant no.2 which are then marketed and sold by defendant no. 1. Further, in January, 2024, the plaintiffs came across several listings for the goods, capsules and tonic under the infringing Liv-333 mark and RAJASTHAN logo on various e-commerce websites such as Amazon, Flipkart, JioMart, IndiaMart, etc.
3.6 Upon conducting online searches, the plaintiffs came across an invoice of the defendants dated 23rd April, 2015, which purportedly showed commercial use of the Liv-333 mark. A copy of the said invoice, as filed with the suit documents, is reproduced as under:
3.7 The plaintiffs sent a cease-and-desist notice dated 17th January, 2024, calling upon the defendant no. 1 to cease use of the infringing mark. Despite receipt of the said cease-and-desist notice, the said defendant failed to tender any response or stop the user of the impugned marks, constraining the plaintiffs to approach this Court by way of the present suit.
4. This Court notes that an ex-parte ad-interim injunction is in operation against the defendants in terms the order dated 24th May, 2024, whereby, the defendants were restrained from dealing in goods and packaging bearing the infringing mark Liv-333, and/or any other mark which is identical and/or deceptively similar to plaintiffs registered mark Liv.52.
5. This Court further notes that the right of the defendants to file written statement has already been closed by this Court vide order dated 23rd January, 2025. Though, learned counsel appearing for the defendants submits that written statement was filed on their behalf on 2nd August, 2024, however, it is to be noted that there is no such written statement which is on record before this Court.
6. Further, this Court also notes that neither any appeal has been filed against the order dated 23rd January, 2025, when the right to file written statement of the defendants was closed, nor any steps have been taken by the defendants to bring their written statement on record.
7. In the absence of any written statement on record, and the right of the defendants to file written statement having already been closed vide order dated 23rd January, 2025, there is no impediment in proceeding under Order VIII Rule 10 CPC.
8. Learned counsel appearing for the plaintiffs has drawn the attention of this Court to the documents filed with the suit pertaining to listings of the defendants impugned products on various e-commerce websites, such as, Flipkart, Amazon, JioMart, IndiaMart, etc., which are reproduced as under:
9. This Court observes that despite multiple opportunities to file an affidavit disclosing the revenue earned from the sale of products bearing the Liv-333 mark since the grant of the injunction on 24th May, 2024, as well as the pendency of a contempt application filed by the plaintiffs under Order XXXIX Rule 2A CPC, the defendants belatedly filed the requisite details in February, 2025.
10. The relevant extracts from the affidavit of compliance filed on behalf of defendant no. 1, with respect to the sales of the products in question, after the injunction order dated 24th May, 2024, is reproduced as under:
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4. That in compliance of Court Order dated 05.08.2024, the sales figures for the period starting from 24th May, 2024, till date are as under:
The stocks sold for the period starting from 24th May, 2024, till date are as under:
5. That the details of the revenue earned by from the sale of the abovementioned allegedly infringed products from the date of the injunction order, i.e., 24th May, 2024, till date is as under:
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11. Similarly, the affidavit filed on behalf of defendant no. 2 regarding sale of the products after the date of injunction order dated 24th May, 2024, reads as under:
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6. That in compliance of court direction dated 24.05.2024 and 29.09.2024 the details of quantum of stock manufactured and sold under the banner of the defendants.
7. That in compliance of court direction dated 24.05.2024 and 29.09.2024, the details of quantum of stock which is lying with the defendant
8. That the details of the revenue earned by from the sale of the abovementioned allegedly infringed products from the date of the injunction order, i.e., 24th May, 2024, till date is as under:
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12. A perusal of the sales figures furnished in the aforesaid affidavits, reveal that the defendants have continued to sell products under the impugned Liv-333 mark, in direct contravention of the ad-interim injunction subsisting against them.
13. It is further noted that the defendants had offered to settle the matter on the last date of hearing, i.e., 30th January, 2025, by making a payment of Rs. 3 lacs. However, the said offer was refused by the plaintiffs on account of the defendants aforenoted violation of the injunction order and their wilful disobedience.
14. At this stage, it is imperative to compare the marks of the plaintiffs with the impugned marks of the defendants. A tabular comparison of the rival marks is as under:
PLAINTIFFS MARKS
DEFENDANTS MARKS
LIV.52
LIV-333
15. Upon a bare perusal of the comparison of plaintiffs HIMALAYA logo and defendants RAJASTHAN logo, hereinabove, it is manifest that no claim of infringement can be carved out with respect of these two marks. Both the marks are entirely distinct – visually, phonetically and structurally. Accordingly, the plaintiffs claim of similarity of green-orange colour scheme and the leaf device cannot be upheld.
16. However, upon comparison of the plaintiffs Liv.52 mark with the defendants Liv-333 mark, it is evident that the mark LIV forms the essential feature of the plaintiffs Liv.52 mark and the defendants have clearly infringed upon the said mark by adding a numeral 333, that does not sufficiently distinguish their mark from that of the plaintiffs. The use of the term LIV as the essential element in both marks creates a high degree of similarity, leading to a likelihood of confusion among consumers. The mere addition of the numeral 333 does not alter the overall impression of the mark, as the primary and most recognizable component remains identical.
17. Reference may be made to the decision of a Division Bench of this Court in the case of Himalaya Drug Company Versus S.B.L. Limited, 2012 SCC OnLine Del 5701, wherein, the respondent therein was restrained from using the mark LIV as part of its trade mark LIV-T in respect of medicinal preparations. It was held that the use of the expression LIV, even in isolation, is an infringement of the prominent feature of the plaintiffs registered trademark. The relevant portion of the aforesaid judgment, is reproduced as under:
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94.? ?The plaintiff in the present case was able to prove that the Liv.52 is still distinctive. The customers purchase the product of the plaintiff by asking Liv.52 which is being used for the last more than 57 years. It has also come in evidence that the mark LIV is the essential feature of the registered trade mark Liv.52. On the other hand, the defendant was unable to prove that it is a generic word and becomes common to the trade. It is also pertinent to mention here that on one hand, the defendant’s entire case is that mark LIV is a generic word and is unprotectable in law, but on the other hand, the defendant itself applied for registration of LIV-T in the Trademarks Registry for getting the exclusive right before filing of the written statement, however in written statement word LIV is a generic mark and has become publici juris. Therefore, the findings arrived at by the learned single judge in relation to issue no. 12 are not correct and the same are set aside.
95.? ?As we have arrived at the finding that the LIV written in isolation is an essential feature of the trade mark Liv.52 and also noticed the rules of comparison which is that the marks are to be compared as whole. Therefore, the presence of the mark LIV which is an essential feature of the mark Liv.52 shall be considered for the purposes of comparison with that of LIV-T.
96.? ?Following the dictum of Cadila (supra) and tests laid down by the Supreme Court from time to time and also the material available on record, it can be said that for the purposes of comparison of the mark Liv.52 and LIV-T, the word LIV represented in a particular form cannot be excluded for the purposes of measuring the deceptive resemblance. This is more so when we have arrived at the finding that there is no sufficient material showing the user of the word LIV written in isolation which establishes the generic nature of the component and there is no also non establishment of material facts leading up to generic nature of the word.
97.? ?Once we arrive at the finding that the Liv.52 mark is conclusive in registration without any challenge as per section 32, then the conclusion would be that the use of the expression LIV in isolation is an infringement of the prominent feature of the plaintiff’s registered trade mark. As the defendant is using the mark LIV in isolation, therefore, the defendant is not entitled to use the same. However, we permit the defendant, if so advised, that the defendant may use the mark containing the expression LIV not written in isolation and is accompanied by suffixes, examples of which are given in the written statement i.e. LIVOGEN, Livpar, Livosin, LIVAPLEX, LIVOFIT, LIVA, LIVOL, LIVDRO, LIVAZOL, LIVERITE, LIVERJET, LIVERNUT, LIVERPOL, LIVUP. At this stage, we wish to recall the submission of the Mr. Hemant Singh, learned counsel that the plaintiff that the plaintiff has no objection if the defendant may use the word LIV along with suffixes which may not be visually, phonetically or structurally similar to the trade of the plaintiff.
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(Emphasis Supplied)
18. Furthermore, considering that the goods in question are medicinal products, even a minimal degree of confusion can have serious consequences for public health, as mistaken identity of the products may lead to adverse medical effects or improper treatment. Therefore, the risk of deception must be assessed with greater caution, and the defendants unauthorised use of the impugned mark cannot be permitted, as it creates a likelihood of confusion among consumers, medical practitioners, and pharmacists. (See: Cadila Healthcare Ltd. Versus Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73)
19. This Court takes note of the details of the trademark registrations with respect to the Liv.52 mark of the plaintiffs, which are reproduced as under:
20. Accordingly, upon careful consideration of the aforesaid discussion, it is noted that the plaintiffs claim of infringement is well-founded, as the defendants use of Liv-333 is likely to deceive or cause confusion among the members of trade and public. The unauthorized use of the LIV element in a manner that does not materially differentiate the defendants mark from the plaintiffs’ well-established Liv.52 mark amounts to a violation of the plaintiffs statutory rights. This position is further fortified by the aforesaid decision in Himalaya Drug Company (Supra). Thus, it is manifest that the defendants mark Liv-333, with the word Liv appearing in isolation followed by a numeral, is nearly identical/deceptively similar to plaintiffs registered and prior used trademark Liv.52.
21. This Court further takes note of the reply filed by defendant no.1 to the I.A. 35522/2024 filed under Order XXXIX Rule 2A CPC by the plaintiffs, wherein, the defendant has stated that after the passing of the injunction order, the defendants had stopped the manufacturing of the impugned products, i.e., Liv-333 Capsules and Liv-333 Syrup, on 23rd May, 2024. It is noted that the sale of the said impugned products was stopped w.e.f. 31st July, 2024 and 08th August, 2024 for Liv-333 Capsules and Liv-333 Syrup, respectively. It is further noted that the defendant has removed the infringing listings from the third party e-commerce platforms on 04th August, 2024.
22. As discussed above, the defendants right to file written statement was closed vide order dated 23rd January, 2025. Further, the said order was never challenged nor any steps were taken by the defendants to bring their written statement on record. Thus, the defendants failure to file its written statement within the maximum statutory period of 120 days and the closure of defendants right to file the written statement, demonstrates the lack of defence of its infringing activities with respect to the plaintiffs LIV mark.
23. Holding that if a defendant fails to pursue its case and does not file its written statement, the courts should invoke the provisions of Order VIII Rule 10 CPC to decree such cases, this Court in the case of Impresario Entertainment & Hospitality Pvt. Ltd. Versus Mocha Blu Coffee Shop, 2018 SCC OnLine Del 12219, has held as follows:
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6. This Court while dealing with a similar application under Order VIII Rule 10 CPC in CS (OS) 873/2015 Samsung Electronics Company Limited v. Mohammed Zaheeer Trading As Gujarat Mobiles has culled out the relevant law as under:
10. The Supreme Court in C.N. Ramappa Gowda v. C.C. Chandregowda, (2012) 5 SCC 265 has interpreted the Order VIII Rule 10 CPC as under:
25. We find sufficient assistance from the apt observations of this Court extracted hereinabove which has held that the effect [Ed.: It would seem that it is the purpose of the procedure contemplated under Order 8 Rule 10 CPC upon non-filing of the written statement to expedite the trial and not penalise the defendant.] of non-filing of the written statement and proceeding to try the suit is clearly to expedite the disposal of the suit and is not penal in nature wherein the defendant has to be penalised for non-filing of the written statement by trying the suit in a mechanical manner by passing a decree. We wish to reiterate that in a case where written statement has not been filed, the court should be a little more cautious in proceeding under Order 8 Rule 10 CPC and before passing a judgment, it must ensure that even if the facts set out in the plaint are treated to have been admitted, a judgment and decree could not possibly be passed without requiring him to prove the facts pleaded in the plaint.
26. It is only when the court for recorded reasons is fully satisfied that there is no fact which needs to be proved at the instance of the plaintiff in view of the deemed admission by the defendant, the court can conveniently pass a judgment and decree against the defendant who has not filed the written statement. But, if the plaint itself indicates that there are disputed questions of fact involved in the case arising from the plaint itself giving rise to two versions, it would not be safe for the court to record an ex parte judgment without directing the plaintiff to prove the facts so as to settle the factual controversy. In that event, the ex parte judgment although may appear to have decided the suit expeditiously, it ultimately gives rise to several layers of appeal after appeal which ultimately compounds the delay in finally disposing of the suit giving rise to multiplicity of proceedings which hardly promotes the cause of speedy trial.
11. A Coordinate Bench of this Court in Nirog Pharma Pvt. Ltd. v. Umesh Gupta, (2016) 235 DLT 354 has held as under:
11. Order VIII Rule 10 has been inserted by the legislature to expedite the process of justice. The courts can invoke its provisions to curb dilatory tactic, often resorted to by defendants, by not filing the written statement by pronouncing judgment against it. At the same time, the courts must be cautious and judge the contents of the plaint and documents on record as being of an unimpeachable character, not requiring any evidence to be led to prove its contents.
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28. The present suit is also a commercial suit within the definition of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 and it was the clear intention of the legislature that such cases should be decided expeditiously and should not be allowed to linger on. Accordingly, if the defendant fails to pursue his case or does so in a lackadaisical manner by not filing his written statement, the courts should invoke the provisions of Order VIII Rule 10 to decree such cases.
12. Another Coordinate Bench of this Court in Satya Infrastructure Ltd. v. Satya Infra & Estates Pvt. Ltd., 2013 III AD (Delhi) 176 has held as under:
4. 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
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(Emphasis Supplied)
24. Therefore, the assertions made in the plaint remain unchallenged by the defendants by failing to file any written statement, despite being granted sufficient opportunities by this Court. Hence, the averments in the plaint are deemed to be admitted.
25. Considering the fact that the plaintiffs are the registered owner of the Liv.52 trademark, the adoption of a deceptively similar mark, i.e., Liv-333 by the defendants, is dishonest and amounts to infringement and passing off of plaintiffs registered and reputed mark, Liv.52, which has been in use in India since the year 1955.
26. On the issue of costs and damages, this Court, in the case of Microsoft Corporation Versus Rajendra Pawar and Others, 2007 SCC OnLine Del 1973, has held that punitive and exemplary damages shall be granted to discourage disobedient parties and hold them accountable for the damages and loss caused to the other party by their acts of infringement. The relevant portion of the said judgment, reads as under:
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?26.? ?Particularly relevant to note is the case of Mathias v. Accor Economy Lodging, Inc. cited at 347 F. 3d 672 (7th Cir. 2003), where this Court, while elucidating the factors underlying the grant of punitive damages, observed that one of the functions of punitive damages is to relieve the pressure on an overloaded Criminal Justice System by providing a civil alternative to criminal prosecution of minor crimes. It was further observed that the award of punitive damages serves the additional purpose of limiting the Defendant’s ability to profit from its fraud by escaping detection and prosecution.
27.? ?Our discussion on punitive damages will remain incomplete without revisiting the landmark case of Time Incorporated v. Lokesh Srivastava, (2005) 30 PTC 3 (Del). The said case can be rightfully acknowledged as a harbinger of the practice of awarding punitive damages in intellectual property rights matters in India, a trend which all Courts are zealously endorsing and following today. In the said case, while awarding punitive damages Rs. 5 lakhs in addition to compensatory damages also of Rs. 5 lakhs, R.C. Chopra, J. observed that it was about time the Courts dealing actions for infringement of trade marks, copyrights, patents, etc. should not only grant compensatory damages but also award punitive damages with a view to discourage and dishearten law-breakers who indulge in violations with impunity out of lust for money so that they realize that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay punitive damages also, which may spell financial disaster for them. Following observations of the learned single Judge in paragraph 7 of the said case, incarnating the jurisprudence underlying the practice of awarding punitive damages in India, are reproduced as under:
7.? ?Coming to the claim of Rs. 5 lacs as punitive and exemplary damages for the flagrant infringement of the Plaintiff’s trade mark, this Court is of the considered view that a distinction has to be drawn between compensatory damages and punitive damages. The award of compensatory damages to a Plaintiff is aimed at compensating him for the loss suffered by him whereas punitive damages are aimed at deterring a wrongdoer and the like minded from indulging in such unlawful activities. Whenever an action has criminal propensity also the punitive damages are clearly called for so that the tendency to violate the laws and infringe the rights of others with a view to make money is curbed. The punitive damages are founded on the philosophy of corrective justice and as such in appropriate cases these must be awarded to give a signal to the wrong doers that law does not take a breach merely as a matter between rival parties but feels concerned about those also who are not party to the lis but suffer on accounts of the breach. In the case in hand itself, it is not only the Plaintiff, who has suffered on account of the infringement of its trade mark and Magazine design but a large number of readers of the Defendant’s Magazine TIME ASIA SANSKARAN also have suffered by purchasing the Defendants’ Magazines under an impression that the same are from the reputed publishing house of the Plaintiff company.
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(Emphasis Supplied)
27. In view of the defendants continued and willful infringement of the plaintiffs Liv.52 mark despite the subsistence of an ad-interim injunction, this Court finds it appropriate to impose costs and damages to compensate the plaintiffs for the losses suffered and to deter such unlawful conduct. The defendants, having derived undue commercial benefit from the unauthorized use of the impugned Liv-333 mark, are liable to compensate the plaintiffs for the loss of goodwill, dilution of trademark rights, and unjust enrichment.
28. This Court has taken note of the affidavit of costs which was handed over by the learned counsel for the plaintiffs and taken on record during the course of arguments, as per which, the plaintiffs have incurred a cost of Rs. 10,91,567/- in pursuing the present legal proceedings.
29. Accordingly, the present application is allowed and the following directions are issued:
I. The suit is decreed in favour of the plaintiffs and against the defendants in terms of Para 69 (a) and (b) of the plaint.
II. Cost of the suit, i.e., ? 10,91,567/- is granted in favour of the plaintiffs.
III. Plaintiffs are further entitled to damages to the tune of ? 20 Lacs, payable by defendant nos. 1 and 2, i.e., ? 10 Lacs each.
30. Payment shall be made by defendant nos. 1 and 2 to the plaintiffs within a period of four months.
31. Let decree sheet be drawn up.
32. The present suit, along with the pending applications, stands disposed of.
MINI PUSHKARNA, J
FEBRUARY 25, 2025
Corrected & Released on: 13th March, 2025
CS(COMM) 433/2024 Page 26 of 26