STERLING AGRO INDUSTRIES LIMITED vs M/S ASR TRADING COMPANY & ORS.
$~28
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 7th February, 2024.
+ CS(COMM) 148/2019, I.A. 4158/2019
STERLING AGRO INDUSTRIES LIMITED ….. Plaintiff
Through: Mr. Manish Biala, Advocate.
versus
M/S ASR TRADING COMPANY & ORS. ….. Defendants
Through: None.
CORAM:
HON’BLE MR. JUSTICE SANJEEV NARULA
JUDGEMNT
SANJEEV NARULA, J. (Oral):
I.A. 13473/2019 (on behalf of the Plaintiff, under Order XIIIA Rules 3 and 6 (1) (a) read with Section 151 of the Code of Civil Procedure, 1908)
1. The Plaintiff, Sterling Agro Industries Limited, seeks a summary judgment under Order XIIIA, Rules 3 and 6 (1) (a) read with section 151 of the Code of Civil Procedure, 1908.
2. Counsel for Plaintiff submits as follows:
2.1. The Plaintiff, an incorporated company, has filed the present suit for permanent injunction restraining the Defendants from dealing in any products under the impugned mark NOVYA amounting to passing off and infringement and of its registered trademark NOVA.
2.2. Plaintiff is in the business of manufacturing dairy products which commenced in 1991. These products are sold under the trademark NOVA. This mark was coined and adopted by the Plaintiff in 1992 in relation to Ghee and other dairy products. The Plaintiff secured several registrations of the trademark NOVA as a device as well as a wordmark [hereinafter Plaintiffs marks], detailed hereinbelow:
Trade Mark
Application
No.
Application
Date
Class
Status
566187
24.01.1992
29
Registered
1696818
09.06.2008
29
Registered
1696817
09.06.2008
29
Registered
3614473
17.08.2017
29, 32
Pending
NOVA (WORD)
1556252
07.05.2007
29
Registered
NOVA LITE (WORD)
2086196
18.01.2011
29
Registered
1364103
15.06.2005
29
Registered
NOVA PREMIUM
BUTTER (WORD)
3343720
23.08.2016
29
Registered
2937174
08.04.2015
29
Pending
2.3. Plaintiff has been selling Ghee under a distinct packaging which comprises of a predominant blue background; a grazing cow in a green field, and the brand name NOVA mentioned at the top [hereinafter Plaintiffs Packaging]. The representation is as follows:
2.4. Plaintiff has earned recognition and goodwill under the trademark NOVA which is evident from the sale figures of the Plaintiffs product which have been growing each year, and as on the date of filing, for the year 2017-18, the annual sales figures was approximately INR 1600 crores. The Chartered Accountant certificate is also relied upon to authenticate such figures. Besides, Plaintiff has been regularly spending monies towards advertising the trademark NOVA which is evident from the expenses towards advertisements and promotional material delineated, in paragraph 8 of the plaint. Plaintiff also promotes their products on their website http://www.steragro.com/ which is accessible all over the globe.
2.5. Defendant No.1 is a partnership firm and Defendant No.3 and Defendant No.2 are partners in the said firm. Plaintiffs grievance with the Defendants pertains to its use of deceptively similar trademark NOVYA [hereinafter impugned mark] which is used in a manner that the Defendants product packaging results in a slavish imitation of the Plaintiffs packaging. The overall getup of the two is nearly identical.
2.6. In or around February 2019, Plaintiff through their market sources learned about the identical products viz. Ghee that were being sold by Defendants under a deceptively similar mark NOVYA in packaging that was deceptively similar to Plaintiffs packaging.
2.7. A visual comparison of the products depicting the trademarks is as follows:
3. Upon establishing a prima facie case of infringement, this court on 20th March, 2019, granted an ad interim injunction in favour of the Plaintiff, restraining the Defendants from manufacturing, selling, or dealing in products that infringe upon the Plaintiff’s trademark. Additionally, in order to assess the extent of infringement, a Local Commissioner was appointed with directions to inspect the premises of the Defendants and seize any infringing items. The inspection undertaken by the Local Commissioner resulted in the recovery of an empty box of the contested product, NOVYA Desi Ghee, at the premises of Defendant No. 1.
4. In the written statement, Defendants make the following submissions:
4.1. Defendant No.3 is the sole proprietor of Defendant No.1. Defendant No.2, being brother of Defendant No.3, has been falsely implicated and the suit is liable to be dismissed on ground of misjoinder of Parties.
4.2. The Local Commissioners report, in fact, supports Defendants stance as only one NOVA Desi Ghee empty box, provided by Defendant No.2 was recovered. The report explicitly states that no other infringing goods were found on the premises.
4.3. Defendants admit to filing the trademark application for the wordmark NOVYA bearing application no. 4027927 [hereinafter TM application]. However, it is denied that they have adopted an identical trademark for identical goods. There are huge differences between the two marks NOVA and NOVYA. Further, there is a huge difference between the goods for which the mark is being utilised. Defendants strongly deny that their packaging is a slavish imitation of the one used by the Plaintiffs for sale of their products. Even in the reply to the present application the Defendants have reiterated their defences raised in the written statement and inter alia contend as follows:
It is submitted that the defendants are/were not indulged in any kind of unlawful activities of printing and packaging Ghee. It is further submitted that the defendants filed application for Trade Mark with Mark NOVYA which is totally different from NOVA, the plaintiffs Product and the same can be easily differentiate with number of alphabets and phonetic spelling and sound. It is further submitted that the said trade mark was not applied with respect to goods which are identical to the plaintiffs good, inter alia Ghee and other food products. It is submitted that the differentiation of the products of both NOVA VS. NOVYA can been seen by the documents filed by the plaintiff itself on record. It is further submitted that the defendant no. I through the defendant no. 3 did never attempt to misappropriate the Plaintiff s trademark to itself and get a deceptively similar trademark registered in its favour…
4.4. The Defendants also rely upon TM application as evidence, arguing that the scope of this application extends beyond merely Ghee Products. Specifically, they assert that the application encompasses a wider array of goods, including Ghee, Meat, Fish, Poultry and Game, Milk and Milk Products, as well as Oils and Fats intended for consumption. The Defendants also contend that their commercial activities related to the products associated with the disputed mark have yet to commence. Nevertheless, in anticipation of future business endeavours, the Defendants undertook preliminary steps by producing approximately 50 litres of Desi Ghee. This sample batch was distributed to local stores in the vicinity of Defendant No. 1s premises.
Defendants Conduct
5. During the course of proceedings, the conduct of Defendant No. 3 emerges as negligent and contemptuous, warranting particular attention. On 22nd November, 2019, while deliberating on the matter at hand, the court observed an egregious act by Defendant No. 3. The court was presented with evidence showing that Defendant No. 3 falsely advertised their product with a ‘Government of India registered trademark’ endorsement, despite the fact that their trademark application was abandoned following an opposition by the Plaintiff. This action led to the issuance of a directions requiring Defendant No. 3’s presence in court.
6. Subsequently, on 10th December, 2019, inconsistencies were noted between Defendant No. 3’s oral statements and their written submission, prompting the court to prima facie find Defendant No. 3 guilty of making false representations, effectively amounting to contempt of court. This resulted in the issuance of a show cause notice against Defendant No. 3, who thereafter ceased to appear before the court. Consequently, bailable warrants were issued on February 12, 2020 returnable on 11th March, 2020. Noting the court was on leave on 11th March, 2020, the court issued fresh bailable warrants on 20th April, 2022. Although these warrants remained unexecuted, Defendant No. 3s presence was eventually noted on 16th September, 2022.
7. Thereafter, on 19th September, 2022, again statement of both Defendant Nos. 2 and 3 were recorded, wherein they have stated as under:
Statement of Mr.Anil Kumar S/o Sh. Ram Swarup, Aged 42 years R/o Ward No.2, Near Old Police Station Chowk, Tosam, Bhiwani- 127040 (Haryana).
ON SA
I have no relationship with the defendant no.l. I have never had any relationship with the defendant no. 1.
I am in the business of packaging and trading of Dalda Ghee. I am doing the business of Desi Ghee in the name and style of’AS Trading Co.’.
I am presently using two trade marks i.e. ‘Madhu Sargam’ and ‘Royal Deep’. I have never used the trade mark ‘Novya’.
The empty box bearing the mark ‘Novya’ which was recovered by the Local Commissioner was brought by me for production before the Local Commissioner from the premises of the defendant nos.l and 3. I had made around 3-4 of such sample packaging. I have never put any ghee in the said sample packaging. I had supplied 3-4 samples to my relatives for testing.
I admit that I also used the brand ‘Mother Light’. I also admit that I used the brand ‘Royal Anmol’. I am presently not carrying any permission for manufacturing and selling desi ghee in the marks mentioned hereinabove.
I identify my signature on the written statement.
Court question: The attention of the witness is drawn to the statement made in the paragraph 22 of the preliminary objections to the written statement wherein it is stated that “however the defendants got prepared appox. 50 litres of desi ghee for sampling and sent it to the local store nearby the address of defendant no.l.”
The witness is asked to explain the contradictions between the statement made in the written statement and the one is made today.
Ans. I may have supplied a few cartons of desi ghee in the mark ‘Novya’ in the nearby store on a sample basis.
Court Question. Can you produce the requisite permissions for manufacturing and selling the ghee from the concerned Authorities?
Ans. I have the requisite permissions, however, presently I am not carrying the same with me today. However, I can produce the same if so directed by this Court.
Statement of Mr.Sunil Kumar S/o Sh. Ram Swarup, Aged 44 years R/o Tosham, Ward No.2, Purana Thana Nasdik, Tusham, Bhiwani, Haryana-127040
ON SA
I am the sole proprietor of the defendant no.l. I am presently in trading business wherein I purchase goods from Gridar Food. My brother has a separate business and is dealing in Dalda Ghee. He works in the name of ‘Madhu Sargam’ and ‘Royal Deep’. His work place is close to mine, though in a different place.
On the day of the visit of the Local Commissioner appointed by this Court, I was not present at my work place. My brother was however present. The Local Commissioner had in fact visited the premises belonging to my brother. The materials seized by the Local Commissioner were not from my premises.
I had only gotten 3-4 cartons for packing of ‘Novya’ Ghee printed.
The witness identifies his signatures on the affidavit with the written statement as also on the written statement.
I admit that I prepared approx.50 liters of desi ghee for sampling, however the same were sent to the relatives and for self consumption.
Court Question: Attention of the witness is drawn to paragraph 22 of the preliminary objections to the written statement wherein it is stated that “however the defendants got prepared appox. 50 litres of desi ghee for sampling and sent it to the local store nearby the address of defendant no.l.”
The witness is asked to explain the contradictions between the statement made in the written statement and the one is made today.
Ans. The statement made in the written statement is incorrect.
I am presently not dealing in desi Ghee.
[Emphasis supplied]
8. The Defendants representation has been intermittent, highlighting an inconsistent engagement in court’s proceedings. There has been a conspicuous absence of any appearance in todays hearing. This pattern of sporadic representation and outright non-appearance on several occasions exhibits a profound disregard for legal obligations. Such conduct reflects a calculated attempt to evade accountability.
9. The argument posited by the Defendants, asserting a distinction between NOVA and NOVYA, does not hold up under judicial scrutiny. Their defence, predicated on the claim of dissimilarity between the marks, is fundamentally flawed. Visually and structurally, the two trademarks exhibit a level of similarity that far surpasses incidental resemblance, reflecting a near-identical composition in both appearance and phonetic sound. Such striking parallels not only starkly counter the Defendants’ claims of differentiation, but also compellingly point towards a clear case of infringement. This congruence, in both visual form and phonetics, unequivocally undermines the Defendants’ defence and proves infringement claim. The Defendants mark and packaging is deceptively similar to Plaintiffs mark and packaging . The Defendants’ decision to file a trademark application for the mark NOVYA at a time when the Plaintiffs trademark was already duly registered exhibits not only a disregard for Plaintiffs established trademark rights but also indicates a deliberate attempt to capitalize on the Plaintiffs goodwill. This is compounded by the fact that the Defendants’ trademark application has since been abandoned, further suggesting that their use of the impugned mark was dishonest and with mala fide intentions. The infringement is made blatantly clear by the Defendants’ choice to use NOVYA for identical goods, specifically milk products like Ghee, directly competing within the same class (29) for which the Plaintiff holds a registration. This direct overlap in product categories underlines the lack of merit in the Defendants assertion of distinctiveness between the marks. Moreover, the imitation extends to the packaging used by the Defendants, which not only mirrors the Plaintiffs trade dress but also signifies an intentional strategy to mislead consumers and leverage the Plaintiffs established market presence. Such actions unequivocally point to the Defendants motive to imitate and benefit from the recognition and trust the Plaintiff has cultivated over years of continuous use of their mark NOVA. Consequently, the Defendants claim of trademark distinctiveness falls flat, revealing a calculated effort to infringe upon and exploit the Plaintiffs trademark rights. Additionally, the Defendants contrary stance taken before this court reflects bad faith. That apart, the distribution of ghee to stores nearby Defenant No. 1s premises evidence their engagement with the infringing goods.
10. Thus, the Court is convinced that the Defendants have no real prospect of successfully defending their claim raised in the written statement. Additionally, the report of the Local Commissioner which can be read as evidence, also indicates that the Defendants were indulging in counterfeiting by adopting a deceptively similar mark and packaging. Further, counsel for the Plaintiff has stated that they do not wish to press for any damages and would be satisfied with the relief of grant of permanent injunction and award of the litigation cost. There is no other compelling reason why the suit should not be disposed of before recording of oral evidence. Therefore, the Court, in exercise of its power under, Order XIIIA, Rules 3 and 6 (1) (a) read with section 151 of the Code of Civil Procedure, 1908, is inclined to decree the suit in favour of the Plaintiff.
11. In view of the above, the application is allowed.
CS(COMM) 148/2019
12. Accordingly, for the reasons discussed above, the suit is decreed in favour of the Plaintiff and against the Defendants in terms of prayer 30(a), and 30 (b) of the Plaint.
13. Additionally, the Plaintiff is entitled to actual costs, in terms of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules, 2018 read with IPD Rules, recoverable from Defendants No.2 and 3, jointly and severally. Plaintiff shall file its bill of costs in terms of Rule 5 of Chapter XXIII of the Delhi High Court (Original Side) Rules, 2018 on or before 2nd March, 2024. As and when the same is filed, the matter will be listed before the Taxing Officer for computation of costs.
14. In light of the blatant disregard to the Court proceedings, as is evident from the orders noted above,1 coupled with Defendant No.3s stand in the written statement, and the one taken before the Court at the time of recording of the statement, clearly proves that the Defendant No.3 is not truthful in his claim. Defendant No.3 has attempted to mislead this Court by taking a frivolous stand and has then attempted to justify the same by making a statement which is completely contradictory to the stand taken in the written statement. In view of the above, in the opinion of the Court, the Defendant No.3 is held guilty of contempt, and an amount of INR 5,00,000/- is awarded as penalty to be paid to the Plaintiff.
15. Decree Sheet be drawn up in the above terms.
16. Accordingly, suit and pending applications, if any, are disposed of.
SANJEEV NARULA, J
FEBRUARY 7, 2024nk
1 Paragraphs 6-8.
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