TELEMART SHOPPING NETWORK PVT LTD Vs TVC LIFE SCIENCES LTD & ANR -Judgment by Delhi High Court
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 12th January, 2023
+ CS(COMM) 115/2016
INDIYAA DISTRIBUTION NETWORK LLP ….. Plaintiff
Through: Mr. N. Mahabir and Ms. Noopur Biswas, Advocates.
versus
TVC LIFE SCIENCES LTD & ANR ….. Defendants
Through: Ex-parte.
CORAM:
HON’BLE MR. JUSTICE SANJEEV NARULA
J U D G M E N T
SANJEEV NARULA, J. (Oral):
1. Plaintiff seeks a decree of permanent injunction restraining Defendants from passing off its mark �SANDHI SUDHA�, and other ancillary reliefs of damages, rendition of accounts and destruction of infringing goods.
2. The suit was originally filed by Telemart Shopping Network Private Ltd., a teleshopping company incorporated in 2006. During pendency of the suit, said company assigned the mark �SANDHI SUDHA� along with its goodwill and copyright to one partnership firm viz. Teleworld Marketing vide assignment deed dated 24th October, 2016. Thereafter, Teleworld Marketing assigned the mark to Indiyaa Distribution Network LLP on 05th January, 2018, who has been substituted as a Plaintiff on 08th March, 2019.
CASE OF THE PLAINTIFF
3. Plaintiff�s predecessor-in-interest coined and adopted the mark �SANDHI SUDHA� in 2008 with respect to an ayurvedic joint pain relief oil, and commenced its commercial use since January 2009. The mark comprises of two words �SANDHI�, taken from Sanskrit language and �SUDHA�, which is taken from the name of Plaintiff�s promoter/ Director � Mr. Sudhanshu Sharma. Plaintiff�s product has been duly approved for manufacturing by Licencing Authority and Director for Ayurvedic and Unani Sciences, under the Drugs and Cosmetics Act, 1940. The business operations of Plaintiff have transcended geographical boundaries, and its products are available in UK, Dubai, Sri Lanka, Qatar, Nepal etc. In 2011, Plaintiff slightly changed the composition of the oil and commenced sale of a relatively premium oil, under the mark �SANDHI SUDHA PLUS�.
4. Plaintiff had applied for registration of the mark �� vide application No. 2031828 in class 5 on 01st October, 2010, which is pending under opposition by a third-party.
5. Plaintiff�s products are manufactured in strict compliance with high-quality standards and are popular amongst its customers. It has expended heavily towards advertisement and promotion of its mark through various media, including online, details whereof are set out in the plaint. Several celebrities have endorsed Plaintiff�s brand from time to time. All this is evidence of accrual of substantial goodwill and reputation to Plaintiff. Its annual sales figures ranged up to Rs. 27,17,092/- for �SANDHI SUDHA� and Rs. 19,35,01,794/- for �SANDHI SUDHA PLUS� in financial year 2013-14. Plaintiff�s predecessor is the largest teleshopping company in India and the mark �SANDHI SUDHA� has acquired a secondary meaning; products sold thereunder are exclusively associated with the Plaintiff.
6. In order to expand its operations and to make its products available in retail stores, Plaintiff issued an advertisement in Kanpur Edition of Amar Ujala newspaper on 15th November, 2014 inviting applications from persons interested in dealership of �SANDHI SUDHA� products. At that stage, Plaintiff was informed that on 06th November, 2014, a similar advertisement was issued by Defendants in Bareilly Edition of Dainik Jagran newspaper for the product �SANDHEE SUDDHAM� [hereinafter, �impugned mark�]. On further investigation, on 19th November, 2014, Plaintiff came across Defendants� websites where products under the impugned mark were being offered for sale. The Plaintiff�s representative then ordered impugned products from Defendant No. 2�s website which, despite following up with the customer service team multiple times, were never received, even though payment was made prior to delivery. Furthermore, Defendant No. 1 applied for trademark registration of the disputed mark under application No. 2153564, but it was declined.
7. Defendants� mark is visually, phonetically and structurally similar to Plaintiff�s �SANDHI SUDHA� and that use of impugned mark would lead to deception and confusion amongst consumers and members of the trade. Therefore, Defendants must be injuncted from using the impugned mark.
PROCEEDINGS TILL DATE
8. Considering the Plaintiff’s submissions, on 03rd December, 2014, upon forming a prima facie view that impugned mark is deceptively similar to Plaintiff�s mark, an ex-parte�ad-interim injunction was granted against Defendants in the following terms:
�In case, the interim order is not passed, the plaintiff will suffer an irreparable loss and injury. The balance of convenience also lies in favour of the plaintiff, as the plaintiff is the prior user of the trademark which has been advertised through various modern media. The plaintiff has been able to make out a strong prima-facie case for the grant of an ex parte ad-interim injunction in its favour.
Issue notice to the defendants, for the date fixed.
Till the next date of hearing, the defendants are restrained from selling, offering for sale any goods, advertising or promoting any product under the trademark SANDHEE SUDDHAM or any other mark which is deceptively similar to the trademark of the plaintiff, SANDHI SUDHA.�
9. On service of summons, Defendants, contested the suit by filing a written statement. I.A. No. 5241/2015, moved for vacation of ex-parte interim order, was decided vide judgement dated 16th January, 2018 thereby confirming the ex-parte injunction and restraining Defendants from using the impugned mark. Subsequently, counsel for Defendants filed I.A. No. 16820/2019 seeking discharge. On the said application, notice was issued to Defendants which returned unserved. On 11th May, 2022, the Joint Registrar issued fresh notice to Defendants through affixation of process at a conspicuous location at their last known address. However, despite such service, Defendants did not join the proceedings and accordingly, vide order dated 26th August, 2022, counsel for Defendants were discharged. Ever since, Defendants have remained unrepresented.
DEFENDANTS� CONTENTIONS
10. Following submissions are made in the written statement of Defendants No. 1 and 2:
10.1. Since Plaintiff has its registered office in Indore and Defendants have their registered offices at Mumbai and also carry on and operate their business therefrom, this Court does not have jurisdiction to entertain this suit.
10.2. Without prejudice to the above, after becoming aware of the injunction order dated 03rd December, 2014, the Defendants stopped use of the impugned mark �SANDHI SUDDHAM� on 24th December, 2014.
10.3. The word �SANDHEE� in Sanskrit means �joints� and �SUDDHAM� means �nectar� and thus, mark �SANDHEE SUDDHAM� denotes nectar for human joints. Since Defendants� oil for joint pain is made with pure herbs, the impugned mark was deemed an appropriate name for said oil. Having made improvements in the preparation of their oil, Defendants honestly and bonafidely adopted �SANDHEE SUDDHAM PLUS�. Defendants have been openly and continuously selling the impugned products across India and have issued advertisements in prominent newspapers. They had no knowledge of Plaintiff�s existence in the market.
10.4. Defendants have been using the impugned mark since at least June, 2011, without any interruption from Plaintiff. Defendants have widely published and advertised the impugned mark. Plaintiff has thus acquiesced to Defendants� use of the impugned mark and cannot contend otherwise. The petition suffers from delay and laches.
10.5. Plaintiff�s registration application has been opposed by one Dhanwantri Pharmaceuticals on the ground that Plaintiff�s mark is similar to said company�s registered �SUNDRI SUDHA� mark.
10.6. Plaintiff has approached the Court with unclean hands, supressing material facts qua its ill-reputation evidenced by several complaints raised by its consumers and issuance of circular by Ministry of Information and Broadcasting and Advertising Standards Council of India ordering Plaintiff to not broadcast misleading advertisements. The matter also reached the press and Plaintiff�s acts of issuing of misleading advertisements/ false claims and extracting money from the public, have been publicly ridiculed on various news channels. The annual sales figures are also fictitious and incorrect.
10.7. The target audience of the parties are entirely at variance and there is no scope of public confusion. Plaintiff advertises through television, while Defendants have long standing reputation in print media.
10.8. Defendants have generated huge annual sales from their products �SANDHEE SUDDHAM� and �SANDHEE SUDDHAM PLUS� since 2011-12.
10.9. There is no visual, phonetic or structural similarity in the rival marks, Plaintiff is promoting its product under the mark �SAPTARISHI SANDHI SUDHA� with a photograph of an actor viz. Mr. Govinda, while Defendants are using �TVC SKYSHOP SANDHEE SUDDHAM� without images of any actor. TVC Skyshop is a well-known brand and is exclusively associated with the Defendants, ruling out the possibility of public confusion. Further, Plaintiff mainly sells a pack of three bottles, while Defendants sell six-bottle packs. There are thus, radical differences in both packaging and dissimilarity of marks.
10.10. There are �series� marks containing the word �SANDHI� in the market since decades, which are used in respect of ayurvedic products. �SANDHI� for ayurvedic products is descriptive and publici juris; Plaintiff cannot claim proprietary rights over the same.
10.11. It is a well-recognised principle that that when rival marks contain a common element which is also contained in a number of marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay closer attention to other features distinguishing such marks.
10.12. Plaintiff has itself copied marks of other existing entities. Plaintiff has failed to establish any reputation in the market and on the contrary, has been condemned for bad and illegal publicity. For the same reason, criminal prosecutions have also been initiated against the Plaintiff. Therefore, Plaintiff has grossly failed in establishing a case of passing off.
ANALYSIS
11. Since the discharge of counsel on 26th August, 2022, none has appeared despite service of court notice through affixation. Defendants No. 1 and 2 are proceeded ex-parte.
12. Nonetheless, the Court has considered the defences raised by Defendants noted in foregoing paragraphs.
13. Qua objection to jurisdiction of this Court, it must be noted that Plaintiff has a subordinate office in Delhi and as such, is entitled to file a suit in terms of Section 134 of the Trademarks Act, 1999. Plaintiff has specifically averred in the plaint that Defendants are selling the impugned goods online through their website, which is accessible across India, including Delhi. It was for the Defendants to disprove the veracity of said averment through evidence. However, they have elected not to participate in the proceedings and have been proceeded ex-parte. No document has been produced by Defendants to refute Plaintiff�s submission and dispute availability of goods, within the territory of Delhi. In absence thereof, the contents of the plaint are to be accepted as correct and Court�s jurisdiction, on that basis, remains unchallenged.
14. Comparison of competing marks, is as follows:
Plaintiff�s products
Defendants� products
15. Upon examination of the overall appearance and colour scheme, it is clear that the disputed marks and packaging closely resemble Plaintiff�s mark and are bound to cause confusion. There is an undeniable phonetic similarity in �SANDHI SUDHA� and �SANDHEE SUDDHAM�. Further, Defendants have admitted use of the impugned mark since 2011, i.e., later than Plaintiff�s. Therefore, similarities in the marks and Plaintiff�s priority of use are established.
16. Next, it is to be seen whether the Plaintiff is entitled to injunction for passing off. In order to succeed, Plaintiff must inter alia prove that Defendants are responsible for falsely representing the Plaintiff�s mark as their own. Sufficient amount of goodwill and reputation, leading the public to associate the relevant goods exclusively with Plaintiff must be shown. It is also to be demonstrated that Defendants have made false claims about the origin of their products, indicating that they are of the Plaintiff. Lastly, damage to Plaintiff�s reputation, caused by this misrepresentation must be proven.
17. Plaintiff has placed on record invoices, advertisements, Accountant�s certificates that provide evidence of substantial sales starting from 2009. The Defendants alleged that the term SANDHI/ SANDHEE is a commonly used word in trade, however, it is notable that Defendant No. 1 itself had tried to register its �SANDHEE SUDDHAM� mark, which was was not accepted. Having once claimed distinctiveness in a formative version of SANDHI/ SANDHEE viz. �SANDHEE SUDDHAM� (through its trademark application), Defendants cannot now contend that Plaintiff�s mark is inherently descriptive and lacks distinctiveness. Moreover, Plaintiff has not claimed any rights over the word �SANDHI�, but in �SANDHI SUDHA� as a whole. The list of �SANDHI� formative marks referred to by Defendants is ample evidence that mere addition of �SANDHI� would not render the mark incapable of protection. That apart, Plaintiff has been vigilant in guarding its trademark by filing suits seeking infringement against third parties who have adopted marks deceptively similar to Plaintiff�s. In the said suits, considering Plaintiff�s reputation and position in the market, interim and final relief(s) has been granted in its favour.1 Defendants� submission that Plaintiff-company has been accused of dissemination of misleading advertisements and false claims is not sufficient for this Court to hold that Plaintiff does not have goodwill amongst its customers, pertinently when its revenue records and past court orders indicate otherwise. The allegation that since Defendants had been advertising the impugned mark since 2011-12, Plaintiff was aware of their existence and had acquiesced to their use of the same, also does not carry merit. Mere existence in the market and advertisements in newspapers cannot impute knowledge of infringing activities to Plaintiff. Cause of action first arose in 2014, when Plaintiff became aware of Defendants� website which was followed by filing of the suit immediately thereafter. Thus, it cannot be said that the suit suffers from delay and laches.
18. On the contrary, Defendants� subsequent adoption of not only a substantially similar wordmark, but also similar trade dress, has not been sufficiently explained. Notably, Plaintiff�s pending application for mark �SANDHI SUDHA� was cited in the Examination Report dated 26th May, 2019 for Defendant No. 1�s application No. 2153564, which was thereafter refused. Parties are dealing in the same category of products and considering that both have ventured into sale of goods through print media as well as online, there is no merit in the argument that target audience of the two are entirely different. Since Defendants were aware of Plaintiff�s mark, their adoption in 2011, is dishonest. Having knowledge of Plaintiff�s existence and its mark, it can be concluded that Defendants have emulated Plaintiff�s mark and attempted to encash on its goodwill and publicity in order to pass off their products as Plaintiff�s.
19. In view of Plaintiff�s standing in the market, it would suffer an irreparable injury if Defendants are not restrained from indulging in use of impugned mark; balance of convenience also lies in favour of the Plaintiff and against the Defendants. Moreover, Defendants have themselves averred in the written statement that pursuant to the ex-parte injunction order dated 03rd December, 2014, they have refrained from dealing in the impugned mark.
20. Although Defendants were initially actively contesting the suit, but subsequent to filing of application for discharge by their counsel on 21st November, 2019, they have neither made alternative arrangements for representation, nor have they approached the Court in that regard. Court notices issued through service as well as affixation have not yielded the desired outcome. Defendants have however acceded to use of impugned mark. In view of their admission in the written statement, the Court is satisfied that a judgement under Order XII Rule 6 can be passed in the present case. Admissions for the purpose of exercising power under Order XII Rule 6 of the CPC, as held in Vijay Mayne v. Satya Bhushan Kaura,2 can be constructive and need not be specific or expressive; they can be inferred from facts and circumstances of the case, and upon disregarding the vague and evasive denial of Plaintiff�s specific pleas. Passing of a judgement on admissions also entails examination of whether the objections raised by Defendants impact the core of the issue or are inconsequential, limiting the chances of Defendants to succeed.3 Besides the afore-dealt contentions and admission qua use of the impugned mark since 2011, the written statement does not bring forth any other ground sufficient to defeat the Plaintiff�s claims.
21. Further, drawing strength from Order XIII-A of CPC, as amended by Commercial Courts, Commercial Division and Commercial Appellate Division of the High Court Act, 2015, read with Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022 as also the judgements in Disney Enterpises Inc. & Anr. v. Balraj Muttneja and Ors.4 and S. Oliver Bernd Freier GMBH & CO. KG v. Jaikara Apparels and Ors.,5 the Court is of the opinion that there is no compelling reason why the case should not be disposed of without recording oral evidence, on the basis of available record alone and requirement for Plaintiff to lead ex-parte evidence be dispensed with.
RELIEF
22. Plaintiff seeks the following reliefs:
�(i) Permanent injunction restraining the Defendants, its Directors, agents, distributors, partners or any person claiming under them or through them from selling, offering for sale any goods, advertising or promoting any product under the trade mark SANDHEE SUDDHAM or any trade mark which is similar to Plaintiffs trade mark SANDHI SUDHA;
(ii) Direct Defendants to pay Damages to the Plaintiff to the tune of Rs. 20,01,000/- for use of the mark SANDHEE SUDDHAM;
(iii) Rendition of accounts for all profits made by the Defendant by use of mark SANDHEE SUDDHAM on the website, products, price lists etc till date;
(iv) Destroy all goods, price lists, literature or any material bearing the mark SANDHEE SUDDHAM;�
23. Mr. N. Mahabir, counsel for Plaintiff, on instructions, states that Plaintiff is not pressing for prayers (ii), (iii) and (iv).
24. Accordingly, for the foregoing reasons, suit is decreed in favour of Plaintiff and against Defendants in terms of prayer (i) above. No order as to costs. Registry is directed to draw up the decree sheet.
25. Suit and all pending applications are accordingly disposed of.
SANJEEV NARULA, J
JANUARY 12, 2023
d.negi
(Corrected and released on 06th February, 2023)
1 CS(COMM) 366/2021, CS(COMM) 1120/2018, CS(COMM) 1119/2018, CS(COMM) 1189/2018, CS(COMM) 658/2016 and CS(OS) 1354/2014.
2
3 See: Delhi Jal Board v. Surendra P Malik, 2003 SCC OnLine Del 292, Col. (Retd.) Dalip Singh Sachar v. Major General (Retd.), Prabodh Chander Puri, 2007 SCC OnLine Del 728 and M/s Rajesh & Co. v. M/s Ravissant Pvt. Ltd., judgement dated 18th April, 2012 in CO. APPEAL No. 35/2012.
4 210 (2014) DLT 381.
5 2013 (55) PTC 414 (Del).
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2023/DHC/000839
CS(COMM) 115/2016 Page 2 of 2