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Davinder Kumar Jain v. Sanjeev Singh
Summary of Opinion (MANMOHAN SINGH, J.)
Factual and Procedural Background
The plaintiffs initiated this suit seeking a permanent injunction, relief for trademark infringement, passing off, rendition of accounts and damages. Plaintiff No.1, Mr. Davinder Kumar Jain, is described as the entrepreneur and founder of the LUXOR group (use of the trade name LUXOR since 1963) and the sole proprietor of the trademark LUXOR; Plaintiffs Nos. 2–11 are private limited companies of the LUXOR group.
In September 2007 the plaintiffs learned that defendant Nos. 1 and 2 were selling electric bulbs under the brand name LUXOR. Investigations disclosed that defendant Nos. 1 & 2 conducted business at a stated Delhi address and sold bulbs under LUXOR packaging which identified “Sudhir Lamps” as manufacturer, while actual manufacturers were alleged to be defendant Nos. 3–5.
The suit was first listed on 23.01.2008 and summons were issued. On 21.10.2008 defendant No.1 appeared and the parties informed the court of a compromise; a compromise statement dated 22.10.2008 was recorded and, on joint application (I.A. No. 12844/2008), the court allowed the compromise and passed a decree of permanent injunction in favour of the plaintiffs and against defendant Nos. 1 and 2 restraining them from using the trademark LUXOR or any deceptively similar mark or trade dress.
The court directed that the matter be listed for ex-parte evidence against defendant Nos. 3–5 and fixed 15.01.2009 for that purpose. The plaintiffs later adduced ex-parte evidence by affidavit of PW-1 (Mrs. Himlika Trivedi) and produced numerous exhibits, including registrations, certifications, publicity material, samples of bulbs and packaging, and court orders. No cross-examination was conducted by defendant Nos. 3–5 as the proceedings against them were ex-parte.
Legal Issues Presented
- Whether defendant Nos. 3–5 infringed the plaintiffs' trademark LUXOR and/or committed passing off by using the mark on electric bulbs and related packaging.
- Whether the plaintiffs are entitled to a permanent injunction, rendition of accounts and damages (including punitive damages) against defendant Nos. 3–5 for the alleged infringement and passing off.
Arguments of the Parties
The opinion does not contain a detailed account of the parties' legal arguments.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Daimler Benz Aktiegesellschaft v. Hybo Hindustan; Air 1994 Delhi 239 | Support for principles governing passing off and protection of proprietary trademarks. | Referred to as authority supporting the court's conclusion that passing off and proprietary rights in the mark justify relief. |
| Surjit Singh v. Alembic Glass industries Limited: AIR 1987 Delhi 319 | Support for principles governing passing off and confusion in the market between allied/cognate goods. | Relied on to reinforce the finding that use of the mark by the defendants would create market confusion and deception. |
| Sunder Parmanand Lalwani v. Caltex (India) Limited; Air 1969 Bombay 24 | Support for protection against deceptive use of trademarks and passing off. | Utilized to support the conclusion that the plaintiffs possess proprietary rights and are entitled to relief against passing off. |
Court's Reasoning and Analysis
The court's analysis proceeded from the plaintiffs' established long-standing use and proprietorship of the LUXOR mark (since 1963) and the uncontradicted ex-parte evidence presented via affidavit of PW-1 and the attached exhibits. The plaintiffs produced Indian registrations of the LUXOR trademark, certifications (ISO 9001 and other certificates), publicity and advertising expenditures, awards and recognitions, samples of bulbs and packaging, and copies of prior court orders.
Because the proceedings against defendant Nos. 3–5 were ex-parte, and no cross-examination occurred, the court treated the plaintiffs' evidence as unrebutted. The court found that defendant Nos. 3–5 were admittedly using the LUXOR mark on their packaging and labelling and noted that assertions by those defendants that their trademark was registered and that their products were ISI standard were not true (the opinion records that they did not have registration with the Bureau of Indian Standards).
The court held that the goods in question (electric bulbs) are allied or cognate to the plaintiffs' goods in the circumstances of the case, and that allowing defendants 3–5 to use the LUXOR mark would cause confusion and deception in the market and would result in irreparable loss to the plaintiffs' goodwill and reputation. The court cited established authorities on passing off to support this finding and concluded that the plaintiffs were entitled to the reliefs claimed.
Holding and Implications
Holding: The suit of the plaintiffs is decreed against defendant Nos. 3 to 5 in terms of para 13(a) and (c) of the plaint. As regards para 13(d) and (e) of the plaint, the plaintiffs are awarded punitive damages of Rs. 1 lac against defendant Nos. 3 to 5. The plaintiffs are also entitled to costs; decree to be drawn accordingly.
Additional procedural outcome: a decree of permanent injunction had earlier been passed (by consent/compromise) in favour of the plaintiffs and against defendant Nos. 1 and 2 restraining them from using the LUXOR mark or deceptively similar marks.
Implications: The direct effect is injunctive relief and monetary (punitive) damages and costs awarded to the plaintiffs against defendant Nos. 3–5. The opinion does not state or purport to create any new legal precedent beyond the application of existing passing-off and trademark principles cited.
MANMOHAN SINGH, J.
1. This suit was filed by the plaintiffs for permanent injunction, restraining infringement of trademark, passing off, and rendition of accounts along with damages.
2. The brief facts of the case are that the plaintiff No. 1 Mr. Davinder Kumar Jain is an entrepreneur and the founder of the group of companies carrying on the business under style LUXOR since 1963 and is the sole proprietor of the trademark LUXOR. Plaintiff Nos. 2 to 11 are all private limited companies, constituting the LUXOR group.
3. In September 2007, the plaintiffs came to know that the defendant No. 1, along with defendant No. 2 is selling electric bulbs under the brand name LUXOR.
4. Thereafter, the plaintiffs made various efforts to ascertain the facts of the identity of the defendants and found out that the defendant No. 1 conducts the business of defendant No. 2 and both these defendants have their establishment at 1367/1, Chowk, Ghoslyam, Opp. Narayan Market, Sadar Bazar, Delhi-6. At the said establishment, beside other objects, the defendant Nos. 1 & 2 sell electric bulbs under the brand name LUXOR. The packaging thereof refers to “Sudhir Lamps” as the manufacturers, though the plaintiffs came to know that the actual manufacturers of these infringed goods are defendant Nos. 3 to 5.
5. Therefore, the plaintiffs filed the present suit. The matter was listed for the first time on 23.01.2008, and on that date the summons were issued. On 21.10.2008, the defendant No. 1 appeared in person and both the parties submitted that the matter has been compromised. The statement of compromise was signed on 22.10.2008 and on the joint application of the parties for compromise, being I.A No. 12844/2008 was allowed by the court and a decree of permanent injunction in favour of the plaintiffs and against the defendant Nos. 1 and 2 restraining them from using the trade mark ‘LUXOR’ or any other mark, trade dress or packaging deceptively similar to or infringing the plaintiffs' mark LUXOR in relation to any good or services was also passed.
6. Further, it was ordered that the matter may be listed for the ex-parte evidence against the defendant Nos. 3 to 5 and the date 15.01.2009 was fixed for this purpose. Thereafter, the plaintiffs, on various occasions sought time to file the original documents for the exparte evidence against the defendant Nos. 3 to 5.
7. The plaintiffs adduced the ex-parte evidence by way of affidavit of PW-1 Mrs. Himlika Trivedi in which she reproduced the facts stated in the plaint. The same is exhibited as Ex.PW-1.A. In her affidavit, she has proved the following documents:
1. Certified copies of Resolutions of the Board of Plaintiffs No. 2-11 and Power of Attorney have been proved as Ex.PW-1/1 and Ex.PW-1/2.
2. The Indian registrations of the LUXOR trade mark have been proved as Ex.PW-1/3 and Ex.PW-1/4.
3. ISO 9001 certification for quality is proved as Ex.PW-1/5.
4. Certificates in Writing Instruments category for Environmental Management System (EMS) and Occupational Health and Safety Assessment have been proved as Ex.PW-1/6.
5. Copy of award of Largest Exporter of Writing Instruments for 2006-2007 has been proved as Ex.PW-1/7.
6. Invoices showing expenditure on advertisements have been proved as Ex.PW-1/8.
7. The publicity documents have been proved as Ex.PW-1/9.
8. A lifetime achievement award certificate of Mr. D.K Jain for HR has been proved as Ex.PW-1/10.
9. The LUXOR trade mark which has been designated a “Super Brand” has been proved as Ex.PW-1/11.
10. Photographs showing different awards bestowed to LUXOR have been proved as Ex.PW1/12.
11. Copies of the orders passed by different Courts have been proved as Ex.PW-1/13.
12. Samples of the said bulbs and packaging have been proved as Ex.PW-1/14.
13. Cards used by the defendants 3 to 5 have been proved as Ex.pw-1/15.
8. The evidence produced by the plaintiffs have remained unrebutted as no cross-examination was conducted by the defendant Nos. 3 to 5 being ex-parte.
9. The defendant Nos. 3 to 5 are admittedly using the trade mark LUXOR on their packaging and labeling of bulbs manufactured and sold by them. It is stated in the plaint that the defendant Nos. 3 to 5 have made a statement that their trademark is registered, which is not true. The defendant Nos. 3 to 5 are also wrongly claiming their products are of ISI standard. But, in fact, they do not have any registration with the Bureau of Indian Standards and in case the defendant Nos. 3 to 5 continue their offending activities by using the trade mark LUXOR in respect of electric bulbs, they would be causing irreparable loss and injury to the goodwill, reputation and business of the plaintiffs.
10. The plaintiffs have also been able to establish the case of passing off. The goods manufactured by them are allied and cognate. In the facts of the present case, allowing the defendant Nos. 3 to 5 to use the trade mark LUXOR in respect of electric bubls will create confusion and deception in the market, as it has been established that the plaintiffs have proprietory right in the mark LUXOR. (See Daimler Benz Aktiegesellschaft v. Hybo Hindustan; Air 1994 Delhi 239, Surjit Singh v. Alembic Glass industries Limited: AIR 1987 Delhi 319 and Sunder Parmanand Lalwani v. Caltex (India) Limited; Air 1969 Bombay 24)
11. The plaintiffs are, therefore, entitled to the reliefs prayed in the suit. Accordingly, the suit of the plaintiffs is decreed against the defendant Nos. 3 to 5 in terms of para 13(a) and (c) of the plaint. As regards the reliefs claimed by the plaintiffs in para 13 (d) and (e), the plaintiffs are granted punitive damages to the tune of Rs. 1 lac against the defendant Nos. 3 to 5. The plaintiffs shall also be entitled to cost. Decree be drawn accordingly.
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