The Tis Hazari, Court in Delhi in the case of M/S. Orient Bell Limited Vs M/S. Royal Marketing & M/S. Orient Cera Tiles, granted a permanent injunction in favor of M/S Orient Bell Limited (hereinafter referred to as the ‘Plaintiff’) restraining M/S. Royal Marketing and M/S. Orient Cera Tiles (hereinafter collectively referred to as the ‘Defendants’ and individually as ‘Defendant no. 1’ and Defendant no. 2 respectively) from passing off goods bearing their trademark and copyright ‘Orient’, infringement of the same in any manner and a mandatory injunction for the destruction/erasure of labels, blocks, dies etc.
- The Plaintiff was initially incorporated on May 18, 1997, as Orient Ceramics and Industries Ltd., which was later merged on February 7, 2012, with Bells Ceramics Ltd. after obtaining orders from Hon’ble Court at Gujarat. It is the registered proprietor of the mark ‘ORIENT’ for its business of manufacturing tiles.
- In January 2002, the Plaintiff came to know about the infringement of his trademark ORIENT by Defendant No. 1. It is alleged that Defendant no. 2 is supplying tiles to Defendant no. 1 and to other shops at Delhi.
- It is further alleged that Defendant no. 2 has created impression in the market that his goods are connected with the Plaintiff and thereby passing off the goods by infringing the registered trademark of the Plaintiff. Additionally, the trade name adopted by Defendant no.2 is alleged to be identically and deceptively similar to the corporate name of the Plaintiff.
- Thus, the Plaintiff filed this suit for permanent injunction restraining infringement of trademark, passing off, infringement of copyright, damages, delivery up etc. against the Defendants.
- Whether the Plaintiff is entitled to relief of permanent injunction against both the Defendants and its agents for passing off and infringement of the trademark ORIENT by way of manufacturing, exporting, selling, exhibiting etc. in the said name?
- Whether the Plaintiff is entitled to mandatory injunction against the Defendants and their agents as to delivery of labels, blocks, dies, strips, cartons, stationery, literature or any other printing material bearing impugned trademark and copyright and for their destruction/erasure?
- Whether Plaintiff is entitled to damages for a sum of INR 10 lakhs (USD 15600 approx.) against both the Defendants for such infringement of trademark and copyright?
- The Plaintiff claimed to be using the mark uninterruptedly and continuously since the year 1982 in respect of tiles which is painted on reverse side of each tile.
- The Plaintiff submitted that it has acquired substantial goodwill and reputation and has spent large amounts on publicity and advertisement of his trademark. The advertising expenses runs into multiples of lakhs since the year 1995-96.
- It claimed to be holding registration of copyright as Orient Tiles vide no. A-68840/2005.
- The Plaintiff further submitted that the tiles are purchased by both illiterates and literates that causes confusion. In addition, the act of the Defendants has harmed the reputation and goodwill of the Plaintiff. It stated that the loss cannot be calculated in money.
- It was contended that the triple test of identical goods, identical trademark/trade name and identical trade channel are satisfied in the present case and dishonest motive and mischief of the Defendants are revealed.
- The Defendants failed to appear and to disprove the case of the plaintiff in evidence.
- However certain averments were made by them in the written statement. These averments were:
- Defendant no. 2 through the written statement submitted that the trade of the Defendant is in existence since the year 1995 and the Plaintiff is non-suited on ground of acquiescence.
- The trade name ‘ORIENT’ is a generic name and the Plaintiff cannot have monopoly over it. The Plaintiff himself has commenced his business only from the year 1997 and at that time the Defendant’s business was in existence in fans and cement.
- The Defendants contented that there are more than 100 companies doing business under the name of Orient. It stated that there is no likelihood of deception as there is a huge price difference in the products of Plaintiff and the Defendants.
- The Defendants further stated that the word Orient is written differently. They write Orient Cera Tiles in bold letters and the Plaintiff writes Orient Walls. In addition, the cartons and boxes both of them are different.
- The expense on advertisement and volume of sale does not entitle the Plaintiff with monopoly over the word Orient when the Defendant itself is in existence since the year 1996. It is submitted that the first user is not the only criteria for determining the right and entitlement in the intellectual property rights. There is difference both in quality and price of which the buyers can clearly make distinction. Accordingly, Defendant no. 2 has denied the claim of the Plaintiff and prayed for dismissal of the suit.
- While dealing with issue no. 1 the Court held that
‘the proprietor of an unregistered trademark whose mark is unauthorisedly used by another cannot, however, sue for the infringement of such trade mark. His only remedy lies in bringing a passing-off action, an inconvenient remedy as compared to an infringement action.’
- The Court also differentiated between passing off action and infringement. It opined that ‘in a passing-off action the Plaintiff will have to prove that his mark has by user acquired such reputation as to become distinctive of the Plaintiff’s goods so that if it is used in relation to any goods of the kind dealt with by the Plaintiff, it will be understood by the trade and public as meaning that the goods are the Plaintiff’s goods. In an infringement action, the Plaintiff is not required to prove the reputation of his mark. Further, under Section 37 a registered mark is assignable and transmissible either with or without goodwill of the business concerned while under Section 38 an unregistered trade mark is not assignable or transmissible except in the three cases set out in Section 38(2).’
- The Court agreed that ‘the Plaintiff is using the said mark ORIENT which is also signified by the name of the Plaintiff company which is M/s. Orient Ceramics and Industries Ltd. Plaintiff company is using the name since the year 1977 when it was incorporated and in the year 1982 it had adopted the trademark name ORIENT.’ It further stated that ‘the Plaintiff must show the actual infringement on the date of filing of the suit. The Plaintiff company filed the suit on February 22, 2002, by which time the said mark ORIENT was in use. As per claim of the Plaintiff, the mark ORIENT for plastic flushing cistern has date of registration on June 26, 2001. The other trademarks of the Plaintiff are dated after the year 2002, i.e. after the date of filing of the suit. As per the case of the Plaintiff, the Defendant no. 2 is manufacturing Cera Tiles in the name of ORIENT on or before the filing of the suit. Thereby the case of the Plaintiff falls under category of passing off mark ORIENT with the plaintiff and not the infringement of trademark in favour of plaintiff bearing date of registration as 01.08.2005.’
- Regarding damages, the Court pointed out
that the Plaintiff could have shown its figure of net profit made from the year 1995 till the date of filing of the present suit. Since the Plaintiff failed to do that, the total damages are awarded in favor of the Plaintiff and against both the Defendants for a sum of INR 2 lakhs (USD 3120 approx.) out of which INR 1 Lakh (USD 1560 approx.) are in the nature of compensatory damage and INR 1 Lakh (USD 1560 approx.) are in the nature of punitive damage.
Thus, the suit was decreed in favor of the Plaintiff with relief of permanent injunction against both the Defendants and its agents who are restrained in passing off goods in the trademark and copyright ORIENT and its infringement of trademark and copyright by way of manufacturing, exporting, selling, exhibiting etc. in the said name.