Alfred Dunhill Limited vs R.P.S. Chawla And Ors. on 19 May, 2004

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Delhi High Court
Alfred Dunhill Limited vs R.P.S. Chawla And Ors. on 19 May, 2004
Equivalent citations: 2004 (29) PTC 39 Del
Author: Mukundakam Sharma
Bench: M Sharma


JUDGMENT

Mukundakam Sharma, J

1. By this order I propose to dispose of the injunction application filed by the plaintiff which was registered as I.A. No. 416/2004.

2. The plaintiff is one of the most well known international brands in the world for its exquisite and diversified range of luxury and fashion goods. The plaintiff’s business includes inter alia designing, creation, manufacture, marketing, distribution and worldwide sale of a wide and diversified range of fashion, luxury and utility goods including those for cars, automobile accessories, men’s clothing, watches and wall clocks, writing instruments, small jewellery, leather goods including leather deskets, ladies’ hand bags, wallets, leather bill folds, key fobs, stationery, and other products like fragrances, umbrellas, toiletries, travel accessories, liquor, baggage, etc. The extent of reputation and goodwill of the plaintiff has been aptly state both in the plaint as also in the application filed by the plaintiff seeking for a temporary injunction. The plaintiff carries on the business under the trade name, trading style and trademark `DUNHILL’ and accordingly the trademark `DUNHILL’ of the plaintiff forms the key, dominant and essential feature of not only the plaintiff’s corporate and trade identity, its goodwill and global reputation but is the only and most vital link between the plaintiff and its customers and patrons. The plaintiff also holds trademark registrations in India dating back to the year 1945 which having been renewed from time to time are still valid and subsisting. The trademark `DUNHILL’ was also registered in Class 12.

3. It is stated in the plaint that some time in August 2003 the plaintiff at its London office received a letter dated June 24, 2003 written by defendant No.1 informing that one M/s. K.B. Engineering Works is manufacturing and marketing auto parts and cycle seats of inferior quality under the trademark `DUNHILL’ of the plaintiff. On receipt of the aforesaid letter from the defendant No.1, the plaintiff instructed one of its representatives in India to verify the above information given by the defendant No. 1 and also to further investigate as to how the defendants would benefit from restraining the said M/s. K.B. Engineering Works. As desired by the plaintiff, an investigation was carried out not only in the premises of M/s. K.B. Engineering Works, but also in the premises of defendants No.1 and 2, and it was found that not only the said M/s. K.B. Engineering Works were selling their products in the name of the same trademark as that of the plaintiff, but that defendants 1 and 2 were also engaged and carrying on the business of manufacturing, distributing and selling various bicycle parts including paddles, axles and cycle seats bearing the mark `SUNHILL’ which was found to be deceptively and confusingly similar to the trademark of the plaintiff. The plaintiff having learnt about the aforesaid action on the part of both M/s. K.B. Engineering Works and M/s. Chawla Engineering Works, a defendant in the present suit, instituted proceedings as against both the firms. In the proceedings instituted against M/s. K.B. Engineering Works, the plaintiff succeeded in restraining the said firm from manufacturing, marketing and selling their goods under the trade name `DUNHILL’ by exploiting the trade name of the plaintiff. Against the present defendants, the present suit is instituted seeking for a decree of permanent injunction restraining the defendants from passing off the goods of the defendants as that of the plaintiff and also for a decree for payment of damages, rendition of accounts of profits, etc. Along with the aforesaid suit, an application praying for temporary injunction is also filed on which I have heard the learned counsel appearing for the parties. Counsel also drew my attention to the various documents which are placed on record in support of their respective pleas. The question, therefore, that arise for my consideration in the present application filed for seeking a temporary injunction is whether the two marks, namely, `SUNHILL’ and `DUNHILL’ could be said to be deceptively and confusingly similar to each other and whether an injunction of the nature as sought for could be granted.

4. The contention of the counsel appearing for the defendants is that there is neither any visual similarity or phonetic similarity between the two competing marks, and that the goods manufactured and sold in the market under the two competing marks are a so different goods and, therefore, it cannot be said that it is a case of passing off the goods of the defendants as that of the plaintiff. Another contention of the counsel appearing for the defendant is that the defendant is the registered proprietor of the trademark `SUNHILL’ in respect of parts and fittings included in class 12 for use in bicycles and, therefore, no case of infringement of trademark is made out in the present case. He also submitted that no mala fide could be alleged as against the plaintiff as every action of the defendants was bona fide for the defendants themselves brought to the notice of the plaintiff that M/s. K.B. Engineering Works was infringing the trademarks of the plaintiff by selling their goods of auto parts/cycle seats under the trade name of the plaintiff and thereby spoiling the image of the plaintiff’s products. It was submitted that the aforesaid conduct of the defendants in bringing to the notice of the plaintiff the exploitation of the trademark of the plaintiff by M/s. K.B. Engineering Works is itself a bona fide action and, therefore, no injunction as sought for by the plaintiff could be granted in the present case. As several defenses have been raised by the defendants I am, therefore, called upon to del with the said defenses one by one.

5. So far the registration of the trademark `SUNHILL’ of the defendants in respect of parts and fittings included in class 12 for use in bicycles is concerned, a copy of the said registration certificate is placed on record which I have perused. The said registration was granted on December 26, 1991 to the defendants in class 12 in respect of parts and fittings included in class 12 for use in bicycles. The registration was granted for the trademark `SUNHILL’. It is also required to be mentioned that the plaintiff also held a registration under the trade name `DUNHILL’ in respect of goods under class 12 which was renewed from time to time and on the date when the registration was granted to the defendants under the trademark `SUNHILL’ the said registration of the trademark of the plaintiff under trademark `DUNHILL’ for goods in class 12 was valid and subsisting. Even otherwise, the aforesaid registration of the plaintiff could be said to be valid and subsisting in class 12 till it is not set aside and, therefore, the plaintiff has a right to file an opposition as against the aforesaid registration granted to the defendants for the trademark `SUNHILL’ for goods in class 12. However, as the defendants are the registered owners/proprietor of the trademark `SUNHILL’ in class 12 in respect of parts and fittings for use in bicycles, therefore, strictly speaking no case for infringement of trademark could be said to have been made out at this stage. But the fact remains that if the aforesaid two competing marks are found to be phonetically or visually similar, or that if adoption of the said trademark is found to be not bona fide and is found to have been adopted to exploit the reputation and goodwill of another trademark which could be said to be deceptively and confusingly similar, in that event an injunction as sought for could be granted upon formation of a prima facie opinion that the sole intention of the defendants is to exploit the goodwill and reputation of the plaintiff and also to pass off the goods of the defendants as that of the plaintiff by such exploitation.

6. Therefore, it is required to be examined as to whether or not it could be said that both the competing marks are confusingly and deceptively similar to each other. For analysing the aforesaid aspect the conduct of the defendants is very relevant.

The defendants got their registration in respect of the trademark `SUNHILL’ for dealing in goods in class 12. On the said date when the defendants applied for registration under the trademark `SUNHILL’ the plaintiff was already a registered proprietor/owner in respect of the same goods in class 12 under the trade name `DUNHILL’. The plaintiff has been carrying on its business, as indicated hereinabove, for a long period of time and the plaintiff is a well known business house trading exclusively under the trademark `DUNHILL’. The defendants have knowledge about the plaintiff and also its business being carried out under the name `DUNHILL’ all throughout and particularly when the aforesaid registration was obtained by the defendants under the trademark `SUNHILL’. The said fact is fortified from the subsequent action of the defendants as the defendants wanted to weed out M/s. K.B. Engineering Works from business as the said firm is a business rival of the defendants dealing in the same business of Auto parts and cycle seats with that of the plaintiff. With that intention in mind, the defendants wrote the said letter to the plaintiff on June 24, 2003, but suppressing in the said letter that the defendants themselves are also carrying on the business of auto parts and cycle parts using the trademark `SUNHILL’. The said fact came to light and to the knowledge of the plaintiff only after it got an inspection carried out through one of its agents in India. It is, therefore, clearly established that the defendants never acted bona fide and wrote the letter to the plaintiff with an ulterior motive and by suppressing material facts. The intention of the defendants, therefore, is based on bad faith. No explanation is also given by the defendants as to how they have invented and conceived the word `SUNHILL’ and then adopted the same as their trademark. The words `DUNHILL’ and `SUNHILL’ are phonetically similar in the sense that except for the first letter `S’ of trademark `SUNHILL’ all other letters of the trademark are similar to that of the plaintiff’s trademark `DUNHILL’. The defendants are using the first letter `S’ in place of letter ‘D’ of the registered trademark of the plaintiff. The remaining alphabets are the same in both the trademarks. As to how the aforesaid trademark `SUNHILL’ came to be invented and conceived by the defendants, there is no explanation on record. The plaintiff is even now manufacturing and marketing leather goods of various types. Cycle seats and peddles of cycles manufactured and marketed by the defendants are also leather goods. The plaintiff had a registration even in India in class 12 for the same goods as that of the defendants. Considering the entire facts and circumstances of the case, I am of the considered opinion that the two words are phonetically similar and the action of the defendants in adopting `SUNHILL’ is also found to be based on bad faith and not bona fide. Therefore, I am inclined to grant an injunction in favor of the plaintiff as sought for. In coming to the aforesaid conclusion I am also fortified by a decision of the Supreme Court in Corn Products v. Shangrilla, , wherein `Glucovita’ was held to be similar to that of `Gluvita’, and also of this Court in The Tata Oil Mills Co. Ltd v. Wipro Limited and another, 1986 PTC 358, wherein a Single Judge of this Court granted an injunction after considering two competing marks `DUBBLE’ and `BUBBLES’ and held the same to be similar.

7. Consequently, an injunction is granted in favor of the plaintiff and against the defendants, their agents, servants, distributors, stockists and all others acting on their behalf restraining them from manufacturing, selling, offering for sale, or directly or indirectly dealing in the cycle seats and other cycle parts including paddles bearing the mark `SUNHILL’ and/or any other mark identical to or deceptively similar to the plaintiff’s mark `DUNHILL’ so as to amount to passing off the goods of the defendants as that of the plaintiff till the disposal of the suit.

8. In terms of the aforesaid order, this application stands disposed of.

9. Renotify the suit on 9th August, 2004.

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