JUDGMENT
Swatanter Kumar, J.
1. The plaintiff filed the present suit under Sections 134 and 135 of the Trade Marks Act, 1999 praying for the relief of grant of a decree for permanent injunction restraining the defendants from infringing the trade mark of the plaintiff, passing off their goods as goods of the plaintiff and for damages. When the suit came up for hearing on 12th September, 2005 on the request of counsel for the plaintiff, the following order was passed :
Learned counsel for plaintiff submits that he does not press for the claim of damages at this stage and prays that a decree in relation to other prayers be passed by the Court. Arguments heard. Judgment reserved.
2. The necessary facts are that plaintiff is a Company organized under the laws of the State of Delaware, United States of America which was established for having its main objects as contained in its certificate of incorporation. The Company is engaged in the business of manufacturing, distribution, sale and trade of cosmetic and toiletry products; care products, namely shampoos, conditioners, sprays, styling products and such other allied goods. In the year 1978 the plaintiff honestly and bonafidely conceived the trade mark/word “ST.IVES” [wordier se and artistic form and referred to as the said trade mark]. The said trade mark has been bonafidely, honestly, commercially, continuously, openly and in the course of trade being used by the plaintiff since then. The said trade mark and its word is registered even in India under the Trade Marks Act, 1999 under registration No. 568913 B in class 3. It is registered as such in respect of cosmetics, hair care and skin care products since March, 1992. The registration has been renewed from time to time. The artistic feature in the plaintiffs said trade mark in an artistic manner is an original artistic work within the meaning of Indian Copyright Act, 1957 and the plaintiff is owner of the said copyright of the trade mark. Taking advantage of the Government of India under the liberalise trade policies, the plaintiffs goods and business under the said trade mark and trade name are openly and commercially traded in India. It is the case of the plaintiff that they have spent huge amounts in advertising and marketing and have net sales of their products. In total sales and advertising expenditure as published in the annual report 2002 reads as under:
(IN THOUSANDS, EXCEPT PER SHARE DATA)
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Advertising & Marketing 1998 1999 2000 2001 --------------------------------------------------------- (In Millions) $152.5 $149.6 $162.7 $179.0 Net Sales $1.74 $1.88 $2.14 $2.38 ---------------------------------------------------------
3. It is further averred by the plaintiff that they have the exclusive right to use, publish or otherwise to deal with the said trade mark and trade name and nobody can be permitted to infringe the same. The grievance of the plaintiff is that defendant has adopted a term that includes “user”, if any, as well as its threatened and contemplated user an identical/deceptively similar trade mark MT IVES in relation to the similar goods which are bleaching preparations, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices. The defendant is not the proprietor of the impugned trade mark and has no right to adopt or use the same and is doing so without the leave and license of the plaintiff. In September, 2003, the plaintiff claims to have learnt for the first time about the impugned trade mark, its impugned adoption in relation to the goods and the defendant through the Trade Mark Journal No. 1301 (S) III dated 28th August, 2003 had made an applicant for registration in respect of such goods. Immediately, the plaintiff served a legal notice upon the defendants. The plaintiff also in the facts of the case was constrained to launch an inquiry through the trade into the market to ascertain about the impugned user and infringement of the its . trade mark and trade name. The inquiry revealed that the defendants have so far not started using the impugned trade mark in relation to their vendible impugned goods and neither has the plaintiff, so far, been able to lay their hands on any of the merchandise and even if the defendants have used the impugned trade mark, it is very insignificant and the transactions are being done in a clandestine manner to frustrate the rights of the plaintiff. The impugned adoption and user by the defendants is improper, sinister, ill-motivated, dishonest and is questionable. In these circumstances, the plaintiff has prayed for passing of an decree of an injunction.
4. Vide order dated 30th January, 2004, summons in the suit were ordered to be issued to the defendants. Counsel for the defendants appeared and sought time for filing the written statement and reply to the application which was granted vide order dated 26th February, 2004. As needful was not done and counsel appearing for the defendants prayed for further two weeks time which again was granted by the Court vide its order dated 15th April, 2004. On 12th July, 2004 neither the written statement, nor the reply was filed. In fact nobody was appeared on behalf of the defendants. The Court passed interim injunction and also directed that the defendants would be proceeded ex-parte in the suit. However, the matter was adjourned to 22th September, 2004. Even on 22nd September, 2004 nobody appeared on behalf of the defendants, thus compelling the Court to proceed against the defendants and liberty was granted to file ex-parte evidence by way of affidavits, which was filed and the matter was heard on merits.
5. Affidavit of Mr. Gary P. Schmidt, Vice President of the plaintiff Company has been filed on record. He has stated in his affidavit that the Company had passed a resolution empowering and authorising him to file the affidavit as well as the suit on behalf of the plaintiff. It this affidavit, copy of the resolution has been exhibited as Ex. P- 1/A. The averments made in the plaint has been reiterated in this affidavit. In has been stated that the defendants are habitual pirator and the modus operendi and intention of the defendants have always been to come as close to the plaintiff and plaintiffs co-subsidiary business and take advantage of its goods. They have also started using the trade name of INDO being in violation of the trade mark and trade name of other subsidiaries of M/s. Alberto Culver Company viz. M/s. Indola Cosmetics B.V. who were compelled to file a suit against the said defendants. In this affidavit, the copyright registration and trade mark registration of the plaintiff are exhibited as P-2. It has also furnished the details of all the countries all over the world where the trade mark is registered and the plaintiff is carrying on its business. The activities of the defendants have been enlisted in the same list. Various interim orders passed in other connected cases filed by the plaintiff have also been placed on record. The literature, photographs of the goods produced by the defendants with their trade name and trade mark and copyright have been placed on record. The documentary and oral evidence lead by the plaintiff remains unrebutted and there is no reason before this Court to disbelieve the averments made by the plaintiff in the plaint.
6. In view of the facts aforenoticed and the discussion, a decree for permanent injunction passed in favor of the plaintiff and against the defendants from using, displaying, selling advertising or by any other mode or manner dealing in the impugned goods and business of bleaching preparation and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices or any allied/cognate goods and business under the impugned trade mark MT IVES or any other trade mark or label bearing the same or identical with or deceptively similar to the plaintiff said trade mark STIVES and trade name bearing the mark/word ST IVES. Further, a decree for mandatory injunction is also passed in favor of the plaintiff and against the defendants directing them to delivery up of all the impugned finished and unfinished material of the defendants bearing the impugned trade mark including the trade marks identical with and deceptively similar to the said trade mark of the plaintiff including the blocks, labels, display boards, sign boards, trade literature, advertisement material. The relief of damages is declined in view of the statement made by learned Counsel for the plaintiff and even otherwise there is no material before the Court to consider the said prayer of the plaintiff.
7. For the reasons aforerecorded, the suit of the plaintiff is decreed in the above terms while the plaintiff would also be entitled to the proportionate costs. IA 592/2004 also stands disposed of accordingly.