JUDGMENT
Swatanter Kumar, J.
1. The plaintiff is stated to be a corporation organized and existing under the laws of the State of Delaware, USA with its office at California, USA. Ms. Sunita K. Sreedharan is the constituted attorney of the plaintiff and is duly authorized by and under a power of attorney to sign and verify the pleadings and to institute the present suit. The present plaint has been signed and verified by the said Ms. Sunita K. Sreedharan. The plaintiff is a global internet media company that offers a branded network of comprehensive information, communication and shopping services to millions of users under its unique and highly distinctive trademark ‘YAHOO!’ since June, 1994. It is the case of the plaintiff that the services provided by the plaintiff enables internet users, even non-technical ones, to find information relevant for their purposes out of the plethora of contents of the world wide web. The plaintiff was amongst the first in the field to start a web directory and provide search services. Earlier this directory was called ‘Jerry and David’s Guide to the World Wide Web’. But later on the name was changed to ‘YAHOO!’ as it fit in with the founder’s perception of the internet as an uncivilized terrain. ‘YAHOO!’ web site of the plaintiff has become incredibly popular with the traffic of internet users to the site increasing rapidly. Various services are being offered from different times by the plaintiff. Use of the internationally famous YAHOO! trademark is not restricted only to computer and internet related services but extends to books, magazines and many collateral goods. The plaintiff has licensed the mark YAHOO! for use in connection with candies, chocolate, mints, nuts and such other like products as well. As stated in the plaint, the annual revenue of Yahoo! for the years 1995 to 2002 is as under:-
US $ 1,666,000 in 1995
US $ 23,793,000 in 1996
US $ 84,108,000 in 1997
US $ 245,100,000 in 1998
US $ 588,608,000 in 1999
US $ 1,110,178,000 in 2000
US $ 717,422,000 in 2001
US $ 953,067,000 in 2002
2. The plaintiff has spent huge sums on advertising and sales promotion and has earned extensive goodwill and reputation. In fact YAHOO! mark has become easily identifiable by the members of the public and trade, as originating from the plaintiff. The growing popularity of YAHOO! website has engendered imitations by third parties who have at various points in time attempted to illegally appropriate the goodwill and reputation in the said mark by using it as a key and essential part of the names of their products/services. YAHOO! has prevailed in legal actions and trademark office opposition and cancellation proceedings against the third party in various countries. In paragraph No. 15 of the plaint, the plaintiff has referred to various suits which were filed by the plaintiff for protection of the trademark YAHOO! against different parties right from the year 1998 to 2003 in which the court had granted ad interim injunction in favor of the plaintiff. Defendant No. 1 is stated to be in the business of manufacturing Supari, Gutkha and chewing tobacco. In December, 2000, the plaintiff was informed of the advertisement of five applications for a label bearing trademark YAHOO! that had been advertised in the Trade Marks journal No. 1232 dated 8th October, 2000. The defendant No. 1 was listed as the Applicant with respect to the said applications. Photocopies of the relevant advertisements have been filed in the present proceedings by the plaintiff. The applications of defendant were opposed by the plaintiff who filed the opposition proceedings against the said marks on 8th February, 2001. In May, 2002, the plaintiff is stated to have learnt about the manufacturing and selling of supari and other afore-mentioned items under the impugned mark YAHOO! to which the plaintiff reacted by sending a legal notice dated 6th May, 2002 obviously of not any consequence. In response to the said notice, the defendants had informed the plaintiff that the trademark YAHOO! was adopted by the defendants because of their customers exclaim ‘YAHOO’ Despite best efforts of the plaintiff, the defendants still displayed samples of fruit juices, beverages etc. bearing the YAHOO! trademark. Even after having been put on notice of the plaintiff’s rights, the defendants have, with mala fide intentions, continued to use the plaintiff’s trademark YAHOO! The defendants have even been inspired by plaintiff’s global reputation and goodwill under the trademark YAHOO! which promoted them to adopt an identical mark for the products of their manufacture and they are passing off their goods and business as that of the plaintiff’s and are mis-using the trademark YAHOO! of the plaintiff. This is likely to cause further confusion as the plaintiff has licensed use of trademark YAHOO! for food items. It is stated that the plaintiff has approached the court without any delay.
3. On the above averments, it is pleaded by the plaintiff that the defendants are affecting and in fact foreclosing the right of the plaintiff to legitimate expansion of their business to include manufacture and/or marketing of beverages and wafers etc. and are eroding the goodwill of the plaintiff which is distinctively known as plaintiff’s mark. It is averred by the plaintiff that the legislative intent and concern to specially protect piracy relating to pharmaceutical and food preparations, is reflected in Sections 78 and 79 of the Trade and Merchandise Marks Act, 1958 in the form of an enhanced sentencing policy. It is necessary that the defendants be restrained from using the said trademark in relation to such goods. The cause of action arose in favor of the plaintiff and against the defendants in December 2000 when the plaintiff came to know about the trademark applications pending, then in September, 2002 when the defendants responded to the notice and refused to give up the use of the impugned mark and even in October, 2002 and April, 2003 when the plaintiff became aware of the trademark application filed by the defendants in Pakistan as well. This has compelled the plaintiff to file the present suit praying for a decree for permanent injunction restraining the defendants from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in gutkha, supari, beverages fruits juices or any other product under the trademark YAHOO! or any other mark deceptively similar thereto. They also pray for a decree for damages amounting to Rs. 5,05,000/- on account of the use of the impugned mark and for delivery up of all the impugned materials of the defendants including the goods, stickers, cartons etc. which bear the impugned mark YAHOO!
4. Written statement on behalf of the defendants was filed taking up preliminary objection that the plaintiff has no locus standii to file the suit and that the defendants had honestly and bonafidely adopted the trade mark ‘YAHOO’ in respect of various goods, with effect from 1st January, 1998. It is also stated they have been continuously and extensively using the said trade mark and have licensed various other companies to use the same. Defendant no.1 applied for registration of the trademark ‘YAHOO’ in respect of various goods and the applications are pending and opposition, if any, raised by the plaintiff is likely to the rejected. It is a specifically pleaded case of the defendants that the copyright on various labels/products of ‘YAHOO’ are valid, subsisting and in force. It is stated that registration of the copyright has been done after obtaining a No Objection Certificate from the Office of the Registrar of Trade Marks.
5. It is also stated that the plaintiff has acquiesced and the present suit suffers from defect of delay and laches. Still other objections have been taken with regard to the suit having not been signed by authorised person and that the same has not been valued properly for the purposes of court fee and jurisdiction. On merits also, the claim of the plaintiff is denied and it is stated that the plaintiff has no legal, lawful right in the trademark ‘YAHOO’ and the plaintiff has no right to grant any licenses for use of the said trade mark in respect of the goods. In fact, the plaintiff is attempting to acquire monopolistic rights in respect of the trade mark ‘YAHOO’ so as to make profit by licensing such rights and thereby committing trafficking in trade mark. The attempt on the part of the plaintiff is to misguide the court and seek the relief in question. Replication was filed by the plaintiff reiterating the averments made in the plaint. Nobody appeared on behalf of the defendants on 17th August, 2005 and the defendants did not complete the admission and/or denial of documents. The case was ordered to be listed before the Court as nobody was appearing and the same was taken up on 25th August, 2005, on which date the learned counsel appearing for the defendants stated that they want to withdraw from the suit as despite their best efforts they were not getting any instructions from the defendants. The Counsel served a notice upon the defendants and filed an application for withdrawing their vakalatnama, which was allowed by the Court vide order dated 30th September, 2005. The matter was adjourned to 1st December, 2005 and the defendants were ordered to be proceeded against ex parte. Again on 1st December, 2005 nobody appeared on behalf of the defendants and liberty was granted to the plaintiff to file affidavits by way of evidence (ex parte). The affidavits were filed by the plaintiff and the case was heard ex parte on 16th December, 2005.
6. Affidavit of Mr. Anand Banerjee, constituted Attorney of the plaintiff, has been filed on record in support of the averments made in the plaint. In the affidavit, the averments made in the plaint have been reproduced and documents have been exhibited as Ex. P1 to Ex.P30. It has been stated in this affidavit that the plaintiff has spent huge amounts on advertisements, and their sales all over the world are also considerable. It has been stated that they have acquired a reputation and the word ‘YAHOO’ is known along with the name of the plaintiff and to its products. Various interim orders passed by the court have also been mentioned in detail in this affidavit. It is stated that the defendants are involved in the business of manufacturing of Supari, Gutkha, Tobacco under various brands and even up to the year 2000 they had not used the word ‘YAHOO’, and the exhibits Ex.P18 and P19 really show that the stand taken in the written statement is not correct. Further, it is stated that despite the plaintiff taking appropriate steps, the defendants have not stopped using the said trademark in relation to their products and plaintiff has acted with vigilance. Numerous documents have been filed on record in support of the claim of the plaintiff.
7. In this affidavit reference has also been made to exhibit P30, affidavit of the Chartered Accountant, to show that the damages suffered by the plaintiff are to the extent of 16.94 lacs. In Ex.P30, the Chartered Accountant has stated that he has based all his computation as per Item No.16 of Schedule III of the Foreign Exchange Management (Current Account Transactions) Rules 2000 under which payment of royalty up to 2% on exports and 1% on domestic sales under automatic route is permitted for use of trademarks and brand names. The said deponent has computed the damages payable on the basis of ‘YAHOO’ brand sales by the defendants from November 2000 onwards and figures prior thereto have been discarded.
8. In other words there is documentary evidence supported by affidavit of Mr. Sanjeev Sharma, Chartered Accountant, to substantiate the claim of the plaintiff, but in the plaint the plaintiff has only prayed for passing of a decree for an amount of Rs. 5,05,000/-, as such in excess of that claim the plaintiff cannot claim any further amounts. The evidence led in any case is limited and a plaintiff cannot be permitted to exceed his prayer without following the due process of law. The plaint was amended and filed by the plaintiff in September 2003 wherein the amount of Rs. 5,05,000/- was only claimed. Affidavit of Sh. Anand Banerjee read in conjunction with the affidavit of Mr. Sanjeev Sharma, fully satisfied the ingredients of plaintiff’s claim for damages to the above extent. The learned counsel appearing for the plaintiff has relied upon the judgments in the cases of Amar Nath Sehgal v. Union of India 2005 (30) PTC 253 (Del); Adidas-Salomon A.G. and Ors. v. Jagdish Grover 2005 (3) PTC 308 (Del); Buffalo Networks Pvt. Ltd. and Anr. v. Manish Jain and Anr. 2005 (30) PTC 242 (Del); L.T. Overseas Ltd. v. Guruji Trading Co. and Anr. CS(OS) No. 2711/1999 decided on 7th September, 2005 and P.N. Krishnamurthy v. CARE and Ors. to contend that the plaintiff is entitled to the compensatory damages because of the infringing of their trademark, and acts and commissions which violates the established rights of the plaintiff. It has been established on record and the evidence has gone unrebutted that claim of damages raised by the plaintiff to this extent is justifiable and can be granted by the Court.
9. The plaintiff has further placed on record their trademark in relation to various products as well as the offending trademark. The documents on record and the above affidavit show that in November, 2000 the plaintiff came to know about the infringements complained of and despite opportunity, the defendants have failed to establish any of the pleas taken by them in the written statement. It has also not been shown how the suit has not been valued properly for the purposes of court fee and jurisdiction. The plaintiff has valued the suit for the purposes of damages at Rs.5,05,000/-, for the purposes of rendition of accounts at Rs. 20,01,000/- and has paid the fixed court fee with an undertaking that the plaintiff would pay the balance court fee upon determination of the correct figures.
10. The plaintiff has been able to show that the defendants are manufacturing, selling or offering for sale the products like Gutkha, Supari and Chewing Tobacco under the trademark ‘YAHOO’ or a deceptively similar trademark and that they are also passing off such of their goods as if the goods were manufactured and produced by the plaintiff. Again evidence in this regard as stated in the affidavit, exhibits P18 and 19 has gone unrebutted on record.
11. In view of the above discussion, suit of the plaintiff is only decreed for Rs.5,05,000/- only. The suit of the plaintiff is also decreed for permanent injunction restraining the defendants, their agents, employees etc. from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in gutkha, supari, beverages, fruit juices or any other product or service under the trademark ‘YAHOO’ or any other mark deceptively similar thereto, or exploiting/using the trademark ‘YAHOO’ in any other manner or any other product or service or passing off their goods under the trademark ‘YAHOO’. The plaintiff’s claim for rendition of accounts is rejected as there is no evidence to substantiate or support that claim. However, the plaintiff would still pay the court fee on the sum of Rs. 20,01,000/-, the value fixed by him, for such relief. The suit is also decreed for delivery-up of all impugned materials of the defendants, including the goods, stickers, cartons, packing, dyes, articles, papers and other publicity material of the defendants bearing the impugned mark ‘YAHOO’, or any deceptively similar variant thereof, to an authorised representative of the plaintiff for the purposes of destruction and/or erasure and for damages to the extent of Rs. 5,05,000/-.
12. Plaintiff would also be entitled to proportionate costs.
13. Accordingly, all the pending IAs bearing No. 9583/2003, 9528/2003, 3447/2004, 7569/2004, 6308/2005 and 7821/2005 also stand disposed of.