Delhi High Court
Vikrant Chemico Industries Pvt Ltd vs Shri Gopal Engineering And Chemical … on 20 August, 2025
Author: Amit Bansal
Bench: Amit Bansal
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on: 30.05.2025
Judgment pronounced on: 20.08.2025
+ CS(COMM) 85/2018 & CRL.M.A. 4189/2020
VIKRANT CHEMICO INDUSTRIES PVT LTD .....Plaintiff
Through: Mr. Saikrishna Rajagopal, Mr. Nitin
Sharma, Mr. Sohrab Mann,
Ms. Deepika Pokharia and
Mr. Abhinav Bhalla, Advocates
versus
SHRI GOPAL ENGINEERING AND
CHEMICAL WORKS PVT LTD & ORS .....Defendants
Through: Mr. Peeyoosh Kalra and
Mr. Yashwant Singh Baghel,
Advocates
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
AMIT BANSAL, J.
1. By way of the present judgment, I shall decide the suit captioned above.
2. The present suit has been filed seeking the relief of permanent
injunction restraining the defendants from infringement of trademark,
copyright and passing off along with other ancillary reliefs.
CASE SET UP IN THE PLAINT
3. The case set up in the plaint is as follows:
3.1 In 1963, Mr. J.B. Gupta adopted the mark ‘DOCTOR BRAND
PHENYLE’.
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3.2 The plaintiff company, Vikrant Chemico Industries Pvt. Ltd., was
incorporated in the year 1972 and is engaged in the business of personal care
products, toiletries, pharmaceuticals and chemicals. The plaintiff operates
through its head office located in Kanpur, Uttar Pradesh.
3.3 In 1973, Mr. J.B. Gupta was appointed as a director of the plaintiff
company. Plaintiff’s Managing Director, Mr. J.B. Gupta had two sons – the
younger son, Mr. R.K. Gupta is one of the directors of the plaintiff company,
and the elder son, Mr. G.K. Gupta is the defendant no.2 herein.
3.4 It is averred in the plaint that in the same year 1973, the trademark
‘DOCTOR BRAND GERM TROLL’ was adopted by the plaintiff company,
which has been used since then for perfumed cleaners.
3.5 In the year 1975, a partnership firm, M/s Shri Gopal Engineering and
Chemical Works, was formed in the name of two partners viz., Mr. J.B. Gupta
and Mr. G.K. Gupta (defendant no.2).
3.6 In the year 1979, the defendant no.2, Mr. G.K. Gupta, was appointed
as a director of the plaintiff company.
3.7 In April, 1981, Mr. R.K. Gupta, also joined the partnership firm, M/s
Shri Gopal Engineering and Chemical Works and a partnership deed was
signed by three partners, namely Mr. J.B. Gupta and Mr. R.K. Gupta along
with the defendant no.2, Mr. G.K. Gupta.
3.8 The said partnership firm applied for and obtained registration for the
trademark ‘DOCTOR BRAND PHENYLE’ (device) bearing application
number 445392 in class 5 with effect from 8th November 1985.
3.9 In the same year 1985, Mr. R.K. Gupta was appointed to the Board of
Directors of the plaintiff company.
3.10 The plaintiff company obtained registration for the word mark
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‘CHEMIST’ bearing registration no. 464944 under class 5, with effect from
22nd December 1986.
3.11 On 1st July 1994, the defendant no.1 company was formed and the
plaintiff’s current directors as well as defendants no.2 and 3 were appointed
to the Board of Directors of the defendant no.1 company.
3.12 On 18th November 1996, the partnership firm signed an assignment
deed transferring complete title, registration and goodwill in the ‘DOCTOR
BRAND PHENYLE’ trademark/label to the plaintiff company. Thereafter, in
1997, the defendants no.2 and 3 resigned from the board of directors of the
plaintiff company.
3.13 On 3rd June 1999, the plaintiff company also acquired a copyright
registration in respect of the label of ‘DOCTOR BRAND PHENYLE’ vide
registration no. A56172/99.
3.14 On 1st February 2000, the plaintiff company acting through Mr. J.B.
Gupta assigned the trademark registration pertaining to the ‘CHEMIST’ mark
to the defendant no.1 company.
3.15 At present, under the mark ‘DOCTOR BRAND’, the plaintiff is selling
its ‘DOCTOR BRAND PHENYLE’ and ‘DOCTOR BRAND GERM
TROLL’ products as well as other products like acid cleaners, window
cleaners, naphthalene balls and floor cleaners.
3.16 The plaintiff has filed a C.A. certificate along with the plaint to
substantiate its sales figures from the financial year 2009-2010 to 2016-2017.
In the financial year 2016-2017, the sales turnover generated by the plaintiff
under the mark ‘DOCTOR BRAND PHENYLE’ was to the tune of Rs.
9,95,98,963.
3.17 Disputes arose between the parties in the month of March-July 2015,
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when the plaintiff came across phenyl products bearing the marks ‘DOCTOR
HAZEL’S BRAND PHENYL’ and ‘CHEMIST BRAND GERM TROLL’.
3.18 Accordingly, the present suit was filed on 25th August 2015 seeking the
following reliefs:
“(i) An order and decree for permanent mandatory injunction restraining
the Defendants, their officers, servants, agents, partners and all persons,
firms, corporations and associations in active concert or participation
with the Defendants from, manufacturing, offering / stocking for sale,
selling, marketing, advertising, distributing, printing, supplying and
otherwise dealing, directly or indirectly in any manner with phenyl or any
other goods, under the mark DOCTOR HAZEL’S BRAND PHENYLE, or
any other deceptive variant of the Plaintiff’s registered label “DOCTOR
BRAND PHENYLE”, amounting to infringement of the Plaintiff’s
trademarks as detailed hereinbefore;
(ii) An order and decree for permanent mandatory injunction restraining
the Defendants, their officers, servants, agents, partners and all persons,
firms, corporations and associations in active concert or participation
with the Defendants from, manufacturing, offering / stocking for sale,
selling, marketing, advertising, distributing, printing, supplying and
otherwise dealing, directly or indirectly in any manner with phenyl or any
other goods with or without a trade dress that is deceptively similar to the
Plaintiff’s “DOCTOR BRAND PHENLYE” mark/trade dress, thereby
amounting to passing off their goods as those of the Plaintiff’s or in any
way which suggests a connection or association with the Plaintiff;
(iii) An order and decree for permanent mandatory injunction restraining
the Defendants, their officers, servants, agents, partners and all persons,
firms, corporations and associations in active concert or participation
with the Defendants from, manufacturing, offering / stocking for sale,
selling, marketing, advertising, distributing, printing, supplying and
otherwise dealing, directly or indirectly in any manner with any other
goods with or without a trade dress that is deceptively similar to the
Plaintiff’s “DOCTOR BRAND GERM-TROLL” word mark and/or trade
dress, thereby amounting to passing off their goods as those of the
Plaintiff’s or in any way which suggests a connection or association with
the Plaintiff;
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(iv) An order and decree for permanent injunction restraining the
Defendants, their officers, servants, agents, partners and all persons,
firms, corporations and associations in active concert or participation
with the Defendants from, manufacturing, offering / stocking for sale,
selling, marketing, advertising, distributing, printing, supplying and
otherwise dealing, directly or indirectly in any manner with phenyl or any
other goods which reproduces the Plaintiff’s copyright protected
packaging artwork for the DOCTOR BRAND PHENYLE product thereby
infringing the Plaintiff’s copyright in its artistic works;
(v) An order and decree for permanent injunction restraining the
Defendants, their officers, servants, agents, partners and all persons,
firms, corporations and associations in active concert or participation
with the Defendants from, manufacturing, offering / stocking for sale,
selling, marketing, advertising, distributing, printing, supplying and
otherwise dealing, directly or indirectly in any manner with phenyl or any
other goods which reproduces the Plaintiff’s copyrighted packaging
artwork for the DOCTOR BRAND GERM-TROLL product thereby
infringing the Plaintiff’s copyright in its artistic works;
(vi) An order for rendition of accounts of profits, directly or indirectly
earned by the Defendant from its infringing activities and wrongful
conduct and a decree for the amount so found due to be passed in favour
of the Plaintiff’s;
(vii) An order for delivery up by the Defendant of all finished and
unfinished goods, materials, advertising material, blocks, dies etc. bearing
the marks /label/trade dress which is in likenesses of the Plaintiff’s
trademarks/label/trade dress or any other mark identical with or
deceptively similar to that of the Plaintiff’s, or any other material
infringing the trademarks of the Plaintiff, lying in the possession of the
Defendant and its principal officers, directors, agents, franchisees,
servants etc.;
(viii) A sum of Rs. 20,00,200/- for a decree of damages as valued for the
purposes of this suit in the preceding paragraph for the purposes of loss
of sales, reputation and goodwill of the Plaintiff’s trade mark caused by
the activities of the Defendant;
(ix) An order as to the costs of the proceedings”
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CASE SET UP IN THE WRITTEN STATEMENT OF THE DEFENDANTS
4. Written statement was filed on behalf of the defendants raising the issue
of territorial jurisdiction as well as other defenses on merits.
4.1. The mark ‘DOCTOR BRAND GERM TROLL’ was adopted in 1983
by the partnership firm, M/s Shri Gopal Engineering and Chemical Works.
4.2. Since 2000, the defendant no.1 company has been selling its phenyle
products under the trademark ‘CHEMIST BRAND PHENYLE’ in a
particular packaging/label/color scheme.
4.3. The registered word mark ‘DOCTOR HAZEL’S’ bearing registration
no. 1221775 in class 5 was assigned by one Mr. M. M. Wadhera, trading as
Western Electronics in favour of the defendant no.1 company vide assignment
deed dated 29th November 2014. The certified copy of the assignment deed
dated 29th November 2014 has been exhibited as Exhibit DW2/19. Upon
acquiring the said trademark, the defendant no.1 was recorded as subsequent
proprietor of the trademark ‘DOCTOR HAZEL’S’ in class 5. The certified
copy of TM-24 for recordal of assignment of trademark bearing registration
no. 1221775 in class 5 in the name of defendant no.1 company has been
exhibited as Exhibit DW2/20.
4.4. Keeping in view that the word ‘DOCTOR’ is generic and is already
registered in favor of various entities in class 5 in respect of disinfectants etc.,
the Registrar of Trade Marks had imposed a condition on the defendant no.1
company’s registration to disclaim the word ‘DOCTOR’ which makes
‘HAZEL’S’ to be the essential part of the defendant no.1 company’s
trademark.
4.5. On 19th December 2014, the defendant no.1 launched its products under
the trademark ‘DOCTOR HAZEL’S BRAND PHENYL’ with identical
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packaging/label/color scheme etc. as used for ‘CHEMIST BRAND
PHENYLE’.
4.6. In its replication, the plaintiff has reaffirmed its assertions made in the
plaint.
PROCEEDINGS IN THE SUIT
5. Summons in the suit were issued on 2nd September 2015.
6. Vide order dated 2nd September 2015, this Court granted an ex parte ad
interim injunction against the defendants restraining them from using the
trademarks ‘DOCTOR HAZEL’S BRAND PHENYL’ and ‘CHEMIST
BRAND GERM TROLL’. In the same order, a Local Commissioner was
appointed to visit the premises of the defendants in Kanpur, Uttar Pradesh.
7. Vide order dated 18th November 2015, the parties were referred to
mediation before the Delhi High Court Mediation and Conciliation centre,
however, it did not bear fruit.
8. On 5th August 2016, the Court appointed a Local Commissioner to visit
Bhopal, Madhya Pradesh where the defendants were allegedly selling the
infringing goods.
9. On 25th August 2017, while hearing I.A. 9676/2017 filed under Order
XXXIX Rule 2A of the Code of Civil Procedure, 1908 (hereinafter, ‘CPC‘),
this Court appointed a Local Commissioner to visit the two shops in Delhi as
well as few shops in the wholesale market in Khari Baoli, Chandani Chowk
to check whether the infringing products are available for sale.
10. Vide order dated 24th January 2018, I.A. 2187/2016 filed under Order
VII Rule 11 of CPC was dismissed with liberty to the parties to lead evidence
on the issue of territorial jurisdiction. On the same date, the ex parte ad interim
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injunction order was confirmed till the final disposal of the present suit with
a clarification that the defendants would be at liberty to use the mark
‘CHEMIST BRAND GERM TROLL’. Further, with the consent of the
parties, CS(OS) 2584/2015 was converted into a commercial suit and the
same was re-numbered as CS(COMM) 85/2018.
11. Vide order dated 9th July 2018, following are the issues framed in the
present suit:
“1. Whether the defendants have infringed the plaintiffs trademark,
specifically the DOCTOR BRAND PHENYLE trademark? OPP
2. Whether the defendants have infringed the copyright vesting in the
labels/artistic work of the plaintiff, specifically the DOCTOR BRAND
PHENYLE artistic work and the DOCTOR BRAND GERM TROLL artistic
work? OPP
3. Whether the defendants are passing off their goods as that of the
plaintiff, specifically the DOCTOR BRAND PHENYLE and the DOCTOR
BRAND GERM TROLL goods? OPP
4. If the answers to issues nos. 1, 2 & 3 are in the affirmative, whether
plaintiff is entitled to rendition of accounts from the defendants? OPP
5. Whether the plaintiff is entitled to damages? OPP
6. Whether the plaintiff is entitled to delivery up of infringing materials?
OPP
7. Whether the plaintiff is entitled to any further costs? OPP
8. Whether this Hon’ble Court has the territorial jurisdiction to entertain
the present suit? OPP
9. Whether the suit is bad for mis-joinder for defendants? OPD
10. Relief.”
12. The defendants preferred an appeal against the order dated 24th January
2018 passed by this Court, which was dismissed by the Division Bench vide
judgment dated 3rd July 2018. The Division Bench upheld the view taken by
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the Single Judge that the issue of territorial jurisdiction would be examined
after the parties lead evidence and the interim injunction order shall be
confirmed till the final disposal of the suit.
13. Vide order dated 8th February 2019, the Supreme Court stayed the
operation of the Division Bench judgment dated 3rd July 2018 and requested
this Court to dispose of the present suit within 6 months.
14. Vide order dated 28th November 2019, Mr. S.M. Chopra, Additional
District Judge (Retd.) was appointed as a Local Commissioner to record
evidence.
15. Following witnesses appeared on behalf of the plaintiff:
i. Mr. Shrey Gupta, Son of Mr. R.K. Gupta
ii. Mr. Sandeep Kumar Gupta
16. Following witnesses appeared on behalf of the defendants:
i. Mr. Gopal Krishan Gupta, Director of defendant no.1
ii. Mr. Prince Gupta, Son of Mr. G.K. Gupta
17. I have heard the submissions on behalf of the parties and examined the
record of the suit.
18. My issue wise findings are as under:
Issue no. 8 – Whether this Court has the territorial jurisdiction to entertain the
present suit? OPP
Submissions of the plaintiff
19. In support of its contention that this court has territorial jurisdiction to
entertain the present suit, the plaintiff has relied on the following:
i. The defendant no.1’s website clearly states that the defendants
have been selling their products in various states, including Delhi.
ii. The defendant no.2 has admitted in his cross-examination thatSignature Not Verified
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the defendant no.1 company has been selling its products in various
states, including Delhi.
iii. The defendant no.1’s products are available for sale on e-
commerce platform, www.indiamart.com.
iv. The name of Mr. Prince Gupta is mentioned in the contact details
of defendant no.1’s page on IndiaMart, which shows that he is actively
involved in the functioning of the defendant no.1 company.
v. The Local Commissioner’s report dated 11th September 2017
specifically records the statement of owners of Chawla General Store in
Delhi stating that they had sold 2-3 bottles of ‘DOCTOR HAZEL’S
BRAND PHENYLE’.
vi. The defendant no.1 had filed trademark application for
registration of ‘DOCTOR HAZEL’S’ mark in Delhi.
vii. The assignment deed dated 29th November 2014 through which
the defendant no.1 acquired the mark ‘DOCTOR HAZEL’S’ was also
executed in Delhi.
Submissions of the defendants
20. The defendants have rebutted the aforesaid submissions of the plaintiff
in the following manner:
i. The defendant no.1’s website only refers to the products selling
under the brand ‘CHEMIST’, and not any other products of the
defendants. In any event, the website of the defendant no.1 is a passive
one and does not offer any online sale of products.
ii. The plaintiff has not given any details of the shops where the
defendants were selling its products in Delhi.
iii. At the time of issuance of summons in the suit on 2nd September
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2015, the plaintiff prayed for appointment of a Local Commissioner to
visit the premises of the defendant no.1 at Kanpur and no request was
made to visit any premises at Delhi.
iv. The reliance placed by the plaintiff on the report of the Local
Commissioner dated 11th September 2017 is misplaced. Even otherwise,
the plaintiff would have to establish jurisdiction when the suit was filed
on 25th August 2015.
v. Defendant no.1 company has neither any distributor/dealer in
Delhi, nor does it carry out business operations in Delhi. The plaintiff
has also failed to produce any witness, either the shopkeepers or the
investigators or any other independent witness to show that the goods of
defendant no.1 were sold in Delhi.
vi. It is a settled position of law that filing of an application for
registration of trademark in Delhi would not confer jurisdiction upon the
Courts at Delhi. Reliance in this regard is placed on Dhodha House v.
S.K. Maingi, 2006 (9) SCC 41. If the filing of the application does not
confer jurisdiction, the assignment thereof would also not constitute any
cause of action at Delhi.
Analysis
21. It is an admitted position that both the plaintiff and defendants are based
out of Kanpur, Uttar Pradesh, which is evident from the memo of parties filed
along with the suit. From a reading of the plaint as well as the written
submissions filed by the plaintiff, it is clear that plaintiff has invoked
jurisdiction of this Court under Section 20(c) of CPC i.e. the cause of action,
wholly or in part, arises within jurisdiction of this court.
22. To begin with, I will deal the issue with regard to sale of the defendants’
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products in Delhi. The plaintiff has failed to produce any bills/invoices or any
other evidence to substantiate its claim that the defendants’ products bearing
the impugned marks are being sold in Delhi.
23. The plaintiff submits that the defendant no.1’s website itself claims that
the defendants’ goods are available all over India. The printout of the website
of the defendant no.1 has been exhibited as Exhibit PW1/11. The relevant
extracts of the defendant no.1’s website on which the plaintiff places reliance
has been reproduced below:
24. The defendant no.1’s website only refers to the products selling under
the mark ‘CHEMIST’ and not the products selling under the impugned mark
‘DOCTOR HAZEL’S BRAND PHENYLE’. This fact has also been
confirmed during the cross examination of DW-2. The relevant extracts from
the cross-examination of DW-2 are set out below:
“Q68. On your website (www.shrigopal.com) a print out which is Exhibit
PW1/11 (denied at the stage of admission denial) you have stated that your
products are being marketed all across the country and internationally, is
it correct?
Ans. This website pertains to only ‘Chemist Brand products’. There is no
website made for ‘Doctor Hazel’s Products’. We do not sell products all
over India.
***
Q103.Witness has been shown Ex. PW1/11. Has it been mentioned in your
website that the Defendant No.1 Company selling their product in Delhi?
Ans. Yes, for Chemist Brand.”
[Emphasis supplied]
25. In addition to this, the plaintiff has placed reliance on the Local
Commissioner’s report dated 28th September 2015, which records that Mr.
Prince Gupta (defendant no.2’s son) had claimed that the defendant no.1
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company sells its products in all 29 states of India.
26. In my view, no reliance can be placed on the statement of Mr. Prince
Gupta made to the Local Commissioner to claim territorial jurisdiction. The
mandate of the Local Commissioner appointed vide order dated 2nd September
2015 was only to seize the offending goods and make inventory of the same
and subsequently, handover the said goods to the defendants on superdari
after sealing the same. The mandate of the Local Commissioner was not to
question the representatives of the defendants and gather evidence. Hence, the
plaintiff cannot claim that the cause of action has arisen in Delhi only on the
basis of answers given by Mr. Prince Gupta to the Local Commissioner.
27. It is also the case of the plaintiff that the defendant no.1’s website
allows the customers to access the contact details of the defendants.
Defendants contend that the defendant no.1’s website is a passive website
which does not allow the customers to place orders. In this context, a reference
may be made to the judgment of the Division Bench of this Court in Banyan
Tree Holding v. A Murali Krishna Reddy, 2009 SCC OnLine Del 3780,
wherein it was held that jurisdiction cannot be created on the basis of a passive
website, which does not permit sale and purchase of products. Relevant
paragraphs of the said judgment of the Division Bench are set out below:
“45. This court holds that in order to prima facie establish that the
Defendant purposefully availed of the jurisdiction of this court, the
Plaintiff would have to show that the Defendant engaged in some
commercial activity in the forum State by targeting its website
specifically at customers within that State. This is consistent with the law
laid down in Cybersell and reiterated later in Toys R Us. It is also
consistent with the application of the ‘tighter’ version of the ‘effects’ test
which is ‘targeting’. In any action for passing off or infringement, it would
have to be shown that the Defendant by using its mark intended to pass off
its goods as that of the Plaintiff’s. A mere hosting of a website which canSignature Not Verified
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be accessible from anyone from within the jurisdiction of the court is not
sufficient for this purpose. Also a mere posting of an advertisement by
the Defendant depicting its mark on a passive website which does not
enable the Defendant to enter into any commercial transaction with the
viewer in the forum state cannot satisfy the requirement of giving rise to
a cause of action in the forum state. Even an interactive website, which
is not shown to be specifically targeted at viewers in the forum state for
commercial transactions, will not result in the court of the forum state
having jurisdiction. In sum, for the purposes of Section 20(c) CPC, in
order to show that some part of the cause of action has arisen in the
forum state by the use of the internet by the Defendant, the Plaintiff will
have to show prima facie that the said website, whether euphemistically
termed as “passive plus” or “interactive” was specifically targeted at
viewers in the forum state for commercial transactions. The Plaintiff
would have to plead this and produce material to prima facie show that
some commercial transaction using the website was entered into by the
Defendant with a user of its website within the forum state and that the
specific targeting of the forum state by the Defendant resulted in an
injury or harm to the Plaintiff within the forum state. Question no. (ii) is
answered accordingly.”
[Emphasis supplied]
28. A reference may also be made to the judgment of a Coordinate Bench
in Indovax v. Merck Animal Health, 2017 SCC OnLine Del 9393, wherein
relying upon Banyan Tree Holding (Supra), the plaint was rejected under
Order VII Rule 11 of the CPC on the ground of territorial jurisdiction. The
Court observed that, “the plaintiff only states that the goods of the defendants
are available for sale in Delhi but this averment is not supported by any
documentary evidence”.
29. Based on the material on record, it is evident that the website of the
defendant no.1 is a passive website and mere accessibility of the said website
within the jurisdiction of this Court would not amount to specific targeting of
the customers in the Delhi. The plaintiff has failed to produce any evidence to
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show that a commercial transaction was executed by the defendants through
the said website.
30. As regards the contention of the plaintiff that the products of the
defendants are available for sale on IndiaMart, which is accessible in Delhi,
it is to be noted that the portal of IndiaMart is not a platform for sale and
purchase of the products. Therefore, mere listing of defendants’ products on
the website of IndiaMart would not confer jurisdiction in this Court. The
printout of the IndiaMart listing of the defendant no.1 company has been
exhibited as Exhibit DW2/P8. In this regard, reference may be made to the
judgment of this Bench in Kohinoor Seed Fields India Private Limited v.
Veda Seed Sciences Private Limited, 2025 SCC OnLine Del 2404, relevant
extracts of which are as under:
” 42. In the present case, no averments have been made in the plaint, nor
have any documents been filed along with the plaint fulfilling the aforesaid
criteria laid down by the Division Bench. It is not the case of plaintiff that
the defendant has a website for selling its own products. The listings on
the e-commerce websites like, “India Mart” and “Kalgudi” have been put
by the third-party sellers and not by the defendant. Therefore, even if the
defendant’s products are shown available on India Mart and Kalgudi, the
defendant cannot be held responsible for the same.
43. Even though the plaintiff has pleaded that India Mart is a dynamic
website that permits communication and placement of orders, there is
neither any pleading nor any document produced to show that there has
been any communication with the defendant or any order placed for the
defendant’s products in Delhi.”
[Emphasis supplied]
31. In the present case as well, despite the IndiaMart listing, there is neither
any pleading nor any document produced to show that there has been any
communication with the defendants or any order was placed for the
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defendants’ products in Delhi through IndiaMart.
32. The plaintiff has relied upon cases filed against the defendant no.1
company by the Special Investigation Bureau, Sales Tax and Commercial Tax
Department, Uttar Pradesh for selling products without tax invoices to claim
that the defendant no.1 has been selling products in Delhi without issuing any
invoices. The ‘deemed assessment status report’ of the defendant no.1
company for assessment years 2014-15 and 2015-16 have been exhibited as
Exhibit DW2/P9 and Exhibit DW2/P10. However, there is nothing to
suggest from the said documents that the defendants’ goods were being sold
in Delhi.
33. The plaintiff has also placed reliance on the Local Commissioner’s
report dated 11th September 2017, wherein it is stated that one of the
shopkeepers had sold 2-3 bottles bearing the mark ‘DOCTOR HAZEL’S
BRAND PHENYLE’. In this regard, the plaintiff has placed reliance on
paragraph 4 of the said report, which is reproduced below:
“4. I enquired whether they are currently selling, or in the past have
sold a phenyle under the brand name DOCTOR HAZEL’S BRAND
PHENYLE, at their premises, to which they stated that they had sold
approximately 2-3 bottles of the said brand about 3 months ago when
demand for the product arose. At present they do not have any stock of the
aforesaid branded phenyl.”
34. The Local Commissioner who visited the aforesaid shops was
appointed during hearing of an application being I.A.9676/2017 under Order
XXXIX Rule 2A of the CPC. A reference may be made to the order passed
by this Court on 25th August 2017 to show the mandate of the Local
Commissioner. The relevant paragraphs of the said order are set out below:
“A perusal of the cash memos reveals that the goods in question were
purchased by the plaintiff somewhere in the month of May, 2017, but noneSignature Not Verified
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of the cash memos mentions the name of the defendants or the mark in
dispute.
This Court is also not impressed by the video footage that has been
produced by the plaintiff. It seems prima facie to this Court that by clever
drafting, jurisdiction of this Court is being invoked.
However, before taking a final view in this matter, this Court considers it
appropriate to appoint a Local Commissioner to visit the two shops from
which the plaintiff is stated to have purchased the defendants’ infringing
products as well as a few shops in the wholesale market in Khari Baoli,
Chandani Chowk to see if the infringing products are still available for
sale and/or whether they were ever available for sale in Delhi in the
recent past. A representative of the plaintiff and defendants shall
accompany the Local Commissioner.”
[Emphasis supplied]
35. In my considered view, the aforesaid report of the Local Commissioner
would not constitute sufficient evidence to arrive at a finding that the
defendants’ products under the impugned marks are sold in Delhi. Firstly, the
aforesaid report is based on hearsay evidence, i.e. merely what the shopkeeper
has told the Local Commissioner without any document to substantiate the
same. Secondly, the shopkeeper in question admitted that he does not have
any stock of the said products. In addition to this, the plaintiff has not
produced the said shopkeeper as a witness to show that he sold the goods
bearing the impugned marks in Delhi. The same Local Commissioner visited
multiple other sites, where three other shopkeepers informed him that they
have never heard of the brand.
36. Even otherwise, the question of jurisdiction has to be determined when
the suit was filed on 25th August 2015. No invoice or any other document has
been placed on record to show that the defendants’ products were selling in
Delhi. At that time, the plaintiff only sought appointment of a Local
Commissioner to visit Kanpur where he believed the infringing products
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would be found and not Delhi.
37. Now, I shall deal with the contention of the plaintiff that the cause of
action arises in Delhi since the defendant no.1 applied for trademark
registration of the impugned mark ‘DOCTOR HAZEL’S’ in Delhi. This
contention has been rejected by the Supreme Court in Dhodha House (Supra).
38. In Dhodha House (Supra), the Supreme Court has categorically held
that cause of action arises only when a registered trademark is in use and not
when the application is filed for registration of a trademark. Therefore, the
plaintiff cannot claim jurisdiction on the basis that its marks were registered
in Delhi. A natural corollary to this would be that if a trademark registration
cannot be relied upon to claim jurisdiction of this Court, then the execution of
the assignment deed dated 29th November 2014 in Delhi would not
automatically confer the jurisdiction of this Court.
39. In light of the discussion above, the plaintiff has failed to establish
territorial jurisdiction of this Court to entertain the present suit. Hence, Issue
no.8 is decided in favour of the defendants and against the plaintiff.
40. Even though the plaint is liable to be returned on the ground of lack of
territorial jurisdiction, in terms of the mandate of Order XIV Rule 2 of the
CPC and the judgment passed by the Supreme Court in Sathyanath v.
Sarojamani, 2022 7 SCC 644, I proceed to adjudicate the remaining issues
framed in the suit.
Issue no. 1 – Whether the defendants have infringed the plaintiff’s trademark,
specifically the DOCTOR BRAND PHENYLE trademark? OPP
Issue no. 2 – Whether the defendants have infringed the copyright vesting in
the labels/artistic work of the plaintiff, specifically the DOCTOR BRAND
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PHENYLE artistic work and the DOCTOR BRAND GERM TROLL artistic
work? OPP
Issue no. 3 – Whether the defendants are passing off their goods as that of the
plaintiff, specifically the DOCTOR BRAND PHENYLE and the DOCTOR
BRAND GERM TROLL goods? OPP
41. Since, all the aforesaid issues are connected, I shall take them up
together for adjudication. First, I shall take up the issue of trademark and
copyright infringement as well as passing off in relation to the mark
‘DOCTOR BRAND PHENYLE’.
Doctor Brand Phenyle
Submissions of the plaintiff
42. The plaintiff claims to be the registered proprietor, prior adopter and
user of the trademark ‘DOCTOR BRAND PHENYLE’, along with its
variants under the mark ‘DOCTOR’. The trademark registrations granted in
favour of the plaintiff are given below:
TM Trademark Class User Claim Document Date of
Appl. Pg. No. application
No.
445392 5 19th TM 8th
December Registration November
1963 Certificate @ 1985
Exhibit PW
1/7 at pg. 1-
3, Plt.
Document
Compilation
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718807 5 Proposed to TM 14th June
be used Registration 1996
Certificate @
Exhibit PW
1/7 at pg. 4-6
Plt.
Document
Compilation
43. The mark ‘DOCTOR BRAND PHENYLE’ was originally registered in
the name of the partnership firm ‘Shri Gopal Engineering and Chemical
Works’ in class 5 in terms of the trademark application filed on 8th November
1985. Subsequently, a Family Settlement took place in 1996, and Shri Gopal
Engineering and Chemical Works through its partners executed an assignment
deed dated 18th November 1996 to assign the aforesaid label mark in favour
of the plaintiff company. The original of the assignment deed dated 18th
November 1996 has been exhibited as Exhibit PW1/3.
44. The plaintiff company also acquired a copyright registration in respect
of the label of ‘DOCTOR BRAND PHENYLE’ vide registration no.
A56172/99. The copyright registration certificate for the label of ‘DOCTOR
BRAND PHENYLE’ has been exhibited as Exhibit PW1/8.
45. It is the contention of the plaintiff that the mark adopted by the
defendants, i.e. ‘DOCTOR HAZEL’S BRAND PHENYLE’ is deceptively
similar to the plaintiff’s mark ‘DOCTOR BRAND PHENYLE’ in respect of
identical goods. The plaintiff contends that the term ‘DOCTOR’ forms an
essential and dominant part of the plaintiff’s trademark and the mark used by
the defendants uses the dominant/essential feature of the plaintiff’s mark
‘DOCTOR’.
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46. It is the case of the plaintiff that the mark ‘DOCTOR’ for
phenyle/disinfectant liquid is unique and arbitrary. The plaintiff also contends
that since the defendant no.1 has also applied for the registration of the mark
‘DOCTOR SUPER POWER PHENYLE’ and obtained registration for the
mark ‘DOCTOR HAZEL’S’, it cannot claim that the mark ‘DOCTOR’ is
generic. Plaintiff also contends that merely because other third parties have
registered the mark ‘DOCTOR’ or have applied registration for the same in
respect of the similar products, it cannot be the basis to defeat the case of the
plaintiff against the defendants.
47. The plaintiff has filed a rectification petition for removal of the
registered word mark ‘DOCTOR HAZEL’S’ bearing registration number
1221775 in class 5, which now stands registered in favor of the defendant
no.1. The said rectification is still pending before this Court.
48. On the aspect of passing off, the plaintiff contends that on account of
its extensive use, the mark ‘DOCTOR BRAND PHENYLE’ has attained
substantial reputation and goodwill. To establish goodwill and reputation, the
plaintiff has placed on record a C.A. Certificate, certifying the plaintiff’s
turnover, advertisement, expenses from the year 2009-2010 to 2016-2017 as
also sales invoices from the year 1998. The CA certificate dated 19th April
2018 has been exhibited as Exhibit PW1/6 (Colly). The invoices and
vouchers evidencing expenses incurred for advertising and promotion of the
trademark ‘DOCTOR BRAND’ and advertisements issued by the plaintiff for
its products under the marks ‘DOCTOR BRAND PHENYLE’ and ‘DOCTOR
BRAND GERM TROLL’ have been exhibited as Exhibit PW1/5 (Colly).
49. It is the case of the plaintiff that the defendants have adopted an
identical trade dress and label in a dishonest manner. A pictorial comparison
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of the plaintiff’s products and defendants’ products as filed by the plaintiff
along with the plaint is set out below:
Plaintiff's products Defendants' products
Submissions of the defendants
50. Per contra, it is contended on behalf of the defendants that registration
for the mark ‘DOCTOR BRAND PHENYLE’ granted in favour of the
plaintiff, is in respect of a device mark and therefore, the plaintiff cannot claim
exclusive rights on the individual components of the mark.
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51. It is further submitted that the word ‘DOCTOR’ is generic and common
to trade and nobody can claim monopoly over the same. The use of the mark
‘DOCTOR’ in relation to phenyle is clearly laudatory as it alludes to health
and safety. The word ‘HAZEL’ is an essential, integral and dominant part of
the defendant no.1 trademark and distinguishes the goods of the defendants
from those of the plaintiff. No evidence has been produced by the plaintiff to
show that the plaintiff’s mark ‘DOCTOR BRAND PHENYLE’ has acquired
distinctiveness.
52. Since both the plaintiff and the defendants are registered proprietors of
their respective marks, in terms of Section 28 of the Trade Marks Act, 1999,
the plaintiff cannot claim an exclusive right to use the registered trademark
against the defendant no.1.
53. The defendants had also provided a list of registrations that the Trade
Marks Registry has granted in respect of mark ‘DOCTOR’ in relation to
disinfectants in class 5.
54. In this regard, the defendants submit that when the defendant no.1
sought registration of the mark ‘DOCTOR HAZEL’S’, the Trade Marks
Registry imposed a condition on the defendant no.1 to disclaim the word
‘DOCTOR’. It is clear from the same that the word ‘DOCTOR’ is generic and
cannot be monopolised. The trademark registration certificate no. 1221775
for the trademark ‘DOCTOR HAZEL’S’ in class 5 along with renewal
certificate and status page has been exhibited as Exhibit DW2/24 (Colly).
55. Furthermore, the words ‘BRAND PHENYLE’ are being used by
various competitors of the plaintiff and defendants in Indian market with their
main/household brand i.e. ‘GAINDA BRAND PHENYLE’, ‘BLUE CROSS
BRAND PHENYLE’, ‘DIAMOND BRAND PHENYLE’, ‘TIGER BRAND
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PHENYLE’. This shows that the words ‘BRAND PHENYLE’ are generic
and common to trade. Original labels of various phenyle brands which are
selling their products in red and yellow packaging with blue cap/identical
images of the ants and insects at the label of the bottle in blue and white colour
have been exhibited as Exhibit DW2/36 (Colly).
56. At the time of filing the suit, the plaintiff was using a blue and white
colour scheme in respect of its packaging. Even the copyright registration
obtained by the plaintiff for the label ‘DOCTOR BRAND PHENYLE’ is in a
blue and white colour scheme. This fact has been admitted by PW-1 in his
cross examination. This is also evident from the packaging of the plaintiff’s
phenyle bottle using the ‘DOCTOR BRAND PHENYLE’ label in blue and
white color scheme, as on August, 2015. Original label of the plaintiff
company’s product ‘DOCTOR BRAND PHENYLE’ in white and blue color
scheme has been exhibited as Exhibit DW2/10.
57. On the other hand, defendants have been selling their phenyle products
in the colour scheme of yellow, red, blue, green and white since the year 2000
under the mark ‘CHEMIST BRAND PHENYLE’. The same label was used
by the defendant no.1 for its products under the trademark ‘DOCTOR
HAZEL’S’ when the same was launched on 19th December 2014. The original
labels of various products under ‘CHEMIST BRAND PHENYLE’ from the
year 2003 to 2011 have been exhibited as Exhibit DW2/21. The original label
of the defendant no.1 company’s product under the trademark ‘DOCTOR
HAZEL’S’ has been exhibited as Exhibit D5. Therefore, the plaintiff cannot
claim any copyright infringement in respect of the label in yellow, red, blue
and white colour scheme.
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58. To make out a case of passing off and infringement of copyright, the
plaintiff has filed documents along with trade dress with a similar colour
combination as that of defendant no.1 which was never used by the plaintiff.
Insofar as the overall layout was concerned, the same layout was being used
by the erstwhile partnership ‘Shri Gopal Engineering and Chemical Works’
since 1986 in relation to the products under the mark ‘CHEMIST’ and
thereafter by the defendant no.1 since 2000. Therefore, the plaintiff had
knowledge of the said get-up since the year 2000. Further, the aforesaid layout
is common to trade in the sanitation and disinfectant industry. The defendants
have placed on record photographs of various other products available in the
market using similar packaging, as given in paragraph 4B of the written
statement.
Analysis
59. Insofar as the case set up by the plaintiff with regard to trademark
infringement is concerned, in light of Section 28(3) of the Trade Marks Act,
1999 no infringement action can lie against the defendants in view of the
registration obtained by the defendants. Both the plaintiff and defendants are
registered proprietors of their respective trademarks, i.e. ‘DOCTOR BRAND
PHENYLE’ (device), and ‘DOCTOR HAZEL’S’ (word mark), respectively.
Reference may be made to a recent judgment passed by the Division Bench
of this Court in VIP Industries v. Carlton Shoes, 2025 SCC OnLine Del
4620.
60. Even though it is contended on behalf of the plaintiff that it has filed a
rectification petition seeking removal of the registration of the defendants, the
same is said to be pending. Therefore, at this stage, no case of trademark
infringement would lie against the defendants.
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61. It is an admitted position that the words ‘phenyle’ and ‘brand’ are
generic and therefore cannot form the dominant part of the mark of either the
plaintiff or the defendants.
62. In addition to the aforesaid words, the plaintiff uses the word
‘DOCTOR’ whereas the defendant no.1 uses the mark ‘DOCTOR
HAZEL’S’. In my considered view, the addition of the word ‘HAZEL’S’
makes the mark of the defendant no.1 distinguishable from that of the
plaintiff.
63. The defendants have placed on record sufficient evidence to show that
the mark ‘DOCTOR’ is common to trade and has been registered in favour of
various third parties in respect of similar products. Copies of various
registrations, trademark applications, Trade Marks Journal pages along with
status pages where the word ‘DOCTOR’ is registered in various classes
included in class 5 in favour of various other entities by the Trade Marks
Registry have been exhibited as Exhibit DW2/32 (Colly).
64. The registration granted in favour of the plaintiff is for the composite
device mark ‘DOCTOR BRAND PHENYLE’ and not in respect of the word
‘DOCTOR’. The defendants have obtained registration for the word mark
‘DOCTOR HAZEL’S’. Therefore, in terms of Section 17 of the Trade Marks
Act, 1999 the plaintiff cannot claim exclusivity in respect of the word
‘DOCTOR’.
65. In this regard, reference may be made to the judgment of the Division
Bench of this Court in Vardhman Buildtech Pvt. Ltd. v. Vardhman
Properties Ltd., 2016 SCC OnLine Del 4738, the relevant paragraph of which
are set out below:
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“8. On a plain reading of Section 15(1), it is evident that where a
proprietor of a trade mark claims to be entitled to the exclusive use of any
part thereof separately, he is permitted to apply to register the whole and
the part as separate trade marks. In the present case, the respondent is the
proprietor of the label/mark which includes the words ‘VARDHMAN
PLAZAS’. The respondent is claiming exclusivity in respect of the word
‘VARDHMAN’. It is clear that he had the option to make an application
for registering the word ‘VARDHMAN’ as a separate trade mark.
Assuming that he could have had the word mark registered, it is an
admitted fact that the respondent made no such application. Section 17 of
the said Act makes it clear when a trade mark consists of several matters,
as it does in the present case, its registration shall confer on the proprietor
exclusive right to the use of the trade mark taken as a whole. There is no
dispute that the label/mark, taken as a whole, is the exclusive property of
the respondent. The learned counsel for the appellants has no quarrel with
this at all. The issue arises when the respondent claims exclusive right to
a part of the label/mark and particularly to the word ‘VARDHMAN’.
Section 17(2) is a non-obstante provision [vis-à-vis sub-section(1)],
which stipulates that when a trade mark contains any part which is not
the subject matter of a separate application by the proprietor for
registration as a trade mark or which is not separately registered by the
proprietor as a trade mark or contains any matter which is common to
the trade or is otherwise of a non-distinctive character, the registration
thereof shall not confer any exclusive right in the matter forming only a
part of the whole of the trade mark so registered. In the present case,
neither has the respondent separately registered ‘VARDHMAN’ as a
trade mark nor has any such application been made. Furthermore, the
word ‘VARDHMAN’ is itself of a non-distinctive character and is not
only common to this trade but to several other businesses. Consequently,
the registration of the label/mark which contains the words
‘VARDHMAN PLAZAS’ does not confer any exclusive right on the
respondent insofar as a part of that mark, namely, ‘VARDHMAN’ is
concerned.
[Emphasis supplied]
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66. Similar view was also taken by the Division Bench of this Court in
Vasundhra Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani, 2022 SCC
OnLine Del 3370. The relevant paragraph is set out below:
“32. It is well settled that a composite trademark or label trademark is
not required to be dissected to determine whether there is any deceptive
similarity with another trademark. The question whether there is any
deceptive similarity between two trademarks has to be ascertained by
examining the marks in question as a whole. In South India Beverages
India Private Limited v. General Mills Marketing Inc, 2014 SCC OnLine
Del 1953, the Division Bench of this Court had explained the ‘anti-
dissection rule’ in some detail. The Court reiterated that “conflicting
composite marks are to be compared by looking at them as a whole,
rather than breaking the marks up into their components parts for
comparison”. However, the Court had also observed that “while a mark
is to be considered in entirety, yet it is impermissible to accord more or
less importance or ‘dominance’ to a particular portion or element of a
mark in cases of composite marks”.”
[Emphasis supplied]
67. Since the plaintiff has registration for the label mark ‘DOCTOR
BRAND PHENYLE’, the said label has to be considered in its entirety while
comparing it with the defendants’ mark. The plaintiff cannot expand the scope
of protection granted to the said label mark by claiming that the word
‘DOCTOR’ is the ‘essential’/ ‘dominant’ part of its registered label mark. In
fact, when the two competing marks are seen as a whole, it can be concluded
that the said rival marks do not bear any visual similarity.
68. Even otherwise, the word ‘DOCTOR’ is a generic and laudatory term
used by various entities in respect of disinfectants under class 5. Hence, the
plaintiff cannot be permitted to monopolise the term ‘DOCTOR’. This
position is further substantiated by the fact that the defendant no.1 obtained
registration for the word mark ‘DOCTOR HAZEL’S’ wherein a condition
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was imposed by the Trade Marks Registry on the defendant no.1 to disclaim
the word ‘DOCTOR’. Undoubtedly, this clarifies that the term ‘DOCTOR’
has become a generic term which cannot be monopolized. [Reference may be
made to Exhibit DW2/24 (Colly)]
69. It is the contention of the defendants that the plaintiff was using its
label/packaging in an entirely different colour scheme of blue and white and
only for the purposes of filing the present suit, the plaintiff changed its
label/packaging so as to bring in a colour combination of red, yellow and blue
in order to show a resemblance with packaging used by the defendants.
70. To appreciate this submission, it may be useful to refer to the trademark
registration applied for by the plaintiff on 14th June 1996 and subsequently,
granted in class 5. The same is set out below:
71. In respect of the same label, the plaintiff has also applied for and
obtained copyright registration, which is set out below:
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72. This is in sharp contrast to the label relied upon by the plaintiff in the
present suit. For the sake of convenience, the label/packaging in respect of
which the plaintiff alleges passing off as well as copyright infringement is set
out below:
73. The counsel for the defendants specifically cross examined PW-1 in
this regard. The relevant extracts from the cross examination are set out
below:
“Q46. Please see the label being shown to you is this the registered label
under Application No. 445392 and also under the copyright Act No. A-
56172/99 (the document shown to the witness is given the name Ex.
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Ans. The label shown to me the part of the label is same under Application
No. 445392 and Copy right Certificate. The portion marked A in Ex.
PW1/D2 is same as per registration certificate 445392 and the portion
marked A, B and B1 are the same as copy right registration certificate.
Q47. Ex. PW1/D2 is the label under which the Plaintiff sells its goods as
of today. Is it correct?
Ans. It is correct.”
74. Therefore, for the purposes of passing off and copyright infringement
a comparison would have to be made between the label of plaintiff in respect
of which it obtained registrations and which it had admitted to be using with
a label/ products being used by the defendants.
Plaintiff’s products and label Defendants’ products and label
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75. The comparison above would show that the label used by the
defendants is quite distinct from the label used by the plaintiff (Exhibit
PW1/D2) in terms of colour scheme as well as the font and style. The colour
scheme of the plaintiff is blue, red and white, and that of the defendants is
primarily yellow with blue, red and green. There are enough distinctive
features in the packaging of the defendants to distinguish it from that of the
plaintiff. In fact, the word ‘DOCTOR’, for which the plaintiff seeks
exclusivity has been written in a font that is different from that of the
defendants. Therefore, it cannot be said that there is a possibility of confusion
or deception being caused among the customers of the two products.
76. As noted above, the label/packaging adopted by the defendants is quite
distinct from the label of the plaintiff. In fact, in the plaint, it is the plaintiff
who has tried to adopt a packaging/label that has been used by the defendants
over several years in order to substantiate its claim of passing off and
copyright infringement.
77. In light of the comparison above, in my considered view, no case of
trademark infringement, copyright infringement or passing off has been made
out by the plaintiff in respect of its mark ‘DOCTOR BRAND PHENYLE’.
78. Now, I shall deal with the issue of trademark and copyright
infringement as well as the passing off in relation to the mark ‘DOCTOR
BRAND GERM TROLL’.
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Doctor Brand Germ Troll
Submissions of the plaintiff
79. It is the case of the plaintiff that the mark ‘DOCTOR BRAND GERM
TROLL’ was adopted in the year 1973 and is a distinctive and an original
coined mark. It was coined with the intention of conjuring the dual images of
catching germs as well as that of a monster, inimical to the existence of germs.
80. The plaintiff claims user of the aforesaid mark from the year 1973.
81. The plaintiff also claims copyright in the distinct label/trade dress
adopted by it in respect of the packaging of its product under ‘DOCTOR
BRAND GERM TROLL’. The said label constitutes an original artistic work
within the meaning of Section 2(c) of the Copyright Act, 1957. Photograph of
plaintiff’s product under the trademark ‘DOCTOR BRAND GERM TROLL’
has been exhibited as Exhibit PW1/9.
82. It is the case of the plaintiff that the defendants started using their mark
‘CHEMIST’ along with the mark ‘GERM TROLL’ in the year 2015 and
launched the product ‘CHEMIST BRAND GERM TROLL’ to ride upon the
goodwill and reputation of the plaintiff.
83. Even though the defendants claim user of the aforesaid marks since the
year 2000, no document in support of such user has been filed.
84. It is the case of the plaintiff that the defendants have adopted an
identical trade dress and label in a dishonest manner. The comparison of the
plaintiff’s bottle/label with the defendants’ bottle/label bearing the ‘GERM-
TROLL’ mark as filed by the plaintiff along with the plaint is set out below:
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Plaintiff's product Defendants' product
Submissions of the defendants
85. Per contra, the case set up by the defendants is that the term ‘GERM
TROLL’ belonged to the erstwhile partnership firm ‘Shri Gopal Engineering
and Chemical Works’. When the aforesaid firm was taken over by the
defendant no.1, the said mark stood transferred to the defendant no.1
company. Even after the dissolution of the said partnership firm, the defendant
no.1 continued the use of trademark ‘DOCTOR BRAND GERM-TROLL’ till
1996. Therefore, the plaintiff cannot claim any rights in the said mark. It is
also the case of the defendants that the term ‘GERM TROLL’ is a descriptive
word, which does not confer any exclusive right upon the plaintiff.
86. Once again it is the case of the defendants, like in the case of ‘DOCTOR
BRAND PHENYLE’, the plaintiff has fabricated the packaging used by it in
respect of ‘DOCTOR BRAND GERM TROLL’ as well. In the trademark
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application filed by the plaintiff on 14th June 1996, it had applied for
registration of ‘DOCTOR BRAND PHENYLE’ under class 5, and in the said
label had made an additional representation of ‘DOCTOR BRAND GERM
TROLL’. It is the case of the defendants that the bottle and packaging which
is the subject matter of the registration is entirely different from the one which
is being shown in the plaint. Defendants submit that they have been selling
their product ‘CHEMIST BRAND GERM TROLL’ since the year 2000 in the
following packaging:
Original labels of the defendant no.1’s products ‘CHEMIST BRAND
KHUSHBOO’ and ‘CHEMIST BRAND GERM TROLL’ have been
exhibited as Exhibit DW2/34.
87. To appreciate this submission, it may be useful to refer to the additional
representation made by the plaintiff in the trademark registration bearing no.
718807 in class 5. The same is set out below:
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88. It is the case of the defendants that the plaintiff has been aware about
the defendant no.1 company’s use of the trademark ‘CHEMIST BRAND
PHENYLE’ and ‘CHEMIST BRAND GERM TROLL’ and it’s label/
packaging at least since the year 2000. Hence, the present suit is hit by the
principles of laches, delay and acquiescence.
89. As per the defendants, there is no similarity between the packaging in
respect of which registration was sought by the plaintiff and the packaging
that is used by the defendants since the year 2000. Hence, no case for
infringement of copyright or passing off is made out.
Analysis
90. From the evidence on record, it emerges that the trademark ‘GERM
TROLL’ was adopted by the partnership firm, Shri Gopal Engineering and
Chemical Works. In this regard, reference may be made to the cross
examination of PW-1, wherein he has admitted that the mark ‘DOCTOR
BRAND GERM TROLL’ was adopted by the partnership firm ‘Shri Gopal
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Engineering and Chemical Works’ in the year 1973. The relevant extracts
from the cross examination are set out below:
“Q62. In which year the mark (Doctor Brand Germ Troll) was adopted
by the partnership firm Shri Gopal Engineering and Chemical Works?
Ans. 1973”
Thereafter, the said firm was taken over by the defendant no.1 company on
1st July 1994 along with its assets and liabilities. Reference may be made to
the Memorandum of Association filed on behalf of the defendants, which has
been exhibited as Exhibit PW1/D1.
91. No document has been filed by the plaintiff to show that any right was
conferred by the partnership firm upon the plaintiff company to use the
‘GERM TROLL’ mark. Hence, the plaintiff cannot claim any proprietary
rights over the said mark.
92. The marks used by the plaintiff and the defendants are entirely
different. The plaintiff uses the mark ‘DOCTOR BRAND GERM TROLL’,
whereas the defendants use the mark ‘CHEMIST BRAND GERM TROLL’.
Clearly, the distinctive part of the defendants’ mark is ‘CHEMIST’, which is
absent in the plaintiff’s mark. The mark ‘DOCTOR’ which the plaintiff claims
is the distinctive mark, is also absent in the defendants’ mark.
93. Another issue that comes up for consideration is whether the mark
‘GERM TROLL’ is a descriptive word and whether it can attain
distinctiveness in respect of the goods of the plaintiff, i.e. phenyle. By using
the term ‘GERM TROLL’, the plaintiff is seeking to highlight the positive
quality of its product that is ‘searching for/ catching germs’. This leaves no
doubt in my mind that the plaintiff is using the mark ‘GERM TROLL’ in a
descriptive manner.
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94. For the purposes of passing off and copyright infringement, a
comparison would have to be made between the label/bottle of plaintiff in
respect of which it made an additional representation and the label/bottle used
by the defendants.
Plaintiff’s products Defendants’ products
95. The comparison above would show that the two competing products
are quite distinct in terms of the colour scheme, shape as well as the font and
style. The colour scheme used by the plaintiff is blue, green and red, and that
of the defendants is primarily red and white. There are enough distinctive
features in the packaging of the defendants to distinguish it from that of the
plaintiff. In fact, the colour scheme of red and white as shown above has been
used by the defendants since the year 2000.
96. Therefore, neither a case of passing off nor a case of copyright
infringement has been made out in respect of the defendants’
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label/packaging/bottle bearing the mark ‘CHEMIST BRAND GERM
TROLL’.
97. In view of the discussion above, Issues no. 1, 2 and 3 are decided in
favour of the defendants and against the plaintiff.
Issue no. 4 – If the answers to issues nos. 1, 2 & 3 are in the affirmative,
whether plaintiff is entitled to rendition of accounts from the defendants? OPP
Issue no. 5 – Whether the plaintiff is entitled to damages? OPP
Issue no. 6 – Whether the plaintiff is entitled to delivery up of infringing
materials? OPP
Issue no. 7 – Whether the plaintiff is entitled to any further costs? OPP
98. In view of the findings given above in Issues no. 1, 2 and 3, the plaintiff
is not entitled to the reliefs sought under Issues no. 4, 5, 6 and 7.
99. Hence, Issues no. 4, 5, 6 and 7 are also decided in favour of the
defendants and against the plaintiff.
100. Even though no specific issue with regard to permanent injunction has
been framed, the plaintiff is not entitled to the relief of permanent injunction
against the defendants.
Issue no. 9 – Whether the suit is bad for mis-joinder for defendants? OPD
101. No evidence has been led by the defendants in this regard.
102. Hence, Issue no. 9 is decided in favour of the plaintiff and against the
defendants.
RELIEF
103. In view of the findings above, the present suit is returned to the plaintiff
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for want of territorial jurisdiction.
104. The pending application stands disposed of.
AMIT BANSAL
(JUDGE)
AUGUST 20, 2025
ds
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By:AANCHAL TAGGAR
Signing Date:20.08.2025
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