Delhi District Court
Anil Kumar Gera vs Anil Food Industries on 9 April, 2025
THE COURT OF MS NEHA PALIWAL SHARMA
DISTRICT JUDGE-03, CENTRAL DISTRICT,
TIS HAZARI COURTS, NEW DELHI
CNR No. DLCT01-000018-1992
TM No. 992/2016
CNR No. DLCT01-000019-2012
TM No. 924/2016
In the matter of :-
Sh. Anil Kumar Gera
Trading as Alka Food Industries
26, S.S.I., Laghu Udyog Nagar,
G.T. Karnal Road,
Delhi-110006
.....Plaintiff/ Non Counter-Claimant
VERSUS
Anil Food Industries
308/5, Shahzada Bagh,
Old Rohtak Road,
Delhi-110035
.....Defendant/ Counter-Claimant
Date of institution of main suit : 20.01.1992
Date of institution of counter claim : 24.02.1992
Reserved for Judgment : 02.04.2025
Date of decision : 09.04.2025
Appearance:
Sh. Prashant Sharma, Sh. Kunal Khanna and Ms. Vandana,
Ld. Counsels for plaintiff/ non counter claimant.
Sh. Shailen Bhatia, Sh. Amit Jain, Ashok Kumar Shukla and
Ms. Ishita Suri, Ld. Counsels for defendant/ counter claimant.
TM 992/2016 & TM 924/2016 Page No. 1 of 106
Digitally signed by NEHA
NEHA PALIWAL PALIWAL SHARMA
SHARMA Date: 2025.04.09 17:11:46
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SUIT FOR PERPETUAL INJUNCTION RESTRAINING
INFRINGEMENT OF COPYRIGHT, TRADE MARK, PASSING OFF,
RENDITION OF ACCOUNTS ETC. & COUNTER CLAIM FOR
PERMANENT INJUNCTION RESTRAINING INFRINGEMENT OF
TRADE MARK, PASSING OFF & RENDITION OF ACCOUNTS ETC.
JUDGMENT
(1) Vide this common judgment, this Court will dispose off two
cases viz. suit bearing TM No. 992/2016 filed by plaintiff Anil Kumar Gera
(initially Pritam Dass trading as Alka Food Industries) seeking perpetual
injunction restraining infringement of copyright, trade mark, passing off,
rendition of accounts etc. against the defendant and the Counter Claim
bearing TM No. 924/2016 filed by the defendant M/s. Anil Food Industries
seeking permanent injunction for restraining infringement of trade mark,
passing off and rendition of accounts etc. against the plaintiff/ non-counter
claimant.
(2) Succinctly put, the case of the plaintiff, as per the plaint, is that
the suit was instituted by Sh. Pritam Dass, in the capacity of Proprietor of
firm M/s. Alka Food Industries (after the death of Sh. Pritam Dass, his legal
heir Anil Kumar Gera has been duly substituted in his place being his legal
representative). It is averred in the plaint that the business of
manufacturing and marketing confectionary was started by the plaintiff in
the year 1977 and since then the plaintiff firm is engaged in the business of
manufacturing and marketing confectionary. The plaintiff has been selling
confectionary under various trade marks and is the lawful proprietor of
trade marks viz. ALKA, ZIKKY MIKKY, LAL ZEERA, BIBO, FRESHO,
NAWABI ZEERA, CHATAR MATAR, ANIL, SONI MONI,
TM 992/2016 & TM 924/2016 PageDigitally
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NEHA
NEHA PALIWAL PALIWAL SHARMA
SHARMA Date: 2025.04.09 17:11:55
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CHATMOLA, MANGO FUN, GINI MINI, TINI MINI/ TINY MINY,
ALKAS etc.
(3) It is further averred that the plaintiff was using trade mark TINI
MINI/ TINY MINY qua confectionary continuously and extensively since
1977 throughout the country. The plaintiff is also the true owner and
lawful proprietor of trade mark CHATMOLA qua confectionary. The said
trade mark was honestly and bonafidely adopted by the plaintiff in the year
1990 after making necessary inspection in the records of the Trade Marks
Registry and on being satisfied that there was no such trade mark registered
or pending registration. Further, no such or similar trade mark was in use
or existence in respect of the said goods when the plaintiff adopted the
same. He also filed an application bearing no. 539636 for registration of
trade mark CHATMOLA in his name on 08.11.1990 claiming use of the
mark since 01.11.1990 before the Trade Marks Registry. The plaintiff had
used the said trade mark CHATMOLA continuously, extensively and
regularly since 01.11.1990 to the knowledge of all concerned with the trade
including the defendant herein.
(4) It is further the case of the plaintiff that he has been selling and
marketing confectionary under the trade mark TINI MINI/ TINY MINY
under various distinctive packagings having various designs and thus,
there are different designs of packings under which the confectionary
known by the trade mark TINI MINI/ TINY MINY is sold. In the present
suit, the plaintiff is concerned with one of such packaging marked as ‘Mark
A’, filed along with the plaint, which is under the copyright ownership of
the plaintiff under the provisions of Copyright Act. The colour scheme,
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design, get-up, layout, placement and arrangement of the said packing
titled TINI MINI/ TINY MINY is unique and artistic.
(5) It is further the case of the plaintiff that his trade marks
CHATMOLA and TINI MINI/ TINY MINY (particular packing) have
acquired enviable goodwill and impeccable trade reputation and have
become distinctive of the said goods of the plaintiff on account of efforts of
the plaintiff to popularize them amongst public and trade via sales
promotion propaganda, on account of superior quality of goods coupled
with continuous and extensive use and extensive sales of the said goods.
(6) It is further the case of the plaintiff that the defendant is also
engaged in the same business of manufacturing and marketing of
confectionary and is fully aware of the business activities of the plaintiff
under the various trade marks including trade mark CHATMOLA and
design of TINI MINI/ TINY MINY. The defendants have started
manufacturing or marketing of confectionary under identical and/ or
deceptively similar trade mark CHATMOLA, which is in clear violation of
the plaintiff’s legal and vested rights in the exclusive use of the trade mark
CHATMOLA. The defendants have also adopted identical and/ or
deceptively similar design, colour scheme, lay-out, design of packing as
that of TINI MINI/ TINY MINY of the plaintiff, which amounts to
infringement of plaintiff’s aforesaid copyright.
(7) It is, thus, the case of the plaintiff that the defendants have acted
very cleverly and imitated one trade mark of the plaintiff, that is,
CHATMOLA and design of another packing of the plaintiff, that is, TINI
MINI/ TINY MINY giving a clear impression to the unwary and innocent
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NEHA PALIWAL PALIWAL SHARMA
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purchasers that their goods emanate from the plaintiff only. The
defendants have no right or justification for adoption and/ or use of the
impugned trade mark CHATMOLA and design of TINI MINI/ TINY
MINY confectionary of the plaintiff. The adoption and use of the same by
the defendant is absolutely dishonest and malafide and is ill motivated to
deceive and cheat the unwary and innocent purchasers to purchase the
spurious goods of the defendant in place of superior quality goods of the
plaintiff. By this, the defendant wants to trade upon and benefit from the
hard earned goodwill and reputation of the plaintiff and to earn profits in
illegal manner, for which they are not entitled under the law. The
confusion and deception among the public and trade is inevitable due to
close deceptive similarity of trade marks and packing. The defendants are
guilty of passing off their inferior quality confectionary as and for the
superior quality confectionary of the plaintiff. On account of defendant’s
unlawful and unjust trade activities, the plaintiff had suffered damages to
his well known established trade and reputation. Further damages to the
trade and reputation are inevitable unless the defendants are restrained
immediately by an order of injunction from infringing the copyrights of the
plaintiff in the packing TINI MINI/ TINY MINY and from violating the
vested and legal rights of the plaintiff in the trade mark CHATMOLA.
Pecuniary compensation will not afford the plaintiff adequate relief. The
defendants being guilty of infringement of copyright and also passing off
their inferior and sub-standard confectionary as and for the superior
confectionary of the plaintiff, are liable to render their accounts of profits
earned by them on the basis of sales of confectionary under the impugned
trade mark and pouch CHATMOLA till the time an order/ decree for
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NEHA PALIWAL PALIWAL SHARMA
SHARMA Date: 2025.04.09 17:13:13
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injunction is passed against them. The plaintiff had valued the suit for
rendition of accounts to the tune of Rs.50,000/- and had undertaken to pay
additional court fee when the exact amount due from the defendant is
ascertained on rendition of accounts.
(8) Thus, the plaintiff had prayed that a decree of perpetual
injunction be passed in its favour and against the defendant, thereby
restraining the defendant, its servants, agents, dealers, distributors,
stockists, representatives and all other persons on its behalf from
manufacturing, marketing, selling, stocking, offering for sale or otherwise
dealing in confectionary under the trade mark CHATMOLA or any other
trade mark which may be identical and/ or deceptively similar to the
plaintiff’s trade mark CHATMOLA and also from infringing the plaintiff’s
copyright by printing, publishing, using, reproducing or otherwise dealing
in the pouches/ packing materials titled CHATMOLA or any other packing
materials identical and/ or deceptively similar to the packing material TINI
MINI/ TINY MINY of the plaintiff.
(9) It is further prayed that a decree of perpetual injunction be
passed in favour of the plaintiff and against the defendant thereby
restraining the defendant, its servants, agents, dealers, distributors,
stockists, representatives and all other persons on its behalf from passing
off its confectionary as and for that of the plaintiff by using the impugned
trade mark or packing CHATMOLA or any other trade mark of packing
with may be identical and /or deceptively similar to the plaintiffs trade
mark CHATMOLA or packing TINI MINI/ TINY MINY.
TM 992/2016 & TM 924/2016 Page No. 6 of 106 Digitally signed by NEHA NEHA PALIWAL PALIWAL SHARMA SHARMA Date: 2025.04.09 17:13:21 +0530 (10) It is further prayed by the plaintiff that decree be passed in his
favour and against the defendant for delivery upon affidavit by the
defendant to the plaintiff of all the offending, infringing, counterfeiting
labels, pouches, stickers, packing materials, processing cylinders, blocks
and other finished and unfinished goods and other incriminating materials
bearing the trade mark or label CHATMOLA under the possession and/ or
control of the defendant for destruction and/ or erasure purposes. It is also
prayed that a decree be passed in favour of the plaintiff and against the
defendant for rendition of accounts of profits earned by the defendant on
the sales of confectionary under the trade mark or pouch CHATMOLA and
a decree for amount so found due on rendition of accounts be passed.
(11) Summons for settlement of issues was sent to the defendant.
The defendant had filed written statement along with counter claim before
the Court. Thereafter, the defendant was allowed to amend its written
statement and counter claim. The case of the defendant, as per the
amended written statement, is that at the time of filing of the suit, the
defendant was a partnership firm but thereafter since April 1995, it
converted into a sole proprietorship firm and Sh. Ramesh Chander is the
sole proprietor of the defendant firm. It is further averred that the
defendant has been carrying on its business of manufacturing and
marketing of confectionary goods since 1972, under the trade mark ANIL.
The defendant in the course of its business, during August 1990, adopted
trade mark CHATMOLA in respect of confectionary goods for the first
time and invented an artistic device of label for the aforesaid trade mark
during the same month. It made vigorous efforts to bring the products into
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NEHA PALIWAL PALIWAL SHARMA
SHARMA Date: 2025.04.09 17:13:29
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the market for sale soon, but the entire job of getting proper die, colour-
scheme design, label’s get-up, lay-out, rotogravier printing etc. took few
months time and the defendant was able to bring the actual product for sale
in the market only in the month of January 1991 under the trade mark
CHATMOLA. The defendant is the exclusive and lawful proprietor of the
said trade mark in respect of confectionary goods.
(12) It is further the case of the defendant that in order to popularize
the products under the trade mark CHATMOLA, it had advertised the same
through various medias viz. newspapers, magazines, stickers, video-
cassettes, sign-boards, hoardings, stepny covers and tanglers and had
thereby invested substantial amount on advertising. It is further averred
that on account of superior quality of the products and due to continuous
and extensive use coupled with large scale advertisement and publicity, the
said trade mark of the defendant had acquired unique reputation and
enviable goodwill in the public and the trade and the said goods of the
defendant under the trade mark CHATMOLA are exclusively identified
and associated by the trade and public to have emanated from the
defendant only throughout India.
(13) It is further averred that in the month of August 1991, both the
plaintiff and the defendant got their goods advertised through video
cassette of PARTIKAR, wherein the confectionary product of the
defendant was shown under the trade mark CHATMOLA and the plaintiff’s
advertisement was there with respect to their trade mark HANGAMA.
Thus, it is evident that plaintiff had full knowledge in respect of the user of
trade mark CHATMOLA by the defendant.
TM 992/2016 & TM 924/2016 Page No. 8 of 106 Digitally signed by NEHA NEHA PALIWAL PALIWAL SHARMA SHARMA Date: 2025.04.09 17:13:48 +0530 (14) It is further the case of the defendant that a caution notice dated
11.11.1991 was got issued by it through its counsel, which was published
in the newspaper ‘Sandhya Times’ on 07.12.1991 in respect of its
confectionary goods under the trade mark CHATMOLA, of which also the
plaintiff had full knowledge. The plaintiff knowing fully well that the
defendant is the lawful proprietor of trade mark CHATMOLA since August
1990 for confectionary goods, dishonestly, wrongly, illegally, malafidely
applied for registration of the said trade mark CHATMOLA with the
Registrar of Trade Marks, New Delhi under the Trade & Merchandise
Marks Act, 1958 on 08.11.1990, wrongly claiming the user of the said trade
mark since 01.11.1990 and the said action of the plaintiff was with the aim
to trade upon the goodwill and reputation of the defendant illegally and
with the ulterior motive of earning illegal money through this easy way.
(15) Preliminary objections were raised by the defendant in the
written statement to the effect that the suit of the plaintiff is false, vexatious
and frivolous and is not properly valued for the purpose of Court fees and
jurisdiction. The suit is further bad for mis-joinder of causes of action as
the plaintiff had claimed infringement/ passing off of both trade mark and
copyright in one suit.
(16) It is further averred that the plaintiff had preferred two
applications for registration of trade mark bearing no. 539636 B in class 30
and 540086 B in class 5 and the defendant had filed oppositions against the
said applications. Vide order dated 04.03.1999 the Ld. Registrar of Trade
Marks allowed the oppositions of the defendant. Further, the defendant
also filed an application no. 557320 in class 30 for the trade mark
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NEHA PALIWAL PALIWAL SHARMA
SHARMA Date: 2025.04.09 17:13:56
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CHATMOLA to which the present plaintiff had preferred an opposition.
Vide order dated 28.11.2003, the opposition filed by the plaintiff was
dismissed by the Ld. Registrar of Trade Marks and the said order had
attained finality between the parties. The Registrar of Trade Marks had
issued registration certificate to the defendant under no. 557320 in class 30
and now the defendant is the registered proprietor of trade mark
CHATMOLA. The said trade mark registration is valid and subsisting in
favour of the defendant.
(17) It is further averred by the defendant that the plaintiff had
claimed Copyright in the artistic work TINY MINY against which the
defendant had preferred a cancellation petition. The Hon’ble Copyright
Board had allowed the application for cancellation and had ordered that the
artistic work entered in the Register of Copyright under no. A-51887/92 be
expunged. An appeal is pending against the said order.
(18) It is further averred that the defendant is holding copyright
registration of artistic work CHATMOLA vide registration nos.
A-57086/99 and A-65448/2003. The entries in the Register of Copyright
are primafacie evidence of the defendant’s proprietorship of the artistic
work.
(19) In its reply on merits, the defendant had categorically denied
each and every contention of the plaintiff. The defendant had further
denied the documents filed by the plaintiff along with the plaint. It is
specifically averred that the photocopies of the alleged invoices filed by the
plaintiff are fabricated. It is alleged that photocopy of invoice bearing no.
2242 dated 14.12.1990 for Rs.4,104.90p issued in favour of M/s. Batra
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NEHA PALIWAL PALIWAL SHARMA
SHARMA Date: 2025.04.09 17:14:02
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Stores is a false and fabricated invoice as the proprietor of M/s. Batra Store,
is the relative of the plaintiff. Another invoice relied upon by the plaintiff,
issued to M/s. Isher Singh Jeet Singh wherein the plaintiff had shown the
sale of confectionary under the trade mark CHATMOLA, is again false and
fabricated and product under trade mark CHATMOLA was not sold by the
plaintiff to M/s. Isher Singh Jeet Singh and the dealers of M/s. Isher Singh
Jeet Singh can depose with respect to the same. It is averred that M/s. Isher
Singh Jeet Singh are the dealers of both the plaintiff and the defendant and
they have categorically denied having purchased any confectionary items
from the plaintiff under the trade mark CHATMOLA. It is averred that the
plaintiff had fabricated all the bills and invoices malafidely and
dishonestly.
(20) It is further the case of the defendant that earlier the plaintiff was
using mark ‘CHATAR MATAR’ in respect of confectionary goods and
thereafter changed the same to CHATMOLA with ulterior object of trading
upon the goodwill and reputation of the defendant, which was acquired by
the defendant after spending lot of money on advertisement and publicity
in respect of their trade mark CHATMOLA and further with the illegal
motive of earning easy money and passing off their inferior and sub-
standard products for and as of the defendant’s quality goods. In fact, the
plaintiff is liable to be punished for infringement and passing off of trade
mark and infringement of Copyright in respect of mark CHATMOLA of
the defendant in respect of confectionary goods adopted by the defendant
in August 1990 much earlier to the imitation of the trade mark by the
plaintiff. Further, the design and colour-scheme of label TINY MINY of
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NEHA PALIWAL PALIWAL SHARMA
SHARMA Date: 2025.04.09 17:14:11
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the plaintiff is subsequent adoption than adoption of label CHATMOLA by
the defendant. It is admitted that purchasers/ intending purchasers of
goods are mostly children and unwary class of purchasers who demand
and recognize the goods by trade mark CHATMOLA and design of
packing of confectionary. Thus, it was prayed that the suit of the plaintiff
be dismissed.
(21) The defendant had also filed Counter Claim against the plaintiff
under Order VIII Rule 6(A) CPC seeking relief of permanent injunction for
restraining infringement of trade mark, passing off and rendition of
accounts etc.
(22) An amendment application seeking change in the constitution of
the defendant/ counter claimant firm from sole proprietorship to
partnership, was moved before the Court and the same was allowed vide
order dated 02.12.2023 and the amended counter claim was taken on
record. It was averred in the amended counter claim that initially
defendant firm M/s. Anil Food Industries was a partnership firm consisting
of Sh. Ramesh Chander and Smt. Kaushalya Devi. Since 1995 it became
the sole proprietorship of Sh. Ramesh Chander and with effect from
23.08.2023 it had again become a partnership firm comprising of Sh.
Ramesh Chander Gera and Sh. Rajat Gera as its partners.
(23) In the counter-claim the defendant had reiterated the assertions
as stated in the written statement. It is further averred by the defendant that
post adoption of trade mark CHATMOLA in the month of August 1990 and
thereafter introducing and actually selling the goods in market since
January 1991 and on account of continuous, open, extensive and regular
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NEHA PALIWAL PALIWAL SHARMA
SHARMA Date: 2025.04.09 17:14:19
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use of the said trade mark, the goods bearing trade mark CHATMOLA and
pouch CHATMOLA having been practically distributed in all parts of
country, the trade mark has become distinctive and associated with the
aforesaid goods of the defendant and the defendant had built-up a valuable
trade under the said trade mark. Post application of defendant seeking
registration of trade mark claiming user since 08.01.1991, the Registrar of
Trade Marks had issued registration certificate to the defendant under no.
557320 in class 30 and defendant is now the registered proprietor of trade
mark ‘CHATMOLA’ which is valid and subsisting in favour of the
defendant. Thus, the defendant has a right to seek remedy of infringement
against the plaintiff or any other person who violates the statutory right of
the defendant. The defendant’s business had acquired goodwill and
enviable reputation in the market under the said trade mark ‘CHATMOLA’
and had used the same exclusively and to the exclusion of others.
(24) It is further the case of the defendant/ counter-claimant that the
plaintiff claims to be the proprietor of trade mark ‘CHATMOLA’ in respect
of confectionary goods and further claims user since 01.11.1990. The
defendant had come to know from market inquiry that the plaintiff had
malafidely copied the trade mark ‘CHATMOLA’ of the defendant and had
substituted the same in place of their mark ‘CHATAR MATAR’. The
plaintiff had also mischievously copied the artistic design of the label/
pouch ‘CHATMOLA’ and started using the same in their label/ pouch as
‘TINI MINI/ TINY MINY’ with a view to take advantage and to trade upon
the goodwill and reputation of the defendant and further with a view to
cause deception and confusion in the market and to pass of its spurious
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NEHA PALIWAL PALIWAL SHARMA
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goods as that of the defendant’s. The plaintiff is not the proprietor of trade
mark ‘CHATMOLA’ and also pouch ‘CHATMOLA’ in respect of the
confectionary goods and the trade mark adopted and copied by it is
identical with and deceptively similar to the goods of the defendant. The
unwary purchasers are bound to be deceived in purchasing plaintiff’s
goods under the impression that they are emanating from the defendant’s
source. The plaintiff adopted the said trade mark to flourish on the
goodwill and enviable reputation of the defendant and had all along known
that the defendant was using the said trade mark. Thus, the plaintiff is
passing off its spurious goods of sub-standard quality as that of the genuine
goods of the defendant and both the public and the defendant are bound to
suffer due to activities of the plaintiff. On account of omissions and
commissions committed by the plaintiff, an irreparable loss and injury is
caused to the defendant in terms of money and reputation and thus, the
plaintiff is liable to be restrained from using the trade mark ‘CHATMOLA’
or any other trade mark which is confusingly similar to the defendant’s
trade mark ‘CHATMOLA’.
(25) Thus, the defendant/ counter-claimant had prayed that a decree
for perpetual injunction be passed in its favour and against the plaintiff,
thereby restraining the plaintiff, its servants, agents, dealers, distributors,
stockists, representatives and all other persons on its behalf from
manufacturing, marketing, selling, stocking, offering for sale, or otherwise
dealing in confectionary goods under the trade mark ‘CHATMOLA’ or any
other trade mark which may be identical and/ or deceptively similar to the
defendant’s trade mark ‘CHATMOLA’ and also from infringing the
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NEHA PALIWAL PALIWAL SHARMA
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defendant’s copyrights by printing, publishing, using, reproducing or
otherwise dealing in the pouches/ packing materials titled ‘CHATMOLA’
or any other packing material identical and/ or deceptively similar to the
packing material of the defendant.
(26) It is further prayed by the defendant/ counter-claimant that a
decree for permanent injunction be passed in its favour and against the
plaintiff, thereby restraining the plaintiff, its proprietor/ partners, as the
case may be, its servants, agents, dealers, distributors and all others acting
for and on its behalf from manufacturing, exporting, selling, offering for
sale, advertising, exhibiting, directly or indirectly dealing in confectionary
goods under the artistic work CHATMOLA or any other artistic work
which is identical or similar to artistic work no. A-57086/99 and
A-65448/2003 and also from dealing in confectionary goods under the
registered trade mark CHATMOLA or any other identical/ deceptively
similar mark resulting in infringement of registered trade mark
CHATMOLA under no. 557320 in class 30.
(27) The defendant/ counter-claimant further prayed that a decree for
perpetual injunction be passed in its favour and against the plaintiff thereby
restraining the plaintiff, its agents, servants, dealers, distributors, stockists,
representatives and all other persons on its behalf from passing off their
confectionary as that of the defendant by using the impugned trade mark or
packing ‘CHATMOLA’ or any other trade mark or packing which may be
identical and/ or deceptively similar to the defendant’s trade mark
CHATMOLA or packing CHATMOLA.
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(28) The defendant/ counter-claimant also prayed that a decree be
passed in its favour and against the plaintiff for delivery upon affidavit by
the plaintiff to the defendant of all the offending, infringing, counterfeiting
labels, pouches, stickers, packing materials, processing cylinders, blocks
and other finished and unfinished goods and other incriminating materials
bearing the trade mark or label/ pouch CHATMOLA under the possession
and/ or control of the defendants for destruction and/ or erasure purposes. It
is also prayed that a decree be passed in favour of the defendant/ counter
claimants and against the plaintiff for rendition of accounts of profits
earned by the plaintiff on the sales of confectionary under the trade mark or
pouch CHATMOLA and a decree for amount so found due on rendition of
accounts be passed.
(29) Written statement was filed by the plaintiff/ non counter-
claimant to the amended counter claim of the defendant wherein
preliminary objections were taken that the counter claim of the defendant is
not maintainable as the same is containing false, fabricated and baseless
averments, the same is further bad for misjoinder of causes of action, that
is, trade mark and copyright infringement, and further the counter claim is
not properly valued for the purpose of Court fees and jurisdiction.
(30) In his reply on merits, the plaintiff/ non counter-claimant had
specifically denied each and every contention as raised by the counter-
claimant. It is the case of the plaintiff/ non counter-claimant that ANIL is
not the trade mark of the defendant/ counter claimant and was initially
adopted and is the exclusive property of the plaintiff.
TM 992/2016 & TM 924/2016 Page No. 16 of 106 Digitally signed by NEHA NEHA PALIWAL PALIWAL SHARMA SHARMA Date: 2025.04.09 17:14:53 +0530 (31) It is further averred by the plaintiff/ non counter claimant that the
defendant/ counter-claimant has no documentary evidence to prove the
alleged adoption of the trade mark CHATMOLA in August 1990 and in
order to base the alleged false claim of adoption, the defendant had filed a
false affidavit of Sh. Baldev Singh on record and as per the knowledge of
plaintiff, there is no such person who is an artist by the name of Sh. Baldev
Singh. The plaintiff is the owner of copyright in the artistic carton TINI
MINI/ TINY MINY which has been in continuous use since the year 1988
to the knowledge of the defendant. The defendant cannot take any benefit
of the registration which is based on fabricated documents and is illegal
under the statute. The plaintiff is the first adopter, prior user and true owner
of the said trade mark CHATMOLA, which was adopted by the plaintiff in
July 1990 and put to use on 01.11.1990. The defendant after coming to
know the use of trade mark CHATMOLA by the plaintiff, adopted the same
in a clever manner while simultaneously imitating the carton TINI MINI/
TINY MINY of the plaintiff. The very adoption of the trade mark and
pouch CHATMOLA by the defendant is dishonest and malafide. The
defendant is subsequent in adopting, using or filing counter claim for
registration of trade mark CHATMOLA and the plaintiff is prior in all
respects. The registration of trade mark CHATMOLA in the name of the
defendant is invalid and is in contravention of law and rights of the
plaintiff. The usage and sales of the defendant, if any, are subsequent to the
plaintiff’s adoption and usage of the mark and therefore, are of no
consequence.
TM 992/2016 & TM 924/2016 Page No. 17 of 106 Digitally signed by NEHA NEHA PALIWAL PALIWAL SHARMA SHARMA Date: 2025.04.09 17:15:04 +0530 (32) It is further the case of the plaintiff/ non counter-claimant that
trade mark CHATAR MATAR is another reputed trade mark of the
plaintiff. Since the pouch CHATAR MATAR had become exclusively
associated with the plaintiff by virtue of long and continuous user and had
acquired tremendous reputation, the plaintiff introduced the new trade
mark CHATMOLA in the same pouch in order to cash upon the goodwill
already attached to the pouch of CHATAR MATAR. The defendant had
copied the well known design of carton TINI MINI/ TINY MINY of the
plaintiff which had been in continuous use since the year 1988. The
defendant is guilty of passing off and had caused irreparable loss and injury
in terms of money and reputation, to the plaintiff. Thus, it is prayed that the
counter-claim be dismissed.
(33) The plaintiff had further filed replication to the amended written
statement of the defendant wherein he had denied each and every averment
of the defendant as stated in the written statement and had reiterated his
averments as stated in the plaint. It is further averred that the trade mark
HANGAMA belongs to a sister concern of the plaintiff and was advertised
by the said sister concern in video cassette of PRATIKAR but the plaintiff
never saw that advertisement in cassette. The plaintiff is not aware if the
defendant also advertised trade mark CHATMOLA in the said cassette and
came to know about the sale of confectionary of the defendant under the
impugned trade mark CHATMOLA in December 1991 only. The plaintiff
filed application for registration of his trade mark CHATMOLA on
08.11.1990 honestly much before the alleged application or user of the
trade mark by the defendant. Various orders obtained by the defendant on
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the basis of forged documents have not attained finality and hence, are
neither binding upon the plaintiff nor upon this Court. The registration of
trade mark CHATMOLA in the name of the defendant is invalid and is in
contravention of law and rights of the plaintiff. The plaintiff is entitled to
file application for cancellation of the said trade mark before the authorities
and appeal is also pending. The plaintiff adopted the trade mark
CHATMOLA in July 1990 and put the same to use in November 1990
much before the alleged adoption and user of the impugned trade mark by
the defendant. He did not launch the same during July to October 1990 as
he was advised that November in an auspicious month for launching new
product. Bill no. 2242 was issued in favour of Batra Stores which happens
to be the firm of the relative of the plaintiff, but the said firm regularly
purchases the confectionary of the plaintiff and the bill was issued to them
for one such purchase in course of business and therefore, is genuine and is
duly entered in the books of account of the plaintiff. Further, the defendant
had threatened M/s. Isher Singh Jeet Singh of dire consequences asking
them to swear false affidavit to the tune that plaintiff never supplied
confectionary to them under the impugned trade mark. CHATAR MATAR
and CHATMOLA are two distinct trade marks of the plaintiff. In July 1990
when plaintiff adopted trade mark CHATMOLA he had asked M/s. Vikas
Laminator Pvt. Ltd., Noida to print trade mark CHATMOLA in the same
design as CHATAR MATAR. The said M/s. Vikas Laminator Pvt. Ltd. in-
turn asked Sh. Vidya Bhushan of M/s. Vinny Graphics 1/3, East Patel
Nagar, New Delhi to utilize the art work of CHATAR MATAR and insert in
it the new trade mark CHATMOLA. It was done and the same was at last
introduced in November 1990 in the market by the plaintiff. Thus, it is
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prayed that the suit be decreed.
(34) Vide order dated 20.01.1992, the Ld. Predecessor of this Court
on the application of the plaintiff under Order XXXIX Rule 1 and 2 CPC
had passed an exparte order restraining the defendant from manufacturing,
marketing, selling or offering for sale or otherwise dealing in confectionary
under the trade mark CHATMOLA or any other trade mark which may be
identical or deceptively similar to the plaintiff’s trade mark CHATMOLA.
Further, vide the same order the application moved by the plaintiff under
Order XXVI CPC for appointment of Local Commissioner was allowed
and Sh. Om Prakash Advocate was appointed as Ld. Local Commissioner
to conduct the search and inspection of the premises of the defendant and
make inventory of the confectionary stock finished and unfinished under
the trade mark CHATMOLA and also of empty packing material
containing the trade mark with further directions to lift the infringing
samples under the trade mark CHATMOLA. It was further directed that
the Ld. Local Commissioner may also sign the stock books and bill books
of the defendant in that regard.
(35) Vide order dated 24.04.1992, the said exparte injunction order
granted on 20.01.1992 was vacated and the application of the defendant
under Order XXXIX Rule 4 CPC was allowed. Vide further order dated
08.07.1992 the application of the defendant under Order XXXIX Rule 1
and 2 CPC was allowed and the plaintiff was restrained from using the
mark CHATMOLA and marketing the same in pouch C during the
pendency of the suit. An appeal was filed before the Hon’ble High Court of
Delhi against order dated 24.04.1992 and order dated 08.07.1992, which
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was dismissed vide order dated 11.10.1995.
(36) An application was also filed by the plaintiff seeking amendment
in the plaint on 01.12.1995, however, the said amendment application was
dismissed vide order dated 16.09.1998. A revision was preferred by the
plaintiff before the Hon’ble High Court of Delhi which was dismissed vide
order dated 27.04.2004.
(37) Initially the main suit was filed by plaintiff Sh. Pritam Dass,
however, he expired on 21.01.2009 and thereafter his legal heirs were
impleaded on record as LRs of the plaintiff/ non counter claimant vide
order dated 23.07.2009. However, later on an application under Order
XXII Rule 10 and Section 151 CPC was moved by one of the legal heirs of
original plaintiff, namely, Sh. Anil Kumar, praying that only he may be
allowed to prosecute the suit as the plaintiff. The said application was
allowed by the Ld. Predecessor of this Court vide order dated 03.03.2011
and Sh. Anil Kumar was allowed to solely prosecute as the plaintiff.
(38) After perusal of the pleadings of both the parties initially issues
were framed on 29.09.2004 by the learned Predecessor of this Court for
trial, namely:-
1. Whether the plaintiff is owner of the trade mark
‘CHATMOLA’ having priority of use? OPP
2. Whether the defendants are passing off their goods as that of
the plaintiff? OPP
3. Whether the plaintiffs are entitled to the relief of injunction
and rendition of accounts? OPPTM 992/2016 & TM 924/2016 Page No. 21 of 106
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4. Whether the defendants are entitled to rendition of accounts
as claimed in the counter claim? OPD
5. Relief.
(39) However, later on an application under Order XIV Rule 5 CPC
was moved by the plaintiff, which was allowed by the Ld. Predecessor of
this Court vide order dated 08.02.2005 and additional issue bearing issue
no.1A was framed as under:
1A. Whether the plaintiff is the owner of the design and had
copyrights in the artistic cartoon TINI MINI/ TINY MINY since
the year 1988? OPP(40) Thereafter, application under Order XIV Rule 5 CPC was moved
on behalf of the defendant for striking of the additional issue framed on
08.02.2005 which was dismissed by the Ld. Predecessor of this Court vide
order dated 10.11.2005. Another application under Order XIV Rule 5 CPC
was moved by the defendant seeking amendment in issues which was
allowed vide order dated 28.04.2006 whereby issue no.4 was amended and
three more additional issues were framed. Thus, following issues were
framed for adjudication vide order dated 28.04.2006:
1. Whether the plaintiff is owner of the trade mark
‘CHATMOLA’ having priority of use? OPP
2. Whether the defendants are passing off their goods as that of
the plaintiff? OPPTM 992/2016 & TM 924/2016 Page No. 22 of 106
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3. Whether the plaintiffs are entitled to the relief of injunction
and rendition of accounts? OPP
4. Whether defendants are entitled to relief of injunction and
rendition of accounts as claimed in the counter claim? OPD
5. Whether the plaintiff is the owner of the design and has
copyright in the artistic cartoon Tini Mini/ Tiny Miny since
the year 1988? OPP
6. Whether the defendant is the first and prior adopter/ user of
the trade mark ‘CHATMOLA’ and other trade marks such as
‘CHATBOLS’? OPD
7. Whether the plaintiff is passing off their goods as that of
defendant? OPD
8. Whether the defendant is holding rights in the label consisting
of device of baby elephant and other distinctive features?
OPD
9. Relief.
(41) Thereafter an application under Order VI Rule 17 CPC was
moved on behalf of the defendants seeking permission to amend the
written statement and counter claim, which was allowed by the Ld.
Predecessor of this Court vide order dated 05.05.2007. The plaintiff was
directed to file the copy of Will of his late father, however, it was stated on
his behalf that he was not able to trace out the Will dated 20.12.2007 of his
father. It was held by the Court vide order dated 03.03.2012 that non
production of Will, will not cast any cloud over order dated 03.03.2011
vide which the application under Order XXII Rule 10 CPC moved on
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behalf of LR Anil Kumar Gera of the plaintiff was allowed.
(42) Further, vide the same order dated 03.03.2012 the Ld.
Predecessor of this Court allowed the application of the defendant under
Order VI Rule 17 CPC and allowed the defendant to amend the written
statement and counter claim whereby the defendant sought to introduce the
relief of injunction on the ground of infringement of trade mark
CHATMOLA registered under no. 557320 in class 30. Pursuant to the
amendments in the written statement and counter claim, vide order dated
20.04.2012, issue no.6 as framed on 28.04.2006 was amended and an
additional issue, that is, issue no.10 was framed, as under:
6. Whether the defendant is the first and prior adopter/
user of the trade mark ‘CHATMOLA’? OPD
10. Whether the defendant is the registered proprietor of
the trade mark ‘CHATMOLA’ under no. 557320 in class 30
and the registration is valid and subsisting? OPD(43) It was also observed vide order dated 20.04.2012 that though
reference has been made to other trade marks in the pleadings by the
parties, the said reference except CHATMOLA shall have no bearing on
the cases at hand or other cases, if any, pending between the parties.
(44) Further, vide order dated 29.09.2012 of Ld. Predecessor of this
Court, the counter claim was directed to be registered separately as a suit
but the said counter claim was consolidated with the main suit and it was
held that all the proceedings, evidence, order etc. recorded in the main case
shall be read in the counter claim as well. An application under Section
151 CPC was also moved on behalf of the plaintiff seeking stay of the
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proceedings in view of the opposition proceedings pending before the Ld.
Registrar of Copyright Act under the directions of Hon’ble Division Bench
of Hon’ble High Court of Delhi. However, the said application was
dismissed vide order dated 27.03.2019.
(45) The copyright registrations no. A65448/2003 dated 20.10.2003
and no. A57086/1999 dated 08.12.1999 registered in favour of the
defendant were challenged by the plaintiff before the Hon’ble High Court
of Delhi under Section 50 of the Copyright Act. It was held by the Hon’ble
High Court of Delhi vide order dated 02.05.2024 that the impugned
copyrights registered as no. A65448/2003 dated 20.10.2003 and no.
A57086/1999 dated 08.12.1999 in favour of the defendant would be
treated as revoked/ canceled. The original applications filed by the
defendant seeking registration of the copyright in the afore-noted artistic
works/ labels would be treated as revived.
(46) At the stage of plaintiff’s evidence, the plaintiff had examined as
many as six witnesses. The initial plaintiff, namely, Sh. Pritam Dass had
filed his evidence by way of affidavit and had tendered the same in his
examination in chief on 27.04.2005. However, he expired and thereafter
his LR Sh. Anil Kumar Gera examined himself as PW1.
(47) PW1 had tendered his evidence by way of affidavit, Ex.PW1/A
and had reiterated the contents of the plaint in his affidavit. He had further
deposed that he is the sole proprietor of firm M/s. Alka Food Industries and
as he has been assisting his father late Sh. Pritam Dass since 1984-85, he
has complete knowledge of the facts of the case. He had deposed that trade
mark TINY MINY is registered under no. 377890 in class-30 in respect of
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confectionery from 02.07.1981 and had placed reliance upon the certificate
of registration Ex.PW1/1, however, the plaintiff was not allowed to amend
pleadings with respect to the said registration and this averment was not
taken on record and therefore, Ex.PW1/1 cannot be looked into at the stage
of evidence. Similarly, he had relied as Ex.PW1/2 (colly) the copy of
representation sheet and the trade mark journal, however, again the
pleadings with respect to advertisement in the trade mark journal were not
taken on record and therefore, except copy of representation sheet which is
part of Ex.PW1/2 (colly) other documents cannot be considered. He had
further deposed with respect to the associated trade mark CHATAR
MATAR, however, again the said pleadings were also not taken on record.
Similarly, the registration of packing label TINY MINY with Registrar of
Copyrights was not taken on record. He had further deposed that the trade
mark CHATMOLA was honestly and bonafidely adopted by the plaintiff in
July 1990.
(48) Besides the above referred documents, PW1 had relied upon the
following documents in his evidence by way of affidavit:
1. Bills dated 13.11.1990, 05.12.1990, 14.12.1990,
22.01.1991 and 25.01.1991, Ex.PW1/3 to Ex.PW1/7.
2. Carbon copies of three bills dated 03.05.1991, Ex.PW1/8 to
Ex.PW1/10.
3. Bills dated 26.06.1991, 13.07.1991, 07.08.1991,
19.08.1991 and 19.10.1991, Ex.PW1/11 to Ex.PW1/15.
4. Labels of trade mark TINI MINI/ TINY MINI, Ex.PW1/16
(colly).
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5. Packing/ label of TINI MINI/ TINY MINY (under dispute
in the present matter), Ex.PW1/17.
6. Affidavit of design artist Sh. Vidya Bhushan, Ex.PW1/18.
7. Bills dated 08.09.1990 and 16.12.1991, Ex.PW1/19 and
Ex.PW1/20.
8. Bill dated 31.08.1988 of Ankur Advertising and Marketing
for designing of trade mark label TINI MINI/ TINY MINY
(Ex.PW1/17), Ex.PW1/20-A.
9. Postal receipt, carbon copy of the letter sent by the plaintiff
to Vijay Advertisers and the envelope received back,
Ex.PW1/21 (it was observed that the plaintiff had not filed
the original postal receipt pertaining to letter Ex.PW1/21).
(49) PW1 was cross examined at length by Ld. Counsel for the
defendant. He, in his cross-examination, had deposed that firm Alka Food
Industries was established in the year 1977 by his father Sh. Pritam Dass.
The trade mark TINI MINI/ TINY MINY was used by his father with both
the spellings and with various packagings. The trade mark TINI MINI was
registered and the registration was of word mark having spelling TINI
MINI and not for any label as per Ex.PW1/1. He admitted that there is no
copy of search report or cash receipt or its copy on record which can show
that inspection of register of trade mark was done in respect of trade mark
‘Chatmola’ in class 30 by the Counsel for the plaintiff. He further admitted
that the plaintiff firm had filed 3-4 applications for the trade mark
‘Chatmola’ in class 30 and class 5, and the status of those applications are
‘withdrawn’ and ‘abandon’. He admitted that the application no. 540086 in
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class-5 and application no. 539636 in class-30 were opposed by defendant
Anil Food Industries. He further admitted that the defendant had filed an
application for registration of trade mark ‘Chatmola’ in class-30 but stated
that the same was filed after one year of their (plaintiff’s) first application.
(50) PW1 further deposed that application no. 540086 in class-5
dated 16.11.1990 was filed by the plaintiff; application no. 888549 in
class-5 dated 26.11.1999 was filed by the defendant; application no.
892057 in class-5 dated 15.12.1999 was filed by one Satish Chand Garg;
application no. 977899 in class-5 dated 18.12.2000 was filed by one
Gulshan Kumar; application no. 1211394 in class-5 dated 03.07.2003 was
filed by Bhartiya Agro and application no. 2687191 in class-5 dated
26.02.2014 was filed by Rex Remedies. He further deposed that six
applications for trade mark ‘CHATMOLA’ are on trade mark website, viz.
application no. 539636 in class-30 dated 08.11.1990 filed by the plaintiff;
application no. 557320 in class-30 dated 28.08.1991 filed by the
defendant; application no. 568549 in class-30 dated 28.02.1992 filed by
the plaintiff; application no. 728426 in class-30 dated 23.08.1996 filed by a
third party Rajeev Bhardwaj; application no. 1131005 in class-30 dated
04.09.2002 filed by the defendant and application no. 5225731 in class-30
dated 27.11.2021 filed by one Anshu Aggarwal.
(51) PW1 further admitted that application no. 557320 in class-30
dated 28.08.1991 filed by the defendant for trade mark ‘CHATMOLA’ is
registered and there is no other registration of trade mark ‘CHATMOLA’ in
class-30 other than the registration no. 557320 in class-30. He further
admitted that all the applications mentioned in class-5 are abandoned as per
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search record. He further admitted that he could not find any document/
file which can show that any opposition or appeal was filed against
application no. 557320 in class-30 of the defendant. He further deposed
that he could not find any file with respect to opposition or appeal and
therefore, had not checked that whether any step was taken by the plaintiff
in respect of trade mark registration no. 557320 in class-30 post 2012, that
is, after filing of replication to the amended written statement. He further
deposed that he had not placed on record any invoice pertaining to
designing of six labels as mentioned in Ex.PW1/16 collectively.
(52) He further deposed that the proprietorship firm Alka Food
Industries was closed in the year 2009 after the demise of his father and he
was impleaded in the present matter in his individual capacity and now the
name of the company in which he is a Director, is Alka Food Private
Limited which was incorporated in the year 1995. He, however, denied
that Alka Food Industries, sole proprietorship firm was not in existence in
2010. Trade marks Chatmola, Cardela, Freshla and some other trade
marks are still in the name of firm M/s. Alka Food Industries, a sole
proprietorship firm and some other trade marks were assigned to M/s. Alka
Foods Private Ltd. He admitted that he is not doing any business of
confectionary in his personal name. Ex.PW1/22, Ex.PW1/23 and
Ex.PW1/24 are the three designs/ label of trade mark CHATAR MATAR.
He admitted that M/s. Alka Food Industries had not obtained any GST
registration and he further admitted, after seeing the record, that there is no
assignment deed on record whereby an assignment was done between Alka
Food Industries and company M/s. Alka Food Pvt. Ltd.
TM 992/2016 & TM 924/2016 Page No. 29 of 106 Digitally signed by NEHA NEHA PALIWAL PALIWAL SHARMA SHARMA Date: 2025.04.09 17:16:53 +0530 (53) He further deposed that at the relevant time, sometimes the
plaintiff firm used to take the services of Mr. Vidya Bhushan and M/s.
Ankur Advertising for designing and the art work was given to M/s. Vikas
Laminator for printing and sometimes M/s. Vikas Laminator directly took
the services of the designer Mr. Vidya Bhushan. His father used to sign
cheques and give payment to M/s. Vikas Laminator. He further deposed
that the receipt of any payment made to Mr. Vidya Bhushan was not filed
on the Court record as designing of Chatmola in the Chatar-Matar design
was given to M/s. Vikas Laminator Pvt. Ltd. and they had taken the
services of Mr. Vidya Bhushan and therefore, M/s. Vikas Laminator must
have paid for it. He admitted that the invoice of M/s. Vikas Laminator Pvt.
Ltd., which is on record, is not the original bill but is a duplicate bill.
(54) PW1 further admitted that he had not filed the copies of cheques
on record which were issued by the plaintiff company for purchasing
printed and laminated rolls for making pouches ‘Chatmola’ with respect to
bills Ex.PW1/19 and Ex.PW1/20 and for engaging services of Ankur
Advertising and Marketing for design of trade mark label Tiny-Miny
Ex.PW1/17 for which bill dated 31.08.1988 Ex.PW1/20-A was raised. In
the year 1990-91, the invoices of Alka Food Industries were maintained by
sending the original bill to the customer and keeping a copy in the file and
the third copy of the invoice was hard bound. He admitted that the second
copy was never bound and in the year 1990 and 1991, they used to issue
handwritten invoices of the firm Alka Food Industries, at times in his own
handwriting and at times in the handwriting of his father. He admitted on
confrontation that documents Ex.PW1/9 and Ex.PW1/10 both dated
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03.05.1991 are typed and not handwritten. The document Ex.PW1/9 is the
second copy and contains details written by pen as when the bills were
made, bilty number was not available and after receiving of bilty number,
details were written by hand and that is why the second copy had details
written in pen. He further admitted that the invoice Ex.PW1/12 dated
26.06.1991 is a typed document. He was confronted with Ex.PW1/11
dated 03.05.1991 and was asked that why out of three invoices issued on
the same date, two were typed and one was handwritten, to which it was
replied that at times typewriters were not working and therefore the bills
were raised by hand. Ex.PW1/9 and Ex.PW1/10 are the second copy and
not carbon copy. He had not filed the bilty receipt or transport receipt of
invoices which were issued to parties outside Delhi but bilty number was
mentioned on the respective bills. The owner of Batra Stores, Geeta
Colony, Delhi is his mausaji.
(55) PW1 further deposed that the documents Ex.PW1/4, Ex.PW1/5
and Ex.PW1/7 are in his handwriting whereas Ex.PW1/11 dated
03.05.1991 (actually Ex.PW1/10) is in the handwriting of some staff,
though the initials put on behalf of firm are his initials. He and his father
used to put their initials on all the bills/ invoices issued by the plaintiff firm.
His initials are there on Ex.PW1/4, Ex.PW1/5 and Ex.PW1/7 whereas
Ex.PW1/6 bear the initials of his father. He was unable to tell as to whose
initials were there on Ex.PW1/8. He admitted that the documents
Ex.PW1/9 and Ex.PW1/10 do not bear any initials. He deposed that
Ex.PW1/11 was in the handwriting of some staff and bear his (witness’s)
initials and Ex.PW1/12 also bear his initials. When asked that invoice
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Ex.PW1/15 had two handwriting with name of the customer written by one
person and other details written by another, the witness explained that both
are in same handwriting and the items were in caps font and address in
mixed font, the address was in small and caps font and the items were in
only caps font and the same is in his handwriting. When confronted with
Ex.PW1/4 bearing invoice no. 2229 while Ex.PW1/5 dated 5.12.1990 bear
invoice no. 2237 and asked why they had not filed the intervening invoices,
the witness explained that they were asked by their then Advocate that
some sample bills were required for the case containing sale of Chatmola
so they filed only sample bills. He admitted that between 13.11.1990 till
05.12.1990 their firm issued only eight invoices, between 05.12.1990 till
14.12.1990 their firm issued only four invoices and from 14.12.1990 to
22.01.1991 their firm issued only 18 invoices.
(56) PW1 further deposed that between 22.01.1991 and 25.01.1991
three bills were raised including 2261 and 2263. He further admitted that
from 03.05.1991 to 26.06.1991 only 31 bills were said to have been raised
by the firm as per serial number; between 26.06.1991 to 13.07.1991 only
eight invoices were raised as per serial number; between 13.07.1991 to
07.08.1991 only eleven bills were raised; between 07.08.1991 to
19.08.1991 only four bills were raised and between 19.08.1991 to
19.10.1991 only 16 bills issued by the plaintiff firm as per serial number.
He further deposed that it was not mandatory prior to GST to get the
invoice number printed on the cash memo, though after GST the same is
mandatory. The documents Mark X1 (Ex.DW1/40 which is a price list)
and Mark X2 (Ex.DW1/39 which is a greeting card) are not issued by his
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firm and are fabricated documents.
(57) PW1 further stated that he had come to know about TM-1 and
additional representation in TM application no. 1131005 and 888549 after
closure of plaintiff’s evidence in the present matter. The legal proceedings
certificates were applied on 12.12.2023 and received on 23/24.01.2024.
(58) PW2 Ms. Isha Choudhary summoned witness from trade mark
Registry had brought the certified copy of applications no. 377890 (for
mark TINI MINI), 499813 (for mark CHATAR MATAR) and 539636 (for
mark CHATMOLA), all in Class 30, Ex.PW2/A (Colly), Ex.PW2/B
(Colly) and Ex.PW2/C (Colly) respectively before the Court. Perusal of
Ex.PW2/C reveals that the application was in Class 30 dated 08.11.1990
and its status was ‘abandoned’. The witness was duly cross-examined by
the Ld. Counsel for the defendant.
(59) PW3 Mr. Pragya Nand Shukla summoned witness from
Copyright Office had brought the certificate of registration No.
A-51887/1992, copy of work and application for exemption to produce the
summoned documents, Ex.PW3/1 (Colly). Perusal of Ex.PW3/1 reveals
that as per the noting therein, the same was removed from Board on
05.02.2010. The date of the application was 16.06.1992 and the date of
registration was 23.06.1992.
(60) He was cross-examined by the Ld. Counsel for the defendant.
He, in his cross-examination, deposed that certificate of registration
produced by him was not found in the records of the department and was
found from the Archives of the department where old official records were
kept. He could not answer the suggestion that whether remark removed
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from board on 05.02.2010 pertains to removal of the registration and also
was unable to tell whether the registration was alive as on the date of his
cross-examination. He was not aware whether their office received copy
of the order dated 25.08.2005 passed by the Ld. Copyright Board and copy
of the order dated 05.11.2008 passed by the Hon’ble High Court of Delhi.
(61) PW4 Yogeshwar Singh, authorized representative of Ankur
Media Pvt. Ltd., formerly known as Ankur Advertising and Marketing, had
tendered his evidence by way of affidavit, Ex.PW4/A wherein he had
stated that the above company is carrying on the business of designing of
labels and advertising since 1975-1976. He is employed in the company
since 1987-88. He was authorized by the Director of the company, namely,
Sh. Balraj Malhotra to depose before the Court after they had received
summons from the Court. He had brought the records viz. bill no.
218/A/88-89/Aug dated 31.08.1988; artwork of label Tiny Miny; negative
positive films of label Tiny Miny and the final label. He stated that they
had received their professional charges of Rs.750/- through cheque no.
602985 dated 06.10.1988 drawn on State Bank of India from Alka Food
Industries. The tendering of the documents was objected to by the Ld.
Counsel for the defendant on the ground that the said documents were not
earlier on judicial record and no permission was sought from the Court to
produce them on record. The affidavit of the witness was not filed by the
plaintiff along with his affidavit but was filed later on to fill the lacuna.
Thus, objections were on the ground of stage of filing, mode of proof,
relevancy and admissibility.
TM 992/2016 & TM 924/2016 Page No. 34 of 106 Digitally signed by NEHA NEHA PALIWAL PALIWAL SHARMA SHARMA Date: 2025.04.09 17:17:34 +0530 (62) PW4 was cross-examined by the Ld. Counsel for the defendant
at length. He, in his cross-examination, had deposed that he joined M/s.
Ankur Media Pvt. Ltd. in 1987-1988 as a learning Executive when it was a
firm by the name M/s. Ankur Advertising and Marketing and in 2002, it
became a company by the name of Ankur Media Pvt. Ltd. No power of
attorney was given by the Board of Directors of M/s. Ankur Media Pvt. Ltd
in his favour to appear in the matter nor any board resolution was passed
and only an authorization letter was given to him. There are four directors
in Ankur Media Pvt. Ltd. and only one of the Director, namely, Mr. Balraj
Malhotra had signed the authorization letter in his favour and Mr. Balraj
Malhotra is also Head of the Company.
(63) He further deposed that he worked as an Advertising Executive
in the firm. The company had kept the records for 30-40 years. He could
not answer the suggestion whether the firm maintained invoices in bound
form books for each year. When asked whether he can produce bill nos.
217 or 219, preceding or succeeding the bill which he had brought before
the Court, it was deposed by him that he has no knowledge about the same.
He further deposed that his firm used to issue two copies of bill and one
was kept with the client and other was kept by the firm. He had no personal
knowledge with respect to the invoice or the payment qua the said invoice.
(64) He further deposed that his firm deals with approximately 40
clients, has huge advertisement budget and carry huge advertisements in
various medias throughout the year. He was unable to answer whether the
company kept record of all the 40 clients for the last 30-40 years for the
entire advertisement activities or the documents were given to those
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organizations and deposed that the records were kept for financial purpose
only. He could not answer the question whether he can bring the records of
any other client of the year 1990, namely, Steel Bird. He further admitted
that he had received the summons issued by the Court and on specific
question that there was no specific instruction to bring any other document
other than invoice No. 218/A/88/89/August, the witness stated that he had
only submitted the invoice, designs, negative and one art work. He could
not answer the question that how the copy of bill dated 31.08.1988 was
preserved and stated that it is for the management to decide.
(65) He further admitted that the negatives, Mark A4, annexed with
his affidavit were not prepared in his presence, however, again deposed
that he was present when the negatives were created. He further deposed
that he was present when the document Mark A5, that is, art work was
created by Mr. Devender Malhotra and his team. He could not answer the
questions that whether dabbis Ex.PW1/21 to Ex.PW1/24, Ex.PW1/19 and
the six dabbis part of Ex.PW1/6 (colly) were designed by his firm or not.
He, however, deposed that Ex.PW1/20 was not designed by his firm and
again deposed that labels Ex.PW1/23 and Ex.PW1/24 were not designed
by his firm and the design of box Mark A6 was not created by his firm.
(66) PW5 Sh. Mahesh Rustagi Ex Director of M/s. Vikas Laminator
Pvt. Ltd. had tendered his evidence by way of affidavit, Ex.PW5/A,
wherein he had deposed that his company had received the summons from
the Court. His company was carrying on the business of printing of
polyester poly packing materials in the shape of rolls and pouches since its
inception. He had been into the printing of various designs for Alka Food
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Industries since 1989-1990 such as CHATAR MATAR, LAL JEERA,
BIBO, NAWABI JEERA, FRESHO etc. and in July 1990, he was asked by
Sh. Anil Kumar to insert CHATMOLA in place of CHATAR MATAR
label. The said label was prepared by Sh. Vidya Bhushan who was a
Designer and the said artwork was given to him after 10-15 days and
thereafter he got prepared the Cylinders from Gravure Cills which took 20-
30 days in preparation. After receiving the cylinders the job of printing
was done and the printed materials, that is, rolls of CHATMOLA were
delivered vide bill dated 08.09.1990 and bill dated 16.12.1991. The bill no.
145 dated 08.09.1990 (already Ex.PW1/31 and also Ex.PW1/19) and bill
no. 345 dated 16.12.1991 (Ex.PW1/32 and also Ex.PW1/20) were issued
by the company and the same bear his signatures as well as signatures of
his brother.
(67) PW5 was cross-examined by the Ld. Counsel for the defendant.
He, in his cross-examination, deposed that he remained the Director of
Vikas Laminator Pvt. Ltd. till 2007-2008. The company was closed due to
heavy losses and he ceased to be the Director because of the closure. He
admitted that the company had faced litigations under Section 138 of
Negotiable Instrument Act. He had received summons on behalf of the
company on his residential address and in his affidavit had stated his
residential address to be the address of the company. He admitted that he is
not in possession of any records of M/s. Vikas Laminator as on date of his
cross-examination nor can produce the office copy of bills exhibited in his
examination-in-chief. He had no document to show that Sh. Anil Kumar
had asked him to insert Chatmola in place of Chatar Matar. The label of
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Chatar Matar was designed by Sh. Vidya Bhushan whereas he (witness)
did the lamination, though there is no document to prove the same. He
further deposed that apart from the two words, nothing was changed in the
label. The Chatar Matar label was in yellow colour but he was not sure. He
did not remember the cost of preparing cylinder in 1990 and Vikas
Laminator Pvt. Ltd. made the payment of the alleged cylinder for the
alleged changed label, though he had not filed any such document. He had
not received the refund of making charges of the alleged cylinder from
Alka Food Industries nor he had not placed any such document on record
of the Court file.
(68) PW5 further deposed that only one cylinder was made at that
time for the alleged changed label but he was not sure. The witness further
deposed that he told Sh. Vidya Bhushan to change the label of Chatar Matar
and he would have made the change in the label but it was not made in his
presence. He deposed that Vikas Laminator used to do printing of the rolls
in 1990 at F-43, Sector 11, NOIDA. He did not remember why the alleged
bill Ex.PW1/31 and Ex.PW1/19 does not mention party CST number. He
admitted that he had not submitted any proof of any payment of any bill.
He further deposed that the bills were made by hand. He also deposed that
he had not placed on record of the Court file the alleged label which he had
received from Vidya Bhushan.
(69) PW6 Sh. Vidya Bhushan had tendered his evidence by way of
affidavit, Ex.PW6/A, and had deposed that he was the Proprietor of M/s.
Vinny Graphics and was doing business since 1986 till 2010. He further
stated that he had prepared various designs for Alka Food Industries since
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1989-1990 such as CHATAR MATAR, LAL JEERA, BIBO, NAWABI
JEERA, FRESCO etc. at the instance of Sh. Mahesh Rustagi, Director of
Vikas Laminator. The witness further stated that in July 1990 he was asked
by Sh. Mahesh Rustagi to insert CHATMOLA in place of CHATAR
MATAR pouch label. The said label/ pouch was prepared by him
(Ex.PW6/1) and the said artwork was also given to Sh. Mahesh Rustagi in
July1990. He had also earlier sworn an affidavit in this regard (already
Ex.PW1/18) which bear his signatures.
(70) PW6 was duly cross-examined by the Ld. Counsel for the
defendant. He, in his cross-examination, admitted that the label,
Ex.PW6/1, was printed/ produced by mechanical process and not original
artwork. Mr. Anil Gera and Mr. Pritam Dass had come to him for the
affidavit Ex.PW1/8. He deposed that he did not go to any Court premises
to sign the affidavit nor did he went to Oath Commissioner or Notary to get
the affidavit attested but signed the same in his office. He further deposed
that from 1986 he had been designing label for Alka Food Industries
through laminator and Mr. Anil used to come to check the labels. Sh. Anil
Gera used to come at various time to get some corrections made from 1988
onwards and Sh. Pritam Dass never came to get the corrections made. He
had not placed on record any original artwork made by him for trade mark
Chatar Matar because it goes to the printer.
(71) PW6 further deposed that he had not filed any artwork pertaining
to trade mark label Chatmola as he did not keep any record of the same. He
further deposed that no order form was given to him by Mr. Mahesh
Rastogi to design the label Chatmola and volunteered that Mr. Mahesh
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Rastogi used to come and give instructions as to how a label was to be
devised or made. Mr. Anil Gera had come to him for checking the label of
Chatmola and after understanding the same, he approved it. He did not
remember whether he had given the original artwork to Mr. Anil Gera or to
the Laminator. When asked why payments were not made by Alka Food
Industries to him directly, the witness deposed that he never used to visit
them instead they used to come to him and used to check the labels and
they never used to make payments to him because he used to work for
Vikas Laminator and he was being paid by Vikas Laminator. PW6 further
deposed that he had many other customers like Ayur Cosmetics who used
to make payment directly to him and maximum printer used to make
payments to him through whom he used to get work. He could not answer
the suggestion that whether label of Chatmola was designed by Sh.
Devender Malhotra and his team.
(72) Vide separate statement of the Ld. Counsel for the plaintiff, the
plaintiff’s evidence was closed vide order dated 19.07.2023 and the matter
was fixed for defendant’s evidence.
(73) At the stage of defendant’s evidence, the defendant had
examined as many as eight witnesses. The proprietor of defendant, namely
Sh. Ramesh Chander had examined himself as DW1. DW1 had tendered
his evidence by way of affidavit Ex.DW1/A and had reiterated the contents
of the written statement and counter claim in his affidavit. He had relied
upon the following documents in his evidence by way of affidavit:
1. The pouch of the defendant/ counter claimant, Ex.DW1/1.
2. Original art work of the label, Ex.DW1/2.
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3. Affidavit of Sh. Baldev Singh containing the replica of the label,
Ex.DW1/3 (Collectively, comprising of 2 pages).
4. Originals of bills of M/s. Rapidex Offset dated 21.12.1991,
Ex.DW1/4 and M/s. Eskay Enterprises dated 20.01.1992 and
dated 03.01.1992, Ex.DW1/5 and Ex.DW1/6 respectively.
5. Original of the invoice no.036 of M/s. Pranshu Packaging and the
passbook, Ex.DW1/7 and Ex.DW1/8 (passbook) respectively.
6. Original of the newspaper cutting, Sandhya Times dated
07.12.1991 and the invoice No. 4532, Ex.DW1/9 and
Ex.DW1/10 respectively.
7. Original of the letter dated 12.12.1991, Ex.DW1/11.
8. Original postal envelope in which the letter dated 12.12.1991
received via post by the defendant/ counter claimant from M/s.
Veena Sales Corporation, Ex.DW1/12.
9. Original of the letter dated 06.12.1991 to the defendant/ counter
claimant from M/s. V.K. Sales at Rohtak requesting for terms of
distributorship of CHATMOLA with original postal envelope,
Ex.DW1/13 and Ex.DW1/14 respectively.
10. Original of the letter dated 09.11.1991 to the defendant/ counter
claimant from M/s. Trimurti Agency requesting for allotment of
agency in respect of Chatmola along with original postal
envelope, Ex.DW1/15 and Ex.DW1/16 respectively.
11. Original letter dated 05.12.1991 of M/s. Birdhichand Mahavir
Prasad addressed to defendant / counter claimant asking sample
of Chatmola alongwith the original postal envelope, Ex.DW1/17
and Ex.DW1/18 respectively.
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12. Original of the letter dated 18.12.1991 addressed to defendant/
counter claimant from M/s. Sudershan Perfumers of NOIDA
making inquiries of the product Chatmola alongwith the original
postal envelope, Ex.DW1/19 and Ex.DW1/20 respectively.
13. Original letter dated 30.01.1992 received by defendant/ counter
claimant from M/s. Unitek, New Delhi alongwith the original
envelope, Ex.PW1/21 and Ex.PW1/22 respectively.
14. Original letter dated 30.01.1992 received from M/s. Rajinder
Singh Bhupinder Singh, Ludhiana by defendant/ counter
claimant alongwith the original envelope, Ex.DW1/23 and
Ex.DW1/24 respectively.
15. Original of the invoice dated 06.12.1991 of Rs.6,000/- raised to
the defendant/ counter claimant from the advertiser M/s. Reach
Video Advertising and Ad Films Pvt. Ltd., Ex.DW1/25.
16. Original of invoice dated 17.01.1992 raised from the advertiser
M/s. Reach Video Advertising and Ad Films Pvt. Ltd to the
defendant/ counter claimant, Ex.DW1/26.
17. Original of invoice dated 22.06.1991 from M/s. Vijay
Advertisers of Delhi to the defendant/ counter claimant,
Ex.DW1/27.
18. Original of invoice dated 04.01.1992 from M/s. Sunita Printers
raised to defendant/ counter claimant regarding advertising the
trade mark Chatmola across calenders, stepney covers etc.,
Ex.DW1/28.
19. Original invoices pertaining to the trade mark Chatmola filed by
the defendant/ counter claimant Ex.DW1/29 (Collectively),
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details of which are as under:-
Bill Book No. 1
Bill No. Bill Date Customer name
1477 08.01.1991 Anju Sweet Products Nawab Ganj Delhi
1481 18.01.1991 Neha Enterprises, Jhilmil Colony Shahadra
1482 19.01.1991 Ishar Singh Jeet Singh, Gali Batasha, Khari Baoli,
Delhi
1483 19.01.1991 Delhi Sales Agency, Shivaji Road, Delhi-06
Bill Book No. 2
1554 10.01.1992 R. L. Dogra Cash Payment
1555 16.01.1992 Taneja Confectioners & Bakers, Library Road,
Azad Mkt
1556 20.01.1992 Neha Enterprises, Jhilmil Colony Shahadra
1557 23.01.1992 Ishar Singh Jeet Singh, Gali Batasha, Khari Baoli,
Delhi
1561 01.02.1992 Chiman Lal Surinder Kumar Gali Batasha Khari
Baoli
1562 01.02.1992 B.L. Trading Co. Gali Batasha Khari Baoli
20. Copies of invoice nos. 1957 dated 26.04.1991, 1962 dated
21.05.1991, 1970 dated 21.06.1991, 1972 dated 21.06.1991,
1974 dated 28.06.1991, 1982 dated 29.07.1991, 1984 dated
09.08.1991, 1985 dated 09.08.1991, 1997 dated 20.09.1991,
2000 dated 28.09.1991, 1503 dated 04.10.1991, 1504 dated
04.10.1991, 1505 dated 09.10.1991, 1517 dated 01.11.1991,
1523 dated 12.11.1991, 1525 dated 16.11.1991, 1530 dated
02.12.1991, 1532 dated 05.12.1991, 1538 dated 12.12.1991,
1544 dated 21.12.1991 and 1548 dated 02.01.1992, Mark
DW1/A (collectively). Later on carbon copies of invoices No.
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1957 dated 26.04.1991, 1962 dated 21.05.1991, 1972 dated
21.06.1991, 1974 dated 28.06.1991, 1984 dated 09.08.1991,
1985 dated 09.08.1991, 1517 dated 01.11.1991, 1525 dated
16.11.1991, 1530 dated 02.12.1991, 1544 dated 21.12.1991 and
1548 dated 02.01.1992, invoices No. 1997 dated 20.09.1991,
2000 dated 28.09.1991 and 1532 dated 05.12.1991, were
produced and were exhibited as part of Ex.DW1/29 (colly).
21. Original brochure of Lions Club Delhi Model Town dated
22.09.1991 containing the advertisement of the trade mark
Chatmola of the defendant / counter claimant, Ex.DW1/30.
22. Copy of the order dated 28.11.2003 passed by the Ld. Registrar
of Trade Marks dismissing the opposition filed by plaintiff
against the application no. 557320 in class 30 of the defendant/
counter claimant, Mark DW1/B.
23. Original of the trade mark registration certificate under No.
557320 in Class 30 of the defendant/ counter claimant,
Ex.DW1/32.
24. The original Legal Proceedings Certificate pertaining to the trade
mark registration no. 557320 in class 30 of the defendant/
counter claimant, Ex.DW1/33.
25. Certified copy of the order dated 04.03.1999 passed by the Ld.
Registrar of Trade Mark, New Delhi allowing the oppositions
filed by the defendant/ counter claimant to the applications no.
539636B in class 30 and another under no. 540086B in class 5 of
the plaintiff, Ex.DW1/34.
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26. Certified copy of the extract of the Register of Copyrights
pertaining to copyright registration no. A57086/99 of the
defendant/ counter claimant, Ex.DW1/35.
27. Certified copy of the extract of the Register of Copyrights
pertaining to copyright registration no. A65448/2003 of the
defendant/ counter claimant, Ex.DW1/36.
28. Certified copy of the order passed by the Ld. Copyright Board
expunging the copyright registration no. A51887/1992 of the
plaintiff on cancellation filed by the defendant/ counter claimant,
Ex.DW1/37.
29. Copy of the order dated 05.11.2008 passed by the Hon’ble High
Court of the Delhi in RFA 15/2006 titled as ‘Pritam Dass v. Anil
Food Industries‘ filed alongwith the application of the plaintiff
dated 19.05.2015, Ex.DW1/38.
30. Original Diwali gift pack of the plaintiff, Ex.DW1/X.
31. The original Diwali Greeting card of the plaintiff Ex.DW1/39
(earlier marked as Mark X2 during cross examination of PW1
dated 15.04.2023).
32. The original price list of the plaintiff, Ex.DW1/40 (earlier
marked as Mark X1 during cross examination of PW1 dated
15.04.2023).
33. Certified copy of the exparte order dated 25.05.1999 and the
compromise decree dated 08.03.2000 in favour of defendant/
counter claimant in suit no. 1154/1999 before Hon’ble High
Court of Delhi titled as ‘Ramesh Chander vs. Vikram
Confectioners & Anr.’, Ex.DW1/41.
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34. Certified copy of the exparte order dated 17.09.1999 and the
compromise decree dated 26.08.2004 in favour of defendant/
counter claimant in suit no. 2074/2000 before Hon’ble High
Court of Delhi titled as ‘Ramesh Chander v. H. K. Industries &
Anr.‘, Ex.DW1/42.
35. Certified copy of the exparte order, judgment, and exparte decree
dated 29.03.2023 in favour of defendant/ counter claimant in TM
no. 972/16 in the court of Ld. ADJ-08 Central, Tis Hazari Courts,
titled as ‘Ramesh Chander v. A. K. Products‘, Ex.DW1/43.
(74) The exhibition of documents was objected to by the Ld. Counsel
for the plaintiff on the ground that Ex.DW1/2 is a coloured label only and
not an art-work; Ex.DW1/3, Ex.DW1/7 to Ex.DW1/11 were objected to on
the ground of mode and manner of proof; Ex.DW1/12, Ex.DW1/14,
Ex.DW1/16, Ex.DW1/18, Ex.DW1/20, Ex.DW1/22, Ex.DW1/24 were
objected to on the ground that they were beyond pleadings and Ex.DW1/29
(colly) were objected to on the ground that the originals were not produced
and Ex.DW1/X, DW1/39 and Ex.DW1/40 were objected to on the ground
of mode of proof and that source of documents was not proved.
(75) DW1 was duly cross-examined by the Ld. Counsel for the
plaintiff at length. He, in his cross-examination, deposed that Anil Food
Industries was established as a proprietorship firm in the year 1972 by Smt.
Kaushalya Devi (his mother). He was inducted as a partner in the firm in
the year 1982 and had not infused any capital at the time of becoming
partner. At that time, the firm was using only ‘Anil’ trade mark. He further
deposed that on the date of cross-examination, his firm was using “Anil”,
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“Chatmola”, “Rinkas”, “Chatmoli” etc. as its trade marks. From the years
1970 to 1990 the firm was using trade marks “Anil”, “Lajawab”, “Rinkas”,
“Chatballs”, “Chatpata Jeera”, “Fruit Balls” etc. and also used to make
sugar coated Saunf and churan balls etc. at that time. They also used to
make product with the name “Tambola” during the year 1970 to 1990 and
the products were being manufactured at 308/5, Shahzada Bagh, Old
Rohtak Road, Delhi-35. He admitted that they never manufactured Lal
Jeera but stated that they were making Chatpata Jeera. He deposed that at
that time, Chatmola was being made in coating pans and now a days, they
are also making candy of Chatmola. He admitted that same machinery was
being used in packing of Tambola and Chatmola.
(76) DW1 further deposed that the designer used to take idea from
him while making art work. The designer used to provide him copy of art
work after completion of design and usually 2-3 copies were provided to
him. Only he used to provide the art work to the printer. During 1982 to
1995, he had only one designer namely Baldev Singh and the first design
made by Baldev Singh was of Chatmola. He met Baldev Singh for the first
time in May 1988 at Ashok Vihar at the residence of his friend, namely,
Kapil Anand. Baldev Singh had made designs of Chatmola, Tambola and
Chatpata Jeera. He had filed only one art work of Chatmola in the present
suit as the case pertains to only Chatmola and had not filed any other art
work made by Baldev Singh. He had not filed any bill issued by Baldev
Singh since the payment was made in cash.
(77) DW1 further deposed that he and the plaintiff are real brothers,
have same business and same market for their products. They generally
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have knowledge of the products made by the plaintiff. He admitted that
plaintiffs are manufacturing Tini Mini since year 1977, however, deposed
that no design of elephant, which is there in Chatmola, was present on the
dibbi of Tini Mini and there were different designs on different cartons of
Tini Mini, which have been filed on record. He admitted that 6-7 designs
were being used by the plaintiffs on the dibbis for Tini Mini. He denied
that art-work/ design on Ex.DW1/1 and Ex.DW1/2 are similar to those
printed on Tini Mini pouch and carton.
(78) DW1 further deposed that the idea behind the art work of
‘Chatmola’ was his and Baldev Singh’s combined idea. Baldev Singh
prepared the art-work first and thereafter he (witness) modified the same
by making minor changes and suggesting colours. Same machinery was
being used first for making ‘Lajawab’, then ‘Chatballs’, then ‘Chatmola’
and then ‘Tambola’ and all of these were balls (Goli) of the same size with
different tastes. The process of roto-gravier can be done in one month in
case of urgency, however, in case of a lazy printer it could take 5-6 months
or one year. The said process of roto-gravier is complete if the packaging/
pouch is printed. He admitted that the proceedings for cancellation of
copyright of ‘Chatmola’ is pending before the Hon’ble Delhi High Court
and made a volunteer statement that copyright registration of the plaintiff
in respect of ‘Tiny-Miny’ having same design, has already been expunged
by the Copyright Board.
(79) He further deposed that author of Chatmola was Baldev Singh.
He had filed two applications for registration of copyright of ‘Chatmola’
but he does not remember the exact timings of filing the said applications.
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He further deposed that Baldev Singh was the author in both copyright
applications and deposed that in the first application the agent wrongly
mentioned his (witness) name as the author and when it came to his
knowledge, he filed second application through another agent wherein the
name of the author was mentioned as Baldev Singh correctly. He admitted
that he never applied for correction in the first application.
(80) He further deposed that he was selling ‘Chatmola’ to several
customers and he had filed the bills in respect of the same. He used to visit
dealers for marketing of ‘Chatmola’ and some people also used to visit his
factory for purchase of ‘Chatmola’. He was unable to tell the sales figures
of ‘Chatmola’ of the last financial year and the total sales of Anil Food
Industries of the last financial year. He admitted that roto-gravier printing
was not possible without cylinders and deposed that cylinders were got
made by the printer and were not made on urgent basis. He further deposed
that packaging is must before selling the product. He had filed printing
bills for roto-gravier printing. The printing on box is offset printing press.
(81) DW1 had further deposed that they had first introduced
‘Chatmola’ pouch with MRP of 50 paisa and within 2-3 days only, another
pouch of ‘Chatmola’ was introduced for MRP of one rupee. He deposed
that he had filed the first art work of ‘Chatmola’ in the present case. He
admitted that the bank account in UCO Bank was opened by him and Smt.
Kaushalya Devi. He denied that the art-work of Ex.DW1/1 cannot be
made without reference to art work of Ex.PW1/3 and Ex.PW6/1 filed on
27.04.2005 and made a voluntary statement that Ex.PW1/3 is the copy of
his pouch ‘Chatmola’ and in Ex.PW6/1 the name ‘Chatmola’ was taken
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from his pouch. He further deposed that 3-4 days prior to his deposition,
his Copyright in ‘Chatmola’ was revoked by the Hon’ble Delhi High Court
on technical grounds with directions to the Ld. Registrar of Copyrights to
re-decide the same within one month.
(82) He further admitted that he had filed an affidavit of Sh. Baldev
Singh dated 24.02.1992, Ex.DW1/3, on record which was prepared on the
asking of Sh. Baldev Singh and was attested before the Oath
Commissioner. He deposed that he had paid Rs.150/- in cash to Sh. Baldev
Singh as his fees of the art work made by him regarding Chatmola pouch.
He admitted that there is no payment proof/ receipt available on court
record with respect to payment qua bill Ex.DW1/4 dated 21.12.1991. Bill
Ex.DW1/7 was the last dealing of the defendant firm with Pranshu
Packaging and it was admitted that there is no order number mentioned on
Ex.DW1/7 and deposed that it was a verbal order. He further admitted that
the newspaper/ caution notice Ex.DW1/9 is dated 07.12.1991 while its bill
Ex.DW1/10 is dated 10.12.1991. He further deposed that the said caution
notice was got published through Kamal Mahajan and Co. for which
payment was made through cheque and though the date of order is not on
record but the bill Ex.DW1/10 of Kamal Mahajan and Co. dated
10.12.1991 is on record.
(83) DW1 deposed that he had received the letters Ex.DW1/15,
Ex.DW1/16, Ex.DW1/17, Ex.DW1/18, Ex.DW1/19, Ex.DW1/20,
Ex.DW1/21, Ex.DW1/22, Ex.DW1/23 and Ex.DW1/24 from the
respective customers and had filed the same as it is before the Court. He
further deposed that he had not purchased any machinery from Unitek
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Packaging Systems which had sent the letter Ex.DW1/21.
(84) He further deposed that apart from Mr. Baldev Singh, one Mr.
Verma was also designing art works for him during the period 1985-95. He
could not tell the exact years of making of art-work of the three to four
designs of trade mark Chatball and deposed that the the first design of
Chatball was made between 1988-1990 and after four to five years another
designs were made, but he cannot tell the exact year. He stated that he does
not remember in which years the art work of Chatmoli, Chocobite and
Chatpata Anardana were made. He further deposed that they used to
purchase printed, laminated rolls from Pranshu Packaging. After seeing
the document Ex.DW1/7 the witness deposed that it is a bill of Chatmola
pouch of 50 paise and one rupee. He further deposed that in the bill
Ex.DW1/7 it has been written Rinka’s Chatmola 110 mm and 150 mm and
Rinka’s Chatmola is written on the bill only because of printed rolls. He
further deposed that alongwith the Bill Ex.DW1/25, the video cassette was
also given in which their advertisement of Chatmola used to be played.
(85) DW1 was unable to tell when the movies Partikar, Akayla and
Baharon Ki Manzil were released in theaters and when the same were
released on video cassettes. He deposed that he had filed the video
cassettes of the above movies in the Court of Sh. Mahender Pal, Ld. ADJ in
the year 1992 in the present suit when the directions were given to both the
parties to file the originals. It was put to the witness that the movie
‘Partikar’ was released in theaters on 16.08.1991 and its video cassette was
released on 16.02.1992, movie ‘Akayla’ was released on 08.11.1991 and its
video cassette was released on 08.05.1992 while movie ‘ Baharon Ki
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Manzil’ was released in year 1968 in theaters, the witness replied that
generally the advertising agencies give advertisement after release of the
film and if they had given the advertisement before the release they had
committed a crime and the cassette was given to him with the bill
Ex.DW1/25. He is not aware if any time period is mentioned in
Ex.DW1/26 when his advertisement of Chatmola was played in the video
cassette and stated that the video cassette was given to him by the
advertising agency alongwith the bill Ex.DW1/26. He further deposed that
in Ex.DW1/27 the product is mentioned as Chatmola and volunteered that
since the item is of only six rupees it may be a sticker. When put to the
witness that Ex.DW1/27 is a fake bill as the address mentioned in the same
is non existing, the witness deposed that the advertiser, namely, Vijay
Advertisers came to his factory and gave him the product and took
payment from him. DW1 admitted that there is no stamp, sign, name or
marking on the bills Ex.DW1/29 (Colly) which are carbon copies but again
stated that the same bear his signatures in the form of initials and they are
his bills. He deposed that he had not produced the originals of Ex.DW1/29
(Colly) as the originals are with the customers. He further admitted that
bills Ex.DW1/29 (colly) do not bear the signatures and stamp of the
customers. He does not remember whether he had filed any receipt of the
advertisement Ex.DW1/30, which was got published and stated that the
entire printed book is on record, though the same is not numbered/
paginated yet the same contains the advertisement Ex.DW1/30.
(86) He further deposed that he had not filed any bill for the purchase
of Diwali gift pack Ex.DW1/X and the same was provided to him by one of
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his well-wisher who is also a customer of both the parties. He admitted that
he had not filed any envelope for greeting card Ex.DW1/39 and that the
name of the addressee is not written in Ex.DW1/39 nor it bear the signature
of plaintiffs. He further admitted that Ex.DW1/40 does not bear any seal or
signatures of plaintiffs and deposed that this document was provided to
him by a well wisher who is also a common customer and had asked him to
keep his identity secret. He admitted that he is not the author of documents
viz. Ex.DW1/X, Ex.DW1/39 and Ex.DW1/40. He deposed that
Ex.DW1/41 and Ex.DW1/42 are compromise decrees and Ex.DW1/43 was
a contested matter as the defendant was appearing and later on proceeded
with exparte. He admitted that the cases Ex.DW1/41, Ex.DW1/42 and
Ex.DW1/43 were filed after the proceedings in present suit had started.
(87) DW1 further deposed that he launched his product Chatmola in
market on 08.01.1991 and had not applied for its registration as trade mark
or copyright prior to the launch of the said product. He admitted that there
is no possibility of people knowing about his product before its launch and
again stated that he received the pouch paper in the middle of October 1990
and after 15-days to one month he sent samples in the market and started
asking people for orders and started the supplies as soon as his product was
ready. He further deposed that he came to know that the plaintiffs are also
making Chatmola and had filed application for registration of trade mark
‘Chatmola’ when he received summons of this case and had no knowledge
prior to giving Caution Notice in Sandhya Times that plaintiffs were also
making Chatmola. He deposed that he had not issued any legal notice to
the plaintiffs when he came to know about the same but had filed the
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counter claim in the present matter. He admitted that all the letters filed by
him are of parties/ persons located outside Delhi and that he had not filed
any bill for any outstation party.
(88) He further deposed that it is not necessary to get voucher signed
while giving cash to any person however entries are made in the Day
Books/ Cash Books. He had not filed the said Day Books/Cash Books for
that period. He was unable to tell how much money he had earned by the
sale of Chatmola. He admitted that plaintiffs have suffered huge losses
because of making of Chatmola by him (witness) and had volunteered that
the same was because the sale of the products of the plaintiff, namely,
Chatar Matar and Khatmola substantially decreased because of his making
Chatmola.
(89) DW1 further deposed that at the time when he issued caution
notice, nobody was making ‘Chatmola’ including the plaintiff and had
volunteered that 2-3 manufacturers had taken his sample from the market
stating that they will make the same. He admitted that he had not
mentioned in any of his pleadings including his written statement,
amended written statements made from time to time, counter claim/
amended counter claims that he had provided samples to anyone in
October 1990 of ‘Chatmola’.
(90) He further deposed that he had not filed any catalog or price list
before the Court of the products of defendant firm. He further deposed that
during the period in between 1982-1986 the majority of art works were
designed by Mr. Verma, however, he does not remember what art works
were prepared by Mr. Verma for him. He has no knowledge regarding the
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number of cylinders which will be required for printing the art work
wherein the entire colour combination is the same, however, only the name
is changed and therefore, he cannot admit or deny if only one cylinder is
required. He further deposed that as far as ‘Chatball’ is concerned, it was
manufactured without designing and wrappers, as at times he had prepared
the same and put them in the PVC jar with the name slip of ‘Chatball’ in the
same and various times, its designing had changed. DW1 further deposed
that he does not remember who had designed the art work of ‘Chocobite’.
He further deposed that ‘Tambola’ was prepared first and thereafter
‘Chocobite’ was prepared. He admitted that he was not having any
copyright over mark ‘Tiny-Miny/ Tini-Mini’.
(91) DW1 further deposed that as the witness from the trade mark
Registry was not producing the documents on the ground that the same
were not traceable, therefore, he sent an e-mail along with copy of
documents to the trade mark Registry with a request to reconstruct the
documents, if the said documents are not traceable. He deposed that
thereafter he received e-mail from trade mark Registry to file these
documents along with affidavit and he filed the documents along with
affidavit, electronically as well as gave them the hard-copy thereof. He
denied that he had provided false and fabricated documents before the
trade mark Registry. The witness admitted that order dated 02.05.2024
Ex.DW1/P-Z was passed by Hon’ble High Court of Delhi in CO (COMM
IPD CR) 750/2022. He admitted that he had the machinery to manufacture
and pack Chatmola and that there was no need to buy new machinery for
the same.
TM 992/2016 & TM 924/2016 Page No. 55 of 106 Digitally signed by NEHA NEHA PALIWAL PALIWAL SHARMA SHARMA Date: 2025.04.09 17:20:06 +0530 (92) DW2 Sh. Pragya Nand Shukla, summoned witness from
Copyright Office, had brought the summoned record, that is, certified copy
of the extract of the Register of Copyrights of the copyright registrations
no. A-57086/99 and A-65448/2003 in favour of defendant/ counter
claimant containing artwork, Ex.DW2/A and Ex.DW2/B respectively.
(93) DW2 was cross-examined by the Ld. Counsel for the plaintiff.
He, in his cross-examination, deposed that he had brought the authority
letter Ex.DW2/P-1. He deposed that the certified copies of extracts from
the register of copyrights for the above copyright registrations are in
respect of title ‘Chatmola’. He further deposed that Ex.DW2/A was
applied on 10.04.1999 and registered on 08.12.1999. He admitted that in
Ex.DW2/A the date of first publication is year 1991 and name of author is
Ramesh Chander as written in column no. 9 and 7 respectively of
Ex.DW2/A. He further admitted that in Ex.DW2/B the name of author is
Baldev Singh as written in column no.7 and the date of first publication is
written in column no.9. He is not aware whether there can be or cannot be
two different authors for the same title of copyright. He was not sure if the
artwork of Ex.DW2/B is abridged version of the artwork of Ex.DW2/A.
(94) The witness also brought before the Court the record pertaining
to the extract of the copyright registration no. A-57086/99 and
A-65448/2003 respectively. The pages pertaining to copyright registration
no. A-65448/2003 are Ex.DW2/C (colly – running into 2 pages) and the
pages pertaining to copyright registration no. A-57086/99 are Ex.DW2/D
(colly – running into 8 pages).
TM 992/2016 & TM 924/2016 Page No. 56 of 106 Digitally signed by NEHA NEHA PALIWAL PALIWAL SHARMA SHARMA Date: 2025.04.09 17:20:14 +0530 (95) DW3 Sh. Inderpreet Singh Sahney, summoned witness from
UCO Bank, Lawrence Road Branch, New Delhi, had brought the letter
dated 08.01.2024 issued by the Senior Manager, UCO Bank along with the
record of current account opening form of the defendant firm M/s. Anil
Food Industries opened in the above branch on 03.06.1982. He deposed
that the account number of the defendant firm in the above bank is 271
which is mentioned on the first page of current account opening form,
Ex.DW3/1 (colly – running into 11 pages). The witness further deposed
that the statement of the above account for the financial year 1990-1991 is
not traceable as the account is very old.
(96) DW3 was duly cross-examined by the Ld. Counsel for the
plaintiff. He, in his cross-examination, admitted that no separate authority
letter was issued to him by the Bank to appear and depose before the Court
except the letter dated 08.01.2024. He admitted that the record which he
had brought was not summoned. He deposed that the current account
number 271 has already been closed but he is not aware when it was closed.
He was not aware whether the current account number 271 was closed
before 1990-91.
(97) DW4 Sh. Nitish Kumar, summoned witness from trade mark
Registry, was repeatedly examined, cross-examined and re-examined. He
in his initial examination-in-chief brought before the Court the following
documents:
1. Legal Proceeding Certificate of trade mark registration no.
557320 in class 30 in favour of the defendant/ counter claimant
along with the certified copy of the registration certificate
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pertaining to the said trade mark registration and other
correspondences issued by the defendant to the trade mark
registry in relation to the above registration which included
renewal certificate of the said trade mark registration indexed
and certified by the Registrar of trade marks, Ex.DW4/A (colly –
running into 71 pages).
He, however, deposed that the entire record such as application
form (TM-1), additional representation and other documents
pertaining to the trade mark registration no. 557320 in class 30
are not traceable being very old record and Ex.DW4/A (colly) is
the only available record with the office of Registrar of trade
mark, Dwarka, Delhi.
(98) He, in his cross-examination, admitted that user date is not
mentioned in Legal Proceeding Certificate of TM no. 557320, in the TM
certificate or any document which is part of Ex.DW4/A (colly). He
deposed that Ex.DW4/A (colly) were downloaded from the government
website Ipindia.nic.in of the trade mark Registry, Government of India.
(99) DW4, in his cross-examination, was confronted with four
certified copies of TM-1 and additional representation in TM applications
no. 1131005 and 888549, Ex.DW4/P-1 to Ex.DW4/P-4. He, thereafter on
the next date, brought the additional representation sheet, examination
report, hearing notice, note sheet and TM-1 with respect to application no.
1131005 in class 30 and also the additional representation sheet,
registration certificate, examination report, note sheet, TM-1 and other
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documents with respect to the application no. 888549 in class 5,
Ex.DW4/P-5 (collectively, running into 42 pages). He deposed that the
documents were prepared by the Examiner of trade marks and are the
downloaded printouts from the website of trade marks Registry
ipindia.nic.in.
(100) He was re-examined by the Ld. Counsel for the defendant
wherein he deposed that the records Ex.DW4/P-5 (colly) were checked and
verified by the Examiner of trade marks. He admitted that the date of trade
mark application under number 888549 in class 5 is 26.11.1999 and that of
application number 01131005 in class 30 is 04.09.2002. He further
admitted that the user mentioned in both the application numbers
01131005 in class 30 and 888549 in class 5 is from the year 1991, which is
mentioned at Point ‘X’ in the additional representation document of
application no. 01131005 and at Point ‘Y’ in the additional representation
document of application no. 888549 respectively.
(101) His further re-examination was deferred for want of certain
documents. He, on the next date of examination, brought the certified copy
of trade mark Journal No. 1207 dated 21.09.1999 (pages 112 and 113)
issued by the trade mark Registry, Government of India containing the
advertisement of the trade mark Application No. 557320 in Class 30 dated
28.08.1991 filed by Anil Food Industries, Ex.DW4/P-6. He also brought
on a further date, the certified copy of the Legal Proceeding Certificate
(LPC) in respect of trade mark No. 557320 issued to Anil Food Industries
in Class 30, Ex.DW4/P-7 and deposed that documents such as TM-1,
examination report and the order dated 28.11.2003 passed by the Ld.
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Registrar of trade mark (Mark DW1/B) were still not traceable despite
efforts.
(102) He was cross-examined on the re-examination wherein he
admitted that document Ex.DW4/P-7 was available online and the same
was also available online on 06.04.2024 when his previous re-examination
was conducted. He deposed that the changes have been made by the
Registry in the records as in earlier certificate “proposed to be used” was
written which was changed to “Used since 08.01.1991”.
(103) He was recalled for further re-examination for untraceable
documents. On 28.05.2024 when he was re-examined, he brought the
Legal Proceeding Certificate (LPC) Ex.DW4/P-8 (colly) of the order dated
28.11.2003 (already Mark DW1/B) issued by Assistant Registrar of trade
marks in the matter of application no. 557320 in Class 30 of the defendant
and opposition no. DEL-T-1534/54736 filed by the plaintiff to the said
application before the trade mark Registry. He deposed that the said
documents also contain the affidavit filed by the defendant before the trade
mark Registry in response to the request of the trade mark Registry vide e-
mail dated 13.05.2024 to provide the copy of TM-1, examination report
and the copy of order dated 28.11.2003 passed by Ld. Assistant Registrar
of trade marks in the application no. 557320 in class 30 of the defendant.
The filing of the said document was objected to by the Ld. Counsel for the
plaintiff on the ground that the LPC filed was a mere copy of the photocopy
provided by the defendant to the trade mark Registry.
(104) He was further cross-examined by the Ld. Counsel for the
plaintiff wherein he deposed that the documents brought before the Court
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after 31.01.2024 were obtained from Bombay (journal copy). He had no
idea how many e-mails were sent to the trade mark Registry by the
defendant or vice-versa and deposed that the documents uploaded by the
defendant were verified by the Legal Section before filing the same in the
Court. He could not admit or deny whether the order dated 28.11.2003 was
a copy of the photocopy filed by the defendant before the Registry and he
further could not depose that on what day the document Ex.DW4/P-8 was
filed by the defendant before the Registry. He admitted that there is no
reference of any order dated 28.11.2003 in letter dated 15.04.2008 issued
by the defendant in Ex.DW4/A (colly).
(105) He, on the next date, brought the record showing the e-mails
between the trade mark Registry and Anil Food Industries/ defendant,
Ex.DW4/P-9 (colly. running into 4 pages), Ex.DW4/P-10 (colly. running
into 3 pages) and the report by trade mark Registry along with internal e-
mails of the trade mark department running into eight pages, Ex.DW4/P-11
(colly). He deposed that report Ex.DW4/P-11 was prepared by Senior
Examiner of trade marks/ Legal Head, though the same was signed by the
witness and not by the Senior Examiner. He admitted that the documents
filed by him were the copies of the photocopies submitted by the defendant
to the department and stated that he is not aware when these documents
were provided by the defendant and the dates on which the same were
uploaded on the website. He deposed that he had no knowledge whether
the copies filed by the defendant were verified by the department with their
internal records. He admitted that report Ex.DW4/P-11 shows that the
documents filed by him are copies of copies filed by the defendant with
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affidavit and the same were accepted by the department on the basis of said
affidavit. He further admitted that the documents mentioned in para 1 of
report Ex.DW4/P-11 were not traceable in trade mark registry records and
hence, the same were sought from the defendant and were not verified from
any other previous record. He could not depose whether notice or
communication was sent to the plaintiff to provide documents available
with him. He deposed that he cannot vouch for the veracity of the
documents and only the concerned section personnel can tell about the
same.
(106) The witness was re-examined by the Ld. Counsel for the
defendant after seeking permission of the Court wherein he admitted that
his deposition regarding the documents furnished by the defendant is only
with respect to three documents mentioned in his report Ex.DW4/P-11 and
none else and the said three documents are TM-1 of the defendant with
respect to application no. 557320 in class 30, examination report in the said
application issued by trade mark registry and order dated 28.11.2003
passed by Sh. Ramji Lal, Assistant Registrar of trade marks. He deposed
that order dated 28.11.2003 which was part of Ex.DW4/P-8 (colly) was
verified by the Legal Cell and then LPC dated 14.05.2024 was submitted
before the Court.
(107) He was further cross-examined by the Ld. Counsel for the
plaintiff wherein he admitted that the documents were provided to him by
the Legal Cell, the documents Ex.DW4/P-9 to Ex.DW4/P-11 were
provided to him on 01.07.2024 at 4:30 to 5:00 PM. He admitted that he had
no personal knowledge whether the documents were verified by the Legal
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Cell or not. He admitted that in the document Ex.DW4/P-11 it is nowhere
mentioned that these documents were verified by the legal cell of the trade
mark registry.
(108) DW5 Sh. Sri Bhagwan, summoned witness from Sandhya
Times, had brought before the Court his authorization letter dated
15.03.2024 from The Times Group Ex.DW5/A and also brought the
certified copy of page no.4 from the Delhi Edition of newspaper
publication Sandhya Times dated 07.12.1991, Ex.DW5/B, retrieved from
the Archives Department of the newspaper publication Sandhya Times. He
admitted in his cross-examination that records are available in their office
in digital form only and the document Ex.DW5/B was given to him by the
Library Incharge but no certificate under Section 65-B of Evidence Act or
affidavit was provided to him with Ex.DW5/B. He admitted in his re-
examination that Ex.DW1/9 is the original copy of Ex.DW5/B. He
admitted in his cross-examination that there is no record available with
them in respect of any payment that may have been made to them for
publication of public notice.
(109) DW6 Sh. Baldev Singh had tendered his evidence by way of
affidavit, Ex.DW6/A wherein he had deposed that he is an Artist/ Designer
by occupation and was engaged in the occupation of designing of labels,
cartons, wrappers etc. from the year 1982 to 1997 and had done various
designing jobs for M/s. Anil Food Industries/ defendant from the year
1990 and had prepared the design of the carton pouch packing bearing the
trade mark CHATMOLA for the first time in August 1990 for defendant
firm/ M/s. Anil Food Industries. He had handed over the said design
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Ex.DW1/2 to Sh. Ramesh Chander, partner of the defendant, on
16.08.1990. The specimen of the pouch designed by him bearing the trade
mark CHATMOLA was also filed along with his earlier affidavit dated
24.02.1992, Ex.DW1/3, bearing his signatures at points A and B and he
reiterated and reaffirmed the contents of the said affidavit. He further
deposed that he had charged a sum of Rs.150/- from defendant/ M/s. Anil
Food Industries in cash through their partner Sh. Ramesh Chander to
whom he had handed over the design/ artistic carton CHATMOLA in
respect of their confectionery goods on 16.08.1990.
(110) He was duly cross-examined by the Ld. Counsel for the plaintiff.
He, in his cross-examination, admitted that he had been in continuous
employment since 1982 till his retirement in the year 2019 and had retired
from a school. He had changed various jobs. He had met partner of the
defendant Sh. Ramesh Chander at a common friend’s house in the year
1988. He never used to issue any bill for any work done by him and also
did not maintain any account of payments made to him or received. He had
never issued any certificate in respect of any art-work to Sh. Ramesh
Chander. He had no document to show that he was running a small studio
from his residence nor had he obtained any service tax number. The
printed pouch attached by him as artistic work with affidavit Ex.DW1/3
was provided to him by Sh. Ramesh Chander.
(111) DW7 Sh. Prince Jaiswal had tendered his evidence by way of
affidavit, Ex.DW7/A wherein he deposed that he was the proprietor of the
erstwhile firm M/s. Rapidex Offset situated at A-22, Naraina Industrial
Area, Phase-2, New Delhi which functioned from the year 1990 to 2000.
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The firm was engaged in the business of Offset printing and packing of
cartons, stickers, labels, posters, packaging material etc. He further
deposed that his firm used to make CHATMOLA empty boxes/ cartons for
defendant firm and for the first time his firm made empty box/ carton for
the defendant firm in the month of November 1990 when Sh. Ramesh
Chander, partner of defendant firm came with the pouch to be printed on
the empty boxes/ cartons. He further deposed that his firm continued to
make the empty boxes/ cartons for the defendant firm from November
1990 till the year 2000, when his firm was closed.
(112) He further deposed that the invoice bearing no. 118 dated
21.12.1991, Ex.DW1/4, was issued by his firm to M/s. Anil Food
Industries against the supply of 2100 boxes/ cartons of CHATMOLA. He
deposed that the details mentioned in the above invoice such as description
of goods, quantity and amount mentioned in the invoice are correct to the
best of his knowledge.
(113) He was duly cross-examined by the Ld. Counsel for the plaintiff.
He, in his cross-examination, was confronted with an invoice dated
24.12.1997 of Jaiswal Art Press Pvt. Ltd. Ex.DW7/P-1 and he admitted the
said invoice bears his signatures at points Y and Z. He further deposed that
his firm started printing work printing work in the month of June 1990 and
in the same month he had obtained the sales tax number. He cannot
produce any record to show that he was doing the printing work prior to
October 1991. The pouches reflected/ printed in page 2 of his affidavit
Ex.DW7/A were provided by Sh. Ramesh Chander (DW1) and he admitted
that he has no record of physical samples to refresh his memory as to what
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was being manufactured by him in the relevant period. He does not have
record of bill no.118 dated 21.12.1991, Ex.DW1/4.
(114) He further deposed that usually one month time was consumed
after a customer provided them the design to print its boxes but the same
depends upon speed of work after receiving the order. He also used to print
for M/s. Alka Food Industries (plaintiff) since 1980-1985, again said at the
time of signing the deposition that since 1990, till the date of his cross-
examination. He deposed that M/s. Rapidex Offset used to print for Alka
Food Industries since 1980-1985 till its closing by him in 2000 and they
used to print ‘Chatar Matar’ and ‘Lal Jeera’ under the firm Rapidex Offset
for Alka Food Industries. He admitted that the bills Ex.DW7/P-2 and
Ex.DW7/P-3 were issued by his firm Rapidex Offset and Jaiswal Art Press
Pvt. Ltd. and also bear his signatures at point A respectively.
(115) DW8 Sh. Jaspal Singh Mutneja had tendered his evidence by
way of affidavit, Ex.DW8/A wherein he had deposed that he was one of the
partners in erstwhile partnership firm M/s. Ishar Singh Jeet Singh situated
earlier at Gali Batashan, Khari Baoli, Delhi and later on shifted to 10109,
Library Road, Azad Market, Delhi. Apart from him, his father, namely, Sh.
Balraj Mutneja was also a partner in the said partnership firm. The said
partnership firm was dissolved subsequent to death of his father and the
copy of status of the partnership firm M/s. Ishar Singh Jeet Singh
downloaded from the website of Department of Trade and Taxes, GNCT of
Delhi is Ex.DW8/1 and the affidavit under Section 63 of Bhartiya Sakshya
Adhiniyam, 2023 in support of Ex.DW8/1 is Ex.DW8/2. He deposed that
his firm was engaged in the business of trading the confectionery items and
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had business dealings with defendant firm since long which continued till
2017 when the said partnership firm was dissolved.
(116) He further deposed that his firm had regularly purchased goods
bearing trade mark CHATMOLA from the defendant firm since January
1991 and the various bills viz. bill no. 1482 dated 19.01.1991, bill no. 1557
dated 23.01.1992 placed in bill book no.1 and bill book no.2 respectively
and carbon copies of bill no. 1530 dated 02.12.1991, bill no. 1548 dated
02.1.1992, bill no. 1962 dated 21.05.1991, bill no. 1974 dated 28.06.1991
and bill no. 1985 dated 09.08.1991 (part of Ex.DW1/29 collectively) were
issued by M/s. Anil Food Industries/ defendant to the firm M/s. Ishar Singh
Jeet Singh against the purchase of the goods as mentioned in the said bills/
invoices. He deposed that the second copy of the above invoices (except
invoice no. 1482 dated 19.01.1991 and invoice no. 1557 dated 23.01.1992)
were received by his firm against the delivery of goods as mentioned in the
particular invoice from M/s. Anil Food Industries/ defendant. The said
copies were further returned to the defendant firm after the delivery of
above goods under the signatures of one of the partner of their firm.
(117) He further deposed that the invoices bearing nos. 1530 dated
02.12.1991, 1962 dated 21.05.1991, 1974 dated 28.06.1991 and 1985
dated 09.08.1991 bear the signatures of Sh. Balraj Mutneja and invoice no.
1548 dated 02.01.1992 bears his signature. He deposed that his firm had
business dealings with firm M/s. Alka Food Industries (plaintiff) but his
firm never purchased any goods bearing trade mark CHATMOLA from the
plaintiff firm.
TM 992/2016 & TM 924/2016 Page No. 67 of 106 Digitally signed by NEHA NEHA PALIWAL PALIWAL SHARMA SHARMA Date: 2025.04.09 17:21:38 +0530 (118) He was duly cross-examined by the Ld. Counsel for the plaintiff.
He, in his cross-examination, admitted that he and his father were having
good relations with Sh. Pritam Dass but the relations between them and the
sons of Sh. Pritam Dass soured because of the behaviour of Sh. Anil Gera
and Sh. Rakesh Gera. He admitted that Sh. Anil Kumar Gera had filed two
cases against him viz. ‘Kunal Food Products through Proprietor Anil
Kumar Gera Vs. M/s. Ishwar Singh Jeet Singh’ bearing no. CS 02/2012
before Ld. SCJ, Central, Tis Hazari Courts, Delhi and (2) ‘Alka Food Pvt.
Ltd. through Director Anil Kumar Gera Vs. M/s. Ishwar Singh Jeet Singh’
bearing no. CS 27/2012 before Ld. SCJ, Central, Tis Hazari Courts, Delhi.
(119) He deposed that he became partner in the firm in the year 1986
after his uncle Sh. Jeet Singh retired from partnership. Initially he stated
that he can bring the records of purchase for the year 1990-92 by his firm,
the relevant sale tax records, audited statements, delivery challans etc. of
the firm, however, later on stated that he cannot produce the said record
being old record. He identified the signatures of his father on two
documents pertaining to Sales Tax, Ex.DW8/P-1 (three pages) and
Ex.DW8/P-2 (two pages). He admitted that there is no stamp of M/s. Ishar
Singh Jeet Singh on the bills/ invoices Ex.DW1/29 and had volunteered
that the bills used to be signed only and not stamped. He deposed that the
plaintiff was supplying goods to them since their inception till the date they
closed their business but he cannot tell the dates or years. The witness was
confronted with six bills/ invoices viz. bill no. 1952 dated 01.04.1989, bill
no. 1960 dated 12.04.1989, bill no. 1975 dated 16.05.1989, bill no. 1997
dated 30.06.1989 and bill no. 2098 dated 10.02.1990, Ex.DW8/P-3 to
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Ex.DW8/P-7, which were admitted by the witness to be true and correct.
He, however, deposed that bill no. 2418 dated 01.04.1992, Mark A, is false
and denied the same. He volunteered that the plaintiff never made
Chatmola nor sold Chatmola nor they had purchased Chatmola from the
plaintiff.
(120) Vide separate statement of Ld. Counsel for the defendant, the
defendant’s evidence was closed on 08.07.2024 and the matter was fixed
for final arguments.
(121) Final arguments were extensively heard by the Court on
26.10.2024, 20.11.2024, 26.11.2024, 30.11.2024, 13.12.2024, 03.01.2025,
25.01.2025, 10.02.2025, 25.03.2025 and 02.04.2025. Ld. Counsels for
both the parties also filed their respective written submissions along with
judgments/ authorities in support of their respective contentions, which
have been duly considered. Considerable time was consumed in final
arguments as the file was voluminous containing numerous documents and
running into nine parts.
Issue wise findings are as follows:-
Issue No. 10:
Whether the defendant is the registered proprietor of the trade
mark ‘CHATMOLA’ under no. 557320 in class 30 and the
registration is valid and subsisting? OPD(122) The onus to prove the above issue was upon the defendant. DW1
in his evidence by way of affidavit had relied upon the original trade mark
registration certificate under no. 557320 in class 30, Ex.DW1/32 and theTM 992/2016 & TM 924/2016 Page No. 69 of 106
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original Legal Proceeding Certificate pertaining to trade mark application
no. 557320 in Class 30, Ex.DW1/33 in the name of DW1 Ramesh Chander
trading as Anil Food Industries. Perusal of Ex.DW1/32 reveals that trade
mark CHATMOLA along with pouch image/ device containing the
illustration of baby elephant with raised trunk and distinctive bubbles, was
registered in the name of the defendant in class 30 under no. 557320 on
28.08.1991 and the certificate was issued in February 2008. Perusal of
Ex.DW1/33 reveals that the same is the Legal Proceeding Certificate with
respect to word mark CHATMOLA and device of baby elephant with
distinctive bubbles in class 30 confectionery goods. The registration date
is mentioned as 28.08.1991 whereas the certificate is valid upto 28.08.2031
having been renewed on 28.08.2021 and the certificate date being
29.02.2008. Thus, as per Ex.DW1/32 and Ex.DW1/33 the defendant is
having registration of word mark CHATMOLA and device of baby
elephant with distinctive bubbles in his favour since the date of application,
that is, 28.08.1991. The device of baby elephant along with distinctive
bubbles is identical with Ex.DW1/1, which is the pouch of the defendant/
counter claimant in which the defendant/ counter claimant claims to sell its
product CHATMOLA since January 1991. Perusal of Ex.DW1/1 further
reveals that the same is in yellow, orange and red colour combination
having the illustration of baby elephant with distinctive bubbles and name
Rinkas CHATMOLA printed on it.
(123) Though the user mentioned in Ex.DW1/33 is ‘proposed to be
used’, however, it is submitted by the Ld. Counsel for the defendant that
the same is a typographical error and on their application sent by way of e-
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mail, the trade mark Registry had rectified the said error and DW4 who
was the summoned witness from the trade mark Registry, had brought
before the Court the LPC Ex.DW4/P-7 showing user since 08.01.1991. It
is submitted by the Ld. Counsel for the plaintiff that the said document
Ex.DW4/P-7 cannot be relied upon as the said document was contrary to
the document which was earlier brought by the witness in his initial
examination-in-chief and which was part of Ex.DW4/A (colly). DW4 had
admitted that user date was not mentioned in the LPC which was part of
Ex.DW4/A (colly) and changes were made by the Registry in the records
and that the later documents filed by him on the dates of subsequent re-
examinations were the copies of the photocopies submitted by the
defendant to the department, which were accepted by the department on
the basis of the affidavit of the defendant.
(124) Be that as it may, all the LPCs Ex.DW1/33, Ex.DW4/P-7 and
LPC which is part of Ex.DW4/A (colly running into 71 pages) show that
mark CHATMOLA along with device of baby elephant with distinctive
bubbles was registered in the name of defendant Anil Food Industries and
the registration is valid upto 28.08.2031 and the mark was registered since
28.08.1991. The discrepancy with respect to the user date can be set to rest
by looking into the documents which were filed by the plaintiff’s counsel
before the Court along with list on 16.03.1992, under the signatures of
original plaintiff Sh. Pritam Dass. In page no.5 of the list of documents
filed by the plaintiff on 16.03.1992, the plaintiff had filed TM-1 of
application no. 557320 which reflects that the said copy was the copy of
the certified copy obtained by the plaintiff from trade mark Registry and it
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shows that on 28.08.1991 application was moved by Smt. Kaushalya Devi
and Sh. Ramesh Chander, trading as Anil Food Industries, in Class 30 in
respect of confectionery goods for trade mark CHATMOLA having the
device of baby elephant with distinctive bubbles and it was categorically
stated in the said application that the trade mark was continuously used
since 08.01.1991. As the document was filed under the signatures of the
plaintiff and was filed stating that the same is a copy of the certified copy
obtained by the plaintiff from the trade mark Registry, therefore, the
plaintiff had admitted that the user was claimed of trade mark
CHATMOLA with device of baby elephant with distinctive bubbles by
defendant since 08.01.1991 and the date of the application was 28.08.1991.
(125) PW1 had also admitted in his cross-examination that application
no. 557320 in class 30 dated 28.08.1991 was filed by the defendant for
trade mark CHATMOLA and that the same was registered and there is no
other registration of trade mark CHATMOLA in class 30 other than
registration no. 557320. He further could not state before the Court
whether any opposition or appeal was filed by the plaintiff against the
registration of the said trade mark CHATMOLA in favour of the defendant.
Thus, admittedly no opposition or appeal was filed by the plaintiff against
the registration of trade mark CHATMOLA with the device of baby
elephant containing distinctive bubbles and therefore, the registration of
trade mark CHATMOLA along with the device of baby elephant with
distinctive bubbles had attained finality. It was held by the Hon’ble
Mysore High Court in the case of K.R. Chinnakrishna Setty & Ors. vs. Sri
Ambal & Co. Madras, AIR 1973 Mys 74 that decision of an Assistant
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Registrar on an application filed for registration of the mark will operate as
res judicata in the proceeding under Section 105 of the Act in which the
same question arises for consideration.
(126) The plaintiff had also filed applications under class 30 and class
5 bearing no. 539636 dated 08.11.1990 (additional representation of the
same being Ex.PW1/2) and 540086 dated 16.11.1990 respectively for
registration of trade mark CHATMOLA. PW1, however, had admitted that
these applications were opposed by the defendant and that the status of
these applications was withdrawn and abandoned. DW1 had also tendered
alongwith his affidavit the certified copy of the order dated 04.03.1999
passed by the Ld. Registrar of trade marks, Ex.DW1/34, whereby the
oppositions filed by the defendant/ counter claimant bearing no. DEL 5770
and DEL 9123 to the above applications of the plaintiff were allowed and
the applications no. 539636 in class 30 and 540086 in class 5 were refused
for registration. The said order remains undisputed by the plaintiff.
(127) The Trade Marks Act, 1999 came into force w.e.f. 15.09.2003
and the present proceedings were instituted in the year 1992 and therefore,
are governed by the Trade and Merchandise Marks Act, 1958. As per
Section 111 (3) of the 1958 Act which is pari materia to Section 124 of the
1999 Act, if no plea regarding the invalidity of the registration of the trade
mark is raised then the issue as to the validity of the registration of the trade
mark concerned shall be deemed to have been abandoned. This section
further states that the final order made in rectification proceedings shall be
binding upon the parties and the Court shall dispose off the suit
conformably to such order in so far as it relates to the issue of validity of the
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registration of the trade mark. Thus, the consolidated reading of the section
reveals that the decision in rectification proceedings with respect to the
validity or otherwise of the mark, is binding upon the Court and even the
proceedings have to be stayed by the Court if the issue of invalidity is
raised. Thus, by necessary implication if one party had asserted the
registration of the mark in its favour before the Court by the Registrar and
the other party had not opposed the same before the Court by raising the
issue of invalidity of the mark, the issue of validity is abandoned and
therefore, had attained finality. Reliance is placed upon the case law titled
as Patel Field Marshal Agency vs. P.M. Diesels Ltd. & Ors., (2018) 2 SCC
112 wherein it was held by the Hon’ble Supreme Court that the decision of
the Tribunal on the issue of validity of registration of mark will bind the
Civil Court and the Civil Court will dispose off the suit in conformity with
such order.
(128) In the present case in hand as well, after the trade mark
CHATMOLA was registered in favour of the defendant, which registration
dates back to the date of application viz. 28.08.1991, the defendant applied
for amendment of written statement, which was allowed and amended
written statement was taken on record to which replication was also filed
by the plaintiff. Thereafter the above additional issue was framed vide
order dated 20.04.2012. However, no issue with respect to the invalidity of
the said registration of trade mark CHATMOLA under no. 557320 in class
30 was raised by the plaintiff and no rectification proceedings were
instituted before the Ld. IPAB/ Hon’ble High Court of Delhi and therefore,
the registration of the said mark in favour of the defendant had attained
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finality.
(129) Further, as per Section 32 of the 1958 Act the original
registration of the trade mark shall after the expiration of seven years from
the date of such registration be taken to be valid in all respects, unless it is
proved that the original registration was obtained by fraud or that the trade
mark was registered in contravention of Section 11 or that the trade mark
was not at the commencement of the proceedings distinctive of the goods
of the registered proprietor. The onus to prove fraud or contravention of
the provisions of Section 11 or non-distinctiveness of goods, was on the
plaintiff. The plaintiff has failed to prove fraud and in fact, admittedly, the
oppositions filed by the defendant to the applications of the plaintiff were
allowed and the applications of the plaintiff were abandoned/ withdrawn
and that there is registration of trade mark CHATMOLA in favour of the
defendant. Though the defendant was unable to conclusively prove the
order of Ld. Registrar of trade marks dated 28.11.2003, Mark DW1/B, as
the document was not traceable before the trade mark Registry and was
reconstructed only on the basis of the documents provided by the defendant
on affidavit, however, it is admitted by PW1 that the application of the
defendant bearing no. 557320 qua trade mark CHATMOLA was registered
and no objection/ rectification proceedings to the said registration have
been filed by the plaintiff.
(130) In view of the above discussion and findings, it is held that the
defendant is the registered proprietor of trade mark CHATMOLA under no.
557320 in class 30 and that the registration is valid and subsisting.
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claimant and against the plaintiff/ non-counter claimant.
Issues no.5 and 8:
Whether the plaintiff is the owner of the design and has
copyrights in the artistic cartoon Tini Mini/ Tiny Miny since the
year 1988? OPP
Whether the defendant is holding rights in the label consisting of
device of baby elephant and other distinctive features? OPD(132) Both these issues are taken up together being interconnected and
both the parties were having the respective onus to prove that they were the
owners of the design/ had copyright in the device of baby elephant with
other distinctive features.
(133) It is the case of the plaintiff that the defendant had imitated trade
mark CHATMOLA of the plaintiff, used by the plaintiff since 01.11.1990
and adopted by the plaintiff since July 1990 and the design of the device of
baby elephant with other distinctive features, which was used by the
plaintiff with its other trade mark Tini Mini/ Tiny Miny since 1988 in
packing Ex.PW1/17. Perusal of Ex.PW1/17 reveals that the same is the
packing/ label of Tiny Miny having the device of baby elephant with
distinctive bubbles containing the same colour combination, illustration of
baby elephant with raised trunk and distinctive bubbles similar to
Ex.DW1/1.
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the pleadings with respect to registration of trade mark Tini Mini/ Tiny
Miny and the registration of packing label of Tini Mini/ Tiny Miny with
Registrar of Copy Rights, however, questions were put to PW1 in the
cross-examination qua the same. It is not in dispute between the parties
that word mark Tini Mini is registered in favour of the plaintiff vide
registration certificate Ex.PW1/1 and it is further not in dispute that the
said registration certificate is not with respect to any label mark. PW1 had
further relied upon various labels, Ex.PW1/16 (colly), of trade mark Tini
Mini/ Tiny Miny in his evidence by way of affidavit, which reflect that the
plaintiff was selling the product under the trade mark Tini Mini, however,
not with one particular packing/ label but with various different packings
and labels. Thus, any one packing or label could not be said to be
associated and distinctive with respect to trade mark Tini Mini.
(135) It is the case of the plaintiff that it is the owner of copyright of
packing Ex.PW1/17 having the device of baby elephant with distinctive
bubbles and unique colour combination. It had engaged the services of
Ankur Advertising and Marketing, now known as Ankur Media Pvt. Ltd.
for designing of label, Ex.PW1/17, for trade mark Tini Mini, for which bill
dated 31.08.1988, Ex.PW1/20-A ,was raised and payment for the same was
made by cheque.
(136) Ex.PW1/20-A is the invoice no. 218/A/88-89/Aug. dated
31.08.1988 issued in favour of the plaintiff by Ankur Advertising and
Marketing for a total amount of Rs.750/- towards the cost of one carton
design for Alka Tiny Miny dibbi. However, along with the said bill, no
document was placed on record by the plaintiff in order to indicate that
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towards which design of Tiny Miny dibbi, the said bill was raised by Ankur
Advertising. The original art work was not placed by the plaintiff on
record before the Court at the time when the pleadings were filed, as is
manifest in the interim injunction order dated 24.04.1992. Even in the
appeal filed against the said order before the Hon’ble High Court of Delhi,
the plaintiff failed to place on record the original art work despite the
directions of Hon’ble High Court of Delhi as mentioned in the order of the
Hon’ble High Court dated 11.10.1995.
(137) It is argued by the Ld. Counsel for the plaintiff that PW4 is a
summoned witness and he had brought before the Court the art work of
label Tiny Miny, negative-positive films of label Tiny Miny and the final
label along with the record of the bill Ex.PW1/20-A. Perusal of deposition
of PW4 shows that the same has been filed by way of affidavit and has been
filed before the Court by the Ld. Counsel for the plaintiff under his
signatures. PW4 had deposed that he is the authorized representative of
Ankur Media Pvt. Ltd. formerly known as Ankur Advertising and
Marketing and had been authorized by the Director of the company to
appear before the Court. He had brought the records of bill, Ex.PW1/20-A,
and had also brought the art work of label Tiny Miny, negative-positive
films of Tiny Miny and the final label. The affidavit of PW4 along with all
these documents was exhibited as Ex.PW4/A (collectively), however, the
exhibition of the documents was objected to by the Ld. Counsel for the
defendant on the ground that the additional documents were not on judicial
record and the permission of the Court was not obtained for filing the same
on record. PW4, in his cross-examination, admitted that there was no
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specific instruction on the summons to bring any other document except
the record of Ex.PW1/20-A. Thus, these art works/ negatives were filed by
the witness/ PW4 for the first time before the Court during his examination.
PW4 was unable to answer that whether his firm/ he can produce the
preceding/ subsequent bill of Ex.PW1/20-A. He was unable to depose
whether the company kept record of all its clients for the last 30-40 years
nor could he tell whether he could bring the record of any other client
before the Court of that period. He could not answer the question that how
the copy of bill was preserved. He was not able to depose whether all the
documents since the year 1987 to 1988 were preserved by its company or
whether only the documents which were part of Ex.PW4/A were
preserved. Thus, it is clear that these documents were not filed before the
Court earlier and were filed along with the affidavit of the witness, which
affidavit was filed under the signatures of the Ld. Counsel for the plaintiff
though the witness was a summoned witness. No permission of the Court
was taken for filing the documents in the year 2023 before the Court
whereas the matter is pending between the parties since the year 1992 and
therefore, the documents which are part of Ex.PW4/A (colly) except the
copy of bill Ex.PW1/20-A, cannot be considered and relied upon.
(138) Ex.PW1/20-A though proved, however, the same cannot
conclusively indicate that towards which carton design of Tini Mini dibbi
the said bill was issued. No carton of Tini Mini was placed on record by the
plaintiff along with its documents. Further, various labels/ pouches of Tini
Mini have been placed on record as is deposed by PW1 and also manifest
by Ex.PW1/16 (colly). There are various designs of Tini Mini under which
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the product under the mark Tini Mini was sold and therefore, it cannot be
said that bill Ex.PW1/20-A was with respect to the label containing the
device of baby elephant with distinctive bubbles.
(139) The work containing the device of baby elephant with distinctive
bubbles, Ex.PW1/17, was got registered with the Registrar of Copyrights
by the plaintiff and PW3 had brought before the Court the certificate of
registration no. A51887/92 along with copy of the work, Ex.PW3/1 (colly).
However, the said certificate of registration was canceled by the order of
Hon’ble Copyright Board dated 25.08.2005, Ex.DW1/37, and the Ld.
Registrar was directed to expunge the artistic work entered in the register
of Copyright as A51887/92. Appeal was filed by the plaintiff against the
said order before the Hon’ble High Court of Delhi which was disposed off
vide order dated 05.11.2008, Ex.DW1/38, and it was held in appeal that
though registration granted in favour of the plaintiff would be treated as
revoked, however, the original application filed by the plaintiff would be
treated as revived and would be re-decided. The defendant had also
applied for registration of Copyright of label CHATMOLA with the device
of baby elephant with distinctive bubbles and the same was registered in
favour of the defendant as registration no. A57086/99 dated 08.12.1999
Ex.DW1/35 and registration no. A65448/2003 dated 20.10.2003
Ex.DW1/36, however, the said registration certificates/ Copyrights
registered under no. A57086/99 dated 08.12.1999 Ex.DW1/35 and
registration no. A65448/2003 dated 20.10.2003 Ex.DW1/36, were
revoked/ canceled by the Hon’ble High Court of Delhi vide order dated
02.05.2024 Ex.DW1/PZ on the petitions filed by the plaintiff herein, with
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directions to the Ld. Registrar of Copyrights to revive the original
applications filed by the respondent/ defendant herein, seeking registration
of Copyright and to re-decide them.
(140) Thus, as on date there is no copyright registration of the device
of baby elephant with distinctive bubbles in favour of any of the party,
however, the applications filed by the parties can be looked into. As per
Ex.PW3/1 the author of the artistic work in the application of the plaintiff
was mentioned as ‘M/s. Ankur Advertising and Marketing’, the year of
publication was mentioned as 1988, the plaintiff was mentioned as its
owner and the date of application was mentioned as 16.06.1992. Thus, the
date of the application is post the institution of the present suit and counter
claim. As per the first application of the defendant for which registration
certificate Ex.DW1/35 was issued, the name of the author was mentioned
as DW1 and the year of publication was mentioned as 1991 and as per the
second application of the defendant for which registration certificate
Ex.DW1/36 was issued, the name of the author was mentioned as Sh.
Baldev Singh, the year of publication was mentioned as 1990 and the date
of the application was 16.11.2002. It was deposed by DW1 in his cross-
examination that the art-work was prepared and designed by Mr. Baldev
Singh but the art work was his and Baldev Singh’s combined idea as after
the preparation of the same by Baldev Singh, DW1 had modified the same
by making minor changes and suggesting colours. He admitted that he had
filed two applications for registration of copyright and admitted that
though Baldev Singh was the author in the first application also, the agent
wrongly mentioned the name of DW1 as author and therefore, DW1 filed
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the second application through another agent wherein the name of the
author was mentioned as Baldev Singh.
(141) In the present case, the defendant had filed along with the written
statement and counter claim, the affidavit of Baldev Singh dated
24.02.1992, Ex.DW1/3, before the Court. Perusal of the said affidavit
reveals that the same also contains the carton pouch packing titled
CHATMOLA having the device of baby elephant with distinctive bubbles
over it. In the said affidavit, Ex.DW1/3, Mr. Baldev Singh had further
deposed that he had prepared the said carton pouch in August 1990, had
handed over the same to DW1 on 16.08.1990 and had charged Rs.150/- in
cash for the same. Mr. Baldev Singh had also appeared before the Court as
defendant’s witness, DW6, and had affirmed his earlier affidavit dated
24.02.1992 Ex.DW1/3 before the Court. DW6 had deposed before the
Court on the same lines as that of his earlier affidavit, Ex.DW1/3, and had
deposed that he had prepared the design of carton pouch in August 1990 for
defendant and had handed over the design, Ex.DW1/2, which is the design
of baby elephant with distinctive bubbles with trade mark CHATMOLA
written therein to DW1 on 16.08.1990 and had charged Rs.150/- for the
same. Thus, the defendant has been able to examine the author of the
artistic work, Ex.DW1/2, before the Court, who had deposed that he had
created the said work in August 1990 and had handed over the same to
DW1. The defendant has also filed the copy of the said original art-work,
Ex.DW1/2, before the Court along with the written statement and had also
shown the original art-work before the Court during arguments on the
application under Order XXXIX Rule 1 and 2 CPC and thereafter had filed
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the same before the Court in the deposition of DW1. Per contra, as
discussed above, the plaintiff had failed to file the original art-work before
the Court at the time of arguments on the application under Order XXXIX
Rule 1 and 2 CPC and also even before the Hon’ble High Court of Delhi
during arguments on appeal against the order under Order XXXIX Rule 1
and 2 CPC despite being given opportunity for the same, as is manifest in
the order of the Hon’ble High Court of Delhi dated 11.10.1995. The
plaintiff by way of deposition of PW4 wants to place on record the art-work
of label Tiny Miny, negative-positive films of label Tiny Miny and the final
label, however, as discussed above, no permission of the Court was taken
by the plaintiff to place them on record and these documents cannot be
considered and relied upon as doubt arises regarding the credibility of these
documents.
(142) In view of the above discussions and findings, it is held that the
defendant has been able to establish to the extent of preponderance of
probabilities that the defendant is holding rights in the label consisting of
device of baby elephant with other distinctive features and that the plaintiff
is unable to establish even to the extent of preponderance of probabilities
that the plaintiff is the owner of design and has copyright in the artistic
cartoon Tiny Miny, Ex.PW1/17, since 1988.
(143) Both the issues are accordingly decided in favour of the
defendant/ counter claimant and against the plaintiff/ non-counter
claimant.
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Whether the plaintiff is owner of the trade mark ‘CHATMOLA’
having priority of use? OPP
Whether the defendant is the first and prior adopter/ user of the
trade mark ‘CHATMOLA’? OPD
(144) Both these issues are taken up together being interconnected and
both the parties were having the respective onus to prove that they were the
prior user/ adopter of trade mark CHATMOLA.
(145) It is averred by the plaintiff that they had adopted trade mark
CHATMOLA in July 1990 and had launched the same in the market on
01.11.1990. Per contra, it is averred by the defendant that they had first
adopted the trade mark CHATMOLA in August 1990 and had launched the
same in the market in January 1991.
(146) The defendant in order to prove its user since January 1991 and
adoption of the mark since August 1990, had examined its partner/
proprietor as DW1, witness from newspaper Sandhya Times as DW5,
designer Sh. Baldev Singh as DW6, proprietor of printers Rapidex Offset
as DW7 and one of the partner of partnership firm M/s. Ishar Singh Jeet
Singh as DW8.
(147) DW1 had deposed that Mr. Baldev Singh/ DW6 had created/
devised the label/ artistic work CHATMOLA containing the device of baby
elephant with distinctive bubbles, Ex.DW1/2, and that DW6 had also given
his affidavit dated 24.02.1992, Ex.DW1/3, to the said effect containing
replica of label, Ex.DW1/2, which was filed by the defendant along with its
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pleadings on 24.02.1992. As discussed in the preceding issue, the
affidavit, Ex.DW1/3, was affirmed by DW6 in his deposition before the
Court. DW6 had deposed that he had prepared the design of carton pouch
packing titled ‘CHATMOLA’ with the device of baby elephant with
distinctive bubbles for the first time in August 1990 for the defendant, had
handed over the same to the defendant on 16.08.1990 and had charged a
sum of Rs.150/- in cash from DW1 for the same. The artistic design of
CHATMOLA containing the device of baby elephant along with
distinctive bubbles annexed along with the affidavit is identical with the
art-work, Ex.DW1/2. DW6 had further identified the design, Ex.DW1/2,
before the Court. He had remained consistent in his cross-examination that
he had not maintained any book of account nor issued any bill nor had
issued any certificate in respect of any art work to DW1. Nothing has come
in his cross-examination which could assail his credibility and considering
that his initial affidavit was filed along with pleadings way back on
24.02.1992 and he had deposed before the Court on 02.07.2024 on the very
same lines, his testimony is believed. Thus, it is held that the defendant had
adopted the mark CHATMOLA containing the device of baby elephant
with distinctive bubbles in August 1990.
(148) DW1 had further deposed by way of his affidavit that he had got
the product CHATMOLA packed from various parties namely M/s.
Pranshu Packaging, M/s. Rapidex Offset and M/s. S.K. Enterprises. He
had made payment of Rs.15,130/- to M/s. Pranshu Packaging on bill no.
036 dated 17.10.1990, Ex.DW1/7, and the same is clear from the copy of
passbook of UCO Bank of DW1, Ex.DW1/8. Perusal of Ex.DW1/7 shows
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that the same is a bill issued by Pranshu Packaging in favour of defendant
firm dated 17.10.1990 for 110 mm and 150 mm Rinkas Chatmola for
Rs.15,130/- and the corresponding amount was deducted by way of cheque
no. 878 vide entry dated 12.01.1991 from the bank account of the
defendant firm as manifest from passbook Ex.DW1/8. Thus, from the said
testimony it is shown that preparations were made by the defendant to get
the material packed under the mark Rinkas CHATMOLA in October 1990.
(149) It is further deposed by DW1 that they had got issued caution
notice in newspaper Sandhya Times dated 07.12.1991, Ex.DW1/9, against
invoice number 4532 dated 10.12.1991, Ex.DW1/10, and had made
payment of Rs.2,100/- to advertiser M/s. Kamal Mahajan & Company and
the same is also clear from the entry in the passbook of UCO Bank of the
defendant. Perusal of Ex.DW1/9 reveals that the same is part of newspaper
Sandhya Times printed on 07.12.1991 containing the caution notice issued
by the defendant dated 11.11.1991. Ex.DW1/10 is the bill issued by Kamal
Mahajan & Company in favour of the defendant dated 10.12.1991 towards
publication in Sandhya Times on dated 07.12.1991 for a total amount of
Rs.2,100/-. It is further mentioned in the bill that the said amount of
Rs.2,100/- had been received by the advertiser from the defendant by way
of cheque no. 549737 dated 16.12.1991. The entry in passbook,
Ex.DW1/8, also reveals that Rs.2,100/- were debited from the account of
the defendant on 18.12.1991 by way of cheque no. 737. DW5, who is the
summoned witness from Sandhya Times, had also brought before the
Court the certified copy of page no.4 from the Delhi edition of newspaper
Sandhya Times dated 07.12.1991, Ex.DW5/B, and had deposed in re-
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examination that Ex.DW1/9 is the original copy of Ex.DW5/B. Therefore,
the passbook, Ex.DW1/8, along with the invoice, Ex.DW1/10, and the
newspaper, Ex.DW1/9/ Ex.DW5/B, establish that the defendant had got
issued caution notice on 07.12.1991 with respect to trade mark
CHATMOLA qua confectionery in class 30.
(150) It is further deposed by DW1 that he had got the trade mark
CHATMOLA advertised in video cassettes of Hindi films Pratikar, Akayla
and Baharon Ki Manzil through advertiser M/s. Reach Video Advertising
& Ad Films Pvt. Ltd. and qua the same, invoice of Rs.6,000/- was issued by
advertiser dated 06.12.1991, Ex.DW1/25 and the same is also corroborated
from the copy of passbook, Ex.DW1/8. He had further deposed that he had
again got trade mark CHATMOLA advertised in video cassettes of Hindi
films Rupay Dus Karod and Karam Yodha through advertiser M/s. Reach
Video Advertising & Ad Films Pvt. Ltd. and qua the same, invoice of
Rs.4,000/- was issued by advertiser dated 17.01.1992, Ex.DW1/26.
(151) Perusal of Ex.DW1/25 reveals that the same is invoice dated
06.12.1991 issued by M/s. Reach Video Advertising & Ad Films Pvt. Ltd.
in favour of the defendant for Rs.6,000/- for advertisement of the product
Rinkas CHATMOLA in Hindi films Pratikar, Akayla and Baharon Ki
Manzil. Perusal of Ex.DW1/8 which is the passbook, also reveals that
Rs.6,000/- were debited from the account of the defendant on 06.02.1992
vide cheque no. 742. The plaintiff in its replication had admitted that trade
mark Hangama was advertised by its sister concern in the video cassette of
Pratikar though it had further stated that it had never seen the
advertisement of the defendant in the said video cassette. The plaintiff is
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not able to explain that trade mark Hangama belongs to which of its sister
concern. It had admitted that there was in fact a video cassette of film
Pratikar in which advertisements were there. The defendant is able to show
from the deposition of DW1 that it had got its product advertised through
advertising agency M/s. Reach Video Advertising & Ad Films Pvt. Ltd.
vide bills/ invoices Ex.DW1/25 and Ex.DW1/26 on 06.12.1991 and
17.01.1992 respectively and thereby had made investments for
advertisement of trade mark CHATMOLA. DW1 had further relied upon
bill of Sunita Printers dated 04.01.1992, Ex.DW1/28, whereby it had got
published pocket calenders duly printed with the trade mark CHATMOLA
and stepney cover printed in five colours with trade mark CHATMOLA
and had spent Rs.2,400/- for the same. He had also relied upon
Ex.DW1/27 which is the bill of one Vijay Advertisers for CHATMOLA
stickers of Rs.1,200/- dated 22.06.1991. He had also relied upon the
booklet of Lions Club, Delhi Model Town wherein his advertisement has
been published as Ex.DW1/30. The booklet is dated 22.09.1991. From
these documents, the defendant is able to establish at-least to the extent of
preponderance of probabilities that it had incurred expenditure for
advertisement of trade mark CHATMOLA during the period commencing
from June 1991 till January 1992 when the present suit was filed.
(152) DW1 had also produced before the Court the original bill book
having bills from serial no. 1451 to 1500 from the period 22.10.1990 till
28.03.1991 and the original bill book having bills from serial no. 1551 to
1594 from the period 09.01.1992 till 28.03.1992, all collectively exhibited
as Ex.DW1/29 (colly). The said bill books contain the carbon copy of bills
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and are in seriatim. The same further reveals that for the first time on
08.01.1991 the defendant had sold product by the name of Rinkas
CHATMOLA to Anju Sweet Products, Nawab Ganj vide bill no. 1477
dated 08.01.1991 and thereafter had sold the same vide bill no. 1481 to
Neha Enterprises, Jhilmil Colony on 18.01.1991, thereafter had sold the
same vide bill no. 1482 to Ishar Singh Jeet Singh, Gali Batasha, Khari
Baoli on 19.01.1991, thereafter had sold the same vide bill no. 1483 to
Delhi Sales Agency, Shivaji Road on 19.01.1991. The second bill book
also shows that on 10.01.1992 vide bill no. 1554 product Rinkas
CHATMOLA was sold by the defendant to one R.L. Dogra vide cash
payment, thereafter on 16.01.1992 vide bill no. 1555 product Rinkas
CHATMOLA was sold by the defendant to Taneja Confectioners and
Bakers, thereafter on 23.01.1992 vide bill no. 1557 product Rinkas
CHATMOLA was sold by the defendant to Ishar Singh Jeet Singh and so
on.
(153) The defendant/ DW1 in his subsequent examination-in-chief had
also filed before the Court the carbon copy of bills which were earlier
marked as Mark DW1/A (colly) and thereafter the same were exhibited as
part of Ex.DW1/29 (colly) and the same are carbon copy of bills for the
period of April 1991 till December 1991 containing invoices no. 1957,
1962, 1972, 1974, 1984, 1985, 1517, 1525, 1530, 1544 and 1548 etc. along
with three other cash bills bearing no. 1997, 2000 and 1532.
(154) DW8 Sh. Jaspal Singh Mutneja had deposed that he was the
partner of erstwhile partnership firm M/s. Ishar Singh Jeet Singh, which
dissolved subsequent to the death of his father. He deposed that the firm
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was engaged in the business of trading confectionary items and the firm
regularly purchased goods bearing trade mark CHATMOLA from
defendant firm since January 1991. He had affirmed the bill no. 1482 dated
19.01.1991, bill no. 1557 dated 23.01.1992 (which are part of bill books
no. 1 and 2 respectively) and had also affirmed carbon copies of bill no.
1530 dated 02.12.1991, bill no.1548 dated 02.01.1992, bill no. 1962 dated
21.05.1991 and bill no. 1974 dated 28.06.1991 and bill no. 1985 dated
09.08.1981 (all part of Ex.DW1/29 colly) and identified either his
signatures or the signatures of his father on the said bills. He further
deposed that though his firm had business dealings with the plaintiff,
however, they had never purchased goods bearing trade mark
CHATMOLA from the plaintiff firm.
(155) Perusal of the bill books filed by the defendant shows the carbon
copy of bills maintained in the regular course of business. Some of the bills
are further affirmed by DW8, who was one of the partner of erstwhile firm
M/s. Ishar Singh Jeet Singh. Therefore, from the above discussion it is
established, at least to the extent of preponderance of probabilities, that the
defendant had launched the product in market and was selling the same to
different vendors since 08.01.1991. Thus, the defendant is able to establish
its user of the trade mark CHATMOLA since January 1991 and the
adoption of the label with the device of baby elephant with distinctive
bubbles along with the mark CHATMOLA since August 1990.
(156) Though defendant had relied upon Ex.DW1/X, which is the
alleged Diwali gift pack of the plaintiff company; Ex.DW1/39, which is the
alleged greeting card issued by the plaintiff company; and Ex.DW1/40,
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which is the alleged price list issued by the plaintiff company, however,
had admitted that he is not the author of these documents nor could he
disclose before the Court the source from where he obtained those
documents. Ex.DW1/39 and Ex.DW1/40 were even confronted to PW1 as
Mark X-2 and Mark X-1 respectively, however, he denied issuance of any
such price list w.e.f. 01.02.1991 or getting published any such greeting
card and therefore, these documents cannot be looked into.
(157) The plaintiff, per contra, had claimed adoption of trade mark
CHATMOLA since July 1990 and the launch of product with trade mark
CHATMOLA in market since November 1990. PW1 had deposed that he
had engaged the service of M/s. Vikas Laminator Pvt. Ltd. for designing of
label pouch CHATMOLA, the said company had in-turn engaged services
of PW6 Sh. Vidya Bhushan for doing the said job and Sh. Vidya Bhushan
had even given his affidavit, Ex.PW1/18, with respect to the same.
Ex.PW1/18 is affidavit of Sh. Vidya Bhushan dated 09.03.1992 wherein it
was stated by PW6 that he was given job by M/s. Vikas Laminator Pvt. Ltd.
Noida on behalf of the plaintiff firm to alter/ adjust trade mark
CHATMOLA in place of trade mark CHATAR MATAR in the art-work
and he had completed the work and returned the art-work with the name
CHATMOLA to M/s. Vikas Laminator during second week of July 1990.
PW6 had also tendered his evidence by way of affidavit before the Court
wherein also he had deposed that in July 1990 he was asked by Sh. Mahesh
Rustagi, Director of Vikas Laminator to insert CHATMOLA in place of
CHATAR MATAR pouch label and thereafter he prepared label pouch
Ex.PW6/1 and gave the art-work to Sh. Mahesh Rustagi in July 1990. The
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veracity of initial affidavit Ex.PW1/18 of PW6 is doubtful as it is deposed
by PW6 during his cross-examination that he had not gone to any Court
premises or to any Oath Commissioner or Notary to get the said affidavit
attested but had signed the same in his office. Once it is admitted by PW6
that he had not signed the affidavit before the Oath Commissioner or
Notary nor had gone to any Court complex and had instead signed the same
in his office, Ex.PW1/18 cannot be considered to be an affidavit.
(158) PW6 had also relied upon the pouch of CHATMOLA,
Ex.PW6/1. Exhibition of the said pouch was objected to by Ld. Counsel
for the defendant on the ground that the same was not referred to in the
affidavit of PW6. Perusal of Ex.PW6/1 reveals that the same is a packing
by the nomenclature Alkas CHATMOLA, however, no date is mentioned
on the said packing that when the same was published. PW6 had also
deposed that the original art-work was not placed on record by him as the
same was given to printer Mr. Mahesh Rustagi. However, there is no
documentary evidence on record to substantiate the testimony of PW6 that
he had handed over the art-work to printer M/s. Vikas Laminator in July
1990.
(159) Witness from M/s. Vikas Laminator Pvt. Ltd., PW5 Mr. Mahesh
Rustagi, had identified his signatures as well as signatures of his brother on
bills Ex.PW1/19 and Ex.PW1/20 respectively. Perusal of bill no. 145 dated
08.09.1990 (Ex.PW1/19) reveals that the same is a duplicate bill issued by
Vikas Laminator Pvt. Ltd. in favour of Alka Food Industries (plaintiff), as
per which printed and laminated rolls in roll form size 110 mm of
CHATMOLA were sold by Vikas Laminator Pvt. Ltd. to the plaintiff.
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Ex.PW1/20 is another bill bearing no. 345 dated 16.12.1991 of printed and
laminated rolls of CHATMOLA in favour of the plaintiff, in which PW5
had identified the signatures of his brother. Though PW5 in his cross-
examination had deposed that their firm is no longer functioning and he
could not produce the record maintained by them with respect to the said
bills, however, the witness had identified his signatures over the bill dated
08.09.1990 Ex.PW1/19. In view of the same, it can be said to the extent of
preponderance of probabilities that the rolls bearing mark CHATMOLA
were printed and laminated by PW5 on the asking of the plaintiff in
September 1990. However, again the bill is of September 1990 only. As
discussed above, there is no documentary evidence on record to
substantiate the deposition of PW5 and PW6 that PW6 on the asking of
PW5 had prepared the pouch Ex.PW6/1 and original art-work and handed
over the same to PW5 in July 1990. Thus, there is no documentary
evidence on record with respect to the averment of July 1990 and the first
usage of mark CHATMOLA by the plaintiff is shown by the plaintiff as
that of September 1990 only. This usage is also only with respect to getting
the rolls printed from a printer and does not show the actual launch of the
product in the market for public consumption. Per contra, as discussed
earlier, the defendant by way of deposition of DW6 Baldev Singh
combined with the deposition of DW1 had proved before the Court that the
design of carton pouch packing CHATMOLA was prepared by DW6 on the
asking of DW1 in August 1990 and that DW6 had handed over the same to
DW1 on 16.08.1990.
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(160) The plaintiff has to show prior market user of the said mark/
availability of the mark in the market, than that of the defendant, in order to
show that it had vested rights in the trade mark CHATMOLA which are
required to be protected. It is averred by the plaintiff that it had launched
the product by the name of CHATMOLA in the market in November 1990
and in order to prove the same had relied upon various bills. The first bill
relied upon by the plaintiff is dated 13.11.1990 Ex.PW1/3 bearing no. 2229
in favour of firm M/s. Ishar Singh Jeet Singh. Further, bill no. 2237 dated
05.12.1990 Ex.PW1/4, bill no. 2300 dated 03.05.1991 Ex.PW1/9, bill no.
2322 dated 26.06.1991 Ex.PW1/11, bill no. 2330 dated 13.07.1991
Ex.PW1/12, bill no. 2345 dated 19.08.1991 Ex.PW1/14 and bill no. 2361
dated 19.10.1991 Ex.PW1/15, reveal that the same were allegedly issued
by the plaintiff company in favour of M/s. Ishar Singh Jeet Singh.
However, the partner of M/s. Ishar Singh Jeet Singh, namely, Sh. Jaspal
Singh Mutneja had appeared before the Court as DW8/ defendant’s witness
and had denied purchasing articles bearing trade mark CHATMOLA from
the plaintiff and had denied these bills before the Court. It is the case of the
plaintiff that due to personal enmity between them and DW8, DW8 had
deposed against them and in favour of the defendant. However, DW8 in
his cross-examination had deposed that he was having cordial relations
with Sh. Pritam Dass who was the initial plaintiff and had sore relations
with the sons of Sh. Pritam Dass due to their behaviour. Suggestion was
given that two cases were filed against DW8 by the sons of Sh. Pritam Dass
in the year 2011 and the factum of litigation was admitted. However,
perusal of the pleadings reveal that the defendant way back in the year
1992, when the pleadings in the form of written statement and counter
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claim were filed before the Court, had taken a specific stand that dealers of
firm M/s. Ishar Singh Jeet Singh can depose before the Court that the sales
invoices filed by the plaintiff are false and fabricated and product under
trade mark CHATMOLA was never sold by the plaintiff to firm M/s. Ishar
Singh Jeet Singh. The said specific stand of the defendant had been
affirmed by DW8 before the Court via affidavit and it had been
categorically deposed by the witness that they had never purchased
CHATMOLA from the plaintiff. Therefore, the credibility of the above
bills Ex.PW1/3, Ex.PW1/4, Ex.PW1/9, Ex.PW1/11, Ex.PW1/12,
Ex.PW1/14 and Ex.PW1/15 are not established before the Court.
(161) Ex.PW1/5 is another bill dated 14.12.1990 of Batra Stores.
However, it is admitted by PW1 in his cross-examination that the owner of
Batra Stores, Geeta Colony, Delhi is his mausaji (maternal uncle). If the
owner was related to the plaintiff, then why the owner was not examined by
the plaintiff to prove the bill. The plaintiff has placed on record loose bills
before the Court and had not placed on record any bill book. Bill
Ex.PW1/3 dated 13.11.1990 and Ex.PW1/4 dated 05.12.1990 are not
proved keeping in view the testimony of DW8 and bill Ex.PW1/5 dated
14.12.1990 also pertains to the firm of a relative, who has also not been
examined before the Court. Other bills relied upon by the plaintiff viz.
Ex.PW1/6 dated 22.01.1991 of Usha Sweets, Ex.PW1/7 dated 25.01.1991
of N.D. Panseria, Ex.PW1/9 dated 03.05.1991 of M/s. Mamta Traders etc.
are of 22.01.1991 onwards and not prior to the same and the defendant had
already proved by way of Ex.DW1/29 (colly) that it had launched its
product by the name of Rinkas Chatmola in market since 08.01.1991.
TM 992/2016 & TM 924/2016 Page No. 95 of 106 Digitally signed by NEHA NEHA PALIWAL PALIWAL SHARMA SHARMA Date: 2025.04.09 17:25:36 +0530 (162) Perusal of the bills Ex.PW1/6, Ex.PW1/7, Ex.PW1/8,
Ex.PW1/10 and Ex.PW1/13 also show that they are loose bills and the
firms in whose favour those bills are issued, have not been examined as
plaintiff’s witnesses. Per contra, the defendant had examined the witness
from the firm M/s. Ishar Singh Jeet Singh before the Court as DW8 who
had identified various bills issued by the defendant which are part of the
bill books produced in original by the defendant before the Court, that is,
bill no. 1482 dated 19.01.1991, bill no. 1557 dated 23.01.1992 and carbon
copies of bill no. 1530 dated 02.12.1991, bill no. 1548 dated 02.1.1992, bill
no. 1962 dated 21.05.1991, bill no. 1974 dated 28.06.1991 and bill no.
1985 dated 09.08.1991 (part of Ex.DW1/29 collectively), which are of
January 1991 onwards showing that the defendant had sold the product by
the name of CHATMOLA to the said vendor from January 1991. Thus, the
defendant had filed the entire bill books containing the carbon copies of
bills whereas individual/ loose bills have been filed by the plaintiff. The
bills of November 1990 and December 1990 Ex.PW1/3 and Ex.PW1/4,
Ex.PW1/5 cannot be relied upon for the reasons discussed above.
(163) The defendant had further been able to establish that they had
incurred expenditure in the advertisement of trade mark CHATMOLA and
thereby had created goodwill and reputation in the market with respect to
the said mark. Per contra, the plaintiff had not led any evidence to show
that any expenditure on advertisement etc. was incurred by the plaintiff.
The defendant has further relied upon various communications along with
their original envelopes, Ex.DW1/11 to Ex.DW1/24, showing that various
vendors from all over the country were communicating with the defendant
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NEHA PALIWAL PALIWAL SHARMA
SHARMA Date: 2025.04.09
17:25:44 +0530
asking for distributorship of the product CHATMOLA of the defendant and
also for making inquiries about the same. On the contrary, no such
correspondence had been placed on record by the plaintiff. The defendant
had further placed on record the caution notice in respect of their product
CHATMOLA, Ex.DW1/9, given in newspaper Sandhya Times whereas no
such effort was undertaken by the plaintiff.
(164) DW1 had further deposed with respect to the sale figures of the
defendant firm obtained from the sale of confectionery under the trade
mark CHATMOLA whereas the plaintiff/ PW1 had not deposed about any
such sale figures of the plaintiff firm with respect to sale of product under
the mark CHATMOLA. It was held by the Hon’ble High Court of Delhi in
the case of Intex Technologies (India) Ltd. & Ors. v. AZ Tech (India) &
Ors., 239 (2017) DLT 99 that in the case of registered trade mark the
property exits in the mark but in the case of passing off the property is not
in the mark but in the goodwill and the establishment of goodwill is
indicated by the extent of sales and advertising expenses etc. The plaintiff
herein had neither led any evidence with respect to the extent of sales or
with respect to the advertising expenses incurred.
(165) Therefore, in view of the above discussions and findings, it is
held that the defendant has been able to establish, to the extent of
preponderance of probabilities, that it was the prior user of the trade mark
CHATMOLA since January 1991 having launched the same in the market
since January 1991 as manifest by bills starting from 08.01.1991 which are
part of Ex.DW1/29 (colly) and had adopted the same in August 1990 when
the label/ design of CHATMOLA with the device of baby elephant with
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distinctive bubbles was created by DW8 Baldev Singh on the asking of
DW1.
(166) Per contra, the plaintiff has not been able to show the adoption of
the mark since July 1990, though has been able to show that rolls bearing
mark CHATMOLA were printed and laminated by M/s. Vikas Laminator
on the asking of the plaintiff in September 1990. The plaintiff is not further
able to prove the actual market usage of trade mark CHATMOLA since
November 1990 as is unable to prove the bills Ex.PW1/3, Ex.PW1/4 and
Ex.PW1/5 and so on.
(167) Accordingly, it is held that the defendant is the first and prior
adopter/ user of the trade mark ‘CHATMOLA’ and the plaintiff cannot
claim vested rights in the said trade mark.
(168) Accordingly, both the issues are decided in favour of the
defendant/ counter claimant and against the plaintiff/ non-counter
claimant.
Issues No.2 and 7:
Whether the defendants are passing off their goods as that of the
plaintiff? OPP
Whether the plaintiff is passing off their goods as that of
defendant? OPD(169) Both these issues are taken up together being interconnected and
both the parties were having the respective onus to prove that the other
party was passing off their goods.
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(170) It is held in the preceding issues that the defendant/ counter
claimant is the registered proprietor of trade mark CHATMOLA under no.
557320 in class 30 and that the registration is valid and subsisting. It is
further held that the defendant/ counter claimant is holding rights in the
label consisting the device of baby elephant with other distinctive features.
It is further held that the defendant/ counter claimant is the first and prior
adopter/ user of the trade mark CHATMOLA than that of the plaintiff.
(171) The defendant/ counter claimant is using trade mark
CHATMOLA along with the device of baby elephant with other distinctive
features as manifest in Ex.DW1/1 whereas the plaintiff is using the trade
mark CHATMOLA as manifest in Ex.PW6/1. The mark CHATMOLA is
identical. More so, the device of baby elephant with other distinctive
features as manifest in Ex.DW1/1 is similar in material particulars with the
device of baby elephant with other distinctive features as manifest in
Ex.PW3/1/ Ex.PW1/17. Once it is held that the defendant is the prior user/
adopter of the trade mark and is having rights in the device of baby
elephant with other distinctive features and the trade mark used by the
parties is identical, it is held that it is the plaintiff which is passing off the
goods of the defendant as that of the plaintiff. More so, as the defendant is
held to be the registered proprietor of trade mark CHATMOLA, it is further
held that plaintiff is guilty of infringement of the registered trade mark of
the defendant and that the defendant is entitled for protection of its mark.
(172) Both the issues are accordingly decided in favour of the
defendant/ counter claimant and against the plaintiff/ non-counter
claimant.
TM 992/2016 & TM 924/2016 Page No. 99 of 106 Digitally signed by NEHA NEHA PALIWAL PALIWAL SHARMA SHARMA Date: 2025.04.09 17:26:06 +0530 Issues No. 3 and 4:
Whether the plaintiffs are entitled to the relief of injunction and
rendition of accounts? OPP
Whether defendants are entitled to relief of injunction and
rendition of accounts as claimed in the counter claim? OPD
(173) Both these issues are taken up together being interconnected and
both the parties were having the respective onus to prove that they are
entitled to the relief of injunction and rendition of accounts.
(174) The Hon’ble Division Bench of the Hon’ble High Court of Delhi
in the case titled as Pioneer Nuts and Bolts Pvt. Ltd. v. Goodwill
Enterprises, 169 (2009) DLT 209, had relied upon the judgment of Smith
Bartlet and Co. v. The British Pure Oil Grease and Carbide Co. Ltd., (1934)
51 RPC 157, wherein it was held that owner of the mark is entitled to
exclusive use of it unless somebody else is able to show, not an occasional
user from a date anterior to the user by the owner of the registered trade
mark, but a continuous user by him. In the present case in hand, as
discussed earlier in the preceding issues, the defendant/ counter claimant is
held to be the proprietor of registered trade mark CHATMOLA with the
device of baby elephant with other distinctive features, it is further held to
be prior user/ adopter of the same from that of the plaintiff and the plaintiff
has not been able to show a continuous prior user than that of the
defendant. The plaintiff has further not been able to prove vested legal
rights in trade mark CHATMOLA. Thus, the defendant is entitled to the
exclusive use of the registered trade mark CHATMOLA with device of
baby elephant with other distinctive features.
TM 992/2016 & TM 924/2016 Page No. 100 of 106 Digitally signed by NEHA NEHA PALIWAL PALIWAL SHARMA SHARMA Date: 2025.04.09 17:26:15 +0530 (175) It was further held in the case of Himalaya Drug Company Vs.
S.B.L. Limited, 194 (2012) DLT 536, by the Hon’ble Division Bench of
Hon’ble High Court of Delhi that under Section 28 of the Act, the
registered proprietor of a registered trade mark gets exclusive right to the
use of such trade marks in relation to the goods in respect of which the
trade mark is registered and to obtain relief in respect of any infringement
of such trade mark. The action for infringement is a statutory remedy
conferred on the registered proprietor of a registered trade mark for the
vindication of the exclusive right to the use of the trade mark in relation to
those goods.
(176) It was also held by the Hon’ble Three Judges Bench of Hon’ble
Supreme Court of India in the case of Renaissance Hotel Holdings Inc. vs.
B. Vijaya Sai and Others, (2022) 5 SCC 1, that when the trade mark of one
party is identical with the registered trade mark of the other party and that
the goods or services of the party are identical with the goods or services
covered by registered trade mark, the Court shall presume that it is likely to
cause confusion on the part of the public. It is further held that the action
for infringement is a statutory right conferred on the registered proprietor
of a registered trade mark for the vindication of the exclusive rights to the
use of the trade mark in relation to those goods. The Hon’ble Court further
relied upon the judgment in the case of Ruston & Hornsby Ltd. v.
Zamindara Engg. Co., (1969) 2 SCC 727, wherein it was held that in an
action for infringement, once it is found that one party’s trade mark was
identical with the other party’s registered trade mark, the Court could not
have gone into an enquiry whether the infringement is such as is likely to
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NEHA PALIWAL PALIWAL SHARMA
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deceive or cause confusion. In an infringement action, an injunction would
be issued as soon as it is proved that one party is improperly using the trade
mark of the other party.
(177) Thus, as it has been held in the preceding issues that the
defendant/ counter claimant is the registered proprietor of trade mark
CHATMOLA under no. 557320 in class 30 and that the registration is valid
and subsisting; that the defendant is holding rights in the label consisting
device of baby elephant and other distinctive features and that the
defendant is the first and prior adopter/ user of the trade mark
‘CHATMOLA’ and the plaintiff cannot claim vested legal rights in the said
trade mark, it is held that the defendant/ counter claimant is entitled to the
relief of injunction, as prayed for in the counter-claim and the plaintiff is
not entitled to any relief of injunction and rendition of accounts, as prayed
for in the plaint.
(178) Accordingly, the plaintiff, its servants, agents, dealers,
distributors, stockists, representatives and all other persons acting on its
behalf are hereby retrained from manufacturing, marketing, selling,
stocking, offering for sale, or otherwise dealing in confectionary goods
under the trade mark ‘CHATMOLA’ or any other trade mark which may be
identical and/ or deceptively similar to the defendant’s trade mark
‘CHATMOLA’ resulting in infringement of registered trade mark
CHATMOLA under no. 557320 in class 30.
(179) The plaintiff, its servants, agents, dealers, distributors, stockists,
representatives and all other persons acting on its behalf are also retrained
from manufacturing, marketing, selling, stocking, offering for sale, or
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NEHA PALIWAL PALIWAL SHARMA
SHARMA Date: 2025.04.09 17:26:36
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otherwise dealing in confectionary goods under the device of baby
elephant with other distinctive features as manifest in Ex.DW1/1 as the
defendant is also having registration of the said device along with trade
mark CHATMOLA and as it is held that the defendant is having rights in
the label consisting of device of baby elephant with other distinctive
features.
(180) The defendant/ counter-claimant had also prayed for a decree of
rendition of accounts and for a decree of delivery upon affidavit by the
plaintiff to the defendant of all the offending, infringing, counterfeiting
labels, pouches, stickers, packing materials, processing cylinders, blocks
and other finished and unfinished goods and other incriminating materials
bearing the trade mark or label/ pouch CHATMOLA under the possession
and/ or control of the defendants for destruction and/ or erasure purposes.
However, in the present case the plaintiff was restrained vide order dated
08.07.1992 from using trade mark CHATMOLA and from marketing the
same in the device of baby elephant with distinctive features. More than 32
years have passed since the said restraint order and the plaintiff at present is
not dealing with the goods under the trade mark CHATMOLA nor is
marketing the goods Tini Mini/ Tiny Miny under the image of baby
elephant as deposed by PW1 in his evidence by way of affidavit and no
contrary evidence has been led by the defendant with respect to the same.
In view of the same, at this juncture there is no possibility of any material
available with the plaintiff which can be handed over to the defendant for
destruction/ erasure purposes. No sale figures with respect to the sale of
CHATMOLA have been filed by the plaintiff/ deposed by the plaintiff’s
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NEHA PALIWAL PALIWAL SHARMA
SHARMA Date: 2025.04.09 17:26:45
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witnesses before the Court nor the defendant had led any contrary evidence
to show the extent of profits, if any, earned by the plaintiff from the same
during the period 1991-92 till the passing of the restraint order on
08.07.1992. In view of the same, at this juncture this Court is not inclined
to grant any relief of rendition of accounts.
(181) Both the issues are accordingly decided. Relief: (182) In view of the above discussions and findings, it is held that the
defendant/ counter claimant is the registered proprietor of trade mark
CHATMOLA under no. 557320 in class 30 and that the registration is valid
and subsisting; that the defendant/ counter claimant is holding rights in the
label consisting the device of baby elephant with other distinctive features
whereas the plaintiff is unable to establish that it is the owner of design and
has copyrights in the artistic cartoon Tiny Miny since 1988; that the
defendant/ counter claimant is the first and prior adopter/ user of the trade
mark ‘CHATMOLA’ and the plaintiff cannot claim vested rights in the said
trade mark; that the plaintiff is passing off the goods of the defendant as
that of the plaintiff.
(183) It is further held that the defendant/ counter claimant is entitled
to the relief of injunction, as prayed for in the counter-claim whereas the
plaintiff is not entitled to any relief of relief of injunction and rendition of
accounts, as prayed for in the plaint.
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NEHA PALIWAL PALIWAL SHARMA
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(184) Accordingly, the plaintiff, its servants, agents, dealers,
distributors, stockists, representatives and all other persons acting on its
behalf are hereby retrained from manufacturing, marketing, selling,
stocking, offering for sale, or otherwise dealing in confectionary goods
under the trade mark ‘CHATMOLA’ or any other trade mark which may be
identical and/ or deceptively similar to the defendant’s trade mark
‘CHATMOLA’ resulting in infringement of registered trade mark
CHATMOLA under no. 557320 in class 30.
(185) Further, the plaintiff, its servants, agents, dealers, distributors,
stockists, representatives and all other persons acting on its behalf are also
retrained from manufacturing, marketing, selling, stocking, offering for
sale, or otherwise dealing in confectionary goods under the device of baby
elephant with other distinctive features as manifest in Ex.DW1/1 as the
defendant is also having registration of the said device along with trade
mark CHATMOLA and as it is held that the defendant is having rights in
the label consisting of device of baby elephant with other distinctive
features.
(186) So far as the relief of rendition of accounts and for a decree of
delivery upon affidavit by the plaintiff to the defendant is concerned, this
Court is not inclined to grant any relief of rendition of accounts to the
defendant/ counter claimant at this juncture.
(187) The counter-claim filed by the defendant/ counter claimant M/s.
Anil Food Industries bearing TM No. 924/2016 is accordingly decreed
whereas the suit of the plaintiff Anil Kumar Gera trading as Alka Food
Industries bearing TM No. 992/2016 is hereby dismissed.
TM 992/2016 & TM 924/2016 Page No. 105 of 106 Digitally signed by NEHA NEHA PALIWAL PALIWAL SHARMA SHARMA Date: 2025.04.09 17:27:02 +0530 (188) Considering the nature of the dispute between the parties, both the parties are directed to bear their own costs. (189) Decree sheet be prepared in the main suit as well as in the counter claim separately. (190) Both the files of TM No. 992/2016& TM No. 924/2016 be consigned to record room, after due compliance. Digitally signed by NEHA NEHA PALIWAL PALIWAL SHARMA Announced in the Open Court SHARMA Date: 2025.04.09 17:27:09 +0530 on 09.04.2025 (Neha Paliwal Sharma) District Judge-03, Central District, Tis Hazari Courts, Delhi
It is certified that this judgment contains 106 pages and each page bears my
signatures.
Digitally signed by NEHA
NEHA PALIWAL PALIWAL SHARMA
SHARMA Date: 2025.04.09 17:27:15
+0530
(Neha Paliwal Sharma)
District Judge-03, Central District,
Tis Hazari Courts, Delhi
TM 992/2016 & TM 924/2016 Page No. 106 of 106
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