Delhi High Court
Ms Oxygun Health Pvt Ltd & Ors vs Pneumo Care Health Pvt Ltd & Anr on 13 May, 2025
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~68
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ RFA(COMM) 271/2025 & CM 12/2025
MS OXYGUN HEALTH PVT LTD & ORS......APPELLANTS
Through: Mr. Ram Bhadauria, Adv.
versus
PNEUMO CARE HEALTH PVT LTD & ANR.
.....RESPONDENTS
Through: Ms. Beenashaw N. Soni, Mr.
Arpit Bhargava, Ms. Mansi Jain, Mr.
Abhishek, Ms. Hina Bhargav, Ms. Amrita
Dhawan, Mr. Sarthak Sharma and Ms. Ann
Joseph, Advs.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
HON'BLE MR. JUSTICE AJAY DIGPAUL
JUDGMENT (ORAL)
% 13.05.2025
C. HARI SHANKAR, J.
1. CS (Comm) 523/2023 was instituted by Pneumo Care Health
Pvt Ltd1 against Oxygun Health Pvt Ltd2 and its directors and two
other former employees of Pneumo Care, before the learned District
Judge (Commercial Court), Rohini3.
2. Pneumo Care alleged, in the suit, that Oxygun had infringed the
trademarks HOSPIGRIP and HOSPICUFF, registered in favour of
1 “Pneumo Care” hereinafter
2 “Oxygun” hereinafter
3 “the learned Commercial Court” hereinafter
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Pneumo Care under the Trade Marks Act, 1999 as well as Design No.
325003-0001, also registered in favour of Pneumo Care under the
Designs Act, 2000. Additionally, it was alleged that, by using identical
marks and an identical design, Oxygun, in collusion with Defendants
2 to 5 in the suit – who are Appellants 2 to 5 in the present appeal –
was seeking to pass off its products as the products of Pneumo Care.
Predicated on these allegations, Pneumo Care sought injunction
against the use, by the defendants-appellants, restraining them from
using the marks HOSPIGRIP and HOSPICUFF, or Design No.
325003-001 registered in favour of Pneumo Care, or any other
identical or deceptively similar trademark or design. Additionally, the
suit prayed for rendition of accounts, delivery-up and damages of ₹ 25
lakhs.
3. The learned Commercial Court has, by judgment dated 5
November 2024, decreed the suit in the following terms:
“34. Accordingly, suit of the plaintiff is decreed as under:
(i) A decree of permanent injunction is hereby passed
in favour of plaintiff(s) and against the defendant(s) and the
defendants by themselves as also through their individual
partners/proprietors, directors, agents, representatives,
distributors, dealers, assigns, stockist etc., and all others
acting for and on their behalf are hereby restrained from
manufacturing, selling, using, displaying, advertising,
importing/exporting or by any other mode or manner
dealing in medical devices including medical and surgical
apparatus and instruments, orthopedic articles, limbs
restraints and other cognate/allied goods and other
cognate/allied goods bearing the impugned marks/labels
HOSPIGRIP and design of ankle and wrist restrainer or any
other trade mark/label and design of ankle and wrist
restrainer identical with or deceptively similar to the
plaintiffs’ said trademarks/label HOSPIGRIP and
HOSPICUFF and design of ankle and wrist restrainer in
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relation to all medical and surgical apparatus and
instruments, orthopedic articles, limbs restraints and other
cognate/allied goods, thereby infringing plaintiff’s
registered trade mark HOSPIGRIP and HOSPICUFF;
infringement of registered design bearing No.325003-001
in Class 24-04; and doing any other thing, thereby leading
to passing off and unfair competition of their goods as those
of the plaintiff;
(ii) A decree of damages in the sum of Rs.3,00,000/-
(Rupees Three Lakhs Only) is hereby passed in favour of
plaintiff and against the defendants jointly and severally;
(iii) The plaintiffs are further entitled to delivery up of
all the impugned finished and unfinished material of the
defendants bearing impugned marks/label HOSPIGRIP
and/or design of ankle and wrist restrainer identical with
and deceptively similar to it including blocks and labels,
display boards, sign boards, trade literature, advertisement
material, wrapper, trade dress, packaging etc. for the
purpose of destruction/erasure;
(iv) Plaintiff is also entitled to cost of the proceedings,
which includes expenses incurred by the plaintiff in the suit,
including photocopying expenses, travel expenses, fees of
learned Local Commissioner, fees of learned counsel
quantified as Rs.22,000/- and other miscellaneous
expenses.”
4. Aggrieved thereby, the defendants in the suit, i.e. Oxygun, its
two directors and Defendants 4 and 5, have filed the present appeal
before this Court, praying that the impugned judgment be quashed and
set aside and the suit filed by Pneumo Care be dismissed.
5. We have heard Mr. Ram Bhadauria, learned Counsel for the
appellants and Ms. Beenashaw N. Soni, learned Counsel for the
respondents, at length.
The plaint
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6. Pneumo Care, in its plaint before the learned Commercial
Court, advanced the following submissions:
(i) Pneumo Care was India’s leading research and
development company dealing with critical care, respiratory and
sleep medicine products. It was engaged in the manufacture,
trade and marketing of medical and surgical apparatus and
instruments, orthopaedic articles, limb restraints and other
cognate and allied goods. The word marks HOSPIGRIP and
HOSPICUFF stood registered in favour of Pneumo Care w.e.f.4
29 December 2016 in Class 10 for “medical and surgical
apparatus and instruments, orthopaedic articles, limb restraints”.
The registration was valid and subsisting.
(ii) Under the aforesaid marks HOSPIGRIP and
HOSPICUFF, Pneumo Care had been manufacturing and
selling its goods since 2016. By dint of continuous and
uninterrupted use, the marks HOSPIGRIP and HOSPICUFF
had become distinctive and acted as source identifiers of
Pneumo Care. They had garnered immense goodwill and
reputation. A pictorial representation of the design of the
Pnuemo Care, which stood registered in its favour for ankle and
wrist restrainers, may be provided thus:
4 With effect from
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The certificate of registration of Pnuemo Care’s design, under
the Designs Act, certified that novelty resided in the surface
pattern of the ankle and wrist restrainer.
(iii) The ankle and wrist restrainers manufactured and sold by
Pnuemo Care under the afore-extracted registered design
commanded an enviable market. They were indelibly
associated, in the psyche of the consumer public, with Pneumo
Care. To vouchsafe its goodwill and reputation, Pneumo Care
furnished a tabular statement of its overall sales figures as well
as sales figures from the sale of restrainers alone, thus, in the
plaint:
Financial Year Sale figure in lakhs (Amount in ₹)
2017-2018 1280.45
2018-2019 1377.66
2019-2020 1277.68
2020-2021 1961.42
2021-2022 2619.91
Total 8617.12Signature Not Verified
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Financial Year Sale figure (Amount in ₹)
2020-2021 40,59,198/-
2021-2022 50,90,977/-
2022-2023 61,32,715/-
TOTAL 1,52,82,890/-
(iv) Appellants 2 and 3 were directors of Oxygun. Appellants
4 and 5 were earlier associated with Pneumo Care. Appellant 4,
who was working as General Manager with Pneumo Care,
resigned on 7 July 2021 and Appellant 5 Punit Tiwari was
terminated vide letter dated 6 April 2022.
(v) Oxygun was a company incorporated on 24 November
2020 with the sole aim of diverting the designs of Pneumo Care
under the trade mark HOSPIGRIP. In doing so, Oxygun took
advantage of the knowledge possessed by Appellants 4 and 5
with respect to Pneumo Care’s products and their process of
manufacture.
(vi) Shortly prior to the filling of the suit, the appellants had
adopted and started using identical and deceptively similar trade
marks/labels and designs of the ankle and wrist restrainer,
which stood registered in favour of Pneumo Care. A
comparison of the rival marks and designs was thus provided in
the plaint:
COMPARISON OF THE RIVAL MARKS
Respondent’s Trade Appellant’s Trade Mark
Mark
HOSPIGRIP HOSPIGRIP
HOSPICUFF HOSPIGRIPSignature Not Verified
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COMPARISON OF THE DESIGN OF ANKLE AND WRIST
RESTRAINERS. Description Respondent Appellant
No.
1 Product Hospigrip/Hospicuff Hospigrip
Name
2 Product
Comparison3 Packaging Printing on White Printing on white
background with background with
black colour black colour
4 Product Two Two
Variants
Wrist & Ankle Writ & Ankle
5 Colour Front-Black Front-BlackBack-Black Back-Brown
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6 Locking Double Locking Double Locking
System SystemBlack Connector Black Connector
Anti Lock Velcro Anti Lock Velcro
7 Branding Position: Position:
Middle Lower half Middle Lower
of Product half of Product
STYLE: STYLE:
Fabric tape stitched Fabric tape
on either side with stitched on either
product and side with product
company logo. and company
logo.
8 Outer Stitched Stitched
Lining
(vii) By the aforesaid acts, Oxygun and the other appellants,
in collusion, had infringed and committed piracy of Pnuemo
Care’s registered trade marks and design and had also sought to
pass off their products as the products of Pnuemo Care.
(viii) The exact averments in this regard, as contained in the
plaint, may be reproduced thus:
“26. That to the knowledge of the Plaintiffs, Defendant
no. 1 is a company incorporated under Indian Companies
Act, and defendant nos. 2 & 3 are the directors of the
defendant no. 1 company. The defendant no. 4 and 5 are
acting in collusion with defendant nos. 2 & 3 and to the
knowledge and belief of the plaintiffs, defendant nos. 2 & 3
are the family members of the defendant nos. 4 & 5.
Defendant Nos. 4 & 5 have been associated with the
plaintiff no. 1 company. The defendant no. 4. Vikram Singh
has been working as General Manager and has resigned
from plaintiff no. 1 company on July 7, 2021 and the
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defendant no. 5. Punit Tiwari has been terminated vide
letter dated April 6, 2022 pursuant to the breach of terms of
appointment dated December 7, 2015.
27. That the defendant no. 1 company has been
incorporated on 24.11.2020 with a view to divert the
business of plaintiffs under the trademark HOSPIGRIP. The
DEFENDANTS herein after means and includes all the
defendant nos 1, 2, 3, 4 & 5 unless the context otherwise
specially requires to be mentioned. However the plaintiffs
do not exactly know the whereabouts of the defendants and
their inter se relation and the defendants are called upon to
disclose the same upon causing appearance and the
plaintiffs seek leave of the Hon’ble Court to amend the
plaint upon discloser made by the defendants.
28. That the defendant nos. 4 & 5 have been associated
with the plaintiff No. 1 company and has been the
mouthpiece of the plaintiff no. 1 company in any workshop,
seminar and promotional activities. They have been aware
of the nitty-gritty, nuances, know-how and business modes
of plaintiff no. 1 company. The public at large and
customers of the plaintiff no. 1 company always associate
the defendant no. 4 & 5 with the plaintiff. The defendant
no.4 & 5 joined hands with defendant no. 1, 2 and 3 in
order to encash and ride piggy back to the goodwill and
reputation of the plaintiff no. 1 company in relation to the
said trademark and design of ankle and wrist restrainer. The
defendant nos. 4 & 5 associate themselves with the plaintiff
no.1 in order to earn illegally and the impugned and illegal
infringing activity of the defendants have caused and has
been causing great loss to the plaintiffs.
29. That the defendant has adopted an infringing design
in respect of identical similar product i.e. ankle and wrist
restrainer which is identical similar with plaintiff’s
registered design of ankle and wrist restrainer and also
using registered trademark “Hospigrip” of the plaintiff. The
Defendants are marketing and trading the identical
products/goods at various locations and displaying the same
products by false representation as their own design and
innovation thereby are causing loss and damages to the
business, goodwill and distinctiveness of aforesaid well
known registered design and trademark of the Plaintiff.
30. That defendant no.1 has been incorporated on
24.11.2020 and is involved in manufacturing and trading of
various medical devices including medical and surgical
apparatus and instruments, orthopedic articles, limbs
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restraints and other cognate/allied goods (hereinafter
referred to as the said goods) and adopted the ankle and
wrist restrainer (hereinafter referred as impugned design)
which is identical / similar with plaintiff’s registered design
of “ankle and wrist restrainer”. The defendant has adopted
and commercially started using the identical mark
HOSPIGRIP (herein after referred to as impugned
trademark) which is identical to the said trademark
HOSPIGRIP of the plaintiff. The representation of
impugned trademark and design are filed herewith. The
plaintiff has also caused search in the Register of the Trade
Marks and has not found any trademark application filed by
the defendants for the registration of the impugned
trademark HOSPIGRIP in relevant class for the impugned
goods.
31. That the Defendants have very recently adopted and
started using identical and deceptively similar
trademarks/labels and design of ankle and wrist restrainer
in respect of impugned goods and business as mentioned
herein above. The Defendants are not the proprietor of the
impugned trademarks/labels and design and have no right
to adopt or use the same and are doing so without the leave
and license of the Plaintiffs. The Defendants have no
proprietary rights for the impugned trademarks/label and
design in relation to aforementioned impugned goods and
business.
32. That the impugned marks labels used by the
defendants is identical with and deceptively similar to the
said trademarks/ label of the Plaintiffs. They are identical
with and deceptively similar in each and every respect
including phonetically, visually, structurally, in its basic
idea and in its essential features. A comparison of the
Plaintiffs and Defendants’ trade mark/label and design are
juxtaposed herein below5:
*****
On juxtaposition of the rival marks/labels and design of
ankle and wrist restrainer, it is explicit and apparent that the
Defendants have slavishly copied not only the trademarks
but also design of ankle and wrist restrainer of the
Plaintiffs. It is apparent that the impugned marks/labels and
design used by the Defendants are the colorable imitation of
the said trademarks/label and design of the Plaintiffs. The
Defendants have deliberately copied and/or substantially5 Already reproduced supra
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reproduced all the features of trademark and design of the
plaintiffs. In all probability the impugned trademarks/labels
of the Defendants shall be linked with the Plaintiffs and
confusion and deception is bound to occur. The impugned
trademarks/label and design shall be taken to be that of the
trademarks/labels and design of the Plaintiffs.
33. That it is apparent that the Defendants have made a
deliberate attempt and taken undue advantage of the
Plaintiffs goodwill and reputation, by adopting the
impugned marks/label and design only to reap illegal
monetary benefits. The Defendants have afforded no
plausible explanation for not only adopting of identical
marks but also identical designs. The defendant nos 4 & 5
has been well aware of the proprietary rights of the
plaintiffs in the trademark/label and ownership of the
plaintiffs in the registered design of ankle and wrist
restrainer.
34. That the Plaintiffs’ business and goods under the
said trademarks/labels HOSPIGRIP and HOSPICUF have
acquired such goodwill and reputation that it has become
distinctive of its products and the Defendants’ use of the
identical and exactly similar marks/labels HOSPIGRIP for
their “impugned products”, tends and threatens and will
tend to mislead the public to believe that the Defendants
business and goods are that of the Plaintiffs. The Plaintiffs
said trademarks/labels which are well-known, is being used
for the “impugned products” to take undue advantage and
benefit of Plaintiffs goodwill and reputation so as to create
deception for the public who are likely to buy Defendants’
product believing the same as coming from the Plaintiffs’
source and is associated with the Plaintiffs in some manner.
35. That the Defendants have no right to adopt or use
the impugned marks/labels in any other manner whatsoever
including under the law of equity, common law and
statutory law in respect of the said business or
allied/cognate business or any business at all being in
complete violation of the Plaintiffs rights amounting to
inter-alia, infringement and passing off of trade mark and
design, dilution, falsification and unfair trade practices.
Defendants are doing so without the leave and license of
Plaintiffs. The Defendants acts/conduct thus constitutes and
cause:
A. Infringement of trademark and Design:
B. Passing Off: Signature Not Verified RFA(COMM) 271/2025 Digitally Signed By:AJIT Page 11 of 43 KUMAR Signing Date:16.05.2025 17:34:28 C. Dilution: D. Unfair Competition E. Damages A. INFRINGEMENT OF TRADEMARK AND DESIGN
36. It is apparent that the impugned mark/label
HOSPIGRIP used by the Defendants is the colorable
imitation of the trade mark/label HOSPIGRIP and
HOSPICUFF for the identical products of the Plaintiffs.
The design of the ankle and wrist restrainer used by the
Defendants is a fraudulent and obvious imitation of the
registered design of the Plaintiffs. In all probability the
impugned trademark/label and design used by the
Defendants shall be linked with that of the Plaintiffs and
confusion and deception is bound to occur. At any rate the
impugned counterfeit/infringing products of the Defendants
will be taken as the products manufactured and sold by the
Plaintiffs.
37. That the impugned design of the ankle and wrist
restrainer is identical with and exactly similar to the said
design of the Plaintiffs. The imitation of the said
trademarks/label by the Defendants are in exactitude and
owing to the identical nature of the goods and design, shape
and configuration of ankle and wrist restrainer, the
likelihood of confusion is much higher, resultantly, the said
adoption and use by the Defendants are bound to make the
general public, which include the poor patients, believe that
the Defendants are somehow connected or affiliated with
the Plaintiffs when in fact no such connection or affiliation
exists. Thus, by the impugned adoption and user, the
Defendants have infringed and also infringing and enabling
others to infringe the Plaintiffs proprietary rights in the said
trade mark / label HOSPICUFF and HOSPIGRIP.
38. In the instant case, owing to the identical nature of
the marks and the goods being identical the likelihood of
confusion is much higher, resultantly, the said use by the
Defendants are bound to make the general public believe
that the Defendants are somehow connected or affiliated
with the Plaintiff when in fact no such connection or
affiliation exists. Thus, by the impugned adoption and user,
the Defendants have infringed and also infringing and
enabling others to infringe the Plaintiffs proprietary rights
in its said trade mark HOSPIGRIP and/or HOSPICUFF
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39. That the impugned goods and business of the
Defendants are also of the same/similar nature as that of the
Plaintiff. On a bare comparison of the plaintiff’s products
which is the subject matter of registered design and the
defendant’s product, it is apparent that the two are identical
in all respects and that the defendant has made every effort
to imitate the plaintiff’s registered design. The use of the
same shape, configuration, and pattern is exactly the same
and that cannot be a mere coincident.
40. A side by side comparison of the plaintiff’s and
defendant’s products clearly shows that there is no
difference between any of the essential features of the
plaintiff’s registered design and that of the defendant’s
impugned product design. Therefore, it is evident that the
design of the impugned product of the defendant constitutes
infringement of the statutory rights that vests in the plaintiff
by virtue of the registered design No.325003 – 001 dated
26.12.2019.
41. That the features of the design of the plaintiff’s
ankle and wrist restrainer has come to be exclusively
associated with the plaintiffs product and is recognized by
the purchasing public and members of trade and emanating
from the plaintiffs only. The said distinctive shape, size and
configuration is also a key factor in the customers decision
to purchase the product
B. PASSING OFF
42. That the Plaintiffs have acquired distinctiveness and
goodwill in their said trademarks/labels connotes
distinctiveness, reputation, quality and goodwill acquired
by the Plaintiffs over the years and is understood by the
consumers as associated with the Plaintiffs only.
Defendants adoption and use of the impugned marks/labels
is calculated to derive benefit from the reputation and
goodwill enjoyed by the Plaintiffs and their products under
its said trademarks/labels thereby perpetrating fraud and
deception on the unwary customers by passing off their
goods and business as those of the Plaintiffs. The trade
mark law is not intended to protect a person who
deliberately takes the benefit of somebody else’s reputation
with respect to its goods and business, especially so when
the reputation extends worldwide
43. That the Defendants are not the proprietor of
impugned infringing marks/label. The impugned adoption
and user of the impugned marks/label is an act of sheer
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dishonesty on the part of the Defendants and the
Defendants have no justification for such dishonest, mala
fide and illegal nefarious act.
44. That the impugned adoption and user by the
Defendants are dishonest, tainted, mala fide and fraudulent.
Defendants adopted and started using the impugned
marks/labels in respect of the impugned goods and business
out of positive greed and with a view to take advantage and
to trade upon the reputation and goodwill of the Plaintiffs
and further with a view to calculate confusion and
deception in the market and to pass off their impugned
goods and business as those of the Plaintiffs and to make
easy money at the cost of the Plaintiffs. The Defendants
have been fully aware of the Plaintiffs said rights, user and
reputation having accrued to in relation to the Plaintiffs said
trademarks/label at the time of its impugned adoption and
user of its marks/labels as the Plaintiffs are the proprietor of
said marks/labels.”
7. Predicated on the aforesaid assertions and allegations, Pneumo
Care sought a restraint against Oxygun and other appellants in the
terms already set out in para 2 supra.
8. Summons in the suit were served on the appellants on 8 August
2023. They filed their written statements, by way of response to the
suit, on 1 February 2024. Inasmuch as the written submissions had
been filed beyond 120 days from the date of service of summons in
the suit, they could not be taken on record, in view of the judgment of
the Supreme Court in SCG Contracts India Pvt Ltd v K S Chamankar
Infrastructure Pvt Ltd6, from which the relevant paragraphs may be
reproduced thus:
“8. The Commercial Courts, Commercial Division and
Commercial Appellate Division of High Courts Act, 2015 came
into force on 23-10-2015 bringing in their wake certain6 (2019) 12 SCC 210
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amendments to the Code of Civil Procedure. In Order 5 Rule 1,
sub-rule (1), for the second proviso, the following proviso was
substituted:
“Provided further that where the defendant fails to file the
written statement within the said period of thirty days, he
shall be allowed to file the written statement on such other
day, as may be specified by the court, for reasons to be
recorded in writing and on payment of such costs as the
court deems fit, but which shall not be later than one
hundred twenty days from the date of service of summons
and on expiry of one hundred and twenty days from the
date of service of summons, the defendant shall forfeit the
right to file the written statement and the court shall not
allow the written statement to be taken on record.”
Equally, in Order 8 Rule 1, a new proviso was substituted as
follows:
“Provided that where the defendant fails to file the written
statement within the said period of thirty days, he shall be
allowed to file the written statement on such other day, as
may be specified by the court, for reasons to be recorded in
writing and on payment of such costs as the court deems fit,
but which shall not be later than one hundred and twenty
days from the date of service of summons and on expiry of
one hundred and twenty days from the date of service of
summons, the defendant shall forfeit the right to file the
written statement and the court shall not allow the written
statement to be taken on record.”
This was re-emphasised by re-inserting yet another proviso in
Order 8 Rule 10 CPC, which reads as under:
“10. Procedure when party fails to present written
statement called for by court.–Where any party from
whom a written statement is required under Rule 1 or Rule
9 fails to present the same within the time permitted or
fixed by the court, as the case may be, the court shall
pronounce judgment against him, or make such order in
relation to the suit as it thinks fit and on the pronouncement
of such judgment a decree shall be drawn up:
Provided further that no court shall make an order
to extend the time provided under Rule 1 of this Order for
filing of the written statement.”
A perusal of these provisions would show that ordinarily a written
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statement is to be filed within a period of 30 days. However, grace
period of a further 90 days is granted which the Court may employ
for reasons to be recorded in writing and payment of such costs as
it deems fit to allow such written statement to come on record.
What is of great importance is the fact that beyond 120 days from
the date of service of summons, the defendant shall forfeit the right
to file the written statement and the Court shall not allow the
written statement to be taken on record. This is further buttressed
by the proviso in Order 8 Rule 10 also adding that the court has no
further power to extend the time beyond this period of 120 days.
*****
11. We are of the view that the view taken by the Delhi High
Court in these judgments is correct in view of the fact that the
consequence of forfeiting a right to file the written statement; non-
extension of any further time; and the fact that the Court shall not
allow the written statement to be taken on record all points to the
fact that the earlier law on Order 8 Rule 1 on the filing of written
statement under Order 8 Rule 1 has now been set at naught.”
9. As such, the learned Commercial Court, by order dated 16 May
2024, correctly declined to take the written statement of the appellants
on record.
10. In the meanwhile, the respondents, as the plaintiffs in the suit,
had filed an application under Order VIII Rule 107 of the Code of
Civil Procedure 19088, for decreeing the suit in terms of the prayers
contained therein, consequent on failure, by the appellants, to file their
written statement within a maximum permitted period available under
Order VIII Rule 1 of the CPC, as amended by the Commercial Court
Act 2015. The learned Commercial Court, therefore, passed the
following order on 16 May 2024, declining to take the written
7 10. Procedure when party fails to present written statement called for by Court.–Where any
party from whom a written statement is required under Rule 1 or Rule 9 fails to present the same within the
time permitted or fixed by the Court, as the case may be, the Court shall pronounce judgment against him, or
make such order in relation to the suit as it thinks fit and on the pronouncement of such judgment a decree
shall be drawn up
8 “CPC” hereinafter
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statement of the appellants/defendants on record and fixed the matter
for arguments on the Order VIII Rule 10 application filed by Pneumo
Care:
“Present: Sh. Dharmendra Yadav, Ld. Counsel for plaintiff.
Sh. Ram Bhadoriya, Ld. Counsel for defendant through VC.
As per service report, the defendant was served on 08.08.2023
whereas the WS in the matter was filed on 01.02.2024, much
beyond 120 days. Therefore, in view of the law laid down by
Hon’ble Supreme Court in SCG Contract India Pvt. Ltd. v K. S.
Chamankar Infrastructure Pvt. Ltd. & Ors., this court has no
power to allow condonation of delay beyond the period of 120
days. The WS, therefore, cannot be taken on record.
List for arguments now on Order 8, Rule 10 CPC on 04.07.2024.”
11. The appellants challenged the aforesaid order before this Court
by way of CM(M)-IPD 23/20249. By order dated 28 November 2024,
the said CM(M)-IPD 23/2024 was dismissed for non-prosecution.
12. The appellants did not choose to have CM(M)-IPD 23/2024
restored, or to challenge the order dated 28 November 2024. As such,
they acquiesced to remaining undefended in the suit.
13. It is in these circumstances that the learned Commercial Court,
by judgment dated 5 November 2024, has decreed the suit, in the
terms already set out in para 3 supra.
The impugned judgment
14. In the impugned judgment, the learned Commercial Court,
9 Oxygun Health Pvt Ltd & Ors v Pneumo Care Health Pvt. Ltd & Anr.
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having noted the facts of the case, has proceeded to decree the suit
under Order VIII Rule 10 of the CPC. Apropos the power and
authority of the Court to do so, under Order VIII Rule 10 of the CPC,
the learned Commercial Court has relied on the judgment of the
Supreme Court in Balraj Taneja v Sunil Madan10 and Asma Lateef v
Shabbir Ahmad11 and the judgments of this Court in Nirog Pharma
Pvt Ltd v Umesh Gupta12, Parsvnath Developers Ltd v Vikram
Khosla13, Kleenoil Filtration India Pvt Ltd v Udit Khatri14 and Indian
Performing Rights Society Ltd v Gauhati Town Club15.
15. Thereafter, with respect to facts, the learned Commercial Court,
after reproducing the comparative table of the products of Pneumo
Care and Oxygun, has observed and held as under:
“22. The comparison of the products as tabulated above clearly
and unerringly suggest that the defendants have dishonestly
adopted the impugned trademark/label ‘HOSPIGRIP’, which is
visually, structurally and deceptively and confusingly similar to
plaintiff’s registered trademarks ‘HOSPIGRIP and HOSPICUFF’
in respect of identical goods which creates the same commercial
impression. It is further evident that from the aforesaid action, the
defendants have strained every nerve to pass off their products as
those of the plaintiff’s products by adopting visually, structurally
and phonetically identical trademarks, trading name, packaging,
trade dresses, etc. of the plaintiff’s products, which in all
probability is likely to confuse and deceive the consumers, thereby
causing immense and irreparable harm to the plaintiff’s goodwill
and reputation as also pose a risk to the safety, health and well
being of the consumers.
23. I further find substance in the submissions of learned
counsel for the plaintiff that instant is also a case of dilution and10 (1999) 8 SCC 396
11 (2024) 4 SCC 696
12 2016 SCC OnLine Del 5961
13 Judgment dated 3 March 2021 in CS (Comm) 618/2019
14 2023 SCC OnLine Del 18
15 2013 SCC OnLine Del 382
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unfair competition as the defendants’ activities are whittling away
and eroding the distinctive character of the plaintiff’s trade
marks/logos HOSPIGRIP and HOSPICUFF.
24. The defendants cannot be allowed to piggy bag upon the
reputation of plaintiff. The Hon’ble High Court of Delhi in a case
involving somewhat similar facts, i.e The Tata Iron & Steel
Company Ltd. v Mahavir Steels & Ors.16, has been pleased to hold
asunder:
*****
14. ………An imitation remains an imitation whether it
is done by one or by many. It acquires no legitimacy. A
wrong is not righted by the following it musters.
Infringement of trade mark by a trader cannot be
justified on the ground that there are others like him
who are doing the same. There is a growing tendency to
copy the trade marks to cash upon someone else’s
business reputation. The pirates of trademarks are like
parasites clinging to others for their growth. Imitators
of trade marks have the sole object of diverting the
business of others. This tendency must be curbed in the
interest of the trade and the consumers.
*****
25. Further in case reported as, “CS (Comm.) No.126/2022”,
titled as, M.L Brother LLP v Mahesh Kumar Bhuralal Tanna17
the Hon’ble High Court of Delhi has been pleased to lay down that
Local Commissioner’s report can be read in evidence in terms of
Order XXVI Rule 10(2) CPC. For ready reference, the said
observations are re-produced as under:
*****
10. Order 26 Rule 10 (2) CPC stipulates that the report
of the Commissioner and the evidence taken by the
Commissioner shall be evidence in the suit and shall form
part of the record. The said provision reads as under:
10. Procedure of Commissioner.– (1) The
Commissioner, after such local inspection as he
deems necessary and after reducing to writing the
evidence taken by him, shall return such evidence,
together with his report in writing signed by him, to
the Court.
16 1992 SCC Online Del 122
17 MANU/DE/1721/2022
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(2) Report and depositions to be evidence in
suit. Commissioner may be examined in person.–
The report of the Commissioner and the evidence
taken by him (but not the evidence without the
report) shall be evidence in the suit and shall form
part of the record; but the Court or, with the
permission of the Court, any of the parties to the suit
may examine the Commissioner personally in open
Court touching any of the matters referred to him or
mentioned in his report, or as to his report, or as to
the manner in which he has made the investigation.”
11. In Levi Strauss & Co. v Rajesh Agarwal18, this
Court examined the said provision and held that once the
Commissioner has filed the evidence along with his report,
it becomes evidence in the suit itself. Under Order 26 Rule
10(2) CPC it is not mandatory to examine the
Commissioner to admit the report of the Commissioner as
evidence in the suit. The relevant observations are as under:
8. The Local Commissioner is in fact a
representative of the Court itself and it is for this
reason that Order 26 Rule 10 (2) of CPC clearly
provides that once the Commissioner has filed the
evidence along with his report the same shall be
treated as evidence in the suit and shall form part of
the record.
*****
10. The rationale behind Order 26 Rule 10 (2) of
CPC is clear i.e. the Commissioner is appointed as a
representative of the Court and evidence collected
by the Commissioner along with the report of the
Commissioner would be evidence in the suit, subject
to any objection raised by any party. If any party has
any objection to Commissioner’s report or to the
evidence, such party has an option to examine the
Commissioner personally in open Court. Such
examination is however, neither compulsory nor
required especially in cases where the party does not
challenge the report. In the present case, a perusal of
the written statement filed by the Defendant clearly
reveals that the Defendant does not challenge the
Commissioner’s report. Para of the written statement
is set out below…”
18 2018 SCC OnLine Del 6421
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12. This position of law has been reiterated by this
Court in Vinod Goel v Mahesh Yadav19 wherein the Court
observed as under:
“7. It is the settled proposition in law that when
a Commissioner is appointed, he acts as the officer
of the Court and it is not necessary for the
Commissioner to be examined. This is clearly laid
down by the Supreme Court in Misrilal Ramratan
& Ors. Mansukhlal & Ors. v A.S. Shaik Fathimal
& Ors.20, wherein the Court held as under:
“It is now settled law that the report of the
Commissioner is part of the record and that
therefore the report cannot be overlooked or
rejected on spacious plea of non-examination of
the Commissioner as a witness since it is part of
the record of the case.”
8. Even this Court, recently in Levis Strauss,
held as under
“11. The rationale behind Order 26 Rule 10 (2) of
CPC is clear i.e. the Commissioner is appointed as
a representative of the Court and evidence
collected by the Commissioner alongwith the
report of the Commissioner would be evidence in
the suit, subject to any objection raised by any
party. If any party has any objection to
Commissioner’s report or to the evidence, such
party has an option to examine the Commissioner
personally in open Court. Such examination is
however, neither compulsory nor required
especially in cases where the party does not
challenge the report.”
9. Mr. Prag Chawla clearly concedes that there
may be no requirement to examine the Local
Commissioner once the Commissioner is appointed
by a Court.
10. Under these circumstances, since the
Commissioner had visited the suit property and had
submitted the report, it is deemed appropriate that
19 2018 SCC OnLine Del 9497
20 1995 Supp (4) SCC 600
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the matter is remanded back to the Trial Court to
decide the matter afresh after taking into
consideration the report of the Local
Commissioner, Mr. Y.D. Nagar dated 5th January,
2000 in Suit No.2198/1999.
13. In view of Order 26 Rule 10(2) CPC and the
judgments discussed above, the settled legal
position that emerges is that the report of the Local
Commissioner can be treated as evidence in the
suit where it is not challenged by any party.
Accordingly, in the present case the report of the
Local Commissioner and the contents therein can
be relied upon by the Court as evidence as the
same is unchallenged.
*****
(underlining which is mine emphasized)
*****
27. In case reported as, Aktiebolaget Volvo, the Hon’ble High
Court of Delhi has been pleased to observe as under:
*****
10. At the hearing on 19thApril, 2023, the counsels for
the defendants on instructions submitted that the defendants
were agreeable to a decree of permanent injunction being
passed against the defendants. Counsel for the plaintiffs
also pressed for costs and damages of Rs.10,00,000/- to be
apportioned between the defendants.
*****
17. I am of the opinion that no purpose would be served
by directing the plaintiffs to lead evidence by filing
examination-in-chief by way of affidavit. The defendants
have no reasonable prospect of succeeding in the present
suit. Therefore, in my opinion, this is a fit case where a
Summary Judgment in terms of Order XIII-A of the CPC,
as applicable to commercial disputes of a specified value,
read with Rule 27 of the IPD Rules, deserves to be passed
in favour of the plaintiffs and against the defendants.
*****
28. The Hon’ble High Court, thereafter in paragraphs No.22
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and 23 of the aforesaid judgment has been pleased to lay down as
under:
*****
22. Clearly, the customers are being misled by the
defendants and the entire effort is deliberate and dishonest.
This amounts to dilution of the reputation and goodwill of
the plaintiffs’ marks and causing loss to the plaintiffs in
business and reputation. The members of the public are
bound to confuse bicycles manufactured and sold by the
defendants under the mark VOLVO as emanating from the
plaintiffs. The defendants have been making unlawful gains
at the expense of the plaintiffs. I am convinced that this is
not a case of innocent adoption by the defendants. The
Court cannot ignore such flagrant misuse of the plaintiffs’
marks by the defendants. Even though the claim of the
plaintiffs for damages, based on the recoveries made at the
premises of the defendant no.2 and the invoices placed on
record, is close to Rs.20,00,000/-, I deem it appropriate to
award a sum of Rs.10,00,000/-towards damages and costs
to the plaintiffs.
23. Taking into account that the defendants no. 3 and 4
are the manufacturers and suppliers of the aforesaid goods
and the defendants no.1and 2 were selling the goods
supplied by the defendants no.3 and 4, out of the aforesaid
amount, the defendants no.3 and 4 shall be liable to pay
Rs.6,50,000/- in favour of the plaintiffs and the defendants
no.1 and 2 shall be liable to pay Rs.3,50,000/- in favour of
the plaintiffs.
*****
29. After considering the facts and circumstances of the case in
totality, I am of the considered opinion that there is no real
prospect of defendant(s) succeeding in proving their defence
because of the aforesaid discussion and also the fact that the
written statement is not on record. No useful purpose would be
served by allowing the proceedings to meander mindlessly in Court
and to clog the justice delivery system. Therefore, in my opinion,
present is a fit case where the Summary Judgment in terms of
Order VIII Rule 10 CPC, as applicable to commercial disputes,
deserves to be passed in favour of the plaintiff and against the
defendant.
30. Considering the present case on the touchstone of the law laid
down in the above referred judgments, I find that no useful purpose
would be served, firstly by framing the issue with regard to grant of
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damages & cost and then asking the plaintiff to lead evidence in
the matter. I am further of the considered opinion that there is no
defence available on record on part of defendant(s) which debars
the plaintiff from claiming decree in the matter, as there is no real
prospect of the defendant(s) successfully defending their claim.
31. As regards the damages claimed for by the plaintiff, it is noted
that The Delhi High Court Intellectual Property Rights Division
Rules, 2022 provide guidance on the manner in which the damages
could be calculated in such cases. Rule 20 of the IPD Rules, 2022
is set out below:
*****
“20. Damages/Account of profits: A party seeking
damages/account of profits, shall give a reasonable estimate of
the amounts claimed and the foundational facts/account
statements in respect thereof along with any evidence,
documentary and/or oral led by the parties to support such a
claim. In addition, the Court shall consider the following
factors while determining the quantum of damages:
(i) Lost profits suffered by the injured party;
(ii) Profits earned by the infringing party;
(iii) Quantum of income which the injured party may have
earned through royalties/license fees, had the use of the subject
IPR been duly authorized;
(iv) The duration of the infringement;
(v) Degree of intention/neglect underlying the infringement;
(vi) Conduct of the infringing party to mitigate the damages
being incurred by the injured party; In the computation of
damages, the Court may take the assistance of an expert as
provided for under Rule 31 of these Rules.
*****
32. Further, on the aspect of damages, Koninlijke Philips and
Ors. v Amazestore & Ors.21, the Hon’ble High Court of Delhi has
been pleased to lay down certain standards for grant of damages in
following terms:
*****
“41. Keeping in view the aforesaid, this Court is of the
view that the rule of thumb that should be followed while
granting damages can be summarized in a chart as under:–
21 260 (2019) DLT 135
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# Degree of malafide Proportionate award
conduct
(i) First time innocent Injunction
infringer
(ii) First-time knowing Injunction + partial
infringer costs
(iii) Repeated knowing Injunction + costs +
infringer which partial damages
causes minor impact
to the plaintiff
(iv) Repeated knowing Injunction + costs+
infringer which compensatory
causes major impact damages
to the plaintiff
(v) Infringement which Injunction + Costs +
was deliberate Aggravated
and calculated damages
(gangster/scam/maf (compensatory +
ia) + wilfful additional damages)
contempt of Court
42. It is clarified that the above chart is illustrative and
is not to be read as a statutory provision. The Courts are
free to deviate from the same for good reason.”
*****
33. (i) It is a matter of record that the learned Local
Commissioner had seized following infringed goods:
(a) 40 pc sheets of stickers (three sticker in each sheet) of
HOSPIGRIP;
(b) 29 pc Ankle Restrainer HOSPIGRIP;
(c) 62 pc Wrist Restrainer HOSPIGRIP;
(d) 4 pc Restrainer Design HOSPIGRIP;
(e) 3 pc stamps of M/s Oxygun Health Pvt. Ltd.;
(ii) In her report dated 09.08.2023, the learned Local
Commissioner has not mentioned the monetary value of the
infringed goods seized from the premises of defendant(s),
however, the plaintiffs have claimed damages @
Rs.25,00,000/- (Rupees Twenty Five Lakhs Only). The
learned counsel for the plaintiff has failed to give suitable
explanation as to on what basis he is claiming damages @
Rs.25,00,000/-, however, taking a holistic view of the
matter vis-a-vis provisions as laid down under Rule 20 of
the IPD Rules, 2022 and applying the ratio of law laid
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down by Hon’ble High Court of Delhi in case of Koninlijke
Philips, I am of the considered opinion that grant of
damages @ Rs.3,00,000/- to the plaintiff would meet the
ends of justice. I order accordingly.”
16. Oxygun, and other defendants in the suit, have appealed to this
Court against the aforesaid decision.
Rival contentions
17. Mr. Bhadauria, learned Counsel for Oxygun, did not choose to
advance any submission on the aspect of infringement or passing off.
The only submissions advanced by him were, firstly, that on account
of disuse, the trademark asserted by Pneumo Care had died, and could
not constitute a basis for infringement action (for which he cited the
judgments rendered by the Division Benches of this Court in
Veerumal Praveen Kumar v Needle Industries (India) Ltd.22 and
Fedders Lloyd Corporation Ltd. v Fedders Corporation23); secondly,
that as the Pneumo Care had not suffered any loss as a result of the
alleged infringing actions of Oxygun, it could not sustain any claim
for actual damages and damages, if at all, had to be nominal; and,
thirdly, that in respect of Appellants 4 and 5, Pneumo Care had not
identified any independent role in the alleged infringement and
passing off and therefore, no damages could be levied on the said
appellants.
18. Responding to Mr. Bhadauria’s submission, Ms. Beenashaw N.
Soni submits that once the appellants’ written statement have been
22 93 (2001) DLT 600 (DB)
23 119 (2005) DLT 410
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struck off the record, and the challenge to the said decision had also
been dismissed for non prosecution, the appellant could not be heard
to contend that Pneumo Care’s asserted trademark had died on
account of non-user. She submits that, once Mr. Bhadauria had not
chosen to advance any submission on the aspect of infringement and
passing off, the appeal had necessarily to fail.
19. She further points out that the decision in Balraj Taneja was
also noted and considered by the learned Commercial Court while
passing the impugned order.
Analysis
20. For the following reasons, we are not inclined to entertain the
present appeal.
21. Re. plea of non-user
21.1 The first contention of Mr. Bhadauria is that the respondents
could not have sued for infringement as the trademark asserted by
them had become invalid for non-user. A submission of non-user is a
submission of fact, which has to be pleaded. Inasmuch as the written
statement filed by the appellant was struck off the record, as having
been filed beyond the statutory limitation provided in Order VIII Rule
1 of the CPC, as amended by the Commercial Courts Act 2015, and
CM(M)-(IPD) 23/2024, preferred against the said order was also
dismissed by this Court for non-prosecution which was never
challenged further, the appellants have themselves acquiesced to
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having no defence on their behalf on record in the proceedings. As
such, there is no assertion on affidavit by the appellants, much less
any evidence, to the effect that the asserted mark of the respondent
had become invalid on account of non-user. This is an assertion of
fact, which could be countenanced only if it was supported by
evidence. In the absence of any evidence, this contention cannot be
sustained. Far less can it constitute a basis to interfere with the
impugned order.
21.2 The respondent has, in the plaint, on the other hand, specifically
pleaded user of the asserted HOSPICUFF and HOSPIGRIP marks
thus, in paras 11, 13, 15 to 17, 19 and 21 to 25 of the plaint, thus:
“11. Trademarks HOSPIGRIP & HOSPICUFF: That Plaintiff
No. 1 has adopted the trademark HOSPIGRIP & HOSPICUFF in
the year 2016 in respect of the said goods. Both the Plaintiffs are
using the same in the course of trade and business in respect of
above-mentioned goods since 2016 and have been using the same
since then upto the present time. The said trade mark HOSPIGRIP
& HOSPICUFF adopted for the aforesaid goods is very distinctive
and has earned immense goodwill and reputation.
*****
13. The Plaintiffs have been using the same in the course of
trade and business in respect of above-mentioned goods since 2016
upto the present time. The registration of the trademarks/labels
HOSPIGRIP & HOSPICUFF is the testimony of the same being
inherently distinctive. The said trademarks/labels adopted for the
aforesaid goods are very distinctive and has earned immense
goodwill and reputation.
*****
15. That the Plaintiffs have been using then said
trademarks/labels as proprietor thereof continuously,
commercially, openly, exclusively and to the exclusion of others,
in the course of trade without any interruption or interference from
any corner whatsoever.
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16. That the products of the Plaintiffs are based on intensive
research to make life easier for care givers and patients, and are
known for their good quality, unique and eye-catching style of
branding and packaging. The products of the Plaintiffs and his
authorized trademark licensees are very popular and on high
demand among different classes of customers. The Plaintiffs deal
in a wide range of medical devices and products.
17. That on account of such extensive use the trademark label
and design have attained the designation of being a well-known
mark as defined under the Trade Marks Act and thus any adoption
or use of the mark and design or any of deceptively similar mark /
design in relation to identical and or similar goods will not only
cause confusion and deception to the public but will also be
contrary to the protection required to be afforded to a well-known
mark, dilute its image and be generally misleading to the general
public, consumers and members of the trading community.
*****
19. That the Plaintiffs are the proprietor, prior user of its trade
marks/labels and design/shape of the restrainer. The said business
being carried on by the Plaintiffs under its said trademarks/labels
with unique design is very extensive one and the goods and the
business thereunder are being practically sold and distributed in all
parts of India. The Plaintiffs are expanding its business in other
countries also under its said trademarks/labels. The said goods and
business thereunder are identified as exclusively originating from
the Plaintiffs source and are identified with the Plaintiffs. The said
trademarks/label has already become distinctive and associated
with the Plaintiffs and Plaintiffs’ said goods and business on
account of its long, continuous, extensive and exclusive user
thereof.
*****
21. That the Plaintiffs’ goods and business under its said
trademarks labels and design of ankle and wrist restrainer has
acquired tremendous goodwill and envious reputation in the market
and the Plaintiffs have already built up a handsome and valuable
trade thereunder. The Plaintiffs under the said trademarks/label has
already commanded handsome sales since its said adoption and
user. The Plaintiffs are also supplying its goods under the said
trademarks/label in the other countries. The copies of the sale
invoices are filed herewith.
22. That the goods under the said trademarks/label are highly
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demanded in the markets on account of standard quality and
precision. The public at large associates the said trademark/label
and design of ankle and writ restrainer with the said goods of
Plaintiffs and Plaintiffs have been using the said trade mark/label
exclusively and to the exclusion of others. Plaintiff’s said goods
and its business is wholly dependent on the goodwill and
reputation of the said trademark/label. Plaintiffs have built up a
valuable trade under the said trademarks/label. Sale figure of the
Plaintiff are tabled herein below:
TURN-OVER OF PLAINTIFF NO. 1
Financial Sale figure in Lacs
Year (Amount in Rupees)
2017- 1280.45
2018
2018- 1377.66
2019
2019- 1277.68
2020
2020- 1961.42
2021
2021- 2619.91
2022
Total 8617.12
TURN-OVER OF PLAINTIFF NO. 1 FOR RESTRAINER
Financial Sale figure (Amount in
Year Rupees)
2020- 40,59,198/-
2021
2021- 50,90,977/- 2022 2022- 61,32,715/- 2023 TOTAL 1,52,82,890/-
23. That the Plaintiffs have widely advertised the said trade
mark/label. Plaintiffs have been continuously promoting its
business of said goods under its said trademarks/labels and the said
design through different media and modes such as advertisement in
newspaper, trade magazines, and distribution of trade literatures
and trade novelties. The Plaintiffs, as such, have already spent a
substantial sum of money on the publicity of the said
trademarks/label and design and in consequence thereof the said
trademarks/labels and design enjoys indelible, envious, solid,
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enduring and first class reputation in the markets
24. That the Plaintiffs’ said trademarks/label has already
become distinctive indicium of the Plaintiffs and the Plaintiffs said
goods and business there under. The said trademarks/labels of the
Plaintiffs have acquired secondary significance denoting the said
goods and business of the Plaintiffs and it is globally recognized
with the Plaintiffs source alone. It has become universally
synonymous with the goods and business of the Plaintiffs in
consequence thereof the Plaintiffs’ said trademarks/label have
become distinctive and well known trademarks/label within the
meaning of Section 2 (1) (zg) and also relevant provisions
including section 11 of the Trade Marks Act, 1999 and is liable to
be protected. The Plaintiffs trademarks/label and design of ankle
and wrist restrainer has enjoyed the well known status among the
public since its adoption.
25. That the Plaintiffs are working towards achieving
excellence in each of the work processes handled by the Plaintiffs,
the customer-centric work policy guides the Plaintiffs to
successfully matchup with the demand of a wide range of goods.
The products/goods made available by the Plaintiffs at competitive
prices, are highly demanded by the customers. The Plaintiffs’
trademarks/label has acquired tremendous goodwill and reputation
in India. Its reputation is for high quality products.”
These averments have gone unrebutted, for want of any written
statement. The plea that the asserted marks have become invalid or
incapable of assertion for non-user, therefore, cannot be pleaded by
the appellants in appeal.
21.3 Besides, we may also note that, in the Trade Marks Act, there is
no provision which disentitles the proprietor of a registered trade mark
from seeking relief against infringement, which is a right sanctified by
Section 28(1)24 of the Trade Marks Act, on the ground that the mark
has not been used, or substantially used by the proprietor of the
24 28. Rights conferred by registration.–(1) Subject to the other provisions of this Act, the registration
of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use
of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to
obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
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registration. Section 28(1) does not make the right to seek relief
against infringement dependent on user of the mark. In Midas
Hygiene Industries (P) Ltd v Sudhir Bhatia25, the Supreme Court
held that it was “well settled” that “in cases of infringement of trade
mark or copyright, normally an injunction must follow”.
“Infringement”, as defined in Section 29 of the Trade Marks Act,
solely requires the allegedly infringed mark to be registered, not used.
The limits on the effect of a registered trade mark are contained in
Section 30, and non-user of the mark is not one of the circumstances
envisaged in that Section either. In Renaissance Hotel Holdings Inc.
v B. Vijaya Sai26, the Supreme Court held thus, after referring to
earlier decisions on the point:
“52. It could thus be seen that this Court again reiterated that the
question to be asked in an infringement action is as to whether the
defendant is using a mark which is same as, or which is a
colourable imitation of the plaintiff’s registered trade mark. It has
further been held that though the get-up of the defendant’s goods
may be so different from the plaintiff’s goods and the prices may
also be so different that there would be no probability of deception
of the public, nevertheless even in such cases i.e. in an
infringement action, an injunction would be issued as soon as it is
proved that the defendant is improperly using the plaintiff’s mark.”
(Emphasis supplied)
Despite the reliance on the judgment in Veerumal, therefore, it
remains doubtful whether the Court can, in the case of infringement of
a trade mark of which the registration is subsisting and valid, enter
into the issue of commercial use of the mark while examining a plea
of infringement.
25 (2004) 3 SCC 90
26 (2022) 5 SCC 1
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21.4 Non-use, moreover, is envisaged, in Section 47(1)27 of the
Trade Marks Act, as a ground on which, on application, the mark can
be taken off the register of trade marks. Once the Trade Marks Act, as
the governing statute, envisages a statutory consequence of non-use,
we have our doubts as to whether any other consequence of non-use
can be fashioned by judicial fiat. The only consequence of non-use,
envisaged in the Trade Marks Act, is removal of the mark from the
register of Trade Marks. That, again, cannot be a suo motu exercise
by the Registrar of Trade Marks, but has to be on an application made
by an aggrieved person. It goes without saying that, if such an
application were to be made, the mark would not be removed from the
register without the proprietor of the mark being given a prior
opportunity of hearing. Pending culmination of this exercise, the
mark would continue to remain a validly registered mark, and would
be entitled, in view of Section 28(1) as well as the law laid down by
the Supreme Court in, inter alia, Midas Hygiene and Renaissance
27 47. Removal from register and imposition of limitations on ground of non-use. –
(1) A registered trade mark may be taken off the register in respect of the goods or services in
respect of which it is registered on application made in the prescribed manner to the Registrar or
the High Court by any person aggrieved on the ground either–
(a) that the trade mark was registered without any bona fide intention on the part of
the applicant for registration that it should be used in relation to those goods or services
by him or, in a case to which the provisions of Section 46 apply, by the company
concerned or the registered user, as the case may be, and that there has, in fact, been no
bona fide use of the trade mark in relation to those goods or services by any proprietor
thereof for the time being up to a date three months before the date of the application; or
(b) that up to a date three months before the date of the application, a continuous
period of five years from the date on which the trade mark is actually entered in the
register or longer had elapsed during which the trade mark was registered and during
which there was no bona fide use thereof in relation to those goods or services by any
proprietor thereof for the time being:
Provided that except where the applicant has been permitted under Section 12 to register
an identical or nearly resembling trade mark in respect of the goods or services in question, or
where the Registrar or the High Court, as the case may be, is of opinion that he might properly be
permitted so to register such a trade mark, the Registrar or the High Court, as the case may be, may
refuse an application under clause (a) or clause (b) in relation to any goods or services, if it is
shown that there has been, before the relevant date or during the relevant period, as the case may
be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to–
(i) goods or services of the same description; or
(ii) goods or services associated with those goods or services of that description
being goods or services, as the case may be, in respect of which the trade mark is
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Hotel. Veerumal, we may observe, does not notice Section 47.
21.5 Squatting on a trade mark, after getting it registered, without
using it, is, no doubt, unwholesome and to be deprecated. The
sequelae must, however, be those which the statutory envisages. It
would be open to any party, including one who desires to use an
identical mark, to apply to the Registrar of Trade Marks for
invalidation of the mark on the ground of non-user, under Section 47.
Once it is invalidated, and removed from the register, he is free to use
the mark, or any mark similar thereto. Without having the mark
removed from the register, however, we are clear in our mind that no
one can infringe the mark and, thereafter, plead, as a defence to
infringement, that the mark had “died” by non-user. The Trade Marks
Act, plainly, does not envisage any such automatic death of a
registered trade mark.
21.6 Veerumal, we feel, cannot be regarded as laying down a
universal principle that, in every case, an infringer of a registered trade
mark can plead, as a defence to infringement, that the trade mark had
perished for non-use. Veerumal emanated from a suit instituted by
Needle Industries28, the respondent before the Division Bench, against
Veerumal. In that case, the goods were being sold in India under a
licence agreement which came to an end in 1981. As a result, sale of
the goods in India could not have been effected after 1981. Needle,
nonetheless, sought to injunct all other persons from using the asserted
mark, merely on the ground of the registration of the mark at a time
registered.
28 “Needle” hereinafter
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when the licence agreement was subsisting, and the mark could have
been used in India. The only proof of user of the mark in India was
for the period 1977 to 1979, when the licence agreement was in
existence. Pursuant to the expiry of the licence agreement in 1981,
there was no evidence of any use of the mark in India. Needle
therefore sought to plead trans border reputation of the mark, but the
Division Bench found the evidence insufficient to sustain such a plea.
It was in these peculiar circumstances that the Division Bench held
that Needle could not maintain a suit for injunction against all others
from using the mark, even after the licence agreement had expired in
1981, there was no use of the mark after 1979, and no evidence of
trans-border reputation was forthcoming. We may reproduce, in this
context, paras 23 and 24 of the report in Veerumal, thus:
“23. The primary aspect in our considered view which needs to
be examined is the issue relating to the respondents being the
registered user of the trademark and whether the allegations of
non-use has any effect of the same. The Counsel for the parties
have taken us through the documents placed on record. The
respondents had filed various documents to show their sales. These
are in the form of invoices and other materials. We find force in
the submission of learned Counsel for the appellant that the
material placed on record shows sales only for a short period of
time from 1977 to 1979. It is an admitted position that the inter
se licence agreement between the two respondents did not survive
after 1981, which prima facie show that there has been no sales by
the respondents after 1981. Though the aspect of global reputation
has been mentioned above, as the second issue, it would be
pertinent to state at this stage that no material has been placed on
record to substantiate this claim of global reputation. The invoices
are for a limited period of time and some of the invoices relate to
Hong Kong. There is also nothing on record to show any
reputation of the goods of the respondents in India in 1960s and
1970s, as observed by the learned Single Judge. Thus we are also
unable to agree with the factual finding of the learned Single
Judge that there is material on record to show that there were
sales by the respondents in India prior to 1981 other than for the
period 1977 to 1979.
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24. In view of the aforesaid factual position what has to be
considered is whether the factum of the registration of the
trademark in the name of the appellant is sufficient to grant relief
in favour of the respondents or whether something more is
required. This has to be considered in view of the submission of
learned Counsel for the appellant that the trademark cannot exist in
vacuum and in view of their being a non-user of the trademark
since 1981, the respondents are not entitled to any protection.”
Veerumal, therefore, turned on peculiar facts and, in our considered
opinion, has to be understood as having been rendered in those facts.
Indeed, the Division Bench has expressly said so. To interpret
Veerumal has enunciating an absolute principle that an infringer can
infringe a registered trade mark of another person, without applying
for striking off the trade mark from the register on the ground of non-
user and, thereafter, plead, when an infringement action is brought
against him, that the mark had died for non user and that, therefore, he
was free to infringe it, would, in our view, be entirely incorrect in law.
21.7 Besides, the concept of “use” of a registered trade mark, in the
Trade Marks Act, is not limited to commercial exploitation of goods
or services bearing the mark. Section 2(2)(c)(i) includes, in the
definition of “use” of a mark in the Trade Marks Act, in relation to
goods, “a reference to the use of the mark upon, or in any physical or
in any other relation whatsoever, to such goods”. The understanding
of the concept of “use” of the mark, as espoused by Mr Bhadauria, is,
therefore, not in sync with the concept of use as understood in the
Trade Marks Act.
21.8 In any case, here, as the appellants’ written statements were
never filed, they allowed the suit to continue undefended. They
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cannot, therefore, contend that the respondent’s mark “died for non
user”.
22. Re. liability of Appellants 4 and 5
22.1 Mr. Bhadauria further submits that, in any event, no liability
could attach to Appellants 4 and 5, as there is no evidence led by the
respondents, regarding their complicity in the matter. He relies, for
this purpose, on the judgment of the Supreme Court in Balraj Taneja
v Sunil Madan, to submit that, even if a written statement is not taken
on the record, the Court cannot straightway proceed to decree the suit
without considering the evidence. The statement of the law in this
regard, as contained in Balraj Taneja, is as under:
“29. As pointed out earlier, the court has not to act blindly upon
the admission of a fact made by the defendant in his written
statement nor should the court proceed to pass judgment blindly
merely because a written statement has not been filed by the
defendant traversing the facts set out by the plaintiff in the plaint
filed in the court. In a case, specially where a written statement has
not been filed by the defendant, the court should be a little cautious
in proceeding under Order 8 Rule 10 CPC. Before passing the
judgment against the defendant it must see to it that even if the
facts set out in the plaint are treated to have been admitted, a
judgment could possibly be passed in favour of the plaintiff
without requiring him to prove any fact mentioned in the plaint. It
is a matter of the court’s satisfaction and, therefore, only on being
satisfied that there is no fact which need be proved on account of
deemed admission, the court can conveniently pass a judgment
against the defendant who has not filed the written statement. But
if the plaint itself indicates that there are disputed questions of fact
involved in the case regarding which two different versions are set
out in the plaint itself, it would not be safe for the court to pass a
judgment without requiring the plaintiff to prove the facts so as to
settle the factual controversy. Such a case would be covered by the
expression “the court may, in its discretion, require any such fact
to be proved” used in sub-rule (2) of Rule 5 of Order 8, or the
expression “may make such order in relation to the suit as it thinks
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fit” used in Rule 10 of Order 8.”
Balraj Taneja has, therefore, to be carefully understood. It recognizes
the fact that Order VIII Rule 10 of the CPC empowers the Court, in a
case in which the defendant fails to file written statement within the
time available therefor, to “pronounce judgment against him” or
“make such order in relation to the suit as it thinks fit”. The use of the
word “shall” before “pronounce judgment against him” indicates that,
ordinarily, the plaintiff would be entitled to a decree in terms of the
prayers in the suit on the defendant failing to file a written statement
within the time available therefor. Balraj Taneja clarifies, towards the
conclusion of para 29 extracted supra, that the case which would be
covered by the concluding caveat empowering the court to “make
such order in relation to the suit as it thinks fit” is one in which “the
plaint itself indicates that there are disputed questions of fact involved
in the case regarding which two different versions are set out in the
plaint itself”. In such a case, the decision in Balraj Taneja clarifies
that “it would not be safe for the court to pass a judgment without
requiring the plaintiff to prove the facts so as to settle the factual
controversy”. This “factual controversy” must naturally emerge from
the plaint itself, as there is no written statement. Where no factual
controversy emerges from the plaint, however, the Court is entirely
within its jurisdiction in decreeing the suit in terms of the prayers in
the plaint. Para 26 of the decision in C.N. Ramappa Gowda v
C.C.Chandregowda29 opines, in a similar vein, thus:
“26. It is only when the court for recorded reasons is fully
satisfied that there is no fact which needs to be proved at the29 (2012) 5 SCC 265
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instance of the plaintiff in view of the deemed admission by the
defendant, the court can conveniently pass a judgment and decree
against the defendant who has not filed the written statement. But,
if the plaint itself indicates that there are disputed questions of fact
involved in the case arising from the plaint itself giving rise to two
versions, it would not be safe for the court to record an ex parte
judgment without directing the plaintiff to prove the facts so as to
settle the factual controversy. In that event, the ex parte judgment
although may appear to have decided the suit expeditiously, it
ultimately gives rise to several layers of appeal after appeal which
ultimately compounds the delay in finally disposing of the suit
giving rise to multiplicity of proceedings which hardly promotes
the cause of speedy trial.”
22.2 In the present case, the plaint of the respondent, as filed before
the learned Commercial Court, does not disclose the existence of any
disputed issues of fact, as would require leading of evidence to “settle
the factual controversy”.
22.3 Moreover, we find that, in the present case, the Court has not
merely decreed the suit because no written statement was on record.
The Court has proceeded to examine the matter holistically on merits.
Having found that a case of infringement and passing off, both of
trade mark and design, had been made out, the Court has proceeded to
decree the suit and awarded damages. This, therefore, is not a case in
which the decision of the learned Commercial Court can be faulted on
the anvil of the declaration of the law in Balraj Taneja.
22.4 Besides, we find that the learned Commercial Court has also
considered the decision in Balraj Taneja in para 18 of the impugned
judgment, which reads thus:
“18. (i) Further the power and authority of the Courts to
straightway decree a suit on the basis of averments made in plaint
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in terms of Order VIII Rule 10 CPC, in the absence of a written
statement filed by the defendant is well settled by the Hon’ble
Supreme Court in case reported as, titled as, “Balraj Taneja v
Sunil Madan“
(ii) Furthermore, the Hon’ble High Court of Delhi in case
reported as, “CS (Comm.) No.618/2019”, titled as, “Parsvnath
Developers Limited v Vikram Khosla” (DOD: 03.03.2021), has
been pleased to lay down as under:
*****
9. Having heard the learned counsel for the plaintiff, it
is noted that the defendant has not cared to appear before
this Court and was proceeded exparte. The law with regard
to Order VIII Rule 10 CPC is clear, which stipulates that
where any party from whom a written statement is required
under Rule 1 or Rule 9, fails to present the same within
time permitted or fixed by the Court as the case may be, the
Court shall pronounce judgment or make such orders in
relation to the suit as it thinks fit and on the pronouncement
of same, the decree sheet shall be drawn up. Accordingly,
in view of the provisions of order VIII Rule 10 CPC, I
proceed to decide the present suit. Further, I am in
agreement with the judgments of the Coordinate Benches of
this Court as relied upon by the plaintiff in paragraph 8 on
the issue that in ex-parte matters no purpose would be
served if evidence is directed to be led. There being no
written statement filed, the averments in the Plaint being
unrebutted, the same are deemed to be correct.
*****
(iii) Recently, the Hon’ble High Court of Delhi in case reported
as, “CS (Comm.) No.72/2022”, titled as, “Kleenoil Filtration
India Pvt. Ltd. v Udit Khatri & Ors.” (DOD: 05.01.2023) has been
pleased to clear the air regarding power and authority of Court to
straightway decree the suit under Order VIII Rule 10 CPC..”
22.5 Even qua the complicity of Appellants 4 and 5, the averments
in paras 26 to 28 of the plaint, extracted hereinbefore, have gone
untraversed. The appellants cannot, therefore, seek to contend that the
learned Commercial Court erred in passing the impugned judgment
and decree against them.
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23. Re. quantum of damages
23.1 Mr. Bhadauria further submits that, as the respondents have not
suffered any loss, as they have not been using the asserted marks, the
damages, if any, would have to be nominal.
23.2 We find, from the impugned judgment, that the learned
Commercial Court has in fact awarded nominal damages. Though the
respondents sought damages of ₹ 25 lakhs, the learned Commercial
Court has held that no evidence having been led to justify the damages
of ₹ 25 lakhs, nominal damages of ₹ 3 lakhs had been awarded
following the law laid down by this Court in Koninlijke Philips v
Amazestore. This decision follows the principle of “compensatory
damages” as against actual damages, where egregious infringement or
passing off is found to have taken place. We find no error in the
approach of the learned Commercial Court in following the decision
in Koninlijke Philips, which was binding on it.
23.3 We may note, here, that Mr Bhadauria did not seek, in
arguments, to question the correctness of the principle of
compensatory damages, as enunciated in Koninlijke Philips; ergo, we
express no view thereon.
24. Re. merits
24.1 Insofar as the merits of the case are concerned, significantly, not
a single argument was advanced by Mr. Bhadauria. He has not sought
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to contend, before us, that the case was not one of infringement or
passing off. He has restricted his contentions to the technical grounds
which have already been noted hereinabove and disposed of.
24.2 On merits, the case is clear as crystal. Oxygun has infringed,
and pirated, the registered trade mark and design of Pneumo Care. The
products are identical. A pictorial comparison of the products also
reveal this. It is obvious that Oxygun is seeking to confuse – rather,
deceive – consumers into purchasing its product, believing it to be
Pneumo Care’s.
24.3 This, therefore, is a case of rank copying of the registered trade
mark and the registered design of the plaintiff, clearly to capitalise on
the goodwill of the respondent. The appellant’s conduct is egregious
in the extreme. The case, therefore, attracts not only the principles of
infringement, but also of passing off.
24.4 The products are used in the health sector and, therefore, the
approach of the Court is required to be more stern than usual. If
anything, therefore, we feel that the learned Commercial Court has
been conservative in its estimate of the damages with which the
appellant should be mulcted.
Conclusion
25. For all the aforesaid reasons, we find no cause to interfere with
the judgment of the learned Commercial Court.
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26. The appeal is dismissed.
C. HARI SHANKAR, J.
AJAY DIGPAUL, J.
MAY 13, 2025
dsn
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