AD Ideas Private Limited vs View AD Ideas And Ors

Bibek Chaudhuri, J

The Court : By an order dated 21st August, 2019, a co-ordinate Bench of this Court passed an order directing the petitioner to serve a copy of the application being GA No.1878 of 2019 on the respondents. It was also directed that if in spite of service, the respondents remained unrepresented, the application would be decided in their absence.

Subsequently, on 3rd September, 2019, the petitioner had filed affidavit of service showing service of notice of the above mentioned application upon the respondents. In spite of service, the respondents are not represented by any learned Advocate. Therefore, the application is taken up for hearing ex parte.

The petitioner is a private limited company engaged in the business of advertising, publicity, hoarding etc. and also as publicity consultant and product promoters. Atul Kumar Dalmia one of the Directors of the petitioner-company used to run the said business as proprietor since 1983 under the mark "Ad Ideas". Subsequently, the said Atul Kumar Dalmia and Smt. Chandra Kala Dalmia established a private limited company under the name and style of "AD Ideas Private Limited" which has been duly registered under the Companies Act.

In the Memorandum of Association of the petitioner company, it is clearly stipulated that the company had acquired and taken over as a going concern, the proprietorship firm at Kolkata under the name and style of M/S. AD-IDEAS and all or any of the assets and liabilities of that firm on usual terms and conditions as may be mutually agreed upon.

The said company was incorporated on 4th March, 2008 as per certificate of incorporation annexed with the application. It is further pleaded by the petitioner that Atul Kumar Dalmia used to run the said business under the name and style of "Ad Ideas" since 1987 which is prima facie revealed from the trade license issued by the Kolkata Municipal Corporation for the year 1991-1992. Again, on 22nd September, 1999 the trade license was issued in favour of Atul Kumar Dalmia as proprietor of "Ad Ideas" for the year 2000-2001.

Thus, the petitioner has been using the distinctive mark "Ad Ideas" continuously for more than 36 years and as a consequence of such long, continuous and extensive use, the mark is well distinguished in the minds of the consumers and members of trade as being a mark of the petitioner and none else.

After incorporation of the company, the petitioner made an application for registration of trade mark on 28th September, 2010 for the distinctive mark "Ad Ideas". The said mark was duly registered on 14th November, 2014. It was clearly stated that the distinctive mark "Ad Ideas" is being used by the petitioner since 9th August, 1993 in the application for registration of trade mark. The petitioner company has earned goodwill and reputation in business by using distinctive registered trade mark since commencement of the business, the reflection of which is available from the comparative study or yearly sales figures from 2008-2009 to 2017-2018 and also from year-wise expenditure during the said period.

It is alleged by the petitioner that the respondent No.1 is a Limited Liability Partnership firm under the name and style of "View Ad Ideas" and the respondent Nos.2 and 3 are the partners of the said firm. The defendants are also engaged in the same kind of business like that of the petitioner's. The petitioner came to know from internet that the defendant No.1 - partnership firm was incorporated on 16th September, 2015.

It is further alleged that the opposite parties are using their mark "View Ad Ideas" in such a manner imitating the style of writing and background used by the petitioner-company that it would cause genuine confusion to the customers and common traders that the defendants' business concern is actually the same and identical business concern to the petitioner's company. The opposite parties are thereby infringing the trade mark of the petitioner in obvious, fraudulent and/or slavish imitation of the petitioner's distinctive mark "Ad Ideas". It is alleged that the use of the mark "View Ad Ideas" by the opposite party constitutes an act of infringement of the petitioner's trade mark "Ad Ideas" within the meaning of Section 29 of the Trade Marks Act, 1999 and they are guilty of unfair trade practices as well as passing off.

Under the facts and circumstances stated above, the petitioner-company has filed a suit being CS No. 132 of 2019 praying for reliefs :

(a) A decree for perpetual injunction restraining the respondents its men, servants, agents, assignees and/or any one claiming through them from providing service in relation to marketing, advertising and promotion in print or electronic media or internet in India and also advertising by way of hoardings and product promotions or otherwise rendering advertising and promotional services under the mark "View Ad Ideas" or under any other mark which is identical or deceptively similar to the petitioner's registered trademark "AD Ideas" in any manner whatsoever;

(b) A decree for perpetual injunction restraining the respondents its men, servants, agents, assignees and/or any one claiming through them from passing off its service in relation to mark4eting, advertising and promotion in pri9nt or electronic media or internet in India and also advertising by way of hoardings and product promotions or otherwise rendering advertising and promotional services under the mark "View Ad Ideas" in print or electronic media or internet or under any other mark which is identical and/or deceptively similar to the petitioner's mark "AD Idea" in any manner whatsoever;

(c) A decree of perpetual injunction restraining the respondents, its men, servants, agents, assignees or any one claiming through them from carrying on business under the name and style of "Vide Ad Ideas" or "AD Ideas" or any other trading name and /or business name and/or part of the business concern bearing the same "AD Ideas" in any manner whatsoever;

(d) An enquiry into the laws and damages be made by this Hon'ble Court for the loss suffered by the petitioner for wrongful use and adoption of the mark "View Ad Ideas" by the respondents by providing business and/or services under the said mark and a decree be made for the said sum in favour of the petitioner upon such enquiry being made;

(e) Delivery up and cancellation of the respondents' wrappers, labels, advertising material, business papers, containing the mark "View Ad Ideas" or any other mark which is identical and/or fraudulent imitation and/or deceptively similar to the petitioner's mark "AD Ideas" and destruction thereof;

(f) Injunction;

(g) Receiver;

(h) Attachment;

(i) Costs;

(j) Such further and/or other reliefs.

By filing the instant application, the petitioner has prayed for ad interim as well as temporary injunction on the basis of Prayers (a) and (c) of the application.

Well settled is the law that registration of a trade mark, evidence regarding prior user of such trade mark even before registration per se lead to the conclusion that the plaintiff has a prima facie case for infringement of a trade mark to be made out, the person responsible must use a mark in course of trade which is deceptively similar. The Supreme Court in SM Dyechem Limited Versus Cadbury (India Limited) reported in AIR 2000 SC 2114 held that the plaintiff must prove the essential features of his registered mark and that such registered mark has been dishonestly and fraudulently copied by the defendant at the cost of goodwill and reputation in the business conducted by the plaintiff. The onus to prove a "deception" is on the part of the plaintiff who alleges infringement. A mark is said to be infringed by another trade if, even without using the whole of it, the latter uses one or more of its "essential features". The identification of an essential feature depends partly on the Court's own judgment and partly on the burden of the evidence that is placed before it. Ascertainment of an essential feature is not to be ocular test alone. It is impossible to exclude consideration of the sound words forming part or the whole of the trade mark which has been infringed. In order to establish infringement of a trade mark, it is not necessary for the plaintiff/petitioner to establish that the defendant has been using identical mark. What is necessary is to consider if the mark used by the defendant in his business is deceptively similar with that of the plaintiff's.

From the averment made in the application as well as the documents annexed with the application, it is prima facie ascertained that the plaintiff/petitioner is the prior user of the mark and they have acquired reputation and goodwill in due course of time. It is also ascertained prima facie that in view of long and continuous use of the trade mark, the same has become exclusively associated with the petitioner and the consumers of the trade of advertising and publishing as well as general public are associated with the mark "Ad Ideas" of the petitioner and none else.

I am prima facie satisfied on perusal of Annexure - K that the respondents are using the mark "Ad Ideas" in such a manner that there is every reason for the consumers of being deceived by such fraudulent user of the mark by the opposite parties. Therefore, it is prima facie found that the respondent/opposite parties have infringed the trade mark of the petitioner.

The Hon'ble Supreme Court in the case of Durga Dutta Sharma Versus N. P. Importers reported in AIR 1965 SC 960 held that once it is established that the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or mocks on the goods or on the packets in which he offers for goods for sell so marked differences or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immediately; whereas in the case of passing off the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiffs.

Learned Counsel on behalf of the petitioner has referred to a decision reported in (2004) 3 SCC 90 in the case of Midas Hygiene Industries (P) Ltd.

And Another Versus Sudhir Bhatia And Others to contend that in case of infringement, either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat the grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.

It is pertinent to mention that the dishonesty of the respondents is presumed when they have used the distinctive mark similar to the one which is used by the petitioner for a long time and which has been registered with the authority.

In view of the above discussion, it is found that the petitioner has been able to make out a prima facie case of infringement of trade mark by the respondents. Balance of convenience is of course in favour of the petitioner as the mark used by the respondents is deceptively identical with the petitioner and it has not been registered with the authority.

For the reasons stated above, the petitioner is entitled to get an order of ad interim injunction in terms of prayers (a) and (c) of the application for a limited period upto 15th November, 2019.

The petitioner is directed to serve notice upon the opposite parties directing them to show cause within seven days from the receipt of the said notice as to why the ad interim order of injunction shall not be made absolute.

List this matter on 13th November, 2019.