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High CourtsSingle Bench(2024) 09 DEL CK 2098

JK Cement Limited vs Ankur Agarwal & Ors.

Delhi High Court · Decided on 19 September 2024

HON’BLE JUDGES
Mini Pushkarna, J
RESULT
Disposed Of
CASE NUMBER
CS(COMM) 666/2022 & I.A. 15685/2022

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Judgment

169 paragraphs · 2,465 words

MINI PUSHKARNA, J (ORAL)

1.

None has appeared for the defendants. It is noted that defendant nos. 1 and 2 had put in appearance, after service. However, no written statement has been filed on their behalf. Defendant no. 3 was also served, as recorded in the order dated 16th February, 2024. However, none appeared for defendant no. 3, despite service and no written statement came to be filed on behalf of defendant no. 3 also. The rights of defendant nos. 1 and 2 to file their written statement, was closed vide order dated 21st September, 2023. The right of defendant no. 3 to file written statement was closed, vide order dated 8th May, 2024. Thus, no written statement has come to be filed on behalf of the defendants, despite lapse of statutory period. Accordingly, the defendants are proceeded ex-parte.

2.

The present suit has been filed praying for permanent injunction for restraining the defendants from using, manufacturing or selling under the trademark J&K, trade name Jay Kay Industries and under any trademark/ label/packaging/trade dress/trade name, which is identical with or deceptively similar to the plaintiff‟s trademark/label/packaging/colour combination/ trade dress/ trade name „JK‟ in relation to goods, i.e., cement, wall putty and other allied/cognate goods/business.

3.

The facts canvassed in the plaint, are as follows:

3.1

The plaintiff is an affiliate of the multi-disciplinary industrial conglomerate JK organisation, which was founded over hundred years ago, by late Lala Juggilal Singhania and late Lala Kamlapat Singhania. The abbreviation „JK‟ denotes „Juggilal Kamlapat‟.

3.2

The trademark JK was adopted and has been in use, since the year 1974 for various goods by the plaintiff, including, cement and other goods introduced time to time, such as wall putty, building materials, grey cement, white cement, gypsum plaster, tile adhesive, wood finishes, non-metallic rigid pipes for building, asphalt, pitch, bitumen, etc.

3.3

The plaintiff is associated with JK organisation, which is an eminent industrial group in India. The JK organisation has different companies for different businesses, apart from plaintiff-company. The trademark JK was adopted as a prefix to the names of manufacturing and trading companies of the family more than a century ago. The list of companies under the trademark JK, as given in the plaint, is as follows:

a)

JK Cement Limited

b)

JK Cotton Limited

c)

Jaykay Enterprises Ltd.,

d)

JK Traders Limited,

e)

JK Paints and Pigments Ltd.,

f)

JK Cement (Western) Ltd.,

g)

Jaykaycem (Central) Ltd.,

h)

Jaykaycem (Northern) Ltd.,

i)

Juggilal Kamlapat Holdings Ltd.,

j)

JK Tyre and Industries Ltd.

k)

JK Lakshmi Cement Limited

l)

JK Fenner India Limited

m)

JK Paper Limited

n)

JK Agri Genetics Limited

o)

JK Risk Managers and Insurance Brokers

p)

JK Lakshmipat University

3.4

The plaintiff is the registered proprietor of the trademark JK and its several variants in India. The list of trademark registrations, in favour of the plaintiff, as given in the plaint, is as follows:

Exhibit reproduced from the original judgment
Exhibit reproduced from the original judgment
No right to the Exclusive use of the all the descriptive materials, the Device & ISI mark
1087380630-08-19991No right to the Exclusive use of Globe" and Expressions Water Proof
11101829219-06-200119
12109008427-03-200219No right to the Exclusive use of the Device of Picture and word J.K. Cement
13112460707-08-200219No right to the Exclusive use of the descriptive matter appearing on the label
14112460807-08-200219
No right to the Exclusive use of the numeral 48 and other descriptive features appearing on the label
15112460907-08-200219No right to the Exclusive use of the numeral 53 and other descriptive features appearing on the label
16120412605-06-200319No right to the Exclusive use of Words Sarvshaktiman and other descriptive matter appearing on the label
17120412705-06-200319
18151026905-12-200619No right to the Exclusive use of the word Wall Putty,
Device of Globe and all descriptive matter appearing on the label
19173455919-09-200819
20196819519-05-201019
21201082718-08-201019No right to the Exclusive use of the Supreme
22237814213-08-20121
23237814313-08-201219
24241976930-10-201219
25255794402-07-20131
26287256631-12-201419JK Champion Putty
27287256731-12-201419JK Wall Champ Putty
28295159528-04-201519White Cement Based Putty
29299261424-06-20152PrimaxX White Cement Based Putty
30299261524-06-201519
31299610429-06-201519PrimaxX White Cement Based Putty
32332083627-07-201619JK
33339972031-10-201619
34339972131-10-201619JK SUPER CEMENT BUILD SAFE No right to the Exclusive use of
BUILD SAFE
35341464921-11-201619Mark be used as a composite mark and there is no Exclusive right over the descriptive words in the logo
36350966517-03-201719JK SÖPER POLLUGÜARD
37350966317-03-201719JK SÖPER PREMIUM*
38350966417-03-201719JK SÖPER DÜRACRETE
39353255124-04-201719JK SÖPER CEMENT BUILD SAFE
40352404011-04-201719JK Super Strong
41356728109-06-201719JK SÖPER STRONG BUILD SAFE
42358924511-07-201719PrimaxX White Cement Based Primer
43360106028-07-201719PrimaxX
44388851016-07-201819JK Cement LTD.
45391342310-08-20181JK SUPER GRIP
46393661306-09-201819JK SUPER STRONG BUILD SAFE CONCRETE SPECIAL
47393661406-09-201819JK Superfine Wall Putty
48403363921-12-201819JK WalmaxX
49403364021-12-201819JK Cement WalmaxX
50403364121-12-201819JK Cement WallmaxX
51403364321-12-201819JK Cement PowermaxX
52403364421-12-201819JK Cement WhitemaxX
53403364521-12-201819JK Cement SUPER Build Safe
54403364721-12-201819JK GypmaxX
55403364821-12-201819JK PowermaxX
56403364921-12-201819JK WhitemaxX
57404007328-12-201819JK Cement GypsomaxX
58404007428-12-201819JK GypsomaxX
59408126808-02-201919JK CEMENT PrimeMaxX White Cement Wild Primer
60408127008-02-201919JK CEMENT WhiteMaxX Premium White Cement
61408127108-02-201919JK CEMENT GypsomaxX Premium Gypsum Pivotal
62408127308-02-201919JK CEMENT WallMaxX White Cement Wall Puffy
63415133218-04-20191JK Cement TileMaxX
64415133318-04-20191JK Cement GripMaxX
65429582017-09-201919JK CEMENT LevelMaxX White Cement Based Pivotal
66429582217-09-201919JK CEMENT LevelMaxX Leveling Wall Putty
67430550627-09-201919JK LevelMaxX PLUS - White Cement Based Plaster
68430550727-09-201919JK PlastoMaxX - One Coat Gypsum Plaster
69430606627-09-201919JK CEMENT LevelMaxX White Cement Based Leveler
70430936801-10-201919JK CEMENT LevelMaxX White Cement Based Wall Leveler
71438756824-12-20192JK Paints
72449634706-05-202019JK Cement RepairMaxX
73449634806-05-202019JK Cement LevelMaxX Advanced
74449634906-05-202019JK Cement WallMaxX Advanced
75449635006-05-202019JK CEMENT LevelMaxX Single Coat Wall Plaster
76449635106-05-202019JK CEMENT RepairMaxX Housing Cement for General Repairing
77449635206-05-202019JK Cement WallMaxX Super Smooth Wall Putty
78449705107-05-202019JK Cement WallMaxX Professional Wall Putty
79449705207-05-202019JK Cement WallMaxX
80454284424.06.202019JK Cement White Portland Cement
81458295027.07.202019JK Cement White Portland Cement
82458295227.07.202019JK Cement White Portland Cement
83458295527.07.202019JK Cement LevelMaxX White Portland Cement And Coating Putty
84491611122.03.202119JKcement
85491611322.03.202119JKcement
86491611422.03.202119JKcement
87491621822.03.202135JKcement
88491621922.03.202135JKcement
89491622222.03.202135JKcement
90491622322.03.202135JKcement
91503307006.07.202119JKcement GYPSOMaxX Premium Gypsum Master
92503307206.07.202119JKcement GYPSOMaxX Premium Gypsum Master
93503307506.07.202119JKcement GYPSOMaxX Premium Gypsum Master
94503307706.07.202119JKcement GYPSOMaxX Premium Gypsum Master
95503307806.07.202119JKcement GYPSOMaxX Premium Gypsum Master
96503307906.07.202119JKcement GYPSOMaxX Premium Gypsum Master
97503308006.07.202119JKcement GYPSOMaxX Premium Gypsum Master
98503308106.07.202119JKcement GYPSOMaxX Premium Gypsum Master
99503316406.07.202119JKcement LevelMaxX White Cement Based Leveler
100503316506.07.202119JKcement LevelMaxX White Cement Based Leveler
101503316606.07.202119JKcement LevelMaxX White Cement Based Self Eating Master
102503316706.07.202119JKcement LevelMaxX White Cement Based Self Eating Master
103503316806.07.202119JKcement PlaceMaxX One Coat Gypsum Plaster
104503316906.07.202119JKcement PlaceMaxX One Coat Gypsum Plaster
105503317006.07.202119JKcement PlaceMaxX One Coat Gypsum Plaster
106503317106.07.202119JKcement PlaceMaxX One Coat Gypsum Plaster
107503491907.07.202119JKcement PriMaxX White Cement Based Wall Primer
108503492007.07.202119JKcement PriMaxX White Cement Based Wall Primer
109503492107.07.202119JKcement RepairMaxX Maximy Compound for General Repairs
Exhibit reproduced from the original judgment
3.5

By virtue of the excellent quality and extensive sales of the products of the plaintiff, the trademark JK has acquired a handsome and valuable goodwill and reputation. The intending purchasers identify and recognize the products of the plaintiff by the trademark JK.

3.6

On account of continuous, regular, open, extensive and use of the registered trade mark JK and its said variants, label/packaging/artistic work and trade name in respect of its goods and services, the said trade mark JK, its variants, its said label/packaging/artistic work, and trade name, have come to be associated with the name of the plaintiff. People in trade as well as general public consider the said goods under the trade mark JK, its variants and its said label/packaging/artistic work/trade name as the goods manufactured and marketed by the plaintiff and none-else.

3.7

The unwary purchasers recognizes the products, i.e., Cement, White Cement, Wall Putty, Gypsum Plaster, Tile Adhesives, Grouts and Wood Finishes and many more products of the plaintiff under their respective mark JK and its variants through the trademark as well as through its visual appearance of the label/packaging, original artistic work, colour combination, getup, layout, placement, trade name etc. of the plaintiff.

3.8

On 01st September, 2022, the plaintiff from its marketing team through its distributors received complaints of and enquiries about the goods i.e., Cement/Wall Putty being sold by defendant nos. 1 & 2 under the impugned identical/deceptively similar trade mark 'J&K' under impugned deceptively similar label/packaging/colour combination/trade dress over which the name of defendant no. 3 under impugned trade name Jay Kay Industries, is mentioned as manufacturer on the impugned label/packaging and which are being sold by the defendants in clandestine and surreptitious manner without issuing invoice and causing confusion in the markets as to be associated with the plaintiff.

3.9

Further the plaintiff on 09th September 2022 came across the website on which defendant nos. 1 and 2 are soliciting, marketing and selling their impugned goods, i.e., Cement/Wall Putty under the impugned trademark 'J&K' under impugned deceptively similar label/packaging/colour combination/trade dress on website www.ankurpaints.com which is an interactive website of the defendant nos. 1 and 2 connecting buyers and sellers. The defendants are working in connivance and nexus with each other for the manufacturing and sale of the impugned goods under the impugned mark/label/colour combination/trade name.

3.10

A trade mark application, bearing no. 4783607 in Class 19, was filed by defendant nos. 1 & 2 on the „proposed to be used‟ basis for registration of

Exhibit reproduced from the original judgment

, in respect of goods, i.e., Wall Putty, Cement, Cement for Building and Plasters. The plaintiff herein filed opposition application, in respect of the said application of the defendants, vide Opposition No. 1103314.

3.11

The defendants are not the proprietor of impugned trade mark 'J&K' and impugned label/packaging/colour combination/trade name, which is deceptively similar to the registered trademark JK, its label/packaging/ colour combination/trade name.

3.12

The defendants‟ dishonest and malafide intentions are further apparent and evident from the fact that in order to come as close as possible to the trademark JK of the plaintiff and create complete deception and association with the plaintiff‟s goods and business, the defendants have also adopted the impugned deceptively similar label/packaging/colour combination, as well as impugned trade name Jay Kay Industries. Hence, the present suit has been filed.

4.

This Court notes that despite service, no written statement has been filed on behalf of the defendants. The statutory period for filing the written statement is already over. No plausible defence has come on record on behalf of the defendants. Thus, this Court has proceeded to hear the matter.

5.

At the outset, this Court notes the comparison between the two packaging/label of the plaintiff as well as the defendants, which is as follows:

Exhibit reproduced from the original judgment
6.

It is noted that on a plain comparison of the products of the plaintiff and defendants, it is evident that the defendants have adopted the trademark 'J&K', and trade name Jay Kay Industries, which is identical/deceptively similar to the label/trade name/packaging/colour combination/trade dress of the plaintiff. Such deceptive similarity is likely to deceive the public into purchasing the defendants‟ products, under the impression that it is emanating from the plaintiff‟s source. Thus, the malafide and dishonest intention of the defendants, to ride upon the goodwill and reputation of the plaintiff, is apparent.

7.

Thus, the defendants are guilty of violating the statutory as well as common law rights of the plaintiff, by subsequently using impugned identical/deceptively similar trade mark, impugned identical/deceptively similar label/packaging/colour combination/trade dress/trade name, in relation to the same, cognate and allied goods.

8.

This Court also notes that the defendants had filed application for registration of their trademark device with the Trademark Registry, with the user detail as „proposed to be used‟. The said application has since been abandoned. The status of the application of the defendant, showing the same as abandoned, is reproduced as under:

Exhibit reproduced from the original judgment

भारत सरकार /GOVERNMENT OF INDIA राष्ट्रीय वित्त सीखड़ी /TRADE MARKS REGISTRY

वैश्विक राजपत्र संख्या 32, वेबसाइट 14, वेबसाइट 110078, वेबसाइट 2008/2015, वेबसाइट 2008/2017 Intellectual Property Bureau, Pin No. 32, Sector 14, Dhwaka, New Delhi-110078 Tel. 2008/2015, 2008/2016, 2008/2017

THE TRADE MARKS ACT,1999

IN THE MATTER OF an Application No. 4783607 in Class 19 in the name of :

ANKUR AGARWAL (Proprietor) I-7 PARSAKHERA, INDUSTRIAL AREA, BAREILLY- 243502, UTTAR PRADESH, INDIA .

AND

IN THE MATTER OF an Opposition No. 1103314 there to by

J.K. CEMENT LIMITED (Opponent) KAMLA TOWER, KANPUR-208001 .

ORDER

Trade Mark Application No.4783607 in Class 19 was advertised in journal no : 1981 dated 04/01/2021 . Subsequently above opposition was filed under section 21(1) of the Trade Mark Act,1999 by the above named opponent on 20/04/2021 to oppose the registration of Trade Mark DESIGN OF WORD AP SUPER J&K WALLPUTTY ALONG WITH NINE COLORFUL LEAVES applied for,the Notice of Opposition was served to the applicant 10/06/2021 and till date no Counter statement filed by the applicant.

Hence,the application no.4783607in class 19 is deemed as ABANDONED by operation of section 21(2) of the Trade Mark Act,1999 and consequently opposition no/s. 1103314 abates.

There shall be no order as to cost in respect of the above proceeding.

9.

Considering that no written statement has been filed on behalf of the defendants, despite lapse of statutory period, this Court exercises its authority under Order VIII Rule 10 of the Code of Civil Procedure, 1908 (“CPC”).

10.

A Coordinate Bench of this Court in the case of The Christian Broadcasting Network, INC Versus CBN News Private Limited, 2018 SCC OnLine Del 11666, has propounded the scope of Order VIII Rule 10 CPC in relation to commercial suits, the relevant portion of which, reads as under:

“xxx xxx xxx

13.

The scope of Order 8 Rule 10 CPC in commercial suits particularly under the New Commercial Courts, Commercial Division and Commercial Appellate Division of the High Court Act, 2015 has being examined by this court in Nirog Pharma Pvt. Ltd. v. Umesh Gupta, (2016) 235 DLT 354. This court held as follows:

“11.

Order VIII Rule 10 has been inserted by the legislature to expedite the process of justice. The courts can invoke its provisions to curb dilatory tactic, often resorted to by defendants, by not filing the written statement by pronouncing judgment against it. At the same time, the courts must be cautious and judge the contents of the plaint and documents on record as being of an unimpeachable character, not requiring any evidence to be led to prove its contents.

…….

28.

The present suit is also a commercial suit within the definition of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 and it was the clear intention of the legislature that such cases should be decided expeditiously and should not be allowed to linger on. Accordingly, if the defendant fails to pursue his case or does so in a lackadaisical manner by not filing his written statement, the courts should invoke the provisions of Order VIII Rule 10 to decree such cases.”

14.

In my view, it is a suitable case to pass a decree under Order 8 Rule 10 CPC in favour of the plaintiff and against the defendant.

xxx xxx xxx”

(Emphasis Supplied)

11.

Accordingly, it is directed as follows:

I. Suit is decreed in favour of the plaintiff and against the defendants, in terms of prayer clauses (a) to (e) of Para 50 of the plaint.

II. Plaintiff is entitled to costs of ₹ 1.5 lacs, payable by defendant no. 1.

12.

Decree sheet be drawn up.

13.

The present suit, along with the pending application is accordingly disposed of.