Full Judgment
J.D. Kapoor, J.
1. The plaintiff Mars, Incorporated is a company organized and existing under the laws of the State of Delaware, USA having its principal place of business at 6885, Elm Street, Mclean, Virginia 22101-3883, United States of America. Mr. Debjit Gupta is the constituted attorney of he plaintiff duly authorised to sign and verify the plaint and institute the suit on its behalf.
2. The plaintiff is an internationally renowned manufacturer and a world leader inter alias in confectionery items ice-creams and chocolates and is the registered proprietor of the trade mark 'MILKY WAY' in India, the particulars of which are as follows:-
MILKY WAY 3686 30 19.8.42 Chocolate &sweetmeats MILKY; WAY 400610 30 27 400610 30 27 .1.83 Confectionarybiscuits and chocolates
3. The said registrations have been renewed from time to time and are subsisting as of date. In addition, the plaintiff has also applied in Class 30 for registration of the trademark MILKY WAY (word) under application No. 617954 dated January 28, 1994 and for the trademark MILKY WAY represented in colour in a stylized Both the said applications are pending.
4. It is averred that the trademark MILKY WAY was first adopted and used in respect of confectionary products by the plaintiff in 1923. Use of the said trademark commenced in the year 1989 in respect of ice creams of the plaintiff's manufacture. The plaintiff has used the trademark MILKY WAY uninterruptedly and extensively since then. In addition to worldwise use, the plaintiff's trademark MILKY WAY is registered in more than 160 countries all over the world. The plaintiff's confectionery product, inter alias under the trademark MILKY WAY, are freely available in New Delhi and other parts of India. Such goods are brought into India through official and other channels and made available to the public through retail shops. The plaintiff's MILKY WAY confectionary products, including chocolates are sold in bonded warehouses, duty free shops and customs notified shops all over India, including at Delhi.
5. In the month of November 1999, the plaintiff's attention was drawn to the appearance of a confectionery product, being toffees, under the trademark MILKEY WAY, in the Delhi markets. The plaintiff immediately initiated an investigation which revealed that the said product is being manufactured and distributed by the defendants. The plaintiff's investigations further disclosed that the manufacturer of the product is Defendant No. 4, that is M/s. Alka Food Industries which is apparently a sole proprietary concern of Mr. Pritam Dass, having its address 26, S.S.I., Laghu Udyog Nagar, G.T. Karnal Road, Delhi. Defendant No. 3, Alka Ayurvedic Pvt. Ltd. also carrying on business at 26 S.S.I. Laghu Udyog Nagara, G.T.Karnal Road, Delhi is the distributor/marketing agent of the products manufactured by defendant No. 4. Defendant No. 1, Mr. A.K. Gera and defendant No. 2, Mr. Rakesh Gera, both sons of Mr. Pritam Dass, are the responsible directors of defendant No. 3 and are knowingly, willfully and deliberately engaged in the business of dealing in the confectionery product under the trademark MILKEY WAY.
6. It is averred that the impugned mark is a handle of fraud in the hands of the defendants who are marking a misrepresentation to the innocent that their goods are those of or approved by or somehow connected with the plaintiff. Such misrepresentation as to the origin and/or trade connection of the goods under the impugned mark is bound to cause deception or confusion among unwary consumer,s primarily comprising of children and lead to passing off the said goods and and for the goods of the plaintiff. As to the availability and sale of products in question, it is averred that under the liberalized import policies of the Government placing several categories of consumer articles under Open General license (OGL), food items of a large number of foreign manufacturers are being imported by a good number of traders in India. Moreover, in the prevailing liberalized industrial environment, joint venture collaboration in different spheres are common.
7. It is further averred that the use of the impugned trademark MILKEY WAY by the defendants is likely to dilute the distinctive character of the plaintiff's, trademark MILKY WAY and the same is likely to be debased and eroded. Such debasement and erosion of the plaintiff's reputation and goodwill strikes at the very root of the plaintiffs existence and is not measurement in terms of money and cannot be adequately compensated monetarily. An order of injunction is the only efficacious remedy.
8. Despite service of summons, defendants did not choose to appear and contest the proceedings and were subsequently proceeded exparte.
9. In order to prove its claims and averments, the plaintiffs has filed affidavit by way of evidence and has proved the following documents:
10. (i) Exhibit P-1 is the copy of the power of attorney of Mr. Debjit Gupta; (ii) Exhibit P-2 is the certificate for use in legal proceedings pertaining to trademark No. 3686 in class 30; (iii) Exhibit P-3 is the certificate for use in legal proceedings pertaining to the trademark No. 400610 in class 30; (iv) Exhibit P-4 is the specimen of the plaintiff's MILKY WAY product wrapper; (v) Exhibit P-5 is the computer generated list of worldwide registrations for MILKY WAY; (vi) Exhibit P-6 is the defendants' price list dated 1.4.1999; (vii) Exhibit P-7 is the specimens of the defendants MILKEY WAY product packaging; and Exhibit P-8 are the certified copies of injunction orders passed by various Indian courts in plaintiff's favor.
11. The aforesaid documents point and establish the following facts:-
12. The plaintiff is the registered proprietor of the trademark MILKY WAY in respect of chocolates and confectionery in India. The trademark MILKY WAY is registered in more than 160 countries all over the world. The plaintiff has also extensively used the trademark MILKY WAY for chocolates and confectionery in large number of countries including India. The plaintiff's trademark MILKY WAY has acquired reputation and goodwill in Delhi and other parts of India by virtue of the fact that a large number of Indians while traveling overseas are exposed to the plaintiff's brands not only through television and magazines but also by virtue of the fact that the plaintiff's goods are available in almost all major countries in the world. The use of the identical trademark by the defendants for chocolates and confectionery products amounts to infringement of the plaintiff's registered trademark. Further use of the said trademark MILKEY WAY for chocolates & confectionery products would create confusion and resulted passing of.
13. The trademark adopted by the defendants is visually, structurally and phonetically identical to the plaintiff's trademark MILKY WAY for edible goods that are not made under the strict quality control and highest standards of hygiene of the plaintiff and this is likely to lead to undesirable and even disastrous consequences in matter of reputation and goodwill of the plaintiff.
14. Since the plaintiff is a registered owner of the trademark not only in India but in various other countries which are being a matter of public record, constitute constructive notice to the defendants of the plaintiff's statutory rights and the defendants are deemed to have knowledge of such rights vested in the plaintiff. The owner of the registered trademark has statutory right to protect it by virtue of Section 28 of the Trade and Merchandise Marks Act, 1958 which is as under:-
'(1) Subject to the other provisions of this Act, the registration of a trademark in Par A or Part B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trademark in relation to the goods in respect of which the trademark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.'
15. Under Section 32 of the Trade and Merchandise Marks Act, 1958, the original registration of the trade mark shall after the expiration of seven years form the date of such registration be taken to be valid in all respects. Thus the registration of the trade mark of the plaintiff is valid in all respects.
16. The adoption and use by the defendants of the mark MILKEY WAY manifestly demonstrate its dishonest intention and a bid to cash on and exploit the enviable goodwill and reputation of the plaintiff under the said trademark. The defendants are likely to not only hurt public interest but also irreparably damage the plaintiff's business, reputation and goodwill that has been established over the years.
17. In view of the above facts, suit is decreed in terms of prayers (A) & (B) as the counsel has given up prayers (C) & (D).