TaxTMI 
TaxTMI 
2012 (4) TMI 735
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....ay of evidence of Sh.Rohit Mehta, which is exhibited as Ex.PW-1/A and the Special Power Of Attorneys dated March 26, 2010 executed by plaintiffs No. 1 to 5 in favour of PW-1, are collectively exhibited as Ex-PW 1/1 (Colly). 4. PW-1 has deposed that plaintiff No. 1 is a partnership firm formed and registered under the laws of the Republic of India; and Ms.Satish Bala Malhotra, Ms.Monica Malhotra Kandhari and Ms.Sonica Malhotra are partners in the Plaintiff firm having its registered offices at Adda Hoshiarpur, Jalandhar City, Punjab, India and its branch offices at 6, Gulab Bhawan, Bahadur Shah Zafar Marg, New Delhi - 110002. Certified copy of the Registered Partnership Deed of the Plaintiff No.1 is on record from pages no. 11 to 14, of the documents file, filed by the Plaintiffs vide list of documents dated August 24, 2011 and the same are exhibited as Ex.PW-1/2. 5. PW-1 has also deposed that plaintiff No. 2 to 5, are companies duly incorporated and existing under the laws of the Republic of India having its registered offices at Gulab Bhavan, 6 - Bahadur Shah Zafar Marg, New Delhi - 110002. Certified copies of the Certificates of Incorporation of the Plaintiff No.2 to Plaint....
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....the trade mark MBD, the group also prints technical books and children‟s books under various imprints popular in India as well as abroad. Plaintiff No.1 specializes in production of school level books such as textbooks, reference books, help books and study material for recapitulation in English and Indian regional languages. 9. This witness has also deposed that the Plaintiff No.1, along with other group companies of the MBD Group, has also acquired specialization in publishing text books and reference books for students at graduate and post graduate levels and for those pursuing a career in medical (covering exhaustively anesthesia and intensive care; anatomy and physiology; cardiology and cardiac surgery; dentistry, dermatology, ENT, gastroenterology and hepatology, haematology, and oncology; neurology, obstetrics and gynaecology, ophthalmology, orthopaedics, pathology, paediatrics, primary care, radiology and imaging, surgery, urology, electronic media), engineering and other technical areas. 10. PW-1 has also deposed that there are more than 8000 titles currently under the trade mark MBD and the same are increasing daily. The publishing house of the MBD Group, func....
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....derabad, Jalandhar and Ludhiana and in all these centres, they are operated under the house mark MBD. 14. PW-1 has deposed that the MBD Group has also made its foray into premium and luxury mixed use developments primarily entailing hotel, retail and entertainment under brand names like MBD NEOPOLIS, MBD ZEPHYR, MBD PRIVE which are currently under operation and construction in Jalandhar, Ludhiana and Bangalore with planned presence in Hyderabad, Chennai, Mumbai, Delhi and Goa. Under the trade mark MBD NEOPOLIS & NUOVO, the MBD Group caters to international designers having the best labels like Fendi, Tommy Hilfiger, Van Cleef Arpel, Canali, Kimaya, etc. The luxury retail targets under the trade mark MBD ZEPHYR which includes brand names like Saks, Channel, Hermes, Gucci, Jimmy Chao, Louis Vutton, Christian Dior, Escada. 15. PW-1 has also deposed that the consolidated sales turnover of the plaintiff No.1 since the financial year 1982-83 to 2009-10 is Rs. 682,72,28,836.21/- (Crores). The annual turnover of the plaintiffs combined for the year 2009-10 was approximately Rs. 200 Crores. The approx. annual turnover of the plaintiffs for the past five financial years is given herein....
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....s has generated colossal sales volumes for the plaintiffs and unprecedented and unmarked reputation/goodwill in the domestic as well as international markets. 19. PW-1 has also deposed that, during this course of time the trade mark MBD has become a household name certainly in India, if not to that extent internationally, along with its various other affiliate / subsidiary companies, namely: S.NO. NAME OF COMPANY 1. Holy Faith International Pvt.Ltd. 2. Modern publishers 3. Oxbridge international Pvt.Ltd. 4. M.Gulab Singh & Sons Pvt.Ltd. 5. Holy Faith Exports 6. MBD Exports 7. D S Enterprises 8. MBD Properties Pvt. Ltd. 9. MBD Hotels Pvt. Ltd. 10. Dove Impex (India) Pvt. Ltd 11. MBD Graphics 12. MBD Creation 13. MBD Enterprises Pvt. Ltd. 14. MBD Overseas 15. Sonica Papers Converters & Printers 20. It is also deposed by PW-1 that the plaintiffs have extensively used MBD as a trade mark / corporate name / house mark and all the above companies have a strong presence in India and in neighboring countries. It is also deposed by this witness that without prejudice to the fact t....
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.... Dated Status 1. MBD (word mark) 325406 16 18.5.1977 Registered 2. MBD Sure Shot 462795 16 7.11.1986 Registered 3. MBD Safalta Ka Sadhan(Hindi) 632634 16 1.7.1994 Registered 4. MBD Logo 01148149 16 5.11.2002 Pending 5. MBD (Stylized) 1811844 16 27.04.2009 Pending 6. MBD (Stylized) 1879218 08 03.11.2009 Pending 7. MBD (Stylized) 1879219 09 03.11.2009 Pending 8. MBD (Stylized) 1879220 21 03.11.2009 Pending 9. MBD (Stylized) 1879221 28 03.11.2009 Pending 10. MBD (Stylized) 1879222 29 03.11.2009 Pending 11. MBD (Stylized) 1879223 30 03.11.2009 Pending 12. MBD (Stylized) 1879224 35 03.11.2009 Pending 13. MBD (Stylized) 1879225 36 03.11.2009 Pending 14. MBD (Stylized) 1879226 37 03.11.2009 Pending 15. MBD (Stylized) 1879227 38 03.11.2009 Pending 16. MBD (Stylized) 1879228 40 03.11.2009 Pending 17. MBD (Stylized) 1879229 41 03.11.2009 Pending 18. MBD (Stylized) 1879230 42....
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.... 1953144 21 20.04.2010 Pending 51. MBD (Stylized) in Punjabi 1953145 28 20.04.2010 Pending 52. MBD (Stylized) in Punjabi 1953146 29 20.04.2010 Pending 53. MBD (Stylized) in Punjabi 1953147 30 20.04.2010 Pending 54. MBD (Stylized) in Punjabi 1953148 35 20.04.2010 Pending 55. MBD (Stylized) in Punjabi 1953149 36 20.04.2010 Pending 56. MBD (Stylized) in Punjabi 1953150 37 20.04.2010 Pending 57. MBD (Stylized) in Punjabi 1953151 38 20.04.2010 Pending 58. MBD (Stylized) in Punjabi 1953152 40 20.04.2010 Pending 59. MBD (Stylized) in Punjabi 1953153 41 20.04.2010 Pending 60. MBD (Stylized) in Punjabi 1953154 42 20.04.2010 Pending Plaintiff No. 2 (Bright Enterprises Pvt. Ltd.) Sl.No. Trade Mark Regn. No./ Appl.No. Class Dated Status 1. MBD ZEPHYR 1478046 16 11.08.2006 Pending 2. MBD ZEPHYR 1478047 42 11.08.2006 Registered 3. MBD ZEPHYR Lifestyle Luxury & Surprise 1740522 16 16.10.2008 Pending 4. MBD ZEPHYR Lifestyl....
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....06.2009 Pending 8. MBD ALCHEMIE (Stylized) (col) 1832115 09 23.06.2009 Pending 9. MBD ALCHEMIE (Stylized) (col) 1832116 16 23.06.2009 Pending 10. MBD ALCHEMIE (Stylized) (col) 1832117 38 23.06.2009 Pending 11. MBD ALCHEMIE (Stylized) (col) 1832118 28 23.06.2009 Pending 12. MBD ALCHEMIE (Stylized) (col) 1832119 41 23.06.2009 Pending 13. MBD ALCHEMIE 1953161 09 20.04.2010 Pending 14. MBD ALCHEMIE 1953162 16 20.04.2010 Pending 15. MBD ALCHEMIE 1953163 28 20.04.2010 Pending 16. MBD ALCHEMIE 1953164 38 20.04.2010 Pending 17. MBD ALCHEMIE 1953165 41 20.04.2010 Pending Plaintiff No.4 (A.K.M. Enterprises Pvt. Ltd.) Sl.No. Trade Mark Regn.No. /Appl.No. Class Dated Status 1. MBD NEOPOLIS Where The Experience Never Ends Stylized 1338754 16 16.02.2005 Pending 2. MBD NEOPOLIS Where The Experience Never Ends Stylized 1338755 41 16.02.2005 Registered 3. MBD NEOPOLIS Where The Experience Never Ends Stylized 1338756 42 16.02.2005 Regis....
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....L in Hindi (Colored) 1953159 16 20.04.10 Pending 10. MBD WRITWELL in Punjabi (Colored) 1953160 16 20.04.10 Pending 23. PW-1 has also deposed that the plaintiffs are the registered proprietors of the mark MBD and other variants, as demonstrated above, thereby having right to use thereof under Section 28 of the Trade Marks Act, 1999 and the use of an identical or deceptively similar trade mark by an unauthorized user amounts to infringement of plaintiff's registered trade mark under Section 29 of the said Trade Marks Act, 1999; and apart from constituting infringement, the impugned use also amounts to criminal offence under the Trade Marks Act, 1999. 24. PW-1 has also deposed that the above evidences, that the plaintiffs have always placed significance on the goodwill of the mark MBD to denote its goods and services; and in fact, all printed material, such as text books, guides, question banks, etc., only use the mark MBD. The trade name MBD has also been used prominently as a house mark for many titles/trade marks in relation to all its leading brand names as illustrated in the earlier paragraphs. To evidence the prominence of the ma....
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....vely exhibited as Ex.PW-1/13. Copies of the invoices for the promotional activities carried out by the plaintiffs for the trade mark MBD and other composite marks containing the house mark MBD in Print Media are collectively exhibited as Ex.PW-1/14. 28. PW-1 has also deposed that the trade mark MBD has become a single source identifier; and the mark MBD has attained the designation of being a „well known mark', as defined under the Act, due to the following factors: (a) The mark MBD has been used by the Plaintiffs for more than five decades and is subject matter of honest adoption; (b) The mark MBD is distinctive of the Plaintiffs goods/services and has been registered in favour of the Plaintiffs in several variants; (c) The mark MBD has been subjected to extensive, open, continuous, uninterrupted use, with enormous volumes of sale of the goods / services under the said trade mark; (d) The prominent placement of the mark MBD in the market and industry, coupled with the promotional efforts initiated by the Plaintiffs. Thus, any adoption or use of the mark MBD or of any deceptively similar mark in relation to identical and/or similar goods will not only ca....
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....der the Trade Marks Act in the mark MBD and all the composite marks bearing the house mark MBD. PW-1 has also deposed that the manner of display and use of the infringing trade mark unequivocally suggests that prominence has been given to the mark MBD and it is also bound to cause confusion. PW-1 has also deposed that the defendant has adopted and used the impugned mark with mala fide intentions in order to obtain undue monetary benefits in view of the substantial goodwill and reputation attached to the Plaintiff and its other group companies. 32. PW-1 has further deposed that the infringing mark "MBD School of Biosciences & Biotechnology" by the defendant is contrary to the provisions since: (i) The Plaintiffs are the prior adopters and users of the trade mark / house mark MBD, which is arbitrary, fanciful, invented and a coined mark and thus inherently distinctive. The mark MBD has been registered by the Plaintiffs as a word mark and also conjunctively as a composite mark. Due to its continued use, the mark MBD has become a household name, which is associated exclusively with the Plaintiffs. Any use or adoption of an identical or deceptively similar mark, such as the infrin....
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....ffs have made long, continuous and prior use of its mark MBD, and other composite marks. Considering that the consumers are not equipped with photographic memory, the services of the Defendant will be presumed by the public to be under the license of the Plaintiffs or a logical and legitimate business expansion of the Plaintiffs; (viii) The Defendant‟s adoption of the infringing mark is mala fide and dishonest. On a bare perusal of the infringing mark, it is evident that the Defendant has laid prominence on the mark MBD, whereas the other parts of the infringing mark are insignificant. Considering that the trade mark MBD of the plaintiffs, is the symbol point of attraction and point of identification, by which their goods/services are known and marketed, use of the same by the defendant for its business activities is bound to lead to confusion and deception amongst the consumers and in their trade. 33. PW-1 further goes on to state that due to the illegal adoption & use of the infringing mark, the plaintiffs are suffering and are likely to continue to suffer dilution, diminution and eventual erosion of the goodwill and reputation of their mark MBD and all other composit....
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....arked as Ex.PW-1/13. Copies of invoices for the promotional activities carried out by the plaintiff for the mark "MBD" and other composite marks containing the house mark MBD in print media are proved and collectively marked as Ex.PW-1/14. The evidence also establishes that the mark MBD has been subjected to extensive, open, continuous, uninterrupted use, with enormous volume of sale and the plaintiff has spent enormous amounts for the promotion and on advertisement of the mark. The photographs depicting use of the infringing mark by the defendant and printouts of the web pages demonstrating usage of the infringing mark have been proved and are collectively exhibited as Ex.PW-1/15. The adoption of the defendants of an abbreviation identical to the registered trade mark of the plaintiff is intentional. It is also established that the motive of the defendants to use a mark identical to that of the plaintiffs for promoting and passing off its own services as that of the plaintiffs is mala fide and dishonest and with a view to ride upon the goodwill and reputation of the plaintiff. 36. Counsel for the plaintiff also prays for damages @ Rs. 21,00,000/- for loss of reputation and busi....