Delhi High Court: In a case wherein the plaintiff, Monster Energy Co. was aggrieved by the defendant’s use of the identical mark ‘MONSTER’, with an identical logo , as well as a deceptively similar device mark , C. Hari Shankar, J.*, granted permanent injunction restraining the defendant, from selling, offering for sale, manufacturing, advertising, importing, exporting, or in any manner commercially dealing in any goods bearing the trade mark MONSTER (word per se) or any stylized representation thereof including , and/or Claw Icon or any mark identical or deceptively similar to the plaintiff’s MONSTER trade marks/logos/trade name, amounting to infringement of the plaintiffs’ registered trade marks.
Background
The plaintiff was the proprietor of various registered trade marks, namely ‘MONSTER’, , , ‘MONSTER ENERGY’, etc and under these marks, the plaintiff was packing and selling energy drinks and energy beverages. The plaintiff carried out its operations through the websites www.monsterenergy.com, www.monsterbevcorp.com and www.monsterarmy.com, which prominently featured mark of the plaintiff.
The plaintiff was aggrieved by the defendant’s use of the identical mark ‘MONSTER’, with an identical logo , as well as a deceptively similar device mark , whereunder the defendant had been selling sportswear, sports apparels, and associated products. Thus, the plaintiff had approached this Court seeking a decree of injunction, restraining the defendant as well as all others acting on his behalf from using mark, either as a word mark or as a device mark with lettering and style similar to that of the plaintiff, and from using mark for which the defendant had applied for registration either in respect of sportswear or sports apparel in respect of any goods whatsoever.
Analysis, Law, and Decision
This Court, on 18-02-2022 had passed ex parte interlocutory orders restraining the defendant from selling, offering for sale, manufacturing, advertising, importing, exporting, or in any manner commercially dealing in any goods bearing the trade mark MONSTER (word per se) or any stylized representation thereof including and/or Claw Icon or any mark identical or deceptively similar to the plaintiff’s trade marks/logos/trade name, amounting to infringement of plaintiff’s trade mark and/or passing off goods.
This Court had appointed a local Commissioner to visit the premises of the defendant and effect search and seizures. The Court noted that the report of the local Commissioner revealed that 145 articles, which bore infringing marks, were found in the premises of the defendant, all of which were inventorised and seized.
The Court opined that it was clear that the defendant had copied the registered trade mark of the plaintiff, both in word and device form. The mere insertion of the figure above the word in the defendant’s mark did not mitigate the fact of infringement or of the defendant consciously seeking to pass off its products as those of the plaintiff. The word clearly constituted the prominent, and dominant, feature of the impugned mark. A customer of average intelligence and imperfect recollection, who knows of the plaintiff’s mark, and encounters, later, the defendant’s mark, was bound to regard both as belonging to the same person, with a mere figure of a monster added over the word by way of embellishment.
Thus, this Court granted permanent injunction restraining the defendant, from selling, offering for sale, manufacturing, advertising, importing, exporting, or in any manner commercially dealing in any goods bearing the trade mark MONSTER (word per se) or any stylized representation thereof including , and/or Claw Icon or any mark identical or deceptively similar to the plaintiff’s MONSTER trade marks/Logos/trade name, amounting to infringement of the plaintiffs’ registered trade marks.
The Court opined that as the defendant acted with clear dishonesty, with the transparent intent of copying the plaintiff’s mark and passing off its goods as those of the plaintiff, it was not possible for the Court to let the defendant of unconditionally. The Court agreed with the plaintiff’s counsel that the defendant’s statement that he was earning only Rs. 600 per day was unbelievable, especially when the defendant was, in the past, selling sportswear and sports goods using the impugned mark on online platforms including Flipkart. Thus, the Court held that the defendant shall be liable to pay punitive costs to the plaintiff a sum of Rs 1,00,000. The Court further held that based on this order, the Register of Trade Mark shall proceed to pass orders treating the application for registration of the mark , as not pressed.
[Monster Energy Co. v. Vineet Deshwal, CS(COMM) 118 of 2022, decided on 04-09-2023]
Advocates who appeared in this case :
For the Plaintiff: Saif Khan, Shobhit Agarwal, Prajjwal Kushwaha, Advocates
