Author: Intern - Sirisha Prasad
In the matter of M/s Phenomenon Agents Limited v. Ganga Devi [Com.O.S.No.9485/2018], a Single Judge [H.R. Radha, J.] of the District Court of Bangalore vide an order dated May 24, 2021, granted a perpetual injunction restraining the defendant from using the mark ‘SMART AKAI’ and ‘GOLDEN AKAI’ and/or any other mark deceptively similar to the plaintiff’s registered ‘AKAI’ mark and ordered to pay Rs 1,00,000/- as damages to the plaintiff.
Section 135(1) of the Trademarks Act, 1999 provides that ‘the relief which a court may grant in any suit for infringement or for passing off referred to in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure’. The question can arise whether proof of at least some actual damage is required to succeed on opting for damages instead of account of profits. Further, even if it is not required to succeed on ordinary damages, whether it is required to succeed on exemplary damages?
The plaintiff contended that its registered trademark ‘AKAI’ has become a household name in India since 1990 and the defendant has infringed and passed off its goods under the name ‘SMART AKAI’ and ‘GOLDEN AKAI. The plaintiff claimed that it suffered intangible loss in terms of loss of confidence and trust of its customers. Taking loss of goodwill and reputation into consideration, it should be awarded exemplary damages of Rs 1,00,000/-. The plaintiff however could not adduce any evidence to be able to justify the quantification.
Without filing its Written Statement, the defendant appeared through its counsel only for arguments.
Decreeing a perpetual injunction, the Court held that though “the plaintiff has not established the actual damage or damage caused to the goodwill or its reputation. Nor has it examined any independent witness to establish that the defendants’ action has resulted in dilution of trust and confidence of the customers in AKAI products…However having regard to the peculiarities of such type of cases involving intellectual property rights and the established principles of law that rough and ready calculation for award of general damages can be adopted,..”.
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