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2016 SCC OnLine Del 6011 : (2017) 237 DLT 197 : (2017) 70 PTC
550

In the High Court of Delhi at New Delhi

(BEFORE G.S. SISTANI, J.)

World Wrestling Entertainment Inc. .…. Plaintiff

Ms. D. Neha Reddy and Ms. Vaishali Mittal, Advs.
Versus
M/s. Reshma Collection & Ors. .…. Defendants
None
CS(OS) 1801/2013
Decided on October 5, 2016

Intellectual Property Rights — Trademark — Passing off — Suit for

permanent injunction restraining infringement and passing off/dilution of
trademark — Claim of damages — When can be granted — Plaintiff
registered owner of its marks ‘World Wrestling Entertainment” (WWE),
‘WWE Scratch Logo’ — Held, defendants tried to dupe general public by
portraying their products in a manner that they originate from the plaintiff
— Defendants have used marks of plaintiff, photographs of its talent as well
as their tag-lines — Such usage would inevitably lead to loss of revenue as
also that of goodwill — Whenever any person tries to use mark it will reduce
capacity of mark to indicate to origin of goods and lead to dilution —
Defendants have infringed the copyright and registered trademarks of
plaintiff, committed the tort of passing off and dilution — Punitive damages
awarded — Petition allowed — Trade Marks Act, 1999, Ss. 2(zg) and 11(6)
(Paras 43, 47 and 48)

Tata Sons Ltd. v. Manoj Dodia, 2011 (46) PTC 244 (Del.); Rolex SA v. Alex
Jewellery (P) Ltd., 2014 (60) PTC 131 (Del S. 29(2) of the Trade Marks
Burroughs Wellcome (India) Ltd. v. Uni-Sole (P) Ltd., 1999 (19) PTC 188 (Bom
marks being used are identical and the goods being applied to are also identical, it
stands proved that the activities of the Defendant 3 are infringing the registered
mark of the plaintiff James, L.J. in Singer Manufacturing Co. v. Loog, (1880) 18
ChD 395; Erven Warnink Besloten Vennootschap v. J. Townend & Sons (Hull)
Ltd., (1979) AC 731 My Lords, A.G Spalding and Brothers v. A.W. Gamage Ltd.,
84 LJCh 449 Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5
SCC 73; Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1; Time Incorporated v.
Lokesh Srivastava, 2005 (30) PTC 3 (Del) : 2005 (116) DLT 599 Microsoft
Corpn. v. Rajendra Pawar, 2008 (36) PTC 697 (Del.); Heels v. V.K Abrol, CS(OS)
No. 1385 of 2005 decided on 29-3-2006

The Judgment of the Court was delivered by

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G.S. SISTANI, J. (Oral):— The plaintiff has filed the present suit for
permanent injunction restraining the defendants from infringement of
copyright, infringement of trademarks; passing off; dilution; rendition
of accounts; damages; etc. The plaintiff has additionally prayed for a
declaration that its marks are well-known under Section 2 (zg) of the
Trade Marks Act.
2. Prior to going into the averments made in the plaint, it would be
necessary to give the details of the proceedings. The present suit was
filed in the year 2013 and when it first came up before this court on
18.09.2013, this court adjourned the matter the enable the plaintiff to
satisfy the court with regard to the jurisdiction of this court. Thereafter
on 04.10.2013, after a detailed hearing this court returned the plaint
for the want of territorial jurisdiction. The plaintiff herein preferred an
appeal before a division bench of this court, being FAO (OS) 506/2013.
The division bench, vide judgment dated 15.10.2014, allowed the
appeal holding that this court had the jurisdiction to try the suit.
Summons in the suit were issued on 28.10.2014. The defendants were
allowed to be served by publication on 23.12.2015. On 15.02.2016,
considering that the defendants had been duly served by publication
yet there was no appearance, this court passed an order of interim
injunction. The plaintiff has also filed ex parte evidence of Mr. D.C.
Sharma, constituted attorney of the plaintiff, who has deposed on the
lines of the plaint.
3. As per the plaint, the plaintiff, which commenced its business in
1952, is an international integrated media and entertainment company
principally engaged in the development, production and marketing of
television programming, pay-per-view programming, live events and
the licensing and sale of branded consumer products featuring its
‘WWE’ brand. Since as early as February, 1983, the plaintiff has been
providing to the public live and televised wrestling and entertainment
events on a regular basis in many major cities throughout the world
including India.
4. The plaintiff was previously known as World Wide Wrestling
Federation (WWWF) and later as World Wrestling Federation (WWF). In
1982, it was sold to the Titan Sports company, which later changed its
name to World Wrestling Federation Entertainment (WWFE), before
finally becoming World Wrestling Entertainment (WWE) in May 2002.
5. According to the plaintiff, since 1985 the plaintiff has an annual
wrestling and entertainment event, broadcast live on pay-per-view
worldwide called ‘WRESTLEMANIA’ which culminates the year's events
and is the occasion for determining and crowning the champion WWE
wrestler for that year. ‘Wrestlemania’ is the biggest wrestling event of
the year attracting millions of viewers from all over the world. The
plaintiff made history as ‘Wrestlemania 29’, televised live on pay-per-
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view 07.04.2013 worldwide, became the highest grossing event in

WWE history. The event generated over 1 million pay-per-view buys in
more than 105 countries and 20 languages, with global gross sales in
excess of US $72 million. With 80,676 in attendance, fans from all 50
states and 34 countries attended the sold out event at the MetLife
Stadium in East Rutherford, New Jersey, USA. Besides Wrestlemania,
the plaintiff is broadcasting twelve (12) other live events in 2013,
televised via pay-per-view. Excluding Wrestlemania, such events
include ‘Summerslam’, ‘Royal Rumble’, ‘Extreme Rules’, ‘Money In The
Bank’ etc. Since 2000, WWE pay-per-views have generated an average
of approximately US $100 million in revenue and over five million buys
annually.
6. As per the plaint, consumers of the plaintiff's services and
products are its ardent fans. For its clientele, the plaintiff offers a
variety of memorabilia including, but not limited to apparels (including
t-shirts, sweatshirts, masks, hats, caps, jerseys, and belts); posters;
calendars; fact books; sunglasses; water bottles; key rings; action
figures; DVDs; video tapes; etc. The plaintiff claims that it has more
than 200 licensees distributing products in 86 countries, including
India. In 2012, the plaintiff's consumer products had global
netrevenues of US $88Million. It also has a large digital presence. Its
official homepage, i.e. wwe.com, averaged 12.4 million monthly unique
visitors in 2012. More than 100 million videos are watched per month
on wwe.com, YouTube.com/wwe and hulu.com/wwe, combined.
7. The plaintiff (WWE) has more than 5 million ‘friends’ on Facebook,
more than ESPN, Pepsi, MLB, Gatorade, NASCAR and the NFL. WWE has
its official online e-commerce store at wweshop.com which processed
over 307,000 orders in 2012, leading to net revenues of US $15million.
The plaintiff also operates other websites, such as www.wwe.sify.com.
These websites are freely accessible to one and all and have served in
making customers worldwide aware of the plaintiff and its goods and
services.
8. The plaintiff also publishes books with Simon & Schuster Inc. The
plaintiff's first biographies, “Hollywood Hulk Hogan” and “It's Good to
be King…Sometimes” by Jerry Lawler, became New York Times Best
Sellers. Plaintiff's other books include inter alia “The Stone Cold Truth”
and “WWE Unscripted.” Since the plaintiff began publishing books,
more than twenty-three books have made the New York Times
Bestseller List, with three making it to the No. 1 position. The plaintiff's
publishing operations also consist of ‘WWE Magazine’ and ‘WWE Kids
Magazine’, special edition magazines and mini-magazines. The
magazine business has a combined annual circulation of approximately
six million subscribers.
9. The plaintiff submits that all its wrestling events feature
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professional wrestlers having distinctive appearances and carrying

fictitious and unique names which are evocative of the image sought to
be projected by the characters. The combination of both name and
image, has the effect of making an indelible impression in the mind of
the viewer. Thus, for instance, there are wrestlers with names such as
‘John Cena’, ‘Undertaker’, ‘Triple H (HHH)’, ‘Batista’, ‘Randy Orton’,
‘The Rock’, ‘CM Punk’, ‘Shawn Michaels’, ‘The Great Khali’, ‘Rey
Mysterio’, ‘Edge’, etc. As a further example of the “images” of these
characters, the character named ‘Undertaker’ typically appears in
wrestling exhibitions and in printed matter as an intimidating figure in
black with darkened eyes. The plaintiff claims intellectual property
rights of the plaintiff in its characters like ‘The Great Khali’,
‘Undertaker’, etc., which are well recognized by the public.
THE TRADEMARK RIGHTS OF THE PLAINTIFF:
10. As per the plaint, the plaintiff has obtained registrations of its
marks ‘World Wrestling Entertainment’ and ‘’ (hereinafter ‘WWE
Scratch Logo’ or ‘New Scratch Logo’) in relation to various goods in
different countries worldwide, including in India. Additionally, some of
the fictitious names of the wrestlers have been registered as
trademarks by the plaintiff in relation to various goods in different
classes in the USA and India. Registrations of the plaintiff are as under:
TRADEMARK REG No. INTERNATIONAL
CLASS
NEW SCRATCH LOGO 1111005 25
& WORLD
WRESTLING
ENTERTAINMENT
WORLD WRESTLING 1111006 25
ENTERTAINMENT &
New Scratch Logo
WORLD WRESTLING 1111007 28
ENTERTAINMENT
WORLD WRESTLING 1111003 25
ENTERTAINMENT
WWE 1111004 25
WORLD WRESTLING 1110999 16
ENTERTAINMENT
WWE 1111008 28
WWE(logo) 1110998 09
NEW SCRATCH LOGO 1310606 41
& WORLD
WRESTLING
ENTERTAINMENT
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WWE 1111000 16
New Scratch Logo 1111002 16
Design & WORLD
WRESTLING
ENTERTAINMENT
WORLD WRESTLING 1310605 41
ENTERTAINMENT
(Word)
WWE 1310604 41
WWE 1110996 09

11. The plaintiff has also registered its talent and their slogans.
Details of which are as under:
TRADEMARK REG No. INTERNATIONAL
CLASS
JOHN CENA 1318958 16,25,28,41
UNDERTAKER 703267B 25
1022510 16
1318955 28,41
TRIPLE H (HHH) 1022512 16
1318946 28, 25, 41
RANDY ORTON 1318945 16, 25, 28, 41
BATISTA 1318951 16, 25, 28, 41

12. As per the plaint, the sporting events organized by the plaintiff
are broadcasted on television networks across the world and their
viewership rating constitutes a record of sorts. Each year, more than
7,500 hours of television programming can be seen in more than 145
countries and 30 languages around the world. WWE programming can
be seen in half a billion television households worldwide. Versions of
the plaintiff's ‘RAW’, ‘Smackdown’, ‘WWE Superstars’, and ‘WWE NXT’
programmes are shown in United States domestic and international
markets.
13. In India, plaintiff's ‘RAW’, ‘Smackdown’, ‘WWE Superstars’ and
‘WWE NXT’ programmes are televised on Ten Sports. With millions of
men, women and children patronizing hundreds of arenas around the
world each year, and watching numerous televised and pay-per-view
programming year-round, the plaintiff submits that ‘WWE’ is among
the most popular brands in the world.Therefore, the plaintiff asserts
statutory and common law rights in the WWE trademarks.
COPYRIGHT OF THE PLAINTIFF
14. The plaintiff also claims to be the copyright owner of the pictorial
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representations of the ‘WORLD WRESTLING ENTERTAINMENT’ and

‘WWE wrestlers’ and the ‘WWE Scratch Logo’ as they appear on the
various publicity material/promotional merchandise of the plaintiff.
Apart from this the plaintiff is also the proprietor of the events that are
relayed through various satellite channels throughout the world in
various languages and the same are sold in VCD/DVD formats through
authorized publishers. The plaintiff submits that India and USA being
signatories to the Universal Copyright Convention as well as to the
Berne Convention, protection is afforded to the plaintiff's works since
they are created by authors of member countries, originate from and
are first published in the said member countries. This is by virtue of the
Copyright Act, 1957 read along with the International Copyright Order,
1958.
15. As per the plaint, the plaintiff acquires ownership of the
copyright to the photographs of these talents/characters by virtue of
express declaration of assignment given by the talents/characters and
photographers in writing at the time of undertaking a project. The
declaration of the Talent, which is in a standard format, states:
“Wrestler hereby grants to PROMOTER the exclusive right during
the term to video tape, film, photograph, or otherwise record, or to
authorize others to do so, by any media now known or hereinafter
discovered, Wrestler's appearance, performance, commentary, and
any other work product for or related to the events or for or related
to any and all of the services performed by WRESTLER pursuant to
the terms herein.”
16. Relying upon the aforegoing, the counsel for the plaintiff submits
that the talent/character assigns entire rights to the plaintiff to the use
of the photographs. The plaintiff, as a purchaser for valuable
consideration, has all such rights as are vested by the copyright law in
the owner of such photographs which are original artistic works.
Further, being registered with the Copyright Office in the United States
of America the overall format, structure, photographs, sequence,
layout, etc. of the plaintiff's magazines are also protected copyright
works. These copyrights of the plaintiff extend to India by virtue of the
International Copyright Order, 1991 read along with Berne Convention
and the Universal Copyright Convention. The plaintiff further submits
that the present suit concerns infringement of copyright by the
defendants in the photographs carried in the plaintiff's
talents/characters from time to time.
17. The plaintiff submits that it licenses the images and character of
its talent to third parties under strict conditions to ensure proper
quality. The plaintiff claims exclusive right to license to others to
manufacture or deal in or to reproduce the characters; the public is also
aware of such merchandising. The plaintiff's merchandising program at
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present includes a product line of sales of goods falling under nearly 25

different categories; including various types of apparels, action figures
and toys, video games, trading cards, sticker albums, music CDs, and
shows featured in VCD's and DVD's.
18. In the Indian market, plaintiff licenses among other things, T-
shirts, sweat shirts, caps, vests and other licensed products like CDs,
VCDs and DVDs reproducing the well known trademarks World
Wrestling Entertainment, WWE, the WWE Scratch Logo, and the WWE
characters of the plaintiff on the said products.
PRESENCE OF THE PLAINTIFF IN INDIA
19. The plaintiff submits that the above mentioned rights of the
plaintiff extend to India among other countries and are valuable for the
Plaintiff in as much as substantial revenues are earned by the plaintiff
by virtue of its business in India. Several Indian wrestlers like ‘The
Great Khali’ and ‘Jinder Mahal’ are a part of the plaintiff's business and
have gained immense popularity with audiences worldwide, including
India. The plaintiff has also recently opened an office in India at
Mumbai. The plaintiff's licensees in India market licensed products of
the plaintiff, reproducing its trademarks and characters on the said
products; more particularly mentioned in paragraph 18 aforegoing.
20. On Indian television, Ten Sports broadcasts WWE shows on a
regular basis. Public awareness of the Plaintiff, its trademarks and its
activities which receive unprecedented media coverage and publicity.
The plaintiff submits that thus, the activities of the Plaintiff under the
trademark/trading style ‘World Wrestling Entertainment’, ‘WWE’ and
the trademarks ‘WWE logo’ are very well-known in India and the
different WWE characters, each with his unique and highly distinctive
name and image, are also exclusively associated with the plaintiff.
21. I have heard the learned counsel for the plaintiff and examined
the plaint, affidavit of PW-1 and the documents placed on record. I
deem it appropriate to deal with the prayers of the plaintiff under
different heads.
WELL-KNOWN MARK
22. The plaintiff in paragraph 34 (vi) of the plaint has sought a
declaration that its marks:‘WWE’; ‘World Wrestling Entertainment’; and
the New Scratch Logo are well-known marks in India in terms of
Section 2 (zg) and 11 (6) of the Trade Marks Act, 1999.
23. The law in respect of declaration of a mark to be well-known in
India is no longer res integra. A coordinate bench of this court had in
the case of Tata Sons Ltd. v. Manoj Dodia, 2011 (46) PTC 244 (Del.)
had summed up the tests to be applied by court as to whether a mark
is well-known or not. The relevant paragraphs read as under:
“5. A well known trademark is a mark which is widely known to
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the relevant general public and enjoys a comparatively high

reputation amongst them. On account of advancement of
technology, fast access to information, manifold increase in
international business, international travel and advertising/publicity
on internet, television, magazines and periodicals, which now are
widely available throughout the world, of goods and services during
fairs/exhibitions, more and more persons are coming to know of the
trademarks, which are well known in other countries and which on
account of the quality of the products being sold under those names
and extensive promotional and marketing efforts have come to enjoy
trans-border reputation. It is, therefore, being increasingly felt that
such trademark needs to be protected not only in the countries in
which they are registered but also in the countries where they are
otherwise widely known in the relevant circles so that the owners of
well known trademarks are encouraged to expand their business
activities under those marks to other jurisdictions as well.The
relevant general public in the case of a well known trademark would
mean consumers, manufacturing and business circles and persons
involved in the sale of the goods or service carrying such a
trademark.
…
13. Trademarks Act, 1999 does not specify the factors which the
Court needs to consider while determining whether a mark is a well
known mark or not, though it does contain factors which the
Registrar has to consider whether a trademark is a well known mark
or not. In determining whether a trademark is a well known mark or
not, the Court needs to consider a number of factors including (i) the
extent of knowledge of the mark to, and its recognition by the
relevant public; (ii) the duration of the use of the mark; (iii) the
extent of the products and services in relation to which the mark is
being used; (iv) the method, frequency, extent and duration of
advertising and promotion of the mark; (v) the geographical extent
of the trading area in which the mark is used; (vi) the state of
registration of the mark; (vii) the volume of business of the goods or
services sold under that mark; (viii) the nature and extent of the use
of same or similar mark by other parties; (ix) the extent to which the
rights claimed in the mark have been successfully enforced,
particularly before the Courts of law and trademark registry and (x)
actual or potential number of persons consuming goods or availing
services being sold under that brand. A trademark being well known
in one country is not necessarily determinative of its being well
known and famous in other countries, the controlling requirement
being the reputation in the local jurisdiction.”
(Emphasis Supplied)
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24. Further, in the case of Rolex SA v. Alex Jewellery Pvt. Ltd., 2014
(60) PTC 131 (Del), it was held that:
“38. Section 2(zg) of the TM Act defines a ‘well known trade mark’
in relation to any goods or services to mean ‘a mark which has
become so to the substantial segment of the public which uses such
goods or receives such services that the use of such mark in relation
to other goods or service would be likely to be taken as indicating a
connection in the course of trade or rendering of services between
those goods or services and a person using the mark in relation to
the first-mentioned goods or services.’ Under Section 11(9)(i) and
(v), for the purposes of registration of a well-known mark it is not
necessary for such mark to have been used in India or be well-known
to the public at large in India. It must be well known to a substantial
segment of the relevant public.”
(Emphasis Supplied)
25. In order to support his case that its marks are well-known, the
counsel for the plaintiff has argued the following grounds:
a. The plaintiff's marks are well recognized and are within the
knowledge of the public. To establish the same, the counsel relies
upon the fact that the plaintiff has more than 200 licensees
marketing products in more than 86 countries in India; more than
100 million views per month cumulatively on wwe.com,
YouTube.com/wwe, and hulu.com/wwe; and its regular broadcasts
in India on Ten Sports.
b. The marks of the plaintiff have been used for extended period :
the marks have been used atleast since 2002, when the plaintiff
changed its name from World Wrestling Federation (WWF) to
World Wrestling Entertainment (WWE); further, the
talents/characters' marks have been used even by the plaintiff's
predecessor's in interest prior to 2002.
c. Plaintiff has a substantial market in India : the plaintiff licensees
market, inter alia, T-shirts, sweat shirts, caps, vests and other
products such as CD's VCD's and DVD's in India.
d. The plaintiff's marks enjoy a broad-based public awareness and an
unprecedented media coverage.
e. The plaintiff's goods and merchandise reproducing its marks are
available for sale through its interactive online e-commerce store
at wweshop.com; orders from the said website can, and have
been, placed throughout India and abroad.
f. The plaintiff enjoys numerous trademark registrations in India and
abroad.
g. The volume of the business and sales under the marks : the
plaintiff has garnered tremendous business for its goods sold
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under its marks; the plaintiff's online e-commerce store processed

over 307,000 orders in 2012 alone, leading to net revenues of
US$15 Million. Further, one of the Plaintiff's pay-per-view
televised events, ‘Wrestlemania 31’ held in 2015, generated over
1.3 million pay-per-view and WWE Network Over-the-Top (OTT)
buys in over 100 countries. Since 2000, the plaintiff's pay-per-
view events have generated an annual average of approximately
US $100 million in revenue.
h. The plaintiff has successfully enforced its rights and obtained a
recognition of its rights in the said marks by this court;
i. The plaintiff has a vast number of actual and potential persons
consuming its goods and merchandise.
26. In view of the aforegoing and applying the test laid down, I find
the marks of the plaintiff to be well-known in India. I do so as all the
tests laid down in Tata Sons Ltd. (Supra) stand satisfied. The marks of
the plaintiff has been extensively used in India and has garnered wide
recognition;user since 2002, after the plaintiff was changed to its
present form;use in respect of varied products, enumerated paragraph
17 aforegoing;extensive promotion in India; wide and numerous
registrations; the volume of sales of the plaintiff's merchandise as well
as the viewership of its events; regular enforcement of the rights; and
the consumer base of the plaintiff.
27. Accordingly, I am of the view that the marks ‘WWE’; ‘World
Wrestling Entertainment’; and its new scratch logo, i.e. ‘’ are well-
known marks in India.
DEFENDANT'S ACTIVITIES
28. It is the case of the plaintiff that in the month of July, 2013, the
plaintiff learnt that the defendants are engaged in selling and offering
for sale counterfeit products includingT-shirts, caps and wrist bands
bearing the images of its talents. In the goods of the defendants, the
characters ‘Randy Orton’, ‘CM Punk’ and ‘John Cena’ were displayed.
The goods further displayed the plaintiff's registered trade mark ‘New
Scratch logo’. In addition, the defendants were also offering for sale T-
shirts and caps bearing the plaintiff's device mark ‘U CANT SEE ME’.
29. Thereafter, in order to determine the extent of the infringing
activities of the defendants. On 13.07.2013, a private investigation was
carried out. As per the plaintiff, during the investigation the following
infringements were established:
30. The plaintiff submits that common to all of the counterfeit goods
is the fact that none of them bear the “Authentic Wear” tag on them
nor do they carry the proper trade mark registration ‘®’ symbol. The
infringing activities have also been corroborated by the report of the
local commissioner dated 10.12.2014 which affirms the activities of the
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defendant.
INFRINGEMENT OF TRADE MARK AND COPYRIGHT
31. The plaintiff claims that the marks under its registered marks
‘WWE’; ‘New WWE scratch logo’; the words marks ‘Undertaker’, ‘John
Cena’, ‘Batista’, Randy Orton’ and ‘Triple H’.
32. Section 29 (2) of the Trade Marks Act stipulates the conditions
when usage by a person amounts to infringement of a registered
trademark. Section 29 (2) and (3) read as follows:
“(2) A registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of permitted
use, uses in the course of trade, a mark which because of—
(a) its identity with the registered trade mark and the similarity of
the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or
similarity of the goods or services covered by such registered trade
mark; or
(c) its identity with the registered trade mark and the identity of
the goods or services covered by such registered trade mark,
is likely to cause confusion on the part of the public, or which is
likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the
court shall presume that it is likely to cause confusion on the part of
the public.”
(Emphasis Supplied)
33. Since the marks being used are identical and the the goods
being applied to are also identical, it stands proved that the activities of
the defendant no. 3 are infringing the registered mark of the plaintiff
under Section 29 of the Trade Marks Act. The presumption contained in
subsection (3) of Section 29 also comes to the aid of the plaintiff in the
present matter.
34. Additionally, the counsel for the plaintiff sumits that the illegal
representation of the WWE characters and ‘WWE Scratch Logo’ by the
Defendant on the impugned counterfeit products has led to intentional
infringement of the copyrights belonging to the plaintiff as per the
Copyright Act, 1957.
35. In Burroughs Wellcome (India) Ltd. v. Uni-Sole Pvt. Ltd., 1999
(19) PTC 188 (Bom), the Bonbay High Court observed as under:
“8. Copyright is a form of intellectual property. With advancement
in technology it is very easy to copy. The basic test in actions based
on the infringement of the copy right is that if a thing fetches a
price, it can always be copied and therefore, it needs adequate
protection. It is well settled that although under the Copy Right Act
1957, there is a provision of registration, under section 44 of the Act.
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It is not in doubt that the said procedure is an enabling provision

and registration is not compulsory for the purpose of enforcing copy
right. Section 44 of the Act provides for registration of work in which
copy right exists but in order to claim copy right registration is not
necessary. This is because registration is only to raise a presumption
that the person shown in the certificate of registration is the author.
This presumption is not conclusive, but no further proof is necessary
unless there is a proof rebutting the contents of the said certificate.
Under section 48 of the Registration Act therefore, the act of
registration is ex-fade prima-facie evidence of the particulars
incorporated in the certificate. There is no provision under the Act
which deprives the author of his rights on account of non-registration
of the copy right. There is nothing in the Act to suggest that the
registration is condition precedent to the subsistence of the copy
right or acquisition of copy rights or owner-ship there of or for reliefs
of infringement of copy rights.The sine-quanon of existence of a copy
right is expenditure of skill, labour and capital on any work expended
by a person/author and unless the original work is produced in Court
to prima-facie show that the work has originated from author, no
relief can be granted. In other words, copy right exists even without
it being registered for the purposes of its enforcement. The nature of
copy right is also meant to be borne in mind. It subsists in any
material form in which ideas are translated. Copy right is a
incorporeal right. It does not lie in any idea, but it lies in the
expression in which the idea is expressed. The work of an author
therefore becomes the subject matter of the copy right. In essence
the copy right is a negative right of preventing copying of physical
material in the field of art, literature etc. Once an idea is written
down, the writing becomes the subject matter of copy right…”
(Emphasis Supplied)
36. In the present case, it is evident from the photographs in the
plaint and reproduced in paragraph 29 aforegoing and the photographs
taken during the visit of the local commissioner on 14.11.2014 that the
defendants have applied the marks of the plaintiff as well as the
photographs of its talent, which are within the exclusive domain of the
plaintiff. Further, the declaration signed by the talent of the plaintiff,
reproduced in paragraph 15 aforegoing, leaves no room for doubt that
the plaintiff is the copyright owner in the said works.
37. Accordingly, in my view, the defendants have infringed the
copyright and trademarks of the plaintiff.
PASSING OFF
38. The counsel for the plaintiff submits that the WWE characters
and its marks are immensely popular and appear on the plaintiff's
publicity material/merchandise. Further, the Plaintiff by its long and
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continuous use of its characters and other WWE Trade Marks has
acquired immense reputation and goodwill for its business. Accordingly,
the plaintiffs have acquired common law rights in the same marks.
39. Counsel further submits that the use of the same by the
defendants is blatantly dishonest and a mala fide attempt by them to
derive an unfair advantage by creating the impression that their
products emanate from the plaintiff and have some connection, nexus,
association, affiliation with or endorsement by the plaintiff.
40. I have heard the learned counsel in this regard, prior to
proceeding further, it is necessary to appreciate the nature of a passing
off action. Passing Off action arises out of common law and is not pre-
conditioned on registration. The term ‘passing off’ was explained by
James, L.J. in Singer Manufacturing Co. v. Loog, (1880) 18 ChD 395 as
under:
“…I have often endeavoured to express what I am going to
express now (and probably I have said it in the same words, because
it is very difficult to find other words in which to express it) — that
is, that no man is entitled to represent his goods as being the goods
of another man; and no man is permitted to use any mark, sign or
symbol, device or other means, whereby, without making a direct
false representation himself to a purchaser who purchases from him,
he enables such purchaser to tell a lie or to make a false
representation to somebody else who is the ultimate customer.”
(Emphasis Supplied)
41. Lord Diplock in Erven Warnink Besloten Vennootschap v. J.
Townend & Sons (Hull) Ltd., [1979] A.C 731 had identified five
essentials to establish an action of passing off. The relevant excerpt is
as under:
“My Lords, A.G Spalding and Brothers v. A. W. Gamage Ltd., 84
L.J.Ch 449, and the later cases make it possible to identify five
characteristics which must be present in order to create a valid cause
of action for passing off : (1) a misrepresentation, (2) made by a
trader in the course of trade, (3) to propsective customers of his or
ultimate consumers of goods or services supplied by him, (4) which
is calculated to injure the business or goodwill of another trader (in
the sense that this is a reasonably foreseeable consequence) and (5)
which causes actual damage to a business or goodwill of the trader
by whom the action is brought or (in a quia timet action) will
probably do so.”
(Emphasis Supplied)
42. The aforegoing essentials have been accepted by the Supreme
Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001)
5 SCC 73 and Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1. In
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Cadila Health Care Ltd. (Supra), the Supreme Court had further laid
down the following decisive tests for checking deceptive similarity:
“35. Broadly stated, in an action for passing-off on the basis of
unregistered trade mark generally for deciding the question of
deceptive similarity the following factors are to be considered:
(a) The nature of the marks i.e. whether the marks are word
marks or label marks or composite marks i.e. both words and
label works.
(b) The degree of resembleness between the marks, phonetically
similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as
trade marks.
(d) The similarity in the nature, character and performance of the
goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods
bearing the marks they require, on their education and
intelligence and a degree of care they are likely to exercise in
purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the
goods.
(g) Any other surrounding circumstances which may be relevant
in the extent of dissimilarity between the competing marks.
36. Weightage to be given to each of the aforesaid factors
depending upon facts of each case and the same weightage cannot
be given to each factor in every case.”
(Emphasis Supplied)
43. In the present case, applying the aforegoing test I am of the
view that the defendants have tried to dupe the general public by
portraying their products in a manner that they originate from the
plaintiff. The defendants have used the marks of the plaintiff,
photographs of its talent as well as their tag-lines. Such usage would
inevitably lead to loss of revenue as also that of goodwill. Accordingly,
the defendants have not only indulged in infringement, but also into
the offence of passing off.
DILUTION OF THE TRADEMARK OF THE PLAINTIFF
44. Having held the marks of the plaintiff to be well-known in
paragraph 27 aforegoing, I must deal with the aspect of dilution.In this
respect, in Tata Sons Ltd. (Supra) it was held as under:
“6. The doctrine of dilution, which has recently gained
momentous, particularly in respect of well known trademarks
emphasises that use of a well known mark even in respect of goods
or services, which are not similar to those provided by the trademark
owner, though it may not cause confusion amongst the consumer as
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to the source of goods or services, may cause damage to the

reputation which the well known trademark enjoys by reducing or
diluting the trademark's power to indicate the source of goods or
services.”
(Emphasis Supplied)
45. From the aforegoing observations, it is clear that dilution occurs
when the power of the trademark to indicate the source of the goods
gets reduced. A well-known trademark, owing to its use and reputation,
establishes a clear origin of the goods in the mind of every consumer
who may come across it. This is its primary purpose. Whenever any
other person tries to use the mark, the same may reduce the capacity
of the mark to indicate to the origin of the goods and lead to dilution of
this differentiating capacity of the mark.
46. Applying the said principle in the present case, the use of the
marks by the defendants will inevitably create a confusion as to the
origin of the products and dilute its distinctiveness. Therefore, I am of
the view, that the defendants have also diluted the well-known marks
of the plaintiff.
47. Having held that the defendants have infringed the copyright
and registered trademarks of the plaintiff, committed the tort of
passing off and dilution, the only other issue which remains in the
present suit is damages.
PUNITIVE DAMAGES
48. With regard to the relief of damages as claimed by the plaintiffs
in paragraph34 (v) of the plaint pertaining to rendition of accounts and
decree for the amount so determined, it is pertinent to note that since
the defendants have chosen not to contest the present proceedings, it
is not possible to ascertain as to the specific amounts raised from the
use of the infringing marks. But, the same cannot handicap the courts
from giving punitive/tentative damages.
49. Further this court has also frequently resorted to the practice of
granting punitive damages in addition to compensatory damages. To
this end, in Time Incorporated v. Lokesh Srivastava, 2005 (30) PTC 3
(Del) : 2005 (116) DLT 599, while awarding punitive damages of Rs. 5
lakhs in addition to compensatory damages also of Rs. 5 lakhs, Justice
R.C. Chopra observed as under:
“8. This Court has no hesitation on saying that the time has come
when the Courts dealing actions for infringement of trade marks,
copy rights, patents etc. should not only grant compensatory
damages but award punitive damages also with a view to discourage
and dishearten law-breakers who indulge in violations with impunity
out of lust for money so that they realise that in case they are
caught, they would be liable not only to reimburse the aggrieved
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party but would be liable to pay punitive damages also, which may
spell financial disaster for them. In Mathias v. Accor Economy
Lodging Inc., 347 F.3d 672 (7th Cir. 2003) the factors underlying the
grant of punitive damages were discussed and it was observed that
one function of punitive damages is to relieve the pressure on an
overloaded system of criminal justice by providing a civil alternative
to criminal prosecution of minor crimes. It was further observed that
the award of punitive damages serves the additional purpose of
limiting the defendant's ability to profit from its fraud by escaping
detection and prosecution. If a torfeasor is caught only half the time
he commits torts, then when he is caught he should be punished
twice as heavily in order to make up for the times he gets away.This
Court feels that this approach is necessitated further for the reason
that it is very difficult for a plaintiff to give proof of actual damages
suffered by him as the defendants who indulge in such activities
never maintain proper accounts of their transactions since they know
that the same are objectionable and unlawful. In the present case,
the claim of punitive damages is of Rs. 5 lacs only which can be
safely awarded. Had it been higher even, this Court would not have
hesitated in awarding the same. This Court is of the view that the
punitive damages should be really punitive and not flea bite and
quantum thereof should depend upon the flagrancy of infringement.”
(Emphasis Supplied)
50. This court in the case of Microsoft Corporation v. Rajendra Pawar,
2008 (36) PTC 697 (Del.) has held:
“22. Perhaps it has now become a trend of sorts, especially in
matters pertaining to passing off, for the defending party to evade
Court proceedings in a systematic attempt to jettison the relief
sought by the Plaintiff. Such flagrancy of the Defendant's conduct is
strictly deprecatory, and those who recklessly indulge in such
shenanigans must do so at their peril, for it is now an inherited
wisdom that evasion of Court proceedings does not de facto
tantamount to escape from liability. Judicial Process has its own way
of bringing to task such erring parties whilst at the same time
ensuring that the aggrieved party who has knocked the doors of the
Court in anticipation of justice is afforded with adequate relief, both
in law and in equity. It is here that the concept of awarding punitive
damages comes into perspective.
23. Punitive damages are a manifestation of equitable relief
granted to an aggrievedparty, which, owing to its inability to prove
actual damages, etc., could not be adequately compensated by the
Court. Theoretically as well as practically, the practice of awarding of
punitive damages may be rationalized as preventing under-
compensation of the aggrieved party, allowing redress for
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undetectable torts and taking some strain away from the criminal
justice system. Where the conduct of the erring party is found to be
egregiously invidious and calculated to mint profits for his own self,
awarding punitive damages prevents the erring party from taking
advantage of its own wrong by escaping prosecution or detection.”
(Emphasis Supplied)
51. A coordinate bench of this court in the case of The Heels v. Mr.
V.K Abrol, CS(OS) NO. 1385 of 2005 decided on 29.03.2006 has held:
“11. This court has taken a view that where a defendant
deliberately stays away from the proceedings with the result that an
enquiry into the accounts of the defendant for determination of
damages cannot take place, the plaintiff cannot be deprived of the
claim for damages as that would amount to a premium on the
conduct of such defendant. The result would be that parties who
appear before the court and contest the matter would be liable to
damages while the parties who choose to stay away from the court
after having infringed the right of the plaintiff, would go scotfree.
This position cannot be acceptable.
12. No doubt it is not possible to give an exact figure of damages
on the basis of actual loss, but certain token amounts on the basis of
the sales of the plaintiff can certainly be made. The plaintiff is
unnecessarily dragged into litigation and the defendants must bear
consequences thereof. In fact in such a case both compensatory and
punitive damages ought to be granted apart from the costs incurred
by the plaintiff on such litigation.In view of the given sales figure of
the plaintiff, I consider it appropriate to grant a decree of damages
in favor of the plaintiff and against the defendants for a sum of Rs. 3
lakh apart from costs of the suit.”
(Emphasis Supplied)
52. Having regard to the facts of this case, rupees five lakhs is
awarded as punitive damages in favour of the plaintiff and against the
defendant in terms of para 34 (v) of the plaint.
53. Accordingly, the present suit is decreed in favour of the plaintiff
and against the defendants in terms of paragraphs 34 (i), (ii), (iii), (iv)
and (vi) of the plaint along with damages of rupees five lakhs.
54. Let a decree sheet be drawn accordingly.
———
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