Delhi District Court
Having Its Branch Office At vs M/S. Sentinel Consultants Pvt. Ltd on 27 January, 2020
IN THE COURT OF ANKUR JAIN: ADDL.DISTRICT JUDGE-10
(CENTRAL): TIS HAZARI COURTS: NEW DELHI
T.M. No. 60/10(1020/16)
In the matter of:
M/s. Sentinels Security Pvt. Ltd.,
Having its registered office at :
40/93, Chitranjan Park,
New Delhi -110019.
Having its Branch office at :
507, Sahyog Building,
58, Nehru Place,
New Delhi - 110019. .....Plaintiff
Versus
M/s. Sentinel Consultants Pvt. Ltd.,
A-249, Defence Colony,
New Delhi. .....Defendant
Date of Institution of Suit : 05.06.1996
Date of reserving judgment : 15.01.2020
Date of pronouncement : 27.01.2020
SUIT FOR PERMANENT AND MANDATORY INJUNCTION
RESTRAINING PASSING OFF AND RECOVERY OF DAMAGES ETC.
J U D G M E N T:-
01. Brief facts of the case are that plaintiff is a company incorporated and registered under the Companies Act w.e.f. 09.8.1982 and is carrying on the business of security consultants, advisors, TM NO. : 1020 OF 2016 Page 1 of 18 security contractors, supply of watch and ward staff and security to various Govt. Agencies, trust, societies, firms in India and abroad. It is the case of the plaintiff that it is involved in the aforesaid business of providing security services since 1982 and has adopted the name "SENTINELS" and the logo of an armed soldier in a geometric form as its trade / business name / mark, which is being used by the plaintiff since beginning on its entire stationary, publicity material, uniforms of persons and all other related documents. It is the case of the plaintiff that in order to protect its trade / business name and the unique artistic work as aforesaid, it filed an application for registration of trade mark, under Class 9 vide No. 714415. Plaintiff has also pleaded that it has been incurring substantial expenditure on advertisements and other business promotion scheme pertaining to the services rendered by the plaintiff to its customers, because of which the annual turnover has increased considerably. On account of prior adoption, long continuous use, extensive publicity, enormous turnover, the services rendered by the plaintiff under the trade / business name "SENTINELS" has acquired tremendous and enviable reputation amongst the clients as well as general public. The trade / business name has become TM NO. : 1020 OF 2016 Page 2 of 18 distinctive of the services and business of the plaintiff. It is the case of the plaintiff that in March, 1996, the defendant published and advertisement in Tata Yellow Pages wherein plaintiff came to know that defendant has also adopted the trade / business name "Sentinel Security Services". It is the case of the plaintiff that the adoption of trade name "SENTINELS" by the defendant company for providing security services is a colourable and slavish imitation and identical reproduction of the trade and business name of the plaintiff. A legal notice dated 25.03.1996 was sent on behalf of the plaintiff which was duly received by the defendant but no reply was given. Hence, the present suit was filed seeking injunction and damages.
02. Summons of the suit was issued to the defendant and written statement was filed stating that defendant is the prior user of the impugned trade / business name "SENTINELS" and has been using the said name since 1978. The defendant also pleaded that they are covered under the Employees State Insurance Act, 1948 since the year 1978 and has been given permanent code No. 13/15015/101/SF against the name of M/s. Sentinel Security Services. It is also pleaded that the TM NO. : 1020 OF 2016 Page 3 of 18 defendant is registered under Section 13 of the Punjab Shops and Commercial Establishment Act, 1958 which proves that they are in the business prior to the plaintiffs, the defendant also pleaded that they are operating bank account in the name of Sentinel Security Services since the year 1978 with Oriental Bank of Commerce, Faridabad. It was further pleaded that plaintiff is guilty of suppressing material facts as in the year 1994, it must have come to know about the existence of defendant as the advertisement of both plaintiff and defendant were published in Tata Yellow Pages exactly below the advertisement of each other.
03. Replication to the written statement was filed wherein the contents of written statement were denied and that of the plaint were reiterated.
04. Initially, the suit was filed before the Hon'ble Delhi High Court, subsequent to the enhancement of jurisdiction of the Hon'ble High Court, the present suit was transferred on 14.10.2003 to this court. TM NO. : 1020 OF 2016 Page 4 of 18
05. Vide order dated 25.10.2005, issues were framed in this case which are as follows :
1. Whether the plaintiff is entitled for the permanent injunction as prayed for? OPP.
2. Whether the plaintiff is entitled for the mandatory injunction as prayed for? OPP.
3. Whether the plaintiff is entitled for the recovery of damages as prayed for? OPP.
4. Relief.
06. In order to prove its case, plaintiff examined PW1 Sh. R.S. Aggarwal, who was working as Vice President, Finance in the plaintiff company. PW2 Sh. Rajesh Oberoi from the office of Trade Mark Registry to prove the record of application No. 714415. PW3 Sh. Dinesh Kumar from Delhi Fire Services to prove the letter Ex. PW3/1 issued by Delhi Fire Services to the plaintiff. PW4 Sh. R.K. Saini from the office of Registrar of Companies to prove the registration of the plaintiff company. PE was closed on 23.09.2013.
07. Defendant in order to prove its case, examined Sh. Pradeep Kumar Sharma as DW1 who was the Managing Director of the TM NO. : 1020 OF 2016 Page 5 of 18 defendant company. DW2 Sh. Girish Kumar Gupta from the office of Regional Provident Fund Commissioner to prove the registration of the defendant. DW3 Sh. Harinder Kumar Singh from the office of ESIC to prove the registration of the defendant under the ESI Act. DE was closed on 01.11.2018.
08. Ld. Counsel for the plaintiff has argued that the present case is of passing off, in which the only relevant thing to prove is prior use, if the trade name is similar, the class is same and the trade channel is also same. He has argued that plaintiffs are claiming user since 1982, the defendant company was incorporated in the year 1990, therefore, they could not claim user prior to 1990. It is argued that it is only in the evidence the defendant have disclosed about a partnership concern which the company had taken over, since this fact was never pleaded by the defendant in their written statement, therefore, this evidence cannot be looked into. In the alternative, he submits that if this court comes to the conclusion that the testimony can be relied upon, the same is also not supported by any documentary evidence. He thus submits that suit of the plaintiff for passing off is liable to be decreed. In TM NO. : 1020 OF 2016 Page 6 of 18 support of his arguments, he has relied upon the judgment of Turning Point & Ors. Vs. Turning Point Institute Pvt. Ltd. 251 (2018) DLT 563; Bachhaj Nahar Vs. Nilima Mandal & Anrs. AIR 2009 SC 1103, Mohd. Nayeem & Ors. Vs. Sale Sayeed (MANU/AP/0490/2017), Shivaji Balaram Haibatti Vs. Avinash Maruthi Pawar (MANU/SC/1460/2017), Union of India (UOI) Vs. E.I.D. Parry (India) Ltd. (MANU/SC/0058/2000), M.Venkatramana Hebbar (D) by Lrs Vs. M.Rajagopal Hebbar & Ors. (MANU/SC/7278/2007), Thayyullathil Kunhikannan & Ors. Vs. Thayyullathil Kalliani & Ors. (MANU/KE/0050/1990), Asha Kapoor Vs. Hari Om Sharda (MANU/DE/1807/2010), Banu Pratap Mehra Vs. Brij Leasing (P) Ltd. And Ors. (MANU/UP/1247/2011), Wasava Tyres & Ors. Vs. The Printers (Mysore) Ltd. (MANU/KA/8543/2006), United Bank of India Vs. Naresh Kumar & Ors. (MANU/SC/0002/1997) and Private Eye (P) Ltd. Vs. Hind High Vaccum Co. Pvt. Ltd. (MANU/KA/0617/2002).
09. On the other hand, Ld. counsel for the defendant has argued that the plaintiff has to stand on its own leg and the weekness of TM NO. : 1020 OF 2016 Page 7 of 18 the case of the defendant can not give any benefit to the plaintiff. It is argued that plaintiff has failed to prove on record about its actual use of the mark "SENTINELS" question of prior use does not arrive. It is argued that no minutes book, memorandum of association, articles of association or service agreements have been filed to prove actual use. Lastly it was argued that suit has not been instituted by a duly authorized person.
10. In rebuttal it is argued that defendant has no where denied the actual use of the plaintiff, on the contrary it is pointed out by the counsel for the plaintiff that in the written statement, defendant has himself pleaded that the client of the plaintiff had cancelled the contract with the plaintiff and awarded the same to the defendant. It is argued that memorandum of association and articles of association are public records, therefore not required to be proved.
11. I have heard the counsels for the parties. My issuewise findings are as under : TM NO. : 1020 OF 2016 Page 8 of 18
12. Issue No. 1.
Whether the plaintiff is entitled for the permanent injunction as prayed for? OPP.
13. The onus to prove this issue was upon the plaintiff. It is the case of the plaintiff that he is the prior user of the trademark/tradename "SENTINELS" and has been using the same since 1982. There is no dispute that the present suit is the one for passing off.
14. The Hon'ble Delhi High Court in Turning point (supra) in para13 has held as under :
"In cases the where the area of activities of the plaintiff and the defendant is the same, and the mark of name adopted by them similar, the only question required to be examined, in order to assess whether a case of passing off is, or is not, made out, is that of prior user".
15. The Hon'ble Delhi High court in M/s. Inder Industries Vs. M/s. Genco Electricals Industries 2012 (4) R.A.J. 310 (Del) after referring to the judgment of Laxmikant V. Patel Vs. Chetan Bhai Shah & Anr. 2002 (3) SCC 65 has held that: TM NO. : 1020 OF 2016 Page 9 of 18 "The Supreme Court therefore has held that when by lapse of time a business associated with a person which acquires goodwill and reputation, then, such business becomes a property which is protected by courts and a competetor initiating sales of goods or services under the same name will cause injury to person who is already doing business under the same name which the law does not permit. The Supreme Court clarifies that it makes no difference whether the subsequent person has adopted its trademark fraudulently or otherwise i.e. even if a person honestly adopts a trademark, once there is a prior user it is not necessary to prove that the adoption by the subsequent is a fraudulent adoption. Supreme court has said that honesty and fair play should be the basic policies in the world of business. Referring to Salmond Heuston in law of Torts the Supreme Court observes that law on this matter is designed to protect traders against that form of unfair competition with consists in acquiring for oneself, by means of false misleading devices, the benefit which has already been achieved by rival traders. The Supreme Court has clearly laid down in this judgment that plaintiff does not have to prove actual damages in order to succeed in an action for passingoff, likelihood of damage being sufficient".
16. In an action for passing off, prior user assumes importance, if the mark, name and area of activities, are same. It cannot be disputed that in the present case the area of activity and the tradename/trade mark are same. Then, it has to be decided as to who was the prior user?
17. The Hon'ble Supreme Court in Poona Ram Vs. Moti Ram TM NO. : 1020 OF 2016 Page 10 of 18 AIR 2019 SC 813 has categorically observed that plaintiff has to prove his case to the satisfaction of the court. He cannot succeed on the weakness of the case of the defendant. Under Section 101 of the Indian Evidence Act, the burden of proof is also upon the plaintiff. Once the plaintiff is able to establish use since 1982, the onus would then shift on the defendant to establish use since 1978, as claimed by the defendant. Plaintiff is duty bound to establish his use of mark "SENTINELS" along with logo of soldier from 1982.
18. In this backdrop I shall examine the evidence on record. Ex. PW1/4 is the certificate issued under Delhi Shops and establishments Act 1954, which shows plaintiff has been registered since 21.07.1983, this document does not establish use since 1982. Ex. PW1/5 is the certificate of incorporation which shows that plaintiff company came into existence on 09.08.1982, this again does not show use of the mark by the plaintiff since 1982. Ex.PW1/7 and Ex. PW1/8 are payment voucher which shows that plaintiff was getting its advertisement published in Rajasthan Patrika and Jan Sandesh. The payment voucher's are 18.11.1992 and not of the year 1982. TM NO. : 1020 OF 2016 Page 11 of 18 Interestingly, no advertisement, in original is placed alongside these voucher which could establish what was being published by the plaintiff. Ex. PW1/9 and Ex. PW1/10 are the detailed statement of annual turnover and advertisement expenses incurred by the plaintiff. The details in the statement are unsupported and unsustainable. Only photocopies of balancesheet were filed and they were also not proved in accordance with law. In the written submissions it is stated that these facts have not been denied by the defendant, therefore, they are deemed to be admitted u/s 58 of the Indian Evidence Act. Plaintiff in para 6 of his plaint has stated about incurring of expenses on advertisement and promotion scheme. The relevant portion is reproduced as under: "That the plaintiff has been incurring substantial expenditure on advertisements and other business promotion schemes pertaining to the services rendered by the plaintiff to its customers. The annual turnover of the plaintiff for the services rendered by it as aforesaid runs into millions of rupees. A detailed statement of annual turnover and publicity expenses for the various periods is being filed by the plaintiff in the present proceedings."
19. In reply thereto in written statement the defendant has TM NO. : 1020 OF 2016 Page 12 of 18 denied the same and has stated that it is defendant who has been incurring expenditure for advertising its services. The burden of proof was upon the plaintiff that he was incurring expenses merely the fact that defendant has not pleaded his expenses would not mean that it is deemed to be proved. Plaintiff was duty bound to prove Ex. PW1/9 and Ex. PW1/10, even on the basic of preponderance of probabilities this court cannot come to the conclusion which in my opinion he has miserable failed to prove. The list of important clients which was exhibited as Ex. PW1/15 in the affidavit was deexhibitied and marked as mark H. The list does not prove the date of use in any case it is only a typed copy, not one contract in original or its office copy was placed on record to show that plaintiff had any contract with the clients mentioned in the list which could show use of the trademark/tradename. Thus, on record there is no document to show that plaintiff was using the mark since 1982.
20. Ex. PW2/1 is the copy of the application no. 714415 dated 15.05.1996 filed by the plaintiff seeking registration of "SENTINELS" along with logo of an armed soldier in a geometric form as its TM NO. : 1020 OF 2016 Page 13 of 18 trade/business name/mark. In the said application plaintiff has claimed user of the mark along with logo since April, 1991. Plaintiff has never sought any registration of the word mark "SENTINELS" independent of its logo. If it is the case of plaintiff that they had adopted the logo in April, 1991, the same was not pleaded in the plaint. On the contrary from the pleadings it is clearly reflected that plaintiff is claiming use since 1982 in the word "SENTINELS" with logo of an armed soldier in a geometric form. The relevant para of the plaint is reproduced as under: "4. that since its inception in the year 1982, the plaintiff adopted the name of "SENTINELS" and the logo of an armed soldier in a geometric form as its trade/business name/mark. The said business name of the plaintiff as well as logo adopted by the plaintiff has been used right from the beginning by the plaintiff.....".
21. If the plaintiff was using the trade name/trade mark along with its logo since 1982 what prevented the plaintiff from stating in the application the user since 1982. In terms of the observation of Poona Ram (Supra) and considering all the facts and circumstances of the case, this court has no hesitation to hold that there is nothing on record to show use of trademark/tradename since 1982, by the plaintiff. The plaintiff has miserably failed to prove the same. TM NO. : 1020 OF 2016 Page 14 of 18
22. Ld. Counsel for the plaintiff had argued that defendant had claimed use from 1978 and had not filed any document to prove the same. It was also argued that the averments qua the existence of the firm was made for the first time in the evidence filed by the defendant and therefore, they ought to be discarded.
23. In Bachhaj Nahar (supra) the Hon'ble Supreme Court has clearly held in para8 that "(i) No amount of evidence can be looked into, upon a plea which was never put forward in the pleadings. A question which did not arise from the pleadings and which was not the subject matter of an issue cannot be decided by the Court.
(ii) A court cannot make out a case not pleaded. The court should confine its decision to the question raised in pleadings. Nor can it grant a relief which is not claimed and which does not flow from the facts and the cause of action alleged in the plaint.
(iii) ......."
24. The above said judgment makes it crystal clear that no TM NO. : 1020 OF 2016 Page 15 of 18 amount of evidence can be looked into if the facts have not been pleaded. The entire written statement of defendant is silent with regard to the existence of any partnership firm since 1978 and the fact the same was taken over by the defendant company in the year 1990. This portion of the testimony is liable to be discarded. The judgment of Mohd. Naeem (Supra) is not being discussed as I am of the opinion that since the facts have not been pleaded no amount of evidence can be looked into.
25. However, since the burden of proof was upon the plaintiff, which the plaintiff has failed to discharge the weakness of the defendant's case is immaterial. The plaintiff was duly bound to prove its case, even if defendant has failed to prove its case. Therefore, no injunction can be granted in favour of the plaintiff. The issue is accordingly decided in favour of the defendant and against the plaintiff.
26. Issue no. 2.
Whether the plaintiff is entitled for the mandatory injunction as prayed for? OPP.
The onus to prove this issue was upon the plaintiff. Once TM NO. : 1020 OF 2016 Page 16 of 18 the plaintiff has failed to prove that it was the prior user of the trade mark/tradename "SENTINEL" the question of delivery of materials to the plaintiff does not arise. The issue is accordingly decided in favour of the defendant and against the plaintiff.
27. Issue No.3.
Whether the plaintiff is entitled for the recovery of damages as prayed for? OPP.
The onus to prove this issue was upon the plaintiff. Once the plaintiff has failed to prove that it was the prior user of the trade mark/tradename "SENTINEL" the question of damages to the plaintiff does not arise. The issue is accordingly decided in favour of the defendant and against the plaintiff.
28. In so far as the judgment of Shivaji Balram Haibatti (Supra) and EID Parry (India) Ltd. (Supra) there can be dispute to the proposition of law that the court has to arrive at the finding only on the issues which are framed. In United Bank of India (Supra) and Bhanu Pratap Mehra. It was held that u/o XXIX Rule 1 CPC that even in the absence of any formal letter of authority or power of attorney having TM NO. : 1020 OF 2016 Page 17 of 18 been executed person referred to in order XXIX Rule 1 by virtue of office which he holds can sign and verify pleadings, a similar view was taken in Bhanu Pratap Mehra (Supra). However, in the present case no issue with respect to the authority of the plaintiff to institute the suit and or verify the pleadings was framed, therefore, no findings can be given. The said argument was raised only during the course of arguments by the Ld. Counsel for the defendant.
29. Relief.
In view of finding on issue no.1 the suit of the plaintiff is liable to be dismissed. No order as to cost. Decree sheet be prepared. Digitally signed
File be consigned to Record room. by ANKUR
Announced in the open court
ANKUR JAIN
Date:
on 27th January 2020 JAIN 2020.01.28
12:34:10
+0530
(Ankur Jain)
Addl. District Judge (Central)-10
Delhi
TM NO. : 1020 OF 2016 Page 18 of 18