Delhi High Court - Orders
Manohar Packagings Pvt Ltd vs Manohar Packaging Industries & Anr on 25 November, 2021
Author: C.Hari Shankar
Bench: C.Hari Shankar
$~21(Original Side)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 597/2021, I.A. 15333/2021, I.A. 15334/2021, I.A.
15335/2021 & I.A. 15336/2021
MANOHAR PACKAGINGS PVT LTD ..... Plaintiff
Through: Ms. Swathi Sukumar, Mr.
Essence Obhan, Ms. Mehak
Dingra, Mr. Taarika Pillai, Mr.
Tarini Sahai & Mr. Naveen
Nagarjuna, Advs.
versus
MANOHAR PACKAGING INDUSTRIES & ANR.
..... Defendants
Through: Mr. Sanjiv Singh, Adv.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
ORDER
% 25.11.2021 I.A. 15336/2021 (under Section 151 of CPC, 1908- for exemption)
1. Subject to the plaintiff filing legible copies of any dim or illegible documents on which he may seek to place reliance, within four weeks from today, exemption is granted for the present.
2. The application stands disposed of.
I.A. 15335/2021 (under Section 151 of CPC, 1908- for exemption)
3. Exemptions allowed, subject to all just exceptions.
Signature Not Verified CS(COMM) 597/2021 Page 1 of 13 Digitally Signed By:SUNIL SINGH NEGI Signing Date:30.11.2021 16:34:174. The application stands disposed of.
I.A. 15334/2021 (under Section 151 of CPC, 1908- for exemption)
5. As the matter has been taken up on merits and the defendants are also represented, this application does not survive for consideration, as it seeks exemption from pre-institution mediation.
6. The application is accordingly disposed of.
CS(COMM) 597/2021 & I.A. 15333/2021 (under Order XXXIX, Rules 1 & 2, read with Section 151 of CPC, 1908)
7. The plaintiff is engaged in the packaging industry. It claims to have adopted the mark "MANOHAR", bona fide, and independently in 1973, and to have been using the mark as part of the trade name, "Manohar Packaging". The business which, initially, was a partnership firm, was incorporated on 21st February, 1994, into a private limited company, M/s Manohar Packagings Pvt. Ltd.
8. The plaintiff claims to have been using the trademark "MANOHAR" extensively, continuously and uninterruptedly, since 1973, i.e. for above 48 years as on date. It is also claimed that the mark is indelibly identified with the plaintiff and its products.
9. The Plaintiff also owns and operates a website https://www.manoharpackaging.com/, registered in 2006.
Signature Not Verified CS(COMM) 597/2021 Page 2 of 13 Digitally Signed By:SUNIL SINGH NEGI Signing Date:30.11.2021 16:34:1710. The plaintiff tabulates the trademark registrations held by the plaintiff, thus:
Trademark Registration Class Registration Date of Status No. Date use MANOHAR 3666882 16 31st 18th Registered October, June, 2017 1973 3666883 16 31st 22nd Registered October, Augus 2017 t, 2016 MPPL 3666884 16 31st Propos Registered October, ed to 2017 be used Manohar 5156587 16 1st 15th Pending Packagings October, July, 2021 1973 Manohar 5156588 16 1st 15th Pending Packing October, July, 2021 1973
11. These registrations, assert the plaint, continue to be valid and subsisting.
12. The plaint also seeks to testify to the plaintiffs' reputation by providing its turnover for the years 2015-16 to 2020-21, in the following tabulated format:
Signature Not Verified CS(COMM) 597/2021 Page 3 of 13 Digitally Signed By:SUNIL SINGH NEGI Signing Date:30.11.2021 16:34:17 Financial Year External
Turnover (INR)
2015-2016 1,01,89,42,419
2016-2017 1,02,45,51,906
2017-2018 1,01,99,54,311
2018-2019 1,22,15,78,374
2019-2020 1,28,04,04,670
2020-2021 1,32,49,73,922
It is also claimed that the plaintiff has been incurring considerable expenditure on advertising and publicity of its products.
13. The plaint asserts that, in or around September, 2021, the plaintiff became aware that Defendant 1 was also manufacturing packaging material, i.e. engaging itself in business activities similar to those in which the plaintiff was engaged, under the trademark, "MANOHAR" and . This compelled the plaintiff to send a legal notice to Defendant 2, on 6th September, 2021, calling on Defendant 2, who is the proprietor of Defendant 1, to cease and desist from using the aforesaid mark, as it infringed the registered trademark of the plaintiff.
14. Defendant 2, in his reply dated 4th October, 2021, asserted that the mark, being used by it, was adopted from the name of the late father of Defendant 2. Defendant 2 also claimed proprietary rights over the mark "MANOHAR".
Signature Not Verified CS(COMM) 597/2021 Page 4 of 13 Digitally Signed By:SUNIL SINGH NEGI Signing Date:30.11.2021 16:34:1715. Between the date of receipt of the aforesaid Cease and Desist Notice dated 6th September, 2021, from the plaintiff and the response dated 4th October, 2021 thereto, the defendants applied for registration of the marks, "MANOHAR", "Manohar Packaging Industries", "Manohar Packaging Industries" and .
16. The plaint alleges that, despite the aforesaid Cease and Desist Notice received from the plaintiff, the defendant continues to use the infringing trade mark, "MANOHAR" and .
17. On 13th November, 2021, the plaintiff sent a further notice to the defendants. In the said notice, it was pointed out that, in its application for registration of its trademarks, the defendants had shown the word mark "MANOHAR", of the plaintiff, registered under Application No. 3666882, as an associated mark. In this context, Ms. Swathi Sukumar, learned Counsel for the plaintiff, invited my attention to the defendants' trademark application at page 115 of the documents filed with the plaint, which reflects the following status:
Signature Not Verified CS(COMM) 597/2021 Page 5 of 13 Digitally Signed By:SUNIL SINGH NEGI Signing Date:30.11.2021 16:34:1718. No reply having been received, from the defendants, to the notice dated 13th November, 2021, the plaintiff has approached this Court, seeking an injunction against the defendants from continuing to infringe the plaintiffs' trademark "MANOHAR", in relation to packing goods similar to those produced by the plaintiff or any other related goods, or from using any deceptively similar mark, and to Signature Not Verified CS(COMM) 597/2021 Page 6 of 13 Digitally Signed By:SUNIL SINGH NEGI Signing Date:30.11.2021 16:34:17 restrain the defendants from passing of their business and activities as associated with the plaintiff.
19. Ms. Sukumar has drawn my attention to Section 16(1) of the Trademarks Act, 1999, which reads thus:
"16. Registration of trade marks as associated trade marks.
(1) Where a trade mark which is registered, or is the subject of an application for registration, in respect of any goods or services is identical with another trade mark which is registered, or is the subject of an application for registration, in the name of the same proprietor in respect of the same goods or description of goods or same services or description of services or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may, at any time, require that the trade marks shall be entered on the register as associated trade marks."
20. In view of Section 16(1), submits Ms. Sukumar, the representation by the defendant, of the plaintiffs' mark, as an associated mark while applying for registration of its marks, amounts to an admission that the marks, of which the defendants sought registration were deceptively similar to that of the plaintiff.
21. To this submission, Mr. Sanjiv Singh, learned Counsel for the defendants, initially responded by stating that the reference to the registration number of the plaintiffs' mark, by the defendant, while applying for registration of the mark, was a mistake of the clerk of the defendant. Subsequently, however, after the dictation of this order had commenced, he modified his submission to state that, in the original application for registration of the mark, there was no reference to the Signature Not Verified CS(COMM) 597/2021 Page 7 of 13 Digitally Signed By:SUNIL SINGH NEGI Signing Date:30.11.2021 16:34:17 registration number of the plaintiffs' mark and that this may have been a mistake committed at the end of the Trademark Registry.
22. To a query from the Bench as to why, if, since 1997, the defendant has been using the mark, "MANOHAR", it never sought registration of its mark till a cease and desist Notice was received from the plaintiff, Mr. Singh has no ready answer, except to submit that the plaintiff, too, had belatedly chosen to challenge the use, by the defendant, of its mark. Mr. Singh in this context, submits that the plaintiff, too, had filed its application for registration much after it had commenced using the mark. However, he submits that even an unregistered mark is entitled to protection on the basis of its user.
23. I may note, in this context, that, as per the averments in the plaint, the plaintiff came to know of the use of the allegedly infringing mark by the defendant, only in September, 2021.
24. Having heard learned Counsel and perused the material on record, I am inclined to grant ad interim injunction for the following reasons:
(i) Prima facie, the mark, "Manohar Packaging Industries"
or the mark, "MANOHAR", is deceptively similar to the mark "MANOHAR", used by the plaintiff in respect of identical goods. The triple test of similarity of marks, similarity of goods and services and availability from the same sources, therefore, stands prima facie, satisfied in this case.Signature Not Verified CS(COMM) 597/2021 Page 8 of 13 Digitally Signed By:SUNIL SINGH NEGI Signing Date:30.11.2021 16:34:17
(ii) The plaintiff has the benefit of priority of user, as it has been using the mark since 1973, whereas even as if the defendants' stand is taken to be correct, it is a user of the mark only since 1997.
(iii) The reflection, in the status of the defendants' application for registration of its marks, of the plaintiffs' trademark as an associated mark, prima facie, indicates that the defendants' mark is deceptively similar to that of the plaintiffs' mark and is likely to cause confusion in the minds of the public, in view of the clear wordings of Section 16(1) of the Trademarks Act, 1999. Irrespective of whether this was an entry made by the defendant or his clerk, or an entry made by the officer in the Trademarks Registry, it gives rise to a prima facie impression of deceptive similarity between the marks.
(iv) There is no explanation as to why, if the defendant has been using the impugned mark since 1997, the defendant chose to apply for registration of the mark only after receipt of the cease and desist Notice dated 6th September, 2021 addressed by the plaintiff. Prima facie, therefore, the attempt to get its marks registered appears to have been an attempt to cover up the infringement of the plaintiffs' marks.
(v) The plaintiff, in its communication dated 13th November, 2021, specifically, invited the attention of the defendant to the fact that, in its application for registration of its marks, the Signature Not Verified CS(COMM) 597/2021 Page 9 of 13 Digitally Signed By:SUNIL SINGH NEGI Signing Date:30.11.2021 16:34:17 plaintiffs' mark had been shown as an associated mark. No response to this notice was sent by the defendant to the plaintiff, denying this fact. Prima facie, therefore, even for this reason, there is an implicit admission by the defendant, regarding the deceptive similarity between the defendants' mark and the marks of the plaintiff.
(vi) "MANOHAR", in the context of packaging, is a distinctive mark. It has no etymological significance, and, therefore, having secured registration of the word mark "MANOHAR", other players in the same field, engaged in the packaging industry can, obviously, not be permitted to use the mark "MANOHAR", in the context of identical goods or services.
25. It does not appear that the defendant has made any effort to challenge the registration granted, to the plaintiff, of its mark, "MANOHAR", either by moving the Trademark Registry or in any other manner. Prima facie, therefore, for the purposes of grant of ad interim relief, the registration has to be treated as valid.
26. In view of the aforesaid, a clear case for grant of ex parte ad interim injunction exists as infringement once found, prima facie, exist cannot be permitted to continue.
Signature Not Verified CS(COMM) 597/2021 Page 10 of 13 Digitally Signed By:SUNIL SINGH NEGI Signing Date:30.11.2021 16:34:1727. As such, let the plaint be registered as a suit. Issue summons in the suit. Summons are accepted by Mr. Singh, on behalf of the defendants.
28. Written statement, accompanied by affidavit of admission and denial of the documents, filed by the plaintiff, be filed within four weeks, with advance copy to learned Counsel for the plaintiff, who may file replication thereto, accompanied by affidavit of admission and denial of the documents filed by the defendants, within 45 days thereof.
29. List before the Joint Registrar for completion of pleadings, admission and denial of documents and marking of exhibits, on 11th February, 2022.
I.A. 15333/2021 (under Order XXXIX, Rules 1 & 2, read with Section 151 of CPC, 1908)
30. Issue notice, returnable before the Court on 6th January, 2022. Notice is accepted on behalf of the defendants by Mr. Singh.
31. Reply, if any, be filed within a period of two weeks from today, with advance copy to learned Counsel for the plaintiff, who may file rejoinder thereto, if any, before the next date of hearing.
32. The Prayer in this application reads thus:
54. In the premises stated above, it is therefore, most respectfully prayed that, this Hon'ble Court may be pleased to grant the following ad-interim reliefs in favor of the Plaintiffs: -Signature Not Verified CS(COMM) 597/2021 Page 11 of 13 Digitally Signed By:SUNIL SINGH NEGI Signing Date:30.11.2021 16:34:17
(i) An ad-interim temporary injunction restraining the Defendants, their directors, agents, sister concerns, servants, representatives and all other persons on its behalf from infringing the Plaintiff's trademarks and/or any other trademark deceptively similar thereto in relation to the goods of the Plaintiff;
(ii) For an ad-interim temporary injunction restraining the Defendants, their directors, agents, sister concerns, servants, representatives and all other persons on its behalf from passing off their business under the infringing trademarks: trademarks "MANOHAR" and " " and deceptively similar proprietorship name, Manohar Packaging Industries, or any other name, mark, or logo confusingly similar to the Plaintiff and the Plaintiff's trademarks;
(iii) A decree of rendition of accounts of profits illegally earned by the Defendants by reason of infringement of the Plaintiffs' trademarks and passing off as aforesaid and a decree be passed against the Defendant in the exact sum of the amount so ascertained;
(iv) An order of damages to the tune of INR 2,00,01,000/-
(Rupees Two Crore and One Hundred only) on account of the aforesaid acts of the Defendants;
(v) An order for costs in the proceedings;
(vi) Pass any further orders that this Hon'ble Court may
deem fit and proper in the facts and circumstances of the case and in order to meet the end of justice.
It is prayed accordingly.
33. Till the next date of hearing, there shall be an injunction against the defendants in terms of Prayers 1 and 2 in this application.
Signature Not Verified CS(COMM) 597/2021 Page 12 of 13 Digitally Signed By:SUNIL SINGH NEGI Signing Date:30.11.2021 16:34:1734. Ordinarily, no extension of time shall be granted to file reply and rejoinder to this application. The application would be taken up for hearing and disposal on the next date of hearing.
35. Accordingly, re-notify on 6th January, 2022.
C.HARI SHANKAR, J NOVEMBER 25, 2021 SS Signature Not Verified CS(COMM) 597/2021 Page 13 of 13 Digitally Signed By:SUNIL SINGH NEGI Signing Date:30.11.2021 16:34:17