Delhi High Court
Dr. Ing. H.C.F. Porsche Ag vs Pritam Gain & Ors on 25 April, 2018
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
$~6 * IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(COMM) 751/2018, IA No.3996/2018 (u/O XXXIX R-1&2 CPC) & IA No.3997/2018 (u/O XXVI R-9 CPC) DR. ING. H.C.F. PORSCHE AG. ..... Plaintiff Through: Ms. Anuradha Salhotra & Mr. Sumit Wadhwa, Advs. Versus PRITAM GAIN & ORS ..... Defendants Through: Mr. Ankur Kashyap, Ms. Khooshnum Davierwala & Mr. Hasan Murtaza, Advs. for D-1 to 3. Mr. Kabir Dixit, Adv. for D-4. CORAM: HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW ORDER
% 25.04.2018 IA No.3996/2018 (of the plaintiff u/O XXXIX R-1&2 CPC).
1. The plaintiff has instituted this suit inter alia for permanent injunction to restrain the defendants no.1 to 3 viz. i) Pritam Gain, ii) Kach Gain, and,
iii) Minoti Gain carrying on business in partnership in the name and style of Porshe Jewels and defendant no.4 Bodhi Brands Pvt. Ltd., all at Mumbai, from infringing the trade mark „PORSCHE‟ of the plaintiff and from passing off their business as that of the plaintiff.
2. The suit came up first before this Court on 22nd March, 2018 when summons / notice of the application for interim relief ordered to be issued but no ex parte relief granted owing to the delay on the part of the plaintiff in instituting the suit.
3. All the defendants are reported to be served and the counsel for the defendants no.1 to 3 appears.
4. None appears for the defendant no.4.
CS(COMM) 751/2018 Page 1 of 75. Mr. Kabir Dixit, Advocate though has given appearance for defendant no.4 but is not present in the Court.
6. At this stage, Mr. Kabir Dixit, Advocate also appears.
7. The counsel for defendants no.1 to 3 seeks time to file written statement / reply.
8. Once this Court had not granted any ex parte relief and instead issued notice granting sufficient time, the defendants should have come prepared to address on the application for interim relief and grant of interim relief cannot be deferred owing to the defendants, inspite of having sufficient time, not choosing to file their written statement / reply.
9. The defendants in the present case, according to the plaintiff were served on 2nd April, 2018 and according to the counsel for the defendants no.1 to 3 also on 5th April, 2018 and had sufficient time to prepare for today‟s hearing. Thus, arguments on the application for interim relief have been heard.
10. The counsel for the plaintiff contends that the plaintiff has registration in Class 14 and draws attention to pages no.82 and 83 of Vol. I of Part-III file, page no.46 of Part-I file showing the mark / logo used by the defendants and page 1018 of the Vol.V of Part III file and contends that the only difference between the mark of the plaintiff and the mark of the defendants is of letter „C‟ inasmuch as the spelling of the mark of the defendants is „PORSHE‟ as against the spelling „PORSCHE‟ of the mark of the plaintiff.
11. The counsel for the plaintiff further contends that the two marks are identical and the registration of the plaintiff in Class-14 is of the year 1988 and the plaintiff has been using the mark for jewellery in India since the year 2005.
CS(COMM) 751/2018 Page 2 of 712. The counsel for the defendants has argued that (i) the plaintiff has concealed from this Court that the defendants have a registration dated 8 th August, 2005 of the label with the words „PORSHE JEWELS‟ and of the logo in Class 35; (ii) the defendants have a showroom at a prominent location at Worli, Mumbai with the name „PORSHE JEWELS‟ since the year 2006; (iii) the defendants are at Mumbai and this Court does not have territorial jurisdiction; (iv) the defendants adopted the word „PORSHE‟ as an abbreviation for precious ornaments for women i.e. she; (v) the jewellery marketed by the plaintiff is for men while the jewellery marketed by the defendants is for women; (vi) the defendants are using the word mark „PORSHE JEWELS‟ since the year 2004; (vii) the pronunciation of the words „PORSCHE‟ and „PORSHE‟ is different; (viii) the defendants also have copyright in the logo; (ix) the plaintiff has approached this Court belatedly and the claims of the plaintiff are barred by limitation; (x) the plaintiff in his plaint has pleaded that the defendants recommenced marketing in the year 2017, when in fact the defendants recommenced marketing in the year 2015; and, (xi) the counsel for the defendants has in fact drafted the written statement and the draft is ready and is shown to the Court but the same remained to be filed owing to the defendants being at Mumbai.
13. The counsel for the defendants has also argued that the suit is bad for non-joinder of partnership firm „PORSHE JEWELS‟ and that the defendants are not manufacturing the goods being marketed by them.
14. The counsel for the plaintiff has pointed out that the defendants, in reply to the notice preceding the suit, did not point out about the registration of label mark or about registration of the copyright in logo.
CS(COMM) 751/2018 Page 3 of 715. The counsel for the defendants has contended that the registration of the defendants is in public domain.
16. The counsel for the defendants, on enquiry as to what is there to show that the plaintiff was aware of the registration claimed by the defendants in Class 35 so as to be accused of concealment, states that the defendants in the draft written statement have pleaded that the plaintiff was aware but as of today have nothing to show that the plaintiff was so aware.
17. On further enquiry whether the defendants are marketing their products through their website and that whether the website is interactive and purchase of the products of the defendants can be made from Delhi, the answer is in the affirmative.
18. The counsel for the defendant no.4 states that the defendant no.4 is an online marketing platform and the defendants no.1 to 3 were selling their goods under the name „PORSHE JEWELS‟ on the platform of the defendant no.4 but the defendant no.4, immediately on learning of the present suit, has discontinued selling the goods of the defendants no.1 to 3 under the impugned mark.
19. I have considered the rival contentions of the counsel for the plaintiff and the counsel for the defendant no.1 to 3.
20. As far as the delay on the part of the plaintiff in approaching this Court for the relief of injunction is concerned, it is for this reason only that the plaintiff was not granted any ex parte relief and notice for today was ordered to be issued. In my opinion, post notice, the aspect of delay loses its significance as the rights asserted by the plaintiff, besides being common law rights are statutory rights and delay can at best deprive the plaintiff of relief of recovery of damages for the period far gone but cannot deprive the CS(COMM) 751/2018 Page 4 of 7 plaintiff from the relief of injunction inasmuch as the injury caused to the plaintiff is recurring. The delay is also not found to be such as to disentitle the plaintiff to interim relief. According to the counsel for the defendants also, the defendants „recommenced‟ marketing goods under the impugned mark in 2015.
21. Insofar as the objection of the counsel for the defendants of the territorial jurisdiction of this Court is concerned, once it is admitted that the defendants are marketing their products, even if through their website, at Delhi and affecting sales at Delhi, the cause of action would accrue to the plaintiff at Delhi as well and the argument raised by the counsel for the defendants that "why could the plaintiff not have sued the defendants at Mumbai" has no legal legs to stand on.
22. The argument of the registration held by the defendants in Class 35 also does not deprive the plaintiff of the interim relief. Class 35 in the 4 th Schedule to the Trade Marks Rules, 2002 is under the head „Services‟ and is with respect to Advertising, Business Management, Business Administration and Office Functions. The defendants no.1 to 3 are not in the business of providing services of Advertising or of Business Management or of Business Administration or of Office Functions but are selling jewellery items under the impugned mark and merely because every manufacturer/retailer also advertises its product, would not mean that he/she is in the business of providing services of Advertising. Thus the defendants are not found to have used the impugned mark for the services for which registration thereof was obtained and it is perhaps for this reason only that the plaintiff, who is admittedly opposing registration sought by the defendants in Class 14, escaped the registration of the mark in Class 35.
CS(COMM) 751/2018 Page 5 of 7Moreover a plaintiff, who is diligent in protecting its right by filing the suit and by opposing the registration in the concerned class, cannot be accused of concealment inasmuch as, as of today the defendants have nothing to show that the plaintiff was aware of the registration of the defendants in Class 35. Per contra, the registration of the plaintiff is in Class 14, comprising of goods in precious metals or coated therewith, jewellery, precious stones and in which class the goods of both, the plaintiff and the defendants fall. Moreover, the plaintiff, besides for infringement, has also sued for relief on the ground of passing off and the registration claimed by the defendants is of no avail in so far as grant of interim relief on the said ground is concerned. The plaintiff is, on the arguments urged, found to be prior adopter/user of the mark.
23. The only other contention of the counsel for the defendants no.1 to 3 is of the jewellery items under the mark of the plaintiff and the defendants being for different genders and their pronunciation being different. No merit is found in the said argument either. Class 14, which relates to jewellery does not make any distinction between the genders. Moreover the consumers and others familiar with the jewellery under the mark of the plaintiff, when come across the jewellery of the defendants under the impugned mark, are likely to assume the same to be of the plaintiff only.
24. The counsel for the plaintiff has argued that PORSCHE is a German surname.
25. As far as India is concerned, its like an invented word. Similarly, PORSHE is also not a word with a meaning and mere elimination of the alphabet „C‟ would not make any difference and people in India unfamiliar with PORSCHE are unlikely to know whether the same contains the CS(COMM) 751/2018 Page 6 of 7 alphabet „C‟ or not and thus are unlikely to distinguish between the two marks.
26. After the dictation has been completed, the counsel for the defendants clarifies that the defendants‟ website is not interactive and the earlier statement was in the context of sale of defendants‟ products on the platform of the defendant no.4.
27. The plaintiff is found to satisfy all the ingredients for grant of interim relief.
28. Resultantly, IA No.3996/2018 is allowed and the defendants no.1 to 3, till the pendency of the suit, are restrained from using the mark „PORSHE‟ either as a word mark or as a label mark or any other mark similar or deceptively similar to the plaintiff‟s mark „PORSCHE‟ for sale of jewellery or any other goods or services in any manner whatsoever.
29. IA No. 3996/2018 is disposed of.
CS(COMM) 751/2018 & IA No. 3997/2018 (u/O XXVI R-9 CPC).
30. In view of the above, IA No.3997/2018 under Order XXVI Rule 9 of the CPC is infructuous and is disposed of.
31. Written statement be filed within the prescribed time.
32. Replication within four weeks thereafter.
33. The parties to file affidavits of admission/denial of each other‟s documents before the next date of hearing.
34. List on 18th July, 2018 for framing of issues if any.
RAJIV SAHAI ENDLAW, J.
APRIL 25, 2018 „gsr‟ / pp CS(COMM) 751/2018 Page 7 of 7