Indiyaa Distribution Network Llp vs P Singh & Ors. on 25 November, 2022

[Cites 1, Cited by 0]

Delhi High Court

Indiyaa Distribution Network Llp vs P Singh & Ors. on 25 November, 2022

Bench: Prathiba M. Singh

                                                                                    2022/DHC/005172




                          $~4
                          *      IN THE HIGH COURT OF DELHI AT NEW DELHI
                                                         Date of decision: 25th November, 2022
                          +                CS(COMM) 366/2021 and I.A. 14775/2022
                                 INDIYAA DISTRIBUTION NETWORK LLP                    ..... Plaintiff
                                                Through: Mr. N. Mahabir and Mr. P.C. Akya,
                                                          Advocates (M: 9166036065).
                                                versus
                                 P SINGH & ORS.                                  ..... Defendants
                                                Through: Mr. Ajit Sharma and Mr. Niranjan,
                                                          Advocates for D-1 (M: 9999337791).
                                                          Ms. Suman Jain, Advocates for D-2
                                                          (M: 9810053420).
                                                          Mr. Siddarth Malhotra and Ms.
                                                          Kashesh Khurana, Advocates (M:
                                                          9899929323).
                                 CORAM:
                                 JUSTICE PRATHIBA M. SINGH
                          Prathiba M. Singh, J. (Oral)

1. This hearing has been done through hybrid mode.

2. The present suit has been filed by the Plaintiff - Indiyaa Distribution Network LLP against the four Defendants, being Defendant No.1 - P. Singh, Defendant No.2 - Sanjivan Anusandhan Pvt. Ltd., Defendant No.3 - Harsheen Sales, and Defendant No.4 - India Best Shop. The Plaintiff seeks permanent injunction, passing off, rendition of account, damages and other reliefs.

3. The Plaintiff has been engaged in the manufacture and sale of an Ayurvedic joint pain relief oil since the year 2009, under the mark 'SAPTARISHI SANDHI SUDHA'. It is claimed that the mark 'SANDHI SUDHA', and the house mark 'SAPTARISHI', was coined by the Plaintiff in the year 2008. The mark 'SANDHI SUDHA' has been in use by the Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 1 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07 2022/DHC/005172 Plaintiff since the year 2009, along with the house mark 'SAPTARISHI'. The Plaintiff also claims to be the registered proprietor of the copyright in the packaging of the product branded under the mark 'SAPTARISHI SANDHI SUDHA'. The 'SANDHI SUDHA' product of the Plaintiff is stated to have achieved substantial sales and goodwill, and the Plaintiff has a large network of distributors in India for the said product. The sales figures of the 'SANDHI SUDHA' product of the Plaintiff, as set out in the Plaint, was more than Rs.1 crore for the financial year 2017-2018. In addition, the advertisement expenses of the Plaintiff in respect of its 'SANDHI SUDHA' product, as set out in the Plaint, was over Rs.53 lakhs for the financial year 2017-2018. Extensive publicity has been given to the 'SANDHI SUDHA' product on various television channels, as also, through the Plaintiff's websites, being www.indiyaa.in, www.sandhisudha.com, and www.sandhisudha-plus.com.

4. The packaging of 'SANDHI SUDHA' was also registered under the Copyright Act. The Plaintiff has applied for the registration of the mark 'SANDHI SUDHA', as also, its variants. The details of the said trademark applications of the Plaintiff have been set out in the Plaint, and are extracted below:

Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 2 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07

2022/DHC/005172 Application No. Trademark Status 2031828 SANDHI SUDHA Opposed by third-party Dhanvantri 3090453 SANDHI SUDHA Pending HAI TO ARAM HAI 3138171 SANDHI SUDHA Opposed by Defendant no. 1.

label Evidence not filed despite service of Plaintiffs counter statement on 23 April 2020. Opposed by third-

party Dhanvantri.

3138172 SANDHI SUDHA Opposed by Defendant no. 1. Show label cause notice by Trademark office to abandon the opposition. Opposed by third-party Dhanvantri.

                          3928095             SANDHI SUDHA Pending
                                              PLUS

3928096 SAPTARISHI Opposed by Defendant No. 1. No SANDHI SUDHA evidence filed by Defendant to PLUS show any use.

5. The grievance of the Plaintiff is that, sometime in March, 2021, the Plaintiff acquired knowledge through the e-commerce platform 'www.snapdeal.com' that the products under the mark 'SANDHI SUDHA' were being suspended from sales on its platform due to some legal issues. It was then that the Plaintiff realized that the Defendants had raised an Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 3 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07 2022/DHC/005172 objection in respect of the Plaintiff's products being sold on the said e- commerce platform. The Plaintiff made enquiries which revealed that the Defendant No. 1, which was also operating in the name of Defendant No. 4, was engaged in the manufacture of infringing products under the mark 'SANDHI SUDHA', and was supplying the same to Defendant No.2. As per the Plaint, the allegations were that the Defendants were jointly and severally engaged in the manufacture and sales of products bearing the mark 'SANDHI SUDHA'. The competing products of the Plaintiff and the Defendants are depicted below:

PLAINTIFF'S PRODUCT DEFENDANTS' PRODUCT FRONT VIEW FRONT VIEW BACK VIEW BACK VIEW Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 4 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07 2022/DHC/005172 SIDE VIEW SIDE VIEW TOP VIEW TOP VIEW BOTTOM VIEW BOTTOM VIEW BOTTLE FRONT VIEW BOTTLE FRONT VIEW Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 5 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07 2022/DHC/005172 BOTTLE BACK VIEW BOTTLE BACK VIEW

6. The present suit was listed for the first time on 9th August, 2021. On the said date, this Court has considered the matter and granted an ex-parte ad interim injunction, in the following terms:

"17. In view of the above, till the next date of hearing, the Defendants, their directors, agents, distributors, partners, or any person claiming Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 6 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07 2022/DHC/005172 under them are: -

(a) restrained from selling, offering for sale any goods, advertising, or promoting any product under the trademark- 'SAPTARISHI SANDHI SUDHA INDIA' or any trade mark which is identical or similar to Plaintiffs trade mark-

'SANDHI SUDHA' and 'SAPTARISHI' which may cause confusion and deception in the market and lead to passing off of Defendants' goods as that of the Plaintiffs'

(b) restrained from selling, offering for sale any goods, advertising or promoting any product under the packaging of the product 'SAPTARISHI SANDHI SUDHA INDIA' or any packaging which has similar get up and trade dress as that of Plaintiffs product 'SANDHI SUDHA' and 'SANDHI SUDHA PLUS' which may cause passing off;

(c) restrained from selling, offering for sale any goods, advertising or promoting any product under the packaging of the product 'SAPTARISHI SANDHI SUDHA INDIA' or any packaging which is similar to Plaintiffs product 'SANDHI SUDHA' and 'SANDHI SUDHA PLUS' which may cause infringement of copyright in the artistic work comprised in the Plaintiffs packaging."

7. Vide order dated 30th May, 2022, the statements of Defendant No.l - Mr. Parminder Singh, the authorised representative of Defendant No.2 - Mr. Om Prakash Dua, and Defendant No.3 - Mr. Damanpreet Singh, were recorded.

8. On the said date, Defendant No. 1 continued to deny the fact that he had supplied the impugned products to Defendant No.3. This Court had then recorded a prima facie finding, in the following terms:-

Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 7 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07

2022/DHC/005172 "4. Defendant No.1 continues to deny the fact that he has supplied 'Saptarishi Sandhi Sudha India Joint Pain Relief Oil' products to Defendant No.3. However, after the recordal of statements of the three Defendants who have appeared before the Court today, it prima facie appears to the Court that Defendant No.1 had indeed supplied the impugned product to Defendant No.3 and he is incorrectly using the name of Defendant No.2 -

Sanjivan Anusandhan Pvt. Ltd as the manufacturer of the product.

5. Accordingly, the interim injunction which was granted vide order 9th August, 2021 is made absolute against all the four Defendants during the pendency of the suit. The operative portion of the said order reads as under:

"17. In view of the above, till the next date of hearing, the Defendants, their directors, agents, distributors, partners, or any person claiming under them are: -

(a) restrained from selling, offering for sale any goods, advertising, or promoting any product under the trademark- 'SAPTARISHI SANDHI SUDHA INDIA' or any trade mark which is identical or similar to Plaintiffs trade mark-

'SANDHI SUDHA' and 'SAPTARISHI' which may cause confusion and deception in the market and lead to passing off of Defendants' goods as that of the Plaintiffs'

Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 8 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07

2022/DHC/005172

6. Defendant No.1 shall also stand restrained from giving any more authorizations to any third parties for manufacture, distribution, or sale of 'Saptarishi Sandhi Sudha India Joint Pain Relief Oil'. Any authorization already given by Defendant No.1 to any third party shall also stand suspended w.e.f. today."

9. Vide order dated 30th May, 2022, considering the stand of the various Defendants, this Court had also observed that the conduct of Defendant No.1 was in doubt. Accordingly, an affidavit was directed to be filed by Defendant No.1, in the following terms:

9. As against the above statement, Defendant no.1 has not taken a clear stand and continues to adopt a shifting stance about all queries put to him. Extracts of his statement are set out below:

"The product shown to me 'Saptarishi Sandhi Sudha India Joint Pain Relief Oil' is not one of my products. I do not manufacture this oil at all. I have never done manufacturing or sale of this product. I have given authorization to three or four persons for manufacture of 'Saptarishi Sandhi Sudha India Joint Pain Relief Oil'. All of them have not sold the product.

xxx I know Defendant No.3 by the name 'Ginni' which is his nickname. I have chatted on WhatsApp with him (Defendant No.3). I have given authorization Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 9 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07 2022/DHC/005172 to Defendant No.3 and thereafter I repeatedly asked Amazon to pull down 'Saptarishi Sandhi Sudha India Joint Pain Relief Oil' products. I also gave a complaint to Amazon to pull down the Plaintiff's product. I have not supplied the green boxed 'Saptarishi Sandhi Sudha India Joint Pain Relief Oil'. I now say I had supplied the plastic bottled 'Saptarishi Sandhi Sudha India Joint Pain Relief Oil'. I now say I used to help Defendant No.3 in selling these products but I never supplied these products. I have collected money for authorizations."

10. The overall impression that the Court gets is that Defendant no.1, merely riding on the strength of his trade mark registration, is indulging in conduct which is not transparent. He initially stated that he has not manufactured any products under the mark 'Saptarishi Sandhi Sudha India Joint Pain Relief Oil'. Thereafter he sought to retract and state that he has got manufactured some 200-300 bottles for distribution as samples, from Defendant no.2.

When confronted with the WhatsApp conversations with Defendant no.3, he stated that he helped the said Defendant no.3 in selling the products but still denied manufacturing the products in question.

11. Let an affidavit be filed by Defendant No.1 explaining his conduct to the Court, after perusal of which the Court would pass orders in accordance with law.

12. Insofar as the plastic bottle which have been handed over by Defendant No.1 is concerned, if there is any other evidence of Defendant No.2 having manufactured the product for Defendant No.1, Defendant No.1 is permitted to place such evidence on record.

13. It is further directed that Defendant No.3 Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 10 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07 2022/DHC/005172 shall place on record the details of the payments he has made to Defendant No.1 along with the print out of any WhatsApp conversation which he wishes to rely upon, along with a proper index.

14. Both Defendant Nos.2 & 3 have made statements before the Court today that they do not intend to manufacture or sell any product bearing the mark 'Saptarishi Sandhi Sudha India Joint Pain Relief Oil'. Let an affidavit to this effect be filed by the said Defendants.

15. The Board Resolution handed over by Defendant No.2 is taken on record.

16. Since Defendant No.1 has failed to come clean and state the true facts to this Court, after perusing the WhatsApp conversation between him and Defendant No.3, this Court is of the opinion that Defendant No.1 has not been truthful to the Court. Moreover, the Defendant no.1 accepted the fact that he had made complaints on the Amazon platform seeking removal of the Plaintiff's products. Clearly there is more than what meets the eye. Accordingly, notice is issued to Defendant No.1 as to why proceedings in accordance with law ought not to be initiated against him for making incorrect statements before this Court. Defendant No.1 shall remain present in Court on the next date of hearing."

10. Today, Defendant No.1 - Mr. Parminder Singh, who is the proprietor of Defendant No.4 - India Best Shop, is present in Court. This Court is informed that Defendant No.1 expresses remorse for the conduct that he had exhibited before this Court, as also, his continuous denials of having supplied the infringing products to Defendant No.3. Defendant No. 1 submits that he expresses unconditional apology and is also agreeable to Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 11 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07 2022/DHC/005172 suffer a permanent injunction in the present suit.

11. Considering the above submission of Defendant No.1, the statement of Defendant No.1 has been recorded today. The said statement of Defendant No.1 is extracted below:

" I am the sole proprietor of Defendant No.4 - India Best Shop.

I undertake not to manufacture, sell, or offer for sale any Ayurvedic products or any other products in Class-5, under the marks 'SAPTARISHI', 'SANDHI SUDHA', 'SAPTARISHI SANDHI SUDHA', or any mark which is identical, or deceptively or confusingly similar, to the said marks, in future.

I undertake to assign the mark 'SAPTARISHI SANDHI SUDHA INDIA' bearing Trademark No.2152484 in Class-5, in favour of the Plaintiff. I undertake to withdraw all the Oppositions which I have filed in respect of Plaintiff's marks. I undertake not to use the marks 'Dr. Alcoban' and 'ASTHIJIVAK'. I will also withdraw the Trademark Application No.4337527 for the mark 'Dr. Alcoban' in Class-5, as also, Trademark Application No.3243961 for the mark 'ASTHIJIVAK' in Class-5, within three days from 25th November, 2022.

I express my apology for the conduct which I have exhibited before the Court."

12. Insofar as the Defendant Nos.2 and 3 are concerned, vide the statements recorded on 30th May, 2022, the said two Defendants have already stated as under:

Statement of Defendant No.2 - Mr. Damanpreet Singh:

"Harsheen Sales is my sole proprietary concern. My office is at J-7/119, Rajouri Garden, New Delhi- 110027. I am a reseller of various products. I sell house & kitchen appliances as also gym equipment on the Amazon platform. I have my own account on Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 12 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07 2022/DHC/005172 the Amazon platform. The product which is shown to me titled 'Saptarishi Sandhi Sudha India Joint Pain Relief Oil' was sold by me on the Amazon platform. I obtained this product from Mr. Parminder Singh. I am not related to him in any manner. Mr. Parminder Singh informed me that he has a registered trademark and he also gave me the authority to sell under this brand name. This was also thereafter approved by the Amazon platform. In this manner I came to sell the product to the Plaintiff. I have been selling this product on the Amazon platform since November, 2020. I have sold approximately 350 to 400 units of the product, out of which some are returned and some are damages as well. I used to purchase the product at about Rs.600/- to 700/- per unit from Mr. Parminder Singh. I used to sell it at Rs.l200/- to 1300/- per unit on Amazon. Whenever other sellers came on the Amazon platform to sell this oil, Mr. Parminder would get it removed by writing to Amazon. I have now WhatsApp conversation printouts which shows that he has supplied the products to me and also filed complaints with Amazon. I have now stopped selling this product on Amazon since April, 2021, even before this suit was filed."

Statement of Defendant No.3 - Mr. Om Prakash Dua:

"I am working in M/s Sanjivan Anusandhan Pvt. Ltd. at least for the last 10 years. The company is engaged in the business of manufacture and sale of ayurvedic medicinal preparations. The product 'Saptarishi Sandhi Sudha India Joint Pain Relief Oil' in a green box which is shown to me has not been manufactured by my company. Our company has never manufactured any product by the name 'Saptarishi Sandhi Sudha India Joint Pain Relief Oil'. We make other pain relief oils but the product shown to me is not made by my company. Defendant No.l- Mr. Parminder Singh, is known to Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 13 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07 2022/DHC/005172 us. He had approached us for getting one of his formulations approved for which we had facilitated to get the approval done. The formulation which got approved through us was 'Saptarishi Oil' and it was not 'Saptarishi Sandhi Sudha India Joint Pain Relief Oil'. I have appeared only because of the notice received from the court. I am authorized by Board Resolution dated 26th May, 2022 to appear on behalf of the company."

13. Considering the stand taken today by Defendant no.1 who has undertaken not to use the infringing mark, packaging as also agreed to resolve the disputes with the Plaintiff by withdrawing the oppositions and his own trade mark applications, nothing further survives in the present suit qua Defendant Nos. 1 and 4. Insofar as the other Defendants i.e., 2 and 3 are concerned they have already made statements that they are willing to give up the mark and packaging.

14. In these facts and circumstances of the case, the following directions are issued:

i. The present suit shall stand decreed in terms of the relief as sought in paragraphs 48 (i.), 48 (ii.) and 48 (iii.) of the Plaint against all the Defendants;

ii. Defendant No.1 - Mr. Parminder Singh shall assign the mark 'SAPTARISHI SANDHI SUDHA INDIA' bearing Trademark No.2152484 in Class-5, in favour of the Plaintiff. The Plaintiff is at liberty to get the said assignment recorded with the Trademark Registry.

iii. Defendant No.1 shall also withdraw all the Oppositions which have been filed by him, in respect of the Plaintiff's applications bearing Nos.1030476 filed against Application No.3928096, Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 14 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07 2022/DHC/005172 1037972 filed against Application No.3138171, 982398 filed against Application No.3138172, and 1131836 filed against Application No.3917362, in Class-5, within three days from 25th November, 2022. The Trademark Registry shall, upon filing of these forms, reflect the withdrawal of the Oppositions in its records, and process the Plaintiff's applications for registration, in accordance with law. iv. Defendant No.1 shall also withdraw the Trademark Application No.4337527 for the mark 'Dr. Alcoban' in Class-5, as also, Trademark Application No.3243961 for the mark 'ASTHIJIVAK' in Class-5, within three days from 25th November, 2022. The said withdrawal shall be reflected on the website of the Trademark Registry, within one month.

15. Considering the show cause notice issued to Defendant No. 1, vide order dated 30th May, 2022, for making incorrect statements, as also, the past conduct of the Defendant No.1, this Court accepts the unconditional apology tendered by him, subject to a deposit of Rs.25,000/- with the Delhi High Court Legal Services Committee [UCO Bank, Delhi High Court; Bank A/C: 15530110008386], within one week. Show cause notice for contempt, issued to Defendant No.1, vide order dated 30th May, 2022, shall stand discharged, subject to the said costs of Rs.25,000/- being deposited.

16. Decree sheet be drawn accordingly. All pending applications are also disposed of. No further orders are called for.

PRATHIBA M. SINGH JUDGE NOVEMBER 25, 2022/MR /AD Signature Not Verified Digitally Signed CS(COMM) 366/2021 Page 15 of 15 By:DEVANSHU JOSHI Signing Date:28.11.2022 12:40:07

Unlock Advanced Research with PRISMAI

Delhi High Court