Delhi District Court
Omaxe Limited vs Omaxe Designer Tiles on 30 May, 2024
IN THE COURT OF SH.RAJ KUMAR TRIPATHI: DISTRICT
JUDGE (COMMERCIAL COURT)-08
SOUTH-EAST DISTRICT, SAKET COURTS, NEW DELHI
CS (COMM.) No.362/2020
(M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others)
CNR No. DLSE01-005603-2020
1. Omaxe Limited
Through its Authorized Signatory
Mr. Navin Jain
Having Coporate Office:
Omaxe House, 7, LSC,
Kalkaji, New Delhi-110 019.
2. Mr. Rohtas Goel
Chairman and Managing Director,
Omaxe Limited,
E-7, Ansal Villa, Farmhouse satbari,
Mehrauli Chattarpur, New Delhi-110 074.
........Plaintiffs
Through: Mr. Diptiman Acharya, advocate
Versus
1. Omaxe Designer Tiles
Plot No.387, Gulistanpur,
GR, Noida, Gautam Budh Nagar,
Uttar Pradesh-201 308.
......Defendant no.1
2. Mr. Purushottam Lal
Plot No.387, Gulistanpur,
GR, Noida, Gautam Budh Nagar,
Uttar Pradesh-201 308.
......Defendant no.2
3. Mr. Vijay Kumar
Plot No.387, Gulistanpur,
GR, Noida, Gautam Budh Nagar,
Uttar Pradesh-201 308.
......Defendant no.3
.......Defendants
Through: Sh.Kailash Kumar, advocate
Date of registration : 10.12.2020
Final arguments heard on : 01.05.2024
CS (COMM.) No.362/2020
(M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 1 of 25
Date of Judgment : 30.05.2024
JUDGMENT:
1.1 Plaintiffs filed the present suit against defendants for permanent injunction, damages for infringement of trademark, passing off and domain name with following reliefs:-
a. Pass a decree of permanent injunction restraining defendants no.1 to 3 by themselves as also through their employees, agents, representatives, distributors, assigns, heirs, successors, stockiest and all others acting for and on their behalf from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the trademark and/or corporate identity, domain name OMAXE in relation to its impugned goods and business of defendants no.1 to 3 and/or from doing any other acts or deeds amounting or likely to:
i. Infringement of plaintiff's trademark
OMAXE registered under no.1164513 and
1366776 and 1366775 and 1683873;
ii. Passing off and violation of the plaintiff
company rights in plaintiff's trademark OMAXE. iii. Violation of plaintiff's proprietary rights in its trade name that is OMAXE.
b. Pass a decree of permanent injunction restraining defendants from disposing off or dealing with their assets including their premises at the addresses mentioned in the memo of parties and their stock in trade or any other assets as may be brought to CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 2 of 25 the notice of court during the course of proceedings and on defendants' disclosure thereof which the defendants are called upon to disclose and/or on its ascertainment by which plaintiffs no.1 and 2 are not aware of the same as per section 135 (2) (c) of The Trade Marks Act, 1999 (hereinafter to the referred as 'The Act') as it could adversely affect plaintiffs' ability to recover the costs and pecuniary reliefs thereon. c. Pass a decree of permanent injunction restraining defendants no.1 to 3 from operating and using the website www.omaxetile.com which is having domain name of plaintiff's trademark and identity OMAXE. d. Pass an order of delivery of all the impugned goods bearing the trademark OMAXE or any other word/mark which may be identical with or deceptively similar to the plaintiff's trademark OMAXE including its blocks, labels, display boards, sign boards, trade literatures and goods etc. to the plaintiffs for the purpose of destructions and erasure.
e. To direct the defendants to take appropriate legal steps before Registrar of Companies to change the name of defendant no.1 without adopting any name which is similar to that of plaintiff trademark OMAXE. f. For an order for rendition of accounts of profits earned by defendants no.1 to 3 by their impugned illegal trade activities and for a decree of the amount so ascertained on such rendition of accounts.
g. For an order of cost of proceedings.CS (COMM.) No.362/2020
(M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 3 of 25 Factual matrix of the case
2.1 Plaintiff no.1 is a company duly incorporated under The Companies Act, 1956. Plaintiff no.2 Mr. Rohtas Goel is the Promoter, Director and Chairman of plaintiff no.1. Plaintiffs have filed the present suit through Mr. Naveen Jain, who has been authorized by plaintiff no.1 vide Board Resolution of company dated 15th April, 2019. He is also Special Power Attorney Holder of plaintiff no.2.
2.2 Plaintiff no.2 being the promoter, Director and Chairman of the plaintiff no.1 company, has authorized it to use, exploit and protect the "OMAXE" Trademark, which is registered in his name.
2.3 Defendant no.1 is partnership firm. Defendants no. 2 and 3, being partners of defendant no.1, are responsible persons for all day to day activities of defendant no.1. All the defendants have used trademark of plaintiff no.1 for selling tiles in the name of "Omaxe Designer Tiles". In a fraudulent manner, defendant no.1 got registered a similar/identical domain name www.omaxetile.com, which is similar to the registered trademark "OMAXE" already registered in the name of plaintiff no.2. 2.4 Plaintiff no.1 claims to be a well-established business entity founded in 1989 by plaintiff no.2. It is having businesses of various kinds and engaged in business of real estate and having nationwide presence with the Trademark and Corporate Identity "OMAXE".
2.5 As per plaintiffs, since 1989, plaintiff no.1 company is known by its trademark "OMAXE" and the mark "OMAXE" is the corporate identity of the plaintiffs company due to the CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 4 of 25 commitment and perfection in work. OMAXE has already widely known brand owned by plaintiffs. As a result of it, plaintiff company has been one of largest business houses in India and is also listed company on Bombay Stock Exchange (BSE) and National Stock Exchange (NSE).
2.6 The present suit relates to blatant misuse and attack on plaintiffs' registered trademark by the defendants by imitating and dishonestly copying their trademark "OMAXE". Plaintiffs allege that defendants have dishonestly misused their trademark and such acts of defendants constitute the continuous infringement of their trademark and passing off in an obvious dishonest attempt to ride upon the goodwill and reputation earned by them.
2.7 Out of several trademarks, plaintiff no.1 had conceived, coined and adopted the trademark "OMAXE". The mark "OMAXE" has been chosen by plaintiff no.2 due to some emotional and spiritual reasons as first two letters of trademark "OMAXE" i.e. OM has been derived from the first two letters of plaintiff no.2's mother name i.e. Mrs. Omvati Goel and also letter OM is having significance from Lord Shiva which is having a spiritual value in Hindu religion and last three letters of trade mark AXE signify the tool AXE having iron blade with long wooden handle and after combining "OM" and "AXE" trademark "OMAXE" has been derived which in totality means OM's AXE or tool AXE of Lord Shiva. It is stated that with the passage of time, the plaintiff's business has grown manifold due to its superior quality services and "OMAXE" has become a corporate identity known to world at large.
CS (COMM.) No.362/2020(M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 5 of 25 2.8 In order to save his statutory rights and tremendous reputation associated with word "OMAXE", plaintiff no.2 has secured registration of "OMAXE" formative trademarks and as such the plaintiff no.2 is the registered proprietor of the following trademark "OMAXE" under different classes as under:-
S. Trademark Application Application Class Status No. No. Date 1 OMAXE(LABEL) 2150095 25/05/2011 44 Registered 2 OMAXE(LABEL) 2150094 25/05/2011 45 Registered 3 OMAXE(LABEL) 2150093 25/05/2011 43 Registered 4 OMAXE.COM 1683873 06/05/2008 37 Registered 5 OMAXE.COM 1683872 06/05/2008 36 Registered 6 OMAXE.COM 1683871 06/05/2008 35 Registered 7 OMAXE (LABEL) 1366777 27/06/2005 35 Registered 8 OMAXE(LABEL) 1366776 27/06/2005 36 Registered 9 OMAXE WITH DEVICE 1366775 27/06/2005 37 Registered 10 OMAXE WITH DEVICE 1366774 27/06/2005 38 Registered 11 OMAXE WITH DEVICE 1366773 27/06/2005 39 Registered 12 OMAXE (LABEL) 1366772 27/06/2005 40 Registered 13 OMAXE WITH DEVICE 1366771 27/06/2005 41 Registered 14 OMAXE WITH DEVICE 1336670 27/06/2003 42 Registered 15 OMAXE(LABEL) 1164516 07/01/2003 34 Registered 16 OMAXE(LABEL) 1164515 07/01/2003 33 Registered 17 OMAXE(LABEL) 1164514 07/01/2003 32 Registered 18 OMAXE(LABEL) 1164513 07/01/2003 31 Registered 19 OMAXE(LABEL) 1164512 07/01/2003 30 Registered 20 OMAXE(LABEL) 1164511 07/01/2003 29 Registered 21 OMAXE(LABEL) 1164510 07/01/2003 28 Registered 22 OMAXE(LABEL) 1164509 07/01/2003 27 Registered 23 OMAXE(LABEL) 1164508 07/01/2003 26 Registered 24 OMAXE(LABEL) 1164507 07/01/2003 25 Registered 25 OMAXE(LABEL) 1164506 07/01/2003 24 Registered 26 OMAXE(LABEL) 1164505 07/01/2003 23 Registered 27 OMAXE(LABEL) 1164504 07/01/2003 22 Registered 28 OMAXE(LABEL) 1164503 07/01/2003 21 Registered 29 OMAXE(LABEL) 1164502 07/01/2003 20 Registered CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 6 of 25 30 OMAXE(LABEL) 1164501 07/01/2003 19 Registered 31 OMAXE(LABEL) 1164500 07/01/2003 18 Registered 32 OMAXE 1164499 07/01/2003 17 Registered 33 OMAXE(LABEL) 1164498. 07/01/2003 16 Registered 34 OMAXE(LABEL) 1164497 07/01/2003 15 Registered 35 OMAXE(LABEL) 1164496 07/01/2003 14 Registered 36 OMAXE(LABEL) 1164495 07/01/2003 13 Registered 37 OMAXE(LABEL) 1164494 07/01/2003 12 Registered 38 OMAXE(LABEL) 1164492 07/01/2003 10 Registered 39 OMAXE(LABEL) 1164491 07/01/2003 09 Registered 40 OMAXE(LABEL) 1164490 07/01/2003 08 Registered 41 OMAXE(LABEL) 1164489 07/01/2003 07 Registered 42 OMAXE(LABEL) 1164488 07/01/2003 06 Registered 43 OMAXE(LABEL) 1164487 07/01/2003 05 Registered 44 OMAXE 1164486 07/01/2003 04 Registered 45 OMAXE 1164485 07/01/2003 03 Registered 46 OMAXE 1164484 07/01/2003 02 Registered 47 OMAXE 1164483 07/01/2003 01 Registered 2.9 It is submitted that the above-mentioned registrations are valid and subsisting as on date and never abandoned by plaintiffs at any point of time.
2.10 Plaintiffs aver that the trademark "OMAXE" is registered in the name of plaintiff no.2 and is coined expression.
The said trademark is inherently distinctive qua the services of the plaintiffs and said trademark by virtue of its long and continuous use since 1989 has also become distinctive to the services, business and reputation of plaintiffs. 2.11 It is stated that the services rendered by plaintiff no.1 under the trademark "OMAXE" are of par excellence and enjoy voluminous sales arising out of said trademark. The turnover of plaintiff no.1 for the last ten years is given below: -
Year Amount (In Million) CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 7 of 25 Standalone Consolidated 2019 7680.40 11665.10 2018 12679.39 18390.94 2017 10366.01 16856.71 2016 9609.34 14398.53 2015 9809.80 14652.42 2014 12214.02 16534.51 2013 13610.73 20998.49 2012 13488.93 18711.55 2011 11604.15 15447.45 2010 8073.46 10147.07 2009 7576.99 8148.07 2008 18120.34 23077.56 2.12 Plaintiffs submit that the aforesaid figures have been obtained from the books of account kept in regular course of business. They claim to spend huge amount of money on marketing, including advertisement, direct marketing etc. of projects/services of plaintiff company under the mark "OMAXE" under full authority and support from the plaintiff no.2 through various print media including newspapers, magazines, radio etc. The annual expenditure incurred by the plaintiff company on advertising and publicity of the products under the mark "OMAXE" for the last 10 years are given below:-
Year Expenditure (in Million)
Standalone Consolidated
2019 45.40 95.20
2018 38.36 60.76
2017 49.36 68.08
2016 55.75 89.16
2015 45.86 75.44
2014 76.26 99.51
CS (COMM.) No.362/2020
(M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 8 of 25 2013 80.07 135.04 2012 113.44 155.60 2011 188.90 261.21 2010 45.71 68.07 2009 129.63 154.61 2008 226.52 261.68 2.13 Plaintiffs claim that during the course of its use, the trademark 'OMAXE' has acquired impeccable goodwill and reputation. Due to which the business ventures of plaintiff no.2 are having commercial success in Delhi-NCR and other parts of India since 1989. The trademark 'OMAXE' has led the plaintiff company in winning of various awards and the Certificate at various platforms in India and globally. Plaintiff company operates the website namely www.omaxe.com, which is also based upon the trademark of the plaintiffs and is accessible all across the globe including India from where bookings in projects of the plaintiff company can be made and same is also visited by various persons every day for getting knowledge of the ongoing projects of the plaintiff company.
2.14 It is further submitted that the services of plaintiff company are of world class quality and various magazines and journals have rated the services and projects of the plaintiff company very high due to which plaintiff company with the trade mark of OMAXE enjoys high reputation and goodwill across the globe and is not confined merely to a particular region. The goodwill and reputation enjoyed by the plaintiffs under the trademark OMAXE is transcending boundaries and the public, who come across the trademark OMAXE in connection with the real estate are immediately able to identify and connect the CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 9 of 25 trademark OMAXE with that of plaintiffs and no one else and as a result of it 'OMAXE' has now been the corporate identity of plaintiff company.
2.15 By virtue of long and continuous user dating back to the year 1989, staggering turnover, prior adoption, prior registration and voluminous promotion in the newspapers and other print media, the plaintiffs trademark has become exclusively associated with plaintiffs and the plaintiff no.2 has got all the statutory and common law rights over the said trademark "OMAXE" and website namely www.omaxe.com.
2.16 That plaintiffs' proprietary rights (both under statute and under common law) over the said trademark/trade name/ web domain, its goodwill & reputation are the exclusive rights as to use thereof by the plaintiffs.
2.17 It is alleged that defendants no.2 and 3 through their company i.e. defendant no.1 are carrying out the business of tiles with trademark "OMAXE", which is identical, deceptively similar and phonetically same to the plaintiff's well known and extensively used trademark. Further, defendants are also using identical, deceptively similar and phonetically same to the plaintiff's domain name viz. www.omaxetile.com, from which the tiles can be purchased online. This website can be accessed throughout the country and due to such domain name people are misled to believe that OMAXE has also now started business of tiles.
2.18 Plaintiffs further allege that defendants even after having full knowledge about the registered status of the trademark and that said trademark is exclusive intangible asset of the CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 10 of 25 plaintiffs no.1 and 2, willfully used the name OMAXE for selling tiles (impugned goods) as the purpose behind using the trademark of plaintiffs is just to misconceive the people that the plaintiffs have also started the business of tiles and the plaintiffs with the trademark of OMAXE has good reputation in the field of real estate and this will give an impression to the people that tiles will also be of good quality and nature. Thus, in the aforesaid manner, defendants by illegally riding upon the impeccable reputation and goodwill of the plaintiffs are using the said registered trademark and deceiving the public at large in order to sell the impugned goods under brand name OMAXE. Hence, causing day to day damages and aggravation to the plaintiffs. Use of the infringing trademark by the defendants is without any justification. 2.19 Defendants have filed for a trademark under the name Omaxe Designer Tiles (Application no. 3724308) which is pending before the Registrar of Trademarks, New Delhi and the Registrar has issued a show cause notice to defendants on the basis of the examination report which indicates that the mark is in direct conflict with Omaxe Label, owned by Mr. Rohtas Goel (Plaintiff no. 2). The examination report of the Registrar indicated that the mark is similar to two other trademarks. This casts a huge doubt on the authenticity of the defendant's mark which infringes on the plaintiffs' mark.
2.20 Defendant no.1 has filed the application for trademark registration with malafide intentions. The said defendant had wrongfully submitted before the Registrar in its reply to the Examination Report that the services of the applicant are different from that of the cited mark i.e. the plaintiff's mark CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 11 of 25 'Omaxe Label'. It is submitted that both the plaintiff's mark and the applicant's mark belong to the same class, that is Class 19. The defendant has attempted to mislead the Registrar of Trademarks by submitting wrongful statements. 2.21 Despite the show cause notice issued by the Registrar of Trademarks indicating that the applicant's mark is similar to the plaintiff's mark, defendants continued to use the mark and has wrongfully stated that it had continued to use the mark as there was no hindrance or objection from any third party. Further, even the Examination Report presented to the defendant on 22.01.2018 specifically cited that the defendant's mark in conflicting with the plaintiff's mark but the defendant continued to use it and submitted that it had no hindrance or objections to it which shows that the defendant has had a malafide intention from the beginning and was misleading the Registrar to compel him to grant the trademark.
2.22 Plaintiff no.1 sent legal notice dated 09.04.2019 for calling upon the defendant no.1 to cease and desist from misusing the trademark OMAXE in relation to business of tiles and also to change the domain name of www.omaxetile.com to which plaintiffs no.1 and 2 are not having any concern. However, defendants did not pay any heed to the plaintiffs request in the cease and desist notice and rather chose to reply to the same in a hostile manner raising false and frivolous defenses. In reply to the plaintiff's notice, defendant no.1 stated that since 2010 they have adopted and put into commercial use the impugned goods under Trademark/Name "OMAXE Designer Tiles" which is well after the plaintiff started to use the name which was in 1989 and CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 12 of 25 the plaintiff had also got it registered since 07.01.2003. The defendants have also acknowledged and admitted the fact that "OMAXE" is trademarked and belongs to plaintiff no.2, who is the registered owner, despite which they continue to use the same. 2.23 Plaintiffs allege that motives of defendants are malicious and mischievous. Defendants attempted to grab the plaintiff's trademark and corporate identity OMAXE and also tried to derive good profits by using their corporate identity OMAXE, in a fraudulently manner.
2.24 Plaintiffs contend that defendants no. 2 and 3 are not the proprietor of the trademark of plaintiff no.1. They are using it in relation to their impugned goods and reproducing them on their labels and packaging materials etc. and otherwise also dealing with it in course of trade without leave and license of plaintiffs. They have started using the plaintiffs' trademark dishonestly and out of their sheer greed with a view to take advantage and to trade upon the established goodwill, reputation and proprietary rights of plaintiffs. That any person not knowing clearly the relationship between parties is bound to be confused by the defendants action and likely to cause in the minds of people that plaintiffs and defendants are doing the business of impugned goods together or are associated with each other in some manner or other which itself deceptive practice adopted by the defendants.
2.25 It is alleged that defendants are selling the impugned goods without proper bills and are also supplying the impugned goods bearing trademark of plaintiffs to various consumers in whole India. The impugned goods of the defendants can also be CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 13 of 25 purchased from e-commerce websites like Flipkart and Amazon. Defendants are also supplying impugned goods to various wholesalers and shopkeepers in Delhi including South East Delhi. 2.26 On the aforesaid averments, plaintiffs have prayed for grant of a decree of permanent injunction, delivery up, rendition of accounts and cost of the suit.
3.1 Pursuant to summons issued to defendants, they were served on 10.11.2023. Defendants failed to file written statement to the suit within stipulated time, therefore, their right to file written statement was closed on 28.02.2022. 3.2 As none was appearing on behalf of defendants despite service, they were directed to be proceeded ex parte on 08.07.2022. Thereafter, on 17.10.2022, counsel for defendants filed an application under Order IX Rule 7 CPC for setting aside ex parte order.
3.3 Since, neither defendants nor their advocate appeared to pursue the application under Order IX Rule 7 CPC, same was dismissed in default vide order dated 11.11.2022. Matter was directed to be listed for ex parte plaintiffs' evidence. 3.4 On 24.01.2023, counsel for defendants filed an application under section 151 CPC for restoration of application under Order IX Rule 7 CPC. After hearing submissions of parties, the application of defendants u/s 151 CPC for restroation of application under Order IX Rule 7 CPC was dismissed on 20.01.2024 by passing a detailed order running into three pages and the matter was directed to be listed for plaintiffs' evidence.
4.1 In order to prove their case, plaintiffs have examined CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 14 of 25 their Authorized Representative Mr. Digamber Dutt Sharma as PW1.
4.2 Before coming to the testimony of plaintiffs' witness, the documents relied upon by PW1 are hereby put in a tabulated form as under:-
Sr. No. Details of document Exhibit No.
1. Board resolution dated 16.12.2022 in favour Ex.PW1/1 of PW1
2. Special Power of Attorney of plaintiff no.2 Ex.PW1/1A
3. Master data of plaintiff company Ex.PW1/2
4. Copy of MOA and AOA of the plaintiff Ex.PW1/3 company
5. Listing certificate of plaintiff company Ex.PW1/4 issued by NSE and BSE
6. Details of trademark applications filed by Ex.PW1/5 plaintiff company before Trademark Authority
7. Details of turnover of plaintiff company Ex.PW1/6
8. Annual expenditure incurred by the Ex.PW1/7 company on advertising and publicity of services
9. Bills of AD agencies towards the Ex.PW1/8 advertisement of plaintiff company
10. Newspaper cutting advertising of plaintiff Ex.PW1/9 company
11. The brochures of plaintiff company Ex.PW1/10
12. Copy of certificate awards and recognitions Ex.PW1/11 given to plaintiff company
13. The snapshot of plaintiff company website Ex.PW1/12 (www.omaxe.com) having domain name 'OMAXE'
14. The snapshot of defendant' business on Ex.PW1/13 various websites showing design and variety of business of designer tiles for construction carried by defendants
15. Details of registration of defendants Ex.PW1/14 trademark application
16. Status report on defendants' trademark Ex.PW1/15 application opposed by plaintiff before the CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 15 of 25 Registrar of Trademark
17. Legal notice dated 09.04.2019 sent to Ex.PW1/16 defendants by plaintiff
18. Reply dated 29.04.2019 by defendants to the Ex.PW1/17 legal notice dated 09.04.2019
19. Certificate u/s 65B of The Indian Evidence Ex.PW1/18 Act 4.3 As defendants' right to file written statement was closed, defendants did not examine any witness in support of their defence.
5.1 I have heard and considered the submissions advanced by Sh.D.Acharya, learned counsel for plaintiff and Sh.Kailash Kumar, learned counsel for defendant and perused the material on record.
5.2 Learned counsel for defendants submitted that plaintiffs have not complied with the mandatory requirement u/s 12 A of The Commercial Courts Act, 2015, therefore, the suit filed by plaintiffs is not maintainable and is liable to be dismissed. In support of his submissions, he relied upon M/s Patil Automation Pvt. Ltd. & Ors. vs. Rakheja Engineers Pvt. Ltd., (2022) 10 SCC 1.
5.3 Per contra, learned counsel for plaintiffs submitted that plaintiffs have filed the present suit for seeking urgent relief of injunction, therefore, the suit filed by plaintiffs is very much maintainable. In case of urgent relief, compliance of section 12A of the The Commercial Courts Act, 2015 is not mandatory. 5.4 I have considered the rival submissions of the parties and perused the material on record.
CS (COMM.) No.362/2020(M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 16 of 25 5.5 For the sake of ready reference, section 12A of The Commercial Courts Act, 2015 is reproduced hereunder for ready reference:-
"12A. Pre-Institution Mediation and Settlement -- (1) A suit, which does not contemplate any urgent interim relief under this Act, shall not be instituted unless the plaintiff exhausts the remedy of preinstitution mediation in accordance with such manner and procedure as may be prescribed by rules made by the Central Government. (2) The Central Government may, by notification, authorise the Authorities constituted under the Legal Services Authorities Act, 1987 (39 of 1987), for the purposes of pre-institution mediation. (3) Notwithstanding anything contained in the Legal Services Authorities Act, 1987 (39 of 1987), the Authority authorised by the Central Government under sub-section (2) shall complete the process of mediation within a period of three months from the date of application made by the plaintiff under sub-section (1):
Provided that the period of mediation may be extended for a further period of two months with the consent of the parties:
Provided further that, the period during which the parties remained occupied with the pre-institution mediation, such period shall not be computed for the purpose of limitation under the Limitation Act, 1963 (36 of 1963).
(4) If the parties to the commercial dispute arrive at a settlement, the same shall be reduced into writing and shall be signed by the parties to the dispute and the mediator.
(5) The settlement arrived at under this section shall have the same status and effect as if it is an arbitral award on agreed terms under sub-section (4) of section 30 of the Arbitration and Conciliation Act, 1996 (26 of 1996).]"
5.6 In the case of Yamini Manohar vs. TKD Keerthi, 2023 SCC OnLine SC 1382, Hon'ble Supreme Court has examined the exception which is applicable in case the plaintiff seeks an urgent interim relief. The relevant observations made by Hon'ble Supreme Court are extracted herein below:-
"9. We are of the opinion that when a plaint is filed under the CC Act, with a prayer for an urgent interim relief, the commercial court should examine the nature and the subject matter of the suit, the cause of action, and the prayer for interim relief. The prayer for urgent interim CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 17 of 25 relief should not be a disguise or mask to wriggle out of and get over Section 12A of the CC Act. The facts and circumstances of the case have to be considered holistically from the standpoint of the plaintiff. Non-grant of interim relief at the ad-interim stage, when the plaint is taken up for registration/admission and examination, will not justify dismissal of the commercial suit under Order VII, Rule 11 of the Code; at times, interim relief is granted after issuance of notice. Nor can the suit be dismissed under Order VII, Rule 11 of the Code, because the interim relief, post the arguments, is denied on merits and on examination of the three principles, namely, (i) prima facie case, (ii) irreparable harm and injury, and (iii) balance of convenience. The fact that the court issued notice and/or granted interim stay may indicate that the court is inclined to entertain the plaint.
10. Having stated so, it is difficult to agree with the proposition that the plaintiff has the absolute choice and right to paralyze Section 12A of the CC Act by making a prayer for urgent interim relief. Camouflage and guise to bypass the statutory mandate of pre-litigation mediation should be checked when deception and falsity is apparent or established. The proposition that the commercial courts do have a role, albeit a limited one, should be accepted, otherwise it would be up to the plaintiff alone to decide whether to resort to the procedure under Section 12A of the CC Act. An absolute and unfettered right' approach is not justified if the pre-institution mediation under Section 12A of the CC Act is mandatory, as held by this Court in Patil Automation Private Limited (supra). The words 'contemplate any urgent interim relief' in Section 12A(1) of the CC Act, with reference to the suit, should be read as conferring power on the court to be satisfied. They suggest that the suit must "contemplate", which means the plaint, documents and facts should show and indicate the need for an urgent interim relief.
This is the precise and limited exercise that the commercial courts will undertake, the contours of which have been explained in the earlier paragraph(s). This will be sufficient to keep in check and ensure that the legislative object/intent behind the enactment of section 12A of the CC Act is not defeated."
5.7 In the case in hand, plaintiffs have filed the present suit for permanent injunction for restraining the defendants from infringement of their trademark, passing off and domain name. Along with the suit, plaintiffs also filed an application under CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 18 of 25 Order XXXIX Rule 1 & 2 r/w section 151 CPC for seeking ad- interim relief of injunction. Since, plaintiffs have sought urgent interim relief of injunction in the suit, therefore, the case of plaintiffs is covered by the exception contemplated in Yamini Mahohar (supra). Accordingly, it is held that the suit filed by plaintiffs is maintainable even though they have not exhausted the mechanism as provided u/s 12A of The Commercial Courts Act, 2015.
5.8 Learned counsel for defendants further submitted that the suit ought to have been dismissed by this court suo motu under Order VII Rule 11 CPC as plaintiffs have failed to comply with the mandatory requirement u/s 12 A of The Commercial Courts Act, 2015. He relied upon order dated 16.04.2021 passed by learned District Judge (Commercial Court)-02, Shahdara, Karkardooma, Delhi in the case of SBI vs. Nilesh. 5.9 The judgment/order relied upon by counsel for defendants is not applicable in the facts and circumstances of the case and is distinguishable as the said case was for recovery of money along with pendente lite and future interest and cost of the suit, while, the present suit is for grant of relief of permanent injunction, damages for infringement of trademark, passing off and domain name.
5.10 He further argued that defendants applied for trademark on 11.01.2018 and consequent to the same, trademark has been issued to defendant company after providing time for raising objection before issuance of trademark. Therefore, there can be no question of trademark infringement. He further submitted that plaintiffs ought to have filed their objection and CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 19 of 25 case before the Trademark Authority of India and not before this court.
5.11 Per contra, learned counsel for plaintiffs submitted that plaintiff no.2 is registered proprietor of the trademark 'Omaxe' and he has been granted registration under different classes with the trademark office. Relying upon section 31 of The Trademarks Act, he submitted that the original registration is prima facie evidence as to its validity. He submitted that all the trademarks registrations as mentioned in para no.8 of the plaint have been renewed from time to time, and subsist with the Registrar of Trademarks and are being used by plaintiffs extensively. He further submitted that plaintiffs had no opportunity to object for issuance of trademarks to defendants as they did not receive any notice from the Registrar's office. 5.12 Plaintiffs filed the present suit on 05.02.2020. Defendants did not file written statement to the suit within stipulated time along with status of the application for trademark applied by them. There is nothing on record to suggest that plaintiffs were given notice prior to issuance of trademark to defendant company. Moreover, plaintiffs are the prior users. As per para no.5 of the plaint, plaintiff's company is known by its trademark 'Omaxe' and the trademark 'Omaxe' is the corporate identity of plaintiff's company due to the commitment and perfection in work. They have been using the said trademark since 1989. However, defendants are the subsequent users. As per defendants themselves, they applied for obtaining the trademark on 11.01.2018. Thus, by prior use and adoption of the trademark 'Omaxe', plaintiffs have first right to use the same.
CS (COMM.) No.362/2020(M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 20 of 25 Defendants have not shown any law under which the present suit for injunction filed by plaintiffs is not maintainable in this court. Accordingly, the objection raised by defendants is found to be devoid of any merit.
5.13 It was further argued that plaintiffs have not impleaded necessary parties to the suit as mandated u/s 136 of The Trademarks Act, 1999. Therefore, the suit filed by plaintiffs is not maintainable and is liable to be dismissed. 5.14 There is no merit in the aforesaid contentions and submissions made by counsel for defendants as plaintiffs have impleaded the necessary parties to the present proceedings. Section 136 talks about registered user to be impleaded in certain proceedings under Chapter-VII or section 91 of The Trademarks Act. For convenience, section 136 of The Trademarks Act is reproduced hereunder for ready reference:-
"136. Registered user to be impleaded in certain proceedings.--
(1) In every proceeding under Chapter VII or under section 91, every registered user of a trade mark using by way of permitted use, who is not himself an applicant in respect of any proceeding under that Chapter or section, shall be made a party to the proceeding. (2) Notwithstanding anything contained in any other law, a registered user so made a party to the proceeding shall not be liable for any costs unless he enters an appearance and takes part in the proceeding."
5.15 A bare look at the aforesaid provision shows that impleadment of registered user is necessary only in proceedings under Chapter-VII or section 91 of The Trademarks Act. Chapter- VII deals with rectification and correction of the register. Section 91 deals with appeals to High Court. The proceedings pending in this court are not pertaining to rectification and correction of register. Thus, section 136 of The Trademarks Act has no CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 21 of 25 applicability to the present suit. Plaintiffs have impleaded defendant no.1, a partnership company and defendants no.2 and 3 its partners against whom allegations have been made for infringement of trademark of plaintiffs'. Thus, the suit filed by plaintiffs is very much maintainable and it cannot be said to be bad for want of impleadment of necessary parties. 5.16 PW1 Sh.Digambar Dutt Sharma, AR of plaintiff, in his affidavit of evidence, Ex.PW1/A has deposed and corroborated about the facts as mentioned in the plaint. He has proved the documents as detailed in para no.4.2 of the judgment. His testimony has gone unrebutted and unchallenged. His testimony could not be impeached by defendants in the cross- examination.
5.17 In his cross-examination, PW1 deposed that the plaintiff company does business of real estate development, promoter to various townships, group housing societies, commercial plots and commercial complex at a large scale within pan India. He also deposed that as the company does real estate business, the company has to use various pipes and bricks etc. as per the requirement. The company uses bricks, pipes, tiles for developing and promoting real estate business in the brand name 'Omaxe'. PW1 has denied the suggestion that the proceedings initiated by plaintiff are false and frivolous. He further denied that Omaxe Designer Tiles is not infringing the trademark of plaintiff company. Thus, defendants could not elicit any positive response in their favour. The witness remained firm and consistent throughout his cross-examination. 5.18 In the case of Max Healthcare Institute Ltd. vs. CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 22 of 25 Sahrudya Healthcare Pvt. Ltd. 2019 SCC OnLine Del. 9036, it was held by Hon'ble High Court of Delhi that the test for infringement of a label/word mark is the test of prominent word of the mark. The adoption by the defendant of a prominent word in the label/device mark of the plaintiff amounts to infringement. 5.19 In the case in hand, plaintiffs have admittedly been using the trademark Omaxe and website www.omaxe.com since 1989. The domain name of defendants is www.omaxetile.com. Thus, defendants are using identical, deceptively similar and phonetically same domain name as that of plaintiffs. In Kaviraj Pandit Durga Dutt Sharma vs. Navrattana Pharmaceutical Lab AIR 1965 SC 980, it was held that in infringement cases, if defendant's mark is closely, visually and phonetically similar then no further proof is necessary.
5.20 The trademark OMAXE is registered in the name of plaintiff no.2 and is a coined expression. The said trademark is inherently distinctive qua the services of plaintiff and the said trademark by virtue of its long and continuous use since 1989 has become distinctive to the services, business and reputation of plaintiffs. Plaintiffs have spent huge amount of money on marketing, including advertisement and direct marketing etc. of the projects/services of plaintiff company under the mark OMAXE.
5.21 By virtue of section 28 of The Trademarks Act, plaintiffs have exclusive right to use the trademarks registered by them. Further, under section 31 of The Trademarks Act, the original registration is prima facie evidence to its validity. As per plaintiffs, all their registrations as given in para no.8 of the plaint CS (COMM.) No.362/2020 (M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 23 of 25 are valid and subsisting as on date. They have never abandoned them at any point of time and are being used by them extensively. 5.22 Defendants no.2 and 3 through their company i.e. defendant no.1 are allegedly carrying out business of tiles with the trademark Omaxe which is identical, deceptively similar and phonetically same to plaintiffs' well known and extensively used trademark. Further, they are also using identical, deceptively similar and phonetically same to plaintiffs' domain name www.omaxetile.com from which the tiles can be purchased online. Due to use of the said domain name, common people can be misled to believe that plaintiff company has also started business of tiles.
5.23 The trademark used by defendants to sell their goods similar to that of plaintiffs may give wrong impression to the public at large that there is some nexus between plaintiffs and defendants. The common public can easily be deceived by believing that the products sold by defendants are associated with plaintiffs. Admittedly, plaintiff company is engaged in the business of real estate and carrying all types of business activities pertaining to the real estate viz. construction, consultancy, sale and purchase of property etc. in the name of Omaxe. The tiles are used in construction of the buildings. Thus, the public may associate that the tiles being sold by defendants under the name of Omaxe has some proximity with the plaintiffs. As plaintiffs have proprietary rights over the mark Omaxe and have been using the same since 1989, they have exclusive right to use the same. The domain name used by defendants is found to be deceptively and phonetically similar to that of plaintiffs.
CS (COMM.) No.362/2020(M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 24 of 25 5.24 For the foregoing reasons and discussions, I am of the view that plaintiffs have succeeded to prove their entitlement for grant of decree of permanent injunction as prayed in prayer clause (a) to (c) of the suit.
5.25 The impugned goods allegedly being sold by defendants bearing the trademark have not been seized. Hence, the relief of delivery up cannot be granted to plaintiffs. 5.26 Plaintiffs have also not led any evidence in respect of rendition of account of profit earned by defendants. There is no material on record to suggest as to how much profits have been earned by defendants by selling impugned goods (tiles). Thus, plaintiffs have failed to show their entitlement for grant of any amount on account of rendition of profits as prayed in prayer clause (f) of the suit.
5.27 Plaintiffs are at liberty to take necessary steps as per law for rectification and correction of trademark Omaxe used by defendants in the register maintained by Registrar of the trademarks.
5.28 In view of above, the suit of plaintiffs is partly decreed. Plaintiffs are granted relief as prayed in prayer clause
(a) to (c) of the suit. They are also entitled for cost of proceedings which is quantified at Rs.51,000/-. 6.1 Decree sheet be prepared.
7.1 File be consigned to Record Room.
Announced in the open court (RAJ KUMAR TRIPATHI) Dated: 30.05.2024 District Judge (Commercial Court)-08, South-East District, Saket Courts, New Delhi.
CS (COMM.) No.362/2020(M/s Omaxe Limited & Another vs. Omaxe Designer Tiles & Others) Page No. 25 of 25