Delhi High Court - Orders
M/S Globus Spirits Ltd vs Wild Berries Bottling Pvt. Ltd on 15 June, 2022
Author: Jyoti Singh
Bench: Jyoti Singh
$~27
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 435/2022
M/S GLOBUS SPIRITS LTD. ..... Plaintiff
Through: Mr. Shailen Bhatia, Ms. Neelam
Pathak and Ms. Khushboo Tomar, Advocates.
versus
WILD BERRIES BOTTLING PVT. LTD. ..... Defendant
Through: None.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
ORDER
% 15.06.2022
I.A. 9742/2022 (Exemption)
1. Subject to the Plaintiff filing originals, clearer copies and documents with proper margins, which it may seek to place reliance on, within four weeks from today, exemption is granted.
2. Application is allowed and disposed of.
I.A. 9743/2022 (Section 12A of the Commercial Courts Act, 2015 seeking exemption from pre-institution mediation)
3. For the reasons stated in the application, the requirement of pre- institution mediation is dispensed with.
4. Application is allowed and disposed of.
I.A. 9744/2022 (Exemption from service to Defendant)
5. Since there is an urgency in the matter and the matter is being heard today, Plaintiff is exempted from serving advance notice on the Defendant.
CS(COMM) 435/2022 Page 1 of 9 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 18:45:226. For the reasons stated in the application, the same is allowed and disposed of.
CS(COMM) 435/2022
7. Let plaint be registered as a suit.
8. Upon filing of process fee, issue summons to the Defendant, through all permissible modes, returnable on 08.08.2022 before the learned Joint Registrar.
9. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the receipt of summons. Along with the written statement, Defendant shall also file an affidavit of admission/denial of the documents filed by the Plaintiff.
10. Replication be filed by the Plaintiff within 15 days of the receipt of the written statement. Along with the replication, an affidavit of admission/denial of documents filed by the Defendant, shall be filed by the Plaintiff.
11. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines. I.A. 9740/2022(under Order 39 Rules 1 and 2 CPC, by Plaintiff)
12. Present application has been preferred by the Plaintiff under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 for grant of ex-parte ad-interim injunction.
13. Issue notice to the Defendant, through all prescribed modes, returnable on 31.08.2022.
14. It is averred that the Plaintiff is engaged in the business of manufacture, marketing and sale of industry alcohol comprising Rectified Spirit and Extra-Neutral Alcohol Country Liquor and Indian Made Foreign CS(COMM) 435/2022 Page 2 of 9 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 18:45:22 Liquor (IMFL), such as Whisky, Brandy, Rum, Gin, Vodka, Wine etc. Plaintiff Company has a brand portfolio of its own in the country liquor segment such as White Lace Gin, White Lace Vodka, Samurai Gold Extra Rich Blend Whisky, etc.
15. It is averred that Plaintiff Company had conceived and adopted the trademark 'WHITE LACE' for Gin in the year 2000 and from 2019 the same was adopted for the product Vodka. Plaintiff obtained an excise license on 14.06.2019, which is renewed year to year. Plaintiff is selling its goods bearing the trademark 'WHITE LACE' in Delhi, Haryana and Rajasthan.
16. It is further averred that Plaintiff has various registrations in the trademark/label 'WHITE LACE' without and in conjunction with other words. The details whereof have been mentioned in the plaint and the registrations are valid and subsisting.
17. It is further averred that Plaintiff has also devised the crest (device) which has been specially designed for the Plaintiff and is registered in Class 33 and is associated with the Plaintiff. Plaintiff has also adopted the label which is distinctive with (a). orange colour of a different tone; (b). three oranges on the label, cut in half with two inner sides and one in reverse; (c). cap of the bottle in orange colour;
(d). word 'vodka' written beneath the word LACE in a strategic placement;
CS(COMM) 435/2022 Page 3 of 9 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 18:45:22and (e). White Lace written vertically on one side of the label from bottom to top, on a white background.
18. Plaintiff also claims protection in the design of the bottle which is registered by the Controller of Designs, the registration being valid and subsisting.
19. It is averred that the Plaintiff has sold its goods under the trademark 'WHITE LACE' and on account of the extensive and continuous user of the trademark it is associated with the Plaintiff and none else. Plaintiff's trademark has acquired enviable and formidable reputation in the market, which is evident from the sales turnover and the expenditure incurred on advertisements. In the year 2021-22, Plaintiff sold 94,050 cases of 750 ml liquor and 25,81,102 cases of 180 ml liquor.
20. It is stated that in May, 2022 Plaintiff learnt that Defendant, who is engaged in the business of marketing and selling alcoholic beverages is selling the said products under the impugned trademarks 'WILD LAKE' and 'WILD LACE'. A search in the records of the Trademarks Registry revealed that Defendant has filed applications dated 30.04.2021 and 02.07.2021 for registrations of the trademarks 'WILD LACE' and 'WILD LAKE' respectively, in Class 33 on 'Proposed to be Used' basis.
21. It is contended that Defendant's impugned trademarks and label are an exact and slavish imitation of the Plaintiff's trademarks 'WHITE LACE' as well as the trade dress and the design of the bottle and is likely to cause confusion in the mind of a customer with average intelligence and imperfect recollection. The marks being deceptively similar and the goods as well as trade channels being identical, the purchasers are likely to associate the goods of the Defendant with the Plaintiff, while no such association exists CS(COMM) 435/2022 Page 4 of 9 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 18:45:22 and the Plaintiff has never authorised the Defendant to use its registered trademarks. The Defendant can have no plausible explanation to adopt the trademarks of the Plaintiff except a dishonest intention to misrepresent to the public and cause loss to the goodwill and reputation of the Plaintiff and dilute its trademarks. The Defendant is guilty of infringement, passing off, tarnishment and ought to be injuncted.
22. I have heard the learned counsel for the Plaintiff. Plaintiff is the registered proprietor of the trademarks as aforementioned. In my prima facie view, the impugned marks and the trade dress are deceptively similar to that of the Plaintiff's trademarks. A comparison of the competing trademarks and the trade dress, in my prima facie view, is likely to cause confusion in the minds of unwary consumers that the goods of the Defendant are those of the Plaintiff. For ready reference, a comparative as brought out in the plaint is as follows:-
23. This Court finds prima facie merit in the contention that adoption of identical/deceptively similar trademarks 'WILD LACE' and 'WILD LAKE' CS(COMM) 435/2022 Page 5 of 9 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 18:45:22 by the Defendant is with dishonest motive to create mischief and to deceive the purchasing public and members of the trade. In Parle Products (P) Ltd. vs. J.P & Co., AIR 1972 SC 1359, it was held by the Supreme Court that where the Court sees copying, dishonesty ought to be presumed.
24. Having heard learned counsel for the Plaintiff, this Court is of the view that Plaintiff has made out a prima facie case for grant of ex parte ad-interim injunction. Balance of convenience lies in favour of the Plaintiff and it is likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.
25. Accordingly, Defendant, its officers, servants, agents, dealers, distributors and all other are restrained from manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing in goods bearing the trademarks WILD LACE and WILD LAKE or from doing any other thing as is likely to lead to confusion or deception, thereby resulting in infringement of Plaintiff's registered trademarks bearing registration nos. 1565317, 4215690, 4949964, 4956373 and 5224218 in class 33.
26. Defendant, its officers, servants, agents, dealers, distributors and all other are further restrained from manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing in goods such as Whisky, Brandy, Rum, Gin, Vodka, Wine, and other Alcohol Beverages and other cognate/allied goods under the trademark WILD LACE or WILD LAKE or any other identical/deceptively similar trademark to the Plaintiff's trademark WHITE LACE or from doing any other thing as is likely to lead to confusion or deception thereby resulting in passing off of the Defendant's goods as those of the Plaintiff.
CS(COMM) 435/2022 Page 6 of 9 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 18:45:2227. Defendant, its officers, servants, agents, dealers, distributors and all other are further restrained from manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing in goods bearing the trademarks WILD LACE and WILD LAKE or from doing any other thing as is likely to lead to confusion or deception thereby resulting in infringement of copyright of the label.
28. Plaintiff shall comply with the provisions of Order 39 Rule 3 CPC within a period of one week from the execution of the local commission. I.A. 9741/2022(under Order 26 Rule 9 CPC, by Plaintiff)
29. Present application has been preferred by the Plaintiff under Order 26 Rule 9 read with Section 151 CPC, seeking appointment of a Local Commissioner.
30. Upon hearing, the application is allowed.
31. Accordingly, Mr. Amit Acharya, Advocate (Mobile No. 9873024619) is appointed as Local Commissioner, who shall visit the premises of the Defendant at the following address:-
M/s Wild Berries Bottling Pvt. Ltd. E-16, 16-A, 17 Ricco Industrial Area, Sotnala, Behror, Distt, Alwar Rajasthan, 301701
32. Local Commissioner shall visit the aforesaid premises, search and take into custody the infringing products bearing the Plaintiff's registered trademarks, in finished or unfinished condition, including packaging material, label, printing material, etc. and make an inventory of the same.
33. Local Commissioner along with the Representative of the Plaintiff and/or its counsel shall be permitted to enter the premises of the Defendant, as aforementioned.
CS(COMM) 435/2022 Page 7 of 9 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 18:45:2234. Local Commissioner shall seize the infringing products and hand over the same to the Defendant on superdari, upon the Defendant furnishing an undertaking that it shall produce the goods, so seized, before the Court, as and when further directions are issued in this regard.
35. Local Commissioner shall make copies and sign books of accounts including ledgers, cash books, bill books, etc. discovered from the premises of the Defendant.
36. Local Commissioner shall be permitted to take photographs/videos of the execution of the Commission. He shall also be entitled to seek police assistance or protection of the Local Police Station, if so required, for the purpose of execution of the order of this Court. The SHO of the concerned Police Station is directed to provide necessary assistance to the Local Commissioner, if sought for.
37. In case the premises as aforementioned are found locked, the Local Commissioner is at liberty to break open the locks.
38. Plaintiff shall serve a copy of this order upon the Defendant along with paper book of the suit at the time of execution of the proceedings.
39. Fee of the Local Commissioner is fixed at Rs.1,50,000/- in addition to travel, boarding and lodging expenses as well as other miscellaneous out-of- pocket expenses for the execution of the Commission. Fees of the Local Commissioner shall be paid in advance by the Plaintiff.
40. Report of the Local Commissioner shall be filed within two weeks of the execution of the Commission.
41. Plaintiff shall inform the Registry about the execution of the proceedings by the Local Commissioner and only thereafter, Registry shall issue summons of the suit to the Defendant.
CS(COMM) 435/2022 Page 8 of 9 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 18:45:2242. This order shall not be uploaded on the website of this Court till execution of the Commission by the Local Commissioner.
43. Application is disposed of.
44. Copy of this order be given to learned counsel for the Plaintiff dasti under the signatures of the Court Master.
JYOTI SINGH, J (VACATION JUDGE) JUNE 15, 2022/shivam CS(COMM) 435/2022 Page 9 of 9 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 18:45:22