Delhi High Court - Orders
Retail Royalty Company & Anr vs Devas Organic Products Private Limited ... on 20 September, 2023
Author: C.Hari Shankar
Bench: C. Hari Shankar
$~60
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 653/2023, I.A. 18300/2023, I.A. 18301/2023, I.A.
18302/2023 & I.A. 18303/2023
RETAIL ROYALTY COMPANY & ANR. ..... Plaintiffs
Through: Mr. Urfee Roomi, Ms. Janaki
Arun and Mr. Anuja Chaudhury, Advs.
versus
DEVAS ORGANIC PRODUCTS PRIVATE LIMITED AND
ORS. ..... Defendants
Through: None
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 20.09.2023
(Through Video-Conferencing)
CS(COMM) 653/2023
1. The plaintiffs are the proprietors of a Flying Eagle Device mark used in the context of clothing, cosmetics and personal care products, registered in the plaintiffs' favour in India with effect from 2006. The plaintiffs' mark has also been declared as a well-known trade mark within the meaning of Section 2(1)(zg) of the Trade Marks Act vide orders dated 25 April 2023 and 3 May 2023 in CS (COMM.) 601/2022 (Retail Royalty Company & Anr. v. Nirbhay Marg News Broadcast Private Limited).
2. The plaintiffs are also the holders of a copyright registration, in CS(COMM) 653/2023 Page 1 of 5 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 22/09/2023 at 22:22:50 respect of the Flying Eagle mark, granted on 7 December 2017.
3. The plaintiffs are aggrieved by use, by the defendants, of the mark . The defendants are using the impugned mark for manufacture, marketing and sale of personal care products, such as handmade soaps, shampoos, toothpastes, dishwash liquids and nutritional mixes. Defendant 2 has also applied for registration of the mark on 22 December 2022 claiming user since 6 February 2017, in class 3 for bath soaps in liquid, solid or gel forms and skincare cosmetics. Mr. Urfee Roomi, learned Counsel for the plaintiffs submits that the use of the Flying Eagle Device mark as part of the logo of the defendants amounts to transparent infringement as well as passing off, by the defendants, of their product as that of the plaintiffs.
4. Inasmuch as the Flying Eagle Device mark is registered in favour of the plaintiffs and has been recognised as a well-known trademark by orders passed by this Court and the Flying Eagle Device mark is replicated in full in the impugned mark, a prima facie case of infringement is made out. There is, prima facie, every likelihood of a customer of average intelligence and imperfect recollection, who comes across the defendants' mark, believing it to be associated with the plaintiffs, in view of the use, on the said mark, of the Flying Eagle logo.
5. In view thereof, let the plaint be registered as a suit.
CS(COMM) 653/2023 Page 2 of 5This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 22/09/2023 at 22:22:50
6. Issue summons in the suit.
7. Written statement, accompanied by affidavit of admission/denial of the documents filed by the defendants be filed within 30 days with advance copy to learned Counsel for the plaintiffs who may file replication thereto, accompanied by affidavit of admission/denial of the documents filed by the defendants within 30 days thereof.
8. List before the learned Joint Registrar (Judicial) for completion of pleadings, admission and denial of the documents and marking of exhibits on 21 November 2023, whereafter the matter would be placed before the Court for case management hearing and further proceedings.
I.A. 18300/2023 (Order XXXIX Rules 1 and 2, CPC)
9. This is an application by the plaintiffs under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking grant of interlocutory injunctive reliefs.
10. Following the order passed by the Division Bench of this Court in Dabur India Ltd. v. Emami Ltd.1, as the defendants have been in the market, and this is not a case of counterfeiting but a case of allegedly deceptively similar trademarks, I deem it appropriate that the defendants would necessarily have to be given an opportunity to respond before this Court takes a view on the application for 1 Order dated 21 August 2023 in FAO(OS) (COMM) 171/2023 CS(COMM) 653/2023 Page 3 of 5 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 22/09/2023 at 22:22:50 interlocutory injunction.
11. As such, issue notice, returnable before the Court on 13 October 2023.
12. Notice be served on the defendants by all modes.
13. Reply, if any, be filed within two weeks with advance copy to learned Counsel for the plaintiffs who may file rejoinder thereto, if any, at least 24 hours in advance of the next date of hearing.
14. List for hearing and disposal of this application on 13 October 2023.
I.A. 18301/2023 (under Order XI Rule 1(4) of the CPC)
15. By this application, the plaintiffs seek permission to file additional documents.
16. The plaintiffs are permitted to place additional documents on record in accordance with Order XI Rule 1(4) of the Code of Civil Procedure, 1908 (CPC) as amended by the Commercial Courts Act within 30 days from today.
17. The application stands disposed of accordingly.
I.A. 18302/2023 (under Section 151 of the CPC)
18. Subject to the plaintiffs filing legible copies of any dim or illegible documents on which it may seek to place reliance within four CS(COMM) 653/2023 Page 4 of 5 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 22/09/2023 at 22:22:50 weeks from today, exemption is granted for the present.
19. The application is disposed of.
I.A. 18303/2023 (under Section 12A of the Commercial Courts Act, 2015)
20. In view of the judgment of the Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Pvt Ltd2, exemption is granted from the requirement of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.
21. The application stands allowed accordingly.
C.HARI SHANKAR, J SEPTEMBER 20, 2023 ar 2 2022 SCC OnLine Del 3529 CS(COMM) 653/2023 Page 5 of 5 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 22/09/2023 at 22:22:50