Delhi High Court - Orders
Vectair Systems Limited And Anr vs Prabhav Sales Corporation And Ors on 15 March, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~28
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 230/2024
VECTAIR SYSTEMS LIMITED AND ANR ..... Plaintiffs
Through: Mr. Anand Varma, Mr. Madhav
Bhatia, Mr. Aditya Pandey,
Mr. Shreyuss Shankar Joshi and
Mr. Raj Shukla, Advocates.
versus
PRABHAV SALES CORPORATION AND ORS ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 15.03.2024 I.A. 6096/2024 (condonation of delay in re-filing)
1. For the grounds and reasons stated in the application, the delay in re- filing the plaint is condoned.
2. The application is disposed of.
I.A. 6094/2024 (for exemption from filing originals, clearer copies, translated copies and left side margins)
3. Exemption is granted, subject to all just exceptions.
4. Plaintiffs shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
5. Accordingly, the application stands disposed of.
CS(COMM) 230/2024 Page 1 of 11This 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 12/04/2024 at 20:43:47 I.A. 6093/2024 (exemption from institution pre- mediation)
6. As the present suit contemplates urgent interim relief, in light of the judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.
7. Disposed of.
I.A. 6090/2024 (seeking discovery, production and inspection of the defendants' documents)
8. Issue notice, upon filing of process fee, by all permissible modes returnable on 20th August, 2024. Reply, if any, be filed within four weeks from the date of service. Rejoinder thereto, if any, be filed within two weeks thereafter.
I.A. 6095/2024 (exemption from advance service of suit papers upon the Defendants)
9. The Plaintiff seeks urgent interim relief against counterfeit products and for this purpose, an ex-parte appointment of Local Commissioner is also sought. Therefore, in the peculiar facts and circumstances of this case, exemption from effecting advance service upon the Defendants is granted.
10. The application is allowed and disposed of.
CS(COMM) 230/2024
11. Let the plaint be registered as a suit.
12. Upon filing of process fee, issue summons to the Defendants by all permissible modes. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the date of receipt of summons.
12023 SCC OnLine SC 1382.
CS(COMM) 230/2024 Page 2 of 11This 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 12/04/2024 at 20:43:47 Along with the written statement, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiffs, without which the written statement shall not be taken on record.
13. Liberty is given to the Plaintiffs to file a replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiffs, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiffs, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
14. List before the Joint Registrar for marking of exhibits on 20th May, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
15. List before Court for framing of issues thereafter.
I.A. 6092/2024 (under Order XXXIX Rules 1 and 2 of CPC for grant of ex parte ad-interim injunction)
16. Mr. Anand Varma, counsel for the Plaintiffs, presents the following facts and contentions for seeking ex-parte ad interim injunction:
16.1. Plaintiff No. 1/ Vectair Systems Limited, a company incorporated in the United Kingdom, is a renowned innovator, manufacturer and supply of aircare and hygiene products in a number of sectors worldwide. Plaintiff No. 2/ Excel International has been arrayed in their capacity as the sole authorised importer and distributor of Plaintiff No. 1's products in India.
16.2. On 24th April, 2002, Plaintiff No.1 filed for registration of the mark ' ' before the UK Intellectual Property Office CS(COMM) 230/2024 Page 3 of 11 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 12/04/2024 at 20:43:47 (IPO) under the Trade Marks Act 1994 of Great Britain and Northern Ireland ["UK Act"]. The said mark was inserted in the register vide entry dated 10th January, 2003 and has been registered under several classes under the UK Act, details whereof have been set out at Paragraph No. 10 of the plaint. Plaintiff No. 1 has also been using the trademark ' ' since the year 2011 in several countries such as the United Kingdom, United States of America, etc. The registration details of the mark ' ' under various classes under the UK Act are mentioned at Paragraph No. 13 of the plaint.
16.3. Plaintiffs are using the aforenoted marks for urinal screens, having utilised the same extensively and continuously for a considerable time period in India. They have incurred significant expenses on advertising the said urinal screens and other products of Plaintiff No. 1 by way of exhibitions, trade fairs and conventions, and have set out their business promotion expenses in India from the years 2013-14 to 2023-24 in Paragraph No. 20 of the plaint. Plaintiffs' products sold under their aforenoted marks have been commercially successful, as demonstrated by the year-wise sales and revenue earned, details whereof are delineated at Paragraph No. 19 of the plaint. Notably, in the year 2023-24, the sales of 'V- Screen' urinal screens in India are of INR 2,16,12,172.00/-. 16.4. In light of the above, Plaintiff No. 1's trademarks ' ', ' ' and ' ' as well as Plaintiff No. 2's mark/ brand name 'EXCEL INTERNATIONAL' have acquired reputation, goodwill and distinctiveness internationally as CS(COMM) 230/2024 Page 4 of 11 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 12/04/2024 at 20:43:47 well as in India. The consuming public in India identify, recognize, and exclusively associate the aforenoted marks with the Plaintiffs and their products in the aircare and hygiene sectors.
16.5. Plaintiffs' grievance arises on account of the counterfeiting of their products by the Defendants. Although the exact role of the Defendants is not known to the Plaintiffs, it is alleged that Defendants No. 1 to 3 are engaged in manufacturing, sourcing. packaging and sale of counterfeit 'V- Screen' products.
16.6. In order to demonstrate that the Defendants are counterfeiting and passing off their goods as that of the Plaintiff, reliance is placed on the marks being used by the Defendants and also the packaging of their products. A side-by-side comparison of the same is set out as follows:
CS(COMM) 230/2024 Page 5 of 11This 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 12/04/2024 at 20:43:47 CS(COMM) 230/2024 Page 6 of 11 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 12/04/2024 at 20:43:48 16.7. The identity/ striking similarity between the Defendants' impugned products/ packaging with the original products/ packaging of the Plaintiffs is demonstrated as follows:
A. The design of the counterfeit urinal screen has been exactly copied from the design of the Plaintiffs' 'V-Screen' urinal screen; B. The Defendants in the packaging of their counterfeit products have unauthorizedly and without consent used Plaintiff No. 1's marks ' ' and ' ', thereby constituting passing off;
C. The Defendants in their packaging of counterfeit products have unauthorizedly and without consent used the mark of the Plaintiff No. 2 i.e., , thereby constituting passing off;
D. The counterfeit products manufactured and sold by the Defendants bear the identical logo of the Plaintiff No. 1 in bold and italics, without the consent of Plaintiff No. 1;
E. The counterfeit urinal screens are of inferior quality than that of the Plaintiffs' urinal screens. It is pertinent to mention that the quality around the screen (especially at the service tab) is badly frayed, and the fragrance is of lower quality;
F. The outer packaging materials of the counterfeit product are of inferior quality as compared to the original product;
G. The counterfeit products are also unauthorizedly using Plaintiff No. 2
marks i.e. as well as the address of
CS(COMM) 230/2024 Page 7 of 11
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 12/04/2024 at 20:43:48 the Plaintiff No. 2. Further, the counterfeit products are also misrepresenting that the products are being imported and marketed by Plaintiff No. 2, when this is not the case.
17. Having considered the foregoing submissions, the Court is prima facie satisfied that the Plaintiffs have been using their marks in India and have over the years earned reputation and goodwill in respect of the same. The Defendants have therefore dishonestly adopted identical/ deceptively similar marks, as evident from the side-by-side comparison extracted above, with the sole intention of counterfeiting the products and to pass off their goods as that of the Plaintiffs. If such an activity is not restrained, the Plaintiff is likely to suffer monetary loss.
18. In view of the above, till the next date of hearing, Defendants, their partners, if any, officers, servants, agents, distributors, stockists and representatives and/or anyone acting on their behalf, are restrained from importing, manufacturing, warehousing, selling and/or offering for sale, advertising, directly or indirectly dealing, in any manner, in any goods bearing any mark identical/ deceptively similar to , and EXCEL INTERNATIONAL, and and/ or any similar mark amounting to passing off of the Defendants' products as those of the Plaintiffs.
19. Upon filing of process fee, issue notice to the Defendants, by all permissible modes, returnable on the next date of hearing. Reply, if any, be CS(COMM) 230/2024 Page 8 of 11 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 12/04/2024 at 20:43:48 filed within four weeks from the date of service. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.
20. Compliance of Order XXXIX Rule 3 of the Code of Civil Procedure, 1908, be done within one week from today.
21. List on 20th August, 2024.
I.A. 6091/2024 (seeking appointment of local commissioners)
22. Mr. Anand Varma, counsel for Plaintiffs, contends that upon service of paper-book, Defendants are likely to remove all physical evidence or deny their involvement in the infringing activities. Thus, in order to preserve evidence of infringement, he seeks appointment of Local Commissioners. Plaintiff believes that the counterfeit products are stored at Defendants' premises, details whereof have been stated below:
23. Accordingly, the following are appointed as Local Commissioners to visit the premises of the Defendants mentioned against their name:
Sr. No. Local Commissioner Address
1. Defendant No. 1: PRABHAV
Mr. Harsh Jain, Advocate. SALES CORPORATION
Floor 2, H. No. 41, Arihant Nagar,
[Contact No.: +91- Punjabi Bagh, Delhi, 110026,
9811500559] including the godown/warehouse
at H.No. 48, LGF/Basement,
Arihant Nagar, Punjabi Bagh,
Delhi 110026,
2. Defendant No. 2: V-VALUE
Mr. Ritesh Choudhry, SOLUTIONS
Advocate. Ground and 1st Floor, No. 8 and
8/1, H. Siddaiah Road, Bengaluru
[Contact No.: +91- Urban, Karnataka 560027
9910394267]
3. Mr. Nikhil Palli, Advocate. Defendant No. 3: ADITI SALES CS(COMM) 230/2024 Page 9 of 11 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 12/04/2024 at 20:43:48 CORPORATION [Contact No.: +91- B-38, Sector 59, NOIDA, Gautam 9811676973] Budh Nagar, Uttar Pradesh -
201301, along with the warehouse where counterfeit products are stored/stocked
24. Local Commissioners, along with representatives of the Plaintiffs and their counsel, shall be permitted to enter upon the above-noted premises of Defendants and/or any other location/ premises that may be identified during the course of commission, in order to conduct the search and seizure. The Local Commissioners shall conduct a search of the premises and seize products (including unfinished/ semi-finished goods) bearing any marks/ packaging identical or similar to the Plaintiffs' marks ' ', ' ', 'EXCEL INTERNATIONAL', and ' ', as well as other materials/ documents pertaining thereto.
25. After seizing such material, the same shall be inventoried, sealed and signed by the Local Commissioners, in the presence of the parties, and released on superdari to the Defendants on its undertaking to produce the same as and when further directions are issued in this regard.
26. Local Commissioners shall also be permitted to make copies of the books of accounts including ledgers, cash registers, stock registers, invoices, books, etc. insofar as they pertain to the Defendants' impugned products/ packaging. Further, the Local Commissioners are permitted to CS(COMM) 230/2024 Page 10 of 11 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 12/04/2024 at 20:43:48 undertake/arrange for photography/ videography of the execution of the commission. Both the parties shall render full assistance to the Local Commissioners for carrying out the aforenoted directions.
27. In case any of the premises are found locked, the Local Commissioners shall be permitted to break open the lock(s). To ensure an unhindered and effective execution of this order, the SHO of the local police station is directed to render all assistance and protection to the Local Commissioner, if and when sought.
28. The fee of the Local Commissioners, to be borne by the Plaintiffs, is fixed at INR 1,10,000/- each for Mr. Harsh Jain and Mr. Nikhil Palli and INR 1,50,000/- each for Mr. Ritesh Choudhry. Plaintiffs shall also bear expenses for travel and lodging of the Local Commissioners and other miscellaneous out-of-pocket expenses for the execution of the commission. Entire fee of the Local Commissioners shall be paid in advance by Plaintiff.
29. The report of the commission shall be filed by Local Commissioners within a period of six weeks from the date of execution.
30. With the above directions, the application stands disposed of.
31. Copy of this order shall not be uploaded for a period of two weeks from today.
32. Dasti under the signatures of Court Master.
SANJEEV NARULA, J MARCH 15, 2024 nk CS(COMM) 230/2024 Page 11 of 11 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 12/04/2024 at 20:43:48