Delhi High Court - Orders
Emerald Enterprises vs Emerald Valves Private Limited & Anr on 21 November, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~11 & 17
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 278/2023
EMERALD ENTERPRISES ..... Petitioner
Through: Mr. Luv Virmani and Mr. Rohit
Bohra, Advs. (M: 9911000651)
versus
EMERALD VALVES PRIVATE
LIMITED & ANR. ..... Respondents
Through: None.
17 AND
+ CS(COMM) 817/2023 & I.A. 22563/2023
EMERALD ENTERPRISES ..... Plaintiff
Through: Mr. Luv Virmani and Mr. Rohit
Bohra, Advs.
versus
EMERALD VALVES PRIVATE LIMITED ..... Defendant
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 21.11.2023
1. This hearing has been done through hybrid mode.
CS(COMM) 817/2023
2. Let the plaint be registered as a suit.
3. Issue summons to the Defendant through all modes upon filing of Process Fee.
4. The summons to the Defendant shall indicate that the written statement to the plaint shall be positively filed within 30 days from date of C.O. (COMM.IPD-TM) 278/2023 & CS(COMM) 817/2023 Page 1 of 9 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 22/11/2023 at 23:47:38 receipt of summons. Along with the written statement, the Defendant shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.
5. Liberty is given to the Plaintiff to file the 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 Defendant, be filed by the Plaintiff, 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.
6. List before the Joint Registrar for marking of exhibits on 15th January, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
7. List before Court on 4th March, 2024.
I.A.22563/2023 (u/O XXXIX Rules 1 & 2 CPC)
8. Issue notice.
9. The present suit is filed by the Plaintiff - Emerald Enterprises, which is a partnership firm of Shri Joginder Singh Narula and Mr. Baljeet Narula against the Defendant from using the mark 'EMERALD VALVES' or the trade name 'EMERALD VALVES PRIVATE LTD'.
10. The case of the Plaintiff is that it is part of EMERALD group, which has presence in various sectors such as air conditioning, heating, ventilation, refrigeration parts, oil & gas industry, power sector, marine/water industry, chemical/fertiliser sector, steel & mining industry. The Plaintiff also claims to be a leading manufacturer of valves, hot water generator, expansion tank (for heating and chilled water systems), pan type humidifier, vacuum degasser, cooling tower filtration system, etc. C.O. (COMM.IPD-TM) 278/2023 & CS(COMM) 817/2023 Page 2 of 9 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 22/11/2023 at 23:47:38
11. In the present case, the dispute is in respect of the mark 'EMERALD'. According to the Plaintiff, the group was founded in the year 1967 by Mr. Joginder Singh Narula with the firm name EMERALD ENGINEERS and currently the partnership firm is using the mark 'EMERALD' since 1990. The word mark 'EMERALD' and the name 'Emerald Enterprises' with the 'EE' logo is stated to be registered and the details of the same are as under:
Sr. No. Trade mark Appln date Appln No. Class User date
1. EMERALD June 21, 1463196 11 January 1, 2006 1990 (word)
2. June 21, 1463195 11 January 1, 2006 1990
12. The Plaintiff claims to be having a large number of customers such as hotels, hospitals, educational institutes, mining, oil & gas, power industry, steel industry, chemical and fertilizer and marine industry. The Plaintiff also avers that it operates its business through the website under the domain name www.emeraldproducts.in which was registered on 2nd January, 2010. The Plaintiff's turnover under the name 'EMERALD' is stated to be to the tune of Rs.14 crores. The valves, which are sold, are having turnover of Rs.2.7 crores as per ld. Counsel for the Plaintiff.
13. The kind of valves, which are manufactured include butterfly valves, check valves, ball valves, water flow switches, automatic air vent valves, sluice valves, globe valves, air release valves, etc. According to the Plaintiff, therefore, the mark 'EMERALD' in respect of valves is an arbitrary adoption.
C.O. (COMM.IPD-TM) 278/2023 & CS(COMM) 817/2023 Page 3 of 9This 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 22/11/2023 at 23:47:38
14. The Defendant- Emerald Valves Pvt. Ltd. is a company incorporated on 24th June, 2022, engaged in the business of manufacturing and selling valve such as butterfly valve, globe valve, check valve etc. Mr. Hrishikesh Madhukar Borse and Mr. Nitin Babasaheb Bhoite are stated to be the directors of the Defendant company. The Defendant operates its business through the website with the domain name www.emeraldvalves.com.
15. The grievance of the Plaintiff in this case is that the Defendant had applied for the mark 'EMERALD' on 7th July, 2022 on a 'proposed to be used basis' and the said mark has been granted registration. The details of the registered trade mark has been set out below:
Trade mark Application Application Class & User date Status No. date Goods 5521504 July 7, 7 Proposed to Registered 2022 Manufactur be used er of Valves
16. A comparative table of the Plaintiff's and Defendant's mark along with their respective domain names have been set out below:
S.No. Plaintiff's Mark Defendant's Mark 01. 02. www.emeraldproducts.in www.emeraldvalves.com C.O. (COMM.IPD-TM) 278/2023 & CS(COMM) 817/2023 Page 4 of 9 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 22/11/2023 at 23:47:38
17. Ld. counsel for the Plaintiff submits that there is actual confusion being caused in the market as the Defendant has registered the domain name www.emeraldvalves.com. He relies upon the google search by name Emerald valves which reflects Plaintiff at the first entry and the Defendant at the second entry. The relevant extract has been set out below:
18. A perusal of the record would show that on the google search results on a search of the mark/name Emerald valves, the Plaintiff's business is the first result and the Defendant's business is the second result. The name is identical, the goods are identical and the class of customers is identical. The Plaintiff has a long prior user of the mark and name Emerald for valves and the Defendant's adoption is recent. The mark EMERALD is a completely arbitrary mark and the adoption is therefore not bonafide. After perusing the C.O. (COMM.IPD-TM) 278/2023 & CS(COMM) 817/2023 Page 5 of 9 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 22/11/2023 at 23:47:38 record, the Court is satisfied that this is a fit case for grant of ex-parte ad interim injunction owing to the long user of the Plaintiff.
19. In Laxmikant V. Patel v. Chetanbhai Shah & Ors., MANU/SC/0763/2001, the Supreme Court categorically observed that in cases where passing off is made out, the Court ought to grant an immediate ex-parte injunction and also appoint Local Commissioners to ensure that the infringing products are not permitted to be sold. The relevant extract of the order is set out below:
"14. [.....Once a case of passing off is made out the practice is generally to grant a prompt ex-parte injunction followed by appointment of local Commissioner, if necessary....]"
17. We are conscious of the law that this Court would not ordinarily interfere with the exercise of discretion in the matter of grant of temporary injunction by the High Court and the Trial Court and substitute its own discretion therefore except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the order of the Court under scrutiny ignores the settled principles of law regulating grant or refusal of interlocutory injunction. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion [(see Wander Ltd. v. Ant ox India P. Ltd.
MANU/SC/0595/1990 and N.R. Dongre v. Whirlpool C.O. (COMM.IPD-TM) 278/2023 & CS(COMM) 817/2023 Page 6 of 9 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 22/11/2023 at 23:47:38 Corporation and Anr.: MANU/SC/1223/1996 :
(1996)5SCC714 . However, the present one is a case falling within the well accepted exceptions. Neither the Trial Court nor the High Court have kept in view and applied their mind to the relevant settled principles of law governing the grant or refusal of interlocutory injunction in trade mark and trade name disputes. A refusal to grant an injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff as would not be capable of being undone at a latter stage. The discretion exercised by the Trial Court and the High Court against the plaintiff, is neither reasonable nor judicious. The grant of interlocutory injunction to the plaintiff could not have been refused, therefore, it becomes obligatory on the part of this Court to interfere."
20. In Midas Hygiene Vs. Sudhir Bhatia, (2004) 3 SCC 90, the Supreme Court observed that if a prima facie dishonest intention to pass off one's goods as those of appellant is proved and even if there is mere delay, then also interim injunction is ought to be granted. The relevant extract of the order is set out below:
"5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.
6. ....
7. In our view on the facts extracted by the learned Single Judge, this was a fit case where an interim injunction should have been granted and should have C.O. (COMM.IPD-TM) 278/2023 & CS(COMM) 817/2023 Page 7 of 9 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 22/11/2023 at 23:47:38 been continued. In our view the Division Bench was entirely wrong in vacating that injunction merely on the ground of delay and laches. Under the circumstances, the impugned order is set aside and that of the trial court is restored. It is clarified that all observations made by the High Court and by this Court are prima facie and shall not be taken into consideration at the time of the trial of the suit."
21. Thus, in terms of the judgment extracted above as also the decision in Midas Hygiene (supra) and Laxmikant Patel (supra) it is clear that in cases relating to trade mark violations and passing off, if the evidence establishes a prima facie case, even at the ex-parte stage, injunction ought to be granted.
22. Accordingly, the Plaintiff has made out a prima facie case for grant of interim injunction. Balance of convenience also lies in favour of the Plaintiff as Defendants are selling identical products i.e., valves under deceptively similar domain name and mark i.e., 'www.emeraldvalves.com' and 'EMERALD VALVES'. Irreparable loss will be caused if an injunction is not granted in the present case against the Defendant.
23. The fact that the Defendant has a registration, which is very recent, would not obviate grant of the injunction as it is a settled legal position now that the prior user of the mark is to be protected and the registration would not have a bearing. Considering that the Plaintiff group has been using the mark for more than 50 years and the Plaintiff itself has been using the name and mark 'EMERALD' since 1990, the Defendant is restrained from using the trademark and tradename 'EMERALD' for valves or any other similar goods or services. The Defendant is given a period of one month to bring down its website www.emeraldvalves.com and henceforth there shall be no fresh manufacturing or sale of the products bearing the mark 'EMERALD' C.O. (COMM.IPD-TM) 278/2023 & CS(COMM) 817/2023 Page 8 of 9 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 22/11/2023 at 23:47:39 by the Defendant.
24. Compliance of Order XXXIX Rule 3 CPC, 1908 be made within one week.
25. Reply to the application be filed within four weeks after service of paper book.
26. List before Court on 4th March, 2024.
C.O. (COMM.IPD-TM) 278/2023
27. Issue notice. Let a reply be filed within four weeks. Rejoinder thereto be filed within four weeks thereafter.
28. List before the Joint Registrar on 15th January, 2024.
29. List before Court on 4th March, 2024.
PRATHIBA M. SINGH, J.
NOVEMBER 21, 2023/dk/ks C.O. (COMM.IPD-TM) 278/2023 & CS(COMM) 817/2023 Page 9 of 9 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 22/11/2023 at 23:47:39