Delhi District Court
M/S Mishu Enterprises Thr. Its ... vs M/S Nakshatra 13, Thr. Its Proprietor ... on 29 May, 2025
IN THE COURT OF SH. AJAY KUMAR JAIN:
DISTRICT JUDGE COMMERCIAL COURT 03 - SOUTH EAST
DISTRICT SAKET COURTS, NEW DELHI.
CS (COMM) 295/2022
M/S MISHU ENTERPRISES
Through its Proprietor Sh. Manish Sharma
A-15, L.S.C. Market
2nd Floor, Mahendra Park
Jahangir Puri, Delhi- 110033 ..... Plaintiff
VERSUS
M/S NAKSHATRA 13
Through its Proprietor Sh. Ravi Shankar
34, First Floor, Sant Nagar
East of Kailash, New Delhi-110065 .....Defendant
Date of Institution : 23.03.2022
Date when final arguments heard: 07.04.2025
Date of Judgment : 29.05.2025
JUDGMENT
1. Vide this judgment, I shall decide the suit for permanent injunction restraining infringement of trademark, passing off, unfair competition, rendition of accounts of profits and delivery up U/s 27 & 29 of the Trademarks Act r/w Section 20 CPC filed by the plaintiff against the defendant.
CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 1/ 41
2. Brief facts of the case are that the plaintiff is the proprietorship firm owns an exclusive website i.e. www.machhmani.com where in it imparts knowledge about his goods and prominently displays it is the registered mark "MACHHMANI/ MACCHMANI" (word/label). The plaintiff also uses the website as source of marketing and selling his goods under the well-known mark "MACCHMANI/ MACHHMANI" (word/ label). The plaintiff acquired distinctiveness with respect to the mark "MACHHMANI" by virtue of its long and extensive use. The plaintiff has created a channel on www.youtube.com to promote its products under the mark "MACCHMANI". The plaintiff also created and uploaded number of videos on its YouTube channel which provides extensive details of the product under the trademark "MACHHMANI". The plaintiff engaged in the business of gemstones, pearls, precious metals and imitation jewelery etc. The products of the plaintiff have earned recognition due to their quality and genuineness. The plaintiff sells his product in all over India through his website YouTube channel. The plaintiff in his business for long time and being known for his goods and services for the gem stones, sea stones coined a work "MACCHMANI/ MACHHMANI" in the year 2017. The plaintiff in order to sell its sea stones with distinct name adopted the mark "MACCHMANI/ MACHHMANI" (word/ label) and the mark in very short span of time acquired distinctiveness and consuming public associate with its mark. The plaintiff in order to promote his business to provide information CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 2/ 41 about his business and its registered mark "MACCHMANI/ MACHHMANI", the plaintiff registered his domain name www.machhmani.com dt. 05.04.2021. The plaintiff has been prominently promoting his business of sea stones under the mark "MACHHMANI" on the website.
3. The plaintiff most iconic and highly distinctive brand "MACCHMANI/ MACHHMANI" was first introduced by the plaintiff as sea stones in the year 2017 and since its inception it has become a favorite of consumers and is sold and distributed by the plaintiff throughout the nation. The plaintiff's sea stones under the "MACCHMANI/ MACHHMANI" was advertised on YouTube channel 'Graphics YouTube Channel' dt. 23.11.2017. The owner of the channel is customer of the plaintiff and authorized user of the mark "MACCHMANI/ MACHHMANI" and, therefore, started selling and promoting the sea stones under the mark "MACCHMANI/ MACHHMANI". The plaintiff's distinctive label constitutes an original artistic work within the meaning of Section 2(c) of Copyright Act and plaintiff is the owner of copyright in the said distinguishing features and elements of the "MACHHMANI" and has exclusive right to use or reproduce the features in any material form. The plaintiff is also the registered proprietor of the trademark "MACCHMANI and "MACCHMANI/ MACHHMANI" label/ logo under the Trademarks Act, 1999 and the details of the registrations are produced herein below :
CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 3/ 41 S. Trademark Regn No. Class Date of User Detail Status of NO. AppIn the Trademark
1. MACCHMANI 4920845 Class : 14 25.03.2021 23.11.2017 Registered (word) Goods :
Gem stones, pearls and precious metals and limitations thereof, Jewellery.
2. MACCHAMANI/ 4602570 Class : 14 08.08.2020 Proposed Registered MACHHMANI Goods : to be used (label) Gem stones, Pearls and Precious metals and imitations thereof, Jewellery The said registrations are valid and subsisting by virtue of Section 28 of the Trade Marks Act, 1999. Under Section 31 of the Act, the original registrations are prima facie evidence as to their validity.
Due to the superior quality and genuineness of the products bearing the trademark MACHHMANI, continuous and extensive use as well as sale of goods bearing the impugned trademark. The plaintiff has acquired immense reputation and goodwill and this can be observed CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 4/ 41 from the sales turn over which is growing steadily every year. The statement of sales of MACHHMANI since its inception is as under :
S. No. Financial Year Sales Figures (INR) 1. 2019-2020 18,750/- 2. 2020-2021 5,69,735/- 3. 2021-2022 8,50,000/- (approx)
The plaintiff has been advertising its product under the trade name MACHMANI/MACCHMANI on YouTube, in newspapers, internet and other promotional literature and also promotes and sells his products through website which operates in the name of the trademark MACHHMANI/MACCHAMANI.
4. The defendant is an astrologer trading under the name of M/s Nakshatra l3 and in an around March, 2021, the plaintiff was in utter shock to come across a video on YouTube wherein it was found that defendant was unauthorizedly selling the sea stones under the mark MACHMANI and on checking the details of video shocked to see that the video was posted on 08.10.2019 and defendant is continuously making YouTube videos to promote and sell his gem stones under the plaintiff's earlier well known trademark "MACHHMANI/MACCHMANI" and displaying the plaintiff's trademark only to deceive the public into believing that the products under the mark MACHHMANI was initiated by the defendant. The plaintiff sent a cease-and-desist letter dated 09.04.2021 to the CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 5/ 41 defendant calling upon to provide accounting of profits derived from the use of the plaintiff's trade mark through aforesaid videos and other platform and to remove and disable access to the videos of MACHHMANI as posted in the name of M/S Nakshatra 13 and also asked to pay the damages. In response to the legal notice, the defendant refused to comply with the requisitions of the notice. The plaintiff was shocked to find out that the defendant is also involved in selling gem stones and pearls to the customers through different mode which includes e-commerce websites such as Amazon and Flipkart. In the said response, the defendant's counsel also stated that the defendant is engaged in selling different kinds of pearls which includes the impugned marks Machmani/Matsya Mukta/ Meen Mukta/Mach Mani. The plaintiff again sent a letter dt. 07.06.2021, however the defendant vide letter dated 17.06.2021 again refused to comply with requisition. Thereafter the plaintiff also addressed legal notice dated 19.07.2021 and 21.09.2021 to which the plaintiff received similar responses vide defendant's letter dated 26.07.2021 and 30.09.2021. However, due to pandemic the copies of the letters could not be retained and therefore is not in the possession of the plaintiff.
5. On further investigation the plaintiff was shocked to find defendant owns and operates a website www.astroravishankar.in wherein the defendant unauthorizedly and malafidely selling his goods under the impugned mark MACCHAMANI/ MACHHMANI/ MACHHMANI. It was also found that the defendant also misuse the CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 6/ 41 said mark since October, 2019. The defendant through social media pages of Facebook, Instagram and YouTube promote and sell his goods. The plaintiff also purchased the gem stones sold by the defendant on e-commerce website www.flipkart.com on 25.09.2021. The defendant impugned use of mark MACHMANI is visually. Structurally as well as phonetically identical to the plaintiff's registered mark MACCHAMANI/ MACHHMANI, and hence, its use is likely to cause confusion and deception. Such use of the impugned mark MACHMANI by the defendant constitutes infringement of the plaintiff's well-known registered trademark MACHHMANI/ MACCHMANI. Any unauthorized use thereof of similar marks by any unauthorized trader would also inevitably lead to erosion of distinctiveness of the registered trade mark of the plaintiff which constitutes a violation of the plaintiff's statutory right of exclusive use and infringement of registered trademark MACHHMANI/ MACCHMANI under Section 29 of the Trade Marks Act, 1999. MACHMANI has been extensively and commercially used by the plaintiff in the course of trade since the year 2017, on account of which it has acquired formidable goodwill and reputation as a badge of quality products originating from the plaintiff. On account of prior and extensive use, sales, coupled with extreme quality control maintained by the plaintiff, the trade mark MACCHMANI/MACHHMANI has acquired substantial goodwill and reputation in the trade and amongst consumers at large. Thus, on CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 7/ 41 account of such extensive use plaintiffs trade mark MACCHMANI/MACHHMANI has come about to acquire distinctiveness as a symbol of trade origin and source of the plaintiff and thus entitled to be recognized as a well-known mark.
6. The use of the impugned mark MACCHMANI/ MACHHMANI by the defendant is malafide, constitutes acts of misrepresentation as well as misappropriation of goodwill and reputation built up by the plaintiff by their own effort and investment amounting to passing off of the defendant's goods for those of the plaintiff. It also amounts to unfair competition. The defendant is taking advantage of all financial and human resource invested by the plaintiff without incurring any costs himself. The defendant has no valid reason and justification for adopting or using the plaintiff's earlier well known registered trade mark for the impugned products. The defendant has purportedly adopted and is using the impugned mark only to defraud and deceive consumers, however, the defendant is not entitled and in fact can not be permitted an any cost to use the impugned mark MACHMANI/Machmani/Mach Mani or any other trade name/trade mark, which resembles the plaintiff's earlier and well known mark MACHHMANI/MACCHMANI as the defendant has neither connection with the plaintiff nor the plaintiff has authorized him to use the impugned mark. The act of the defendant will confuse the consuming public and the consumers will buy the defendant's product believing it to be the plaintiff's product. The use of the CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 8/ 41 plaintiff's well known registered mark MACCHMANI/ MACHHMANI or any similar/identical mark to that of plaintiff's mark for similar/ identical goods and services is devious, slanted and self-serving. Thus, the plaintiff filed the present suit with following reliefs :
A. The defendant, its partners, principals, officers, employees, agents, distributors, retailers, wholesalers, suppliers, affiliates, subsidiaries, franchisees, licensees, representatives, group companies and assigns be restrained by a permanent injunction from:
a) manufacturing or authorizing the manufacture, selling, offering for sale, advertising, distributing, exporting,promoting, displaying and/or using, in any manner whatsoever,directly or indirectly the impugned mark MACHMANI/MACH MANI/Machmaniand its variants or any other trade mark as may be deceptively similar to the plaintiff's registered trademark MACCHMANI/ MACHHMANI (word/label) as represented in the foregoing paragraph no. 12 in respect of any goods such as but not limited to Gemstones, Pearls, Precious Metals and imitation jewellery which would amount to infringement of registered trademark of the plaintiff;
b) manufacturing or authorizing the manufacture, selling, offering for sale, advertising, distributing, exporting, promoting, displaying and/or using, in any manner whatsoever, directly or indirectly the impugned mark MACHMANI/ MACHMANI/ Machmani and its variants or any other trade mark as may be deceptively similar to the plaintiff's registered trademark MACCHMANI/ MACHHMANI (word/label) as represented in the plaint in respect of any goods such as but not limited to Gemstones, Pearls, Precious Metals and imitation jewellery, thereby amounting to passing off of the defendant's goods for those of the plaintiffs;
B. The defendant, its partners, partners, officers, employees, agents, distributors, retailers, wholesalers, suppliers, affiliates, subsidiaries, franchisees, licensees, representatives, group companies and assigns be ordered by a decree of mandatory injunction directing that they at their own expense:
CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 9/ 41
a) Recall all the impugned products and/or any marketing, promotional and advertising materials including but not limited to the posts available on www.YouTube.com, www.amazon.in, www.flipkart.com, www.astroravishankar.com, www.facebook.com, www.twitter.com and www.instagram.com and/ any other website/medium that bear or incorporate the impugned labels/trade dress and impugned marks or any other label/trade dress or mark which is identical or deceptively and confusingly similar to the plaintiff's trade mark and/or label/trade dress, which has been manufactured and/or sold, distributed in the market, including on online retail.
b) Deliver to the plaintiff for destruction all the materials including all packaging, labels, pouches, cartons, brochures, business cards, business envelopes, letterheads, cartons, publicity material, pamphlets, hoardings, signboards, stationery etc. that bear or incorporate the impugned labels/trade dress and impugned marks or any other label/trade dress or mark which is identical or deceptively and confusingly similar to the plaintiff's trade mark and label/trade dress.
c) Disclose to the plaintiff any other trade mark and/or copyright applications or registrations for the impugned labels/trade dress or marks and/or any other label/trade dress or mark, which is identical or deceptively or confusingly similar to the plaintiff's trade mark and label/trade dress, and withdraw such applications and/or surrender such registrations under intimation to the plaintiff.
d) Make a full and fair disclosure to the plaintiff of the full details such as names and addresses of the party(s) involved in the manufacturing, marketing, distributing and selling the impugned products.
C. The defendant be called upon to allow inspection of their accounts to assist in ascertaining the amount of profits made by them and/or damages including exemplary and penal damages suffered by the plaintiff on account of the defendant's offending activities and a decree is passed in favor of the plaintiff and against the defendant for the amount found due.
CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 10/ 41 D. Cost of the suit be awarded to the plaintiff.
Written statement :
7. In written statement, it is stated that the certificate filed carrying a disclaimer that it is not for use in legal proceedings or for obtaining the registration abroad, therefore, this certificate cannot be used in legal proceedings. The plaintiff also not even placed on record the legal proceeding certificate alongwith the plaint. Furthermore, there is no mentioned in the body of the plaint that the legal proceeding certificate has been applied for nor any documents has been placed on record. (Relied upon Amrish Agarwal Vs. M/s Venus Home Appliances Pvt. Ltd.). The word "Macchmani" is widely used in Bengali and Sanskrit language where Maacch means fish and Mani means stone derived from head of the fish. The Macchmani is a natural product which was found inside the forehead of the fist which is called dome fish and only is a generic market name of the fish pearl found in a fish. The word Machhmani/ Machmani is synonym of an ancient word Matsya Mukta which cannot be trademarked by a person or any company because it is derived from Bengali and Sanskrit language. The plaintiff with malafide motive got trademark/ wordmark "MACCHMANI" registered in his name and this word which is a generic widely used by the plaintiff before the date of trademark registration. The copy of Garuda Puran where MATSYA MUKTA is mentioned is annexed as Annexure B. CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 11/ 41
8. The defendant is in the business of astrology, palmistry, selling of gem stones, pearls etc. and there are various sellers highlighting the product as Machhmani, Machmani. The defendant is selling the product since 2019 when the wordmark or trademark of the plaintiff was not even registered. The defendant has been using the natural products in its natural form and the plaintiff has been using the natural product in a defective manner. The defendant uploaded its first video on 08.10.2019 and the last video was uploaded on 26.03.2021 which is much prior to the registration of the wordmark of the plaintiff i.e. on 15.09.2021. The defendant did not use the logo of the plaintiff. The defendant also applied for cancellation of the trademark/ wordmark of the plaintiff because ancient word or a natural product cannot be trademarked.
9. In parawise reply, it is stated that the defendant is reputed proprietorship firm established in 2011. The plaintiff is misleading the court by the using two words MACHHMANI/ MACCHMANI and has not given a correct work of his trademark. The defendant never sold the gem/ fish stone under the trademark of the plaintiff. The defendant has been selling the gem/ fish stone/ Machmani/ fish pearl/ matsya mukta in its original form but the plaintiff is selling the same in its distorted form. It is denied that the plaintiff acquired distinctiveness with respect to the mark MACHHMANI by virtue of is long and extensive use. It is also denied that the plaintiff running the business for long time and being known for his goods and services for CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 12/ 41 the gem stones/ sea stones coined a word MACHHMANI/ MACCHMANI in the year 2017. It is stated that MACHHMANI/ MACCHMANI/ fish pearl is an ancient natural stone and plaintiff has sold the said natural stone. Due to competition in the market and plaintiff not selling the gem/ MACHHMANI/ MACCHMANI/ fish pearl/ matsya mukta gem in its original form and has filed the present suit because he is not selling the original product, therefore, restrained in the market. The plaintiff registered the domain name under Machhmani and trademark Machmani dt. 15.09.2021, however the defendant never used the domain name Machhmani and never uploaded any of his video after 15.09.2021.
10. It is also denied that plaintiff's trademark MACHHMANI/ MACCHMANI is a unique and coined trademark. The trademark has been registered without any due diligence and the word or a natural stone cannot be trademarked. It is also denied that the plaintiff trademark MACHHMANI/ MACCHMANI on Youtube, newspapers, internet and other promotional literature which have been extensively viewed and distributed to the public at large throughout the country. It is also stated that plaintiff sold the product not in original form i.e. white colour (fish pearl/ fist stone) which is found in the forehead of the fish which is called dome fish. The defendant never used trademark and domain name under MACHHMANI/ MACCHMANI and the last videouploaded on 26.03.2021. The said stone is being sold even before 2017 on website CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 13/ 41 www.occulttreasures.com. The plaintiff has acquired all trade because he is selling the original form of the fish pearl/ matsya mukta etc.
11. The defendant never used/ sold the fish pearl/ matsya mukta under the trademark of the plaintiff. The defendant uploaded all video before the registration of trademark of the plaintiff. There are other companies as well as people who were selling the products and available on different websites and portals. The defendant never used the impugned mark for promoting and advertising his products under the mark and defendant posted his Youtube videos uploaded before the registration of trademark. It is also denied that only defendant sell the gem stones on e-commerce website www.flipkart.com. There are various sellers selling the product as MACHHMANI/ MACCHMANI. It is also denied that the plaintiff till now has suffered huge loss due to the unauthorized illegal use of the plaintiff's mark. The impugned mark is not identical. It is also denied that the defendant started using the said mark to sell identical products and also amounts to infringement of the registered trademark, passing off, unfair trade practice, unfair competition and dilution. The defendant did not use any word mark and logo of the plaintiff in any manner, therefore, there is no question of any confusion and deception. The defendant product is not identical product and is different from the plaintiff in colour. There are various sellers who were selling the same product and defendant is selling the product since 2011 but is selling Meen mukta/ fish pearl since 2019, therefore, the defendant is not entitled to CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 14/ 41 use the plaintiff's earlier well known mark MACHHMANI/ MACCHMANI or any other mark which resembles the plaintiff's mark. The defendant never harmed the business of the plaintiff.
12. It is stated that the cause of action in the present suit stated to be arose in March, 2021 when the plaintiff came across the defendant's YouTube video uploaded on 08.10.2019, however, it is denied that the defendant is selling its product under impugned mark MACHHMANI. It is stated that the plaintiff suit be dismissed with exemplary cost.
Replication :
13. In replication, it is stated that Delhi High Court in case titled "M/s Maan Pharmaceuticals Ltd. Vs. M/s Mindwave Healthcare Pvt. Ltd." held that there is no requirement in the statute that a suit for infringement will not be entertained if not accompanied by a legal proceedings certificate. The plaintiff received legal proceedings certificate dt. 01.11.2022 from the trademark registry for the mark MACHHMANI (device) bearing registration no. 4602570 in class 14 and the mark MACCHMANI (word) 4920845 in class 14. The defendant has annexed a couple of screenshots showing different sellers selling their products and the plaintiff reserved its rights to implead such other parties. The plaintiff placed a copy from Garuda Puran where the work MACHHMANI/ MACCHMANI is not present at any of the pages. The plaintiff's trademark MACHHMANI/ MACCHMANI is unique and coined trademark is a famous and well CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 15/ 41 known brand for sea stones. The plaintiff's most iconic and highly distinctive brand MACHHMANI/ MACCHMANI was first introduced by the plaintiff as stone in the year 2017 and in order to sell its sea stone acquired distinctiveness. Since its inception MACHHMANI/ MACCHMANI has become a favourite of consumers and is sold and distributed by the plaintiff throughout the nation and is one of the best selling precious stone in India. The plaintiff's sea stones under the mark MACHHMANI/ MACCHMANI was advertised on YouTube Channel dt. 23.11.2017.
14. In parawise reply, it is stated that the avernments made by the defendant qua the mark Matsya Mukta is irrelevant and unnecessary for the adjudication to the present proceedings. It is also denied that the word 'Macchmani' is used in Bengali and Sanskrit language and also denied that 'Macchmani is a generic market name. It is also denied that the plaintiff registered the mark MACHHMANI/ MACCHMANI in his name with malafide motive or intentions. It is also denied that MACHHMANI/ MACCHMANI cannot be trademarked or patent or word marked. It is also denied that the defendant has been using the Macchmani in a natural form and plaintiff has been using it in a defective manner. It is also denied that the defendant did not use the word mark or the logo of the plaintiff. It is also denied that defendant did not use the logo of the plaintiff in his videos.
CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 16/ 41
15. It is also denied that the defendant has never sold the gem/ fish stone under the trademark of the plaintiff. It is also denied that the defendant has been selling the gem in its original form or the plaintiff is selling the gem in its distorted form. The defendant has adopted and has been using the impugned mark MACHHMANI/ MACCHMANI which is visually, phonetically, structurally and conceptually identical to the plaintiff's earlier well known trademark MACHHMANI/ MACCHMANI. It is also denied that the plaintiff never coined the word MACHHMANI/ MACCHMANI in the year 2017 and also denied that the plaintiff filed the present case fearing competition in the market. It is also denied that the trademark has been registered without due diligence. It is stated that defendant promotes and sells his goods under the impugned mark openly which are identical to the plaintiff's well-known mark MACHHMANI/ MACCHMANI. It is stated that the submissions of the defendant is repetitive in nature and denied in toto.
16. In affidavit of admission denial of documents of plaintiff filed by the defendant, the defendant denied all the documents except scanned copy of legal notice dt. 09.04.2021 and reply dt. 17.06.2021, scanned copy of reply of legal notice sent by the defendant to the plaintiff dt. 26.07.2021, scanned copy of legal notice sent by the plaintiff to the defendant dt. 21.09.2021 and its reply dt. 30.09.2021.
The plaintiff denied the documents filed by the defendant.
CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 17/ 41
17. On completion of pleadings, vide order dt. 01.06.2023, following issues were framed :
1. Whether the plaintiff is entitled for permanent injunction restraining the defendant/ its agents from infringing the plaintiff's trade mark MACHHMANI/ MACCHMANI and for passing off their goods as plaintiff's goods by using trademark MACHHMANI/ MACCHMANI, as prayed for? OPP
2. Whether the plaintiff is entitled for order against defendant regarding delivery/ recall of infringing goods using the trademark MACHHMANI/ MACCHMANI, as prayed for? OPP
3. Whether the plaintiff is entitled for rendition of account?
OPP
4. Whether the plaintiff could register his trademark under clause 14 because the defendant has already challenged the trade mark/ word mark before the concerned authority? OPD
5. Whether the defendant have used the trademark registered by the plaintiff in any of his videos? OPD
6. Whether the plaintiff could ever get the trademark registered in his name because the stone MACHHMANI/ MACCHMANI/ Fishpearl/ Matsayamukta/ Fishstone/ Meenmukta is a natural product which is extracted from the head of Domefish/ fish? OPD
7. Whether the plaintiff is selling the product to people in its natural form or in distorted form? OPD
8. Whether the plaintiff could file the present suit without obtaining the legal proceedings certificate as the footnote of the registered mark of the plaintiff itself has an embargo CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 18/ 41 that this certificate is not for use in legal proceeding or for obtaining registration abroad? OPD
9. Whether the product have been used or sold by other persons/ firms/ companies on their respective websites or not by the name MACHHMANI/ MACCHMANI/ Fishpearl/ Matsayamukta/ Fishstone/ Meenmukta? OPD
10. Relief The matter was referred to Local Commissioner for recording of evidence. The plaintiff examined PW1 Manish Sharma, Proprietor of plaintiff and PW2 Rohit, Clerk of plaintiff. The defendant examined DW1 Sh. Ravi Shankar Kapoor, Proprietor of defendant.
Brief summary of evidence
18. PW1 Manish Sharma tendered his affidavit of evidence Ex.PW1/A and in cross examination stated that he filed the present suit when he saw the video of defendant using the wordmark "Machhmani". He saw the video in 2021 but do not remember the month. He denied suggestion that nobody can use the spelling of same work. He stated that the said word mark was registered in Class 14. He further stated that he is using work Machhmani since 2014. The said stone Machhmani has been popularized by the plaintiff. He further stated that he brought the stones from Fish Market, Ghazipur, Delhi in 2013. The stone Machhmani is found in the body of the fish but he has no knowledge at which part of the body, it is found. The CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 19/ 41 natural colour is brown and denied suggestion that it is white. He stated that brown colour Machhmani again stated that it is golden colour also. He stated that it is possible that he had telephonic conversation or whatsapp conversation with the defendant asking him to buy Machhmani stone from him and sell it in the market. The defendant agreed and selling the same after buying it from him, however not filed any proof. He further stated that Machhmani stone comes under jewelery category. He stated that legal notice dt. 09.04.2021 sent by him to the defendant asking to remove the videos of the stone Machhmani from YouTube. The defendant was using the word mark Machhmani that is why he sent the legal notice dt. 09.04.2021. He denied suggestion that since the word mark Machhmani was not registered, therefore, anyone can use it. He further stated that his lawyer advised him that even the said mark is not registered, it can be used anybody else except the plaintiff. The date of registration of Machhmani is 25.03.2021 and he had applied for registration in the year 2019. The defendant did not use his trademark but used word 'mark' and never used logo in YouTube videos. He had seen the video for infringement of his registered word mark and trademark by public at large but he never read about it anywhere. He further stated that all the legal notices dt. 09.04.2021 and 21.09.2021 were sent by his counsel on his instructions. He denied suggestion that the defendant has never used word mark or trademark. He also denied suggestions that he could not have CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 20/ 41 registered his trademark under class 14 because the defendant has already challenged the trademark before the concerned authority.
19. PW2 Rohit has tendered his affidavit of evidence Ex.PW2/A and in cross examination stated that it is correct that printouts of all the documents alongwith my affidavit were taken by him and printouts were downloaded by him. He further stated that he do not aware about the contents of all the documents and also denied suggestion that he is deposing falsely.
20. DW1 Ravi Shankar Kapoor, Proprietor of defendant has tendered his affidavit of evidence Ex.DW1/A and in cross examination stated that he cannot show any document where the word Macchmani or any of its deceptively similar or phonetically similar sounding words are mentioned, however, Matsya Mukta was written in Hindi. He denied suggestions that he did not place on record any ancient text where the word Macchmani or any of its deceptively similar or phonetically similar sounding words are mentioned. It is correct that on 10.09.2021 he posted on his facebook page referring his product 'Meen Mukta' as Macchmani, however the spelling of Macchmani is entirely different from the plaintiff's trademark Macchmani. He stated that it is correct that he has been selling his product Meen Mukta, Macchmani since 2019 till grant of stay. He further denied suggestions that he had not applied for registration of word mark Macchmani till date. He stated that he was aware through legal notice dt. 21.09.2021 that the word mark Macchmani has been registered by the plaintiff. He CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 21/ 41 further stated that it is correct that even after the knowledge of plaintiff's registration, he continued to sell or advertise the products MACCHMANI/ MACHHMANI, however volunteered the word mark Macchmani he was using in different spelling i.e. grammatically and phonetically. He stated that he had not placed on record any expert report or ISO certification that the products sold by the plaintiff under the registered word mark is defective, inferior or adulterated. He further stated that it is correct that Ex.DW1/B (Colly) only the specified product of the plaintiff not an evidence that the plaintiff's product are defective, inferior or adulterated. He denied suggestion that he is raising false and frivolous objection that plaintiff's product is defective. He denied suggestions that he is using the word Macchmani or any of its deceptively, structurally, visually or phonetically similar names to sell his products to gain advantage of plaintiff's wordmark.
Material Exhibits :
21. Ex.PW1/1 (Colly)(running pg no. 149 to 157 of plaint) is the scanned copies of the invoices issued by the plaintiff; Ex.PW1/2 (OSR) is copy of CA certificate issued by Chartered Accounts; Ex.PW1/D.1 (pg. no. 186 to 190 of plaint) is the scanned copy of legal notice dt. 09.04.2021 sent by the plaintiff to the defendant; Ex.PW1/D.2 (pg. no. 191 to 195 of plaint) is the scanned copy of legal notice dt. 17.06.2021 sent by the defendant to the plaintiff; Ex.PW1/D.3 (pg. no. 196 to 201 of plaint) is the scanned copy of legal CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 22/ 41 notice dt. 26.07.2021 sent by the defendant to the plaintiff; Ex.PW1/D.4 (pg. no. 202 to 205 of plaint) is the scanned copy of legal notice dt. 21.09.2021 sent by the plaintiff to the defendant; Ex.PW1/D.5 (pg. no. 209 to 219 of plaint) is the scanned copy of legal notice dt. 30.09.2021 sent by the defendant to the plaintiff; Ex.PW1/D.6 is the printout of the order dt. 05.03.2022, Ex.PW1/10 is the original legal proceedings certificate dt. 01.11.2020; Ex.PW1/11 is the original legal proceedings certificates dt. 01.11.2020.
Mark A (pg no. 315, 316) is the copy of receipt dt.
25.09.2021 showing the defendant selling under the impugned mark obtained from www.flipkart.com Ex.PW2/1 is the trademark registration certificate dt. 08.08.2020 regarding the logo/ label CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 23/ 41 in class 14; Ex.PW2/2 is the trademark registration certificate dt. 25.03.2021 regarding the word mark "MACCHMANI"; Ex.PW2/3 is the printout of the plaintiff's website www.machhmani.com; Ex.PW2/4 is the printout of the plaintiff's website; Ex.PW2/5 is the flipkart receipt/ invoice dt. 26.09.2021 showing the sale of stone 'Macchmani'; Ex.PW2/6 is the printout of web archive www.weybagmachine.org; Ex.PW2/7 is the web page taken from YouTube channel; Ex.PW2/8 is the printout of the web page of plaintiff's YouTube channel; Ex.PW2/9 is the printout obtained from the third party website; Ex.PW2/10 is the copy of Form TMA, application for registration of trademark 'Macchmani' dt. 25.03.2021; Ex.PW2/11 is the webpages of defendant's website i.e. https//www.astroravishankar.com/ machmani also known as Meen mukta, fish pearl; Ex.PW2/12 is the printout of the snapshot of the plaintiff's website; Ex.PW2/13 is the affidavit U/o 11 Rule 6(3) of Commercial Courts Act over the electronic printouts.
Mark A is the trademark certificate dt. 24.02.2021 of the plaintiff's logo "MACHHMANI"; Ex.DW1/A is the copy of Garud Puran showing Matsya Mukta; Ex.DW1/B is the copy of printout showing natural "MACHHMANI" (pg. no. 38 to 41) and at page 41 is the copy of invoice of the plaintiff with logo "MACHHMANI" alongwith the pen drive; Mark B is the copy of different websites where the product of the plaintiff is found sold; Ex.DW1/C is the certificate U/s 65B of Indian Evidence Act.
CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 24/ 41 Submissions of counsels
22. Ld. Counsel for plaintiff submitted that the plaintiff coined the "MACCHMANI/ MACHHMANI" in the year 2017 and also registered the trademark Macchmani word and "MACCHMANI/ MACHHMANI" label or logo in class 14. The plaintiff sent cease and desist letter dt. 09.10.2021 to the defendant, however inadvertently the suit for permanent injunction and damages filed before Ld. Civil Judge which was withdrawn with liberty to file afresh, thereafter the present suit filed. The plaintiff is prior user and his sea stones under the mark "MACCHMANI/ MACHHMANI" were advertised on YouTube channel graphics YouTube dt. 23.11.2017. The owner of the channel is customer of the plaintiff and authorized user of the mark "MACCHMANI/ MACHHMANI" word/ laber and, therefore, acquired distinctiveness in a short span. The defendant in cross examination stated that he has been using the word "MACHMANI" to describe its products and has continued to do so even after having the notice of registration trademark. Section 2(h) of Trademark Act defines deceptively similar term. The word mark "MACHMANI"MACHMANI" is deceptively similar, hence, likely to cause confusion. The defendant will confuse the public and the consumers will buy the defendant's product believing it to be the plaintiff's product. Vide order dt. 22.07.2022, while allowing the application U/o 39 Rule 1 & 2 CPC already pointed out that the marks used by the defendant "MACHMANI"MACHMANI" are almost CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 25/ 41 identical. The defendant clearly admitted to selling the product Meen Mukta as Machmani or MACH MANI or MACHMANI which is deceptively similar to the plaintiff's trademark. DW1 also admitted that even after the knowledge of the registration of word mark "MACCHMANI", they continued to sell or advertise their product under the word Machmani till the stay is granted by the Ld. Predecessor vide order dt. 22.07.2022. The defendant alleged that plaintiff is selling the identical form of product, however not proved through any expert evidence. The defendant relied upon some video which even otherwise nowhere specify that the stone obtained from the fish is called MACCHMANI. The defendant not able to prove any other prior user of the word mark "MACHMANI" and if any other third party is using then the third party is also liable . Ld. Counsel submitted that the plaintiff's suit is entitled to be decreed. (Relied upon Maan Pharmaceuticals Ltd. Vs. Mindwave Healthcare Pvt. Ltd., 2022 SCC Online Del 2866; Max Healthcare Institute Ltd. Vs. Sahrudya Health Care Pvt. Ltd., in CS(Comm) 866/2016 dt. 04.07.2019 DHC; Keshav Kumar Aggarwal Vs. NIIT Ltd., 2013(135) DRJ 668; Pepsico Inc. and Another Vs. Jagpin Breweries Limited and Anr, 2023 SCC Online Del 2542; FDC Limited Vs. Docsuggest Healthcare Services Pvt. Ltd. & Anr.; 2017 SCC Online Del 6381 and Nakshatra 13 Vs. Mishu Enterprises, in CM(M)-IPD 07/2023 dt. 29.05.2023.
CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 26/ 41
23. Ld. counsel for defendant submitted that the plaintiff even could not tell in the cross examination the spelling of word mark and the defendant never used "MACHMANI" in any of his video. The plaintiff got word mark registered in class 14, however could not use this word mark under class 14 against which the defendant has filed the cancellation of word mark of the plaintiff which is pending adjudication before concerned authority. The plaintiff stated that he started selling fish stone in 2013 but no proof has been filed. The plaintiff has been selling the fish stone in a distorted form and not in original form. The suit is counter blast as the defendant is not purchasing the product from the plaintiff. Legal notice dt. 09.04.2021 was against the usage of trademark and not word mark. The plaintiff in cross examination dt. 30.10.2021 categorically stated that the defendant did not infringe the plaintiff's trademark, however, did not withdraw the legal notice dt. 09.04.2021 but filed the present suit. The plaintiff in cross examination stated that he has not placed any document which shows that other people are selling the fish stone under his instructions. The plaintiff also admitted in cross examination that there is difference in spelling of "MACHMANI". Ld. Counsel submitted that the present suit is liable to be dismissed.
24. Both the counsels also filed written submissions.
25. Arguments heard. Record perused.
26. My issue wise findings are as under :
CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 27/ 41 Issue No. 1. : Whether the plaintiff is entitled for permanent injunction restraining the defendant/ its agents from infringing the plaintiff's trade mark MACHHMANI/ MACCHMANI and for passing off their goods as plaintiff's goods by using trademark MACHHMANI/ MACCHMANI, as prayed for? OPP Issue No. 4. : Whether the plaintiff could register his trademark under clause 14 because the defendant has already challenged the trade mark/ word mark before the concerned authority? OPD Issue No. 5. : Whether the defendant have used the trademark registered by the plaintiff in any of his videos? OPD Issue No. 6. :Whether the plaintiff could ever get the trademark registered in his name because the stone MACHHMANI/ MACCHMANI/ Fishpearl/ Matsayamukta/ Fishstone/ Meenmukta is a natural product which is extracted from the head of Domefish/ fish? OPD Plaintiff had a legal right to institute a suit for injunction to restrain defendant from manufacturing, storing and selling the counterfeit products bearing its trademark. Section 28 of the Trademarks Act, 1999 (hereinafter referred to as 'the Act') clarifies that the valid registration of a trademark shall confer on the registered owner of the trademark exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. The Section further empowers the owner of the trademark to obtain relief in respect of infringement of trademark in the manner provided under the Act. Section 134 of the Act provides the remedy of CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 28/ 41 filing a suit for infringement of a trademark while Section 125 of the Act describes the relief which may be granted in a suit for infringement or passing off the trademark. Section 28 in The Trade Marks Act, 1999
28. Rights conferred by registration.--
(1)Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2)The exclusive right to the use of a trade mark given under sub-
section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3)Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
27. Section 29 defines the meaning of infringement of a registered trademark. It provides that a registered trademark is infringed by a person, who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with or deceptively similar to, the trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 29/ 41 to be taken as being used as a trademark. Sub-Section (2) of Section 29 of the Act further clarifies that a trademark is infringed by using a mark which is identical or similar with the registered trademark to an extent that it is likely to cause confusion on the part of public that it has an association with the registered trademark. Sub-Section (3) of Section 29 of the Act provides a presumption in respect of a marks that is likely to create confusion on the part of the public on account of its identity with the registered trademark and the identity of goods or services covered by such registered trademark.
29. Infringement of registered trade marks.--
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of--
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have anassociation with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 30/ 41 (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which:
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 31/ 41 (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
28. The case of the plaintiff is that he is in the business of goods and services of gems, stones/ sea stones since long and coined the term "MACHHMANI/ MACHMANI" in the year 2017. The plaintiff also stated that it is one of the best selling precious stone in India and was advertised on YouTube channel Graphics dt. 23.11.2017 and registered the word mark and the logo on 24.02.2021 and 15.09.2021. However in the month of March, 2021 came to know through YouTube video that defendant was unauthorizedly selling the stone under the mark and label "MACHHMANI" and the said video was posted in October, 2019. Thereafter plaintiff sent a legal notice dt. 09.04.2021, thereafter the plaintiff received the letter dt. 13.04.2021 whereby the defendant refused to comply the legal notice and stated to have been involved in selling the gemstones through Amazon.com and Flipkart.com using impugned marks i.e. "MACHHMANI", Matsya Mukta etc. Thereafter the reminder letter dt. 07.06.2021 was sent which was replied through letter dt. 17.06.2021, thereafter the legal notice dt. 19.07.2021 and 21.09.2021 were sent and he was receiving the said response. The plaintiff found to be unauthorizedly selling the impugned goods "MACHHMANI" through website CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 32/ 41 www.astroravishankar.com and thereafter on search, it is found that the defendant is using the said mark and logo since 2019. The plaintiff purchased the gemstones and sold by the plaintiff on e-commerce website on September 25, 2021 with impugned mark "MACHHMANI" thereby infringing the trademark and also passing off.
29. The defendant raised the plea that he is engaged in the business of astrology, palmistry, selling gemstones, pearls etc. since 2011 and further the plaintiff is misleading the court by using two words "MACHHMANI/ MACHMANI", however the said word is a natural stone comes out of the fish and the defendant used to sell different kinds of pearls which also includes Matsya Mukta, Meen Mukta/"MACHHMANI". There is no distinction with respect to the mark "MACHHMANI". The said "MACHHMANI" is an ancient/ natural stone and plaintiff cannot have the sole ownership on the natural stone. The defendant never used the domain name under "MACHHMANI" or uploaded the video after 15.09.2021.
30. The certificate of registration of the logo/ label CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 33/ 41 was issued on 24.02.2021 in class 14 and registration of word mark "MACCHMANI" on 15.09.2021 is not disputed. The defendant in the written statement has admitted to have been using the said word mark/ label, however he is selling the natural pearls including Matsya Mukta, Meen Mukta and "MACHHMANI". He also stated that he has not posted any video over "MACHHMANI" after 15.09.2021. The defendant in written statement has admitted to have been using the word mark/ label "MACHHMANI" before 15.09.2021. However, it is clear from the receipt dt. 25.09.2021(Mark A/ Ex.PW2/5) that the defendant is selling the said stone in the name of "MACHHMANI" on 26.09.2021 i.e after the registration of both word mark and label "MACCHMANI/MACHHMANI".
31. DW1 in cross examination also stated that it is correct that on 10.09.2021, he posted on his facebook page referring his product Meen Mukta as Machmani, however the spelling of Machmani is different from the plaintiff's word mark Macchmani, but also stated that he is selling his product "Meen Mukta" as "Mach Mani" or "MACH MANI" or "MACHMANI". He also stated that he has not applied the registration of word mark "Mach Mani" or "MACH MANI" or "MACHMANI". He also admitted that after legal notice dt. 21.09.2021, he became aware that the plaintiff's word mark "MACHMANI" has been registered by the plaintiff. He also admitted CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 34/ 41 in cross examination that even after the knowledge of the plaintiff's registration of word mark, he continued to use the words "Mach Mani" or "MACH MANI" or "MACHMANI" till the stay is granted by this court.
32. The defendant duly admitted to have been using the word mark/ label "MACHMANI" till the stay is granted by this court. The logo was registered on 24.02.2021 and the word mark on 15.09.2021 and the defendant is found to be using the mark "Mach Mani" or "MACH MANI" or "MACHMANI" till the grant of stay on 22.07.2022.
33. The defendant is found to be using the deceptively similar trademark with different spelling "Mach Mani" or "MACHMANI" or "MACHMANI" as admitted in cross examination. There is phonetic and visual similarity in selling the product. The plea of the defendant that there is spelling mistake in the registered mark "MACCHMANI" and the word the plaintiff is using "MACHMANI", however no benefit could be given to the defendant for the wrong spelling if any, particularly when the deceptive similarity exists on the face of the words and the picture used by the defendant. The mere filing of the application for cancellation of registered trademark do not entitle the defendant to use the registered trademark of the plaintiff. The defendant is found to be using the registered trademark even after the registration till the grant of stay by this court on 22.07.2022 by the Ld. Predecessor.
CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 35/ 41
34. The defendant also acknowledged the factum of using this trademark in reply to the legal notices sent by the plaintiff. The plaintiff in its legal notice dt. 09.04.2021 (Ex.PW1/D.1) stated to be registered trademark user of "MACHHMANI" (word and logo) and the defendant is using the said name "MACHHMANI" for sale, soliciting, advertising, exhibiting etc. in forged and deceitful manner on online in India. In the month of March, defendant posted videos on website in using showing the plaintiff's trademark and also found to be offering the products "MACHHMANI" on the website Amazon.in thereby using the name "MACHHMANI" by forging the logo of the plaintiff with intend to cause wrongful loss and wrongful gains for himself and requested to provide the accounts in profit and to remove and disable the said videos from the YouTube. The defendant in reply dt. 17.06.2021 (Ex.PW1/D.2) stated that the product "MACHHMANI" is fish pearl which can be called by names including "MACHHMANI", Matsya Mukta, Meen Mukta/ MACHHMANI and there are various sellers highlighting the products with such names. The logo has been registered by the plaintiff on 24.02.2021, however no word mark has been registered whereas his client is selling the products since 2011. The plaintiff willfully and deliberately adopted the registration logo vide certificate dt. 24.02.2021 causing wrongful gains to the defendant, however the defendant has not used the logo of the plaintiff in his video/ picture and requested for unconditional withdrawal of the notice. In reply dt.
CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 36/ 41 26.07.2021 to the legal notice dt. 19.04.2021 (Ex.PW1/D.3) raised the same plea that the logo has been registered on 24.02.2021 but no word mark has been registered and furthermore, selling the products since 2011. He also stated that he has not posted any video in the first week of July and further denied to use the impugned name "MACHHMANI" in violation of intellectual property right, therefore, again requested for unconditional withdrawal of the notice. The defendant stated in reply to legal notice that he is using the same since 2011 but unable to prove through cogent evidence.
35. The plaintiff vide legal notice dt. 21.09.2021 (Ex.PW1/D.4) again stated that the logo of "MACHHMANI" was registered on 24.02.2021 and the word mark on 15.09.2021, however the defendant is posting the videos on YouTube showing the plaintiff's trademark or word mark or logo, therefore, again sought accounting of profits and remove and disable the access to the videos. In reply dt. 30.09.2021 (Ex.PW1/D.5), the defendant stated that it sells gemstones, pearls to the customer at different location through different modes which includes e-commerce. The information regarding the business could be accessed to website Amazon and Flipkart and the defendant used to sell the pearls which includes "MACHHMANI", Matsya Mukta, Meen Mukta/ "MACHHMANI". It is reiterated that the word mark was registered on 15.09.2021 which is different from the trademark logo "MACHHMANI" and the "MACHHMANI" used by the defendant since 2011 and it will not CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 37/ 41 confuse any public. The YouTube video is also not available, therefore, again requested to withdraw the legal notice.
36. The defendant raised the plea that he is the prior user of this word mark 'MACHMANI" and furthermore, it is a generic word which cannot be registered, however, the defendant is unable to prove this plea that it is a generic word. The defendant also relied upon the text of Garud Puran, however the said text (Ex.DW1/A, Mark A-1 to B-1...Matsya Uttpan Mukta, A-2 to B-2...Pryay...Hathi Matsya.....) do not in any manner suggests that this word could be the generic word. The defence of the defendant is that the other persons also using the said mark do not in any way allowed the defendant to infringe the registered trademark of the plaintiff. The defendant also not able to prove that he is selling the natural version and plaintiff is selling defective/ distorted version. The defendant in cross examination gave the suggestion that he has not used the trademark of the plaintiff, however it is the own case of the defendant that he has used the trademark till the stay is granted by the court.
37. On overall appreciation of evidence on record, it is clear that the defendant is using the deceptively similar mark/ label of the plaintiff even after the registration and prior to that. The defendant unable to prove that he is prior user of the said mark. The defendant reliance on ancient text i.e. Garud Puran to substantiate its case is unfounded. The plaintiff able to prove that the defendant is infringing CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 38/ 41 the duly registered trademark of the plaintiff. Accordingly, the issue no. 1 is decided in favour of plaintiff and against the defendant.
38. As far as issue nos. 4, 5 & 6 are concerned, there is nothing controverted by the defendant in the evidence that the plaintiff cannot get registered the trademark under class 14. Mere pendency of cancellation application for registration do not take away the right of the plaintiff to protect the duly registered trademark. Issue nos. 4 , 5 & 6 are accordingly decided in favour of the plaintiff and against the defendant.
Issue No. 2 : Whether the plaintiff is entitled for order against defendant regarding delivery/ recall of infringing goods using the trademark MACHHMANI/ MACCHMANI, as prayed for? OPP Issue no. 3 : Whether the plaintiff is entitled for rendition of account? OPP
39. On the aspect whether the plaintiff is entitled for decree of rendition of account. There is no evidence to indicate the quantum of profit made by the defendant by selling the infringe trademark article. The plaintiff during evidence do not press for any recalling of infringed goods. Accordingly, issue nos. 2 & 3 are decided against the plaintiff and in favour of the defendant.
Issue No. 7 : Whether the plaintiff is selling the product to people in its natural form or in distorted form? OPD CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 39/ 41
40. As discussed, the defendant unable to prove that the plaintiff is selling the product in distorted form. Accordingly, this issue is decided against the defendant and in favour of the plaintiff.
Issue no. 8 : Whether the plaintiff could file the present suit without obtaining the legal proceedings certificate as the footnote of the registered mark of the plaintiff itself has an embargo that this certificate is not for use in legal proceeding or for obtaining registration abroad? OPD
41. The plaintiff has filed the legal proceeding certificate (Ex.PW1/11) during the present proceedings. Delhi High Court in case titled M/s Maan Pharmaceuticals Ltd. Vs. M/s Mindwave Healthcare Pvt. Ltd. (Supra) held that mere non-filing of legal proceeding certificate does not disentitle party to file the suit seeking injunction in apprehension of the trademark. Furthermore, it is also held that filing of the rectification petition do not take away the right of registered proprietor to injunct the infringement of trademark. Accordingly, this issue is decided in favour of plaintiff and against the defendant.
Issue No. 9 : Whether the product have been used or sold by other persons/ firms/ companies on their respective websites or not by the name MACHHMANI/ MACCHMANI/ Fishpearl/ Matsayamukta/ Fishstone/ Meenmukta? OPD
42. There is no bar to injunct the defendant of infringing the trademark even if certain other websites/ firms/ companies are also infringing the trademark. Furthermore, the defendant not able to prove CS (COMM) 295/2022 M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 40/ 41 through cogent evidence that the other firms/ companies are also infringing the trademark of the plaintiff. Accordingly, issue no. 9 is decided against the defendant and in favour of the plaintiff. RELIEF
43. In view of the above discussions, the present suit stands decreed in favour of the plaintiff and against the defendant with following reliefs :
(i) A decree of permanent injunction against the defendant whereby he is restrained for manufacturing, storing and selling the products bearing the trademark/ logo of the plaintiff.
(ii) Cost of the suit be also awarded.
Decree sheet be drawn accordingly.
File be consigned to Record Room after due compliance.Digitally signed
AJAY by AJAY KUMAR JAIN KUMAR Date:
Announced in the open court JAIN 2025.05.29
16:23:10 +0530
on 29th May, 2025 (Ajay Kumar Jain)
District Judge, Comm-03
South-East, Saket Courts, Delhi
CS (COMM) 295/2022
M/S Mishu Enterprises Vs. M/S Nakshatra 13 dt. 29.05.2025 41/ 41