Delhi High Court - Orders
Tube Investments Of India Limited vs M/S Jagdamba Enterprises & Ors on 2 June, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~38
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS (COMM) 416/2022
TUBE INVESTMENTS OF INDIA LIMITED ..... Plaintiff
Through: Mr. J. Sai Deepak, Mr. Pranav
Krishna, Ms. Anuradha Mukherjee,
Ms. Pallavi, Ms. Pallavi Singh Rao,
Ms. Shree Sinha and Mr. Dwijesh
Kapila, Advocates. (M:9815605300)
versus
M/S JAGDAMBA ENTERPRISES & ORS. ..... Defendants
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 02.06.2022
1. This hearing has been done through hybrid mode.
I.A. 9426/2022 (for exemption)
2. This is an application seeking exemption from filing original documents and clear/copies of documents. Recording the Plaintiff's undertaking that the inspection of original documents shall be given, if demanded, and that the original documents shall be filed prior to the stage of admission/denial, the exemption is allowed.
3. I.A. 9426/2022 is disposed of.
I.A.9425/2022 (additional documents)
4. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act'). The Plaintiff, if it wishes to file additional documents at a later stage, shall CS (COMM) 416/2022 Page 1 of 11 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:08.08.2022 12:22:54 do so strictly as per the provisions of the Commercial Courts Act.
5. I.A.9425/2022 is disposed of.
CS (COMM) 416/2022
6. Let the plaint be registered as a suit.
7. Issue summons to the Defendants through all modes upon filing of Process Fee.
8. The summons to the Defendants shall indicate that a written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendants 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.
9. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement(s). Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendants, 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.
10. List before the Joint Registrar for marking of exhibits on 8 th August, 2022. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
11. List before Court on 10th October, 2022.
I.A.9423/2022 (u/O XXXIX Rules 1 & 2 CPC)
12. The Plaintiff- Tube Investments of India Limited, which is a part of the reputed Murugappa Group, has filed the present suit seeking protection of its trademark 'DIAMOND'. The Plaintiff seeks restraint orders and other orders to prevent the import, manufacture, sale, distribution of counterfeit CS (COMM) 416/2022 Page 2 of 11 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:08.08.2022 12:22:54 automotive, industrial chains, kits and other products bearing the Plaintiff's trademark 'DIAMOND'. The case of the Plaintiff is that the group itself has a turnover of more than Rs.40,000/- crores and it has its registered office at Chennai. The Plaintiff is one of the leading engineering companies which is engaged in the businesses of manufacturing automotive, industrial chains, car door frames and bicycles. The present case relates to the autoparts as also the industrial component business of the Plaintiff.
13. The Plaintiff adopted the mark 'DIAMOND' in 1942 in respect of a large variety of products including motorcycle chains, industrial chains, motorcycle chain kits, car door frame, automobile accessories, bicycle accessories, etc. The trademark 'DIAMOND', after being adopted in 1942 has been used extensively in the country and the products bearing the said mark are also exported to various other countries. Sales figures of the 'DIAMOND' branded products since 1980 have been pleaded in the plaint which shows that for the year 2020-21, the total sale was over Rs.880 crores. The marketing expenses for the same year are to the tune of Rs.3.71 crores.
14. The 'DIAMOND' word mark and logo as also the device marks are registered since 1968 in various classes including classes 6 and 12. It is the case of the Plaintiff that the goodwill of the said mark has been painstakingly built by it over decades. The Plaintiff is stated to have learned in May, 2022 through an investigating company engaged by it after receiving complaints from its customers about the sale of counterfeit 'DIAMOND CAM CHAINS' that a large volume of counterfeit products under the brand name 'DIAMOND' are being imported, manufactured, distributed and sold, especially in the autoparts market at Karol Bagh, Delhi.
15. It is submitted by Mr. Sai Deepak, ld. Counsel appearing for the CS (COMM) 416/2022 Page 3 of 11 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:08.08.2022 12:22:54 Plaintiff that the investigator's report reveals that the entire sale is being conducted in a clandestine manner. He further submits that one of the methods to ascertain the genuineness of the Plaintiff's products is to check the QR codes which, in genuine goods, upon being scanned, connect to the website of the Plaintiff. However, upon scanning the QR codes on the Defendants' products bearing the mark 'DIAMOND', they do not connect to the Plaintiff's website. The ld. Counsel submits that this unequivocally proves that the said products are counterfeit products. He further submits that in case of smaller products on which the QR codes are not used, there are various features, which are highlighted in the plaint as under, which would show that the products of the Defendants are counterfeit products:
S. No. Original Products Duplicate/Counterfeit Products
1. Use of light-coloured pouch Use of dark packing cover for packing. pouch; different DIAMOND logo.
2. Vehicles names used on the Vehicles names used on the product packaging include product packaging include Hero CD 100, Splendour Hero Cd100, Splender and and Velocity. Welocity i.e. with spelling errors CS (COMM) 416/2022 Page 4 of 11 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:08.08.2022 12:22:54
3. Use of chain model Chain model mentioned as B04H84R B01H84P
4. Typographical errors such as (a) incorrect spelling of 'KAZIPALLI'; (b) No comma after Dare House on the packaging.
5. Package mentions "WE Package mentions "WE CS (COMM) 416/2022 Page 5 of 11 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:08.08.2022 12:22:54 BUY BACK USED BUY BACK USED PACKING MATERIAL IN PACKING MATERIAL CLEAN IN CLEAN CONDITION CONDITION@RS10/KG" @RS1/KG"
6 Diamond logo, font and colour different from the Plaintiff's products.
7. No stamp is affixed on the 'Date stamp 'AJ' original chains mentioned on the sample counterfeit products indicates that the chains were manufactured in Ambattur in January 2004.CS (COMM) 416/2022 Page 6 of 11 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:08.08.2022 12:22:54
16. Ld. Counsel relies upon the investigator's report to argue that counterfeit products are so prevalent in the market that the investigator has identified only a few sellers and the exact origin of these products could not be ascertained. He, accordingly, submits that apart from the grant of an ex parte ad interim injunction against the sale of counterfeit products against both identified and unidentified Defendants, the Local Commissioners ought to be appointed to visit the premises of the identified Defendants. As and when the Local Commissioners acquire information of any other premises having counterfeit products, the Local Commissioner ought to be permitted to visit the said premises to verify the authenticity and genuinity of products which are sold by the Defendants.
17. The Court has perused the plaint and seen the documents. Some of the physical samples of both the genuine and counterfeit products have also been shown to the Court. A perusal of the same shows that the distinction CS (COMM) 416/2022 Page 7 of 11 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:08.08.2022 12:22:54 between the original and the counterfeit products is almost impossible to detect until and unless the same is examined in detail. The manufacture and sale of counterfeit products would not only impinge upon the Plaintiff's rights but also be of grave consequences to consumers who may use the same in automobiles. The Court is also convinced on the basis of the investigator's report that this is a fit case for grant of an ex-parte order of injunction not only against the identified Defendants but also against the unknown Defendants.
18. Accordingly, till the next date of hearing, the identified Defendant Nos.1 to 8 and any other Defendant who may be found in possession of the counterfeit products of the Plaintiff by the Local Commissioners, and anyone else acting for and on their behalf shall stand restrained from manufacturing, importing, marketing, selling, advertising, distributing any automotive or industrial products under the 'DIAMOND' trademark or any other mark or packaging, which is identical, imitative or deceptively similar to Plaintiff's 'DIAMOND' branded products and packaging. I.A. 9424/2022 (u/O XXVI Rule 9 CPC)
19. This is an application filed by the Plaintiff under Order XXVI Rule 9 CPC for the appointment of Local Commissioners. The Court has considered the merits of the Plaintiff's case and has granted an ex parte ad interim injunction in I.A. No.9423/2022 as recorded above, as also the investigator's report which shows that the Defendants have stocks of counterfeit products. Accordingly, the following Local Commissioners are appointed to visit the premises of the Defendants:
CS (COMM) 416/2022 Page 8 of 11 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:08.08.2022 12:22:54 S. No. Local Commissioner Address of the
Defendant
1 Mr. Amarjeet Singh, M/s. Jagdamba
Advocate. Enterprises
[M: 9911111950] Shop No.1480, Gali
No.24, Ground Floor,
Naiwala, Karol Bagh,
New Delhi-110005.
M/s Lord Krishna Auto
Mobiles
1550-55, Shop No.2,
Gali No. 29,
Naiwala, Karol Bagh,
New Delhi-110005
2 Ms. Jasleen Kaur, M/s Anil Automobiles
Advocate. 1649/33, Gali Naiwala,
[M: 9582471490] Karol Bagh, New
Delhi-110005
M/s R.N. Automobiles
1572-73/30, Naiwala,
Karol Bagh, New
Delhi-110005
3 Dheeraj P. Deo, M/s Singhla Brothers
Advocate. 1461/24, Naiwala,
[M: 8527848331] Karol Bagh, New
Delhi-110005
M/s Nandni International
1555/30, Naiwala,
Karol Bagh, New
Delhi-11 0005
4 Upamanyu Sharma, M/s Manish Motor
Advocate. Cycle
[M: 9810606407] 1509/27, Naiwala,
Karol Bagh, New
Delhi-110005
M/s Hindustan Engine
Care Group,
CS (COMM) 416/2022 Page 9 of 11
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:08.08.2022
12:22:54
2065/39, Naiwala,
Karol Bagh, New
Delhi-110005
5 Siddharth Singh, UNKNOWN
Advocate. Building No. 1367/21,
[M: 7836831441] Naiwala, Karol Bagh,
New Delhi-110005
20. The above-mentioned Local Commissioners are also permitted to visit any other premises, godowns, warehouses, shops, retail outlets, which may be storing counterfeit 'DIAMOND' branded products. Two representatives of the Plaintiff, including a lawyer, are permitted to accompany each Local Commissioner during the execution of the Commission. The Local Commissioners are directed to undertake the following acts:
1) Verification shall be done by the Local Commissioners in an illustrative manner of some products in the Defendant's premises. Upon finding counterfeit products in the premises of the Defendant, all the products in the said premises bearing the mark 'DIAMOND' shall be seized. Seizure shall also be made of the packaging material, cartons, labels, wrapping material, etc bearing the mark 'DIAMOND'. The same shall be kept in the custody of the Plaintiff on superdaari. The said material shall not be disposed of by the Plaintiff without the permission of the Court.
2) The Defendants shall give access to the computer which contains the accounts of the Defendants. If the computer has any password, the password shall also be given to the Local Commissioners.CS (COMM) 416/2022 Page 10 of 11 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:08.08.2022 12:22:54
3) The Local Commissioners may also procure samples of product packaging and take photographs or videography of the proceedings if it is deemed appropriate.
4) The SHO of PS Karol Bagh shall provide complete cooperation to the Local Commissioners in the execution of the Commission.
5) Compliance of Order XXXIX Rule 3 CPC in this case shall be carried out, as and when the Local Commissioners visit each of the Defendants' premises as also the unknown Defendants, by service of copy of the present order along with the full set of pleadings.
21. The Local Commissions shall be executed within two weeks.
22. The reports shall be filed within two weeks after the Commissions are executed.
23. At this stage, the fee of the Local Commissioners is fixed at Rs.1 lakh each. However, depending upon the work that may be undertaken during the execution of the Commissions and if additional premises are to be visited, the Court would consider whether to enhance the fee at a later stage.
24. List on 10th October, 2022.
25. Order, dasti.
26. The present order shall not be uploaded for a period of two weeks for enabling the execution of the Commissions.
PRATHIBA M. SINGH, J.
JUNE 2, 2022/dk/sk CS (COMM) 416/2022 Page 11 of 11 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:08.08.2022 12:22:54