Delhi High Court - Orders
Gs1 India vs M/S S.R.S. Docs & Certification on 22 July, 2024
$~30
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 589/2024
GS1 INDIA .....Plaintiff
Through: Mr. Aditya Gupta, Ms. Aishwarya
Kane, Mr. Sauhad Alung, Advocates
Versus
M/S S.R.S. DOCS & CERTIFICATION .....Defendant
Through: None
CORAM:
HON'BLE MR. JUSTICE SAURABH BANERJEE
ORDER
% 22.07.2024 I.A. 33688/2024 (Exp from pre-institution mediation)
1. Vide the present application the plaintiff is seeking exemption from instituting pre-litigation mediation.
2. Considering the averments made in the present application wherein the plaintiff seeks urgent ad-interim relief and in view of Yamini Manohar vs. T.K.D. Krithi 2023 SCC OnLine 1382 and Chandra Kishore Chaurasia vs. R. A. Perfumery Works Private Limited. 2022:DHC:4454-DB, the plaintiff is exempted from instituting pre-litigation mediation.
3. Accordingly, the present application is allowed and disposed of. I.A. 33687/2024 (Exp)
4. Exemption allowed, subject to all just exceptions.
5. The application stands disposed of.
I.A. 33686/2024 (Addl. Doc)
6. Vide the present application the plaintiff is seeking to place on CS(COMM) 589/2024 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 25/07/2024 at 01:23:44 record additional documents.
7. The plaintiff will be at liberty to file additional documents at a later stage, albeit, strictly as per the provisions of the Commercial Courts Act, 2015 and the DHC (Original Side) Rules, 2018.
8. Accordingly, the present application is disposed of. CS(COMM) 589/2024
9. The plaintiff has instituted the present suit for infringement of trademark, passing off, tarnishment, delivery up, damages and rendition of accounts.
10. Let the plaint be registered as a suit.
11. Upon filing of the process fee, issue summons of the suit to the defendant through all permissible modes returnable before the Joint Registrar on 11.09.2024.
12. The summons shall state that the written statement be filed by the defendant within a period of thirty days from the date of the receipt of the summons. Written statement be filed by the defendant along with affidavit(s) of admission/ denial of documents of the plaintiff, without which the written statement shall not be taken on record.
13. Replication thereto, if any, be filed by the plaintiff within a period of fifteen days from the date of receipt of written statement. The said replication, if any, shall be accompanied by with affidavit(s) of admission/ denial of documents filed by the defendant, without which the replication shall not be taken on record within the aforesaid period of fifteen days.
14. If any of the parties wish to seek inspection of any document(s), the same shall be sought and given within the requisite timelines.
15. List before the Joint Registrar for marking exhibits of documents on CS(COMM) 589/2024 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 25/07/2024 at 01:23:44 11.09.2024. It is made clear that if any party unjustifiably denies any document(s), then it would be liable to be burdened with costs.
16. List before the Court on 21.10.2024.
I.A. 33685/2024 (Order XXXIX R-1&2 CPC for interim injunction)
17. The plaintiff by way of the present application seeks to restrain the defendant, and all those acting for or on its behalf, from using, selling, offering for sale, issuing or allocating 13-digit barcode numbers starting with '890' or any deceptively similar marks in any manner for goods and services leading to confusion as to its origin or association or mistaken impression as to certification regarding compliance with GSl standards (GSl General Specification), or in any other manner whatsoever.
18. The plaintiff is a not-for-profit society registered under the Societies Registration Act, 1860 and was set up on 7th June, 1996 by several industry bodies and statutory bodies like the Ministry of Commerce and Industry, Government of India, Federation of Indian Exports Organizations (FIEO), Agricultural and Processed Food Products Export Development Authority (APEDA) Spices Board, Indian Institute of Packaging (IIP), Bureau of Indian Standards (BIS) and leading Apex chambers Confederation of Indian Industry (CII), Federation of Indian Chambers of Commerce & Industry (FICCI), Associated Chambers of Commerce and Industry of India (ASSOCHAM) and IMC Chamber of Commerce and Industry (IMC).
19. The plaintiff is affiliated to and has been granted an exclusive license by GS1 AISBL an organization which was set up by various countries coming together to maintain global standards as also database of the barcodes issued in compliance of the standard set up by GS1, the global CS(COMM) 589/2024 Page 3 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 25/07/2024 at 01:23:45 body. Furthermore, GS1 AISBL operates a network of 116 member organizations worldwide, having its headquarters at Brussels, Belgium, for allocating GS1 company prefix numbers starting with '890'.
20. The plaintiff is a Company which is the only licensed body in India which has been allocated the code '890' by GS1 AISBL. The plaintiff has a registration of the said barcode with the '890' prefix in its favour bearing No.1293152 in Class-35, granted on 9th March, 2009 with effect from 29th June, 2004. The aforementioned trademark has received certification under Class 35 for the following services "BUSINESS METHOD OF BAR CODING PRODUCTS AND ITEMS TO INDICATE ORIGIN, SOURCE, MANUFACTURER AND CATEGORY OF THE ITEM BEARING THE BAR CODE":
21. These '890' barcodes are further licensed for use to various entities in India by the plaintiff along with a Global Company Prefix ("GCP") number which can range from 7 to 10 digits depending on the numbers of SKUs on which barcodes have to be applied. The entity which has been allotted the said unique numbers, then generates a 13-digit product code (known as Global Trade Item Number or "GTIN") for its specific SKU. This 13-digit GTIN would necessarily have '890' as first three digits of the CS(COMM) 589/2024 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 25/07/2024 at 01:23:45 number, followed by the GCP which could be from 7 to 10 digits, followed by a specific number which is allocated by the allottee.
22. This results in a unique 13-digit number being allocated to a particular product aids the manufacturers, suppliers who want their products to be certified with a barcode so as to ascertain details such as the country of origin as also the manufacturing, supplying units of the product, etc.
23. Once this number is allocated, the details of the relevant company are entered into a database, which is maintained by the plaintiff and integrated with the global trade practice. This helps entities all over the world to identify the origin of a specific product by the GTIN and verification can be made by any person through a publicly available database which is accessible and maintained by GS1 thereby, ensuring uniformity and facilitating unique and universal numerical identifiers for, inter alia, their products (including product packaging, labels, cartons, consignments and pallets etc.)
24. As per the learned counsel for plaintiff, this process of unique allocation and verification helps industrial regulatory bodies to adopt global best practices related to counterfeit detection, product authentication, stock management, wastage control. The diagrammatic representation of such barcodes is as under:
CS(COMM) 589/2024 Page 5 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 25/07/2024 at 01:23:45
25. Further, as per learned counsel for the plaintiff, the defendant, which is a proprietorship firm, provides 'consultancy services and regulatory assistance', which includes, inter alia IE Code registration, MSME registration, barcode registration, digital signature registration, trademark CS(COMM) 589/2024 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 25/07/2024 at 01:23:46 registration, FSSAI registration etc. Furthermore, the plaintiff alleges that the defendant has been involved in the illegal and unauthorised allotment of 13-digit barcodes starting with 890, for which it does not possess any authorization and/or license from the plaintiff to provide, allocate, sell or resell the abovesaid barcodes.
26. The plaintiff became aware of the defendant's infringement in May, 2023 after one of its representatives received a sales call from the defendant seeking requirements of 13 digit barcodes starting with '890'.
27. As per the learned counsel for plaintiff, the unauthorised actions of the defendant in allotting of 13-digit barcodes starting with '890', for which it does not possess any authorization and/ or license from the plaintiff to provide, allocate, sell or resell the abovesaid barcodes, amounts to infringement of the plaintiff's rights under Section 75 of the Trade Marks Act, 1999.
28. As per the learned counsel for plaintiff due to exclusivity of service and on account of long, continuous and extensive use of plaintiff's '890' barcode numbers, the '890' barcode numbers originating from the plaintiff enjoy tremendous goodwill and reputation, hence, any unauthorised use, selling, reselling or trade of the '890' barcodes not only infringes the plaintiff's statutory rights but also violates its common law rights.
29. Learned counsel for the plaintiff submits that such unauthorised allocation of barcodes by the defendant would result in the GS1 system being unable to identify the particular entity utilising these barcodes since they will not be registered on the system of the plaintiff thus, misleading innocent customers.
30. This Court has heard the submissions of the learned counsel for the CS(COMM) 589/2024 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 25/07/2024 at 01:23:46 plaintiff and perused the documents on record.
31. A perusal of the report furnished by the investigator reveals that each of the barcodes issued by the defendant to the investigator are 13 digit barcodes starting with '890' and are identically similar to the ones for which the plaintiff has exclusive rights. There is no way that the members of the general public can make out a difference or draw a distinction inter se the two.
32. The plaintiff has been granted registration of the abovesaid barcodes with the '890' prefix in its favour bearing registration No.1293152 in Class-35 with effect from 29th June, 2004. The grant of the registration of the abovesaid barcodes as trademark confers upon the plaintiff exclusive rights to license or allocate 13 digit barcodes starting with '890' in relation to the "business method of bar coding products and items to indicate origin, source, manufacturer and category of the item bearing the bar code". Therefore, the advertising, using, offering for sale and selling 13 digit barcodes starting with '890', which is identical to that of the plaintiff and for which it holds exclusive rights by the defendant is in direct contravention of the plaintiff's right to exclusivity.
33. The defendant cannot be allowed to continue with the illegal and unauthorised act of using, selling, reselling or trade of the 13 digit barcodes starting with '890', which is exclusively belonging to the plaintiff to the exclusion of all others. The use thereof by the defendant, without obtaining any permission and/ or authorisation from the plaintiff is illegal and bad, and cannot be permitted. If allowed, the same can lead to confusion and deception in the minds of the members of the general public. Moreover, since the said 13 digit barcodes starting with '890' is validly registered in CS(COMM) 589/2024 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 25/07/2024 at 01:23:46 the name of the plaintiff, the same is valid and subsisting in its name.
34. In view of the aforesaid, the plaintiff has been able to make out a prima facie case for the grant of an ex parte ad interim injunction in its favour and against the defendant with the balance of convenience also in their favour. If not restrained, the defendant is allowed to continue using the impugned 13 digit barcodes starting with '890', the same may result in the plaintiff suffering irreparable harm, loss and injury.
35. Accordingly, the defendant and all those acting for or on its behalf is/are restrained from using, selling, offering for sale, issuing or allocating 13- digit barcode numbers starting with '890' or any deceptively similar marks in any manner for goods and services leading to confusion as to its origin or association or mistaken impression as to certification regarding compliance with GSl standards (GSl General Specification), or in any other manner whatsoever.
26. Issue notice to the defendant by all permissible modes returnable before the Joint Registrar on 11.09.2024.
27. Reply, if any, be filed within a period of thirty days from the date of service. Rejoinder thereto, if any, be filed within a period of fifteen days thereafter.
36. The provisions of Order XXXIX rule 3 CPC be complied within three days from the receipt of this order.
37. List before the Court on 21.10.2024.
SAURABH BANERJEE, J JULY 22, 2024/So CS(COMM) 589/2024 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 25/07/2024 at 01:23:47