Delhi High Court - Orders
Shardul Amarchand Mangaldas And Co vs John Doe & Ors on 7 August, 2024
$~38
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 665/2024 & I.A. 35818/2024, I.A. 35819/2024, I.A.
35820/2024, I.A. 35821/2024, I.A. 35822/2024, I.A. 35823/2024, IA.
35824/2024
SHARDUL AMARCHAND MANGALDAS AND CO. .....Plaintiff
Through: Mr. Jayant Mehta, Sr. Advocate with
Mr. Dushyant Manocha, Advocate
M: 9999714826
Email:
[email protected]
versus
JOHN DOE & ORS. .....Defendants
Through: None.
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
ORDER
% 07.08.2024
IA. 35824/2024 (Application seeking exemption from filing clearer
copies)
1. The present is an application under Section 151 of the Code of Civil Procedure, 1908 ("CPC"), seeking an exemption from filing clearer copies or documents with exact margins and/or which are handwritten or English translations, certified copies and from filing originals of the relevant documents at this stage, along with supporting affidavit.
2. Exemption is granted, subject to all just exceptions.
3. Applicant shall file legible, clear, and original copies of the CS(COMM) 665/2024 Page 1 of 23 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 10/08/2024 at 01:57:26 documents, on which the applicant may seek to place reliance, within four weeks from today, or before the next date of hearing, whichever is earlier.
4. Accordingly, the present application is disposed of. I.A. 35822/2024 (Application seeking leave to file additional documents)
5. This is an application seeking leave to file additional documents under Order XI Rule 1(4) (as amended by the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015), read with 151 CPC.
6. The plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of Commercial Courts Act, 2015, and the Delhi High Court (Original Side) Rules, 2018.
7. The application is disposed of, with the aforesaid directions. I.A. 35823/2024 (Application seeking exemption from advance service to the defendant)
8. Since there is an urgency in the matter, and the same is being heard today, plaintiff is exempted from serving advance notice on the defendants herein.
9. For the reasons stated in the application, the same is allowed and disposed of.
10. I.A. 35820/2024 (Ex. from serving two months prior notice to defendant)
11. Considering the submissions made in the present application, the plaintiff in exempted from serving two months prior notice to the defendant(s).
12. The application is disposed of, with the aforesaid direction. I.A. 35821/2024 (Application seeking permission to file Court fees CS(COMM) 665/2024 Page 2 of 23 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 10/08/2024 at 01:57:26 within one week)
13. Learned Senior Counsel appearing for the plaintiff submits that the Court Fees shall be deposited within a period of one week.
14. Liberty is so granted.
15. With the aforesaid directions, the present application is disposed of. I.A. 35819/2024 (Exemption from instituting Pre-Litigation Mediation)
16. The present is an application under Section 12A of the Commercial Courts Act, 2015, read with Section 151 of CPC seeking exemption from undergoing Pre-Institution Mediation.
17. Having regard to the facts of the present case, and in the light of the judgment of Supreme Court in the case of Yamini Manohar versus T.K.D. Keerthi, 2023 SCC OnLine SC 1382, and Division Bench of this Court in Chandra Kishore Chaurasia Versus RA Perfumery Works Private Ltd., 2022 SCC OnLine Del 3529, exemption from attempting Pre-Institution Mediation, is granted.
18. Accordingly, the application stands disposed of. CS(COMM) 665/2024
19. Let the plaint be registered as suit.
20. Upon filing of the process fee, issue summons to the defendants by all permissible modes. Summons shall state that the written statement be filed by the defendant within thirty days from the date of receipt of summons. Along with the written statement, the defendants shall also file affidavit of admission/denial of the plaintiff's documents, without which, the written statement shall not be taken on record.
21. Liberty is given to the plaintiff to file replication within thirty days from the date of receipt of the written statement. Further, along with the CS(COMM) 665/2024 Page 3 of 23 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 10/08/2024 at 01:57:27 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 the documents, the same shall be sought and given within the timelines.
22. List before the Joint Registrar (Judicial) for marking of exhibits on 3rd October, 2024.
23. List before the Court on 16th December, 2024.
I.A. 35818/2024 (Application under Order XXXIX Rules 1 and 2 read with Section 151 CPC seeking ex-parte ad-interim injunction)
24. The present suit has been filed under Sections 27(2), 29, 134 and 135 of the Trade Marks Act, 1999 and Sections 51 and 62 of the Copyright Act, 1957, for inter alia, permanent injunction against trade mark infringement, copyright infringement, passing off, rendition of account of profits and/or damages.
25. It is submitted that plaintiff, as it exists today, was established on 11th May, 2015, following the dissolution of the firm Amarchand & Mangaldas & Suresh A. Shroff and Co. On its inception, the plaintiff adopted the mark "SHARDUL AMARCHAND MANGALDAS" as well as the logos " and CS(COMM) 665/2024 Page 4 of 23 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 10/08/2024 at 01:57:27 , on 11th May, 2015. Thus, it is submitted the "SAMCO" trademarks have been in uninterrupted and extensive use, ever since then. By virtue of such extensive use, the said marks are exclusively associated with the plaintiff.
26. It is submitted that the plaintiff is aggrieved on account of infringement, passing off, and illegal misappropriation of its intellectual property rights vesting in its registered "SAMCO" trademarks and the copyright vested therein by the defendant no. 1's acts of surreptitious adoption and use of identical marks, "Shardul Amarchand Mangaldas"/ as well as use of the name and photograph of the plaintiff's Executive Chariman, Dr. Shardul S. Shroff.
27. It is submitted that defendant no. 1 are the 'John Doe(s)', which is being used to denote all those unknown individuals/entities, who are found CS(COMM) 665/2024 Page 5 of 23 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 10/08/2024 at 01:57:28 to violate the plaintiff's "SAMCO" trademarks and copyright, and draw an unlawful connection with the plaintiff, whose identities are currently unknown.
28. It is submitted that to further bolster its attempt to mislead recipients, the defendant no. 1, is also using the name and photograph of the plaintiff's Executive Chairman, Dr. Shradul S. Shroff. Thus, it is submitted that acts of defendant no. 1, are damaging the plaintiff's hard earned goodwill and reputation, which strikes at the very root of the plaintiff's existence, and cannot be compensated monetarily.
29. It is further submitted that defendant no. 1 is also using the plaintiff's office address, website, office number and Email ID.
30. Attention of this Court has been drawn to the infringing screenshots using the plaintiff's trademark, trade name and logo, which is reproduced as under:
CS(COMM) 665/2024 Page 6 of 23This 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 10/08/2024 at 01:57:28 CS(COMM) 665/2024 Page 7 of 23 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 10/08/2024 at 01:57:29 CS(COMM) 665/2024 Page 8 of 23 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 10/08/2024 at 01:57:30 CS(COMM) 665/2024 Page 9 of 23 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 10/08/2024 at 01:57:31
31. Learned Senior Counsel appearing for the plaintiff submits that the defendant no. 1, are misrepresenting themselves as being associated with the plaintiff and issuing fake and unauthorized legal notices and letter to third CS(COMM) 665/2024 Page 10 of 23 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 10/08/2024 at 01:57:31 parties, inter alia, alleging copyright infringement. The legal notices/letter being addressed by defendant no. 1, bear the plaintiff's registered and well known "SAMCO" trademarks.
32. It is submitted that the plaintiff apprehends that there may be a larger group of people involved in these illegal activities, details of whom are not available with the plaintiff at present. Thus, plaintiff seeks leave of this Court to implead all such persons and entities in the present suit for effective adjudication as soon as such details are disclosed by the present defendant no. 1, or are uncovered at a later stage.
33. It is submitted that ever since its inception, the plaintiff under its "SAMCO" trademarks, has rapidly grown to become one of India's largest full-service law firms, having offices in several major Indian cities, including New Delhi and Mumbai.
34. The plaintiff is the owner of the domain name 'amsshardul.com'. The website therein, i.e., www.amsshardul.com is accessible throughout the world, including in India. It is submitted that the domain name 'amsshardul.com' was registered on 9th March, 2015. The screenshots of the plaintiff's website, as occurring in the plaint, are reproduced as under:
CS(COMM) 665/2024 Page 11 of 23This 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 10/08/2024 at 01:57:32 CS(COMM) 665/2024 Page 12 of 23 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 10/08/2024 at 01:57:32
35. It is submitted that in order to safeguard its rights in the "SAMCO" trademarks, the plaintiff has secured several registrations in India, for the marks "SHARDUL AMARCHAND MANGALDAS", "
and " ". The details of the registrations in favour of the plaintiff, as given in the plaint are reproduced as below:
CS(COMM) 665/2024 Page 13 of 23This 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 10/08/2024 at 01:57:34 CS(COMM) 665/2024 Page 14 of 23 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 10/08/2024 at 01:57:36 CS(COMM) 665/2024 Page 15 of 23 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 10/08/2024 at 01:57:36 CS(COMM) 665/2024 Page 16 of 23 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 10/08/2024 at 01:57:37 CS(COMM) 665/2024 Page 17 of 23 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 10/08/2024 at 01:57:37 CS(COMM) 665/2024 Page 18 of 23 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 10/08/2024 at 01:57:38
36. Thus, it is submitted that on account of its goodwill and reputation, the "SAMCO" trademarks have become exclusively associated with the plaintiff and are well-recognized and popular amongst the industry and public.
37. In view of the plaintiff's rights, the statutory and in common law, in its "SAMCO" trademarks and its goodwill and reputation therein, the plaintiff has exclusive right to use the said marks and no one else can be permitted to use the same or any other deceptively similar mark/name thereto in any manner whatsoever in relation to any services/business without the permission of the plaintiff.
38. It is submitted that the plaintiff's front desk officer received telephonic enquires on 2nd August, 2024, from one Mr. Rakesh, referring to a legal notice received by his company, alleging copyright infringement. Upon specific request, the said Mr. Rakesh forwarded the impugned Email to the plaintiff. On a bare perusal of the Email, it was evident that the said legal notice had not been addressed by the plaintiff.
39. It is further submitted that the plaintiff was also informed by one Mr. Ishan S. Srivastava, Advocate, vide letter dated 2nd August, 2024, that the Commissioner of Police Thane, Maharashtra had received a letter dated 29th CS(COMM) 665/2024 Page 19 of 23 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 10/08/2024 at 01:57:39 July, 2024, from the plaintiff alleging extortion.
40. It is submitted that the said Email notices have neither been addressed by the plaintiff or its authorized representatives. Further, neither of the said legal notices/emails, have been authorized by the plaintiff. In fact, in response to the letter dated 2nd August, 2024, Dr. Shardul S. Shroff had issued a clarification vide his Email dated 6th August, 2024, that the impugned letter was not authored by the plaintiff.
41. Thus, it is submitted that the plaintiff strongly apprehends that the impugned legal notices/emails/letter are being addressed to seek illegal monetary gains by creating a mistaken impression that the impugned legal notices/emails/letter are being addressed by the plaintiff, at least, to damage the goodwill and reputation of the firm, as a whole.
42. Thus, it is submitted that defendant no. 1 is using the following Email IDs:
a. [email protected] b. [email protected] c. [email protected] d. [email protected]
43. It is further submitted that the plaintiff has also filed criminal complaints seeking appropriate action against the offenders. Further, the plaintiff has also taken steps to include appropriate disclaimers on its website with respect to Emails being sent by unknown individuals.
44. Thus, it is submitted that in view of the defendant no. 1's acts of violation of the plaintiff's intellectual property rights, the plaintiff is left with no option but to approach this Court in order to protect the plaintiff, as also the public interest involved, in the present case.
CS(COMM) 665/2024 Page 20 of 23This 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 10/08/2024 at 01:57:40
45. Considering the submissions made before this Court, this Court is of the view that the plaintiff has established a prima facie case in its favour. The balance of convenience, also, lies in favour of the plaintiff and against the defendant. Irreparable loss shall be caused to the plaintiff, if interim directions are not passed in favour of the plaintiff.
46. Accordingly, it is directed, as follows:
46.1 An ad interim injunction is granted restraining the Defendant No. 1 (and such other individuals/entities which are discovered during the course of the proceedings to have been engaging in infringing the Plaintiff's exclusive rights), their proprietors, promoters, directors, partners, assigns, sister concern, affiliates, relatives, successors-in-interest, licensees, franchisees, representatives, servants, distributors, employees, agents etc. or anyone associated with them, from using the SAMCO Trade Marks and/or the name and photograph of the Plaintiff s Executive Chairman Dr. Shardul S. Shroff or any other members/partners/employees, singularly or in conjunction with any other word or monogram/logo as a trade mark, service mark, house mark, trade name, trading style, corporate name, website, domain name, messaging, group on any platform, e-mail address, social media handle or otherwise in any manner whatsoever, on or in relation to their business;
46.2 The defendant no. 2 is directed to:
(i) block/takedown the following email IDs, created by the Defendant No. 1, during the pendency of the present suit:
I. [email protected] II. [email protected] III. [email protected] IV. [email protected] CS(COMM) 665/2024 Page 21 of 23 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 10/08/2024 at 01:57:40
(ii) furnish the details including the user details and phone numbers associated with (I) [email protected] (II) [email protected], (III) [email protected] (IV) [email protected]
(iii) Upon disclosure of the phone numbers associated with the aforesaid Emails, the defendant no. 2 shall also with regard to each of the phone number discovered, furnish any other Email address, that may be associated therewith.
46.3 Defendant nos. 3 and 4 are directed to issue necessary notification and directions to all the concerned telecom and internet service providers, and E- mail service providers to block/delete/remove access, during the pendency of the suit, all the Email IDs, telephone numbers, associated with the subject matter of the present suit.
46.4 In case the plaintiff is able to discover any other E-mail or telephone number, the details with respect thereto, shall be provided to defendant nos. 2, 3 and 4, and appropriate action shall be taken by the said defendants, in terms of the order passed today.
47. The plaintiff is granted liberty to publish a Public Notice informing the general public, about the fact of the various false communications being issued by unknown persons, thereby, using and infringing the registered trademark, logo, trade name and names of representatives of the plaintiff firm, and also the fact regarding the filing of the present suit.
48. Issue notice to the defendants by all permissible modes, upon filing of the process fee, returnable on the next date of hearing.
CS(COMM) 665/2024 Page 22 of 23This 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 10/08/2024 at 01:57:40
49. Reply be filed within a period of four weeks from the date of service.
50. Rejoinder thereto, if any, be filed within a period of two weeks, thereafter.
51. Compliance of Order XXXIX Rule 3 CPC, be done within a period of one week, from today.
52. List before the Court on 16th December, 2024.
53. Dasti under signatures of the Court Master.
MINI PUSHKARNA, J AUGUST 7, 2024 ak CS(COMM) 665/2024 Page 23 of 23 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 10/08/2024 at 01:57:41