Delhi District Court
Asics Corporation vs Gagan Goel And Others on 31 January, 2024
CS No.206/2023: ASICS Corporation V/s Gopal Bareja & Ors.: DOD: 31.01.2024
IN THE COURT OF VINOD YADAV:
DISTRICT JUDGE (COMMERCIAL COURT)-02:
NORTH-WEST DISTRICT: ROHINI COURTS: NEW DELHI
CNR No.DLNW01-002579-2023
Civil Suit (Comm.) No.206/2023
In the matter of:
ASICS CORPORATION,
MINATOJIMA-NAKAMACHI 7-CHOME,
CHUO-KU, KOBE CITY, HYOGO
PREFECTURE, JAPAN.
Through Its Authorized Representative,
Mr.Bhaskar Bhasin,
ASICS Store, D-12/196 & 197, Ground Floor,
Sector-8, Rohini, Delhi-110081.
.....Plaintiff
Versus
1.Shri Gopal Bareja, Proprietor of M/s G.L Traders, 2192/63 Naiwala, Karol Bagh, New Delhi-110005.
.....Defendant No.1
2. Shri Gurdeep Singh, Proprietor of Royal, 2192/63 Naiwala, Karol Bagh, New Delhi-110005.
.....Defendant No.2
3. Shri Raghav Budhiraja, Proprietor of Raghav Enterprises, 2192/63 Naiwala, Karol Bagh, New Delhi-110005.
.....Defendant No.3 (Ex-parte vide order dated 04.10.2023)
4. Shri Mohinder Bajaj, Proprietor of Bajaj Trading Company, 2192/63 Naiwala, Karol Bagh, New Delhi-110005.
.....Defendant No.4 Page 1 of 12 CS No.206/2023: ASICS Corporation V/s Gopal Bareja & Ors.: DOD: 31.01.2024 Date of Institution of Suit : 20.03.2023 Date of transfer to this Court : 08.06.2023 Date of hearing arguments on application U/o XIII-A CPC : 31.01.2024 Date of judgment : 31.01.2024 SUIT FOR PERMANENT INJUNCTION, RESTRAINING INFRINGEMENT OF TRADEMARK(S), PASSING OFF, DAMAGES, RENDITION OF ACCOUNTS, DELIVERY UP ETC.
31.01.2024 JUDGMENT IN TERMS OF ORDER XIII-A CPC
1. This is a suit for permanent injunction, restraining infringement of trademark(s), passing off, damages, rendition of accounts, delivery up etc., filed by plaintiff against the defendant(s).
2. The facts of the case in brief, as borne out from the record are that plaintiff is a corporation duly organized and incorporated under the laws of the State of Japan domiciled at Kobe, Japan. The plaintiff claims itself to be a world leader in the business of manufacturing and distribution of world class shoe footwear, clothing, accessories in premium and luxury segment etc. under the trade mark/logo ASICS and ASICS Tiger. It is averred that the plaintiff is having various registration in its favour worldwide, including India.
3. It is stated that plaintiff had entered in India in the year 2015. The Plaintiff has claimed to be owner and proprietor of the trade mark/logo ASICS and ASICS Tiger. The plaintiff got registered its trade mark/logo Page 2 of 12 CS No.206/2023: ASICS Corporation V/s Gopal Bareja & Ors.: DOD: 31.01.2024 ASICS and ASICS Tiger under the various classes of the Trade Mark Rules, 2002, which are stated to be valid and subsisting till date. The details thereof have been mentioned in paragraph No.5 of the plaint. Further, it is also claimed that the art works involved in the Plaintiff's said Trade Marks/logo/Label are original artistic works and hence plaintiff has the copyright over the same.
4. It is further stated that on account of its good quality and standards of manufacturing and untiring efforts in advertising and marketing, the products of the plaintiff have acquired enviable reputation and goodwill across the world including India. It is contended that plaintiff spends huge amount of money in advertising and promotion of its products under the said trade marks/ logos in India and around the world, due to which the products of plaintiff under the said trade marks/ logos enjoy huge goodwill and reputation in business community and public in general in India and across the world.
5. It is claimed that in view of the plaintiff's proprietary rights both under statutory and common law in its said trademarks, its goodwill & reputation and its copyrights, it/plaintiff has the exclusive right to the use thereof and nobody can be permitted to use the same or any other deceptively similar trademark/label in any manner whatsoever in relation to any specification of goods without the leave and license of the plaintiff.
6. It is the case of plaintiff that in the first week of March' 2023, it came to its knowledge that the defendants were engaged in same Page 3 of 12 CS No.206/2023: ASICS Corporation V/s Gopal Bareja & Ors.: DOD: 31.01.2024 business and goods as that of plaintiff and have dishonestly and malafidely adopted impugned trademarks/label/colour combination /trade dress/logos "ASICS, ASICS Tiger" which is visually, structurally identical and /or deceptively and confusingly similar to the registered trademarks of plaintiff "ASICS, ASICS Tiger" thereby causing confusion and deception amongst the unwary purchasing public and traders by making them believe that the origin of those goods is the plaintiff company. It also came to their notice that defendant(s) had been making clandestine and surreptitious sales thereof in the areas/markets of Ashok Vihar, Aman Vihar, Pitampura, Mangolpuri, Rani Bagh, Rithala, Netaji Subhash Place, Sultanpuri, Udhyog Nagar etc. It has been averred that by doing so, the defendant(s) have been not only damaging the reputation and goodwill of the plaintiff company by passing off their substandard products as that of the plaintiff company but is also causing financial loss to the plaintiff company by reaping unfair advantage of the repute and distinctive character of the trademark of the plaintiff company.
7. It is worthwhile to note that pursuant to filing of instant suit, plaintiff moved an application U/o 26 Rule 9 CPC, inter alia seeking appointment of "Local Commissioner" in the matter to visit the premises of defendant(s) and and seize the infringed goods recovered therefrom. Vide order dated 21.03.2023, application filed U/o 26 Rule 9 CPC was allowed, whereby the learned Local Commissioner was appointed to visit the premises of defendant(s). The learned Local Commissioner accordingly visited the premises of defendant(s) on 22.03.2023 and seized infringed goods therefrom.
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8. It is pertinent to mention here that initially the suit was filed against unknown defendant on the principle of "John Doe", however, pursuant to visit of Local Commissioner to the spot/premises of defendant, the names of defendants were revealed as, (i) Shri Gopal Bareja, proprietor of M/s G.L Traders (defendant No.1 herein); (ii) Shri Gurdeep Singh, proprietor of M/s Royal (defendant No.2 herein); (iii) Shri Raghav Budhiraja, proprietor of M/s Raghav Enterprises (defendant No.3 herein); and (vi) Shri Mohinder Bajaj, proprietor of M/s Bajaj Trading Company (defendant No.4 herein). The plaintiff accordingly moved an application U/o 6 Rule 17 CPC in this regard which was duly allowed vide order dated 20.04.2023 and this is how the aforesaid four persons came to be impleaded as defendants in the matter.
9. Pursuant to their service in the suit, defendants No.1, 2 and 4 appeared in the Court, however, no appearance was put forth on behalf of defendant No.3/Shri Raghav Budhiraja, proprietor of Raghav Enterprises.
10. During the course of proceedings, matter stood amicably settled between plaintiff and defendants No.1, 2 and 4. Three separate applications U/o 23 Rule 3 CPC in this regard was moved on behalf of parties. Thereafter, on the joint request of the parties, vide order dated 08.05.2023, matter was referred to "Lok Adalat" for finalization of settlement. Vide order/Award of Lok Adalat, dated 13.05.2023, matter qua defendants No.1, 2 and 4 was disposed off having been amicably settled/compromised.
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11. Despite being duly served, the defendant No.3/Raghav Budhiraja neither appeared in the Court nor any written statement was filed on his behalf. Accordingly, vide order dated 04.10.2023, defendant No.3 was proceeded "ex-parte" and the matter was notified for ex-parte PE.
12. (i) Since, defendant No.3 had already been proceeded "ex-parte"
in the matter vide order dated 04.10.2023, learned counsel for the plaintiff on 29.11.2023 moved an application U/o XIII-A CPC, inter alia praying for passing of summary judgment in the matter against defendant No.3/Raghav Budhiraja, proprietor of M/s Raghav Enterprises.
(ii) It is noted that no notice of the said application is required to be issued to defendant No.3, as despite being duly served in the suit, he did not prefer to appear in the Court and was accordingly proceeded "ex-
parte" vide order dated 04.10.2023.
13. Before proceeding further, it is pertinent to mention here that during the raid conducted by learned Local Commissioner at the premises of defendant No.3 on 22.03.2023, 12 (twelve) pairs of infringed products (shoes) were recovered therefrom.
14. I have heard Shri Gautam Bhasin and Shri Varun Khanna, Advocates, learned counsels for the plaintiff and gone through the entire material on record.
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15. It has been very vehemently argued by learned counsel(s) for the plaintiff that there is no need to record evidence in the matter. In support of his contentions, he has relied upon the following judgments:
(a) Case reported as, "CS (Comm.) No.1203/2018", titled as, "AKTIEBOLAGET VOLVO & Ors. V/s Gyan Singh & Anr."
(DOD: 25.04.2023);
(b) Case reported as, "CS (Comm.) No.478/2019", titled as, "Sandisk LLC V/s Amit & Ors." (DOD: 01.03.2023);
(c) Case reported as, "CS (Comm.) No.564/2020", titled as, "Imagine Marketing Private Ltd. V/s M/s Green Accessories Through Its Proprietor & Anr." (DOD: 21.03.2022);
(d) Case reported as, "CS (Comm.) No.675/2019", titled as, "Dhani Loans And Services Limited & Anr. V/s WWW.Dhanifinance.Com & Ors." (DOD: 12.10.2022);
(e) Case reported as, "CS (Comm.) No.929/2018", titled as, "Sanofi & Anr. V/s Faisal Mushtaq & Ors." (DOD: 16.11.2018);
(f) Case reported as, "CS (Comm.) No.413/2021", titled as, "LT Foods Limited V/s Saraswati Trading Company" (DOD:
11.11.2022);
(g) Case reported as, "CS (Comm.) No.1219/2018", titled as, "Shri Ved Prakash Garg Trading As M/s Parul Food Products V/s M/s Gurudev Industries" (DOD: 20.12.2018) and;
(h) Case reported as, "CS (OS) No.3466/2012", titled as, "Disney Enterprises Inc. & Anr. V/s Balraj Muttneja & Ors." (DOD:
20.02.2014).
16. The judgment in case of LT Foods (supra) and Shri Ved Prakash Garg (supra) have been referred to establish the point that the report of Local Commissioner in itself can be treated as evidence.
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17. (i) The learned counsel has further very vehemently argued that in the teeth of material available on record in the form of plaint, documents and the report of leaned Local Commissioner, no useful purpose would be served asking the plaintiff to lead evidence with regard to the grant of prayer qua damages and cost.
18. In case reported as, "AKTIEBOLAGET VOLVO" (supra), the Hon'ble High Court of Delhi has been pleased to observe as under:
xxxxx
10. At the hearing on 19thApril, 2023, the counsels for the defendants on instructions submitted that the defendants were agreeable to a decree of permanent injunction being passed against the defendants.
Counsel for the plaintiffs also pressed for costs and damages of Rs.10,00,000/- to be apportioned between the defendants.
xxxxx xxxxx
17. I am of the opinion that no purpose would be served by directing the plaintiffs to lead evidence by filing examination-in-chief by way of affidavit. The defendants have no reasonable prospect of succeeding in the present suit. Therefore, in my opinion, this is a fit case where a Summary Judgment in terms of Order XIII-A of the CPC, as applicable to commercial disputes of a specified value, read with Rule 27 of the IPD Rules, deserves to be passed in favour of the plaintiffs and against the defendants.
xxxxx
19. The Hon' ble High Court, thereafter in paragraphs No.22 and 23 of the aforesaid judgment has been pleased to lay down as under:
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22. Clearly, the customers are being misled by the defendants and the entire effort is deliberate and dishonest. This amounts to dilution of the reputation and goodwill of the plaintiffs' marks and causing loss to the plaintiffs in business and reputation. The members of the public are bound to confuse bicycles manufactured and sold by the defendants under the mark VOLVO as emanating from the plaintiffs. The defendants have been making unlawful gains at the expense of the plaintiffs. I am convinced that this is nota case of innocent adoption by the defendants. The Court cannot ignore such flagrant misuse of the plaintiffs' marks by the defendants. Even though the claim of the plaintiffs for damages, based on the recoveries made at the premises of the defendant no.2 and the invoices placed on record, is close to Rs.20,00,000/-, I deem it appropriate to award a sum of Rs.10,00,000/-towards damages and costs to the plaintiffs.
23. Taking into account that the defendants no. 3 and 4 are the manufacturers and suppliers of the aforesaid goods and the defendants no.1and 2 were selling the goods supplied by the defendants no.3 and 4, out of the aforesaid amount, the defendants no.3 and 4 shall be liable to pay Rs.6,50,000/- in favour of the plaintiffs and the defendants no.1 and 2 shall be liable to pay Rs.3,50,000/- in favour of the plaintiffs.
xxxxx
20. The other judgment(s) sought to be relied upon by learned counsel for the plaintiff also lays down the same law.
21. Amended Order XIIIA of CPC, as applicable to commercial disputes, enables the Court to decide a claim or part thereof without Page 9 of 12 CS No.206/2023: ASICS Corporation V/s Gopal Bareja & Ors.: DOD: 31.01.2024 recording oral evidence. Order XIIIA of CPC seeks to avoid the long drawn process of leading oral evidence in certain eventualities.
Consequently, the said provision enables disposal of commercial disputes in a time bound manner and promotes the object of the Commercial Courts Act, 2015.
22. Rule 3 of Order XIII-A of CPC empowers the Court to grant a summary judgment against a defendant where on an application filed in that regard, the Court considers that the defendant has no real prospect of successfully defending a claim, and there is no other compelling reason as to why the claim should not be disposed of before recording of oral evidence. Order XIIIA (3) of CPC, as applicable to commercial disputes, is reproduced herein below:-
xxxxx "3. Grounds for summary judgment.--The Court may give a summary judgment against a plaintiff or defendant on a claim if it considers that-
(a) the plaintiff has no real prospect of succeeding on the claim or the defendant has no real prospect of successfully defending the claim, as the case may be; and
(b) there is no other compelling reason why the claim should not be disposed of before recording of oral evidence."
xxxxx
23. Touching the present case on the touchstone of the law laid down in the above referred judgments, I find that no useful purpose would be served, firstly by framing the issue with regard to grant of damages & cost and then asking the plaintiff to lead evidence in the matter. I am Page 10 of 12 CS No.206/2023: ASICS Corporation V/s Gopal Bareja & Ors.: DOD: 31.01.2024 further of the considered opinion that defendant No.3 has not been able to raise any such defence which debars the plaintiff from claiming decree in the matter, as there is no real prospect of him successfully defending its claim since he is already "ex-parte" in the matter and no written statement on his behalf is on record. On the other hand, taking into account the documents relied upon by the plaintiff, it is observed that plaintiff has a good case and no useful purpose would be served by going to trial in the matter. In my considered opinion, this is a fit case where it can be held that defendant No.3 has no defence and a summary judgment in terms of Order XIII-A of the CPC is required to be passed. I order accordingly.
24. Accordingly, suit of the plaintiff is decreed as under:
(i) A decree of permanent injunction is hereby passed in favour of plaintiff and against defendant No.3/Raghav Budhiraja, proprietor of M/s Raghav Enterprises, thereby restraining the defendant No.3 by himself as also through its agents, representatives, distributors, assigns, heirs, successors, stockiest(s) and all others acting for and on his behalf from manufacturing, marketing, selling, storing, distributing and/or using the impugned trade mark and copyright vested in trade mark/logo "ASICS and ASCIS Tiger" of the plaintiff in any form and manner which are identical and/or confusingly or deceptively similar to "ASICS and ASCIS Tiger" on any goods including shoes and other accessories, thereby infringing plaintiff's registered trademarks and copyright;
and passing off its goods and business as that of the goods and business of the plaintiff.
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(ii) A decree in the sum of Rs.3,05,000/- (Rupees Three Lakhs Five Thousand Only) on account of damages sustained by the plaintiff due to loss of sale, reputation and goodwill as well as dilution of plaintiff's trademark is passed in favour of plaintiff and against defendant No.3; and
(iii) Plaintiff is also entitled to cost of the proceedings, which will include actual cost incurred by the plaintiff, cost incurred towards execution of Local Commission as also the counsel's fee which is quantified as Rs.22,000/-.
25. Decree Sheet be prepared accordingly.
26. File be consigned to Record Room after completion of necessary formalities.
Dictated & Announced in the (Vinod Yadav)
open Court on 31.01.2024 District Judge (Commercial Court)-02
North-West/Rohini Courts
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