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Delhi High Court - Orders

Walmart Apollo Llc vs Shah Jahan on 27 April, 2022

Author: Prathiba M. Singh

Bench: Prathiba M. Singh

                         $~19
                         *      IN THE HIGH COURT OF DELHI AT NEW DELHI
                         +                     CS(COMM) 266/2022
                                WALMART APOLLO LLC                      ..... Plaintiff
                                               Through: Ms. Anuradha Salhotra, Mr. Sumit
                                                        Wadhwa, Mr. Siddhant, and Ms.
                                                        Sharika     Vijh,         Advocates.
                                                        (M:9899783837)
                                               versus
                                 SHAH JAHAN                             ..... Defendant
                                               Through: None.
                                CORAM:
                                JUSTICE PRATHIBA M. SINGH
                                         ORDER

% 27.04.2022

1. This hearing has been done through hybrid mode. I.A. 6425/2022 (for exemption)

2. Allowed, subject to all just exceptions.

3. I.A. 6425/2022 is disposed of.

I.A. 6427/2022 (exemption from advance service to the Defendants)

4. In view of the fact that the Plaintiff has sought ex parte ad-interim injunction along with the appointment of the Local Commissioner, the exemption from advance service to the Defendants is granted.

5. I.A. 6427/2022 is disposed of.

I.A. 6426/2022 (exemption from filing translated copies)

6. This is an application for exemption from filing translated copies of the documents not in English language. Exemption is granted at this stage. If at the later stage, the said documents are relied upon by the Plaintiff, translated copies shall be placed on record.

7. I.A.6426/2022 is disposed of.

I.A. 6424/2022 (exemption from filing original documents)

8. This is an application seeking exemption from filing original 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.

9. I.A.6424/2022 is disposed of.

I.A. 6423/2022 (for additional documents)

10. 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 do so strictly as per the provisions of the Commercial Courts Act.

11. I.A. 6423/2022 is disposed of.

CS(COMM) 266/2022 & I.A. 6421/2022 (for stay)

12. The present suit for permanent injunction has been filed by the Plaintiff seeking to protect its rights in the mark 'WALMART'/ 'WAL- MART' which is used by it for retail services internationally. The Plaintiff is a Fortune 500 company. The adoption of the Plaintiff's mark is of the year 1962 and the word has also been used as a part of the corporate name and trading style since 2007 in India. The Plaintiff claims to have multiple registrations for the mark 'WALMART/'WAL-MART' for various goods and services under Classes 39, 16, 35 and 42.

13. The grievance of the Plaintiff in the present case is that the Defendant is using the name 'WALMART MARINE SERVICES' both as a trading style and as a domain name - 'www.walmartmarineservices.com' in relation Signature Not Verified Digitally Signed CS(COMM) 266/2022 Page 2 of 5 By:DEVANSHU JOSHI to his business of providing marine services on ships including, trading, maintenance, security, cold storage marine lubricating oils etc. The logo being used by the Defendant is as set out below:

14. Ms. Salhotra, ld. Counsel submits that the Plaintiff has been registered in an identical class, i.e. Class 39 which includes transport and logistics, and it is entitled for protection of the mark 'WALMART' which is a very distinctive brand. She submits that the use and adoption of the trade mark 'WALMART MARINE SERVICES' by the Defendant is dishonest and a clear attempt to ride upon the immense reputation and goodwill of the well- known mark of the Plaintiff.

15. A perusal of the website www.whois.com shows that the Defendant's domain name registration for the website www.walmartmarineservices.com is of 2016. Considering the nature of services provided by the Defendant, at this stage, this Court is of the opinion that notice ought to be issued to the Defendant to find out the extent of the use of the mark 'WALMART MARINE SERVICES' as also the actual date its adoption and use.

16. Accordingly, issue notice to the Defendant.

17. The Defendant shall file its reply upon service of the papers and copy of this order within four weeks. Rejoinder thereto, be filed within two weeks.

18. List on 26th July, 2022.

I.A. 6422/2022 (for appointment of Local Commissioner)

19. This is an application filed by the Plaintiff seeking appointment of a Local Commissioner. Considering the case of the Plaintiff, as recorded above, and also the fact that it is necessary to ascertain the extent of use of the mark and name 'WALMART MARINE SERVICES' by the Defendant, Mr. Harish V. Shankar, ld. Advocate [M: 9810788606] is appointed as a Local Commissioner to visit the premises of the Defendant at Walmart Marine Services, SR. Tower, # 3rd Floor, 14, 4th Lane North Beach Road, Chennai-600001 in order to carry out the following tasks:

i) To ascertain the exact date of the adoption of the mark 'WALMART MARINE SERVICES' by the Defendant as part of his trading style;

ii) To ascertain the extent of use of the mark 'WALMART MARINE SERVICES' by the Defendant. For the said purpose, the Defendant shall provide access to its accounts, whether in computerized form or in physical form. If there are any passwords, the same be revealed to the Local Commissioner so that the accounts can be accessed;

iii) Samples of any publicity material including brochures, bearing the mark 'WALMART/WAL-MART' may be collected and filed along with the report;

iv) The Local Commissioner may take assistance from the Local SHO in executing the Commission.

v) The Local Commissioner is permitted to take photographs or videography of the proceedings if it is deemed appropriate. Two representatives of the Plaintiff, which would include a lawyer, are Signature Not Verified Digitally Signed CS(COMM) 266/2022 Page 4 of 5 By:DEVANSHU JOSHI permitted to accompany the Local Commissioner;

vi) The Local Commissioner, while executing the Commission shall ensure that there is no disruption to the business of the Defendant except for the purposes of the execution of the Commission. The commission shall be executed in a peaceful manner and the Defendant shall cooperate with the Local Commissioner;

vii) The order passed today shall be communicated by the Local Commissioner to the Defendant. Copy of the order and complete paper book shall be served by the Local Commissioner upon the Defendant at the time of execution of commission.

20. The fee of the Local Commissioner is fixed at Rs.1,50,000/-.

21. The commission shall be executed on or before 15th May, 2022. Report shall be filed within 2 weeks thereafter.

22. Order Dasti.

23. This order shall not be uploaded till 15th May, 2022 for enabling the execution of the Commission.

24. List on 26th July, 2022.

PRATHIBA M. SINGH, J.

APRIL 27, 2022 Rahul/SK Signature Not Verified Digitally Signed CS(COMM) 266/2022 Page 5 of 5 By:DEVANSHU JOSHI