Delhi High Court
Kiran Jain & Ors. vs Kangaro Industries (Regd.) & Ors. on 3 June, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
Signature Not Verified
Digitally Signed By:Devanshu
Signing Date:04.06.2022
22:58:51
$~16
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 3rd June, 2022
+ CS (COMM) 415/2022
KIRAN JAIN & ORS. ..... Plaintiffs
Through: Mr. Rajiv Nayyar and Mr. Dayan
Krishnan, Sr. Advocates with Mr.
Shailen Bhatia, Mr. Rishi Agarwal,
Mr. Raghav Bhalla, Ms. Neelam
Pathak, Mr. Niyati Kohli, Mr. P.
Ranjit Bhattacharya, Ms. Manavi
Agarwal, Mr. Pratham Agrawal, Mr.
Shravan Niranjan and Mr. Sanjeevi,
Advocates. (M:9818690207)
versus
KANGARO INDUSTRIES (REGD.) & ORS. ..... Defendants
Through: Mr. Sudhir Chandra and Mr. Sandeep
Sethi, Sr. Advocates with Mr.
Vaibhav Vutts, Ms. Aamna Hasan
and Ms. Anupriya Shyam, Advocates.
(M:9971576500)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1. This hearing has been done through hybrid mode. I.A.9410-11/2022 (for exemption)
2. These are applications on for filing original/certified copies of the documents.
3. Recording the Plaintiffs' undertaking that the inspection of original documents shall be given, if demanded, or that the original documents shall be filed prior to the stage of admission/denial, the exemption is allowed.
4. Accordingly, I.A.9410-11/2022 are disposed of.
CS (COMM) 415/2022 Page 1 of 12 Signature Not Verified Digitally Signed By:Devanshu Signing Date:04.06.2022 22:58:51I.A.9409/2022 (for filing court fee)
5. This is an application seeking extension of time for filing court fees.
6. Ld. counsel for the Plaintiffs submits that the court fee has been deposited.
7. Let the stamp be filed within one week.
8. Accordingly, I.A.9409/2022 is disposed of. I.A. 9408/2022 (u/S 12A)
9. This is an application seeking exemption instituting pre-litigation mediation.
10. In view of the orders passed in CS (COMM) 132/2022 titled Upgrad Education Private Limited v. Intellipaat Software Solutions Private Limited, the application is allowed.
11. I.A. 9408/2022 disposed of.
I.A.9407/2022 (for discovery of documents)
12. This is an application filed on behalf of the Plaintiffs for seeking discovery of documents.
13. Issue notice.
14. Let a reply be filed within four weeks. Rejoinder thereto, if any, be filed within four weeks thereafter.
15. List on 22nd August, 2022.
I.A.9406/2022 (u/O XXXIX Rules 1 & 2 CPC) & CS (COMM) 415/2022
16. The present suit is filed by the Plaintiff seeking relief in the nature of anti-suit injunctions. The Plaintiffs seek a permanent injunction restraining the Defendants from filing, instituting or prosecuting any trademark application and/or litigation proceedings based on registrations in any foreign jurisdictions, in relation to the mark 'KANGARO'.
CS (COMM) 415/2022 Page 2 of 12 Signature Not Verified Digitally Signed By:Devanshu Signing Date:04.06.2022 22:58:5117. The dispute in this matter relates to the trademark 'KANGARO'. The said mark is being used by both, the Plaintiffs and Defendants, in respect of the manufacture of various stationery products, staplers, hole punchers and other related goods.
18. The following parties are brothers -
Mr. Jaininder Jain- Plaintiff No.2, Mr. Arihant Jain- Defendant No.2, and Mr. Vishwa Jain- Defendant No.3, are three brothers. The suit has been filed by the Plaintiffs i.e. Ms. Kiran Jain- Plaintiff No.1, Mr. Jaininder Jain - Plaintiff No.2 and M/s Kanin India Limited - Plaintiff No.3 against the Defendants. Disputes arose between the parties sometime in the year 1992. Since then, the parties have been at loggerheads with each other, both in India and in foreign countries.
19. The reliefs sought in the suit are:
"(i) Pass a decree of permanent injunction restraining the Defendants, jointly or severally, from filing, commencing, instituting, continuing or prosecuting any litigation or proceedings or trademark action or trademark application in respect of the Trademark "KANGARO" (including any deceptively similar mark) in any jurisdiction outside India against the Plaintiffs for inter alia stopping, hindering, restricting, objecting to the use of the Trademark "KANGARO"
by the Plaintiffs in any jurisdiction outside India, and consequently restrain the Defendants from taking any benefit of any trademark registrations obtained in respect of the Trademark "KANGARO" (including any deceptively similar mark) against the Plaintiffs.
(ii) Pass a decree of mandatory injunction directing Defendants, jointly or severally, to withdraw all pending CS (COMM) 415/2022 Page 3 of 12 Signature Not Verified Digitally Signed By:Devanshu Signing Date:04.06.2022 22:58:51 applications/rectifications/oppositions/cancellations or similar proceedings thereto in respect of the Trademark "KANGARO" and/or file appropriate actions for cancellation of registrations obtained by Defendants in relation to Trademark "KANGARO" in foreign jurisdictions including those mentioned in Schedule A hereto which is filed along with the List of Documents.
(iii) Pass a decree of permanent injunction restraining the Defendants (jointly or severally) from holding out or claiming to be the proprietors/owners of the Trademark "KANGARO" ( or any other deceptively similar mark) in any foreign jurisdictions including those mentioned in Schedule A hereto which is filed along with the List of Documents."
20. Mr. Rajiv Nayyar along with Mr. Dayan Krishnan, ld. Senior Counsels for the Plaintiffs and Mr. Sudhir Chandra and Mr. Sandeep Sethi, ld. Senior Counsels for the Defendants have made their submissions on the prayers which have been sought by the Plaintiffs.
21. The undisputed position in this matter as of today is that both the parties are using the mark 'KANGARO' and manufacturing stationery products in India. Both the parties are also exporting the said goods to various countries under the said mark. Both the parties have filed several trademark applications, as well as opposition proceedings in various countries, which are being contested before the respective trademark authorities.
22. One of the earliest suits, was filed by the Plaintiffs and instituted in Ludhiana, wherein an interim injunction order was granted on 7 th January, 1997 against the Defendants. The said suit was thereafter transferred to the Delhi High Court.
CS (COMM) 415/2022 Page 4 of 12 Signature Not Verified Digitally Signed By:Devanshu Signing Date:04.06.2022 22:58:5123. In 2006 the Plaintiffs were further aggrieved when the Plaintiff's goods bearing the mark 'KANGAROO' were seized in Dubai, as being counterfeit products. This seizure had taken place at the instance of the Defendants who had made complaints made by the Defendants to the Dubai authorities. In view of the said seizure, the Plaintiffs filed a contempt petition, CCP No. 127/2006 before ld. Single Judge of this Court, along with an interim injunction application I.A 11389/2006 alleging that the Defendants had violated the order dated 7th January 1997 passed in CS(OS) No. 156/2004. These contempt proceedings led to an order dated 18th December, 2006 granting the interim injunction against the Defendants, which restrained them from pursuing litigation in Dubai. The Defendants' appeal from the said order stood dismissed by the Division Bench of this Court in FAO (OS) No. 768-771/2006 on 29th January 2007. The said order came to be challenged before the Supreme Court in SLP No. 3362/2007.
24. Vide order dated 2nd March, 2007, the Supreme Court directed as under:
"Issue notice.
Mr. Sudhir Nandrajog, learned counsel waives notice on behalf of the respondents. List this matter on 30.03.2007 to enable the parties to explore the possibility of amicable settlement, the dispute being between the near relatives.
In the meantime, the petitioners shall be allowed to file rejoinder-affidavit before the Dubai Court by 06.03.2007.
Learned senior counsel on both the sides undertake to request the Dubai Court to adjourn the hearing on the ground that the parties to the dispute are exploring possibility of amicable settlement out of the Court the interim."CS (COMM) 415/2022 Page 5 of 12 Signature Not Verified Digitally Signed By:Devanshu Signing Date:04.06.2022 22:58:51
25. Thereafter, on 8th March, 2007, the following order was passed by the Supreme Court.
"We see no ground for clarification or modification of our order dated 02/03/2007.
Counsel on both sides, however, assure us that they maintain status quo till the next date of hearing in regard to the pending litigation in other countries as well."
26. On 15th February, 2010, the Supreme Court passed the following order:
"There are disputes between the parties regarding the use of trade symbol. The parties are closely related. We feel that it is just and proper that the matter be referred to the Delhi High Court Mediation Centre. Parties/their representatives/counsel will appear before the Mediation Centre on 11th March, 2010.
Till 11th March, 2010, either parties or their agents shall not prosecute proceedings pending in various courts in different countries, including Sri Lanka.
Post after six weeks."
27. On 17th August, 2017, the following order was passed by the Supreme Court:
"The parties are present before us today. We had some interaction with the members of the family who are present in Court.
It is heartening to note that after 22 years, the communication in the family has been restored. All the three brothers have submitted that they will try to find out an amicable solution of the disputes in the interests of the family.
Post on 14.09.2017.
Since the Court is making an attempt for an amicable settlement, there shall be stay of all pending civil/criminal cases between the parties before the CS (COMM) 415/2022 Page 6 of 12 Signature Not Verified Digitally Signed By:Devanshu Signing Date:04.06.2022 22:58:51 various courts in India. We also restrain the parties from instituting any fresh complaint/case before any authority or court in India, without obtaining orders from this Court. The parties are also restrained from pursuing or initiating litigations abroad as well."
28. Finally, vide order dated 6th April, 2022, the said SLP was allowed and the matter was disposed of by the Supreme Court in the following terms:
"This appeal takes exception to the judgment and order dated 29.01.2007 passed by the High Court of Delhi at New Delhi in FAO (OS) No. 768-71 of 2006. The stated appeal was filed by the appellant against the order passed by the learned Single Judge on 18.10.2006 in contempt petition. The contempt action was initiated in reference to the status quo order passed by the Additional District Judge, Ludhiana dated 07.01.1997.
The respondent had filed a suit for the following relief:
"It is therefore, prayed that a decree for grant of permanent injunction restraining the defendants Nos.1 to 4 themselves, or through their employees, servants, representatives assigns, etc. from getting the trade mark "KANGARO" transferred in their favour of in favour of any of the firms fallen to their share in the family arrangement dated 10.04.1995/14.04.1995 and restraining them from selling manufacturing exhibiting, advertising, in any manner the said trade mark "KANGARO" or its products or by-products and restraining them from using the said trade mark in any manner whatsoever and further restraining them from getting the same registered in their names with the defendants No.5 and 6 and further directing defendants no. 1 to 4 to deliver to the plaintiffs all the goods lying manufactured with them under the goods lying manufactured with them under the goods lying manufactured with them under the trade mark CS (COMM) 415/2022 Page 7 of 12 Signature Not Verified Digitally Signed By:Devanshu Signing Date:04.06.2022 22:58:51 "KANGARO" along with its materials, blocks, tools and dies, advertising materials etc. and decree for the rendition of accounts be passed in favour of the plaintiffs and against the defendants with costs. Any other additional or alternative relief to which the plaintiffs be found entitled to in the circumstances of the case, be also granted."
In that suit, the Additional District Judge, Ludhiana passed the interim order on 07.01.1997, which read thus:
"The application under Section 8 of the New Arbitration Act has been dismissed as not pressed. Learned counsel for respondents Nos. 1 to 4 claims that he is the registered owner of Trade Mark Kangaru. Plaintiff No.1 claims that he is using the same as owner. Let status quo regarding use of trade mark be maintained and W.S. be filed on 10.01.1997."
The respondent later on filed contempt petition and in contempt petition, learned Single Judge passed the following order on 10.10.2006:
"Notice to show cause to the respondents. Notice accepted on behalf of the respondents. At request by the learned counsel for the respondents renotify on 13th October, 2006.
In the meantime, the respondents shall not pursue the matter further before Dubai Court concerning infringement action in respect of trade mark "Kangaro"."
This interim order was confirmed by the learned Single Judge by order dated 18th December 2006 which was to operate till the disposal of the contempt petition. This order was subject matter of appeal before the Division Bench which has been rejected, and against which, the present appeal has been filed.
CS (COMM) 415/2022 Page 8 of 12 Signature Not Verified Digitally Signed By:Devanshu Signing Date:04.06.2022 22:58:51After hearing learned counsel for the parties, while avoiding to record the detailed reasons as it may affect the claim of one or the other party in the pending proceedings, suffice it to observe that the order passed by the learned Single Judge on 10.10.2006 in contempt action was unwarranted and avoidable.
We say so because it is not open to the Court in contempt jurisdiction to enlarge the scope of relief claimed in the main proceedings being CS(OS) No. 156 of 2004 and more so, when the initial interim relief (07.01.1997) is limited to the registered trademark "KANGARO", in India.
The status quo order dated 07.01.1997 passed by the Additional District Judge, Ludhiana clearly records the stand of the appellant(s) that they are the registered owner of trademark "KANGARO". That stand is yet to be adjudicated in the pending suit.
Accordingly, we have no hesitation in setting aside the interim orders dated 10th October 2006 and 18th December 2006 passed by the learned Single Judge in the contempt petition as well as the impugned judgment of the Division Bench of the High Court.
However, we clarify that it will be open to the respondent-plaintiff to take recourse to other proceedings for appropriate relief including for antisuit injunction in respect of foreign jurisdiction or simplicitor injunction, as may be advised, which proceedings can be examined on its own merits by the concerned Court uninfluenced by the impugned judgment.
In other words, all contentions available to the parties with regard to the respective claims are left open, to be decided as per law in ·the pending proceedings or future proceedings, to be resorted to by them.
The civil appeal is allowed in the above terms and the accompanying contempt petition and CCO No. 127 of 2006 are also disposed of in terms of this order.
CS (COMM) 415/2022 Page 9 of 12 Signature Not Verified Digitally Signed By:Devanshu Signing Date:04.06.2022 22:58:51Pending applications, if any, stand disposed of. "
A perusal of the above orders passed by the Supreme Court reveal that for a substantial period of time, the parties were either directed to seek adjournments in the proceedings in various foreign jurisdictions or the proceedings had remain stayed/in abeyance. In the final order dated 6th April 2022, the Plaintiffs herein were given liberty to seek their remedies of an anti-suit injunction.
29. While the SLP proceedings were ongoing, vide letter dated 18th November, 2021, ld. Counsel for the Defendants' wrote to the Plaintiffs seeking their consent for extension in filing evidence in the opposition proceedings pending in the trademarks registry in Malaysia. The period for the same was to lapse on 2nd June, 2022.
30. In view of the above, Mr. Nayyar, ld. Senior Counsel submits that, there is an apprehension that the Defendants may start pursuing various remedies before the trade mark authorities and other authorities as also file further civil and criminal proceedings in foreign countries where the Plaintiffs are exporting their products.
31. On a specific query by the Court, ld. Senior Counsels for the Defendants submit that at this point in time, the Defendants are pursuing their respective trademark registrations and also safeguarding their statutory rights in the respective countries. But there is no civil or criminal proceedings being pursued, though there are proceedings which are pending that are currently in abeyance owing to the various orders passed by the Supreme Court set out above. Thus, it has been categorically submitted that there is no pending civil or criminal proceeding, which is currently being CS (COMM) 415/2022 Page 10 of 12 Signature Not Verified Digitally Signed By:Devanshu Signing Date:04.06.2022 22:58:51 prosecuted by the Defendants against the Plaintiffs or by the Plaintiffs against the Defendants in foreign jurisdictions.
32. However, it has been brought to the notice of the Court by the ld. Counsels, that there are certain proceedings, which were already instituted, which have been adjourned due to the orders passed by the Supreme Court in SLP.
33. In view of the facts of this dispute and the submissions made, though the mediation which had been previously attempted in 2010 may have not achieved any fruition, considering these disputes have been ongoing for over 27 years between brothers and their families, and also bearing in mind that there were interim orders which were operating for a long period while disputes were pending before the Supreme Court, this Court is of the view that an amicable resolution ought to be attempted once again. Such an attempt is also deemed appropriate owing to the ensuing summer vacations beginning tomorrow, which can be utilised for this purpose.
34. Accordingly, Justice Kurian Joseph (Retd Judge of Supreme Court of India M: 9999775444), is appointed as the Mediator to mediate the disputes between the parties. The parties and their respective families, who are competent to take decisions, shall appear before the ld. Mediator on the date fixed. Ld. Counsels for the parties shall coordinate with the Hon'ble Mediator for fixing of date and venue for the first meeting. The fee of the ld. Mediator is fixed at Rs.5 lakhs, at this stage, to be shared equally by both the parties.
35. In the meantime, considering that as on today, both parties are still using the mark 'KANGARO' and also exporting their respective products, the following interim directions are passed:
CS (COMM) 415/2022 Page 11 of 12 Signature Not Verified Digitally Signed By:Devanshu Signing Date:04.06.2022 22:58:51A. Both parties are permitted to pursue their trademark applications, opposition proceedings and other statutory proceedings before the trademark authorities in India and in foreign countries;
B. However, if any step is taken by either party in any country to revive or institute any fresh civil or criminal proceeding, the opposing party is permitted to approach this Court, including if required before the Vacation Bench.
C. If there is any statutory limitation which is expiring with respect to any ongoing proceedings between the parties, steps can be taken by the parties to avoid non-compliance but no coercive action shall be taken. However, notice must be given to the other parties.
36. This order shall continue to operate until the next date of hearing i.e., 22nd August, 2022.
37. List on 22nd August, 2022.
38. If there is no settlement by the next date, the matter shall be heard on merits on the next date of hearing.
39. The digitally signed copy of this order, duly uploaded on the official website of the Delhi High Court, www.delhihighcourt.nic.in, shall be treated as the certified copy of the order for the purpose of ensuring compliance. No physical copy of orders shall be insisted by any authority/entity or litigant.
PRATHIBA M. SINGH JUDGE JUNE 3, 2022/dk/ms/ss CS (COMM) 415/2022 Page 12 of 12