Delhi High Court - Orders
Khadi & Village Industries Commission vs Khadi Design Council Of India And Others on 28 May, 2021
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~11
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 244/2021
KHADI & VILLAGE INDUSTRIES COMMISSION ..... Plaintiff
Through: Ms. Shwetasree Majumder, Ms. Diva
Arora and Ms. Eva Bishwal,
Advocates.
versus
KHADI DESIGN COUNCIL OF INDIA AND OTHERS
..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 28.05.2021 [VIA VIDEO CONFERENCING]
I.A. 6813/2021 (for exemption from filing originals, clear copies and documents with proper margins)
1. Exemption allowed, subject to all just exceptions.
2. The application is disposed of.
I.A. 6815/2021 (seeking exemption from filing notarized affidavits)
3. The present application under Section 151 of the Code of Civil Procedure, 1908 (in short 'CPC') on behalf of the Plaintiff seeks exemption from filing notarized affidavits.
4. The application is allowed, subject to the Plaintiff filing the exempted documents within two weeks from the day the lockdown restrictions CS(COMM) 244/2021 Page 1 of 9 imposed by the Government of NCT of Delhi are lifted and the facility for attestation of affidavits is resumed.
5. The application stands disposed of.
I.A. 6812/2021 (u/O 11 R 1(4) of the Commercial Courts Act, 2015 r/w Section 151 CPC for filing additional documents)
6. 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.
7. The Plaintiff, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act. I.A. is disposed of.
I.A. 6814/2021 (seeking exemption from filing the court fee)
8. Ms. Shwetasree Majumder, learned counsel for the Plaintiff states that the court fees of Rs. 2,03,000/- has been paid on behalf of the Plaintiff by the counsel from their own bank account, however the necessary court fees stamps were not issued. She states that the e-court fees has not been issued on the ground that the court fees has not been directly transferred by the Plaintiff.
9. The application is allowed, and the Plaintiff is permitted to file the court e- court fees stamps within a period of one week from today.
CS(COMM) 244/2021 Page 2 of 910. The application stands disposed of.
CS(COMM) 244/2021
11. Let the plaint be registered as a suit.
12. Upon filing of process fee, issue summons to the Defendants by all permissible modes. Summons shall state that the written statements shall be filed by the Defendants within 30 days from the date of receipt of summons. Along with the written statements, the Defendants shall also file affidavits of admission/denial of the documents of the Plaintiff, without which the written statements shall not be taken on record.
13. Liberty is given to the Plaintiff to file replications within 15 days of the receipt of the written statements. Along with the replications, if any, filed by the Plaintiff, affidavits of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replications shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
14. List before the Joint Registrar for marking of exhibits on 29th July, 2021. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
15. List before Court for framing of issues thereafter on 15th September, 2021.
CS(COMM) 244/2021 Page 3 of 9I.A. 6811/2021 (under Order XXXIX Rule 1 and 2, CPC)
16. The Plaintiff has filed the present suit for permanent injunction restraining infringement of trademark, passing off, rendition of accounts, damages, delivery-up etc. The case as set up in the plaint is that the Plaintiff is a statutory body established under the Khadi and Village Industries Commission Act, 1956. It is the prior adopter and owner of the wordmark KHADI, and device marks and (in short 'the KHADI trademarks'). It is also the proprietor of several distinctive logos including the and logos (in short 'the Charkha logos'). The Plaintiff is the registered proprietor of the KHADI trademarks in several classes in India of which details have been provided in paras 11 to 13 of the plaint. The said trademarks are valid and subsisting and have been declared to be well-known marks in multiple administrative proceedings.
17. Plaintiff asserts that since its formation in the year 1957, it has been carrying on the work related to implementation of programmes for the development of Khadi and other village industries in the rural areas in- coordination with other agencies. The Plaintiff adopted the trademark 'KHADI' on 25th September, 1956 and the same has been in use continuously till date. By virtue of its adoption more than sixty years ago and extensive use thereof, the trademark 'KHADI' is the sole and exclusive intellectual property of the Plaintiff. The KHADI trademarks not only act as CS(COMM) 244/2021 Page 4 of 9 source identifiers but also as symbols of purity and authenticity. It is the most essential and prominent feature of the Plaintiff's trademarks and its tradename/corporate names, and the Plaintiff has been using the same and label 'Khadi' on a wide range of products.
18. It is also asserted that the Plaintiff uses the trademark and label KHADI on a wide range of products and operates on several social media platforms and a mobile application by the name of 'Khadi India' and by virtue of extensive use, the trademark KHADI has become exclusively and globally associated with the Plaintiff, in the eyes of consumers.
19. In 2013, Plaintiff brought into force the 'Khadi' Mark Regulations, 2013 (in short 'Regulations') which apply to persons who are engaged in production, sale or trading of 'KHADI' and KHADI products and who are desirous of producing, selling or trading of 'KHADI' and KHADI products and to certify KHADI Institutions. The said Regulations provide guidelines for using KHADI trademarks such as affixing khadi mark, tag or label or both as decided by the Plaintiff.
20. Ms. Majumder states that the Plaintiff first became aware of the infringing activities of the Defendants in December, 2019 when it came to know of the events 'National Khadi Designers Awards, 2019' and 'Miss India Khadi' being organized by Defendant Nos. 1 to 3 in Goa from 19th December, 2019 to 22nd December, 2019. On 17th December, 2019, the Plaintiff sent a legal notice to Defendant No. 3 apprising him of its rights in the KHADI trademarks and directing him to cancel the aforesaid events. On CS(COMM) 244/2021 Page 5 of 9 18th December, 2019, the Plaintiff also filed complaints with the Collector, North Goa and the Director General of Police, Panjim, requesting their assistance in issuing necessary directions to restrain the Defendants from conducting the aforesaid events. On 19th December, 2019, Plaintiff's State Director, Goa along with other officials from the Plaintiff's State Office in Goa visited the aforesaid event, and noted that the Defendants had removed the use of the trademark KHADI and the logo from their banners, posters, hoardings etc.
21. Ms. Majumder further submits that during a routine check in March, 2020, the Plaintiff came across the websites 'www.kdci.org' and 'www.missindiakhadi.in' which appear to be owned and operated by Defendant No. 1 and Defendant No. 2 respectively. Also, the Defendant Nos. 1 to 3 operate an e-commerce website 'www.paridhaanam.com'- Defendant No. 4, which is analogous to the Plaintiff's e-commerce website 'www.ekhadiindia.com'. It was noted that the Defendants are using the Plaintiff's registered trademark KHADI as part of their tradenames 'KHADI DESIGN COUNCIL OF INDIA' and 'MISS INDIA KHADI FOUNDATION', as well as their logos , and . They are also using the logo which is deceptively CS(COMM) 244/2021 Page 6 of 9 similar to the Plaintiff's Charkha logos which have been noted above in para
16.
22. On 11th March, 2020, the Plaintiff proceeded to send yet another letter to Defendant No. 3 referring to the letter of 17th December, 2019 and once again directed the Defendants to cease use of the Plaintiff's trademarks. The Plaintiff did not receive any response from Defendant No. 1 and there was also no compliance with respect to its online use. Given the COVID-19 pandemic which followed, the Plaintiff decided against pursuing any legal action and simply monitored the Defendants' online activities.
23. On 31st August, 2020, the Defendants announced their event 'Miss India, Khadi' and continued to share information regarding auditions and registrations for 'Miss India, Khadi' on several dates after that, till 2nd March, 2021. However, given the COVID-19 pandemic, it appears that the event did not take place, until now. On 27th November, 2020, Defendant No. 2 announced on Facebook that it has updated its website and also called for registrations from fashion designers for a one-week certificate program. The Plaintiff sent a follow up legal notice to Defendant No. 1 on 7th January, 2021 giving it a final opportunity to comply with the Plaintiff's directions and cease use of the impugned trademarks. The Defendants did not acknowledge the Plaintiff's letter or comply with its asks and continued to advertise its events on Facebook. On 21st May, 2021, the Defendants announced another event 'Miss and Mrs India Khadi, 2021'. In light of the above, the Plaintiff was constrained to file the present suit.
CS(COMM) 244/2021 Page 7 of 924. Ms. Majumder has contended that the Defendants' websites and social media pages have been scripted and structured in a manner that gives the impression that the Defendants are the same as the Plaintiff and/or they are part of a Government body providing the same services as the Plaintiff. The same demonstrates the serious bad faith on part of the Defendants and their intention to mislead the consumers and ride on the Plaintiff's goodwill.
25. In view of the above, the Plaintiff has established a prima facie case in its favour. The balance of convenience also lies in favour of the Plaintiff and an irreparable loss would be caused to the Plaintiff, in case an ex-parte interim injunction is not granted. Accordingly, till the next date of hearing, the Defendants, their partners, servants, representatives, agents and all others acting for and on their behalf are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly providing any kind of goods and/or services under the trademark 'KHADI', either as a word or as part of its tradename or logo, the , , and logos and/or any mark identical or deceptively similar to the Plaintiff's registered KHADI trademarks and Charkha logos, that may amount to infringement and/or passing off of the Plaintiff's registered trademarks.
CS(COMM) 244/2021 Page 8 of 926. Further, the Defendants are directed to take down their Facebook, Instagram and YouTube pages under the mark tradename "Khadi Design Council of India" and "Miss India Khadi" and the infringing content from their websites being 'www.paridhaanam.com', 'www.kdci.org' and 'www.missindiakhadi.in'.
27. Compliance of Order 39 Rule 3 be done within a period of one week from today.
28. List before the Joint Registrar for completion of pleadings on 29 th July, 2021.
29. List before the Court on 15th September, 2021.
SANJEEV NARULA, J MAY 28, 2021 nk CS(COMM) 244/2021 Page 9 of 9