Delhi District Court
S. Charanjit Singh vs Pravinder Pal Singh on 31 January, 2025
IN THE COURT OF SH.RAJ KUMAR TRIPATHI:
DISTRICT JUDGE (COMMERCIAL COURT)-08,
SOUTH-EAST DISTRICT, SAKET COURTS, NEW DELHI
TM-99/2018
(S. Charanjit Singh & Ors. vs. Parvinder Pal Singh)
CNR No. DLSE01-004380-2018
1. S. Charanjit Singh
Sole Proprietor of
M/s Basant Ice Cream(Regd.)
Kucha No. 5, Field Ganj, Ludhiana (Punjab)
Also At
Shop No. 20, Jangpura Extension Market,
Opp. Eros Theatre, New Delhi-110 014.
(Plaintiff No.1)
2. S. Rajinder Singh
Trading as M/s Basant Dairy
SCO-18 (Double Storey)
Rajguru Nagar, Main Market,
Ludhiana (Punjab).
(Plaintiff No.2)
3. S. Gurdeep Singh Kharbanda,
S/o Late S. Gubachan Singh,
Sole Proprietor of M/S Pal's,
Shop No. 20, Jangpura Extension Market,
Opp. Eros Theatre, New Delhi-110 014.
(Plaintiff No.3)
.............Plaintiffs
Through:- Mr. Shailen Bhatia
along with Mr. Amit Jain
and Mr. Ashutosh Pandey, advocates.
Versus
Raj Shri Pravinder Pal Singh
Kumar Trading As M/s Pal Basant Ice Cream,
Tripathi Shop No.3, R.S. Model School Market,
Digitally signed by Model Town Extension, Ludhiana 141002, Punjab.
Raj Kumar
Tripathi
Date: 2025.02.01 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 1 of 48
15:34:55 +0530
Also At
Shop Opp. Gurudwara Fatehpuri, Delhi.
..........Defendant
Through:- Mr. Praveen Singh
along with Mr. Balendra Prasad Tiwari
and Mr. Rameshwar Prasad Saha, advocates.
Date of filing of suit : 23.05.2018
Arguments heard on : 04.01.2025, 07.01.2025
Date of Judgment : 31.01.2025
JUDGMENT:
1.1 Plaintiffs filed the present suit on 23.05.2018 against defendant inter alia praying for grant of the following reliefs:-
"a) An Order for permanent injunction restraining the Defendant, its officers, as the case may be, its servants, agents, dealers, distributors and all others acting for and on its behalf from manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing with Ice Cream, Kulfi and other cognate/allied goods under the trade mark PALBASANT or any other identical/deceptively similar trade mark to the Plaintiffs' trade mark BASANT amounting to infringement of registered trade mark No. 453561 in class 30 and others.
b) An Order for permanent injunction restraining the Defendant, its officers, as the case may be, its servants, agents, dealers, distributors and all others, acting for and on its behalf from manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing in goods such as Ice Cream, Kulfi and other cognate / allied goods under the trade mark PALBASANT or any other identical / deceptively similar trade mark to the Digitally Plaintiffs' trade mark BASANT or from doing any other signed by thing as is likely to lead to confusion or deception Raj Raj Kumar Tripathi thereby resulting in passing off the Defendant's goods Kumar Date: as those of the Plaintiffs.
Tripathi 2025.02.01 c) An Order for permanent injunction restraining 15:35:08 +0530 the Defendant, its officers, as the case may be, its TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 2 of 48 servants, agents, dealers, distributors and all others acting for and on its behalf from manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing in goods such as Ice Cream, Kulfi and other cognate / allied goods under the trade mark PALBASANT or any other identical / deceptively similar trade mark as part of the trade name which is in violation of rights of the Plaintiffs acquired by the first adoption of word BASANT.
d) An order for permanent injunction restraining the Defendant, its proprietor, partners as the case may be, its servants, agents, dealers, distributors and all others acting for and on its behalf from manufacturing, exporting, selling, offering for sale, advertising, exhibiting, directly or indirectly dealing in goods Ice Cream, Kulfi etc. and other cognate / allied goods under the trade mark PALBASANT and the labels/ packaging or any other identical/ deceptively similar trade mark to the Plaintiffs' trade mark BASANT and the labels/ packaging amounting to infringement of Copyright of the Plaintiffs in the artistic work titled as BASANT.
e) An Order for delivery up of all material including labels, blocks, dies, strips, cartons, stationery, literature or any other printed matter bearing the alleged label for the purpose of destruction and / or erasure.
f) For an Order of Damages caused to reputation and goodwill of the Plaintiffs on account of use of the alleged trade mark PALBASANT by the Defendant.
Any further order/ orders as this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case may also be passed in favour of the Plaintiffs and against the Defendant." Factual Matrix of the case 2.1 Plaintiff no.1 S. Charanjit Singh is sole proprietor of M/s Basant Ice Cream (Regd.) having office at Kucha No.5, Field Ganj, Ludhiana (Punjab) and also a shop at Shop No.20, Raj Kumar Jangpura Extension Market, Opp. Eros Theatre, New Tripathi Delhi-110014. Plaintiff no.2 S. Rajinder Singh is sole proprietor Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 3 of 48 15:35:20 +0530 of M/s Basant Dairy having office at SCO-18 (Double Storey), Rajguru Nagar, Main Market, Ludhiana (Punjab). He is also Managing Director of the company M/s Basant Dairy Foods Pvt. Ltd.
2.2 As per plaintiffs, at the time of institution of the suit, Late S. Jaspal Singh trading as M/s Pal Refreshment Corner having address at Shop No.20, Jangpura Extension Market, Opp. Eros Theater, New Delhi-110014 was impleaded as plaintiff no.3. Late S. Jaspal Singh was the dealer and licensee of the plaintiff no.1 for Delhi for carrying on the business of selling various types of Ice Cream, Kulfi and Pastries etc. under the trade mark/label 'BASANT' of plaintiff no.1. However, the said S. Jaspal Singh expired on 21.03.2022. The said business of Late S. Jaspal Singh is now run by his brother S. Gurdeep Singh Kharbanda at the same aforementioned address under the different firm name M/s Pal's and S. Gurdeep Singh Kharbanda is the proprietor of the said firm. Plaintiff no.1 has entered into a fresh dealership agreement dated 20.07.2022 with S. Gurdeep Singh Kharbanda, proprietor of the firm M/s Pal's, who is now a dealer/licensee of plaintiff no.1.
2.3 Plaintiff no.1 is providing restaurant and food services, catering, manufacturing and dealing in ice cream, kulfi, ice cream powder and dry fruits etc. Plaintiff no.2 has a restaurant named Basant Resorts and a banquet hall named Raj Kumar Basant Food Plaza at Malar Road, Ludhiana. Tripathi Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 4 of 48 15:35:30 +0530 2.4 Plaintiffs aver that plaintiff no.1 firm was initially established in 1960 by S. Lal Singh, who was the grandfather of the present proprietor of the plaintiff firm. The grandfather of the present proprietor of the plaintiff no.1, S. Lal Singh preferred an application for registration of trade mark BASANT and the application was numbered as 453561 in class 30 and advertised in Journal No. 960.
2.5 S. Lal Singh died on 30.05.1989. S. Rajinder Singh son of S. Lal Singh and father of the present proprietor of the plaintiff no.1 firm took over the firm M/s Basant Ice Cream (Regd.) as the Sole Proprietor. The trade mark BASANT under No. 453561 in class 30 was granted registration in the name of S. Rajinder Singh. Later, the firm became a partnership firm of S. Kanwalpreet Singh and S. Charanjit Singh. Thereafter, there was a Dissolution Deed dated 01.12.2007 and the firm M/s Basant Ice Cream has come to share of S. Charanjit Singh and now S. Charanjit Singh-the plaintiff no.1 is the sole proprietor of the firm M/s Basant Ice Cream.
2.6 Plaintiff no.2 S. Rajinder Singh is engaged in the business of dealing in milk products. Both the firms of plaintiffs i.e. M/s Basant Ice Cream (Regd.) and M/s Basant Dairy are owned and controlled by family members. Plaintiff no.1 is Raj presently registered proprietor of the following trade marks:-
Kumar Tripathi No. S. Registration No./Class And Trade Mark Goods Digitally signed Journal No. User Since by Raj Kumar Tripathi Date: 2025.02.01 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 5 of 48 15:35:41 +0530 A. 453561 Basant Ice Cream, Ice Cream In Class 30 User Since Powder, Kulfi Ice Journal No. 1373 01.01.1960 B. 2129221 Basant Ice Cream Parlours, In Class 43 (Label) Providing Of Sweets, Ice Journal No. : Creams And Kulfi Only 1544-0 User Since (Except Motels Banquet 01.01.1952 Halls, Marriage Palace, Entertainment Park, Providing Of Food, Drinks And Temporary Accommodation, Restaurants Including Self Service And Fast Food Restaurants), Cafe Shops, Fast Food Junctions Included In Class 43.
2.7 Plaintiff no.2 is the registered proprietor of the following trade mark:-
S. Registration Trade Mark Goods
No. No./Class And User Since
Journal No.
A. 804321 Basant Ice Cream, Ice Cream
In Class 30 (Device) Powder, Kulfi, Jelly
Journal No. User Since Puddings, Ready To Serve
1329-1 01.01.1990 Cereal Dishes, Cakes,
Pasteries, Pizzas, Food
Mixtures Containing Cereals
And Dried Fruits.
2.8 Plaintiffs have many other group entities such as
Basant Dairy Foods Pvt. Ltd., Basant Resorts and Basant Food Raj Kumar Plaza etc. The word Basant is omnipresent in the said trade Tripathi Digitally signed by Raj Kumar Tripathi TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 6 of 48 Date: 2025.02.01 15:35:54 +0530 names. Plaintiff no.1 is also holding following copyright registrations:-
Sl. No. Trade mark Copyright Regn. No.
a. BASANT THE REAL TASTE A-74870/2005
b. BASANT THE REAL TASTE A-74871/2005
2.9 Plaintiffs claim to have been continuously and
uninterruptedly using the trade mark/label BASANT since long and by reason of exclusive use for such a long and continuous period, a valuable and exclusive goodwill and reputation has accrued to the trade mark/label BASANT. Due to high quality of their products/services, state of art technology employed in manufacture of goods, the plaintiffs' trade mark/label BASANT has attained unimpeachable reputation. The trade mark/label BASANT is distinctive and identified exclusively with the goods of the plaintiffs.
2.10 As per plaintiffs, due to high quality of their products and enviable reputation of their trade mark BASANT, the public and the members of trade associate with the trade mark BASANT of plaintiffs and none else. Plaintiffs have been using the trade mark BASANT extensively for the last 56 years. They have been using the trade mark BASANT for so many years Raj without any objection and/or hindrance from any quarter Kumar Tripathi Digitally signed by Raj Kumar Tripathi TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 7 of 48 Date: 2025.02.01 15:36:09 +0530 including the defendant. The sale figures of the firm-M/s Basant Ice Cream are as follows:-
Financial Year Sales Turnover (In Rs.)
(Previous year's record not
available)
2003-2004 5031818
2004-2005 11884936
2005-2006 13060677
2006-2007 13572342
2007-2008 19215627
2008-2009 23805484
2009-2010 27691297
2010-2011 30711092
2011-2012 42137669
2012-2013 63607310
2013-2014 78248298
2014-2015 88986194
2015-2016 111324163
2.11 Plaintiffs have extensively advertised the trade
mark/label BASANT for food items, ice cream and services of restaurants and banquet halls. The advertisement expenses of the firm M/s Basant Ice Cream are as follows:-
Financial Year Advertisement
Expenses (In Rs.)
(Previous year's record
not available)
2003-2004 24000
2004-2005 63110
2005-2006 35056
2006-2007 61024
2007-2008 22540
Digitally
signed by 2008-2009 3292
Raj Raj Kumar 2009-2010 61098
Tripathi
Kumar Date: 2010-2011 26415
Tripathi 2025.02.01 2011-2012 12544
15:36:21 2012-2013 100371
+0530
TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 8 of 48
2013-2014 94935
2014-2015 36440
2015-2016 128242
2.12 Plaintiffs' through their predecessors are the first
and prior adopters of the trade mark BASANT. The trade mark BASANT is used by the plaintiffs since 1952 as a word mark and since the year 1960 as a label mark. Plaintiffs are within their right to seek protection of their rights in respect of the trade mark/label BASANT.
2.13 Plaintiffs' goods under the trade mark/label BASANT are sold throughout the length and breadth of the country. Years of hard work and perseverance has created an enviable goodwill for the plaintiff in respect of the trade mark BASANT. Plaintiff no.1 has appointed plaintiff no.3 as its exclusive dealer and licensee for Delhi for the ice cream under the trade mark BASANT. The ice cream of plaintiff no.1 under the trade mark BASANT is available at shop no.20, Jangpura Extension Market, Opposite Eros Theater, New Delhi. 2.14 Plaintiffs claim to have attained an unrivaled reputation and goodwill for their trade mark/label BASANT. The trade mark BASANT is associated exclusively with the goods of the plaintiffs and their predecessor. Thus, on account of long, continuous and extensive user of the trade mark BASANT in relation to all kinds of ice cream, Kulfi, ice cream powder and Raj Kumar dry fruits etc. marketed by the plaintiffs, the trade mark Tripathi BASANT denotes and connotes the goods of the plaintiffs and of Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 9 of 48 15:36:47 +0530 none else. The public and trade persons associate the trade mark BASANT exclusively with the goods of the plaintiffs. The plaintiffs have made efforts to popularize their goods under the trade mark BASANT. People have come to believe that any product bearing the trade mark BASANT would be of excellent quality and material. Thus, plaintiffs have spent considerable amount of money to protect their rights in the trade mark/label BASANT.
2.15 Plaintiffs came to know about the use of trade mark PAL BASANT by one S. Pravinder Pal Singh trading as M/s PAL BASANT ICE CREAM. The impugned trade mark is identical/ deceptively similar to the trade mark BASANT of plaintiffs.
2.16 Plaintiffs allege that defendant S. Pravinder Pal Singh S/o S. Gurdeep Singh is trading as Pal Basant Ice Cream having office at Shop No.3, R.S. Model School Market, Model Town Extension, Ludhiana 141 002. Defendant has a shop at Opposite Gurudwara, Fatehpuri, Delhi. Defendant's father S. Gurdeep Singh adopted an identical trade mark and also an identical trade name with the word NEW BASANT. 2.17 Defendant has no locus standi to use the trade mark BASANT with prefix or suffix or seek registration of the trade mark BASANT. The addition of the word NEW by the Raj defendant's father was for mischievous purpose only.
Kumar 2.18 As per plaintiffs, defendant's father S. Gurdeep Tripathi Singh was an employee of S. Lal Singh, who later joined him for Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 10 of 48 15:37:05 +0530 sharing projects of business in the firm M/s Basant Ice Cream. Later, S. Gurdeep Singh left S. Lal Singh and started a business. S. Gurdeep Singh then filed an Opposition against the Application No. 453561 in class 30 of the plaintiffs and the Opposition was numbered as DEL 6376. The said Opposition was disallowed by learned Deputy Registrar of Trade Marks by passing an order dated 27.11.1992 and application no. 453561B in class 30 was allowed and directed to proceed for registration. 2.19 Thereafter, defendant's father preferred an appeal before the Hon'ble Delhi High Court against the aforesaid order passed by the learned Deputy Registrar of the Trade Marks. In the meanwhile, plaintiff no.1 firm then acting through its sole proprietor S. Rajinder Singh i.e. the plaintiff no.2 filed a civil suit against the defendant's father S. Gurdeep Singh. During the pendency of the said suit, plaintiff no.1 firm acting through S. Rajinder Singh and S. Gurdeep Singh, father of the proprietor of the Defendant firm- S. Parvindar Pal Singh amicably settled the matter.
2.20 Plaintiff no.1 and defendant's father had settled the matter and the same was recorded in order dated 22.02.1994 passed by the learned Additional District Judge, Ludhiana. It was agreed between the parties that defendant's father shall withdraw the appeal filed before the Hon'ble High Court of Delhi against Raj Kumar Tripathi order dated 27.11.1992 passed by the Deputy Registrar, Trade Marks, New Delhi in Opposition no. Del-6376. He shall also Digitally signed by Raj Kumar Tripathi withdraw application no. 4696528 in class 30 filed before the Date: 2025.02.01 15:37:19 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 11 of 48 Trade Marks Registry and shall have no objection, if the Opposition filed by S. Rajinder Singh before the said Registry against his said application is allowed. He further agreed that the entry relating to copy right 'BASANT' under no. A-21394/78 before the Hon'ble Copy Right Board is expunged. 2.21 Plaintiffs aver that the aforesaid litigations resulted in the plaintiff no.2 allowing the defendant. S. Gurdeep Singh to use the trade mark NEWBASANT only for its restaurant at Kucha No.6, Field Ganj, Jail Road, Ludhiana (Punjab). The said S. Gurdeep Singh had no right to seek registration of the trade mark NEW BASANT or open any other unit under the trade mark NEW BASANT. However, S. Gurdeep Singh violated the said permission.
2.22 Plaintiffs aver that defendant has no reputation or goodwill with regards to alleged trade mark. He has never advertised the alleged trade mark. Defendant was bound to use the word NEW BASANT only on ice cream and that to the counter at Field Ganj only. Any extension of business by him would be contrary to spirit of the compromise. Even otherwise, he was not a party to the compromise and the compromise was confined to S. Gurdeep Singh only. It is alleged that defendant is violating the statutory and common law rights of the plaintiffs in respect of trade mark BASANT.
Raj 2.23 Defendant claims to be the registered proprietor of Kumar Tripathi the trade mark PAL BASANT under No.1029646 in class 30.
Defendant through his predecessor has obtained the registration Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 12 of 48 15:37:29 +0530 by fraud and concealment of material facts. He had no locus standi to seek any rights in the alleged trade mark. Plaintiff no.1 filed a Rectification Petition against the alleged registration of the trade mark PALBASANT under No.1029646 in class 30 of the defendant. The said rectification is pending adjudication before the Hon'ble Intellectual Property Appellate Board. 2.24 Plaintiffs allege that defendant has deliberately kept the word PAL before BASANT. He has no locus standi in respect of the word BASANT. Addition of word PAL makes no difference. Defendant was aware of plaintiffs' proprietorship over the trade mark BASANT as well as first adoption and the condition imposed on his father to add "NEW" to the word "BASANT".
2.25 Defendant's selection and use of the trade mark is not honest from its very inception. Plaintiffs allege that defendant's use of the expression PALBASANT is an infringement and passing off their registered trade mark 'BASANT' and violation of common law rights vested in them. 2.26 Plaintiffs allege that defendant is involved in clandestine sales of its goods. Plaintiffs are the registered proprietor of trade mark BASANT for various goods such as Ice Cream, Ice Cream Powder, Kulfi, Ice and providing services such as Ice Cream Parlour of sweets, food, drink, temporary Raj Kumar accommodation and restaurants etc. Defendant has wrongly and Tripathi illegally sought to misappropriate the benefits of the good name, Digitally signed by quality and wide advertisement of the plaintiffs. These illegal Raj Kumar Tripathi Date: 2025.02.01 15:37:42 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 13 of 48 activities by the defendant have caused immense loss to the plaintiffs' image, reputation and goodwill. The clandestine activities of the defendant have created confusion and deception in the market and trade. Defendant is seeking to divest plaintiffs' business. He also copied plaintiffs' labels and thus, violate the copyright of plaintiffs.
2.27 On the aforesaid averments, plaintiffs have filed the present suit for permanent injunction restraining infringement of trade mark, passing off, infringement of copyright, damages and delivery up etc. against the defendant.
Defence of defendant 3.1 Pursuant to summons issued to defendant, he appeared before the court through his advocate on 04.08.2018. The defendant was directed to file written statement to the suit and reply to application under Order XXXIX Rules 1 & 2 r/w section 151 of The Code of Civil Procedure, 1908 (in short 'CPC'). The defendant instead of filing written statement, filed an application under Order VII Rule 10 r/w Rule 11 CPC. 3.2 The aforesaid application of defendant was dismissed on 15.01.2019. Defendant was again directed to file written statement within four weeks with advance copy to counsel for plaintiffs.
Raj Kumar 3.3 As defendant did not appear in the case on Tripathi 19.02.2019, he was directed to be proceeded ex parte and right of Digitally signed defendant to file written statement was directed to be closed. by Raj Kumar Tripathi TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 14 of 48 Date: 2025.02.01 15:37:58 +0530 3.4 Thereafter, defendant filed an application under Order IX Rule 7 r/w section 151 CPC. The said application of defendant was dismissed on 22.07.2019. Defendant was not allowed to file written statement to the suit in view of the fact that his right to file written statement was statutorily forfeited on 12.12.2019.
Evidence of parties 4.1 In support of their case, plaintiff no.1 examined himself as PW1 on 19.08.2019. PW1 S.Charanjit Singh filed his evidence by way of affidavit, Ex.PW1/A, wherein he has reiterated and reaffirmed the same facts as mentioned in the plaint.
4.2 Before coming to the testimony of PW1, the documents relied upon by him are hereby put in a tabulated form as under:-
S.No. Details of documents Exhibit Mark
1. Invoices of dispatch of goods sent by plaintiff Ex.PW1/1 no.1 to plaintiff no.3 (colly.)
2. Copy of dissolution deed dated 01.12.2007 Ex.PW1/2
3. Copy of Registration Certificate No.453561 in Ex.PW1/3 Class 30 (Colly.)
4. Legal proceeding certificate of Trademark Ex.PW1/4 Registration No.2129221 in Class 43 (Colly.)
5. Copy of registration certificate no.804321 in Ex.PW1/5 Raj Class 30 of plaintiff no.2 along with status Kumar 6. Extracts of register of copyrights bearing Ex.PW1/6 Tripathi no.A-74870/2005 and A-74871/2005 (Colly.) Digitally signed 7. Copies of invoices Ex.PW1/7 by Raj Kumar Tripathi Date: 2025.02.01 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 15 of 48 15:38:09 +0530 (Colly.)
8. Copies of advertisements of trade mark "Basant' Ex.PW1/8 along with advertisement invoice (Colly.)
9. Original label/packagings of the goods of Ex.PW1/9 plaintiff no.1 in index dated 21.04.2018 and (Colly.) index dated 01.11.2018 of documents of plaintiffs
10. Original label/packagings of the goods of the Ex.PW1/10 defendant in index dated 21.04.2018 (Colly.)
11. Copy of order dated 27.11.1992 passed by Ex.PW1/11 learned Deputy Registrar of Trade Marks in (Colly.) Application No.453561B in Class 30
12. Copy of order dated 22.02.1994 passed by Ex.PW1/12 Ld.ADJ, Ludhiana in Suit No.7/94 (Colly.)
13. Copy of decree dated 22.02.1994 passed in Suit Ex.PW1/13 No.7/94
14. Copy of orders dated 07.07.2018 and 23.04.2019 Ex.PW1/14 in TM No.100/18 (Colly.)
15. Copy of rectification petition filed against the Ex.PW1/15 registration no.1029646 in Class 30 of the defendant
16. Original price list of defendant Ex.PW1/16 4.3 Plaintiff no.2 S. Rajinder Singh, the proprietor of plaintiff no.2 firm M/s Basant Dairy has examined himself as PW2. He filed his evidence by way of affidavit, Ex.PW2/A. In his affidavit of evidence, PW2 has deposed about the same facts Raj as mentioned in the plaint. He relied upon the same documents Kumar i.e. Ex.PW1/2, Ex.PW1/5, Ex.PW1/11, Ex.PW1/12, Ex.PW1/13, Tripathi Ex.PW1/15 and Ex.PW1/16 as relied upon by PW1. In addition Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 15:38:44 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 16 of 48 to the said documents, he relied upon the following two more documents:-
S.No. Details of documents Exhibit Mark
1. Invoices of the plaintiff no.2 taken on record Ex.PW2/1 (colly.) vide order dated 05.03.2020 and Mark-A (colly.)
2. Copy of order dated 18.10.2019 passed in TM Ex.PW2/2 No.100/2018 titled as Charanjit Singh vs. Sardar Gurdeep Singh 4.4 Vide order dated 28.07.2023, the applications under Order I Rule 10 r/w section 151 CPC and Order VI Rule 17 r/w section 151 CPC filed by plaintiffs were allowed. S. Gurdeep Singh was directed to be impleaded as plaintiff no.3 in the case.
The amended plaint filed by plaintiffs was directed to be taken on record.
4.5 On 06.02.2024, defendant filed an application under Order IX Rule 7 r/w section 151 CPC. He also filed another application u/s 124 of The Trade Marks Act, 1999. 4.6 Vide order dated 02.05.2024, the application of defendant u/s 124 of The Trade Marks Act was dismissed. The application under Order IX Rule 7 CPC was disposed off with the following observations:-
".....9. The observations by Hon'ble Supreme Court quoted above show that the defendant can certainly Raj participate in the current proceedings. He has limited right of cross-examination of the witnesses Kumar of the plaintiff and therefore, he can cross-examine Tripathi the witnesses which have not aly been examined and Digitally signed discharged. This right has limitations. Having by Raj Kumar failed to file WS and to place documents on record, Tripathi the defendant cannot confront the plaintiffs (who are Date: 2025.02.01 15:38:54 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 17 of 48 to be examined as witnesses) with documents in the cross-examination by the help of order XI Rule 1 (7)
(c) (i) CPC which allows the defendant to produce documents which are relevant only for the purpose of cross-examination of the plaintiff's witnesses. In this regard, we can profitably refer to the judgment by Hon'ble Bombay High Court in Mohammed Abdul Wahid vs. Nilofer Wd/O Mohammad Abdul Salim 2021 SCC OnLine Bom 170."
4.7 Thereafter, defendant cross-examined PW2 S.Rajinder Singh. However, despite limitations of cross- examination as stated herein above in paragraph no.4.6 of the judgment, the defendant's advocate confronted the following documents to him:-
S.No. Details Exhibit Mark
1. Documents (85 pages) Ex.PW2/DX1
2. Certificate bearing CC No.167/99-2000 issued Ex.PW2/DX2
by JR TM in the name of M/s New Basant Ice
Cream
3. Certificate dated 27.03.1987 issued by Ex.PW2/DX3
Constituted Attorney, Deo C. Prasad, B.Com., LLB, Calcutta 7
4. Partnership Deed dated 01.01.1984 pertaining Ex.PW2/DX4 to M/s Basant Ice Cream between S.Gurdeep Singh and S. Lal Singh constituted in January 1984
5. Some documents EX.PW2/DX5 (colly.)
6. Digital document issued by Department of Ex.PW2/DX6 Food Safety and Standard Authority of India, Punjab
7. The document issued by Department of Ex.PW2/DX7 Raj Kumar Telecommunication dated 15.02.1991 Tripathi 8. Copy of document showing execution of Mark-A Contract Mutual Consent in Punjabi with Digitally signed by Parvinder Pal to trade as M/s PALBASANT Raj Kumar Tripathi Ice Cream under trade name PALBASANT Date: 2025.02.01 15:39:04 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 18 of 48 along with police report dated 17.06.2013, Police Station Model Town
9. The document issued by MSME to the Mark-B defendant under the trade name M/s Pal Basant Ice Cream
10. Digital copy of application number 469652 Ex.PW2/DX8 filed before The Trade Marks Registry by Late Sh. Gurdeep Singh
11. Certificate of import export code Ex.PW2/DX9
12. Trade Mark Certificate No.487692 Ex.PW2/DX10
13. Dealer details bearing registration no.52263914 Mark-C 4.8 It is pertinent to mention that since the defendant confronted the aforesaid documents to PW2 S.Rajinder Singh despite specific prohibition mentioned in para no.9 of order dated 02.05.2024, the same cannot be read in evidence and defendant will not get any benefit by showing the documents to PW2 during his cross-examination. Additionally, as none of the above documents have been admitted by PW2, therefore, they are not admissible in evidence being not proved in accordance with law. 4.9 PW3 S. Gurdeep Singh Kharbanda, the proprietor of M/s Pal's has examined himself as PW3. He filed his evidence by way of affidavit, Ex.PW3/A, wherein he has supported the case set out in the plaint and the version as deposed by PW1 and PW2. He relied upon the following documents in his evidence:-
S.No. Details of document Exhibit Mark
Raj Kumar 1. Copy of the Food Safety and Standard Ex.PW3/1
Tripathi Registration Certificate of plaintiff no.3
firm
Digitally signed by
Raj Kumar Tripathi 2. Copy of GST Registration Certificate of Ex.PW3/2
Date: 2025.02.01 the plaintiff no.3 firm M/s Pal's
15:39:15 +0530
TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 19 of 48
3. Original coloured photograph of shop filed Ex.PW3/3
vide index dated 01.11.2018 of list of
documents of plaintiffs
4. Copy of Dealership Agreement dated Mark-X
20.07.2022 executed between plaintiff no.1 and plaintiff no.3 (Sardar Gurdeep Singh Kharbanda)
5. Copy of the death certificate of original Mark-Y plaintiff no.3 Late Sardar Jaspal Singh
6. Affidavit under section 63 of The Bhartiya Ex.PW3/4 Sakshya Adhiniyam, 2023 of PW3 in support of documents Ex.PW3/1 and Ex.PW3/2 4.10 As defendant's right to file written statement was statutorily forfeited vide order dated 22.12.2024, defendant has not led any evidence in the matter.
Findings and Observations 5.1 I have heard and considered the rival submissions of both the parties and perused the material on record. 5.2 The law relating to infringement of a registered trade mark has been envisaged under section 29 of The Trade Marks Act, 1999 and the exclusive rights granted by virtue of registration are incorporated u/s 28 of The Act. For ease of convenience, section 29 and 28 of The Trade Marks Act, 1999 are reproduced herein below:-
"29. Infringement of registered trade marks.-(1) A registered trade mark is infringed by a person who, not Digitally signed by being a registered proprietor or a person using by way of Raj Raj Kumar Tripathi permitted use, uses in the course of trade, a mark which is Kumar Date: identical with, or deceptively similar to, the trade mark in Tripathi 2025.02.01 15:39:23 relation to goods of services in respect of which the trade +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 20 of 48 mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, distinctive character or repute of the registered trade mark. (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. (6) For the purposes of this section, a person uses a Digitally registered mark, if, in particular, he-
signed by Raj Kumar
(a) affixes it to goods or the packaging thereof; Raj Tripathi (b) offers or exposes goods for sale, puts them on the Kumar Date: market, or stocks them for those purposes under the Tripathi 2025.02.01 15:39:33 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 21 of 48 registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising (7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee. (8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly."
"28. Rights conferred by registration.-(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any Digitally signed by one of those persons as against any other of those persons Raj Raj Kumar merely by registration of the trade marks but each of those Kumar Tripathi persons has otherwise the same rights as against other Date: persons (not being registered users using by way of Tripathi 2025.02.01 15:39:47 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 22 of 48 permitted use) as he would have if he were the sole registered proprietor."
5.3 A bare reading of the aforesaid provisions show that a registered trade mark is infringed by a person, who not being a registered proprietor uses in the course of trade a mark which is identical or deceptively similar in relation to the goods or services which are identical or similar to that in respect of which the trade mark is registered without the permission of the trade mark owner. On registration of a trade mark, the registered proprietor gets the exclusive right u/s 28 of the Act to use of such trade mark in relation to the goods in respect of which, the trade mark is registered and to obtain relief in respect of any infringement of such trade mark. It is well settled that the action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. Reliance is placed upon Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1999) 19 PTC 81 (Del) and National Bell Co. v. Metal Goods Mfg. Co. AIR 1971 SC 898.
5.4 In the case of KRBL Ltd. v. Praveen Kumar Buyyani & Others: FAO (Comm) No.24/2024, Hon'ble Division Bench of Delhi High Court in respect of "likelihood of confusion" held as under:-
Digitally signed by Raj "21.5 "Likelihood of confusion", by a consumer of Raj Kumar Tripathi average intelligence and imperfect recollection, is all that Kumar Date: is needed. "Confusion", again, need not extrapolate, in Tripathi 2025.02.01 15:40:22 every case, to the consumer mistaking one mark for the +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 23 of 48 other. It is enough - as Section 29(4) itself clarifies - if the similarity between the marks conveys an impression of "association" between them, to the mind of such a consumer. Again, all that is needed is "initial interest confusion" without placing the marks side by side. In other words, if, on seeing the defendant's mark some time after the first, the consumer of average intelligence and imperfect recollection is likely to pause, even if for the fraction of a minute, and ponder as to whether it was not the same, or at was not associated with, the plaintiff's mark which he had seen earlier, the tort of infringement stands, ipso facto, committed by the defendant. The following passage from Kerly's Law of Trade Marks and Trade Names, 9th Edn, was approvingly cited by the Supreme Court, in Parle Products (P) Ltd v J.P. & Co. (1972) 1 SCC 618.
"Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."
Digitally (Emphasis supplied)
signed by Raj
Raj Kumar
Kumar
Tripathi 21.6 Having reproduced the above passage from Kerly,
Date:
the Supreme Court, in Parle Products, went on to hold: Tripathi 2025.02.01 15:40:54 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 24 of 48 "9. It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him."
(Emphasis supplied) In view of the express words employed by section 29 (2) of The Trade Marks Act, it is clear that the propensity of the average consumer to accept the defendant's product, if offered to him, owing to the similarity between the plaintiff's and defendant's marks, cited as a definitive test in Parle Products may as much be because she, or he, confuses the defendant's mark for the plaintiffs, as because, owing to the similarity between the two marks, he believes the existence of an association between them. A fascinating study on the contours of confusion is to be found in Shree Nath Heritage. 5.5 In order to prove the case for infringement of trade mark, plaintiffs are required to show that the essential features of the registered trade mark which have been adopted by the defendant have been taken out from the plaintiffs' registration. Only the marks are to be compared by the court and in case the registration is granted in favour of plaintiffs, he acquires valuable right by reason of the said registration.
5.6 It is well settled that the possibility of likelihood of confusion for the purpose of infringement, has to be assessed Raj Kumar from the perspective of a customer of average intelligence and Tripathi imperfect recollection (Reliance is placed upon Mahendra & Digitally signed by Raj Kumar Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. (2002) Tripathi Date: 2025.02.01 15:41:03 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 25 of 48 2 SCC 147 and Cadila Health Care v. Cadila Pharmaceuticals (2001) 5 SCC 73.
5.7 In Reckitt and Colman Ltd. v. Borden Inc. 1990 (1) All ER 873 (HL), the House of Lords postulated the 'trinity' or 'triple identity test' which deems infringement to exist where identical (or deceptively similar) marks are used for more or less identical products having a common market. Similarity of marks, identity/similarity of the goods on which the marks are used and commonality of market, therefore, predicate a legitimate inference of infringement.
5.8 To prove their case, plaintiffs have examined themselves as PW1 to PW3 respectively. PW1 S. Charanjit Singh, the sole proprietor of plaintiff no.1 firm M/s Basant Ice Cream, in his affidavit of evidence, Ex.PW1/A has supported and corroborated the facts as pleaded in the plaint. In order to prove the trade mark registrations in favour of plaintiffs no.1 and 2, PW1 tendered copy of Registration Certificate No.453561 in Class-30 (Ex.PW1/3-colly.), Legal Proceedings Certificate of trade mark registration no.2129221 in Class-43 (Ex.PW1/4- colly.), copy of registration certificate no.804321 in Class-30 of plaintiff no.2 along with status (Ex.PW1/5-colly.) and extracts of register of copyrights bearing no.A-74870/2005 and A-74871/2005 (Ex.PW1/6-colly.). The trade mark BASANT registered in the name of plaintiffs no.1 and 2 are put in a Raj Kumar tabulated form as under:-
Tripathi S. Registration Trade Goods Exhibit Mark Digitally signed by No. No./Class And Mark Raj Kumar Tripathi Date: 2025.02.01 15:41:12 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 26 of 48 Journal No. User Since A. 453561 Basant Ice Cream, Ice Ex.PW1/3 In Class 30 User Since Cream Powder, (colly.) Journal No. 01.01.1960 Kulfi Ice 1373 B. 2129221 Basant Ice Cream Parlours, Ex.PW1/3 In Class 43 (Label) Providing Of (colly.) Journal No. : User Since Sweets, Ice Creams 1544-0 01.01.1952 And Kulfi Only (Except Motels Banquet Halls, Marriage Palace, Entertainment Park, Providing Of Food, Drinks And Temporary Accommodation, Restaurants Including Self Service And Fast Food Restaurants), Cafe Shops, Fast Food Junctions Included In Class 43.
C. 804321 Basant Ice Cream, Ice Ex.PW1/5
In Class 30 (Device) Cream Powder, (colly.)
Journal No. User Since Kulfi, Jelly
1329-1 01.01.1990 Puddings, Ready To
Serve Cereal Dishes,
Cakes, Pasteries,
Pizzas, Food
Mixtures Containing
Cereals And Dried
Fruits.
5.9 The trade mark BASANT registered in favour of
plaintiff no.1 and 2 are valid and subsisting. 5.10 The Hon'ble superior courts have propounded the Raj doctrine of prominent and essential feature of the trade mark for Kumar the purposes of adjudication of the disputes relating to Tripathi infringement of trade mark. While deciding the question of Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 15:41:21 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 27 of 48 infringement, the court has to see the prominent or the dominant feature of trade mark.
5.11 PW1 in his affidavit of evidence has deposed that the plaintiff no.1's firm was initially established in 1960 by Late S. Lal Singh, who was his grandfather. His grandfather preferred an application for registration of trade mark BASANT before the Trade Marks Registry on 05.05.1986 and the said application was numbered as 453561 in Class 30. His grandfather died on 30.05.1989. Thereafter, plaintiff no.2 took over the firm M/s Basant Ice Cream (Regd.) as its sole proprietor. The trade mark BASANT under no.453561 in Class 30 was granted registration in name of plaintiff no.2 S. Rajinder Singh. The trade mark registered in the name of plaintiff no.1 is given in para no.9 of the plaint and in the name of plaintiff no.2 in para no.10 of the plaint.
5.12 The aforesaid deposition of PW1 has gone uncontroverted and unchallenged as defendant did not appear to cross-examine him in respect of the deposition made in affidavit of evidence, Ex.PW1/A and the documents proved by him. The documents, Ex.PW1/3 (colly.) and Ex.PW1/5 (colly.) are not disputed. Thus, they are deemed to be proved and admitted by defendant.
5.13 PW2 S. Rajinder Singh, the proprietor of plaintiff Raj Kumar no.2 firm M/s Basant Dairy has deposed on the lines of Tripathi averments made in the plaint. He has corroborated and supported the version of PW1 in his evidence. He has relied upon the same Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 15:41:33 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 28 of 48 documents i.e. Ex.PW1/2, Ex.PW1/5, Ex.PW1/11, Ex.PW1/12, Ex.PW1/13, Ex.PW1/15 and Ex.PW1/16 as relied upon by PW1 in his evidence. Besides the said documents, he also proved the invoices, Ex.PW2/1 (colly.). Nothing has come in his cross-
examination to doubt his veracity. His testimony could not be assailed despite lengthy cross-examination conducted by defendant's advocate. In the cross-examination, defendant could not disprove the documents Ex.PW1/3 (colly.) and Ex.PW1/5 (colly.). The defendant, in the course of cross-examination of PW2, confronted him with some documents which have been denied by the witness. Moreover, in terms of order dated 02.05.2024 and as the written statement of defendant is not on record, the same cannot be read in evidence. 5.14 From the deposition of PW1 and PW2 and the documents relied upon by them, it stands proved on record that plaintiff no.1 is registered proprietor of the trade mark BASANT since 1960 registered in Class 30 vide application no.453561 in respect of the goods i.e. ice cream, ice cream powder and kulfi ice. He is also registered proprietor of trade mark BASANT (Label) in Class 43 vide application no.2129221. Plaintiff no.2 is registered proprietor of BASANT (Device) in Class 30 vide application no.804321.
5.15 As per plaintiffs, they have been continuously and Raj Kumar uninterruptedly using the trade mark BASANT since last 58 Tripathi years and by reason of exclusive use for such a long and continuous period, a valuable and exclusive goodwill and Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 15:41:44 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 29 of 48 reputation has accrued to the trade mark/label BASANT. PW1 has proved the invoices in respect of the sale figures of the firm M/s Basant Ice Cream as Ex.PW1/7 (colly.). He has also proved the documents, Ex.PW1/8 (colly.) i.e. amount spent on advertisement of the trade mark BASANT along with advertisement invoice.
5.16 Defendant is alleged to be trading as M/s PAL BASANT Ice Cream having office at Shop No.3, R.S. Model School Market, Model Town Extension, Ludhiana, Punjab. He is also reported to be having a shop in Delhi at opposite Gurudwara Fatehpuri, Delhi.
5.17 Plaintiffs, on the basis of evidence and the documents proved on record, have been able to show that they are the prior user. The word BASANT is being used by them for last more than 60 years. They are the registered proprietor of the trade mark BASANT. Defendant is reported to be engaged in the same business as that of the plaintiffs. He is using the trade mark 'PAL BASANT' for his goods. He has intentionally and dishonestly added the word 'PAL' as prefix to the registered trade mark of plaintiff i.e. BASANT.
5.18 In Kaviraj Pandit Durga Dutt Sharma's case (supra) , the identification of essential features of the trade marks has been discussed as under:-
"In an action for infringement, the plaintiff Digitally must, no doubt, make out that the use of the Raj signed by Raj Kumar Tripathi defendant's mark is likely to deceive, but Kumar Date:
2025.02.01 where the similarity between the plaintiff's and Tripathi 15:41:53 +0530 the defendant's mark is so close either visually, TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 30 of 48 phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial..........
When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no other further questions arise; for then the infringement is made out......."
5.19 In Allied Blenders & Distillers Pvt. Ltd. v. Shree Nath Heritage Liquor Pvt. Ltd. (2014) 211 DLT 346, it was held that the test for infringement of a label/word mark is the test of prominent word of the mark. Further, in Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel (2006) 8 SCC 726, it was held that adoption by the defendant of a prominent word in the label/device mark of plaintiffs amount to infringement. The label/device marks may be of different kinds those with words only as prominent part thereof with a not so prominent device. 5.20 Applying the aforesaid principles to the facts of the Raj Kumar present case, this court is of the view that the mark 'PAL Tripathi BASANT' used by defendant is deceptively similar to the Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 15:42:11 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 31 of 48 registered trade mark of plaintiffs i.e. BASANT. The mark 'PAL BASANT' used by defendant clearly infringes the mark 'BASANT'. Both are used for the same goods. The customer base of both the parties is the same. Defendant has mischievously prefixed 'PAL' to the prominent mark of plaintiffs trade mark 'BASANT'. The innocent public is likely to be deceived by the mark used by defendant to be that of plaintiffs. Plaintiffs have spent huge amount to build their goodwill and reputation in promotion of their products. By use of the mark 'PAL BASANT', defendant is trying to encash upon the goodwill and reputation of plaintiffs. Thus, the triple identity test as envisaged in Reckitt & Colman Ltd. (supra) are satisfied in this case.
5.21 In the case of Laxmikant V. Patel v. Chetanbhai Shah (2002) 3 SCC 65, Hon'ble Apex Court observed that "where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently."
5.22 Learned counsel for defendant submitted that plaintiffs have not produced a single document to indicate that the alleged trade mark infringement has taken place within the territorial limits of this court. He further submitted that defendant neither sold goods nor advertised or promoted his Raj Kumar Tripathi business under the impugned mark within the jurisdiction of this Digitally signed by court. Therefore, this court has no territorial jurisdiction to Raj Kumar Tripathi Date: 2025.02.01 15:42:21 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 32 of 48 entertain and decide the dispute between the parties. In support of his submissions, he relied upon Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Choubey & Others 2016 (65) PTC 469 (Del); RSPL Ltd. v. Mukesh Sharma & Another CS (OS) 124/2015 reported as 2016 (66) PTC 225 (Del); Impresario Entertainment and Hospitality Pvt. Ltd. v. S&D Hospitality 2023 (95) PTC 267 (Del) and Hasmukhbhai Bhagwanbhai Patel v. Husenali Anwarali 2023 (96) PTC 241 (Guj).
5.23 Per contra, learned counsel for plaintiffs submitted that S. Gurdeep Singh Kharbanda impleaded as plaintiff no.3 in the present suit is the dealer/licensee of plaintiff no.1 in Delhi within the jurisdiction of this court. At the time of institution of the suit, plaintiff no.3 S.Jaspal Singh was trading as M/s Pal Refreshment Centre, Shop No.20, Jangpura Extension Market, Opposite Eros Theater, New Delhi-14, who expired on 21.03.2022 during the pendency of the suit. Thereafter, plaintiff no.1 entered into a fresh Dealership Agreement dated 20.07.2022 (Mark-X) with the brother of Late S. Jaspal Singh namely S.Gurdeep Singh Kharbanda trading as M/s Pal's at the same premises, who was substituted in place of Late S.Jaspal Singh as new plaintiff no.3 vide order dated 13.09.2023. Thus, this court has jurisdiction to adjudicate the present suit by virtue of section 134 (2) of The Trade Marks Act, 1999. In support of his Raj Kumar submissions, he relied upon judgments Midas Hygiene Industries Tripathi Pvt. Ltd. v. Sudhir Bhatia 212 (2014) DLT311 and Maan Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 15:42:32 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 33 of 48 Pharmaceuticals Ltd. v. Mindwave Healthcare Pvt. Ltd. 2022 SCC OnLine Del 2866.
5.24 For ease of convenience, section 134 of The Trade Marks Act, 1999 is reproduced hereunder:-
"134. Suit for infringement, etc., to be instituted before District Court.-(1) No suit-
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-
section (1), a "District Court having jurisdiction"
shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain. Explanation. For the purposes of sub-section (2), "person" includes the registered proprietor and the registered user."
5.25 Reading of aforesaid provision shows that the suit for infringement etc. can be filed in the District Court within local limits of whose jurisdiction, at the time of institution of the suit or proceeding, the person instituting the suit or proceeding actually and voluntarily resides or carries on business or Raj Kumar Tripathi personally works for gain. As per explanation, the person includes the registered proprietor and the registered user. It is Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 15:42:45 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 34 of 48 well settled that Section 134 of the Act is in the nature of expanding the scope of section 20 of C.P.C.; {Reference may be have M.K. Sowbhagyam v. Wipro Ltd., 2010 (42) PTC 410 (Mad)}.
5.26 In Hashmukhbhai Bhagwanbhai Patel (supra), it was observed as under:-
"The plain reading of the provisions of law and taking note of their inter-play, what appears that section 134 of the Act and section 62 of the Copyright Act are almost pari materia. The Legislature has used term "notwithstanding" and including in section 134 of the Act and section 62 of the Copyright Act. Thus, it could be gathered as well as in that, the provisions providing territorial jurisdiction for institution of the suit are in addition to what is provided in section 20 of the CPC. Section 20 of the CPC indicates that suit can be instituted at the place where the defendant resides or carries out business for personal work for gain and the place where cause of action or any part thereof arose. Section 134 of the Act read with section 62 of the Copyright Act permits the plaintiff to file the suit within the local limits/jurisdiction of the District Court, where the plaintiff resides or carries out business or personally work for gain."
5.27 Further, in the case of Midas Hygiene Industries Pvt. Ltd. (Supra), Hon'ble Court held as under:-
"7. The material aspect to be considered is as if the appellant carries on business within the jurisdiction of the Court. Before considering the merits of the rival contentions of the parties, it would be worthwhile to notice that although Section 72 is similar to Section 62(2), it differs significantly in that it deals with appellate jurisdiction. Section 62(2) Raj Kumar confers a discretion upon the litigant to approach the Tripathi Court where the cause of action, or a part of it arises, or where he, or it resides, or carries on business;Digitally signed by however, that is in respect of an original claim, i.e.
Raj Kumar Tripathi in the form of a suit. Here, the appeal preferred to Date: 2025.02.01 15:42:59 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 35 of 48 the High Court against an order of the Copyright Board enjoins that the appellant should either be residing, or carrying on business within the jurisdiction of a Court before whom it appeals.
8. In the opinion of this Court, there is sufficient material on record, apart from the affidavits of the appellant's director and the partners of M/s S.S. Agencies to establish that it is indeed carrying on business within the jurisdiction of the Court. Even if one were to ignore the affidavits as having, been filed at this stage before the Court, there is no getting away from the fact that the suit filed in 1999 not only stated that M/s S.S. Agencies was an exclusive agent of the appellant, but it was also impleaded as a second plaintiff Furthermore, the material placed on record in that suit filed about 14 years ago (thus having the Odium of a circumstantial evidence) shows that_advertisements were issued from time to time by M/s S.S. Agencies seeking to market the appellant's products."
5.28 PW1 S. Charanjit Singh in para no.3 of his affidavit of evidence, Ex.PW1/A has deposed that plaintiff no.3 S. Jaspal Singh trading as Pal Refreshment Corner, Shop No.20, Jangpura Extension Market, Opposite Eros Theater, New Delhi-14 is an exclusive dealer/licensee of plaintiff no.1 for the state of Delhi for selling ice creams under the trade mark BASANT. The ice cream of plaintiff no.1 is available at the aforesaid shop. He proved the invoices of dispatch of goods sent by plaintiff no.1 to plaintiff no.3 as Ex.PW1/1 (Colly.).
5.29 The aforesaid deposition of PW1 has gone unrebutted and unchallenged as he has not been cross-examined Raj by defendant. The defence of defendant in the form of written Kumar statement is not on record. Thus, defendant has miserably failed Tripathi to controvert the version of PW1 as deposed by him in his Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 15:43:10 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 36 of 48 evidence affidavit, Ex.PW1/A and the facts with respect thereto pleaded in the plaint.
5.30 PW3 S. Gurdeep Singh Kharbanda in his affidavit of evidence, Ex.PW3/A has supported the version of PW1. In his cross-examination, he denied that he has not worked as a dealer of S. Charanjit Singh in Delhi and he has filed a false affidavit to make the jurisdiction of this case in Delhi. He reasserted that there was a business between S. Charanjit Singh and his late brother S.Jaspal Singh.
5.31 From the aforesaid deposition of witnesses, it stands proved on record that plaintiff no.1 was carrying on business in Delhi through his dealer/licensee i.e. plaintiff no.3 having shop at Shop No.20, Jangpura Extension Market, Opposite Eros Theater, New Delhi-14. Thus, by virtue of section 134 (2) of The Trade Marks Act and the principles laid down in the aforementioned cases quoted in 5.26 and 5.27 of the judgment, this court has territorial jurisdiction to entertain, try and adjudicate upon the dispute between the parties.
5.32 Moreover, it is a matter of record that defendant has not filed written statement to the suit and his right to file written statement was statutorily forfeited on 22.12.2019. The defendant in the suit had filed an application under Order VII Rules 10 and 11 CPC for rejection of the plaint for want of jurisdiction. The Raj Kumar application of defendant was dismissed vide order dated Tripathi 15.01.2019. The said order was never challenged by defendant before Hon'ble superior courts. Thus, the said order has attained Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 37 of 48 15:43:23 +0530 finality and same cannot be re-agitated in the absence of written statement and pleadings qua that effect from the side of defendant being on record.
5.33 Learned counsel for defendant further submitted that the trade mark BASANT word is inherently generic offering no distinctiveness to a single source. The Indian legal system wisely withholds trade mark protection for such terms unless they fulfill certain conditions to avoid the establishment of unwarranted monopolies. He argued that Basant is a festival celebrated in South Asia, particularly in Pakistan, India and Bangladesh to mark the arrival of spring and same is characterized by kite flying, wearing bright colours, singing and dancing. Thus, in any case, no monopoly/exclusivity can be claimed by plaintiffs as the mark BASANT is generic in nature and cannot be as distinctive, so as to identify the products sold under it as originating from the plaintiffs' house. He further submitted that there are several persons/entities, who used the word Basant by itself or along with suffix/prefix and have been so used prior to the plaintiffs. In support of his submissions, he relied upon Cadila Healthcare Ltd. v. Gujarat Cooperative Milk Marketing Federation Ltd. & Others 2009 (41) PTC 336 (Del); M/s Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd. Civil Appeal No.2937-2942/2018; Nestle's Products (India) Ltd. v. P. Thankaraja & Another AIR 1978 Madras 336 and S. Sayed Raj Kumar Tripathi Mohideen v. P. Sulochana Bai Civil Appeal No.2758/2015 Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 38 of 48 15:43:36 +0530 5.34 Per contra, learned counsel for plaintiffs argued that defendant cannot challenge the registration of the plaintiffs claiming the word as descriptive when defendant himself filed the application for grant of registration in respect of the mark BASANT. In support of submissions, he placed reliance upon Automatic Electric Limited v. R.K. Dhawan & Another 1999 PTC (19) 81. (DEL); Proctor & Gamble Manufacturing (Tianjin) Co. Ltd. and Ors. v. Anchor Health & Beauty Care Pvr. Ltd. 2014 (59) PTC 421 (DEL.) and Peps Industries Private Ltd. v. Kurlon Limited FAO (OS) (COMM) 94/2020.
5.35 Plaintiffs no.1 and 2 are admittedly registered proprietor of M/s Basant Ice Cream and M/s Basant Dairy respectively. The registration of the trade mark BASANT gives exclusive right to them to use the said trade mark with relation to goods in respect of which the trade mark is registered u/s 28 of The Trade Marks Act, 1999. Defendant is also reported to have got the trade mark 'PAL BASANT' registered in his name. Thus, defendant himself has sought to claim trade proprietary right and monopoly in PAL BASANT'. In view of the same, it does not lie in the mouth of defendant to say that the word "BASANT" is a generic word. Use of word 'BASANT' by others also cannot be a defence available to defendant, when it is shown that the same is being used by him in violation of the statutory rights of Raj Kumar plaintiffs. It is well settled that a party cannot approbate and Tripathi reprobate at the same time. In Telefonaktiebolaget LM Ericsson Digitally signed by v. Intex Technologies (India) Limited: 2015 SCC OnLine Del Raj Kumar Tripathi Date: 2025.02.01 15:43:46 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 39 of 48 8229, it was held by Hon'ble Delhi High Court that "144. it is equally well settled that the party cannot be allowed to approbate or reprobate at the same time, so as to take one position, when the matter is going to his advantage and another when it is operating to his detriment and more so, when there is a same matter either at same label or at the appellate stage." 5.36 In Peps Industries Pvt. Ltd. (supra), Hon'ble Delhi High Court held that the law recognizes that even a descriptive mark can be registered and exclusivity can be claimed, if before the date of application for registration, it has acquired a distinctive character as a result of its use or is a well known trade mark. Thus, even if a mark which is descriptive in nature can acquire distinctiveness by virtue of being in use for a long period of time.
5.37 In the instant case, the trade mark of both the parties i.e. 'BASANT' is a prominent word. The defendant is using the trade mark BASANT with a prefix PAL. Both the parties are engaged in the same business. The general public is likely to be confused by use of mark 'PAL BASANT' to be that of plaintiffs mark BASANT. The geographical location, where the parties are operating their business and using their marks in respect of similar goods are also the same. Thus, in my view, the trade mark being used by defendant is deceptively similar and cause of Raj Kumar action for infringement has arisen in favour of plaintiffs. Tripathi 5.38 The judgment passed in M/s Nandhini Deluxe Digitally signed by (supra) relied upon by defendant is not applicable to the facts of Raj Kumar Tripathi Date: 2025.02.01 15:44:13 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 40 of 48 the present case as the goods of the parties in that case were different . However, in the present case, the goods of both the parties are identical. As defendant has failed to prove that he is the prior user of the word 'BASANT', he is not entitled for protection u/s 34 of The Trade Marks Act, 1999. The judgment passed in S. Sayed Mohideen (supra) is thus of no help for defendant. The other judgments relied upon by learned counsel for defendant are also distinguishable and not applicable in the facts and circumstances of the present case. 5.39 Learned counsel for defendant further argued that the defence of defendant was struck off in the case. Thereafter, plaintiffs filed an application to implead legal representative of plaintiff no.3. On 06.12.2022, the said application was withdrawn by plaintiffs. Plaintiffs filed fresh application to add another plaintiff after demise of proprietor of existing plaintiff no.3. The said application was allowed on 28.07.2022 and plaintiffs were permitted to amend the suit. It is contended that plaintiffs substituted plaintiff no.3 with fresh cause of action, which is generated on 22.07.2022. Thus, the suit qua plaintiff no.3 is barred by law of limitation.
5.40 Per contra, learned counsel for plaintiffs submitted that the limitation of filing of the suit is to be seen from the date of filing of the suit and not from a subsequent date. Raj Kumar 5.41 In para no.45 of the plaint, it is stated that the cause Tripathi of action first arose in the second week of April, 2018 when Digitally signed by plaintiffs received information about the availability of the Raj Kumar Tripathi Date: 2025.02.01 15:44:23 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 41 of 48 alleged goods of the defendant bearing the alleged trade mark in various markets in Delhi. The plaintiff received a price list of the defendant's goods, where the trade mark BASANT is written in bold letters and word Ice Cream is so small that it is not easily discernible. The plaintiffs then made enquiry in the market and recently found about the alleged goods such as ice cream and kulfi etc. They have recently seen the goods of defendant bearing the alleged trade mark. Defendant is continuing to use the trade mark 'PAL BASANT' on goods such as ice cream and kulfi etc. in various markets of Delhi. He is also using the word 'PAL BASANT' as an essential and important ingredient of his trade name. Thus, cause of action has again accrued in favour of plaintiffs in April, 2018 when they have been apprised of the details of defendant and its alleged goods. The cause of action is a continuous one and continues to subsist till such time as the defendant are restrained by an order of the court. 5.42 The aforesaid averments of the plaint have not been controverted and denied by defendant by filing written statement. Thus, there is no reason to disbelieve the version of plaintiffs as stated in the plaint. In view of averments made in the plaint, this court is satisfied that the suit filed by plaintiffs is well within limitation. Moreover, the application for impleadment of plaintiff no.3 was allowed on 28.07.2023 after hearing the Raj Kumar counsel for defendant. The said order has not been challenged by Tripathi defendant before Hon'ble superior courts and thus, it has attained Digitally signed by finality. The defendant at this stage cannot claim that the Raj Kumar Tripathi Date: 2025.02.01 15:44:34 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 42 of 48 application of plaintiffs was wrongly allowed and there has been denial of natural justice.
5.43 It is well settled that infringement/passing off is a remedy in tort. Every day a trade mark is violated, a fresh cause of action arises in favour of plaintiff. In this regard, the following observations of Hon'ble Court made in Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Company & Others 1997 (17) PTC 98 (SC) is relevant:-
"12. It is now well settled that an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in historical past earlier suit was disposed of as technically not maintainable in absence of proper reliefs, for all times to come in future defendant of such a suit should be armed with a licence to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts. We posed a question to the learned Counsel for the defendants as to whether after the disposal of the earlier suit if the defendants Digitally signed by had suspended their business activities and Raj Raj Kumar after a few years had resumed the same and Tripathi Kumar Date: had started selling their goods under the trade Tripathi 2025.02.01 mark 'DACKBACK' by passing them off, the 15:44:43 plaintiff could have been prohibited and +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 43 of 48 prevented by the bar of Order 2 Rule 2 Sub- rule (3) from filing a fresh suit in future when such future infringement or passing off took place. He rightly and fairly stated that such a suit would not be barred."
5.44 Learned counsel for defendant also argued that defendant is prior adopter, user and proprietor of the trade mark 'BASANT' derived from the trading style of his manufacturing unit "M/s Basant Ice Cream". Admittedly, the written statement of defendant is not on record. Defendant has not led any evidence in support of the aforesaid submissions made by learned counsel for defendant at the stage of final arguments. Thus, the aforesaid contention of defendant is not proved on record. In Vidhyadhar v. Manikrao (1999) 3 SCC 573, it was observed that "17. where a party to the suit does not appear in the witness box and states his own case on oath and does not offer himself to be cross- examined by the other side, a presumption would arise that the case set up by him is not correct".
5.45 In Smith Bartlet & Co. v. The British Pure Oil Grease & Carbide Company Ltd. (1934) 51 RPC 1957, it was held that "A distinction was drawn between the standard of proof of continuous prior user of an unregistered trade mark as required in an infringement action and that required in a rectification proceeding. The standard requited to defeat an infringement action Raj Kumar was more stringent and rigorous. It was observed that Section 41 of the Trade Marks Act of the United Tripathi Kingdom (which required like Section 34 TM Act Digitally signed by continuous prior user) had put "the owner of a Raj Kumar Tripathi Date: 2025.02.01 15:44:51 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 44 of 48 registered Trade Mark in a very exceptional position, whether he has used the mark or not, and he is entitled to the exclusive user of it unless under the proviso to Section 41 somebody else is able to show, not an occasional user from a date anterior to the user by the owner of the registered trade mark, but a continuous user by him."
5.46 In Amaravathi Enterprises v. Karaikudi Chettinadu, 2008 (36) PTC 688 (Madras) (DB), it was observed that apart from prior continuous use of the trade mark and trade name, the defendant seeking to set up a defence of prior use under Section 34 of the TM Act had to also prove the volume of sales. In Veerumal Praveen Kumar v. Needle Industries (India) Pvt. Ltd., 2001 (21) PTC 889 (Delhi), a Division Bench of this Court emphasized that a trade mark does not arise from the mere use of a word or words or a formula or a mark. It had to be shown that in relation to particular goods, there is a course of trading and that a goodwill connecting the trader with the goods by the reason of the trade mark under which the goods are marketed has resulted. It was observed: "it follows that where, in relation to particular goods, there is no such course of trading as to give rise to goodwill, there is no interest to be protected by a trademark and no such mark can subsist in vacuo."
5.47 Applying the ratio of principles laid down in the aforementioned cases to the facts of the present case and as Raj Kumar defendant has failed to prove the volume of sales, prior Tripathi continuous use of trade mark and trade name and the goodwill Digitally signed by Raj Kumar Tripathi earned by him connecting with the goods in respect of which the Date: 2025.02.01 15:45:02 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 45 of 48 goods are being marketed by him, his interest in the trade mark 'BASANT' cannot be protected. The defendant has miserably failed to prove on record that he is the prior user of the trade mark 'BASANT'.
5.48 Lastly, it was argued that the suit filed by plaintiffs is not maintainable in its present form and plaintiffs have no locus standi to file the present suit. The factum of locus standi is denied by learned counsel for plaintiffs by submitting that plaintiffs being the prior users, adopters and registered proprietors have every right to maintain the present suit against defendant for protection of their registered trade mark. 5.49 I find merit in the submissions advanced by learned counsel for plaintiffs. Defendant has not taken the objection by filing written statement, clarifying as to what ought to have been the form of the suit. Even during course of arguments, it was not pointed out to this court as to in what form, the plaintiffs should have filed the present suit. Thus, the contention of defendant of plaintiffs' suit not being maintainable in the present form is without any basis and substance.
5.50 Plaintiffs have filed the present suit for permanent injunction, restraining infringement of trade mark, copyright, passing off, damages and delivery up etc. against the defendant. As per plaintiffs, they are the proprietors of the registered trade Raj Kumar mark 'BASANT'. They have alleged that defendant has indulged Tripathi himself in infringement of their trade mark by using the mark Digitally signed by 'PAL BASANT' with respect to similar goods i.e. ice cream and Raj Kumar Tripathi Date: 2025.02.01 15:45:25 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 46 of 48 kulfi etc. Thus, this court is of the view that plaintiffs have locus standi to file the present suit as they being prior user and adopter of the mark 'BASANT' have legal right to protect their mark 'BASANT'.
6.1 For the foregoing reasons and discussions, I am of the view that plaintiffs have succeeded to prove their case. Accordingly, the suit of plaintiffs is decreed. A decree of injunction, in terms of prayer clause 48 (a) to (d) is granted in favour of plaintiffs and against the defendant. 6.2 The relief for order of delivery up as prayed in prayer clause 48 (e) of the plaint is declined as no Local Commissioner was appointed in the case for seizure of infringed goods and there is nothing on record to show that any material including labels, blocks, dies, strips, cartons, stationery, literature or any other printed matter bearing alleged label has been seized. 6.3 On the aspect of damages, plaintiffs have not led any evidence. There is no material on record to assess the quantum of damages allegedly suffered by plaintiffs by use of alleged trade mark 'PAL BASANT' by defendant. Accordingly, the suit of plaintiffs is directed to be decreed with cost. Plaintiffs shall be entitled for the cost of litigation incurred by them including the lawyers fees which is notionally quantified at Rs.1,50,000/-.
Raj Kumar Tripathi 7.1 Decree sheet be prepared.
Digitally signed by Raj Kumar Tripathi Date: 2025.02.01 15:45:35 +0530 TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 47 of 488.1 File be consigned to record room.
Digitally signed Raj by Raj Kumar
Announced in the open court Tripathi
Kumar Date:
Dated: 31.01.2024 Tripathi 2025.02.01
15:45:44 +0530
(RAJ KUMAR TRIPATHI)
District Judge (Commercial Court)-08
South-East District, Saket Courts, New Delhi.
TM-99/2018 (S. Charanjit Singh & Ors. vs. Parvinder Pal Singh) Page 48 of 48