Delhi High Court - Orders
Jockey International Inc vs M/S Khalsa Accessories & Ors on 18 May, 2023
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~18(Original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 318/2023 & I.A. 9634/2023, I.A. 9635/2023, I.A.
9636/2023, I.A. 9637/2023, I.A. 9638/2023, I.A. 9639/2023
JOCKEY INTERNATIONAL INC ..... Plaintiff
Through: Mr. Saif Khan, Mr. Shobhit
Agarwal, Ms. Swati Jain and Mr. Prajjwal
Kushwaha, Advs.
versus
M/S KHALSA ACCESSORIES & ORS. ..... Defendants
Through: None
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 18.05.2023 I.A. 9635/2023 (Section 12A of the Commercial Courts Act, 2015)
1. In view of the judgment of the Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Pvt Ltd1, exemption is granted from the requirement of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.
2. The application stands allowed accordingly.
IA 9637/2023 (Order XI Rule 1(4) of the CPC)
3. This application seeks permission to file additional documents. The plaintiff is permitted to place additional documents on record in accordance with Order XI Rule 1(4) of the Code of Civil Procedure, 1 2022 SCC OnLine Del 3529 CS(COMM) 318/2023 Page 1 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:37 1908 (CPC) as amended by the Commercial Courts Act within four weeks from today.
4. The application stands disposed of accordingly.
I.A. 9638/2023 (exemption)
5. Subject to the plaintiff filing legible copies of any dim or illegible documents within 30 days, exemption is granted for the present.
6. The application is disposed of.
I.A. 9636/2023 (exemption from advance service of defendants)
7. For the reasons stated in the application, the plaintiff is exempted from the requirement of serving an advance notice on the defendants.
8. This application stands allowed accordingly.
CS(COMM) 318/2023
9. By this suit, the plaintiff seeks injunction against use, by the Defendants 1 to 7, of the plaintiff's registered trade mark "JOCKEY" which already stand declared as a well-known trade mark by order dated 13th May 20214 in CS (OS) 253/2012 (Jockey International Inc. & Anr. v. R. Chandra Mohan & Ors).
10. The plaintiff claims to be one of the world leaders in the field of hosiery, undergarments and comfort apparel. Manufacture of innerwear under the name JOCKEY is stated to have been commenced, by the plaintiff, in 1934. The plaintiff also claims to have CS(COMM) 318/2023 Page 2 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:37 obtained its first trade mark registration for the mark JOCKEY in India in 1947.
11. Para 8 of the plaint sets out some of the registrations held by the plaintiff in classes 25 and 35, which are relevant for the present case, thus:
Registration Registration Mark Class No. Date 131017 29/09/1947 25 258773 14/08/1969 25 684929 30/10/1995 JOCKEY OR 25 NOTHING (with Device ) 1327826 23/12/2004 JOCKY 25 COMFIES 1327827 23/12/2004 JOCKY 25 ELANCE 1327829 23/12/2004 JOCKEY 25 GOLD EDITION 1344006 11/03/2005 JOCKEY 35 1401671 25/11/2005 25 1684809 07/05/2008 25 2275648 01/02/2012 JOCKEY 25
12. The plaintiff has also submitted that over the last five years, it has incurred promotional expenditure for its JOCKEY product in India, to the tune of ₹ 400 crores and cumulative sales of JOCKEY products over ₹ 15000 crores.
13. The plaintiff is also the proprietor of the domain names www.jockey.com and www.jockey.in.
14. Defendants 1 to 7 are stated to be making and selling imitation CS(COMM) 318/2023 Page 3 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:37 and inferior quality counterfeit products, similar to those which are being made and sold by the plaintiff i.e., socks, innerwear etc., under the name JOCKEY.
15. The plaint also provides photographs of the products which are being made and sold by the defendants, thus:
CS(COMM) 318/2023 Page 4 of 15This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:38 CS(COMM) 318/2023 Page 5 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:38 CS(COMM) 318/2023 Page 6 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:38 CS(COMM) 318/2023 Page 7 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:38
16. The sale of counterfeit products using the plaintiff's registered trade mark, it is submitted, has resulted in tremendous loss of goodwill and reputation to the plaintiff. These activities also compromise the integrity of the plaintiff's brand and may result in customers being duped into purchasing sub-standard goods.
17. It is in these circumstances that the plaintiff has filed the present suit, seeking a permanent injunction against the defendants from dealing in products using the mark/name JOCKEY, registered in CS(COMM) 318/2023 Page 8 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:38 favour of the plaintiff and declared as a well-known trade made within the meaning of Section 2(1)(zg) of the Trademarks Act 1999.
18. A prima facie case of infringement and passing off is made out, based on the averments contained in the plaint.
19. I have heard Mr. Khan, learned Counsel for the plaintiff.
20. Let the plaint be registered as a suit.
21. Issue summons.
22. Written statement, accompanied by affidavit of admission and denial of the documents filed by the plaintiff may be filed within 30 days with advance copy to learned Counsel for the plaintiff who may file replication thereto, accompanied by affidavit of admission and denial of the documents filed by the defendant within 30 days thereof.
23. List before the learned Joint Registrar (Judicial) for completion of the pleadings, admission and denial of documents and marking of exhibits on 18th July 2023, whereafter the matter would be placed before the Court for case management hearing and further proceedings.
IA 9634/2023 (Order XXXIX Rules 1 and 2 of the CPC)
24. This is an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking interlocutory injunctive relief.
CS(COMM) 318/2023 Page 9 of 15This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:38
25. Issue notice, returnable before the Court on 21st August 2023. Reply, if any, be filed within four weeks with advance copy to learned Counsel for the plaintiffs who may file rejoinder thereto, if any, within 4 weeks thereof.
26. Inasmuch as a prima facie case of manufacture and sale of counterfeit products, using fake trade marks of the plaintiff, is made out, the court has necessarily to interdict such activities even at this stage.
27. Accordingly, till the next date of hearing, Defendants 1 to 7 as well as all others acting on their behalf shall stand restrained from using the mark/name JOCKEY, the Jockey swirl logo and/or any other mark which is identical or deceptively similar to the JOCKEY Trademarks of the plaintiff.
28. Additionally, the said defendants are directed to place on record, on affidavit, accounts of sales and purchases made by them, at present and in the past, using the plaintiff's registered JOCKEY marks as well as the figures of stocks of such goods which are presently lying with them.
I.A. 9639/2023 (Order XXVI Rules 9 and 10 of the CPC)
29. This is an application which seeks appointment of four Local Commissioners to inventorise and seize the infringing goods from the following premises of the defendants.
Sl. Particulars of the defendants Defendants no.
No. premises 1. M/s Khalsa Accessories Defendant No. 1 CS(COMM) 318/2023 Page 10 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:38 Shop No 7022, Main Tank Road, Karol Bagh, New Delhi-
110027
Phone No: 9319402187,
8860465237
2 M/s K.K. Enterprises Defendant No. 2
9/5, DS Quarters Main, Tank
Road, Karol Bagh, New Delhi
- 110027
Phone No: 9773637998,
9310197170
3 M/s Mama Bhanja Defendant No. 3
Shop No 108-110, Basement
Gurudwara Complex, Tank
Road, Karol Bagh, New Delhi
- 110027
Phone No: 9717950602
4. M/s Satguru Kripa Defendant No. 4
6213 Main Tank Road,
Kuda Khatta, Karol Bagh,
New Delhi - 110005
Phone No: Not Available
5. M/s Guru Kripa Enterprises, Defendant No. 5
Shop No 206, 226, New
Gurudwara, Complex Main
Tank Road, Karol Bagh New
Delhi-110005
Phone No: 8447907380,
9821419530
6. M/s Ashu Garments Defendant No. 6
Shop No 103 Basement, New
Gurudwara Complex, Gali No
4, Tank Road, New Delhi -
110005
Ph. No: Not Known
7. M/s Do Bhaiyon Ki Dukan Defendant No. 7
Shop No-8/1, Main Tank Road
Near Bijli Transformer, Karol
Bagh, New Delhi - 110005
Ph. No: Not Known
30. In view of the law laid down in Laxmikant V. Patel v. Chetanbhai Shah2 and Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia3, the facts of the present case make out a prima facie case of appointment of Local Commissioners so as to ensure that the further 2 (2002) 3 SCC 65 3 (2004) 3 SCC 90 CS(COMM) 318/2023 Page 11 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:38 release, into the market, of counterfeit products of the plaintiff does not take place.
31. Resultantly, this Court appoints Mr. Gokul Sharma, Advocate (Cell: 9045885304), Ms. Vidhi Gupta, Advocate (Cell: 9910170303), Ms. Smriti Jain, Advocate (Cell: 9971467161) and Mr. Rajesh Kumar Sharma, Advocate (Cell: 9910015338) as the Local Commissioners to visit the premises as shown hereinbelow.
Sl. Particulars of the Defendants Name of Local
No. premises Commissioner(s) with
Contact number
1. M/s Khalsa Accessories
Shop No 7022, Main Tank
Road, Karol Bagh, New Delhi-
110027
Phone No: 9319402187,
8860465237 Mr. Gokul Sharma, Advocate
2 M/s K.K. Enterprises
9/5, DS Quarters Main, Tank
Road, Karol Bagh, New Delhi
- 110027
Phone No: 9773637998,
9310197170
3 M/s Mama Bhanja
Shop No 108-110, Basement
Gurudwara Complex, Tank
Road, Karol Bagh, New Delhi
- 110027
Phone No: 9717950602 Ms. Vidhi Gupta, Advocate
4. M/s Satguru Kripa
6213 Main Tank Road,
Kuda Khatta, Karol Bagh,
New Delhi - 110005
Phone No: Not Available
5. M/s Guru Kripa Enterprises,
Shop No 206, 226, New
Gurudwara, Complex Main
Tank Road, Karol Bagh New
Delhi-110005
Phone No: 8447907380,
9821419530 Ms. Smriti Jain, Advocate
6. M/s Ashu Garments
Shop No 103 Basement, New
Gurudwara Complex, Gali No
4, Tank Road, New Delhi -
CS(COMM) 318/2023 Page 12 of 15
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:38 110005 Ph. No: Not Known
7. M/s Do Bhaiyon Ki Dukan Shop No-8/1, Main Tank Road Mr. Rajesh Kumar Sharma, Near Bijli Transformer, Karol Advocate Bagh, New Delhi - 110005 Ph. No: Not Known
32. The commission shall be executed on 23rd May 2023 at 11:00 a.m., needless to say, without any advance notice to the defendants.
33. The terms of commission shall be as under:
(i) The learned Local Commissioner shall visit the aforesaid premises of the defendant and inventorise and take into custody
(a) any goods, found in the said premises, bearing the name/mark 'JOCKEY' or the logo or the device mark, which stands registered in favour of the plaintiff,
(b) all labels, printing material and other material which may be bearing the said word mark/device mark, and
(c) all equipment, inks, dice, and other material which may be used for printing and manufacture of the impugned mark or of the goods on which the said marks are to be affixed.
(ii) All such materials shall be inventorised, whereafter they shall be handed over to the defendants under superdari for being retained in safe custody, pending further orders to be passed in the present case.
(iii) The commission shall be executed peacefully, without unnecessary disturbing the legitimate business activities of the CS(COMM) 318/2023 Page 13 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:38 defendants.
(iv) The plaintiff shall be entitled to depute one of its representatives to accompany each learned Local Commissioner during execution of the commission.
(v) Persons in occupation of the aforesaid premises are directed to cooperate with the execution of the commission.
(vi) The entire proceedings shall be videographed at the expense of the plaintiff, so that the Court is satisfied that the commission has been executed without hindrance.
(vii) Should need arise, the learned Local Commissioners would be at liberty to secure the assistance of the jurisdictional police authorities, in order to ensure unhindered execution of the commission. In that event, this order shall act as a mandate to the SHO/ jurisdictional police authority to render all necessary assistance in that regard.
(viii) Should it become necessary, the learned Local Commissioners are permitted to effect forced ingress into any of the premises in which the commission is to be executed.
(ix) Should, during the execution of the commission, the learned Local Commissioners come to know, either on their own or as disclosed by the plaintiff or the defendants, of any other premises where such other infringing activities are taking place, the commission shall be executed in the said other places in the terms indicated hereinabove.
CS(COMM) 318/2023 Page 14 of 15This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:38
(x) Consequent on execution of the commission, the learned Local Commissioners shall file reports regarding execution of the commissions within one week therefrom.
(xi) Each of the learned Local Commissioners shall be entitled to consolidated fees of ₹ 1 lakh, apart from travel to and fro and incidental expenses at actuals for executing the commission. Fees for executing the commission shall be payable in advance of the commission thereof.
34. Compliance under Order XXXIX Rule 3 of the CPC may be effected within one week of filing of the reports by the learned Local Commissioners.
35. This application stands disposed of accordingly.
36. The Registry is directed to upload this order on the website of this Court only after the commission is executed and reports thereof are filed by the learned Local Commissioners.
37. Dasti.
C. HARI SHANKAR, J.
MAY 18, 2023 dsn CS(COMM) 318/2023 Page 15 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 13:29:38