Mallcom (India) Limited & Anr vs Rakesh Kumar & Ors on 19 March, 2019

[Cites 8, Cited by 8]

Delhi High Court

Mallcom (India) Limited & Anr vs Rakesh Kumar & Ors on 19 March, 2019

Bench: Rajiv Sahai Endlaw

* IN THE HIGH COURT OF DELHI AT NEW DELHI

% Date of decision: 19th March, 2019.

+ CS(COMM) 480/2016, IA No.5571/2016 (u/O XXXIX R-1&2
CPC), IA No.12236/2017 (of D-4&5 u/O XXXIX R-4 CPC r/w S-
151 CPC), IA No.12890/2018 (of D-4&5 u/O XI R-10 CPC) & IA
No.12370/2018 (u/S 151 CPC).
MALLCOM (INDIA) LIMITED & ANR ..... Plaintiffs
Through: Mr. Saurabh Banerjee, Mr. Debjyoti
Sarkar, Mr. Afzal B. Khan & Mr.
Ashutosh, Advs.
Versus
RAKESH KUMAR & ORS ..... Defendants
Through: Mr. Sanjeev Singh, Mr. D.K. Yadav &
Ms. Kamla, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

1. The two plaintiffs i.e. Mallcom (India) Ltd. and Mallcom Safety Pvt.

Ltd., being the proprietors of the registered trade mark (Label)",

in respect of safety equipment, more particularly safety shoes, have instituted

this suit to restrain the defendants no.1 and 2 i.e. Rakesh Kumar and Manoj

Kumar from carrying on business in the name and style of defendant no.3

M.K. Sales Corporation and the defendants no.4 and 5 viz. Adeeba

International and Alina Exim, from infringing the said trade mark of the

plaintiffs and passing off their goods under the mark and for

ancillary reliefs.

CS(COMM) No.480/2016 Page 1 of 31
2. The suit came up first before this Court on 5th May, 2016 when, while

issuing summons thereof, vide ex parte ad-interim order, the defendants

were restrained from manufacturing, selling or otherwise dealing in goods

under the trade mark or any other mark similar or deceptively

similar to the plaintiffs‟ mark ,and commissions

were also issued for seizure of the infringing goods. The defendants no.4

and 5 filed an application under Order XXXIX Rule 4 of the CPC. Though

the same counsel appears for all the defendants, separate written statements

have been filed by defendants no.1 to 3 on the one hand and the defendants

no.4 and 5 on the other hand and to which replications have been filed by the

plaintiffs. The defendants no.4 and 5 filed IA No.11941/2017 for amendment

of their written statement and which application was dismissed vide order

dated 5th October, 2018.

3. The counsel for the plaintiffs, on 17th January, 2019 contended that

though the suit was ripe for framing of issues but the plaintiffs were seeking

summary judgment. On enquiry, whether any application under Order XIIIA

of the CPC as applicable to commercial suits, had been filed, the answer was

in the negative. However, the counsel for the plaintiffs on 17 th January, 2019

referred to the amendment vide Notification dated 16th October, 2018 with

CS(COMM) No.480/2016 Page 2 of 31
effect from 1st November, 2018 to the Delhi High Court (Original Side)

Rules, 2018, particularly to the new Chapter XA inserted therein and Rule 1

titled "Summary Judgment" whereof provides "At the time of Case

Management Hearing, a Court, may of its own, decide a claim pertaining to

any dispute, by a summary judgment, without recording oral evidence" and

contended that by the said amendment to the Rules, the need for filing an

application for summary judgment under Order XIIIA of the CPC had

disappeared. It was however enquired from the counsel for the plaintiffs,

whether Order XIIIA of the CPC, providing for an application to be made for

a summary judgment, had been done away with. Upon the counsel for the

plaintiffs replying in the negative, it was further enquired that, since there

was obviously an inconsistency in Order XIIIA Rule 4 of the CPC

prescribing the procedure for applying for summary judgment and Chapter

XA Rule 1 of the Delhi High Court (Original Side) Rules, which of the two

will prevail. The counsel for the plaintiffs contended that there is no

inconsistency. Granting liberty to the counsels to address on the said aspect,

the hearing was adjourned to 14th February, 2019.

4. The application of the plaintiffs for interim relief and the application

of the defendants no.4 and 5 under Order XXXIX Rule 4 of the CPC were

CS(COMM) No.480/2016 Page 3 of 31
also for consideration on 17th January, 2019. However, the counsel for the

defendants contended that the defendants had preferred a Special Leave

Petition (SLP) against the order 5th October, 2018 of dismissal of the

application of the defendants for amendment of the written statement but

which SLP had not been listed till then and sought adjournment.

Adjournment was denied and after hearing the counsels, the ex parte ad-

interim order was made absolute till the decision of the suit.

5. The counsel for the plaintiffs as well as the counsel for the defendants

were heard on 14th February, 2019, on the entitlement of the plaintiffs to seek

summary judgment, without filing an application therefor, as well as on

merits i.e. on the entitlement of the plaintiffs to summary judgment, and

orders were reserved.

6. The defendants, till date have not informed the outcome of the SLP

claimed on 17th January, 2019 to have been preferred against the order dated

5th October, 2018 of dismissal of the application for amendment of the

written statement.

7. The plaintiffs instituted the suit, pleading that (i) the plaintiffs are

market leaders in all kinds of safety equipment gears catering to the needs of

a variety of clientele; (ii) in the field of industrial safety shoes, the plaintiffs

CS(COMM) No.480/2016 Page 4 of 31
have an annual production capacity of more than 12,00,000 pairs a year; (iii)

the plaintiffs, around the year 1994 entered into a joint venture with a French

company i.e. Pro-Inter Group, later renamed as Delta Plus Group in the year

1999, for exporting its leather gloves and other industrial products to the

European market; (iv) during the subsistence of this joint venture, the

plaintiff no.1 conceptualized the brand trade mark in or about the

year 2004-05 and began using it intermittently in respect of safety

equipment, more particularly safety shoes; (v) this mark was adopted as the

primary brand / mark by the plaintiffs during the year 2010, before parting

ways with Delta Plus Group; (vi) the plaintiffs are exporting their goods

under the said trade mark to various countries; (vii) the products of the

plaintiffs including the industrial safety shoes are identified, packaged and

sold under the said brand and the safety shoes of the plaintiffs are identified,

bought and sold as shoes; (viii) the products of the plaintiffs under the

mark have come to be certified under both, Indian Certification

(BIS) as well as European Certification (ISO); (ix) the sales of the plaintiffs

in respect of trade mark have galloped from Rs.11.6 crores in

2009-10 to Rs.31 crores in the year 2013-14 and the plaintiffs have

correspondingly also increased their outflow on advertising the said mark;

CS(COMM) No.480/2016 Page 5 of 31
(x) the trade mark „CIGER‟ (LABEL) has been duly registered in Class 9

with effect from 30th September, 2010; (xi) the trade

mark is written in a stylized manner; (xii) various other

applications of the plaintiffs for registration of and in

Classes 9 & 25 are pending consideration;

(xiii) the trade mark is a distinctive and artistic stylization of

the word "TIGER" and therein, "depiction of the (a) letter „T‟ is in a

„cursive-reverse J‟; (b) letter „I‟ is by a „bold vertical‟ next to the „reverse-J‟;

broken „E‟ sandwiched between „G‟ and „R‟; (e) letter „R‟ is as a 'half-R‟

with vertical bar of the letter „R‟ being missing; and, (f) presence of a

„continuum‟ cutting across the letters „G‟, „E‟ and „R‟ giving an impression

that the last three letters are fused"; (xiv) the visual features, on account of

style, constitute an "artistic work" within the meaning of Section 2(c) of the

registration for the artistic work in the mark (Label); (xv) the

products of the plaintiffs are sold in a distinct packaging involving an artistic

get-up and unique shading/ combination of

colours bearing the names of the plaintiffs as well as prominently employing

CS(COMM) No.480/2016 Page 6 of 31
the mark written in a stylized manner; (xvi) the soles of the shoes

of the plaintiffs are exclusive to the plaintiffs, being an original design

registered under the Designs Act, 2000; (xvii) the defendants are

manufacturing cheap quality safety shoes employing the plaintiffs trade mark

(Label) packed in an identical packaging like in which the

plaintiffs own goods are sold; (xviii) the defendants not only market their

products using the plaintiffs trade mark with insignificant variations and

packaged in the very same packaging employed by the plaintiffs but also

copied the original design of the sole of the shoes; (xix) these acts of the

defendants amount to counterfeiting the product of the plaintiffs; (xx) the

defendants are also posing themselves as authorized dealers of the plaintiffs;

(xxi) the mala fides of the defendants are demonstrated by a comparison of

the products of the plaintiffs and of the defendants as under:

Plaintiff‟s Product Defendants‟ Product

CS(COMM) No.480/2016 Page 7 of 31
Plaintiff‟s Product Defendants‟ Product

CS(COMM) No.480/2016 Page 8 of 31
Plaintiff‟s Product Defendants‟ Product

CS(COMM) No.480/2016 Page 9 of 31
; and, (xxii) the defendants also do not provide their own name,

manufacturing address and other details as required under the Legal

Metrology (Packaging Commodities) Rules, 2011. Hence, the suit.

8. The defendants no.1 to 3, in their written statement have pleaded that

(a) the trade mark / label of the defendants is neither identical

nor deceptively similar to the mark of the plaintiffs; (b) the defendant no.3 is

the sole proprietary of Ms. Niti Devi and not of the defendants no.1 and 2

and is acting as the dealer and distributor of defendants no.4 and 5 for their

goods under the trade mark ; (c) the defendants no.1 and 2 are

employees of defendant no.3; (d) the defendant no.4 is the lawful owner and

proprietor of the trade mark / label and adopted the said mark in

the year 2015 and has since then been continuously using the same; (e) the

mark is distinctive of the goods of the defendants and has

tremendous goodwill; (f) the defendant no.4 has been using the mark

as a word mark and also as a label/device in a distinctive get-up,

make up, colour, colour combination, design and artistic manner; and, (g) the

defendants no.1 and 3 rely on the written statement of defendants no.4 and 5.

CS(COMM) No.480/2016 Page 10 of 31
9. The defendants no.4 and 5, in their written statement have pleaded

that; (i) no action for infringement is maintainable against the defendants

no.4 and 5 as the trade mark is not registered in the name of the plaintiffs and

the defendant no.4 is the proprietor of the trade mark ; (ii) the

sales and advertising figures pleaded by the plaintiffs are not shown to be

exclusively of the mark ; (iii) the plaintiffs have not filed any

documents to show adoption of the mark in the year 2004-05 or of use of the

mark " ; (iv) due to non-user of the mark " , the plaintiffs

have no right thereto; (v) adoption of the mark by the defendants

is honest and bona fide; (vi) the defendant no.4 has filed an application for

registration with the Registrar of Trade Marks; (vii) the defendant no.4

commenced business in the goods under the mark in the year

2015 and has been using the same since then; (viii) the defendant no.4 uses

the trade mark as a word mark and also holds copyright therein;

(ix) the goods of the defendants no.4 and 5 are of high quality; (x) the

defendants no.4 and 5 have widely advertised the goods under the mark

; (xi) in reply to para no.24 of the plaint wherein the plaintiffs

have made the comparison as aforesaid, though it is not denied that the
CS(COMM) No.480/2016 Page 11 of 31
photograph therein are of the products of the plaintiffs and the defendants

but it is contended that the comparison is "false, misleading and holds no

merit"; and, (xii) that the defendants are not representing themselves to be

the dealers of the plaintiffs or giving the plaintiffs name and address on their

goods. Else, contents of the plaint are generally denied.

10. The commissions issued seized shoe uppers, soles, packaging and

shoes with the mark . No objections to the reports of the

commission have been filed.

11. The plaintiffs, along with the plaint have inter alia filed copies of (a)

bills with effect from 1st April, 2006 raised of brand shoes; (b)

pending applications for registration of marks and

in various classes; (c) certificate dated 23rd August, 2013 of registration

dated 30th September, 2010 of the word mark "CIGER" on „proposed to be

used‟ basis for safety shoes, safety garments and other industrial safety

equipment; (d) copyright registration dated 28th October, 2012 of the mark

; (e) design registration dated 23rd May, 2007; and (f) orders

obtained in other suits instituted for safeguarding the mark.

12. Needless to state, the defendants in their affidavit of admission / denial

of plaintiffs‟ documents have denied all the documents of the plaintiffs.

CS(COMM) No.480/2016 Page 12 of 31
13. The defendants, along with their written statement have inter alia filed

copies of (i) invoices of sale of the shoes with effect from 28th

July, 2015; (ii) certificate of Registration of design dated 8th December,

2014; (iii) application dated 13th June, 2015 for registration as a

device mark in Class 9 with respect to safety shoes, safety belts, safety

harness, safety gloves, safety glass and safety mirror.

14. I may at this stage mention that the amendment sought by the

defendants to their written statement and which has been declined, was to

plead that the plaintiff no.1, vide Assignment Deed dated 28th October, 2010

had assigned the trade mark under application No.1488116 in

favour of Delta Plus Corp, SA, France and the plaintiffs are thus not left with

any rights in the trade mark . The plaintiffs, in their reply to the said

application for amendment inter alia pleaded that the assignment by the

plaintiffs of the trade mark / logo under a separate registration

did not prevent the plaintiffs from protecting the mark as aforesaid,

which remains registered in the name of the plaintiffs.

15. This Court dismissed the application for amendment vide order dated

5th October, 2018 reasoning that the assignment by the plaintiffs of the mark
CS(COMM) No.480/2016 Page 13 of 31
subject matter of No.1488116 had nothing to do with the suit trade marks

No.1988452 and 2030791. Upon the counsel for the defendants raising the

said argument on 17th January, 2019 in opposition to the application of the

plaintiffs for interim relief also, it was inter alia reasoned that the said plea is

not open to the defendants and if at all available to anyone, is available to the

assignee of the plaintiffs.

16. That brings me to the question as raised in the hearing on 17th January

2019, of maintainability of a verbal request for summary judgment without

filing an application as provided under Order XIIIA Rule 4 of the CPC as

applicable to commercial suits.

17. The counsel for the plaintiffs has urged that, (a) Section 18 of the

Commercial Courts Act, 2015 empowers the High Court to, by notification,

issue Practice Directions to supplement the provisions of Chapter II of the

Commercial Courts Act or the CPC insofar as such provisions apply to the

hearing of commercial disputes; (b) the Practice Directions issued in exercise

of powers under the said Section 18 are contained in Annexure-E to the

Delhi High Court (Original Side) Rules and direction no.9 therein empowers

the Court to "pass orders as it may think fit for the speedy disposal of the suit

or narrowing the controversy between the parties, including.....explore the

CS(COMM) No.480/2016 Page 14 of 31
possibility of deciding the dispute by a summary judgment, without a

specific application for the said purpose, on the basis of pleadings,

dispensing with the trial of the suit on the questions of law or facts on which

the parties are not at issue."; (c) thereafter, vide Notification dated 16 th

October, 2018, the Rules themselves were amended to incorporate the said

Practice Directions in the Rules; (d) Rule 1 of Chapter XA incorporated in

the Rules, empowers the Court to, "At the time of Case Management

hearing.........of its own, decide a claim pertaining to any dispute, by a

summary judgment, without recording oral evidence"; (e) Chapter XVII of

the Rules as amended with effect from 16th October, 2018 also refers to the

Practice Directions issued and contained in Annexure-E; (f) there is no

conflict between Rule 4 of Order XIIIA supra and Rule 1 of Chapter XA; the

two provisions are applicable in separate stages; while the Court may pass a

summary judgment at the stage of Case Management Hearing, the procedure

under Order XIIIA is available to an applicant only prior to the framing of

the issues; (g) the two provisions are even otherwise required to be

harmoniously construed so as to give effect to both, without rendering the

other nugatory; and, (h) the Notification dated 16th October, 2018 is aimed to

compliment and supplement the provisions of the Commercial Courts Act

CS(COMM) No.480/2016 Page 15 of 31
and the Delhi High Court (Original Side) Rules. The counsel for the

plaintiffs relies on Infrastructure Leasing & Financial Services Ltd. Vs.

Commissioner of Value Added Tax MANU/DE/0902/2010 and passages

from „Principles of Statutory Interpretation‟, Justice G.P. Singh, (12th

Edition) (2010) on the principle of „Harmonious Construction‟;

18. The counsel for the defendants, in opposition to the contention of the

counsel for the plaintiffs, of the plaintiffs being entitled to summary

judgment without an application contended that Order XIIIA Rule 4 of the

CPC as applicable to commercial suits having provided for a detailed

procedure for summary judgment, no summary judgment can be passed

without following the said procedure. Attention was invited to Section 13(2)

of the Commercial Courts Act to contend that the provisions thereof are

notwithstanding anything contained in any other law for the time being in

force.

19. I may add that I have since, in K.R. Impex Vs. Punj Lloyd Ltd. 2019

SCC OnLine Del 6667 dealt with the said aspect and held that summary

judgment can be sought in a commercial suit under Chapter XA Rule 1 of

the Delhi High Court (Original Side) Rules as amended with effect from 1 st

November, 2018, without filing an application as provided under Order

CS(COMM) No.480/2016 Page 16 of 31
XIIIA Rule 4 of the CPC as applicable to commercial suits. It is thus not

deemed appropriate to reiterate the said reasons here, adding to the length of

this judgment.

20. No merit is found in the contention of the counsel for the defendants.

Section 13(2) of the Commercial Courts Act is only qua appeal from an

order or a decree of a Commercial Division or a Commercial Court and not

with respect to the procedure to be followed in commercial suits.

21. I may add, that the Commercial Courts Act amended the Rules

contained in Order I to Order LI of the First Schedule to the CPC and which

Rules in any case the High Court, in exercise of power contained in Section

122 of the CPC is empowered to amend. The Commercial Courts Act, vide

Section 16 thereof, amended the provisions of the CPC as applicable to

commercial suits, in the manner prescribed in the Schedule thereto. The

Schedule to the Commercial Courts Act, amends the First Schedule of the

CPC and inserts new Order XIIIA supra. Though the First Schedule of the

CPC has been so amended by a statute i.e. the Commercial Courts Act but

the same would not take away from the fact that Order XIIIA of the CPC, as

applicable to commercial suits, remains subject to modification / amendment

by the High Court in exercise of powers under Section 122 of the CPC. This

CS(COMM) No.480/2016 Page 17 of 31
Court by its Rules, was thus competent to, notwithstanding Order XIIIA

providing for application to be filed for summary judgment, provide that

even without such an application, the Court is competent to pass summary

judgment.

22. I may yet further add that Order XV of the CPC, as existed prior to the

coming into force of the Commercial Courts Act, remains unaltered. Rule 1

thereof requires the Court, where it appears at the first hearing of the suit,

that the parties are not at issue on any question of law or fact, to at once

pronounce judgment. Issues, under Order XIV arise when a material

proposition of fact or law is affirmed by one party and denied by other.

Thus, dehors Order XIIIA supra also, the commercial suits also can be

disposed of under Order XV Rule 1, if found to be applicable. I have dealt

with this subject at length in Ashoka Estate Pvt. Ltd. Vs. Dewan Chand

Builders Pvt. Ltd. 2009 (113) DRJ 193, Kawal Sachdeva Vs. Madhu Bala

Rana 2013 SCC OnLine Del 1479, Bhupinder Jit Singh Vs. Sonu Kumar

2017 SCC OnLIne Del 11061, Vireet Investments Pvt. Ltd. Vs. Vikramjit

Singh Puri 2017 SCC OnLine Del 11183, Abbott Healthcare Pvt. Ltd. Vs.

Raj Kumar Prasad (2018) 249 DLT 220 and Bhavna Khanna Vs. Subir

Tara Singh 2019 SCC OnLine Del 6978 and need to reiterate is not felt.

CS(COMM) No.480/2016 Page 18 of 31
23. That brings me to the question, whether the plaintiffs, in this state of

pleadings and documents, are entitled to summary judgment.

24. The test for summary judgment, as prescribed in Rule 3 of Order

XIIIA of the CPC as applicable to Commercial Courts Act is, that "the

defendant has no real prospect of successfully defending the claim" and that

"there is no other compelling reason why the claim should not be disposed of

before recording the oral evidence". Rule 1 of Chapter XA of the Delhi

High Court (Original Side) Rules merely provides that "At the time of Case

Management hearing, a Court, may of its own, decide a claim pertaining to

any dispute, by a summary judgment, without recording oral evidence" and

Rule 3 therein reiterates the language aforesaid of Rule 3 of Order XIIIA qua

grounds for summary judgment.

25. Applying the test, whether the defendants in the present case have any

real prospect of defending the claim of the plaintiffs, I find against the

defendants. The counsel for the defendants, save for repeating the contents

of the written statement, has not urged any compelling reason why the suit

should not be disposed of before recording of oral evidence. My reasons for

finding the plaintiffs entitled to summary judgment, insofar as the claim of

CS(COMM) No.480/2016 Page 19 of 31
the plaintiffs for permanent injunction restraining infringement of trade

mark, passing off and delivery are concerned, are enumerated herein below:

A. There is no challenge to the registrations pleaded by the

plaintiffs. It is not the case of the defendants that there is no

registration in the records of the Registrar of Trade Marks as

pleaded by the plaintiffs or that the Certificates of Registration

filed by the plaintiffs are forged. The registration of the

plaintiffs dated 30th September, 2010 is admittedly prior to that

applied for by the defendants on 13th June, 2015 claiming use

with effect from 2015.

B. It thus requires no trial that the plaintiffs are the senior user of

the mark and the defendants are the junior user of the mark.

C. Though the plaintiffs have pleaded use of the subject trade mark

intermittently with effect from 2004 but the plaintiffs in the

application dated 30th September, 2010 for registration and

which has been granted, applied on „proposed to be used‟ basis.

The defendants have denied use of the trade mark by the

plaintiffs. The denial by the defendants of the invoices with

effect from 1st April, 2006 filed by the plaintiffs is merely to put

CS(COMM) No.480/2016 Page 20 of 31
the plaintiffs to proof, and it is not the plea that the defendants

have made enquiries from the persons on whom the said

invoices are raised and that the said persons have denied

transaction with the plaintiffs and that the plaintiffs have

fabricated the invoices. The invoices are tax paid. It is not the

case that no tax is learnt to be deposited. If merely on denial of

documents, possibility of summary judgment were to be

defeated, no summary judgment would be possible in any

commercial suit, making otiose the provision for summary

judgment. Even otherwise, the plaintiffs, merely on the ground

of holding the registration, would be entitled to institute an

action restraining infringement thereof. It has been held in Sun

Pharmaceuticals Industries Ltd. Vs. Cipla Ltd. 2009 (39) PTC

347 (DB) and H&M Hennes & Mauritz AB Vs. HM

Megabrands Pvt. Ltd. (2018) 251 DLT 651 that non-user by the

plaintiff cannot be a defence to an action for infringement and

the application for removal of the mark from the Register on

account of non-user has to be filed before the Registrar of Trade

Marks. Not only did the defendants not file any such application

CS(COMM) No.480/2016 Page 21 of 31
at any time prior to the institution of this suit by the plaintiffs

but the defendants, even after institution of this suit and

knowledge of the claim of the plaintiffs, have in the last two and

a half years not applied to the Registrar of Trade Marks for

removal of the mark of the plaintiffs on account of non-user

thereof by the plaintiffs. The only inference is that the plea of

non-use is dilatory.

D. The defendants, when applied on 13th June, 2015 for registration

of their mark , as a prudent businessman, acting

through professionals are deemed to have conducted a search of

the Register for other similar marks if any. The defendants, even

if till then were not aware of the mark of the plaintiffs, at least

then are deemed to have come to know of the registration in

favour of the plaintiffs and if the plaintiffs had not been using

the mark of which registration had been obtained, the

defendants, before applying for registration of a similar mark in

their own favour, would have definitely initiated proceedings

for removal from the Register of the mark of the plaintiffs.

CS(COMM) No.480/2016 Page 22 of 31
E. The plaintiffs have placed before this Court, copies of web

pages of their website and extracts from the product catalogues

issued by the plaintiffs, both showing products of the plaintiffs

with the subject mark. The plaintiffs have also filed copies of

certifications and test results issued by BIS and ISO, of products

with the subject mark. The plaintiffs have also placed on record

India Design Mark Award received by the plaintiffs with

respect to the shoe with the subject mark, the advertisements

and promotional material related to the plaintiffs products with

the subject marks and invoices of advertisements issued of

products with the subject mark. All these show use of the mark

by the plaintiffs. The defendants, in their written statements

have not pleaded that the web pages filed, are not as per the

websites. It is inconceivable that the plaintiffs, if had not been

using the mark, would have got an award for design of the

product under the said mark and / or would have been issued

BIS and ISO certification with respect to the subject mark. It

has been held in N.R. Dongre Vs. Whirlpool Corporation 1996

(5) SCC 714, Revlon Inc. Vs. Sarita Manufacturing Co. AIR

CS(COMM) No.480/2016 Page 23 of 31
1998 Del 38, N.R. Dongre Vs. Whirlpool Corporation AIR

1995 Del 300, Indian Shaving Products Ltd. Vs. Gift Pack

1998 (18) PTC 698 (Del) and J.N. Nichols (Vimto) Ltd. Vs.

Rose & Thistle AIR 1994 Cal 43 (DB) that issuance of

advertisements of the mark itself qualifies as use of the mark.

F. The defendants have not pleaded, if not under the subject mark,

under what mark are the plaintiffs marketing their shoes.

G. Thus, the plea of the defendants, of the plaintiffs not using the

subject mark, is found to be without any substance and not a

material plea on which even an issue would be framed.

H. The defendants, being in the same trade as the plaintiffs, are

deemed to be aware of the admitted prior use by the plaintiffs of

the mark „TIGER‟ and for this reason, the adoption cannot be

said to be honest or bona fide. Reference in this regard can be

made to Info Edge (India) Pvt. Ltd. Vs. Shailesh Gupta (2002)

98 DLT 499 and Dr. Reddy's Laboratories Ltd. Vs. Reddy

Pharmaceuticals Ltd. (2004) 113 DLT 363 (FAO)(OS)

166/2004 preferred whereagainst was dismissed vide judgment

titled Reddy Pharmaceuticals Ltd. Vs. Dr. Reddy's

CS(COMM) No.480/2016 Page 24 of 31
Laboratories Ltd. 2007 (99) DRJ 331 (DB) (SLP (C)

No.1998/2008 preferred whereagainst was dismissed vide order

dated 4th February, 2008)).

I. That leaves only the question of similarity / dissimilarity. On

that aspect also, in my view no trial is required. It has been held

in Mahendra & Mahendra Paper Mills Ltd. Vs. Mahindra &

Mahindra Ltd. (2002) 2 SCC 147 followed in Larsen &

Tuobro Ltd. Vs. Lachmi Narain Traders (2008) 149 DLT 46

(DB) that in suits relating to infringement and passing off,

examination of self-serving witnesses by the parties is of no

avail and it is ultimately the Court which has to take a call on

similarity / deceptive similarity, keeping in mind the

prospective of a consumer with an ordinary intellect and a non-

discerning eye. Reference can also be made to Staar Surgical

Company Vs. Polymer Technologies International 2016 SCC

OnLine Del 4813, Kanungo Media (P) Ltd. Vs. RGV Film

Factory 2017 SCC OnLine Del 8768, Jaideep Mohan Vs. Hub

International Industries (2018) 249 DLT 572, The Financial

Times Ltd. Vs. The Times Publishing House Ltd. (2016) 234

CS(COMM) No.480/2016 Page 25 of 31
DLT 305 and judgment dated 22nd November, 2018 in

CS(COMM) No.1668/2016 titled „Biofarma Vs. Bal Pharma

Ltd.'.

J. Applying the said test, a bare perusal of the comparison would

show, the mark adopted by the defendants is indeed similar /

deceptively similar to the senior mark of the plaintiffs.

K. I have in order dated 17th January, 2019 in this suit as well as in

Allied Blenders & Distillers Pvt. Ltd. Vs. Shree Nath Heritage

Liquor Pvt. Ltd. 2014 SCC OnLine Del 3412, Pratibha M.

Singh Vs. Singh & Associates 2014 SCC OnLine Del 1982 and

The Gillette Company LLC Vs. Tigaksha Metallics Pvt. Ltd.

(2018) 251 DLT 530 held that the human mind and human eye

has a tendency to identify words from the first and the last

alphabets thereof, even if arrangement of one or two alphabets

in between is misplaced. Here, the defendants have merely

replaced the alphabet „G‟ in the trade mark of the plaintiffs with

alphabet „C‟ and which change is unlikely to be noticed by an

unwary and unsuspecting consumer who is likely to buy the

shoes and other products of the defendants under the mark

CS(COMM) No.480/2016 Page 26 of 31
, believing the same to be of the plaintiffs under the

mark . The style adopted by the defendants for

writing the alphabets in its trade mark is also found to be

identical to that of the plaintiffs. The mark of the plaintiffs,

though starting with the alphabet „T‟ does not write the alphabet

„T‟ in capital letters as the other alphabets of the mark are

written and also removes the „ascender‟ from the normal style

of writing the alphabet „t‟ in small case, making the alphabet „t‟

look somewhat like the alphabet „C‟ but without the curve of

the alphabet „C‟. The defendants, in their mark have also

adopted the exact same style of writing the alphabet „t‟ as well

as other alphabets, as in the mark of the plaintiffs. The alphabet

„C‟ and the alphabet „G‟, when written in capitals, look alike

and the „chin‟ of the alphabet „G‟ in capitals which is missing in

the mark of the defendants, is unlikely to be noticed while

seeing the overall impact of the two marks. So much so, that

the Registrar of Trade Marks also, while issuing Registration

Certificate No.2030791 to the plaintiffs, has described the word

mark as "CIGER". However, it is not the case of the

CS(COMM) No.480/2016 Page 27 of 31
defendants also that the mark of the plaintiffs is "CIGER"; the

defendants also have understood the mark of the plaintiffs as

only. It is not the case of the defendants that

though the plaintiffs were earlier using the mark "CIGER"

after commencement of use of the mark by the

defendants, have changed their mark to . The attempt

of the defendants at deception is writ large and is res ipsa

loquitur.

L. Even if the plaintiffs are not entitled to injunction on the

ground of infringement, would still be entitled to injunction on

the ground of passing off as well as infringement of copyright.

M. The defendants are also found affixing their mark on their shoes

at exactly the same position as the mark of the plaintiffs on their

own shoes.

N. The defendants, though have pleaded having adopted the mark

honestly and bona fide but have not explained the

same. While is a word of English language, there

is no such word as . The defendants have not

CS(COMM) No.480/2016 Page 28 of 31
explained as to why the defendants would invent a word

for their shoes. No issue thus arises on the plea of

the defendants, of honest and bona fide adoption of the mark by

the defendants.

O. Even otherwise, once the two marks are found to be similar /

deceptively similar, howsoever honest the adoption by the

defendants may be of the mark, will have no bearing on the

grant of relief of injunction and may have some bearing only in

grant of the relief of recovery of damages etc. Reference if any

required in this regard can be made to Laxmikant V. Patel Vs.

Chetanbhai Shah (2002) 3 SCC 65, The Timken Company Vs.

Timken Services Pvt. Ltd. (2013) 200 DLT 453, Jolen Inc. Vs.

Doctor & Company 2002 SCC OnLine Del 518, Insecticides

(India) Ltd. Vs. Parijat Industries (India) Pvt. Ltd. (2018) 252

DLT 129 and H&M Hennes & Mauritz AB supra.

26. The counsel for the defendants, in his arguments has not raised any

other plea which requires trial, save for generally stating that the written

statement raises issues which require trial.

CS(COMM) No.480/2016 Page 29 of 31
27. The plaintiffs are thus found entitled to summary judgment for the

reliefs of permanent injunction restraining infringement of trade mark,

28. The plaintiffs, in the suit have also claimed relief of permanent

injunction restraining infringement of design. However, the counsel for the

plaintiffs, while seeking summary judgment, has not argued on the said

aspect and not pressed for the said relief. Nevertheless, it is deemed

appropriate to, while disposing of this suit, grant liberty to the plaintiffs to

sue separately for infringement of design, if need therefor arises.

29. That leaves the relief claimed of rendition of accounts and recovery of

damages. Again, the counsel for the plaintiffs has not contended that issues

be framed on the said aspect and the suit for the said relief be put to trial.

Without trial and / or a decree for rendition of accounts, the plaintiffs cannot

be awarded the relief of damages. However, it being the own case of the

defendants that the defendants are using the mark since middle of the year

2015, the said use till the restraint order from this Court will be taken into

consideration while awarding costs of the suit.

30. A decree is thus passed, in favour of the plaintiffs and jointly and

severally against the defendants, of (i) permanent injunction in terms of

CS(COMM) No.480/2016 Page 30 of 31
prayer paragraph no.35(b),(c) and (e) of the plaint dated 29 th April, 2016; (ii)

of delivery of all the infringing products, by directing the defendants, to

whom the goods seized on commission were entrusted in superdari, to

deliver the infringing goods to the representatives of the plaintiffs within one

month of today; and, (iii) of recovery of costs of the suit with professional

fee assessed at Rs.6 lacs.

Decree sheet be drawn up.

RAJIV SAHAI ENDLAW, J.

MARCH 19, 2019 „gsr‟..

CS(COMM) No.480/2016 Page 31 of 31

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