Delhi High Court - Orders
M/S. Eduspark International Private ... vs M/S. Laxmi Publications Private ... on 23 August, 2022
Author: Jyoti Singh
Bench: Jyoti Singh
$~18
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 573/2022
M/S. EDUSPARK INTERNATIONAL PRIVATE
LIMITED ..... Plaintiff
Through: Mr. N.K. Bhardwaj, Ms. Anju
Agrawal, Mr. Rahul Maratha, Mr. Bikash Ghorai
and Mr. Deepak Panwar, Advocates.
versus
M/S. LAXMI PUBLICATIONS PRIVATE
LIMITED ..... Defendant
Through: None.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
ORDER
% 23.08.2022
I.A. 13142/2022 (Exemption)
1. Subject to the Plaintiff filing original and clearer copies of the documents with proper margins, which it may seek to place reliance on, within four weeks from today, exemption is granted.
2. Application is allowed and disposed of.
I.A. 13141/2022 (Section 12(A) of the Commercial Courts Act, 2015 seeking exemption from pre-institution mediation)
3. For the reasons stated in the application, the requirement of pre- institution mediation is dispensed with.
4. Application is allowed and disposed of.
Signature Not Verified Digitally Signed CS(COMM) 573/2022 Page 1 of 11 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36I.A. 13140/2022 (seeking leave to file additional documents)
5. Present application has been preferred on behalf of the Plaintiff seeking leave to file additional documents under Order 11 Rule 1(4) CPC.
6. Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015.
7. Application is allowed and disposed of.
I.A. 13143/2022(exemption from advance service on Defendant)
8. Since there is an urgency in the matter and the matter is being heard today, Plaintiff is exempted from serving advance notice on Defendant.
9. For the reasons stated in the application, the same is allowed and disposed of.
CS(COMM) 573/2022
10. Let plaint be registered as a suit.
11. Upon filing of process fee, issue summons to the Defendant, through all permissible modes, returnable on 03.11.2022 before the learned Joint Registrar.
12. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the receipt of summons. Along with the written statement, Defendant shall also file an affidavit of admission/denial of the documents filed by the Plaintiff.
13. Replication be filed by the Plaintiff within 15 days of the receipt of the written statement. Along with the replication, an affidavit of admission/ denial of documents filed by the Defendant, shall be filed by the Plaintiff.
14. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
Signature Not Verified Digitally Signed CS(COMM) 573/2022 Page 2 of 11 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36I.A. 13138/2022 (under Order 39 Rules 1 and 2 CPC, by Plaintiff)
15. Present application has been preferred by the Plaintiff under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 for grant of an ex-parte ad-interim injunction.
16. Issue notice to the Defendant through all prescribed modes, returnable on 06.12.2022, before Court.
17. It is averred that Plaintiff is a private limited company which is responsible for managing schools under the trademark 'VIBGYOR' and the schools managed by the Plaintiff under the trademark 'VIBGYOR' impart education from Play school to Higher Secondary.
18. It is further averred that the predecessor of the Plaintiff, M/s. Kare Edumin Private Limited, in the year 2004 after thorough planning and consistent efforts, set up the first VIBGYOR school in Goregaon, Mumbai. Thereafter, vide order dated 27.04.2017 passed by the National Company Law Tribunal, Mumbai Bench, in Company Scheme Petitions Nos. 46 & 47 of 2017, the scheme of amalgamation between M/s. Kare Edumin Private Limited and the Plaintiff was sanctioned whereby all the properties and assets (including the rights, title & interest) in the trademark of M/s. Kare Edumin Private Limited were transferred to the Plaintiff with effect from 01.06.2017. Plaintiff, since then, is responsible for managing Schools under the trademark 'VIBGYOR' imparting education from play school to Higher Secondary. Under the trademark 'VIBGYOR', Plaintiff manages 39 Schools across 7 States and 14 cities in India - Kolhapur, Mumbai, Pune, Surat, Kalyan, Benguluru, Navi Mumbai, Indore, Nashik, Mangaluru, Lucknow, Vadodara, Coimbatore and in the NCR including Gurugram.
Signature Not Verified Digitally Signed CS(COMM) 573/2022 Page 3 of 11 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:3619. It is averred that Plaintiff through its institutions focuses on providing young students with a healthy environment to nurture them cognitively, intellectually, artistically and athletically along with imbibing moral and cultural values. The teaching methodologies of the Plaintiff focuses on a colourful blend of traditional classroom learning combined with extensive sports facilities, modem teaching methodologies and wide range of extra- curricular activities, numerous social and cultural events and similar special occasions, which ensure a holistic approach to the students' overall growth and progress.
20. It is stated that over the years, Plaintiff has catered to more than 50,000 students and currently provides direct employment to over 2,00,000 persons in India, which showcases its immense reputation and goodwill.
21. It is further stated that Plaintiff publishes its own books for its students and the books are marked with its registered trademark 'VIBGYOR'.
22. It is averred that Plaintiff is the registered proprietor of 'VIBGYOR' trademarks and labels in India inter alia, in classes 41 and 16, the details of the same are given in para 12 of the plaint. The said registrations are valid and subsisting.
23. It is further averred that aforesaid registration of the trademark 'VIBGYOR' grants the Plaintiff exclusive and statutory rights to use and reproduce the said registered trademark in respect of its goods and services to the exclusion of others in trade and commerce.
24. It is stated in the plaint that Plaintiff honestly and bonafidely adopted and started using its trademark 'VIBGYOR' with a view to distinguish its said goods and services from those of the others. Plaintiff has spent large Signature Not Verified Digitally Signed CS(COMM) 573/2022 Page 4 of 11 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36 amounts of money in organising various inter-school carnivals, campaigns and educational and awareness programmes under its well-known trademark 'VIBGYOR' and same is published in various news articles/periodicals, publications, press releases published in newspapers and various third party websites, circulated in India such as Times of India, Business Standard, DNA India, Financial Express, Indian Express, Deccan Chronicle, Hindustan Times, Edexlive, Digital Leaming and TATA Motors Press Release.
25. It is further averred that since the year 2006, Plaintiff is uninterruptedly and extensively using the trademark 'VIBGYOR' in respect of the goods and services which is solely associated with Plaintiff alone and any goods/services sold/offered under the identical trademark or any other deceptively similar trademark to the Plaintiff's aforesaid trademark 'VIBGYOR' would automatically dilute the reputation of trademark of Plaintiff.
26. It is stated that over the years, Plaintiff has attained tremendous fame and success in the industry. The same is apparent from the fact that the Plaintiff has been bestowed with numerous awards, accolades and recognitions from time to time, details of which are given in para 11 of the plaint.
27. It is further stated that Plaintiff has made vigorous efforts and expended substantial sums towards popularizing its goods and services bearing the 'VIBGYOR' trademark. The goodwill and reputation acquired by the Plaintiff in the trademark 'VIBGYOR' is evident from the revenue earned and is growing steadily over the years and due to extensive use, the trademark 'VIBGYOR' of Plaintiff has acquired distinctiveness and a secondary meaning. The revenues earned by the Plaintiff under the brand Signature Not Verified Digitally Signed CS(COMM) 573/2022 Page 5 of 11 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36 'VIBGYOR' for the Financial Year 2020-21 are Rs. 23,76,618,861/- and the advertisement/promotional expenses for the Financial Year are 2020-21 are Rs. 1,92,95,722/-.
28. It is the case of the Plaintiff against the Defendant that Defendant is a company incorporated under the Companies Act, 1956 and appears to be engaged in business of publishing books. It was learnt by Plaintiff in March, 2022, that one Mr. Saurabh Gupta, Director of Defendant Company had filed Oppositions on 22.01.2020 to the Plaintiff's trademark application Nos.4031824 and 4031830 in Class 41 vide Opposition Nos. 1026830 and 1026831/1026885 respectively. The Registrar of Trade Marks on 28.07.2022 served the Notice of Opposition No. 1026830 to Plaintiff in TM Application No. 4031824.
29. It is averred that Plaintiff in the month of May, 2022 while going through Trade Marks Journals, published on the website of the Trade Marks Registry, came across the mark filed in the name of Mr. Saurabh Gupta under TM No. 4173466 in Class 16 for 'Educational books' and TM No.4173467 in Class 41 for 'Publication of Educational Books' claiming user since 01.01.2013. The said marks under TM No.4173467 in Class 41 was published in the Trade Marks Journal No.2046-0 dated 04.04.2022 and under TM No.4173466 in Class 16 was published in the Trademark Journal No. 2054-0 dated 30.05.2022.
30. It is further averred that the aforesaid applications of the Defendant have been opposed under Section 21 of the Trade Marks Act, 1999 by the Signature Not Verified Digitally Signed CS(COMM) 573/2022 Page 6 of 11 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36 Plaintiff vide Notice of Oppositions (TM-0) bearing Nos.1166285 dated 24.05.2022 and 1170606 dated 31.05.2022.
31. It is further averred that upon search of trademark records, the Plaintiff also learnt that Defendant had applied for the mark under Application No. 2736456 in Class 16 which was refused by the Registrar of Trade Marks vide its order dated 26.09.2018.
32. It is also averred that on further investigation, it was found that Defendant, after refusal of trademark under No. 2736456 in class 16, on 10.05.2019 had filed two trademark Applications in Class 16 and 41 under Nos. 4173466 and 4173467 respectively for the same mark with false and fabricated documents. These two marks are now under opposition.
33. It is further submitted that Plaintiff is the prior adopter and prior user of the mark 'VIBGYOR'. Plaintiff submits that the use of 'VIBGYOR' by the Defendant is dishonest, without any bona fide and particularly a misuse of the Plaintiff's registered mark 'VIBGYOR'. Defendant's use is bound to cause damage and prejudice to the goodwill and reputation of the Plaintiff and also amounts to dilution of the Plaintiff's registered mark 'VIBGYOR'.
34. It is further stated that Defendant uses the same colours for the letters in the word 'VIBGYOR' which are identical to the colours used by the Plaintiff in its registered trademark 'VIBGYOR'. Plaintiff further states that the Defendant is grossly infringing upon the Plaintiff's trademark 'VIBGYOR' by putting the said 'VIBGYOR' on each page of its books Signature Not Verified Digitally Signed CS(COMM) 573/2022 Page 7 of 11 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36 similar to the Plaintiff. Competing marks, as put forth in the plaint are as under:-
PLAINTIFF'S REGISTEREDD DEFENDANT'S MARK TRADEMARK
35. It is further stated that Defendant is using an identical mark of the Plaintiff 'VIBGYOR' in its business activities. Defendant is also supplying books with the name 'VIBGYOR' to schools. The operational website of the Defendant firm was found under the domain name www.laxmipublications.com where books with mark 'VIBGYOR' were found listed under the category of children books.
36. Having heard learned counsel for the Plaintiff and after examining the contentions, this Court is of the view that Plaintiff has made out a prima facie case for grant of ex parte ad-interim injunction, as the impugned trademark is deceptively similar to the registered trademark of the Plaintiff. Balance of convenience lies in favour of the Plaintiff and it is likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.
37. Accordingly, till the next date of hearing, Defendant, its Directors, partners, principal officers, agents, servants, dealers, distributors, retailers, family members and anyone acting on its behalf, are restrained from importing, publishing, printing, selling, offering for sale, stocking, advertising, either directly or indirectly any products/goods with infringing trademark 'VIBGYOR' or any other trademark which may be deceptively/ Signature Not Verified Digitally Signed CS(COMM) 573/2022 Page 8 of 11 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36 confusingly similar with Plaintiff's trademark 'VIBGYOR' in any form/variant.
38. Plaintiff shall comply with the provisions of Order 39 Rule 3 CPC within a period of one week from the date of execution of the local commission.
I.A. 13139/2022 (for appointment of Local Commissioner)
39. Present application has been preferred by Plaintiff under Order 26 Rule 9 read with Order 39 Rule 7 and Section 151 CPC, seeking appointment of a Local Commissioner.
40. Upon hearing, the application is allowed.
41. Accordingly, Ms. Malini Jain, Advocate (Mobile No. 9971688065) is appointed as Local Commissioner, who shall visit the premises of Defendant at the following address:-
M/s Laxmi Publications Private Limited 113, Golden House, Darya Ganj, New Delhi - 110002
42. Local Commissioner shall visit the aforesaid premises and search and take into custody all the infringing products/goods bearing the trademark 'VIBGYOR' or any other mark deceptively similar to the Plaintiff's trademark 'VIBGYOR' along with any packaging material, labels, blocks, dies etc. and make an inventory of the same.
43. Local Commissioner shall inspect, sign and make copies of account ledgers/cash books/accounts books, manufacture and/or import records pertaining to sales etc. of the infringing products, as discovered from the premises of the Defendant.
Signature Not Verified Digitally Signed CS(COMM) 573/2022 Page 9 of 11 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:3644. Local Commissioner along with the Representative of the Plaintiff and/or its counsel shall be permitted to enter the premises of the Defendant.
45. Local Commissioner shall seize the infringing products/goods and hand over the same to Defendant on superdari, upon Defendant furnishing an undertaking that it shall produce the goods, so seized, before the Court, as and when further directions are issued in this regard.
46. Local Commissioner shall be permitted to take photographs/videos of the execution of the Commission. She shall also be entitled to seek police assistance or protection of the Local Police Station, if so required, for the purpose of execution of the order of this Court. The SHO of the concerned Police Station is directed to provide necessary assistance to the Local Commissioner, if sought for.
47. In case the premises as aforementioned are found locked, the Local Commissioner is at liberty to break open the locks.
48. Plaintiff shall serve a copy of this order upon the Defendant along with paper book of the suit at the time of execution of the proceedings.
49. Fees of the Local Commissioner is fixed at Rs. 1,00,000/- as well as other miscellaneous out-of-pocket expenses for the execution of the Commission. Fees of the Local Commissioner shall be paid in advance by the Plaintiff.
50. Report of the Local Commissioner shall be filed within two weeks of the execution of the Commission.
51. Plaintiff shall inform the Registry about the execution of the proceedings by the Local Commissioner and only thereafter, Registry shall issue summons of the suit to the Defendant.
Signature Not Verified Digitally Signed CS(COMM) 573/2022 Page 10 of 11 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:3652. This order shall not be uploaded on the website of this Court till execution of the Commission by the Local Commissioner.
53. Application is accordingly disposed of.
54. Copy of this order be given to learned counsel for the Plaintiff dasti under the signatures of the Court Master.
JYOTI SINGH, J AUGUST 23, 2022/shivam Signature Not Verified Digitally Signed CS(COMM) 573/2022 Page 11 of 11 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36