Delhi District Court
Ask Automotive Pvt Ltd Through Rajani ... vs Ashok Kumar on 8 December, 2023
IN THE COURT OF Dr. KAMINI LAU: DISTRICT JUDGE
(COMMERCIAL COURT)02, CENTRAL DISTRICT,
TIS HAZARI COURTS, DELHI
CS (COMM.) No. 1313/2020
CNR No. DLCT010056282020
M/s ASK Automative Limited
A Company incorporated under the Companies Act, 1956
Having its registered office at 929/1, Naiwala
Faiz Road, Karol Bagh, New Delhi110005
Through Authorized Representative
Ms. Rajni Sharma
......Plaintiff
Versus
Sh. Manoj Mudgal
Plot No. 16, Mahamaya Kunj,
Durga Wali Gali, Sewadham Road, Loni,
Ghaziabad201102.
......Defendant
Date of filing of suit: 11.09.2020
Judgment Reserved on: 28.11.2023
Date of Judgment: 08.12.2023
TABLE OF CONTENTS
Sr. No. Title Page No.
1 Brief Facts/ Case of the Plaintiff 25
2 Defendant is Exparte 56
3 Issues 67
4 Evidence & List of Documents 711
5 Findings & Observations 1125
6 Conclusion/ Relief 2526
Present: Ms. Priya Nagpal Advocate for the plaintiff.
Defendant is exparte.
M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal)
CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 1 of 26
JUDGMENT:
(1) This is a Civil Suit filed by plaintiff against the defendant seeking a decree of Permanent Injunction, Infringement of Trademarks and Copyright and Rendition of Accounts with a prayer for passing a decree of mandatory and permanent injunction for restraining the defendant from using any mark identical and/or deceptively and confusingly similar to the trademark/trade dress "ASK" of the plaintiff company on any goods under the plaintiff's trademark/trade dress "ASK" as its trademark/trade dress or any other trademark/trade dress which may be deceptively similar thereto and may amount to infringing the plaintiff's trademark/ trade dress.
BRIEF FACTS:
Case of the plaintiff:
(2) The plaintiff company is a company duly registered under the Companies Act 1956, having its registered office at Flat No. 104, 929/1, Naiwala, Faiz Road, Karol Bagh, New Delhi110005 and was founded in 1988. The case of the plaintiff is as under: ➢ That the plaintiff company is the registered owner of Trademark/ trade dress "ASK".
➢ That the plaintiff has been issued the said trademark/ trade dress and is engaged in the business of manufacturing, export, distribution, sale and retail of all kind friction material such as brake assemblies, M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 2 of 26 brake shoe, brake linings, clutch plate and aluminum casting products like panels, hubs, non automotive parts, crank case, engine parts, grip engine parts, etc. manufacturers (OEMs) in India.
➢ That the plaintiff is having exclusive rights to deal with the trademark/ trade dress "ASK" and had obtained authorized trademark registration pertaining to its said trademark/ trade dress and is also the owner of copyright pertaining to artistic work "ASK" used in the packaging material of the products.
➢ That the registration of word mark "ASK" as described above are valid and subsisting in favour of the plaintiff company till date in different countries. ➢ That the plaintiff company under the trademark "ASK"
has also been awarded numerous certifications/ awards indicating its reputation and dedication towards maintaining high standards of quality.
➢ That the defendant Manoj Mudgal is running a wholesale unit and in the last week of August, 2020, it came to the knowledge of the plaintiff that the defendant is engaged in manufacturing, stocking, selling, distributing and /or otherwise dealing in brake shoes bearing the trademark "ASK" and/or mark deceptively and confusingly similar to the trademark "ASK" of the plaintiff.
➢ That the plaintiff conducted an investigation at premises of the defendant and found that the defendant M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 3 of 26 has adopted and started using the trademark/ trade dress of the plaintiff "ASK" in relation to their impugned goods and had found that defendant is engaged in manufacturing and selling counterfeit goods under the said trademark/ trade dress of the plaintiff.
➢ That the defendant manufacturers, stores and distributes goods bearing registered trademark of the plaintiff company in the markets of Loni, Ghaziabad and other markets of Delhi/NCR.
➢ That during investigation conducted at the premises of the defendant, the plaintiff has been able to buy some of the samples of the infringing goods bearing trademark "ASK" of the plaintiff company which are similar in colour combination, shape, size and other description of the products as that of the plaintiff. ➢ That the defendant do not have any authorization or approval from the plaintiff to use their trademark/ trade dress.
➢ That the defendant has adopted and started using the said trademark/ trade dress dishonestly, fraudulently and with sole intention of dishonestly riding on the goodwill and reputation of the plaintiff company and with a view to take advantage and to trade upon the established goodwill/ reputation and propitiatory rights of the plaintiff.
M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 4 of 26 ➢ That any such unauthorized use of the said trademark/ trade dress by the defendant would cause huge losses both in business and in reputation and good will to the plaintiff which are incapable of being assessed in monetary terms.
➢ That the defendant is likely to unlawfully continue, use of aforesaid infringing trademark/ trade dress in relation to its business to promote and sell its products, unless restrained by the court.
➢ That there is valid cause of action in favour of the plaintiff to file the present commercial suit against the defendant.
➢ That this court has the territorial jurisdiction to try the present suit since the registered office of the plaintiff company is situated within the territorial jurisdiction of this court i.e. Naiwala, Faiz Road, Karol Bagh, Delhi 110005.
Defendant is Exparte:
(3) Initially the defendant was arrayed as Ashok Kumar based on the John Doe principle as applicable in India, the same being an unknown identity. Pursuant to the applications filed by the plaintiff under Order 39 Rule 1 & 2 CPC for grant of ad interim exparte injunction and under Order 26 Rule 9 CPC read with Section 135 of Trade Mark Act for appointment of Local Commissioner, vide order dated 01.10.2020 the Ld. Predecessor of this Court appointed a Local Commissioner to visit the M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 5 of 26 premises i.e. Plot No.16, Mahamaya Kunj, Durga Wali Gali, Sewadham Road, Loni, Ghaziabad201102. The Report of Local Commissioner was received on 26.10.2020 according to which one Manoj Mudgal was found at the above premises and claimed himself as the owner of the shop. The infringed goods/ products were taken into possession and photographs were also taken.
(4) On 22.03.2021, an application under Order 1 Rule 10 CPC was filed on behalf of plaintiff which was duly allowed pursuant to which the defendant Manoj Mudgal was impleaded as defendant and he was directed to be served. Despite repeated opportunities, the defendant could not be served vide ordinary process and hence on 03.01.2023, an application under Order V Rule 20 CPC filed by the plaintiff which was duly by the Ld. Predecessor of this Court and the defendant was permitted to be served vide publication in newspaper "The Statesman". On 07.03.2023, the publication report received showing that defendant has been served vide publication in the newspaper "The Statesman" dated 14.01.2023 despite which the defendant did not appear. Accordingly the defendant was proceeded exparte by this Court vide order dated 07.03.2023.
ISSUES:
(5) On the basis of the pleadings, vide order dated 22.08.2023 this Court settled the following issues:
M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 6 of 26 i. Whether the plaintiff is entitled to a Decree of Mandatory Injunction thereby restraining the defendant from infringing the trademark/ trade dress 'ASK' as asked for in the plaint? [Ref: Prayer clause
(a) & (c) of the plaint] (OPP) ii. Whether the plaintiff is entitled to a Decree of Permanent Injunction thereby restraining the defendant from using and mark identical or deceptively and confusing similar to the trademark/ trade dress 'ASK' as asked for in the plaint? [Ref:
Prayer clause (b) & (d) of the plaint] (OPP) iii. Whether the plaintiff is entitled to rendition of accounts of profits as asked for in the plaint? [Ref:
Prayer clause (l) of the plaint] (OPP) iv. Whether the plaintiff is entitled to punitive Damages as asked for in the plaint? [Ref: Prayer clause (g) of the plaint] (OPP) v. Relief.
EVIDENCE & LIST OF DOCUMENTS:
(6) Here, I may note that vide order dated 22.08.2023 this Court had appointed a Court Commissioner for recording the evidence of the plaintiff. Pursuant to the same, the plaintiff has examined two witnesses i.e. its Authorized Representative namely Ms. Rajani Sharma as PW1 and Local Commissioner namely Sh. Shikhar Kundoo as PW2.
M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 7 of 26 (7) Before coming to the testimony of plaintiff's witnesses, the documents relied upon by them are put in a tabulated form as under:
List of documents:
Sr. Exhibit No. Details of document Relied upon by No. 1 Ex.PW1/1 Certificate of incorporation dated Ms. Rajani 18.01.1988 (OSR) Sharma (PW1)
2 Ex.PW1/2 Renewed certificate of incorporation dated 06.01.2023 (OSR) 3 Ex.PW1/3 Board Resolution dated 02.04.2018 (OSR) 4 Ex.PW1/4 Authorization dated 14.02.2023 (OSR) 5 Ex.PW1/5 Trademark Certificate bearing Trademark No. 3758974 under Class 12 dated 20.02.2018 (OSR) 6 Ex.PW1/6 Trademark Certificate bearing Trademark No. 3758975 under Class 12 dated 20.02.2018 (OSR) 7 Ex.PW1/7 Trademark Certificate bearing Trademark No. 3763432 under Class 12 dated 24.02.2018 (OSR) 8 Ex.PW1/8 Trademark Certificate bearing Trademark No. 3941227 under Class 12 dated 10.09.2018 (OSR) 9 Ex.PW1/9 Trademark Certificate bearing Trademark No. 2553199 under Class 35 dated 24.06.2013 (OSR) 10 Ex.PW1/10 Copyright Registration Certificate bearing Trademark No. A91965/12 dated 01.05.2012 (OSR) 11 Ex.PW1/11 License and Technical Assistance Agreement dated 02.11.2000 12 Ex.PW1/12 Photograph of the original product of the plaintiff.
M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 8 of 26 13 Ex.PW1/13 Photograph of the infringing goods of defendant bearing Trademark identical and/or deceptively and confusingly similar to the "ASK"
marks of plaintiff.
14 Ex.PW1/14 Affidavit of Investigator dated 07.09.2020 15 Ex.PW1/15 Local Commissioner's Report dated 26.10.2020 (Note: Later again exhibited as Ex.PW2/1 and hence to avoid any inconvenience, now being deexhibited) 16 Ex.PW2/1 Report of Local Commissioner Sh. Shikhar 17 Kundoo (PW2) Ex. PW2/2 On the spot proceedings 18 Ex.PW2/3 Inventory of the seized goods 19 Ex. PW2/4 Supardarninama in favour of defendant 20 Ex. PW2/5 Photographs of the premises of the defendant and seized goods (8) Now coming to the testimony of the witnesses of the plaintiff, which is put in a tabulated form as under:
Sr. Details of the Deposition
No. witness
1 Ms. Rajani PW1 Ms. Rajani Sharma is the Authorized
Sharma Representative of plaintiff company who in her
(PW1) examinationinchief by way of affidavit Ex.PW1/A
has corroborated what has been earlier stated in the main plaint in toto. He has placed his reliance on the following documents:
1. Certificate of incorporation dated 18.01.1988 (OSR) which is Ex.PW1/1.
2. Renewed certificate of incorporation dated 06.01.2023 (OSR) which is Ex.PW1/2.
3. Board Resolution dated 02.04.2018 (OSR) which is Ex.PW1/3.
4. Authorization dated 14.02.2023 (OSR) which is Ex.PW1/4.
5. Trademark Certificate bearing Trademark No. 3758974 under Class 12 dated M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 9 of 26 20.02.2018 (OSR) which is Ex.PW1/5.
6. Trademark Certificate bearing Trademark No. 3758975 under Class 12 dated 20.02.2018 (OSR) which is Ex.PW1/6.
7. Trademark Certificate bearing Trademark No. 3763432 under Class 12 dated 24.02.2018 (OSR) which is Ex.PW1/7.
8. Trademark Certificate bearing Trademark No. 3941227 under Class 12 dated 10.09.2018 (OSR) which is Ex.PW1/8.
9. Trademark Certificate bearing Trademark No. 2553199 under Class 35 dated 24.06.2013 (OSR) which is Ex.PW1/9.
10. Copyright Registration Certificate bearing Trademark No. A91965/12 dated 01.05.2012 (OSR) which is Ex.PW1/10.
11. License and Technical Assistance Agreement dated 02.11.2000 which is Ex.PW1/11.
12. Photograph of the original product of the plaintiff which is Ex.PW1/12.
13. Photograph of the infringing goods of defendant bearing Trademark identical and/or deceptively and confusingly similar to the "USHA" and "SHRIRAM" marks of plaintiff which is Ex.PW1/13. [Here, I may note that there is a typographical error while recording the evidence of the witness where instead of words ASK, the words "USHA"
and "SHRIRAM" were written. Therefore, in order to avoid any confusion, the words "USHA" and "SHRIRAM" shall be read as "ASK"]
14. Affidavit of Investigator dated 07.09.2020 which is Ex.PW1/14.
15. Local Commissioner's Report which is Ex.PW1/15. (Note: Later again exhibited as Ex.PW2/1 and hence to avoid any inconvenience, now being deexhibited) The crossexamination of the witness is Nil since the defendant was exparte.
2 Sh. Shikhar PW2 Sh. Shikhar Kundoo is the Local Kundoo Commissioner appointed by the Ld. Predecessor of (PW2) this court vide order dated 01.10.2020 who inspected the premises of the defendant, seized the goods and M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 10 of 26 filed his report. He has proved the following documents:
1. Report of Local Commissioner which is Ex.PW2/1.
2. On the spot proceedings which is Ex.PW2/2.
3. Inventory of the seized goods which is Ex.PW2/3.
4. Supardarninama in favour of defendant which is Ex.PW2/4.
5. Photographs of the premises of the defendant and seized goods which is Ex.PW2/5.
The crossexamination of the witness is Nil since the defendant was exparte.
FINDINGS AND OBSERVATIONS:
(9) I have heard the arguments advanced before me by the Ld. Counsel for the plaintiff and considered the written memorandum of arguments filed on behalf of the plaintiff. My findings on the various issues are as under:
Issue No.1: Whether the plaintiff is entitled to a Decree of Mandatory Injunction thereby restraining the defendant from infringing the trademark/ trade dress 'ASK' as asked for in the plaint? [Ref: Prayer clause (a) & (c) of the plaint] (OPP) Issue No.2: Whether the plaintiff is entitled to a Decree of Permanent Injunction thereby restraining the defendant from using and mark identical or deceptively and confusing similar to the trademark/ trade dress 'ASK' as asked for in the plaint? [Ref: Prayer clause (b) & (d) of the plaint] (OPP) M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 11 of 26 Issue No.3: Whether the plaintiff is entitled to rendition of accounts of profits as asked for in the plaint? [Ref:
Prayer clause (l) of the plaint] (OPP) Issue No.4: Whether the plaintiff is entitled to punitive Damages as asked for in the plaint? [Ref: Prayer clause (g) of the plaint] (OPP) (10) All the above issues are clubbed together for the sake of convenience involving common discussions. Onus of proving all the above issues was upon the plaintiff. (11) The case of the plaintiff company namely ASK Automative Pvt. Ltd. is that it is the registered owner of Trademark/ trade dress "ASK" and is engaged in the business of manufacturing, export, distribution, sale and retail of all kind friction material such as brake assemblies, brake shoe, brake linings, clutch plate and aluminum casting products like panels, hubs, non automotive parts, crank case, engine parts, grip engine parts, etc. manufacturers (OEMs) in India. The plaintiff company is stated to have exclusive rights to deal with the trademark/ trade dress "ASK" and had obtained authorized trademark registration pertaining to its said trademark/ trade dress and is also the owner of copyright pertaining to artistic work "ASK" used in the packaging material of the products.
According to the plaintiff, the registration of word mark "ASK" as described above are valid and subsisting in favour of the plaintiff company till date in different countries. The case of the plaintiff is that the defendant Manoj Mudgal is running a M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 12 of 26 wholesale unit and it came to the knowledge of the plaintiff that the defendant is engaged in manufacturing, stocking, selling, distributing and /or otherwise dealing in brake shoes bearing the trademark "ASK" and/or mark deceptively and confusingly similar to the trademark "ASK" of the plaintiff. The plaintiff conducted an investigation at premises of the defendant and found that the defendant has adopted and started using the trademark/ trade dress of the plaintiff "ASK" in relation to their impugned goods and had found that defendant is engaged in manufacturing and selling counterfeit goods under the said trademark/ trade dress of the plaintiff. It has been alleged that the defendant manufacturers, stores and distributes goods bearing registered trademark of the plaintiff company in the markets of Loni, Ghaziabad and other markets of Delhi/NCR without any authorization or approval from the plaintiff to use their trademark/ trade dress. During investigation conducted at the premises of the defendant, it was found that the samples of the infringing goods bearing trademark "ASK" of the plaintiff company are similar in colour combination, shape, size and other description of the products as that of the plaintiff. As per allegations, the defendant has adopted and started using the said trademark/ trade dress dishonestly, fraudulently and with sole intention of dishonestly riding on the goodwill and reputation of the plaintiff company and with a view to take advantage and to trade upon the established goodwill/ reputation and propitiatory rights of the plaintiff.
M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 13 of 26 (12) In order to prove its case the plaintiff has examined two witnesses i.e. its Authorized Representative namely Ms. Rajani Sharma as PW1 and Local Commissioner namely Sh. Shikhar Kundoo as PW2.
(13) I have gone through the records of the case and the testimonies of the witnesses examined by the parties. At the very Outset, I may observe that the plaintiff has filed the present suit against the defendant for Mandatory Injunction, Permanent Injunction, Rendition of Accounts and Punitive Damages. Reference is made to the provisions of Section 2 (1) (c) of Commercial Courts Act, 2015 which read as under:
(c) "commercial dispute" means a dispute arising out of
(i) ordinary transactions of merchants, bankers, financiers and traders such as those relating to mercantile documents, including enforcement and interpretation of such documents;
(ii) export or import of merchandise or services;
(iii) issues relating to admiralty and maritime law;
(iv) transactions relating to aircraft, aircraft engines, aircraft equipment and helicopters, including sales, leasing and financing of the same;
(v) carriage of goods;
(vi) construction and infrastructure contracts, including tenders;
(vii) agreements relating to immovable property used exclusively in trade or commerce;
(viii) franchising agreements;
(ix) distribution and licensing agreements;
(x) management and consultancy agreements;
(xi) joint venture agreements;
(xii) shareholders agreements;
(xiii) subscription and investment agreements pertaining to the services industry including outsourcing services and financial services;
(xiv) mercantile agency and mercantile usage;
(xv) partnership agreements;
(xvi) technology development agreements;
M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 14 of 26 (xvii) intellectual property rights relating to registered and unregistered trademarks, copyright, patent, design, domain names, geographical indications and semiconductor integrated circuits; (xviii) agreements for sale of goods or provision of services;
(xix) exploitation of oil and gas reserves or other natural resources including electromagnetic spectrum;
(xx) insurance and reinsurance;
(xxi) contracts of agency relating to any of the above; and (xxii) such other commercial disputes as may be notified by the Central Government.
(14) The provisions of Section 2 (1) (c) (xvii) of Commercial Courts Act as above are very much clear. It specifically provides that a dispute arising out of Intellectual Property Rights relating to registered and unregistered trademarks, copyright, patent, design, domain names, geographical indications and semiconductor integrated circuits, do come within the jurisdiction of Commercial Courts Act. The Therefore, the facts as alleged in the plaint fall under commercial dispute.
(15) Secondly, with regard to the Pecuniary Jurisdiction to adjudicate the matter which is in dispute, reliance is placed upon the provisions of Section 3 of Commercial Courts Act, 2015 which provides that:
Section 3: Constitution of Commercial Courts:
3. (1) The State Government, may after consultation with the concerned High Court, by notification, constitute such number of Commercial Courts at District level, as it may deem necessary for the purpose of exercising the jurisdiction and powers conferred on those Courts under this Act:
M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 15 of 26 [Provided that with respect to the High Courts having ordinary original civil jurisdiction, the State Government may, after consultation with the concerned High Court, by notification, constitute Commercial Courts at the District Judge level:
Provided further that with respect to a territory over which the High Courts have ordinary original civil jurisdiction, the State Government may, by notification, specify such pecuniary value which shall not be less than three lakh rupees and not more than the pecuniary jurisdiction exercisable by the District Courts, as it may consider necessary.] 3[(1A) Notwithstanding anything contained in this Act, the State Government may, after consultation with the concerned High Court, by notification, specify such pecuniary value which shall not be less than three lakh rupees or such higher value, for whole or part of the State, as it may consider necessary.] (16) Admittedly, the Commercial Court Act was amended on 03.05.2018 and by virtue of the amendment and by virtue of the notification, the pecuniary value of the Commercial Courts Act shall not be less than Rs.3,00,000/. In the present case, the plaintiff has valued its trademark for infringement to the tune of Rs.5,00,000/. Further, it is evident from the affidavit of evidence of Ms. Rajani Sharma (PW1) that the plaintiff company is claiming damages to the tune of Rs.10,00,000/. This being so, this court has the pecuniary jurisdiction to adjudicate upon the issues in dispute.
(17) Thirdly, I note that this court has the Territorial Jurisdiction to try the present suit since as per the record the plaintiff ASK Automative Pvt. Ltd. has its registered office at 929/1, Naiwala Faiz Road, Karol Bagh, New Delhi110005 which falls within the jurisdiction of this Court.
M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 16 of 26 (18) Fourthly, the Hon'ble Ms. Justice Prathiba M. Singh in the case of Amrish Agarwal Vs M/s. Venus Home Appliances Pvt. Reported in 2019 SCC Online Del. 9966 has directed filing of certain documents necessarily, which directions I quote as under:
".......7. It is further directed that in trade mark infringement matters the following documents ought to be necessarily filed along with the plaint:
i. Legal Proceedings certificate (LPC) of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licences granted, renewals etc., ii. If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trade mark registration certificate, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. This should be accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licences and assignments ought to be pleaded;
iii. Usually, at the time of admission/denial, parties ought not to be permitted to deny the factum of registration and other facts accompanying the registration as the same are easily verifiable from public record online;
iv. In the case of (ii), the party ought to file the LPC prior to the commencement of the trial, if any aspect of the trade mark registration is being disputed by the opposite side;
The present order be communicated to all the ld. District Judges by the worthy Registrar General of this Court so that the directions contained herein can be brought to the notice of the Judicial officers especially in the commercial courts. In addition, the order be also communicated to the Controller General of Patents, Designs and Trade Marks (Ph:022 24132735, Email: cgoffice[email protected]) as also the Joint Secretary, DPIIT (Ph: 02223062983) to ensure that LPCs when applied for are issued without delay and in any case within a period of 30 days....."
M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 17 of 26 (19) In the present case, I note that the plaint is not accompanied by any Legal Proceedings Certificate. Although in the case of Amrish Aggarwal Vs. M/s. Venus Home Appliances Pvt. Ltd. (Supra) the Hon'ble Single Judge had passed certain directions in order to deter frivolous litigations and for the purpose that the time of the Courts is not wasted due to non filing of relevant documents and it was held that a Legal Proceeding Certificate is an important document, which should be placed before the Court at the time of deciding preliminary applications. However, in the case of Maan Pharmaceuticals Ltd. Vs. Mindwave healthcare Pvt. Ltd. reported in 2022 (92) PTC 587 (Del) the Hon'ble Devision Bench has held that there is no such requirement in the statute that a suit for infringement will not be entertained, if not accompanied by a Legal Proceedings Certificate which observations I quote as under:
"........ 34. The contention of the learned counsel for MAAN with regard to nonfiling of the Legal Proceedings Certificate, has been rightly dealt with by the learned Trial Court. The said plea has been taken on the strength of the decision passed by a Single Bench of this Court in the case of Amrish Aggarwal v. M/s Venus Home Appliances Pvt. Ltd. (supra). In the said case, this Court had passed certain directions in order to deter frivolous litigations and for the purpose that the time of the courts is not wasted due to nonfiling of relevant documents. It was felt that a Legal Proceedings Certificate is an important document, which should be placed before the Court at the time of deciding preliminary applications. It is to be noted that there is no such requirement in the statute that a suit for infringement will not be entertained, if not accompanied by a Legal Proceedings Certificate...."
M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 18 of 26 (20) In the present case, the plaintiff has made a specific averment in para 6 of the original plaint to the effect "That Legal Proceedings in respect of the aforesaid trademarks are not in possession of the plaintiff and the plaintiff seeks liberty of this Hon'ble Court to file the said Legal Proceedings Certificate as and when they are in possession of the plaintiff....". Further, the plaintiff has also placed on record the copies of various Trademark Certificates in respect of its products which are Ex.PW1/5 to Ex.PW1/10 and also placed on record the copy of License and Technical Assistance Agreement which is Ex.PW1/11. The defendant Manoj Mudgal who was impleaded vide order dated 22.03.2021 and validly served by the Local Commissioner and vide Publication dated 14.01.2023, has never appeared to controvert the case putforth by the plaintiff nor he has ever challenged the status of the plaintiff. I, therefore, hereby hold that non filing of Legal Proceedings Certificate would not be fatal to the case of the plaintiff. (21) Fifthly, the witness of the plaintiff namely Ms. Rajani Sharma (PW1) has placed her reliance on the various documents i.e. Certificate of incorporation dated 18.01.1988 which is Ex.PW1/1; Fresh certificate of incorporation dated 06.01.2023 which is Ex.PW1/2; Board Resolution dated 02.04.2018 which is Ex.PW1/3; Declaration dated 14.02.2023 which is Ex.PW1/4; Trademark Certificate bearing Trademark No. 3758974 under Class 12 which is Ex.PW1/5; Trademark Certificate bearing Trademark No. 3758975 under Class 12 which is Ex.PW1/6;
M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 19 of 26 Trademark Certificate bearing Trademark No. 3763432 under Class 12 which is Ex.PW1/7; Trademark Certificate bearing Trademark No. 3941227 under Class 12 which is Ex.PW1/8; Trademark Certificate bearing Trademark No. 2553199 under Class 35 which is Ex.PW1/9; Copyright Registration Certificate bearing Trademark No. A91965/12 which is Ex.PW1/10; License and Technical Assistance Agreement which is Ex.PW1/11; Photograph of the original product of the plaintiff which is Ex.PW1/12; Photograph of the infringing goods of defendant bearing Trademark identical and/or deceptively and confusingly similar to the "ASK" marks of plaintiff which is Ex.PW1/13; Affidavit of Investigator which is Ex.PW1/14 and Local Commissioner's Report which is Ex.PW1/15. The entire testimony of the plaintiff witness namely Ms. Rajani Sharma (PW1) through affidavit has gone unrebutted and uncontroverted. (22) Sixthly, the testimony of the witness Ms. Rajani Sharma (PW1) finds due corroboration from the report of the Local Commissioner which is Ex.PW2/1 duly proved by the Local Commissioner Sh. Shikhar Kundoo who has been examined as PW2. It is evident from the same that when the Ld. Local Commissioner visited the premises situated at Plot No. 16, Mahamaya Kunj, Durga Wali Gali, Sewadham Road, Loni, Ghaziabad201102, the defendant Manoj Mudgal met them and introduced himself as the owner of the premises. During the raid a total number of 2050 infringed articles bearing the registered trademark of the plaintiff company were seized by the Ld. Local M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 20 of 26 Commissioner. Therefore, the apprehension of the plaintiff are not all that unfounded.
(23) Seventhly, on the basis of the evidence on record, it is evident that the plaintiff has amply demonstrated and proved that the plaintiff is the registered owner of the trademark/ tradedress "ASK" not only in India, but worldwide. The plaintiff has also been able to establish that it enjoys transborder goodwill and reputation. It is also evident from the material on record that the ever since the adoption of the trademark/ tradedress "ASK", the plaintiff has been using the same regularly and continuously. The evidence brought on record by the plaintiff has gone unrebutted and uncontroverted since the defendant despite having the knowledge of the present proceeding pending before this Court (as evident from the proceedings conducted by the Ld. Local Commissioner on 09.10.2020) has chosen not to appear and was proceeded exparte.
(24) Eighthly, after considering the material placed on record by the plaintiff and on comparing the impugned trademark used by the defendant with that of the plaintiff, this Court is of the considered view that the trademark/ tradedress used by the defendant is identical to the trademark of the plaintiff in each and every respect, including, phonetically, structurally and with regard to essential features and colour combination. Therefore, the plaintiff is justified in claiming that it has suffered loss of business due to the defendant illegally riding over its goodwill and reputation in the market and that the defendant has been deliberately causing confusion/deception in the mind of the M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 21 of 26 general public at large with respect to the source of the goods that are in fact originating from the defendant. In view of the above, there is every likelihood of the consumers and prospective purchasers carrying an impression in their mind that the goods of the defendant originate from the plaintiff or that there is some commercial nexus between them, thereby resulting in dilution of the trademark of the plaintiff in their goods and services. The defendant Manoj Mudgal has been been encashing the hard earned goodwill and reputation established by the plaintiff over the past several years and passing off its goods as those of the plaintiff, which cannot be permitted. I hereby hold that the plaintiff is entitled to the relief of Permanent and Mandatory Injunction as asked for in the plaint. Accordingly I hereby restrain the defendant, his associates, agents, officers, employees, distributors, representative etc. from using any mark identical and / or deceptively and confusingly similar to the trademark/ trade dress "ASK" of the plaintiff company on brake shoes, other automotive components and packaging of brakeshoes manufactured and marketed by the plaintiff under the trademark "ASK" thereby infringing plaintiffs registered trademarks. [Ref: Prayer clause (a) to (d) of the plaint]. (25) Lastly, in so far as the aspect of Damages is concerned, Ld. Counsel for the plaintiff has argued that the plaintiff is not only entitled to the relief of permanent injunction but also for a decree of damages against the defendant towards the loss of sales, reputation and goodwill of its trademark caused by his illegal activities. In this regard, I may note that the M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 22 of 26 defendant has chosen to stay away from the present proceedings so as to thwart any enquiry into his account for determination of damages. As a result, no inquiry into his account could be conducted, for this court to pass an order of rendition of accounts of profits and delivery up, so as to compensate the plaintiff for the extent of damages suffered by them. But, that alone would not be a deterrent. Merely because the defendant has deliberately chosen to stay away from the court proceedings, cannot be a ground to permit them to reap the benefits of evading the suit proceedings and its outcome.
(26) The court is mindful of the fact that in such a situation where the defendants choose to stay away from the court proceedings, they should not be permitted to enjoy the benefits of such an evasion. Any view to the contrary would result in a situation where a compliant defendant who appears in court pursuant to summons being issued, participates in the proceedings and submits his account books, etc., for assessment of damages, would end up on a worse footing, visavis a defendant who chooses to conveniently stay away after being served with the summons in the suit. That was certainly not the intention of the Statute. Section 135 (1) of the Trademarks Act, 1999 provides that relief that may be granted in any suit for infringement of or for passing off includes injunction and at the option of the plaintiff, either damages or an account of profits. The plaintiff in the present case has opted for claiming damages and has established beyond doubt that it has suffered damages on account of the conduct of the defendants which are a result of M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 23 of 26 infringement of their trademark and copyright. It is well settled that damages in cases like the present one must be awarded and a defendant, who elects stay away from the court proceedings, should not be permitted to enjoy the benefits of staying away from the said proceedings.
(27) In the case of Microsoft Corporation v. Rajendra Pawar & Anr. reported in 2008 (36) PTC 697 (Del.), considering the aspect of punitive damages, it was held as under:
"....... 22. Perhaps it has now become a trend of sorts, especially in matters pertaining to passing off, for the defending party to evade Court proceedings in a systematic attempt to jettison the relief sought by the Plaintiff. Such flagrancy of the Defendant's conduct is strictly deprecatory, and those who recklessly indulge in such shenanigans must do so at their peril, for it is now an inherited wisdom that evasion of Court proceedings does not de facto tantamount to escape from liability. Judicial Process has its own way of bringing to task such erring parties whilst at the same time ensuring that the aggrieved party who has knocked the doors of the Court in anticipation of justice is afforded with adequate relief, both in law and in equity. It is here that the concept of awarding punitive damages comes into perspective.
23. Punitive damages are a manifestation of equitable relief granted to an aggrieved party, which, owing to its inability to prove actual damages, etc., could not be adequately compensated by the Court. Theoretically as well as practically, the practice of awarding of punitive damages may be rationalized as preventing under compensation of the aggrieved party, allowing redress for undetectable torts and taking some strain away from the criminal justice system. Where the conduct of the erring party is found to be egregiously invidious and calculated to mint profits for his own self, awarding punitive damages prevents the erring party from taking advantage of its own wrong by escaping prosecution or detection."
(emphasis added) (28) Applying the settled principles of law to the facts of the present case, I may observe that in the written memorandum M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 24 of 26 of arguments, the plaintiff is claiming damages to the tune of Rs.10,00,000/. However, the plaintiff has failed to bring on record the evidence in respect of the same, so much so that the estimate of the infringed material so recovered has also not been made. Hence, in the light of the aforesaid, I hereby hold that the plaintiff is entitled to punitive/ exemplary damages to the tune of Rs.2,00,000/ (Rupees Two Lacs only) from the defendant. The damages awarded shall be payable, within a period of three months from the date of passing of the judgment failing which, the said amount shall carry interest @ 9% per annum from the date of the decree, till realization. Further, the plaintiff is also entitled to the costs of the suit.
(29) All the issues are accordingly decided in favour of the plaintiff and against the defendant.
CONCLUSIONS & RELIEF:
(30) In view of my findings on the various issues, I hereby hold that the plaintiff is entitled to the relief of Permanent and Mandatory Injunction as asked for in the plaint. Further, the plaintiff is entitled to punitive/ exemplary damages to the tune of Rs.2,00,000/ (Rupees Two Lacs only) from the defendant. The damages awarded shall be payable, within a period of three months from the date of passing of the judgment failing which, the said amount shall carry interest @ 9% per annum from the date of the decree, till realization. Further, the plaintiff is also entitled to the costs of the suit.
M/s ASK Automative Pvt. Ltd. Vs. Ashok Kumar (Manoj Mudgal) CS (COMM) No. 1313/2020, Judgment dated 08.12.2023 Page No. 25 of 26 (31) Suit of the plaintiff is accordingly Decreed. Decree Sheet be prepared accordingly.
(32) File be consigned to Record Room.
Announced in the open court (Dr. KAMINI LAU)
Dated: 08.12.2023 District Judge (Commercial Court)02,
Central, Tis Hazari Courts, Delhi
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