Delhi District Court
M/S Bright Enterprise Pvt. Ltd. vs . Narang Infrastructure Pvt. Ltd. on 13 December, 2022
M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
IN THE COURT OF ADDITIONAL DISTRICT JUDGE02,
SOUTH, SAKET COURTS COMPLEX, NEW DELHI
Presiding Judge: Sh. Dinesh Kumar.
TM NO. 66/2016
FILING NO. 32342/2012
CNR No. DLST010003932012
In the matter of :
M/s Bright Enterprise Pvt. Ltd.
Through
Mr. Rohit Mehta, Constituted Attorney
Gulab Bhawan
6Bahadur Shah Zafar Marg
New Delhi - 110002
.........Plaintiff
Versus
Narang Infrastructure Pvt. Ltd.
1st Floor, Ritambhara Building
Tribhuvan Complex, Ishwar Nagar (w),
Mathura Road, New Delhi65, India
........Defendant
Date of Institution : 22.12.2012
Date of reserving the judgment : 09.12.2022
Date of pronouncement : 13.12.2022
Decision : Dismissed.
TM NO. 66/2016
CNR No. DLST010003932012
Page 1 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022
M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
SUIT FOR PERMANENT INJUNCTION RESTRAINING
INFRINGEMENT OF TRADEMARKS, PASSING OFF,
DILUTION OF GOODWILL AND UNFAIR COMPETITION
JUDGMENT
1. Vide this Judgment I shall dispose of the Suit of the plaintiff for permanent injunction restraining infringement of trademarks, passing off, dilution of goodwill and unfair competition filed by the plaintiff against the defendant. The brief facts of the case, as per plaint, are as under: 1.1. The plaintiff is a company duly incorporated and existing under the laws of Republic of India having its registered offices at Gulab Bhavan, 6 Bahadur Shah Zafar Marg, New Delhi - 110002. The plaintiff together with other entities/companies namely Malhotra Book Depot (partnership firm), MBD Alchemie Private Limited, M/s AKM Enterprises, MBD Printographics etc. from part of "MBD Group", which is one of the India's leading business entities having more than five decades of experience. The combined worth of the entire MBD Group is well above Rupees Eight Hundred Crore (approximately). The plaintiff together with other group companies of the MBD Group have more than TM NO. 66/2016 CNR No. DLST010003932012 Page 2 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
thirty two branch offices in India. MBD Group of companies is today well respected amongst the competitors for their leadership initiatives and quality services and products and are considered as market leaders in all their business activities. 1.2. The plaintiff is a company that has made its foray into premium and luxury mixed use developments primarily entailing hotel, retail and entertainment under brand names like MBD Neopolis, MBD Zephyr, MBD Prive, which are under operation and construction in Jalandhar, Ludhiana and Bangalore with planned presence in Hyderabad, Chennai, Mumbai, Delhi and Goa. Under the trade mark MBD Neopolis & Nuovo, the plaintiff caters to international designers having the best labels like Fendi, Tommy Hilfiger, Van Cleer Arpel, Canali, Kimaya etc. The luxury retail targets under the trade mark MBD Zephyr include brand names like Saks, Channel, Hermes, Gucci, Jimmy Chao, Louis Vutton, Christian Dio, Escada.
1.3. The plaintiff has also successfully established itself in the hospitality industry, through its maiden venture, "Radisson Blue MBD Hotel", Noida [hereinafter, the "Redisson Blue TM NO. 66/2016 CNR No. DLST010003932012 Page 3 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
MBD Hotel" (Five Star), Noida (hereinafter, the "Radisson MBD Hotel"]. Project is a joint venture between the plaintiff and the well known Radisson chain of hotels. The Radisson MBD Hotel is, however, fully managed by the plaintiff and is the first five star hotel in Noida.
1.4. The MBD Radisson Hotel houses well known brads of the plaintiff like ESPACE, Made In India, Red, S18, The Chocolate Box, and Gigabyte, all owned and managed by the plaintiff, under which the plaintiff promotes and operates hotel services, restaurants and foodcourts. The same are located in major cities of India like Delhi, Mumbai, Bangalore, Chennai, Hyderabad, Jalandhar and Ludhiana. The consolidated sales turnover of the plaintiff since the financial year 20062007 to 20112012 is Rupees Four Hundred and Two Crore Sixty Nine Lac Eighty Nine Thousand and Thirty Three.
1.5. In the year 2004, the plaintiff thoughtfully coined the trade mark ESPACE and has exclusively and continuously used the same ever since for services in the Radisson MBD Hotel. Under the trade mark ESPACE, plaintiff renders TM NO. 66/2016 CNR No. DLST010003932012 Page 4 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
amongst other the first twenty four hours spa and fitness centre, in a around NCR. Trade mark ESPACE is inherently distinctive and and is exclusively associated by consumers as indicative of trade source of the plaintiff. The trade mark ESPACE distinguishes services and business of the plaintiff from those of others in the course of trade. After its adoption, plaintiff applied for, and secured registration, for exclusive use of the trade mark ESPACE and its variants under the Trade Marks Act, 1999 (the "Trade Marks Act"). Plaintiff has successfully obtained three (3) registration for the trade mark ESPACE, while the remaining applications are at the advanced stage of registration process. Details of all the applications, pending or registered, bearing the trade mark ESPACE are hereinbelow:
S.No. Trade Mark Regd. Class Dated Status
No./Appl. No.
1. Espace (stylized) 1328131 42 24.12.2004 Registered
2. Espace (stylized) 1353515 42 27.04.2005 Registered
3. Chateau Espace 1879200 16 03.11.2009 Registered
(Stylized)
4. Espace (stylized) 1879200 16 03.11.2009 Pending
5. Chateau Espace 1879202 42 03.11.2009 Pending
Stylized
TM NO. 66/2016
CNR No. DLST010003932012
Page 5 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022
M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
1.6. Trade Mark ESPACE has also been prominently used alongwith other leading trade marks/trade names of the plaintiff like MBD NEOPOLIS, MBD ZEPHYR, MBD ALCHEMIE, MBD GROUP etc. in all promotional and advertising efforts of the plaintiff and the MBD Group as a whole. The trade mark ESPACE has generated significant business turnover for the plaintiff and unprecedented and unmarked reputation/goodwill in the domestic as well as international markets.
1.7. Radisson MBD Hotel is one of the most well known five star hotels in NCR, Delhi (and the only five star hotel in Noida), the plaintiff's hotel is visited and used for accommodation and other entertainment and recreational purposes, by not only the people of India, but also by foreign tourists who travel to India. Radisson MBD Hotel is also used for accommodation purposes of celebrities from across the globe, including India. It has at least 95% occupancy throughout the year. During course of their stay in Radisson MBD Hotel, all or most of the residents customers use the services offered by the plaintiff, under the trade mark TM NO. 66/2016 CNR No. DLST010003932012 Page 6 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
ESPACE and/or come across the trade mark ESPACE, which is prominently displayed in the premises of the Radisson MBD Hotel. The trade mark ESPACE has also attained substantial transborder reputation. The trade mark ESPACE is inherited distinctive being an arbitrarily coined mark, though continuous and extensive use over all these years, the plaintiff has acquired common law rights in the mark ESPACE. The plaintiff has expended a great amount of time, money and efforts to promote and advertise the trade mark ESPACE in all and every possible manner. As a cumulative result of such extensive/continuous use of the trade mark ESPACE and the resultant accrual of reputation and goodwill, the plaintiff has acquired insurmountable common law rights in the undisturbed and exclusive use of the trade mark ESPACE, in any style and form and the same has become a single source identifier. The plaintiff has used the word ESPACE as part of any composite mark, the plaintiff has laid prominence/significance on the mark ESPACE to denote its services. As such, the plaintiff has always displayed the trade mark ESPACE as the essential feature.
TM NO. 66/2016CNR No. DLST010003932012 Page 7 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
1.8. Trade mark ESPACE and other marks containing the trade mark ESPACE, prominently feature in print and electronic media including trade journals, directories, magazines and periodicals having, which have wide coverage and circulation and also have a voluminous presence on cycle space, including on the plaintiff's domin name http://www.radissonblu.com/hotelnoida. Trade mark ESPACE has attained the designation of being a 'well known mark' as defined under the Trade Mark Act. Any adoption or use of the trade mark ESPACE or of any deceptively similar mark in relation to identical and/or similar goods would not only cause confusion and deception to the public, but would also be contrary to the protection required to be afforded to a wellknown mark, dilute its image and be generally misleading to consumers and members of trade. 1.9. The plaintiff acquired knowledge from the defendant's website www.espacehomes.in. ("infringing Domain Name" or "Infringing Website") of the fact that the defendant was using the trade mark ESPACE ("Infringing Mark") for its business activities. From the contents of the TM NO. 66/2016 CNR No. DLST010003932012 Page 8 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
Infringing Website, it is clear that the defendant is a real estate developer and plans to launch a residential project under the Infringing Mark and offer and promote its services/project through the Infringing Domain Name.
1.10. Adoption and use of the mark ESPACE in the Infringing Mark and Infringing Domain Name as a whole, by the defendant for its business activities constitutes infringement of the statutory rights of plaintiff under the Trade Marks Act in the mark ESPACE and all the composite marks bearing the mark ESPACE, which is an essential feature of all the trade marks. Infringing Mark is phonetically, visually, structurally, and otherwise identical and / or deceptively similar to the registered trade mark ESPACE, and other composite marks of the plaintiff, bearing the mark ESPACE. Defendant used the Infringing Mark and the Infringing Domain Name with malafide intentions to obtain undue monetary benefits in view of the substantial goodwill and reputation attached to the plaintiff and its other group companies. By virtue of registration over the mark ESPACE and the composite marks bearing the mark ESPACE, the TM NO. 66/2016 CNR No. DLST010003932012 Page 9 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
plaintiff has acquired exclusive statutory rights in the trade mark ESPACE. User of Infringing Mrk and Infringing Domain Name by the defendant for its business activites is bound to lead to confusion in the minds of the public. The manner of display and use of the In fringing Mark unequivocally suggests that prominence has been given to the mark ESPACE.
1.11. The plaintiff sent a legal notice dated 05.11.2011 to the defendant vide registered post and courier, through which defendant was asked to cease and desist form using the Infringing Mark and Infringing Domain Name containing the trade mark ESPACE and made the defendant aware of plaintiff's statutory rights, prior adoption and continuous user of the trade Mark ESPACE for its business activities. The defendant replied the same vide its communication dated 20.12.2011 but denied to stop using the Infringing Mark and the Infringing Domain Name. Hence the plaintiff has filed the present suit with the following reliefs:
a) Decree for permanent injunction restraining the defendant, it s directors, partners or proprietor as the TM NO. 66/2016 CNR No. DLST010003932012 Page 10 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
case may be, its assigns in business, franchisees, licensees, distributors and agents from using, adopting, selling, offering for sale, advertising, directly or indirectly dealing in identical or similar goods/services under the Infringing Mark, namely ESPACE and the Infringing Domain Name namely www.espacehomes.in, or any other trade mark / trading name / service mark and domain name as may be identical to or deceptively similar with or containing the trade mark ESPACE or any of the composite marks of the plaintiff containing the mark ESPACE, amounting to infringement of the trade mark registered in the name of the plaintiff.
b) Decree for permanent injunction restraining the defendant, its directors, partners or proprietor as the case may be, its assigns in business, franchisees, licensees, distributors and agents from using, adopting, selling, offering for sale, advertising, directly or indirectly dealing in identical or similar goods/services under the Infringing Mark, namely TM NO. 66/2016 CNR No. DLST010003932012 Page 11 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
ESPACE and the Infringing Domain Name, namely www.espacehomes.in, or any other trade mark / trading name / service mark and domain name as may be identical to or deceptively similar with or containing the trade mark ESPACE, as may be likely to cause confusion or deception amounting to passing off of the services, goods and/or business of the defendant for those of the plaintiff.
c) A decree of mandatory injunction be granted against defendant, directing it to immediately transfer the Infringing Domain Name, namely, www.espacehomes.in, at the defendant's cost, to the plaintiff, so that the plaintiff can have absolute access and ownership over the Infringing Domain Name.
d) Decree for delivery up of all the infringing material, goods stationery, hoardings, boards, printed material, dies, blocks etc. to an authorised representative of the plaintiff for destruction.
e) An order for costs in the proceedings.
TM NO. 66/2016CNR No. DLST010003932012 Page 12 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
f) Any further order as this Hon'ble Court deems fit and proper in the facts and circumstances of this case.
2. Summons were issued to the defendant. The defendant appeared and filed Written Statement. It is stated in the written statement as under :
2.1. The trademark word ESPACE is neither distinctive nor invented, as it is of common usage in French as well as English language, hence cannot be protected as it is inherently incapable of developing distinctiveness. If a generic, dictionary, descriptive mark is one, which is a combination of common English words, the user of the marks has to bear the risk of, some amount of confusion.
2.2. The defendant has filed rectification petition before the Hon'ble Tribunal (IPAB) at Chennai under Section 125 of Trade Marks Act, 1999 for cancellation of impugned registered trademarks ESPACE with slogan vide 1328131 and 1353516 in class 42.
2.3. There are many web sites operating under ESPACE in India. The plaintiff have not been able to stop all the websites operating under the impugned name, which shows that TM NO. 66/2016 CNR No. DLST010003932012 Page 13 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
plaintiff has allowed and accepted coexistence of the other domain/trademarks being used by the other entities, of which some are prior to the plaintiff and some are later to the plaintiff. Adoption of the trademark of the plaintiff is the word 'ESPACE' is a common word in French language and it is meaning is "space, room space" in English language and normally in French language, it is used as masculine word as "L'espace" as such the impugned mark is wholly, highly descriptive in nature, thus incapable acquiring of distinctiveness and further lacks as well as has so far as failed to acquire any secondary meaning to the said mark nor has the quality of gaining secondary meaning or the monopoly nor has been to qualifies for the secondary meaning of the few year use. The Trademark word "ESPACE" is neither distinctive nor invented, as it is being part of common usage in French as well as English language, hence cannot be protected as it is inherently incapable of developing distinctiveness. If a descriptive mark is one, which is essentially a combination of common English words the user of the marks has to bear the risk of, some amount of TM NO. 66/2016 CNR No. DLST010003932012 Page 14 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
confusion. No monopoly can be claimed by the user of the Mark.
2.4. The Registrar of the trade mark has granted the similar right to another applicant to use ESPACE in class 42. The said applicant had claimed a use since the year 2001 which is much prior to the claim of the plaintiff. 2.5. From search of the Trademark registry record, it clearly establishes the fact that there is another company M/s AIR FRANCE which has been using much prior to the respondent No.1 herein the mark "L'SEPACE under registered trademark No. 679474, 670635 in relation to the class 16 and other trademark application of AIR FRANCE for trademark "ARIAN ESAPCE" under Trademark application no. 1250833 in relation to class 37, 38, 39 and 42 claiming much prior use them the plaintiff herein.
2.6. The plaintiff has failed to submit a single bill to show the use of trademark 'ESPACE' from the year 2004. The plaintiff has made a false claim of use from the year 2004 to create prior user right of the impugned product with a sole TM NO. 66/2016 CNR No. DLST010003932012 Page 15 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
intention of just to gain undue advantage by not disclosing the true user to the Court.
2.7. The plaintiff had filed its first application for the registration of the trademark application No. 1328131 in class 42 on 24.12.2004 having single colour mark label "ESPACE" by just artistically maneuvering the writing pattern under class 42 with the user "PROPOSED TO BE USED". The plaintiff again filed an application for registration of the trademark after a gap of almost six months vider trademark application No. 1353516 in class 42 on 27.04.2005 having single colour mark label "ESPACE" by just artistically maneuvering the writing pattern along with slogan under class 42 with the user as "PROPOSED TO BE USED". In both of the applications of the plaintiff, the plaintiff had mentioned the use as "proposed to be used" as such it shows that the the plaintiff had simply intention of registering the impugned trademark in question, as such at that time plaintiff was not using the trademark "ESPACE" till the filing of the second application on 27.04.2005. As such plaintiff claim of the use of the TM NO. 66/2016 CNR No. DLST010003932012 Page 16 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
trademark "ESPACE" from 24.12.2004 under class 42 is wrong and false.
2.8. The plaintiff has deliberately, intentionally fabricated false user of the impugned trademark "ESPACE" from the year 2004 by concealing actual user from this Hon'ble Court and it failed to bring proof of violation by the defendant. 2.9. The plaintiff sent the notice to the defendant in the year 2011 and the it has taken one year in filing a case against the defendant and did not provide any plausible reason for the same. The plaintiff has not filed a single bill/invoice/receipt to prove the use of trademark or goodwill in the eyes of its customers. The plaintiff submitted only balance sheets of the company in support of its plea of prior use to frustrate the defendant.
2.10. The defendant was not aware of any business activities of the plaintiff and in fact became aware about its existence only on the receipt of present suit. The plaintiff had not used the mark in question in the year 2004 and has a tainted use of its trademark and as being tainted user the plaintiff deserves no relief. There are many registrants of the TM NO. 66/2016 CNR No. DLST010003932012 Page 17 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
impugned trademark 'ESPACE' under class 16 and 42 and the Trademark statute clearly envisages one originator and one source. Hence it is prayed that the suit may be dismissed.
3. The plaintiff also filed an application under Order XXXIX Rule 1 & 2 CPC. An ad interim exparte injunction was granted by the Court vide order dated 22.12.2012 which was made absolute vide order dated 30.04.2013.
4. Vide order dated 25.08.2014, the following issues were framed :
"1. Whether Mr. Rohit Mehra, Associate Legal Advisor of MBD Group, is duly constituted Attorney of the plaintiff to sign and verify the plaint and the plaint has been signed by such duly constituted attorney? OPP "2. Whether the present Court of Additional District Judge, South Delhi, Saket has territorial jurisdiction to try the suit because as per record of Registrar of Companies, the plaintiff's registered office in the Jalandhar, Punjab? Onus on Parties.
"3. (a) Whether the plaintiff has adopted and using trade/service mark "ESPACE", being a generic dictionary word, it is neither an invented word nor carrying distinctiveness, (primary or secondary) being common usage in Fresh and in English language? OPD TM NO. 66/2016 CNR No. DLST010003932012 Page 18 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
"4. Whether the suit is liable to be dismissed in view of the preliminary objections No. 5, 6 and 7 of the written statement of defendant? OPD "5. Whether the plaintiff is entitled for decree of permanent injunction against defendants as prayed in para 33(i) of the prayer clause? OPP "6. Whether the plaintiff is entitled for decree of permanent injunction against defendants as framed & prayed in para 33(ii) of the prayer clause? OPP "7. Whether the plaintiff is entitled for decree of mandatory injunction against defendants as framed & prayed in para 33(iii) of the prayer clause? OPP "8. Whether the plaintiff is entitled for decree of mandatory injunction against defendants as framed & prayed in para 33(iv) of the prayer clause? OPP "9. Relief."
5. The matter was fixed for plaintiff's evidence. The plaintiff filed affidavit of evidence of Mr. Rohit Mehta. On 22.02.2016, he entered into the witness box. He was partly examined on that day. His further examination in chief was deferred as he wanted to produce some documents. The further examination was deferred for 21.04.2016. Thereafter several opportunities were granted to the plaintiff to lead evidence. However, the plaintiff failed to examine the witness. Hence, the right of the plaintiff to lead evidence was closed vide order dated 27.11.2017.
TM NO. 66/2016CNR No. DLST010003932012 Page 19 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
6. The plaintiff moved an application seeking opportunity to again lead evidence. Vide order dated 26.05.2018 Ld. Predecessor dismissed the said application vide detailed order.
7. The defendant also failed to lead any evidence. Therefore opportunity of the defendant to lead evidence was closed vide order dated 11.10.2018. Thereafter the matter was fixed for final arguments.
8. The defendant stopped appearing in the present matter. Written arguments has been filed on behalf of the plaintiff. It is stated in the written arguments that the defendant has adopted and used the impugned marks which amount to infringement of the statutory rights in the mark of the plaintiff i.e. ESPACE. The marks of the plaintiff are unique and distinctive marks. The word ESPACE being a French word has no specific meaning or connotation in the Indian context and therefore, is a distinctive trademark as far as the Indian public is concerned. It is settled position of law in India that foreign words are capable of having trademark significance in India. The infringing marks used by the defendants are identical to the mark of the plaintiff. The plaintiff is the registered proprietor of the ESPACE mark in India. The TM NO. 66/2016 CNR No. DLST010003932012 Page 20 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
impugned mark of the defendant are virtually identical to the mark of the plaintiff. To establish a case of passing off, the plaintiff only needs to show a likelihood of confusion that can be caused to a consumer of average intelligence irrespective of whether the field of activity is similar or not. Hence, it is prayed that the suit may be decreed in favour of the plaintiff. It is stated that the plaintiff is not required to lead any evidence to prove its case in the present matter as all the issues are issues of law which can be decided on the basis of material on record. Ld. Counsel for the plaintiff has relied upon the following judgments :
"1. Kamani Oil Industries Pvt. Ltd. Vs. Bhuwneshwar Refineries Pvt. Ltd., Suit No. 59/2014, SCC Online BOM
595.
2. Aktiebolaget Volvo of Sweden Vs. Volvo Steels Ltd. of Gujarat 1998 PTC (18) DB 47 (BOM).
3. Kaviraj Pandit Durga Dutt Sharma Vs. Navratna Pharmaceutical Laboratories (1965) 1 SCR 737.
4. Ruston & Hornsby Ltd. Vs. The Zamindara Engineer Company 1969 (2) SCC 727.
5. Midas Hygiene Industries Pvt. Ltd. & Anr. Vs. Sudhir Bhatia & Ors. (2004) 3 SCC 90.TM NO. 66/2016
CNR No. DLST010003932012 Page 21 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
6. Larsen & Toubro Ltd. Vs. Lachmi Narayan Traders & Ors. ILR (2008) II Delhi 687.
7. Satya Infrastructure Ltd. & Ors. Vs. Satya Infra & Estates Pvt. Ltd. (2013) SCC Online Delhi 508.
9. I have considered the written submissions filed by Ld. Counsel for the plaintiff and perused the material on record. My issue wise findings are as under :
10. Issues No. 1 to 8 : All these issues are taken up jointly as they require common discussion in the facts and circumstances as above mentioned.
11. The burden to prove issue no. 1,5,6,7 and 8 was on the plaintiff. Burden to prove issue no. 3 & 4 was on the defendant and burden to prove issue no. 2 was on both the parties.
12. It is on record that none of the parties have led the evidence. However, perusal of the record would show that the defendant has denied all the contentions / averments made by the plaintiff in the plaint. Therefore, the burden was on the plaintiff to prove its case before the Court before the defendant could be asked to led any evidence.
13. In the written arguments, Ld. Counsel for the plaintiff has relied upon the judgment of Satya Infrastructure Ltd. & Ors.
TM NO. 66/2016CNR No. DLST010003932012 Page 22 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
Vs. Satya Infra & Estates Pvt. Ltd. to state that there is no requirement of evidence to be led by a party in a case as the question before the Court is only a question of law which can be decided even in the absence of any evidence being led by the parties.
14. I have considered the submission. However, I do not find any merits in the same. The question before the Court are not only question of law but they are of fact also which were required to be proved by plaintiff by leading evidence. The plaintiff in its suit has claimed that the mark ESPACE is owned and managed by the plaintiff. The plaintiff has also claimed that it had coined the trademark and applied for registration for exclusive use of trademark ESPACE and its variant under the TradeMark Act, 1999. Therefore, the burden was on the plaintiff to prove that it had applied for the registration of the trademark and to prove its registration for the categories mentioned in the plaint. Further, it was also for the plaintiff to prove that its mark - ESPACE has been registered in the clauses mentioned in the plaintiff. No evidence to that effect has been led by the plaintiff. Further, the averments of the plaintiff in the plaint have not tested on the TM NO. 66/2016 CNR No. DLST010003932012 Page 23 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
touchstone of the cross examination by the Counsel for the defendant. The defendant in its WS has specifically stated that there is another company named M/s Air France which has been using a mark L'SEPACE much prior to the plaintiff's trademark. Further, the plaintiff had to prove that the french word 'ESPACE' used by him as mark has attained the properties of a distinctive mark in the society.
15. I have studied the judgment titled Satya Infrastructure Ltd. & Ors. Vs. Satya Infra & Estates Pvt. Ltd. However, the said judgment is distinguishable on facts. In the judgment Satya Infrastructure Ltd. & Ors. Vs. Satya Infra & Estates Pvt. Ltd., the defendants did not appear despite service and they were proceeded exparte. Therefore, Hon'ble High Court observed that there was no need of exparte evidence as there was an affidavit along with the plaint. However, in the present case, the defendant appeared and contested the suit. It has filed written statement. On the day when the opportunity of the plaintiff to lead PE was closed, Ld. Counsel for the defendant was present. The defendant did not get any opportunity to cross examine any witness of the plaintiff TM NO. 66/2016 CNR No. DLST010003932012 Page 24 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
and the averments of the plaintiff in the plaint could not be tested on the touchstone of the cross examination.
16. Further the issue no. 1 is related to the maintainability of the suit. The defendant has taken the objection that the suit has not been signed and verified by a duly constituted Attorney on the basis of which the issue no. 1 was framed. The plaintiff has not led any evidence and therefore, it has failed to prove that the plaint had been signed and verified by duly constituted Attorney of the plaintiff.
17. I am of the considered opinion that the plaintiff has failed to prove the averments made by it in the plaint as per law and therefore, the plaintiff has failed to prove its case. The plaintiff has also failed to prove that the suit had been duly instituted by a duly constituted Attorney. Therefore, the suit of the plaintiff is not liable to be dismissed. I get strength from the judgment of Hon'ble High Court of Delhi in Simens Ltd. V/s Nova Iron & Steel Limited, CS (OS) No. 1660/1998 decided on 18.09.2012.
18. I have also studied the other judgments relied upon by the plaintiff. However, those judgments are distinguishable on facts. The judgments titled as Aktiebolaget Volvo of Sweden Vs. Volvo TM NO. 66/2016 CNR No. DLST010003932012 Page 25 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
Steels Ltd. of Gujarat 1998 PTC (18) DB 47 (BOM)., Kaviraj Pandit Durga Dutt Sharma Vs. Navratna Pharmaceutical Laboratories (1965) 1 SCR 737, Ruston & Hornsby Ltd. Vs. The Zamindara Engineer Company 1969 (2) SCC 727 have been passed on merits where the plaintiff had led the evidence. The other three judgments i.e. Kamani Oil Industries Pvt. Ltd. Vs. Bhuwneshwar Refineries Pvt. Ltd., Suit No. 59/2014, SCC Online BOM 595,Midas Hygiene Industries Pvt. Ltd. & Anr. Vs. Sudhir Bhatia & Ors. (2004) 3 SCC 90. and Larsen & Toubro Ltd. Vs. Lachmi Narayan Traders & Ors. ILR (2008) II Delhi 687 are orders in relation to the interim directions. Therefore, they are not applicable in the facts and circumstances of the present case.
19. In view of the above discussions, I hold that the plaintiff has failed to prove its case as per law. The issues no. 1,2,5,6,7 & 8 are decided accordingly against the plaintiff and in favour of the defendant. In view of findings of these issues, there is no requirement of giving any findings separately on issue no. 3 & 4.
20. Issue No. 9 : Relief : In view of the above mentioned findings, the suit of the plaintiff is dismissed. In the circumstances of the case, no order as to cost.
TM NO. 66/2016CNR No. DLST010003932012 Page 26 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022 M/s Bright Enterprise Pvt. Ltd. Vs. Narang Infrastructure Pvt. Ltd.
21. Decree sheet be prepared accordingly.
Pronounced in the open Court on this 13th Day of December 2022.
Digitally signed by DINESH DINESH KUMAR
KUMAR Date:
2022.12.13
16:11:20 +0530
(DINESH KUMAR)
ADDL. DISTRICT JUDGE02
SOUTH, SAKET COURTS, NEW DELHI.
TM NO. 66/2016
CNR No. DLST010003932012
Page 27 of 27 Dinesh Kumar/ADJ02/South/Saket/ND/13.12.2022