Delhi District Court
Mr. Karan Bhutani Trading As M/S Kmsp ... vs Mrs Rajeshwari Proprietor Of M/S Micah ... on 2 September, 2024
IN THE COURT OF SANJEEV KUMAR MALHOTRA
DISTRICT JUDGE (COMMERCIAL COURT)
NORTH EAST: KARKARDOOMA COURTS:DELHI
CS (Comm) 48/2021
CNR No.DLNE01-002875-2021
Mr. Karan Bhutani
Trading as M/s KMSP Industries
S-119, UPSIDC Site-2,
Loni Road Industrial Area,
Mohan Nagar, Ghaziabad, UP-201007 .....Plaintiff
Vs
Mrs. Rajeshwari
Proprietor of M/s MICAH Sintered Products
Having its office at: 38, Gali no.1,
Pyarelal Marg, Khasra no.216
Village-Karawal Nagar, Delhi-110094 ......Defendant
Date of Institution : 24.08.2021
Date of Arguments : 01.08.2024
Date of Judgment : 02.09.2024
JUDGMENT
1. This is a suit for permanent injunction restraining infringement and passing off Trade Mark/Label, Copyright, Damages, Rendition of accounts, Delivery up etc., as filed by plaintiff against the defendant.
CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 1 of 21 Digitally signed by SANJEEV SANJEEV KUMAR KUMAR MALHOTRA MALHOTRA Date: 2024.09.02 16:06:50 +05'30'
2. In brief, facts of the case as made out in the plaint are that plaintiff is the proprietor of KMSP Industries and is engaged in the business of manufacturing, marketing and selling of sintered copper iron bushes, bushes being parts of motors, bushes being parts of engines, spring bushes (parts of machines), bushings (parts of machines), sintered bushes and parts included in class 6 and 7 bearing the trademarks SP, SPSINTERED BUSHES and KMSP and artistic works . It is stated that plaintiff is the owner of highly distinctive trademarks "KMSP, SP and SPSINTERED BUSHES", which have been independently coined and conceived by the plaintiff in the year 1995 and 2010. It is claimed that the plaintiff's trademark SP derived from the other prior registered and continuously used trademark KMSP of the plaintiff, which is also part of firm name of the plaintiff i.e. KMSP Industries and hence, is the most valuable commercial asset for the plaintiff.
3. It is case of the plaintiff that plaintiff is the registered owner of "SPSINTERED BUSHES" and formative trademark "KMSP" and its artistic works and plaintiff is the prior user, rightful owner and the registered proprietor of the trademarks 'KMSP and SPSINTERED BUSHES and its variants' which are very popular in the market. It is stated that plaintiff is also original conceiver, adopter and user of the artistic works and continuously, extensively and openly using the aforesaid distinctive artistic works having unique colour combination layout and font style in relation to the said goods since 1995 and 2010 respectively and that the plaintiff has also secured registration under the Copyright CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 2 of 21 SANJEEV Digitally signed by SANJEEV KUMAR KUMAR MALHOTRA Date: 2024.09.02 16:07:46 MALHOTRA +05'30' Act of original artistic work within the meaning of section 2
(c) of the Copyright Act, 1957. It is stated that because of high quality and efficiency of the goods manufactured and marketed by the plaintiff under the trademark SP, SPSINTERED BUSHES and its variants alongwith artistic works have acquired enviable goodwill and reputation among the consumers, public and members of trade and are very popular among the customers from all over India. It is stated that plaintiff has filed number of oppositions before the Trademark Registry to oppose the others deceptively similar brand.
4. It is further case of the plaintiff that the defendant is manufacturing and marketing similar goods as that of the plaintiff and the business being run by the defendant, who is proprietor of M/s Micah Sintered Products is same and also overlaps with the goods of the plaintiff. It is stated that upon receipt of information from the market source regarding manufacturing and marketing of the products by defendant, plaintiff through his advocate sent cease and desist legal notice on 05.07.2021 calling upon the defendant to cease and desist from using the trademark or any other mark/name confusingly and similar to the plaintiff's well known trademark, but the defendant instead of complying to the said notice, sent false and frivolous reply dated 23.07.2021 and refused to comply with the said legal notice. It is further stated that plaintiff has filed notice of opposition against application no.5006038 in class 7 of the defendant on 09.08.2021, but despite cease and desist CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 3 of 21 SANJEEV Digitally signed by SANJEEV KUMAR KUMAR MALHOTRA Date: 2024.09.02 16:08:15 MALHOTRA +05'30' notice and notice of opposition against impugned trademark of defendant, defendant is still manufacturing and marketing similar/identical goods under the trademark of plaintiff.
5. It is further case of the plaintiff that defendant does not have any kind of registration for the trade mark "SP" and is illegally involved in manufacturing and marketing of impugned products bearing the trademark which clearly amounts to infringement of trademarks and copyright of plaintiff. It is stated that defendant is well aware of the aforesaid trademark/trade name/label/artistic work 'SP, SPSINTERED BUSHES and its variants' and artistic works of the plaintiff and its adoption/use by the plaintiff in relation to said goods since very beginning, as also regarding goodwill and reputation attached to these trademarks, but the defendant has malafidely and deliberately adopted/used the identical mark in relation to their goods. It is submitted that use of trademark "SP" or any other identical and deceptively/confusingly trademark/label/artistic work in relation to identical, related or other goods amounts to infringement and passing off of the said trademark/label/ artistic work of the plaintiff. It is claimed that by using of impugned trademark/label/artistic work of the plaintiff, the defendant is passing off its inferior quality goods as those of the plaintiff and as a consequence, the said trademark/ artistic work of the plaintiff is being diluted and reduced to nullity. It is submitted that the plaintiff, the prior user of trademark "SP, SPSINTERED BUSHES" and its artistic CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 4 of 21 SANJEEV Digitally signed by SANJEEV KUMAR KUMAR MALHOTRA Date: 2024.09.02 16:08:32 MALHOTRA +05'30' work has not given any consent, permission to the defendant to use the impugned trademark, its similar expressions and similar artistic works. It is stated that the abovesaid illegal activities on the part of defendant is causing irreparable loss/injury to the reputation/goodwill/ business of the plaintiff. Hence, the present suit.
6. Defendant contested the present suit by filing detailed written statement while taking preliminary objections that the defendant's husband is the owner of mark 'SP PLUS' and using the same since year 2002 and the defendant had taken oral authorization from her husband to use his mark in her business; the plaintiff copied the word SP from defendant's husband trademark 'SP PLUS' and therefore, the plaintiff cannot claim ownership over the said mark; the mark of plaintiff in class 7 is 'SPSINTERED BUSHES' and the mark of defendant is 'SP ORIGINAL' and therefore, there is no similarity and confusion between the trademarks; the plaintiff's mark 'SPSINTERED BUSHES' is wrongly registered as the term 'SINTERED BUSHES' is the name of commodity and no one should have registered over the name of commodity; that no cause of action arose in favour of plaintiff as the defendant never used the trademark 'SP ORIGINAL" in manufacturing, marketing and trading of any similar goods; that the plaintiff is not a registered user of mark ' SP' in any class of trademark and has admitted before trademark registry that he is an applicant for mark 'SP' under application no.3310818 in class 6 and prior user of same since year 2002 and that the status of the said application is 'opposed'.
CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 5 of 21 SANJEEV Digitally signed by
SANJEEV KUMAR
KUMAR MALHOTRA
Date: 2024.09.02
MALHOTRA 16:09:09 +05'30'
7. It is submitted that the trademark shall be read as complete and not in any different way, but the plaintiff according to his convenience, presented his mark like this "SP SINTERED BUSHES" while it should be presented as "SPSINTERED BUSHES". It is further submitted that as per plaintiff's certificate of copyright for the registered artistic work with title KMSP is taken for non-commercial use, but the plaintiff is using the said artistic work for commercial use.
8. On merits, the contents of plaint have been denied as wrong. It is submitted that after taking the authorization from her husband namely Rajender Prasad Sharma, the defendant had applied for the trademark "SP ORIGINAL"
via application no.5006038 in Class 7 on 15.06.2021 and tagged the same "proposed to be used" as the defendant proposed to use the said mark after registration. It is further submitted that the plaintiff's mark under Class 7 is "SPSINTERED BUSHES" and the defendant mark "SP ORIGINAL" is not the same and confusing, which is evident from the bare reading of both the marks. The defendant's husband is a prior user of the mark than the plaintiff, as using it since year 2002. Thus, it is prayed that suit of plaintiff is liable to be dismissed with heavy cost.
9. Plaintiff filed replication wherein he denied the facts as mentioned in written statement while re-affirming the facts as mentioned in the plaint.
10. From the pleadings of the parties following issues were framed vide order dated 19.01.2024:-
CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 6 of 21 SANJEEV Digitally signed by
SANJEEV KUMAR
KUMAR MALHOTRA
Date: 2024.09.02
MALHOTRA 16:09:26 +05'30'
1. Whether the plaintiff is entitled for a decree of injunction as prayed for ? OPP
2. Whether the plaintiff is entitled for delivery of all the offending goods bearing the impugned trademark/label/artistic work including publicity materials, stationery, account books and other incriminating material which are under the possession and control of the defendant for destruction or erasure purposes? OPP
3. Whether the plaintiff is entitled for decree of damages as prayed for ? OPP
4. Whether the plaintiff has not approached before the court with clean hands and suppressed the material facts? OPD
5. Relief.
11. In support of his case, plaintiff examined himself as PW-1 and tendered his examination in chief by way of affidavit i.e. Ex.PW1/A. PW-1 has relied upon following documents:-
i) Copies of status of application bearing trademark SP and KMSP of plaintiff alongwith registration certificates i.e. Ex.PW1/1 (colly).
ii) Copies of Registration Certificate of Copyright of artistic work KMSP/SP of plaintiff alongwith their status reports i.e. Ex.PW1/2 (colly).
iii) Online copy of order dated 04.12.2019 passed by Deputy Registrar of Trademarks regarding CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 7 of 21 SANJEEV Digitally signed by SANJEEV KUMAR KUMAR MALHOTRA Date: 2024.09.02 MALHOTRA 16:09:44 +05'30' cancellation of SP artistic work of third party i.e. Ex.PW1/3 (colly).
iv) Copies of legal proceeding certificates of plaintiff's trade marks i.e. Ex.PW1/4 (colly).
v) Copies of CST and GST certificates of plaintiff firm i.e. Ex.PW1/5 (colly).
vi) Copy of registration certificate of allotment of TIN GST of plaintiff firm i.e. Ex.PW1/6.
vii) Copy of form DAVAT alongwith challans i.e. Ex.PW1/7 (colly).
viii) Copy of Invitation Card for opening ceremony of shop of plaintiff i.e. Ex.PW1/8.
ix) Annual Turn over of the plaintiff firm since 2010 to till date i.e. Ex.PW1/9.
x) Copy of ISO registration of plaintiff i.e. Mark A.
xi) Copies of invoices of plaintiff's firm i.e. Ex.PW1/11 (colly).
xii) Copies of advertisement of plaintiff products in Auto Flash News paper on 15.08.2001 i.e. Ex.PW1/12 (colly).
xiii) Copies of Promotion of Brands of plaintiff's firm shown in Home Appliances & Kitchenware Directory of India i.e. Ex.PW1/13 (colly).
xiv) Copy of Trade Mark and Copyright Caution Notice Published in National News Paper i.e. Ex.PW1/14.
xv) Copy of Legal Notice dated 05.07.2021 i.e. Ex.PW1/15.CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 8 of 21
SANJEEV Digitally signed by
SANJEEV KUMAR
KUMAR MALHOTRA
Date: 2024.09.02
MALHOTRA 16:10:04 +05'30'
xvi) Copy of reply to legal notice dated 23.07.2021 i.e. Ex.PW1/16.
xvii) Notice of opposition filed against impugned application no.5006038 of defendant i.e. Ex.PW1/17.
12. Defendant has examined her son Sh. Pradeep Kumar Sharma as DW-1, who tendered his examination in chief by way of affidavit i.e. Ex.DW1/A. DW-1 has relied upon following documents:-
i) Copy of statement of particulars as per the copyright manual on the registration of artistic works i.e. Ex.DW1/1.
ii) Copies of the trademarks public search registry website report of different trademark titles "SP" in different classes of trademarks, copies of applications obtained by the defendant and her husband from the trademark registry and copy of the counter statement filed by the defendant before the trademark registry i.e. Mark DW1/2 (colly).
iii) Photocopies of defendant's trademarks registry i.e. Ex.DW1/3 (colly).
iv) Copies of counter statement filed by the defendant before the trademark registry i.e. Ex.DW1/4 (colly).
v) Copies of the reply to the cease and desist notice issued by the defendant dated 23.07.2021 i.e. Ex.DW1/5.
vi) Copy of Trademark Application TM-A filed by Mr. Sanjeev Kumar Tiwari i.e. Ex.DW1/6.CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 9 of 21
SANJEEV Digitally signed by
SANJEEV KUMAR
KUMAR MALHOTRA
Date: 2024.09.02
MALHOTRA 16:10:18 +05'30'
vii) Copies of advertisements given by the defendant's husband i.e. Mark DW1/7 (colly).
viii) Copies of invoices issued by defendant's husband i.e. Mark DW1/8 (colly).
ix) Copy of cease and desist notice sent by the defendant's husband i.e. Ex.DW1/9.
13. Arguments have been advanced by Mr. Satish Kumar and Mr. Rakesh Tiwari, Ld. Counsels for plaintiff and by Mr. Amrinder Kumar Dubey, Ld. Counsel for defendant. I have given my thoughtful consideration to the rival submissions made by the parties and also gone through the record as well as written arguments, as filed on behalf of both the parties. My issue wise findings are as under:-
Issue no.1 Whether the plaintiff is entitled for a decree of injunction, as prayed for ? OPP
14. Onus to prove this issue was upon the plaintiff. PW-1 Sh. Karan Bhutani in his affidavit of evidence Ex.PW1/A deposed that his grandfather Mr. Brij Mohan Sethi started trading business of sintered copper iron bushes under the trademark "KMSP" during the year 1994-95 and in the year 2005, he got registered the name of firm as "Karan Motor Spare Products" and with his efforts, new range of bushes under the trademark "SP" which was derived from KMSP for sintered copper iron bushes, bushes being part of motors, bushes being part of engines, spring bushes, bushings (parts of machines), bushing for use as parts of CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 10 of 21 SANJEEV Digitally signed by SANJEEV KUMAR KUMAR MALHOTRA Date: 2024.09.02 MALHOTRA 16:10:31 +05'30' machines, sintered bushes and parts were started. PW-1 deposed that in order to acquire statutory rights with regard to trademark/label "KMSP", an application no.787606 in class 9 was filed on 14.01.98 claiming user since 01.04.1995 and he also applied for registration of trademark "SP" under application no.3310818 in class 6 on 15.07.2016 claiming user since 01.04.2010. Thereafter, PW-1 filed a new application for registration of trademark "KMSP" under application no.3631648 in class 6 on 10.09.2017 claiming user since 01.04.98 and subsequently also filed an application for registration of trademark "KMSP" in class 7, 35, 39 and 40 on 16.01.2021 claiming user since 01.04.95. PW-1 deposed that application no.4521451 in class 7 of the trademark "SP SINTERED BUSHES" was assigned by virtue of deed of assignment dated 17.05.2021 and the aforesaid applications were filed in the office of Trademark Registry and same were accepted and registered in respective classes of the Trademark Act.
15. Ex.PW1/4 (colly) are copies of legal proceedings certificates of plaintiff's trademark. Perusal of same shows that plaintiff is the owner of following trademarks:
Trademark Class Registration date
SPSINTERED BUSHES 7 05.06.2020
KMSP 9 14.01.1998
KMSP with device 6 10.09.2017
SP (date of application (objected)
15.07.16)
CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 11 of 21
Digitally signed by
SANJEEV SANJEEV KUMAR
KUMAR MALHOTRA
Date: 2024.09.02
MALHOTRA 16:10:45 +05'30'
16. PW-1 also proved copies of registration certificate of copyright of artistic work KMSP/SP of plaintiff alongwith their status report as Ex.PW1/2 (colly) and Online copy of order dated 04.12.19, passed by Deputy Registrar of Trademarks regarding cancellation of SP artistic work of third party as Ex.PW1/3 (colly).
17. DW-1 Sh. Pradeep Kumar in his affidavit of evidence Ex.DW1/A deposed that his father is owner of mark "SP PLUS" and first user since the year 2002 and his mother had taken oral authorization from her husband to use his mark in her business. He deposed that defendant's husband had applied for the trademark "S R V" on 01.02.2006 and got registered via certificate no.919200 dated 01.02.2011 in class 7 for goods sintered lubricating bush, structure parts, sintered clutch buttons, carbon bushes and machine parts and that the trademark "S R V" has almost similar details as the mark "SP PLUS" such as goods, users, details and others. The status of "SP PLUS" is objected by the plaintiff. DW-1 further deposed that his mother had applied for trademark "SP ORIGINAL" via application no.5006038 in class 7 on 15.06.2021 and tagged the same as "proposed to be used".
18. Ld. Counsel for defendant vehemently contended that plaintiff has failed to show any evidence demonstrating that the defendant has commercially used the mark "SP ORIGINAL" in manufacturing, marketing or trading goods in the market place and as such, there exist no cause of action against the defendant regarding trademark CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 12 of 21 SANJEEV Digitally signed by SANJEEV KUMAR KUMAR MALHOTRA Date: 2024.09.02 MALHOTRA 16:10:59 +05'30' infringement. It is submitted that mere filing of a trademark application does not constitute infringement and that defendant is not engaged in any activity that could be construed as passing off or causing confusion in the market place. In this regard, Ld. Counsel for defendant has relied upon judgments titled as Dhodha House vs. S. K. Maingi, (2006) 9 SCC 41 and K. Narayanan and Anr. vs. S. Murali, AIR 2008 SC 3261.
19. Per contra, Ld. Counsel for plaintiff argued that suit for injunction lies where the plaintiff has apprehension that use of a mark which is identical with or deceptively similar to the trademark of plaintiff by the defendant is likely to have an association with the registered trademark. It is submitted that in reply to the cease and desist legal notice, the defendant has refused to cease and desist from using the mark of the plaintiff. Ld. Counsel for plaintiff vehemently contended that defendant has all intention to use the impugned trademark/label, on account of which, the plaintiff's proprietory rights are likely to be prejudicially affected. It is submitted that plaintiff has claimed the relief of injunction as a preventive action to ensure that no damage is caused to the plaintiff. Ld. Counsel for plaintiff has relied upon authorities reported as KRBL Limited vs. Ramesh Bansal and Anr., 2009 SCC Online Del 2612; M/s Analco (India) Pvt. Ltd. vs. M/s Navodya Exim Pvt. Ltd., 2014 SCC Online Delhi 338; Automatic Electric Ltd. vs. R. K. Dhawan and Anr., 1999 SCC Online Delhi 27; Century Traders vs. Roshan Lal Duggar & Co., F.A.O. (O.S) 46/1976; Shree Rajmoti Industries vs. Rajmoti Foods CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 13 of 21 SANJEEV Digitally signed by SANJEEV KUMAR KUMAR MALHOTRA Date: 2024.09.02 MALHOTRA 16:11:14 +05'30' Products, 2019 SCC Online Del. 6956; Burger King Corporation vs. Techchand Shewakramani and Ors., 2018 SCC Online Delhi 10881 and Mars Incorporated vs. Kumar Krishna Mukherjee and Ors., MANU/DE/1784/2002.
20. In a case titled as Dhodha House vs. S. K. Maingi (supra), it was held by Hon'ble Supreme Court as follows:-
"31.A cause of action will arise only when a registered trade mark is used and not when an application is filed for registration of the trade mark. In a given case, an application for grant of registration certificate may or may not be allowed. The person in whose favour a registration certificate has already been granted (sic) indisputably will have an opportunity to oppose the same by filing an application before the Registrar, who has the requisite jurisdiction to determine the said question. In other words, a suit may lie where an infringement of trade mark or copyright takes place but a cause of action for filing the suit would not arise within the jurisdiction of the court only because an advertisement has been issued in the Trade Marks Journal or any other journal, notifying the factum filing of such an application".
21. In a case titled as K. Narayanan and Anr. vs. S. Murali (supra), it was held by Hon'ble Supreme Court as follows:-
"29. In this view of the matter, we are, therefore, of the opinion that filing of an application for registration of a trade mark does not constitute a part of cause of action in a suit for passing off. The appellants cannot file the suit in the High Court of Madras seeking an injunction to restrain the respondent from passing off his goods using the trade mark A-ONE, based only on the claims made in the trade mark application of respondent filed before the Trade CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 14 of 21 Digitally signed SANJEEV by SANJEEV KUMAR KUMAR MALHOTRA MALHOTRA Date: 2024.09.02 16:11:27 +05'30' Mark Registry, since the necessary requirements of an action for passing off are absent.
22. In an another authority titled as Shree Rajmoti Industries vs. Rajmoti Food Products (supra), it was held by Hon'ble Delhi High Court as follows:-
"16. In the present case, the trademark application has been filed by the Defendant clearly making a representation that the same is in use from 1995. The question as to whether the claim of user is genuine or not is not to be gone into in this case, inasmuch as, the suit is based only on the basis of the trademark application. The date of application is 25th April, 2012. Thus, on the date when the application is made, the Defendant claims a user of 17 years in the mark 'RAJMOTI'. There is no reason why this Court should not accept the representation made by the Defendant on its own, in its trademark application. The trademark application being based on use of a mark under Section 2(c) of the Act, use of a mark can be "upon goods or in any physical or in any other relation whatsoever, to such goods." Filing of a trademark application constitutes "use in relation to goods." Thus, the same would constitute infringement under Section 29 of the Act. Moreover, the Defendant has not just adopted the word 'RAJMOTI' as a trademark, but has also sought use of the same in the form of its trading style 'Rajmoti Foods Products'.
17. The filing of the application is clearly an imminent and a grave threat that if the mark is not already in use, it is likely to be used. The Defendant having chosen not to appear in the present case, and having expressed a clear intention to use the mark, by filing an application, the Court has to conclude that the same is adoption and use of CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 15 of 21 SANJEEV Digitally signed by SANJEEV KUMAR KUMAR MALHOTRA Date: 2024.09.02 MALHOTRA 16:11:40 +05'30' the mark 'RAJMOTI'. The Plaintiff's trademark 'RAJMOTI' has been in use since at least 5 decades. The Plaintiff is the prior user and the prior adopter of the mark. Use of a mark either upon goods or as a trading style would constitute violation of the Plaintiff's rights under Section 29(1), 29(2) and 29 (5) of the Act.
18. Accordingly, the Plaintiff is entitled to a decree of permanent injunction. The suit is decreed and a decree of permanent injunction is granted in favour of the Plaintiff against the Defendant from using the mark 'RAJMOTI' either as trademark or as a trade name in relation to food products or any other goods which are cognate and allied to edible oil. Since there is no actual damage or sale of products which has been shown on record, the Plaintiff is not entitled to the remaining reliefs. Decree sheet be drawn up. All pending I.A.s are disposed of."
23. Adverting back to the facts of present case, the defendant had applied for trademark "SP ORIGINAL" via application no.5006038 in class 7 on 15.06.2021, which is opposed by the plaintiff before concerned Trade Mark Authority. In written statement, the defendant has stated that she never used the trademark "SP ORIGINAL" in manufacturing, marketing and trading of any similar goods, however, in her counter statement filed before the Trade Mark Registry to the opposition of plaintiff for registration of trademark "SP ORIGINAL" i.e. Ex.DW1/4 (colly), the defendant in para no.3 has stated that she alongwith the authorization from her husband, has originally coined, conceived and adopted the trademark "SP ORIGINAL" in respect of said goods which are included in class 7 under CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 16 of 21 Digitally signed SANJEEV by SANJEEV KUMAR KUMAR MALHOTRA MALHOTRA Date: 2024.09.02 16:11:54 +05'30' goods and description are "SINTERED BUSH" and that the adoption of the said mark is honest and bonafide and has been in continuous use in respect of said goods in the course of trade and business without any interruption from any corner. Thus, apart from filing application for grant of registration certificate of trademark "SP ORIGINAL", the defendant is clearly making a representation in Ex.DW1/4 (colly) that she has adopted the trademark "SP ORIGINAL"
and has been in continuous use thereof without any interruption from any corner. This clearly brings out the fact that defendant is claiming continuous use of the mark "SP ORIGINAL" and has intent to use the mark in course of trade and as such, plaintiff has a cause of action to file the injunction suit to ensure that no damages would be caused to the plaintiff. The authorities, as relied upon by Ld. Counsel for defendant are not helpful in the facts and circumstances of the present case.
24. In issuing injunction, the test to be applied are (i) whether the plaintiff has a prima facie case, (ii) whether the balance of convenience is in favour of plaintiff and (iii) whether the plaintiff would suffer any irreparable injury, if his prayer for injunction is disallowed.
25. Plaintiff is registered owner of trademark "SPSINTERED BUSHES" in class 7, "KMSP" in class 9, "KMSP with device" under class 6 and applied for registration of trademark "SP" on 15.07.2016, as appearing from copies of legal proceedings certificates of plaintiff i.e. Ex.PW1/4 (colly). Plaintiff is user of trademark "KMSP"
CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 17 of 21 Digitally signed by SANJEEV SANJEEV KUMAR
KUMAR MALHOTRA
Date: 2024.09.02
MALHOTRA 16:12:07 +05'30'
since 01.04.95 and the registration date of his trademark "SPSINTERED BUSHES" in class 7 is 05.06.2020.
26. Ex.PW1/2 (colly) shows that plaintiff is having copyright certificate regarding the artistic works "SP" and "KMSP", which are appearing as follows:-
27. Ex.DW1/3 (colly), the defendant's trademark registry shows that she is registered trademark owner of "S R V"
and her application for registration of trademark "SP PLUS" and "SP ORIGINAL" are under objection. The defendant applied for trademark "SP PLUS" on 26.08.2021 while claiming the user, details from 01.03.2002. DW-1 in his cross examination has admitted that they have not filed any copy of advertisement or any other document of government authority to show that his father was using trademark "SP PLUS" since 2002. He further confirmed that prior to 2021, they were using trademark "S R V" with regard to sintered bushes.
28. Ld. Counsel for defendant argued that defendant has applied for trademark "SP ORIGINAL" and not for "SP" and that the plaintiff's application for registration of trademark "SP" is in class 6 and not in class 7 and there is no similarity of the word between two marks. It is CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 18 of 21 SANJEEV Digitally signed by SANJEEV KUMAR KUMAR MALHOTRA Date: 2024.09.02 MALHOTRA 16:12:21 +05'30' submitted that plaintiff has registered trademark "KMSP" under class 9 and not under class 7. Ld. Counsel for plaintiff argued that prior to 2010, sintered copper iron bushes were falling under class 9 and therefore, the trademark of "KMSP" of the plaintiff was registered under class 9, which fact is not disputed. Plaintiff is having registered trademark of "KMSP" and "SPSINTERED BUSHES" and is prior user of these two trademarks with regard to sintered bushes. The defendant is admittedly registered trademark owner of "S R V" and her application for registration of trademark "SP PLUS" and "SP ORIGINAL" are under objections. Plaintiff is also having copyright of the artistic work of KMSP and SP.
29. The trademark SP ORIGINAL as claimed by defendant creates a confusion and gives an impression that the sintered bushes having trademark of "SP ORIGINAL" are genuine one while the sintered bushes having trademark "SPSINTERED BUSHES" are infringed products. Therefore, plaintiff has a prima facie case in his favour. Balance of convenience also lies in favour of the plaintiff as plaintiff is prior user and registered trademark owner of trademark "KMSP" and "SPSINTERED BUSHES" with copyright of artistic work regarding the trademarks "KMSP" and "SPSINTERED BUSHES" and that plaintiff shall suffer irreparable injury if the defendant is allowed to use the mark "SP ORIGINAL". Accordingly, this issue is decided in favour of plaintiff and against the defendant.
CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 19 of 21 SANJEEV Digitally signed by
SANJEEV KUMAR
KUMAR MALHOTRA
Date: 2024.09.02
MALHOTRA 16:12:36 +05'30'
Issue no.2 and 3:-
2. Whether the plaintiff is entitled for delivery of all the offending goods bearing the impugned trademark/label/artistic work including publicity materials, stationery, account books and other incriminating material which are under the possession and control of the defendant for destruction or erasure purposes? OPP
3. Whether the plaintiff is entitled for decree of damages as prayed for ? OPP
30. These two issues are taken up together. Onus to prove these issues was upon the plaintiff. Although plaintiff has pleaded that defendant is involved in manufacturing, marketing and trading of similar goods bearing impugned trademark "SP ORIGINAL" but no evidence is produced before the court in this regard. PW-1 in his cross examination has admitted that they had not placed on record any bill regarding purchase of bushes having trademark "SP ORIGINAL". As plaintiff has failed to discharge the onus to prove these issues, same are decided against the plaintiff and in favour of defendant.
Issue no.4:-
4. Whether the plaintiff has not approached before the court with clean hands and suppressed the material facts? OPD
31. Onus to prove this issue was upon the defendant.
Defendant has failed to prove which material facts have been suppressed by the plaintiff from the court and how he CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 20 of 21 SANJEEV Digitally signed by SANJEEV KUMAR KUMAR MALHOTRA Date: 2024.09.02 MALHOTRA 16:12:51 +05'30' has not come with clean hands. In absence of any evidence in this regard, this issue is decided against the defendant and in favour of plaintiff.
Relief
32. In view of my findings on issue no.1, the suit of plaintiff is partly decreed qua relief of injunction. In result, the defendant, her associates, agents and sister concerns are hereby restrained from using the trademark "SP ORIGINAL" with regard to similar goods of plaintiff's trademark "SPSINTERED BUSHES and KMSP" and from using artistic work as may be identical or deceptively similar to the plaintiff's copyright of artistic work "SP" and "KMSP" i.e. .
33. Decree sheet be prepared accordingly.
34. File be consigned to Record Room.
SANJEEV Digitally signed by
SANJEEV KUMAR
KUMAR MALHOTRA
Date: 2024.09.02
Announced in the open court MALHOTRA 16:13:08 +05'30'
on 02nd September, 2024 (Sanjeev Kumar Malhotra)
District Judge (Commercial Court)
North-East District
Karkardooma Courts, Delhi
CS (Comm) 48/2021 Mr. Karan Bhutani vs. Mrs. Rajeshwari Page 21 of 21