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Volans Uptown Llc vs Mahendra Jeshabhai Bambhaniya on 28 April, 2023

Author: Sanjeev Narula

Bench: Sanjeev Narula

                          $~30
                          *      IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +      CS(COMM) 257/2023
                                 VOLANS UPTOWN LLC                                       ..... Plaintiff
                                             Through:              Mr. Aditya Gupta and Mr. Siddharth
                                                                   Varshney, Advocates.

                                                     versus

                                 MAHENDRA JESHABHAI BAMBHANIYA                               ..... Defendant
                                             Through: None.

                                 CORAM:
                                 HON'BLE MR. JUSTICE SANJEEV NARULA
                                                     ORDER

% 28.04.2023 I.A. 8235/2023 (under Section 151 of the Code of Civil Procedure, 1908 ["CPC"] seeking exemption from filing translated/ clearer/ legible copies of documents)

1. Exemption is granted, subject to all just exceptions.

2. Plaintiff shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.

3. Accordingly, the application stands disposed of.

I.A. 8236/2023 (under Order XI Rule 1(4) of CPC (as amended by the Commercial Courts Act, 2015) r/w Section 151 of CPC seeking leave to file additional documents)

4. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.

5. Plaintiff, if it wishes to file additional documents at a later stage, shall Signature Not Verified Digitally Signed CS(COMM) 257/2023 Page 1 of 5 By:SAPNA SETHI Signing Date:29.04.2023 15:01:12 do so strictly as per the provisions of the said Act.

6. Accordingly, the application stands disposed of.

I.A. 8237/2023 (under Section 151 of CPC seeking exemption from instituting pre-litigation mediation under Section 12A of the Commercial Courts Act, 2015)

7. Having regard to the facts of the present case and in light of the judgement of Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Private Ltd.,1 exemption from attempting pre- institution mediation is allowed.

8. Accordingly, the application stands disposed of.

CS(COMM) 257/2023

9. Let the plaint be registered as a suit.

10. Issue summons. Upon filing of process fee, issue summons to the Defendant by all permissible modes. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the date of receipt of summons. Along with the written statement, the Defendant shall also file an affidavit of admission/ denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.

11. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/ denial of documents of the Defendant, be filed by the Plaintiff, without which the replication shall not 1 DHC Neutral Citation: 2022/DHC/004454.

be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.

12. List before the Joint Registrar for marking of exhibits on 31st July, 2023. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

13. List before Court for framing of issues thereafter.

I.A. 8234/2023 (u/ Order XXXIX Rule 1 & 2 r/w Section 151 of CPC seeking injunctive reliefs)

14. Plaintiff company - 'Volans Uptown LLC', incorporated in the State of Delaware, USA, is engaged in the business of manufacturing and selling cosmetic, skin and hair care products under the trademark 'BOTANIC HEARTH', which has been assigned in its favour by 'Uptown Cosmeceuticals Inc.' They are the exclusive user and owner of the word mark 'BOTANIC HEARTH' since the year-2017, and this ownership extends to any other forms or derivatives of the mark including, inter alia, 'BOTANIC HEARTH COSMECEUTICALS', ' ' [hereinafter interchangeably "Plaintiff's marks" or "subject mark"]. Plaintiff introduced its products in India in the year-2020 on various e-commerce platforms. Details of the worldwide revenue generated by Plaintiff, by sale of its goods bearing the subject marks and expenses incurred on marketing/ promotion internationally are given in paragraphs No. 10 and 14 of the plaint, respectively.

15. The instant suit is a quia timet action against the Defendant - 'Mr. Signature Not Verified Digitally Signed CS(COMM) 257/2023 Page 3 of 5 By:SAPNA SETHI Signing Date:29.04.2023 15:01:12 Mahendra Jeshabhai Bambhaniya', who has applied for registration of the mark 'Botanic Hearth' under Trade Mark Application No. 5490886 on "proposed to be used" basis [hereinafter "impugned TM application"]. The said mark has been Accepted and Advertised, as reflected on the online portal of the Trade Marks Registry.

16. Several documents have been placed on record to demonstrate Plaintiff's prior use of the subject marks. It is Plaintiff's case that Defendant has applied for registration of more than 160 marks belonging to popular brands owned by third parties, some of which includes - ' ', 'UrbanBoAt', 'MATTEL GAMES', 'SIRONA', 'SUGAR COSMETIC', 'ZEBRONICS', 'JOVAN', 'TINKLE', etc. The modus operandi of the Defendant appears to be to ride upon the goodwill and cachet enjoyed by internationally well-known trademarks.

17. Mr. Aditya Gupta, counsel for Plaintiff, has also highlighted bad faith in the adoption of the impugned trademark demonstrated by the demand made by Defendant's representative for approx. INR 18,00,000/- from the Plaintiff to relinquish his rights under the impugned TM application. In addition, Mr. Gupta has emphasised that the Defendant is currently not utilizing the contested mark.

18. The Court has reviewed documents on record including multiple trademark applications filed by the Defendant for different renowned brands, which indicates that the Defendant has a motive to engage in infringing activities with the aim of weakening the rights of trademark owners. Thus, on the basis of the averments made in the suit and submissions advanced by Mr. Gupta, Plaintiff's apprehension of Signature Not Verified Digitally Signed CS(COMM) 257/2023 Page 4 of 5 By:SAPNA SETHI Signing Date:29.04.2023 15:01:12 infringement is tenable. Defendant's actions are intentional and he is highly likely to infringe upon the Plaintiff's rights, unless prevented from doing so. Thus, the Court is prima facie satisfied that it is a fit case for grant of injunctive relief. Plaintiff is likely to suffer irreparable loss unless Defendant is not restrained from using Plaintiff's marks. Balance of convenience also lies in favour of the Plaintiff, being prior user of the subject marks. Accordingly, till the next date of hearing, Defendant is restrained from directly or indirectly using, manufacturing, advertising, selling/ offering for sale and/ or exporting of any products or dealing in any manner with the mark - 'Botanic Hearth', which is the impugned trademark applied under the Trade Mark Application No. 5490886.

19. Let compliance in terms of the Order XXXIX Rule 3 of CPC be done within three days from today.

20. List before Court on 14th September, 2023.

SANJEEV NARULA, J APRIL 28, 2023 ns Signature Not Verified Digitally Signed CS(COMM) 257/2023 Page 5 of 5 By:SAPNA SETHI Signing Date:29.04.2023 15:01:12