Delhi High Court - Orders
Himalaya Global Holdings Ltd. & Anr vs Triple Play Technologies Private ... on 31 October, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~39
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 760/2023 & I.A. 20919/2023
HIMALAYA GLOBAL HOLDINGS LTD. & ANR...... Plaintiffs
Through: Mr. Adarsh Ramanujan, Ms .Suhrita
Majumdar, Mr. Debjyoti Sarkar, Mr.
Vishal Nagpal & Mr. Skanda
Shekhar, Advs. (M. 9903026134)
Versus
TRIPLE PLAY TECHNOLOGIES
PRIVATE LIMITED & ORS. ..... Defendants
Through: Mr. M.K Miglani and Mr. Aditya
Mathur, Advs. (M. 8447919954)
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 31.10.2023
1. This hearing has been done through hybrid mode.
2. This is a case where Plaintiff No. 1-Himalaya Global Holdings Ltd. and Plaintiff No. 2-M/s. Himalaya Wellness Company, is aggrieved by the use of an identical font, colour combination, get up for the mark 'MEDIMADE' in respect of ayurvedic preparations and other personal and beauty care products by the Defendants. The Plaintiffs have filed the present suit against Defendant No. 1-Triple Play Technologies Pvt. Ltd., Defendant No. 2- Manchanda Herbal Products Private Limited and Defendant No. 3- Prashant Manchanda (hereinafter, 'Defendants').
3. The Plaintiffs are engaged in the business of manufacturing pharmaceuticals, herbal medicines, personal care and wellness products under the mark 'HIMALAYA' since 1930. These products are claimed to be sold in various countries. The Plaintiffs have registered the said mark in CS(COMM) 760/2023 Page 1 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 02/11/2023 at 22:35:56 classes 3, 5, 30 and 44 since 2001.
4. It is averred that he Plaintiffs have been granted copyright registration for artistic works in 'HIMALAYA' logos under copyright registration bearing nos.- A-63897/2003, A-63899/2002, A-124891/2018. The turnover of the Plaintiffs for the financial year 2021-2022 is stated to be more than Rs.3700 crores.
5. The Defendant No.1 is engaged in the business of selling personal care products under the mark 'MEDIMADE', manufactured by Defendant No.2 on various e-commerce platforms like Amazon, Flipkart, Tata1mg, etc. Defendant No.3 is stated to be the director of Defendant Nos.1& 2 company, who has obtained trade mark registration for the mark 'MEDIMADE' bearing no. 4487391 in class 5. The Plaintiffs' case is that the Defendants have deceptively imitated Plaintiffs' 'HIMALAYA' logos. A comparison of the two marks is set out below:
Plaintiff's 'HIMALAYA' Defendant's Infringing Logo 'MEDIMADE' Logo
6. It is the Plaintiffs' case that despite repeated legal notices dated 11th July 2023 and 2nd August 2023 issued by the Plaintiffs along with reminders, there was no response from the Defendants.
7. The present suit was listed on 19th October, 2023. On the last date of hearing, after hearing the ld. Counsel for the Plaintiffs, the following directions were passed:
CS(COMM) 760/2023 Page 2 of 7This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 02/11/2023 at 22:35:56 "13. A perusal of the trademark registrations in favour of the Plaintiffs, prima facie, leaves no doubt in the mind of Court that the unusual green colour, the orange line and the leaf has been copied by the Defendants. Considering the near identity in the colour combination used by the Defendants, let notice be issued to the Defendants on the email address [email protected], so as to give opportunity to the Defendants to appear and make their submissions.
In addition the Defendants have online listings of their products for which the Court wishes to afford time to the Defendants to take them down.
14. In view thereof, let an intimation of the filing of this suit be given by the Plaintiffs to the Defendants at the email address stated above. The Plaintiff shall also serve the dasti notices upon the Defendants. In addition, let notice also be served to the trade mark agent of the Defendants at the following address:
'WORLDWIDE REGISTRATION BUREAU 60/30, NEW ROHTAK ROAD, KAROL BAGH, NEW DELHI-110 005'.
15. The Defendants, on the next date, shall disclose the complete inventory of the products which are lying with them, along with the inventory which may be lying with online e-commerce platforms."
8. Mr. Miglani, ld. Counsel has entered appearance today on behalf of the Defendants 1-3, and submits that Defendant No.3 is running Defendant Nos. 1 and 2. He has also handed over an affidavit of Defendant No.3, wherein the stock has been disclosed as under:
"5. I say that in compliance of the order dated 19.10.2023 passed by this Hon'ble in the said matter, I am providing the following information as per the records of my firms -
(i) That the defendant no. 1 has in stock 25,000 units of MEDIMADE finished products as on 30/10/2023.CS(COMM) 760/2023 Page 3 of 7
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 02/11/2023 at 22:35:56
(ii) The Defendant no. 2 further has in stock 28,000 units of packaging labels, and 75,000 units of mono cartons and 65,000 units of packaging tubes bearing trademark label MEDIMADE as on 30/10/2023.
(iii) That additionally, the Defendants have supplied 20 units of the MEDIMADE finished products to various e-commerce platforms including Amazon and Flipkart.
6. I say that all the above inventory information has been collected by my office based on the inventory records and is true and correct to the best of my knowledge."
9. In addition, Defendant No.3 on behalf of all the Defendants, has made a statement to the following effect:
"7. I say that without any prejudice to my right to put forth my rights. Contentions and submissions in the written statements, the Defendants in the interest of Justice are ready to alter/modify their depiction of the trademark MEDIMADE for all the future use.
8. That I have altered the existing the existing logo of the trademark MEDIMADE. The altered/ modifies logo is depicted herein for perusal by this Hon'ble Court.
9. I Hereby request from this Hon'ble some time to exhaust the current inventory including the finished products and packaging of the product available with the defendants.
10. That without prejudice, I say that the defendants are ready to comply with any other direction or suggestion which may be issued by this Hon'ble Court for the speedy settlement/ disposal of this present suit."CS(COMM) 760/2023 Page 4 of 7
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 02/11/2023 at 22:35:56
10. A perusal of the above affidavit of the Defendant no.3 dated 30th October 2023 would show that a complete stock statement under the mark/label 'MEDIMADE' has been disclosed by the Defendants. In addition, Mr. Miglani submits that the Defendants are also willing to change the logo, and therefore, they may be permitted to exhaust the existing stock by 31st December, 2023.
11. After perusing the said affidavit, a copy of which was served upon the ld. Counsel for the Plaintiffs, the matter was passed over. On the second call, the ld. Counsel for the Plaintiffs agreed to the new proposed logo/packaging on behalf of the Defendants and also consented to give the Defendants time till 31st December, 2023 to exhaust the existing stock.
12. However, ld. Counsel for the Plaintiffs submits that since the legal notices were issued and the Defendants did not respond, forcing the Plaintiffs to approach the Court, some costs may be imposed on the Defendants.
13. On behalf of the Defendants, it is submitted by Mr. Miglani that the Defendant No.3 suffered personal tragedy in his family, which prevented him from responding to the legal notices.
14. Heard. After having perused the plaint, the competing logos, as also the affidavit filed by the Defendant No.3, this Court is of the opinion that the suit itself can be finally decreed in the following terms to which, both the parties do not have any objection:
i) The Defendants, and all others acting for or on their behalf shall stand permanently restrained from, in any manner using the impugned 'MEDIMADE' logo as extracted in paragraph 5 above or any other logo or colour scheme, which is identical or similar to that of the CS(COMM) 760/2023 Page 5 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 02/11/2023 at 22:35:56 Plaintiffs' 'HIMALAYA' logo/colour scheme/device mark.
ii). All the Defendants are however permitted to use the new logo/device 'MEDIMADE WELLNESS' as extracted below:
iii) In respect of Defendants' products, it is clarified that Defendants are free to adopt any other colour scheme or logo form so long as the same is not imitative or identical or similar to the Plaintiffs' logo/device mark.
15. The complete stock statement extracted in paragraph 5 of Defendant No. 3's affidavit has been perused by the Court. The Defendants are accordingly given time till 31st December, 2023 to dispose of the entire existing stock, subject to paying a sum of Rs.1 lakh as nominal costs to the Plaintiffs within a period of two weeks.
16. Subject to the said payment being made, the Defendants' shall dispose of the entire stock. There shall be no further fresh manufacturing of products with the impugned colour scheme or impugned logo/device mark 'MEDIMADE'.
17. The Defendant No. 3 is the registered proprietor of the registered trademark bearing no. 4487391 in Class 5 dated 14th April, 2020 in respect of the impugned 'MEDIMADE' logo. The Defendant No.3 has no objection CS(COMM) 760/2023 Page 6 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 02/11/2023 at 22:35:56 if the said registration is cancelled/rectified under Section 57 of the Trade Marks Act, 1999 from the Register of Trade Marks. The said mark is accordingly rectified/cancelled.
18. It is directed that the office of the Controller General of Patents, Designs & Trademarks of India shall pass appropriate orders reflecting the cancellation/rectification of the mark 'MEDIMADE' bearing no. 4487391 in Class 5 dated 14th April, 2020. Let the same shall be reflected on the website of the Register of Trade Marks within a period of 8 weeks from today.
19. The Registry is directed to supply a copy of the present order to the office of the Controller General of Patents, Designs & Trademarks of India on the e- mail- [email protected] for compliance of this order.
20. Let a communication be issued from the ld. Counsel for the Defendants to the Plaintiffs' counsel by 15th January, 2024 confirming the disposal of all the existing stock.
21. The affidavit of Defendant No.3 which has been handed over to the Court today, is taken on record.
22. Since the suit has been itself been settled on the second date of the hearing before the Court, full court fee is directed to be refunded to the Plaintiff through counsel in terms of the judgment in Nutan Batra v. Buniyaad Builders [(2018) 255 DLT 696].
23. The present suit along with all pending applications is disposed of. Let the decree sheet be drawn up in the above terms.
PRATHIBA M. SINGH, J.
OCTOBER 31, 2023 Rahul/dn CS(COMM) 760/2023 Page 7 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 02/11/2023 at 22:35:56