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M/S Deen Dayal Anand Kumar Saraf vs Paras Agarwal T/A M/S Purushottam ... on 28 March, 2023

Author: Sanjeev Narula

Bench: Sanjeev Narula

                          $~33
                          *      IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +      CS(COMM) 161/2023
                                 M/S DEEN DAYAL ANAND KUMAR SARAF                              ..... Plaintiff
                                                     Through:      Ms. Kangan Roda, Mr. Nitesh Jain,
                                                                   Mr. Sharad Besoya and Mr. Vatsal
                                                                   Chandra, Advocates.

                                                     versus

                                 PARAS AGARWAL T/A M/S PURUSHOTTAM AGARWAL AND
                                 CO & ANR.                           ..... Defendants
                                             Through: None.

                                 CORAM:
                                 HON'BLE MR. JUSTICE SANJEEV NARULA
                                                     ORDER

% 28.03.2023 I.A. No. 5514/2023 (seeking extension to file the requisite court fees)

1. Time period for depositing the deficient court fee is extended by a period of one week from today.

2. The application stands disposed of.

I.A. No. 5516/2023 (seeking leave to file additional documents)

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

4. Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the said Act.

5. Disposed of.

I.A. No. 5517/2023 (seeking exemption from pre-litigation mediation under Section 12A of the Commercial Courts Act, 2015)

6. 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.

7. Accordingly, the application stands disposed of.

I.A. No. 5518/2023 (seeking exemption from filing original/ certified/ clear/ typed/ translated copies of the documents with proper margins filed by the Plaintiff)

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

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

10. Disposed of.

CS(COMM) 161/2023

11. Let the plaint be registered as a suit.

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

DHC Neutral Citation: 2022/DHC/004454.

13. Liberty is given to the Plaintiff to file replication(s) within 15 days of the receipt of the written statement(s). Along with the replication(s), if any, filed by the Plaintiff, affidavit(s) of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication(s) shall not 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.

14. List before the Joint Registrar for marking of exhibits on 22nd May, 2023. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

15. List before Court for framing of issues thereafter.

I.A. No. 5513/2023 (u/Order XXXIX Rules 1 & 2, r/w Section 151 of the Code of Civil Procedure, 1908, seeking ex-parte, ad interim injunction against the Defendants)

16. Plaintiff has filed the present suit seeking restraining orders against Defendants from infringement and passing off of its registered trademark " " and " " [collectively, "MD marks"] and copyright vested therein.

17. The case set out in the plaint is as follows:

17.1. Plaintiff has been engaged in the business of manufacture and sale of jewellery products, particularly silver ornaments, under the registered MD marks since 1977. Details of trademark and copyright registrations for aforesaid MD marks in Plaintiff's favour have been mentioned in paragraphs No. 15 and 12, respectively, of the plaint. 17.2. Plaintiff generated about Rs. 62,87,41,403.26 in the financial year 2019-20 from the sale of its products. It has also expended considerably Signature Not Verified Digitally Signed CS(COMM) 161/2023 Page 3 of 7 By:SAPNA SETHI Signing Date:28.03.2023 19:14:24 towards advertisement and promotion of products under the MD marks, through various media.

17.3. With the passage of time and through extensive sale and promotional activities, the products bearing MD marks have come to be exclusively associated with the Plaintiff. It enjoys formidable goodwill and reputation in the market in respect of anklets (payal), chains, silver coins and articles etc. 17.4. In November, 2022, at the All-India Jewellery Expo, Plaintiff discovered that Defendants were openly displaying and advertising their jewellery products under the mark and trade dress "MD PAYAL"/ " "/ "MD STAR"/ " ", "MD Star Fancy Payal & Chains"/ " " [hereinafter, "impugned marks"]. Further investigations revealed Defendants' social media accounts promoting the impugned products, which became operative as early as in 2015. In December, 2022, Defendant No. 1 also applied for trademark registation of "MD PAYAL"/ " " and "MD Star Fancy Payal & Chains"/ " " marks in class 14, on a proposed-to-be-used basis.

18. Ms. Kangan Roda, counsel for Plaintiff, argues that "MD" is the most distinctive element of Plaintiff's registered marks and use thereof is Signature Not Verified Digitally Signed CS(COMM) 161/2023 Page 4 of 7 By:SAPNA SETHI Signing Date:28.03.2023 19:14:24 completely arbitrary for the goods in question and therefore, Plaintiff's registered marks deserve highest protection. She submits that although Defendants are using "MD" word with suffixes such as "PAYAL", yet the use of the mark as a whole is such that the emphasis is on the letters "MD".

Plaintiff's business activities are ever expanding, as is evident from their revenue figures, and must be protected against unlawful adoption by the Defendants, who are subsequent entrants in the market.

19. A pictorial comparison of manner of use of Plaintiff's MD marks and impugned marks is as follows:

PLAINTIFF'S PRODUCT DEFENDANTS' PRODUCT

20. On the first date of hearing, since the Court was unconvinced that Signature Not Verified Digitally Signed CS(COMM) 161/2023 Page 5 of 7 By:SAPNA SETHI Signing Date:28.03.2023 19:14:24 advance service of paper-book should be dispensed with, Plaintiff was directed to serve the Defendants. Plaintiff has complied with said direction and filed an affidavit of service; however, there is no appearance on their behalf. The afore-noted facts and contentions demonstrate a prima facie case in favour of the Plaintiff. The adoption of impugned marks, which subsume Plaintiff's MD marks, prima facie constitutes infringement, passing off and unfair competition. There is a strong likelihood of confusion amongst the consumers, who could be led to believe that Defendants are affiliated or connected with the Plaintiff, when in fact, no such affiliation exists. The balance of convenience thus lies in favour of the Plaintiff and against the Defendants; irreparable loss would be caused to Plaintiff in case an ex-parte ad-interim injunction is not granted.

21. Accordingly, till the next date of hearing, Defendants or anybody acting on their behalf, are restrained from manufacturing, distributing, exporting, selling, offering for sale, advertising and promoting products under or using the impugned marks - "MD PAYAL"/ " "/ "MD Star Fancy Payal & Chains"/ " "/ "MD STAR/ or any other mark/ label/ trade dress which is virtually, structurally and conceptually identical or deceptively and confusingly similar to Plaintiff's registered trademarks " " and " " as a trademark or label or a part thereof, or in any other manner whatsoever, in relation to any goods, which would amount to infringement or passing off of the Plaintiff's Signature Not Verified Digitally Signed CS(COMM) 161/2023 Page 6 of 7 By:SAPNA SETHI Signing Date:28.03.2023 19:14:24 registered trademarks and copyright.

22. Compliance of Order XXXIX Rule 3 of CPC be done with three days from today.

23. List before the Court on 24th August, 2023.

SANJEEV NARULA, J MARCH 28, 2023 as Signature Not Verified Digitally Signed CS(COMM) 161/2023 Page 7 of 7 By:SAPNA SETHI Signing Date:28.03.2023 19:14:24