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Minda Spectrum Advisory Limited & Ors vs Ab Petrochem on 12 April, 2022

Author: Jyoti Singh

Bench: Jyoti Singh

                          $~27
                          *    IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +       CS(COMM) 231/2022
                                  MINDA SPECTRUM
                                  ADVISORY LIMITED & ORS.                   ..... Plaintiffs
                                               Through: Mr. Chander M. Lall, Senior
                                               Advocate with Ms. Bitika Sharma, Mr. Lakshay
                                               Kaushik, Mr. Luv Virmani and Ms. Ananya Chug,
                                               Advocates.

                                                     versus

                                  AB PETROCHEM                                        ..... Defendant
                                                     Through:     None.

                                  CORAM:
                                  HON'BLE MS. JUSTICE JYOTI SINGH
                                                     ORDER

                          %                          12.04.2022
                          I.A. 5688/2022 (Exemption)

1. Subject to the Plaintiffs filing originals, clearer copies and documents with proper margins, which they may seek to place reliance on, within four weeks from today, exemption is granted.

2. Application is allowed and disposed of.

I.A. 5689/2022 (Additional Documents)

3. Present application has been preferred on behalf of the Plaintiffs seeking leave to file additional documents under Order 11 Rule 1(4) CPC.

4. Plaintiffs, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015.

5. Application is allowed and disposed of.

I.A. 5690/2022 (Exemption from advance service)

6. Since there is an urgency in the matter and the matter is being heard today, Plaintiffs are exempted from serving the Defendant with advance notice.

7. For the reasons stated in the application, the same is allowed and disposed of.

I.A. 5691/2022 (Exemption from pre-institution mediation)

8. For the reasons stated in the application, the requirement of pre-institution mediation is dispensed with.

9. Accordingly, the application is allowed and disposed of. I.A. 5692/2022 (Seeking exemption from filing documents in separate volumes)

10. Allowed, subject to all just exceptions.

11. Application stands disposed of.

CS(COMM) 231/2022

12. Let plaint be registered as a suit.

13. Upon filing of process fee, issue summons to the Defendant, through all permissible modes, returnable on 30.05.2022. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the receipt of summons. Along with the written statement, Defendant shall also file an affidavit of admission/denial of the documents of the Plaintiffs.

14. Replication be filed by the Plaintiffs within 15 days of the receipt of the written statement. Along with the replication, an affidavit of admission/denial of documents filed by the Defendant, shall be filed by the Plaintiffs.

15. If any of the parties wish to seek inspection of any documents, the Signature Not Verified Digitally Signed By:KAMAL KUMAR CS(COMM) 231/2022 Page 2 of 9 Signing Date:11.05.2022 12:20:47 same shall be sought and given within the timelines.

16. List before the Joint Registrar on 30.05.2022.

17. List before the Court on 26.07.2022.

I.A. 5686/2022 (Under Order 39 Rules 1 and 2, CPC, by Plaintiffs)

18. Issue notice to the Defendant through all prescribed modes, returnable on 26.07.2022.

19. Present application has been preferred by the Plaintiffs under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure 1908 for grant of ex-parte ad-interim injunction.

20. It is averred in the plaint that Plaintiffs are a part of the well-known and reputed "Minda Group of Companies" and have widespread and enviable presence in the automobile and spare parts sector. Plaintiffs are leading manufacturers of automotive components including but not limited to industrial oils, lubricants, engine oils, etc., and transact business under the house mark/trade name MINDA and its variants and derivatives such as /SPARK MINDA and / / UNO MINDA.

21. It is pleaded that Plaintiffs' group was founded in the year 1958 under the flagship name MINDA as a proprietorship and subsequently, various news companies were incorporated. The marks /SPARK MINDA and /UNO MINDA were adopted in the year 2011 by two brothers of the family, respectively. The mark/name MINDA forms an inseparable and essential part of the Plaintiffs' trade name as well as all registered/un-registered trademarks. The trademark MINDA and its variants, Signature Not Verified Digitally Signed By:KAMAL KUMAR CS(COMM) 231/2022 Page 3 of 9 Signing Date:11.05.2022 12:20:47 coined and adopted over a period of time have been successfully registered, the details whereof are furnished in para 3 of the plaint. Plaintiffs No. 1 and 2 have also obtained trademark registrations in various other countries. The trademarks so mentioned are valid and subsisting. Plaintiff No.1 has filed an application dated 21.06.2021 for inclusion of the trademark MINDA and Plaintiff No.2 has filed an application dated 24.12.2021 for inclusion of trademark UNO MINDA in the list of well-known trademarks, which applications are pending before the Trade Marks Registry. Application for inclusion of the mark SPARK MINDA in the list of well-known trademarks filed by Plaintiff No.3 is also pending.

22. It is further averred that Plaintiffs have been highly vigilant in protecting their statutory and common law rights over the trademark MINDA and its formatives and have initiated actions against several third parties for violation of their rights. The trademarks MINDA, SPARK MINDA and UNO MINDA have been protected by this Court in a number of proceedings as brought forth in the plaint.

23. It is pleaded that Plaintiffs have also spent a considerable amount over the past three decades by way of promotional expenditure and advertisements for popularizing their entire range of products under the mark MINDA and its formative marks, through media publicity. The sales and promotional expenditure figures of Plaintiffs' group for MINDA range of products and its formative marks for the year 2020-2021 is Rs.12.27 crores as per the Chartered Accountant's certificate. As of 31.03.2021, the annual turnover of the Plaintiffs' Group of Companies is Rs. 8741 crores.

24. It is averred that the Defendant has recently commenced operations under the infringing marks MINDA and AB MINDA. Defendant is in the Signature Not Verified Digitally Signed By:KAMAL KUMAR CS(COMM) 231/2022 Page 4 of 9 Signing Date:11.05.2022 12:20:47 business of production and sale of oil and grease, being sold directly as well as through its dealers. Plaintiffs recently, through an investigation, found that the Defendant is selling oil and grease under the impugned mark AB MINDA. Photographs of the Defendant's products being sold under the mark AB MINDA as brought out in the plaint are scanned and placed below:

25. It is stated in the plaint that Defendant's application no. 2976544 for registration of the mark MINDA in class 4 is pending and an opposition has been filed. During the course of arguments, learned Senior Counsel for the Plaintiffs has drawn the attention of the Court to a document placed at page 537 in the list of documents to contend that while in the application, Defendant has claimed 02.03.2014 as the user date, however, the affidavit of usage of trademark MINDA filed by the Defendant before the Trade Marks Registry, shows usage commencing from the year 2016-2017 as also to the fact that the figures of sales for the said year as well as the subsequent year shows that the sales were insignificant.

26. It is contended by learned Senior Counsel for the Plaintiffs that Plaintiffs are the registered proprietors, prior users and exclusive owners of the brand name MINDA and its formative trademarks. Use of any trademark which bears identity or similarity to the Plaintiffs' mark and name MINDA Signature Not Verified Digitally Signed By:KAMAL KUMAR CS(COMM) 231/2022 Page 5 of 9 Signing Date:11.05.2022 12:20:47 is in violation of their coveted statutory rights. It is submitted that the impugned marks/labels of the Defendant are visually and phonetically identical or at least bear a high degree of similarity with the Plaintiffs' registered and prior used marks/labels MINDA, , /SPARK MINDA and /UNO MINDA. It is argued that the marks have been slavishly copied, with the clear intent to represent to the public that the Defendant is associated with or is an extension of the MINDA group. The adoption and use of the impugned marks is clearly to ride on the enormous and formidable reputation and goodwill of the Plaintiffs for monetary gains. The products for which the impugned marks have been copied, i.e. "oils and grease" are similar to the products of the Plaintiffs, i.e. "engine oils" and the trade channels and the customer base are also common, thus satisfying the triple identity test. The other goods sold by the Defendant are also similar to the other goods provided by the Plaintiffs, broadly categorised as automobile parts including fuel systems, fuel hoses and canisters for which a case of allied and cognate goods is also made out. Plaintiffs are manufacturing engine oils, the packaging of which bears the trademark SPARK MINDA both in the form of words and logo. The use of the impugned marks by the Defendant for similar goods is bound to cause deception and confusion amongst the purchasers and, therefore, amounts to infringement of the Plaintiffs' trademarks as well as passing off.

27. Having heard learned Senior Counsel for the Plaintiffs, this Court is of the view that Plaintiffs have made out a prima facie case for grant of ex parte ad-interim injunction. Balance of convenience lies in favour of the Plaintiffs and they are likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.

28. Accordingly, Defendant, its principal officers, assignees, family members, servants and agents and all other persons claiming under the Defendant are restrained from manufacturing, selling, offering for sale, advertising and/or promoting and/or using the marks MINDA, AB MINDA, and/or any other mark/trade name/label/device that contains the trademark MINDA and/or any other mark/name/label/device that is deceptively similar to or infringing the Plaintiffs' trademark/trade name MINDA and its variants, till the next date of hearing.

29. Plaintiffs shall comply with the provisions of Order 39 Rule 3 CPC within one week from the date of execution of the Commission. I.A. 5687/2022 (under Order 26 Rule 9 CPC)

30. Present application has been preferred by the Plaintiffs under Order 26 Rule 9 and Order 39 Rule 7 CPC read with Section 151 CPC, seeking appointment of a Local Commissioner.

31. Learned Senior Counsel appearing on behalf of Plaintiffs prays for appointment of a Local Commissioner to visit the premises of the Defendant.

32. Upon hearing, the application is allowed.

33. Accordingly, Ms. Megha Bengani, (Mobile No. 9674245365) is appointed as a Local Commissioner, who shall visit the premises of the Defendant at the following address:-

AB Petrochem, New No. - 85, Plot No. - 1, Road No. - 14, Signature Not Verified Digitally Signed By:KAMAL KUMAR CS(COMM) 231/2022 Page 7 of 9 Signing Date:11.05.2022 12:20:47 Rishal Garden, Nangloi, Delhi - 110041

34. Local Commissioner shall visit the aforesaid premises, search and take into custody the infringing products bearing the Plaintiffs' registered trademarks including but not limited to publicity material, brochures, pamphlets, signages, etc. and make an inventory of the same.

35. Local Commissioner along with the Representative of the Plaintiffs and/or its counsel shall be permitted to enter the premises of the Defendant, as aforementioned.

36. Local Commissioner shall seize the infringing products and hand over the same to the Defendant on superdari, upon the Defendant furnishing an undertaking that it shall produce the goods, so seized, before the Court, as and when further directions are issued in this regard.

37. Local Commissioner shall make copies and sign books of accounts including ledgers, cash books, bill books, etc. discovered from the premises of the Defendant.

38. Local Commissioner shall be permitted to take photographs/videos of the execution of the Commission. She shall also be entitled to seek police assistance or protection of the Local Police Station, if so required, for the purpose of execution of the order of this Court. The SHO of the concerned Police Station is directed to provide necessary assistance to the Local Commissioner, if sought for.

39. In case the premises as aforementioned are found locked, the Local Commissioner is at liberty to break open the locks.

40. Plaintiffs shall serve a copy of this order upon the Defendant along with paper book of the suit at the time of execution of the proceedings.

41. Fee of the Local Commissioner is fixed at Rs.1,00,000/-, in addition to Signature Not Verified Digitally Signed By:KAMAL KUMAR CS(COMM) 231/2022 Page 8 of 9 Signing Date:11.05.2022 12:20:47 miscellaneous and out of pocket expenses, which shall be paid in advance by the Plaintiffs.

42. Report of the Local Commissioner shall be filed within two weeks of the execution of the Commission.

43. Plaintiffs shall inform the Registry about the execution of the proceedings by the Local Commissioner and only thereafter Registry shall issue summons of the suit to the Defendant.

44. This order shall not be uploaded on the website of this Court till execution of the Commission by the Local Commissioner.

45. Application is disposed of.

46. Copy of this order be given to the learned counsel for the Plaintiffs dasti under the signatures of the Court Master.

JYOTI SINGH, J APRIL 12, 2022/sn Signature Not Verified Digitally Signed By:KAMAL KUMAR CS(COMM) 231/2022 Page 9 of 9 Signing Date:11.05.2022 12:20:47