Delhi High Court - Orders
Kamla Kant And Company Llp vs Sanjay Gupta & Anr on 1 June, 2022
Author: Jyoti Singh
Bench: Jyoti Singh
$~15
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 396/2022
KAMLA KANT AND COMPANY LLP ..... Plaintiff
Through: Mr. N. Mahabir, Mr. Parveen Arya
and Mr. P. C. Arya, Advocates.
versus
SANJAY GUPTA & ANR. ..... Defendants
Through: None.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
ORDER
% 01.06.2022 I.A. 9140/2022(seeking leave to file additional documents)
1. Present application has been preferred on behalf of the Plaintiff seeking leave to file additional documents under Order 11 Rule 1(4) CPC.
2. Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015.
3. Application is allowed and disposed of.
I.A. 9137/2022 (Section 12(A) of the Commercial Courts Act, 2015 seeking exemption from pre-institution mediation)
4. For the reasons stated in the application, the requirement of pre- institution mediation is dispensed with.
5. Application is allowed and disposed of.
I.A. 9138/2022(exemption from service to Defendants)
6. Since there is an urgency in the matter and the matter is being heard today, Plaintiff is exempted from serving advance notice on the Defendants.
7. For the reasons stated in the application, the same is allowed and disposed of.
Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 CS(COMM) 396/2022 Page 1 of 11 18:45:22I.A. 9139/2022 (Exemption)
8. Subject to the Plaintiff filing originals, clearer copies and documents with proper margins, which it may seek to place reliance on, within four weeks from today, exemption is granted.
9. Application is allowed and disposed of.
CS(COMM) 396/2022
10. Let plaint be registered as a suit.
11. Upon filing of process fee, issue summons to the Defendants, through all permissible modes, returnable before the learned Joint Registrar, on 16.08.2022.
12. Summons shall state that the written statement shall be filed by the Defendants within 30 days from the receipt of summons. Along with the written statement, Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff.
13. Replication be filed by the Plaintiff within 15 days of the receipt of the written statement. Along with the replication, an affidavit of admission/denial of documents filed by the Defendants, shall be filed by the Plaintiff.
14. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines. I.A. 9135/2022(under Order 39 Rules 1 and 2 CPC, by Plaintiff)
15. Present application has been preferred by the Plaintiff under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 for grant of an ex-parte ad-interim injunction.
16. Issue notice to the Defendants through all prescribed modes, returnable on 05.09.2022.
Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 CS(COMM) 396/2022 Page 2 of 11 18:45:2217. It is averred that the Plaintiff has been engaged in the business of selling and trading of Pan Masala, Tobacco, Supari Mixture, Zaffrani Patti, Zarda and other allied and cognate items under different trademarks including the trademark RAJSHREE since the year 1965 actively, continuously and uninterruptedly. As part of business activities, for the past few years, Plaintiff has been getting the said goods/products manufactured and sold through third party licensees/franchisees throughout India.
18. It is averred that the Plaintiff has diversified business activities globally and the goods/services are sold and promoted all over India and abroad. Plaintiff is also engaged in the business of food items, medicinal, pharmaceutical and cosmetic items etc. since past several years under various brand names, which are manufactured and sold through third-party licensees throughout India.
19. It is averred that Plaintiff adopted the trademark RAJSHREE and RAJSHREE (LABEL) in 1965. The trademark "RAJSHREE" is a coined word, which has no denotative meaning and distinguishes the goods/products sold under it. Plaintiff is a Registered Proprietor of these marks and enjoys several registrations in India as well as internationally in its favour for the said marks as well as their sub brands both under The Trade Mark Act, 1999 and The Copyright Act, 1957. Registrations are valid and subsisting.
20. It is further averred that the trademark RAJSHREE has been extensively advertised by the Plaintiff on various media and social platforms and the trademark RAJSHREE is exclusively identified with the Plaintiff and no one else. Annual Royalty figures earned through the sales of Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 CS(COMM) 396/2022 Page 3 of 11 18:45:22 Plaintiff's product RAJSHREE are mentioned in the Plaint and are over Rs.38 crores for the year 2018-19.
21. It is further averred that by virtue of long, continuous and extensive use of the trademarks RAJSHREE with or without other well-known brands of the Plaintiff, the same has become very popular among the purchasing public. By virtue of the above, members of the relevant trade and public are aware of the existence of Plaintiff's trademark RAJSHREE which has gained popularity and attained the status of well-known mark within the provisions of Section 2(1) (zg) and Section 11 of the Trade Marks Act, 1999.
22. It is averred that Plaintiff has honestly and bonafidely adopted the trademark KP. The trademark KP is a coined word, which has no denotative meaning and distinguishes the goods/products sold and services rendered under it. The trademark/word KP is abbreviation of KAMLA PASAND, which is a very important mark of the Plaintiff and used on every pouch of the Plaintiff. Some of the pictures from the plaint are as under:
Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 CS(COMM) 396/2022 Page 4 of 11 18:45:2223. It is averred that the Plaintiff is the registered proprietor of the mark KP, details of which are mentioned in the plaint. The said mark is duly subsisting on the Register of Trade Marks Office as a valid trademark.
24. It is averred that Plaintiff's firm has established its proprietary rights in its trademarks and people all over the world associate the same with Plaintiff's firm only and no one else. It is submitted that by virtue of the above, members of the relevant trade and public are aware of the existence of Plaintiff's trademark KP which has gained popularity and attained the status of well-known mark within the provisions of Section 2(1)(zg) and Section 11 of the Trade Marks Act, 1999.
25. It is averred that during May, 2016 Plaintiff became aware of Defendants' trademark application bearing no.2686746, for the mark in class 31, when it was advertised in the Trade Mark Journal. Plaintiff immediately filed an opposition against the said mark on 16.05.2016. Defendants did not contest this opposition and have abandoned the mark. In the said Application, Defendants claimed user since 20.01.2009 but did not file a single document to show use of the said mark before the Trademark Registry. Thus, the user claimed by the Defendants was false and frivolous as the Plaintiff has never come across any product under this trademark.
Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 CS(COMM) 396/2022 Page 5 of 11 18:45:2226. It is averred that during May, 2016, Plaintiff became aware of Defendants' trademark application bearing no.2686749, for the mark in class 34, when it was advertised in the Trade Mark Journal. Plaintiff immediately filed an opposition against the said mark on 16.05.2016. Defendants did not contest this opposition and have abandoned the mark. In the said Application, Defendants claimed user since 20.01.2009 but did not file a single document to show use of the said mark before the Trademark Registry. Thus, the user claimed by the Defendants was false and frivolous as the Plaintiff has never come across any product under this trademark.
27. It is the case of the Plaintiff that during the second week of May, 2020, one of the marketing persons of the Plaintiff came across the infringing products of Defendants bearing deceptively similar trademark KG RAJ with almost identical/similar packaging in the market. On 13.05.2022, it was found, after search, that the impugned products are sold on the online portals as well. Defendants have copied Plaintiff's trademarks KP and RAJSHREE as also a deceptively similar/identical packaging, get-up, trade dress, font style etc. as that of the Plaintiff.
Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 CS(COMM) 396/2022 Page 6 of 11 18:45:2228. Defendants have lifted the entire artwork, layout, get-up, colour scheme, pattern, writing style, font style and the individual features therein, from Plaintiff's prior adopted and launched KG/RAJ packaging. A comparative of Plaintiff's and Defendants' product packaging is as under:
TABLE OF COMPARISON Plaintiff's Packaging Defendants' packaging
29. It is contended by the learned counsel for the Plaintiff that the similarities as brought out in the plaint in the competing marks/packaging etc. demonstrate that the packaging/packet, colour scheme, bi-layered colour pattern, placement of different elements and the overall trade dress of the Defendants' RAJ has been copied from the Plaintiff's RAJSHREE packaging/pack and is intended to deceive, confuse and pass off the goods of the Defendants as of the Plaintiff and encash on its goodwill and reputation. Defendants have copied the entire idea of the mark/get-up/layout shown in Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 CS(COMM) 396/2022 Page 7 of 11 18:45:22 the Plaintiff's product and a design element running through it. Defendants' RAJ pack uses the same colour combination, same or similar graphic elements, placement of different elements, same writing style and most importantly, the same overall design concept as Plaintiff's RAJSHREE. Defendants have only removed the word SHREE from RAJSHREE and replaced the letter 'P' with 'G', i.e., KG instead of KP. It is clear that the intention is to misrepresent as also to confuse the members of the public that the products of the Defendants are associated with those of the Plaintiff. The actions of the Defendants amount to infringement and passing off.
30. Having heard learned counsel for the Plaintiff, this Court is of the view that Plaintiff has made out a prima facie case for grant of ex parte ad-interim injunction. Balance of convenience lies in favour of the Plaintiff and it is likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.
31. Accordingly, Defendants, their Directors, agents, distributors, partners or any person claiming under them or through them are restrained from selling, offering for sale any goods, advertising or promoting any product under the trademarks RAJ and KG or any trademarks which are similar to Plaintiff's trademarks RAJSHREE and KP amounting to infringement of Plaintiff's registered trademarks RAJSHREE and KP, till the next date of hearing.
32. Defendants, their Directors, agents, distributors, partners or any person claiming under them or through them are further restrained from selling, offering for sale any goods, advertising or promoting any product under the trade marks RAJ and KG or any trade mark similar to Plaintiff's trademarks RAJSHREE and KP which may cause confusion and deception Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 CS(COMM) 396/2022 Page 8 of 11 18:45:22 in the market and lead to passing off Defendants' goods as that of the Plaintiff.
33. Defendants, their Directors, agents, distributors, partners or any person claiming under them or through them are further restrained from advertising or promoting any product under the packaging, get up, trade dress of the Defendants product RAJ and KG or any packaging, get up, trade dress similar to Plaintiffs product RAJSHREE and KP, which is likely to cause infringement of Copyright.
34. Plaintiff shall comply with the provisions of Order 39 Rule 3 CPC within ten days from the execution of the commission by the Local Commissioner.
I.A. 9136/2022(for appointment of local commissioner)
35. Present application has been preferred by the Plaintiff under Order 26 Rules 9 read with Section 151 CPC, seeking appointment of a Local Commissioner.
36. Upon hearing, the application is allowed.
37. Accordingly, Ms. Sukriti Mago, Advocate (Mobile No.9999413737) is appointed as a Local Commissioner, who shall visit the premises of the Defendants at the following address:-
Vishnukant Gupta Proprietor, M/s Dev Trading Company D-2, Side No. 4, Panki, Kanpur Nagar- 208020 Uttar Pradesh
38. Local Commissioner shall visit the aforesaid premises, search and take into custody the infringing products, finished/unfinished, bearing Plaintiff's registered trademarks/packaging etc. as aforementioned, Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 CS(COMM) 396/2022 Page 9 of 11 18:45:22 including but not limited to marketing material, flyers, pamphlets, brochures, advertisements, etc. and make an inventory of the same. An inventory of dyes/moulds/positives/negatives/machines or any other equipment used by the Defendants with respect to impugned marks shall also be prepared.
39. Local Commissioner along with the Representative of the Plaintiff and/or its counsel shall be permitted to enter the premises of the Defendant, as aforementioned.
40. 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.
41. Local Commissioner shall make copies and sign books of accounts including account books/ledgers/case books, bill books, etc. and manufacturing records discovered from the premises of the Defendant.
42. 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.
43. In case the premises as aforementioned are found locked, the Local Commissioner is at liberty to break open the locks.
44. Plaintiff 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.
Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 CS(COMM) 396/2022 Page 10 of 11 18:45:2245. Fee of the Local Commissioner is fixed at Rs.1,50,000/- in addition to travel, boarding and lodging expenses as well as other miscellaneous out-of- pocket expenses for the execution of the Commission. Fees of the Local Commissioner shall be paid in advance by the Plaintiff.
46. Report of the Local Commissioner shall be filed within two weeks of the execution of the Commission.
47. Plaintiff 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 Defendants.
48. This order shall not be uploaded on the website of this Court till execution of the Commission by the Local Commissioner.
49. Application is disposed of.
50. Copy of this order be given to learned counsel for the Plaintiff dasti under the signatures of the Court Master.
JYOTI SINGH, J JUNE 01, 2022/shivam Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:22.07.2022 CS(COMM) 396/2022 Page 11 of 11 18:45:22