Delhi High Court - Orders
Jk Lakshmi Cement Limited vs Mr Satyawan Sehrawat & Anr on 1 July, 2024
$~9
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 527/2024, I.A. 31770/2024, I.A. 31771/2024, I.A.
31772/2024, I.A. 31773/2024, I.A. 31774/2024
JK LAKSHMI CEMENT LIMITED ..... Plaintiff
Through: Mr. Nishchal Anand, Ms. Tanvi Jain,
Mr. Vaibhav Jairathu, Advocate.
versus
MR SATYAWAN SEHRAWAT & ANR. ..... Defendant
Through: None.
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
ORDER
% 01.07.2024 I.A. 31774/2024 (for exemption)
1. Exemption allowed, 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. The application stands disposed of.
I.A. 31773/2024 (for additional documents)
4. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
5. The plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of Commercial Courts Act, and the DHC (Original Side) Rules, 2018.
Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:126. The application is disposed of, with the aforesaid directions. I.A. 31772/2024 (leave to file suit without advance service to defendants)
7. The present application has been filed under Section 151 CPC seeking leave to file the suit without advance service upon the defendants.
8. The plaintiff seeks urgent interim relief against counterfeit products, and for this purpose, an ex-parte appointment of Local Commissioner is also sought. Therefore, in the peculiar facts and circumstances of this case, exemption from effecting advance service upon the defendants, is granted.
9. The application is allowed and disposed of.
CS(COMM) 527/2024
10. At the outset, this court notes that an application for exemption from pre-institution mediation under Section 12-A of the Commercial Courts Act, 2015, has not been filed along with the present plaint.
11. Upon query by this Court, learned counsel appearing for the plaintiff submits, that it is settled law now, that a separate application for exemption from pre-institution mediation, may not be filed. Learned counsel for the plaintiff relies upon judgment dated 28th February, 2022 passed in the case of, Upgrad Education Private Limited Versus Intellipaat Software Solutions Private Limited, 2022 SCC OnLine Del 644, particularly, to the following paragraph:-
"xxx xxx xxx
7. It is thus directed that in suits filed before the IPD, wherein applications for interim injunction are filed and urgent interim relief is sought, such leave would be presumed in view of the language of Section 12A. Accordingly, a separate application would not be required where ever urgent interim relief is being sought by the plaintiff. Moreover, even if urgent interim relief is sought by the plaintiff but the court is of the opinion that the parties ought to be relegated to mediation, an order referring the matter to mediation can Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:12 always be passed.
xxx xxx xxx"
(Emphasis Supplied)
12. He further relies upon a Division Bench Judgement dated 27th October, 2022 passed in the case of, Chandra Kishore Chaurasia Versus R A Perfumery Works Private Ltd., 2022 SCC OnLine Del 3529, and relies upon the following paragraphs:-
"xxx xxx xxx
23. The respondent contends that the learned Commercial Courts had erred in rejecting its application under Order VII Rule 11(d) of the CPC. According to the respondent, the plaint is liable to be rejected as being barred in terms of Section 12A of the Commercial Court Act, 2015. The learned Commercial Court had rejected the said contention as it found that the provisions of Section 12A of the Commercial Court Act, 2015 were not applicable because the appellant (plaintiff) had sought urgent interim reliefs.
xxx xxx xxx
37. This court is unable to accept that it is necessary for a court to read in any procedure in Section 12A of the Commercial Court Act, 2015, which makes it mandatory for a plaintiff to file an application to seek leave of the court for filing a suit without exhausting the remedy of pre-institution mediation, irrespective of whether the plaintiff seeks urgent interim relief or not.
xxx xxx xxx"
(Emphasis Supplied)
13. Learned counsel appearing for the plaintiff has also drawn the attention of this Court to judgment in the case of Yamini Manohar versus T.K.D. Keerthi, 2023 SCC OnLine SC 1382, and refers to the following paragraphs:-
"xxx xxx xxx
5. The aforesaid paragraph refers to Section 80(2) of the Code, which permits the suit, praying urgent interim relief, to be filed by seeking the leave of the Court. The proviso to Section 80(2) of the Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:12 Code states that, if, after hearing the parties, the court is satisfied that no urgent or immediate relief is required to be granted in the suit, the court may return the plaint for presentation to it after compliance with requirements of Section 80(1) of the Code. Section 12A of the CC Act does not contemplate leave of the court, as is clear from the language and words used therein. Nor does the provision necessarily require an application seeking exemption. An application seeking wavier on account of urgent interim relief setting out grounds and reasons may allay a challenge and assist the court, but in the absence of any statutory mandate or rules made by the Central Government, an application per se is not a condition under Section 12A of the CC Act; pleadings on record and oral submissions would be sufficient. The words used in Section 12A of the CC Act are "A suit which does not contemplate any urgent interim relief, wherein the word "contemplate" connotes to deliberate and consider. Further, the legal position that the plaint can be rejected and not entertained reflects application of mind by the court viz. the requirement of urgent interim relief.
xxx xxx xxx
10. Having stated so, it is difficult to agree absolute choice and right to paralyze Section 12A of the CC Act by making a prayer for urgent interim relief. Camouflage and guise to bypass the statutory mandate of pre litigation mediation should be checked when deception and falsity is apparent or established. The proposition that the commercial courts do have a role, albeit a limited one, should be accepted, otherwise it would be up to the plaintiff alone to decide whether to resort to the procedure under Section 12A of the CC Act. An 'absolute and unfettered right' approach is not justified if the pre-institution mediation under Section 12A of the CC Act is mandatory, as held by this Court in Patil Automation Private Limited (supra). The words 'contemplate any urgent interim relief' in Section 12A(1) of the CC Act, with reference the suit, should be read as conferring power on the court to be satisfied. They suggest that the suit must "contemplate", which means the plaint, documents and facts should show and indicate the need for an urgent interim relief. This is the precise and limited exercise that the commercial courts will undertake, the contours of which have been explained in the earlier paragraph(s). This will be sufficient to keep in check and ensure that the legislative object/intent behind the enactment of section 12A of the CC Act is not defeated.
xxx xxx xxx"
(Emphasis Supplied) Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:12
14. In view of the above, exemption is allowed in terms of Section 12A of the Commercial Courts Act, 2015.
15. Let the plaint be registered as suit.
16. Upon filing of the process fee, issue summons to the defendants by all permissible modes. Summons shall state that the written statement be filed by the defendants within thirty days from the date of receipt of summons. Along with the written statement, the defendant shall also file affidavit of admission/denial of the plaintiff's documents, without which the written statement, shall not be taken on record.
17. Liberty is given to the plaintiff to file replication within thirty days from the date of receipt of the written statement. Further, along with the replication, if any, filed by the plaintiff, affidavit of admission/denial of documents of the defendant, be filed by the plaintiff, without which, the replication shall not be taken on record. If any of the parties wish to seek inspection of the documents, the same shall be sought and given within the timelines.
18. List before the Joint Registrar (Judicial) for marking of exhibits on 05th August, 2024.
19. List before the Court for framing of issues, thereafter. I.A. 31770/2024 (U/o XXXIX Rules 1 & 2 CPC)
20. The present application has been filed under Order XXXIX Rules 1 & 2 CPC, on behalf of the plaintiff seeking ex-parte, ad-interim injunction against the defendant.
21. It is submitted that the plaintiff, JK Lakshmi Cement Ltd. is a leading cement producing company with its headquarters at New Delhi and Branch Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:12 Offices and various location across the country including Rajasthan, Gujarat, Maharashtra, Madhya Pradesh, Delhi, Haryana, Odisha, Chhattisgarh, Jammu and Kashmir, Punjab, etc.
22. It is submitted that plaintiff has been using the letters 'JK' as part of its trade name since at least the year 1982, and the same has been widely accepted by consumers as well as by its competitors. The plaintiff company, as early as in the year 1982, adopted the trade mark/trading style 'JK Lakshmi'.
23. The plaintiff has been enjoying/using their rights in trademarks 'JK Lakshmi', 'JKLC' and other trademarks with the prefix 'JK' continuously and uninterruptedly. It is submitted that the plaintiff are a well-known trademark and trade style and under the marks 'JK Lakshmi/JKLC', has launched a variety of products such as JK Lakshmi Cement, JK SmartBlox, JK SmartBond, JK SmartPlaster, JK Lakshmiplast Smart Wall Putty, JK Lakshmi Smart Serv, JK Lakshmi Pro+ Cement, JK Lakshmi Platinum Heavy Duty Cement, JKLC Sixer, JK Lakshmi Power Mix, JK Shakti Cement, etc.
24. It is submitted that the immense popularity and success of the plaintiff's product sold under the well-known trademark and trading name, 'JK Lakshmi cement', can be witnessed from its sales figure which have been steadily increasing each year.
25. Attention of this court has been drawn to the chart, which shows the sales figures from the years 2018 to 2023, under the trademark, 'JK Lakshmi Cement' which is reproduced as under:-
Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:1226. It is submitted that plaintiff has an indomitable presence on the internet through its website, www.jklakshmicement.com, social media platforms such as Facebook, Twitter, Linkedln, online streaming platforms such as YouTube and online trade directories such as JustDial.
27. It is submitted that owing to widespread presence and popularity of the Plaintiff and its products throughout India, abroad and the internet, the Plaintiffs trade name 'JK Lakshmi Cement' has gained significant goodwill and reputation not only in India, but globally. The tradename 'JK Lakshmi Cement' has, thus, become a well-known mark, which is identified solely with the Plaintiff in the minds of the public and trade.
28. It is submitted that besides enjoying common law rights in its trade name, the Plaintiff is also the registered proprietor of numerous trademarks including 'JK Lakshmi' and other trademarks with the suffix of 'JK' and 'JKLC'. The details of the valid and subsisting trademarks registered in Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:12 favour of the plaintiff have been tabulated hereinbelow:
Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:12 Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:12 Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:1229. It is submitted that the plaintiff has been extremely vigilant in safeguarding its intellectual property rights vested in the trademarks, which include the terms 'JK' and 'JK Lakshmi Cement', and has successfully restrained the infringement of rights by initiating appropriate proceedings under the Trade Marks Act, 1999. Attention of this Court has been drawn to documents 67 to 70 filed by the plaintiff, to submit that there are orders Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:12 which have been passed in favour of the plaintiff earlier, wherever, there were instances of infringement of trademark/tradename of the plaintiff.
30. It is submitted that defendant no.1, Mr. Satyawan Sehrawat, appears to be the proprietor of M/s. J.K. Lakshmi Cement RMC, with its office located at Ground, Khalat No. 151/126 Killa No. 108/3, Village Gubhana, Jhajjar, Haryana - 124508. It is submitted that defendant no.1 is promoting, marketing, offering for sale and selling products deceptively similar/ identical to the plaintiff's products under the marks 'JK', 'JK Lakshmi Cement', 'JK Lakshmi PRO+ Cement', 'JK Lakshmi Cement Ready Mix Concrete' and 'JK Lakshmi CEMENT RMC', which are in grave violation of the plaintiff's rights in its trademarks as well as copyright subsisting in its trademarks/trade dress.
31. It is submitted that, in the month of May 2024, the plaintiff was intimated through market sources that the defendants are using and promoting the Impugned Marks by displaying them on the walls of its warehouse/plant, as well as on the Ready-Mix Concrete (RMC) vehicle. Furthermore, the defendants are engaged in the business of promoting, marketing, offering for sale of prepared binders for foundry moulds or cores, chemical products and preparations of the chemical or allied industries, RMC and other goods which are identical to the goods and services of the plaintiff.
32. It is submitted that upon receiving such information, the plaintiff's associate visited the premises of the defendants to conduct reconnaissance. Pictures taken by the Plaintiff's associate, have been attached, which are reproduced below:
Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:1233. Learned counsel appearing for the plaintiff submits that the defendants are not a member of the JK Organisation and consequently have no right to use the prefix 'JK', which is exclusively associated with the Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:12 plaintiff and other entities belonging to the JK Organisation. In complete disregard to the settled legal proposition, the defendants are using 'J.K. Lakshmi Cement RMC' as their trade name and have in fact, even obtained a GST registration under the said trade name.
34. It is submitted that mere use of 'JK' which is an essential element of the trademark owned and used by the plaintiff, constitutes a grave infringement on the plaintiff's right. Due to the well-known character of the said prefix 'JK' and the entire JK family of the marks, the same is eligible for protection across classes of goods and services, and thus, adoption of the name in relation to any goods and services would constitute infringement of trademark/copyright, and passing off of the plaintiff's right.
35. It is, thus, submitted that the defendants are using the impugned marks in relation to identical products as sold by the plaintiff, namely RMC, a product related to the construction industry of which the plaintiff is a known brand. Thus, an average consumer with imperfect recollection is highly likely to associate the impugned products with the plaintiff on account of use of the impugned marks by the defendants.
36. Learned counsel appearing for the plaintiff further submits that the plaintiff has apprehension that the defendants may be producing low and inferior quality of products, which will hamper the goodwill of the plaintiff.
37. In view of the circumstances, as noted above, this Court is satisfied that the plaintiff has made out a prime facie case for grant of ex-parte, ad- interim injunction till the next date of hearing. Further, balance of convenience lies in favour of the plaintiff, and the plaintiff is likely to suffer irreparable harm, in case the injunction, as prayed for, is not granted.
38. Accordingly, the defendants, their directors, proprietors, partners, Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:12 officers, servants, agents, contractors, subsidiaries, holding companies, sister concerns, franchises, family members, and all others acting for and on their behalf, are restrained from using, manufacturing, advertising, selling, offering for sale, marketing, etc. any commodity, product, service, packaging, advertising material, including flyers and pamphlets, labels, stationery articles, vehicles website, E-mail addresses or any other documentation, using, depicting, displaying in any manner whatsoever, the Impugned Marks or any other marks/tradenames, which are identical and/or deceptively similar to the plaintiff's registered trademarks, as noted above in the preceding paragraphs.
39. Issue notice, returnable before the Court on 05th November, 2024.
40. Affidavit of proof, thereof, be placed on record before the next date of hearing.
41. Reply, if any, be filed within four weeks, with advance copy to the counsel for plaintiff, who may file rejoinder/replication thereto, if any, before the next date of hearing.
42. Compliance of Order XXXIX Rule 3 of CPC, be done within two weeks from today.
43. List on 05th November, 2024.
I.A. 31771/2024 (for appointment of Local Commissioner)
44. The present application has been filed for appointment of Local Commissioner ("LC") to visit the premises of the defendants.
45. Keeping in view of the facts and circumstances as noted above, it is imperative that a Local Commissioner be appointed.
46. Accordingly, following directions are issued:
46.1 Mr. Dhruv Srivastava, Advocate, (Contact Number: 8847614755), is Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:12 appointed as Local Commissioner, with direction to visit the following premises of the defendant:
M/s. J.K. Lakshmi Cement RMC, Ground, Khalat No. 151/126 Killa No. 108/3,Village Gubhana, Jhajjar, Haryana - 124508. 46.2 The Local Commissioner, along with representative of the plaintiff and its counsel, shall be permitted to enter upon the premises of the defendants mentioned above, or any other location/premises, that may be identified during the course of commission, in order to conduct the search and seizure.
46.3 The Local Commissioner shall conduct a search at the defendant's premises and seize impugned goods, bearing the defendant's impugned Marks, and/or any other Mark, which is identical/deceptively similar to plaintiff's trademarks.
46.4 After seizing the infringing material, the same shall be inventorized, sealed and signed by the Local Commissioner, and released on superdari to the defendant, on their undertaking to produce the same, as and when further directions in this regard, are given.
46.5 The Local Commissioner shall, inspect all books of accounts of the defendants including ledgers, cash books, purchase and sale records, etc. pertaining to the sourcing and sale of impugned goods. 46.6 The Local Commissioner shall also be permitted to make copies of the books of accounts including ledgers, cash registers, stock registers, invoices, books, etc., in so far as they pertain to the infringing products. 46.7 Further, the Local Commissioner shall be permitted to undertake/arrange for photography/videographer for the execution of the commission.Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:12
46.8 In case any of the premises are locked, the Local Commissioner shall be permitted to break open the locks. To ensure an unhindered and effective execution of this order, the SHO of the local Police Station is directed to render all assistance and protection to the Local Commissioner, if and when sought.
46.9 The Local Commissioner shall demand the disclosure of other premises where the infringing products are sourced, stocked and sold by the defendants and visit such premises, and carry out the directions contained in the present order.
46.10 The Local Commissioner is empowered to identify any of the Marks of the plaintiff along the road to the defendant no. 1's premises, including though not limited to hoardings, walls, advertisements, milestones, RMC vehicles, stationery, bills/invoices, publicity material etc., and remove/obscure the same, including by painting over the said marks or by any other means, that may be appropriate for such removal/obscurity.
Further, the Local Commissioner shall inspect, in and around the defendant no. 1's premises, for any use of the Marks of the plaintiff, which may be similar to the Marks of the plaintiff.
46.11 The Local Commissioner shall, take photographs and videos of the infringing hoardings, walls, advertisements, milestones, RMC vehicles, stationery, bills/invoices, publicity material, etc. of the defendants as well as the entire proceedings, if required.
46.12 The fee of the Local Commissioner, to be borne by the plaintiff, is fixed at ₹ 2,00,000/-. The plaintiff shall bear all the expenses of travel and lodging of the Local Commissioner and other miscellaneous out-of-pocket expenses for the execution of the commission. Further, the fee of the Local Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:12 Commissioner shall be paid in advance by the plaintiff. 46.13 The local commission shall be executed within a period of two weeks from today. The Local Commissioner shall file the report within a period of two weeks from the date, on which the commission is executed.
47. The present order passed today shall not be uploaded, till a period of two weeks.
48. In terms of the forgoing, the present application stands disposed of, in the aforesaid terms.
49. Dasti under the signatures of the Court Master.
MINI PUSHKARNA, J JULY 1, 2024/KG Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:16.07.2024 11:03:12