Delhi District Court
In This Case vs Patel Vs. Chetanbhat on 5 December, 2011
1 Woongjin Chemical Co. Ltd. Vs. M/s. Duplex CS No. 629/11 05.12.2011 O R D E R
1. In this case, the plaintiff presses its application under Order 39 Rules 1 & 2 read with Section 151 of CPC and another application for appointment of local commissioner under Order 26 Rule 9 read with Order 39 Rule 7 read with Section 151 of CPC.
2. Before discussing the application, brief look of the facts of case which are :
a) Plaintiff is engaged in the wellknown and well established business of manufacturing and marketing inter alia of Reverse Osmosis (RO) Membranes, Water Filters, Cartridge Filters, Water Purifying Apparatus and Machines, etc. (hereinafter referred to as the 'said goods') for the past several years. The business of the plaintiff was started in the year 1972 and since then the business CS No. 629/11 2 of the plaintiff has grown in leaps and bounds across diverse sectors to become a global chemical and material company with branch offices and subsidiaries in the United States, China, Japan and India along with numerous authorized dealerships across the globe. The plaintiff today is a market leader in the filtration and separation industry manufacturing innovative and cost effective reverse osmosis, nanofiltration and ultra filtration membranes as well as cartridges. For its superior quality of goods and services provided by the plaintiff, the plaintiff has been accorded with several recognition and awards.
b) In order to carry out its aforesaid business activities, plaintiff had coined a most unique, distinctive and arbitrary mark 'CSM'.
The said trade mark 'CSM' was adopted by the plaintiff knowing well that there is no other same or similar mark in existence in relation to the aforesaid goods and the same was put to commercial use. The said trademark of the plaintiff is duly registered under the Trademarks Act, 1999 under application no. 1524667 in Class 11. The aforesaid registration of the plaintiff is still valid, effective and subsisting till date and thus the plaintiff CS No. 629/11 3 has the statutory right to the exclusive use of the said trademark under the law as it is true and and lawful proprietor of the said trademark 'CSM'. Since its adoption, the plaintiff has used this trademark and trade name openly, continuously and extensively without any interruption and interference whatsoever in the market. The plaintiff has also advertised and popularized the said trademark through various medias of advertisement and publicity in trade journals, magazines, newspapers etc to achieve and create a global fame and reputation towards the said trademark and product sold thereunder. The plaintiff has statutory, legal and vested right to the exclusive use of the trademark CSM in respect of the aforesaid goods.
c) It is stated that the defendant appears to be a sole proprietorship firm carrying on business at the address mentioned in plaint, though, exact constitution of the defendant is not known to the plaintiff. The defendant is blatantly selling counterfeit or duplicate R.O. Membranes under an identical trademark 'CSM' with same get up, colour scheme, label and packaging from the premises of the defendant and the identity CS No. 629/11 4 between the plaintiff's 'CSM' membrane and the defendant counterfeit membrane is so close that it is virtually impossible to distinguish between the plaintiff's high quality 'CSM' membranes and the duplicate/counterfeit membranes being sold by the defendant. The adoption of the 'CSM' on part of the defendant is clean and flagrant violation of the plaintiff's legal, vested and statutory rights and amount to infringement of registered trademark of the plaintiff. The defendant has left no stone unturned to confuse and mislead an unwary purchaser/customer of the plaintiffs goods and have even duplicated the barcode. It is further stated that impending uses of the said trademark by the defendant for the spurious and inferior quality of goods of the defendant, is likely to dilute the reputation and goodwill of the said trademark of the plaintiff.
d) It is further stated that the cause of action arose for the suit in the last week of October when the plaintiff through some of its dealers came to know that counterfeit/duplicate 'CSM' are being sold by the defendant from its premises. The plaintiff through its representative purchased a sample of the same and tried to CS No. 629/11 5 procure the same. The defendant, however, refused to give any such invoice/bill.
3. On 16/11/2009 before this court, the ld counsel for the plaintiff demonstrated by showing actual product and counterfeit product and submits that there was difference of embossing on the actual product which is not there in the counterfeit product. However, in absence of any document to establish nexus between counterfeit product of the defendant, the court issued notice of the applications and summons of the suit.
4. In the morning of 03/12/2011, ld counsel for the defendant appeared before this court and this court made following observations :
"03.12.2011 Present: Sh. Gaurav Miglani, counsel for the plaintiff.
Sh. Tejpal Shokeen, counsel for the defendant. Ld counsel for the defendant submits that copy has not been received. It is the practice of the court that summons always accompanied with the copy of the plaint as well as the documents. Though, it is not disputed by ld counsel for defendant that copy was not supplied. Defendant has not appeared before this court. Ld counsel for the plaintiff presses his application under Order 39 Rule 1 & 2 of CPC. In such circumstances, since ad interim injunction has CS No. 629/11 6 been prayed by the plaintiff in his application, ld counsel for the defendant does not want to state or to make any submissions regarding the contents of the application. The summons issued by this court specifically mentions that the ld counsel for the defendant or defendant has to appear to answer the claim and it was also directed in the summons to produce all documents in possession or relied upon in defence or claim for setting up or a counter claim. It was further directed that these documents had to enter in a list to be annexed. Summons issued by this court specifically directed to the defendant to appear in this court in person or by a pleader duly instructed and to answer all material questions related to the case and to appear with a person who is able to answer all such questions.
However, ld counsel for the defendant does not make any submissions. This court puts a query to the ld counsel for defendant whether defendant has given instructions to the ld counsel. Ld counsel for the defendant does not answer the query of this court. Perusal of record shows that defendant has already received summons two days back. In such circumstances, this court again asked the ld counsel for defendant to make submissions as there is an application for ex parte interim injunction.
During arguments, ld counsel for the defendant submits that he is not selling counterfeit product using trade mark 'CSM' but no submission is there that defendant is not selling any product using trade mark 'CSM'. Whether the product is being sold with genuine trade mark or counterfeit trade mark is the matter of trial. On the other hand, ld counsel for the plaintiff submits that the plaintiff has never supplied any goods using the trade mark of 'CSM' to the defendant. In such circumstances, it is requested to appoint a local commissioner as the ld counsel for the defendant does CS No. 629/11 7 not submit that defendant is not selling the product bearing trade mark 'CSM' and also for interim order. Now to come up for further orders at 4:00 pm."
5. However, this court with a view to give one more opportunity to the defendant adjourned the case for 5th of December, 2011 i.e. for today for reply to the application under Order 39 Rule 1 & 2 and under Order 26 Rule 9 read with Order 39 Rule 7 read with Section 151 of CPC. It was further directed to the defendant to appear in person. However, on 05/12/2011, replies to the applications have not been filed and defendant also did not appear in person. In such circumstance, when defendant is not coming forward with facts before this court, then in those circumstances, it appears that defendant is only buying the time with malafide intentions and this court has to pass order upon the interim application of the plaintiff as the plaintiff has vehemently pressed its applications. It is further submitted that the purpose of the applications will be frustrated in view of the intentional causing delay towards the disposal of the applications by the defendant as defendant is not coming forward with replies to the applications as well as appearance before this court.
CS No. 629/11 8
6. I have heard the counsel for the plaintiff and documents placed on the record are perused. However, as already observed, ld counsel for defendant did not make any submission. Ld counsel for plaintiff vehemently submits that the entire purpose of the applications and suit will be diluted and frustrated in case ad interim injunction be not granted in favour of the plaintiff.
7. Ld counsel for plaintiff has contended that prima facie case is made out for grant of ex parte interim injunction as there is overwhelming evidence and material available on record to justify the grant thereof. The intention of the defendant, to make use of business/name of the plaintiff so as to divert the business or customer to himself, is apparent. In this regard he has placed reliance on case titled, "Laxmikant Vs. Patel Vs. Chetanbhat Shah & Anr", 2002 (24) PTC 1 (SC). Ld counsel for plaintiff has also placed reliance on case titled, Cadbury India Limited. & Others Vs. Neeraj Food Products. MANU/DE/1596/2007; Izuk Chemical Works Vs. Babu Ram Dharam Prakash, MANU/DE/2011/2007; Remidex Pharma Private Ltd. Vs. Savita Pharmaceuticals P. Ltd. & Anr., MANU/DE/2541/2006; Win CS No. 629/11 9 Medicate Pvt. Ltd. Vs. McLaren Biotech (P) Ltd., MAU/DE/2868/2005; Midas Hygiene Industries P. Ltd. & Anr. Vs. Sudhir Bhatia & ors., MANU/SC/0186/2004; Sanat Products Ltd. Vs. Glade Drugs and Nutraceuticals Pvt. Ltd & Anr., MANU/DE/1171/2003; Glaxo Group Ltd. & Anr. Vs. Akums Drugs & Pharmaceuticals Ltd. & Ors. In CS (OS) No. 1115/2009 and I. A. No. 7822/2009 in CS(S) No. 1115/09.
8. The plaintiff has made out a strong prima facie case for grant of ad interim relief. It is not disputed by the defendant till date that the plaintiff is not the owner of the trade mark 'CSM'. Copy of the trade mark registration certificate issued by Registrar of Trade Marks, dated 17/03/2008 is filed. Thus, prima facie the plaintiff is the owner of the registered trade mark. Moreover, Section 31 (1) of the Trade Marks Act, 1999 states :
"31. Registration to be prima facie evidence of validity. (1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof."CS No. 629/11 10
9. Further, it is the case of the plaintiff that the defendant is causing infringement of registered trade mark of the plaintiff and further relied upon Section 29 of the Trade Marks Act, 1999 and submits that as the defendant is not a registered proprietor of the trade mark 'CSM' and, therefore, burden is shifted upon the defendant to prove against the presumption in favour of the plaintiff as per Section 29 of the Act. He further submits that the balance of convenience also lies in favour of the plaintiff as he is using the trade mark since 1972. It is further the case of the plaintiff that the plaintiff has distinctive get up of the product membranes of water purifier with the trade mark 'CSM' and peculiar embossment on the said product. Defendant adopted trade mark deceptively similar to the plaintiffs trade mark. It is further the case of the plaintiff that irreparable loss and injury is liable to be caused to the plaintiff if defendant is not restrained from continuing with his infringement activity. It is further case of the plaintiff that the interim order is also in the public interest as a common man is likely to be deceived by deceptive similarly trademark is being used by the defendant at the product. CS No. 629/11 11
10. From the above discussion, I am of the considered opinion that plaintiff is entitled for ad interim injunction restraining the defendant, its servants, agents, dealers, distributors, stockists, representative and all other persons on their behalf from infringing the registered trade mark 'CSM' of the plaintiff by transferring, getting manufactured, processed or packed, marketing, selling, offering for sale, stocking, advertising, exhibiting or cognate or allied goods or goods of same description under the trade mark 'CSM' in oner or the other manner till the next date of hearing.
11. Local Commissioner Sh. Rajat Manchanda having mobile no. 9899850805 is appointed who shall visit at the premises of the defendant M/s. Duplex, B979, Sector1, Avantika, Rohini, Delhi110085. The ld local commissioner shall seize and secure all the impugned goods (membranes) and all other cognate and allied goods bearing the impugned trade mark, label 'CSM' and other incriminating material in the form of packing material, labels, cartons, Bar Codes, advertising material semi finished, unfinished, packed and unpacked impugned goods at the CS No. 629/11 12 premises of the defendant or in his possession or power or control. The local commissioner shall make inventory of all such goods at the spot and shall obtain signatures of both the parties and their respective counsels, if present. However, in case if there is refusal on behalf of either of the parties/counsels to sign upon the inventory/list of goods then the ld local commissioner shall make note thereof and submit report accordingly. The ld local commissioner is directed to seize the said goods and materials and shall lock in a box/trunk and sealed the same then and there and the box shall be given to the defendant or any person who is found at the address of the defendant as incharge of the operation of the business on superdari by executing bond/undertaking in this respect by the defendant or the person concerned. In case, there is refusal on part of the defendant to execute the supderdari bond then the custody of such goods shall be delivered to the plaintiff or any authorized person on behalf of the plaintiff after executing the superdari bond/undertaking on behalf of the plaintiff. The ld local commissioner if feels necessary be also entitled to take police assistance towards the execution of this CS No. 629/11 13 order.
12. The fees of the ld local commissioner shall be Rs. 15,000/ excluding conveyance charges which shall be borne by the plaintiff. However, the ld local commissioner shall not use the conveyance of the plaintiff. He shall either use his own vehicle or taxi to visit the spot. The ld local commissioner shall also take photographs of the incriminating goods found at the spot of the defendant at the expenses of the plaintiff. However, the print out of those photographs along with original CD shall be placed on the record. The ld local commissioner shall prepare two extra sets of the report. ld local commissioner is not required to issue notice to either of the parties as ld counsels for both the parties are appearing before this court in person.
13. Copy of this order be given dasti to both the parties and also to ld local commissioner against signatures. Ld local commissioner shall submit typed report along with rough notes prepared by him at the spot with this court by 09/12/2011 up to 4:00 pm. Ld local commissioner shall also submit two spare copies of the report. Out of those copies, one shall be supplied to the plaintiff and one CS No. 629/11 14 copy to defendant by the Reader/Ahlmad of the court.
14. Now to come up for reply of both the applications by the defendant, payment of cost, appearance of the defendant, arguments and disposal of pending applications on 16/12/2011.
(Jitendra Kumar Mishra) ADJIII, Rohini Courts,Delhi 05.12.2011(am) CS No. 629/11