Delhi High Court - Orders
Panasonic Holdings Corporation vs Ashok Kumar And Ors on 18 March, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~41
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 239/2024
PANASONIC HOLDINGS CORPORATION ..... Plaintiff
Through: Ms. Bitika Sharma, Mr. Rishi Bansal
and Mr. Deepak Shrivastava,
Advocates.
versus
ASHOK KUMAR AND ORS. ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 18.03.2024 I.A. 6384/2024 (seeking exemption to serve the Defendants in advance)
1. 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.
2. The application is allowed and disposed of.
I.A. 6379/2024 (seeking exemption from invoking pre-institution mediation)
3. As the present suit contemplates urgent interim relief, in light of the judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.
4. Disposed of.
CS(COMM) 239/2024 Page 1 of 12This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/04/2024 at 21:03:10 I.A. 6380/2024 (seeking leave to file additional documents)
5. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
6. Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the said Act.
7. Accordingly, the application stands disposed of.
I.A. 6381/2024 (seeking exemption from filing original, clear copies, prayer copies and documents with proper margins)
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. Accordingly, the application stands disposed of.
I.A. 6383/2024 (seeking exemption from filing the court fees at the time of instituting the suit)
11. Ms. Bitika Sharma, counsel for the Plaintiff, states that court fee has been applied for, and undertakes to file the same as and when the court fee certificate and stamps are issued.
12. In view of the above, the application is disposed of with a direction that the Plaintiff should furnish the deficient court fee within a period of two weeks from today.
13. The application is disposed of.
I.A. 6382/2024 (for not uploading the order on the Court website)
14. Considering that the Plaintiff is seeking ex-parte appointment of 1 2023 SCC OnLine SC 1382.
CS(COMM) 239/2024 Page 2 of 12This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/04/2024 at 21:03:10 Local Commissioner to effect search and seizure of counterfeit goods, the request is allowed. The present order shall not be uploaded on the website of this Court for a period of two weeks from today.
15. Disposed of.
CS(COMM) 239/2024
16. Let the plaint be registered as a suit.
17. 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.
18. 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.
19. List before the Joint Registrar for marking of exhibits on 24th May, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
20. List before Court for framing of issues thereafter.
I.A. 6377/2024 (u/Order XXXIX Rules 1 & 2, r/w Section 151 of the Code of Civil Procedure, 1908) CS(COMM) 239/2024 Page 3 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/04/2024 at 21:03:11
21. Ms. Sharma presents the Plaintiff's case as follows:
21.1. The Plaintiff, Panasonic Holdings Corporation Company (formerly known as Matsushita Electric Housewares Manufacturing Works), was founded in the year 1918 as a light bulb socket manufacturing unit. They started their operations in India in the year 1972, inter alia under the trademark/ label "ANCHOR" / " ", which was adopted by them in the year 1963.
21.2. The Plaintiff is enagged in the business of manufacture and sale of electrical switches, accessories, home automation devices, wires and cables, witch plates, lamps, dimmers, fans, fan regulators, button holders etc., under the trademark "ANCHOR"/ " " or its formative variants such as " ", " ", and " ". The Plaintiff has secured registrations of the word mark "ANCHOR" in English and Devnagri script and aforesaid devices in classes 07, 09, 11 and 17, particulars whereof are set out in paragraph No. 9 of the plaint.
21.3. The device " " is the original artistic creation of the Plaintiff, whereon the Plaintiff asserts copyright ownership. 21.4. The Plaintiff has been uninterrputedly advertising and selling the goods bearing the "ANCHOR" marks through various modes, including their website "https://lsin.panasonic.com" (registered on 22nd May, 1990) and several e-commerce platforms. It also has a formidable presence on CS(COMM) 239/2024 Page 4 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/04/2024 at 21:03:11 various social media platforms and has been endorsed by famous celebrities from time to time.
21.5. The Plaintiff's grievance arises from the Defendants' adoption of an identical mark for goods that are counterfeits of the Plaintiff's goods. As per Plaintiff's investigation conducted in February, 2024, the Defendants are conjointly using and selling counterfeit products through a network of distributors and suppliers. Defendants No. 1 to 3 are the wholesalers/ stockist of the impugned goods, which are manufactured by Defendants No. 4 to 8. The samples of impugned goods procured by the Plaintiff, when compared with the Plaintiff's genuine products, are identical and thus, constitute infringement of the Plaintiff's registered trademarks, alongside passing off its trade dress as that of the Plaintiff's. In support, Ms. Sharma refers to the report of examination of the counterfeit products conducted by the Plaintiff's experts, which reveals that the quality of the impugned goods is sub-standard.2
22. The Court has considered the afore-noted submissions. A comparison of the Plaintiff's products with that of the Defendants is as follows:
Plaintiff's products Defendants' products 2 At page No. 127 of the Plaintiff's documents.
CS(COMM) 239/2024 Page 5 of 12This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/04/2024 at 21:03:11
23. The above comparison reveals that the impugned products are nearly CS(COMM) 239/2024 Page 6 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/04/2024 at 21:03:13 identical to the Plaintiff's, with no noticeable differences. Counsel for Plaintiff has pointed out the following differences between the product packaging:
(i) The word 'ANCHOR' carved on the top of the counterfeit packaging is straight, while the word 'ANCHOR' carved on the original packaging is upside down.
(ii) The smart saver Electrician Loyalty Program is wrongly positioned on the left side of the counterfeit packaging.
(iii) The original packaging has the GOLDEN PEACOCK AWARDS WINNER logo of the year 2020 and 2021 (for Environment management and Energy Efficiency) with a light-yellow tone.
(iv) On genuine packaging, it is written as "Please follow installation guidelines as per IS 732". On the counterfeit packaging, it is written as "Please follow installation guideline as per is 732"
24. The above differences would not be immediately discernible to an average consumer with imperfect recollection, who would be misled into purchasing counterfeit goods under the impression that they belong to the Plaintiff. The Defendants have been using the Plaintiff's "ANCHOR" marks without any authorization, in an attempt to create an association, which is evident by the fact that Defendants have been using the Plaintiff company's name "PANASONIC" as the source identifier for their products. It appears that the Defendants' use of identical marks and packaging is only purely for counterfeiting, which prima facie amounts to infringement of the Plaintiff's trademarks.
25. In view of the above, the Plaintiff has made out a prima facie case in their favour and in case an ex-parte ad-interim injunction is not granted, CS(COMM) 239/2024 Page 7 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/04/2024 at 21:03:17 Plaintiff will suffer an irreparable loss; balance of convenience also lies in favour of the Plaintiff and against the Defendants.
26. Accordingly, the Defendants and all persons acting on their behalf, are restrained from using, selling, soliciting, manufacturing, marketing, enquiring, importing, exporting, displaying, advertising physically or through social networking websites or by any other mode or manner dealing in or using the impugned trademarks/ labels "ANCHOR"/ " " or any other word/ mark which may be identical and/or deceptively similar to the Plaintiff's trademarks "ANCHOR"/ " " in relation to electrical switches & accessories, sockets, way switches, switchgear and protection devices, dimmers, regulators, small fan regulators, wires and cables, lamps, lamp holders and luminaries and fans, frames, switch bottoms, button holder, pins, switch plate, and other allied/related products and packaging material, boxes, stickers, cut-outs, accessories, machineries and allied and cognate items, so as to amount to infringement or passing of Plaintiff's copyright in the label " " or its registered trademarks. Defendants are also restrained from using the Plaintiff's trade name for the impugned counterfeit products.
27. Issue notice to the Defendants, by all permissible modes, upon filing of process fee, returnable on the next date of hearing. Reply, if any, be filed within four weeks from the date of service. Rejoinder thereto, if any, be filed within two weeks thereafter.
28. Compliance of Order XXXIX Rule 3 of the Code of Civil Procedure, 1908 be done with two weeks from today.
29. List on 23rd August, 2024.
CS(COMM) 239/2024 Page 8 of 12This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/04/2024 at 21:03:18 I.A. 6378/2024 (for appointment of Local Commissioners)
30. Ms. Sharma submits that the Defendants are aware of the Plaintiff and their products, the infringing materials placed on record are clear evidence of the intention of the Defendants to ride upon the goodwill and reputation of the Plaintiff. The Plaintiffs believe that the infringing products are sold at the locations set out in the memo of parties annexed with the plaint and the Defendants are likely to remove all physical evidence or deny their involvement in the infringing activities. Therefore, in order to preserve evidence of infringement, it is necessary that Local Commissioners are appointed to visit the premises of the Defendants. Accordingly, the following are appointed as Local Commissioners with a direction to visit the premises of the Defendants specified against their name:
Name of LCs Locations
1. Defendant No. 1
Mr. Sandeep Kumar, Advocate National Lamination,
[Contact No.: +91-8899592346] Shop No.2135/2, ChahIndara, Bhagirath Palace, Delhi-
110006, India Also at:
Building 2131I51, Chahindara, Bhagirath Palace, Delhi-
110006, India.2. Defendant No. 2
Swastik International, Shop CS(COMM) 239/2024 Page 9 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/04/2024 at 21:03:19 No. 2207, G.F, Chahindara, Bhagirath Palace, Delhi-
110006, India.
Also at:
Above Vardhman Electric Co, Shop No. 2241/1, Chah Indira, Bhagirath Palace, Delhi-
110006, India.
3. Defendant No. 3 Building No. 2255, Sarai Top Khana, H.C. Sen Road, Chandni Chowk, Delhi- 110006, India. Mr. Jatin Gulia, Advocate 1. Defendant No. 4 [Contact No.: +91 8750870201] Unit Between Gali No.15-16, Behind Muthoot Finance and Fedbank, Vishwas Nagar, Delhi -110032. 2. Defendant No. 7 India Sales, ZB-36-37/487, ZulfeBangal, Dilshad Garden Industrial Area, Delhi-110095, India. Ms. Khushboo Sharma, Guru Kripa, House No.130, Advocate SantGarh, Choukhandi, Vishnu CS(COMM) 239/2024 Page 10 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/04/2024 at 21:03:20 [Contact No.: +91-7051157650] Garden, Delhi-110032 Ms. Priti, Advocate. Building No. G-21-22, [Contact No.: 9990209294] Gali No. 39-40, Mahendra Park, Adarsh Nagar, Delhi-
110033 Mr. Udit Sidhra, Advocate Next to Q.R. Enterprises, B- [Contact No.: +91 9953452870] 165A, Gali No. 7, Village Gokalpur, Delhi - 110094, India.
31. Local Commissioners, along with a 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. The Local Commissioners shall conduct a search at the respective Defendants' premises and seize all material that reflects infringement and passing off of Plaintiff's registered trademark "ANCHOR"/ " ".
32. After seizing infringing material, the same shall be inventoried, sealed, and signed by the Local Commissioners, in the presence of the parties, and released on superdari to the Defendants on their undertaking to produce the same as and when further directions are issued in this regard. The Local Commissioners shall also be permitted to make copies of the books of accounts including ledgers, cash registers, stock registers, invoices, books, etc. insofar as they pertain to the infringing products. Further, the Local Commissioners shall be permitted to undertake/arrange for CS(COMM) 239/2024 Page 11 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/04/2024 at 21:03:22 photography/ videography of the execution of the commission. Both the parties shall render full assistance to the Local Commissioners for carrying out the aforenoted directions.
33. In case any of the premises are found locked, the Local Commissioners shall be permitted to break open the lock(s). 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 Commissioners, if and when sought.
34. The fee of the Local Commissioner, to be borne by the Plaintiff, is fixed at Rs. 1,10,000/- each. The Plaintiff shall also bear expenses for travel and lodging of the Local Commissioners and other miscellaneous out-of- pocket expenses for the execution of the commission. Fee of the Local Commissioners shall be paid in advance by Plaintiff-Company.
35. The commission shall be executed within a period of two weeks from today. Reports of the Local Commissioners shall be filed within six weeks from the date of execution.
36. The application stands disposed of in the above terms.
37. Re-notify on 23rd August, 2024.
38. Dasti under signature of Court Master.
SANJEEV NARULA, J MARCH 18, 2024 as CS(COMM) 239/2024 Page 12 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/04/2024 at 21:03:24