Delhi High Court
Everstone Capital Advisors Pvt. Ltd. vs Everstone Ventures Llp on 14 March, 2019
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 14th March, 2019
+ CS(COMM) No.880/2018 & IA Nos. 6815/18 (u/O XXXIX R 1&2),
3762/19 (of plaintiff u/o VIII R 10)
EVERSTONE CAPITAL ADVISORS PVT. LTD. .... Plaintiff
Through: Mr. Chander M. Lall, Sr. Adv. with
Ms. Shikha Sachdeva & Ms. Mugdha
Palsule, Advs..
Versus
EVERSTONE VENTURES LLP ......Defendant
Through: Mr. Darpan Wadhwa, Sr. Adv. with
Mr. Siddharth Sharma, Mr. Rajat
Mittal, Mr. Toyesh Tewari & Ms.
Shruti Arora, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The plaintiff has instituted this suit to restrain the defendant from
infringing the trade mark „EVERSTONE‟ of the plaintiff and thereby
passing off its goods and services as those of the plaintiff, and for ancillary
reliefs.
2. The suit came up first before this Court on 16th May, 2018 when
though the suit was entertained and summons thereof ordered to be issued
but on the counsel for the plaintiff not pressing for interim orders at that
stage with liberty to pray for the same subsequently, no interim relief
granted. The defendant, despite service failed to file written statement
within the prescribed time and vide order dated 25 th February, 2019 the
written statement filed by the defendant beyond prescribed time was taken
off the record. The plaintiff has filed IA No.3762/2019 under Order VIII
Rule 10 CPC for pronouncement of judgment forthwith.
CS(COMM) No.880/2018 Page 1 of 17
3. The senior counsel for the plaintiff and the senior counsel for the
defendant have been heard.
4. The plaintiff has instituted this suit pleading, that (i) the plaintiff is a
private equity / venture capital and real estate investment firm focused on
supporting the growth aspirations of entrepreneurs, corporations and asset
owners across India and Southeast Asia and commenced business in the year
2008 under the name and style of „New Age Investment Advisors Ltd.‟
which was changed to „New Edge Investment Advisors Ltd.‟ in the same
year; in the year 2009, the name of the plaintiff was changed to „Everstone
Investment Advisors Ltd.‟ and again changed to „Everstone Investment
Advisors Pvt. Ltd.‟ in the same year; in the year 2011, the name of the
plaintiff again changed to the present name of „Everstone Capital Advisors
Pvt. Ltd.‟; (ii) „EVERSTONE‟ was coined and has been used since the year
2009 by the plaintiff with respect to the services provided by it; (iii) the
plaintiff, at the time of institution of this suit was managing assets of
approximately US$ 4 billion spanning sovereign wealth and pension funds,
endowments, foundations and other global institutions; (iv) the plaintiff has a
significant resource base with offices in India, Singapore, London and
Mauritius; (v) the plaintiff has investments in over 30 companies across
India, Southeast Asia and the United States, across all sectors; (vi) the
plaintiff, in collaboration with joint venture partners is also one of the top
industrial and commercial real estate developers; (vii) the plaintiff, since the
year 2009 has a website http://www.everstonecapital.com dedicated to
providing information about the plaintiff and accessible all over the world;
(viii) the word mark „EVERSTONE‟ is registered in favour of the plaintiff in
(a) Class 16 [paper, card board and goods made from these materials not
CS(COMM) No.880/2018 Page 2 of 17
included in other classes; printed matter (publication); book binding
material; photographs; stationery; adhesives for stationery or household
purposes; artists materials; paint brushes; typewriters and office requisites
(except furniture); instructional and teaching material (except apparatus);
plastic materials for packaging (not included in other classes); playing cards;
printers‟ type; printing blocks)]; (b) in Class 35 [Advertising, Business
Management, Business Administration, Office Functions]; and, (c) Class 36
[Insurance, Financial Affairs, Monetary Affairs, Real Estate Affairs], all with
effect from 19th November, 2009; (ix) the said trade mark also reflects in
trade name of the plaintiff; (x) the plaintiff, in a search made in December,
2017 on the website of the Ministry of Corporate Affairs discovered that the
defendant, on 20th December, 2017 had applied for registration of the
corporate name „Everstone Ventures LLP‟ for its proposed business venture;
(xi) on making investigation, it was found that the defendant was yet to
commence business under the mark „EVERSTONE‟ or use thereof as trade
mark / corporate name; (xii) the plaintiff, on 27th December, 2017 protested
to the Ministry of Corporate Affairs for granting the name „EVERSTONE‟,
which is the registered trade mark of the plaintiff, to the defendant; (xiii)
despite protest of the plaintiff, the defendant was registered on 24th January,
2018; however the Ministry of Corporate Affairs vide its letter dated 16th
February, 2018 informed the defendant of protest of the plaintiff; (xiv) on
making further enquiries, it was learnt that the defendant‟s proposed business
was in the filed of mining and quarrying; (xv) the defendant was earlier an
unregistered partnership concern under the name and style of „Everstone
Ventures‟, since 19th December, 2017 and which on 3rd January, 2018 had
applied for conversion to a limited liability partnership; (xvi) the only reason
CS(COMM) No.880/2018 Page 3 of 17
for the defendant to adopt such a name for itself is to mislead the general
public into thinking the business venture of the defendant as connected with
and / or affiliated to the plaintiff when in fact no such trade connection
exists; and, (xvii) the name of the defendant is likely to cause confusion and
mislead general public into believing that the plaintiff has started yet another
venture in collaboration with the promoters of the defendant.
5. Since there is no written statement of the defendant but the defendant,
in law is entitled to show that the plaintiff on its own case is not entitled to
the decree claimed, opportunity has been given first to the senior counsel for
the defendant to urge why the plaintiff should not be granted the decree of
permanent injunction as sought.
6. The senior counsel for the defendant, (i) has drawn attention to para
no.16 of the plaint where the plaintiff has pleaded the registrations in its
favour in Classes 16,35 and 36 and thereafter to para no.12 of the plaint
where the plaintiff has named some of its portfolio companies; (ii) has
contended that the plaintiff neither has a registration in Class 37 in which the
business of the defendant of mining falls nor has claimed to be carrying on
the said business or having made any investments in any such business; (iii)
has contended that the defendant is not using „EVERSTONE‟ as a trade
mark and is using „EVERSTONE‟ only as a part of its trade name; (iv) has
invited attention to Section 29 (2), (4) and (5) of the Trade Marks Act; (v)
has invited attention to Raymond Ltd. Vs. Raymond Pharmaceuticals Pvt.
Ltd. (2010) 7 Mah.L.J. 646, inter alia laying down the interpretation of
Section 29 of the Trade Marks Act, 1999; (vi) has drawn attention to
Mankind Pharma Ltd. Vs. Chandra Mani Tiwari 2018 SCC OnLine Del
9678 where I have concurred with the dicta aforesaid of the Division Bench
CS(COMM) No.880/2018 Page 4 of 17
of the Bombay High Court; and, (vii) has contended that the defendant is
willing to give an undertaking that it will use „EVERSTONE‟ only as part
of its trade name, as is being done, and not as a trade mark and not in any
other context.
7. Per contra, the senior counsel for the plaintiff has argued (i) that the
plaintiff, being a venture capital fund can fund a venture and/or invest in and
lend its mark „EVERSTONE‟ in business also in the field of mining; (ii)
that the plaintiff admittedly is the prior adopter of the mark, having adopted
the mark in the year 2008; the defendant adopted the mark only in the year
2017; (iii) that the plaintiff has a reputation; attention in this regard is invited
to paras 8 & 9 of the plaint; though generally the plaintiff does not give its
mark „EVERSTONE‟ to the businesses in which it invests but the plaintiff is
prominently shown as investor in such businesses and which adds to the
viability of the said business and the public starts viewing the said business
in a positive way; (iv) that the plaintiff took objection to the name adopted
by the defendant immediately after the defendant applied for registration and
the defendant was registered notwithstanding the objection by the plaintiff;
(v) though the plaintiff represented that its objection had not been considered
but the Registrar of Companies, being the Authority under which an LLP is
registered under Section 15 of the Limited Liability Partnership Act, 2008
has not acted thereon owing to the matter being sub judice in this Court; (vi)
that Class 35, in which the mark of the plaintiff is registered, includes
Business Management, Business Administration and Business Management,
which are very wide terms and cannot be restricted to any one class of
businesses; (vii) similarly, Class 36 in which also the mark of the plaintiff is
registered, includes monetary affairs and which can also be pertaining to any
CS(COMM) No.880/2018 Page 5 of 17
sector of the industry including mining; (viii) that it is thus not open to the
defendant to contend that the plaintiff does not have registration of its mark
in the class in which the business of the defendant falls; (ix) that the name of
the defendant i.e. Everstone Ventures LLP does not indicate that the
defendant is confined to the business of mining and suggests that the
defendant participates with others and/or gives financial assistance to others;
(x) thus, as per the name of the defendant, the business of the plaintiff as
well as the defendant is the same; (xi) that the plaintiff thus has a case for
infringement of trade mark under Section 29 of the Act as well as of passing
off; (xii) that the definition of the trade mark in Section 2(m) of the Act
includes trade name and thus use as a trade name is use as a trade mark;
(xiii) reliance is placed on Montari Overseas Limited Vs. Montari
Industries Limited (1995) 15 PTC 399 Del (DB), a case of similar trade
names and where the Division Bench of this Court held that adoption of
similar trade name was likely to result in appropriation of reputation and
goodwill; (xiv) attention is invited to ex parte order dated 17th July, 2018 in
CS(COMM) No.1028/2016 titled Everstone Capital Advisors Private
Limited Vs. Akansha Sharma holding „Everstone‟ and „Everstone Capital‟
to be well known not only abroad but also in India; and, (xv) attention is
invited to Rolex SA Vs. Alex Jewellery Pvt. Ltd. 2010 SCC OnLine Bom
967 qua Section 29(4) of the Trade Marks Act and Laxmikant V. Patel Vs.
Chetanbhat Shah (2002) 3 SCC 65 holding that name of a business will
normally have attached to it a goodwill that the Courts will protect.
8. The senior counsel for the defendant in rejoinder has argued that the
arguments of the plaintiff are contrary to the dicta of the Division Bench of
CS(COMM) No.880/2018 Page 6 of 17
the High Court of Bombay in Raymond Limited supra which was agreed to
by me in Mankind Pharma Ltd.
9. During the hearing, on my asking the procedure for registration of a
limited liability partnership, my attention was drawn by the senior counsel
for the plaintiff to Section 15 of the Limited Liability Partnership (LLP) Act,
2008. Section 15 of the LLP Act is as under:-
"15. Name.--(1) Every limited liability partnership
shall have either the words "limited liability partnership"
or the acronym "LLP" as the last words of its name.
(2) No limited liability partnership shall be registered
by a name which, in the opinion of the Central
Government is--
(a) undesirable; or
(b) identical or too nearly resembles to that of any other
partnership firm or limited liability partnership or body
corporate or a registered trade mark, or a trade mark
which is the subject matter of an application for
registration, of any other person under the Trade Marks
Act, 1999 (47 of 1999)".
It was also the contention of the senior counsel for the defendant that
the power or jurisdiction to decide whether the name of an LLP of which
registration is sought is identical or too nearly resembles to that of any other
company is of the Registrar of Companies and not of this Court.
10. The senior counsel for the plaintiff at the close of hearing also handed
over a copy of Bloomberg Finance LP Vs. Prafull Saklecha 2013 (56) PTC
243 (Del) holding that adoption by the defendants in that case of the mark of
the plaintiff as part of their corporate name was likely to deceive the public
into thinking that services and products offered by the defendant were that of
the plaintiff or as originated from the plaintiff.
CS(COMM) No.880/2018 Page 7 of 17
11. I have considered the rival contentions. It is borne out from undisputed
documents on record/handed over during the course of hearing, that (i) Mr.
Prateek Mittal on 20th December, 2017 applied to the Registrar of
Companies, NCT of Delhi & Haryana, for registration of a limited liability
partnership in the name of Everstone Ventures LLP; (ii) the plaintiff, on 27 th
December, 2017 represented to the Ministry of Corporate Affairs that it was
the registered proprietor of the trade mark „EVERSTONE‟ and that an entity
with a name which was considered "undesirable" could not be registered and
a name is considered "undesirable" if it inter alia includes the name of a
trade mark and that it had come to the knowledge of the plaintiff that
registration of an LLP in the name of „Everstone Ventures LLP‟ had been
sought and requesting that no registration be granted of „Everstone Ventures
LLP‟; (iii) however, without dealing with the aforesaid representation of the
plaintiff, the registration in the name of the defendant was granted on 24 th
January, 2018; (iv) that the representation dated 27th December, 2017 of the
plaintiff was forwarded by the Registrar of Companies to the defendant vide
notice dated 16th February, 2018; (v) the defendant, vide its communication
dated 17th March, 2018 to the Registrar of Companies, informed that the
plaintiff was entitled to use „EVERSTONE‟ only in respect of services
provided by it, namely Capital Advisory and Equities and cannot preclude
any other concern from using the mark „EVERSTONE‟ for a different class
of goods/services; (vi) the plaintiff made another representation dated 4th
May, 2018 to the Registrar of Companies; (vii) the Registrar of Companies
forwarded the aforesaid reply of the defendant to the plaintiff and scheduled
a hearing on 4th September, 2018 and thereafter on 8th October, 2018; and,
(viii) the Registrar of Companies vide order dated 26th November, 2018
CS(COMM) No.880/2018 Page 8 of 17
disposed of the representations of the plaintiff observing that since the
plaintiff had already approached this Court for directions to the defendant to
change its name and the matter was sub judice, the application could not be
considered at that stage.
12. I have already reproduced hereinabove Section 15(2)(b) of the LLP
Act. Thereunder, de hors the Trade Marks Act, there is a bar to registration
of LLP by a name which is undesirable and/or which is identical or too
nearly resembles to that of any other partnership firm or limited liability
partnership or body corporate or a trade mark or even a trade mark subject
matter of an application for registration as defined therein. Section 17 of LLP
Act further authorizes the Central Government, if satisfied that an LLP has
been registered, whether through inadvertence or otherwise and whether
originally or by a change of name, under a name which is referred to in
Section 15 (2) or is identical with or too nearly resembles the name of any
other limited liability partnership or body corporate or other name as to be
likely to be mistaken for it, to direct such LLP to change its name and
mandates the LLP to comply with the said direction within three months
after the date of the direction and any LLP which fails to comply with a
direction in this regard is made punishable with fine as provided therein.
Section 18 of the LLP Act provides for an application for a direction against
an LLP on a ground under Section 17, to be made within 24 months from the
date of registration of the LLP under the impugned name and Section 19
empowers an LLP to, on its own apply for change of name by filing with the
Registrar a notice of such change.
13. Section 15(2)(b) supra, while laying down the test for registration of a
name of the LLP, besides the test of "identity or resemblance with a trade
CS(COMM) No.880/2018 Page 9 of 17
mark", also lays down the test of "identity with and/or resemblance with the
name of any other body corporate", and while doing so does not lay down
any further requirement of such body corporate being engaged in the same
business as the business for which registration of the LLP is sought. In my
opinion, to the bar under Section 15(2)(b), the argument urged by the senior
counsel for the defendant, of the registration of the trade mark in favour of
the plaintiff being in a class of business different from the class of business
for carrying which the defendant is incorporated, will not apply. No case for
this Court to read into Section 15(2)(b) any such restriction is made out and
doing so will amount to adding to the words used by the legislature and
which is contrary to the principles of statutory interpretation. Reference in
this regard can be made to Prabhudas Damodar Kotecha Vs. Manhabala
Jeram Damodar (2013) 15 SCC 358, V.L.S. Finance Ltd. Vs. UOI (2013) 6
SCC 278, Great Offshore Ltd. Vs. Iranian Offshore Engineering &
Construction Company (2008) 14 SCC 240 and Raghunath Rai Bareja Vs.
Punjab National Bank (2007) 2 SCC 230.
14. Section 15 of the LLP Act is identical to Section 20 and 22 of the
Companies Act, 1956 which are equivalent to Section 16 of the Companies
Act, 2013, both of which also do not contain any such restriction, of the
previously incorporated company with which the name of the proposed
company is identical or resembles with, being in the same business as the
business for which the proposed company is being incorporated. I have in
International Trade & Exhibitions India Pvt. Ltd. Vs. Regional Director
North 2011 SCC OnLine Del 4011 held that the test under Section 22 of the
Companies Act, 1956 being restricted to "identical with or too near
resemblance" with the name by which a company in existence has been
CS(COMM) No.880/2018 Page 10 of 17
previously registered or with a registered trade mark, could not be read as
"identical with and too near resemblance" with name used by company but
by which it is not registered. Reference in this regard can also be made to
Rule 8 of Companies (Incorporation) Rules, 2014 & Name Availability
Guidelines dated 8th July, 2011 issued by Ministry of Corporate Affairs,
Government of India.
15. In the present case the name „Everstone Ventures LLP‟ of the
defendant, indisputably incorporated after the plaintiff, is found to be
identical with and/or resembling the name „Everstone Capital Advisors
Private Limited‟ of the plaintiff, admittedly incorporated nearly nine years
earlier and I say so not only because the first name „EVERSTONE‟ is the
same but also because the subsequent words „Capital Advisors Private
Limited‟ in the name of the plaintiff and „Ventures LLP‟ in the name of the
defendant also show resemblance of business of the two. Further, Rule 8 of
the Companies (Incorporation) Rules, 2014 provides that in determining
whether a name is identical with another, differences on account of words
like "Private", "Limited", "LLP" etc. shall be disregarded. Though the
defendant claims to be involved in mining activities but there is nothing to
show the objects which the defendant is entitled to carry on as per its
incorporation document. Though such a document was asked from the senior
counsel for the defendant and which per Section 11(2)(c) of the LLP Act is
required to have and which would have disclosed the proposed business of
the defendant, but the senior counsel for the defendant stated that neither was
he carrying the said document nor has perused the same. Generally, in the
Memorandum of Association of Companies, also lodged with the Registrar
of Companies, it is a practice to include all kinds of businesses so as not to
CS(COMM) No.880/2018 Page 11 of 17
be a restriction on a new business, materially different from what was
initially intended to be carried on, being commenced. Since the procedure for
registration of the LLP is the same as that of a company, I can safely assume
that under the incorporation document of the defendant also, the defendant
would be entitled to carry on all kinds of businesses including those for
which the plaintiff has been incorporated. Adverse inference can also be
drawn from the fact that after the hearing also, when this order was under
correction, no such document has been handed over. Reference in this
regard can be made to Union of India Vs. Ibrahim Uddin (2018) 8 SCC 148
and Gopal Krishnaji Ketkar Vs. Mohamed Haji Latif AIR 1968 SC 1413.
16. This Court, in K.G. Khosla Compressors Ltd. Vs. Khosla Extrakting
Ltd. AIR 1986 Del 181 held that (i) a right to incorporate a company in a
particular name is a statutory right and there is no unrestricted right in any
person to have a company incorporated in his own name or in the name of
his family members; (ii) the Central Government, under Section 22 of the
Companies Act, 1956 has power to grant only punishment and no power to
grant injunction; thus the Civil Court also has jurisdiction in this respect; (iii)
passing off action need not merely relate to the goods; (iv) that in the
absence of any reason pleaded for adopting the same name, it has to be
assumed to have been adopted to cash the goodwill and reputation of
plaintiff. In CGMP Pharmaplan Pvt. Ltd. Vs. Regional Director, Ministry
of Corporate Affairs (2010) 171 DLT 84, it was held that the powers of
Central Government under Section 22 of the Companies Act, 1956 are wider
than the powers of the Civil Courts in determining passing off; under Section
22, there is no need to examine whether there is likelihood of deception or
confusion and mere resemblance to a registered name is sufficient.
CS(COMM) No.880/2018 Page 12 of 17
17. Thus, irrespective of dissimilarity in business, even if any, of the
defendant from that of the plaintiff, the registration of the defendant is
violative of Section 15(2)(b) of the LLP Act.
18. The only other question which remains to be considered is, whether
the satisfaction contemplated under Section 15 of the LLP Act is to be of the
Registrar of Companies only and this Court is excluded from going into the
said aspect. In the aforesaid facts of the present case, the plaintiff admittedly
approached the Registrar of Companies well prior to grant of incorporation
to the defendant but the Registrar of Companies granted incorporation
without dealing with the said objection. When the plaintiff pursued by
applying under Section 18 of the LLP Act, the Registrar of Companies is
found to have abdicated his jurisdiction by merely observing that the matter
was sub judice in this Court. In these circumstances, I am of the view that the
Courts are required to put an end to litigation and disputes rather than
encouraging the same. Reference in this regard can be made to Mex
Switchgears Pvt. Ltd. Vs. Max Switchgears Pvt. Ltd. 2014 SCC OnLine Del
854. Once it is found that the registration in the name of the defendant
violates Section 15 of the LLP Act and the Registrar of Companies has failed
to deal with the representation of the plaintiff in this respect, the Court would
not still direct the Registrar of Companies to decide and which would only
lead to first round of litigation before the Registrar of Companies and
thereafter availing of remedies thereagainst by the aggrieved party. Thus, in
the facts and circumstances of the case I am of the view that this Court
having found the registration in the name of the defendant to be violative of
Section 15, is competent to pass the necessary directions.
CS(COMM) No.880/2018 Page 13 of 17
19. Though the plaintiff in accordance with the aforesaid alone is entitled
to a decree for permanent and mandatory injunction but for the sake of
completeness, it is deemed appropriate to deal with the other aspects also.
20. The challenge by the senior counsel for the defendant in this regard is
that the class of goods/services in which the mark of the plaintiff is being
registered being different and alien from the class in which the business of
the defendant falls.
21. I have already hereinabove observed that the defendant has not placed
before this Court, the document of its incorporation to show the businesses to
carry for which it is incorporated. Thus, merely because the defendant
presently claims to be carrying on business of mining, would not entitle the
defendant to defeat the reliefs sought by the plaintiff.
22. Even otherwise, the contention of the counsel for the defendants is of
the business of mining falling in Class 37.
23. Clause 37, per 4th Schedule to the Trade Marks Rules, 2002 titled
"Classification of Goods and Services - Name of the Classes" is with respect
to building construction, repair and installation services. The senior counsel
for the defendant however handed over in the Court an extract from internal
classification, showing "Extraction (Mining), Mining services, Diamond
mining, Mining extraction, Mining extraction services, Mining for precious
metals, Mining for precious stones, Repair of mining machinery,
Maintenance and repair of mining equipment" falling in Class 37.
24. The business of Venture Capital Fund/Private Equity Fund/Real Estate
Investment Firm which the plaintiff is carrying is a new age business which
was not in the contemplation in the old world. As argued by the senior
counsel for the plaintiff, the said business, depending upon the way the wind
CS(COMM) No.880/2018 Page 14 of 17
is blowing and where the money is accruing, can take any colour and hue,
even of mining services and/or mining extraction. I have perused Classes 35
to 45 under the head "Services" of the 4th Schedule aforesaid and find such a
business to be falling in Classes 35 & 36 within the meaning of Section 7 of
the Trade Marks Act which provides the said classification to be, as far as
possible, in accordance with international classification of goods and
services for the purpose of registration of trade marks. It thus cannot be said
that the registration of the marks of the plaintiff is in a class in which the
services provided by the plaintiff do not fall. This, coupled with the fact that
business in the said Class can be in any sector of the industry, defeats the
contention of the senior counsel for the defendant of the plaintiff being not
entitled to relief on the ground of infringement for the reason of the
business/services of the defendant falling in a different Class than in which
the mark of the plaintiff is registered.
25. Once it is so held, the contention of the senior counsel for the
defendant relying on Raymond Ltd. and Mankind Pharma Ltd. supra also
does not survive. I may however mention that in Raymond Ltd. no case for
infringement was found since the mark of the plaintiff was registered in
respect of textile goods and the trade mark of the defendant carrying on
business of manufacturing and selling pharmaceutical products, falling in
Class 5 was in relation to an entirely different Class. This is however not the
position here.
26. That leaves only the argument of the defendant, of use by the
defendant of the mark of the plaintiff as a trade name not amounting to
infringement and/or passing off.
CS(COMM) No.880/2018 Page 15 of 17
27. In this respect also, I am unable to agree with the senior counsel for
the defendant. Section 2(1)(m) relied upon by the senior counsel for the
plaintiff, while defining "mark" includes brand, name, word and Section
2(1)(zb) defines "trade mark" as a mark capable of distinguishing the goods
or services of one person from those of others. Thus, use by the defendant of
the mark of the plaintiff as part of its trade name also would amount to use as
a trade mark and considering the new age business of the plaintiff, is likely
to convey that the defendant is a venture of the plaintiff and/or is supported
by the plaintiff and/or has blessings of the plaintiff and which may lead to
unwary people of the trade also investing in the defendant and/or supporting
or transacting with the defendant and which qualifies the test of infringement
as well as passing off. Reliance in this regard can be placed on Sunder
Parmanand Lalwani Vs. Caltex (India) Ltd. AIR 1969 Bom 24, Bata India
Ltd. Vs. Pyare Lal & Co., Meerut City AIR 1985 All 79, Kirloskar Diesel
Recon Pvt. Ltd. Vs. Kirloskar Proprietary Ltd. AIR 1996 Bom 149
Mahendra & Mahendra Paper Mills Ltd. Vs. Mahindra & Mahindra Ltd.
(2002) 2 SCC 147 and Larsen & Toubro Ltd. Vs. Lachmi Narain Traders
ILR (2008) 2 Del 687.
28. I am therefore satisfied that the plaintiff is entitled to the relief of
permanent injunction as sought in prayer paragraph A(i) & (ii) of the
amended plaint verified on 14th February, 2019. The defendant is thus
directed to, on or before 30th April, 2019 apply to the Registrar of Companies
under Section 19 of the LLP Act for change of its name by filing a notice of
such change in such format and manner and on payment of such fee as may
be prescribed and the Registrar of Companies, NCT of Delhi & Haryana is
directed to process the said application of the defendant within further 30
CS(COMM) No.880/2018 Page 16 of 17
days thereafter and a decree for permanent injunction shall come into
operation, immediately on such change of name being allowed by the
Registrar of Companies.
29. However in the facts and circumstances of the case, the plaintiff is not
found entitled to any of the other reliefs claimed.
30. The plaintiff shall however be entitled to costs of the suit as the
conduct of the defendant, of refusing to change the name inspite of the
plaintiff objecting thereto prior to incorporation of the defendant and
thereafter is found to be mala fide. The defendant has not given any reason
whatsoever for adopting the name of the plaintiff. It is also not the case of
the defendant that he was not aware of the plaintiff. The defendant, in any
case, on objection being raised by the plaintiff ought to have opted for
another name. The plaintiff is thus entitled to costs of the suit with
professional fee assessed at Rs.3.5 lacs.
Decree sheet be drawn up.
RAJIV SAHAI ENDLAW, J.
MARCH 14, 2019 „gsr/pp‟ (corrected & released on 10th April, 2019) CS(COMM) No.880/2018 Page 17 of 17