Delhi High Court - Orders
Anurag Saxena T/As Unique ... vs Ravi Saini & Ors on 7 December, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~34
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 866/2023, I.As. 24194/2023, 24195/2023, 24196/2023,
24197/2023 & 24198/2023
ANURAG SAXENA T/AS UNIQUE
INTERNATIONAL ..... Plaintiff
Through: Ms. Kangan Roda, Mr. Nitesh, Mr.
Abhinav, Advs. (M. 8210269518)
versus
RAVI SAINI & ORS. ..... Defendants
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 07.12.2023
1. This hearing has been done through hybrid mode. I.A.24196/2023 (for additional documents)
2. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act'). The 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 and the DHC (Original Side) Rules, 2018.
3. Application is disposed of.
I.A.24195/2023 (for court fee)
4. Let the court fee be deposited and proof of deposit be furnished within one week. Application is disposed of.
CS(COMM) 866/2023 Page 1 of 15This 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 09/12/2023 at 03:07:30 I.A.24198/2023 (exemption from advance service to the Defendants)
5. In view of the fact that the Plaintiff has sought ex parte ad-interim injunction, the exemption from advance service to the Defendants is granted. Application is disposed of.
I.A.24197/2023 (u/S 12A of the Commercial Courts Act)
6. This is an application filed by the Plaintiff seeking exemption instituting pre-litigation mediation under Section 12A of the Commercial Courts Act. Considering the facts and circumstances of the case, the Court is satisfied that in terms of the judgment of the Hon'ble Supreme Court in Yamini Manohar v. T.K.D Keerthi, SLP(C) 023488/2023, that the present suit contemplates urgent interim relief. The exemption is granted to the Plaintiff.
7. Accordingly, the application is disposed of. CS (COMM) 866/2023
8. Let the plaint be registered as a suit.
9. Issue summons to the Defendants through all modes upon filing of Process Fee.
10. The summons to the Defendants shall indicate that the written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.
11. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement(s). Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication shall not CS(COMM) 866/2023 Page 2 of 15 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 09/12/2023 at 03:07:30 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.
12. List before the Joint Registrar for marking of exhibits on 23rd January, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
13. List before Court on 29th April, 2024.
I.A.24194/2023 (u/O XXXIX Rules 1 & 2 CPC)
14. Issue notice.
15. The Plaintiff - M/s. Unique International, a sole proprietorship concern of Mr. Anurag Saxena has filed the present suit against the following entities:
Ravi Saini Defendant No.1
AR Wellness Product Enterprises Defendant No.2
NKB Products Defendant No.3
Hervedic Product Enterprises Defendant No.4
AR Health Care Enterprises Defendant No.5
AR Cure Enterprises Defendant No.6
Flipkart India Private Limited Defendant No.7
Amazon Seller Service Private Limited Defendant No.8
16. The case of the Plaintiff is that the Plaintiff adopted the mark 'HAMMER OF THOR' and 'HAMMER OF GOLD' in the year 2013 in respect of ayurvedic capsules and gels. The said name/mark has been used for men's health products, which has been sold by the Plaintiff for the last 10 years, bearing the following label/mark:
CS(COMM) 866/2023 Page 3 of 15This 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 09/12/2023 at 03:07:31
17. The Plaintiff's product is also stated to be an approved ayurvedic product by the Ayush department in UP. The case of the Plaintiff is that its label and product marks are extremely distinctive in a black and white background. It has obtained registrations of mark and labels since 2018 and the details of the registrations are as under:CS(COMM) 866/2023 Page 4 of 15
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 09/12/2023 at 03:07:31 CS(COMM) 866/2023 Page 5 of 15 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 09/12/2023 at 03:07:31
18. The Plaintiff also claims to be having copyright registrations for the artistic work in the labels and trade dress of 'HAMMER OF THOR' and 'HAMMER OF GOLD' bearing registration nos. A-131202/2019 and A-
135760/2021 respectively.
CS(COMM) 866/2023 Page 6 of 15This 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 09/12/2023 at 03:07:31
19. The Plaintiff avers that it has achieved more than Rs.40 lakhs sales in the financial year 2021-22 and has invested a substantial amount of more than Rs.2 lakhs on advertising and promotional activities. The Plaintiff has been publicizing its products on various social media platforms including Facebook, YouTube, etc. Its products are also sold through various e- commerce platforms including Snapdeal, Flipkart, India Mart, etc. The Plaintiff also operates its website through the domain name https://hammersofthor.in/ since 23rd August, 2021, dedicated specially towards its products and services.
20. In the present case, the Defendants, who are all operating from Delhi, are alleged to be connected to each other. It is averred that the Plaintiff became aware of the Defendant Nos. 1 to 6 in July, 2023 through an e- commerce platform selling its products under the listing titled as 'NKB AYURVEDIC HAMMER THOREX FOOD SUPPLEMENT CAPSULE FOR MEN STAMINA (60 CAPSULES). It is stated that 'HAMMER OF THOREX' has been a prior trademark of the Plaintiff for which registration has been sought vide application nos.5452384 and 5452385 in class 3 and 5 respectively.
21. As per ld. Counsel for the Plaintiff, the Defendant Nos. 1 to 6 are selling infringing products under the brand name 'HAMMER OF THOR/HAMMER OF THOREX' with an identical packaging, colour combination, trade dress on e-commerce platforms which are Defendant Nos. 7 & 8.
22. She submits that the Defendants are camouflaging their activities by changing their name from time to time. However, GST numbers and address cited of all the Defendants are together. They are all in some CS(COMM) 866/2023 Page 7 of 15 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 09/12/2023 at 03:07:31 manner or the other related to each other and are clandestinely selling infringing products on e-commerce platforms including Amazon, Flipkart etc. The Plaintiff is stated to have discovered infringing products in mid November, 2023 and has taken steps to file the present suit. The competing labels/marks are set out below:
Plaintiff's Product Defendants Product CS(COMM) 866/2023 Page 8 of 15 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 09/12/2023 at 03:07:31
23. A perusal of the above leaves no manner of doubt that the Defendants' products images, names are nothing but a complete imitation of the Plaintiff's product's name, colour combination, trade dress etc. Considering that these are medicinal preparations, even remote chances of confusion is to be avoided in terms of Cadila Healthcare vs. Cadila Pharma, (2001) 5 SCC 73. As per the said case the Supreme Court categorically observed that strict measures shall be taken to prevent any confusion arising from similar marks in medicines. The relevant extract of the said judgement has been set out below:
"34. As far as present case is concerned, although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measurers to prevent any confusion arising from similarity of marks among medicines are required to be taken."
24. Further, in Cadila Healthcare (supra),it was held that, confusion in the case of drugs could even be dangerous to the customers and patients. In the said case, the Supreme Court also held as under:
"39. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and CS(COMM) 866/2023 Page 9 of 15 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 09/12/2023 at 03:07:31 the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3rd Edition, para 23.12 of which reads as under:
"The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints."
25. A Coordinate Bench of this Court, in FDC Limited v. Nilrise Pharmaceuticals Pvt. Ltd., 2022:DHC:3839, has also referred to the said decision in Cadila Healthcare (Supra) and observed that tests to be applied for medicinal products need to be far stricter due to the possibility of confusion resulting in public injury. The relevant extracts of the said decision are as under:
41. The submission of the learned counsel for the defendant that they be permitted to use the impugned CS(COMM) 866/2023 Page 10 of 15 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 09/12/2023 at 03:07:31 mark as they are using the prefix "ZOY" also with respect to their other medicinal preparations, also cannot be accepted. Each mark of the defendant has to be tested on its own standing. Merely because the defendant uses the prefix "ZOY" for its other medicinal preparations, it cannot be allowed to use the impugned mark even though the same is found to be deceptively similar to an already registered mark with prior use.
42. Since the products in question are medicinal products, in my opinion, the test to be applied needs to be far stricter than the one applied to other goods, as any confusion would result in public injury.
26. After having perused the trademark adopted by the Defendants and considering the fact that this is a case where goods are identical, the trade channel and customers are identical and the Defendants' marks is identical to that of the Plaintiffs' mark, shows that the 'TRIPLE IDENTITY TEST' has been satisfied by the Plaintiffs against the Defendants.
27. In Ahmed Oomerbhoy v. Gautam Tank (2007 SCC OnLine Del 1685), the word 'Postman' as well as the device mark 'Postman' was registered and in that context, this Court held that since the impugned mark 'Super Postman' was similar, goods were the same and the area in trade is also common, test of "triple identity" was satisfied, and a case for infringement and passing off were made out. This Court observed as follows:
"25. The mark used by the defendants is similar, the goods are the same and the area of trade is also common. If these three factors are same or quite similar, then the second manufacturer should not be allowed to sell its product under the same name. This principle which is also CS(COMM) 866/2023 Page 11 of 15 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 09/12/2023 at 03:07:31 termed as triple identity principle has been invoked in a number of cases. A Single Judge of this Court in Lal Sons Machines v. Sachar E & M Stores 1986 Raj LR 165 had held that in case of triple identity where the mark used by defendant is the same, the goods are the same and also the trade area it is the duty of the Court to protect the registered trademark. Another Single Judge of Calcutta High Court in Kalyani Breweries Ltd v. Khoday Brewing and Distilleries Industries Ltd. had invoked the triple identity rule. It was explained that where after marks were identified, the goods were identified and the areas over which the goods are going to be sold are identified, a second manufacturer can not be allowed to sell its product under the same trade name. Comparison of two marks, prima facie, show that the essential features of the trademark of the plaintiffs have been adopted by the defendant nos. 1 & 2. In these circumstances the minor differences in the getup, packaging and other writings on the goods or on the packets in which the goods are sold by the defendants indicating clearly the different trade origin different from the registered proprietor of the mark of the plaintiff would not be very material. The added matter, prima facie, will not be sufficient to avoid any confusion or deception. The alleged superior quality of goods of the defendants also does not entitle the defendants to any such rights as has been claimed by the defendants.
[....] The defendants can not claim any rights, prima facie as they had given an undertaking contending categorically that they will withdraw their application for registration of the name `Super Postman', if the plaintiffs will raise any objection CS(COMM) 866/2023 Page 12 of 15 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 09/12/2023 at 03:07:31 or opposition in future against the applied trade mark of the defendants. [...]"
28. Considering the above stated position in the judgment Ahmed Oomerbhoy (Supra) it is clear that in the present case also the Defendants have adopted an identical mark as that of the Plaintiffs' mark/name 'HAMMER OF THOR', in order to ride piggy back on Plaintiffs' goodwill and reputation in identical field of business, which will cause confusion to the customers.
29. Further, in Laxmikant v. Patel v. Chetanbhai Shah & Ors. (MANU/SC/0763/2001), the Supreme Court categorically observed that in cases where a case of infringement is made out, the Court ought to grant an immediate ex-parte injunction, and appoint Local Commissioner to ensure that the infringing products or services are not permitted to be sold or displayed. The relevant extract of the order is set out below:
"14. .....Once a case of passing off is made out the practice is generally to grant a prompt ex- parte injunction followed by appointment of local Commissioner, if necessary...."
17. We are conscious of the law that this Court would not ordinarily interfere with the exercise of discretion in the matter of grant of temporary injunction by the High Court and the Trial Court and substitute its own discretion therefore except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the order of the Court under scrutiny ignores the settled principles of law regulating grant or refusal of interlocutory injunction. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the CS(COMM) 866/2023 Page 13 of 15 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 09/12/2023 at 03:07:31 court below solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion [(see Wander Ltd. v. Ant ox India P. Ltd. MANU/SC/0595/1990 and N.R. Dongre v. Whirlpool Corporation and Anr.:
MANU/SC/1223/1996 : (1996)5SCC714 .
However, the present one is a case falling within the well accepted exceptions. Neither the Trial Court nor the High Court have kept in view and applied their mind to the relevant settled principles of law governing the grant or refusal of interlocutory injunction in trade mark and trade name disputes. A refusal to grant an injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff as would not be capable of being undone at a latter stage. The discretion exercised by the Trial Court and the High Court against the plaintiff, is neither reasonable nor judicious. The grant of interlocutory injunction to the plaintiff could not have been refused, therefore, it becomes obligatory on the part of this Court to interfere."
30. Considering the above position, and also the judgment in Laxmikant Patel (supra), the Plaintiff has made out a prima facie case in its favour for grant of an ex-parte injunction. Balance of convenience also lies in favour of the Plaintiff considering that these are medicinal products and Defendants have adopted an almost identical mark for selling identical products, if an CS(COMM) 866/2023 Page 14 of 15 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 09/12/2023 at 03:07:32 injunction is not granted in the present case it will cause irreparable loss/harm not only to the Plaintiff but also to the health of consumers who may be under the impression that these are Plaintiff's products.
31. Accordingly, the Defendants and anyone else acting for or on their behalf shall be restrained from using the mark 'HAMMER OF THOR/HAMMER OF THOREX' or any other mark which is identical and similar to the Plaintiff's mark 'HAMMER OF THOR' for ayurvedic capsules or any other pharmaceutical preparations. The Defendants are also restrained from using the infringing label marks, logos, packaging, trade dress, containers which are nothing but a slavish imitation of the Plaintiff's mark 'HAMMER OF THOR' products.
32. Compliance of Order XXXIX Rule 3 CPC, 1908 be made within one week. Injunction order shall be issued subject to showing proof of deposit of court fee.
33. Reply to the application be filed within four weeks from the service of the present order along with the paper book.
34. List before the Joint Registrar on 23rd January, 2024.
35. List before Court on 29th April, 2024.
PRATHIBA M. SINGH, J.
DECEMBER 07, 2023/dk/ks CS(COMM) 866/2023 Page 15 of 15 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 09/12/2023 at 03:07:32