Delhi High Court - Orders
Khadi And Village Industries ... vs Mr. Aman Handa And Others on 18 March, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~38
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 204/2024
KHADI AND VILLAGE INDUSTRIES COMMISSION
..... Plaintiff
Through: Mr. Shwetasree Majumder, Ms.
Devyani Nath, Ms. Aiswarya
Debadarshni, Advocates.
versus
MR. AMAN HANDA AND OTHERS ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 18.03.2024 I.A. 5450/2024 (u/Section 12A of the Commercial Courts Act, 2015 r/w Section 151 of the Code of Civil Procedure, 1908)
1. 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.
2. Disposed of.
I.A. 5451/2024 (seeking leave to file additional documents)
3. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
4. If Plaintiff wishes to file additional documents at a later stage, they shall do so strictly as per the provisions of the said Act.
CS(COMM) 204/2024 Page 1 of 11This 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 21/03/2024 at 21:49:52
5. Accordingly, the application stands disposed of.
I.A. 5452/2024 (seeking exemption from filing originals, clear copies and documents with proper margins)
6. Exemption is granted, subject to all just exceptions.
7. The Plaintiff shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
8. Accordingly, the application stands disposed of.
CS(COMM) 204/2024
9. Let the plaint be registered as a suit.
10. 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.
11. 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.
12023 SCC OnLine SC 1382.
CS(COMM) 204/2024 Page 2 of 11This 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 21/03/2024 at 21:49:52
12. List before the Joint Registrar for marking of exhibits on 22nd May, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
13. List before Court for framing of issues thereafter.
I.A. 5449/2024 (u/Order XXXIX Rules 1 & 2 r/w Section 151 of the Code of Civil Procedure, 1908)
14. Ms. Shwetasree Majumder, counsel for Plaintiff, has presented the following facts and contentions:
14.1. Plaintiff/ Khadi & Village Industries Commission is the registered proprietor of the marks "KHADI", " " and " "
[collectively, "KHADI Trademarks"].
14.2. Plaintiff is a statutory body established under the Khadi and Village Industries Commission Act, 1956 for the promotion and development of textiles. Their products range from food products to stationery and apparel, which are sold through retail outlets, exhibitions, their website "www.khadiindia.gov.in" and third-party e-commerce websites. Pertinently, Plaintiff is also engaged in the sale of cosmetic products, soaps, shampoos, agro-based edible products, etc. Plaintiff also has a considerable social media presence and operates a mobile application by the name of "Khadi India".
14.3. Plaintiff adopted the trademark "KHADI" on 25th September, 1956 and has been continuously using the same for its products ever since. Plaintiff's KHADI Trademarks are registered across several classes, particulars whereof are mentioned in Paragraph No. 11 of the plaint. The CS(COMM) 204/2024 Page 3 of 11 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 21/03/2024 at 21:49:53 mark "KHADI" has also been recognized as a 'well-known' trademark by the Trademarks Registry. This extensive and uninterrupted use has resulted in the KHADI Trademarks becoming a source identifier for the Plaintiff, with instant recall in the mind of the consuming public. 14.4. Any person desirous of selling products under the KHADI Trademarks has to obtain a valid certificate from Plaintiff as per the Khadi and Village Industries Commission Act, 1956, Khadi and Village Industries Commission Regulations, 2007 and Khadi Mark Regulations, 2013. Plaintiff also implements the Prime Minister's Employment Generation Programme, whereunder a subsidy is provided for setting up of new enterprises for trade of products under KHADI Trademarks. Plaintiff has spearheaded a huge growth in the manufacture and sale of personal care products under the KHADI Trademarks and has spent considerable resources in promoting it. 14.5. Defendant No. 1 is the sole proprietor of the firm 'M/s Magic of Herbs'. Defendant No. 2 is the sole proprietor of 'M/s Khadi Herbal Research Laboratories' and Defendant No. 3 is the sole proprietor of 'M/s Khadi Bharat'. Defendants No. 1, 2 and 3 are inter-related and collectively engaged in the business of manufacturing, marketing, advertising and soliciting cosmetic products under the marks "KHADI", "KHADI NATURAL", "KHADI ORGANIC", CS(COMM) 204/2024 Page 4 of 11 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 21/03/2024 at 21:49:53 and " [collectively, "Impugned Marks"] 14.6. Defendants have also filed applications for registration in respect of the Impugned Marks. Defendant No. 1 has filed application No. 5131102 for " "2 and application No. 4925541 for " " in Class 5. Defendant No. 2 has filed application No. 3639988 for the mark " " and application No. 3639989 for the mark " " in Class 5. All the aforenoted applications have been filed on a 'Proposed to be Used' basis. Additionally, Defendants No. 2 and 3 are also using the trade names "KHADI HERBAL RESEARCH LABORATORIES" and "KHADI BHARAT" [collectively, "Impugned Trade Names"].
14.7. Plaintiff's grievance arises on account of the Defendants having dishonestly adopted the aforenoted Impugned Marks and Impugned Trade 2 Application No. 5131102 has been filed in the name of Defendant No.1 's sole proprietorship, M/s Magic of Herbs.
CS(COMM) 204/2024 Page 5 of 11This 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 21/03/2024 at 21:49:53 Names, which entirely incorporate the Plaintiff's KHADI Trademarks, thus amounting to infringement and passing off of the same. 14.8. In the first week of August 2023, during a routine survey on the Trade Marks Registry, Plaintiff came across Defendant No. 1's application No. 4925541 for registration of the mark " " in Class 5, which stood objected to by the Trade Marks Registry. As on date, the aforesaid application stands refused on account of being similar to the Plaintiff's KHADI trademarks.
14.9. Upon further enquiries, it was revealed that the Defendant No.1 is operating a page on www.indiamart.com under the name of its proprietorship concern i.e., 'Magic of Herbs' wherein it was found that Defendant No. 1 is also dealing in cosmetic products under the marks " ", " " and . Plaintiff thereafter conducted a detailed search and came across several listings of impugned products bearing the aforenoted marks on e-commerce platforms i.e. www.amazon.in and www.flipkart.com. Several of such listings mentioned the proprietorship concerns of Defendants No. 2 and 3 as manufacturers of the impugned products. An illustrative screenshot of such impugned listings is extracted as under:
CS(COMM) 204/2024 Page 6 of 11This 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 21/03/2024 at 21:49:53 14.10. Plaintiff also came across the Facebook page3 of the Defendant No.1 under its proprietorship concern, which revealed that apart from the " ", " ", " "
and " " marks, the Defendants have also been using
" ", " ", " " and
" " on its Facebook posts.
3
Link: https://www.facebook.com/magicofherbs22 CS(COMM) 204/2024 Page 7 of 11 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 21/03/2024 at 21:49:57 14.11. In view of the above background, the Plaintiff, through their legal representatives, addressed a legal notice dated 25th August, 2023, to the Defendants, demanding them to, inter alia, withdraw trademark application no. 4925541; and cease-and-desist the use of the Impugned Trade Names and Impugned Marks. However, despite attempts to follow up by the Plaintiff, no response has been received.
14.12. In order to ascertain the exact manner of use, the Plaintiff placed an order for the Defendants' products in November 2023 on www.amazon.com, which was delivered to the Plaintiff's representative in Delhi on 24th November, 2023. The impugned products display the Impugned Marks " " and " " imprinted on them, both of which wholly incorporated the Plaintiff's "KHADI" trademark. Further, the reverse-side of the packaging of the impugned products mention the proprietorship concerns of Defendants No. 1 and 2 as manufacturers. Moreover, Defendant No. 1 appears to be misrepresenting their authorization under the REGP certificate granted in his favour, which permits use of the Plaintiff's KHADI Trademarks, to also include use of the aforenoted Impugned Marks. The impugned goods are depicted hereinunder:
CS(COMM) 204/2024 Page 8 of 11This 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 21/03/2024 at 21:49:58 14.13. Thus, the Defendants, despite being put to notice of Plaintiff's rights in KHADI trademarks on several occasions, is continuing to use the Impugned Marks and Impugned Trade Names to deliberately misrepresent their impugned products to be those of the Plaintiff/ associated with the Plaintiff. In such circumstances, in absence of any authorization from the Plaintiff to use their "KHADI" trademark in respect of the Impugned Marks and Trade Names, the present suit is filed seeking inter alia permanent injunction against infringement and passing off of the Plaintiff's KHADI Trademarks by the Defendants.CS(COMM) 204/2024 Page 9 of 11
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 21/03/2024 at 21:49:58
15. Although advance service of the suit paper-book has been effected on the Defendants, proof whereof has been placed on record, there is no appearance on behalf of the Defendatns. Nonetheless, in view of the urgency expressed, the Court has proceeded to adjudicate the issue of grant of ex- parte ad-interim injunction. The Defendants' Impugned Marks clearly utilise the Plaintiff's trademark 'KHADI' in its entirety. Moreover, considering the fact that the Defendants are using the Impugned Mark in respect of identical goods as those sold by the Plaintiff under their KHADI Trademarks, there is a strong likelihood of confusion between the products for unwary customers, which would result in erosion of the goodwill and reputation of the Plaintiff's KHADI Trademarks. The fact that the Defendants' trademark applications in respect of the Impugned Marks have also been refused by the Trademark Registry, citing the Plaintiff's prior registrations for the KHADI Trademarks, further bolsters the conclusion that the Defendants has dishonestly adopted the Impugned Marks, which are deceptively similar to the Plaintiff's KHADI Trademarks and amount to infringement and passing off of the same.
16. In view of the above, in the opinion of the Court, the Plaintiff has made out a prima facie case in their favour. In case an ex-parte ad-interim injunction is not granted, Plaintiff will suffer irreparable loss; balance of convenience also lies in favour of the Plaintiff and against the Defendants.
17. Accordingly, till the next date of hearing, the Defendants, and/or anybody acting on their behalf, are restrained from exporting, manufacturing, selling, offering for sale, advertising, directly or indirectly any kind of goods and services under the Impugned Marks "KHADI", CS(COMM) 204/2024 Page 10 of 11 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 21/03/2024 at 21:50:00 "KHADI NATURAL", "KHADI ORGANIC", and " ; as well as the Impugned Trade Names "KHADI HERBAL RESEARCH LABORATORIES" and "KHADI BHARAT"; and/or any other identical or deceptively similar amounting to infringement of the Plaintiff's KHADI Trademarks and/or passing off of as the Plaintiff's goods/ services/ business.
18. Additionally, Defendants are directed to take down all listings of their products bearing the aforenoted Impugned Marks/ Trade Names and/or any other mark/ trade name identical/ deceptively similar to the Plaintiff's registered KHADI Trademarks.
19. 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 today. Rejoinder thereto, if any, be filed within two weeks thereafter.
20. Compliance of Order XXXIX Rule 3 of Code of Civil Procedure, 1908 be done with five days from today.
21. List on 23rd August, 2024.
SANJEEV NARULA, J MARCH 18, 2024/ab CS(COMM) 204/2024 Page 11 of 11 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 21/03/2024 at 21:50:03