Bombay High Court
Durian Industries Ltd vs Binder Pal on 16 July, 2019
Author: K.R. Shriram
Bench: K.R.Shriram
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY AND ORIGINAL CIVIL JURISDICTION
COMMERCIAL NOTICE OF MOTION (L) NO.1558 OF 2019
IN
COMMERCIAL IP SUIT (L) NO.729 OF 2019
Durian Industries Ltd. ..Plaintiff
Vs.
Binder Pal ..Defendant
Mr. Rashmin Khandekar a/w Ms. Ankita Kanojia I/b Mr. Atmaram Patade
for Plaintiff/Applicant
None for Defendant
CORAM : K.R.SHRIRAM, J.
DATE : 16th JULY 2019 P.C.:
1 Heard the counsel.
2 This is an action for infringement of copyright combined with cause of action for passing off. Mr. Khandekar states that Leave Petition under clause 14 of Letters Patent (Bombay) has been lodged and pending hearing of the Leave Petition, at least ad-interim relief in terms of (a) and
(b) be granted.
3 It is stated that Plaintiff is a well established and well known company and one of the front runners in India carrying on the business of manufacturing and selling the goods viz., home and office furniture consisting of sofas, sofa sets, recliners, bed, dining tables, center tables, and other allied and cognate goods for more than two and half decades.
Plaintiff has currently 33 stores across India along with a successful foray Meera Jadhav ::: Uploaded on - 18/07/2019 ::: Downloaded on - 18/07/2019 23:01:26 ::: 2/6 nmcdl-1558-19(8).doc into the e-commerce business. Plaintiff states that they have state of the art production facilities that make everything from plywood, laminates, veneers to furniture.
4 Plaintiff adopted the mark/logo "DURIAN" in or around 1985 and the mark/logo has become the household mark. Plaintiff is also enjoying excellent reputation and has a huge turn over. Plaintiff has been spending substantial amounts towards sales promotion. The list of trademark/logo as registered by plaintiff which are valid and subsisting are about 43 in numbers and two are pending. Plaintiff is selling the goods bearing Trade Mark/logo style "DURIAN" which has a unique style which is written in bold letter in oval shape and the same was got designed by plaintiff in the year 1985. Plaintiff submits that in or around April 2016 Plaintiff's advocate noticed an application for registration by defendant of the impugned mark "DURIAN TOUCH". According to plaintiff, defendant's mark was identical and/or deceptively similar to plaintiff's registered trademark. It is stated that even defendant's mark is also structurally, phonetically and visually, virtually identical with an/or deceptively similar to plaintiff's mark. It is stated that plaintiff, however, could not find any goods bearing trademark "DURIAN TOUCH" and, therefore, plaintiff did not take further steps. In December 2018, plaintiff got to know from the market sources that defendant was selling goods using the impugned trademark and a notice was sent to defendant on 14 th December 2018. Plaintiff's Meera Jadhav ::: Uploaded on - 18/07/2019 ::: Downloaded on - 18/07/2019 23:01:26 ::: 3/6 nmcdl-1558-19(8).doc mark/logo and defendant's mark/logo are as under: 5 I have perused the plaint and documents annexed thereto. Primafacie, case is made out that defendant's trademark/logo is deceptively similar to that of plaintiff. Therefore, a strong case for grant of adinterim relief is made out, balance of convenience also lies in favour of Plaintiff. Defendant has been served twice but, who despite service chosen to remain absent. Plaintiff has filed affidavit of service of one S. Bagwe affirmed on Meera Jadhav ::: Uploaded on - 18/07/2019 ::: Downloaded on - 18/07/2019 23:01:26 ::: 4/6 nmcdl-1558-19(8).doc 16th July 2019. Accordingly, ad-interim relief in terms of prayer clauses (a) and (b) of the Notice of Motion is granted. Prayer clauses (a) and (b) read as under:
"(a) Pending the hearing and final disposal of the suit, the Court Receiver, High Court, Bombay, or such other fit and proper person/s as this Hon'ble Court think fit, be appointed Receiver/s with all powers under Order XL Rule 1 and Order XXXIX Rule 7 of the code of civil procedure 1908, to attend, enter upon, break open with representative of plaintiff, plaintiff advocate and search, break open the premises, offices, manufacturing units, factories, shops, warehouse, godowns, houses of Defendant without notice to the defendant, other premises wherever the goods, bearing the impugned mark DURIANTOUCH or any other deceptively trade mark to the plaintiff registered trademark / logo /DURIAN and/or depicted on label packaging and/or any other mark/logo or artwork as may be found, stocked, sealed, make an inventory, seize and take custody / possession thereof by sealing the said goods at the defendant premises under lock and key and also of all related item such as stationary, production register, invoices, printing and packaging material, screens, cylinder, blocks, moulds, dyes, stencils, machinery and master plates used to prints the infringing packaging materials, lying at the premises, offices or factories, manufacturing units, godowns, warehouse of the defendant or its agents or at any other place/s and the defendant by itself, its proprietor/partners, directors, legal heirs, servants, employees, representative be ordered and directed to deliver up all of the aforesaid to the court receiver or to such other fit and proper person as this Hon'ble Court thinks fit and the court receiver must carry out such search seizure with local police assistance, if necessary, at no costs.
(b) Pending hearing and final disposal of the suit, the defendant by themselves, their servants, dealers, distributors, stockist, agents, directors, sister concerns, subsidiaries, representatives, and/or successors in title, affiliates and/or assigns and all persons acting for and on their behalf be restrained by a temporary order and injunction of this Hon'ble Court from in any manner manufacturing, marketing, selling, distributing, exporting and/or using in relation to furniture, plywood, sunmica, molds household goods and/or such allied and cognate goods bearing the impugned trade mark DURIANTOUCH and/or any other mark containing the word DURIAN and from using any other mark being deceptively similar in any manner whatsoever to the plaintiff trade mark/logo style /DURIAN so as to infringe the plaintiff registered trade mark registered under No.708481 in class 19 and registered under No.880358 in class 20."
Meera Jadhav ::: Uploaded on - 18/07/2019 ::: Downloaded on - 18/07/2019 23:01:26 ::: 5/6 nmcdl-1558-19(8).doc 6 The Court Receiver, High Court, Bombay shall keep the impugned goods under his seal in the safe custody of Defendant. The Court Receiver is authorized to seek police assistance, if required and the police authorities of the concerned police station shall render all possible assistance as requested by the Court Receiver including deployment of such number of police personnel as required on production of an authenticated copy of this order. The Court Receiver to submit report to this Court by 9 th August 2019.
7 The Advocates for Plaintiff will lodge an authenticated copy of this order with the office of the Court Receiver within two days of an authenticated copy being made available. Upon an authenticated copy being lodged with the Court Receiver, compliance with Rule 596 of the Bombay High Court (OS) Rules is dispensed with.
8 This order will operate till 21 st August 2019. List the above Notice of Motion for further reliefs along with Clause XIV Leave Petition on 20th August 2019.
9 Liberty to Defendant to apply for variation of this order within 24 hours prior notice to Plaintiff.
10 All parties including the Court Receiver are directed to act on
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an ordinary copy of this order, duly authenticated by the Associate of this Court.
11 Within three weeks all office objections to be removed in the suit as well as notice of motion and the suit as well as notice of motion to be numbered, failing which, the suit as well as notice of motion will stand dismissed without further reference to the court.
(K.R. SHRIRAM, J.) Meera Jadhav ::: Uploaded on - 18/07/2019 ::: Downloaded on - 18/07/2019 23:01:26 :::