Delhi District Court
M/S Kewal Brothers vs M/S Nemat Trade Agency And Ors on 30 November, 2023
DLCT010088872018
IN THE COURT OF DISTRICT JUDGE (COMMERCIAL
COURT)-01,
CENTRAL, TIS HAZARI COURTS, DELHI
PRESIDED BY: MR. SANJEEV KUMAR AGGARWAL
IN THE MATTER OF:
CS (COMM) NO. 1865/19
M/s Kewal Brothers
3401/17, Hakim Baqa Street,
Vidya Market, Hauz Qazi,
Delhi-110006.
.... Plaintiff
Versus
M/s Neemat Trade Agency
Office at 11 (New no. 21),
Errabalu Chetty Street, Chennai-60001
(Facing Sembudoss Street)
........Defendant no.1
Mr. Sumit Saraf,
LR of late Shri Jagdish Prakash Saraf
Trading as Shyam Sanitary Store,
10, Kondi Chetty Street, Chennai-600001
Mob. : +91-9840176331
Email ID : [email protected].
Also at :
2nd Floor, 49, Samburda Street,
Chennai-600001
..... Defendant no. 2
CS (Comm.) No. 1865/19 Page No. 1 of 64
Mr. Santosh Sethia
Proprietor of SSP Sanitary Stores
5/9, Kondi Chetty Street, Opp. High Court,
Chennai-600001
...... Defendant no. 3
Date of Institution : 10.07.2018
Date of reserving judgment : 01.11.2023
Date of Judgment : 30.11.2023
JUDGMENT
1. Vide this judgment, I shall decide the suit for permanent injunction restraining defendant from infringement of trademarks, copyright, passing off, dilution and rendition of accounts etc.
2. Initially, the suit was filed by plaintiff mentioning five defendants (1) M/s Nemat Trade Agency, (2) M/s Devi Hardwares, (3) M/s Hateemy Sales Corporation, (4) M/s Hussain Sales Corporation & (5) Ashok Kumar (John Doe). It is stated in the plaint are that plaintiff is a partnership firm "M/s. Kewal Brothers" having its registered office at 3401/ 17, Hakim Baqa Street, Vidya Market, Hauz Qazi, Delhi-110006, engaged in the business of "C.P. Bathroom Fittings Includes Taps, Cocks, P.VC Overhead. Hand & Commode Shower, Flush Waste Pipe, Jalis, Connections, Wash Besin, Stainless Sink, Soap Dish, C.P. Towel Rod & Goods Made From Plastic. Brass Internal Fittings, Ball Cocks & Faruls, Flanges, Extentions Plus, CP Cap, Gate Valve, Ball Valve & Pipe Fittings as Per Class 11 for use in Bathroom Accessories & Sanitary Purposes" and "Hacksaw Blade G.I.C.I. Fittings, Like, Tee Elbow, Socket, Union, Valves Like Ball CS (Comm.) No. 1865/19 Page No. 2 of 64 Valves, Gate Valves Tapes and Cocks of Gun Metal, and Iron Pipes as per class 06" (hereinafter referred to as said goods) under the trademark "WATERMAN" with its various variants Since 1978.
3. It has been further stated that Mr. Vijay Kumar Gupta and Mr. Surender Kumar Gupta were carrying on business together under the name & style M/s. Kewal Brothers since 1978 and made the written partnership deed dated 01.04.1992 and the trademark/ logo " "is honestly coined and adopted by Mr. Vijay Kumar Gupta and Mr. Surender Kumar Gupta, trading as M/s. Kewal Brothers in relation to the goods i.e., "C.P. Bath- Room Fittings in the year 1978 and on 21.08.1989, filed the application, bearing TM No. 515466, for registration of the said trademark before the Trademark Registry claiming user since 1978 and same was published in Journal No. 1073-0 dated 16.02.1994 and was registered in the name of Mr. Vijay Kumar Gupta and Mr. Surender Kumar Gupta, trading as M/s. Kewal Brothers.
4. It has been further stated that Mr. Vijay Kumar Gupta and Mr. Surender Kumar Gupta, trading as M/s. Kewal Brothers (predecessors of the Plaintiff), on 09.01.2009, also filed two applications, bearing TM no. 1772636, for registration of CS (Comm.) No. 1865/19 Page No. 3 of 64 trademark/ logo in relation to the goods i.e., C.P. Bathroom Fittings Includes Taps, Cocks, P.V.C Overhead, Hand & Commode Shower, Flush Waste Pipe, Jalis, Connections, Wash Besin, Stainless Sink, Soap Dish, C.P. Towel Rod & Goods Made From Plastic. Brass Internal Fittings, Ball Cocks & Faruls, Flanges, Extentions Plus, Cp Cap, Gate Valve, Ball Valve & Pipe Fittings as per Class 11 For Use In Bathroom Accessories & Sanitary Purposes, with user claim since 05.04.1978, and bearing TM no. 1772647, for registration of trademark/logo/ device in relation to the goods i.e., Hacksaw Blade GICI. Fittings, Like, Tee Elbow, Socket, Union, Valves Like Ball Valves, Gate Valves Tapes And Cocks Of Gun Metal, and Iron Pipes as per class 06 with user claim 05.04.1978, these applications for registration of the trademark/ logo/ device were published in the journal no. 1442-0 dated 16.06.2010 and journal no. 1738-0 dated 28.03.2016 of the Trademark Registry and were registered in the name of the Mr. Vijay Kumar Gupta and Mr. Surender Kumar Gupta, trading as M/s. Kewal Brothers (predecessors of the Plaintiff).
5. It has been further stated that on 31.03.2011, one of the partners, Mr. Surender Kumar Gupta, retired from the partnership, M/s. Kewal Brothers, through retirement deed dated CS (Comm.) No. 1865/19 Page No. 4 of 64 31.03.2011 and another partner Mr. Ruhul Gupta S/o Mr. Vijay Kumar Gupta entered into the partnership as new partner, through written partnership deed dated 01.04.2011 and on 08.09.2011, Mr. Vijay Kumar Gupta and Mr.Rahul Gupta, Trading as M/s. Kewal Brothers (Partnership Firm), filed two applications, first application, bearing TM No. 2202221, for registration of trademark/logo/ device in relation to the goods Le C.P. Bathroom Fittings Includes Taps, Cocks, P.V.C Overhead, Hand & Commode Shower, Flush Waste Pipe, Jalis, Connections, Wash Basin, Stainless Sink, Soap Dish, CP. Towel Rod & Goods Made From Plastic. Brass Internal Fittings, Ball Cocks & Ferules, Flanges, Extension Plus, Cp Cap, Gate Valve, Ball Valve & Pipe Fittings as per Class 11 For Use in Bathroom Accessories & Sanitary with user claim 05.04.1978, and second application, bearing TM no. 2202222, for registration of trademark/logo/ device in relation to the C.P. Bathroom Fittings Includes Tips, Cocks, P.V.C Overhead, Hand & Commode Shower, Flush Waste Pipe, Jalis, Connections, Wash Basin, Stainless Sink, Soap Dish, C.P. Towel Rod & Goods Made From Plastic. Brass Internal Fintings, Ball Cocks & Ferules, Flanges, Extension Plus, Cp Cap, Gate Valve, Ball Valve & Pipe Fittings as per Class 11 for use in Bathroom Accessories & CS (Comm.) No. 1865/19 Page No. 5 of 64 Sanitary Purposes, with user claim 05.04.1978.
6. It has been further stated that on 04.04.2016, Mr. Vijay Kumar Gupta, one of the partner of M/s. Kewal Brothers (partnership), left for his heavenly abode, and two other partners, Mr. Raghav Gupta (s/o Mr. Rahul Gupta) and Mrs. Seem Gupta (wife of Mr. Rahul Gupta) were entered into partnership of M/s. Kewal Brothers through partnership deed dated 12.04.2016, w.e.f. 01.04.2014, presently, M/s. Kewal Brothers (partnership firm) is being run by three partners Mr. Rahul Gupta, Mr. Raghav Gupta and Mrs. Seem Gupta together.
7. It has been further stated that plaintiff adopted a unique, distinctive Trademarks/ logo/Device / / , has been engaged in the business of manufacturing and marketing of said goods through wide network of dealers, distributors and stockiest under the said trademark/logo/device since its adoption and due to excellent quality and efficacy of the said products the Plaintiff is enjoying enviable reputation and goodwill in the market & the details of plaintiff's registered trademarks in India are as below :-
CS (Comm.) No. 1865/19 Page No. 6 of 64TM No. Trademark Class Goods & Services Status & Date 515466 11 C.P. Bath-Room Registered 21/08/19 Fittings & valid 89 till 21/08/202 0 1772636 11 C.P. Bathroom Registered 09/01/20 Fittings Includes & valid Taps, Cocks, 09 P.V.C Overhead, till Hand & 09/01/201 Commode 9 Shower, Flush Waste Pipe, Jalis, Connections, Wash Besin, Stainless Sink, Soap Dish, C.P. Towel Rod & Goods Made From Plastic.
Brass Internal
Fittings, Ball
Cocks & Faruls,
Flanges,
Extentions Plus,
Cp Cap, Gate
Valve, Ball Valve
& Pipe Fittings As
Per Class 11 For
Use In Bathroom
Accessories &
Sanitary Purposes
CS (Comm.) No. 1865/19 Page No. 7 of 64
1772647 06 Hacksaw Blade Registered
09/01/20 G.I.C.I. Fittings,
& valid
Like, Tee Elbow,
09
Socket, Union, till
Valves Like Ball 09/01/201
Valves, Gate
9
Valves Tapes And
Cocks Of Gun
Metal, And Iron
Pipes As Per Class
06.
2202221 11 C.P. Bathroom Registered
08/09/20 Fittings Includes
& valid
Taps, Cocks,
11
P.V.C Overhead, till
Hand & 08/09/201
Commode
9
Shower, Flush
Waste Pipe, Jalis,
Connections,
Wash Basin,
Stainless Sink,
Soap Dish, C.P.
Towel Rod &
Goods Made
From Plastic.
Brass Internal
Fittings, Ball
Cocks & Ferules,
Flanges,
Extension Plus,
Cp Cap, Gate
Valve, Ball Valve
& Pipe Fittings As
Per Class 11 For
Use In Bathroom
Accessories &
Sanitary
CS (Comm.) No. 1865/19 Page No. 8 of 64
2202222 11 C.P. Bathroom Registered
Fittings Includes
08/09/20 &
Taps, Cocks,
11 P.V.C Overhead, valid
Hand &
till
Commode
08/09/201
Shower, Flush
Waste Pipe, Jalis, 9
Connections,
Wash Basin,
Stainless Sink,
Soap Dish, C.P.
Towel Rod &
Goods Made
From Plastic.
Brass Internal
Fittings, Ball
Cocks & Ferules,
Flanges,
Extension Plus,
Cp Cap, Gate
Valve, Ball Valve
& Pipe Fittings As
Per Class 11 For
Use In Bathroom
Accessories &
Sanitary Purposes
3868122 11 Water Supply And Pending
22/06/20 Sanitary Purposes,
Ball Valves &
18
Safety Fittings
For Water Pipes,
Bathroom
Installation For
Sanitary Purpose,
Sanitary
Installations Water
Supply And
Sanitation
Equipment, Taps
For Water Pipes,
Automatic Flush
CS (Comm.) No. 1865/19 Page No. 9 of 64
Vales For Toilets,
Water Flushing
For Installation,
Commodes Being
Toilets, Stainless
Steel Sinks, Ball
Cocks For Toilet
Cisterns, Ball
Cocks For Toilet
Tanks, Float
Valves Ball
Cocks.
8. It has been further stated that plaintiff is also owner/ proprietor of the artistic work vested in the writing style and color-combination/ packaging getup of the Plaintiff's trademark/logo/device / & the plaintiff filed the two applications for registration of the copyright vested in the writing style/ color combination/ getup/ packaging of the Plaintiff's said trademarks/ logo/ device before the Copyright Office, Government of India, and got two copyright registration certificates, bearing no. A 46392/84 dated 30.11.1984 and bearing no. A-101432/2013 dated 25.06.2013, in the name of the Plaintiff. The Plaintiff also file another application (TM-C) before the Trademark Registry to get NOC of the copyright vested in the trademark/ logo/ device CS (Comm.) No. 1865/19 Page No. 10 of 64 , bearing TM No. 3868122, which is pending.
The sale figures arising out the sales of the said goods Plaintiff under the Trademarks/logo/ Device / / , for the last 10 years are also given in the plaint. It has been further stated that the Plaintiff's said trademarks/ logo /device / / has achieved high reputation and goodwill among the consumers and public at large as the Plaintiff has spent huge amount of money and effort to create awareness about their product and has exclusively promoted the same at large scale and the goodwill and acceptance accredited to the Plaintiff's product is borne out by the fact of the ever-increasing turnover of the product under the said mark, which is about Rs.4,57,89,238/- for the financial year 2017-2018.
9. It has been further stated that in the month of June, 2018, during the market search, the Plaintiff found that the Defendant CS (Comm.) No. 1865/19 Page No. 11 of 64 No.1, M/s Nemat Trade Agency, having office at 11 (New No.21), Errabalu Chetty Street, Chennai- 600001 (facing sembudoss Street), Defendant No.2, M/s. Devi Hardwares, having office at 63A/1, Balakumaran Nagar, Part-B, Redhills Road, Kolathur, Chenai-99, Defendant No.3, M/s Hateemy Sales Corporation, having office at No.40 Sembudoss Street, Chennai- 600001, and Defendant No.4, M/s Hussaini Sales Corporation, having office at Old No.13, New No. 38, Errabalu Chetty Street, Chennai-600001 (hereinafter referred to as the Defendants), are engaged in the business of manufacturing and marketing/distributing of the goods i.e., PVC Tubling, Sleeve, Rubber House, PVC Braded Hoses, Rubber Sheets, Suction Hoses & Teflon Taps, GI, PVC, Fitting, Jetpump, Sanitary Wares, Electricals and Hardwares, Finolex, True Bore, Star, GRR, Pipes & Remesh Pumps, etc., (hereinafter referred to as impugned goods) under the trademark (hereinafter referred to as impugned trademark) in entire market of Chennai, directly and/or through agents/distributors.
10. It has been further stated that defendant No.5 was unknown person/entities who is engaged in the unauthorized and illegal manufacturing and/or supplying and/or selling out the impugned goods bearing the Plaintiff's Trademark logo/device/packaging/ getup/artistic work or any other identical/similar mark and the said unknown persons/entities are impleaded as "Ashok Kumar" under "John Doe" principles.
CS (Comm.) No. 1865/19 Page No. 12 of 6411. It has been further stated that defendants are wrongly (with malafide intention) engaged in the business of manufacturing, marketing, selling and distributing of the impugned goods under identical/deceptively and confusingly similar impugned trademarks directly and/or through its agents/ distributors/dealers in the market/region of Chennai and the Plaintiff has been able to buy the sample of infringing goods bearing an identical/deceptively and confusingly impugned trademark , during its investigation. It has been further stated that perusal of the Defendant's impugned Trademark reveals that the Defendants have copied the Plaintiff's well known said Trademarks/logo/device / / including all the unique and distinctive features used by the Plaintiff and the malafide intention of the Defendants are evident from the same. It has been further stated that defendants adopted an identical/deceptively and confusingly similar/same trademark with a sole motive to dishonestly/unfairly en-cash upon the reputation and goodwill of the Plaintiff's reputed CS (Comm.) No. 1865/19 Page No. 13 of 64 Trademarks/logo/device / / . It has been further stated that the Defendants were well aware of the Plaintiff's reputed and well known Trademarks /logo/ / / and has adopted an identical/confusingly similar mark fraudulently and dishonestly with an ulterior motive of misappropriating the hard earned goodwill of the Plaintiff. Thus, the use of the impugned trademark/logo by the Defendants is clearly unauthorized and goes to show the wrongful intent of the defendants to ride piggyback on the Plaintiff's reputation and goodwill.
12. It has been further stated that the Plaintiff has suffered loss and damage by the aforementioned acts of the Defendants and the use of falsified trademarks by the Defendants which are identical and/or confusingly and deceptively similar to the registered trademarks of the Plaintiff, the Defendants are passing off its products as that of Plaintiff's products and are reaping unfair advantage without any due cause and such an act is highly detrimental to the distinctive character and repute of the trademarks of Plaintiff and constitutes infringement within meaning of the Trade Marks Act 1999 that the Plaintiff is entitled to protection. The plaintiff has accordingly sought reliefs of CS (Comm.) No. 1865/19 Page No. 14 of 64 permanent injunction restraining the defendants from infringement of plaintiff's registered trademark, passing off and violation of plaintiff's rights in plaintiff's trademarks / labels; delivery up, damages and costs.
13. The plaintiff has filed an application u/o 39 Rule 1 & 2 CPC and another application for appointment of Local Commis- sioner to inspect the premises of defendants and seized the in- fringed articles having trade mark of plaintiff. Said applications were allowed vide order 10.07.2018 and Ld. Predecessor granted exparte stay restraining defendants, its servants, agents, stockiest and dealers from passing the product of Class 11 and Class 6 as enumerated above in infringement of trademark and copyright "WATERMAN" being owned by the plaintiff firm and also ap- pointed Local Commissioner to inspect defendants premises.
14. It is pertinent to mention here that plaintiff, after filing of lo- cal commissioner' report, plaintiff filed an application under Or- der VI Rule 17 CPC for amendment in the memo of parties adding Sh. Jagdish Prakash Saraf partner of M/s Shyam Sani- tary Store and Sh. Santosh Sethia, as owners of M/s S.S.P. Sani- tary Stores as defendant no. 5 & 6 respectively stating there in that on inspection by Local Commissioner infringed goods hav- ing trade mark of plaintiff was recovered and the said application was allowed vide order dated 13.05.2019.
15. Summons of the suit were issued to newly added de- fendants 5 & 6 also and they contested the suit.
CS (Comm.) No. 1865/19 Page No. 15 of 6416. It is pertinent to mention here that plaintiff file an appli- cation to delete original defendants no. 2, 3 & 4 i.e. Errabalu Chetty Street, Chennai- 600001 (facing sembudoss Street), De- fendant No.2, M/s. Devi Hardwares, having office at 63A/1, Bal- akumaran Nagar, Part-B, Redhills Road, Kolathur, Chenai-99, Defendant No.3, M/s Hateemy Sales Corporation, having office at No.40 Sembudoss Street, Chennai- 600001, and Defendant No.4, M/s Hussaini Sales Corporation, having office at Old No.13, New No. 38, Errabalu Chetty Street, Chennai-600001 (hereinafter referred to as the Defendants) from array of parties on the ground that plaintiff has settled the dispute with plaintiff, therefore, their names be deleted from array of defendants and accordingly the said application was allowed on 01.10.2022 and defendants no. 2 to 4 were deleted from array of defendants.
17. Thereafter plaintiff file amended memo of parties mention- ing defendant no. 5 as defendant no.2 and defendant no.6 as de- fendant no.3.
18. After issuance of summons it has come to know that Sh. Jagdish Prakash Saraf, Partner of Shyam Sanitary Store (earlier defendant no. 5) has already expired and thereafter, on an appli- cation filed by plaintiff under Order XII Rule 4 CPC his son Sumit Saraf was impleaded as defendant no.2 in place of de- ceased defendant no. 2 Jagdish Saraf.
CS (Comm.) No. 1865/19 Page No. 16 of 6419. Despite service none appear on behalf of defendant no.1 Hence defendant no. 1 was proceeded exparte vide order dt. 12.09.2022.
20. The defendant no.2 Sumit Saraf contested the suit by filing written statement. Defendant no.2 in his written statement has taken preliminary objections that he has no concern with the business of M/s Shyam Sanitary Store and his father has left be- hind other legal heirs also. It is stated that he is doing separate business from his house i.e. Jain Nakshtra Apartment, 15FA, 82, Union Road, China Nolumber, Maduravoyal, Chennai-600095. It has been stated that plaintiff has filed the present suit just to ha- rass him and he has nothing to do with the business of his father Sh. Jagdish Prasad Saraf. It has been further stated that present suit is not maintainable in the present form as the same has not been filed under the provisions of The Commercial Courts Act, 2015.
21. On merits, defendant no.2 denied that plaintiff firm is the partnership firm engaged in the business of C.P. Bathroom Fit- tings etc. or that Sh. Rahul Gupta is the partner of the said firm. He further denied that plaintiff is having very good reputation in market and trademark/device/logo is associated with plaintiff firm. He also denied that plaintiff enjoy voluminous sales in the market for the alleged goods and stated that sales figures shown for last ten years are false and fictitious. He denied that plaintiff is forty years old organization engaged in manufacturing of bath- room fittings. He further denied that plaintiff's brand had ever CS (Comm.) No. 1865/19 Page No. 17 of 64 been promoted through advertisement in leading newspaper. He also denied that plaintiff products / trademarks had acquired any distinctiveness and synonymous with the plaintiff has alleged. He also denied that defendant is perpetrating any fraud and decep- tion on the unwary members of trade and public by passing off their goods as that of the plaintiff and diluting the reputation of the plaintiff as alleged. Thus, he has prayed for dismissal of the suit.
22. The defendant no.3 Santosh Sethia (originally defendant no.
6) also contested the suit by filing written statement. Defendant no.3 in his written statement has taken preliminary objections that his firm SSP Sanitary store is selling inter-alia sanitary goods of local brands and other goods by the trademark and has no con- nection with the trade mark / copyright products of the plaintiff firm. It has been further stated that whatsoever good of products alongwith packaging that has been seized by LC were only per- taining specific order received from a particular client for selling the sanitary products in a packaging of a particular description as demanded by the said customer / client and this fact has been twisted and turned by the plaintiff to its benefit and to the detri- mental and is advantage of the defendant, by falsely alleging that the defendants were infringing product / sanitary goods as that of the plaintiff.
23. It has been further stated by defendant no.3 that present suit is not maintainable in the present form as the same has not been filed under the provisions of The Commercial Courts Act, CS (Comm.) No. 1865/19 Page No. 18 of 64 2015. It has been further stated that this Court has no territorial jurisdiction to entertain the present suit as his shop is situated at 5/9, KondliChetty Street, Opp. High Court, Chennai-600001.
24. On merits, defendant no.3 denied that plaintiff firm is in the business of C.P. Bathroom Fitting etc. & Sh. Rahul Gupta is the partner of the said firm. It has been stated that letter of autho- rization dt. 27.06.2018 of M/s Kewal Brothers does not show how any authority is vested on Ms. Seema Gupta and Mr. Raghav Gupta on behalf of Kewal Brothers, thus, the said authorization letter in favour of Sh. Rahul Gupta is bad / illegal without force of law. He further denied that during investigation, plaintiff has purchased any sample of infringing goods through bill from the defendant and stated that answering defendant never engaged in the manufacturing, marketing, distributing of impugned goods. He further denied that defendant offering for sale any identical phonetically similar mark and copies any unique & distinctive features of the plaintiff trademarks. He denied that he wanted to en-cash upon the reputation and goodwill of the plaintiff. He also denied that the use of an identical and similar trade mark by the defendant would clearly amount to infringement and passing off its product as those of the plaintiff and dilution of the plaintiff brand value. Thus, he has prayed for dismissal of the suit.
25. No replication was filed by the plaintiff to the WS of de- fendants.
26. From the pleadings of the parties and documents, the following issues were framed on 06.05.2023 :-
CS (Comm.) No. 1865/19 Page No. 19 of 641. Whether Sh. Sumit Saraf who was implead in place of deceased defendant no. 2 have any concern with M/s Shyam Sanitary Store ? OPD
2. Whether any cause of action to file the present suit arises against the LRs of deceased defendant no. 2 ? OPD
3. Whether this Court has no territorial jurisdiction to try the present suit ? OPD
4. Whether the plaintiff is entitled to decree of permanent injunction as claimed in para -41 of plaint i.e. prayer clause (a) & (b) ? OPP
5. Whether the plaintiff is entitled to decree of delivery-up of all the counterfeit goods as claimed in prayer clause (d) ? OPP
6. Whether the plaintiff is entitled to decree of damages & rendition of account as claimed in prayer clause (f) ? OPP
7. Relief.
27. In order to prove its case plaintiff has only examined one witness i.e. Mr. Rahul Gupta who tendered his evidence way of affidavit Ex.PW1/A.
28. On the other hand, in order to deny the claim of plaintiff, defendants no. 2 & 3 has examined themselves as DW1 & DW2 who led their evidences by way of affidavits Ex. DW1/A & Ex. DW2/A respectively.
29. Arguments have been heard from Sh. Varshesh, Ld. Counsel for the plaintiff and Sh. Atul Jain, Ld. Counsel for the defendants.
30. I have considered the arguments and have gone through the record. My issue wise findings are as under :-
Issue No. 3 "Whether this Court has no territorial jurisdic- tion to try the present suit ? OPD"CS (Comm.) No. 1865/19 Page No. 20 of 64
31. First of all I shall decide the issue no. 3 as it goes to the root of the matter and if same is decided against the plaintiff then this Court would have no power to decide other issues.
32. Both Defendant no.2 & 3 in their WS have taken the objections that since defendants are resident of or working for gain in Chennai, therefore, this Court has no territorial jurisdiction to entertain the suit. Since the instant suit is not related to the immovable property, therefore, Section 20 CPC is the provision which deals about the territorial jurisdiction of the Court which is reproduced as under :-
20. Other suits to be instituted where defendants reside or cause of action arises- Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction-
(a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or
(b) any of the defendants, where there are more than one, at the time of the commencement of the suit actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or (c) the cause of action, wholly or in part, arises.
33. Further, since the present suit is infringement of trademark, therefore, Section 134 (2) of the Trademark Act CS (Comm.) No. 1865/19 Page No. 21 of 64 provides one additional place of jurisdiction where suit can be file i.e. where the party who institute suit resides or running its business or working for gain. Section 134 of the Trademark Act is reproduced as under :
Section 134(2) in The Trade Marks Act, 1999 (2) For the purpose of clauses (a) and (b) of sub-section (1), a "District Court having jurisdiction" shall, notwith-
standing anything contained in the Code of Civil Proce- dure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit35. or proceeding, or, where there are more than one such per- sons any of them, actually and voluntarily resides or car- ries on business or personally works for gain. Explanation.
--For the purposes of sub-section (2), "person" includes the registered proprietor and the registered user.
34. Now reverting back to the case, PW-1 Rahul Gupta in his evidence led through affidavit EXPW1/A has categorically deposed that he is one of the partner of plaintiff firm M/s Kewal Brothers having its registered office at 3401/17, Hakim Baqa Street, Vidya Market, Hauz Qazi, Delhi-110006. No suggestion has been given to PW1 that registered office of plaintiff firm is not at the said address neither any documents has been filed by the defendants in their testimonies to prove that plaintiff is having subordinate office in Chennai where the cause of action arose, therefore, in these circumstances, in my view, this Court has territorial jurisdiction to entertain the present suit as plaintiff is working for gain and running its business within the territorial jurisdiction of this Court. Issue No. 3 is decided accordingly in favour of plaintiff and against defendants.
CS (Comm.) No. 1865/19 Page No. 22 of 64Issue Nos. 1 :Whether Sh. Sumit Saraf who was implead in place of deceased defendant no. 2 have any concern with M/s Shyam Sanitary Store ? OPD And Issue Nos. 2 : Whether any cause of action to file the present suit arises against the LRs of deceased defendant no. 2 ? OPD
35. Both these issues pertain to defendant no.2 and are interconnected, therefore, I shall decide both the issues together.
36. It is argued by learned counsel for plaintiff that from the testimony of PW1 as well as defendants it is proved that defendant no. 2 Sumit Saraf was present at the shop Shyam Sanitary Store when LC had conducted the raid and seized the goods having infringed trademark of plaintiff. He further argued that since defendant no. 2 was doing the business with Shyam Sanitary Store, hence, he is sole representative of Jagdish Prasad Saraf. Thus, he has been correctly impleaded as LR of deceased Jagdish Prasad Saraf and is liable to pay the damages for the infringement of trademark of plaintiff because the infringed goods were found at the shop of Shyam Sanitary Store of which he is owner after the death of his father.
37. On the other hand, Ld. Counsel for defendants argued that as per LC report, Shyam Sanitary Store is the partnership firm and plaintiff has not produced any document that who was the partners of the said firm. He further argued that plaintiff has only CS (Comm.) No. 1865/19 Page No. 23 of 64 impleaded Jagdish Prasad Saraf being partner of Shyam Sanitary Store but has not impleaded Shyam Sanitary Store as defendant and also not impleaded other partners of Shyam Sanitary Store. He further argued that after the death of his father his natural legal heir i.e. wife, sons and daughters would not be legal representative of Shyam Sanitary Store but the other partners would be legal representatives. He further argued that plaintiff has failed to lead any evidence or produce any documents that defendant no. 2 Sumit Saraf has inherited any property from defendant Jagdish Prasad Saraf or that defendant no. 2 Sumit Saraf has anyway associated with Shyam Sanitary Store, therefore, in these circumstances, after the death of Jagdish Saraf partner, the plaintiff cannot recover any amount as damages from the natural legal heir of defendant no. 2 and therefore, plaintiff has miserably failed to prove that defendant no. 2 Sumit Saraf has any concern with M/s Shyam Sanitary Store or that any cause of action arose to file suit against LRs of deceased defendant no. 2 Jagdish Prasad Saraf.
38. The defendant no.2 both in his written statement that he has no concern with M/s. Shyam Sanitory Store the partnership firm of his father as he is neither the partner of the same not has inherited any assets of his deceased father Jagdish Saraf and there are other legal heir of Jagdish Saraf.
39. I have consider the arguments and gone through the record. In the amended plaint, it has stated on behalf of plaintiff, that Local Commissioner (LC) was appointed vide order dated CS (Comm.) No. 1865/19 Page No. 24 of 64 10.07.2018 for search and seizure of counterfeit goods/products and Ld. LC also visited the premises of defendants Jadish Prakash Saraf, proprietor of Shyam Sanitary Store and also the premises of defendant Santosh Sethia, proprietor of M/s SSP Sanitary Store and seized huge quantity of infringing / counterfeit goods from the their addresses. In the amended plaint, plaintiff has also stated that during the pendency of the suit it came to know that defendant no. 5 Jagdish Prakash Saraf has expired few months back and since his son Sh. Sumit Saraf is looking after his business and for that reason, the plaintiff filed an application u/o XXII Rule 4 CPC for impleading Sumit Saraf as defendant in place of defendant Jagdish Saraf partner of M/s Shyam Sanitary Store.
40. In my view, since specific objection has been taken by defendant no.2 in his WS the onus is upon the plaintiff to proved that defendant no.2 is either partner of the firm M/s. Shyam Sanitary Store at the time when Ld. Local Commissioner carried out the inspection or has become partner after the death of Jagdish Saraf hand has inherited the assets of the Partnership firm M/s Shyam Sanitary Store to make him liable for committing infringement of trade mark of plaintiff by dealing in goods having infringed trade mark of plaintiff.
41. The plaintiff in the testimony of PW1 Rahul Gupta has also repeated same contents. Thus from the plaint as well as examination in chief of PW1 it is evident that Jagdish Saraf was made defendant being partner of M/s. Shyam Sanitary Store.
CS (Comm.) No. 1865/19 Page No. 25 of 64Therefore in my view since infringement was being done by partnership firm and all its partner who were jointly and severally liable for partnership firm therefore plaintiff should have made partnership firm and all other partners as defendant instead of just Jagdish Saraf as per provision of order 30 Civil Procedure Code 1908.
42. As per order 30 CPC any two or more persons claiming or being liable as partners and carrying on business, in India may sue or be sued in the name of the firm (if any) of which such persons were partners at the time of the accruing of the cause of action, and any party to a suit may in such case apply to the Court for a statement of the names and addresses of the persons who were, at the time of the accruing of the cause of action, partners in such firm, to be furnished and verified in such manner as the Court may direct. Further, sub Rule (2) Where persons sue or are sued partners in the name of their firm under sub-rule (1), it shall, in the case of any pleading or other document required by or under this Code to be signed, verified or certified by the plaintiff or the defendant, suffice such pleading or other document is signed, verified or certified by any one of such persons.
43. As stated above Sumit Saraf can be made liable for the act of Jagdish Saraf which he carried as partner of Shyam Sanitary Store only if Sumit Saraf was the partner of the firm at the time of inspection by Local Commissioner or become partner and acquired the assets and liability of said partnership business.
CS (Comm.) No. 1865/19 Page No. 26 of 6444. PW1 in his examination in chief led through affidavit EXPW1/A has not deposed that Sumit Saraf was either partner at the time of inspection by Local Commissioner or become partner later on in the said firm. Neither any documents has been file by plaintiff to proved that Sumit Saraf was ever or is partner in the Shyam Sanitary Store. Further from cross examination of PW1 it is evident that he, was given suggestion that the substitute defendant no. 2 Sumit Saraf has no relation with the business of his father and though PW1 has denied the same and voluntarily stated that he was present at the shop when raid was committed. In my view mere present of Sumit Saraf at the time of inspection of the premises of M/s Shyam Sanitary Store does not proved that Sumit Saraf was partner in the the said firm. PW1 further himself admitted in the cross examination that he does not know whether Sumit Straff runs the business of commission agent with R.B. Enterprires, Channai.
45. Further Defendant no. 2 who was examined as DW1 led his evidence by way of affidavit Ex. DW1/A and deposed that his father expired in year 2020 and he has no concern with the business of his father M/s Shyam Sanitary Store. He stated that he has separate business of commission agent with R.B. Enterprises and dealing into fibre glasss business and he is not the proprietor of M/s Shyam Sanitary Store as alleged by the plaintiff. He further deposed that he is doing business from his house i.e. Jain Nakshtra Apartment, 15FA, 82, Union Road, China Nolumbur, Maduravoyal, Chennai-600095. He further denied that he had adopted an identical / confusingly similar CS (Comm.) No. 1865/19 Page No. 27 of 64 mark with an ulterior motive to mis-appropriating the goodwill of the plaintiff.
46. In his cross examination, he deposed that he is doing the job of commission agent besides employment as labourer in the firm. He deposed that shop no. 3, Phillip Street Chennai- 600107 belonged to his father and he does not know who is the owner of Shyam Sanitary Store, located at 2nd Floor, 49, Sambuda Street, Chennai. He further deposed that he does not know whether his father was owner of the said shop or not and he voluntarily deposed that his father was having one shop i.e. shop no. 3, Phillip Street and if he is also having any godown he is not aware. DW1 further deposed that he does not know whether the local commissioner visited the said shop but one advocate had visited to the said shop of his father and his father called him on phone after said advocate arrived at the said shop and he reached at his father's shop at around appx. one and half hour after making call by his father. He denied that he was sitting in the nearby shop when the said advocate arrived at his father's shop which was lying locked at that time. He admitted that Superdarinama which is part of local commissioner's report Ex. PW1/67 bears his signature at point X but voluntarily stated that he does not know what was written on the same when he signed as he does not know English language. He further deposed that he does not remember how much time he remained stayed in the said shop when the raid was conducted by the said Advocate. He admitted that email:[email protected] mentioned on the visiting card is his email ID. DW1 further deposed in his cross examination that his father has not left any property and his CS (Comm.) No. 1865/19 Page No. 28 of 64 father was on rent at shop no. 3, Phillip Street Chennai-600107 & Shyam Sanitary Store, located at 2nd Floor, 49, Sambuda Street, Chennai. He further deposed that his father did not show him any rent agreement of any premises and he does not know who was the landlord of the said shops. He denied that the goods mentioned in the inventory, prepared by LC at page no. 207 & 229 of LC report, were seized in his presence. DW1 further deposed that his father has left behind four children including him and his mother name is Mrs. Maina Devi and his brother name is Sh. Suresh Kumar and sisters' names are Ms. Versha & Ms. Rekha. He further deposed that he had not inherited any property from his father and there was no ancestral property which was inherited by his father. He further deposed that he has never used his email ID on visiting card in the name Shyam Sanitary Store and voluntarily stated that his father might have used the same without knowledge.
47. In my view nothing much has came out in the cross examination of DW1 which help the plaintiff to proved that defendant no.2 Sumit Saraf was partner in Shyam Sanitary Store or that he become later on, or that he inherited any estate of Shyam Sanitary Store or even Jagdish Saraf after the death of Jagdish Saraf. As far as contention of Ld. Counsel for plaintiff that Sumit Saraf was present when Local Commissioner carried the inspection of the premises of M/s Shyam Sanitary Store therefore same proved that he is carrying with business with Jagdish Saraf I am not agreed with said contention. From perusal of report of LC Ex. PW1/67 (colly) it is evident that LC visited two shops of Jagdish Saraf at first shop i.e., 2nd floor, 49 CS (Comm.) No. 1865/19 Page No. 29 of 64 Samburda Street Chennai and there was no infringed articles were recovered at one shop and thereafter they visited another shop of Jagdish Saraf i.e. shop no. 3, Philip Street, Chennai- 60017. The said shop was found locked and thereafter, LC has mentioned in his report that plaintiff's representative and counsel requested him to talk to Sh. Sumit Saraf s/o Jagdish Saraf and get the said shop reopened and Sh. Sumit Saraf after talking LC did not cooperate and inform the whereabouts of his father and indicated that if he is the son of Mr. Saraf the same does not imply that he is bound to be aware of all the whereabouts of his father and thereafter, LC warned to Sh. Sumit Saraf that if within half an hour the shop is not reopened then the LC had got the power to break open the locks of the shop as per the orders of the Court and after waiting for more than 45 minutes, when LC saw that Mr. Sumit Saraf is till sitting at the nearby shop without giving any heed to the repeated request of LC open the shop and called persons who are expert in breaking the locks and at that time, Sh. Jagdishj Prakash Saraf appeared from behind alley and started shouting loudly at LC and police official and after much hue and cry, he searched the premisese and found infringed articles. Thus, from the said LC report also it is evident that nowhere in the said report it is stated that Sumit Saraf was associated with the shop / business of his father Jagdish Saraf even plaintiff or representative ever asked him that he is partner with his father in the business of Shyam Sanitary Store.
48. As far as another contention of Ld. Counsel for plaintiff that visiting card was recovered by LC during inspection which CS (Comm.) No. 1865/19 Page No. 30 of 64 has email:[email protected] and defendant no.2 in the cross examination has admitted that said email is his email is concerned which also proved that Sumit Saraf was partner in the buisness of his father Jagdish Saraf. I have perused the said visiting card. It is in the name of Shyam Sanitary Store and mentioned SK Saraf as "Coordinator" and also having defendant no.2 email ID, but same does not proved that he was the partner in Shyam Sanitary store. Moreever there is no explanation by plaintiff if Sumit Saraf was partner or any way associated with the business of his father why he was not impleaded as partner in the application file by plaintiff impleading his father Jagdish Saraf as party.
49. Further, I am agree with submission of Ld. Counsel for defendant that since M/s Shyam Sanitary Store was a partnership firm, therefore, natural legal heir of Jagdish Saraf would not be liable for any act of Jagdish Sharaf which he carried as partner of Shyam Sanitary Store. Further since it is not the case of plaintiff that defendant no.2 Sumit Saraf himself infringed trade mark of defendant, therefore, he would not be liable for infringement.
50. As far as contention of Ld. Counsel for plaintiff that defendant no.2 is liable to compensate for infringement of trade mark by Jagdish Saraf being his legal representative as he is the son of Jagdish Saraf in my Sumit Saraf is not liable because as evident from the WS of defendant no.2 that besides him, there is another son, two daughters and wife of deceased Jagdish Saraf who has not been made party and he has been made party in his individual capacity and secondly plaintiff has failed to led any evidence that he has inherit any assets of deceased Jagdish Saraf CS (Comm.) No. 1865/19 Page No. 31 of 64 thus no damges/ compensation can be recovered from him.
51. In view of aforesaid discussion I hold that plaintiff has failed to proved that defendant no.2 Sumit Saraf was the partner with his father in the business of M/s. Shyam Sanitary Store or inherited assets of the said shop after his father death or he has inherited any assets of the partnership firm of Jagdish Saraf. Thus I hold that since he is not any way concern with M/s. Shyam Sanitary Store, therefore, no cause of action arise against him. Issues no. 1 & 2 are decided against plaintiff and in favour of defendants.
Issue No. 4 "Whether the plaintiff is entitled to decree of permanent injunction as claimed in para -41 of plaint i.e. prayer clause (a) & (b) ? OPP"
52. It is contended by learned counsel for defendant that the plaintiff is not entitled to any relief and suit liable to be dismissed because plaintiff firm M/s Kewal Brothers is not registered in view of Section 69 (2) of the Partnership Act.
53. On the other hand, Ld. Counsel for plaintiff has argued that even if plaintiff firm isnot registered the present suit cannot be dismissed because Section 69(2) of the Partnership Act is not applicable because it is applicable only when plaintiff seeks to enforce a right arising out of contract or from a right conferred by the partners of the Partnership firm as per said Section.
54. I am not agree with the said contention that because Section 69(2) of Partnership Act will be applicable only in case partnership firm filed a suit to enforce a right arising from a contract or conferred by the partners of the Partnership Act.
CS (Comm.) No. 1865/19 Page No. 32 of 64Admittedly, plaintiff is seeking relief for infringement restraining defendants its trademark, damages etc. and not on the basis of contract between plaintiff and defendants but on the ground that they are producing / manufacturing / selling the goods having infringed trademark without its consents, therefore, in these circumstances Section 69(2) of Act is not applicable in the present case and suit cannot be dismissed on the ground that partnership firm is not registered. In this regard, I rely upon the judgment of Hon'ble Delhi High Court in CA No. 1786/2000, case title "Haldiram Bhujiawala and Ors. Vs. Anand Kumar Deepak Kumar & Ors.", MANU/SC/0144/2000. The relevant paras of the said judgment as under :-
In Raptokas Brett and Co., [1998] 7 SCC 184 it was clarified that the contractual rights which are sought to be enforced by plaintiff firm and which are barred under section 69(2) are "rights arising out of the contract" and that it must be a contract entered into by the firm with the third party defendants. Majmudar, J. stated (at p.191) as follows :
"A mere look at the aforesaid provision shows that the suit filed by an unregistered firm against a third party for enforcement of any right arising from a contract with such a third party would be barred........"
From the above passage it is firstly clear that contract must be a contract by the plaintiff firm not with anybody else but with the third party defendant.
The further and additional but equally important aspect which has to be made clear is that - the contract by the unregistered firm referred to in section 69(2) must not only be one entered into by the firm with the third party - defendant but must also be one entered into by the plaintiff firm in the course of the business dealing of the plaintiffs firm with such third party - defendant.
CS (Comm.) No. 1865/19 Page No. 33 of 64It will also be seen that the present defendants who are sued by the plaintiff - firm are third parties to the 1st plaintiff firm. Section 2(d) of the Act defines 'third parties' as persons who are not partners of the firm. The defendants in the present case are also third parties to the contract of dissolution dated 16.11.74. Their mother, Kamla Devi was no doubt a party to the contract of dissolution. The defendants are only claiming a right said to have accrued to their mother under the said contract dated 16.11.74 and then to the defendants. In fact, the said contract of dissolution is not a contract to which even the present 1st plaintiff firm or its partners or the 2nd plaintiff were parties. Their father Moolchand was a party and his right to the trade mark devolved in plaintiffs. The real crux of the question is that the legislature when it used the word "arising out of a contract" in Section 69(2), it is referring to a contract entered into in course of business transaction by the unregistered plaintiff firm with its customers - defen-dants and the idea is to protect those in commerce who deal with such a partnership firm in business. Such third parties who deal with the partners ought to be enabled to know what the names of the firm are before they deal with them in business.
Further Section 69(2) is not attracted to any and every contract referred to in the plaint as the source of title to an asset owned by the firm. If the plaint referred to such a contract it could only be as a historical fact. For example, if the plaint filed by the unregistered firm refers to the source of the firm's title to a motor car and states that the plaintiff has purchased and received a Motor Car from a foreign buyer under a contract and that the defendant has unauthorisedly removed it from the plaintiff firm's possession, it is clear that the relief for possession against defendant in the suit does not arise from any contract with defendant entered into in the course of plaintiff firm's business with defendants but is based on the alleged unauthorised removal of the vehicle from the plaintiff firm's cus- tody by the defendant. In such a situation, the fact that the unregistered firm has purchased the vehicle from somebody else under a contract has absolutely no bearing on the right of the firm to sue the defendant for CS (Comm.) No. 1865/19 Page No. 34 of 64 possession of the vehicle. Such a suit would be maintainable and Section 69(2) would not be a bar, even if the firm is unregistered on the date of suit. The position in the present case is not different.
In fact, the Act has not prescribed that the transactions or contracts entered into by a firm with a third party are bad in law if the firm is an unregistered firm. On the other hand, if the firm is not registered on date of suit and the suit is to enforce a right arising out of a contract with the third party- defendant in the course of its business, then it will be open to the plaintiff to seek withdrawal of the plaint with leave and file a fresh suit after registration of the firm subject of course to the law of limitation and subject to the provisions of the Limitation Act. This is so even if the suit is dismissed for a formal defect. Section 14 of the Limitation Act will be available inasmuch as the suit has failed because the defect of non-registra-tion falls within the words "other cause of like nature" in section 14 of the Limitation Act, 1963. See Surajmal Dagduramji Shop v. M/s. Srikishan Ram Kishan, AIR (1973) Bom.
313. For all the reasons given above, it is clear that the suit is based on infringement of statutory rights under the Trade Marks Act. It is also based upon the common law principle of tort applicable to passing-off actions. The suit is not for enforcement of any right arising out of a contract entered into by or on behalf of the unregistered firm with third parties in the course of the firm's business transactions. The suit is therefore not barred by section 69(2).
55. Now coming on to the merit, in order to prove its case that defendants had infringed the trademark of plaintiff and thus, plaintiff is entitled to relief of permanent injunction, plaintiff has examined Sh. Rahul Gupta as PW1 who led his evidence by way of affidavit Ex. PW1/A and deposed that plaintiff is a partnership firm engaged in the business of "C.P. Bathroom Fittings Includes Taps, Cocks, P.VC Overhead. Hand & Commode Shower, Flush Waste Pipe, Jalis, Connections, Wash Besin, Stainless Sink, Soap CS (Comm.) No. 1865/19 Page No. 35 of 64 Dish, C.P. Towel Rod & Goods Made From Plastic. Brass Internal Fittings, Ball Cocks & Faruls, Flanges, Extentions Plus, CP Cap, Gate Valve, Ball Valve & Pipe Fittings as Per Class 11 for use in Bathroom Accessories & Sanitary Purposes" and "Hacksaw Blade G.I.C.I. Fittings, Like, Tee Elbow, Socket, Union, Valves Like Ball Valves, Gate Valves Tapes and Cocks of Gun Metal, and Iron Pipes as per class 06" under the trademark "WATERMAN" with its various variants Since 1978. He further deposed that Mr. Vijay Kumar Gupta and Mr. Surender Kumar Gupta, who were predecessors to him, were carrying on business together under the name & style M/s. Kewal Brothers since 1978 and made the written partnership deed dated 01.04.1992 and they coined and adopted the trademark/ logo " " in relation to the goods i.e., "C.P. Bath-Room Fittings in the year 1978 and on 21.08.1989, bearing TM No. 515466, for registration of the said trademark before the Trademark Registry claiming user since 1978 and same was published in Journal No. 1073-0 dated 16.02.1994 and was registered in the name of Mr. Vijay Kumar Gupta and Mr. Surender Kumar Gupta, trading as M/s. Kewal Brothers.
56. PW1 further deposed that Mr. Vijay Kumar Gupta and Mr. Surender Kumar Gupta, trading as M/s. Kewal Brothers (predecessors of the Plaintiff), on 09.01.2009, also filed two applications, bearing TM no. 1772636, for registration of CS (Comm.) No. 1865/19 Page No. 36 of 64 trademark/ logo in relation to the goods i.e., C.P. Bathroom Fittings Includes Taps, Cocks, P.V.C Overhead, Hand & Commode Shower, Flush Waste Pipe, Jalis, Connections, Wash Besin, Stainless Sink, Soap Dish, C.P. Towel Rod & Goods Made From Plastic. Brass Internal Fittings, Ball Cocks & Faruls, Flanges, Extentions Plus, Cp Cap, Gate Valve, Ball Valve & Pipe Fittings as per Class 11 For Use In Bathroom Accessories & Sanitary Purposes, with user claim since 05.04.1978, and bearing TM no. 1772647, for registration of trademark/logo/ device in relation to the goods i.e., Hacksaw Blade GICI. Fittings, Like, Tee Elbow, Socket, Union, Valves Like Ball Valves, Gate Valves Tapes And Cocks Of Gun Metal, and Iron Pipes as per class 06 with user claim 05.04.1978, these applications for registration of the trademark/ logo/ device were published in the journal no. 1442-0 dated 16.06.2010 and journal no. 1738-0 dated 28.03.2016 of the Trademark Registry and were registered in the name of the Mr. Vijay Kumar Gupta and Mr. Surender Kumar Gupta, trading as M/s. Kewal Brothers (predecessors of the Plaintiff).
57. PW1 further deposed that on 31.03.2011, one of the partners, Mr. Surender Kumar Gupta, retired from the partnership, M/s. Kewal Brothers, through retirement deed dated 31.03.2011 and another partner Mr. Ruhul Gupta S/o Mr. Vijay CS (Comm.) No. 1865/19 Page No. 37 of 64 Kumar Gupta entered into the partnership as new partner, through written partnership deed dated 01.04.2011 and on 08.09.2011, Mr. Vijay Kumar Gupta and Mr.Rahul Gupta, Trading as M/s. Kewal Brothers (Partnership Firm), filed two applications, first application, bearing TM No. 2202221, for registration of trademark/logo/ device in relation to the goods Le C.P. Bathroom Fittings Includes Taps, Cocks, P.V.C Overhead, Hand & Commode Shower, Flush Waste Pipe, Jalis, Connections, Wash Basin, Stainless Sink, Soap Dish, CP. Towel Rod & Goods Made From Plastic. Brass Internal Fittings, Ball Cocks & Ferules, Flanges, Extension Plus, Cp Cap, Gate Valve, Ball Valve & Pipe Fittings as per Class 11 For Use in Bathroom Accessories & Sanitary with user claim 05.04.1978, and second application, bearing TM no. 2202222, for registration of trademark/logo/ device in relation to the C.P. Bathroom Fittings Includes Tips, Cocks, P.V.C Overhead, Hand & Commode Shower, Flush Waste Pipe, Jalis, Connections, Wash Basin, Stainless Sink, Soap Dish, C.P. Towel Rod & Goods Made From Plastic. Brass Internal Fintings, Ball Cocks & Ferules, CS (Comm.) No. 1865/19 Page No. 38 of 64 Flanges, Extension Plus, Cp Cap, Gate Valve, Ball Valve & Pipe Fittings as per Class 11 for use in Bathroom Accessories & Sanitary Purposes, with user claim 05.04.1978.
58. PW1 further deposed that on 04.04.2016, Mr. Vijay Kumar Gupta, one of the partner of M/s. Kewal Brothers (partnership), left for his heavenly abode, and two other partners, Mr. Raghav Gupta (s/o Mr. Rahul Gupta) and Mrs. Seem Gupta (wife of Mr. Rahul Gupta) were entered into partnership of M/s. Kewal Brothers through partnership deed dated 12.04.2016, w.e.f. 01.04.2014, presently, M/s. Kewal Brothers (partnership firm) is being run by three partners Mr. Rahul Gupta, Mr. Raghav Gupta and Mrs. Seem Gupta together.
59. PW1 further deposed that plaintiff adopted a unique, distinctive Trademarks/ logo/Device / / , has been engaged in the business of manufacturing and marketing of said goods through wide network of dealers, distributors and stockiest under the said trademark/logo/device since its adoption and due to excellent quality and efficacy of the said products the Plaintiff is enjoying enviable reputation and goodwill in the market & the details of plaintiff's registered trademarks in India are as below :-
CS (Comm.) No. 1865/19 Page No. 39 of 64 TM No. Trademark Class Goods & Status
Services
& Date
515466 11 C.P. Bath- Registered
21/08/19 Room
& valid till
Fittings
89 21/08/2020
1772636 11 C.P. Registered
09/01/20 Bathroom
& valid till
Fittings
09 09/01/2019
Includes
Taps, Cocks,
P.V.C
Overhead,
Hand &
Commode
Shower,
Flush Waste
Pipe, Jalis,
Connections,
Wash Besin,
Stainless
Sink, Soap
Dish, C.P.
Towel Rod
& Goods
Made From
Plastic.
Brass
Internal
Fittings, Ball
Cocks &
Faruls,
Flanges,
Extentions
Plus, Cp
Cap, Gate
Valve, Ball
CS (Comm.) No. 1865/19 Page No. 40 of 64
Valve &
Pipe Fittings
As Per Class
11 For Use
In Bathroom
Accessories
& Sanitary
Purposes
1772647 06 Hacksaw Registered
09/01/20 Blade
& valid till
G.I.C.I.
09 09/01/2019
Fittings,
Like, Tee
Elbow,
Socket,
Union,
Valves Like
Ball Valves,
Gate Valves
Tapes And
Cocks Of
Gun Metal,
And Iron
Pipes As Per
Class 06.
2202221 11 C.P. Registered
08/09/20 Bathroom
& valid till
Fittings
11 08/09/2019
Includes
Taps, Cocks,
P.V.C
Overhead,
Hand &
Commode
Shower,
Flush Waste
Pipe, Jalis,
Connections,
Wash Basin,
Stainless
Sink, Soap
Dish, C.P.
CS (Comm.) No. 1865/19 Page No. 41 of 64
Towel Rod
& Goods
Made From
Plastic.
Brass
Internal
Fittings, Ball
Cocks &
Ferules,
Flanges,
Extension
Plus, Cp
Cap, Gate
Valve, Ball
Valve &
Pipe Fittings
As Per Class
11 For Use
In Bathroom
Accessories
& Sanitary
2202222 11 C.P. Registered
Bathroom
08/09/20 & valid
Fittings
11 Includes till
Taps, Cocks, 08/09/2019
P.V.C
Overhead,
Hand &
Commode
Shower,
Flush Waste
Pipe, Jalis,
Connections,
Wash Basin,
Stainless
Sink, Soap
Dish, C.P.
Towel Rod
& Goods
Made From
Plastic.
CS (Comm.) No. 1865/19 Page No. 42 of 64
Brass
Internal
Fittings, Ball
Cocks &
Ferules,
Flanges,
Extension
Plus, Cp
Cap, Gate
Valve, Ball
Valve &
Pipe Fittings
As Per Class
11 For Use
In Bathroom
Accessories
& Sanitary
Purposes
3868122 11 Water Pending
22/06/20 Supply And
Sanitary
18
Purposes,
Ball Valves
& Safety
Fittings For
Water Pipes,
Bathroom
Installation
For Sanitary
Purpose,
Sanitary
Installations
Water
Supply And
Sanitation
Equipment,
Taps For
Water Pipes,
Automatic
Flush Vales
For Toilets,
Water
CS (Comm.) No. 1865/19 Page No. 43 of 64
Flushing For
Installation,
Commodes
Being
Toilets,
Stainless
Steel Sinks,
Ball Cocks
For Toilet
Cisterns,
Ball Cocks
For Toilet
Tanks, Float
Valves Ball
Cocks.
60. PW1 further deposed that in the month of June, 2018, during the market search, the Plaintiff found that the Defendant No.1, M/s Nemat Trade Agency, having office at 11 (New No.21), Errabalu Chetty Street, Chennai- 600001 (facing sembudoss Street), old Defendant No.2, M/s. Devi Hardwares, having office at 63A/1, Balakumaran Nagar, Part-B, Redhills Road, Kolathur, Chenai-99, old Defendant No.3, M/s Hateemy Sales Corporation, having office at No.40 Sembudoss Street, Chennai- 600001, and old Defendant No.4, M/s Hussaini Sales Corporation, having office at Old No.13, New No. 38, Errabalu Chetty Street, Chennai-600001, are engaged in the business of manufacturing and marketing/distributing of the goods i.e., PVC Tubling, Sleeve, Rubber House, PVC Braded Hoses, Rubber Sheets, Suction Hoses & Teflon Taps, GI, PVC, Fitting, Jetpump, Sanitary Wares, Electricals and Hardwares, Finolex, True Bore, Star, GRR, Pipes & Remesh Pumps, etc., under the trademark CS (Comm.) No. 1865/19 Page No. 44 of 64 in entire market of Chennai, directly and/or through agents/distributors.
61. PW1 further deposed that old Defendant No.5 was unknown person/entities who is engaged in the unauthorized and illegal manufacturing and/or supplying and/or selling out the impugned goods bearing the Plaintiff's Trademark logo/device/packaging/ getup/artistic work or any other identical/similar mark and it is impossible to either identify or pursue the said persons/entities & accordingly, the said unknown persons/entities are impleaded as "Ashok Kumar" and the Plaintiffs seek a universal order against any person who claims to manufacture and/or sell the impugned goods bearing Plaintiff's Trademark/logo/device/artistic work or any other identical/similar mark in the form of "John Doe" order. PW1 further deposed that Ld. Local Commissioner visited the premises of the defendants and found huge quantity of counterfeited products and apart from Defendant no.1 to 4, Ld. Local Commissioner also visited the premises of Mr. Jagdish Prakash Saraf, proprietor of Shyam Sanitary Store at 2nd Floor, 49, Samburda Street, Chennai - 600001 and also at Shop no.3, Philip Street, Chennai - 600107 and ceased huge quantity of infringing / counterfeited products bearing the trademark 'WATERMAN' from the aforesaid premises. PW1 further deposed that Ld. Local Commissioner also visited the premises of Mr. Santosh Sethia proprietor of M/s. SSP Sanitary Store at 5/9, Kondi Chetty Street, Opp. High Court, Chennai - 600001 and ceased huge amount of infringing/counterfeited sanitary CS (Comm.) No. 1865/19 Page No. 45 of 64 goods bearing the trademark 'WATERMAN' from the aforesaid premises and has been secured to put in a 20 plastic bags/sacks. PW1 further deposed that defendants adopted an identical/deceptively and confusingly similar/same trademark with a sole motive to dishonestly/unfairly en-cash upon the reputation and goodwill of the Plaintiff's reputed Trademarks/logo/device / / . He further deposed that the Defendants use of identical or deceptively and confusingly similar/same trademark in relation to similar/identical products, which bound to create confusion in the mind of the customers, marketers and public at large & defendants aforesaid activities will lead to infringement, passing off and dilution of the Plaintiff's well known trademark. Thus, they are entitled for injunction and damages and delivery of the goods etc. He has also relied upon following documents :-
CS (Comm.) No. 1865/19 Page No. 46 of 641. Copy of partnership deed dated 12.4.2016 as Mark PW1/1.
2. Authority letter in his favour as Ex. PW1/2.
3. Computerized downloaded form TM-P along with receipt as Ex. PW1/3 and Ex. PW1/4 respectively
4. Copy of retirement deed dated 31.1.2011 as Mark PW1/5
5. Copy of partnership deed dated 1.4.2011 as Mark PW1/6
6. Legal proceedings certificate as Ex. PW1/7.
7. Computerized downloaded application for legal proceedings certificate as Ex. PW1/8(Colly. 10 pages)
8. Computerized downloaded receipt as Ex. PW1/9.
9. Computerized downloaded status report of plaintiff's trademark as Ex. PW1/10
10. Computerized downloaded trademark certificate of plaintiff as Ex. PW1/11 (Colly. 6 pages).
11. Copy of right registration certificate as Ex. PW1/12 (Colly 2 pages) (OSR).
12. Computerized downloaded receipt of application filed before the trademark registry to get NOC of copyright vested in Trademark Logo / device of Waterman as Ex. PW1/13.
13. Annual turnover certificate as Ex. PW1/14.
14. tax invoice as EXPW1/15 to EXPW1/ 56
15. Copy of advertisement of Plaintiff's mark in newspaper / magazines as Mark PW1/57 and Mark PW1/58
57. Copy of bill of Defendant's impugned goods as Mark PW1/59
58. Copy of visiting card of Defendant No.1 as Mark PW1/60
59. Affidavit of Sh. K.S. Nair pertaining to purchase of CS (Comm.) No. 1865/19 Page No. 47 of 64 impugned goods from Devi Hardwares, Nemat Trade Agency, Hussaini Sales Corporation, Hateemy Sales Corporation as Ex. PW1/61, Ex. PW1/62, Ex. PW1/63 and Ex. PW1/64 respectively.
60. Photographs of Plaintiff's goods as Mark PW1/65 (being not supported by 65B certificate).
61. Photographs of Defendant's impugned goods as Mark PW1/66 (being not supported by 65B certificate).
62. Report of Ld. Local Commissioner as Ex. PW1/67 (Colly.).
63. Affidavit of Plaintiff under Section 65-B of Indian Evidence Act, 1872 as Ex-PW-1/68.
62. In his cross examination he stated that he is partner of plaintiff firm and filed the partnership deed on record as Ex. PW1/D1. He admits that plaintiff partnership firm is not registered with the Registrar of Firms. He further stated that get checked the recovered articles from the premises of defendant No. 2 and informed the LC that same are duplicate articles having their trademark. He further deposed that LC conducted raid at the premises of defendant No. 3 on the same day when the raid was conducted at the premises of defendant No. 2. PW1 further deposed that he got audited accounts for the year 2018-19 from CA. He denied the suggestion that no goods were recovered from premises of defendant No. 3.
63. In order to deny the claim of plaintiff, defendant no.2 has only examined himself as DW1 who led his evidence by way of affidavit Ex. DW1/A. DW1 in his evidence affidavit has stated that He has no concern with the business of his father i.e. M/s Shyam Sanitary Store. DW1 further deposed that he used to CS (Comm.) No. 1865/19 Page No. 48 of 64 reside at rented premises i.e. Flat No. FA, Shivalay Apatment, Moggpair West, Chennai since 2007 & his father used to reside at MIG, 194, Nonumbur, Moggpair West, Chennai & his brother is the owner of MIG, 194, Nonumbur, Moggpair West, Chennai. He further deposed that his father has not left any property and his father was on rent at shop no. 3, Phillip Street Chennai- 600107 & Shyam Sanitary Store, located at 2 nd Floor, 49, Sambuda Street, Chennai. He further deposed that his father did not show him any rent agreement of any premises and he does not know who was the landlord of the said shops. He denied that the goods mentioned in the inventory, prepared by LC at page no. 207 & 229 of LC report, were not seized in his presence. DW1 further deposed that his father has left behind four children including him and his mother name is Mrs. Maina Devi and his brother name is Sh. Suresh Kumar and sisters' names are Ms. Versha & Ms. Rekha. He further deposed that he had not inherited any property from his father and there was no ancestral property which was inherited by his father. He further deposed that he has never used his email ID on visiting card in the name Shyam Sanitary Store and voluntarily stated that his father might have used the same without knowledge.
64. In order to deny the claim of plaintiff, defendant no. 3 has only examined himself as DW2 who led his evidence by way of affidavit Ex. DW2/A. DW2 in his evidence affidavit has stated that he is the proprietor of M/s SSP Sanitary Store, selling inter- alia sanitary goods of local brands and other goods by the trademark and has no connection with the trade mark / copyright products of the plaintiff firm. He further deposed that whatsoever CS (Comm.) No. 1865/19 Page No. 49 of 64 goods or products alongwith packaging that has been seized by the LC were only pertaining to specific order received from a particular client for selling the sanitary products in a packaging of particular description as demanded by the said customer / client. He further deposed that the defendant is not responsible for the impugned packaging / trademark as alleged by the plaintiff and the plaintiff has no cause or locus to file the present suit. He denied that during the investigation plaintiff has purchased any sample of infringing goods through bill from his shop. He denied that he had launched any goods / products in the market as of the plaintiff. He further denied tdhat he ever wanted to encash upon the reputation and goodwill of the plaintiff. He further denied that he had ever adopted an identical / confusingly similar mark with an ulterior motive to mis-appropriating the goodwill of the plaintiff.
65. In his cross examination, he stated that he has been engaged in the sanitary business since 2016 and his shop address is 5/9, Kondi Chetty Street, Opp. High Court, Chennai. He further deposed that he was not present when the raid was conducted as he was out of station for two days and his employee Sh. Ranjeet had informed him through phone about the raid. He further deposed that he was selling the goods with the local brand Ajeet.
66. He admitted that the goods were released on superdarinama to Mr. Kothari, worker at SSP Sanitary Plaza. He further deposed that he does not know about the said LC report as no copy of LC report was supplied to his employees or him. He further deposed that the seized materials are lying in his shop and his annual turnover of Rs. 25-30 Lakhs. He further deposed that he has also CS (Comm.) No. 1865/19 Page No. 50 of 64 obtained GST number as and when GST was enforced he got his firm registered in GST. He further deposed that he deal with in GI fittings and GI bender and these goods are used in agriculture. He admitted that he has never filed any application with respect to trademarks waterman or any other trademark with Trademark Registry. He further deposed that Sh. Kothari informed him about the raid through his mobile phone and he generally purchased the goods from Calcutta Tube and Jindal Pipe and he never take any invoices/ bills while these goods from the concerned manufacturers and traders.
67. I have heard arguments from learned counsels for plaintiff as well as defendants no. 2 & 3 whereas defendant no. 1 is ex- parte.
68. PW1 has prove the trade mark certificate issued trade mark registry as EXPW1/8 to PSW1/13 device which clearly proved that trade mark waterman as Device mark for "C.P. Bathroom Fittings " is registered in the name of plaintiff firm. From the cross examination of PW1 and testimony of DW1 & DW2, it is evident that they have not given any suggestion that plaintiff is not the registered owner of the said trademarkWaterman, therefore in these circumstances, I held that plaintiff is able to prove that he is registered owner of the trademark Waterman.
69. Section 28 of the Trademark Act provides the right which are conferred to a registered owner of the trademark and Section 29 of the said Act provides that action for infringement can be taken if somebody else uses the said trademark without the consent of the registered owner. Sections 28 & 29 of The Trademark Act are reproduced as under :-
CS (Comm.) No. 1865/19 Page No. 51 of 64Section 28 in The Trade Marks Act, 1999
28. Rights conferred by registration.--
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
Section 29 in The Trade Marks Act, 1999
29. Infringement of registered trade marks.-- (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of--
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which--
(a) is identical with or similar to the registered trade mark; and CS (Comm.) No. 1865/19 Page No. 52 of 64
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. (6) For the purposes of this section, a person uses a registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising. (7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
70. From the LC report it is evident that goods i.e.bath fittings having trade mark were recovered from the premises of defendants no.1 and 3 and from the premises of deceased Jagdish Saraf partner of M/s Shyam Sanitary store. They have not produce any documents that goods which were seized by the LC were authentic goods of the plaintiff. Therefore I held that defendants no.1 and 3 infringed the trade mark of defendants by dealing in goods having trade mark of plaintiff and thus plaintiff is entitle to decree of permanent injunction restraining the CS (Comm.) No. 1865/19 Page No. 53 of 64 defendants no.1 and 3 and their principal officers, franchise, any agent, assignees, family members, licensees and anyone acting for and on his behalf for manufacturing and selling, offering for sale, advertising or promoting including by way of internet or physically the goods which include the "PVC Tubling, Sleeve, Rubber House, PVC Braded Hoses, Rubber Sheets, Suction Hoses & Teflon Teps, Gl, PVC, Fitting, Jetpump. Sanitary Wares, Electricals and Hardwares, Finolex, True Bore, Star, GRR, Pipes & Remesh Pumps, etc.." and other allied/ identical similar goods under the impugned trademarks or any other mark, which is deceptively similar/ identical to the Plaintiff's Trademarks logo/device / / that may lead to the infringement of the Plaintiffs registered trademark and copyright as well and further I hold that defendant no.2 and 3 are liable to deliver all the infringed goods which were released to their superdar and any other goods having similar or deceptively similar Trade mark to plaintiff which plaintiff will destroy.
CS (Comm.) No. 1865/19 Page No. 54 of 6471. As far as defendant no.2 is concerned since as held in issue no.1 and 2 no cause of action arose against him as he is not the legal representative of the deceased defendant no.2 Jagdish Saraf or the partnership firm Shyam Sanitary Store therefore plaintiff is not entitle to the decree of permanent injunction. Issue no.4 is decided accordingly.
Issue No. 5 " Whether the plaintiff is entitled to decree of delivery-up of all the counterfeit goods as claimed in prayer clause (d) ? OPP"
And Issue No. 6 "Whether the plaintiff is entitled to decree of damages & rendition of account as claimed in prayer clause
(f) ? OPP"
72. As far as defendant no. 1 M/s Neemat Trade Agency is concerned, despite service of defendant no. 1 none has appeared on behalf of defendant no.1, hence, the testimony of PW-1 qua defendant no.1 has gone unrebutted, unchallenged and uncontroverted and are substantiated from the record.
73. PW1 in his testimony has deposed that LC had conducted inspection to the premises of defendants no. 1 to 4 and also the premises of Jagdish Prasad Saraf, proprietor of M/s Shyam Sanitary Store and Sh. Santosh Sethia, proprietor of SSP Sanitary Stores who were later on impleaded as defendants no. 5 & 6 and after deletion of original defendants no. 2 to 4 they have become defendants no. 2 & 3 respectively. Since from the perusal of LC report it is evident that LC has stated that he visited the premises of defendant no. 1 M/s Nemat Trade Agency at 11 (New no. 21), CS (Comm.) No. 1865/19 Page No. 55 of 64 Errabalu Chetty Street, Chennai-60001 (Facing Sembudoss Street) and committed inspection of premises on 16.07.2018 and seized infringing goods having trademarks of plaintiff and made inventory of the same which is as under :-
74. Since no objection has been filed by the said report, therefore, there is no ground to disbelieve the said report. Hence, I held that the aforesaid articles having infringed trademark of plaintiff have been recovered from the premises of defendant no.
CS (Comm.) No. 1865/19 Page No. 56 of 641. Further, same has been released on superdari to one Hussain, proprietor / owner of M/s Nemant Trade Agency, therefore, I direct defendant no. 1 to hand over the said infringed goods to the plaintiff and thereafter plaintiff shall destroy the same.
75. As far as defendant no. 3 Mr. Santosh Sethia,Proprietor of SSP Sanitary Stores is concerned, as per LC report the infringed goods having trade mark of plaintiff were seized and he made inventory and released the same on superdari. The inventory of the same as prepared by LC is under:
CS (Comm.) No. 1865/19 Page No. 57 of 6476. Since defendant no.1 has not appeared to defend the case, therefore, I after relying upon LC report hold that defendant no. 1 was found in possession of infringed goods having infringed trademark of plaintiff.
77. As far as defendant no. 3 is concerned, he has not denied that LC has carried out inspection at his premises and further has not denied that the goods having trademark Waterman recovered from his shop. He has not deposed that the goods recovered from his shop having plaintiffs trademark were genuine goods of the plaintiff company and has purchased the same through legal sources rather in his evidence, he has deposed that whatsoever good of products alongwith packaging that has been seized by LC were only pertaining specific order received from a particular client for selling the sanitary products in a packaging of a particular description as demanded by the said customer / client. He is businessman must be knowing that the goods having any particular trademark / brand and particular packaging name belong to some other person cannot be manufactured or sold without the consent of the owner of the said trademark or without purchasing the same from rightful owner. In my view, defendant no. 3 need to produce the bill if same were original good of the plaintiff but defendant has failed to produce any such bill thus there is no ground to disbelieve the testimony of PW1 that defendant no.2 was dealing in counterfeit goods having trade mark of plaintiff and liable to deliver all the goods which was seized from his shop and released on superdarai, therefore, I direct defendant no. 3 to hand over the said infringed goods to the plaintiff and thereafter plaintiff shall destroy the same.
CS (Comm.) No. 1865/19 Page No. 58 of 6478. As far as defendant no. 2 Sumit Saraf is concerned, since original defendant Jagdish Prasad Saraf has already expired whereas plaintiff has failed to prove that after death of Jagdish Saraf who has inherited the estates of deceased Jagdish saraf and M/s Shyam Sanitary Store, therefore, in my view, as stated above, plaintiff has failed to prove that defendant no. 2 Sumit Saraf any concern with the M/s Shyam Sanitary Store, therefore, in my view, in these circumstances, no order can be passed to direct defendant no. 2 to hand over the infringed goods to plaintiff which was released on superdari to deceased Jagdish Prasad Saraf, therefore, relief so far as delivery of infringed goods qua defendant no. 2 is declined. Further, plaintiff is not entitled any damages qua the defendant no. 2.
79. As far as grant of damages is concerned, in the case of Microsoft Corporation v. Rajendra Pawar & Anr. reported as 2008 (36) PTC 697 (Del.), considering the aspect of punitive damages, it was held as below:-
"22. Perhaps it has now become a trend of sorts, especially in matters pertaining to passing off, for the defending party to evade Court proceedings in a systematic attempt to jettison the relief sought by the Plaintiff. Such flagrancy of the Defendant's conduct is strictly deprecatory, and those who recklessly indulge in such shenanigans must do so at their peril, for it is now an inherited wisdom that evasion of Court proceedings does not de facto tantamount to escape from liability. Judicial Process has its own way of bringing to task such erring parties whilst at the same time ensuring that the aggrieved party who has knocked the doors of the Court in anticipation of justice is afforded with CS (Comm.) No. 1865/19 Page No. 59 of 64 adequate relief, both in law and in equity. It is here that the concept of awarding punitive damages comes into perspective.
23. Punitive damages are a manifestation of equitable relief granted to an aggrieved party, which, owing to its inability to prove actual damages, etc., could not be adequately compensated by the Court.
Theoretically as well as practically, the practice of awarding of punitive damages may be rationalized as preventing under compensation of the aggrieved party, allowing redress for undetectable torts and taking some strain away from the criminal justice system. Where the conduct of the erring party is found to be egregiously invidious and calculated to mint profits for his own self, awarding punitive damages prevents the erring party from taking advantage of its own wrong by escaping prosecution or detection."
(emphasis added)
80. Now coming the question how much damages of compensation the plaintiff is entitled to recover and whether any infringement of the trademark of the plaintiff has been done by the defendants.
81. As far as damage is concerned, the plaintiff would be entitle to the damages of the amount which defendant has earned by dealing in infringed goods. Since the defendant has also not given any details of price on which the said socks are sold and how much profit he has earned by selling said socks. Nor he has rendered the accounts. In my view it would be futile exercise to ask the defendant to render the exercise as it is not expected that CS (Comm.) No. 1865/19 Page No. 60 of 64 he would furnish the true account of sale of these infringed goods when he has denied of being dealing in the said goods. Hence, in these circumstances, in my view, it would be futile exercise to direct the defendant to furnish the account to ascertain the profit he earned by selling infringed goods. Hence, prayer for rendition of account by defendant is hereby declined.
82. The plaintiff has also neither in the plaint nor in testimony of PW1 has given how much profit defendant would have earned or loss caused to them. Though at the time of final arguments plaintiff goods recovered from the premises of defendant no.1 would have been of the value of Rs. 293144/- and from the premises of defendant no.3 Rs. 565323. Hence, considering the goods recovered from that defendant 1 and 3 which prove that they are involve in business of selling infringed goods and must be earning reasonable profit, I held that plaintiff is entitled punitive /exemplary damage of Rs. 2,00,000/- (rupees two lakhs only) each from defendants no. 1 & 3.
RELIEF
83. In view of findings of aforesaid issues, I pass a decree for permanent injunction thereby restraining the Defendant no.1 and 3, their associates and agents, officers, employees, distributors, representatives and anyone acting for and on their behalf for manufacturing and selling, offering for sale, advertising or promoting including by way of internet or physically the goods which include the "PVC Tubling, Sleeve, Rubber House, PVC Braded Hoses, Rubber Sheets, Suction Hoses & Teflon Teps, Gl, CS (Comm.) No. 1865/19 Page No. 61 of 64 PVC, Fitting, Jetpump. Sanitary Wares, Electricals and Hardwares, Finolex, True Bore, Star, GRR, Pipes & Remesh Pumps, etc.." and other allied/ identical similar goods under the impugned trademarks or any other mark, which is deceptively similar/ identical to the Plaintiff's Trademarks logo/device / / that may lead to the infringement of the Plaintiffs registered trademark and copyright as well.
84. Further, I pass a decree directing the defendant no.1 and 3 to hand over / deliver all the infringing goods which were seized by Ld. LC and released on superdari to them and further I also CS (Comm.) No. 1865/19 Page No. 62 of 64 pass a decree in favour of plaintiff and against the defendants no. 1 & 3 for destruction of all blocks, dies, packaging material, packaging strips, wrappers, labels, plastic packaging boxes, handbags etc. bearing impugned trademark of the defendants or any other mark identical to and or deceptively similar with Trademarks logo/device / / of the Plaintiff and direct the plaintiff to destroy all the goods which were given to him authorized representative Nitin Sharma by Local Commissioner.
85. Further, I pass a decree for recovery of sum of Rs. 2,00,000/- (rupees lakh only) each against defendants no. 1 & 3 by way of punitive /exemplary damages. The damages awarded shall be payable, within a period of three months from the date of passing of the judgment failing which, the said amount shall carry interest @ 8% p.a. from the date of the decree, till realization. Further, defendants no. 1 & 3 are also liable to pay proportionate cost i.e. 1/6 each which plaintiff has incurred.
CS (Comm.) No. 1865/19 Page No. 63 of 6486. Suit is accordingly decreed in favour of the plaintiff and against the defendants no. 1 & 3. However, suit qua defendant no. 2 stands dismissed. Decree sheet be prepared accordingly.
File be consigned to Record Room.
Pronounced in open Court on 30.11.2023.
(Sanjeev Kumar Aggarwal) District Judge (Commercial Court)-01, Central, Tis Hazari Courts, Delhi.
CS (Comm.) No. 1865/19 Page No. 64 of 64