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S M Motorenteile Gmbh vs Maharashtra Motors& Ors on 3 June, 2022

Author: Navin Chawla

Bench: Navin Chawla

     $~9
     *          IN THE HIGH COURT OF DELHI AT NEW DELHI
     +          CS(COMM) 425/2022
                S M MOTORENTEILE GMBH                       ..... Plaintiff
                              Through: Mr.Pravin Anand, Mr.Manish Biala,
                                       Mr.Devesh     Ratan,      Mr.Ashutosh
                                       Upadhyaya, Advs

                                       versus

                MAHARASHTRA MOTORS& ORS.                                       ..... Defendants
                           Through: Nemo

                CORAM:
                HON'BLE MR. JUSTICE NAVIN CHAWLA
                             ORDER

% 03.06.2022 I.A.9639/2022 (Exemption)

1. Allowed, subject to all just exception.

1. This is an application seeking exemption from making advance service of the paper book of the present suit on the defendants. It is alleged that the service has not been made as it is apprehended that the defendants may, on service of the notice, dispose of or sell the goods being manufactured under the impugned trademark. Appointment of Local Commissioners is also prayed along with the suit.

2. Having considered the contents of the application, the same is allowed. The plaintiff is granted exemption from making an advance service of the paper book of the suit on the defendants.

1. This is an application filed on behalf of the plaintiff seeking to file additional documents at a later stage.

2. The plaintiff may file the additional documents strictly in Signature Notaccordance Verified with the law.

Digitally Signed By:SHALOO BATRA Signing Date:25.06.2022

3. The application stands disposed of.

CS(COMM) 425/2022

1. Let the plaint be registered as a suit.

2. Issue summons to the defendants to be served through all permitted modes, returnable on 21st September, 2022.

3. The summons to the defendant(s) shall indicate that the written statement(s) to the plaint shall be positively filed within a period of thirty days from the date of receipt of summons. Along with the written statement(s), the defendant(s) shall also file the affidavit(s) of admission/denial of the documents of the plaintiff, without which the written statement(s) shall not be taken on record.

4. Liberty is given to the plaintiff to file replication(s) within a period of fifteen days of the receipt of the written statement(s). Along with the replication(s), if any, filed by the plaintiff, the affidavit(s) of admission/denial of documents of the defendant(s) be filed by the plaintiff, without which the replication(s) shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines. I.A. 9636/2022 (Stay)

1. Issue notice to be served on the defendants through all modes, returnable on 21st September, 2022.

2. The defendants shall file their reply to the application within a period of four weeks of service. Rejoinder, thereto, if any, be filed within a period of four weeks thereafter.

3. It is the case of the plaintiff that the plaintiff is engaged in the business of manufacturing and selling high quality Original Equipments for various automobile companies under its trademarks Signature Not'SM'/ Verified / (hereinafter referred to as the 'SM Logos'). Digitally Signed By:SHALOO BATRA Signing Date:25.06.2022

4. The plaintiff asserts that the SM Logos were first used as a trademark for the products of a Joint Venture Company named Schoettle Motorenteile Gmbh, in the year 1973. The plaintiff has succeeded to the rights in the said SM Logos. Since the year 1995, the plaintiff has been manufacturing a plethora of products under the mark. The SM Logos of the plaintiff have been adopted and used extensively and continuously across the globe in over 100 countries.

5. The plaintiff asserts that it is the registered proprietor of the SM Logos in Classes 7 and 12, the details whereof are given by the plaintiff in paragraph 13 of the plaint.

6. The plaintiff has also mentioned its sales figures of India in paragraph 14 of the plaint to be to the tune of €2,94.193.00 and worldwide sales to be to the tune of €2,21,01,300.00 in the year 2021.

7. The plaintiff asserts that in May 2022 it gained knowledge that the defendant nos. 1 and 4 were selling cheap imitations of the plaintiff's products using the plaintiff's SM Logos. The plaintiff, through an independent investigator, purchased products bearing the plaintiff's Logos as under:-

"24. At the premises of Defendant No. I shop, the investigator met with Defendant No. 2, who introduced himself as the person managing the shop, and he informed the investigator that the shop was owned by his father, the Defendant No. 3. The investigator found out that they were selling products bearing the plaintiff s trademarks, and the Defendant No. 2 informed that they regularly deal in such products. Thus, to gather the evidence, the investigator purchased one piece of rope seal from the Defendant No. 1 shop, as shown below:

The said defendants did not provide proper invoice for the same, but the Defendant No. 2 provided a handwritten rough invoice. The photographs of the purchased product as well as the said invoice are being filed herewith.

25. At the premises of Defendant No. 4 shop, the investigator met with Defendant No. 5, who introduced himself as the person managing the shop, and he informed the investigator that the shop was owned by his brother, the Defendant No. 6. The investigator found out that they were selling products bearing the plaintiff s trademarks, and the Defendant No. 5 informed that they regularly deal in such products. Thus, to gather the evidence, the investigator purchased one piece of rope seal from the Defendant No. 4 shop, as follows:

The said defendants did not provide proper invoice for the same, but the Defendant No. 5 provided a handwritten rough invoice. The photographs of the purchased product as well as the said invoice are being filed herewith."

8. The defendant nos. 1 and 4 have been selling that are not manufactured by the plaintiff at all, and thus, the products of the Signature Notdefendants Verified are counterfeit.

Digitally Signed By:SHALOO BATRA Signing Date:25.06.2022

9. Having considered the contents of the plaint, the documents filed therewith and having heard the submissions of the learned counsel for the plaintiff, I am of the opinion that the plaintiff has been able to make out a good prima facie case in its favour. The balance of convenience is also in favour of the plaintiff and against the defendants.

10. Prima facie, I am of the opinion that the impugned goods are likely to deceive the general public and the plaintiff is likely to suffer grave irreparable harm in case ad-interim injunction is not granted at this stage.

11. Accordingly, the defendants, their officers, servants, partners, agents, stockists or others acting on their behalf are restrained from selling, exporting, importing, offering for sale, distributing, advertising, and directly or indirectly dealing in goods and/or services under the trademarks 'SM' and/or or any mark identical or deceptively similar thereto, on products comprising of rope seals or any other goods and/or any other products, in any manner whatsoever, amounting to infringement of the plaintiff's registered SM Logos, passing off and unfair trade competition till the next date of hearing.

12. The provisions of Order XXXIX Rule 3 of the Code of Civil Procedure, 1908 be complied within twoweeks.

1. For the reasons stated in the application, I am of the opinion that the plaintiff has been able to make out a case for the appointment of a Local Commissioner for visiting the premises of the defendants located at the following addresses:-

i) M/s Maharashtra Motors 986, Hamilton Road, Kashmere Gate, New Delhi- 110006 [Premises of Defendant nos. 1, 2 and 3] Signature Not Verifiedii) M/s Nisha Tempo House Digitally Signed By:SHALOO BATRA Signing Date:25.06.2022 1001, Hamilton Road, Kashmere Gate, New Delhi-110006 [Premises of Defendant nos. 4, 5 and 6]

2. I, accordingly, appoint Mr. Bharat Arora, Adv., Address: A-21, LGF, Defence Colony, New Delhi, Mob. No. 9811628929 and Mr. Sharath Sampath, Adv., Address: X-15, First Floor, Hauz Khas, New Delhi, Mob. No. 9818903313 as Local Commissioners to visit the above premises (i) and (ii) of the defendants, respectively.

3. The Local Commissioners shall be entitled to carry out the following acts at the aforesaid premises:

i) Make an inventory of, and seize and seal all the goods including gaskets, packaging material, cartons, stationery, dyes, plates etc., bearing the SM Logos or any mark identical or deceptively similar thereto. The Local Commissioners shall release the seized infringing goods to the defendants or their representatives on superdari basis, subject to the undertaking that the defendants shall not use the same and shall produce the same as and when directed by the Court;

ii) Sign all books of accounts of the defendants including ledgers, cash books, purchase and sale records etc. Pertaining to the sale of impugned goods;

iii) Demand the disclosure of the other premises where the infringing goods are sourced, stocked and sold by the defendants and visit such premises, and carry out the directions as enumerated in clauses i) and ii) hereinabove.

iv) Demand the disclosure of the place of the manufacturing, printing and packaging of the defendants' products and visit such premises, and carry out the directions as enumerated in clauses i) Signature Not Verified Digitally Signed and ii) hereinabove.

4. The Local Commissioners shall also be entitled to take help of the local police, in case, need so arises.

5. The Local Commissioners shall further be entitled to break open locks, in case, access to the Local Commissioner is refused by the defendants.

6. A representative of as well as the counsel for the plaintiff shall be entitled to accompany the Local Commissioners during the inspection process.

7. The Local Commissioners shall be empowered to videograph and/or take photographs of the proceedings.

8. The report of the Local Commissioners shall be submitted within two week of execution of the commission. The Local Commissioners shall alongwith the report file sample copies of the material seized by the Local Commissioners.

9. The fee of the Local Commissioners is fixed at Rs.1,00,000/- (Rupees One Lakh only) each, apart from the out-of-pocket expenses, to be paid by the plaintiff at the first instance.

10. The application is disposed of with the above direction.

11. Dasti.

12. This order may not be uploaded on the website of the Delhi High Court for a period of ten days.

NAVIN CHAWLA, J JUNE 3, 2022/AB Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:25.06.2022