Delhi District Court
P. P. Jewellers Private Limited vs P. P. Jewellers Retail Private Limited on 9 July, 2021
IN THE COURT OF SHRI MAN MOHAN SHARMA, DISTRICT JUDGE
(COMMERCIAL COURT)-06, CENTRAL DISTRICT
TIS HAZARI COURTS, DELHI
IN THE MATTER OF :-
CS (Commercial) No. 1551/2021
P. P. Jewellers Private Limited
Having registered office at:
H-5, Netaji Subhash Palace,
Pitampura, New Delhi-110006
.....Plaintiff
VERSUS
1. P. P. Jewellers Retail Private Limited
Having registered office at: 2700,
Deshbandhu Gupta Road, Karol Bagh,
New Delhi-110005
2. Mr. Pawan Gupta, S/o Sh. Munna Lal
Gupta R/o C-19, Rana Pratap Bagh,
Delhi-110007
3. Mr. Piyush Gupta
S/o Sh. Pawan Gupta
R/o C-19, Rana Pratap Bagh,
Delhi-110007
Defendants
ORDER
1. Arguments on the application under Order XXXIX Rule 1 and 2 of the Code of Civil Procedure for consideration of ad-interim ex-parte injunction have been addressed by Sh. Tarun Singhla, Ld. Counsel for plaintiff yesterday.
2. The plaintiff has filed a suit for permanent injunction and rendition of account against the three defendants. As per the plaint the plaintiff is a company CS)COMM) no. 1551/2021 Page no.1 of 9 incorporated in 1993 under the Companies Act 1956 having its registered office at H-5, Netaji Subhash Palace, Pitampura, New Delhi-110003. The defendant no. 2 namely Sh. Pawan Kumar Gupta is one of the directors of the plaintiff besides Sh. Kamal Kumar Gupta and Smt. Veena Gupta who are husband and wife. The defendant no. 2 is the younger brother of Sh. Kamal Kumar Gupta. The share holding of the plaintiff is divided into three groups commonly known as Kamal Group, Pawan Group and Rahul Group having share holding of 59.53%, 26.40% and 14.07% respectively.
3. The plaintiff owns three registered trademarks i.e. 'P P Jewellers', 'PP' and 'PPJ' (logo), which were adopted in the year 1989 and have been continuously used since then. The plaintiff has acquired the trademark 'P P Jewellers' in relation to jewellery and allied goods by virtue of assignment from defendant no. 2, which has been duly registered with the Registrar of Trademark and valid till 26.03.2030. Trademark 'PP' in Class 14 in respect of jewellery and allied goods is valid till 27.03.2030.
4. It has been submitted before me that the trademarks of the plaintiff have attained considerable goodwill and reputation in the market and the trademarks have acquired the status of well known trademarks. The plaintiff has spent huge amount on the advertisement, promotion and propaganda, which amount has run into several crores.
5. It is submitted that the plaintiff is conducting its business of sale of jewellery at prominent places in New Delhi which are at Rani Jhasi Road, Sadar Bazar; Netaji Subhash Palace, Pitampura and Deshbandhu Gupta Road Karol Bagh New Delhi. The buildings of the plaintiff are also symbolic of its trademark.
6. The plaintiff suffered sharp decline in its sale in the recent past and discuss the matter with defendant no.2 who propounded the reason for the same due to CS)COMM) no. 1551/2021 Page no.2 of 9 competition from other jewellers of Karol Bagh, a hub of jewellery business. However to the utter shock or dismay of the one of the directors namely Sh. Kamal Kumar Gupta a revelation in the form of an invoice no.8421 dated 02.02.2021 issued by the defendant no. 1 i.e. PP Jewellers Retail Pvt. Ltd. narrated a different story of stab in the back. The defendant no. 1 prominently uses the trademark of the plaintiff as its name in the course of the trade which by itself is an infringement of the plaintiff's trademark doing by the definition of the trademark as given in Section2(1)(zb) read with Section 29 of the Trademark Act 1999. This revelation was made on 05.04.2021. On inquiry, it transpired that the defendant no.2 and defendant no. 3 had promoted the defendant no. 1 in the year 2015, as appearing in the records available on the website of Ministry of Corporate Affairs. The said concern i.e. defendant no. 1 is managed by Sh. Piyush Gupta, the defendant no. 3, who is none other than the son of defendant no. 2 alongwith one Sh. Anil Bhandari. It was also revealed that the defendant no. 1 has made huge turnover since 2016 to 2019 by exploiting the trademark and trade name of the plaintiff and also using the Karol Bagh address of the plaintiff by the defendant no. 2. The plaintiff's stock in trade was used by the defendants but invoices were issued by the defendant no.1 and the fiduciary capacity was misused and waylaid by the defendants. The acts and omissions of the defendants not only amounted to infringement and passing off but also constituted misappropriation of the gold stock and goods of the plaintiff. The defendant nos. 1 and 2 have ostensibly no independent stock of their own and it is the stock of plaintiff which is being diverted by issuing invoices in the name of defendant no.1 and constitutes siphoning off the resources of plaintiff illegally and dishonestly.
7. To add insult to the injury the plaintiff came to know that the defendants were opening a show room of defendant no. 1 somewhere in South Extension CS)COMM) no. 1551/2021 Page no.3 of 9 Part-I on 21.04.2021 and later on by another invitation the date of opening was rescheduled as 12.06.2021 at F-47, South Extension Part-I, New Delhi. The invitation was issued under the name of Sh. Pawan Gupta and Sh. Piyush Gupta i.e. defendant nos. 2 and 3 respectively and they also illegally used the reference of 'P. P. Jewellers Karol Bagh' without any license authority.
8. It is submitted that the ld. Commercial Judge-3, Central, Delhi had been carried away by the aspect of delay on the part of plaintiff in bringing the suit and in this back drop the order dated 09.06.2021 had been passed. However, there is no delay as the plaintiff has acted with due promptitude on coming to know of the state of affairs on 05.04.2021 and instituted the suit on 13.04.2021 without any delay. The defendants are still continuing with their wrongful acts to the detriment of the plaintiff and the plaintiff would suffer serious injury if the defendants are not injuncted. It is therefore prayed that the defendants be restrained by way of an ex-parte ad-interim injunction for the protection of the trademarks of the plaintiff and that the defendants may be restrained from running their showroom using the logo of P P Jewellers at F-47, South Extension Part-I, New Delhi or at any other place.
9. I have considered the submissions.
10. At the outset, I may make clear that I am not sitting in appeal against the order dated 09.06.2021 passed by Sh. M. C. Gupta, Ld. District Judge Commercial Court-03, Central, Delhi. In compliance of the directions passed by Hon'ble High Court of Delhi in CM(Main) 406/2021 vide order dated 18.06.2021, I have considered the aspect of urgency without being influence by the observations made in order dated 09.06.2021 and have held the suit to be of an urgent nature vide my order passed on 08.07.2021.
CS)COMM) no. 1551/2021 Page no.4 of 9
11. There is copy of trademark history/PR detail in respect of trademark 'PP Jewellers' vide no.507596B whereby the factum of assignment of he said trademark in favour of the plaintiff have been duly recorded and the registration stands renewed till 27.03.2030. The copies of Assignment Deeds have also been placed on record. The Assignment Deed dated 06.05.2003 executed by the defendant no.2 in favour of plaintiff clearly assigns the trademark along with the accrued goodwill and in Clause 4 it has been undertaken that the defendant no. 2 shall not infringe or use trademark identical and deceptively similar to the said trademark. The same has been the case in respect of the logo mark 'PPJ' bearing registration no. 507596. The assignment has been duly acted upon and registered with RTM. The trademark Mark 'PP' vide no. 1197456 has also been registered in the name of the plaintiff in Class-14 since 08.05.2003. thus, the plaintiff has been prima facie able to show that it is the registered proprietor/owner of the trademarks 'P P Jewellers', 'PP' and 'PPJ' (logo). It has also been prima facie demonstrated on the record that the plaintiff has been continuously and actively using the said trademark in the course of its trade. It is also submitted on record that the plaintiff has earned considerable goodwill and reputation in respect of its various trademarks which are part of its nomenclature also and are therefore, able to distinguish the goods of the plaintiff.
12. It has also been brought on record that the plaintiff came to know of the infringement and passing off acts of the defendants on 05.04.2021, albeit these act and omissions were of the vintage 2015 onwards. The plaintiff states that the fraudulent acts of the defendants came to light only in early April, 2021. Even if it is presumed that the plaintiff was aware of the said acts since 2015, the delay in bringing the suit may have a bearing on the aspect of damages and CS)COMM) no. 1551/2021 Page no.5 of 9 cannot whittle down the aspect of infringement, until and unless the plaintiff is hand-in-glove with the defendants.
13. The question of delay is an important aspect which needs to be reckoned in a trademark matter while considering an interim injunction. The Courts may refuse to grant interlocutory relief in case the plaintiff fails to provide a satisfactory explanation. The plaintiff can get over the objection on the ground of delay by establishing a prima facie case in his favour.
14. Knowledge of the existence of an infringing mark on the part of the plaintiff is an important factor in cases of delay. Acquiescence is a facet of delay. However, if the plaintiff has been kept in dark by the defendants over some period of time by taking undue advantage of a state of active confidence and faith the question of delay fades into insignificance if the plaintiff springs into action when the fraud is revealed to him. However, where there is a dishonest adoption of the mark by the infringer, mere delay would not prevent the plaintiff from getting the relief under law.
15. In Ansul Industries vs Shiva Tobacco Company it has been held that mere delay is not sufficient to defeat grant of injunction in cases of infringement of trade mark. Delay is not a bar to enforce and claim a legal right.
16. In Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Company & Anr. (1997) 1 SCC 99 it has been held that the infringement of the trademark is a continuing cause of action. It also noted that the act of passing off is an act of deceit under the Law of Torts and whenever such act is committed by the de- fendants, the plaintiff gets a fresh cause of action to come to the court. Simi- larly, the same situation prevails regarding infringement of the trademark. (Cited by Hon'ble High Court of Delhi in Allied Blenders and Distillers Pvt Ltd & Ors versus Amit Dahanukar & Anr.) CS)COMM) no. 1551/2021 Page no.6 of 9
17. In Novartis AG vs. Wanbury Ltd & Anr. 2005 (31) PTC 75(Del) Delhi High Court while considering question of delay has held that mere delay in bringing an action for infringement of a trademark or for passing off is no ground for re- fusing an injunction. The grant of injunction becomes necessary if it prima facie appears that the adoption of the mark was dishonest.
18. In the case in hand, prima facie there is nothing to suggest that the plaintiff had any complicity in the infringement of trademarks or the passing off etc. as the same works against its pecuniary interests. There is nothing to suggest that the plaintiff on the consideration of acts of a ordinary prudent person would have been a party. Therefore, from the material on record it transpires that the plaintiff on the discovery of the invoice no.8421 dated 02.02.2021 jumped into action. This invoice has been issued in the name of PP Jewellers Retail Pvt. Ltd. (Karol Bagh) i.e. the defendant no.1 prominently using the address of the plaintiff as well as its trademark 'PP Jewellers'. Similarly there is another in- voice no.304 dated 06.07.2021 issued by the defendant no.1 in similar fashion under the name of PP Jewellers Retail Pvt. Ltd. (South Ex). Under the trade- mark PP Jewellers' the words 'By Pawan Gupta' have also been added. The ad- dress F-47, South Ex. New Delhi-110049 has also been written in the said in- voice at bottom the association with the Karol Bagh office of plaintiff has also been shown.
19. Having considered the material on record and the submissions made, it is prima facie clear that the defendants have been infringing the trademarks of the plaintiff more specifically the trademark 'PP Jeweller'. The invitation card and the invoices show that the defendant nos. 2 and 3 are venturing into such acts of infringement of trademark of plaintiff as well as passing off their goods as if they originate from the plaintiff. Apparently, these are acts of unfair competi- tion and riding upon the goodwill of the plaintiff to the detriment of the plaintiff CS)COMM) no. 1551/2021 Page no.7 of 9 and simultaneously to the pecuniary advantage of the defendants. These acts and omissions, if allowed to continue, would result in the dilution of the good- will and reputation of the plaintiff which cannot be compensated in terms of money and the consequences of these are likely to haunt the plaintiff for many years to come. This would have continuous detrimental effects at the cost and expense of the plaintiff and some of these would be non repairable.
20. The plaintiff has demonstrated a prima facie case and apprehension of ir- reparable injury, which cannot be compensated in terms of money. The matrix of the facts, shows on the face of it that in view of the material on record, the balance of convenience lies in favour of the plaintiff.
21. Accordingly, an ex-parte ad-interim injunction is issued in favour of plain- tiff and against the defendants, thereby restraining them using the trademarks 'P P Jewellers', 'PP' and 'PPJ' (logo), or the trade name of the plaintiff i.e. 'PP Jew- ellers' in any way in respect of jewellery or other allied products. The defen- dants are also restrained to use the trademarks of the plaintiff as the name of their business concern or in any other manner. The defendants are also re- strained from using the trademarks or trade name of the plaintiff with any prefix or suffix like 'By Pawan Gupta' or 'South Ex.' or any other similar association with the trademark or trade name of the plaintiff and further restrained to make any sale of jewellery or allied goods bearing at the showroom of defendant no. 1 at F-47, South Ex. Part-I New Delhi-110049 or at any other place. This in- terim injunction would continue till the plaintiff's application under Order XXXIX Rule 1 and 2 CPC is finally disposed of.
22. In view of the pandemic situation the plaintiff is given five working days from the date of this order for the compliance of Order XXXIX Rule 3 CPC and requisite affidavit be filed.
CS)COMM) no. 1551/2021 Page no.8 of 9
23. All the discussion in this order is for the sole purpose of the determination of the present application and is not to be construed as a final expression on the merits of the case.
24. A copy of this order be given dasti to the plaintiff on payment of usual charges by way of court fee stamps.
25.This order be posted on the website of Delhi District Courts forthwith.
Digitally signed byAnnounced in the open MANMOHAN
MANMOHAN SHARMA
Court today today i.e. 09.07.2021. SHARMA Date: 2021.07.09
13:28:50 +0530
Man Mohan Sharma
District Judge,(Commercial Court)06
Central District, THC Court/09.07.2021
CS)COMM) no. 1551/2021 Page no.9 of 9