Delhi District Court
Chandra Shekhar Saboo vs Shiv Charan Sharma on 2 April, 2025
-1-
IN THE COURT OF SH. VIDYA PRAKASH
DISTRICT JUDGE (COMMERCIAL COURT)-02, PATIALA
HOUSE COURTS, NEW DELHI
CNR NO.: DLND010086932018
CS (COMM.)/335/2019
[Old Case No.: 121/18]
IN THE MATTER OF:-
1. Chandra Shekhar Saboo
Kuchman Road, Nawa City
Distt. Nagour
Rajasthan-341509
2. M/s Saboo Industries
Kuchaman Chandra Road, Jaipur
Rajasthan - 302001
3. Sunstone Engineering Industries Pvt. Ltd.
Kuchaman Road, Nawacity
Distt. Nagour
Rajasthan - 341509
...PLAINTIFF
VERSUS
1. Shiv Charan Sharma
Proprietor: M/s Ambika Udyog
B-1, Banmore Industrial Area, Banmore
Distt. Morena, M.P. - 476444
2. Rajgarhwala Machinary & Electricals
87/2, Telgali, Siyagang
Indore, Madhya Pradesh.
3. K. D. Products
3, Udyogpur, Agar Road
Ujjain, Madhya Pradesh
...DEFENDANTS
CS (COMM.)/335/2019 Page 1 of 37
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Date of Institution : 09-08-2018
Date of reserving Judgment : 27-03-2025
Date of pronouncing Judgment : 02-04-2025
JUDGMENT
1. Vide this judgment, I shall decide the present suit under S. 134 & 135 of Trademarks Act, 1999 and S. 51 & 55 of Copy Right Act, 1957 for permanent injunction restraining infringement and passing off of the trademark and copy right, delivery up and rendition of accounts etc., filed by plaintiffs against the defendants.
2. At the outset, it must be mentioned that initially, the present suit was filed as non-commercial suit before the concerned Court of Ld. Additional District Judge, Patiala House Courts, New Delhi. During the course of trial, the case was received by this Court by way of transfer, on 27-07-2022 in view of Order No.17016-17031/Judl./ NDD/ PHC/2022 dated 05-7-2022 of the then Ld. Principal District & Sessions Judge, New Delhi District, PHC and consequent upon the directions of Hon'ble Delhi High Court in the case titled as 'Vishal Pipes Limited v. Bhavya Pipe Industry' FAO-IPD No.1/2022 & CM APPLs. No. 12-14/2022 dated 03-6-2022.
BRIEF FACTS OF THE CASE:
3. The case of the plaintiff, as set out in the plaint, is as under:-
CS (COMM.)/335/2019 Page 2 of 37 -3-3.1 The plaintiff no.2 is stated to be a partnership firm, while the plaintiff no.3 is stated to be a company incorporated under the Indian Companies Act, 1956.The plaintiff no.1 is stated to be one of the partners of plaintiff no.2 and one of the Directors of plaintiff no.3.
3.2 It is averred that the plaintiff no.1 is managing the affairs of plaintiff no.2 firm in its ordinary course of business, and is also its authorized signatory.
Besides, he has been authorized by the plaintiff no.3 to institute and file this suit and to do all acts, including to sign and verify the pleadings and to depose to its facts, vide board resolution passed in his favour. Thus, it is stated that the plaintiff nos.1, 2 & 3 constitute a single economic unit having common directors, partners, entities, financial, business and management structure and are working and carrying on business in unison and in mutual cooperation with each other and are popularly known as Saboo Group of Industries. It is also stated that the plaintiff no.2's earlier name was Emery Stone Manufacturing Company and which name has been now changed to the present name of Saboo Industries.
3.3 It is averred that the plaintiffs, through predecessors, are engaged in the business of manufacturing, marketing and trading of Flour mills, Flour Mill CS (COMM.)/335/2019 Page 3 of 37 -4- Stone, Emery Millstones, Corn Grinding Mills, Grain Mills and Rotary Oil Mills, Abrasives and Minerals, Food Products, Salt and Agriculture Equipments and parts thereof and related goods and are offering services in connection therewith [hereinafter referred as "the said goods and business"].
3.4 It is further stated that the plaintiffs, through their predecessors, bonafidely and honestly adopted and conceived the trade mark PUKHRAJ in or around year 1963 and thereafter, in the course of its business, have conceived and created various PUKHRAJ formative trade mark/labels [hereinafter referred to as the 'said trade mark/ label']. It is also stated that said trademarks/ labels are registered in Class 7 under the Trade Marks Act, 1999 in favour of the plaintiffs and same are valid and subsisting as on date in favour of the plaintiffs. Details thereof have been given in Para no.8 of the plaint.
3.5 It is further averred that art works involved in the plaintiffs' said Trademarks/Labels PUKHRAJ are original artistic works and the plaintiffs are the owner and proprietor of the Copyright therein within the meaning of Indian Copyright, 1957. It is also stated that one of the plaintiffs' PUKHRAJ formative trade marks/labels is duly registered under the Indian Copyright Act, 1957 under Registration CS (COMM.)/335/2019 Page 4 of 37 -5- No.A-55820/1999. The plaintiff company has the exclusive right to deal with the said Trademarks/Labels/Trade Names and has been so dealing with them in the course of trade in relation to its said goods and business, inter alia, within the meaning of Section 14 of the Copyright Act 1957.
3.6 It is further averred that with a view to expand and consolidate, the plaintiffs honestly adopted the trade mark / label EMERALD [hereinafter referred to as the said trade mark / label EMERALD ] in the year 1979 through plaintiff no.3 and which is being used by plaintiff no.3 in the course of trade openly, continuously, commercially, exclusively, uninterruptedly in relation to the said goods and business and the plaintiff no.3 has built up a valuable trade, goodwill and reputation there under. Thus, it is claimed that the plaintiff no.3 is the owner and proprietor of the said EMERALD word, stylized, artistic, formative, trade dresses as well as of the copyright involved in various EMERALD formative trade marks/labels and trade dresses. It is also stated that said trademark/ label EMERALD is registered in Class 3 under the provisions of the Trade Marks Act, 1999 and same is valid and subsisting as on date. Details thereof have been given in Para no.11 of the plaint.
CS (COMM.)/335/2019 Page 5 of 37 -6-3.7 Further, it is averred that the plaintiffs have regularly and continuously been promoting their said distinctive Trademarks /Labels and the goods and business thereunder through extensive advertisements, publicities, promotions and marketing & marketing research and have been spending enormous amounts of money, efforts, and time thereon. The plaintiffs have been doing so through various means and modes including through the visual, print, electronic media, in leading Newspapers, trade literature, magazines, over the internet etc. and all of which have tremendous reach, availability and circulation world over including in India. The details of the expenses incurred by the plaintiffs on advertisements and promotion are given in Para no. 14 of the amended plaint.
3.8 The plaintiffs have huge turnover against the sale of goods under the said trademarks/labels/trade dress/ and details of year-wise sales for a period from 1995-96 to 2017-18 and 1979-1980 to 2017-2018 in respect of plaintiff nos. 2 and 3 respectively are given in Para no.14 of the amended plaint.
3.9 It is further the case of the plaintiffs that their said trademarks/labels have all become distinctive, associated and acquired secondary significance with them and their said goods and business.
CS (COMM.)/335/2019 Page 6 of 37 -7-The purchasing public, the trade and industry identify and distinguish plaintiffs' said goods under the said trade mark/labels with the plaintiffs and from the plaintiffs' source and origin alone and regard them as high quality products exclusively as that of the plaintiffs. The plaintiffs' said trade marks/labels are even otherwise arbitrary, fancy trademarks in relation to the goods involved and are consequently inherently strong trademarks.
3.10 It is further claimed that the plaintiffs' said goods and business are known, recognized, demanded, sold and traded in the market and trade with reference to its said trade marks/labels. The members of the trade, industry, the consumers and general public at large are well aware of the plaintiffs, the plaintiffs' said trade mark/labels and the plaintiffs' said goods and business thereunder. The plaintiffs' said trademarks are well known Trade Marks within the meaning of Section 2 (1) (zg) of the Act.
3.11 It is further averred that on account of its good quality and standards of manufacturing and untiring efforts in advertising and marketing, the goods of the plaintiffs under the said trademarks/ labels / copyrights, have acquired enviable reputation and goodwill in business community and public in general and in view of the plaintiffs' proprietary CS (COMM.)/335/2019 Page 7 of 37 -8- rights, both under statutory and common law, in their said trademarks/ labels and their goodwill & reputation, the plaintiffs have the exclusive right to the use thereof and nobody can be permitted to use the same or any other deceptively similar trademark/label in any manner whatsoever in relation to any specification of goods without the leave and license of the plaintiffs.
3.12 It is alleged that the defendant no.1 is engaged in the same goods and business as that of the plaintiffs, i.e., manufacturing, trading and marketing of Mill Stone and Flour Mills machines and parts thereof and related goods and is offering services in connection therewith [hereinafter referred to as the "impugned goods and business"]. The defendant nos. 2 & 3 are stated to be the dealers or distributors of defendant no.1.
3.13 it is stated that the defendants have adopted and started using the trade mark / word mark/ label PANNA PUKHRAJ [hereinafter referred to as the "impugned trade mark/ word mark/ labels" ] in respect of the impugned goods and business. It is also stated that the word EMERALD in Hindi means PANNA and the hence, the defendants' impugned trade mark/ label consists of plaintiffs' two registered trademarks namely PUKHRAJ and EMERALD (which Hindi means PANNA).
CS (COMM.)/335/2019 Page 8 of 37 -9-3.14 It is also stated that the defendants have also copied the artistic features involved in the plaintiffs' said trademark/label and especially that covered by the plaintiffs' copyright registration under No. A-55820/1999 and are using the same in relation to their impugned goods in the course of trade.
3.15 It is stated that for the first time, the plaintiffs learnt about the defendants' impugned adoption of the impugned trademark/label PANNA PUKHRAJ in December,2015 through advertisement of the impugned trade mark under No. 2332625 in Class 07 in the Trade Mark Journal. Being aggrieved thereof, the plaintiffs immediately filed Notice of Opposition thereto before the Registrar of Trade Marks. On plaintiffs' inquires in the Trade Mark Registry during the course of opposition proceedings, it was revealed that the defendants had even earlier filed for the trademark PANNA PUKHRAJ under trade mark application No. 2256173 before the Registrar of trade Marks, however, same was refused by the Registrar of Trade Marks. It is stated that to best of the plaintiffs' belief, the said refusal was on the basis of the plaintiffs' prior registered trademark for the trademark PUKHRAJ which was cited in the Examination Report.
CS (COMM.)/335/2019 Page 9 of 37 -10-3.16 It is further stated that the plaintiffs' inquiry in the market revealed that the defendants had started the manufacturing and trade of the impugned goods under the impugned trademark PANNA PUKHRAJ in or about May, 2016. Being aggrieved thereby, the plaintiff immediately sent legal notice on 29/05/2016 to defendant no.1, to which no reply has been received. It is stated that on enquiry, the plaintiffs came to know from market that the goods of defendant no.1 were not available, and that the defendant no.1 had withdrawn his goods from the markets and hence, complied with the legal Notice. However, it is further stated that recently and in the last week of June,2018, it came to the knowledge of the plaintiffs from the market that the defendants had re-launched and again started using the impugned trade mark/label in relation to their impugned goods.
3.17 Thus, it is alleged that the defendants have dishonestly and malafidely adopted the said impugned word mark/ trade mark/label PANNA PUKHRAJ, which is visually, and structurally identical and/or deceptively and confusingly similar to the registered trademarks/labels i.e. PUKHRAJ and EMERALD belonging to the plaintiffs, thereby causing confusion and deception amongst the unwary purchasing public and traders by making CS (COMM.)/335/2019 Page 10 of 37 -11- them believe that the origin of those goods is the plaintiff company. It is averred that by doing so, the defendants are not only damaging the reputation and goodwill of the plaintiff company by passing off their substandard products as that of the plaintiff company, but are also causing financial loss to the plaintiff company by reaping unfair advantage of the repute and distinctive character of the trademarks of the plaintiff company.
4. On these grounds, the plaintiffs have filed the present suit against the defendants praying therein, inter alia, that decree of permanent injunction may be passed restraining the defendants and all others acting for and on their behalf from using the said impugned word mark/ trademark / label PANNA PUKHRAJ or any other word mark/ trademark/ label, which may be identical with and/ or deceptively similar to the plaintiffs' said trademarks / labels PUKHRAJ and EMERALD (which Hindi means PANNA) in relation to similar goods, thereby infringing plaintiffs' registered trademarks, copyright and passing off their goods and business as that of the plaintiffs.
5. The suit was accompanied with various applications, inter alia, one under Order XXXIX Rule 1 & 2 CPC and another under Order XXVI Rule 9 CPC seeking ex parte ad interim injunction and appointment of local commissioner respectively. After hearing the counsel of plaintiffs, the said applications were allowed, thereby CS (COMM.)/335/2019 Page 11 of 37 -12- granting ex parte ad interim injunction in favour of the plaintiffs and 3 separate Local Commissioners were appointed to visit and search the premises of the defendants with certain conditions, vide common order dated 14-08-2018 passed by Ld. ADJ-01, Patiala House Courts, New Delhi.
6. On being served with the summons of the suit, the defendants put their appearance through counsel namely Dr. Sheetal Vohra, Advocate. Written statement was also filed by defendants, thereby contesting the suit, apart from various applications. It may be noted that the an application under Order 8 Rule 1 A CPC filed on behalf of defendant no.1 seeking leave of the Court to file additional documents i.e. invoices pertaining to the year 2001, was allowed subject to payment of costs of Rs.5,000/-,vide order dated 23-08-2019 passed by Ld. ADJ-01, PHC, New Delhi. As per proceedings dated 20.02.2020, fresh vakalatnama was filed on behalf of defendant no.1 by the counsels, who also stated that they were going to file vakalatnama on behalf of defendant nos. 2 and 3. Documents, in terms of order dated 20.02.2020, were also filed by the defendants, apart from paying costs and thereafter, the matter was adjourned for 28-03-2020.
7. At this juncture, it may be noted that thereafter due to outbreak of Covid-19 pandemic, the matter was adjourned en bloc in view of directions issued from time to time by Hon'ble Delhi High Court and the then Ld. Principle CS (COMM.)/335/2019 Page 12 of 37 -13- District & Sessions Judge, PHC, New Delhi and was taken up for hearing through video conferencing and hybrid mode, in compliance to said directions.
8. At this juncture, it may be noted that the present case was received by this Court on 27-07-2022, as already noted above in Para no.2, and an application under Order VI Rule 17 CPC was moved on behalf of the plaintiff seeking amendment of the suit, thereby enhancing specified value to be above Rs.3,00,000/-, so as to bring the present suit within the ambit of the Commercial Courts Act, 2015, in view of the directions of Hon'ble Delhi High Court in case of Vishal Pipes Limited (supra). The said application was allowed and the defendants were directed to file written statement to the amended plaint within 30 days from the date of the said order, vide order dated 22-11-2022, passed by Ld. Predecessor of this Court. However, none of the defendants preferred to file written statement to the amended plaint.
9. Moreover, since none had been appearing on behalf of defendants since long, they were proceeded against ex parte, vide order dated 20.02.2023, passed by Ld. Predecessor of this Court.
10. Thus, it has emerged from the record that although, the defendants had filed joint written statement to the original plaint, yet they failed to bring on record written statement CS (COMM.)/335/2019 Page 13 of 37 -14- to the amended plaint, despite grant of sufficient time and number of opportunities.
11. The application under Order XXXIX Rules 1 & 2 CPC read with S. 151 CPC was allowed and disposed off vide order dated 05.10.2023, passed by Ld. Predecessor of this Court, thereby making ex parte ad interim order dated 14.08.2018 absolute during pendency of the suit.
12. In order to prove its case, the plaintiffs have examined only one witness i.e. the plaintiff no.1 namely Sh. Chandra Shekhar Saboo, as PW1. He led his examination-in-chief by way of affidavit [Ex.PW1/A] and deposed in terms of the facts of the plaint and has relied on the following documents:-
Srl. Document/Particulars Exhibit(s) no
1. Plaintiff's product photographs. Ex.PW1/1 (Colly)
2. Defendant's product photographs. Ex.PW1/2 (Colly)
3. Status page and Registration Certificate Ex.PW1/3 of the Trademark under application (Colly) number 1287577 in favour of the plaintiff company.
4. Status page of the trademark under Ex.PW1/4 application number 271175 in favour of (Colly) the plaintiff company.CS (COMM.)/335/2019 Page 14 of 37 -15-
Srl. Document/Particulars Exhibit(s) no
5. Status page of the trademark under Ex.PW1/5 Application number 2353981 in favour of the plaintiff company.
6. Extracts of the copyright Registration Ex.PW1/6 having Application no. A-55320/22 from (Colly) the register of the copyright.
7. Status page of the trademark under Ex.PW1/7 application number 2332625 filed by the defendant.
8. Computer Generated Trade Mark Search Ex.PW1/8 Report showing defendant's "Panna (Colly) Pukhraj" and "Panna-Pukhraj" marks being refused and opposed respectively.
9. Status page, Examination report of the Ex.PW1/9 trademark under application number (Colly) 2256173 in favour of the plaintiff company.
10. Consolidated financial data of sales and Ex.PW1/10 marketing since 1995 till 2018 of (Colly) Pukhraj Mark.
11. Sales invoices of the plaintiff's. Ex.PW 1/11 (Colly)
12. Advertisement of plaintiff no. 2. ExPW1/12 (Colly) CS (COMM.)/335/2019 Page 15 of 37 -16- Srl. Document/Particulars Exhibit(s) no
13. Consolidated Financial data of sales and Ex.PW 1/13 marketing since 1979 till 2010 of Emerald Mark.
14. Invoices of the plaintiff no. 3. Ex.PW 1/14 (Colly)
15. Advertisement of the plaintiff no. 3. Ex.PW 1/15 (Colly)
16. Copy of legal notice dated 29.05.2016. Ex.PW 1/16 (OSR)
17. Copy of resolution by plaintiff no. 3 in Ex.PW 1/17 favour of plaintiff no. 1.
18. Screenshot of the plaintiff's website Ex.PW 1/18 namely www.pukhrajmillstone.com (Colly) along with brochures and pamphlets of the plaintiff.
19. Copies of defendant invoices for selling Ex.PW 1/19 the impugned products. (Colly)
20. Copy of Caution Notice dated Mark A 04.01.1993.
21. Affidavit under Order XI Rule 6 (3) Ex.PW1/B CPC.
22. Report of Ld. Local Commissioner. Ex.PW1/21 (Colly) CS (COMM.)/335/2019 Page 16 of 37 -17-
13. On statement of plaintiff no.1, PE was closed vide order dated 19.04.2024, passed by this Court.
14. It may be noted here that during the course of final arguments, Ld. Counsel of plaintiff made statement to give up prayers/ reliefs as prayed in Prayer Clause Nos. 36(b) and 36(d) of the amended plaint regarding restraining the defendants from disposing off or dealing with their assets, and rendition of accounts for loss of business, respectively. Accordingly, the plaintiffs were permitted to give up the said reliefs, vide order dated 31-05-2024, passed by this Court.
15. I have already heard Ld. counsel of the plaintiffs. I have also gone through the material available on record including the plaint and the evidence, oral as well as documentary, led from the side of the plaintiffs.
ARGUMENTS OF THE PLAINTIFF
16. In support of his case, Ld. Counsel of plaintiffs has advanced the following arguments :-
16.1 The entire testimony of PW-1 has remained unchallenged and un-rebutted from the side of defendants and therefore, the plaintiffs are entitled to the decree, as prayed for, and in that regard, has relied upon the documents duly proved by PW1 as Ex.PW1/1 to Ex.PW1/19, Ex.PW1/21, Ex.PW1/B and Mark A. CS (COMM.)/335/2019 Page 17 of 37 -18- 16.2 The trademarks/labels PUKHRAJ and EMERALD are well known trademarks of the plaintiffs and are registered in India under classes 7 and 3 under the Trade Marks Act, 1999, which are valid and subsisting in favour of the plaintiffs till date.
16.3 The art works involved in the said trademarks/ labels/ trade dresses are original artistic works and the plaintiffs hold copyright therein.
16.4 The plaintiffs spend huge amount of money in advertising and promotion of their products and said marks enjoys a huge goodwill and reputation in business community and public in general in India.
16.5 Ld. Local Commissioners, while executing the commission in terms of the orders passed by this Court, had found certain infringed goods from the premises of the defendants, which establishes that the defendants were involved in the illegal activities, for which he has relied upon the reports filed by Ld. Local Commissioners.
16.6 Local Commissioner's Report can be read in evidence in terms of Order XXVI Rule 10(2) CPC and for this purpose, he also relied upon judgment of our own Hon'ble High Court in case titled CS (COMM.)/335/2019 Page 18 of 37 -19- as "M L Brother LLP v. Mahesh Kumar Bhrualal Tanna" [CS (COMM) 126/2022, decided on 12th May, 2022].
16.7 The defendants have malafidely and dishonestly adopted and are using the impugned trade mark/ word mark / label PANNA PUKHRAJ which is identical and /or deceptively similar to trade mark/ word mark/ label/ PUKHRAJ and EMERALD (In Hindi, it means Panna) in all material particulars such as layout design, colour scheme, get up, arrangement of artistic features, lettering style, etc. and thus, same amounts to not only committing fraud upon the plaintiff company but also upon the unwary general public, due to which, the plaintiffs suffer huge monetary loss and their goodwill and reputation are also at stake and therefore, he urged that the suit may be decreed in favour of the plaintiffs and against the defendants, thereby restraining the defendants and all others acting for and on their behalf from using said impugned trade-mark/ word mark/ label.
ANALYSIS & CONCLUSION:
17. I have considered the submissions made on behalf of the plaintiff. I have also duly considered the relevant material available on records.
CS (COMM.)/335/2019 Page 19 of 37 -20-JURISDICTION:
18. Firstly, as regards jurisdiction of this Court, it is submitted by Ld. Counsel of the plaintiffs that the defendants are carrying on their impugned activities under the impugned trade marks in a clandestine and surreptitious manner in the market, as also are making the retail sales and supplying the impugned goods bearing the impugned trademarks/labels to various dealers/ shopkeepers/ retailers in New Delhi viz. Parliament Street, Barakhamba, Chanakyapuri, Gole Market, Khan Market, Bengali Market, Vasant Kunj etc., who are making clandestine and surreptitious sales thereof to the ultimate unwary consumers in the markets of New Delhi. It is also stated that the plaintiffs have obtained some of the products of the defendants bearing the impugned and falsified trademark/label from the markets in New Delhi and the photograph of which, is stated to have been filed with the plaint. Thus, the defendants are committing the impugned acts of infringement and passing off in the markets of New Delhi. It is further contended that the plaintiffs' proprietary rights are being prejudicially affected or are likely to be so affected in New Delhi due to the defendants' impugned activities as they have all the intention to use/ sell/ solicit the impugned goods under the impugned trade mark/ label/ trade dress/ colour combination in the markets of New Delhi and therefore, it is stated that whole or part cause of action has arisen within the territorial jurisdiction of this Court within the meaning of S. 20 CPC and thus, this CS (COMM.)/335/2019 Page 20 of 37 -21- Court has territorial jurisdiction to try and entertain the present suit.
19. Further, it is contended that the plaintiffs are also carrying on said business under the said trademarks/labels in New Delhi market viz. Connaught Place, Gole Market, Naraina, Naraina Vihar, R. K. Puram, Vasant Kunj etc., through dealers/distributors / shops keepers within the territorial jurisdiction of this Court. It is also contended that the plaintiffs have extensive goodwill and reputation under the said trade marks/ labels on account of voluminous sales and advertisement within the jurisdiction of this Court. Thus, it is contended that this Court further has also territorial jurisdiction to entertain and try the present suit within the meaning of S. 134 (2) of the Trademarks Act, 1999 and also under S. 62(2) of the Copyright Act, 1957.
20. In joint written statement filed to the original plaint, the defendants had taken the defence that none of the parties reside or carry on business or work for gain within the territorial jurisdiction of this Court. A bare perusal of the memorandum of parties shows that the plaintiffs' address/ place of business is in Gujarat, whereas, the defendants' place of business is in Madhya Pradesh and thus, this Court lacks territorial jurisdiction to try and entertain the present dispute. It is further stated therein that nothing has been produced before this Court by the plaintiffs showing that the defendants carry on business or personally work for gain within the territorial jurisdiction of this Court, CS (COMM.)/335/2019 Page 21 of 37 -22- except for two invoices which in contrary shows the trap purchase triggered by the plaintiffs themselves through illegal arrangements. It is stated that however, even those invoices are not invoking the jurisdiction of this Court, for the simple reason that those invoices are of South Delhi and the present suit is filed in Central Delhi. It is also mentioned therein that without admitting any document filed by the plaintiffs, it is categorically stated in the copy of invoices filed by the plaintiffs that ' subject to jurisdiction of Nawa jurisdiction only'.
21. The PW1 has categorically deposed in his affidavit in evidence on the identical lines of the averments made in the plaint. The PW1 has proved screenshot of the plaintiff's website namely www.pukhrajmillstone.com along with brochure and pamphlets of the plaintiffs as Ex.PW1/18 (Colly.). PW1 has also proved copies of defendants' invoices for selling the impugned products as Ex.PW1/19 (Colly), to prove that the defendant nos.1 and 2 have supplied the goods within the territorial jurisdiction of this Court. As per invoice dated 21-05-2018, it is shown that M/s Ram Sarup Soti & Co. is the buyer of parts of Floor Mill 30 and 40 cm bearing falsified trade mark/ label PANNA PUKHRAJ, which is purportedly supplied by defendant no.1, whereas, as per invoice dated 16.05.2018, SK Vyas Ji, New Delhi is shown as buyer of the goods i.e. Chaki 12" purportedly supplied by defendant no.2.
CS (COMM.)/335/2019 Page 22 of 37 -23-22. Further, during the course of submissions, Ld. Counsel of plaintiffs also drew attention of this Court towards the documents filed by defendants alongwith written statement, which contains copy of reply to examination report dated 27.04.2015, placed at page nos. 78-81 as per list of documents filed by the defendants, according to which, it is shown to the Court that the defendants herein themselves have claimed therein that their goods bearing impugned trade mark/ label have been distributed all over India.
23. The whole testimony of PW1, on the aspect of territorial jurisdiction of this Court, has also remained unchallenged and uncontroverted as the defendants have neither filed written statement to the amended plaint, nor have chosen to cross-examine PW1 or to lead their own evidence during trial.
24. In view of the foregoing reasons and in the totality of the facts and circumstances of the case and keeping in view the fact that evidence of PW1 remained unchallenged and uncontroverted, the Court is of the considered opinion that at least part of cause of action has arisen within the territorial jurisdiction of this Court and therefore, this Court has got territorial jurisdiction to try and entertain the suit.
25. Ld. Counsel of plaintiffs submitted that all the plaintiffs have common cause of action against the defendants CS (COMM.)/335/2019 Page 23 of 37 -24- within the meaning of Order II Rule 3 CPC and therefore, the present suit is very much maintainable under the law. In support of such submission, Ld. Counsel of plaintiffs has also relied upon judgment of Hon'ble High Court of Kerala in case of 'Manikkan v. Govindaraj' reported as 2015 SCC OnLine Ker 20906 and also judgment of Hon'ble Apex Court in case of 'Prem Lala Nahata And Another v. Chandi Prasad Sikaria', reported as (2007) 2 SCC 551.
26. It has been the categorical case of the plaintiffs that plaintiff no.2 is a partnership firm, whereas, the plaintiff no.3 is a duly incorporated company and plaintiff no.1 is one of the partners of plaintiff no.2 firm and is one of the Directors/AR of plaintiff no.3 company. Further, it has also been their specific case that the plaintiff no.2 is registered owner and proprietor of trade mark/ label PUKHRAJ vide TM NO. 1287577, whereas, the plaintiff no.3 is registered proprietor and owner of trade mark/ label EMERALD vide TM No. : 2353981. The defendants are alleged to be using the impugned trade mark/ label PANNA PUKHRAJ. The entire case of the plaintiffs has gone unrebutted and unchallenged from the side of the defendants, as it is already noted above that they chose not to contest the suit. Moreover, the defendants have not filed their affidavits of admission/ denial concerning documents filed by the plaintiffs alongwith plaint. In the absence of affidavits of admission / denial, the documents filed by the plaintiffs are CS (COMM.)/335/2019 Page 24 of 37 -25- deemed to have been admitted by the defendants by virtue of relevant provisions of Commercial Courts Act, 2015.
27. In the cited judgment of Manikkan (supra), it has been held that objection as regards misjoinder of causes of action should be taken at the earliest opportunity as provided in Order I Rule 13 and Order II Rule 7 CPC and the effect of non taking of such objection at the earliest possible opportunity i.e. at or before settlement of issues, such objection shall be deemed to have been waived. Therefore, in the totality of the facts and circumstances of the case and keeping in view law laid down in above cited judgments, the objection, if any, regarding misjoinder of causes of action, stood waived off by the defendants herein.
PERMANENT INJUNCTION:
28. Hon'ble Supreme Court in case titled as "Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors" , reported as MANU/SC/0066/2022, has laid down law with respect to infringement of trade mark, to quote:-
43. The legislative scheme is clear that when the mark of the Defendant is identical with the registered trade mark of the plaintiff and the goods or services covered are similar to the ones covered by such registered trade mark, it may be necessary to prove that it is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
Similarly, when the trade mark of the plaintiff is similar to the registered trade mark of the Defendant and the goods or services covered by such registered trade mark are identical or similar to the goods or services covered by such registered trade mark, it may again be necessary to CS (COMM.)/335/2019 Page 25 of 37 -26- establish that it is likely to cause confusion on the part of the public However, when the trade mark of the Defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the Defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that is likely to cause confusion on the part of the public.
45. It could thus be seen that this Court has pointed out the distinction between the causes of action and right to relief in suits for passing off and for infringement of registered trade mark. It has been held that the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trademark, cannot be equated. It has been held that though an action for passing off is a Common Law remedy being an action for deceit, that is, a passing off by a person of his own goods as those of another; the action for infringement is a statutory right conferred on the registered proprietor of registered trade mark for the vindication of the exclusive rights to the use of the trade mark in relation to those goods. The use by the Defendant of the trademark of the plaintiff is a sine qua non in the case of an action for infringement. It has further been held that if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial in case of infringement of the trade mark, whereas in the case of a passing off, the Defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
47. It could thus be seen that this Court again reiterated that the question to be asked in an infringement action is as to whether the Defendant is using a mark which is same as, or which, is a colourable imitation of the plaintiff's registered trade mark. It has further been held that though the get up of the Defendant's goods may be so different from the plaintiff's goods and the prices may also be so different that there would be no probability of deception of the public, nevertheless even in such cases, i.e. in an infringement action, an injunction would be issued as soon as it is proved that Defendant is improperly using the Plaintiff's mark. It has been reiterated that no case of actual deception nor any actual damage needs to be proved in such cases This Court has further held that CS (COMM.)/335/2019 Page 26 of 37 -27- though two actions are closely similar in some respects, in an action for infringement, where the Defendant's trade mark is identical with the Plaintiff's trade mark, the Court will not enquire whether the infringement in such as is likely to deceive or cause confusion.
29. Further, our own Hon'ble High Court in the case titled as 'Shaw Wallace & Co. Ltd. & Anr. v. Superior Industries Ltd'. 2003 (27) PTC 63 (Del) has laid down the principle as to how infringement of trade mark is to be seen, to quote:-
12.It is well settled that in an action for alleged infringement of a registered trade mark, if the impugned marked used by the defendant is identical with the registered trade mark of the plaintiffs, no further questions have been to be addressed and it has to be held that there is indeed an infringement. If the mark is not identical, the matter has to be further considered and it has to be seen whether the mark of the defendant is deceptively similar to that of the plaintiff. Deceptive similarity means that the mark is likely to deceive or cause confusion in relation to goods in respect of which the plaintiff got its mark registered. For the purpose of this comparison, the two marks have to be compared, not by placing them side by side, but by asking the question whether having due regard to relevant surrounding circumstances, defendant's mark is similar to that of the plaintiffs, as would be remembered by persons possessed of an average memory with its usual imperfections. On the touchstone of this query, it is to be determined whether the mark of the defendant is likely to deceive or cause confusion. The sequitur to the aforesaid preposition of law, is that, in an action of infringement, for the success by the plaintiff, he need not prove that the whole of his registered trade mark has been copied, but he can also succeed, if, he shows that the mark used by the defendant is similar to the mark of the plaintiff, as it would be numbered by persons possessed of an average memory with its usual imperfection or with its usual imperfection or that its essential particulars or the distinguishing or essential feature has been copied (ILR 197 (II) Delhi 225 Jagan Nath Prem Nath v. Bhartiya Dhoop Karvalaya Para-7).CS (COMM.)/335/2019 Page 27 of 37 -28-
30. In view of above law, lets examine the facts of the case in hand. The averments made in the plaint are duly supported by the documents proved during the course of evidence. PW-1 has deposed on identical lines of the averments made in the plaint and has proved various documents, as already referred to above.
31. In the case titled as "Amrish Agarwal Vs M/s Venus Home Appliances Pvt. Ltd" in CM (M) 1059/2018 dated 27-08-2019, passed by Hon'ble Delhi High Court, it was directed, inter alia, that in trademark infringement matters, the following documents ought to be necessarily filed along with the plaint. The relevant Para no.7 of this judgment is reproduced hereunder:
"7. It is directed that in trade mark infringement matters the following documents ought to be necessarily filed along with the plaint:
(i) Legal Proceedings Certificate (LPC) of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licenses granted, renewals etc.,
(ii) If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trade mark registration certificate, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. This should be accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licenses and assignments ought to be pleaded.
(iii) xxxx
(iv) In the case of (ii), the party ought to file the LPC prior to the commencement of the trial, if any aspect of the CS (COMM.)/335/2019 Page 28 of 37 -29- trade mark registration is being disputed by the opposite side"
32. In this case, the plaintiffs have relied upon and have filed copies of documents pertaining to their registered trade marks, i.e. the copies of Certificates of Registration and status thereof, which are duly proved by PW-1 as Ex.PW1/3 (Colly.) to Ex.PW1/6 (Colly). Further, during the course of final arguments, counsel of plaintiff has stated that the registration of said trade marks/ label/ device mark stands renewed and are valid till date and in support thereof, has filed current status reports thereof, according to which, the said device marks - PUKHRAJ and EMERALD are valid upto 02.06.2034 and 26.06.2032 respectively.
33. According to these documents, it is duly shown that PUKHRAJ and EMERALD are registered as device marks/ labels in favour of plaintiff no.1 and plaintiff no.3 respectively. PW1 has also proved extracts of copyright registration having Application No.A-55320/22 as ExPW1/6 (Colly.)
34. Apart from above documents, PW1 has also proved status page of impugned trade mark application no.2332625 filed by the defendant no.1 as PW1/7, to show that the impugned trade mark/ label has been duly opposed by plaintiff no.2 and same is lying opposed as on 01.08.2018. Besides, PW1 has also proved computer generated trademark search report showing defendant's impugned CS (COMM.)/335/2019 Page 29 of 37 -30- trade mark/ label 'PANNA PUKHRAJ' has been refused and opposed, as Ex.PW1/8 (Colly.)
35. As already noted above, despite grant of sufficient opportunities, the defendants failed to file written statement to the amended plaint. Moreover, none has appeared on behalf of defendants to cross-examine PW1. Therefore, the entire testimony of PW-1 has gone un-rebutted, uncontroverted and unchallenged and thus, the case of the plaintiffs stood proved against the defendants on the basis of preponderance of probability. It is duly established on record that the trademarks/labels PUKHRAJ and EMERALD are duly registered in favour of the plaintiffs and also that same are valid and subsisting as on date in their favour.
36. Pertinently, the impugned trade mark/ word mark/ label PANNA PUKHRAJ is phonetically identical and / or deceptively similar to the plaintiffs' registered trade marks/ labels PUKHRAJ and EMERALD [which means in Hindi 'PANNA'].
37. Further, as already noted above, the Local Commissioners had also found infringed goods bearing impugned trademarks / label from the premises of the defendants at the time of execution of commission.
38. Local Commissioners' Reports as available on record, would reveal that at the premises of defendant no.1, Mr. P. C. Srivastava, who had claimed himself to be Supervisor CS (COMM.)/335/2019 Page 30 of 37 -31- of defendant no.1, was found present. In his presence, the said premises was searched and infringed goods bearing impugned trade mark/ label PANNA PUKHRAJ were found and inventory thereof was prepared, according to which, bags - 5 x 2 = 10, bags 3x3 = 9, emery goods = 606 and scrap goods = 550, were seized and were handed over to said supervisor of defendant no.1 on superdari in terms of relevant order.
39. Another Local Commissioner's Report as available on record, would reveal that at the premises of defendant no.2, Mr. Ghulam Abbas, who had claimed himself to be proprietor of defendant no.2, was found present. In his presence, the said premises was searched and infringed goods bearing impugned trade mark/ label PANNA PUKHRAJ were found and inventory thereof was prepared, according to which, approx. 6, 12, 19 and 2 pieces of 10 inches, 12 inches, 14 inches and 18 inches mill stones were seized and were handed over to said proprietor of defendant no.2 on superdari in terms of relevant order.
40. Third Local Commissioner's Report as available on record, would reveal that at the premises of defendant no.3, Sh. Deepak Juneja, who had claimed himself to be proprietor of defendant no.3, was found present. In his presence, the said premises was searched and infringed goods bearing impugned trade mark/ label PANNA PUKHRAJ were found and inventory thereof was CS (COMM.)/335/2019 Page 31 of 37 -32- prepared, according to which, approx. 25, 120, 160, 20, 60 and 20 pair of emery stones of 10 inch, 12 inch, 14 inch, 16 inch, 16 inch RT and 18 inch RT were seized and were handed over to said proprietor of defendant no.3 on superdari in terms of relevant order.
41. Thus, it is shown that the premises were searched in the presence of the defendants and /or their official and infringed goods bearing impugned trade mark/ labels/ were seized from their respective premises. Since, the commission were executed in the presence of the defendants, it cannot be believed that they were not having any knowledge of proceedings going on before this Court and the orders passed therein. Moreover, they initially appeared before the Court, however, failed to file written statement to the amended plaint, as already noted above. Subsequently, they stopped appearing and consequently, were proceeded against ex parte and thus, the reports of Ld. Local Commissioners also remained uncontroverted and unchallenged.
42. In totality of the facts and circumstances of the case, the Court is of the view that the plaintiffs have succeeded in proving that the defendants were manufacturing, trading and marketing of impugned goods bearing falsified trademark / word mark/ label PANNA PUKHRAJ, which are deceptively and confusingly similar to the plaintiffs' registered trade marks/ labels PUKHRAJ and EMERALD and therefore, trademarks and copyright of the plaintiffs CS (COMM.)/335/2019 Page 32 of 37 -33- are required to be protected. Accordingly, the plaintiffs are held entitled to decree of permanent injunction whereby the defendants are liable be restrained from using trade mark/ word mark/ label PANNA PUKHRAJ or any other trade mark/ label which may be identical with and/ or deceptively similar to the plaintiffs' said trade marks /labels PUKHRAJ and EMERALD in relation to similar goods, thereby infringing plaintiffs' registered trademarks, copyright and passing off their products as that of the plaintiffs.
DELIVERY UP:
43. As already discussed, infringed goods bearing falsified trademark/label/ trade dress/ colour scheme of plaintiff company were seized by the Local Commissioners and were returned to the defendants on superdari. Therefore, the defendants are directed to delivery up all above seized infringed goods, besides all other impugned finished and unfinished materials bearing the impugned and violative trade mark/ label / trade dress / colour combination to the plaintiff company for the purpose of destruction and erasure.
DAMAGES:
44. Ld. Counsel of plaintiffs submitted that punitive damages may be awarded in favour of the plaintiffs and against the defendants. In support of his submissions, Ld. Counsel of the plaintiffs has relied upon judgment of CS (COMM.)/335/2019 Page 33 of 37 -34- Hon'ble Delhi High Court in case of 'LT Foods Limited v. Saraswati Trading Company' decided on 11-11-2022 having neutral citation: 2022/DHC/004806.
45. However on bare perusal of the plaint, it reveals that no such relief is sought in the plaint. On similar facts, in case titled as Super Cassettes Industries Pvt. Ltd. v. HRTN Cable Network, 2017 SCC Online Delhi 10943, wherein the defendants were ex parte and did not participate in the proceeding, counsel for the plaintiff had sought punitive damages, which was declined in view of the judgment of Hon'ble Division Bench of Delhi High Court in case titled 'Hindustan Unilever Limited v. Reckitt Benckiser India Limited', ILR (2014) II Delhi 1288.
46. However, as per law laid down by Hon'ble Division Bench in case of Hindustan Unilever Limited ( supra), there is a need to see as to whether the case of plaintiffs herein falls for exemplary damages.
47. As already noted above, the Local Commissioners, while executing the commission, had found and seized infringed goods from premises of the defendants in their presence and handed over the same to them on superdari. It is evident from the said reports that the defendants were manufacturing, stocking and selling/ passing off the infringed goods bearing impugned trade mark / label/ trade dress as that of the plaintiffs' products, thereby causing wrongful loss to plaintiff company and would have earned CS (COMM.)/335/2019 Page 34 of 37 -35- illegal profit. Further, if the seized infringed goods would have gone to the hands of the consumers/ general public, the reputation/goodwill of the plaintiff company would have gone down in the eyes of consumer/ general public as infringed goods were of average quality and were not up to the quality which is claimed by the plaintiff company.
48. In the case in hand, the defendants did not show up and participate in the proceedings in order to deprive the plaintiffs to the benefit of rendition of accounts. Accordingly, keeping in view the overall facts and circumstances of the case including the quantum of infringed goods bearing impugned trademarks / labels as found by Ld. Local Commissioners while executing the commission and the relevant averments appearing in Para No.32 of the amended plaint to the effect, in the last week of June, 2018, it came to the knowledge of the plaintiffs from the market that the defendants had re-launched and again started using the impugned trade mark/ label in relation to impugned goods, whereas, the present suit has been filed in the month of August, 2018, the Court is of the opinion that the plaintiffs are entitled to exemplary damages quantified as Rs.1,00,000/- (Rupees One Lakh only) each is to be recovered from defendants. It is so ordered accordingly.
CS (COMM.)/335/2019 Page 35 of 37 -36-RELIEF:
49. In the light of the aforesaid discussion, the Court is of the view that the plaintiffs have been able to prove their case on the basis of preponderance of probability. Thus, the suit is decreed in favour of the plaintiffs and against the defendants and the following reliefs are granted:-
49.1 Suit is decreed in favour of plaintiffs and against the defendants qua permanent injunction thereby restraining the defendants by themselves as also through their individual proprietors, partners, agents, representative, distributors, assigns, heirs, successors, stockists and all other acting for and on their behalf from using, manufacturing, marketing, using, selling, soliciting, exporting, displaying, advertising or using the impugned trademark / word mark/ label PANNA PUKHRAJ or any other word mark/ mark/ trade mark/ label which may be identical with and/ or deceptively similar to the plaintiffs' said trade marks / labels PUKHRAJ and EMERALD in relation to similar goods, thereby infringing plaintiffs' registered trademarks, copyright and passing off their products as that of the plaintiffs.
49.2 Suit is also decreed in favour of plaintiffs and against the defendants qua delivery up of all seized semi finished and finished articles besides all other impugned finished and unfinished materials bearing CS (COMM.)/335/2019 Page 36 of 37 -37- the impugned and violative trade mark/ label of plaintiff company and superdarinama are hereby cancelled.
49.3 Plaintiffs are entitled to recover Rs.1,00,000/-
(Rupees One Lakh only) each from the defendants towards damages; and 49.4 Cost of the suit is also awarded in favour of the plaintiffs.
50. Decree sheet be prepared accordingly.
51. File be consigned to Record Room, after due compliance.
Digitally signed by VIDYAAnnounced in the open court VIDYA PRAKASH Date: on 2nd Day of April, 2025. PRAKASH 2025.04.02 16:44:01 +0530 (VIDYA PRAKASH) DISTRICT JUDGE (COMMERCIAL COURT)-02 PATIALA HOUSE COURTS, NEW DELHI CS (COMM.)/335/2019 Page 37 of 37