Delhi District Court
A Suit For Permanent Injunction ... vs Satya Narayan Agarwal Page No.1/22 on 7 July, 2018
IN THE COURT OF SH. SANJAY KUMAR, ADDITIONAL
DISTRICT JUDGE-02, WEST, DELHI.
TM-22/17
M/s. M.K. Foodchem Pvt. Ltd.
vs.
M/s. Satya Narayan Agarwal
Trading as M.K. Spices
ORDER
07.07.2018
1. A suit for permanent injunction restraining infringement, passing off and rendition of accounts etc. filed by plaintiff accompanying with an application under Order 39 Rule 1 & 2 CPC. Defendant has also filed an application under Order 39 Rule 4 CPC for vacation of interim orders passed on 22.11.2017. The brief facts necessary for the disposal of the applications U/O 39 Rule 1 & 2 CPC and under Order 39 Rule 4 CPC are as under:
2. It is stated by the plaintiff that it is a registered company engaged in the business of manufacturing, processing and marketing of spices and other food products including array of goods, namely, Poha, Jeera, dalia, Methi, Sauff, Cardamom, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour, pickles, vinegar and other related goods/products (hereinafter referred to as the 'said goods') under trademark/trade name/label M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS (hereinafter referred to as the 'said trademark/ trade name/ label) since 1999 through its one of the Directors and founding member Mr. Madan Lal Agarwal. The present suit has been filed by plaintiff through one of the Directors Sh. Raj Kumar Aggarwal.TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.1/22
3. It is stated that with the expansion of his said business and to support his younger brother Mr. Satya Narayan Agarwal (defendant), Mr. Madan Lal Agarwal along with the defendant in the year 2007 formed the plaintiff company under the name and trading style of M.K. Foodchem Pvt. Ltd. and allowed to the plaintiff company to use his said trademark/ trade name/ label M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS. Mr. Madan Lal Agarwal coined, conceived and adopted the distinctive said trademark/ trade name/ label M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS without having any connection or connotation with regard to the trade and business of manufacturing, processing and marketing of said goods and business of spices, edible chemicals, and other good products (hereinafter referred to as the 'said goods and services'). At the time of adoption there was no such trademark or trade name existing in the Registrar of the Trade Mark. The said trademark/ trade name/ label is arbitrary and fanciful. Sh. Madan Lal Agarwal in due course applied for registration of the said trademark/ trade name/ label and registration of the same is duly granted in his name.
Sh.Madan Lal Agarwal further through different deeds of assignments transferred/assigned his all rights in the said trademark/ trade name/ label in the name of the plaintiff company and now the plaintiff company is the exclusive and lawful registered proprietor of the said trademark/ trade name/ label.
4. It is stated that the present suit is with respect to plaintiff's intellectual property rights in the trademark/ trade name/ label M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS and the copyright involved in the artistic work of the trademark/ trade name/ label with different variants and representations and violation thereof by the defendant on account of their TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.2/22 unauthorized and unlawful use of an identical trade name M.K. SPICES. The above violation by the defendant is in course of their business activities, without due cause, taking unfair advantage of and to the detriment of the distinctive character and repute of the said trademark/ trade name/ label M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS of the plaintiff. The plaintiff has adopted the said trademark/ trade name/ label in a distinctive and unique get up, set up, lettering style, colour scheme, colour combination. The adoption of the trademark/ trade name/ label M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS is honest and bonafide and the plaintiff has been using the same continuously in the course of trade and business in respect of said goods/products throughout India. The plaintiff has been continuously and uninterruptedly using the same since then.
5. It is stated that the plaintiff is the registered proprietor of the said trademark/ trade name/ label M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS with respect to the said goods in Class 1, 29 and 30. The other applications filed by the plaintiff are pending and will be registered in due course of time after complication of requisite formalities, details of which are given in the plaint.
6. It is stated that the plaintiff claims to be proprietor of the trademark/ trade name/ label M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS in respect of said goods on account of its prior adoption and senior, continuous user thereof. The plaintiff being the originator and owner of the trademark/ trade name/ label M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS are also entitled to protection of the copyright involved therein.
TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.3/227. It is stated that the plaintiff's good and business under its said trademark/ trade name/ label has acquired tremendous goodwill and envious reputation in the markets and among the consumers and the plaintiff has already built up a handsome and valuable trade thereunder. The plaintiff is one of the leaders of the trading business of the said goods and known for marking quality products. The plaintiff is also registered with Sales Tax and other departments and also having FSSAI license. The plaintiff has been continuously promoting its sale of said goods, services and business under said trademark/ trade name/ label through different media and modes and plaintiff has already spent substantial amount of money on the publicity of the said trademark/ trade name/ label. The plaintiff has its own website with web address www.mkgoldspices.in to carry out and promote its trade and business round the world.
8. It is stated that the defendant, who was the Director of the plaintiff company, resigned from the plaintiff company in the year 2014 and severed his all connections and links with the plaintiff company. The defendant was having no claim or right in the said trademark/ trade name/ label M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS at any point of time and accordingly after his resignation from the plaintiff company, he was having no right to use the said trademark/ trade name/ label M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS with respect to the trade and business or any sort. After resigning from the plaintiff company, the defendant initiated to independently engaged himself into the trade and business of Spices and other edible food products and approached his elder brother Sh.Madan Lal Agarwal, one of the Directors of the plaintiff company to allow him to use his premises situated at RZ-312-A, Ground Floor, Nihal TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.4/22 Vihar, Nangloi, New Delhi on rent free basis and to grant him an NOC allowing him to get a valid Delhi VAT Registration and Central VAT registration for carrying his trade and business from the above mentioned address. Sh. Madan Lal Agarwal being elder brother of the defendant, out of natural family love and affection and to help his younger brother to setup his independent business, vide affidavit dated 02.07.2014 allowed the defendant to use the above mentioned premises on rent free basis for carrying his trade and also granted no objection to the defendant for applying for Delhi VAT Registration and Central VAT Registration in his name for running his business from the above mentioned address. However, the defendant was never allowed or granted any permission to use the said trademark/ trade name/ label M.K., M.K. SPICES of the plaintiff. The defendant was never having any right to use the said trademark/ trade name or any trademark/ trade name same or similar to the said trademark/trade name but the defendant in direct violation of the statutory and common law rights of the plaintiff in the said trademark/ trade name/ label M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS started using the impugned trade name M.K. SPICES (hereinafter referred to as the 'impugned trademark/ trade name').
9. It is stated that as soon as the plaintiff came to know about illegal use of the impugned trade name by the defendant, plaintiff raised objection to the same. As the defendant is family member of the directors of the plaintiff company, efforts were made to settle the dispute through the intervention of the family and in consonance of the same, the defendant vide undertaking dated 24.07.2015 undertook not to further use any trademark or trade name having the word 'M.K.' and the defendant stopped TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.5/22 using the impugned trade name M.K. SPICES. The plaintiff further in the last week of April 2017 came to know that the defendant has again started using the impugned trade name M.K. SPICES. The plaintiff also came to know that the defendant has also filed impugned trademark application number 3483357 seeking registration of the impugned trademark/ trade name M.K. SPICES. The plaintiff immediately sent a cease and desist notice dated 08.05.2017 to the defendant at its address RZ-A/312, Nihar Vihar, Nangloi, Delhi, calling upon him to restrain from using the impugned trademark/ trade name M.K. SPICES but the defendant refused to accept the same. The plaintiff again sent cease and desist notice dated 16.05.2017 to the defendant at its address GH-9, Ground Floor, Paschim Vihar, New Delhi calling upon him to restrain from using the impugned trademark/trade name M.K. SPICES which was duly served upon the defendant. The defendant through his impugned reply dated 06.06.2017 to the notice dated 16.05.2017 illegally claiming his rights in the impugned trademark/ trade name M.K. SPICES refused to abide by the cease and desist notice of the plaintiff.
10. It is stated that to the knowledge of the plaintiff M/s.M.K. Spices is sole proprietorship of the defendant. The defendant has no proprietary rights for the trademark/trade name in relation to the aforementioned impugned goods, services and business. The impugned trade name is identical and deceptively similar to the said trademark/trade name of the plaintiff in each and every respect including phonetically, visually, structurally, in its basic idea and in its essential features. In all probability, the impugned trade name of the defendant shall be linked with that of the plaintiff and confusion and deception is bound to occur. By the impugned adoption and user, the defendant has infringed and TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.6/22 passed off and also infringing and passing off and enabling others to infringe and pass off and violate the plaintiff's proprietary rights in its said trademark/ trade name and domain name. The defendant is not the proprietor of the impugned trademark/ trade name and has no right to adopt or use the same as trademark/ trade name or in any other manner whatsoever including under the law of equity, common law and statutory law in respect of the impugned business or allied/cognate thereto being in complete violation of the plaintiff's right amounting to inter-alia, infringement, passing off and violation of the said trademark/ trade name falsification and unfair trade practices.
11. It is stated that the goods being sold by the plaintiff as well as the defendant are of same nature. The defendant's impugned goods are of sub-standard and inferior quality which are directly affecting the purchasers/consumers of the plaintiff and further diluting/ damaging and tarnishing the hard earned goodwill and reputation of the plaintiff. Due to defendant's impugned activities, the plaintiff is suffering tremendously in trade and business and also in terms of goodwill and reputation and the plaintiff's said proprietary rights are being violated and being reduced to nullity. The innocent purchasers are being deceived and irreparable loss and serious mischief is being caused to the plaintiff and to the trade and consuming public. The plaintiff is suffering and shall suffer incalculable harm and injury to their goodwill and reputation if the defendants are allowed to carry on their business activities under the impugned trademark/trade name M.K. SPICES in disregard to the statutory and common law rights of the plaintiff.
TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.7/2212. In the application under Order 39 Rule 1 & 2 read with Section 151 CPC, the plaintiff seeks to restrain the defendant themselves as also through their directors, proprietor, partner (if any), servant, agents, assigns, representtives, successors, distributors and all others acting for and on behalf from using, marketing, selling, offering for sale, advertising or displaying directly or indirectly or dealing in any other manner or mode in relation to trade and business of Spices and other edible food products and/or related goods/products under the impugned trademark/trade name/ label M.K. or M.K. Spices or any other trademark/trade name/ label similar to said trademark/label, M.K., M.K. SPICES, M.K. GOLD, M.K. CHEMICALS and/or trade name M.K.Foodchem Pvt. Ltd. And from doing any other acts as is likely to cause confusion and deception and infringement of plaintiff's said trademark/ label M.K., M.K. SPICES, M.K. GOLD, M.K. CHEMICALS and/or trade name M.K. Foodchem Pvt. Ltd. and passing off defendant's goods and business as and for the business and goods of the plaintiff and from causing passing off and violation of the plaintiff's said trademark/trade name/label M.K., M.K. SPICES, M.K. GOLD, M.K. CHEMICALS and/or trade name M.K. Foodchem Pvt. Ltd.
13. The defendant filed written statement and taken the preliminary objections that the plaintiff has no cause of action. The plaintiff has not approached the court with clean hands and suppressed the material facts. The petition is not maintainable and liable to be dismissed as the defendant is engaged in the business of manufacturing and marketing of goods like coffee, tea, cocacola, sugar, rice, tapicola, sago, artificial coffee, flour and preparation made from cereals bread, pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustered, TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.8/22 vinegar, sauces, spices, daliya, poha including class 30 items and also deals Kirna items (113000), Kiryan items (non-edible) 20700, Dry Fruits (117000), Besan Dalia (113001), Cerels and pulses (101000), other chemicals (excluding Petro Chemicals) 4170000 and related goods/products (hereinafter referred to as the 'said good/products') since 2014. The defendant is carrying on the said trade and business of the aforesaid goods under the trademark/trade name M/S M.K. Spices and lable/packing/trade dress.
14. It is further stated that the defendant is running his business since 2014 under the name and style of M/S M.K. Spices at RZA-312A, Nihal Vihar, Delhi and the plaintiff had given NOC to register firm under the name and style of M/S M.K. Spices to the defendant for his separate business. The defendant is proprietor of the trademark/label/trade name S.N. Gold and has supplied for registration and has been continuously using the same since its adoption under the name of M/S M.K. Spices. The present petition is being filed by the plaintiff on the basis of fake and frivolous allegations and wants to grab high quality goodwill and name and fame of the defendant's firm and also want to escape from giving the account details of M/S M.K. Foodchem Pvt. Ltd. of which the defendant is partner. The plaintiff is not the Prop. of M/S M.K. Spices and has no any right on the logo and trademark of the defendant's firm i.e. S.N. Gold. The defendant has been using the aforesaid logo/trademark since long time and this fact is well within the knowledge of the plaintiff as the plaintiff has given NOC to the defendant for registration of firm under the name and style of M/S M.K.Spices in the year 2014.
TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.9/2215. On merits, the defendant denied the averments made in the plaint as wrong. It is stated that defendant never used the logo, name and title of the plaintiff at any point of time. The plaintiff intentionally and deliberately with the intention to extort money from the defendant lodged the present suit on the basis of the false and concocted story, whereas the true fact is that the defendant is till now partners of M/s. Foodchem Pvt. Ltd. And the plaintiff just to escape from giving the account detail and share of the defendant, filed the present suit just to put pressure upon the defendant, so that the defendant not asked for his share from the said firm of M/S M.K. Foodchem. The defendant seeks dismissal of the suit and injunction application with costs.
16. The plaintiff also filed replication to the written statement of defendant, in which averments made in the written statement are denied and the averments made in the plaint are reiterated.
17. The facts leading to the filing of the application under Order 39 Rule 4 CPC filed by defendant, in brief are that the main Counsel for the defendant could not appear on 22.11.2017 due to the death of his father on 13.11.2017 as the ritual ceremonies and other customary functions were still going on. However, proxy Counsel on behalf of the defendant appeared in the court and filed the written statement along with an application under Order 8 Rule 1 read with Section 151 CPC for condoning the delay in filing the written statement.
18. It is further stated that the proxy Counsel was not aware about the proper facts and circumstances of the case and due to this reason, he could not argue the matter. He requested TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.10/22 the Court to adjourn the matter for a very short date and further assured that on the next date of hearing the main Counsel for the defendant will appear and argue the matter. The Counsel for the plaintiff misled the Court while arguing on the application under Order XXXIV Rule 1 & 2 CPC and he did not disclose true facts and due to the reason, the court has granted stay in favour of plaintiff till the disposal of the application under Order 39 Rule 1 & 2 CPC.
19. It is stated that if the court would have heard the arguments on merits from the side of defendant as well, the Court would have certainly concluded that there was no occasion for the grant of interim stay. The occasion for filing this second application under Order XXXIX Rule 4 CPC arose because after the filing of the first application under Order XXXIV Rule 4 CPC, the defendant realized and come to know that the interim stay had been obtained by the plaintiff clandestinely by playing a fraud upon the Court.
20. It is stated that perusal of order dated 22.11.2017 revealed that the basis of granting the said interim injunction was that in the alleged undertaking of defendant dated 24.07.2015, it is mentioned that defendant will not use the word M.K. in future. This document is witnessed by Sh. Mahesh Kumar, real brother of the plaintiff and defendant. The other witness is a family friend i.e. Sh. Virender Goel. Both the said witnesses have filed affidavit categorically mentioning therein that the words "Aur Main Aage se M.K. Subad ke prayog nahi karoonga" I will not use M.K. word in future; were not written in the said undertaking when the same was signed by the defendant and by both of them as witnesses. They have also deposed in their respective affidavits that the said words were later on clandestinely added in the said undertaking.
TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.11/22The version of the defendant no.1 to the effect that the said undertaking dated 24.07.2015 was false and fabricated is fortified by the aforesaid two affidavits.
21. It is further stated that it does not appeal to reason that the witnesses chosen by the plaintiff himself would falsely depose against the plaintiff. Rather, they could tell the truth to the Court especially when both the witnesses have no motive except telling the truth to the Court as one is brother and the other is neighbour. Both the said witnesses do not have any motive, allurement, enmity or grudges which would have motivated them to give a false affidavit against the plaintiff.
22. It is stated that in the affidavit dated 14.06.2014, the Director of the plaintiff Sh. Madan Lal has categorically mentioned "that I have given Ground Floor of the property to Sh. Sat Narain Agarwal, my brother, proprietor of M/s. M.K. Spices on rent free basis". It is crystal clear that on 14.06.2014, plaintiff categorically admitted that at that juncture i.e. on 14.06.2014, the defendant Sh. Sat Narain Aggarwal was the Director of M/s. M.K. Spices. The plaintiff has fabricated the document dated 24.07.2015 by adding the said words only for the purpose of nullifying the effect of the previous writing dated 14.06.2014.
23. It is further stated that the joint business of the family of the plaintiff and the defendant were having registered trademarks M.K. Gold, M.K. Chemicals and M.K. The joint business was also being run in the unregistered trade name of M.K. Spices. This fact indicates that the defendant along with other partners/ associates (the brothers and the father of the parties) had been running the business of the same goods and TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.12/22 articles in the name of unregistered trademark M.K. Spices. The defendant was/is also prior user of this unregistered trademark i.e. M.K. Spices. The plaintiff played a fraud upon the Court by saying that the trademark of M/s. M.K. Spices is also registered in the name of the plaintiff besides the other trademarks mentioned therein. As per plaint, the plaintiff has only applied for the registration of trademark M.K. Spices and the said application is still pending and has not yet been allowed.
24. The plaintiff seeks that the order dated 22.11.2017 vide which the defendants were restrained from using the trademark M.K. Spices, till the disposal of the application under Order XXXIX Rule 1 & 2 CPC may please be vacated; earliest the possible in order to stop the perpetual irreparable loss to the defendant.
25. The plaintiff has filed reply to the application under Order 39 Rule 4 CPC. In the preliminary objections and submissions, it is stated that the averments made by the defendant in the application under Order 39 Rule 4 read with Section 151 CPC are outrightly denied as the same are bereft of merit and having no truth involved in it. The defendant is making excuses of non presence of the main Counsel. There was already a delay in filing of the written statement from the defendant.
26. It is stated that defendant is misusing the process of law. The defendant has filed an application under Order 39 Rule 4 CPC and the plaintiff has filed a reply to that but before disposal of that application, the defendant withdrew the same. The defendant has also filed an application under Order 6 Rule 17 CPC for amendment of the written statement but that application also TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.13/22 withdrawn by the defendant as the defendant was aware of the fact that the application for amendment of written statement is liable to be dismissed. The defendant has kept on filing frivolous and baseless application in order to delay the proceedings.
27. It is stated that the application is not maintainable as the allegations made by the defendant in the present application has not been averred by the defendant in the written statement. The defendant through the present application is trying to insert totally new facts which are not made by the defendant in the written statement. The undertaking was admitted by the defendant in the written statement as there was not even a whisper in the written statement as the authenticity of the undertaking as the same has been given by the defendant himself. The defendant never objected to the undertaking in the written statement. The law is settled that the court cannot go beyond the pleadings while adjudicating any application and suit and cannot accept any evidence which does not form part of the pleadings and to say the defense of the defendant. There is no manipulation or fabrication in the undertaking.
28. It is stated that the plaintiff was already apprehensive that the defendant may hatch collusion with the witnesses to foist the right of the plaintiff. By the affidavits of the witnesses the apprehensions of the plaintiff have come true. The defendant got the affidavit falsely deposed by the deponents under considerations in order to defeat the right of the plaintiff. The defendant has concealed the material facts from the Court and has tried to mislead the Court into believing that the defendant has right in using the trademark/ trade name in question.
TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.14/2229. It is stated that the plaintiff is the proprietor of the said trademark/trade name/label M.K. SPICES, M.K. GOLD and M.K. CHEMICALS in respect to the said goods in class 1, 29 & 30 and the said trademark/trade name/label M.K., M.K. GOLD and M.K. CHEMICAL are registered in the name of the plaintiff. The defendant who was the Director of the plaintiff company, in the year 2014 resigned from the plaintiff company and severed his all connections and links with the plaintiff company. After resigning from the plaintiff company, the defendant initiated to independently engaged himself into the trade and business of Spices and other edible food products and approached his elder brother Sh.Madan Lal Agarwal, one of the Directors of the plaintiff company to allow him to use his premises situated at RZ-312-A, Ground Floor, Nihal Vihar, Nangloi, New Delhi on rent free basis and to grant him an NOC allowing him to get a valid Delhi VAT Registration and Central VAT registration for carrying his trade and business from the above mentioned address. Sh. Madan Lal Agarwal being elder brother of the defendant, out of natural family love and affection and to help his younger brother to setup his independent business, vide affidavit dated 02.07.2014 allowed the defendant to use the above mentioned premises on rent free basis for carrying his trade and also granted no objection to the defendant for applying for Delhi VAT Registration and Central VAT Registration in his name for running his business from the above mentioned address. However, defendant was never allowed or granted any permission to use the said trademark/ trade name M.K., M.K. SPICES of the plaintiff.
30. It is stated that the said trademark/ trade name M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS is exclusive property of the plaintiff company and not of any of its individual Directors TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.15/22 or any other person. The plaintiff company never granted any NOC to the defendant for any purpose. The said NOC was granted by Mr. Madan Lal Agarwal, real brother of the defendant and not by the plaintiff company and further the defendant was allowed to use the premises of Mr. Madan Lal Agarwal, situated at RZ-312-A, Ground Floor, Niha Vihar, Nangloi, New Delhi and no objection being granted to the defendant to apply for Delhi VAT Registration and Central VAT Registration using the above mentioned address of Mr. Madan Lal Aggarwal, apart from this no further right was granted to the defendant.
31. On merits, the plaintiff has denied the averments made in the application and reiterated the averments made in the plaint. It is stated that the plaintiff has duly and rightfully plead before the Court all the facts of this case and it is only after due appraisal of the pleadings and arguments on behalf of the plaintiff and the pleadings of the defendant in his written statement, this court was pleased to grant temporary injunction in favour of the plaintiff and against the defendant. The defendant despite the injunction order is flagrantly violating the injunction order dated 22.11.2017 passed by the Court and using the impugned trademark/ trade name M.K. SPICES. The plaintiff has also filed a contempt petition in this regard.
32. It is stated that the undertaking dated 24.07.2015 is on record and the undertaking was within the knowledge of the defendant which is the admitted case of the defendant as it was defendant who had given undertaking. The defendant cannot gainsay the fact admitted in the pleadings. The allegation made by the defendant is a cooked up story and an afterthought and the same came into picture when defendant found no other way TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.16/22 out. The defendant has no proprietary rights in the trade name M.K. and that is why the defendant has given that undertaking. The law is well settled by the Hon'ble Apex Court regarding "one trade mark one source". There cannot be two proprietor of one trademark and hence the defendant being not proprietor of the impugned trademark has no right to use the impugned trademark/ name in the course of trade and business.
33. It is stated that there was no permission given from the plaintiff company to the defendant to use the said trademarks/trade name. The affidavit was not created any right in favour of the defendant. Sh. Madan Lal Aggarwal (director of plaintiff) signed the affidavit in his individual capacity and not as a Director of the plaintiff. It is further stated that the trade mark M.K. Spices was inadvertently included in the other registered trademarks of the plaintiff. It was a bonafide mistake as in the table produced in para 9 of the plaint it is clearly mentioned that the application of the trademark M.K. Spices under no. 3033297 in the name of the plaintiff is still pending.
34. The plaintiff seeks dismissal of the application being misconceived and devoid of legality.
35. I have heard Sh. D.K. Yadav, Counsel for the plaintiff, Sh. I.C. Tiwari, Counsel for the defendant and perused the material on record.
36. The case of the plaintiff is that it engaged in the business of manufacturing, processing and marketing of spices and other food products including Poha, Jeera, dalia, Methi, Sauff, Cardamom, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.17/22 coffee, flour, pickles, vinegar and other related goods/products under trademark/trade name/label M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS since 1999. In the year 1999 Sh. Madan Lal Aggarwal was sole proprietor of M/s. M.K. Chemicals and adopted the above said trademark/trade name/labels. In the year 2007, the plaintiff company was formed in the name and style of M/s. M.K. Foodchem Private Limited having all his brothers as Directors including the defendant Sh. Satya Narayan Aggarwal. The trademark/trade name/labels M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS coined, conceived and adopted with distinctive trademark by Sh. Madan Lal Aggarwal. Sh. Madan Lal Aggarwal also got registered the trademark. The plaintiff company is having registered and pending trademark applications i.e. M.K. CHEMICALS under Class 1 registered through application no. 1405915; M.K. GOLD under Class 29 registered through application no. 1534096; M.K. under Class 30 registered through application no. 1405914; M.K. GOLD under Class 30 registered through application no. 1467538; M.K. Quality products under Class 29 pending under application no. 2937452; M.K Quality Products under Class 30 pending through application no.2937453; M.K. SPICES under Class 30 pending through application no.3033297; M.K. Quality Products under Class 32 pending through application no. 3441557; M.K. Poha under Class 35 pending through application no. 3551114.
37. The defendant resigned from the Directorship of the plaintiff company in the year 2014 and independently engaged in the trade and business of spices and other edible food products. The defendant was using premises of Sh. Madan Lal Aggarwal situated at RZ-312A, Ground Floor, Nihal Vihar, Nangloi and 'No Objection' was given for complying for Delhi VAT registration and TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.18/22 Central VAT registration. The defendant has no right or concern to use any of the trademark/trade name/labels of the plaintiff company as M.K., M.K. SPICES, M.K. GOLD and M.K. CHEMICALS. The plaintiff came to know about the infringement of trademark when application for registration of M.K. SPICES filed with the Registrar of trademark by the defendant. Immediately, a legal notice dated 08,.05.2017 was served. Thereafter, another legal notice was served dated 16.05.2017 and defendant replied on 06.06.2017.
38. The plaintiff's case is further that the use of M.K. SPICES by the defendant is infringement of trademarks of plaintiff company because the impugned trademark of defendant company is identical and/or deceptively similar in each and every respect including phonetically, visually and structurally and bound to cause confusion and deception to the customers and during the course of trade. The impugned trademark of the defendants also unfair and unethical trade practice and violates the statutory right of registered trademark of the plaintiff. It is also causing harm to the reputation and goodwill of the plaintiff.
39. The defence put up by the defendant is that defendant is engaged in the business of manufacturing of several food items including clause 30 since 2014 under the trademark/trade name/labels M/s. M.K. SPICES and bale/packing/trade dress. The defendant is proprietor of trademark/trade name/labels S.N. GOLD and applied for registration and continuously using since its adoption under the name of M/s. M.K. SPICES. The plaintiff is not the proprietor of M/s. M.K. SPICES and no right on the logo and trademark of defendant firm S.N. GOLD. The plaintiff's case is stated to be false, frivolous and application is liable to be dismissed.
TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.19/2240. In the application under Order 39 Rule 4 CPC, defendant disputed the undertaking dated 24.07.2015 and alleged it to be false and fabricated.
41. I have gone through the documents filed by plaintiff. In all the labels filed on record, the trademark M.K. is used by the plaintiff. The labels of the defendants are having trademark S.N. GOLD. However, at the back of the packed and manufactured items, M.K. Spices is written. The plaintiff further relied the assignment deed of registered trademark dated 29.04.2017, whereby Sh. Madan Lal Aggarwal, the original proprietor assigned the registered trademark M.K. CHEMICALS under Class 1, M.K. GOLD under Class 29, M.K. under Class 30 to the plaintiff company. The registration certificates are also filed on record. The trademark/trade name/label 'M.K.' has been used and adopted since 1999 by the plaintiff.
42. In order to appreciate, both the trademarks/trade names/labels are mentioned herein below:
TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.20/2243. The trademarks/trade names/labels of both, plaintiff company and defendant when compared, it reflects that both have similar colour combination and pattern. The artistic feature of label and trademark M.K. is structurally and in basic idea copied by the defendant. The significant features of trademark/trade name/labels M.K. SPICES, the design where word 'M.K.' is featuring, which is deceptively similar in the label of the defendant where S.N. printed in the label. The back side of the label also mentioned M.K. SPICES. It is bound to create confusion among the customers as well as people in trade. It is pertinent to mention here that both parties are dealing in the similar trade and also brothers. In my considered opinion, the plaintiff company has prima-facie case. The impugned trademark/trade name/labels, colour scheme and distinctive feature of trademark 'M.K.' has been copied and infringed by the defendant. The impugned trademark of defendant is bound to be affecting the goodwill and business of the plaintiff company and reputation. Therefore, balance of convenience also lies in favour of the plaintiff company. The plaintiff company is bound to suffer irreparable loss to the trade, goodwill and reputation acquired with the impugned deceptively similar trademark/trade name/label and specially mentioning at the back side of the label M.K. SPICES by the defendant.
44. On the basis of above observation and discussion, the application under Order 39 Rule 1 & 2 CPC of the plaintiff is allowed and the application under Order 39 Rule 4 CPC of the defendant is dismissed.
TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.21/2245. Accordingly, defendant itself and through its Directors, proprietor, partner, servant, agents, assigns, representatives, successors, distributors and all others acting for and on behalf are restrained from using, marketing, selling, offering for sale, advertising or displaying directly or indirectly or dealing in any other manner or mode in relation to trade and business of Spices and other edible food products and/or related goods/products under the impugned trade mark/trade name/label M.K. or M.K. Spices or any other trade mark/ trade name/ label similar to said trade mark/label M.K., M.K. SPICS, M.K. GOLD, M.K. CHEMICALS and/or trade name M.K. Foodchem Pvt. Ltd. and from doing any other acts as it likely to cause confusion and deception and infringement of plaintiff's said trademark/ label M.K., M.K. SPICES, M.K. GOLD, M.K. CHEMICLS and/or trade name M.K. Foodchem Pvt. Ltd. and passing off defendant's goods and business as and for the business and goods of the plaintiff and from causing passing off and violation of the plaintiff's said trade mark/ trade name/ label M.K., M.K. SPICES, M.K. GOLD, M.K. CHEMICALS and/or trade name M.K. Foodchem Pvt. Ltd. during the pendency of the case.
46. Nothing expressed herein shall tantamount to expression of opinion on the merits of the case.
Announced in the open court today the 7th July, 2018.
(Sanjay Kumar) ADJ-02,West/Delhi 07.07.2018 TM-22/17 M.K. Foodchem Pvt. Ltd.. vs. Satya Narayan Agarwal Page No.22/22