Delhi District Court
Nahar Singh Mahipal Jain vs Sh. Vineet Jain on 14 August, 2018
TM No.81/2010: "Nahar Singh Mahipal Jain V. Vineet Jain"
IN THE COURT OF ANKUR JAIN: ADDL.DISTRICT JUDGE-
10 (CENTRAL): TIS HAZARI COURTS: NEW DELHI
TM No.81/10 (New No.1121/2016)
In the matter of:
1.Nahar Singh Mahipal Jain
2104 Katra Tobacco, Khari Baoli
Delhi-110006
2.Sh. Mukesh Jain, partner
s/o late Sh. Mahipal Jain
r/o House no. 1732, First floor,
Sohan Ganj, Near Kohlapur Road,
Delhi-110007 .....Plaintiffs
Versus
1. Sh. Vineet Jain
s/o Sh. Vijay Pal Jain
sole prop. Of
M/s. Nahar Singh Vijay Pal Jain
2104/1 Katra Tobacco, Khari Baoli
Delhi- 110006
r/o House no. 1732, First floor,
Sohan Ganj, Near Kohlapur Road,
Delhi-110007 .....Defendant
Date of Institution of Suit : 08.03.2017
Date of reserving judgment : 24.05.2018
Date of pronouncement : 14.08.2018
SUIT FOR PERMANENT AND MANDATORY INJUNCTION,
INFRINGEMENT, PASSING OFF & RENDITION OF ACCOUNT
J U D G M E N T:
01. Brief facts of the case as necessary for the disposal of the present suit are that plaintiff No.1 is a partnership firm duly registered under the name & style of M/s. Nahar Singh Mahipal Page 1 TM No.81/2010: "Nahar Singh Mahipal Jain V. Vineet Jain"
Jain, under the Indian Partnership Act, 1932 since 1955 and plaintiff no.2 is one of its partners.
02. It is stated that plaintiffs are one of the leading manufacturer and seller of edible and non edible colours and chemicals not only in Delhi, NCR market but also across the country since 1955. It is stated that plaintiffs are selling edible and non edible colors and chemicals including hydro sulphite of Soda (Rang Kaat), citric acid, custard powder, chocolate powder, GMS powder and flakes, Vanila powders, aginomoto, mono sodium golatmet, baking powder, food colours, ammonia, meetha soda, ceramel, tarataric, bread improver, cake improver, amtasar, liquid colours, liquid food essence etc. The plaintiff are also packing and selling drinking chocolate, custard powder, baking powder etc. under its registered trademark "ARIHANT" associated with the product name "Classic Gold" since March 1990. The plaintiffs have got registered its trademark "ARIHANT" vide registration no. 1282704 vide class-30. It is further the case of the plaintiff that their trademark "ARIHANT" is associated with the well known product namely 'Classic Gold' with the picture of cup full of coffee on the face of the label affixed on tin containers. It is stated that the defendant is also dealing in drinking chocolate and allied goods. It is further stated that defendant has stated using identical and deceptively similar packing bearing deceptively similar mark namely "New Classic Gold" with a similar label. The said offending trademark and firm name of the defendant is having close affinity with a trademark "ARIHANT" associated with product name "Classic Gold". The defendant is selling said products bearing the offending trademark and using deceptively Page 2 TM No.81/2010: "Nahar Singh Mahipal Jain V. Vineet Jain"
similar firm name, the class of customers of the defendant is same as that of the plaintiff.
03. Plaintiff had issued legal notice dt. 16.01.2007 to the defendant. However, defendants neither replied to the said notice nor did they stop the infringement and passing off. Accordingly, the plaintiff filed the present suit, seeking a decree of perpetual injunction and rendition of accounts against the defendant.
04. Defendants were served with the summons of the suit, they filed their written statement on 20.3.2007 wherein they took a preliminary objection with respect to family settlement dt. 17.11.2004 between Vijay Pal Jain and plaintiff no.2 apart from other member. It was claimed that the defendants are honestly, bonafidely and in course of trade are using the impugned trademark "New Classic Gold" label since November 2006. It was further stated that plaintiff has not come to the court with clean hands and has deliberately concealed the relationship with the defendants. It is further stated that trademark "ARIHANT" is not registered in respect of drinking chocolate, yet the plaintiff are illegally and dishonestly mentioning ® on their trademark "ARIHANT" with respect to drinking chocolate. It was further stated that plaintiffs are not the proprietor of its label and the same has been copied from the label of 'NESCAFE'. No replication to the written statement was filed.
05. Vide order dated 27.03.2012, the defendants were proceeded ex-parte and in order to prove its case plaintiff examined Mukesh Jain as PW1. He was again examined on Page 3 TM No.81/2010: "Nahar Singh Mahipal Jain V. Vineet Jain"
19.11.2014 as PW1 and proved certified copies of partnership deed dated 03.4.2006 as Ex. PW1/1A, copy of Form A of Registrar of Firm as Ex. PW1/1B.
06. However vide order dated 8.8.2016, the predecessor of this court framed the following issues in the matter:
(i) Whether there was any family settlement dated 17.11.2004 between Sh. Vijay Pal Jain, on one side and Sh. Mukesh Jain & Divesh Jain, sons of Sh.
Mahipal Jain , on the other side? OPD
(ii) Whether the defendant is infringing the registered trademark "COW CHAAP" under registration number 1282703 in class 1 of the plaintiff pleaded in the plaint? If so, whether the plaintiffs are entitled to decree for permanent injunction? OPP.
(iii) Whether the defendant is passing off his product i.e. Rang Kaat as the products of the plaintiffs under the trademark "COW CALF"? If so, whether the plaintiffs are entitled to a decree against passing off? OPP
(iv) Whether the plaintiffs are entitled to a decree of rendition of accounts? OPP.
(v) Relief.
07. The issues no. 2 and 3 it seems were wrongly framed by the Predecessor of this court, perhaps the reason was that a connected suit between the same parties were pending in which the plaintiff was claiming himself to be a registered proprietor of "COW CHAAP".
08. Hence, the issues no. 2 and 3 are re-framed and they are as under:
(ii) Whether the defendant is infringing the registered Page 4 TM No.81/2010: "Nahar Singh Mahipal Jain V. Vineet Jain"
trademark "ARIHANT" associated with the product "Classic Gold". If so, whether the plaintiff are entitled to decree for permanent injunction?
(iii) Whether defendant is passing off his product "New Classic Gold" as the product of the plaintiff under the trademark "ARIHANT" associated with "Classic Gold". If so, whether they are entitled to decree of passing off?
09. Ld counsel for the plaintiff has argued that defendants are infringing the registered trademark 'ARIHANT' associated with their product 'Classic Gold'. He submits that label which has been adopted by the defendant is identical to the label of the plaintiff and therefore, it is a case of actual confusion rather than likelihood of confusion.
10. I have heard ld counsel for the plaintiff and perused the record carefully.
11. My issue-wise findings are as under:
ISSUE NO.1 Whether there was any family settlement dated 17.11.2004 between Sh. Vijay Pal Jain, on one side and Sh. Mukesh Jain & Divesh Jain, sons of Sh. Mahipal Jain , on the other side? OPD
12. The onus to prove this issue was upon defendant. No evidence has been led by the defendant to prove that there was any family settlement dated 17.11.2004 between Vijay Pal on one side, Mukesh Chand and Dinesh Chand on other other side. In the absence of any evidence this fact cannot be believed. Hence, Page 5 TM No.81/2010: "Nahar Singh Mahipal Jain V. Vineet Jain"
the said issue is decided in favour of plaintiff and against the defendant.
13. ISSUE NO. 2, 3 &4
(ii) Whether the defendant is infringing the registered trademark "ARIHANT" associated with the product "Classic Gold". If so, whether the plaintiff are entitled to decree for permanent injunction?
(iii) Whether defendant is passing off his product "New Classic Gold" as the product of the plaintiff under the trademark "ARIHANT" associated with "Classic Gold". If so, whether they are entitled to decree of passing off?
(iv). Whether the plaintiffs are entitled to a decree of rendition of accounts? OPP.
14. The onus to prove these issues was upon the plaintiff. They are taken up together as they are inter-connected. It is the case of the plaintiff that they are dealing and selling drinking chocolate powder, coco powder, custard powder under its registered trademark "ARIHANT" with the product name Classic Gold since March 1990 and the trademark is duly registered. On the contrary defendant is selling his product under mark New Classic Gold.
15. In the facts of the present case, plaintiff is using "ARIHANT"® on his product along with the word 'Classic Gold'. The label also has a cup full of coffee. The defendants are also using the same label. However, the defendant is not using the word "ARIHANT" on its product. Plaintiff has not placed on record Page 6 TM No.81/2010: "Nahar Singh Mahipal Jain V. Vineet Jain"
any registration in respect of 'Classic Gold'. Ex. PW1/E is the additional representation with respect to word 'CLASSIC'. It is not the case of the plaintiff that he holds a copyright in respect of the label. Plaintiff has claimed user since March 1990 but no document like invoice has been placed on record which could show that plaintiff is using his mark "ARIHANT" on his product along with Classic Gold since March 1990 and it has acquired secondary significance. Ex. PW1/E is the additional representation made by the plaintiff for inclusion of word "Classic", in the said representation plaintiff claims user from 01.03.1990. In Ex. PW 1/B, which is again, an additional representation made to the trademark registry the user claim is from 15.11.2000. In the said representation, the plaintiff wanted to get his label registered. Thus, plaintiff is himself not sure as to what is the actual date from which its started using the said product with the particular label with the wordmark 'Classic Gold' along with its registered mark "ARIHANT". In any case "ARIHANT" is registered in Class 30, for coco powder, custard. The product for which the plaintiff is alleging infringement is drinking chocolate.
16. Ex. PW1/C is the registration certificate in respect of the trademark "ARIHANT". The said certificate is registered in the name of Mukesh Jain & Anita Jain. Plaintiff has failed to disclose as to how the said mark was registered in the name of Anita Jain. The copy of partnership deed dated 03.04.2006 which has been exhibited as Ex. PW1/1A shows that there was earlier, a partnership with Anita Jain in the name and style of M/s. Nahar Singh Mahipal Jain and said partnership firm stood dissolved on 31.03.2005 vide dissolution deed dated 31.03.2006. However, Page 7 TM No.81/2010: "Nahar Singh Mahipal Jain V. Vineet Jain"
plaintiff in its plaint has not disclose these facts. Secondly, there is no assignment deed as required u/s 2(b) of Trademark Act, 1999. Moreover, as per Section 45 of the Trade Mark Act, 1999, a person who becomes entitled by assignment or transmission to a registered trademark, he shall apply in prescribed manner to the Registrar to register his title, no such application has been proved by the plaintiff to have been filed by him before the Registrar. It is not clear as to whether the newly constituted firm acquired any right in its favour in respect of the trademark 'ARIHANT'. The plaintiff thus failed to discharge the onus. The issues are accordingly decided in favor of the defendant and against plaintiff.
17. Issue no. 5:-
(v) RELIEF In view of my finding of issue no. 2,3 & 4, the suit of the plaintiff is liable to the dismissed. No order as to cost. Decree sheet be prepared accordingly.
File be consigned to Record Room.
Digitally signed ANKUR by ANKUR JAIN
Date:
JAIN 2018.08.14
15:47:36 +0530
Announced in the (Ankur Jain)
open Court on 14.08.2018 Addl. District Judge-10 (Central)
Tis Hazari Courts: Delhi
Page 8