Bombay High Court
Chutraram Nemaram Gehlot vs Rajaram Magharam Tak on 10 December, 2020
Author: Madhav J. Jamdar
Bench: Madhav J. Jamdar
Digitally signed
Hemant by Hemant C.
Shiv
C. Shiv Date: 2020.12.10
19:28:05 +0530
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8.ia8410.20.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION (L) NO.8410 OF 2020
IN
COMPANY IP (L) NO.8407 OF 2020
IN
LEAVE PETITION (L) NO.8411 OF 2020
Chutraram Nemaram Gehlot ... Plaintiff
V/s.
Rajaram Magharam Tak ... Defendant
Mr.Alankar Kirpekar with Mr.Shekhar Bhagat i/b MAG Legal Advocates for
the Plaintiff.
None for the Defendant.
CORAM : MADHAV J. JAMDAR, J.
DATE : 10TH DECEMBER, 2020.
(THROUGH VIDEO CONFERENCING) P.C:-
1. Heard Mr.Alankar Kirpekar for the Plaintiff.
2. The Plaintiff seeks to move without notice to the Defendant for the reasons which are set out in paragraph 26 of the plaint. This is action for infringement of Plaintiff's register copyright in the artistic work titled as "PREM DULHAN GREEN LABEL" and infringement of Plaintiff's registered trade marks at Exhibit "D" to "D9".
3. Mr.Alankar Kirpekar submits that since leave petition under Clause XIV of Letters Patent to combine cause of action for passing off with the hcs 2/11
8.ia8410.20.doc cause of action for infringement of trade mark, is not obtained, the Plaintiff is only pressing for relief in respect of infringement of trade mark as well as infringement of copyright and shall press for relief of passing off after obtaining such leave. Mr.Alankar Kirpekar states that in view of this today he is pressing ad-interim relief only in terms of prayer clauses (a), (b) and
(c). Therefore, I have to consider whether the Plaintiff has made out the case for granting ad-interim relief and also whether the case is made out for granting the same exparte.
4. Mr.Alankar Kirpekar, learned Advocate pointed out registration certificate on page 59 and the label which is being used for registered trade mark on pages 60, 61, 64, 65 and 66. He also pointed out sales figure on pages 79 and 112 and expenses for promotion of the said product on page
112. On page 117 onwards, the promotional material used for promoting the said goods is annexed. He submitted that in November 2020, the Plaintiff came to know about the application filed by the Defendant with the Registrar of Trade Mark seeking Trade Mark in the name of "DABANG DULHAN". The said application is at page 170. He submitted that the said impugned Trade Mark name and the label is deceptively similar to the Trade Mark and label which is being used by the Plaintiff.
5. Mr.Alankar Kirepkar, learned Advocate pointed out that the Trade Mark "PREM DULHAN" is being used by the Plaintiff since 1998 and label is being used by the Plaintiff since 2013. He submitted that the details of application preferred by the Defendant as available on website of the Trade Mark Registry shows in column of user detail the said Trade Mark and Trade Mark image is proposed to be used and till date the said Trade Mark is not granted. He states that the application seeking Trade Mark preferred by the Defendant is still pending and he will file objection to the hcs 3/11
8.ia8410.20.doc same within one or two days. He points out that although the application seeking Trade Mark preferred by the Defendant is pending and although it is specifically mentioned that the said trade mark is proposed to be used since November 2020 in the market, product of the Defendant is available for sale by using the deceptively similar trade mark and label. He pointed out that the label of Defendant's product is on pages 171 and 172 and submitted that the same is deceptively similar to label and Trade Mark used by the Plaintiff which is at pages 57 and 58.
6. I have heard Mr.Alankar Kirpekar and also perused the plaint and annexures to the plaint. I have also gone through the averments in Interim Application. The averments in the plaint and the Exhibits annexed to the plaint the prima facie establishes the following :
(i) Since year 1998 the Plaintiff is engaged in business of manufacturing and marketing of Mehandi, Mehandi Powder, Mehandi Cone etc.
(ii) The Plaintiff in order to distinguish the Mehandi products in the market had adopted Trade Mark "PREM DULHAN" in the year 1998. The Plaintiff is using Trade Mark "PREM DULHAN" for manufacturing and marketing Mehandi Cones openly, continuously, extensively and/or uninterruptedly in the market.
(iii) As per instructions of the Plaintiff, the artistic work titled as "PREM DULHAN GREEN LABEL" was created for and on behalf of the Plaintiff by artist. The Plaintiff after obtaining no objection certificate from the artist applied for registration of the said artistic work under the Copyright Act, 1957 and copyright was granted in favour of the Plaintiff. A photocopy of the said copyright bearing Registration No.A-129913/2019 showing hcs 4/11
8.ia8410.20.doc registration in favour of the Plaintiff is produced at pages 59 and 60 along with artistic work titled as "PREM DULHAN GREEN LABEL". The Plaintiff has produced at Exhibit "D" to "D9" certificates showing registration of Trade Mark "Prem Dulhan" and its formative mark in favour of the Plaintiff. The said certificates are from year 2001 till 2018.
7. The Plaintiff has prima facie established that the Plaintiff is entitled exclusive use of the Trade Mark "Prem Dulhan" in relation to goods falling in clause 3 and no other person is entitled to use trade mark which is identical or deceptively similar to Trade Mark "PREM DULHAN GREEN LABEL". The Plaintiff has not only registered the Trade Mark "PREM DULHAN GREEN LABEL" in India but has also obtained registration in many countries and list of the same is given at pages 9 and 10 of the plaint.
8. The certificate issued by the Chartered Accountant of the Plaintiff shows that sales turnover in the financial year 1998-99 was merely Rs.60,250/- and the same has grown to Rs.115 crores in the year 2019-20. It is clear that the Plaintiff has painstakingly built goodwill and reputation of the Trade Mark "Prem Dulhan" in last 22 years. The sales promotional activity and expenses required for the same are set out in paragraph 11 and particulars are annexed at Exhibit "G", "G1 to G42".
9. The Plaintiff has also stated that the Plaintiff is promoting its goods under trade mark "PREM DULHAN" and also under artistic work shown in Exhibit-C through online shopping website which makes trade mark "Prem Dulhan" more accessible and known not only in India but various other countries.
10. In the above background, the Plaintiff in paragraph 14 stated that in hcs 5/11
8.ia8410.20.doc last week of November 2020, it has come to knowledge of the Plaintiff through a periodical search on the website of the Trade Mark Registry that the Defendant has sought registration of Trade Mark "DABANG DULHAN"
and the said application is numbered as 4599734. The said application seeking registration of the impugned Trade Mark was filed on 7th August, 2020. The said application is produced at Exhibit-I (page 170). The details of the said application as appearing on page 170 and which are available on the website of the Registry of Trade Marks are set out hereinbelow for ready reference :
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8.ia8410.20.doc hcs 7/11
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11. The Plaintiff has stated that although it is stated in the application at page 170 that the said trade mark and trade label is proposed to be used, however, the same is available in market. The Plaintiff also pointed out that the said application is still pending and inspite of same the said Trade Mark and label is being used by the Defendant. The Plaintiff has produced before this Court two boxes containing Mehendi Cones one being sold by the Plaintiff and another by the Defendant. The scanned photo of the box containing product of the Plaintiff is set out hereinbelow :
The scanned photo of the box containing product of the Defendant is set out hereinbelow :
12. It is very clear that the Defendant is using deceptively similar label hcs 8/11
8.ia8410.20.doc and deceptively similar trade mark for marketing its product. There is substance in the Plaintiff's case that the Defendant has adopted Trade Mark "DABANG DULHAN" which is deceptively similar to the Plaintiff's Trade Mark "PREM DULHAN". The representation of the Trade Mark "PREM DULHAN" and "DABANG DULHAN" is visually and structurally similar to each other. The Plaintiff has depicted words "PREM DULHAN"
one below another and the Defendant has also depicted it in the same manner. The representation of the Trade Mark "PREM DULHAN" in the Plantiff's artistic work is in yellow colour against the brown colour background and the Defendant has deceptively and dishonestly adopted similar colour combination. The Plaintiff has represented punch line below the Trade Mark "PREM DULHAN". The Defendant has also done it in the same manner. The Plaintiff has used punch line in rectangular shape frame line structure and has provided the information that the product is 100% natural henna and there are no chemical dye used. The Defendant has also provided identical information in identical manner on the Defendant's product. The outer border in the Plaintiff's product is mainly green colour with some artistic work and informative material depicted in brown colour. The Defendant has also represented the same thing in similar manner. It is very significant to note that even packing material is also deceptively similar.
13. Therefore, I am satisfied that the Plaintiff is successful in establishing very strong prima facie case. It is very clear that balance of convenience is in favour of the Plaintiff and if the exparte ad-interim relief is not granted then Plaintiff will suffer irreparable loss and damage.
14. It is rightly contended by Mr.Alankar Kirpekar that if notice is issued to the Defendant on this Interim Application and/or of the Suit then the hcs 9/11
8.ia8410.20.doc Defendant would remove the impugned goods from their possession, custody and/or control and sell and/or otherwise part the possession and/or custody thereof to some other persons and immediately the same would be distributed in the market. The Defendant will flood the market with the impugned goods and later show that such impugned goods are not in their possession, control, custody and same will continue to be sold in the market thereby Defendant would succeed in its design of trading upon the reputation and goodwill of the Plaintiff making huge profit at the cost of the Plaintiff.
15. In view of the above ad-interim relief in terms of prayer clause (a),
(b) and (c) is granted. The said prayer clauses (a), (b) and (c) are reproduced hereinbelow for ready reference
(a) "that, pending the hearing and final disposal of the suit, the Court Receiver, High Court, Bombay be appointed under Order XL Rule 1 of Civil Procedure Code, 1908 as the Receiver of the Respondent's products bearing the impugned trade mark "DABANG DULHAN"
as shown in Exhibit "I" to the Plaint or any other product bearing the impugned mark with all powers to enter in the premises of the Respondent and/or Respondent's servants, agents, dealers, stockists and distributors at any time of the day or night, without notice to the Respondent and/or Respondent's servants, agents, dealers, stockists and/or distributors and in presence of Applicant's representatives and with the help of the local police authorities, if found necessary by Court Receiver, to seize and take charge, possession and control of the impugned products bearing hcs 10/11
8.ia8410.20.doc the impugned trade mark "DABANG DULHAN" and/or bearing the impugned artistic work and/or any other product bearing the Trade Mark / artistic Work which is deceptively similar to the Applicant's registered Trade Mark as shown in Exhibit "D" to "D9" to the Plaint and registered artistic work as shown in Exhibit "C" to the Plaint and also to take charge and possession of all other goods, records, account books showing manufacture, stock and/or sale/export of impugned products bearing the said impugned trade mark in possession and control of the Respondent and/or Respondent's agents, servants, distributors, stockiest, and/or dealers;
(b) that pending the hearing and final disposal of the Suit, Respondent by himself, and/or through Partners, Directors, Agents, Servants, Stockiest and/or Distributors and/or Exporters or any other person claiming through the Respondent by an order of temporary injunction of this Hon'ble Court, from infringing the Applicant's registered copyright in the artistic work titled as "PREM DULHAN GREEN LABEL" as shown in Exhibit-C to the Plaint, by using the impugned art work as shown in Exhibit 'J" to the Plaint, and/or any other deceptively similar art work so as to infringe Applicant's registered Copyright in any manner whatsoever;
(c) that pending the hearing and final disposal of the Suit, Respondent by himself, through Partners, Directors, Agents, Servants, Stockiest and/or Distributors and/or hcs 11/11
8.ia8410.20.doc Exporters or any other person claiming through the Respondent, by an order of temporary injunction of this Hon'ble Court from infringing Applicant's registered Trade Marks as shown in Exhibit "D to D9' to the Plaint, by using impugned Trade Mark "DABANG DULHAN"
as shown in Exhibit "J" to the Plaint and or any other deceptively similar Trade Mark so as to infringe Applicant's registered Trade Marks in any manner whatsoever;
16. This order will continue until 22nd January, 2021. The Plaintiff will comply with the provisions of Order XXIX Rule 3 immediately after Court Receiver executes the order.
17. Liberty is given to the Defendant to apply for vacating or modifying this order after giving 72 hours notice to the Plaintiff's Advocate.
18. The Court Receiver is permitted to seek protection of local police for executing the order. The local police shall render assistance to the Court Receiver.
19. List the matter along with Leave Petition No.8411 of 2020 on 18th January, 2021 under the caption of "ad-interim reliefs".
20. Parties to act on authenticated copy of this order.
[MADHAV J. JAMDAR, J.]