Anil Rathi & Ors vs Balmukund Sponge And Iron Private ... on 7 July, 2022

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Delhi High Court - Orders

Anil Rathi & Ors vs Balmukund Sponge And Iron Private ... on 7 July, 2022

1. In the morning, none appeared for the Defendants and the matter was passed over. After the pass over, Mr. Khalid Saibullah, ld. Counsel appears and submits that the arguing counsel is not available. Thus, he requests for an adjournment. The request for adjournment is opposed by ld. Counsel for the Plaintiffs.

2. On the last date of hearing i.e., 25th April, 2022 also an adjournment was sought on behalf of the Defendants on the ground of non-availability of briefing Counsel. Ld. counsel for the Plaintiffs submits that there is no interim injunction in this matter and, accordingly, he presses that the application for injunction be heard today.

3. It is made clear that there would be no adjournment in this matter. The matter was directed to be taken up post-lunch. Mr. Sagar Chandra, ld. Counsel made his submissions. No submissions were made on behalf of the Defendants.

CS(COMM) 15/2021 Page 1 of 5 Signature Not Verified Digitally Signed By:Devanshu Signing Date:10.07.2022 18:09:11

4. The Plaintiffs have filed the present suit under Sections 27(2), 29 and 135 of the Trade Marks Act, 1999 (hereinafter 'Act') seeking permanent injunction in respect of the trademark '7 Star' which is the registered trademark of the Plaintiff No.1. The said word mark is registered since 19th November, 2014 under registration number 2845420 in Class 6 in respect of Iron, Steel TMT Bars and Sarias. Plaintiff No.1- Mr. Anil Rathi is the owner of the mark who is stated to have licensed the said mark to Plaintiff No.2- Shri Rathi Steel Ltd. and Plaintiff No.3- Shri Rathi Steel Dakshin Ltd. which are companies promoted by him. He is also the director in both these companies.

5. The Plaintiffs' case is that they are the prior user, adopter and owner of the mark '7 Star' in the steel and iron industry and the said mark is specifically used for TMT Bars, TMT Sarias, etc. The mark '7 Star' was adopted by the Plaintiffs in 2014 and is extensively used ever since. The plaint also set aside the sales and advertisement figures of Plaintiff companies in which sales figure run into almost Rs.800 crores for the year 2019-20. It is the case of the Plaintiffs that the mark is highly distinctive and associated exclusively with the Plaintiffs and it has further acquired distinctiveness by virtue of long, extensive, continuous and uninterrupted use.

6. The Defendants are stated to be using the mark 'Balmukund 7 Star' for identical products i.e., TMT Bars and Sarias. The Plaintiff, accordingly, seeks an injunction in the present case seeking protection of its rights in the registered mark '7 Star'.

7. The suit was first listed on 13th January, 2021 on which date the Court issued summons and notice. Since then, the application for interim CS(COMM) 15/2021 Page 2 of 5 Signature Not Verified Digitally Signed By:Devanshu Signing Date:10.07.2022 18:09:11 injunction has remained pending. In the meantime, the Defendants filed their written statement and also filed an application under Section 124 of the Trademark Act, 1999 being I.A. 6420/2021. The Defendants have also filed an application under Order VII Rule 11 CPC being I.A. 6421/2021 seeking rejection of the plaint. A perusal of the order sheet shows that the matter has been adjourned from time to time. On the last date, an adjournment was sought on the ground that the briefing counsel of the Defendants was not available. Even today, as recorded above, an adjournment is again being sought by the Defendants. Considering that there is no interim injunction in this matter, the matter has been heard briefly.

8. Ld. counsel for the Plaintiff- Mr. Sagar Chandra has submitted that Plaintiff No.1 and its licensees are continuously and extensively using the mark. The use by the licensees enures to Plaintiff No.1. Though the Defendants have added the word 'Balmukund' to the mark '7 Star', the entire mark of the Plaintiffs '7 Star' has been incorporated in the Defendant's mark and product which is impermissible. It is the contention of the ld. Counsel that the allegation of Defendants that the mark '7 Star' is descriptive is also without any basis as the tensile strength of steel and other TMT bars is measured by 'Fe' as per BIS standards and not on the basis of 'stars rating' as is the case with hospitality services. He further submits that the rectification/cancellation filed by the Defendant is also technically not in accordance with law. The said rectification/cancellation was filed without seeking the leave of the Court which was necessary in terms of the judgment of the Supreme Court in Patel Field Marshal Agencies v. P.M. Diesels Ltd. AIR 2017 SC 5619.

9. The Court has perused the record and at this stage, subject to what CS(COMM) 15/2021 Page 3 of 5 Signature Not Verified Digitally Signed By:Devanshu Signing Date:10.07.2022 18:09:11 Defendants have to argue, since repeated adjournments are being sought and there has been no interim injunction granted in favour of the Plaintiff, it is deemed appropriate to consider the merits of the Plaintiffs' case.

10. Plaintiff No.1 is the registered proprietor of the mark '7 Star'. Admittedly, no cancellation petition was filed by the Defendants prior to the filing of the suit. The application under Section 124 of the Act is yet to be heard and arguing counsel for the Defendants is not available to make any submissions in this regard. In the opinion of the Court, the mark being registered and the Plaintiffs being the prior adopter and user of the mark, the addition of the word 'Balmukund' to the mark '7 Star' may not be sufficient to distinguish Defendants' product as there is a strong likelihood that the Defendants mark/ business/ products may be confused as emanating or connected with the Plaintiff. Moreover, the Defendants also have various other marks such as 'Balmukund Super', 'Diamond Balmukund', 'Balmukund Super TMT' as per paragraph 30 of the written statement. In the opinion of the Court, the Plaintiffs have made out a prima facie case for an ad interim injunction. Balance of convenience lies in their favor. Irreparable loss and injury would be caused to the Plaintiffs if an injunction is not granted at this stage.

11. Under such circumstances, till further orders, the Defendants or anyone acting for or on their behalf shall stand restrained from using the marks '7 Star', 'Balmukund 7 Star' or any other mark that is deceptively similar to the Plaintiffs' mark `7 Star' in respect of TMT Bars, Steel Bars and Sarias or any other cognate and allied goods either on the products or on website/ online listings. If there are any already manufactured products lying with the Defendants, a stock statement shall be filed by the Defendants by CS(COMM) 15/2021 Page 4 of 5 Signature Not Verified Digitally Signed By:Devanshu Signing Date:10.07.2022 18:09:11 the next date of hearing. Henceforth, there shall be no manufacture of any products bearing the mark '7 Star'.

12. If the Defendants need any time to exhaust the existing stock, appropriate application may be moved by the Defendants.

13. List this matter on 2nd November, 2022.

PRATHIBA M. SINGH, J.

JULY 7, 2022 dj/sk CS(COMM) 15/2021 Page 5 of 5

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Delhi High Court - Orders