Delhi District Court
S. Charanjit Singh vs S. Gurdeep Singh on 31 January, 2025
IN THE COURT OF SH.RAJ KUMAR TRIPATHI:
DISTRICT JUDGE (COMMERCIAL COURT)-08,
SOUTH-EAST DISTRICT, SAKET COURTS, NEW DELHI
TM-100/2018
(S. Charanjit Singh & Ors. vs. S. Gurdeep Singh)
CNR No. DLSE01-004394-2018
1. S. Charanjit Singh
Sole Proprietor of
M/s Basant Ice Cream(Regd.)
Kucha No. 5, Field Ganj, Ludhiana (Punjab)
Also At
Shop No. 20, Jangpura Extension Market,
Opp. Eros Theatre, New Delhi-110 014.
..........Plaintiff No.1
2. S. Rajinder Singh
Trading As M/s Basant Dairy
SCO-18 (Double Storey)
Rajguru Nagar, Main Market,
Ludhiana (Punjab)
..........Plaintiff No.2
3. S. Gurdeep Singh Kharbanda,
S/o Late S. Gubachan Singh,
Sole Proprietor of M/S Pal's,
Shop No. 20, Jangpura Extension Market,
Opp. Eros Theatre, New Delhi-110 014.
..........Plaintiff No.3
Plaintiffs
Through:- Mr. Shailen Bhatia
along with Mr. Amit Jain
and Mr. Ashutosh Pandey, advocates
TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 1 of 51
Digitally
Raj signed by Raj
Kumar Tripathi
Kumar Date:
2025.02.01
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Versus
S. Gurdeep Singh
Trading As M/S New Basant Ice Cream
Kucha No. 6, Field Ganj,
Jail Road, Ludhiana, (Punjab).
Also At
Shop Opp. Gurudwara,
Fatehpuri, Delhi.
..........Defendant
Through:- Mr. Praveen Singh
along with Mr. Balendra Prasad Tiwari
and Mr. Rameshwar Prasad Saha, advocates.
Date of filing of suit : 23.05.2018
Arguments heard on : 04.01.2025, 07.01.2025
Date of Judgment : 31.01.2025
JUDGMENT:
1.1 Plaintiffs filed the present suit on 23.05.2018 against defendant inter alia praying for grant of the following reliefs:-
"a) An Order for permanent injunction restraining the Defendant, its officers, as the case may be, its servants, agents, dealers, distributors and all others acting for and on its behalf from manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing with Ice Cream, Kulfi and other cognate/allied goods under the trade mark NEW BASANT or any other identical/deceptively similar trade mark to the Plaintiffs' trade mark BASANT amounting to infringement of registered trade mark No. 453561 in class 30 and others.
b) An Order for permanent injunction restraining the Defendant, its officers, as the case may be, its servants, agents, dealers, distributors and all others, acting for and on its behalf from manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing in goods such as Ice Cream, Kulfi and TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 2 of 51 Digitally Raj signed by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:48:25 +0530 other cognate/allied goods under the trade mark New BASANT or any other identical/deceptively similar trade mark to the Plaintiffs' trade mark BASANT or from doing any other thing as is likely to lead to confusion or deception thereby resulting in passing off the Defendant's goods as those of the Plaintiffs.
c) An Order for permanent injunction restraining the Defendant, its officers, as the case may be, its servants, agents, dealers, distributors and all others acting for and on its behalf from manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing in goods such as Ice Cream, Kulfi and other cognate/allied goods under the trade mark NEW BASANT or any other identical / deceptively similar trade mark as part of the trade name which is in violation of rights of the Plaintiffs acquired by the first adoption of word BASANT.
d) An order for permanent injunction restraining the Defendant, its proprietor, partners as the case may be, its servants, agents, dealers, distributors and all others acting for and on its behalf from manufacturing, exporting, selling, offering for sale, advertising, exhibiting, directly or indirectly dealing in goods Ice Cream, Kulfi etc. and other cognate / allied goods under the trade mark NEW BASANT and the labels/packaging or any other identical/deceptively similar trade mark to the Plaintiffs' trade mark BASANT and the labels/packaging amounting to infringement of Copyright of the Plaintiffs in the artistic work titled as BASANT.
e) An Order for delivery up of all material including labels, blocks, dies, strips, cartons, stationery, literature or any other printed matter bearing the alleged label for the purpose of destruction and/or erasure.
f) For an Order of Damages caused to reputation and goodwill of the Plaintiffs on account of use of the alleged trade mark NEW BASANT by the Defendant.
Any further order/orders as this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case may also be passed in favour of the Plaintiffs and against the Defendant."
2.1 Plaintiff no.1 S. Charanjit Singh is sole proprietor of M/s Basant Ice Cream (Regd.) having office at Kucha No.5, Field Ganj, TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 3 of 51 Digitally Raj signed by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:48:34 +0530 Ludhiana (Punjab) and also a shop at Shop No.20, Jangpura Extension Market, Opp. Eros Theatre, New Delhi-110 014. Plaintiff no.2 S. Rajinder Singh is sole proprietor of M/s Basant Dairy having office at SCO-18 (Double Storey), Rajguru Nagar, Main Market, Ludhiana (Punjab). He is also Managing Director of the company M/s Basant Dairy Foods Pvt. Ltd.
2.2 As per plaintiffs, at the time of institution of the suit, Late S. Jaspal Singh trading as M/s Pal Refreshment Corner having address at Shop No.20, Jangpura Extension Market, Opp. Eros Theater, New Delhi-110014 was impleaded as plaintiff no.3. Late S. Jaspal Singh was the dealer and licensee of the plaintiff no.1 for Delhi for carrying on the business of selling various types of Ice Cream, Kulfi and Pastries etc. under the trade mark/label 'BASANT' of plaintiff no.1.
However, the said S. Jaspal Singh expired on 21.03.2022. The said business of Late S. Jaspal Singh is now being run by his brother S. Gurdeep Singh Kharbanda at the aforementioned address under the different firm name M/s Pal's. S. Gurdeep Singh Kharbanda is the proprietor of the said firm i.e. M/s Pal's. Plaintiff no.1 has entered into a fresh dealership agreement dated 20.07.2022 with S. Gurdeep Singh Kharbanda, proprietor of the firm M/s Pal's, who is now a dealer/licensee of the plaintiff no.1.
2.3 Plaintiff no.1 is presently dealing in providing restaurant and food services, catering, manufacturing and dealing in ice cream, kulfi, ice cream powder and dry fruits etc. Plaintiff no.1 firm has a TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 4 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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restaurant named Basant Resorts and a banquet hall named Basant Food Plaza at Malar Road, Ludhiana.
2.4 Plaintiffs aver that plaintiff no.1 firm was initially established in 1960 by S. Lal Singh, who was the grandfather of the present proprietor of the plaintiff firm. The grandfather of the present proprietor of the plaintiff no.1, S. Lal Singh preferred an application for registration of trade mark BASANT and the application was numbered as 453561 in class 30 and advertised in Journal No.960. 2.5 S. Lal Singh died on 30.05.1989. S. Rajinder Singh son of S. Lal Singh and father of the present proprietor of the plaintiff no.1 firm took over the firm M/s Basant Ice Cream (Regd.) as the sole proprietor. The trade mark BASANT under No. 453561 in class 30 was granted registration in name of Shri Rajinder Singh. Later, the firm became a partnership firm of S. Kanwalpreet Singh and S. Charanjit Singh. Thereafter, there was a dissolution deed dated 01.12.2007 and the firm M/s Basant Ice Cream has come to share of S. Charanjit Singh and now S. Charanjit Singh, the plaintiff no.1 is the sole proprietor of the firm M/s Basant Ice Cream. 2.6 Plaintiff no.2 S. Rajinder Singh is engaged in the business of dealing in milk products. Both the firms of plaintiffs i.e. M/s Basant Ice Cream (Regd.) and M/s Basant Dairy are owned and controlled by family members. Plaintiff no.1 is presently registered proprietor of the following trade marks:-
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S. Registration Trade Mark Goods
No. No./Class And User Since
Journal No.
A. 453561 Basant Ice Cream, Ice Cream
In Class 30 User Since Powder, Kulfi Ice
Journal No. 1373 01.01.1960
B. 2129221 Basant (Label) Ice Cream Parlours,
In Class 43 User Since Providing Of Sweets, Ice
Journal No. : 1544-0 01.01.1952 Creams And Kulfi Only
(Except Motels Banquet
Halls, Marriage Palace,
Entertainment Park,
Providing Of Food, Drinks
And Temporary
Accommodation,
Restaurants Including Self
Service And Fast Food
Restaurants), Cafe Shops,
Fast Food Junctions
Included In Class 43.
2.7 Plaintiff no.2 is the registered proprietor of the following
trade marks:-
S. Registration Trade Mark Goods
No. No./Class And User Since
Journal No.
A. 804321 Basant (Device) Ice Cream, Ice Cream Powder,
In Class 30 User Since Kulfi, Jelly Puddings, Ready To
Journal No. 01.01.1990 Serve Cereal Dishes, Cakes,
1329-1 Pasteries, Pizzas, Food Mixtures
Containing Cereals And Dried
Fruits.
2.8 Plaintiffs have many other group entities such as Basant
Dairy Foods Pvt. Ltd., Basant Resorts and Basant Food Plaza etc. The TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 6 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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word Basant is omnipresent in the said trade names. Plaintiff no.1 is also holding following copyright registrations:-
Sl. No. Trade mark Copyright Regn. No. a. BASANT THE REAL TASTE A-74870/2005 b. BASANT THE REAL TASTE A-74871/2005 2.9 Plaintiffs claim to have been continuously and uninterruptedly using the trade mark/label BASANT since long and by reason of exclusive use for such a long and continuous period, a valuable and exclusive goodwill and reputation has accrued to the trade mark/label BASANT. Due to high quality of their products/services, state of art technology employed in manufacture of goods, the plaintiffs' trade mark/label BASANT has attained unimpeachable reputation. The trade mark/label BASANT is distinctive and identified exclusively with the goods of the plaintiffs. 2.10 As per plaintiffs, due to high quality of their products and enviable reputation trade mark BASANT, the public and the members of trade associate with the trade mark BASANT of plaintiffs and none else. Plaintiffs have been using the trade mark BASANT extensively for the last 56 years. Plaintiffs have advertised the trade mark BASANT extensively. They have been using the trade mark BASANT for so many years without any objection and/or hindrance from any quarter including the defendant. The sale figures of the firm-
M/s Basant Ice Cream are as follows:-
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2025.02.01 Tripathi 15:49:16 +0530 Financial Year Sales Turnover (In Rs.) (Previous year's record not available) 2003-2004 5031818 2004-2005 11884936 2005-2006 13060677 2006-2007 13572342 2007-2008 19215627 2008-2009 23805484 2009-2010 27691297 2010-2011 30711092 2011-2012 42137669 2012-2013 63607310 2013-2014 78248298 2014-2015 88986194 2015-2016 111324163 2.11 Plaintiffs have extensively advertised the trade mark/label BASANT for food items, ice cream and services of restaurants and banquet halls. The advertisement expenses of the firm M/s Basant Ice Cream are as follows:-
Financial Year Advertisement
Expenses (In Rs.)
(Previous year's record
not available)
2003-2004 24000
2004-2005 63110
2005-2006 35056
2006-2007 61024
2007-2008 22540
2008-2009 3292
2009-2010 61098
2010-2011 26415
2011-2012 12544
2012-2013 100371
2013-2014 94935
TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 8 of 51
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signed by Raj
Raj Kumar
Tripathi
Kumar Date:
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2014-2015 36440
2015-2016 128242
2.12 Plaintiffs' through their predecessors are the first and
prior adopters of the trade mark BASANT. The trade mark BASANT is used by the plaintiffs since 1952 as a word mark and since the year 1960 as a label mark. Plaintiffs are within their right to seek protection of their rights in respect of the trade mark/label BASANT. 2.13 Plaintiffs' goods under the trade mark/label BASANT are sold throughout the length and breadth of the country. Years of hard work and perseverance has created an enviable goodwill for the plaintiffs in respect of the trade mark BASANT. Plaintiff no.1 has appointed plaintiff no.3 as its exclusive dealer and licensee for Delhi for the ice cream under the trade mark BASANT. The ice cream of plaintiff no.1 under the trade mark BASANT is available at shop no.20, Jangpura Extension Market, Opposite Eros Theater, New Delhi. 2.14 Plaintiffs claim to have attained an unrivaled reputation and goodwill for their trade mark/label BASANT. The trade mark BASANT is associated exclusively with the goods of the plaintiffs and their predecessor. Thus, on account of long, continuous and extensive user of the trade mark BASANT in relation to all kinds of ice cream, kulfi, ice cream powder and dry fruits etc. marketed by the plaintiffs, the trade mark BASANT denotes and connotes the goods of the plaintiffs and of none else. The public and trade persons associate the trade mark BASANT exclusively with the goods of the plaintiffs. The TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 9 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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plaintiffs have made efforts to popularize their goods under the trade mark BASANT. People have come to believe that any product bearing the trade mark BASANT would be of excellent quality and material.
Thus, plaintiffs have spent considerable amount of money to protect their rights in the trade mark/label BASANT. 2.15 Plaintiffs came to know about the use of trade mark NEW BASANT by one S. Gurdeep Singh trading as M/s NEW BASANT ICE CREAM. The impugned trade mark is identical/deceptively similar to the trade mark BASANT of plaintiffs. 2.16 Plaintiffs allege that defendant S. Gurdeep Singh trading as New Basant Ice Cream having office at Kucha No.6, Field Ganj, Jail Road, Ludhiana, Punjab. Defendant has a shop at Opposite Gurudwara, Fatehpuri, Delhi. S. Gurdeep Singh adopted an identical trade mark and also an identical trade name with the word NEW BASANT.
2.17 Defendant has no locus standi to use the trade mark/trade name BASANT with prefix or suffix or seek registration of the trade mark BASANT. The addition of the word NEW by defendant was/is for mischievous purpose only.
2.18 As per plaintiffs, defendant S. Gurdeep Singh was an employee of S. Lal Singh, who later joined him for sharing projects of business in the firm M/s Basant Ice Cream. Later, S. Gurdeep Singh left S. Lal Singh and started a business. Earlier, S. Gurdeep Singh filed an Opposition against the Application No. 453561 in class 30 of the plaintiffs and the Opposition was numbered as DEL 6376. The TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 10 of 51 Digitally Raj signed by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:49:44 +0530 said Opposition was disallowed by learned Deputy Registrar of Trade Marks by passing an order dated 27.11.1992 and application no. 453561B in class 30 was allowed and directed to proceed for registration.
2.19 Thereafter, defendant preferred an appeal before the Hon'ble Delhi High Court against the aforesaid order passed by the learned Deputy Registrar of the Trade Marks. In the meanwhile, plaintiff no.1 firm then acting through its sole proprietor S. Rajinder Singh i.e. the plaintiff no.2 filed a civil suit against the defendant.
During the pendency of the said suit, plaintiff no.2 firm acting through S. Rajinder Singh and S. Gurdeep Singh, proprietor of defendant firm amicably settled the matter.
2.20 Plaintiff no.1 and defendant had settled the matter and the same was recorded in order dated 22.02.1994 passed by the learned Additional District Judge, Ludhiana. It was agreed between the parties that defendant shall withdraw the appeal filed before the Hon'ble High Court of Delhi against order dated 27.11.1992 passed by the Deputy Registrar, Trade Marks, New Delhi in Opposition no. Del-6376. He shall also withdraw application no.4696528 in class 30 filed before the Trade Marks Registry and shall have no objection, if the Opposition filed by S. Rajinder Singh before the said Registry against his said application is allowed. He further agreed that the entry relating to copy right 'BASANT' under no. A-21394/78 before the Hon'ble Copy Right Board is expunged.
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Raj Kumar
Tripathi
Kumar Date:
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2.21 Plaintiffs aver that the aforesaid litigations resulted in the
plaintiff no.2 allowing the defendant S. Gurdeep Singh to use the trade mark NEW BASANT only for its restaurant at Kucha No.6, Field Ganj, Jail Road, Ludhiana (Punjab). The said S. Gurdeep Singh had no right to seek registrations of the trade mark NEW BASANT or open any other unit under the trade mark NEW BASANT. However, S. Gurdeep Singh violated the said permission. 2.22 Plaintiffs aver that defendant has no reputation or goodwill with regards to alleged trade mark. He has never advertised the alleged trade mark. Defendant was bound to use the word NEW BASANT only on ice cream and that to the counter at Field Ganj only. Any extension of business by him would be contrary to spirit of the compromise. It is alleged that defendant is violating the statutory and common law rights of the plaintiffs in respect of trade mark BASANT.
2.23 Defendant claims to be the registered proprietor of the trade mark NEW BASANT Ice Cream under no.831403 in Class 30. Defendant has obtained the registration by fraud and concealment of material facts. He never had any right in the trade mark and was never entitled to registration. The status report of alleged registration under No.831403 in Class 30 of defendant shows the following condition:-
"Registration of the trade mark shall give no right to the exclusive use of work 'New" and 'Ice cream'.
2.24 Defendant agreed to the aforesaid condition. Once a disclaimer is imposed on the word "NEW", trade mark BASANT TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 12 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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remains and the same is contrary to the established principles of law and contrary to the order dated 22.02.1999 passed by learned Additional District Judge, Ludhiana. Hence, the defendant has violated the agreement and is not entitled to the use of the trade mark NEW BASANT in any manner. Defendant ought not to have imposed of the disclaimer on the word "NEW". The defendant ought to have told the learned Registrar of Trade Marks about the agreement that he has to use the trade mark BASANT in conjunction with the word "NEW". Non-disclosure has violated the agreement and has vitiated of the business of the defendant in entirety. 2.25 Plaintiff no.1 filed a Rectification Petition against the alleged registration of the trade mark NEW BASANT Ice cream under No.831403 in class 30 of the defendant. The said rectification is pending adjudication before the Hon'ble Intellectual Property Appellate Board.
2.26 Plaintiffs allege that defendant has deliberately kept the word NEW before BASANT. He has no locus standi in respect of the word BASANT. Addition of word NEW makes no difference and imposition of disclaimer has made the case as Basant vs. Basant. Defendant was aware of plaintiffs' proprietorship over the trade mark BASANT as well as first adoption and the condition imposed on defendant to add "NEW" to the word "BASANT".
2.27 Defendant's selection and use of the trade mark and trade name NEW BASANT is not honest from its very inception. Plaintiffs allege that defendant's use of the expression NEW BASANT is an TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 13 of 51 Digitally Raj signed by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:50:31 +0530 infringement and passing off their registered trade mark 'BASANT' and violation of common law rights vested in them. 2.28 Plaintiffs allege that defendant is involved in clandestine sales of its goods. Plaintiffs are the registered proprietor of trade mark BASANT for various goods such as Ice Cream, Ice Cream Powder, Kulfi, Ice and providing services such as Ice Cream Parlour of sweets, food, drink, temporary accommodation and restaurants etc. Defendant has wrongly and illegally sought to misappropriate the benefits of the good name, quality and wide advertisement of the plaintiffs. These illegal activities by the defendant have caused immense loss to the plaintiffs' image, reputation and goodwill. The clandestine activities of the defendant have created confusion and deception in the market and trade. Defendant is seeking to divest plaintiffs' business. He also copied plaintiffs' labels and thus, violate the copyright of plaintiffs. 2.29 On the aforesaid averments, plaintiffs have filed the present suit for permanent injunction restraining infringement of trade mark, passing off, infringement of copyright, damages and delivery up etc. against the defendant.
Defence of defendant 3.1 Pursuant to summons issued to defendant, he made appearance before the court through his advocate on 23.08.2018. The defendant was directed to file written statement to the suit and reply to application under Order XXXIX Rules 1 & 2 r/w section 151 of The Code of Civil Procedure, 1908 (in short 'CPC'). The defendant TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 14 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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instead of filing written statement filed an application under Order VII Rule 10 r/w Rule 11 CPC.
3.2 As defendant did not file written statement to the suit within stipulated time, his right to file written statement was statutorily forfeited.
4.1 On 02.11.2018, counsel for defendant informed that defendant has expired. Pursuant thereto, plaintiffs filed an application under Order XXII Rule 4 CPC for seeking impleadment of legal heirs of deceased defendant. The said application of plaintiffs was allowed on 19.12.2023. Mr. Parvinder Pal Singh was directed to be substituted as legal heir of deceased defendant.
4.2 On 28.07.2023, plaintiffs filed an application under Order VI Rule 17 r/w Order I Rule 10 CPC. This application of plaintiffs was allowed and vide order dated 13.09.2023, amended memo of parties along with amended plaint was directed to be taken on record. 4.3 Defendant also filed an application u/s 124 of The Trade Marks Act, 1999 for stay of proceedings in the matter. The said application of defendant was dismissed on 02.05.2024 and the matter was posted for plaintiffs' evidence.
Evidence of parties 5.1 In support of their case, plaintiff no.3 S. Gurdeep Singh Kharbanda examined himself as PW1. He filed his evidence by way of affidavit, Ex.PW1/A. He relied upon and tendered the following documents:-
TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 15 of 51Digitally Raj signed by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:50:52 +0530 S.No. Details of Documents Exhibit Mark
1. Copy of Food Safety and Standard registration Ex.PW1/1 certificate of plaintiff no.3 firm
2. Copy of GST registration certificate of plaintiff Ex.PW1/2 no.3 firm M/s Pal's
3. Coloured photocopy of his shop premises filed Ex.PW1/3 vide index dated 01.11.2018 of list of documents of plaintiff.
4. Copy of invoices issued by plaintiff no.1 firm to Ex.PW1/4 original plaintiff no.3 firm M/s Pal Refreshment Corner
5. Copy of Dealership Agreement dated 20.07.2022 Mark-X executed between plaintiff no.1 and 3
6. Copy of death certificate of original plaintiff no.3 Mark-Y Late Sardar Jaspal Singh
7. Certificate u/s 63 of The Bhartiya Sakshya Ex.PW1/5 Adhiniyam, 2023 of PW1 in support of document Ex.PW1/1 and Ex.PW1/2 5.2 Plaintiff no.1 S. Charanjit Singh, the proprietor of plaintiff no.1 firm M/s Basant Ice Cream has examined himself as PW2. He filed his evidence by way of affidavit, Ex.PW2/A. In his affidavit of evidence, PW2 has deposed about the same facts as mentioned in the plaint. He relied upon the following documents:-
S.No. Details of documents Exhibit Mark
1. Copy of invoices of sale of goods of plaintiff Ex.PW2/1 no.1 to the firm M/s Pal Refreshment Corner of deceased S. Jaspal Singh
2. Copy of invoices from pages 20 to 24 Mark-F
3. Copy of dealership agreement dated Mark-X TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 16 of 51 Digitally signed Raj by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:51:00 +0530 20.07.2022 executed between the plaintiff no.1 Sardar Charanjit Singh and plaintiff no.3 namely Sardar Gurdeep Singh Kharbanda
4. Copy of Dissolution Deed ated 01.12.2007 Ex.PW2/3
5. Copy of Registration Certificate of trade mark Mark-E 'Basant' bearing Trade Mark Registration No.453561 in Class 30 of plaintiff no.1
6. Original Legal Proceedings Certificate of Trade Ex.PW2/5 Mark Registration No.2129221 in Class 43 of plaintiff no.1.
7. Copy of status of trade mark registration Ex.PW2/6 no.453561 in Class 30 as down loaded from the website of The Trade Mark Registry.
8. Copy of status of Trade Mark Registration Ex.PW2/7 No.804321 in Class 30 as down loaded from the website of the Trade Mark Registry
9. Original extract from Register of copyrights Ex.PW2/8 with respect to copyright registration number A-74870/2005 of plaintiff no.1
10. The original extract from the Register of Ex.PW2/9 Copyrights with respect to copyright registration number A-74871/2005 of plaintiff no.1
11. Original invoices of plaintiff no.1 under the Ex.PW2/10 trade mark BASANT. (colly.)
12. Original advertisements of plaintiff no.1 under Ex.PW2/11 the trade mark Basant. (colly.)
13. Copy of the advertisement at page 86. Mark-G
14. Original labels/packagings of products under Ex.PW2/12 the trade mark Basant (Colly.)
15. Details of document Ex.PW2/13
16. Label/packaging of products of defendant Ex.PW2/13 TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 17 of 51 Digitally Raj signed by Raj Kumar Tripathi Kumar Date:
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17. Certified copy of order dated 27.11.1992 Ex.PW2/14 passed by The Registrar of Trade Marks, Delhi in Opposition No.DEL6376 arising out of Application No.453561 in Class 30.
18. Copy of order dated 22.02.1994 passed by Mark-H learned Additional District Judge, Ludhiana in Civil Suit No.7/94
19. Copy of decree dated 22.02.1994 passed by Mark-I learned Additional District Judge, Ludhiana in Civil Suit No.7/94
20. Original Legal Proceedings Certificates of the Ex.PW2/17 application no.469652 in Class 30 filed by (colly.) defendant before The Trade Mark Registry filed along with the application under Order XI Rule 1 (5) CPC dated 23.10.2024
21. Original price list of plaintiff no.1 Ex.PW2/18
22. Coloured photocopy of price list of plaintiff Mark-J no.2
23. Original Legal Proceedings Certificate of Ex.PW2/19 application no.2129221 in Class 43 of plaintiff no.1 issued by Trade Mark Registry filed along with application under Order XI Rule 1 (5) CPC dated 23.10.2024
24. Original Legal Proceedings Certificate of Ex.PW2/20 application no.804321 in Class 30 of the plaintiff no.2 issued by the Trade Mark Registry filed along with the application under Order XIRule 1 (5) CPC dated 23.10.2024
25. Certificate u/s 63 of The Bhartiya Sakshya Ex.PW2/21 Adhiniyam, 2023
26. Original invoices of sale of goods from the Ex.PW2/22 plaintiff no.1 to the firm M/s Pal Refreshment Corner of deceased Sardar Jaspal Singh brought today TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 18 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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27. Original Legal Proceedings Certificate of the Ex.PW2/23
application no.453561 in Class 30 filed by (Colly.)
plaintiff no.2 in class 30 issued by The Trade Mark Registry filed along with application under Order XI Rule 1 (5) CPC dated 23.10.2024 5.3 Plaintiff no.2 S. Rajinder Singh, proprietor of M/s Basant Dairy has examined himself as PW3. He filed his evidence by way of affidavit, Ex.PW3/A, wherein, he has supported the case of the plaintiffs and reiterated the same facts as mentioned in the plaint. He has relied upon the documents already exhibited as Ex.PW2/3, Ex.PW2/7, Ex.PW2/14, Mark-H, Mark-I and Ex.PW2/17 as tendered by PW2 S.Charanjit Singh in his evidence. He also relied upon the copy of invoices Ex.PW3/1.
5.4 Defendant confronted the following documents during the cross-examination of plaintiffs' witnesses:-
(i) Photographs, Ex.PW1/D1. (ii) Menu of PW1 S. Gurdeep Singh Kharbanda's shop and estimate slip, Ex.PW1/D2 (colly.)
(iii) Scanned copy of photograph, Ex.PW1/D3.
(iv) Documents regarding trade mark Basant and New Basant under the firm name 'Basant Ice Cream', Ex.PW2/DX1.
(iv) Partnership firm, Ex.PW3/DX2.
(v) Assessment order of the firm name 'New Basant Ice cream' Ex.PW2/DX3.
(vi) Copy of Ikrarnama, Ex.PW2/DX5.
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Raj signed by Raj
Kumar Tripathi
Kumar Date:
2025.02.01
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(vii) Document issued by MMSME of Udyam Registration Certificate, Mark-A.
(ix) Receipt issued by Mahtta Trade mark Company on 24.06.1989 to Late S. Gurdeep Singh, Ex.PW2/DX6.
(x) Documents issued by ESIC, Government of India, Ex.PW2/DX7.
Findings and Observations 6.1 I have heard and considered the rival submissions of both the parties and perused the material on record. 6.2 The law relating to infringement of a registered trade mark has been envisaged under section 29 of The Trade Marks Act, 1999 and the exclusive rights granted by virtue of registration are incorporated u/s 28 of The Act. For ease of convenience, section 29 and 28 of The Trade Marks Act, 1999 are reproduced herein below:-
"29. Infringement of registered trade marks.-(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods of services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 20 of 51 Digitally signed Raj by Raj Kumar Tripathi Kumar Date:
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(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he-
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising (7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 21 of 51
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(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly."
"28. Rights conferred by registration.-(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. (2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor."
6.3 A bare reading of the aforesaid provisions show that a registered trade mark is infringed by a person, who not being a registered proprietor uses in the course of trade a mark which is identical or deceptively similar in relation to the goods or services which are identical or similar to that in respect of which the trade mark is registered without the permission of the trade mark owner. On registration of a trade mark, the registered proprietor gets the TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 22 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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exclusive right u/s 28 of the Act to use of such trade mark in relation to the goods in respect of which, the trade mark is registered and to obtain relief in respect of any infringement of such trade mark. It is well settled that the action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. Reliance is placed upon Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1999) 19 PTC 81 (Del) and National Bell Co. v. Metal Goods Mfg. Co. AIR 1971 SC 898.
6.4 In the case of KRBL Ltd. v. Praveen Kumar Buyyani & Others: FAO (Comm) No.24/2024, Hon'ble Division Bench of Delhi High Court in respect of "likelihood of confusion" held as under:-
"21.5 "Likelihood of confusion", by a consumer of average intelligence and imperfect recollection, is all that is needed. "Confusion", again, need not extrapolate, in every case, to the consumer mistaking one mark for the other. It is enough - as Section 29(4) itself clarifies - if the similarity between the marks conveys an impression of "association" between them, to the mind of such a consumer. Again, all that is needed is "initial interest confusion" without placing the marks side by side . In other words, if, on seeing the defendant's mark some time after the first, the consumer of average intelligence and imperfect recollection is likely to pause, even if for the fraction of a minute, and ponder as to whether it was not the same, or at was not associated with, the plaintiff's mark which he had seen earlier, the tort of infringement stands, ipso facto, committed by the defendant. The following passage from Kerly's Law of Trade Marks and Trade Names, 9th Edn, was approvingly cited by the Supreme Court, in Parle Products (P) Ltd v J.P. & Co. (1972) 1 SCC 618.
"Two marks, when placed side by side, may exhibit many TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 23 of 51 Digitally Raj signed by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:51:59 +0530 and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."
(Emphasis supplied) 21.6 Having reproduced the above passage from Kerly, the Supreme Court, in Parle Products, went on to hold:
"9. It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him."
(Emphasis supplied) In view of the express words employed by section 29 (2) of The Trade Marks Act, it is clear that the propensity of the average consumer to accept the defendant's product, if offered to him, owing to the similarity between the plaintiff's and defendant's marks, cited as a definitive test in Parle Products may as much be because she, or he, confuses the defendant's mark for the plaintiffs, as because, owing to the similarity TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 24 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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between the two marks, he believes the existence of an association between them. A fascinating study on the contours of confusion is to be found in Shree Nath Heritage.
6.5 In order to prove the case for infringement of trade mark, plaintiff is required to show that the essential features of the registered trade mark which has been adopted by the defendant has been taken out from the plaintiff's registration. Only the marks are to be compared by the court and in case the registration is granted in favour of plaintiff, he acquires valuable right by reason of the said registration.
6.6 It is well settled that the possibility of likelihood of confusion for the purpose of infringement, has to be assessed from the perspective of a customer of average intelligence and imperfect recollection (Reliance is placed upon Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. (2002) 2 SCC 147 and Cadila Health Care v. Cadila Pharmaceuticals (2001) 5 SCC 73. 6.7 In Reckitt and Colman Ltd. v. Borden Inc. 1990 (1) All ER 873 (HL), the House of Lords postulated the 'trinity' or 'triple identity test' which deems infringement to exist where identical (or deceptively similar) marks are used for more or less identical products having a common market. Similarity of marks, identity/similarity of the goods on which the marks are used and commonality of market, therefore, predicate a legitimate inference of infringement. 6.8 To prove their case, plaintiffs have examined themselves as PW1 to PW3 respectively. PW2 S. Charanjit Singh, the sole TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 25 of 51 Digitally Raj signed by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:52:37 +0530 proprietor of plaintiff no.1 firm M/s Basant Ice Cream, in his affidavit of evidence, Ex.PW2/A has supported and corroborated the facts as pleaded in the plaint. In order to prove the trade mark registrations in favour of plaintiffs no.1 and 2, PW2 tendered copy of Registration Certificate of the trade mark BASANT bearing trade mark registration no.453561 in Class-30 (Mark-E), Legal Proceedings Certificate of trade mark registration no.2129221 in Class-43 (Ex.PW2/5), status of trade mark registration number 453561 in Class-30 (Ex.PW2/6), copy of status of certificate no.804321 in Class-30 of plaintiff no.2 (Ex.PW2/7) and extracts of register of copyrights bearing no.A-74870/2005 and A-74871/2005 (Ex.PW2/8 and Ex.PW2/9 respectively). The trade mark BASANT registered in the name of plaintiffs no.1 and 2 are put in a tabulated form as under:-
S. Registration Trade Goods Exhibit Mark No. No./Class And Mark Journal No. User Since A. 453561 Basant Ice Cream, Ice Cream Mark-E In Class 30 User Since Powder, Kulfi Ice Journal No. 01.01.1960 1373 B. 2129221 Basant Ice Cream Parlours, Ex.PW2/5 In Class 43 (Label) Providing Of Sweets, Journal No. : User Since Ice Creams And Kulfi 1544-0 01.01.1952 Only (Except Motels Banquet Halls, Marriage Palace, Entertainment Park, Providing Of Food, Drinks And Temporary Accommodation, Restaurants Including Self Service And Fast Food Restaurants), Cafe Shops, Fast Food TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 26 of 51 Digitally Raj signed by Raj Kumar Tripathi Kumar Date:
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C. 804321 Basant Ice Cream, Ice Cream Ex.PW2/7
In Class 30 (Device) Powder, Kulfi, Jelly
Journal No. User Since Puddings, Ready To
1329-1 01.01.1990 Serve Cereal Dishes,
Cakes, Pasteries,
Pizzas, Food Mixtures
Containing Cereals And
Dried Fruits.
6.9 The trade mark BASANT registered in favour of
plaintiffs no.1 and 2 are valid and subsisting. 6.10 The Hon'ble superior courts have propounded the doctrine of prominent and essential feature of the trade mark for the purposes of adjudication of the disputes relating to infringement of trade mark. While deciding the question of infringement, the court has to see the prominent or the dominant feature of trade mark. 6.11 PW2 in his affidavit of evidence has deposed that the plaintiff no.1's firm was initially established in 1960 by Late S. Lal Singh, who was his grandfather. His grandfather preferred an application for registration of trade mark BASANT before the Trade Marks Registry on 05.05.1986 and the said application was numbered as 453561 in Class 30. His grandfather died on 30.05.1989.
Thereafter, plaintiff no.2 took over the firm M/s Basant Ice Cream (Regd.) as its sole proprietor. The trade mark BASANT under no.453561 in Class 30 was granted registration in the name of plaintiff no.2 S. Rajinder Singh. Later in 2003, plaintiff no.1 firm became a partnership firm of two sons of S.Rajinder Singh namely S. TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 27 of 51 Digitally Raj signed by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:52:54 +0530 Kanwalpreet Singh and S. Charanjit Singh. Thereafter, there was a Dissolution Deed dated 01.12.2007 and the firm M/s Basant Ice Cream came to the share of S. Charanjit singh (PW2) as a sole proprietorship firm. He has proved the Dissolution Deed dated 01.12.2007 as Ex.PW2/3. The trade mark registered in the name of plaintiff no.1 is given in para no.9 of the plaint and in the name of plaintiff no.2 in para no.10 of the plaint. 6.12 Plaintiff no.1 is also holding copyright registrations, details of which are given in para no.12 of the plaint. The extracts of the register of copyrights have been proved as Ex.PW2/8 and Ex.PW2/9.
6.13 PW2 further deposed that plaintiffs have been continuously and uninterruptedly using trade mark/label BASANT since last 64 years. He tendered the copies of invoices showing sale figures of plaintiff no.1 firm as Ex.PW2/1 and Mark-F. He further deposed that plaintiffs have extensively advertised the trade mark/label BASANT for food items, ice cream and services of restaurants and banquet halls. He proved the original advertisements of plaintiff no.1 as Ex.PW2/11 (colly.). He also proved original invoices of plaintiff no.1 under the trade mark BASANT as Ex.PW2/10 (colly.).
6.14 As per PW2, Late Sh. Gurdeep Singh adopted an identical trade mark 'NEW BASANT' and also an identical trade name 'New Basant Ice Cream' with the word 'NEW BASANT'. He stated that the trade mark 'NEW BASANT" is identical/deceptively TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 28 of 51 Digitally signed Raj by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:53:06 +0530 similar to the trade mark 'BASANT' of plaintiffs no.1 and 2. He proved the original labels/packagings of products under the trade mark 'BASANT' as Ex.PW2/13.
6.15 The aforesaid deposition of PW2 has gone uncontroverted and unchallenged. Nothing has come in the cross-
examination of PW2 to doubt his veracity. His testimony could not be assailed despite lengthy cross-examination conducted by counsel for defendant. The documents shown to PW2 during his cross- examination by counsel for defendant have not been admitted by him. Moreover, in the absence of written statement of defendant being on record, the defendant's documents shown to the witness during his cross-examination in the absence of his admission, cannot be read in evidence. In his cross-examination, PW2 has reasserted that there is phonetic similarity in the pronouncement of BASANT and NEW BASANT. He denied the suggestion that there is no phonetic similarity between plaintiff's trade mark and defendant's trade mark. He further denied the suggestion that the trade dress and packaging of plaintiffs' trade mark and defendant's trade mark are different. He stated that there is no difference in the pictorial figure of trade mark 'BASANT' and 'NEW BASANT'. Thus, defendant has failed to disprove the documents relied upon by PW1 and create dent in his testimony.
6.16 PW3 S. Rajinder Singh, the proprietor of plaintiff no.2 firm M/s Basant Dairy, has deposed on the lines of averments made in the plaint. He has corroborated and supported the version of PW2 in TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 29 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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his evidence. He has relied upon the same documents i.e. Ex.PW2/3, Ex.PW2/7, Ex.PW2/14, Ex.PW2/17, Mark-H and I as relied upon by PW2. In his cross-examination, PW3 deposed that he had been running the proprietorship firm M/s Basant Ice Cream after the death of Late S. Lal Singh. He further deposed that after dissolution of the partnership firm, S.Charanjit Singh (PW2) is the sole proprietor of M/s Basant Ice Cream. He stated that he has closed Basant Resort in 2020 and Basant Food Plaza is running. All the suggestions put to PW3 have been denied by him. PW3 remained firm and consistent throughout his deposition. Nothing has come in his cross-examination to doubt his veracity. The defendant, in the course of cross- examination of PW3 confronted him with some documents which have been denied by the witness. Moreover, in terms of order dated 02.05.2024 and as the written statement of defendant is not on record, the same cannot be read in evidence.
6.17 From the deposition of PW2 and PW3 and the documents relied upon by them, it stands proved on record that plaintiff no.1 is registered proprietor of the trade mark BASANT since 1960 registered in Class 30 vide application no.453561 in respect of the goods i.e. ice cream, ice cream powder and kulfi ice. He is also registered proprietor of trade mark BASANT (Label) in Class 43 vide application no.2129221. Plaintiff no.2 is registered proprietor of BASANT (Device) in Class 30 vide application no.804321. 6.18 As per plaintiffs, they have been continuously and uninterruptedly using the trade mark BASANT since last 64 years and TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 30 of 51 Digitally Raj signed by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:53:52 +0530 by reason of exclusive use for such a long and continuous period, a valuable and exclusive goodwill and reputation has accrued to the trade mark/label BASANT. PW1 has proved the invoices in respect of the sale figures of the firm M/s Basant Ice Cream as Ex.PW2/1. He has also proved the original invoices of plaintiff no.1 under the trade mark BASANT as Ex.PW2/10 (colly.) and the original advertisement of plaintiff no.1 under the trade mark BASANT as Ex.PW2/11 (colly.) 6.19 PW2 and PW3, both have deposed that the defendant Late S. Gurdeep Singh adopted an identical trade mark 'NEW BASANT' and also an identical trade name New Basant Ice Cream with the word 'NEW BASANT'. They stated that the trade mark 'NEW BASANT' is identical/deceptively similar to the trade mark 'BASANT' of plaintiffs no.1 and 2. The label/packagings of the products of plaintiff no.1 and of defendant have been proved as Ex.PW2/12 (colly.).
6.20 As per PW2 and PW3 Late S. Gurdeep Singh and now his legal heirs, has no right to use the trade mark 'BASANT' with prefix or suffix or to seek registration of the trade mark 'BASANT'.
The addition of the word 'New' by defendant is for mischievous purpose only. They claim that through their predecessors, they are the first and prior adopters of the trade mark 'BASANT' for the goods i.e. ice cream, ice cream powder and kulfi ice etc. in Class 30. 6.21 Plaintiffs, on the basis of evidence and the documents proved on record, have been able to show that they are the prior user. The word BASANT is being used by them for last more than 64 years.
TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 31 of 51
Digitally
Raj signed by Raj
Kumar Tripathi
Kumar Date:
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They are the registered proprietor of the trade mark BASANT. Defendant is reported to be engaged in the same business as that of the plaintiffs. He is using the trade mark 'NEW BASANT' for his goods. He has intentionally and dishonestly added the word 'NEW' as prefix to the registered trade mark of plaintiff i.e. BASANT. 6.22 In Kaviraj Pandit Durga Dutt Sharma's case (supra), the identification of essential features of the trade marks has been discussed as under:-
"In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, 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..........
When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no other further questions arise; for then the infringement is made out......."
6.23 In Allied Blenders & Distillers Pvt. Ltd. vs. Shree Nath Heritage Liquor Pvt. Ltd. (2014) 211 DLT 346, it was held that the TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 32 of 51 Digitally Raj signed by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:54:08 +0530 test for infringement of a label/word mark is the test of prominent word of the mark. Further, in Ramdev Food Products (P) Ltd. vs. Arvindbhai Rambhai Patel (2006) 8 SCC 726, it was held that adoption by the defendant of a prominent word in the label/device mark of plaintiff amount to infringement. The label/device marks may be of different kinds those with words only as prominent part thereof with a not so prominent device.
6.24 Applying the aforesaid principles to the facts of the present case, this court is of the view that the mark 'NEW BASANT' used by defendant is deceptively similar to the registered trade mark of plaintiffs i.e. BASANT. The mark 'NEW BASANT' used by defendant clearly infringes the mark 'BASANT'. Both are used for the same goods. The customer base of both the parties is the same.
Defendant has mischievously prefixed 'NEW' to the prominent mark of plaintiffs trade mark 'BASANT'. The innocent public is likely to be deceived by the mark used by defendant to be that of plaintiffs. Plaintiffs have spent huge amount to build their goodwill and reputation in promotion of their products. By use of the mark 'NEW', defendant is trying to encash upon the goodwill and reputation of plaintiffs. Thus, the triple identity test as envisaged in Reckitt & Colman Ltd. (supra) are satisfied in this case. 6.25 In the case of Laxmikant V. Patel v. Chetanbhai Shah (2002) 3 SCC 65, Hon'ble Apex Court observed that "where there is TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 33 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently. 6.26 Learned counsel for defendant submitted that plaintiffs have not produced a single document to indicate that the alleged trade mark infringement has taken place within the territorial limits of this court. He further submitted that defendant neither sold goods nor advertised or promoted his business under the impugned mark within the jurisdiction of this court. Therefore, this court has no territorial jurisdiction to entertain and decide the dispute between the parties. In support of his submissions, he relied upon Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Choubey & Others 2016 (65) PTC 469 (Del); RSPL Ltd. v. Mukesh Sharma & Another CS (OS) 124/2015 reported as 2016 (66) PTC 225 (Del); Impresario Entertainment and Hospitality Pvt. Ltd. v. S&D Hospitality 2023 (95) PTC 267 (Del) and Hasmukhbhai Bhagwanbhai Patel v. Husenali Anwarali 2023 (96) PTC 241 (Guj).
6.27 Per contra, learned counsel for plaintiffs submitted that S. Gurdeep Singh Kharbanda impleaded as plaintiff no.3 in the present suit is the dealer/licensee of plaintiff no.1 in Delhi within the jurisdiction of this court. At the time of institution of the suit, plaintiff no.3 S.Jaspal Singh was trading as M/s Pal Refreshment Centre, Shop No.20, Jangpura Extension Market, Opposite Eros Theater, New Delhi-14, who expired on 21.03.2022 during the pendency of the suit. Thereafter, plaintiff no.1 entered into a fresh Dealership Agreement dated 20.07.2022 (Mark-X) with the brother of Late S. Jaspal Singh TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 34 of 51 Digitally signed Raj by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:54:28 +0530 namely S.Gurdeep Singh Kharbanda trading as M/s Pal's at the same premises, who was substituted in place of Late S.Jaspal Singh as new plaintiff no.3 vide order dated 13.09.2023. Thus, this court has jurisdiction to adjudicate the present suit by virtue of section 134 (2) of The Trade Marks Act, 1999. In support of his submissions, he relied upon judgments Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia 212 (2014) DLT311 and Maan Pharmaceuticals Ltd. v. Mindwave Healthcare Pvt. Ltd. 2022 SCC OnLine Del 2866. 6.28 For ease of convenience, section 134 of The Trade Marks Act, 1999 is reproduced hereunder:-
"134. Suit for infringement, etc., to be instituted before District Court.-(1) No suit-
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit. (2) For the purpose of clauses (a) and (b) of sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.
Explanation. For the purposes of sub-section (2), "person" includes the registered proprietor and the registered user."
6.29 Reading of aforesaid provision shows that the suit for infringement etc. can be filed in the District Court within local limits TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 35 of 51 Digitally Raj signed by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:54:36 +0530 of whose jurisdiction, at the time of institution of the suit or proceeding, the person instituting the suit or proceeding actually and voluntarily resides or carries on business or personally works for gain. As per explanation, the person includes the registered proprietor and the registered user. It is well settled that Section 134 of the Act is in the nature of expanding the scope of section 20 of C.P.C.; {Reference may be have M.K. Sowbhagyam v. Wipro Ltd., 2010 (42) PTC 410 (Mad)}.
6.30 In Hashmukhbhai Bhagwanbhai Patel (supra), it was observed as under:-
"The plain reading of the provisions of law and taking note of their inter-play, what appears that section 134 of the Act and section 62 of the Copyright Act are almost pari materia. The Legislature has used term "notwithstanding" and including in section 134 of the Act and section 62 of the Copyright Act. Thus, it could be gathered as well as in that, the provisions providing territorial jurisdiction for institution of the suit are in addition to what is provided in section 20 of the CPC. Section 20 of the CPC indicates that suit can be instituted at the place where the defendant resides or carries out business for personal work for gain and the place where cause of action or any part thereof arose. Section 134 of the Act read with section 62 of the Copyright Act permits the plaintiff to file the suit within the local limits/jurisdiction of the District Court, where the plaintiff resides or carries out business or personally work for gain."
6.31 Further, in the case of Midas Hygiene Industries Pvt. Ltd. (Supra), Hon'ble Court held as under:-
"7. The material aspect to be considered is as if the appellant carries on business within the jurisdiction of the TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 36 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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Court. Before considering the merits of the rival contentions of the parties, it would be worthwhile to notice that although Section 72 is similar to Section 62(2), it differs significantly in that it deals with appellate jurisdiction. Section 62(2) confers a discretion upon the litigant to approach the Court where the cause of action, or a part of it arises, or where he, or it resides, or carries on business; however, that is in respect of an original claim, i.e. in the form of a suit. Here, the appeal preferred to the High Court against an order of the Copyright Board enjoins that the appellant should either be residing, or carrying on business within the jurisdiction of a Court before whom it appeals.
8. In the opinion of this Court, there is sufficient material on record, apart from the affidavits of the appellant's director and the partners of M/s S.S. Agencies to establish that it is indeed carrying on business within the jurisdiction of the Court. Even if one were to ignore the affidavits as having, been filed at this stage before the Court, there is no getting away from the fact that the suit filed in 1999 not only stated that M/s S.S. Agencies was an exclusive agent of the appellant, but it was also impleaded as a second plaintiff Furthermore, the material placed on record in that suit filed about 14 years ago (thus having the Odium of a circumstantial evidence) shows that_advertisements were issued from time to time by M/s S.S. Agencies seeking to market the appellant's products."
6.32 PW2 S. Charanjit Singh in para no.3 of his affidavit of evidence, Ex.PW2/A has deposed that plaintiff no.3 S. Jaspal Singh trading as Pal Refreshment Corner, Shop No.20, Jangpura Extension Market, Opposite Eros Theater, New Delhi-14 was an exclusive dealer/licensee of plaintiff no.1 for the state of Delhi for selling ice creams under the trade mark BASANT. He has proved the copy of invoices of sale of goods to the firm M/s Pal Refreshment Corner of deceased S. Jaspal Singh as Ex.PW2/1.
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6.33 He further deposed that S. Jaspal Singh expired during
pendency of the suit on 21.03.2022 and subsequent to his death, he appointed another dealer/licensee S. Gurdeep Singh Kharbanda (PW1) trading under the firm name M/s Pal's for selling the goods under the trade mark 'BASANT' for Delhi. He executed a Dealership Agreement dated 20.07.2022 with S. Gurdeep Singh Kharbanda and made him his dealer/licensee for Delhi.
6.34 He further deposed that S. Gurdeep Singh Kharbanda is younger brother of deceased S. Jaspal Singh and is running his shop under the firm name M/s Pal's from the same premises as that of deceased Jaspal Singh i.e. Shop No.20, Jangpura Extension Market, Opposite Eros Theater, New Delhi-14.
6.35 PW1 S. Gurdeep Singh Kharbanda has supported the aforesaid version of PW2 in his affidavit of evidence Ex.PW1/A. He has proved the GST Registration Certificate of his firm as Ex.PW1/2, the Food Safety and Standard Certificate of plaintiff no.3 firm as Ex.PW1/1, coloured photocopy of his shop premises as Ex.PW1/3. Copy of invoices issued by plaintiff no.1 firm to original plaintiff no.3 as Ex.PW1/4 and Certificate u/s 63 of The Bhartiya Sakshya Adhiniyam, 2023 as Ex.PW1/5.
6.36 In his cross-examination, PW1 has denied the suggestion that he has no business relation with Basant Ice Cream. He deposed that he has filed documents i.e. Ex.PW1/1 and Ex.PW1/2 in support of the address of his firm M/s Pal's. Thus, the testimony of PW1 could not be assailed on the aspect of plaintiff no.3 not being dealer of TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 38 of 51 Digitally Raj signed by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:55:12 +0530 plaintiff no.1 in Delhi. The ice cream of plaintiff no.1 is available at the aforesaid shop of plaintiff no.3. PW1 has proved the invoices issued by plaintiff no.1 firm to the original plaintiff no.3 firm M/s Pal Refreshment Centre as Ex.PW1/4.
6.37 The defence of defendant in the form of written statement is not on record. Thus, defendant has miserably failed to controvert the version of PW1 as deposed by him in his evidence affidavit, Ex.PW1/A and the facts with respect thereto pleaded in the plaint. In the case of Vidhyadhar v. Manikrao (1999) 3 SCC 573, it was observed that "17. where a party to the suit does not appear in the witness box and states his own case on oath and does not offer himself to be cross-examined by the other side, a presumption would arise that the case set up by him is not correct".
6.38 From the aforesaid deposition of witnesses, it stands proved on record that plaintiff no.1 was/is carrying on business in Delhi through his dealer/licensee i.e. plaintiff no.3 having shop at Shop No.20, Jangpura Extension Market, Opposite Eros Theater, New Delhi-14. Applying the principles laid down in Hasmukhbhai Bhagwanbhai Patel case (supra) and Midas Hygiene Industries Pvt.
Ltd. (supra) to the facts of the present case and as plaintiff no.1 has dealer/licensee i.e. plaintiff no.3 within the jurisdiction of this court, I am of the view that this court has territorial jurisdiction to entertain and decide the dispute between the parties. 6.39 Learned counsel for defendant further submitted that the trade mark BASANT word is inherently generic offering no TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 39 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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distinctiveness to a single source. The Indian legal system wisely withholds trade mark protection for such terms unless they fulfill certain conditions to avoid the establishment of unwarranted monopolies. He argued that Basant is a festival celebrated in South Asia, particularly in Pakistan, India and Bangladesh to mark the arrival of spring and same is characterized by kite flying, wearing bright colours, singing and dancing. Thus, in any case, no monopoly/exclusivity can be claimed by plaintiffs as the mark BASANT is generic in nature and cannot be as distinctive, so as to identify the products sold under it as originating from the plaintiffs' house. He further submitted that there are several persons/entities, who used the word Basant by itself or along with suffix/prefix and have been so used prior to the plaintiffs. In support of his submissions, he relied upon Cadila Healthcare Ltd. v. Gujarat Cooperative Milk Marketing Federation Ltd. & Others 2009 (41) PTC 336 (Del); M/s Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd. Civil Appeal No.2937-2942/2018; Nestle's Products (India) Ltd. v. P. Thankaraja & Another AIR 1978 Madras 336 and S. Sayed Mohideen v. P. Sulochana Bai Civil Appeal No.2758/2015 6.40 Per contra, learned counsel for plaintiffs argued that defendant cannot challenge the registration of the plaintiffs claiming the word as descriptive when defendant himself filed the application for grant of registration in respect of the mark BASANT. In support of submissions, he placed reliance upon Automatic Electric Limited v.
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R.K. Dhawan & Another 1999 PTC (19) 81 (DEL); Proctor & Gamble Manufacturing (Tianjin) Co. Ltd. and Ors. v. Anchor Health & Beauty Care Pvt. Ltd. 2014 (59) PTC 421 (DEL.) and Peps Industries Private Ltd. v. Kurlon Limited FAO (OS) (COMM) 94/2020. 6.41 Plaintiffs no.1 and 2 are admittedly registered proprietor of M/s Basant Ice Cream and M/s Basant Dairy respectively. The registration of the trade mark BASANT gives exclusive right to them to use the said trade mark with relation to goods in respect of which the trade mark is registered u/s 28 of The Trade Marks Act, 1999. The defendant is also reported to have got the trade mark 'NEW BASANT' registered in his name. Thus, defendant himself has sought to claim trade proprietary right and monopoly in NEW BASANT'. In view of the same, it does not lie in the mouth of defendant to say that the word "BASANT" is a generic word. Use of word 'BASANT' by others also cannot be a defence available to defendant, when it is shown that the same is being used by him in violation of the statutory rights of plaintiffs. It is well settled that a party cannot approbate and reprobate at the same time. In Telefonaktiebolaget LM Ericsson v. Intex Technologies (India) Limited: 2015 SCC OnLine Del 8229, it was held by Hon'ble Delhi High Court that "144. it is equally well settled that the party cannot be allowed to approbate or reprobate at the same time, so as to take one position, when the matter is going to his advantage and another when it is operating to his detriment and more so, when there is a same matter either at same label or at the appellate stage."
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6.42 In Peps Industries Pvt. Ltd. (supra) , Hon'ble Delhi High
Court held that the law recognizes that even a descriptive mark can be registered and exclusivity can be claimed, if before the date of application for registration, it has acquired a distinctive character as a result of its use or is a well known trade mark. Thus, even if a mark which is descriptive in nature can acquire distinctiveness by virtue of being in use for a long period of time.
6.43 In the instant case, in the trade mark of both the parties 'BASANT' is a prominent word. The defendant is using the trade mark BASANT with a prefix NEW. Both the parties are engaged in the same business. The general public is likely to be confused by use of mark 'NEW BASANT' to be that of plaintiffs mark BASANT. The geographical location, where the parties are operating their business and using their marks in respect of similar goods are also the same. Thus, in my view, the trade mark being used by defendant is deceptively similar and cause of action for infringement has arisen in favour of plaintiffs.
6.44 The judgment passed in M/s Nandhini Deluxe (supra) relied upon by defendant is not applicable to the facts of the present case as the goods of the parties in that case were different . However, in the present case, the goods of both the parties are identical. As defendant has failed to prove that he is the prior user of the word 'BASANT', he is not entitled for protection u/s 34 of The Trade Marks Act, 1999. The judgment passed in S. Sayed Mohideen (supra) is thus of no help for defendant. The other judgments relied upon by TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 42 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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learned counsel for defendant are also distinguishable and not applicable in the facts and circumstances of the present case. 6.45 Learned counsel for defendant further argued that the defence of defendant was struck off in the case. Thereafter, plaintiffs filed an application to implead legal representatives of plaintiff no.3. On 06.12.2022, the said application was withdrawn by plaintiffs. Plaintiffs filed fresh application to add another plaintiff after demise of proprietor of existing plaintiff no.3. The said application was allowed on 13.09.2023 and plaintiffs were permitted to amend the suit. It is contended that plaintiffs substituted plaintiff no.3 with fresh cause of action, which is generated on 22.07.2022. Thus, the suit qua plaintiff no.3 is barred by law of limitation. 6.46 Per contra, learned counsel for plaintiffs submitted that the limitation of filing of the suit is to be seen from the date of filing of the suit and not from a subsequent date.
6.47 In para no.46 of the plaint, it is stated that the cause of action first arose in the second week of April, 2018 when plaintiffs received information about the availability of the alleged goods of the defendant bearing the alleged trade mark in various markets in Delhi. The plaintiff received a price list of the defendant's goods, where the trade mark BASANT is written in bold letters and words 'New' and 'Ice Cream' are so small that they are not easily discernible. The plaintiffs then made enquiry in the market and recently found about alleged goods such as ice cream and kulfi etc. They have recently seen the goods of defendant bearing the alleged trade mark. Defendant TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 43 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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is continuing to use the trade mark 'NEW BASANT' on goods such as ice cream and kulfi etc. in various markets of Delhi. He is also using the words 'NEW BASANT' as an essential and important ingredient of his trade name. Thus, cause of action has again accrued in favour of plaintiffs in April, 2018 when they have been apprised of the details of defendant and his alleged goods. The cause of action is a continuous one and continues to subsist till such time as the defendant is restrained by an order of the court.
6.48 The aforesaid averments of the plaint have not been controverted and denied by defendant by filing written statement. Thus, there is no reason to disbelieve the version of plaintiffs as stated in the plaint. In view of averments made in the plaint, this court is satisfied that the suit filed by plaintiffs is well within limitation. Moreover, the application for impleadment of plaintiff no.3 was allowed on 13.09.2023 after hearing the counsel for defendant. The said order has not been challenged by defendant before Hon'ble superior courts and thus, it has attained finality. The defendant at this stage cannot claim that the application of plaintiffs was wrongly allowed and there has been denial of natural justice. 6.49 It is well settled that infringement/passing off is a remedy in tort. Every day a trade mark is violated, a fresh cause of action arises in favour of plaintiff. In this regard, the following observations of Hon'ble Court made in Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Company & Others 1997 (17) PTC 98 (SC) is relevant:-
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"12. It is now well settled that an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in historical past earlier suit was disposed of as technically not maintainable in absence of proper reliefs, for all times to come in future defendant of such a suit should be armed with a licence to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts. We posed a question to the learned Counsel for the defendants as to whether after the disposal of the earlier suit if the defendants had suspended their business activities and after a few years had resumed the same and had started selling their goods under the trade mark 'DACKBACK' by passing them off, the plaintiff could have been prohibited and prevented by the bar of Order 2 Rule 2 Sub-rule (3) from filing a fresh suit in future when such future infringement or passing off took place. He rightly and fairly stated that such a suit would not be barred."
6.50 Learned counsel for defendant further argued that the suit filed by plaintiffs is barred by the principle of res judicata. He submitted that plaintiffs had earlier filed one suit against Late S. Gurdeep Singh at Ludhiana. Thereafter, they filed execution petition (Ex.PW3/DX5) as well as the contempt petition (Ex.PW3/DX6) which were also dismissed. Thus, the subsequent suits filed by plaintiffs are barred by the principle of res judicata.TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 45 of 51
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6.51 On the other hand, learned counsel for plaintiffs
submitted that defendant violated the undertaking given before the court of learned Additional Judge, Ludhiana Court and did not abide by the terms of Compromise/Settlement arrived between the parties. He further submitted that the defendant was permitted to use the word 'NEW BASANT' only for his restaurant at Kucha No.6, Field Ganj, Jail Road, Ludhiana, Punjab, in terms of settlement but he instead of using the same for the aforesaid place, also started using the same for other locations in different parts of India and thus, has violated the permission/concession granted by plaintiffs. He argued that in the given facts and circumstances of the case, the suit of plaintiffs cannot be said to be barred by res judicata.
6.52 Having considered the rival submissions of both the parties and on perusal of material on record, this court is of the view that the suit filed by plaintiffs is not barred by the principle of res judicata. For application of doctrine of Res judicata, the following conditions must be satisfied:-
(1) The matter must be directly and substantially in issue in the two suits.
(2) The prior suit must have been between the same parties or persons claiming under them (3) Such parties must have litigated under the same title in the former suit.
(4) The court which determined the earlier suit must be competent to try the later suit (subject to the provisions contained in Explanation VIII, added by 1976 Amendment).
(5) The question directly and substantially in issue in the subsequent suit should have been heard and finally decided in the earlier suit.TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 46 of 51
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2025.02.01 Tripathi 15:56:47 +0530 6.53 In the case in hand, defendant has chosen not to contest the suit by way of filing written statement. The right given to defendant for filing of written statement was statutorily forfeited as despite sufficient time and opportunity given to him, he did not file written statement within stipulated time. The defendant has neither filed certified copy of the pleadings of the previous suit in this case nor summoned the witness of the concerned court to prove the record of the previous case, to ascertain as to whether the issue involved in the present suit as well as in the previous suit was directly and substantially the same. In the absence of pleadings of the previous suit and without ascertaining the fact that the issue involved in the present proceedings was directly and substantially the same in Ludhiana court and the said court has heard and finally decided the issue involved in the present proceedings, the suit of plaintiffs cannot be termed to be barred by the doctrine of res judicata. 6.54 Learned counsel for defendant also argued that defendant is prior adopter, user and proprietor of the trade mark 'BASANT' derived from the trading style of his manufacturing unit "M/s Basant Ice Cream". Admittedly, the written statement of defendant is not on record. Defendant has not led any evidence to prove that he is prior user and adopter of the trade mark 'BASANT'. Thus, the aforesaid contention of defendant that defendant is prior adopter, user and proprietor of trade mark 'BASANT' is not proved. Reliance may be have to Vidhyadhar v. Manikrao (supra).TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 47 of 51
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6.55 In Smith Bartlet & Co. v. The British Pure Oil Grease &
Carbide Company Ltd. (1934) 51 RPC 1957, it was held that "A distinction was drawn between the standard of proof of continuous prior user of an unregistered trade mark as required in an infringement action and that required in a rectification proceeding. The standard requited to defeat an infringement action was more stringent and rigorous. It was observed that Section 41 of the Trade Marks Act of the United Kingdom (which required like Section 34 TM Act continuous prior user) had put "the owner of a registered Trade Mark in a very exceptional position, whether he has used the mark or not, and he is entitled to the exclusive user of it unless under the proviso to Section 41 somebody else is able to show, not an occasional user from a date anterior to the user by the owner of the registered trade mark, but a continuous user by him."
6.56 In Amaravathi Enterprises v. Karaikudi Chettinadu, 2008 (36) PTC 688 (Madras) (DB), it was observed that apart from prior continuous use of the trade mark and trade name, the defendant seeking to set up a defence of prior use under Section 34 of the TM Act had to also prove the volume of sales. In Veerumal Praveen Kumar v. Needle Industries (India) Pvt. Ltd., 2001 (21) PTC 889 (Delhi), a Division Bench of this Court emphasized that a trade mark does not arise from the mere use of a word or words or a formula or a mark. It had to be shown that in relation to particular goods, there is a course of trading and that a goodwill connecting the trader with the goods by the reason of the trade mark under which the goods are marketed has resulted. It was observed: "it follows that where, in relation to particular goods, there is no such course of trading as to TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 48 of 51 Digitally signed by Raj Raj Kumar Tripathi Kumar Date:
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give rise to goodwill, there is no interest to be protected by a trademark and no such mark can subsist in vacuo." 6.57 Applying the ratio of principles laid down in the aforementioned cases to the facts of the present case, as defendant has failed to prove the volume of sales, prior continuous use of trade mark and trade name and the goodwill earned by him connecting with the goods in respect of which the goods are being marketed by him, his interest in the trade mark 'BASANT' cannot be protected. The defendant has miserably failed to prove on record that he is the prior user of the trade mark 'BASANT'.
6.58 Lastly, it was argued that the suit filed by plaintiffs is not maintainable in its present form and plaintiffs' have no locus standi to file the present suit. The said objection has not been pleaded by defendant by filing written statement as to what ought to have been the form of the suit. Even during course of arguments, it was not pointed out to this court as to in what form, the plaintiffs ought to have filed the present suit. Thus, the contention of defendant of plaintiffs' suit not being maintainable in the present form is without any basis and substance.
6.59 Plaintiffs have filed the present suit for permanent injunction restraining infringement of trade mark, copyright, passing off, damages and delivery up etc. against the defendant. As per plaintiffs, they are the proprietors of the registered trade mark 'BASANT'. They have alleged that defendant has indulged himself in infringement of their trade mark by using the mark 'NEW BASANT' TM-100/2018 (S. Charanjit Singh & Ors. vs. S. Gurdeep Singh) Page 49 of 51 Digitally signed Raj by Raj Kumar Tripathi Kumar Date:
2025.02.01 Tripathi 15:57:12 +0530 with respect to similar goods i.e. ice cream and kulfi etc. Thus, this court is of the view that plaintiffs have locus standi to file the present suit as they being prior user and adopter of the mark 'BASANT' have legal right to protect their trade mark.
7.1 For the foregoing reasons and discussions, I am of the view that plaintiffs have succeeded to prove their case. Accordingly, the suit of plaintiffs is decreed. A decree of injunction, in terms of prayer clause 49 (a) to (d) is granted in favour of plaintiffs and against the defendant.
8.1 The relief for order of delivery up as prayed in prayer clause 49 (e) of the plaint is declined as no Local Commissioner was appointed in the case for seizure of infringed goods and there is nothing on record to show that any material including labels, blocks, dies, strips, cartons, stationery, literature or any other printed matter bearing alleged label has been seized.
9.1 On the aspect of damages, plaintiffs have not led any evidence. There is no material on record to assess the quantum of damages allegedly suffered by plaintiffs by use of alleged trade mark 'NEW BASANT' by defendant. Accordingly, the suit of plaintiffs is directed to be decreed with cost. Plaintiffs shall be entitled for the cost of litigation incurred by them including the lawyers fees which is notionally quantified at Rs.1,50,000/-.
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10.1 Decree sheet be prepared.
11.1 File be consigned to record room.
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Announced in the open court Kumar Date:
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(RAJ KUMAR TRIPATHI)
District Judge (Commercial Court)-08 South-East District, Saket Courts, New Delhi.
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