Delhi High Court - Orders
Commercial Courts Act 2015 R/W Section ... vs Jitender Narula on 24 February, 2022
Author: Asha Menon
Bench: Asha Menon
$~10
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 127/2022, I.As. 3070/2022 (of plaintiffs u/O XXXIX R-
1&2 CPC for ad-interim injunction), 3071/2022 (for exemption),
3072/2022 (of plaintiffs u/O XI R-1(4) CPC for filing additional
documents) & 3073/2022 (of plaintiffs under Section 12A of the
Commercial Courts Act 2015 r/w Section 151 CPC for exemption
from pre-institution mediation)
GLOBAL CAR GROUP LTD & ANR. ..... Plaintiffs
Through: Mr. J. Sai Deepak, Mr. Abhishek
Kotnala, Mr. Karmanaya Dev
Sharma, Mr. Aditya Goel and Mr. R.
Abhishek, Advs.
Versus
JITENDER NARULA ..... Defendant
Through: None.
CORAM:
HON'BLE MS. JUSTICE ASHA MENON
ORDER
% 24.02.2022
[VIA VIDEO CONFERENCING]
I.A. 3071/2022 (exemption)
1. Allowed, subject to all just exceptions.
2. The application stands disposed of.
I.A. 3072/2022 (of the plaintiffs under Order XI Rule 1 (4) r/w Section 151 CPC for filing additional documents)
3. For the reasons stated in the application, the same is allowed and the CS(COMM) 127/2022 Page 1 of 7 Signature Not Verified Signed By:MANJEET KAUR Signing Date:25.02.2022 07:22:03 applicant/plaintiff is granted three weeks' time to file additional documents.
4. The application stands disposed of.
I.A. 3073/2022 (of the plaintiffs under Section 12A of the Commercial Courts Act 2015 read with Section 151 CPC seeking exemption from pre-institution mediation)
5. For the reasons given in the application, as urgent relief is claimed to prevent further infringement of the registered TradeMarks of the plaintiffs, the application is allowed and the applicant/plaintiff is exempted from instituting pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.
6. The application stands disposed of.
CS(COMM) 127/2022, I.A. 3070/2022 (of the plaintiffs under Order XXXIX Rules 1 and 2 CPC r/w Section 151 CPC seeking ad interim ex- parte injunction)
7. The plaint be registered as a suit.
8. This is a suit for permanent injunction restraining infringement of trademarks, passing off, unfair trade practices, unfair competition, dilution of goodwill, rendition of accounts of profits/damages, delivery up etc.
9. Issue summons in the suit and notice in the application to the defendant by all permissible modes, returnable before the Joint Registrar.
10. The summons shall indicate that the written statement to the suit and reply to the application be filed by the defendant within thirty days from the date of receipt of the summons. The defendant shall also file the affidavit of admission/denial of the document(s) filed by the plaintiff(s), failing which the written statement shall not be taken on record.
11. The plaintiffs are at liberty to file replication(s) to the written statement and rejoinder(s) to the reply filed by the defendant within thirty CS(COMM) 127/2022 Page 2 of 7 Signature Not Verified Signed By:MANJEET KAUR Signing Date:25.02.2022 07:22:03 days following the filing of the written statement/reply. The replication(s) shall be accompanied by the affidavit of admission/denial in respect of the documents filed by the defendant, failing which the replication(s) shall not be taken on record.
12. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the time lines.
13. Mr. J. Sai Deepak, learned counsel for the plaintiffs, has submitted that the plaintiffs have been using and continues to use 24 Formative Marks in different unique and stylised forms like the well-known 'CARS24'. It is further submitted that the plaintiff No.1 is the registered proprietor of several 24 Formative Marks, as listed in para 10 of the plaint. Further, in all these Formative Logo Marks and Word Marks, the essential feature was the combination of the word with the numeral '24'. Thus, with respect to 'CARS24', the plaintiffs have the exclusive right under Section 28 of the Trade Marks Act, 1999 (hereinafter referred to as the 'T.M. Act') to use these 24 Formative Marks.
14. The learned counsel has drawn attention to para No.13 of the plaint, to substantiate his claim that within seven years, the plaintiffs have earned such tremendous reputation and customer goodwill and satisfaction that it is clear that the defendant by using the mark "Trucks24x7" clearly intended to piggyback ride on this reputation of the plaintiffs, and to do so dishonestly. It is submitted that the plaintiffs came across the domain name of the defendant in July, 2021, and had issued a cease and desist notice. Though no response was given thereto, the domain seems to have shut down. However, in December, 2021, the defendant was seen to be again using the infringing mark of "Trucks24x7". A second legal notice evinced no response, forcing CS(COMM) 127/2022 Page 3 of 7 Signature Not Verified Signed By:MANJEET KAUR Signing Date:25.02.2022 07:22:03 the plaintiffs to approach the court.
15. It is further submitted that the courts have recognised exclusive rights in an idea and therefore, protected against the infringement of an idea too. Reliance has been placed on the decisions in Corn Products Refining Co. v. Shangrila Food Products Ltd., (1960) 1 SCR 968; Make My Trip (India) Private Limited v. Make My Travel (India) Private Limited, 2019 SCC OnLine Del 10638; Natures Essence Private Limited v. Protogreen Retail Solutions Private Limited, 2021 SCC OnLine Del 1538; Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd., 2015 SCC OnLine Del 10164; Parle Products (P) Ltd. v. J.P. and Co., (1972) 1 SCC 618; Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl. Mills, 2009 SCC OnLine Del 1690; Amritdhara Pharmacy v. Satya Deo Gupta, (1963) 2 SCR 484.
16. It is further submitted that this Court had the jurisdiction in the matter inasmuch as one Kritika had availed of the services in Delhi to transport goods to Dehradun. Further, the defendant is listed as a transporter in Delhi. Hence, it has been prayed that an ex-parte interim injunction be issued against the defendant.
17. It has been observed by the Supreme Court way back in 1965 in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories, (1965) 1 SCR 737, that resemblance between two marks may be phonetic, visual or even in the basic idea represented in the plaintiff's marks. Similarities in any one of these would be sufficient to make out a case of infringement. In the present case, the formative mark of the plaintiffs which is also its registered trademarks and is clearly an invented and a coined mark, as is evident from the several registered Trade Marks, it CS(COMM) 127/2022 Page 4 of 7 Signature Not Verified Signed By:MANJEET KAUR Signing Date:25.02.2022 07:22:03 is the use of alphabets in juxtaposition with "24" in a highly distinctive manner that is its essential feature. The defendant has used "24X7" with alphabets. Clearly, there is a similarity in idea and representation.
18. In Shree Nath Heritage Liquor Pvt. Ltd. (supra), a Division Bench of this court has analysed what could give rise to confusion and in that discussion also highlighted that similarity between word marks could be on account of a semantic understanding of how commonness of idea is conveyed through the use of words. The court analysed similarity occurring on account of hyponyms and synonyms to conclude "that marks containing words with the same sense, relation or falling in the same semantic field or conveying the same or similar idea in the mind as that of previously existing are likely to be considered so similar as to be refused registration of deemed constituted infringement of the previously existing Trade Mark".
It is clear therefore, that the use of the numerals '24' along with alphabets by the defendant is intended to convey a similar idea as the invented and unique Trade Mark of the plaintiffs. The plaintiffs have, therefore, disclosed a prima facie case in their favour.
19. The learned counsel for the plaintiffs is justified in submitting that the plaintiffs have earned their reputation as reflected in their turnover within a very short time as from Rs.74.80 crores in 2015-16, they scaled to a turnover of Rs.2988.14 crores in 2019-2020 and to approximately Rs.2732 crores in the lean period of 2020-2021, when Covid-19 was raging. Advertisement expenses have ranged from Rs.8.23 in 2015-16 to Rs.141.64 crores in 2019-2020 to Rs.80.40 crores in 2020-2021. The use of the infringing trademark by the defendant in the same field of business namely, transportation, could have a negative effect on this reputation, if there was CS(COMM) 127/2022 Page 5 of 7 Signature Not Verified Signed By:MANJEET KAUR Signing Date:25.02.2022 07:22:03 any slipshod service rendered by the defendant, as the infringing trademark could lead an average customer to believe that the defendant was also associated with the plaintiffs. This possibility is sufficient to grant interim protection, as in the event protection is not granted and the plaintiffs were to succeed in the suit, it is possible that irreparable harm may be caused to the goodwill and reputation of the plaintiffs.
20. The balance of convenience also lies in favour of the plaintiffs who have been in the business since at least 2015-16, whereas the defendant is a late entrant since July, 2021. Despite having stopped using the domain name with the infringing mark till December, 2021, the defendant has again commenced such activity, this time knowing fully well that the plaintiffs are the registered proprietor of the registered Trade Mark of 24 Formative Marks and that their rights were protected under law. The learned counsel has also pointed out that the application for Trade Mark registration filed by the defendant has been refused (page 5 of the plaintiffs' documents). The order refusing to register the trademark has also been placed on the record (page 6 of the plaintiffs' document).
21. In the light of the foregoing discussion, till the next date of hearing, the defendant is restrained from offering its services, advertising its services or listing on social media accounts and e-commerce websites, the infringing marks, namely, "Trucks24x7" (word per se), "Trucks24x7" Logo Marks and or any other deceptively similar or conceptually similar Trade Mark. The defendant is also restrained from CS(COMM) 127/2022 Page 6 of 7 Signature Not Verified Signed By:MANJEET KAUR Signing Date:25.02.2022 07:22:03 using the domain name w.w.w.trucks24x7.in or any other domain name which is deceptively or conceptually similar to the plaintiffs' 24 Formative Marks. The defendant is also directed to take down within 24 hours of the receipt of this order, the listing of his services in the name and logo of "Trucks24x7" through the website w.w.w.trucks24x7.in on any social media or e-commerce platform.
22. Provisions of Order XXXIX Rule 3 CPC be complied with.
23. List before the Joint Registrar on 24th May, 2022, for completion of service and pleadings.
24. The order be uploaded on the website forthwith.
ASHA MENON, J.
FEBRUARY 24, 2022 ck/'bs' CS(COMM) 127/2022 Page 7 of 7 Signature Not Verified Signed By:MANJEET KAUR Signing Date:25.02.2022 07:22:03