Mahindra And Mahindra Limited & Anr vs Diksha Sharma Proprietor Of Mahindra ... on 12 April, 2023

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Delhi High Court - Orders

Mahindra And Mahindra Limited & Anr vs Diksha Sharma Proprietor Of Mahindra ... on 12 April, 2023

1. Plaintiff 1 in the present suit is the flagship company of Mahindra Group, stated to have been founded in 1945 and operating in 22 key industries, including automobile engineering and telecommunication. The plaint asserts that, as on 2021-2022, the Mahindra Group comprises 174 subsidiaries/associate companies/joint ventures.

2. Plaintiff 1 claims to have been carrying on business under the corporate name and trading style "Mahindra" and "Mahindra & Mahindra Ltd" since 1948. The plaint has also set out various commendations and encomiums that the plaintiffs have earned over a period of time.

3. Para 11 of the plaint sets out the following registrations held by the Signature Not Verified plaintiffs, including registrations of the word marks Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 209/2023 Page 1 of 8 Signing Date:15.04.2023 14:17:46 "MAHINDRA" in Classes 12, 35 and 39. That apart, Plaintiff 1 holds registrations of "MAHINDRA" in the form of various device marks in various classes.

S.No. TM No. and Class Date of Trade Mark Status Application

1. 322911 in Class 12 10-02-1977 MAHINDRA Registered

2. 338997 in Class 12 27-07-1978 Registered

3. 354729 in Class 12 25-10-1979 Registered

4. 738967 in Class 12 07-04-1997 Registered

5. 800558 in Class 12 30-04-1998 Registered

6. 800564 in Class 12 30-04-1998 MAHINDRA & Registered MAHINDRA

7. 2328206 in Class 12 08-05-2012 Registered

8. 2332513 in Class 35 16-05-2012 Registered

9. 2334881 in Class 39 21-05-2012 Registered

10. 2454728 in Class 35 04-01-2013 Registered

11. 2454726 in Class 12 04-01-2013 Registered

12. 2458229 in Class 35 10-01-2013 Registered

13. 2458227 in Class 12 10-01-2013 Registered Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 209/2023 Page 2 of 8 Signing Date:15.04.2023 14:17:46

14. 2465429 in Class 35 23-01-2013 Registered

15. 2462573 in Class 12 18-01-2013 Registered

16. 2503035 in Class 35 26-03-2013 Registered

17. 2503033 in Class 12 26-03-2013 Registered

18. 3914317 in Class 39 11-08-2018 MAHINDRA Registered

19. 3914313 in Class 35 11-08-2018 MAHINDRA Registered

20. 5559194 in Class 39 05-08-2022 Accepted & Advertised

21. 5559190 in Class 35 05-08-2022 Accepted & Advertised

22. 5559144 in Class 12 05-08-2022 Accepted

4. To vouchsafe its reputation and goodwill in the market, the plaintiffs have provided, in para 13 of the plaint, the annual turnover of Plaintiff 1 which, in 2021-2022, is to the tune of₹ 59,521 crores, with advertisement expenses during the said year being incurred to the tune of ₹ 415 crores.

5. Plaintiff 2 is a part of the mobility service centres of the Mahindra Group and stated to be an integrated third party logistic service provider with specialises in supply chain management and enterprise mobility solutions.

6. The plaintiffs are aggrieved by the cropping up of various websites which use the plaintiffs' trademarks. Mr. Mehta submits that the Supreme Court, in its judgment in Mahendra & Mahendra Paper Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 209/2023 Page 3 of 8 Signing Date:15.04.2023 14:17:46 Mills Ltd. v. Mahindra & Mahindra Ltd. 1, has already recognized the plaintiffs' marks to be a well-known trademark.

7. As such, Mr. Mehta submits that the plaintiffs would be entitled to protection across classes, against infringement of its registered trademarks.

8. The defendants are stated to be packers and movers who are using the word "MAHINDRA", in the form of various devices and logos. Inasmuch as Plaintiff 2 is also engaged in providing similar services, Mr. Mehta submits that the use, by the defendants, of the mark "MAHINDRA" infringes the plaintiffs' registered trademarks and, as it could confuse customers into believing the existence of an association between the defendants and the plaintiffs, would also result in passing off, by the defendants, of their services as those of the plaintiffs.

9. The defendants have also registered the following infringing domain names:

                                 (a)    www.mahindrapackers.com,
                                 (b)    www.mahindrapackers.in,
                                 (c)    www.mahindrapackersmovers.com,
                                 (d)    www.mahindrapackersandmovers.com and
                                 (e)    www.mahindrapackersandmovers.in

10. It is in these circumstances that the plaintiffs have approached this Court by means of the present suit, seeking

(i) a permanent injunction against the defendants and all other acting on their behalf from using the plaintiffs' trademarks "MAHINDRA" and/or or any other mark or name which is Signature Not Verified 1 (2002) 2 SCC 147 Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 209/2023 Page 4 of 8 Signing Date:15.04.2023 14:17:46 deceptively similar thereto,

(ii) a direction to Defendants 5, 7 and 8 to block/suspend the aforesaid five domain names enlisted in para 9 (supra),

(iii) a direction to Defendant 9 to instruct the Domain Name Registrar/internet service licensees to block the aforesaid five domain names and

(iv) a direction to Defendant 6 to delist any listing pertaining to the aforesaid domain names, apart from damages and costs.

11. A clear prima facie case of infringement, by the defendants, of the plaintiffs' registered trademarks is made out. There is also substance in Mr. Mehta's contention that by use of the said marks, the defendants are passing off their services as those of the plaintiffs.

12. In the circumstances, let the plaint be registered as a suit. Issue summons in the suit.

13. Written statement, accompanied by affidavit of admission and denial of the documents filed by the plaintiffs be filed within 30 days with advance copy to learned Counsel for the plaintiffs who may file replication thereto, accompanied by affidavit of admission and denial of the documents filed by the defendants within 30 days thereof.

14. List before the learned Joint Registrar (Judicial) for completion of the pleadings, admission and denial of documents and marking of exhibits on 4th July 2023, whereafter the matter would be placed before the Court for case management hearing and further proceedings.

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 209/2023 Page 5 of 8 Signing Date:15.04.2023 14:17:46

I.A. 6685/2023 (Order XXXIX Rules 1 and 2 of the CPC)

15. This is an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking interlocutory injunctive reliefs.

16. In these circumstances, following the principles enunciated in Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia 2 and Laxmikant V. Patel v. Chetanbhai Shah 3 an order of injunction is to follow. As such, till the next date of hearing, the following directions are issued:

(i) The defendants as well as all others acting on their behalf shall stand restrained from using directly or indirectly the mark "MAHINDRA" or any other mark or name which is deceptively similar thereto.

(ii) Defendants 5, 7 and 8 are directed to block/suspend the five domain names enlisted in para 9 (supra) as well as any alphanumeric variation thereof.

(iii) Defendant 9 is directed to issue directions to the Domain Names Registrar/internet service licensees to block the aforesaid domain names.

(iv) Defendant 6 is directed to delist any listing pertaining to the aforesaid infringing domain names and to block/suspend the email IDs enlisted in para 51 of the I.A.

17. Let compliance under Order XXXIX Rule 3 of the CPC be Signature Not Verified 2 Digitally Signed By:SUNIL (2004) 3 SCC 90 SINGH NEGI CS(COMM) 209/2023 Page 6 of 8 Signing Date:15.04.2023 14:17:46 ensured by the plaintiffs within one week from today.

18. Issue notice, returnable before the Court on 19th July, 2023.

19. Reply be filed within a period of four weeks with advance copy to learned Counsel for the plaintiffs, who may file rejoinder thereto within four weeks thereof.

20. Dasti.

I.A. 6686/2023 (Order XI Rule 5 of the CPC)

21. Issue notice, returnable before the Court on 19th July, 2023.

22. Reply be filed within a period of four weeks with advance copy to learned Counsel for the plaintiffs, who may file rejoinder thereto within four weeks thereof.

I.A. 6687/2023 (Section 12A of the Commercial Courts Act, 2015)

23. In view of the judgment of the Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Pvt Ltd 4, exemption is granted from the requirement of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.

24. The application stands allowed accordingly.

I.A. 6688/2023(Order XI Rule 1(4) of the CPC) 3 Signature Not Verified (2002) 3 SCC 65 4 Digitally Signed By:SUNIL 2022 SCC OnLine Del 3529 SINGH NEGI CS(COMM) 209/2023 Page 7 of 8 Signing Date:15.04.2023 14:17:46

25. This application seeks permission to file additional documents. The plaintiffs are permitted to place additional documents on record in accordance with Order XI Rule 1(4) of the CPC as amended by the Commercial Courts Act within four weeks from today.

26. The application stands disposed of accordingly.

I.A. 6689/2023 (Exemption)

27. Subject to the plaintiffs filing legible copies of any dim or illegible documents within 30 days, exemption is granted for the present.

28. The application is disposed of.

I.A. 6690/2023 (Exemption)

29. For the reasons stated in the application, the plaintiffs are exempted from the requirement of serving an advance notice on the defendants.

30. This application stands allowed accordingly.

C.HARI SHANKAR, J APRIL 12, 2023 rb Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 209/2023 Page 8 of 8 Signing Date:15.04.2023 14:17:46

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Delhi High Court - Orders