Delhi District Court
M/S Multifrig Marketing Co. Pvt Ltd And ... vs M/S Chandra Engineers on 4 June, 2025
In the Court of Shri Ashutosh Kumar, District Judge (Commercial
Court)-01, Tis Hazari Courts, West District, Delhi
CS (Com.) No. 438/2021
CNR No. DLWT01-006994-2021
1. M/s Multifrig Marketing Co. Pvt. Ltd.,
Through its Director,
Mr. Wahi,
C/o 1/12, Kirti Nagar (W.H.S)
New Timber Market,
New Delhi
2. M/s Chandra Enterprises
Through its sole proprietor,
Mr. C.B. Wahi
C/o 1/12, 1st Floor, Kirti Nagar (W.H.S)
New Timber Market,
New Delhi
...Plaintiffs
Vs.
M/s Chandra Engineers,
C/o Khasra No. 173, G.F.,
Behind S.B.I. Bank,
Rithala, Delhi-110085 .....Defendant
Date of Institution : 24-09-2021
Date of hearing of arguments : 28-05-2025
Date of decision : 04-06-2025
Plaintiff's counsel- Sh Jenis Francis
Defendant's counsel - Ms Amita Sachdeva
CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra
Engineers Page No.1 of 59
JUDGMENT
1. This is a suit filed by the plaintiffs under sections 134 & 135 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) for permanent injunction restraining the defendants from infringement, passing off and for rendition of accounts, damages etc.
2. The plaintiffs' case is that plaintiff no. 1 M/s Multifrig Marketing Co. Pvt. Ltd. is a Private Limited Company, duly incorporated under the Companies Act, 1957, and in existence w.e.f. 06.02.1986. It is further claimed that the present plaint is signed and verified by Mr. Sumit Wahi on behalf of plaintiff no. 1, who is its Director and competent to sign & verify the same, and other accompanying pleadings & affidavits, vide Board resolution dated 04.01.2021, passed in his favor.
3. It is further the case of the plaintiff that the present plaint is signed & verified by Mr. C.B. Wahi on behalf of Plaintiff No.2, who is its sole proprietor (and also the Managing Director of Plaintiff No.1.), and is authorized to sign & verify the same, and other accompanying pleadings and affidavits.
4. It is further claimed by the plaintiffs that plaintiff no.1 who had adopted the said trade mark 'CHANDRA' (hereinafter referred to as the said trade mark) in the year 1979 in India, and is the registered trade mark holder of the said mark bearing Trade Mark CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.2 of 59 No. 395389 since 17.09.1982, in part 'A' of the Register as on 17-09-1982, and is engaged in the business of manufacturing, marketing and selling of various products as classified/ detailed under Class 11 of the Trade Mark Act, 1999 and dealing in 'freezing and cooling machines, ice, safes, Air conditioning apparatus and stabilizer for Air conditioning apparatus, and had also launched its products under the several heads such as Kitchen Equipment, Catering Products, Bulk Cooking Products, Laundry Products, Medical Equipment, Refrigerator/ Cooling Products, Racks and Trolley Products, Dish washing Products and Air Exhaust Systems, all which contain the embossing of the said trade mark 'CHANDRA' on them, and the said mark is currently valid and subsisting. In addition, it is also claimed that plaintiff no. 1 is also the holder of the Deed of Assignment, whereby the Trade Mark 'CHANDRA' and all legal rights associated with it were transferred from M/s Multi Marketing Company in favor of M/s Multifrig Marketing Company Pvt. Ltd. i.e. plaintiff no.1, which is valid, subsisting and has been renewed from time to time as per the provisions of the Trademarks Act 1999. It is claimed that the said trade mark was most recently renewed for a period of 10 years from 17.09.2020, and further that plaintiff no.1 had applied for a Legal Proceeding Certificate in the Trade marks Registry Delhi, vide receipt no. 07.04.2021.
5. It is further claimed by the plaintiffs that pursuant to a request on CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.3 of 59 Form TM - 24 dated 10-02-1989, and order thereon dated 03-04- 1989, plaintiff no. 1 has been registered as subsequent proprietor of the said trade mark from 20-01-1989, by virtue of the Deed of Assignment dated 20-01-1989.
6. It is further the case of the plaintiffs that plaintiff no. 2 (registered as a Micro Scale Enterprise, having Registration No. DL08D0014103 & commenced w.e.f 01.01.2012) being the sister concern/ proprietorship concern of the Managing Director of Plaintiff no. 1, and also by reason of having common promoters, Plaintiff No.1 had permitted/ authorized Plaintiff no.2 to use its Registered Trade Mark "CHANDRA", by way of a Memorandum of Understanding dated 01.01.2012.
7. It is further claimed by the plaintiffs that the said trademark has acquired a secondary meaning and is now closely associated by the relevant members of trade and public as belonging to Plaintiff No.1 only, as Google Search for Chandra kitchen Equipment/cooling cabinets leads to Plaintiff No.1's websites and further, digital platforms Just Dial & India Mart also carry Plaintiff No.1's profile & information. It is further claimed by the plaintiffs that plaintiff no. 1's products have acquired unique fame and reputation in the market due to its considerable expertise & specialization over the years, and also that a considerable sum of money has been spent to promote the said products. It is further the case of the plaintiff that Plaintiff No.1 being a very old and CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.4 of 59 reputed Company and its having market presence over the last 42 years has witnessed a rapid growth since its inception in the year 1979. It is further claimed by the plaintiffs that owing to their continued dedication, honest efforts & hard work, they have successfully created a special place for themselves in the market, their products are sold in various market segments and considered the top choice of consumers, and hence, by virtue of extensive use and vast publicity in respect of the said trade mark also, the plaintiffs enjoy exclusive proprietary rights over the said trade mark.
8. It is further the case of the plaintiffs that their products are sold/ marketed on a very wide market range in the entire country, and that they have supplied a large number of 'Chandra' Kitchen Equipment / Cooling Cabinets throughout India, to various Pharmaceutical / Medical Organizations, Government Departments, Commercial Organizations, Five Star Hotels, Restaurants, Public Undertakings, Institutions, Hospitals, Food Courts, Petrol Pumps and even to small Shopkeepers/Vendors, which sales are supported by the prompt and responsible support service offered under trade name 'Chandra'. It is further claimed by the plaintiffs that the illustrious list of their clients includes esteemed names like the President of India House, the Prime Minister of India Office, Parliament House, B.H.E.L, , Mother's Diary, ITDC, Taj group of Hotels, Ganga Ram Hospital, Holy CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.5 of 59 Family Hospital, ESSEX Farms, Christ Church, Krishna Mandir, Shagun Jewellers, Khanna Jewellers. It is further claimed that in addition to offering quality hardware, the Plaintiffs also provide warranty/ guarantee of their products to prove their reliability and the ruggedness of the products, and have thus created a unique identity for themselves in the Market, which distinguishes them from various other competitors. It is also claimed that plaintiffs' products being sold under the said trademark, also have a presence in the neighbouring country Nepal, where also the said brand has established its popularity & goodwill.
9. The plaintiffs' case further is that they are not just the prior holder, but also the exclusive owner of the Registered Trade mark 'CHANDRA', and the details of the trade mark registrations/filings of the plaintiffs for the said trade mark 'CHANDRA' are reproduced as under:
Trade Mark Registration No. Registration date Class CHANDRA Registration 17-09-1982 Last 11 No.395389 renewed on 11- 08-2020 for a period of ten years from 17- 09-2020 CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.6 of 59 CHANDRA 4808645 Pending 11 Pending Application CHANDRA 4939548 Pending 37 Pending Application
10. It is further claimed that by virtue of its extensive and prolonged use, the products of the plaintiffs under the said trademark bearing distinctive features is associated with the plaintiffs and the plaintiffs alone, and continues to be the most integral part of plaintiffs' business and also, owing to the long and continued use over a period of more than 42 years, the said trade mark of the plaintiffs has gained/ earned the reputation that it commands today in the market, such that its products have become well known and people associate the same with the plaintiffs only.
11. It is also claimed that the plaintiffs also participate in trade fairs & exhibitions from time to time, and have also incurred substantial amounts in advertisement and sales promotion of the said trade mark, which has been advertised in various media, including on huge billboards in various cities.
12. It is further the case of the plaintiffs that they became aware of the defendant's dishonest act for the first time when their representative came across the product, sold/ passed off/ marketed by the defendant under the trade name "CHANDRA", with a CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.7 of 59 clever addition of the word/ suffix "Engineers" to their products, which were identical to the products being sold by the Plaintiffs. It is further claimed that in fact upon enquiries from the plaintiffs' representative, the defendant had also shown its willingness to supply the goods under the impugned Mark i.e. "Chandra" having generic suffix "Engineers", to any place within India and more specifically, to all parts of Delhi. It is claimed that the suffix of a generic word 'Engineers' by the defendant in its trade name was inconsequential, as the dominant word was "CHANDRA" and the use of the word 'ENGINEERS' along with 'CHANDRA' failed to make the defendant's name distinctive, and per contra, the same became deceptive and misleading. It is claimed that the defendant has malafidely and dishonestly adopted the plaintiff's said trade name/ mark, to dishonestly mislead the common consumers into believing that their products being sold under the trade name "Chandra", by suffixing "Engineers", were in fact originating from the plaintiffs. It is claimed that the use of the mark 'CHANDRA' alone or used in conjunction with any other name/mark and any such deceptively similar mark would immediately lead anyone to believe that the said business/organization/entity is connected with that of the plaintiffs', and that such use is bound to create confusion and misconception in the minds of all concerned, and constitutes an infringement of the trade mark under the Act and also passing off. CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.8 of 59
13. It is also claimed by the plaintiffs that they were completely shocked and taken aback when it came to their knowledge that apart from distributing/ marketing/ passing off its products under the trade name "Chandra Engineers", through common trade channels and in retail shops, the defendant was also grasping orders/ assignments from potential clients in the similar trade business by deceptively using the trade name "CHANDRA" with an addition of "Engineers" to its trade name, and that the defendant had even approached Rashtrapati Bhawan, New Delhi, whom the plaintiffs have had dealings with for the last several years, and had procured several contracts and had also successfully completed them. It is claimed that the defendant malafidely misled the officials of the said department into believing that it was in fact associated with plaintiff no.1, and managed to get a contract bearing no. 36, dated 11.01.2021, for Rs. 7,99,920/-, which contract was identical & similar to some of the contracts which were given to the plaintiffs by Rashtrapati Bhawan. It is further claimed that owing to the services rendered by the defendant under the Trade Mark "Chandra", in relation to the equipment supplied by the plaintiffs/ such similar class of equipment, any mishap/ malfunction that might occur could adversely affect Rashtrapati Bhawan, which is the top Government Office of India, including other allied institutions, and in case any such event actually took place, it would not only CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.9 of 59 bring disrepute to the plaintiffs' unblemished reputation in the industry, but would also, at the same time, adversely affect the interests of the Country as a whole.
14. It is further claimed by the plaintiffs that the defendant was also providing maintenance services for the products/ machines manufactured by the plaintiffs. It is further the case of the plaintiff that the products marketed/ passed off/ sold by the defendant under the name "CHANDRA" are totally identical and indistinguishable from the registered trade mark of the plaintiff "CHANDRA".
15. It is also the case of the plaintiffs that they also own and maintain domains, namely www.chandrakitchenequipment.com & www.chandracoolingcabinet.com., wherein detailed information about their products is available, and that the contact email of the plaintiff No.1 is [email protected]. However, they found it shocking to note that the defendant also maintains a website under the domain name "http://www.chandraengineers.in/", in which it displays a similar class of products.
16. It is further claimed that as per the computer generated Trade Mark-search report 14.02.2021, a public search made under the website "https://ipindia.gov.in/trade-marks.htm" of the word "Chandra" under Class 11, lists out the entities/ companies having the aforesaid letters/ suffixes/ prefixes in their trade mark name CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.10 of 59 and plaintiffs' trade mark is the only name under the word mark "CHANDRA" and is duly listed in the said search, and that defendant's mark is not listed in the said search report, which only goes on to prove that the mark of the defendant has not even been filed in the Trade Mark Registry, clearly indicating that the defendant does not accord any special importance to the said mark, and therefore the plaintiffs are not only entitled to be granted protection against infringement u/s 28 & 29 of the Act, but are also entitled to seek damages for such illegal use of its registered trade mark.
17. It is also claimed that by virtue of extensive use and publicity, the trade mark of the plaintiff has become distinctive and is exclusively identified with its business, and that the defendant is now illegally reaping the benefits of the reputation/ goodwill earned by the plaintiffs over the past many years, and thus, keeping in mind the extensive use and reputation enjoyed by the said trademark, such adoption of the impugned mark by the defendant is blatantly dishonest and actuated by a malafide intention to take advantage of its reputation, thus leading to passing off its goods as originating from the plaintiffs. It is claimed that the goods of the parties being identical, having same trade channels/set of consumers/traders, the use of the deceptively similar mark by the defendant will cause confusion and deception in the minds of the public and the members of trade, into CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.11 of 59 believing that the defendant's goods enjoy the plaintiffs' endorsement, or that they are in some way connected with the plaintiffs. It is further the case of the plaintiff that no ordinary man under normal circumstances would be able to distinguish between "Chandra" and "Chandra Engineers", when the service/ trade provided by both the entities was identical and similar. It is claimed that the plaintiffs are the prior user and prior registrant of the said Trade Mark.
18. It is further claimed that being aggrieved by the acts of the defendant, plaintiff no.1 served a legal notice dated 17.01.2021 informing the defendant of the plaintiffs prior rights of the said trademark 'CHANDRA' and calling upon the defendant to cease & desist from using the said trade mark; however, the defendant showed no such intention, and instead gave a frivolous and untenable response to the said notice, stating that the word "Chandra" forms part of the middle name of defendant's family, and it continued using the trade name "CHANDRA" by suffixing "Engineers".
19. It is also the claim of the plaintiff that the sale of such products under the trade name Chandra by the defendant is causing and is also bound to cause further irreparable loss, harm and injury to the plaintiffs' and that the plaintiffs' sale figures have taken a dip due to the aforesaid infringement by the defendant, which loss is aggravated by the fact that the purchasing public is being CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.12 of 59 confused and deceived into believing that the defendant's products originate from the plaintiffs, when in fact, they do not. It is further claimed that the use of the said trade mark by the defendant is likely to dilute the distinctive character of plaintiffs' registered trade mark, which is likely to be debased and eroded, and such debasement and erosion of the plaintiffs' reputation and goodwill strikes at the very root of their existence, which is not measurable in terms of money and plaintiffs cannot be adequately compensated monetarily.
20. It is further claimed that the plaintiffs have suffered, and are also likely to suffer incalculable losses, both tangible and intangible to their goodwill, business and reputation, due to the defendant's acts of infringement and passing off, and more specifically, the plaintiffs claim damages on account of:
(i) Loss of its business or sales due to the confusion and deception of its customers;
(ii) Loss of reputation and image, namely the intangible aura around the goodwill, which is being diluted, as the Plaintiff has no control over the quality of the defendant's products, which are being offered by it under an identical trade mark. The sub-
standard products of the Defendant will adversely damage the Plaintiff's reputation through loss of prestige. The said loss will also be reflected in the loss of sales. Damages alone would not be an adequate remedy as the Plaintiff's exclusivity and reputation is in jeopardy. A certain cache attaches to Plaintiff's products, partly because of the high quality of the Plaintiff's products and partly owing to the goodwill and recall value of the Plaintiff's unique products and brand name 'CHANDRA'. The damage to the CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.13 of 59 Plaintiff's image will also be reflected in the loss of sales;
(iii) Loss of the confidence or trust of the customers of Plaintiff as a consequence of having placed undue reliance on the inferior and substandard quality of products being provided by the Defendant under infringing Trade Mark;
(iv) Exemplary damages due to the blatant disregard to the principles of fair-trading by Defendant in the present proceedings.
21. The present suit is filed by the plaintiffs with the following prayers:
i. decree of permanent injunction restraining the Defendant its proprietors, directors, partners, principal officers, agents, family members, servants, dealers, distributors and/ or anyone acting for and on their behalf from using the Registered Trade Mark "CHANDRA" bearing Trade Mark No.395389 for any Product; ii. A decree of mandatory injunction directing the delivery up against the Defendant all material consisting of the Registered Trade Mark "CHANDRA" bearing Trade Mark No.395389, including packaging material, sign boards, publicity material, brochures, pamphlets, stationary etc.;
iii. A decree of mandatory injunction directing rendition of accounts in favour of the Plaintiff of illegally earned profits by the Defendant by use of the Registered Trade Mark "CHANDRA" bearing Trade Mark No.395389 of the Plaintiffs; iv. Pass a decree of mandatory injunction restraining the Defendant from selling the products under the Registered Trade Mark "CHANDRA" bearing Trade Mark No.395389 of the Plaintiffs and withdrawing all goods from all across their outlets in India and to make an inventory thereof and file the same before the Hon'ble Court.
v. Pass a decree of damages of an amount of Rs.20,00,000/- in favour of the plaintiffs and against the defendant subject to the final quantification of damages after rendition of the accounts. vi. Pass a decree of permanent injunction, directing the CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.14 of 59 defendant to remove/ take down all websites/ electronic advertisements in any manner/ any social media accounts being operated under the Trade Name "CHANDRA."
vi. Costs be awarded in favour of the Plaintiff;
22. In its preliminary objections, the defendant has pressed for the dismissal of the present suit, inter alia, on the grounds that the same is bad for non-joinder of parties, not having been filed by an authorized person, the plaintiff having concealed material facts, and having approached the court with unclean hands, and also liable to be rejected under Order VII Rule 11 r/w section 151 CPC.
23. The further case of the defendant in its preliminary objections is that the word "Chandra" is the Hindi translation of moon, which is the natural satellite of our planet Earth, which denotes the Hindu God, has mythological significance and apart from the mythological aspect, the same is very commonly used as an Indian name, middle name and surname, and also interestingly, is used in the names of both males and females. The defendant has also claimed that the word Chandra has significance not only in India, but also worldwide, which can be understood by the fact that NASA launched the Chandra Space Telescope, as an X-ray observatory to send detailed information about space, and also named the said observatory after the Nobel prize winner Subrahmanyam Chandrasekhar. It is further claimed that it is the CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.15 of 59 settled law that the name of a public deity, which is in the public domain, should not be monopolized by protecting it as intellectual property, and the word Chandra has extensive use worldwide by different people and different organization for their products, names, surnames, religious temples etc., and hence, cannot be protected as intellectual property. It is also the case of the defendant that since the plaintiff's plaint is silent about why they had adopted the word Chandra as their mark, it can be assumed that the plaintiffs had adopted the word Chandra for mythological reasons, and thus, the alleged registration of the Trade Mark by the plaintiffs gives them no right to its exclusive use.
24. It is further claimed by the defendant that the present plaint is liable to be rejected, being barred by limitation, since the plaintiffs intentionally and deliberately did not disclose the date/ month or the year when they came to know about the alleged infringement of their trademark, and that the period of limitation for filing a suit for infringement of a trademark is three years from the date of such infringement.
25. It is further claimed that both the parties are carrying out their respective businesses from the same city, and had also participated in a tender floated by CPWD bearing NIT/ Line #:
192/EE/E/PEED/16-17/1 along with various other firms, wherein the plaintiffs, the defendant and another firm, namely Dolche India, were the three qualifiers, and the document depicting the CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.16 of 59 names of the said qualifiers was displayed/ published as a regular practice, and thus, it is beyond the comprehension of the defendants as to how the plaintiffs were unaware of the defendant's firm. It is also claimed by the defendant that since 2015, the plaintiffs and the defendant have been co-applicants in several tenders issued by Government Departments like CPWD, which disentitles the plaintiffs from seeking any relief, and accordingly, the plaint of the plaintiffs is liable to rejected.
26. It is further the claim of the defendant that it is a bonafide user of the name 'Chandra Engineers', which is not different from the name of its firm, and that section 35 of the Trade Marks Act permits anyone to carry on a business in his own name, or in the name of his predecessor in a bonafide manner. It is also claimed that the defendant's firm was earlier a sole proprietorship firm namely Chandra Engineers & Contractors, which was established by Late Sh. Phool Chandra, but after his death on 20-08-2019, his sons namely Vinay Kumar, Manish Kumar, Bhuvenesh Kumar and Chander Prakash, became partners of the defendant's firm after inheriting the said business, and changed the said name to Chandra Engineers for their partnership firm. It is further the case of the defendant that the defendant has been using the said name since the year 1993, and that the name Chandra is a part of the name of the erstwhile proprietor of the firm, and thus the defendant has the full freedom to use his predecessor's name or CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.17 of 59 surname. It is also the case of the defendant that it is protected under the Trade Marks Act 1999 r/w Rules 2017, which disentitles the proprietor of a registered trademark to interfere with any bonafide use by a person of his own name, his predecessor's name and surname.
27. The defendant has further claimed that the present suit is liable to be dismissed since the mark allegedly used by the plaintiffs is "Chandra", whereas the defendant is using "Chandra Engineers"
as its firm name. The defendant has also claimed that since the defendant has been using the name of its firm as Chandra Engineers & Contractors since 1993, and has already established itself in the market long back by earning vast goodwill, it has no need to do such unprofessional acts/ conducts to take advantage of the plaintiff's goodwill. The defendant has further claimed that the plaintiff's suit was liable to be dismissed since the plaintiff's trade mark and the defendant's firm's name are not identical or deceptively similar, as claimed by the plaintiffs and it is a well settled principle of law that marks must be considered in entirety, giving importance to the manner in which the mark has been represented and the meaning conveyed by the whole of the mark. It is also claimed by the defendant that there is no chance of confusion to the consumer or members in trade, as the manner of the use of its trade mark by the plaintiffs and the use of its trade name by the defendant is different, in as much as the plaintiffs are CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.18 of 59 using "CHANDRA" as their registered Trade Mark and "Multifrig Marketing Co. Pvt. Ltd." as its Firm Name, and the defendant is using "Chandra Engineers" as his Trade/Firm Name, and on comparison as a whole, both the words are completely different and distinct by all yardsticks of comparison, be it visually, structurally, aurally or conceptually, and hence, there is no possibility of any confusion/deception. It is further claimed by the defendant that as per its knowledge, the plaintiffs have always publicized and participated in all tender documents by the name 'Multifrig Marketing Company Private Limited' and not with their Trade mark Chandra, whereas the defendant's firm had participated with the name 'Chandra Engineers.
28. It is further the claim of the defendant that the suit is also liable to be dismissed on the ground that the plaintiffs' mark is generic and incapable of being exclusively monopolised by any party, as the word 'Chandra' is a generic word, and thus, cannot be protected as a trade mark. Also, the defendant claims to have independently and bonafidely adopted the name of the firm as "Chandra Engineers", without the knowledge of the plaintiffs mark.
29. It is also claimed by the defendant that the suit is not maintainable since the doctrine of 'Delay and Laches' is an equitable doctrine, which is based on the maxim "Vigilantibus non dormientius aequitas subvenit" which means that equity aids the vigilant, and not the ones who sleep over their rights. It is claimed that the CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.19 of 59 plaintiffs had the knowledge that defendant was the bonafide user of the name "Chandra Engineers", despite which they never raised any objections against the usage of the name "Chandra Engineers"
by the defendant, for the last appx. 30 years. It is further claimed that the doctrine of delay and latches being an equitable one is based on the principle of equity, that is one who comes to equity must come with clean hands.
30. It is further claimed that the defendant had undertaken and completed various projects of CPWD since 2015, qua which it had received completion certificates from CPWD for all such projects and that the Central Public Works Department or its staff in no case had any confusion or deception caused in their minds to believe that the defendant "Chandra Engineers" is plaintiff "Multifrig Marketing Co. Pvt. Ltd.", and further that both the parties had applied for common tenders of CPWD, thus ruling out the question of CPWD believing that "Chandra Engineers" and "Multifrig Marketing Co. Pvt. Ltd." were one and the same.
31. On merits, the defendant has given a general denial to the averments of the plaintiffs in the plaint for want of knowledge. The defendant has denied that its trade name Chandra Engineers was deceptively similar to the plaintiff's trade mark 'CHANDRA', which would amount to infringement and passing. The defendant has denied that the plaint has been signed and verified by Sumit Wahi on behalf of plaintiff no. 1, who is the CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.20 of 59 director of plaintiff no. 1 and by C.B. Wahi, on behalf of plaintiff no. 2, who is the sole proprietor of plaintiff no. 2, for want of knowledge. In its further reply on merits, the defendant has denied that by virtue of extensive and prolonged use, the plaintiffs' products under its trademark 'CHANDRA' bearing distinctive features are associated with the plaintiffs and plaintiffs alone, and that owing to its long and continued use over a period of more than 42 years, the plaintiffs' trademark has gained the reputation that it commands today in the market, and further that the products of the plaintiffs have become well known, and that people associate the same with the plaintiffs only.
32. It is also claimed by the defendant that the term "Chandra Engineers" is being bonafidely used by the defendant for the last approximately 30 years, and the name "Chandra" is a part of the name of the erstwhile proprietor of the defendant's firm, who also used to be known by the name Chandra. The defendant has denied that it had malafidely and dishonestly adopted the plaintiff's trade mark to dishonestly mislead the common consumers into believing that its products were, in fact, originating from the plaintiffs, and has rather claimed that it is a bonafide and honest user of the said trade name "Chandra Engineers" since 1993, i.e. for the last approximately 30 years, and that the plaintiffs never raised any objections to it, and that after all these years of using the said trade name and being in the same market, it cannot be CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.21 of 59 believed that plaintiffs were unaware of this fact, specially when the parties were running their respective offices from the same city, and that too from a distance of a few kilometers. It is further claimed by the defendant that since the year 2015, the parties have been co-applicants in many tenders issued by CPWD.
33. The defendant has denied that it approached the Rashtrapati Bhawan, New Delhi and malafidely misled the officials into believing that it was associated to plaintiff no.1, or that it managed to get a contract from Rashtrapati Bhawan by misrepresentation / cheating and rather claimed that it had procured several contracts from the Rashtrapati Bhawan, CPWD since 2015 and has also successfully completed them. The defendant has further denied that it had illegally grabbed a contract dated 11.01.2021, bearing contract No.36 amounting to Rs.7,99,920/-, from the Rashtrapati Bhawan, New Delhi, which was identical and similar to some of the contracts given to the plaintiffs by Rashtrapati Bhawan.
34. The defendant has further denied that it is providing maintenance services for the products/machines manufactured by the plaintiffs and supplied to M/s ICS Foods & Hospitality Services Pvt. Ltd. and has, on the contrary, claimed that the aforesaid company M/s. ICS Foods & Hospitality Services Pvt. Ltd. had approached the defendant in the year 2018 for its services, which validates the quality of the service given by the defendant. The defendant has CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.22 of 59 also denied having adopted the plaintiffs' Trade Mark "CHANDRA", to actively work under the guise of the same, with the addition of an insignificant suffix "Engineers" and has also denied grabbing the contracts of the plaintiffs by misleading its potential and active clients. It is claimed by the defendant that it is a bonafide, honest and concurrent user of word Chandra in its trade name "Chandra Engineers" for the last 30 years, and has gained goodwill and reputation in the market.
35. The defendant has further denied that no ordinary man under normal circumstances would be able to distinguish between "Chandra" and "Chandra Engineers", when the service / trade provided by both the entities is identical and similar and instead claimed that plaintiff no.1 is a company registered as "Multifig Marketing Co. Pvt. Ltd., which is entirely different from the name of defendant's concern i.e. "Chandra Engineers" and further that the trade name "Chandra Engineers" is being bonafidely used by defendant since 1993 and no objections from anyone, including plaintiffs, have been filed in last 30 years. The defendant has denied that it has marketed/passed off/sold any products under the name "CHANDRA" but has admitted that it maintains a website under the domain name https://www.chandraengineers.in/. The defendant has admitted that its Trade Mark is not listed in the Trade Mark-search report as the defendant has not gotten its name registered before the Trade Marks Registry. The defendant has CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.23 of 59 further stated that it is not mandatory to get the trademark registered under the Trade Marks Act, claiming thus that since both the words 'Chandra' and 'Engineers' are generic in nature, no fruitful purpose would, therefore be served by getting the same registered, as defendant knows that it would be unable to get monopolistic right for the said mark.
36. The defendant has claimed that it is the settled law that if anyone is using a particular mark for a long time for a particular product or business, and has gained sufficient amount of reputation, then such mark can be recognized as a trademark, without being officially registered under the Trade Mark Act, 1999, and the name of its firm "Chandra Engineers" is being bonafidely used by the defendant for the last 30 years, and has gained a reputation as it has significantly completed various projects/contracts of various private organizations since 1993 and even Government entities such as Rashtrapati Bhawan, CPWD, IRCTC since 2012. The defendant has further denied that the use of its trade name "Chandra Engineers" has created any confusion or misconception in the minds of all concerned or that it constitutes an infringement of the trade mark of the plaintiff. The defendant has also denied that by virtue of extensive use and publicity, the plaintiff's mark has become distinctive of and is exclusively identified with the plaintiff's business, and that the defendant is now illegally reaping the benefits of the reputation / goodwill earned by the plaintiffs CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.24 of 59 over the past many years. The defendant denied that plaintiff is entitled for any relief.
37. On the pleadings of the parties, the following issues were framed on 25-09-2023:
1. Whether the plaintiff is entitled for decree of permanent injunction restraining the defendant, its proprietors, etc. from using the registered trademark "CHANDRA" for any of its product as of their? OPP
2. Whether the plaintiff is entitled for decree of mandatory injunction directing the defendant for delivering all material using the trademark "CHANDRA" as alleged? OPP
3.Whether the plaintiff is entitled for damages of Rs. 20,00,000/- from the defendant as alleged? OPP
4.Whether the suit filed by plaintiff no. 2 is barred by law specifically under Section 53 of the Trade Marks Act as alleged? OPD
5.Whether the suit is barred by limitation? OPD
6.Whether the suit is not maintainable? OPD
7.Whether there is no cause of action against the defendant? (OPD)
8. Relief.
38. The plaintiff has examined its Director Sumit Wahi as PW-1 as its sole witness and thereafter closed its evidence. On the other hand, the defendant has examined one of its partners, Chander Prakash, as DW-1 as its sole witness, and thereafter closed its evidence.
Both the witnesses were cross-examined.
CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.25 of 59
39. PW-1 has broadly deposed on the lines of the plaint in his affidavit of evidence Ex. PW-1/A and has proved the following documents:
(1) The Copy of the Certificate of Incorporation - Ex-PW-1/1. (2) The Board resolution dated 04.01.2021 in favor of PW-1 - Ex- PW-1/2.
(3) The copy of the Trade Mark certificate alongwith the subsequent renewal/ relevant documents - Ex-PW-1/3 (colly) (4) The Copy of the Legal Proceeding certificate issued by the Trade Mark Registry dated 16.04.2021 - Ex-PW-1/4. (5) The Copy of the Deed of Assignment dated 20.01.1989 - Ex- PW-1/5.
(6) The Copy of the Memorandum of Understanding dated 01.01.2012 - Ex-PW-1/6.
(7) The Plaintiff No.1's Brochure/Catalogue - Ex-PW-1/7 (colly) (8) The copy of Extracts from the sites of Google, Just Dial, India Mart alongwith ratings and reviews of the satisfied Clients for the Plaintiff No.1, on Just Dial - Ex-PW-1/8 (Colly). (9)The Plaintiffs' list of Clients alongwith correspondence/ purchase orders received by plaintiffs since the year 1982 till 2021
- Ex-PW-1/9 (colly.) (10) The correspondence/purchase orders received by plaintiff from Nepal - Ex-PW-1/10 (colly) (11) The relevant Photographs of the Products with the embossing of the Trade Mark CHANDRA - Ex-PW-1/11 (colly) (12) The pictures of the trade fairs and exhibitions participated by the plaintiff - Ex-PW-1/12 (Colly).
(13) Pictures of the advertisements of the Plaintiffs branding on bill boards are being exhibited as Ex-PW-1/13.
(14) The copies of the Work orders procured by the Plaintiffs from the Rashtrapati Bhawan are being exhibited as Ex-PW-1/14. (15) The extracts of the website - Ex-PW-1/15 (Colly) CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.26 of 59 (16) The copy of the Public search report of the word "Chandra" made on the public domain - Ex-PW-1/16.
(17) The Cease & Desist Notice sent by Plaintiff No.1 & the Reply received from the defendant - Ex-PW-1/17 & Ex-PW-1/18 respectively.
40. DW-1 in his evidence by way of affidavit Ex. DW-1/A has broadly relied upon the contents of his written statement and has proved the following documents:-
i) True copies of PAN cards of current Chandra Engineers & erstwhile proprietor late Sh. Phool Chandra Ex. DW1/1 (Colly) (OSR).
ii) True copies of quotations and orders under the firm name "Chandra Engineers and Contractors" for the period between 1993 to 2004 Ex. DW1/2 (Colly) (OSR) (page nos. 100-112 of the documents of the defendant).
iii) True copy of the Sales Tax Registration and registration documents with other departments Ex. DW1/3 (colly) (OSR) (page nos. 113 to 129 of the documents of the defendant)
iv) True copies of the GST tax registration, MSME Registration, ESI and Provident Fund registration related documents of "Chandra Engineers" Ex. DW1/4 (colly) (OSR) (page nos. 130- 139 of the documents of the defendant)
v) True copies of the completion certificates and invoices/bills Ex. DW1/5 (colly) (OSR) (page nos. 140-172 of the documents of the defendant)
vi) True copy of the printout of publicly available information in relation to the participants in the tender floated by CPWD bearing NIT/Line #:192/EE/E/PEED/16-17/1 Ex. DW1/6
vii) Affidavit under Order 11 Rule 6 (3) of The Commercial Courts Act, 2015 Ex. DW1/7
viii) Affidavit under Section 65A & 65B of The Evidence Act, 1872 Ex. DW1/8 CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.27 of 59
41. I have heard the arguments of the ld Counsels for the parties and have gone through the written submissions along with judgments filed by the parties and the case file.
42. The ld. Counsel for the plaintiff has relied upon the following judgments:
(1) M/s Divine Messangers Vs Dr Prerna Diwan, 2023:
DHC:2890 (2) Khadi and Village Industries Commission Vs. Khadi Design Council of India and Ors, 2023:DHC:2044 (3) Goenka Institute of Education vs. Anjani Kumar Goenka, AIR 2009 DELHI 139,
43. The ld. Counsel for the defendant has relied upon the following judgments:
1. Jindal Industries Pvt. Ltd.Vs. Suncity Sheets Pvt. Ltd. & Anr. 2024 SCC Online DEL 1632
2. Nandhini Deluxe Vs. Karnataka Cooperative Milk Producers Federation Ltd., AIR 2018 SUPREME COURT 3516
3. P.K. Sen Vs. Exxon Mobile Corporation, FAO (OS) No.290/2016 & CM No.37465/2016 decided on 04-01-2017
4. Patasibai v. Ratanlal ,1990 SCR (1) 172
5. Moreshar Yadaorao Mahajan v. Vyankatesh Sitaram Bhedi (D) Thr. Lrs. & Ors. (Civil Appeal Nos. 5755-5756 of 2011, decided on 27.09.2022)
44. Initially, vide order dated 28-09-2021, ld. Predecessor of this court had passed an interim order, vide which the defendant was restrained from using the registered trade mark/word "Chandra" CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.28 of 59 for any goods, similar to the plaintiff's goods under class 11, which interim relief was modified vide order dated 19-02-2022 and the plaintiff's application U/O XXXIX Rules 1 & 2 CPC and defendant's application XXXIX Rule 4 CPC were partly allowed to the extent that the defendant was restrained from using the plaintiff's trade mark CHANDRA on any of its products under class 11, but was not restrained from using the business name "Chandra Engineers" for the purpose of its firm name till the final disposal of the suit.
45. My issue-wise findings are as under:-
46. It is important to decide issue no.4 first and other issues later since it is related to the maintainability of the suit with respect to the plaintiff no.2.
ISSUE NO. 44.Whether the suit filed by plaintiff no. 2 is barred by law specifically under Section 53 of the Trade Marks Act as alleged? OPD
47. The onus to prove this issue was on the defendant.
48. The Ld Counsel for the defendant has claimed that since plaintiff no. 2 is a permitted user of the trade mark 'CHANDRA' vide a memorandum of understanding dated 01-01-2012 (Ex. PW-1/6) with plaintiff no. 1 and therefore, as per section 53 of the Trade Marks Act, plaintiff no. 2 is precluded from initiating infringement proceedings against the defendant. The Ld. Counsel CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.29 of 59 for the defendant has placed reliance on the judgment of the Hon'ble High Court of Delhi in P.K. Sen vs Exxon Mobil Corporation (Supra), wherein it has been held that only the registered proprietor has such rights and thus, the plaintiff No. 2, not being the registered holder/user of the said trade mark lacks locus standi to file the present suit against the defendant.
49. In rebuttal, the Ld. Counsel for the plaintiffs' submits that plaintiff no. 2, as a permitted user under the MoU with plaintiff no. 1, has a legitimate interest in protecting the trademark "CHANDRA" from infringement. He has contended that plaintiff no. 2 is authorized to use the trademark in the course of trade and has been directly affected by the defendant's infringing activities. Ld. Counsel for the plaintiffs' argues that Section 53 does not expressly bar a permitted user from joining a suit, especially when acting in conjunction with the registered proprietor (plaintiff no. 1), and that plaintiff no. 2's inclusion in the suit is necessary to seek complete relief.
50. Section 53 of the Trade Marks Act, 1999, is relevant here and is reproduced as under:
"53. No right of permitted user to take proceeding against infringement.--
A person referred to in sub-clause (ii) of clause (r) of sub- section(1)of section 2 shall have no right to institute any proceeding for any infringement."
CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.30 of 59
51. Further, section 2(1) (r) (ii) is reproduced as under :-
"(ii) by a person other than the registered proprietor and registered user in relation to goods or services--
(a) with which he is connected in the course of trade; and
(b) in respect of which the trade mark remains registered for the time being; and
(c) by consent of such registered proprietor in a written agreement; and
(d) which complies with any conditions or limitations to which such user is subject and to which the registration of the trade mark is subject;"
52. This provision, read with Section 52 of the Act, implies that the right to sue for infringement of a registered trademark vests with the registered proprietor or the registered user. The defendant's contention that suit of plaintiff no. 2 is barred under Section 53 is based on the judgment of P.K. Sen v. Exxon Mobil Corporation (Supra) wherein the Hon'ble High Court of Delhi observed that only the registered proprietor himself or a registered user has the statutory right to institute infringement proceedings, and a non- proprietor, such as a licensee or a permitted user without registered status, lacks an independent locus standi to sue. In the present case, Plaintiff no. 2 is a permitted user under the MOU dated 01-01-2012 Ex.PW-1/6 with plaintiff no. 1 as the registered CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.31 of 59 proprietor, and the MOU does not expressly authorize plaintiff no. 2 to initiate legal proceedings. The relevant part of the judgment is reproduced as under :-
".........16. Sections 52 and 53 are extremely important for the purposes of this case. Section 52(1) provides that subject to any agreement subsisting between the parties, a registered user may institute proceedings for infringement in his own name as if he were the registered proprietor. Of course, in such eventuality, the registered proprietor has to be made a defendant. Furthermore, in such cases, the rights and obligations of such a registered user would be concurrent with those of the registered proprietor. Since the plaintiff No.2 / respondent No.2 is admittedly not a registered user, Section 52(1) does not come into play insofar as it is concerned. But, what is important is that it has to be kept in mind that a registered user has been given the right to institute the proceedings for infringement in his own name as if he were the registered proprietor. Section 52(2) also deals with a case where a registered user has instituted a proceeding in his own name and does not arise for consideration in the present case. Section 53, in clear departure from Section 52, stipulates that a person referred to in Section 2(1)(r)
(ii) shall have no right to institute any proceeding for any infringement. The person referred to in Section 2(1)(r)
(ii) is a person other than the registered proprietor and registered user and would obviously include a permitted user. In other words, the only persons who can bring a suit for infringement of a trade mark would be the registered proprietor himself or the registered user and certainly not a permitted user. Therefore, in our view, the submission made by the learned counsel for the appellant CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.32 of 59 that the suit could not have been instituted by the respondent No.2 / plaintiff No.2 is correct.
17. Section 134 of the said Act has already been extracted above. It may be seen that Section 134(1) refers to three kinds of suits:-
a) for the infringement of a registered trade mark;
b) relating to any right in a registered trade mark;
c) for passing off arising out of 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.
Section 134(2), however, relates only to the suits specified in clauses (a) and (b) above of sub-section (1). In other words, Section 134(2) of the said Act is relatable only to suits for infringement of a registered trade mark or for suits relating to any rights in a registered trade mark. It does not relate to an action of passing off. It may be remembered that the present suit is one of an action based on an alleged infringement of a registered trade mark. The expression used in Section 134(2), which is of material importance, is ―person instituting the suit ‖. From our discussion above on Section 53 of the said Act, it is evident that a permitted user cannot institute a suit for infringement of a registered trade mark. Therefore, the plaintiff No.2 / respondent No.2 by itself could not have filed the present suit...."
53. Applying the aforesaid judgment to the facts of the present case, plaintiff no. 2, as a non-proprietor or a registered user, lacks the independent right to file an infringement suit, and thus, its participation as plaintiff no.2 is barred under Section 53 of the CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.33 of 59 Act.
54. However, such bar on plaintiff no. 2 under Section 53 of the Act does not impact the outcome of the suit because plaintiff no. 1 has the right to sue for infringement under Section 52 of the Act. The reliefs sought, including damages and injunction, can be adjudicated without the participation of plaintiff no. 2, as the trademark's proprietary rights vest solely with plaintiff no. 1. Thus, any bar on plaintiff no. 2 is inconsequential to the overall outcome of the suit.
55. Accordingly this issue is decided in favor of the defendant and against plaintiff no.2.
ISSUE NO. 11. Whether the plaintiff is entitled for decree of permanent injunction restraining the defendant, its proprietors, etc. from using the registered trademark "CHANDRA" for any of its product as of their? OPP
56. The onus to prove this issue was on the plaintiff.
57. It is an admitted case of the parties from their pleadings, evidences and final arguments and also from perusal of the certificate of the registration of the trademark Ex.PW-1/3 dated 17-09-1982 that Multi Marketing Company was the registered holder of the Trade Mark "Chandra" vide registration no. 395389 qua some of the goods covered under class 11 of the Trade Marks Act since 17-09-1982 and that plaintiff no.1 vide deed of CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.34 of 59 assignment dated 20-01-1989 Ex. PW-1/5, was transferred with all the legal rights associated with Multi Marketing Co. , including the trademark 'CHANDRA', which trade mark is valid and subsisting till the year 2030.
58. However, the defendant's claim is that plaintiff's registered trademark "CHANDRA" vide registration no. 395389 under Class 11 is limited to specific goods i.e. freezing and cooling machines, ice safes, air conditioning apparatus, and stabilizers for air conditioning apparatus, and does not extend to all goods under Class 11, and further that two additional trade mark applications of the plaintiff numberd 4808645 (under class 11 dated 06-01- 2021) and 4939548 (under class 37 dated 09-04-2021) are pending (both opposed by the defendant), and are under objection, vide which the plaintiff had sought to unjustifiably monopolize a broad range of unrelated goods under Class 11 i.e. water heaters, electric toasters, LED lights, thus exceeding the scope of their registered trademark. It is further claimed that the defendant deals in services i.e. installation, maintenance, and repair, which falls under class 37, and the same is entirely outside the ambit of goods contained under class 11. It is also claimed by the defendant that plaintiffs have always publicized and participated in all tender documents by the name 'Multifrig Marketing Company Private Limited' and not with their trade mark Chandra, whereas defendant's firm had participated with the name CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.35 of 59 "Chandra Engineers" and therefore there is no infringement of plaintiff's trademark by the defendant.
59. Ld. Counsel for the plaintiffs by relying upon Section 29(5) of the Trade Marks Act, 1999, has claimed that since the said section puts a bars on anyone from using a registered Trade Mark either in its "TRADE NAME" or in its "Business Name", and the defendant in view of their categorical admission to having been using the registered Trade Mark CHANDRA of the plaintiffs in its part of its "Trade Name/Business Name" as "Chandra Engineers"
is Ex-Facie an infringement in view of the aforesaid section 29(5) of the Act and accordingly, defendant is required to be permanently injuncted from using the registered trade mark of the plaintiffs i.e. "Chandra" in their trade name and business name. Ld Counsel for the plaintiff has further added that defendant in para 36 of its reply on merits has admitted that it is using the word Chandra as its firm name as its trade mark and further that it does not have trade mark registration.
60. Per contra, the Ld Counsel for the defendant has claimed that the defendant is not using "CHANDRA" as a trademark on any of its products and is rather using "Chandra Engineers" as its trade name, and has asserted that this is permissible under Section 35 of the Trade Marks Act, 1999, which permits a person to use their own name, or business name in the course of trade. It is further claimed that defendant is a bona fide user of its partners' father's CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.36 of 59 surname. It is further claimed that father of the partners of the defendant's firm changed the name of his proprietorship firm to "Chandra Engineers" in the year 2004 and after his death the partners continued his business under the same trade name and therefore the defendant is a bonafide user of its predecessor in business and is therefore statutorily protected under the said section of the Act. To substantiate its said claim, Ld Counsel for the defendant has relied upon Jindal Industries Pvt. Ltd.Vs. Suncity Sheets Pvt. Ltd. & Anr (supra), wherein it is held as under:-
"34.Indeed, one who obtains registration of a common name, or surname, like JINDAL, as a trade mark in his favour, does so with all the risks that such registration entails. It is open to anyone, and everyone, to use his name on his goods, and, therefore, the possibility of there being several JINDAL's looms large. The plaintiff cannot, by obtaining registration for JINDAL as a word mark, monopolize the use of JINDAL even as a part - and not a very significant one at that - of any and every mark, even in the context of steel, or SS pipes and tubes. The Trade Marks Act, and the privileges it confers, cannot be extended to the point where one can monopolize the use of a common name for goods, and, by registering it, foreclose the rest of humanity from using it.
35. For that reason, Mr. Lall's lament that, if the defendants are permitted to use the impugned mark, the plaintiff's statutory rights in its registered JINDAL word mark would be jeopardized is really misplaced. The risk of having others bona fide using "JINDAL" as a name CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.37 of 59 for their products, and in the marks used on their products, is a risk that the plaintiff consciously took, when it obtained registration of the mark. If one registers a mark which lacks inherent distinctiveness, the possibility of others also using the same mark for their goods, and of the registrant being powerless to restrain such use, is a possibility that looms large, which the registrant has to live with."
.................................................................. ............
37. To the extent it protects against interference with the use of one's name, Section 35 has to be understood in the context of the law enunciated in the above decision, and those cited within it. The right of a person to use her, or his, own name on her, or his, own goods, cannot be compromised; else, it would compromise the right to use one's name as an identity marker, which would ex facie be unconstitutional.
38. In the absence of any such caveat to be found in Section 35, it may be arguable, at the very least, whether, while the use of one's name as an identity marker is permissible under Section 35, but the instance it spills over into "trade mark" territory, it is rendered impermissible. Any such interpretation, in my prima facie view, would be reading a non-existent proviso into Section 35 and, in effect, rewriting the provision.
39.The proscription under Section 35 is absolute, and would extend to infringement as well as passing off actions. The restraint against interference with the bona fide use, by a person, of his own name, is not dependent on whether the action is one for infringement or passing off."
CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.38 of 59
61. The Ld Counsel for the defendant has further relied upon Nand- hini Deluxe v. Karnataka Co-Operative Milk Producers Federa- tion Ltd. (Supra), to claim that the goods of the plaintiff falls un- der class-11 and the services (installation, maintenance, and re- pair) rendered by the defendant falls under class-37. He has also claimed that the plaintiff seeks to unjustifiably monopolize a broad range of unrelated class-11 goods, such as water heaters, electric tasters etc. and that the plaintiffs have filed two additional trademark applications TM Application No. 4808645 (Class 11, dated 06.01.2021) and TM Application No. 4939548 (Class 37, dated 09.04.2021) both of which are pending and under objection, and the defendant has opposed both the applications, and the plaintiffs cannot claim extended rights based on these pending ap- plications.
62. In rebuttal, the Ld Counsel for the plaintiffs has argued that the defendant cannot take the benefit of Section 35 of the Act as the said section applies only to an individual using his own full name as a trade mark, and is not extended to a non-natural or artificial person like the defendant Partnership Firm, which is the case in the instant matter. To substantiate its claim, Ld Counsel has relied upon the judgment in Goenka Institute of Education vs. Anjani Kumar Goenka (Supra), wherein it is held as under:-
....................23.
CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.39 of 59 "(iv)We may incidentally state that the aforesaid ratio of Division Bench judgment of this court in the Montari case answers one of the contentions raised by the counsel for the appellant that the appellant is entitled to use the name FAO (OS) No. 118/2009 Page 28 „Goenka‟ by virtue of Section 35 of the Trademark Act, 1999. Clearly, the arguments of learned counsel for the appellant are not well founded because the defence under Section 35 will only apply to a full name and that also by a natural person and not by a legal entity which can choose a separate name. Also, once distinctiveness is achieved or secondary meaning acquired with respect to a surname, then, another person cannot use that surname for an artificial person or entity. The appellant, therefore, only on the strength of Section 35 cannot successfully contend that it is entitled as of right to use the name „Goenka ‟ merely because it happens to be the surname of its original and present trustees. Of course, nothing turns strictly on this issue in the facts and circumstances of this case, so far as the relief with respect to infringement or passing off or prior user issue is concerned because, we have otherwise held that appellant is an honest concurrent user and we have given later in this judgment sufficient directions for bringing about distinction in both the trademarks so that there is no confusion in the minds of the public."
63. I find force in the arguments of the Ld Counsel for the plaintiffs on the basis of the aforesaid judgment relied upon by him. From the same, it can be inferred that section 35 of the Act applies and give benefit to only the full name of a natural person, and does not apply to an artificial person, or a non-natural person, which is the CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.40 of 59 case herein with respect to the defendant as the full name of the father of the partner of defendant was "Phool Chandra".
64. Protection under Section 35 of the Trademarks Act, 1999, which permits bona fide use of a person's own name but excludes such use if it is dishonest, likely to cause confusion, or adopted by a partnership firm rather than a natural person. The plaintiffs' counsel has claimed that "CHANDRA" trademark, registered since 1982 under Class 11 for refrigeration products, enjoys significant goodwill. The defendant, in its written statement, admits that both parties have participated in the same tenders issued by the Central Public Works Department, including Contract No. 192/EE/E/PEED/2016-17/1 in 2016 and Contract No. 36 in 2021, and operates in the related field of Class 37 services (installation and repair). This overlap in competitive bidding, coupled with the defendant's use of "Chandra Engineers", creates a clear likelihood of confusion among clients, who may mistakenly associate the defendant's services with the plaintiff's registered trade mark "CHANDRA". The defendant's claim of bona fide use since 1993 is undermined by their awareness of the plaintiff's prior-registered trademark and the potential for deception in shared tender processes, suggesting an intent to exploit the plaintiff's goodwill.
65. The valid registration of the trademark 'CHANDRA' grants the plaintiff exclusive rights to use the mark for these goods under CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.41 of 59 Section 28(1) of the Trade Marks Act, which provides that the registration of a trademark confers exclusive rights to the registered proprietor to use the mark in relation to the goods or services for which it is registered.
66. Moreover, the judgment cited by the Ld Counsel for the defendant in Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd. (supra), arose from (1) Opposition or rectification proceedings, (2) both parties held registration, (3) there was estoppel in as much as one of the mark proceeded for registration and it was not challenged by the opponent, and (4) the mark used was the name of the cow worshiped under Hindu mythology.
However, in the present case the oppositions so filed by the defendant do not pertain to the plaintiff's registered trade mark no. 395389 under class 11, and admittedly the defendant has no registration for class 11, there is no estoppel, and the mark is distinctive. Accordingly, the said judgment relied upon by the defendant is distinguishable on facts and does not help the case of the defendant.
67. As regards the claim of the defendant that "Chandra" is the Hindi translation of moon, which is the natural satellite of our planet Earth, the word "Chandra" signifies mythological aspect and denotes the Hindu God, is one of Navagraha and Dikpala CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.42 of 59 (Guardians of the Directions) and is very commonly used as Indian name, middle name and surname, Ld Counsel for the defendant has relied upon the judgment in the case of Jindal Industries Pvt. Ltd. v. Suncity Sheets Pvt. Ltd.(Supra) . The said judgment does not help the case of the defendant as the said judgment only protects the bonafide use and that too by a person of his own name, which is not the case herein.
68. To the claim of the defendant that its trade name differs visually and conceptually from the plaintiffs' trademark "CHANDRA" and that there was no likelihood of confusion amongst sophisticated clients like Government Bodies and Corporations as held in para no. 21 of the interim injunction order dated 19.02.2022 of Ld. Predecessor, it is observed that a prima facie view was taken by the Ld Predecessor at that interim stage, and the same has no bearing on the merits of the case at this final stage and does not negate the statutory right of the plaintiff under section 29 (5) of the Trade Mark Act, as the use of such trade name by the defendant in identical goods and services thereof, in the same category of goods in which the plaintiffs' trade mark is registered, creates a likelihood of association/confusion with the plaintiff's trade mark. The plea taken by the ld Counsel for the defendant that both parties cater to large corporate houses, government organizations, and tenders where customers possess technical expertise and are unlikely to be deceived by the defendant's use of CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.43 of 59 'Chandra Engineers' as a trade name, is not tenable as there is no such positive proof that the services of the defendant qua the products being manufactured by the plaintiff under its registered trade mark in class 11, can not be availed by an individual / non- corporate houses as well.
69. Section 29(5) of the Trade Marks Act, 1999 is pivotal in this case and is reproduced as under :-
"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."
70. Furthermore, Section 29(2)(b) of the Trade Marks Act, 1999, provides that infringement occurs when a person who, not being a registered proprietor or a permitted users in the course of trade, uses a mark which became of its similarity to the registered trade mark and the identity of similarity 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. Here, the use of "CHANDRA" in the defendant's trade name for services related to air conditioning apparatus could lead consumers to believe that "Chandra Engineers" is associated with the plaintiff's registered mark "CHANDRA," especially given the mark's distinctiveness and CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.44 of 59 long-standing use and registration. Section 29(5) specifically addresses the use of a registered trademark in a trade name (or part thereof) or the name of its business concerned or part thereof, as is the case here. The defendant's admission (para 51) that it uses "CHANDRA" in its trade name as "Chandra Engineers"
constitutes a prima facie infringement under Section 29(5), as the services provided by the defendant are sufficiently related to the plaintiff's goods under Class 11.
71. Accordingly, in view of the findings above, it is held that in view of the section 29 (5) of the Trade Marks Act, the defendant cannot use the registered trade mark of the plaintiff no.1 as its trade name (or part thereof) or the name of its business concern or part thereof in any manner and the benefit of section 35 of the act is not available to the defendant as already opined above.
72. In this context, reliance can be placed upon a judgment of Hon'ble High Court of Delhi in a case titled Bloomberg Finance Lp vs Prafull Saklecha & Ors. in IA No. 17968 of 2012 in CS (OS) No. 2963 of 2012 decided on 11 October, 2013, wherein it is held under:-
"48. In Mahendra & Mahendra Paper Mills Limited v. Mahindra & Mahindra Limited (2002) 2 SCC 147 , the case before the Supreme Court pertained to the grant of an injunction against the Defendant using, in any manner, as a part of its corporate name or trading style the words Mahindra & Mahindra or any word(s) deceptively similar to Mahindra or and/or Mahindra & Mahindra so as to pass off or enable others to pass off the business and/or services of the Defendant as those of the Plaintiffs or as emanating from or affiliated or in some CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.45 of 59 way connected with Plaintiffs. The Defendant contended that its products were in no way similar to that of the Plaintiffs and that the business carried on by it did not overlap with the business of any of the companies enlisted by the Plaintiffs. The Supreme Court held that by using the Plaintiff's trademark as a part of its corporate name, the Defendant had committed the fraud of passing off its business and/or services as that of the Plaintiffs.
49. In Kalpataru Properties Private Limited v. Kalpataru Hospitality & Facility Management 2011 (48) PTC 135 (Bom.), the issue was whether an action in passing off was maintainable where the Plaintiff's registered mark was used as part of the Defendant's corporate name and the goods and services dealt with by the parties were in different classes. Following Mahendra and Mahendra, the Court held that a passing off action was maintainable in the case of a well known mark even if the goods and services being dealt with by the parties are not similar.
50. Recently, in Red Hat Inc. v. Mr. Hemant Gupta 2013 1 AD (Delhi) 130, this Court, while dealing with a case which involved the use of a registered trademark as part of its corporate name by the Defendant, held that the Plaintiff could seek a remedy for an infringement under Section 29 (4) as well as Section 29 (5) of the TM Act 1999.
51. The legal position emerging as a result of the above discussion may be summarised as under:
(a) Section 29 (5) of the TM Act 1999 relates to a situation where (i) the infringer uses the registered trademark "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" and (ii) the business concern or trade is in the same goods or services in respect of which the trade mark is registered.
(b) This is in the nature of a per se or a 'no-fault' provision which offers a higher degree of protection where both the above elements are shown to exist. If the owner/proprietor of the registered trade mark is able to show that both the above elements exist then an injunction order restraining order the infringer should straightway follow. For the purpose of Section 29 (5) of the TM Act 1999 there is no requirement to show that the mark has a distinctive character or that any confusion is likely to result from the use by the infringer of the registered mark as part of its trade name or name of the business concern.
(c) However, in a situation where the first element is present and not CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.46 of 59 the second then obviously the requirement of Section 29 (5) is not fulfilled. Where the registered trade mark is used as part of the corporate name but the business of the infringer is in goods or services other than those for which the mark is registered, the owner or proprietor of the registered trade mark is not precluded from seeking a remedy under Section 29 (4) of TM Act 1999 if the conditions attached to Section 29 (4) are fulfilled.
(d) Given the object and purpose of Section 29 (1) to (4), Section 29 (5) cannot be intended to be exhaustive of all situations of uses of the registered mark as part of the corporate name. Section 29 (5) cannot be said to render Section 29 (4) otiose. The purpose of Section 29 (5) was to offer a better protection and not to shut the door of Section 29 (4) to a registered proprietor who is able to show that the registered mark enjoying a reputation in India has been used by the infringer as part of his corporate name but his business is in goods and services other than that for which the mark has been registered.
(e) A passing off action is maintainable in the case of a well known mark even if the goods and services being dealt with by the parties are not similar."
............................................................................................
73. From paragraph numbers 51(a) and (b) of the aforesaid judgment, which are squarely applicable to the facts and circumstances of the present case and in view of the aforesaid discussion, I hold that the plaintiff no.1 is entitled to a decree of permanent injunction thereby restraining the defendant, its proprietors, partners, agents, or any other persons acting on its behalf, from using the registered trademark "CHANDRA" as (or part thereof) or the name of its business concern or part thereof, "Chandra Engineers," or in any manner whatsoever. The defendant's use of "CHANDRA" in its trade name constitutes a clear trade mark infringement under Section 29(5) of the Trade Marks Act, 1999, as it satisfies both elements of the provision:
CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.47 of 59
(i) the defendant uses the plaintiff no. 1's registered trademark "CHANDRA" as part of its trade name, and
(ii) the defendant's business, involving services such as installation, maintenance, and repair of air conditioning apparatus (Class 37), is closely related to the plaintiff no .1's registered goods under Class 11, namely freezing and cooling machines, air conditioning apparatus, and stabilizers.
The precedent in Bloomberg Finance Lp v. Prafull Saklecha & Ors. (2013) (Supra) reinforces that Section 29 (5) is a per se provision, requiring no proof of distinctiveness or likelihood of confusion when both elements are met, as is the case here. The defendant's reliance on Section 35 of the Act is untenable, as it is a partnership firm, not a natural person, and Section 35 does not extend to a non-natural person, as established in Goenka Institute of Education v. Anjani Kumar Goenka(Supra). Furthermore, the defendant's arguments based on Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd. (Supra) and Jindal Industries Pvt. Ltd. v. Suncity Sheets Pvt. Ltd.(Supra), are distinguishable due to factual and legal differences, including the lack of registration of trademark by the defendant, the distinctiveness of the plaintiff's mark, and the absence of estoppel. Accordingly, this issue is decided in favour of the plaintiff no.1 only and against the defendant.
ISSUE No. 2CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.48 of 59
2. Whether the plaintiff is entitled for decree for of mandatory injunction directing the defendant for delivering all material using the trademark "CHANDRA" as alleged? OPP
74. The onus to prove this issue was on the plaintiff.
75. From the pleadings of the parties, documents placed on record and arguments advanced by Ld Counsel for both the parties, it is evident that the defendant is not engaged in manufacturing of any products under class 11 of the Trade Mark Act and rather a service provider qua the said products and also selling the products falling under class 11 made by third parties. Accordingly, except for baldly praying for the delivery of all the material by the defendant having the trade mark 'CHANDRA', plaintiffs have not been able to produce any cogent and convincing material on record to show that the defendant is using 'CHANDRA' on any products being manufactured by it and therefore no such relief can be granted to the plaintiff. Accordingly, this issues is decided against the plaintiff no.1 and in favour of the defendant.
ISSUE No. 33.Whether the plaintiff is entitled for damages of Rs. 20,00,000/- from the defendant as alleged? OPP
76. The onus to prove this issue was on the plaintiff.
77. Ld Counsel for the plaintiffs has stated that defendant has CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.49 of 59 publicized/ advertised its goods under the name "Chandra Engineers" in a stylized Logo in a popular Trade Magazine: 99 Food Mantra, in addition to using the word 'Chandra' in its trade name, it is further asserted that the plaintiffs had also advertised its goods under Class 11, which advertisement was just pages apart from the defendant's advertisement in the April 2022 Edition, which advertisements were deceptively similar and going to give an undue advantage to the defendant by pitching its goods to the plaintiffs' customers, and thereby diluting the plaintiff's Trade Mark. It is claimed that the said act of advertisement along with the continuing infringement of the registered trademark of the plaintiff as a trade name by the defendant has resulted in loss of loss of sales to the plaintiff. Accordingly, the plaintiffs have claimed that plaintiffs are entitled to damages to the tune of Rs.20,00,000/-.
78. Per contra, the Ld Counsel for the defendant has claimed that the plaintiffs have failed to adduce any documentary evidence or witness demonstrating the loss suffered by the plaintiffs by defendant's use of its trade name as 'Chandra Engineers'. He has further asserted that since the party seeking damages bears the burden of proving the quantum of loss, the plaintiff has failed to prove any such entitlement on account of damages to be paid by the defendant.
79. At this stage, the sealed envelope containing the sales figures of CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.50 of 59 the defendant for the period 01-02-2022 to 31-05-2024 has been opened.
80. The sealed envelope containing the defendant's sales figures for the period from 01-02-2022 to 31-05-2024 reveals that total sales of Rs. 11,17,71,491/- was done in the aforesaid period. The issue of damages in this case is governed by Section 135 of the Trade Marks Act, 1999, which allows for compensatory damages, an account of profits, or nominal damages to remedy trademark. However, in my considered opinion the plaintiff has not provided evidence of actual loss, such as reduced sales or harm to goodwill, to support the claimed damages of Rs. 20,00,000/-. The defendant's sales figures of Rs. 11,17,71,491/- over 28 months indicate significant commercial activity, but no evidence links specific sales to the infringing use, precluding a precise account of profits. The defendant's sales figures, while substantial, do not directly quantify infringing profits, but the infringement justifies damages to protect the plaintiff's rights. However in my considered opinion it was for the defendant to show the actual profit on the said sales figures as defendant only was in knowledge of the same and in absence thereof, adverse presumption against the defendant is drawn. In view of the above, the plaintiff is entitled to damages, but not the claimed Rs. 20,00,000/-. The Court awards Rs. 5,00,000/- as nominal damages to be paid by the defendant for the infringement of the CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.51 of 59 plaintiff no.1's trademark. Accordingly, Issue No. 3 is decided in favor of the plaintiff no.1 and against the defendant.
ISSUE NO. 55.Whether the suit is barred by limitation? OPD
81. The onus to prove this issue was on the defendant.
82. Ld Counsel for the defendant has claimed that the plaintiff has failed to disclose the date / month /year when it came to know about the alleged infringement of its trademark, and since the period of limitation for filing a suit for infringement of a trademark is three years from the date of infringement, the present suit is barred by limitation. It is further claimed by the defendant that it is using the trade name 'Chandra Engineers' for the past more than 30 years and this fact is well within the knowledge of the plaintiff as per CPWD bid document Ex. DW-1/6.
83. On the other hand, ld Counsel for the plaintiff has claimed that since the cause of action is in continuation as the defendant is still using plaintiffs' trademark as their business/trade name, accordingly, the suit is well within limitation. I find force in the said argument of Ld Counsel for the plaintiff and accordingly hold that since the infringement of plaintiff's trade mark by the defendant is in continuation, therefore it was plaintiff no.1's prerogative to decide as to when to file the suit, as it was a continuing cause of action and hence the present suit is within CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.52 of 59 limitation.
84. The present issue is accordingly decided against the defendant and in favour of plaintiff no.1.
ISSUE NO. 66.Whether the suit is not maintainable? OPD
85. The onus to prove this issue was on the defendant.
86. The Ld Counsel for the defendant has claimed that the relief of injunction sought by the plaintiff against the defendant's use of its trademark 'CHANDRA' as 'Chandra Engineers' is baseless in as much as the defendant is using its trade name Chandra Engineers, which is protected under Section 35 of the Trade Marks Act, 1999. Furthermore, it is argued by the Ld Counsel for the defendant that the plaintiff had made only the defendant's unregistered partnership firm as a party, without separately impleading its partners as additional defendants, in spite of taking of objection in this regard in the written statement, and hence the suit is bad for non-joinder of necessary parties.
87. Per contra, the Ld Counsel for the plaintiff has relied upon a judgment of the Hon'ble High court of Delhi titled as M/s Divine Messangers Vs Dr Prerna Diwan (supra), and the relevant paragraphs are reproduced as under:-
"7. Insofar as the non-impleadment of Shri Shastri, the second partner of the Defendant Firm, is concerned, Trial Court rejected CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.53 of 59 the contention of the Defendant on the ground that if a Partnership Firm is sued, service upon one of the partners is valid service and in any case, it is not imperative that each and every partner has to be impleaded and/or served. Trial Court also noted that no separate claim was raised by Shri Shastri dehors his character as a partner of the Firm and all acts from entering into a lease deed to payment of the lease rent, etc. were undertaken in the capacity of a partner of Defendant Firm.
8. In my view, Trial Court has rightly dismissed the application and in this context provisions of Order XXX Rules 3, 5 and 6 CPC are explicitly clear and are extracted hereunder for ready reference:
"3. Service. - Where persons are sued as partners in the name of either firm, the summons shall be served either -
(a) upon any one or more of the partners, or
(b) at the principal place at which the partnership business is carried on within [India] upon any person having, at the time of service, the control or management of the partnership business, there, as the Court may direct; and such service shall be deemed good service upon the firm so sued, whether all or any of the partners are within or without [India]:
Provided, that in the case of a partnership which has been dissolved to the knowledge of the plaintiff before the institution of the suit, the summons shall be served upon every person within [India] whom it is sought to make liable.
5. Notice in what capacity served. - Where a summons is issued to a firm and is served in the manner provided by rule 3, every person upon whom it is served shall be informed by notice in writing given at the time of such service, whether he is served as a partner or as a person having the control or management of the partnership business, or in both characters, and, in default of such notice, the Neutral Citation Number: 2023:DHC:2890
6. Appearance of partners. - Where persons are sued as partners in the name of their firm, they shall appear individually in their own names, but all subsequent proceedings shall, nevertheless, continue in the name of the firm."
9. A conjoint reading of the provisions of Order XXX CPC leads this Court to conclude that when a Partnership Firm is sued, Plaintiff can choose either to sue the partners without bringing on record the Partnership Firm and is equally entitled to bring an CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.54 of 59 action against some partners to the exclusion of the others. This position of law is fairly well settled and as a ready reference, I may only refer to a judgment of the Bombay High Court in Aftab Currim v. Ibrahim Currim & Sons and Others, 2022 SCC OnLine Bom 801, which I am persuaded to follow and the relevant paras are as follows:-
"9. In order to bolster up the aforesaid submission, Mr. Khandekar placed reliance on a Division Bench judgment of the High Court of Jammu and Kashmir in the case of Jodh Singh Gujral v. S. Kesar Singh1. In the said case, the tenability of the suit was assailed on behalf of the defendants by canvassing a submission that the omission on the part of the plaintiffs to bring all the partners in the array of the defendants is fatal to the maintainability of the suit when the suit is not brought against the firm under the provisions of Order XXX Rule 1 of the Civil Procedure Code, 1908 ("the Code"). Repelling the contention, the Jammu and Kashmir High Court observed that the said contention overlooks the provisions of Section 43 of the Indian Contract Act, 1872, and was also based upon the misconception of the provisions of Order XXX Rule 1 of the Code. After adverting to the provisions contained in Section 43 of the Contract Act, which provides that when two or more persons make joint promise, the promisee may, in the absence of express agreement to the contrary, compel any one or more of such joint promisors to perform the whole of the promise. the Division Bench held that, there was no reason why the principle contained in Section 43 shall not apply to the partners.
10. To arrive at the said conclusion the Division Bench drew support from a Division Bench judgment of this Court in the case of Molilal v. Ghellabhai2 ILR 17 Bombay, which was followed by the Madras High Court in the case of Narayan Cheety v. Laxman Chetti3 ILR Madras, 256. The observations of the Jammu and Kashmir, High Court, which, in turn, incorporated the aforesaid pronouncements, are to be found in paragraphs 8 to 12 of the report.
Neutral Citation Number: 2023:DHC:2890 "8. Even so, the question is whether S. 43, Contract Act applies to partners. There appears no reason in principle why it should not, and there is sufficient authority for holding that it does. (9) In Lukmidas Khimji v. Purshotam Haridas, ILR 6 Bom 700 it was held that "in a suit brought upon a contract made by a firm the CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.55 of 59 plaintiff may select as defendants those partners of the firm against whom he wishes to proceed, allowing his right of suit against those whom he does not make defendants to be barred."
(10) THIS decision was based upon the provisions of S. 43 of the Contract Act.
(11) In Motilal v. Ghellabhai, ILR 17 Bom 6 (at page 11) a Division Bench of the Bombay High Court approving the decision in ILR 6 Bom 700 slated as follows:
"The provisions of S. 43 Contract Act, which gives the right to the creditor to compel any one of the joint contractors, or the representatives of a deceased contractor, to perform the contract, seems new both in the case of ordinary joint contractors and in that of partners jointly contracting; as far as the liability under a contract is concerned, it appears to make all joint contracts joint and several. We cannot doubt but that these sections, which we have referred to, relate to partners as well as to other co- contractors. It has been so decided in Lukmidas Khimji v. Purshotam Haridas, ILR 6 Bom 700. and we think rightly. If the legislature had intended to except partners from the provisions of these sections, it would have done so in express words. There is no reason for thinking that the general rules laid down in Chapter IV of the Contract Act are not applicable to partners as well as to other contracting parties. The sections under consideration seem, on the contrary, to be intended to assimilate the law relating to joint contract generally that which has always been applied to partners contracting jointly."
(12) The decision in ILR 6 Bom 700 was followed by a Bench of the Madras High Court in Narayana Chetti v. Lakshmana Chetti, ILR 21 Mad 256, in a case relating to partners, where they held:
"According to the law declared in the Contract Act, S. 43, especially when taken with S. 29 of the Civil Procedure Code, it is clear that it is not incumbent on a person dealing with partners to make them all defendants. He is at liberty to sue any one partner as he may choose."
11. On the aspect of applicability of the provisions contained in Order XXX Rule 1 of the Code, in the said case, the Division Bench Neutral Citation Number: 2023:DHC:2890 "17. Mr. L. N. Sharma for the respondents has argued that the plaintiff ought to have framed the suit under O.30 R.1, Civil P. C. if he did not CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.56 of 59 choose to implead all the partners as party defendants. What I have already stated is sufficient to demonstrate the untenability of the argument that it is incumbent on the plaintiff to bring the suit against all the partners and that he is not entitled to seek relief against some of the partners chosen by him. The argument that the plaintiff is bout to bring the action under O. 30, R.1, Civil P.C. is equally untenable. Order 30, R.1 only prescribes a convenient procedure for suing a firm. It does not vary or abrogate the right which is available to the plaintiff under the provisions of S.43 of the Contract Act. Nor does O. 30, R.1 control or over-ride the provisions of O. 1, R.6 of the Civil P. C. The plaintiff can well chose to sue the partners without bringing on record the firm itself. He is equally entitled to bring an action against only some of the partners. Order 30 R. I which merely prescribes the procedure in case the plaintiff desires to sue the firm does not in any manner affect this right of the plaintiff."
12. The Division Bench, in terms, observed that Order XXX Rule 1 is only a convenient procedure for suing a firm. It does not vary or abrogate the right which is available to the plaintiff under the provisions of Section 43 of the Contract Act. Nor does Order XXX Rule 1 control or override the provisions of Order I Rule 6 of the Code. The plaintiffs can choose to sue the partners without bringing on record the firm itself. He is equally entitled to bring an action against only some of the partners. Order XXX Rule 1 merely prescribes the procedure in case the plaintiff desires to sue the firm. However, it does not in any manner affect the right of the plaintiffs flowing from the provisions contained in Section 43 of the Contract Act.
13. The aforesaid pronouncement of Jammu and Kashmir High Court was followed by the Allahabad High Court in the case of Gokul Prasad v. Additional District and Sessions Judge, (2003) 1 ARC 347.
14. The matter can be looked at from a slightly different perspective. Defendant no. 4 asserts that the impleadment of the rest of the partners of defendant no. 1 - firm becomes imperative in the wake of the notice of dissolution of firm given by defendant no. 1 on 21st December, 2021. There is no qualm over the claim of the plaintiffs that defendant no. 1 is a registered partnership firm and defendant nos. 2 to 4 are its partners. Section 25 of the Partnership Act, 1932, provides that every partner is liable, jointly with all the other partners and also severally for all acts of the firm CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.57 of 59 done while he is a partner. It is trite, a firm is not legal entity. A partnership firm is only a collective or compendious name for all the partners. To put it in other words, a partnership firm does not have any Neutral Citation Number: 2023:DHC:2890 against firm in the name of the firm has the same effect like a decree in favour of or against the partners. When the firm incurs a liability, it can be assumed that all the partners have incurred that liability and so the partners remain liable jointly and severally for all the acts of the firm.
15. If this nature of the liability of the partners of a firm is considered in juxtaposition with the provisions contained in Section 43 of the Contract Act, it becomes explicitly clear that the plaintiffs are not enjoined to implead all the partners of the firm. I am, therefore, persuaded to agree with the submissions on behalf of the plaintiffs that the impleadment of the rest of the partners is not necessary."
10. Therefore, there is no merit in the contention of the Defendant that non-impleadment of Shri Shastri as one of the partners of the Defendant Firm was fatal to the suit of the Plaintiff."
88. Accordingly, in view of the facts of the present case and the aforesaid judgment relied upon by Ld Counsel for the plaintiffs, I am of the considered opinion that the non-impleadment of the partners of defendant no. 1 firm, is not fatal to the case of the plaintiff. In view of the above discussion, this issue is decided against the defendant and in favour of the plaintiff no.1. ISSUE NO. 7.
7.Whether there is no cause of action against the defendant? (OPD)
89. The onus to prove this issue was on the defendant.
90. In view of my findings to issue no. 1, this issue is also decided against the defendant and in favour of the plaintiff no.1.
CS No. 438/2021 M/s. Multifrig Marketing Co. Pvt. Ltd. & Anr. Vs M/s. Chandra Engineers Page No.58 of 59 RELIEF
91. In view of my findings to issues no. 1, a decree for permanent injunction is passed in favour of plaintiff no.1 only and against the defendant, thereby restraining the defendant, its proprietors, directors, partners, principal officers, agents, family members, servants, dealers, distributors and/ or anyone acting for and on their behalf from using the Registered Trade Mark "CHANDRA" bearing Trade Mark No.395389 as its business/trade name. Plaintiff no.1 shall also be entitled to damages to the tune of Rs.5,00,000/- along with cost of the suit.
Suit is accordingly decreed in favour of the plaintiff no.1 only and against the defendant in above terms.
Decree sheet be drawn accordingly. Digitally signed
by ASHUTOSH
File be consigned to record room. ASHUTOSH KUMAR
KUMAR Date:
2025.06.04
16:02:44 +0530
Announced in open (Ashutosh Kumar)
Court on 04-06-2025 District Judge (Commercial Court)-01
West, Tis Hazari Courts, Delhi
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