Delhi High Court - Orders
Triology Solutions Private Limited vs Flipkart Internet Private L Imited & Ors on 30 August, 2024
$~39
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 727/2024 & I.A. Nos. 37524/2024, 37525/2024 &
37526/2024
TRIOLOGY SOLUTIONS PRIVATE LIMITED .....Plaintiff
Through: Mr. Anshuman Upadhyay with
Mr. Naseem, Mr. Rahul Singh and
Ms. Apoorva Sharma, Advocates.
(M): 9911373783
Email: [email protected]
versus
FLIPKART INTERNET PRIVATE L IMITED & ORS. ....Defendants
Through: Mr. Siddharth Chopra, Ms. Shilpa
Gupta, Mr. Naman Tandon and Ms.
Arushi Mann, Advs. for D-1 & 5.
M: 9811284656
Email:
[email protected]
Mr. Nitin Sharma and Ms. Swathi
Pande, Advs. for D-6.
M: 8527486543
Email:
[email protected]
Mr. Saikrishna Rajgopal, Mr. Vivek
Ayyagari, Ms. Anjali Agrawal and
Mr. Abhay, Advs. for D-3.
M: 9897862900
Email:
[email protected]
Ms. Disha Sharma and Mr. Yatinder
Garg, Advs. for D-4.
M: 9899296222
Email:
[email protected]
Ms. Tanya Varma and Mr. Shiv
CS(COMM) 727/2024 Page 1 of 16
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.
The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:29
Mehrotra, Advs. for D-8.
M: 9650260265
Mr. Naman Joshi, Ms. Ritika Vohra,
Mr. Rahul and Ms. Amber Tickoo,
Advs. for A-10.
M: 9193739786
Email: [email protected]
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
ORDER
% 30.08.2024 I.A. 37525/2024 (Application seeking exemption from filing clearer, typed copies, vernacular and originals of cer tain documents)
1. The present is an application under Section 151 of the Code of Civil Procedure, 1908 ("CPC"), on behalf of the plaintiffs, seeking exemption from filing originals, certified copies, clearer copies, translated copies, left side margins, electronic documents etc.
2. Exemption is granted, subject to all just exceptions.
3. Plaintiff shall file legible, clear, and translated copies of the documents, on which the plaintiff may seek to place reliance, before the next date of hearing.
4. Accordingly, the present application is disposed of. I.A. 37526/2024 (Application seeking leave to file additional documents)
5. This is an application under Order XI Rule 1(4) read with Section 151 CPC as amended by the Commercial Courts Act, 2015, seeking leave to file additional documents.
6. The plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of Commercial Courts Act, 2015, CS(COMM) 727/2024 Page 2 of 16 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:29 and the Delhi High Court (Original Side) Rules, 2018.
7. The application is disposed of, with the aforesaid directions. CS(COMM) 727/2024
1. At the outset, learned counsel appearing for defendant nos. 1 and 5 submits that defendant no.5 is not a separate legal entity and is part of defendant no.1. He, thus, submits that defendant no.5 be deleted from array of parties.
2. Learned counsel appearing for the plaintiff submits that he has no objection to the same.
3. Accordingly, let amended Memo of Parties be filed by the plaintiff within a period of one week from today.
4. Let the plaint be registered as suit.
5. Issue summons. Summons is accepted by learned counsels appearing for defendant nos. 1, 3, 4, 6, 8 and 10.
6. Let summons be issued to other defendants by all permissible modes. Summons shall state that the written statement be filed by the defendants within thirty days from the date of receipt of summons. Along with the written statement, the defendants shall also file affidavit of admission/denial of the plaintiffs documents, without which, the written statement shall not be taken on record.
7. Liberty is given to the plaintiffs to file replication within thirty days from the date of receipt of the written statement. Further, along with the replication, if any, filed by the plaintiffs, an affidavit of admission/denial of documents of the defendants, be filed by the plaintiffs, without which, the replication shall not be taken on record. If any of the parties wish to seek inspection of the documents, the same shall be sought and given within the CS(COMM) 727/2024 Page 3 of 16 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:30 timelines.
8. List before the Joint Registrar (Judicial) for marking of exhibits, on 21st October, 2024.
9. List before the Court, on 17th December, 2024.
I.A. 37524/2024 (Application under Order XXXXIX Rules 1 and 2 read with Section 151 CPC on behalf of the plaintiff)
10. The present suit has been filed for permanent and mandatory injunction against the trademark infringement and passing off, copyright infringement, unfair trade practice and for delivery up, rendition of accounts and damages.
11. Learned counsel appearing for the plaintiff submits that plaintiff is a private limited company and lawful and bonafide proprietor of the trademarks and copyrights subsisting in the labels/packaging and the word mark 'Muuchastac'. It is submitted that the goods sold by the plaintiff under its trademarks are medicated and non-medicated cosmetic products, including, hair growth CS(COMM) 727/2024 Page 4 of 16 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:30 oils, facewash, creams, etc. The plaintiff is the creator and owner of the concoctions/recipes for its cosmetic products.
12. It is submitted that the plaintiff holds proprietary as well as moral rights over the photographs/pictures/artistic work and labels that are used for the packaging of its products. These pictures/packaging, are used by the plaintiff for showcasing its products on the online retail platforms.
13. It is submitted that the defendant nos. 12 to 23 are parties that indulge in counterfeiting plaintiff's products on the online retail platform of defendant nos. 1 to 11 by copying the labels, artistic works being the registered trademarks of the plaintiff, packaging, trade dress of the plaintiff's products.
14. It is submitted that plaintiff started the use of its trademark 'Muuchstac' with a unique and distinctive packaging, on 03rd May, 2017. In a short span of time it gained popularity amongst the consumers on all major online retail platforms.
15. It is submitted that the plaintiff is the owner of the domain name www.Muuchstac.com, which is valid and subsisting, as on date. The plaintiff also sells its products from its own website where the mark 'Muuchstac' and copyrights and other artistic work showcasing plaintiff's goods, are clearly visible to the public on the said website www.Muuchstac.com.
16. It is submitted that the business carried on by the plaintiff is extensive and the goods bearing the trademark 'Muuchstac' are available throughout India. Ever since the adoption of its trademark by the plaintiff, the same has been used exclusively, extensively, continuously, without interruption. Owing to the extensive and exclusive use of the trademark 'Muuchstac', the CS(COMM) 727/2024 Page 5 of 16 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:30 same has acquired significant distinctiveness. Therefore, the plaintiff has absolute and exclusive rights to use the same to the exclusion of all others in relation to its goods.
17. It is submitted that in order to acquire statutory rights, the plaintiff has obtained registration of the trademark 'Muuchstac' and the device mark in its favour in the Register of Trademarks. The details of the plaintiff's registration of its marks and a pending application are reproduced, as under:
18. Attention of this Court has also been drawn to the Certificate issued by the Trademark for the device in favour of the plaintiff, which is reproduced as under:
CS(COMM) 727/2024 Page 6 of 16This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:30 CS(COMM) 727/2024 Page 7 of 16 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:30
19. It is submitted that the plaintiff is the owner of the copyright on the original and artistic designs of its labels, the display photographs/pictures showing plaintiff's products, photographed from different angles to showcase on the online retail platforms.
20. Defendant nos. 12 to 23 who counterfeit products by unlawfully copying the plaintiff's trademarks, copyrights and trade dress, use different words such as 'Ovlin', 'Welkin', 'GoReady', 'Semilla', 'Cassidy', 'Vellasio', 'TrimmerOn', 'Chandanvan', 'Man Up', 'Urbanguru', 'Dr.Sparsh' etc. as their trademarks. However, the use of such different trademarks is immaterial as the trade dress of the plaintiff is imitated/reproduced by such defendants in exact identical fashion.
21. It is submitted that the defendant no.12 has not only copied the trade dress of the plaintiff's products but is also using a deceptively similar mark 'Moochtec' in place of plaintiff's registered word mark 'Muuchstac'.
22. It is further submitted that the defendant no.12 has also filed application for registration of the impugned mark 'Moochtec' which has been opposed by the plaintiff. The details of the same are as follows:
23. It is submitted that the plaintiff has also been regularly receiving the complaints from its consumers about the quality, smell and packaging of its products. The plaintiff has found that all such complaints are in relation to the products that have been sold off to unwary consumers by CS(COMM) 727/2024 Page 8 of 16 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:31 unlawful/dishonest imposters and the products so sold off by them are, in fact, counterfeit.
24. The table showing the comparison between the products of the plaintiff and that of the defendants, filed as Document-1, is reproduced as under:
CS(COMM) 727/2024 Page 9 of 16This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:31 CS(COMM) 727/2024 Page 10 of 16 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:31 CS(COMM) 727/2024 Page 11 of 16 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:31 CS(COMM) 727/2024 Page 12 of 16 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:31 CS(COMM) 727/2024 Page 13 of 16 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:31
25. Thus, it is submitted that on account of the unlawful use and enjoyment of the plaintiff's trademarks by the defendants, the plaintiff has suffered significant damage to its reputation and goodwill associated with its trademark. It is submitted that defendants are guilty of passing of their counterfeit products as if such products and services emanated from the plaintiff.
26. At this stage, learned counsel appearing for defendant nos. 1 and 5 submits that similar prayer as sought in the present suit, has also been prayed in a previous suit filed by the plaintiff, i.e., CS(COMM) 709/2022, wherein, judgment dated 28th August, 2023, has been passed. It is submitted that pursuant to the judgment dated 28th August, 2023, the defendant no.1 along with other defendants, is already taking the requisite action and wherever information is provided by the plaintiff, the said listings are brought down.
27. Learned counsel appearing for defendant no.10/India Mart submits that India Mart is the listing site and does not maintain any revenue records.
28. Per contra, learned counsel appearing for the plaintiff has relied upon CS(COMM) 727/2024 Page 14 of 16 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:31 the order dated 16th November, 2022, passed in FAO(OS)(COMM) 304/2022, wherein, the learned Division Bench has made observations with respect to the counterfeit goods being allowed to be sold by the defendants.
29. Learned counsels appearing for the defendants, whose presence is marked as aforesaid, have further pointed out that the plaintiff has not given the details of the URLs in the plaint, on account of which, in case this Court gives any direction, no action can be taken by the defendants, in the absence of information regarding the URLs.
30. Learned counsel appearing for the plaintiff submits that since the list of URLs was long, therefore the same has not been filed along with the present plaint. However, he submits that the list of URLs shall be provided to defendant nos. 1 to 11 for appropriate action, in case directions are passed by this Court.
31. In the above circumstances, the plaintiff has demonstrated a prima facie case of injunction and in case no ex-parte ad interim injunction is granted, the plaintiff will suffer an irreparable loss. Further, balance of convenience also lies in favour of the plaintiff and against the defendants.
32. Accordingly, till the next date of hearing, the defendant nos. 12 to 23, their family members, servants, subsidiaries, aides, agents, representatives and assigns, or others who are acting on their behalf, are restrained from using the registered device mark of the plaintiff and the trade dress/packaging amounting to infringement/passing off of the trademark device and trade dress/packaging of the plaintiff.
33. Further, it is directed that the plaintiff shall provide the list of URLs to defendant nos. 1 to 11. As and when such information is provided by the plaintiff to the said defendants, the defendant nos. 1 to 11 shall take CS(COMM) 727/2024 Page 15 of 16 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:31 appropriate steps to take down the listings of defendant nos. 12 to 23, which amount to passing off counterfeit cosmetic products of the plaintiff.
34. Further, defendant nos. 1 to 11, are also directed to disclose the sales and revenue made by defendant nos. 12 to 22, on their platforms.
35. Issue notice. Notice is accepted by learned counsels appearing for defendant nos. 1, 3, 4, 6, 8 and 10.
36. Let notice be issued to other defendants by all permissible modes, upon filing of Process Fee, returnable on the next date of hearing.
37. Let reply be filed within a period of four weeks.
38. Rejoinder thereto, if any, be filed within two weeks, thereafter.
39. Compliance of Order XXXIX Rule 3 be done, within a period of one week, from today.
40. Re-notify on 17th December, 2024.
MINI PUSHKARNA, J AUGUST 30, 2024/kr CS(COMM) 727/2024 Page 16 of 16 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/09/2024 at 00:51:31