Delhi High Court - Orders
Ms. Anand And Anand vs John Does & Ors on 14 August, 2024
$~38
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 692/2024, I.A. 36547/2024, I.A. 36548/2024, I.A.
36549/2024 & I.A. 36550/2024
MS. ANAND AND ANAND .....Plaintiff
Through: Mr. Jayant Mehta, Sr. Adv. & Mr.
Nishchal Anand, Advocates.
versus
JOHN DOES & ORS. .....Defendants
Through: Mr Divyam Nandrajog, (Panel
Counsel, GNCTD) with Ms. Surbhi
Som, Advocates for D-3 & D-4.
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
ORDER
% 14.08.2024
I.A. 36549/2024 (Application seeking exemption from filing
original/clearer/ legible copies of documents)
1. The present is an application under Section 151 of the Code of Civil Procedure, 1908 ("CPC"), filed on behalf of the plaintiff, seeking exemption from filing original/clearer/legible copies of documents.
2. Exemption is granted, subject to all just exceptions. Plaintiff shall file legible, clear, and translated copies of the documents with proper margins, on which the plaintiff may seek to place reliance, before the next date of hearing.
3. With the aforesaid directions, the application is disposed of.
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 20/08/2024 at 01:09:26 I.A. 36550/2024 (Application under Section 12A of the Commercial Courts Act, 2015, r/w Section 151 CPC, seeking exemption from undergoing Pre-Institution Mediation)
4. The present is an application under Section 12A of the Commercial Courts Act, 2015, read with Section 151 CPC, seeking exemption from undergoing Pre-Institution Mediation.
5. Having regard to the facts of the present case and in the light of the judgment of Supreme Court in the case of Yamini Manohar Versus T.K.D. Keerthi, 2023 SCC OnLine SC 1382, and Division Bench of this Court in Chandra Kishore Chaurasia Versus RA Perfumery Works Private Ltd., 2022 SCC OnLine Del 3529, exemption from attempting Pre-Institution Mediation, is granted.
6. Accordingly, the application stands disposed of. I.A. 36548/2024 (Application under Order XI Rule 1(4) r/w Section 151 CPC)
7. 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.
8. 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 and the Delhi High Court (Original Side) Rules, 2018.
9. With the aforesaid directions, the application is disposed of. CS(COMM) 692/2024
10. At oral request of learned Senior Counsel for the plaintiff, Department of Telecommunication, Ministry of Communications, Government of India is impleaded as defendant no. 6.
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 20/08/2024 at 01:09:26
11. Advance service has been done on all the defendants.
12. Let the plaint be registered as suit.
13. Issue summons. Summons is accepted by learned counsels appearing for defendant nos. 3, 4 & 5 and newly impleaded Proforma defendant no. 6. Issue summons to the other defendants, by all the modes.
14. Let written statement be filed by the defendants within thirty days 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.
15. Liberty is given to the plaintiff 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 plaintiff, an affidavit of admission/denial of documents of the defendants, be filed by the plaintiff, 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 timelines.
16. List before the Joint Registrar (Judicial), for marking of exhibits, on 16th October, 2024.
17. List before the Court on 16th December, 2024.
I.A. 36547/2024 (Application under Order XXXIX Rules 1 and 2 read with Section 151 CPC)
18. The present suit has been filed by the plaintiff for permanent injunction restraining infringement of copyright and trademarks, passing off; damages, rendition of accounts, delivery up, etc.
19. It is submitted that the Plaintiff, i.e., M/s. Anand and Anand, is India's top full-service Intellectual Property law firm, providing end-to-end legal 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 20/08/2024 at 01:09:27 solutions across all facets of Intellectual Property and allied areas. The firm is professionally managed by 28 Partners and currently employs over 400 people, including over 100 qualified attorneys / engineers.
20. It is submitted that the plaintiff services a diverse portfolio of clients in conventional IP areas, such as trademarks, patents, designs, trade secrets and confidential information, etc. It is submitted that the plaintiff specialises in copyright in media and entertainment law, and represents authors, musicians, software programmers, artists, designers, etc.
21. It is submitted that the plaintiff has a fully functional website at www.anandandanand.com, which domain was registered on 10th January 1999. The plaintiff through its predecessors-in-business and title was established in the year 1923 and has ever since been providing its legal services to clients in India and across the globe.
22. It is submitted that the trade name/trademark ANAND AND ANAND (A&A) is derived from the surname of the plaintiff's founders Late Shri N.K. Anand and Late Shri Raj Anand. The plaintiff adopted the trademark ANAND AND ANAND sometime in the year 1980 and since then, the plaintiff has been uninterruptedly and continuously using the said mark and it has acquired immense repute, goodwill and secondary significance in the legal industry that by mere mention of the word/name ANAND AND ANAND, everyone would immediately associate the same solely with the plaintiff.
23. It is submitted that on account of its highly distinctive nature and the pioneering activities of the plaintiff in the legal field, the mark ANAND 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 20/08/2024 at 01:09:27 AND ANAND & has acquired an excellent reputation from the very beginning.
24. It is submitted that the plaintiff is the proprietor of the mark ANAND AND ANAND & by virtue of priority in adoption, long, continuous and extensive use, and the reputation consequently accruing thereto, in the course of trade. The plaintiff has exclusively used the mark ANAND AND ANAND & as a trademark so that it is uniformly perceived as indicative of the source of the services emanating from the plaintiff.
25. It is submitted that the plaintiff is acknowledged to be the standard bearers of excellence in quality legal services and professional ethics in India as well as abroad. The plaintiff being the proprietor of the mark ANAND AND ANAND & holds exclusive rights in the said trademark and is entitled to take action against its unauthorized use by third parties in relation to any class of goods or services and in any manner whatsoever.
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 20/08/2024 at 01:09:28
26. It is submitted that the plaintiff is also the registered proprietor of the word mark ANAND AND ANAND and the device mark in various classes.
27. The plaintiff has various trademark registrations in its favour for the mark ANAND AND ANAND, as under:
28. It is submitted that initially the plaintiff was using the logo . Subsequently in the year 2016, the plaintiff designed a new distinctive and 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 20/08/2024 at 01:09:28 unique logo i.e., . The plaintiff also has various trademark registrations for the said logo /device, details of which are given as below:
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 20/08/2024 at 01:09:28 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 20/08/2024 at 01:09:29
29. It is submitted that the plaintiff's said logo / device mark and also constitute an original artistic work under the provisions of the Copyright Act, 1957 and the plaintiff is, therefore, the owner of the copyrights to the said logo / device mark.
30. It is submitted that due to the nature of exceptional and top-quality legal services provided by the plaintiff under the marks ANAND AND ANAND & , coupled with the numerous path breaking judgments 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 20/08/2024 at 01:09:29 obtained by the plaintiff for their clients, including the various philanthropic activities and the long, uninterrupted and continuous use of the said marks, the said marks enjoy significant goodwill and reputation and the same have now become exclusively associated with the plaintiff and no one else, and has also acquired a secondary significance. Therefore, the plaintiff's marks ANAND AND ANAND & are well-known trademarks within the meaning of Section 2(1)(zg), read with Section 11(6) of the Trade Marks Act, 1999.
31. It is submitted that sometime during July - August 2024, the plaintiff started getting numerous emails from clients and associates stating that they have received emails / messages claiming to be the plaintiff, whilst using the plaintiff's well-known and registered marks ANAND AND ANAND & and making false claims, allegations and requisitions. Details of the fake and fraudulent emails that have been circulated by the unknown defendant no. 1 / John Doe(s), as given in the table in the plaint, is reproduced as under:
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 20/08/2024 at 01:09:29 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 20/08/2024 at 01:09:30 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 20/08/2024 at 01:09:34 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 20/08/2024 at 01:09:35 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 20/08/2024 at 01:09:37 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 20/08/2024 at 01:09:38 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 20/08/2024 at 01:09:39 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 20/08/2024 at 01:09:40 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 20/08/2024 at 01:09:41 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 20/08/2024 at 01:09:41 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 20/08/2024 at 01:09:42 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 20/08/2024 at 01:09:43 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 20/08/2024 at 01:09:43 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 20/08/2024 at 01:09:44 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 20/08/2024 at 01:09:44 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 20/08/2024 at 01:09:45 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 20/08/2024 at 01:09:45
32. The fraudulent email-Ids, as given the plaint that are known to the Plaintiff as on date are:
i) [email protected]; ii) [email protected]; iii) [email protected]; iv) [email protected]; v) [email protected]; vi) [email protected]; vii) [email protected]; viii) [email protected]; ix) [email protected]; x) [email protected]; xi) [email protected]; xii) [email protected]; and xiii) [email protected].
33. Thus, it is submitted that the plaintiff is flooded with emails from their clients and associates, stating that they have been contacted by persons impersonating as the plaintiff whilst unauthorizedly using the plaintiff's well-known and registered marks ANAND AND ANAND & . Due to 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 20/08/2024 at 01:09:45 the sheer volume of such fraudulent emails, the plaintiff addressed an email dated 5th August, 2024 to the Proforma defendant no. 2 requesting them to immediately take appropriate action and to block the said fraudulent Gmail IDs. A similar email was also addressed to Dropbox on 6th August, 2024 to block the abovementioned fake emails received from them.
34. Subsequently, the plaintiff also filed a complaint on 05th August, 2024 via email to the Commissioner of Police, Delhi in this regard. Further, the plaintiff also filed an online complaint with the National Cyber Crime Reporting Portal.
35. It is further submitted that to safeguard public interest and also to protect its own interests, the plaintiff has also put up a caution notice on their website, www.anandandanand.com.
36. It is submitted that the persons / entities who have received the fraudulent emails from the unknown main Defendant No. 1 / John Doe(s), may comply with their illegal demands believing that the plaintiff has issued the same. The recipients of such fraudulent emails issued by the unknown main defendant no. 1 / John Doe(s), may even open the attachments to such fraudulent emails containing malicious files, which may in turn compromise the security of their computer / systems and they may end up losing their personal information, money, passwords, other confidential and proprietary information etc. and in such an eventuality, the plaintiff will be blamed for no fault of theirs.
37. The unknown main defendant no. 1 / John Doe(s) are hiding behind the walls of anonymity on the internet and impersonating as the Plaintiff and its Managing Partner Mr. Pravin Anand, by unauthorizedly using the well- known personal name PRAVIN ANAND as well as the plaintiff's registered 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 20/08/2024 at 01:09:46 trademark and copyright ANAND AND ANAND & . The acts of the unknown main defendant no. 1 / John Doe(s), not only amount to cheating and impersonation, but also amounts to infringement of the plaintiff's registered and well-known trademarks ANAND AND ANAND & and also amounts to infringement of the plaintiff's copyright to the unique and distinct artistic work that forms part of the plaintiff's logo . The defendant no. 1 / John Doe(s)' acts also amount to passing off.
38. Thus, it is submitted that the malafides of the main unknown defendant no. 1 / John Doe(s), is manifest and evidence that the infringement being carried out, is deliberate and intentional and that the plaintiff is being targeted. It is submitted that the main unknown defendant no. 1 / John Doe(s) are aware of the well-known nature and repute of the plaintiff and its Managing Partner, and have intentionally adopted the name PRAVIN ANAND and the plaintiff's registered and well-known trademarks ANAND AND ANAND & to free ride upon the huge repute and goodwill associated with the said marks, and to defraud the plaintiff's clients and associates and the general public. The main unknown defendant no. 1 / John Doe(s) behind the said fraudulent E-mails, cannot give any plausible explanation for the use of the plaintiff's name, marks and identity.
39. Considering the aforesaid submissions, this court is of the view that the plaintiff has established a prima facie case in its favour. The balance of 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 20/08/2024 at 01:09:46 convenience also lies in favour of the plaintiff and against the defendants. Further, irreparable loss shall be caused to the plaintiff if interim directions are not passed in favour of the plaintiff.
40. Accordingly, the following directions are issued:
(i) Defendant nos. 2 to 6 are directed to immediately block and blacklist the E-mail IDs, as noted hereinabove, including, the telephone numbers of the persons who own and operate the said E-
mail IDs, as available with the service providers while registering the same;
(ii) The defendant no. 1 / John Doe(s), who own and operate the E- mail-IDs as noted hereinabove, are restrained from using the plaintiff's registered trademarks / logos ANAND AND ANAND (A&A) or or any other deceptively similar marks/logos thereto, in any form or manner, amounting to the infringement of the Plaintiff's registered trademarks and copyright vested in such logos and also from using the plaintiff's current logo or the old logo or any deceptively similar marks/logos thereto in any form or manner, amounting to passing off of the defendant no. 1/ John Doe(s)' fraudulent emails and claims, as that of the plaintiff's;
(iii) The defendant no. 1 / John Doe(s), who own and operate the E- mail-IDs as noted hereinabove, are restrained from using the personal name of the plaintiff's Managing Partner, Mr. Pravin Anand;
(iv) The defendant nos. 2 to 6 are directed to divulge the identity 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 20/08/2024 at 01:09:47 and details of the persons who own and operate the aforesaid E-mail IDs, including IP addresses, telephone number, etc. to the plaintiff.
(v) In case the plaintiff becomes aware of any further fraudulent E- mails that may be circulated by the defendant no. 1 / John Doe(s), or any telephone number, the plaintiff is at liberty to bring the same to the notice of this Court, for passing appropriate orders with regard to the same.
41. The plaintiff is granted liberty to publish a public notice informing the general public about the fact of the various false communications being issued by unknown persons, thereby using and infringing the registered trademark/logo/trade name and names of representatives of the plaintiff firm, and also the fact regarding the filing of the present suit.
42. Issue notice to the defendants by all permissible modes upon filing of process fee returnable on the next date of hearing.
43. Notice is accepted by learned counsels appearing for defendant nos. 3 to 6.
44. Let reply be filed by the defendants within a period of four weeks. Rejoinder thereto, be filed within a period of two weeks, thereafter.
45. Compliance of order XXXIX Rule 3 CPC, be done within a period of one week from today.
46. List before the Court on 16th December, 2024.
MINI PUSHKARNA, J AUGUST 14, 2024 au 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 20/08/2024 at 01:09:48