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Delhi High Court - Orders

Pt Djarum vs Bajrang Traders & Anr on 29 August, 2022

Author: Prathiba M. Singh

Bench: Prathiba M. Singh

                          $~14
                          *      IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +             CS (COMM) 593/2022 & I.As.13715-18/2022
                                 PT DJARUM                                        ..... Plaintiff
                                                    Through:       Ms. Geetanjali Visvanathan, Ms.
                                                                   Aishwarya Kane and Mr. Mukul
                                                                   Kochhar,                 Advocates.
                                                                   (M:9910083144)
                                                    versus

                                 BAJRANG TRADERS & ANR.                               ..... Defendants
                                                Through: None.
                                 CORAM:
                                 JUSTICE PRATHIBA M. SINGH
                                          ORDER

% 29.08.2022

1. This hearing has been done through hybrid mode.

I.A. 13716/2022 (for exemption)

2. Allowed, subject to all just exceptions. I.A. 13716/2022 is disposed of.

I.A. 13717/2022 (for additional documents)

3. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act'). The Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act.

4. I.A. 13717/2022 is disposed of.

I.A. 13718/2022 (u/S 12A)

5. This is an application seeking exemption from instituting pre- litigation mediation. In view of the orders passed in CS (COMM) 132/2022 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS (COMM) 593/2022 Page 1 of 7 Signing Date:30.08.2022 18:09:18 titled Upgrad Education v. Intellipaat Software exemption is allowed.

6. I.A. 13718/2022 is allowed and disposed of.

CS (COMM) 593/2022

7. Let the plaint be registered as a suit.

8. Issue summons to the Defendants through all modes upon filing of Process Fee.

9. The summons to the Defendants shall indicate that a written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.

10. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement(s). 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 any documents, the same shall be sought and given within the timelines.

11. List before the Joint Registrar for marking of exhibits on 13th October, 2022. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

12. List before Court on 30th November, 2022.

I.A. 13715/2022 (for stay)

13. The Plaintiff- PT Djarum, an Indonesian company, has filed the present suit for infringement of trademark, passing off, dilution, tarnishment, copyright infringement, damages and other reliefs. The Plaintiff aver that it is one of the largest cigarette and tobacco manufacturers in Indonesia and Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS (COMM) 593/2022 Page 2 of 7 Signing Date:30.08.2022 18:09:18 has been continuously involved in the business of selling of its products in more than 20 countries of the world. According to the Plaintiff, its key markets are Brazil, Eastern Europe, Japan, the Middle East, the Netherlands, Russia, Saudi Arabia, Southeast Asia and the United States. One of the popular products of the Plaintiff is 'DJARUM BLACK' brand of cigarettes which is claimed to be a high quality kretek cigarette introduced for the first time in August, 1996 by the Plaintiff. The device accompanying the said mark is set out below:

14. As per the Plaintiff, the entire mark and device were designed by the Plaintiff in a distinctive form in which the word 'BLACK' is written in white colour and the letter 'A' is depicted in a triangular form in red colour. The earliest registration of the Plaintiff, showing use of the mark since 1996, was granted in the U.S. Patent and Trademark Office (USPTO). The cigarettes under the said marks have several variants such as 'DJARUM BLACK SUPERSMOOTH', 'DJARUM BLACK SUPERSMOOTH MENTHOL', 'DJARUM BLACK BLISS', 'DJARUM BLACK CAPPUCCINO', 'DJARUM BLACK TEA' and 'DJARUM BLACK SLIMZ'.

15. The carton and the packaging of the Plaintiff's product is dark black in colour. For the variant forms, the triangular 'A' device is changed by the Plaintiff in different colours as depicted below:

16. The Plaintiff has applied for registration of the mark and the packaging and three such marks have been registered under Class 34 since 2011 with the user claim of 2009 in India. Various other applications for registration filed by the Plaintiff are currently pending.

17. The Plaintiff also has a copyright registration for the artistic logo form and work bearing registration no. A-116334/2017. According to the Plaintiff, the reputation and goodwill in the said mark and device has transcended geographical boundaries. It is the stand of the Plaintiff that since the mark has been extensively used even in India it is entitled to protection. The global sale figures for the product have also been set out in the plaint.

18. The grievance of the Plaintiff in the present case is that the Defendants namely, Bajrang Traders- Defendant No.1 and Mr. Pavan Bansal- Defendant No.2, have started selling 'PAVAN BLACK SAFETY MATCHES' in an identical logo and device form and in almost identical Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS (COMM) 593/2022 Page 4 of 7 Signing Date:30.08.2022 18:09:18 packaging as that of the Plaintiff. The device of the Defendants is as under:

19. Ld. counsel for the Plaintiff submits that the knowledge of the Defendants' mark was acquired by the Plaintiff when it came across a trademark journal advertisement in Class 34 in respect of safety matches filed by the Defendants. Upon further search, the Plaintiff realized that the Defendants had filed four applications for registration of the 'PAVAN BLACK' device mark. The comparative representation of both the competing marks and logs are set out below:

Plaintiff's mark Defendants' mark

20. The Plaintiff filed oppositions to the Defendants' marks and, thereafter, conducted an investigation into the activities of the Defendants. The investigation revealed that the Defendants were marketing and selling large quantum of match sticks bearing the infringing marks. Thereafter, a Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS (COMM) 593/2022 Page 5 of 7 Signing Date:30.08.2022 18:09:18 legal notice dated 17th June, 2022 was sent by the Defendants calling upon the Plaintiff to give an undertaking that it shall not in future oppose the mark of the Defendants. The same was replied to by the Plaintiff. In rejoinder, the ld. Counsel for the Defendant again sought the 'undertaking' from the Plaintiff on 24th August, 2022 via email. Copy of the said e-mail has been placed on record. Ms. Visvanathan, ld. Counsel appearing for the Plaintiff submits that the Defendants seem to be operating clandestinely and the Plaintiff, despite its best efforts, is unable to trace the manufacturing facility of the Defendants. She further submits that the social media posts and the other information which the Plaintiff has collected shows that truck loads of matches with the infringing mark and device are being sold by the Defendants.

21. Heard ld. Counsel for the Plaintiff and perused the record. The Plaintiff has registered its mark 'DJARUM BLACK' in India and it also has registered copyright in its favour due to which it enjoys statutory rights both under the Trade Marks Act, 1999 and Copyright Act, 1957. The Plaintiff is using the said mark in respect of cigarettes and matches/ match stick packs are clearly cognate and allied products which are used to light cigarettes. Thus, the use of an almost identical device mark, logo, packaging as that of the Plaintiff's would be completely violative of the Plaintiff's rights in its mark. The Court has perused the social media listings of the Defendants and is convinced that the Defendants are manufacturing huge quantities of the product in question. The affidavit of the investigator dated 20th August, 2022 also shows that the investigator has conducted enquiries in three separate addresses of which two are in Hathras, U.P. and one is in Sasni, U.P. However, he was still unable to trace where the manufacturing is being Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS (COMM) 593/2022 Page 6 of 7 Signing Date:30.08.2022 18:09:18 effected by the Defendants.

22. The Plaintiff's investigator has also placed on record the transcript of the phone recordings which also shows that the Defendants are also willing to supply in Delhi upon a minimum order of 1000 bundles of matchboxes being placed and an advance payment being made. Moreover, when such clandestine sales are taking place and the Plaintiff enjoys statutory rights in the mark, this Court would have prima facie jurisdiction to entertain and try the present suit under Section 134 of the Trade Marks Act, 1999, Section 62 of the Copyright Act, 1957 as also under Section 20 CPC. The Court is convinced that the Defendants are manufacturing their products in a clandestine and subterfuge manner. The Plaintiff has made out a prima facie case for grant of an ex parte ad interim injunction. The conditions for grant of such an injunction are satisfied. Accordingly, the Defendants and all other acting for or on their behalf including their manufacturer, seller, distributors, etc., shall stand restrained from using the 'PAVAN BLACK' logo or device or any other mark which is identical or confusingly similar to Plaintiff's 'DJARUM BLACK' mark/device in respect of safety matches, match sticks or any cognate or allied goods till the next date of hearing.

23. Compliance of Order XXXIX Rule 3 within one week.

24. List before the Joint Registrar on 13th October, 2022.

25. List before Court on 30th November, 2022.

PRATHIBA M. SINGH, J.

AUGUST 29, 2022 dj/sk Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS (COMM) 593/2022 Page 7 of 7 Signing Date:30.08.2022 18:09:18