Zed Lifestyle Pvt Ltd vs Hardik Mukeshbhai Pansheriya & Ors on 4 May, 2021

[Cites 3, Cited by 0]

Delhi High Court - Orders

Zed Lifestyle Pvt Ltd vs Hardik Mukeshbhai Pansheriya & Ors on 4 May, 2021

Bench: C.Hari Shankar

                          $~9(Original Side)
                          *     IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +     CS (COMM) 207/2021, I.A. 5970/2021, I.A. 5971/2021, I.A.
                                5972/2021, I.A. 5973/2021, I.A. 5974/2021, I.A. 6006/2021
                                I.A. 6088/2021 & I.A. 6089/2021

                                ZED LIFESTYLE PVT LTD                                ..... Plaintiff
                                                   Through:     Mr. Sanjeev Sindhwani, Sr.
                                                                Adv. With Ms. Anuradha
                                                                Salhotra, Mr. Sumit Wadhwa,
                                                                Mr. Ankit Rastogi & Ms. Aditi
                                                                Menon, Advs.
                                            versus
                                HARDIK MUKESHBHAI PANSHERIYA & ORS.
                                                                 ..... Defendants
                                                   Through:     None
                                CORAM:
                                HON'BLE MR. JUSTICE C.HARI SHANKAR
                                          ORDER

                          %               04.05.2021
                                    (Video-Conferencing)

I.A. 6088/2021, I.A. 6006/2021, I.A. 5971/2021& I.A. 5972/2021 (under Section 151 of CPC, 1908 - for exemption)

1. Exemptions allowed subject to all just exceptions.

2. The application stands disposed of.

I.A. 5974/2021 (under Order XI, Rule 1(4) (as amended by the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015), read with Section 151 of CPC, 1908- seeking leave to file additional documents)

1. Subject to the right of the defendants to admit or deny the same, the plaintiff is permitted to file additional documents, within four Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 207/2021 Page 1 of 12 Signing Date:06.05.2021 15:50:17 weeks from today.

2. The application stands disposed of.

I.A. 5973/2021(under Section 151 of CPC, 1908 - for exemption)

1. Subject to the plaintiff filing translated copies of any documents in vernacular on which he may seek to place reliance, within four weeks from today, exemption is granted for the present.

2. The application stands disposed of.

CS(COMM) 207/2021

1. Issue summons. Written statement, accompanied by affidavit of admission and denial of documents, filed by the plaintiff, be filed within four weeks, with advance copy to learned counsel for the plaintiff, who may file replication thereto, if any, accompanied by affidavit of admission and denial of the documents filed by the defendants, within two weeks thereof.

2. List before the Joint Registrar for completion of pleadings, admission and denial of documents and marking of exhibits, on 3rd August, 2021.

I.A. 5970/2021 (under Order XXXIX, Rules 1 and 2, read with Section 151 of CPC, 1908 - for ex parte ad interim and interim injunction against the defendants)

1. Mr. Sanjeev Sindhwani, learned senior counsel for the plaintiff, Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 207/2021 Page 2 of 12 Signing Date:06.05.2021 15:50:17 presses for ad interim relief.

2. The plaintiff alleges infringement, by Defendant Nos. 1 and 2, of its registered trademarks as well as passing off, by Defendant Nos. 1 and 2, of their goods as goods of the plaintiff.

3. The plaint sets out, as is customary in such cases, the various details to highlight the reputation and goodwill of the plaintiff, the encomiums earned by the plaintiff by passage of time, the turnover of the plaintiff and the expenses incurred by the plaintiff in promoting its products. For the purposes of the present order, no detailed allusion thereto is necessary.

4. The plaintiff owns registration of the "BEARDO" word mark as well as labels and other marks with pictorial representations including the "BEARDO" mark, in various classes. A tabular depiction of all the registrations held by the plaintiff is provided in Para 8 of the plaint. Inter alia, the plaintiff is the holder of registrations of the "BEARDO" word mark and label mark (with a pictorial representation of a profusely bearded gentleman who looks like Herge's famous creation Captain Haddock), in respect of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics preferably hair oil, lotion, cream, gel for beard, preparations to tend to the beard, face wash, etc. These marks are stated to be valid and subsisting as on date.

5. As on date, the plaintiff has as many as 18 different Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 207/2021 Page 3 of 12 Signing Date:06.05.2021 15:50:17 registrations, involving the "BEARDO" word mark or pictorial representation, in classes 3, 5, 18, 21, 25, 35, 41 and 44.

6. As against this, the Defendant Nos. 1 and 2, have registrations of the "BEARDO" word mark in classes 7 and 11. The registration certificates issued by the Registrar of Trademarks, have been placed on record, along with the plaint at Pages 208 and 214 respectively. The registration granted under Class 7 is in respect of "Mixers [machines]; Mixing machines; Kitchen mixers, electric; Mechanical mixing machines; Electric mixers for household purposes; Grinding machines; Kitchen grinders, electric; Handheld grinders, electric; Machines and machine tools; Pumps, electric; Electric pumps; Fuel pumps for engines; Fuel cell cooling pumps for use in vehicles; Pumps as parts of machines, motors and engines; Pumps and compressors being parts of machines, motors and engines; Pumps and compressors as parts of machines, motors and engines" and the registration in Class 11 is in respect of "LED lighting apparatus; Wastewater treatment apparatus; Refrigerating apparatus; Water conditioning apparatus; Air sterilising apparatus; Air purification apparatus; Underfloor heating apparatus; Refrigerators; Washing coppers; Cooking installations; Water purifying installations; Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes; Hair dryers; Lamps; Lamp bulbs; Fluorescent lamps; LED light bulbs; Light bulbs, electric; Vehicle reflectors; Lamp fittings; Lighting fittings; Outdoor light fittings; Exhaust hoods for kitchens; Kitchen ranges [ovens]; Kitchen blow torches; Kitchen sinks; Kitchen stoves; Air conditioners."

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 207/2021 Page 4 of 12 Signing Date:06.05.2021 15:50:17

7. Mr. Sanjeev Sindhwani, learned senior counsel for the plaintiff, submits that the plaintiff has, by an agreement with amazon.in (Defendant No. 3), exclusive right to display its products on a webpage maintained by amazon.in, under the name "BEARDO STORE". Mr. Sindhwani submits that, however, if, on the amazon.in website, a search is generated using the word "BEARDO", the amazon.in webpage which opens shows, apart from the plaintiff's products, products of Defendant Nos. 1 and 2 as well, which have no resemblance whatsoever with the plaintiff's products such as distilled water for batteries, inflatable air pumps for toy balloons, and even toilet cleaner fluid. They are shown alongside the men's grooming products in which the plaintiff deals and in respect of which the plaintiff has its own registered trademarks.

8. A screenshot of the page which opens on running the "BEARDO" search in amazon.in home page, is provided thus:

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 207/2021 Page 5 of 12 Signing Date:06.05.2021 15:50:17

9. Mr Sindhwani submits that if one were, for example, to click the image of the can towards the lower half of the above webpage, the following page opens:

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 207/2021 Page 6 of 12 Signing Date:06.05.2021 15:50:17

10. Similarly, submits Mr. Sindhwani, another webpage of amazon.in, which opens against this "BEARDO" search, at Page 22 of the documents contains, towards the lower half, the image of a balloon inflator for toy balloons, clicking the said image, opens the following webpage:

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 207/2021 Page 7 of 12 Signing Date:06.05.2021 15:50:17

11. The words "Sold by Beardo Store", to be found towards the lower part of the afore-extracted web-page, submits Mr. Sindhwani, have been entered by the defendants, and constitutes clear misrepresentation. Mr. Sindhwani points out that, though the defendants are thus, by clearly subterfuge, selling their goods using the "BEARDO STORE" facility to which the plaintiff has exclusive entitlement by virtue of its agreement with amazon.in, the products themselves do not bear the mark "BEARDO". This, he submits, is fraud of the highest order by which Defendant Nos. 1 and 2 are clearly not only infringing the registered trademarks of the plaintiff with Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 207/2021 Page 8 of 12 Signing Date:06.05.2021 15:50:17 regard to goods in respect of which they do not possess any valid trademark registrations, but are also seeking to capitalise on the goodwill of the plaintiff to the extent of falsely representing to the public, that their products are also sold on the "BEARDO STORE"

website, as though they have no entitlement thereto.

12. I may note, at this juncture, in fact, if one were to access the "BEARDO STORE" website of amazon.in, the products of the defendants are shown alongside the products of the plaintiff. On the last date of hearing, an opportunity was granted to Defendant Nos. 1 and 2 to produce the agreement, if any, with amazon.in, on the basis of which, their products were being reflected on the "BEARDO STORE"

website, managed and maintained by amazon.in. Though no such agreement has been produced, an additional affidavit has been filed by one Mr. Prasoon Anand, an authorised signatory of the plaintiff, which refers to an e-mail dated 29th April, 2021, from Defendant No. 3, confirming that "the Beardo Store (https://www.amazon.in/stores/page/5FE6A92B-8979-466C BC9FC16FD2AF5045) is an Amazon store of the brand 'Beardo' owned by Zed Lifestyle Private Limited which is represented on Amazon by RHV Enterprises." Thus, submits Mr. Sindhwani, there is no justification for the defendants' products being shown on the "BEARDO STORE", website maintained by amazon.in.

13. In these circumstances, submits Mr. Sindhwani, the plaintiff is clearly entitled to ex parte ad interim injunction in terms of the prayer clause in this application, which reads as under:

"55. Thus, in these circumstances and in the larger interest Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 207/2021 Page 9 of 12 Signing Date:06.05.2021 15:50:17 of justice, it is most humbly prayed that this Hon'ble Court may be pleased to grant the following reliefs:

A. Ex-parte ad-interim injunction and an interim injunction against the Defendant Nos. 1 and 2, their successors, franchisees, licensees, distributors, representatives, assignees, agents, and any one acting for and/ or on their behalf from using any mark identical/ deceptively similar to the Plaintiff's mark BEARDO/BEARDO formative marks containing device of a bearded man either by itself or in conjunction with any other word, as a trade mark or as part of trade mark, trade name or part of a trade name, corporate name or part of a corporate name, as a domain name or part of a domain name, as an email address or part of an email address or in any manner whatsoever in relation to its goods/services;

B. Ex-parte ad-interim injunction and an interim injunction directing the Defendants to remove the Impugned Listings of products being listed under the mark BEARDO under the 'Product' category of the BEARDO STORE seller profile starting from the link: https://www.amazon.in/s?me=A3L99P7KKCGKHY&mar ketplaceID=A21TJRUUN4KGV and running into several pages on platform of Defendant No. 3;

C. Ex-parte ad-interim injunction and an interim injunction directing the Defendant No. 3 to delist the BEARDO STORE seller profile and ensure that the Plaintiff's storefront only lists the Plaintiff's genuine products;

D. Cost of the application be awarded to the Plaintiff; and E. Any other relief which this Hon'ble Court thinks fit and proper in the circumstances of the case be allowed in favour of the Plaintiff and against the Defendant."

14. Having heard Mr. Sindhwani at some length, it is clear that the Defendant Nos. 1 and 2 possesses the registration of the "BEARDO" word mark only in respect of items such as LED lighting apparatus, Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 207/2021 Page 10 of 12 Signing Date:06.05.2021 15:50:17 mixers, machines, etc., which are not manufactured or sold by the plaintiff. No prima facie validity of the said marks can apply to the defendants, in respect of items other than these in respect of which it has registrations. There is, therefore, prima facie, merit in the submission of Mr. Sindhwani, that the defendants cannot use the "BEARDO" word mark, in any manner, in selling their products. The e-mail dated 29th April, 2021, from amazon.in also indicates, prima facie, that the products of Defendant Nos. 1 and 2 cannot be reflected on the amazon.in website, maintained by Amazon.

15. The manner in which the products of Defendant Nos. 1 and 2 are reflected on the "BEARDO STORE" website of amazon.in and the fact that the defendants' products such as "BEARDO Distilled Water"

"BEARDO New Two Nozzles High Power Electric Balloon" are being sold by amazon.in, even while the word "BEARDO", or any representation thereof is not being found on the products themselves indicates prima facie, that the defendants are illegally capitalising on the reputation of the plaintiff.

16. In view thereof, I am of the opinion that the plaintiff is entitled to ex parte ad interim relief, so that further infringement of their registered trademarks by the defendants is prevented. Accordingly, Defendant Nos. 1 and 2 are restrained from using the "BEARDO" mark or any mark identical or deceptively similar thereto, or containing the device of a bearded man, in conjunction with the said word mark or in relation to any goods, save and except those in respect of which the Defendant Nos. 1 and 2 possess registrations in Classes 7 and 11. Defendant No. 3 is also directed to ensure that the Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 207/2021 Page 11 of 12 Signing Date:06.05.2021 15:50:17 products of Defendant Nos. 1 and 2 are forthwith removed from the "BEARDO STORE" webpage maintained by amazon.in. Defendant Nos. 1 and 2 are also restrained from reflecting their products, on any website on the internet as being sold by "BEARDO STORE".

17. In as much as the present order is being passed ex parte, the plaintiff shall comply with the provisions of Order XXXIX, Rule 3 of the CPC, 1908, within one week from today.

18. It is made clear that all observations contained in the above order are restricted to the grant of ex parte ad interim relief to the plaintiff and all other issues of fact and law are kept open for argument at the appropriate stage.

19. Defendant Nos. 1 and 2 are also directed to remove the impugned listings of products being listed under the mark BEARDO under the 'Product' category of the BEARDO STORE seller profile starting from the link:

https://www.amazon.in/s?me=A3L99P7KKCGKHY&marketplaceID =A21TJRUUN4KGV and running into several pages on the platform of Defendant No. 3.

20. Accordingly, re-notify on 28th July, 2021, before Court.

C.HARI SHANKAR, J MAY 4, 2021 ss Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 207/2021 Page 12 of 12 Signing Date:06.05.2021 15:50:17

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Delhi High Court - Orders