Delhi High Court - Orders
Jk Cement Limited vs Anav Industries & Anr on 23 March, 2022
Author: Jyoti Singh
Bench: Jyoti Singh
$~13
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 179/2022
JK CEMENT LIMITED ..... Plaintiff
Through: Mr. Kirti Uppal, Senior Advocate with
Mr. N.K. Kantawala, Mr. Prakhar Sharma,
Ms. Riya Gulati, Ms. Ikshita Parihar, Mr. Swapnil
Chaudhary and Ms. Vrinda Dayal, Advocates
versus
ANAV INDUSTRIES & ANR. ..... Defendants
Through: None
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
ORDER
% 23.03.2022 I.A. 4533/2022 (Exemption from filing original documents)
1. Allowed, subject to all just exceptions.
2. Plaintiff shall file the originals of the documents, which are in its possession, within two weeks from today.
3. Application stands disposed of.
I.A. 4534/2022 (Exemption from pre-institution mediation as per Section 12A of the Commercial Courts Act, 2015)
4. For the reasons stated in the application, the requirement of pre- institution mediation is dispensed with.
5. Application is allowed and disposed of.
CS(COMM) 179/2022
6. Let plaint be registered as a suit.
7. Upon filing of process fee, issue summons to the Defendants, through CS(COMM) 179/2022 Page 1 of 7 Signature Not Verified Signed By:KAMAL KUMAR Signing Date:24.03.2022 20:27:29 all permissible modes, returnable on 18.07.2022. Summons shall state that the written statement shall be filed by the Defendants within 30 days from the receipt of summons. Along with the written statement, Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff.
8. Replication be filed by the Plaintiff within 15 days of the receipt of the written statement. Along with the replication, an affidavit of admission/denial of documents filed by the Defendants, shall be filed by the Plaintiff. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
9. List before the Joint Registrar for marking of exhibits on 26.05.2022.
10. List before the Court on 18.07.2022 for framing of issues. I.A. 4532/2022 (Stay)
11. Present application has been preferred by the Plaintiff under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 for grant of ex-parte ad interim injunction.
12. Issue notice to the Defendants, through all permissible modes, returnable on 18.07.2022.
13. As per the averments in the plaint, Plaintiff is an affiliate of the multi- disciplinary industrial conglomerate JK Organisation which was founded over 100 years ago. The trademark JK was adopted and has been in use since the year 1974 for various goods of the Plaintiff including Cement and other goods introduced from time to time such as Wall Putty, Building Materials, Grey Cement, White Cement, Gypsum Plaster, Tile Adhesives, Wood Finishes, Non-Metallic rigid Pipes for building, asphalt, pitch and bitumen, non-metallic transportable buildings, monuments, etc.
14. It is averred in the plaint that Plaintiff has over four decades of CS(COMM) 179/2022 Page 2 of 7 Signature Not Verified Signed By:KAMAL KUMAR Signing Date:24.03.2022 20:27:29 experience in cement manufacturing. The operations commenced with commercial production at Plaintiff's first grey cement plant at Nimbahera in the State of Rajasthan in May 1975. Over the years, Plaintiff has expanded its business by setting up several cement manufacturing units. Plaintiff is the No. 1 manufacturer of Wall Putty in the world and second largest of White Cement in India and third largest in the world.
15. It is averred that Plaintiff is an ISO 9000 certified Company and the cement manufactured and marketed by the Plaintiff conforms to BIS Standard. Plaintiff's JK White Cement is sold across 43 countries around the globe and it has strong international presence.
16. Plaintiff avers that it is a registered proprietor of the trademark JK and its several variants in India and holds several trademark registrations, the details of which are furnished in para 10 of the plaint. Plaintiff is also a registered proprietor for the trademark JK and/or JK along with other variants and label marks in several other countries of the world.
17. It is averred that labels/packaging of the Plaintiff with original colour combination as brought forth in the plaint, constitute distinctive trademarks of the Plaintiff under Section 2(m) of the Trade Marks Act, 1999. The Plaintiff's artistic works in their respective labels/packaging are duly protected within the meaning of the provisions of the Copyright Act, 1957, being the original artistic works.
18. It is averred that trademark JK also forms an important constituent of the Plaintiff's trade name and corporate name which is also a valuable intellectual property asset. Plaintiff's trademark JK and its variants are well- known trademarks and it also has registered domain name www.jkcement.com besides running a website, which is a virtual showroom CS(COMM) 179/2022 Page 3 of 7 Signature Not Verified Signed By:KAMAL KUMAR Signing Date:24.03.2022 20:27:29 of the Plaintiff's products. Plaintiff is also the owner of several other domain names as mentioned in para 13 of the plaint.
19. It is further averred that Plaintiff has been extensively advertising its trademarks and labels/packaging/artistic works through various media, including leading newspapers, magazines, networking platforms, television etc. which add substantial value to the goodwill of the trademark JK and its variants. Huge expenses have been incurred by the Plaintiff in advertisement and promotional activities, details whereof are mentioned in para 15 of the plaint. The goodwill and reputation of the Plaintiff's business is reflected from its sales turnover under the mark JK which in the year 2021 is to the tune of Rs.623341.79 lacs.
20. It is the case of the Plaintiff that recently on 02.03.2022, Plaintiff from its marketing team received complaints of and inquiries about the goods i.e. Cement/Wall Putty sold under the impugned identical/deceptively similar trademark 'JK Premium' bearing the impugned mark 'JK' with deceptively similar label/packing/colour combination/trade dress, over which the name of Defendant No.1 herein was mentioned as manufacturer and was found to be sold by the Defendants.
21. It is further averred in the plaint that Defendant No. 2 Naresh Sultania claiming to be trading as Anav Industries, 26-B, Industrial Estate, Tifra, Bilaspur, Chhattisgarh - 495001, Defendant No. 1 herein, has filed an application for registration of the mark vide trademark application no. 4899143 dated 11.03.2021 on 'Proposed to be Used' basis in respect of goods Thinners and thickeners for coatings, dyes and inks, Agglutinants for paints and for putty, which is pending under objection as it CS(COMM) 179/2022 Page 4 of 7 Signature Not Verified Signed By:KAMAL KUMAR Signing Date:24.03.2022 20:27:29 is also identical/deceptively similar to Plaintiff's prior adopted and used as well as registered trademark JK, its label/packaging and colour combination.
22. It is contended by learned Senior Counsel appearing on behalf of Plaintiff that a plain comparison of the impugned mark of the Defendants makes it apparent that the Defendants have with the mala fide intent of infringing and passing off their goods, dishonestly adopted the trademark/label of the Plaintiff. Defendants are taking undue advantage of the pre-established goodwill and reputation enjoyed by the Plaintiff under their registered trademark JK, its variants, its label/packaging etc. The impugned trademark/label/packaging/colour combination and trade dress is identical/deceptively similar to that of the Plaintiff and is causing confusion and deception in the markets as the impression being created with the customers is that the goods of the Defendants are associated with the Plaintiff.
23. A comparative of the trademark/label of the Plaintiff and the Defendants is scanned and placed below:-
Plaintiff's Trade Mark/Label Defendant's Trade Mark/Label CS(COMM) 179/2022 Page 5 of 7 Signature Not Verified Signed By:KAMAL KUMAR Signing Date:24.03.2022 20:27:29
24. It is contended that the Defendants are manufacturing and selling their products under the impugned mark/label etc. in order to cause deception and confusion since the goods of the Plaintiff and the Defendants are identical in nature, have identical trade channels and are sold to the same class of purchasers. The triple identity test therefore stands satisfied in the present case.
25. Having heard learned Senior Counsel appearing on behalf of the Plaintiff and having perused the documents on record, this Court is of the view that Plaintiff has established a prima facie case in its favour for grant of ex-parte ad-interim injunction. Balance of convenience also lies in favour of the Plaintiff and irreparable loss shall be caused to the Plaintiff in case an ex-parte ad-interim injunction is not granted.
26. Accordingly, till the next date of hearing, Defendant(s), its proprietors, promoters, retailers, wholesalers, agents, servants, assignees, representatives, successors, dealers, distributors and all others acting for and on behalf of the Defendants, as the case may be, or any other person acting on their behalf are restrained from manufacturing, marketing, selling, offering for sale, advertising or displaying, directly or indirectly dealing in Cement, Wall Putty or any other allied and cognate goods, under the impugned trademark JK, impugned label/packaging/colour combination/trade dress in respect of identical/similar/allied products, i.e. Cement/Wall Putty which is/are identical/deceptively similar to the trademark JK, its label/packaging/colour combination/trade dress of the Plaintiff and from doing any other thing and/or acts as are likely to infringe Plaintiff's trademark, label/packaging/colour combination/trade dress and/or amount to passing off the defendants' goods and business under the CS(COMM) 179/2022 Page 6 of 7 Signature Not Verified Signed By:KAMAL KUMAR Signing Date:24.03.2022 20:27:29 impugned trademark, label/packaging/colour combination/trade dress as the goods and business of the plaintiff.
27. Provisions of Order 39 Rule 3 CPC shall be complied with by the Plaintiff, within a period of five days from today.
Dasti.
JYOTI SINGH, J MARCH 23, 2022 yg CS(COMM) 179/2022 Page 7 of 7 Signature Not Verified Signed By:KAMAL KUMAR Signing Date:24.03.2022 20:27:29