Delhi High Court
Filex Systems Pvt. Ltd. vs Deepika File Products on 12 March, 2019
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 12th March, 2019.
+ CS(COMM) 696/2016 & IAs No.7189/2016 (u/O XXXIX R-1&2
CPC) & 10624/2016 (of defendant u/O XIII-A CPC)
FILEX SYSTEMS PVT. LTD. .... Plaintiff
Through: Mr. M.L. Mangla and Mr. Manish
Singhal, Advs.
Versus
DEEPIKA FILE PRODUCTS ......Defendant
Through: Ms. Haripriya Padmanabhan, Ms.
Runamoni Bhuyan and Ms.
Aishwarya Kane, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The plaintiff has instituted this suit for permanent injunction
restraining passing off by defendant by violating the trade mark „FILEX‟ in
respect of stationery including files, file covers, folders, diaries, note pads,
office requisites of the plaintiff and for ancillary reliefs.
2. The suit along with the application for interim relief came up before
this Court first on 1st June, 2016, when though the suit was entertained and
summons thereof ordered to be issued but ex-parte injunction sought not
granted.
3. Pleadings have been completed, with the defendant also having been
permitted to amend its written statement.
4. The defendant, prior to the framing of issues has filed IA
No.10624/2016 under Order XIII-A of the Code of Civil Procedure, 1908
(CPC) for summary judgment and pleadings wherein have also been
completed. The counsels have been heard.
5. It is the case of the plaintiff, (i) that the plaintiff is engaged in the
business of manufacturing and selling office files, office stationery, paper
and paper products, printed publications, cleansing wipes, cleaning
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preparations etc. as well as of providing services relating to marketing of the
said goods; (ii) that the trade mark „FILEX‟ forms the primary, essential,
distinctive and material part of the plaintiff‟s trade name / trading style /
corporate name „FILEX Systems Private Limited‟ since the incorporation of
the plaintiff in the year 1996; (iii) that the plaintiff adopted the trade mark
„FILEX‟ in respect of its goods / business in the year 1996 and started using
the same in an extensive scale on an exclusive basis throughout India; (iv)
that „FILEX‟ is also the house mark of the plaintiff which appears
prominently and distinctively on each and every product packings,
advertisements, catalogues, sales promotional products, public
communications as well as on the products itself and the goods of the
plaintiff are referred to as emanating from „FILEX‟; (v) that the plaintiff has
a colossal portfolio of differentiated trade marks including well-known trade
mark „SOLO‟ in respect of the said goods which are being used by the
plaintiff in the course of its trade since the year 1996 along with and/or
under the house mark „FILEX‟; (vi) that the trade name / house mark / trade
mark / trade dress „FILEX‟ in respect of the aforesaid goods / business,by
virtue of extensive use for more than 19 years, has become distinctive; (vii)
that the sales of the plaintiff of the goods under the mark „FILEX‟ have
grown from Rs.142.26 lacs in the year 1997-1998 to Rs.1601.79 lacs in the
year 2015-2016; similarly, advertising expenses of the plaintiff have gone
up from Rs.11.33 lacs in the year 1997-1998 to Rs.49.29 lacs in the year
2015-2016; (viii) that the goods of the plaintiff are identified and associated
with the mark „FILEX‟; (ix) that in November, 2015, the plaintiff learnt that
the defendant had introduced its stationery items including files, file covers,
diaries, note pads, office requisites and other similar goods in the market
under an identical / violating trade mark „FILEX‟; (x) that the defendant
failed to stop use of the said mark inspite of a cease and desist notice dated
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28th November, 2015 and also did not respond thereto; and, (xi) that use by
the defendant of the mark „FILEX‟ of the plaintiff in respect of identical
goods amounts to the defendant‟s passing off its goods as that of the
plaintiff.
6. The plaintiff, along with the plaint filed pictorial representations of
the spine of its file covers as under:
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and photocopies of its advertisements in the print media, and one of which is
as under:
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7. The plaintiff to prove copying of its mark by the defendant, along
with the plaint has also filed the business card of the defendant as under:
and photocopies of the files and notebook of the defendant as under:
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and sale invoices issued by the defendant, to demonstrate use by the
defendant of „FILEX‟, while selling its files, are also filed along with the
plaint.
8. The defendant has contested the suit pleading, (a) that the registered
trade mark of the plaintiff is „SOLO‟ and not „FILEX‟; (b) that the plaintiff
cannot sue with respect to an unregistered trade mark; (c) that the defendant
is in permitted use of the trade mark „FILEX‟ since the year 2012; (d) that
the plaintiff has never used „FILEX‟ as its trade mark; (e) that the defendant
is the prior user of the mark „FILEX‟ and the defendant‟s goods are
associated with the mark „FILEX‟; on the contrary, the goods of the plaintiff
are associated with the mark „SOLO‟; (f) that the goodwill and reputation if
any of the plaintiff is associated with the mark „SOLO‟; (g) that the
defendant‟s goodwill is associated with the mark „FILEX‟; (h) that the
plaintiff, prior to filing of this suit, applied for registration of the mark
„FILEX‟ but which is pending under „objected category‟; (i) that all
advertisements of the plaintiff also promote the mark „SOLO‟ which appears
prominently and dominantly in such advertisements; (j) that the plaintiff has
never used „FILEX‟ as a trade mark; (k) that the marks „SOLO‟ and
„FILEX‟ are totally different and distinct and the product of the plaintiff
with the mark „SOLO‟ cannot be confused with the product of the
defendant; (l) that both, plaintiff and the defendant, are members of Delhi
File Nirmata Sangh which comes out with a Directory every 2-3 years in
which the members take out advertisements of their goods / products;
defendant has been advertising with the trade mark „FILEX‟ for its goods
and the plaintiff has been advertising with the trade mark „SOLO‟ for its
goods; thus, the plaintiff knew that the defendant since the year 2012 is
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using the mark „FILEX‟ but did not raise any objection; (m) that the
distributors of the goods of the plaintiff also know the goods of the plaintiff
as „SOLO‟; (n) while the defendant‟s area of operation is North India, the
plaintiff‟s area of operation is mostly South India and only a few cities of
North India; (o) that there is a huge variation in the prices of the goods of
the plaintiff and the defendant and for this reason also, there is no possibility
of confusion; and, (p) that the price of the goods of the defendant is
equivalent to about half of that of the plaintiffs.
9. Qua replication to the written statement, filed by the plaintiff, it may
only be recorded that the plaintiff has pleaded (I) that the plaintiff has filed
application for registration of the trade mark „FILEX‟ in Class 16 and Class
35; (II) that, another person and not the defendant, has also filed application
for registration of the mark „FILEX‟ and to which objection has been filed
by the plaintiff; (III) that the defendant has not filed any document to show
use of the mark „FILEX‟ since 2012; on the contrary, the plaintiff has been
in use of the mark „FILEX‟ since 1996; and, (IV) that the plaintiff is using
the mark „SOLO‟ as well as „FILEX‟.
10. The defendant along with its written statement has filed pictorial
depiction of its files as under:
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11. The defendant, to demonstrate that the plaintiff is not using the mark
„FILEX‟ has also filed photocopies of products of the plaintiff, though
containing the mark „SOLO‟ but not showing the mark „FILEX‟.
12. The defendant along with its written statement has also filed
advertisements of plaintiff and defendant appearing in Delhi File Nirmata
Sangh, with the advertisement of the plaintiff showing the mark „SOLO‟ of
course with the name of the plaintiff „Filex Systems Private Limited‟ and the
advertisement of the defendant showing the mark „FILEX‟
13. The defendant, in its application under Order XIII-A of the CPC as
applicable to commercial suits, for summary judgment, besides what is
already pleaded in the written statement, has pleaded (A) that the defendant
applied for trade mark registration of „FILEX‟ on 22nd May, 2012 and the
plaintiff never raised objection thereto; (B) that in 2013-2014, the defendant
advertised its product under the name „FILEX‟ in the bi/tri-annual Directory
of Delhi File Nirmata Sangh and till the end of 2015, the plaintiff raised no
objection to the defendant‟s use of „FILEX‟; (C) that the plaintiff, without
establishing goodwill, cannot maintain a passing off action; (D) that the
plaintiff has not established prior use of mark „FILEX‟; (E) that the plaintiff
has not pleaded any losses suffered by it; (F) that the plaintiff has fabricated
the invoices of sale of goods under the mark „FILEX‟ and in which invoices
against the goods sold, in bracket „FILEX‟ is mentioned; true copies of the
said invoices filed along with the application do not show the original to be
carrying the word „FILEX‟; (G) that the said invoices, against the mark
„FILEX‟ carry the symbol "TM", even though the plaintiff never registered
the said mark; (H) that the plaintiff has also fabricated the photographs of its
CS(COMM) 696/2016 Page 17 of 30
files filed along with the plaint and which do not match with the
photographs of the product of the plaintiff filed by the defendant along with
the written statement; (I) that the plaintiff has no goodwill associated with
the mark „FILEX‟ and the goodwill of the plaintiff is associated with the
mark „SOLO‟; (J) that the advertisements of the plaintiff on television also
show the brand of the plaintiff as "SOLO File and Folder"; (K) that the
defendant had applied for registration of „FILEX‟ as far back as in the year
2012; and, (L) that the plaintiff, from the Directory of Delhi File Nirmata
Sangh of the year 2013, was aware of use by the defendant of „FILEX‟ and
raised objection for the first time only towards the end of the year 2015.
14. The new plea of the plaintiff, in reply to the application of the
defendant for summary judgment is, (i) that „FILEX‟ forms a material part
of the plaintiff‟s trade name / trading style since its incorporation in the year
1996; (ii) that it is a matter of trial, whether the plaintiff was using „FILEX‟
as its trade mark, as pleaded by the plaintiff and as claimed by the plaintiff
and whether the plaintiff was not so using as claimed by the defendant and
cannot be decided summarily; (iii) that the defendant is admittedly a
subsequent adopter of the word „FILEX‟ in relation to the same goods; and,
(iv) that the application for registration of the mark „FILEX‟ of the year
2012 is not by the defendant.
15. The counsel for the defendant has relied on (a) Godfrey Phillips India
Limited Vs. P.T.I. Private Limited 2017 SCC OnLine Del 12509, laying
down that to succeed in the cause of action for passing off, it has to be
established that the plaintiff has achieved a reputation in the market with
respect to its trade mark or label; (b) Intex Technologies (India) Ltd. Vs.
CS(COMM) 696/2016 Page 18 of 30
AZ Tech (India) 2017 SCC OnLine Del 7392 (DB) laying down that
establishment of goodwill is an essential ingredient of the tort of passing off
and that proprietorship of a trade mark and goodwill in respect of a mark are
entirely different concepts and further that improper and unexplained delay
is fatal to an application for an interlocutory injunction; and, (c) Paramount
Surgimed Limited Vs. Paramount Bed India Private Limited 2017 SCC
OnLine Del 8728 laying down that a dishonest litigant is not entitled to
discretionary relief.
16. Per contra, the counsel for the plaintiff has relied on (i) Laxmikant V.
Patel Vs. Chetanbhai Shah (2002) 3 SCC 65 laying down that the name
under which a business trades will almost always be a trade mark and will
have attached to it a goodwill that the Courts will protect and an action for
passing off will lie wherever the defendant company‟s name, or its intended
name, is calculated to deceive; (ii) B.K. Engineering Co. Vs. U.B.H.I.
Enterprises (Regd.) 27 (1985) DLT 120 (DB) holding that adoption by the
defendant of B.K.-81 as trade mark when B.K. was the house mark of the
plaintiff for sale of its goods under the trademark „Crown and Venus‟
amounted to passing off; (iii) S. Syed Mohideen Vs. P. Sulochana Bai
(2016) 2 SCC 683 but which is not found applicable to the controversy at
hand; and, (iv) Montari Industries Ltd. Vs. Montari Overseas Ltd. (1995)
57 DLT 771 also holding that reputation or goodwill in business generally
attaches with the trade name.
17. Besides the aforesaid, during the hearing, it was informed that the
plaintiff has a website www.filexindia.com but which redirects to
www.solo.in and that the invoices of sales filed by the plaintiff are not to
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users of the product but to dealers. It was the contention of the counsel for
the defendant that dealers are aware of all the persons in the field and there
is no possibility of confusion.
18. My conclusions, on perusal of the aforesaid pleadings and documents
and arguments, are:
(A) that no summary judgment of dismissal of suit can be granted
in favour of defendant, inasmuch as the grounds urged by the
defendant of (i) the plaintiff for the purposes of the present suit
having fabricated photographs of its products, invoices and bills; and,
(ii) the plaintiff not having used „FILEX‟ as a trade mark and having
used „SOLO‟ only as a trade mark and having no goodwill and
reputation attached to the mark „FILEX‟, cannot be summarily
decided without trial.
(B) thus, there is no merit in IA No.10624/2016, which is
dismissed.
(C) However, what is not in dispute is that since the incorporation
in the year 1996, the name of the plaintiff Filex Systems Pvt. Ltd. has
„FILEX‟ as a prominent part thereof and the claim of the defendant of
use of the mark „FILEX‟ is since the year 2012 i.e. sixteen years after
the plaintiff. What is also not in dispute that the name Filex Systems
Pvt. Ltd. of the plaintiff is to be found on the products and invoices of
the plaintiff, even though only as the manufacturer / seller of the said
files.
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(D) I have wondered, whether the aforesaid undisputed fact entitles
the plaintiff to a summary judgment of injunction against the
defendant.
(E) Even though the plaintiff has not filed any application under
Order XIII-A of the CPC for summary judgment but I have in
Mallcom (India) Limited Vs. Rakesh Kumar 2019 SCC OnLine Del
7646 held that the Court, notwithstanding Order XIII-A of the CPC
requiring an application therefor to be filed, is empowered to on its
own, if finds a case for summarily deciding the suit, without requiring
any evidence and if finds that there is no other compelling reason why
the parties should be put to trial, to proceed to do so. The hearing also
has been in the same flavor, with the judgments entitling the plaintiff
to the relief on the said ground being cited.
(F) It has been held in Sirmour Remedies Pvt. Ltd. Vs. Kepler
Healthcare Pvt. Ltd. 2014 SCC OnLine Cal 2703 that there is no bar
to use of more than one mark. Thus, merely because the plaintiff has
been admittedly sing the mark „SOLO‟, would not disentitle the
plaintiff from also using the mark „FILEX‟ simultaneously with
„SOLO‟ and in relation to the very same goods qua which „SOLO‟ is
used. B.K. Engineering Co. supra cited by the counsel for the
plaintiff is also a binding precedent on the said proposition. The
parties therein were engaged in the same business i.e. manufacture
and sale of cycle bells. Though the trade mark of the plaintiff was
„Crown and Venus‟ but the bells of the plaintiff also showed the name
of manufacturer as „B.K. Engineering Co.‟, with the words „B.K.‟
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prominently displayed. The defendant U.B.H.I. Enterprises (Regd.)
started manufacturing cycle bells under the mark „B.K.81‟. The
plaintiff sued for injunction against passing off and injunction was
granted. It was held (i) that "B.K." was the manufacturer‟s mark of
the plaintiff; this is seen by the public; in a common field of activity,
it is likely to deceive prospective purchaser if the defendant is allowed
to market its product under the mark "B.K.-81"; (ii) there was
likelihood of diversion of trade from the plaintiff to the defendant and
this is an injury against which an injunction is directed in the action of
passing off; (iii) an action of passing off lies if one trader represents
his business as being that of or connected with that of the plaintiff;
(iv) there is a false suggestion by one competing trader in the same
line of business that his business is connected with that of the other -
this would damage the reputation and thus the goodwill of the
plaintiff‟s business; (v) the argument, that while the plaintiff was
carrying on its business at Delhi and the defendant in Ludhiana and
therefore there was no chance of confusion, had no merit because
goodwill does not necessarily stop at a frontier; (vi) the argument that
"B.K." is a business name used by hundreds of people, also did not
have any merit because of the plaintiff as well as the defendant
therein being engaged in a common field of activity; (vii) the
argument that there was no imitation of getup or appearance of the
goods, was also rejected reasoning that there was an injury to the
goodwill and the main concern of the law is to protect the plaintiff‟s
property in the goodwill; (viii) if the defendant was permitted to
market its goods as "B.K.-81", a person minded to obtain goods
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which are identified in his mind with a certain definite commercial
source i.e. of B.K. Engineering Company, is likely to accept the
goods coming from a different commercial source; (ix) it is not
necessary to prove that any members of the public were deceived; an
action will lie where it is to be expected that in due course the act of
defendant would be calculated to cause confusion in the minds of the
purchasing public; and, (x) the modernization of the tort of passing
off lies in this that what was previously a misrepresentation of goods
has now become misappropriation of other man‟s property in the
business or goodwill or misappropriation of another‟s personality.
(G) Montari Industries Ltd. and Laxmikant V. Patel cited by the
counsel for the plaintiff also lays down that goodwill and reputation
attaches to the trade name. It is for this reason only that the law i.e.
The Companies Act, 2013 and the The Limited Liability Partnership
Act. 2008 also bar registration of a company or an LLP with the same
name. I have recently in Everstone Capital Advisors Pvt. Ltd. Vs.
Everstone Ventures LLP 2019 SCC OnLine Del 8111 dealt with the
said aspect.
(H) The Trademark Act, 1999 also defines "Mark" in Section 2(m)
thereof as including a name; Section 2(o) defines "Name" as
including any abbreviation of a name; and, Section 2(zb) inter alia
defines trademark as a mark capable of being represented graphically
and which is capable of distinguishing the goods or services of one
person from those of others. The name of the manufacturer of goods
is certainly capable of distinguishing the goods of one person from
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those of others and any similarity between the name and a mark
though of goods emanating from a manufacturer with a different
name, is likely to cause confusion.
(I) This Court in Manohar Singh Chadda Vs. Sheetal Sweets
2000 SCC OnLine Del 362, held that the name under which a person
transacts business is definitely one of the most concomitant of
goodwill and the first thought which would arise in the mind of any
businessman in relation to the term „goodwill‟ would be the name of
the concern. Supreme Court in Mahendra & Mahendra Paper Mills
Ltd. Vs. Mahindra & Mahindra Ltd. (2002) 2 SCC 147, finding that
the name has acquired a distinctiveness and a secondary meaning in
the business or trade circles and that people have come to associate
the said name with a certain standard of goods and services held that
any attempt by another person to use the name in business and trade
circles is likely to and in probability will create an impression of a
connection with the plaintiff‟s Group of Companies and such user
may also prejudicially affect the business of the plaintiff. In Virgin
Enterprises Ltd. Vs. Virgin Paradise Airlines Training Pvt. Ltd.
2014 SCC OnLine Del 6568, this Court again restrained the defendant
from using the mark „Virgin‟ which constituted a prominent part of
the name of the plaintiff, holding that it would constitute infringement
of the Intellectual Property Rights of the plaintiff and was bound to
cause confusion. The High Court of Bombay also in Asim Gadighar
Vs. Abdul Aziz MANU/MH/0291/1986 held that "there is no magic in
the term „trade mark‟; the very definition of „trade mark‟ includes
„mark‟ and the very definition of „mark‟ includes „name‟; the term
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„trade mark‟ must therefore be considered to be a comprehensive term
including within itself „trade name‟ as also „mark‟, „business name‟ as
also „name‟ under which articles, goods, etc. are sold. To the same
effect is a subsequent dicta of the same High Court in Kirloskar
Diesel Recon Pvt. Ltd. Vs. Kirloskar Proprietary Ltd. AIR 1996 Bom
149. The High Court of Calcutta also in Skipper Limited Vs. Akash
Bansal MANU/WB/0566/2017 held that reputation or goodwill in
business generally attaches with the trade name adopted by a business
house and such reputation or goodwill is required to be protected.
Copying of the name by rival trader was held to be likely to cause an
injury to the business of the original adopter of the said name. It was
held that no one is entitled to commence or carry on business in such
a way as to represent it to be the business of someone else or being
associated with such someone else. Mention may also be made of
Laxmikant V. Patel supra laying down that (i) a person may sell his
goods under a trading name or style and with the passage of time,
such business associated with a person acquires a reputation or
goodwill which becomes a property which is protected by Courts; (ii)
a competitor initiating sale of goods in the same name or by imitating
that name results in injury to the business of one who has the property
in that name; (iii) law does not permit any one to carry on his business
in such a way as would persuade the customers in believing that the
goods belonging to someone else are his or are associated therewith;
(iv) it does not matter whether the latter person does so fraudulently
or otherwise; and,(v) principles applicable for passing off action in
case of trade marks were held to apply also to trade or business name.
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I have also in H&M Hennes & Mauritz AB Vs. HM Megabrands
Pvt. Ltd. 2018 SCC OnLine Del 9369 restrained use by the defendants
of the trade / service mark / trade name HM / HM Megabrands,
finding the same to be similar / deceptively similar to the trade name
H&M Hennes & Mauritz AB of the plaintiff therein.
(J) „FILEX‟, forming a prominent part of the trade name of the
plaintiff, is not a dictionary word and is an invented word, easily
identifiable with the goods / products in which the plaintiff deals.
Owing to the said peculiarity, the possibility of trade circles using
„FILEX‟ instead of „SOLO‟, for referring to the plaintiff or its
products, can well be fathomed. For the said aspect, it is not deemed
necessary to put the parties to trial, in which the parties examine self-
serving witnesses and on the basis whereof no inference can be
drawn, with the Court being ultimately left even after trial to draw its
own inference. It has been held in Mahendra & Mahendra Paper
Mills Ltd. supra followed in Larsen and Tuobro Ltd. Vs. Lachmi
Narain Traders (2008) 149 DLT 46 (DB) that in suits relating to
infringement and passing off, examination of self serving witnesses
by the parties is of no avail and it is ultimately the Court which has to
take a call on similarity / deceptive similarity, keeping in mind the
perspective of a consumer with an ordinary intellect and a non-
discerning eye. Reference can also be made to Staar Surgical
Company Vs. Polymer Technologies International 2016 SCC
OnLine Del 4813, Kanungo Media (P) Ltd. Vs. RGV Film Factory
2017 SCC OnLine Del 8768, Jaideep Mohan Vs. Hub International
Industries (2018) 249 DLT 572, The Financial Times Ltd. Vs. The
CS(COMM) 696/2016 Page 26 of 30
Times Publishing House Ltd. (2016) 234 DLT 305, Mallcom (India)
Ltd. supra and judgment dated 22nd November, 2018 in CS(COMM)
No.1668/2016 titled „Biofarma Vs. Bal Pharma Ltd.‟
(K) The defendant, setting up / commencing the same business as
the plaintiff and claiming knowledge on the said account by the
plaintiff of use by the defendant of the mark since the year 2013, is
deemed to have also had knowledge of prior business in the same
goods by the plaintiff with „FILEX‟ as prominent part of its trade
name. The defendant has given no explanation whatsoever, as to why
the defendant started using the mark „FILEX‟ for the same products.
I may in this regard also record that the documents of the defendant
themselves show the defendant using, besides „FILEX‟, also
„DEEPIKA AND CHANDAN‟ as its trade mark. Though it is quite
normal of the defendant named „Deepika File Products‟ to use
„DEEPIKA‟ as a trade mark but it was incumbent on the defendant to
explain use of „FILEX‟, when the defendant was aware as per its own
admission from the Directory of Delhi File Nirmata Sangh of the
plaintiff. It was not for the defendant to on its own take a decision
that though the plaintiff had „FILEX‟ as a part of its trade name but
no goodwill or reputation attached to it, especially when the word
„FILEX‟ in the trade name of the plaintiff is a coined word and not a
dictionary word. It can safely be assumed that the defendant, aware
of the goodwill attached to the word „FILEX‟, adopted the same as a
trade mark, to take advantage thereof.
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(L) The plaintiff, even if not using „FILEX‟, as a trademark and using
only „SOLO‟ as its trademark, cannot be expected to not show its
name on its products, in its advertisements and on its invoices. Once
the plaintiff shows so, the possibility of the persons dealing with the
plaintiff and/or the plaintiffs products, associating the plaintiff and its
products with the word „FILEX‟ which as aforesaid is peculiar to the
business of files, instead of as „SOLO‟, cannot be ruled out. Thus, the
need to put the suit to trial to determine whether the products of the
plaintiff prominently showing the name of the plaintiff and/or using
„FILEX‟, besides as part of the name of the plaintiff, were in the
market earlier or not, is not felt. The plaintiff, being the senior user of
the said coined word/mark cannot be restrained from using or
showing its name with „FILEX‟ as a prominent part in its
advertisements, invoices and on its products. As held in B.K.
Engineering Co. supra, the purpose of the law of passing off is not
only to protect private interests but also public interest. It is essential
to ensure that members of the public, wanting to deal with the
plaintiff and/or buy products of the plaintiff are not deceived into
dealing with the defendant and/or buying the products of the
defendant.
(M) As far as the judgments cited by the counsel for the defendant
are concerned, once the legal issues have been thrashed out over the
years and the law developed is found to have settled, the Courts
cannot continue to put suits to trial in the name of, achieving a
reputation and having a goodwill being required to be proved by
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adducing evidence. I reiterate that considering the coinage / adoption
by the plaintiff of the name „FILEX‟ for a business of manufacture
and sale of files, the reputation and goodwill is res ipsa loquitur and
the customers of the plaintiff are likely to seek the goods of the
plaintiff by remembering either „SOLO‟ or „FILEX‟ and use by
defendant of the mark „FILEX‟ is likely to indicate a connection
between the plaintiff and the defendant.
(N) The plea of the defendant, of the plaintiff having fabricated
bills for use in this suit and being not entitled to the relief of
injunction on this ground, however cannot be adjudicated without
trial. However, once I have found the plaintiff to be entitled to
restrain the defendant owing to defendant having adopted the
prominent part of the trade name of the plaintiff as its mark, the need
to put the said claim of the defendant to trial is not felt.
(O) I am therefore satisfied that on the aforesaid fact alone, the
defendant has no possibility of succeeding in its defence and the
plaintiff is entitled to a decree for injunction as sought.
(P) I am however not inclined to put the claim of the plaintiff for
mesne profits / damages to trial and to award any costs of the suit to
the plaintiff for the reasons (i) of delay, even if not fatal of about two
years in instituting the suit; (ii) the advertisements of the plaintiff
indeed showing use of „FILEX‟ only in the name of the plaintiff and
otherwise showing use of „SOLO‟ as the trade mark; (iii) the
defendant being the prior applicant for registration of the mark
„FILEX‟; (iv) the likely possibility of the plaintiff, after realizing use
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by the defendant of „FILEX‟ as a trade mark, having applied for
registration thereof and having commenced using the same along with
„SOLO‟ as a trade mark.
19. A decree of permanent injunction is thus passed, in favour of the
plaintiff and against the defendant, in terms of prayer paragraph 26(a) &(b)
and of destruction of the infringing goods in terms of prayer paragraph 26(c)
of the plaint dated 28th May, 2016, leaving the parties to bear their own
costs.
Decree sheet be drawn up.
RAJIV SAHAI ENDLAW, J.
MARCH 12, 2019 „bs/M‟..
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