Calcutta High Court
Dilip Kumar Jain Alias Dilip Kumar ... vs Vikas D. Jain And Ors on 1 March, 2021
Author: Debangsu Basak
Bench: Debangsu Basak
OC 7
ORDER SHEET
IA GA 1 of 2020
CS 40 of 2020
IN THE HIGH COURT AT CALCUTTA
ORDINARY ORIGINAL CIVIL JURISDICTION
COMMERCIAL DIVISION
DILIP KUMAR JAIN ALIAS DILIP KUMAR RANAWAT
VS
VIKAS D. JAIN AND ORS.
BEFORE:
The Hon'ble JUSTICE DEBANGSU BASAK
Date: 1st March, 2021.
(Via Video Conference) Mr. Rajeev Kumar Jain, Mr. Ayush Jain, Advs.
...for the plaintiff Mr. Soumabho Ghose, Mr. Sourav Roy,Advs.
...for defendant nos. 1, 2 & 3 The Court: In a suit for infringement of copyright and design and passing off, the plaintiff seeks interim protection.
Learned advocate appearing for the plaintiff submits that, the plaintiff is marketing mixer, toaster and electric appliances under the mark "MI SumEEt". He submits that, the plaintiff applied for registration of the mark and that, such application is pending. However, the plaintiff is a prior user. He relies upon a document dated July 4, 2011 issued by the Income-tax Authorities which states that the plaintiff was manufacturing of MI Sumeet Mixers, Toasters and non-stick glassware since 1993. He draws the attention of the Court to an order passed by the High Court of Judicature of Bombay in Suit No. 1184 of 2011 (Sumeet Appliances Private Limited vs. Dilip Kumar Jain & Sumeet Engineering Works). He submits that the initial undertaking of the plaintiff recorded on June 17, 2016 was recalled on August 12, 2016. He draws the attention of the Court to the registration that the defendants obtained in respect of their products. He submits that, the defendants are using deceptively similar marks as that of 2 the plaintiff. Referring to the registration available in favour of the defendants he submits that, the trade mark registered for the defendants are "NAKODA SUMMIT" and "NAKODA SUMMEET". He draws the attention of the Court to the packaging of the defendants. He submits that, the defendant is using NAKODA SUMEET and Summit as two distinct words. Moreover, the defendants are using the word SumEEt with two capital EEs in the middle to that used by the plaintiff. The defendants should not be using the word SumEEt with two capital EEs as used by the plaintiff.
The defendants are represented.
Learned advocate appearing for the defendants seeks further extension of time to file affidavit-in-opposition in view of the fact that the state of Maharashtra is under a lockdown now. The defendants are not in a position to file affidavit-in-opposition to the application.
The fact that the State of Maharashtra declared a lockdown and time for the defendants to file the affidavit-in-opposition was considered on February 12, 2021 when time to file affidavit-in-opposition was extended till February 19, 2021 peremptorily. Such order was passed in presence of the defendants. The defendants are yet to use any affidavit-in-opposition even today. Therefore, the request for further adjournment particularly when the suit is in the Commercial Division of the High Court cannot be entertained. Moreover, there is no material on record to establish the fact that the person affirming the affidavit is suffering from any disability so as to be unable to affirm the affidavit-in-opposition.
So far as the merits of the case are concerned, prima facie it appears that the plaintiff was using the mark MI SumEEt with two capita EE in the word SumEEt to market its electrical appliances. The word mark of the plaintiff is distinctive. The defendants are also marketing similar electrical appliances and using the word NAKODA SumEEt with two EE with the word SumEEt. The registration that is obtaining in favour of the defendants is NAKODASUMEET which is only one word without the capital E in 3 between small 'u' and 't'. The defendants are not using their registered mark in the packaging for marketing their products. They are using words deceptively similar to that of the plaintiff.
Prima facie, two words NAKODA SumEET used separately with two capital EE in between being utilised in the word SumEEt are phonetically and structurally deceptively similar to the word MI SumEEt with two capital EE used by the plaintiff.
So far as order of Bombay High Court dated June 17, 2016 is concerned, the same was recalled on August 12, 2016. Therefore, in my view, there is no impediment on the plaintiff to use the word MI SumEEt to market its product by reason of the order passed in Suit no. 1184 of 2011.
In such circumstances, there will be orders in terms of prayers (a) and (b) of the petition.
Mr. Shantanu Mishra, Advocate Mobile Phone No. 9433520177 is appointed as Receiver in terms of prayer (e) of the petition. The Receiver be paid an initial remuneration of 3,000 Gms. at the first instance by the plaintiff. The Receiver will submit his report in terms of prayer (d) of the petition on the next date.
List the application on March 26, 2021 under the same heading.
(DEBANGSU BASAK, J.) TR/ 4