Oswal Books And Learning Pvt Ltd vs Bokaro Students Friend Pvt Ltd And Ors on 7 February, 2024

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Delhi High Court - Orders

Oswal Books And Learning Pvt Ltd vs Bokaro Students Friend Pvt Ltd And Ors on 7 February, 2024

Bench: Sanjeev Narula

                                    $~44
                                    *           IN THE HIGH COURT OF DELHI AT NEW DELHI
                                    +           CS(COMM) 120/2024
                                                OSWAL BOOKS AND LEARNING PVT LTD             ..... Plaintiff
                                                              Through: Ms. Shivaarti Bajaj, Mr. Varun Bajaj,
                                                                       Mr. Vishesh Dhundia and Mr. Sanjay
                                                                       Jha, Advocates.
                                                              versus

                                                BOKARO STUDENTS FRIEND PVT LTD AND ORS
                                                                                      ..... Defendants
                                                            Through: None.

                                                CORAM:
                                                HON'BLE MR. JUSTICE SANJEEV NARULA
                                                                                      ORDER

% 07.02.2024 I.A. 2961/2024 (seeking exemption from filing originals, clear copies and documents with proper margins)

1. Exemption is granted, subject to all just exceptions.

2. The Plaintiff shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.

3. Accordingly, the application stands disposed of.

I.A. 2962/2024 (seeking leave to file additional documents)

4. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015 ("CCA").

5. Applicant, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of CCA.

CS(COMM) 120/2024 Page 1 of 10

This is a digitally signed order.

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6. Accordingly, the application stands disposed of.

I.A. 2963/2024 (u/Section 12A of the Commercial Courts Act 2015 r/w Section 151 of the Code of Civil Procedure, 1908

7. As the present suit contemplates urgent interim relief, in light of the judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.

8. Disposed of.

CS(COMM) 120/2024

9. Let the plaint be registered as a suit.

10. Upon filing of process fee, issue summons to the Defendants by all permissible modes. Summons shall state that the written statement(s) shall be filed by the Defendants within 30 days from the date of receipt of summons. Along with the written statement(s), the Defendants shall also file affidavit(s) of admission/denial of the documents of the Plaintiff, without which the written statement(s) shall not be taken on record.

11. Liberty is given to the Plaintiff to file replication(s) within 15 days of the receipt of the written statement(s). Along with the replication(s), if any, filed by the Plaintiff, affidavit(s) of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication(s) 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.

2023 SCC OnLine SC 1382.

CS(COMM) 120/2024 Page 2 of 10

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 20:50:23

12. List before the Joint Registrar for marking of exhibits on 16th April, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

13. List before Court for framing of issues thereafter.

I.A. 2959/2024 (under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 and Section 135 of the Trademarks Act, 1999 on behalf of the Plaintiff, seeking ex-parte ad interim injunction) and I.A. 2960/2024 (for appointment of Local Commissioner and field experts)

14. The Plaintiff (Oswaal Books and Learning Pvt. Ltd.) is a private limited company incorporated in India, and engaged in the business of publishing educational books including but not limited to study material books for educational boards such as CBSE, ISC, ICSE and the Karnataka State Board. Plaintiff also publishes some important books for important national level competitive exams such as JEE (Mains as well as Advanced), NEET, RRB-NTPC, CAT and CLAT. Plaintiff submits that their presence extends across more than 16,000 book stores in more than 500 districts in the country.

15. Plaintiff has registered word and device marks, particulars of which have been supplied in the plaint (Table 1 below). Furthermore, contents of the Plaintiff's study material are submitted to be unique and original and nature. Answer keys of sample question papers in books sold by Plaintiff are provided through a unique QR code affixed to each book. Plaintiff asserts copyright in these study materials, and these "sample question paper" books along with their solutions form the subject matter of the present suit, particulars of which have been supplied by the Plaintiff (Table 2 below) ("Subject Matter"). Plaintiff asserts copyright in these "Sample Question CS(COMM) 120/2024 Page 3 of 10 This is a digitally signed order.

1. 5265363 16 Registered

2. OSWAAL BOOKS (WORD) 3604046 16 Registered

3. 3604049 16 Registered Table 1: Plaintiff's Trademarks Table 2: Plaintiff's Copyright (Subject Matter)

16. Plaintiff has now learnt that there are pirated versions of their books which bear their trademarks, copyrights, contents, trade-dress, colour- scheme, holograms etc. They have learnt about these counterfeit products through their customers, who have been unable to access answers keys as their pirated versions do not have authentic QR codes which link to the same. Pursuant to an investigation carried out on the basis of the information CS(COMM) 120/2024 Page 4 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 20:50:24 received from their customers, Plaintiff discovered that identical but defective copies of the Subject Matter are being published and distributed illegally by known and unknown publishers in Delhi/ NCR and on other locations. The covers of a sample original book and a counterfeit book are reproduced below for reference:

Original (left) and Counterfeit/Pirated Version (right)

17. The counterfeit goods are being identified on account of inconsistencies noticed while making a comparison with the copyrighted products. These comparisons have been detailed in the plaint as follows:

S. Description Counterfeit Book Original Books No.

1. Colour Combination The colour scheme is Sharp and accurate deceptively similar, to the extent of being exactly same as that of the Plaintiff's Books in a slight Faded and Blur manner.

CS(COMM) 120/2024 Page 5 of 10

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 20:50:24

2. Contents The colour scheme is Sharp and accurate deceptively similar, to the extent of being exactly same as that of the Plaintiff's Books in a slight Faded and Blur manner.

3. Trade Dress The colour scheme is Original and verified deceptively similar, to the extent of being exactly same as that of the Plaintiff's Books in a slight Faded and Blur manner.

4. Sharpness of Text The colour scheme is Sharp and accurate deceptively similar, to the extent of being exactly same as that of the Plaintiff's Books in a slight Faded and Blur manner.

5. Bar Code/ Unique Code Fake and non- Original and Verified functional (i.e., not leading to the Answer-

Keys/ Solutions)

6. Seal Fake Original and Verified

7. Paper Quality Low Quality High Quality

8. Hologram Fake Original and Verified

9. Dimensions 27.6 cms (L) Same 19.2 cms (W) Same

18. During the course of the hearing, counsel for Plaintiff presented copies of books of the Plaintiff as well as the pirated versions published by the Defendants for the perusal the Bench, which to the naked eye do not really indicate any much difference, thereby establishing Plaintiff's allegations. Plaintiff, through their investigations, has identified more than 107 third-party vendors (wholesale as well as retail) The Plaintiff has also CS(COMM) 120/2024 Page 6 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 20:50:24 issued legal notices to the identified parties, copies whereof have also been placed on record. From the responses obtained by Plaintiff from a handful of Defendants to these legal notices, Plaintiff has learnt that the source of these pirated books can be traced to two entities in Delhi: Defendant Nos. 1 and 2 i.e., Bokaro Students Friend Private Limited, New Delhi and Kashyap Book Depot, New Delhi. Legal notices issued to these two Defendants has not elicited a response.

19. As a result of this rampant piracy, Plaintiff's goodwill and reputation have been prejudicially affected in a severe manner, and financial loss and confusion has been caused to customers of the Plaintiff due to their inability to access the complete study materials. It must also be borne in mind that these customers are students appearing for important examinations and relying upon these study materials for important examinations. Therefore, Plaintiff seeks assistance of the Court in curbing continuing acts of piracy/counterfeiting. In view of the facts and circumstances of the case, in the opinion of this Court, Plaintiff has made a prima facie case for grant of ad-interim injunction. The balance of convenience is also lies in favour of the Plaintiff. An irreparable loss would be caused in case an ex-parte ad- interim injunction is not granted in favour of the Plaintiff.

20. Till the next date of hearing, Defendants or anybody acting on their behalf are restrained from manufacturing, printing, publishing, photocopying, selling, purchasing, re-selling, offering of sell, importing, exporting, advertising in any manner any product under Plaintiff's registered trademark "Oswaal Books" (or any other mark which is identical or deceptively similar to the Plaintiff's products) or which infringes Plaintiff's copyrights or passes them off as Plaintiff's products.

CS(COMM) 120/2024 Page 7 of 10

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 20:50:24

21. Ms. Shivaarti Bajaj, counsel for Plaintiff submits that the Defendants are aware of the Plaintiff and their products. The infringing materials placed on record amount to violation of Section 29 of Trademarks Act, 1999 as well as Section 63 of the Copyright Act, 1957, and are clear evidence of the intention of the Defendants to ride upon the goodwill and reputation of the Plaintiff and infringe their copyrights. The Plaintiffs believe that the infringing products are sold at the locations set out in the memo of parties in the plaint and the Defendants are likely to remove all physical evidence or deny its involvement in the infringing activities. Therefore, in order to preserve evidence of infringement, it is necessary that Local Commissioners are appointed to visit the premises of the Defendants. Accordingly, the following are appointed as Local Commissioners with a direction to visit the specified premises of the Defendants, as detailed hereinbelow: -

(a) Ms. Sandhya Gupta, Advocate [Contact No.: 9312280288] to visit the premise of Kashyap Book Depot (Defendant No. 2), B.O. 4737A, Prem Niwas, 23, Ansari Road, Darya Ganj, New Delhi-110002. Phone:

9716521612;

(b) Mr. Rahul Mourya, Advocate [Contact No.: 7834933890] to visit the premise of Amritanjali Books World (Defendant No. 8), Gangjala Chowk, Rajwanshi Nagar, Saharsa, Bihar 852201; and

(c) Mr. Vaibhav Laddha [Contact No.: 8850233439] to visit the premise of Gaurav Books and Stationary Shop (Defendant No. 13), Near Prasad Intermediate College, near Pandeypur Crossing, Pandeypur, Paharia, Varanasi, Uttar Pradesh, 221002.

22. Local Commissioners, along with a representative of the Plaintiff and their counsel, shall be permitted to enter upon the premises of the CS(COMM) 120/2024 Page 8 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 20:50:24 Defendants mentioned above or any other location/ premises that may be identified during the course of commission, in order to conduct the search and seizure. The Local Commissioners shall conduct a search at the respective Defendants' premises and seize published/unpublished material bearing Plaintiff's registered trademarks or containing contents identical or deceptively similar to Plaintiff's books.

23. After seizing infringing material, the same shall be inventoried, sealed and signed by the Local Commissioners, in the presence of the parties, and released on superdari to the Defendants on their undertaking to produce the same as and when further directions are issued in this regard. The Local Commissioners shall also be permitted to make copies of the books of accounts including ledgers, cash registers, stock registers, invoices, books, etc. insofar as they pertain to the infringing products. Further, the Local Commissioners shall be permitted to undertake/arrange for photography/ videography of the execution of the commission. Both the parties shall render full assistance to the Local Commissioners for carrying out the aforenoted directions.

24. In case any of the premises are found locked, the Local Commissioners shall be permitted to break open the lock(s). To ensure an unhindered and effective execution of this Order, the SHO of the local police station is directed to render all assistance and protection to the Local Commissioners, if and when sought.

25. The fee of the Local Commissioner, to be borne by the Plaintiff, is fixed at INR 1,10,000/- for Address (a). For Addresses (b) and (c), the fee of the Local Commissioners, to be borne by the Plaintiff, is fixed at INR 1,50,000/- each. The Plaintiff shall also bear expenses for travel and lodging CS(COMM) 120/2024 Page 9 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 20:50:24 of the Local Commissioner and other miscellaneous out-of-pocket expenses for the execution of the commission. Fee of the Local Commissioner shall be paid in advance by Plaintiff-Company.

26. The Order passed today shall be uploaded within a period of two weeks from today.

27. In terms of the foregoing, the application stands disposed of in the above terms.

28. Renotify on 10th July, 2024.

29. Dasti under signature of Court Master.

SANJEEV NARULA, J FEBRUARY 7, 2024/as CS(COMM) 120/2024 Page 10 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 20:50:24

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Delhi High Court - Orders