Delhi High Court - Orders
M/S. Serveshwar Food Products Pvt. Ltd vs Mr. Sachin Gupta Trading As M/S Jai ... on 6 March, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~36
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 200/2024
M/S. SERVESHWAR FOOD PRODUCTS PVT. LTD ..... Plaintiff
Through: Mr. Shailen Bhatia, Mr. Arnav
Chatterjee and Ms. Sheril Bhatia,
Advocates.
versus
MR. SACHIN GUPTA TRADING AS M/S JAI BALAJI GRAH
UDHYOG & ANR. ..... Defendants
Through: Mr. Rakesh Gaur, Advocate.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 06.03.2024 I.A. 5363/2024 (seeking exemption from filing original/ better copies/ annexures/ left hand margin)
1. Exemption is granted, subject to all just exceptions.
2. 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. 5362/2024 (seeking exemption from pre-mediation proceedings)
4. 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.
12023 SCC OnLine SC 1382.
CS(COMM) 200/2024 Page 1 of 12This 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 07/03/2024 at 22:59:05
5. Disposed of.
CS(COMM) 200/2024
6. Let the plaint be registered as a suit.
7. Issue summons. Mr. Rakesh Gaur, Advocate, accepts summons on behalf of the Defendants. He confirms receipt of the suit paper-book and waives the requirement of formal service of summons by the Registry. Written statement shall be filed by the Defendant within 30 days from today. Along with the written statement, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.
8. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiffs, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication 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.
9. List before the Joint Registrar for marking of exhibits on 9th May, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
10. List before Court for framing of issues thereafter.
I.A. 5360/2024 (seeking ex-parte ad interim injunction)
11. Mr. Shailen Bhatia, counsel for the Plaintiff, has presented the following facts and contentions:
11.1. The present suit under Section 134 of the Trade Marks Act, 1999 ["the Act"] pertains to the trademark "LACY", which is being utilised CS(COMM) 200/2024 Page 2 of 12 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 07/03/2024 at 22:59:05 by the Plaintiff/ Serveshwar Food Products Pvt. Ltd. in respect of its business of manufacturing and trading of confectionary, namkeen and other cognate/ allied goods.
11.2. Plaintiff is the proprietor of the trademark, which is registered under No. 1468628 in Class 30. Details of registration thereof have been set out at Paragraph No. 6 of the plaint. Further, Plaintiff has also devised various other formative marks/ labels from the trademark "LACY", such as, inter alia, "LACY KATORI (English)", "LACY KATORI (Hindi)" and "LACY GREEN CHILLY TYPE PASTA". Plaintiff has secured registrations in respect of these marks as well; details whereof have been delineated in Paragraph No. 7 of the plaint.
11.3. Plaintiff uses their mark "LACY" entirely in their unique label ' ', which is used extensively on the Plaintiff's packaging. Consequently, Plaintiff claims that the layout of the label, including colour scheme, trade dress and placement of features, is a distinctive aspect associated with the Plaintiff's goods.
11.4. Furthermore, Plaintiff also claims that their labels qualify to be an original artistic works under the provisions of the Copyright Act, 1957. Details of Plaintiff's copyright registrations have also been mentioned at Paragraph No. 11 of the plaint.
11.5. The trademark "LACY" was adopted in the year 2006 and has been using the same extensively and continuously ever since. Consequently, pursuant to the Plaintiff's substantial efforts to advertise and promote their snack products under the trademark "LACY", the same has acquired significant goodwill and reputation and become distinctive of and CS(COMM) 200/2024 Page 3 of 12 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 07/03/2024 at 22:59:05 exclusively identified with the Plaintiff's goods. This is evidenced by the sales figures of the Plaintiff under the mark "LACY" and its formative marks, details of which have also been mentioned in the plaint. 11.6. Plaintiff's grievance arises on account of the Defendants' dishonest adoption of nearly identical/ deceptively similar trademark "LECY"/ ' ' ["Impugned Mark"]. Plaintiff first became aware of the Impugned Mark upon coming across Defendant No. 1's trademark application for the Impugned Mark. Plaintiff initiated rectification proceedings against the said trademark application on 9th May, 2020. The registration details of the Impugned Mark are reproduced as under:
11.7. Defendants are using the Impugned Mark in respect of identical goods as the Plaintiff, i.e. confectionary, snacks, namkeen and other allied goods. Further, Defendants have replicated the entire get-up, font, colour combination, devices and style of the Plaintiff's label and packaging and are CS(COMM) 200/2024 Page 4 of 12 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 07/03/2024 at 22:59:05 using the same to market and sell snack products in Delhi, some illustrative examples of which are represented as under:
11.8. Defendant No. 1 has also made false claims with regards to their user detail. In the aforenoted trademark application, the user is claimed from the year 2008. However, in contrast, the affidavit filed before the Trademark Registry claims user since the year 2016. Yet again, in the counter statement filed by Defendant No. 1 in the ongoing rectification proceedings, use has been asserted from the year 2018. Thus, Defendants have contradicted themselves on multiple occasions, and moreover, have not filed any documentation to substantiate their user claim. In view of the CS(COMM) 200/2024 Page 5 of 12 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 07/03/2024 at 22:59:05 above, and considering the fact that Plaintiff is nonetheless the prior user since the year 2006, it is submitted that Defendants' adoption of the Impugned Mark is dishonest and deliberately intended to take unfair advantage of the Plaintiff's goodwill and reputation. Accordingly, Plaintiff has filed the instant suit seeking protection of their marks.
12. Issue notice. Mr. Rakesh Gaur, counsel for Defendants appearing on advance service, accepts notice. Although Mr. Gaur has been given an opportunity to put forth his stand, however, he only makes a request for time to file a reply. Be that as it may, in view of the urgency expressed by Mr. Bhatia, the Court has proceeded to adjudicate the issue of grant of ad- interim injunction.
13. At the outset, for the sake of clarity and convenience, a side-by-side comparison table of the competing marks and packaging is set out below:
CS(COMM) 200/2024 Page 6 of 12This 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 07/03/2024 at 22:59:05 CS(COMM) 200/2024 Page 7 of 12 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 07/03/2024 at 22:59:05
14. In the prima facie opinion of the Court, the above comparison reveals that the Defendants' Impugned Mark is a blatant imitation of the Plaintiff's trademark, having used the identical font style and colour combination in their labels. Furthermore, the impugned packaging is also an imitation of the Plaintiff's packaging/ products, as Defendants have prima facie copied the entire trade dress in relation to various products as represented above, including the colour combination, placement of features, etc. Further, from the above comparison, no differentiating factor is noticed between any of the competing labels, which are visually, phonetically and structurally similar. Considering the fact that the Defendants are using the Impugned Mark/ label/ packaging in respect of identical goods, being snack products marketed for consumption by young children, the identity/ deceptive similarity between the competing labels would create a strong likelihood of confusion.
15. Accordingly, the Court prima facie finds that all three ingredients of passing off are clearly met: Plaintiff has established reputation in their marks, evidenced by their continuous use, marketing and revenue. Further, Defendants are utilizing their Impugned Mark/ label/ packaging in respect of identical goods, indicating an intentional attempt to misrepresent their products as those of the Plaintiff and take unfair advantage of the Plaintiff's established reputation. Finally, the use of the Impugned Mark in this manner would cause irreparable loss to the Plaintiff in case no injunction is granted in their favour.
16. It is also pertinent to note that although Defendant No. 1 has a registration in their favour for the Impugned Mark, the same would not affect the Plaintiff's right to seek an injunction on passing off. As observed CS(COMM) 200/2024 Page 8 of 12 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 07/03/2024 at 22:59:05 by the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai2, passing off is a common law right which provides a broader remedy than infringement, and therefore an action for passing off may arise even in case the impugned trademark is registered.
17. In light of the above, since the Plaintiff has prima facie established their prior user, the Defendants' adoption of the Impugned Mark appears to be male fide and dishonest in trade, deliberately adopted to obfuscate the distinction between the Defendants' and Plaintiff's marks and create a false impression of association with the Plaintiff's products.
18. Accordingly, till the next date of hearing, the Defendants and/or anybody acting on their behalf are restrained from manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing with goods being namkeen, Snacks and other cognate/ allied goods under the Impugned Mark/ label ' ' which is identical/ deceptively similar to the Plaintiff's trademark 'LACY'/ ' ' and its formative marks/ labels/ packaging or any other identical/ deceptively similar mark amounting to passing off of the Plaintiff's registered trademarks.
19. Reply be filed within four weeks from today. Rejoinder thereto, if any, be filed within two weeks thereafter.
20. List on 9th August, 2024.
2(2016) 2 SCC 683.
CS(COMM) 200/2024 Page 9 of 12This 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 07/03/2024 at 22:59:06 I.A. 5361/2024 (seeking appointment of local commissioner)
21. Mr. Shailen Bhatia, counsel for Plaintiff, contends that the Defendants are likely to remove all physical evidence or deny their involvement in the infringing activities. Accordingly, he seeks appointment of a Local Commissioner for visiting and examining the premises of the Defendants. Plaintiff believes that the impugned products are stored at Defendants' premises situated at:
(a) M/s Jai Balaji Grah Udhyog, Ward No. 30, Gali No. 2, Subhash Nagar, Bhind, Madhya Pradesh - 477001.
[Phone: 09926447970]
(b) M/s Shri Ganesh Grah Udhyog, A.B. Road, Sagartal Chouraha, Gwalior, Madhya Pradesh.
[Phone: 07999677858]
22. Accordingly, the following directions are issued:
22.1. The following are appointed as Loccal Commissioners to visit the aforenoted premises of the Defendants situated at the address mentioned against their name:
Name of the Local Commissioner Address of the Defendants Ms. Shefali Gandhi, Advocate M/s Shri Ganesh Grah Udhyog, A.B. [Contact No. +91 9958580157] Road, Sagartal Chouraha, Gwalior, Madhya Pradesh.
Mr. D. Vashishtha, Advocate M/s Jai Balaji Grah Udhyog, Ward [Contact No. +91 7982104633] No. 30, Gali No. 2, Subhash Nagar, Bhind, Madhya Pradesh - 477001.
22.2. The Local Commissioners, along with representative(s) of the Plaintiff and their counsel, shall be permitted to enter upon the above-noted CS(COMM) 200/2024 Page 10 of 12 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 07/03/2024 at 22:59:06 premises of the Defendants, as well as any other location/ premises that may be identified during the course of commission, in order to conduct search and seizure.
22.3. Local Commissioners shall conduct a search of the aforenoted premises and seize any products (including unfinished/ semi-finished goods) bearing the Impugned Mark/ labels/ packing 'LECY'/ , and/ or any other marks identical/ deceptively similar to the Plaintiff's trademark 'LACY'/ ' ', which may be lying or stocked or stored for sale.
22.4. After seizing such 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. 22.5. 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 impugned products. Further, Local Commissioners shall try to ascertain details of the parties to whom such Defendants are supplying the impugned products as well as details of such transactions.
CS(COMM) 200/2024 Page 11 of 12This 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 07/03/2024 at 22:59:06 22.6. Local Commissioners are 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.
22.7. 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.
22.8. The fee of the Local Commissioners, to be borne by the Plaintiff, is fixed at INR 1,50,000/- each. Plaintiff shall also bear expenses for travel and lodging of the Local Commissioners and other miscellaneous out-of-pocket expenses for the execution of the commission. Entire fee of the Local Commissioner shall be paid in advance by Plaintiff. 22.9. The commission shall be executed within a period of one week from today.
22.10. Report of the commission shall be filed by Local Commissioner within a period of four weeks from the date of execution.
23. With the above directions, the application stands disposed of.
SANJEEV NARULA, J MARCH 6, 2024 nk CS(COMM) 200/2024 Page 12 of 12 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 07/03/2024 at 22:59:06