Delhi High Court - Orders
Hell Energy Magyarorszag Kft vs Mr Yash Tekwani & Ors on 6 April, 2022
Author: Subramonium Prasad
Bench: Subramonium Prasad
$~27
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CONT.CAS(C) 290/2022
HELL ENERGY MAGYARORSZAG KFT ..... Petitioner
Through: Mr. Nihit Nagpal and Mr. Anuj
Jhawar, Advocates
versus
MR YASH TEKWANI & ORS. ..... Respondents
Through: Mr. Gautam Panjwani, Ms.Kasish
Vij, Advocates
CORAM:
HON'BLE MR. JUSTICE SUBRAMONIUM PRASAD
ORDER
% 06.04.2022
1. The instant contempt petition has been filed for violation of an order dated 29.09.2021 passed by this Court in CS (COMM) 254/2021.
2. The petitioner had filed the abovementioned suit for permanent injunction restraining the defendants from using the trademark and unauthorised use of the trademark, trade name, trade dress, copyright, passing of/dilution and damages/rendition of accounts of profit. Notice was issued on 01.06.2021. The relevant portion of the order dated 01.06.2021 reads as under:-
"5. The plaintiff has instituted this suit for permanent injunction for restraining the defendant from infringing the plaintiff‟s trademark, unauthorized use of trade name, trade dress, copyright, passing off, delivery up, damages and rendition of accounts.Signature Not Verified Digitally Signed By:RAHUL SINGH CONT.CAS(C) 290/2022 Page 1 of 13 Signing Date:13.04.2022 11:11:05
6. The Plaintiff is the owner of the trademarks HELL, HELL ENERGY, variations thereof. The copyright, logo, trade dress, artistic work/ / incorporates the Plaintiff‟s company name and word mark HELL is a unique get up and colour scheme of red and black which was adopted by the Plaintiff in the year 2007. The particulars of the registration of the Plaintiff‟s International trademarks are given in para 12 of the plaint and the Indian Trademark Registration are given in para 30 of the plaint. The Plaintiff is using the aforesaid trademarks and devices in respect of the energy drinks. The Plaintiff‟s website, www.hellenergy.com, which is operational since 11th June, 2006 is accessible by persons in India and abroad. Plaintiff also owns and operates the website www.hellenergystore.com since 01st October, 2013, wherein it showcases its variety of drinks under the trade mark HELL, HELL ENERGY variations thereof. The Plaintiff‟s products available in almost 50 countries. The Plaintiff‟s goods under the trade mark "HELL" and variations thereof are being sold in India since November, 2017. The particulars of revenue sales of the Plaintiff‟s Hell Energy Drink in India and the amount spent for the sales promotion in print as well as electronic media are given in the plaint. The Signature Not Verified Digitally Signed By:RAHUL SINGH CONT.CAS(C) 290/2022 Page 2 of 13 Signing Date:13.04.2022 11:11:05 plaintiff relies upon the interim order dated 08th January, 2020 passed by this Court in C.S.(COMM) 4/2020 against another infringer.
7. In April, 2021, the Plaintiff became aware that defendant has filed the trade mark application no.4909717 dated 18th March, 2021 with the Trade Marks Registry, Delhi for registration of HALL energy drinks on „Proposed to be sued‟ basis and another Application no.4912410 dated 19th March, 2021 in respect to mark HELLxxx in Class 32. Upon investigation, the plaintiff came to know that the energy drinks under the name impugned mark HELLxxx are being manufactured at Dhaulana, Hapur, Uttar Pradesh are being sold in Delhi and other states in North-India, by the defendant, where the prominent part is HELL and xxx is being written in smaller font, below the word HELL, and in a similar red, white and black get up .
8. The Plaintiff is aggrieved by the use of Hellxxx in red, black and white getup by the defendant and HALL energy drink which resembles the mark of the Plaintiff Hell and its variations thereof. The comparison of the rival trademarks and devices of the Plaintiff and the defendant are reproduced herein below:-Signature Not Verified Digitally Signed By:RAHUL SINGH CONT.CAS(C) 290/2022 Page 3 of 13 Signing Date:13.04.2022 11:11:05
9. The Plaintiff seeks ex-parte ad-interim injunction against the defendant. This Court is satisfied that the Plaintiff has a strong prima facie case; balance of convenience is in favour of the Plaintiff and they will suffer irreparable loss if the ex-parte ad-interim injunction is not granted against the defendant.
10. The defendant, its directors, agents, licensees, franchisees, representatives, employees, affiliates, stockists, distributors or any one claiming under them are hereby restrained from manufacturing, marketing, selling, storing and advertising the trade mark HELLxxx and HALL Energy drink, from infringing the plaintiff‟s trade mark HELL and its variations thereof and the plaintiff‟s copyright in its product packaging/trade dress and/or using any trade mark, copyright, trade dress deceptively similar to the Signature Not Verified Digitally Signed By:RAHUL SINGH CONT.CAS(C) 290/2022 Page 4 of 13 Signing Date:13.04.2022 11:11:05 plaintiff‟s trade mark, copyright, trade dress , and/or passing off their goods as that of the Plaintiff till the next date of hearing."
3. Pending suit, the parties entered into a settlement before the Delhi High Court Mediation & Conciliation Centre. The relevant portions of the settlement agreement reads as under:-
"1. The Second party hereby acknowledges and recognizes the First Party to be the prior adopter, user and the rightful owner/proprietor of the trademark "HELL", and its variations thereof, and the Second Party does not claim any right over the said trademark or any mark, which is confusingly or deceptively similar, in any manner to the trademark of the First Party.
2. The Second Party hereby acknowledges and recognized the First Party's sole and exclusive copyright and other proprietary rights and interests in the First Party's packaging and trade dress, Signature Not Verified Digitally Signed By:RAHUL SINGH CONT.CAS(C) 290/2022 Page 5 of 13 Signing Date:13.04.2022 11:11:05 which are subject matter of this suit.
3. The Second Party agrees, undertakes and confirms that in future the Second Party shall never:
i. manufacture, market, sell, store and advertise by using the impugned mark "Hellxxx"/"HALL ENERGY DRINK/ "and/or any other confusingly or deceptively similar trade mark in respect of their beverages, goods and business, by themselves, their directors, partners, proprietors, agents, servants, licensees, sub-licensees, franchisees, representatives, employees, affiliates, stockists, distributors, sub- distributors, dealers, sub-dealers, retailers or any one claiming under them, directly or indirectly;
ii. In any manner infringe the First Party's copyrights in artistic works and trade dress by using the trade dress having identical get up, Signature Not Verified Digitally Signed By:RAHUL SINGH CONT.CAS(C) 290/2022 Page 6 of 13 Signing Date:13.04.2022 11:11:05 colour and font and/or any other confusingly or deceptively similar label/trade dress in respect of their beverages, goods and business by themselves, their directors, partners, proprietors, agents, servants, licensees, sub-licensees, franchisees, sub- franchisees, representatives, employees, affiliates, stockists, distributors, sub- distributors, dealers, sub-dealers, retailers or any one claiming under them, directly or indirectly.
iii. Pass off or enable others to pass off their beverages, goods and business as those of the First Party, by themselves, their directors, partners, proprietors, agents, servants, licensees, sub-licensees, franchisees, sub-franchisees, representatives, employees, affiliates, stockists, distributors, sub-distributors, dealers, sub-dealers, retailers or any one claiming under them, directly or indirectly.
4. The Parties have agreed that commercial suit bearing C.S.(Comm.) no.254 of 2021 for permanent injunction from infringement/unauthorized use of trade mark/ trade dress/ copyright, passing off, dilution and damages/ rendition of accounts of profit etc. shall be decreed by the Hon‟ble High Court of Delhi, in favour of the First Party and against the Second Party, in terms of the prayers in Paragraph 62(a), (b) and (c) of the Plaint. The relevant extract of the prayer in the Signature Not Verified Digitally Signed By:RAHUL SINGH CONT.CAS(C) 290/2022 Page 7 of 13 Signing Date:13.04.2022 11:11:05 Para 62 (a), (b) and (c) of the plaint are being reproduced hereinunder:-
(a) Pass a decree for permanent injunction restraining the Defendant by themselves, their directors, partners, proprietors, agents, servants, licensees, sub-licensees, franchisees, sub-franchisees, representatives, employees, affiliates, stockists, distributors, sub-distributors, dealers, sub-dealers, retailers or any one claiming under them, directly or indirectly, from in any manner infringing the Plaintiff‟s prior and bonafidely adopted, used and well-known trade marks HELL and variations thereof, from manufacturing, marketing, selling, storing and advertising by using the impugned mark "Hellxxx"/ "HALL ENERGY DRINK/ and/or any other confusingly or deceptively similar trade mark in respect of their goods and business;
(b) Pass a decree for permanent injunction restraining the Defendant by themselves, their directors, partners, proprietors, agents, servants, licensees,, sub-licensees, franchisees, sub-franchisees, representatives, employees, affiliates, stockists, distributors, sub-distributors, dealers, sub-dealers, retailers or any one claiming under them, directly or indirectly, from in any manner infringing the Plaintiff‟s copyrights in the artistic works and trade Signature Not Verified Digitally Signed By:RAHUL SINGH CONT.CAS(C) 290/2022 Page 8 of 13 Signing Date:13.04.2022 11:11:05 dress/ By using the trade dress having identical get up, colour and/or any other confusingly or deceptively similar label/trade dress in respect of their goods and business.
(c) Pass a decree for permanent injunction restraining the Defendant by themselves, their directors, partners, proprietors, agents, servants, licensees, sub-licensees, franchisees, representatives, employees, affiliates, stockists, distributors, sub-
distributors, dealers, sub-dealers, retailers or any one claiming under them, directly or indirectly, from in any manner misusing the Plaintiff‟s trade marks HELL and variations thereof and copyright in the artistic works/trade dress and variations thereof, from manufacturing, marketing, selling, storing and advertising and in respect of their goods, so as to pass off or enable others to pass off their goods and business as those of the Plaintiff, by using the impugned mark "Hellxxx"/ "HALL Signature Not Verified Digitally Signed By:RAHUL SINGH CONT.CAS(C) 290/2022 Page 9 of 13 Signing Date:13.04.2022 11:11:05 ENERGY DRINK/ and trade dress having identical get up, colour and font, and there the prominent part is HELL and xxx is being written in smaller font, below the word HELL;
5. The Second Party has filed withdrawl application dated August 19, 2021 to withdraw their trademark application No.4909717 dated March 18, 2021 for the mark HALL ENERGY DRINK in Class 32 and has also filed withdrawal application dated August 18, 2021 to withdraw application No.4912410 dated March 19, 2021 for the mark Hellxxx in Class 32 and undertakes not to file any other application for marks/labels identical or deceptively similar to the first party's trade marks/labels/trade dress in the future. In view of the steps taken by the Second Party, the First Party agrees and accepts that hte claim of the First Party in terms of the Prayer in Paragraph 62(g) of the plaint stands satisfied. The copies of withdrawal applications as filed by the Second Party are annexed herewith as Annexure - C.
6. The Second Party hereby declares that necessary steps have already been taken to remove/delete/take down the pages displaying the impugned mark and impugned trade dress online on social media platforms such as Facebook. If there is any remaining social media or third party listing of the products bearing the impugned mark Hellxxx and HALL ENERGY DRINK, the Second Party, undertakes to take all steps to have the same removed/deleted Signature Not Verified Digitally Signed By:RAHUL SINGH CONT.CAS(C) 290/2022 Page 10 of 13 Signing Date:13.04.2022 11:11:05 within seven days from signing this agreement.
7. The Second Party shall recall all gooods from its business partners destroy all the impugned goods, catalogues, packaging boxes, labels, stationery, promotion material and cylinder/dyes used for printing labels and all other things of any kind and nature bearing and/or containing the impugned marks "HALL ENERGY DRINK"/"Hellxxx", and trade dress with similar/identical get up/colour, in any manner whatsoever. After the Hon'ble Court passes an order releasing the superdari goods. the second party at its own cost shall carry out the destruction within one week from the order at a mutually agreed date, Gnu and place in the presence of the representatives of the First Party, who shall have the right to video record the entire destruction process. The Second Party states that for enabling proper coordination, whenever and if required, the representatives of the First Party can contact Mr. Gautam Panjwani (Advocate) of the Second Party at his handheld number phone 9891212667. Subject to its compliance and in view of the statement/declaration made by the Second Party in Paras4, 5,6, 7 and 8 herein of the present Settlement Agreement, the First Party agrees and gives up its claim in terms of the prayer in Paragraph 62
(d),(f),(h),(i) and (j) of the Plaint.
8. The Second Party has agreed and undertakes to pay the First Party a sum of Rs. 1,50,000/- (Rupees One Lakh Fifty thousand Only) towards damages and litigation expense incurred by the First Party. The Second Party agrees to transfer the amount through Banker's Cheque made in the name of S.S. Rana & Co./RTGS into the account of the S.S. Rana & Co. (Advocate of First Party) in two installment, first installment of Rs.75,000/- (Seventy Five Thousand Only) will be paid at the time of signing of the present Signature Not Verified Digitally Signed By:RAHUL SINGH CONT.CAS(C) 290/2022 Page 11 of 13 Signing Date:13.04.2022 11:11:05 settlement agreement through Demand Draft no. 119290 dated August 17, 2021 in name of S.S. Rana & Co drawn on HDFC Bank, Greater Kailash-I, New Delhi and towards second installment of Rs.75,000/-, the second has given posted dated cheque no 001489dMed September 15, 2021 drawn on HDFC Bank, Greater Kailash-1. New Delhi, which the Second party has assured will be cleared on presentation. That the First Party does not maintain an INR account in India, hence the aforesaid amount of Rs.1,50,000/- is being made to S.S. Rana & Co., (Advocates for First Party). The copy of the authority letter issued by the First Party in favour of S.S. Rana & Co. dated August 02, 2021 is annexed herewith and marked as Annexure
- D. xxxx
13. The Parties agrees that they shall abide by the terms and conditions set out in the present Settlement Agreement and shall not dispute the same hereinafter in future. The Parties further agree that the statements made by them herein in this Settlement Agreement shall be taken as their respective undertakings to the Hon‟ble Court and if there is violation of any terms mentioned herein by the Second Party, then the second party shall pay a sum of Rs.20,00,000/- (Rupees Twenty Lakhs Only) to the First Party upon receipt of intimation of breach of agreement and shall also be held liable for contempt of court under the Contempt of Courts Act, 1971."
4. In terms of the settlement, the suit was disposed of by an order dated 29.09.2021. The petitioner has filed the instant contempt petition stating that the memorandum of settlement which forms a part of the order dated 29.09.2021 has been violated. The petitioner has placed on record the labels of the soft drink of the Petitioner and the Respondent which, according to Signature Not Verified Digitally Signed By:RAHUL SINGH CONT.CAS(C) 290/2022 Page 12 of 13 Signing Date:13.04.2022 11:11:05 the Petitioner, is now being manufactured by the Respondent.
5. It is stated by the learned counsel for the petitioner that the label of the soft drink is virtually identical to the label which was being used by the Respondent earlier.
6. It is contended by the learned counsel for the petitioner that instead of HELL, the respondents are using the same colour combination and are selling the same as HILL. He states that instead of HELL the soft drink is now being manufactures and sold with a name and mark HILL which more or less looks identical to the label which was being used earlier.
7. Learned counsel for the respondent contends that the remedy of the petitioner lies in filing an execution petition. This Court while exercising its power under Article 215 of the Constitution of India is not bound upon availability of a remedy under execution if it is found that the order of this Court is being violated with impunity and steps are taken to over-reach the undertaking given to the Court.
8. Learned counsel for the respondent seeks time to file reply. Reply be filed on or before 18.04.2022.
9. List on 19.04.2022.
10. The respondent/contemnor shall remain present in Court on the next date of hearing.
SUBRAMONIUM PRASAD, J APRIL 06, 2022/hsk Signature Not Verified Digitally Signed By:RAHUL SINGH CONT.CAS(C) 290/2022 Page 13 of 13 Signing Date:13.04.2022 11:11:05