Delhi High Court - Orders
Atul Paper Pvt. Ltd vs Sri Balaji Sales Corporation on 9 December, 2020
Author: Mukta Gupta
Bench: Mukta Gupta
$~1
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 544/2020
I.A.11709/2020 (under Order XXXIX Rule 1 and 2 CPC)
I.A.11710/2020 (exemption)
I.A.11711/2020 (under Order XI Rule 1(4) Commercial Courts Act)
ATUL PAPER PVT. LTD. ...... Plaintiff
Represented by: Mr.M.L.Mangla, Advocate with
Mr.Manish Singhal, Advocate.
versus
SRI BALAJI SALES CORPORATION ...... Defendant
Represented by: Mr.Barun Kumar Sinha, Advocate.
CORAM:
HON'BLE MS. JUSTICE MUKTA GUPTA
ORDER
% 09.12.2020 The hearing has been conducted through video conferencing. I.A.11710/2020 (exemption)
1. Exemption allowed subject to just exceptions.
2. Application is disposed of.
I.A. 11711/2020 (under Order XI Rule 1(4) Commercial Courts Act)
1. Additional documents, if any be filed within thirty days.
2. Application is disposed of.
CS(COMM) 544/2020 I.A. 11709/2020 (under Order XXXIX Rule 1 and 2 CPC)
1. Plaint be registered as a suit.
Signature Not Verified Digitally Signed By:JUSTICECS(COMM) 544/2020 PageGUPTA MUKTA 1 of 5 Signing Date:09.12.2020 20:10:46
2. Issue summons in the suit and notice in the application to the defendant.
3. Learned counsel for the defendant accepts summons in the suit and notice in the application.
4. Written statement to the suit and reply affidavit to the application along with the affidavits of admission-denial be filed within thirty days. Replication and rejoinder affidavit along with the affidavit of admission- denial be filed within three weeks thereafter.
5. List the suit and application before the learned Joint Registrar for completion of pleadings and admission-denial of documents on 15th February, 2021.
6. List the suit and application before Court on 13th April, 2021.
7. The present suit has been filed by the plaintiff, inter alia, seeking permanent injunction in relation to the infringement of its trademark "ODDY'' as also the copyright therein, besides passing off the goods by the defendant as that of the plaintiff and damages. Case of the plaintiff is that the plaintiff is the registered owner of the trademark "ODDY'' vide the registration dated 1st March, 2005 in class 16 which relates to paper, printing and stationery material for office, school and home use, computer accessories and media, instructional and teaching material etc. Besides in class 16, the plaintiff has registration of the mark "ODDY'' in class 35 as well, which inter alia, includes perfumery, essential oils, leathers, imitations of leather, luggage and carrying bags, leather wallets, purses and suit cases. besides teaching apparatus and instruments. Plaintiff is the user of the trademark since the year 1998 and has a valid registration of the copyright therein as well. The plaintiff is also the registered owner of the mark Signature Not Verified Digitally Signed By:JUSTICE CS(COMM) 544/2020 PageGUPTA MUKTA 2 of 5 Signing Date:09.12.2020 20:10:46 'ODDY Excellency BOND' for paper and paper sheets. The sister concern of the plaintiff i.e. Uniwraps Innovations Private Limited has the registration marks of ODDY-UNIWRAPS for Butter Paper, food grade packing paper etc. The sales figures of the plaintiff's products under the mark "ODDY'' have been given in para 13 of the plaint, wherein, the sales for the year 2019-2020 are ₹84,42,20,951/-. The plaintiff has been spending substantial amount on its promotional figures and in the year 2016-17, has spent ₹11,66,025/-, which though, has gone down in the subsequent years.
8. Grievance of the plaintiff in the present suit is that in the last week of September, 2020, plaintiff came to know from market sources that the defendant has started manufacturing and selling bags, including school bags under the mark/trademark "ODDY'' in the open market. The plaintiff, to find out the correct facts, purchased the goods of the defendant and has filed the present suit. A comparison of the two marks i.e. as that of the plaintiff and the defendant is depicted at page 28 of the plaint, as under:-
9. Learned counsel for the defendant, who enters appearance on advance notice, states that the mark of the plaintiff is simplicitor "ODDY'' whereas the defendant is using the mark 'TM Oddy BAGS'. He states, since the plaintiff is not dealing in school bags and the goods are different, there is no infringement of the registered mark "ODDY'' of the plaintiff. According to Signature Not Verified Digitally Signed By:JUSTICE CS(COMM) 544/2020 PageGUPTA MUKTA 3 of 5 Signing Date:09.12.2020 20:10:46 the defendant, the plaintiff has applied for registration of the mark "ODDY'' for school bags after the defendant applied for the registration thereof.
10. Admittedly, the term "ODDY'' is not a descriptive mark or a generic word and is a coined and adopted word. Merely by adding TM or giving the description of the product, would not change the core of the trademark which continues to be "ODDY''.
11. As regards the second contention of the learned counsel for the defendant that the plaintiff is not dealing in school bags, as noted above, the plaintiff has registration of its mark "ODDY'' in classes 16 and 35, which includes all products, paper products etc. for the allied items relatable to the teaching as also leather, leather bags etc. under class 35, thus the use of defendant for the mark in relation to school bags would be a use of the mark in allied goods.
12. Learned counsel for the defendant relies upon the decision in (2010) 2 SCC 142 Skyline Education Institute (India)(P) Ltd. Vs. S.L.Vaswani & Ors. particularly para 26 thereof. Supreme Court rejected the appeal filed by the appellant therein on the ground that the word 'skylive' is being used as a trade name by various companies/organisations/business concerns and also for describing different types of institutes/institutions. Supreme Court noted that the voluminous record produced by respondents showed that as many as 117 companies including computer and software companies and at least ten educational/training institutions were operating under the name 'Skylive'. In the present case there is no material to show that 'Oddy' is a commonly used mark in the trade.
13. Considering that the mark used by defendant is deceptively similar rather exactly same as the registered mark of the plaintiff and is being used Signature Not Verified Digitally Signed By:JUSTICE CS(COMM) 544/2020 PageGUPTA MUKTA 4 of 5 Signing Date:09.12.2020 20:10:46 by the defendant for allied goods, this Court finds that the plaintiff has made out a prima facie case in its favour and in case no ad-interim injunction is granted, the plaintiff would suffer an irreparable loss. The balance of convenience also lies in favour of the plaintiff and against the defendant. Consequently, an ad-interim injunction is granted in favour of the plaintiff and against the defendant in terms of prayers (a) and (b) of para 26 of IA 11709/2020 till the next date of hearing before this Court.
14. Copy of the order be uploaded on the website of this Court.
MUKTA GUPTA, J.
DECEMBER 09, 2020 akb Signature Not Verified Digitally Signed By:JUSTICE CS(COMM) 544/2020 PageGUPTA MUKTA 5 of 5 Signing Date:09.12.2020 20:10:46