Delhi High Court - Orders
Itc Limited vs Golden Tobie Private Limited & Ors. & Ors on 19 May, 2022
Author: Navin Chawla
Bench: Navin Chawla
$~9
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 331/2022
ITC LIMITED ..... Plaintiff
Through: Mr.Sandeep Sethi Mr.Rajshekher
Rao, Senior Advocates with
Ms.Suhrita Majumdar, Mr.Afzal B.
Khan, Mr.Debjyoti Serkar,
Mr.M.Mukherjee, Mr.Samil
Mukherjee, Mr.Vishal Nagpal, Advs.
(Mob. No.9903026134, 9881880037)
versus
GOLDEN TOBIE PRIVATE LIMITED & ORS. & ORS.
..... Defendants
Through: Mr.Amit Gupta, Mr.Hari Shankar
Mahapatra, Mr.Shaunak Dutta and
Mr.Dhruv Chaudhary, Advs. for D-1.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
ORDER
% 19.05.2022 I.A. 7880/2022 Allowed, subject to all just exceptions.
I.A. 7878/20221. This is an application seeking exemption from initiating pre- institution mediation under Section 12A of the Commercial Courts Act, 2015.
2. Having perused the contents of the application, the exemption prayed for is granted.
3. Accordingly, the application stands disposed of.
Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:20.05.2022 19:07:01 I.A. 7879/20221. The present application filed on behalf of the Plaintiff seeks leave to file additional documents under the Commercial Courts Act, 2015.
2. The Plaintiff, if it wishes to file additional documents at a later stage, it shall do so strictly as per the provisions of the Commercial Courts Act.
3. Accordingly, the application stands disposed of. CS(COMM) 331/2022
1. Let the plaint be registered as a suit.
2. Issue summons. Summons is accepted by Mr.Amit Gupta, learned counsel for the Defendant No. 1.
3. Let the summons be served on the Defendant no.2 through all permissible modes, on the Plaintiff taking necessary steps.
4. The Defendant(s) shall file their written statements within 30 days of the receipt of the summons, that is, Defendant no.1 shall file its written statement within 30 days from today, while Defendant no.2 may file the same within 30 days of receipt of the summons. 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 statements shall not be taken on record.
5. Liberty is given to the Plaintiff to file replication(s) within 15 days of the receipt of the written statements. Along with the replication(s), if any, filed by the Plaintiff, an affidavit 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.
6. List before the Joint Registrar (Judicial) on 29th August, 2022.
Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:20.05.2022 19:07:01I.A. No.7881 & 7883/2022
1. Issue notice. Notice is accepted by Mr.Amit Gupta, learned counsel for the Defendant No. 1.
2. Let the notice be served on the Defendant no.2 through all permissible modes, on the Plaintiff taking necessary steps, returnable on 29th August, 2022 before the Joint Registrar (Judicial).
3. Reply be filed within 30 days of the receipt of the notice, that is, Defendant no.1 shall file its reply within 30 days from today, while Defendant no.2 may file the same within 30 days of receipt of the notice. Rejoinder affidavit thereto, if any, be filed within three weeks thereafter. List before the Joint Registrar (Judicial) on 29th August, 2022. I.A. No.7877/2022 & 7882/2022
1. I.A. No. 7877/2022 is an application filed by the Plaintiff inter-alia praying for an order restraining the Defendants, their partners, proprietors, servants, agents, distributors, marketers, suppliers and all others in active concert or participation with them from manufacturing, selling, offering for sale, advertising, directly or indirectly, dealing in its products being cigarettes bearing the Impugned Labels - „Gold Magic‟ , „Gold Strike‟ and/or „Gold Touch‟ in the packaging which has been detailed in the application itself.
2. I.A. 7882/2022 has been filed by the plaintiff seeking continuation of the direction contained in paragraph 14 of the order dated 19.04.2022 passed by the coordinate Bench of this Court in CS (Comm) 667/2021.
Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:20.05.2022 19:07:013. Issue notice. Notice is accepted by Mr.Amit Gupta, learned counsel for the Defendant No. 1.
4. Let the notice be served on the Defendant no.2 through all permissible modes on the Plaintiff taking necessary steps, returnable on 29th August, 2022 before the Joint Registrar (Judicial).
5. Reply be filed within 30 days of the receipt of the notice, that is, Defendant no.1 shall file its reply within 30 days from today while Defendant no.2 may file the same within 30 days of receipt of the notice. Rejoinder affidavit thereto, if any, be filed within three weeks thereafter.
6. The learned counsel for the Defendant no.1, who appears on advance notice, submits that the defendant no.1 has not manufactured or sold cigarettes under the trademark „Gold Strike‟. He submits that the packets found by the learned Local Commissioner appointed pursuant to the order dated 17.12.2021 passed by this Court in CS(COMM) 667/2021 titled - ITC Ltd. v. Tapisserie Lifestyle Private Limited & Anr., had been bought by the defendant no. 1 from the open market, and not manufactured or packaged by the Defendant no.1. He undertakes on behalf of the Defendant no.1 that the Defendant no.1 shall not use the said trademark or the impugned packaging claimed by the Plaintiff in the present suit and is willing to suffer a decree to that extent. Let an affidavit in this regard be filed by the Defendant no.1.
7. As far as the cigarettes being sold under the trademark „Gold Touch‟ are concerned, the learned counsel for the Defendant no.1, on instructions, submits that the Defendant no.1 has discontinued the manufacturing and sale of the cigarettes under the said trade name, and the packaging impugned by the Plaintiff in the present suit. He submits that the Defendant no.1 is willing to suffer a decree of injunction as far as the trademark and packaging is Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:20.05.2022 19:07:01 concerned. The Defendant no.1 shall file an affidavit clearly disclosing the sale of the cigarettes made by the Defendant no.1 under the said trademark and the impugned packaging and the date of seizure of such activities by the Defendant no.1. Such affidavit be filed within a week from today.
8. As far as the claim of the plaintiff against the use of the mark "Gold Magic" and the packaging is concerned, the learned counsel for the Defendant no.1 submits that the trademark in question is entirely distinct. Drawing reference to the registration of the trademark obtained by the Plaintiff under the Trade Mark Application No.1276067, he submits the same is with the condition that the Plaintiff does not have any right to exclusively use the word "Gold". He submits that, therefore, the trademark of the two products, that is, of the Plaintiff and the Defendants, cannot be held to be deceptively similar. As far as the packaging is concerned, the learned counsel for the Defendant no.1 submits that the same are also completely distinct. In this regard he submits that while the packaging of „Gold Flake‟ has a roundel device, as far as the packaging of „Gold Magic‟ is concerned, it has a ribbon. He further submits that its font is also different. The „Gold Flake‟ is printed in silver and white background, while the „Gold Magic‟ is written in black on a red background. He further submits that, the packaging of the two products is also different at the top and side of the packaging.
9. He further submits that the Defendant no.1 has been using the said trademark and packaging since the April-May, 2021 to the knowledge of the Plaintiff. He submits that this knowledge can be attributed to the plaintiff from the proceedings of the learned Local Commissioner which were undertaken pursuant to the order dated 17.12.2021 passed by this Court in Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:20.05.2022 19:07:01 CS(COMM) 667/2021 referred hereinabove as also opposition filed by the Plaintiff to the application seeking registration of the said mark filed by the Defendant no.1 with the Registrar of Trademarks. He further submits that even after gaining knowledge, the Plaintiff had not taken any steps against the defendant no. 1 and therefore, this delay, in itself, is fatal to the claim of the Plaintiff for an ad-interim relief.
10. On the other hand, the learned senior counsel for the Plaintiff has produced before this Court the packets containing the cigarettes being sold under the trademark „Gold Flake‟ by the Plaintiff and „Gold Magic‟ by the Defendants. He has also drawn attention of this court to the orders dated 17.12.2021 and 24.03.2022 and the judgment dated 19.04.2022 passed by this Court in CS(COMM) 667/2021 referred hereinabove. He submits that the use of trademark and packaging is in clear violation of the rights vested in the Plaintiff and as recognized by this Court, at least prima facie in the above orders/judgment.
11. The learned senior counsel for the plaintiff has also taken me through the averments in the plaint as also the documents filed.
12. Having considered the submissions made, perused the pleadings in the plaint, the documents filed therewith, and the original packets produced by the learned senior counsel for the Plaintiff in Court, I am of the opinion that the Plaintiff has been able to make out a prima facie case in its favour. The points of distinction in the packaging brought about and highlighted by the learned counsel for the Defendant no.1, at least prima facie, appear to be superficial in nature. It is settled law that the test to be applied in such cases is one of average consumer with imperfect recollection. The products are not to be kept side by side to minutely look at the similarities and the Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:20.05.2022 19:07:01 dissimilarities in the two marks and packaging.
13. Keeping the said test in view, in my opinion, at least prima facie, it appears that the packaging of the impugned product is deceptively similar, with both the packaging having identical photographs of statutory warning, colour scheme, size etc. At this stage, therefore, the distinction sought to be drawn by the learned counsel for the Defendant no.1, at least, prima facie, does not appear to stand any merit.
14. As far as the plea of delay is concerned, I may only note that the Plaintiff claims that the knowledge of the defendant no. 1 using the said trademark was gained by the Plaintiff only pursuant to the report filed by the learned Local Commissioner appointed by this Court in CS(COMM) 667/2021. In the said suit there was already an injunction in favour of the Plaintiff and even at the stage of final disposal of the suit by the judgment dated 19.04.2022, including the product with the impugned trademark „Gold Magic‟ is concerned, the Court had passed the following directions:
"14. Considering the fact that the present suit relates to HASH GOLD/ GOLD which was primarily filed against Defendant No.1, the Plaintiff is permitted to seek its remedies in accordance with law qua Defendant No.2, for any other products that it claims to be infringing of its rights. However, for a period of four weeks, insofar as the said products of other brands - Gold Magic, Gold Touch and Gold Strike are concerned, the said products if seized by the Local Commissioner, shall not be disposed of by Defendant No.2. The same shall be subject to any orders which may be passed in any other proceedings to be instituted by the Plaintiff. Therefore, insofar as the Gold Magic, Gold Touch and Gold Strike are concerned, the Plaintiff may avail of its remedies in accordance with law."Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:20.05.2022 19:07:01
15. He submits that, therefore, the Plaintiff cannot be denied the relief on the ground of any alleged delay in moving the Court.
16. Prima facie, I find merit in the submissions of the learned senior counsel for the Plaintiff. In view of the proceedings that have been undertaken in CS(COMM) 667/2021 and the orders passed therein, it cannot be said, at least at this stage, that the Plaintiff can be left remediless on the ground of alleged delay.
17. Accordingly, the Defendant No.1, their partners, proprietors, servants, agents, distributors, marketers, suppliers and all others in active concert or participation with them, are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly, dealing with the product under use of label „Gold Magic‟ and the cigarette packet -
or any trademark/packaging deceptively similar to that of the Plaintiff‟s till the next date of hearing.
18. As far as the other marks, that is, „Gold Strike‟ and „Gold Touch‟ are concerned, though, the Defendant no.1 has already made a statement that it is not using the said mark anymore and, in fact, has not used the mark „Gold Strike‟, in my opinion, the Plaintiff has made prima facie case in its favour for restraining the Defendant no.2 from using the said mark. Accordingly, Defendant no.2, their partners, proprietors, servants, agents, distributors, Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:20.05.2022 19:07:01 marketers, suppliers and all others in active concert or participation with them shall be restrained from using the mark „Gold Strike‟ and „Gold Touch‟ or any other deceptively similar mark or in the packaging - , till the next date of hearing.
19. The Plaintiff shall comply with the Order XXXIX Rule 3 of CPC within one week from today.
20. The goods already lying seized pursuant to the order dated 17.12.2021 passed by this Court in CS(COMM) 667/2021, referred hereinabove, shall remain seized and the Defendant no.1 shall not use or deal in the same till further order of this Court.
NAVIN CHAWLA, J MAY 19, 2022/Arya/U/Ai Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:20.05.2022 19:07:01