Delhi District Court
M/S. Rashik Soap Factory vs Talkaji Bhaguji Prajapati Trading As ... on 17 October, 2023
IN THE COURT OF MS. ANURADHA SHUKLA
BHARDWAJ: DISTRICT JUDGE (COMMERCIAL
COURT)-02, SOUTH, SAKET, DELHI
CS (COMM) 11/23
M/s. Rashik Soap Factory
Vs.
Talkaji Bhaguji Prajapati Trading As M/s. Bhavani Soap
Factory
17.10.2023
ORDER
1. Vide this order, I shall dispose off two applications, one u/o XXXIX rule 1 & 2 CPC filed by plaintiff and another u/o XXXIX rule 4 CPC filed by defendant.
2. Plaintiff has filed the present suit for grant of interim injunction restraining defendants by themselves as also through their individual partners/proprietors, directors, agents, representative, distributors, assigns, stockiest etc. and all others acting for and on behalf of the defendants from manufacturing, selling, using, displaying, advertising, importing/exporting or by any other mode or manner in impugned goods namely detergent cake, detergent powder, oil soap, liquid soap, liquid detergent, toilet soap, bathing soap, cleaning powder and dish wash bar and other allied and cognate goods under the impugned trademark/label Page 1 of 20 and including colour scheme and combination, layout, make up, get up, font style, lettering style and all other artistic features etc. or any other trade mark/label identical with or deceptively similar to the plaintiff's said well known trademark/label including its artistic features which includes colour scheme and combination, layout, make up, or from doing any other acts may be likely to cause confusion or deception amounting to passing off their goods and business as and for those of the plaintiff's products.
3. In brief, case of the plaintiff is that in the year 2008, Shri Bhuraji Pomaji Maru trading as M/s Rashik Soap Factory had adopted the trademark/label/trade dress SHIDI in relation to goods i.e. detergent cake and washing powder etc. in the trade and business and has been using the same since then continuously, uninterruptedly, extensively and exclusively. It is averred that in order to protect the statutory and common law rights in the said trademark/label/trade dress, Shri Bhuraji Pomaji Maru trading as M/s Rashik Soap Factory filed trademark application for the registration of said trademark/label/trade dress "SHIDI" under no. 1814738 in class 03 in the year 2009. It is stated that the trademark/label/trade dress was first published in 2016. It is stated that the youtube video of the commercial of said trademark/label/trade dress is the testimony of the Page 2 of 20 publication of the said trademark/label/trade dress viz link https://youtu.be/TzHlJP2li1k.
4. It is averred that one of the partners of plaintiff firm Shri Jitendrakumar Bhuraji Mani expressed willingness to join the above said business as partners and Shri Jitendrakumar Bhuraji Maru was admitted as partner in existing business. Sole proprietorship firm had become the partnership firm namely M/s Rashik Soap Factory vide partnership deed dated 06.02.2017. It is stated that Shri Bhuraji Pomaji Maru and Shri Jitendrakuthar Bhuraji Maru of said partnership concern namely M/s Rashik Soap Factory (A Partnership Concern) decided to dissolve the said partnership firm voluntarily with mutual consent and also partner namely Shri Bhuraji Pomaji Maru voluntarily retired from the said partnership concern and the abovesaid partnership firm i.e. M/s Rashik Soap Factory has become sole proprietorship concern of Shri Jitendrakumar Bhuraji Maru and he continued the same business as sole proprietor in the same name and style i.e. M/s Rashik Soap Factory vide retirement-cum-dissolution deed dated 31.03.2017.
5. It is averred that on 09.06.2018, defendant has filed copyright application for the registration of impugned trade dress/artistic work. It is pleaded that in the year 2020, plaintiff firm was reconstituted/formed consisting of its partners namely Shri Jitendra Bhuraji Maru, Shri Jayantilal Bhuraji Maru, Shri Rashikbhai Bhuraji Maru Page 3 of 20 and Shri Mohit Mukhesh Maru and continued the same business of detergent cake and washing powder. It is stated that in the same year 2020, plaintiff firm filed trademark application for the registration of trademark/label/trade dress "SHIDI" under no. 4776084 and under no. 4789918 in class 03 respectively. It is stated that the plaintiff is owner and proprietor of the distinctive and unique trademark/trade dress/label and the registered proprietor of the copyright involved in the artistic feature of the plaintiff's above said trademark/label/trade dress including in its get up, layout, lettering style, colour scheme, colour combination, artistic features etc. under the provision of Trade Marks Act, 1999 and Copyright Act,1957. It is stated that in the year 2021, plaintiff got No Objection Certificate from the Trade Mark Registry and same year the defendant filed impugned application bearing no. 5111783 in class 03. The plaintiff has filed an opposition petition in said proceedings. It is stated that plaintiff has got Copyright Certificate from the office of the Registrar of Copyright on 21.05.2022 and filed request on Form TM-P to bring themselves on record as subsequent proprietor of the registered application bearing no. 1814738 vide deed of assignment dated 08.09.2022.
6. It is averred that in the first quarter of September, 2022, plaintiff learnt about the user of the impugned trade dress/label/representation when plaintiff laid hand to the Page 4 of 20 impugned goods in the market. It is stated that defendant has started trading in the impugned trademark/label/trade dress and copyright "SAYAR" and defendant's impugned trade mark/label/trade dress is identical with and/or deceptively similar to the said trade mark/label/trade dress of the plaintiff. It is stated that they are identical with and deceptively similar in each and every respect including visually, structurally, in its basic idea and essential features. It is averred that defendant has substantially copied the said trade mark/label/trade dress with all features and artistic work including the layout, font style, lettering style, get up, make up, colour and colour combination thereof and accordingly, plaintiff has filed copyright cancellation petition before Hon'ble High Court of Delhi at New Delhi.
CASE OF DEFENDANT:
7. Defendant has filed application u/o 39 rule 4 CPC for setting aside of ex-parte order and is also contesting application u/o 39 rule 1 & 2 CPC on merit. Case of defendant is that defendant started initially as a partnership firm under the name of Gita Soap Factory for conducting the business of manufacturing of soap with Mr. Khangarji Ukaji Prajapati, Mr. Mohanlal Taraji Prajapati, Mr. Dinesh Parkhaji Prajapati and Mr. Jethaji Bhaguji Prajapati in the year 1981. It stated that thereafter, on 9th December, 1988 Mr. Khangarji Ukaji Prajapati, Mr. Mohanlal Taraji Page 5 of 20 Prajapati and Mr. Dinesh Parkhaji Prajapati retired from the firm vide retirement deed dated 9th December, 1988. Mr. Talkaji Bhaguji Pajapati and Mr. Jethaji Bhaguji Prajapati thus carried on the business as partnership firm till 20th July, 1999. The said partnership firm was dissolved on 20th July, 1999 and the defendant became sole proprietor of firm Gita Soap Factory. Later on, name of the firm was changed from Gita Soap Factory to Bhavani Soap Factory on 20th June, 2015. It is further stated that defendant and plaintiff have family relationship. The defendant has two brothers namely, Mr. Jethalal Bhaguji Prajapati and Mr. Chunilal Bhaguji Prajapati. Mr. Jethalal Prajapati has a daughter named Ms. Smita who is married to Mr. Jitendra Bhuraji Maru who is one of the partners of the plaintiff. Hence, defendant is the Uncle-in- Law (Chacha Sasur) of Mr. Jitendra Bhuraji Maru who is one of the partners of the plaintiff. Thereby, the parties share close family relationship and the plaintiff is well aware of the defendant and the business of the defendant since its inception and the plaintiff has concealed this material fact from the court.
8. It is further stated that defendant is registered proprietor of the trade mark /label SAYAR and has been using trade mark SAYAR since 1989 with colour combination of primarily Blue and White colours. That the defendant has been using Blue colour as a dominant portion in its packaging since 1989 and has made 10 minor changes to its packaging from time to time. The present Page 6 of 20 label of SAYAR which is the subject matter of dispute has been in use since 2008.
9. It is stated that application for registration of disputed trademark was filed by the defendant on 31.08.2021 and is pending registration under objection by the plaintiff.
10. It is stated the plaintiff has filed frivolous rectifications and oppositions to various trademarks of defendant which are being contested by defendant since April 2021. The pleadings in the aforesaid objections and rectifications have been concealed by plaintiff from this court.
11. The defendant has copyright registration in respect of artwork of impugned trademark since 2018. The impugned trademark with combination of Blue, White, Yellow and Red of defendant has been openly, continuously and uninterruptedly sold in India since year 2008 and defendant has made considerable sales of the same. Defendant has been using the Blue colour as dominant part of its packaging since the year 1989 under the trademark 'SAYAR' and has made minor variations to it from time to time.
12. It is stated that defendant has consistently and continuously carried on the business for more than 3 decades and in the process its trademark/labels of SAYAR Page 7 of 20 and SHANTABAI have accrued colossal sales, immense goodwill & reputation in the market on account of superior quality of the goods.
13. The defendant has submitted that by the use of trademark/label 'SAYAR', it had earned in lakhs over the years and the profits had only gone up. The turn over details have been provided in para 13 of the application, which in years 2017-2018 were amounting to Rs.32,92875/-. Those of years 2018-2022 could not be filed as the books were seized by the LC. CA certificates have been filed alongwith documents.
14. It is stated that defendant had been using trademark/label 'SAYAR' from 2008 as its first publication was of 2008, the plaintiff has claimed the user from 2016 which is much later than the claimed user of defendant. The plaintiff has not filed pleadings and documents of opposition and rectification proceedings filed by it before the trademark registry which are crucial documents for the decision of this matter. It is stated that plaintiff got trademark/label registration in 2022, which was four years after the copyright registration of defendant. The plaintiff has concealed that it has filed rectification against several registration trademark of defendant and has falsely claimed that it came to know about user of trademark/trade dress/ label of defendant only in September, 2022. The plaintiff has claimed infringement of copyright no. A-141922/2022, which has specific label and trade dress registered in the Page 8 of 20 name of Manishaben Jayantilal Maru trading as M/s. Rashik Detergent Gruh Udhyog. The said firm is not party to the suit. It is stated that alleged You-Tube links and labels appearing in You-Tube videos are of Rashik Detergent Gruh Udhyog and not of Rashik Soap Factory. That Rashik Detergent Gruh Udhyog through its alleged proprietor Manishaben Jayantilal Maru had filed trademark application for SHIDI label under No. 4176479 in class 3 on 14.05.2019 on proposed to be used basis. The plaintiff has made a false averment before the court that it came to know about the appellants trademark/label/copyright in first quarter of September, 2022 whereas defendant's trademark application no. 5111783 in class 3 for the same label was opposed by plaintiff on 16.11.2021.
15. In the reply to application plaintiff stated that mere registration of trademark or copyright is not conclusive proof of prior adoption and user of the same. It is stated that defendant has failed to adduce any documentary/constructive proof in support of its claim as to adoption, user and first publication of the impugned trade dress/representation in 2008 with reference to registration no. A-126312/2018 and in 2016 with reference to registration no. A-126282/2018. It is stated that Mr. Harish H. Thakkar gave NOC in respect of the document which does not prove prior publication of impugned artwork in 2008. It is stated that the artwork which defendant was using since 2008 as shown in E-mail is different from the impugned trade dress. The E-mail Page 9 of 20 correspondence shows that plaintiff and defendant had been using trade dresses, which were different in looks and the defendant has recently started using impugned trademark/label.
16. It is stated that the fact about registration of artistic work under A-126312/2018 obtained by defendant is mentioned in para no. 36 of the plaint. The plaintiff has also annexed copyright cancellation petition wherein the publication year 2008 is mentioned. It is stated that there has not been any concealment of fact as the plaintiff has mentioned about impugned trademark of defendant bearing application no. 5111783 in class 3. The other two were not subject matter of this case. It is stated that plaintiff is claiming infringement of copyright no. 141922/2022, trademark of which it is admitted was filed in the name of Manisha Ben Jayantilal Maru trading as M/s. Rashik Detergent Gruh Udhyog. It is further stated that the plaintiff was in the process of getting assignment deed as the trademark originally belongs to plaintiff.
17. Ld. Counsel for plaintiff has relied upon judgment of Hon'ble Delhi High Court in 2009 (108) DRJ 207 titled Sun Pharmaceuticals Industies Ltd. Vs. Cipla Ltd. (2009) (108) DRJ 207, wherein the effect of assignment of trademark was considered by the court. The issue is not relevant at this stage for deciding application u/o 39 rule 4 CPC. He has then relied upon judgment of Hon'ble Supreme Court in S. Syed Mohideen Vs. P. Sulochana Page 10 of 20 Bai, (2016) 2 SCC 683, wherein the court granted the relief on basis of prior user.
In the instant matter, however, both the parties are claiming user since 2008 and have documents (copyright and artwork) mentioning that the labels were first published in 2008. In fact, the copyright registration over artwork was got registered by defendant before the plaintiff.
18. Ld. Counsel for plaintiff has also relied upon judgment of Hon'ble Hight Court in Rajesh Masrani Vs. Tahiliani Design Pvt. Ltd. 2009 (107) DRJ 484 (DB), wherein it was held that "... Registration of work is not compulsory and registration is not a condition precedent for maintaining a suit for damages for infringement of copyright".
The court, however, was not dealing with the issue of two separate registrations of copyright with one being prior in time to the other and the judgment is thus distinguishable on facts.
19. Ld. Counsel for plaintiff has further relied upon judgment of Hon'ble Supreme Court in Laxmikant V. Patel Vs. Chetanbai Shah & Anr. 2002 (3) SCC 65; M/s. Ansul Industries Vs. M/s. Shiva Tobacco Company, ILR (2007) (1) Delhi 409 and Midas Hygiene Industries Pvt. Ltd. Vs. Sudhir Bhatia & Ors., 2004 (3) SCC 90 in furtherance of his entitlement for injunction on grounds of passing off and infringement.
Page 11 of 2020. Ld. Counsel for defendant has relied upon the judgment of Hon'ble Delhi High Court in 2014 SCC Online Delhi 1470 titled Industria De Diseno Textil SA Vs. Oriental Cuisines Pvt. Ltd. wherein it was held that ".....ex-parte order was passed keeping in view the averments made by plaintiff as elaborated in para 21 & 22 of the plaint, namely that it was only in March 2013 that the plaintiff received evidence which show that defendant no.1 has started using the expression Zara per se and not as part of ZARA TAPAS BAR i.e in the form of composite label. Same is the thrust of the averments in para 22 of the plaint. Factually this appears incorrect in as much as in its affidavit filed on 14.01.2088 before the Trademark Registry of Mr. Antonia Abril Abadin there are categorical averments made by the plaintiff that the defendants are using the Mark Zara per se. As this averment was made in 2008 knowledge of use of this mark could not be attributed to be March 2013 as averred in para 21 of the plaint". The Hon'ble Court vacated the ex-parte injunction granted to plaintiff in the matter.
In Vee Excel Drugs & Pharmaceutical Ltd. Vs. Hab Pharmaceuticals and Research Lim. Civil Suit OS No.1851/2008 decided on 16.03.2009 (MANU /DE/0830/2009), Hon'ble High Court held that "the documents filed by parties, prima facie, show that both the parties have almost simultaneously used the trademark as well as the copyrights in question. The question of actual proprietorship of the mark as well as of copyright is yet to Page 12 of 20 be gone into and the conclusion in this regard will come after the trial of the suit as both the parties are holding trademark registration as well as copyright registration in their favour. Moreover, since the plaintiff has not come before this court with clean hands as he has not disclosed the factum of rectification of trademark filed by defendant; the decision given by the FDA Maharashtra on the complaint made by plaintiff;.... the said conduct of plaintiff disentitle him from any injunction at this stage".
Similar has been the observation of Hon'ble High Court in Kent RO System Ltd. & Ors. Vs. Gattubhai & Ors. CS (COMM) 426/2019 (MANU/DE/0897/2022) decided on 23.03.2022 & S.P Chengalvaraya Naidu (dead) by LRs Vs. Jagannath (dead) by LRs & Ors. AIR 1994 SC 853.
In Britannia Industries Ltd. VS. ITC Ltd., FAO (OS) (COMM) 77 of 2016 decided on 10.03.2017 MANU/DE/0626/2017, it was held that "the appropriation of and exclusivity claimed vis-a-vis a get-up and particularly a colour combination stands on a different footing from a trademark or a trade-name because colours and colour combination are not inherently distinctive. It should therefore, not be easy for a person to claim exclusivity over a colour combination particularly when the same has been in use only for a short while". (In the instant matter the user is prolonged, however, is claimed to be same for both the parties).
21. In the instant matter also defendant has pleaded that Page 13 of 20 plaintiff was aware of trade dress/artwork being used by defendant since it has filed rectification proceedings before the competent forum. Also the parties are closely related and know each others work. He has also argued that partner of defendant is seen in the video clipping of which transcript has been filed on record claiming that defendant were using the trademark for almost ten years. The veracity of video is to be tested in evidence, however, prima facie the same has not been denied by Ld. Counsel for plaintiff, who merely claims that the person, who is seen speaking on YouTube does not understand the law. The document, however, shows that defendant was using the trademark for at least 10 years within the knowledge of plaintiff. The plaintiff has thus concealed material facts regarding the date of its knowledge about alleged infringement of trade dress to obtain ex-parte injunction.
22. Some relevant facts are that subsequent to filing of written statement by the defendant, plaintiff moved an application u/o 6 rule 17 CPC to bring in certain relevant facts, which application was kept pending by the Ld. Predecessor relying upon the judgment of Hon'ble Delhi High Court in Rajveer Food Marketing (I) Pvt. Ltd. Vs. Amrit Banaspati Company Ltd., wherein it was held that ".....when an ex-parte ad-interim injunction is secured on the basis of certain averments made in the plaint the vacation or confirmation of said order must necessarily be adjudged on the basis of very same pleadings. Thus, the touch stone for vacation of an ex-parte order must be Page 14 of 20 pleadings of parties prior to the filing of amendment application. The result of our holding otherwise would be to enable a party to rush this court Court post haste without making a full disclosure of all the facts within its knowledge and to subsequently seek incorporation of the said facts in the plaint by way of amendment while in the meantime continuing to enjoy the ex-parte order obtained by it fraudulently and dishonestly".
23. Ld. Counsel for the defendant has pointed out that plaintiff in his written submissions brought in facts which are from the amended plaint and were not mentioned in the original plaint. The written submissions of plaintiff thus can also not be considered. The applications in hand therefore, shall be decided strictly on the basis of pleadings and applications u/o 39 rule 1 & 2 and u/o 39 rule 4 with their replies and oral arguments.
24. The claim of defendant is that plaintiff has suppressed material facts. He says that plaintiff is claiming infringement of copyright no. A-141922/2022 which has different label from what has been produced by the plaintiff as the infringing material. He further argued that the artistic work/trade dress which has been shown in contrast to alleged artwork/trade dress on page 34 and otherwise in the entire plaint is not trademark of the plaintiff but it belongs to Ms. Manishaben Jayantilal Maru trading as M/s. Rashik Detergent Gruh Udhyog.
Page 15 of 2025. In reply to para 23 of the application of defendant under order 39 Rule 4 CPC, plaintiff admitted that the trademark shown as the infringed trademark throughout the petition has been filed in the name of Manishaben Jayantilal Maru trading as M/s. Rashik Detergent Gruh Udhyog.
26. The relevant facts that have come up from arguments are that Rashik Soap Factory and M/s. Rashik Detergent Gruh Udhyog are two different partnership concerns. First is the plaintiff and second is partnership firm of Ms. Manishaben Jayantilal Maru & Ors. The plaintiff has applied for and has been granted trademarks Trademark Appl. No. 4776084 4789918 (Mark A') the plaintiff, however, claims that it has been using trademark Page 16 of 20 'Mark B' The trademark at point A is different from what is shown at point B. The plaintiff as per original plaint is owner of trademarks at point A but is claiming violation of mark B and is comparing mark B with the impugned trademark/trade dress of defendant. Plaintiff after filing of written statement tried to bring on the record that Manishaben Jayantilal Maru the owner of trademark B executed assignment deed in favour of plaintiff. Relevantly the deed itself has been executed after the filing of Written Statement by the defendant. The plaintiff thus, at the time of filing of suit was not owner of trademark B. Entire suit of plaintiff, therefore, is based on a wrong trademark of which violation has been pleaded throughout the plaint, which trademark did not belong to the plaintiff at the first instance.
27. The plaintiff claims registration in artwork of SHIDI label, which again is similar to label A vide copyright certificate no. A-141922/2022. This certificate was granted to the plaintiff on 02.05.2022. Per contra, defendant claims to have applied for registration of artwork SAYAR on 27.07.2018 vide registration no. A-126312/2018, in Page 17 of 20 which it is claimed that the artwork was first published in 2008. The plaintiff has filed rectification proceedings qua this copyright. It is claimed that the publication date mentioned in the document of 2008 is incorrect. The fact of the matter is that the issue is sub judice before the concerned authority and it is beyond this court to declare that certificate has been granted incorrectly.
28. The facts relevant to decide this application thus are that both the parties are claiming that they are using the trademark/artwork since 2008. Defendant has a document wherein it is mentioned that first publication of the impugned artwork was of 2008 and this document was registered in 2018. The plaintiff is also claiming that it is using the artwork since 2008. It applied for registration of artwork in 2021 and was granted the certificate dt. 02.05.2022, which is after the certificate was granted to defendant. Relevantly, the artwork in which copyright has been granted to the plaintiff is not mark B but it is mark A.
29. For the reasons stated the plaintiff has not been able to prove prior user. It appears confused over which trademark/ trade dress was being violated by defendant. Defendant had got artwork registration prior to plaintiff. Plaintiff has concealed the fact of prior knowledge about use of trade name/trade dress by the defendant. The user of trademark/trade dress by both the parties appears contemporaneous. The application u/o 39 rule 4 CPC Page 18 of 20 therefore, deserves to be allowed. Application u/o 39 rule 1& 2 CPC is dismissed. Interim injunction granted against the defendant on 05.01.2023 stands vacated.
30. The Hon'ble Supreme Court in Wander Ltd v.
Antox (India) Pvt Ltd 1990 Supp SCC 727 observed that :
" The object of interlocutory injunction, it is stated .... is to protect the plaintiff against injury by violation of his rights for which he could not be adequately compensated in damages recoverable in action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the 'balance of convenience' lies".
31. Defendant vide a separate application has sought release of its goods which were seized by Local Commissioner. The articles, books, registers etc. of the defendant which were seized by Local Commissioner be released to the defendant. However, the defendant is directed not to destroy the books and registers and is also Page 19 of 20 directed to maintain proper books and registers qua subsequent sales for perusal of court at the time of final judgment or at any time during the trial of this suit.
(Anuradha Shukla Bhardwaj) District Judge (Commercial Court-02) South Distt., Saket, New Delhi/17.10.2023 Page 20 of 20