Delhi High Court - Orders
D.B. Engineering Pvt. Ltd vs Pawan Sharma & Ors on 2 June, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~11
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 404/2022 & I.As. 9215-18/2022
D.B. ENGINEERING PVT. LTD. ..... Plaintiff
Through: Mr. Samar Singh Kachwaha, Mr.
Raghavindra M. Bajaj, Mr. Agnish
Aditya, Ms. Shivangi Nanda and Ms.
Kavita Vinayak, Advocates.
(M:9910940162)
versus
PAWAN SHARMA & ORS. ..... Defendants
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 02.06.2022
1. This hearing has been done through hybrid mode.
I.A. 9218/2022(for exemption)
2. Allowed, subject to all just exceptions. I.A. 9218/2022 is disposed of. I.A. 9217/2022(u/S 12A)
3. This is an application seeking exemption instituting pre-litigation mediation. In view of the orders passed in CS (COMM) 132/2022 titled Upgrad Education v. Intellipaat Software, exemption is allowed.
4. I.A. 9217/2022 allowed and disposed of.
I.A. 9216/2022(u/O XI R 1(4) CPC)
5. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act'). The Plaintiff, if it wishes to file additional documents at a later stage, shall Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 404/2022 Page 1 of 5 Signing Date:03.06.2022 19:24:24 do so strictly as per the provisions of the Commercial Courts Act.
6. I.A. 9216/2022 is disposed of.
CS(COMM) 404/2022
7. Let the plaint be registered as a suit.
8. Issue summons to the Defendants through all modes upon filing of Process Fee.
9. The summons to the Defendants shall indicate that a written statement to the plaint shall be positively filed within 30 days from date of receipt of 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 statement shall not be taken on record.
10. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement(s). Along with the replication, 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 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.
11. List before the Joint Registrar for marking of exhibits on 16th August, 2022. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
12. List before Court on 10th October, 2022.
I.A. 9215/2022(for stay)
13. The plaintiff- D.B. Engineering Pvt. Ltd. has filed the present suit for injunction, damages and other reliefs against its ex-employee-Mr. Pawan Sharma, who is the main contesting Defendant in the suit, seeking protection of its mark 'ATLAS KNIVES'. Defendant No.1 is stated to be running a Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 404/2022 Page 2 of 5 Signing Date:03.06.2022 19:24:24 firm by the name 'Atlas Knives & Tools'. Defendant No.3- Mr. Pravin Kumar Singh is stated to be an employee of the said firm. The case of the Plaintiff is that it is a company engaged in manufacturing of industrial steel knives since 1986. The Plaintiff adopted the mark 'Atlas Knives' in 1986-87 in respect of industrial knives, cutters and other products. The products of the Plaintiff are stated to be exported to more than 60 countries across the globe. The mark 'Atlas Knives' is the registered mark of the Plaintiff in class 7 since 2014 and the copy of the registration is placed on record. The 'Atlas Knives' marks are also used in various logo forms which are set out hereinbelow:
14. The Plaintiff claims that it uses the 'Atlas Knives' device along with image of a globe and knife. The said mark is used by the Plaintiff in various advertising and promotional material. Defendant No.1-Mr. Pawan Sharma is an ex-employee of the Plaintiff who was appointed as Sales Manager vide letter of appointment dated 2nd January, 2018. Defendant No.1 worked/ was associated with the Plaintiff for a period of approximately 4 years. However, the Plaintiff got to know in the last week of April, 2022 that Defendant Nos.1 and 3 had started a firm by the name 'Atlas Knives & Tools, Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 404/2022 Page 3 of 5 Signing Date:03.06.2022 19:24:24 Faridabad'. Further, Defendants were using the said mark/name in respect of identical products namely industrial knives, machine blades, shear blades, saw cutters, metal spacers, rubber spacers, etc. The Defendants, also started using the domain name www.atlasknivestools.com. The Plaintiff was informed of the said illegal adoption of the said mark by one of their erstwhile Auditors. The Plaintiff, thereafter, conducted enquiry and also obtained the brochure of the Defendants' firm which showed that their entire line of products was identical to that of the Plaintiff.
15. Ld. counsel for the Plaintiff submits that the use of the mark 'Atlas Knives & Tools' in respect of identical products results in infringement of the Plaintiff's rights in its mark. He further submits that the manner in which the Defendants are promoting their business through brochures and other means is also resulting in confusion and deception in the market.
16. Heard ld. Counsel for the Plaintiff and perused the record. The copy of the appointment letter placed on record shows that Defendant No.1 is an ex-employee of the Plaintiff and is fully aware of the Plaintiff's rights in the mark 'Atlas' and 'Atlas Knives'. In the opinion of the Court, being an ex- employee of the Plaintiff, a greater duty vests in Defendant No.1 to not to indulge in such illegal conduct. However, the Defendants have violated various rights of the Plaintiff by:
i. Appropriating the marks 'Atlas', 'Atlas Knives' of the Plaintiff for identical products.
ii. Using the trading style/name 'Atlas Knives and Tools'. iii. Using domain name www.atlasknivestools.com. iv. Using various email addresses bearing the mark 'Atlas Knives and Tools'.Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 404/2022 Page 4 of 5 Signing Date:03.06.2022 19:24:24
v. Publishing brochures which are listing similar/identical products as that of the Plaintiff.
17. The Court is convinced that the Plaintiff has made out a prima facie case for the grant of an ex parte ad interim injunction. The balance of convenience lies in the favour of the Plaintiff. If the said relief is not granted, irreparable injury would be caused to the Plaintiff. Accordingly, till the next date of hearing the Defendants and anyone acting for or on their behalf are restrained from using the mark/name 'Atlas', 'Atlas Knives' and 'Atlas Knives and Tools' either as a trademark, trade name, domain name or as a part of the email addresses as the same constitutes infringement under Section 29 of the Trademark Act, 1999 as also passing off the Defendants' goods and business as that of the Plaintiff.
18. Compliance of Order XXXIX Rule 3 CPC be done within one week.
19. List before the Joint Registrar on 16th August, 2022.
20. List before Court on 10th October, 2022.
21. The digitally signed copy of this order, duly uploaded on the official website of the Delhi High Court, www.delhihighcourt.nic.in shall be treated as the certified copy of the order for the purpose of ensuring compliance.
PRATHIBA M. SINGH, J.
JUNE 02, 2022 dj/sk Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 404/2022 Page 5 of 5 Signing Date:03.06.2022 19:24:24