Ashok Kumar Gupta Proprietor Of Jai ... vs Arif Khan on 1 September, 2023

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Delhi High Court - Orders

Ashok Kumar Gupta Proprietor Of Jai ... vs Arif Khan on 1 September, 2023

Bench: C. Hari Shankar

                             $~13
                             *    IN THE HIGH COURT OF DELHI AT NEW DELHI
                             +         CS(COMM) 608/2023 & I.A. 16669/2023, I.A. 16670/2023,
                                       I.A. 16671/2023, I.A. 16672/2023

                                       ASHOK KUMAR GUPTA PROPRIETOR OF JAI DURGA
                                       PLASTER INDUSTRIES & ANR.             ..... Plaintiffs
                                                    Through: Mr. Umesh Mishra, Adv.

                                                                            versus

                                       ARIF KHAN                                                                                    ..... Defendant
                                                                            Through:                 None

                                       CORAM:
                                       HON'BLE MR. JUSTICE C. HARI SHANKAR
                                                                            ORDER

                             %                                              01.09.2023

                             CS(COMM) 608/2023

1. The plaintiffs are the proprietors of the trademarks SAKARNI and SAKARNI PLASTER which are used for manufacturing, marketing and selling Plaster of Paris (P.O.P).

2. The plaintiffs have various registered SAKARNI trademarks, both as word marks and as device marks, in its favour.

3. The plaint also sets out various assertions to vouchsafe the goodwill and reputation of the plaintiffs in the market.

4. The plaintiffs are aggrieved by the use, by the defendant, of the mark . The plaint asserts that mark is deceptively similar to the plaintiff's mark especially as it is used for identical products.

CS(COMM) 608/2023 Page 1 of 6

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 15:31:03

5. The plaintiffs issued a notice to the defendant on 23 February 2023, calling on the defendant to cease and desist from using the impugned mark. The defendant replied on 2 June 2023.

6. The plaintiffs have approached this court in these circumstances, seeking a decree of permanent injunction, restraining the defendant as well as all others acting on his behalf from using the impugned mark or any other mark which is deceptively similar to the registered mark of the plaintiff.

7. A case worthy of consideration has been made out.

8. Let the plaint be registered as a suit.

9. Issue summons. Summons be served by all modes.

10. Written statement, accompanied by an affidavit of admission/denial of the documents filed by the plaintiff be filed within 30 days with an advance copy to learned counsel for the plaintiff, who may file a replication thereto, accompanied by an affidavit of admission/denial of the documents filed by the defendant within 30 days thereof.

11. List before the learned Joint Registrar (Judicial) for completion of pleadings, admission and denial of the documents and marking of exhibits on 3 November 2023, whereafter the matter would be placed before the Court for case management hearing and further proceedings.

CS(COMM) 608/2023 Page 2 of 6

This is a digitally signed order.

12. This is an application by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) seeking interlocutory injunctive reliefs.

13. It is admitted in the plaint that the defendant has been using the impugned mark.

14. The Supreme Court, in para 9 of the Wander Ltd. v. Antox India P. Ltd 1, has held that the approach of the Court has to be different, when dealing with a defendant which is using the impugned mark, as compared to a defendant which has not commenced user of the impugned mark.

15. This position is further fortified by a recent decision of the Division Bench of this Court in Dabur India Ltd. v. Emami Ltd.2, para 8 of which reads thus:

"8. Having conferred our thoughtful consideration on the rival submissions noticed above, we find that, undisputedly, the suit upon being presented on or about 02 August 2023 came up for consideration for the first time on 07 August 2023. The ad interim injunction came to be granted merely two days thereafter on 09 August 2023. Admittedly, and as per the plaintiffs/respondents own case, the product of the appellant / defendant had been introduced somewhere around May 2023. In our considered opinion, this fact alone warranted the appellants / defendants being accorded at least a rudimentary opportunity to oppose the application which sought grant of ad interim injunction."

16. Though the facts of Dabur India Ltd.2 may be distinguishable from the facts of the present case in other respects, the afore-extracted 1 1990 Supp SCC 727 2 Order dated 21 August 2023 passed in FAO(OS) (COMM) 171/2023 CS(COMM) 608/2023 Page 3 of 6 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 15:31:03 para 8 of the decision is, in my view, a stand-alone paragraph, which would ordinarily proscribe the grant of interim relief to a defendant who has been using the mark, without an opportunity to file a response to the application for interlocutory reliefs.

17. There may be exceptional cases such as, for example, cases of pharmaceutical preparations, counterfeit products, or other matters which involves serious public interest, in which this mandate may be relaxed. However, the present case cannot be said to fall within those categories.

18. As such, in deference to the principle enunciated in para 8 of Dabur2, issue notice on this application.

19. Notice be served on the defendant by all modes including e- mail and WhatsApp.

20. The Registry is also directed to telephonically intimate the defendant of the order passed today and to place a report in that regard on record.

21. Let a reply, if any, be filed positively within two weeks with an advance copy to learned Counsel for the plaintiff who may file a rejoinder thereto on or before 22 September 2023.

22. No extension of time for filing of reply/rejoinder shall be granted.

23. The application would be taken up for hearing and disposal on the next date of hearing in preference to any part-heard matters and CS(COMM) 608/2023 Page 4 of 6 This is a digitally signed order.

24. List for hearing and disposal of this application on 25 September 2023.

25. The defendant is also directed to place on record the details of the earnings made by it by use of the impugned mark from the time when defendant has been using the said mark, duly certified by a Chartered Accountant.

I.A. 16670/2023 (Under Order XI Rule 1(4) of CPC)

26. By this application, the plaintiff seeks permission to file additional documents.

27. The plaintiff is permitted to place additional documents on record in accordance with Order XI Rule 1(4) of the Code of Civil Procedure, 1908 (CPC) as amended by the Commercial Courts Act within 30 days from today.

I.A. 16671/2023 (Under Section 12A of the Commercial Courts Act, 2015)

28. In view of the judgment of the Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Pvt Ltd3, exemption is granted from the requirement of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.

29. The application stands allowed accordingly.

2022 SCC OnLine Del 3529 CS(COMM) 608/2023 Page 5 of 6 This is a digitally signed order.

30. Subject to the plaintiff filing legible copies of any dim or illegible documents on which it may seek to place reliance within four weeks from today, exemption is granted for the present.

31. The application is disposed of.

C. HARI SHANKAR, J.

SEPTEMBER 1, 2023 dsn CS(COMM) 608/2023 Page 6 of 6 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 15:31:03

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Delhi High Court - Orders