Delhi High Court - Orders
Khadi And Village Industries ... vs M/S Jbmr Enterprises on 4 June, 2021
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~8
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 284/2021
KHADI AND VILLAGE INDUSTRIES COMMISSION
..... Plaintiff
Through: Ms. Shwetasree Majumder, Ms. Diva
Arora, Mr. Aditya Verma, Ms.
Vasundhara Majithia, Advocates.
versus
M/S JBMR ENTERPRISES ..... Defendant
Through: Mr. Umesh Pal, Proprietor of D-1, in
person.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 04.06.2021 [VIA VIDEO CONFERENCING] I.A. 7416/2021 (for exemption)
1. Exemption allowed, subject to just exceptions.
2. The application stands disposed of.
I.A. 7417/2021 (for extension of time for filing Court fee)
3. The present application u/Section 149 and 151 of CPC on behalf of the Plaintiff seeking extension of time for filing Court fee.
4. It is submitted that the Plaintiff, on account of being situated in Mumbai, is unable to transfer the Court fee directly to Stock Holding Corporation of India Ltd., as their office is closed. Therefore, leave is sought CS(COMM) 284/2021 Page 1 of 10 to file the same upon resumption of regular functioning of the Court.
5. The application is allowed, subject to the Plaintiff filing court fee within two weeks from the day the lockdown restrictions imposed by the Government of NCT of Delhi and the Government of Maharashtra are lifted and the facilities for issuance of court fee stamps is resumed.
6. The application stands disposed of.
I.A. 7415/2021 (u/O 11 Rule 1(4) seeking leave to file additional documents)
7. 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 (in short 'Commercial Courts Act').
8. The Plaintiff, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act.
9. Accordingly, the application stands disposed of.
I.A. 7418/2021 (for exemption from filing notarized affidavits)
10. The present application under Section 151 of the Code of Civil Procedure, 1908 (in short 'CPC') on behalf of the Plaintiff seeks exemption from filing notarized affidavits.
11. The application is allowed, subject to the Plaintiff filing the exempted CS(COMM) 284/2021 Page 2 of 10 documents within two weeks from the day the lockdown restrictions imposed by the Government of NCT of Delhi are lifted and the facility for attestation of affidavits is resumed.
12. The application stands disposed of.
CS(COMM) 284/2021
13. Let the plaint be registered as a suit.
14. Upon filing of process fee, issue summons to the Defendant by all permissible modes. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the date of receipt of summons. Along with the written statement, the Defendant 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.
15. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendant, 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.
16. List before the Joint Registrar for marking of exhibits on 9th August, 2021. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
CS(COMM) 284/2021 Page 3 of 1017. List before Court on 10th September, 2021 for framing of issues thereafter.
I.A. 7414/2021 (u/O 39 Rules 1 and 2 r/w Section 151 of the CPC, 1908 seeking interim injunction)
18. The Plaintiff has filed the present application for permanent injunction restraining infringement of trademark and copyright, passing off, rendition of accounts, damages, delivery-up, etc. The Plaintiff is a statutory body established under the Khadi and Village Industries Commission Act of 1956. It is the prior adopter and owner of ("the KHADI trademarks") the trademarks KHADI PRAKRITIK PAINT, the device marks ("the KHADI PRAKRITIK PAINT trademarks"), and VEDIC PAINT in several classes, including class 2, which are the subject matter trademarks for the present suit. The Plaintiff is the registered proprietor of KHADI trademarks in several classes in India, details of which are provided in paragraph 12 of the plaint. The KHADI trademarks are valid and subsisting and have been declared to be well-known marks in multiple administrative proceedings.
19. The Plaintiff adopted the trademark 'KHADI' on 25th September, 1956 and the same has been in use continuously till date. By virtue of its adoption more than sixty years ago and extensive use thereof, the KHADI trademarks is the sole and exclusive intellectual property of the Plaintiff.
CS(COMM) 284/2021 Page 4 of 10The KHADI trademarks not only act as source identifiers but also as symbols of purity and authenticity. It is the most essential and prominent feature of the Plaintiff's trademarks. The Plaintiff uses the trademark and label KHADI on a wide range of products and operates on several social media platforms and a mobile application by the name of 'Khadi India' and by virtue of extensive use, the trademark KHADI has become exclusively and globally associated with the Plaintiff, in the eyes of consumers.
20. On 17th December, 2020, the Plaintiff announced the launch of a unique, first-of its-kind eco-friendly anti-fungal, anti-bacterial paints, with one of its main components being cow dung, under the brand and trademark VEDIC PAINT. The Plaintiff thereafter adopted the trademark KHADI PRAKRITIK PAINT on 12th January 2021 as an additional brand for its eco-friendly, cost-effective and odourless paints which are certified by Bureau of Indian Standards. The said paints are free from heavy metals like lead, mercury and others and are expected to boost local manufacturing and create sustainable local employment through technology transfer. Said launch generated a lot of media and public interest. Within a short span since the launch, the Plaintiff's KHADI PRAKRITIK PAINT has gathered a lot of media attention and has been covered by some leading local and international newspapers/media houses. The Plaintiff has also commenced sale of its KHADI PRAKRITIK PAINT on its own e-commerce platform available at www.kviconline.gov.in. Further, in order to protect its rights in the trademark KHADI PRAKRITIK PAINT and , the CS(COMM) 284/2021 Page 5 of 10 Plaintiff has also filed trademark applications under numbers 4859937 and 4859938, respectively, which are currently pending. The Plaintiff has adopted a unique packaging/trade dress for its KHADI PRAKRITIK PAINTS, as reproduced in paragraph 36 of the Plaint.
21. In February 2021, the Plaintiff came across the Defendant's paints under the marks "KHADI PRAKRITIK PAINT", "PRAKRITIK PAINT"
and "VEDICA PRAKRITIK PAINT" (the 'impugned marks'). A comparison of the Plaintiff's product with the Defendant's product, in paragraph 47 of the plaint, clearly indicated that the Defendant has not only adopted an identical mark but has also copied the entire trade dress and packaging of the Plaintiff's products, both in respect of distemper and emulsion varieties and is simply selling counterfeit versions of the Plaintiff's products. Upon further investigation, the Plaintiff discovered that the Defendant had also filed trademark applications for VEDICA PRAKRITIK PAINT and under numbers 4830398 and 4844378 respectively, that is almost identical to the Plaintiff's trademark and logo. During its investigation, the Plaintiff also came across the Defendant's website operating through the domain name www.khadiprakritikpaint.com (hereinafter referred as 'the impugned domain name'). The said impugned domain name was registered by the Defendant on 26th January, 2021, after the launch of KHADI PRAKRITIK PAINT by the Plaintiff in December, 2020.CS(COMM) 284/2021 Page 6 of 10
22. It is further submitted by the Plaintiff's counsel that upon coming across the Defendant's unauthorized use of Plaintiff's trademarks, the Plaintiff addressed a legal notice dated 8th February, 2021 to the Defendant calling upon the Defendant to immediately cease and desist the use of the impugned marks and further asked the Defendant to withdraw its trademark applications. The Defendant did not reply to the legal notice, despite successful delivery. Thereafter, on 4th May, 2021, the Plaintiff instituted UDRP proceedings against the Defendant's domain name www.khadiprakritikpaint.com seeking transfer of the same in favour of the Plaintiff. Upon receipt of the complaint, the Defendant responded vide email dated 5th May, 2021 stating that he took training from KVIC and is taking franchise of Khadi Prakritik. However, Ms. Majumder submits that the Plaintiff's KHADI PRAKRITIK PAINT is currently only manufactured by the Plaintiff's authorized manufacturers and the Plaintiff has neither outsourced the marketing process to any third party nor given out any franchises in respect of the same.
23. It is also submitted by the Plaintiff's counsel that on its website, the Defendant displays the official logo of the Ministry of Micro, Small and Medium Enterprises under the Government of India, (the MSME logo) without any authority, in order to mislead the general public into believing that the Defendant is a Government-affiliate. When on 21st May, 2021, the Plaintiff's investigator telephonically contacted the Defendant, enquiring about the products bearing the impugned marks, Defendant informed that he has two varieties of paints - Distemper paints and Emulsion paints, available in 10 litre and 20 litre bucket sizes, of which 20 litre bucket of distemper CS(COMM) 284/2021 Page 7 of 10 paint was delivered by the Defendant on 26th May, 2021, marks to Plaintiff representative's address in Delhi, and an invoice was issued thereof. The paint bore the impugned mark, and the invoice clearly mentions the name of the products as "PRAKRITIK PAINT". Further, the Defendant has also copied the Plaintiff's e-posters advertising the mark, reproduced in paragraph 49, which is further indicative of Defendant's mala fide conduct. The Defendant is also using the e-mail ID [email protected].
24. A perusal of the abovementioned trademarks, product packaging and advertising material makes it evident that the Defendant has indulged in counterfeiting and has adopted the impugned marks and product packaging to gain undue advantage from the false impression generated from its goods that it originates from the Plaintiff and is bound to mislead the consumers and hamper the Plaintiff's goodwill and reputation.
25. On the basis of the material placed on record, the court is of the opinion that the Plaintiff has established a prima facie case in its favour. The balance of convenience also lies in favour of the Plaintiff and irreparable loss would be caused to the Plaintiff, in case interim injunction is not granted. Accordingly, till the next date of hearing, the Defendant, its proprietors, partners, servants, representatives, agents and all others acting for and on its behalf are -
a. Restrained from manufacturing, selling, offering for sale, or advertising products or operating a website and any social media accounts under the trademark KHADI, amounting to infringement thereof.
CS(COMM) 284/2021 Page 8 of 10b. Restrained from manufacturing, selling, offering for sale or advertising products bearing an identical or deceptively similar packaging as the Plaintiff's products or use any promotional or advertising material, images or logos that amount to infringement of the Plaintiff's copyrights;
c. Restrained from manufacturing, selling, offering for sale or advertising goods under the trademarks KHADI PRAKRITIK PAINT, and VEDICA PRAKRITIK PAINT, and/or any mark identical or deceptively similar to the Plaintiff's trademarks as listed above, and/ or in trade dress/ product packaging that is identical or substantially similar to the Plaintiff's trade dress/ product packaging for KHADI PRAKRITIK PAINT in a manner as may amount to passing off of the Defendant's goods and business as the Plaintiff's or affiliated to the Plaintiff;
d. Directed to takedown its social media (Facebook) page at https://www.facebook.com/khadiprakritikpaint;
e. Directed to suspend its email ID [email protected];
26. Although the proprietor-defendant who appears in person has been heard and also explained the directions issued by the court, nevertheless CS(COMM) 284/2021 Page 9 of 10 Compliance under Order XXXIX Rule 3 be done within one week from today.
27. List before the Joint Registrar on 9th August, 2021.
28. List before the Court on 10th September, 2021.
SANJEEV NARULA, J JUNE 4, 2021 nd CS(COMM) 284/2021 Page 10 of 10