Delhi High Court - Orders
Sopariwala Exports & Ors vs Mr Grijesh Kumar Garg & Ors on 20 April, 2022
Author: Jyoti Singh
Bench: Jyoti Singh
$~47
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 229/2022
SOPARIWALA EXPORTS & ORS. ..... Plaintiffs
Through: Mr. Pravin Anand, Ms. Jaya Negi,
Mr. Siddharth Chamola and Mr. Aditya Nath,
Advocates.
versus
MR GRIJESH KUMAR GARG & ORS. ..... Defendants
Through: None.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
ORDER
% 20.04.2022
I.A. 5646/2022 (Exemption)
1. Subject to the Plaintiffs filing originals, clearer copies and documents with proper margins, which they may seek to place reliance on, within four weeks from today, exemption is granted.
2. Application is allowed and disposed of.
I.A. 5645/2022 (Additional Documents)
3. Present application has been preferred on behalf of the Plaintiffs seeking leave to file additional documents under Order 11 Rule 1(4) CPC.
4. Plaintiffs, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015.
5. Application is allowed and disposed of.
CS(COMM) 229/2022 Page 1 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:25.04.2022 15:39:43I.A. 5648/2022 (Exemption from advance service to Defendants No. 2, 3 and 4)
6. Since there is an urgency in the matter and the matter is being heard today, Plaintiffs are exempted from serving Defendant Nos. 2, 3 and 4 with advance notice.
7. For the reasons stated in the application, the same is allowed and disposed of.
I.A. 5647/2022 (Interrogatories)
8. Present application has been preferred by the Plaintiffs under Order 11 Rule 2 read with Section 151 of the Code of Civil Procedure, 1908 seeking leave to serve the Defendants with the enclosed interrogatories.
9. Issue notice to the Defendants through all prescribed modes, returnable on 30.08.2022.
CS(COMM) 229/2022
10. Let plaint be registered as a suit.
11. Upon filing of process fee, issue summons to the Defendants, through all permissible modes, returnable on 29.07.2022. Summons shall state that the written statement shall be filed by the Defendants within 30 days from the receipt of summons. Along with the written statement, Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiffs.
12. Replication be filed by the Plaintiffs within 15 days of the receipt of the written statement. Along with the replication, an affidavit of admission/denial of documents filed by the Defendants, shall be filed by the Plaintiffs.
13. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
CS(COMM) 229/2022 Page 2 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:25.04.2022 15:39:4314. List before the learned Joint Registrar on 29.07.2022.
15. List before the Court on 30.08.2022.
I.A. 5644/2022 (under Order 39 Rules 1 and 2 CPC)
16. Present application has been preferred by the Plaintiffs under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 for grant of an ex-parte ad-interim injunction.
17. Issue notice to the Defendants through all prescribed modes, returnable on 30.08.2022.
18. It is averred that Plaintiff No. 1 forayed into the Tobacco business in the year 1927 with a small shop in Mumbai. In 1977, Plaintiff No. 1 was registered as a partnership firm under the Indian Partnership Act, 1932 and since then, the trade mark 'AFZAL' has been used in association with Plaintiff No. 1's products.
19. It is averred that Plaintiff No. 1, through a 'Licensed User Agreement' dated 16.08.2010 granted a non-exclusive license to Plaintiff No. 2 for use of the trade mark and label/device mark AFZAL, in India and for export, for a period of 10 years, with effect from 15.09.2006. Said 'Licensed User Agreement' was further extended for an infinite term through a 'Trademark License Agreement' dated 30.03.2015.
20. It is averred that Plaintiff No. 1 granted a non-exclusive license to Plaintiff No.3 through a 'Trademark License Agreement' dated 06.11.2020 with effect from 01.04.2019, for use of trade mark as well as label/device mark AFZAL, all across the world, including in India, for an infinite term.
21. It is averred that Plaintiffs No. 2 and 3, formed by the partners of Plaintiff No. 1, are mainly into export activities vis-à-vis tobacco products under the trade mark AFZAL. All the Plaintiffs are closely connected to CS(COMM) 229/2022 Page 3 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:25.04.2022 15:39:43 each other, having common Directors/partners and belong to the famous Fazlani Group, earlier known as Sopariwala Group, which is one of India's largest exporters of tobacco and tobacco products.
22. It is averred that the Plaintiffs have established and maintained their market leadership in handmade beedis, snuff tobacco, chewing tobacco, zafrani zarda, tobacco molasses, herbal beedis, herbal molasses, charcoal tablets and filter cigarettes, with brands like AFZAL, AL AFZAL, FAZAL. Products of the Plaintiffs are also available in various flavours and are sold across the world, including in India.
23. It is averred that since 1977, Plaintiff No. 1 has remained committed towards creating premium quality products. Plaintiff No. 1 has been recognized by Government of India as a "STAR EXPORT HOUSE" - a status conferred on very few companies in India. Plaintiffs are also the recipient of "Certificate of Excellence" for their performance in exports in "Tobacco Products" and "Certificate of Excellence for Second best export performance in Unmanufactured Tobacco" for past several years not only from various Government Agencies but also from the Hon'ble President of India. Recently, the Plaintiffs have also been awarded with the "Best Exporter of Tobacco Products from India".
24. It is averred that trade mark 'AFZAL' was first adopted and used in India in relation to tobacco products by Plaintiff No. 1 in the year 1977 and has since been continuously, extensively and openly used by the Plaintiffs in India as well as across the globe. Plaintiffs have a wide portfolio of trademarks including the word and service/label mark AFZAL and other AFZAL formative marks (hereinafter collectively referred to as the AFZAL marks). The tobacco products under the trade mark 'AFZAL' are also very CS(COMM) 229/2022 Page 4 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:25.04.2022 15:39:43 popular in various countries across several continents like Asia, Gulf, Europe and America, where they are widely sold by the Plaintiffs.
25. It is averred that Plaintiffs' products sold under the trade mark AFZAL have considerable sales volumes and a loyal customer base. Further, due to the invariably high quality of the products sold by the Plaintiffs as well as the wide reputation and popularity of the Fazlani Group, Plaintiffs and their products are widely known to relevant consumers across the globe. The popularity of the products sold under the trade mark AFZAL is palpable from the annual sales values (both domestic and export) in the last few years, which have been brought out in paragraph 23 of the plaint. It is clear that over the years, the Plaintiffs have built an enviable brand AFZAL which enjoys widespread reputation and goodwill in the tobacco industry.
26. It is further averred that in addition to the long, continuous and bonafide use of the mark 'AFZAL' and the concerned packaging, Plaintiff No. 1 enjoys statutory rights by virtue of registrations for the said 'AFZAL' marks in Class 34 in connection with its tobacco goods. Currently, the Plaintiffs own over 100 registrations for 'AFZAL' and 'AFZAL' formative marks and some applications for registration are currently pending. Details of the Plaintiffs' valid and subsisting trademarks have been mentioned in paragraph 27 of the plaint.
27. It is averred that the colour combination, layout, get up and the lettering style used on the label/device, i.e. white base, font style and mesh rectangle enclosing an oval white background, on which the trade mark AFZAL is written and the other elements of the label/device, constitute an 'original artistic work' within the meaning Section 2(c) of the Copyright Act, 1957 and have remained constant since 1977. Plaintiff No. 1 is also, CS(COMM) 229/2022 Page 5 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:25.04.2022 15:39:43 therefore, the first owner of copyright in the said trade dress/label under Section 17 of the Copyright Act, 1957.
28. It is averred that Plaintiff No.1's trade mark 'AFZAL' and the trade dress have come to be associated solely and exclusively with the Plaintiffs. The packaging, its layout and get-up are unique, distinctive and qualify as original "artistic work" within the meaning of Section 2(c) of the Copyright Act, 1957.
29. It is averred that the Defendants appear to be jointly engaged in the business of manufacturing, supplying, selling and exporting of tobacco products under the brands 'AFDHAAL' and 'ALAFDHAAL'.
30. It is averred that in January, 2022, Plaintiffs, through their legal representatives, came to know about Defendant No. 1 when their application for registration of the device mark bearing Application Number 5107142 under Class 34 was published in the Trade Marks Journal. Plaintiffs were shocked to discover that Defendant No. 1's application was for a phonetically, structurally and visually similar mark for identical goods.
31. It is averred that Defendants, in order to make their packaging look nearly identical to the Plaintiffs' packaging, have copied all the essential elements of the packaging such as colour combination of white, green and dark maroon; overall white background with four different sections, with nearly identical mesh background, similar style of horizontal lines and statutory warning endorsed therein, etc. A comparative assessment of the CS(COMM) 229/2022 Page 6 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:25.04.2022 15:39:43 impugned packaging/label of the Defendants with that of the Plaintiffs' packaging, as brought out in the plaint, is as under :-
Plaintiffs' packaging for 'AFZAL' Defendants' 'AFDHAAL' branded branded pandarpuri tobacco pandarpuri tobacco packaging/label as shared by Defendant No. 1 CS(COMM) 229/2022 Page 7 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:25.04.2022 15:39:43 Plaintiffs' packaging for 'AFZAL' Defendants' 'ALAFDHAAL' branded pandarpuri tobacco branded pandarpuri tobacco packaging/label as shared by the Defendant No. 1
32. It is contended by learned counsel for the Plaintiffs that the Defendants' application for registration of the trade mark CS(COMM) 229/2022 Page 8 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:25.04.2022 15:39:43 and adoption and use of phonetically, structurely and visually similar marks AFDHAAL and ALAFDHAAL is clearly in bad faith, with an intention to take unfair advantage of Plaintiffs' goodwill and reputation and mislead the innocent public by creating an impression that Defendants are associated with and/or authorised by the Plaintiffs. It is argued that Defendants have cleverly replaced the letter 'Z' with similar sounding letters 'DHA' in AFDHAAL and 'LAFDH' in ALAFDHAAL, which is nothing but an attempt to slavishly imitate the Plaintiffs' mark AFZAL. It is also contended that the product in question is a tobacco product, which is a highly regulated sector where companies are not allowed to advertise their products and it is the recall value, colour schemes and product packaging, which play an important part in arriving at a decision regarding the choice of product in the market. This confusion is bound to occur in the present case as the products are the same and the trademarks are phonetically identical apart from the packaging being a slavish imitation. The argument is that the said action of the Defendants amounts to infringement, passing off, unfair trade practice, dilution and tarnishment and they are liable to be injuncted by an ex parte ad-interim order.
33. Having heard learned counsel for the Plaintiffs, this Court is of the view that Plaintiffs have made out a prima facie case for grant of ex parte ad-interim injunction. Balance of convenience lies in favour of the Plaintiffs and they are likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.
CS(COMM) 229/2022 Page 9 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:25.04.2022 15:39:4334. Accordingly, Defendants, their partners, directors, proprietors, subsidiaries, affiliates, franchisees, officers, servants, agents, distributors, stockists, representatives, licensees and anyone acting for or on their behalf, directly or indirectly, as the case may be, are restrained from manufacturing, selling, offering for sale, advertising, exporting, directly or indirectly as the case may be, dealing in any business using the mark 'AFDHAAL', 'ALAFDHAAL' and/or the labels/device/packaging , , and/or any other mark identical or deceptively similar to the Plaintiffs' registered trademarks 'AFZAL', , and/or any permutations/combinations thereof amounting to infringement, passing off, infringement of copyright in original artistic works, misrepresentation, unfair competition, dilution and tarnishment, till the next date of hearing.
CS(COMM) 229/2022 Page 10 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:25.04.2022 15:39:4335. Plaintiffs shall comply with the provisions of Order 39 Rule 3 CPC within ten days from today.
JYOTI SINGH, J APRIL 20, 2022/rk CS(COMM) 229/2022 Page 11 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:25.04.2022 15:39:43