Delhi High Court - Orders
M/S Jaquar And Company Pvt. Ltd vs Yousaf Thottasseri on 16 May, 2023
Author: C.Hari Shankar
Bench: C.Hari Shankar
$~22
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 312/2023, I.A. 9452/2023, I.A. 9453/2023, I.A.
9454/2023 & I.A. 9455/2023
M/S JAQUAR AND COMPANY PVT. LTD. ..... Plaintiff
Through: Mr. Shivendra Pratap Singh and
Mr. Navdeep Suhag, Advs.
versus
YOUSAF THOTTASSERI ..... Defendant
Through:
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
ORDER
% 16.05.2023
1. This is a plaint alleging infringement, by the defendant, of the registered trademark of the plaintiff. The rival marks are the following:
PLAINTIFF'S MARK DEFENDANT'S MARK
2. The plaintiff is part of the JAQUAR group, founded in 1960. It claims to be a market leader in sanitary fittings. The plaintiff is also the proprietor of the following registrations:
Sr.No. Trademark Application No. Class 1. JAQUAR 440135 11 2. 3262446 35 3. 3262447 11 Signature Not Verified Signed By:KAMLA RAWAT CS(COMM) 312/2023 Page 1 of 6 Signing Date:17.05.2023 12:23:53 4. 3310038 11 5. 3503776 11 6. 3503777 11 7. 3503784 11 8. 3503785 11 9. 3503778 11 10. 3503782 11 11. 3503783 11 12. 3503781 11 13. 3503779 11 14. 3503780 11 3. The plaintiff owns and operates the domain name
www.jaquar.com and www.jaquar.in, through which it sells, promotes and advertises its goods and services.
4. In order to vouchsafe its reputation in the market, the plaintiff has provided its sales figures, from use of the mark JAQUAR, from 2011-2012 till 2021-2022. In the year 2021-2022 alone, the sales figures of the plaintiff are to the tune of ₹ 498 crores. The plaint also provides the promotional expenses incurred by the plaintiff on a year- to-year basis. In the year 2021-2022, the plaintiff has incurred promotional expenses to the tune of ₹ 19.5 crores.
5. The defendant is located in Kerala and is selling and advertising its products which are allied and cognate to those for which the plaintiff uses its JAQUAR mark, under the mark JACUAR, adopting a Signature Not Verified Signed By:KAMLA RAWAT CS(COMM) 312/2023 Page 2 of 6 Signing Date:17.05.2023 12:23:53 logo which is deceptively similar to the plaintiff's device mark. The defendant is also stated to be operating a website www.jacuar.in, the layout and appearance of which is similar to the plaintiff's website. It is further alleged that the defendant has also copied the plaintiff's "JAQUAR EXPERIENCE BATHING" tagline. The defendant is also operating the domain name www.jacuar.in which is deceptively similar to the plaintiff's domain names www.jaquar.in.
6. The plaint further asserts that the defendant has applied for registration of the mark JACUAR for "Apparatus for installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes, kitchen sinks, sanitary ware, bathroom sinks". Though the said application was refused by the Registrar, the defendant is stated to be blatantly continuing to use the mark JACUAR.
7. The plaintiff also claims copyright in the logo , as an artistic work under the Copyright Act. It is stated that, by using a deceptively similar logo, the defendant has also infringed the plaintiff's copyright.
8. A comparison of the logos used by the plaintiff and the defendant make out a clear prima facie case of infringement, by the defendant, of the plaintiff's registered device mark as well as an attempt to pass off the goods of the defendant as those of the plaintiff. Besides, the mark JACUAR, even seen as a word mark, is deceptively similar to the plaintiff's mark JAQUAR and is phonetically almost identical. As the marks are used in respect of the same category of goods, which are purchased by the same category of consumers, the Signature Not Verified triple identity test, which marks a case of infringement is also prima Signed By:KAMLA RAWAT CS(COMM) 312/2023 Page 3 of 6 Signing Date:17.05.2023 12:23:53 facie satisfied in the present case.
9. It is in these circumstances, that the plaintiff has approached this Court by means of the present suit, seeking a permanent injunction against the defendant and all others acting on its behalf from using, in any manner, the mark JACUAR, the domain name www.jacuar.in or any other mark or domain name which is confusingly or deceptively similar JAQUAR mark of the plaintiff, apart from rendition of profits, delivery up, costs and damages.
10. Let the plaint be registered as a suit. Issue summons in the suit.
11. Written statement, accompanied by affidavit of admission/denial of the documents filed by the plaintiff be filed within 30 days with advance copy to learned Counsel for the plaintiff who may file replication thereto, accompanied by affidavit of admission/denial of the documents filed by the defendant within 30 days thereof.
12. List before the learned Joint Registrar (Judicial) for completion of pleadings, admission and denial of the documents and marking of exhibits on 17th July 2023, whereafter the matter would be placed before the Court for case management hearing and further proceedings.
I.A. 9452/2023 (under Order XXXIX Rules 1 and 2 of the CPC)
13. This is an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking interlocutory injunctive reliefs.
Signature Not Verified Signed By:KAMLA RAWAT CS(COMM) 312/2023 Page 4 of 6 Signing Date:17.05.2023 12:23:5314. Issue notice, returnable on 22nd August 2023.
15. Reply, if any, be filed within four weeks thereof with advance copy to learned Counsel for the plaintiff who may file rejoinder thereto within four weeks thereof.
16. The facts of the case make out a prima facie case of infringement both of trademark and copyright as well as an attempt to pass off the goods of the defendant as those of the plaintiff.
17. In the circumstances, applying principles laid down in Laxmikant V. Patel v. Chetanbhai Shah1 and Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia2, an injunction is bound to follow.
18. As such, till the next date of hearing, the defendant as well as all others acting on its behalf shall stand restrained from selling bathrooms and sanitary fittings or goods related thereto, bearing the name JACUAR or any other name or mark which is identical or deceptively similar to the plaintiff's mark JAQUAR. The defendant shall also stand restrained from operating the domain name www.jacuar.in or from registering any domain name which is deceptively similar to the plaintiff's domain name www.jaquar.in or www.jaquar.com.
19. Compliance with Order XXXIX Rule 3 of the CPC be effected within one week from today.
I.A. 9453/2023 (under Section 151 of the CPC)
20. Subject to the plaintiff filing legible copies of any dim or 1 Signature Not Verified 2002 3 SCC 65 2 Signed By:KAMLA (2004) 3 SCC 90 RAWAT CS(COMM) 312/2023 Page 5 of 6 Signing Date:17.05.2023 12:23:53 illegible documents on which it may seek to place reliance within four weeks from today, exemption is granted for the present.
21. The application is disposed of.
I.A. 9454/2023 (under Order XI Rule 1(4) of the CPC)
22. By this application, the plaintiff seeks permission to file additional documents.
23. 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.
24. The application stands disposed of accordingly.
I.A. 9455/2023 (under Section 12A of the Commercial Courts Act, 2015)
25. 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.
26. The application stands allowed accordingly.
C.HARI SHANKAR J MAY 16 2023 ar/rb Signature Not Verified 3 Signed By:KAMLA 2022 SCC OnLine Del 3529 RAWAT CS(COMM) 312/2023 Page 6 of 6 Signing Date:17.05.2023 12:23:53