Delhi District Court
Lkb Engineering Pvt Ltd vs Mr. Mohanlal U Jain on 19 March, 2025
IN THE COURT OF SH.AJAY GUPTA
DISTRICT JUDGE (COMMERCIAL COURT)-05
TIS HAZARI COURTS, WEST: DELHI
CNR No. DLWT01-007482-2019
CS(Comm)/441/2019
M/s LKB Engineerings Pvt.Ltd.
Having its registered office at
GI-118/119, Mayapuri Industrial Area
Phase-II, Delhi-110064
Through its Director Sh. Lal Chand Dubey
... Plaintiff
Versus
1. Mohan Lal U Jain
Proprietor of
M/s Master Marketing
#29, Ground Floor
Nehru Road, New Guddadahalli
Mysore Road, Bangalore-560026
2. M/s Master Marketing
# 29, Ground Floor
Nehru Road, New Guddadahalli
Mysore Road, Bangalore-560026
Through its Proprietor
........Defendants
Date of Institution of Case : 16.09.2019
Date of Arguments : 03.03.2025
Date of Pronouncement of Judgment : 19.03.2025
CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 1 of 33
JUDGMENT
1. Plaintiff has filed the present suit for declaration, permanent injunction, infringement of trademark, passing off rendition of accounts and damages against the defendants on the basis of following averments:-
(i) That the plaintiff had entered into an assignment deed dated 16.05.2017 with Rallison Electricals Pvt.Ltd. (hereinafter referred as the assignor) who had assigned the trade mark "RALLISON" in favour of plaintiff company.
(ii) That the assignor was earlier known as Rollex Electricals Pvt.Ltd. which sold its brand name "RALLISON" to the plaintiff and thus, plaintiff is the sole and exclusive owner, inventor, adopter and user of the trademark "RALLISON" for goods viz, Machines, machine tools, motors (except for vehicle), machines couplings and belting (excepting for vehicles size agricultural implements, incubators in class 7, PVC wires and cables in class 9 and installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes in class 11 and the said trademark has CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 2 of 33 been continuously used by the plaintiff since 1985.
The Mark "Rallison" is registered in class 7, 9, 11, 33 and 38 and rest of the classes is pending under Trade Mark Act 1999.
(iii) That plaintiff had come to know that defendant is manufacturing/trading Mixer Grinders, wet grinder and juicers, grinding machines and crushers for household use, food processors and all other home appliances in class 7 and all kinds of fans, LPG gas stoves, cooking stoves including kerosene and wick stoves, electric hot pots, water heaters etc in class 11 under the marks Rallisons and Rallison Appliances which is an act of passing off.
(iv) That it came to the knowledge of the plaintiff that defendants have wrongly applied for similar trade mark "Rallison" before the concerned Authority in Chennai and plaintiff has filed the objections and order was passed in favour of the plaintiff
(v) That intention of the defendant was to cause confusion and deception in the trade and earn illegal benefits by misleading the public and thus, plaintiff served them with a legal notice dated 23.04.2016.
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(vi) That defendant has invaded the goodwill and reputation of the plaintiff which was earned by spending large amount of money on publicity and advertisement of trademark Rallison and any goods under the same trademark or similarly sounding will be understood to be the goods of the plaintiff and will also create confusion and deception amongst public as the goods are identical. The defendant had adopted and tried to use an identical/similar trade mark to pass off the sub standard goods against the superior quality of goods of plaintiff. Since the defendant has adopted and using identical, similar writing style of trade mark thus, defendant is also liable for damages for infringement of copyright qua the same.
(vi) That plaintiff had filed a similar suit before Ld. Sr. Civil Judge, Tis Hazari Court which was dismissed as the said court had no jurisdiction to try the said case, thus, it was rejected u/o 7 rule 11 CPC on 01.06.2019. It is stated that in the said case defendant had produced certain documents i.e. bills/invoices showing the sale of goods of the defendant by using plaintiff's trade mark. The defendant earned huge money through the said sale of goods and defendant had sold the goods worth CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 4 of 33 Rs.15,34,875/- till 01.01.2018 and they are still in the process of selling these goods. Thus, they are also liable for rendition of account for assessing the profits illegally earned by them by using plaintiff's trade mark. Thus, on the basis of aforesaid averments, plaintiff has prayed for decree of declaration, permanent injunction, infringement of trademark, passing off, rendition of accounts and damages.
2. In their written statement, defendants sought dismissal of the suit of the plaintiff on the following grounds:-
Preliminary Objections
(i) It is stated that suit is liable to be dismissed as plaintiff is not the registered proprietor of the trade mark "Rallison" in regard to steel pipes and tubes.
Besides, it is stated that this court does not have jurisdiction as defendant does not carry on their business within the jurisdiction of this Court.
(ii) It is further stated that the present suit is liable to be dismissed on the ground of delay, latches and acquiescence as the defendant has been using the trademark 'RALLISON' on a wide variety of products for last about 17 years (since 2002). The CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 5 of 33 defendant had widely advertised their goods through various newspapers and electronic media. The defendant has specified the names of electronic media as well as print media platform, the same is as under:-
HTTP OFFICIAL http://rallisionappliances.com/ Website https://www.facebook.com/rallisonappliances/ Facebook.com https://www.instagram.com/rallisonappliances/ Instagram.com
https://plus.google.com/107054687388153566938 Googleplus.com https://twitter.com/rallisonapplian Twitter.com https://www.youtube.com/watch?v=cNOkt73Ca1Y Youtube.com https://in.linkedin.com/company/rallison- Linkedin.com appliances---India https://www.pinterest.com/rallisonplus/ Pinterest.com 1800 200 6200 Toll free number Print Media (2002 onwards)
1. The Indian Express
2. Rajasthan Patrika
3. Vijay Karnataka
4. Vijay Vani
5. Kannada Prabha 6 Vishwa Vani
7. Mysore Mail CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 6 of 33 Thus it is stated that the plaintiff was fully aware of the use of trademark by the defendant. Therefore, suit is liable to be dismissed on the ground of delay latches and acquiescence.
(iii) The defendant also stated that the present suit is not maintainable even for passing off as plaintiff does not manufacture cognate goods while defendant is engaged in the manufacturing and trading of the household appliances such as mixer, stoves, and pressure cookers etc. which falls under class 7, 11 and 21.
(iv) It is further stated that defendant has been manufacturing the aforesaid home appliances as well as other home appliances which falls under clause 7, 11, & 21 since 03.04.2002 and defendant has already applied for registration of trade mark under the said classes, therefore, even if defendant is not the registered proprietor of the said trade mark yet defendant is the prior user of the same, therefore, defendant is entitled to use the same so far as it relates to the goods falling under class 7, 11 & 21. It is further stated that admittedly, plaintiff is engaged in manufacturing of only electrical goods like cables and wires which falls in a different class i.e. under class 9 and defendant CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 7 of 33 has not been using the same. It is stated that defendant is using the same in regard to different class. It is also stated that plaintiff ought to have impleaded Rallison Electricals Pvt.Ltd., as necessary and proper party to the present suit, thus, the present suit is liable to be dismissed for non joinder of assignor.
Reply on merits
(v) It is stated that the present suit has not been filed by a duly authorized person as the plaintiff has not executed the Board Resolution in favour of Sh Sunil Kumar.
(vi) It is denied that the plaintiff is the sole and exclusive owner, inventor, adopter and user of the trademark Rallison or that it is registered proprietor of Rallison in respect of goods falling under class 7, 9, 11, 33 and 38 of Trademarks Act. It is stated that defendant no.1&2 have been using the trademark Rallison for manufacturing and sale of mixies, LPG Gas Stove, Fans, non stick cookware, pressure cookers and other home appliance included in class 7, 11 & 21 since 03.04.2002 and defendant has also applied for registration of trademark Rallison.
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(vii) It is stated that Rallison is not an inventive word and therefore, the plaintiff cannot be the exclusive owner, inventor, adopter and user. It is denied that the defendants have wrongly applied for similar trademark Rallison in Chennai but admitted that plaintiff has filed their objection before the Trade Mark Registry against the same. It is stated that the application of defendant was dismissed for non prosecution and thus, it is denied that the order was passed in favour of the plaintiff. It is further stated that the said application has been restored and application for trademark is still pending. It is stated that the defendant is using the trademark with a particular logo, artistic design and thus, defendant has been using the same in a different getup altogether and defendant has also secured copyright in respect of "Rallison" vide no. A-85883/09 dated 18.06.2009 and overall comparison of both the marks does not cause any confusion amongst the consuming public.
(viii) In regard to expenses on publicity and advertisement, it has been stated that plaintiff has not annexed any advertisement or bill of publicity of trademark. It is denied that Trademark Rallison CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 9 of 33 or similarly sounding will be understood to be the goods of the plaintiff.
(ix) It is stated that plaintiff has failed to produce any piece of evidence to show that they manufacture the said goods included in class 7, 11 & 21 and since defendant has been using the same since 2002, the suit is liable to be dismissed.
(x) It is further stated that the plaintiff has filed the suit for permanent injunction and not for infringement of trademark under Trademarks Act and thus,the jurisdiction cannot be governed as per Sec 134(2) of Trade Mark Act and will only be governed as per section 20 of CPC and thus, the suit can only be filed where the defendant resides and works for gain.
3. From the pleadings of the parties, the following issues were framed on 04.10.2023:-
ISSUES
1. Whether the present suit is liable to be dismissed on the ground of delay and latches? OPD
2. Whether the present suit is liable to be dismissed for non-joinder of parties in terms of para 7 of the preliminary objections? OPD CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 10 of 33
3. Whether this Court has territorial jurisdiction to entertain the present suit in terms of Section 134 of Trade Mark Act, 1999? OPP
4. Whether the suit is liable to be dismissed because the plaintiff does not manufacture cognate goods falling under classes of 7,11 and 21? OPP
5. Whether the plaintiff is entitled for the decree of permanent injunction, declaration, rendition of accounts and for damages? OPP
6. Relief.
4. In support of their claim plaintiff has examined their AR Mr. Sunil Kumar as PW1. In his affidavit Ex.PW1/A, PW1 has reiterated the contents of the plaint and he has brought on record the following documents:-
(i) Resolution dated 02.09.2019 as Ex.PW1/1
(ii) Assignment deed dated 16.05.2017 as Ex.PW1/2 (Colly.)
(iii) Name change certificate from Rollex Pvt.Ltd. to Rallison Electrical Pvt.Ltd. as Ex.PW1/3 and Ex.PW1/4.
(iv) Collective Certificates of registration of Trade mark as Ex.PW1/5 (Colly.)
(v) The objections and orders regarding trade mark as Ex.PW1/6 (colly.).
(vi) Postal receipt as Ex.PW1/7 (Colly.)
(vii) Documents produced by defendant in previous litigation (admitted documents) as Ex.PW1/8 CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 11 of 33 (Colly.)
(viii) Documents showing sale by the defendant (admitted documents) as Ex.PW1/9 (colly.).
(ix) Certificate u/s 65-B of I.E Act as Ex.PW1/B.
5. Defendants have examined Sh. Ashwin Jain as DW1. In his affidavit Ex.DW1/A, DW1 reiterated the contents of the written statement and he has brought on record the following documents:-
(i) Print out of the Article as Ex. DW1/1 (colly)
(ii) Print out of the advertisements as Ex. DW1/2 (colly)
(iii) Print out of search certificate as Ex. DW1/3
(iv) Copy of letter dated 26.11.2009 alongwith email dated 26.11.2009 as Ex. DW1/4 (colly)
(v) Print out of the Web advertisement of the plaintiff as Ex.DW1/5 (colly.)
(vi) Print out of the status of the trade mark applications filed by the plaintiff as Ex.DW1/6 (Colly.)
(vii) Print out of Chart as Ex. DW1/7.
viii) General Power of Attorney dated 30.11.2024 as Ex. DW1/8
(ix) General Power of Attorney dated 12.01.2018 as Mark A
(x) Certificate u/s 65B of Indian Evidence Act as Ex.
DW1/C
6. I have heard the arguments from Ld.Counsel for plaintiff as well as Ld. Counsel for the defendant. They have also file their written submissions and I have gone through the same. Ld. Counsel for the plaintiff has relied upon the CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 12 of 33 Judgement titled Adidas AG Vs. Keshav H Tulsiani & Others, CS(COMM) No.582/2018 (MANU/DE/4727/2024).
7. Ld. Counsel for the defendant has relied upon the following case laws:-
(i) Kanugo Media Pvt.ltd. Vs. RGV Film Factory (2017) 243 DLT 301
(ii) Charak Pharmaceuticals (India) Vs. Glenmark Pharmaceuticals Ltd., 2007 SCC Bom 1192
(iii) Nandhini Deluxe Vs. Karnataka Milk Cooperative Producers Federation ltd. (2018) 9 SCC 183
(iv) Intercity Hotel Vs. Hotel Intercity Delhi, 2019 SCC Online 7644
(v) Ramdev Food Products (P) Ltd. Vs. Arvindbhai RambhaI Patel & Ors. (2006) 8 SCC 726.
My issues wise finding is as under:-
ISSUE NO.1, 4 & 51. Whether the present suit is liable to be dismissed on the ground of delay and latches?
OPD
4. Whether the suit is liable to be dismissed because the plaintiff does not manufacture cognate goods falling under classes of 7,11 and 21? OPP CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 13 of 33
5. Whether the plaintiff is entitled for the decree of permanent injunction, declaration, rendition of accounts and for damages? OPP
8. All these issues are interconnected and thus, these are taken up together for disposal. The onus to prove issue no.4&5 was on plaintiff while regarding issue no.1, onus was on defendant. In the present suit, plaintiff has claimed that Rallison Electricals Pvt.Ltd. (REPL in short) (earlier known as Rollex Electricals Pvt.Ltd.) was the registered owner of its brand name 'RALLISON' in regard to Class 7, 9, 11, 33 and 38 under Trademark Act 1999 and the said company has been using the said trademark since 1985. The REPL (the assignor) through an assignment deed dated 16.05.2017 assigned the said trade mark to the plaintiff company and plaintiff has come to know through their reliable sources that defendant is involved in manufacturing/trading of mixer grinder, wet grinder and juicer, grinding machine, crushers, food processor (for household preparation) and all other home appliances (under class 7) by using the trademark of plaintiff. As per plaintiff, defendant is also using their trademark for manufacturing of fans, LPG gas stove, cooking stoves, electric hotpot, water heater, electric coffee maker, electric toasters, emersion heater and oven which falls in class 11. Defendant is stated to be manufacturing and trading the aforesaid products by using the CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 14 of 33 trade mark "Rallison". Thus, plaintiff has claimed that defendant is involved in the activities of infringement and passing off by using their trade mark.
9. In order to seek injunction qua the aforesaid infringement/passing off, plaintiff was required to establish the following :-
1. That the plaintiff as well as their assignor is having registration of their aforesaid trademark qua all the products which are covered within the class 7 and 11 and also that they have been manufacturing/selling/trading the aforesaid goods under the trademark "Rallison" and the similar goods are being manufactured and sold by the defendant by using their trademark.
2. That registered owner of the trade mark "Rallison" has assigned the trademark 'Rallison' to the plaintiff in regard to the aforesaid classes and plaintiff has also been manufacturing, selling/trading the aforesaid products by using the aforesaid trademark.
3. That the plaintiff has also popularized the said trade mark qua the aforesaid products.
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4. That plaintiff has suffered losses in the sale of the aforesaid products due to alleged use of the trademark by the defendant qua the similar products.
10. The plaintiff has claimed itself to be owner of trademark 'Rallison' in regard to the aforesaid classes through the aforesaid assignment deed. It is undisputed that the said assignment deed is an unstamped and unregistered document. The rules related to the registration of the assignment deed have been specified in section 45 of the Trademark Act which is reproduced as under:-
45. Registration of assignments and transmissions--
(1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application, register him as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment or transmission has effect, and shall cause particulars of such assignment or transmission to be entered on the register. (2) The Registrar may require the applicant to furnish evidence or further evidence in proof of title only where there is a reasonable doubt about the veracity of any statement or any document furnished.
(3) Where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 16 of 33 transmission until the rights of the parties have been determined by a competent court and in all other cases the Registrar shall dispose of the application within the prescribed period.
(4) Until an application under sub-section (1) has been filed, the assignment or transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission.]
11. In regard to the legal requirement for registration of assignment deed, in the matter of Ramaiah Life Style Cafe Vs. Eminent Entertainment & Ors., MANU/DE/167/2017 (a suit for infringement of trade mark), Hon'ble Delhi High Court has observed as under:-
"19. Sub-section (4) of Section 45 of the Trade Marks Act as it now stands is new. It makes the assignment ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission. The defendants herein have however not acquired any conflicting interest in or under the registered trade mark.
20 . There are certain other differences in Section 45 pre and post the amendment thereof w.e.f. 8th July, 2013. While under the sub-section 45(2) as it stood prior to the amendment w.e.f. 8th July, 2013, a document or instrument in respect of which no entry had been made in the register in accordance with the sub-section (1) was to be not admitted in evidence by any Court in proof of title to the trade mark by a assignment or transmission unless the Court CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 17 of 33 otherwise directed, in the amended Section 45 such impediment on the Court has been removed. The amended Section 45 also grants liberty to the Registrar, Trade Marks to require the applicant to furnish evidence or further evidence in proof of title if entertains any doubt. It follows that while the prohibition contained on admission into evidence of a deed of assignment if not entered in the register has been removed, power has been given to the Registrar to ask applicant to furnish evidence or further evidence in proof of title under the deed of assignment or transmission of a registered trade mark.
21. The said changes in Section 45 however do not call for a change in the view taken in Sun Pharmaceuticals Industries Limited supra. I may however record that the Division Bench of the High Court of Bombay in Parksons Cartamundi Pvt. Ltd. v. Suresh Kumar Jasraj Burad MANU/MH/0485/2012 has held that though prior to the amendment registration of assignment under Section 45 could not be said to be a mere formality but is so after the amendment.
22. One thing which is however clear as a day light on a reading of Section 45 is that registration of assignment under Section 45 is mandatory. This is evident from the use of the word 'Shall' in Section 45(1).
23. Thus it is mandatory for a assignee of a registered trade mark to apply in the prescribed manner to the Registrar, Trade Marks to register his title thereto.
24. Seen in this light what distinguishes the present case from Sun Pharmaceuticals Industries Limited supra and the judgments relied upon therein is that while in all those cases the plaintiff had applied to the Registrar, Trade Marks for registration of his title to CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 18 of 33 the trade mark by assignment or transmission and non-registration was not attributable to any default on the part of the plaintiff therein, the plaintiff herein for the last nearly eight years from the date of the claimed assignment and for the last nearly five years since the admitted knowledge of claimed infringement has not even applied to the Registrar of the Trade Marks for registering the assignment of trade mark in its favour. The possibility of the plaintiff not doing so for reasons not spelled out before this Court cannot be ruled out. The fact that the plaintiff has not chosen to make M/s. Ramaiah Developers & Builders (P) Ltd. as a party to this suit also raises doubt as to the validity of the assignment, on the basis whereof this suit for infringement has been filed.
25. Even otherwise, I am of the opinion that if this Court inspite of such delays and neglect on the part of the plaintiff grants to the plaintiff all the benefits and privileges to which a registered proprietor is entitled to, the same would amount to this Court allowing mandatory provisions of the statute to be flouted and/or not penalising the plaintiff therefor, making the statutory provisions otiose.
26. I may in this regard notice that Section 2(1)(v) of the Trade Marks Act defines a registered proprietor in relation to a trade mark as meaning the person for the time being entered in the register as proprietor of the trade mark and Section 28, on registration of a trade mark, gives to the registered proprietor of the trade mark right to obtain relief in respect of infringement of the trade mark. The words 'registered proprietor' in Section 28 would take their meaning from Section 2(1)(v) meaning the person for the time being entered in the register as proprietor of the registered trade mark. The plaintiff till date is neither the person for the time being entered in the register as proprietor of CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 19 of 33 the trade mark for infringement of which the suit has been filed nor has applied therefor.
(Certain portion of the Judgement of Hon'ble High Court has been underlined to highlight the relevant portion).
12. Thus, it is well settled law that in order to claim the ownership of the trademark, through the assignment deed, the registration of assignment deed is mandatory. The plaintiff would still have a right to file a suit for infringement/passing off, in case, the plaintiff has already field an application seeking registration of the assignment deed. However, it is clear that in the present case, no application for registration of the assignment deed was ever filed by the plaintiff. Thus, under these circumstances, it is held that since the assignment deed of the plaintiff is neither registered nor processed for registration therefore, plaintiff does not get a legal right to enforce its legal right qua the aforesaid trade mark to seek the relief of infringement/passing off against the defendant.
13. Besides there are several other aspects in this matter which plaintiff was required to establish to seek the relief of permanent injunction qua infringement and passing off. Plaintiff has claimed that they are the registered owner of the said trade mark and defendant is also manufacturing the similar goods which falls in class 7 and 11. Thus, in this CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 20 of 33 manner, defendant is indulged in infringement of their trademark. The plaintiff could have claimed all these rights on the basis of aforesaid assignment deed, however, same cannot be taken into consideration vis-a-vis the rights of plaintiff involved in the present suit is concerned however, even if the same is considered, it is clear from annexure A of the deed that the plaintiff was not assigned the said trademark in regard to class 7. Thus, under these circumstances even if any cause of action had arisen then only the original owner of the trademark could have come to the court to seek the appropriate relief (if any) but plaintiff does not have any legal right as far as the alleged infringement/passing off is being done by the defendant in regard to class 7.
14. As far as the goods falling under class 9 and 11 are concerned, plaintiff has simply claimed to be manufacturing the products falling under these classes, however, plaintiff has neither specified in the plaint nor filed any document to specify as to which appliances are being manufactured and sold by the plaintiff under these classes. Even if it is assumed that plaintiff is registered owner and has exclusive right for manufacturing and selling all the goods covered under these classes by using the aforesaid trade mark yet plaintiff was required to establish that plaintiff is using the said trademark qua all these appliance in order to injunct/restrain the defendant. In this regard, this CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 21 of 33 Court is supported by the Judgment of Hon'ble High Court titled Smithkline Beecham PLC Vs Sunil Sarmalkar & Ors., (CS (OS) NO.1181/2003), the relevant paras of the said judgement is reproduced as under:-
"7. So far as the fact that the trade mark PANAMAX is registered in favour of the plaintiffs is concerned, the same cannot be disputed, however mere registration of a trade mark cannot confer a right unless goods have been sold under the said trade mark. The entire issue of distinctiveness qua the trade mark is necessarily with reference to sales made under a trade mark. If there are no sales there cannot be distinctiveness. A Division Bench of this Court in the judgment reported as Fedders Lloyd Corporation Ltd. & Anr. Vs. Fedders Corporation & Anr., 119 (2005) DLT 410 has observed in para 23 as under:-
'23. Though the object of the Trade Marks Act is to protect the proprietary rights of a registered trademark holder, at the same time the object is not to facilitate any monopoly of such registered trade mark holder, despite non use of the trademark by him as contemplated by the Act. A trademark has no meaning, even if it is registered, unless it is used in relation to goods and/or services. A Trademark which drops out of the use, dies when there are no goods offered for sale as there is no use of the trademark. The mark can lose its distinctiveness by non use, where non use is on the part of registered trade mark holder but not on account of external factors beyond the control of such registered trade mark holder.' (underlining added)
8. A reading of the aforesaid paragraph makes it more than clear that though the object of the Trade marks Act is to protect the proprietary rights of a registered trade mark holder, at the same time the object is not to facilitate any monopoly of such trade mark holder despite non-use of the trade mark by him. The Division Bench has clearly said that CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 22 of 33 the trade mark has no meaning, even if it is registered, unless it is used in relation to goods and/or services. The Division Bench has further observed that the trade mark which drops out of the use, dies when there are no goods which are offered for sale as there is no use of the trade mark. Finally, the Division Bench observed that a mark looses its distinctiveness by non-use.
9. Another Division Bench judgment of this Court in the case of Virumal Praveen Kumar Vs. Needle Industries (India) Ltd. & Anr., 2001 (93) DLT 600 has made similar observations in paras 24, 26 and 29 and which read as under:
'24. In view of the aforesaid factual position what has to be considered is whether the factum of the registration of the trademark in the name of appellant is sufficient to grant relief in favor of the respondents or whether something more is required. This has to be considered in view of the submission of learned counsel for the appellant that the trademark cannot exist in vacuum and in view of their being a non-user of trademark since 1981, the respondents are not entitled to any protection.
26. Though delay be itself would not be a defense but if there was a non-user for a long period of time the mark would lose its distinctiveness or the mark is then permitted to die for non-user. The Bombay High Court observed "It is well settled that lapse of time may bring about a change in the state of things in such a manner that to grant injunction in favor of the plaintiff's would be harsh and it may cause irreparable damage or harm to the rights of the defendants."
Thus the Bombay High Court was of the view that non-use of trademark does have a bearing in action for infringement specially at the interlocutory stage and equities would have to be balanced in such a situation. The Bombay High Court had further laid CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 23 of 33 down certain principles in this behalf which have been reproduced in the impugned judgment. In point (f) of the order dated 28th March, 2000 it is stated that the object of the Act is to protect the right and not be a source of monopoly. In point (j) it has been observed that a mark can lose its distinctiveness by non-user. Thus the enforcement of the right of exclusive use of a trade mark will depend on continuous use of the mark by the proprietor. In point (k) it has been observed that the court shall not protect the right of proprietor unless there is sale of the articles to which trade mark is attached or related.
29. We are in agreement with the view of the learned Single Judge of the Bombay High Court that if there is non-user for a long period of time then by mere registration of the mark continuing the respondents would not be entitled to any injunction. this view is further reinforced by the judgment in Imperial Group's case (supra) wherein it was held that where there is no trading to give rise to a goodwill there is no interest to be protected by a trademark and such a trademark cannot exist in vacuum.' (underlining added)
10. In the above case, counsel for the plaintiffs states that no documents whatsoever have been filed and proved with respect to sale of the paracetamol tablets by the plaintiff no.1 in India under the trade mark PANAMAX. Therefore, once there are no sales of the goods under the trade mark PANAMAX, it cannot be said that the plaintiffs have proved their distinctiveness qua the trade mark PANAMAX. The object of the trade mark law is that a person should not be allowed to squat on a trade mark, without actually using the same. Since there is no proof whatsoever filed by the plaintiffs of actual user of the trade mark PANAMAX in India, i.e since it is not shown that sales have been made under the trade mark PANAMAX in India, the plaintiffs are not entitled to reliefs as prayed. Once there are no sales, the plaintiffs are not entitled to any relief although the trade mark is registered, in view of the observations of the CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 24 of 33 Division Bench in the cases of Fedders Lloyd Corporation Ltd. (supra) and Virumal Praveen Kumar (supra).
11. So far as the alternative case of passing off with respect to the trade mark PANAMAX is concerned, even that right with respect to passing off has to be established by prior use of the trade mark PANAMAX by the plaintiffs as compared to the defendants. Actual use, as already stated above, is only by showing sales in the market. Sales admittedly have not been proved and established on record. A self-serving statement in an affidavit by way of evidence cannot be a substitute for actual discharge of onus of proof which is required to be done by leading credible evidence and which surely could have been done in this case inasmuch as if the plaintiff no.1 has huge sales it was not difficult at all for the plaintiff no. 1 to prove the sales of the paracetamol tablets under the trade mark PANAMAX.
12. I therefore hold that the plaintiffs have miserably failed to prove their case either with respect to infringement or passing off with respect to the trade mark PANAMAX".
15. It is clear as well as it is admitted position of fact that plaintiff has simply claimed that it is using the said trademark qua the said category of goods (Class 7 and 11) however, except the brochures (PW1/3 colly.) plaintiff has not filed even a single document to show that they are infact manufacturing and selling all these home appliances. Not even a single invoice has been placed on record to show sale of these appliances by the plaintiff. Simply claiming that plaintiff is using their trademark qua these appliances would not suffice and in order to show that plaintiff's legal right qua their trade CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 25 of 33 mark is being infringed/violated by the defendant, plaintiff was required to place on record the relevant evidence in this regard, however, not even a single piece of evidence has been brought on record by the plaintiff qua the same except the self serving statement of PW1. In view of the settled legal position, plaintiff is not be entitled to claim the relief of permanent injunction in this regard.
16. Furthermore as per plaintiff, defendant is involved in manufacturing and trading of similar products, however, it is clear from the contents of the plaint that plaintiff has nowhere specified as to how plaintiff came to know about the said activities of the defendant. In order to assess and compute the limitation, the plaintiff was required to specify as to on which date (the period) plaintiff had come to know about the same, however, the plaint is completely silent about the same. Though the plaintiff has not specified any period, however, plaintiff has mentioned that defendant was asked to stop the said activity through notice dated 23.04.2016 (Ex.PW1/7 (Colly.). It is clear that the said notice was issued by the assignor through their attorney Bharti Registration Service (Advocate Bharti Beniwal) and the assignor had asked the defendant to stop using their trade mark qua class 7 and 11. Thus, it is clear that the plaintiff was provided the relevant documents by the assignor regarding the steps taken by them in CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 26 of 33 this regard. Defendant has taken a specific defence in this matter that the suit of the plaintiff is liable to the dismissed on the ground of acquiescence as well as delay and latches. As per defendant, they had been using the said trade mark from the year 2002 and they had widely publicized about these products. In order to establish the same, Defendant examined DW1 who brought on record several documents (Ex.PW1/R) and it is clear from cross examination of DW1 that authenticity of these documents have not been disputed. It is also not disputed that defendant had not popularized their products which were associated with the trade mark Rallison Appliances through the aforesaid media network. As such, it is clear that defendant had widely publicized about manufacturing and selling these products (since 2002), thus, it can be assumed that plaintiff would have come to know that defendant has been using their trade mark qua the similar products and it is also clear from one specific document that assignor had come to know about the same a long time back. Defendant has claimed that after the assignor had come to know about defendant's aforesaid manufacturing activities, the assignor had permitted the defendant to use their trademark qua mixer grinder, electric fan and LPG stoves, however, they had raised their objections in regard to other goods under class 7, 11 and 21 and the said communication was made by the attorney of the assignor through an email and in this regard a specific question was CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 27 of 33 asked from the witness of plaintiff (PW1) who did not deny the authenticity of this document and expressed his ignorance about the aforesaid communication. The said communication was also brought on record by DW1 as DW1/4 (Colly.) also. It is clear from his cross examination that neither the authenticity of the said communication nor the fact that the assignor had acquiesced their right qua the certain goods and appliances was disputed. It is further clear that during admission denial of documents, the plaintiff admitted the existence of these documents which is sufficient to show that such a communication was made on 26.11.2009. Thus, from these facts and circumstances, two things are crystal clear, firstly that the assignor themselves had acquiesced their right qua certain appliances in the year 2009 itself and therefore, even if it is assumed that plaintiff has received certain rights qua the same through the assignment deed yet plaintiff cannot raise any claim against the defendants against the same. Secondly, it is also clear from this very fact that the assignor had already come to know well before the year 2009 that defendant is using their trademark for manufacturing and selling these products and therefore, in case, they had any legal right about the same then they ought to have exercised the same within a reasonable time of gaining knowledge about the same, however, it is clear that the assignor instead of taking any action against the defendant rather permitted the defendant to continue with the CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 28 of 33 manufacturing activities qua certain goods/appliances and they also kept silent even when they also came to know that defendant is manufacturing other products also under class 7, 11, and 21. Therefore, it is clear that in the present case, there is express as well as implied acquiescence to the defendant. Therefore, under these circumstances, after permitting the defendant or after waiving off their right qua the same, neither assignor nor plaintiff is entitled (who cannot have a better case than the assignor) to seek the relief of permanent injunction as well as other reliefs against the defendants in regard to these goods/products under class 7,9, and 11. Besides, plaintiff is also not entitled to claim any relief in the present suit on account of delay and latches.
17. In view of the aforesaid discussions, it is clear that plaintiff has failed to establish that it has been manufacturing the goods qua which the injunction has been sought by the plaintiff. Thus, even if it is assumed that the plaintiff has been properly assigned with the trade mark 'Rallison' qua class 9, 11, 33 and 38 yet plaintiff cannot seek the relief of injunction qua infringement unless plaintiff establish that it has also been manufacturing the similar products which are covered within the aforesaid classes. It is well settled law that plaintiff cannot claim exclusive right over the entire class qua the registered trade mark if plaintiff is not manufacturing the similar goods.
CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 29 of 33 In this regard, this court is supported by the Judgement of Nandini Deluxe Vs. Karnataka Cooperative Milk, AIR 2018 Supreme Court 3516. The relevant paras of the said Judgement is reporduced as under:-
"31. We may mention that the aforesaid principle of law while interpreting the provisions of Trade and Merchandise Act, 1958 is equally applicable as it is unaffected by the trade Marks Act Trade Marks Act, 1999 inasmuch as the main object underlying the said principle is that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trade mark in respect of certain goods falling under the same class. In this behalf, we may usefully refer to Section 11 of the Act which prohibits the registration of the mark in respect of the similar goods or different goods but the provisions of this Section do not cover the same class of goods.
18. In view of these discussions, it is held that plaintiff is not entitled to decree of permanent injunction, declaration rendition of account for damages. Issue no.1,4 & 5 are decided accordingly.
ISSUE NO.2 Whether the present suit is liable to be dismissed for non-joinder of parties in terms of para 7 of the preliminary objections? OPD CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 30 of 33
19. The onus of this issue was on the defendant. The defendant has taken a specific objection that since the plaintiff has claimed the ownership of trademark 'Rallison' qua the aforesaid classes through an assignment deed therefore, the assignor ought to have been made a party to the present suit. This court does not find any substance in the objection raised by defendant as the plaintiff was required to establish (by proving the assignment deed as per law) that it has been assigned the trade mark 'Rallison' qua the aforesaid classes in order to seek the appropriate relief in the present suit, therefore, it is held that the assignor was not required to be impleaded in the present suit as the assignor was neither necessary nor proper party as far as the present matter is concerned. This issue is decided accordingly.
ISSUE NO.3
Whether this Court has territorial
jurisdiction to entertain the present suit in terms of Section 134 of Trade Mark Act, 1999? OPP
20. The onus of this issue was on the plaintiff. In this regard, during the course of arguments Ld. Counsel for the plaintiff referred to the provision of section 134(2) of Trademark Act and submitted that plaintiff has its registered CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 31 of 33 office within the jurisdiction of this court i.e. West Delhi and plaintiff is running his business within the jurisdiction of this Court. Ld. Counsel has relied upon the case law titled Adidas AG Vs. Keshav H Tulsiani & Others and it was also submitted that the plaintiff has filed the present suit from the place of its business as well as the place where the cause of action wholly or partly arose. It is also clear from the aforesaid discussions that defendant has been manufacturing and selling the products under class 7,9,11 and had been populazing the same through various medias and it has been observed that plaintiff became aware about the same and therefore, the predecessor of the plaintiff had communications regarding asking the defendant not to manufacture the similar goods and subsequent thereto a legal notice was also issued by the plaintiff to the defendant. These facts and circumstances clearly shows that defendant was asked to stop manufacturing and selling the relevant products. Moreover, plaintiff is having his business place within the jurisdiction of this court where plaintiff had further come to know about the alleged unauthorized activities on the part of the defendant and plaintiff also initiated action against the defendant. Thus, the part cause of action also arose within the jurisdiction of this Court. In view of this, it is held that this court has jurisdiction to entertain and try the present suit. This issue is decided accordingly.
CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 32 of 33 RELIEF
21. In view of the aforesaid discussions and issue wise findings, the suit of the plaintiff is liable to be dismissed and accordingly, the same is hereby dismissed. No order as to costs.
Decree sheet be prepared accordingly.
File be consigned to record room.
Digitally
signed by
Announced in the Open AJAY AJAY GUPTA
Date:
GUPTA
Court on 19.03.2025
2025.03.19
16:51:55
+0530
(Ajay Gupta)
District Judge (Commercial Court)-05
West, Tis Hazari Courts Extension
Block, Delhi/19.03.2025
CS(Comm)/441/2019 LKB Engineering Pvt.Ltd.Vs. Mohan Lal U Jain etc Page no. 33 of 33