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Gs1 India vs Peddletech Solutions Private Limited & ... on 23 August, 2024

                                    $~25
                                    *    IN THE HIGH COURT OF DELHI AT NEW DELHI

                                    +        CS(COMM) 711/2024

                                             GS1 INDIA                                                                          .....Plaintiff
                                                                                  Through:                 Mr. Aditya Gupta and Mr. Sauhard
                                                                                                           Alung, Advocates

                                                                                  versus

                                        PEDDLETECH SOLUTIONS PRIVATE LIMITED
                                        & ANR.                              .....Defendants
                                                      Through: None
                                    CORAM:
                                    HON'BLE MR. JUSTICE SAURABH BANERJEE
                                                            ORDER

% 23.08.2024 I.A. 37211/2024 (Exp from pre institution mediation)

1. The plaintiff seeks exemption from instituting pre-litigation mediation.

2. Considering the averments made in the present application wherein the plaintiff seeks urgent ad-interim relief and in view of Yamini Manohar vs. T.K.D. Krithi 2023 SCC OnLine 1382 and Chandra Kishore Chaurasia vs. R. A. Perfumery Works Private Limited. 2022:DHC:4454- DB, the plaintiff is exempted from instituting pre-litigation mediation.

3. Accordingly, the present application is allowed and disposed of. I.A. 37210/2024 (Exp)

4. Exemption allowed, subject to all just exceptions.

5. The applications stand disposed of.

I.A. 37209/2024 (Addl.doc) CS(COMM) 711/2024 Page 1 of 12 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 28/08/2024 at 00:44:13

6. The present application has been filed on behalf of the plaintiff under Order 11 Rule 1(4) of the Code of Civil Procedure, 1908 as applicable to commercial suits under the Commercial Courts Act, 2015 seeking to place on record additional documents.

7. The plaintiff will be at liberty to file additional documents at a later stage, albeit, strictly as per the provisions of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules, 2018.

8. Accordingly, the present application is disposed of. CS(COMM) 711/2024

9. Let the plaint be registered as a suit.

10. Upon filing of the process fee, issue summons of the suit to the defendants through all permissible modes returnable before the Joint Registrar on 26.11.2024.

11. The summons shall state that the written statement(s) be filed by the defendants within a period of thirty days from the date of the receipt of the summons. Written statement(s) be filed by the defendants along with affidavit(s) of admission/ denial of documents of the plaintiff, without which the written statement(s) shall not be taken on record.

12. Replication(s) thereto, if any, be filed by the plaintiff within a period of fifteen days from the date of receipt of written statement(s). The said replication(s), if any, shall be accompanied by with affidavit(s) of admission/ denial of documents filed by the defendants, without which the replication(s) shall not be taken on record within the aforesaid period of fifteen days.

13. If any of the parties wish to seek inspection of any document(s), the same shall be sought and given within the requisite timelines.

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 28/08/2024 at 00:44:13

14. List before the Joint Registrar for completion of pleadings on 26.11.2024. It is made clear that if any party unjustifiably denies any document(s), then it would be liable to be burdened with costs.

15. List before the Court on 13.01.2025.

I.A. 37208/2024 (Stay)

16. The plaintiff seeks grant of an ex parte ad interim injunction against defendants from using, selling, offering for sale, issuing or allocating 13- digit barcode numbers starting with '890' or any deceptively similar marks thereto in any manner and for any goods or services leading to confusion as to origin or association or mistaken impression as to certification regarding compliance with GS1 standards (GS1 General Specification), amounting to infringement of plaintiff's registered trademark bearing no.1293152.

17. As per plaint, the plaintiff is a not-for-profit society registered under the Societies Registration Act, 1860 and was set up on 7th June, 1996 by several industry bodies and statutory bodies like the Ministry of Commerce and Industry, Government of India, Federation of Indian Exports Organizations (FIEO), Agricultural and Processed Food Products Export Development Authority (APEDA) Spices Board, Indian Institute of Packaging (IIP), Bureau of Indian Standards (BIS) and leading Apex chambers Confederation of Indian Industry (CII), Federation of Indian Chambers of Commerce & Industry (FICCI), Associated Chambers of Commerce and Industry of India (ASSOCHAM) and IMC Chamber of Commerce and Industry (IMC).

18. The plaintiff is affiliated to and has been granted an exclusive license by GS1 AISBL an organization which was set up by various CS(COMM) 711/2024 Page 3 of 12 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 28/08/2024 at 00:44:13 countries coming together to maintain global standards as also database of the barcodes issued in compliance of the standard set up by GS1, the global The plaintiff is affiliated to and has been granted an exclusive license by GS1 AISBL an organization which was set up by various countries coming together to maintain global standards as also database of the barcodes issued in compliance of the standard set up by GS1, the global

19. The plaintiff is a Company which is the only licensed body in India which has been allocated the code '890' by GS1 AISBL. The plaintiff has a registration of the said barcode with the '890' prefix in its favour bearing No.1293152 in Class-35, granted on 9th March, 2009 with effect from 29th June, 2004. The aforementioned trademark has received certification under Class 35 for the following services "BUSINESS METHOD OF BAR CODING PRODUCTS AND ITEMS TO INDICATE ORIGIN, SOURCE, MANUFACTURER AND CATEGORY OF THE ITEM BEARING THE BAR CODE":

20. The said '890' barcodes are further licensed for use to various entities in India by the plaintiff along with a Global Company Prefix ("GCP") number which can range from 7 to 10 digits depending on the numbers of SKUs on which barcodes have to be applied. The entity which has been allotted the said unique numbers, then generates a 13-digit CS(COMM) 711/2024 Page 4 of 12 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 28/08/2024 at 00:44:13 product code (known as Global Trade Item Number or "GTIN") for its specific SKU. This 13-digit GTIN would necessarily have '890' as first three digits of the number, followed by the GCP which could be from 7 to 10 digits, followed by a specific number which is allocated by the allottee.

21. The above results in a unique 13-digit number being allocated to a particular product aids the manufacturers, suppliers who want their products to be certified with a barcode so as to ascertain details such as the country of origin as also the manufacturing, supplying units of the product, etc.

22. Once this number is allocated, the details of the relevant company are entered into a database, which is maintained by the plaintiff and integrated with the global trade practice. This helps entities all over the world to identify the origin of a specific product by the GTIN and verification can be made by any person through a publicly available database which is accessible and maintained by GS1 thereby, ensuring uniformity and facilitating unique and universal numerical identifiers for, inter alia, their products (including product packaging, labels, cartons, consignments and pallets etc.)

23. As per learned counsel for plaintiff, this process of unique allocation and verification helps industrial regulatory bodies to adopt global best practices related to counterfeit detection, product authentication, stock management, wastage control. The diagrammatic representation of such barcodes is as under:

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 28/08/2024 at 00:44:13

24. Learned counsel submits that defendants are offering to sell and selling 13-digits barcode number starting with '890' which do not in any manner originate from plaintiff and claiming to provide "services for GS1 (Global Standard 1) Code Registration". A pictorial representation of the advertisement of defendants is reproduced below:

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 28/08/2024 at 00:44:13

25. Learned counsel further submits that the plaintiff received a communication from one Fresco Pizzas LLP (hereinafter referred as "FPLLP"), which had been allocated three barcodes by defendant no. 1 wherein the said FPLLP requested the plaintiff to verify the authenticity of thereof as also the certificate provided by the defendant no. 1. Alongwith the same, the said FPLLP sent the details of the three barcodes bearing nos. 8901972108163, 8901972107063 and 8901972116877 allotted to it and also a purported letter dated 19.01.2024 bearing the digital signature of one Mr. Vinay Kumar Gupta, CGM (F&A), who is a person employed with the plaintiff.

26. As per learned counsel, each of the aforesaid 13-digit barcodes are starting with '890' and they have not been issued by the plaintiff.

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 28/08/2024 at 00:44:13 Furthermore, the letter head used by the defendants is of the plaintiff, however it is a forged one and also though the signatory therein, Mr. Vinay Kumar Gupta, CGM (F&A), is very much employed with the plaintiff but he has not appended his digital signatures therein.

27. Thereafter, the fraudulent activities of defendants were discovered by the plaintiff as under:

a) The Investigator called the mobile phone number mentioned on the defendants' website (+91 8806951951) and spoke to Mr. Amrut Maktedar (i.e. defendant no.2). Defendant no.2 stated that defendant no.1 was engaged in providing hardware and software solutions, and POS (i.e. point of sale) solutions for retail, including barcode solutions, barcode scanners and barcode generation services.

b) During the telephonic calls and further conversations on the WhatsApp platform, the defendant no.2 confirmed that the defendant No.1 had 'authorisation' for GS1 barcodes. He also stated that the government fee for registration of 100 barcodes is INR 43,400/-, which was the minimum quantity, with an additional 'service fee' of INR 5,000/-. In fact, he later shared a document with the 'GCP fee structure', which was in fact the plaintiff's own fee structure, and stated that the correct fee for 100 barcodes would be INR 44,890/- with an additional service fee of INR 5,000/-.

c) The Investigator thereafter made a sample purchase by paying an amount of INR 49,890/- to the defendants on March 11, 2024, for 100 barcodes.

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 28/08/2024 at 00:44:14

d) The investigator then provided details of 19 additional products proposed to be sold by the investigator to the defendant no.2. On May 22, 2024, the defendant No. 2 then shared an Excel sheet with 19 barcode numbers and their corresponding images. Defendant no. 2 then shared a forged "allotment letter" for the 19 barcodes dated May 7, 2024, printed on the letterhead of the plaintiff and purportedly signed by the authorised signatory of the plaintiff, Mr. Vinay Kumar Gupta, although no such letter had in fact been issued by the plaintiff.

28. Learned counsel also submits that later 19 barcodes issued by the defendants appear to be issued by the corresponding GS1 member organisation in Vietnam (i.e. GS1 Vietnam).

29. As per the learned counsel, the unauthorised actions of the defendants in allotting of 13-digit barcodes starting with '890', for which it does not possess any authorization and/ or license from the plaintiff to provide, allocate, sell or resell the abovesaid barcodes, amounts to infringement of the plaintiff's rights under Section 75 of the Trade Marks Act, 1999.

30. Learned counsel submits that the balance of convenience lies in favour of the plaintiff, moreover, if the defendants are allowed to continue entire system developed for the identification of companies and its products through unique numerals will break down.

31. This Court has heard the learned counsel for the parties and perused the documents on record as well.

32. The defendants are actively engaged in offering and selling the 13- digit barcodes starting with '890' even though they have no authority and/ CS(COMM) 711/2024 Page 9 of 12 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 28/08/2024 at 00:44:14 or permission from the plaintiff, who are the sole entity allowed to deal with the same having the exclusive right to do so. Engaged in offering the same services of offering and selling the 13-digit barcodes starting with '890' as that of the plaintiff, it is highly improbable that the defendants were unaware of the plaintiff and/ or were oblivious of it and its services.

33. Under such circumstances, the only plausible motive of the said defendants perceivable is to fraudulently induce general public to force them to purchase the said barcodes by falsely representing that the same are 'GS1 Barcodes'. As an example, that the plaintiff has wrongly allocated three barcodes by defendant no. 1 to FPLLP as also fraudulently issued the certificate and the allotment letter qua them, and that too on the letter head of the plaintiff which is bearing the digital signature of one Mr. Vinay Kumar Gupta, CGM (F&A), reflects volumes of the defendants.

34. The plaintiff has been granted registration of the abovesaid barcodes with the '890' prefix in its favour bearing registration No.1293152 in Class-35 with effect from 29.06.2004. The grant of the registration of the abovesaid barcodes as trademark confers upon the plaintiff exclusive rights to license or allocate 13-digit barcodes starting with '890' in relation to the "business method of bar coding products and items to indicate origin, source, manufacturer and category of the item bearing the bar code". Therefore, the advertising, using, offering for sale and selling 13-digit barcodes starting with '890' and the usage of letter heads of the plaintiff by anyone like the defendants herein and which is identical to that of the plaintiff and for which it holds exclusive rights, is direct contravention of the plaintiff's right to exclusivity.

35. The defendants cannot be allowed to continue with the illegal and CS(COMM) 711/2024 Page 10 of 12 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 28/08/2024 at 00:44:14 unauthorised act of using, selling, reselling or trade of the 13-digit barcodes starting with '890' and the usage of letter heads of the plaintiff, which are exclusively belonging to the plaintiff to the exclusion of all others. Moreover, as the said 13-digit barcodes starting with '890' is validly registered in the name of the plaintiff and is valid and subsisting in its name till date and also since the letter heads are the property of the plaintiff and further since the said Mr. Vinay Kumar Gupta as such employed with the plaintiff. The use thereof by the defendants, without obtaining any permission and/ or authorisation from the plaintiff is illegal and bad in law, and cannot be permitted. If allowed, the same will lead to confusion and deception in the minds of general public.

36. In view of the aforesaid, the plaintiff has been able to make out a prima facie case for the grant of an ex parte ad interim injunction in its favour and against the defendants with the balance of convenience also in its favour. If not restrained, the defendants are allowed to continue using the impugned 13-digit barcodes starting with '890' and/ or any deceptively similar marks thereto in any manner and for any goods or services leading to confusion as to origin or association or mistaken impression as to certification regarding compliance with GS1 standards (GS1 General Specification), the same may result in the plaintiff suffering irreparable harm, loss and injury.

37. Accordingly, till the next date of hearing, the defendants their proprietors, partners, affiliates, franchisees, officers, servants, agents, distributors, representatives and anyone acting for or on their behalf are restrained from using, selling, offering for sale, issuing or allocating 13- digit barcode numbers starting with '890' or any deceptively similar CS(COMM) 711/2024 Page 11 of 12 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 28/08/2024 at 00:44:14 marks thereto in any manner and for any goods or services leading to confusion as to origin or association or mistaken impression as to certification regarding compliance with GS1 standards (GS1 General Specification), amounting to infringement of plaintiff's registered trademark bearing no. 1293152, or in any other manner whatsoever.

38. Issue notice to the defendants by all permissible modes returnable before the Joint Registrar on 26.11.2024.

39. Reply, if any, be filed within a period of thirty days from the date of service. Rejoinder thereto, if any, be filed within a period of fifteen days thereafter.

40. The provisions of Order XXXIX rule 3 CPC be complied within three days from the receipt of this order.

41. List before the Court on 13.01.2025.

SAURABH BANERJEE, J AUGUST 23, 2024/So CS(COMM) 711/2024 Page 12 of 12 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 28/08/2024 at 00:44:14