Delhi District Court
Ashish Aggarwal vs M/S Racing Promotions Pvt. Ltd on 3 September, 2025
IN THE COURT OF SH. LOKESH KUMAR SHARMA
DISTRICT JUDGE (COMMERCIAL COURTS)-05,
SOUTH DISTRICT, SAKET COURTS, NEW DELHI
In the matter of
CS (COMM) 384/2019
CNR No. DLST01-007906-2019
Mr. ASHISH AGGARWAL
S/o Sh. K.C. Aggarwal
Address At:
2/7, 2nd Floor, Roop Nagar,
New Delhi-110007 ..... Plaintiff
Versus
M/s Racing Promotions Pvt. Ltd.
Address At:
A-401, Prince Villa Apartments,
15, Rajamannar St. T. Nagar,
Chennai, Tamil Nadu- 600017 .... Defendant
Institution of the Suit : 27.11.2019
Arguments concluded on : 18.08.2025
Judgment pronounced on : 03.09.2025
JUDGEMENT
1. This suit u/s 134 & 135 of the Trade Marks Act, 1999, Section 55 of Copyright Act, 1957 for permanent injunction has been filed by the plaintiff for restraining infringement of trade marks and passing off, delivery up and, rendition of accounts etc. against defendant.
2. Brief facts:- It was stated that Plaintiff was engaged in the business of conducting sporting activities and events, CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 1 of 48 training, entertainment activities, advertising, consultancy services and Business Administration with respect to sports and other allied services under his trademarks/labels "X1, X1 WAR OF X-TREME SPEED and X1 and the Plaintiff was stated to be the Proprietor of aforesaid trademarks.
It was stated that on 11.07.2016, Plaintiff had adopted the trademarks/labels "X1 and X1 WAR OF X-TREME SPEED" and since then, he had been continuously and uninterruptedly using the same in relation to his said services in the course of Trade.
Being a big sports enthusiast, Plaintiff had regularly participated in sporting events i.e. water sports and Jet skiing. With an eye to promoting water sports in India, specially Jet Skiing, Scuba Diving, Coasteering, Snorkeling and Water Skiing, in 2015, Plaintiff had formed the Jet Sports Academy of India (JSAI), under the Guidance of International body for Water Adventure Sports, being, "International Jet Sports & Boating Association (IJSBA) - The World Sanction Body for Personal Watercraft" & "JETRAID organization". Plaintiff was stated to be the Managing Trustee of JSAI. It was stated that in 2015, JSAI associated with JETRAID organization (International body for organizing Formula Jetski Race across World) for organizing Formula JetSki Race amongst best riders of the world from more than 25 countries in Greece (June 2015) and Peru (November 2015). In 2016, JSAI had organized JetSki Race at Valos City, Greece from 13.06.2016 till 19.06.2016.
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 2 of 48It was stated that after adoption of the said trademarks on 11.07.2016, plaintiff had visualized the launching of Jetski World Cup 2017 in India and had permitted his trust JSAI to use his aforesaid trademarks for the said event. Therefore with his permission and consent, JSAI embarked upon organizing, India's first ever Formula 1 JetSki Race competition by the name of X1 Jetski World Cup, and formula Jetski in February 2017 at Morjim Beach, Goa. Racers from 20 countries had participated in it and the knockout selection of the Indian Jetski Racers participants for X1 JetSki World Cup was stated to be scheduled in two phrases (quarter final and semi final).
It was stated that Quarter Finals of X1 JetSki World Cup 2017 was scheduled for 15-16.10.2016, and the said event was highly publicized and was also attended by many luminaries throughout India, however, owing to demonetization and disruptions in the Indian Market, World Cup 2017 could not be organized by the Plaintiff.
It was stated that in order to acquire statutory rights, Plaintiff had filed application for registration of his trademarks "X1 and X1 WAR OF X-TREME SPEED" under the Trade Mark Act, 1999 for the services mentioned therein and the same were duly got registered as per the following particulars:
S. Trade Mark Application Class Date of Status Date of No. No. application Registration and User and validity claimed 1 X1 WAR OF X- 3305866 35 11.07.2016 Regd. 28.04.2017 TREME Proposed to and SPEED be used 11.07.2026 CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 3 of 48 2 X1 WAR OF X- 3305867 41 11.07.2016 Regd. 28.04.2017 TREME Proposed to and SPEED be used 11.07.2026 It was stated further that plaintiff had continuously promoted his said services and business under his trademarks through extensive advertisements, publicities, promotions and marketing & marketing research and plaintiff's said trademarks/labels had become distinctive and acquired secondary significance with the plaintiff and plaintiff's said services and business.
It was averred that Plaintiff had been continuously promoting his said services and business under his aforesaid trademarks and had built up a great reputation and enviable goodwill thereunder and acquired proprietary rights therein.
It was stated that plaintiff had built up a globally valuable trade under his trademark and had conducted handsome business there and had acquired immense goodwill and reputation under the aforesaid trademark.
It was stated that the art works involved in plaintiff's trademarks were original artistic works within the meaning of Indian Copyrights Act, 1957 and plaintiff had been using the said copyrights in the course of trade in relation to his services and business, within the meaning of Section 14 of the Copyrights Act, 1957.
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 4 of 48Plaintiff's trademarks were stated to be well known trademarks within the meaning of Section 2(1)(zg) of the Trademark Act.
3. Defendant was stated to be a company incorporated under the Companies Act and was engaged in the business of conducting sporting activities and events, training, entertainment activities, advertising, consultancy services and business Administration.
It was stated that defendant had also adopted the impugned trademark "X1" in relation to its impugned services and business, which was identical with and deceptively similar to the Plaintiff's said trademark and trade name in each and every respect including phonetically, visually, structurally, in its basic idea and in its essential features.
It was stated that Defendant was not the proprietor of the impugned trade mark and had adopted and started using the same in relation to its impugned services and business without the plaintiff's permission, thereby using and adopting the impugned trade mark of the Plaintiff, the defendant was violating the Plaintiff's trade rights, passing off and enabling others to pass off their impugned goods and business as that of the Plaintiff as well as diluting the Plaintiff's proprietary rights therein.
It was stated that on 25.11.2019, Plaintiff had come to know about the Defendant's impugned trademark "X1 and X1 RECING LEAGUE", through the e-ticketing website CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 5 of 48 https://in.bookmyshow.com as well as defendant was going to conduct an event namely X1 RACING LEAGUE and Plaintiff had also come across the website/domain name http://x1racing.com of the defendant. Thereafter, Plaintiff had conducted a search on the website of the trademarks registry and from there, it was revealed that defendant had applied for trademark registration for the impugned mark "X1" in class 41 and 35 vide application no. 3948089 dated 18.09.2018, wherein it had falsely claimed the date of user w.e.f. 09.10.2017, as it was evident from the master date of the defendant's company available on the website of Ministry of Corporate Affairs, the date of its incorporation was mentioned as 11.05.2018.
It was stated that on further inquiries from the website of Trademarks Registry, it was revealed that trademark application no. 3948089 of the defendant was objected to on the ground that the impugned trademark "X1" sought to be registered by the defendant was similar to that of the Plaintiff's registered trademark "X1", however, defendant had filed a reply to the aforementioned examination report, but the online status of the defendant's application still appeared as "Objected".
It was stated that defendant was still trying to launch impugned events under its impugned Marks and had started soliciting, networking impugned services under the impugned Trade Mark in markets of South Delhi.
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 6 of 48Defendant had been passing off its services as those of plaintiff's and was getting the benefits from the goodwill and reputation of plaintiff.
It was averred further that defendant's marketing and advertising of its services and business was deceiving and misleading the public at large as buyers believed that those services were of the Plaintiff due to which Plaintiff had suffered significant losses and injury.
It was stated that the loss of money or injury sustained or likely to be sustained by the Plaintiff due to erroneous actions and conduct of defendant could not have been calculated in terms of money.
4. The cause of action was stated to have arisen firstly on 25.11.2019, when Plaintiff had come to know through the e- ticketing website https://in.bookmyshow.com and defendant's website/domain name http://x1racing.com that defendant was going to conduct X1 RACING LEAGUE and cause of action had further arisen when the Plaintiff had come to know about the defendant's impugned trademark application for registration of impugned mark 'X1'. Cause of action had again arisen when Plaintiff came to know that defendant was trying to launch impugned events under its impugned Marks and was soliciting/networking about the impugned services under the impugned trademark in the markets of South Delhi. The cause of action was stated to be still continuing and subsisting in favor of the Plaintiff and against the Defendants.
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 7 of 485. Since the defendant was soliciting, networking and selling and had intended to supply its impugned services under the impugned trademarks to the prospective customers and promoters in the markets of South Delhi viz. Saket, Malviya Nagar, Mehrauli, Hauz Khas. etc. which were situated within the jurisdiction of this Court, hence this court was stated to have territorial jurisdiction to try and decide the present lis by virtue of Section 134(2) of the Trade Marks act, 1999 and also u/s 62(2) of the Copyright Act of 1957.
6. In the light of the aforesaid facts and circumstances, the plaintiff had prayed for passing of a decree in favour of Plaintiff and against the defendant detailed as hereunder:-
(a) A decree of permanent injunction restraining the defendant by itself as also through its individual proprietors/partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all others acting for and on their behalf from using, selling, soliciting, promoting, displaying, advertising or by any other mode or manner dealing in or using the impugned trademark/ label X1 and X1 RACING LEAGUE and domain name https://x1racing.com and/or any other word/mark/label/domain name which might be identical with and/or deceptively similar to the plaintiff's said trademark/label "X1 and X1 WAR of X-TREME SPEED", in relation to their impugned services and business of conducting sporting activities, sporting events, training, CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 8 of 48 entertainment activities, advertising, consultancy services and Business and Administration with respect to sporting activities and events and allied/related services and from doing any other acts or deeds amounting to or likely to:-
i. Infringement of plaintiff's aforesaid registered trademark.
ii. Passing off and violation of the plaintiff's common law right in the plaintiff's said trade mark/label.
iii. Infringement of Plaintiff's copyrights in its trademark/label.
iv. Dilution of Plaintiff's said trademark/label.
(b) Restraining the defendant from disposing off or dealing with its assets including its premises at the addresses mentioned in the Memo of Parties and stocks-in- trade or any other assets as may be brought to the notice of the Court during the course of the proceedings and on the defendant's disclosure thereof and which the defendant is called upon to disclose and/or on its ascertainment by the plaintiff as the plaintiff is not aware of the same as per Section 135(2)(c) of the Trade Marks Act, 1999 as it could have adversely effected the plaintiff's ability to recover the costs and pecuniary reliefs thereon.CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 9 of 48
(c) For an order for delivery up of all the impugned finished and unfinished materials bearing the impugned and violative trade mark/label/domain name and/or any other word/mark/label/domain name which might be identical with or deceptively similar to the plaintiff's said trade mark/label including its blocks, labels, display boards, sign boards, trade literatures etc. to the plaintiff for the purposes of destruction and erasure.
(d) For an order for rendition of accounts of profits earned by the defendant by its impugned illegal trade activities and a decree for the amount so found in favour of the plaintiff on such rendition of accounts.
(e) for an order for cost of proceedings.
Though initially the suit was filed in the court of Ld. ADJ, however, since the matter pertained to Commercial Courts, hence, this case was transferred to this court on 17.12.2019, vide order no. Judl.II/F.75/South/Saket/2019/28815-28809 dated 06.12.2019 of the Ld. Principal District & Sessions Judge (South), Saket, New Delhi.
7. Upon service of notice, the defendant had also appeared to contest the case of plaintiff on its merits and filed its written statement on record, wherein it had taken a preliminary objection that plaintiff was guilty of concealment of material CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 10 of 48 facts as well as for not approaching the court with clean hands. No cause of action was stated to have ever arisen in favour of the plaintiff and against the defendant.
On merits, it was stated that the Defendant company was incorporated on 11.05.2018 and registered at Chennai under the provisions of Companies Act, 2013, which was stated to be a brainchild of its founders Mr. Armaan Ebrahim and Mr. Aditya K. Patel, who were India's top International car racers. It was in September 2017, that the promoters of Defendant came up with the idea to launch India's first ever motorsport racing league, which idea was further conceptualized and it was decided that the League would contain 'X1' and 'Xtreme 1' as a prefix to the branding of racing league, which belonged to "Bell X1", which was a supersonic rocket having touched a speed of thousand kilometers per hour for the first time, when it was launched in the year 1946. Since term 'X1' was synonymous throughout the world with 'high speed' and further since the letter 'X' denoted "extreme" and "X-factor" which stood for a noteworthy special talent or quality, hence, it was adopted by the defendant and after conceptualizing the idea with respect to use of "X1", its domain name www.x1rl.com was registered on 09.10.2017.
Defendant was stated to have used the word 'X1' in various manners. The domain name of defendant was made functional w.e.f. 27.07.2018, through which it was promoting the events under the marks, which were already being used by it using "X1" .
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 11 of 48Defendant was planing a league in the last quarter of 2018 and in the beginning of 2019 and for that purpose they had also carried out promotional activities and on 09.09.2018, they had applied for registration of its trademark 'X1' in classes 16, 18, 25, 28, 35, 41 and 42. Defendant had also executed an agreement dated 07.11.2018 with Federation of Motor Sports Clubs of India, which was officially recognized as the governing body for the motorsports in India and in the said agreement, it was proposed that the league would be called as "Xtreme1 Racing League" or "X1 Racing League".
On 03.05.2019, defendant was stated to have organized one "X1 Racing Speed Summit" at Buddh International Circuit, Noida and thereafter it had proposed several leagues to be organized by it in Mumbai, Chennai, Pune, Hyderabad, Ahmedabad, Delhi, etc. It was also stated that when the distinctive label was registered as a whole, then such registration could not have possibly given an exclusive statutory right to the Proprietor of the trademark to the use of any particular word or name contained therein apart from the mark as a whole.
Further a reference was given to Section 17 of the Trademarks Act, 1999, as per which, proprietor of a composite mark could not have sought exclusivity with respect to individual components of his trademark.
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 12 of 48It was also pleaded that the marks used by the defendant were not similar to the marks of the Plaintiff and Plaintiff's trademark also lacked goodwill and reputation in the market and thus he had miserably failed to set out a case for passing off against the defendant. The Plaintiff himself was stated to have applied the registration of trademark in its favour showing it to be in the category of "proposed to be used".
Except for the paras which were either specifically admitted or essentially or purely constituted a matter of record, rest others were denied by it as wrong and incorrect.
8. To this written statement of the defendant, plaintiff had also filed his replication, wherein all the preliminary objections taken by the defendant were denied by him and the contents of plaint were reiterated on merits as correct.
9. On the pleadings of the parties, this court vide order dated 19.02.2024, had framed the following issues for determination:
(i) Whether Plaintiff is entitled to a decree for permanent injunction of the nature as prayed? OPP.
(ii) Whether Plaintiff is entitled to a decree for rendition accounts of the nature as prayed,if so, against whom? OPP.
(iii) Whether this court has no territorial jurisdiction to try and entertain the present suit? OPD.CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 13 of 48
(iv) Relief.
10. In order to prove his case by preponderance of probabilities, plaintiff Sh. Ashish Aggarwal, himself had appeared in the witness box and had filed in evidence, his examination-in-chief by way of affidavit Ex. PW1/A, wherein besides reiterating the contents of his plaint on solemn affirmation, he had also placed on record the following documents:-
i. Ex. PW1/1- Representation of the Plaintiff's trademark/label.
ii. Ex. PW1/2- Copy of the promotional materials of the Plaintiff's events under the trademark/label 'X1'.
iii. Ex. PW1/3- Copy of the Plaintiff's website from the archive of www.jetsportsindia.com.
iv. Ex. PW1/4- Copy of the coverage of
Plaintiff's events in various media.
v. Ex. PW1/5- Copies of the various
sponsorship materials, letters and government approvals for the Plaintiff's events including the letter of the then Hon'ble Chief Minister of the Uttarakhand Sh. Harish Rawat.
vi. Ex. PW1/6- Copies of the various communications with Government by the Plaintiff with respect to the X1 events.
vii. Ex. PW1/7- Copies of the event promotions and clippings.CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 14 of 48
viii. Ex. PW1/8- Copies of the invoices and insurance of Jet-Ski dated 06.10.2016 for X1 events.
ix. Ex. PW1/9- Copies of the X1 final events communication.
x. Ex. PW1/10- Copy of the Registration Certificate dated 11.07.2016 , Online Status of Reports and Journal Copies of the Plaintiff's Trademarks/labels.
xi. Ex. PW1/11- Copy of the Legal User Certificates dated 21.05.2024 pertaining to Trade Mark Application Nos. 3305866 and 3305877 (however, inadvertently in the affidavit Ex. PW1/A it was written as "330567").
xii. Ex. PW1/12- Copy of the True
Representation of the Defendant's
Trademark/label.
xiii. Ex. PW1/13- Copy of the status of the Defendant's trade mark application no 3948089, examination report and the reply to the examination report.
xiv. Ex. PW1/14- Copy of the Ministry of Corporate Affairs details of the Defendant company showing the date of its incorporation as
11.05.2018.
xv. Ex. PW1/15- Copy of the Defendant's
website.
xvi. Ex. PW1/16- Copy of the launch of the Defendant's event through bookmyshow website.
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 15 of 48xvii. Ex. PW1/17- Copies of the images of the races conducted by the Defendant.
xviii. Ex. PW1/18- Copies of the screenshots of the use of the Impugned Mark on social media by the Defendant.
xix. Ex. PW1/19- Copies of the screenshots of the E-Sports event promoted by the Defendant under the Impugned Mark on Sony Liv.
xx. Ex. PW1/20- Copy of the provisional statement of accounts dated 24.02.2020 filed by the Defendant before the Hon'ble High Court showing a total loss of Rs. 62,05,568/-.
(Exhibition of documents Ex. PW1/5, Ex. PW1/6, Ex. PW1/8 was objected to by the Ld. Counsel for defendant on the ground that same were photocopies. However, since the documents were handed over by the concerned authority to the Plaintiff, hence, Plaintiff had the right to exhibit the said documents, even if they were photocopies, thus the objection was overruled).
Exhibition of documents Ex. PW1/10 and Ex. PW1/13 had also been objected to by Ld. Counsel for Defendant citing that the said documents per se mentioned that they were not meant for any legal use.
However, mere tendering of a document in evidence by a party whose document it was, could not have been termed as legal use as it was a corroborated piece of evidence and not CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 16 of 48 substantial evidence per se as it was indicative of registration of trademark in favour of Plaintiff and not anything beyond it, hence, this objection was also overruled.
During his cross-examination conducted by the Ld. Counsel for Defendant, PW1 had stated that he had not conducted any event or related allied activity since 2017. He had denied the suggestion that he was not using the trademark since 11.07.2016. Sponsorship and funding of Rs. 35 lakhs, for Plaintiff's event "GTM X1 Jetski Worldcup" was stated to have been provided by Uttrakhand tourism and SIIDCUL, Uttrakhand Jal Vidyut Nigam and by one GTM Builders. He had admitted that thereafter, he had not received any sponsorship. He had denied the suggestion that he did not have his own operational website to attract customers. He had admitted that since 2016, he had not done any business as well as he had not secured any business partner or sponsor. However, he had no knowledge as to whether his trademark was not distinct from any other X1 mark available in the market.
He had denied the suggestion that no books of accounts were maintained by him. He had also denied the suggestion that the business run by him was illegal being totally dependent on cash flow. He had denied the suggestion that the events organized by him were not in demand in the country. He had also denied the suggestion that since 2016, he had not conducted any event promotional activity, advertising activities, marketing campaigns and social media engagements in respect of his business. He had further denied the suggestion that he was not CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 17 of 48 maintaining any expenditure record for business promotional activities etc. of his business. He had denied the suggestion that his trademark was not a "well known" trademark.
He had admitted that he had no court order or order from any competent authority declaring his mark to be a "well known" mark. No regulatory authority was stated to be in operation in the country for the purpose of accreditation of the kind of activities undertaken by him under the said trademark.
He had denied the suggestion that the demand for the services rendered by him was not increasing in the country as claimed by him in para 11 of Ex. PW1/A. He had denied the suggestion that he had not obtained any permission from JSAI before organizing the event in 2016, however, he had volunteered that he was the President of JSAI.
Other formal suggestions were also denied by him as wrong and incorrect.
11. Thereafter Plaintiff's evidence was closed.
12. In rebuttal, Defendant had examined its AR as well as Consultant Sh. Praveen Khanna, S/o Sh. M. P Venkataswamy, aged about 33 yrs, R/o 3/1, Velayudham, 4th lane, Pudupet, Anna Road, Chennai, Tamil Nadu-600002, having its registered office at 8/20, Rutland Gate, 4th Street, Nungambakkam, Chennai, Tamil Nadu, who had filed in evidence, his examination-in-chief by way of affidavit Ex. DW1/A reiterating the contents of written CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 18 of 48 statement on solemn affirmation. He had also placed on record, the following documents:
i. Ex.DW1/1- Board Resolution dated 15.05.2025, passed in favour of the DW1 by the defendant company.
ii. Ex.DW1/2- Print out of the details of the registration of domain name www.x1rl.com.
iii. Ex.DW1/3 - Copy of emails and presentation in support of the fact that the Defendant reached out to business partner for seeking investments for the Events in the month of November 2017.
iv. Ex.DW1/4- Copies of promotional activity undertaken on social media platforms such as Facebook and Instagram, starting as early as 07.08.2018.
v. Mark A (Colly)- Copies of promotional material of defendant.
vi. Mark B (Colly)- Copy of the pictures showcasing the use of the Impugned Mark as the inaugural event in Pune on 18.08.2018.
vii. Mark C - Copy of Trademark Application. viii. Mark D- Copy of the agreement between the Defendant and Federation of Motor Sports Clubs in India.
ix. Mark E (Colly)- Copies of certain sponsorship agreements/term sheets.
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 19 of 48During his cross-examination conducted by the Ld. Counsel for Plaintiff, DW1 along with his team was stated to have looked after the work of founders office, particularly logistics. DW1 was stated to be working with defendant since 2017 and initially 8 persons were stated to be working with the defendant and on the date of his deposition, there were about 20 people. Promoters of the defendant company were stated to be all professional motor car racers. Since, he was only looking after the logistics, hence, he did not have any knowledge in respect of the business model adopted by the defendant since 2017 till 2018, when it got itself converted into a Private Limited Company. The impugned mark was stated to have been used in 2017, when investments were invited by the defendant, however, a suggestion contrary to it was denied by him that defendant was not using the impugned mark in the year 2017 and that is why no document to that effect had been placed on record by it.
He could not remember if he was consulted while adopting the trademark but he was the part of the team, who was instrumental in the process of adoption of this trademark. First event was stated to have been organized by Defendant at Pune in 2018, however, he did not have any knowledge about its model. X1 speed racing summit organized by defendant in 2019, in Buddha International Circuit, Gautam Budh Nagar, UP, was stated to be a motor sport racing event, however, he could not tell its actual turn out. Further, he could not remember if it was telecasted through any medium or not and he was not sure about the number of individual participants/teams who had attended the said event. He could not tell the exact number of participants in CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 20 of 48 the X1 racing e-league/sports organized by defendant in October- November 2019. Even, he had no knowledge about its format as well as the number of spectators, who had attended the same. Though, he was not very well versed with the manner in which defendant was offering its services to its customers but mainly it was stated to be in the field of motor sports.
DW1 had stated that he was not aware of the status of the application filed by Defendant for registration of impugned trademark in 2018. Sh. Gautam Singhania, was stated to have been associated with the Defendant as an investor. He was not sure as to whether defendant had disclosed about pendency of its trademark registration application while associating with Federation of Motor Sports Clubs of India or not. Ex. DW1/P1 (earlier Mark 'E') was stated to be the copy of agreement entered between defendant and Sony Pictures Network India Pvt. Ltd. He could not have told about the revenue sharing with Sony in respect of Season 1 event. Apart from Vyomo Technology, there were other sponsors of the event as well but he did not remember their names at the time of his deposition before the court.
He had no knowledge about the number of franchisees in respect of the said event. Though he could not tell the exact number of participants/teams who had participated in the events organized at Buddha International Circuit and in Madras Racing Circuit in November-December 2019, but all that he could have said was that both the events had got a huge success.
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 21 of 48DW1 had stated that in a day's time, all the articles were removed from the place of event after it was over. However, he had again stated that it depended on many factors such as weather, permissions etc. He could not tell the exact number of investors either in 2019 or at the time of his deposition. He did not have any knowledge about the number of trademarks or brands owned by defendant. Since lot of motor sports companies were using "X1", hence, he had stated so in para 23 of his affidavit Ex. DW1/A that nobody could have claimed any monopoly over the same.
He had denied the suggestion that before organizing the event in November-December 2019, defendant had the knowledge that Plaintiff was the registered owner of trademark 'X1'. However, he had again stated that they had come to know about that fact only an hour before the start of the event.
Other formal suggestions were also denied by him as wrong and incorrect.
13. Thereafter DE was also closed.
14. I have heard the arguments advanced at length at bar by Sh. Prashant Alai, Ld. Counsel for Plaintiff through VC and Sh. Jaspal Singh and Sh. Dhruv Jaiswal, Ld. Counsels for Defendant, and have also perused the material available on record.
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 22 of 48Besides addressing the court orally, Ld. Counsel for Plaintiff had also placed on record his written submissions, wherein it was stated that the plaintiff was entitled to an injunctory relief against the defendant being the registered owner of the trademark in question under class 35 and 41 (inadvertently written as 45 in the written submissions) vide documents Ex. PW1/10 and Ex. PW1/11 respectively.
It was also stated that Plaintiff was the organizer of JetSki World Cup, in India in the year 2016 vide Ex. PW1/2 and Ex. PW1/7 and Plaintiff in his capacity of being the Managing Trustee of JetSki Academy of India had taken all the necessary steps to successfully organize the event, which was widely promoted by him through print and social media in both English as well as regional languages vide Ex. PW1/4 and had also procured sponsorship from different entities vide Ex. PW1/5. The said event was also stated to have been graced by various luminaries such as the then Chief Minister of Uttarakhand Sh. Harish Rawat, Sh. Dinesh Dhanai, the then Minister of Tourism of Uttarakhand, and also by Sh. Gautam Singhania, CMD of the Raymond Group and reliance in this regard was placed on Ex. PW1/7.
The Plaintiff was stated to have acquired the knowledge about the defendant's using his registered trademark on 25.11.2019 through website "bookmyshow". Upon further enquiries, Plaintiff had also acquired knowledge about the defendant having applied for the registration of the said CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 23 of 48 trademarks under classes 35 and 41 respectively and thereafter the Plaintiff had approached this court by way of present suit.
The Ld. Predecessor of this court vide his order 28.11.2019, was also stated to have restrained the defendant from using the impugned trademark 'X1' either on its own or in conjunction with other words, phrases, or graphics etc. till the final disposal of the suit.
Even the appeal preferred by the Defendant against the impugned order before Hon'ble High Court of Delhi being FAO 474/2019 (later on re-numbered as FAO-IPD No. 1/2024) was stated to have been withdrawn by it vide order dated 16.07.2024, in which defendant had also claimed to have completely stopped using the infringing trademark since two years before the date of said order.
Defendant was also stated to have been directed by Hon'ble High Court of Delhi to maintain proper accounts of all the revenue generations and profits earned by it through those events, which were to be duly certified by a Chartered Accountant and defendant should have prominently displayed and publicized disclaimers that the event was not organized by the Plaintiff and the mark used by the Defendant in its events had no connection whatsoever with the registered trademark of the Plaintiff and thus defendant was awarded an extended time of 24 hours for removal of all material meant for public display from the venue of events after the event had concluded.
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 24 of 48Similarly, reliance was also placed on Ex. PW1/17 to Ex. PW1/20 by the Plaintiff in order to support its claim of entitlement of injunction as the impugned trademarks were stated to be visibly and phonetically similar, which could have easily lead a person to get deceived or confused between the two marks and would have tempted him to consider and take up the mark of the defendant as that of the Plaintiff.
Reliance in this regard was also placed by the Plaintiff on the citation of our own Hon'ble High Court in case titled as "FDC Limited Vs. Docsuggest Healthcare Services Pvt. Ltd. & Anr." (2017 SCC OnLine Del 6381), decided on 03.01.2017, wherein it was held as under:
"...51. There can be no doubt, and it needs no discussion to say that the mark "Zifi" of the plaintiff and "Ziffi" of the defendant are phonetically, structurally and visually similar. In any event, this aspect is also discussed a little later. The prime issue in this case, therefore, is whether the goods of the plaintiff and the services of the defendants are allied/ cognate or not. Allied/cognate goods or services, as understood from the material referred to below, are those goods/services which are not identical, but can be said to be related or similar in nature (See McCarthy on Trademarks and Unfair Competition, Fourth Edition, Vol 5). The Shorter Oxford English Dictionary on Historical Principles Fifth Edition 2002, Vol. 1. defines the term "Allied" as "connected by nature or qualities; having affinity" and the term "Cognate" as "akin in origin, nature or quality". Reference may also be made to New Webster's Dictionary and Thesaurus of the English Language, 1992 which defines "Allied" as "relating in subject or kind"CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 25 of 48
and "Cognate" as "1. adj. having a common ancestor or origin (of languages or words) having a common source or root (of subjects etc.) related, naturally grouped together.". Cognate goods/ services can be described, inter alia, as goods or services which have a trade connection - as in glucose and biscuits (See Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC
142) or which are intended for the same class of customers - as in television picture tubes (parts thereof, video tapes and cassettes and television tuners etc.) and televisions, tuners and T.V. Kits (See Prakash Industries Ltd. v. Rajan Enterprises (1994) 14 PTC 31), or are complementary to each other - as in toothbrushes and toothpaste (See HM Sariya v. Ajanta India Ltd. (2006) 33 PTC 4).
52. In the present case, the plaintiff is using the registered mark 'Zifi' for goods falling under Class 05 of the Schedule of the Act i.e. pertaining to pharmaceutical preparations. On the other hand, the defendants are using the mark 'Ziffi' for booking of appointments for doctors, diagnostics, spas and salons, and have applied for registration under Class 35 and 42 of the Schedule of the Act. It is the submission of the defendant that goods and services falling under different classes cannot be allied and cognate. I do not find merit in this submission. The classification of goods and services under Section 7 of the Act is not the criterion for deciding the question of similarity in goods/services. Reliance may be placed on K.C. Kailasam/Ramu Vedaraman's Law on Trade Marks & Geographical Indications 1st Edition, 2003 wherein, the learned author on Page 180 has stated as under -
"Classification of goods given in the rules not the criterion Whether or not two sets of goods or services are of the same description is not be decided on the basis of the classification of goods and services given in the 4th schedule to the Trade CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 26 of 48 Marks Rules, 2002. The description of goods may be narrower or wider than any of the classes according to the circumstances of the case. As was observed by LINDLEY J., in the Australian Wine Importers Trade Mark case [(1889) 6 RPC 311]. "If you come to look at that classification, you will find goods of the same description, in one sense, in different classes; and you will find goods of different description in the same class". "
Similarity between goods and services
53. Now, to determine whether the defendants' services are allied and cognate to plaintiff's goods, it is essential to first discuss the law on similarity in goods/services in trademarks and its development so far. While the Act is silent on the factors to be considered for similarity in goods/services, the Courts in India - relying upon international cases and literature, have consolidated the guiding principles and factors found relevant in ascertaining the similarity between goods/services. They are as follows:
1. In Assam Roofing Ltd. & Ors. Vs. JSB Cement LLP and Ors. 2015 SCC Online Cal 6581, the learned Single Judge in Para 80 observes- "The test of similarity of goods is looked at from a business and commercial point of view. The nature and composition of the goods, the respective uses of the articles and the trade channels through which they are brought and sold all go into consideration in this context."
(emphasis supplied)
2. In Kerly's Law of Trade Marks and Trade Names, 15th Edition 2011, the learned Author in Para 9-073 has stated as under:-
"As para.23 of the decision in Canon v. MQM (1999) R.P.C. 117 makes clear, all factors relating to the goods or services themselves must be taken into account. These include, inter alia, their nature, their intended purpose, their CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 27 of 48 method of use and whether they are in competition with each other or are complementary. It is clear that goods in different classes may nevertheless be considered similar, and likewise that goods or services within the same class may be found to not be similar."
(emphasis supplied)
3. In Para 9-075, the Learned Author has mentioned some illustrations on similar goods or services including under Para 9-078 ""Services offered by beauty salons; solarium services"
similar to "business assistance with beauty preparations, sales" and "beauty preparations, perfumery, cosmetics dietetic substances" ". The said illustration sources from the case of Beauty Shop Application v. Opposition of Evora BV [1999] E.T.M.R. 20, wherein the Office for Harmonization in the Internal Market (Trade Marks and Designs) also known as the Opposition Division held the defendant's services to be similar to the plaintiff's services and goods by observing that "the goods and services of the conflicting marks could be offered together and be intended for the same public."
4. In British Sugar Plc. v. James Robertson & Sons Ltd. [1996] R.P.C. 281 at 294-297, relied upon in Balkrishna Hatcheries vs. Nandos International Ltd. and Anr. 2007 SCC OnLine Bom 449 and Advance Magazine Publishers, Inc. and Ors. v. Just Lifestyle Pvt. Ltd. 2016 SCC Online Bom 8417, the court laid down the objective test for similarity of description of goods/services as follows:
(a) "The uses of the respective goods or services;
(b) The users of the respective goods or services;
(c) The physical nature of the goods or acts of service;
(d) The trade channels through which the goods or services reach the market;CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 28 of 48
(e) In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves; and
(f) The extent to which the respective goods and services are in competition with each other: that inquiry may take into account how those in trade classify goods, for instance whether market research companies, who of course act for industry, put goods or services in the same or different sectors."
5. Kerly 15th ed. while relying upon Canon (supra), further observes in Para 9-065 that the element of distinctive character of a trademark and its reputation is also viewed when determining similarity between the goods and services and whether such similarity is sufficient to give rise to the likelihood of confusion.
54. On the application of aforesaid principles, I am of the view that the plaintiff's goods are similar to and associated with the defendants' services. The reasons for the same are:
(i) Respective uses of goods/services: Plaintiff's products are a wide range of medicines used to treat several diseases including typhoid, bronchitis, fever & infection, etc. Defendants' services, inter alia, includes the fixing of appointment of doctors/diagnostics for medical check-ups to be treated for several diseases, including the ones treated by plaintiff's medicinal range, with the mark in question;
(ii) Intended Purpose: Plaintiff's products intend to achieve the cure/ prevention of several diseases. Defendants' services are meant for booking of appointment of, inter alia, doctors/diagnostic for curing and possibly further prevention of several diseases, including the ones CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 29 of 48 treated by the plaintiff's medicines under the mark in question;
(iii) Respective Users of goods/services: Users of plaintiff's products are patients. Users of defendants' services are also, inter alia, patients.
They are health care seekers. The target customer base and clientele of the two marks is likely to have an overlap, especially amongst doctors, and consumers/patients availing services of doctors, diagnostic clinics and healthcare services. A consumer of the plaintiffs products (though they are prescription drugs) may visit the defendants' website and is likely to get confused and mislead into thinking that the services offered by the defendants are coming from the same source as the goods/medicines of the plaintiff.;
(iv) Physical Nature of goods/services: Plaintiff's products are medicines which are prescribed by doctors. Defendants' services are online booking services for obtaining appointments, inter alia, with doctors/diagnostic centres, which requires the user of the services to visit the clinic/hospital to get him/her treated and get prescribed medicines by the doctor, if required;
(v) Sector: Both the goods viz. medicines with the mark in question, and services of the defendants under the impugned mark pertain to the healthcare and medicinal sector;
(vi) Trade Channels: The plaintiff's products are medicines which are available at dispensaries; at the chemists, or; at the doctor's clinic. Defendants' services are to provide online appointment of doctors, who may prescribe the user of such service with any of the plaintiff's product. Moreover, since both fall under the same sector of healthcare, it is difficult to negate that there cannot be any overlap in the two. It is also a fact - of which the Court can take notice that organizations who have established CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 30 of 48 themselves in a particular field have the tendency to diversify into related fields. Thus, an unwary customer of the plaintiff is likely to draw an association with the service offered by the defendant - also in the healthcare sector, which included fixing of Doctors appointments;
(vii) Reputation: The sales figures; promotional expenses; the advancement of the Zifi products for adult and pediatric range of medicines; trademark registrations; the spread of the Zifi products and Zifi family of trademarks in India, and to countries outside India, as well as the international and national accreditations and awards received by the plaintiff, prima facie, establish that the plaintiff has built a strong reputation with its distinctive mark "Zifi" within the medicinal and pharmaceutical sector in the past 17 years in India. The mark, by virtue of its prolonged use and arbitrary adoption, has maintained an inherently distinctive character, such that a user is likely to get confused if he were to see the identical/ similar mark being used for related services in the healthcare space, like that of the defendants.
It is, thus, apparent that there is similarity and association between the plaintiff's products and the defendants' services.
It was also claimed that defendant was completely aware regarding the ownership and use of the subject mark by the Plaintiff and this fact was also deposed by DW1 during his cross- examination that the defendant had come to know about the registration of trademark in favour of the Plaintiff, few hours before the start of the event organized by it.
So far as the defence raised by the defendant regarding non-continued user of the trademark by the Plaintiff is CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 31 of 48 concerned, reliance in this regard was placed by the Plaintiff on the citation of Hon'ble High Court of Delhi in case titled as "Modi-Mundipharma Pvt. Ltd. Vs. Speciality Meditech Pvt. Ltd. & Anr." (2025 SCC OnLine Del 4627), decided on 01.07.2025 wherein it was held as infra:
25.9 Aspect of non-use of CONTIN as a standalone mark by the appellant 25.9.1 The first ground on which the learned Single Judge has rejected the appellant's prayer for an injunction against any third party using CONTIN as a part of any trade mark for pharmaceutical products, is that there has been no use, by the appellant, of the mark CONTIN per se, despite the appellant being the registered proprietor of the said mark, at any point of time.
Use of the registered trademark, according to the learned Single Judge, is necessary for an action against infringement of the said mark to be sustainable in law. For this purpose, the learned Single Judge relies on Section 47(1)(b)48 read with Section 2(2)(c)49 of the Trade Marks Act. The learned Single Judge also adverts to Section 28(1) of the Trade Marks Act, in this context.
25.9.2 To our mind, the reliance, by the learned Single Judge, on Section 47(1)(b) of the Trade Marks Act is misguided.
25.9.3 Section 47 deals with the right of one person to apply to the Registrar of Trade Marks to have the trade mark of another person taken off the register. Continuous non-use of a registered mark, upto a period of three months prior to the application, is the ground on which Section 47 (1)
(b) permits the removal of the registered trade mark, from the Trade Marks register, to be sought by the applicant.
25.9.4 Section 47 is not an exception either to Section 29 of the Trade Marks Act, which defines infringement, or to Section 28(1) read with Section 135 which entitles the proprietor of a CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 32 of 48 registered trade mark to an injunction against an infringer of such a registered trade mark. It is, no doubt, open to the infringer, as it is to everyone else, to apply to the Registrar of Trade Marks for taking off the registered trade mark from the Trademark Register and, for that reason, to cite five years' non-use of the registered trade mark as a ground for seeking cancellation. So long as this is not done, and the registered trade mark remains on the register, however, infringement of the registered trade mark is impermissible and, if infringement takes place, the right of the proprietor of the registered trade mark to relief against infringement is statutorily guaranteed. 25.9.5 The Court cannot refuse to grant relief where it finds infringement on the ground that the defendant could possibly, if it so chose, institute proceedings for cancellation of the asserted mark of the plaintiff under Section 47(1). Nor can the Court presume the outcome of such proceedings, even if they were instituted. So long as they are not instituted, the registration of the asserted mark of the plaintiff has to be accorded due respect. 25.9.6 The Trade Marks Act, we may note, significantly differs from the Designs Act, 2000 and the Patents Act, 1970, in this respect. Section 22(3)50 of the Designs Act, and Section 107(1) 51 of the Patents Act, envisage any ground on which the asserted design, or patent, of the plaintiff, is vulnerable to invalidation, or revocation, as being available as a defence against a claim of infringement. There is no such provision in the Trade Marks Act.
25.9.7. Inasmuch as these are cognate statutes protecting infringement of intellectual property, it must be presumed that the legislature, in not providing, in the Trade Marks Act, any provision analogous to Section 22(3) of the Trade Marks Act or Section 107(1) of the Patents Act, did so consciously. The legislative mandate has to be respected.
25.9.8 Ergo, howsoever fragile the validity of a registered trade mark may seem, so long as it CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 33 of 48 remains on the register, the right against infringement, available under Section 28(1), stands protected.
25.9.9 It is true that Section 28(1) uses the expression "if valid". However, that does not empower a Court, seized with an infringement action based on a registered trade mark, to pronounce on the validity of the trade mark as a ground to deny injunction, even where the defendant has infringed the mark. It merits mention, in this regard, that Section 31(1) 52 of the Trade Marks Act provides that the registration of a trade mark would by itself be prima facie evidence of its validity. This prima facie presumption of validity can be unseated only if the defendant succeeds in having the trade mark invalidated under Section 57(1) or (2)53, or Section 47, of the Trade Marks Act. So long as this is not done, the right to relief against infringement, available to every registered trade mark under Section 28(1), stands preserved. The words "if valid" in Section 28(1) have, therefore, in our opinion, to be read in conjunction with Section 31(1), and the statutory presumption of validity engrafted therein.
25.9.10 Insofar as Section 28(1) is concerned, the provision clearly favours the appellant, rather the respondents. Section 28(1) entitles the appellant, as the proprietor of each of its registered trade marks, to relief against infringement of such registered trade mark by any third party, by way of injunction or by way of any of the other reliefs envisaged in Section 135 of the Trade Marks Act. Mere registration, even by itself, assures the appellant of the right to relief against infringement. Use of the registered trademark is not necessary."
So far as the Plaintiff's plea of defendant's passing of its services was concerned, reliance was placed on the citation CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 34 of 48 of Hon'ble Apex Court in case titled as "S.Syed Mohideen Vs. P. Sulochana Bai", (2016) 2 SCC 683, wherein it was held as infra:
"...31.1. Traditionally, passing off in common law is considered to be a right for protection of goodwill in the business against misrepresentation caused in the course of trade and for prevention of resultant damage on account of the said misrepresentation. The three ingredients of passing off are goodwill, misrepresentation and damage. These ingredients are considered to be classical trinity under the law of passing off as per the speech of Lord Oliver laid down in the case of Reckitt & Colman Products Ltd. v Borden Inc.4 which is more popularly known as "Jif Lemon"
case wherein the Lord Oliver reduced the five guidelines laid out by Lord Diplock in Erven Warnink v. Townend & Sons Ltd.4 (the "Advocate Case") to three elements: (1) Goodwill owned by a trader, (2) Misrepresentation and (3) Damage to goodwill. Thus, the passing off action is essentially an action in deceit where the common law rule is that no person is entitled to carry on his or her business on pretext that the said business is of that of another. This Court has given its imprimatur to the above principle in the case of Laxmikant V. Patel v. Chetanbhat Shah6." (2002) 3SCC 65.
So far as the plea regarding defendant's liability for rendition of accounts was concerned, it was submitted that defendant had immensely gained revenue through its adoption and use of the Plaintiff's mark for which it was legally bound to render its accounts.
So far as the issue pertaining to the territorial jurisdiction of this court was concerned, reliance was placed on Section 20 (c) of CPC and it was argued that since part of the CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 35 of 48 cause of action had arisen within the territorial jurisdiction of this court, hence, this court was having territorial jurisdiction to try and entertain the present suit.
So far as the Defendant's plea regarding the territorial jurisdiction was concerned, a plea was also raised regarding operation of the interactive website "bookmyshow" within the territorial jurisdiction of this court and reliance was thus placed upon citation of our own Hon'ble High Court in case titled as "Tata Sons (P) Ltd. Vs. Hakunamatata Tata Founders", 2022 SCC Online Del 2968, wherein it was held as infra:
"20. However, "targeting", as expounded by Banyan Tree Holding (P) Limited case3, would include ability of the customers to undertake a commercial transaction on a website within a particular geography. Banyan Tree Holding (P) Ltd. Case3 approved of even bonafide trap sales within a particular geography to attract territorial jurisdiction of Courts. In Burger King Corporation case4, it was held that even promotion activities undertaken on a website would be enough to attract territorial jurisdiction of Courts where website can be accessed. In Millennium & Copthorne International Limited case4, it has been held that the place where injury or deception is caused would have jurisdiction.
.....
22. We are in complete agreement with the above view of the English Court. Even if a website is not directed at customers in a particular country, the fact that they are not restricted by the website to have access to it, is enough to characterise it as targeting. Targeting need not be a very aggressive act of marketing aiming at a CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 36 of 48 particular set of customers. Mere looming presence of a website in a geography and ability of the customers therein to access the website is sufficient, in a given case. It may not be forgotten that in the matters of infringement of trademark, it is the possibility of confusion and deception in the mind of public due to infringing trademark that is good enough for the Court to grant injunction."
Similarly reliance was also placed on Ex. PW1/16, which was the screenshot of website "bookmyshow" showing that the tickets of the defendant's event were easily available to the spectators within the territorial jurisdiction of this court and further reliance was placed on the citation of Hon'ble High Court of Delhi in case titled as "Burger King Corpn. V. Techchand Shewakramani", 2018 SCC OnLine Del 10881, wherein Hon'ble High Court was pleased to hold as under:
"18. Thus, the provisions of Section 134 of the TM Act and Section 62 of the Copyright Act are in addition to and not in exclusion of Section 20 CPC. If the Plaintiff can make out a cause of action within the territorial jurisdiction of this Court under Section 20, no reference needs to be made to Section 134.
19. What constitutes cause of action in the context of a suit alleging violation of rights in a trade mark, would therefore be the question. In a case involving trade mark infringement, infringement happens when a person "uses in the course of trade" any mark without the owner's consent. Thus, use of a mark is the cause of action in an infringement as also in a passing off action. If use takes place in a territory where the suit is filed, that Court has the jurisdiction to entertain the suit. When there is use of a mark, there is a cause of action to CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 37 of 48 sue, where the use takes place, it is relevant to point out that "use" of a trademark as per Section 2(2) (c) of the TM Act is as under:
"(2) In this Act, unless the context otherwise requires, any reference-
***
(c) to the use of a mark-
(1) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services:"
20. This provision stipulates that use of a mark in relation to goods could be either in any physical or in any other relation whatsoever to such goods. In Kerly's Law of Trade Mark and Trade Names "use" of a mark is meant to include the following:
"It has never been the law that the spurious mark should be actually affixed to the goods, provided it was so used in relation to them as to be calculated to lead to the belief that the goods were designated by the mark. This position is maintained under the 1994 Act which, in section 10(4) and (5), follows the permissive provisions of Article 5(3) of the TM Directive in identifying the various activities which constitute use of a sign for the purposes of the infringement provisions.
13-33. It is an infringement to use an offending sign on business papers on in advertising :- this has always been the law. But with the wider definition of use including oral use of a trade mark it will now be an infringement to advertise using an offending mark by, for example, radio or through oral use of the mark by salesman."CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 38 of 48
21. Thus, jurisdiction of a Court in a trade mark action, could be invoked where there is use upon or in relation to goods. The phrase 'in relation to' has been interpreted to include advertising, promotion, publicity, etc. Thus, in addition to actual sale of goods and providing services, if a person advertises his or her business under the mark in a territory, promotes his or her business under the mark in a territory or for example invites franchisee queries from a particular territory, sources goods from a particular territory, manufactures goods in a particular territory, assembles goods in a particular territory, undertakes printing of packaging in a particular territory, exports goods from a particular territory, it would constitute 'use of a mark'. "
22. This scheme of the TM Act is amply clear from a reading of Sections 28 and 29 as also Section 56. Under Section 28, the rights conferred are the exclusive right to use of a mark. Under Section 29, use of a mark could be any form of use, including -
• as part of a trade name or a corporate name or name of a business concern [Section 29(5)] • use by affixing it to products/services [Section 29(6)(b)];
• use by affixing it to packaging [Section 29(6)(b)];
• use by offering goods/services for sale; • use for the purpose of import or export[Section 29(6)(c)];
• use on business papers [Section 29(6)(d)]; • use in comparative advertising which is detrimental to distinctive character or repute of the mark [Section 29(4)] • use in advertising [Section 29(7)].
• Applying a mark in a territory for purposes of export of goods/services [Section 56(1)] ;
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 39 of 48• Use by which a trade connection is created between the user and the proprietor [Section 56 (2)].
23. Thus, when Section 20 of the CPC provides that a suit could be filed in any place where the cause of action arises, in a suit involving rights in a trademark, cause of action arises in each and every place where there is any form of use of the said mark. Principles which apply to infringement. actions to determine 'use' would equally apply to passing off actions."
In rebuttal, Ld. Counsel for Defendant had drawn my attention to para 21 of the affidavit Ex. PW1/A and had stated that since the Plaintiff had alleged the availability of the defendant's services within the territorial jurisdiction of this court hence the Plaintiff was under a strict liability to prove the same.
It was also stated that since the events were organized by the Plaintiff at Uttarakhand and that too by the academy and not by the Plaintiff in person, hence, the plaintiff could not have claimed himself to be the organizer of the such events.
However, I do not find any merits in this argument because Plaintiff had already claimed that he was the Managing Trustee of the organizer, and had permitted his organization to use his own registered trademarks for the said event, hence, this argument and the contention of the defendant doesn't hold any water in it.
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 40 of 48Similarly, the defendant had raised a plea regarding the provisions of Section 17 (1) and (2) of Trade Marks Act, which says that a person who is the registered owner of a "composite trademark" cannot bisect it in pieces and claim any exclusive jurisdiction or right of user of any single word thereof.
Reliance was also placed by Ld. Counsel for Defendant on the provision of Order XIX Rule 6 (b) CPC which provided that where the court was of the view that an affidavit filed in evidence was merely a reproduction of the pleadings or contained legal grounds of any party's case, then the court vide an order could have strike down those parts of such affidavit as it deemed fit and proper.
In the light of this Provision, it has been stated that affidavit filed by the plaintiff in evidence Ex. PW1/A is nothing but a mere replica of the Plaint and hence was liable to be struck down by this court.
However, I am not impressed with this contention raised by the Ld. Counsel for Defendant as well, because going by that analogy, even the affidavit filed by the DW1 Ex. DW1/A in defendant's evidence is also nothing but a replica of the written statement filed by the defendant on record.
15. In the light of aforesaid submissions and counter submission made by the Ld. Counsels for the parties, my issue wise findings are as under:
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 41 of 48Issue No. i. Whether Plaintiff is entitled to a decree for permanent injunction of the nature as prayed? OPP.
The onus to prove this issue was upon the Plaintiff, who had claimed himself to be the rightful registered owner of the mark in question, which fact had also not been denied anywhere by the defendant. Even the use of said mark by the defendant in its motor racing events organized at Buddh International Circuit, Noida as well as in Chennai was also not denied by it and if the deposition of DW1 is examined form that aspect, then it becomes an established fact on record that defendant had acquired the knowledge, may be a few hours before the start of the event, that the trademark which it was going to use for its event, actually belonged to the Plaintiff.
Keeping in view the aforesaid evidence as appearing on record and the Provisions of the Trade Marks Act, 1999, I have no hesitation in holding that adequate protection has been provided to the registered owners of the Trademark under the said act, who is entitled to protect his rights against the non- registered users, barring only one exception of that being a prior- user.
Furthermore, as submitted by the Ld. Counsel for Defendant before Hon'ble High Court of Delhi in FAO- IPD 1/2024 case titled as "Racing Promotions Pvt. Ltd. Vs. Ashish Aggarwal" and that fact had also emerged in the order sheet dated 16.07.2024, that the defendant herein had already stopped using the infringing marks two years before the date of making such submission, hence, I have no hesitation in holding that the CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 42 of 48 Plaintiff is entitled to a relief of injunction as prayed, so as to prevent the violation of his registered trademark at the hands of defendant at any point of time in future.
Accordingly, Plaintiff has successfully discharged the onus of this issue, which is answered in affirmative and decided in favour of the Plaintiff and against the defendant, holding the Plaintiff to be entitled to an injunction against the defendant in terms of prayer clause (a) of the Plaintiff. However, no injunction in terms of prayer clause (b) could be granted to him as it had already become infructuous in view of the undertaking given by the defendant before Hon'ble High Court of Delhi in FAO-IPD No. 1/2024 on 16.07.2024.
Issue No. ii. Whether Plaintiff is entitled to a decree for rendition accounts of the nature as prayed,if so, against whom? OPP.
The onus to prove this issue was again upon the Plaintiff, who had successfully proved his case against the defendant vide Ex. PW1/20, which is the statement of account of revenue generation filed by the defendant before Hon'ble High Court of Delhi, however, a bare perusal of the same reflects that the defendant was shown to have suffered a loss of Rs. 62,05,568/- in organizing the events, hence, the Plaintiff cannot claim any damages from the defendant because the Plaintiff himself had not proved any actual damages suffered by him due to said impugned user of his registered trademark by the defendant, nor he had challenged the authenticity and genuineness of this statement of account filed by the Defendant CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 43 of 48 before the Hon'ble High Court of Delhi, pertaining to the period commencing from 01.04.2019 till 10.01.2020.
The issue is accordingly answered in affirmative and decided in favour of the Plaintiff and against the defendant, however, since defendant had already placed on record his Provisional Profit and loss summary on record, hence, while deciding the issue in favour of the Plaintiff, no such further directions are called for in this case to render any accounts as the document is already available on record and is also in possession of Plaintiff.
Issue no. iii. Whether this court has no territorial jurisdiction to try and entertain the present suit? OPD.
The onus to prove this issue was upon the defendant, who had not lead any specific evidence on record in this regard either himself or had elucidated any material or concrete thing during the cross-examination of PW1 challenging the territorial jurisdiction of this court. Moreover, keeping in view the fact that the bookings of defendant's show were easily available on interactive website "bookmyshow", which has an access from the Places situated within the territorial jurisdiction of this court as well, hence, I have no hesitation in holding that keeping in view the mandate of the Division Bench of our own Hon'ble High Court in case titled as "Banyan Tree Holding (P) Limited versus A. Murali Krishna Reddy & Anr, CS(OS) No. 894/2008, decided on 23.11.2009, reported as 2009 SCC Online Del 3780 : (2010) 42 PTC 361" was pleased to summarize the legal position with regard to websites as under:-CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 44 of 48
"Summary
58. We summaries our findings on the questions referred for our opinion as under:- Question (i): For the purposes of a passing off action, or an infringement action where the Plaintiff is not carrying on business within the jurisdiction of a court, in what circumstances can it be said that the hosting of a universally accessible website by the Defendants lends jurisdiction to such Court where such suit is filed ("the forum court")?"
Answer: For the purposes of a passing off action, or an infringement action where the Plaintiff is not carrying on business within the jurisdiction of a court, and in the absence of a long-arm statute, in order to satisfy the forum court that it has jurisdiction to entertain the suit, the Plaintiff would have to show that the Defendant "purposefully availed" itself of the jurisdiction of the forum court. For this it would have to be prima facie shown that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of the forum state by the Defendant resulted in an injury or harm to the Plaintiff within the forum state.
Question (ii): In a passing off or infringement action, where the defendant is sought to be sued on the basis that its website is accessible in the forum state, what is the extent of the burden on the Plaintiff to prima facie establish that the forum court has jurisdiction to entertain the suit?
Answer: For the purposes of Section 20 (c) CPC, in order to show that some part of the cause of action has arisen in the forum state by the use of the internet by the Defendant, the Plaintiff will have to show prima facie that the said website, whether euphemistically termed as "passive plus"
or "interactive" was specifically targeted at CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 45 of 48 viewers in the forum state for commercial transactions. The Plaintiff would have to plead this and produce material to prima facie show that some commercial transaction using the website was entered into by the Defendant with a user of its website within the forum state resulting in an injury or harm to the Plaintiff within the forum state.
Question (iii): Is it permissible for the Plaintiff to establish such prima facie case through "trap orders" or "trap transactions?
Answer : "The commercial transaction entered into by the Defendant with an internet user located within the jurisdiction of the forum court cannot possibly be a solitary trap transaction since that would not be an instance of "purposeful" availment by the Defendant. It would have be a real commercial transaction that the Defendant has with someone not set up by the Plaintiff itself. If the only evidence is in the form of series of trap transactions, they have to be shown as having been obtained using fair means. The Plaintiff seeking to establish jurisdiction on the basis of such trap transactions would have to aver unambiguously in the plaint, and also place along with it supporting material, to prima facie show that the trap transactions relied upon satisfy the above test."
In the light of aforesaid legal preposition, it becomes an established fact on record that defendant's website was accessible from South Delhi, hence, I have no hesitation in holding that this court had the territorial jurisdiction to try and entertain the present suit. Accordingly, this issue is answered in negative and decided in favour of the Plaintiff and against the Defendant.
CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 46 of 48(iv) Relief.
16. In view of my findings given to all the issues above, the suit of the Plaintiff is hereby partly decreed in favour of the Plaintiff and against the defendant. Defendant through its individual proprietors/partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all others acting for and on their behalf is hereby permanently restrained from using, selling, soliciting, promoting, displaying, advertising or by any other mode or manner dealing in or using the impugned trademark/ label X1 and X1 RACING LEAGUE and domain name https://x1racing.com and/or any other word/mark/label/domain name which might be identical with and/or deceptively similar to the plaintiff's said trademark/label "X1 and X1 WAR of X-TREME SPEED", in relation to their impugned services and business of conducting sporting activities, sporting events, training, entertainment activities, advertising, consultancy services and Business and Administration with respect to sporting activities and events and allied/related services and from doing any other acts or deeds amounting to or likely to:-
i. Infringement of plaintiff's aforesaid registered trademark.
ii. Passing off and violation of the plaintiff's common law right in the plaintiff's said trade mark/label.
iii. Infringement of Plaintiff's copyrights in its trademark/label.
iv. Dilution of Plaintiff's said trademark/label.CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 47 of 48
17. No order as to costs.
18. Decree sheet be drawn accordingly.
19. File be consigned to record room after completion of necessary formalities in this regard.
ANNOUNCED IN THE OPEN COURT Digitally signed DATED: 03.09.2025 LOKESH by LOKESH KUMAR KUMAR SHARMA SHARMA Date: 2025.09.03 17:37:57 +0530 (Lokesh Kumar Sharma) District Judge (Commercial Court)-05 South/Saket/New Delhi CS (COMM) 384/19 Ashish Aggarwal Vs. M/s Racing Promotions Pvt. Ltd. Page 48 of 48