Delhi District Court
Suresh Dutt Parashar And Anr vs Vaidya Rishi India Health Pvt. Ltd And ... on 26 April, 2024
1
IN THE COURT OF MS. HEMANI MALHOTRA
DISTRICT JUDGE (COMMERCIAL)-02/WEST/THC/DELHI
CNR NO.DLWT010080712023
CS (COMM)/741/2023
IN THE MATTER OF:
1. VAIDRISHI LABORATORIES
THROUGH ITS PROPRIETOR SURESH DUTT PARASHAR
108, VISHAL TOWER,
DISTRICT CENTRE, JANAKPURI,
NEW DELHI-110058, INDIA
EMAIL: [email protected] | [email protected]
CONTACT: +91-7290995000, +91-9911995000
2. VAIDRISHI LABORATORIES PVT. LTD.
SPACE NO. 108, FIRST FLOOR,
PLOT NO-10, VISHAL TOWER DISTRICT CENTRE,
JANAKPURI A-3 NEW DELHI
WEST DELHI- 110058, INDIA
EMAIL: [email protected] | [email protected]
CONTACT: +91-7290995000 | +91-9911995000
.......PLAINTIFFS
VERSUS
1. VAIDYA RISHI INDIA HEALTH PRIVATE LIMITED B-17, UPSIDC
AGRO PARK, KURSI ROAD,
BARABANKI, UTTAR PRADESH -225001
EMAIL: [email protected]
CONTACT: +91-93079 11056
ALSO AT
F-21, KANTIPURAM PHASE 1,
DEVA ROAD CHINHAT, LUCKNOW,
UTTAR PRADESH- 226028, INDIA
2. RADHEY SHYAM PANDEY
DIRECTOR OF VAIDYARISHI INDIA HEALTH PRIVATE LIMITED
B-17, UPSIDC AGRO PARK, KURSI ROAD,
BARABANKI, UTTAR PRADESH -225001, INDIA
ALSO AT:
D -30, KANTIPURAM PHASE -1,
LUCKNOW - 227105, UTTAR PRADESH, INDIA
EMAIL: [email protected]
CONTACT: +91-93079 11056
SURESH DUTT PARASHAR
Vs. Page 1 of 15
RADHEY SHYAM PANDEY & ORS.
2
3. GODADDY.COM, LLC
GRIEVANCE OFFICER - KAREN GAYDOS
2155 E GODADDY WAY
TEMPE, AZ 85284
USA
EMAIL: [email protected]
ALSO AT:
GODADDY INDIA WEB SERVICES PRIVATE LIMITED
FIRST FLOOR, 01A167, WEWORK BRISTOL CHOWK,
PLATINA TOWER, MG ROAD, SECTOR - 28 GURUGRAM
HARYANA 122002 INDIAEMAIL: [email protected]
...... DEFENDANTS
ORDER
1. Vide this order, I shall dispose off application filed by plaintiff under Order XXXIX Rules 1 and 2 read with section 151 CPC seeking temporary injunction to restrain the defendants etc., from using the impugned marks and labels, trade name under the trademark Vaidrishi or any other mark, label, trade name and domain name identical with or deceptively similar to the plaintiff's mark.
2. Brief facts necessary for the disposal of present application are that the plaintiffs filed a suit for permanent and mandatory injunction restraining infringement of trademarks, passing off, dilution, rendition of account, delivery up etc., against the defendants. In the suit, it is claimed that Plaintiff No.1 is the sole proprietor of Vaidrishi Laboratories, which is in the business of Ayurvedic and Herbal medicines, Herbal beauty and body care products which was established/incorporated in 1971 by Vaidrishi Uma Dutt SURESH DUTT PARASHAR Vs. Page 2 of 15 RADHEY SHYAM PANDEY & ORS.
3Prashar. After the demise of Vaidrishi Uma Dutt Prashar, the business stood transferred to the plaintiff No.1 , son and legal heir of late Sh. Vaidrishi Uma Dut Prashar. Plaintiff No. 2, VAIDRISHI LABORATORIES PVT. LTD. was incorporated on 26thApril, 2023 wherein, Shri Suresh Dutt Parashar is one of the directors/father of plaintiff no.1 Late Sh. Vaidrishi Uma Dutt Parashar had first applied for the trademark ARSHKALP (DEVICE) on 08.04.1987 with the user date 01.01.1971. The said trademark was registered vide Certificate No. 200745 dated 13/06/1995. However, the said trademark could not be renewed due to non-communication. Plaintiff no.1 also applied for the trademark registration for the mark ARSHKALP (Label) with the user date 1.1.1972 vide trademark application no. 1662827 in Class 5. The label prominently contains the mark VAIDRISHI in addition to the brand Arshkalp. The said trademark was registered vide Certificate No. 941743 dated: 19/02/2011. The said trademark was renewed and is valid till 10/03/2028. It is also claimed that plaintiffs are the original coiner and prior user of the mark VAIDRISHI and own exclusive proprietary rights in the same.
3. Subsequently, Plaintiff No. 1 also applied for the registration of the mark and/or device of VAIDRISHI in Class 03 vide Application Nos. 4900805 and 5392679 respectively. The said applications registrations of the trademark VAIDRISHI in Class 3 are pending registrations. It is further the claim of the plaintiffs that the mark VAIDRISHI is prominently displayed on all the products under the brand name VAIDRISHI which are being promoted on the website run and maintained by the Plaintiff no. 1. The domain name SURESH DUTT PARASHAR Vs. Page 3 of 15 RADHEY SHYAM PANDEY & ORS.
4www.vaidrishi.com was registered in 2011 and is easily accessible to the general public all over the world and since then it is being used for running the website of the Plaintiffs. The brand VAIDRISHI is also displayed prominently on the homepage of the website. It is also averred that plaintiffs have a huge presence on social media including pages on Facebook, Twitter and other important social media platforms. The Facebook page can be freely accessed at https://m.facebook.com/Vaidrishi1971/, the Instagram page can be accessed at https://www.instagram.com/vaidrishi1971/ and the Twitter page can be accessed at https://twitter.com/vaidrishilabs. Plaintiffs have also spent huge amount of money in advertising its various trademarks including the mark VAIDRISHI which has earned plaintiffs', a huge goodwill and reputation. The sale figures from financial year 2008-2009 amounting to Rs.17,19,745/- increased to Rs. 8,17,39,926/- in the financial year 2021-2022 and advertisement expenditure rose from Rs. 56,51,403/- in 2008-2009 to Rs. 4,01,21,203 in 2021-2022.
4. Regarding the defendants, it is averred that defendant No.1, M/S VAIDYA RISHI INDIA HEALTH PRIVATE LIMITED is a company incorporated under the Companies Act which is engaged in the business of manufacturing and marketing various goods including ayurvedic and herbal medicinal goods and body care formulations under the impugned mark (VAIDYA RISHI). Defendant SURESH DUTT PARASHAR Vs. Page 4 of 15 RADHEY SHYAM PANDEY & ORS.
5No. 3 is the domain name registrar of the impugned domain name of Defendant no.1. In February'2023 , the plaintiffs first came to know about the infringing and passing off activities of the Defendants when the Plaintiffs came across the applications for the registration of the device mark VAIDYA RISHI in Class 03 and Class 05 filed by defendant No. 2. The plaintiffs filed opposition against the applications of defendant no.2, whereafter defendant no.2 filed counter statements to the Notice of Oppositions claiming that the Defendant No. 2 has "Coined, invented and developed the mark VAIDYA RISHI . On making further enquiries, the plaintiffs came to know that defendant no.2 had dishonestly adopted and had malafidely got registrations for the impugned mark/device VAIDYA RISHI in class 29, 30, 31, 32 and 35 in his name and has a It is lso applied for the registration of the impugned mark VAIDYA RISHI GLAMOUR in Class 03 against which plaintiffs intend to file rectification proceedings. On further investigation, the plaintiffs also came across the goods sold by defendants under the impugned mark VAIDYA RISHI on e-commerce platforms. The plaintiffs also came to know that defendant no.2 is running his business using the trade name VAIDYA RISHI INDIA HEALTH PVT. LTD. which was incorporated on 11.6.2020. The plaintiff, thereafter issued a cease SURESH DUTT PARASHAR Vs. Page 5 of 15 RADHEY SHYAM PANDEY & ORS.
6and desist notice dated 11.4.2023 to defendant nos. 1 and 2, to which a reply from defendant no.2 was received wherein defendant no.2 stated that the impugned mark VAIDYA RISHI was Invented and Coined by defendant no.2. The defendant nos.1 and 2 also infringed the plaintiffs' trademark by adopting the domain name https://vaidyarishiindia.in/ which was registered on 18.05.2023 and by maintaining a social media account on facebook. It is , therefore, the case of plaintiffs that defendant nos.1 and 2 have dishonestly and malafidely adopted the mark which is phonetically identical and deceptively similar to plaintiffs' mark VAIDRISHI, thereby infringing the plaintiffs' well known and registered trademark. The adoption of deceptively similar trademark by defendant nos. 1 and 2 is a deliberate attempt to encash the goodwill and reputation of plaintiffs. Further, that by virtue of prior adoption, prior use, prior registration, extensive publicity and promotion, the trademark VAIDRISHI of plaintiffs is now distinctive of the plaintiffs' trademark. The overall, similarity between the two marks is likely to cause deception and confusion in the minds of consumers with average intelligence and imperfect recollection. Thus, the defendant nos. 1 to 2 by using a virtually identical mark in relation to identical goods are making a deliberate attempt to pass off their goods as those of the plaintiffs. Hence, the application for injunction.
5. The defendant nos. 1 and 2 in their written statement claimed to be the rightful owner of trademark VAIDYA RISHI having exclusive rights to use the trademark in relation to the goods falling under SURESH DUTT PARASHAR Vs. Page 6 of 15 RADHEY SHYAM PANDEY & ORS.
7Class 29, 30, 31, 32 and 35 of The Trademarks Act'1999. They further averred that the brand name adopted by the defendant nos.1 and 2 was verbally, phonetically and visually different from the plaintiffs' trademark and can not be said to be violating any right of the plaintiffs in any manner. They had adopted the trademark VAIDYA RISHI in the year 2020 and have been using the mark since 28.5.2020 extensively and continuously. They are the prior adopter and originator of the trademark VAIDYA RISHI and have coined, invented and developed the mark device. It was also claimed that the suit of the plaintiffs was not maintainable as the plaintiffs' trademark name is VAIDRISHI which is a word mark and is registered under class 05, 35 and 42 whereas defendants' trademark was VAIDYA RISHI / VAIDYA RISHI GLAMOR registered in classes 03, 05, 29, 31, 32 and 35 with a unique artistic work of text element alongwith image of RISHI and completely different line of business. Further, the business of defendant nos. 1 and 2 was limited to Uttar Pradesh only. Also that , they are dealing in Ayurvedic and Unani products which are very different from the products used by the plaintiffs. Therefore, there is no likelihood of confusion on the part of the consumers and there was no question of infringement / passing off. In addition, it was claimed that the registration of trademark ARSHKALP (device label) of plaintiff under Class 05 had expired on 13.6.1995 and came to an end due to non renewal and was subsequently registered on 10.3.2008. It was also denied that the trademark registration for the mark Arshkalp prominently contained the mark Vaidrishi in addition to the brand Arshkalp. For the said reasons, it was claimed SURESH DUTT PARASHAR Vs. Page 7 of 15 RADHEY SHYAM PANDEY & ORS.
8that defendant nos.1 and 2 had not violated any right of the plaintiffs.
6. Lengthy arguments were addressed by both the learned counsels for the parties. Learned counsel for plaintiffs also filed a catena of judgments to support his arguments.
7. It is no longer res integra that an injunction would lie where the two trademarks are registered and Sections 28 (3) and 30 (2) (e) do not bar filing of such a suit. In judgment titled as CLINIQUE LABORATORIES LLC & ANR. VS GUFIC LIMITED & ANR. decided on 9.4.2009 the Hon'ble Delhi High Court observed as under:
"Registration has been made only prima-facie evidence of the registration otherwise being in accordance with the Act under Section 31(1) as contended by senior counsel for plaintiff but I find that even Section 28 (1) while being subject to other provisions of Act, further provides that "registration of the trademark, if valid, give to the registered proprietor" exclusive right to use the trademark. Thus the validity of registration can be gone into, wherever permissible under the Act. Section 124(1) (b) also indicates that it was within the contemplation of the legislature that there could be a suit for infringement of trademark where the defendant takes a plea under Section 30 (2) (e) i.e. that use by him is not infringement because of his mark being also registered. The legislature while further providing for stay of suit in such cases, in sub Section (5) expressly provided that such stay would not preclude the court from making any interlocutory order. Section 31 r/w the scheme of 124 leads to an un-escapable conclusion that (A) there can be a suit for infringement against the registered proprietor (B) that upon the defendant taking the plea of his registration and of there being thus no infringement, such suit has to be stayed awaiting SURESH DUTT PARASHAR Vs. Page 8 of 15 RADHEY SHYAM PANDEY & ORS.9
the rectification proceedings and (C) the court is empowered in such case to pass any interlocutory order. The court while passing interlocutory order will necessarily have to prima facie adjudicate the validity of the two competing registrations. Upon inquiry, it was informed that the Registrar while trying the rectification application has no power to grant interim relief. The legislature under Section 124 (5) has thus empowered the court under Section 124 (5) to grant injunction against use of a registered trademark also if the court is satisfied of the invalidity thereof.
11.Once having reached a conclusion that registration is only prima facie evidence of validity, it is axiomatic that if the court is satisfied otherwise on the basis of material on record and in the facts of the case, the court is empowered to injunct use of registered trademark also ...... . ........... ................. ................ ........... ...... ........................ ................................ .................. .... ......... ............................ ..................... ................ ... ...................................... .................... ................... I thus conclude that a suit for infringement of registered trademark is maintainable against another registered proprietor of identical or similar trademark and in such suit, while staying the further proceedings pending decision of the registrar on rectification, an interim order including of injunction restraining the use of the registered trademark by the defendant can be made by the court, if the court is prima facie convinced of invalidity of registration of the defendant's mark."
8. The observation made in the judgment above (supra) was subsequently followed by the Hon'ble Delhi High Court in a case titled as RAJNISH AGGARWAL & ORS. VS M/S. ANANTAM decided on 26.11.2009.
9. Similar view was taken by the Hon'ble High Court of Delhi in case titled as SINGER COMPANY LTD vs. CHETAN MACHINE TOOLS SURESH DUTT PARASHAR Vs. Page 9 of 15 RADHEY SHYAM PANDEY & ORS.
10reported as ILR (2009) 3 DEL 802 wherein it was observed that a suit by a registered proprietor of a trademark against another registered proprietor of the same trademark cannot be declined to be entertained at the threshold because of Section 30 (2) (e) of The Act. Such a suit can lie but may have to be stayed depending upon the defence raised by the defendants.
10. The judgments (supra) were followed by the judgment of Delhi High Court in case titled as ABBOTT HEALTH CARE PVT LTD vs. RAJ KUMAR PRASAD AND OTHERS reported as 2014 (58) PTC 225 (DEL) wherein the view taken by the Hon'ble High Court of Delhi was reiterated and it was observed that a suit for infringement of registered trademark is maintainable against another registered proprietor of identical or similar trademark.
11. On the plain reading of the aforesaid decisions arrived at by the Hon'ble Delhi High Court, there is not an iota of doubt that a suit for infringement by plaintiffs is maintainable in the present case.
12. It is the contention of learned counsel for plaintiffs that the trademark VAIDRISHI adopted by the plaintiffs, due to prior adoption and continuous use of its' trademark since year 1971-72 and due to excellent quality product is now distinctive of the plaintiffs and none else. Therefore, no other party has a right to use the same without the permission of the plaintiffs. The plaintiffs are therefore, are entitled to protect their statutory right as well as common law rights. The adoption of the trademark of plaintiffs by the defendants thus tantamount to passing off. SURESH DUTT PARASHAR Vs. Page 10 of 15 RADHEY SHYAM PANDEY & ORS.
1113. The Hon'ble High Court of Delhi in a case titled as MICOLUBE INDIA LTD vs. MAGGOM AUTO CENTER AND ANOTHER 2008 (36) PTC 231 (DEL) very aptly expressed that:
"The law of 'passing off' as it has developed, permits an action against a registered proprietor of a trade mark for its mendacious use for inducing and misleading the consumers into thinking that his goods are the goods of or are connected with the goods of a prior user of the trade mark. It seems to us that in so far as this Court is concerned, this position cannot be disputed in view of the judgment of the Division Bench in Century Traders v. Roshan Lal Duggar and Co. 1978, Delhi 250 where, while construing Sections 27(2) and 106 of the Act, it was held as follows:
From a reading of the above sections it is clear that registration of mark in the trade mark registry would be irrelevant in an action for passing off.
Thus, the law is pretty well settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trade marks. In our opinion, these clear rules of law were not kept in view by the learned single Judge and led him to, commit an error.
Similar view was expressed by the Hon'ble Delhi High Court in RAJNISH AGGARWAL VS. ANANTAM, (supra) wherein it was observed that :
"Further, in order to succeed in an application for SURESH DUTT PARASHAR Vs. Page 11 of 15 RADHEY SHYAM PANDEY & ORS.12
temporary injunction the applicant has to establish user of the aforesaid mark prior in point of time than the impugned user by the non-applicant. Further still, actual damage or fraud is unnecessary in a passing off action whether the relief asked for is injunction alone or injunction, accounts and damages. If there is a likelihood of the offending trade mark invading the proprietary right, a case for injunction is made out."
14. Even in ABBOTT HEALTH CARE PVT LTD (Supra) the Hon'ble High Court of Delhi held that :
"The legal position that would follow is that even if for arguments sake it is held that a proprietor of a trademark cannot claim infringement of his trademark in view of section 28(3) and read with section 30(2)(e) of the Trade Marks Act an action for passing off would be maintainable. In the present case, the plaintiff has sought to press the contention of passing off stating that the defendant is guilty of passing off."
15. Now adverting to the facts of the present case, the pleadings of the plaintiffs establish that the trademark ARSHKALP which prominently contained the mark VAIDRISHI was registered on 19.2.2011, which was renewed and is valid till 10.3.2028. The plaintiffs in para 11 of their plaint also gave the details of the registrations / applications which are as follows:
S. Application N Trademark Class User Date Status No. o.
1. VAIDRISHI 4042154 05 01.01.1972 Registered (Word Mark)
2. ARSHKALP 4042153 05 01.01.1972 Registered (Word Mark)
3. ARSHKALP 1662827 05 01.01.1972 Registered (DEVICE)
4. VAIDRISHI 4042155 35 01.01.1972 Registered (Word Mark)
5. VAIDRISHI 4042156 42 01.01.1972 Registered (Word Mark)
6. LAXOCAST 4226006 05 04.07.2019 Registered SURESH DUTT PARASHAR Vs. Page 12 of 15 RADHEY SHYAM PANDEY & ORS.13
(Date of Applicatio
n)
7. NUHANDS 4478020 05 19.03.2020 Registered (Date of Applicatio
n)
16. As per the pleadings of the plaintiffs, the predecessors of the plaintiffs have been using the said trademark since 1971/1.1.1970 which is also reflected from the trademark applications. To support their contentions, learned counsel for plaintiffs further placed on record advertisements published in newspapers and magazines dating as back as 1972. They also placed on record the sales figures as well as expenditure incurred on advertisements of trademark VAIDRISHI. The domain name of plaintiffs i.e. www.vaidrishi.com was registered in 2011 and as per the plaintiffs , the products of the plaintiffs and that of the defendants are being used for the same purpose.
17. The defendants, on the other hand admitted to have adopted the trademark VAIDYARISHI on 28.5.2020. The perusal of the written statement reflects that defendants have simply denied the averments of the plaintiffs. No document or averment with respect to the sales figures and the expenditure incurred on advertisements of defendants' products was also placed on record.
18. Therefore, the plaintiffs prima facie established that they are a much prior user of the trademark VAIDRISHI and that the trademark of defendant nos.1 and 2 is phonetically similar to the SURESH DUTT PARASHAR Vs. Page 13 of 15 RADHEY SHYAM PANDEY & ORS.
14trademark of the plaintiffs. Plaintiffs also prima facie established that the defendant nos.1 and 2 have dishonestly adopted the trademark VAIDYARISHI to take advantage of the reputation and goodwill of the plaintiffs' trademark. Since, goods of the plaintiffs and that of defendant nos. 1 and 2 are near identical in nature , plaintiffs also prima facie establish that there is every likelihood that goods of defendant nos.1 and 2 are likely to cause confusion among the consumers that the goods of the defendant nos. 1 and 2 are that of the plaintiffs. For the reasons stated above, the plaintiffs have also established that the balance of convenience lie in favour of the plaintiffs and against the defendant nos.1 and 2 and if no interim injunction is granted, the plaintiffs will suffer irreparable harm and injury. Accordingly, application of plaintiff under Order XXXIX Rules 1 and 2 is thus allowed and the defendant nos.1 and 2 or anyone acting on their behalf are hereby restrained from manufacturing, selling, offering for sale, advertising, reproducing, promoting, displaying, or directly or indirectly dealing in aforementioned trademarks of plaintiffs or any other trade marks deceptively similar to the Plaintiffs' trademark as a part of a trademark, trade name, domain name, or in any manner including on websites, social media accounts, and on third-party websites and platforms till further order.
19. Since, defendant no.3 is the registrar of impugned domain name https://vaidyarishiindia.in/ which is similar to that of plaintiffs', Defendant No. 3 is directed to suspend and lock the domain name https://vaidyarishiindia.in/ registered by Defendant Nos. 1 and 2 or by anyone on their behalf till further order. Defendant no.3 is SURESH DUTT PARASHAR Vs. Page 14 of 15 RADHEY SHYAM PANDEY & ORS.
15further directed to reveal the Registrant details, including payment details of purchase and sale details, along with complete Shopper ID (identification number assigned to a Registrant) information, of the impugned domain names https://vaidyarishiindia.in/ and any other domain names which is similar to that of plaintiffs'.
20. Application under Order XXXIX Rules 1 and 2 read with section 151 CPC filed by plaintiffs stands disposed off accordingly.
Digitally signed by HEMANIANNOUNCED AND DICTATED HEMANI MALHOTRA
IN OPEN COURT ON 26.04.2024 MALHOTRA Date:
2024.04.26
15:39:15 +0530
(HEMANI MALHOTRA)
DJ-(COMM-02)/WEST
EXTN. BLOCK/THC/ DELHI @
SURESH DUTT PARASHAR
Vs. Page 15 of 15
RADHEY SHYAM PANDEY & ORS.