Global Health Limited & Anr vs M/S Hg International & Ors on 22 May, 2023

[Cites 6, Cited by 0]

Delhi High Court - Orders

Global Health Limited & Anr vs M/S Hg International & Ors on 22 May, 2023

Bench: C.Hari Shankar

                             $~30
                             *         IN THE HIGH COURT OF DELHI AT NEW DELHI
                             +         CS(COMM) 333/2023
                                       GLOBAL HEALTH LIMITED & ANR.        .... Plaintiffs
                                                   Through: Ms. Sheyl Trehan and Mr.
                                                   Vignesh Raj, Advs.

                                                                            Versus

                                       M/S HG INTERNATIONAL & ORS.      ..... Defendants
                                                     Through:
                                       CORAM:
                                       HON'BLE MR. JUSTICE C.HARI SHANKAR
                                                                            ORDER

                             %                                              22.05.2023

                             CS(COMM) 333/2023

1. The plaintiffs are aggrieved, by the use, by Defendants 1 to 3 of the mark , which submits Ms. Trehan, infringes the mark of the plaintiffs, as well as the word mark "MEDANTA", registered in favour of Plaintiff 2. The registrations held by the plaintiffs under the Trademarks Act, 1999 have been tabulated, in the documents filed with the plaint, thus:

Sr. Description of Type of Class Registered Date of the No. IPR Mark owner of the registration/renewal IPR /application

1. MEDANTA Wordmark 5, 10, 39 "Plaintiff 2" 21/08/2008 & 42

2. MEDANTHA Wordmark 5, 10, 39 "Plaintiff 2" 21/01/2008 & 42

3. MEDANTA- Wordmark 5, 10, 39 "Plaintiff 2" 21/08/2008 CS(COMM) 333/2023 Page 1 of 11 This is a digitally signed order.

4. MEDANTHA- Wordmark 5, 10, 39 "Plaintiff 2" 21/01/2008 THE & 42 MEDICITY

5. Medanta- Wordmark 5, 10, 16, "Plaintiff 2" 14/11/2014 Mediclinic 39 42 & 44

6. Medanta Awadh Wordmark 5, 10, 16, "Plaintiff 2" 13/11/2014 39, 42 & 44

7. Medanta-The Wordmark 5, 10, 16, "Plaintiff 2" 13/11/2014 Medicity Awadh 39, 42 & 44

8. Medanta Wordmark 5, 10, 16, "Plaintiff 2" 14/11/2014 Lucknow 39, 42 & 44

9. Medanta-The Wordmark 5, 10, 16, "Plaintiff 2" 14/11/2014 Medicity 39, 42 & Lucknow 44

10. Medanta UttarWordmark 5, 10, 16, "Plaintiff 2" 14/11/2014 Pradesh 39, 42 & 44

11. Medanta-THE Wordmark 5, 10, 16, "Plaintiff 2" 14/11/2014 Medicity UP 39, 42 & 44

12. Device 5,10,39 Global Health 06/04/2009 Mark &44 Ltd

13. Device 5, 10, Global Health 10/02/2011 Mark 39, 42, Ltd 43 & 44

14. Device 35 & 44 Global Health 08/03/20224 Mark Ltd

2. The plaint asserts that the mark "MEDANTA" is a unique and specifically coined name, which has no known etymological meaning. It is, therefore, distinctive and is, even on that ground, entitled to additional protection under the Trademarks Act, 1999 against the infringement and passing off.

3. Defendants 1 to 3 are stated to be manufacturing, packing and selling skin care products, using the impugned mark CS(COMM) 333/2023 Page 2 of 11 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 19:52:12 . It is further averred, in the plaint, that Defendant 2 has also applied for registration of the impugned mark as a device mark in Class 3. The application is presently under objection.

4. On coming to know the use of the impugned mark by Defendants 1 to 3, the plaintiffs addressed separate notices to Defendants 1 to 3 and Defendants 4 to 6 on 27th April 2023, calling on Defendants 1 to 3 to cease and desist from continuing to use the impugned mark and on Defendants 4 to 6 to take down all representations of the said mark as available on the internet.

5. No satisfactory responses being forthcoming from the defendants, the plaintiffs have instituted the present suit before this Court, seeking a decree of permanent injunction, restraining Defendants 1 to 3 and all others acting on their behalf from using the impugned mark either as a word mark or as a device mark or any other mark which is deceptively similar to the registered trade mark of the plaintiffs for any purpose whatsoever. Additionally, a decree of permanent injunction has been sought against Defendants 4 to 6 to take down all representations of the mark , which is available on the internet as well as any products, which may be sold or made available for sale, bearing the impugned mark, on any e-commerce platform maintained by them. Additionally, the plaint seeks damages, costs, delivery up and CS(COMM) 333/2023 Page 3 of 11 This is a digitally signed order.

6. A prima facie case of infringement is made out on the facts of the case. As such, let the plaint be registered as a suit. Issue summons in the suit.

7. Written statement, accompanied by an affidavit of admission and denial of the documents filed by the plaintiffs be filed within 30 days with an advance copy to learned Counsel for the plaintiffs who may file replication thereto, accompanied by affidavit of admission and denial of the documents filed by the defendants within 30 days thereof.

8. List before the learned Joint Registrar (Judicial) for completion of the pleadings, admission and denial of documents and marking of exhibits on 24th July 2023, whereafter the matter would be placed before the Court for a case management hearing and further proceedings.

I.A. 9996/2023(Order XXXIX Rules 1 and 2 of the CPC)

9. This is an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking interlocutory injunctive relief. Inasmuch as the plaintiffs have several registrations for the mark MEDANTA, both as a word mark and the device mark. The use of the identical mark by the defendant, clearly amounts to infringement of the plaintiffs' registered mark. It is also well settled that where the words used in the two marks are identical, any other dissimilarities between the marks, seen as device marks, CS(COMM) 333/2023 Page 4 of 11 This is a digitally signed order.

10. Where a case of infringement is made out as in the present, following the ratio in para 14 of Laxmikant V. Patel v. Chetanbhai Shah1 and in para 5 of Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia2, the plaintiffs would be entitled to interlocutory injunction as well as appointment of the Local Commissioners.

11. As such, issue notice, returnable before the Court on 28th August 2023.

12. Reply be filed within a period of 30 days with an advance copy to learned Counsel for the plaintiffs, who may file a rejoinder thereto, if any, within a period of 30 days.

13. Till the next date of hearing, the following directions are issued:

(i) Defendants 1 to 3 as well as all others acting on their behalf are restrained from dealing, in any manner whatsoever with any goods or services under the mark whether use as a word mark or as a logo or any other mark or name, which is confusingly or deceptively similar to the registered trademark of the plaintiffs.

(ii) Defendants 4 to 6 are directed forthwith to take down, from any e-commerce platforms, any product, bearing the 1 (2002) 3 SCC 65 2 (2004) 3 SCC 90 CS(COMM) 333/2023 Page 5 of 11 This is a digitally signed order.

14. Compliance under Order XXXIX Rule 3 of the CPC would be effected within one week of filing the reports by the learned Local Commissioners in terms stating hereinafter.

I.A. 9997/2023 (Order XXVI Rule 9 of the CPC)

15. This is an application seeking appointment of the Local Commissioners to visit the premises of the defendants located at the following addresses and to execute the local commissions in the terms fixed by this Court.

1. M/s. HG INTERNATIONAL 23, First Floor, Khasra No. 253, 484 Rajdhani Enclave, Raju Park, Deoli South Delhi, Delhi, 110062

2. Mr. UGYAN CHOUDHARY/ UGAN CHAUDHARY 23, First Floor, Khasra No. 253, 484 Rajdhani Enclave, Raju Park. Deoli South Delhi, Delhi, 110062

3. VCOS COSMETICS PRIVATE LIMITED Khasra No. 253 & 484, 23A, UGF Devli, Raju Park, South Delhi, Delhi 110062

4. M/s. HG INTERNATIONAL Basement, 169, Ashoka Enclave Part-3, Sector-35 Faridabad, 121003 (Haryana)

16. This Court appoints the following officers as Local Commissioners to execute the commissions, as prayed in this application and as directed hereinafter:

CS(COMM) 333/2023 Page 6 of 11

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 19:52:13

(a) Ms. Tanushri Roy, Advocate (Cell: 9711263093), the Local Commissioner to visit at the following premises:

"1. M/s. HG INTERNATIONAL 23, First Floor, Khasra No. 253, 484 Rajdhani Enclave, Raju Park, Deoli South Delhi, Delhi, 110062

2. Mr. UGYAN CHOUDHARY/UGAN CHAUDHARY 23, First Floor, Khasra No. 253, 484 Rajdhani Enclave, Raju Park. Deoli South Delhi, Delhi, 110062

3. VCOS COSMETICS PRIVATE LIMITED Khasra No. 253 & 484, 23A, UGF Devli, Raju Park, South Delhi, Delhi 110062

(b) Ms. H. Saumitri, Advocate (Cell: 8368607044), the Local Commissioner to visit the following premise:

1. M/s. HG INTERNATIONAL Basement, 169, Ashoka Enclave Part-3, Sector-35 Faridabad 121003 (Haryana)

17. The terms of the execution of commission shall be as under:

(i) The commission shall be executed on 25th May 2023 at 11:00 AM.

(ii) The learned Local Commissioners shall visit the aforesaid premises at the afore-noted time. They shall inventorize and take into custody any goods which bears the impugned mark Medanta, whether as a word mark CS(COMM) 333/2023 Page 7 of 11 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 19:52:13 "MEDANTA" or as a logo , as well as all labels, packing material, printing material or other equipment and material which may be used for imprinting the impugned logo on any goods or products. All such material, after being taken into custody, shall be duly inventorized and handed over to the representatives of defendants at the aforesaid premises under the Superdari for safe custody pending further orders to be passed by this Court.

(iii) The commission shall be executed peacefully without unnecessary disturbing the legitimate business activities of the defendants.

(iv) The defendants or their personnel at the aforesaid premises are also directed to cooperated in the execution of the commissions.

(v) Should it become necessary, the learned Local Commissioners would also be at liberty to seek the assistance of the jurisdictional police authorities in order to execute the commissions. In that event, this order shall act as a mandate to the jurisdictional police authorities to render all assistance in that regard.

(vi) Should it become necessary, the learned Local Commissioners would also be at liberty to effect forced ingress into any premises for the purposes of execution of the commissions.

CS(COMM) 333/2023 Page 8 of 11

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 19:52:13

(vii) During the course of execution of commissions, should the learned Local Commissioners come to learn of any other premises in which similar activities are taking place or similar goods or machinery etc. are present, they would execute the commissions at such other premises as well in the terms already stated in this order.

(viii) Proceedings of the execution of local commissions shall be videographed at the expense of the plaintiffs, so that the court could be satisfied that the commissions have been executed without any hindrance.

(ix) Consequent on execution of the commissions, the learned Local Commissioners shall file reports with the Registry of this Court, with all requisite data, details, photographic and videographic evidence within a period of one week from execution of the commissions.

(x) In case the police assistance becomes necessary, the police authority is also directed to place on record reports justifying the proper execution of the commissions.

(xi) Each of the Local Commissioners shall be entitled to consolidated fees of ₹ 1 lakh, apart from expenses and actuals and transportation to and fro, for executing the commissions. Fees of the learned Local Commissioners shall be payable in advance of the execution of the commissions.

18. Compliance under Order XXXIX Rule 3 of the CPC be effected within one week of filing of the reports by the learned Local CS(COMM) 333/2023 Page 9 of 11 This is a digitally signed order.

19. The Registry is directed not to upload this order on the website of this Court till the commissions are executed and the reports in that regard are filed.

20. The application stands allowed accordingly.

I.A. 9998/2023 (Section 12A of the Commercial Courts Act, 2015)

21. In view of the judgment of the Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Pvt Ltd3, exemption is granted from the requirement of pre-institution mediation under Section 12 A of the Commercial Courts Act, 2015.

22. The application stands allowed accordingly.

I.A. 9999/2023 (Extension of time for court fee)

23. This is an application seeking extension of time for depositing the court fee. Ms. Trehan, learned Counsel for the plaintiffs, submits that court fee stands deposited.

24. Accordingly, the application has become infructuous and is disposed of.

I.A. 10000/2023 (Exemption from advance service) 32022 SCC OnLine Del 3529 CS(COMM) 333/2023 Page 10 of 11 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 19:52:14

25. For the reasons stated in the application, the plaintiffs are exempted from the requirement of serving an advance notice on the defendants.

26. This application stands allowed accordingly.

I.A. 10001/2023 (Exemption)

27. Subject to the plaintiffs filing legible copies of any dim or illegible documents within 30 days, exemption is granted for the present.

28. The application is disposed of.

29. Dasti.

C. HARI SHANKAR, J.

MAY 22, 2023 rb CS(COMM) 333/2023 Page 11 of 11 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 24/09/2023 at 19:52:14

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Delhi High Court - Orders