Bombay High Court
Ramnish Kumar Verma vs M R Interlink Private Limited on 13 June, 2023
Author: R.I. Chagla
Bench: R.I. Chagla
9-IA(L) 4363.2023 in COMIP (L) 4153.2023.doc
K.S. Jadhav
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO.4363 OF 2023
IN
COMMERCIAL IP SUIT (L) NO.4153 OF 2023
Ramnish Kumar Verma & Anr., ...Applicants/Plaintiffs
Versus
M R Interlink Pvt. Ltd. aka ...Defendants
M R Group & Ors.,
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Mr. Hiren Kamod a/w Ms. Poonam Teddu, Kaivalya Shetye and Prem
Khullar, Advocates i/b Mr. Mahesh A. Mahadgut for the
Applicants/Plaintiffs.
None for the Defendants.
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CORAM : R.I. CHAGLA, J.
DATE : 13TH JUNE, 2023.
ORDER :
1. At the outset, Mr. Kamod, Ld. Advocate for the Plaintiffs, submits that the papers and proceedings in the aforesaid matter have been served upon the Defendants via speed post on 1st and 4th March 2023. He submits that notice of today's application was also given to the Defendants vide email dated 30 th May 2023. Despite service, 1/11 ::: Uploaded on - 16/06/2023 ::: Downloaded on - 17/06/2023 05:13:59 ::: 9-IA(L) 4363.2023 in COMIP (L) 4153.2023.doc none appears for the Defendants today. An Affidavit of Service of one Prakash Bane dated 14th March, 2023 proving service of papers and proceedings upon the Defendants has been filed.
2. This is an action for infringement of trade marks combined with action of passing off. Mr. Kamod submits that since leave under Clause XIV of the Letters of Patent (Bombay) to combine the cause of action for passing off with the cause of action for infringement of trade marks is not obtained, the Plaintiffs are presently only pressing for reliefs in respect of infringement of trade mark and shall press for the relief of passing off after obtaining such leave. He submits that though the Clause XIV Petition has been duly served upon the Defendants, since the same is not listed on the board today, the Plaintiffs shall press for reliefs in terms of passing off on the next date of hearing. He further submits that the Plaintiffs are not pressing for the relief of appointment of Court Receiver at this stage.
3. It is stated that in November 2008, Plaintiff No. 1 adopted the word 'ROOKIES' as his trade mark and simultaneously devised many other marks in conjunction with the trade mark 'ROOKIES' in the form of words as well as devices / logos by maintaining the trade mark 'ROOKIES' as the most prominent, leading, essential and 2/11 ::: Uploaded on - 16/06/2023 ::: Downloaded on - 17/06/2023 05:13:59 ::: 9-IA(L) 4363.2023 in COMIP (L) 4153.2023.doc memorable feature thereof. The Plaintiff No. 2 is a Company of which Plaintiff No. 1 is a Director so also a shareholder. Plaintiff No. 1 has duly licensed / permitted the Plaintiff No. 2 to use the trade mark "ROOKIES". It is stated that the Plaintiffs have been trading under the trade mark "ROOKIES" since the year 2008. Details of the Plaintiff No.1's trade mark registrations for the trade mark "ROOKlES" in Classes 25 and 35 in relation to readymade garments and clothing are provided in para 5(i) of the Plaint. Copies of the Legal Proceeding certificates in support of the said trade mark registrations are at Exhibits 'A-1' to 'A-11' to the Pliant. Copies of the License Agreements executed between the Plaintiffs are at Exhibits 'D-1' to 'D-3' to the Plaint.
4. It is stated that the Plaintiff No. 1 is a designer, manufacturer and creative person in the field of readymade garments, clothing and footwear. The Plaintiffs deals in Jeans, Cargo Pants, Shirts, Jackets, T-shirts, Athleisure, Kids wear under the trademark ROOKIES. Photographs of the Plaintiffs products are at Exhibits 'E-1' to 'E-7' to the Plaint. The Plaintiffs also sell their products through multi brand outlets located in Mumbai, Gujarat, Punjab, MP, Chhattisgarh, Maharashtra, AP, UP, Delhi, Haryana, 3/11 ::: Uploaded on - 16/06/2023 ::: Downloaded on - 17/06/2023 05:13:59 ::: 9-IA(L) 4363.2023 in COMIP (L) 4153.2023.doc Telangana, Karnataka, West Bengal, J & K, Himachal Pradesh, Rajasthan, Tamil Nadu, Jharkhand, UK, Chennai, Kerala, Nepal and Uttarakhand. A list of stores where the Plaintiffs' goods are sold are at Exhibit 'F' to the plaint. Copies of vendor agreements and photographs of the stores are at Exhibits 'G-1 to 'G-3' and Exhibits 'H- 1' to 'H-10', respectively. It is stated that Plaintiffs also have their exclusive brand retail outlets at various locations. Details of such locations are provided in para 5(v)(b) of the Plaint. Photographs of such stores are at Exhibits 'I-1' to 'I-8' to the Plaint. Distributorship agreements between Plaintiff No. 2 and its distributors are at Exhibits 'J-1' to 'J-10'. Plaintiffs are also selling their goods on digital platforms. Details of such platforms are provided in para 5(v)(c) of the Plaint. Screenshots of the Plaintiffs' website so also e-commerce websites are at Exhibits 'K-1' to 'K-5' and Exhibits 'L-1' to 'L-10' to the Plaint, respectively. Plaintiffs also have presence on Instagram. Screenshots in respect of the same are at Exhibits 'M-1' to 'M-4' to the Plaint.
5. It is stated that the Plaintiff's brand is endorsed by well- known celebrities namely Suniel Shetty, Akshay Kumar, Sanjay Dutt, Rohit Shetty, Shah Rukh Khan, Salman Khan etc. Photographs of 4/11 ::: Uploaded on - 16/06/2023 ::: Downloaded on - 17/06/2023 05:13:59 ::: 9-IA(L) 4363.2023 in COMIP (L) 4153.2023.doc inauguration celebrations of the Plaintiffs' outlets are at Exhibit 'N-1' to 'N-10' to the Plaint. It is stated that the Plaintiffs are also promoting their products under the trade mark ROOKIES through magazines, details whereof are in para 5(v)(e) of the Plaint. Copies of promotional materials are at Exhibits 'O-1' to 'O-7' to the Plaint. Copies of sales invoices are at Exhibits 'P-1' to 'P-12' to the Plaint. To demonstrate the extent of their sales and sales promotional expenses in respect of their goods bearing the ROOKIES trade marks, the Plaintiff have produced on record their Chartered Accountant's certificates certifying their annual sales figures and annual advertisement and promotional expenses at Exhibits 'Q-1' and 'Q-2' to the Plaint. It is stated that Plaintiff No. 1 has also obtained registration of the domain name comprising of the said trade mark being https://rookiesjeans.com/. Printout of the whois records of the Plaintiff No. 1's domain name comprising the said trademark is at Exhibit 'B' to the Plaint. It is the case of the Plaintiff that their mark ROOKIES enjoys tremendous reputation and goodwill and is a well- known trade mark in India.
6. According to the Plaintiffs, in October 2022, they came across the Defendant No.1's trade mark application under No. 5/11 ::: Uploaded on - 16/06/2023 ::: Downloaded on - 17/06/2023 05:13:59 ::: 9-IA(L) 4363.2023 in COMIP (L) 4153.2023.doc 5045320 in Class 25 for the mark "ROOKIES" in the Trade Marks Journal. It is stated that in the Affidavit of User filed along with the Defendants' said trade mark application, the Defendant has filed invoices bearing third party clothing brands such as 'Superdry', 'Pull and Bear', 'Alcott', 'Mango', 'Yohan's', 'Shafin' and imitations of 'Lee Cooper' namely 'Laa Cooper' and 'Mini Cooper', which indicates that the Defendants are engaged in the business of selling counterfeit branded apparels by attaching tags of various third party brands including that of the Plaintiffs' said brand 'ROOKIES'. Copy of Defendant's trade mark Application under No. 5045320 in Class 25 for the mark ROOKIES is at Exhibit 'R' to the Plaint. It is stated that thereafter, Plaintiffs undertook search to locate the Defendants' goods and business but could not find the same.
7. It is stated that in the examination report issued by the Registrar of Trade Marks in respect of the Defendants' impugned trade mark application under No. 5045320 in Class 25, the Registrar has inter alia cited the Plaintiff's registered trade marks. In response to the examination report, the Defendants have falsely claimed that their mark is applied in the form of an artistic get up and specific style purporting it to be distinctive and that they have been using the 6/11 ::: Uploaded on - 16/06/2023 ::: Downloaded on - 17/06/2023 05:13:59 ::: 9-IA(L) 4363.2023 in COMIP (L) 4153.2023.doc same since 2nd July 2017. While the Defendants' impugned application is for the word mark 'ROOKIES', the Defendants have alleged in their response that the applied mark is "totally different"
from the cited trade marks and the artistic work consisting in the applied mark is unique. Copy of the Examination report and the Defendants' response are at Exhibits 'S' and 'T' to the Plaint, respectively. It is stated that the Plaintiffs have filed a Notice of Opposition against the Defendants' impugned trade mark application No. 5045320 in Class 25 on 2nd November 2022.
8. It is stated that despite the identical prior mark of the Plaintiffs' the Defendants mark was allowed to be advertised by the Registrar of the Trade Marks. Therefore, the Plaintiffs raised a complaint regarding the same with the Controller General of IP. The said complaint was also followed up with a letter dated 20 th October 2022 at Exhibit 'V' to the Plaint. Thereafter, the Plaintiffs issued a cease and desist notice dated 28th October 2022 to the Defendant No.1 however the same was returned with the remark "Address could not be found". The Plaintiff sent another cease and desist notice to the Director of Defendant No. 1 namely Defendant No. 2 which was returned with the remarks "Door Locked". It is stated that the 7/11 ::: Uploaded on - 16/06/2023 ::: Downloaded on - 17/06/2023 05:13:59 ::: 9-IA(L) 4363.2023 in COMIP (L) 4153.2023.doc Plaintiffs engaged the services of a private investigator to identify / verify the whereabouts of the Defendants and their business activities. The report of the private investigator is at Exhibit 'Y' to the Plaint. The stated that the Defendants are carrying on their business as "MR Group" from their address stated in the cause title of the Plaint. It is stated that the Plaintiffs instructed their Attorneys to issue a notice to the Defendant No.1's Trade Mark Attorney through whom the Defendants had filed the impugned trade mark application. The said notice was successfully delivered upon the Trade Mark Attorney of Defendant No. 1, however there was no response. A copy of the said notice dated 24th December 2022 is at Exhibit 'Z' to the Plaint.
9. Mr. Kamod submits that the Defendants impugned trade is identical with the Plaintiffs' registered trade marks. He submits that the Defendants are using the impugned trade marks in respect of the same goods for which the Plaintiffs have registered their trade marks and using the same. He submits that since the rival trade marks are identical, the likelihood of confusion and / or deception in the public is inevitable. He submits that the Defendants' acts amount to infringement of the Plaintiff's registered trade marks. He submits that the Defendants are obviously of the Plaintiffs' prior registered trade 8/11 ::: Uploaded on - 16/06/2023 ::: Downloaded on - 17/06/2023 05:13:59 ::: 9-IA(L) 4363.2023 in COMIP (L) 4153.2023.doc marks and deliberately using the impugned trade mark to ride on the Plaintiffs' coattails.
10. I have heard the submissions and perused the record. Prima facie, the Plaintiff No. 1 has secured statutory rights in the ROOKIES trade marks and the material annexed to the Plaint shows that the Plaintiffs mark ROOKIES trade mark has acquired immense goodwill and reputation. The rival trade marks are identical are being used in respect of the same goods i.e. readymade garments. The Defendant No. 1 has also filed application for registration of the impugned word mark 'ROOKIES' identical with the Plaintiff No. 1's registered 'ROOKIES' trade marks. The Defendants must have across the Plaintiff No.1's registered trade marks upon conducting a search prior to adoption. In any event, the Defendants were put to prior notice of the Plaintiff No.1's prior registered trade marks when the same were cited in the examination report dated 26 th July 2021 issued by the Registrar of Trade Marks in respect of the impugned trade mark application No. 5045320 in Class 25. I am therefore of the opinion that the adoption of the impugned mark ROOKIES by the Defendants is indeed dishonest.
11. In the circumstances, an overwhelming prima facie case for 9/11 ::: Uploaded on - 16/06/2023 ::: Downloaded on - 17/06/2023 05:13:59 ::: 9-IA(L) 4363.2023 in COMIP (L) 4153.2023.doc infringement of trade marks is made out by the Plaintiffs. The balance of convenience also lies in favour of the Plaintiffs and unless the reliefs as prayed for are granted, the Plaintiffs will suffer irreparable loss, harm and injury. It is settled law that in matters of blatant infringement of intellectual property rights such as these, it is not only in the interest of the Plaintiffs but also that of the general public that prompt injunction order be granted. Despite service of the papers and proceedings upon them, none appears for the Defendants today. There are no equities in the favour of the Defendants. There shall accordingly be an ad-interim order in terms of prayer clause (a) of the Interim Application, which reads as follows:
1. that pending the hearing and final disposal of the Suit, Respondents by themselves, their Directors, servants, associates, affiliated companies, assignees in business, franchisees, licensees, distributors, dealers, stockiest, sister concerns, representatives, agents and all persons acting for and on their behalf be restrained by a temporary order and injunction of this Hon'ble Court from manufacturing, marketing , exporting, selling and/or using as a trade mark, trade name, trading style, logo, device, domain name, key word, meta tag, hashtag and/or in relation to clothing, readymade garments, fashion accessories, foot wear and such allied and cognate goods the impugned mark 'ROOKIES' and/ or using any other mark being identical with and/or deceptively similar to the Applicants' registered trade marks 'ROOKIES' and/or 'ROOKIES' family/series of trade marks so as to infringe the Applicant's trade mark 'ROOKIES' and their 'ROOKIES' family/series of trade marks registered under Nos. 1766494, 2802602, 2802603, 4184928, 4184930, 4184932 in Class-25 and 10/11 ::: Uploaded on - 16/06/2023 ::: Downloaded on - 17/06/2023 05:13:59 ::: 9-IA(L) 4363.2023 in COMIP (L) 4153.2023.doc 4184927, 4184929, 4184931, 4184934, 4211737 in Class- 35 by such use and/or in any other manner whatsoever;
12. List the above Interim Application for further ad-interim reliefs on 3rd July, 2023 on which date the Clause XIV Leave Petition shall also be listed. Liberty is granted to the Plaintiffs to press for further reliefs on the next date.
13. The Plaintiff shall serve a copy of this order upon the Defendants and file an affidavit of service before the next date of hearing.
14. Liberty to the Defendants to apply for a variation, modification or recall of this order after at least 7 clear working days' notice to the Advocate of the Plaintiffs.
15. This order will be signed by the Private Secretary / Personal Assistant of this Court. All concerned will act on production of a signed copy of this order.
[R.I. CHAGLA, J.] 11/11 ::: Uploaded on - 16/06/2023 ::: Downloaded on - 17/06/2023 05:13:59 :::