Delhi District Court
Rado Uhren Ag vs Ashok Kumar on 2 May, 2024
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) 333/19
CNR No. DLST01-007145-2019
RADO UHREN AG
Having its registered office at:
Bielstrasse 45,
Lengnau, Switzerland ..... Plaintiff
Versus
Ashok Kumar
S/o Sh. Ram Sewak
Owner Of The Website Domain Name Radoswiss. Com
Shop No. 106, RG Complex, Sector-14,
Rohini Phase-2, Delhi
..... Defendant
Institution of the Suit : 17.10.2019
Arguments concluded on : 19.04.2024
Judgment pronounced on : 02.05.2024
CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 1 of 22
JUDGEMENT
1. This suit for permanent injunction is filed by the plaintiff for restraining infringement and passing off, delivery up, rendition of accounts, etc. against defendant.
2. Brief facts:- As per plaintiff, who is RADO UHREN AG having its registered office at Bielstrasse 45, Lengnau, Switzerland, and Ms. Surbhi Bansal was authorized by the Plaintiff vide Power of Attorney and Ms. Surbhi Bansal further authorised Mr. Anand Kumar Arya to sign the Vakalatnama, sign and verify the pleadings, depose the facts of the case and to do all necessary acts on behalf of the Plaintiff, as he was fully aware of the facts and circumstances of the instant case.
It was stated that Plaintiff was engaged in the business of manufacture, sale and distribution of finished watches, jewellery, watch movements and components and was the registered proprietor of the Trademark/Label RADO since 1917 and considered as a pioneer in the field of scratch- proof materials and production of about half a million watches annually with a staff of about 470. 'Rado' watches were stated to be obtainable in more than 150 countries. The primary markets included Southeast Asia, Japan, China, India, Middle East as well as countries within CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 2 of 22 Europe (Switzerland, Germany, Italy) and the USA. Plaintiff differentiated itself by using high tech materials and unique designs.
3. The trademark/label RADO was stated to be duly registered in India under the Trade Mark Act, 1999.
It was averred that Plaintiff had continuously used its trade mark in relation to goods and business and had built up a worldwide goodwill and reputation thereunder and acquired proprietary rights therein.
It was also stated that Plaintiff had carried out its business activities under the said trademark on the internet through its websites namely www.rado.com [registered in the name of the parent company of the plaintiff-The Swatch Group Ltd] and the aforesaid domain name of the Plaintiff contained extensive information about its goods and business under its trademark.
It was stated that the copyrights 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 its goods and business among other things, within the meaning of Section 14 of CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 3 of 22 the Copyrights Act and aforesaid trademarks were enforceable within the ambit of the Copyrights Act, 1957 as well as by virtue of India's membership to the Berne Convention, the Universal Copyrights Convention and The International Copyright Order, 1991.
It was stated that plaintiff had built up a globally valuable trade under its trademarks and had conducted handsome business there, running into millions of dollars worldwide and had acquired immense goodwill and reputation under the aforesaid trademark.
It was stated further that plaintiff had continuously promoted its trademarks and related goods and business 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 goods and business.
Plaintiff's trademarks and labels were stated to be well known trademarks within the meaning of Section 2(1)(zg) of the Trademarks Act.
CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 4 of 224. It was averred that Defendant was the owner of website radoswiss.com and was carrying out sale of counterfeit goods under the Plaintiff's trademark/tradename RADO and essential part of its domain name. The impugned website was stated to be displaying, offering for sale and selling fake goods like watches, clocks, horological instruments and allied/cognate goods bearing the Plaintiff's Trademark. The Plaintiff had expressed lack of awareness regarding the exact relation, nexus and constitution of the creators of the Defendant, and thus, owner and/or proprietor of defendant's impugned website were shown as JOHN DOE (Ashok Kumar) without any address which would have to be substituted as party instead of "Ashok Kumar" subject to explanation upon causing appearance before the Court.
5. It was stated further that plaintiff had made all efforts to ascertain the details of the impugned website radoswiss.com, and extracted the information available on the online registry data base www.whois.com. However defendant had applied privacy protection and disabled access of its information to the public through 'who is' report.
6. It was stated that the plaintiff had prayed/requested for the service of summons/notices to defendant through e-mail at the following email address [email protected], and via CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 5 of 22 WHATSAPP No.: +91-7901845768 and defendant was also stated to have wrongly mentioned the plaintiff's address as its own address.
It was stated that according to whois.com status of defendant GoDaddy.com, LLC [url-www.godaddy.com], Scottsdale, Arizona, United States of America had provided the impugned domain name/registration to the Defendant.
It was further averred that Plaintiff had further inquired from webhostinghero.com and found that CONTABO GmbH, Munich, Germany, was the web hosting service provider of the defendant's website. The Plaintiff was stated to have learnt about the impugned activities in the 2nd week of August 2019 and in the 4th week of August, 2019, plaintiff had caused a test purchase of impugned goods from the aforesaid website of the defendant and partial payment was made on 07.09.2019, and delivery of product was obtained on 17.09.2019.
7. The cause of action was stated to have arisen firstly in the 2nd week of August, 2019, when the plaintiff noticed the goods bearing the trademark/label RADO identical/similar to the Plaintiff's said trademark/label/trade- name/domain-name RADO on the impugned website of defendant- radoswiss.com and cause CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 6 of 22 of action again arose in the 4th week of August, when Plaintiff made a test purchase of impugned goods after placing an order on the defendant's website. The test purchased product name was "RADO HYPERCHROME CAPTAIN COOK WATCH". The cause of action had further arisen in the last week of August 2019, when some persons interacted on behalf of the defendant through whatsapp no. +917264959813 with the plaintiff for the abovementioned order and cause of action further arose on 07.09.2017, when partial payment was done and test purchased product was delivered vide invoice dated 17.09.2017. The cause of action was stated to be still continuing and subsisting in favor of the Plaintiff and against the Defendant.
8. Since the defendant was soliciting, networking and had intended to sell their impugned goods and business under the impugned trademark/label in the markets of South Delhi viz. Saket, Malviya Nagar, Mehrauli, Hauz Khas and adjoining areas and plaintiff's boutiques and authorised retailers were also situated within the jurisdiction of this Hon'ble Court, hence this court was stated to have territorial jurisdiction to try and decide the present suit.
CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 7 of 229. 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) For a decree of permanent injunction
restraining-
the defendant by itself/themselves as also through his/their individual proprietors/partners, agents, representatives, distributors, assigns, heirs, successors, stockists, importers, domain name/web-
site including the impugned website
email:[email protected]. "radoswiss.com",
and/or any other intermeddler web-sites, e-mails and/or any other domain name or part thereof and all others acting for and on their behalf from Selling, delivering, using, marketing, trading, soliciting, importing, exporting, displaying, advertising, purveying, intending to sell/solicit through the impugned website "radoswiss.com", email:[email protected], or through offline markets or through independent retailers Or any other online marketplaces or online websites CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 8 of 22 or through social medias or by any other mode or manner dealing in or using the impugned trade mark/label/domain name/trade name RADO, radoswiss.com, email:[email protected] [and/or any variants) or any other word/mark which might be identical with and/or deceptively similar word/mark to the plaintiff's said trade mark/label/trade-name/domain- name RADO, www.rado.com in relation to their impugned goods and business of using, trading, selling, manufacturing, marketing etc of- Watches, clocks, horological instruments and other allied/cognate goods Tags, labels, cut-outs, booklets, brochures, boards, accessories, machineries and allied and cognate items 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 CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 9 of 22 rights in the plaintiff's said trade marks and its other variants/formative trademarks/labels iii. Violation of plaintiff's proprietary rights in its trade name/domain name iv. Infringement of plaintiff's copyrights in its labels
(b) Restraining the defendant from disposing off or dealing with their assets including their premises at the addresses mentioned in the Memo of Parties and their 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 adversely effect the plaintiff's ability to recover the costs and pecuniary reliefs thereon.
(c) For an order for delivery up of all the impugned finished and unfinished materials bearing the abovesaid impugned and violative trade mark/label or any other word/mark which might be identical CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 10 of 22 with or deceptively similar to the plaintiff's said trade mark/label/trade name including its blocks, labels, display boards, sign boards, trade literatures and goods 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 their impugned illegal trade activities and a decree for the amount so found in favour of the plaintiff on such rendition of accounts.
(e) The defendant be ordered to serve through email:[email protected], WHATSAPP: +91- 7901845768.
(f) for directing the Department of telecommunications, Ministry of Electronics & Information Technology {MeitY} for taking down the contents of the impugned website "radoswiss.com" and related e-mails, and/or block its view.
CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 11 of 22(g) for direction to GoDaddy.com, LLC, registrar of the impugned website radoswiss.com, to withdraw all support to the impugned website and disable the impugned domain name.
(h) for direction to Contabo GmbH, web-host of the impugned website radoswiss.com, to withdraw all support to the impugned website and to disable the website.
(i) to direct GoDaddy to transfer the impugned website radoswiss.com. to the plaintiff.
(j) for a order for cost of proceedings
10. Upon service of notice, the defendant also appeared to contest the case of plaintiff on its merits and filed his written statement on record, wherein he had taken a preliminary objection that plaintiff was guilty of concealment of material facts as well as for not approaching the court with clean hands. No cause of action was stated to have arisen in favour of the plaintiff and against the defendant, who was a poor tailor working on a meager monthly income in a small uniform shop but was falsely made a party to the present suit.
CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 12 of 2211. On merits it was stated that defendant had no concern or connection with the said website www.radoswiss.com. The remaining contents except those which were either expressly admitted or constituted the matter of record, were denied by the defendant for want of knowledge and also being patently false and incorrect.
12. To this written statement of the defendant, plaintiff had also filed its replication, wherein the preliminary objections taken by the defendant were denied by it and the contents of plaint were reiterated on merits.
13. However, none had had appeared on behalf of the defendant from 24.05.2022 till 11.05.2023, hence, he was proceeded ex-parte vide order dated 11.05.2023.
14. On the pleadings of the parties, Ld. Predecessor vide his order dated 11.05.2023, was pleased to frame following issues:
1. Whether the plaintiff is the registered proprietor of the trademark/label RADO? OPP
2. Whether the defendant is infringing the trademark/label of the plaintiff by selling products bearing the plaintiff's mark? OPP.CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 13 of 22
3. Whether the defendant is infringing the trademark/label of the plaintiff by adopting the impugned website radoswiss.com? OPP
4. whether the suit of the plaintiff has been filed without any cause of action? OPD.
5. Relief.
15. In its ex-parte evidence, plaintiff had examined one Sh. Anand Kumar Arya S/o Late Sh. K.R Arya aged about 38 yrs r/o House No. 15, Khizarabad, Taimoor Nagar, New Delhi , who had placed on record, his affidavit PW1/A in his examination-in- chief reiterating the factual averments of his plaint on solemn affirmation had also placed on record the following documents:-
i) Ex.PW1/1 (Colly) (Page 1-3) Representation/photographs of the products under the Trade Mark/Label of the Plaintiff's.
ii) Ex. PW1/2 (Colly) (Page 4-23) Photographs of Test-purchased impugned products under the impugned trademarks/labels and related documents including invoices, printouts taken from digital camera, e-mails, whatsapp Communications.
CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 14 of 22iii) Ex. PW1/3 (Colly) (Page 24-31) Status and registration certificate with respect to the plaintiff's registrations in India, downloaded from the trademark registry's website.
iv) Ex. PW1/4 (Colly) (Page 32-97) Financial statement for the year 2018 of the plaintiff, documents were downloaded from the plaintiff's website.
v) Ex. PW1/5 (Colly) (Page 98-104) History of the plaintiff downloaded from the plaintiff's website.
vi) Ex. PW1/6 (Colly) (Page 105-106) Advertisements of the plaintiff's brand, downloaded from the plaintiff's website.
vii) Ex. PW1/7 (Colly) (Page 107-109) Whois.com report of the plaintiff's website.
viii) Ex. PW1/8 (Colly) (Page 110-111) Whois.com report of the defendant's website.
CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 15 of 22 ix) Ex. PW1/9 (Colly) (Page 112-113)
Whoishosting.com report of the defendant's
website.
x) Ex. PW1/10 (Colly) (Page 114-125) Relevant printouts from the defendant's impugned website.
xi) Ex. PW1/11 (Colly) (Page 126-128) Screenshots from the plaintiff's website including details of national distributor of the plaintiff in India which were within the jurisdiction of this Hon'ble Court.
Since none had appeared on behalf of the defendant being ex-parte, hence this witness was not cross-examined on his behalf.
16. Thereafter Plaintiff's evidence was closed.
17. Defendant had not lead any evidence as well in his defence.
18. I have heard the arguments advanced at length at bar by Sh. Siddharth Swain for Plaintiff and Sh. Prashant Manchanda CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 16 of 22 and Sh. Angad Singh. Ld. Counsels representing the defendant and also perused the material available on record.
19. In view of aforesaid arguments and submissions of the parties as well as evidence appearing on record, my issue wise findings are as under:
Issue no. 1: Whether the plaintiff is the registered proprietor of the trademark/label RADO? OPP The onus to prove this issue was upon the plaintiff, who had placed on record document Ex. PW1/3, which is nothing but its registration certificate showing that plaintiff is the registered owner of trademark "RADO" and the name of the proprietor was altered to "RADO Ulern AG" (Rado Watch Company limited). However, the present suit has been filed by one RADO Uhren AG as reflected from the title of the suit and memo of parties. No registration certificate in favour of this entity has been placed on record, hence, it could not be treated or regarded as the registered owner of the trademark. Issue is accordingly answered in negative and decided against the plaintiff and in favour of the defendant.
Issue no. 2: Whether the defendant is infringing the trademark/label of the plaintiff by selling products bearing the plaintiff's mark? OPP.CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 17 of 22
Onus to prove this issue was again upon the plaintiff and though present defendant was stated to be selling the counterfeit products through website Radoswiss.com, however, no evidence has been adduced by the plaintiff to link the present defendant with the said website rather the documents filed along with the test purchase affidavit clearly established on record that the payment was made by plaintiff during test purchase to one Richemont India, whose office was shown to be situated at the address as given in the title of plaint. However the said Richemont India has not been made a party to the preset suit, who could have clarified the position as to on whose behalf, it was receiving payments through "Razor Pay App" and whether it was the present defendant or someone else. In view of this finding, the issue is answered in negative and decided against the plaintiff and in favour of the defendant.
Issue no. 3. Whether the defendant is infringing the trademark/label of the plaintiff by adopting the impugned website radoswiss.com? OPP Onus to prove this issue was again upon the plaintiff and in view of my aforesaid findings as given to issue no. 2 above, the present issue is also answered in negative and decided against the plaintiff and in favour of defendant.CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 18 of 22
Issue no. 4. Whether the suit of the plaintiff has been filed without any cause of action? OPD.
The onus to prove this issue was upon the defendant, who had merely filed his written statement on record and had chosen not to cross-examine the plaintiff or to have lead his own evidence in defence. However, it is the settled preposition of law that the suit of plaintiff must stand on its own legs. Perusal of the record further reveals that the cause of action in the present suit was stated to have arisen in favour of a juristic entity, however, no seal or stamp of the said company in whose name the suit has been filed has been affixed either on plaint or any of the other pleadings on record. Moreover, it has not been clear as to who had executed the power of attorney in favour of Ms. Surbhi Bansal, who had further delegated that power to the present signatory of the plaint namely Anand Kumar Arya.
Perusal of the record also reveals that the power of attorney executed in favour of Ms. Surbhi Bansal does not anywhere mentions as to from where, the person authorization her had derived his own powers to execute such power of attorney. Moreover in the said power of attorney, no powers were given to Ms. Surbhi Bansal to further delegate her powers as attorney and to appoint another attorney in her own place. Thus it appears that the suit was not filed by a competent and duly authorised person of CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 19 of 22 the present plaintiff, but also it lacked any cause of action as it has nowhere been mentioned either in the body of the plaint or in the affidavit filed on behalf of the plaintiff in evidence Ex. PW1/A as to what acts were done by the principal and what acts were done by the witness deposing on its behalf in his capacity of being the attorney because it is the settled preposition of law that an attorney cannot depose on behalf of the principal about the facts which are exclusively within the knowledge and domain of the principal and he can at best only depose about the acts which he himself had conducted or performed as an attorney.
In Janki Vashdeo Bhojwani & Anr vs Indusind Bank Ltd. & Ors, decided on 06.12.2004, wherein the Apex Court had inter-alia held as infra:
"The aforesaid judgment was quoted with the approval in the case of Ram Prasad Vs. Hari Narain &Ors. AIR 1998 Raj. 185. It was held that the word "acts" used in Rule 2 of Order III of the CPC does not include the act of power of attorney holder to appear as a witness on behalf of a party. Power of attorney holder of a party can appear only as a witness in his personal capacity and whatever knowledge he has about the case he can state on oath but be cannot appear as a witness on behalf of the party in the capacity of that party. If the plaintiff is unable to appear in the court, a commission for recording his evidence may be issued under the relevant provisions of the CPC".CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 20 of 22
In this regard even the citation of Hon'ble Supreme court in case titled as "United Bank of India Vs. Naresh Kumar AIR 1997 SC 3" as relied upon by the Ld. Counsel for plaintiff is also of no use and avail to him as in para 9 of the cited case, it was held by the Hon'ble Supreme Court that where suits were instituted or defended on behalf of public corporations, then public interest should not have been permitted to be defeated just because of mere technicalities and as such procedural defects which were not going to the root cause of the matter, should not have been allowed to defeat a just cause. Furthermore, it was held in the said judgment that a corporation could have ratified the action of its officer regarding signing the pleadings even at a later stage and also that such ratification could have been either express or implied. Thus it is clear that in the cited case, the person who had signed the pleadings was an officer working with the petitioner/appellant whereas in the case in hands, both the attorney holders of the plaintiff have failed to cite their any direct or indirect association, appointment or engagement with the original plaintiff apart from the pleading that they were constituted attorneys.
Therefore, keeping in view the observations already made above, I have no hesitation in holding that no valid cause of action had arisen in favour of the plaintiff and against the present CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 21 of 22 defendant. Issue is accordingly answered in affirmative and decided in favour of the defendant and against the plaintiff.
5. Relief.
20. In view of my findings given to all the issues above, suit stands dismissed with no order as to costs. Decree sheet be drawn accordingly.
21. File be consigned to record room after completion of necessary legal formalities in this regard.
Digitally signed by LOKESHANNOUNCED IN THE OPEN COURT LOKESH KUMAR
DATED:02.05.2024 KUMAR SHARMA
Date:
SHARMA 2024.05.02
16:01:09 +0530
(Lokesh Kumar Sharma)
District Judge (Commercial Court)-05
South/Saket/New Delhi
CS (COMM) 333/19 Rado Uhren AG Vs. Ashok Kumar Page 22 of 22