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Showing contexts for: SHALIN MEHTA in Damodarbhai Kumanbhai Kansagara vs World Express Elevator on 4 May, 2023Matching Fragments
7. Being aggrieved by the impugned order passed by the learned Commercial Court, the unsuccessful plaintiff has preferred this group of AO under Order 43 Rule 1(r) of the Code C/AO/20/2023 ORDER DATED: 04/05/2023 read with sections 5 and 3 of the Commercial Court Act, 2015 inter alia on the ground mentioned in the AO.
7.1 Heard learned Senior Counsel Mr. Shalin Mehta assisted by learned advocate Mr. AA Vakil appearing for the plaintiff and learned advocate Mr. Hasit Tolia as well as learned advocate Ms. Pooja Acharya representing the defendants.
8. Learned Senior Counsel Mr. Shalin Mehta for the plaintiff would argue that the impugned order passed by the learned Commercial Court is against the settled provisions of Order 39 Rule 1 and 2 of the Code r/w section 135 of the Trademark Act, 1999, 1999.
8.1 Learned Senior Counsel Mr. Shalin Mehta would further submit that the learned Commercial Court has failed to take into consideration well settled principles of granting or refusing injunction in case of registered trade mark and as such, the impugned order pased by the learned Commercial Court is against the settled principles of law. Taking us through the registration certificate of the plaintiff, learned Senior Counsel Mr. Mehta would submit that on 30.10.2015, the word mark of the plaintiff 'Express' Electro Elevators has been registered. The Registrar of Trademark at the time of registration of the word mark, specifically held that the plaintiff is using word mark 'Express' since 1999, precisely from 1.4.1999. There is no plea or evidence produced by the defendants to show that the plaintiff is not a prior user of the work mark, which contained the word C/AO/20/2023 ORDER DATED: 04/05/2023 'Express'.
8.3 Learned Senior Counsel Mr. Shalin Mehta would further submit that the learned Commercial Court has failed to notice such action of passing off and thereby, has committed error much less error of understanding the fact in background of the provisions of law, which is required to be corrected by allowing these appeals.
8.4 Learned Senior Counsel Mr. Shalin Mehta has taken this Court through the Convenience Set Nos.1 and 2 filed along with the AOs and would submit that the plaintiff is in business of manufacturing elevator, escalators etc. since more than two decades and at the very same time, the plaintiff is in the business of service of such elevator, escalators etc. since then, which is proved from the documentary evidence produced before the learned Commercial Court from Mark 4/1 to 4/316 and which shows that the plaintiff besides having registered trademark has also earned high reputation and tremendous goodwill in the business of selling elevator, lift, escalators etc. and as such, the plaintiff is not only the registered trademark holder, but he also holds tremendous reputation and goodwill in regard to the trademark, whereby, word 'Express' has been prominently used. The plaintiff is prior user indisputably. However, the defendants in order to encash such popularity are also using the word 'Express' prominently in their trademark and word mark and thereby, the defendant are causing mischief of passing off as well. But the learned Commercial Court has C/AO/20/2023 ORDER DATED: 04/05/2023 failed to notice such aspect and thereby, has committed error much less error of understanding the law.
8.7 Another judgment on which Learned Senior Counsel Mr. Shalin Mehta is relied upon is in case of Kaviraj Pandit Durga Dutt Sharma Vs. Navratna Pharmaceuticals Laboratories reported in AIR 1965 SC 980 to contend the same arguments that word "Navratna" though is having a common household meaning, since the plaintiff of that case was using prior to the defendant, the same is required to be protected and as such, was protected by the Hon'ble Apex Court.
8.8 In regard to submission that generic name having dictionary meaning can also be protected, Learned Senior Counsel Mr. Shalin Mehta referred to recent decision of the Hon'ble Apex Court in case of Renaissance Hotel Holdings Inc. C/AO/20/2023 ORDER DATED: 04/05/2023 Vs. B. Vijaya reported in 2022(5) SCC 1, wherein the Hon'ble Apex Court held that word Renaissance since has been registered for the trademark of the plaintiff, the Hon'ble Apex Court has protected the plaintiff even in case where word Renaissance is used with prefix and suffix. Relying upon this judgment, learned Senior Counsel Mr. Mehta would further submit that even if the word mark has a dictionary meaning, if it is registered, it has to be protected.