FLIPKART INDIA PRIVATE LIMITED VS MARC ENTERPRISES PVT LTD

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*                    IN THE HIGH COURT OF DELHI AT NEW DELHI

+                   FAO 30/2018 & CAV 48/2018, CM APPL. 2669/2018, CM APPL.

2670/2018
M/S FLIPKART INDIA PRIVATE LIMITED	..... Appellant
Through:Mr. Salman Khurshid and Mr. Dayan
Krishnan, Senior Advocates with Mr. Saikrishna
Rajagopal,  Mr.  Sidharth  Chopra,  Mr.  Saurabh
Srivastava, Mr. NitinSharma,	Ms.	Shilpa
Gupta,  Mr.  Ranjeet  Singh,  Ms.  Aakashi  Lodha,
Ms. Roshni W.Anand,  Ms.	Gitanajali	Kaur,
Mr.  Vikramaditya  Singh  and  Ms.  A.  Rehman,
Advocates.
Versus
M/S MARC ENTERPRISES PVT LTD.	..... Respondent

Through: Mr. S.K. Bansal, Mr. Ajay Amitabh Suman, Mr. Pankaj Kumar and Mr. Kapil Kumar Giri, Advocates.

CORAM:

HON'BLE MR. JUSTICE NAJMI WAZIRI

%		O R D E R
		22.01.2018
CAV. No.48/2018

1.                 Since the learned counsel for the caveator has put appearance, the caveat stands discharged.

C.M.No.2670/2018 (for exemption)

2.                 Allowed, subject to all just exceptions.

3.                 The application stands disposed off.

FAO 30/2018 & C.M.No.2669/2018 (for stay)

4.                 Issue notice.

5.                 Mr. S.K. Bansal, the learned counsel for the respondent accepts notice.

6.                 The appellant is aggrieved by an ex-parte order dated 18.01.2018 restraining it from using the trademark ‘MARQ’ for selling electronic goods such as televisions, washing machines and microwave ovens. The appellant sells these goods primarily through the internet and advertises its goods in print media as well.

7.                 The learned Senior Counsel for the appellant submits that:

(i)                although the appellant was represented by counsel before the Trial Court on the day the impugned order was passed, despite a request that a copy of the plaint be supplied to the appellant and it be heard, the request went unheeded and the impugned injunction was passed;

(ii)             the suit for injunction was first instituted by the plaintiff on 11.01.2018, it was then renotified by the court a week later, on 18.01.2018; this itself shows that there was no pressing urgency that the appellant could not have been accommodated even for a day or be heard the very day after a copy of the plaint had been given to it;

(iii)           the trademark of the appellant is distinct from that of the respondent particularly in its font-style and design; that the products being manufactured and/or sold by the appellant are not even manufactured by the respondent;

(iv)           besides the user of the said products would ordinarily be persons who would discern the product on the basis of the distinct visual mark, hence there could be no confusion in their mind about the identity and origin of the

products;

(iv)           the respondent does not have exclusive right to use of the trademark ‘MARC’ because the same mark is being used by other persons all over India as well as in the United States of America. In support of his contention he refers to documents on the record which are print-outs from the websearch of the Trade Mark Register.

8.                 Mr. S.K. Bansal, the learned counsel for the respondent states that the latter has registration of the trademark ‘MARC’ in 5 classes, while the appellant has none. He contends that, therefore, the statutory protection would be available to the respondent with all its force and an injunction against passing-off too would be available against sale of goods using phonetically similar trademark, otherwise the respondent’s interests in the trademark would be irreparably prejudiced. He submits that it is another matter that the appellant has applied for registration of their mark ‘MARQ’ in July, 2017, which was published in the Trade Mark Journal in August, 2017, as the process of registration is a long drawn out process.

9.                 The learned counsel for the appellant submits that their present concern is that in view of the impugned order the inventory of the aforesaid goods which are planned to be disposed off in the ensuing Republic Day weekend sale has been stalled. Therefore, the appellant seeks time till 30.01.2018 to dispose of the same with the trademark ‘MARQ’ printed on them.

10.            Mr. Bansal had sought a passover to obtain instructions and upon having been instructed, he submits that subject to the appellant rendering accounts, the respondent would have no objection to the disposal of the said inventory.

10.            In view of the above, by consent, the following order is passed:

(i)   The appellant is permitted to dispose off its inventory of the aforesaid goods (as mentioned in para 6 & 9) till 30.01.2018 under the trademark ‘MARQ’ and advertise their sale through the print and electronic media;

(ii) This concession is only till 30.01.2018. The impugned order is modified only to this extent.

11.            Reply be filed before the next date of hearing.

12.            At this stage, the learned counsel for the respondent states that he would not be averse to the possibility of an amicable settlement of the lis, being explored. The learned counsel for the parties submit that, upon being instructed, they will discuss the matter amongst themselves and if required the parties too shall sit together and would do so on or before 31.01.2018.

13.            List on 01.02.2018.

14.            Copy of the order be given dasti to the learned counsel for the parties under the signature of the Court Master.

NAJMI WAZIRI, J

JANUARY 22, 2018

RW