Aditya Birla Nuvo Limited Vs Sanwar Lal Ajmera

IN THE HIGH COURT OF DELHI AT NEW DELHI

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Date of Decision: 09.01.2018

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CS(OS) 3837/2014

M/S ADITYA BIRLA NUVO LIMITED                          ..... Plaintiff

Through           Mr.Ajay Amitabh Suman, Mr.Pankaj

Kumar,  Mr.Kapil   Giri,      Mr.Vinay

Shukla and Mr.S.K.Bansal, Advs.

versus

MR.SANWAR LAI AJMERA ALIAS MANISH & ORS.

....... Defendants

Through

None.

CORAM:

HON’BLE MR. JUSTICE JAYANT NATH

JAYANT NATH, J. (ORAL)

1.                 This suit is filed by the plaintiff seeking a decree of permanent injunction to restrain the defendants, etc. from manufacturing, marketing, purveying, supplying, exporting, selling, offering for sale or dealing in readymade clothing and other allied/related products etc. under the trade mark/label PETER ENGLAND or any other mark identical or deceptively

similar to the plaintiff’s aforesaid trade mark. Other connected reliefs are also sought regarding the said trademarks/label PETER ENGLAND.

2.                 It is averred that plaintiff was incorporated on 26.09.1956 under the name and style of M/s Indian Rayon Corporation limited. Subsequent to this on 23.01.1987 the name was again changed to M\s Indian rayon industries limited. Finally, on 27.10.2005 the plaintiff adopted the present name of the company i.e M/S Aditya Birla Nuvo Limited having its registered situated at

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Indian Rayon Compound, Veraval 362266, Gujarat, India. It was also averred that plaintiff is acting through its division in the present suit namely, Madura Fashion & Lifestyle. It is relevant to mention here that vide order dated 25.02.2016 in an application being I.A no. 2641/2016 the court permitted and allowed the name of plaintiff to be substituted as Aditya Birla Fashion & Retail Limited.

3.                 On 07.04.2015 this court noted that the defendants have been served. The said defendants have neither entered appearance not have they filed their Written statements. Accordingly, they were proceeded ex-parte and an injunction order was also grant against the defendants.

4.                 In the plaint, it is pleaded by the plaintiff that it adopted the trademark PETER ENGLAND in the year 1889. The plaintiff has been using the said trade mark/label/trade name in relation to its goods and business since 1997 and has built up a valuable trade, goodwill and reputation. Plaintiff has the registered trademark PETER ENGLAND since 1995. Plaintiff has also registration of the said trademark in respect of other classes details of which are being given at para 7 of the plaint.

5.                 Hence, it is the case of the plaintiff that the trademark PETER ENGLAND have acquired distinctive character and is capable of distinguishing goods sold and manufactured by the plaintiff. The artwork involved in this trademark/label is the original art work of the plaintiff and is duly protected under the copyright act. Thus, it is pleaded that the plaintiff has the sole and exclusive right to use the said trademark/label/trade dress, etc. Reliance is also placed on various injunction orders passed in favour of plaintiff.

6.                 It is pleaded by the plaintiff that in the month of May, 2014, the

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plaintiff came to know that the defendants are manufacturing and marketing goods being readymade garments under the identical trade mark PETER ENGLAND written in identical manner with identical colour scheme as that of the plaintiff in Bhilwara (Rajasthan). It is also stated that the defendants have used the said trade mark/label which is an essential feature of the registered trade mark of the plaintiff as detailed above and infringed the trade mark PETER ENGLAND (Label). Hence, the present suit.

7.                 It is also pleaded by the plaintiff that as soon as they learnt about the defendants’ illegal activities a criminal complaint was filed and FIR was lodged. Raids were conducted at defendants’ premises at Bhilwara where

huge quantity of goods were seized from the premises of the defendants bearing the impugned trademark/label PETER ENGLAND. The plaintiff now claims punitive damages of Rs.20,00,000/- against the defendants.

8.                 The plaintiff led ex-parte evidence and examined Mr. Rishi Bansal as PW-1 who has reiterated the submissions as stated in the plaint. The power of attorney in his favour is marked as PW-1/13. Copies of applications filed before trademark registry is marked as PW-1/3. True representation of plaintiff’s trademark is marked as PW1/2. The copies of the trade mark registration certificates of the plaintiff is marked as PW-1/3. The sales and advertisement figures of the plaintiff is marked as PW-1/7. The documents pertaining to the criminal proceedings in Bhilwara is marked as PW-1/8.

9.                 Even otherwise, defendant Nos. 1, 2 and 3 have not appeared in the matter and neither have filed any written statement. The pleas, of the plaintiff stands uncontested and un-rebutted.

10.              It is quite clear that on account of a prior user of the trade mark PETER ENGLAND and the goodwill generated by the plaintiff on account

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of extensive user, the plaintiff has common law rights in the said trade mark. The plaintiff also has statutory rights in the said trade mark. The action of defendants No.1, 2 and 3 in trying to sell garments, cloth, etc. using the said trade mark is clearly in violation of the rights of the plaintiff.

11.            Learned counsel for the plaintiff has stressed that this court may award punitive damages to the plaintiff. It has been pleaded that a decree of damages to the tune of Rs.20,01,000/- be passed. Reliance is placed on a seizure report to submit that more than 20,000/- meters of cloth bearing the

trademark ‘Peter England’ has been seized. The product of the defendant was of inferior quality and tarnished the goodwill and reputation of the plaintiff. Reliance is also placed on the judgment of this Court in Time Incorporated v. Lokesh Srivastava & Anr., 2005 (30) PTC 3 (Delhi).

12.            Keeping in view the conduct of the defendant, in my opinion, it is a fit case to grant punitive damages amounting to Rs.5 lacs in favour of the plaintiff and against the defendant.

13.            Accordingly, the suit is decreed in favour of the plaintiff and against Defendant Nos. 1, 2 and 3 in terms of prayer 31(a) of the plaint. A decree is also passed in favour of the plaintiff and against the defendants for a sum of Rs.5 lacs. The plaintiff shall also be entitled to costs.

14.            The suit stands disposed of.

(JAYANT NATH)

JUDGE

JANUARY 9, 2018

Twinkle

corrected & released on 30.07.2018.

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Inchee Tape Vs Inchie Tape

$~17

*                    IN THE HIGH COURT OF DELHI AT NEW DELHI

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FAO 304/2019

M/S INCHEE TAPE                                                                            ..... Appellant

Through         Mr.S.K.Bansal            with             Mr.Ajay

Amitabh Suman, Mr.Pankaj Kumar, Advs.

Versus

M/S. INCHIE TAPE & ANR

..... Respondent

Through

None.

CORAM:

HON'BLE MS. JUSTICE REKHA PALLI

ORDER

%                                         31.07.2019

C.M.No.34334/2019 (for exemption)

1.                Exemption allowed, subject to all just exceptions.

C.M.No.34333/2019 (for seeking summoning of the subject matter suit bearing C.S.No.69/2019)

2.                Learned counsel for the appellant submits that as the complete record of the learned Trial Court has been filed, he does not press the present application.

3.                Accordingly, the application stands disposed of as not pressed.

FAO 304/2019 & CM No.34332/2019 (for stay)

4.                 The present appeal impugns the order dated 07.06.2019 passed by the learned ADJ in C.S.No.69/2019, whereby in a suit for infringement of trademark filed by the appellant/plaintiff, the learned Trial Court issued summons in the suit and notice in the applications

preferred by the appellant for an ex parte ad-interim injunction and for the appointment of a Local Commissioner for 05.08.2019. However, as the trial Court has neither granted any ad-interim injunction nor appointed any Local Commissioner, as prayed for by the appellant, the present appeal has been filed.

5.                 The appellant had filed the subject suit claiming that it is the

owner of the mark ‘INCHEE TAPE’, registered under the Trade Marks Act, 1999 bearing Trademark No. 3235991, which has been in use since 2008 in relation to its business of manufacturing and marketing of textile goods, bed and table covers. In March 2016, the appellant is stated to have learnt that the respondent was using an identical trademark/label ‘INCHE TAPE’ and ‘INCHIE TAPE’ (‘impugned trademark’ in short) in relationship with textile goods, pursuant whereto the appellant served a legal notice dated 09.05.2016 to the respondent challenging the infringement of its registered trademark. It was further claimed that the respondent, on receipt of the said notice, stopped using the impugned trademark/label in relation to the impugned goods and business but had recently once again resumed the said infringement and has applied for registration of the trade mark ‘INCHIE TAPE’, which it now proposes to use, even though the said trade mark is deceptively similar to the appellant’s trademark and is also being sought to be used on similar goods and sold in the same markets.

6.                 Learned counsel for the appellant submits that the trial Court, under the impugned order, has not accepted the appellant’s prayers for

grant of ad-interim ex parte relief and the appointment of a local

commissioner by observing that it was not possible at this stage to ascertain as to who is the prior user of the trademark. He submits that the said finding of the trial Court is contrary to the record and overlooks the fact that the documents filed with the plaint clearly showed the appellant as the registered trademark-holder of ‘INCHEE TAPE’ w.e.f. 14.04.2016 with a user of the trademark w.e.f. 01.01.2008. On the other hand, the respondent’s application for registration of trademark filed on 31.03.2018, in itself, shows that the respondent seeks registration of the trademark ‘INCHIE TAPE’ which it proposes to use, thereby making it evident that the appellant has clearly been the prior user of the trademark, viz., the respondent. He further submits that the trademark/label sought to be registered by the respondent is deceptively similar to the appellant’s registered trademark and is being used on identical goods sold in the same markets as those where the appellant’s goods are being sold.

7.                 He  further  submits  that  the  appellant  has  been  using  the

trademark/label ‘INCHEE TAPE’ in relation to its business of manufacturing, marketing, sale and trade of silk clothing, traditional Indian wear, formal wear, sportswear, footwear, and casual clothing for men, women and children continuously, extensively and exclusively since the year 2008. He submits that the appellant has also been promoting the said trademark/label by extensive advertisement and publicity and that, resultantly, the said trademark/label is identified with the appellant and no one else. He further submits that the respondent, by trying to take undue benefit of the appellant’s goodwill, has now malafidely again started using the impugned

trademark/label in the year 2018 which would not only cause immense loss to the goodwill and reputation of the appellant but will also cause irreparable damage to his business.

8.                 He  submits  that  the  trial  Court  has  not  only  rejected  the

appellant’s application on an erroneous presumption but has, without any basis, not even appointed a Local Commissioner to visit the premises of the respondent and seize the offending goods. He further submits that the trial Court has failed to appreciate that, in case, any prior notice is given to the respondent, the very purpose of the Local Commissioner would stand defeated.

9.                 He places reliance on a decision of this Court in ITC Limited Vs. M/s Arora Offset Printers & Ors. 2017 (72) PTC 425 (Del) where the Division Bench, by relying upon the decision of the Hon’ble

Supreme Court in Laxmikant V. Patel Vs. Chetanbhai Shah & Anr. (2002) 3 SCC 65, had, in similar circumstances, not only granted an ad-interim ex parte injunction but had also appointed Local Commissioners to visit the premises of the respondent therein to seize the offending goods.

10.            Having perused the record, including the registered trademark

of the appellant, as also the respondent’s application for registration of its proposed trademark ‘INCHIE TAPE’, I find that the appellant has been able to prima facie establish that the impugned trademark being sought to be used by the respondent is deceptively similar to that of the appellant’s registered trademark and is being used on similar merchandise. Thus, I find merit in the submission of the learned counsel for the appellant that non-grant of

an ad-interim ex parte injunction to the appellant, in the present facts and circumstances, would cause irreparable loss and injury to the appellant. The balance of convenience and equity are also in favour of the appellant and against the respondents.

11.            Issue notice in the appeal as well as in the application, to the respondents by ordinary process and speed post, returnable on 04.11.2019 before the roster Bench.

12.            Accordingly, till the next date, an ad-interim ex parte injunction is granted against the respondent restraining the respondents, their agents and persons acting under their authority from manufacturing, advertising and selling any merchandise bearing the impugned trademark/label namely ‘INCHIE TAPE’/’INCHE TAPE’ or any

other deceptively similar label.

C.M. No.34335/2019 (for appointment of Local Commissioner)

13.            This application has been filed by the appellant seeking appointment of a Local Commissioner to inspect the premises of the respondent to seize any goods bearing the impugned trademark or any other deceptively similar trade mark/label.

14.            In view of the nature of the application, notice to the respondents would defeat the very purpose of appointing a local commissioner as prayed and therefore application is being taken up for disposal.

15.            In the light of the material placed on record, I am of the view that a case for appointment of a local commissioner to visit the premises of the respondents, is made out and would in fact serve the interest of justice. Accordingly, the application under Order XXVI

Rule 9 of the CPC for appointment of a Local Commissioner is allowed. Mr. Mohit Sharma, Advocate (Mobile No. 9999111858) is appointed as Local Commissioner with directions to visit the premises of the respondent no.1 situated at 41, Santushti Shopping Complex,

Opposite Samrat Hotel, New Delhi - 110021. The Local Commissioner will seize all the infringing goods which contain the impugned trademark/label “INCHE TAPE’ or ‘INCHIE TAPE’ and prepare an inventory thereof. The Local Commissioner shall also inspect and sign the records of the respondent’s accounts including ledgers, cash registers, stock registers and invoices available at the site. The fee of the Local Commissioner for executing the commission is fixed at a sum of Rs.1,00,000/- to be borne by the appellant. In the event the owners/occupants of the premises in question do not cooperate in the execution of the commission, the Local Commissioner is permitted to break open the locks of the aforesaid premises.

16.            It is directed that the Local Commissioner will visit the aforenoted premises positively within a period of one week from the date of this order. He shall submit his report within a period of two weeks from the date of execution of the commission.

17.            The S.H.O. of the concerned area is directed to provide adequate police aid and assistance to the Local Commissioner, if the same is requisitioned by him while executing the commission.

18.            The application is disposed of.

19.            Compliance be made with the requirements of Order XXXIX Rule 3 of the Code of Civil Procedure, 1908 within three days after

the execution of the commission which is being directed as prayed for.

Dasti.

JULY 31, 2019/sr                                                                REKHA PALLI, J