Court can pass summary Judgement under Order 13 A of commercial court act even suo moto
Introduction: The case of Mallcom (India) Limited & Anr. v. Rakesh Kumar & Ors. [CS(COMM) 480/2016], decided by the Delhi High Court on March 19, 2019, before Justice Rajiv Sahai Endlaw, is a landmark decision in Indian intellectual property law, demonstrating the efficacy of summary judgment in commercial disputes involving trademark infringement, passing off, and copyright infringement. The plaintiffs, Mallcom (India) Limited and Mallcom Safety Pvt. Ltd., sought to restrain the defendants from using a deceptively similar trademark, "TICER," for safety shoes, which infringed their registered "TIGER" mark. The court’s grant of summary judgment without a formal application under Order XIIIA of the Code of Civil Procedure (CPC) underscores the judiciary’s commitment to expeditious resolution of commercial suits under the Commercial Courts Act, 2015. This case study provides a comprehensive analysis of the factual and procedural background, issues, submissions, judicial reasoning, cited judgments, and the legal principles established, offering insights into trademark protection and procedural innovations in commercial litigation.
Detailed Factual Background: Mallcom (India) Limited and Mallcom Safety Pvt. Ltd., market leaders in safety equipment, particularly industrial safety shoes, adopted the stylized trademark "TIGER" (Label) around 2004-05, using it intermittently and adopting it as their primary brand in 2010. The mark, registered on September 30, 2010, in Class 9 (No. 2030791) for safety shoes and equipment, features a distinctive stylization of the word "TIGER," with unique letter designs (e.g., "T" as a cursive-reverse J, "G" as a C with a bar). The plaintiffs secured copyright registration for the mark’s artistic work on October 28, 2012, and design registration for the shoe sole on May 23, 2007. Their safety shoes, sold under the "TIGER" mark, achieved BIS and ISO certifications and an India Design Mark Award. Sales grew from Rs. 11.6 crores in 2009-10 to Rs. 31 crores in 2013-14, with significant advertising expenditure. The plaintiffs’ products were exported globally, packaged in a distinctive get-up with unique color combinations, and they held pending applications for related marks in Classes 8, 9, and 25.
The defendants, Rakesh Kumar, Manoj Kumar, M.K. Sales Corporation, Adeeba International, and Alina Exim, were accused of manufacturing and selling inferior safety shoes under the mark "TICER," adopted in 2015. Defendant no. 4 (Adeeba International) claimed proprietorship of "TICER," applying for its registration on June 13, 2015, in Class 9. The defendants’ products mimicked the plaintiffs’ packaging, sole design, and mark placement, allegedly posing as authorized dealers and violating Legal Metrology (Packaging Commodities) Rules, 2011, by omitting manufacturing details. The plaintiffs provided comparative images showing near-identical trade dress and marks, alleging counterfeiting and consumer deception.
Detailed Procedural Background:The plaintiffs filed the suit [CS(COMM) 480/2016] on April 29, 2016, seeking permanent injunctions against trademark infringement, passing off, copyright infringement, and design infringement, along with delivery of infringing goods, rendition of accounts, and damages. They filed IA No. 5571/2016 for interim relief under Order XXXIX Rules 1 and 2 CPC. On May 5, 2016, the court issued summons, granted an ex parte ad-interim injunction restraining the defendants from using the "TICER" mark, and appointed commissions to seize infringing goods. Defendants no. 4 and 5 filed IA No. 12236/2017 under Order XXXIX Rule 4 CPC to vacate the interim order and IA No. 11941/2017 to amend their written statement, which was dismissed on October 5, 2018. Separate written statements were filed by defendants no. 1-3 and no. 4-5, with the plaintiffs filing replications. Defendants no. 4 and 5 also filed IA No. 12890/2018 under Order XI Rule 10 CPC and IA No. 12370/2018 under Section 151 CPC, though their specifics were not detailed.
On January 17, 2019, the plaintiffs sought summary judgment without a formal application, relying on Chapter XA Rule 1 of the Delhi High Court (Original Side) Rules, 2018, effective November 1, 2018. The court queried the procedural validity, noting Order XIIIA CPC’s requirement for an application, and adjourned the hearing to February 14, 2019. The interim injunction was made absolute on January 17, 2019. Defendants claimed a pending Special Leave Petition (SLP) against the amendment dismissal, but its outcome remained unreported. After hearing arguments on summary judgment and merits, the court reserved orders on February 14, 2019, delivering the judgment on March 19, 2019.
Issues Involved in the Case:The case raised the following issues:Whether the court could grant summary judgment without a formal application under Order XIIIA CPC, given Chapter XA Rule 1 of the Delhi High Court (Original Side) Rules, 2018?Whether the defendants’ use of the "TICER" mark infringed the plaintiffs’ registered "TIGER" trademark and copyrighted artistic work.
Plaintiff's submission:The plaintiffs argued that their "TIGER" mark, registered in 2010, was distinctive and widely recognized, supported by sales (Rs. 11.6-31 crores), certifications, and awards. They contended that the defendants’ "TICER" mark, adopted in 2015, was deceptively similar, differing only by substituting “G” with “C,” and mimicked the stylized font, packaging, and sole design, causing confusion. The plaintiffs provided invoices from 2006, web pages, catalogues, and certifications to prove use since 2004-05. They argued that their prior registration and use entitled them to injunctions for infringement (Section 29, Trade Marks Act, 1999), passing off, and copyright infringement, citing Sun Pharmaceuticals v. Cipla [2009 (39) PTC 347 (DB)] for non-use as no defense. On summary judgment, they relied on Chapter XA Rule 1, harmonized with Order XIIIA, per Infrastructure Leasing v. Commissioner of Value Added Tax [MANU/DE/0902/2010], asserting no triable issues existed due to the defendants’ weak defense. They sought delivery of seized goods but did not press for design infringement or damages, focusing on injunctions and costs.
Defendant's submission: The defendants argued that the court lacked authority to grant summary judgment without an Order XIIIA application, citing Section 13(2) of the Commercial Courts Act for statutory precedence. They claimed “TICER” was distinct, honestly adopted by defendant no. 4 in 2015, with a pending registration application and copyright. Defendants no. 1-3, as employees or distributors of defendant no. 3 (proprietorship of Ms. Niti Devi), relied on defendants no. 4-5’s written statement. They denied the plaintiffs’ use of “TIGER” since 2004, alleging non-use and challenging invoices as unverified, citing no exclusive sales for “TIGER.” The defendants disputed the comparison images as misleading and denied posing as plaintiffs’ dealers. They argued that the plaintiffs’ assignment of a related mark (No. 1488116) to Delta Plus undermined their rights, though this was barred post-amendment dismissal. The defendants offered no substantive defense on similarity, focusing on procedural objections and general denials.
Detailed Discussion on Judgments and Citations: The court relied on several precedents to resolve procedural and substantive issues. Below is a detailed discussion of each judgment, its citation, and context:
Infrastructure Leasing & Financial Services Ltd. v. Commissioner of Value Added Tax, MANU/DE/0902/2010: Cited by the plaintiffs, this Delhi High Court decision supported harmonious construction of conflicting provisions. The court used it to reconcile Chapter XA Rule 1 with Order XIIIA, holding that the former supplemented the latter, allowing summary judgment without an application at the case management stage.
K.R. Impex v. Punj Lloyd Ltd., 2019 SCC OnLine Del 6667:Cited by the court, this Delhi High Court decision (post-dating the hearing) confirmed that Chapter XA Rule 1 permitted summary judgment without an Order XIIIA application, reinforcing the court’s procedural ruling.
Ashoka Estate Pvt. Ltd. v. Dewan Chand Builders Pvt. Ltd., 2009 (113) DRJ 193: Cited by the court, this Delhi High Court decision discussed Order XV CPC’s applicability for disposing suits without issues, supporting the court’s view that commercial suits could be resolved summarily under existing CPC provisions.
Kawal Sachdeva v. Madhu Bala Rana, 2013 SCC OnLine Del 1479: Cited by the court, this Delhi High Court decision reiterated Order XV’s scope, reinforcing the court’s authority to dispose of suits summarily when no material issues arise.
Bhupinder Jit Singh v. Sonu Kumar, 2017 SCC OnLine Del 11061: Cited by the court, this Delhi High Court decision supported summary disposal under Order XV, aligning with the court’s approach to expedite commercial suits.
Vireet Investments Pvt. Ltd. v. Vikramjit Singh Puri, 2017 SCC OnLine Del 11183: Cited by the court, this Delhi High Court decision further endorsed Order XV’s applicability, bolstering the court’s procedural framework for summary judgment.
Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad, (2018) 249 DLT 220: Cited by the court, this Delhi High Court decision reinforced summary disposal principles, supporting the court’s reliance on Order XV and Chapter XA.
Bhavna Khanna v. Subir Tara Singh, 2019 SCC OnLine Del 6978: Cited by the court, this Delhi High Court decision aligned with the court’s view on summary disposal, emphasizing expeditious resolution in commercial suits.
Sun Pharmaceuticals Industries Ltd. v. Cipla Ltd., 2009 (39) PTC 347 (DB): Cited by the court, this Delhi High Court Division Bench decision held that non-use is not a defense to infringement unless the mark is removed via a Registrar application. The court applied it to reject the defendants’ non-use plea, as no removal application was filed.
H&M Hennes & Mauritz AB v. HM Megabrands Pvt. Ltd., (2018) 251 DLT 651: Cited by the court, this Delhi High Court decision reaffirmed that non-use does not bar infringement actions and supported the plaintiffs’ right to injunctions despite the defendants’ honest adoption claim, relevant to both infringement and passing off.
N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714:Cited by the court, this Supreme Court decision held that advertising constitutes use of a mark. The court used it to validate the plaintiffs’ evidence of use through web pages, catalogues, and advertisements.
Revlon Inc. v. Sarita Manufacturing Co., AIR 1998 Del 38: Cited by the court, this Delhi High Court decision reinforced that advertisements qualify as mark use, supporting the plaintiffs’ claim of continuous use.
N.R. Dongre v. Whirlpool Corporation, AIR 1995 Del 300: Cited by the court, this Delhi High Court decision (predecessor to the Supreme Court ruling) similarly recognized advertising as use, bolstering the plaintiffs’ evidence.
Indian Shaving Products Ltd. v. Gift Pack, 1998 (18) PTC 698 (Del): Cited by the court, this Delhi High Court decision supported the principle that advertisements constitute use, affirming the plaintiffs’ documented use.
J.N. Nichols (Vimto) Ltd. v. Rose & Thistle, AIR 1994 Cal 43 (DB): Cited by the court, this Calcutta High Court Division Bench decision aligned with the advertising-as-use principle, reinforcing the plaintiffs’ claim.
Info Edge (India) Pvt. Ltd. v. Shailesh Gupta, (2002) 98 DLT 499: Cited by the court, this Delhi High Court decision held that competitors in the same trade are presumed aware of prior marks, negating honest adoption. The court applied it to find the defendants’ adoption mala fide.
Dr. Reddy’s Laboratories Ltd. v. Reddy Pharmaceuticals Ltd., (2004) 113 DLT 363: Cited by the court, this Delhi High Court decision (affirmed in Reddy Pharmaceuticals v. Dr. Reddy’s Laboratories, 2007 (99) DRJ 331 (DB), SLP dismissed) supported the presumption of awareness, reinforcing the defendants’ bad faith.
Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147: Cited by the court, this Supreme Court decision held that courts determine similarity in infringement and passing off cases, not witnesses, guiding the court’s visual comparison of “TIGER” and “TICER.”
Larsen & Toubro Ltd. v. Lachmi Narain Traders, (2008) 149 DLT 46 (DB): Cited by the court, this Delhi High Court Division Bench decision followed Mahendra & Mahendra, supporting the court’s authority to assess similarity without trial.
Staar Surgical Company v. Polymer Technologies International, 2016 SCC OnLine Del 4813: Cited by the court, this Delhi High Court decision reinforced judicial assessment of similarity, aligning with the court’s approach to deceptive similarity.
Kanungo Media (P) Ltd. v. RGV Film Factory, 2017 SCC OnLine Del 8768: Cited by the court, this Delhi High Court decision supported the court’s role in determining similarity, relevant to the “TIGER” vs. “TICER” comparison.
Jaideep Mohan v. Hub International Industries, (2018) 249 DLT 572: Cited by the court, this Delhi High Court decision endorsed judicial determination of similarity, supporting the court’s findings on deceptive similarity.
The Financial Times Ltd. v. The Times Publishing House Ltd., (2016) 234 DLT 305: Cited by the court, this Delhi High Court decision reinforced the court’s authority to assess similarity, applied to the visual and stylistic identity of the marks.
Biofarma v. Bal Pharma Ltd., CS(COMM) No. 1668/2016 (Decided on November 22, 2018):Cited by the court, this Delhi High Court decision supported judicial assessment of similarity, guiding the court’s conclusion on consumer confusion.
Allied Blenders & Distillers Pvt. Ltd. v. Shree Nath Heritage Liquor Pvt. Ltd., 2014 SCC OnLine Del 3412: Cited by the court, this Delhi High Court decision noted the human tendency to identify words by first and last letters, applied to find “TICER” deceptively similar to “TIGER.”
Pratibha M. Singh v. Singh & Associates, 2014 SCC OnLine Del 1982:Cited by the court, this Delhi High Court decision supported the letter-identification principle, reinforcing the likelihood of consumer confusion.
The Gillette Company LLC v. Tigaksha Metallics Pvt. Ltd., (2018) 251 DLT 530:Cited by the court, this Delhi High Court decision aligned with the letter-identification principle, supporting the court’s similarity findings.
Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65: Cited by the court, this Supreme Court decision held that honest adoption does not bar injunctions if marks are similar, guiding the court’s grant of injunctive relief.
The Timken Company v. Timken Services Pvt. Ltd., (2013) 200 DLT 453:Cited by the court, this Delhi High Court decision supported injunctions despite honest adoption, applied to prioritize consumer protection.
Jolen Inc. v. Doctor & Company, 2002 SCC OnLine Del 518: Cited by the court, this Delhi High Court decision reinforced that similarity overrides honest adoption for injunctions, supporting the plaintiffs’ relief.
Detailed Reasoning and Analysis of Judge: Court addressed both procedural and substantive issues with precision. On the procedural question, the court held that Chapter XA Rule 1 of the Delhi High Court (Original Side) Rules, 2018, empowered it to grant summary judgment sua sponte during case management, harmonizing it with Order XIIIA’s application requirement (Infrastructure Leasing, K.R. Impex). The court noted that Section 13(2) of the Commercial Courts Act applied to appeals, not procedure, and that Section 122 CPC allowed High Courts to amend CPC rules, including Order XIIIA. The court also invoked Order XV Rule 1 CPC, which permits judgment when no issues arise (Ashoka Estate), reinforcing its authority to dispose of the suit summarily.Substantively, the court applied Order XIIIA’s test: whether the defendants had a real prospect of defending the claim and if compelling reasons existed for trial. The court found no triable issues, reasoning as follows:
Prior Registration and Use: The plaintiffs’ 2010 registration (No. 2030791) predated the defendants’ 2015 application, establishing seniority (Sun Pharmaceuticals). The defendants’ unchallenged denial of invoices from 2006 lacked substance, as tax-paid invoices, web pages, catalogues, BIS/ISO certifications, and awards evidenced use since 2004 (N.R. Dongre). The defendants’ failure to seek removal of the plaintiffs’ mark for non-use negated their defense (H&M Hennes).
Deceptive Similarity: The court visually compared “TIGER” and “TICER,” finding them deceptively similar due to identical stylization and the substitution of “G” with “C,” unlikely to be noticed by unwary consumers (Mahendra & Mahendra, Allied Blenders). The Registrar’s description of “TIGER” as “CIGER” and the defendants’ identical mark placement reinforced confusion (Larsen & Toubro).
Bad Faith: The defendants, in the same trade, were presumed aware of the plaintiffs’ mark, and their 2015 adoption without challenging the plaintiffs’ registration indicated mala fide intent (Info Edge, Dr. Reddy’s). The invented word “TICER” lacked explanation, unlike the English word “TIGER” (Laxmikant Patel).
Passing Off and Copyright: The defendants’ mimicry of packaging and mark placement constituted passing off, as the plaintiffs’ trade dress was distinctive (H&M Hennes). The copyrighted stylization was infringed by identical letter designs (Jolen Inc.).
No Triable Issues: The defendants’ general denials and failure to explain honest adoption did not warrant trial, as similarity alone justified injunctions (Timken Company). The amendment plea regarding assignment was irrelevant, as it concerned a different mark (Insecticides India).
The court declined relief for design infringement, as not pressed, and for damages, due to lack of trial evidence, but awarded costs considering the defendants’ 2015-2016 use. The balance of convenience favored the plaintiffs, as consumer confusion risked irreparable harm, outweighing the defendants’ investment in infringing goods.
Final Decision: On March 19, 2019, the Delhi High Court passed a decree in favor of the plaintiffs, granting: (i) permanent injunctions restraining the defendants from infringing the “TIGER” trademark, copyrighted work, and passing off [prayer paragraphs 35(b), (c), (e)]; (ii) delivery of seized infringing goods to the plaintiffs within one month; and (iii) costs of Rs. 6 lakhs. The court granted liberty to sue separately for design infringement and disposed of the suit via summary judgment, with the decree sheet to be drawn up.
Law Settled in the Case: The case established the following legal principles:Summary Judgment Without Application: Chapter XA Rule 1 of the Delhi High Court (Original Side) Rules, 2018, allows courts to grant summary judgment sua sponte during case management, supplementing Order XIIIA CPC, enhancing expeditious disposal of commercial suits.Trademark Infringement: Prior registration and use confer rights to restrain junior users, and non-use is no defense unless challenged via a Registrar application (Section 29, Trade Marks Act, 1999).Deceptive Similarity: Courts determine similarity based on consumer perception, focusing on visual and stylistic identity, where minor letter changes (e.g., “G” to “C”) do not avert confusion.Passing Off: Mimicry of trade dress and mark placement by a junior user constitutes passing off when the senior mark is distinctive and widely recognized.Copyright in Stylized Marks: Artistic stylization of a trademark is protectable under the Copyright Act, 1957, and identical replication infringes such rights.Bad Faith Adoption: Competitors are presumed aware of prior marks in the same trade, and unexplained adoption of similar marks indicates mala fide intent, negating honest adoption defenses.Relief Scope: Honest adoption does not bar injunctive relief if marks are similar, though it may influence damages; costs can account for limited infringing use without trial.
Mallcom (India) Limited Vs Rakesh Kumar:March 19, 2019: CS(COMM) 480/2016:: High Court of Delhi:Hon'ble Judge Shri Rajiv Sahai Endlaw, J.
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
