$~17
*
IN THE
HIGH COURT OF DELHI AT NEW DELHI
+
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
