EVEREADY INDUSTRIES INDIA LTD. Vs MR. SANAJAY CHADHA & ANR

IN THE HIGH COURT OF DELHI AT NEW DELHI

+CS(OS) 1422/2009

EVEREADY INDUSTRIES INDIA LTD. ..... Plaintiff

Through: Mr. Ajay Sahni, Advocate with Mr.

Ankur Sangal, Advocate and Ms.

Sucheta Roy, Advocate.

Versus
MR. SANAJAY CHADHA & ANR	..... Defendants
Through:	Mr. S.K. Bansal, Advocate with Mr.
	Ajay Amitabh Suman, Advocate and
	Mr. Amit Chanchal Jha, Advocate,
	Mr. Rahul Sharma, Advocate and Mr.
	Vinay Shukla, Advocate.

CORAM:

HON'BLE MR. JUSTICE VALMIKI J. MEHTA

	O R D E R
%	26.04.2016

I.A. No.3478/2016 (under Order 39 Rule 2A CPC by plaintiff)

1. By this application under Order 39 Rule 2A of the Code of

Civil Procedure, 1908 (CPC), plaintiff pleads violation of injunction order

passed by this Court on 21.12.2010 by the defendants. It is the case argued

CS(OS) No.1422/2009

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before this Court in support of the application under Order 39 Rule 2A CPC

that defendants are violating the injunction order on account of using the

EVEREADY device i.e the stylization and font of the depiction of the

wordmark EVEREADY.

2. In order to understand as to what is the scope of the injunction

order granted in favour of the plaintiff and only whose violation will result

in a cause of action arising under Order 39 Rule 2A CPC, let me reproduce

the operative portion of the order dated 21.12.2010 whereby the plaintiffs’

injunction application was allowed to an extent and disposed of. The

relevant portion of the order dated 21.12.2010 reads as under:-

“In view of the facts and circumstances discussed above, I am of the considered view that the plaintiff is not entitled to grant of ad interim injunction against use of the word mark EVEREADY by the defendants in respect of the screw drivers and pliers.

Admittedly, the defendants have already been restrained by IPAB from using EVEREADY (device). Hence, there is no need for the Court to injunct against use of this device by the defendants. The defendants, however, will not use the word trademark ‘EVEREADY’ except in respect of the screw drivers and pliers. If, however, the registration in favour of the defendant is cancelled, they will forthwith stop the use of the word mark ‘EVEREADY’ even in respect of screw drivers and pliers. The interim order passed by this Court on August 24, 2009 stands modified accordingly. The observation made in this order being tentative and having been necessitated for the purpose of taking a prima facie view, will not

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affect the decision of the suit in any manner. The applications stand disposed of.

The parties are directed to appear before the Joint Registrar for admission/denial of documents on 14th February, 2011. The matter be listed for framed of issues on 04th April, 2011.” (underlining added)

3. It is trite that an issue of contempt or violation of the injunction order by invoking Order 39 Rule 2A CPC has to be understood in terms of clear cut directions which are issued by the court. Since contempt is a very serious matter, it is the exact violation of the injunction order which will result in contempt by the guilty party. The operative portion of the order dated 21.12.2010 has been reproduced above, and let us examine the same as to whether the defendants are violating the same by using the wordmark EVEREADY in the form of a device and by stylization and font of EVEREADY as is done by the plaintiff.

4. I am afraid the application of the plaintiff is misconceived inasmuch as the operative portion of the order dated 21.12.2010 reproduced above in fact states that there was no need for the Court to grant injunction against the use of the device by the defendants. This was said by the learned Single Judge because there was already a restraint order against the

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defendants by IPAB from using the device EVEREADY i.e the particular stylization and font of the wordmark EVEREADY. Therefore, once this Court has specifically observed that there is no need for granting injunction with respect to the EVEREADY device i.e stylization and font of the wordmark EVEREADY, there is no injunction granted to result in violation of any injunction order passed by the Court.

5. I must note that I put it repeatedly to the counsel for the plaintiff that possibly the remedy of the plaintiff is to file independent contempt proceedings on account of violation of the injunction order issued by the IPAB, but, the counsel for the plaintiff insists that this Court should hear and dispose of the present application.

6. In view of the above since there is no injunction order granted by this Court against use of the EVEREADY device by the defendants, there is no violation of any injunction order passed by this Court for the plaintiff to invoke Order 39 Rule 2A CPC.

Application is therefore dismissed.

+ CS(OS) No.1422/2009

7. As recorded in the order dated 15.3.2016 and which is also the

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stand of the plaintiff today that evidence in this case be recorded by a Local Commissioner whose expenses will be borne by the plaintiffs, accordingly, Sh.D.S. Bawa, ADJ (retd.) Mobile No.8860827313 is appointed as a Local Commissioner to record evidence in this case. Fees of the Local Commissioner are fixed at Rs.75,000/- plus all out of pocket expenses which shall be borne by the plaintiffs and which will cover 10 dates on which evidence is recorded. In case, there are more than 10 dates for recording of evidence, then, Local Commissioner will be paid a sum of Rs.5,500/- for each date for recording of evidence. Both the parties will not record evidence of more than three witnesses as is agreed to before this Court. Necessary space will be provided by the plaintiffs in the High Court premises so that judicial file does not go outside the High Court premises. Local Commissioner will keep in mind the ratio of the judgment of the Supreme Court in the case of Bipin Shantilal Panchal Vs. State of Gujarat and Anr. (2001) 3 SCC 1 for recording of evidence. Local Commissioner is requested to expedite the recording of evidence and make endeavours to complete the recording of evidence within a period of six months of the first date fixed for recording of evidence.

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8. Parties will file list of witnesses within six weeks from today. 9. List before the Local Commissioner for fixing dates of

evidence on 7th July, 2016 at 4.00 P.M.

10. List before the Court for reporting recording of evidence on 24th

November, 2016.

VALMIKI J. MEHTA, J

APRIL 26, 2016

Ne

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COLUMBIA SPORTSWEAR COMPANY Vs HARISH FOOTWEAR & ANR

IN THE HIGH COURT OF DELHI AT NEW DELHI

+CS(OS) 2623/2014

COLUMBIA SPORTSWEAR COMPANY			..... Plaintiff
	Through:	Mr. Neeraj Grover, Adv. with
		Mr. Himanshu Deora, Adv.
	versus
HARISH FOOTWEAR & ANR			..... Defendants
	Through:	Mr. Ajay Amitabh Suman, Adv. for
		D-2.
CORAM:
HON'BLE MR. JUSTICE R.K.GAUBA
	O R D E R
%	22.09.2016

IA No.19291/2015 (Order 6 Rule 17 CPC)

1.The original suit was filed in September, 2014 seeking, inter alia,

permanent injunction against the defendants from using trade mark

“COLUMBIA” or any other trademark or trademarks which are deceptively or confusingly similar to the plaintiff’s registered trademark “COLUMBIA”, alleging cause of action to have arisen to seek such relief against the defendants as it had been discovered that they have been dealing in sale of certain goods, passing them off, using or incorporating the plaintiff’s registered trademark or other trademarks deceptively or confusingly similar thereby illegally taking the benefit of its reputation and goodwill.

2. While issuing summons on the suit and notice of the applications filed therewith, by order dated 1st September, 2014, this court granted ad-interimex-parte injunction restraining the defendants from using, selling, exporting, displaying, advertising or using the trademark “COLUMBIA” till the next

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date of hearing. By the same order, on another application (IA No.16584/2014) a local commissioner was appointed to visit the premises of the second defendant to seize infringing goods, advertising material, etc. if found in the said premises and to arrange for the same to be held onsupardari and take certain other steps connected therewith. The local commissioner executed the task assigned and submitted the report in due course. An application, in the meanwhile, has been filed by the defendant, it being IA No.22361/2014 under Order 39 Rule 4 CPC seeking the interim injunction to be vacated. The said application and the application under Order 39 Rules 1 & 2 CPC (IA No.16583/2014) are awaiting final decision.

3. The application at hand has been moved by the plaintiff under Order 6 Rule 17 CPC, meanwhile, to bring about certain amendments in the pleadings, mainly to modify existing paras 6, 16 and 47 of the plaint to bring on record certain additional facts essentially concerning issuance of registration No.1585010 of the trademark “Columbia Sportswear Company” on 13.03.2015, on the basis of application that had been moved on 27.07.2007, setting out in detail in the pleadings the particulars of the said additional registration with specification of goods and classes thereof. The plaintiff also states that during the inspection of the premises of the second defendant by the local commissioner it had come to light, through his report, that the second defendant had moved to a packaging in a box which is blue and brown it being identical to the packaging colours/trade dress of the plaintiff’s product. The additional pleadings seek to set out the details of the said similarity in the impugned goods statedly passed off by the defendant in breach of the rights of the plaintiff under the registered trademarks.

4. The consideration of the application for amendment at this stage is opposed by the defendants mainly on the submission that the move to amend

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the pleadings even while the application under Order 39 Rule 4 CPC of the defendants who have been suffering the ad-interim injunction is abuse of the process of court. Reliance is placed on Rajveer Food Marketing (I) Pvt. Ltd. vs. Amrit Banaspati Company Limited, 2010 (42) PTC 147 (Del.) (DB)to contend that the consideration of this application must await the determination of the applications, one of the plaintiff under Order 39 Rules 1 & 2 CPC and the other of the defendant under Order 39 Rule 4 CPC.

5.Having heard the learned counsel on both sides, this court finds no substance in the objection thus taken. In Rajveer Food Marketing (I) Pvt. Ltd. (supra), the amendment of the pleadings was mainly to bring on record certain material facts which had been earlier withheld, seemingly with no explanation offered for such omission. In the case at hand the issuance of the registration of the trademark on 13.03.2015 is a subsequent development. It may be that the application towards that end had been moved earlier on 27.07.2007, but that by itself is no reason why the applicant/plaintiff should not be allowed to plead the additional facts of yet another registration of his trademark. Similarity in the packaging, also constituting breach and giving rise to the cause of action has apparently come to light only upon the report of the local commissioner being submitted in this court. There is nothing on record to indicate that these facts were within the knowledge of the plaintiff and/or could have been pleaded earlier.

6.The objection to the consideration of the application for amendment even before the other applications under Order 39 Rules 1 & 2 CPC and under Order 39 Rule 4 CPC are pending is thus meritless and, therefore, repelled.

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7.The defendant referred to Godrej Sara Lee Ltd. vs. Karamchand Appliances (P) Ltd. & Ors., 2007 (35) PTC 341 (Del.) arguing that the similarity in the packaging as is stated to have been brought to light by the local commissioner would, at best, give rise to a separate and new cause of action and the plaintiff cannot be allowed to complicate the case by additional pleadings to that effect.

8.The case at hand is distinguishable from that of Godrej Sara Lee Ltd.(supra). The cause of action remains the same. It is essentially the passing off the goods by the defendant using a trademark of which the plaintiff claims to be the owner. The principle that multiplicity of suits must be avoided has to be remembered. At this stage, the court cannot sit in judgment over the falsity or correctness of the facts sought to be additionally pleaded. The amendments are not likely to change the nature of the case. The supervening event of new registration of the trademark and another facet of the passing off with reference to the packaging deserves to be allowed to be additionally pleaded. [Usha International & Anr. vs. Usha Television Limited, 2002 (25) PTC 184 (Del.) (DB) and Vatika Resorts Pvt. Ltd. vs. Vatika Grand, 2009 (40) PTC 111 (Del.)].

9.The amendments proposed by the application are for complete and effectual determination of the controversy between the parties and, therefore, the application is allowed.

10.The amended plaint shall be filed and copy thereof served on the defendant within two weeks, unless such steps have already been taken in anticipation. The defendants are called upon to file the written statement in answer to the amended plaint within four weeks thereof.

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CS(OS) 2623/2014

The cause list published for today indicates certain applications, namely, IA No.16584/2014 (O.26 Rule 9 CPC and O.39 Rule 7 CPC) and IA No.22778/2014 (O.23 Rule 3 CPC) to be pending. The previous proceedings indicate these applications have already been disposed of.

The registry must keep its record up-dated and not show any application as has been decided in the cause list since it creates confusion.

Be listed before the Joint Registrar for completion of pleadings on 7th

December, 2016.

R.K.GAUBA, J.

SEPTEMBER 22, 2016 vk

CS(OS) 2623/2014

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ESCORTS CONSTRUCTION EQUIPMENT LTD. & ANR. Vs ACTION CONSTRUCTION EQUIPMENT PVT. LTD. & ORS

IN THE HIGH COURT OF DELHI AT NEW DELHI

+C.O. 23/2000

..... Petitioners Through: Mr. Ajay Amitabh Suman, Adv. for

Mr. S.K. Bansal, Adv.

	Versus
ACTION CONSTRUCTION EQUIPMENT PVT. LTD.
& ORS	..... Respondents
	Through: Mr. Abhishek Ghai and Mr. Ajay
	Kalra, Advs. for R-1&2.

CORAM:

HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

	O R D E R
%	19.07.2016

1.The two plaintiffs namely Escorts Construction Equipment Ltd. and Escorts Ltd. filed this Civil Original (CO) against the defendants Action Construction Equipment Pvt. Ltd., Mr. Vijay Aggarwal and the Controller of Patent and Design for removal of Design No.176729 dated 23rd June, 1998 from the register maintained under the Designs Act, 1911 and for a direction for cancellation of the said design and rectification of register.

2.The C.O. is ripe for final hearing.

3.The arguing counsel for the respondents No.1&2 is not available and adjournment is sought on his behalf.

C.O. 23/2000

Page 1 of 3

4.Finding the registration of the design to be of 23rd June, 1998, I have enquired from the counsel for the petitioners whether not the subject design of which cancellation is sought has already lapsed and is no longer protected.

5.The counsel for the petitioners agrees but contends that since the Full Bench of this Court in Mohan Lal, Proprietor of Maurya Industries Vs. Sona Paint Hardwares AIR 2013 Delhi 143 (FB) has held that even after the term of protection under the Designs Act has lapsed, common law rights in the design may be available, the petitioners are interested in adjudication of the said CO.

6.On enquiry, whether the respondents No.1&2 have instituted any proceedings asserting the common law rights in the design of which cancellation is sought in the present suit, the counsel for the petitioners states that no such proceedings have been instituted by the respondents No.1&2 as yet.

7.It is also the contention of the counsel for the petitioners that the respondents No.1&2 in their cross-examination on 19th November, 2015 in these proceedings admitted that the subject design is functional in nature and for this reason also its registration as a design was wrong. He contends that the CO is entitled to be allowed for this reason alone.

8.I am of the view that once the cause of action for the relief which was claimed in the CO has disappeared and no longer survives, no purpose will be served in this Court proceeding to decide the CO. Suffice it is to state

that if the respondents No.1&2 at any time in future institute any

C.O. 23/2000

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proceedings against the petitioners asserting any rights including of passing off accruing from the registration of the subject design, it would be open to the petitioners to, in that proceeding refer and rely on the present CO and to the proceedings herein and / or admissions made by the respondents No.1&2 and to, if so necessitated, also seek revival of the present CO.

9. With the aforesaid liberty, the petition is disposed of as infructuous, leaving the parties to bear their own costs.

RAJIV SAHAI ENDLAW, J.

JULY 19, 2016 bs..