COLUMBIA SPORTSWEAR COMPANY VS HARISH FOOTWEAR-CHAMBER APPEAL

$~3

*                    IN THE HIGH COURT OF DELHI AT NEW DELHI

+CS(COMM) 1611/2016

COLUMBIA SPORTSWEAR COMPANY

..... Plaintiff

Through :    Mr.Neeraj  Grover,  Ms.Kanika  Bajaj

and Mr.Himanshu Deora, Advs.

versus

HARISH FOOTWEAR & ANR

..... Defendants

Through :    Mr.S.K.Bansal,   Mr.Pankaj     Kumar,

Mr.Vinay Kumar Shukla and Mr.Ajay

Amitabh Suman, Advs.

CORAM:

HON'BLE MR. JUSTICE YOGESH KHANNA

O R D E R

%                                         04.04.2018

O.A. 36/2018, 4370-4371/2018

O.A.  36/2018  is  a  chamber  appeal  against  an  order  dated

01.03.2018 whereby the plaintiff has been allowed to place on record

voluminous documents consisting of about 2,000 pages containing

invoices, magazines, documents, vouchers etc. The submission of the

appellant is the learned Joint Registrar did not consider due diligence

on the part of the plaintiff, per Order 11 Rule 1(5) of the Commercial

Courts Act, 2015 r/w Section 151 CPC. The said rule read as under :

The plaintiff shall not be allowed to rely on documents, which were in the plaintiff’s power, possession, control or custody and not disclosed along with plaint or within the extended period set out above, save and except by leave of Court and such leave shall be granted only upon the plaintiff

establishing reasonable cause for non–disclosure along with the plaint.

However counsel for the plaintiff has taken me to application

IA  No.15599/2017  more  specifically  paras  7,  8  and  9  which  are

reproduced as under :

7.    That pursuant to the framing of the issues in this matter, the Plaintiff started collating the evidence to support its claims in this matter and to lead the evidence in the trail. During the said process, the Plaintiff has been able to locate various relevant documents which are very essential/ germane to the issues and the controversies involved in the subject matter.

8.    It is further submitted that the Plaintiff has filed certain documents along with the aforesaid suit. However, during the pendency of the present proceedings, the Plaintiff has discovered certain additional documents, namely the documents pertaining to the promotional and advertisement efforts of the Plaintiff in various magazines, news article, Olympics sponsorship activities, other promotional activities, business operations of the Plaintiffs liaison office in India since 1995, etc. pertaining to the use of the trade mark/ trade name COLUMBIA, filed as a part of the attached List of Documents with Index, which are available in original with the Plaintiff from his old records and/ or can be supported by the Plaintiffs publically available records or the information available on the internet. Further, the documents pertaining to the liaison office of the Plaintiff in India are very old, inter alia, dating back to as early as 1995-2005, and also, these evidence were earlier used in other litigation matters of the Plaintiff and therefore, could not be produced earlier, despite due diligence.

9.    The records of the Plaintiff are quite voluminous and are scattered at various places. The Plaintiff being a global company, having operations in various countries around the court, these documents were attended by number of persons during the course of the time until date. In view of the same, it took time to trace out these documents and place it before this Hon’ble Court. Therefore, despite due diligence, the Plaintiff could not have filed these documents on record earlier at the time of the filing of the present suit.

It is alleged by the plaintiff that despite  due diligence such

documents could not be produced on record earlier because of the

reasons  aforesaid.  Impugned  order  passed   by  the  learned    Joint

Registrar though notes of an admission on behalf of the defendant viz.

such documents are relevant, (though such admission is denied) and

that the evidence has not started as yet, hence considering the nature

of documents he allowed the application. The defendant alleged the

learned Joint Registrar did not mention about reasonable cause or due

diligence if was there on part of the plaintiff.

Considering the circumstances, viz. a) the evidence has not

started as yet; b) the documents being in public domain; c) such

documents being relevant for the plaintiff’s case, the order of the

learned Joint Registrar need no interference. Though the learned Joint

Registrar has not noted due diligence on the part of the plaintiff in his

order  but  paras  7,  8  and  9  of  the  application  do  speak   about

reasonable cause on which application the impugned order is passed.

The O.A. 36/2018 thus has no merit and is accordingly dismissed,

alongwith pending applications.

IA No.3874/2018

This application is qua the direction to allow the examination and cross-examination of the plaintiff’s witness No.1. Though the IA was moved for video conferencing but during the arguments the plaintiff says he would be satisfied if the evidence of the plaintiff’s witness No.1 is recorded by learned Local Commissioner at his expense. Hence Sh.R.K.Yadav, District Judge (Retd.) (Mobile: 9910384623) is appointed as the Local Commissioner to record the evidence of PW1 and since the witness has to travel from USA hence the evidence be recorded on day-to-day basis starting w.e.f 25^th April, 2018 onwards till the evidence of PW1 is complete; there being a direction by the Division Bench to complete the evidence within four months. The fee of the Local Commissioner shall be as per Original side rules, as amended.

List before Court on 18^th September, 2018.

YOGESH KHANNA, J

APRIL 04, 2018

VLD

VINI COSMETICS PVT LTD VS ABHAY ENTERPRISES

IN THE HIGH COURT OF DELHI AT NEW DELHI     CS(OS) 2483/2014     VINI COSMETICS PVT LTD ..... Plaintiff     Through: Mr.S.K. Bansal, Advocate         versus         ABHAY ENTERPRISES and ORS ..... Defendant     Through         CORAM:      HON'BLE MR. JUSTICE G.S.SISTANI      O R D E R      20.08.2014     I.A.15576/2014 (EXEMPTION)     Allowed, subject to just exceptions.     Application stands disposed of.     I.A. 15575/2014 (EXEMPTION)     Let the original documents be filed within ten weeks and the   legible documents / with proper left hand margin be filed within the same   period.     Application stands disposed of.     CS(OS) 2483/2014 and I.A. 15574/2014 (u/O.39 Rs=1 and 2 CPC)     Plaintiff has filed the present suit for permanent injunction,   restraining infringement of trademark, passing off, rendition of   accounts, damages and delivery up against the defendants.     Plaintiff is stated to be inter alia engaged in the business of   manufacturing and marketing of all kinds of cosmetics and proprietary   products including lotions, talecum power etc. The goods of the   plaintiff are being manufactured and sold under a distinctive trade mark   / label ?GLAM ? UP? label, claiming user of the same since September,   2012. The details of registration of the plaintiff?s trade mark have   been extracted in paragraph 5 of the plaint.     Counsel for the plaintiff submits that the defendant no.1 is   manufacturing counterfeit products in China with respect to identical   trade mark and packaging as that of the plaintiff. The impugned goods   bear the name of the manufacturer as the plaintiff and the place of   manufacture is shown as India, whereas the goods are counterfeit and   products are not manufactured by the plaintiff. It is submitted that the   shipment of defendant no.1 has arrived at Sahar, Andheria (East) Mumbai,   containing the counterfeit products.     It is further submitted that as per the practise, in case a trade   mark is registered with the customs authorities, the customs authorities   at the request of the genuine trade mark holder ordinarily seizes the   counterfeit goods. In this case, however, the plaintiff has applied for   registration of its trademark with the customs authorities after the   arrival of the shipment. In these circumstances, plaintiff prays for   grant of ex parte ad interim injunction, as in case the counterfeit   products are allowed to be released and sold in the market unwary   customers are likely to be deceived and misled that the goods which are   being sold are genuine goods of the plaintiff.     Issue summons in the suit and notice in the application by all   modes, including DASTI, returnable on 15.10.2014.     I have heard counsel for the plaintiff and perused the plaint,   application and the supporting documents. I am satisfied that this is a   fit case for grant of ex parte ad interim injunction and in case the ex     parte ad interim injunction is not granted, not only the plaintiff will suffer irreparable loss, but also the unwary customers are likely to be   deceived. Accordingly, till the next date of hearing, defendant no.1,   its proprietor, partners, agents, representatives, distributors, assigns,   heirs, successors, stockists and all other acting for and on their behalf   are restrained from importing, using, selling, soliciting, exporting,   displaying advertising by visual, audio, print mode or by any other mode   or manner or dealing in or using the impugned trade mark / label ?GLAM-   UP? or any other trademark / label identical with and /or deceptively   similar the trademark. Till the next date of hearing, defendants No.2   and 3 are restrained from releasing the Bill of Entry No.4976446 dated   22.3.2014. DASTI.     Provisions of Order 39 Rule 3 CPC be complied with, within 3 days.             G.S.SISTANI, J     AUGUST 20, 2014     ssn             CS(OS) 2483/2014 3/3         $ 44

RSPL HEALTH PRIVATE LTD VS GIANI RAM MITTAL

$~33

*                    IN THE HIGH COURT OF DELHI AT NEW DELHI

+

FAO 103/2015

M/S RSPL HEALTH PRIVATE LTD                             ..... Appellant

Through:         Mr. S.K. Bansal, Mr. Ajay Amitabh

Suman and Mr. Anil Kumar Sahu,

Advocates

versus

GIANI RAM MITTAL & ORS

Through:

..... Respondents

Mr. Ashok Mittal, Advocate

CORAM:

HON'BLE MR. JUSTICE J.R. MIDHA

O R D E R

%                         10.04.2015

C.M. Appl. 6351/2015

Allowed, subject to just exceptions.

C.M. Appl. 6350/2015

The Trial Court record be requisitioned through a special messenger before the next date of hearing. Application is disposed of.

FAO 103/2015 and C.M. Appl. 6349/2015

1.                 Issue notice. Learned counsel for the respondents accepts notice.

2.                 Learned counsel for the appellant submits that the respondents have copied the trade-dress and colour scheme of the appellant’s wrapper in respect of the dish wash bar. The appellant’s wrappers have been placed on record as Annexure A-2 from pages 46 to 49. The respondents’ wrappers have been placed on record as Annexure A-2 from pages 50 to 52.

3.                 Learned counsel for the respondents submits that the respondents adopted this trade-dress and colour scheme in the year 2009-2010. Learned

counsel for the respondents further submits that the respondents are the prior user of the trade-dress and colour scheme and, therefore, the appellant is not entitled to injunction.

4.                 Learned counsel for the appellant submits that the statement made by the respondents before this Court today is not part of the pleadings before the Trial Court. Learned counsel for the appellant further points out that the appellant is aggrieved by the respondents copying the trade-dress and colour scheme but the appellant has no objection to the respondents’ name “Sagar Excellent” which is no doubt different from the appellant’s trademark ‘Expert’.

5.                 The respondents’ written statement has been placed on record as Annexure A-9 at page 124 in which learned counsel for the respondents could not show the defence taken that trade-dress and the colour scheme was adopted by the respondents in 1999-2010.

6.                 Learned counsel for the respondents submits that the respondents shall appear before this Court on the next date of hearing along with all relevant documents to show the adoption of the trade-dress and colour scheme by the respondents in 1999-2010.

7.                 List on 13^th April, 2015 at 02:30 p.m.

8.                 Both the parties shall remain present in Court on the next date of hearing along with all original documents relating to the adoption of the trade-dress and colour scheme by them. Till the next date of hearing the respondents are restrained from using the colour scheme and trade-dress of the appellant.

9.                 Copy of this order be given dasti to counsels for the parties under signatures of the Court Master.

J.R. MIDHA, J.

APRIL 10, 2015/rsk

$~2

*                    IN THE HIGH COURT OF DELHI AT NEW DELHI

+                   FAO 103/2015 and C.M. Appl. 6349/2015

M/S RSPL HEALTH PRIVATE LTD ..... Appellant Through: Mr. Amit Sibal, Senior Advocate with Mr. S.K. Bansal, Mr. Ajay Amitabh Suman, Mr. Anil Kr. Sahu, Mr. Amit Chander Jha and Mr. Santosh Kumar, Advocates

versus

GIANI RAM MITTAL & ORS

Through:

..... Respondents

Mr. Ashok Mittal, Advocate

CORAM:

HON'BLE MR. JUSTICE J.R. MIDHA

O R D E R

%                         24.04.2015

1.                 Mr. Kailash Chand Mittal, partner of M/s Mittal Industrial Corporation, is present in Court along with his counsel and this Court considers it necessary to examine him on oath under Section 165 of the Indian Evidence Act.

2.                 The statement has been recorded separately under Section 165 of the Indian Evidence Act and this Court is satisfied that Mr. Mittal has made false claim under Section 209 of the Indian Penal Code, which is reproduced hereunder: -

“Section  209.  Dishonestly  making  false  claim  in  Court.—

Whoever fraudulently or dishonestly, or with intent to injure or annoy any person, makes in a Court of Justice any claim which he knows to be false, shall be punished with imprisonment of either description for a term which may extend to two years, and shall also be liable to fine.”

3.                 At this stage, learned counsel for the respondents, on instructions from Mr. Kailash Chand Mittal, present in Court, submits that the respondents shall forthwith stop using the trade dress and colour scheme of Ex.C-1 and, therefore, the appeal may be allowed and the injunction order be passed against the respondents.

4.                 In view of the statement made by learned counsel for the respondents with the consent of partner of respondent No.3, Mr. Kailash Chand Mittal, present in Court, the appeal as well as C.M. Appl. 6349/2015 are allowed, impugned order dated 25^th February, 2015 is set aside and the appellant’s application under Order 39 Rules 1 and 2 of the Code of Civil Procedure filed before the Trial Court is allowed in terms of the prayers made therein (at pages 119 to 121).

5.                 Copy of this order be given dasti to counsels for the parties under signatures of the Court Master.

J.R. MIDHA, J.

APRIL 24, 2015

rsk

ITEM NO.46

COURT NO.14

SECTION XIV

S U P R E M E C O U R T O F

RECORD OF PROCEEDINGS

I N D I A

Petition(s) for Special Leave to Appeal (C)

No(s).

25021/2015

(Arising out of impugned final judgment and order dated 24/04/2015 in FAO No. 103/2015 passed by the High Court Of Delhi At New Delhi)

GIANI RAM MITTAL & ORS.

Petitioner(s)

VERSUS

M/S. RSPL HEALTH PRIVATE LIMITED

Respondent(s)

Date : 14/09/2015 This petition was called on for hearing today.

CORAM :

HON’BLE MR. JUSTICE A.K. SIKRI

HON’BLE MR. JUSTICE ROHINTON FALI NARIMAN

For Petitioner(s)

Arunima Dwivedi,Adv.

Mr. Ashok Mittal, Adv.

For Respondent(s)

UPON hearing the counsel the Court made the following

O R D E R

Learned counsel for the petitioners submits that he had given the statement in the High Court under the threat of

adverse consequences. He has produced before us the trade mark "Xpert" of the respondent and submits that it nowhere resembles or is confusingly similar to the trade mark "Sagar Excellent". In support of the submission he has produced both the trade marks for comparison.

Issue notice.

There shall be stay of the impugned judgment and

Signature Not Verified

Digitally signed by Vinod Kumar Date: 2015.09.14 17:14:48 IST Reason:

order during the pendency of the petition.

(VINOD KR. JHA)

COURT MASTER

(RENU DIWAN)

COURT MASTER

b                                                                                                                                                                                                                  NON-REPORTABLE

IN THE SUPREME COURT OF INDIA

CIVIL APPELLATE JURISDICTION

CIVIL APPEAL NO.700 OF 2016

(Arising out of SLP(C)No.25021/2015)

GIANI RAM MITTAL & ORS.                                                                          ... APPELLANT(S)

VS.

M/S. RSPL HEALTH PRIVATE LIMITED                                                  ... RESPONDENT(S)

J U D G M E N T

ANIL R.        DAVE, J.

1.     Leave granted.

2.     Heard the learned counsel and perused the wrappers of both the products.

3.

Looking

at

the

peculiar

facts

of

the

case,

the

impugned

order is

set aside and the

matter is remitted

to

the High

Court, so that it can be heard

afresh.

The

matter

shall be taken up for hearing on

8 th February,

2016

by

the

High Court.

4.     We are sure that the parties shall be heard afresh and an appropriate order shall be passed after hearing the counsel for the parties.

Signature Not Verified

Digitally signed by

Sarita Purohit

Date: 2016.02.01

16:45:55 IST

Reason:

1

5.       The appeal stands allowed with no order as to costs. Pending application, if any, is also disposed of.

6.       Intimation of this order be sent to the High Court forthwith.

..............J.

[ANIL R. DAVE]

.................J.

[SHIVA KIRTI SINGH]

.................J.

[ADARSH KUMAR GOEL]

New Delhi;

1st February, 2016.

2

OUT-TODAY

ITEM NO.4                                                     COURT NO.2                                           SECTION XIV

S U P R E M E C O U R T O F                  I N D I A

RECORD OF PROCEEDINGS

Petition(s) for Special Leave to Appeal (C) No(s).25021/2015

(Arising out of impugned final judgment and order dated 24/04/2015 in FAO No.103/2015 passed by the High Court Of Delhi At New Delhi)

GIANI RAM MITTAL & ORS.                                                                                          Petitioner(s)

VERSUS

M/S. RSPL HEALTH PRIVATE LIMITED                                                                  Respondent(s)

(With interim relief and office report)

Date : 01/02/2016 This petition was called on for hearing today.

CORAM :

HON’BLE MR. JUSTICE ANIL R. DAVE

HON’BLE MR. JUSTICE SHIVA KIRTI SINGH

HON’BLE MR. JUSTICE ADARSH KUMAR GOEL

For Petitioner(s)	Mr. Ashok Mittal,Adv.
	Ms. Arunima		Dwivedi,Adv.
For Respondent(s)	Mr.	Amit	Sibal,Sr.Adv.
	Mr.	S.K.	Bansal,Adv.
	Mr.	Ajay	Amitabh Suman,Adv.
	Mr.	Anil	Kumar Sahu,Adv.
	Mr.	S. Rayeen,Adv.
	For	Mr. Rakesh Kumar,Adv.

UPON hearing the counsel the Court made the following

O R D E R

Leave granted.

The appeal is allowed with no order as to costs in terms of signed Non-reportable judgment.

(Sarita Purohit)                                                                                (Sneh Bala Mehra)

Court Master                                                                                  Assistant Registrar

(Signed Non-reportable judgment is placed on the file)

3