KNIT PRO INTERNATIONAL VS ANURAG SANGHI

$~19, 21 & 28

*                    IN THE HIGH COURT OF DELHI AT NEW DELHI

+                   FAO 443/2017 and C.M. Nos.41035/2017 (stay) & 41036/2017 (exemption)

ANURAG SANGHI & ANR                                                    ..... Appellants

Through:        Mr. Chander M. Lall, Senior

Advocate with Ms. Nancy Roy,

Advocate, Ms. Samreen Khan,

Advocate and Mr. Rupin Bahl,

Advocate.

versus

KNITPRO INTERNATIONAL                                              ..... Respondent

Through:        Mr. Harish Malhotra, Senior

Advocate with Mr. Ajay Amitabh

Suman, Advocate.

+                   FAO 445/2017 and C.M. Nos.41115/2017 (stay) & 41116/2017 (exemption)

ANURAG SANGHI & ANR	..... Appellants
Through:	Mr. Chander M. Lall, Senior
	Advocate with Ms. Nancy Roy,
	Advocate, Ms. Samreen Khan,
	Advocate and Mr. Rupin Bahl,
versus	Advocate.
KNITPRO INTERNATIONAL	..... Respondent
Through:	Mr. Harish Malhotra, Senior
	Advocate with Mr. Ajay Amitabh
	Suman, Advocate.

FAO Nos.443/2017, 445/2017 & 446/2017                                                    page 1 of 3

+                   FAO 446/2017 and C.M. Nos.41142/2017 (stay) & 41143/2017 (exemption)

ANURAG SANGHI & ANR                                    ..... Appellant

Through:        Mr. Chander M. Lall, Senior

Advocate with Ms. Nancy Roy,

Advocate, Ms. Samreen Khan,

Advocate and Mr. Rupin Bahl,

Advocate.

versus

KNITPRO INTERNATIONAL                                              ..... Respondent

Through:        Mr. Harish Malhotra, Senior

Advocate with Mr. Ajay Amitabh

Suman, Advocate.

CORAM:

HON'BLE MR. JUSTICE VALMIKI J. MEHTA O R D E R

%                                         14.11.2017

1.                           After arguments, all the impugned orders dated 31.8.2017 in

FAO No.443/2017 and 9.10.2017 in FAO Nos.445/2017 & 446/2017 are set

aside with consent but the same will not be a reflection on the respective

cases of the parties on merits so far as disposal of injunction applications

filed by the respondents/plaintiffs is concerned.

2. Appellants will file written statements alongwith their documents positively within three weeks from today and the respondents/plaintiffs will file replications thereto alongwith their

FAO Nos.443/2017, 445/2017 & 446/2017                                                    page 2 of 3

documents within two weeks thereafter.

3. Trial court is requested to make endeavours to expeditiously dispose of the injunction applications and trial court is directed to impose very heavy costs on the party which seeks unnecessary adjournments on the dates fixed for hearings of the injunction applications filed by the respondents/plaintiffs. Since the impugned orders are set aside whatever has been sealed or seized pursuant to the impugned orders, will be available to the appellants/defendants for their business noting that there is already a list prepared of the items by the Local Commissioners who are appointed in the cases.

4.                           Appeals are disposed of in terms of aforesaid observations.

5.                           Dasti to the counsels for the parties.

VALMIKI J. MEHTA, J

NOVEMBER 14, 2017

Ne

FAO Nos.443/2017, 445/2017 & 446/2017                                                    page 3 of 3

ITEM NO.6                                              COURT NO.11                                               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).   902/2018

(Arising out of impugned final judgment and order dated         14-11-2017

in FAO No. 443/2017 passed by the High Court Of Delhi At New Delhi)

M/S KNITPRO INTERNATIONAL                                                                               Petitioner(s)

VERSUS

ANURAG SANGHI & ANR.

Respondent(s)

(FOR ADMISSION and I.R. and IA No.5371/2018-PERMISSION TO FILE ADDITIONAL DOCUMENTS)

WITH

SLP(C) No. 905/2018 (XIV)

(FOR ADMISSION and I.R. and IA No.5394/2018-PERMISSION TO FILE ADDITIONAL DOCUMENTS)

SLP(C) No. 1038/2018 (XIV)

(FOR ADMISSION and I.R. and IA No.6216/2018-PERMISSION TO FILE ADDITIONAL DOCUMENTS)

Date : 02-02-2018 These matters were called on for hearing today.

CORAM :     HON'BLE MR. JUSTICE ROHINTON FALI NARIMAN

HON'BLE MR. JUSTICE NAVIN SINHA

For Petitioner(s)      Mr. Ravinder Sethi, Sr. Adv.

Mr. S.K. Bansal, Adv.

Mr. Ajay Amitabh Suman, Adv.

Mr. Virendra Kumar Sinha, Adv.

Ms. S. Janani, AOR

For Respondent(s)

UPON hearing the counsel the Court made the following

O R D E R

Issue notice.

In the meanwhile, there shall be  stay of operation of the

judgment of the High Court.

(R. NATARAJAN)

COURT MASTER (SH)

(SAROJ KUMARI GAUR)

COURT MASTER

1

IN THE SUPREME COURT OF INDIA

CIVIL APPELLATE JURISDICTION

CIVIL APPEAL NO.3470 OF 2018

(Arising out of SLP (C) No.902 of 2018)

M/S KNITPRO INTERNATIONAL

APPELLANT(S)

VERSUS

ANURAG SANGHI & ANR.

RESPONDENT(S)

WITH

CIVIL APPEAL NO.3471 OF 2018

(Arising out of SLP (C) No.905 of 2018)

CIVIL APPEAL NO.3472 OF 2018

(Arising out of SLP (C) No.1038 of 2018)

O R D E R

Leave granted. We have heard learned counsel for

the parties.

The suit filed by the appellant for injunction in

a trade mark matter is pending before the trial    Court.

Against the Ad-interim injunction granted in favour of the

appellant,  the  respondents  moved  the  High  Court.  The  High

Court set aside the order of injunction and directed fresh

consideration of the matter.

We are  of the  view that  the High  Court ought  to

have considered the matter itself. Let the same be     now

done.

Accordingly, we set aside the impugned order and

2

remit the matters to the High Court for fresh disposal in accordance with law. We hope the High Court will decide the matter expeditiously and, subject to cooperation of the parties, as far as possible within one month.

The parties may to appear before the High Court for further proceedings on 10^th April, 2018. In the meanwhile, interim injunction will continue till further orders by the High Court.

The appeals are disposed of in above terms.

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

[ADARSH KUMAR GOEL]

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

[ROHINTON FALI NARIMAN]

NEW DELHI

2^nd  April, 2018

3

ITEM NO.11                                              COURT NO.10                                              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).   902/2018

(Arising out of impugned final judgment and order dated 14-11-2017 in FAO No. 443/2017 passed by the High Court of Delhi at New Delhi)

M/S KNITPRO INTERNATIONAL

Petitioner(s)

VERSUS

ANURAG SANGHI & ANR.

Respondent(s)

(FOR APPLICATION FOR VACATION OF STAY/RECALLING THE COURTS ORDER ON IA 34172/2018)

WITH

SLP(C) No. 905/2018 (XIV)

(FOR APPLICATION FOR VACATION OF STAY/RECALLING THE COURTS ORDER ON IA 34183/2018)

SLP(C) No. 1038/2018 (XIV)

(FOR APPLICATION FOR VACATION OF STAY/RECALLING THE COURTS ORDER ON IA 34179/2018)

Date : 02-04-2018 These matters were called on for hearing today.

CORAM :

HON'BLE MR. JUSTICE ADARSH KUMAR GOEL HON'BLE MR. JUSTICE ROHINTON FALI NARIMAN

For Petitioner(s)

Mr. Shyam Divan, Sr. Adv.

Mr. S.K. Bansal, Adv.

Mr. Ajay Amitabh Suman, Adv.

Ms. S. Janani, AOR

For Respondent(s)

Mr. N.K. Kaul, Adv.

Mr. M.K. Miglani, Adv.

Mr. Gaurav Miglani, Adv.

Mr. Sanjyat Lodha, Adv.

Mr. Deepak Joshi, Adv.

Ms. Garima Bajaj, AOR

UPON hearing the counsel the Court made the following

O R D E R

4

Leave granted.

The appeals are allowed in terms of the signed order.

Pending applications, if any, are also stand disposed of.

(SWETA DHYANI)

SENIOR PERSONAL ASSISTANT

(SUMAN JAIN)

BRANCH OFFICER

(Signed order is placed on the file)

THE POLO/LAUREN COMPANY VS M/S VARSHA & CO

$~ 6

*                    IN THE HIGH COURT OF DELHI AT NEW DELHI

+                   CS(COMM) 673/2016

THE POLO/LAUREN COMPANY L P                          ..... Plaintiff

Through         Mr. Ajay Amitabh Suman, Mr.

Pankaj Kumar, Mr. Kapil

Kumar Giri, Mr. Vinay Kumar

Shukla, Advocates.

versus

M/S VARSHA & CO AND ANR

Through           Ex-Parte

..... Defendants

%

Date of Decision: 23rd March, 2018

CORAM:

HON'BLE MR. JUSTICE MANMOHAN

J U D G M E N T

MANMOHAN, J: (Oral)

1.                 Present suit has been filed for permanent injunction restraining infringement, passing off, damages, delivery up, rendition of accounts etc. against the defendants. The prayer clause in the present suit is reproduced hereinbelow:-

“43. That under the facts and circumstances of the present case the Plaintiff most respectfully prays that this Hon‟ble Court may kindly be pleased to:

(a) Pass a decree of permanent injunction restraining the Defendant No.1 and 2 by themselves as also through their individual proprietors/partners/principles, agents, representatives, distributors, assigns, heirs, successors, stockiest and all others acting for and on their behalf from using, selling, soliciting, exporting, displaying,

CS (COMM) 673/2016                                                                                                       Page 1 of 8

advertising or by any other mode or manner dealing in or using the impugned Trade Mark/Label POLO with or without the device of POLO player and impugned domain name namely www.varshaa.com for that purpose or any other word/mark/trade Mark/Label/Domain Names which may be identical with and/or deceptively similar to the Plaintiff‟s said Trade Mark/Label/Domain Names in relation to their impugned goods and business of readymade garments and accessories and allied and cognate products and from doing any other acts or deeds amounting to or likely to:

(i)               Infringement of Plaintiff‟s registered Trade Mark/Label [POLO‟POLO WITH DEVICE OR

POLO PLAYER and/or other POLO formative trademarks and/or DEVICE OF POLO PLAYER] as mentioned in Para No.7 of the plaint.

(ii)             Passing off and violating of the plaintiff‟s rights in the Plaintiff‟s said Trade Mark/Label [POLO, POLO WITH DEVICE OF POLO PLAYER and/or other POLO formative trademarks and/or

DEVICE OF POLO PLAYER].

(iii)          Infringement of Plaintiff‟s copyrights in artwork of said Trade Mark/Label [POLO; POLO WITH DEVICE OF POLO PLAYER and/or other POLO formative trademarks and/or DEVICE OF POLO PLAYER].

(b) Restraining the Defendant no.1 and 2 from disposing of or dealing with their asset including their premises at the address mentioned in the Memo of Parties and their stocks-in-trade or any other assets as may be brought to the notice of the Hon‟ble court during the course of the proceedings and on the Defendant‟s disclosure thereof and which the Defendant is called upon to disclose and/or on its ascertainment by the Plaintiff as the Plaintiff is not aware of the same as per Section 135(2)(c) of the Trade Marks Act, 1999 as it could

CS (COMM) 673/2016                                                                                                       Page 2 of 8

adversely affect the Plaintiff‟s ability to recover the costs and pecuniary reliefs thereon.

(c)  For an order for deliver up of all the impugned finished and unfinished materials bearing the impugned and violative impugned Trade Mark/Label or any other word/mark which may be identical with or deceptively similar to the Plaintiff‟s said Trade Mark/Label including its blocks, labels, display boards, sign boards, trade literatures and goods etc. to the plaintiff for the purposes of destruction and erasure.

(d) For an order for rendition of accounts of profits earned by the Defendant no.1 and 2 by their impugned illegal trade activities and a decree for the amount so found in favour of the plaintiff on suh rendition of accounts.

(e)  Or, in the alternative to the rendition of accounts, for a decree of Rs.20,01,000/- (Rupees Twenty Lakh and One Thousand Only) on account of damages sustained by the plaintiff due to the impugned acts of the Defendant no.1 and 2.

(f)   Pass an order directing Defendant No.3 (Department of Telecommunications, Government of India) and Defendant No.4 (Department of Electronics & Information Technology) to secure blocking of the Web

Pages/URL(s)/Listings mentioned in Schedule „A‟ filed along with the documents.

(g) Pass an order directing Defendant No.3 (Department of Telecommunications, Government of India) and Defendant No.4 (Department of Electronics & Information Technology) to secure blocking of any future Web Pages/URL(s)/Listings brought up by the defendant Nos. 1 & 2 on their impugned website which infringe the rights of the plaintiff, as informed by the Plaintiff to the Defendants No.3&4 through written communication.

CS (COMM) 673/2016                                                                                                       Page 3 of 8

(h) For an order for cost of proceedings, and

(i)   For such other and further order as this Hon‟ble Court may deem fit and proper in the facts and circumstances of the present case.”

2.                 Vide order dated 28^th September, 2015, an ad-interim injunction order was passed and defendant nos. 3 and 4 were deleted from the

array of parties. The relevant portion of the order dated 28^th September, 2015 is reproduced hereinbelow:-

“…Accordingly, till further orders, defendant nos. 1 & 2, their partners, proprietors, agents, representatives, distributors, assigns, heirs, successors and stockists are restrained from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trade mark/label POLO with or without the device of POLO player or any other word/mark/trademark/label, which may be identical with and/or deceptively similar to the plaintiff‟s trade mark/label/domain names in relation to their impugned goods or readymade garments and accessories and allied

and cognate products, through the website www.varshaa.com or otherwise.”

3.                 The ad-interim order was confirmed on 21^st March, 2018 till the disposal of the suit. The remaining defendants were also proceeded ex parte on 21^st March, 2018.

4.                 Learned counsel for the plaintiff states that he has instructions to only press for prayer 43(a) and (h) of the plaint.

5.                 Learned counsel for the plaintiff states that in view of the judgment of this Court in Satya Infrastructure Ltd. &Ors. Vs. Satya Infra & Estates Pvt. Ltd., 2013 SCC OnLine Del 508 the present suit

CS (COMM) 673/2016                                                                                                       Page 4 of 8

be decreed qua the reliefs in paragraph 43(a) and (h) of the plaint.  The

relevant portion of the said judgment relied upon by learned counsel

for the plaintiff is reproduced hereinbelow:-

“I am of the opinion that no purpose will be served in such cases by directing the plaintiffs to lead ex parte evidence in the form of affidavit by way of examination-in-chief and which invariably is a repetition of the contents of the plaint. The plaint otherwise, as per the amended CPC, besides being verified, is also supported by affidavits of the plaintiffs. I fail to fathom any reason for according any additional sanctity to the affidavit by way of examination-in-chief than to the affidavit in support of the plaint or to any exhibit marks being put on the documents which have been filed by the plaintiffs and are already on record. I have therefore heard the counsel for the plaintiffs on merits qua the relief of injunction.”

6.                 The relevant facts of the present case as pointed out by the learned counsel of the plaintiffs are as under :-

A)              The plaintiff is a limited partnership engaged in the business of manufacture, distribution and sale of a wide range of apparel and clothing for men, women and children, clothing accessories, etc.

B)               The plaintiff adopted the trademark POLO in 1967, and has been using the word POLO per se and in conjunction with other marks/words and DEVICE OF POLO PLAYER, in various stylized and artistic formats with and/or without the DEVICE OF POLO PLAYER. The plaintiff is the registered owner of the aforesaid trademarks/labels under various Classes of the Trade Marks Act, 1999. In support of the aforesaid submission the plaintiff has filed

CS (COMM) 673/2016                                                                                                       Page 5 of 8

legal proceeding certificates of the plaintiff’s registered trademarks in India.

C)               The art works involved in the plaintiff’s trademark/label are original artistic works and the plaintiff is the registered owner and proprietor of the copyright therein.

D)              The word/mark POLO and DEVICE OF POLO PLAYER are a material part of the plaintiff’s trademark/label and are invented and

arbitrary trademarks. The word/mark POLO is also the most essential feature of the plaintiff’s trading style/trade name “The Polo/Lauren Company L.P.” and by virtue of continuous and uninterrupted use, the plaintiff’s trademark/label has become distinctive and is associated with and has acquired secondary significance with the plaintiff’s goods and business.

E)               The  plaintiff  also  uses  the  domain  names,  www.polo.com  ,

www.polo-ralph-lauren.in, www.pologolf.in, www.prl.in, www.global.polo.com for the sale of its goods.

F)                The revenue generated by the plaintiff for sale of its products under the said trademark/label worldwide, for the year 2015 was USD 7,620 million. In support of the aforesaid statement the plaintiff has filed consolidated statements of income, cash flows, equity, selected/quarterly financial information.

G)              The defendant no. 2 is the proprietor of defendant no. 1 and is engaged in the business of manufacturing, marketing, selling, supplying, soliciting and trade of readymade clothing and other allied/related products.

CS (COMM) 673/2016                                                                                                       Page 6 of 8

H)              In July, 2015, while making a random search of web-sites selling readymade garments and accessories, the plaintiff came to know that the defendant’s are selling readymade garments bearing the

word/mark/label POLO with or without the DEVICE OF POLO PLAYER through their website www.varshaa.com. The plaintiff made an online purchase of goods bearing the plaintiff’s trademark/label from the defendants’ website which showed that the goods were counterfeit and the said fact was confirmed by the plaintiff’s production department. In support of the aforesaid submissions the plaintiff has filed a copy of invoice raised by the defendants dated 16^th July, 2015.

I)                  The trademark/label POLO and DEVICE OF POLO PLAYER adopted by the defendants in relation to their goods and services are

identical with and deceptively similar to the plaintiff’s trademark/label in each and every respect including phonetically, visually, structurally, in its basic idea and in its essential features. The defendants’ use of the plaintiff’s trademark/label wrongly conveys to the public that the defendants’ goods originate from the plaintiff.

J)                 The defendants have dishonestly and fraudulently adopted the

plaintiff’s trademark/label with the intent to take advantage of and trade upon the goodwill and reputation of the plaintiff.

7.                 Having heard learned counsel for the plaintiff and having perused the documents placed on record, this Court is of the opinion that the plaintiff has proved the facts stated in the plaint.

8.                 In view of the above facts, the suit is decreed in favour of the plaintiff and against defendant in terms of prayer clause 43(a) of

CS (COMM) 673/2016                                                                                                       Page 7 of 8

the plaint along with the actual costs. The costs shall amongst others include the lawyers’ fees as well as the amounts spent on purchasing the court fees. The plaintiff is given liberty to file on record the exact cost incurred by it in adjudication of the present suit, if not already filed. Registry is directed to prepare a decree sheet accordingly. Consequently, the present suit stands disposed of.

MANMOHAN, J

MARCH 23, 2018

KA/mn

CS (COMM) 673/2016                                                                                                       Page 8 of 8