Judgment:
* % + IN THE HIGH COURT OF DELHI AT NEW DELHI Date of decision:
13. h February, 2019 CS(COMM) 825/2018 PURSHOTAM KESHWANI & ORS. ..... Plaintiffs Through: Mr. Akhil Sibal, Sr. Adv. with Mr. Kartik Nayar, Mr. Nikhil Y. Chawla & Mr. Rishab Kumar, Advs. Versus NISHANT MITRASEN MAHIMTURA & ORS. ..... Defendants Through: Mr. Pradeep Vade and Mr. Venkata Krishna, Advs. CORAM: HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW IA No.5693/2018(u/O.XXXIX R. 1 & 2 CPC).
1. The application of the plaintiffs for interim relief is for consideration.
2. The four plaintiffs namely, (i) Mr. Purshotam Keshwani; (ii) Mr. Sidhant Keshwani; (iii) LIBAS Impex; and, (iv) LIBAS Fashions Pvt. Ltd. have instituted this suit, against the four defendants, namely, (a) Nishant Mitrasen Mahimtura; (b) Ms. Reshma Riyaz Gangji; (c) Riyaz Eqbal Gangji; and, (d) LIBAS DESIGN LTD., for permanent injunction restraining infringement of trade mark, passing off and for ancillary reliefs. The mark of the plaintiffs as under:-
"3. CS(COMM) 825/2018 Page 1 of 11 is registered in Class 24 (Textile fabrics including suiting, shirtings, sarees and the dress material) and in Class 25 (Hosiery and readymade garments.
4. The mark of the defendants as under:-
"is also registered inter alia in Class 37 (building constructions; repair, installation services) and in Class 35 (Services, Advertising, Business Management, Business Administration, Office functions).
5. Summons of the suit and notice of the application for interim relief were ordered to be issued to the defendants on 26th April, 2018. On that date, the counsel for the plaintiffs did not press for ex parte relief, reserving the right to seek the same after completion of pleadings. The order dated 10th July, 2018 records that the defendants no.1,3&4 had been served. The counsel for the defendants has been appearing in this suit since 4th October, 2018 and the written statement of all the defendants was filed even prior thereto.
6. The counsel for the defendants today states that the documents filed by the plaintiffs along with the plaint have not been furnished to the defendants and are not available with him.
7. At no earlier point of time was any grievance made in this respect. In fact, the application of the plaintiffs for interim relief was listed on 8th January, 2019 when the counsel for the defendants did not appear on first call and appeared at the fag end of the day and assured the Court that in CS(COMM) 825/2018 Page 2 of 11 future he shall make appropriate arrangements for appearance on time; on his request, though the senior counsel for the plaintiffs appearing on that day also had been heard, the hearing was adjourned to today. On that date also no grievance was made of the documents having not been received. Thus no adjournment on such ground can be granted.
8. The counsel for the defendants then states that he is a new counsel and has appeared today for the first time.
9. Merely because the defendants have changed their counsel, would not entitle the defendant to any benefit thereof.
10. The senior counsel for the plaintiffs, as aforesaid, was heard on 8th January, 2019 and has been further heard today. The counsel for the defendants also has been heard.
11. I have enquired from the senior counsel for the plaintiffs, whether a suit for infringement of trade mark lies against another registered trade mark.
12. The senior counsel for the plaintiffs has referred to para 14 of Clinique Laboratories LLC Vs. Gufic Limited 2009 (41) PTC41(Del) and to para 57 of Bloomberg Finance LP Vs. Prafull Saklecha (2014) 207 DLT35and on the basis thereof has contended that a suit for infringement against a registered trade mark is maintainable and if the Court prima facie finds that the registration obtained by the defendant to be invalid, interim injunction restraining use of the registered mark can also be granted. The counsel for defendants has not controverted.
13. The counsel for the defendants has at the outset also taken a plea CS(COMM) 825/2018 Page 3 of 11 that the plaintiffs, before institution of the present suit, applied to the Intellectual Property Appellate Board (IPAB) for rectification of Register of Trade Marks, for removal therefrom of the mark of the defendants and contends that the proceedings in the present suit are thus liable to be kept in abeyance.
14. There is no merit in the aforesaid contention.
15. I have in Clinique Laboratories LLC supra held that stay of proceedings under Section 124 of the Trade Marks Act, 1999 does not come in the way of the Court dealing with an application for interim relief. Reference in this regard can also be made to Rajnish Aggarwal Vs. Anantam 2009 SCC OnLine Del 3827.
16. Else, it is the contention of the senior counsel for the plaintiffs, (i) that while the plaintiffs, in their applications for registration, claimed use of the mark since the year 1986, the defendants, in their applications for registration of the mark, claimed use since the year 1997; the plaintiffs are thus clearly the first user of the mark; (ii) that while the plaintiffs first applied for registration in Classes 24 & 25, which are specific to the goods for which the mark is used, on 12th April, 2002, and registration in Class 24 was granted on 23rd May, 2006 and registration in Class 25 was granted on 19th March, 2009, the defendants first applied for registration, only in the year 2007, that too in Classes other than in which the goods fall, and the defendants were first granted registration in the year 2012 and in Class 35 (relating to services) on 3rd April, 2018; (iii) that when the defendants first applied for registration in Class 35 in the year 2007, the plaintiffs already held registration in Class 24 and the registration of the CS(COMM) 825/2018 Page 4 of 11 plaintiffs in Class 25 also is of a date much prior to the registration granted to the defendants in the year 2012 and/or on 3rd April, 2018; (iv) that the defendants, on 7th October, 2013, again applied for registration of the same mark in Class 35 and which application of the defendants was rejected on 12th February, 2018 inter alia citing the prior registration in favour of the plaintiffs in Classes 24 & 25; (v) that the defendants have not placed before this Court any document to show use of the mark; and, (vi) that else the mark of the defendants is identical to that of the plaintiffs.
17. The senior counsel for the plaintiffs contends that the plaintiffs have thus made out a case for grant of ex parte ad interim injunction.
18. I may at this stage record that the certificate of registration in favour of the defendants in Class 35, describes the registration to have been granted for retailing of garments, accessories, shoes, ladies wear, leather/art/synthetic garments and accessories.
19. Per contra, the counsel for the defendants has argued, (i) that the plaintiffs, in the plaint, have admitted use by the defendants of the mark and cannot argue that the defendants are not using the mark; attention in this regard is drawn to paras 22 & 23 of the plaint; (ii) that the defendants have their store in New Delhi South Extension since the year 2010; (iii) that this suit has been filed in the year 2018 on learning of listing of the defendant no.4 Company on The International Stock Exchange and “realising that the plaintiffs have missed the bus”; (iv) that the defendants have international offices all over the world; (v) that the mark of the plaintiffs is generic, and others also are using the same mark; attention is CS(COMM) 825/2018 Page 5 of 11 drawn to para 13 of the written statement of the defendants in this regard; (vi) that the plaintiffs admit having learnt of the mark of the defendants in the year 2017 but filed the suit only in the year 2018 and are not entitled to interim relief on account of acquiescence, laches and waiver; and, (vii) that the mark of the defendants is even otherwise distinguishable from that of the plaintiffs, owing to also having the words „RIYAZ GANGJI‟ therein and which are not to be found in the mark of the plaintiffs.
20. The senior counsel for the plaintiffs, in rejoinder has contended (i) that the plaintiffs, in paras 22 & 23 of the plaint have pleaded knowledge of the mark of the defendants on receiving a WhatsApp message from some unknown telephone number and have not pleaded any use of the mark by the defendants, and elsewhere also not admitted use of the mark by the defendants; (ii) that the written statement of the defendants does not contain any plea of use and no documents have been filed in support of what is being argued today; (iii) that the defendants are estopped from contending the mark to be generic and from taking the plea, of others also using the same mark; (iv) reliance in this regard is placed on Procter & Gamble Manufacturing (Tianjin) Co. Ltd. Vs. Anchor Health & Beauty Care Pvt. Ltd. MANU/DE/1365/2014 and Pankaj Goel Vs. Dabur India Ltd. 2008 (38) PTC49(Del); (v) that of the nineteen instances pleaded by the defendants in their written statement, of use of the mark „LIBAS‟ by others, applications for registration of eleven already stand abandoned, one of the applications referred to is of the plaintiffs, the six applications which stand registered, are of the year 2009 i.e. of after the registrations in favour of the plaintiffs and though registration of one of the marks is of prior to registration in favour of the plaintiffs, but there is no evidence of CS(COMM) 825/2018 Page 6 of 11 any use of the said mark and the plaintiffs also have not found the said registration being used; (vi) that the addition of the words “RIYAZ GANGJI” on the mark of the defendants does not distinguish the mark of defendants from that of the plaintiffs ;and (vii) attention is drawn to Rolex Sa Vs. Alex Jewellery Pvt. Ltd. 2009 (41) PTC284(Del) and on Ansul Industries Vs. Shiva Tobacco Company 2007 (34) PTC392(Del) to contend that infringement and passing off are recurring causes of action and the delay even if any is immaterial.
21. I have considered the rival contentions and find the plaintiffs entitled to interim injunction sought. My reasons therefor are as under:-
"A. Though the registration of the plaintiffs as well as of the defendants are of a label/device mark and not of a word mark but the label/device of both is nothing but the word „LIBAS‟. B. The plaintiffs use the subject mark for the business of manufacturing/fabricating, distributing and retailing of textile fabrics, suits, ladies wear, readymade clothes, lehengas, kurtas etc. The defendants also claim to use the subject mark for manufacturing and carrying on business in readymade garments, articles of clothing for mens, ladies as well as children wear, shirts, T-shirts, trousers, jeans, pants, chudidhar kurta payjama, hosiery, readymade garments, wearing apparels. Thus the use of the mark by both, is for the same goods and services. C. Considering the said aspect, the additional words “RIYAZ GANGJI” on the label/device of the defendants are not found CS(COMM) 825/2018 Page 7 of 11 to be sufficient to distinguish the goods/services of the defendants from that of the plaintiffs. D. Once the dominant word/s on the label/device of both are identical i.e. „LIBAS‟ are the same, interim injunction has to follow. I have in Allied Blenders & Distillers Private Limited Vs. Shree Nath Heritage Liquor Private Limited 2014 SCC OnLine Del 3412, giving reasons in detail held that the test is not of photogenic or perfect memory but of imperfect memory / recollection and need to reiterate is not felt. Reference in this regard may also be made to Prathiba M. Singh Vs. Singh and Associates 2014 SCC OnLine Del 1982, Shree Nath Heritage Liquor Pvt. Ltd. Vs. Allied 221 (2015) DLT359(DB), Proctor & Gamble Manufacturing (Tianjin) Co. Ltd. Vs. Anchor Health and Beauty Care Pvt. Ltd. (2016) 234 DLT331(DB) and The Gillette Company LLC Vs. Tigaksha Metallics Private Limited (2018) 251 DLT530 E. Even otherwise, considering the trade/industry in which both are, the words “RIYAZ GANGJI”, even if noticed by the consumer, are likely to be considered as a sub-brand of the brand of the plaintiffs i.e. a line of clothing under the mark „LIBAS‟, by “RIYAZ GANGJI”. F. That else, it is not in dispute that the plaintiffs are the prior adopter/user/registrant/ of the mark and thus the rights of the plaintiffs have to prevail over the rights of the defendants. CS(COMM) 825/2018 Page 8 of 11 G. I have in New Balance Athletics Inc. Vs. Apex Shoe Company Pvt. Ltd. MANU/DE/0647/2019 and order dated 21st October, 2016 in CS(COMM) No.1433/2016 titled Ramaiah Life Style Café Vs. Eminent Entertainment held that though delay and laches if any in approaching the Court for injunction may be relevant factor at the stage of ex parte consideration of the application for interim stay but is not a consideration at the after notice stage. Further reference in this regard may also be made to BDA Pvt. Ltd. Vs. Paul P. John 2008 (37) PTC669(Del.) and B.L. & Co. Vs. Pfizer Products Inc. 2001 (21) PTC97(Del.) (DB). Even otherwise, the delay in the present case is not such so as to disentitle the plaintiffs of interim relief. The defendants, save for taking this plea, have not pleaded/disclosed as to what prejudice they have suffered from the delay pleaded. It is not pleaded that the defendants have changed their position in any manner during the period of delay averred. H. Else, the defendants have not disclosed the use or the extent of use of the mark, while the plaintiffs have made pleadings with particulars in that respect. I. The pleas of the defendants, of use of the mark by others are also vague. Without disclosing the extent of the use of the mark by others, the defendants cannot defeat the claim of the plaintiffs for interim injunction. I have in Sunil Mittal Vs. Darzi on Call (2017) 242 DLT62 Insecticides (India) Ltd. CS(COMM) 825/2018 Page 9 of 11 Vs. Parijat Industries (India) Pvt. Ltd. (2018) 252 DLT129and H&M Hennes & Mauritz AB Vs. H.M. Megabrands Pvt. Ltd. 2018 SCC OnLine Del 9369 held that the owner/proprietor of a mark is not expected to rush against each and every person infringing the mark and/or passing off his goods as that of the plaintiffs and is expected as a prudent businessman to take action only against those, use by whom affects the mark of the plaintiffs. J.
The plaintiffs thus have a prima facie case in their favour. K. The elements of balance of convenience and irreparable loss and injury are also found in favour of the plaintiffs and against the defendants. While the plaintiffs have pleaded and filed documents of use of the mark by them and from which the injury suffered by the plaintiffs from the defendants continued use of the infringing mark is evident, the defendants have neither pleaded nor filed any documents qua use of the mark by the defendants.
22. The application for interim thus succeeds.
23. The defendants, during the pendency of the suit, are restrained from directly or indirectly dealing with any products or any other goods or services including of retailing under the trade mark „LIBAS‟ and from using the word „LIBAS‟ as part of any trade name and/or of cartons, packagings, label(s), dyes, blocks, part of e-mail address, websites and/or in any other manner whatsoever. CS(COMM) 825/2018 Page 10 of 11 24. The counsel for the defendants at this stage states that the injunction order be stayed for two months because the defendants intend to file an appeal.
25. The defendants have had sufficient opportunity and once the plaintiffs are found entitled, the order of injunction cannot be kept in abeyance unless the defendants want to settle with the plaintiffs and need time for effecting change in name and give undertaking not to use the mark of the plaintiffs or any other deceptively similar mark at any time in future. RAJIV SAHAI ENDLAW, J.
FEBRUARY13 2019 „pp‟.. (Corrected and released on 28th February, 2019). CS(COMM) 825/2018 Page 11 of 11