$~17 * IN THE HIGH COURT OF DELHI AT NEW DELHI Date of Decision :
22. 07.2013 + CS(OS) 1608/2010 WUXE ZHANG & ANR Through: ..... Plaintiff Mr. Gaurav Sarin, Advocate with Mr. Ankur Sangal, Advocate versus SUBHASH AGARWAL & ANR Through: NEMO ..... Defendant CORAM: HON'BLE MR. JUSTICE VIPIN SANGHI JUDGMENT VIPIN SANGHI, J.
(ORAL) The plaintiff has filed the present suit to seek the reliefs of injunction, passing of, copyright infringement, rendition of accounts, delivery up and damages against the defendants. The case of the plaintiff is that it is the prior user and adopter of the trademark GFIVE, which has been adopted by the plaintiff since 01.09.2008. The defendant has been using the mark, XFIVE which is phonetically, visually similar and deceptively similar to the plaintiffs mark, GFIVE. The user of the defendant is in the same class of goods i.e. class 35 in which plaintiffs mark is registered. The plaintiff and the defendants are using their respective marks in respect of mobile phones. When the plaintiff preferred the present suit, its application for registration of its trademark, GFIVE was pending registration. The same has been registered vide Certificate bearing No. 1825260 dated 03.06.2009 in class 9, No. 1956322 dated 26.04.2010 in class 9 and No. 1956323 dated 26.04.2010 in class 35, during the pendency of the suit. The mark of the plaintiff which has since been registered is as follows: The mark used by the defendants is as follows: The plaintiff moved an application being I.A. No. 10428/2011 under Order 39 Rules 1 & 2 CPC to claim ad interim orders of injunction against the defendants, to restrain the defendant from using their mark, XFIVE. This application was heard by the Court and allowed on 05.05.2011. Since this order records the case of the plaintiff in some detail, I reproduce the same herein below:
1. Despite service, the defendant has failed to appear in this matter and consequently been proceeded ex-parte. The plaintiff is claiming to be the owner of the trademark, GFIVE and has made a grievance of the defendants dishonestly adopting the trademark XFIVE.
2. The plaintiff has stated that it began using the trademark GFIVE with effect from 1st September, 2008 and had applied for registration of the said trademark as well on 3rd June, 2009 and 26th April, 2010 in different classes. The plaintiff has also placed before this Court details of the world wide registration of the trademark GFIVE in several countries. The plaintiff has claimed to be engaged in manufacturing, trading and marketing diverse products including mobile phones and allied goods under the said trademark. The plaintiffs are interconnected. In support of the claimed rights in respect of the subject trademark, the plaintiff has placed before this Court a designing contract of the trademark with M/s Belcon Design Ltd. The plaintiff is also claiming to be registered under the IMEM, BAVP and GSMA. Detailed assertions have been made in the plaint and the documents in support have been placed which would suggest that the plaintiff is based in India. So far as mobile phones are concerned, the plaintiffs mark is preceeded only by Nokia and Samsung phones. With regard to the position occupied by the plaintiff, the plaintiff has placed before this Court newspaper reports in the Economic Times dated 29th September, 2010; Times of India dated 29th December, 2010 and other documents.
3. Also on record is documentary evidence manifesting the steps taken by the plaintiff with regard to the publicity of the plaintiffs mobile under the trademark GFIVE.
4. At the time of the filing of the instant suit, the plaintiff has placed its market share at 1.4% and its world wide sales to the tune of 4.3 millions units. The plaintiffs turnover in India is stated to be 92% of its global turnover between January to December, 2009. Reliance is placed by the plaintiff on the Gartner survey of May, 2009 where the plaintiff has been ranked 9th in terms of market share of sales.
5. The defendant is stated to have been a distributor of the plaintiff who was so appointed on 14th August, 2009. It is complained that in such capacity the defendant learnt about the goodwill attached to the plaintiffs trademark and has dishonestly adopted the impugned trademark. Conscious of the reputation attained by the product of the plaintiff as well as the goodwill associated to the trademark GFIVE, the defendant is stated to have adopted the trademark XFIVE after its appointment as a plaintiffs distributor.
6. The plaintiff has asserted that the trademark adopted by the defendant is substantially similar to the plaintiffs trademark. The plaintiff has asserted that the adoption of the trademark by the defendant is dishonest and is in violation of the rights of the plaintiff in its trademark G-5 which was adopted much prior to the adoption of the defendant of the trademark complained against.
7. The plaintiff has also pointed out that having regard to the nature of the similarity of the product as well as the fact that the defendant was the plaintiffs agent, there is every likelihood of deception and confusion in the minds of the public that the mobile phones being sold by the defendant under the trademark XFIVE emanate from the plaintiff. The plaintiff also points out that the defendant is utilizing literature which is also displayed on its website wherein it draws no distinction between the proprietorship and ownership of mobile phones which are sold by it and that trademark GFIVE and XFIVE are collectively displayed.
8. The record of the case shows that the defendant put in appearance in the case on 9th August, 2010 through counsel who appeared on a few dates without filing any written statement. After the matter was heard for some time on 24th January, 2011, learned counsel for the defendant took time to seek instructions from his client on the aspect of changing the trademark so that there was no similarity between the trademarks. The matter was adjourned thrice thereafter and finally on 7 April, 2011, learned counsel representing the defendant withdrew from appearance on his behalf. th 9. The above narration would show that there is prima facie phonetic and visual similarity between the trademark GFIVE and XFIVE. The plaintiff has also prima facie made out a case of prior user and adoption of the trademark GFIVE.
10. In view of the above, the prayer made in this application deserves to be granted. The defendants are using a similar trademark as that of the plaintiff with regard to the same product that is mobile phones. The plaintiff has made out a prima facie case for grant of an ad interim injunction. Balance of convenience, interest of justice and equities are also in favour of the plaintiff and against the defendants. The plaintiff would suffer irreparable loss and damage if the defendants continue with their illegal activities. It is accordingly directed as follows: The defendant shall stand restrained from using the trademark XFIVE or services relating to mobile phones or from using the said mark in relation to their activities or any other mark which is similar to the plaintiffs trademark which is likely to cause deception in the minds of the public at large that its products are emanating from or have an association with the products of the plaintiff. The application is allowed in the above terms. Written statement was filed by the defendants on 18.10.2010. In their written statement, the defendants stated that in the first week of January, 2009, they adopted their mark. The defendants also admitted the plaintiffs case that they were the distributors of the plaintiffs. The defendants also took the defence that there were others also using the same mark as that of the plaintiffs. The defendants stopped participating in the proceedings and on 02.05.2011, the plaintiff was proceeded ex-parte. Thereafter the plaintiff has led ex parte evidence on affidavit of Shri Ajikumar M.K., the power of attorney holder as PW1 which was tendered on 08.08.2012 as Ex.PW1/A. The plaintiff has exhibited 39 documents as Ex.PW1/1 to Ex.PW1/39, which are as under:- EXHIBITS PARTICULARS EX.PW 1/1 Power of Attorney dated Aug 3, 2010, executed by Mr. Wuxue Zhang in favour of Mr. Ajikumar. EX.PW 1/2 The extract of the Board Resolution dated Aug 1, 2010, executed in favour of Mr. Ajikumar for authorizing him by way of PoA. EX.PW 1/3 The share holding Pattern of the Plaintiffs Entities. EX.PW 1/4 The Certificate of change of name of the Plaintiff Company from Zerore Grp Limited to GFive International limited issued by Registrar of companies, Hong Kong dated January 4, 2010. EX.PW 1/5 Design contract between the plaintiff & M/s Barcen Design Ltd dated May 8, 2008 with its English Translation. EX.PW 1/6 The website