DCM Shriram Limited v. Amreek Singh Chawla & Ors.

2014. The said invoice dated 28th October, 2014 is reproduced as under:

10. Thus, it is submitted that from the aforesaid, it is clear that the product of the defendants, „Sartaj 404‟, has been in the market since 2014, which is prior to the 404 Wheat seeds of the plaintiff, which was introduced only in the year 2015.

11. Learned Senior Counsel for the defendants has also drawn the attention of this Court to the list of notified varieties, wherein, at serial NO. 232, a variety, i.e., NP-404 is shown to be in use since 1965, with date of notification being 01st January, 1967. The relevant portion of the document in question is reproduced as under: “ xxx xxx xxx

12. Thus, learned Senior Counsel for the defendants submits that „404‟ is a kind of variety of the seed, which has been in existence since a long time.

13. Learned Senior Counsel for the defendants has also drawn the attention of this Court to the invoice dated 21st October, 2015 of the plaintiff, wherein, „Shriram Super 404‟ is shown to be sold. Thus, it is submitted that the sale of the defendants for the variety „404‟ is much prior to that of the plaintiff.

14. Attention of this Court has also been drawn to a document showing the registration with number 303, in favour of a third party, by the name Nirmal-303 (Julie), showing the user detail from 01st January, 2002. The said document is reproduced as under:

15. Thus, it is submitted that the use of the number „303‟ by a third party is, 11 years prior to that of the claim of the plaintiff.

16. Learned Senior Counsel for the defendants submits that „303‟ and „404‟ are varieties of seeds, over which the plaintiff cannot claim monopoly. He, thus, submits that defendants have been in the market for more than 10 years and selling their products under the said numbers „303‟ and „404‟ under their own mark.

17. Learned Senior Counsel for the defendants further submits that though plaintiff claims to be using its packaging for a long time, no evidence of actual user of the packaging has been stated or produced.

18. Attention of this Court has been drawn to the plaintiff‟s documents, wherein, the plaintiff has filed an application dated 26th September, 2019 for its device/packaging, with user detail shown as „proposed to be used‟. The said document is reproduced as under:

19. Issue notice. Notice is accepted by learned counsel appearing for the plaintiff.

20. Learned counsel for the plaintiff, on the other hand, draws the attention of this Court to the table showing the comparison of the trade dress of the plaintiff and the defendants. He submits that the defendants are using a similar packaging/ trade dress as that of the plaintiff and that there is deceptive similarity, thereto. He further draws the attention of this Court to the report filed by the Local Commissioner to submit that the Local Commissioner was manhandled and there was huge resistance from the defendants in the execution of the local commission. He submits that on account thereto, police complaint had to be filed by the plaintiff as well as by the Local Commissioner against the defendants.

21. He further draws the attention of this Court to the notice dated 07th October, 2013 to show that the number „303‟ has been used by the plaintiff, since the year 2013.

22. Learned counsel for the plaintiff submits that the defendants had copied the device mark of the plaintiff, as well as the picture of the wheat, which is likely to create deception in the minds of the consumers.

23. I have heard learned counsel for the parties and have perused the record.

24. Considering the aforesaid discussion, this Court is prima facie of the view that the plaintiff did not approach this Court with clean hands when it made the assertion that it discovered about the defendants only in October,

2024. The documents filed by the defendants clearly show that the plaintiff was aware of the defendants since the year 2018.

25. This Court has also perused the documents which clearly show that the defendants have been conducting its business under its mark „303‟ and „404‟ for more than 10 years, since 2014.

26. Considering the facts of this case, it is prima facie established that the plaintiff is guilty of material suppression and misrepresentation before this Court. Further, the plaintiff is also guilty of non-compliance in terms of Order XI of the CPC, as amended by the Commercial Courts Act, 2015, wherein, a party is required to disclose all the documents in its power, possession, control or custody, pertaining to the suit, along with the plaint. Further, Order XI Rule 12 of CPC, casts a duty upon the parties to disclose all documents, which shall continue till disposal of the suit. The Order XI Rule 1 and 12 of CPC reads as under: “ORDER XI Disclosure, Discovery and Inspection of Documents in Suits Before the Commercial Division of a High Court or a Commercial Court

1. Disclosure and discovery of documents.— (1) Plaintiff shall file a list of all documents and photocopies of all documents, in its power, possession, control or custody, pertaining to the suit, along with the plaint, including: (a) Documents referred to and relied on by the plaintiff in the plaint; (b) Documents relating to any matter in question in the proceedings, in the power, possession, control or custody of the plaintiff, as on the date of filing the plaint, irrespective of whether the same is in support of or adverse to the plaintiffs case; xxx xxx xxx (12) Duty to disclose documents, which have come to the notice of a party, shall continue till disposal of the suit.

27. In a similar matter, where a party misrepresented the occurrence of the cause of action and all the facts were not brought before Court, this Court in the case of Tata Sons Private Limited & Anr. Versus Marvel Limited, CS(COMM) 724/2024, vide order dated 23rd October, 2024, had proceeded to vacate the stay on the same day.

28. In the judgment dated 14th December, 2023, in the case of Freebit AS Versus Exotic Mile Private Limited, 2023 SCC OnLine Del 8213, this Court while holding that a plaintiff approaching the court for equitable relief has to approach with clean hands, has held as follows: “xxx xxx xxx

36. In Satish Khosla v. M/s. Eli Lilly Ranbaxy Ltd. [71 (1998) DLT 1 (DB)], the ld. Division Bench of this Court has underscored the importance of candour and forthrightness in instituting legal proceedings. It is incumbent upon a Plaintiff that approaches the Court to approach the Court with „clean hands‟, a principle that mandates the full disclosure of all relevant and material facts. This disclosure is not limited to facts that bolster a party's case but extends to all information that could potentially aid in a comprehensive and fair adjudication of the dispute. The duty of disclosure encompasses not only the submission of all documents pertinent to the current litigation but also an obligation to inform the Court of any previous litigations between the parties, any previous litigations concerning the suit patent, along with their respective outcomes. Such transparency is indispensable for ensuring that the Court has a complete and unobscured view of the relevant factual landscape, which is crucial for the fair dispensation of justice. The relevant extract of the said decision is set out below:

15. In S.P. Chengalvaraya Naidu v. Jagannath and Others, AIR 1994 SC 853 it was held that the Courts of Law are meant for imparting justice between the parties. One who comes to the Court, must come with clean hands. "It can be said without hesitation that a person whose case is based on false-hood has no right to approach the Court. He can be summarily thrown out at any stage of the litigation. A litigant, who approaches the Court, is bound to produce all the documents executed by him which are relevant to the litigation. If he withholds a vital document in order to gain advantage on the other side then he would be guilty of playing fraud on the Court as well as on the opposite party.”

16. … … It is contended by Mr. Oberoi, appearing on behalf of the respondent that the respondent had no intention or motive to suppress the pendency of the earlier application in which the stay was not granted and having disclosed in the plaint that a suit between the parties was pending, it was not relevant or necessary to mention that in the said suit the Court had not granted any stay in its favour. In our view, the arguments are wholly fallacious. A party must come to the Court with clean hands and must disclose all the relevant facts which may result in appreciating the rival contentions of the parties. In our view, a litigant, who approaches the Court, must produce all the documents which are relevant to the litigation and he must also disclose to the court about the pendency of any earlier litigation between the part is and the result thereof. … … In our opinion, it was obligatory upon the respondent to disclose to the Court that in the application filed in the earlier suit a similar relief had been claimed, however, the Court had not granted the said relief. In our view, if these facts were before the Court on February 6, 1997 when the second suit came up for hearing before it, may be Hon'ble the Single Judge was persuaded not to grant any ex parte stay in favor of the respondent. Moreover, in a suit for specific performance of an agreement to register the agreement of lease, it appears to us that the plaintiff could not claim an injunction which had already been claimed in Suit No. 3064/96. We are, Therefore, of the opinion that the respondent has not come to the Court with clean hands and has also suppressed material facts from the Court with a view to gain advantage in the second suit. This in our view is clearly over reaching the Court.”

37. The Supreme Court in Arunima Baruah v. Union of India (UOI) [MANU/SC/7366/2007] emphasised the importance of the maxim “He who comes into equity must come with clean hands.” The Supreme Court ruled that suppression of material facts by a party can impact their right to equitable relief. This principle would also be relevant in a suit for patent infringement, where the Plaintiff‟s failure to disclose revocations or invalidations of corresponding foreign patents of the asserted patent has a material bearing on the case. Such suppression and misrepresentation would undoubtedly affect the Court‟s willingness to grant equitable relief, as it contradicts the principle of approaching the court with clean hands.

38. Vide judgement dated 29th July, 2010, a ld. Single Judge of this Court, in Charanjit Thukral and Ors. v. Deepak Thukral and Ors. (2010:DHC:3737) again emphasised that Plaintiffs seeking relief from the Court, whether equitable or otherwise, are obligated to honestly disclose all material facts relevant to a case. Plaintiffs seeking an injunction must inform the Court of all material facts pertinent to their claim for an injunction. Failure to do so, even under the guise of being unaware of the significance of any omitted facts, is not permissible. Court possesses the inherent authority to deny an injunction if the plaintiff acts in bad faith or withholds any material facts. The relevant extracts of the said decision are set out below:

17. Interim order is passed as a temporary arrangement to preserve the status quo till the matter is decided finally, to ensure that the matter does not become either infructuous or a fate accompli before the final hearing. The purpose of an interlocutory injunction is, to protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the uncertainty was resolved in his favour at the trial.

18. It is settled principle of law that a person who approaches the Court for grant of relief, equitable or otherwise, is under a solemn obligation to candidly disclose all the material/important facts which has bearing on the adjudication of the issues raised in the case. It is the duty of the party asking for an injunction to bring to the notice of the Court all facts material to the determination of his right to have injunction and it is not an excuse for him to say that he was not aware of the importance of any facts which he has omitted to bring forward. Where plaintiff does not act bona fidely and does not put every material facts before the Court, the Court is within its inherent power to refuse to grant him injunction, even though there might be facts upon which injunction might be granted. Conduct of the plaintiff is very material in bringing the case and disclosing the facts before the Court. plaintiff is required to make fullest possible disclosure of all material facts within his knowledge to the Court and if he does not make that fullest possible disclosure, he cannot obtain any advantage from the proceedings and is liable to be deprived of any advantage he might have already obtained by means of the order which has thus wrongly been obtained by him by concealment of material facts.

39. The specific view that suppression and misrepresentation can have a bearing on interim injunction application, especially in the context of IP disputes, was upheld by a ld. Single Judge of this Court in Aura Synergy India Ltd & Anr v. M/s New Age False Ceiling Co Pvt Ltd, [2016:DHC:1109]. The said decision has also been approved by the ld. Division Bench vide judgement dated 18th November, 2016 in Aura Synergy India Ltd & Anr v. M/s New Age False Ceiling Co Pvt Ltd, [2016:DHC:7530-DB].

29. In the above cited judgment, reference has been made to the judgment of the Supreme Court in the case of Kishore Samrite Versus State of U.P. and Ors., (2013) 2 SCC 398, wherein, with regard to suppression and misrepresentation, it has been held as follows:

38. No litigant can play “hide and seek” with the courts or adopt “pick and choose”. True facts ought to be disclosed as the court knows law, but not facts. One, who does not come with candid facts and clean breast cannot hold a writ of the court with soiled hands. Suppression or concealment of material facts is impermissible to a litigant or even as a technique of advocacy. In such cases, the court is duty-bound to discharge rule nisi and such applicant is required to be dealt with for contempt of court for abusing the process of court. (K.D. Sharma v. SAIL [(2008) 12 SCC 481].)

30. Judgment of learned Single Judge in Freebit AS (Supra) was carried in an appeal. The learned Division Bench vide its judgment dated 31st January, 2024 in the case of Freebit AS Versus Exotic Mile Private Limited, 2024 SCC OnLine Del 5361, has held as follows:

19. Undeniably, the errors as pointed out above are significant and adverse to the appellant's case. Given the vast extent of incorrect presentation, the fact that the appellant had correctly disclosed that its application for European Patent was revoked by the European Patent Office, does not mitigate the overall misrepresentation on the part of the appellant. Revocation of patent in one jurisdiction, while persisting in a large number of jurisdictions would suggest that the case of revocation is just one-of aberration. However, revocation of the patent and refusal to grant the same in several jurisdictions would suggest that there is a serious challenge to the validity of the patent.

20. In view of the above, the conclusion of the learned Single Judge that the appellant had suppressed and misrepresented material facts, cannot be faulted. There is no cavil that an interim relief under Order XXXVII Rule 1 and 2 of the CPC are discretionary reliefs and suppression or misrepresentation of facts by a party disentitles it to such a relief.

21. The learned Single Judge had referred to an earlier decision of this Court in Satish Khosla v. Eli Lilly Ranbaxy, 1997 SCC OnLine Del 935. In this case the Court had rejected the suit on account of the failure to disclose earlier proceedings. In addition, the learned Single Judge had also referred to various authorities where the courts had declined relief on account of misrepresentation on the part of the party seeking relief. There is no cavil that in cases where a party seeking interim relief has withheld necessary information and misrepresented material facts, it would be disentitled for equitable relief. We are, thus, unable to accept that the learned Single Judge had disregarded any settled principles of law in rejecting the appellant's application for interim relief.

31. A Co-ordinate Bench of this Court in the case of Kent Ro System Ltd. and Another versus Gattubhai and Others, 2022 SCC OnLine Del 791, while holding that vacation of stay is liable to be granted on suppression and concealment alone, has held as follows:

23. Furthermore, a party that approaches the court for a grant of discretionary relief has to come with clean hands and disclose all material facts, which would have a bearing on the merits of the case. It has been held in Wheels India v. S. Nirmal Singh [Wheels India v. S. Nirmal Singh, 2009 SCC OnLine Del 3251] and Seemax Construction (P) Ltd. v. State Bank of India [Seemax Construction (P) Ltd. v. State Bank of India, 1991 SCC OnLine Del 668: AIR 1992 Del 197], that the orders granting injunction, which are obtained on account of deliberate suppression of material facts, are liable to be vacated on the ground of suppression and concealment alone. The observations of this Court in Wheels India case [Wheels India v. S. Nirmal Singh, 2009 SCC OnLine Del 3251] are set out below: “18. The plaintiff, therefore, has disentitled itself to the equitable relief of injunction on account of deliberate suppression of material facts in the plaint as well as suppression of documentary evidence from the scrutiny of this Court. Concealment of material facts or documents deserves to be seriously viewed, for one who comes to the court owes a duty to the court to disclose all facts and documents to the court. The contention of the plaintiff in the instant case that it had disclosed in the plaint that it was purchasing goods from the defendants is neither here nor there. The plaintiff deliberately and intentionally, in my view, hid from the court the fact that Defendant 2, M/s Prince Auto Industries had been dealing with the same goods, viz. wheel covers and auto accessories and had made a mark in its field of activity well before the plaintiff got registered the trade mark „Prince‟. The plaintiff also hid from the court the exact relationship between the plaintiff and the defendants and that there were written agreements to ensure the smooth working of the said relationship duly executed by the parties and registered with the statutory authorities. The reason for suppression of such material facts is clearly discernible. Had the plaintiff stated in the plaint that Defendant 2 had been in the same field of activity from the year 1998 under the trade name „Prince Automobile Industries‟ and had the plaintiff further stated in the plaint that it had been working as the authorised stockiest of the plaintiff from the year 2001 to the 15-9-2004, the plaintiff, in my view, may not have succeeded in obtaining an ex parte ad interim injunction from this Court, which is enuring to the benefit of the plaintiff till date, though with some modification.”

24. In the present case also, the aforesaid documents were deliberately not disclosed by the plaintiffs to the court as the same were detrimental to the case of the plaintiffs. If the aforesaid documents were disclosed, it is possible that the court would not have granted the ex parte ad interim injunction in favour of the plaintiffs. Concealment of material facts and documents is a serious matter and sufficient for disqualifying a litigant from obtaining relief. Reference in this regard has been rightly made by the counsel for the defendants to the judgments in S.J.S. Business Enterprises (P) Ltd. case [S.J.S. Business Enterprises (P) Ltd. v. State of Bihar, (2004) 7 SCC 166] and Harkirat Singh case [Harkirat Singh v. Amrinder Singh, (2005) 13 SCC 511].

25. Therefore, the ex parte ad interim injunction granted in favour of the plaintiffs by this Court vide order dated 13-8-2019 is liable to be vacated on the grounds of gross suppression and concealment of material facts alone.

32. Similarly, the Supreme Court in the case of High Court Bar Association, Allahabad Versus State of Uttar Pradesh and Others, (2024) 6 SCC 267, while elucidating on the power of High Courts to vacate or modify an order of interim relief, has held as follows:

17. The High Courts are always empowered to vacate or modify an order of interim relief passed after hearing the parties on the following, amongst other grounds:

17.1. If a litigant, after getting an order of stay, deliberately prolongs the proceedings either by seeking adjournments on unwarranted grounds or by remaining absent when the main case in which interim relief is granted is called out for hearing before the High Court with the object of taking undue advantage of the order of stay;

17.2. The High Court finds that the order of interim relief is granted as a result of either suppression or misrepresentation of material facts by the party in whose favour the interim order of stay has been made; and

17.3. The High Court finds that there is a material change in circumstances requiring interference with the interim order passed earlier. In a given case, a long passage of time may bring about a material change in circumstances.

18. These grounds are not exhaustive. There can be other valid grounds for vacating an order of stay.

33. Considering the facts and circumstances of the present case and considering the fact that the injunction order dated 08th November, 2024, was passed on a prima facie case made out by the plaintiff, this Court is of the view that a prima facie case has now been made by the defendants in their favour with respect to vacation of the stay.

34. Thus, the injunction order dated 08th November, 2024 passed by this Court is hereby vacated. The defendants are free to carry on their business lawfully and sell their products in the market. Further, the products that were seized by the Local Commissioner are directed to be released to the defendants and the defendants are held entitled to market the said products, in the course of their business.

35. Let reply be filed by the plaintiff within a period of four weeks. Rejoinder thereto, if any, be filed within a period of two weeks, thereafter.

36. This Court takes note of the submissions made by learned counsel for the plaintiff that the trade dress of the packaging of the plaintiff and the defendants‟ is deceptively similar, which is denied by learned Senior Counsel for the defendants.

37. It is to be noted that the target consumers of the plaintiff and defendants are mostly from rural areas, who would buy the said products only upon seeing the packaging.

38. Learned Senior Counsel for the defendants submits that on the aspect of packaging, the matter can be referred to mediation, without prejudice to their rights and contentions.

39. Learned Counsel for the plaintiff also expresses his consent with respect to referring the matter to mediation.

40. Accordingly, with the consent of the parties, the matter is referred to Delhi High Court Mediation and Conciliation Centre, to be listed before the learned Mediator on 27th January, 2025.

41. List before the Court on 10th March, 2025. MINI PUSHKARNA, J JANUARY 17, 2025