The Supreme Industries Limited v. Ankit Goel Trading as Goel Trading Company

like goods used in the plastic industry, the impugned mark SUPREME TECH or any mark identical with and/or deceptively similar to the Plaintiff's trade mark 'SUPREME' so as to infringe upon the Plaintiff's said trade mark 'SUPREME' as also mark/s wherein the word 'SUPREME' occupies a leading and essential feature registered under Nos. 1204725, 132063[5], 1482106, 2010536, 2410805, 1482107, 2410815, 2410808, 2410814, 1482108, 305446, 2410804 and 2410810.; (b) the Defendant by himself, his servants, agents, stockists, dealers, assignees and all those connected with the Defendant in his business he restrained by a perpetual order and injunction of this Hon‟ble Court from distributing, marketing, dealing, selling and/or using in any manner whatsoever in relation to his pipes, pipe fittings and other like goods used in the plastic industry, the impugned mark SUPREME TECH or any mark identical with and/or deceptively similar to the Plaintiff‟s distinctive and prior used trade mark SUPREME, so as to pass off the Defendant's business and goods as and for those of the Plaintiff or in some way connected or associated therewith;

(c) the Defendant be ordered and directed to deliver-up to the

Plaintiff for destruction all such materials including pipes, pipe fittings and all the other like goods used in the plastic industry including labels, stickers, packing materials, stamps, dyes, screens, blocks, moulds, and other goods bearing the impugned mark SUPREME TECH as complained off;

(d) the Defendant be ordered by a decree of mandatory injunction passed by this Hon‟ble Court directing it to withdraw and/or not to proceed any further with the registration of the application made for registration of the impugned mark SUPREME TECH pending under No. 2981857 in class 17 and/or any other application/s for any other mark/s which is/are identical with or is/are similar to the Plaintiff‟s trade mark SUPREME”. ii. The Defendant agrees/undertakes to pay an amount of Rs. 5 Lacs demand draft towards costs/damages to the Plaintiff as follows: a. A demand draft in the sum of Rs. 3 Lacs issued in favour of Maharashtra Sevasamiti. b. A demand draft in the sum of Rs. 2 Lacs will be issued in favour of „Happy Home and School for the Blind‟ within a period of two weeks from today. The undertaking is accepted. iii. The goods seized by the Court Receiver shall be returned to the Defendant after defacing the impugned trade mark on the pipes in the presence of the representatives of the parties. iv. The Suit as well as Notice of Motion are accordingly disposed off. v. Refund of Court fees, if any, as per Rules. vi. The Court Receiver stands discharged without passing accounts but subject to payment of cost, charges and expenses within a period of two weeks from today by the Plaintiff.

2. Though the above Suit as well as Notice of Motion are disposed off, same shall be placed on board on 1st February, 2019 to report compliance.”

14. This Court further notes the prayer made by the appellant herein in the second suit, which reads as follows: “xxx xxx xxx

45. The plaintiff, therefore, prays:- (a) For a decree of permanent injunction restraining the Defendant by himself as also through their individual proprietors/partners, agents, representatives, distributors, assigns, heirs, successors, stockists, companies, firms, associated companies, partners and all others acting for and on their behalf from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trademark/label/trade SUPREME, SUPREME dress WATERLINE, SUPREME AQUA GOLD, etc or any other variant of the Plaintiff's trademark/label/trade dress which may be identical with and/or deceptively similar to the Plaintiff's trademark/label/trade dress namely SUPREME, SUPREME WATERLINE, in relation to their impugned goods and business and/or other allied/related products and from doing any other acts or deeds amounting to or likely to:

I. Infringing the registered Trade Marks of the plaintiff.

II. Passing off and enabling others to pass off their goods and business as that of the plaintiff. The defendant is thereby violating the plaintiff's common law rights in the plaintiff's said Trade Mark/label/trade dress.

III. Infringing the plaintiff's Copyright in the said Trade

Mark/label/trade dress by inter-alia using, publishing, reproducing and otherwise commercially and for the purposes of trade using the impugned identical and deceptively similar impugned trade mark/label for the purposes of its impugned goods and business; ………… xxx xxx xxx”

15. Perusal of the prayer made in the second suit, makes it apparent that the second suit has been filed by the appellant herein for use of the infringing mark SUPREME WATERLINE by the respondent. Thus, it is clear that after the decree passed in the earlier suit vide judgment dated 18th January, 2019 by the Bombay High Court, the respondent herein had indulged in fresh infringement of the appellant‟s mark „SUPREME‟, by use of the infringing mark, i.e., SUPREME WATERLINE.

16. This Court further notes that the fact regarding the earlier suit was also mentioned by the appellant herein in Para 27 of the second plaint, in the following manner:

27. That the History of Defendant when perused has appeared where a search and seizure has been conducted on the said defendants through Hon'ble Bombay High Court. The case COMIP (L) NO. 1774 OF 2019 TITLED AS THE SUPREME INDUSTRIES LTD VERSUS ANKIT GOEL TRADING AS GOEL TRADING LTD, Where injunction was granted against the defendant for the use of word "Supreme Tech" where the suit has been decreed in terms of prayer (a), (b), (c) and (d). The relevant clause of the Case is being reiterated, the copy of settlement is being filed in the suit. “The defendant by himself, his servants, agents, stockists, dealers, assignees and all those connected with the Defendant in his business be restrained by a perpetual order and injunction of this Hon‟ble Court from distributing, marketing, dealing, selling and/or using in any manner whatsoever in relation to his pipes, pipe fittings and other like goods used in the plastic industry, the impugned mark SUPREME TECH or any mark identical with and/or deceptively similar to the Plaintiff's trade mark 'SUPREME' so as to infringe upon the Plaintiff's said trade mark 'SUPREME' as also mark/s wherein the word 'SUPREME' occupies a leading and essential feature registered under Nos. 1204725, 132063[5], 1482106, 2010536, 2410805, 1482107, 2410815, 2410808, 2410814, 1482108, 305446, 2410804 and 2410810.;

17. This Court further notes the cause of action clause in the second suit filed by the appellant, which reads as under:

42. That the cause of action for filing the present suit has been detailed in the preceding paras. The cause of action for filing the present suit arose in or about the 15th of July, 2020, when the plaintiff came across the impugned violation by the defendant under the impugned trademark/label, when the defendant started flooding the Delhi market viz. (Shahdara, GTB enclave, Anand Vihar, Krishna Nagar, Bada Bazaar, Vivek Vihar, Nand Nagri etc.) with the impugned goods. The defendant is selling the impugned goods bearing the impugned trade mark/label within the jurisdiction of this Hon'ble Court on daily basis and thereby continuously violating the said trade mark/labels copyrights of the plaintiff. Therefore the cause of action for filing the present suit is accruing on daily basis and is subsisting till the defendant is restrained from carrying out the impugned activities under the impugned trademark/label/trade dress. The cause of action is a continuous one which arises with each act of transgression on the Plaintiff‟s intellectual property by the Defendant and shall continue to subsist until the Defendant is not restrained by an order of this Hon‟ble Court.

18. Perusal of the aforesaid clearly shows that the cause of action for filing the second suit arose on 15th July, 2020, much after the disposal of the earlier suit vide judgment dated 18th January, 2019.

19. Further, this Court notes that the earlier suit had been filed qua use of the infringing mark „SUPREME TECH‟ by the respondent, while the second suit was filed with respect to the mark „SUPREME WATERLINE‟.

20. Thus, the use of a fresh infringing mark, gave rise to a fresh cause of action in favour of the appellant herein and against the respondent. The second suit filed by the appellant was not based on the same cause of action, on which the earlier suit was premised. The fresh act of infringement and passing off by the respondent gave rise to a fresh continuous and recurring cause of action. Therefore, the second suit filed by the appellant herein was maintainable and not barred by law.

21. This Court further notes that the prayer in the second suit also pertained to infringement of copyright, besides, prayer with respect to infringement of trademark and passing off. Whereas, in the first suit, there was no such prayer for infringement of copyright.

22. This Court also takes note of the fact that when the second suit was filed by the appellant herein, the learned Commercial Court had granted an ex parte order dated 11th August, 2020 in favour of the appellant herein, in the following manner: 21.......Accordingly ex parte ad interim is hereby granted in favour of the plaintiff and against the defendant as follows: a. restraining the defendant, their directors/proprietors/partners, principles, employees, agents, distributors, franchisees, representatives, assigns and all others acting for and on its behalf from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trade mark namely SUPREME dress WATERLINE, etc or any other variant of the Plaintiff's trademark/label/trade dress which may be identical with and/or deceptively similar to the Plaintiff's trademark/label/trade dress namely SUPREME, SUPREME WATERLINE, etc (collectively referred to as the impugned Trade Mark) in any manner whatsoever without the permission, consent, or license of the Plaintiff amounting to infringement of the Plaintiff‟s registered trade mark and copyright and also amounting to passing off its goods and services as and for the goods and services of the Plaintiff, or in any manner whatsoever, using or incorporating the Plaintiff‟s well-known trademarks and copyright or any other trade mark which is deceptively or confusingly similar to the Plaintiff‟s etc or any other variant of the Plaintiff's trademark/label/trade dress which may be identical with and/or deceptively similar to the Plaintiff's trademark/label/trade dress namely SUPREME, SUPREME WATERLINE, etc (collectively referred to as the impugned Trade Mark) and from taking benefit of the reputation and goodwill of the Plaintiff thereby amounting to unfair competition in any manner whatsoever. b) Restraining the defendant from disposing of or dealing with its assets including its premises at the addresses mentioned in the memo of parties and its 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/or the defendant 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 TM Act, 1999 as it could adversely affect the plaintiff's ability to recover the costs and pecuniary reliefs thereon.

23. The second suit filed by the appellant herein, has been dismissed by the learned Commercial Court, by holding that the appellant herein has no surviving cause of action as against the infringement/passing off, of the appellant‟s registered trademark. It was held that the appellant ought to have filed a contempt petition and suit presented by the appellant was not maintainable for want of cause of action and Doctrine of Res-Judicata. This finding of the learned Commercial Court, is completely unacceptable. The impugned order has been passed without appreciating the position of law that infringement of a trademark/passing off, shall give rise to a fresh cause of action in favour of the aggrieved party. Any new infringement, which is committed by the guilty party, gives rise to a continuous and fresh cause of action in favour of the party aggrieved, which has every right to file a fresh suit in order to seek redressal of its grievances.

24. In this regard, reference may be made to the judgment of the Supreme Court in the case of Bengal Waterproof Limited Versus Bombay Waterproof Manufacturing Company and Another, (1997) 1 SCC 99 reported as, wherein, Supreme Court has held as follows: 10....... The aforesaid averments in the plaint clearly show that the present suit is not based on the same cause of action on which the earlier suit was based. The cause of action for filing this present second suit is the continuous and recurring infringement of plaintiff's trade mark by the defendants continuously till the filing of the present second suit. We asked the learned counsel for the defendants as to whether pending the suit and at present also the defendants are trading in the offending goods, namely, bearing the mark „DACK BACK‟ and he informed us that defendants even at present are carrying on this business. Therefore, pending the second suit all throughout and during the pendency of these proceedings the defendants have carried on the business of trading in the commodity waterproof raincoats „DACK BACK‟. It is obvious that thus the alleged infringement of plaintiff's trade mark „DUCK BACK‟ and the alleged passing off action on the part of the defendants in selling their goods by passing off their goods as if they were plaintiff's goods has continued all throughout uninterrupted and in a recurring manner. It is obvious that such infringement of a registered trade mark carried on from time to time would give a recurring cause of action to the holder of the trade mark to make a grievance about the same and similarly such impugned passing off actions also would give a recurring cause of action to the plaintiff to make a grievance about the same and to seek appropriate relief from the court. It is now well settled that an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in the historical past earlier suit was disposed of as technically not maintainable in absence of proper reliefs, for all times to come in future defendant of such a suit should be armed with a licence to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts. We posed a question to the learned counsel for the defendants as to whether after the disposal of the earlier suit if the defendants had suspended their business activities and after a few years had resumed the same and had started selling their goods under the trade mark „DACK BACK‟ by passing them off, the plaintiff could have been prohibited and prevented by the bar of Order 2, Rule 2, sub-rule (3) from filing a fresh suit in future when such future infringement or passing off took place. He rightly and fairly stated that such a suit would not be barred. But his only grievance was that whatever was the infringement or passing off alleged against the defendants in 1980 had, according to the plaintiff, continued uninterrupted and, therefore, in substance the cause of action in both the suits was identical. It is difficult to agree. In cases of continuous causes of action or recurring causes of action bar of Order 2, Rule 2, sub-rule (3) cannot be invoked. In this connection it is profitable to have a look at Section 22 of the Limitation Act, 1963. It lays down that “in the case of a continuing breach of contract or in the case of a continuing tort, a fresh period of limitation begins to run at every moment of the time during which the breach or the tort, as the case may be, continues”. As act of passing off is an act of deceit and tort every time when such tortious act or deceit is committed by the defendant the plaintiff gets a fresh cause of action to come to the court by appropriate proceedings. Similarly infringement of a registered trade mark would also be a continuing wrong so long as infringement continues. Therefore, whether the earlier infringement has continued or a new infringement has taken place cause of action for filing a fresh suit would obviously arise in favour of the plaintiff who is aggrieved by such fresh infringements of trade mark or fresh passing off actions alleged against the defendant. Consequently, in our view even on merits the learned trial Judge as well as the learned Single Judge were obviously in error in taking the view that the second suit of the plaintiff in the present case was barred by Order 2, Rule 2, sub-rule (3) CPC. (Emphasis Supplied)

25. Similarly, holding that infringement of trademark is a continuous cause of action and a party aggrieved, is entitled to file a fresh suit in case of subsequent infringement/passing off, of mark of the aggrieved person, this Court in the case of Allied Blenders & Distillers Pvt. Ltd. and Others Versus Amit Dahanukar and Another, 2019 SCC OnLine Del 8898, has held as follows:

48. Hence, the court was of the view that infringement of the trademark is a continuing cause of action. It also noted that the act of passing off is an act of deceit under the Law of Torts and whenever such act is committed by the defendants, the plaintiff gets a fresh cause of action to come to the court. Similarly, the same situation prevails regarding infringement of the trademark. In those facts and circumstances, the Supreme Court took the view that the subsequent suit is not barred under Order 2 Rule 2.

49. Reference may also be had to the judgment of the Division Bench on this High Court in the case of Syndicate Bank v. Raj Kumar Tanwar, (2008) 154 DLT 230. That was a case in which the only contention raised was that the landlord had filed the suit seeking ejectment of the appellant from the tenanted premises stating that the lease has come to an end by efflux of time. A second suit was filed by the landlord claiming damages for unauthorised use and occupation. The issue was as to whether the second suit is barred under Order II Rule 2 CPC. The Division Bench held as follows:— “9. Discussing the ambit of Order 2 Rule 2, a Division Bench of this Court, in the decision dated 24.02.2004 disposing of FAO(OS) No. 350/2001 Union of India, K. Paints Sales v. Madho Ram Budh Singh observed as under: The principle enshrined under Order 2 Rule 2 is aimed against a multiplicity of suits in respect of the same cause of action. The Rule is based on the principle that a party should not be vexed twice for the one and the same cause of action. However, the said rule must be applied with caution. The plea of bar under Order 2 Rule 2 defeats, what otherwise may be legitimate claim of a party, and therefore, care must be taken to see that complete identity of cause of action is established. Can it be said that the recovery of damages for unauthorized use and occupation of a premises for different periods constitutes a single cause of action. To our mind it does not. Cause of action to recover rent for a premises or damages for unauthorized use and occupation would arise each month for which possession is retained by the tenant or the person in unauthorized occupation as the case may be. Reference may be made to the decision of the Calcutta High Court reported as ILR (1973) 1 Cal 343. It was held that recovery of rent from Badrapad to Kartik 1377, B.S. would not bar a subsequent suit for recovery of rent from Baisakh to Shrawan 1377 B.S. The principle of law was set out with clarity by the judgment of the Privy Council reported as 26 IC 228 titled Payana v. Panna Lal. It was held that the rule is directed to securing the exhaustion of the relief in respect of cause of action and not to the inclusion in one and the same action of different causes of action, even though they arise from the same transaction.”

50. In the present case, the facts are virtually identical to the facts of the above judgment in the case of Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Co. (Supra). The earlier suit was filed in Bombay in 2009. Now in 2014, another suit has been filed in this court. The cause of action being a continuing cause of action, the present suit would not be barred under Order 2 Rule 2 CPC.

26. It is further to be noted that in another case, i.e., M/s. Indian Herbs Research & Supply Co. Ltd. and Anr. Versus Lalji Mal & Anr., 2001 SCC OnLine Del 1125, it has been held, as follows:

11. Learned counsel for the defendants has tried to distinguish this authority saying that in the said case, previous suit was dismissed whereas in the case in hand, previous suit was decreed in terms of compromise. The distinction drawn by learned counsel, to my mind is of no avail. In a case of infringement of trade mark or copyright or passing off action, dismissal or decreeing of the earlier suit is immaterial as by each deceitful act of defendant by way of committing breach of registered trade mark of another person, he commits a recurring act of breach and infringement of such trade mark which gives rise to a recurring and fresh cause of action each time.

27. Thus, it is manifest that the subsequent act of the respondent in infringing the mark of the appellant herein by use of the infringing mark SUPREME WATERLINE, gave rise to a fresh cause of action in favour of the appellant herein, which required adjudication. The appellant herein is not precluded to seek the reliefs, as sought in the second suit filed by the appellant, on account of fresh infringement by the respondent herein.

28. Accordingly, the impugned order dated 30th January, 2023, passed by the learned District Judge, Commercial Court-03, Shahdara District, Karkardooma Courts, Delhi in Suit no. CS(COMM) 395/2020, is hereby set aside.

29. However, no useful purpose would be served in relegating the appellant herein to the Trial Court. It is to be noted that the respondent herein, did not appear in the suit proceedings despite service and no written statement was filed on behalf of the respondent herein. Thus, right of the respondent to file written statement in the suit proceedings, was closed by the learned Commercial Court vide its order dated 30th January, 2023.

30. It is to be noted that none has appeared for the respondent before this Court also, despite service.

31. Considering the fact and circumstances of the present case, this court is of the view that no purpose shall be served in reviving the second suit filed by the appellant herein and directing the appellant to appear before the learned Trial Court.

32. Since, no written statement was filed by the respondent herein in the suit filed by the appellant, it is evident that that the averments made by the appellant herein in its plaint, stand admitted.

33. No defence, needless to say, any plausible defence, has been raised by the respondent herein in the suit proceedings, with respect to its use of the infringing mark SUPREME WATERLINE, which is deceptively similar to the registered trademark of the plaintiff, i.e., SUPREME as well as SUPREME WATERLINE. The respondent herein, lacks a real prospect of successfully defending the claim. In the present case, the respondent herein has chosen not to file his written statement, nor has he entered appearance in the suit to defend the same. Adoption of the similar trade mark by the respondent herein is not only a violation of the rights of the appellant, but may also deceive general unwary consumers. The adoption of similar/deceptively similar mark by the respondent herein, is clearly dishonest. The appellant herein is also entitled to costs, considering the facts and circumstances of the present case, wherein, the respondent herein has blatantly adopted similar/deceptively similar mark, as that of the appellant, despite earlier injunction order against him. Thus, there is no compelling reason for putting the case to trial.

34. Thus, this Court in the case of Nirog Pharma Pvt. Ltd. Versus Umesh Gupta & Anr., 2016 SCC OnLine Del 5961, has held as follows:-

11. Order VIII Rule 10 has been inserted by the legislature to expedite the process of justice. The courts can invoke its provisions to curb dilatory tactic, often resorted to by defendants, by not filing the written statement by pronouncing judgment against it. At the same time, the courts must be cautious and judge the contents of the plaint and documents on record as being of an unimpeachable character, not requiring any evidence to be led to prove its contents. The Supreme Court in C.N Ramappa Gowda v. C.C. Chandregowda, (2012) 5 SCC 265 had held as under: “25. We find sufficient assistance from the apt observations of this Court extracted hereinabove which has held that the effect [Ed.: It would seem that it is the purpose of the procedure contemplated under Order 8 Rule 10 CPC upon non-filing of the written statement to expedite the trial and not penalise the defendant.] of non-filing of the written statement and proceeding to try the suit is clearly to expedite the disposal of the suit and is not penal in nature wherein the defendant has to be penalised for non-filing of the written statement by trying the suit in a mechanical manner by passing a decree. We wish to reiterate that in a case where written statement has not been filed, the court should be a little more cautious in proceeding under Order 8 Rule 10 CPC and before passing a judgment, it must ensure that even if the facts set out in the plaint are treated to have been admitted, a judgment and decree could not possibly be passed without requiring him to prove the facts pleaded in the plaint.

26. It is only when the court for recorded reasons is fully satisfied that there is no fact which needs to be proved at the instance of the plaintiff in view of the deemed admission by the defendant, the court can conveniently pass a judgment and decree against the defendant who has not filed the written statement. But, if the plaint itself indicates that there are disputed questions of fact involved in the case arising from the plaint itself giving rise to two versions, it would not be safe for the court to record an ex parte judgment without directing the plaintiff to prove the facts so as to settle the factual controversy. In that event, the ex parte judgment although may appear to have decided the suit expeditiously, it ultimately gives rise to several layers of appeal after appeal which ultimately compounds the delay in finally disposing of the suit giving rise to multiplicity of proceedings which hardly promotes the cause of speedy trial.

27. However, if the court is clearly of the view that the plaintiff's case even without any evidence is prima facie unimpeachable and the defendant's approach is clearly a dilatory tactic to delay the passing of a decree, it would be justified in appropriate cases to pass even an uncontested decree. What would be the nature of such a case ultimately will have to be left to the wisdom and just exercise of discretion by the trial court who is seized of the trial of the suit.”

35. This Court notes that vide judgment dated 18th January, 2019, the respondent herein had already been restrained by the Bombay High Court from using any mark, which is similar or deceptively similar to the registered trademarks of the appellant herein.

36. Accordingly, in exercise of its power under Order VIII Rule 10 CPC, this Court passes the following order:

I. The suit no. CS(COMM) 395/2020, is decreed in favour of the appellant/plaintiff in the suit, and against the respondent/defendant in the suit, in terms of Para 45 (a) of CS(COMM) 395/2020, filed by the appellant before the Commercial Court-03, Shahdara District, Karkardooma Courts, Delhi.

II. Cost of ₹ 2,00,000/- is imposed upon the respondent/defendant in the suit.

37. Decree sheet be drawn up.

38. The present appeal along with the pending applications, is accordingly disposed of, in the aforesaid terms. MINI PUSHKARNA, J NOVEMBER 18, 2024