Full Text
HIGH COURT OF DELHI
MR SANJAY ARORA ..... Plaintiff
Through: Mr. Rishabh Gupta, Mr. Shivam Gupta and Ms. Vidhi Goel, Advocates.
Through: Mr. Harish Kumar, Mr. Mukund Yadav, Mr. Shivam Kumar and Mr. Sd. Hussain, Advocates.
ANISH DAYAL, J.
ORDER
1. This application has been filed under Order XXXIX Rule 1 and 2 CPC as partofaccompanyingsuit seekingpermanent injunctionrestraining defendant and all those acting for and on his behalf from manufacturing, selling, using, displaying, advertising, importing, exporting or in any other manner dealing with impugned goods and products bearing the CS(COMM) 614/2022 Page 2/25 trademark/device/label and or any other trademark/label/deviceidenticalwith ordeceptively similar to plaintiffs trademark/label/device ‘TIGER’/.
2. Noticein theapplicationwasissued on6th September, 2022. On29th February, 2024, when submissions were heard on behalf of counsel for plaintiff, a set of additional documents filed on 1st March, 2023 were adverted to. However, as the counsel for defendant stated that he did not have a copy of the same, it was directed that documents be supplied to defendant, despite the fact that they were filed one year prior.
3. On 29th February, 2024, two photographs were adverted to by counsel for plaintiff to show that in 2014, defendant was actually an employeeofplaintiff, whohad alreadybeen usingtheregistered trademark CS(COMM) 614/2022 Page 3/25 ‘TIGER’ with respect to their products i.e. pipes used for agricultural purposes.
4. On 8th April, 2014, further submissions were heard on behalf of parties.A query was put to counselfor defendant by theCourt whether the person in photographs was defendant himself or not. To this, counsel for defendant didnotmakeany statement. Accordingly, directionswere issued for defendant to appear in Court on 10th April, 2024, as also, to file an affidavit in this regard.
5. On 10th April 2024, an affidavit was filed by defendant/Mr. Jasmer stating that he had seen the coloured photographs that plaintiff had placed on record which were taken from the surveillance camera installed in the premisesofplaintiff. Further, he confirmed thathe was theperson in those photographs. He did not accede to thegenuineness of the said surveillance camera recording, includingthedate, but did statethattheimageappearing in the video showed his presence. Submissions on behalf of Plaintiff
6. Counselfor plaintiff has madethefollowingsubmissions in support of his application: 6.[1] The first application No. 3746492 for trademark‘TIGER’(device)/ CS(COMM) 614/2022 Page 4/25 was applied on 6th February, 2018 in class 17, claiming user from 17th June, 2003. The said mark was registered on 5th July, 2021 in favour of plaintiff. 6.[2] Yet another registration was sought by plaintiff in class 19 vide application No. 3746494, with the same user detail being 17th June, 2003, applied on 6th February, 2018 and granted on 27th June, 2021. 6.[3] On 29th May 2019, copyright registration vide A-129594/2019, was also granted in favour of plaintiff in artistic work in said device, with the first year of publication being 2003 in India. 6.[4] Plaintiffbecameproprietor ofsaid trademark andhas been an honest and bona fide user of the same, in course of its trade for product of agriculturalpipes andhas builtup enormous goodwilland reputationin the said mark. 6.[5] Turnover claimed by plaintiff in the said mark is as under: CS(COMM) 614/2022 Page 5/25 6.[6] Defendant had been an employee of plaintiff, but owing to misconduct and theft committed by him at the premises of plaintiff, defendant was removed from his job in February, 2017. Therefore, defendant was well aware of plaintiff’s marks and other details of his business. 6.[7] A complaint was filed on 23rd February, 2017 by Mr. Sanjay Arora ofplaintiffcompanywithSHOofPS SamaipurBadli, statingthatdefendant CS(COMM) 614/2022 Page 6/25 was doing business of ‘TIGER KISSAN PIPES’ etc. under ‘TIGER BRAND’. FIR bearing No. 459 dated 2nd June, 2018 was registered under Sections 408 and 34 of the Indian Penal Code, 1860 (“IPC”) against defendant.Allegation wasmadetherein that defendanthad committedfraud on the complainant and had threatened him as well. On this basis, counsel for plaintiffstressedthat their complaintwas proofenough thatas of2017, plaintiffwas alreadyusing ‘TIGER BRAND’, while it was applied for by defendant only on 25th May, 2017. 6.[8] Defendant had sought registration of mark vide application No. 3556724, dated 25th May, 2017 in class 19 on ‘proposed to be used’ basis. This mark was subsequently abandoned and not used by defendant, which fact has been confirmed by counsel for defendant. 6.[9] Subsequently, the second mark for which defendant sought registration was on 8th October, 2019 in mark in class CS(COMM) 614/2022 Page 7/25 17 vide application No.4314765 on‘proposed to beused’ basis. Thismark, as confirmed by counsel for defendant, is still being used.
6.10 Reference was made to para 10 of the written statement filed by defendant, contending that plaintiff had adopted same and similar label as of defendant. It was further stated that defendant was his previous employee, which fact was also confirmed by counselfor defendant. It was thus asserted by counsel for plaintiff that it was defendant’s own submission, thatthemarkofplaintiffwas similar/sameto thatofdefendant, therefore, on question of similarity, there could be no opposition.
6.11 Invoices ofplaintiffwereshown from 2005 onwardswithwatermark ‘TIGER BRAND’. However, counsel for defendant strongly refuted the samestatingthatwatermarkon invoices were only from 2015 onwards, as produced by plaintiff.
6.12 It is asserted that end user of the product is a farmer and therefore, possibility ofconfusion arises with thesamemark ‘TIGER’being used as partofregistered marks ofboth plaintiffandthat ofdefendant. Further, it is evident from a comparison of both marks that there would be a likelihood of confusion and association between both marks in the minds of the end user.
6.13 A cease-and-desist notice was sent to defendant on 14th October, 2021, to which defendant replied on 26th October, 2021, stating that his mark was different from that of plaintiff. Thereafter, defendant on 1st November, 2021 filed rectification petitions against plaintiff’s registered trademarks alleging that the word ‘TIGER’ was common to trade. CS(COMM) 614/2022 Page 8/25
6.14 Defendant had visited all distributors and retailers, beingthe former marketingexecutiveofplaintiff, and therefore, hadcompleteknowledgeof the market and user of the product. It was alleged that defendant had informed the whole network in the market that trademark of plaintiff had changed and therefore, created tremendous confusion in the minds of the users in the said market by such deception. Submissions on behalf of defendant
7. Mr. Harish Kumar, counsel for defendant, placed the following submissions in response: 7.[1] Counsel for defendant stated that defendant had applied for registration of trademark on 25th May, 2017 in class 19 on a ‘proposed to be used’ basis. He submitted that plaintiff was not using the ‘TIGER BRAND’ since2003, as wrongly claimed by plaintiffand had adoptedthe mark in February, 2018, only after the trademark application was filed by defendant. 7.[2] Counselfor defendantwhileadvertingto para 14ofwritten statement submitted that plaintiff had been using other marks like ‘KING’, ‘KARTIK’, ‘SHERA’ and ‘EXPLODE’whiledefendantwasworkingwith the plaintiff. 7.[3] Plaintiffcould not claim exclusiveuse of the mark ‘TIGER’ and in any event defendant used a completely different trade dress for their packaging, along with their device mark. CS(COMM) 614/2022 Page 9/25 7.[4] List of marks on the trademark register in class 17 which used ‘TIGER’brand wereadverted to by defendant, to showthat ‘TIGER’was common to this class and plaintiff cannot claim exclusivity of same. 7.[5] Defendant filed a rectification on 1st November, 2021, however, plaintiff asserted that it was 3 years after the registration application by plaintiff. 7.[6] Invoices of plaintiff till 2019 did not show the ‘TIGER’ watermark and only subsequent to invoice dated 4th July, 2019, the watermark of ‘TIGER’ was present. 7.[7] Invoices of plaintiff from 2005 to 2007 which show the ‘TIGER’ watermark did not match the copies that defendant obtained from parties that had been supplied goods by plaintiff. Thethird-partycopies showthat therewas no watermarkon thesaidinvoices.Hevehemently contendedthat plaintiff had fabricated their invoices and interpolated the watermark, in order to show that they were actually in use. Rejoinder on behalf of plaintiff
8. Counsel for plaintiff, countering the submissions made by defendant’s counsel, submitted in rejoinder as under: 8.[1] On the issue of registrations of other users, it was submitted by counselfor plaintiffthatdefendant cannotrely upon other trademarks in the word ‘TIGER’ registered in classes 19 or 17, since only five of the registered users in class 19 for the word ‘TIGER’ pertainto pipesand are CS(COMM) 614/2022 Page 10/25 marginalusers and further,havebeen registered subsequent to registration of plaintiff’smark.Only onemark as regards class 19 was registered prior to registration of plaintiff’s mark, being, ‘TIGER GAON’ by applicant ‘KUBER Tobacco Products Pvt Ltd.’ and as regards class 17, only seven were with respect to pipesand only one namely, ‘TIGER HILL’, had been registered prior to registration of plaintiff’s mark. 8.[2] In any event, he placed relianceon decisiononPankajGoelv. Dabur India Ltd., 2008 SCC OnLine Del 1744, of Division Bench of this Court, to statethatmereciting of trademarkregister by defendant wasnot enough and that defendant has not been able to prima facie prove that other users of the samebrand ‘TIGER’had significant business turnover and posed a threat to plaintiff’s distinctiveness. It was also stated that plaintiff is not expected to sue all third-party infringers not impacting plaintiff’s business in any way. 8.[3] Counselfor plaintiffhadextensively relied upon video-captures filed subsequently, which were of the year 2014 for the months of February, September and November, to show that perusal of the CCTV footage revealed that while the process of packaging of plaintiff’s products was ongoingin his warehouse, pertainingto thebrand ‘TIGER’,defendantwas also present in the picture. The said captures are extracted as under: CS(COMM) 614/2022 Page 11/25 CS(COMM) 614/2022 Page 12/25 CS(COMM) 614/2022 Page 13/25 CS(COMM) 614/2022 Page 14/25 CS(COMM) 614/2022 Page 15/25 Analysis
9. The essential controversy revolves around as to who was the prior user of the trademark ‘TIGER’ and who adopted it subsequently. Applicationfor registrationwas madeby plaintiffon 6th February 2018 for both classes 17 and 19. Plaintiff has claimed user from 17th June 2003 in the ‘TIGER’ (device) in both these classes. Defendant on the other hand, applied for registration of his trademark on 25th May 2017 in class 19 on ‘proposed to be used’ basis. Moreover,thesaid mark of defendant in class 19 was subsequently abandoned and therefore, its relevance and applicabilitywould bein question.Eventhough registrationapplication was CS(COMM) 614/2022 Page 16/25 filed by defendant prior to that of plaintiff, the issue would be as to since when the user is claimed.
10. While plaintiff claims user since 2003, defendant’s application was on a ‘proposed to be used’ basis. Theregistration for thesubsequentmark, which is currently being used by defendant, was obtained in 2019 in class 17, again on a ‘proposed to be used’ basis. Defendant’s mark, which is in current use, uses the word ‘TIGER’ in a circular globe surrounded by a wreath and the words ‘TIGER KISSAN PIPE’ along with a picture of a tiger. It is therefore, evident that the device mark sought to be relied upon by defendant, is focused and centered on the mark ‘TIGER’.
11. For the sake of argument, even if the abandoned mark of defendant is considered, it is evident that on 25th May 2017, when defendant had applied, it was on a ‘proposed to be used’ basis. Plaintiff, however, claims user since 2003 and in supportofthe same, has placed invoices from 2005 onwards with the product mentioned as ‘AGRICULTURE KISSAN PIPE’ which had a watermark with ‘TIGER BRAND’. These invoices with watermark were appended by plaintiff for various years inter alia 2005-2018.
12. Counsel for defendant had sought to raise a doubt by drawing attention to certain invoices of plaintiff which did not have the watermark and which were relatable to 2007, in particular, 25th December 2007, 26th December 2007 and29th December 2007sellingtheproduct ‘plasticdana’. However, on careful perusal of the record, it bears out that plaintiff has CS(COMM) 614/2022 Page 17/25 producedthosethreeinvoices alsowithouta watermarkandtherefore, there is no question of any dispute in that regard. The other invoices of plaintiff to which counsel for defendant draws attention to, which do not have a watermark, arescatteredinvoices of variousdates in the years 2011,2014, 2015, 2017and2018. However,this may nothaveany bearingconsidering that plaintiff’s sets of invoices filed which have watermark are approximately 69 in number from year 2005 till 2018 in various products inter alia ‘AgricultureKissan Pipe’, ‘PlasticReprocessed Tubing’,‘Bundle Reprocessed Tubing’, ‘Recycled Plastic Pipe’, etc. By selectively picking out invoices which did not have a watermark, defendant cannot possibly displace the claim of user by plaintiff since 2005 at the minimum. In any event, prima facie, the Court cannot countenance defendant’s submissions that the watermark is interpolated. Defendant of course, would have to provethesameduringtrial.However, atthisstage, on a bareperusalofsaid documents, it does not seem, prima facie that the watermark has been interpolated.
13. Aside from this, the critical evidence which plaintiff relies upon are the coloured photographs which are captures of video footage from surveillance cameras in plaintiff's warehouse / factory. It is an admitted positionthatdefendant was anemployeeofplaintifftillFebruary2017.The photographs, as is admitted by defendant, show defendant in the said footage of surveillance camera, as extracted above. Even though as per plaintiff, these photographs have a time stamp of the year 2014 for the months of February, September and November (which defendant denies CS(COMM) 614/2022 Page 18/25 being accurate), his presence in photographs does show that he was an executive / worker in the said factory and is seen in various frames along with plaintiff’s products packagingbearingplaintiff’smark‘TIGER’in the device (now registered). Evenassumingthatthetimestamp is wrong, atthe very least, it will be prior to February 2017. In such a scenario, defendant having applied for his first mark on 25th May 2017 (abandoned subsequently), which was & was therefore, identicalwith plaintiff’s mark, it would clearly seem that defendant had dishonestly adopted the same. Even though defendant gave an explanation for abandoning the said mark later, having been confronted and not wanting to get into a dispute with plaintiff, it would suggest that defendant was attempting to adopt plaintiff’s mark and then CS(COMM) 614/2022 Page 19/25 made a second attempt later by adopting a different device being.
14. Defendant’ssubmissionthatit wasplaintiffwho had copiedthemark from defendantwhen defendant hadsought to registerit on 25th May 2017, cannot be sustained on the basis of documents presented before the Court in the suit. Further, defendant would find it very difficult to squirm out or explain awayhis presencein the plaintiff’s factoryprior to February2017, along with plaintiff’s goods showing the ‘TIGER BRAND’.
15. Plaintiffhad rightlyadverted tocomplaintdated 3rd February2017 as well alleging that defendant had committed fraud upon him. The said complaint stated that plaintiff was using ‘TIGER BRAND’. This too, would bear out that plaintiffwas very mucha userofsaid brandin February 2017 which is much before defendant’sapplicationin May 2017. Besides, thereareno other documentsproduced by defendant toshowanyuser prior to the said date.
16. Theargumentrelatingtobrand ‘TIGER’beingused byvarioususers in classes 17 and 19 and therefore common to trade, may not come to the rescue of defendant, in facts and circumstances as already adverted to above, which prima facie show dishonestadoption ofan identicalmark for CS(COMM) 614/2022 Page 20/25 identical goods. In this context, the following judgments become relevant in favour of plaintiff: 16.[1] Firstly, reliance may be placed on the decision of a Coordinate Bench of this Court in Ishi Khosla v. Anil Aggarwal, 2007 SCC OnLine Del 126, where defendants added the word ‘Diet’ as prefix in their mark after adoptingthetrademark ofplaintiffi.e. ‘Whole Foods’. TheCourtheld that dishonest adoption of somebody else’s trademark who entered the market prior in time, is to be discouraged. The relevant paragraph of the said decision is extracted as under:
CS(COMM) 614/2022 Page 21/25 16.[2] Secondly, the decision of a Coordinate Bench of this Court in Copenhagen Hospitalityand Retails and Others v A.R. Impex and Other, 2022 SCCOnLineDel4701,is alsorelevant. In thesaiddecision, defendant was a former employee of plaintiffs’, who were operating a chain of pizzerias under thename‘La Pino’z Pizza’. After a terminationagreement was executed between the parties, defendant set up its own ‘La Milano Pizzeria’. The Court held that adoption of such mark by defendant was dishonest and mischievous, considering the past contractual relationship between the parties and the manner in which defendants adopted the impugned mark. The relevant paragraph is extracted below:
CS(COMM) 614/2022 Page 22/25 the manner in which the Defendants have come to adopt the impugned marks. These facts establish a prima facie case. Balance of convenience also lies in favour of the Plaintiff to be entitled to an injunction restraining the Defendants from using any marks deceptively similar to Plaintiffs' registered marks noted in the table above.” 16.[3] Thirdly, the decision of a Single Judge of this Court in ACL Education Centre Pvt. Ltd. and Another v Americans' Centre for Languages and Another, 2007 SCC OnLine Del 2010, while granting an ex parte injunction in favour of plaintiffs, relied upon the case of A.C. Krishnan v. Nambisan'sDairy Pvt. Ltd., (1997)17 PTC 806, to elaborate on dishonest adoption of plaintiff’s mark by defendant who was a former employee of plaintiff’s firm. Further, reliance was also placed on decision of Munday v. Carey, 1905 RPC 273, to state that in the case of dishonest adoption, greaterattentionis to bepaid to theitems ofsimilarity andless to theitems of dissimilarity. The relevantparagraphsareextracted as under:
CS(COMM) 614/2022 Page 23/25 customers or purchasers and thus, confirmed the injunction granted by the High Court against the defendants from using the said name. It was also held that generic name had relevance only for the purposeof registration and in an action of passing off it was immaterial.” xxx xxx xxx
11. In the case of Mundayv. Carey, 1905 RPC 273 the Court held: “….I believe that it is a rank case of dishonestly, and whereyou seedishonesty, then even though the similarity were less than it is here, you ought, I think, to pay great attention to the items of similarity, and less to the items of dissimilarity”. 16.[4] Lastly, in the decision of Neuberg Hitech Laboratories Pvt. Ltd. v. Dr. Ganesan'sHitech DiagnosticCentre Pvt. Ltd., 2022 SCC OnLineMad 8779, it was held that an injunctionshould follow if it appears,either prima facie or otherwise, that the adoption of the mark was dishonest. In the said decision, defendantswerethetheex-employees ofplaintiffand appropriated the mark of plaintiffby applyingit to the businessestablished by them. The relevant paragraph is extracted as under: “33. It should also be noticed that the plaintiff's assertion that two employees of the plaintiff CS(COMM) 614/2022 Page 24/25 resigned from its employment and established the second defendant under the trade name “Hitech Advanced Labs” is not denied by the defendants. Thus, it appears that two ex-employees of the plaintiff, without permission or authorisation, appropriated the mark of their ex-employer and applied itto thebusinessestablished bythem. Since these facts are not controverted, they qualify as prima facie evidence of dishonest adoption by the first defendant. The second defendant was admittedly acquired by the first defendant and, thereafter, a limited company was incorporated under the corporate name “Neuberg Hitech LaboratoriesPrivate Limited”, which containsthe mark “Hitech”. The plaintiff is an established diagnostic services company especially in Tamil Nadu and the first defendant cannot and does not assert ignorance of the prior use of the mark “Hitech” by the plaintiff…. …..Considering the above and the admitted fact thatthe first defendant'sadoptionofthemarkowes its origin to the acquisition of the second defendant, the first defendant's adoption is also prima facie not honest. Both Midas Hygiene Industries Pvt. Ltd. v. SudhirBhatia, (2004)3 SCC 90 and T.V. Venugopal v. Ushodaya Enterprises Limited, (2011) 4 SCC 85 instruct that an injunction should follow if it appears, either prima facie or otherwise, that the adoption of the mark was dishonest. Therefore, a prima facie case is made out for the grant of interim relief.” CS(COMM) 614/2022 Page 25/25
17. In any event, relianceofplaintiffon PankajGoel (supra)to statethat plaintiffcannotbeexpected tosueallinfringers who might notbeeffecting 0furtherproofofcommercialuseor businessstatusoftheseother ‘TIGER’ brands. In any event, what prima facie seems to be blatant dishonest adoption cannot be countenanced by Court, at least at this stage and therefore, in the opinionof this Court, plaintiffis entitled for an injunction in his favour in terms of Order XXXIX Rule 1 and 2 of CPC.
18. Accordingly, defendant and allthoseacting for him or on his behalf are restrained from using the mark ‘TIGER’ or ‘TIGER KISSAN PIPE’ or any other mark identical or deceptively similar to that of plaintiff’s registered mark‘TIGER’, eitheras a wordmarkor part a logo /device, part of trade dress, domain name, promotional campaign or brochure. Defendant will ensure that all existing packaging, promotional material is discontinuedor withdrawnfrom distributors/vendors/sales forcewithin a period of 3 weeks.
19. This application stands disposed of with the aforesaid directions. CS(COMM) 614/2022 alongwith I.A. 6943/2024 & CRL.M.A. 10836/2024
1. List before Joint Registrar on 10th May, 2024.
2. Judgment be uploaded on the website of this Court.
ANISH DAYAL, J. APRIL 24, 2024/sm/na