M/S MALHOTRA BOOK DEPOT v. M/S MBD INDUSTRIES AND ANR.

1. This hearing has been done through hybrid mode. I.As. 3654/2019 (u/O XXXIX Rule 1 & 2 CPC), 6716/2019 (u/O XXXIX Rule 4 CPC) & 7055/2019 (u/O XXXIX Rule 2A CPC)

2. The present suit is filed by the Plaintiff-M/s Malhotra Book Depot, against the Defendants, restraining them from using the mark/trade name ‘MBD’, logo mark and the domain name ‘www.mbdindustries.co.in’.

3. The Plaintiff is a partnership firm which claims to be a publishing house, operating it’s business under the mark ‘MBD’. The Plaintiff coined the mark ‘MBD’ in the year 1956, taking the first alphabets of its name Malhotra Book Depot. The Plaintiff is one of the largest content providers in education, specializing in production of school level books such as textbooks, reference books, help books, study material and developing content in almost all regional languages of India.

4. The Plaintiff asserts to be the only publishing house in India with complete backward and forward integration, right from self-owned paper manufacturing unit, in-house press facilities and in-house printing and binding units, to its own distribution network with twenty-nine branch offices in India. The Plaintiff also operates its business through the website with the domain name ‘www.mbdgroup.com’.

5. The Plaintiff secured registration for its ‘MBD’ mark bearing application number 325406 under class 16 in the year 1977. The word mark ‘MBD’ is also registered under class 19 bearing registration number 2626974 and in class 37 bearing registration number 1943448. It is further stated that the Plaintiff’s ‘MBD’ logo marks also constitute an original artistic work under Section 2 (c) of the Copyright Act, 1957.

6. The Defendant No.1 - M/s MBD Industries, was established in the year 2006, and since then has been engaged in the business of non-metallic building material. The Defendant No.2- Ravi Shankar Jaiswal, who is the promoter of Defendant No.1 applied for the registration of the mark ‘MBD’ bearing application number 1523965. The same was opposed by the Plaintiff, and was subsequently abandoned.

7. The case of the Plaintiff is that the Defendants are using deceptively similar mark and logo as of the Plaintiff i.e., ‘MBD’. The Defendants are also advertising their business through the website with the domain name ‘www.mbdindustries.co.in” for their business activities including construction services and manufacturing bitumen emulsion and modified bitumen and providing products required for construction.

8. Vide order dated 13th March, 2019, the Court granted an ex parte injunction order in favour of the Plaintiff, in the following terms: “Keeping in view the aforesaid, this Court is of the opinion that a prima facie case of infringement and passing off is made out in favour of the plaintiff and balance of convenience is also in its favour. Further, irreparable harm or injury would be caused to the plaintiff if an interim injunction order is not passed. Consequently, four weeks after the receipt of the injunction order, the defendants, its partners, directors, shareholders or proprietors as the case may be, its assigns in business, franchisees, affiliates, subsidiaries, licensees and agents shall stand restrained from suing in manner whatsoever selling, offering for sale, advertising, directly or indirectly dealing in any products or services under the infringing marks namely MBD industries (word per se), www.mbdindustries.co.in and logo or any other trademark/trade name/trade dress or logo/device which is identical to and/or deceptively similar to and/or includes the plaintiff’s MBD marks in any manner whatsoever till further orders.”

9. The Defendants thereafter moved an application under Order XXXIX Rule 4 CPC, 1908 and the Plaintiff moved application under Order XXXIX Rule 2A CPC, 1908. All these applications are pending. Today, when the matter is listed for hearing, the Plaintiff’s counsel seeks a pass over.

10. It is noticed that there has been no arguments addressed by the Plaintiff for the last four hearings and adjournments are being sought. The last effective hearing in this matter has been in the year 2019 when the parties were trying to amicably resolve the issue. Vide orders dated 25th November, 2019 and 16th December, 2020 the matter was referred to Delhi High Court Mediation and Conciliation Centre for amicable settlement. However, the same was not settled as per the mediation report dated 3rd February, 2021.

11. Ld. Counsel for the Defendants submits that the mark ‘MBD’ is drawn from the name of goddess “Mata Vindhyavasini Devi” in the Purvanchal area, whom the Defendants’ promoters believe in. However, the regional pronunciation of the goddess is “Mata Bindhyavasini Devi”, hence the initials “MBD” was adopted. She further submits that during the pendency of the suit and the applications, during one of the mediation sessions both the parties agreed on the Defendants proceeding ahead and adopting the mark ‘JMVD’. The same has been in use since then. Despite the change of the mark, the Plaintiff continues to insist on damages.

12. The Plaintiff is in the business of publishing while the Defendants are using the mark ‘MBD’ for road construction material. The Defendants have also after the passing of injunction order, changed the mark to ‘JMVD’.

13. Since the Plaintiff cannot have any objection to the mark ‘JMVD’, all the three applications are disposed of permitting the Defendants to continue their business under the mark ‘JMVD’.

14. The applications filed by the Plaintiff under Order XXXIX Rule 1 and 2 of CPC, 1908 and under Order XXXIX Rule 2A of CPC, 1908 along with the application filed by the Defendants under Order XXXIX Rule 4 of CPC, 1908, are disposed of in the above terms.

15. Adjournment is sought by the ld. Counsel appearing for the Plaintiff on the ground that the main counsel is not available today. Adjournment is granted subject to payment of cost of Rs.25,000/- to the Defendants. The costs shall be paid within four weeks.