The Delhi High Court dismissed a 15-year-old trademark infringement suit for non-prosecution and imposed costs on the Plaintiff after parties settled the substantive dispute and the Plaintiff failed to pursue the matter.
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CS(COMM) 565/2016 HIGH COURT OF DELHI Date of Decision: -20th September, 2023.
CS(COMM) 565/2016 and I.A. 18267/2023 M/S RANA STEELS ..... Plaintiff Through: Mr Pankaj Kumar, Advocate (M: 9810438450).
VERSUS
M/S RAN INDIA STEELS PVT. LTD ..... Defendant Through: Mr. Bhuvneshwar Tyagi, Advocate (M: 8826824663).
CORAM:
JUSTICE PRATHIBA M. SINGH Prathiba M. Singh, J. (Oral)
JUDGMENT
1. This hearing has been done through hybrid mode. I.A. 18267/2023 (for withdrawal)
2. The present application has been filed by the ld. Counsel of the Plaintiff seeking discharge from the present matter on the ground that they are not receiving instructions from their client.
3. A perusal of the suit record would reveal that the Plaintiff- M/s. Rana Steels was granted an ex-parte injunction against the Defendant- M/s. Ran India Steels Pvt. Ltd., vide order dated 14th August, 2007 against the use of the mark ‘RANA’ by the Defendant. The said injunction was carried in appeal, by the Defendant, and was finally decided vide order dated 17th May 2012. The said order reads:-
“1. The antagonist is M/s Ran India Steels Pvt. Ltd. The protagonist is M/s Rana Steels. 2. The battle front was opened when M/s Rana Steels
filed a suit alleging infringement of its trademark 'RANA' by bringing to the notice of the Court that M/s Ran India Steels Pvt. Ltd. was marketing similar products under the trademark 'RANATOR'.
3. Both companies are admittedly selling steel rolled products, such as steel reinforcement bars, girders etc.
4. Application seeking interim injunction pending decision in the suit was considered and decided by the learned Single Judge against M/s Ran India Steels Pvt. Ltd. and it has been held that the trademark adopted by M/s Ran India Steels Pvt. Ltd. i.e. 'RANA TOR' was deceptively similar to the trademark used by M/s Rana Steels i.e. the trademark 'RANA'.
5. Injunction granted is to restrain M/s Ran India Steels Pvt. Ltd. to sell its products using the trademark 'RANA TOR' or any other mark deceptively similar to the trademark 'RANA' of M/s Rana Steels.
6. Highlighting that before the interim injunction application was disposed of on March 25, 2008, M/s Rana Steels had obtained an ex-parte ad-interim injunction on August 14, 2007 which had enured till it was confirmed, issue of stock weighing approx. 3000 MT with M/s Ran India Steels Pvt. Ltd. came up for consideration at a subsequent stage, and alleging that M/s Ran India Steels Pvt. Ltd. had sold the aforesaid stock bearing the trademark 'RANA TOR', it was prayed to the Court that action be taken against the Directors of the company for having violated the injunction granted.
7. Another grievance was made. The same related to M/s Ran India Steels Pvt. Ltd. selling its products under the trademark 'RANINDIA'.
8. Since the injunction granted restrained M/s Ran India steels Pvt. Ltd. to sell its products under the trademark 'RANA TOR' or a mark deceptively similar to the trademark 'RANA', issue was re-debated.
9. Vide impugned order dated January 14, 2010, challenged in FAO(OS) No.81/2010, finding returned is that the trademark 'RANINDIA' is deceptively similar to the trademark 'RANA'. The consequence is that M/s Ran India Steels Pvt. Ltd. and its Directors being prima-facie held to be in violation of the order passed restraining them from selling its products under the trademark 'RANA TOR' or a trademark deceptively similar to the trademark 'RANA'.
10. During arguments in the two appeals today, a suggestion emanated from the Court with a request to the learned counsel for the parties to settle the dispute pertaining to M/s Ran India Steels Pvt. Ltd. carrying on its business under the trademark ‘RANINDIA’. The response is positive.
11. It is agreed that M/s Ran India Steels Pvt. Ltd. could sell its products under the trademark 'RANINDIA, written as one word without any space between the word 'RAN' and the word 'INDIA'. The word 'RANINDIA' would be written in same font and styling. It is further agreed that in the products sold, the aforesaid trademark would be etched, embossed or printed, as the case may be. But on the publicity material, M/s Ran India Steels Pvt. Ltd. would use the trademark aforenoted in conjunction with a pictorial description of the arm of a human body with muscles, as represented on the Registered Trademark No.160.3837 of M/s Ran India Steels Pvt. Ltd.
12. It is agreed that both parties shall withdraw the, respective cancellation/opposition petitions filed by them which come into conflict from today with the aforesaid settlement between the parties and that M/s Ran India Steels Pvt. Ltd. shall not use the trademark 'RANA TOR'.
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13. The appeals stand disposed of in terms of the settlement in so far the dispute relates to the trademark under which Ran India Steels Pvt. Ltd. would carry on business henceforth.
14. As regards action for contempt, noting that the learned Single Judge has prima-facie found M/s Ran India Steels Pvt. Ltd. to be in contempt with reference to it selling its products using the trademark 'RANINDIA', said finding is nullified with consent of learned counsel.
15. However, the dispute: Whether M/s Ran India Steels Pvt. Ltd. liquidated the stock weighing approx. 3000 MT with the trademark 'RANA TOR', evidence would be needed to determine whether M/s Ran India Steels Pvt. Ltd. re-rolled the existing stock and thereafter sold the same, as claimed by it, and not under the trademark 'RANA TOR', but under the trademark 'RANINDIA', would require evidence to be led.
16. The same would be led in the suit and the matter would be considered by the learned Single Judge.
17. Application seeking contempt action against M/s Ran India Steels Pvt. Ltd. i.e. I.A.No.13619/2008 shall be redecided on the limited issue hereinabove settled for disposal and we direct that the said application stands restored. The parties are permitted to file such documents on which they rely for purposes of adjudication of I.A. No. 13619/2008.
18. It is clarified that the consent aforesaid encompasses that M/s Ran India Steels Pvt. Ltd. would have no objection to M/s Rana Steels selling its products under the trademark ‘RANA’ or ‘RANA TOR’.
19. The appeals stand disposed of.
20. No costs.”
4. A perusal of the above order shows that the parties agreed to resolve the issue. The Defendant-Ran India Steels Pvt. Ltd could sell its products under the mark 'RANINDIA' written in one word, without there being a space between the words ‘RAN’ and ‘INDIA’. It was also consented that the products sold by the Defendant would be etched, embossed or printed, as the case may be, with the mark/name 'RANINDIA'. However, on the publicity material, there could be a pictorial description of an image akin to the one represented on Registered Trademark no. 1603837. By the above order, parties also agreed to withdraw their respective cancellations petitions/oppositions, and thus, the entire appeal stood disposed of in terms of the said consent terms.
5. It was alleged by the Plaintiff that during the subsistence of the injunction order, the Defendant had sold steel stock weighing approximately 3,000MT under the mark ‘RANA TOR’. On the said issue, the ld. Division Bench observed that evidence would be needed to be led to determine whether the Defendant had re-rolled the existing stock, and thereafter sold the same or not.
6. For the said purpose, evidence was to be led in the suit, and the same was to be considered before the ld. Single Judge.
7. Thereafter, an application under Order XI Rule 14 CPC was also filed which was dismissed on 20th November, 2014 and appeal against the said order was also filed. Vide order dated 7th April 2015, the appeal against the order dated 20th November 2014 was disposed of as not pressed. The relevant portion said order reads as under:
“3. Learned counsel for the appellant/plaintiff states that while passing the aforesaid order, the learned Joint Registrar had not examined the merits of the application but only considered the maintainability of the application in the light of the opposition by the other side. He states that instead of pressing the present Chamber Appeal, the plaintiff may be granted liberty to file a fresh application for seeking directions to the defendants in LA. 13619/2008, an application filed by the plaintiff under Order XXXIX Rule 2A CPC, read with Sections 10 and 12 of the
Contempt of Court Act, for production of certain documents, which are relevant for adjudicating the said application, insofar as the claim of the plaintiff for damages is concerned and for demonstrating that the defendant is in contempt of the interim order dated 14.8.2007.
4. Leave, as prayed for, is granted. The Chamber Appeal is disposed of as not pressed.
5. As and when the appellant/plaintiff files a separate application for the reliefs as noted hereinabove, the same shall be considered in accordance with law.”
8. It is noticed that the last hearing before this Court in the present suit was in 2015, and for the last eight years, the matter has not been listed before the Court at all but has been listed only before the Joint Registrar.
9. For one reason or the other, the matter has remained pending before the Joint Registrar, and the Plaintiff has not pursued its suit for damages or any other relief. The suit itself is more than 15 years old, and the substantive issues of the suit have already been settled between the parties. Thus, there was no reason for the Plaintiff to have wasted substantial judicial time in keeping the matter pending after the ld. Division Bench order dated 17th May, 2012.
10. Today, ld. Counsel for the Plaintiff is seeking discharge. There is no other counsel appearing for the Plaintiff. The authorised signatory of the Plaintiff in the present case is Mr. Sandeep Goel, (M. No.9837776671). The authorized signatory is also not present before the Court. The application seeking discharge states that notice has been issued to the Plaintiff, which has also been served upon the Plaintiff. Under these circumstances, ld. Counsel is discharged.
11. In this background, the Court does not deem it necessary to keep the suit pending. The Plaintiff does not appear to have any interest in pursuing the present suit as it has not given instructions to the ld. Counsel. However, considering that this is a commercial trademark matter and substantial time, man power and costs have been incurred by the Defendant, and substantial judicial time has also been expended in this matter, for the last 15 years and over ten years have elapsed since the passing of the Division Bench’s order, costs ought to be paid. Accordingly costs of Rs.10,00,000/- is imposed upon the Plaintiff, out of which, a sum of Rs.5,00,000/- shall be paid to the Defendant and Rs.5,00,000/- shall be deposited by the Plaintiff to the Delhi High Court Legal Service Committee.
12. Both the Defendant and Delhi High Court Legal Service Committee are permitted to take necessary action to recover the said costs including by filing proceedings against the promoters/officials of the Plaintiff, if required, if the amount is not paid within eight weeks from today.
13. The suit is dismissed for non-prosecution in the above terms.
14. Next date of hearing is cancelled. Copy of this order be communicated by the Registry to Mr. Sandeep Goel, (M. No.9837776671), authorised signatory of the Plaintiff.
PRATHIBA M. SINGH
JUDGE
SEPTEMBER 20, 2023
mr/dn
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