Full Text
HIGH COURT OF DELHI
CS(COMM) 56/2022, I.A. 15280/2022 (for condonation of delay of 41 days in filing replication) and I.A. 2029/2023
(Order XI Rule 12 of the CPC)
MS LIGHTBOOK & ANR. ..... Plaintiffs
Through: Ms. Avnish Ahlawat, Ms. Tania Ahlawat, Mr. Nitesh Kumar Singh, Ms. Palak Rohmetra, Ms. Laavanya Kaushik and
Ms. Aliza Alam, Advs.
Through: Mr. Alankar Kirpekar, Mr. Jaspreet Singh Kapur and Mr. Kartik Sharma, Advs.
JUDGMENT
24.04.2023
1. This judgment disposes of IA 1203/2022, whereby the plaintiffs seek interlocutory injunctive reliefs against the defendants, pending disposal of CS (Comm) 56/2022, instituted by them.
2. Arguments in this matter have been heard over a considerable period of time. However, I am of the opinion that the plaintiffs would stand disentitled to interim relief as sought both on account of certain admissions of fact, contained in a counterstatement filed by the plaintiffs on 14th January 2020, in response to proceedings initiated by the defendants against the plaintiffs under Section 57 of the Trade Marks Act 1999, as also because the document, containing the said admission of fact, was suppressed while filing the present plaint. Facts
3. The rival marks, with which we are concerned in the present case, are the following: Plaintiffs’ registered mark Defendants’ impugned mark LIGHTBOOK,
4. The defendants applied for registration of the impugned mark in Class 11 on 25th September 2014, claiming user since 1st April 2014 and covering apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes”.
5. The plaintiffs applied for registration of the mark on 14th September 2015, in Class 42, claiming user since 1st September 2008 and covering “consulting services in the field of lighting design and lighting controls; consultancy relating to lighting specification pertaining to permanent or temporary architectural, theatrical, entertainment, commercial and/or residential applications; room design consisting of selection of lighting and visual planning”. The plaintiffs‟ mark was registered on 5th January 2017.
6. On 27th August 2018, the plaintiffs filed an opposition under Section 21 of the Trade Marks Act, 1999, opposing the application dated 25th September 2014 of the defendants for registration of the mark. Counter-statement, to the said opposition, was filed by the defendants on 29th September 2018.
7. On 13th September 2018, the plaintiffs issued a notice to the defendants, calling upon the defendants to cease and desist from using the impugned mark.
8. On 23rd September 2019, the defendants filed an application, in the office of the Registrar of the Trade Marks under Section 57 of the Trade Marks Act, seeking rectification of the register and removal, therefrom, of the plaintiffs‟ mark. On 14th January 2020, the plaintiffs filed its reply to the said application of the defendants, and in para 4 of para-wise reply that the following averment finds place which, according to me, completely defeats any entitlement of the plaintiffs to interlocutory relief: “The contents of Paragraph 4 are wrong and denied. It is submitted that there is no question of identicalness with respect to Registered Proprietor's Registered Trademark in comparison with Petitioner's Impugned Mark. It is specifically stated that Registered Proprietor trademark "LIGHT BOOK ARCHITECTURAL LIGHTING DESIGNERS”/” ” (Device mark) and Petitioner's Impugned Mark is "Lightbook”/” ”only. It can be clearly observed that Registered Proprietor's Registered Trademark comprises of five different terms placed in such a way that the same as per common laws, case laws requires to be read as a whole. However, Petitioner's Impugned Mark consists of only single term only which is nowhere similar or identical to Registered Proprietor's Registered Trademark. Hence, such contention of Registered Proprietor having an identical trademark with Petitioner's Impugned Mark stands invalid. It is further submitted that allowing Petitioner's present rectification application will cause irreparable harm Registered Proprietor's established business and impeccable reputation in the eyes of public as the public associate the term Lightbook being known and attached with the Registered Proprietor. As of now there is no cause of confusion on part of the public with respect to Petitioner's Impugned Mark but instead allowing the present rectification application will create huge confusion amongst public at large as Registered Proprietor after getting its mark registration has increased its usage worldwide. It is lastly important to highlight that, Petitioner is providing its services under class 11 and Registered Proprietor is offering services under class 42. Both classes are different from each other, 11 being a class specifically for goods and 42 being the class of services. Therefore, Registered Proprietor rendering services under the service class is nowhere similar or identical to Petitioner business. It is also added that Petitioner is dealing with manufacturing and selling of products through the Impugned Trademark. However, Registered Proprietor is offering consultancy services which is nowhere similar or identical to Registered Proprietor's Registered Trademark Such different areas of service being offered by Registered Proprietor's Registered Trademark is not bound to cause confusion anywhere in public or traders.” (Emphasis supplied) Rival Contentions
9. Ms. Avnish Ahlawat, learned Counsel for the plaintiffs, submits that the present case is clearly one of priority both of registration and user, coupled with deceptive similarity among the rival marks thereby entitling the plaintiffs, ipso facto, to interlocutory injunctive relief. She submits that the services rendered by the plaintiffs and the goods sold by the defendants under the rival marks are allied in nature, as the plaintiffs provide consultancy services in respect of lighting in buildings and allied activities, whereas the defendants, under the impugned mark, manufacture and sell lighting apparatus. She submits that there is no reasonable explanation for the defendants adopting the mark “LIGHTBOOK”. Though the plaintiffs do not have any word mark registration for “LIGHTBOOK”, Ms. Ahlawat submits that “LIGHTBOOK”, constituting the most prominent feature of the rival marks, the plaintiffs are entitled, even on that basis, to interlocutory relief. She submits that, in fact, her client has received complaints from customers, who were deceived into believing the existence of relationship between the defendants and the plaintiffs, and were unhappy with the quality of goods purchased from the defendants.
10. Apropos the assertions contained in para 4 of the reply filed by the plaintiffs to the Section 57 application of the defendants, Ms. Ahlawat submits that the assertions therein were entered owing to some kind of oversight. Even so, she submits, it is not permissible to rely solely on the said paragraph, ignoring all other assertions of the plaintiffs, both before the Registrar of Trade Marks as well as before this Court, in which the plaintiffs have repeatedly drawn attention to the deceptive similarity between the marks of the plaintiffs and the defendants and the likelihood, therefore, of confusion ensuing in the market. She points out that, in its opposition dated 27th August 2018, to the application dated 25th September 2014 of the defendants, seeking registration of the impugned mark, the plaintiffs had clearly averred that the two marks were deceptively similar and that, therefore, if the defendants‟ mark were to proceed to registration, it would create confusion in the market. Even in the cease and desist notice dated 13th September 2018, addressed by the plaintiffs to the defendants, the clear stand of the plaintiffs was that the defendants‟ mark was deceptively similar to the mark of the plaintiffs. Keeping in view these assertions, Ms. Ahlawat submits that it would be unjustified to merely rely on para 4 of the reply dated 14th January 2020, filed by the plaintiffs by way of response to the defendants‟ Section 57 application to deny injunctive relief to the plaintiffs.
11. Even otherwise, submits Ms. Ahlawat, the question of existence or otherwise of infringement is a question of law which has to be decided on the basis of the facts of the case in the light of Section 29 of the Trade Marks Act.
12. Ms. Ahlawat submits that, where there is deceptive similarity between the marks and chance or likelihood of confusion, an injunction must follow. She points out, in this context, that even while seeking registration of the impugned mark under Class 11, which covers only goods, the defendants, with malice aforethought, have on their website advertised themselves as providing consultancy services as well. She submits that, therefore, the intention of the defendants to deceive prospective customers into believing the existence of an association between the defendants and the plaintiffs is transparent and that, therefore, the plaintiffs are entitled to interlocutory relief.
13. Ms. Ahlawat submits that, if the defendants seek to rely on the contents of para 4 of the reply, of the plaintiffs, to the Section 57 application of the defendants, equally, it cannot be forgotten that in their Section 57 application, the defendants admitted the existence of deceptive similarity between the marks of the plaintiff and the defendants. She has referred, in this context, to para 4 of the said application, which reads thus: “The trademark "LIGHT BOOK ARCHITECHTURAL LIGHTING DESIGNERS" is identical to my trademark "LIGHTBOOK". Therefore it creates confusion and deception between the two brands at large. Hence it is necessary to cancel said Trademark from the register, for the interest of the people at large. Because the trademark is used for the Opponents goods which are "CONSULTING SERVICES IN THE FIELD OF LIGHTING DESIGN AND LIGHTING CONTROLS, THEATRICAL, ENTERTAINMENT, COMMERCIAL, ROOM DESIGN CONSISTING OF SELECTION OF LIGHTING AND VISHAL PLANNING." included in CLASS
42. The Applicant trades in goods of "APPARATUS FOR LIGHTING, HEATING, STEAM GENERATING, COOKING, DRYING, VENTILATING, WATTER SUPPLY ADN SANITARY PURPOSES" included in CLASS- 11. Thus, the goods that the applicant trades in and the goods of the Opponent are very similar. This is bound to cause confusion among the pubic and traders with regard to the origin of the good of the rival brands.”
14. Ms. Ahlawat has also relied on the judgment of the Division Bench of this Court in Raman Kwatra v. KEI Industries Ltd[1], specifying particularly on para 43 thereof. She submits that the position in law, as clearly enunciated in that passage, is that, if the plaintiffs obtain registration of a mark, and, during the process of examination of the plaintiffs‟ application prior to grant of registration, the defendants‟ mark is set up as a rival mark to that of the plaintiffs, then, the plaintiffs would be bound by the stand adopted by it while justifying its claim to registration in the face of the rival mark of the defendants.
15. The assertion in para 4 of the reply dated 14th January 2020, filed by the plaintiffs before the Registrar in response to the defendants‟ Section 57 application was not in the course of prosecution of the plaintiffs‟ application seeking grant of registration, nor was it an admission made during the course of prosecution history of the said application; ergo, applying the ratio of the afore-extracted passages from Raman Kwatra, Ms. Ahlawat submits that the said averments cannot estop the plaintiffs or act as an impediment to grant of interlocutory relief to them.
16. Responding to the submissions of Ms. Ahlawat, Mr. Alankar Kirpekar, has placed considerable emphasis on para 4 of the reply dated 14th January 2020, submitted by the plaintiffs to the defendants‟ Section 57 application. He submits that the assertions in the said paragraph are so clear, unequivocal and categorical, that, at least at a prima facie stage, the Court cannot but take them into account. In the face of the said assertions, Mr. Kirpekar submits that the plaintiffs cannot possibly seek to canvass before this Court, at this stage, a contention that the defendants‟ impugned mark, viewed vis-à-vis that of the plaintiffs, would create confusion. Moreover, submits Mr. Kirpekar, the said counterstatement was filed on oath, and is verified by a verification of the registered proprietor of the plaintiffs, which reads thus: “VERIFICATION Verified at Delhi on this 13th January 2020, that the contents of Paragraph 1-11 of Preliminary Submissions, Paragraph 1-12 of the Para wise reply of Grounds of application, Paragraph 1-4 and 5 of Para wise reply of Statement of Grounds are derived from the record of my Firm to which I have full access and which I believe to be true and correct to my knowledge. Paragraph 5 being the prayer clause of Para wise reply of Statement of Grounds is put before this Hon'ble Trademark Registry. Sd. Mr. Vinayak Diwan (Registered Proprietor- /LIGHTBOOK ARCHITECTURAL LIGHTING DESIGNERS) Deponent”
17. In the face thereof, Mr. Kirpekar would submit that this is not a case which calls for grant of any interlocutory relief against the defendants at this point of time.
18. Mr. Kirpekar has also sought to emphasise the equities of the situation. He submits that, in fact, it was the defendants, who had (2023) 296 DLT 529 applied for registration of their mark prior to that of the plaintiffs, the date of the defendants‟ application being 25th September 2014 and that of the plaintiffs‟ being 14th September 2015. If the plaintiffs obtained registration of their mark earlier, even while the defendants‟ mark was pending consideration, he submits that it was only because the plaintiffs‟ application was in Class 42, whereas the defendants‟ application was in Class 11. He submits that there is no dispute about the fact that the defendants claim user of the impugned mark since 1st April 2014, since which date more than nine years have passed. In these circumstances, Mr. Kirpekar submits that, keeping the principles of balance of convenience and irreparable loss in mind, it would be wholly inequitable to injunct the defendants, at this point of time, from continuing to use the impugned mark. Rather, he submits, the interests of justice would be more appropriately served if the defendants are directed to maintain accounts of the earnings used by them using the impugned mark, which on instructions, he undertakes that the defendants would do.
19. Mr. Kirpekar has also advanced the contention that the plaintiffs stand disentitled from any equitable relief as they have consciously omitted to place on record the reply dated 14th January 2020 filed by the plaintiffs by way of response to the defendants‟ Section 57 application, which contains that he would characterize as the fatal admissions of fact in para 4 thereof. The omission to place the said documents on record, according to Mr. Kirpekar, is by itself sufficient to disentitle the plaintiffs to relief at least at this stage. Analysis
20. Having heard learned Counsel for both sides and applied myself to the facts of the case and the extant law thereon, I am of the considered opinion that, at this prima facie stage, the plaintiffs cannot escape the consequence of the assertions contained in para 4 of the counter-statement dated 14th January 2020, filed by the plaintiffs in response to the defendants‟ Section 57 application.
21. The assertion is not a simple one-line statement regarding existence or otherwise of deceptive similarity. The question of whether, between the marks of the plaintiffs and the defendants, there exists deceptive similarity as would constitute infringement within the meaning of Section 29 of the Trade Marks Act, is a mixed question of fact and law. The question of existence of deceptive similarity is fundamentally a question of fact. Whether the similarity, if it exists, would amount to infringement within the meaning of Section 29 of the Trade Marks Act, may be treated as involving an element of law.
22. A reading of para 4 of the counterstatement dated 14th January 2020, filed by the plaintiffs reveals that it is exhaustive and comprehensive in nature. The plaintiff has, in the said passage, admitted, in so many words, that
(i) viewed as a whole, there was no similarity between the plaintiffs‟ and the defendants‟ marks,
(ii) the plaintiffs‟ mark comprised five different items placed in such a way that they had to be read as a whole, whereas the defendants‟ mark comprised only one single item,
(iii) the defendant‟s mark was “nowhere similar or identical to” the plaintiffs‟ registered trade mark,
(iv) there was, therefore, “no cause of confusion, on the part of the public with respect to” the plaintiffs‟ mark,
(v) the two marks were being used in respect of goods/services pertaining to different classes; the plaintiffs were providing services under Class 42, whereas the defendants were selling goods under Class 11,
(vi) there was, therefore, no similarity in the business activities of the plaintiffs and the defendants,
(vii) the defendants were dealing with manufacturing and selling of products, using the impugned mark,
(viii) as against this, the plaintiffs were offering consultancy services, which were “nowhere similar or identical to” the goods in which the defendants were trading, and
(ix) as such, as the plaintiffs and defendants operated in different areas, there was no chance of confusion in the public or the trade.
23. There can be no escape, at a prima facie stage, from these assertions of fact. They assert not only that there is no possibility of confusion between the marks of the plaintiffs and the defendants, but that, in fact, at least at that point of time, there did not exist any such confusion in the market at all. That being so, on the primary question of fact, i.e. the existence or otherwise of confusing or deceptive similarity between the marks of the plaintiffs and the defendants, the aforesaid assertions contained in para 4 of the reply dated 14th January 2020, filed by the plaintiffs, fatally imperil its case for grant of interlocutory injunction.
24. The reliance by Ms. Ahlawat, in this context, on the judgment of the Division Bench of this Court in Raman Kwatra[1] is, in my prima facie view, completely misplaced.
25. The issue before the Court, in that case was with respect to the stand taken by a plaintiff while applying for registration of the mark asserted in the plaint. The Division Bench of this Court held that, if the defendant‟s mark was put up as a rival mark, at the time of prosecution of the plaintiff‟s application for registration, the stand taken by the plaintiff to disabuse the Registrar of the existence of similarity between the two marks, would also be relevant if the plaintiff were subsequently to institute an infringement suit against the defendant. This is, in fact, what is commonly known as “prosecution history estoppel”.
26. No such issue arises in the present case. Para 4 of the reply January 2020 of the plaintiffs, as submitted before the admissions of fact, as pleaded before the Registrar. As Mr. Kirpekar correctly pointed out, the reply dated 14th January 2020 was filed on oath, and was affirmed by verification by the partner of the plaintiffs. It cannot lie in the mouth of the plaintiffs, therefore, to contend, before this Court, that the marks of the plaintiffs and defendants are deceptively similar.
27. The issue of whether there exists or does not exist, an element of confusing or deceptive similarity being essentially an issue of fact, the afore-noted admission, as contained in para 4 of the reply dated 14th January 2020 of the plaintiffs would, at least at a prima facie stage, estop the plaintiffs, and would serve to disentitle the plaintiffs from taking a contrary stand before this Court, while seeking interlocutory relief.
28. Besides, I am in agreement with Mr. Kirpekar that the plaintiffs would, even on principles of equity, be disentitled to any relief in the present application, as there is a clear and prima facie deliberate omission, on the part of the plaintiffs, from placing the aforesaid counterstatement dated 14th January 2020 on record. There can be no explanation, whatsoever, for this omission. In S.K. Sachdeva v. Shri Educare Ltd.2, the Division Bench of this Court held that the omission, on the part of the plaintiff, from placing such a document on record ipso facto disentitled the plaintiff to interlocutory relief. Para 16 of the report in S.K. Sachdeva reads thus:
29. Every litigant who approaches the Court is required to place his cards on the table, face up. A Court which does not have, before it, all the facts, cannot dispense justice as it should.
30. Given the nature of the assertions contained in para 4 of reply January 2020, as extracted hereinabove, this Court is (2016) 65 PTC 614 (DB) unable, prima facie, to believe that the omission to place the said document on record was inadvertent or because of any urgency in filing the matter.
31. Even on this ground, therefore, the plaintiffs would stand disentitled to any interlocutory injunctive relief.
32. For these reasons, this Court is unable to grant any interlocutory injunctive relief to the plaintiffs. Accordingly, IA 1203/2022 stands dismissed.
33. Needless to say, the observations made in this order are only intended to facilitate disposal of the application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 and would not amount to any expression of opinion, even tentative, when the suit is finally heard.
34. List before the learned Joint Registrar (Judicial) for admission and denial of documents and marking of exhibits on 12th May 2023, whereafter the matter would be placed before the Court for case management hearing and further proceedings. I.A. 7839/2022 (Section 124 for stay)
35. List for hearing before the Court on 19th May 2023.
C.HARI SHANKAR, J APRIL 24, 2023