Full Text
Date of Decision: 23.08.2017
15067/2015 (U/s. 340 Cr.P.C) CRL . M.A. 16950/2015 (U/s 340
Cr.P.C)
M/S KELWYN DOOR CARES (INDIA) & ANR. ..... Plaintiffs
Through: Mr. Ashoek Goel and Mr. Rajeev Kumar, Advs.
Through: Mr. Amardeep Singh, Mr. Dinesh Masant and Mr. Ambuj Saraswat, Advs.
JUDGMENT
( by defendants under O 39 R 4)
1. The plaintiffs have filed the suit for permanent injunction, infringement of trade mark, passing off and have also claimed damages.
2. The plaintiff no. 1 is the registered proprietor of the trade mark CLOSMA vide no. 1475173 dated 01.08.2006 in respect of hardware goods, door closing devices, doors and window fittings, locks and handle fittings etc in Class 6.
3. The plaintiff no.2 is the registered proprietor of trade mark CLOSMA vide no. 1148501 dated 28.10.2002 in respect of hydraulic door closing devices for door closures and floor springs in Class 7. The plaintiff no. 2 2017:DHC:4696 CS(OS) No.2377/2015 Page 2 is also the registered proprietor of trade mark KELWYN in respect of closing devices for door, doors and window fittings etc in Class 6 and also in respect of hydraulic door closing devices for door closures and floor springs in Class 7 and they are using the trade mark CLOSMA since the year 2002 and KELWYN since the year 1989. The word KELWYN is the prominent part of the trading style of plaintiff no. 1/ firm. It is submitted that website www.closma.com of plaintiff no. 1 provides the information regarding all the products of the plaintiffs under its well known trade mark CLOSMA. This website is accessible at any place in the world.
4. The plaintiffs alleged that in July 2015, it noticed that the defendants are using the deceptively similar mark KLAZMA, KLAZMAX and KLAZVYN (hereinafter referred to as “impugned marks”) in relation to identical goods. The defendants copied the first four letters KLAZ in the impugned marks by keeping in mind the first four letter CLOS of plaintiff’s trade mark CLOSMA and thereafter added the word VYN by keeping in mind the later three letters of plaintiff’s trade mark KELWYN. The defendants have also copied the slogan of the plaintiff printed below its trade mark CLOSMA and have also copied products code of the plaintiffs. It is, therefore, submitted that the defendants are not only infringing the CS(OS) No.2377/2015 Page 3 trademarks of the plaintiffs but are also passing off their goods as that of the plaintiffs and thereby causing huge losses to the plaintiffs. It has also affected the goodwill of the plaintiffs. On these facts, it is prayed that the defendants, their agents, servants, representatives etc. be restrained from using the impugned trade mark KLAZMA, KLAZMAX and KLAZVYN or any other mark which is deceptively similar to the Plaintiffs’ trademark CLOSMA and KELWYN. An application under Order 39 Rule 1 and 2 of the Civil Procedure Code (hereinafter referred to as “CPC”) has also been filed on the similar ground.
5. The suit as well as the application are contested by the defendants.
6. At the outset, the defendants have submitted that plaintiffs have not come to this Court with clean hands and have concealed the fact that the mark KLAZMA is the registered trade mark. It is submitted that the plaintiffs, themselves, being guilty of fraud and misrepresentation, are not entitled to any relief and the suit as well as the applications are liable to be dismissed on this ground.
7. It is submitted that plaintiff no. 1, through its advocates, had moved an application on 16.07.2015 with the Registrar of Trade Marks, New Delhi, seeking rectification of the trade mark “KLAZMA” which is registered in CS(OS) No.2377/2015 Page 4 the name of its proprietor Shri. Rajesh Jain vide registration dated 25.07.2012. It is submitted that a suit had been filed by the plaintiffs against Sh. Rajesh Jain yet this fact had been concealed from the knowledge of the Court and also that Sh. Rajesh Jain has not been made a party to the suit although he is registered owner of trade mark.
8. It is further submitted that there is no similarity of any nature between the defendants’ marks KLAZMAX-ARCHITECTURAL HARDWARE and KLAZVYN with that of plaintiffs. It is submitted that Sh. Tarsem Jain, proprietor of defendant no. 1 had applied for registration of trade mark “KLAZVYN” which he has been using since 01.09.2012 and that the trademarks of defendants have acquired a distinctive meaning since September 2012. The use of mark by the defendants is not likely to cause confusion in the mind of the public and also would not deceive anyone. There is no similarity between the trademark of the plaintiffs and the defendants, either visually or phonetically or otherwise. It is further submitted that the plaintiffs were fully aware that no sale of any goods with the trade mark KLAZMA ever took place at B-2/385, Sector -6, Rohini, New Delhi (the alleged address), yet the plaintiffs sought ex-parte ad interim injunction vide order dated 11.08.2015 and seized the alleged goods CS(OS) No.2377/2015 Page 5 at the alleged address of the defendants. It is submitted that plaintiffs have not only concealed the material facts from the notice of this Court but has also sworn in a false affidavit. In the application under Order 39 Rule 4 CPC, the defendants sought the vacation of the interim order dated 11.08.2015 on the similar grounds. The application under Order 39 Rule 4 CPC is contested by the plaintiffs on the same grounds as enumerated in its application under Order 39 Rule 1 and 2 of CPC.
9. I have heard the arguments of learned counsels and perused the record.
10. The main and foremost argument of learned counsel for the defendants is that the plaintiffs are not entitled to discretionary relief since they have concealed from the Court that KLAZMA was the registered trade mark and reliance is placed on M/s S.M. Dyechem Ltd. vs. M/s Cadbury (India) Ltd, AIR 2000 SC 2114. It is also submitted that the present application is liable to be dismissed in view of Section 124 of Trade Marks Act, 1999 since the plaintiffs have already filed a rectification application before the Registrar in respect of the registered trade mark “KLAZMA” and has placed reliance on RM Dissels Pvt. Ltd vs. Thukral Mechanical Works 2016 (65) PTC Delhi Full Bench. It is further argued that the plaintiffs in CS(OS) No.2377/2015 Page 6 their replication have admitted the filing of the rectification application and the same is pending under Section 124 of the Trade Marks Act, 1999. It is also argued that there is no similarity between the trademarks of the plaintiffs and that of defendants. It is also argued that plaintiffs have filed a suit for infringement and passing off and two suits cannot be filed together.
11. Learned counsel for the plaintiff has argued the matter at length and has reiterated the pleas taken in the impugned application for stay. Learned counsel has also relied on cases Lilly Icos LLC & Anr. v. Maiden Pharmaceuitcals Lim 2009 (39) PTC 666 (Del.); Pankaj Goel v. Dabur India Ltd. 2008 (38) PTC 46 (Del.); Indian Shaving Products Ltd. & Anr v. Gift Pack & Anr. 1998 PTC 18 Del.; Mukesh Khadaria Trading v. DCM Shriram Consolidated Limited 2010 (43) PTC 321 (Del.); and M/s. Hidesign v. M/s. Hi-design creations AIR 1991 Del. 243 in support of his arguments.
12. Admittedly, in the present case, the trade mark KLAZMA is registered in the name of Sh. Rajesh Jain who is not made a party by the plaintiffs yet relief has been sought against him. Sh. Rajesh Jain, is the registered owner of the trademark “KLAZMA” and if any other person is using the said trademark without his consent, the person aggrieved would be CS(OS) No.2377/2015 Page 7 him. During the course of arguments and also in reply to application under Order 39 Rule 4 of CPC, the plaintiffs have admitted that they had filed a civil suit against Sh. Rajesh Jain which is pending trial in another Court, and no injunction order was issued in favour of plaintiffs in that suit, yet the plaintiffs have surreptitiously, by intentionally concealing the fact that the mark KLASMA is registered in the name of Sh. Rajesh Jain and no stay against the use of such mark was given to them by Court misguided the Court and obtained an ex-parte order of stay against use of mark KLAZMA. No injunction can be granted against the use of a registered trademark. It is apparent that as per the knowledge of the plaintiffs themselves, none of the defendant is the owner of the mark KLAZMA yet the suit is filed against them concealing the fact that KLAZMA is registered mark and if the defendants on their website or through any other medium claim themselves to be the owner of the mark, KLAZMA, the person who could have any grievance against such display would only be the registered owner of the mark that is Sh. Rajesh Jain.
13. As regards the trade marks KLAZMAX ARCHITECTURAL HARDWARE and KLAZVYN are concerned, defendants have claimed that they have been using these trademarks since the year 2012 and have also CS(OS) No.2377/2015 Page 8 applied for its registration. It is apparent from the documents placed on record by the defendants that they had applied for registration of the marks KLAZMAX vide application dated 01.06.2013 claiming its use since 01.09.2012 and for registration of mark KLAZVYN, vide application dated 11.06.2015 claiming its use since 01.09.2012. It is also apparent from the documents placed on record by the defendants that prima facie the defendants have shown that they have been using this mark since 2012 and it seems that plaintiffs have not taken any steps against the use of these marks. There is a considerable delay of about three years in moving the Court on the part of the plaintiff. It is argued by learned counsel for the plaintiff relying on the findings of the case in M/s. Hidesign (supra) and Mukesh Khadaria (supra) wherein the delay of three years is not found to be fatal to non-suit plaintiff and the relief was granted, that the delay itself cannot be a ground to refuse injunction.
14. This Court in Mukesh Khadaria case (supra) case itself after discussing the case law of Gujarat Bottling Co. Ltd. v. Coca Cola Co. (1995) 5 SCC 545; The Fairdeal Corporation (Pvt.) Ltd v. Vijay Pharmaceuticals 1985 PTC 80; Shri Gopal Engg. v. POMX Laboratories AIR 1992 Delhi 302; Century Electronics v. C.V.S. Enterprises 1983 FSR CS(OS) No.2377/2015 Page 9 1; Satish Khosla v. Eli Lilly Ranbaxy 1998 I AD (Delhi) 927; S.P. Chengalvaraya Naidu v. Jagannath AIR 1994 SC 853; Pankaj Goel v. Dabur India Ltd. 2008 (38) PTC 49; and Amar Singh Chawalwala v. Shree Vardhman Rice & General Mills 2009 (40) PTC 417 summarised the law as delay as under:-
The principle of law as envisaged is that where the delay is unexplained, not bona fide, it may amount to waiver or acquiescence depending on the facts and circumstance of each case and also the conduct of parties. In the case of Hidesign (supra) also, this Court considered the facts and circumstances of the case and the pleas raised by the parties to reach to the conclusion whether the delay amounts to acquiescence or not. CS(OS) No.2377/2015 Page 10 Though the delay in moving the Court ipso facto does not disentitle the plaintiffs for relief and its effect has to be judged in the light of the facts and circumstance of the case and the conduct of the parties.
15. In order to be entitled for relief at this stage, the plaintiffs have to prima facie give valid and reasonable reasons for delay. There is nothing on record to show that the plaintiffs were not aware of the applications being filed by the defendants for registration of these two marks, yet it remained complacent and did not move the Court. The plaintiffs have failed to give any valid and reasonable reasons for such complacency.
16. Also where there is unexplained delay in approaching Court, the conduct of the parties is a relevant factor. It is the overall conduct of the party which the Courts needs to take into account while exercising its discretion of granting ad interim injunction.
17. Initially, on the first date of hearing, this Court found it appropriate to issue ex-parte ad interim injunction only in respect of mark KLAZMA which evidently the plaintiffs succeeded by concealed material facts from this Court. There is no dispute to the principle of law that a discretionary and the grant of injunction is equitable relief which has to be exercised with caution. The equity demands that the person who seeks discretion must CS(OS) No.2377/2015 Page 11 come to Court with clean hands and if he does not do so, he is not entitled for any relief.
18. This Court in the case of M/s Seemax Construction (P) Ltd. Vs. State Bank of India and another, AIR 1992 Delhi 197 has held as under:- “10. The suppression of material fact by itself is a sufficient ground to decline the discretionary relief of injunction. A party seeking discretionary relief has to approach the court with clean hands and is required to disclose all material facts which may, one way or the other, affect the decision. A person deliberately concealing material facts from court is not entitled to any discretionary relief. The court can refuse to hear such person on merits. A person seeking relief of injunction is required to make honest disclosure of all relevant statements of facts otherwise it would amount to an abuse of the process of the court. Reference may be made to decision in The King v. The General Commissioners for the purposes of the Income Tax Acts for the District of Kensingion, 1917 (1) KBD 486 where the court refused a writ of prohibition without going into the merits because of suppression of material facts by the applicant. The legal position in our country is also no different. Charanji Lal v. Financial Commissioner, Haryana, Chandigarh AIR 1978 P & H 326. Reference may also be made to a decision of the Supreme Court in Udai Chand v. Shankar Lal, [1978]2SCR809. In the said decision the Supreme Court revoked the order granting special leave and held that there was a misstatement of material fact and that amounted to serious misrepresentation. The principles applicable are same whether it is a case of misstatement of a material fact or suppression of material fact.”
19. The same principle is reiterated by this Court in the case of Charanjit Thukral and Anr. Vs. Deepak Thukral and Anr. in CS(OS) No. 967/2010 decided on 29.07.2010 and held as under:- CS(OS) No.2377/2015 Page 12 “18. It is settled principle of law that a person who approaches the Court for grant of relief, equitable or otherwise, is under a solemn obligation to candidly disclose all the material/important facts which has bearing on the adjudication of the issues raised in the case. It is the duty of the party asking for an injunction to bring to the notice of the Court all facts material to the determination of his right to have injunction and it is not an excuse for him to say that he was not aware of the importance of any facts which he has omitted to bring forward. Where plaintiff does not act bona fidely and does not put every material facts before the Court, the Court is within its inherent power to refuse to grant him injunction, even though there might be facts upon which injunction might be granted. Conduct of the plaintiff is very material in bringing the case and disclosing the facts before the Court. plaintiff is required to make fullest possible disclosure of all material facts within his knowledge to the Court and if he does not make that fullest possible disclosure, he cannot obtain any advantage from the proceedings and is liable to be deprived of any advantage he might have already obtained by means of the order which has thus wrongly been obtained by him by concealment of material facts.”
21. In Gujarat Bottling case (supra) way back in 1985, the Supreme Court has laid down the principle that the conduct of the parties is an important factor while exercising discretion. The Court has held as under:- “50. In this context, it would be relevant to mention that in the instant case GBC had approached the High Court for the injunction order, granted earlier, to be vacated. Under Order 39 of the Code of civil procedure, jurisdiction of the Court to interfere with an order of interlocutory or temporary injunction is purely equitable and, therefore, the Court, on being approached, will, apart from other considerations, also look to the conduct of the party invoking the jurisdiction of the court, and may refuse to interfere unless his conduct was free from blame. Since the relief is wholly equitable in nature, the party invoking the jurisdiction of the Court has to show CS(OS) No.2377/2015 Page 13 that he himself was not at fault and that he himself was not responsible for bringing about the state of things complained of and that he was not unfair or inequitable in his dealings with the party against whom he was seeking relief. His conduct should be fair and honest. These considerations will arise not only in respect of the person who seeks an order of injunction under Order 39 Rule 1 or Rule 2 of the CPC, but also in respect of the party approaching the Court for vacating the ad-interim or temporary injunction order already granted in the pending suit or proceedings.”
22. The Supreme Court in Rajabhai Abdul Rehman Munshi vs. Vasudev Dhanjibhai Mody [1964 ]3 SCR 480 held that in the matters where the Court has to exercise its discretion, the discretion cannot be exercised in favour of the parties who have concealed the material facts from the notice of the Court and that it is the duty of the parties to present before the Court all those facts which are relevant for the Court to exercise its discretion. The Court has held as under:- “11……We cannot over-emphasize the fact that the jurisdiction of this Court is discretionary. This Court is not bound to grant special leave merely because it is asked for. A party who approaches the Court knowing or having reason to believe that if the true facts were brought to its notice this Court would not grant special leave, withholds that information and persuades this Court to grant leave to appeal is guilty of conduct forfeiting all claims to the exercise of discretion in his favour. It is his duty to state facts which may reasonably have a bearing on the exercise of the discretionary powers of this Court. Any attempt to withhold material information would result in revocation of the order, obtained from this Court. We are unable to agree with counsel for the defendant that the duty of an applicant for special leave to this Court is discharged when he merely summarises the judgment of the Courts below and claims relief CS(OS) No.2377/2015 Page 14 on the footing that the findings are correct, when to his knowledge the findings cannot be sustained and the findings have been so recorded because the Courts below have been misled on account of representations for the making of which he was either directly or indirectly responsible. In our judgment the petition filed before this Court was misleading.” (emphasis supplied)
23. Also, in the case of S.P. Chengalvaraya Naidu (dead) by L.Rs. vs. Jagannath (dead) by L.Rs. and others AIR 1994 SC 853, the Apex Court has declined to exercise the discretion in favour of the party who had not approached the Court with clean hands. The Court has held as under:- “7. The High Court, in our view, fell into patent error. The short question before the High Court was whether in the facts and circumstances of this case, Jagannath obtained the preliminary decree by playing fraud on the court. The High Court, however, went haywire and made observations which are wholly perverse. We do not agree with the High Court that "there is no legal duty cast upon the plaintiff to come to court with a true case and prove it by true evidence". The principle of "finality of litigation" cannot be pressed to the extent of such an absurdity that it becomes an engine of fraud in the hands of dishonest litigants. The courts of law are meant for imparting justice between the parties. One who comes to the court, must come with clean-hands. We are constrained to say that more often than not, process of the court is being abused. Propertygrabbers, tax- evaders, bank-loan-dodgers and other unscrupulous persons from all walks of life find the court - process a convenient lever to retain the illegal-gains indefinitely. We have no hesitation to say that a person, who's case is based on falsehood, has no right to approach the court. He can be summarily thrown out at any stage of the litigation. (emphasis supplied) CS(OS) No.2377/2015 Page 15
24. As discussed above, it is apparent that the plaintiff has not come before this Court with clean hands and has suppressed the material facts of the nature which goes to the very root of the matter. The plaintiffs have also succeeded in obtaining an ex-parte interim injunction from this Court by suppressing the material facts. The plaintiffs therefore are not entitled to the equitable relief sought by them. The case laws relied upon by the plaintiffs are of no help to them. This Court is of opinion that the plaintiffs are guilty of concealing material facts, filing false affidavit and for misleading the Court, which is nothing less than the contempt of this Court. The plaintiffs are not entitled to the relief they have sought. The ex-parte injunction granted vide order dated 11.08.2015 stands vacated. The application of the plaintiffs under Order 39, Rules 1 and 2 of the CPC stands dismissed. The application of the defendant under Order 39, Rule 4 of the CPC is allowed. CS(OS) 2377/2015, I.A. 24102/2015 ( O 39 R 2A), CRL.M.A. 15067/2015 (U/s. 340 Cr.P.C) CRL. M.A. 16950/2015 ( U/s 340 Cr.P.C) Let the matter be put up before the Roster Bench for 01.09.2017.
DEEPA SHARMA (JUDGE) AUGUST 23, 2017