Mallcom (India) Limited v. Rakesh Kumar

* IN THE HIGH COURT OF DELHI AT NEW DELHI

%^thDate of decision: 19 March, 2019.

+ CS(COMM) 480/2016, IA No.5571/2016 (u/O XXXIX R-1&2 CPC), IA No.12236/2017 (of D-4&5 u/O XXXIX R-4 CPC r/w S-

151 CPC), IA No.12890/2018 (of D-4&5 u/O XI R-10 CPC) & IA No.12370/2018 (u/S 151 CPC).

MALLCOM (INDIA) LIMITED & ANR ..... Plaintiffs

Through: Mr. Saurabh Banerjee, Mr. Debjyoti Sarkar, Mr. Afzal B. Khan & Mr. Ashutosh, Advs.

Versus

RAKESH KUMAR & ORS ..... Defendants

Through: Mr. Sanjeev Singh, Mr. D.K. Yadav & Ms. Kamla, Advs.

CORAM:

HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

1. The two plaintiffs i.e. Mallcom (India) Ltd. and Mallcom Safety Pvt. Ltd., being the proprietors of the registered trade mark (Label)", in respect of safety equipment, more particularly safety shoes, have instituted this suit to restrain the defendants no.1 and 2 i.e. Rakesh Kumar and Manoj Kumar from carrying on business in the name and style of defendant no.3 M.K. Sales Corporation and the defendants no.4 and 5 viz. Adeeba International and Alina Exim, from infringing the said trade mark of the plaintiffs and passing off their goods under the mark and for ancillary reliefs.

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2. The suit came up first before this Court on 5^thMay, 2016 when, while issuing summons thereof, vide ex parte ad-interim order, the defendants were restrained from manufacturing, selling or otherwise dealing in goods under the trade mark or any other mark similar or deceptively similar to the plaintiffs" mark ,and commissions

were also issued for seizure of the infringing goods. The defendants no.4 and 5 filed an application under Order XXXIX Rule 4 of the CPC. Though the same counsel appears for all the defendants, separate written statements have been filed by defendants no.1 to 3 on the one hand and the defendants no.4 and 5 on the other hand and to which replications have been filed by the plaintiffs. The defendants no.4 and 5 filed IA No.11941/2017 for amendment of their written statement and which application was dismissed vide order dated 5^thOctober, 2018.

3. The counsel for the plaintiffs, on 17^thJanuary, 2019 contended that though the suit was ripe for framing of issues but the plaintiffs were seeking summary judgment. On enquiry, whether any application under Order XIIIA of the CPC as applicable to commercial suits, had been filed, the answer was in the negative. However, the counsel for the plaintiffs on 17^thJanuary, 2019 referred to the amendment vide Notification dated 16^thOctober, 2018 with

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effect from 1^stNovember, 2018 to the Delhi High Court (Original Side) Rules, 2018, particularly to the new Chapter XA inserted therein and Rule 1 titled "Summary Judgment" whereof provides "At the time of Case Management Hearing, a Court, may of its own, decide a claim pertaining to any dispute, by a summary judgment, without recording oral evidence" and contended that by the said amendment to the Rules, the need for filing an application for summary judgment under Order XIIIA of the CPC had disappeared. It was however enquired from the counsel for the plaintiffs, whether Order XIIIA of the CPC, providing for an application to be made for a summary judgment, had been done away with. Upon the counsel for the plaintiffs replying in the negative, it was further enquired that, since there was obviously an inconsistency in Order XIIIA Rule 4 of the CPC prescribing the procedure for applying for summary judgment and Chapter XA Rule 1 of the Delhi High Court (Original Side) Rules, which of the two will prevail. The counsel for the plaintiffs contended that there is no inconsistency. Granting liberty to the counsels to address on the said aspect, the hearing was adjourned to 14^thFebruary, 2019.

4. The application of the plaintiffs for interim relief and the application of the defendants no.4 and 5 under Order XXXIX Rule 4 of the CPC were

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also for consideration on 17^thJanuary, 2019. However, the counsel for the defendants contended that the defendants had preferred a Special Leave Petition (SLP) against the order 5^thOctober, 2018 of dismissal of the application of the defendants for amendment of the written statement but which SLP had not been listed till then and sought adjournment. Adjournment was denied and after hearing the counsels, the ex parte ad- interim order was made absolute till the decision of the suit.

5. The counsel for the plaintiffs as well as the counsel for the defendants were heard on 14^thFebruary, 2019, on the entitlement of the plaintiffs to seek summary judgment, without filing an application therefor, as well as on merits i.e. on the entitlement of the plaintiffs to summary judgment, and orders were reserved.

6. The defendants, till date have not informed the outcome of the SLP claimed on 17^thJanuary, 2019 to have been preferred against the order dated 5^thOctober, 2018 of dismissal of the application for amendment of the written statement.

7. The plaintiffs instituted the suit, pleading that (i) the plaintiffs are market leaders in all kinds of safety equipment gears catering to the needs of a variety of clientele; (ii) in the field of industrial safety shoes, the plaintiffs

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have an annual production capacity of more than 12,00,000 pairs a year; (iii) the plaintiffs, around the year 1994 entered into a joint venture with a French company i.e. Pro-Inter Group, later renamed as Delta Plus Group in the year 1999, for exporting its leather gloves and other industrial products to the European market; (iv) during the subsistence of this joint venture, the plaintiff no.1 conceptualized the brand trade mark in or about the year 2004-05 and began using it intermittently in respect of safety equipment, more particularly safety shoes; (v) this mark was adopted as the primary brand / mark by the plaintiffs during the year 2010, before parting ways with Delta Plus Group; (vi) the plaintiffs are exporting their goods under the said trade mark to various countries; (vii) the products of the plaintiffs including the industrial safety shoes are identified, packaged and sold under the said brand and the safety shoes of the plaintiffs are identified, bought and sold as shoes; (viii) the products of the plaintiffs under the mark have come to be certified under both, Indian Certification (BIS) as well as European Certification (ISO); (ix) the sales of the plaintiffs in respect of trade mark have galloped from Rs.11.6 crores in 2009-10 to Rs.31 crores in the year 2013-14 and the plaintiffs have correspondingly also increased their outflow on advertising the said mark;

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(x) the trade mark „CIGER" (LABEL) has been duly registered in Class 9 with effect from 30^thSeptember, 2010; (xi) the trade mark is written in a stylized manner; (xii) various other applications of the plaintiffs for registration of and in Classes 9 & 25 are pending consideration;

(xiii) the trade mark is a distinctive and artistic stylization of the word "TIGER" and therein, "depiction of the (a) letter „T" is in a „cursive-reverse J"; (b) letter „I" is by a „bold vertical" next to the „reverse-J";

(c) letter „G" is as a „C" with a „small horizontal bar"; (d) letter „E" is as broken „E" sandwiched between „G" and „R"; (e) letter „R" is as a 'half-R"

with vertical bar of the letter „R" being missing; and, (f) presence of a „continuum" cutting across the letters „G", „E" and „R" giving an impression that the last three letters are fused"; (xiv) the visual features, on account of style, constitute an "artistic work" within the meaning of Section 2(c) of the Copyright Act, 1957 and the plaintiff no.1 has also obtained a copyright registration for the artistic work in the mark (Label); (xv) the products of the plaintiffs are sold in a distinct packaging involving an artistic get-up and unique shading/ combination of

colours bearing the names of the plaintiffs as well as prominently employing

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the mark written in a stylized manner; (xvi) the soles of the shoes of the plaintiffs are exclusive to the plaintiffs, being an original design registered under the Designs Act, 2000; (xvii) the defendants are manufacturing cheap quality safety shoes employing the plaintiffs trade mark (Label) packed in an identical packaging like in which the plaintiffs own goods are sold; (xviii) the defendants not only market their products using the plaintiffs trade mark with insignificant variations and packaged in the very same packaging employed by the plaintiffs but also copied the original design of the sole of the shoes; (xix) these acts of the defendants amount to counterfeiting the product of the plaintiffs; (xx) the defendants are also posing themselves as authorized dealers of the plaintiffs;

(xxi) the mala fides of the defendants are demonstrated by a comparison of the products of the plaintiffs and of the defendants as under:

Plaintiff"s Product Defendants" Product

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Plaintiff"s Product Defendants" Product

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Plaintiff"s Product Defendants" Product

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; and, (xxii) the defendants also do not provide their own name, manufacturing address and other details as required under the Legal Metrology (Packaging Commodities) Rules, 2011. Hence, the suit.

8. The defendants no.1 to 3, in their written statement have pleaded that

(a) the trade mark / label of the defendants is neither identical nor deceptively similar to the mark of the plaintiffs; (b) the defendant no.3 is the sole proprietary of Ms. Niti Devi and not of the defendants no.1 and 2 and is acting as the dealer and distributor of defendants no.4 and 5 for their goods under the trade mark ; (c) the defendants no.1 and 2 are employees of defendant no.3; (d) the defendant no.4 is the lawful owner and proprietor of the trade mark / label and adopted the said mark in the year 2015 and has since then been continuously using the same; (e) the mark is distinctive of the goods of the defendants and has tremendous goodwill; (f) the defendant no.4 has been using the mark as a word mark and also as a label/device in a distinctive get-up, make up, colour, colour combination, design and artistic manner; and, (g) the defendants no.1 and 3 rely on the written statement of defendants no.4 and 5.

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9. The defendants no.4 and 5, in their written statement have pleaded that; (i) no action for infringement is maintainable against the defendants no.4 and 5 as the trade mark is not registered in the name of the plaintiffs and the defendant no.4 is the proprietor of the trade mark ; (ii) the sales and advertising figures pleaded by the plaintiffs are not shown to be exclusively of the mark ; (iii) the plaintiffs have not filed any documents to show adoption of the mark in the year 2004-05 or of use of the mark " ; (iv) due to non-user of the mark " , the plaintiffs have no right thereto; (v) adoption of the mark by the defendants is honest and bona fide; (vi) the defendant no.4 has filed an application for registration with the Registrar of Trade Marks; (vii) the defendant no.4 commenced business in the goods under the mark in the year 2015 and has been using the same since then; (viii) the defendant no.4 uses the trade mark as a word mark and also holds copyright therein;

(ix) the goods of the defendants no.4 and 5 are of high quality; (x) the defendants no.4 and 5 have widely advertised the goods under the mark ; (xi) in reply to para no.24 of the plaint wherein the plaintiffs have made the comparison as aforesaid, though it is not denied that the

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photograph therein are of the products of the plaintiffs and the defendants but it is contended that the comparison is "false, misleading and holds no merit"; and, (xii) that the defendants are not representing themselves to be the dealers of the plaintiffs or giving the plaintiffs name and address on their goods. Else, contents of the plaint are generally denied.

10. The commissions issued seized shoe uppers, soles, packaging and shoes with the mark . No objections to the reports of the commission have been filed.

11. The plaintiffs, along with the plaint have inter alia filed copies of (a) bills with effect from 1^stApril, 2006 raised of brand shoes; (b) pending applications for registration of marks and

in various classes; (c) certificate dated 23^rdAugust, 2013 of registration dated 30^thSeptember, 2010 of the word mark "CIGER" on „proposed to be used" basis for safety shoes, safety garments and other industrial safety equipment; (d) copyright registration dated 28^thOctober, 2012 of the mark ; (e) design registration dated 23^rdMay, 2007; and (f) orders obtained in other suits instituted for safeguarding the mark.

12. Needless to state, the defendants in their affidavit of admission / denial of plaintiffs" documents have denied all the documents of the plaintiffs.

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13. The defendants, along with their written statement have inter alia filed copies of (i) invoices of sale of the shoes with effect from 28^th July, 2015; (ii) certificate of Registration of design dated 8^thDecember, 2014; (iii) application dated 13^thJune, 2015 for registration as a device mark in Class 9 with respect to safety shoes, safety belts, safety harness, safety gloves, safety glass and safety mirror.

14. I may at this stage mention that the amendment sought by the defendants to their written statement and which has been declined, was to plead that the plaintiff no.1, vide Assignment Deed dated 28^thOctober, 2010 had assigned the trade mark under application No.1488116 in favour of Delta Plus Corp, SA, France and the plaintiffs are thus not left with any rights in the trade mark . The plaintiffs, in their reply to the said application for amendment inter alia pleaded that the assignment by the plaintiffs of the trade mark / logo under a separate registration did not prevent the plaintiffs from protecting the mark as aforesaid, which remains registered in the name of the plaintiffs.

15. This Court dismissed the application for amendment vide order dated 5^thOctober, 2018 reasoning that the assignment by the plaintiffs of the mark

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subject matter of No.1488116 had nothing to do with the suit trade marks No.1988452 and 2030791. Upon the counsel for the defendants raising the said argument on 17^thJanuary, 2019 in opposition to the application of the plaintiffs for interim relief also, it was inter alia reasoned that the said plea is not open to the defendants and if at all available to anyone, is available to the assignee of the plaintiffs.

16. That brings me to the question as raised in the hearing on 17^thJanuary 2019, of maintainability of a verbal request for summary judgment without filing an application as provided under Order XIIIA Rule 4 of the CPC as applicable to commercial suits.

17. The counsel for the plaintiffs has urged that, (a) Section 18 of the Commercial Courts Act, 2015 empowers the High Court to, by notification, issue Practice Directions to supplement the provisions of Chapter II of the Commercial Courts Act or the CPC insofar as such provisions apply to the hearing of commercial disputes; (b) the Practice Directions issued in exercise of powers under the said Section 18 are contained in Annexure-E to the Delhi High Court (Original Side) Rules and direction no.9 therein empowers the Court to "pass orders as it may think fit for the speedy disposal of the suit or narrowing the controversy between the parties, including…..explore the

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possibility of deciding the dispute by a summary judgment, without a specific application for the said purpose, on the basis of pleadings, dispensing with the trial of the suit on the questions of law or facts on which the parties are not at issue."; (c) thereafter, vide Notification dated 16^th October, 2018, the Rules themselves were amended to incorporate the said Practice Directions in the Rules; (d) Rule 1 of Chapter XA incorporated in the Rules, empowers the Court to, "At the time of Case Management hearing………of its own, decide a claim pertaining to any dispute, by a summary judgment, without recording oral evidence"; (e) Chapter XVII of the Rules as amended with effect from 16^thOctober, 2018 also refers to the Practice Directions issued and contained in Annexure-E; (f) there is no conflict between Rule 4 of Order XIIIA supra and Rule 1 of Chapter XA; the two provisions are applicable in separate stages; while the Court may pass a summary judgment at the stage of Case Management Hearing, the procedure under Order XIIIA is available to an applicant only prior to the framing of the issues; (g) the two provisions are even otherwise required to be harmoniously construed so as to give effect to both, without rendering the other nugatory; and, (h) the Notification dated 16^thOctober, 2018 is aimed to compliment and supplement the provisions of the Commercial Courts Act

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and the Delhi High Court (Original Side) Rules. The counsel for the plaintiffs relies on Infrastructure Leasing & Financial Services Ltd. Vs. Commissioner of Value Added Tax MANU/DE/0902/2010 and passages from „Principles of Statutory Interpretation", Justice G.P. Singh, (12^th Edition) (2010) on the principle of „Harmonious Construction";

18. The counsel for the defendants, in opposition to the contention of the counsel for the plaintiffs, of the plaintiffs being entitled to summary judgment without an application contended that Order XIIIA Rule 4 of the CPC as applicable to commercial suits having provided for a detailed procedure for summary judgment, no summary judgment can be passed without following the said procedure. Attention was invited to Section 13(2) of the Commercial Courts Act to contend that the provisions thereof are notwithstanding anything contained in any other law for the time being in force.

19. I may add that I have since, in K.R. Impex Vs. Punj Lloyd Ltd. 2019 SCC OnLine Del 6667 dealt with the said aspect and held that summary judgment can be sought in a commercial suit under Chapter XA Rule 1 of the Delhi High Court (Original Side) Rules as amended with effect from 1^st November, 2018, without filing an application as provided under Order

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XIIIA Rule 4 of the CPC as applicable to commercial suits. It is thus not deemed appropriate to reiterate the said reasons here, adding to the length of this judgment.

20. No merit is found in the contention of the counsel for the defendants. Section 13(2) of the Commercial Courts Act is only qua appeal from an order or a decree of a Commercial Division or a Commercial Court and not with respect to the procedure to be followed in commercial suits.

21. I may add, that the Commercial Courts Act amended the Rules contained in Order I to Order LI of the First Schedule to the CPC and which Rules in any case the High Court, in exercise of power contained in Section 122 of the CPC is empowered to amend. The Commercial Courts Act, vide Section 16 thereof, amended the provisions of the CPC as applicable to commercial suits, in the manner prescribed in the Schedule thereto. The Schedule to the Commercial Courts Act, amends the First Schedule of the CPC and inserts new Order XIIIA supra. Though the First Schedule of the CPC has been so amended by a statute i.e. the Commercial Courts Act but the same would not take away from the fact that Order XIIIA of the CPC, as applicable to commercial suits, remains subject to modification / amendment by the High Court in exercise of powers under Section 122 of the CPC. This

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Court by its Rules, was thus competent to, notwithstanding Order XIIIA providing for application to be filed for summary judgment, provide that even without such an application, the Court is competent to pass summary judgment.

22. I may yet further add that Order XV of the CPC, as existed prior to the coming into force of the Commercial Courts Act, remains unaltered. Rule 1 thereof requires the Court, where it appears at the first hearing of the suit, that the parties are not at issue on any question of law or fact, to at once pronounce judgment. Issues, under Order XIV arise when a material proposition of fact or law is affirmed by one party and denied by other. Thus, dehors Order XIIIA supra also, the commercial suits also can be disposed of under Order XV Rule 1, if found to be applicable. I have dealt with this subject at length in Ashoka Estate Pvt. Ltd. Vs. Dewan Chand Builders Pvt. Ltd. 2009 (113) DRJ 193, Kawal Sachdeva Vs. Madhu Bala Rana 2013 SCC OnLine Del 1479, Bhupinder Jit Singh Vs. Sonu Kumar

2017 SCC OnLIne Del 11061, Vireet Investments Pvt. Ltd. Vs. Vikramjit Singh Puri 2017 SCC OnLine Del 11183, Abbott Healthcare Pvt. Ltd. Vs. Raj Kumar Prasad (2018) 249 DLT 220 and Bhavna Khanna Vs. Subir Tara Singh 2019 SCC OnLine Del 6978 and need to reiterate is not felt.

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23. That brings me to the question, whether the plaintiffs, in this state of pleadings and documents, are entitled to summary judgment.

24. The test for summary judgment, as prescribed in Rule 3 of Order XIIIA of the CPC as applicable to Commercial Courts Act is, that "the defendant has no real prospect of successfully defending the claim" and that

"there is no other compelling reason why the claim should not be disposed of before recording the oral evidence". Rule 1 of Chapter XA of the Delhi High Court (Original Side) Rules merely provides that "At the time of Case Management hearing, a Court, may of its own, decide a claim pertaining to any dispute, by a summary judgment, without recording oral evidence" and Rule 3 therein reiterates the language aforesaid of Rule 3 of Order XIIIA qua grounds for summary judgment.

25. Applying the test, whether the defendants in the present case have any real prospect of defending the claim of the plaintiffs, I find against the defendants. The counsel for the defendants, save for repeating the contents of the written statement, has not urged any compelling reason why the suit should not be disposed of before recording of oral evidence. My reasons for finding the plaintiffs entitled to summary judgment, insofar as the claim of

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the plaintiffs for permanent injunction restraining infringement of trade mark, passing off and delivery are concerned, are enumerated herein below:

A. There is no challenge to the registrations pleaded by the plaintiffs. It is not the case of the defendants that there is no registration in the records of the Registrar of Trade Marks as pleaded by the plaintiffs or that the Certificates of Registration filed by the plaintiffs are forged. The registration of the plaintiffs dated 30^thSeptember, 2010 is admittedly prior to that applied for by the defendants on 13^thJune, 2015 claiming use with effect from 2015.

B. It thus requires no trial that the plaintiffs are the senior user of the mark and the defendants are the junior user of the mark. C. Though the plaintiffs have pleaded use of the subject trade mark intermittently with effect from 2004 but the plaintiffs in the application dated 30^thSeptember, 2010 for registration and which has been granted, applied on „proposed to be used" basis. The defendants have denied use of the trade mark by the plaintiffs. The denial by the defendants of the invoices with effect from 1^stApril, 2006 filed by the plaintiffs is merely to put

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the plaintiffs to proof, and it is not the plea that the defendants have made enquiries from the persons on whom the said invoices are raised and that the said persons have denied transaction with the plaintiffs and that the plaintiffs have fabricated the invoices. The invoices are tax paid. It is not the case that no tax is learnt to be deposited. If merely on denial of documents, possibility of summary judgment were to be defeated, no summary judgment would be possible in any commercial suit, making otiose the provision for summary judgment. Even otherwise, the plaintiffs, merely on the ground of holding the registration, would be entitled to institute an action restraining infringement thereof. It has been held in Sun Pharmaceuticals Industries Ltd. Vs. Cipla Ltd. 2009 (39) PTC 347 (DB) and H&M Hennes & Mauritz AB Vs. HM Megabrands Pvt. Ltd. (2018) 251 DLT 651 that non-user by the plaintiff cannot be a defence to an action for infringement and the application for removal of the mark from the Register on account of non-user has to be filed before the Registrar of Trade Marks. Not only did the defendants not file any such application

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at any time prior to the institution of this suit by the plaintiffs but the defendants, even after institution of this suit and knowledge of the claim of the plaintiffs, have in the last two and a half years not applied to the Registrar of Trade Marks for removal of the mark of the plaintiffs on account of non-user thereof by the plaintiffs. The only inference is that the plea of non-use is dilatory.

D. The defendants, when applied on 13^thJune, 2015 for registration of their mark , as a prudent businessman, acting through professionals are deemed to have conducted a search of the Register for other similar marks if any. The defendants, even if till then were not aware of the mark of the plaintiffs, at least then are deemed to have come to know of the registration in favour of the plaintiffs and if the plaintiffs had not been using the mark of which registration had been obtained, the defendants, before applying for registration of a similar mark in their own favour, would have definitely initiated proceedings for removal from the Register of the mark of the plaintiffs.

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E. The plaintiffs have placed before this Court, copies of web pages of their website and extracts from the product catalogues issued by the plaintiffs, both showing products of the plaintiffs with the subject mark. The plaintiffs have also filed copies of certifications and test results issued by BIS and ISO, of products with the subject mark. The plaintiffs have also placed on record India Design Mark Award received by the plaintiffs with respect to the shoe with the subject mark, the advertisements and promotional material related to the plaintiffs products with the subject marks and invoices of advertisements issued of products with the subject mark. All these show use of the mark by the plaintiffs. The defendants, in their written statements have not pleaded that the web pages filed, are not as per the websites. It is inconceivable that the plaintiffs, if had not been using the mark, would have got an award for design of the product under the said mark and / or would have been issued BIS and ISO certification with respect to the subject mark. It has been held in N.R. Dongre Vs. Whirlpool Corporation 1996

(5) SCC 714, Revlon Inc. Vs. Sarita Manufacturing Co. AIR

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1998 Del 38, N.R. Dongre Vs. Whirlpool Corporation AIR 1995 Del 300, Indian Shaving Products Ltd. Vs. Gift Pack

1998 (18) PTC 698 (Del) and J.N. Nichols (Vimto) Ltd. Vs. Rose & Thistle AIR 1994 Cal 43 (DB) that issuance of advertisements of the mark itself qualifies as use of the mark. F. The defendants have not pleaded, if not under the subject mark, under what mark are the plaintiffs marketing their shoes. G. Thus, the plea of the defendants, of the plaintiffs not using the subject mark, is found to be without any substance and not a material plea on which even an issue would be framed. H. The defendants, being in the same trade as the plaintiffs, are deemed to be aware of the admitted prior use by the plaintiffs of the mark „TIGER" and for this reason, the adoption cannot be said to be honest or bona fide. Reference in this regard can be made to Info Edge (India) Pvt. Ltd. Vs. Shailesh Gupta (2002)

98 DLT 499 and Dr. Reddy's Laboratories Ltd. Vs. Reddy Pharmaceuticals Ltd. (2004) 113 DLT 363 (FAO)(OS) 166/2004 preferred whereagainst was dismissed vide judgment titled Reddy Pharmaceuticals Ltd. Vs. Dr. Reddy's

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Laboratories Ltd. 2007 (99) DRJ 331 (DB) (SLP (C) No.1998/2008 preferred whereagainst was dismissed vide order dated 4^thFebruary, 2008)).

I. That leaves only the question of similarity / dissimilarity. On that aspect also, in my view no trial is required. It has been held in Mahendra & Mahendra Paper Mills Ltd. Vs. Mahindra & Mahindra Ltd. (2002) 2 SCC 147 followed in Larsen & Tuobro Ltd. Vs. Lachmi Narain Traders (2008) 149 DLT 46 (DB) that in suits relating to infringement and passing off, examination of self-serving witnesses by the parties is of no avail and it is ultimately the Court which has to take a call on similarity / deceptive similarity, keeping in mind the prospective of a consumer with an ordinary intellect and a non- discerning eye. Reference can also be made to Staar Surgical Company Vs. Polymer Technologies International 2016 SCC OnLine Del 4813, Kanungo Media (P) Ltd. Vs. RGV Film Factory 2017 SCC OnLine Del 8768, Jaideep Mohan Vs. Hub International Industries (2018) 249 DLT 572, The Financial Times Ltd. Vs. The Times Publishing House Ltd. (2016) 234

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DLT 305 and judgment dated 22^ndNovember, 2018 in CS(COMM) No.1668/2016 titled „Biofarma Vs. Bal Pharma Ltd.'.

J. Applying the said test, a bare perusal of the comparison would show, the mark adopted by the defendants is indeed similar / deceptively similar to the senior mark of the plaintiffs. K. I have in order dated 17^thJanuary, 2019 in this suit as well as in

Allied Blenders & Distillers Pvt. Ltd. Vs. Shree Nath Heritage Liquor Pvt. Ltd. 2014 SCC OnLine Del 3412, Pratibha M. Singh Vs. Singh & Associates 2014 SCC OnLine Del 1982 and

The Gillette Company LLC Vs. Tigaksha Metallics Pvt. Ltd.

(2018) 251 DLT 530 held that the human mind and human eye has a tendency to identify words from the first and the last alphabets thereof, even if arrangement of one or two alphabets in between is misplaced. Here, the defendants have merely replaced the alphabet „G" in the trade mark of the plaintiffs with alphabet „C" and which change is unlikely to be noticed by an unwary and unsuspecting consumer who is likely to buy the shoes and other products of the defendants under the mark

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, believing the same to be of the plaintiffs under the mark . The style adopted by the defendants for writing the alphabets in its trade mark is also found to be identical to that of the plaintiffs. The mark of the plaintiffs, though starting with the alphabet „T" does not write the alphabet „T" in capital letters as the other alphabets of the mark are written and also removes the „ascender" from the normal style of writing the alphabet „t" in small case, making the alphabet „t"

look somewhat like the alphabet „C" but without the curve of the alphabet „C". The defendants, in their mark have also adopted the exact same style of writing the alphabet „t" as well as other alphabets, as in the mark of the plaintiffs. The alphabet „C" and the alphabet „G", when written in capitals, look alike and the „chin" of the alphabet „G" in capitals which is missing in the mark of the defendants, is unlikely to be noticed while seeing the overall impact of the two marks. So much so, that the Registrar of Trade Marks also, while issuing Registration Certificate No.2030791 to the plaintiffs, has described the word mark as "CIGER". However, it is not the case of the

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defendants also that the mark of the plaintiffs is "CIGER"; the defendants also have understood the mark of the plaintiffs as only. It is not the case of the defendants that though the plaintiffs were earlier using the mark "CIGER"

after commencement of use of the mark by the defendants, have changed their mark to . The attempt of the defendants at deception is writ large and is res ipsa loquitur.

L. Even if the plaintiffs are not entitled to injunction on the ground of infringement, would still be entitled to injunction on the ground of passing off as well as infringement of copyright. M. The defendants are also found affixing their mark on their shoes at exactly the same position as the mark of the plaintiffs on their own shoes.

N. The defendants, though have pleaded having adopted the mark honestly and bona fide but have not explained the same. While is a word of English language, there is no such word as . The defendants have not

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explained as to why the defendants would invent a word for their shoes. No issue thus arises on the plea of the defendants, of honest and bona fide adoption of the mark by the defendants.

O. Even otherwise, once the two marks are found to be similar / deceptively similar, howsoever honest the adoption by the defendants may be of the mark, will have no bearing on the grant of relief of injunction and may have some bearing only in grant of the relief of recovery of damages etc. Reference if any required in this regard can be made to Laxmikant V. Patel Vs. Chetanbhai Shah (2002) 3 SCC 65, The Timken Company Vs. Timken Services Pvt. Ltd. (2013) 200 DLT 453, Jolen Inc. Vs. Doctor & Company 2002 SCC OnLine Del 518, Insecticides (India) Ltd. Vs. Parijat Industries (India) Pvt. Ltd. (2018) 252 DLT 129 and H&M Hennes & Mauritz AB supra.

26. The counsel for the defendants, in his arguments has not raised any other plea which requires trial, save for generally stating that the written statement raises issues which require trial.

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27. The plaintiffs are thus found entitled to summary judgment for the reliefs of permanent injunction restraining infringement of trade mark, copyright and passing off.

28. The plaintiffs, in the suit have also claimed relief of permanent injunction restraining infringement of design. However, the counsel for the plaintiffs, while seeking summary judgment, has not argued on the said aspect and not pressed for the said relief. Nevertheless, it is deemed appropriate to, while disposing of this suit, grant liberty to the plaintiffs to sue separately for infringement of design, if need therefor arises.

29. That leaves the relief claimed of rendition of accounts and recovery of damages. Again, the counsel for the plaintiffs has not contended that issues be framed on the said aspect and the suit for the said relief be put to trial. Without trial and / or a decree for rendition of accounts, the plaintiffs cannot be awarded the relief of damages. However, it being the own case of the defendants that the defendants are using the mark since middle of the year 2015, the said use till the restraint order from this Court will be taken into consideration while awarding costs of the suit.

30. A decree is thus passed, in favour of the plaintiffs and jointly and severally against the defendants, of (i) permanent injunction in terms of

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prayer paragraph no.35(b),(c) and (e) of the plaint dated 29^thApril, 2016; (ii) of delivery of all the infringing products, by directing the defendants, to whom the goods seized on commission were entrusted in superdari, to deliver the infringing goods to the representatives of the plaintiffs within one month of today; and, (iii) of recovery of costs of the suit with professional fee assessed at Rs.6 lacs.

Decree sheet be drawn up.

RAJIV SAHAI ENDLAW, J.

MARCH 19, 2019

„gsr"..

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