$~40.
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision : 5th February, 2014
+ CS(OS) 335/2014
M/S DRS LOGISTICS (P) LTD. & ANR. ..... Plaintiffs
Through : Mr.C.M. Lall, Adv.
versus
PRS AGARWAL PACKEERS &
MOVERS PVT. LTD. & ORS. ..... Defendants
Through : Mr.L.B.Rai, Adv.
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J. (Oral)
1. Plaintiffs have filed the present suit for injunction, damages for infringement of trade marks, passing off and unfair competition against the defendants for misuse of the plaintiff‟s trade mark Agarwal Packers and Movers, Agarwal Packers, DRS Packers and Movers, DRS Logistics and DRS Group word/logo by the defendants.
2. Issue summons in the suit to the defendants. Mr.L.B. Rai, Advocate, accepts notice on behalf of the defendants. It may be noticed that on the last date of hearing, Mr.Sudheer Sharma, Advocate, had appeared on behalf of the defendants in this matter, and at his request the matter was adjourned for today to enable him to seek appropriate instructions in the matter. Mr.L.B. Rai, learned counsel for the defendants, submits that although he has been able to persuade defendants to make certain changes, formal instructions are yet to be received.
3. Let written statement be filed by defendants within thirty days from CS(OS) 335/2014 Page 1 of 7 today. Let replication, if any, be filed by plaintiffs within thirty days thereafter. Parties will file documents, which are in their possession and power within the same period.
4. List the matter before Joint Registrar for admission/denial of documents on 17.4.2014.
5. List the matter before Court for framing of issues on 26.5.2014, when parties shall bring suggested issues to Court. Meanwhile, it will be open for the parties, as suggested by learned counsel for the defendant, to explore the possibility of an amicable settlement during the pendency of the suit. It is made clear that this order will not come in the way of the parties for such an endeavour.
I.A. 3345/2014 (Order XXXIX Rules 1 and 2 CPC)
1. Notice. Learned counsel for the defendants accepts notice.
2. As per the plaint, plaintiffs are leading packaging, moving and logistics service provider engaged inter alia in the business of providing public carriers and carriers for goods, passengers, merchandise, commodities and other products including transportation of goods and luggage of all kinds and description, in any part of India and elsewhere by any mode of transport. The plaintiffs claim to have commenced his business under the name and style of M/s Agarwal Packers and Movers in the year 1988. The trade mark „Agarwal Packers and Movers‟ and DRS Group (Logo) stand registered in the name of plaintiff no.1 in Class 39 besides various other registered trade marks of the plaintiff. Details of registrations of the plaintiffs‟ trade mark have been extracted in para 5 of CS(OS) 335/2014 Page 2 of 7 the plaint. The registrations are stated to be valid and subsisting. In para 6 of the plaint, year-wise details with regard to annual figures of the turnover of the plaintiffs have also been extracted in the plaint. In para 7 of the plaint, the plaintiffs have also extracted year-wise details with regard to the expenses incurred by them on advertisement.
3. Learned counsel for the plaintiffs submits that the plaintiffs have been very vigilant in protecting their intellectual property rights and the plaintiffs have filed various suits in this Court, some of which have been disposed of and others are subjudice. Counsel further submits that orders of injunction have been granted, which continue till date. In support of the above submission, counsel for the plaintiffs has drawn the attention of the Court to para 14 of the plaint wherein details of as many as seven suits have been extracted.
4. Learned counsel for the plaintiffs submits that in the month of April, 2013, the plaintiffs learnt about the misuse of their well known trade mark Agarwal Packers and Movers as well as their corporate name and trade mark DRS by defendants by using the name PRS Agarwal Packers and Movers Private Limited. Counsel further submits that the defendants are using the domain name www.aggarwalmoverspackers.com, www.agarwalpackersbangalore.net and www.agarwalpackersmovers.net which are virtually identical/deceptively/confusingly similar to the plaintiffs‟ trade mark „Agarwal Packers and Movers‟ and their domain name www.agarwalpackers.com. Counsel further contends that the domain name/website www.aggarwalmoverspackers.com by the CS(OS) 335/2014 Page 3 of 7 defendants not only incorporates plaintiffs‟ registered trade mark Agarwal Packers and Movers as a part of domain name but on the said website the defendants have prominently displayed Agarwal Packers and Movers, which is the registered trade mark of the plaintiffs. Counsel has drawn the attention of the Court to the scanned pictures of the websites of the plaintiffs and the defendants, which have been extracted in the plaint, to show the similarity between the websites of both the parties. It is contended that use of the words PRS Agarwal Packers and Movers, SRS Agarwal Packers and Movers and other trade marks of the plaintiffs by the defendants would deceive the public at large.
5. Learned counsel for the defendants submits that trade marks registration, subject matter of the present suit, in favour of the plaintiffs is in violation of the provisions of law and, thus, the plaintiff has no right to rely on the same. Counsel further submits that the present suit is, in fact, liable to be stayed under the provisions of Section 124 of the Trade Marks Act, 1999 (hereinafter referred to as the „1999 Act‟). Counsel next submits that Section 9 of The Trade and Merchandise Marks Act, 1958 (hereinafter reads as „1958 Act‟), prohibits registration of any one or more words, which include a geographical name or a surname or a personal name or any common abbreviation thereof or the name of sect, caste or Tribe in India. Counsel contends that the matters, pertaining to the same question by a third party, are pending before the Intellectual Property Appellate Board. Counsel for the defendants relies on a decision rendered by another Single Judge of this Court in the case of Rajinder Kumar CS(OS) 335/2014 Page 4 of 7 Aggarwal v. Union of India and Another, reported at 2007 (35) PTC 616, wherein similar view was expressed by another Single Judge of this Court.
6. Mr.Lall, learned counsel for the plaintiffs, in response to the objections raised by learned counsel for the defendants, submits that similar objections raised before the Intellectual Property Appellate Board, stands rejected although only one case remains pending, however, according to Mr.Rai, counsel for the defendants, two cases are pending.
7. Mr.Lall, learned counsel for the plaintiffs, submits that similar question stands decided in favour of the plaintiffs by the Intellectual Property Appellate Board and further Section 9 of 1958 Act stands deleted and Section 159(2) of the 1999 Act will apply, and, thus, the registrations under the old Act would continue to have force as if they were granted under the new Act. Reliance is placed by Mr.Lall on para 11 of the decision rendered in the case of Rajinder Kumar Aggarwal (supra) to canvass his argument that since the trade mark of the plaintiffs has acquired the status of a well-known mark and at least one judgment of this Court recognises this fact, thus, the argument of the defendants is without any force. Counsel further submits that sale figures, the figures with regard to the amount spent on advertisements and marketing would support this plea. Para 11 of the judgment reads as under:
"11. This being the position AGGARWAL by itself cannot be registered under Section 9(1). However, it can be registered by invoking the provision of Section 9(2) which clearly and specifically provides that a name, signature or word, other than such as fall within the description in clauses (a) to (d) of sub-section (1) shall not be registrable in Part A of the register CS(OS) 335/2014 Page 5 of 7 except upon evidence of its distinctiveness. This makes it clear that a word which happens to be a surname or the name of sect/caste in India, cannot be registered under Section 9(1) but can be registered as a trademark upon evidence of its distinctiveness. Thus, the word AGGARWAL is certainly registrable in part A of the Register but there must be clear evidence of its distinctiveness."
8. It is further submitted by learned counsel for the plaintiffs that the defendants cannot take refuge under Section 9 of the Trade Marks Act, 1958, as they themselves have applied for registration of the trade mark Agarwal Packers and Movers. Mr.Rai, however, submits that Section 9 has not found its way in the new Act and thus, the defendants are well within their rights to apply for the said trade mark.
9. I have heard learned counsel for the parties, considered their rival submissions and also perused the plaint, application and the documents filed on record. Having regard to facts of this case and taking into consideration that plaintiffs have been vigilant in protecting their intellectual property rights and they have also filed various suits in this Court, wherein interim orders have been granted by this Court; para 11 of the judgments rendered in the case of Rajinder Kumar Aggarwal (supra), sought to be relied upon by learned counsel for the plaintiffs, wherein it is recognised that a mark by the name of the caste or surname can be registered in case there is evidence of distinctiveness even under the old Act; and also taking into consideration the sales figures, the amount spent on advertisement and other material, which has been placed on record, which gives evidence of distinctiveness along with the fact that another Single Judge of this Court has granted an ex parte decree CS(OS) 335/2014 Page 6 of 7 by reaching a conclusion that the mark of the plaintiffs is a well known mark, this Court is satisfied that in case injunction is not granted in favour of the plaintiffs, the plaintiffs would suffer an irreparable loss. Accordingly, till the next date of hearing, defendants, their Directors, partners, officers, employees, agents, distributors, suppliers, affiliates, subsidiaries, franchise, representatives, group companies, are restrained from using the trade mark Agarwal, PRS Agarwal Packers and Movers, corporate name or part of a corporate name, trade mark and domain names so as to infringe the registered trade marks of the plaintiffs.
10. List on 26.5.2014 for hearing of I.A.2245/2014.
G.S.SISTANI, J FEBRUARY 05, 2014 msr CS(OS) 335/2014 Page 7 of 7