M/S. Gandhi Scientific Company vs Mr. Gulshan Kumar
2009 Latest Caselaw 1366 Del

*          HIGH COURT OF DELHI : NEW DELHI

+     IA Nos.7344/2007 & IA No.9687/2007 in Suit no.1192/1997

%                      Judgment reserved on :     2nd April, 2009

                       Judgment pronounced on :     13th April, 2009

M/s. Gandhi Scientific Company                       ...Plaintiff
                      Through : Mr. S.K. Bansal, Adv.

                       Versus
Mr. Gulshan Kumar                                    .... Defendant
                       Through : Mr. Mohan Vidhani, Adv. with
                                 Mr. Rahul Vidhani and Md.
                                 Sazid Rayeen, Advs.

And

           IA No.9373/2008 in C.S.[OS] No.382/2008

Mr. Gulshan Kumar                                    .... Plaintiff
                       Through : Mr. Mohan Vidhani, Adv. with
                                 Mr. Rahul Vidhani and Md.
                                 Sazid Rayeen, Advs.

                       Versus

M/s. Gandhi Scientific Company                       ...Defendant
                      Through : Mr. S.K. Bansal, Adv.

Coram:

HON'BLE MR. JUSTICE MANMOHAN SINGH

1. Whether the Reporters of local papers may
   be allowed to see the judgment?                                  Yes

2. To be referred to Reporter or not?                               Yes

3. Whether the judgment should be reported                          Yes
   in the Digest?

MANMOHAN SINGH, J.

1. By this common order, I shall dispose of the aforesaid

pending applications in the two cross-suits filed by the parties against

each other. C.S.[OS] No.1192/1997 has been filed by M/s.Gandhi

Scientific Company [hereinafter referred to as „Plaintiff‟] against Shri

Gulshan Kumar [hereinafter referred to as „Defendant‟] for permanent

injunction, infringement of copyright, passing off and damages.

2. I need not discuss most of the facts as both the parties have

admitted in their respective pleadings that the trademark and copyright

is identical with each other except that the parties are claiming prior user

of the trademark „DIAMOND‟ and copyright in question against each

other and seeking interim injunction against each other. To establish the

claim of prior user, various allegations and counter-allegations are made

on the basis of forged and fabricated documents.

3. It is not disputed between the parties that their applications

for registration of the trademarks are under litigation by filing of notice

of opposition in the Trade Marks registry, which are being proceeded

further as per rules.

4. The main thrust of the Plaintiff in the present suit i.e. CS[OS]

no.1192/2007 is that in the year 1995, Plaintiff started manufacturing

and marketing pumps and pump spare parts specifically including

mechanical seals used in pumps, automobiles and industry.

5. It is further contended by Gandhi/Plaintiff in the plaint that

on 23.04.1995 Gandhi/Plaintiff honestly and bonafidely adopted the

trademark „DIAMOND‟ label in relation to the said goods. Plaintiff‟s

two applications bearing nos.836281 filed on 12.01.1998 and 1365378

filed on 20.06.2005 are pending for registration. The first application

was filed by the plaintiff in relation to the part of the art work claimed

by the plaintiff. In para-9 of the plaint, the Plaintiff has given its annual

turnover from the year 1997-98 till 2006-07.

6. In view of the facts stated in the plaint, the plaintiff has

claimed the ownership of the trademark as well as copyright in question.

It is contended by the Plaintiff that Plaintiff became aware of the

impugned adoption and use of the trademark by the Defendant on

04.01.2007, when the Plaintiff received the notice of opposition in Form

TM-5 against its application bearing no.1365378. On the receipt of the

said notice of opposition, it appears to the Plaintiff that the Defendant

has claimed the user of the said mark since July, 1990. On enquiry, it

was revealed to the Plaintiff that the Defendant has only adopted the

trademark in question in December 2006 and started commercially using

the same. It is further stated that in April‟2007 the Plaintiff also noticed

the Defendant‟s application appeared in the Trade Mark Journal for

registration of the identical label mark which is duly opposed by the

plaintiff.

7. Along with the suit, the plaintiff filed the interim application

being IA no.7344/2007, wherein an ex parte ad interim injunction order

was issued against the Defendant restraining him from using the

trademark/label „DIAMOND‟.

8. Thereafter the Defendant filed an application under Order 39

Rule 4 CPC being IA no.9687/2007 for vacation of the ex parte order

dated 06.07.2007 on the ground of prior user of the trademark/label

„DIAMOND‟. Issues in this suit were framed on 19.02.2008 and the

matter was sent to the Joint Registrar for recording the evidence. In

another application being IA no.10145/2008, which was decided by this

court on 26.08.2008, it was ordered that the file of CS [OS]

no.1191/2007 titled „M/s.Gandhi Scientific Company Vs. Shri Anil Jain

& Anr.‟ be summoned for perusal of this court as the original

documents relied upon by the Plaintiff in the present case have been

filed in the said suit.

9. During the pendency of this suit, Defendant has filed another

suit under Section 27[2] read with Sections 134 and 135 of the Trade

Marks Act for passing off etc. against the Plaintiff before the District

Judge, Delhi on 07.09.2007. The said suit filed by the Defendant

bearing CS[OS] no.158/2007 has been transferred to this court and a

fresh suit number i.e. CS[OS] no.382/2008 has been assigned by the

Registry of this Court and the interim application has been given the

number as IA no.9373/2008.

10. In the said suit filed by the Defendant, the Defendant has

claimed the ownership, proprietorship and prior adoption of the

trademark/label „DIAMOND‟ since 12.07.1990.

11. The crux of the matter is that it is not in dispute between the

parties that the trademark, copyright, area of use and description of

goods are same and both the actions are of passing off actions. The only

question left in the matter for consideration is that who is the prior user

of the trademark/label in question. Both the parties were directed to file

the original documents. Since, both the matters are between the same

parties, some of the documents filed in two suits are also the same,

therefore, this Court has to examine the documents filed by the parties in

both the matters.

12. Counsel for the Defendant has raised some objections about

the documents filed by the Plaintiff beyond the time granted by the

Court. It is matter of record that the time for filing the original document

was further extended by order dated 26.8.2008 with the consent of the

Defendant. Therefore, the documents filed till that date can be

considered by the court. In the suit filed by the Plaintiff, i.e. C.S. [OS]

no.1192/2007, the evidence is already under progress where the cross-

examination of PW-1 is continuing and the matter is listed before the

Joint Registrar for further cross-examination on 22.07.2009 at 2:00 P.M.

13. The following are the pictorial representation of the

product/label used by the parties :-

       Plaintiff‟s Label                      Defendant ‟s Label
(M/s Gandhi Scientific Company)        (Mr. Gulshan Kumar M/s SJK
                                       Trading Company)

14. From the perusal of the product of the parties, it is clear that

the trademarks as well as the copyrights in question are almost identical

except the label used by the Defendant does not contain the name and

address on the packing. It appears from the record, as per the

documents filed by the Defendant, that the Defendant has never used his

trade name i.e. M/s. S J K Trading Company prior to 2007 [although

the Defendant is claiming to have used the trademark/label

„DIAMOND‟ from 10.07.1990]. No statement of sale figures, sales tax

returns, income tax returns and advertisement material or any other

cogent evidence are available on record to show that the Defendant has

used the trademark/label „DIAMOND‟ prior to the year 2007.

15. In order to establish the prior user, the Defendant has filed

the photocopies as well as the original Bills/ documents from the year

1990 onwards. It also appears from the bills/cash memos filed by the

Defendant prior to March‟2007 that it does not contain the sales tax

number and telephone number of concerned firm, if any, maintained by

the Defendant either individually or in his firm‟s name.

16. During the course of the arguments, the explanation has been

given by the learned counsel for the Defendant that the Defendant had a

very small work and he did not come within the range of income tax and

sales tax, therefore, it was not necessary for him to obtain the sales tax

number or to file the income tax returns as per law. The explanation

regarding the non-mentioning of the telephone number on the bills from

the year 1990 till March, 2007 is that it is not compulsory for any citizen

to maintain a telephone and the example of Film Actor, Amir Khan, was

given by the learned counsel for the Defendant that he does not have any

telephone number as of today. I do not find the arguments addressed by

the Learned Counsel for Defendant convincing and within the

parameters of legal submissions rather they are casual in nature, which

do not substantiate the case of the Defendant.

17. As regards the statement of sale figure is concerned, learned

counsel for the Defendant has assigned the reason that since the bills

have been filed on record showing the sale of the product by the

Defendant, therefore, the said documents are sufficient and it is not

necessary to give separate sale figures of the product of the defendant.

18. Learned counsel for the Defendant, in order to substantiate

the claim of the defendant, has referred to the few bills of the Printer i.e.

M/s. Efficient Printing Works, K-442, Mangol Puri, Delhi-110083, as

well as Printer of packaging material of the Defendant‟s product i.e.

M/s.Pioneer Packaging Industries, J-1245, Mahindra Park, Delhi-

110033. It has been argued that the said bills of the Printer as well as

Printer of the packaging material are from the year 1991, who are the

third parties and not related to the present case. They have given the

original bills for the job works done by them on behalf of the Defendant

and not only that the Defendant has also filed three affidavits from the

trade to establish his user claim from the year 1990. The aforesaid

documents are sufficient to prove earlier user claimed by the Defendant

from 10.07.1990.

19. I have also heard the learned counsel for the Plaintiff in this regard at length. He has raised various objections to the documents filed by the Defendant. This Court has gone through the documents filed by the Defendant very carefully and has come to the conclusion that most of the documents filed by the Defendant, particularly prior to the year 2007 are, prima facie, not genuine and are manipulated on the face of them and in fact, it is a clear case of res ipsa loquitur where the things speak for themselves.

20. One of the glaring example of manipulation are the documents relating to Bills in item no. 5 at page nos. 49 and 68 filed with the list of documents dated 5th September, 2007 in CS (OS) 382/ 2008. The said two bills filed by the Defendants are scanned herein below for the sake of convenience and comparison :

Bill No. 210 issued by Gulshan

Printer‟s Bill

21. It appears from the said two bills, i.e. one issued by the

Defendant under his firm‟s name, M/s. S J K Trading Company, and

another issued by the Printer, M/s. Efficient Printing Works in order to

prove the printing work of the defendant‟s products bearing the

trademark „DIAMOND‟, are not genuine and have been manufactured

and managed by the Defendant. The reasons for my abovesaid

observation can be enunciated as follows :-

a] Formatting of the said two bills appears to be similar. In both the bills there is a note at the bottom of the said bills to the effect that "Goods once sold not be taken back. All Disputed Subject to Delhi jurisdiction only. E.& O,E." The same language of the note has been mentioned in both the bills. It is pertinent to mention here that whatever grammatical mistakes appeared in the bill of the defendant, the same grammatical errors have been appearing in the bills of the Printer, M/s. Efficient Printing Works. The example of the word „Disputed‟ on both the bills is the instance that the bills have been printed from the same machine/ press. There would have been no occasion to write the word „disputed‟ instead of the word „dispute‟. The font size, lettering, arrangement and formatting of the two bills are virtually identical. The margin of the boxes and the details of the particular items are also the same. It is inconceivable that such an identical mistake continued to exist for 8 years in the bills raised by two different parties unless those are printed in the same press. Moreover, the Printer‟s bill also does not contain the sales tax number and telephone numbers. The other documents of similar nature are available and have been filed by the defendant. b] It is also pertinent to mention here the packager bill issued by M/s.Pioneer Packaging Industries also does not contain the sales tax number and the telephone number. It does not seem convincing that all the parties be it Defendant, his

printer and defendant, his packager do not have sales tax numbers and telephone numbers.

22. Further, the following are the few more examples whereby

this Court has come to above-mentioned conclusion that the documents

apparently are fabricated :-

a) Along with the list of documents dated 5 th September, 2007 in CS (OS) 382/ 2008 , the Defendant has filed the photocopies of the Bill no.002 dated 10.07.1990 issued to M/s.Surindra Electrical, Begum Pur, Delhi. The said bill is for Rs.3800/-. At the same time, the Defendant has also filed a carbon copy of the Bill no.003 for the same date and having the same total bill amount issued to the same party. The said two bills are also identical in all respect except the bill numbers are different which seems impractible.

23. The explanation to this given by the learned counsel for the

Defendant is that the Defendant has filed both the bills bearing Nos.002

and 003 as original documents before this Court. Learned counsel for

the Defendant has tried to demonstrate that two bills for the same date

can be issued to a party on the same date for the same amount who is

purchasing the goods from the defendant. The justification given by the

learned counsel for the Defendant cannot be accepted for the simple

reason that it is not question of issuing two bills to the same party.

Rather, the suspicion can be conveniently raised on the genuineness of

the bills as there is no plausible reason as to why any party will sell the

same quantity of items, itemised in the same manner of same amount on

the same date and seems to be a carbon copy of each other.

24. Lastly, the falsehood of the Defendant documents is evident

on the face of the record from the fact that when the application for

registration of trademark was filed on 15.03.2005, it was filed by

Mr.Gulshan Kumar and not in the name of the firm, M/s. S J K Trading

Company. If the firm was in existence from the year 1990, the

application ought to have been filed in the name of the firm and not in

the individual name or otherwise it could have been filed as "Mr.

Gulshan Kumar trading as M/s SJK Trading Company". The said fact is

relevant as the user is claimed in the said trade mark application and one

has to declare the same before the relevant authority.

25. From the above discussion, it can be said that there is certain

doubt about the existence of the Defendant‟s firm prior to the year 2007.

The said cloud of doubt is proved from seeing the documents file by the

plaintiff containing the statement of Dealers of Defendants before

Department of Trade and Taxes, Delhi wherein the Defendant himself

has made the statement under his signatures. Some of the statements so

made by the Defendant in the said „Statement of Dealer‟ are as

follows :-

"7. That business commenced w.e.f. 19.01.2007.

9. A] Last Purchase Bill/Tax invoice No. R/050 dated 31.05.2007.

9. B]        Last Sale Bill/Tax Invoice No. 007 dated
             12.05.2007.

11.          The approx. Value of stock as on 10.9.2007
             is Rs.34000/-.

12. That the firm has one employee and their total salary is Rs.2800/-."

26. The said „Statement of Dealer‟ has been signed by the

Defendant himself on 10.07.2007. It appears from the said „Statement

of Dealer‟ filed before the Department of Trade and Taxes that there

was no business carried out by the Defendant prior to the year 2007.

The other documents are also questionable.

27. It is not necessary for this Court to deal with each and every

document filed by the Defendant. During the course of the arguments,

when these facts were pointed out to the learned counsel for the

Defendant, he tried to give several casual justifications vis-à-vis that

these documents are genuine documents, formatting of the bills and

details are not the same and the mentioning of the details of telephone

and sales tax numbers on the bills are not necessary and mandatory

under the law.

28. Learned counsel for the defendant states that the documents

referred above cannot be examined and looked into at this stage as the

veracity of the documents can only be considered after the trial. I do not

agree with the statement of the learned counsel for the defendant. No

doubt, in case the genuineness and the authenticity of the documents are

doubtful, the same can be considered at the time of trial but in the

present case, the documents filed by the defendants on the face of it are

false and fabricated and I do not think that any trial is required in view

of the reason given in paras 20 to 26 of my order. Therefore, the

contention of the defendant is rejected.

29. Coming to the law relating to the subject that a party who is

seeking the discretionary relief has to approach the court with clean

hands and is required to disclose all the material facts, which may one

way or the other affect the decision, otherwise, the party is not entitled

for any discretionary relief, in the case of S P Chengalvaraya Naidu

[dead] by L.Rs. V. Jagannath [dead] by L.Rs. [1993] 6 JT [SC] 331, it

is held that:-

"In this case Jagannath had obtained preliminary decree for partition by suppressing and not disclosing all the material facts and by misrepresenting the facts obtained a preliminary decree of partition. An application for final decree was opposed on the ground that the preliminary decree was obtained by playing fraud upon the Court. The trial Court had dismissed the application but High Court reversed the findings of the trial Court. The Apex Court in appeal set aside the judgment of the High Court and restored that of the trial Court. The Apex Court held as under [para 8] :

A litigant, who approaches the Court, is bound to produce all documents executed by him which are relevant to the litigation. If he withholds a vital document in order to gain advantage on the other side, then he would be guilty of playing fraud on the Court as well as on the opposite party."

30. In the present case also, no doubt, the Defendant has tried to

gain advantage by filing the ingenuine documents, therefore, he is guilty

of fraud. The overt act of fraud vitiates all the actions and the party

conducting the same is not worthy of any benevolence or discretionary

relief from the court. In the case of A.Anuradha Vs. Canara Bank

2006 ALT 4 581, the Division Bench of the Andhra Pradesh High Court

has held :-

" In this connection, it is apposite to observe that Satya [truth] and Ahinsa [nonviolence] are the two basic values of life, which

have been cherished for centuries in this land of Mahavir and Mahatma Gandhi. People from different parties of the world come here to learn these fundamental principles of life. However, post-independence era and particularly the last two decades have witnessed sharp decline in these two basic values of life. Materialism has over-shadowed the old ethos and quest for personal gain is so immense that people do not have any regard for the „truth‟.

TRUTH was the hallmark of the justice delivery system which operated in the country till the establishment of the court system under British rule. The people used to tell truth and truth only without being influenced by its consequences. In the present day judicial system the truth is perhaps the biggest casualty. Unscrupulous litigants like the petitioners leave no stone unturned to mislead the quasi-judicial and judicial authorities and the courts for material gains. The entire system has become victim of such persons. In order to meet this challenge, the courts have evolved new rules, strategies and techniques. One such rule is that the court will not grant hearing to a person who does not approach it with clean hands. To put it differently, a person who touches the fountain of justice with the tainted hand or who makes an attempt to pollute the course of justice by making false or misleading statements or by suppressing facts must be shown the door at the threshold."

31. In the case of Satish Khosla V/s.Eli Lilly Ranbaxy Ltd. &

Anr. 71 [1998] DLT 1 [DB], the Division Bench of this Court has held

as under :-

19. As held by the Supreme Court in T. Arivandandam v. T.V. Satyapal and Another, AIR 1977 SC 2421, the pathology of litigative addiction ruins the poor of this country and the Bar has a role to cure this deleterious tendency of parties to launch frivolous and vexatious cases. "It may be a valuable contribution to the cause of justice if Counsel screen wholly fraudulent and frivolous litigation refusing to be beguiled by dubious clients. And remembering that an Advocate is an officer of justice he owes it to society not to collaborate in shady actions. The Bar Council of India, we hope will activate this obligation. We are constrained to make these observations and hope that the co-operation of the Bar will be readily forthcoming to the Bench for spending judicial time on worthwhile disputes and avoiding the distraction of sham litigation such as the one we are

disposing of. Another moral of this unrighteous chain litigation is the gullible grant of ex parte orders tempts gamblers in litigation into easy Courts. A Judge who succumbs to ex parte pressure in unmerited cases helps devalue the judicial process."

32. Learned counsel for the parties have cited large number of

judgments in order to support their respective submissions. I feel that it

is not necessary for this Court to discuss the said judgments as the law

on the subject of prior user is well settled particularly in the case of

Century Traders vs. Roshan Lal Duggar & Ors., AIR 1978 Delhi 250

wherein it is held that the prior user of the mark is the main

consideration for deciding the matter of passing off.

33. From the above discussion and findings arrived in the

preceding paragraphs, I am of the considered view that no prima facie

case is made out for grant of temporary injunction in favour of

Defendants. Rather, the ingenuine documents filed by the Defendant

vitiates the action and I do not think any trial in the matter is required in

CS (OS) 382/2008, therefore, the claim of prior user made by the

Defendant alongwith the interim application of the defendant being

C.S. [OS] no.382/2008 does not survive. The application of the

Defendant filed under Order 39 Rules 1 and 2 CPC being IA

no.9373/2008 and the C.S.[OS] no.382/2008 are dismissed with costs

of Rs.2,00,000/- to be deposited by the Defendant in the name of

Registrar General of this Court within four weeks of receipt of this

order, who will make it available for utilization of Juvenile Justice.

34. List the matter before court on 6th July, 2009 for compliance

of the order of cost and personal appearance of Mr. Gulshan Kumar.

35. As regards, the C.S.[OS] no.1192/2007 filed by the Plaintiff

is concerned, the documents filed by the Plaintiff have also been

challenged by the counsel for the Defendant that there is no cogent

evidence by the Plaintiff to prove the user claimed by the Plaintiff from

the year 1995.

36. In the present case, the evidence is under progress and the

truth is likely to come out very shortly as the witness of the Plaintiff is

already under cross-examination. Even if the statement of the

Defendant is considered, the fact of the matter remains that the Plaintiff

has filed large number of documents i.e. official record in order to show

that they were in business since the year 1995.

37. Even otherwise, if the user of the Plaintiff is not accepted

from the year 1995, still it is a matter of record on the basis of Govt.

documents that the Plaintiff has filed the application for registration of

the trademark and the part of the label before the Trade Marks registry

on 12.01.1999. Some of the original documents have also been filed in

support of the user claimed by the Plaintiff.

38. Even if the user of the Plaintiff is not considered prior to

January‟1999, still the Plaintiff is the prior user of the trademark/label in

question. In case the statement made by the plaintiff in the plaint about

the user of the mark since the year 1994 is not proved in trial, the

Plaintiff will also have to face the same consequence as that of the

Defendant as decided, but at this stage since there is sufficient material

placed by the Plaintiff on record about the user of the trademark/label

since the year 1999, the interim injunction, which is granted on

06.07.2007, is made absolute till the disposal of the present suit and IA

7344/2007 is allowed.

39. The application filed by the Defendant being IA

no.9687/2007 (Under Order 39 Rule 4) is dismissed with a cost of

Rs.25,000/-, to be deposited by the Defendant in the name of Registrar

General of this Court within four weeks of receipt of this order, who

will make it available for utilization of Juvenile Justice.

C.S. [OS] no.1192/2007

40. List before the Joint Registrar for further cross-examination

on 22.07.2009 at 2:00 P.M., the date already fixed.

MANMOHAN SINGH, J APRIL 13, 2009 sa