Delhi High Court
Rubaljit Singh vs M/S. Kanz Overseas & Anr. on 20 November, 2009
Author: Anil Kumar
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) No.213 of 2009
% Date of Decision: 20.11.2009
Rubaljit Singh .... Plaintiff
Through Mr. Amarjit Singh Advocate, Ms.
Supreet Advocate, Mr. Navneet Moni
Advocate and Mr. Shruva Bhagat
Advocate for plaintiffs.
Versus
M/s Kanz Overseas & anr. .... Defendants
Through Mr.A.K.Goel Advocate with Mr. Amit
Srivastave Advocate for defendants
CORAM:
HON'BLE MR. JUSTICE ANIL KUMAR
1. Whether reporters of Local papers may be YES
allowed to see the judgment?
2. To be referred to the reporter or not? YES
3. Whether the judgment should be reported in YES
the Digest?
ANIL KUMAR, J.
*
IA 1399/2009 (Plaintiff's application u/o 39 Rules 1 & 2of CPC)
IA 2761/2009(Defendants' application u/o 39 Rule 4 of CPC)
IA 2762/2009(Defendants' Application u/O 39 Rules 1 & 2 of CPC)
1. These are the applications by the plaintiff under Order XXXIX
Rules 1 and 2 read with Section 151 of the Code of Civil Procedure and
by the defendants under Order XXXIX Rule 4 for vacation of interim
order dated 9th February, 2009 restraining the defendant from using
mark „KANZ‟ in respect of door closures, door closing devices, hydraulic
door closures, hardware fittings, glass hardware and restraining the
Defendants from using mark „KANZ‟ on his packaging material and his
catalogue and passing of his goods as that of plaintiff and Defendants'
application under Order 39 Rules 1 & 2 of Code of Civil Procedure
seeking restrain against the plaintiff from using mark „KANZ‟ in respect
of door closures, door closing devices, hydraulic door closures,
hardware fittings, glass hardware and restraining the plaintiff from
using mark „KANZ‟ on his packaging material and his catalogue and
passing of his goods as that of Defendants.
2. The plaintiff has filed the above-noted suit contending inter alia
that he is engaged in the business of the manufacture, import and sale
of door closures, door closing devices, hydraulic door closures,
hardware fittings, glass hardware fittings etc. in the name and style of
Classic Devices as a sole proprietor. The plaintiff contended that he is
established in the trade since the year 1994 and he had obtained
central sales tax registration in the year 1994 and he obtained an
import license in the year 2005 for the import of goods of his interest.
The plaintiff also contended that he is one of the Directors of another
company, `Efficient Devices Pvt. Ltd.', which company is in business
since the year 2000 and is a family concern of the plaintiff with his
mother as a shareholder and a Director. The father of the plaintiff is
also stated to be in the similar business which he is carrying on
business in the name and style of M/s. Hardwyn Industrial Trading
Corporation at B-136, Mayapuri Industrial Area, Phase I, New Delhi,
since 1965. The trade mark `Hardwyn‟ is used by his father‟s firm and
through the father‟s firm licensee `Efficient Devices Pvt. Ltd. in respect
of goods are being imported by it. The plaintiff asserted that in January
2007 he conceived and invented the trade mark „KANZ‟ and since then
the trade mark has been continuously and extensively used in the
course of the trade by the plaintiff. The trade mark „KANZ‟ is
represented in a particular artistic and distinctive manner. According
to the plaintiff, the goods sold by him have a packaging material and
catalogue in the form of card board boxes having unique getup, layout,
color combination and arrangement. For the purpose of trading the
goods, the plaintiff is alleged to have engaged the services of
Mr.Subhendu Banerjee carrying on business as Square Heads, 147 B,
LIG Flats, Rajauri Garden, New Delhi and an artist by profession who
prepared the original artistic work. An agreement is alleged to have
been executed between the Artist and the plaintiff for creating and
devising the device.
3. According to the plaintiff, the trade mark „KANZ‟ is widely and
extensively used in the course of trade and the total sale of the plaintiff
from 1st April, 2007 was Rs.23,94,802/- and from 1st April, 2008 to 31st
December, 2008 was about Rs.15,61,464/-. The plaintiff has also
alleged to have spent substantial amount of money. The plaintiff is also
alleged to have filed applications for the registration of the trade mark
„KANZ‟ with the Registrar of Trade Marks which are pending for
registration. The plaintiff has also claimed copyright in the artistic
work in the manner in which the trade mark „KANZ‟ is represented.
4. The plaintiff alleged that the defendant No.1 is a firm which is an
imposter of same description of goods and defendant No.2 is the
proprietor or partner of defendant No.1. According to the plaintiff,
defendants have dishonestly, malafidely and deliberately adopted the
identical trade mark „KANZ‟ in respect of goods of their import and sale.
According to the plaintiff, the defendants have not only adopted an
identical trade mark „KANZ‟ in respect of the identical description of
goods but they have also reproduced the artistic manner in which the
trade mark „KANZ‟ is represented.
5. The plaintiff contended that the defendant No.2 had been actively
associated with the business activities of the plaintiff and is associated
with his firms during past years and had even been representing the
plaintiff‟s company, `Efficient Devices Company Pvt. Ltd.', carrying on
business at B-4/237, Safdarjung Enclave, New Delhi. The plaintiff has
also contended that in December 2006 and December, 2007 there was
an exhibition of hardware goods organized by ZAK Trade and Exhibitors
at Delhi and Mumbai and defendant No.2 was part of the team
representing the plaintiff‟s company for promoting the business and the
goods of the plaintiff company. The plaintiff has also alleged to have
sponsored the visit of defendant No.2 to China in the month of March
2007 when plaintiff visited China with defendant No.2.
6. The plaintiff contention is that in July 2008 it was learnt by him
that defendant No.2 was trying to establish his personal and direct
relationship with some of the manufacturers of hardware goods in
China where defendant No.2 was taken by plaintiff during their joint
visit in March 2007. The plaintiff also alleged that defendant No.2 was
also trying to procure and import hardware goods from China and setup
his own business. It is asserted that in month of December 2008,
plaintiff was surprised to see the goods bearing his trade mark „KANZ‟
in the market. The goods had striking similarity with the goods of the
plaintiff having identical packaging getup, layout, color combination
and arrangement. According to the plaintiff, inferior quality goods were
sold and offered for sale under an identical trade mark „KANZ‟ which did
not bear the complete particulars of manufacturer or importer or seller
of such products. It is also contended that the detail of the inferior
goods was not available even from the domain name
www.kanzhardware.com which was stated on the goods. In the
circumstances, the plaintiff filed the above-noted suit for perpetual
injunction seeking restrain against the defendants from passing off
their goods as that of the plaintiff and infringing his trade mark and
also infringing the copyright of the plaintiff and for rendition of
accounts and damages. By an ex parte interim order dated 9th
February, 2009 the defendants were restrained from using mark „KANZ‟
in respect of their goods and they were also restrained from using the
mark „KANZ‟ on their packaging material, their catalogue and passing
off their goods as that of the plaintiff.
7. The application of the plaintiff under Order 39 Rules 1 & 2 is
opposed by the defendants. The defendants have filed the reply to the
application of the plaintiff for interim injunction and have also filed an
IA No.2761/2009 under Order XXXIX Rule 4 of Code of Civil Procedure
for vacation/modification of ex parte interim order dated 9th February,
2009. The defendants contended that defendant No.2 is well
experienced in the field of marketing and trade hardware items and had
worked in retail of goods from 1995 to 2005 and has got vast experience
in marketing, trading of hardware items. In the year 2006, he left the
said job and stated his own business of job work in stainless items
under the name and style of Balwant Plastic Industries. According to
him, apart from the business of job work, the defendant No.2 from the
year 2006 till May/June 2008 has also been associated with `M/s.
Efficient Devices Pvt. Ltd.', M/s Classic Devices M/s.Hardwyn
Industrial Trading Corporation, the firms or the companies which
belong to the plaintiff or his family members. The defendant No.2 had
been working for marketing, sales and other field work on assignment
basis.
8. The defendants contended that the wife of defendant No.2, Smt.
Jaspreet Kaur, showed interest to start her own business in trading of
hardware items and, therefore, requested defendant No.2 to assist her.
On January 6, 2008, it is asserted that Smt.Jaspreet Kaur adopted the
word „KANZ‟ as a trademark and Kanz Overseas as a trade name. The
word „KANZ‟ has been coined, conceive and adopted by Smt. Jaspreet
Kaur from the name of her own son, Kanwalzit Singh. The mark „KANZ‟
has been adopted from initial part of the said name Kanwalzit. The
defendant No.2 contended that in May or June 2008 he completely
disassociated himself from the companies of the plaintiff with the
intention to assist his wife, Smt. Jaspreet Kaur. The wife of the
defendant No.2 also inducted Sh. Sonu Dawani as a partner of the firm,
M/s.Kanz Overseas and a partnership deed dated 1st November, 2008
was also executed between his wife Smt. Jaspreet Kaur and Smt.Sonu
Dawani. Defendant No.1 has also filed an application for registration of
trade mark consisting of word „KANZ‟ for statutory protection. The
defendant No.1 had applied for registration of the trade mark „Kanz
Overseas‟ on 18th July, 2008 in respect of door closures and door
handles included in class VI and an application for registration of trade
mark „KANZ‟ on 16th September, 2008 in respect of floor machine,
spring of piston rings which are pending before the Registrar of Trade
Mark. The defendants have also contended that they got the domain
name www.kanzhardware.com, registered on 29th August, 2008 and
www.kanzoverseas.com registered on 12th September, 2008. According
to the defendants, in October 2008 Mr.Amit of M/s. Unicorn Business
made artistic mark bearing trade mark and label „KANZ‟ including
visiting cards, letter heads, envelope bearing trade mark/label „KANZ‟
for M/s. Kanz Overseas and a amount of Rs.10,500/- was paid for the
said work on behalf of M/s. Kanz Overseas. The defendants claimed
that the defendant No.1 is the owner of the copyright of the original art
work.
9. The defendant No.1 also alleged that he visited China in October
2008 for placing order for supply of goods under the trade mark „KANZ‟
for his own business and packaging and he took samples of the goods
under the said mark.
10. On 1st November, 2008, Kanz Overseas is also stated to had
taken on rent premises bearing No.Flat No.1-132, Sector II, DSIDC,
Bawana Industrial Area, Delhi-110039 and a rent agreement dated 1st
November, 2008 has been executed. A TAN number is also alleged to
have been issued in the name of Kanz overseas on 1st November, 2008
by the Income Tax Authority. The defendants have also alleged to have
participated in the trade exhibition held at Pragati Maidan on 5th, 6th
and 7th December, 2008 and publicized his business and trade mark.
The defendants also alleged that they made payment of Rs.91,010/- to
the fair organizers vide receipt dated 3rd December, 2008. The
defendants have contended that the plaintiff visited the stall of
defendant No.1 and threatened the defendants to stop business under
the said name otherwise plaintiff will go to any extent to stop the
defendants from doing the business and since the defendants did not
give any heed to such illegal threats of plaintiff, the documents have
been fabricated and the present suit has been filed and an ex-parte
order has been obtained by misleading this Court.
11. According to the defendants, they have given wide publicity to
their mark „KANZ‟ and they had been selling goods under the said trade
name. Defendants have alleged that the suit of the plaintiff is based on
false averments and fabricated documents and the ex parte interim
injunction order dated 9th February, 2009 has been obtained on the
basis of false averments and forged and fabricated documents and the
plaintiff has not come to the court with clean hands and the interim
order is liable to be vacated.
12. The defendants have contended that though the plaintiff alleged
that he had been manufacturing goods and selling them since January
2007 but the firm of the plaintiff, Classic Devices, has not carried out
manufacturing activities in respect of said goods and therefore there
was no occasion to adopt the trade mark „KANZ‟ for the manufacture of
said goods. It is contended that no excise bill has been filed by the
plaintiff to show that he has been manufacturing the said goods under
the mark „KANZ‟ . It is contended that the plaintiff has copied the trade
mark/label „KANZ‟ of defendant No.1 with a malafide intention to en-
cash the goodwill and reputation of defendants' business and to
eliminate the defendants from using the mark by putting undue
pressure on them. Defendants have also relied on a certificate issued by
the Artist of the plaintiff, Mr.Subhendu Banerjee, to the defendants.
They further contended that the signatures of Mr.Subhendu Banerjee
do not tally with the alleged signatures of said Artist on the product
catalogue and on assignment deed dated 8th January, 2007. In the
circumstances, it is alleged that the plaintiff did not get the deed of
assignment on 8th January, 2007 nor the artistic work was created by
Subhendu Banerjee in favor of plaintiff and assigned to him on that
date. It is also contended that the alleged assignment deed has not been
written and executed on 8th January, 2007 as Mr.Salil Sagar has also
given a certificate to the defendants to the effect that he had signed the
said deed at the instance of Mr.Rubaljeet Singh on or about 3rd
February, 2009 and, therefore, the deed of assignment dated 8th
January, 2007 is forged and fabricated. The defendants have also
alleged that sales invoices filed by the plaintiff in support of his
contention that he is marketing goods under the name of mark „KANZ‟
since January 2007 are forged and fabricated. The plea is also raised by
the defendants that price lists produced by the plaintiff are also forged
and fabricated as the phone numbers given on the price list as
9212474768-/69 were not even allotted to the plaintiff in January 2007
when the alleged price list was allegedly issued.
13. In order to show a prima facie case the plaintiff has alleged
that he is engaged in the business/manufacture and sale of door
closures, door handles, hydraulic door closures, hardware fittings, glass
fittings, locks and handles under the name and style of Classic Devices
as its sole proprietor. Sh.Rubaljeet Singh, plaintiff is also alleged to be a
Director of the company Efficient Devices Ltd which is also one of the
leading and reputed importer and trader of hardware goods and is
manufacturing the goods under the name and style of `Hardwyn
Industrial Trading Corporation' and the trademark is `Hardwyn'.
According to the plaintiff he conceived, invented and adopted the
trademark Kanz and in order to have a distinctive packaging material
and catalogue he had engaged the services of Mr.Subhendu Banerjee
trading at 147B, LIG flats, Rajouri Garden, New Delhi. The artistic work
relating to packaging of Kanz products was conceived, devised and
created by Mr.Subhendu Banerjee who had assigned the rights in the
artistic works by Assignment Deed dated 8th January, 2007. The Deed
of Assignment was exhibited as exhibit P1 as the statement of plaintiff
was recorded on 26th March, 2009 who had deposed that the Deed of
Assignment was signed on 8th January, 2007 by Subhendu Banerjee on
all pages in his presence. The Deed of Assignment also has a catalogue
annexed to it which has phone numbers of Classic Devices as 011
28116583, 09212474768/69. In his statement recorded on 26th March,
2009 plaintiff admitted that in 2007 the phone number
09212474768/69 was not in existence as they were allotted to him in
August/September, 2008.
14. If the pamphlet for the artistic work was got prepared by
the plaintiff in 2007 how could he give the phone numbers which had
been allotted to him almost after 1½ years later. The plaintiff has not
explained as to how could he be certain that those phone numbers will
necessarily be allotted to him after one and half years. Why should
plaintiff use in 2007 the phone numbers which had been allotted to him
in 2008 almost after eighteen months later? The explanation by the
plaintiff that he already had other telephone numbers
09212474760/61/62/63 and, therefore, he gave the numbers
09212474768/69 is not believable. The plaintiff has not produced
anything to show that the telephone department had assured the
plaintiff of allotment of such numbers after eighteen months. In any
case the object of giving the phone numbers is that the clients
interested in the products of the plaintiff could approach him on the
phone numbers given and do the business. If the plaintiff already had
other numbers 09212474760/61/62/63, the plaintiff would give those
telephone numbers which he had and not the numbers which could be
acquired by him later in time. These explanations have been given by
the plaintiff since the defendant No.2 filed an affidavit giving the details
of the activations of various phone numbers of the plaintiff including
the phone number 09212474768/69 which were allotted him almost
two years after he allegedly started giving these numbers on his
pamphlets. In the circumstances, it is apparent that the plaintiff in
collusion with Subhendu Banerjee has manipulated the alleged Deed of
Assignment dated 8th January, 2007 or the plaintiff has fabricated the
signature of Mr .Banerjee. The inevitable inference is that the Deed of
Assignment was executed by the said artist Subhendu Banerjee after
October, 2008 when the phone No.09212474768/69 was activated in
favor of the plaintiff. The forgery and manipulation by the plaintiff
regarding the Deed of Assignment alleged to be executed on 8th
January, 2007 is also inferable from the fact that even other numbers
that is 9212474760/61/62/63 were not in existence on 8th January,
2007 as even those phone numbers were activated on 26th August,
2007. If these numbers were also activated on 26th August, 2007 then
how the plaintiff could anticipate on 8th January, 2007 that these
numbers will be allotted to him and on the basis of those numbers he
could foresee that almost a year after 26th August, 2007 other phone
number bearing No.09212474768/69 will be allotted to him in October,
2008. The plaintiff in the facts and circumstances has not only
manipulated the document dated 8th January, 2007 but has not
deposed correctly even in his statement dated 26th March, 2009 that on
account of having other phone numbers 09212474760/61/62/63 he
got the phone number 09212474768/69 printed on the catalogue which
was annexed with the Deed of Assignment. The version of the plaintiff
that he got the deed of assignment from Mr. Banarjee on 8th January,
2007 is false and is an attempt by the plaintiff to mislead this Court
and the plaintiff obtained an ex-parte order from this Court on the basis
of a false document.
15. The defendant has also produced a certificate issued by
Subhendu Banerjee giving his specimen signatures along with a copy of
his passport dated 2nd September, 2002 bearing his signatures under
his photograph. The copy of the certificate of registration for the sales
tax under Delhi Sales Tax, 1975 bearing the signatures of Subhendu
Banerjee has also been filed giving the specimen signatures of
Subhendu Banerjee. The naked eye comparison of the signatures of
Subhendu Banerjee on his certificate of specimen signatures, passport
and the sales tax registration certificate reveal that the signatures on
the alleged Assignment Deed are very different with the signatures of
Sh.Subhendu Banerjee on the alleged assignment deed. The defendant
has also produced a copy of the certificate dated 19th February, 2009 of
the alleged attesting witness of Deed of Assignment dated 8th January,
2009 categorically stipulating that the Deed of Assignment was signed
by him on 3rd February, 2009 at the instance of the plaintiff
Mr.Rubaljeet Singh of Classic Devices, C-147, Mayapuri Phase II, New
Delhi. From these documents and the statement given by the plaintiff it
is apparent that the Deed of Assignment was not executed on 8th
January, 2007 as has been falsely alleged by the plaintiff and it has
already held that these must have been executed after August, 2008
when the phone numbers which are on the pamphlets annexed with the
Assignment Deed were activated and allotted to the plaintiff which
could be on 3rd February, 2009 as has been stated by the attesting
witness of the alleged Deed of Assignment Mr.Salil Sagar.
16. The manipulations done by the plaintiff are also apparent
from the fact that in order to counter the certificate given by Sh.Salil
Sagar that Deed of Assignment was signed by him on 3rd February,
2009, apparently an affidavit has been obtained from the same attesting
witness Sh.Salil Sagar dated 18th March, 2009 where the said attesting
witness has contended that the certificate produced by the defendant of
Sh.Salil Sagar was got signed from the witness by Mr.Dilpreet Singh by
threatening the witness with dire consequences. Surprisingly if such a
certificate was got signed by Mr.Dilpreet Singh, the said witness or even
the plaintiff on behalf of the said witness could have filed complaint or
could have filed some other proceedings, however, nothing has been
done. Another affidavit of Ms.Kritika Malhotra the alleged attesting
witness of Assignment Deed has also been obtained who has deposed
that her father Sh.Vipin Malhotra is a very close friend of Mr.S.S.Sahil,
father of Mr.Rubaljeet Singh. Even the said witness goes on to depose
on affidavit that the Deed of Assignment was signed on 8th January,
2007. Apparently even Ms.Kritika Malhotra prima facie has given an
incorrect affidavit. Therefore, in the facts and circumstances on the
basis of the alleged Assignment Deed which has been manipulated by
the plaintiff, it cannot be held that he has been using the trademark
'Kanz' since January, 2007.
17. In order to substantiate the plea of prior user of the
trademark `Kanz', the plaintiff has relied on the price list dated 15th
July, 2007, 15th April, 2008 and 10th January, 2009. The price list
effective from 15th July, 2007 also gives the phone number
9212474768/69 which phone numbers were activated on 7th October,
2008. The explanation given by the learned counsel for the plaintiff that
since the price list was in the hard disk of the computer system of the
plaintiff and the print was taken, however, the first page of the price list
was taken of the price list effective from 10th January, 2009 with a
changed date to 15th July, 2007, therefore, the telephone number
9212474768/69 appeared is also a false plea of the plaintiff. The font of
the first page of the price list effective from 2009 is different from the
first page of the price list with effect from 15th July, 2007. Therefore,
this plea that the first page of the price list of 2009 was taken and date
was changed and, therefore, the telephone number which was allotted
in October, 2008 also appeared in the price list of 2007 is not
acceptable and is an attempt by the plaintiff to mislead this Court. The
attempt by the plaintiff to mislead is also apparent from the fact that
even on the price list effective from 15th July, 2007 starting with the
prices of Kanz Mortise Locks, the same phone numbers are given. This
is also apparent that the price lists of different years have also been
manipulated. This inference is apparent as the price list effective from
10th January, 2009 on the first page shows that the price list is effective
from 10th December, 2008 on the second page of that price list. The
description of Kanz Mortise Locks, KML 400 (first Item) are different in
the price lists. In any case if the plaintiff had simply changed the first
page of the price list of 2007 by copying the first page of price list of
2009, the same should have been disclosed by the plaintiff when the
suit was filed. These explanations are also not reflected in the pleadings
on behalf of plaintiff and have been given by the learned counsel for the
plaintiff to justify the manipulations committed by the plaintiff.
Similarly, the price list of 2008 cannot be relied on and apparently is a
manipulated and fabricated document by the plaintiff to demonstrate
his false plea that he had been trading under the trademark Kanz since
January, 2007.
18. The fabrication of the copies of the price lists produced by
the plaintiff can also be inferred from the fact that the products Kanz
Stylo and Kanz Grace 91 included in the price list of 2007 and 2009 are
stated to be ISI mark. The plaintiff himself has produced a
communication dated 19th January, 2009 from Hardwyn Industrial
Trading Corporation addressed to Director (Marks) I, Bureau of Indian
Standards regarding license No.CM/L-0153833 and license no.CM/L-
1515543 that they have started using ISI marks on Kanz door closure
and they have taken permission from M/s.Classic Devices who are
allegedly the actual owners of trademark 'Kanz'. If the plaintiff is also
the Director of Hardwyn Industrial Trading Corporation and if he had
been using the trademark Kanz since 2007 when the alleged Deed of
Assignment dated 8th January, 2007 was allegedly executed, then why
the plaintiff did not start using the ISI mark in 2007 has not been
explained. If the permission is of 2009 then how the plaintiff had been
showing the `Kanz' products as ISI marked product has not been
satisfactorily explained. If the ISI mark was permitted to be used in
2009 then how the ISI mark appeared in the alleged price list of 15th
July, 2007 and 15th April, 2008 has not been explained. In the
circumstances, the only probable inference is that the plaintiff has
fabricated these price lists also in order to demonstrate falsely that he
had been using the trademark `Kanz' in 2007 and 2008.
19. The plaintiff has also failed to give any plausible
explanation for adopting the coined word "Kanz". In contradistinction
the defendants have contended that Smt.Jaspreet Kaur wife of
defendant No.2 had shown her interest to start her own business in
trading of hardware items and had requested the defendant No.2 to
assist her in the said business. In the circumstances on 6th January,
2008 the word "Kanz" was adopted as a trademark and Kanz Overseas
as the trading style from the name of her son Kanwalzit Singh. The
word Kanz has been adopted from the initial part of the said name that
is KANWALZIT. The defendants also got the domain name
www.kanzhardware.com registered on 29th August, 2008 and another
domain name www.kanzoverseas.com registered on 12th September,
2008 whereas no domain name was registered in the name of the
Classic Devices of the plaintiff.
20. The application for registration of trademark Kanz Overseas
under number 01711772 is dated 18th July, 2008 in respect of door
closures and door handles included in class 6, whereas the application
for registration of mark Kanz under numbers 01762124 dated 10th
December, 2008, almost after 5 months was filed by the plaintiff in
respect of door closures, door closing devices, hardware fittings, glass
fittings, locks and handles included in class 6. Another application for
registration of mark Kanz under No.1762127 dated 10th December,
2008 was filed by the plaintiff in respect of hydraulic door closures
included in class 7, but the defendant had filed an application earlier
for the registration of trademark Kanz under number 01732764 dated
16th September, 2008 in respect of floor machine, string and piston
rings included in class 7.
21. Learned counsel for the plaintiff has relied on Volume VIII No.16
Reports of Patent, Design and Trade Mark Cases 137, in the matter of
Applications by The Apollinaris Company Limited; Volume XIII No.36
Reports of Patent, Design and Trade Mark Cases 600, in the matter of
the European Blair Camera Company‟s Trade Mark; AIR 1984 Delhi
265, Glaxo Operations UK Ltd, Middlesex (England), and others v.
Samrat Pharmaceuticals, Kanpur; 1998 PTC (18) 151, Radhika Agro
Industries Pvt. Ltd. V. Paawan Agro Foods Ltd; 1997 PTC (17) 347,
Bimal Govindji Shah v. Panna Lal Chandu Lal and 1996 PTC (16) 575,
Jai Prakash Gupta v. Vishal Aluminium Mfg. Co. in support of pleas
and contentions of the plaintiff.
22. In Jai Prakash Gupta (supra), it was held that in passing off
action, the defendant cannot escape the liability on the ground that
plaintiff himself is pirator of another person. It was further held that
priority in use is superior to priority in registration. The court had
relied on Century Traders v. Roshan Lal Duggar & Co. and another, AIR
1978 Delhi 250 holding:-
"The law is pretty well settled that in order to succeed at
this stage the appellant had to establish user of the
aforesaid mark prior in time than the impugned user by the
respondents. The registration of the said mark or similar
mark prior in point of time to user by the appellant is
irrelevant in an action for passing off and the mere
presence of the in the register maintained by the trade
mark registry did not prove its user by the persons in
whose names the mark was registered and was irrelevant
for the purposes of deciding the application for interim
injunction unless evidence had been led or was available of
user of the registered trade marks."
23. In Bimal Govindji Shah (supra), this Court had held that it is
manifestly clear that Section 28 of the Act and other provisions come
within the overriding effect of Section 27(2) of Trade and Merchandise
Marks Act, 1958. Relying on Section 33 of the said Act, it was also held
that the same saves vested right of a prior user when it lays down that
"nothing in the Act shall entitle the proprietor or a registered user of a
registered trade mark to interfere with or restrain the use by any person
of a trade mark identical with or nearly resembling it in relation to
goods in relation to which that person is predecessor in title of this and
has continuously used that trade mark from a prior date". In the
circumstances, it was held that neither Section 28 nor any other
provision of the Act prohibits an action for passing off by an anterior
user of a trade mark against a registered user of the same. Therefore,
the registration of the trade mark does not provide a defence to the
proceedings for passing off as provided for under Section 27 (2) of the
Act and a prior user of a trade mark is entitled to maintain an action
against a subsequent user of identical trade mark including registered
user thereof. Relying on N.R. Dongre v. Whirlpool Corporation, AIR
1995 Delhi 300, it was held that the registration of a trade mark under
the Act would be irrelevant in an action of passing off as the registration
of a trade mark does not confer any new right on the proprietor thereof
than what already existed at common law without registration of mark.
Thus registration itself does not create a trade mark and that the trade
mark exist independently of the registration which merely affords
further protection under the Statue. The common law rights are left
wholly unaffected and that priority in adoption and use of trade mark is
superior to priority in registration. The Court in para 15 had summed
up the legal proposition as under:-
"15. The legal proposition that emerges from all the
aforesaid decisions is that the registration is immaterial in
a case of passing off and the criteria for granting an
injunction is the prior user of the trade mark by the parties.
In other words, "in an action for passing off, in order to
succeed in getting an interim injunction the plaintiff has to
establish user of the mark prior in point of time than the
impugned user by the defendant and that the registration
of the mark or similar mark prior in point of time to user of
the plaintiff is irrelevant in an action of passing off and the
mere presence of the mark in the register maintained by the
trade mark registry did not prove its user by the persons in
whose names the mark was registered and it is irrelevant
for the purpose of deciding the application for interim
injunction unless evidence had been led or was available of
user of the registered trade mark."
24. Learned counsel for the plaintiff relying on Bimal Govindji Shah
(supra), had contended that for arguable dispute has been raised by the
defendant as regards the bills produced by the plaintiff showing prior
user but it would not be appropriate that further evidence is not to be
given nor any finding about the said dispute raised by the defendant as
to whether the plaintiff is guilty of fabrication or not, it would be a
matter to be considered and decided during the course of the hearing of
the suit.
25. Relying on Radhika Agro Industries Pvt. Ltd. (supra), it is
asserted by the plaintiff that at the stage of interim order it is not
proper to give any finding on issue whether some of the invoices are
fabricated or not because it would be a matter to be considered and
decided after trial. The single Judge of this Court in Radhika Agro
Industries Pvt. Ltd. (supra) had noticed that the plaintiff had been able
to establish user of trade mark „Jiwan Dhara‟ prior in time than its user
by the defendant and in the circumstances at the stage of the interim
order it was held not proper to give finding on the issue whether some
of the invoices furnished by the defendant are fabricated or not because
it was held to be a matter to be considered and decided after trial. The
Court had further held that looking at the copies of the invoices it was
apparent that the words „Jiwan Dhara‟ had been inserted in the copies.
It was held that when a party itself seeks relief of equity, it must
unequivocally demonstrate that its hands are absolutely clean, which,
prima facie, does not seem to be the case of the plaintiff.
26. In the matter of the European Blair Camera Company‟s Trade
Mark (supra), a person named „T‟ carried a business in Boston, U.S.A.,
and owned trade mark "Bull‟s-eye". The business was sold by him to
another company during the period, „T‟ had carried on the business,
another company called E. Company imported cameras from „T‟ and
also got the word „Bull‟s-eye‟ registered in England, whereafter K.
Company purchaser of the business from the „T‟ moved to expunge
trade mark from the register. It was held by the High Court of Justice
Chancery Division that since there was a user by „T‟ in England,
therefore, he had a clear right to oppose the registration and without
his sanction the registration in favor of E. Company ought not to have
been made. Since there was no reliable evidence that the sanction had
been given, it was held that the registration was made without sufficient
cause and, therefore, the mark in favor of E. Company was struck off
the register at the instance of K. Company.
27. According to the plaintiff, since the defendant is an importer of
foreign goods, he cannot register as his own, the trade mark of a foreign
producer. Whether the goods are produced by a process of manufacture
or by a process of nature, or whether the importer has or has not an
exclusive contract for this country, or whether the producer does or
does not consent to the registration? Relying on the ratio of Apollinaris
Company Limited (supra), it is asserted that the mark of the producer
could not be registered as the trade mark of the importer who had no
right to the product. This plea of the plaintiff is also not acceptable.
This has not been shown even prima facie that the trade name used by
the defendants is also used by another person or company who has
exported the goods from a foreign country.
28. In case of passing off, on plaintiff placing on record the statement
of its sale supported by the affidavit of the plaintiff, the plea of the
defendant that ingredient of wide reputation was not proved, was not
entertained in Glaxo Operations UK Ltd., Middlesex (England) and ors
(supra), relied on by the plaintiff. Rather this Court had held that it is
well known, than on the basis of the background, color, getup and
general appearance of the cartons, the article contained therein are
purchased and that being so, a customer is likely to be deceived. It was
further held that under Section 17, the emphasis is on the fact that the
copyright vest in that person who is original creator of the work and in
cases where it may not be possible to define as to who was the original
creator, in such cases the person who get registration earlier or who
establishes to be an earlier user ,can be presumed to be the author or
original creator of the artistic work.
29. Per contra the defendant has relied on 2009 (39) PTC 16 (Del)
(DB), Ram Krishan and Sons Charitable Trust Ltd. V. IILM Business
School; 2000 PTC 326, Om Prakash Gupta v. Parveen Kumar &
Another; JT 1993 (6) S.C. 331, S.P. Chengalvaraya Naidu v. Jagannath
and other; 1998 (44) DRJ (DB) 109, Satish Khosla v. Eli Lilly Ranbaxy
Ltd.; 1995 Rajdhani Law Repaorter (Vol.25) SC 1, Chander Shashi v.
Anil Kumar and AIR 1965 Bombay 35 (V 52 C14), Consolidated Foods
Corporation v. Brandon and Co. Pvt. Ltd. in support of its pleas and
contentions including that the adoption and user of impugned mark by
the plaintiff is dishonest and subsequent to the defendant.
30. Relying on Halsbury‟s Law of England, Vol. 48 4th Edition, paras
28, 29 of the Registered Trade Marks, it is contended by the defendants‟
counsel that the person who first designs or uses a trade mark is
entitled to claim proprietorship in it. Referring to the Trade Mark Act,
1938, it was stated that the Act does not define "proprietor", however, it
is the person claiming to be the proprietor who may apply for
registration, and it is only the registered proprietor who may sue for
infringement. It has been left to the Courts to decide what amounts to
be a valid claim to be the proprietor.
31. A single Judge of Bombay High Court in Consolidated Foods
Corporation (supra), had held that registration under the Statute does
not confer any new right to the mark claimed or any greater rights than
what already existed at common law and had equity without
registration. Priority in adoption and use of a trade mark is superior to
priority in registration and for the purpose of claiming such
proprietorship of a mark, it is not necessary that the mark should have
been used for considerable length of time. As a matter of fact, a single
actual use with intention to continue such use eo instant confers a right
to such mark as a trade mark. Even mere actual intermittent or
experimental use may be insufficient to show an intention to adopt the
mark as trade mark for specific article or goods. It was further held
that it is not necessary that the goods should have acquired a
reputation of quality in that mark. Actual use of the mark in such
circumstances, showing an intention to adopt and use it as a trade
mark, is the test, rather than the existence or duration of the use.
32. Learned counsel for the defendant has very strongly contended
that the copies of invoices produced by the plaintiff are fabricated
and has pointed out various discrepancies in the bills No.080, 063,
060, 024, 016, 187, 221, 260, 238, 169, 139, 134, 125, 156 and
096. It is contended that either there are additional commas in the
copies produced and the copies obtained by the defendant form the
dealers of the plaintiff. Various other discrepancies have also been
pointed out between the contents of the invoices. Some of the copies
have the GR numbers written in hand and the description of the
goods are also different. The plaintiff filed the copies of the
invoices/bills of different list of documents. Some of the
discrepancies are as follows:
Discrepancies Invoice No.101 at Pg. Invoice No.101 at Pg.
No.31 : Plaintiff‟s 1st 20 Plaintiff‟s 2nd list
List
Date 20.08.2007 30.08.2007
Address In three lines In four lines
CST No. Not Mentioned Mentioned
Coma in address of Single coma Double comma
firm at top of bill
Signature Straight at different Oblique at different
position position
Discrepancies Invoice No.074 at Pg. Invoice No.074 at Pg.
No.25 : Plaintiff‟s 1st 21 Plaintiff‟s 2nd list
List
Address In three lines In four lines
GR/RR No. Mentioned Not mentioned
CST No. Not Mentioned Mentioned
Coma in address of Single coma Double comma
firm at top of bill
Signature Straight at different Oblique at different
position position
Discrepancies Invoice No.260 at Pg. Invoice No.265 at Pg.
No.71 : Plaintiff‟s 1st 22 Plaintiff‟s 2nd list
List
Description of goods U-32 KANZ FLOOR KANZ U-32 FLOOR
SPRING SPRING
GR/RR No. Not Mentioned Mentioned
Signature Straight at different Oblique at different
position position
Discrepancies Invoice No.232 at Pg. Invoice No.232 at Pg.
No.68 : Plaintiff‟s 1st 64 Plaintiff‟s 2nd list
List
Overwriting No overwriting Overwriting in total &
tax amount
Sales Tax Add : Central Sales Add : VAT is written
Tax is written
GR/RR No. Not Mentioned Mentioned
Signature Straight at different Oblique at different
position position
33. It has also been pointed out that invoice No.169 dated 19th
September, 2008, a copy of which is also filed have different signatures
of authorized signatory. The fabrication of invoices is also contended on
the ground that there are inconsistencies in the copies of the invoices
filed by the plaintiff on different dates along with different lists of
documents which shows unequivocally, manipulations and fabrications
done by the plaintiff to show his alleged prior use. As an incident, it is
contended that invoice No.169 shows that the goods were dispatched on
22nd September, 2008 to M/s. Atlas Metal, 59/8 Dev Raja Mudali
Street, Chennai, which were received on 30th September, 2008, taking
about eight days, whereas invoice No.118 dated 30th July, 2008 shows
that the goods were dispatched on 31st July, 2008 and were received on
31st July, 2008, on the same day. This is reflective of fabrication and
manipulation of copies of invoices, as the goods could not have reached
from Delhi to Chennai on the same date, in one day.
34. The learned counsel for the defendant has also pointed out
anomalies in the description of goods, as the code of some of the items
sold by invoices does not correspond to the code given in the price list.
Some of the invoices have GR/RR numbers printed whereas the
deposition of the plaintiff in one of the affidavit dated 18th March, 2009
is that GR/RR numbers are put in hand. Learned counsel for the
defendant has also pointed out the code of the products used in the
invoices of the plaintiff, to demonstrate that the copies have been
manipulated in order to make out the alleged user of the trade mark of
the defendant prior in time, when the defendant started using it. The
defendants have also produced the fax copies of the invoices No.227
and 221 which is signed by Ms. Latika who has also given an affidavit
dated 26th February, 2009 deposing that the invoices were signed by
her. The deposition of Ms. Latika is contrary to the deposition of
plaintiff in his affidavit dated 18th March, 2009 that Ms. Latika never
signed any of the invoices issued by the plaintiff. The genuineness of
the copies of the invoices becomes more doubtful in view of the
affidavits of plaintiff‟s dealer M/s Rajkumar Dawani who has also
produced invoice No.46 dated 12th June, 2007 which is signed by Ms.
Latika, though according to the plaintiff Ms.Latika never signed any of
the invoices. The plaintiff has also conveniently ignored answering this
fact as his lie had been nabbed.
35. The plea of the plaintiff that the plaintiff was not maintaining the
paper copies of the invoices is negated by another plea taken on behalf
of the plaintiff that the number of GR/RR used to be put on the invoices
in hand. This is not the case of the plaintiff that after sending the goods
by transport or railways and obtaining the GR/RR number, the same
was added in the computer data of the invoices. In the circumstances,
there is not just a solitary instance of discrepancies in respect of the
copies produced by the plaintiff showing prior user but the cumulative
effect of various discrepancies which the plaintiff has failed to explain
and answer satisfactorily, the inevitable inference is that the reliance
cannot be placed on the copies of the invoices produced by the plaintiff
to demonstrate prior user of trade mark „Kanz‟. Consequently, on the
basis of the invoices the plaintiff has failed to establish a prima facie
case of use of trade mark „Kanz‟ prior to defendant.
36. Learned counsel for the defendant has also emphasized the
statutory obligation to maintain paper copies of the invoices under
Section 50(3) of Delhi Value Added Tax Act, 2004 and no satisfactory
explanation has been given by the plaintiff as to how by keeping only
the copies of the invoices on the computer, the plaintiff has been
complying with the statutory provisions.
37. Comparing the explanations given by the plaintiff and the
defendant, the explanation for coining the word „Kanz‟ by defendant
being adopted from the name of son, Kanwalzit Singh, is more probable.
Taking the pleas and contentions of the defendant, especially that
defendant No.2 had dissociated with the firms and companies of
Rubaljit Singh, plaintiff, in May 2009 and joining his wife to assist her
in the intending business to be carried on under the trade mark „Kanz‟
which word was coined from the name of their son, the version of the
defendant is more probable than the pleas and contentions raised by
the plaintiff and, in the circumstances, it is inevitable to infer that the
plaintiff has been unable to make out a case of prior user or adoption of
trade mark „Kanz‟ prior to that of defendant. The prior user of the
defendant and the attempt by the plaintiff to create documents in order
to counter the pleas and contentions of the defendants is further
augmented by the fact that the defendant No.1 had applied for
registration of the trade mark on 18th July, 2008 in respect of door
closure and door handles included in Class VI whereas the plaintiff had
applied on 16th September, 2008 in respect of floor machines, spring of
piston rings in Class VII. The prior user of the defendant is further
supported by the fact that the defendants got the domain name
„www.kanzhardware.com‟ which was registered on 29th August, 2008
and another domain name „kanzoverseas.com‟ was registered on 12th
September, 2008. The defendant has also been able to establish that in
October 2008 he got the stationery for his product printed.
38. In contradistinction, the document relied on by the plaintiff
regarding the assignment agreement of artistic work has already been
disbelieved by this Court. In the chain of facts to demonstrate that the
user of the defendants is prior to that of plaintiff, another link is that
PAN number issued in the name of M/s. Kanz Overseas by income tax
authorities is prior to that of plaintiff. In the circumstances, prima
facie, the plaintiff has failed to establish a prima facie case of prior user
of trade mark „Kanz‟ whereas from the documents and pleas and
contentions of the defendant, the inference is that defendant is the prior
user of trade mark „Kanz‟. Apparently, since the defendant is a prior
user of trade mark „Kanz‟, in case the defendant is restrained from
using the mark „Kanz‟, they will suffer great loss which may not be
compensated in terms of money. In the circumstances, the balance of
convenience is in favor of defendant and against the plaintiff and
restraining the defendant from using their trade mark „Kanz‟ shall also
cause irreparable loss and injury in the facts and circumstances.
Inevitably there are no grounds to continue the ex party restraint order
granted by this Court dated 9th February, 2009 in favor of plaintiff and
against the defendant which is liable to be vacated.
39. Consequently, the application of the defendant under Order
XXXIX Rule 4 being IA No.2761 of 2009 is allowed and the ex parte
injunction order dated 9th February, 2009 restraining the defendant
from using the trade mark „Kanz‟ is vacated and the application of the
plaintiff under Order XXXIX Rules 1 and 2 is dismissed.
40. Since the defendant has been able to establish that he is prior
user of the trade mark „Kanz‟, rather he will suffer irreparable loss, if
the plaintiff is allowed to continue using the trade mark „Kanz‟. The
defendant shall also suffer greater inconvenience on account of use of
trade mark „Kanz‟ by the plaintiff. Therefore the application of the
defendant being IA No.2762 of 2009 is allowed and the plaintiff is
restrained from using the trade mark „Kanz‟ in any manner himself or
through his partners, agents etc. and reproducing, displaying or
advertising the said trade mark and use it on any of his products in any
way and passing of his goods as that of the defendants during the
pendency of the present suit.
41. Learned counsel for the defendant has contended that in order to
establish the prior use of the mark "Kanz" by the plaintiff, he has filed
the assignment agreement, which is forged and fabricated; the price
lists which are also fabricated and the copies of invoices which are also
fabricated and thus the plaintiff has committed contempt of court and
has relied on Chander Shashi (supra), where it was held that if a person
file a false, forged or fabricated document with intention to obstruct or
defeat justice then he is guilty of contempt. In the case relied on by the
defendants, a fabricated certificate was filed by the husband opposing
transfer of a matrimonial proceeding. The certificate was of a Principal
of a College who had denied having issued such a certificate on an
affidavit on the basis of which suo moto action was initiated by the
Court. It was held that to enable the courts to ward off unjustified
interference in their working, those who indulge in immoral acts like
perjury, pre-variation and motivated falsehoods have to be appropriately
dealt with, without which it would not be possible for any court to
administer justice in the true sense and to the satisfaction of those who
approach it in the hope that truth will ultimately prevail.
42. A litigant who had filed another litigation after failing to get a
relief in the earlier suit for specific performance, was held to have
abused the process of law and such an action was considered to be a
deliberate attempt to hamper and obstruct due course of judicial
proceedings in administration of justice and it was held to be fraud
upon court. This court had held that a litigant who approaches the
court must produce all the documents which are relevant to the
litigation and he must also disclose to the court about the pendency of
any earlier litigation between the parties and the result thereof. It was
further held that such in action where a litigant conceals the material
facts and files a fabricated document, it may be necessary to punish
him for contempt, as such a course of conduct abuses and makes a
mockery of the judicial process and which thus extends its pernicious
influence beyond the parties to the action and affects the interest of the
public in the administration of the justice. Relying on Ram Krishan and
Sons Charitable Trust Ltd. (supra), it is contended by the counsel for
the defendant that the plaintiff is liable to be non suited and the
application of the plaintiff for interim relief is liable to be dismissed on
account of concealment and deliberate mis-statement of material facts
and production of fabricated documents. A Division Bench of this Court
had held that the party who approaches the court for discretionary
relief, should candidly and forthrightly narrate all material facts in the
plaint and/or the application for injunction. Relying on Hanamantha
Ranoji v. Sri Mahadev Channabasappa, (2000) 6 SCC 120; 2000 (4)
Scale 692, S.P. Chengalvaraya Naidu v. Jagannath, AIR 1994 SC 853,
The Advocate General, State of Bihar v. Madhya Pradesh Khair
Industries; AIR 1980 SC 946, Delhi Development Authority v. Skipper
Construction, JT 1995 (2) SC 391 and Satish Khosla v. Eli Lilly
Ranbaxy Ltd., 71 (1998) DLT 1, it was held that filing of a fabricated
document or misleading court calls for strict action to be taken against
the guilty for purporting the fraud upon the court or in any way
misleading the court. It was held that it is beyond cavil that any party
guilty of such an act stands disentitled to the grant of any equitable
relief.
43. In S.P. Chengalvaraya Naidu (supra), a preliminary decree was
obtained by withholding a vital document in order to gain advantage on
the other side. The Supreme Court had held that in such a case a
person whose case is based on falsehood, can be summarily thrown out
at any stage of the litigation. Another single Judge of this Court in Om
Prakash Gupta (supra) held that concealment of material facts or filing
fabricated documents or otherwise making any mis-representation in
the court has to be viewed seriously and in such circumstances the
person misleading the court or filing fabricated documents shall not be
entitled for any discretionary relief. It was held that the courts of law
are meant for imparting justice between the parties and one who comes
to the court must come with the clean hands. A person whose case is
based on falsehood has no right to approach the court and he could be
summarily thrown out at any stage of the litigation.
44. On the preponderance of probabilities and on prima facie view, it
has been held that the documents relied on by the plaintiff have been
fabricated by him. The plaintiff had also been granted ex-parte
injunction against the defendants on the basis of these documents
which has been vacated. In the facts and circumstances of this case, at
this stage it will not be appropriate to take action for committing
contempt of this Court against the plaintiff. Whenever the Court after
trial will come to final conclusion about the fabrication of documents by
the plaintiff, this Court would be entitled to take appropriate action
against the plaintiff in accordance with law.
45. In the circumstances, for the forgoing reasons, the application of
the defendant under Order XXXIX Rule 4 being IA No.2761 of 2009 is
allowed and the ex parte injunction order dated 9th February, 2009
restraining the defendant from using the trade mark „Kanz‟ is vacated
and the application of the plaintiff under Order XXXIX Rules 1 and 2 is
dismissed. The application of the defendant being IA No.2762 of 2009 is
allowed and the plaintiff is restrained from using the trade mark „Kanz‟
of the defendants in any manner himself or through his partners,
agents etc. and from reproducing, displaying or advertising the said
trade mark and use it on any of his products in any way and passing of
his goods as that of the defendants during the pendency of the present
suit. The plaintiff shall also be liable to pay cost of Rs.10,000/- to the
defendant. Cost be paid within four weeks. The applications are decided
accordingly.
CS(OS) No.213/2009
List on 26th November, 2009 before the Regular Bench, subject to
orders of Hon‟ble the Chief Justice
Copy of the order dasti to the parties.
November 20th, 2009. ANIL KUMAR J.
'k & Dev'
