Delhi High Court
Lt Foods Ltd. vs Sunstar Overseas Ltd. & Anr on 30 March, 2012
Author: Manmohan Singh
* HIGH COURT OF DELHI: NEW DELHI
% Judgment decided on: 30.03.2012
+ I.A. No.4331/2009 in CS (OS) No.612 of 2009
LT FOODS LTD. ..... Plaintiff
Through Mr. Neel Mason, Adv. with Mr. Ankit
Relan, Adv.
versus
SUNSTAR OVERSEAS LTD. & ANR ..... Defendants
Through Mr. Amarjit Singh, Adv. with
Ms. Esha Dogra & Ms. Ashna Bhalla,
Advs. for D-1.
Ms. Sonia Sharma, Sr. Standing
Counsel for D-2.
AND
+ I.A. No.4625/2009 in CS (OS) No.639 of 2009
SACHDEVA & SONS RICE MILLS LTD. & ANR ..... Plaintiffs
Through Mr. Manish Vashisht, Adv. with
Mr. Sameer Vashisht & Mr. Dhruv
Rohtagi, Advs.
versus
L.T. FOODS LTD. ..... Defendant
Through Mr. Neel Mason, Adv. with Mr. Ankit
Relan, Adv.
AND
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.1 of 45
+ I.A. No.4748/2009 in CS (OS) No.653 of 2009
LT FOODS LTD. ..... Plaintiff
Through Mr. Neel Mason, Adv. with Mr. Ankit
Relan, Adv.
versus
SACHDEVA & SONS RICE MILLS LTD. & ORS ..... Defendants
Through Mr. Manish Vashisht, Adv. with
Mr. Sameer Vashisht & Mr. Dhruv
Rohtagi, Advs. for D-1.
Ms. Sonia Sharma, Sr. Standing
Counsel for D-3.
CORAM:
HON'BLE MR. JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J.
1. Both parties are claiming their ownership rights in relation to the trade
mark "HERITAGE" in respect of rice. It is not disputed by the parties that
the two trademarks used by them, i.e. "HERITAGE" by LT Foods Ltd. and
"INDIAN HERITAGE" & "INDIAN HERITAGE SELECT" of Sachdeva &
Sons Rice Mills Limited, are deceptively similar and there would be a
confusion and deception if both parties will continue to use the same.
2. By this common order, I propose to decide the following pending
applications filed by the parties in the cross-suits, seeking injunction against
each other.
3. The details of pending applications are given as under:-
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.2 of 45
(a) I.A. No.4331/2009 under Order XXXIX Rule 1 and 2
read with Section 151 of Code of Civil Procedure, 1908
filed by plaintiff L.T. Foods Ltd. in CS(OS) No.612/2009
(b) I.A. No.4748/2009 under Order XXXIX Rule 1 and 2
Code of Civil Procedure, 1908 filed by plaintiff.
(c) I.A. No.4625/2009 under Order XXXIX Rule 1 and 2
Code of Civil Procedure, 1908 filed by plaintiff in
CS(OS) No.639/2009.
4. Hereinafter LT Foods Limited in the suits shall be referred as
"plaintiff" and Sunstar Overseas Limited, Sachdeva & Sons Rice Mills
Limited and Assistant Commissioner, Customs and Central Excise, would
be referred as "defendants". By last order, it was agreed by the plaintiff to
give up the Assistant Commissioner, Customs and Central Excise who was
impleaded defendant No.2 in CS(OS) No.612/2009 and defendant No.3 in
CS(OS) No.653/2009.
5. The plaintiff filed the first suit being CS(OS) No.612/2009 for
permanent injunction restraining infringement of trade mark, passing off,
rendition of accounts of profits/damages, delivery up, acts of unfair
competition etc. against the two defendants, namely, Sunstar Overseas
Limited and Assistant Commissioner, Customs and Central Excise, ICD,
Loni, District Ghaziabad.
6. Case of the plaintiff in CS(OS) No.612/2009
a) That the plaintiff is in the business of processing, marketing and
exporting rice and has a strong network of distribution in all major basmati
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.3 of 45
consuming cites in India as well as in 43 countries across the globe. The
plaintiff sells rice under various trademarks such as DAAWAT, DAWAT,
HERITAGE, ORANGE, DEVAAYA, CHEF‟S SECRET etc. In the year
1997, the plaintiff adopted the trademark "HERITAGE" and has been using
it extensively since then. The trademark "HERITGE" of the plaintiff has
been registered vide registration No.799246 as of 20.04.1998 in class 30 and
the said registration is valid and subsisting.
b) In March, 2009, the plaintiff came to know that defendant No.1,
namely Sunstar Overseas Ltd. is trying to export 13 containers of rice under
the brand name "INDIAN HERITAGE". Therefore, the plaintiff made a
representation to the defendant No.2, i.e. Assistant Commissioner, Customs
and Central Excise who temporarily stopped the said containers, containing
the bags of rice under the brand name "INDIAN HERITAGE".
c) According to the plaintiff, the adoption of the trademark "INDIAN
HERITAGE", which is identical and deceptively similar to plaintiff‟s
trademark "HERITAGE" by the defendant No.1 amounts to
misrepresentation and fraud being committed by defendant No.1 towards
public at large, that the defendant‟s goods are associated or approved by the
plaintiff, leading to passing off. These acts of defendant No.1 are causing
irreparable loss and damage to the plaintiff and the plaintiff is liable to be
compensated for damages. Further, there is a need for an interim injunction
order restraining the activities of the said defendant.
7. Along with the suit, the plaintiff filed an interim application which
was, first time, listed before the Court on 30.03.2009 when counsel for
defendant No.1 appeared before the Court at the time of issuance of
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.4 of 45
summons. On the said date, defendant No.2 was restrained from releasing
the shipment comprising of containers containing bags of rice under the
brand "INDIAN HERITAGE" for the purpose of exporting, till further
orders.
8. An affidavit was filed by Mr. Rakesh Aggarwal, Managing Director
of defendant No.1 who deposed that one Sachdeva & Sons Rice Mills
Limited, Post Office Gill Wali, Near Sangrana Sahib, Taran Taran Road,
Amritsar is the registered proprietor of the trade mark "INDIAN
HERITAGE SELECT" and defendant No.1 is the permitted/ licensed user of
the said trade mark which is being used by Sachdeva & Sons Rice Mills
Limited since the year 1985. The similar affidavit was also filed by Mr.
Vaneet Sachdeva, Manager of Sachdeva & Sons Rice Mills Limited, in
support of the case of defendant No.1, though Mr. Vineet Maheshwari, Vice
President (Commercial & Legal) of the plaintiff-company filed the counter-
affidavit, stating that the said documents filed along with the two affidavits
of defendant No.1 and M/s Sachdeva & Sons Rice Mills Limited are
fabricated and both the parties have committed the forgery.
9. The main defence raised by defendant No.1 in the first suit is that the
defendant No.1 is the licensed user of the trade mark "INDIAN HERITAGE
SELECT" which is registered under No.1149872 in Class-30, in the name of
Sachdeva & Sons Rice Mills Limited, Amritsar. Therefore, defendant No.1
has not committed any act of infringement under Section 29 of the Trade
Marks Act, 1999 (hereinafter referred to as the "Act"). The defence was
also taken that the suit of the plaintiff is not maintainable under
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.5 of 45
Section 28(3) of the Act, as both the parties are having the registration of the
essential mark "HERITAGE".
10. Defendant No.1 and Sachdeva & Sons Rice Mills Limited have
admitted in their pleadings that the two sets of the trademarks, i.e.
"HERITAGE" in favour of the plaintiff/ "INDIAN HERITAGE" and
"INDIAN HERITAGE SELECT" are deceptively similar and there would be
confusion and deception if both the parties use the same in respect of rice.
The main claim of defendant No.1 and Sachdeva & Sons Rice Mills Limited
is that they are the prior and earlier user of the trade mark "HERITAGE"
which is being used since the year 1985. In their suit, it is alleged that they
are engaged in the business of processing, marketing and exporting the rice.
Sunstar Overseas Limited is the licensed user of the trade mark. The word
"HERITAGE" is the essential feature and they have adopted the said trade
mark "INDIAN HERITAGE SELECT" on 01.04.1985. As the essential
feature of the mark "HERITAGE" which is adopted and used by the plaintiff
herein and the defendant in their suit is identical, therefore, the adoption and
use of the trade mark "HERITAGE" by the plaintiff/LT Foods Limited is
malafide as it has been derived from their trade mark. It has also been
informed by Mr. Manish Vashisht, learned counsel appearing on behalf of
Sachdeva & Sons Rice Mills Limited that the rectification to the trade mark
"HERITAGE" registered in favour of plaintiff/LT Foods Limited, bearing
No.799246 is pending in the Appellate Board.
11. The defendants Sachdeva & Sons Rice Mills Limited and Sunstar
Overseas Limited filed a separate suit against plaintiff LT Foods Limited,
bearing CS(OS) No.639/2009, for permanent injunction restraining
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.6 of 45
infringement of trade mark, passing off, rendition of accounts of profits,
delivery up, acts of unfair competition etc. Mr. Vaneet Sachdeva in order to
claim prior user has filed an affidavit alongwith 21 invoices. The suit was
listed before the Court on 08.04.2009 along with the interim application. The
said suit was sent to another Bench where the first suit was pending for
09.04.2009.
12. After filing the written statement, affidavits and documents by the
defendants, the plaintiff filed its second suit bearing CS(OS) No.653/2009
on 08.04.2009 for permanent injunction restraining infringement of trade
mark, passing off, rendition of accounts of profits/damages, delivery up, acts
of unfair competition etc., against the three defendants, namely, Sachdeva &
Sons Rice Mills Limited, Pari Foods Private Limited, Delhi and Chief
Commissioner of Customs (Delhi Zone), New Custom House, near IGI
Airport & Air Cargo Complex, New Delhi. In the said suit, the plaintiff/LT
Foods Limited apart from the fact already stated in the first suit, additional
statements were made on the basis of subsequent events and details
provided. The same are mentioned in paras-15, 16 & 17 of the suit which
are reproduced hereunder :
"15. The Defendant No.1, namely Sachdeva & Sons Rice
Mills Ltd. & Defendant No.2, namely Pari Foods Private
Limited appear to be Companies incorporated under the
Companies Act, 1956 and are engaged in the business of
marketing rice. As per Plaintiff‟s information, defendant No.2
is a subsidiary of Defendant No.1. The Defendant No.1 & 2 are
well aware of the business of rice conducted by the Plaintiff and
have repeatedly tried to copy plaintiff‟s trade mark, packaging,
label etc. in past. The Plaintiff has initiated legal proceedings
against the defendants. The Defendant No.3, namely Chief
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.7 of 45
Commissioner of Customs, Delhi Zone is overall incharge of
Customs, at Delhi.
16. Towards end of March 2009, the Plaintiff came to know
of export of rice under the trade mark INDIAN HERITAGE by
Sunstar Overseas Ltd. who was trying to export 13 containers
of INDIAN HERITAGE branded rice to the United States of
America. The Plaintiff instituted CS(OS) No.612/2009 against
Sunstar Overseas Ltd. wherein, vide order dated 30.03.2009,
this Hon‟ble Court issued a direction to the Assistant
Commissioner, Customs and Central Excise, Inland Container
Depot, at Loni, Ghaziabad not to allow export of such branded
rice till further orders despite the Defendant No.1 therein
attending the hearing and producing the registration certificate
of the Defendant herein. In the said suit, Mr. Vaneet Sachdeva,
Manager of the Defendant No.1 herein has filed an affidavit
dated 2.04.09 wherein he has stated that the Defendant No.1 is
the registered proprietor of the trade mark INDIAN
HERITAGE SELECT under registration no. 1149872 in respect
of rice and is claiming use thereof since 1985. The Defendant
No.1 also stated to have granted a license to Sunstar Overseas
Ltd for the use of the trade mark INDIAN HERITAGE
SELECT/ HERITAGE SELECT/ INDIAN HERITAGE by
virtue of letter of authorization dated 1.03.09 and an agreement
dated 4.03.09. However, no such license agreement was
produced.
The Defendant No.1 & 2 herein further produced few
invoices/shipping bills to establish export of rice under the trade
mark INDIAN HERITAGE SELECT. However, such invoices
are highly dubious and clearly fabricated to the extent that the
trade mark INDIAN HERITAGE SELECT has evidently been
added on the invoices subsequently. That apart, such invoices
do not establish any "substantial, continuous and genuine
commercial use" of the trade mark INDIAN HERITAGE
SELECT. At best it establishes "sporadic or intermittent use"
which does not constitute "prior use" of the trade mark in the
eyes of law, sufficient to create or confer any proprietary right
therein. The use of the trade mark INDIAN HERITAGE
SELECT/ HERITAGE SELECT/ INDIAN HERITAGE/
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.8 of 45
HERITAGE by the Defendant No.1 & 2 therefore is an
infringement of Plaintiff‟s registered trade mark no.799246.
The registration of the Trade Mark No.1149872 is no defense to
infringement, since, firstly, it does not give right to Defendant
No.1 & 2 to use an infringing trade mark INDIAN HERITAGE
or HERITAGE and secondly, since the said registration is
prima facie invalid, being in violation of provisions of Section
11(1) of the Trade Marks Act, 1999.
The Plaintiff is the prior user of the trade mark
HERITAGE label having sold such rice in India extensively,
substantially and continuously since 1997. The sale of
Plaintiff‟s HERITAGE branded rice in 1997 was over 7 crores
and in 2002 when the defendant No.1 applied for registration, it
was over Rs.9 crores per annum. The Plaintiff has sold
HERITAGE branded rice worth over 117 crores for the period
1997-2009, which is clinching evidence of the goodwill,
reputation and degree of distinctiveness that the said brand has
come to acquire in India. The use of the trade mark INDIAN
HERITAGE SELECT/ HERITAGE SELECT/ INDIAN
HERITAGE/ HERITAGE by Defendant No.1 & 2 for sale in
open commercial market in India or for purposes of export
constitute acts of infringement as well as passing off
considering that Plaintiff‟s HERITAGE branded rice is sold and
enjoys goodwill and reputation in India as well as
internationally. The Plaintiff is taking steps to apply for
cancellation of the Defendant‟s trade mark registration
No.1149872. However in view of prima facie invalidity of
Defendant No.1‟s registration, the plaintiff is entitled to order
of interim injunction under the provisions of Section 124(5) of
the Trade Marks Act, 1999.
17. The Defendant no.1 has stated in that affidavit produced
in suit no.612 of 2009 that HERITAGE is the essential feature
of the alleged registered trade mark INDIAN HERITAGE
SELECT under registration no.1149872. It is most respectfully
submitted that there is no disclaimer on "INDIAN" or
"SELECT" which form part of the said registration.
Nevertheless, the Defendant No.1‟s trade mark contains
HERITAGE which is the essential feature of the plaintiff‟s
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.9 of 45
registered trade mark No.799246. The plaintiff‟s trade mark
was applied for registration on 20th April 1998 whereas the
Defendant No.1 applied for registration of the trade mark
INDIAN HERITAGE SELECT as of 11 th November 2002
when sale of plaintiff‟s HERITAGE branded rice was over Rs.9
crores per annum. The use of the trade mark INDIAN
HERITAGE SELECT by the Defendant No.1 & 2 constitute
infringement of Plaintiff‟s registration of the trade mark
no.799246."
13. The plaintiff also filed application bearing I.A. No.4763/2009 under
Order XI, Rules 12 & 14 read with Section 151 CPC dated 08.04.2009 in
CS(OS) No.612/2009, seeking direction from the Court for defendant No.1,
Sunstar Overseas Limited and Sachdeva & Sons Rice Mills Limited to
produce the originals of the documents as per the detail given in Annexure-
P1. The contention in the application was that the documents filed by the
defendants alongwith affidavit of Mr. Vaneet Sachdeva are highly dubious
and fabricated to the extent that the trade mark "INDIAN HERITAGE
SELECT" has evidently been added on the invoices subsequently. In reply,
the defendants denied the allegations of the plaintiff. The said application
was allowed by order dated 03.08.2010, directions were issued to the
defendants to produce the originals/carbon copies of the invoices relied
upon. Liberty was granted to the said defendant either to file the same in the
Registry or produce in Court at the time of admission/denial of the
documents.
14. The interim order which was passed on 30.03.2009 in CS(OS)
No.612/2009 was clarified to the effect that if, there were other containers
which did not contain the brand name "INDIAN HERITAGE", then the
order would not come in the way of releasing the shipment.
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.10 of 45
The said order was further modified on 16.04.2009 to the extent that
without prejudice to the contentions of both sides, defendant No.1 was
allowed to export its consignment under the label "INDIAN HERITAGE
SELECT". Defendant No.1 was allowed to remove the label already put on
the consignments and to paste fresh labels of "INDIAN HERITAGE
SELECT" thereon. Further, customs department was directed to release the
consignments to defendant No.1 for re-labelling the same as "INDIAN
HERITAGE SELECT".
15. M/s. Sunstar Overseas Ltd. also filed similar application bearing I.A.
No.6241/2011 under Order XI, Rules 14 & 18 read with Section 151 CPC,
seeking direction of this Court to the plaintiff to produce on record the
documents, the detail of which is mentioned in para-11 of the application.
In reply, the contention of the plaintiff was that the application filed by
defendant No.1 is misconceived, as the said defendant has failed to comply
with the order dated 03.08.2010 in the plaintiff‟s application.
16. Both the parties made their rival submissions and also referred the
documents, report of Local Commissioner and objections thereto filed by the
defendants.
17. Admittedly, in these cases, both parties are claiming prior user of the
mark "HERITAGE" in respect of rice. They are also seeking the injunction
against each other.
18. As both parties are registered owners of the trade mark in question,
suit filed by them against each other for infringement of trade mark is
admittedly not maintainable in view of Section 28(3) of Trade Marks Act,
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.11 of 45
1999. However, it is not in dispute that suit for passing off is maintainable
as per settled law on this aspect.
19. Let me now examine the evidence produced by the parties in order to
come to the conclusion prima-facie which is the party who is the earlier user
of the trade mark in question. The plaintiff is claiming the user of the trade
mark since 1997. On the other hand, the defendants are claiming the user of
the trade mark since 1985. The defendants have also filed few invoices to
show prior user.
20. In order to come to the conclusion about the prior user, not only
cogent and clear evidence has to be examined, but also the conduct of the
parties at the relevant time has to be seen.
21. As far as the plaintiff‟s trade mark registration and other documents
filed are concerned, the said application for registration was filed by the
plaintiff bearing No.799246 dated 20.04.1998 and the certificate was issued
in the year 2005. The plaintiff has also filed the statement of total annual
sales of the trade mark "HERITAGE" for the period 1998 till 2009 in India.
The invoices pertaining to the year 1998 onwards till 2008-09 have also
been filed by the plaintiff. The annual sale of the plaintiff‟s HERITAGE
branded rice is reproduced here as under:-
ANNUAL SALES OF PLAINTIFF
Year Sales (Rs.)
1997-98 7,18,28,454
1998-99 4,96,30,411
1999-00 9,34,26,328
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.12 of 45
2000-01 7,16,55,556
2001-02 9,22,98,085
2002-03 10,94,29,380
2003-04 11,78,02,078
2004-05 10,52,57,717
2005-06 11,85,57,605
2006-07 9,12,77,072
2007-08 12,88,03,015
2008-09 12,31,71,755
22. The defendants have challenged the sale figures of the plaintiff by
stating that the same are under different trade marks and have also
challenged the validity of other documents but, one thing is very clear from
the documents filed by the plaintiff that the application for registration was
filed by the plaintiff on 20.04.1998 in the Trade Marks office, Government
of India, the said date cannot be disputed or manipulated by anyone.
Therefore, after having considered the entire documents, it appears prima-
facie, that the plaintiff was/has been using the trade mark continuously since
1998 in respect of rice as per evidence available on record.
23. In order to prove prior and earlier user of trade mark HERITAGE, the
defendants have also filed photocopies of invoices along with the affidavit
of Mr. Vaneet Sachdeva dated 02.04.2009, the details are given as under:-
(i) Shipping Bill Invoice No. & Date - SAS/Rice/94-95/034
19th August, 1994
Place of receipt - N.A.
Marks & Nos. - INDIAN HERITAGE
SELECT
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.13 of 45
(ii) Shipping Bill Invoice No. & Date - SAS/Rice/94-95/104
17th February, 1995
Place of receipt - Factory/ICD DLM
Marks & Nos. - INDIAN HERITAGE
SELECT
(iii) Shipping Bill Invoice No. & Date - SAS/Rice/94-95/106
(two copies pages 44 & 45)
Place of receipt - Factory/ICD LDH.
Marks & Nos. - INDIAN HERITAGE
SELECT
(iv) Invoice No. & Date - SAS/Rice/95-96/006
10th June, 1995
Place of receipt - N.A.
Marks & Nos. - INDIAN HERITAGE
SELECT
(v) Commercial Invoice No. & Date - SAS/Rice/95-96/060
9th October, 1995
Place of receipt - N.A.
Marks & Nos. - INDIAN HERITAGE
SELECT
(vi) Commercial Invoice No. & Date - SAS/Rice/95-96/158
19th February, 1996
Place of receipt - Ludhiana CY
Marks & Nos. - INDIAN HERITAGE
SELECT
(vii) Commercial Invoice No. & Date - SAS/Rice/95-96/183
7th March, 1996
Place of receipt - Ludhiana CY
Marks & Nos. - INDIAN HERITAGE
SELECT
(viii) Combined Transport Bill of Lading No. - KROK-0040
Place of receipt - ICD, Ludhiana
Marks & Nos. - INDIAN HERITAGE
SELECT
(ix) Bill of Lading No. - DEL-526
Place of receipt - ICD, (TKD), N. Delhi
Marks & Nos. - INDIAN HERITAGE
SELECT
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.14 of 45
(x) Invoice No. & Date - SAS/Rice/96-97/095
23rd August, 1996
Place of receipt - ICD, Ludhiana
Marks & Nos. - INDIAN HERITAGE
SELECT
(xi) Commercial Invoice No. & Date - SAS/Rice/99-2000/48
28th October, 1999
Place of receipt - Ludhiana
Marks & Nos. - INDIAN HERITAGE
SELECT
(xii) Bill of Lading No. - SKHS/DEL/HAM-781
Port of Lading - ICD/Ludhiana
Marks & Nos. - BASMATI RICE
(xiii) Bill of Lading No. - (not legible)
Port of Lading - NSICT
Marks & Nos. - BASMATI RICE
(xiv) Bill of Lading No. - KDL/DXB/2003-04
Place of receipt - (not legible)
Marks & Nos. - INDIAN RICE
(xv) Invoice No. & Date - SRML/RICE/03-04/13
21st May, 2003
Place of receipt - N.A.
Marks & Nos. - INDIAN HERITAGE
SELECT
(xvi) Bill of Lading No. - KDL/DXB/2003-04
Place of receipt - (not legible)
Marks & Nos. - INDIAN RICE
(xvii) Invoice No. & Date - SRML/RICE/04-05/3
15th April, 2004
Place of receipt - ICD, Amritsar
Marks & Nos. - INDIAN HERITAGE
SELECT
(xviii) Invoice No. & Date - PFPL/RICE/80/05-06
23rd February, 2006
Place of receipt - ICD, Ludhiana
Marks & Nos. - INDIAN HERITAGE
SELECT
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.15 of 45
(xix) Invoice No. & Date - PFPL/RICE/13/06-07
19th June, 2006
Place of receipt - ICD, Ludhiana
Marks & Nos. - INDIAN HERITAGE
SELECT
(xx) Invoice No. & Date - PFPL/RICE/07-08/20
3rd December, 2007
Place of receipt - ICD, Ludhiana
Marks & Nos. - HERITAGE SELECT &
KITCHEN KING
(xxi) Invoice No. & Date - PFPL/RICE/08-09/13
19th June, 2008
Place of receipt - ICD, Ludhiana
Marks & Nos. - INDIAN HERITAGE
SELECT
24. The learned counsel for the defendants has also referred the Trade
Mark Journals and US registration granted in favour of his client. The US
registration was granted on the application filed by one Mr. Sandip Patel on
25.09.2001. One Roshika Trading Est. has also issued the certificate in
favour of Sachdeva & Sons Rice Mills Limited, by stating that they have
been dealing with the said defendant from 2000-2004. Another Certificate
of Daawat Foods Int‟l Inc. dated 09.04.2009 was also produced by the
defendant stating that they are buying the goods from Sachdeva & Sons Rice
Mills Limited/ Sachdeva and Sons, and Pari Foods P. Ltd. under "INDIAN
HERITAGE SELECT"/ "INDIAN HERITAGE" brand and various other
markings as per the demand in the market, regularly since 2002. The
defendant has also placed on record copy of partnership deed dated
03.04.1981 which states that they are in the business of exporting rice.
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.16 of 45
25. The defendants have also filed copy of the registration certificate
bearing No.1149872 as of 11.11.2002 bearing the mark "INDIAN
HERITAGE SELECT".
26. Learned counsel appearing on behalf of the defendants referred 21
invoices for export of rice which are from the period 1994, in order to show
the prior user. He submits that these are genuine invoices as the goods
under the said invoices were sent to the foreign clients through Custom
Department. He also referred the bank certificates in support of his
submissions. He says that the main cause of filing the suits by the plaintiff
is the letter dated 05.01.2006 written by one Sandeep Patel who has some
problem with the plaintiff and he later on, started purchasing the rise from
the defendants and it caused a grudge in the mind of plaintiff thus, the suit
was filed.
27. As already mentioned, copies of 21 invoices filed by the defendant
alongwith affidavit about the prior user claimed has been challenged by the
plaintiff from very beginning. As per plaintiff‟s case, these are
manipulated, forged and fabricated claims. The plaintiff in order to support
its claim, filed attested copies of three invoices by Customs Department out
of 21 invoices which show that the trade marks mentioned in three invoices
are either Indian Basmati or Super or Kichen King brand and not mark
HERITAGE as shown in the same very invoices filed by the defendants
alongwith affidavit.
28. The details of the three invoices filed along with the affidavit of
Mr. Vineet Maheshwari of July, 2009 are given as under:-
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.17 of 45
(i) Invoice No. & Date - PFPL/RICE/08-09/13
19th June, 2008
Shipping Bill No. - 1044 dated 20.6.2008
Place of receipt - ICD, Ludhiana
Marks & Nos. - INDIAN BASMATI
RICE
(ii) Invoice No. & Date - PFPL/RICE/13/06-07
19th June, 2006
Shipping Bill No. - 000530 dated 22.6.2008
Place of receipt - ICD, Ludhiana
Marks & Nos. - INDIAN BASMATI
RICE
(iii) Invoice No. & Date - PFPL/RICE/07-08/20
3rd December, 2007
Shipping Bill No. - 1443 dated 6.12.2007
Place of receipt - ICD, Ludhiana
Marks & Nos. - SUPER AND KITCHEN-
KING BRANDS
29. The plaintiff has also referred its application of discovery of
documents and order dated 03.08.2010 in which the defendants were
directed to produce original/carbon copies of the invoices relied upon, but,
inspection of carbon copies of invoices as directed by the court but the same
was not given by the defendant. They have also not produced the same at
the time of admission denial of documents. The defendants made statement
that prior to 2005 record is not available with the defendants.
30. The admission/denial of the parties was carried out on 01.10.2010.
The matter was listed before Court for 07.12.2010 when counsel for the
Custom Department was also present who informed the court that the
goods were exported by the parties from Customs Department of Delhi and
Amritsar, thus, more time was sought by him for the purpose of verification
of invoices of the parties and for a report as to whether the invoices
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.18 of 45
purported to be filed by the respective sides are genuine invoices or not.
The report however, in this regard was not produced.
31. Later on, when the matter was listed on 26.05.2011 alongwith
applications, the matter was sent to the Joint Registrar for hearing on
18.07.2011. In the application filed by the defendants being I.A.
No.6241/2011 for discovery of documents, on the submission of the
plaintiff the Court has passed the following order:-
"1. The learned counsel for the plaintiff submits that the
Sachdeva and Sons Rice Mills Limited has produced the
various invoices along with the affidavit dated 2 nd April, 2009
whereupon the plaintiff made inquiries from the office of the
Customs Department at Amritsar and obtained copies of three
invoices from the Customs Department which were at variance
from the copies produced by Sachdeva and Sons Rice Mills
Limited.
2. It is submitted that the trademark mentioned in the three
invoices produced by Sachdeva and Sons Rice Mills Limited
are different from the trademark mentioned in the copies of
three invoices bearing the same invoice numbers of Sachdeva
and Sons Rice Mills Limited obtained from the Customs
Department. The learned counsel for the plaintiff submits that
Sachdeva and Sons Rice Mills Limited has forged the
trademark on the invoices produced by defendant No.1.
3. The learned counsel for defendant No.1 disputes that
Sachdeva and Sons Rice Mills Limited has forged the
trademark on the copies of the invoices produced by them.
4. Vide order dated 25th October, 2010 and 7 th December,
2010, this Court directed the Customs Department to verify the
invoices produced by the parties. The copies of the invoices of
the respective parties have been given to the learned Standing
Counsel for Customs Department for verification. However,
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.19 of 45
the verification report has still not been submitted.
5. The learned counsel for the plaintiff submits that the
Local Commissioner be appointed to inspect the record of the
Customs Department to verify the copies of the invoices
produced by Sachdeva and Sons Rice Mills Limited as well as
the copies of three invoices produced by the plaintiff which are
at variance from the copies produced by Sachdeva and Sons
Rice Mills Limited.
6. The learned counsel for defendant No.1 has no objection
to the appointment of the Local Commissioner but he submits
that the Local Commissioner should also verify the copies of
the invoices produced by the plaintiff to which the learned
counsel for the plaintiff has no objection.
7. With the consent of both the parties, Mr. Lorren
Bamniyal, Joint Registrar, Delhi High Court (MB:
9910390952) is appointed as Local Commissioner to visit the
office of the Customs Department at Amritsar and the office of
Director General of Foreign Trade at Amritsar to verify the
copies of the invoices filed by Sachdeva and Sons Rice Mills
Limited as well as the copies of the three corresponding
invoices produced by the plaintiff. His fee is fixed at
Rs.60,000/- to be paid by the plaintiff. Mr. D.S. Rawat,
Assistant Registrar, Delhi High Court (MB: 9717991827) is
appointed as Local Commissioner to visit the office of the
Customs Department at ICD Loni and ICD Tuglakabad. His fee
is fixed at Rs.50,000/- to be paid by the defendant.
8. The Commissioner of Customs Department at Amritsar
and the Director General of Foreign Trade shall provide all
relevant records for inspection to the Local Commissioner. The
counsels for the parties along with their one representative is
permitted to accompany the Local Commissioner at the time of
the inspection. The Customs Department as well as Director
General of Foreign Trade shall also provide the inspection of
the other invoices of Sachdeva and Sons Rice Mills Limited to
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.20 of 45
enable the Local Commissioner to verify them. All invoices
found relevant by the Local Commissioner shall be signed by
the Local Commissioner and copies thereto shall be provided to
the Local Commissioner for being filed before this Court along
with the report. The competent officer of the Customs
Department shall attest the photocopies of the documents
before handing over the same to the Local Commissioner.
9. The learned counsel for the plaintiff submits that the
invoices of the plaintiff are available with the Customs
Department at ICD Loni and ICD Tuglakabad. The Local
Commissioner shall visit the office of the Customs Department
at ICD Loni and ICD Tuglakabad to verify the copies of the
invoices of the plaintiff. The Commissioner of Customs, ICD
Loni and ICD Tuglakabad shall provide all relevant records for
inspection to the Local Commissioner who shall verify the
copies of the invoices furnished by the plaintiff as well as the
other invoices found relevant. The competent officer of the
Customs Department shall attest the photocopies of the
documents before handing over the same to the Local
Commissioner.
10. The parties shall furnish the copies of the relevant
invoices to the Local Commissioner for verification.
11. The Local Commissioner shall submit his report
within 15 days of the inspection. As requested by learned
counsel for the plaintiff, the Local Commissioner appointed to
visit Amritsar shall execute the commission tomorrow.
12. List for examining the report of the Local Commissioner
and for hearing on the pending applications before Court on
25th August, 2011.
13. Copy of this order be given „Dasti‟ to learned counsel for
both the parties under signature of Court Master.
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.21 of 45
14. Copy of this order be also sent to the learned Standing
Counsel for Customs Department for compliance."
32. In view of the order passed on 26.05.2011, the Local Commissioner
visited the office of the Director General of Foreign Trade (DGFT),
Amritsar, as well as the office of the Superintendent (Customs) ICD,
Chheharta, Amritsar on 27.05.2011, accompanied with the representative of
the plaintiff and its counsel. The proceedings were also attended by the
representative of the Sachdeva & Sons Rice Mills Limited/defendant No.1
and its counsel.
33. Copy of the order dated 26.05.2011 was served upon the Deputy
Director General of the Foreign Trade who informed the Local
Commissioner that the records prior to 2005 have been weeded out as per
the departmental instructions. Thus, the inspection of those documents is
not possible.
34. The Local Commissioner on 30.05.2011 has filed his report along
with Annexure-A to Annexure-Q. The index of report reads as under:
S. No. Particulars Pages
1 Report of the Local Commissioner 1 - 15
2 Annexure 'A' - Invoices/Shipping Bills provide for 16 - 46
verification
3 Annexure 'B' - Shipping Bill No. 1443 dated 47 - 48
05.12.2007 received from the O/o Dy. Director
General of Foreign Trade
4 Annexure 'B-1' - Attested copy of Bank Certificate 49
of Export and Realization in support of „B‟ above.
5. Annexure 'C' - Letter dated 27.05.2011 issued by 50
the Dy. Director General of Foreign Trade
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.22 of 45
6 Annexure 'D' - Invoice dated 15.04.2004 alongwith 51 - 55
Shipping Bill No. 00199 dated 17.04.2004
7 Annexure 'E' - Invoice dated 03.12.2007 alongwith 56 - 58
Shipping Bill No. 1443 dated 06.12.2007
8 Annexure 'F' - Letter dated 27.05.2011 issued by 59
the Superintendent (Customs) ICD Chheharta,
Amritsar
9 Annexure 'G' - Attested copy of Shipping Bill No. 60 - 60A
0997 dated 12.06.2008
10 Annexure 'H' - Attested copy of Invoice dated 61 - 64
12.06.2006 alongwith Shipping Bill No. 00531 dated
22.06.2006
11 Annexure 'I-Q' - Attested copies of „Other invoices 65 - 101
and shipping bills pertaining to M/s Sachdeva &
Sons‟
35. If the entire report of the Local Commissioner is read carefully, it
appears that the trade mark HERITAGE SELECT in the invoices available
in the department has been interpolated by replacing the word Super,
Kichen King brands. The details in this regard are gathered by the Local
Commissioner from different Customs Departments. Verification and
inspection of the documents by the Local Commissioner appointed by the
Court reveal that the affidavits filed by both the defendants i.e. Mr. Vaneet
Sachdeva and another affidavit of Rakesh Aggarwal, Managing Director of
Sunstar Overseas Ltd. are false. In the pleadings also, the defendants have
made incorrect statement. The entire report speaks of itself.
36. The relevant extract of the report is given as under:
"A. The said invoice, filed along with the affidavit of Mr. Vaneet
Sachdeva has the corresponding Shipping Bill No. 1443 dated
6.12.2007, which is mentioned on the invoice itself at the bottom.
The other particulars on the invoice and the Shipping Bill, available in
the office of the Director General of Foreign Trade, are identical
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.23 of 45
except that under the column marks and Nos., the invoice shows
"HERITAGE SELECT AND KITCHEN KING" whereas in the
corresponding Shipping Bill No. 1443 dated 6.12.2007 for the same
consignment to the same consignee the marks and Nos. read as
"SUPER" AND "KITCHEN KING" BRANDS.
B. However, for none of the 21 invoices, the Customs Department
was able to locate the individual file of the consignment. Fortunately,
in two thick files containing random shipping documents, the invoices
along with corresponding shipping documents could be found in
respect of the following two invoices:-
(i) Invoice No. & Date - SRML/RICE/04-05/3
15th April, 2004
Place of receipt - ICD, Amritsar
Marks & Nos. - INDIAN HERITAGE
SELECT
(ii) Invoice No. & Date - PFPL/RICE/07-08/20
3rd December, 2007
Place of receipt - ICD, Ludhiana
Marks & Nos. - HERITAGE SELECT &
KITCHEN KING
Verification of (i) above:
The invoice filed along with the affidavit of Mr. Vaneet
Sachdeva (page-60) was the same as produced by the Customs
Department at ICD Chheharta except for the following:-
(a) The port of discharge and the final destination had been
changed, by hand, from New York to Oakland whereas in the copy
filed along with the affidavit of Mr. Vaneet Sachdeva before this
Hon‟ble Court, the correction by hand is not there and Oakland is
shown in typed words.
(b) The marks and Nos. in the invoice procured from the office of
Customs Department read as "BASMATI RICE", whereas in the
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.24 of 45
invoice filed along with the affidavit of Mr. Vaneet Sachdeva, it reads
as "INDIAN HERITAGE SELECT".
The invoice procured from the Customs Department is
supported by the Shipping Bill No. 000199, the bank certificate of
export and realization, the packing list and the bill of lading.
Apparently, the words "BASMATI RICE" as appearing in the invoice
procured from the Customs Department appear to have been replaced
by the words "INDIAN HERITAGE SELECT" in the invoice filed in
this Hon‟ble Court along with the affidavit of Mr. Vaneet Sachdeva.
Verification of (ii) above:
The invoice filed along with the affidavit of Mr. Vaneet
Sachdeva was the same as produced by the Customs Department at
ICD Chheharta except that in the column of marks and Nos. in the
invoice procured from the office of Customs Department the words
written are "SUPER" AND "KITCHEN KING" BRANDS, whereas
in the invoice filed along with the affidavit of Mr. Vaneet Sachdeva, it
reads as "HERITAGE SELECT AND KITCHEN KING".
The invoice procured from the Customs Department is
supported by the Shipping Bill No. 1443 dated 6.12.2007 and the bank
certificate of export and realization. Apparently, the word "SUPER"
as appearing in the invoice procured from the Customs Department
appears to have been replaced by the words "HERITAGE SELECT"
in the invoice filed in this Hon‟ble Court along with the affidavit of
Mr. Vaneet Sachdeva.
C. Invoice No. & Date - PFPL/RICE/08-09/13
19th June, 2008
Shipping Bill No. - 1044 dated 20.6.2008
Place of receipt - ICD, Ludhiana
Marks & Nos. - INDIAN BASMATI
RICE
In respect of Shipping Bill No. 1044 dated 20.6.2008, the
corresponding record in the Customs Department was not available.
Mr.Satnam Singh, Superintendent Customs, neither admitted nor
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.25 of 45
denied the veracity of the document. However, for the purposes of
verification of signatures of the officers of the Customs Department
on the said document, a request was made to Mr. Satnam Singh to
kindly produce another Shipping Bill executed by the same officer. In
response, Mr. Satnam Singh produced Shipping Bill No. 0997 dated
12.6.2008 in respect of exports made by M/s. ESSMA Woolen Mills
bearing the signatures of the same officer Mr.Bajwa. The signatures
on the two Shipping Bill Nos. 1044 and 0997 are by the same officer
and the signatures are also identical. Accordingly, to the extent of
authenticity of signatures it can be stated that the Shipping Bill
bearing No. 1044 filed along with the affidavit of Mr. Vineet
Maheshwari is genuine even though the copy thereof is not officially
issued by the Customs Department. A copy of the Shipping Bill No.
0997 dated 12.6.2008 is enclosed with this report and is marked as
Annexure - 'G'.
(ii) Invoice No. & Date - PFPL/RICE/13/06-07
19th June, 2006
Shipping Bill No. - 000530 dated 22.6.2008
Place of receipt - ICD, Ludhiana
Marks & Nos. - INDIAN BASMATI
RICE
In respect of Shipping Bill No. 000530 dated 22.6.2006, the
corresponding record in the Customs Department was not available.
Mr.Satnam Singh, Superintendent Customs, neither admitted nor
denied the veracity of the document. On request, the record in respect
of Shipping Bill No. 000531 of the same date of M/s. Pari Foods
Private Limited was inspected for the purposes of verification of the
signatures on the two documents.
D. Invoice No. & Date - PFPL/RICE/07-08/20
3rd December, 2007
Shipping Bill No. - 1443 dated 6.12.2007
Place of receipt - ICD, Ludhiana
Marks & Nos. - SUPER AND KITCHEN-
KING BRANDS
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.26 of 45
In respect of Shipping Bill No. 1443 dated 6.12.2007 filed
along with the affidavit of Mr. Vineet Maheshwari, the Customs
Department made available the corresponding original document.
E. As regards the "other invoices" of Sachdeva and Sons Rice
Mills Limited, on inspection of the record, Mr. Satnam Singh,
Superintendent (Customs), ICD Chheharta, made available the
following Shipping Bills along with supporting documents pertaining
to M/s. Sachdeva and Sons:-
(i) Shipping Bill Invoice No. & Date - SAS/Rice/01-02/52
2nd March, 2002
Place of receipt - ICD, Ludhiana
Mark & Nos. - HASSANI
59001/02, Dubai
(ii) Shipping Bill Invoice No. & Date - SAS/Rice/00-01/26
19th March, 2001
Place of receipt - ICD, Ludhiana
Mark & Nos. - RAJA FOODS
(iii) Shipping Bill Invoice No. & Date - SRML/Rice/04-05/13
24th May, 2004
Place of receipt - Mumbai
Mark & Nos. - PARI
(iv) Shipping Bill Invoice No. & Date - SRML/Rice/04-05/42
29th July, 2004
Place of receipt - Mumbai
Mark & Nos. - INDIAN BASMATI
RICE
(v) Shipping Bill Invoice No. & Date - SRML/Rice/04-05/21
10th January, 2004
Place of receipt - Mumbai
Mark & Nos. - PARI & KITCHEN
KING
(vi) Shipping Bill Invoice No. & Date- SAS/Rice/01-02/12
13th June, 2001
Place of receipt - ICD, Ludhiana
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.27 of 45
Mark & Nos. - KITCHEN KING &
PRIYA BRANDS
(vii) Shipping Bill Invoice No. & Date - SRML/Rice/04-05/12
8th May, 2004
Place of receipt - Mumbai
Mark & Nos. - PARI
(viii) Shipping Bill Invoice No. & Date- SRML/Rice/04-05/14
24th May, 2004
Place of receipt - Mumbai
Mark & Nos. - INDIAN BASMATI
RICE
(ix) Shipping Bill Invoice No. & Date - SAS/Rice/00-01/27
19th March, 2001
Place of receipt - ICD, Ludhiana
Mark & Nos. - DEER BRAND
These Shipping Bills pertain to the period from 2000-2005. An
examination of these Shipping Bills reveals that M/s. Sachdeva and
Sons have not used the Mark "HERITAGE" in any of their exports as
evidenced by the Shipping Bills and supporting documents made
available by the Customs Department."
37. Mr. Manish Vashisht, learned counsel appearing on behalf of
Sachdeva & Sons Rice Mills Limited has referred the objections dated
12.07.2011 filed to the report of the Local Commissioner. It is argued by the
learned counsel that the Local Commissioner has gone beyond the scope and
ambit of the order dated 26.05.2011. He has also exceeded his jurisdiction
while inspecting the records, as would be clear from the reading of the
report, and he actually decided the dispute between the parties. The
defendants at the appropriate stage would cross examine him so that the
report is set aside.
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.28 of 45
38. He further states that the certificates issued by the Union Bank of
India and the Oriental Bank of India, which are in respect of the contentions
of the defendant have been filed before this Court. The said certificates
negate the report of the Local Commissioner. In support of his contentions,
the learned counsel for the defendant No.1 has also referred the judgment
passed in the case of Alka Gupta vs. Narender Kumar Gupta, reported in
(2010) 10 Supreme Court Cases 141, the relevant paragraphs of which read
as under:-
"30. But where the summons have been issued for settlement
of issues, and a suit is listed for consideration of a preliminary
issue, the court cannot make a roving enquiry into the alleged
conduct of the plaintiff, tenability of the claim, the strength and
validity and contents of documents, without a trial and on that
basis dismiss a suit. A suit cannot be short-circuited by deciding
issues of fact merely on pleadings and documents produced
without a trial.
xxxxxxxxx
That even on the facts of this case, I have no doubt that
the plaintiff has abused the process of the court. The plaintiff in
the Bayana Agreement aforesaid had clearly agreed to the sum
of Rs. 21.50 lacs towards her share in the partnership firm
inclusive of the value of the Rohini property where the
partnership business was being carried on. As far as the
Paschim Vihar property is concerned, the issue with respect
whereto was raised, the same also finds mention in the said
Bayana Agreement and the receipt. The conduct of the plaintiff
also shows that all accounts had been settled and no accounts
remained to be taken and for which purpose the suit had been
filed. Had the accounts not been settled, the question of the
plaintiff instructing the bank to delete her name from the
account in the name of the firm and of receiving the original
Bayana Agreement and of obtaining the clearance certificate
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.29 of 45
aforesaid would not have arisen. The case set up by the plaintiff
is contrary to all the admitted documents.
xxxxxxxxx
I find the present case to be clear beyond all reasonable
doubts. The Bayana Agreement and Receipt admittedly
executed by plaintiff and the averments of plaintiff in plaint in
earlier suit instituted by plaintiff, permit of no controversy. The
consideration mentioned therein was in settlement of all claims
of plaintiff with respect to her share in partnership. The
contemporaneous conduct of plaintiff, of statement on 13 th
August, 2004 in suit No. 438/2004 instituted by defendant; of
taking clearance certificate dated 13 th August, 2004 from
defendant, of having her name as signatory deleted from the
bank account of firm are also in consonance with said
documents. The facts of this case do not require any
opportunity for leading evidence to be given to the plaintiff.
This Court cannot put a case contrary to such documents and
conduct to be put to trial. The explanations now given during
arguments do not form the basis of suit and pleadings."
(emphasis supplied)
39. Reply to the objection to the Local Commissioner‟s report has been
filed by the plaintiff who referred the extracts quoted from the Local
Commissioner‟s report in respect of the invoices. Counsel submits that as
defendants have been caught read handed and they are now raising false
and frivolous objections. He further submits that the invoices were
inspected and verified by the Local Commissioner in the presence of
defendants and their counsel and also before the senior officers of the
Customs Department. All the objections raised by the counsel for the
defendants were duly recorded by the Local Commissioner. According to
him, the report of Local Commissioner shows that the entire defence of the
defendants in the written statement and two affidavits of the parties is false
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.30 of 45
and fabricated. There was no occasion for the Customs Department to forge
the documents nor the Local Commissioner appointed by this court has any
interest in the matter.
40. It appears from the record that in view of the affidavits filed by the
defendants by which they are claiming the prior user of trade mark on the
basis of these invoices and by considering the sensitivity of the matter, the
Court appointed a senior officer of this Court as Local Commissioner for the
purpose of inspection and verification of the documents of the parties
including the invoices relied upon by the defendants i.e. Sachdeva & Sons
Rice Mills Limited.
41. The Local Commissioner in terms of the order dated 26.05.2011 has
made verification of the documents. In the order dated 26.05.2011, it was
mentioned that the respective offices would provide the copies of all
invoices found relevant by the Local Commissioner. Prima-facie, I do not
find anything wrong from the report that the Local Commissioner has
exceeded his jurisdiction, rather the report has helped the court in arriving at
the conclusion that the defendants were not making the correct statement
before court. The said documents show that the impugned trade marks
"INDIAN HERITAGE" and "INDIAN HERITAGE SELECT" were not
mentioned in the column of numbers and marks at the time of booking of the
transaction and the description of the goods contains either INDIAN
BASMATI RICE or KITCHEN KING at that time.
42. There is hardly any justification given by the defendants about the pre
and post shipment stages, by alleging that later on, the trade mark "INDIAN
HERITAGE" or "INDIAN HERITAGE SELECT" were mentioned in the
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.31 of 45
post-shipment stage and the mark was modified on shipping document. The
said justification is not acceptable to this Court. In fact, both the defendants,
Sunstar Overseas Limited and Sachdeva & Sons Rice Mills Limited have
tried to mislead the Court and have been trying to make afterthought story
about pre-shipment and post-shipment documents, as they have failed to
explain, as to why the column "description of goods" contain INDIAN
BASMATI RICE whereas the mark referred in the column "marks and
numbers" on the documents produced in the Court was "INDIAN
HERITAGE SELECT".
43. The shelter of the two certificates issued by the banks by the
defendants is without any substance as they might not be aware about the
technicalities as well as the disputes between the parties. Infact they only
confirmed the transaction involved in the matter.
44. After filing of the report, the plaintiff also filed an application under
Section 151 CPC, bearing I.A. No.9855/2011 in CS(OS) No.612/2009 for
passing the immediate order of injunction against the defendant No.1 from
using the impugned trade mark of the plaintiff and seeking reference of the
matter to the Crime Branch, Delhi Police for registration of a case against
the Directors of Sachdeva & Sons Rice Mills Limited and its Manager, Mr.
Vaneet Sachdeva who have committed the offence of perjury and fabrication
of evidence before this Court.
45. Notice of this application was issued on 03.06.2011. It was also
ordered that the competent Officer of defendant No.1 would remain present
in the Court on the next date of hearing.
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.32 of 45
46. The law in respect of adverse presumption is well settled that the party
who withholds a document or evidence from the court knowingly that the
said document will operate to his disadvantage, the court can draw an
adverse inference against such a party, in view of the clear applicability of
the maxim omnia praesumuntur contra spoliatorem. The Supreme
Court in the case of Pradip Buragohain vs. Pranati Phukan, 2010 (6)
SCC 614 held:
"We may in this regard refer to illustration (g) to Section 114 of
the Evidence Act which permits the Court to draw an adverse
presumption against the party in default to the effect that
evidence which could be but is not produced would, if
produced, have been unfavourable to the person who withholds
it. The rule is contained in the well-known maxim : omnia
praesumuntur contra spoliatorem. If a man wrongfully
withholds evidence, every presumption to his disadvantage
consistent with the facts admitted or proved will be adopted."
(Emphasis Supplied)
47. It is equally well settled that the court will not assist the party whose
case is founded on the falsehood, and the equitable reliefs like injunctions
which are discretionary are not available to such party.
48. In the case of Mahomed Oomer Mahomed Noorulla Sahib vs. S.M.
Nooruddin, AIR 1956 Bombay 76, Hon‟ble Justice Chagla (as his lordship
then was) noting the observations of Lord Macnaughten has succinctly
emphasized the significance of truthfulness of the case of the party. The
Hon‟ble Bombay High Court observed thus:
"It must be remembered that before the Trade Marks Acts were
passed it was the Court of equity that came to the rescue of
merchants whose trade marks were being infringed and gave an
injunction preventing the infringement of the trademarks, and in
exercising the equitable jurisdiction in granting the injunction
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.33 of 45
undoubtedly the Court of equity did not overlook certain well
settled principles which apply to the exercise of an equitable
jurisdiction, and Lord Macnaghten in this very judgment points
out (p. 262):
"Ever since courts of equity have interfered to protect
traders in the exclusive use of marks and words which
they have lawfully appropriated for the purpose of
distinguishing their goods, it has been an established
principle that this protection is riot be extended "to
persons whose case is not founded in truth." That is said
to be 'a clear rule'." (Emphasis Supplied)
"Respect for truth is no less important here than it is in England
and it is not less necessary that respect for truth should be
encouraged in our country than it is in England. Not only is this
principle based on general equitable principles, but it has been
(sic) in clear language in a case reported in 'In the matter of
Burcombe & Co. Ltd.'s application', (1948) 65 RPC 179 (B).
Mr. Desai is right that as far as the facts of the case were
concerned, it was a very gross case." (Emphasis Supplied)
49. These observations were made in the context of the grant of the
benefit of honest and concurrent user wherein the court has held that the said
principle operates on equitable principles like the grant of injunction and
truthfulness or falsity in the claim is thus a potent factor in the grant or
refusal of relief. Thus, I fully endorse the view expressed in Mohommed
Oomer (supra) and find my respectful agreement to the same.
50. No doubt, the documents were filed by the defendants in order to
claim the prior user of the trade mark "INDIAN HERITAGE SELECT"/
"HERITAGE SELECT" as per report are not genuine. It is very clear that
the defendants failed to make out any case of prior user of the trade mark
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.34 of 45
HERITAGE as there is no clear and cogent evidence available on record to
show user of the defendant prior to 2002 i.e. the date of application i.e.
11.11.2002. In the year 2002 the plaintiff had sales of over Rs.9 cores.
51. The defendants have not furnished sales figures for any financial year.
Filing of copy of partnership deed of the defendants only shows that they
were doing their business in this trade. Even claiming of user in the Trade
Mark Registry has consequence as it was merely a declaration made by
them but as far as documents are concerned, these are not available with
the defendants from the date of user claimed at the time of registration or
before this Court.
52. The similar aspect has been dealt by this Court and other Courts
regarding the prior user claimed by the respective parties in the following
cases :
(a) One of the celebrated case, in which the judgment has been given by
the Division Bench of this Court, is Kirorimal Kashiram Mktg. &
Agencies Pvt. Ltd. vs. Shree Sita Chawal Udyog Mill Tolly Vill, reported
in 2010 (44) PTC 293 (Del.) (DB), the relevant para of which reads as
under:-
"10. The aspect of deceptive similarity we have already
discussed above and held in favour of the appellant. In support
of his second contention pertaining to delay/latches, learned
counsel referred to some stray bills from 1999 till the year 2003
and more specifically relied upon a typed chart showing the
alleged sale figures of the respondent with respect to the mark
"Golden Deer" that the sales were in the region of 3 to 5 crores.
In our opinion, the documents relied upon by the respondent do
not inspire confidence. Merely because some documents are
filed by a party, the court is not bound to believe them. A court
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.35 of 45
must apply its mind to such documents to ensure that there is
reasonable credibility and genuineness in the same so that the
same can be relied upon to weigh the respective strength of the
cases of the parties, otherwise, any and every document not
having genuineness/credibility will be filed to deny relief to the
opposite party. No doubt a mini trial is not conducted at the
stage of grant of an interim injunction, however, the respective
strength of the cases of the parties have to be considered and
inherent in the same is right to see the genuineness and
credibility of the documents. That respective strength of the
cases set up by the parties have to be seen is no longer res
integra and this has been so held by the Supreme Court in its
two judgments reported as Colgate Pamolive (India) Ltd. Vs.
Hindustan Lever Ltd. (1999) 7 SCC 1 and Ramdev Food (P)
Ltd.Vs. Arvindbhai Rambhai Patel & others, (2006) 8 SCC
726 It is, in order to judge the prima facie genuineness and
credibility of the documents of the respondent, we put it to the
counsel for the respondent that if the sales were such huge why
only stray bills were filed and that no profit and loss account
and balance sheet or the audited accounts were filed so as to
substantiate the credibility and genuineness of the documents
being relied upon. The counsel for the respondent had no
answer. In our opinion, after all, if there were such huge sales
as claimed by the respondent with respect to the trademark
"Golden Deer" from the year 1999-2000 then surely it was not
difficult for the respondent to file audited accounts showing the
sale of "Double Deer" from 1999-2000 and myriad other
documents. In fact, we further and again put to learned counsel
for the respondent that whether any such documents have been
filed either before this court or before the learned Single Judge,
to which the counsel for the respondent admitted that no such
documents have been filed either before the learned Single
Judge or this Court. As held by the Supreme Court in the case
of Midas Hygiene Industries (P) Ltd & Anr. Vs. Sudhir
Bhatia & others (2004) 3 SCC 90 once there is a registered
trademark, certain amount of delay would not prevent grant of
an interim injunction. The delay is only of just about 2 odd
years. Interim injunction could have been refused only if the
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.36 of 45
delay on the part of the appellant/plaintiff was such so as to
result in acquiescence or grave prejudice to the respondent.
There is no question of acquiescence in the facts of the present
case, more so, because the adoption of the respondent is not
honest and the defence that the mark "Deer" was common to
the trade is clearly misconceived. It is in the light of this, we
are convinced that the respondent does not have any strength in
its case as compared to the case set up on the registered
trademark of the appellant. Our belief is further confirmed
because the counsel for the respondent stated that others traders
were also using the word mark "Deer" and that is why the
respondent adopted the same as it was common to trade,
however, when we refer to the documents which were relied
upon by the respondent on this aspect we find that as regards
the others who are using the word mark "Deer", the said trade
mark "Deer" is not being used with respect to the product rice
but is being used with respect to products such as Masalas,
Chicory Powder and Wheat Flour. Clearly, therefore, the
contention of the learned counsel for the respondent is
misconceived that the word mark "Deer" is common to the
trade of rice. In fact this shows that the dishonest adoption of
the word mark "Deer" by the respondent in its trademark
"Golden Deer" inasmuch as the appellant was already an
established and registered user of the trademark "Double Deer"
from 1985 when registration was first granted."
(b) Pioneer Nuts & Bolts Pvt. Ltd. vs. M/s. Goodwill Enterprises,
reported in 2009 (41) PTC 362 (Del.) (DB), the relevant para of which reads
as under:-
"18. In Amaravathi Enterprises v. Karaikudi Chettinadu, 2008
(36) PTC 688 (Madras) (DB), it was observed that apart from
prior continuous use of the trade mark and trade name, the
Defendant seeking to set up a defence of prior use under
Section 34 of the TM Act had to also prove the volume of sales.
In Veerumal Praveen Kumar v. Needle Industries (India) Pvt.
Ltd., 2001 (21) PTC PTC 889 (Delhi), a Division Bench of this
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.37 of 45
Court emphasized that a trade mark does not arise from the
mere use of a word or words or a formula or a mark. It had to
be shown that in relation to particular goods, there is a course of
trading and that a goodwill connecting the trader with the goods
by the reason of the trade mark under which the goods are
marketed has resulted. It was observed: "It follows that where,
in relation to particular goods, there is no such course of trading
as to give rise to goodwill, there is no interest to be protected by
a trademark and no such mark can subsist in vacuo."
(c) East African (I) Remedies Pvt. Ltd. vs. Wallace Pharmaceuticals
Ltd., reported in AIR 2004 DEL 74, the relevant para of which reads as
under:-
"12. .......Prima facie, there is some evidence to show the
prior user of the trademark `RIVOX' by the plaintiff in relation
to his antibiotic medicinal preparation though said user cannot
be said to be continuous and regular firstly because there were
no sales recorded during the period 1991-96, 1997 & 1998
except a few sporadic transactions of sales. On the other hand,
the defendant has been able to establish its sales for the year
1999-2000 which are in crores and its advertising and
promotional expenses for this product was in lacs of rupees
during the period 1999-2000 and the plaintiff was aware of the
defendant's using of the trademark since April, 1999 but did not
chose to file the suit promptly and, therefore, the suit can be
said to be suffering from delay/latches/acquisence. No evidence
has been brought on record to show that the plaintiff's product
is readily and regularly available in the market. Besides, the
plaintiff has not been able to show if it has acquired any
goodwill in its said trademark. The material placed from the
side of the defendant, on the other hand, shows that there was
no mis-representation by the defendant and the adoption of the
trademark was bona fide because the defendant was not aware
of the plaintiff's product at the time of commencement of use of
its trademark and had infact made the search at the office of the
trademarks registry to find out if a similar trademark is
registered or applied for. The adoption of the trademark
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.38 of 45
`REVOX' by the defendant appears to be honest and bona fide.
Apart from this, the facts and circumstances brought on record
would show that there is no likelihood of confusion or
deception as the trade names have been prominently depicted
on the product cartons having distinct get up and layout and the
products manufactured and being marketed by the plaintiff and
defendant are Schedule `H' drugs which cannot be sold out
without prescription. These are some of the several factors
which would show that the plaintiff has failed to establish a
prima facie case or that balance of convenience in his favor
entitling it for grant of an ad interim injunction. On the other
hand, having regard to the totality of the facts and
circumstances that the defendant has acquired a goodwill and
reputation and sales of its multi-vitamin drug product under
trademark `REVOX' being in crores during the preceding years,
it appears to this Court that balance of convenience, if any, lies
in favor of the defendant rather than the plaintiff. The defendant
is likely to suffer irreparable loss and injury in case it is
injuncted from manufacturing and selling the said product
under the trademark `REVOX'. This Court at best can hope and
expect that the Registrar of Trademarks will investigate into the
pending applications of the parties and decide the said
applications as expeditiously as may be practicable. Besides, it
would be desirable to protect the interest of the plaintiff during
the pendency of the suit."
(d) Kores (India) Limited vs. Whale Stationery Products Ltd.,
reported in 2008(36) PTC 463, the relevant para of which reads as under:-
"18. In IndoPharma Pharmaceutical Works Private
Limited v. Pharmaceutical Company of India, 80 Bombay
Law Reporter 73, a learned Single Judge of this Court
considered the requirement of a continuous user from a date
prior to the registration of the other mark in Section 33 of the
Trade and Merchandise Marks Act, 1958. This judgment is
authority for the proposition that the requirement of a
continuous prior user must be established on the basis of clear
and cogent evidence. The evidence led by a party seeking to
establish a continuous prior user will be required to be
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.39 of 45
considered in the background of the nature of the product, the
type of sales, the territory within which it is sold and the scale
of manufacture of the party. In the present case, prima facie at
this stage, there is no material to indicate a continuous prior
user of the mark by the Defendant within the territory of India
prior to the registration of the mark by the Plaintiff. That being
the position, the action by the Plaintiff for infringement can
validly be founded on the rights of the Plaintiff as a registered
proprietor under Sections 28 and 29 of the Trade Marks Act,
1999. The Plaintiff has made out a prima facie case for the
grant of an interlocutory injunction both on the basis of
infringement and passing off. Considering the fact that the
business of the Defendant within the territory of India has only
recently commenced and having regard to the scale and
character of the business, the balance of conveyance requires an
order of interlocutory injunction to be passed in the interest of
justice."
53. During the course of hearing of interim application, the learned
counsel for the defendant - Sachdeva & Sons Rice Mills Limited has pointed
out that in order to prove the prior user of the trade mark in question
"HERITAGE", his client has filed the original magazines and
advertisements in the Rectification proceedings filed by it, against the
registered trade mark of the plaintiff - LT Foods Limited. Two weeks‟ time
was granted to the defendant to produce the said original record before the
Court and the matter was put up for remaining submissions on the pending
applications, on 29.02.2012. However, on the said date, the defendant failed
to produce any original documents in order to show the prior user of the
trade mark "HERITAGE" in question, except some photocopies of the
documents, one of them was advertisement, the date and details are not
mentioned in the said documents.
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.40 of 45
54. It is a matter of fact that vide order dated 03.08.2010 the defendant
was directed to produce the originals or the carbon copies of the documents
at the time of admission/denial of the documents. However, the same were
not produced despite of orders, except the affidavit dated 15.10.2010 filed
by Sachdeva & Sons Rice Mills Limited stating that the records were
destroyed in 1995 in fire. The defendants in the present case have admitted
in their pleadings about the confusion and deception, incase, both the
trademarks of the parties are used in the market. Under these circumstances,
the defendants are not even entitled to have benefit of user from the year
2002, as the statement made by them in their pleadings about confusion,
deception and similarity of two sets of trade marks goes against them.
Therefore, this court cannot help the defendants on any count.
Conduct of the Defendants
55. In the present case, prima facie, it appears that both the defendants
namely Sunstar Overseas Ltd. and Sachdeva and Sons Rice Mills Ltd. have
filed false affidavits and improper documents before this Court. Secondly,
after the Local Commissioner discovered their evidence, they tried to raise
all types of objections which are patently false and frivolous. During the
course of hearing of interim applications, the defendants have argued their
case on the basis of same very documents which are prima facie forged and
fabricated.
56. It is seen that three times the opportunity was given to the defendants
to produce and furnish the originals, first at the time, when the application
for discovery of the documents was filed by the plaintiff, second, at the time
of admission and denial of the documents and third, during the course of
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.41 of 45
hearing of the interim applications by the court. Additionally, when Local
Commissioner‟s report was issued, the documents were called from therein,
the defendant protested against the Local Commissioner‟s report so that this
court should not look the stand of the Local Commissioner about the
correctness of those documents as to whether such documents bear the trade
mark or not. Despite the opportunities and occasions from time to time to
file originals so as to show the actual user of the marks on the invoices, no
such documents were filed, except one affidavit and eventually the matter
was heard. It appears that the defendant is either aware that there is no such
evidence or the evidence available at this stage would operate to his
detriment. Therefore, the defendant is doing all his endeavours to withhold
such evidence despite such opportunities.
57. In Dalip Singh Vs. State of U.P., reported in (2010) 2 SCC 114, the
Supreme Court noted as under :
"1. For many centuries, Indian society, cherished two
basic values of life i.e. „Satya‟ (truth) and „Ahimsa‟ (non-
violence). Mahavir, Gautam Buddha and Mahatma Gandhi
guided the people to ingrain these values in their daily life.
Truth constituted an integral part of the justice-delivery
system which was in vogue in pre-independence era and the
people used to feel proud to tell truth in the courts
irrespective of the consequences. However, post-
independence period has seen drastic changes in our value
system. The materialism has over-shadowed the old ethos
and the quest for personal gain has become so intense that
those involved in litigation do not hesitate to take shelter
of falsehood, misrepresentation and suppression of facts in
the court proceedings. In the last 40 years, a new creed of
litigants has cropped up. Those who belong to this creed do
not have any respect for truth. They shamelessly resort to
falsehood and unethical means for achieving their goals. In
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.42 of 45
order to meet the challenge posed by this new creed of
litigants, the courts have, from time to time, evolved new
rules and it is now well established that a litigant, who
attempts to pollute the stream of justice or who touches the
pure fountain of justice with tainted hand, is not entitled to
any relief, interim or final."
58. In Padmawati and Ors. Vs. Harijan Sewak Sangh, reported in 154
(2008) DLT 411, this court noted as under:
"6. The case at hand shows that frivolous defences and
frivolous litigation is a calculated venture involving no risks
situation. You have only to engage professionals to prolong
the litigation so as to deprive the rights of a person and
enjoy the fruits of illegalities. I consider that in such cases
where Court finds that using the Courts as a tool, a litigant
has perpetuated illegalities or has perpetuated an illegal
possession, the Court must impose costs on such litigants
which should be equal to the benefits derived by the litigant
and harm and deprivation suffered by the rightful person so
as to check the frivolous litigation and prevent the people
from reaping a rich harvest of illegal acts through the
Courts. One of the aim of every judicial system has to be to
discourage unjust enrichment using Courts as a tool. The
costs imposed by the Courts must in all cases should be the
real costs equal to deprivation suffered by the rightful
person."
"9. Before parting with this case, I consider it necessary to
pen down that one of the reasons for over-flowing of court
dockets is the frivolous litigation in which the Courts are
engaged by the litigants and which is dragged as long as
possible. Even if these litigants ultimately loose the lis, they
become the real victors and have the last laugh. This class of
people who perpetuate illegal acts by obtaining stays and
injunctions from the Courts must be made to pay the sufferer
not only the entire illegal gains made by them as costs to the
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.43 of 45
person deprived of his right and also must be burdened with
exemplary costs. Faith of people in judiciary can only be
sustained if the persons on the right side of the law do not
feel that even if they keep fighting for justice in the Court
and ultimately win, they would turn out to be a fool since
winning a case after 20 or 30 years would make wrong doer
as real gainer, who had reaped the benefits for all those
years. Thus, it becomes the duty of the Courts to see that
such wrong doers are discouraged at every step and even if
they succeed in prolonging the litigation due to their money
power, ultimately they must suffer the costs of all these
years long litigation. Despite settled legal positions, the
obvious wrong doers, use one after another tier of judicial
review mechanism as a gamble, knowing fully well that dice
is always loaded in their favour, since even if they lose, the
time gained is the real gain. This situation must be redeemed
by the Courts." (Emphasis supplied)
59. It shows that the defendants still want to base their case on falsehood.
It is settled law that any party who takes recourse of fraud, deflects the
course of judicial proceedings or does anything with oblique motive, such
person is required to be dealt with properly in order to maintain the faith of
people in the system of administration of justice. Such practice of dubious
ways has to be curbed by imposing of exemplary costs.
60. In the facts and circumstances of this case, both the defendants,
M/s Sunstar Overseas Ltd. and Sachdeva and Sons Rice Mills Ltd. are
burdened with the cost of Rs.50,000/- (each) which shall be deposited with
Prima Minister Relief Fund by 15.04.2012, as they have taken a lot of time
of the court by side tracking the real issue in the matter by their cleverness.
61. As regards pending applications filed by the plaintiff for taking
action against the defendants are concerned, the same would be considered
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.44 of 45
at the time of framing of issues. But, it is directed that the order passed by
this court be sent to the concerned Customs Departments for preservation of
relevant record inspected by Local Commissioner. The said Department
shall produce original record as and when summoned.
62. On merit, the defendants have failed to make out any case against the
plaintiff for grant of injunction, thus in view of facts and circumstances
explained, the application being I.A. No.4625/2009 filed by the defendants
is dismissed. Consequently, the plaintiff‟s application being I.A.
Nos.4331/2009 & 4748/2009 are allowed. Till the disposal of suit being
CS(OS) No.612/2009 and CS(OS) No.653/2009, the defendants, their
licensees and franchisees are restrained from selling, exporting or dealing in
rice under the impugned trade mark "INDIAN HERITAGE SELECT"/
"HERITAGE Select" or any other trade mark as may be deceptively similar
to the trade mark "HERITAGE" of the plaintiff.
63. Three applications being I.A. No.4331/2009, I.A. No.4748/2009 and
I.A. No.4625/2009 are disposed of.
CS(OS) No.612/2009, CS(OS) No.639/2009 & CS(OS) No.653/2009
64. List the matters before Court on 13.08.2012 for framing of issues
alongwith pending applications in the matters.
MANMOHAN SINGH, J.
MARCH 30, 2012
kk
CS (OS) Nos.612/2009, 639/2009 & 653/2009 Page No.45 of 45
