Malhotra Book Depot & Ors vs Mbd Electronics Pvt Ltd
2013 Latest Caselaw 3169 Del

10# $
*       IN THE HIGH COURT OF DELHI AT NEW DELHI
+                                  CS(OS) 1268/2011
%                                                Decided on: 24th July, 2013
MALHOTRA BOOK DEPOT & ORS                     ..... Plaintiffs
                Through: Mr. Sidhant Goel and Ms. Shweta
                         Duggal, Advocates.
                versus

MBD ELECTRONICS PVT LTD                      ..... Defendant
                  Through: Mr. Sarad Singhania, Advocate.
CORAM:
HON'BLE MS. JUSTICE MUKTA GUPTA
MUKTA GUPTA, J (ORAL)

I.A. No. 8430/2011 ( by Plaintiffs u/ Order XXXIX Rule 1 and 2 r/w
Section 151 CPC)


1.

By this application the Plaintiffs seek injunction against the Defendant

and its assignees, franchisees, licensees etc. restraining them from selling,

offering for sale, advertising, directly or indirectly dealing in identical or

similar goods and services under the infringing mark/trading name

containing the mark "MBD" or any other trademark identical or deceptively

similar as the same amounts to infringement of the trademark registered in

the name of the Plaintiffs.

2. Learned counsel for the Plaintiffs contends that "MBD" is a

housemark of the Plaintiffs which was adopted in the year 1956. Since 1977

the Plaintiffs are the registered owners of "MBD" in Class 16 and thereafter

have got the registration of this mark in 20 other classes and have applied for

250 other products and services. The Defendant adopted a deceptively

similar trade mark being "MBD Electronics" though it is not dealing in

electronics goods and is only trading in shares. As held in Kaviraj Pandit

Durga Dutt vs. Navratna Pharmaceutical Laboratories, AIR 1965 SC 980

and Ruston and Hornsby vs. The Zamindara Engineering Company, 1969

(2) SCC 727 once the Plaintiff is able to establish that the essential features

of the Plaintiff‟s trademark have been adopted by the Defendant no further

evidence is required to be established that the Plaintiff‟s right has been

violated and thus the Defendant is liable to be injuncted on this ground itself.

3. It is further argued that the Defendant in the written statement has

replied that it is not doing any business of manufacturing any goods and

articles and the Defendant is doing the business of trading in shares in the

name of its company "MBD Electronics Pvt. Ltd." since incorporation in

1986. It is thus the defence of the Defendant that the Plaintiffs have filed the

suit belatedly and are thus not entitled to the reliefs claimed much less the

interim relief. Relying on Sections 29(4) and 29(5) of the Trademark Act and

the decision in Larsen and Toubro Ltd. vs. Lachmi Narain Trades and

others, 2008 (36) PTC 223 (Del.) (DB), Kirloskar Diesel Recon. Vs.

Kirolskar Proprietary Ltd., 1997 (17) PTC 469 it is contended that the facts

that the goods and services offered by the Defendant are different from those

offered by the Plaintiff is no defence to a claim of infringement since the

"Common Field Activity Test" is no longer valid. Furthermore the delay in

bringing an action of infringing the trademark is not sufficient to defeat the

purpose of grant of injunction. Reference is made to Midas Hygiene

Industries (P) Ltd. and another vs. Sudhir Bhatia and others, 2004 (3) SCC

90. Relying on Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd.,

2001 (5) SCC 73 it is contended that the similarities between the competing

marks, rather than the dissimilarities have to be seen while adjudging

deceptive similarity.

4. Learned counsel for the Defendant contends that the suit of the

Plaintiff is liable to be dismissed as the Plaintiffs are not even aware of the

constitution of the Defendant as stated in Para-20 of the plaint and thus it is

not a properly instituted suit. The Defendant is user of trademark since 1986

and nobody has objected or had no grievance in the company‟s name since

the last 25 years. Thus the defendant is also the concurrent user of the

trademark. Reliance is placed on London Rubber Co. Ltd. vs. Durex

Products Incorporated and another, AIR 1963 SC 1882 and Gopal Hossiery

vs. The Deputy Registrar of Trade marks and others, AIR 1981 Calcutta 53.

5. I have heard learned counsel for the parties.

6. The Plaintiffs are the owner of the trademark "MBD" and hold as

many as 20 registrations as is evident from the record. The main claim of

the Defendant is that he is a concurrent user and has been using this

trademark since 1986. However a perusal of the documents filed by the

Defendant shows that balance sheets of only last three years have been filed

and no evidence relating to the user since 1986 has been placed on record.

In London Rubber Co. Ltd. (supra) the Hon‟ble Supreme Court was dealing

with the case of registration of a trademark and thus held that while

considering the aspect of concurrent use the volume of use should be

ascertained keeping in mind the capacity of the applicant to market his goods

and whether the use was commercial or of other kind. It is not the case of

the Defendant that it is the holder of a registered trademark "MBD" or that it

has applied for the same. Even in Gopal Hosiery (supra) the issue was

regarding registration of the trademark identical with one already registered

by another proprietor. As regards the delay in bringing the action of

infringement of trademark is concerned, in Midas Hygiene Industries (supra)

their Lordships clearly held that in case of infringement either of a trademark

or of copyright, mere delay in bringing action is not sufficient to defeat grant

of injunction in such cases.

7. The case of the Defendant is that it is not selling any goods or trading

in actives similar to the Plaintiffs. In Larsen and Toubro (supra) it was held

that the question is one of real likelihood of confusion or deception among

the consumers and the resultant damages to the Plaintiffs. In cases where the

trading name becomes a house hold name, under which trading name variety

of activities are undertaken, even an action for passing off exclusively lies if

the Defendant adopts identical or similar trademarks, even when the

Defendant does not carry on similar activities. A perusal of the plaint shows

that the Plaintiffs have adopted "MBD" in most of the group markets and has

achieved a housemark as the same prominently features in trade journals,

periodicals magazines, cyber space with domain names having the house

mark „MBD‟ etc.

8. In the facts and circumstances of the case it can be safely held that the

Plaintiffs have made out a prima facie case, the balance of convenience also

lies in their favour and in case interim injunction is not granted they would

suffer irreparable lose. Thus the Defendant, its agents, servants, employees,

assignees, attorney and representatives are restrained from selling, offering

for sale, advertising, directly or indirectly dealing in identical or similar

goods/services under the infringing mark/trading name containing the mark

"MBD" or any other trademark/trading name as may be identical to or

deceptively similar with or containing the trademark "MBD" or any of the

composite marks of the Plaintiffs containing the mark "MBD" amounting to

infringement of trademark registered in the name of the Plaintiffs.

The application is disposed of.

(MUKTA GUPTA) JUDGE JULY 24, 2013 'vn'