Laxmi Narain Jai Gopal Pvt. Ltd. & ... vs Ajay Aggarwal & Anr.
2014 Latest Caselaw 3272 Del

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*       IN THE HIGH COURT OF DELHI AT NEW DELHI
+       CS(OS) 50/2013
        LAXMI NARAIN JAI GOPAL PVT LTD & ANR ..... Plaintiffs
                     Through: Mr. Ashok Kumar Juneja, Advocate

                          versus

        AJAY AGGARWAL & ANR                        ..... Defendants
                      Through: Mr.M.L. Mangla, Mr. Manish Singhal
                      and Mr. Ankit Mangla, Advocates
        CORAM:
        HON'BLE MR. JUSTICE RAJIV SHAKDHER
                ORDER

% 23.07.2014

1. I am informed that pleadings in the matter are complete and admission / denial of documents has also taken place.

2. I am further informed that original documents were produced at the time of admission / denial, though they were not placed on record. The parties are directed to have them placed on record.

3. In view of the above, the learned counsel for the parties are agreed that the following issues can be framed:-

(i). Whether the plaintiffs are owners of the trademarks: "GOPAL" and "GOPAL GOLD"? OPP

(ii). Whether the plaintiffs, as claimed, are prior user of the trademarks "GOPAL" and "GOPAL GOLD"? OPP

(iii). Whether the plaintiffs have infringed the registered trademarks of the defendants, these being: "GOPAL" and "GOPAL GOLD" and/or are guilty of passing off their own goods as those of the defendants? OPD

(iv). Whether the defendants are passing off their goods as those of the plaintiffs by using the trademarks, "GOPAL" and "GOPAL GOLD"? OPP

(v). What relief, If any?.

4. No other issue is pressed for by the parties.

5. The plaintiffs will file their list of witnesses and affidavits of evidence of their witnesses within four weeks from today. The defendants shall file their list of witnesses and affidavit of evidence of their witnesses immediately upon cross-examination of the plaintiffs witnesses is completed.

6. To facilitate the aforesaid, list before the Joint Registrar on 03.11.2014.

IA No.390/2013 (u/O. 39 R. 1 & 2 r/w S. 151 CPC by plaintiffs) and IA No.2095/2013 (u/O. 39 R. 1 & 2 r/w S. 151 CPC by defendants)

7. It is not disputed that the defendants have a registration in their favour vis-a-vis the trademarks, "GOPAL" and "GOPAL GOLD", since 25.09.2003. The case of the plaintiff, however, is that they are prior users of the above mentioned trademarks and that defendant no.1 is a Director in plaintiff no.1 company as also a 50% shareholder. 7.1 Notwithstanding the above, the fact is that the plaintiffs have approached this court by way of the present action after nearly 10 years of the aforementioned trademarks being registered by the defendants. The defendants have claimed that they have been using the said trademarks, since the year 1989.

7.2 It is, however, the contention of the plaintiffs as well that prior to the incorporation of the plaintiff no.1 in 1994, plaintiff no.2 was independently using the brand name "GOPAL" since 1989. The case of the plaintiff, in

short, is that til 1989, plaintiff no.2 conducted his business via a sole proprietorship. Upon incorporation of plaintiff no.1 in 1994 the business of the sole proprietorship concern was taken over by it, and that, its shareholding was equally divided between plaintiff no.2 and his younger sibling, defendant no.1.

7.3 The plaintiffs further submit that defendant no.1 first conducted business in December, 2011 under the name and style: "Laxmi Narain Jai Gopal", to perpetuate confusion amongst the customers of plaintiff no.1 and the public at large. The defendants, on the other hand, taken the stand that it was defendant no.1 who commenced business of manufacturing and sale of "holi colours including gulal" under the trademark "GOPAL" in the year 1989-90. According to the defendants, the said business was conducted by defendant no.1 via proprietorship concern under the name and style: "Laxmi Narain Jai Gopal" from his residence which was situated at 18-A, Shakti Nagar, Delhi - 110 007.

7.4 It is also the case of the defendants that the said business was conducted smoothly and without interruption till 1998, and that, in 1998, defendant no.1 had granted permission, albeit orally, to plaintiff no.1 to manufacture and sell, simultaneously "holi colours including gulal", under the trade mark "GOPAL". Defendant no.1, in particular, states that this permission was withdrawn in October, 2011, when he became aware of the fact that plaintiff no.2 was running an identical business of his own, under the trade mark "GOPAL" which otherwise stood registered in his name. 7.5 The defendants have also filed a counter claim, in which they have not only asked for relief of permanent injunction against the plaintiffs qua the use of the tradename "Laxmi Narain Jai Gopal" as part of corporate

name of plaintiff no.1 but also asked for restraint on use of the registered trade mark "GOPAL" and "GOPAL GOLD", by the plaintiffs. The assertion is made both on the ground that the said trademarks are registered in favour of defendant no.1 and also on the ground of prior use.

8. I must point out, though, at this stage, that during the course of arguments, learned counsel for the plaintiffs laid stress on the resolutions passed at the board of directors of plaintiff no.1 company on 31.08.1995, whereby, inter alia, one of the resolutions passed apparently was that both plaintiff no.2 and defendant no.1 voluntarily surrendered all their rights in respect of the family name and trade marks referred to in the resolution, in favour of plaintiff no.1 company. The family name referred to is Laxmi Narain Jai Gopal and one of the trademarks referred to, amongst others, is "GOPAL". Though an argument was advanced based on this resolution, there is no reference to the same in the plaint filed before this court. The said document does not appear to have been admitted or denied by the plaintiffs.

9. There is no dispute that the trademark "GOPAL" and "GOPAL GOLD" stands registered in favour of defendant no.1 since 25.09.2003. The plaintiffs have not moved any application for rectification. The plaintiffs' explanation that they became aware of the use of the aforementioned trademarks only in November, 2011, at this stage, seems, to say the least, incredulous.

10. Therefore, in my view, this is a case where having regard to the stand taken by the parties before me, evidence would be required to be led and analyzed to reach a conclusion with regard to the fact as to which party made use of the trade marks in issue, prior in point of time. Thus, the best

course, which can be adopted, in the present circumstances is that, both parties be directed to maintain accounts with respect to the use of the trademarks, "GOPAL" and "GOPAL GOLD", leaving them free to use the said marks in the interregnum.

10.1 I must note, counsel for the defendants during the course of his arguments indicated his acceptability to such a modality being followed pending disposal of the suit. The apprehension expressed by Mr Juneja, learned counsel for the plaintiffs, that defendant no.1 being a 50% shareholder will not allow plaintiff no.1 to make use of the said trademarks is without basis for the following reasons. First, there is no bar on plaintiff no.1 in making use of the said trademarks being a juridical entity separate from its share holders. Second, in so far, as the logjam in the shareholding is concerned, Mr Juneja clearly conveyed to me that recourse has been taken to an appropriate proceedings before the Company Law Board. 10.2 Consequently, statement of accounts will be filed by both, the plaintiffs as well as the defendants every quarter with this court in respect of business carried out under the trademarks in issue i.e., "GOPAL" and "GOPAL GOLD".

11. The captioned applications are disposed of with the aforesaid directions.

RAJIV SHAKDHER, J JULY 23, 2014 Yg