Krbl Ltd vs Lal Mahal Ltd And Anr
2015 Latest Caselaw 1533 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI


%                                    Judgment reserved on : 18.02.2015.
                                    Judgment delivered on : 23.02.2015


+      CS(OS) 427/2014

       KRBL LTD
                                                               ..... Plaintiff
                       Through      Mr. S.K. Bansal, Mr. Ajay Amitsha
                                    Suman, Mr. Pankaj Kumar, Mr. Santosh
                                    Kumar and Mr.April Chandhal Jha,
                                    Advs.

                             Versus

       LAL MAHAL LTD AND ANR
                                                           ..... Defendants
                     Through               Mr.Mohan Vidhani, Mr. Rahul
                                           Vidhani and Mr. Ashish Singh,
                                           Advs.


CORAM:
HON'BLE MS. JUSTICE INDERMEET KAUR

INDERMEET KAUR, J.

I.A.No.2842/2014 (under Order XXXIX Rules 1 & 2 of the CPC)

1 Present suit has been filed by the plaintiff (M/s KRBL Limited)

against the defendants under the Trade Marks Act, 1999 and the Copy

Right Act, 1957; relief of permanent injunction restraining infringement,

passing off, rendition of accounts, delivery etc. has been prayed for.

2 The plaintiff is a company incorporated under the Indian

Companies Act, 1956. It has a registered office at Lahori Gate, Delhi. It

is engaged in the business of processing, marketing and exporting of rice

including basmati rice. In January, 2013, it had bonafidely and honestly

adopted and started using the trademark/label „INDIA GATE‟ with the

device of „INDIA GATE‟ and the said trade name includes both the

trademark label as also the device both individually, collectively and as

a whole. The trademark/label bears original artistic features of

placement, distinctive get up and make up and is protected under the

Copy Right Act as well.

3 The plaintiff is carrying on its business in India as also overseas.

The goods of the plaintiff are traded through extensive marketing and

distribution channels. In 1993, the export division of M/s Khushi Ram

Behari Lal (KRBL) adopted this trademark „INDIA GATE‟ with the

device of „INDIA GATE‟ and has been exporting rice to foreign

countries since 1993. It has also built up its reputation and a valuable

goodwill over the years.

4 The plaintiff has applied for registration of its trademark/label

under the Trade Marks Act in Class 30 on 19.03.1999. That application

is pending adjudication. The plaintiff has also filed another application

for registration of its trademark (in Class 30) on 24.07.2002. The

trademark of the plaintiff has also been widely advertized in Class 30.

The global protection and recognition of the rights of the plaintiff and

the trademark „INDIA GATE‟ is thus vested with the plaintiff. The

copyright involved and the said trademark are the original artistic work

of the plaintiff within the meaning of Indian Copyright Act. Its domestic

sale figure of sale of rice under said trademark/label is running into

several crores. Its advertisement and marketing products also show that

huge amounts are spent by the plaintiff on this project.

5 The defendants have allegedly adopted and have started using the

trademark/label „CHURCH GATE‟ with the device of „GATE‟ in

relation to its impugned goods i.e. sale of rice which is an infringement

upon the trademark/label of the plaintiff. The trademark/label adopted

by the defendants in relation to sale of goods which are identical i.e sale

of rice shows that this trademark/label adopted by the defendants is

phonetically, visually and structurally similar to that of the plaintiff. The

defendants have violated the rights of the plaintiff.

6 The plaintiff first learnt about the defendants‟ impugned

trademark/label in the first week of January, 2014 in New Delhi. In para

32 (cause of action), the plaintiff submits that the plaintiff learnt about

defendant No. 2 adopting this impugned trademark in „CHURCH

GATE‟ through advertisement in a journal on 28.02.2005 and

consequently the plaintiff has filed a notice of opposition dated

12.08.2005 to the application of defendant No. 2 and the said opposition

is pending adjudication. However, the plaintiff learnt about the

impugned goods being sold under the trademark/label „INDIA GATE‟

with the device of „GATE‟ only in the first week of January, 2014.

7 Suit has been filed for permanent injunction seeking a restraint

against the defendants from dealing with the trademark/label „CHURCH

GATE‟ with the device of „GATE‟ or any other mark which is

deceptively similar to the trademark of the plaintiff. Along with the suit,

the present application has been filed.

8 Admittedly no ex-parte order had been passed in favour of the

plaintiff. Submission of the learned counsel for the plaintiff is that this is

for the reason that the defendants were on caveat and as such since now

the pleadings have been completed, the matter is ripe for hearing. This

Court notes that the suit was filed on 20.01.2014.

9 The plaintiff is admittedly not the registered owner of the

trademark „INDIA GATE‟. The application seeking registration of the

trade mark „INDIA GATE‟ is pending adjudication before the

Competent Authority. The plaintiff in support of its case has placed

reliance upon invoices (page 102 onwards of the documents of the

plaintiff) dated as early as 11.06.1993 to substantiate its stand that

basmati rice under the brand name „INDIA GATE‟ was being exported

by the plaintiff to USA even at that point of time. Submission being

reiterated that there has been a continuous sale and marketing of the

product of the plaintiff under the brand name „INDIA GATE‟ since

1993. However the documentary evidence to show that the plaintiff

started business in India i.e. sale of basmati rice under the brand name of

„INDIA GATE‟ is of the year 2000. (These documents start at page 44

of the list of documents filed by the plaintiff on 05.05.2014). These

invoices show that the plaintiff company was selling rice to various

traders in Rajasthan, Madhya Pradesh and Delhi indicating the presence

of the plaintiff in this country which as per the documentary evidence

filed by the plaintiff was from March, 2000. Learned counsel for the

plaintiff has also drawn attention of this Court to his advertisement

campaign (w.e.f. 15.02.2005) to substantiate this submission that the

plaintiff has spent lacs of rupees on this advertisement campaign and his

trademark/label „INDIA GATE‟ with the device of „GATE‟ has

established goodwill and reputation qua this trademark/label. Attention

has also been drawn to certain orders which have been passed by the

Courts where the plaintiff had come up in opposition against the use of

mark „BOMBAY GATE‟, „ROYAL GATE‟ etc. and the plaintiff had

obtained injunctions. Admittedly, these were injunctions which had been

obtained ex-parte. Learned counsel for the plaintiff has not been able to

point out a single instance where in a contested matter, he has been

granted an injunction order.

10 The defendants have opposed his prayer. Written statement as

also reply to the pending application have been filed. First submission is

that the plaintiff has not come to the Court with clean hands. He has

failed to disclose that two applications No.1580377 and 1436477 filed

by the plaintiff seeking registration in Class 30 of the trade name/label

„INDIA GATE‟ have both been refused by the Registrar of Trademarks.

He has concealed this fact. Second submission is that there is a delay in

coming to the Court. This suit has been filed in January, 2014 when

admittedly the plaintiff knew about the use of trademark/label by the

defendants for the sale of rice by the defendants as way back as in the

year 2005 and this is clear from the opposition proceedings which were

pending before the Trademark Authority.

11 The fact that these proceedings were pending before the Registrar

of Trademarks is an admitted position. The proceedings before the

Trademark Authority show that an opposition by way of a counter

statement had been filed by the defendants wherein the defendants had

categorically stated that he has been using the trademark „CHURCH

GATE‟ continuously and exclusively since the year 1991 i.e. prior to the

user by the plaintiff and he has in fact acquired and retained exclusive

rights to the use thereof under the common law. Thus the submission of

the defendants is that there is a huge delay in approaching this Court and

on this ground alone, the plaintiff is not entitled to an injunction. It is

pointed out by the learned counsel for the defendants that it was Vikram

Roller Flour Mills Ltd. who had initially obtained registration of

trademark „INDIA GATE‟ with the device of „GATE‟ and a suit had

also been filed by Vikram Roller Flour Mills challenging this

proposition. A consent order dated 21.04.2014 has been placed on

record by both the parties wherein the plaintiff (KRBL Ltd.) was

permitted to use the trademark „INDIA GATE‟ with respect to rice and

the defendants who were also selling products under the brand name

„INDIA GATE‟ were permitted to use trademark „INDIA GATE‟ for

Aata, Maida, Rawa, Suzi and Bran. This was a consent order. The

submission of the defendant on this count being that the use of the

trademark/label „INDIA GATE‟ had not been opposed by the plaintiff in

those proceedings and in fact he had permitted user of the same

Vikram Roller Flour Mills Ltd for the sale of Aata, Maida, Rawa, Suzi

and Bran.

12 Defendant has denied that the plaintiff is a prior user of the

aforentoed trademark/label. It is pointed out that no single person can

have exclusive rights of the device „INDIA GATE‟ which is a

monument and nobody can have any claim over a monument of such a

nature. It is reiterated that the defendant is in fact the prior user of the

aforenoted trademark/label and the plaintiff is not entitled to any relief.

The defendant in support of his stand has placed reliance on

documentary evidence which includes invoices of the year 2005

evidencing the submission of the defendant that he has been selling

basmati rice under the trademark/label „CHURCH GATE‟ with the

device of „GATE‟ and Kendriya Bhandar (a Government of India

undertaking) has also placed orders worth several lacks upon it; he is not

a casual seller; he has also acquired a reputation and goodwill in that

mark which cannot now be disturbed by the plaintiff.

13 The trademark applications filed by the defendant before the

Trademark Authority on 28.06.1999 and on 25.10.2004 both clearly

state that the defendant is seeking registration of the trademark

„CHURCH GATE‟ in respect of rice which he is using since

01.04.1991.

14 It is not in dispute that the defendant was earlier a company

incorporated under the name of "Shiv Nath Rai Har Narain India

Limited" which had subsequently changed its name to "Lal Mahal Ltd."

This was vide certificate of incorporation dated 04.03.2009. The

invoices and bills of the defendant ranging from April, 2004 to the year

2014 showing sales of „CHURCH GATE‟ long grain rice in the Indian

Market in New Delhi have been placed on record. These are not stray

documents but from continuous periods of time ranging from April,

2004 up to 2008 and thereafter from 2008 up to 2014. The invoices

reflect that the newly incorporated company Lal Mahal Limited (which

had been substituted for Shiv Nath Rai Har Narain India Limited) was

marketing Lal Mahal Basmati rice in huge quantities in the Indian

market. These documents are in fact almost 160 in number showing the

sale of basmati rice by the defendant under its brand name „CHURCH

GATE‟.

15 Submission of the plaintiff on this count is that these documents

appear to be forged and fake as they are computer generated print outs

and have not been certified and for this purpose, he has placed reliance

upon 2010 (44) PTC 293 (Del) (DB) Kirorimal Kashiram Mktg and

Agencies Pvt. Ltd. Vs. Shree Sita Chawal Udyog Mill Tolly Vill. This

argument is ill-founded. No doubt these documents are generated from

the computer. They are invoices but they have been certified as true

copies and the true copies have been signed by the authorized signatory

of the defendant bearing the stamp of the defendant company. The very

fact that the documents have been generated from the computer in

February, 2014 clearly answers the argument of the learned counsel for

the plaintiff that for this reason they bore the stamp of Lal Mahal Ltd as

at this point of time (February, 2014) it was the Lal Mahal Limited

which was the new company and had substituted the earlier company

Shiv Nath Rai Har Narain India Limited and this obviously was stamped

under the stamp of Lal Mahal Ltd. These documents ranging from 2005

to 2014 (almost 160 in number) are not casual stray papers; they

disclose the bill amounts, quantity of goods supplied and the parties to

whom they have been supplied. The orders placed by Kendriya Bhandar

(a Government of India Undertaking) from December, 2007 and

continuously thereafter and further documents showing that this delivery

was also in fact made to Kendriya Bhandar. These documents on the

face of it cannot be rejected. The ratio of Kirorimal Kashiram (supra) is

inapplicable.

16 Moreover, the plaintiff also supplying its rice to Kendriya

Bhandar and thus also fortifies the submission of the defendant that the

plaintiff was well within the know-how of the rice product being

marketed by the defendant even in the year 2007. This is also

substantiated from the averments made by him before the Trademark

Authority where in the post grant opposition proceedings, in the counter

statement filed by the defendant to the opposition proceedings (initiated

by the plaintiff), he had categorically stated that he was using

„CHURCH GATE‟ in Class 30 i.e. for the sale of rice since the year

1991 continuously and extensively in the course of trade and even prior

to the use of the plaintiff. These words clearly reflect the stand of the

defendant which was that he was using the trade name „CHURCH

GATE‟ "in the course of his trade" which was sale of rice (he had

sought registration under Class 30) continuously and extensively since

1991. These proceedings also disclose that the advertisement of the

defendant had appeared in Journal No. 1328, Suppl-IV, dated

28.02.2005. These facts were thus well known to the plaintiff as it was

in the proceedings initiated by him that the counter statement has been

filed by the defendant and thus the averment of the plaintiff that he

learnt about the goods of the defendant being marketed in India only in

January, 2014 is clearly a misstatement. The plaintiff is guilty not only

of delay and latches but also of misleading the Court.

17 The facts as prima-facie disclosed by the respective parties show

that both the parties are not registered users of the trademark. The

plaintiff has applied for registration of trademark/label „INDIA GATE‟;

this was in the year 1993; the defendant‟s application seeking

registration of the trademark „CHURCH GATE‟ is also pending since

28.06.1999; in this application, he has claimed user since the year 1991.

The documentary evidence adduced by the plaintiff shows that he was

marketing this product outside the country from 1993 i.e. he had export

consignments; in the Indian market, he had started selling his goods

from the year 2000. The documentary evidence produced by the

defendant shows that in the opposition proceedings initiated by the

plaintiff and pending before the Trademark Authority even in the year

2005 had claimed user of the trademark „CHURCH GATE‟ for selling

rice since under their said brand name since the year 1991. His

documentary evidence showing invoices and sale figures continuously

from 2005 to 2014 in the Indian market have also been perused.

18 There also appears to be an active concealment on the part of the

plaintiff in not informing to the Court that he did not know about the

sale of the product by the defendant under the trade

name/trademark/label „CHURCH GATE‟; this is evident from the fact

that in the opposition proceedings pending before the Trademark

Authority, categorical assertions have been made by the defendant that

he is continuously and extensively using this mark in the course of trade;

meaning thereby that he is selling its product and is engaged in the

manufacture and sale of this product i.e. rice. He has always described

himself as a manufacturer and merchant of this product and this is clear

from his certificate of incorporation dated 04.03.2009 of Shri Lal Mahal

Ltd. Thus the submission of the learned counsel for the plaintiff that he

learnt about the sale of goods under the impugned trade name

„CHURCH GATE‟ by the defendant only in January, 2014is clearly a

false statement. The documentary evidence further establishes that both

the parties have been in the market actively since the last more than 10

years. Both the parties have enormous sale figures. The plaintiff is

selling his basmati rice under the name of „INDIA GATE‟; the

defending is selling its product under the brand name/label/trade name

„CHURCH GATE‟. Both of them are unregistered.

19 In an action of passing off in order to succeed in getting an

interim injunction, the plaintiff has to establish user of the mark prior in

point of time than the impugned user by the defendant. It is an action

necessarily based on the principle of equity and fair play. It is a

discretionary relief which the Court may or may not grant depending

upon the factual matrix of the case which has been built by the parties.

Common use is paramount. The defendant is not permitted to defeat the

right of the plaintiff if he establishes that he has been a concurrent user

or that the defendant has been using the mark for a considerable length

of time with the knowledge of the plaintiff. The defendant has

established this.

20 The Supreme Court in 1991 PTC-1 Wander Ltd. and Another Vs.

Antox India (P) Ltd. while dealing with the grant of an interim

injunction in medicinal products had noted as under:-

"Usually, the prayer for grant of an interlocutory injunction as at a stage when the existence of the legal right asserted by the plaintiff and

its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his legal rights for which he could not badequately compensated. The Court must weigh one need against another and determine where the "balance of convenience lies."

21 In AIR 1992 Delhi 302 Shri Gopal Engineering & Chemical

Works Vs. M/s POMX Laboratory, the Court had noted that where the

plaintiff had learnt about the infringement action in a case of passing off

in June, 1990 and again in July 1990 but had waited up to September,

1991 to file a suit, he was not entitled to any interim relief as he could

not cross the hurdle of delay. In this case, the Court had noted that both

the parties are in concurrent trade and there was nothing to show that

because of the presence of the defendant, the business of the plaintiff

had suffered and its sale figure had decreased. In this case also, there is

no such averment. It is not the case of the plaintiff that by the

continuous sale of basmati rice by the defendant under the trade name

„CHURCH GATE, there has been any decrease in the sale figures or

that his business has suffered on this count.

22 In 2008 (38) PTC 185 (Del) Warner Bros Entertainment Inc. And

Another Vs. Harinder Kohli and Others while dealing with an interim

application under Order XXXIX Rules 1 & 2 of the CPC in an action of

passing off, the Court had noted that delay in approaching the Court is

fatal; an application seeking interim relief on this ground alone is liable

to be rejected.

23 Noting all the aforenoted parameters and the guidelines laid by

the Court, this Court is of the view that not only has there been an

inordinate delay on the part of the plaintiff in approaching the Court,

there also appears to be an active concealment on the part of the

plaintiff. That plaintiff has also not disclosed that two of his applications

No.1580377 and 1436477 seeking registration of the trademark „INDIA

GATE‟ with the device of „GATE‟ had been refused. This was liable to

be disclosed. He did not do so for the reasons best known to him. The

inordinate delay in approaching the Court on the part of the plaintiff

knowing fully well about the continuous and extensive use by the

defendant of the trade name/label „CHURCH GATE‟ for sale of basmati

rice since 2005 is also unexplainable. Admittedly proceedings are

pending before the Trademark Authority since 2005 and the plaintiff

having approached the Court in January, 2014 and on the other hand, the

documentary evidence filed by the defendants showing that he also has

the sale figures running into several lacs of the sale of his product i.e.

basmati rice under the trade name Lal Mahal since the year 2005 and

there also being no argument addressed by the learned counsel for the

plaintiff that there has been a dip in his sale or his business has been

effected by the sale being carried out by the defendant, this Court is of

the view that at this stage, it would not be proper to restrain the

defendant from using the impugned trademark/label. Balance of

convenience is not in favour of the plaintiff. He has not been able to

make out a prima-facie case in his favour. Irreparable loss and injury

would in fact be suffered by the defendant in case he is not permitted to

use trademark/label „CHURCH GATE‟ which even as per the admitted

evidence is being used by him since 2005. Otherwise case of the

defendant is that he is a user since 1991.

24 All these require a trial. It requires adjudication. The Court had

initially put a query to the learned counsel for the parties that the matter

could be expedited in trial but the learned counsel for the plaintiff

wanted a judgment on merits.

25 Application of the plaintiff is accordingly dismissed.

26 This Court deems it fit to expedite the trial. Accordingly,

Mr.P.K.Saxena, (retired ADJ, Mobile No.9910384668) is appointed as

Local Commissioner to conclude the evidence within a period of eight

months from the date of receipt of the order. The list of witnesses will

be filed by the parties within two weeks after exchanging copies. The

plaintiff will file affidavit by way of evidence within three weeks

thereafter with advance copy to the learned counsel for the defendants.

The fee of the Local Commissioner is fixed provisionally at

Rs.1,00,000/-.

CS(OS) 427/2014

27 List before the Local Commissioner for cross-examination of the

witnesses of the plaintiff on 25.03.2015.

INDERMEET KAUR, J

FEBRUARY 23, 2015 A