Mehra Cosmetics vs Ram Kumar Gulati & Ors.
2016 Latest Caselaw 7263 Del

$~12.
*     IN THE HIGH COURT OF DELHI AT NEW DELHI
+     CS(OS) No.196/2016
      MEHRACOSMETICS                                   ..... Plaintiff
                      Through: Mr. Mohan Vidhani, Mr. Rahul
                               Vidhani and Ms. Gita, Advs.
                                versus
          RAM KUMAR GULATI & ORS.                     ..... Defendants
                       Through: Mr. K.K. Sharma, Sr. Adv. with Mr.
                                   Suwarn Rajan, Adv.
          CORAM:
          HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
                       ORDER

% 06.12.2016 IA No.15175/2016 (of the plaintiff under Order VI Rule 17 CPC).

1. The plaintiff, in pursuance to the order dated 29th November, 2016 on IA No.14783/2016 of the defendants no.1,2&3, seeks to amend the plaint to bring the reliefs claimed therein within the pecuniary jurisdiction of this Court.

2. The plaintiff, by this application also makes averments against M/s. G.M. Plastics which was impleaded vide order dated 29th November, 2016.

3. The senior counsel for the defendants no.1,2&3 has opposed this application contending that the plaintiff cannot whimsically increase the valuation from Rs.10,00,000/- to Rs.1,00,00,000/-, merely by paying additional court fees.

4. There is no merit in the aforesaid contention. The question is no longer res integra in view of the judgment dated 6th September, 2016 of the Full Bench of this Court in CS (OS) No. 1416/2009 titled Subhashini Malik Vs. S. K. Gandhi.

5. The senior counsel for the defendants no.1,2&3 then states that though the plaintiff has in the proposed amended plaint enhanced the claim for damages from Rs.10,00,000/- to Rs.1,00,00,000/-, but there is no basis therefor.

6. The same is a plea on merits of the amendment and not germane at this stage.

7. The amendments claimed are found to be necessary for adjudication of the disputes in controversy. Even otherwise, it is expedient to have one trial only instead of separate trials under the Des igns Act, 2000 and for infringement of trademark and copyright.

8. The application is thus allowed and disposed of.

CS(OS) No.196/2016, IA No.6484/2016 (under Section 135(2) of Trade Marks Act) & IA No.15176/2016 (under Section 149 CPC).

9. No settlement has been possible.

10. Amended plaint and amended memo of parties are taken on record.

11. The counsel for the plaintiff states that the deficient court fees on the amended plaint has been received and will be filed by tomorrow i.e. 7 th December, 2016.

12. Time for making up the deficiency in court fees is extended till tomorrow i.e. 7th December, 2016.

13. IA No.15176/2016 is disposed of.

14. Written statement to the amended plaint be filed within four weeks.

15. Replication within further four weeks thereafter.

16. The parties to file their affidavits of admission/denial of each other‟s documents within further two weeks thereafter.

17. List on 16th March, 2017 for framing of issues.

18. The counsels have been heard on IA No.6484/2016 for interim relief.

19. The plaintiff has instituted this suit for permanent injunction (i) to restrain the defendants from using the trademark „BLUE CHEF‟ or any other mark similar or deceptively similar to the registered trademark „BLUE CLIFF‟ or the mark „BLUE CHIEF‟ (unregistered) of the plaintiff and amounting to passing off their goods as that the of the plaintiff; (ii) for permanent injunction restraining the defendants from passing off their goods as that of the plaintiff by adopting the trade dress of the plaintiff; (iii) from infringing the registered Design No.266053 of the plaintiff; and, (iv) for ancillary reliefs of delivery, accounts and recovery of damages.

20. The plaintiff as well as the defendants are marketing the same goods and a comparative chart thereof set-out in the plaint and not in dispute is as under:-

21. After hearing the counsels on 28th September, 2016 it was prima facie observed that a case of the defendants passing off their goods as that of the plaintiff is made out. However attempts for settlement were made and have not yielded any result as the defendants are not willing to give up the use of the word „CHEF‟.

22. The plaintiff in the plaint itself has pleaded in para 21 that the plaintiff has no objection to the use of the word „BLUE‟ either alone or with any other prefix or suffix by the defendant.

23. The senior counsel for the defendants at the outset states that the defendants are not using the word „CLIFF‟ and according to the defendants the word „CHEF‟ used by them is not similar or deceptively similar to „CLIFF‟ and the defendants have no objection to the interim injunction to the said effect.

24. However, as would be obvious from the above, the plaintiff also is seeking to restrain the defendants from using the word „CHEF‟ which, according to the plaintiff, in conjunction with the word „BLUE‟ is deceptively similarly to the trademark „BLUE CHIEF‟ of the plaintiff and on the basis of which the plaintiff claims interim injunction on the ground of passing off. The trademark „BLUE CHIEF‟ of the plaintiff is not registered though the application for its registration is pending since 6 th September, 2014, showing user since 1st October, 1995.

25. The senior counsel for the defendants has argued that besides the application of the year 2014, another application of the plaintiff for registration of the trademark „BLUE CHIEF‟ is also pending since the year 2001. On enquiry, it is stated by the senior counsel for the defendants that

user claimed therein also is since 1995.

26. The counsel for the plaintiff states that he stands corrected.

27. The senior counsel for the defendants further states that the trademark „BLUE CHIEF‟ of the plaintiff has not been registered as yet because objections have been filed by a third party and which are pending consideration. It is contended that the plaintiff itself has pirated the mark „BLUE CHIEF‟ and is not entitled to injunct the defendants.

28. The senior counsel for the defendants has further contended that the plaintiff has shied away from filing before this Court the objections filed by the said third party to registration of the trademark „BLUE CHIEF‟ and the reply filed by the plaintiff thereto. Attention is also drawn to the order dated 10th August, 2016 in this suit to show that the plaintiff has not filed any original documents. It is argued that the plaintiff having not filed the original documents till now, is precluded from doing so and having not filed any original documents cannot lead any evidence and thus the case of the plaintiff is liable to fail and the plaintiff is not entitled to any injunction on this ground. It is yet further contended by the senior counsel for the defendants that this suit is pending since the year 2015 and the counsel for the plaintiff did not press the application for interim relief at any stage and by arguing it now is taking a chance.

29. The counsel for the plaintiff has pointed out that the defendants no.1,2&3 have filed an application for registration of the mark „BLUE CHEF‟ on 25th May, 2015 claiming user thereof since 1st April, 2015. It is further stated from the documents that the defendants obtained the drug licence for manufacture only on 16th July, 2015. On the basis thereof it is

urged that the plaintiff‟s user of the trademark „BLUE CHIEF‟, though unregistered, is of at least 20 years prior to that of the defendants.

30. The senior counsel for the defendants has contended that the plaintiff has not filed or pleaded any particulars of use of the trademark and the photocopies of the bills are also forged and fabricated.

31. However the senior counsel for the defendants, on enquiry whether the defendants have pleaded that the goods of the plaintiff under the name „BLUE CHIEF‟ are not available in the market, fairly states it is not so pleaded and rather states that the same goods of the plaintiff as of the defendants, under the trademark „BLUE CHIEF‟ are available in the market. Reliance is placed on Rajesh Jain Vs. Amit Jain 2014 (60) PTC 526 Delhi holding that the marks „BLUE VALLEY‟ and „BLUE VERY‟ are not similar or deceptively similar.

32. I have considered the rival contentions.

33. I am at this stage not inclined to grant injunction qua the design as it prima facie appears to me that there is no novelty in the design of the container of the plaintiff registered as a design, as a large number of other products are available in the market in similar containers.

34. However, as observed by me earlier, on a perusal of the manner in which the word „BLUE CHEF‟ with respect to White Petroleum Jelly is written by the defendants on their container, the possibility of a consumer thereof mistaking the same as that of the plaintiff under the name „BLUE CHIEF‟ cannot be ruled out. The possibility of the defendants wanting to ride on the popularity of the plaintiff is also evident from the defendants also choosing to write „BLUE CHEF‟ with the alphabet „B‟ and the alphabet „F‟

in a larger font than the font of the rest of the alphabets in the said words , as in the trademark of the plaintiff. The same, coupled with the same colour scheme of the label as well as the container, is a sure shot attempt at passing off.

35. Though the defendants during the course of settlement talks offered to also use the word „PALAK‟ above the words „BLUE CHEF‟ but are unable to give up the use of the word „CHEF‟.

35. The word „CHEF‟ is of french origin which is pronounced as per French language but if were to be pronounced phonetically would sound the same as „CHIEF‟ inasmuch as the only difference is the addition of the alphabet „I‟. In fact the word „CHEF‟, to the consumers of White Petroleum Jelly, may not have been widely known till a few years back when the same was popularised with the television serial Master Chef. Moreover the meaning of the word Chef is "a professional cook, typically the Chief Cook in restaurant or hotel". Thus, the word Chef also has an element of „Chief‟ in it.

36. As far as the contentions of the senior counsel for the defendants , of the plaintiff itself being a pirate of the trademark „BLUE CHIEF‟ and of the plaintiff having not filed the documents is concerned, in my view the same do not come in the way of grant of interim injunction. Attention of the senior counsel is also drawn to the judgment in Aktiebolaget Volvo Vs. R. Venkatachalam (2009) 160 DLT 100 where it has been held that it is not incumbent to file the original documents once the photocopies thereof have been filed and the originals can be produced at the stage of proof during the recording of evidence. From the fact that defendants themselves are seeking

registration of „BLUE CHEF‟, it does not lie in the mouth of the defendants to allege that the plaintiff itself has pirated the trademark „BLUE CHEF‟. Moreover, if the third party which is objecting to the registration of the said trademark in favour of the plaintiff has any grievance, the third party would be entitled to ventilate the same against the plaintiff.

37. The defendants, during the pendency of the suit, are therefore restrained from using the word „CHEF‟ in conjunction with the word „BLUE‟ in respect of White Petroleum Jelly or any other cosmetics or any other marks deceptively similar to the mark „CHIEF‟ of the plaintiff.

38. IA No.6484/2016 is disposed of.

39. The senior counsel for the defendants states that some time be given to the defendants, to effect the change.

40. The defendants, in the stocks which have not gone out of the premises and godowns of the defendants, can change the label before releasing the same. However the defendants cannot be expected to change the label on the stock which are no longer their property.

41. It is however made clear that the labels on whatever goods are lying with the stockists of the defendants but are the property of the defendants would be changed before the said goods are released by the stockists.

RAJIV SAHAI ENDLAW, J DECEMBER 06, 2016 „pp‟..