Aditya Birla Nuvo Limited vs M/S R.S. Sales Corporation & Anr
2016 Latest Caselaw 4894 Del

        IN THE HIGH COURT OF DELHI AT NEW DELHI
%                                  Judgment delivered on: 28.07.2016

+      CS(COMM) 644/2016

ADITYA BIRLA NUVO LIMITED                                 ..... Plaintiff

                          versus
M/S R.S. SALES CORPORATION & ANR                           ..... Defendants

Advocates who appeared in this case:
For the Plaintiff    : Mr Ajay Sahni, Ms Kanika Bajaj &
                       Ms Kritika Sahni.
For the Defendants   : Mr B.P. Singh Dhakray and Mr Shakti Singh
                       Dhakray for D-1 & D-2.

CORAM
HON'BLE MR JUSTICE VIBHU BAKHRU
                               JUDGMENT

VIBHU BAKHRU, J

IA Nos.9965,15175 and 15177 of 2013

1. The Plaintiff has filed the above captioned suit for seeking a decree

of permanent injunction restraining infringement of its registered

trademark, rendition of accounts and delivery up against the Defendants.

2. The Plaintiff has filed IA No.9965/2013 under Order XXXIX Rule 1

& 2 CPC and Defendant Nos. 1 and 2 have filed IA Nos.15177/2013 and

15175/2013 - both under Order XXXIX Rule 4 of the CPC - respectively

for vacation of interim order dated 17.06.2013 by virtue of which an ex-

parte ad-interim injunction order was granted restraining the Defendants

from selling / marketing their products using the mark 'PETER

ENGLAND'. All three applications were taken up and heard together.

3. The Plaintiff claims to be the subsequent proprietor of the trademark

'PETER ENGLAND' registered under registration No.665416 in class-25

in respect of 'clothing, footwear and headgear'. The Plaintiff further asserts

that the Plaintiff (itself or through predecessor) has been selling readymade

apparels and accessories bearing the registered trademark PETER

ENGLAND since the year 1997. Defendant no. 1 is engaged in the

business of manufacturing and selling footwear and Defendant no. 2 is

Defendant no. 1's stockist. The said Defendants sell footwear inter alia

under the trademark 'PETER ENGLAND VIP SHOES'.

4. It is averred in the plaint that the trademark 'PETER ENGLAND'

was originally conceived and adopted more than a century ago, in the year

1889, by the Plaintiff's predecessor, Carrington Viyella Garments Limited

(CVGL), England. It is asserted that the said company underwent a series

of corporate adjustments and changes during the course of time. It applied

for registration of the trademark 'PETER ENGLAND' in India vide

registration No.665416 in class - 25, dated 12.05.1995. It is stated that the

said trademark was assigned by an assignment deed dated 21.01.2000 in

favour of the Plaintiff (then known as Indian Rayon & Industries Limited).

Subsequently, the Plaintiff's name was changed to Aditya Birla Nuvo

Limited and an application for recording the change in name was filed with

the office of the Registrar of Trade Marks on 24.11.2006. It is further

stated that the Plaintiff has also applied for the registration of the

trademark 'PETER ENGLAND' in respect of other classes, which are

pending. The Plaintiff further states that apart from the trademark 'PETER

ENGLAND', the Plaintiff is also the proprietor of several other

trademarks, which incorporate the trademark 'PETER ENGLAND'.

5. It is further averred in the plaint that the Plaintiff filed two

applications on 03.09.2001 for registration of the trademarks ELEMENTS

PETER ENGLAND (label) and PETER ENGLAND (label) under

registration nos. 1041517 and 1041520 in class-25 and these trademarks

were published in the Trade Mark Journal no.1331 (S-1) dated 15.06.2005.

Defendant No.1opposed the said applications on the ground that it was the

proprietor of the trademark 'PETER ENGLAND'.

6. Defendant No.1 has also filed an application bearing No.805051 in

for registration of the trademark PETER ENGLAND with the suffix VIP

SHOES and that was advertised in the Trade Mark Journal no. 1401 dated

01.10.2008. The Plaintiff has filed an opposition to the said application.

7. The Plaint filed by the Plaintiff was registered as a Civil Suit on

17.06.2013 and after hearing the learned counsel for the Plaintiff as well as

going through the averments in the plaint, this Court passed an ad-interim

ex-parte order restraining the Defendants from selling / marketing their

products using the mark 'PETER ENGLAND'.

8. Defendant No.1 has set up a defence of prior user; it claims that it

has been using the trademark 'PETER ENGLAND VIP SHOES' since the

year 1998.

9. Mr B P Singh, learned counsel appearing on behalf of Defendant

No.1 submitted that Defendant No.1 adopted the mark 'PETER

ENGLAND VIP SHOES' in respect of shoes manufactured by Defendant

No.1 in the year 1998 and has been using the said trademark since. He

further submitted that Defendant No 1's turnover of footwear under the

said brand during the year 1998-99 was ₹57,29,791/- which had risen to

₹1,49,56,350 in the year 2012-13. He also submitted that Defendant No.1

was a prior user of the trademark and, therefore, the injunction order

passed against Defendant No.1 ought to be vacated.

10. Mr. Singh further submitted as under:

(a) that the Plaintiff had requested for change of the name of the proprietor

of the trademark with the trademark authorities, however, the Plaintiff's

name has not been substituted as the registered proprietor of the mark as

yet;

(b) that the Plaintiff had failed to show as to how it was connected with

Indian Rayon & Industries Limited and thus, the Plaintiff was not entitled

to the benefit of the trademark registered in the name of Indian Rayon &

Industries Limited.

(c) that the artistic design of the logo used by the Plaintiff was different

from the logo used by Defendant no. 1 and, therefore, no case was made

out for violation of Section 28/29 of the Trade Marks Act, 1999;

(d) that the Plaintiff is engaged only in the manufacture and sale of

apparels and is not engaged in the manufacture and sale of shoes.

Therefore, the Plaintiff has no case for infringement of the trademark and

design.

(e) that since it was an admitted case that the Plaintiff was not engaged in

the manufacture of shoes, the trademark registration granted in favour of

the Plaintiff was liable to be cancelled by virtue of Section 47 of the Trade

Marks Act, 1999.

11. Mr. Singh further stated that Defendant No.1 had also applied for the

copyright registration of the label 'PETER ENGLAND VIP SHOES' and it

was registered in its name on 20.08.2001 (registration No.A-59661/2001).

12. Mr Ajay Sahni, learned counsel appearing on behalf of the Plaintiff

countered the submissions made by Mr Singh. He contended that

registration of the trademark 'PETER ENGLAND' was applied for by

Indian Rayon & Industries Limited on 12.05.1995 and it was,

subsequently, registered in favour of Indian Rayon & Industries Limited.

He also drew the attention of this Court to the Certificate of Incorporation

dated 27.10.2005, issued by the Registrar of Companies which evidences

that the name of Indian Rayon &Industries Limited was changed to Aditya

Birla Nuvo Limited - the Plaintiff's current name.

13. He further submitted that although it has been stated by Defendant

No.1 that its trademark is registered, but the same was incorrect in as much

as, the Plaintiff had opposed the registration and as of yet the Trade mark

Registry has not granted Defendant no. 1 the registration for the trademark

PETER ENGLAND VIP SHOES (label). He has also relied upon the

decision of the Supreme Court in M/s. Gujarat Bottling Company Limited

& Ors V. Coca Cola Company & Ors: AIR 1995 SC 2372 in support of

his contention that the proprietor of the registered trademark can also sue

for infringement of the trademark in respect of the goods covering that

mark irrespective of whether the said mark was used or not.

14. I have heard the learned counsels for the parties.

15. At the outset, it is necessary to refer to the trademarks in question

which are reproduced below:-

PLAINTIFF DEFENDANTS

16. On a plain view, it is apparent that the Plaintiff's trademark 'PETER

ENGLAND' is similar to the Defendants' trademark 'PETER ENGLAND

VIP SHOES'. Thus, it is difficult to accept the contention of Mr Singh that

both marks are not similar.

17. The Plaintiff has also produced a copy of the certificate of

Registration of Trade Mark dated 28.12.2005 which indicates that the

trademark 'PETER ENGLAND' was registered in the name of Indian

Rayon & Industries Limited in class - 25, vide registration No.665416 for

clothing, footwear and headgear. The said certificate also indicates that the

application for the trademark was made on 12.05.1995.

18. The Plaintiff has filed a copy of Form TM 33 dated 24.11.2006

which indicates that the Plaintiff had applied to the Trade Mark Registry

for change in the name of the proprietor from Indian Rayon & Industries

Limited to Aditya Birla Nuvo Limited. Mr Sahni, also handed over a

printout from the website of the Trade Mark Registry which indicates that

the trade mark is now registered in the name of Aditya Birla Nuvo Limited.

In the aforesaid circumstances, it cannot be disputed that the Plaintiff is the

registered proprietor of the trademark 'PETER ENGLAND'.

19. Mr Singh had contended that Defendant No.1 is the registered owner

of the trademark. It is also averred by the Defendants in their applications

(IA Nos.15175 and 15177 of 2013) that the mark 'PETER ENGLAND VIP

SHOES' was registered (number 805051) with effect from 08.06.1998.

However, it is apparent that the said averments are not accurate. Although,

Defendant No.1 has applied for registration, but the same has not been

granted as yet; the printout from the website of the Trade Mark Registry

indicates that the status of the trade mark application of the Defendant no.

1 is 'opposed'.

20. In my view, there can hardly be any doubt that that the Defendants

have infringed the trademark of the Plaintiff. The certificate of registration

clearly indicates that the Plainitff's mark is also registered for footwear and

plainly the trademark used by Defendant no 1 is similar to the Plaintiff's

registered trademark.

21. Prima facie, the Defendants's use of the trademark is dishonest.

There is no credible reason for Defendant No.1 to have adopted the

trademark in question. The Plaintiff has filed copies of advertisements

published in two daily newspapers in the year 1997 (Rashtriya Sahara and

The Hindu) which establish that it had been using the trademark much

prior to the use claimed by Defendant Nos.1 & 2. The Plaintiff is a well-

known company and it is asserted that its turnover in respect of the goods

sold under the trademark 'PETER ENGLAND' was ₹570 Crores in the

year 2012-13.

22. In contrast to this, Mr Singh, contended that the turnover of the

Defendant No.1 in respect of goods sold under the trademark in question

was ₹1,49,56,350.98/- during the year 2012-13. This statement too cannot

be readily accepted. Mr. Singh had drawn the attention of this Court to the

affidavits filed on behalf of Defendant No.1 with the Registrar of Trade

Marks wherein the sales figures of goods under the trademark 'PETER

ENGLAND VIP SHOES' for the years 1998-99 to 2002-03 had been

affirmed. Bare examination of the affidavit indicates that the deponent

had claimed the same sales figure for each trademark namely 'PETER

ENGLAND VIP SHOES' 'LONDON VIP SHOES', 'ENGLISH QUEEN'

and 'ROYAL MAN'. It is obvious that the sales turnover for each of the

said brand cannot be identical. Thus, the contention that the Defendants'

turnover for the goods under the brand name 'PETER ENGLAND VIP

SHOES' was ₹1,49,56,350.98/- in the year 2012-13 cannot be accepted.

23. In view of the above, the Plaintiff has been able to establish all the

three basic ingredients, namely a strong prima facie case; balance of

convenience; and irreparable loss for grant of ad-interim injunction. On the

other hand, the Defendants have failed to disclose any ground for vacating

the interim order.

24. In view of the aforesaid discussion, the application of the Plaintiff

under Order XXXIX Rule 1 & 2 of the CPC is allowed and the interim

order dated 17.06.2013 is made absolute during the pendency of this suit.

Both the applications of the Defendants being IA Nos.15175 and 15177 of

2013 are rejected.

CS(COMM) 644/2016 and IA No. 17087/2013

List on 03.11.2016.

VIBHU BAKHRU, J

JULY 28, 2016/M