Delhi High Court

Boman R Irani vs Rashid Ahmad Mirza & Ors on 17 April, 2017

         *IN THE HIGH COURT OF DELHI AT NEW DELHI
%                              Date of decision: 17th April, 2017
+                   CS(COMM) No.1021/2016
      BOMAN R IRANI                                   ..... Plaintiff
                  Through:   Mr. C.M. Lall, Ms. Nancy Roy and
                             Mr. Rupin Bahl, Advs.
                          Versus
    RASHID AHMAD MIRZA & ORS                     ..... Defendants
                  Through: Mr. A.K. Goel, Mr. Anshul Goel, Mr.
                             Ranjeev and Ms. Renu Narula, Advs.
CORAM:-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No.9286/2016 (of plaintiff under Order XXXIX Rules 1&2 CPC).

1.

The plaintiff has sued the defendant no.6 Mirza International Limited

(MIL) (of which defendants no.1 to 4 are directors/officers) for injunction

from 'passing off' its footwear with the trademark 'YEZDI' as that of the

plaintiff and/or as that emanating from the house of the plaintiff.

2. Summons of the suit and notice of the application for interim relief

were issued.

3. Defendant no.6 MIL has filed a written statement and which has been

adopted on behalf of the defendants no.1 to 5 also without prejudice to their

plea that they are neither necessary nor proper parties to the suit.

4. The counsels were heard on 27th September, 2016 on the application

for interim injunction and orders reserved.

5. It is the case of the plaintiff (i) that Mr. Rustom Irani, father of the

plaintiff, adopted the trademark 'YEZDI', (reference hereafter to

'YEZDI' be read as inclusive of logo) and commenced using the mark from

the year 1969 onwards in relation to motorcycles through a permitted user to

a company promoted by Mr. Rustom Irani by the name of Ideal Jawa (India)

Pvt. Ltd. (IJIPL) and of which Mr. Rustom Irani was the principal

shareholder; (ii) Mr. Rustom Irani was originally from the province named

Yazd in Iran and adopted the mark 'YEZDI' from the name of the said

province in Iran; (iii) after the demise of Mr. Rustom Irani, the brand

'YEZDI' devolved on the plaintiff who continued to allow the permitted use

of the said brand to IJIPL which continued to be a family controlled

company; (iv) the first 'YEZDI' branded motorbike was launched in the year

1968 and made a niche for itself in the country; (v) though the

manufacturing of 'YEZDI' branded bikes stopped in the year 1996, the

goodwill and reputation which the brand created for itself in the said period

of time has continued to subsist; (vi) the plaintiff as of today also owns a

website dedicated to the brand 'YEZDI' being www.yezdi.com which

continues to advertise and promote the 'YEZDI' brand in India since 1998;

(vii) that the plaintiff on 14th September, 2013, 1st January, 2014, 2nd July,

2014 has applied for registration of various 'YEZDI' formative marks in

various classes (12, 25, 29, 30, 32, 33, 35 and 37) and which applications are

pending consideration; (viii) the plaintiff is also the copyright owner of the

artistic work in 'YEZDI' logo; (ix) in the year 1996, owing to diverse

reasons, IJIPL stopped manufacturing and business activities and the use of

the trademark 'YEZDI' by IJIPL has ceased since 1996 but the plaintiff has

been using the name and logo as evident from the website www.yezdi.com;

(x) though IJIPL, with the permission of the plaintiff and his predecessor,

obtained registration of 'YEZDI' logo in classes 10 and 12 but has not

renewed the said registrations after 9th October, 1997; (xi) however the

'YEZDI' brand continues to enjoy extensive reputation and goodwill owing

to long usage and even today the brand 'YEZDI' is popular amongst the

biking groups and 'YEZDI' branded bikes are available for re-sale even

today through third parties with a number of 'YEZDI' clubs being in

existence in several cities and 'YEZDI' dedicated pages are found on social

networking sites like www.facebook.com; (xii) the plaintiff is in the process

of reviving manufacturing of the motorcycles under the brand 'YEZDI';

(xiii) that the Official Liquidator, in the proceedings for winding up of IJIPL,

has staked a claim to the trademark 'YEZDI'; (xiv) that the defendants no.1

to 5 being the partners of M/s. Genesis International have obtained

registration of the mark 'YEZDI' (word) in Class 25 for footwear; (xv) that

the aforesaid M/s. Genesis International was incorporated as Genesis

Footwear Enterprises Pvt. Ltd. and which has amalgamated with defendant

no.6 MIL and the plaintiff in February, 2016 learnt of the registration

obtained by the defendants no.1 to 5 in Class 18 and Class 25; (xvi) that the

defendants have dishonestly copied the word 'YEZDI' from the plaintiff to

create an impression in the minds of the general public that there is some

association between the defendants and the plaintiff or that the use of the

mark of 'YEZDI' by the defendants is in collaboration with the plaintiff;

(xvii) the shoes manufactured by the defendants are stated to be inspired by

the vintage 'YEZDI' bikes; (xviii) that the defendants are using the mark on

their shoes as well as the packaging of the shoes; (xix) the defendants are

also selling their products on interactive websites; (xx) that the 'YEZDI'

mark of the plaintiff is an iconic and well-known brand amongst the

motorcycle enthusiasts; (xxi) the use of the mark 'YEZDI' by the defendants

for biking shoes is likely to create an impression in the minds of the

consumer that there is some affiliation between the plaintiff and the

defendants; and, (xxii) instance is given of a consumer complaining about

the footwear of the defendants by relating it to the YEZDI motorcycles

plaintiff.

6. The defendants defend, disputing the ownership of the plaintiff of the

mark YEZDI, especially in the face of the Official Liquidator of IJIPL

admittedly claiming adversely to the plaintiff and pleading (i) IJIPL is a

necessary party to the present suit; (ii) the plaintiff has admittedly never used

the trademark 'YEZDI' in respect of footwear or other goods falling in Class

25; (iii) the plaintiff himself has admittedly not sold any goods under the

trademark 'YEZDI'; (iv) admittedly IJIPL has also not used the trademark

'YEZDI' in respect of any goods since the year 1996 and has abandoned the

trademark registrations in its favour; thus the question of passing off does

not arise; (v) 'YEZDI' is not an invented word but the name of a religious

community which has survived and grown in adverse situation; (vi) as the

partners of M/s. Genesis International have grown their business in very

competitive and adverse situation like 'YEZDI' community, they bona fidely

and honestly adopted the mark 'YEZDI' in the year 2008 and have since

then been openly and continuously using the same; (vii) the registered mark

now stands vested in the defendant no.6 MIL; (viii) the defendant no.6

MIL's trademark 'YEZDI' has acquired immense goodwill and reputation;

(ix) the defendant no.6 MIL being proprietor of the registered trademark in

Class 25 has exclusive right to use the same in relation to the goods

specified therein and no injunction can be granted against it; (x) the

defendant no.6 MIL has also registered the mark 'YEZDI' in European

Union in Classes 18, 24, 25 and 28; (xi) various other persons also have

been using the mark 'YEZDI' in respect of their goods; and, (xii) that there

is no scope of any confusion.

7. The counsel for the plaintiff in his arguments, besides what is pleaded,

contended (i) that Yezdi bikes are still traded and had sales of Rs.26,00,000/-

in the previous year; (ii) use by the defendants of the mark 'YEZDI' in

relation to shoes will dilute the distinctiveness of the mark of the plaintiff;

(iii) the brand of the defendants is Red Tape; iv) the defendants in their

advertisement at page 709 have claimed their shoes to be inspired by vintage

bikes from 'YEZDI', showing awareness and the reputation and goodwill of

the plaintiff's mark; (v) that the plaintiff is about to launch refurbished Yezdi

bikes; and, (vi) that the defendants can be granted time to get rid of their

stocks under the mark 'YEZDI'.

8. Per contra the counsel for the defendants argued (i) that the plaintiff

has not filed any document in support of the title claimed to the mark

'YEZDI'; (ii) that the plaintiff has not filed any document to show that it

was the father of the plaintiff had had licensed the mark 'YEZDI' to IJIPL;

(iii) the plaintiff has not filed any document to show that his father was the

principal shareholder of IJIPL; (iv) the registration obtained by IJIPL of the

mark on the contrary shows that the plaintiff or his predecessor-in-interest

were not the owners thereof; (v) that of the three registrations obtained by

IJIPL two have lapsed and the surviving registration is in respect of

motorcycles, scooters and parts and fittings thereof and which has also not

been not renewed after 9th October, 1997 but has not been removed from the

prove his ownership of the mark; (vii) the plaintiff is not entitled to interim

injunction on the ground of latches, acquiescence and waiver; (viii) the

plaintiff is not in footwear business; and, (ix) that sale of secondhand Yezdi

bikes does not amount to user by the plaintiff of the mark 'YEZDI'; (x) that

the plaintiff admittedly has had no sale/advertisement since 1996; (xi) IJIPL

which alone had obtained registrations of the mark has admittedly

abandoned the mark; (xii) that the plaintiff or anyone else did not object to

the application of the defendants for registration of the mark in Class 25;

and, (xiii) the defendants, neither in their advertisement or otherwise have

never claimed any association with the YEZDI motorcycles and the

document at page 709 of plaintiff's documents does not emanate from

defendants. Attention was drawn to (a) the printout from the plaintiff's

website which describes the plaintiff as a first generation real estate

developer; (b) the documents to show the extent of the defendants' business;

registration of the mark 'YEZDI' in Class 12 has claimed user since 28th

August, 2013; and, (d) the letter of the Official Liquidator to the Registrar

of Trademarks claiming rights to the trademark 'YEZDI'.

9. The counsel for the plaintiff in rejoinder contended that the Official

Liquidator has not opposed the registration sought by the plaintiff.

10. The counsels have thereafter also filed written submission.

11. The counsel for the plaintiff along with his written submission has

filed copies of judgments in :-

(i) Baker Hughes Limited Vs. Hiroo Khushalani 74 (1998) DLT 715;

(ii) Baker Hughes Limited Vs. Hiroo Khushlani 2004 (29) PTC 153 (DB);

(iii) Morgardshammar AB Vs. Morgardshammar India Pvt. Ltd.

2012 (49) PTC 449 Del;

(iv) Kamal Trading Company, Bombay Vs. Gillette U.K. Limited, Middles Sex, England 1988 (8) PTC 1 (DB);

(v) N.R. Dongre Vs. Whirlpool Corporation AIR 1995 Del 300 (DB);

(vi) Amritdhara Pharmacy V. Satya Deo Gupta AIR 1963 SC 449;

(vii) B.K. Engineering Co. Vs. Ubhi Enterprises (Regd.) ILR (1985) I Del 525 (DB);

(viii) T.V. Venugopal Vs. Ushodaya Enterprises Ltd.

MANU/SC/0169/2011;

(ix) Bata India Limited Vs. Pyare Lal & Co., Meerut City AIR 1985 AII 242;

(x) Beiersdorf A.G. Vs. Ajay Sukhwani 156 (2009) DLT 83;

(xi) Mahendra & Mahendra Paper Mills Ltd. Vs. Mahindra & Mahindra Ltd. (2002) 2 SCC 147;

(xii) Sunder Parmanand Lalwani Vs. Caltex (India) Ltd. AIR 1969 Bom 24 (DB);

(xiii) Hamdard National Foundation Vs. Abdul Jalil MANU/DE/2590/2008; and,

(xiv) Rolex Sa Vs. Alex Jewellery Pvt. Ltd. MANU/DE/0796/2009.

12. The counsel for the defendants along with his written submissions has

filed copies of judgments in (i) Smithkline Beecham Plc. Vs. Sunil

Sarmalkar 2012 (52) PTC 418(Del); (ii) Prina Chemical Works Vs.

Sukhdayal ILR (1974) I Del 545 (DB); (iii) Goramal Hari Ram Vs. Bharat

Soap and Oil Industries 23 (1983) DLT 401 (DB); (iv) Veerumal Praveen

Kumar Vs. Needle Industries (India) Ltd. 2001 PTC 889 (Del) (DB); (v)

S.P. Chengalvaraya Naidu Vs. Jagannath JT 1993 (6) SC 331; (vi) Kaviraj

Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories

AIR 1965 SC 980; (vii) Sona Spices Pvt. Ltd. Vs. Soongachi Tea Industries

Pvt. Ltd. 2007 (34) PTC 91 (Del.); (viii) Wander Ltd. Vs. Antox India (P)

Ltd. 1990 Supp (1) SCC 727; and, (ix) B.L. and Co. Vs. Pfizer Products

Incl. 2001 PTC 797 Del. (DB).

13. Having considered the rival contentions I am of the view that the

plaintiff is not entitled to the interim injunction as sought of restraining the

defendants from using the mark 'YEZDI' for the reasons hereinafter

appearing:-

(i) The plaintiff is yet to prove his title to the mark.

(ii) The defendants are admittedly the registered proprietor of the

mark without any objection from the plaintiff.

(iii) The plaintiff himself or through anyone else is not using the

mark in relation to any good, admittedly for at least ten years

prior to the institution of the suit. It is yet to be established that

the acts claimed by the plaintiff amount to use of the mark.

(iv) It is yet to be established that the use by the defendants of the

mark amounts to the defendants passing off their goods as that

of the plaintiff or the goods of the defendants being consumed

for the reason of association with the plaintiff.

(v) The plaintiff, in the prevalent circumstances, will not suffer any

injury from non grant of interim injunction; the plaintiff, if

proves his case, notwithstanding acquisition even if any of

further goodwill by the defendants in relation to the mark with

the passage of time, be entitled to permanent injunction. Per

contra, the defendants, if the plaintiff were to ultimately fail,

will suffer irreparable injury from grant of interim injunction.