Mr. Shammi Narang & Anr vs Pindrop Music App Private Limited
2017 Latest Caselaw 2560 Del

*     IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                  Judgment reserved on :16.05.2017
                                  Judgment delivered on : 22.05.2017
+     CS(COMM) 271/2017

      MR. SHAMMI NARANG & ANR

                                                                 ..... Plaintiffs

                         Through        Mr. Giriraj Subramanium and Mr.
                                        Simarpal Singh Sawhney, Advs.



                         versus



      PINDROP MUSIC APP PRIVATE LIMITED

                                                                ..... Defendant

                         Through        Mr.Vaibhav Gaggar and Mr.Shiv
                                        Johar, Advs.

CORAM:
HON'BLE MS. JUSTICE INDERMEET KAUR

INDERMEET KAUR, J.

I.A. No.4482/2017 (under Order XXXIX Rules 1 & 2 of the Code) & I.A. No.5744/2017 (under Order XXXIX Rule 4 of the Code) in CS(COMM) 271/2017

1 There are two plaintiffs before this Court. Plaintiff No. 1 is the sole

proprietor of M/s Studio Pindrop. Plaintiff No. 2 is a limited liability

partnership firm. One of its partners is the son of plaintiff No. 1. Plaintiff

No. 1 adopted the trademark „PINDROP‟ in the year 1998 by starting

operations in his studio „PINDROP‟ which is one of first digital recording

studios in the country. It applied for registration of his said trademark on

07.08.2014 which has been granted on 23.08.2016. This was in class 41

(entertainment and media solutions). Plaintiff No. 1 is regarded as the „voice

of Delhi‟ and is heard by millions on a daily basis aboard the Delhi Metro as

also the other metros of the country. Today the „PINDROP‟organizations

i.e. proprietor of plaintiff No. 1 as also plaintiff No. 2 have secured a place of

its own in terms of its creative and technical services. The recording studio

of „PINDROP‟ was the first ever digital recording station. Dubbing work of

various popular films has been carried out at the studio of the plaintiff. The

plaintiff has received national and international recognition having carved

out a niche for itself in this market of film making, audio and music

productions. The word „PINDROP‟ is associated with the products/services

/brand identity of the plaintiff.

2 The plaintiff is aggrieved by the defendant‟s adoption of the registered

trademark/trade name of the plaintiff „PINDROP‟; the defendant is operating

a mobile application by the name of „Pindrop Music‟ and also has a domain

name. After due diligence, it was revealed that the website of the defendant

company was incorporated on 18.02.2015; in March, 2017, the plaintiff

came across this mobile application of the defendant „Pindrop Music‟.

Further inquiries revealed that this is a music application which is based

upon the moods of an individual. Wherein services are provided to

individuals. The adoption by the defendant of this trade name/trademark of

which the plaintiff has a registration is wholly illegal; it is encashing upon

the goodwill and reputation of the plaintiff. The present suit has accordingly

been filed seeking infringement of copyright, passing off as also damages.

3 On 17.04.2017, an ex-parte interim injunction had been granted in

favour of the plaintiff and till the next date, the defendant/its officers/agents

were restrained from advertising, promoting in any many using the mark

„PINDROP‟ with respect to e-commerce services, online sale platforms and

or any other allied and cognate services which would in any manner infringe

upon the plaintiff‟s trade mark „PINDROP‟.

4 On 09.05.2017 (after service upon the defendant), an application under

Order XXXIX Rule 4 of the Coe had been filed; the defendant has prayed

that the ex-parte interim injunction granted on 17.04.2017 be set aside. The

averments contained in the application have been perused. No separate reply

has been filed to the application under Order XXXIX Rules 1 & 2 of the

Code. It is stated that the averments made in this application be treated as

the defence of the defendant.

5 In this application, the primary contention of the defendant is that he

also has a registered trademark „Pindrop Music‟ which registration he has

obtained in class 42. This registration had been granted in his favour on

13.02.2017 on his application dated 27.01.2016, this has a retrospective

effect. It is pointed out that the publication of the trademark of the defendant

„Pindrop Music‟ had been effected on 09.09.2016; this was a deemed notice

to the public. No opposition had been filed by the plaintiff to the application

filed by the defendant seeking registration of the said trademark/name. The

plaintiff was well aware of the fact that the defendant has a registration in his

name but this has been deliberately concealed from this Court while

obtaining the ex-parte order on 17.04.2017. The plaintiff is guilty of

suppression of facts and on this count alone, the ex-parte order is liable to be

set aside. Further averments made in the application disclose that the

services of the defendants are distinct and different from the services of the

plaintiff; whereas the defendant has been registered in class 42 (mobile and

computer software) and as the trade name of the defendant itself suggests

(„Pindrop Music‟) is an online music delivery of services to its customers;

services provided by the plaintiff are from a stationary spot i.e. from a

studio; the nature of the work of the plaintiff is even otherwise distinct; the

plaintiff himself has stated that he is a digital/audio studio whereas the

services of the defendant are based on providing music to a customer

depending upon the mood variability and requests so made which are

downloaded through a mobile application which is an online service. The

directors of the defendant company had developed the concept of this music

based application since the year 2014 and this website was launched in

January, 2015. The name „Pindrop Music‟ has been developed by the

defendant after much deliberations and careful thought; it has been proposed

on the basis of an innovative technique whereby a user could refer songs by

dropping pins on a map and gain knowledge of the trending music being

heard around them. It has an innovative method of providing music in a

personalized manner. This mobile application came into existence in the

month of October, 2015. The defendant has more than 14 lacs different

users making it one of the leading startup ventures in the technology domain.

The plaintiff cannot have any monopoly on the word „Pindrop‟. The ex-

parte injunction granted in favour of the plaintiff is causing an irreparable

harm to the defendant. Balance of convenience is in his favour; no prima-

face case having been made out by the plaintiff, the injunction is liable to be

dis-continued.

6 In rejoinder, learned counsel for the plaintiff points out that on a

search having been made by the plaintiff, it was noted that all big time and

popular music applications (Gaana, Saavn and WYNK music) are not only

registered in class 42 but also in class 41; since the defendant is registered in

class 42 alone (which defines computed software services and scientific

services), it is not open to the defendant to get into the business of music. To

enter this arena i.e. the music domain, the plaintiff necessarily has to seek

registration in class 41 as well. The defendant does not have a registration in

class 41. He deserves to be dis-continued with this service. On the question

of suppression, it is pointed out that the plaintiff had to make a search only in

his particular class i.e. class 41 (plaintiff‟s registration) and on such a search,

there was no information revealed of the defendant‟s registration who is

registered in separate class i.e. class 42. The plaintiff is not guilty of any

suppression.

7 On behalf of the plaintiff, arguments have been addressed by counsel

Mr.Giriraj Subramanium. Learned counsel for the plaintiff in support of his

submissions has placed reliance upon 2008 (102) DRJ 503 Ran Steels Vs.

Ran India Steels Ltd. as also another judgment of a Bench of this Court

reported as A. Kumar Milk Foods Pvt. Ltd. Vs. Vikas Tyagi & Anr in CS

(OS) No.1627/2011 decided on 04.09.2013. Submission being that under

Section 29 (2) (a) of the Trademarks Act, the defendant is guilty of

infringement of the trademark of the plaintiff as while riding upon the

reputation and goodwill of the plaintiff, he is offering similar goods and

services for which the plaintiff already has a registration in class 41;

admittedly the defendant has no registration under the said category. It is

pointed out that in both the judgments (supra), the scope of Section 28 of the

said Act had also been considered and the Court had noted that the question

of infringement would not arise where the registered marks are used in

different class or goods/services by their respective proprietors but this is

clearly not so in the instant case. It is pointed out that whereas the plaintiff is

offering services in class 41 under "music and media solutions", the

defendant without having a registration in class 41 is using a music mobile

application having the same registered trade name of the plaintiff

(„PINDROP‟) and trading in the same goods/services is attempting to pass

off his services/goods as that of the plaintiff. Learned counsel for the

plaintiff has placed reliance upon Example 2 as mentioned in the judgment

of A Kumar Milk Foods Pvt. Ltd (supra). It is pointed out that his case

would squarely fit into the said illustration.

8 On behalf of the defendant, arguments have been addressed by Mr.

Vaibhav Gagar, Advocate. Learned counsel for the defendant has placed

reliance upon judgments reported in 2010 SCC OnLine Del 2554 Shell

Brands International Ag & Anr. Vs. Gagan Chanana & Others, (2016) 2

SCC 683 S. Syed Mohideen Vs. P. Sulochana Bai as also (1997) 4 SCC 201

Vishnudas Trading as Vishnudas Kishendas Vs. Vazir Sultan Tobacco Co.

Ltd. Hyderabad & Another. It is pointed out that where the plaintiff is

patently guilty of suppression of facts by virtue of which he had obtained an

ex-parte order, no discretion can be exercised in favour of such a person.

Section 28 (3) contemplates a situation where two or more persons are

registered proprietors of trademarks which are identical and nearly similar, it

gives a concurrent right to both the persons to use their registered marks in

their favour in their respective fields. This Section comes to the aid of the

defendant. It is additionally pointed out that the guilt of the plaintiff is writ

large from the fact that the word „Pindrop‟ if typed on a Google application,

all information about „Pindrop‟ is revealed which includes the information

about the registration of the „Pindrop Music‟ mobile application of the

defendant. To support this stand, learned counsel for the defendant has

placed on record a search carried out by him where on typing the word

„Pindrop‟ on the Google application, „Pindrop Music‟ (trade name of the

defendant) appears at serial No.3. This search document has been placed on

record. It is pointed out that the alleged „due diligence‟ carried out by the

plaintiff would have revealed all these facts but this was deliberately

withheld by the plaintiff.

9     Arguments have been heard. Record has been perused.

10    Plaintiff No. 1 is a registered proprietor of trade name „Pindrop‟ which

registration he has obtained on 28.03.2016 in terms of an application dated

07.11.2014. His registration is in class 41 (Entertainment and Media

Solutions). The averments made in the plaint as also in the pending

application disclose that plaintiff No. 1 is a recording studio; Shammi

Narang is in fact the proprietor of Studio „Pindrop‟ who has been described

as plaintiff No. 1. It provides high quality video and graphics from this

studio which is well equipped with the software which make videos and

graphics; dubbing work of popular Hindi and English films and other

language films are also carried out at this studio. The popularity of plaintiff

No. 1 has also been described and which is not disputed. The fact that it has

been internationally recognized is also not disputed. It had launched its

website in the year 2011. Para 21 clearly states that the aim of the plaintiff‟s

website was to give an overview of the services offered by the plaintiff

which is a service (as noted supra) of audio and video recordings from the

studio of plaintiff No.1. In fact plaintiff No. 1 has been described as the first

digital studio and has spent huge money in promoting and advertising this

service.

11 The status of plaintiff No. 2, as rightly pointed out by the defendant, is

only that of a son of plaintiff No. 1; he does not appear to be a necessary

party in the present suit as it is not the case of plaintiff No. 1 that trade name

which is in the name of plaintiff No. 1 has been assigned, transferred to

plaintiff No. 2 or if he has any right over this trade name. The status of

plaintiff No. 2 in the present proceedings in fact appears to be in-appropriate

to say the least.

12 The contention of the plaintiff is that the defendant company was

incorporated on 18.02.2015. He learnt about the activities of the defendant

only in March, 2017 when he came across the mobile application „Pindrop

Music‟ of the defendant. Submission is that the present suit has been filed

on 10.04.2017 as he was aggrieved by the act of the defendant who was

infringing upon the registered mark of the plaintiff. The ex-parte order had

been obtained by the plaintiff on 17.04.2017. The averments made in the

plaint and the arguments addressed before this Court on 17.04.2017 were

completely silent on the registration of the defendant having its registered

mark „Pindrop Music‟ in class 42. Even on a query put to the learned

counsel for the plaintiff, his submission is that even after due diligence, he

did not come to know about these facts; it was only when the defendant had

filed his application under Order XXXIX Rule 4 of the Code that he learnt

about the registration of the music application „Pindrop Music‟ of the

defendant.

13 As rightly pointed out by the learned counsel for the defendant, due

diligence by the plaintiff would mean a „due diligence‟ in actual fact and not

on paper. Even a layman while typing the word „Pindrop‟ on a Google

application would have learnt about the status of the defendant company

which shows that the „Pindrop Music‟ mobile application of the defendant is

a mobile application which is operating and in fact has a registration. All

this is revealed by a simple click on the Google application by typing the

word „Pindrop‟. This is also evident from the search report placed on record

by the defendant. In fact this submission is not and cannot really be disputed

by the plaintiff. The submission of the plaintiff that he is required to carry

out his search only in his particular class i.e. class 41 is also a misconceived

submission as it is not the class number which has to be typed to obtain this

information; the simplicitor typing of the word „Pindrop‟ reveals all this

information which information is to the effect that the defendant has a

registered mobile application „Pindrop Music‟. The plaintiff is thus clearly

guilty of suppression of facts. He did not disclose this fact i.e. about the

registration of the defendant at the time when he obtained an ex-parte order.

Equity does not lie in favour of such a litigant. This become very relevant

while deciding the present application.

14 The observations of the Coordinate Bench of this Court in the

judgment of Shell Brands Internationa Ag (supra) are relevant and extracted

herein as under:-

"The plaintiffs cannot, in this Court's opinion, take shelter from the fact that there is no explicit mention of infringement. Under the circumstances, such as the present one, when both the plaintiffs and the defendant are clearly owners of registered trademarks, it would be obvious that the action for an aggrieved party would be only a claim for passing off, under common law. Yet, the aggrieved party, under such circumstances, is under a duty to inform the Court that the defendant is owner of the rival mark, is also registered proprietor, like itself. The plaintiffs have listed out

all its registrations but deliberately withheld any mention about the defendant's application which was accepted in 2005 and made effective from 1996 and most importantly, suppressed the fact of their having approached the concerned authorities for rectification. Under the conspectus of these facts and attended circumstances, the charge of suppressing reliefs and material facts and persuading the Court by such devices to obtain an ex- parte order, made by the defendant, is well-founded."

15 The additional submission of the defendant that the services of the

plaintiff and of the defendant are clearly distinct and different is also a

parameter which again becomes very relevant. Whereas the work of the

plaintiff comprised of providing goods/services to a customer for media and

entertainment solutions i.e. to carry out dubbing/recordings in its studio; the

services of the defendant are an online service to a purchaser of his

application who according to its moods and variations would hear the music

that he so desires. The submission of the plaintiff that all other music

companies are registered in two separate classes i.e. class 41 and class 42

and class 42 by itself (in which the defendant is registered) would not enable

the defendant to carry on online music service is a submission which, at this

stage, cannot be gone into and for which purpose this Court is of the view

that it will require evidence and trial. The plaintiff is offering delivery

services from a stationary platform; services of the defendant are an online

delivery service. The distinction between the two services is clear and

evident.

16 Examples 1 & 2 as canvassed by the parties (extracted from the

judgment of A. Kumar Milk Foods Pvt. Ltd. (supra) are illustrative but not

exhaustive. In the instant case both the plaintiff and the defendant

admittedly have their separate registered trademarks. The services of the two

are different and distinct. The submission of the plaintiff that he alone has a

right to enter the music domain name by virtue of his registration in Class 41

and there is an embargo on the defendant to enter the arena of music (by

virtue of his registration in Class 42 alone) is, as already noted supra, a

matter of trial.

17 Section 28 (3) of the Trademarks Act also deals with such a situation.

It reads herein as under:

"Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he

would have if he were the sole registered proprietor."

18 Section 28 (3) of the said Act does not permit infringement by one

registered proprietor against another unless two conditions are satisfied

which are that (a) the two registered marks are identical with or nearly

resemble to each other; (2) they are in respect of same class and service.

This is clearly not so in the instant case.

19 The defendant even otherwise in the last 1-½ years since its

incorporation has built up a goodwill and reputation which is evident from

the lacs of persons who are using his music application; the fact that the

defendant has spent more than Rs.20 lacs on publicity and advertisement

expenses qua the figure of Rs.2 lacs expended by the plaintiff (admitted) also

cannot be ignored at this stage; the growing business of the defendant cannot

be stifled and brought to a standstill.

20 The plaintiff has failed to make out a prima-facie case in his favour.

Balance of convenience is in fact in favour of the defendant. Irreparable loss

and injury will be suffered by him if this injunction is allowed to continue.

The prayer made in the application under Order XXXIX Rule 4 of the Code

(I.A. No.5744/2017) is allowed.

21 Both the applications are disposed of in the above terms.

CS(COMM) 271/2017

22 Written statement now be filed within three weeks with advance copy

to the learned counsel for the plaintiff who may file replication before the

next date.

23    List before the Joint Registrar on 28.08.2017.



                                             INDERMEET KAUR, J
MAY 22, 2017
A