Delhi High Court
Hugo Boss Trade Mark Management ... vs Ashok Kumar & Anr. on 23 February, 2022
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 23rd February, 2022.
+ FAO-IPD 5/2022, C.Ms.8755/2022 (of appellant u/O XLI R-5
CPC for stay), 8756/2022 (of appellant u/O XLI R-33 CPC r/w
O-XXXIX R-1&2 CPC for ad-interim injunction), 8757/2022 (of
appellant u/O XXVI R-9 CPC, O-XXXIX R-7 CPC r/w Section
151 CPC for appointment of Local Commissioner), 8758/2022
(of appellant under Section 151 CPC for summoning of the
subject matter suit bearing CS DJ No.96/2022), 8759/2022 (for
exemption) & 8760/2022 (of appellant under Section 151 CPC
for exemption from advance service to the respondent)
HUGO BOSS TRADE MARK MANAGEMENT
GMBH AND CO. KG ..... Appellant
Through: Mr. Sudarshan Kumar Bansal, Mr.
Rahul Sharma, Mr. Nikhil Sonker,
Mr. Dhirendra Singh and Mr.
Saurabh Arora, Advs.
Versus
ASHOK KUMAR ..... Respondent
Through: None.
CORAM:
HON'BLE MS. JUSTICE ASHA MENON
JUDGMENT
[VIA VIDEO CONFERENCING]
1. This appeal has been filed by the plaintiff before the learned Trial
Court against its order dated 7th February, 2022 whereby the learned Trial
Court declined to grant ex-parte ad interim injunction against the
respondent/defendant.
Signature Not Verified
Signed By:MANJEET KAUR
Signing Date:23.02.2022
23:08:22
2. Mr. Sudarshan Kumar Bansal, learned counsel for the appellant
submitted that the learned Trial Court had wrongly relied on the order of a
Coordinate Bench of this court in Januki Kumari J.B. Rana v. Ashok
Kumar, 2017 SCC OnLine Del 7533. Vide the same order, the learned
Trial Court had also directed summons to be issued to the defendant. The
learned counsel for the appellant submitted that when the identity of the
infringers of the registered trademarks of the appellant, viz. „HUGO
BOSS‟, „BOSS‟, „HUGO‟ and other BOSS/HUGO formative marks for its
clothing/apparels, accessories, perfumes, lifestyle goods, watches, shoes,
belts, bags, was unknown, there was no occasion for the learned Trial
Court to have directed issuance of summons. Rather an injunction against
infringement ought to have been granted.
3. The learned counsel explained that the suit was in the nature of a
"John Doe" litigation and the defendant(s) is/are unknown person(s) which
was why the name "Ashok Kumar" has been used, and till the Local
Commissioner went to the addresses given, the identity of the infringers
would not be known and it is only once the person(s) from whose premises
counterfeit products were seized would come to the court, the suit would
proceed against them and summons served to them. It is further submitted
that the learned Trial Court has erred in not appointing a Local
Commissioner and it was prayed that in view of the fact that not only in the
prayer in the appeal but separately by way of CM No.8757/2022 under
Order XVI Rule 9 of the Code of Civil Procedure, 1908 („CPC‟ in short), a
prayer has been made to appoint a Local Commissioner, this Court may so
Signature Not Verified
Signed By:MANJEET KAUR
Signing Date:23.02.2022
23:08:22
appoint the Local Commissioner to go to the premises mentioned at the
address to seize counterfeit products.
4. The learned counsel for the appellant has forwarded to the Court
Master by email the orders passed in Januki Kumari J.B. Rana (supra)
along with orders passed by Coordinate Benches of this Court in Luxottica
Group S.P.A & Anr. vs. Saad Nasim & Ors. [order dated 16th April,
2010 in CS(OS) 688/2010], Societe Des Produits Nestle, S.A & Anr. Vs.
Mohd Zahid And Sons & Ors. [order dated 28th November, 2014 in
CS(OS) 3629/2014], Espn Software India Private Ltd. v. Tudu
Enterprise, 2011 SCC OnLine Del 5710 and Doctutorials Edutech Private
Limited Vs. Telegram Fz-Llc & Ors. [Order dated 25th January, 2022 in
CS(COMM) 60/2022] The Court has considered these cited cases as well
as the submissions of the learned counsel for the appellant.
5. This appeal is directed fundamentally against the refusal of the
learned Trial Court to exercise its discretion to grant ex-parte ad-interim
injunction, placing reliance on the decision in Januki Kumari J.B. Rana
(supra). Where a view is possible on the material on the record, without
sound cause, a superior court would be reluctant to supplant its own view
in appeal. The learned Trial Court has relied on the order in Januki
Kumari J.B. Rana (supra). This Court has considered the said judgment
and finds that the learned Trial Court has rightly relied on the said
judgment.
6. In the present case, admittedly there is no known
respondent/defendant. The respondent/defendant sued is "Ashok Kumar".
In Januki Kumari J.B. Rana (supra), relief was declined precisely for this
Signature Not Verified
Signed By:MANJEET KAUR
Signing Date:23.02.2022
23:08:22
reason that ex-parte ad-interim injunction was sought against the unknown
persons named as "Ashok Kumar". The court distinguished other cases by
noting that where this court had granted such ex-parte "Ashok Kumar"
injunctions, there were other known defendant or defendants and one of
the defendants was named as "Ashok Kumar" to represent all other
unknown infringers of trademark. The court had considered several other
judgements including Laxmishankar Harishankar Bhatt v. Yashram
Vasta, (1993) 3 SCC 49, SBL Ltd. v. Himalaya Drug Co., (1998) 2 AP LJ
6 (DNC) (Del), Ardath Tobacco Company Ltd. v. Munna Bhai, 2009
SCC OnLine Del 29, Indian Performing Right Society Ltd v. Badal Dhar
Chowdhry, 2010 SCC OnLine Del 1361, to conclude in para No.27 as
below:
"27. The Court has to ensure that the obligations imposed
upon it by this provision of law are complied with. In a case
where the ex-parte ad interim injunction is granted, the
opposite party against whom an order of injunction is passed is
required to be served with the copy of the order along with the
other relevant documents on same day or next day and the
plaintiff has to file such an affidavit of compliance in the Court.
On an ex-parte ad interim injunction being granted against
John Doe or Ashok Kumar i.e. unknown defendant, this Court
wonders how the applicant would fulfill the conditions of this
provision of law and if this Court cannot ensure the compliance
it would be failing in its obligations conferred under the
provisions of law. In the case H.H. Kamaluddin (supra), the
Supreme Court has cautioned that an ineffective injunction
should not be granted and the Court shall never pass an order
for the "fun of passing it". Learned counsel for plaintiffs has
failed to point out any manner in which the ex-parte injunction
order against the unknown defendants be made known to them
or the way in which the compliance of Order 39 Rule 3 of CPC
can be done. Grant of ex-parte injunction in this case, court
Signature Not Verified
Signed By:MANJEET KAUR
Signing Date:23.02.2022
23:08:22
feels like issuing a blank civil search warrant against
unknown/unnamed infringers and thereby allowing the
plaintiffs to enter any premises, any shop in search of the
counterfeit articles, either personally or through court
commissioners under Order 26 Rule 9 of CPC. The court
wonders if this is the object of this provision. It is not that the
plaintiffs are remediless against unknown persons i.e. the
infringers in case of mass infringement of trademark. When
wide scale of violation or infringement of trademarks are found,
the remedy is available in the Trademark Act itself by way of
criminal complaint against those unknown infringers of the
trademark and the offences are cognizable offences under
Section 115 of the Trademark Act."
This Court finds the exact same fact situation in the present case. It is
well-nigh impossible to take a different course.
7. In the other cases cited by the appellant, namely, Luxottica Group
S.P.A & ANR. (supra), Societe Des Produits Nestle, S.A & Anr. (supra),
Espn Software India Private Ltd. (supra) and Doctutorials Edutech
Private Limited. (supra), it was amongst named and specific defendants
that "Ashok Kumar" was also named. In the present case, there is no such
known respondent/defendant. The judgment in Januki Kumari J.B. Rana
(supra) applies on all fours to the facts of the present case.
8. There is no error in the impugned order. The appeal is without merit
and is dismissed in limine.
9. The judgment be uploaded on the website forthwith.
(ASHA MENON)
JUDGE
FEBRUARY 23, 2022/„bs‟
Signature Not Verified
Signed By:MANJEET KAUR
Signing Date:23.02.2022
23:08:22
