Delhi High Court
H.S. Sahni, Sole Proprietorm/S M. ... vs Saic Motor Corporation Limited & ... on 22 November, 2022
2022/DHC/005143
$~8
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 22nd November, 2022
+ CS (COMM) 373/2022 & CC(COMM) 20/2022, I.As. 8714/2022,
18693/2022
H.S. SAHNI, SOLE PROPRIETOR M/S M. K. AUTO SALES
CORPORATION ..... Plaintiff
Through: Mr. Pankaj Kumar & A. Srivastava,
Advocates. (M:9811596201)
versus
SAIC MOTOR CORPORATION LIMITED & ORS. ..... Defendants
Through: Mr. Akhil Sibal, Sr. Advocate with
Mr. Prahhu Tandon, Ms. Kripa
Pandit, Ms. Navreet Kaur, Mr.
Christopher and Ms. Asawari Jain,
Advocates. (M:9810013453)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
I.A. 18693/2022 (Seeking stay on behalf of the Counter-Claimants)
2. This is an application on behalf of the Counter-Claimants /
Defendants (hereinafter 'Defendants') under Order XXXIX Rule 1 and 2
seeking an interim order restraining the Plaintiff in the suit- Mr. H.S. Sahni,
sole proprietor of M/s M.K. Auto Sales Corporation from using the marks
'M.G.', 'M.G.I.', or 'M.G. (device)' (hereinafter 'M.G. marks').
3. The Defendants in the present suit are Defendant No.1- M/s Saic
Motor Corporation Limited, Defendant No.2- M/s Saic Motor International
Co. Ltd. and Defendant No.3- M/s M.G. Motor India Pvt. Ltd. Both the
Plaintiff and the Defendants claim rights in 'M.G. marks'. The Plaintiff
Signature Not Verified
By:DEVANSHU JOSHI
Signing Date:25.11.2022
19:23:11
2022/DHC/005143
claims to be the prior user of the said marks since 1989 and the Plaintiff also
has registrations in India in respect of the said marks since 1998. The
Defendants claim global rights in the 'M.G.marks' since 1924 when the
business was established in the U.K.
4. The Plaintiff's sales tax registration dates back to 1989 and he claims to
have been continuously using 'M.G. marks' as well as the corporate logo
The word marks 'M.G.' with application no. 809098 and
'M.G.I' with application no. 809099, are registered in favour of the Plaintiff
since 1998. The explanation for having adopted the said mark by the
Plaintiff as has been set out in the plaint is that the mother of the Plaintiff,
Mrs. Mohinder Kaur Sahni, was affectionately referred to as 'Mohinder G'
by her family.
5. Both the parties are vehemently contesting each other's claims in the
Trade Mark Registry where oppositions and applications are pending. In the
written statement, the case of the Defendants is that the mark was adopted in
1924. As of 2021, the Defendants are the second largest automobile
company in China and the 12th largest automobile company in the world by
production.
6. Today, ld. counsel for the parties have brought to the notice of this
Court another litigation being FAO(COMM) 88/2021 titled H.S. Sahni v.
Mukul Singhal and FAO(COMM) 89/2021 titled Mukul Singhal v. M/s
M.K. Auto Sales Corporation involving the present Plaintiff wherein the ld.
Division Bench of this Court vide a common judgment has already injuncted
the Plaintiff herein from using the mark 'M.G.' and 'M.G.I.' in the
Signature Not Verified
By:DEVANSHU JOSHI
Signing Date:25.11.2022
19:23:11
2022/DHC/005143
following terms:
"31. The aforesaid documents do not establish that
H.S. Sahni was using the trademark "M.G"/"M.G.I"
and not "Datsun" in respect of automotive control
cables. However, even if it is accepted that the
aforesaid invoice indicates the use of the trademark
"M.G"/"M.G.I", the said use is not prior to the year
2017 as the earliest such invoice is of the year 2017.
XXXX
64. The Appellants have already preferred an
application seeking cancellation of the registration of
the marks in favour of H.S. Sahni. In the given facts,
this Court considers it apposite to restrain H.S. Sahni
from using the trademarks "M.G" and "M.G.I" or
any other marks deceptively similar to the mark "M.G
CABLE" till the disposal of the rectification
application filed by the Appellants. In terms of Section
124 of the Trade Marks Act, 1999, the suit is liable to
be stayed till the disposal of the said application."
7. The question before the Court would be as to who has superior rights
in the 'M.G. marks' and whether the Defendants have trans-border
reputation in respect of the 'M.G. marks'. The Defendants' 'MORRIS
GARAGES' mark was founded in 1920 in the U.K. The said 'MORRIS
GARAGES' name was, thereafter, abbreviated as 'M.G.'. The documents on
record show that there is substantial usage of the mark 'M.G.' globally by
the Defendants for more than 100 years now. The Defendants also launched
their cars in India in 2018-19 on a commercial scale. The Plaintiff is in an
identical business as that of the Defendants i.e., automobile parts and
accessories. The competing marks and logos are set out below:
Signature Not Verified
By:DEVANSHU JOSHI
Signing Date:25.11.2022
19:23:11
2022/DHC/005143
Plaintiff's device mark Defendant's device mark
8. A perusal of the order passed by the Ld. Division Bench shows that
there is serious doubt as to the user claimed by the Plaintiff. Moreover, the
Court cannot lose sight of the fact that cars under the mark 'M.G.' have been
sold by the Defendants in India on a large scale for the past 3-4 years now.
The Plaintiff is selling automobile accessories which also concern the safety
of automobiles and passengers using those automobiles. Thus, even remote
chances of confusion ought to be obviated between the products of the
parties as the marks in question are identical in nature and fall in an identical
class. Confusion is bound to occur.
9. Considering these facts, and the fact that the Plaintiff already stands
injuncted by the ld. Division Bench in the appeal as extracted above, it is
directed that the Plaintiff shall stand restrained from using the mark 'M.G.',
'M.G.I', 'M.G. (device)' or any other confusingly similar mark in word,
logo or device form in respect of automotive parts or accessories till the next
date of hearing.
I.A. 8714/2022
10. Let the rejoinder to the application be filed within 4 weeks.
Signature Not Verified
By:DEVANSHU JOSHI
Signing Date:25.11.2022
19:23:11
2022/DHC/005143
CS(COMM) 373/2022
11. List both the applications for hearing on 7th February, 2023.
PRATHIBA M. SINGH
JUDGE
NOVEMBER 22, 2022/dj/sk
Signature Not Verified
By:DEVANSHU JOSHI
Signing Date:25.11.2022
19:23:11
