Madras High Court
Mr.Amit Agarwal vs Mr.Shiv Kumar Gupta on 24 February, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2025:MHC:532
O.A.Nos.1 & 2 of 2025
& A.No.743 of 2025
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 24.02.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
O.A.Nos.1 & 2 of 2025 in
C.S.(Comm.Div)No.2 of 2025
and
A.No.743 of 2025
in O.A.No.1 of 2025
O.A.Nos.1 & 2 of 2025
1.Mr.Amit Agarwal,
Sole Proprietor of M/s. Seetu Electricals
No.136/1, Govindappa Naicken Street, Chennai - 600 001.
2.M/s.Seetu Orbit Cable India Pvt. Limited
Represented by its Director, Mr.Amit Agarwal,
3rd floor, No.36, Govindappa Naicken street, Parrys,
Sowcarpet, Chennai, Tamil Nadu-600 001.
... Applicants
-vs-
1.Mr.Shiv Kumar Gupta,
A-40, Third Floor, Vivek Vihar Phase 2,
Jhilmil, Delhi 110 095.
1/21
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
& A.No.743 of 2025
2.M/s.ADL Orbit Cable (India)
Plot No.46-48, SIDCUL, Sector 8A,
Integrated Industrial Estate, Haridwar,
Uttarakhand-249 403. .. Respondents
Prayer in O.A.No.1 of 2025:Original Application filed under Order XIV,
Rule 8 of O.S.Rules Read with Order XXXIX Rule 1 of C.P.C., 1908,
praying for an ad interim injunction restraining the Respondents/Defendants,
by itself, its lawful assignees, men, servants, agents, distributors, stockiest,
representatives or anyone claiming through or under them from in any
manner infringing the applicant's/plaintiff's registered trademarks “ORBIT”
by manufacturing, marketing, using or in any other manner dealing with
electrical products or any allied and cognate products under the trademark
ORBIT/ADL ORBIT or in any other manner similar and identical to the
Plaintiffs registered trademark ORBIT pending disposal of the suit.
Prayer in O.A.No.2 of 2025:Original Application filed under Order XIV,
Rule 8 of O.S.Rules Read with Order XXXIX Rule 1 of C.P.C., 1908,
praying for an ad interim injunction restraining the Respondents/Defendants,
its lawful assignees, men, servants, agents, distributors, stockiest,
2/21
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
& A.No.743 of 2025
representatives or anyone claiming through or under them from in any
manner passing off and/or enabling others to pass off the
Respondent/Defendants' products under the trademark ORBIT/ADL ORBIT
as and for the plaintiffs' products by manufacturing, selling or offering to
sell, distributing, displaying, printing, stocking, using, advertising their
products with a trade mark and/or label that is identical in with that of the
plaintiffs' ORBIT trade mark or in any other manner similar and identical to
the plaintiffs Trade Mark ORBIT pending disposal of the suit.
In both OAs:
For Applicants : Mr.M.S.Bharath
for Mr.Ashok Kumar J Daga
For Respondents: Mr.P.S.Raman, Senior Counsel
for Mr.Gautam S.Raman
A.No.743 of 2025
1.Mr.Shiv Kumar Gupta,
A-40, Third Floor, Vivek Vihar Phase 2,
Jhilmil, Delhi 110 095.
2.M/s.ADL Orbit Cable (India)
Plot No.46-48, SIDCUL, Sector 8A,
Integrated Industrial Estate, Haridwar,
Uttarakhand-249 403. .. Applicants
vs.
3/21
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
& A.No.743 of 2025
1.Mr.Amit Agarwal,
Sole Proprietor of M/s. SEETU Electricals
No.136/1, Govindappa Naicken Street, Chennai - 600 001.
2.M/s.Seetu Orbit Cable India Pvt. Limited
Represented by its Director Mr.Amit Agarwal,
3rd floor, No.36, Govindappa Naicken street, Parrys,
Sowcarpet, Chennai, Tamil Nadu-600 001. .. Respondents
Prayer in A.No.743 of 2025: Application filed under Order XIV, Rule 8 of
O.S.Rules Read with Order XXXIX Rule 4 & Section 151 of C.P.C., 1908,
praying to vacate the ex parte injunction order dated 03.01.2025 granted in
O.A.No.1 of 2025.
For Applicants : Mr.P.S.Raman, Senior Counsel
for Mr.Gautam S.Raman
For Respondents: Mr.M.S.Bharath
for Mr.Ashok Kumar J Daga
COMMON ORDER
The plaintiffs are engaged in the business of manufacturing and
marketing cables and wires under the trade marks ORBIT and ADL ORBIT.
The 1st plaintiff is admittedly the registered proprietor of these trade marks.
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
The suit was triggered upon the plaintiffs' noticing the filing of three
applications by the 1st defendant for registration of device marks containing
the word ORBIT. The said applications were filed in August 2024. In the
power of attorney filed in support of those applications, the 1st defendant
described himself as a partner of the 2nd defendant. In these circumstances,
after issuing cease and desist notice to each defendant separately, the suit
was instituted. Along with the suit, two applications (O.A.Nos.1 & 2 of
2025) for interim injunction to restrain infringement and passing off were
filed. By order dated 03.01.2025, ex parte orders of ad interim injunction
were granted in both these applications. Upon receipt of notice, the
respondents filed A.No.743 of 2025 to vacate the orders of interim
injunction.
2. Learned counsel for the plaintiffs, Mr.M.S.Bharath, placed strong
reliance on the settlement recorded in earlier proceedings between the
plaintiffs and the 2nd defendant. By referring to the application filed under
Order XXIII Rule 3 of the Code of Civil Procedure, 1908 (the CPC) to
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
record such settlement, he pointed out that the 2nd defendant acknowledged
that the 1st plaintiff is the sole proprietor of M/s.Seetu Electricals and the
legal owner and lawful proprietor of the trade marks/trade name ADL
ORBIT, ORBIT and SEETU. He pointed out that each partner of the 2nd
defendant firm acknowledged the proprietorship of the 1st plaintiff over the
word and device marks listed therein. In particular, he pointed out that the
2nd defendant confirmed that the partners would cease to manufacture,
market, sell or advertise goods/services bearing the trade mark/trade name
ORBIT or any other trade mark/trade name, which is deceptively similar
thereto. Therefore, learned counsel contends that the filing of trade mark
applications by the 1st defendant for deceptively similar trade marks is
tantamount to circumventing the settlement recorded in proceedings before
the Additional District Judge, Delhi.
3. As regards the defences raised by the defendants, learned counsel
submitted that the principal defence is acquiescence. By referring to the
documents filed by the defendants, learned counsel submitted that the
invoices issued by the 2nd defendant to Seetu Electricals (pages 130 to 137 of
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
the documents filed by the defendants) were issued pursuant to purchase
orders placed on the 2nd defendant prior to the settlement in October 2019.
Consequently, he submits that these documents cannot be construed as
indicative of acquiescence. As regards the invoices issued by Orbit Wire and
Cables India Private Limited between June 2020 and July 2020, he submits
that the issuer of invoices is a separate legal entity and, therefore, neither
knowledge nor acquiescence can be attributed to the plaintiffs on that basis.
4.With regard to the second ground of challenge by the defendants,
suppression of material facts, learned counsel submits that
C.S(Comm.)No.504 of 2024 was filed by the 1st plaintiff against M/s.OCI
Cables India, which is a different partnership firm. Similarly, as regards
C.S.(Comm.)No.1002 of 2024, he submits that the said suit was filed by
Lokesh Tayal, an individual trading as M/s.Durga Plastics. He also submits
that the suit pertains to different trade marks, which do not form the subject
of the present suit. Hence, he contends that the plaintiffs were not required to
refer to these suits and that it cannot be said that material facts were
suppressed.
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
5. By relying on Section 2(2)(c) of the Trade Marks Act, 1999 (the
TM Act) read with sub-section (5) of Section 29 thereof, learned counsel
contended that the use of a trade name in relation to the sale of goods
qualifies as both use and infringing use. Consequently, he submits that the
interim prayers of the plaintiffs would embrace the use of an infringing trade
name. In support of these contentions, learned counsel referred to and relied
upon the following judgments:
(i) Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel and
others, AIR 2006 SC 3304, particularly paragraphs 43, 57 & 58 thereof with
regard to waiver and acquiescence.
(ii) Ilaiyaraja v. B.Narsimhan and others, 2015 (3) CTC 622, with
regard to what constitutes material facts.
(iii) Make My Trip (India) Private Limited v. Make My Trip Travel
(India) Private Limited, 2019:DHC:5353 for the proposition that a large
organisation cannot be attributed with knowledge and that an inference of
acquiescence to acts of infringement cannot be drawn solely on the basis of
stray correspondence.
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
6. In response to these contentions, Mr.P.S.Raman, learned senior
counsel, opened his submissions by stating that the 2nd defendant uses the
trade mark OCI in relation to the sale of cables and wires and does not use
the trade marks ORBIT or ADL ORBIT. As regards the 1st defendant, by
referring to the trade mark applications, he submitted that the said
applications were filed in his individual capacity and not as a partner of the
2nd defendant. He also submitted that Section 12A of the Commercial Courts
Act, 2015, was not complied with by the plaintiffs.
7. His principal contention on the merits was that the plaintiffs had
knowledge of and acquiesced in the use of the trade name ADL Orbit cable
(India) by the 2nd defendant. By referring to paragraph 30 of the plaint in
C.S.(Comm.)No.504 of 2024, learned senior counsel submitted that the 1st
plaintiff herein, who filed the plaint therein, admitted that he and his son,
Govinda Agarwal, incorporated Orbit Wire and Cables India Private Limited
on 29.08.2020. In view thereof, he submits that the plaintiffs cannot assert
lack of knowledge of transactions between Orbit Wire and Cables India
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
Private Limited and the 2nd defendant. As a corollary, he submits that it is
completely false for the plaintiffs to state that they were unaware that the 2 nd
defendant continued using the same trading name and style long after the
settlement was recorded by the District Court in Delhi. By comparing and
contrasting the relief claimed in the plaint in C.S(Comm.)No.504 of 2024
and the present suit, learned senior counsel submitted that there is no
reference to trading name in the present suit, whereas the 1st plaintiff
expressly sought relief in respect of the trading name before the Delhi High
Court. He also pointed out that the present suit was filed after the request for
interim relief was declined by the Delhi High Court, which referred the
parties for mediation. He concluded his submissions by referring to the
Division Bench judgment of this Court in Anugraha Castings v. Anugraha
Valve Castings Limited, order dated 28.01.2025 in C.M.P.No.1969 of 2025
in C.M.A.No.264 of 2025, wherein this Court held that ex parte orders cause
grave prejudice to the defendants and should not be granted except in rare
cases where the grant of such relief is necessary.
8. In view of the rival contentions, the first aspect to be noticed is the
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
parties to the suit. The 1st plaintiff is the registered proprietor of the relevant
trade marks and the 2nd plaintiff is a private limited company that uses the
trade marks, and of which the 1st plaintiff is a Director. The 1st defendant,
Shiv Kumar Gupta, is the person who filed three applications for
registration of trade marks in August 2024. In the power of attorney filed
along with those applications, he described himself as a partner of ADL
Orbit Cable (India), which is the 2nd defendant.
9. Against this backdrop, the contention that Section 12A was not
complied with warrants a brief discussion. The 1st defendant filed three
applications on 21.08.2024 in class 9 for the registration of trade marks
prominently containing the word ORBIT. At the hearing today, learned
senior counsel submitted, on instructions, that the said trade mark
applications were withdrawn today. Nonetheless, the said trade mark
applications are on record, and it is recorded therein that the trade mark
applicant has used the marks in respect of which the applications were filed
from 1997. An assertion to such effect is also set out in the user affidavits at
paragraph 5 thereof.
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
10. In spite of being represented through counsel, the 1st defendant has
failed to place on record any evidence of use of the said trade marks from
01.01.1997 or even from a later date. On the contrary, the plaintiffs have
placed on record evidence of use of the trade marks ORBIT and ADL
ORBIT and evidence of registration thereof in the name of the 1st plaintiff.
After noticing these applications, the 1st plaintiff issued cease and desist
notices to both the defendants before filing the suit. The cease and desist
notices did not elicit a reply. These facts and circumstances justify seeking
interim relief without initiating pre-institution mediation. As regards the 1st
defendant, a strong prima facie case is made out, the balance of convenience
is in favour of the plaintiffs and irreparable hardship would be caused to the
plaintiffs unless the order of interim injunction is extended until disposal of
the suit.
11. Before proceeding further, the allegation regarding suppression
needs to be dealt with briefly. On examining the plaints and written
statements in C.S.(Comm.)No.504 of 2024 and C.S.(Comm.)No.1002 of
2024, it is clear that C.S.(Comm.)No.504 of 2024 is against a different
partnership firm called M/s.OCI Cables India. C.S.(Comm.)No.1002 of 2024
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
has been filed by Lokesh Tayal against the 1st plaintiff and others seeking
relief in respect of the trade marks OCI and associated marks. It may have
been appropriate for the plaintiffs to refer to the suits, but it cannot be said,
at this juncture, that material facts were suppressed and that interference
with the orders of injunction is called for for that reason.
12. As regards the 2nd defendant, while the plaint indicates that the
exact constitution of the 2nd defendant is not known to the plaintiffs, it is
stated by learned counsel for the defendants that the 2nd defendant is a
partnership firm. It is also admitted that the 1st defendant is currently a
partner of the 2nd defendant. The settlement recorded before the District
Court, Delhi was admittedly between the 2nd defendant herein, represented
by its then four partners, Lokesh Tayal, Daulat Jain, Rupesh Garg and
Neelam Bansal, who were the plaintiffs therein; Orbit Wires and Cables, the
first defendant therein, a partnership firm of which Rupesh Kumar Garg and
Govinda Agarwal were partners; and Govind Cable Company, a proprietary
concern of Govinda Agarwal, son of Amit Agarwal. Each of these parties
signed the application under Order XXIII Rule 3 of the CPC to record the
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
settlement. In the application, it is expressly acknowledged by the 2nd
defendant that the 1st plaintiff is the sole proprietor of several trade marks
containing the word ORBIT prominently, including several device marks.
After agreeing to withdraw or surrender applications and registrations,
respectively, containing the trade marks ORBIT and ADL ORBIT, the
partners of the 2nd defendant herein categorically agreed that they have
ceased to manufacture, market, advertise or offer for sale of goods/services
under the trade marks/trade name ORBIT or any trade mark/trade name
deceptively similar thereto. The following two clauses are particularly
relevant:
“ix. That Shri Lokesh Tayal and Shri Daulat Jain,
partners of the Plaintiff firm confirm that they have
already ceased to manufacture, market, offer for sale,
advertise, directly or indirectly through the Plaintiff firm,
themselves, their stockiest, agents, distributors,
wholesalers and retailers, etc. all goods mentioned in
Paras 2 of the plaint or any other goods/services under
the trade mark/trade name ORBIT or any other trade
mark/trade name which contains the mark ORBIT as a
part thereof or any other deceptively similar mark/name
thereof which is identical with or deceptively similar to
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
the Defendants' trademark/name ORBIT and that the said
Shri Lokesh Tayal and Shri Daulat Jain have no intention
of ever resuming the manufacture and/or marketing, etc.
of any goods/services by the mark/name ORBIT or any
other mark deceptively similar thereto. As regards
Ms.Neelam Bansal and Shri.Rupesh Garg, partners of the
Plaintiff firm, the said persons may use the
trademark/tradename ORBIT/SEETU only in respect of
their separate respective businesses and that too after
obtaining a written permission from Shri.Amit Agarwal,
sole proprietor of M/s.Seetu Electricals, which written
permission is liable to be revoked by Shri.Amit Agarwal,
sole proprietor of M/s.Seetu Electricals at his sole
discretion and at any time without assigning any reason
whatsoever. All unused packaging/goods bearing the
trademark/tradename ORBIT or any other
trademark/tradename similar thereto, shall be handed
over by the partners of the plaintiff firm against receipt to
Shri.Amit Agarwal, sole proprietor M/s.Seetu Electricals,
licensor of the Defendant No.1, within one week from the
date of passing of the orders on this application by this
Hon'ble Court.
.. ..
xii. That the partners of the plaintiff firm undertake
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
to this Hon'ble Court that neither they nor the Plaintiff
firm shall represent themselves to be in any manner
connected to or representing Shri.Amit Agarwal sole
proprietor M/s.Seetu Electricals, licensor of the Defendant
No.1 in any manner whatsoever to show any connection,
either past or present, with the said mark/name ADL
ORBIT/ORBIT/SEETU.”
13. As noticed above, it was submitted on behalf of the defendants
that the 2nd defendant is not using the trade marks ORBIT or ADL ORBIT or
any trade mark which is deceptively similar to that of the plaintiffs.
Therefore, the interim injunction with regard to the use of the above trade
marks is liable to be extended until disposal of the suit. The only issue that is
hotly contested by the defendants is the right to use the trade name.
14. As regards the trade name, the defendants have placed on record
invoices. The first set of invoices were issued by the 2nd defendant to the
proprietary concern of the 1st plaintiff. These invoices are dated 21.11.2019,
which is subsequent to the settlement before the District Court, Delhi.
Learned counsel for the plaintiffs submitted that these supplies were
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
pursuant to purchase orders issued prior to the settlement. In the absence of
the purchase orders, it is not possible to record any clear finding on this
issue. However, it is clear that the invoices were issued barely a month after
the settlement was recorded. The second set of invoices were issued by an
entity called Orbit Wire and Cable India Private Limited in June and July
2020 to the 2nd defendant. Paragraph 30 of the plaint in C.S.(Comm.)No.504
of 2024 contains averments by the 1st plaintiff that this entity was
incorporated by the 1st plaintiff and his son. While no conclusions with
regard to acquiescence can be drawn on this basis, these documents are,
nonetheless, prima facie indicative of knowledge of the continued use of the
trading name ADL ORBIT Cable (India) in June 2020. The suit before the
Delhi High Court (C.S.(Comm.)No.504 of 2024) was filed in May 2024.
The present suit has been filed in November 2024. Thus, it appears prima
facie that the plaintiffs were aware that the 2nd defendant continued using the
trading name and style even after the settlement was recorded.
15. Learned counsel for the plaintiffs relied on Section 2(2)(c) and
sub-Section (5) of Section 29 of the TM Act to contend that even the use of
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
a trading name in relation to the sale of goods qualifies as use and infringing
use. On examining the prayers in the interlocutory applications, any express
reference to trading name is conspicuous by its absence. However, his
contention that use of the trading name in relation to the sale of goods also
constitutes use and infringing use is not devoid of merit and cannot be
brushed aside. This would embrace use on invoices, packaging and
advertising the sale of products.
16. Ordinarily, considering the tentative finding on knowledge, I
would have declined to grant relief in respect of trading name at the
interlocutory stage. In this case, however, as is evident from the clauses set
out above, the 2nd defendant expressly and categorically agreed before the
District Court, Delhi to refrain from using the trade name. This agreement
was recorded in October 2019. This suit was preceded by a cease and desist
notice, which was not replied to. The continued use of a deceptively similar
trading name by rival entities engaged in the same line of business is likely
to cause confusion and deception to consumers and persons purchasing these
goods. Therefore, it is in public interest to restrain use of the trade name,
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
albeit by recognising that any restraint on the use of the trading name,
without adequate lead time, would cause grave hardship. The equities are
required to be balanced in such regard. For such purpose, the order of
interim injunction, as regards the trading name, shall not operate for a period
of 60 days from the date of receipt of a copy of this order. If, in spite of
exercising best endeavours, the 2nd defendant requires further time to obtain
regulatory approval from Governmental authorities to give effect to the
change in trade name, the said defendant is at liberty to apply for extension.
17. For reasons set out above, O.A.Nos.1 & 2 of 2025 & A.No.743 of
2025 are disposed of on the following terms:
(i) The orders of interim injunction restraining use of the trade marks
ORBIT/ADL ORBIT in relation to the goods of the defendants shall
continue until disposal of the suit.
(ii) The above is, however, subject to the qualification that the
injunction in respect of the use of the trading name ADL Orbit Cable (India)
in relation to the sale of goods shall come into effect only after the lapse of
60 days from the date of receipt of a copy of this order. If an extension of
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
time is required to give effect to the name change in spite of the exercise of
best endeavours, the 2nd defendant is granted leave to apply for extension.
24.02.2025
(1/2)
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes / No
kj
SENTHILKUMAR RAMAMOORTHY,J
kj
O.A.Nos.1 & 2 of 2025 and A.No.743 of 2025
in C.S.(Comm.Div)No.2 of 2025
https://www.mhc.tn.gov.in/judis
O.A.Nos.1 & 2 of 2025
24.02.2025
(1/2)
https://www.mhc.tn.gov.in/judis
