Final Order 21

Order Details: COPY OF JUDGMENT
Pdf Text: IN THE COURT OF SANJEEV KUMAR MALHOTRA
DISTRICT JUDGE (COMMERCIAL COURT)-08
CENTRAL: TIS HAZARI COURTS: DELHI
CS (Comm.) 856/2024
CNR No.DLCT01-012054-2024
Sh. Vijayant Soni
Prop. Shri Banke Bihari Samose Wale
S/o Late Sh. Balraj Soni
3178, Mushtaq Rai Khanna Marg,
Ratan Lal Market, Chuna Mandi,
Paharganj, Delhi-110055. ….Plaintiff
Vs
Sanjay Soni
S/o Sh. Ashok Kumar Soni
3179, Mushtaq Rai Khanna Marg,
Ratan Lal Market, Chuna Mandi,
Paharganj, Delhi-110055.
Also at:-
3176-77, Mushtaq Rai Khanna Marg,
Ratan Lal Market, Chuna Mandi,
Paharganj, Delhi-110055. ….Defendant
Date of Institution : 05.08.2024
Date of Arguments : 16.01.2026
Date of Judgment : 16.01.2026
JUDGMENT
1. This is a commercial suit under Section 134 & 135 of
Trademarks Act, 1999 for permanent injunction, restraining
passing off, delivery up, damages, rendition of accounts etc.
2. In brief, facts of the case as made out in the amended
plaint are that the plaintiff is the proprietor of SHRI
BANKE BIHARI SAMOSE WALE and running his
business from the abovesaid address. It is stated that Late
Shri Balraj Soni, father of plaintiff was the registered
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proprietor and owner of trademark ‘SHRI BANKE BIHARI
SAMOSE WALE’ bearing the trademark no.3985089 under
Class 43,dated 27.10.2018, which was being actively used
for selling of food and drinks. The plaintiff Vijayant Soni
became the registered proprietor and owner of said
trademark on 10.02.2024 by virtue of assignment being the
legal heir and legal representative of late Sh. Balraj Soni
and necessary changes were also duly made with the
Trademark Registry in relation to use the said trademark by
the plaintiff.
3. It is case of the plaintiff that the defendant is engaged
in the same goods and business of selling food items as that
of the plaintiff and adopted and started using the marks
which are identical/deceptively similar to the plaintiff’s
trademark. It is averred that the defendant is not the
proprietor of the impugned mark and also not having the
registration with regard to the impugned mark. It is stated
that the defendant is selling, displaying, advertising,
promoting, offering for sale, soliciting, enquiring,
distributing and trading the goods under the impugned
trademark in an area which is in close vicinity of the
business premises of plaintiff, which creates confusion
amongst the customers believing them that all the business
premises are one.
4. It is further case of the plaintiff that the defendant is
using the impugned mark to increase its sales via online
delivery platforms namely Zomato and Swiggy and also
promoted it online on social media platforms namely
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Facebook and Instagram. It is stated that plaintiff made
verbal requests to the defendant to cease and desist from
using the impugned mark as well as also sent a legal notice
on 28.02.2024 but inspite of same, the defendant continued
their act of adoption and use of impugned trademark.
5. It is averred that the act of defendant is causing huge
losses to the plaintiff both in the business and in reputation,
which is incapable of being assessed in monetary terms. It
is stated that the defendant is liable to pay damages to the
plaintiff to the tune of Rs.3,00,000/-, even though the
plaintiff is entitled to much more. Hence, the present suit.
6. Defendant contested the present suit by filing
detailed written statement while taking preliminary
objections that the defendant has not committed any acts of
infringement of plaintiff’s trademark; that the plaintiff does
have any proprietary right over the mark ‘SHRI BANKE
BIHARI SAMOSE WALE’ and he never used the said
mark independently as it belongs to a family business of
late Sh. Nihal Chand Soni and hence, it is a hereditary
mark.
6.1. It is submitted that the defendant is the cousin of
plaintiff and their grandfather namely late Sh. Nihal Chand
Soni had started a confectionery shop for selling food and
drinks in the name of M/s Soni Sweets in the year 1960 at
shop no.3179, Paharganj, New Delhi. It is further submitted
that as the said shop was adjacent to Shri Bankey Bihari
Vidya Mandir (School) and is nearby to Shri Bankey Bihari
Temple, it become famous and renowned by the name of
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Shri Bankey Bihari Samose Wale and thereafter, late Sh.
Nihal Chand Soni adopted the said name and changed his
shop name from M/s Soni Sweets to Shri Bankey Bihari
Samose Wale. Sh. Nihal Chand Soni died in the year 1972
and left behind four sons namely Late Sh. Ashok Soni, Late
Sh. Balraj Soni, Shri Vishwa Mittar Soni and Late Sh. Raj
Kumar Soni. It is stated that after the death of Nihal Chand
Soni, his eldest son Late Sh. Ashok Soni stepped into the
shoes of his father’s business and started doing the same
from the said shop and after some time, the other two sons
namely Sh. Balraj Soni and Sh. Vishwa Mittar Soni also
joined the said family business under the guidance of Mr.
Ashok Soni.
6.2. It is submitted after the death of Ashok Soni in the
year 2008, his two sons namely Sanjay Soni (defendant
herein) and Sh. Vijay Soni stepped into the shoes of their
father and joined the family business, whereas his third son
namely Ajay Soni is doing some other business. Thereafter,
in the year 2009, a dispute was raised by Late Sh. Balraj
Soni and Sh. Vishwa Mittar Soni with the sons of Late Sh.
Ashok Soni qua the said family business and it was
amicably and orally settled between them that each party
out of the three will run and manage the said family
business at shop no. 3177, 3178 & 3179 for 10 days in
every month under the same mark. It is stated that Mr.
Balraj Soni died on 03.02.2020 and after his death, his both
sons namely Sh. Jagat Soni and Sh. Vijayant Soni (plaintiff
herein) had joined the said family business. It is further
submitted that the said family business under the name
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“Shri Banke Bihari Samose Wale” kept flourishing and
growing till 24.04.2023 and thereafter, a dispute arose and
the said family business was separated in two parts under
the said mark.
6.3. It is submitted that thereafter, Sh. Vijayant Soni
(plaintiff herein), his brother Mr. Jagat Soni and his uncle
Mr. Vishwa Mittar Soni in connivance with each other to
capture the said business, illegally planned to eject the
defendant and his younger brother out of the said family
business and they started doing the said business from shop
no.3178 whereas the defendant and his younger brother as
well as his son namely Subhash Soni continued the said
family business under the mark “Shri Banke Bihari Samose
Wale” from shop no.3179 (old shop), 3177 and 3176 after
finishing renovation work. It is stated that the shop bearing
no.3179 was under 75%-25 % share of Late Sh. Ashok Soni
and Sh. Vishwa Mittar Soni and after the
dispute/separation, Vishwa Mittar Soni sold out his 25%
share of the said shop no.3179.
6.4. It is submitted that the defendant being one of the
partner in the said family business, got the food license in
the name of his son Sh. Shubash Soni in the brand name
“Shri Bankey Bihari Samose Wale”. Further, the defendant
also got the Health Trade License in his name. It is further
submitted that since the trademark is a tool to prevent the
business from its competitors, therefore when such situation
arises where family members are separated and each
member claims to be the lawful owner of the trademark,
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then all the family members of the owner of trademark
possess lawful right to use the inherited trademark; the
plaintiff has not approached the court with clean hands and
deliberately misrepresented and manipulated the entire
facts.
7. On merits, the contents of plaint have been denied as
wrong. It is submitted that the trademark “Shri Banke
Bihari Samose Wale” is a hereditary trademark and all the
legal heirs of late Sh. Nihal Chand Soni are the owners and
have parallel and equal right over the said family trademark
and the defendant is the prior user and proprietor of “Shri
Banke Bihari Samose Wale” and running his business at
shop no.3179, 3177 & 3176,Sangtrashan, Paharganj, New
Delhi. It is further submitted that neither the plaintiff nor
his father is the registered owner of the said trademark.
Further, the defendant had applied for the registration of
said trade mark vide trademark application no.6287623 for
registration of trademark “Shri Banke Bihari Samose
Wale”. It is submitted that with the passage of time,
grandfather of the defendant namely Late Sh. Nihal Chand
Soni had expanded the said business in shop no.3177 and
3178 as well, which were used as subsidiary shop to the
main shop bearing no.3179. It is thus submitted that the suit
of plaintiff is liable to be dismissed with exemplary costs.
8. Replication to the written statements of defendant
was filed on behalf of plaintiff, wherein plaintiff denied the
facts as mentioned in written statement while re-affirming
the averments as pleaded in the plaint.
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9. From the pleadings of the parties, following issues
were framed by Ld. Predecessor vide order dated
20.12.2024:-
1. Whether the plaintiff is entitled for decree of
permanent injunction as prayed for? OPP
2. Whether the plaintiff is entitled to rendition of
accounts? OPP
3. Whether the plaintiff is entitled to damages as
prayed ? OPP
4. Relief
10. To expedite the disposal of case, Ld. Predecessor
vide order dated 20.12.2024 appointed Ms. Punam Sharma,
Advocate as Local Commissioner to record the evidence of
parties.
11. In support of his case, plaintiff examined himself as
PW-1, who tendered his examination in chief by way of
affidavit i.e. Ex.PW-1/A. PW-1 has relied upon following
documents:
1. Downloaded copy of GST Registration Certificate
of Plaintiff i.e. Ex.PW 1/1.
2. Certificate of Registration of Trade Mark "Shri
Bnake Bihari Samose Wale" bearing trade mark
no.3985089 under class 43 in the name of Sh. Balraj
Soni i.e. Ex.PW1/2.
3. Death certificate of Late Sh. Balraj Soni i.e.
Ex.PW1/3.
4. Online copy of the application for Post
Registration changes in the Trade Mark under the
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trade mark Act (Form TM-P) 1999 i.e. Ex.PW1/4.
5. Photographs of the plaintiff's place of business
bearing its trade mark and the defendant's place of
business bearing the infringed impugned mark i.e.
Ex.PW1/5.
6. Photographs/Screenshots of defendant's social
media platform & google review web pages showing
illegal and malafide adoption of trademark along
with certificate u/s 63 BSA i.e. Ex.PW1/6 (Colly).
7. Copy of legal notice dated 27.02.2024 along with
Postal receipts i.e. Ex.PW1/7 (Colly).
8. Tracking Report of the above said legal notice i.e.
Ex.PW1/8.
9. The Registration Certificate under FSS Act, 2006
issued by department of Food Safety, Govt. of NCT
of Delhi vide registration no. 23320005001269
issued under FSS Act, 2006 i.e. Ex.PW1/9.
10. The Health Trade License issued by MCD of Sh.
Balraj Soni vide License no. HII.CMKB0370835
dated 31.01.2019 i.e. Ex.PW1/10.
11. Online Receipts of GST payments of "Soni
Sweet" paid by late Sh. Balraj Soni dated
26.08.2017 i.e. Ex.PW1/11.
12. Online Receipts of GST payments of "Soni
Sweet" paid by late Sh. Balraj Soni dated
30.09.2017 i.e. Ex.PW1/12.
13. Online Receipts of GST payments of "Soni
Sweet" paid by late Sh. Balraj Soni dated
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17.10.2017 i.e. Ex.PW1/13.
14. Copy of Sales Tax deposit of "Soni Sweets" paid
by late Sh. Balraj Soni dated 12.08.2002 i.e. MarkA.
15. Copy of receipt of Challan paid for DVAT of
Soni Sweets by late Sh. Balraj Soni for the period of
01.10.2008 to 31.12.2008 i.e. Mark-B.
16. Copy of receipt of Challan paid for DVAT of
Soni Sweets by late Sh. Balraj Soni for the period of
01.01.2009 to 31.03.2009 i.e. Mark-C.
17. Copy of receipt of Challan paid for DVAT of
Soni Sweets by late Sh. Balraj Soni for the period of
01.04.2012 to 30.06.2012 i.e. Mark-D.
12. Plaintiff examined Mr. Paras Chaudhary, Inspector in
CGST Department as PW-2, who proved the GST record
pertaining to GST No.07BOZPS7315L1ZX of plaintiff firm
as Ex.PW2/1 (colly 11 pages) and the GST record
pertaining to GST No.07BMLPS0951C1Z2 as Ex.PW2/2
(colly 13 pages).
13. Plaintiff also examined Mr. Deepal Yadav, Junior
Assistant in the Department of Trade and Taxes, Vyapar
Bhawan, Delhi as PW-3, who proved Dealer Profile DP-1
as per the DVAT portal as Ex.PW3/1 and details of Delhi
Value Added Tax as Ex.PW3/2.
14. Defendant did not lead any evidence in his defence.
15. Arguments have been advanced by Mr. Yogesh
Latha, Ld. Counsel for the plaintiff and by Mr. Sajan
Shankar Prasad, Ld. Counsel for the defendant. I have given
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my thoughtful consideration to the rival submissions made
by the parties and also gone through the record as well as
written submission, as filed on behalf of plaintiff. Ld.
Counsel for plaintiff has relied upon following judgments :-
1. M/s Addison & Company Limited vs. M/s
Addison Cable Pvt. Ltd., CS No.39/2021 decided
Hon’ble High Court of Madras.
16. Ld. Counsel for defendant has relied upon following
judgments:
1. S. Syed Mohideen vs. P. Sulochana Bai, (2016) 2
SCC 683;
2. Neon Laboratories Limited vs. Medical
Technologies Limited and Ors., (2016) 2 SCC 672;
3. Goenka Institute of Education & Research vs.
Anjani Kumar Goenka & Anr., 2009 SCC Online
Del 1691;
4. Khoday Distilleries Limited vs. The Scotch
Whisky Association and Ors.,
MANU/SC/2361/2008;
5. M/s Gupta Enterprises vs. M/s Gupta Enterprises
and Anr., 1998 SCC Online Del48.
17. Ld. Counsel for defendant has filed a fresh list of
judgments in support of their case:-
1. Mukesh vs. Maya, SA No.279/2013, decided by
the Hon’ble High Court of Judicature at Bombay;
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2. Tarabhi Bhimgonda Patil and Ors. vs. Babgonda
Bhau Patil and Ors., SA No.579/1971;
3. Bainsa Haridas vs. A. Baswaraj and Anr., SA
No.1039/2005.
18. My issue wise findings are as under:-
Issue no.1:-
Whether the plaintiff is entitled for decree of
permanent injunction as prayed for? OPP
19. Onus to prove this issue was upon the plaintiff.
PW-1 in his affidavit of evidence Ex.PW1/A deposed that
his late father Sh. Balraj Soni was the registered proprietor
and owner of the trademark “Shri Banke Bihari Samose
Wale” under Class 43 and proved the certificate of
registration of trade mark as Ex.PW1/2. PW-1 further
deposed that after the death of his father, he became the
registered proprietor and owner of the said trademark on
10.02.2024 by virtue of assignment being the legal
representative and the necessary changes were duly made in
the trademark registry and proved the copy of post
registration changes as Ex.PW1/4. As per plaintiff, the
defendant has dishonestly and in a malafide manner
adopted the said trade mark of the plaintiff, which is
causing confusion in the market and in the mind of
customers. It is claimed that defendant is using the
impugned mark to increase his sales via Online delivery
platforms namely Zomato and Swiggy and even the google
review page was altered by the defendant by adding his
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address and contact number in place of the plaintiff in order
to mislead the customers that they are placing orders to the
plaintiff while the defendant is getting the orders.
20. In his cross examination, PW-1 has admitted that his
grandfather had started the business of food and drinks in
the name of M/s Soni Sweets in the year 1960 from the
shop bearing no. 3179, Sangtrasthan, Paharganj, New Delhi
and that adjacent to the shop of plaintiff and defendant, a
school in situated in the name of Banke Bihari Vidya
Mandir. It is also admitted by PW-1 that Sh. Ashok Soni,
Sh. Balraj Soni, Sh. Vishwa Mittar Soni had started the
business from the said shop and that after the death of late
Sh. Ashok Soni, his son Mr. Sanjay Soni (defendant herein)
and Mr. Vijay Soni joined the family business of food and
sweets and they had continued with the said business from
the shop bearing no.3177, 3178 and 3179. PW-1 has
admitted that as per family oral settlement, family business
was distributed in manner between him, defendant and Sh.
Vishwa Mittar Soni that every party will occupy the
business for 10 days in a month and they will carry the
profit/loss with them.
21. Sh. Paras Choudhary, Inspector, CGST Department
ie. PW-2 produced the GST record pertaining to the firm of
plaintiff and proved the same as Ex.PW2/1 and Ex.PW2/2.
22. Sh. Deepal Yadav, Jr. Assistant, from the office of
Trade and Taxes ie.PW-3 produced the Dealer Profile DP-1
as of Soni Sweets and the details of D-VAT from
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01.07.2006 to 30.06.2017 and proved the same as
Ex.PW3/1 & Ex.PW3/2.
Arguments:-
23. Ld. Counsel for plaintiff argued that plaintiff is the
registered owner of mark “Shri Banke Bihari Samose
Wale” which was got registered by the father of plaintiff in
his individual capacity in the year 2018. It is submitted that
the family owned/heredity mark of business is Soni Sweets
which was divided between Balraj Soni, Ashok Soni and
Vishwa Mittar Soni and that plaintiff has no objection if
any of other family member uses the mark Soni Sweets in
any manner or style.
24. Ld. Counsel for plaintiff vehemently contended that
the claim of the defendant that registered mark of the
plaintiff i.e. “Shri Banke Bihari Samose Wale” is a
hereditary mark or acquired by the grandfather of the
parties but neither the defendant has filed any document to
that effect nor led any evidence. It is submitted that when it
comes to the matter pertaining a trademark in dispute in
family, it is important to see that a person claiming better
right has actually perfected the same or not.
25. Per contra, Ld. Counsel for defendant argued that
plaintiff has not disclosed in the plaint that the family
business was started by late Sh. Nihal Chand Soni in the
year 1960 for selling food and drinks in the name of M/s
Soni Sweets and later on, late Sh. Nihal Chand Soni had
adopted the said name and changed his shop name from
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M/s Soni Sweets to “Shri Banke Bihari Samose Wale”. It is
submitted that the trade name “Shri Banke Bihari Samose
Wale” was adopted by Late Sh. Nihal Chand Soni as
adjacent to the shop, there is a famous Banke Bihari
Temple and also a Banke Bihari Vidya Mandir in the said
vicinity and therefore, it was felt more convenient to adopt
the name of the family business as “Shri Banke Bihari
Samose Wale”.
26. Ld. Counsel for defendant further argued that all the
heirs of the person who first adopt a mark and put the same
to use and earned goodwill and reputation shall have equal
right to adopt and use the same and one member of the
family cannot, without something more being shown to the
contrary claim exclusive ownership of a mark. Ld. counsel
for defendant argued that though the plaintiff has claimed
that he is using the mark “Shri Banke Bihari Samose Wale”
since 2018 but in Ex.PW1/D-1 i.e. the board of the shop it
is claimed since ‘1960’.
27. Ld. Counsel for defendant argued that the defendant
is the restaurant partner of Zomato and Swiggy under the
brand name “Shri Banke Bihari Samose Wale” since
10.01.2019 and the defendant also obtained the food license
in the name of his son namely Subhash Soni for the said
family business in the brand name “Shri Banke Bihari
Samose Wale” and as such, defendant is entitled for
defence of acquiescence. It is submitted that it is for the
plaintiff to prove that he is continuous user of the registered
trade mark and merely relying upon the registered
trademark is not enough.
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Findings:-
28. It is not in dispute that both the parties are having
common lineage and that grandfather of the parties namely
late Sh. Nihal Chand Soni had started the business of food
and drinks in the name of M/s Soni Sweets in the year
1960. The claim of the plaintiff is that though the family
name of the business started by their grand father is M/s
Soni Sweets but the father of the plaintiff Sh. Balraj Soni
set up a separate and independent business and to carve out
a separate identity, he adopted and got registered the trade
name “Shri Banke Bihari Samose Wale” in the year 2018
under Class 43 of the Trademark Act.
29. It is well settled that initial burden to prove it’s case
is upon the plaintiff. In order to prove that the family
business was being run in the name of Soni Sweets till
2018, plaintiff examined PW-3 Sh. Deepal Yadav from the
office of Trade and Taxes and proved the details of VAT
paid by the firm M/s Soni Sweets from 01.07.2006 till
30.06.2017 as Ex.PW3/1.There is no explanation that if
grandfather of the parties adopted the name of family firm
as Shri Bankey Bihari Samose Wale from Soni Sweets prior
to his death in the year 1972, why the VAT was being
deposited in the name of Soni Sweets till 2017. PW-1 has
also proved the registration certificate issued by the
Department of Food Safety in the name of “Shri Banke
Bihari Samose Wale” on 13.11.2020 i.e. Ex.PW1/9 for a
separate address i.e. E-166, Kamla Nagar, New Delhi,
which as per plaintiff was closed from Kamla Nagar on
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account of Covid-19 and the said mark was used by the
plaintiff from their shop situated at Paharganj, Delhi.
30. The defendant has not led any evidence to prove his
defence that the grandfather of the parties Late Sh. Nihal
Chand Soni, who started the business for selling food and
drinks in the name of M/s Soni Sweets in the year 1960,
later on adopted the name of his shop from M/s Soni
Sweets to Shri Banke Bihari Samose Wale or that both the
parties have common rights for the mark “Shri Banke
Bihari Samose Wale” and cannot exclude each other. It is a
settled law that when a material fact is within the
knowledge of a party and he does not go in to the witness
box without any plausible reason, an adverse inference can
be drawn against him.
31. Hon’ble Supreme Court in a case titled as
Vidhyadhar vs. Manikrao and Anr., (1999) 3 SCC 573 held
as under :
“17. Where a party to the suit does not appear in the
witness-box and states his own case on oath and does
not offer himself to be cross-examined by the other side,
a presumption would arise that the case set up by him is
not correct as has been held in a series of decisions
passed by various High Courts and the Privy Council
beginning from the decision in Sardar Gurbaksh Singh
v. Gurdial Singh. This was followed by the Lahore High
Court in Kirpa Singh v. Ajaipal Singh and the Bombay
High Court in Martand Pandharinath Chaudhari v.
Radhabai Krishnarao Deshmukh. The Madhya Pradesh
High Court in Gulla Kharagjit Carpenter v. Narsing
Nandkishore Rawat also followed the Privy Council
decision in Sardar Gurbaksh Singh Case. The Allahabad
High Court in Arjun Singh v. Virendra Nath held that if
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a party abstains from entering the witness-box, it would
give rise to an adverse inference against him. Similarly,
a Division Bench of the Punjab and Haryana High Court
in Bhagwan Dass v. Bhishan Chand drew a presumption
under Section 114 of the Evidence Act, 1872 against a
party who did not enter the witness-box.”
32. There is no dispute that prior use of a trademark
constitutes a valid defense against claim based on a
subsequent registered trademark but it was for the
defendant to prove the prior use of trademark in question in
the family business by leading evidence. Coming to the plea
of acquiescence as claimed by the defendant, I do not find
any delay on the part of the plaintiff in filing the suit. The
legal notice dated 27.02.2024 Ex.PW1/7 to cease and desist
was delivered to the defendant on 28.02.2024 as per
tracking report Ex.PW1/8. There is no acquiescence in the
present case as argued by Ld. Counsel for defendant.
33. Plaintiff vide application Ex.PW1/4 applied for
change of his name in place of his father in the registration
certificate by virtue of assignment deed dated 25.05.2022. It
was argued by Ld. Counsel for defendant that though the
plaintiff has claimed that they have adopted the mark since
2018 but on the picture of the board Ex.PW1/D-1, it is
mentioned that since 1960. Plaintiff has also relied upon a
photograph showing the place of business bearing its
trademark and the defendant place of business bearing the
same infringed trademark as Ex.PW1/5 which shows that
both the parties have mentioned on their sign boards Est.
since 1960, but it does not mean that the mark was
established in 1960, rather it shows that they are in the
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business since 1960. A picture/image of Ex.PW1/5 is
reproduced as under:-
34. Section 28 of the Trademark Act provides that
subject to the other provisions of the Act, the registration of
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a trademark shall, if valid, give to the registered proprietor
of a trademark the exclusive right to the use of the
trademark in relation to the goods and services in respect of
which the trademark is registered. Plaintiff has proved that
he is the registered proprietor of trademark “Shri Banke
Bihari Samose Wale” vide trademark certificate Ex.PW1/2.
The defendant has failed to prove that the said trademark
“Shri Banke Bihari Samose Wale” was a family or
hereditary mark, which was in prior use by the members of
the family before it was registered in the name of plaintiff.
The authorities, as relied upon by Ld. Counsel for
defendant are not helpful in the present facts and
circumstances of the case. Ex.PW1/5 shows that both the
parties are running their business in adjacent shops with the
same mark and in case an injunction is not granted in
favour of registered owner of mark, the plaintiff shall suffer
irreparable loss and injury. Therefore, plaintiff is entitled to
decree for injunction, as prayed. Accordingly, the
defendant, his agent etc. are hereby restrained from using
the trademark “Shri Banke Bihari Samose Wale” in any
manner. This issue is decided in favour of the plaintiff and
against the defendant.
Issue no.2 and 3:-
2. Whether the plaintiff is entitled to rendition of
accounts? OPP
3. Whether the plaintiff is entitled to damages as
prayed ? OPP
35. Issue no.2 and 3 are taken up together. Onus to prove
CS (Comm) 856/24 Vijayant Soni vs. Sanjay Soni Page 19 of 21
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these issues was upon the plaintiff. PW-1 in his affidavit of
evidence has deposed that the losses are incapable of being
assessed in monetary terms as the defendant’s gains are
plaintiff losses and claimed damages to the tune of
Rs.3,00,000/-.
36. Hon’ble Delhi High Court in a case titled as
Koninlijke Philips and Ors. v. Amazestore and Ors.,
2019:DHC:2185, laid down certain standards for grant of
damages in the following terms:
“39. Accordingly, the question which was left open in
Rookes (supra) was closed in Cassell (supra) as regards
the manner in which aggravated or punitive damages are
to be awarded.
40. Consequently, though in assessing the aggravated
damages which the Defendants should pay, the total
figure awarded should be in substitution for and not in
addition to the smaller figure, yet the rounded total sum
shall have to be calculated by adding an additional
amount to the compensatory damages.
41. Keeping in view the aforesaid, this Court is of the
view that the rule of thumb that should be followed while
granting damages can be summarised in a chart as
under:-
# Degree of mala fide Conduct Proportionate award
(i) First-time innocent infringer Injunction
(ii) First-time knowing infringer Injunction +Partial
costs
(iii) Repeated knowing infringer
which causes minor impact
to the plaintiff
Injunction+Costs
+Partial damages
(iv) Repeated knowing infringer
which causes major impact
to the plaintiff
Injunction+Costs+
Compensatory
damages.
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(v) Infringement which was
deliberate and calculated
(Gangster/scam/mafia)+
wilful contempt of court.
Injunction+Costs+
Aggravated damages
(Compensatory
+additional
damages)
42. It is clarified that the above chart is illustrative and is
not to be read as a statutory provision. The Courts are
free to deviate from the same for good reason.”
37. There is no evidence that the defendant is a repeated
knowing infringer. The defendant falls within the category
of First-time knowing infringer and therefore, plaintiff is
entitled for a decree of injunction and costs. Thus, it is held
that plaintiff is entitled for costs of the suit from the
defendant. Accordingly, these issues are decided in favour
of the plaintiff and against the defendant.
Relief:-
38. In view of my findings on aforementioned issues, a
decree of injunction is passed in favour of the plaintiff and
against the defendant thereby restraining the defendant, its
agent etc. from using the trademark “Shri Banke Bihari
Samose Wale” in any manner. Costs of the suit are also
awarded in favour of the plaintiff and against the defendant.
Decree sheet be prepared accordingly.
File be consigned to Record Room.
Announced in the open court
on 16th January, 2026 (Sanjeev Kumar Malhotra)
District Judge (Commercial Court)-08
Central District
Tis Hazari Courts, Delhi
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