Order 13

Order Details: COPY OF ORDER
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IN THE COURT OF SH. GURDEEP SINGH
DISTRICT JUDGE (COMMERCIAL COURT)
NORTH-WEST DISTRICT, ROHINI COURTS, DELHI.
CNR NO. :DLNW01-001605-2023
CS (COMM.)/137/2023
IN THE MATTER OF :-
1. ALKA CONFECTIONERY (P) LTD,
175, KOHAT ENCLAVE
PITAM PURA
DELHI-110034
… PLAINTIFF
VERSUS
1. ANWAR KHAN
HUMDUM FOOD PRODUCTS GRIH UDYOG
PLOT NO.50, GATE NO.14, NARGOGAON
MAIN ROAD
AURANGABAD-431006.
MAHARASHTRA.
2. NAVEED KHAN
JHU FOOD BY HUMDUM
PLOT NO.50, GATE NO.14, NARGOGAON
MAIN ROAD
AURANGABAD-431006.
MAHARASHTRA.
… DEFENDANTS
ORDER/ 08-06-2023
1. Vide this common order I shall decide application moved
on behalf of plaintiff under order XXXIX Rule 1 and 2
CPC seeking ad interim injunction and application moved
on behalf of defendant under Order XXXIX Rule 4 CPC
for vacating the ex parte ad interim injunction.
2. In brief, the relevant facts for the disposal of the
applications are that the plaintiff company has filed
commercial suit for permanent injunction restraining
infringement of trademark, copyright, trade-dress, passing
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off, rendition of accounts, damages etc. against defendant
stating therein that plaintiff is engaged in business of
manufacturing and marketing inter alia confectionery
(non-medicated), confectionery (medicated), mouth
freshner goli, toffee, candies, drops, gum drops, lollipops,
chocolates, bubble gums, jellies, snacks, preserved, dried
and cooked (roasted) fruits and vegetables including
mango, mint, tamarind preparations, etc. for the past
several years under trade mark HUMDUM. It is also
averred that the said trade mark was adopted by the
predecessor-in-title/ interest of the plaintiff honestly and
bonafidely in the year 2004 and since then they are using
the same continuously, openly and without any
interruption in respect of said goods throughout the length
and breadth of the country.
3. The plaintiff has claimed to be owner and proprietor of
trade mark HUMDUM under class 30, 31 and 5, which is
stated to valid and subsisting as on date in favour of
plaintiff and details thereof has been given in para no. 6 of
the plaint. It is also submitted that plaintiff has also filed
applications for registration of trade mark labels
HUMDUM (trademark/ label HUMDUM EMLEE ROLL)
in class 30 which are stated to be pending as on date and
details thereof has been given in para no.7 of the plaint. It
is also submitted that during the course of business in the
year 2005, the plaintiff predecessor in title also adopted the
used trade mark HUMTUM and had registered the same. It
is also averred that plaintiff trade mark HUMDUM has
over the years been represented in a fanciful manner with
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its wrappers/ pouches/ labels which were adopted in course
of business and same are an original artistic work and
plaintiff has claimed to be owner of copyright therein.
4. Further, it is averred that by virtue of its long, continuous,
open and extensive use, the plaintiff has garnered an
impeccable reputation and name among the members of
the public and trade and is thus a well known trade mark
within the meaning of Section 2(1)(zg) of the Trade Marks
Act, 1999. It is further stated that on account of its good
quality and standards of manufacturing and untiring efforts
in advertising and marketing, the products of the plaintiff
have acquired enviable reputation and goodwill across
India. Further Plaintiff spend huge amount of money in
advertising and promotion of its products under the said
trade marks/ logos in India, due to which the products of
plaintiff under the said trade marks/ logos enjoy huge
goodwill and reputation in business community and public
in general in India. Further, the Plaintiff has claimed that it
has huge turn over against sale of its products and
mentioned statement of sales made by plaintiff and its
predecessor over the past few years from 2004 to 2021 in
the para no.14 of the plaint.
5. In view of the Plaintiff’s proprietary rights both under
statutory and common law in its said trademarks, its
goodwill & reputation, and its copyrights, the Plaintiff has
the exclusive right to the use thereof and nobody can be
permitted to use the same or any other deceptively similar
trademark/label in any manner whatsoever in relation to
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any specification of goods without the leave and license of
the Plaintiff.
6. The plaintiff company has alleged that in third week of
January, 2023, plaintiff came across the defendant’s
product being sold in Delhi under the impugned
trademark/ wrapper/ label/ trade dress HUMDUM in
respect of identical goods. It is further alleged that
defendants have dishonestly and malafidely adopted
trademark/ wrapper/ label/ trade dress HUMDUM which
are visually, structurally identical and /or deceptively and
confusingly similar to the registered trademarks / wrapper/
label/ trade dress HUMDUM of plaintiff thereby causing
confusion and deception amongst the unwary purchasing
public and traders by making them believe that the origin
of those goods is the plaintiff company. It has been averred
that by doing so, the defendant is not only damaging the
reputation and goodwill of the plaintiff company by
passing off his substandard products as that of the plaintiff
company but is also causing financial loss to the plaintiff
company by reaping unfair advantage of the repute and
distinctive character of the trademark of the
plaintiff company.
7. The suit was accompanied with various applications
and on being pressed, vide order dated 21-02-2023,
the application under Order 39 Rule 1 & 2 CPC
seeking ex parte ad interim injunction was allowed
and defendant was restrained from using impugned
trade mark HUMDUM or or any other mark which are
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identical and / or confusingly or deceptively similar to
plaintiff’s registered trade marks/ logos HUMDUM.
Further, an application under Order 26 Rule 9 CPC
seeking ex parte order for appointment of local
commissioner was also allowed and local commissioner
was appointed with directions to visit and search
premises of defendant and report to court. In pursuant to
the order of this Court, learned local commissioner
executed the commissions and has filed detailed report.
8. Summons of the suit and notice of accompanying
applications were issued to defendants. Defendants
appeared through counsel and contested the suit and
applications. Written statement and reply to
applications filed.
9. In written statement, preliminary submissions were made
that defendant no.1 started his business of mixer-grinder
repairing and manufacturing and selling of IMLI
(tamarind) chocolate at Nasik City in the year 2000
under the name HUMDUM on small scale. In the year
2001, the defendant no.1 even purchased a property in
Nasik City in Jhopad Patti area vide unregistered sale
deed dated 16-10-2001 mentioning business as mixer
repairing and Chinch (imli) goli Humdum. It is further
stated that defendant no.1 had carried on the business
from this property till the year 2005 and later had shifted
his business to Aurangabad and reduced his business to
manufacturing and selling of IMLI chocolate (goli)
under the trade mark / name HUMDUM. The said
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business in relation of EMLI chocolate continued
without any interruption until the impugned order passed
by this Court.
10. It is also contended that in the year 2006 and 2009, the
defendant no.1 opened an account with ICICI Bak and
HDFC Bank respectively with firm name HUMDUM
and therefore the defendants have claimed to be prior
adopter and user of the trade mark/ name HUMDUM as
against the claim of user of the plaintiff including its
predecessor and it is stated that defendants are protected
under S. 34 of the Trade Marks Act, 1999 being the prior
adopter and user of the impugned mark.
11. It is further contended that on 22-11-2018, the defendant
no. 1 purchased a property in Aurangabad in the firm
name HUMDUM Food Product Griha Udyog. Further
the defendant is registered with various department of
governments including MSME under the name
Humdum Food Product Griha Udyog. It is claimed that
defendant no.1 has earned tremendous goodwill and
reputation on account of colossal sale and advertisement
for the IMLI product sold under house mark HUMDUM.
It is also stated that defendant no.1 has only one trade
mark/ house mark (though he had thought of using
Hajmol and Tingu but actually has not used them) and all
the sales made by the defendant no.1 pertain to the goods
under the trade mark HUMDUM only and mentioned the
sale turnover of the defendant no.1 under the trade mark
HUMDUM for financial year 2005-2006 to 2021-2022 in
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para no. 7 of the written statement. The defendants have
filed copies of purchase invoices for the raw materials,
printing of various labels, stickers etc. and tax return for
financial year 2006-07 with the written.
12. It is further contended that high quality product of the
defendant no.1 are very popular among the customers
and many customers have sent e-mail comments in form
of feedback from time to time which itself shows
tremendous popularity of impugned product among
customers who identifies impugned product with the
defendants only. It is also claimed that defendant’s
products have long presence over Just Dial, India Mart
and Youtube etc. which promote products of the
defendants among the customers. Further defendant no.1
also used to attend various food conferences.
13. It is stated that defendant no.1 manufactures high quality
product which are passed through stringent checks to
ensure high standard. The manufactured products are
sent from time to time for laboratory test to ensure high
quality products. It is stated that plaintiff, who has
copied the trade mark/ label artwork of defendant no.1
has inferior quality goods and plaintiff adheres no
quality checks.
14. In written statement, preliminary objections were also
taken and it is stated that plaintiff has not valued its
intellectual property involved in the present suit as per
the provisions S. 12 of the Commercial Courts Act.
Further this court lacks territorial jurisdiction to entertain
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and try the suit. In this regard, it is stated that defendants
have not sold any goods within the territorial jurisdiction
of this Court nor any document has been filed by
plaintiff to show territorial jurisdiction of this Court. It is
stated that present suit has been filed by the plaintiff on
the basis of forged and fabricated invoices.
15. It is further stated that plaintiff concealed the prior
knowledge of the defendants and the impugned product
under impugned trade mark originating from the
defendant no.1 and plaintiff has filed invoices for the
alleged sale in Library Road, Azad Market, Delhi which
is a whole sale market for confectionery items. It is
stated that defendant no.1 is also selling his products
under the impugned trade mark in the said market since
2006 and it is stated that therefore it is not believable
that the plaintiff was unaware of the product of the
defendants. It is also stated that plaintiff did not give any
cease and desist notice even prior to filing of the present
suit despite having complete knowledge of the prior and
old business under the trade mark HUMDUM of
defendant no.1.
16. In preliminary objections, the defendant has also stated
that labels claimed to belong to the plaintiff have in fact
been copied by the plaintiff from the labels of the
defendant no.1 and in the guise of the registration of the
trade mark has started using the same. It is further
alleged that in many invoices, plaintiff has malafidely
added many hand written words including HUMDUM /
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IMLI etc. with sole intention to play fraud upon this
Court to get favourable order which cannot be allowed.
It is further stated that none of the recently claiming to
be its labels has gone to the extent of producing several
labels with the mala fide intention of trying to escalate
the scope of the dispute which have been prepared only
for producing them in the present suit.
17. It is further submitted that plaintiff is claiming to have
been assigned alleged trade mark HUMDUM from
predecessor and a bare perusal of the records of the trade
mark registry reveals that alleged mark HUMDUM was
applied by Mr. Anil Gera trading as Akhil Traders. As
per Form TM-33 dated 20-11-2006, filed in the said
application, it is mentioned that the Akhil Traders was
the sole proprietorship concern of Anil Kumar & Sons
(HUF) and Mr. Anil Kumar Gera as acting in the
capacity of Karta. As per the same document, Kunal
Food Products was the sole proprietorship concern of
Mr. Anil Kumar Gera in his individual capacity and it is
stated that hence Kunal Food Product could not have
claimed any right over the alleged mark when admittedly
(denied by the defendants) the mark was property of said
HUF which is a separate legal entity than Mr. Anil
Kumar Gera himself. It is submitted that any such
assignment of the alleged trade mark by Anil Kumar
Gera in his individual capacity in favour of himself in
his individual capacity is invalid and the transfer of the
registered trade mark in favour of the plaintiff is liable to
be cancelled. It is further stated that plaintiff claim that
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Mr. Anil Kumar trading as Kunal Food Product has
assigned the said trade mark in their favour and when the
alleged assignee himself did not have any valid right it
could not have been assigned in favour of the plaintiff
and thus the plaintiff did not become the valid legal
holder of the trade mark.
18. It is further stated that plaintiff has not disclosed whether
it conducted any search in the online records of the
Trade Mark Registry to ascertain whether the defendants
had any registration/ application in their favour in
respect of impugned mark HUMDUM as mandated by
the judgments. It is stated that in order to obtain
statutory protection in his mark/ trade name/ label
HUMDUM or other marks having HUMDUM as its
principal portion, the defendant no.1 has applied for such
marks under respective application nos.3197153,
3396838, 3396839, 5558303 and 5558305. It is stated
that applications under nos.3197153 and 3396838 have
been refused and application no.3396838 has been
abandoned because of inadvertent lack of following up
on the part of the agent of the applicant to appear before
the Registrar in hearing proceedings upon the objections
raised by the Registrar and rest of the applications are
pending and likely to be registered after completion of
formalities of the Trade Mark Registry. However, it is
stated that defendant no.1 in any case has
been continuing using the impugned trade mark
HUMDUM.
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19. It is further submitted that plaintiff has filed present suit
claiming wrong user for the alleged trade mark
HUMDUM whereas the plaintiff has never used the
alleged mark HUMDUM in relation to any goods
especially goods similar to the impugned goods of the
defendants namely IMLI/ EMLEE Goli/ chocolate. It is
stated that the plaintiff has no valid permission to
manufacture the alleged product from the concerned
authority. The user claimed by the plaintiff in the
registration was wrong and false as admittedly the
claimed predecessor of the plaintiff had himself claimed
in application dated 19-05-2004 that the mark was
proposed to be used, then how could the subsequently
application be filed on the basis of actual user prior to
19-5-2004.
20. It is further stated that each and every product mentioned
in the catalogue filed by the defendants and also
catalogue pages filed by the plaintiff except the alleged
HUMDUM products, the products are advertised under
the house mark ALKA. It is further submitted that
HUMDUM is the trade mark of the defendants which the
plaintiff is trying to misappropriate. It is further
submitted that plaintiff has deliberately not disclosed the
date of creation of various artworks claimed in the plaint
and the labels filed as documents and who is the author
thereof. It is stated that plaintiff has malafidely filed
application dated 01-12-2022 and 08-12-202 and it
seems that the plaintiff was planning to file the suit
against the defendants prior to December, 2022 and had
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made up the labels and filed the applications for
registration claiming and application dated 5818199 (sic)
dated 21-2-2023 for the registration of trade mark with
art work EMLLE ROLL falsely claiming user since
16-8-2006 in all the three applications which is wrong
and it is stated that none of the claimed artworks belong
to the plaintiff. It is stated that artworks involved in the
trademarks bearing no. 5705427, 5714666 and 5818199
in fact copied from the artworks which belong to the
defendant no.1 who is having copyright in the same
being owner thereof. Further, plaintiff has also copied
artwork ‘emli gatagat’ from the original art work
belonging to the defendant no.1. It is further stated that
without admission on the part of the defendants, the
plaintiff can at best be said to have dealt in ‘mouth
freshner’ only but not imli/emlee roll or gatagat or any
other imli product. It is stated that plaintiff has not filed
any documents of the purchase of tamarind (imli) and
other goods which are used as a raw material for
preparation of the goods being imlig candy/
chocolate/ candy.
21. It is further contended that turnover figures of the
plaintiff pertains to various trade marks used by plaintiff,
however, turnover figures of the defendant no.1 pertain
to product under impugned mark only and sale figures of
the defendants are manifolds to the complete sale turn
over of the plaintiff which in itself shows the vast
goodwill and reputation of the defendants products
against the alleged trade mark of the plaintiff.
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22. In parawise reply, similar averments are made.
23. The defendant has also filed application under Order 39
Rule 4 CPC for vacating ex parte interim injunction and
contested that on account of ex parte injunction passed
by this Court, business of the defendants has come to a
halt rendering more than 100 families jobless. Other
averments are similar to the averment made in the
written statement.
24. It is pertinent to mention that another application was
moved on behalf of defendant for de-sealing of the
machines on which impugned infringing labels was
printed which were de-sealed vide detailed order dated
05-4-2023 with directions to use for any other purpose
except for preparing infringing material in any manner,
on their undertaking that he shall not used the desealed
machines for infringing material or packaging in any
manner till disposal of the application under 39 Rule 1 &
2 CPC
25. It is also pertinent to mention that during the course of
hearing, the defendants have filed several applications
seeking permission of the court to file documents.
Although those applications are pending, however,
without prejudice to the objections to the documents
filed with those applications, are considered for taking
prima facie view. It is also pertinent to mention that
both, plaintiff as well as defendant, had filed
interrogatory application and response to each other
interrogatories.
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26. I have heard Sh. M. K. Miglani, counsel for plaintiff and
Sh. Mohan Vidhani, counsel for defendant. I have also
gone through the record.
27. It is submitted on behalf of plaintiff that trade mark
HUMDUM was adopted in the year 2004 by its
predecessor and the trade mark was registered on
19-5-2004. Further plaintiff has filed various labels
showing ‘Humdum Emlee Roll’, container plastic bottle
having HUMDUM mark. Further plaintiff has filed
various print outs from the websites of Trade Mark
Registry showing trade mark registration including trade
mark application dated 19-5-2004 on which trade mark/
word mark HUMDUM was registered in class 30 in
respect of confectionery (non-medicated), mukhwas,
mouth freshner on proposed to be used basis. Plaintiff
has also having registered slogan ‘Hum Dum Ho Pass,
Tho Ban Jaye Baat’. The mark of the plaintiff is also
registered under class 5 i.e. confectionery (medicated),
Ayurvedic, Digestive & Medicinal Preparation vide
application dated 30-11-2013 and user is shown
as 18-8-2006.
28. Further, the plaintiff has also filed various invoices
showing sale and first tax invoice is in the name of Akhil
Traders dated 20-10-2004 and continued up to 04-2-2023
in the name of the present applicant. The plaintiff has
also filed invoices from designer with respect to creation
of mark and invoices for advertisement of trade mark
HUMDUM with various advertising and marketing
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agencies and also advertised in IndiaTV at various slots
carried out in the year 2006.
29. Ld. Counsel for plaintiff further submitted that defendant
claiming concurrent user of trade mark HUMDUM
which is no ground of acquiescence same and also no
defence. Further delay in bringing the suit is also no
defence. It is further submitted that submissions that
local commissioner has wrongly sealed machines, even
though same were already de-sealed, rendered 100 of
families jobless has been misplaced, misconceived in
view of total sale.
30. It is further pointed out that defendant had failed to show
that he was carrying on business under impugned trade
name / trade mark HUMDUM. In this regard, it is
pointed out documents of sale deed relied upon by
defendant wherein Defendant Anwar Khan has shown
that he is in the profession of ‘chinch goli’ does not show
sale of the same. It is further submitted that opening of
bank account in the name of defendant firm also does not
show any business activities as no statement of
transaction carried in the current account has been
shown. In fact bank account is in the name of Humdum
whereas ITR is in the name of HUM DAM. At various
places, firm of the defendant is shown differently – as at
some places it is shown as Humdum Food Products and
at some places it is shown as M/s Ham Dam Imli Gata
Gat and at present it is shown as M/s Humdum Food
Products Griha Udyog and therefore it is not established
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on record the defendant was carrying on business under
the impugned trade name/ trade mark HUMDUM. It is
also pointed out that factory licence of the defendant is
in the name of Humdum Food Products Griha Udyog
with effect from 10-4-2006 and date of issuance is
20-03-2023. Further the licence under Food Safety and
Standard Act, 2006 is in the name of M/s Humdum Food
Products which is dated 06-06-2012. Further the
acknowledgment of defendant firm being MSME is
dated 19-2-2007 and is in the name of Hamdam Food
Products and application form shows that it is for
manufacturing biscuits and against the column ‘products
to be manufactured/ services to be provided’ ‘chocolates
MFG’ is mentioned. Therefore it is submitted that
documents are not consistent with their firm name or
invoices of sale and sale tax registration of the year
2014.
31. It is further stated that separate application for
registration of trade mark / device mark ‘Humdum’ and
‘Humdum Emlee Gatagat’ was made by defendant on
29-02-2016 and 26-10-2016 respectively under class 30,
which were refused by trade mark registry. Further one
of the trade mark/ device mark ‘Humdum Emlee Roll’
was abandoned although the application was made on
26-10-2016. It is further submitted that another
application was made on 04-8-2022 for registration of
trade mark/ device ‘Humdum Emlee Roll’ by defendant
showing name as Humdum Food Products Griha Udyog
wherein user details is shown as 26-02-2007 whereas
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previously the user details is shown as 01-07-2016.
32. It is further submitted that plaintiff has filed purchase
bills of raw material to show that predecessor had
purchased raw material for manufacturing the same,
commencing from 22-3-2005. He also submitted that
defendant is dishonest and continued manufacturing
under the brand name when they came to know vide
order of Trade Mark Registry dated 8-10-2016 that their
mark has been refused on the ground that trade mark
HUMDUM stood registered in the name of Alka Food
Confectionery i.e. plaintiff .
33. He further submitted that certain invoices filed by them
are duplicate and some of them are not having name
HUMDUM but others are having name HUMDUM,
which has been allegedly fabricated according to the
defendant. He stated that those bills were issued during
Covid-19 pandemic by staff as factory of plaintiff was
under lock and as soon as they came to know that wrong
bills have been issued, they issued revised bills and
retained bills, which were wrongly issued, for future
reference.
34. It is also submitted by learned counsel for plaintiff that
e-mail of designer of the defendant dated 15-01-2016
and certificate of designer who created art work is dated
23-03-2023 and therefore submissions of learned counsel
for defendant that it was earlier created by them which
plaintiff has misappropriated, is incorrect. Further it is
submitted that FSSAI’s Certificate is in the name of
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defendant shown as M/s Humdum Food Griha Udyog is
for the year 2014 and 2015. It is also submitted that sale
invoices filed by the defendant commence from
02-5-2014 and therefore there is no document on record
prior to same which show that any local sale was made
by the defendant. It is submitted that only document on
record prior to 2004 i.e. registration of trade mark by the
plaintiff, is purchase of property by defendant which
does not in any manner show any sale was made. Merely
taking profession, business of ‘chinch goli’ does not
suffice to show that defendant was in the business of
impugned goods under the impugned trade mark.
Further, there is no sale tax document and there is no
registration of VAT to show that defendant was making
any sale.
35. In support of his submissions, learned counsel for
plaintiff relied upon judgment of Hon’ble Supreme Court
of India in case titled as Laxmikant V. Patel v.
Chetanbhai Shah And Another (2002) 3 SCC 65 where it
was held that it is settled principles of law governing the
grant or refusal of interlocutory injunction in trade mark
and trade name disputes and such refusal despite the
evidence and material on record would occasion a failure
of justice and injury to plaintiff which cannot be undone
at a later stage.
36. Case titled as Bal Pharma Ltd. v. Centaur Laboratories
Pvt. Ltd. & Anr. 2001 SCC OnLine Bom 1176,
a judgment of Hon’ble Bombay High Court wherein
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mark ‘Microdine’ was in question and judgment of
Hon’ble Supreme Court in Power Control Appliances v.
Sumeet Machines Pvt. Ltd. (1994) 2 SCC 448 was relied
upon wherein it was held that there is no hard and fast
rule that delay per se would defeat an application for
interlocutory injunction and in a situation where the
defendant to an action has been using the mark, even if
concurrently, without making himself aware of the fact
as to whether the same mark is the subject matter of the
registration and belongs to another person, the first
person cannot be heard to complaint for he has been
using it negligently and he runs the risk of registered
proprietor challenging his action for infringement and
merely because it is done at a subsequent stage, he
cannot be heard to complaint on the ground of delay.
37. Further, learned counsel for plaintiff relied upon
judgment of Hon’ble Apex Court in case titled
Dalpat Kumar & Anr. v. Prahlad Singh & Ors.
MANU/SC/0715/1991 with respect to contention that the
existence of the prima facie right and infraction of the
enjoyment of his property or the right is a condition for
the grant of temporary injunction and prima facie case is
not to be confused with prima facie title which has to be
established, on evidence at the trial.
38. Ld. counsel for plaintiff also cited judgment in case of
Rameshwari Devi and Ors. v. Nirmala Devi and Ors.,
MANU/SC/0714/2011 and M/s Hindustan Pencils
Private Ltd. v. M/s India Stationary Products Co. & Anr.
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1989 SCC OnLine Del 34 where it was held that trade
mark, copyright or a patent belongs to a registered owner
and, in that sense, is his monopoly because he has the
exclusive right to use the same and nevertheless,
specially as far as trade mark are concerned, the said
mark is also meant to distinguish the goods of the owner
of the mark from that of the other manufacturers and this
distinguish mark is primarily, probably solely, for the
benefit of the consumer. It is the duty of the courts to
protect the interest of such unwary customers and to see
that an unscrupulous infringer does not cheat the general
public by selling spurious goods by using trade mark
which do not belong to him and which are associated
with goods or repute. It is further held that judicial
opinion has been consistent in holding that if the
defendant acts fraudulently with the knowledge that he is
violating the plaintiff’s right then in that case, even if
there is an inordinate delay on the part of the plaintiff in
taking action against the defendant, the relief of
injunction is not denied. The defence of laches or
inordinate delay is a defence in equity and both parties
must come to the Court with clean hands. Further, there
is an honest concurrent user by the defendant then
inordinate delay or latches may defeat the claim of
damages or rendition of accounts but the relief of
injunction should not be refused which is in the interest
of general public.
39. Ld. counsel also relied upon judgment of our own
Hon’ble High Court in case titled as Shri Swaran Singh
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Trading as Appliances Emporium v. M/s Usha Industries
(India) New Delhi and Anr. 1985 SCC Online Del 387
wherein Hon’ble High Court reiterated question of delay.
Ld. Counsel also relied upon judgment titled as
American Home Products Corporation v. MAC
Laboratories Pvt. Ltd. & Anr. Dated 30-9-1985 wherein
Hon’ble Apex Court held that underlying object of Trade
Mark Act is to prevent trafficking in trade marks. A trade
mark is meant to distinguish the goods made by one
person from those made by another and when a person
get his trade mark registered, he gets valuable rights by
reasons of such registration. Further as the registration
of a trade mark confers valuable rights upon the
registered proprietor thereof, a person cannot be
permitted to register a trade mark when he has not used
it in relation to the goods in respect of which it sought to
be registered or does not intent to use in relation to such
goods.
40. The cited judgment in case titled Corn Products Refining
Co. v. Shangrila Food Products Ltd. (1960) 1 SCR 968
wherein it was held that presence of a mark in the
register does not prove its user at all and it is possible
that the mark may have been registered but not used. It is
not permissible to draw any inference as to their user
from the presence of the marks on the register.
41. Ld. Counsel also cited judgment in case titled
Kaviraj Pandit Durga Dutt Sharma v. Navaratna
Pharmaceutical Laboratories, (1965) 1 SCR 733 to the
CS (Comm.) No.: 137/2023 Page 21 of 34
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fact that in an action for the infringement, the plaintiff
must, no doubt, make out that the use of the defendant’s
mark is likely to deceive, but where the similarity
between the plaintiff’s and the defendant’s mark is so
close either visually, phonetically or otherwise and the
court reaches the conclusion that there is an imitation, no
further evidence is required to establish that plaintiff’s
rights are violated.
42. Ld. counsel for plaintiff also cited judgment of Hon’ble
High Court of Calcutta in case titled as Allergan Ins. v.
Chetana Pharmaceuticals 2007 (34) PTC 267 (Cal.). In
this case, the defendant obtained drug licence in the year
1985 and started using the mark at the earliest in 1988.
Whereas plaintiff was using the mark from 1984 in other
parts of the world and by virtue of registration, the
plaintiff has become senior user and defendant on the
other hand claimed that they are prior user in India and
obtained drug licence in 1985. On these facts, it was held
that plaintiff was held to be a senior user as the
defendant has started using the mark in the medicinal
product in 1988 though obtained drug licence in 1985,
but mere obtaining of drug licence is not the positive
indication as user of mark of the product without any
further evidence. Actual use of the mark with sale or
before sale with advertisement and publicity is the basis
in passing off action.
43. Ld. counsel for plaintiff further cited judgment titled as
Pioneer Nuts and Bolts Pvt. Ltd. v. M/s Goodwill
CS (Comm.) No.: 137/2023 Page 22 of 34
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Enterprises, 2009 SCC OnLine Del 2851. In this case,
plaintiff claimed that it has adopted the trademark on
01-06-1996 and made application for registration of
mark on 11-2-1998, advertised in the Trademark Journal
on 25-8-2003 and registration was granted on 14-5-2004
effective 11-2-1998. Whereas defendant’s first
application dated 10-8-2004 advertised in the Trade
Mark Journal on 01-06-2005 and in the column proposed
to be used was mentioned. The question before the Court
was whether defendant had made out case of prior user ?
It was held that defendant was unable to show that its
goods bearing the mark were at any point of time since
1991 and prior to 1996 available in the market. There
was absolutely no evidence placed on record by the
defendant to show that it has actually sold its goods
using the mark even thereafter. For proving prior user,
the defendant repeatedly referred to the two newspaper
advertisements inserted by it in 1993, the six trade
inquiries between 1994 and 1995 emanating from these
advertisements and it was held that advertisements
issued in the newspapers can hardly constitute the proof
of service on the user of the mark from those dates.
It was held that defendant has been unable to show at the
interlocutory stage that its use of the impugned marks,
which stand registered in the name of the plaintiff, is
prior to the use of those marks by the plaintiff.
44. It is further submitted by learned counsel for plaintiff
that there is no pleading in the written statement that
there is change in name of firm of the defendant from
CS (Comm.) No.: 137/2023 Page 23 of 34
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m/s Ham Dam Imli Gata Gat to M/s Humdum Food
Products Gruh Udyog. Further, the defendant also failed
to make out case of prior user. He further submitted that
some sale of the defendant is of no consequence. He also
cited judgment in case of Bhatia Plastics v. Peacock
Industries Ltd. 1994 SCC OnLine Del 387. In the said
case, it was held that facts that defendants are too big a
business house to pass off, the goods manufactured by
them under the trade mark of the, plaintiff and defendant
has more sale than plaintiff, is of no consequences. The
statutory right of small trader in view of registration of
trade mark cannot be denied.
45. On the other hand, learned counsel for defendant
submitted that plaintiff has claimed that he has become
proprietor of trade mark by way of assignment deed,
however, same is not filed by the plaintiff with suit.
However, defendant has filed same alongwith the
application under order 39 Rule 4 CPC which shows
initial proprietor was Kunal Food Products. Same is
assigned by Sh. Akhil Gera showing himself as
proprietor of the trade mark whereas Mr. Akhil Gera was
proprietor of the trade mark by virtue of being Karta of
HUF. However, he has assigned trade mark in his
individual capacity and not in the capacity of Karta. At
page 782, on his application for entering name,
assignment is done by Sh. Akhil Gera s/o Sh. Anil Gera.
The trade mark was registered in the name of Anil Gera
in the capacity of Karta of sole proprietorship which was
initially trading as Akhil Traders and was subsequently
CS (Comm.) No.: 137/2023 Page 24 of 34
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change to Kunal Food Product. Therefore, the
assignment to the Alka Confectionery/plaintiff was done
by Sh. Akhil Gera and not by Mr. Anil Gera and in his
interrogatories of questions regarding same was not
replied by plaintiff. It is further contended that plaintiff
is registered under class 5 for mouth freshner and later
on he copied label of defendant and filed application
subsequent to the filing of the suit to create evidence. It
is also submitted that application for registration of trade
mark dated 19-5-2004 was on the basis of ‘proposed to
be used’ word mark HUMDUM. However, subsequent
application which was made by plaintiff on 02-8-2006
shows user from 01-5-2004. Further the plaintiff is also
claiming copyright but when, from whom and how they
have acquired copyright is not mentioned. The catalogue
is of the year 2021. Further, the plaintiff does not have
registration of label HUMDUM in his favour and
prima facie he has no right.
46. Ld. Counsel for defendant further submitted that prior
user has effect on registration of trade mark. He also
pointed out that there are discrepancies in the invoices
filed by the plaintiff where original as well as duplicate
are placed on record. He, however, conceded bill dated
20-10-2004. He further stated that after interim
injunction on 28-2-2023, the plaintiff has placed his
goods on Amazon and previously other products were
available but these products were not available which
further show that it was placed on Instagram only one
week after obtaining injunction order to snatch business
CS (Comm.) No.: 137/2023 Page 25 of 34
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of defendant after taking advantage of the injunction. He
further submitted that defendant is in business since
19-10-2001 which is evidence from the documents of
purchase of property wherein defendant is shown as in
the business of ‘chinch goli’. He further submitted that
defendant is getting analysis of his products from the
laboratory since 21-3-2014 continuously whereas the
plaintiff has not filed any test report. He further
submitted that Food Safety and Standard Act, no
business can be carried out without licence and is
punishable. The plaintiff has not shown any licence.
47. It is further submitted by learned counsel for defendant
that he has demonstrated that assignment is not valid in
favour of plaintiff and hence S. 124 of Trade Marks Act,
1999-Stay of proceedings where the validity of
registration of trade mark is questioned etc., is applicable
and since defendant had not filed rectification
proceedings of trade mark of the plaintiff, S. 124, sub-
section 1 (ii) is applicable and Court is required to raise
issue regarding same and adjourn the matter. In support
of his submissions, learned counsel for defendant cited
judgment in case titled Clinique Laboratories LLC &
Anr. v. Gufic Limited & Anr and submitted that without
rectification, registration of said trade mark is not valid.
It is held that the Court, despite registration being prima
facie evidence of validity, can hold registration of trade
mark as invalid. (However, this judgment has been
overruled by Hon’ble Division Bench of Hon’ble High
Court while delivering the judgment in case of M/s Gufic
CS (Comm.) No.: 137/2023 Page 26 of 34
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Ltd. & Another v. Clinique Laboratories LLC & Anr.
FAO (OS) 222/2019 dated 09-07-2010). Further, the
cited judgment Lowenbrau AG and Ors. v. Jagpin
Breweries Ltd. & Ors. MANU/DE/0022/2009 also held
so that at the stage of interim application, the Court is
required to examine question of validity and registration
is prima facie evidence of validity but not conclusive
even at this stage.
48. Ld. counsel for defendant also cited judgment titled as
Kalpana Sharma v. Personal Care System
MANU/DE/2745/2008 with respect to S. 28 where both
the plaintiff and the defendant are owner of registered
trade mark, an action of interim injunction will not
follow. This judgment is however not applicable to the
facts of the present case as defendant is not registered
proprietor of the trade mark. S. 34 was also quoted
wherein it was held that if there is a user prior to date of
registration, then the user can continue.
49. Ld. counsel also cited Rolex Sa v. Alex Jewellery Pvt.
Ltd. and Ors. MANU/DE/0796/2009. In the said case,
trade mark Rolex was registered in favour of plaintiff
with respect to jewellery since 24-4-2001 and defendant
had claimed using same prior to date of registration. On
these facts, it was held that despite being registered
proprietor of the trade mark Rolex with respect to
jewellery, plaintiff would not be entitled to restrain the
use by the defendant of the same trade mark in relation
to jewellery if the defendant has used the trade mark
CS (Comm.) No.: 137/2023 Page 27 of 34
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Rolex in relation to Jewellery since prior to the
registration.
50. Ld. Counsel for defendant also cited judgment titled
Vikas Gupta & Anr. v. Sahni Cosmetics, 2021 (88) PTC
213 [Del][DB], judgment of our own Hon’ble High court
wherein plaintiff was holding registration since 2003 for
the mark ‘Neha’ and registration of the defendant for the
same was either refused or abandoned. Mark claimed by
the plaintiff itself dates back to the year 1992 and
defendant claimed user since 1990 but did not place any
document. Sale invoices filed by the defendant date back
to the year 2003, which was 15 years prior to the filing
of the suit and plaintiff was aware of the user of the
mark. Hon’ble Division Bench upheld order of Ld.Trial
Court whereby application under Order 39 Rule 1 & 2
CPC was dismissed and application under Order 39 Rule
4 CPC was allowed.
51. The cited judgment titled as Vee Excel Drugs
and Pharmaceuticals Ltd. v. Hab Pharmaceuticals
and Research Limited, MANU/DE/0830/2009,
both parties from their documents showed that they
have almost simultaneously used the trademark as
well as the copyrights in questions and the question
of actual proprietorship of mark and copyright was yet
to be gone into which will be done at stage of trial
and hence application of plaintiff for interim
injunction was dismissed and ex parte injunction was
vacated.
CS (Comm.) No.: 137/2023 Page 28 of 34
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-29-
52. The cited judgment Cobra Cables Pvt. Ltd. v. Anita
Cable Co. bearing I.A. No. 9616/2000 in CS(OS)
2115/2000 dated 24-1-2006 with respect to the
submission that documents (invoices) filed by the
plaintiff on record with suit do not match with the
documents filed subsequently and therefore plaintiff has
not come with clean hands and not entitle to injunction.
53. Ld. counsel for defendant also cited judgment titled as
Wander Ltd. And Another v. Antox India P. Ltd.
1990 (Supp) Supreme Court Cases 727 to the effect that
since legal rights will be established by way of trial on
evidence and the Court must weigh rights of both parties
whether they could be adequately compensated or
determine where the ‘balance of convenience lies’.
54. Ld. counsel for defendant further cited judgment titled as
Micolube India Limited v. Maggon Auto Centre, 2008
SCC OnLine Del 1739 and in the said case it was held
that ordinarily plaintiff by filing suit is required to do
search of website of trade mark whether other parties is
having registration of trade mark in question or not ?
This judgment is also not applicable to the facts of the
present case as in the case in hand, the plaintiff had filed
search report.
55. Ld. counsel for defendant further cited judgment of
Hon’ble Apex Court in case titled as Rameshwari Devi
& Ors. v. Nirmala Devi & Ors, MANU/SC/0714/2011
wherein it was held while grant of ex parte injunction,
the court should ordinarily give short notice and after
CS (Comm.) No.: 137/2023 Page 29 of 34
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hearing parties thereafter interim order should be passed.
This judgment was with respect to injunction in respect
of immovable properties. The law on subject of trade
mark is different which was laid down in judgment titled
Laxmikant (supra). The cited judgment titled as
Sita Ram Bhama v. Ramvatar Bhama
MANU/SC/0284/2018 is with respect to fact that
although sale documents filed by the defendant are not
registered and whether it can be looked at for collateral
purpose as it was not stamped.
56. He also cited judgment titled as Patel Field Marshal
Agencies and Ors. v. P.M. Diesels Ltd. & Ors.
MANU/SC/1509/2017 with respect to validity of
registration of trade mark. It was held in a situation
where suit for infringement is pending and issue of
validity of registration of trade mark is raised, the court
after finding prima facie invalidity can raise issue by
sending same for the decision to the Registrar/High
Court. There is no quarrel to the legal proposition.
57. Ld. counsel for plaintiff also cited judgment titled as
S. P. Chengalvaraya Naidu (Dead) by L.R.s v. Jagannath
(Dead) by L.Rs. & Ors. MANU/SC/0192/1994,
celebrated judgment holding that if plaintiff has filed suit
without disclosing complete facts and withholding
documents, he can be thrown out at initial stage.
58. I have considered the submissions of both parties.
59. The vacation of order is sought principally on two
grounds – one that registration of trade mark in favour of
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the plaintiff is not valid on account of the fact that it was
not assigned by proprietor in capacity of Karta of HUF.
The law on this aspect is well settled that if Court finds
prima facie invalidity of the trade mark, the Court in a
suit can raise issue with the Registrar and in meanwhile
stay proceedings. However, before finding the same, it is
worthwhile to see whether trade mark is prima facie
invalid ? The plaintiff has claimed proprietorship of the
trade mark on the basis of assignment by erstwhile
proprietor. The proprietor was HUF and Karta of the
same had got the trade mark in question registered and
Karta transferred the same in favour of present plaintiff.
The said assignment was duly registered with the
Registrar and change of the proprietorship in the name of
present plaintiff was carried out and granted about 13
years ago. There is no challenge to the assignment by
Karta or any member of HUF or by the Registrar or any
other person affected by the same. Admittedly the
defendant have never filed any rectification of the trade
mark before Registrar. Principally the dispute regarding
assignment of the trade mark is between the assigner and
assignee and statutory authority i.e. Registrar can also
raise objection if he does not find it to be properly
transferred. It is also pertinent to mention that Karta of
HUF has full authority to act on behalf of HUF. Merely
omission to write ‘Karta’ is of no consequences if the
member of the HUF has no objection. None of the
affected parties came forward and the Registrar has duly
registered the same and therefore I do not find that there
CS (Comm.) No.: 137/2023 Page 31 of 34
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is prima facie any invalidity in the trade mark.
60. Next important issue is with respect to prior user of the
trade mark. The defendant had claimed prior user of
trade mark on the basis of one property transfer
documents on which profession of the defendant is
shown as ‘Chinch Goli Humdum’. Admittedly there is no
invoice prior to the year 2014 available with the
defendant to show any legal sale of goods under the
trade mark Humdum. Although defendant had claimed
opening of bank account and filing of Income Tax
Return. Though there are discrepancies in the name of
the firm of the defendant, these documents do not reflect
user of the trade mark by the defendant which can be
said to have been concurrent user. On the other hand,
indisputably, the plaintiff is proprietor of the trade mark
HUMDUM which was registered in the year 2004.
Although some discrepancies have been pointed out with
respect to user of about a month which can be safely
ignored which will not have any bearing keeping in view
first sale of defendant is of the year 2014 i.e. after 10
years of the registration of mark of plaintiff.
61. The defendant has also challenge the order on various
other grounds inter alia that plaintiff was not getting
tested goods as required under Food Safety and Standard
Act and test report has been filed by defendant regarding
their products. The same is disputed by the plaintiff who
claimed that the said Act was came into force in the year
2013 and test report has become mandatory recently.
CS (Comm.) No.: 137/2023 Page 32 of 34
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Even otherwise, it does not in any manner show that
defendant has used the same prior to the plaintiff. The
mark of the plaintiff is also questioned on the issue that
defendant had got prepared it from their designer. The
certificate of the designer is also filed but admittedly it
was of recent origin. The plaintiff has also filed invoices
raised by the designer therefore it is disputed question of
facts.
62. The defendant has also questioned of putting up
material/ products on the online commercial platform
only recently with a view to make out case for himself. It
is not necessary that trade mark registered proprietor can
only show their user by putting their products on online
platform for sale. This fact alone will not help defendant
in any manner.
63. As regards delay in filing the suit, the defendant
admitted that they had filed the trade mark applications
which was refused and ground of refusal was also
disclosed that same stands registered in the name of
plaintiff. So thereafter user by the defendant of the mark
would amount to dishonest user.
64. The law laid down in Hindustan Pencil (supra) the
defence of latches and inordinate delay will not be
availbale as there is no honest and concurrent user by the
defendant. Further it is also argued that sale of the
defendant is more than plaintiff. Merely having more
sale cannot defeat right of registered proprietor as laid
down in judgment of Bhatia Plastic (supra).
CS (Comm.) No.: 137/2023 Page 33 of 34
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-34-
65. In view of above discussion, this Court is of the opinion
that a prima facie case of infringement of trademark,
and passing off is made out in favour of the plaintiff and
balance of convenience is also lying in its favour. It can
also be foreseen that irreparable loss in term of goodwill
and reputation would be caused to the plaintiff if no
interim injunction is passed in its favour. Hence the order
dated 21-02-2023 whereby ex parte ad interim injunction
was passed is confirmed hereby. Accordingly,
the defendant and all other acting on his behalf are
restrained from using impugned trade mark / trade name/
label ‘HUMDUM’ which is identical to registered trade
mark / trade name/ label of plaintiff ‘HUMDUM’ in any
form and manner which are identical and / or confusingly
or deceptively similar to trade mark/ trade name/ label of
plaintiff HUMDUM on any goods thereby infringing
plaintiff's registered trade marks and passing off its goods
and business as that of the goods and business of the
plaintiff.
66. With above order, the application under Order XXXIX
Rule 1 & 2 CPC is allowed and application under Order
XXXIX Rule 4 CPC is dismissed.
67. Nothing mentioned hereinabove shall tantamount to an
expression on merit of the case.
Announced in open court
today i.e. 08-6-2023
(GURDEEP SINGH)
DISTRICT JUDGE (COMMERCIAL COURT)
NORTH WEST/ROHINI/DELHI
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