CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 1 of 35 *IN THE HIGH COURT OF DELHI AT NEW DELHI Date of decision: 2nd July, 2010. + CS(OS) No.2500/2007 % DUKE FASHIONS (INDIA) LTD. ..... Plaintiff Through: Mr. Sandeep Sethi, Sr. Advocate with Ms. Anuradha Salhotra, Mr. Sumit Wadhwa, Ms. Bhavna Gandhi, Mr. Amritesh Mishra & Ms. Reetika Walia, Advocates. Versus GIRISH HOSIERY & ORS. ..... Defendants Through: Mr. Amarjit Singh, Advocate with Mr. Survinder Singh, Mr. Gurpreet Singh, Ms. Navneet Momi, Ms. Supreet & Mr. Dhruv Bhagat, Advocates. AND + CS(OS) No.1608/2008 GIRISH HOSIERY PVT. LTD. ..... Plaintiff Through: Mr. Amarjit Singh, Advocate with Mr. Survinder Singh, Mr. Gurpreet Singh, Ms. Navneet Momi, Ms. Supreet & Mr. Dhruv Bhagat, Advocates. Versus DUKE FASHIONS (INDIA) LTD. ..... Defendants Through: Mr. Sandeep Sethi, Sr. Advocate with Ms. Anuradha Salhotra, Mr. Sumit Wadhwa, Ms. Bhavna Gandhi, Mr. Amritesh Mishra & Ms. Reetika Walia, Advocates. CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 2 of 35 CORAM :- HON’BLE MR. JUSTICE RAJIV SAHAI ENDLAW 1. Whether reporters of Local papers may be allowed to see the judgment? No 2. To be referred to the reporter or not? No 3. Whether the judgment should be reported No in the Digest? RAJIV SAHAI ENDLAW, J. 1. The applications for interim relief in the two suits are for adjudication. 2. CS(OS) No.2500/2007 was instituted first against M/s Girish Hosiery, Mr. Kanwar Singh, Mr. Inderpreet Singh & M/s Punjab Agencies Pvt. Ltd. for restraining them from infringing the trademark “Duke” of the plaintiff therein viz. M/s Duke Fashions (India) Ltd. (hereinafter called as “Duke Fashions”) and also for the reliefs of injunction, passing off, infringement of copyright, accounts etc. On application, being I.A. No.14687/2007 in the said suit, the defendants were restrained from using the mark “Duke” or from passing off their goods under the said mark as that of M/s Duke Fashions. The defendant no.1 M/s Girish Hosiery was initially sued through its proprietor Mr. Narayan Poddar and on it being disclosed that Mr. Narayan Poddar was no more on the date of institution of the suit, vide order dated 22nd May, 2008, Mr. Dilip Poddar was permitted to be substituted in place of Mr. Narayan Poddar as proprietor of the defendant no.1 M/s Girish Hosiery. Upon it being subsequently disclosed that M/s CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 3 of 35 Girish Hosiery, initially a proprietorship, had been converted into a partnership firm and that the business of the said partnership firm had been taken over by M/s Girish Hosiery Pvt. Ltd., vide order dated 9th January, 2009 the said M/s Girish Hosiery Pvt. Ltd. was added as a defendant. The defendants have filed I.A. No.9887/2008 under Order 39 Rule 4 of the CPC. Thus I.A. No.14687/2007 & I.A. No.9887/2008 are for adjudication in this suit. 3. M/s Girish Hosiery Pvt. Ltd. subsequently instituted CS(OS) 1608/2008 for restraining Duke Fashions from infringing its trademark or from passing off its goods under the trademark as that of M/s Girish Hosiery Pvt. Ltd. and for the ancillary reliefs of accounts, delivery etc. Along with the said suit, application for interim relief being I.A. No.9607/2008 has also been filed and which is also for adjudication. Besides, the aforesaid applications for interim reliefs, application being I.A. No.178/2009 of M/s Girish Hosiery Pvt. Ltd. under Section 124(1)(ii) of the Trademark Act in CS(OS) No.1608/2008 is also for consideration. 4. Duke Fashions instituted the suit claiming to be a pioneer in T-shirt culture in the country and engaged in the business of manufacturing and marketing of high quality thermal wears, inter alia under the brand name “Duke”; it was disclosed in the plaint that the mark “Duke” was initially registered in the name of members of the Jain family and in which Duke CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 4 of 35 Fashions had acquired rights by way of assignment deed dated 25th October, 1998; though in the plaint the various registrations in the name „Duke‟ or similar names were cited but without giving the dates of registration and only citing the dates till when the said registrations were renewed / valid; in the said list registrations in Class 25 (with which the present suit is concerned) i.e. Clothing, knitwears were also cited, besides those in Classes 1, 8, 13, 15, 16, 17, 23, 24, 26, 28 & 35; Duke Fashions though also gave particulars of its sales all over India and in Delhi and the advertising and publishing expenses for sale of its goods under the trademark “Duke” from the year 1999 to 2007 but without giving the figures of sale and publicity expenses of goods under Class 25 separately; Duke Fashions claiming to have learnt in or around last week of November, 2007 of use of “Duke” by Girish Hosiery (which shall include all the defendants in CS(OS) No.2550/2007 including Girish Hosiery Pvt. Ltd.) and further claiming to be „shocked‟ on making enquiries and having learnt of the registration of the trademark “Duke Girish” (as distinct from “Duke”) by the “defendants” instituted the suit claiming the reliefs as aforesaid. 5. M/s Girish Hosiery has contested the suit filed by Duke Fashions inter alia on the following pleas: (i) that it / its predecessor is the registered proprietor of “Duke Girish” since 29th October, 1974 and that in use since 1968 i.e. since much CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 5 of 35 prior to the claim of Duke Fashions of adoption and / or use of the trademark “Duke”; (ii) that it / its predecessor has been continuously / exclusively and extensively been using the trademark “Duke” since the year of adoption i.e. 1968; (iii) that the registration of the trademark “Duke Girish” was granted to it with a disclaimer to the exclusive use of the word “Girish” and thus the essential feature of its trademark was „Duke‟ alone; (iv) that M/s Girish Hosiery being a registered proprietor of the trademark with respect whereto suit was filed, the suit insofar as on the ground of infringement is barred by Section 28(3) of the Trade Marks Act, 1999; (v) that the suit is also barred under Section 30(2)(e) of the Act; (vi) that the suit for the relief of passing off also is not maintainable because M/s Girish Hosiery and / or its predecessor have been using trademark since prior to adoption / registration by Duke Fashions; (vii) that it has extensively used the trademark “Duke” and spent huge amounts on popularizing the same; (viii) M/s Girish Hosiery also pleaded copyright registration of its label “Duke” since 1978 i.e. much prior to that of Duke Fashions; (ix) that the registrations by Duke Fashions in Classes other than Class 25 are not relevant for the purposes of the present suit; (x) Duke Fashions has intentionally suppressed from the Court that the examination report issued on 4th April, 1983 when Duke Fashions had applied for registration of the trademark “Duke” in Class 25 had mentioned the prior registration of “Duke Girish”; Duke Fashions was CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 6 of 35 thus since then aware of the registration “Duke Girish” with respect whereto suit was filed and in the plaint has falsely expressed „shock‟ of learning of the registration for the first time only in the last week of November, 2007; it is pleaded that Duke Fashions is not entitled to any discretionary interim relief on this ground alone; (xi) Duke Fashions at the time of obtaining ex parte relief also did not inform the Court of the disclaimer of the exclusive use of word „Girish‟ of which it must have learnt on enquiry as pleaded in the plaint and for which suppression also Duke Fashions is not entitled to the interim relief; (xii) that the documents and advertisements relied on by Duke Fashions are all of just prior to the institution of the suit and do not disclose a long standing use of the trademark “Duke “ in Class 25 by the Duke Fashions; (xiii) Duke Fashions is not entitled to interim relief on the ground of laches, acquiescence and waiver i.e. of inspite of learning of registration by M/s Girish Hosiery on receiving the examination report issued on 4th April, 1983 as aforesaid having instituted the suit only in the year 2007; (xiv) that registration in favour of Duke Fashions is in violation of Section 11 & 12 of the Act and for which Girish Hosiery Pvt. Ltd. prior to being made party to the suit No.2500/2007 and prior to institution of CS(OS) No.1608/2008 had already applied under Section 124. CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 7 of 35 6. Duke Fashions in its replication has inter alia pleaded that Girish Hosiery had not been using its trademark since long prior to the application for registration by Duke Fashions. It has sought to explain away the alleged suppression of knowledge of trademark of the defendants in 1983 by contending that the events leading to registration of its trademark were not relevant. The other alleged suppression of disclaimer of exclusive use of “Girish” is sought to be explained by pleading that such disclaimer does not change the registration from “Duke Girish” to “Duke” alone. It is contended that it is Girish Hosiery which, after Duke Fashions had popularized the trademark mischievously attempted to pass off its goods as that of Duke Fashions. 7. There is no need to detail the pleadings in the suit being CS(OS) No.1608/2008, as the same are materially the same as detailed above. The variance, if any, would be noted in the contentions of the counsels. 8. The hearing on the applications itself had spread over a long period of time and further since considerable time has elapsed since conclusion of hearing, and to do justice to the submissions made, it is deemed expedient to list out the same also in detail. 9. The senior counsel for Duke Fashions has contended: CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 8 of 35 (i) That Girish Hosiery has not been using its trademark “Duke Girish” since 1974 and for this reason only did not oppose the registration applied for by Duke Fashions in 1981; (ii) It is only now, just prior to the institution of the suit, when Duke Fashions has built tremendous goodwill and market for its goods under the name “Duke” that Girish Hosiery with mala fide intention intended to pass off its goods as that of Duke Fashions; (iii) Registration of the mark “Duke Girish” without its use is of no consequence; (iv) that besides the relief of infringement for which the suit was filed, the suit for the relief of passing off is in any case maintainable. Reliance is placed on Section 27 (2) of the Act. It is contended that prior use is superior and Girish Hosiery had abandoned the mark by its non user; (v) that it is clearly made out from the documents that Girish Hosiery had adopted the trade packaging / dress of Duke Fashions; (vi) What Girish Hosiery is using now is not what was registered as far back as in 1974; (vii) Similarities in the packaging adopted by Girish Hosiery in 2007 with that of Duke Fashions are pointed out; (viii) that though Duke Fashions has given figures of its sales as well as of amount spent on publicity, Girish Hosiery has failed to plead the same; (ix) Duke Fashions since the year 1981 had applied for and obtained as many as 34 registrations of the mark “Duke” and Girish Hosiery had not opposed even one of those; a clear case of acquiescence, waiver and estoppel is made out; (x) the earlier advertisement of the year CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 9 of 35 1990 of Duke Fashions filed with the list of documents is pointed out; (xi) Mala fides of Girish Hosiery are sought to be shown from the adoption of an e-mail I.D. deceptively similar to that of Duke Fashions; (xii) It is contended that Duke Fashions, though owner of other trademarks also, is not using any other trademark except “Duke” and thus the sale figures and publicity expenses cited are of trademark “Duke” only and of no other trademark; it is however admitted that there is no other averment to the said effect in the pleadings; (xiii) From the documents of Girish Hosiery, it is pointed out that the mark is not “Duke” as of Duke Fashions but of “Girish Duke Calcutta”; (xiv) it is further pointed out from documents filed by Girish Hosiery that sales in the year 2005-06 were only of Rs.2.46 lacs in comparison to the sales of Duke Fashions of over Rs.40 crores; (xv) from yet other documents filed by Girish Hosiery, it is pointed out that the mark earlier being used was “Girish” and not “Duke”; (xvi) It is contended that invoices from 1987 to 1999 filed by Girish Hosiery to show use of the trademark are fabricated being in favour of one party only, in the same handwriting, prepared on the same day and through the same broker and not containing any sales tax number; on enquiry, it is informed that though local sales tax in West Bengal was exempted but the Central Sales Tax was leviable and since the sales in the said invoices were from Calcutta to Delhi, the fact that no sales tax element was shown clearly established that the invoices were CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 10 of 35 fabricated; (xvii) the advertisements filed by Girish Hosiery are pointed out to be of the same year i.e. 1996 and 1997 and of a local newspaper limited to West Bengal only; (xix) from the date of issuance (1st January, 1992) of certified copy of the Duke Fashions trade mark bearing No.383896, filed by Girish Hosiery, it is contended that Girish Hosiery since 1992 had knowledge of the registration in favour of Duke Fashions but still neither took any action nor opposed any subsequent registrations applied for by Duke Fashions; (xx) Attention was invited to Duke Fashions‟ invoices since February, 1992 and to affidavits of various trade persons filed stating that they associate the trade mark “Duke” with Duke Fashions only; (xxi) it is pointed out from the documents filed by Girish Hosiery that the first document of use filed is from the year 1983 onwards and which is also suspect as aforesaid; from the same, it is contended that the use prima facie shown by Girish Hosiery is from after the date of registration by Duke Fashions; it is urged that prior user scores over prior registration and Duke Fashions is entitled to interim relief on this ground alone; (xxii) Argument of abandonment of the trademark issued to Girish Hosiery is urged; (xxiii) Deception is attributed to Girish Hosiery for dropping “Girish” from its mark since 2007 onwards; (xxiv) A compilation of the following judgments is also handed over: CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 11 of 35 (i) Usha International Ltd. Vs. Usha Television Ltd. 1987 PTC 240A. (ii) Century Traders Vs. Roshan Lal Duggar & Co. AIR 1978 (Del.) 250 (iii) Corn Products Refining Co. Vs. Shangrila Food Products Ltd. 1960 (1) SCR 968. (iv) N.R. Dongre Vs. Whirlpool Corporation MANU/DE/0700/1995. (v) Pioneer Nuts & Bolts Pvt. Ltd. Vs. Goodwill Enterprises MANU/DE/0814/2008. (vi) Amritdhara Pharmacy Vs. Satya Deo Gupta AIR 1963 SC 449. (vii) Om Prakash Gupta Vs. Parveen Kumar MANU/DE/1199/2000. (viii) Sona Spices Pvt. Ltd. Vs. Soongachi Tea Industries Pvt. Ltd. MANU/DE/3457/2006. CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 12 of 35 (ix) Radhika Agro Industries Pvt. Ltd. Vs. Paawan Agro Foods Ltd. MANU/DE/1335/1998. (x) Cluett Peabody & Co. Inc Vs. Arrow Apparels 1998 PTC (18) 156. (xi) Evergreen Sweet House Vs. Ever Green 2008 (38) PTC 325 (Del.). (xii) Metropol India (P) Ltd. Vs. Praveen Industries India (Regd.) 1997 (43) DRJ (DB). (xiii) N.R. Dongre Vs. Whirlpool Corporation 1996 (7) JT SC 555. (xiv) Winthrop Products Inc. Vs. Eupharma Laboratories Ltd. 1998 PTC (18) 213 (Bom). (xv) Midas Hygiene Industries Pvt. Ltd. Vs. Sudhir Bhatia 2004 (28) PTC 121 (SC). 10. The counsel for Girish Hosiery has contended: (i) Duke Fashions was earlier marketing thermal wears under the trademark “Neva” and used “Duke” for thermal wears in 2007 only as borne out from the plaint in CS(OS) No. 2500/2007; a mala fide shift CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 13 of 35 in the written statement in CS(OS) No.1608/2008 is urged; (ii) The date of application of Girish Hosiery for registration is 29th October, 1974 pleading adoption / use since 1968; there was no need at that time to falsely plead the date of adoption / use and thus the case of Girish Hosiery / its predecessor having adopted the mark “Girish Duke” since 1968 has to be believed; (iii) the essential feature of the mark of Girish Hosiery is “Duke” because of the disclaimer of “Girish” – registration is thus confined to “Duke” only; there is a change in the law relating to disclaimer from the 1958 Act in the 1999 Act; registration of Girish Hosiery being of prior to the 1999 Act was under the 1958 Act and the effect of disclaimer there under will have to be seen. Attention is invited to Section 17 and Section 28(3) of the 1958 Act; (iv) thus none other can use “Duke”, the same being an essential feature of the mark of Girish Hosiery; (v) Duke Fashions has in the replication admitted knowledge of the disclaimer but intentionally did not disclose the same at the time of obtaining the ex parte relief; (vi) Attention is invited to para 11 of the written statement filed by Duke Fashions in CS(OS) No.1608/2008 where sales of Girish Hosiery though stated to be negligible are admitted. It is urged once such sales are admitted, Duke Fashions cannot urge abandonment and that there is no law that one with larger volume of sales is entitled to restrain the one with smaller volumes / quantum of sale; (vii) Duke Fashions prior to its first registration of mark “Duke” CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 14 of 35 had knowledge of the prior registration of “Girish Duke” and should not have adopted the infringing mark “Duke”; (viii) Duke Fashions registration mark has the caricature of the face of a man wearing a hat with a smoking pipe in his mouth, just like Girish Hosiery‟s mark has the prefix “Girish”; it is further pointed out that though in the registration of Duke Fashions “Duke” is spelt out in small letters but Duke Fashions is using capital letters in its publicity and packaging material; on the contrary, Girish Hosiery has registration mark as “Duke” with a capital „D‟; (ix) It is averred that Duke Fashions had manufactured the affidavits in order to show its user since prior to the date of which documents have been filed – affidavits though of different persons have same signatures and inconsistent age; it is contended that Duke Fashions having indulged in such practices are not entitled to any discretionary relief; (x) It is urged that documents filed by Duke Fashions, being a letter dated 28th October, 1982 to show use since then is office copy of a letter to ESIC and does not show use of the trademark and else there is nothing to show use since prior to 1992; (xi) though Girish Hosiery is entitled to protection under Section 34 being a prior user, Duke Fashions is not entitled to benefit thereof; (xii) Duke Fashions had learnt in 1983 of registration in the name of “Girish Duke”, if desirous of sale using the mark “Duke” and if contending that Girish Hosiery / its predecessor had abandoned the mark “Girish Duke”, ought to have applied for CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 15 of 35 cancellation of “Girish Duke” on ground of abandonment; (xiii) Attention is invited to Rules 38 & 39 of the 1959 Rules; (xiv) Duke Fashions in its written statement in CS(OS) No.1608/2008 has taken a plea of Section 28(3) which is against its argument, that because Girish Hosiery‟s mark is “Girish Duke”, there was no similarity; (xv) the subsequent registration in favour of Duke Fashions is bad and in the face of the bar contained in Sections 11 & 12 (1) of the old Act. Reliance in this regard is placed on para 12 of the Century Traders Vs. Roshan Lal Duggar & Co. AIR 1978 Delhi 250; (xvi) Reliance is placed on Section 31 to urge the plea of prima facie validity of the mark; (xvii) It is contended that the plea by Duke Fashions of abandonment by Girish Hosiery / its predecessor of their mark is falsified in view of the documents filed and moreover no such plea was taken in the plaint in CS(OS) No.2500/2007 or in written statement in CS(OS) No.1608/2008 and on the contrary sale by Girish Hosiery though negligible is admitted; (xviii) If non availability of documents is deemed to point to abandonment, on the same parity, Duke Fashions is also deemed to have abandoned its registration for having not filed any documents of sale till the year 1992; (xix) Duke Fashions inspite of knowledge in 1983 of registration of “Girish Duke” used the trademark “Duke” at its own risk and peril; (xx) for the argument of abandonment, action under Section 46 ought to have been taken; (xxi) Reference is made to: CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 16 of 35 (a) Consolidated Foods Corporation Vs. Brandon & Company Private Ltd. AIR 1965 Bombay 35 followed by the Division Bench of this Court in Century Traders Vs. Roshan Lal Duggar & Co. (supra). (b) N.R. Dongre Vs. Whirlpool Corporation AIR 1995 Delhi 300 on honest adoption. (c) Parle Products (P) Ltd. Vs. J.P. & Co., Mysore 1972 (1) SCC 618. (d) M/s National Chemicals & Colour Co. Vs. Reckitt & Colman of India Limited AIR 1991 Bombay 76. (e) Rupa & Co. Ltd. Vs. Dawn Mills Co. Ltd. 1999 PTC (19) 334 On what is deceptive similarity and what are the essential features of trademark. (f) Om Prakash Gupta Vs. Parveen Kumar 2002 (2) RAJ 505 (Del) where non disclosure of the disclaimer in plaintiff‟s mark was held to be misrepresentation leading to dismissal of application for interim relief. CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 17 of 35 (g) The Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd. AIR 1955 SC 558 on the effect of disclaimer. (h) Jai Prakash Gupta Vs. Vishal Aluminium Manufacturing Company 1996 PTC (16) 575 (i) Bimal Govindji Shah Vs. Panna Lal Chandu Lal 1997 PTC (17) 347 (j) Radhika Agro Industries Pvt. Ltd. Vs. Paawan Agro Foods Ltd. 1998 PTC (18) 151 On the proposition that the dubious character of document is not to be decided at the stage of deciding the application for interim relief. (k) Glaxo Operations U.K. Ltd. Vs. Samrat Pharmaceuticals AIR 1984 Delhi 265 (l) Dr. Ganga Prashad Gupta & Sons Vs. S.C. Gudimani 1986 PTC 17 (m) Amar Singh Chawla Vs. Rajdhani Roller Flour Mills Pvt. Ltd. 1990 PTC 220. CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 18 of 35 All on the proposition that use, inspite of knowledge of other‟s trademark, is at own risk and peril. (n) Ansul Industries Vs. Shiva Tobacco Company 2007 (34) PTC 392 (Del) on the aspect of delay / laches. It is contended that while it is borne out that Duke Fashions knew of the mark of “Girish Hosiery” in 1983 there is nothing to show that Girish Hosiery knew of the mark of Duke Fashions. (o) Power Control Appliances Vs. Sumeet Machines Pvt. Ltd. 1995 PTC 165 to contend that if Duke Fashions felt that Girish Hosiery / its predecessor was not using its mark, they should have applied for cancellation. (p) Winthrop Products Inc. Vs. Eupharma Laboratories Ltd. 1998 PTC 18 (Bom.) where use inspite of knowledge of earlier registration in favour of another was held to be dishonest. (q) Biochem Pharmaceutical Industries Vs. Pharma Synth Formulations Ltd. 2000