CS(OS) 213 of 2009 Page 1 of 39 * IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(OS) No.213 of 2009 % Date of Decision: 20.11.2009 Rubaljit Singh …. Plaintiff Through Mr. Amarjit Singh Advocate, Ms. Supreet Advocate, Mr. Navneet Moni Advocate and Mr. Shruva Bhagat Advocate for plaintiffs. Versus M/s Kanz Overseas & anr. …. Defendants Through Mr.A.K.Goel Advocate with Mr. Amit Srivastave Advocate for defendants CORAM: HON’BLE MR. JUSTICE ANIL KUMAR 1. Whether reporters of Local papers may be allowed to see the judgment? YES 2. To be referred to the reporter or not? YES 3. Whether the judgment should be reported in the Digest? YES ANIL KUMAR, J. * IA 1399/2009 (Plaintiff's application u/o 39 Rules 1 & 2of CPC) IA 2761/2009(Defendants' application u/o 39 Rule 4 of CPC) IA 2762/2009(Defendants' Application u/O 39 Rules 1 & 2 of CPC) 1. These are the applications by the plaintiff under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure and by the defendants under Order XXXIX Rule 4 for vacation of interim order dated 9th February, 2009 restraining the defendant from using mark „KANZ‟ in respect of door closures, door closing devices, hydraulic CS(OS) 213 of 2009 Page 2 of 39 door closures, hardware fittings, glass hardware and restraining the Defendants from using mark „KANZ‟ on his packaging material and his catalogue and passing of his goods as that of plaintiff and Defendants' application under Order 39 Rules 1 & 2 of Code of Civil Procedure seeking restrain against the plaintiff from using mark „KANZ‟ in respect of door closures, door closing devices, hydraulic door closures, hardware fittings, glass hardware and restraining the plaintiff from using mark „KANZ‟ on his packaging material and his catalogue and passing of his goods as that of Defendants. 2. The plaintiff has filed the above-noted suit contending inter alia that he is engaged in the business of the manufacture, import and sale of door closures, door closing devices, hydraulic door closures, hardware fittings, glass hardware fittings etc. in the name and style of Classic Devices as a sole proprietor. The plaintiff contended that he is established in the trade since the year 1994 and he had obtained central sales tax registration in the year 1994 and he obtained an import license in the year 2005 for the import of goods of his interest. The plaintiff also contended that he is one of the Directors of another company, `Efficient Devices Pvt. Ltd.', which company is in business since the year 2000 and is a family concern of the plaintiff with his mother as a shareholder and a Director. The father of the plaintiff is also stated to be in the similar business which he is carrying on CS(OS) 213 of 2009 Page 3 of 39 business in the name and style of M/s. Hardwyn Industrial Trading Corporation at B-136, Mayapuri Industrial Area, Phase I, New Delhi, since 1965. The trade mark `Hardwyn‟ is used by his father‟s firm and through the father‟s firm licensee `Efficient Devices Pvt. Ltd. in respect of goods are being imported by it. The plaintiff asserted that in January 2007 he conceived and invented the trade mark „KANZ‟ and since then the trade mark has been continuously and extensively used in the course of the trade by the plaintiff. The trade mark „KANZ‟ is represented in a particular artistic and distinctive manner. According to the plaintiff, the goods sold by him have a packaging material and catalogue in the form of card board boxes having unique getup, layout, color combination and arrangement. For the purpose of trading the goods, the plaintiff is alleged to have engaged the services of Mr.Subhendu Banerjee carrying on business as Square Heads, 147 B, LIG Flats, Rajauri Garden, New Delhi and an artist by profession who prepared the original artistic work. An agreement is alleged to have been executed between the Artist and the plaintiff for creating and devising the device. 3. According to the plaintiff, the trade mark „KANZ‟ is widely and extensively used in the course of trade and the total sale of the plaintiff from 1st April, 2007 was Rs.23,94,802/- and from 1st April, 2008 to 31st December, 2008 was about Rs.15,61,464/-. The plaintiff has also CS(OS) 213 of 2009 Page 4 of 39 alleged to have spent substantial amount of money. The plaintiff is also alleged to have filed applications for the registration of the trade mark „KANZ‟ with the Registrar of Trade Marks which are pending for registration. The plaintiff has also claimed copyright in the artistic work in the manner in which the trade mark „KANZ‟ is represented. 4. The plaintiff alleged that the defendant No.1 is a firm which is an imposter of same description of goods and defendant No.2 is the proprietor or partner of defendant No.1. According to the plaintiff, defendants have dishonestly, malafidely and deliberately adopted the identical trade mark „KANZ‟ in respect of goods of their import and sale. According to the plaintiff, the defendants have not only adopted an identical trade mark „KANZ‟ in respect of the identical description of goods but they have also reproduced the artistic manner in which the trade mark „KANZ‟ is represented. 5. The plaintiff contended that the defendant No.2 had been actively associated with the business activities of the plaintiff and is associated with his firms during past years and had even been representing the plaintiff‟s company, `Efficient Devices Company Pvt. Ltd.', carrying on business at B-4/237, Safdarjung Enclave, New Delhi. The plaintiff has also contended that in December 2006 and December, 2007 there was an exhibition of hardware goods organized by ZAK Trade and Exhibitors at Delhi and Mumbai and defendant No.2 was part of the team CS(OS) 213 of 2009 Page 5 of 39 representing the plaintiff‟s company for promoting the business and the goods of the plaintiff company. The plaintiff has also alleged to have sponsored the visit of defendant No.2 to China in the month of March 2007 when plaintiff visited China with defendant No.2. 6. The plaintiff contention is that in July 2008 it was learnt by him that defendant No.2 was trying to establish his personal and direct relationship with some of the manufacturers of hardware goods in China where defendant No.2 was taken by plaintiff during their joint visit in March 2007. The plaintiff also alleged that defendant No.2 was also trying to procure and import hardware goods from China and setup his own business. It is asserted that in month of December 2008, plaintiff was surprised to see the goods bearing his trade mark „KANZ‟ in the market. The goods had striking similarity with the goods of the plaintiff having identical packaging getup, layout, color combination and arrangement. According to the plaintiff, inferior quality goods were sold and offered for sale under an identical trade mark „KANZ‟ which did not bear the complete particulars of manufacturer or importer or seller of such products. It is also contended that the detail of the inferior goods was not available even from the domain name www.kanzhardware.com which was stated on the goods. In the circumstances, the plaintiff filed the above-noted suit for perpetual injunction seeking restrain against the defendants from passing off CS(OS) 213 of 2009 Page 6 of 39 their goods as that of the plaintiff and infringing his trade mark and also infringing the copyright of the plaintiff and for rendition of accounts and damages. By an ex parte interim order dated 9th February, 2009 the defendants were restrained from using mark „KANZ‟ in respect of their goods and they were also restrained from using the mark „KANZ‟ on their packaging material, their catalogue and passing off their goods as that of the plaintiff. 7. The application of the plaintiff under Order 39 Rules 1 & 2 is opposed by the defendants. The defendants have filed the reply to the application of the plaintiff for interim injunction and have also filed an IA No.2761/2009 under Order XXXIX Rule 4 of Code of Civil Procedure for vacation/modification of ex parte interim order dated 9th February, 2009. The defendants contended that defendant No.2 is well experienced in the field of marketing and trade hardware items and had worked in retail of goods from 1995 to 2005 and has got vast experience in marketing, trading of hardware items. In the year 2006, he left the said job and stated his own business of job work in stainless items under the name and style of Balwant Plastic Industries. According to him, apart from the business of job work, the defendant No.2 from the year 2006 till May/June 2008 has also been associated with `M/s. Efficient Devices Pvt. Ltd.', M/s Classic Devices M/s.Hardwyn Industrial Trading Corporation, the firms or the companies which CS(OS) 213 of 2009 Page 7 of 39 belong to the plaintiff or his family members. The defendant No.2 had been working for marketing, sales and other field work on assignment basis. 8. The defendants contended that the wife of defendant No.2, Smt. Jaspreet Kaur, showed interest to start her own business in trading of hardware items and, therefore, requested defendant No.2 to assist her. On January 6, 2008, it is asserted that Smt.Jaspreet Kaur adopted the word „KANZ‟ as a trademark and Kanz Overseas as a trade name. The word „KANZ‟ has been coined, conceive and adopted by Smt. Jaspreet Kaur from the name of her own son, Kanwalzit Singh. The mark „KANZ‟ has been adopted from initial part of the said name Kanwalzit. The defendant No.2 contended that in May or June 2008 he completely disassociated himself from the companies of the plaintiff with the intention to assist his wife, Smt. Jaspreet Kaur. The wife of the defendant No.2 also inducted Sh. Sonu Dawani as a partner of the firm, M/s.Kanz Overseas and a partnership deed dated 1st November, 2008 was also executed between his wife Smt. Jaspreet Kaur and Smt.Sonu Dawani. Defendant No.1 has also filed an application for registration of trade mark consisting of word „KANZ‟ for statutory protection. The defendant No.1 had applied for registration of the trade mark „Kanz Overseas‟ on 18th July, 2008 in respect of door closures and door handles included in class VI and an application for registration of trade CS(OS) 213 of 2009 Page 8 of 39 mark „KANZ‟ on 16th September, 2008 in respect of floor machine, spring of piston rings which are pending before the Registrar of Trade Mark. The defendants have also contended that they got the domain name www.kanzhardware.com, registered on 29th August, 2008 and www.kanzoverseas.com registered on 12th September, 2008. According to the defendants, in October 2008 Mr.Amit of M/s. Unicorn Business made artistic mark bearing trade mark and label „KANZ‟ including visiting cards, letter heads, envelope bearing trade mark/label „KANZ‟ for M/s. Kanz Overseas and a amount of Rs.10,500/- was paid for the said work on behalf of M/s. Kanz Overseas. The defendants claimed that the defendant No.1 is the owner of the copyright of the original art work. 9. The defendant No.1 also alleged that he visited China in October 2008 for placing order for supply of goods under the trade mark „KANZ‟ for his own business and packaging and he took samples of the goods under the said mark. 10. On 1st November, 2008, Kanz Overseas is also stated to had taken on rent premises bearing No.Flat No.1-132, Sector II, DSIDC, Bawana Industrial Area, Delhi-110039 and a rent agreement dated 1st November, 2008 has been executed. A TAN number is also alleged to have been issued in the name of Kanz overseas on 1st November, 2008 by the Income Tax Authority. The defendants have also alleged to have CS(OS) 213 of 2009 Page 9 of 39 participated in the trade exhibition held at Pragati Maidan on 5th, 6th and 7th December, 2008 and publicized his business and trade mark. The defendants also alleged that they made payment of Rs.91,010/- to the fair organizers vide receipt dated 3rd December, 2008. The defendants have contended that the plaintiff visited the stall of defendant No.1 and threatened the defendants to stop business under the said name otherwise plaintiff will go to any extent to stop the defendants from doing the business and since the defendants did not give any heed to such illegal threats of plaintiff, the documents have been fabricated and the present suit has been filed and an ex-parte order has been obtained by misleading this Court. 11. According to the defendants, they have given wide publicity to their mark „KANZ‟ and they had been selling goods under the said trade name. Defendants have alleged that the suit of the plaintiff is based on false averments and fabricated documents and the ex parte interim injunction order dated 9th February, 2009 has been obtained on the basis of false averments and forged and fabricated documents and the plaintiff has not come to the court with clean hands and the interim order is liable to be vacated. 12. The defendants have contended that though the plaintiff alleged that he had been manufacturing goods and selling them since January 2007 but the firm of the plaintiff, Classic Devices, has not carried out CS(OS) 213 of 2009 Page 10 of 39 manufacturing activities in respect of said goods and therefore there was no occasion to adopt the trade mark „KANZ‟ for the manufacture of said goods. It is contended that no excise bill has been filed by the plaintiff to show that he has been manufacturing the said goods under the mark „KANZ‟ . It is contended that the plaintiff has copied the trade mark/label „KANZ‟ of defendant No.1 with a malafide intention to en- cash the goodwill and reputation of defendants' business and to eliminate the defendants from using the mark by putting undue pressure on them. Defendants have also relied on a certificate issued by the Artist of the plaintiff, Mr.Subhendu Banerjee, to the defendants. They further contended that the signatures of Mr.Subhendu Banerjee do not tally with the alleged signatures of said Artist on the product catalogue and on assignment deed dated 8th January, 2007. In the circumstances, it is alleged that the plaintiff did not get the deed of assignment on 8th January, 2007 nor the artistic work was created by Subhendu Banerjee in favor of plaintiff and assigned to him on that date. It is also contended that the alleged assignment deed has not been written and executed on 8th January, 2007 as Mr.Salil Sagar has also given a certificate to the defendants to the effect that he had signed the said deed at the instance of Mr.Rubaljeet Singh on or about 3rd February, 2009 and, therefore, the deed of assignment dated 8th January, 2007 is forged and fabricated. The defendants have also CS(OS) 213 of 2009 Page 11 of 39 alleged that sales invoices filed by the plaintiff in support of his contention that he is marketing goods under the name of mark „KANZ‟ since January 2007 are forged and fabricated. The plea is also raised by the defendants that price lists produced by the plaintiff are also forged and fabricated as the phone numbers given on the price list as 9212474768-/69 were not even allotted to the plaintiff in January 2007 when the alleged price list was allegedly issued. 13. In order to show a prima facie case the plaintiff has alleged that he is engaged in the business/manufacture and sale of door closures, door handles, hydraulic door closures, hardware fittings, glass fittings, locks and handles under the name and style of Classic Devices as its sole proprietor. Sh.Rubaljeet Singh, plaintiff is also alleged to be a Director of the company Efficient Devices Ltd which is also one of the leading and reputed importer and trader of hardware goods and is manufacturing the goods under the name and style of `Hardwyn Industrial Trading Corporation' and the trademark is `Hardwyn'. According to the plaintiff he conceived, invented and adopted the trademark Kanz and in order to have a distinctive packaging material and catalogue he had engaged the services of Mr.Subhendu Banerjee trading at 147B, LIG flats, Rajouri Garden, New Delhi. The artistic work relating to packaging of Kanz products was conceived, devised and created by Mr.Subhendu Banerjee who had assigned the rights in the CS(OS) 213 of 2009 Page 12 of 39 artistic works by Assignment Deed dated 8th January, 2007. The Deed of Assignment was exhibited as exhibit P1 as the statement of plaintiff was recorded on 26th March, 2009 who had deposed that the Deed of Assignment was signed on 8th January, 2007 by Subhendu Banerjee on all pages in his presence. The Deed of Assignment also has a catalogue annexed to it which has phone numbers of Classic Devices as 011 28116583, 09212474768/69. In his statement recorded on 26th March, 2009 plaintiff admitted that in 2007 the phone number 09212474768/69 was not in existence as they were allotted to him in August/September, 2008. 14. If the pamphlet for the artistic work was got prepared by the plaintiff in 2007 how could he give the phone numbers which had been allotted to him almost after 1½ years later. The plaintiff has not explained as to how could he be certain that those phone numbers will necessarily be allotted to him after one and half years. Why should plaintiff use in 2007 the phone numbers which had been allotted to him in 2008 almost after eighteen months later? The explanation by the plaintiff that he already had other telephone numbers 09212474760/61/62/63 and, therefore, he gave the numbers 09212474768/69 is not believable. The plaintiff has not produced anything to show that the telephone department had assured the plaintiff of allotment of such numbers after eighteen months. In any CS(OS) 213 of 2009 Page 13 of 39 case the object of giving the phone numbers is that the clients interested in the products of the plaintiff could approach him on the phone numbers given and do the business. If the plaintiff already had other numbers 09212474760/61/62/63, the plaintiff would give those telephone numbers which he had and not the numbers which could be acquired by him later in time. These explanations have been given by the plaintiff since the defendant No.2 filed an affidavit giving the details of the activations of various phone numbers of the plaintiff including the phone number 09212474768/69 which were allotted him almost two years after he allegedly started giving these numbers on his pamphlets. In the circumstances, it is apparent that the plaintiff in collusion with Subhendu Banerjee has manipulated the alleged Deed of Assignment dated 8th January, 2007 or the plaintiff has fabricated the signature of Mr .Banerjee. The inevitable inference is that the Deed of Assignment was executed by the said artist Subhendu Banerjee after October, 2008 when the phone No.09212474768/69 was activated in favor of the plaintiff. The forgery and manipulation by the plaintiff regarding the Deed of Assignment alleged to be executed on 8th January, 2007 is also inferable from the fact that even other numbers that is 9212474760/61/62/63 were not in existence on 8th January, 2007 as even those phone numbers were activated on 26th August, 2007. If these numbers were also activated on 26th August, 2007 then CS(OS) 213 of 2009 Page 14 of 39 how the plaintiff could anticipate on 8th January, 2007 that these numbers will be allotted to him and on the basis of those numbers he could foresee that almost a year after 26th August, 2007 other phone number bearing No.09212474768/69 will be allotted to him in October, 2008. The plaintiff in the facts and circumstances has not only manipulated the document dated 8th January, 2007 but has not deposed correctly even in his statement dated 26th March, 2009 that on account of having other phone numbers 09212474760/61/62/63 he got the phone number 09212474768/69 printed on the catalogue which was annexed with the Deed of Assignment. The version of the plaintiff that he got the deed of assignment from Mr. Banarjee on 8th January, 2007 is false and is an attempt by the plaintiff to mislead this Court and the plaintiff obtained an ex-parte order from this Court on the basis of a false document. 15. The defendant has also produced a certificate issued by Subhendu Banerjee giving his specimen signatures along with a copy of his passport dated 2nd September, 2002 bearing his signatures under his photograph. The copy of the certificate of registration for the sales tax under Delhi Sales Tax, 1975 bearing the signatures of Subhendu Banerjee has also been filed giving the specimen signatures of Subhendu Banerjee. The naked eye comparison of the signatures of Subhendu Banerjee on his certificate of specimen signatures, passport CS(OS) 213 of 2009 Page 15 of 39 and the sales tax registration certificate reveal that the signatures on the alleged Assignment Deed are very different with the signatures of Sh.Subhendu Banerjee on the alleged assignment deed. The defendant has also produced a copy of the certificate dated 19th February, 2009 of the alleged attesting witness of Deed of Assignment dated 8th January, 2009 categorically stipulating that the Deed of Assignment was signed by him on 3rd February, 2009 at the instance of the plaintiff Mr.Rubaljeet Singh of Classic Devices, C-147, Mayapuri Phase II, New Delhi. From these documents and the statement given by the plaintiff it is apparent that the Deed of Assignment was not executed on 8th January, 2007 as has been falsely alleged by the plaintiff and it has already held that these must have been executed after August, 2008 when the phone numbers which are on the pamphlets annexed with the Assignment Deed were activated and allotted to the plaintiff which could be on 3rd February, 2009 as has been stated by the attesting witness of the alleged Deed of Assignment Mr.Salil Sagar. 16. The manipulations done by the plaintiff are also apparent from the fact that in order to counter the certificate given by Sh.Salil Sagar that Deed of Assignment was signed by him on 3rd February, 2009, apparently an affidavit has been obtained from the same attesting witness Sh.Salil Sagar dated 18th March, 2009 where the said attesting witness has contended that the certificate produced by the defendant of CS(OS) 213 of 2009 Page 16 of 39 Sh.Salil Sagar was got signed from the witness by Mr.Dilpreet Singh by threatening the witness with dire consequences. Surprisingly if such a certificate was got signed by Mr.Dilpreet Singh, the said witness or even the plaintiff on behalf of the said witness could have filed complaint or could have filed some other proceedings, however, nothing has been done. Another affidavit of Ms.Kritika Malhotra the alleged attesting witness of Assignment Deed has also been obtained who has deposed that her father Sh.Vipin Malhotra is a very close friend of Mr.S.S.Sahil, father of Mr.Rubaljeet Singh. Even the said witness goes on to depose on affidavit that the Deed of Assignment was signed on 8th January, 2007. Apparently even Ms.Kritika Malhotra prima facie has given an incorrect affidavit. Therefore, in the facts and circumstances on the basis of the alleged Assignment Deed which has been manipulated by the plaintiff, it cannot be held that he has been using the trademark 'Kanz' since January, 2007. 17. In order to substantiate the plea of prior user of the trademark `Kanz', the plaintiff has relied on the price list dated 15th July, 2007, 15th April, 2008 and 10th January, 2009. The price list effective from 15th July, 2007 also gives the phone number 9212474768/69 which phone numbers were activated on 7th October, 2008. The explanation given by the learned counsel for the plaintiff that since the price list was in the hard disk of the computer system of the CS(OS) 213 of 2009 Page 17 of 39 plaintiff and the print was taken, however, the first page of the price list was taken of the price list effective from 10th January, 2009 with a changed