closma vide no. 1148501 dated 28.10.2002 in respect...
TRANSCRIPT
CS(OS) No.2377/2015 Page 1
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Decided on: 23.08.2017
+ CS(OS) 2377/2015, I.A. 24102/2015 ( O 39 R 2A), CRL.M.A.
15067/2015 (U/s. 340 Cr.P.C) CRL . M.A. 16950/2015 (U/s 340
Cr.P.C)
M/S KELWYN DOOR CARES (INDIA) & ANR. ..... Plaintiffs
Through: Mr. Ashoek Goel and Mr. Rajeev
Kumar, Advs.
versus
M/S JANSON ENTERPRISES & ANR ..... Defendants
Through: Mr. Amardeep Singh, Mr. Dinesh
Masant and Mr. Ambuj Saraswat,
Advs.
CORAM:
HON'BLE MS. JUSTICE DEEPA SHARMA
JUDGMENT
I.A. Nos. 16356/2015 (by plaintiffs under O 39 R 1 & 2), I.A. 21595/2015
( by defendants under O 39 R 4)
1. The plaintiffs have filed the suit for permanent injunction,
infringement of trade mark, passing off and have also claimed damages.
2. The plaintiff no. 1 is the registered proprietor of the trade mark
CLOSMA vide no. 1475173 dated 01.08.2006 in respect of hardware goods,
door closing devices, doors and window fittings, locks and handle fittings
etc in Class 6.
3. The plaintiff no.2 is the registered proprietor of trade mark CLOSMA
vide no. 1148501 dated 28.10.2002 in respect of hydraulic door closing
devices for door closures and floor springs in Class 7. The plaintiff no. 2
CS(OS) No.2377/2015 Page 2
is also the registered proprietor of trade mark KELWYN in respect of
closing devices for door, doors and window fittings etc in Class 6 and
also in respect of hydraulic door closing devices for door closures and floor
springs in Class 7 and they are using the trade mark CLOSMA since the
year 2002 and KELWYN since the year 1989. The word KELWYN is the
prominent part of the trading style of plaintiff no. 1/ firm. It is submitted
that website www.closma.com of plaintiff no. 1 provides the information
regarding all the products of the plaintiffs under its well known trade mark
CLOSMA. This website is accessible at any place in the world.
4. The plaintiffs alleged that in July 2015, it noticed that the defendants
are using the deceptively similar mark KLAZMA, KLAZMAX and
KLAZVYN (hereinafter referred to as “impugned marks”) in relation to
identical goods. The defendants copied the first four letters KLAZ in the
impugned marks by keeping in mind the first four letter CLOS of plaintiff’s
trade mark CLOSMA and thereafter added the word VYN by keeping in
mind the later three letters of plaintiff’s trade mark KELWYN. The
defendants have also copied the slogan of the plaintiff printed below its
trade mark CLOSMA and have also copied products code of the plaintiffs.
It is, therefore, submitted that the defendants are not only infringing the
CS(OS) No.2377/2015 Page 3
trademarks of the plaintiffs but are also passing off their goods as that of the
plaintiffs and thereby causing huge losses to the plaintiffs. It has also
affected the goodwill of the plaintiffs. On these facts, it is prayed that the
defendants, their agents, servants, representatives etc. be restrained from
using the impugned trade mark KLAZMA, KLAZMAX and KLAZVYN or
any other mark which is deceptively similar to the Plaintiffs’ trademark
CLOSMA and KELWYN. An application under Order 39 Rule 1 and 2 of
the Civil Procedure Code (hereinafter referred to as “CPC”) has also been
filed on the similar ground.
5. The suit as well as the application are contested by the defendants.
6. At the outset, the defendants have submitted that plaintiffs have not
come to this Court with clean hands and have concealed the fact that the
mark KLAZMA is the registered trade mark. It is submitted that the
plaintiffs, themselves, being guilty of fraud and misrepresentation, are not
entitled to any relief and the suit as well as the applications are liable to be
dismissed on this ground.
7. It is submitted that plaintiff no. 1, through its advocates, had moved
an application on 16.07.2015 with the Registrar of Trade Marks, New Delhi,
seeking rectification of the trade mark “KLAZMA” which is registered in
CS(OS) No.2377/2015 Page 4
the name of its proprietor Shri. Rajesh Jain vide registration dated
25.07.2012. It is submitted that a suit had been filed by the plaintiffs against
Sh. Rajesh Jain yet this fact had been concealed from the knowledge of the
Court and also that Sh. Rajesh Jain has not been made a party to the suit
although he is registered owner of trade mark.
8. It is further submitted that there is no similarity of any nature between
the defendants’ marks KLAZMAX-ARCHITECTURAL HARDWARE and
KLAZVYN with that of plaintiffs. It is submitted that Sh. Tarsem Jain,
proprietor of defendant no. 1 had applied for registration of trade mark
“KLAZVYN” which he has been using since 01.09.2012 and that the
trademarks of defendants have acquired a distinctive meaning since
September 2012. The use of mark by the defendants is not likely to cause
confusion in the mind of the public and also would not deceive anyone.
There is no similarity between the trademark of the plaintiffs and the
defendants, either visually or phonetically or otherwise. It is further
submitted that the plaintiffs were fully aware that no sale of any goods with
the trade mark KLAZMA ever took place at B-2/385, Sector -6, Rohini,
New Delhi (the alleged address), yet the plaintiffs sought ex-parte ad
interim injunction vide order dated 11.08.2015 and seized the alleged goods
CS(OS) No.2377/2015 Page 5
at the alleged address of the defendants. It is submitted that plaintiffs have
not only concealed the material facts from the notice of this Court but has
also sworn in a false affidavit. In the application under Order 39 Rule 4
CPC, the defendants sought the vacation of the interim order dated
11.08.2015 on the similar grounds. The application under Order 39 Rule 4
CPC is contested by the plaintiffs on the same grounds as enumerated in its
application under Order 39 Rule 1 and 2 of CPC.
9. I have heard the arguments of learned counsels and perused the
record.
10. The main and foremost argument of learned counsel for the
defendants is that the plaintiffs are not entitled to discretionary relief since
they have concealed from the Court that KLAZMA was the registered trade
mark and reliance is placed on M/s S.M. Dyechem Ltd. vs. M/s Cadbury
(India) Ltd, AIR 2000 SC 2114. It is also submitted that the present
application is liable to be dismissed in view of Section 124 of Trade Marks
Act, 1999 since the plaintiffs have already filed a rectification application
before the Registrar in respect of the registered trade mark “KLAZMA” and
has placed reliance on RM Dissels Pvt. Ltd vs. Thukral Mechanical Works
2016 (65) PTC Delhi Full Bench. It is further argued that the plaintiffs in
CS(OS) No.2377/2015 Page 6
their replication have admitted the filing of the rectification application and
the same is pending under Section 124 of the Trade Marks Act, 1999. It is
also argued that there is no similarity between the trademarks of the
plaintiffs and that of defendants. It is also argued that plaintiffs have filed a
suit for infringement and passing off and two suits cannot be filed together.
11. Learned counsel for the plaintiff has argued the matter at length and
has reiterated the pleas taken in the impugned application for stay. Learned
counsel has also relied on cases Lilly Icos LLC & Anr. v. Maiden
Pharmaceuitcals Lim 2009 (39) PTC 666 (Del.); Pankaj Goel v. Dabur
India Ltd. 2008 (38) PTC 46 (Del.); Indian Shaving Products Ltd. & Anr
v. Gift Pack & Anr. 1998 PTC 18 Del.; Mukesh Khadaria Trading v. DCM
Shriram Consolidated Limited 2010 (43) PTC 321 (Del.); and M/s.
Hidesign v. M/s. Hi-design creations AIR 1991 Del. 243 in support of his
arguments.
12. Admittedly, in the present case, the trade mark KLAZMA is
registered in the name of Sh. Rajesh Jain who is not made a party by the
plaintiffs yet relief has been sought against him. Sh. Rajesh Jain, is the
registered owner of the trademark “KLAZMA” and if any other person is
using the said trademark without his consent, the person aggrieved would be
CS(OS) No.2377/2015 Page 7
him. During the course of arguments and also in reply to application under
Order 39 Rule 4 of CPC, the plaintiffs have admitted that they had filed a
civil suit against Sh. Rajesh Jain which is pending trial in another Court, and
no injunction order was issued in favour of plaintiffs in that suit, yet the
plaintiffs have surreptitiously, by intentionally concealing the fact that the
mark KLASMA is registered in the name of Sh. Rajesh Jain and no stay
against the use of such mark was given to them by Court misguided the
Court and obtained an ex-parte order of stay against use of mark KLAZMA.
No injunction can be granted against the use of a registered trademark. It is
apparent that as per the knowledge of the plaintiffs themselves, none of the
defendant is the owner of the mark KLAZMA yet the suit is filed against
them concealing the fact that KLAZMA is registered mark and if the
defendants on their website or through any other medium claim themselves
to be the owner of the mark, KLAZMA, the person who could have any
grievance against such display would only be the registered owner of the
mark that is Sh. Rajesh Jain.
13. As regards the trade marks KLAZMAX ARCHITECTURAL
HARDWARE and KLAZVYN are concerned, defendants have claimed that
they have been using these trademarks since the year 2012 and have also
CS(OS) No.2377/2015 Page 8
applied for its registration. It is apparent from the documents placed on
record by the defendants that they had applied for registration of the marks
KLAZMAX vide application dated 01.06.2013 claiming its use since
01.09.2012 and for registration of mark KLAZVYN, vide application dated
11.06.2015 claiming its use since 01.09.2012. It is also apparent from the
documents placed on record by the defendants that prima facie the
defendants have shown that they have been using this mark since 2012 and it
seems that plaintiffs have not taken any steps against the use of these marks.
There is a considerable delay of about three years in moving the Court on
the part of the plaintiff. It is argued by learned counsel for the plaintiff
relying on the findings of the case in M/s. Hidesign (supra) and Mukesh
Khadaria (supra) wherein the delay of three years is not found to be fatal to
non-suit plaintiff and the relief was granted, that the delay itself cannot be a
ground to refuse injunction.
14. This Court in Mukesh Khadaria case (supra) case itself after
discussing the case law of Gujarat Bottling Co. Ltd. v. Coca Cola Co.
(1995) 5 SCC 545; The Fairdeal Corporation (Pvt.) Ltd v. Vijay
Pharmaceuticals 1985 PTC 80; Shri Gopal Engg. v. POMX Laboratories
AIR 1992 Delhi 302; Century Electronics v. C.V.S. Enterprises 1983 FSR
CS(OS) No.2377/2015 Page 9
1; Satish Khosla v. Eli Lilly Ranbaxy 1998 I AD (Delhi) 927; S.P.
Chengalvaraya Naidu v. Jagannath AIR 1994 SC 853; Pankaj Goel v.
Dabur India Ltd. 2008 (38) PTC 49; and Amar Singh Chawalwala v.
Shree Vardhman Rice & General Mills 2009 (40) PTC 417 summarised the
law as delay as under:-
“25. It is clear from the above that there are two views
with regard to dealing with delay in approaching the Court
for an injunction. One view that even minimal delay of a few
months would disentitle the plaintiff from an injunction
order while the other view is that delay in approaching the
Court would not necessarily disentitle the plaintiff from
obtaining an order of injunction. In our opinion, no hard
and fast rule can be laid down in this regard and each case
of delay must be judged on its own facts. In some cases, the
delay may be entirely bona fide while in some the delay may
be completely unexplained, while in other cases the delay
may amount to waiver or acquiescence. Whatever the
reason for delay, if it is inordinate and amounts to laches,
the Court would have to be extremely circumspect in
granting an ex parte injunction and later confirming it.”
(Emphasis supplied)
The principle of law as envisaged is that where the delay is
unexplained, not bona fide, it may amount to waiver or acquiescence
depending on the facts and circumstance of each case and also the conduct
of parties. In the case of Hidesign (supra) also, this Court considered the
facts and circumstances of the case and the pleas raised by the parties to
reach to the conclusion whether the delay amounts to acquiescence or not.
CS(OS) No.2377/2015 Page 10
Though the delay in moving the Court ipso facto does not disentitle the
plaintiffs for relief and its effect has to be judged in the light of the facts and
circumstance of the case and the conduct of the parties.
15. In order to be entitled for relief at this stage, the plaintiffs have to
prima facie give valid and reasonable reasons for delay. There is nothing on
record to show that the plaintiffs were not aware of the applications being
filed by the defendants for registration of these two marks, yet it remained
complacent and did not move the Court. The plaintiffs have failed to give
any valid and reasonable reasons for such complacency.
16. Also where there is unexplained delay in approaching Court, the
conduct of the parties is a relevant factor. It is the overall conduct of the
party which the Courts needs to take into account while exercising its
discretion of granting ad interim injunction.
17. Initially, on the first date of hearing, this Court found it appropriate to
issue ex-parte ad interim injunction only in respect of mark KLAZMA
which evidently the plaintiffs succeeded by concealed material facts from
this Court. There is no dispute to the principle of law that a discretionary and
the grant of injunction is equitable relief which has to be exercised with
caution. The equity demands that the person who seeks discretion must
CS(OS) No.2377/2015 Page 11
come to Court with clean hands and if he does not do so, he is not entitled
for any relief.
18. This Court in the case of M/s Seemax Construction (P) Ltd. Vs. State
Bank of India and another, AIR 1992 Delhi 197 has held as under:-
“10. The suppression of material fact by itself is a sufficient ground to
decline the discretionary relief of injunction. A party seeking
discretionary relief has to approach the court with clean hands and is
required to disclose all material facts which may, one way or the
other, affect the decision. A person deliberately concealing material
facts from court is not entitled to any discretionary relief. The court
can refuse to hear such person on merits. A person seeking relief of
injunction is required to make honest disclosure of all relevant
statements of facts otherwise it would amount to an abuse of the
process of the court. Reference may be made to decision in The King
v. The General Commissioners for the purposes of the Income Tax
Acts for the District of Kensingion, 1917 (1) KBD 486 where the court
refused a writ of prohibition without going into the merits because of
suppression of material facts by the applicant. The legal position in
our country is also no different. Charanji Lal v. Financial
Commissioner, Haryana, Chandigarh AIR 1978 P & H 326.
Reference may also be made to a decision of the Supreme Court in
Udai Chand v. Shankar Lal, [1978]2SCR809. In the said decision the
Supreme Court revoked the order granting special leave and held that
there was a misstatement of material fact and that amounted to
serious misrepresentation. The principles applicable are same
whether it is a case of misstatement of a material fact or suppression
of material fact.”
(Emphasis supplied)
19. The same principle is reiterated by this Court in the case of Charanjit
Thukral and Anr. Vs. Deepak Thukral and Anr. in CS(OS) No. 967/2010
decided on 29.07.2010 and held as under:-
CS(OS) No.2377/2015 Page 12
“18. It is settled principle of law that a person who approaches the
Court for grant of relief, equitable or otherwise, is under a solemn
obligation to candidly disclose all the material/important facts which
has bearing on the adjudication of the issues raised in the case. It is
the duty of the party asking for an injunction to bring to the notice of
the Court all facts material to the determination of his right to have
injunction and it is not an excuse for him to say that he was not aware
of the importance of any facts which he has omitted to bring forward.
Where plaintiff does not act bona fidely and does not put every
material facts before the Court, the Court is within its inherent power
to refuse to grant him injunction, even though there might be facts
upon which injunction might be granted. Conduct of the plaintiff is
very material in bringing the case and disclosing the facts before the
Court. plaintiff is required to make fullest possible disclosure of all
material facts within his knowledge to the Court and if he does not
make that fullest possible disclosure, he cannot obtain any advantage
from the proceedings and is liable to be deprived of any advantage he
might have already obtained by means of the order which has thus
wrongly been obtained by him by concealment of material facts.”
(Emphasis supplied)
21. In Gujarat Bottling case (supra) way back in 1985, the Supreme
Court has laid down the principle that the conduct of the parties is an
important factor while exercising discretion. The Court has held as under:-
“50. In this context, it would be relevant to mention that in the instant
case GBC had approached the High Court for the injunction order,
granted earlier, to be vacated. Under Order 39 of the Code of civil
procedure, jurisdiction of the Court to interfere with an order of
interlocutory or temporary injunction is purely equitable and,
therefore, the Court, on being approached, will, apart from other
considerations, also look to the conduct of the party invoking the
jurisdiction of the court, and may refuse to interfere unless his
conduct was free from blame. Since the relief is wholly equitable in
nature, the party invoking the jurisdiction of the Court has to show
CS(OS) No.2377/2015 Page 13
that he himself was not at fault and that he himself was not
responsible for bringing about the state of things complained of and
that he was not unfair or inequitable in his dealings with the party
against whom he was seeking relief. His conduct should be fair and
honest. These considerations will arise not only in respect of the
person who seeks an order of injunction under Order 39 Rule 1 or
Rule 2 of the CPC, but also in respect of the party approaching the
Court for vacating the ad-interim or temporary injunction order
already granted in the pending suit or proceedings.”
22. The Supreme Court in Rajabhai Abdul Rehman Munshi vs. Vasudev
Dhanjibhai Mody [1964 ]3 SCR 480 held that in the matters where the
Court has to exercise its discretion, the discretion cannot be exercised in
favour of the parties who have concealed the material facts from the notice
of the Court and that it is the duty of the parties to present before the Court
all those facts which are relevant for the Court to exercise its discretion. The
Court has held as under:-
“11……We cannot over-emphasize the fact that the jurisdiction of this
Court is discretionary. This Court is not bound to grant special leave
merely because it is asked for. A party who approaches the Court
knowing or having reason to believe that if the true facts were
brought to its notice this Court would not grant special leave,
withholds that information and persuades this Court to grant leave
to appeal is guilty of conduct forfeiting all claims to the exercise of
discretion in his favour. It is his duty to state facts which may
reasonably have a bearing on the exercise of the discretionary
powers of this Court. Any attempt to withhold material information
would result in revocation of the order, obtained from this Court. We are unable to agree with counsel for the defendant that the duty of
an applicant for special leave to this Court is discharged when he
merely summarises the judgment of the Courts below and claims relief
CS(OS) No.2377/2015 Page 14
on the footing that the findings are correct, when to his knowledge the
findings cannot be sustained and the findings have been so recorded
because the Courts below have been misled on account of
representations for the making of which he was either directly or
indirectly responsible. In our judgment the petition filed before this
Court was misleading.”
(emphasis supplied)
23. Also, in the case of S.P. Chengalvaraya Naidu (dead) by L.Rs. vs.
Jagannath (dead) by L.Rs. and others AIR 1994 SC 853, the Apex Court
has declined to exercise the discretion in favour of the party who had not
approached the Court with clean hands. The Court has held as under:-
“7. The High Court, in our view, fell into patent error. The short
question before the High Court was whether in the facts and
circumstances of this case, Jagannath obtained the preliminary
decree by playing fraud on the court. The High Court, however, went
haywire and made observations which are wholly perverse. We do not
agree with the High Court that "there is no legal duty cast upon the
plaintiff to come to court with a true case and prove it by true
evidence". The principle of "finality of litigation" cannot be pressed
to the extent of such an absurdity that it becomes an engine of fraud
in the hands of dishonest litigants. The courts of law are meant for
imparting justice between the parties. One who comes to the court,
must come with clean-hands. We are constrained to say that more
often than not, process of the court is being abused. Property-
grabbers, tax- evaders, bank-loan-dodgers and other unscrupulous
persons from all walks of life find the court - process a convenient
lever to retain the illegal-gains indefinitely. We have no hesitation to
say that a person, who's case is based on falsehood, has no right to
approach the court. He can be summarily thrown out at any stage of
the litigation.
(emphasis supplied)
CS(OS) No.2377/2015 Page 15
24. As discussed above, it is apparent that the plaintiff has not come
before this Court with clean hands and has suppressed the material facts of
the nature which goes to the very root of the matter. The plaintiffs have also
succeeded in obtaining an ex-parte interim injunction from this Court by
suppressing the material facts. The plaintiffs therefore are not entitled to the
equitable relief sought by them. The case laws relied upon by the plaintiffs
are of no help to them. This Court is of opinion that the plaintiffs are guilty
of concealing material facts, filing false affidavit and for misleading the
Court, which is nothing less than the contempt of this Court. The plaintiffs
are not entitled to the relief they have sought. The ex-parte injunction
granted vide order dated 11.08.2015 stands vacated. The application of the
plaintiffs under Order 39, Rules 1 and 2 of the CPC stands dismissed. The
application of the defendant under Order 39, Rule 4 of the CPC is allowed.
CS(OS) 2377/2015, I.A. 24102/2015 ( O 39 R 2A), CRL.M.A. 15067/2015
(U/s. 340 Cr.P.C) CRL . M.A. 16950/2015 ( U/s 340 Cr.P.C)
Let the matter be put up before the Roster Bench for 01.09.2017.
DEEPA SHARMA
(JUDGE)
AUGUST 23, 2017/ss