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2023 DIGILAW 1262 (BOM)

Narpat Lal Nemaram Gehlot v. Genaram Khumaram

2023-06-09

R.I.CHAGLA

body2023
ORDER : 1. Mr. Kirepekar learned Counsel appearing for the Applicant has tendered two Affidavits of Service dated 2nd January, 2023 and 3rd January, 2023. The Affidavits of Service show that the Defendant No.2 has refused to accept the copies of papers and proceedings in the captioned Suit. The copy of the Advocates Notice dated 5th August, 2022 has then been affixed by the deponent at a conspicuous place. In view thereof, Defendant No.2 has been served with the papers and proceedings. In so far as Defendant No.1 is concerned, the papers and proceedings, despite several efforts made to serve, have not been served. The second Affidavit of Service dated 3rd January, 2023 shows that the service was sought to be effected by courier and which envelope was returned. An attempt was also made to serve the Defendant No.1 by RPAD which was also returned. The deponent of the first Affidavit has also stated that upon visiting the factory premises of Defendant No.1 the same was found to be locked and after making inquiry it was learnt that the Defendant No.1 had closed down the factory four months ago as a result of the death of Defendant No.1’s son. The Affidavits of Service are taken on record. 2. The Plaintiffs have stated that they are joint owners of copyright in the artistic work comprising of the mark “NEETA” as shown in extract from Register of Copyrights bearing Registration No. A-137791/2021. Further, the Plaintiffs are the proprietor of the Trade Mark “NEETA” and/or “NEETA FORMATIVE MARKS” by virtue of Trademarks Registration Nos.183712, 1839717, 2086020, 2086021 and 4187493. Extracts from the Register of Copyrights bearing No.A- 137791/2021 are annexed at Exhibit B to the Plaint. The Certificate of Registration of Trade Marks along with the present status downloaded from the official website of the Registrar of Trade Marks www.ipindia.nic.in is annexed at Exhibit D to D-4. In the Certificate of Registration of Trademarks at Exhibit D the date is mentioned as 15th July, 2009 and User detail is of 1st January, 2008. 3. The Plaintiffs have relied upon the invoices from the year 2008 till date showing the sales under the Mark “NEETA”. The Plaintiffs state that annual sales under the Trade Mark “NEETA” was to the tune of INR 1,55,000.00 in the financial year 2008-2009 which grew exponentially to INR 4,34,54,556.00 approximately in the financial year 2019-2020. 4. 3. The Plaintiffs have relied upon the invoices from the year 2008 till date showing the sales under the Mark “NEETA”. The Plaintiffs state that annual sales under the Trade Mark “NEETA” was to the tune of INR 1,55,000.00 in the financial year 2008-2009 which grew exponentially to INR 4,34,54,556.00 approximately in the financial year 2019-2020. 4. The Plaintiffs have further stated in paragraph 14 of the Plaint that Defendant No.1 had filed an application for “NEETU HEENA LABEL” under the Trademark Application No.366071 on 30th October, 2017 by claiming the user as “PROPOSED TO BE USED”. The Trademark Application was published in Trade Mark Journal bearing Journal No.1831 dated 8th January, 2018. 5. There was Notice of Opposition to the said Application by the Plaintiffs and there was no counter statement filed by Defendant No.1 to the said Opposition and allowed the Application to be abandoned as per the provisions of law. Annexed at Exhibit -G is print out of the status of the Defendant No.1’s Trademark Application. Thereafter, Defendant No.1 had filed another application seeking Registration of Trademark “NEETU HENNA’ under Application No.4446362 on 19th February, 2020 claiming user from 25th May, 2006. The Trademark Application was published in Trademark Journal No.2017 dated 13th September, 2021 and the Plaintiffs have filed Notice of Opposition on 7th January, 2022. The Trademark Application of Defendant No.1 is annexed at Exhibit H to the Plaint. The Notice of Opposition filed by the Plaintiffs and the present status of the Trademark Application bearing Registration No.4446362 are annexed at Exhibit H1 to H2 of the Plaint. 6. The Plaintiffs in paragraph 16 of the Plaint stated that the Defendant No.1 had filed a third Application for “NEETU LABEL” on 22nd November, 2021 under the Trademark Application No.5217867 which is ‘Opposed’ on 9th March, 2022 by the Plaintiff. The printout of the present status of the Trademark Application No.5217867 of Defendant No.1 downloaded from the official website of Registrar of Trade Marks www.ipindia.nic.in is annexed at Exhibit H-3 of the Plaint. 7. The Plaintiffs have in paragraph 17 of the Plaint stated that in the month of June, 2022 it came to the knowledge of the Plaintiffs that Defendant No.1 has stated using art work/packaging which is deceptively similar in colour combination and placement of Trade Mark and other distinctive material on the label when compared to the Plaintiffs’ Trade Mark and Copyright label. Further, it is stated in paragraph 18 of the Plaint that upon further enquiry in the market, it has come to the knowledge of the Plaintiffs that Defendant No.2 is also manufacturing and/or marketing the product under the Trade Mark “NEETU” which is identical to the Trade Mark and packaging of Defendant No.1. Further, inquiry revealed that the Defendant No.2 is manufacturing the mehendi products on behalf of Defendant No.1 and also in another packaging bearing the impugned Trademark “NEETU”. The Plaintiff has accordingly claimed that the Defendants are infringing the intellectual property rights of the Plaintiffs. Annexed at Exhibit I-1 is a copy of the Defendant No.2’s product packaging bearing the impugned Trade Mark “NEETU” which is claimed to be deceptively similar to the Plaintiffs Trademark “NEETA”. 8. Mr. Kirpekar on behalf of the Plaintiff has submitted that the Defendants have not only adopted the deceptively similar mark “NEETU” but also have adopted each and every essential feature of the packaging with a view to deceive the gullible customer and unwary purchasers. A comparison between the Plaintiff’s product and Defendants’ mark is as under:- 9. Mr. Kirpekar has submitted that there are minor variations in the Plaintiffs’ product and Defendants’ product and which can only be identified if one conducts detailed analysis by comparing product of the Plaintiffs. However, upon a bare perusal of the rival packaging material, one can state that both the packaging materials are deceptively similar in every manner whatsoever. 10. Having considered the submissions and upon a comparison of the Plaintiffs’ product with the Defendants’ product, I am of a prima facie view that the Plaintiffs’ product and Defendants’ product are deceptively similar. The variations made by the Defendants are with a malafide intention to sail as close as possible to the Plaintiffs’ packaging material. The minor variations or modifications in the Defendants packaging material and/or artistic work are thus of no consequence. In my prima facie view by adopting a deceptively similar artistic work, the Defendants have a sole intention to ride freely upon the goodwill and reputation of the Plaintiff. 11. In my prima facie view, the Plaintiffs have established that they have acquired wide and enviable reputation and goodwill in respect of Plaintiffs’ Trademark and Copyright and that the mark “NEETA” and its artistic work are exclusively associated with the Plaintiffs’ products. 11. In my prima facie view, the Plaintiffs have established that they have acquired wide and enviable reputation and goodwill in respect of Plaintiffs’ Trademark and Copyright and that the mark “NEETA” and its artistic work are exclusively associated with the Plaintiffs’ products. In view of the Defendants’ impugned artistic work/product and its packaging being visually and structurally similar to the Plaintiffs’ well known trademark and artistic work, a case for the granting of ad-interim relief is made out. 12. In view thereof, I am satisfied that there is case made out for grant of injunction. The balance of convenience tilts in favour of the Plaintiffs and the Plaintiffs will suffer irreparable loss, if ad-interim relief is refused. Although ad-interim relief for infringement of Trademark and Copyright is required to be granted against the Defendants considering that Defendant No.1 has not been served with the papers and proceedings, ad-interim relief in terms of prayer Clauses (b) and (c) is at present granted only against Defendant No.2 as under:- (b) that pending the hearing and final disposal of the Suit, Respondent No.2 by himself, through his proprietary concern, partners, directors, agents, servants, stockists, dealers and/or distributors, exporters or any other person/s claiming through him from and/or otherwise be restrained by order of temporary injunction of this Hon’ble Court from infringing the Applicants registered Copyright in artistic works as shown in Exhibit ‘B’ to the Plaint, by using the impugned artistic works as shown in Exhibit ‘I’ to the Plaint and/or same and/or similar artistic works, so as to infringe the registered copyright of the Applicants in any manner whatsoever; (c) that pending the hearing and final disposal of the Suit, Respondent No.2 by himself through his proprietary concern, partners, directors, agents, servants, stockists, dealers and/or distributors, exporters or any other person/s claiming through him and/or otherwise be restrained by order of temporary injunction of this Hon’ble Court from infringing the Applicants registered trademarks bearing registration Nos. 1839712, 1839717, 2086020, 2086021 and 4187493 by using the impugned trade mark ‘NEETU’ as shown in Exhibits ‘I’ and ‘I-1’ to the Plaint and/or any other deceptively similar trade mark, so as to infringe the registered trade mark/s of the Applicants bearing registration Nos. 1839712, 1839717, 2086020, 2086021 and 4187493 in any manner whatsoever; 13. 1839712, 1839717, 2086020, 2086021 and 4187493 by using the impugned trade mark ‘NEETU’ as shown in Exhibits ‘I’ and ‘I-1’ to the Plaint and/or any other deceptively similar trade mark, so as to infringe the registered trade mark/s of the Applicants bearing registration Nos. 1839712, 1839717, 2086020, 2086021 and 4187493 in any manner whatsoever; 13. Copy of this Order shall be served on the Defendants by the Advocates for the Plaintiff and Affidavit of Service shall be filed on or before next date. 14. Liberty is granted to the Defendants to apply for variation and modification or recall of the order after giving at least seven clear workings days Notice to the Advocates for the Plaintiffs. 15. Ad-interim order shall continue to operate till 5th July, 2023. 16. Place the Interim Application for further adinterim relief on 4th July, 2023.