Ran India Steels Pvt Ltd v. Rana Steels

ORDER

17.05.2012

¶1The antagonist is M/s Ran India Ltd. The protagonist is M/s Rana Steels.

¶2The battle front was opened when M/s Rana Steels filed a suit alleging infringement of its 'RANA' by bringing to the notice of the Court that M/s Ran India Steels FAO(OS)81/2010 & FAO(OS)212/2008 -10 Ltd. to sell its products under the trademark 'RANA TOR' or a mark deceptively similar to the trademark 'RANA', issue was re-debated.

¶9Vide impugned order dated January 14, 2010, challenged in FAO(OS) No.81/2010, finding returned is that the 'RANINDIA' is deceptively similar to the 'RANA'. The consequence is that M/s Ran India Steels Pvt. Ltd. and its Directors being prima-facie held to be in violation of the order passed restraining them from selling its products under the trademark 'RANA TOR' or a trademark deceptively similar to the trademark 'RANA'.

¶10During arguments in the two appeals today, a suggestion emanated from the Court with a request to the learned counsel for the parties to settle the dispute pertaining to M/s Ran India Steels Pvt. Ltd. carrying on its business under the trademark 'RANINDIA'. The response is positive.

¶11It is agreed that M/s Ran India Steels Pvt. Ltd. could sell its products under the trademark 'RANINDIA', written as one word without any space between the word 'RAN' and the word 'INDIA'. The word 'RANINDIA' would be written in same font and styling. It is further agreed that in the products sold, the aforesaid would be etched, embossed or printed, as the case may be. But on the publicity material, M/s Ran India Steels Pvt. Ltd. would use the trademark afore-noted in conjunction with a pictorial description of the arm of a human body with muscles, as represented on the Registered Trademark No.1603837 of M/s Ran India Steels FAOiOS)81/2010&FAO(OS)212/2008 Page3 of5 It * IN THE HIGH COURT OF DELHI AT NEW DELHI + FAO(OS) 81/2010 RAN INDIA STEELS PVT. LTD. Appellant Represented versus RANA STEELS Respondent Represented instructed by Mr.S.K.Bansal, Mr.Pankaj Kumar and Mr.Vikas Khera, Advocates. + FAO(OS) 212/2008 RAN INDIA STEELS PVT. LTD. Appellant Represented versus / RANA STEELS Respondent Represented instructed by Mr.S.K.Bansal, Mr.Pankaj Kumar and Mr.Vikas Khera, Advocates. CORAM: HON'BLE MR. JUSTICE PRADEEP NANDRAJOG HON'BLE MR. JUSTICE SIDDHARTH MRIDUL ORDER %

17.05.2012

¶1The antagonist is M/s Ran India Steels Pvt. Ltd. The protagonist is M/s Rana Steels.

¶2The battle front was opened when M/s Rana Steels filed a suit alleging infringement of its trademark 'RANA' by bringing to the notice of the Court that M/s Ran India Steels MOCOSJ81/2010&FAO(OS)212/2008 Page1 of5 Pvt. Ltd. was marketing similar products under the trademark 'RANA TOR'.

¶3Both companies are admittedly selling steel rolled products, such as steel reinforcement bars, girders etc.

¶4Application seeking interim injunction pending decision in the suit was considered and decided by the learned Single Judge against M/s Ran India Steels Pvt. Ltd. and it has been held that the trademark adopted by M/s Ran India Steels Pvt. Ltd. i.e. 'RANA TOR' was deceptively similar to the trademark used by M/s Rana Steels i.e. the trademark 'RANA'.

¶5Injunction granted is to restrain M/s Ran India Steels Pvt. Ltd. to sell its products using the trademark 'RANA TOR' or any other mark deceptively similar to the 'RANA' of M/s Rana Steels.

¶6Highlighting that before the interim injunction application was disposed of on March 25, 2008, M/s Rana had obtained an ex-part ad-interim injunction on August 14, 2007 which had enured till it was confirmed, issue of stock weighing approx. 3000 MT with M/s Ran India Steels Pvt. Ltd. came up for consideration at a subsequent stage, and alleging that M/s Ran India Steels Pvt. Ltd. had sold the aforesaid stock bearing the trademark 'RANA TOR', it was prayed to the Court that action be taken against the Directors of the company for having violated the injunction granted.

¶7Another grievance was made. The same related to M/s Ran India Ltd. selling its products under the 'RANINDIA'

¶8Since the injunction granted restrained M/s Ran India FAO(OS)81/2010&FA0(0S)212/2008 Page2 of5 -^0 Ltd. to sell its products under the trademark 'RANA TOR' or a mark deceptively similar to the trademark 'RANA', issue was re-debated.

¶9Vide impugned order dated January 14, 2010, challenged in FAO(OS) No.81/2010, finding returned is that the 'RANINDIA' is deceptively similar to the 'RANA'. The consequence is that M/s Ran India Steels Pvt. Ltd. and its Directors being prima-facie held to be in violation of the order passed restraining them from selling its products under the trademark 'RANA TOR' or a trademark deceptively similar to the trademark 'RANA'.

¶10During arguments in the two appeals today, a suggestion emanated from the Court with a request to the learned counsel for the parties to settle the dispute pertaining to M/s Ran India Steels Pvt. Ltd. carrying on its business under the trademark 'RANINDIA'. The response is positive.

¶11It is agreed that M/s Ran India Steels Pvt. Ltd. could sell its products under the trademark 'RANINDIA', written as one word without any space between the word 'RAN' and the word 'INDIA'. The word 'RANINDIA' would be written in same font and styling. It is further agreed that in the products sold, the aforesaid would be etched, embossed or printed, as the case may be. But on the publicity material, M/s Ran India Steels Pvt. Ltd. would use the trademark afore-noted in conjunction with a pictorial description of the arm of a human body with muscles, as represented on the Registered Trademark No.1603837 of M/s Ran India Steels FAO(OS)81/2010&FAO(OS)212/2008 Page3of5 Pvt. Ltd.

¶12It is agreed that both parties shall withdraw the respective cancellation/opposition petitions filed by them which come into conflict from today with the aforesaid settlement between the parties and that M/s Ran India Steels Pvt. Ltd. shall not use the trademark 'RANA TOR'.

¶13The appeals stand disposed of in terms of the settlement in so far the dispute relates to the trademark under which Ran India Ltd. would carry on business henceforth.

¶14As regards action for contempt, noting that the learned Single Judge has prima-facie found M/s Ran India Steels Pvt. Ltd. to be in contempt with reference to it selling its products using the trademark 'RANINDIA', said finding is nullified with consent of learned counsel.

¶15However, the dispute: Whether M/s Ran India Steels Pvt. Ltd. liquidated the stock weighing approx. 3000 MT with the trademark 'RANA TOR', evidence would be needed to determine whether M/s Ran India Steels Pvt. Ltd. re-rolled the existing stock and thereafter sold the same, as claimed by it, and not under the trademark 'RANA TOR', but under the 'RANINDIA', would require evidence to be led.

¶16The same would be led in the suit and the matter would be considered by the learned Single Judge.

¶17Application seeking contempt action against M/s Ran India Ltd. i.e. I.A.No.13619/2008 shall be re-decided on the limited issue hereinabove settled for disposal and we direct that the said application stands restored. The FAO(OS)81/2010 &FA0(0S)212/2008 Page 4 of5 © parties are permitted to file such documents on which they rely for purposes of adjudication of I.A.No.13619/2008.

¶18It is clarified that the consent aforesaid encompasses that M/s Ran India Steels Pvt. Ltd. would have no objection to M/s Rana selling its products under the trademarl< 'RANA' or 'RANA TOR'.

¶19The appeals stand disposed of.

¶20No costs. "

PRADKP NANDRAJOG, J. SIDDHARTH

MRIDUL, J. MAY 17. 2012 KA PAO(OS)81/2010 &FAO(OS)212/2008 Page 5 of5 $-4 + % IN THE HIGH COURT OF DELHI AT NEW DELHI FAO(OS) 212/2008 RAN INDIA STEELS PVT. LTD. Appellant Representedby:Mr.AnnarjitSingh,Advocateand Ms.Ashna Bhalla, Advocate. versus RANA STEELS Respondent Representedby: i^r.Pani<ajKunnar,Advocate. CORAM: HON'BLE MR. JUSTICE PRADEEP NANDRAJOG HON'BLE MR. JUSTICESIDDHARTHMRIDUL ORDER

01.06.2012 CM Nn.lQ457/2012

¶1The instant appeal as also connected appeal being FAO(OS) No.81/2010 were disposed of by passing a consent order on May 17. 2012, which order reads as under:- "1. The antagonist is M/s Ran India Steels Pvt. Ltd. The protagonist is M/s Rana Steels.

¶2The battle front was opened when M/s Rana filed a suit alleging infringement of its 'RANA' by bringing to the notice of the Court that M/s Ran India Ltd. was marketing similar products under the trademark 'RANA TOR'.

¶3Both companies are admittedly selling steel rolled products, such as steel reinforcement bars, girders etc.

¶4Applicationseeking interim injunctionpending decision in the suit was considered and decided by the learned Single Judge against M/s Ran India Pvt. Ltd. and it has been held that the FAO(OS)212/2008 trademarkadoptedby M/s Ran India SteelsPvt. Ltd. i.e. 'RANA TOR' was deceptively similar to the trademark used by M/s Rana Steels i.e. the 'RANA'. Injunctiongranted is to restrain M/s Ran India Steels Pvt. Ltd. to sell its products using the trademark 'RANA TOR' or any other mark deceptivelysimilarto the trademark'RANA of M/s Rana Steels. Highlightingthat before the interim injunction applicationwas disposedof on March 25, 2008, M/s Rana Steels had obtained an ex-part ad-interim injunctionon August14, 2007 which had enured till it was confirmed, issue of stock weighing approx. 3000 MT with M/s Ran India Steels Pvt. Ltd. came up for considerationat a subsequentstage, and allegingthat M/s Ran India Steels Pvt. Ltd. had sold the aforesaid stock bearing the trademark 'RANA TOR', it was prayed to the Court that action be taken against the Directors of the company for having violatedthe injunctiongranted.

¶7Another grievance was made. The sanne related to M/s Ran India Steels Pvt. Ltd. selling its products under the trademark 'RANINDIA Since the injunction granted restrained M/s Ran India Steels Pvt. Ltd. to sell its products under the trademark 'RANA TOR' or a mark deceptively similar to the 'RANA', issue was re-debated.

¶9Vide impugned order dated January 14, 2010, challenged in FAO(OS) No.81/2010,finding returned is that the 'RANINDIA' is deceptively similar to the trademark 'RANA'. The consequence is that M/s Ran India Steels Ltd. and its Directors being prima-facieheld to be in violationof the order passed restraining them from selling its products under the trademark 'RANA TOR' or a trademark deceptively similar to the trademark 'RANA'.

¶10During arguments in the two appeals today, a FAO(OS)212/2008 Page2of6 suggestionemanated from the Court with a request to the learned counsel for the parties to settle the dispute pertainingto M/s Ran India Steels Pvt. Ltd. carrying on its business under the trademark 'RANINDIA'. The response is positive.

¶11It is agreed that M/s Ran India Steels Pvt. Ltd. could sell its products under the 'RANINDIA', written as one word without any space between the word 'RAN' and the word 'INDIA'. The word 'RANINDIA'would be written in same font and styling. It is further agreed that in the products sold, the aforesaid trademark would be etched, embossed or printed, as the case may be. But on the publicitymaterial,M/s Ran India Steels Pvt. Ltd. would use the trademark afore-noted in conjunction with a pictorial descriptionof the arm of a human body with muscles, as represented on the RegisteredTrademarkNo.1603837of M/s Ran India Steels Pvt. Ltd.

¶12It is agreed that both parties shall withdraw the respectivecancellation/oppositionpetitionsfiled by them which come into conflictfrom today with the aforesaid settlement between the parties and that M/s Ran India Steels Pvt. Ltd. shall not use the trademark'RANA TOR'.

¶13The appealsstand disposed of in terms of the settlement in so far the dispute relates to the trademark under which Ran India Steels Pvt. Ltd. would carry on business henceforth.

¶14As regards action for contempt, noting that the learned SingleJudge has prima-faciefound M/s Ran India Steels Pvt. Ltd. to be in contempt with reference to it selling its products using the trademark 'RANINDIA',said finding is nullified with consent of learned counsel.

¶15However, the dispute: Whether M/s Ran India Steels Pvt. Ltd. liquidated the stock weighing approx 3000 MT with the trademark'RANA TOR', evidence would be needed to determine whether M/s Ran India Steels Pvt. Ltd. re-rolledthe existing stock and thereafter sold the same, as claimed by FAO(OS)212/2008 ^ ® it and not under the trademark 'RANA TOR', but under the trademark 'RANINDIA', would require evidence to be led. The sanne would be led in the suit and the matter would be considered by the learned Single Judge. Aoplication seeking contempt action against M/s Ran India Steels Pvt. Ltd. i.e. I.A.No.13619/2008 shall be re-decidedon the limitedIssue hereinaboye settled for disposal and we direct that the said application stands restored. The parties are permittedto file such documentson which they rely for purposesof adjudicationof I.A.No.13619/2008.

¶18It is clarified that the consent aforesaid encompassesthat M/s Ran India Steels Pvt. Ltd. would have no objectionto M/s Rana Steels selling its products under the trademark'RANA' or 'RANA TOR'.

¶19The appeals stand disposed of.

¶20No costs." It is stated in the applicationthat a perusal of the consent order dated May 17, 2012, would evidence that even the subjectmatterof the suit i.e. CS(OS) No.1459/2007stands resolved, requiring it to be recorded that in terms of the settlement even the suit stand disposed of.

¶3Learned counsel for the respondent/plaintiff states that the settlement between the parties resolves the principal dispute in the suit i.e. the claim for permanentinjunctionto restrainappellantfrom trading undera trademarkwhich would be deceptivelysimilarto the respondent'strademark'RANA', and for which counsel states it may be recorded that to said extent the suit stands disposed of; but would urge that the remainder claim pertaining to rendition of accounts and FAO(OS)212/2008 Page4of6 damagesin relationto 3000 MT stockhas to be litigatedupon. With respectto the stand tal<en by the respondent, paragraphs15 to 18 of the order dated May 17, 2012 would evidencethat there being no consenton the said dispute i.e. whetherthe appellantsold 3000 MT stock underthe offending trademark'RANA TOR', as alleged by the respondent,or after re-rollingthe stock and selling the same under the trademark 'RANINDIA', as alleged by the appellant, the issue being a subject matter of an application initiating contempt action against the appellant under lA No.13619/2008, it was specifically recorded that proceedings in the suit would continue with respect to lA No.13619/2008 and evidence would be led. Learned counsel for the appellantstates that upon a finding being returned in favour of the appellant in lA No.13619/2008,the question of appellant being required to renderany accountswould not arise; but would concedethat if the finding is against the appellant,then whether by way of purging the contempt or by way of recompense to the respondent,the appellantwould be requiredto make good the loss caused to the respondenton account of appellanttrading on its goodwill; and thus counsel urges that the matter pertaining to rendition of accounts would obviously be subsumed in the adjudication of lA No.13619/2008.

¶6Noting the stand taken by the appellant,which is a correct reflection of the legal position, we dispose of CM No.10457/2012 specifically recording that the terms of the settlementrecorded in the order dated May 17, 2012 would requirethe suit to be disposed of in said terms by passing an appropriatedecree and for which the learned SingleJudge is requested to pass a formal order. We clarify that lA FAO(OS)212/2008 Page5of6 No.13619/2008would be adjudicatedon merits in terms of the consent order dated May 17, 2012 and while so doing, the learnedSingleJudge would take note of the stand taken by the appellantand as recordedin paragraph5 above.

¶7No costs. 20' PRADEEP NANDRArOG. J. JUNE 01, 2012 dk FAO(OS)

SIDDHARTH MRIDUL, J. Tre-S -

t- & 19 % IN THE HIGH COURT OF DELHI AT NEW DELHI FAO(OS) 81/2010 RAN INDIA STEELS PVT. LTD. Appellant Represented Singh, Advocate. versus RANA STEELS Respondent Represented Uppal, Sr.Advocate instructed by Ivir.S.K.Bansal, Mr.Pankaj Kumar and Mr.Vikas Khera, Advocates. FAO(OS) 212/2008 RAN INDIA STEELS PVT. LTD. Appellant Represented byiMr.Amarjit Singh, Advocate. versus RANA STEELS Respondent Represented Uppal, Sr.Advocate instructed by Mr.S.K.Bansal, Mr.Pankaj Kumar and Mr.Vikas Khera, Advocates. CORAM: HON'BLE MR. JUSTICE PRADEEP NANDRAJOG HON'BLE MR. JUSTICE SIDDHARTH MRIDUL