Mehracosmetics v. Sh Ram Kumar Gulati

RAJIV SAHAI ENDLAW, J NOVEMBER 01, 2019 "ak" (corrected & released on 13th November, 2019)

* IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 1st November, 2019. + CS(COMM) 699/2018, IA No.3814/2017(u/O.XXXIX R-2A CPC) & IA No.5770/2019(u/O.III R-4(2) CPC) MEHRA COSMETICS ..... Plaintiff Through: Mr. Mohan Vidhani with Mr. Rahul Vidhani, Mr. Ashish Singh, Ms. Elisha Kumar & Mr. Saurabh Kumar, Advs. Versus RAM KUMAR GULATI & ORS. ..... Defendants Through: Mr. Saurav Rajan Chauhan with Mr. Akshay Srivastava & Ms. Pratibha, Advs. along with D-1&2. CORAM: HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW 1. The plaintiff instituted the suit against the four defendants, namely (a) Ram Kumar Gulati; (b) Raj Kumar Gulati; (c) D.K.Cosmetics; and, (d) G.M. Plastics, for permanent injunction restraining the defendants from (a) infringing the trade mark BLUE CLIFF of the plaintiff by adopting the mark BLUE CHEF with respect to the same goods; (b) passing off their goods as that of the plaintiff under the mark BLUE CHIEF, by use of the mark BLUE CHEF; (c) infringement of registered design 266053 of the plaintiff and for ancillary reliefs. 2. The suit, initially filed in the District Court, was transferred to this Court on the defendants written statement challenging the validity of the registered design claimed by the plaintiff. 3. Vide order dated 6th December, 2016 on the application of the plaintiff for interim relief, the defendants, during the pendency of the suit, were restrained from using the word CHEF in conjunction with the word BLUE in respect of White Petroleum Jelly or any other cosmetics or any other mark deceptively similar to the mark CHIEF of the plaintiff. FAO(OS) 71/2017 preferred by the defendants no. 1 to 3 against the said interim order as well as the cross-objections filed by the plaintiff therein against the part of the order dated 6th December, 2016 declining interim order with respect to design, were dismissed vide judgment dated 17th September, 2018. 4. The suit came up before this Court on 23rd September, 2019 for framing of issues when finding that there was no factual controversy, the suit was posted for today and the personal presence of the defendants no. 1 and 2 directed. 5. The counsel for all the four defendants states that the defendants no. 1 and 2 are present in the Court and on further enquiry states that the defendants have now adopted the mark BLUE PALAK and have been using the same for the last five years. It is also stated that though the plaintiff is using the mark BLUE CHIEF but it is the claim of the defendants that the documents filed by the plaintiff to show use of BLUE CHIEF are forged and fabricated. 6. On enquiry, from which date, according to the defendants, the plaintiffs are using the mark BLUE CHIEF, the counsel for the defendants states that the defendants do not know. It is also contended that the defendants are not controverting the mark BLUE CLIFF of the plaintiff. 7. This suit, though of the year 2016, is now being treated as a commercial suit and has been given the nomenclature and number of a commercial suit and is governed by the provisions thereof. Finding to the effect that BLUE CHEF earlier being used by the defendants amounts to infringement and/or passing off of the trade marks BLUE CLIFF and BLUE CHIEF, has already been given for the reasons detailed in the judgment of 6th December, 2016 upheld by the Division Bench. 8. Once it is so, when the defendants even today are not able to say that they are the prior user of the mark BLUE CHEF qua which they have been injuncted, merely for the sake of adjudication of the plea of the defendants of fabrication by the plaintiff, the said pleas are not required to be put to trial. Even if the plaintiff is found to have forged the documents of use, as long as it is not the plea of the defendants that the defendant is the prior user of the mark BLUE CHEF, the plaintiff would be entitled to permanent injunction in terms of the interim order. 9. The counsel for the defendants contends that the findings in the interim order are