Filex Systems Pvt Ltd v. Deepika File Products

RAJIV SAHAI ENDLAW, J. MARCH 12, 2019 "bs/M".. (corrected & released on 7th May, 2019)

* IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 12th March, 2019. + CS(COMM) 696/2016 & IAs No.7189/2016 (u/O XXXIX R-1&2 CPC) & 10624/2016 (of defendant u/O XIII-A CPC) FILEX SYSTEMS PVT. LTD. .... Plaintiff Through: Mr. M.L. Mangla and Mr. Manish Singhal, Advs. Versus DEEPIKA FILE PRODUCTS …...Defendant Through: Ms. Haripriya Padmanabhan, Ms. Runamoni Bhuyan and Ms. Aishwarya Kane, Advs. CORAM: HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW 1. The plaintiff has instituted this suit for permanent injunction restraining passing off by defendant by violating the trade mark "FILEX" in respect of stationery including files, file covers, folders, diaries, note pads, office requisites of the plaintiff and for ancillary reliefs. 2. The suit along with the application for interim relief came up before this Court first on 1st June, 2016, when though the suit was entertained and summons thereof ordered to be issued but ex-parte injunction sought not granted. 3. Pleadings have been completed, with the defendant also having been permitted to amend its written statement. 4. The defendant, prior to the framing of issues has filed IA No.10624/2016 under Order XIII-A of the Code of Civil Procedure, 1908 (CPC) for summary judgment and pleadings wherein have also been completed. The counsels have been heard. 5. It is the case of the plaintiff, (i) that the plaintiff is engaged in the business of manufacturing and selling office files, office stationery, paper and paper products, printed publications, cleansing wipes, cleaning preparations etc. as well as of providing services relating to marketing of the said goods; (ii) that the trade mark "FILEX" forms the primary, essential, distinctive and material part of the plaintiff"s trade name / trading style / corporate name "FILEX Systems Private Limited" since the incorporation of the plaintiff in the year 1996; (iii) that the plaintiff adopted the trade mark "FILEX" in respect of its goods / business in the year 1996 and started using the same in an extensive scale on an exclusive basis throughout India; (iv) that "FILEX" is also the house mark of the plaintiff which appears prominently and distinctively on each and every product packings, advertisements, catalogues, sales promotional products, public communications as well as on the products itself and the goods of the plaintiff are referred to as emanating from "FILEX"; (v) that the plaintiff has a colossal portfolio of differentiated trade marks including well-known trade mark "SOLO" in respect of the said goods which are being used by the plaintiff in the course of its trade since the year 1996 along with and/or under the house mark "FILEX"; (vi) that the trade name / house mark / trade mark / trade dress "FILEX" in respect of the aforesaid goods / business,by virtue of extensive use for more than 19 years, has become distinctive; (vii) that the sales of the plaintiff of the goods under the mark "FILEX" have grown from Rs.142.26 lacs in the year 1997-1998 to Rs.1601.79 lacs in the year 2015-2016; similarly, advertising expenses of the plaintiff have gone up from Rs.11.33 lacs in the year 1997-1998 to Rs.49.29 lacs in the year 2015-2016; (viii) that the goods of the plaintiff are identified and associated with the mark "FILEX"; (ix) that in November, 2015, the plaintiff learnt that the defendant had introduced its stationery items including files, file covers, diaries, note pads, office requisites and other similar goods in the market under an identical / violating trade mark "FILEX"; (x) that the defendant failed to stop use of the said mark inspite of a cease and desist notice dated 28th November, 2015 and also did not respond thereto; and, (xi) that use by the defendant of the mark "FILEX" of the plaintiff in respect of identical goods amounts to the defendant"s passing off its goods as that of the plaintiff. 6. The plaintiff, along with the plaint filed pictorial representations of the spine of its file covers as under: and photocopi