Shri Jaideep Mohan v. M/S. Hub International Industries & Anr

RAJIV SAHAI ENDLAW, J.

APRIL 05, 2018 "av"

* IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 5th April, 2018. + CS(COMM) No.758/2016 JAIDEEP MOHAN .... Plaintiff Through: Mr. R.K. Jain & Mr. Devanshu Jain, Advs. Versus HUB INTERNATIONAL INDUSTRIES & ANR. …...Defendants Through: Mr. Sushant Singh with Mr. Harsh Vardhan, Advs. CORAM: HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW 1. The plaintiff has instituted this suit for permanent injunction restraining the two defendants namely Hub International Industries and NV Distilleries & Breweries Pvt. Ltd. from manufacturing, bottling, selling, offering for sale or otherwise dealing in alcoholic beverages including premium whiskey blended with scotch, gin, rum, vodka, wine and brandy under the trade mark "GOLDSMITH" averring the same to be similar/deceptively similar to the plaintiff"s registered trade mark "BLACKSMITH" and for ancillary reliefs of recovery of damages, destruction, etc. 2. The suit came up first before this Court on 10th June, 2016 when though summons of the suit were ordered to be issued but no ex parte ad interim order sought, granted. The defendants, on service of summons, have filed a joint written statement and to which a replication has been filed by the plaintiff. 3. The suit came up before this Court on 8th November, 2016, for framing of issues and for hearing of the application for interim relief, when after hearing the counsels it was felt that there is no need to frame issues and relegate the parties to trial, because the two words "BLACKSMITH" and "GOLDSMITH" have definite meaning which is understood by most of the population of the country, even those not conversant with english language and thus no case for infringement of trade mark was made out particularly when the counsel for the plaintiff, on enquiry, informed that more than 90% of the sales of the plaintiff are through the Defence Canteen and the Police Canteen sales whereto and wherefrom could definitely be not said to be affected by the commonality of "SMITH" in the two words. It was however proposed, that by way of settlement, the possibility of the defendant changing the shape of its bottle and its packaging / carton, could be explored and for which the counsel for the defendants stated that the defendants may be agreeable with effect from the next date of renewal of the excise licence. On request of the counsel for the plaintiff, the hearing was adjourned to 9th November, 2016 to enable him to obtain instructions. 4. On 9th November, 2016, the counsel for the plaintiff stated that he had instructions to argue on merits and no settlement was possible. The counsels were heard further, not only on the application for interim relief but also on the need if any for framing of issues and on the aspect of disposal of suit under Order XIIIA of CPC, the suit being a commercial suit, and orders reserved. 5. The necessary pleadings in the aforesaid context may be noticed. 6. It is the case of the plaintiff in the plaint, (i) that the plaintiff, carrying on business as sole proprietor in the name and style of M/s Mayfair Enterprises, of manufacturing and marketing of alcoholic beverages, in the year 2011, coined and adopted "an arbitrary and distinctive trade mark" "BLACKSMITH" in respect of alcoholic beverages and on 24th October, 2011 obtained registration thereof in Class 33 of Schedule IV of the Trade Marks Act, 1999; (ii) that the plaintiff, from an advertisement published in the Trade Marks Journal on 23rd November, 2015, learnt of the defendant no. 1 having applied for registration of trade mark "GOLDSMITH" in Class 33 of Schedule IV of the Trade Marks Act and claiming user thereof since 1st January, 2014; (iii) that the trade mark "GOLDSMITH" is deceptively/confusingly similar to the registered trade mark "BLACKSMITH" of the plaintiff, particularly when both are in respect of the same class of goods; (iv) that the plaintiff has opposed registration of the mark of the defendant no.1; enquiries of the plaintiff revealed that the defend