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2019 Supreme(Del) 1979
IN THE HIGH COURT OF THE DELHI
Manmohan, J.
Su-Kam Power Systems Ltd - Appellant
Vs.
Kunwer Sachdev And Another - Respondents
Civil Suit (Comm) No. 1155 of 2018; Interlocutory Application No. 13597 of 2018, 14309 of 2018
Decided On : 30-10-2019
Important Points
Subject
Intellectual Property - Trademark Law
Act Referred
CIVIL PROCEDURE CODE: O.6 R.17, R.24.2, O.13(a) R.3, O.12 R.6
CIVIL PROCEDURE RULES: R.24
COMPANIES ACT: S.166, S.300, S.287
CONTRACT ACT: S.19
EVIDENCE ACT: S.115
LIMITATION ACT: Art.58, Art.120(b)
SPECIFIC RELIEF ACT: S.31, S.34
TRADE MARKS ACT: Cl.9, S.45
Headnote
(B) Summary Judgment - The court ruled that a trial is not necessary where sufficient evidence shows that the defendant has no real prospect of success in contesting the plaintiff’s claims, aligning with the objectives of the Commercial Courts Act, 2015 for expedient resolution of commercial disputes. (Paras 40-44)
Facts of the case:
The plaintiff company filed a suit for declaration, claiming it was the exclusive owner of the Su-Kam Marks in Class 9 since 1998, against defendant’s inconsistent claims indicating ownership based on various agreements and representations.
Findings of Court:
The plaintiff was held to be the exclusive registered proprietor of the trademark SU-KAM and the defendant's claims were dismissed due to their breaches, representations, and the invalidity of the Deed of Assignment executed without proper authorization.
Issues: The primary issues addressed included ownership claims of the Su-Kam trademark, validity of the Deed of Assignment, and alleged fraud.
Ratio Decidendi: The court ruled that ownership of trademarks must be determined based on prior admissions and representations favoring the plaintiff, applying the principle of estoppel against the defendant’s contradictory claims.
Result: The suit was decreed in favor of the plaintiff, confirming their ownership of the trademark.
Amit Sibal, Adv., Anuj Berry, Adv., Abhey J V, Adv., Saksham Dhingra, Adv., Vinay Tripathi, Adv., Malak Bhatt, Adv., Apoorva Murali, Adv., Surabhi Bhandari, Adv., Rajeev Virmani, Adv., Ajay Bhargava, Adv., Ankur Sangal, Adv., Sucheta Roy, Adv., Richa Bhargava, Adv., Saugaat Khurana, Adv., Niharika, Adv.
| Table of Content |
|---|
| 1. application for summary judgment filed. (Para 1 , 2) |
| 2. arguments for plaintiff supported by admissions. (Para 3 , 4 , 5 , 6 , 7 , 8 , 9 , 10 , 11 , 12) |
| 3. defendant's counterarguments emphasize evidence and fraud. (Para 13 , 14 , 15 , 16 , 17 , 18 , 19 , 20 , 21) |
| 4. discussion on the standards for summary judgment. (Para 22 , 23 , 24 , 25 , 26 , 27) |
| 5. plaintiff's position and previous suits addressed. (Para 28 , 29 , 30 , 31 , 32 , 33) |
| 6. court emphasizes pledge for fair resolution in commercial cases. (Para 34 , 35 , 36 , 37 , 38 , 39 , 40) |
| 7. summary judgment properly applies to disputes lacking efficacy. (Para 41 , 42 , 43 , 44 , 45 , 46) |
| 8. court identifies necessity for factual resolution. (Para 47 , 48 , 49 , 50 , 51 , 52 , 53) |
| 9. plaintiff’s rightful ownership established. (Para 54 , 55 , 56 , 57 , 58 , 59) |
| 10. deed of assignment deemed void. (Para 60 , 61 , 62 , 63 , 64 , 65 , 66 , 67) |
| 11. estoppel principle applies, blocking defendant's claims. (Para 68 , 69 , 70 , 71 , 72 , 73) |
| 12. defendant's delayed assertions affect limitation. (Para 74 , 75 , 76 , 77 , 78 , 79 , 80) |
| 13. court emphasizes relative timelines for rights to sue. (Para 81 , 82 , 83) |
| 14. suit upheld in favor of plaintiff and order issued. (Para 90 , 91 , 92 , 93 , 94 , 95 , 96 , 97 , 98 , 99 , 100 , 101) |
JUDGMENT :
Manmohan, J.
I.A. 1411/2019
1. Present application has been filed by the plaintiff company through its resolution professional, under Order XIIIA of the Code of Civil Procedure, 1908, for summary judgment against the defendants. It is pertinent to mention that the present suit has been filed for declaration, permanent injunction, damages and incidental relief’s.
2. During the pendency of the suit, a Liquidator had been appointed who has adopted the pleadings, averments and arguments advanced by the resolution professional.
ARGUMENTS ON BEHALF OF PLAINTIFF
3. Mr. Amit Sibal, learned senior counsel for the plaintiff stated that the present suit was liable to be decreed summarily as the defendant no. 1 had no real prospect of defending its claim and the defendant no. 1's defence was an abuse of the process of law.
4. Learned senior counsel for the plaintiff submitted that the defendant No.1 had made numerous admissions that the plaintiff was the rightful owner, proprietor and user of the Su-Kam Marks in respect of goods covered under Class 9 of the Trade Marks Act, 1999 and such admissions supersede any and all issues, including those disputed by the defendants. He pointed out the following instances wherein the defendant No.1 had represented the plaintiff to be the owner of the SuKam Marks:-
a. The plaintiff had secured registrations for the Su-Kam Marks in Class 9 and had been continuously and extensively using them since 1998, without any objection from defendant No.1.
b. The defendant No.1 had represented to the public/independent third parties that the plaintiff was the owner of the Su-Kam Marks in Class 9 of the Trade Marks Act, 1999. The defendant No.1 while entering into a Share Purchase-cum-Share Subscription Agreement with Reliance India Power Fund on 31st March, 2006, had identified the plaintiff as the registered owner of the Su-Kam Marks.
c. A suit was filed in 2015 for infringement of the Su-Kam marks by the plaintiff, claiming itself to be the owner of the mark, when the defendant No.1 was the Managing Director of the plaintiff company and held more than eighty per cent of its shares; therefore, the suit had been filed under the aegis of defendant No.1.
d. The defendant No.1 had relied upon a brand valuation report dated 03rd March, 2015 undertaken by Ernst & Young wherein the plaintiff had been identified as the owner of the Su-Kam Marks, when he submitted his bid for the plaintiff company during the ongoing insolvency proceedings.
