Point of Law: Infringement of trade mark and passing off - Permanent injunction - Appellants/defendants are bound down to their statement, till disposal of suit before Commercial Court. Readiness with which appellants/defendants accepted said proposal also reflects on lack of any mala fides on part of appellants/defendants or of any intent to pass off their Class 12 goods as those of respondent/plaintiff.

JUDGMENT :

RAJIV SAHAI ENDLAW, J.

1. This appeal, under Section 13(1A) of the Commercial Courts Act, 2015 read with Order XLIII Rule 1(r) of the Code of Civil Procedure, 1908 (CPC), impugns the order dated 25th September, 2020 of the Commercial Court-01, South District, New Delhi, allowing the application under Order XXXIX Rules 1 and 2 of the CPC of the respondent/plaintiff Black Diamond Motors Private Limited, in CS (COMM) No. 184/2020 filed against the appellants/defendants (i) Black Diamond Track Parts Pvt. Ltd. (ii) Black Diamond Equipments Pvt. Ltd. (iii) Raminder Singh Bhatia, (iv) Simardeep Singh Bhatia, (v) Parvinder Singh Bhatia, (vi) Charanpal Singh Bhatia, (vii) Satbir Singh Bhatia and (viii) Soumita Mitra wife of Simardeep Singh Bhatia, for permanent injunction to restrain infringement of trade mark and passing off and for ancillary reliefs.

2. The appeal came up first before us on 17th February, 2021 and thereafter on 1st March, 2021, when the counsel for the respondent/plaintiff appeared on advance notice. Finding, (a) that the respondent/plaintiff, for the same reliefs as claimed in the suit from which this appeal arises, had earlier invoked the territorial jurisdiction of the Courts at Bilaspur, Chhattisgarh; (b) that the said Court had declined interim relief to the respondent/plaintiff; (c) that the appeal of the respondent/plaintiff to the High Court of Chhattisgarh had also stood dismissed; (d) that the respondent/plaintiff thereafter withdrew that suit with liberty to file again; (e) that it was thereafter that the suit, from which this appeal arises, was instituted at Delhi; (f) that the respondent/plaintiff, in Delhi had succeeded in getting the interim relief which was declined to it by the Court at Bilaspur as well by the High Court of Chhattisgarh and (g) that the impugned order had not given due weightage to the said facts, while posting the appeal for hearing on 8th April, 2021, the impugned order was directed to remain in abeyance and it was clarified that there was no restraint on the appellants/defendants from using the mark which they, by the impugned interim order, had been restrained from using.

3. On 8th April, 2021, the hearing was adjourned to 13th May, 2021. The counsels were heard on 13th May, 2021 and 19th May, 2021 and order/judgment reserved.

4. The suit, from which this appeal arises, was filed by the respondent/plaintiff, inter-alia pleading (i) that the respondent/plaintiff, since the year 2005, was carrying on business of manufacture and sale of Trippers, Tip-Trailers, Flat Bed Trailers, Ash Handling Bulkers and Tailor made Carriers (hereinafter, for the sake of convenience, called “subject goods”) (ii) that the trade mark BLACK DIAMOND was being used by the family of the Directors of the respondent/plaintiff, since the year 1983, in relation to a number of businesses inter-alia of manufacture and sale of mining machineries and spare parts and the respondent/plaintiff also adopted the mark BLACK DIAMOND for its business; (iii) that BLACK DIAMOND is the most essential feature of the trade mark/label of the respondent/plaintiff; (iv) that under an oral family settlement between the members of the family of the Directors of the respondent/plaintiff, the right to use the trade mark BLACK DIAMOND in relation to the subject goods came to the respondent/plaintiff; (v) that immediately prior to the oral family settlement of 31st March, 2014, the family was carrying on businesses of: (a) Mining Machinery and Spares, in the names of Black Diamond Equipments Pvt. Ltd. (appellant/defendant No. 2), Black Diamond Track Parts Pvt. Ltd. (appellant/defendant No. 1) and Pawan Industries, (b) Hotels, in the name of Blue Diamond Associates, (c) subject goods, in the name of Black Diamond Motors Pvt. Ltd. (respondent/plaintiff), and of (d) Civil Construction, in the names of S.S. Developers and P.S. Associates, (vi) that in accordance with the family settlement, (a) the business of manufacture of subject g