Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2022 Supreme(Del) 1897

IN THE HIGH COURT OF DELHI AT NEW DELHI
Navin Chawla, J.
Dreams Lingerie Products - Appellant
Versus
Akash Chawdhary - Respondent
CS(Comm) 370 of 2022
Decided On : 21-09-2022

Advocates appeared:
Mr. N. Mahabir, Mr. P.C. Arya & Ms. Nupoor Biswas, Advs., for the Plaintiff; Mr. S.S. Ahluwalia, Mr. Kapil Choudhary, Mr. Hardik Bedi & Mr. Sonu Chaudhary, Advs., for the Defendant

Suppression of material facts is only relevant if it affects the claim, and the court will consider the overall impression of marks and the plaintiff's prior adoption and registration.

Headnote:
SUPPRESSION OF FACTS - TRADE MARK - Code of Civil Procedure, 1908 - Order XXXIX Rule 1 and 2, Section 151 - Trade Marks Act, 1999 - Section 2(1)(zg) - I.A. 8665/2022 & 11026/2022
Fact of the Case:

The plaintiff, a registered proprietor of the mark 'DREAMS LINGERIE', claimed that the defendant adopted a deceptively similar mark 'DREAM COMFORT' for identical goods. The plaintiff alleged mala fide intent and sought an injunction.
Finding of the Court:

The court found no merit in the defendant's application and dismissed it. The ad-interim injunction in favor of the plaintiff was confirmed to last during the pendency of the suit.
Issues: Suppression of facts by the plaintiff, similarity of marks, rights of the defendant's father, and reputation of the plaintiff's mark.
Ratio Decidendi: The court held that suppression of the defendant's father's past association with the plaintiff was not material to the claim. It rejected the defendant's argument on the similarity of marks and emphasized the plaintiff's prior adoption and registration of the mark.
Final Decision: I.A. No. 11026 of 2022 was dismissed, and I.A. No. 8665 of 2022 was allowed, confirming the ad-interim injunction. The court clarified that its observations were prima facie and would not influence the final adjudication of the suit.

JUDGMENT

I.A. 8665/2022 & 11026/2022

1. By this order, this Court shall be disposing of the above two applications; the first filed by the plaintiff, being IA No. 8665 of 2022, under Order XXXIX Rule 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 (in short, 'the CPC'); the second filed by the defendant, being IA No. 11026 of 2022, under Order XXXIX Rule 4 read with Section 151 of the CPC.

FACTUAL BACKGROUND

2. It is the case of the plaintiff that the plaintiff is the registered proprietor of the mark 'DREAMS LINGERIE' which was adopted by it in the year 2003 with respect to the undergarments/lingerie in Class 25. It claims to be selling and marketing its products under the trade mark 'DREAMS' since the year 2006. The details of the registrations and the pending applications for the mark 'DREAMS' or bearing the formative mark 'DREAMS' are given by the plaintiff in paragraph 5 of the plaint, detailed as under:-

3. The plaintiff also gives the figures of turnover with respect to goods sold under the trade mark 'DREAMS' in paragraph 9 of the plaint, reproduced as under:-

YEAR	TURNOVER IN INR
2008	1,97,81,893
2009	2,92,99,416
2010	2,16,80,956.20
2011	6,31,40,295.53
2012	6,13,01,917.21
2013	7,85,83,866.99
2014	10,39,91,776.51
2015	12,34,64,864.69
2016	14,64,21,492.30
2017	16,33,35,761.33
2018	20,09,93,626.36
2019	22,89,82,118.77
2020	24,03,51,970.75
2021	26,41,30,536.44
2022	39,81,64,887.10
TOTAL	214,36,25,379.38

4. The plaintiff claims that the long use of the mark 'DREAMS' by the plaintiff, entitles it to be declared as a 'well-known trade mark' in terms of Section 2(1)(zg) of the Trade Marks Act, 1999 (in short, 'the Act').

5. The plaintiff further claims that the defendant who was the erstwhile distributor of the plaintiff-firm for the territory of Ghaziabad and Western Uttar Pradesh during the period of 2018 to 31.01.2022, has adopted a deceptively similar mark, being 'DREAM COMFORT', for the identical goods. The defendant has also applied for registration of its mark on 10.03.2022 under the application no. 5364877 in Class 25 on a 'proposed to be used' basis.

6. It is further claimed that the father of the defendant, Mr. Ajay Kumar, was employed as a manager with the plaintiff-firm from the year 2006 to December 2021. It is claimed that the defendant, in his capacity of being a distributor of the plaintiff-firm, and his father, being the manager of the plaintiff-firm, had full access to the dealer network, vendors, trade channels, internal business details, product supply chain, price points, product demands, product details et cetera and, therefore, the adoption of a deceptively similar mark is clearly mala fide and intended to draw a connection with the plaintiff and to ride on its reputation.

7. It is asserted by the plaintiff that even the trade dress adopted by the defendant is similar to that of the plaintiff, with the use of the yellow and white colour among other similarities. The plaintiff gives the comparison of their products with those of the defendant as under:-

COMPARISON OF PLAINTIFF'S & DEFENDANT'S PRODUCTS

PLAINTIFF'S PRODUCT	DEFENDANT'S PRODUCT
FRONT PORTION	FRONT PORTION

8. This Court, vide order dated 30.05.2022, had granted an ad-interim injunction in favour of the plaintiff and against the defendant, restraining the defendant from manufacturing, selling or offering for sale of its product under the mark 'DREAM' or another trade mark or logo or device which is identical to or deceptively similar to the plaintiff's trade mark and trade name 'DREAMS'. The defendant has now filed the above referred application under Order XXXIX Rule 4 read with Section 151 of the CPC, seeking vacation of the ad-interim injunction granted vide order of this Court dated 30.05.2022.

SUBMISSIONS ON BEHALF OF THE DEFENDANT

9. It is the case