JUDGMENT :

[Amit Bansal, J.]

I.A. 12642/2022 (O-XXXIX R-1 & 2 of CPC)

1. By way of the present judgment, I shall decide the application filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC).

2. Submissions on behalf of the counsels were heard on 7th December, 2022, 13th December, 2022 and 6th January, 2023, when judgment was reserved and liberty was given to both parties to file written submissions within one week. Pursuant thereto, written submissions have been filed on behalf of the parties.

3. Briefly, the case set up by the plaintiff in the plaint is as follows:

3.1. The plaintiff company is in the business of processing, marketing and exporting rice of various kinds and is a market leader in the aforesaid business in India.

3.2. In 2019, the plaintiff acquired rights in the trademark ‘INDIA GATE’ (word per se) from one, Mr. Ram Pratap vide Deed of Assignment dated 6th August, 2019 and hence, the trademark ‘INDIA GATE’ (word per se) was subsequently registered in favour of the plaintiff vide registration certificate dated 12th August, 2019, effective from 18th June, 1993.

3.3. The plaintiff has filed various other trademark applications in respect of ‘INDIA GATE’ label/device/word marks in various classes which have been opposed.

3.4. The plaintiff has been granted copyright registration for ‘INDIA GATE’ labels,in India as well as abroad. The abovesaid labels/artistic works of the plaintiff bear original artistic features of placement, distinctive getup, makeup, lettering style etc.

3.5. The plaintiff has given sales figures in respect of export as well as domestic sales of the plaintiff’s rice sold under the trademark ‘INDIA GATE’ w.e.f. 1993-94. Plaintiff has placed on record various invoices showing sales of its products under the trademark ‘INDIA GATE’ with effect from 18th February, 1995

3.6. Plaintiff has also given details in respect of advertisement and promotional expenses in respect of plaintiffs’ trademark ‘INDIA GATE’ with effect from 2004-05.

3.7. On account of its impressive sales figures, it is claimed that the plaintiff’s trademark has become distinctive and acquired secondary significance with the goods and business of the plaintiff.

3.8. The trademark ‘INDIA GATE’ has been declared as a ‘well-known trademark’ under Section 2(1)(zg) of the Trade Marks Act, 1999 by the Registrar of Trade Marks vide publication dated 19th August, 2019.

3.9. The defendant is engaged in the business of processing, marketing and selling of ‘atta’, ‘suji’, ‘maida’, ‘rawa’ and ‘bran’ under the trademark ‘INDIA GATE’, with the device of INDIA GATE.

3.10. Plaintiff filed a suit, bearing CS no.131/2011 against the defendant wherein an ex parte injunction order was granted on 16th June, 2011 in favour of the plaintiff and against the defendant restraining the defendant from using the trademark ‘INDIA GATE’ along with the device of INDIA GATE. The said injunction order was confirmed vide order dated 24th October, 2011. The said suit has been re-numbered and is pending adjudication.

3.11. An appeal, bearing FAO no.7/2012 was filed by the plaintiff before this Court and a common order dated 21st April, 2014 was passed by this Court in the said appeal as well as appeals/revisions filed on behalf of the defendant.

3.12. In July, 2011, the defendant filed a suit, being CS no. 1777/2011 against the plaintiff before this Court alleging infringement of their trademark/label/‘INDIA GATE’ registered in class 30. The said suit was re-numbered and is pending adjudication before this Court and no interim order has been passed therein.

3.13. A cancellation petition has been filed by the plaintiff against the aforesaid registered trademark/label of the defendant, / ‘INDIA GATE’, which is pending adjudication. The defendant has given an undertaking that the defendant would not rely upon the said registration against the plaintiff.

3.14. In the first week of May, 2022, the plaintiff came to know abou