JUDGMENT

I.A.474/2020

1. This application has been filed by the defendant under Section 8 of the Arbitration and Conciliation Act, 1996 (hereinafter referred to as the `Arbitration Act') praying that the parties to the suit be referred to arbitration. It is the case of the defendant/applicant that there is an Arbitration Agreement in the Partnership Deed dated 08.09.2003 between the parties and the disputes raised by the plaintiff fall within the scope of the said Arbitration Agreement.

CASE OF THE PLAINTIFF

2. The plaintiff has filed the present suit, inter alia, for the following reliefs:

"A. A decree of permanent injunction restraining the Defendant, its business associates, partners, directors, principal officers, family members, servants, agents, dealers, distributors, franchisees and anyone acting for and on their behalf from selling, offer to sell, manufacturing, advertising, promoting or in any other manner using the impugned trade name LIBERTY INTERNATIONAL, Plaintiff's registered trade and the corporate logo [IMG] and/or any other mark identical/deceptively similar to Plaintiff's well-known trademark LIBERTY, LIBERTY variant marks with respect to goods falling within Class 25 and any other cognate and allied goods in any manner, so as to result in infringement of Plaintiff's registered trademark LIBERTY.

B. A decree of permanent injunction restraining the Defendant, its business associates, partners, directors, principal officers, family members, servants, agents, dealers, distributors, franchisees and anyone acting for and on their behalf from selling, offer to sell, manufacturing, advertising, promoting or in any other manner using the impugned trade name LIBERTY INTERNATIONAL, Plaintiff's registered trade and the corporate logo [IMG] and/or any other mark identical/deceptively similar to Plaintiff's well-known trademark LIBERTY, LIBERTY variant marks with respect to goods falling within Class 25 and any other cognate and allied goods in any manner, so as to result in passing off or any act of Unfair Competition including resulting in confusion of any manner whatsoever.

C. For an order of delivery up of all the material bearing the impugned trademark, impugned trade name, impugned logos on packaging, labels, name, cartons, packaging material, name plates, publicity material like pamphlets, fliers, mark LIBERTY mark LIBERTY hoardings, sign boards, stationery, digital material, website, internet, social media etc. for the purpose of destruction/erasure.

D. For an order directing the Defendant to render the accounts to ascertain the quantum of unjust profits gained by Defendant;

E. For an order of damages to the Plaintiff to the tune of Rs.2,00,00,400/- damage caused to the Plaintiff's brand equity, goodwill and reputation may be passed in favour of the Plaintiff and against the Defendant. If this Hon'ble Court directs a rendition of accounts, the Plaintiff undertakes to pay further court fees once the sum is ascertained on the Defendant's rendering true and proper accounts.;"

3. It is the case of the plaintiff that the plaintiff is a partnership firm and is the proprietor of the registered trade mark `LIBERTY', amongst several other trade marks. Mr. Dheeraj Gupta, the Sole Proprietor of the defendant, is a partner of the plaintiff firm, however, he does not have any personal rights in the plaintiff's registered trade mark `LIBERTY' in any manner whatsoever.

4. It is further claimed that Mr. Dheeraj Gupta is the youngest son of Mr. Harish Kumar Gupta, also a partner of the plaintiff firm.

5. It is alleged that the plaintiff has granted an exclusive license vide an Exclusive License Agreement dated 31.03.2003 in favour of `M/s Liberty Shoes Limited' for the use of the mark `LIBERTY' and its many variants. Mr. Dheeraj Gupta is also a shareholder in the said company/exclusive licensee.

6. It is further alleged that Mr. Dheeraj Gupta is a family member of Mr. Adarsh Gupta, the Managing Partner of the plaintiff's firm,