Back
2023 Supreme(Del) 4078
IN THE HIGH COURT OF DELHI AT NEW DELHI
Jyoti Singh, J.
Dolphin Mart Private Limited – Appellant
Versus
Avenue Supermarts Limited & Anr. – Respondents
CS(COMM) 177 of 2017
Decided On : 21-08-2023
Subject
Intellectual Property - Trademark Law
Headnote
(B) Trademark Infringement - Factors for establishing infringement include likelihood of confusion and similarity of marks - Anti-dissection rule established to maintain fairness in trademark comparisons - Plaintiff's generic use of the word 'mart' found insufficient to claim exclusivity. (Paras 33, 34)
(C) Passing off - Elements of passing off reiterated based on misrepresentation and confusion - Plaintiff's inaction despite knowledge over years diminished claim of passing off. (Paras 40, 44)
Ms. Anuradha Salhotra, Mr. Sumit Wadhwa, Ms. Sharika Vijh and Mr. Siddhant Shrivastava, Advocates, for the Plaintiff.
Mr. J. Sai Deepak, Advocate with Mr. Guruswamy Nataraj, Mr. Avinash Kumar Sharma, Mr. Pranav Krishna and Mr. Ankur Vyas, Advocates, for the Defendants.
| Table of Content |
|---|
| 1. submission of additional documents in court (Para 1 , 2 , 3 , 4 , 5) |
| 2. background and brand establishment of plaintiff (Para 7 , 8 , 9 , 10 , 11 , 12 , 13) |
| 3. plaintiff's claimed rights and defendant's contest (Para 14 , 15 , 17 , 18 , 19 , 20) |
| 4. issues of delay, knowledge and prosecution estoppel (Para 21 , 22 , 23 , 24 , 25 , 26 , 27) |
| 5. analysis of trademark registrations and validity (Para 28 , 29 , 30 , 31 , 32 , 33) |
| 6. comparison of plaintiff's and defendant's trademarks (Para 34 , 35 , 36 , 37 , 38 , 39 , 40 , 41) |
| 7. standards for determining passing off vs. infringement (Para 42 , 43 , 44 , 45 , 46) |
| 8. court's conclusion on injunction application (Para 47 , 48 , 49) |
| 9. final decision and dismissal of the application (Para 50 , 51) |
JUDGMENT
Jyoti Singh, J.
I.A. 7668/2022 (under Order XI Rule 1(10) CPC, by Defendants)
1. This is an application preferred on behalf of the Defendants for filing additional documents. The documents sought to be brought on record are as follows:
| Sr. No. | Particulars | Date of existence |
| 1 | Annual Report for Financial Year 2020-21 | 2021 |
| 2 | Trademark registration bearing no. 899370 in Class 14 | September 18, 2018 |
| 3 | Trademark registration bearing no. 900816 in Class 21 | March 22, 2018 |
| 5 | Trademark registration bearing no. 2922592 in Class 25 | October 02, 2020 |
2. It is argued by learned counsel for the Defendants that these documents are relevant for the adjudication of this case and are in aid of the averments made in the written statement. Documents at Serial No.2, 3 and 5 are referred to in paragraph 20 of the written statement when the trademark applications were pending for registration. Post the filing of the written statement, it is urged that the three applications have resulted in registrations and therefore the registration certificates can be brought on record as per the settled law. Document at Serial No.1 is the Annual Report for Financial Year 2021 which would reflect the turnover of Defendant No.1 post the filing of the written statement. There is no impediment in permitting these documents to be brought on record since the provision of Order XI Rule 1(10) CPC is only applicable when documents sought to be brought on record were in power, possession, control or custody of the Defendant at the time of filing the written statement and were not filed.
3. Learned counsel for the Plaintiff had vehemently contested the application. Defendants have not made any reference to these documents in the written statement and have only mentioned Trademark Application Nos. filed in Classes 14, 21 and 25 as pending. Moreover, these registrations are prima facie invalid in view of Section 11 of the Trade Marks Act, 1999 (hereinafter referred to as the `1999 Act') and Plaintiff reserves its right to initiate rectification proceedings. The registration in Class 25 has been revoked by order dated 21.03.2022 passed by this Court in W.P.(C)-IPD 4/2022 and Plaintiff has filed an opposition. Insofar as Document No.1 is concerned, the same cannot be permitted as the Annual Report is for the period 2020-21 i.e. post the filing of the suit and rights of parties crystallized on the date of institution of the suit.
4. Having heard the learned counsels for the parties, this Court is of the view that the application deserves to be allowed. Documents at Serial Nos.2, 3 and 5 are Trademark Registration Certificates in Classes 14, 21 and 25. Albeit it is true that specifically no reference of the three TM Applications is given in the written statement, however, it is averred that Defendants have applied for registrations of their trademarks and 20 applications are pending. Since the Registration Certificates apparently were issued post the filing of the written statement, they were not in power, possession, control and custody of the Defendants when the written statement was filed. Even otherwise, these documents are in the public domain being accessible on ipindiaservices.gov.in and there is no impediment in taking them on reco
