$~21 * IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(COMM) 707/2023 NILKAMAL CRATES AND CONTANERS & ANR.

..... Plaintiffs Through: Ms. Anju Agrawal, Dr. Mohan Dewan, Mr. Rahul Maratha, Mr. D. Pawar, Mr. B. Ghosh, Mr. Vardhman Jain and Mr.

M.K. Bhargava, Advs.

versus MS. REENA RAJPAL & ANR. ..... Defendants Through: Mr. Satish Kumar, Mr. Sreejan Pankaj and Mr. Anil Kumar Sahu, Advs.

CORAM:

HON'BLE MR. JUSTICE C. HARI SHANKAR J U D G M E N T (O R A L)

% 06.11.2023 I.A. 19600/2023 (under Order XXXIX Rules 1 and 2 of the CPC)

1. Plaintiff 1 is the proprietor of various trademarks, registered under the Trade Marks Act, 1999, of which, for the purposes of the dispute at hand, one need only refer to the word mark NILKAMAL, registered w.e.f. 22 January 1999 and the device marks registered w.e.f. 6 December 2010 and registered w.e.f. 9 May 1996. Vide License Agreement dated 1 September 1998 Plaintiff 1 authorised Plaintiff 2 to manufacture, package, supply and render services of goods as mentioned in Schedule 1 of the license Signature Not VeriCfieSd(COMM) 707/2023 Page 1 of 13 Digitally Signed agreement. Plaintiff 2 is thus the licensee of Plaintiff 1 and is continuously using the trademark NILKAMAL.

2. The plaintiffs are using the aforesaid marks for, among other things, plastic moulded chairs. The plaintiffs claim user of the marks since 1999.

3. The plaintiffs are aggrieved by the use, by the defendants, of the mark NILKRANTI and the logo . The defendants, too, admittedly, uses the impugned marks for plastic moulded chairs.

4. Consequent to issuance of notice in this application, a reply has been filed by Mr. Satish Kumar.

5. I have heard Ms. Anju Agrawal and Mr. Satish Kumar at some length on this application.

6. To a query from the court as to how NILKAMAL and NILKRANTI could be treated as phonetically similar, Ms. Aggarwal emphasises the common prefix “NIL”. She submits that the defendants have clearly acted malafide, as is apparent from the deceptive similarity between the logo that they have adopted and the pre-existing logo of the plaintiffs.

7. Where the defendants are thus making a conscious attempt to Signature Not VeriCfieSd(COMM) 707/2023 Page 2 of 13 Digitally Signed copy the plaintiffs, she submits that an absolute inunction ought to be issued against the defendants using the mark NILKRANTI, whether as a word mark or as a logo. She submits that it would be perfectly open to the defendants to use “KRANTI” with any other prefix other than “NIL” and that, by employing the “NIL” prefix, seen in conjunction with the similarity between the logo that the defendants have chosen to adopt vis-à-vis the plaintiffs’ logo, the defendants’ intention to come as close to the plaintiffs as possible is evident. Without expressly citing it, Ms. Agrawal is, thereby, invoking the principle laid down by lord Justice Lindley in Slazenger & Sons v. Feltham & Co.1:

"One must exercise one's common sense, and, if you are driven to the conclusion that what is intended to be done is to deceive if possible, I do not think it is stretching the imagination very much to credit the man with occasional success or possible success. Why should we be astute to say that he cannot succeed in doing that which he is straining every nerve to do?"

8. Ms. Agrawal has also placed reliance on the judgment of the Hon’ble Supreme Court in Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd2, specifically citing para 16 of the said decision, which reads thus:

“16. Dealing once again with medicinal products, this Court in F. Hoffmann-La Roche & Co. Ltd. Vs. Geoffrey Manner & Co. Pvt. Ltd3, had to consider whether the words Protovit belonging to the appellant was similar to the word Dropovit of the respondent. This Court, while deciding the test to be applied, observed at page

720 as follows: 1 (1889) 6 RPC 531 2 (2001) 5 SCC 73 3 1969(2) SCC 716 Signature Not VeriCfieSd(COMM) 707/2023 Page 3 of 13 Digitally Signed “The test for comparison of the two word marks were formulated by Lord P