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2024 Supreme(Online)(DEL) 32831
HIGH COURT OF DELHI
Amit Bansal, J
EVERGREEN SWEET HOUSE – Appellant
Versus
JV EVERGREEN SWEETS AND TREATS & ORS. – Respondent
CS(COMM)-430/2024
Mr. Sidhant Kumar, Mr. Rakshit Dhingra, Ms. Manyaa Chandok, Mr. Om Batra, Mr. Ashutosh Lohia, Ms. Shraddha Bhargava, Mr. Rohit Saraswat, Ms. Sharan Mehta, Ms. Rishika Jain, Ms. Princey Sharma, Mr. Abhay Pratap Singh, Ms. Mitali U., Mr. Varun Pathak
Prior user of a trademark has superior rights over subsequent users, and likelihood of confusion among consumers can establish a case of passing off.
Headnote:(A) Trade Marks Act, 1999 - Sections 27(2) and relevant case law - Permanent injunction sought for trademark infringement and passing off - Plaintiff, a registered partnership since 1963, established prior use and goodwill in the mark 'Evergreen', while defendant adopted it in 2021 - Likelihood of confusion noted due to similar business and product offerings - Court found prima facie case of passing off in favor of plaintiff. (Paras 11, 12, 35, 37)
Facts of the case:
The plaintiff, operating under the name 'Evergreen', has been in business since 1963 and holds a valid trademark registration since 1998. The defendant began using 'JV Evergreen Sweets & Treats' in 2021, leading to confusion among customers. The plaintiff claims substantial goodwill and reputation in the market.
Findings of Court:
The plaintiff established a prima facie case of passing off, and the balance of convenience favored the plaintiff due to its long-standing presence in the market.
Issues: The main issues addressed were the likelihood of confusion due to the similarity of the marks and the prior user rights of the plaintiff over the defendant.
Ratio Decidendi: The court ruled that the prior user of a trademark has superior rights over subsequent users, and the likelihood of confusion among consumers due to similar marks was significant.
Result: The defendant is restrained from using 'JV Evergreen Sweets & Treats' or any similar mark until the final adjudication of the suit.
JUDGMENT
AMIT BANSAL, J. I.A. 32723/2024 (Under Order XXXIX Rules 1 & 2 CPC)
1. By way of the present Judgment, I shall decide the captioned application filed on behalf of the plaintiff under Order 39 Rule 1 and 2 of the Civil Procedural Code, 1908 (CPC).
2. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the trademarks of the plaintiff and passing off their business as that of the plaintiff and other ancillary reliefs.
3. Summons in the suit were issued on 22 nd May, 2024 and notice in the present application was issued on 10 th July, 2024. However, no ad interim injunction order was passed in favour of the plaintiff. Thereafter the matter was listed on various dates and pleadings have been completed in the suit as well as the present application. The application was heard on 22 nd October, 2024 and 13 th December, 2024, when the judgment was reserved.
CASE SET UP IN THE PLAINT
4. Briefly stated, the case set up in the plaint is as follows:-
4.1 The plaintiff is a registered partnership firm engaged in the business of preparing and selling Indian sweets and namkeens since 30 th September, 1963. The shop of the plaintiff is located in Green Park, New Delhi.
4.2 The mark “Evergreen” was adopted by the plaintiff in the year 1963 and the plaintiff has been using the same ever since in connection with its business, i.e., the sale of Indian sweets and namkeens.
4.3 The plaintiff has given its revenues from the year 2019 to 2023 in paragraph 20 of the plaint. In the year 2023, the revenues of the plaintiff were to the tune of ₹ 38 crores.
4.4 The plaintiff also has a registered domain name, http://www.evergreensweethouse.net , which has been in use since 2019.
4.5 The plaintiff has obtained registration for the device mark bearing the word “Evergreen” with effect from 26 th August, 1998 claiming use from 1963 in class 30. The aforesaid registration is valid and subsisting.
4.6 The registered mark of the plaintiff features a unique trade dress including colour scheme, get up and layout.
4.7 The plaintiff received an email dated 13 th May, 2024 wherein one of its customers complained to the plaintiff that there is another shop under the name and style “JV Evergreen Sweets & Treats” operating in Lajpat Nagar, New Delhi, which is also selling products similar to that of the plaintiff.
4.8 The plaintiff also came to know that the defendant no.1 is operating on food delivery platforms like Zomato (defendant no.2) and Swiggy (defendant no.3) under the impugned mark and selling products identical to that of the plaintiff, which is causing confusion amongst the customers of the plaintiff.
4.9 Thereafter, the plaintiff sent a cease-and-desist notice to the defendant no.1 on 15 th May, 2024 calling upon the defendant no.1 to refrain from using the word ‘Evergreen’.
4.10 The defendant no.1 replied to the aforesaid cease-and-desist notice on 17 th May, 2024 stating that the mark adopted by the defendant no.1 is different from that of the plaintiff and the word ‘Evergreen’ is a generic name, which cannot be monopolised by anyone.
5. Accordingly, the present suit was filed seeking a decree of permanent injunction on the basis of infringement and passing off along with other ancillary reliefs.
CASE SET UP IN THE WRITTEN STATEMENT
6. In the written statement filed on behalf of the defendant no.1, it has been pleaded as under:-
6.1 The defendant operates under the name and style of “JV Evergreen Sweets & Treats” in which ‘JV’ represents the initials of the two partners of the defendant no.1.
6.2 The families of the partners of the defendant no.1 have been in the business of sweets in the Lajpat Nagar area since 1950 under the name of “Bhagwan Sweets”.
6.3 The defendant no.1 partnership was formed on 12 th November, 2020 under the aforesaid name and style of “JV Evergreen Sweets & Treats”.
6.4 The defendant no.1 applied for trade mark registration for the device mark in classes 35 and 43 on 11 th January,
