JUDGEMENT

AMIT BANSAL, J. I.A. 8759/2019 (u/S 10 of the CPC for stay of suit) in CS(COMM) 1018/2016 I.A. 8760/2019 (u/S 10 of the CPC for stay of suit) in CS(COMM) 814/2018

1. By way of the present judgment, I shall dispose of I.A 8759/2019 and I.A. 8760/2019 filed on behalf of the defendants under Section 10 of the Code of Civil Procedure, 1908 (CPC) seeking stay of the present suits, till the disposal of appeal, bearing no. RFA 117/2017 filed by the plaintiff herein before the Kerala High Court against the judgment and decree dated 22 nd November, 2016 passed by the Additional District Judge, Ernakulam in OS no. 12/2013.

2. At the hearing on 4th July, 2019 the senior counsel for the plaintiff stated that no reply is required to be filed to the aforesaid applications.

3. CS(COMM) 1018/2016 has been filed on behalf of the plaintiff seeking permanent injunction restraining the defendants from passing off the goods of the plaintiff by using the trademark “LIVGUARD” claiming that the same is deceptively similar to the plaintiff‟s trademark “V-GUARD” along with other ancillary reliefs.

4. CS(COMM) 814/2018 has been filed on behalf of the plaintiff seeking permanent injunction restraining the defendants from passing off the plaintiffs‟ trade dress by the defendants along with other ancillary reliefs.

5. At the outset it may be relevant to refer to the history of the litigation between the parties with regard to their competing trademarks. I. The plaintiff previously filed a suit, being OS no. 12/2013, before the District Court, Ernakulam against Shri Rakesh Malhotra, being the defendant no.1 in CS(COMM) 1018/2016 and the defendant no.2 in CS(COMM) 814/2018 seeking relief of permanent injunction restraining him from infringing plaintiff‟s trademark “V-GUARD” and from passing off the plaintiff‟s goods. II. An ex parte injunction was granted in the aforesaid suit on 11th April, 2013 restraining Shri Rakesh Malhotra from using the trademark “LIVGUARD”. The ex parte injunction order was vacated and the interim application filed on behalf of the plaintiff was dismissed by the District Court, Ernakulam vide order dated 1st June, 2013 holding that there is no similarity between the plaintiff‟s trademark “V-<br/>

GUARD” and the defendant‟s trademark “LIVGUARD”.

III. An appeal was filed by the plaintiff against the aforesaid order dated 1 st June, 2013 before the Kerala High Court, which was dismissed by the Kerala High Court vide judgment dated 5th July, 2013, by holding that the defendant‟s trademark “LIVGUARD” is not similar to the plaintiff‟s trademark “V-GUARD”.

IV. The SLP, bearing no. 36230/2013, filed on behalf of the plaintiff against the aforesaid judgment dated 5th July, 2013, was dismissed as withdrawn on 22nd November, 2013.

V. An application was filed on behalf of the plaintiff before the District Court, Ernakulam seeking withdrawal of OS no. 12/2013 insofar as it related to the relief of passing off with liberty to file the same in a Court of competent jurisdiction, which was allowed on 24th November, 2015.

VI. Pursuant to the aforesaid liberty, CS(COMM) 1018/2016 was filed on behalf of the plaintiff before this Court.

VII. After the trial, a final judgment and decree was passed by the District Court, Ernakulam, dismissing the suit filed by the plaintiff on 22nd November, 2016.

VIII. Against the aforesaid dismissal, the plaintiff filed an appeal, bearing no. RFA 117/2017 before the Kerala High Court, which appeal is stated to be pending.

IX. On 16th August, 2017, issues were framed in CS(COMM) 1018/2016 and it was recorded that no oral evidence is required to be led and that the suit would be decided on the basis of the pleadings of the parties.

X. Subsequently, an application, being I.A.10323/2017 in CS(COMM) 1018/2016 was filed on behalf of the plaintiff seeking leave to lead evidence. The said application was disposed of as not pressed on 1st February, 2018