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IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of Decision: 03^rd March, 2022

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CM(M)-IPD 6/2022 & CM APPLs. 10457/2022, 10458/2022

KORES (INDIA) LIMITED

..... Petitioner

Through:

Mr. A.C. Mishra & Mr. Vardhan

Anand, Advocates (M-9871161549)

versus

DOMS INDUSTRIES PRIVATE LIMITED

..... Respondent

Through:

Mr. Ajay Sahani, Mr. Ankur Sangal &

Mr. Shashwat Rakshit, Advocates (M-

8874643389)

CORAM:

JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh, J. (Oral)

1. This hearing has been done through hybrid mode.

2. The present petition challenges the impugned order dated 4^th January,

2022, passed in CS (COMM) 312/19 titled Doms Industries Private Limited

v. Kores India Limited, by which the application of the Petitioner/Defendant

(hereinafter “Defendant”) under Order XIV Rule 5 CPC for framing of

additional issues has been rejected by the Commercial Court.

3. The submission of Mr. Abhishek Mishra, ld. Counsel appearing for the

Defendant, is that the suit in this case was filed by the Respondent/Plaintiff

(hereinafter “Plaintiff”) for permanent injunction restraining infringement of

trademarks, unfair trade practice, damages, etc. He submits that initially, prior

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/000825

to registration of the Plaintiff’s marks, a suit being TM No.43/2018 titled

Doms Industries Private Limited v. Kores (India) Limited, was filed by the

Plaintiff against the Defendant, before the Ld. ADJ, Saket District Court

(South East), Delhi, with regard to the mark “NEON” on the packaging of

pencils. However, no injunction was granted against the Defendant in the said

suit. The said decision dated 22^nd September, 2018 is stated to have been

appealed against before the High Court of Delhi. Thereafter, the present suit

being CS (COMM) 312/19 was filed by the Plaintiff on the strength of five

trademarks registrations bearing nos. 3689489, 3689490, 3689491, 3689492

and 3689493. In this suit, an interim injunction was granted on 5^th November,

2018, which is stated to be the subject matter of challenge in another appeal

before the Delhi High Court.

4. All these above trademark registrations relate to ‘DOMS PENCILS’

which have different colour combinations and colour schemes. The case of

the Plaintiff is that the Defendant’s products being, “Kores Funcils Neon” is

an infringement of the Plaintiff’s trademarks/trade dress/etc., as they are

identical to the Plaintiff’s, “DOMS NEON” pencils.

5. It is the submission of ld. Counsel for the Defendant, that in this suit

being CS (COMM) 312/19, when the initial issues were framed on 5th

October, 2020, neither of the parties were present and so the issues relating to

validity of the said trademarks and some other issues, could not be placed

before the Commercial Court at that time. Accordingly, a fresh application

was moved under Order XIV Rule 5 CPC read with Section 15 CPC, seeking

inclusion of additional issues, which was rejected vide the impugned order.

6. Mr. Sahni, ld. Counsel for the Plaintiff, on the other hand, submits that

the Plaintiff has already filed the evidence by way of affidavit and these

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/000825

additional issues are being sought to be canvassed at a very late stage. This

ought not to be permitted.

7. Heard the ld. Counsels for the parties. The suit in the present petition

relates to the five registered trademarks which are set out above, bearing nos.

3689489, 3689490, 3689491, 3689492 and 3689493. A perusal of the

registered trademarks shows that they are in respect of pencils which are in

different colour combinations. For quick reference, the marks which are

registered are extracted below:

i) TM Application No. 3689489

Class: 16

TM Applied for: DOMS NEON (YELLOW)

Trade Mark Image:

ii) TM Application No. 3689490

Class: 16

TM Applied for: DOMS NEON (BLUE)

Trade Mark Image:

iii) TM A