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IN THE HIGH COURT OF DELHI AT NEW DELHI
JAYANT NATH, J.
M/s. Golden Tobie Private Limited (Formerly Known As Golden Tobie Limited) - Appellant
Versus
M/s. Golden Tobacco Limited – Respondent
CS(COMM) 178 of 2021
Decided on : 04-06-2021
Arbitration and Conciliation Act, 1996 - Section 8 - Trademark Act - Supply Agreement - Registered Trade Mark - Seeking Decree for permanent injunction restraining Defendant, their partners, directors, shareholders or proprietor as case may be, its assigns in business, franchisees, affiliates, subsidiaries, licensees and agents from selling, offering for sale, advertising, directly or indirectly exclusive brands as mentioned in Schedule-3 of Trademark Licence Agreement and amendment to Trademark Licence Agreement - Whether termination of agreements by defendant and cancellation of assignment of trademark in favour of plaintiffs is legal and valid.
Finding of the court:
Court held that dispute did not pertain to infringement of a trademark on ground that defendants are using a deceptively similar trademark. The ground was that right to use trademark was conferred by a particular agreement on a particular group of family. Even if the plaintiff in that cawere to rely on any provisions of Trademark Act essential infraction as allegedly committed by defendant was not provisions of Trademark Act but provisions of agreements in question. Dispute which emanates out of agreement between parties was held to be arbitrable. Court also clarified that controversy in said case did not relate to grant or registration of trademarks. Said trademarks stood granted and registered. It was also held that assignment of a trademark is by a contract and is not a statutory fiat. It does not involve any exercise of sovereign functions - Right that is asserted by the plaintiff is not a right that emanates from the Trademark Act but a right that emanates from the Agreement dated and amendment agreement.
Result: Application allowed
JUDGMENT :
JAYANT NATH, J.
IA No.6080/2021
1. This is an application filed by the defendant under Section 8 of the Arbitration and Conciliation Act, 1996 for referring the disputes between the plaintiff and the defendant to arbitration.
2. The plaintiff has filed the present suit seeking the following reliefs:
(b) Decree for permanent injunction restraining the Defendant, their partners, directors, shareholders or proprietor as the case may be, its assigns in business, franchisees, affiliates, subsidiaries, licensees and agents from selling, offering for sale, advertising, directly or indirectly dealing in any product, or reproducing or using in any manner whatsoever, the infringing exclusive brands as mentioned in Schedule-3 of the Trademark Licence Agreement dated 12.02.2020 and amendment to Trademark Licence Agreement dated 29.08.2020, which is identical to and/or deceptively similar;
(c) Decree for permanent injunction restraining the Defendant, their partners, directors, shareholders or proprietor as the case may be, its assigns in business, franchisees, affiliates, subsidiaries, licensees and agents from selling, offering for sale, advertising, directly or indirectly dealing in any product, or reproducing or using in any manner whatsoever, the infringing exclusive brands as mentioned in Schedule-3 of the trademark licence agreement dated 12.02.2020 and amendment to trademark licence agreement dated 29.08.2020, amounting to passing off of the goods/services and/or business of the Defendant for those of the Plaintiff, dilution of goodwill and unfair competition;
(d) A decree for delivery up of all products and material including stationery, visiting cards, billboards, brochures, promotional material, letter-heads, cash memos, sign boards, sign posts, leaflets, cartons or any other items of whatsoever, bearing the infringing logo mark and the infringing trade dress, and/or any other mark, logo, device or trade dress which may be identical and/or deceptively similar to the Plaintiffs well-known logomark and trade dress;
(e) A decree of damages amounting to Rs.16,70,30,721.84 (Rupees Sixteen Crores Seventy Lakhs Thirty Thousand Seven Hundred Twenty-One and Eighty-Four Paise Only) or any such amount as found due in favour of the Plaintiff. The Plaintiff submit that the valuation of damages is an approximate figure only, and the Plaintiff undertakes to pay further Court fee as may be determined by this Hon'ble Court upon the damages that the Plaintiff is able to prove in the course of trial;
(f) An order for rendition of accounts of profits in favour of the Plaintiff and against the Defendant to ascertain the profits made by Defendant through sale of its products or any other products which bear the infringing logo mark and the infringing trade dress. The Court fees as and when the accounts of profit are determined precisely and accurately in the course of trial, and upon disclosure of profits made by the Defendants;”
3. It is the case of the plaintiff that the parties entered into a Master Long Term Supply Agreement dated 16.08.2019 by which the defendant on an exclusive basis had supplied to the plaintiff the exclusive brands of the defendant “Golden's Gold Flake, Golden Classic, Taj Chhap, Panama and Chancellor”. The plaintiff was selling, supplying, and distributing exclusively the said brands in domestic and international market. Subsequently, the plaintiff entered into a trademark license agreement dated 12.02.2020 and amendment agreement dated 29.08.2020. It is stated that the plaintif
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