In view of the non-appearance on behalf of the Defendant despite
service, this Court is of the opinion that no ex parte evidence would be required in this matter, in view of the decision of the ld. Single Judge of this Court in Disney Enterprises Inc. & Anr. v. Balraj Muttneja &Ors. [CS (OS) 3466/2012 decided on 20th February, 2014]. The same has been reiterated by the Court in S. Oliver Bernd Freier GMBH & CO. KG v. Jaikara Apparels and Ors. [210 (2014) DLT 381], as also, in United Coffee House v. Raghav Kalra and Ors. [2013 (55) PTC 414 (Del)]. The relevant observations from the judgment in Disney Enterprises Inc. (supra), are as under:
“3. Though the defendants entered appearance
through their counsel on 01.02.2013 but remained
unrepresented thereafter and failed to file a written
statement as well. The defendants were thus directed to
be proceeded ex-parte vide order dated 04.10.2013and
the plaintiffs permitted to file affidavits by way of
exparte evidence.
4. The plaintiffs, despite having been
granted sufficient time and several opportunities, have
failed to get their affidavits for leading ex-parte
evidence on record. However, it is not deemed
expedient to further await the same and allow this
matter to languish, for the reason that I have in
Indian Performing Rights Society Ltd. Vs. Gauhati
Town Club MANU/DE/0582/2013 held that where the
defendant is ex parte and the material before the
Court is sufficient to allow the claim of the plaintiff,
the time of the Court should not be wasted in
directing ex parte evidence to be recorded and which
mostly is nothing but a repetition of the contents of the
plaint.” {Para 13}
IN THE HIGH COURT OF DELHI AT NEW DELHI
CS (COMM) 78/2021 & I.As. 2346/2021, 9196/2021
TM 25 HOLDING BV Vs UMA MANJA SHIVAPPA
CORAM:
JUSTICE PRATHIBA M. SINGH
Dated : 28th April, 2022
1. This hearing has been done through hybrid mode.
I.A. 9196/2021(u/O XXXIX Rule 2A CPC)
2. The present application has been filed by the Plaintiff on the ground
that the Defendant has not complied with the injunction order dated 16th
February, 2021 passed by the ld. Single Judge of this Court. The brief
background of the case is that the Plaintiff had instituted the present suit
seeking protection of its trademark ‘G-STAR’ which was adopted by it in
1989 for various apparel, including jeans, tops and other clothing, as well as
a diverse line of luxury accessories, etc. The Plaintiff had also opened its
store in India in July 2015. The Plaintiff was earlier using the mark
‘GAPSTAR’ earlier and switched to ‘G-STAR’ IN 1994. The mark ‘GSTAR’
is also registered in favour of the Plaintiff in India under various
classes.
3. In June 2020, the Defendant was found to be using ‘GS STAR’ for
apparel and has also filed an application dated 21st November, 2018 before
the trademark registry bearing no.4003995 for the registration of the same
for the same class of products as that of the Plaintiff on a ‘proposed to be
used’ basis. The products of the Defendant were also found to be advertised
and promoted on www.indiamart.com and www.justdial.com. It was in this
background that this Court had granted an interim injunction on 16th
February, 2021 in the following terms:
“12. Considering the averments in the plaint and the
documents filed, the plaintiff has made out a prima
facie case in its favour and in case, no ex-parte adinterim
injunction is granted, the plaintiff would suffer
an irreparable loss. The balance of convenience also
lies in favour of the plaintiff and against the defendant.
13. Consequently, till the next date of hearing, the
defendant, his partners, agents, servants, distributors
and any other persons acting for and on behalf of the
defendant are restrained from using in the course of
trade the mark 'GS STAR' including in any stylized
representations, and from selling, offering for sale,
manufacturing, advertising, importing, exporting, or in
any manner commercially dealing in any goods,
whether offline or online, bearing the impugned mark
or any other mark identical or deceptively similar to
plaintiff’s 'G-STAR' trade marks amounting to
infringement of the plaintiff’s registered trade marks.
14. Compliance under Order XXXIX Rule 3 CPC be
done within one week.”
4. A Local Commissioner was appointed on 16th August, 2021 as the
Defendant was not complying with the above injunction order. The
Commission was since executed, but the Local Commissioner could not find
any products with the mark ‘GS STAR’ in the premises of the Defendant.
The Defendant was shown to have used the new board by the name ‘Higher
Fields Way 2 Journey’ for its apparels. Photographs were placed on record
by the Local Commissioner of the apparels and the board with the name
‘Higher Fields Way 2 Journey’. However, in the present application, the
contention of the Plaintiff is that the Defendant has not been complying with
the injunction order dated 16th February, 2021. The said application is based
on the affidavit of an independent investigator- Nripendra Kashyap, who
visited the Defendant’s premises in June, 2021. The investigator’s affidavit
shows the followings:
i. Listings on www.indiamart.com and www.justdial.com of the
Defendant being continued.
ii. Photographs of the Defendant’s premises along with the
products, labels and tags bearing the mark ‘GS STAR’.
5. The Court has perused the application under Order XXXIX Rule 2A
CPC and the report of the Local Commissioner. It is noticed by the Court
that the investigator claims to have gone to the Defendant’s premises on 26th
June, 2021. However, the Commission was executed on 20th August, 2021.
It is possible that the Defendant upon receiving a copy of this application
may have stopped using the mark ‘GS STAR’ and adopted new mark. Sine
the Local Commissioner’s report is subsequent to the investigator’s report
and the Local Commissioner’s report also shows that the Defendant’s
display board, tags on the clothes have been changed and the mark ‘GS
STAR’ is no longer in use, this Court is of the opinion that the only orders
that would be called for, at this stage, would be for a direction to
www.indiamart.com and www.justdial.com to remove the Defendant’s
listings bearing the mark ‘GS STAR’.
6. Accordingly, the Plaintiff is permitted to approach both these
platforms with the URLs of the Defendant’s listings and seek for removal of
the same. The said platforms upon receipt of the present order of this Court
shall remove the Defendant’s listings bearing the mark ‘GS STAR’ within
36 hours.
7. The contempt application is disposed of in the above terms.
CS(COMM) 78/2021 & I.A. 2346/2021(for stay)
8. Despite the service having been effected, the Defendant has chosen
not to appear in the present suit for the last several hearings, including 5th
April, 2021, 28th April, 2021, 4th May, 2021, 13th July, 2021, 27th July,
2021, 9th August, 2021, 16th August, 2021 and 29th September, 2021.
9. It is clear that the Defendant has knowledge of the present suit and the
injunction order dated 16th February, 2021, inasmuch as the Local
Commissioner’s report has recorded that the Defendant has changed its
mark. A perusal of the record shows that, as of June, 2021, the Defendant
continued to use the mark ‘GS STAR’, despite the injunction order dated
16th February, 2021.
10. The rights of the Plaintiff in the mark ‘G STAR’ are clearly borne out
from the record. The Plaintiff’s background has been captured in the Plaint.
A perusal of the same shows that the Plaintiff is using various variants of the
mark ‘G STAR’, including ‘G STAR’ logo form, G-STAR, G-STAR RAW,
RAW, G-RAW and RAW DENIM 3301. The mark ‘G-STAR’ and its
formative marks have also been registered by the Plaintiff in Classes 3, 18,
25, and 9. The details of the said registrations are as under:
Trademark No. Classes Status
G-STAR 640597 25 Registered
654628 03 Registered
654629 18 Registered
654630 25 Registered
G-Star 1603526 9,41 Registered
1708619 18, 25 & 35 Registered
2292047 03,09, 14, 18, 25
& 35
Registered
2292048 18, 25 & 35 Registered
2292045 18 & 25 Registered
11. In the opinion of this Court, the mark ‘GS STAR’ used by the
Defendant is clearly identical and deceptively similar to the Plaintiff’s mark
‘G-STAR’. There can be no justification for use of the said mark in respect
of identical products, especially when the mark of the Plaintiff is registered
in India and the mark is being used the Plaintiff in India. The Defendant is
also conscious of the importance of trade marks and, has in fact, has filed
the Trademark Application bearing no.4003995, for the registration of the
mark ‘GS STAR’ in Class 25, on 21st November, 2018, on a ‘proposed to be
used’ basis.
12. The Plaintiff is clearly the prior user of the mark ‘G-STAR’ globally
as also in India. The Plaintiff also enjoys goodwill and reputation in the said
mark ‘G-STAR’ in relation to apparels and garments. The Plaintiff has also
opposed the trademark of the Defendant.
13. In view of the non-appearance on behalf of the Defendant despite
service, this Court is of the opinion that no ex parte evidence would be required in this matter, in view of the decision of the ld. Single Judge of this Court in Disney Enterprises Inc. & Anr. v. Balraj Muttneja &Ors. [CS (OS) 3466/2012 decided on 20th February, 2014]. The same has been reiterated by the Court in S. Oliver Bernd Freier GMBH & CO. KG v. Jaikara Apparels and Ors. [210 (2014) DLT 381], as also, in United Coffee House v. Raghav Kalra and Ors. [2013 (55) PTC 414 (Del)]. The relevant observations from the judgment in Disney Enterprises Inc. (supra), are as under:
“3. Though the defendants entered appearance
through their counsel on 01.02.2013 but remained
unrepresented thereafter and failed to file a written
statement as well. The defendants were thus directed to
be proceeded ex-parte vide order dated 04.10.2013and
the plaintiffs permitted to file affidavits by way of
exparte evidence. 4. The plaintiffs, despite having been
granted sufficient time and several opportunities, have
failed to get their affidavits for leading ex-parte
evidence on record. However, it is not deemed
expedient to further await the same and allow this
matter to languish, for the reason that I have in
Indian Performing Rights Society Ltd. Vs. Gauhati
Town Club MANU/DE/0582/2013 held that where the
defendant is ex parte and the material before the
Court is sufficient to allow the claim of the plaintiff,
the time of the Court should not be wasted in
directing ex parte evidence to be recorded and which
mostly is nothing buta repetition of the contents of the
plaint.”
14. In the facts and circumstances of this case, this Court is empowered
under the Rule 27 of the Delhi High Court Intellectual Property Division
Rules, 2022 to pass summary judgment, without the requirement of filing a
specific application seeking the same. Accordingly, the present suit is
decreed in terms of the reliefs sought in paragraphs 49(a), (b) and (c) of the
Plaint.
15. Further, the Defendant has deliberately continued the use of the mark
‘GS STAR’ despite being aware of the Plaintiff’s mark ‘G-STAR’ as also
the reputation thereof, through the opposition proceedings to its mark. The
said opposition was filed by the Plaintiff in June, 2020. Thereafter, the
Defendant filed the Counter Statement on 15th August, 2020, but continued
to use the mark ‘GS STAR’ for almost a year till June, 2021. Thus, the use
by the Defendant of the mark ‘GS STAR’ after the filing of the opposition
by the Plaintiff, is clearly deliberate and intentional. In view of the above,
this is a fit case for grant of damages, in terms of the relief sought in
paragraph 49(e) of the Plaint, to the tune of Rs.10,00,000/- in favour of the
Plaintiff and against the Defendant. The said damages be paid to the Plaintiff
by the Defendant, within eight weeks.
16. The Plaintiff has also incurred litigation costs, including court fee,
fees of the Local Commissioner and other expenses. Thus, costs of
Rs.3,50,000/- is also awarded in favour of the Plaintiff, in terms of the relief
sought in paragraph 49(g) of the Plaint. Let the said costs be paid to the
Plaintiff by the Defendant, within eight weeks.
17. Decree sheet be drawn accordingly. All pending applications are
disposed of. If the payments in terms of this decree are not made, the
Plaintiff is at liberty to avail of its remedies, in accordance with law.
PRATHIBA M. SINGH
JUDGE
APRIL 28, 2022/dj/sk/ad
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