*IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 17 th April, CS(COMM) No.1021/2016

Transcription

1 *IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 17 th April, CS(COMM) No.1021/2016 BOMAN R IRANI... Plaintiff Through: Mr. C.M. Lall, Ms. Nancy Roy and Mr. Rupin Bahl, Advs. Versus RASHID AHMAD MIRZA & ORS... Defendants Through: Mr. A.K. Goel, Mr. Anshul Goel, Mr. Ranjeev and Ms. Renu Narula, Advs. CORAM:- HON BLE MR. JUSTICE RAJIV SAHAI ENDLAW IA No.9286/2016 (of plaintiff under Order XXXIX Rules 1&2 CPC). 1. The plaintiff has sued the defendant no.6 Mirza International Limited (MIL) (of which defendants no.1 to 4 are directors/officers) for injunction from passing off its footwear with the trademark YEZDI as that of the plaintiff and/or as that emanating from the house of the plaintiff. 2. Summons of the suit and notice of the application for interim relief were issued. 3. Defendant no.6 MIL has filed a written statement and which has been adopted on behalf of the defendants no.1 to 5 also without prejudice to their plea that they are neither necessary nor proper parties to the suit. 4. The counsels were heard on 27 th September, 2016 on the application for interim injunction and orders reserved. CS(COMM) No.1021/2016 Page 1 of 12

2 5. It is the case of the plaintiff (i) that Mr. Rustom Irani, father of the plaintiff, adopted the trademark YEZDI, (reference hereafter to YEZDI be read as inclusive of logo) and commenced using the mark from the year 1969 onwards in relation to motorcycles through a permitted user to a company promoted by Mr. Rustom Irani by the name of Ideal Jawa (India) Pvt. Ltd. (IJIPL) and of which Mr. Rustom Irani was the principal shareholder; (ii) Mr. Rustom Irani was originally from the province named Yazd in Iran and adopted the mark YEZDI from the name of the said province in Iran; (iii) after the demise of Mr. Rustom Irani, the brand YEZDI devolved on the plaintiff who continued to allow the permitted use of the said brand to IJIPL which continued to be a family controlled company; (iv) the first YEZDI branded motorbike was launched in the year 1968 and made a niche for itself in the country; (v) though the manufacturing of YEZDI branded bikes stopped in the year 1996, the goodwill and reputation which the brand created for itself in the said period of time has continued to subsist; (vi) the plaintiff as of today also owns a website dedicated to the brand YEZDI being which continues to advertise and promote the YEZDI brand in India since 1998; (vii) that the plaintiff on 14 th September, 2013, 1 st January, 2014, 2 nd July, CS(COMM) No.1021/2016 Page 2 of 12

3 2014 has applied for registration of various YEZDI formative marks in various classes (12, 25, 29, 30, 32, 33, 35 and 37) and which applications are pending consideration; (viii) the plaintiff is also the copyright owner of the artistic work in YEZDI logo; (ix) in the year 1996, owing to diverse reasons, IJIPL stopped manufacturing and business activities and the use of the trademark YEZDI by IJIPL has ceased since 1996 but the plaintiff has been using the name and logo as evident from the website (x) though IJIPL, with the permission of the plaintiff and his predecessor, obtained registration of YEZDI logo in classes 10 and 12 but has not renewed the said registrations after 9 th October, 1997; (xi) however the YEZDI brand continues to enjoy extensive reputation and goodwill owing to long usage and even today the brand YEZDI is popular amongst the biking groups and YEZDI branded bikes are available for re-sale even today through third parties with a number of YEZDI clubs being in existence in several cities and YEZDI dedicated pages are found on social networking sites like (xii) the plaintiff is in the process of reviving manufacturing of the motorcycles under the brand YEZDI ; (xiii) that the Official Liquidator, in the proceedings for winding up of IJIPL, has staked a claim to the trademark YEZDI ; (xiv) that the defendants no.1 CS(COMM) No.1021/2016 Page 3 of 12

4 to 5 being the partners of M/s. Genesis International have obtained registration of the mark YEZDI (word) in Class 25 for footwear; (xv) that the aforesaid M/s. Genesis International was incorporated as Genesis Footwear Enterprises Pvt. Ltd. and which has amalgamated with defendant no.6 MIL and the plaintiff in February, 2016 learnt of the registration obtained by the defendants no.1 to 5 in Class 18 and Class 25; (xvi) that the defendants have dishonestly copied the word YEZDI from the plaintiff to create an impression in the minds of the general public that there is some association between the defendants and the plaintiff or that the use of the mark of YEZDI by the defendants is in collaboration with the plaintiff; (xvii) the shoes manufactured by the defendants are stated to be inspired by the vintage YEZDI bikes; (xviii) that the defendants are using the mark on their shoes as well as the packaging of the shoes; (xix) the defendants are also selling their products on interactive websites; (xx) that the YEZDI mark of the plaintiff is an iconic and well-known brand amongst the motorcycle enthusiasts; (xxi) the use of the mark YEZDI by the defendants for biking shoes is likely to create an impression in the minds of the consumer that there is some affiliation between the plaintiff and the defendants; and, (xxii) instance is given of a consumer complaining about CS(COMM) No.1021/2016 Page 4 of 12

5 the footwear of the defendants by relating it to the YEZDI motorcycles plaintiff. 6. The defendants defend, disputing the ownership of the plaintiff of the mark YEZDI, especially in the face of the Official Liquidator of IJIPL admittedly claiming adversely to the plaintiff and pleading (i) IJIPL is a necessary party to the present suit; (ii) the plaintiff has admittedly never used the trademark YEZDI in respect of footwear or other goods falling in Class 25; (iii) the plaintiff himself has admittedly not sold any goods under the trademark YEZDI ; (iv) admittedly IJIPL has also not used the trademark YEZDI in respect of any goods since the year 1996 and has abandoned the trademark registrations in its favour; thus the question of passing off does not arise; (v) YEZDI is not an invented word but the name of a religious community which has survived and grown in adverse situation; (vi) as the partners of M/s. Genesis International have grown their business in very competitive and adverse situation like YEZDI community, they bona fidely and honestly adopted the mark YEZDI in the year 2008 and have since then been openly and continuously using the same; (vii) the registered mark now stands vested in the defendant no.6 MIL; (viii) the defendant no.6 MIL s trademark YEZDI has acquired immense goodwill and reputation; CS(COMM) No.1021/2016 Page 5 of 12

6 (ix) the defendant no.6 MIL being proprietor of the registered trademark in Class 25 has exclusive right to use the same in relation to the goods specified therein and no injunction can be granted against it; (x) the defendant no.6 MIL has also registered the mark YEZDI in European Union in Classes 18, 24, 25 and 28; (xi) various other persons also have been using the mark YEZDI in respect of their goods; and, (xii) that there is no scope of any confusion. 7. The counsel for the plaintiff in his arguments, besides what is pleaded, contended (i) that Yezdi bikes are still traded and had sales of Rs.26,00,000/- in the previous year; (ii) use by the defendants of the mark YEZDI in relation to shoes will dilute the distinctiveness of the mark of the plaintiff; (iii) the brand of the defendants is Red Tape; iv) the defendants in their advertisement at page 709 have claimed their shoes to be inspired by vintage bikes from YEZDI, showing awareness and the reputation and goodwill of the plaintiff s mark; (v) that the plaintiff is about to launch refurbished Yezdi bikes; and, (vi) that the defendants can be granted time to get rid of their stocks under the mark YEZDI. CS(COMM) No.1021/2016 Page 6 of 12

7 8. Per contra the counsel for the defendants argued (i) that the plaintiff has not filed any document in support of the title claimed to the mark YEZDI ; (ii) that the plaintiff has not filed any document to show that it was the father of the plaintiff had had licensed the mark YEZDI to IJIPL; (iii) the plaintiff has not filed any document to show that his father was the principal shareholder of IJIPL; (iv) the registration obtained by IJIPL of the mark on the contrary shows that the plaintiff or his predecessor-in-interest were not the owners thereof; (v) that of the three registrations obtained by IJIPL two have lapsed and the surviving registration is in respect of motorcycles, scooters and parts and fittings thereof and which has also not been not renewed after 9 th October, 1997 but has not been removed from the Register as yet; (vi) that the plaintiff, by way of this suit is attempting to prove his ownership of the mark; (vii) the plaintiff is not entitled to interim injunction on the ground of latches, acquiescence and waiver; (viii) the plaintiff is not in footwear business; and, (ix) that sale of secondhand Yezdi bikes does not amount to user by the plaintiff of the mark YEZDI ; (x) that the plaintiff admittedly has had no sale/advertisement since 1996; (xi) IJIPL which alone had obtained registrations of the mark has admittedly abandoned the mark; (xii) that the plaintiff or anyone else did not object to CS(COMM) No.1021/2016 Page 7 of 12

8 the application of the defendants for registration of the mark in Class 25; and, (xiii) the defendants, neither in their advertisement or otherwise have never claimed any association with the YEZDI motorcycles and the document at page 709 of plaintiff s documents does not emanate from defendants. Attention was drawn to (a) the printout from the plaintiff s website which describes the plaintiff as a first generation real estate developer; (b) the documents to show the extent of the defendants business; (c) the plaintiff s documents to show that the plaintiff in his application for registration of the mark YEZDI in Class 12 has claimed user since 28 th August, 2013; and, (d) the letter of the Official Liquidator to the Registrar of Trademarks claiming rights to the trademark YEZDI. 9. The counsel for the plaintiff in rejoinder contended that the Official Liquidator has not opposed the registration sought by the plaintiff. 10. The counsels have thereafter also filed written submission. 11. The counsel for the plaintiff along with his written submission has filed copies of judgments in :- (i) Baker Hughes Limited Vs. Hiroo Khushalani 74 (1998) DLT 715; (ii) Baker Hughes Limited Vs. Hiroo Khushlani 2004 (29) PTC 153 (DB); CS(COMM) No.1021/2016 Page 8 of 12

9 (iii) (iv) Morgardshammar AB Vs. Morgardshammar India Pvt. Ltd (49) PTC 449 Del; Kamal Trading Company, Bombay Vs. Gillette U.K. Limited, Middles Sex, England 1988 (8) PTC 1 (DB); (v) N.R. Dongre Vs. Whirlpool Corporation AIR 1995 Del 300 (DB); (vi) Amritdhara Pharmacy V. Satya Deo Gupta AIR 1963 SC 449; (vii) B.K. Engineering Co. Vs. Ubhi Enterprises (Regd.) ILR (1985) I Del 525 (DB); (viii) T.V. Venugopal Vs. Ushodaya Enterprises Ltd. MANU/SC/0169/2011; (ix) Bata India Limited Vs. Pyare Lal & Co., Meerut City AIR 1985 AII 242; (x) Beiersdorf A.G. Vs. Ajay Sukhwani 156 (2009) DLT 83; (xi) Mahendra & Mahendra Paper Mills Ltd. Vs. Mahindra & Mahindra Ltd. (2002) 2 SCC 147; (xii) Sunder Parmanand Lalwani Vs. Caltex (India) Ltd. AIR 1969 Bom 24 (DB); (xiii) Hamdard National Foundation Vs. Abdul Jalil MANU/DE/2590/2008; and, CS(COMM) No.1021/2016 Page 9 of 12

10 (xiv) Rolex Sa Vs. Alex Jewellery Pvt. Ltd. MANU/DE/0796/ The counsel for the defendants along with his written submissions has filed copies of judgments in (i) Smithkline Beecham Plc. Vs. Sunil Sarmalkar 2012 (52) PTC 418(Del); (ii) Prina Chemical Works Vs. Sukhdayal ILR (1974) I Del 545 (DB); (iii) Goramal Hari Ram Vs. Bharat Soap and Oil Industries 23 (1983) DLT 401 (DB); (iv) Veerumal Praveen Kumar Vs. Needle Industries (India) Ltd PTC 889 (Del) (DB); (v) S.P. Chengalvaraya Naidu Vs. Jagannath JT 1993 (6) SC 331; (vi) Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980; (vii) Sona Spices Pvt. Ltd. Vs. Soongachi Tea Industries Pvt. Ltd (34) PTC 91 (Del.); (viii) Wander Ltd. Vs. Antox India (P) Ltd Supp (1) SCC 727; and, (ix) B.L. and Co. Vs. Pfizer Products Incl PTC 797 Del. (DB). 13. Having considered the rival contentions I am of the view that the plaintiff is not entitled to the interim injunction as sought of restraining the defendants from using the mark YEZDI for the reasons hereinafter appearing:- (i) The plaintiff is yet to prove his title to the mark. CS(COMM) No.1021/2016 Page 10 of 12

11 (ii) The defendants are admittedly the registered proprietor of the mark without any objection from the plaintiff. (iii) The plaintiff himself or through anyone else is not using the mark in relation to any good, admittedly for at least ten years prior to the institution of the suit. It is yet to be established that the acts claimed by the plaintiff amount to use of the mark. (iv) It is yet to be established that the use by the defendants of the mark amounts to the defendants passing off their goods as that of the plaintiff or the goods of the defendants being consumed for the reason of association with the plaintiff. (v) The plaintiff, in the prevalent circumstances, will not suffer any injury from non grant of interim injunction; the plaintiff, if proves his case, notwithstanding acquisition even if any of further goodwill by the defendants in relation to the mark with the passage of time, be entitled to permanent injunction. Per contra, the defendants, if the plaintiff were to ultimately fail, will suffer irreparable injury from grant of interim injunction. (vi) The balance of convenience is thus in favour of the defendants. CS(COMM) No.1021/2016 Page 11 of 12

12 14. Though the document at page 709 of plaintiffs documents does not appear to emanate from the defendants, I am of the opinion that the defendants are not entitled to in their advertisements or otherwise convey that the YEZDI shoes of the defendants are inspired by vintage bikes from YEZDI or otherwise have any association with the YEZDI bikes or to allow anyone else to portray such association. 15. Accordingly, the application is disposed of by restraining the defendants from, in their advertisement or otherwise claiming that their footwear under the mark YEZDI is inspired by motorcycles/bikes from YEZDI or otherwise convey any association with YEZDI motorcycles/bikes. The defendants are also restrained from allowing the marketing websites through which their goods are sold also to convey any such association. 16. The application is disposed of. 17. Needless to state that the observations contained herein are prima facie and shall have no bearing on the final decision on merits. APRIL 17 th, 2017 pp RAJIV SAHAI ENDLAW, J. CS(COMM) No.1021/2016 Page 12 of 12