* HIGH COURT OF DELHI : NEW DELHI
+ I.A. Nos. 11230/2007, 13618/2008 & 13619/2008 in
CS(OS) No. 1459/2007
M/S. RANA STEELS ...Plaintiff
Through : Mr. S.K. Bansal with
Mr. Akshay Srivastava, Advs.
Versus
M/S. RAN INDIA STEELS PVT. LTD. ...Defendant
Through : Mr. Amarjit Singh with
Mr. Dhruv Bhagat, Advs.
Reserved on: December 10, 2009
Decided on: January 14, 2010
Coram:
HON'BLE MR. JUSTICE MANMOHAN SINGH
1. Whether the Reporters of local papers may
be allowed to see the judgment? Yes
2. To be referred to Reporter or not? Yes
3. Whether the judgment should be reported
in the Digest? Yes
MANMOHAN SINGH, J.
1. Vide this order I shall dispose of the three applications filed
by the plaintiff, the details of which are given as under:
a) IA No.11230/2007 under Order XXXIX Rule 2A read
with Section 10 & 12 of the Contempt of Court Act filed by
the plaintiff.
b) IA No.13619/2008 under Order XXXIX Rule 2A read
with Section 10 & 12 of the Contempt of Court Act filed by
the plaintiff.
c) IA No.13618/2008 under Order XXVI Rule 9 and Order
CS (OS) No.1459/2007 Page 1 of 15
XXXIX Rule 7 CPC read with Section 151 CPC filed by theplaintiff.
2. The brief facts are that the plaintiff filed the suit for
permanent injunction to restrain infringement of trademark, passing off
rendition of accounts, damages etc. in respect of trademark RANA
registered vide application no. 648697B on 14.12.1994. Along with the
suit, the plaintiff filed I.A. No.9165/2007 under Order XXXIX Rule 1
& 2 read with Section 151 CPC praying for ex-parte ad-interim
injunction against the defendant.
3. That vide order dated 14.8.2007 an ex-parte order of
injunction was passed in the following terms:
“In view of the averments made in the plaint and
submissions made by the learned counsel for the plaintiff, I
am of the view that the plaintiff is entitled to ex-parte
orders. Accordingly, till the next date of hearing the
defendants by itself or through their proprietors, partners,
directors, agents, representatives, distributors, assigns,
heirs, successors, stockists and all other acting for and on
their behalf shall refrain from using, selling, advertising,
displaying or through the visual, audio, print mode or by
any other mode manner or dealing in or using the trademark
RANA or any other identical or deceptively similar mark in
respect of the impugned goods in relation to metal building
materials, pipes, tubes of steel which include rods, flats,
pipes, angles and building steels made of mild steel and
related/allied products.”
4. Thereafter the defendant filed the written statement and reply
to the injunction application. The defendant also filed the application
under Order XXXIX Rule 4 CPC being IA No.9944/2007 for vacation
of the ex-parte ad-interim injunction. During the pendency of the
hearing of the interim applications, the defendant also filed an
application being IA No.1330/2008 under Section 151 CPC praying that
CS (OS) No.1459/2007 Page 2 of 15
the defendant may be permitted to sell the existing stock of 3,000 metric
tonnes of steel under the trademark RANATOR on such terms and
conditions as the Court may deem fit and proper.
5. All the pending applications were heard by the Court and by
order dated 25.3.2008 the ex-parte order of injunction was confirmed till
the final disposal of the suit with the modification that the injunction
would be only in respect of steel rolled products CTD bars, angles, flats,
rounds, channels and girders falling under class 6. On the same date the
defendant‟s application being IA No.1330/2008 for disposing of the
existing stock was also disposed of being infructuous in view of the
order passed in I.A. No.9165/2007 and I.A. No.10779/2007.
6. Prior to dismissal of the interim application, the plaintiff
also filed I.A. No.11230/2007 under Order XXXIX Rule 2A read with
Section 10 & 12 of Contempt of Court Act for violation of the ex-parte
ad-interim injunction by stating that despite the grant of the ex-parte ad-
interim order, the defendant did not stop using the trademark
RANATOR which has been displayed on its website in respect of TMT
and CTD Bar, building steel etc. Along with the application, the
plaintiff also filed the downloaded printout from the defendant‟s website
in support of its submissions. Although the said application is still
pending, after passing of the interim order now the plaintiff has filed
two more applications being I.A. No.13619/2009 under Order XXXIX
Rule 2A read with Section 10 & 12 of Contempt of Court Act and I.A.
No.13618/2008 under Order XXVI Rule 9 and Order XXXIX Rule 7
CPC for appointment of Local Commissioner respectively.
CS (OS) No.1459/2007 Page 3 of 15
7. The main averments in these applications are that the
defendant, after confirmation of the interim order, adopted the
trademark RAN INDIA in respect of steel rolled products, CTD bars,
angles, flats, rounds, channels and girders which is deceptively similar
to the trademark of the plaintiff RANA/RANATOR and such use by the
defendant in relation to goods as well as on its website amounts to
violation of the orders dated 14.8.2007 and 25.3.2008 passed by this
Court. A prayer has been made to initiate contempt proceedings against
the Directors of the defendant and particularly its Executive Director Sh.
R. Nagrajan as well as for attachment of properties of the defendant.
8. In the third application (for appointment of Local
Commissioner), it is mentioned that despite the dismissal of the
defendant‟s application being IA No.1330/2008 to dispose of the
existing stock lying at the premises of the defendant, it has come to the
knowledge of the plaintiff from the trade that the defendant has
surreptitiously started selling a stock of 3,000 metric tonnes of steel
under the trademark RANATOR which is in gross violation of interim
order dated 25.3.2008.
9. The defendant has filed the reply in respect of the two
applications being IA No.13619/2008 (under Order XXXIX Rule 2A
CPC) and IA No.13618/2008 (under Order XXVI Rule 9 CPC). In the
replies filed by the defendant, it is submitted that the plaintiff has in a
mala fide manner sought to introduce a new cause of action against the
use of trade mark RAN INDIA by way of the present application, as the
said mark was not the subject matter of the suit. It is contended in the
CS (OS) No.1459/2007 Page 4 of 15
reply that the plaintiff had full knowledge about the use of trade mark
RAN INDIA by the defendant at the time of institution of the suit, still
no prayer was sought by the plaintiff in the plaint.
10. It is alleged by the defendant that the plaintiff while seeking
an interim injunction against the use of the trade mark RANATOR did
mention about the use of the company‟s name Ran India Steel Pvt. Ltd.,
now the plaintiff is not entitled to initiate contempt action or to make a
grievance in respect of the use of the mark RAN INDIA which is a part
of the defendant‟s corporate name. An additional plea has been raised
that the said trade mark RAN INDIA is being used by the defendant in
the course of the trade since 1995 to the knowledge of the plaintiff and
it has a right to use the trademark RAN INDIA in respect of its goods.
It is also denied by the defendant that the mark RAN INDIA is
deceptively similar to the trademark RANA/RANATOR as alleged by
the plaintiff. The plaintiff has no cause of action nor such cause of
action was made out in the plaint pertaining to the use of the trademark
RAN INDIA. Therefore, the application filed by the plaintiff is not
maintainable.
11. It is denied by the defendant that it has committed any
contempt of the orders passed by the Court. It is stated that the
defendant has a right to use the trade mark RAN INDIA. It is also
alleged that the defendant has fully complied with the orders passed by
the Court.
12. As far as the existing stock of 3,000 metric tonnes of steel
which was lying in its power and possession at the time of passing of the
CS (OS) No.1459/2007 Page 5 of 15
ad-interim injunction is concerned, the defendant has denied that the
defendant has surreptitiously started selling the said stock under the
trade mark RANATOR. It is argued that the defendant has obeyed the
order dated 25.3.2008 and the defendant has not manufactured or sold
any goods under the trade mark RANATOR but it is not denied that the
stock of 3,000 metric tonnes of steel was in possession of the defendant
and the same was recycled by melting and re-used for the manufacturing
of the goods. Therefore, the question of violation of order does not
arise. Therefore, it is not necessary to pass any order for appointment
of Local Commissioner otherwise the said appointment will cause
damage to the defendant‟s reputation as it will intimidate its dealers.
Since no stock or material bearing the trade mark RANATOR is in the
possession of the defendant therefore, no useful purpose will be served
by the visit of the Local Commissioner.
13. The learned counsel for the defendant has argued that in fact
the said stock was recycled and disposed of after passing of the interim
orders. On the other hand, the argument of the learned counsel for the
plaintiff is that 3,000 metric tonnes of steel was of such nature that it
could not have been recycled under any circumstances and the plaintiff
has, under the said circumstances, reason to believe that the defendant
might have sold the stock under the impugned trademark RANATOR.
The second submission of the learned counsel for the plaintiff is that
since the defendant‟s application was pending for seeking the direction
to dispose of the stock in this Court, there was no occasion for the
defendant to dispose of the stock without the permission of the Court.
CS (OS) No.1459/2007 Page 6 of 15
Prayer has been made in the application that a Local Commissioner be
appointed to visit the premises/godown/manufacturing unit of the
defendant where the existing stock of the defendant is lying at the
address given in the memo of parties. The Local Commissioner also be
permitted to make the inventory of the existing stock, if any, under the
trademark RANATOR and to sign the account books including ledger,
cash register, stock register, invoices, books etc. of the defendant.
14. The learned counsel for the plaintiff has not seriously argued
the earlier contempt application being IA No.11230/2007 which was
filed after passing of the ex-parte order due to the reason of
confirmation of the ex-parte orders, in view whereof no orders are
necessary to be passed in the application.
15. Let me now examine the rival submissions of the parties.
The defendant Ran India Steel Pvt. Ltd. was admittedly incorporated on
25th May, 1995 and there is sufficient material on record to show that
this company has been carrying on its business regularly in its products,
it appears there is no averment made in the written statement that the
company has ever used the mark RAN INDIA as a trade mark. The
case of the defendant has been that its company‟s name is Ran India
Steels Pvt. Ltd. and it has been using the composite mark RANATOR.
16. Similarly in para 15 of the plaint, the plaintiff has specifically
mentioned that the defendant M/s Ran India Steels Pvt. Ltd. is engaged
in the trade and business of manufacturing and marketing of mettle,
building material, pipes and tubes of mettle and the defendant intends to
use the mark/label RANATOR. It appears from the order dated
CS (OS) No.1459/2007 Page 7 of 15
25.3.2008 that during the course of hearing of interim application it
was mentioned by the counsel for the plaintiff about the use of trade
mark RAN by the defendant by making a submission but in the
absence of pleadings in the plaint as well as the written statement, it was
mentioned that the defendant was using the trade mark RANATOR
which is also claimed by the defendant. The Court even doubted the date
of user claimed by the defendant and has given its finding in this regard
in para 33 of the order which reads as under:
“These photographs reveal that the expression “(RANA
TOR TESTED)” is apparently superimposed and in
different typeface in photograph 1. Whereas in photograph
2, the said expression and the rest of the typed matter
match in ribbon intensity, alignment as well as in typeface.
This does give rise to grave suspicion as regards the
challans for the period May, 2001 to June, 2004. Perhaps
there is a plausible reason for this, but, none was
forthcoming on the part of the defendant in the course of
arguments. However, as I have already concluded that the
plaintiff is entitled to interim injunction, I shall not dwell
on this matter further at this stage and leave the matter to
be conclusively dealt with at the trial stage.”
17. When the defendant was confronted with this situation, the
answer of the defendant is that on the letterhead of M/s. Ran India
Steels Pvt. Ltd. the mark RAN along with monogram is always shown
but the defendant was also using the trade mark RANATOR which is
registered under No.1005663 and even otherwise, since the defendant‟s
corporate name is Ran India Steel Pvt. Ltd., it has a right to use the
trade mark RAN INDIA, being a bona fide adoption and which also
happens to be a part of the name of its company.
18. From the plaint, it appears that there is no reference to the
trade mark RAN INDIA nor is it mentioned in the prayer clause.
CS (OS) No.1459/2007 Page 8 of 15
While granting the ad-interim order, this Court on 14.8.2007 restrained
the defendant from using the trade mark RANA or “any other identical
or deceptively similar mark”. The said ex-parte order was confirmed on
25.3.2008 after some modification.
19. Now the question before this Court is as to whether by use of
the mark RAN INDIA as a trade mark amounts to violation of orders
dated 14.8.2007 and 25.3.2008. The contention of the learned counsel
for the defendant is that there is no violation on behalf of the defendant;
firstly on the ground that in the absence of any specific prayer in the
plaint, the question of violation of the order does not arise and secondly
the two names RANATOR and RAN INDIA are not deceptively similar
to the plaintiff‟s mark RANA. Thirdly, the trademark RAN INDIA is
the part of the corporate name M/s. Ran India Steels Pvt. Ltd. and the
defendant is entitled to use the same.
20. I do not agree with the submissions of the defendant. In para
28 of the plaint the plaintiff had sought permanent injunction against the
defendant from using the trade mark/label RANATOR label, or any
other identical with or deceptively similar mark/label in relation to their
impugned goods. In case the plea of the defendant is accepted, the
words “any other identical or deceptively similar mark” mentioned in
the prayer are to be treated as meaningless. It is not possible for the
plaintiff to mention the proposed mark which is likely to be used by the
defendant after passing the interim order. When both orders dated
14.8.2007 and 25.3.2008 are read together, it is clear that while
confirming the interim orders, the relief of deceptively similar mark in
CS (OS) No.1459/2007 Page 9 of 15
favour of the plaintiff was also granted, therefore, the defendant is not
entitled to use the deceptively similar mark, otherwise, the purpose of
passing the order would be defeated.
21. Vide order dated 5th November, 2009, the defendant was
given an more opportunity to file the original documents pertaining to
the trade mark RAN INDIA/RAN from the date of adoption till the date
of passing of the interim order. Despite this Court‟s order, the
defendant did not file any cogent evidence by way of advertisement in
the newspaper, copy of web page or order forms in order to show that
the trademark RAN INDIA was being used by the defendant prior to
the filing of the suit. It is pertinent to mention that prior to filing of the
suit, the defendant had a website wherein the trade mark RANATOR
was mentioned but there was no reference in any web page about the
trade mark RAN INDIA. The said circumstances also show, prima facie,
that the defendant was not using the trade mark RAN INDIA openly or
commercially as prior to the filing of the suit, the defendant had
apparently been using the trade mark RANATOR, and it might have
been adopted and used openly in the market after passing of the ex-parte
order.
22. In a similar situation, this Court has considered this aspect in
Essco Sanitations v. Mascot Industries (India), AIR 1982 Delhi 308
where the suit for infringement of trade mark was filed by the plaintiff
on the basis of registered trademark ESSCO in relation to brass cocks
on the allegation that two trade marks were deceptively similar, the
parties settled their dispute wherein an undertaking was given by the
CS (OS) No.1459/2007 Page 10 of 15
defendant not to use the trademark ESSO. After the settlement between
the parties, the defendant adopted the trademark OSSO which according
to the defendant it was using earlier to the settlement arrived at between
the parties. There was some dispute between the parties for mentioning
the mark OSSO which was the part of the settlement. However, the
Court decided to take up the matter on merit as to whether the trademark
OSSO is deceptively similar with the trademark ESSCO or not. After
considering the matter on merit, the Court came to the conclusion that
the two names ESSCO and OSSO are deceptively similar and the
adoption of the trademark OSSO by the judgment debtor was dishonest.
The learned Court in para 18 of the said judgment has come to the
following conclusion:
“(18) There appears to be no doubt that the adoption of the
trade mark ‘OSSO’ by the judgment-debtors is dishonest.
The trade mark ‘OSSO’ is not descriptive of the goods in
question. There is nothing on the record to suggest that the
four letters containing this mark represent the names of the
partners or proprietors of the defendant-firm. The decree
holders, as mentioned earlier, had earlier objected to the
trade mark Esso which was being used by the judgment-
debtors and had claimed a decree restraining the judgment-
debtors from using the said trade mark. They obtained the
decree restraining the judgment-debtors from using the
trade mark ‘ESSO’ and in spite of this, the judgment-debtors
conveniently adopted the trade mark ‘OSSO’ which is in no
way different than the trade mark ‘ESSO’. The fact that they
started using this trade mark even before the passing of the
decree is of no consequence. It, on the other hand, shows
their dishonest intentions.”
23. Yet in another case of Chinna Krishna Chettiar v. Ambal &
Co., (1970) 1 SCR 290 where the two rival marks were „Sri Ambal‟ and
„Sri Andal‟, the marks were held to be similar by the Court. This
judgment is also referred in the case of Kali Aerated Water Works,
CS (OS) No.1459/2007 Page 11 of 15
Tiruchirapalli v. Rashid and Ors., AIR 1989 Madras 9 where the two
trade marks „Kali‟ and „Sri New Kali‟ were held to be similar. The
judgment of Chinna Krishna Chettiar v. Ambal & Co. (supra) is
referred in this matter in para 9 which reads as under:
“9. In this connection we may usefully cite a decision of
the Supreme Court in Chinna Krishna Chettiar v. Ambal &
Co., [1970] 1 SCR 290. The two trade names that were
considered in that case were Sri Ambal and; Sri Andal.
Both the parties in that proceeding were manufacturers and
dealers in snuff carrying on business at Madras. Though
there was pictorial difference, the Supreme Court held that
there is a striking similarity and affinity of sound between
the words „Ambal‟ and „Andal‟. The Supreme Court
further held that even if there be no visual resemblance
between the two marks, that does not matter when there is a
close affinity of sound between the words which are
distinctive features of the two marks. It is interesting to
note that even after the manufacture of Sri Andal Snuff
changed it into Radha‟s Sri Andal Madras Snuff, this Court
in the decision in K.R.C. Chetty v. K.V. Mudaliar; AIR
1974 Mad. 7, held that it still would infringe the right of
the plaintiff and prevented the use of that mark. The
addition of words, in the opinion of the Bench, makes no
difference….”
24. In view of the aforesaid discussed and settled law, this Court
is of the view that the two marks RANA/RANATOR and RAN INDIA
used by the defendant are deceptively similar and such use by the
defendant is in violation of the two orders passed by this Court on
14.8.2007 and 25.3.2008.
25. In the case of Businessmen’s Association and Ors. Vs.
Howrah, Municipal Corporation and Ors., AIR 2001 SC 2790, the
Supreme Court observed as under :
“8. ….If courts are not to honour and implement their own
orders, and encourage party litigants – be they public
authorities, to invent methods of their own to short circuit
and give a go-bye to the obligations and liabilities incurredCS (OS) No.1459/2007 Page 12 of 15
by them under orders of the court – the rule of law will
certainly become a casualty in the process – a costly
consequence to be jealously averted by all and at any rate
by the highest Courts in States in the country…..”
26. I, therefore, allow this application being I.A. No.13619/2008
as in view of my discussion, I hold the defendant guilty of contempt.
However, considering the circumstances in the matter and in the interest
of justice, equity and fair play, this Court grants one more opportunity
to the defendant to comply with the orders dated 14.08.2007 and
25.03.2008. The defendant is directed to comply with the above stated
orders within four weeks from today and to file its affidavit in this
regard within the same time. In case of failure to do so, the Executive
Director of the defendant shall remain present in Court on 24.02.2010 in
person for purging the contempt. The plaintiff is also entitled to costs
quantified at Rs. 10,000/- to be paid to the plaintiff within four weeks.
27. Now I shall deal with the IA No.13618/2008 under Order
XXVI Rule 9 CPC. In view of the facts mentioned n the earlier part of
the order, I am of the view that it has become necessary to allow the
prayer in this application due to the reason that it is an admitted fact that
at the time of passing the interim order, there was exiting stock of 3,000
metric tonnes of steel in possession of the defendant. The defendant
filed the application being IA No.1330/2008 to dispose of the said
existing stock lying at the premises of the defendant. However, the
prayer in that application was not allowed by the Court at the time of
confirmation of the order dated 25.3.2008 and the said stock was
disposed of after re-cycling as alleged by the defendant, but the same
CS (OS) No.1459/2007 Page 13 of 15
was done without the permission of the Court. The defendant‟s
contention is that the said stock was in possession of the defendant at
the time of passing of the order of injunction and the said stock was
recycled by melting the same and has been reused for the manufacturing
of the goods bearing the trademark which is not the subject matter of the
case. The contention of the defendant is denied by the plaintiff but it is
true that the defendant has failed to disclose in the reply under which
trade mark the said material was reused by the defendant. It is my
considered opinion that the defendant was using the trade mark
RANATOR prior to the passing of the injunction order, the same is of
no consequence at all, in fact, it shows the dishonest intentions of the
defendant.
28. Mr. Sharath Sampath, Advocate (Mobile No. 9818903313) is
appointed as Local Commissioner who shall visit the premises/godown/
manufacturing unit of the defendant at M/s. Ran India Steels Pvt. Ltd.,
Iyeappa Tower, Ist Floor, Opposite Selva Vinaynagar Kovil, C.H.B.
Colony, Tiruchengode – 637211 or any other place where the account
books of the defendant including ledger, cash register, stock, registered
invoices, book etc. are kept within two weeks from today and to verify
as to whether the defendant is still using the trademark RANATOR as
alleged by the plaintiff or not and in addition to that the Local
Commissioner is also permitted to examine the account books of the
defendant including ledger, cash register, stock, registered invoices,
book etc. for the purposes of disposing of the stock of 3,000 metric
tonnes of steel which was in possession of the defendant at the time of
CS (OS) No.1459/2007 Page 14 of 15
confirmation of the interim order dated 25.3.2008 till date and get all the
details from the defendant about the said stock. The Local
Commissioner shall also record the statement of the defendant at the site
under which trademark the said alleged stock of 3,000 metric tonnes of
steel was disposed of after recycled/reused. The defendant shall provide
full cooperation in this regard. If necessary, the Local Commissioner
shall also take the local police‟s assistance for the purposes of execution
of the proceedings. The fee of the Local Commissioner is fixed at Rs.
25,000/- per day excluding the other expenses including travelling,
lodging and other out of pocket expenses to be paid by the plaintiff.
29. IA No.13618/2008 is also disposed of.
CS(OS) No. 1459/2007
List before the Joint Registrar on 15th March, 2010.
MANMOHAN SINGH, J.
JANUARY 14, 2010
jk
CS (OS) No.1459/2007 Page 15 of 15