TaxTMI 
TaxTMI 
2021 (5) TMI 1087
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....Parvinder Singh Bhatia, (vi) Charanpal Singh Bhatia, (vii Satbir Singh Bhatia and (viii) Soumita Mitra wife of Simardeep Sing Bhatia, for permanent injunction to restrain infringement of trade mark an passing off and for ancillary reliefs. 2. The appeal came up first before us on 17th February, 2021 an thereafter on 1st March, 2021, when the counsel for the respondent/plaintiff appeared on advance notice. Finding, (a) that the respondent/plaintiff, for the same reliefs as claimed in the suit from which this appeal arises, ha earlier invoked the territorial jurisdiction of the Courts at Bilaspur Chhattisgarh; (b) that the said Court had declined interim relief to the respondent/plaintiff; (c) that the appeal of the respondent/plaintiff to the High Court of Chhattisgarh had also stood dismissed; (d) that the respondent/plaintiff thereafter withdrew that suit with liberty to file again (e) that it was thereafter that the suit, from which this appeal arises, was instituted at Delhi; (f) that the respondent/plaintiff, in Delhi had succeeded in getting the interim relief which was declined to it by the Court at Bilaspur as well by the High Court of Chhattisgarh; and, (g) that the impugn....
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....er Singh Bhatia and Pawandeep Singh Bhatia, Directors of respondent/plaintiff, and (b) the businesses of manufacture of mining machinery and spares in the names of appellant/defendant No. 1 Black Diamond Track Parts Pvt. Ltd., appellant/defendant No. 2 Black Diamond Equipments Pvt. Ltd. and Pawan Industries and of Hotels in the name of Blue Diamond Associates, came to the share of appellant/defendant No. 5 Parvinder Singh Bhatia; (vii) that all family members jointly agreed not to interfere or to compete in one another's business and it was agreed that neither party shall enter into the business of the other party under the Black Diamond formative/artistic/trade name/trade mark/label; (viii) that the aforesaid family settlement was implemented; (ix) that in view of said family settlement, the respondent/plaintiff, since the year 2005 has been using the mark 'BLACK DIAMOND' in relation to subject goods and has acquired goodwill with respect thereto; (x) that the respondent/plaintiff, on 22nd July, 2009 also applied for registration of the trade mark 'BLACK DIAMOND' and its formative variants in relation to goods under Class 12 viz. subject goods; (xi) that the ap....
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....are also in violation of the family settlement and injurious to the respondent/plaintiff and intended to deceive the purchasers; (xxv) that the respondent/plaintiff, in June, 2018, filed a suit before the District Judge, Bilaspur, Chhattisgarh, seeking to restrain the appellants/defendants from using the mark 'BLACK DIAMOND' in relation to the subject goods; (xxvi) however the Court of the Additional District Judge, Bilaspur, before which the said suit was pending, vide order dated 6th August, 2019, dismissed the application of the respondent/plaintiff for interim relief; (xxvii) that the respondent/plaintiff filed an appeal to the High Court of Chhattisgarh, against the dismissal of the application for interim relief, but the said appeal was also dismissed on 24th October, 2019; and, (xxviii) that as the respondent/plaintiff felt necessity to incorporate more facts in the plaint, the respondent/plaintiff filed an application in the Court of the Additional District Judge, Bilaspur, before which the suit was pending, to withdraw the said suit with liberty to apply afresh, and which suit was dismissed as withdrawn with liberty to file afresh, on 4th January, 2020. 5. The sui....
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....ed from the group/family, in December, 2013; (h) that no restraint/restriction on use of the trade mark 'BLACK DIAMOND', by the Directors/Promoters of the other Black Diamond Group of Companies, in relation to any goods, was ever agreed to; (i) that the respondent/plaintiff and the appellants/defendants not only share 'BLACK DIAMOND' as a name but also as a trade mark, for whichsoever business in whichsoever goods they may carry on; (j) that since the businesses were being carried on through the vehicles of companies, there could have been no oral settlement as claimed by the respondent/plaintiff and had there been any settlement as claimed by the respondent/plaintiff, the same would have been reflected in the resolutions of the Board of Directors of the said companies; (k) that even if there were any deficiencies in the plaint in the suit filed by the respondent/plaintiff at Bilaspur and for the reason whereof the said suit was required to be withdrawn, the fresh suit ought to have been filed in the Courts at Bilaspur only, where the respondent/plaintiff as well as the appellants/defendants are carrying on business and the filing of the present suit at Delhi shows ....
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....rder, has recorded the pleas and contentions of the respondent/plaintiff and/or of the counsel for the respondent/plaintiff; (ii) thereafter, in paragraphs 16 and 17 has recorded the pleas and contentions of the appellants/defendants and their counsel; (iii) in paragraphs 18 to 21, has discussed the law in general relating to ingredients of prima facie case, irreparable loss and injury and balance of convenience, required to be satisfied for granting an interim injunction; (iv) in paragraph 21 has observed, that to an ordinary, unwary customer and purchaser, use of trade mark/label 'BLACK DIAMOND' is quite likely to cause confusion regarding the true source of the goods; and, (v) thereafter, in paragraph 22, has allowed the application of the appellants/defendants for interim relief and restrained the appellants/defendants as aforesaid. 8. It would thus be evident, that in the impugned order, there is no discussion or analysis of the merits of the pleas and contentions of the respective parties and no reason given, why the Commercial Court accepted the arguments and contentions of the counsel for the respondent/plaintiff and rejected the arguments of the counsel for the ap....
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....ntiff commenced business in the subject goods under the mark 'BLACK DIAMOND' as well as at the time when the registration thereof was applied in the year 2009 and till grant thereof in January, 2014. 11. The contention of the senior counsel for the respondent/plaintiff qua Query No. (I) aforesaid is, (a) that once the Court at Bilaspur has permitted the respondent/plaintiff to withdraw the suit with liberty to file afresh, the said suit is deemed to have been wiped out and of no avail and denial of interim order therein to the respondent/plaintiff cannot come in the way of the respondent/plaintiff being entitled to interim order from this Court; (b) that the plaint in the suit filed at Bilaspur was very sketchy and all the requisite pleas had not been taken; it was for this reason that the respondent/plaintiff chose to withdraw the suit and was granted permission therefore, to file a plaint taking all the requisite pleas; (c) that all the requisite pleas have been taken in the plaint filed in the suit at Delhi and on the basis whereof the respondent/plaintiff has been found to have made out a case for ad-interim injunction; and, (d) that no question of comity of Courts or ....
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....relief, as well as the order of the High Court of Chhattisgarh, of dismissal of appeal preferred there against and find the said Courts to have held, (i) that the respondent/plaintiff had concealed that there were family relations between the Directors of the respondent/plaintiff and the appellants/defendants companies; (ii) that the respondent/plaintiff had not approached the Court with clean hands; (iii) that the respondent/plaintiff made 'BLACK DIAMOND' its brand, at a latter point of time than the appellants/defendants and the appellants/defendants were the former users of the 'BLACK DIAMOND' brand and logo and could not be stopped from doing their business under the said brand and logo; (iv) that while the appellants/defendants companies had been using the brand 'BLACK DIAMOND' since the year 1983, the respondent/plaintiff was incorporated only in the year 2005 and obtained registration of the mark only in the year 2014; (v) that in such a situation, the business of the appellants/defendants would be affected if temporary injunction was issued; (vi) that no relevant documents had been produced to show that the respondent/plaintiff was suffering in any m....
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....during the hearing that a large number of coal mining companies who are purchasers of equipment therefore including the Class 12/subject goods, have their offices at Delhi and thus Delhi Courts also have jurisdiction. 19. The senior counsel for the respondent/plaintiff contended, that Delhi is the capital, also of Intellectual Property Rights disputes and the lawyers and the Courts at Delhi deal with a large number of trade mark cases and for this reason, the respondent/plaintiff chose to take a second chance at Delhi, rather than at Bilaspur. 20. Though there can be no doubt that once the suit is permitted to be withdrawn with liberty to file afresh, no pleas, on the basis thereof can be taken in the subsequent suit, of Order II Rule 2 of CPC or of res-judicata etc., but in our view nothing prevents the Court from, at least at the stage of grant/non-grant of interim relief, taking notice of the said facts to test the bona fides of the respondent/plaintiff. 21. Taking notice of the aforesaid facts, it is found, that the respondent/plaintiff, in its anxiety and keenness to immediately restrain the appellants/defendants from using the mark 'BLACK DIAMOND' in relation to th....
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....oldings Limited supra is concerned, the same merely holds that the orders passed during the pendency of a suit which has been withdrawn, lapse on withdrawal of the suit; the same nowhere lays down that the pleadings in a suit which has been withdrawn, cannot be looked at for the purposes of admission, adverse inference etc.; the same also nowhere lays down that such a suit cannot be looked at to adjudicate the plea of re-litigation or abuse of the process of the Court. 24. The counsel for the appellants/defendants in his written arguments, in this context has made apposite reference to, (a) Union of India Vs. Cipla Ltd. (2017) 5 SCC 262. The same unequivocally holds, "A classic example of forum shopping is when a litigant approaches one Court for relief but does not get the desired relief and then approaches another Court for the same relief" and "Another form of forum shopping is taking advantage of a view held by a particular High Court in contrast to a different view held by another High Court" and "Another category of forum shopping is approaching different Courts for the same relief by making a minor change in the prayer clause of the petition"; and, (b) Allied Blenders and D....
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....of injunction against the appellants/defendants. The Commercial Court, though wrote a long order granting the ex-parte injunction, chose not to deal with the factum of the earlier suit and denial of interim injunction till the stage of the High Court therein. Similarly, in the impugned order, though the same is noticed as a plea/contention of the counsels but again, there is no discussion, as aforesaid, as to why the respondent/plaintiff, inspite of having indulged in forum shopping, was entitled to interim injunction. The respondent/plaintiff has in the pleadings, not given any plausible reasons for indulging in such conduct. Unlike in a shop in a market place, no litigant can be permitted to move from one Court to another, trying his/her luck and/or bargain. 29. We are thus of the view that the respondent/plaintiff was/is not entitled to interim injunction and the appeal is entitled to be allowed, on this ground alone. 30. However, for the sake of completeness, we may deal with the merits of the matter also. 31. Qua our Query No. (II) supra, we may notice that the respondent/plaintiff, in the suit from which this appeal arises, has pleaded: "All members jointly pledged not t....
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....turned dishonest. 33. The senior counsel for the respondent/plaintiff has not been able to make any arguments qua our Query No. (II) above and has not been able to prima facie establish any such agreement as pleaded to be part of any family settlement. Merely because in the separation between two branches of the family, the company through the vehicle of which the family was carrying on business in the subject goods, fell to the exclusive share of Pushpinder Singh Bhatia, does not ipso facto lead to the inference that Parvinder Singh Bhatia and his son Raminder Singh Bhatia had agreed not to carry on business in the subject goods or through the vehicle of the companies which had fallen to their exclusive share and the name of which companies also has 'BLACK DIAMOND' as component thereof. Once Parvinder Singh Bhatia and his son Raminder Singh Bhatia have been carrying on business in mining equipment under the trade mark 'BLACK DIAMOND', ordinarily business in cognate and allied goods relating to mining industry would also be under the trade mark 'BLACK DIAMOND', to reap advantage of the goodwill thereof. 34. The contention of the senior counsel for the resp....
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....dentical with or nearly resembling it, in relation to goods or services in relation to which that person or his predecessor in title has continuously used that trade mark, from a date prior to the use of the said trade mark by registered proprietor thereof in relation to those goods or services or prior to the date of registration of the trade mark in respect of those goods or services in the name of the proprietor thereof, whichever is the earlier. 39. What emerges from the pleadings and contentions of respondent/plaintiff itself is, (a) that the mark 'BLACK DIAMOND' was adopted by the family of the Directors of the respondent/plaintiff and the appellants/defendants, as far back as in the year 1983 and was used qua all the businesses commenced by the family through different entities/companies viz. appellants/defendants No. 1&2; (b) that the respondent/plaintiff company was incorporated in the year 2005 and the business in subject goods falling in Class 12, was commenced through the vehicle of the respondent/plaintiff, also using the same mark 'BLACK DIAMOND'; (c) that appellants/defendants No. 5 & 3 Parvinder Singh Bhatia and his son Raminder Singh Bhatia as well....
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....ing the mark 'BLACK DIAMOND' in respect to Class 12 goods also. Rather, the respondent/plaintiff, incorporated in the year 2005, became entitled to use the mark 'BLACK DIAMOND' in relation to Class 12 goods, only for the reason of being a company incorporated by the Bhatias aforesaid, who and their predecessors had adopted the said mark way back in the year 1983 and who were using the said mark for all their mining businesses. In such a situation, it is not open to Pushpinder Singh Bhatia who is now in control of the respondent/plaintiff, to, using the garb of a corporate veil, contend that the other family members viz. Parvinder Singh Bhatia and his son Raminder Singh Bhatia who till 31st March, 2014 were part and parcel of respondent/plaintiff, were not using the mark 'BLACK DIAMOND' for Class 12 goods. 42. Supreme Court, in Sohan Lal Vs. Amin Chand (1973) 2 SCC 608 held that on dissolution of a partnership between three brothers, the two brothers who decided to carry on the same business by constituting another partnership, were not entitled to appropriate the trade marks of the erstwhile partnership and to restrain the third brother from use of the said....
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....nts/defendants having used the trade mark 'BLACK DIAMOND' with the permission of respondent/plaintiff; rather here the appellants/defendants were using the trade mark 'BLACK DIAMOND' in their own right, including with respect to the subject goods. 44. During the hearing, we enquired from the senior counsel for the respondent/plaintiff, whether at the time of obtaining registration of the label mark with respect to Class 12 goods, it was informed that the appellants/defendants were also using the mark 'BLACK DIAMOND' or that the use by the respondent/plaintiff of the said mark, was under permission from members of the Bhatia family. 45. The answer was in the negative. 46. We may also notice that the registration in favour of the respondent/plaintiff is not of a word mark but of a label mark. Once as held above, the appellants/defendants, at least at the interim stage cannot be restrained from using the mark 'BLACK DIAMOND' even in relation to Class 12 goods, a comparison of the label of the respondent/plaintiff with the label of the appellants/defendants, on the premise that both are entitled to use 'BLACK DIAMOND', shows that the two canno....