PLAINTIFF[1]:
The plaintiff is a private limited company registered under the Indian Companies Act of 1956 that manufactures, sells, markets and trades plastic-molded furniture, including individual and group seating systems, dining gardens, and other related goods falling under Class 20. Initially, the plaintiff operated the aforementioned goods and business under the name Baker Industries Pvt. Ltd., which was established on 02.02.2000 in accordance with the Indian Companies Act 1956. Subsequently, the company’s name was changed to Avon International Pvt. Ltd. via SRN A31905490 dated 26.02.2008, and then again via SRN B24081051 dated 04.11.2021 to Modern Mold Plast Pvt. Ltd. Additionally, the plaintiff also has a sister concern known as Alcanes Furniture India Pvt. Ltd. The plaintiff operates the aforementioned products under the MAHARAJA trademark as well as other MAHARAJA potential trademarks listed in Class 20 applications, including but not limited to “MODERN MAHARAJA,” “MUKUT MAHARAJA,” “METRO MAHARAJA,” and “OMAHARAJA.”
Plaintiff applied for registration of its Mark Maharaja under application number 2872185 on December 30, 2014, with a user claim dating back to January 1, 2009, which is also the subject of opposition before the concerned registration. Plaintiff had honestly and with bonafide intentions adopted the aforementioned trademarks/labels for expansion in Class 20 in 2009. Furthermore, it is claimed that the plaintiff is using the aforementioned trademarks and labels to conduct online commerce through its interactive websites, modernmoldplast.in and alcanesindia.com.
DEFENDANTS:
Defendants No. 1, Mr. Rajendra Vardichand Jagetia, doing business as M/s. Maharaja Furniture, and defendant no. 2, Ms. Priyanshi Rajendrabhai Shah, doing business as M/s. Maharaja International, are in the business of producing, marketing, trading, selling, offering for sale, soliciting, transporting, and supplying plastic-moulded furniture, including, among other things, individual and group seating systems, dining gardens, mattresses, and related goods/services.
ISSUES:
As per the plaintiff the defendants have ill-adopted the trademarks/labels MAHARAJA, MAHARANA, and MAHARAJA INTERNATIONAL. The contested trademarks and labels are completely similar to the plaintiff’s claimed trademarks and labels in all respects, including structure, phonetics, concept, visual appeal, fundamental idea, key characteristics, etc. Additionally, the defendants deceptively registered the domain name https://maharajamouldedfurniture.com/. The defendant no. 1 has also filed its opposition proceedings to the plaintiff’s applications nos. 2872185, 4197904 to 906 for class 20 goods, which the plaintiff is contesting. The plaintiff had already started opposition/rectification proceedings against defendant’s marks before the relevant trademark office.
PROCEEDINGS:
Summons were issued to the defendants pursuant to which written statement was filed only by defendant no 1 and the counsel for defendant no. 1 informed that the defendant no. 2 has already withdrawn the trademark application filed by M/s. Maharaja International vide letter dated 16.08.2022. In the reply to application under Order 39 Rule 1 and 2 and the written statement filed, the defendant contended that the plaintiff’s suit is liable to be returned as it lacks territorial jurisdiction.
Submission made by the defendant:
The counsel for the defendant submits that plaintiff is based at Agra and defendants are based in Ahmedabad and the suit has been filed in Delhi although no cause of action arose in Delhi. He further contended that mere hosting of a website which can be accessible from anyone from within the jurisdiction of the Court is not sufficient for invoking jurisdiction. Defendant counsel concludes that the triple test of prima facie case, balance of convenience and irreparable injury is not made out in the present case and the plaintiff has not established any of the essential ingredients of the Triple test and hence the application U/o 39 Rule 1 and 2 CPC filed by the plaintiff is liable to be dismissed.
The defendant no. 1 submits that “MAHARAJA” is a common descriptive word which is commonly used by the furniture business. Further the word “MAHARAJA” is publici juris and that the plaintiff cannot have any monopoly over the descriptive and publici juris word “MAHARAJA”. The defendant contends that no ocular or visual, structurally similarity exists between the rival labels/marks. It is further contended that the plaintiff has no right over the word ‘MAHARAJA’ per se.
Submission on behalf of the plaintiff:
The counsel for the plaintiff submits that the plaintiff is the prior adopter of the trademark ‘MAHARAJA’ with a user claim of 01.01.2009 under class 20 and that the defendant no.1 has filed the trademark Application for MAHARAJA vide No. 3020819 with user date of 10.02.2015. Further defendant no.1 himself has filed for the registration of the trademark MAHARAJA therefore he cannot claim that the same is descriptive, generic or laudatory in nature. It was submitted that the defendant himself acknowledged that he had purchased goods several times from the plaintiff in the year 2017, and this indicates that the defendant no.1 himself endorses the products of the plaintiff since they purchased the goods from the plaintiff multiple times. The counsel for plaintiff concludes by stating established judgements that suggests prior user of a trademark would always trump a registration and a prior user would have superior rights over a trademark owner.
Court:
Based on the averments of the plaintiff, that the defendants had all the intentions to further use the impugned trademarks/labels in the markets of South Delhi and that the cause of action for filing the present suit arose wholly or in part within the territorial jurisdiction of this Court within the meaning of the provision of Section 20 (c) of CPC, the Court does not find any merits in defendant’s contention that this Court lacks territorial jurisdiction to entertain the present suit.
With respect to the impugned trademark, the Court relied on various judgements:
Midas Hygiene Vs Sudhir Bhatia’, 2004 (28) PTC 121 SC’, Court held that “The law on the subject is well settled. In cases of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest.”
Marico Limited Vs. Mukesh Kumar’ CS (COMM) 1569/2016: The Delhi High Court has held Acquiescence cannot be inferred merely on account of the fact that the plaintiff had not taken any action for infringement of its rights.
M/s. Ansul Industries Vs. M/s. Shiva Tobacco Company‘, ILR (2007) I Delhi 409: “A person who had deliberately infringed upon another’s mark, it was held, cannot complain and hide behind defense of delay laches or acquiescence, as the infringement at the very initial stage itself was fraudulent. Delay and laches by itself would not bestow fraud with character of legality.”
The court concluded on the subject of the impugned mark that ““Maharaja” being descriptive and publici generis that the said contention of the defendants is self-destructive as the defendant no.1 himself claimed exclusive right to use the mark MAHARAJA vide his trademark Application no.3020819. It is settled law that a person cannot be permitted to approbrate and reprobate i.e. one cannot be allowed to take contrary stands qua the same claim”.
The court was also of the opinion the mere mention of the word ‘MAHARAJA’ does not direct anyone immediately to plastic/ moulded furniture. It requires a leap of mind to connect the word ‘MAHARAJA’ with plastic products. Accordingly, the contention of the defendant’s counsel that the plaintiff’s mark ‘MAHARAJA’ is generic or merely laudatory is devoid of any merits and the same is rejected.
CONCLUSION:
The application U/o 39 Rule 1 and 2 CPC filed on behalf of the plaintiff was allowed and disposed of accordingly. The court directed both the parties to file affidavit of admission/denial within four weeks with advance copy served to the other side. ARs of the parties were directed to remain present on the next date. The matter was put up for admission/denial of documents/framing of issues and Case Management Hearing.
[1] CS (COMM) 144/21 Modern Mold Plast Pvt. Ltd. Vs. Rajendra Vardichand Jagetia
DUCTUS EDGE 