Trademark Infringement Through Allied & Cognate Goods- Hon’ble Delhi High Court Grants Ex-Parte Ad-Interim Injunction

10th January, 2023 - 5:47 am Categories: Legal Issues Trademark 0 Comments

Introduction

As a settled proposition of law, ex-parte injunctions are granted by the court only in exceptional cases. In IPR matters, specifically in cases of trademark infringement, the plaintiff, out of several remedies, has the option of asking for an ex-parte injunction. While observing the principles on which the court may grant an ex-parte injunction in cases of trademark infringement, the court enumerated that in such matters it would grant an ex-parte injunction when non – grant of the same would leave the relief prayed for in the suit, infructuous and where the trademark used by the defendants is identical or nearly identical to the plaintiff’s trademark.[1]

In the present case of Samit Pramod Gupta & Ors. v. Neeraj Sharma & Ors [CS (COMM) 896/2022], the plaintiff, is the registered proprietor of multiple “NEULIFE” trademarks, alleged that the defendant No.1 & 2 have infringed their NEULIFE trademarks by adopting and using a trademark identical to “NEULIFE”. For seeking a remedy against the alleged infringement of the trademark, the plaintiffs filed an application, praying for grant of ex-parte injunction.

Factual background of the case:

The Plaintiffs had filed he instant suit, iner alia, seeking permanent injunction restraining infringement of trademark, passing off and rendition of accounts, damages, among ancillary reliefs.

The plaintiffs filed four applications before the Hon’ble Court:

1. Exemption from institution of pre-litigation mediation (under section 151 of CPC, 1908)
2. Exemption from advance services upon defendants (under section 151 of CPC, 1908)
3. For ex parte ad interim injunction (under Order XXXIX Rule 1 & 2 r/w Section 151 CPC, 1908)
4. For seeking appointment of Local Commissioner (under Order XXVI Rule 6 & Order XXXIX Rule 7 r/w Section 151 CPC, 1908).

To state the facts of the case briefly, the plaintiffs, Samit Pramod Gupta, director of Neulife Nutrition India Pvt. Ltd ,Neuvera Wellness Venture Pvt. Ltd & Partner of Neulife Nutrition Systems, claimed to be a registered proprietor of “NEULIFE” trademark, which were registered under Class 35 (trading importing distribution, marketing, selling goods on wholesale and retails through commerce channel running a chain of outlets of sports nutrition supplements, dietary supplements, protein powder and the like, goods, administrations and management of the above business) and Class 5 (protein powder, imports, distribution and relating of food supplements; and nutritional supplements, dietic foods, protein powders, vitamin supplements and ketogenic food stuffs for athletes and sportsmen). Plaintiffs, claim that they devised, adopted and have been using the “NEULIFE” trademarks and other similar marks in relation to the products under Class 5, for past two decades and have built good reputation and goodwill over the years.

[Image Source : Getty image]

The Plaintiffs operate their business under the trademark “NEULIFE” through 65 stores spread across India, Nepal, Sri Lanka and Bangladesh and also through e-commerce website such as Amazon India, Flipkart, Jio Mart etc. Plaintiffs also sell their goods online through their website “neulife dot com” The plaintiffs also incorporated in the plaint a detailed account of the year wise consolidated sales and advertisement/ promotional expenses of Neulife Nutrition India Pvt. Ltd and Neuvera Wellness Venture Pvt. Ltd, in order to show their goodwill and reputation along with the turnover qua the mark “NEULIFE”.

The Defendant No.1 Mr. Neeraj Sharma, on the other hand, is the proprietor of Defendant No.2-Sia Ram Industries. The Defendant Nos. 1-2 has adopted “NEULIFE” marks in relation ‘allied and cognate’ goods being fitness related equipments such as dumbbells, thumb and wrist support, badminton steel rackets etc and has been infringing upon the trademark of the plaintiffs by selling and advertising his products under the trademark identical to that of plaintiffs’ trademark.

This led to the plaintiff filing an application requesting for grant of ex parte injunction and appointment of local commissioner, in order to restrain the defendants from infringing upon the trademark of the plaintiff and passing off the goods under the trademark identical to that of plaintiff’s mark.

Arguments advanced by Plaintiffs:

   The arguments presented by the plaintiff are as follows:

1. The defendant is selling his goods under the trademark “NEULIFE” on e-commerce websites such as Amazon India, Flipkart. Plaintiff argued that such use of the trademark by the defendant would create confusion in the minds of the public. The plaintiff substantiated his arguments by producing the screenshots from Amazon India’s website wherein the defendant has been selling his products under the trademark “NEULIFE”.
2. By relying upon those screenshots the plaintiff pointed out that the defendants products are listed alongside plaintiffs’ products on the website of Amazon India under the store name “NEULIFE STORE”, which is likely to confuse users on amazon, making them believe that the “Neulife Store” is that of the Plaintiffs. Based on this fact, the plaintiffs argued that such placement of Defendant Nos.1-2’s products is bound to create an impression to customers that plaintiff has expanded its operations into the field of allied products of training weights.
3. The Plaintiffs also contended that he has registered his trademark under Class 35 and Defendant No.1 & 2’s act of running an outlet/store (even though online) under the trademark “NEULIFE”, would amount to infringement would amount to infringement under section 29(1) of the trademarks act, 1999.
4. Conclusively, the Plaintiffs contended that the Defendant No.1-2 are taking unfair advantage of the well known and reputed image of the Plaintiffs’ well known marks which is garnered by him over the years.
5. The Plaintiff salso pointed out that they had first entered into a settlement with the Defendant No.1 wherein the latter has promised to refrain from using the trademark “NEULIFE”. But the Defendant No.1 failed to keep his promise and the Plaintiffs, therefore has no option left other than filing an application for ex parte interim injunction.
6. Lastly, for making a request for appointment of a Local Commissioner, the Plaintiffs put forth the contention that the defendants even after having a complete knowledge about the existing trademark of the plaintiff has adopted and promoted his goods under the trademark “NEULIFE” with the intention to ride upon plaintiff’s goodwill and reputation.

Decision of the Hon’ble Court-

After taking into account the submissions made by the plaintiffs, the court found that the arguments presented by the Plaintiffs and the documents filed in support of those arguments, sufficiently demonstrates that:

1. The Plaintiffs have made a prima facie case of infringement of trademark in their favor;
2. If no ex parte injunction is granted in favor of the Plaintiffs then he will suffer an irreparable loss;
3. Balance of convenience also lies in the favor of the Plaintiffs.

Based on the above observations the court granted an ex parte injunction in favor of Plaintiffs and restrained the Defendant No.1 & 2’s directors, employees, officers, servants, agents and all others, acting for and on behalf of the Defendant no 2 (i.e. Sia Ram Industries) from manufacturing, using, selling, distributing, advertising, exporting, offering for sale, and dealing in any other manner, directly or indirectly, any product bearing the infringing mark “NEULIFE” or any other mark deceptively similar to the plaintiff’s mark.

Further while deciding the application for appointment of local commissioner, the court while allowing the same appointed a local commissioner and issued certain direction to her which are as follows:

1. To enter upon the premises of the defendant and seize any material using the mark “NEULIFE” or any other mark deceptively similar to the same.
2. To make copies of books of accounts, ledger etc.
3. To file the report within two weeks from the execution of the commission.

Author: Vikramaditya Singh, Litigation Associate at Khurana & Khurana Advocates & IP Attorneys, in case of any queries please contact/write back to us via email to vikram@khuranaandkhurana.com.Neulife- Injunction Order

“A copy of the Order Dt. 22.12.2022 in the present matter can be accessed here. ”

[1] Munish Kumar Singla Trading as Chakshu food Product v. Jollibee Foods Corporation, 2017 SCC OnLine Del 11823.