MALLCOM (INDIA) LIMITED vs SHANTI UDYOG WELDSAFE PRIVATE LIMITED & ORS.

$~28
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 10th April, 2024.
+ CS(COMM) 85/2024 & I.A. 5877/2024
MALLCOM (INDIA) LIMITED ….. Plaintiff
Through: Mr. Afzal B. Khan, Mr. Sharad Besoya and Ms. Suhrita Majumdar, Advocates.

versus

SHANTI UDYOG WELDSAFE PRIVATE LIMITED & ORS.
….. Defendants
Through: Mr. N. Mahabir, Advocate.

CORAM:
HON’BLE MR. JUSTICE SANJEEV NARULA
JUDGMENT
SANJEEV NARULA, J. (Oral):
I.A. 2171/2024 (seeking exemption from filing certified/original copies)
1. Exemption is granted, subject to all just exceptions.
2. The Applicant shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
3. Disposed of.

I.A. 2172/2024(on behalf of Plaintiff seeking leave to file additional documents)

4. Plaintiff has already filed additional documents within the time permissible and therefore, relief sought in the present application is rendered infructuous. Additional documents are taken on record.
5. Disposed of.
I.A. 8114/2024(on behalf of Plaintiff seeking condonation of delay)
6. For the grounds and reasons stated in the application, the same is allowed. Delay of 15 days in filing replication is condoned. Replication is permitted to be taken on record.
7. Disposed of.
I.A. 8176/2024(u/O VI Rule 17 r/w Section 151 of CPC on behalf of Defendant)

8. Through this application, Defendants seek to introduce further defences to their written statement.
9. Issue notice. Mr. Afzal B. Khan, counsel for Plaintiff, accepts notice.
10. Considering the Plaintiff’s insistence on a decision regarding the interlocutory application for an injunction, coupled with the early stage of the proceedings where pleadings are yet to be finalized, the Court has chosen not to call for a reply to the above-captioned application and is inclined to directly address the arguments presented by both sides. Furthermore, the Court is of the opinion that if the proposed amendments are to be allowed, then the Defendants must not be precluded from raising the same at the time of deciding the interlocutory application. Thus, decision on this application must be rendered before dealing with the application under Order XXXIX Rules 1 & 2 of the Code of Civil Procedure, 1908.
11. Mr. Khan asserts that the proposed amendments to the pleadings are not pertinent to the issues raised in the application and argues that there are no substantial reasons disclosed for Defendants’ failure to include these defences in their initial written statement. Therefore, he argues that there is no justifiable cause for permitting such amendments.
12. In considering the objections to the application for amendment, the Court is guided by the well-established jurisprudence that favours a liberal approach to the amendment of pleadings. This approach is predicated on the principle that allowing amendments enables a more thorough and fair adjudication by ensuring all relevant matters and defences can be considered. The proposed amendments do not involve retracting any prior admissions made in the written statement; rather, they seek to elaborate on the defences already claimed and introduce additional grounds to contest the lawsuit. Given these considerations, and the fact that the amendments aim to provide a detailed explanation of the Defendants’ positions without contradicting existing admissions, the Court finds no substantial basis to reject the Defendants’ request for amendment. Such amendments are deemed necessary for the effective and comprehensive resolution of the matters at issue.
13. In light of the above, the instant application is allowed, and the proposed amendments are permitted to be added to the written statement. It is made clear that amended written statement shall be strictly in conformity with the proposed amendments which have been mentioned in paragraph No. 3 of I.A. 8176/2024.
14. Disposed of.

I.A. 8255/2024(on behalf of Defendants seeking leave to file additional documents)

15. In light of the fact that Defendants have been permitted to amend their written statement, their request for producing additional documents is also allowed. The documents filed vide index dated 06th April, 2024 are permitted to be taken on record.
16. Disposed of.

I.A. 2166/2024(u/O XXXIX Rules 1 and 2 of CPC)
17. Plaintiff, Mallcom (India) limited, is a public limited company engaged in the business of industrial safety products including safety shoes. In the present suit, they seek to protect their registered trademark “TIGER”.
18. The Plaintiff has incurred huge expenses in marketing its products (safety shoes) bearing the mark “TIGER” and the same has been effective as evident from the sales turnover for the year 2022-2023 being 121.6 crores, details of which are mentioned in paragraphs 14 and 15 of the plaint.
19. Plaintiff has several registrations for the trademark “TIGER” and has applied for registration of its variants, which have been mentioned in paragraph 17 and 18 of the plaint. Status of such pending applications has undergone a change since the filing of the suit. As on date, Plaintiff has following registered marks:

Trade Mark
Application No.
Date of Application
Class
Status
TIGER (word)
1988452
02.07.2010
9
Registered

1974253
02.06.2010
9
Registered

2041496
21.10.2010
9
Registered

20. Apart from the above registrations, there is another trademark application for the wordmark “TIGER” bearing no. 1957091 filed on 28th April, 2010 in Class 9, which is pending. All the aforementioned trademarks, including the subject mark of the pending application, are associated with safety shoes (Class 9).
21. The Plaintiff has also acquired copyright registration for the following marks:

22. Defendant No.3 is engaged in the manufacturing of safety shoes bearing the mark “CD TIGER” (Label) and Defendants No.1 and 2 are engaged in the marketing of the said products. Defendant No.1 is also operating a website- www.cdtiger.com.
23. The Plaintiff is aggrieved by Defendant No.1’s mark “” (“Impugned mark”), bearing No. 2673671 registered on 6th February, 2014 with user claim since 20th June 2013. The Plaintiff alleges that the Impugned mark was registered in a dishonest, wrongful, and unlawful manner, arguing that it is identical or deceptively similar to their registered trademark “TIGER”. They contend that such registration is not only ex facie unlawful and fraudulent but also infringes on their rights to the “TIGER” trademark, under both statutory and common law. This alleged infringement violates the Plaintiff’s long-established trademark rights in the field of safety shoes, thereby potentially misleading consumers and diluting the Plaintiff’s brand.
24. The trademark “TIGER,” linked to safety shoes, is deemed arbitrary as it does not inherently describe any characteristics of the goods. This non-descriptive nature affords the trademark a heightened level of distinctiveness and protection.
25. In order to discern the similarities between the competing marks, a side-by-side comparison thereof is depicted below:

Plaintiff’s trademarks
Defendants’ trademark
TIGER (Wordmark)

26. This comparative analysis of the trademarks “TIGER” and “” would entail examination of the overall impression these marks create on consumers and the general public. Given that both marks incorporate the term “TIGER,” the central issue is whether the prefix “CD,”. in “”, despite its distinctive stylization, sufficiently alters the overall perception to prevent consumer confusion. Judicial precedents consistently highlight that the dominant element of a mark plays a critical role in the likelihood of confusion analysis.1 Furthermore, the Plaintiff’s registration of the word “TIGER” per se enhances their claim significantly. This exclusive right to the word strengthens the Plaintiff’s claim that “TIGER,” being the dominant and standalone component of their trademark, should receive broader protection against similar marks. The Plaintiff thus has the right to use and represent the word ‘TIGER’ in any font or format which gives them the exclusive right to use the word as a whole, irrespective of its style, for the goods – safety shoes – for which they have secured a registration. Consequently, the presence of “TIGER” in the Defendants’ “” mark is likely to lead consumers to mistakenly associate the Defendants’ products with the Plaintiff, thereby increasing the risk of confusion and potential dilution of the Plaintiff’s trademark. The letters ‘C’ & ‘D’ do not significantly mitigate the visual and phonetic resemblance that could confuse consumers. Visually, despite potential differences in font or style, “TIGER” remains the dominant element, maintaining the visual continuity between the marks. Phonetically, the addition of letters “C and D” does little to alter the core pronunciation of “TIGER,” leading to a risk that consumers may perceive both marks as related or originating from the same source.
27. That apart, the Plaintiff’s registered mark “ ” is also deceptively similar to the Impugned mark “” with slight variation in the font style and the prefix of ‘CD’ in the mark ‘.’
28. The aforenoted rival marks may not be identical, but they are deceptively similar. A mark is deemed to be deceptively similar to another, if it bears such a resemblance to the other mark that it could likely deceive or cause confusion among potential consumers. In the realm of trademark law, the criterion for a mark being considered “deceptive” hinges crucially on the likelihood of the public—possessing average intelligence and imperfect recollection—mistaking the source of the goods or services associated with the mark. The Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd.,2 has elucidated that the exact likeness between competing marks is one only of the criterion for assessing the likelihood of deception or confusion. The Court has also emphasised on ‘trade connections’ as a determinative criterion. Further, in the Supreme Court in Cadila Healthcare v. Cadila Pharmaceuticals,3 while laying down the criteria for detecting deceptive similarity, held that various factors should be taken into account to determined whether a mark is deceptive, which includes: a) the nature of goods or the services to which the marks relate to; b) the degree of resemblance between the two marks; c) the type of the mark, whether it is a word, symbol, or phrase and d) the target audience. These principles posit that even if the marks are not identical but bear close resemblance, the test for trade connection can still be relevant. In the present context, the marks competing marks not only share significant visual and phonetic elements, but also identical trade connections which has strong potential of misleading consumers to associate the Defendants’ goods with those of the Plaintiff. Given the overlap in the goods—both marks being used for safety equipment, specifically safety shoes—there is a heightened risk of misleading consumers.
29. At this juncture, noting that the competing marks are deceptively similar, we proceed to decide whether the Plaintiff is entitled to interim relief. It is imperative to underscore that the instant lawsuit instituted by the Plaintiff encompasses claims for both infringement and passing off. The Court also notes that while the Plaintiffs have raised objections regarding the validity of the Defendant No.1’s mark, at this preliminary stage, the Court is not delving into the validity of a registration. Accordingly, a presumption of validity is maintained in favour of the registered mark under Section 31 of the Trademarks Act, 1999. Given this presumption and the provisions of Section 28(3) of the Act, a prima facie case for infringement is not established at this point. Nevertheless, Section 27(2) of the Trade Marks Act, explicitly stipulates that an action for passing off can proceed independently of other provisions of the Act. This principle was affirmed by the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai,4 which held that the right to a passing off action remains unaffected by the registration status under the Trademarks Act. Therefore, regardless of the Defendant No. 1’s registration, a passing off action is still maintainable.
30. Passing off, inherently a common law tort, rests on the premise that no individual or entity is entitled to sell their goods or services under the pretence that they are the goods or services of another. This principle was comprehensively articulated in Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd.5, where the Supreme Court delineated the essential elements required to establish a case of passing off. These elements emphasize the need to protect the public from confusion, and the original manufacturer’s goodwill from dilution, which are fundamental to maintaining integrity in marketplace.
31. To determine passing off, it is first essential to address the issue of prior use, which, as presented in the arguments, unequivocally favors the Plaintiff. As Mr. Khan emphasized, the Plaintiff’s earliest trademark registration bearing No. 1988452, was filed on 28th July, 2010. To further substantiate the Plaintiff’s earlier adoption of the “TIGER” mark, prior to Defendants, reliance is also placed on copyright registrations for a label that includes the word ‘Tiger,’ filed on 19th November, 2011, and 28th October, 2012. Additionally, the Plaintiff has secured a trademark registration that precedes any known use by the Defendants, bolstering their claim of prior use. Supporting this claim, the Plaintiff has also submitted invoices dating back to 2006, which pertains to sales of safety shoes under the “TIGER” brand. This evidence collectively proves the Plaintiff’s longstanding use of the trademark, establishing a clear priority over the Defendants in terms of both adoption and commercial use. On the other hand, Defendants assert their use in terms of their trademark registration dating 2013. Considering this, Defendants’ adoption and use is therefore evidently subsequent to Plaintiff. Plaintiff is thus the senior user of the “TIGER” mark. Thus, the Defendants’ choice to employ “TIGER” prominently in their Impugned mark is prima facie a clear attempt to trade on the goodwill associated with the Plaintiff’s mark.
32. Mr. Mahabir, on the other hand, has challenged the ownership rights of the Plaintiff by highlighting the Plaintiff’s previous business arrangements. He notes that the Plaintiff had initially embarked on a joint venture with Delta Plus Group S.A, during which they utilized the trademark “TIGER”. Subsequently, the Plaintiff assigned the mark “” which is now registered under No. 1488116 in Class 9. Mr. Mahabir argues that this assignment resulted in the Plaintiff relinquishing all proprietary rights to the ‘Tiger’ trademark, thereby nullifying any claims of infringement, or passing off against the Defendants. Furthermore, Mr. Mahabir contends that the Defendants’ use of the trademark is honest and is distinct from the Plaintiff’s mark. He explains that the prefix ‘CD’ in ‘CD TIGER’ represents the initials of Mr. Narender Kumar Jain’s father- Chhahbil Das, adding a personal differentiation to the mark. He also mentions that the use of ‘TIGER’ by the Defendants is a nod to Mr. Jain’s roots in West Bengal, a region known for its tiger population, suggesting a sentimental rather than opportunistic use of the term. Additionally, he points out that the term “TIGER” is commonly used in Class 9 for safety shoes, arguing that it has become generic in this context. This is supported by the Plaintiff’s own submissions to the Trademark Office, where they have argued that the word ‘Tiger’ cannot be exclusively claimed and that marks should be assessed in their entirety. This stance was notably evident when Delta Plus Group S.A, opposed their trademark, and the Plaintiff defended their position by differentiating their “Tiger Steel/ ” label as distinct from others.
33. In the opinion of the Court, the Defendants’ justifications for adopting the word “TIGER” in their trademark are untenable. It is established that the Plaintiff had not only applied for, but also secured registration of the trademark “TIGER” well before the Defendants began using it. This prior registration necessitated that the Defendants should have conducted a thorough search of the trademark register before adopting any mark incorporating the word ‘TIGER.’ Thus, the plea of honest adoption of arbitrary term ‘TIGER’ for safety shoes cannot be accepted. Rather, it demonstrates clear intent to misrepresent their goods. The Defendants’ claims that their mark “” is sufficiently distinguishable from the Plaintiff’s mark do not hold merit, as discussed above. The word ‘TIGER,’ which is the dominant element in both trademarks, makes the Defendants’ mark deceptively similar to that of the Plaintiff’s, leading to a likelihood of confusion among consumers. Regarding the Defendants’ argument that the Plaintiff has relinquished their rights in the trademark ‘Tiger’ due to its assignment to Delta Plus Corp SA, it is important to clarify that the mark transferred was specifically the device mark “Tiger Steel/ ,” not the word mark “TIGER” which is the subject of the current dispute. Moreover, any contention regarding the ownership of the ‘Tiger Steel’ mark should rightfully come from the assignee, Delta Plus Corp SA, rather than the Defendants. Therefore, this argument does not diminish the Plaintiff’s claims over their registered trademark “TIGER,” nor does it legitimize the Defendants’ use of the mark.
34. Furthermore, the Plaintiff’s reputation in the trademark “TIGER” is well-documented, supported by substantial revenue from the sales of goods under this trademark, which amounted to INR 121.61 crores for the fiscal year 2022-23. Additionally, the Plaintiff has invested significantly in publicity and advertisement to promote the trademark, with expenditures totalling INR 226.26 lakhs for the same period. These financial details, as outlined in paragraph 14 of the plaint, underscore the established goodwill and market presence of the “TIGER” trademark. Consequently, the Court concludes that all three elements of the classic trinity test for passing off—reputation, misrepresentation, and potential harm—are satisfactorily met in this case. The Defendants’ use of the Impugned mark prima facie constitutes a clear misrepresentation that could deceive consumers and dilute the Plaintiff’s established brand. Without an injunction, this misrepresentation is likely to cause irreparable damage to the reputation of the Plaintiff’s mark, thereby justifying the need for immediate legal intervention to prevent further harm.

Conclusion
35. In sum:
35.1. The Plaintiff is the prior user of the trademark “TIGER” and prior registrant of the trademark “TIGER”; they have been continuously using and promoting the trademark “TIGER” since 2004 and as a primary brand since 2010 and has garnered significant goodwill and reputation in the said trademark.
35.2. It is undisputed that the Defendants’ use of the trademark “TIGER” is subsequent and therefore, the Defendants’ adoption of the trademark is prima facie mala fide and dishonest; the competing marks being deceptively similar to each other is bound to create confusion amongst the general public and hence the Defendants’ adoption of the Impugned mark prima facie violates the Plaintiff’s common law rights in the trademark “TIGER”;
35.3. The Plaintiff has made out a prima facie case in their favour and in case no injunction is granted, Plaintiff will suffer an irreparable loss; balance of convenience also lies in favour of Plaintiff and against the Defendants.
Directions
36. For the foregoing reasons, the application is allowed. Defendants and anybody acting on their behalf, are restrained from selling, offering for sale, advertising, marketing, directly or indirectly, dealing in products bearing the marks “CD TIGER/” or any other mark which is deceptively similar to Plaintiff’s registered trademark “TIGER” and would amount to an action of passing off.
37. However, considering the fact that Defendants’ mark was registered since 2014, Defendants are permitted to deplete their existing stock of goods, which are fully manufactured, bearing the mark “CD TIGER/”, within four weeks from today. Defendants are directed to file an affidavit giving complete details of stock, including batch numbers, of the goods manufactured, within two weeks from today. It is clarified that no further manufacturing shall be undertaken under the Impugned mark.
38. Furthermore, Defendants are directed to takedown the website hosted on the domain name www.cdtiger.com.
39. Disposed of

I.A. 2168/2024(on behalf of Plaintiff seeking interrogatories from Defendant No. 1)

40. In light of the directions passed today, while allowing I.A. 2166/2024, Mr. Khan very fairly states that the relief sought in the present application is now virtually granted and therefore, is not pressing for the same.
41. Plaintiff shall be at liberty to file fresh application in case further interrogatories are necessary.
42. Disposed of with liberty as aforesaid.
CS(COMM) 85/2024
43. Mr. N. Mahabir, counsel for Defendants, states that amended written statement has been filed vide Diary No. 1056135/2024. He is instructed to follow up with the Registry and have the same placed on record.
44. Plaintiff has already filed replication to the written statement. However, considering the fact that Defendants have been permitted to file the amended written statement, Plaintiff must be permitted to file an amendment replication thereto, in order to respond to the amendments that have been allowed. Let the amended replication within a period of two weeks from the date of service of the copy of the amended written statement.
45. List before the Joint Registrar for completion of pleadings and admission/ denial of documents on 01st July, 2024.
46. List before the Court thereafter.

SANJEEV NARULA, J
APRIL 10, 2024/d.negi
1 South India Beverages Pvt Ltd v. General Mills Marketing Inc, 2014:DHC:5276-DB, Bennet, Coleman and Company vs Fashion One Television LLC and Anr. 2023: DHC: 9170
2 AIR 1960 SC 142
3 (2001) 5 SCC 73
4 2016 (2) SCC 683
5 2001 (5) SCC 73
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