VOLANS UPTOWN LLC  Vs MAHENDRA JESHABHAI BAMBHANIYA -Judgment by Delhi High Court

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* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 15th January, 2024
+ CS(COMM) 257/2023, I.A. 8234/2023
VOLANS UPTOWN LLC ….. Plaintiff
Through: Mr. Siddharth Varshny and
Mr. Aditya Gupta, Advocates.

versus

MAHENDRA JESHABHAI BAMBHANIYA ….. Defendant
Through: None.

CORAM:
HON’BLE MR. JUSTICE SANJEEV NARULA
JUDGMENT

SANJEEV NARULA, J. (Oral):

1. The Plaintiff, Volans Uptown LCC, has filed the present quia timet suit seeking various remedies including a Permanent Injunction restraining the Defendant, Mr. Mahendra Jeshabhai Bambhaniya, from passing off goods under plaintiff�s trademark �BOTANIC HEARTH� and any other derivatives of this mark.
2. The Defendant was duly served with summons via email and also through speed-post at one of the two addresses provided, as evidenced by the Plaintiff’s affidavit of service. This service was formally acknowledged in the order dated 31st July, 2023, by the Joint Registrar. Despite this service, Defendant has failed to appear or submit any written statement in response. The prescribed time frame for filing a written statement, along with the additional condonable period, has now lapsed since the date of service. Consequently, the Defendant’s right to submit a written statement is forfeited and they are proceeded ex-parte.
3. In view of the above, counsel for Plaintiff presses for a decree against the Defendant under Order VIII Rule 10 of Code of Civil Procedure (�CPC�).
PLAINTIFF�S CASE
4. Plaintiff, Volans Uptown LLC, is incorporated in the State of Delaware, USA, and is engaged in the business of manufacturing and selling cosmetic, skin and hair care products made from natural ingredients under the trademark �BOTANIC HEARTH�, assigned in its favour by Uptown Cosmeceuticals Inc.
5. They have registered the wordmark �BOTANIC HEARTH� and �� in 2017 in the United States and have filed application for registration of the same in Canada and India. Plaintiff has adopted the wordmark �BOTANIC HEARTH� since the year-2017, and this ownership extends to any other forms or derivatives of the mark including, inter alia, �BOTANIC HEARTH COSMECEUTICALS�, ��
[collectively referred to as �Plaintiff�s marks�]. Plaintiff is the exclusive owner and prior user of these marks and has been selling its products in various countries through e-commerce platforms including its website �https://botanichearth.com/� since at least 27th August 2018. Plaintiff�s products have been available in India since at least September, 2020 on various third-party e-commerce platforms such as Amazon India, Ubuy etc demonstrating the demand and presence of their products/brand in India. Plaintiff intends on manufacturing and selling products under the trademark �BOTANIC HEARTH� in India through authorized channels and have initiated legal action against such third-party sellers who have been selling the Plaintiff�s products in India without requisite authorisation. The popularity of Plaintiff�s products under the trademark �BOTANIC HEARTH� in India is also evidenced by the traffic received on Plaintiff�s website, originating from India. Details of the revenue generated by Plaintiff internationally, by sale of its goods bearing the plaintiff�s marks and expenses incurred on marketing/ promotion internationally are mentioned in paragraphs No. 10 and 14 of the plaint, respectively. Plaintiff has advertised, promoted, and marketed its products under the �BOTANIC HEARTH� trademark in India and has featured in Indian magazines and publications as well.
6. In or around September 2022, Plaintiff learned that the Defendant, Mr. Mahendra Jeshabhai Bambhaniya, has on 16th June, 2022 filed a trademark application no. 5490886 (�impugned TM application�) for the wordmark �BOTANIC HEARTH� in class 3 on a proposed to be used basis, incorporating the Plaintiff�s trademark in entirety. The impugned TM application has been opposed by the Plaintiff. Plaintiff has also conducted an online investigation and found that Defendant is a habitual infringer and has filed over 160 trademark applications, belonging to popular brands owned by third parties, some of which are- �UrbanBoAt�, �MATTEL GAMES�, �SIRONA�, �SUGAR COSMETIC�, �MINMAX�, �TINKLE� etc. The modus operandi of the Defendant appears to be to ride upon the goodwill and cachet enjoyed by internationally well-known trademarks.
7. On 16th September 2022 a legal notice was sent to the Defendant asking him to desist use of the impugned trademark and assign the trademark application to the Plaintiff. However, no reply was received. Later, in December 2022, Plaintiff�s legal counsel contacted Defendant�s trademark agents. Following this, the Plaintiff received a call from Mr. Mayur Patel, who identified himself as the Defendant’s representative. Mr. Patel engaged in discussions with the Plaintiff�s representative and demanded approximately INR 18,00,000/- to relinquish rights in the impugned TM application. During the conversation, Mr. Patel also mentioned a similar arrangement concerning another trademark, ‘UrbanBoAt,’ and disclosed significant details about the Defendant’s business operations. He claimed that the Defendant is a prominent figure in the e-commerce sector, selling 60-70 thousand units daily, with a turnover of about INR 2 crores. He further revealed that the Defendant manufactures various cosmetic and skincare products in China for sale in India and has plans, or is in the process of establishing, a manufacturing facility in Bhinwadi, Thane, Maharashtra. This sequence of events and revelations points to a possible modus operandi of the Defendant: filing for registrations of well-known trademarks, including those owned by the Plaintiff, with the intention of trading them or coercing legitimate owners into paying large sums for no objection certificates. Should the rightful trademark owners refuse these demands, the Defendant then capitalizes on their established goodwill by selling counterfeit products on e-commerce platforms.
8. The Plaintiff had also initiated an investigation into Defendant�s activities which revealed that Defendant had not yet commenced the use of �BOTANIC HEARTH� trademark. However, the Defendant, through his representative, had indicated that he plans on starting a manufacturing plant, which gives rise to a credible apprehension that he intends to commercially launch these brands.
ANALYSIS AND FINDINGS
9. The jurisprudence surrounding the issuance of injunctive relief, in the context of a quia timet action, is now well-established. In Jawahar Engineering Co. and Ors. vs. Javahar Engineering Private Ltd.,1 it was decisively held that the actualization of a threat is not a prerequisite for granting an injunction. The court emphasized that injunctive relief could be appropriately granted to forestall an injury that is ‘likely to occur’. Building upon this legal framework, the Supreme Court further endorsed the doctrine of quia timet action in Kuldip Singh vs. Subhash Chandra Jain & Ors.2 In light of these precedents and upon forming a prima facie opinion, this Court, on 28th April 2023, granted an ex parte ad interim injunction favouring the Plaintiff. This injunction restrains the Defendant from engaging in any activities that involve the direct or indirect use, manufacture, advertisement, sale, offer for sale, or exportation of products associated with the trademark �BOTANIC HEARTH�. This trademark is currently under contention in Trade Mark Application No. 5490886.
10. The aforenoted application for �BOTANIC HEARTH� mark was filed on 16th June 2022, on a proposed to use basis. It is noteworthy that the Plaintiff has been actively using the ‘BOTANIC HEARTH’ trademark internationally since at least 2017. This fact establishes the Plaintiff’s long-standing association with the mark. Furthermore, the Plaintiff’s products bearing this trademark have been present in the Indian market since September 2020. Additionally, there has been a concerted effort to advertise these products in India from August 2022 onwards. Given these circumstances, it is evident that the Plaintiff holds the status of the prior user and adopter of the ‘BOTANIC HEARTH’ trademark.
11. The Defendant has filed for the registration of a trademark identical to that of the Plaintiff’s, specifically targeting the same class of goods and services in which the Plaintiff operates. This action by the Defendant raises a significant concern for potential confusion and deception among the public. Should the Defendant market products under the �BOTANIC HEARTH� trademark without any affiliation to the Plaintiff, it is highly likely to mislead consumers. Such confusion not only risks diluting the distinctiveness of the Plaintiff’s trademark but also poses a threat of causing irreparable damage to the Plaintiff�s well-established business, goodwill, and reputation in the market. The likelihood of this scenario necessitates careful consideration in this case, given the importance of protecting trademark integrity and preventing consumer deception.
12. The Defendant�s intention to override and encash upon the goodwill and reputation of the Plaintiff is evident from their claim of proprietorship in the impugned TM application. Further, basis the documents on record including multiple trademark applications filed by the Defendant for different renowned brands, it is apparent that the Defendant has a motive to engage in infringing activities with the aim of weakening the rights of trademark owners. Thus, basis the averments made in the suit and submissions advanced by counsel for Plaintiff, the apprehension of infringement by Defendant, is evident. Unless prevented from doing so, it is highly likely that the Defendant would infringe upon the Plaintiff�s rights. Thus, this Court finds that the acts of Defendant amount to intent to pass off.
13. In concluding this analysis, it is essential to highlight a significant pattern in the Defendant’s actions that extends beyond this isolated incident. The Defendant’s strategy of filing for trademarks identical to those of renowned and internationally recognized brands points to a deliberate practice of ‘Trademark Squatting’. This exploitative tactic involves the adoption, application for registration, or even successful registration of trademarks associated with prominent brands, with the calculated intent to later sell these rights at a premium to the original trademark owners. Such conduct poses a significant threat to the integrity of trademark law, underscoring the need for judicial intervention to protect and safeguard the rights of legitimate trademark owners such as the Plaintiff.
14. In view of above, Plaintiff has established their right to permanent injunction for restraining infringement. For the forgoing reasons, Plaintiff is entitled to a judgment in accordance with Order VIII Rule 10 of CPC, 1908.
RELIEFS
15. Suit is decreed in favour of Plaintiff and against Defendant in terms of prayers at paragraph 46 (a)(b)(c) of the plaint. Considering the nature of the subject matter, no direction for rendition of accounts or delivery up is warranted.
16. Plaintiff is entitled to actual costs, in terms of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules, 2018 read with Delhi High Court Intellectual Property Division Rules, 2022 from Defendant. Plaintiff shall file their bill of costs in terms of Rule 5 of Chapter XXIII of the Delhi High Court (Original Side) Rules, 2018 on or before 15th February, 2024. As and when the same is filed, the matter will be listed before the Taxing Officer for computation of costs.
17. Decree sheet be drawn up.
18. Accordingly, suit along with pending application are disposed of.

SANJEEV NARULA, J
JANUARY 15, 2024
nk
[Corrected and released on 30th January 2024]
1AIR1984Delhi166

2 (2000) 2 SCALE 582
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CS(COMM) 257/2023 Page 2 of 2