Mr. Anirudh Bakhru, Mr. Vikas Khera, Ms. Sneha Sethia and Mr. Yash Sharma, Advs v. LG ELECTRONICS INDIA PVT. LTD. ORS

Judgment

1. The appellant Quantum Hi-Tech Merchandising Private Limited has instituted CS (Comm) 263/2021 before the learned District Judge (Commercial Court-II), Shahdara1, alleging infringement, by the respondents LG Electronics India Private Limited, its parent company in Korea2 and its Brand Store in Delhi, of the registered trademarks of the appellant, and passing off, by the respondents, of their goods as Signature Not Verified 1 “the learned Commercial Court”, hereinafter 2 “LG Korea” hereinafter Digitally Signed By:AJIT KUMAR Signing Date:04.11.2025 11:39:55 FAO (COMM) 22/2022 the goods of the appellant. Predicated on these allegations, the appellant, in its suit, sought a decree of permanent injunction, restraining the respondents, and all others acting on their behalf, from using the marks QUANTUM, QUANTUM PLUS, QUANTUM DISPLAY, IPS QUANTUM, RGB QUANTUM, SMART QUANTUM and G QUANTUM, for the goods in respect of which the respondents used the said marks. The prayer is predicated on the ground that the respondents’ marks are deceptively similar to the appellant’s “famous and registered trademarks QUANTUM

2. ”. The suit is presently pending before the learned Commercial Court.

3. In the suit, the appellant has filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 19083, seeking an interim injunction restraining the respondents from using the marks QUANTUM, QUANTUM PLUS, QUANTUM DISPLAY, IPS QUANTUM, RGB QUANTUM and SMART QUANTUM, G QUANTUM or any other mark which would be deceptively similar to the appellant’s marks QUANTUM and , in relation to the goods in respect of which the respondents used the said marks.

4. By an ad interim order dated 4 October 2021, passed in the application filed by the appellant under Order XXXIX Rules 1 and 2, the learned Commercial Court restrained the respondents from using Signature Not Verified 3 “CPC”, hereinafter Digitally Signed By:AJIT KUMAR Signing Date:04.11.2025 11:39:55 FAO (COMM) 22/2022 the aforenoted marks. The respondents filed an application under Order XXXIX Rule 4 of the CPC, for vacating the interim order.

5. By the impugned order dated 15 December 2021, the learned Commercial Court dismissed the appellant’s application under Order XXXIX Rules 1 and 2 and allowed the respondents’ application under Order XXXIX Rule 4 of the CPC.

6. Aggrieved thereby, the appellant is before this Court by means of the present appeal.

7. We have heard Mr. Anirudh Bakhru, learned Counsel for the appellant, instructed by Mr Vikas Khera, and Mr. Hemant Singh, learned Counsel for the respondents, at length.

8. Written submissions have also been filed by both sides. Facts

9. Mr. Khera clarifies, before us, that his client is restricting its prayer to a restraint against the respondents using the mark QUANTUM and QUANTUM DISPLAY, and was not seeking any injunction against using their registered trade marks QUANTUM PLUS, IPS QUANTUM, RGB QUANTUM, SMART QUANTUM and G QUANTUM.

10. Case of the appellant before the learned Commercial Court Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:04.11.2025 11:39:55 FAO (COMM) 22/2022

10.1 The case setup by the appellant, in its plaint before the learned Commercial Court, was as follows.

10.2 The appellant, which was incorporated on 1 August 1997, adopted the trademark QUANTUM in 1992 through its predecessor Quantum Hi-Tech Merchandising4, and was using the mark QUANTUM with the consent of QHM. QHM transferred the marks “QUANTUM” and “Quantum” to the appellant in April 2006. The marks “QUANTUM” and “Quantum” were registered in favour of the appellant in Class 9 under Section 23 of the Trade Marks Act, 19995.

10.3 The respondents were manufacturing TV sets and their accessories, headphones, earphones, portable communication apparatus and other similar goods under the trademark QUANTUM and had also applied for registration of various marks containing the mark QUANTUM. The respondents were the proprietors of the registered trademarks SMART QUANTUM for display panels for TVs etc., RGB QUANTUM for mobile phones, IPS QUANTUM for wearable portable media players and G QUANTUM for televisions and similar goods.

10.4 The marks QUANTUM and QUANTUM DISPLAY were alleged to be infringing the registered trademarks QUANTUM and of the appellant.

11. The impugned order Signature Not Verified 4 “QHM”, hereinafter 5 “the Act” hereinafter Digitally Signed By:AJIT KUMAR Signing Date:04.11.2025 11:39:55 FAO (COMM) 22/2022

11.1 The learned Commercial Court has, by the impugned judgment, rejected the appellant’s application under Order XXXIX Rules 1 and 2 of the CPC. The learned Commercial Court has proceeded essentially on three considerations, in so holding, which may be enumerated thus: (i) No case of infringement was maintainable against the respondents’ registered trademarks SMART QUANTUM, RGB QUANTUM, IPS QUANTUM and G QUANTUM, in view of Section 28(3)6 read with Section 30(2)(e)7 of the Act. We need not comment on this aspect as the appellant does not seek any injunction against use, by the respondents, of the marks SMART QUANTUM, RGB QUANTUM, IPS QUANTUM and G QUANTUM. (ii) The appellant had no registration of the mark QUANTUM for the goods in respect of which the mark was used by the respondents, i.e., TV receiver sets or any goods which were allied or cognate thereto. (iii) As such, the case of the appellant, against respondents, could only be one of passing off. (iv) No case of passing off could sustain on merits, as the 6 (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor. 7 (2) A registered trade mark is not infringed where— ***** Signature Not Verified (e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act. Digitally Signed By:AJIT KUMAR Signing Date:04.11.2025 11:39:55 FAO (COMM) 22/2022 respondents were not using the marks QUANTUM or QUANTUM DISPLAY for the goods in respect of which the appellant’s marks were registered and used. As the goods in respect of which the rival marks were used were different, there was no likelihood of confusion. (v) Moreover, the appellant was using the composite mark . The only material produced by the appellant to sustain its allegation of passing off was a coloured representation of the mobile display of the respondents, which itself was extracted from the affidavit filed by the Vice President of LG Korea, filed in evidence in support of an application under Section 21(4) of the Act, following an opposition to the application filed by QHMPL. The affidavit itself clearly stated that the picture was in the nature of promotional material. Apart from this, the appellant had not filed any material to show user of the allegedly infringing marks by the respondents for commercial purposes. (vi) The appellant sought to contend, before the learned Commercial Court that, in the aforesaid affidavit, the Vice President of LG Korea had admitted the marks QUANTUM and QUANTUM DISPLAY were adopted as trademarks by the respondents in 2014 and had been in use since 2015 for television receivers and displays for mobile phones. It was submitted, therefore, that the respondents were estopped from pleading non-user of the infringing marks. The Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:04.11.2025 11:39:55 FAO (COMM) 22/2022 learned Commercial Court did not accept this submission, in view of the following assertion in para 26 of the plaint:

“......The defendant no.2 filed the evidences by way of affidavits under Rule 46 in oppositions filed against the trademarks QUANTUM and QUANTUM display bearing application nos. 2918701 and 2918702 on 13.05.2021 wherein it claimed its user under the impugned marks but failed to file any cogent documents to prove the same.” Thus, as the appellant had itself stated that the respondents had failed to file any documents to prove user of the infringing marks in respect of television receiver displays or mobile phones display, the mere statement of the Vice President of LG Korea, as contained in the affidavit filed before the Trade Marks Registry, could not constitute a cause of action to sustain a passing off suit. (vii) There was no material to indicate any sale of goods, in the market, by the respondents, using the allegedly infringing marks. In the absence of any evidence of sale, no case of passing off could be said to be made out. (viii) The appellant was also guilty of concealment of facts. The appellant’s Application No. 1291193 had been opposed by Quantum Corporation, USA8. In the affidavit filed by way of response to the said opposition, it was submitted by the appellant, thus, in paragraph 16(1): “16 (1).......... it is submitted that opponents have permitted Signature Not Verified 8 “Quantum USA” hereinafter Digitally Signed By:AJIT KUMAR Signing Date:04.11.2025 11:39:55 FAO (COMM) 22/2022 a good number of companies worldwide to use the trademark QUANTUM or trademark consisting of word Quantum, for different goods rendering the trademark QUANTUM not at all distinctive of goods and services of the opponents. The agreement at Annexure-8 and Annexure-9 indicate that more than a dozen of companies in USA and other countries which have been allowed by opponents to use the trademark QUANTUM and the trademark consisting of word Quantum in respect of various goods of same description as that of goods and services for which opponents have claimed to have use the trademark QUANTUM. In view of these facts on record, placed by the opponents themselves...........there are many others to who have a lawful right to use the trademark QUANTUM and the trademark consisting of the word Quantum.” Having adopted such a stand in its affidavit filed by way of reply to the opposition by Quantum USA to its application for registration of its mark, the appellant could not seek to claim exclusivity over the mark QUANTUM. These facts had been concealed by the appellant in its plaint. (ix) In the same affidavit, the appellant had contended that the mark of which it sought registration was the composite mark “Quantum Hi-Tech QHMPL Group”, which was different, when seen as a whole, from Quantum USA’s marks. There was, therefore, no likelihood of confusion between the two. This stand would also operate with respect to the possibility of likelihood of confusion between the appellant’s and the respondents’ marks. (x) The appellant was, therefore, not entitled to interim relief even on the ground of concealment of facts. For this purpose, the learned Commercial Court has placed reliance on the Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:04.11.2025 11:39:55 FAO (COMM) 22/2022 judgments of the Supreme Court in S.P. Chengalvaraya Naidu v Jagannath9 and Kishore Samrite v State of UP10. For all these reasons, the impugned order of the learned Commercial Court has dismissed the appellant’s application under Order XXXIX Rules 1 and 2 of the CPC and has allowed the respondents’ application under Order XXXIX Rule 4. Rival Contentions

12. Submissions of Mr. Bakhru

12.1 Arguing for the appellant, Mr. Bakhru, instructed by Mr. Khera, advances the following submissions: (i) The benefit of Section 28(3) read with Section 30(2)(e) of the Act would be available to the respondents only in respect of registered trademarks SMART QUANTUM, RGB QUANTUM, IPS QUANTUM and G QUANTUM, in respect of the goods or services for which they were registered. The appellant would still be able to maintain an infringement suit against respondents restrain from using QUANTUM as a standalone mark, or any mark of which QUANTUM forms the dominant feature, in view of the registration held by the appellant the word mark QUANTUM, with effect from 21 June 2004, and in the device Signature Not Verified