Mr. Abhinav Mukerji, Sr. Adv. with Mr. Sumit Gehlot, Mr. T.S. Thakran, Mr. Abhishek v. VICKY KAKKAR

Judgment

1. These appeals arise from similar orders passed by the learned District Judge (Commercial Court)-02, New Delhi District, Patiala House Courts1, whereby the plaints in the suits, instituted by the appellant against the respondents, stand rejected by the learned Commercial Court under Order VII Rule 11(a)2 of the Code of Civil 1 “Commercial Court”, hereinafter 2 11. Rejection of plaint.—The plaint shall be rejected in the following cases:— (a) where it does not disclose a cause of action; Signature Not Verified RFA(COMM) 196/2025 and connected matters Digitally Signed By:AJIT KUMAR Signing Date:20.12.2025 18:33:24 Procedure, 19083, on the ground that the plaints failed to disclose any cause of action.

2. Aggrieved thereby, the plaintiff in the suits has approached this Court by means of the present appeals.

3. As the factual differences between the appeals are only cosmetic, we would be adverting to the facts as they exist in RFA (Comm) 196/2025, which arises out of CS (Comm) 294/20224. The facts

4. We may straightaway reproduce the following passages from the plaint in CS (Comm) 294/2022, which set out the appellant’s case: trade mark "WESTEND GREENS" since “5. That the plaintiff uses "WESTEND GREENS" as a key and essential part of its Name. The plaintiff adopted the mark "WESTEND GREENS" as a part of its name and for its services in the year 1993 and has been conducting its activities using the name then. Being registered proprietor of the trade Mark "WESTEND GREENS", the plaintiff enjoys exclusive right to use the aforesaid trade mark. On account of continuous and extensive use of the trade mark "WESTEND GREENS" by the plaintiff over a long period of time, the said trade mark enjoys an unparalleled reputation and goodwill. The to be exclusively identified and associated with the services offered by the plaintiff. Any third party adopting the name and registered mark "WESTEND GREENS" or any other deceptively similar name and trade mark without the consent or the license of the plaintiff amounts to an infringement and passing off of the trade mark of the plaintiff. trade mark "WESTEND GREENS" has come

9. That apart from its common law rights, the plaintiff is also ***** Signature Not Verified 3 “CPC” hereinafter 4 Westend Greens Farms Society v. Vicky Kakkar & Anr RFA(COMM) 196/2025 and connected matters Digitally Signed By:AJIT KUMAR Signing Date:20.12.2025 18:33:24 the registered proprietor of the mark ’WESTEND GREENS’ in Class — 45 (for rendering services for welfare and protection of its members and to meet the needs of its members) as word mark as well as device. Details of the said registrations are set out below: S. No Application No. User Date Trade Mark / Status Certificate No. A. 4844654 13/05/1993 Registered 2796421 WESTEND GREENS (Word Mark) B. 4844653 13/05/1993 Registered 2796420 C 4915688 13/05/1993 Registered 2820034

The above mentioned registrations are valid, subsisting and in full legal force. Any third party adopting the name and registered trade mark ’WESTEND GREENS’ or any other deceptively similar name and trade mark without the consent or the license of the plaintiff would amount to an infringement of the registered trade mark of the plaintiff. On 22.03.2022 Legal Proceedings Certificates (LRCs) have been applied for the said Trade Marks bearing application bearing No.4844653, 4844654 & 4915688, which are likely to be received in next 30 days and the plaintiff undertakes to file them as and when received. The plaintiff has filed copies of the said trade mark journals alongwith latest status reports from the website of Trade Mark Registry. There are no disclaimers imposed on the said Trade Marks bearing No.4844653, 4844654 & 4915688 and are valid upto 02/02/2031, 02/02/2031 & 22/03/2031 respectively and the plaintiff has not granted any licences or assignment in respect of said Trade Marks. Signature Not Verified RFA(COMM) 196/2025 and connected matters Digitally Signed By:AJIT KUMAR Signing Date:20.12.2025 18:33:24

10. That the defendant No.2 - Amaltas Avenue Resident’s Welfare Society is a separate Society registered under the Societies Registration Act, 1860 (having registration No. S-53405 of 2005) and having its office at Samaikha, New Delhi -110037. The defendant No.2 consists of 30 farms/units. The plaintiff Society and the defendant No.2 society are totally independent and separate entity from each other. *****

12. That the defendant No.l/Mr. Vicky Kakkar is neither the member/resident of the plaintiff society nor his said farm bearing N0.I8A, forms part of the plaintiff society. Admittedly, the defendant No.1/Mr. Vicky Kakkar is member/resident of the defendant No.2 society i.e. Amaltas Avenue Resident’s Welfare Society and his said farm bearing N0.I8A, is situated and is part of the defendant No.2. The plaintiff was shocked and outraged when in March, 2021 it noticed that the defendant No.1 has illegally started using the plaintiffs name and registered trade mark "WESTEND GREENS" and has illegally installed sign board outside his said farm illegally mentioning/engraving with the plaintiffs name, and registered trade mark "WESTEND GREENS" and its above mentioned registered logo. The defendant N0.1 has illegally copied same and similar design of sign board using the plaintiffs name and registered trade mark/logo "WESTEND GREENS". The defendant No.1’s property illegally depicts the plaintiffs registered trade mark/logo "WESTEND GREENS" without any agreement, leave or license from the plaintiff who is the sole and rightful owners and users of the mark. That the defendant No.I is misrepresenting his said farm 13. being part of the plaintiff society. By illegally using the plaintiffs name and registered trade mark "WESTEND GREENS" the defendant N0.I is trying to enhance his property value and is trying to attract potential customers for the purpose of leasing/selling of his said farm thereby unjustly enriching himself. The defendant No. 1 is carrying commercial activity in his property. The adoption and use of the registered trade mark "WESTEND GREENS" by the defendant N0.I, clearly violate the plaintiffs statutory as well as common law rights and use of the registered trade mark by the defendant No.1 is completely malafide and dishonest. By this misrepresentation the public may think that the defendant No.1 is some way connected with the plaintiff society and that is why he is using the registered trade mark "WESTEND GREENS". By adopting the name and registered trade mark "WESTEND GREENS", which is plaintiffs name as well as registered trade mark, the defendant No. 1 is infringing and passing off the Signature Not Verified RFA(COMM) 196/2025 and connected matters Digitally Signed By:AJIT KUMAR Signing Date:20.12.2025 18:33:24 plaintiffs registered trade mark. Despite being aware of illegal use of the registered trade mark "WESTEND GREENS" by the defendant No. 1, the defendant No. 2 has not stopped its illegal use/adoption, which is its duty. That the defendant No. 1 has illegally used the plaintiffs 14. said registered trade mark "WESTEND GREENS". It is clear that by adopting the plaintiffs registered trade mark in relation to his said farm, the defendant No.1 wish to illegally and unfairly take advantage of and trade upon the plaintiff pre-existing registered trade mark and goodwill. The defendant No. 1 also attempt to misrepresent that a relationship exists between him and the plaintiff, which is deceptive to the consumer/general public. These actions amount to infringement of registered trade mark and passing off and are an unfair trade practice prohibited by law. The defendant No.1 by using the name and registered trade mark "WESTEND GREENS" has included the whole of the name/mark of the plaintiff, which have caused confusion in relation to source of origin as people assume that the defendant No.1 is in some way connected to the plaintiff, which is resulting in infringement of registered trade mark and passing off. *****

16. That the plaintiff is seriously aggrieved by the injury caused by actions of the defendant No.1. The defendant No.l’s actions are willfully and fraudulently designed to mislead, confuse, and deceive the consumers/general public into believing that he is connected, associated, sponsored, approved or otherwise affiliated to the plaintiff society. It is obvious that the defendant No. 1 seek to illegally and fraudulently misappropriate the plaintiffs goodwill and reputation. It is clear from the above that not only do the defendant No.l’s actions constitute infringement of registered trade mark under the Act they also amount to passing off.

17. That illegal use of the plaintiff s mark shows the defendant No. 1’s malafide intention and there is no doubt as he is using the plaintiffs registered trade mark to deceive the public at large and cause confusion in the market to gain undue advantages from the plaintiffs mark, which has gained a considerable recognition amongst the people as well as with the general public. *****

22. That this is a clear case of infringement of the registered trade mark of the plaintiff as per Section 29 of the Trade Marks Act. The defendant No.1 has taken unfair advantage by illegally adopting the plaintiffs trade mark ’WESTEND GREENS’, which is Signature Not Verified RFA(COMM) 196/2025 and connected matters Digitally Signed By:AJIT KUMAR Signing Date:20.12.2025 18:33:24 detrimental to its distinctive character and is against the reputation of the plaintiffs trade mark. Admittedly the plaintiff is the registered proprietor of the trade mark ’WESTEND GREENS’ and the defendant No.1 has illegally adopted the trade mark without the permission of the plaintiff. The said illegal adoption has deceived and caused confusion in the general public about the source and affiliation. The plaintiff being the registered proprietor of the said trade mark ’WESTEND GREENS’ has a right to take action against the said infringement and there is a statutory remedy available with the plaintiff against the violation of exclusive right to use the said trade mark in relation to its services. That it is trite law that when a person gets his trade mark 23. registered, he acquires valuable rights by reasons of such registration. Registration of his trade mark gives him the exclusive right to use of the said trade mark in connections with the goods/services in respect of which it is registered and if there is any Invasion of this right by any other person using the mark which Is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for Infringement In which he can obtain Injunction. Further, it is also trite law that on registration of a trade mark the registered proprietor under Section 28 of the Trade Marks Act gets the exclusive right to use of such trade mark in relation to the goods/services in respect of which the trade mark is registered and to obtain relief in respect of any Infringement of such trade mark. Further, it is also trite law that the statutory registration establishes prima facie case in favour of the registered proprietor. The registered proprietor has right of exclusion against every third person, who is Illegally using the registered trade mark. The name ’WESTEND GREENS’ is the name as well as registered trade mark of plaintiff society. The defendant No.1 has no right to use the plaintiff society’s name and trade mark ’WESTEND GREENS’ in any form whatsoever.”

5. Following the above factual and legal assertions, the plaint prayed as under : “It is therefore prayed that the following reliefs be granted in favour of the Plaintiff and against the Defendants: a) A decree of permanent injunction restraining the Defendants, their servants, agents, and employees from trade mark using Plaintiff’s name and "WESTEND GREENS" or any other name or mark which contain Plaintiff's name and/or trade mark “WESTEND registered Signature Not Verified RFA(COMM) 196/2025 and connected matters Digitally Signed By:AJIT KUMAR Signing Date:20.12.2025 18:33:24 GREENS” or any word which is deceptively similar thereto in any manner whatsoever; b) A decree of mandatory injunction directing the Defendants to remove reference to plaintiff’s name and registered trade mark "WESTEND GREENS" or any mark deceptively similar mark from the property/farm of defendant No.1; A decree of mandatory injunction directing the c) Defendants to handover to plaintiff for destruction, all infringing materials including but not limited to sign board(s), signage, hoardings, etc., containing any reference to plaintiff’s name and registered trade mark "WESTEND GREENS" or any mark deceptively similar to it. A decree of mandatory injunction directing the d) Defendants to notify to general public, customers, agents, dealers, associates and all such other persons relating to them in any manner whatsoever, that defendants are in no way approved, affiliated with, connected to or associated with the plaintiff and plaintiff’s name and registered trade mark "WESTEND GREENS" in any manner; e) An order for rendition of accounts of profit illegally earned by the Defendants and a decree in terms of the said amount after ascertainment of the amount; f) A decree for delivery up of any other infringing materials, containing any reference to the Plaintiff’s name and registered trade mark "WESTEND GREENS" or any name/mark deceptively similar to it; g) An order for Damages to the tune of Rs.5,00,000/- be passed against the Defendants and in favour of the Plaintiff; For costs of the proceedings to be assessed and h) granted in favour of the Plaintiff, and i) Any further orders in the interest of justice.”

6. The respondents filed an application under Order VII Rule 11(a) of the Code of Civil Procedure, 1908, seeking rejection of the plaint as not disclosing any cause of action. By the impugned Signature Not Verified RFA(COMM) 196/2025 and connected matters Digitally Signed By:AJIT KUMAR Signing Date:20.12.2025 18:33:24 judgment, the learned Commercial Court has allowed the application and has rejected the plaint, as sought by the respondents. The impugned judgment

7. The learned Commercial Court has, in the impugned judgment, noted, at the outset, the settled position in law, that an application under Order VII Rule 11 of the CPC has to be decided on a demurer, solely on the assertions in the plaint, treating them to be correct. There can be no gainsaying this legal position, which stands settled in a plethora of authorities, including Liverpool & London S.P. & I Association Ltd v M.V. Sea Success5 and Exphar SA v. Eupharma Laboratories Ltd.6, which the learned Commercial Court has itself cited.

8. The learned Commercial Court has thereafter proceeded to examine the ambit of the expression “use in the course of trade” as contained in Section 29 of the Trade Marks Act, 1999, on the basis of the judgments rendered by learned Single Judges of this Court in Pepsico Co. Inc. v. Hindustan Coca Cola7 and Kabushiki Kaisha Toshiba v. Toshiba Appliances Co.8 as well as the Court of Justice of the European Union (CJEU) in Arsenal Football Club v. Reed9. The learned Commercial Court has held that “use in the course of trade” for the purposes of Section 29 of the Trade Marks Act, requires commercial activity with an aim at gaining economic advantage.