Mr. Rishi Bansal Mankaran Singh, Advs v. YOGESH KUMAR JAISWAL ORS

Judgment

1. This appeal assails order dated 4/5 June 2025, passed by the learned District Judge (Commercial Court-02)1 in CS (Comm) 391/2024.

2. By the impugned order, the learned Commercial Court has dismissed CS (Comm) 391/2024, instituted by the appellant, under Order VII Rule 11 of the CPC2, on the ground that it did not disclose any sustainable cause of action, on the basis of which the suit could be maintained.

3. The facts are not in dispute. Signature Not Verified 1 “the learned Commercial Court” hereinafter Digitally Signed By:AJIT KUMAR Signing Date:29.07.2025 19:27:19 RFA(COMM) 381/2025

4. The appellant claimed to be manufacturing and selling articles of tobacco, matchboxes, supari, pan masala, mouth freshener, aerated water and non-alcoholic drinks, among other goods, under the trade marks “SHUDH, SHUDH PLUS and SHUDH PLUS ULTRA LABEL”. The plaint refers to these marks, collectively, as the “SHUDH formative trademarks/labels”.

5. The cause of action for instituting the plaint, as per the recitals

therein, was an application filed by the defendant for registration of the trade mark/label ATS SHUDH in Class 34 of the Nice Classification3. The appellant claimed to have learnt of the filing of the said application by the respondent in the third week of March

2024. The application was filed for tobacco, chewing tobacco, zarda, khaini and other smokers articles, on proposed to be used basis. The trade mark application of the respondent was published in the Trade Mark Journal on 12 February 2024. It is not in dispute that the appellant has filed an opposition against the said application on 19 March 2024.

6. It was further averred, in the plaint, that inquiries conducted by the appellant in the last week of March 2024 revealed that respondent had recently adopted the trade mark/label ATS SHUDH or . However, it was a conceded position that no goods 2 Code of Civil Procedure, 1908 3 The international index of classification of goods and services for the purposes of trade mark registration, adopted by the Nice Agreement in 1957. Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:29.07.2025 19:27:19 RFA(COMM) 381/2025 bearing the said trade mark/label were prevalent in the market. Nonetheless, on the ground that the appellant had “a strong and credible apprehension that the impugned goods bearing the impugned trade marks (were) going to be infused into the markets” within the jurisdiction of the Commercial Court at Saket, the suit was instituted by the appellant as a quia timet action4 praying as under: For a decree of permanent injunction restraining the a. individual Defendants by themselves as also through their proprietors, agents, representatives distributors, assigns, heirs, successors, stockists and all others acting for and on their behalf trading, from soliciting, networking, manufacturing, marketing, using, selling, displaying, advertising or by any other mode or manner dealing in or using the impugned trademark/ label ATS SHUDH soliciting/using it through any online medium or online websites or through any online platforms or through any social medias or any other identical with and/or deceptively similar word/mark/label to the plaintiffs Trademarks/labels which is identical/deceptively similar to the plaintiff's trademark/label SHUDH and other formative marks in relation to their impugned goods and business and related/cognate/allied goods and from doing any other acts or deeds amounting to or likely to:- Infringement i. Trademarks/labels. Plaintiffs registered ii. Passing off and violation of the Plaintiffs common law rights in the plaintiffs said Trademarks/labels & dilution of the plaintiffs rights. iii. Infringement of the plaintiffs Copyrights/labels. b. Restraining the defendant from disposing off or dealing Signature Not Verified 4 “Quia timet” literally meaning “before he fears”, representing an action to injunct an act which is reasonably apprehended but has not yet happened. Digitally Signed By:AJIT KUMAR Signing Date:29.07.2025 19:27:19 RFA(COMM) 381/2025 with its assets including its shops and premises, or any other assets as may be brought to the notice of this Hon'ble Court during the course of the proceedings and on the defendant' disclosure thereof and which the defendant is called upon to disclose and/or on its ascertainment by the plaintiff as the plaintiff is not aware of the same as per Section 135 (2) (c) of the Trade Marks Act, 1999 as it could adversely affect the plaintiffs ability to recover the costs and pecuniary reliefs thereon. For an order for delivery up of all the impugned finished c) and unfinished materials bearing the impugned and violative trade mark or any other deceptively similar trade mark/label including its blocks, labels, display boards, sign boards, trade literatures and goods etc. to the plaintiff for the purposes of destruction and erasure. For an order for rendition of accounts of profits earned by d) the defendant by their impugned illegal trade activities under the impugned trademark and a decree for the amount so found in favour of the plaintiff on such rendition of accounts. e) In the alternative to accounts for the decree of grant of damages to the tune of Rs. 5,00,000/- (Rs. Five lakhs only) from the defendants to the plaintiff. f) for an order for cost of proceedings, and For such other and further order as this Hon'ble Court may g) deem fit and proper in the facts and circumstances of the present case. Prayed accordingly.”

7. The respondent, as the defendant in the suit, filed an application under Order VII Rule 11 of the CPC, for dismissal of the suit as it did not disclose any valid or cogent cause of action against the respondent.

8. By the impugned order dated 4/5 June 2025, the learned Commercial Court has allowed the respondent’s application under Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:29.07.2025 19:27:19 RFA(COMM) 381/2025 Order VII Rule 11(a)5 and has, therefore, dismissed the appellant’s suit.

9. Aggrieved thereby, the appellant has approached this Court by means of the present appeal.

10. We have heard Mr. Rishi Bansal, learned Counsel for the appellant at length.

11. Before noting the submissions of Mr. Bansal, we may reproduce the following paragraphs from the impugned order, which contain the reasoning of the learned Commercial Court: “11. Order 7 rule 11 CPC lays that a plaint can be rejected where it does not disclose any cause of action. It has been held by the Courts in plethora of judgments that for the purposes of order 7 rule 11 CPC, only plaint is to be considered. Coming to the plaint of plaintiff, the first reference to defendant comes in para 19 where plaintiff has written that in 3rd week of March 2024 during routine search, plaintiff came across a deceptively/phonetically similar trademark ATS SHUDH under application no. 5308717 which was applied on January 2022 and advertised in Trademark Journal dated 12.02.2024. In para 22, plaintiff has written that he has filed an opposition against the impugned trademark on 19.03.2024. In is written that plaintiff has strong and credible para 23, impugned apprehension that trademark are going to be infused into the markets within the jurisdiction of this Court. In para 25 also, plaintiff is writing that it is the apprehension of plaintiff that defendant is most likely to start using the impugned trademark. In para 29, plaintiff writes that he made inquiry into the market regarding activity of defendants, however, he has not come across any impugned goods under the impugned trademark. In para 39, plaintiff writes that cause of action arose in March 2024 when plaintiff came across impugned trademark. It is stated that defendant has applied for trademark without any territorial jurisdiction thereby including territory of impugned goods bearing the 5 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 Digitally Signed By:AJIT KUMAR Signing Date:29.07.2025 19:27:19 RFA(COMM) 381/2025 Delhi. It is thus plaintiff’s admitted case that though he is 12. apprehending that goods are likely to be infused in the territory of Delhi, the same are not available anywhere in any market across the country. From where the plaintiff gets this apprehension that since the impugned goods are being sold at X place therefore, they will be brought from X place to other places including in Delhi? The application of defendant (no. 5308717) was filed on proposed to be basis and thus, defendant has not filed any document with TM registry showing that the trademark in question is being used anywhere in India as on date of filing of application. The plaintiff as stated here in above, has not stated in the plaint that the products were being sold anywhere in India as on date of the plaint or are being sold as on date of arguments of this application. This Court is bound by the judgment of Hon’ble Supreme 13. Court and has to follow the dicta as laid down in K. Narayanan and ors. v S. Muarli6 and Dhodha House and others v S. K. Mainga and ors.7 by Hon’ble Supreme Court. The plaintiff except for stating that the defendant has applied for trademark application 5308717 in class 34 in relation to impugned goods has not made any averment regarding actual use of trademark by defendant anywhere. In fact the plaintiff has categorically stated that it could not find any physical product of defendant under the impugned trademark/label. As per Hon’ble Supreme Court, cause of action will arise in 14. favour of plaintiff only when the registered trademark is used by the defendant and not when application for registration is filed. The plaintiff could still have maintained its case in view of 15. judgment in Dhodha House (supra) if it could show that there was some actual infringement taking place, since the court held that suit may lie where the infringement of trademark or copyright takes place. The advertising in the trademark journal or any other journal however, does not give cause of action for filing the suit in terms of the cited judgment.

16. The proper course of action with the plaintiff in the given circumstances, therefore, would be to oppose the trademark of defendant before the registry. Ld. Counsel for defendant made a statement during argument that defendant has abandoned his trademark application also. This submission of Ld. Counsel made during arguments cannot be a consideration for application u/o 7 rule 11 CPC. However, this Court is bound by the judgments of Signature Not Verified