Partheshwar v. HIRVIJAY INDUSTRIES LLP ORS

O R D E R 20.02.2025 The present suit has been filed for permanent injunction restraining the defendants from infringing the registered trademark/trade name of the plaintiff, i.e., ‘REO’ and for misrepresentation, passing off, dilution, damages, rendition of accounts, etc.

2. The present suit was filed since the plaintiff was aggrieved by the unauthorized, illegal and malafide adoption and use by the defendants of a deceptive and nearly identical mark being ‘REIO’, which is phonetically and structurally similar to the plaintiff’s prior trademark ‘REO’ and its derivatives/formatives.

3. Vide order dated 31st July, 2024, an ex-parte ad interim injunction order was granted in favour of the plaintiff and against the defendants and Local Commissioner was also appointed, pursuant to which Local This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/02/2025 at 12:47:50 CS(COMM) 633/2024 Commission was executed. The report of the Local Commissioner has been placed before this Court.

4. It is the case of the plaintiff that it has been using the mark ‘REO’ for more than a decade and it is obvious that the defendants are well aware of the mark, especially when the defendants are also in the same business of electrical goods under Classes 9 and 11. However, despite the same, the defendants adopted the impugned mark ‘REIO’. Comparison of the two marks, as given in the plaint, is as under:

5. On the last date of hearing, i.e., on 23rd January, 2025, learned counsel for the defendants had made a categorical statement that the defendants have already stopped using the mark REIO and had also adopted a new mark, i.e., ‘RTR’.

6. The said order dated 23rd January, 2025, reads as under: “I.A. No. 1804/2025 (Application on behalf of the plaintiff for seeking directions against the defendants)

1. The present application has been filed on behalf of the plaintiff under Order XXXIX Rule 2A, read with Section 151 of the Code of Civil Procedure, 1908 (“CPC”).

2. Learned counsel appearing for the plaintiff submits that despite being aware of the directions passed by this Court and entering into appearance, the defendants are continuing to use the impugned mark REIO/ inter alia by advertising and promoting their products under the said mark on various online platforms, including Google.

3. Issue notice. This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/02/2025 at 12:47:50 CS(COMM) 633/2024

4. Notice is accepted by learned counsel appearing for the defendants.

5. She vehemently denies the submissions made by learned counsel appearing for the plaintiff and submits that all the listings have already been taken down by the defendants. She further submits that any listing that may have been found by the plaintiff, are not on the direction of the defendants. She further submits that the defendants have stopped using the mark REIO and have already adopted a new mark i.e., ‘RTR’. She further submits that reference to the mark REIO has also been removed from all the social media platforms by the defendants.

6. Let an affidavit with that regard be filed by the defendants within a period of two weeks, from today.

7. List on 20th February, 2025.”

7. Pursuant to the order dated 23rd January, 2025, an affidavit has been filed on behalf of the defendants, relevant portion of which, reads as under: “xxx xxx xxx

2. ... ... ... e. On 17th August 2024, the defendants informed and notified all their partners and dealers that the defendants have discontinued the production and sale of “Reio” brand electrical switches and accessories and that effective immediately, all the products of the defendant no. 1 would be exclusively offered under the “RTR” brand. True copy of the circular dated 17th August, 2024 has been annexed herewith and marked as ANNEXURE D. xxx xxx xxx j. I say that the defendants have ceased production and Sale of “REIO” Products. k. I say that no sales of “REIO” products have been conducted by the defendants through any platform, including, Social Media platforms (Instagram, Facebook, Google etc), Online Marketplaces such as websites previously IndiaMART www.reioswitches.com or www.reioswitches.in. active etc. xxx xxx xxx

3. I say that the defendants have taken all possible steps to comply with the orders of this Hon’ble Court and as stated above have already discontinued production and sale of “Reio” brand electrical the defendants have already switches and accessories. Further, This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/02/2025 at 12:47:50 CS(COMM) 633/2024 transitioned to offering its products under the brand “RTR”. The same was communicated and put in public knowledge by way of a circular dated 17th August, 2024. xxx xxx xxx”

8. Learned counsel for the plaintiff submits that the plaintiff is satisfied with the statement made on behalf of the defendants. However, he points to the email dated 12th February, 2025 written by the plaintiff’s counsel to the defendants’ counsel, wherein, it has been stated that the plaintiff has discovered an entity, namely, ‘Vishal Marketing’, proprietorship concern of Mr. Ashok Panjwani, who has adopted a similar mark as that of the defendants, i.e., ‘REIO’/ .

9. It has further been stated in the aforesaid mail that the said entity, i.e., ‘Vishal Marketing’ has filed a fresh trademark application bearing no. 6382232 for registration of the said mark.

10. In response, learned counsel for the defendants submits that the said entity, namely, ‘Vishal Marketing’ was earlier distributor of the defendants. However, after January, 2024, the defendants have no dealing with the said entity. It is further submitted that the defendants have no communication or association with the said entity, i.e., ‘Vishal Marketing’ and have no control over their activities.

11. Learned counsel for the plaintiff submits that he shall seek his legal remedies for taking action against the said entity.

12. Accordingly, with the consent of the parties, the following directions are issued: I. The suit is decreed in favour of the plaintiff and against This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/02/2025 at 12:47:50 CS(COMM) 633/2024 defendants in terms of Para 85 (b), (c) and (e). II. The defendants shall withdraw their trademark applications bearing nos. 3486283, 4911958 and 4911959 in respect of the trademark ‘REIO’/ . III. The application for withdrawal of their trademark applications shall be filed by the defendants before the Trademark Registry, within a period of ten days from today. IV. Upon filing of such application by the defendants, the Trademark Registry shall expeditiously take steps for passing appropriate orders, with regard thereto. V. The goods with infringing mark that were seized by the Local Commissioner and returned under Superdari to the defendants, shall be destroyed in the presence of the plaintiff or plaintiff’s representative. For this purpose, the plaintiff/plaintiff’s representative shall contact learned counsel for the defendants, who shall fix a date within a period of four weeks from today, at a convenient time and place, for carrying out the requisite action. VI. Cost of ₹10,000/- (Rupees Ten Thousand) shall be payable by the defendants to the Delhi High Court Advocates Welfare Fund, within a period of four weeks from today.

13. Decree sheet be drawn up.

14. The present suit, along with pending applications, accordingly stands disposed of.

15. The next dates of hearing, i.e., 27th March, 2025 and 02nd April, 2025, stand cancelled. This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/02/2025 at 12:47:50 CS(COMM) 633/2024

16. The Registry is directed to supply a copy of the present order to the Office of the Controller General of Patents, Designs and Trade Marks of India, on E-mail Id: [email protected], for compliance. FEBRUARY 20, 2025 MINI PUSHKARNA, J This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/02/2025 at 12:47:50 CS(COMM) 633/2024