October 19, 2023
An application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) was made by the Plaintiff seeking interlocutory injunctive reliefs. The Plaintiff alleged that the defendant was providing software design and development services similar to those of the plaintiff, having borrowed their mark. Taking cognizance of the matter, the High Court of Delhi made some noteworthy observations and passed an ex-parte order.
Facts of the case
Facts in brief for the case are mentioned below for better understanding:
1. The Plaintiff has been engaged in the business of high-voltage electrical products since 1994. It is the proprietor of the various registrations under the Trade Marks Act, 1999 for marks like HARTEK, etc.
2. The Defendant is a software design and development company that runs the website hartekdss.com.
3. The plaintiff alleges that the defendant is providing software design and development services similar to those of the plaintiff, having borrowed the “HARTEK” mark of the plaintiff.
Arguments of Plaintiff
1. That the Defendant is providing software design and development services, having borrowed the mark “HARTEK” mark from them.
2. That the defendant has also applied for registration of the marks “HARTEKDSS” and its logo on a “proposed to be used” basis on 3rd August, 2023 and 4th August, 2023 respectively.
3. That despite Plaintiff’s cease and desist notice issued on 2nd August, 2023, the Defendant failed to acknowledge and correct the similarities between the marks in their response.
4. That, further on, the Defendant had, in fact, changed its logo to “HARTEKDSS”.
Here, the addition of the suffix “DSS” makes no difference in rectifying the aspect of infringement caused by the Defendant. The mark “HARTEKDSS” continues to be deceptively similar to the plaintiff’s mark “HARTEK”, especially as “DSS” merely stands for “Development and Software Services” so that the prominent part of the mark “HARTEKDSS” mark continues to be “HARTEK”.
Arguments of Defendant
1. There was no appearance on behalf of the Defendant.
Observations of the Court
After carefully hearing the arguments and examining the evidence presented, the Hon’ble High Court of Delhi made some acute observations that are mentioned below:
There’s a prima facie case of infringement and passing off
- The facts stated hereinabove and the submissions advanced by the Plaintiff make out a prima facie case of infringement and passing off. The Defendant is apparently yet to start commercial operations as is apparent from the fact that, even in August 2023, it applied for registration of this mark on a proposed to-be-used basis.
- Taking inspiration from the precedent Laxmikant V. Patel v. Chetanbhai Shah [(2002) 3 SCC 65], the Hon’ble Bench quoted some paragraphs in furtherance of their observation.
- An action for passing-off will then lie wherever the defendant company’s name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion confusion between the two businesses. If this is not made out there is no case.
- “The law does not permit anyone to carry on his business in such a way as would persuade the customers or clients to believe that the goods or services belonging to someone else are his or are associated therewith.”
- “Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belong to someone else it results in confusion and has the propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.”
Where there lies a prima facie case, grant of injunction becomes necessary
- By taking note of the precedents Laxmikant V. Patel v. Chetanbhai Shah [(2002) 3 SCC 65], and Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia [(2004) 3 SCC 90], the Hon’ble Bench recognized that the grant of injunction in this case also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.
Directions given by the court
Post-hearing the carefully drafted arguments of the Plaintiff, and acknowledging the absence of Defendant, the Hon’ble Court gave the directions summarized below:
1. Given the facts of the case and the fact that the Defendant, despite advanced service, chose not to appear, the case deserves a grant of ex parte ad interim relief.
2. Till the next date of hearing, the Defendant, as well as all others acting on its behalf, shall stand restrained from using the mark “HARTEK”/ “HARTEKDSS” either by itself or with or without any prefix or suffix including “HARTEKDSS” or any other mark which is confusingly or deceptively similar to “HARTEK” for providing software solutions services or for other goods or services which may be allied or cognate thereto.
3. Compliance with Order XXXIX Rule 3 of the CPC be effected within a period of one week should be established.
The Hon’ble High Court of Delhi acknowledged the prima facie establishment of infringement of the rights of the Plaintiff and passed ex-parte directions to that restrain the Defendant from using impugned mark, or any other mark that stands deceptively similar to Plaintiff’s for providing services similar to Plaintiff’s. Mark Shield was pleased to assist the Plaintiff in the matter.