Dismissed

M/S Vastram Creations v. M/S Stylum Mart Pvt. Ltd.

Rajasthan HC21 May 2024CMA/3937/2023

Case brief

AI extract

What is this about?

This Division Bench dismissed an appeal by apparel manufacturers challenging an injunction restraining them from using the name 'STYLUM FAB'. The Court upheld the lower court's order, noting the respondents are prior users, any delay was due to the pandemic causing no inordinate lapse, and passage offers were sufficient to waive any defense of acquiescence.

What did the court decide?

The Civil Misc. Appeal was dismissed with a direction to the Commercial Court to decide the suit expeditiously.

M/S Vastram Creations Vs M/S Stylum Mart Pvt. Ltd. — Intellectual Property | Rajasthan HC (2024)

¶1

HIGH COURT OF JUDICATURE FOR RAJASTHAN BENCH AT JAIPUR

¶2

D.B. Civil Miscellaneous Appeal No. 3937/2023

¶3

M/s Vastram Creations, Through Proprietor Ashok Kumar Jain, 15, Flat No. 102, Mepal House, Plot No.88, Krishi Anusandhan Nagar, Pratap Nagar, Jaipur (Raj.) Gstin08Amtpj5605Kizk Present Address- Plot No. 14 A, Miya Bajaj Colony, Near Peter England, Sanganer, Jaipur302029

¶4

M/s. Pari Creations, Through Proprietor, Madhuri Kalsi, Plot No. 14 A, Miya Bajaj Colony, Near Peter England, Sanganer, Jaipur- 302029, Gstin- 08Ejdpk0781E1Zb Present Address- F No. 105, K No. 975/584, Signature House, Jagatpura, Jaipur- 302017

¶5

----Appellants

¶6

Versus

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M/s Stylum Mart Pvt. Ltd., Through Director, Priyanka Agarwal, Plot No. 26-B, 26-C, Behind Jk Tyre Showroom, Ganesh Vihar, Diggi Malpura Road, Sanganer, Jaipur (Raj.)

¶8

M/s. Gayatri Feb, Through Proprietor Sachin Prajapat, Plot No. 30, Ganeshpuri Colony, Cement Godam Road, Kalyanpura Sanganer, Jaipur 302020 Gstin08Glbpp1856F1Zy. Present Address- 2, Floor No.2, Sachivalaya Vihar, Rampura Road, Sanganer, Jaipur302020

¶9

M/s. Sai Creations, Through Proprietor Shubham Harshwal, Plot No. 30, Ganeshpuri Colony, Cement Godam Road, Kalyanpura, Sanganer, Jaipur- 302020 Gstin 08Augph5379B1Zn. Present Address- 2, Floor No. 2, Sachivalay Vihar, Rampura Road, Sanganer Jaipur - 302020

¶10

M/s. Yashi Fashions, Through Propritor Rachna Parashar, 25, Ground Floor, Moji Vihar, Near Ganesh Apartment, Jaipur- 302020 Gstin 08Gbopp4915G1Z6

¶11

M/s. Dholiwal Fashion Zone, Through Proprietor Tulsi Ram Dholiwal, Plot No. 133, Suraj Nagar, Rampura Road, Opposite Water Tank, Sanganer, Jaipur - 302029 Gstin 08Etdpd4934 E1Zv

----Respondents

(2 of 8)

[CMA-3937/2023]

For Appellant(s)	:	Ms. Anita Agarwal Mr. Shubham Jain Mr. Laxmi Kant Mr. Anubhav Agarwal
For Respondent(s)	:	Mr. K.N. Sharma with Mr. Rohit Jain for respondent No.1 Mr. Umashankar Pandey for respondent No.4 Mr. Ashwani Kumar Gupta for respondent No.5

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HON'BLE MR. JUSTICE PANKAJ BHANDARI HON'BLE MRS. JUSTICE SHUBHA MEHTA Order

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21/05/2024

¶18

Appellants have preferred this appeal aggrieved by order dated 02.12.2023 passed by Commercial Court No.1, Jaipur Metropolitan-II, whereby application filed by the plaintiffrespondents under Order 39 Rule 1 & 2 of CPC r/w Section 151 of CPC was allowed and the appellants were restrained from using the word ‘STYLUM FAB’ or other similar name.

¶19

It is contended by counsel for the appellants that appellants received a notice on 20.06.2020 with regard to unauthorized use and infringement by use of the name ‘ STYLUM FAB’ and the fact that name ‘ STYLUM’ was already being used by the plaintiffrespondents. It is also contended that it is an admitted case that the plaintiff-respondents applied for registration of the trademark by the name ‘ STYLUM’ in 2015, abandoned the application in 2016 and again applied in the year 2018. The appellants have also applied for the registration of the name ‘ STYLUM FAB’ in the year 2019. It is further contended that plaintiff-respondents after giving notice in June 2020, have slept over their right to file the suit and the same was filed in September, 2023 i.e. after more

¶20

[CMA-3937/2023]

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(3 of 8)

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than three years of the date of notice. It is contended that appellants have been using the name ‘ STYLUM FAB’ since 2017 and business of the appellants has grown. The turnover of the appellants in 2017 was Rs.8 lacs and in 2022-2023, it was Rs.5 crores 23 lacs. It is contended that the Court below has erred in restraining the appellants and has not considered that irreparable loss would be caused to the appellant. Court has also not considered the question of balance of convenience.

¶23

Counsel for the appellant has placed reliance upon Power Control Appliances vs Sumeet Machines Pvt. Ltd : 1994 2 SCC 448, wherein Read Brothers v. Richardson and Co.33, Hommel v. Bauer & Co. was referred and it was observed as under:

¶24

“It is necessary that an application for interlocutory injunction should be made immediately after the plaintiff becomes aware of the infringement of the mark. Improper and unexplained delay is fatal to an application for interlocutory injunction. The interim injunction will not be granted if the plaintiff has delayed interfering until the defendant has built up a large trade in which he has notoriously used the mark”.

¶25

It is contended by counsel that even after giving notice when the plaintiff-respondents have not proceeded, appellants have acquired the right by acquiescence. Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trademark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in latches.

¶26

Counsel appearing for plaintiff-respondents has vehemently opposed the appeal. It is contended that undisputedly plaintiff-

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[CMA-3937/2023]

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(4 of 8)

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respondents are the prior user of the mark ‘ STYLUM’ . Plaintiffrespondents had applied for registration, but for some reason, the application was abandoned. Plaintiff-respondents later on, again applied in the year 2018, which application is also prior to the application filed by the appellants, which was in year 2019. It is also contended that plaintiff-respondents gave a notice to the appellants on 20.06.2020 and appellants should have stopped using the mark ‘ STYLUM’ . Since, passing-off is a recurring cause of action, it cannot be said that there was any delay in filing the suit. 6. It is further contended that due to COVID-19 pandemic, the period of 15.03.2020 to 28.02.2022 was excluded for the purpose of limitation and the applicability of the Limitation Act was done away with by the judgment of the Apex Court for that period. It is contended that use of the word ‘ STYLUM FAB’ is deceitfully similar with the word ‘ STYLUM’ of which plaintiff-respondents are prior user. It is also contended that respondents have knowingly not permitted the appellants to use the word ‘ STYLUM FAB’ as a notice was given in June 2020. It is contended that plaintiffrespondents have a turnover which is to the tune of Rs. 23 crores and which was around Rs.20 crores when the notice was given to the appellants in June, 2020 and at that relevant time, the appellants were having a turnover of Rs.2 crores 43 lacs. 7. Counsel for the respondents has placed reliance upon M/s Hindustan Pencils Pvt. Ltd. Vs M/s India Stationery Products Co.: AIR 1990 Delhi 19 , wherein it was held by the Delhi High Court as under:

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(5 of 8)

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[CMA-3937/2023]

¶32

“ It had been submitted that there was an inordinate delay on the part of the plaintiffs in filing the present suit. I have already held that inordinate delay would not defeat an action for the grant of a temporary injunction especially where the use by the defendant of the mark was fraudulent. An any case, in my opinion, the delay in the present case cannot be regarded as inordinate. Assuming for the sake of argument that, as contended by the defendants, the plaintiffs came to know about the user by the defendants of the infringing mark in March, 1982, it is not as if the plaintiffs slept over their rights for a number of years. It is to be seen that the plaintiffs' principal place of business is 'in Bombay while the defendant is a small businessman carrying on its business in Sadar Bazar, Delhi. The plaintiffs, in 1985, did file an application for cancellation of the registration of copyright of the defendant. This amounted to first step being taken by it. The plaintiffs waited and within 3 years thereafter filed the present suit. The defendant must have known that it was adopting a mark which belongs to some one else. Any infringer who uses or adopts some one else's mark must be aware of the consequences which may follow. The defendants ran the risk in using a mark which belonged to some one else. It continued. its business un-interruptedly for a number of years before any action was taken by the plaintiffs against it. Any growth after notice is at the risk and peril of the defendant. The defendant certainly had notice of application of the plaintiff having been filed against it in the year 1985 for cancellation of registration of the copyright. The defendant should have been warned, at that stage, that THE plaintiff is not likely to accept the user of its mark by the defendant If the defendant continued to do business by using the impugned mark. it did so at its own peril. The continued user cannot be set up as a defense under these circumstances.”

¶33

Reliance has also been placed upon Dr. Reddy’s Laboratory Ltd. Vs Reddy Pharmaceuticals Ltd.: 2013 SCC Online Del 3626 wherein it was held by the Delhi High Court that the owners of trademarks or copyrights are not expected to run after every

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(6 of 8) [CMA-3937/2023]

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infringer and thereby remain involved in litigation at the cost of their business time. If the impugned infringement is too trivial or insignificant and is not capable of harming their business interests, they may overlook and ignore petty violations till they assume alarming proportions.

¶36

Reliance has also been placed upon M/s Bengal Waterproof Limited vs Bombay Waterproof: AIR 1997 Supreme Court 1398 , wherein it was held that in the case of a continuing tort, a fresh period of limitation begins to run at every moment of the time during which the breach or the tort, as the case may be, continues’. As act of passing-off is an act of deceit and tort every time when such tortious act or deceit is committed by the defendant, the plaintiff gets a fresh cause of action to go to the Court by appropriate proceedings.

¶37

Reliance has also been placed upon M/s Mittal Oil Mills Pvt. Ltd. vs M/s. Parwati Oil Mills: D.B. Civil Misc. Appeal No.142/2020 decided on 04.03.2022 passed by Division Bench of this Court wherein it was held that use of the word with prefix and suffix is deceitfully similar. It is bound to cause confusion in the mind of the general public.

¶38

We have considered the contentions and the judgments cited by the counsels for the parties. 12. Admittedly, the plaintiff-respondents are the prior user and they had applied for registration of their trademark way back in the year 2015. As per the documents submitted by appellants, they are using the word ‘ STYLUM FAB’ since 2017. The notice was given by the plaintiff-respondents to the appellants on 20.06.2020 informing them about the infringement done by them and asking

¶39

(7 of 8) [CMA-3937/2023]

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them to restrain from using the word ‘ STYLUM FAB’. Both the parties are in the business of selling ready-made garments and are carrying out their business from Jaipur.

¶41

We are of the considered view that after receipt of notice from the plaintiff-respondents wherein it was stated that they are the prior user of the word ‘ STYLUM’ and the appellants should stop using the word ‘ STYLUM FAB’ and if they have continue using the word for their business, even after receipt of notice, the same would not de bar the respondents from exercising their right of filing an application for passing-off.

¶42

We are also of the considered view that the delay caused in this case cannot de bar the plaintiff-respondents from claiming the relief which they have claimed for the very reason that for about two years there was COVID-19 pandemic and as per the judgment of the Apex Court, parties were given the benefit under the Limitation Act for some period. In the facts of this case, it cannot be said there is an inordinate delay, as even otherwise, the continued use of word ‘ STYLUM FAB’ by the appellants is recurring cause of action to the plaintiff-respondents, thus, the said delay cannot be considered to be inordinate delay and no right by acquiescence arises in favour of the appellants. Admittedly, the turnover of the plaintiff-respondents is much more than that of the appellants and the respondents have given notice to the appellants way back on 20.06.2020 and that business done by the appellants in the name of ‘ STYLUM FAB’ was at their own risk.

¶43

The learned Commercial Court has appropriately dealt with the matter and has not committed any error in allowing the application filed by the respondents under Order 39 Rule 1 and 2

¶44

[CMA-3937/2023]

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(8 of 8)

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of CPC. We find no illegality or irregularity in the impugned order, so as to entertain the present appeal. Civil Misc. Appeal is accordingly, dismissed.

¶47

However, the concerned Commercial Court is directed to decide the suit expeditiously.

¶48

(SHUBHA MEHTA),J

¶49

(PANKAJ BHANDARI),J

¶50

HEENA/41

M/S Vastram Creations v. M/S Stylum Mart Pvt. Ltd.

Case brief

What is this about?

What did the court decide?

M/S Vastram Creations v. M/S Stylum Mart Pvt. Ltd.

Case brief

What is this about?

What did the court decide?

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