Neutral Citation Number : 2023:DHC:2435

$~12(Original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 673/2022 & I.A. 5843/2023
JMD HERITAGE LAWNS PRIVATE LIMITED ..... Plaintiff
Through: Ms. Deepika Pokharia and Mr.
Mohit Dagar, Advs.

versus

MR ANKIT CHAWLA PROPRIETOR SADDA PIND

RESTAURANT ..... Defendant
Through: Mr. Shubham Jain, Adv.

CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
JUDGMENT (O R A L)
% 10.04.2023

1. The plaintiff is a private limited company engaged in hospitality

and allied services. The plaintiff runs what is known as a “Cultural

Living Museum” by name SADDA PIND with the logo .

2. The plaintiff possesses word mark registrations, under the Trade

Marks Act, 1999, in respect of the word mark SADDA PIND, as well

as the device marks and with effect from 16th

October 2015, 15th February 2016 and 19th September 2017
respectively.

3. The outlet of the plaintiff, it is submitted, provides, inter alia,

restaurant and boarding services.

Signature Not Verified

Digitally Signed CS (COMM 673/2022 Page 1 of 9
By:KAMLA RAWAT
Signing Date:11.04.2023
11:47:51
 Neutral Citation Number : 2023:DHC:2435

4. The plaint instituted by the plaintiff further asserts that, in a

short period of time, the plaintiff has acquired considerable goodwill
in its word mark as well as its device marks. The plaintiff has also
provided figures of its annual turnover which, during the year 2021-
22, was to the tune of₹ 13.8 2 crores. It is also asserted, in the plaint,
that the plaintiff has invested considerable amounts towards
advertisement and promotional activities which, during the year 2021-
22, is to the tune of ₹ 26,69,000/-.

5. The plaintiff also runs a dedicated website

www.saddapind.co.in and enjoys significant presence on social media
websites such as Facebook, Instagram, Twitter and LinkedIn.

6. The logo is also registered in favour of the plaintiff as an

original artistic work vide Registration No. A-126451/2018 under the
Copyrights Act, 1957.

7. The plaintiff submits, therefore, that it possesses enforceable

rights against infringement or passing off of its marks, both under
common law as well as statute.

8. The defendant is stated to be running a restaurant using logos

and which are identical to that of the plaintiff, in

Rajasthan. On coming to know of the said fact, the plaintiff issued a
cease and desist notice to the defendant on 31st May 2022, requesting
the defendant to discontinue use of the infringing marks. The
defendant, instead of doing so, replied on 18th July 2022, contesting
Signature Not Verified
Digitally Signed CS (COMM 673/2022 Page 2 of 9
By:KAMLA RAWAT
Signing Date:11.04.2023
11:47:51
 Neutral Citation Number : 2023:DHC:2435

the allegation of infringement and terming the similarity of the mark

as purely coincidental. According to the averments in the plaint,
though the plaintiff came to know that the plaintiff had applied for
registration of the mark SADDA PIND, no such application could be
found from the website of the Registrar of Trademarks.

9. It was in these circumstances that the plaintiff instituted the

present suit, essentially alleging infringement of the plaintiff’s
registered trademarks as well as copyright and passing off, by the
defendant, of its services as associated with the plaintiff. The prayer
clause in the suit reads thus:

“In view of the foregoing facts and circumstances, the Plaintiff

respectfully prays that the following reliefs be granted in its favour:

a. A decree of permanent injunction restraining the

Defendant its business associates, partners, directors,
principal officers, family members, servants, agents,
dealers, distributors, franchisees and anyone acting for and
on its behalf from selling, offer to sell, manufacturing.
advertising, promoting or in any other manner using
Plaintiff's registered trademarks SADDA PIND,

and and/or any other

identical/deceptively similar mark with respect to services
falling under Class 43 and any other cognate and allied
goods/services in any manner, so as to result in
infringement of Plaintiff's registered trademarks SADDA

PIND, and .

b. A decree of permanent injunction restraining the

Defendant its business associates, partners, directors,
principal officers, family members, servants, agents,
dealers, distributors, franchisees and anyone acting for and
on its behalf from selling, offer to sell, manufacturing,
advertising, promoting or in any other manner using PIND

Signature Not Verified

Digitally Signed CS (COMM 673/2022 Page 3 of 9
By:KAMLA RAWAT
Signing Date:11.04.2023
11:47:51
 Neutral Citation Number : 2023:DHC:2435

Plaintiff's original artistic work and/or any

substantial reproduction thereof, so as to result in
infringement of Plaintiff's copyright.

c. A decree of permanent injunction restraining the

Defendant, its business associates, partners, directors,
principal officers, family members, servants, agents,
dealers, distributors, franchisees and anyone acting for and
on its behalf from selling, offer to sell, manufacturing,
advertising, promoting or in any other manner using

Plaintiff's registered trademarks SADDA PIND,

and and/or any other

identical/deceptively similar mark with respect to services
falling under Class 43 and any other cognate and allied
goods/services in any manner, so as to result in passing off
or any act of Unfair Competition including resulting in
confusion of any manner whatsoever

d. An order directing the Defendant to take down of all

online and offline listings under the mark/name SADDA
PIND and/or any identical/deceptively similar variations
thereof.

e. An order directing delivery up of all the material

bearing the impugned trademarks on packaging, labels,
name, cartons, packaging material, name plates, publicity
material like pamphlets, fliers, hoardings, sign boards,
stationery, digital material, etc., for the purpose of
destruction/erasure.

f. An order granting damages is the tune of Rs

2,00,00,000/- for the damage caused to the Plaintiff's
brand equity, goodwill and reputation in favour of the
Plaintiff and against the Defendant.

g. An order directing the Defendant to render the accounts

to ascertain the quantum of unjust profits gained by
Defendant,

h. An order granting the cost of proceedings in favour of

the Plaintiff;

i. Any such further and other order(s) as this Hon’ble

Signature Not Verified
Digitally Signed CS (COMM 673/2022 Page 4 of 9
By:KAMLA RAWAT
Signing Date:11.04.2023
11:47:51
 Neutral Citation Number : 2023:DHC:2435

Court deems just and proper in the facts and circumstances

of the present case and in the interest of justice/equity.”

10. The defendant, in its written statement, contested the suit. It is a

matter of consternation to this Court that, despite the obvious identity
between the mark used by the defendant and the plaintiff’s registered
marks, the defendant, instead of acknowledging this fact, sought to
contest the allegation of infringement. In the process, valuable court
time has been wasted and the plaintiff also had to suffer a litigation
which could have been avoided, had the defendant seen sense at least
when the plaintiff issued a cease and desist notice to it.

11. This Court, while issuing summons, granted an ex parte

injunction against the defendant on 7th October 2022. The order was
directed to take effect on 15th November 2022. A reading of the said
order discloses that the defendant’s contention, in its undated reply to
cease and desist notice of the plaintiff, contended that it was not using
the mark SADDA PIND but was, instead, using 5ADDA PIND. This
Court noted that the contention of the defendant was incorrect, as it
was, in fact, using the mark “SADDA PIND”. Even in the mark
“5ADDA”, it was noted that the numeral 5 was so written as to
resemble “S”. Keeping these facts in mind, this Court injuncted the
defendant in the following terms:

“26. The Plaintiff has made out a prima facie case in its favour
for grant of an ex-parte interim injunction. Accordingly, till the
next date of hearing, the Defendant shall stand restrained from
using the mark & name 'SADDA PIND' including the device
thereof in respect of any resort/restaurant, accommodation, hotel
and entertainment venue or in relation to any other allied or
cognate services. The Defendant shall also stand restrained from
using any identical or deceptively similar name as that of the
Plaintiff, i.e., 'SADDA PIND'.

12. Following the aforesaid injunction, the defendant merely

Signature Not Verified
Digitally Signed CS (COMM 673/2022 Page 5 of 9
By:KAMLA RAWAT
Signing Date:11.04.2023
11:47:51
 Neutral Citation Number : 2023:DHC:2435

changed its online listing to “5ADDA P1ND”, by replacing “I” in

“5ADDA PIND” with “1”.

13. In these circumstances, the plaintiff moved I.A. 5843/2023

under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908
(CPC) alleging contumacious and wilful non-compliance, by the
defendant, of the injunction granted by this Court.

14. While the said application has remained pending, the defendant
has now filed an affidavit, stating that it has changed the name of its
restaurant to “The Punjab Village”.

15. As such, it is submitted that the defendant’s mark no longer

infringes the plaintiff’s.

16. Mr. Jain, learned Counsel for the defendant submits that, given
the fact that the defendant has adopted a non-infringing mark, the suit
may be disposed of, recording the undertaking of the defendant not to
use the infringing mark “SADDA PIND”, either in word or device
form, or any other mark which is confusingly or deceptively similar to
it.

17. Ms. Pokharia, learned Counsel for the plaintiff, however,

submits that the defendant should not be let off easily as there has
been deliberate infringement of the plaintiff’s registered trademark.

18. I am inclined to agree with Ms. Pokharia. This is an extreme

case. The defendant clearly, and with obvious intent to ride on the

Signature Not Verified

Digitally Signed CS (COMM 673/2022 Page 6 of 9
By:KAMLA RAWAT
Signing Date:11.04.2023
11:47:51
 Neutral Citation Number : 2023:DHC:2435

goodwill of the plaintiff, adopted the infringing and

logos which was identical to the logo adopted by the plaintiff. When
the plaintiff issued a cease and desist notice to the defendant, the
defendant, in its reply, misrepresented that it was not using the
aforesaid logo but was using the logo 5ADDA PIND. This
misrepresentation was also noted by this Court in its order dated 7th
October 2022. Even in its written statement filed by way of response
to the suit, the defendant contested the plea of infringement and
claimed that its mark did not infringe the plaintiff’s registered mark.
After the order of injunction was passed by this Court, the defendant,
instead of discontinuing use of the infringing mark, merely changed it
to 5ADDA P1ND. This amounts to no less than cocking a snook at
this Court, especially given the observation of this Court, that the
mark “5” as used in “5ADDA PIND” is deceptively similar to “S”.

19. A defendant who behaves in such a fashion cannot be let off

lightly. The defendant is not merely guilty of initial infringement but
of continuous and obdurate insistence on persisting with its infringing
activity despite several opportunities to discontinue the same. In the
process, the plaintiff has been dragged into an unnecessary litigation
and precious court time has been wasted. There has also been
contumacious disobedience of the injunction order dated 7th October
2022 which ought, of rights, to expose the defendant to punitive action
under Order XXXIX Rule 2A of the CPC.

20. Nonetheless, as the defendant has undertaken not to use the

infringing “SADDA PIND” mark either as a word mark or as a device
mark or to use any other mark which is deceptively similar thereto,

Signature Not Verified

Digitally Signed CS (COMM 673/2022 Page 7 of 9
By:KAMLA RAWAT
Signing Date:11.04.2023
11:47:51
 Neutral Citation Number : 2023:DHC:2435

this suit is decreed in the following terms:

(i) There shall be a permanent injunction restraining the

defendant from using the word mark or the mark “SADDA

PIND”, , or any other such mark which is

deceptively similar to the plaintiff’s registered word mark or
device marks, for any purpose whatsoever. This injunction shall
apply to all persons acting on behalf of the defendant as well as
its business associates, partners, directors, principal officers,
family members, servants, agents, dealers, distributors and
franchisees.

(ii) The defendant shall remove, from all its sites and listings,
physical as well as virtual, all references to the aforesaid marks

“SADDA PIND”, and forthwith.

(iii) The defendant is held liable to pay punitive costs ₹of

2,00,000/-, payable by way of a crossed cheque/demand draft in
favour of Shakuntala Poddar Welfare Foundation, Sainik Nagar,
Mansa Ram Park, Uttam Nagar ND 110059, an NGO working
for underprivileged slum children to be deposited with the
Registrar of this Court within a period of eight weeks from
today.

(iv) The plaintiff has also undertaken not to continue to

prosecute the Application No. 5301187 dated 27th January 2022,
filed by it before the Registry of Trademarks. It shall ensure that

Signature Not Verified

Digitally Signed CS (COMM 673/2022 Page 8 of 9
By:KAMLA RAWAT
Signing Date:11.04.2023
11:47:51
 Neutral Citation Number : 2023:DHC:2435

the said application is withdrawn, for which an application

already stands filed with the Registry of Trademarks. The
Registry is directed to prosecute the said application and pass
orders thereon within a period of eight weeks from today.

21. The suit stands decreed in the aforesaid terms.

22. Let a decree sheet be drawn up by the Registry accordingly.

23. The plaintiff shall be entitled to Court fees, if any, deposited by

it.

24. As the suit stands decreed, all further dates fixed in this matter
shall stand cancelled.

C.HARI SHANKAR, J
APRIL 10, 2023
ar

Signature Not Verified

Digitally Signed CS (COMM 673/2022 Page 9 of 9
By:KAMLA RAWAT
Signing Date:11.04.2023
11:47:51