IN THE HIGH COURT OF DELHI

CS(Comm.) No. 1021/2016

Decided On: 17.04.2017

Boman R. Irani Vs. Rashid Ahmad Mirza and Ors.

Hon’ble Judges/Coram: Rajiv Sahai Endlaw, J.

Headnote

Application for Interim Injunction from ‘passing off’ – Not granted- Plaintiff – Mr. Boman R. Irani s/o Mr. Rustom Irani who adopted the trademark – “YEZDI” –  YEZDI motorcylces – permitted user – IJIPL stopped in 1996 – registration of trademark not renewed – goodwill, reputation remains Defendant – using the mark “YEZDI” in relation to shoes – Plaintiff contended dishonest copying – creates impression of affiliation between Plaintiff and Defendant in mind of customers – Defendant contended no longer use of “YEZDI” – disputed Plaintiff’s title to the mark – Defendant is regd. proprietor – different goods – no scope of confusion- Held: Plaintiff not entitled to interim injunction – title to the mark not proved – use of mark not established – passing off, association of mark with Plaintiff not established – balance of convenience to Defendant

Keywords: Passing off, interim injunction, Order XXXIX Rules 1 and 2, the CPC

IN THE HIGH COURT OF DELHI

CS(Comm.) No. 1021/2016

Decided On: 17.04.2017

Appellants: Boman R. Irani Vs. Respondent: Rashid Ahmad Mirza and Ors.

Hon’ble Judges/Coram: Rajiv Sahai Endlaw, J.

Counsels: For Appellant/Petitioner/Plaintiff: C.M. Lall, Nancy Roy and Rupin Bahl, Advs.

For Respondents/Defendant: A.K. Goel, Anshul Goel, Ranjeev and Renu Narula, Advs.

JUDGMENT

Rajiv Sahai Endlaw, J.

IA No. 9286/2016 (of plaintiff under Order XXXIX Rules 1 & 2 CPC).

  1. The plaintiff has sued the defendant No. 6 Mirza International Limited (MIL) (of which defendants No. 1 to 4 are directors/officers) for injunction from ‘passing off’ its footwear with the trademark ‘YEZDI’ as that of the plaintiff and/or as that emanating from the house of the plaintiff.
  2. Summons of the suit and notice of the application for interim relief were issued.
  3. Defendant No. 6 MIL has filed a written statement and which has been adopted on behalf of the defendants No. 1 to 5 also without prejudice to their plea that they are neither necessary nor proper parties to the suit.
  4. The counsels were heard on 27th September, 2016 on the application for interim injunction and orders reserved.
  5. It is the case of the plaintiff (i) that Mr. Rustom Irani, father of the plaintiff, adopted

the trademark ‘YEZDI’,  (reference hereafter to ‘YEZDI’ be read as inclusive of logo) and commenced using the mark from the year 1969 onwards in relation to motorcycles through a permitted user to a company promoted by Mr. Rustom Irani by the name of Ideal Jawa (India) Pvt. Ltd. (IJIPL) and of which Mr. Rustom Irani was the principal shareholder; (ii) Mr. Rustom Irani was originally from the province named Yazd in Iran and adopted the mark ‘YEZDI’ from the name of the said province in Iran; (iii) after the demise of Mr. Rustom Irani, the brand ‘YEZDI’ devolved on the plaintiff who continued to allow the permitted use of the said brand to IJIPL which continued to be a family controlled company; (iv) the first ‘YEZDI’ branded motorbike was launched in the year 1968 and made a niche for itself in the country; (v) though the manufacturing of ‘YEZDI’ branded bikes stopped in the year 1996, the goodwill and reputation which the brand created for itself in the said period of time has continued to

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subsist; (vi) the plaintiff as of today also owns a website dedicated to the brand ‘YEZDI’ being www.yezdi.com which continues to advertise and promote the ‘YEZDI’ brand in India since 1998; (vii) that the plaintiff on 14th September, 2013, 1st January, 2014, 2nd July, 2014 has applied for registration of various ‘YEZDI’ formative marks in various classes (12, 25, 29, 30, 32, 33, 35 and 37) and which applications are pending consideration; (viii) the plaintiff is also the copyright owner of the artistic work in ‘YEZDI’ logo; (ix) in the year 1996, owing to diverse reasons, IJIPL stopped manufacturing and business activities and the use of the trademark ‘YEZDI’ by IJIPL has ceased since 1996 but the plaintiff has been using the name and logo as evident from the website www.yezdi.com; (x) though IJIPL, with the permission of the plaintiff and his predecessor, obtained registration of ‘YEZDI’ logo in classes 10 and 12 but has not renewed the said registrations after 9th October, 1997; (xi) however the ‘YEZDI’ brand continues to enjoy extensive reputation and goodwill owing to long usage and even today the brand ‘YEZDI’ is popular amongst the biking groups and ‘YEZDI’ branded bikes are available for re-sale even today through third parties with a number of ‘YEZDI’ clubs being in existence in several cities and ‘YEZDI’ dedicated pages are found on social networking sites like www.facebook.com; (xii) the plaintiff is in the process of reviving manufacturing of the motorcycles under the brand ‘YEZDI’; (xiii) that the Official Liquidator, in the proceedings for winding up of IJIPL, has staked a claim to the trademark ‘YEZDI’; (xiv) that the defendants No. 1 to 5 being the partners of M/s. Genesis International have obtained registration of the mark ‘YEZDI’ (word) in Class 25 for footwear; (xv) that the aforesaid M/s. Genesis International was incorporated as Genesis Footwear Enterprises Pvt. Ltd. and which has amalgamated with defendant No. 6 MIL and the plaintiff in February, 2016 learnt of the registration obtained by the defendants No. 1 to 5 in Class 18 and Class 25; (xvi) that the defendants have dishonestly copied the word ‘YEZDI’ from the plaintiff to create an impression in the minds of the general public that there is some association between the defendants and the plaintiff or that the use of the mark of ‘YEZDI’ by the defendants is in collaboration with the plaintiff; (xvii) the shoes manufactured by the defendants are stated to be inspired by the vintage ‘YEZDI’ bikes; (xviii) that the defendants are using the mark on their shoes as well as the packaging of the shoes; (xix) the defendants are also selling their products on interactive websites; (xx) that the ‘YEZDI’ mark of the plaintiff is an iconic and well-known brand amongst the motorcycle enthusiasts; (xxi) the use of the mark ‘YEZDI’ by the defendants for biking shoes is likely to create an impression in the minds of the consumer that there is some affiliation between the plaintiff and the defendants; and, (xxii) instance is given of a consumer complaining about the footwear of the defendants by relating it to the YEZDI motorcycles plaintiff.

  1. The defendants defend, disputing the ownership of the plaintiff of the mark YEZDI, especially in the face of the Official Liquidator of IJIPL admittedly claiming adversely to the plaintiff and pleading (i) IJIPL is a necessary party to the present suit; (ii) the plaintiff has admittedly never used the trademark ‘YEZDI’ in respect of footwear or other goods falling in Class 25; (iii) the plaintiff himself has admittedly not sold any goods under the trademark ‘YEZDI’; (iv) admittedly IJIPL has also not used the trademark ‘YEZDI’ in respect of any goods since the year 1996 and has abandoned the trademark registrations in its favour; thus the question of passing off does not arise; (v) ‘YEZDI’ is not an invented word but the name of a religious community which has survived and grown in adverse situation; (vi) as the partners of M/s. Genesis International have grown their business in very competitive and adverse situation like ‘YEZDI’ community, they bona fidely and honestly adopted the mark ‘YEZDI’ in the year 2008 and have since then been openly and continuously using the same; (vii) the registered mark now stands vested in the defendant No. 6 MIL; (viii) the defendant No. 6 MIL’s trademark ‘YEZDI’ has acquired immense goodwill and reputation; (ix) the

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defendant No. 6 MIL being proprietor of the registered trademark in Class 25 has exclusive right to use the same in relation to the goods specified therein and no injunction can be granted against it; (x) the defendant No. 6 MIL has also registered the mark ‘YEZDI’ in European Union in Classes 18, 24, 25 and 28; (xi) various other persons also have been using the mark ‘YEZDI’ in respect of their goods; and, (xii) that there is no scope of any confusion.

  1. The counsel for the plaintiff in his arguments, besides what is pleaded, contended (i) that Yezdi bikes are still traded and had sales of Rs. 26,00,000/- in the previous year; (ii) use by the defendants of the mark ‘YEZDI’ in relation to shoes will dilute the distinctiveness of the mark of the plaintiff; (iii) the brand of the defendants is Red Tape; iv) the defendants in their advertisement at page 709 have claimed their shoes to be inspired by vintage bikes from ‘YEZDI’, showing awareness and the reputation and goodwill of the plaintiff’s mark; (v) that the plaintiff is about to launch refurbished Yezdi bikes; and, (vi) that the defendants can be granted time to get rid of their stocks under the mark ‘YEZDI’.
  2. Per contra the counsel for the defendants argued (i) that the plaintiff has not filed any document in support of the title claimed to the mark ‘YEZDI’; (ii) that the plaintiff has not filed any document to show that it was the father of the plaintiff had had licensed the mark ‘YEZDI’ to IJIPL; (iii) the plaintiff has not filed any document to show that his father was the principal shareholder of IJIPL; (iv) the registration obtained by IJIPL of the mark on the contrary shows that the plaintiff or his predecessor-in-interest were not the owners thereof; (v) that of the three registrations obtained by IJIPL two have lapsed and the surviving registration is in respect of motorcycles, scooters and parts and fittings thereof and which has also not been not renewed after 9th October, 1997 but has not been removed from the Register as yet; (vi) that the plaintiff, by way of this suit is attempting to prove his ownership of the mark; (vii) the plaintiff is not entitled to interim injunction on the ground of latches, acquiescence and waiver; (viii) the plaintiff is not in footwear business; and, (ix) that sale of secondhand Yezdi bikes does not amount to user by the plaintiff of the mark ‘YEZDI’; (x) that the plaintiff admittedly has had no sale/advertisement since 1996; (xi) IJIPL which alone had obtained registrations of the mark has admittedly abandoned the mark; (xii) that the plaintiff or anyone else did not object to the application of the defendants for registration of the mark in Class 25; and, (xiii) the defendants, neither in their advertisement or otherwise have never claimed any association with the YEZDI motorcycles and the document at page 709 of plaintiff’s documents does not emanate from defendants. Attention was drawn to (a) the printout from the plaintiff’s website which describes the plaintiff as a first generation real estate developer; (b) the documents to show the extent of the defendants’ business; (c) the plaintiff’s documents to show that the plaintiff in his application for registration of the mark ‘YEZDI’ in Class 12 has claimed user since 28th August, 2013; and, (d) the letter of the Official Liquidator to the Registrar of Trademarks claiming rights to the trademark ‘YEZDI’.
  3. The counsel for the plaintiff in rejoinder contended that the Official Liquidator has not opposed the registration sought by the plaintiff.
  4. The counsels have thereafter also filed written submission.
  5. The counsel for the plaintiff along with his written submission has filed copies of judgments in :-

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“(i) Baker Hughes Limited v. Hiroo Khushalani MANU/DE/0411/1998 : 74 (1998) DLT 715;

(ii) Baker Hughes Limited v. Hiroo Khushlani MANU/SC/0719/2004 : 2004 (29) PTC 153 (DB);

(iii) Morgardshammar AB v. Morgardshammar India Pvt. Ltd. MANU/DE/0008/2012 : 2012 (49) PTC 449 Del;

(iv) Kamal Trading Company, Bombay v. Gillette U.K. Limited, Middles Sex, England MANU/MH/0828/1987 : 1988 (8) PTC 1 (DB);

(v) N.R. Dongre v. Whirlpool Corporation MANU/DE/0700/1995 : AIR 1995 Del 300 (DB);

(vi) Amritdhara Pharmacy V. Satya Deo Gupta MANU/SC/0256/1962 : AIR 1963 SC 449;

(vii) B.K. Engineering Co. v. Ubhi Enterprises (Regd.) MANU/DE/0404/1984 : ILR (1985) I Del 525 (DB);

(viii) T.V. Venugopal v. Ushodaya Enterprises Ltd. MANU/SC/0169/2011 : ;

(ix) Bata India Limited v. Pyare Lal & Co., Meerut City MANU/UP/0168/1985 : AIR 1985 All 242;

(x) Beiersdorf A.G. v. Ajay Sukhwani MANU/DE/1631/2008 : 156 (2009) DLT 83;

(xi) Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. MANU/SC/0724/2001 : (2002) 2 SCC 147;

(xii) Sunder Parmanand Lalwani v. Caltex (India) Ltd. MANU/MH/0063/1969 : AIR 1969 Bom 24 (DB);

(xiii) Hamdard National Foundation v. Abdul Jalil MANU/DE/2590/2008 : ; and,

(xiv) Rolex Sa v. Alex Jewellery Pvt. Ltd. MANU/DE/0796/2009 : .”

  1. The counsel for the defendants along with his written submissions has filed copies of judgments in (i) Smithkline Beecham Plc. v. Sunil Sarmalkar MANU/DE/5025/2012 : 2012 (52) PTC 418(Del); (ii) Prina Chemical Works v. Sukhdayal MANU/DE/0200/1972 : ILR (1974) I Del 545 (DB); (iii) Goramal Hari Ram v. Bharat Soap and Oil Industries MANU/DE/0431/1983 : 23 (1983) DLT 401 (DB); (iv) Veerumal Praveen Kumar v. Needle Industries (India) Ltd. MANU/DE/0757/2001 : 2001 PTC 889 (Del) (DB); (v) S.P. Chengalvaraya Naidu v. Jagannath MANU/SC/0192/1994 : JT 1993 (6) SC 331; (vi) Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories MANU/SC/0197/1964 : AIR 1965 SC 980; (vii) Sona Spices Pvt. Ltd. v. Soongachi Tea Industries Pvt. Ltd. MANU/DE/3457/2006 : 2007 (34) PTC 91 (Del.); (viii) Wander Ltd. v. Antox India (P) Ltd. MANU/SC/0595/1990 : 1990 Supp (1) SCC 727; and, (ix) B.L. and Co. v. Pfizer Products Incl. MANU/DE/0702/2001 : 2001 PTC 797 Del. (DB).

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  1. Having considered the rival contentions I am of the view that the plaintiff is not entitled to the interim injunction as sought of restraining the defendants from using the mark ‘YEZDI’ for the reasons hereinafter appearing:-

“(i) The plaintiff is yet to prove his title to the mark.

(ii) The defendants are admittedly the registered proprietor of the mark without any objection from the plaintiff.

(iii) The plaintiff himself or through anyone else is not using the mark in relation to any good, admittedly for at least ten years prior to the institution of the suit. It is yet to be established that the acts claimed by the plaintiff amount to use of the mark.

(iv) It is yet to be established that the use by the defendants of the mark amounts to the defendants passing off their goods as that of the plaintiff or the goods of the defendants being consumed for the reason of association with the plaintiff.

(v) The plaintiff, in the prevalent circumstances, will not suffer any injury from non grant of interim injunction; the plaintiff, if proves his case, notwithstanding acquisition even if any of further goodwill by the defendants in relation to the mark with the passage of time, be entitled to permanent injunction. Per contra, the defendants, if the plaintiff were to ultimately fail, will suffer irreparable injury from grant of interim injunction.

(vi) The balance of convenience is thus in favour of the defendants.”

  1. Though the document at page 709 of plaintiffs’ documents does not appear to emanate from the defendants, I am of the opinion that the defendants are not entitled to in their advertisements or otherwise convey that the ‘YEZDI’ shoes of the defendants are inspired by vintage bikes from ‘YEZDI’ or otherwise have any association with the ‘YEZDI’ bikes or to allow anyone else to portray such association.
  2. Accordingly, the application is disposed of by restraining the defendants from, in their advertisement or otherwise claiming that their footwear under the mark ‘YEZDI’ is inspired by motorcycles/bikes from ‘YEZDI’ or otherwise convey any association with ‘YEZDI’ motorcycles/bikes. The defendants are also restrained from allowing the marketing websites through which their goods are sold also to convey any such association.
  3. The application is disposed of.
  4. Needless to state that the observations contained herein are prima facie and shall have no bearing on the final decision on merits.

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