CS(OS) No.2377/2015 Page 1

* IN THE HIGH COURT OF DELHI AT NEW DELHI

% Decided on: 23.08.2017

+ CS(OS) 2377/2015, I.A. 24102/2015 ( O 39 R 2A), CRL.M.A.

15067/2015 (U/s. 340 Cr.P.C) CRL . M.A. 16950/2015 (U/s 340

Cr.P.C)

M/S KELWYN DOOR CARES (INDIA) & ANR. ..... Plaintiffs

Through: Mr. Ashoek Goel and Mr. Rajeev

Kumar, Advs.

versus

M/S JANSON ENTERPRISES & ANR ..... Defendants

Through: Mr. Amardeep Singh, Mr. Dinesh

Masant and Mr. Ambuj Saraswat,

Advs.

CORAM:

HON'BLE MS. JUSTICE DEEPA SHARMA

JUDGMENT

I.A. Nos. 16356/2015 (by plaintiffs under O 39 R 1 & 2), I.A. 21595/2015

( by defendants under O 39 R 4)

1. The plaintiffs have filed the suit for permanent injunction,

infringement of trade mark, passing off and have also claimed damages.

2. The plaintiff no. 1 is the registered proprietor of the trade mark

CLOSMA vide no. 1475173 dated 01.08.2006 in respect of hardware goods,

door closing devices, doors and window fittings, locks and handle fittings

etc in Class 6.

3. The plaintiff no.2 is the registered proprietor of trade mark CLOSMA

vide no. 1148501 dated 28.10.2002 in respect of hydraulic door closing

devices for door closures and floor springs in Class 7. The plaintiff no. 2

CS(OS) No.2377/2015 Page 2

is also the registered proprietor of trade mark KELWYN in respect of

closing devices for door, doors and window fittings etc in Class 6 and

also in respect of hydraulic door closing devices for door closures and floor

springs in Class 7 and they are using the trade mark CLOSMA since the

year 2002 and KELWYN since the year 1989. The word KELWYN is the

prominent part of the trading style of plaintiff no. 1/ firm. It is submitted

that website www.closma.com of plaintiff no. 1 provides the information

regarding all the products of the plaintiffs under its well known trade mark

CLOSMA. This website is accessible at any place in the world.

4. The plaintiffs alleged that in July 2015, it noticed that the defendants

are using the deceptively similar mark KLAZMA, KLAZMAX and

KLAZVYN (hereinafter referred to as “impugned marks”) in relation to

identical goods. The defendants copied the first four letters KLAZ in the

impugned marks by keeping in mind the first four letter CLOS of plaintiff’s

trade mark CLOSMA and thereafter added the word VYN by keeping in

mind the later three letters of plaintiff’s trade mark KELWYN. The

defendants have also copied the slogan of the plaintiff printed below its

trade mark CLOSMA and have also copied products code of the plaintiffs.

It is, therefore, submitted that the defendants are not only infringing the

CS(OS) No.2377/2015 Page 3

trademarks of the plaintiffs but are also passing off their goods as that of the

plaintiffs and thereby causing huge losses to the plaintiffs. It has also

affected the goodwill of the plaintiffs. On these facts, it is prayed that the

defendants, their agents, servants, representatives etc. be restrained from

using the impugned trade mark KLAZMA, KLAZMAX and KLAZVYN or

any other mark which is deceptively similar to the Plaintiffs’ trademark

CLOSMA and KELWYN. An application under Order 39 Rule 1 and 2 of

the Civil Procedure Code (hereinafter referred to as “CPC”) has also been

filed on the similar ground.

5. The suit as well as the application are contested by the defendants.

6. At the outset, the defendants have submitted that plaintiffs have not

come to this Court with clean hands and have concealed the fact that the

mark KLAZMA is the registered trade mark. It is submitted that the

plaintiffs, themselves, being guilty of fraud and misrepresentation, are not

entitled to any relief and the suit as well as the applications are liable to be

dismissed on this ground.

7. It is submitted that plaintiff no. 1, through its advocates, had moved

an application on 16.07.2015 with the Registrar of Trade Marks, New Delhi,

seeking rectification of the trade mark “KLAZMA” which is registered in

CS(OS) No.2377/2015 Page 4

the name of its proprietor Shri. Rajesh Jain vide registration dated

25.07.2012. It is submitted that a suit had been filed by the plaintiffs against

Sh. Rajesh Jain yet this fact had been concealed from the knowledge of the

Court and also that Sh. Rajesh Jain has not been made a party to the suit

although he is registered owner of trade mark.

8. It is further submitted that there is no similarity of any nature between

the defendants’ marks KLAZMAX-ARCHITECTURAL HARDWARE and

KLAZVYN with that of plaintiffs. It is submitted that Sh. Tarsem Jain,

proprietor of defendant no. 1 had applied for registration of trade mark

“KLAZVYN” which he has been using since 01.09.2012 and that the

trademarks of defendants have acquired a distinctive meaning since

September 2012. The use of mark by the defendants is not likely to cause

confusion in the mind of the public and also would not deceive anyone.

There is no similarity between the trademark of the plaintiffs and the

defendants, either visually or phonetically or otherwise. It is further

submitted that the plaintiffs were fully aware that no sale of any goods with

the trade mark KLAZMA ever took place at B-2/385, Sector -6, Rohini,

New Delhi (the alleged address), yet the plaintiffs sought ex-parte ad

interim injunction vide order dated 11.08.2015 and seized the alleged goods

CS(OS) No.2377/2015 Page 5

at the alleged address of the defendants. It is submitted that plaintiffs have

not only concealed the material facts from the notice of this Court but has

also sworn in a false affidavit. In the application under Order 39 Rule 4

CPC, the defendants sought the vacation of the interim order dated

11.08.2015 on the similar grounds. The application under Order 39 Rule 4

CPC is contested by the plaintiffs on the same grounds as enumerated in its

application under Order 39 Rule 1 and 2 of CPC.

9. I have heard the arguments of learned counsels and perused the

record.

10. The main and foremost argument of learned counsel for the

defendants is that the plaintiffs are not entitled to discretionary relief since

they have concealed from the Court that KLAZMA was the registered trade

mark and reliance is placed on M/s S.M. Dyechem Ltd. vs. M/s Cadbury

(India) Ltd, AIR 2000 SC 2114. It is also submitted that the present

application is liable to be dismissed in view of Section 124 of Trade Marks

Act, 1999 since the plaintiffs have already filed a rectification application

before the Registrar in respect of the registered trade mark “KLAZMA” and

has placed reliance on RM Dissels Pvt. Ltd vs. Thukral Mechanical Works

2016 (65) PTC Delhi Full Bench. It is further argued that the plaintiffs in

CS(OS) No.2377/2015 Page 6

their replication have admitted the filing of the rectification application and

the same is pending under Section 124 of the Trade Marks Act, 1999. It is

also argued that there is no similarity between the trademarks of the

plaintiffs and that of defendants. It is also argued that plaintiffs have filed a

suit for infringement and passing off and two suits cannot be filed together.

11. Learned counsel for the plaintiff has argued the matter at length and

has reiterated the pleas taken in the impugned application for stay. Learned

counsel has also relied on cases Lilly Icos LLC & Anr. v. Maiden

Pharmaceuitcals Lim 2009 (39) PTC 666 (Del.); Pankaj Goel v. Dabur

India Ltd. 2008 (38) PTC 46 (Del.); Indian Shaving Products Ltd. & Anr

v. Gift Pack & Anr. 1998 PTC 18 Del.; Mukesh Khadaria Trading v. DCM

Shriram Consolidated Limited 2010 (43) PTC 321 (Del.); and M/s.

Hidesign v. M/s. Hi-design creations AIR 1991 Del. 243 in support of his

arguments.

12. Admittedly, in the present case, the trade mark KLAZMA is

registered in the name of Sh. Rajesh Jain who is not made a party by the

plaintiffs yet relief has been sought against him. Sh. Rajesh Jain, is the

registered owner of the trademark “KLAZMA” and if any other person is

using the said trademark without his consent, the person aggrieved would be

CS(OS) No.2377/2015 Page 7

him. During the course of arguments and also in reply to application under

Order 39 Rule 4 of CPC, the plaintiffs have admitted that they had filed a

civil suit against Sh. Rajesh Jain which is pending trial in another Court, and

no injunction order was issued in favour of plaintiffs in that suit, yet the

plaintiffs have surreptitiously, by intentionally concealing the fact that the

mark KLASMA is registered in the name of Sh. Rajesh Jain and no stay

against the use of such mark was given to them by Court misguided the

Court and obtained an ex-parte order of stay against use of mark KLAZMA.

No injunction can be granted against the use of a registered trademark. It is

apparent that as per the knowledge of the plaintiffs themselves, none of the

defendant is the owner of the mark KLAZMA yet the suit is filed against

them concealing the fact that KLAZMA is registered mark and if the

defendants on their website or through any other medium claim themselves

to be the owner of the mark, KLAZMA, the person who could have any

grievance against such display would only be the registered owner of the

mark that is Sh. Rajesh Jain.

13. As regards the trade marks KLAZMAX ARCHITECTURAL

HARDWARE and KLAZVYN are concerned, defendants have claimed that

they have been using these trademarks since the year 2012 and have also

CS(OS) No.2377/2015 Page 8

applied for its registration. It is apparent from the documents placed on

record by the defendants that they had applied for registration of the marks

KLAZMAX vide application dated 01.06.2013 claiming its use since

01.09.2012 and for registration of mark KLAZVYN, vide application dated

11.06.2015 claiming its use since 01.09.2012. It is also apparent from the

documents placed on record by the defendants that prima facie the

defendants have shown that they have been using this mark since 2012 and it

seems that plaintiffs have not taken any steps against the use of these marks.

There is a considerable delay of about three years in moving the Court on

the part of the plaintiff. It is argued by learned counsel for the plaintiff

relying on the findings of the case in M/s. Hidesign (supra) and Mukesh

Khadaria (supra) wherein the delay of three years is not found to be fatal to

non-suit plaintiff and the relief was granted, that the delay itself cannot be a

ground to refuse injunction.

14. This Court in Mukesh Khadaria case (supra) case itself after

discussing the case law of Gujarat Bottling Co. Ltd. v. Coca Cola Co.

(1995) 5 SCC 545; The Fairdeal Corporation (Pvt.) Ltd v. Vijay

Pharmaceuticals 1985 PTC 80; Shri Gopal Engg. v. POMX Laboratories

AIR 1992 Delhi 302; Century Electronics v. C.V.S. Enterprises 1983 FSR

CS(OS) No.2377/2015 Page 9

1; Satish Khosla v. Eli Lilly Ranbaxy 1998 I AD (Delhi) 927; S.P.

Chengalvaraya Naidu v. Jagannath AIR 1994 SC 853; Pankaj Goel v.

Dabur India Ltd. 2008 (38) PTC 49; and Amar Singh Chawalwala v.

Shree Vardhman Rice & General Mills 2009 (40) PTC 417 summarised the

law as delay as under:-

“25. It is clear from the above that there are two views

with regard to dealing with delay in approaching the Court

for an injunction. One view that even minimal delay of a few

months would disentitle the plaintiff from an injunction

order while the other view is that delay in approaching the

Court would not necessarily disentitle the plaintiff from

obtaining an order of injunction. In our opinion, no hard

and fast rule can be laid down in this regard and each case

of delay must be judged on its own facts. In some cases, the

delay may be entirely bona fide while in some the delay may

be completely unexplained, while in other cases the delay

may amount to waiver or acquiescence. Whatever the

reason for delay, if it is inordinate and amounts to laches,

the Court would have to be extremely circumspect in

granting an ex parte injunction and later confirming it.”

(Emphasis supplied)

The principle of law as envisaged is that where the delay is

unexplained, not bona fide, it may amount to waiver or acquiescence

depending on the facts and circumstance of each case and also the conduct

of parties. In the case of Hidesign (supra) also, this Court considered the

facts and circumstances of the case and the pleas raised by the parties to

reach to the conclusion whether the delay amounts to acquiescence or not.

CS(OS) No.2377/2015 Page 10

Though the delay in moving the Court ipso facto does not disentitle the

plaintiffs for relief and its effect has to be judged in the light of the facts and

circumstance of the case and the conduct of the parties.

15. In order to be entitled for relief at this stage, the plaintiffs have to

prima facie give valid and reasonable reasons for delay. There is nothing on

record to show that the plaintiffs were not aware of the applications being

filed by the defendants for registration of these two marks, yet it remained

complacent and did not move the Court. The plaintiffs have failed to give

any valid and reasonable reasons for such complacency.

16. Also where there is unexplained delay in approaching Court, the

conduct of the parties is a relevant factor. It is the overall conduct of the

party which the Courts needs to take into account while exercising its

discretion of granting ad interim injunction.

17. Initially, on the first date of hearing, this Court found it appropriate to

issue ex-parte ad interim injunction only in respect of mark KLAZMA

which evidently the plaintiffs succeeded by concealed material facts from

this Court. There is no dispute to the principle of law that a discretionary and

the grant of injunction is equitable relief which has to be exercised with

caution. The equity demands that the person who seeks discretion must

CS(OS) No.2377/2015 Page 11

come to Court with clean hands and if he does not do so, he is not entitled

for any relief.

18. This Court in the case of M/s Seemax Construction (P) Ltd. Vs. State

Bank of India and another, AIR 1992 Delhi 197 has held as under:-

“10. The suppression of material fact by itself is a sufficient ground to

decline the discretionary relief of injunction. A party seeking

discretionary relief has to approach the court with clean hands and is

required to disclose all material facts which may, one way or the

other, affect the decision. A person deliberately concealing material

facts from court is not entitled to any discretionary relief. The court

can refuse to hear such person on merits. A person seeking relief of

injunction is required to make honest disclosure of all relevant

statements of facts otherwise it would amount to an abuse of the

process of the court. Reference may be made to decision in The King

v. The General Commissioners for the purposes of the Income Tax

Acts for the District of Kensingion, 1917 (1) KBD 486 where the court

refused a writ of prohibition without going into the merits because of

suppression of material facts by the applicant. The legal position in

our country is also no different. Charanji Lal v. Financial

Commissioner, Haryana, Chandigarh AIR 1978 P & H 326.

Reference may also be made to a decision of the Supreme Court in

Udai Chand v. Shankar Lal, [1978]2SCR809. In the said decision the

Supreme Court revoked the order granting special leave and held that

there was a misstatement of material fact and that amounted to

serious misrepresentation. The principles applicable are same

whether it is a case of misstatement of a material fact or suppression

of material fact.”

(Emphasis supplied)

19. The same principle is reiterated by this Court in the case of Charanjit

Thukral and Anr. Vs. Deepak Thukral and Anr. in CS(OS) No. 967/2010

decided on 29.07.2010 and held as under:-

CS(OS) No.2377/2015 Page 12

“18. It is settled principle of law that a person who approaches the

Court for grant of relief, equitable or otherwise, is under a solemn

obligation to candidly disclose all the material/important facts which

has bearing on the adjudication of the issues raised in the case. It is

the duty of the party asking for an injunction to bring to the notice of

the Court all facts material to the determination of his right to have

injunction and it is not an excuse for him to say that he was not aware

of the importance of any facts which he has omitted to bring forward.

Where plaintiff does not act bona fidely and does not put every

material facts before the Court, the Court is within its inherent power

to refuse to grant him injunction, even though there might be facts

upon which injunction might be granted. Conduct of the plaintiff is

very material in bringing the case and disclosing the facts before the

Court. plaintiff is required to make fullest possible disclosure of all

material facts within his knowledge to the Court and if he does not

make that fullest possible disclosure, he cannot obtain any advantage

from the proceedings and is liable to be deprived of any advantage he

might have already obtained by means of the order which has thus

wrongly been obtained by him by concealment of material facts.”

(Emphasis supplied)

21. In Gujarat Bottling case (supra) way back in 1985, the Supreme

Court has laid down the principle that the conduct of the parties is an

important factor while exercising discretion. The Court has held as under:-

“50. In this context, it would be relevant to mention that in the instant

case GBC had approached the High Court for the injunction order,

granted earlier, to be vacated. Under Order 39 of the Code of civil

procedure, jurisdiction of the Court to interfere with an order of

interlocutory or temporary injunction is purely equitable and,

therefore, the Court, on being approached, will, apart from other

considerations, also look to the conduct of the party invoking the

jurisdiction of the court, and may refuse to interfere unless his

conduct was free from blame. Since the relief is wholly equitable in

nature, the party invoking the jurisdiction of the Court has to show

CS(OS) No.2377/2015 Page 13

that he himself was not at fault and that he himself was not

responsible for bringing about the state of things complained of and

that he was not unfair or inequitable in his dealings with the party

against whom he was seeking relief. His conduct should be fair and

honest. These considerations will arise not only in respect of the

person who seeks an order of injunction under Order 39 Rule 1 or

Rule 2 of the CPC, but also in respect of the party approaching the

Court for vacating the ad-interim or temporary injunction order

already granted in the pending suit or proceedings.”

22. The Supreme Court in Rajabhai Abdul Rehman Munshi vs. Vasudev

Dhanjibhai Mody [1964 ]3 SCR 480 held that in the matters where the

Court has to exercise its discretion, the discretion cannot be exercised in

favour of the parties who have concealed the material facts from the notice

of the Court and that it is the duty of the parties to present before the Court

all those facts which are relevant for the Court to exercise its discretion. The

Court has held as under:-

“11……We cannot over-emphasize the fact that the jurisdiction of this

Court is discretionary. This Court is not bound to grant special leave

merely because it is asked for. A party who approaches the Court

knowing or having reason to believe that if the true facts were

brought to its notice this Court would not grant special leave,

withholds that information and persuades this Court to grant leave

to appeal is guilty of conduct forfeiting all claims to the exercise of

discretion in his favour. It is his duty to state facts which may

reasonably have a bearing on the exercise of the discretionary

powers of this Court. Any attempt to withhold material information

would result in revocation of the order, obtained from this Court. We are unable to agree with counsel for the defendant that the duty of

an applicant for special leave to this Court is discharged when he

merely summarises the judgment of the Courts below and claims relief

CS(OS) No.2377/2015 Page 14

on the footing that the findings are correct, when to his knowledge the

findings cannot be sustained and the findings have been so recorded

because the Courts below have been misled on account of

representations for the making of which he was either directly or

indirectly responsible. In our judgment the petition filed before this

Court was misleading.”

(emphasis supplied)

23. Also, in the case of S.P. Chengalvaraya Naidu (dead) by L.Rs. vs.

Jagannath (dead) by L.Rs. and others AIR 1994 SC 853, the Apex Court

has declined to exercise the discretion in favour of the party who had not

approached the Court with clean hands. The Court has held as under:-

“7. The High Court, in our view, fell into patent error. The short

question before the High Court was whether in the facts and

circumstances of this case, Jagannath obtained the preliminary

decree by playing fraud on the court. The High Court, however, went

haywire and made observations which are wholly perverse. We do not

agree with the High Court that "there is no legal duty cast upon the

plaintiff to come to court with a true case and prove it by true

evidence". The principle of "finality of litigation" cannot be pressed

to the extent of such an absurdity that it becomes an engine of fraud

in the hands of dishonest litigants. The courts of law are meant for

imparting justice between the parties. One who comes to the court,

must come with clean-hands. We are constrained to say that more

often than not, process of the court is being abused. Property-

grabbers, tax- evaders, bank-loan-dodgers and other unscrupulous

persons from all walks of life find the court - process a convenient

lever to retain the illegal-gains indefinitely. We have no hesitation to

say that a person, who's case is based on falsehood, has no right to

approach the court. He can be summarily thrown out at any stage of

the litigation.

(emphasis supplied)

CS(OS) No.2377/2015 Page 15

24. As discussed above, it is apparent that the plaintiff has not come

before this Court with clean hands and has suppressed the material facts of

the nature which goes to the very root of the matter. The plaintiffs have also

succeeded in obtaining an ex-parte interim injunction from this Court by

suppressing the material facts. The plaintiffs therefore are not entitled to the

equitable relief sought by them. The case laws relied upon by the plaintiffs

are of no help to them. This Court is of opinion that the plaintiffs are guilty

of concealing material facts, filing false affidavit and for misleading the

Court, which is nothing less than the contempt of this Court. The plaintiffs

are not entitled to the relief they have sought. The ex-parte injunction

granted vide order dated 11.08.2015 stands vacated. The application of the

plaintiffs under Order 39, Rules 1 and 2 of the CPC stands dismissed. The

application of the defendant under Order 39, Rule 4 of the CPC is allowed.

CS(OS) 2377/2015, I.A. 24102/2015 ( O 39 R 2A), CRL.M.A. 15067/2015

(U/s. 340 Cr.P.C) CRL . M.A. 16950/2015 ( U/s 340 Cr.P.C)

Let the matter be put up before the Roster Bench for 01.09.2017.

DEEPA SHARMA

(JUDGE)

AUGUST 23, 2017/ss