Delhi District Court
M/S Multifrig Marketing Co. Pvt Ltd And … vs M/S Chandra Engineers on 4 June, 2025
In the Court of Shri Ashutosh Kumar, District Judge (Commercial
Court)-01, Tis Hazari Courts, West District, Delhi
CS (Com.) No. 438/2021
CNR No. DLWT01-006994-2021
1. M/s Multifrig Marketing Co. Pvt. Ltd.,
Through its Director,
Mr. Wahi,
C/o 1/12, Kirti Nagar (W.H.S)
New Timber Market,
New Delhi
2. M/s Chandra Enterprises
Through its sole proprietor,
Mr. C.B. Wahi
C/o 1/12, 1st Floor, Kirti Nagar (W.H.S)
New Timber Market,
New Delhi
...Plaintiffs
Vs.
M/s Chandra Engineers,
C/o Khasra No. 173, G.F.,
Behind S.B.I. Bank,
Rithala, Delhi-110085 .....Defendant
Date of Institution : 24-09-2021
Date of hearing of arguments : 28-05-2025
Date of decision : 04-06-2025
Plaintiff's counsel- Sh Jenis Francis
Defendant's counsel - Ms Amita Sachdeva
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JUDGMENT
1. This is a suit filed by the plaintiffs under sections 134 & 135 of
the Trade Marks Act, 1999 (hereinafter referred to as the Act) for
permanent injunction restraining the defendants from
infringement, passing off and for rendition of accounts, damages
etc.
2. The plaintiffs’ case is that plaintiff no. 1 M/s Multifrig Marketing
Co. Pvt. Ltd. is a Private Limited Company, duly incorporated
under the Companies Act, 1957, and in existence w.e.f.
06.02.1986. It is further claimed that the present plaint is signed
and verified by Mr. Sumit Wahi on behalf of plaintiff no. 1, who
is its Director and competent to sign & verify the same, and other
accompanying pleadings & affidavits, vide Board resolution dated
04.01.2021, passed in his favor.
3. It is further the case of the plaintiff that the present plaint is
signed & verified by Mr. C.B. Wahi on behalf of Plaintiff No.2,
who is its sole proprietor (and also the Managing Director of
Plaintiff No.1.), and is authorized to sign & verify the same, and
other accompanying pleadings and affidavits.
4. It is further claimed by the plaintiffs that plaintiff no.1 who had
adopted the said trade mark ‘CHANDRA’ (hereinafter referred to
as the said trade mark) in the year 1979 in India, and is the
registered trade mark holder of the said mark bearing Trade Mark
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No. 395389 since 17.09.1982, in part ‘A’ of the Register as on
17-09-1982, and is engaged in the business of manufacturing,
marketing and selling of various products as classified/ detailed
under Class 11 of the Trade Mark Act, 1999 and dealing in
‘freezing and cooling machines, ice, safes, Air conditioning
apparatus and stabilizer for Air conditioning apparatus, and had
also launched its products under the several heads such as Kitchen
Equipment, Catering Products, Bulk Cooking Products, Laundry
Products, Medical Equipment, Refrigerator/ Cooling Products,
Racks and Trolley Products, Dish washing Products and Air
Exhaust Systems, all which contain the embossing of the said
trade mark ‘CHANDRA’ on them, and the said mark is currently
valid and subsisting. In addition, it is also claimed that plaintiff
no. 1 is also the holder of the Deed of Assignment, whereby the
Trade Mark ‘CHANDRA’ and all legal rights associated with it
were transferred from M/s Multi Marketing Company in favor of
M/s Multifrig Marketing Company Pvt. Ltd. i.e. plaintiff no.1,
which is valid, subsisting and has been renewed from time to time
as per the provisions of the Trademarks Act 1999. It is claimed
that the said trade mark was most recently renewed for a period
of 10 years from 17.09.2020, and further that plaintiff no.1 had
applied for a Legal Proceeding Certificate in the Trade marks
Registry Delhi, vide receipt no. 07.04.2021.
5. It is further claimed by the plaintiffs that pursuant to a request on
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Form TM – 24 dated 10-02-1989, and order thereon dated 03-04-
1989, plaintiff no. 1 has been registered as subsequent proprietor
of the said trade mark from 20-01-1989, by virtue of the Deed of
Assignment dated 20-01-1989.
6. It is further the case of the plaintiffs that plaintiff no. 2 (registered
as a Micro Scale Enterprise, having Registration No.
DL08D0014103 & commenced w.e.f 01.01.2012) being the sister
concern/ proprietorship concern of the Managing Director of
Plaintiff no. 1, and also by reason of having common promoters,
Plaintiff No.1 had permitted/ authorized Plaintiff no.2 to use its
Registered Trade Mark “CHANDRA”, by way of a Memorandum
of Understanding dated 01.01.2012.
7. It is further claimed by the plaintiffs that the said trademark has
acquired a secondary meaning and is now closely associated by
the relevant members of trade and public as belonging to Plaintiff
No.1 only, as Google Search for Chandra kitchen
Equipment/cooling cabinets leads to Plaintiff No.1’s websites and
further, digital platforms Just Dial & India Mart also carry
Plaintiff No.1’s profile & information. It is further claimed by the
plaintiffs that plaintiff no. 1’s products have acquired unique fame
and reputation in the market due to its considerable expertise &
specialization over the years, and also that a considerable sum of
money has been spent to promote the said products. It is further
the case of the plaintiff that Plaintiff No.1 being a very old and
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reputed Company and its having market presence over the last 42
years has witnessed a rapid growth since its inception in the
year 1979. It is further claimed by the plaintiffs that owing to
their continued dedication, honest efforts & hard work, they have
successfully created a special place for themselves in the market,
their products are sold in various market segments and considered
the top choice of consumers, and hence, by virtue of extensive use
and vast publicity in respect of the said trade mark also, the
plaintiffs enjoy exclusive proprietary rights over the said trade
mark.
8. It is further the case of the plaintiffs that their products are sold/
marketed on a very wide market range in the entire country, and
that they have supplied a large number of ‘Chandra’ Kitchen
Equipment / Cooling Cabinets throughout India, to various
Pharmaceutical / Medical Organizations, Government
Departments, Commercial Organizations, Five Star Hotels,
Restaurants, Public Undertakings, Institutions, Hospitals, Food
Courts, Petrol Pumps and even to small Shopkeepers/Vendors,
which sales are supported by the prompt and responsible support
service offered under trade name ‘Chandra’. It is further claimed
by the plaintiffs that the illustrious list of their clients includes
esteemed names like the President of India House, the Prime
Minister of India Office, Parliament House, B.H.E.L, , Mother’s
Diary, ITDC, Taj group of Hotels, Ganga Ram Hospital, Holy
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Family Hospital, ESSEX Farms, Christ Church, Krishna Mandir,
Shagun Jewellers, Khanna Jewellers. It is further claimed that in
addition to offering quality hardware, the Plaintiffs also provide
warranty/ guarantee of their products to prove their reliability and
the ruggedness of the products, and have thus created a unique
identity for themselves in the Market, which distinguishes them
from various other competitors. It is also claimed that plaintiffs’
products being sold under the said trademark, also have a
presence in the neighbouring country Nepal, where also the said
brand has established its popularity & goodwill.
9. The plaintiffs’ case further is that they are not just the prior
holder, but also the exclusive owner of the Registered Trade mark
‘CHANDRA’, and the details of the trade mark
registrations/filings of the plaintiffs for the said trade mark
‘CHANDRA’ are reproduced as under:
Trade Mark Registration No. Registration date Class
CHANDRA Registration 17-09-1982 Last 11
No.395389 renewed on 11-
08-2020 for a
period of ten
years from 17-
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CHANDRA 4808645 Pending 11
Pending
Application
CHANDRA 4939548 Pending 37
Pending
Application
10. It is further claimed that by virtue of its extensive and prolonged
use, the products of the plaintiffs under the said trademark bearing
distinctive features is associated with the plaintiffs and the
plaintiffs alone, and continues to be the most integral part of
plaintiffs’ business and also, owing to the long and continued use
over a period of more than 42 years, the said trade mark of the
plaintiffs has gained/ earned the reputation that it commands
today in the market, such that its products have become well
known and people associate the same with the plaintiffs only.
11. It is also claimed that the plaintiffs also participate in trade fairs &
exhibitions from time to time, and have also incurred substantial
amounts in advertisement and sales promotion of the said trade
mark, which has been advertised in various media, including on
huge billboards in various cities.
12. It is further the case of the plaintiffs that they became aware of the
defendant’s dishonest act for the first time when their
representative came across the product, sold/ passed off/ marketed
by the defendant under the trade name “CHANDRA”, with a
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clever addition of the word/ suffix “Engineers” to their products,
which were identical to the products being sold by the Plaintiffs.
It is further claimed that in fact upon enquiries from the plaintiffs’
representative, the defendant had also shown its willingness to
supply the goods under the impugned Mark i.e. “Chandra” having
generic suffix “Engineers”, to any place within India and more
specifically, to all parts of Delhi. It is claimed that the suffix of a
generic word ‘Engineers’ by the defendant in its trade name was
inconsequential, as the dominant word was “CHANDRA” and the
use of the word ‘ENGINEERS’ along with ‘CHANDRA’ failed to
make the defendant’s name distinctive, and per contra, the same
became deceptive and misleading. It is claimed that the defendant
has malafidely and dishonestly adopted the plaintiff’s said trade
name/ mark, to dishonestly mislead the common consumers into
believing that their products being sold under the trade name
“Chandra”, by suffixing “Engineers”, were in fact originating
from the plaintiffs. It is claimed that the use of the mark
‘CHANDRA’ alone or used in conjunction with any other
name/mark and any such deceptively similar mark would
immediately lead anyone to believe that the said
business/organization/entity is connected with that of the
plaintiffs’, and that such use is bound to create confusion and
misconception in the minds of all concerned, and constitutes an
infringement of the trade mark under the Act and also passing off.
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13. It is also claimed by the plaintiffs that they were completely
shocked and taken aback when it came to their knowledge that
apart from distributing/ marketing/ passing off its products under
the trade name “Chandra Engineers”, through common trade
channels and in retail shops, the defendant was also grasping
orders/ assignments from potential clients in the similar trade
business by deceptively using the trade name “CHANDRA” with
an addition of “Engineers” to its trade name, and that the
defendant had even approached Rashtrapati Bhawan, New Delhi,
whom the plaintiffs have had dealings with for the last several
years, and had procured several contracts and had also
successfully completed them. It is claimed that the defendant
malafidely misled the officials of the said department into
believing that it was in fact associated with plaintiff no.1, and
managed to get a contract bearing no. 36, dated 11.01.2021, for
Rs. 7,99,920/-, which contract was identical & similar to some of
the contracts which were given to the plaintiffs by Rashtrapati
Bhawan. It is further claimed that owing to the services rendered
by the defendant under the Trade Mark “Chandra”, in relation to
the equipment supplied by the plaintiffs/ such similar class of
equipment, any mishap/ malfunction that might occur could
adversely affect Rashtrapati Bhawan, which is the top
Government Office of India, including other allied institutions,
and in case any such event actually took place, it would not only
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bring disrepute to the plaintiffs’ unblemished reputation in the
industry, but would also, at the same time, adversely affect the
interests of the Country as a whole.
14. It is further claimed by the plaintiffs that the defendant was also
providing maintenance services for the products/ machines
manufactured by the plaintiffs. It is further the case of the
plaintiff that the products marketed/ passed off/ sold by the
defendant under the name “CHANDRA” are totally identical and
indistinguishable from the registered trade mark of the plaintiff
“CHANDRA”.
15. It is also the case of the plaintiffs that they also own and maintain
domains, namely www.chandrakitchenequipment.com &
www.chandracoolingcabinet.com., wherein detailed information
about their products is available, and that the contact email of the
plaintiff No.1 is [email protected]. However,
they found it shocking to note that the defendant also maintains a
website under the domain name
“http://www.chandraengineers.in/”, in which it displays a similar
class of products.
16. It is further claimed that as per the computer generated Trade
Mark-search report 14.02.2021, a public search made under the
website “https://ipindia.gov.in/trade-marks.htm” of the word
“Chandra” under Class 11, lists out the entities/ companies having
the aforesaid letters/ suffixes/ prefixes in their trade mark name
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and plaintiffs’ trade mark is the only name under the word mark
“CHANDRA” and is duly listed in the said search, and that
defendant’s mark is not listed in the said search report, which only
goes on to prove that the mark of the defendant has not even been
filed in the Trade Mark Registry, clearly indicating that the
defendant does not accord any special importance to the said
mark, and therefore the plaintiffs are not only entitled to be
granted protection against infringement u/s 28 & 29 of the Act,
but are also entitled to seek damages for such illegal use of its
registered trade mark.
17. It is also claimed that by virtue of extensive use and publicity, the
trade mark of the plaintiff has become distinctive and is
exclusively identified with its business, and that the defendant is
now illegally reaping the benefits of the reputation/ goodwill
earned by the plaintiffs over the past many years, and thus,
keeping in mind the extensive use and reputation enjoyed by the
said trademark, such adoption of the impugned mark by the
defendant is blatantly dishonest and actuated by a malafide
intention to take advantage of its reputation, thus leading to
passing off its goods as originating from the plaintiffs. It is
claimed that the goods of the parties being identical, having same
trade channels/set of consumers/traders, the use of the deceptively
similar mark by the defendant will cause confusion and deception
in the minds of the public and the members of trade, into
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believing that the defendant’s goods enjoy the plaintiffs’
endorsement, or that they are in some way connected with the
plaintiffs. It is further the case of the plaintiff that no ordinary
man under normal circumstances would be able to distinguish
between “Chandra” and “Chandra Engineers”, when the service/
trade provided by both the entities was identical and similar. It is
claimed that the plaintiffs are the prior user and prior registrant of
the said Trade Mark.
18. It is further claimed that being aggrieved by the acts of the
defendant, plaintiff no.1 served a legal notice dated 17.01.2021
informing the defendant of the plaintiffs prior rights of the said
trademark ‘CHANDRA’ and calling upon the defendant to cease
& desist from using the said trade mark; however, the defendant
showed no such intention, and instead gave a frivolous and
untenable response to the said notice, stating that the word
“Chandra” forms part of the middle name of defendant’s family,
and it continued using the trade name “CHANDRA” by suffixing
“Engineers”.
19. It is also the claim of the plaintiff that the sale of such products
under the trade name Chandra by the defendant is causing and is
also bound to cause further irreparable loss, harm and injury to the
plaintiffs’ and that the plaintiffs’ sale figures have taken a dip due
to the aforesaid infringement by the defendant, which loss is
aggravated by the fact that the purchasing public is being
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confused and deceived into believing that the defendant’s
products originate from the plaintiffs, when in fact, they do not.
It is further claimed that the use of the said trade mark by the
defendant is likely to dilute the distinctive character of plaintiffs’
registered trade mark, which is likely to be debased and eroded,
and such debasement and erosion of the plaintiffs’ reputation and
goodwill strikes at the very root of their existence, which is not
measurable in terms of money and plaintiffs cannot be adequately
compensated monetarily.
20. It is further claimed that the plaintiffs have suffered, and are also
likely to suffer incalculable losses, both tangible and intangible to
their goodwill, business and reputation, due to the defendant’s
acts of infringement and passing off, and more specifically, the
plaintiffs claim damages on account of:
(i) Loss of its business or sales due to the confusion and deception
of its customers;
(ii) Loss of reputation and image, namely the intangible aura
around the goodwill, which is being diluted, as the Plaintiff has no
control over the quality of the defendant’s products, which are
being offered by it under an identical trade mark. The sub-
standard products of the Defendant will adversely damage the
Plaintiff’s reputation through loss of prestige. The said loss will
also be reflected in the loss of sales. Damages alone would not be
an adequate remedy as the Plaintiff’s exclusivity and reputation is
in jeopardy. A certain cache attaches to Plaintiff’s products, partly
because of the high quality of the Plaintiff’s products and partly
owing to the goodwill and recall value of the Plaintiff’s unique
products and brand name ‘CHANDRA’. The damage to the
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Plaintiff’s image will also be reflected in the loss of sales;
(iii) Loss of the confidence or trust of the customers of Plaintiff as
a consequence of having placed undue reliance on the inferior and
substandard quality of products being provided by the Defendant
under infringing Trade Mark;
(iv) Exemplary damages due to the blatant disregard to the
principles of fair-trading by Defendant in the present proceedings.
21. The present suit is filed by the plaintiffs with the following
prayers:
i. decree of permanent injunction restraining the Defendant its
proprietors, directors, partners, principal officers, agents, family
members, servants, dealers, distributors and/ or anyone acting for
and on their behalf from using the Registered Trade Mark
“CHANDRA” bearing Trade Mark No.395389 for any Product;
ii. A decree of mandatory injunction directing the delivery up
against the Defendant all material consisting of the Registered
Trade Mark “CHANDRA” bearing Trade Mark No.395389,
including packaging material, sign boards, publicity material,
brochures, pamphlets, stationary etc.;
iii. A decree of mandatory injunction directing rendition of
accounts in favour of the Plaintiff of illegally earned profits by the
Defendant by use of the Registered Trade Mark “CHANDRA”
bearing Trade Mark No.395389 of the Plaintiffs;
iv. Pass a decree of mandatory injunction restraining the
Defendant from selling the products under the Registered Trade
Mark “CHANDRA” bearing Trade Mark No.395389 of the
Plaintiffs and withdrawing all goods from all across their outlets
in India and to make an inventory thereof and file the same before
the Hon’ble Court.
v. Pass a decree of damages of an amount of Rs.20,00,000/- in
favour of the plaintiffs and against the defendant subject to the
final quantification of damages after rendition of the accounts.
vi. Pass a decree of permanent injunction, directing the
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defendant to remove/ take down all websites/ electronic
advertisements in any manner/ any social media accounts being
operated under the Trade Name “CHANDRA.”
vi. Costs be awarded in favour of the Plaintiff;
22. In its preliminary objections, the defendant has pressed for the
dismissal of the present suit, inter alia, on the grounds that the
same is bad for non-joinder of parties, not having been filed by an
authorized person, the plaintiff having concealed material facts,
and having approached the court with unclean hands, and also
liable to be rejected under Order VII Rule 11 r/w section 151
CPC.
23. The further case of the defendant in its preliminary objections is
that the word “Chandra” is the Hindi translation of moon, which is
the natural satellite of our planet Earth, which denotes the Hindu
God, has mythological significance and apart from the
mythological aspect, the same is very commonly used as an
Indian name, middle name and surname, and also interestingly, is
used in the names of both males and females. The defendant has
also claimed that the word Chandra has significance not only in
India, but also worldwide, which can be understood by the fact
that NASA launched the Chandra Space Telescope, as an X-ray
observatory to send detailed information about space, and also
named the said observatory after the Nobel prize winner
Subrahmanyam Chandrasekhar. It is further claimed that it is the
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settled law that the name of a public deity, which is in the public
domain, should not be monopolized by protecting it as intellectual
property, and the word Chandra has extensive use worldwide by
different people and different organization for their products,
names, surnames, religious temples etc., and hence, cannot be
protected as intellectual property. It is also the case of the
defendant that since the plaintiff’s plaint is silent about why they
had adopted the word Chandra as their mark, it can be assumed
that the plaintiffs had adopted the word Chandra for mythological
reasons, and thus, the alleged registration of the Trade Mark by
the plaintiffs gives them no right to its exclusive use.
24. It is further claimed by the defendant that the present plaint is
liable to be rejected, being barred by limitation, since the plaintiffs
intentionally and deliberately did not disclose the date/ month or
the year when they came to know about the alleged infringement
of their trademark, and that the period of limitation for filing a suit
for infringement of a trademark is three years from the date of
such infringement.
25. It is further claimed that both the parties are carrying out their
respective businesses from the same city, and had also
participated in a tender floated by CPWD bearing NIT/ Line #:
192/EE/E/PEED/16-17/1 along with various other firms, wherein
the plaintiffs, the defendant and another firm, namely Dolche
India, were the three qualifiers, and the document depicting the
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names of the said qualifiers was displayed/ published as a regular
practice, and thus, it is beyond the comprehension of the
defendants as to how the plaintiffs were unaware of the
defendant’s firm. It is also claimed by the defendant that since
2015, the plaintiffs and the defendant have been co-applicants in
several tenders issued by Government Departments like CPWD,
which disentitles the plaintiffs from seeking any relief, and
accordingly, the plaint of the plaintiffs is liable to rejected.
26. It is further the claim of the defendant that it is a bonafide user of
the name ‘Chandra Engineers’, which is not different from the
name of its firm, and that section 35 of the Trade Marks Act
permits anyone to carry on a business in his own name, or in the
name of his predecessor in a bonafide manner. It is also claimed
that the defendant’s firm was earlier a sole proprietorship firm
namely Chandra Engineers & Contractors, which was established
by Late Sh. Phool Chandra, but after his death on 20-08-2019, his
sons namely Vinay Kumar, Manish Kumar, Bhuvenesh Kumar
and Chander Prakash, became partners of the defendant’s firm
after inheriting the said business, and changed the said name to
Chandra Engineers for their partnership firm. It is further the case
of the defendant that the defendant has been using the said name
since the year 1993, and that the name Chandra is a part of the
name of the erstwhile proprietor of the firm, and thus the
defendant has the full freedom to use his predecessor’s name or
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surname. It is also the case of the defendant that it is protected
under the Trade Marks Act 1999 r/w Rules 2017, which
disentitles the proprietor of a registered trademark to interfere
with any bonafide use by a person of his own name, his
predecessor’s name and surname.
27. The defendant has further claimed that the present suit is liable to
be dismissed since the mark allegedly used by the plaintiffs is
“Chandra”, whereas the defendant is using “Chandra Engineers”
as its firm name. The defendant has also claimed that since the
defendant has been using the name of its firm as Chandra
Engineers & Contractors since 1993, and has already established
itself in the market long back by earning vast goodwill, it has no
need to do such unprofessional acts/ conducts to take advantage of
the plaintiff’s goodwill. The defendant has further claimed that
the plaintiff’s suit was liable to be dismissed since the plaintiff’s
trade mark and the defendant’s firm’s name are not identical or
deceptively similar, as claimed by the plaintiffs and it is a well
settled principle of law that marks must be considered in entirety,
giving importance to the manner in which the mark has been
represented and the meaning conveyed by the whole of the mark.
It is also claimed by the defendant that there is no chance of
confusion to the consumer or members in trade, as the manner of
the use of its trade mark by the plaintiffs and the use of its trade
name by the defendant is different, in as much as the plaintiffs are
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using “CHANDRA” as their registered Trade Mark and “Multifrig
Marketing Co. Pvt. Ltd.” as its Firm Name, and the defendant is
using “Chandra Engineers” as his Trade/Firm Name, and on
comparison as a whole, both the words are completely different
and distinct by all yardsticks of comparison, be it visually,
structurally, aurally or conceptually, and hence, there is no
possibility of any confusion/deception. It is further claimed by the
defendant that as per its knowledge, the plaintiffs have always
publicized and participated in all tender documents by the name
‘Multifrig Marketing Company Private Limited’ and not with
their Trade mark Chandra, whereas the defendant’s firm had
participated with the name ‘Chandra Engineers.
28. It is further the claim of the defendant that the suit is also liable to
be dismissed on the ground that the plaintiffs’ mark is generic and
incapable of being exclusively monopolised by any party, as the
word ‘Chandra’ is a generic word, and thus, cannot be protected as
a trade mark. Also, the defendant claims to have independently
and bonafidely adopted the name of the firm as “Chandra
Engineers”, without the knowledge of the plaintiffs mark.
29. It is also claimed by the defendant that the suit is not maintainable
since the doctrine of ‘Delay and Laches’ is an equitable doctrine,
which is based on the maxim “Vigilantibus non dormientius
aequitas subvenit” which means that equity aids the vigilant, and
not the ones who sleep over their rights. It is claimed that the
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plaintiffs had the knowledge that defendant was the bonafide user
of the name “Chandra Engineers”, despite which they never raised
any objections against the usage of the name “Chandra Engineers”
by the defendant, for the last appx. 30 years. It is further claimed
that the doctrine of delay and latches being an equitable one is
based on the principle of equity, that is one who comes to equity
must come with clean hands.
30. It is further claimed that the defendant had undertaken and
completed various projects of CPWD since 2015, qua which it
had received completion certificates from CPWD for all such
projects and that the Central Public Works Department or its staff
in no case had any confusion or deception caused in their minds to
believe that the defendant “Chandra Engineers” is plaintiff
“Multifrig Marketing Co. Pvt. Ltd.”, and further that both the
parties had applied for common tenders of CPWD, thus ruling out
the question of CPWD believing that “Chandra Engineers” and
“Multifrig Marketing Co. Pvt. Ltd.” were one and the same.
31. On merits, the defendant has given a general denial to the
averments of the plaintiffs in the plaint for want of knowledge.
The defendant has denied that its trade name Chandra Engineers
was deceptively similar to the plaintiff’s trade mark
‘CHANDRA’, which would amount to infringement and passing.
The defendant has denied that the plaint has been signed and
verified by Sumit Wahi on behalf of plaintiff no. 1, who is the
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Engineers Page No.20 of 59
director of plaintiff no. 1 and by C.B. Wahi, on behalf of plaintiff
no. 2, who is the sole proprietor of plaintiff no. 2, for want of
knowledge. In its further reply on merits, the defendant has
denied that by virtue of extensive and prolonged use, the
plaintiffs’ products under its trademark ‘CHANDRA’ bearing
distinctive features are associated with the plaintiffs and plaintiffs
alone, and that owing to its long and continued use over a period
of more than 42 years, the plaintiffs’ trademark has gained the
reputation that it commands today in the market, and further that
the products of the plaintiffs have become well known, and that
people associate the same with the plaintiffs only.
32. It is also claimed by the defendant that the term “Chandra
Engineers” is being bonafidely used by the defendant for the last
approximately 30 years, and the name “Chandra” is a part of the
name of the erstwhile proprietor of the defendant’s firm, who also
used to be known by the name Chandra. The defendant has denied
that it had malafidely and dishonestly adopted the plaintiff’s trade
mark to dishonestly mislead the common consumers into
believing that its products were, in fact, originating from the
plaintiffs, and has rather claimed that it is a bonafide and honest
user of the said trade name “Chandra Engineers” since 1993, i.e.
for the last approximately 30 years, and that the plaintiffs never
raised any objections to it, and that after all these years of using
the said trade name and being in the same market, it cannot be
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Engineers Page No.21 of 59
believed that plaintiffs were unaware of this fact, specially when
the parties were running their respective offices from the same
city, and that too from a distance of a few kilometers. It is further
claimed by the defendant that since the year 2015, the parties have
been co-applicants in many tenders issued by CPWD.
33. The defendant has denied that it approached the Rashtrapati
Bhawan, New Delhi and malafidely misled the officials into
believing that it was associated to plaintiff no.1, or that it
managed to get a contract from Rashtrapati Bhawan by
misrepresentation / cheating and rather claimed that it had
procured several contracts from the Rashtrapati Bhawan, CPWD
since 2015 and has also successfully completed them. The
defendant has further denied that it had illegally grabbed a
contract dated 11.01.2021, bearing contract No.36 amounting to
Rs.7,99,920/-, from the Rashtrapati Bhawan, New Delhi, which
was identical and similar to some of the contracts given to the
plaintiffs by Rashtrapati Bhawan.
34. The defendant has further denied that it is providing maintenance
services for the products/machines manufactured by the plaintiffs
and supplied to M/s ICS Foods & Hospitality Services Pvt. Ltd.
and has, on the contrary, claimed that the aforesaid company M/s.
ICS Foods & Hospitality Services Pvt. Ltd. had approached the
defendant in the year 2018 for its services, which validates the
quality of the service given by the defendant. The defendant has
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Engineers Page No.22 of 59
also denied having adopted the plaintiffs’ Trade Mark
“CHANDRA”, to actively work under the guise of the same, with
the addition of an insignificant suffix “Engineers” and has also
denied grabbing the contracts of the plaintiffs by misleading its
potential and active clients. It is claimed by the defendant that it is
a bonafide, honest and concurrent user of word Chandra in its
trade name “Chandra Engineers” for the last 30 years, and has
gained goodwill and reputation in the market.
35. The defendant has further denied that no ordinary man under
normal circumstances would be able to distinguish between
“Chandra” and “Chandra Engineers”, when the service / trade
provided by both the entities is identical and similar and instead
claimed that plaintiff no.1 is a company registered as “Multifig
Marketing Co. Pvt. Ltd., which is entirely different from the name
of defendant’s concern i.e. “Chandra Engineers” and further that
the trade name “Chandra Engineers” is being bonafidely used by
defendant since 1993 and no objections from anyone, including
plaintiffs, have been filed in last 30 years. The defendant has
denied that it has marketed/passed off/sold any products under the
name “CHANDRA” but has admitted that it maintains a website
under the domain name https://www.chandraengineers.in/. The
defendant has admitted that its Trade Mark is not listed in the
Trade Mark-search report as the defendant has not gotten its name
registered before the Trade Marks Registry. The defendant has
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Engineers Page No.23 of 59
further stated that it is not mandatory to get the trademark
registered under the Trade Marks Act, claiming thus that since
both the words ‘Chandra’ and ‘Engineers’ are generic in nature,
no fruitful purpose would, therefore be served by getting the same
registered, as defendant knows that it would be unable to get
monopolistic right for the said mark.
36. The defendant has claimed that it is the settled law that if anyone
is using a particular mark for a long time for a particular product
or business, and has gained sufficient amount of reputation, then
such mark can be recognized as a trademark, without being
officially registered under the Trade Mark Act, 1999, and the
name of its firm “Chandra Engineers” is being bonafidely used by
the defendant for the last 30 years, and has gained a reputation as
it has significantly completed various projects/contracts of various
private organizations since 1993 and even Government entities
such as Rashtrapati Bhawan, CPWD, IRCTC since 2012. The
defendant has further denied that the use of its trade name
“Chandra Engineers” has created any confusion or misconception
in the minds of all concerned or that it constitutes an infringement
of the trade mark of the plaintiff. The defendant has also denied
that by virtue of extensive use and publicity, the plaintiff’s mark
has become distinctive of and is exclusively identified with the
plaintiff’s business, and that the defendant is now illegally reaping
the benefits of the reputation / goodwill earned by the plaintiffs
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Engineers Page No.24 of 59
over the past many years. The defendant denied that plaintiff is
entitled for any relief.
37. On the pleadings of the parties, the following issues were framed
on 25-09-2023:
1. Whether the plaintiff is entitled for decree of permanent
injunction restraining the defendant, its proprietors, etc. from
using the registered trademark “CHANDRA” for any of its
product as of their? OPP
2. Whether the plaintiff is entitled for decree of mandatory
injunction directing the defendant for delivering all material using
the trademark “CHANDRA” as alleged? OPP
3.Whether the plaintiff is entitled for damages of Rs. 20,00,000/-
from the defendant as alleged? OPP
4.Whether the suit filed by plaintiff no. 2 is barred by law
specifically under Section 53 of the Trade Marks Act as alleged?
OPD
5.Whether the suit is barred by limitation? OPD
6.Whether the suit is not maintainable? OPD
7.Whether there is no cause of action against the defendant?
(OPD)
8. Relief.
38. The plaintiff has examined its Director Sumit Wahi as PW-1 as its
sole witness and thereafter closed its evidence. On the other hand,
the defendant has examined one of its partners, Chander Prakash,
as DW-1 as its sole witness, and thereafter closed its evidence.
Both the witnesses were cross-examined.
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Engineers Page No.25 of 59
39. PW-1 has broadly deposed on the lines of the plaint in his
affidavit of evidence Ex. PW-1/A and has proved the following
documents:
(1) The Copy of the Certificate of Incorporation – Ex-PW-1/1.
(2) The Board resolution dated 04.01.2021 in favor of PW-1 – Ex-
PW-1/2.
(3) The copy of the Trade Mark certificate alongwith the
subsequent renewal/ relevant documents – Ex-PW-1/3 (colly)
(4) The Copy of the Legal Proceeding certificate issued by the
Trade Mark Registry dated 16.04.2021 – Ex-PW-1/4.
(5) The Copy of the Deed of Assignment dated 20.01.1989 – Ex-
PW-1/5.
(6) The Copy of the Memorandum of Understanding dated
01.01.2012 – Ex-PW-1/6.
(7) The Plaintiff No.1’s Brochure/Catalogue – Ex-PW-1/7 (colly)
(8) The copy of Extracts from the sites of Google, Just Dial, India
Mart alongwith ratings and reviews of the satisfied Clients for the
Plaintiff No.1, on Just Dial – Ex-PW-1/8 (Colly).
(9)The Plaintiffs’ list of Clients alongwith correspondence/
purchase orders received by plaintiffs since the year 1982 till 2021
– Ex-PW-1/9 (colly.)
(10) The correspondence/purchase orders received by plaintiff
from Nepal – Ex-PW-1/10 (colly)
(11) The relevant Photographs of the Products with the embossing
of the Trade Mark CHANDRA – Ex-PW-1/11 (colly)
(12) The pictures of the trade fairs and exhibitions participated by
the plaintiff – Ex-PW-1/12 (Colly).
(13) Pictures of the advertisements of the Plaintiffs branding on
bill boards are being exhibited as Ex-PW-1/13.
(14) The copies of the Work orders procured by the Plaintiffs
from the Rashtrapati Bhawan are being exhibited as Ex-PW-1/14.
(15) The extracts of the website – Ex-PW-1/15 (Colly)
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(16) The copy of the Public search report of the word “Chandra”
made on the public domain – Ex-PW-1/16.
(17) The Cease & Desist Notice sent by Plaintiff No.1 & the
Reply received from the defendant – Ex-PW-1/17 & Ex-PW-1/18
respectively.
40. DW-1 in his evidence by way of affidavit Ex. DW-1/A has
broadly relied upon the contents of his written statement and has
proved the following documents:-
i) True copies of PAN cards of current Chandra Engineers &
erstwhile proprietor late Sh. Phool Chandra Ex. DW1/1 (Colly)
(OSR).
ii) True copies of quotations and orders under the firm name
“Chandra Engineers and Contractors” for the period between 1993
to 2004 Ex. DW1/2 (Colly) (OSR) (page nos. 100-112 of the
documents of the defendant).
iii) True copy of the Sales Tax Registration and registration
documents with other departments Ex. DW1/3 (colly) (OSR)
(page nos. 113 to 129 of the documents of the defendant)
iv) True copies of the GST tax registration, MSME Registration,
ESI and Provident Fund registration related documents of
“Chandra Engineers” Ex. DW1/4 (colly) (OSR) (page nos. 130-
139 of the documents of the defendant)
v) True copies of the completion certificates and
invoices/bills Ex. DW1/5 (colly) (OSR) (page nos. 140-172 of the
documents of the defendant)
vi) True copy of the printout of publicly available information in
relation to the participants in the tender floated by CPWD bearing
NIT/Line #:192/EE/E/PEED/16-17/1 Ex. DW1/6
vii) Affidavit under Order 11 Rule 6 (3) of The Commercial
Courts Act, 2015 Ex. DW1/7
viii) Affidavit under Section 65A & 65B of The Evidence Act,
1872 Ex. DW1/8
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41. I have heard the arguments of the ld Counsels for the parties and
have gone through the written submissions along with judgments
filed by the parties and the case file.
42. The ld. Counsel for the plaintiff has relied upon the following
judgments:
(1) M/s Divine Messangers Vs Dr Prerna Diwan, 2023:
DHC:2890
(2) Khadi and Village Industries Commission Vs. Khadi Design
Council of India and Ors, 2023:DHC:2044
(3) Goenka Institute of Education vs. Anjani Kumar Goenka, AIR
2009 DELHI 139,
43. The ld. Counsel for the defendant has relied upon the following
judgments:
1. Jindal Industries Pvt. Ltd.Vs. Suncity Sheets Pvt. Ltd. & Anr.
2024 SCC Online DEL 1632
2. Nandhini Deluxe Vs. Karnataka Cooperative Milk Producers
Federation Ltd., AIR 2018 SUPREME COURT 3516
3. P.K. Sen Vs. Exxon Mobile Corporation, FAO (OS)
No.290/2016 & CM No.37465/2016
decided on 04-01-2017
4. Patasibai v. Ratanlal ,1990 SCR (1) 172
5. Moreshar Yadaorao Mahajan v. Vyankatesh Sitaram Bhedi (D)
Thr. Lrs. & Ors. (Civil Appeal Nos. 5755-5756 of 2011, decided
on 27.09.2022)
44. Initially, vide order dated 28-09-2021, ld. Predecessor of this
court had passed an interim order, vide which the defendant was
restrained from using the registered trade mark/word “Chandra”
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Engineers Page No.28 of 59
for any goods, similar to the plaintiff’s goods under class 11,
which interim relief was modified vide order dated 19-02-2022
and the plaintiff’s application U/O XXXIX Rules 1 & 2 CPC and
defendant’s application XXXIX Rule 4 CPC were partly allowed
to the extent that the defendant was restrained from using the
plaintiff’s trade mark CHANDRA on any of its products under
class 11, but was not restrained from using the business name
“Chandra Engineers” for the purpose of its firm name till the final
disposal of the suit.
45. My issue-wise findings are as under:-
46. It is important to decide issue no.4 first and other issues later since
it is related to the maintainability of the suit with respect to the
plaintiff no.2.
ISSUE NO. 4
4.Whether the suit filed by plaintiff no. 2 is barred by law
specifically under Section 53 of the Trade Marks Act as alleged?
OPD
47. The onus to prove this issue was on the defendant.
48. The Ld Counsel for the defendant has claimed that since plaintiff
no. 2 is a permitted user of the trade mark ‘CHANDRA’ vide a
memorandum of understanding dated 01-01-2012 (Ex. PW-1/6)
with plaintiff no. 1 and therefore, as per section 53 of the Trade
Marks Act, plaintiff no. 2 is precluded from initiating
infringement proceedings against the defendant. The Ld. Counsel
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Engineers Page No.29 of 59
for the defendant has placed reliance on the judgment of the
Hon’ble High Court of Delhi in P.K. Sen vs Exxon Mobil
Corporation (Supra), wherein it has been held that only the
registered proprietor has such rights and thus, the plaintiff No. 2,
not being the registered holder/user of the said trade mark lacks
locus standi to file the present suit against the defendant.
49. In rebuttal, the Ld. Counsel for the plaintiffs’ submits that
plaintiff no. 2, as a permitted user under the MoU with plaintiff
no. 1, has a legitimate interest in protecting the trademark
“CHANDRA” from infringement. He has contended that plaintiff
no. 2 is authorized to use the trademark in the course of trade and
has been directly affected by the defendant’s infringing activities.
Ld. Counsel for the plaintiffs’ argues that Section 53 does not
expressly bar a permitted user from joining a suit, especially
when acting in conjunction with the registered proprietor
(plaintiff no. 1), and that plaintiff no. 2’s inclusion in the suit is
necessary to seek complete relief.
50. Section 53 of the Trade Marks Act, 1999, is relevant here and is
reproduced as under:
“53. No right of permitted user to take proceeding against
infringement.–
A person referred to in sub-clause (ii) of clause (r) of sub-
section(1)of section 2 shall have no right to institute any
proceeding for any infringement.”
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51. Further, section 2(1) (r) (ii) is reproduced as under :-
“(ii) by a person other than the registered proprietor and registered
user in relation to goods or services–
(a) with which he is connected in the course of trade; and
(b) in respect of which the trade mark remains registered for the
time being; and
(c) by consent of such registered proprietor in a written
agreement; and
(d) which complies with any conditions or limitations to which
such user is subject and to which the registration of the trade mark
is subject;”
52. This provision, read with Section 52 of the Act, implies that the
right to sue for infringement of a registered trademark vests with
the registered proprietor or the registered user. The defendant’s
contention that suit of plaintiff no. 2 is barred under Section 53 is
based on the judgment of P.K. Sen v. Exxon Mobil Corporation
(Supra) wherein the Hon’ble High Court of Delhi observed that
only the registered proprietor himself or a registered user has the
statutory right to institute infringement proceedings, and a non-
proprietor, such as a licensee or a permitted user without
registered status, lacks an independent locus standi to sue. In the
present case, Plaintiff no. 2 is a permitted user under the MOU
dated 01-01-2012 Ex.PW-1/6 with plaintiff no. 1 as the registered
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proprietor, and the MOU does not expressly authorize plaintiff
no. 2 to initiate legal proceedings. The relevant part of the
judgment is reproduced as under :-
“………16. Sections 52 and 53 are extremely important
for the purposes of this case. Section 52(1) provides that
subject to any agreement subsisting between the parties, a
registered user may institute proceedings for
infringement in his own name as if he were the registered
proprietor. Of course, in such eventuality, the registered
proprietor has to be made a defendant. Furthermore, in
such cases, the rights and obligations of such a registered
user would be concurrent with those of the registered
proprietor. Since the plaintiff No.2 / respondent No.2 is
admittedly not a registered user, Section 52(1) does not
come into play insofar as it is concerned. But, what is
important is that it has to be kept in mind that a registered
user has been given the right to institute the proceedings
for infringement in his own name as if he were the
registered proprietor. Section 52(2) also deals with a case
where a registered user has instituted a proceeding in his
own name and does not arise for consideration in the
present case. Section 53, in clear departure from Section
52, stipulates that a person referred to in Section 2(1)(r)
(ii) shall have no right to institute any proceeding for any
infringement. The person referred to in Section 2(1)(r)
(ii) is a person other than the registered proprietor and
registered user and would obviously include a permitted
user. In other words, the only persons who can bring a
suit for infringement of a trade mark would be the
registered proprietor himself or the registered user and
certainly not a permitted user. Therefore, in our view, the
submission made by the learned counsel for the appellant
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that the suit could not have been instituted by the
respondent No.2 / plaintiff No.2 is correct.
17. Section 134 of the said Act has already been
extracted above. It may be seen that Section 134(1) refers
to three kinds of suits:-
a) for the infringement of a registered trade mark;
b) relating to any right in a registered trade mark;
c) for passing off arising out of use by the defendant of
any trade mark which is identical with or deceptively
similar to the plaintiff’s trade mark, whether registered or
unregistered.
Section 134(2), however, relates only to the suits
specified in clauses (a) and (b) above of sub-section (1).
In other words, Section 134(2) of the said Act is relatable
only to suits for infringement of a registered trade mark
or for suits relating to any rights in a registered trade
mark. It does not relate to an action of passing off. It may
be remembered that the present suit is one of an action
based on an alleged infringement of a registered trade
mark. The expression used in Section 134(2), which is of
material importance, is ―person instituting the suit ‖.
From our discussion above on Section 53 of the said Act,
it is evident that a permitted user cannot institute a suit
for infringement of a registered trade mark. Therefore,
the plaintiff No.2 / respondent No.2 by itself could not
have filed the present suit….”
53. Applying the aforesaid judgment to the facts of the present case,
plaintiff no. 2, as a non-proprietor or a registered user, lacks the
independent right to file an infringement suit, and thus, its
participation as plaintiff no.2 is barred under Section 53 of the
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Act.
54. However, such bar on plaintiff no. 2 under Section 53 of the Act
does not impact the outcome of the suit because plaintiff no. 1 has
the right to sue for infringement under Section 52 of the Act. The
reliefs sought, including damages and injunction, can be
adjudicated without the participation of plaintiff no. 2, as the
trademark’s proprietary rights vest solely with plaintiff no. 1.
Thus, any bar on plaintiff no. 2 is inconsequential to the overall
outcome of the suit.
55. Accordingly this issue is decided in favor of the defendant and
against plaintiff no.2.
ISSUE NO. 1
1. Whether the plaintiff is entitled for decree of permanent
injunction restraining the defendant, its proprietors, etc. from
using the registered trademark “CHANDRA” for any of its
product as of their? OPP
56. The onus to prove this issue was on the plaintiff.
57. It is an admitted case of the parties from their pleadings,
evidences and final arguments and also from perusal of the
certificate of the registration of the trademark Ex.PW-1/3 dated
17-09-1982 that Multi Marketing Company was the registered
holder of the Trade Mark “Chandra” vide registration no. 395389
qua some of the goods covered under class 11 of the Trade Marks
Act since 17-09-1982 and that plaintiff no.1 vide deed of
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Engineers Page No.34 of 59
assignment dated 20-01-1989 Ex. PW-1/5, was transferred with
all the legal rights associated with Multi Marketing Co. , including
the trademark ‘CHANDRA’, which trade mark is valid and
subsisting till the year 2030.
58. However, the defendant’s claim is that plaintiff’s registered
trademark “CHANDRA” vide registration no. 395389 under Class
11 is limited to specific goods i.e. freezing and cooling machines,
ice safes, air conditioning apparatus, and stabilizers for air
conditioning apparatus, and does not extend to all goods under
Class 11, and further that two additional trade mark applications
of the plaintiff numberd 4808645 (under class 11 dated 06-01-
2021) and 4939548 (under class 37 dated 09-04-2021) are
pending (both opposed by the defendant), and are under objection,
vide which the plaintiff had sought to unjustifiably monopolize a
broad range of unrelated goods under Class 11 i.e. water heaters,
electric toasters, LED lights, thus exceeding the scope of their
registered trademark. It is further claimed that the defendant deals
in services i.e. installation, maintenance, and repair, which falls
under class 37, and the same is entirely outside the ambit of
goods contained under class 11. It is also claimed by the
defendant that plaintiffs have always publicized and participated
in all tender documents by the name ‘Multifrig Marketing
Company Private Limited’ and not with their trade mark Chandra,
whereas defendant’s firm had participated with the name
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“Chandra Engineers” and therefore there is no infringement of
plaintiff’s trademark by the defendant.
59. Ld. Counsel for the plaintiffs by relying upon Section 29(5) of the
Trade Marks Act, 1999, has claimed that since the said section
puts a bars on anyone from using a registered Trade Mark either
in its “TRADE NAME” or in its “Business Name”, and the
defendant in view of their categorical admission to having been
using the registered Trade Mark CHANDRA of the plaintiffs in its
part of its “Trade Name/Business Name” as “Chandra Engineers”
is Ex-Facie an infringement in view of the aforesaid section 29(5)
of the Act and accordingly, defendant is required to be
permanently injuncted from using the registered trade mark of the
plaintiffs i.e. “Chandra” in their trade name and business name.
Ld Counsel for the plaintiff has further added that defendant in
para 36 of its reply on merits has admitted that it is using the word
Chandra as its firm name as its trade mark and further that it does
not have trade mark registration.
60. Per contra, the Ld Counsel for the defendant has claimed that the
defendant is not using “CHANDRA” as a trademark on any of its
products and is rather using “Chandra Engineers” as its trade
name, and has asserted that this is permissible under Section 35 of
the Trade Marks Act, 1999, which permits a person to use their
own name, or business name in the course of trade. It is further
claimed that defendant is a bona fide user of its partners’ father’s
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surname. It is further claimed that father of the partners of the
defendant’s firm changed the name of his proprietorship firm to
“Chandra Engineers” in the year 2004 and after his death the
partners continued his business under the same trade name and
therefore the defendant is a bonafide user of its predecessor in
business and is therefore statutorily protected under the said
section of the Act. To substantiate its said claim, Ld Counsel for
the defendant has relied upon Jindal Industries Pvt. Ltd.Vs.
Suncity Sheets Pvt. Ltd. & Anr (supra), wherein it is held as
under:-
“34.Indeed, one who obtains registration of a common
name, or surname, like JINDAL, as a trade mark in his
favour, does so with all the risks that such registration
entails. It is open to anyone, and everyone, to use his
name on his goods, and, therefore, the possibility of
there being several JINDAL’s looms large. The plaintiff
cannot, by obtaining registration for JINDAL as a word
mark, monopolize the use of JINDAL even as a part –
and not a very significant one at that – of any and every
mark, even in the context of steel, or SS pipes and tubes.
The Trade Marks Act, and the privileges it confers,
cannot be extended to the point where one can
monopolize the use of a common name for goods, and,
by registering it, foreclose the rest of humanity from
using it.
35. For that reason, Mr. Lall’s lament that, if the
defendants are permitted to use the impugned mark, the
plaintiff’s statutory rights in its registered JINDAL word
mark would be jeopardized is really misplaced. The risk
of having others bona fide using “JINDAL” as a name
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Engineers Page No.37 of 59
for their products, and in the marks used on their
products, is a risk that the plaintiff consciously took,
when it obtained registration of the mark. If one
registers a mark which lacks inherent distinctiveness,
the possibility of others also using the same mark for
their goods, and of the registrant being powerless to
restrain such use, is a possibility that looms large, which
the registrant has to live with.”
…………………………………………………………
…………
37. To the extent it protects against interference with the
use of one’s name, Section 35 has to be understood in
the context of the law enunciated in the above decision,
and those cited within it. The right of a person to use
her, or his, own name on her, or his, own goods, cannot
be compromised; else, it would compromise the right to
use one’s name as an identity marker, which would ex
facie be unconstitutional.
38. In the absence of any such caveat to be found in
Section 35, it may be arguable, at the very least,
whether, while the use of one’s name as an identity
marker is permissible under Section 35, but the instance
it spills over into “trade mark” territory, it is rendered
impermissible. Any such interpretation, in my prima
facie view, would be reading a non-existent proviso into
Section 35 and, in effect, rewriting the provision.
39.The proscription under Section 35 is absolute, and
would extend to infringement as well as passing off
actions. The restraint against interference with the bona
fide use, by a person, of his own name, is not dependent
on whether the action is one for infringement or passing
off.”
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61. The Ld Counsel for the defendant has further relied upon Nand-
hini Deluxe v. Karnataka Co-Operative Milk Producers Federa-
tion Ltd. (Supra), to claim that the goods of the plaintiff falls un-
der class-11 and the services (installation, maintenance, and re-
pair) rendered by the defendant falls under class-37. He has also
claimed that the plaintiff seeks to unjustifiably monopolize a
broad range of unrelated class-11 goods, such as water heaters,
electric tasters etc. and that the plaintiffs have filed two additional
trademark applications TM Application No. 4808645 (Class 11,
dated 06.01.2021) and TM Application No. 4939548 (Class 37,
dated 09.04.2021) both of which are pending and under objection,
and the defendant has opposed both the applications, and the
plaintiffs cannot claim extended rights based on these pending ap-
plications.
62. In rebuttal, the Ld Counsel for the plaintiffs has argued that the
defendant cannot take the benefit of Section 35 of the Act as the
said section applies only to an individual using his own full name
as a trade mark, and is not extended to a non-natural or artificial
person like the defendant Partnership Firm, which is the case in
the instant matter. To substantiate its claim, Ld Counsel has relied
upon the judgment in Goenka Institute of Education vs. Anjani
Kumar Goenka (Supra), wherein it is held as under:-
………………..
23.
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“(iv)We may incidentally state that the aforesaid ratio
of Division Bench judgment of this court in the
Montari case answers one of the contentions raised by
the counsel for the appellant that the appellant is
entitled to use the name FAO (OS) No. 118/2009 Page
28 „Goenka‟ by virtue of Section 35 of the Trademark
Act, 1999. Clearly, the arguments of learned counsel
for the appellant are not well founded because the
defence under Section 35 will only apply to a full name
and that also by a natural person and not by a legal
entity which can choose a separate name. Also, once
distinctiveness is achieved or secondary meaning
acquired with respect to a surname, then, another
person cannot use that surname for an artificial person
or entity. The appellant, therefore, only on the strength
of Section 35 cannot successfully contend that it is
entitled as of right to use the name „Goenka ‟ merely
because it happens to be the surname of its original and
present trustees. Of course, nothing turns strictly on
this issue in the facts and circumstances of this case, so
far as the relief with respect to infringement or passing
off or prior user issue is concerned because, we have
otherwise held that appellant is an honest concurrent
user and we have given later in this judgment sufficient
directions for bringing about distinction in both the
trademarks so that there is no confusion in the minds of
the public.”
63. I find force in the arguments of the Ld Counsel for the plaintiffs
on the basis of the aforesaid judgment relied upon by him. From
the same, it can be inferred that section 35 of the Act applies and
give benefit to only the full name of a natural person, and does not
apply to an artificial person, or a non-natural person, which is the
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case herein with respect to the defendant as the full name of the
father of the partner of defendant was “Phool Chandra”.
64. Protection under Section 35 of the Trademarks Act, 1999, which
permits bona fide use of a person’s own name but excludes such
use if it is dishonest, likely to cause confusion, or adopted by a
partnership firm rather than a natural person. The plaintiffs’
counsel has claimed that “CHANDRA” trademark, registered
since 1982 under Class 11 for refrigeration products, enjoys
significant goodwill. The defendant, in its written statement,
admits that both parties have participated in the same tenders
issued by the Central Public Works Department, including
Contract No. 192/EE/E/PEED/2016-17/1 in 2016 and Contract
No. 36 in 2021, and operates in the related field of Class 37
services (installation and repair). This overlap in competitive
bidding, coupled with the defendant’s use of “Chandra
Engineers”, creates a clear likelihood of confusion among clients,
who may mistakenly associate the defendant’s services with the
plaintiff’s registered trade mark “CHANDRA”. The defendant’s
claim of bona fide use since 1993 is undermined by their
awareness of the plaintiff’s prior-registered trademark and the
potential for deception in shared tender processes, suggesting an
intent to exploit the plaintiff’s goodwill.
65. The valid registration of the trademark ‘CHANDRA’ grants the
plaintiff exclusive rights to use the mark for these goods under
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Section 28(1) of the Trade Marks Act, which provides that the
registration of a trademark confers exclusive rights to the
registered proprietor to use the mark in relation to the goods or
services for which it is registered.
66. Moreover, the judgment cited by the Ld Counsel for the defendant
in Nandhini Deluxe v. Karnataka Co-Operative Milk Producers
Federation Ltd. (supra), arose from
(1) Opposition or rectification proceedings,
(2) both parties held registration,
(3) there was estoppel in as much as one of the mark proceeded
for registration and it was not challenged by the opponent, and
(4) the mark used was the name of the cow worshiped under
Hindu mythology.
However, in the present case the oppositions so filed by the
defendant do not pertain to the plaintiff’s registered trade mark
no. 395389 under class 11, and admittedly the defendant has no
registration for class 11, there is no estoppel, and the mark is
distinctive. Accordingly, the said judgment relied upon by the
defendant is distinguishable on facts and does not help the case of
the defendant.
67. As regards the claim of the defendant that “Chandra” is the Hindi
translation of moon, which is the natural satellite of our planet
Earth, the word “Chandra” signifies mythological aspect and
denotes the Hindu God, is one of Navagraha and Dikpala
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(Guardians of the Directions) and is very commonly used as
Indian name, middle name and surname, Ld Counsel for the
defendant has relied upon the judgment in the case of Jindal
Industries Pvt. Ltd. v. Suncity Sheets Pvt. Ltd.(Supra) . The said
judgment does not help the case of the defendant as the said
judgment only protects the bonafide use and that too by a person
of his own name, which is not the case herein.
68. To the claim of the defendant that its trade name differs visually
and conceptually from the plaintiffs’ trademark “CHANDRA” and
that there was no likelihood of confusion amongst sophisticated
clients like Government Bodies and Corporations as held in para
no. 21 of the interim injunction order dated 19.02.2022 of Ld.
Predecessor, it is observed that a prima facie view was taken by
the Ld Predecessor at that interim stage, and the same has no
bearing on the merits of the case at this final stage and does not
negate the statutory right of the plaintiff under section 29 (5) of
the Trade Mark Act, as the use of such trade name by the
defendant in identical goods and services thereof, in the same
category of goods in which the plaintiffs’ trade mark is registered,
creates a likelihood of association/confusion with the plaintiff’s
trade mark. The plea taken by the ld Counsel for the defendant
that both parties cater to large corporate houses, government
organizations, and tenders where customers possess technical
expertise and are unlikely to be deceived by the defendant’s use of
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‘Chandra Engineers’ as a trade name, is not tenable as there is no
such positive proof that the services of the defendant qua the
products being manufactured by the plaintiff under its registered
trade mark in class 11, can not be availed by an individual / non-
corporate houses as well.
69. Section 29(5) of the Trade Marks Act, 1999 is pivotal in this case
and is reproduced as under :-
“A registered trade mark is infringed by a person if he uses such
registered trade mark, as his trade name or part of his trade name,
or name of his business concern or part of the name, of his
business concern dealing in goods or services in respect of which
the trade mark is registered.”
70. Furthermore, Section 29(2)(b) of the Trade Marks Act, 1999,
provides that infringement occurs when a person who, not being a
registered proprietor or a permitted users in the course of trade,
uses a mark which became of its similarity to the registered trade
mark and the identity of similarity of the goods or services
covered by such registered trade mark is likely to cause confusion
on the part of the public, or which is likely to have an association
with the registered trade mark. Here, the use of “CHANDRA” in
the defendant’s trade name for services related to air conditioning
apparatus could lead consumers to believe that “Chandra
Engineers” is associated with the plaintiff’s registered mark
“CHANDRA,” especially given the mark’s distinctiveness and
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long-standing use and registration. Section 29(5) specifically
addresses the use of a registered trademark in a trade name (or
part thereof) or the name of its business concerned or part thereof,
as is the case here. The defendant’s admission (para 51) that it
uses “CHANDRA” in its trade name as “Chandra Engineers”
constitutes a prima facie infringement under Section 29(5), as the
services provided by the defendant are sufficiently related to the
plaintiff’s goods under Class 11.
71. Accordingly, in view of the findings above, it is held that in view
of the section 29 (5) of the Trade Marks Act, the defendant cannot
use the registered trade mark of the plaintiff no.1 as its trade name
(or part thereof) or the name of its business concern or part thereof
in any manner and the benefit of section 35 of the act is not
available to the defendant as already opined above.
72. In this context, reliance can be placed upon a judgment of Hon’ble
High Court of Delhi in a case titled Bloomberg Finance Lp vs
Prafull Saklecha & Ors. in IA No. 17968 of 2012 in CS (OS) No.
2963 of 2012 decided on 11 October, 2013, wherein it is held
under:-
“48. In Mahendra & Mahendra Paper Mills Limited v. Mahindra &
Mahindra Limited (2002) 2 SCC 147 , the case before the Supreme
Court pertained to the grant of an injunction against the Defendant
using, in any manner, as a part of its corporate name or trading style
the words Mahindra & Mahindra or any word(s) deceptively similar
to Mahindra or and/or Mahindra & Mahindra so as to pass off or
enable others to pass off the business and/or services of the Defendant
as those of the Plaintiffs or as emanating from or affiliated or in some
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way connected with Plaintiffs. The Defendant contended that its
products were in no way similar to that of the Plaintiffs and that the
business carried on by it did not overlap with the business of any of
the companies enlisted by the Plaintiffs. The Supreme Court held that
by using the Plaintiff’s trademark as a part of its corporate name, the
Defendant had committed the fraud of passing off its business and/or
services as that of the Plaintiffs.
49. In Kalpataru Properties Private Limited v. Kalpataru Hospitality
& Facility Management 2011 (48) PTC 135 (Bom.), the issue was
whether an action in passing off was maintainable where the
Plaintiff’s registered mark was used as part of the Defendant’s
corporate name and the goods and services dealt with by the parties
were in different classes. Following Mahendra and Mahendra, the
Court held that a passing off action was maintainable in the case of a
well known mark even if the goods and services being dealt with by
the parties are not similar.
50. Recently, in Red Hat Inc. v. Mr. Hemant Gupta 2013 1 AD
(Delhi) 130, this Court, while dealing with a case which involved the
use of a registered trademark as part of its corporate name by the
Defendant, held that the Plaintiff could seek a remedy for an
infringement under Section 29 (4) as well as Section 29 (5) of the TM
Act 1999.
51. The legal position emerging as a result of the above discussion
may be summarised as under:
(a) Section 29 (5) of the TM Act 1999 relates to a situation where (i)
the infringer uses the registered trademark “as his trade name or part
of his trade name, or name of his business concern or part of the
name, of his business concern” and (ii) the business concern or trade
is in the same goods or services in respect of which the trade mark is
registered.
(b) This is in the nature of a per se or a ‘no-fault’ provision which
offers a higher degree of protection where both the above elements
are shown to exist. If the owner/proprietor of the registered trade mark
is able to show that both the above elements exist then an injunction
order restraining order the infringer should straightway follow. For
the purpose of Section 29 (5) of the TM Act 1999 there is no
requirement to show that the mark has a distinctive character or that
any confusion is likely to result from the use by the infringer of the
registered mark as part of its trade name or name of the business
concern.
(c) However, in a situation where the first element is present and not
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the second then obviously the requirement of Section 29 (5) is not
fulfilled. Where the registered trade mark is used as part of the
corporate name but the business of the infringer is in goods or
services other than those for which the mark is registered, the owner
or proprietor of the registered trade mark is not precluded from
seeking a remedy under Section 29 (4) of TM Act 1999 if the
conditions attached to Section 29 (4) are fulfilled.
(d) Given the object and purpose of Section 29 (1) to (4), Section 29
(5) cannot be intended to be exhaustive of all situations of uses of the
registered mark as part of the corporate name. Section 29 (5) cannot
be said to render Section 29 (4) otiose. The purpose of Section 29 (5)
was to offer a better protection and not to shut the door of Section 29
(4) to a registered proprietor who is able to show that the registered
mark enjoying a reputation in India has been used by the infringer as
part of his corporate name but his business is in goods and services
other than that for which the mark has been registered.
(e) A passing off action is maintainable in the case of a well known
mark even if the goods and services being dealt with by the parties are
not similar.”
………………………………………………………………………………..
73. From paragraph numbers 51(a) and (b) of the aforesaid judgment,
which are squarely applicable to the facts and circumstances of
the present case and in view of the aforesaid discussion, I hold
that the plaintiff no.1 is entitled to a decree of permanent
injunction thereby restraining the defendant, its proprietors,
partners, agents, or any other persons acting on its behalf, from
using the registered trademark “CHANDRA” as (or part thereof)
or the name of its business concern or part thereof, “Chandra
Engineers,” or in any manner whatsoever. The defendant’s use of
“CHANDRA” in its trade name constitutes a clear trade mark
infringement under Section 29(5) of the Trade Marks Act, 1999,
as it satisfies both elements of the provision:
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(i) the defendant uses the plaintiff no. 1’s registered trademark
“CHANDRA” as part of its trade name, and
(ii) the defendant’s business, involving services such as
installation, maintenance, and repair of air conditioning apparatus
(Class 37), is closely related to the plaintiff no .1’s registered
goods under Class 11, namely freezing and cooling machines, air
conditioning apparatus, and stabilizers.
The precedent in Bloomberg Finance Lp v. Prafull Saklecha &
Ors. (2013) (Supra) reinforces that Section 29 (5) is a per se
provision, requiring no proof of distinctiveness or likelihood of
confusion when both elements are met, as is the case here. The
defendant’s reliance on Section 35 of the Act is untenable, as it is
a partnership firm, not a natural person, and Section 35 does not
extend to a non-natural person, as established in Goenka Institute
of Education v. Anjani Kumar Goenka(Supra). Furthermore, the
defendant’s arguments based on Nandhini Deluxe v. Karnataka
Co-Operative Milk Producers Federation Ltd. (Supra) and Jindal
Industries Pvt. Ltd. v. Suncity Sheets Pvt. Ltd.(Supra), are
distinguishable due to factual and legal differences, including the
lack of registration of trademark by the defendant, the
distinctiveness of the plaintiff’s mark, and the absence of
estoppel. Accordingly, this issue is decided in favour of the
plaintiff no.1 only and against the defendant.
ISSUE No. 2
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2. Whether the plaintiff is entitled for decree for of mandatory
injunction directing the defendant for delivering all material using
the trademark “CHANDRA” as alleged? OPP
74. The onus to prove this issue was on the plaintiff.
75. From the pleadings of the parties, documents placed on record and
arguments advanced by Ld Counsel for both the parties, it is
evident that the defendant is not engaged in manufacturing of any
products under class 11 of the Trade Mark Act and rather a
service provider qua the said products and also selling the
products falling under class 11 made by third parties.
Accordingly, except for baldly praying for the delivery of all the
material by the defendant having the trade mark ‘CHANDRA’,
plaintiffs have not been able to produce any cogent and
convincing material on record to show that the defendant is using
‘CHANDRA’ on any products being manufactured by it and
therefore no such relief can be granted to the plaintiff.
Accordingly, this issues is decided against the plaintiff no.1 and in
favour of the defendant.
ISSUE No. 3
3.Whether the plaintiff is entitled for damages of Rs. 20,00,000/-
from the defendant as alleged? OPP
76. The onus to prove this issue was on the plaintiff.
77. Ld Counsel for the plaintiffs has stated that defendant has
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publicized/ advertised its goods under the name “Chandra
Engineers” in a stylized Logo in a popular Trade Magazine: 99
Food Mantra, in addition to using the word ‘Chandra’ in its trade
name, it is further asserted that the plaintiffs had also advertised
its goods under Class 11, which advertisement was just pages
apart from the defendant’s advertisement in the April 2022
Edition, which advertisements were deceptively similar and going
to give an undue advantage to the defendant by pitching its goods
to the plaintiffs’ customers, and thereby diluting the plaintiff’s
Trade Mark. It is claimed that the said act of advertisement along
with the continuing infringement of the registered trademark of
the plaintiff as a trade name by the defendant has resulted in loss
of loss of sales to the plaintiff. Accordingly, the plaintiffs have
claimed that plaintiffs are entitled to damages to the tune of
Rs.20,00,000/-.
78. Per contra, the Ld Counsel for the defendant has claimed that the
plaintiffs have failed to adduce any documentary evidence or
witness demonstrating the loss suffered by the plaintiffs by
defendant’s use of its trade name as ‘Chandra Engineers’. He has
further asserted that since the party seeking damages bears the
burden of proving the quantum of loss, the plaintiff has failed to
prove any such entitlement on account of damages to be paid by
the defendant.
79. At this stage, the sealed envelope containing the sales figures of
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the defendant for the period 01-02-2022 to 31-05-2024 has been
opened.
80. The sealed envelope containing the defendant’s sales figures for
the period from 01-02-2022 to 31-05-2024 reveals that total sales
of Rs. 11,17,71,491/- was done in the aforesaid period. The issue
of damages in this case is governed by Section 135 of the Trade
Marks Act, 1999, which allows for compensatory damages, an
account of profits, or nominal damages to remedy trademark.
However, in my considered opinion the plaintiff has not provided
evidence of actual loss, such as reduced sales or harm to
goodwill, to support the claimed damages of Rs. 20,00,000/-. The
defendant’s sales figures of Rs. 11,17,71,491/- over 28 months
indicate significant commercial activity, but no evidence links
specific sales to the infringing use, precluding a precise account
of profits. The defendant’s sales figures, while substantial, do not
directly quantify infringing profits, but the infringement justifies
damages to protect the plaintiff’s rights. However in my
considered opinion it was for the defendant to show the actual
profit on the said sales figures as defendant only was in
knowledge of the same and in absence thereof, adverse
presumption against the defendant is drawn. In view of the
above, the plaintiff is entitled to damages, but not the claimed
Rs. 20,00,000/-. The Court awards Rs. 5,00,000/- as nominal
damages to be paid by the defendant for the infringement of the
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plaintiff no.1’s trademark. Accordingly, Issue No. 3 is decided in
favor of the plaintiff no.1 and against the defendant.
ISSUE NO. 5
5.Whether the suit is barred by limitation? OPD
81. The onus to prove this issue was on the defendant.
82. Ld Counsel for the defendant has claimed that the plaintiff has
failed to disclose the date / month /year when it came to know
about the alleged infringement of its trademark, and since the
period of limitation for filing a suit for infringement of a
trademark is three years from the date of infringement, the present
suit is barred by limitation. It is further claimed by the defendant
that it is using the trade name ‘Chandra Engineers’ for the past
more than 30 years and this fact is well within the knowledge of
the plaintiff as per CPWD bid document Ex. DW-1/6.
83. On the other hand, ld Counsel for the plaintiff has claimed that
since the cause of action is in continuation as the defendant is still
using plaintiffs’ trademark as their business/trade name,
accordingly, the suit is well within limitation. I find force in the
said argument of Ld Counsel for the plaintiff and accordingly
hold that since the infringement of plaintiff’s trade mark by the
defendant is in continuation, therefore it was plaintiff no.1’s
prerogative to decide as to when to file the suit, as it was a
continuing cause of action and hence the present suit is within
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limitation.
84. The present issue is accordingly decided against the defendant
and in favour of plaintiff no.1.
ISSUE NO. 6
6.Whether the suit is not maintainable? OPD
85. The onus to prove this issue was on the defendant.
86. The Ld Counsel for the defendant has claimed that the relief of
injunction sought by the plaintiff against the defendant’s use of its
trademark ‘CHANDRA’ as ‘Chandra Engineers’ is baseless in as
much as the defendant is using its trade name Chandra Engineers,
which is protected under Section 35 of the Trade Marks Act,
1999. Furthermore, it is argued by the Ld Counsel for the
defendant that the plaintiff had made only the defendant’s
unregistered partnership firm as a party, without separately
impleading its partners as additional defendants, in spite of taking
of objection in this regard in the written statement, and hence the
suit is bad for non-joinder of necessary parties.
87. Per contra, the Ld Counsel for the plaintiff has relied upon a
judgment of the Hon’ble High court of Delhi titled as M/s Divine
Messangers Vs Dr Prerna Diwan (supra), and the relevant
paragraphs are reproduced as under:-
“7. Insofar as the non-impleadment of Shri Shastri, the second
partner of the Defendant Firm, is concerned, Trial Court rejected
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the contention of the Defendant on the ground that if a Partnership
Firm is sued, service upon one of the partners is valid service and
in any case, it is not imperative that each and every partner has to
be impleaded and/or served. Trial Court also noted that no
separate claim was raised by Shri Shastri dehors his character as a
partner of the Firm and all acts from entering into a lease deed to
payment of the lease rent, etc. were undertaken in the capacity of a
partner of Defendant Firm.
8. In my view, Trial Court has rightly dismissed the application
and in this context provisions of Order XXX Rules 3, 5 and 6 CPC
are explicitly clear and are extracted hereunder for ready
reference:
“3. Service. – Where persons are sued as partners in the name of
either firm, the summons shall be served either –
(a) upon any one or more of the partners, or
(b) at the principal place at which the partnership business is
carried on within [India] upon any person having, at the time of
service, the control or management of the partnership business,
there, as the Court may direct; and such service shall be deemed
good service upon the firm so sued, whether all or any of the
partners are within or without [India]:
Provided, that in the case of a partnership which has been
dissolved to the knowledge of the plaintiff before the institution of
the suit, the summons shall be served upon every person within
[India] whom it is sought to make liable.
5. Notice in what capacity served. – Where a summons is issued to
a firm and is served in the manner provided by rule 3, every
person upon whom it is served shall be informed by notice in
writing given at the time of such service, whether he is served as a
partner or as a person having the control or management of the
partnership business, or in both characters, and, in default of such
notice, the Neutral Citation Number: 2023:DHC:2890
6. Appearance of partners. – Where persons are sued as partners in
the name of their firm, they shall appear individually in their own
names, but all subsequent proceedings shall, nevertheless,
continue in the name of the firm.”
9. A conjoint reading of the provisions of Order XXX CPC leads
this Court to conclude that when a Partnership Firm is sued,
Plaintiff can choose either to sue the partners without bringing on
record the Partnership Firm and is equally entitled to bring an
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action against some partners to the exclusion of the others. This
position of law is fairly well settled and as a ready reference, I
may only refer to a judgment of the Bombay High Court in Aftab
Currim v. Ibrahim Currim & Sons and Others, 2022 SCC OnLine
Bom 801, which I am persuaded to follow and the relevant paras
are as follows:-
“9. In order to bolster up the aforesaid submission, Mr. Khandekar
placed reliance on a Division Bench judgment of the High Court
of Jammu and Kashmir in the case of Jodh Singh Gujral v. S.
Kesar Singh1. In the said case, the tenability of the suit was
assailed on behalf of the defendants by canvassing a submission
that the omission on the part of the plaintiffs to bring all the
partners in the array of the defendants is fatal to the
maintainability of the suit when the suit is not brought against the
firm under the provisions of Order XXX Rule 1 of the Civil
Procedure Code, 1908 (“the Code”). Repelling the contention, the
Jammu and Kashmir High Court observed that the said contention
overlooks the provisions of Section 43 of the Indian Contract Act,
1872, and was also based upon the misconception of the
provisions of Order XXX Rule 1 of the Code. After adverting to
the provisions contained in Section 43 of the Contract Act, which
provides that when two or more persons make joint promise, the
promisee may, in the absence of express agreement to the
contrary, compel any one or more of such joint promisors to
perform the whole of the promise. the Division Bench held that,
there was no reason why the principle contained in Section 43
shall not apply to the partners.
10. To arrive at the said conclusion the Division Bench drew
support from a Division Bench judgment of this Court in the case
of Molilal v. Ghellabhai2 ILR 17 Bombay, which was followed by
the Madras High Court in the case of Narayan Cheety v. Laxman
Chetti3 ILR Madras, 256. The observations of the Jammu and
Kashmir, High Court, which, in turn, incorporated the aforesaid
pronouncements, are to be found in paragraphs 8 to 12 of the
report.
Neutral Citation Number: 2023:DHC:2890 “8. Even so, the
question is whether S. 43, Contract Act applies to partners. There
appears no reason in principle why it should not, and there is
sufficient authority for holding that it does.
(9) In Lukmidas Khimji v. Purshotam Haridas, ILR 6 Bom 700 it
was held that “in a suit brought upon a contract made by a firm the
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plaintiff may select as defendants those partners of the firm
against whom he wishes to proceed, allowing his right of suit
against those whom he does not make defendants to be barred.”
(10) THIS decision was based upon the provisions of S. 43 of the
Contract Act.
(11) In Motilal v. Ghellabhai, ILR 17 Bom 6 (at page 11) a
Division Bench of the Bombay High Court approving the decision
in ILR 6 Bom 700 slated as follows:
“The provisions of S. 43 Contract Act, which gives the right to the
creditor to compel any one of the joint contractors, or the
representatives of a deceased contractor, to perform the contract,
seems new both in the case of ordinary joint contractors and in
that of partners jointly contracting; as far as the liability under a
contract is concerned, it appears to make all joint contracts joint
and several. We cannot doubt but that these sections, which we
have referred to, relate to partners as well as to other co-
contractors. It has been so decided in Lukmidas Khimji v.
Purshotam Haridas, ILR 6 Bom 700. and we think rightly. If the
legislature had intended to except partners from the provisions of
these sections, it would have done so in express words. There is no
reason for thinking that the general rules laid down in Chapter IV
of the Contract Act are not applicable to partners as well as to
other contracting parties. The sections under consideration seem,
on the contrary, to be intended to assimilate the law relating to
joint contract generally that which has always been applied to
partners contracting jointly.”
(12) The decision in ILR 6 Bom 700 was followed by a Bench of
the Madras High Court in Narayana Chetti v. Lakshmana Chetti,
ILR 21 Mad 256, in a case relating to partners, where they held:
“According to the law declared in the Contract Act, S. 43,
especially when taken with S. 29 of the Civil Procedure Code, it is
clear that it is not incumbent on a person dealing with partners to
make them all defendants. He is at liberty to sue any one partner
as he may choose.”
11. On the aspect of applicability of the provisions contained in
Order XXX Rule 1 of the Code, in the said case, the Division
Bench Neutral Citation Number: 2023:DHC:2890 “17. Mr. L. N.
Sharma for the respondents has argued that the plaintiff ought to
have framed the suit under O.30 R.1, Civil P. C. if he did not
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choose to implead all the partners as party defendants. What I
have already stated is sufficient to demonstrate the untenability of
the argument that it is incumbent on the plaintiff to bring the suit
against all the partners and that he is not entitled to seek relief
against some of the partners chosen by him. The argument that the
plaintiff is bout to bring the action under O. 30, R.1, Civil P.C. is
equally untenable. Order 30, R.1 only prescribes a convenient
procedure for suing a firm. It does not vary or abrogate the right
which is available to the plaintiff under the provisions of S.43 of
the Contract Act. Nor does O. 30, R.1 control or over-ride the
provisions of O. 1, R.6 of the Civil P. C. The plaintiff can well
chose to sue the partners without bringing on record the firm itself.
He is equally entitled to bring an action against only some of the
partners. Order 30 R. I which merely prescribes the procedure in
case the plaintiff desires to sue the firm does not in any manner
affect this right of the plaintiff.”
12. The Division Bench, in terms, observed that Order XXX Rule
1 is only a convenient procedure for suing a firm. It does not vary
or abrogate the right which is available to the plaintiff under the
provisions of Section 43 of the Contract Act. Nor does Order
XXX Rule 1 control or override the provisions of Order I Rule 6
of the Code. The plaintiffs can choose to sue the partners without
bringing on record the firm itself. He is equally entitled to bring an
action against only some of the partners. Order XXX Rule 1
merely prescribes the procedure in case the plaintiff desires to sue
the firm. However, it does not in any manner affect the right of the
plaintiffs flowing from the provisions contained in Section 43 of
the Contract Act.
13. The aforesaid pronouncement of Jammu and Kashmir High
Court was followed by the Allahabad High Court in the case of
Gokul Prasad v. Additional District and Sessions Judge, (2003) 1
ARC 347.
14. The matter can be looked at from a slightly different
perspective. Defendant no. 4 asserts that the impleadment of the
rest of the partners of defendant no. 1 – firm becomes imperative
in the wake of the notice of dissolution of firm given by defendant
no. 1 on 21st December, 2021. There is no qualm over the claim
of the plaintiffs that defendant no. 1 is a registered partnership
firm and defendant nos. 2 to 4 are its partners. Section 25 of the
Partnership Act, 1932, provides that every partner is liable, jointly
with all the other partners and also severally for all acts of the firm
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done while he is a partner. It is trite, a firm is not legal entity. A
partnership firm is only a collective or compendious name for all
the partners. To put it in other words, a partnership firm does not
have any Neutral Citation Number: 2023:DHC:2890 against firm
in the name of the firm has the same effect like a decree in favour
of or against the partners. When the firm incurs a liability, it can
be assumed that all the partners have incurred that liability and so
the partners remain liable jointly and severally for all the acts of
the firm.
15. If this nature of the liability of the partners of a firm is
considered in juxtaposition with the provisions contained in
Section 43 of the Contract Act, it becomes explicitly clear that the
plaintiffs are not enjoined to implead all the partners of the firm. I
am, therefore, persuaded to agree with the submissions on behalf
of the plaintiffs that the impleadment of the rest of the partners is
not necessary.”
10. Therefore, there is no merit in the contention of the Defendant
that non-impleadment of Shri Shastri as one of the partners of the
Defendant Firm was fatal to the suit of the Plaintiff.”
88. Accordingly, in view of the facts of the present case and the
aforesaid judgment relied upon by Ld Counsel for the plaintiffs, I
am of the considered opinion that the non-impleadment of the
partners of defendant no. 1 firm, is not fatal to the case of the
plaintiff. In view of the above discussion, this issue is decided
against the defendant and in favour of the plaintiff no.1.
ISSUE NO. 7.
7.Whether there is no cause of action against the defendant?
(OPD)
89. The onus to prove this issue was on the defendant.
90. In view of my findings to issue no. 1, this issue is also decided
against the defendant and in favour of the plaintiff no.1.
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RELIEF
91. In view of my findings to issues no. 1, a decree for permanent
injunction is passed in favour of plaintiff no.1 only and against the
defendant, thereby restraining the defendant, its proprietors,
directors, partners, principal officers, agents, family members,
servants, dealers, distributors and/ or anyone acting for and on
their behalf from using the Registered Trade Mark “CHANDRA”
bearing Trade Mark No.395389 as its business/trade name.
Plaintiff no.1 shall also be entitled to damages to the tune of
Rs.5,00,000/- along with cost of the suit.
Suit is accordingly decreed in favour of the plaintiff no.1 only and
against the defendant in above terms.
Decree sheet be drawn accordingly. Digitally signed
by ASHUTOSH
File be consigned to record room. ASHUTOSH KUMAR
KUMAR Date:
2025.06.04
16:02:44 +0530
Announced in open (Ashutosh Kumar)
Court on 04-06-2025 District Judge (Commercial Court)-01
West, Tis Hazari Courts, Delhi
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