Delhi High Court: In a suit for trade mark infringement, the defendant filed an accompanying application under Section of the (‘CrPC’) against the plaintiff, for relying upon and wrongfully obtaining an interim injunction based on false and fabricated documents, Prathiba M. Singh, J., while decreeing the suit in favour of the defendant and directing the plaintiff to pay Rs. 10 lakhs cost, said that provisions of Section of the would be undermined if reliance on a forged and fabricated document went unpunished and held that it was fit case for filing a complaint under Section of the before the Magistrate.
Background
The plaintiff had filed a suit seeking permanent injunction for alleged infringement by the defendant of its mark/label ‘SURYA’ and the accompanying trade dress. The said suit was filed based on the promise that plaintiff was the prior user of the mark/label ‘SURYA’, with the plaintiff claiming prior adoption and being a senior user. The defendant also claimed to have filed for trade mark applications and sales figures from 2017-2018, till 2021-2022.
It was contended by the plaintiff that it had an expensive network of dealers, distributors, and stockists across India, claiming to be one of the largest leaders in electrical appliances with a pan-India presence over the last six years. Further, the plaintiff placed on record various advertisements placed by it in several newspapers, along with sales data for five fiscal years.
An injunction was sought against the defendants from using the impugned mark/trade dress, in which the Court, relying upon the pleadings of the plaintiff, granted an ex-parte ad-interim injunction vide order dated 16-01-2023. Thereafter, the defendants filed an application contending that they were the copyright owners of various labels which were being used by them, and that the copyright for the mark/label ‘SURYA GOLD’ were also registered by defendants.
The defendants alleged the documents filed plaintiff, including the newspaper advertisements, invoices etc., were fabricated for the purposes of the present suit. The defendants sought vacation of the ad-interim ex parte injunction alleging that the advertisements in the newspapers Dainik Savera Times (Delhi) dated 17-06-2016 Navshakti (Mumbai) dated 12-07-2016 as well as the sale invoices, which were put on record by the plaintiff were fabricated documents. Further, when the matter came up for hearing before the Court on 25-05-2023, the plaintiff withdrew the suit and consented to the vacation of the ex parte injunction.
A second suit was filed by the defendant on 15-07-2023 seeking to restrain the plaintiff from using its design rights as well as the mark ‘SURYA GOLD’ and its accompanying marks, claiming that they were the prior user of the said mark for tower fans, since 2014. The defendants have averred that they engaged a professional design company to create a distinctive label/packaging for ‘SURYA GOLD’, subsequently finalizing and adopting a blue-coloured label in respect of ‘SURYA GOLD’, the subject matter of the suit filed by plaintiff.
The defendants filed the original newspapers dated 17-06-2016 and 12-07-2016, to establish that the newspapers relied upon by the plaintiff was fabricated. The plaintiff upon being confronted, the plaintiff asked the Court to dismiss the matter and made a statement to the effect that the advertisements so published were indeed false and fabricated, however, the Court at this point was not inclined to allow the plaintiff to withdraw the suit and issued a show cause notice as to why the plaintiff should not be punished.
In response to the show cause notice, the plaintiff filed two affidavits before the Court wherein apology was tendered for having filed forged and fabricated the newspapers. The plaintiff also claimed to have taken steps for repentance such as taking a spiritual dip in the Ganges and service at a local Mandir.
In view of the conduct of the plaintiff, the defendants filed an application under Section of the , alleging that the plaintiff was guilty of committing offences under Sections , , , , , , and of the .
The defendants further filed an application under Order XXXIX Rule 2-A of the (‘CPC’) alleging that the plaintiff had continued the use of ‘SURYA GOLD’ mark/label for it its tower fans, which was confirmed through a discreet purchase made by the defendant. Additionally, another Tower Fan under the same impugned mark was purchased by the defendants from a store in Sadar Bazar, Delhi on 16-01-2024, where, although the purchase was successful, the invoice issued did not mention the mark ‘SURYA GOLD’. As per the contempt application, the motor of the fan was manufactured on 20-10-2023, thereby supporting the defendants’ claim of continued unauthorized use of the trademark by the plaintiff.
Contentions of the Plaintiff
The plaintiff argued that action under Section 340 of the could not be taken as the newspaper was fabricated prior to the institution of the present suit hence, the same document did not come within the purview of the definition of “document produced or given in evidence in a proceeding in any Court” in terms of Section 195(1)(b)(ii) of the . It was further argued by the plaintiff that only a private complaint could be maintainable which could be initiated by the defendants before a competent Magistrate, and that however this Court ought not to make a complaint under Section 340 of the .
Contentions of the Defendants
The defendants contended that the forged newspapers were used as evidence to secure an ex parte order and it was clear that there existed a clear legal nexus between the forged documents and the suit, thereby substantiating the need for action under Section 340 of the . It was further submitted by the defendants that if the Court chose not to initiate the proceedings under Section 340 of the , a private complaint before the Magistrate may be adversely affected due to the absence of express permission or referral from the Court.
Decision and Analysis
Upon hearing both parties and examination of records, the Court noted that it was common for parties to submit documents that demonstrated independent use of a mark to establish claims of prior adoption, prior use, and prior proprietary rights, and that newspapers occupied a high position in the hierarchy of documents relied upon by Courts, thus, any allegation of fabrication of newspapers is considered extremely serious, as it directly challenges the integrity of the evidence that significantly influences the decision in a proceeding.
The Court said that a perusal of the newspapers would make it amply clear that the newspapers had been falsified and fabricated, which had also been admitted to by the plaintiff. The Court further observed that the orders passed by the Court would also make it evident that fabrication of the newspapers was done prior to the filing of the suit, for the purposes of the suit, and that the said newspapers were relied upon in the suit for the purposes of claiming prior user/adoption in the mark ‘SURYA GOLD’ since 2016 in support of the prayer for injunction at the ex parte stage.
The Court noted that since the present applications were pending when the new statutes i.e. (‘BNS’) and (‘BNSS’) were enacted, the provisions of the erstwhile IPC and CrPC would apply. This has been further explained by the Court by reference to Section 531 of the BNSS which states that any appeal, application, trial, inquiry or investigation pending immediately before the date of on which the Sanhita comes into force, provisions of the CrPC would apply in those case.
The Court noted that even though forgery is a punishable offence under Section 463 and 464 of the IPC, at this stage the question to be decided was that whether the Court could direct the registration of a complaint in this case or not.
The Court observed that Section 195(1)(b)(ii) of the CrPC dealt with commission of offence in respect of a document produced or given in evidence before the Court, however, Section 195(1)(b)(i) dealt with offences alleged to have been committed, in relation to, a Court proceeding. The Court said that under the , every plaintiff or party had to file an affidavit in support of the plaint and also give a statement of truth with the plaint and the documents, and upon a conjoint reading of the statement of truth dated 10-01-2023 and list of documents filed by plaintiff, would show that the plaintiff had vouched for the authenticity of the documents when they were filed, and only admitted to them being fabricated at a belated stage.
The Court further noted that the affidavit sworn by the plaintiff was clearly false, which pointed to an offence of forgery, fabrication and filing of false affidavit, which called for lodging of a complaint under Section 340 of the CrPC.
The Court remarked that “The purpose of the provision Section 340 CrPC. would be undermined if the fabrication of a newspaper is permitted to go unpunished without even an investigation”.
Based on these circumstances, the Court held that the offence of forgery/fabrication of newspapers having been admitted and the filing of false affidavit having taken place during the proceedings pending before the Court, a case was made out for registration of complaint under Section 340 of the CrPC.
The Court, therefore, dismissed the suit with a cost of Rs. 5, 00, 000/- upon the plaintiff, out of which Rs 2.5 lakhs were to be paid to the Delhi High Court Legal Services Committee and Rs. 2.5 lakhs were to be paid to the defendants. The Court further restrained plaintiff from using the mark/label ‘SURYA GOLD’ and its accompanying trade dress. Additionally, the Court also directed plaintiff to pay to the defendant Rs. 5 lakhs, in view of the decree passed, with the total cost of Rs. 10 lakhs to be paid within three months.
The Court directed the Registrar General to take action and lodge a complaint with the Judicial Magistrate concerned within four weeks and ordered for the entire documents relating to the two suits to be transmitted to the Judicial Magistrate concerned.
[KG Marketing India v. Rashi Santosh Soni, CS (COMM) 18 of 2023, decided on 02-07-2024]
Advocates who appeared in this case :
Advocates for the Plaintiff: Dushyant K. Mahant, Deepak Dhyani, Anshima Puri, Karan Kumar
Advocates for the Defendants: Alankar Kirpekar, Jaspreet Singh Kapur
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