A single judge bench of the Delhi High Court on 29.08.2019 in LANDBASE INDIA LTD V. PRADEEP JAIN & ANR [CS(COMM) 922/2016, IA No.13898/2013] restrained the defendant to use the trademark. The bench was headed by JUSTICE RAJIV SAHAI ENDLAW.

FACTS:

The plaintiff instituted the suit to restrain the defendants, Pradeep Jain and Silver Glades Holdings Pvt. Ltd. from using the mark, “LABURNUM”, “THE LABURNUM”, “LABURNUM 2” or the device or any other mark or device containing the word “LABURNUM” and for ancillary reliefs.

ISSUES:

1.  Whether the plaintiff has exclusive rights over the trademark LABURNUM?

2.  Whether the defendants are infringing the trademark laburnum?

3. Whether the project LABURNUM was developed and promoted jointly by the plaintiff and defendant No.1?

4. Whether the factual representation of the association of defendant No.1 with the LABURNUM project results in violation of any alleged rights of the plaintiff?

5.  Whether the plaint is liable to be rejected on the ground that the plaintiff has suppressed and concealed the material facts?

6.  Whether the plaintiff is entitled to damages for a sum of Rs.10 lakh as damages on account of loss of sales, business and reputation?

7.   Whether plaintiff is entitled to relief claimed?

CONTENTIONS:

By plaintiff:

• That the defendants had shown “THE LABURNUM”, project of the plaintiff, as one of the completed projects of the defendants in their brochure along with pictorial representation and device of “LABURNUM”.
• That defendant had shown the “LABURNUM” with the device of “LABURNUM” on their website.
• That the plaintiff has no right to restrain the defendant from claiming his provenance qua the Laburnum project of the plaintiff.
• That the defendant no.1 was only the Managing Director of the plaintiff who developed the Laburnum project and was not the co-promoter.

By defendants:

• That the defendants never used / do not intend to use “LABURNUM” as a trade mark; that the defendant no.1 (Pradeep Jain) was a co-promoter of the plaintiff, of the project of construction of residences in the name of “LABURNUM” which D1 was carrying on business in the name and style of defendant no.2 (Silver Glades Holdings Pvt. Ltd.) and while carrying out the said business, called himself “LABURNUM MAN”.
• That defendants showed “LABURNUM” on their website because the said project was co-promoted by the D2 with ITC Ltd.
• That initially the D1 held 70% shares in the plaintiff, which were subsequently reduced to 50% and yet subsequently to 30% and ultimately to nil (which was confirmed by Plaintiff’s director).
• That the D1 was agreeable to not using the name / mark “LABURNUM” as in the brochure, under the heading “Silverglades Leadership” state “Mr. Jain / Mr. Pradeep Jain was a co-promoter along with ITC Ltd. of the project “The Laburnum” of Landbase India Ltd.
• That the defendants will not make any claim other than as aforesaid on their website and other advertisements or otherwise.
• ·That D2 will not claim to have any connection with the Laburnum project.

OBSERVATIONS: The Court observed that:-

• Acc to sec 29 of the Trademarks Act, 1999 making people believe about the association with the registered trademark company amounts to infringement of trademark.
• The plaintiff cannot take objection to the D1, as distinct from D2, claiming himself to be the co-promoter of the plaintiff who developed the Laburnum project as D1 held 70% shares in the plaintiff, which were subsequently reduced to 50% and yet subsequently to 30% and ultimately to nil.
• Passing decree in favour of plaintiff solves the issues no.(i) to (v) and stand decided.
• It was not deemed necessary to keep the suit pending for adjudication of the claim for damages only as the counsel for the plaintiff states that the plaintiff would not press for damages if the defendants agree to token amount of damages to which defendants denied.

HELD: The courts passed a decree for permanent injunction in favour of the plaintiff and against the defendants. The defendants were directed to carry out the changes within 48 hours on their website and otherwise. The parties were left to bear their own costs.

For full judgement refer:

[embeddoc url=”http://lobis.nic.in/ddir/dhc/RSE/judgement/31-08-2019/RSE29082019SC9222016.pdf” download=”all”]