• Shubham

Rikhab Chand Jain (Rikhab) approached the Tis Hazari (Central District) District Court of Delhi, seeking a permanent injunction against M/s. DMR Textiles (DMR), restraining infringement of trademark and trade name, passing off, damages, etc. The District Court vide an earlier order had dismissed its application for an interim injunction. Rikhab filed an appeal before the Hon’ble Delhi High Court but no stay was granted. The dispute between the parties was in respect of one distinctive image/logo which resembles the shape of a heart or onion sprouting from both sides (“impugned image”).
Rikhab alleged that he came to know in June 2020 through ‘indiamart.com’ that DMR is using the impugned image with the words ‘DMR’ written inside it. In the magazine ‘Sihma Bulletin’ DMR wrongly claimed that this trademark of DMR is registered.
Rikhab mentioned in one single line that he had challenged the copyright of DMR before the Copyright Board. No details of the challenge were given in the plaint. DMR, inter alia, pleaded that Rikhab has suppressed material facts and withheld material documents from the court. After hearing both the parties the Court came to know that:
  • The dispute between the parties in respect of the impugned marks started more than 30 years ago in the year 1990. Both parties had filed oppositions to each other’s trademark applications. All oppositions or rectification applications against already registered trademarks moved by DMR were dismissed 1998 onwards. These prosecution matters were also held before the IPAB. Thus, Rikhab fully knew at least since the year 1990 that DMR is using the impugned image. None of DMR’s trademark applications were in class 25, which is the core business of Rikhab and the only category of product that is in dispute as per the plaint.
  • Rikhab had challenged the copyright certificate issued to DMR in respect of the same image/logo and sometime in 1997, wherein, the Copyright Board held that “artistic work/mark of heart like design being used by both the parties is not creating any confusion and there is no chance of any deception or misleading as it is not similar due to use of different letters, address of one of the parties written under it, etc. Copyright Board even held to this extent that even casual or uneducated or illiterate person cannot mistake the articles manufactured by the plaintiffs.” Resultantly Rikhab’s appeal was dismissed by Copyright Board with costs.
  • This order of the year 1997 going against Rikhab became final and was not challenged further and in fact had amounted to resjudicata to the present dispute under the trade mark. In addition to this, there were three more copyright certificates issued to DMR qua hosiery, textiles, and undergarments products which were not challenged by Rikhab.
  • In the year 2011, some ‘moral understanding’ had taken place between the parties and DMR had withdrawn one trademark application and two were dismissed as withdrawn or for non-prosecution as per the details given in this paragraph however this was not disclosed.
None of the above facts were mentioned or elaborated upon by Rikhab in his plaint. Furthermore, the Court held that Rikhab also played fraud on the Court by concealing the order of the Copyright Board. Thus, there was active concealment of the material facts by Rikhab. The Court held that a mere one-line mention is not sufficient to exonerate him from active concealment.
The Court also observed that non-disclosure of the actual terms and conditions of ‘moral understanding’ is also active concealment of material facts from the Court. Hence, the Court held that Rikhab has come to the Court with unclean hands and has virtually misused the process of the Court. “Such type of litigants who tries to mislead the court, misuse the process of the court and play fraud upon the court are not entitled to any relief and their case has to be thrown away without hearing on merits in view of the decisions of Hon’ble Supreme Court in Kishore Samrite vs. State of UP (2013)2 SCC 398.
Hence, the Court dismissed the suit for being not maintainable and liable to be dismissed as well as time-barred. The Court added that “such type of litigants are just like plaintiffs who tries to suppress material facts and tries to play fraud upon court not only becomes liable for perjury and contempt but they should be also burdened with heavy costs. However, still, by taking a lenient view, I feel that plaintiffs should not be spared easily for their misdeeds and an attempt to cheat the court which has not only caused harassment to the opposite party but also wasted precious court time so at least plaintiffs should suffer with heavy costs by not invoking action of perjury and contempt.”
Hence, the Court also imposed a cost of Rs. 2 lakhs. Out of this, Rs. 1.50 lakh is to be paid to all the three defendants and Rs. 50,000/should be deposited in Delhi Legal Services Authority within one month.


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