This case revolves around a dispute concerning trademark infringement and deceptive similarity in the agricultural seed industry. The plaintiff, DCM Shriram Limited, alleged that the defendants were infringing upon their trademark and trade dress for wheat seed products. The case also examined issues of suppression of facts and material misrepresentation.

Case Analysis

Background

• The plaintiff, DCM Shriram Limited, is a reputed entity in the agricultural sector, engaged in producing and marketing wheat seeds under the brand names "Shriram Super 303" and "Shriram Super 404."
• The defendants, led by Mr. Amrik Singh Chawla, were accused of selling wheat seed products under deceptively similar names, "Sartaj 303" and "Sartaj 404," with packaging allegedly imitating the plaintiff's trade dress.
• The plaintiff sought an ex-parte injunction to restrain the defendants from marketing their products.
• The defendants contested this on the grounds of prior use and suppression of facts by the plaintiff.

Brief Facts of the Case

• The plaintiff claimed to have discovered the defendants' infringing activities on October 30, 2024.
• An operative of the plaintiff found the defendants' products being sold under deceptively similar marks at a local retailer in Bihar.
• The plaintiff alleged that the defendants' use of the marks "303" and "404" and the similar trade dress caused confusion among consumers.
• The defendants filed an application under Order XXXIX Rule 4 of the CPC to vacate the ex-parte injunction, arguing that:
  • The plaintiff had knowledge of their products since 2018.
  • The defendants had been using the marks "303" and "404" since 2014, predating the plaintiff's usage.
  • The plaintiff suppressed material facts from the court.

Issues Raised

• Whether the plaintiff was guilty of suppression of material facts regarding the defendants' prior use of the marks.
• Whether the ex-parte injunction granted on November 8, 2024, should be vacated.

Plaintiff's Submissions

• The plaintiff argued that the defendants' marks and packaging were deceptively similar to their own, causing consumer confusion.
• The plaintiff claimed exclusive rights over the marks "303" and "404" due to their extensive use since 2013 and 2015, respectively.
• The plaintiff alleged that the defendants' conduct amounted to trademark infringement and passing off.

Defendants' Submissions

• The defendants contended that they had been selling products under the marks "303" and "404" since 2014, predating the plaintiff's usage of "404."
• They presented evidence, including a letter from 2018 signed by the plaintiff's representative, demonstrating the plaintiff's prior knowledge of their products.
• The defendants argued that "303" and "404" were generic terms for seed varieties and could not be monopolized by the plaintiff.
• They accused the plaintiff of suppressing material facts and misleading the court to obtain the ex-parte injunction.

Judgments Referred

• Tata Sons Pvt. Ltd. v. Marvel Ltd., CS(COMM) 724/2024 - Held that misrepresentation of facts and suppression of material information warranted vacation of an injunction.
• Freebit AS v. Exotic Mile Pvt. Ltd., 2023 SCC OnLine Del 8213 - Emphasized that plaintiffs seeking equitable relief must approach the court with clean hands and disclose all relevant facts.
• Satish Khosla v. Eli Lilly Ranbaxy Ltd., 71 (1998) DLT 1 - Highlighted the duty of a plaintiff to disclose all material facts to the court.
• Kent RO Systems Ltd. v. Gattubhai, 2022 SCC OnLine Del 791 - Established that suppression of material facts alone could justify vacating an injunction.

Reasoning of the Judge

• The plaintiff's claim that they discovered the defendants' activities only in October 2024 was false, as evidenced by the 2018 letter signed by the plaintiff's representative.
• The defendants' prior use of the marks "303" and "404" since 2014 was substantiated by invoices and other documents.
• The plaintiff failed to disclose these facts, violating the duty of disclosure under Order XI of the CPC.
• Suppression and misrepresentation by the plaintiff disentitled them to equitable relief.

Decision

• The court vacated the ex-parte injunction dated November 8, 2024, allowing the defendants to resume their business operations.
• The products seized by the Local Commissioner were ordered to be released to the defendants.
• The matter was referred to mediation to address the issue of deceptive similarity in packaging.

Case Title: DCM Shriram Limited vs. Mr. Amrik Singh Chawla & Ors.
Date of Order: January 17, 2025
Case No.: CS(COMM) 990/2024
Neutral Citation: 2025:DHC:267
Name of Court: High Court of Delhi
Judge: Hon'ble Ms. Justice Mini Pushkarna

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539