Delhi High Court
Svamaan Financial Services Private … vs Sammaan Capital Limited & Ors. on 10 February, 2025
Author: Amit Bansal
Bench: Amit Bansal
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on: 17.12.2024
Judgment pronounced on: 10.02.2025
I.A. 41270/2024, I.A. 43249/2024 and CRL. M.A. 32198/2024
IN
+ CS(COMM) 871/2024
SVAMAAN FINANCIAL SERVICES PRIVATE
LIMITED .....Plaintiff
Through: Mr. Neeraj Kishan Kaul and
Mr. Sandeep Sethi, Senior Advocates
with Mr. Himanshu Bagai, Mr. Kushal
Gupta, Mr. Naimish Tewari, Mr.
Ayush Hoonka and Ms. Dhanya,
Advocates.
versus
SAMMAAN CAPITAL LIMITED & ORS. .....Defendants
Through: Mr. Mukul Rohatgi and Mr. Rajiv
Nayar, Senior Advocates with
Ms. Aadya Chawla, Mr. Ankit Banati,
Ms. Rinkoo Kakkar, Ms.
Nandini Choudhary and Mr. Saurabh
Seth, Advocates for D-1, D-3 and D-4.
Mr. Dayan Krishnan, Sr. Advocate
with Ms. Mallika Kamal, Mr. Adithya
Devarayan, Mr. Sanjeev Seshadri and
Mr. Shridharan, Advocates for D-2.
Mr. Mrinal Ojha, Mr. Debarshi Dutta,
Mr. Arjun Mookerjee, Ms. Nikita
Rathi and Mr. Risabh Agarwal,
Advocates for D-5.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 1 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
JUDGMENT
AMIT BANSAL, J.
CRL. M.A. 32198/2024 (under Section 379 of BNSS r/w Section
215(1)(b)(ii) of BNSS r/w Section 340 and 342 of BNS) and I.A. 43249/2024
(under Section 151 of CPC r/w Order VI Rule 15A of CPC)
1. By way of CRL. M.A. 32198/2024, the defendant no.1 seeks reference
of a criminal complaint against the plaintiff for filing forged and fabricated
documents in the present suit. By way of I.A. 43249/2024, the defendant no.1
seeks dismissal of the present suit on account of forged and fabricated
documents filed by the plaintiff.
2. It is the contention of the defendant no.1 that the following trade mark
registration certificates filed by the plaintiff along with its rectification
application dated 19th July, 2024 under Section 16(1)(b) of the Companies
Act, 2013 with the Registrar of Companies (hereinafter ‘RoC’) (filed at pages
1119 to 1134 of the documents filed with the plaint) are forged and fabricated:
i. Trade mark registration no. 3969709 in Class 35
ii. Trade mark registration no. 3967703 in Class 9
iii. Trade mark registration no. 396770 in Class 70
iv. Trade mark registration no. 396770 in Class 3
v. Trade mark registration no. 3967700 in Class 41
vi. Trade mark registration no. 39677706 in Class 30
vii. Trade mark registration no. 3967630 in Class 35
viii. Trade mark registration no. 3967630 in Class 36
3. In support of its contention, the defendant no.1 has placed on record E-
Register extracts from the website of the Trade Marks Registry corresponding
to the aforesaid trade mark application/ registration numbers. It is submitted
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 2 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
that as per the E-Register extracts from the website of the Trade Marks
Registry, the aforesaid trade mark applications/ registrations are in respect of
different proprietor/ mark/ class.
4. Taking note of the aforesaid applications, the plaintiff, vide order dated
24th October, 2024, was directed to file an affidavit to clarify the position.
5. Pursuant to the said direction, an affidavit dated 24th October, 2024 was
filed on behalf of the plaintiff. In the said affidavit, the plaintiff has tabulated
the trade mark registrations granted in its favour along with the application
numbers in the following manner:
S. Application Date of Class Mark Status
No. No. Application
1. 3967632 08/10/2018 36 SVAMAAN Registered
(word) and renewed
upto
08/10/2028
2. 3971167 11/10/2018 36 SVAMAAN Registered
Device i.e. and renewed
upto
11/10/2028
3. 3969849 10/10/2018 09 SVAMAAN Registered
(word) and renewed
upto
10/10/2028
4. 3971163 11/10/2018 09 SVAMAAN Registered
Device i.e. and renewed
upto
11/10/2028
5. 3967630 08/10/2018 16 SVAMAAN Registered
(word) and renewed
upto
08/10/2028
6. 3971164 11/10/2018 16 SVAMAAN Registered
Device i.e. and renewed
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 3 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
upto
11/10/2028
7. 3967631 08/10/2018 35 SVAMAAN Registered
(word) and renewed
upto
08/10/2028
8. 3971165 11/10/2018 35 SVAMAAN Registered
Device i.e. and renewed
upto
11/10/2028
9. 3969850 10/10/2018 42 SVAMAAN Registered
(word) and renewed
upto
10/10/2028
10. 3971166 11/10/2018 42 SVAMAAN Registered
Device i.e. and renewed
upto
11/10/2028
6. In respect of all the aforesaid registrations, the plaintiff has filed the
corresponding trade mark registration certificates (pages 60 to 75 of the
documents filed with the plaint).
7. In respect of the trade mark registration certificates, alleged by the
defendant no.1 to be forged and fabricated and occurring at pages 1119 to
1134 of the documents filed with the plaint, it has been explained that the
aforesaid registration certificates were filed by the plaintiff before the
Ministry of Corporate Affairs (hereinafter ‘MCA’) along with its application
dated 19th July, 2024 under Section 16(1)(b) of the Companies Act, 2013
objecting to the change in the corporate name of the defendant no.1 to
Sammaan Capital Limited. It has been explained that these registration
certificates filed by the plaintiff on the MCA website were compressed to
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 4 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
reduce the file size as there was a size limit of 2 MB for uploading documents
on the MCA website. As a consequence thereof, these registration certificates
got altered on account of a technical error. These registration certificates along
with the aforesaid application, as downloaded by the plaintiff from the MCA
website, were filed along with the plaint at pages 1119 to 1134 of the
documents filed with the plaint (as noted from the Index of List of Documents
filed with the plaint), without realizing that they were corrupted. In support of
this explanation, the plaintiff has also filed the email correspondence
exchanged between the plaintiff and its external advisors, as Document – 1,
with its affidavit dated 24th October, 2024.
8. The correct and uncorrupted trade mark registration certificates have
also been filed along with the application dated 25th July, 2024 filed by the
plaintiff under Section 16(1)(b) of the Companies Act, 2013 objecting to the
change of name of the defendant no.2 (pages 1166 to 1181 of the documents
filed with the plaint).
9. To verify the aforesaid position, I had also sought a status report from
the Trade Marks Registry, which has been filed on 5 th November, 2024. In
the said status report, it has been confirmed that the trademarks, which are the
subject matter of the present suit, have been duly registered in favour of the
plaintiff. The relevant extracts from the status report filed on behalf of the
Trade Marks Registry is set out below:
“3. In compliance with the directions of the Hon’ble Court, the
undersigned has obtained the necessary instructions regarding
the genuineness and validity of the above-mentioned trademark
registrations. Pursuant to these instructions, it is verified that the
trademarks in question are duly registered. A table detailing the
status of the Trademarks is as follows:
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 5 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
S. No. Trademark Application Registration valid up
No. to
1. 3971163 11/10/2028
2. 3971164 11/10/2028
3. 3971165 11/10/2028
4. 3971166 11/10/2028
5. 3971167 11/10/2028
6. 3969849 10/10/2028
7. 3967630 08/10/2028
8. 3967631 08/10/2028
9. 3967632 08/10/2028
10. 3969850 10/10/2028
Copy of details of the trademarks and their current status, as on
25.10.2024, as per the record of the trademark registry, and
which are forming part of the plaint, at pages 60-75 of the
documents is annexed herewith as DOCUMENT A-l (Colly).”
10. The status report filed on behalf of the Trade Marks Registry confirms
the fact that the plaintiff’s trademarks, which are the subject matter of the
present suit, have been duly registered under the trade mark application
numbers provided in the plaint. These trade mark application numbers
correspond with the correct trade mark registration certificates, which are also
filed on behalf of the plaintiff at pages 60 to 75 of the documents filed with
the plaint.
11. In view of the above, I am satisfied with the explanation given by the
plaintiff that the trade mark registration certificates filed by the plaintiff on
the MCA website got corrupted during the process of reducing the file size
and inadvertently, the same have been filed by the plaintiff in the present suit,
without realizing that the said registration certificates have got corrupted.
There was no reason for the plaintiff to file forged and fabricated trade mark
registration certificates once the correct ones have been filed by the plaintiff.
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 6 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
12. Accordingly, I find no merit in these applications. The same are,
accordingly, dismissed.
I.A. 41270/2024 (under Order XXXIX Rules 1 and 2 of CPC)
13. This application has been filed on behalf of the plaintiff under the
provisions of Order XXXIX Rules 1 and 2 of the Code of Civil Procedure,
1908 seeking an ad interim injunction against the defendants no.1 to 4
(hereinafter collectively referred to as ‘defendants’).
14. Summons in the present suit and notice in the application for interim
injunction were issued and accepted by the defendants in court on 4th October,
2024.
15. The defendants no.1, 3 and 4 filed a common reply to the aforesaid
application on 12th October, 2024 and the plaintiff filed its rejoinder thereto
on 14th October, 2024. The defendant no.2 filed its reply to the aforesaid
application on 26th November, 2024 and the plaintiff filed its rejoinder thereto
on 17th December, 2024.
16. Submissions were heard on behalf of counsel for the parties on 15th
October, 2024, 24th October, 2024, 29th October, 2024, 11th November, 2024,
20th November, 2024, 27th November, 2024, 5th December, 2024 and 17th
December, 2024, when the judgment was reserved and liberty was given to
the parties to file written submissions within one week.
17. Pursuant thereto, written submissions on behalf of the plaintiff, the
defendants no.1, 3 and 4 and the defendant no.2, along with judgments in
support, have been handed over in court and the same have been taken on
record.
CASE SET UP BY THE PLAINTIFF
18. The case set up by the plaintiff in the plaint is as follows:
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 7 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
18.1. The plaintiff company was incorporated in the year 2017 and has an
authorized capital of INR 200 crores and a paid-up capital of INR 191.03
crores. The plaintiff is an RBI-registered Non-Banking Finance Company –
Micro Finance Institution (hereinafter ‘NBFC-MFI’) and provides micro
finance loans for purposes including setting up businesses, fulfilling working
capital requirements, home building/ improvement, education, wedding and
medical emergencies. The plaintiff also provides other financial products and
services including insurance and credit for consumer durables.
18.2. The plaintiff honestly adopted and commenced use of the arbitrary and
inherently distinctive trademarks ‘SVAMAAN’ and ‘ ‘
(hereinafter ‘SVAMAAN marks’) in relation to financial services in 2017. The
plaintiff has filed various invoices/ loan application forms, communications/
agreements with its customers/ vendors/ government authorities/ business
partners, employment agreements, etc. in support of its use of the SVAMAAN
marks since 2017.
18.3. The plaintiff received a license from the Reserve Bank of India
(hereinafter ‘RBI’) to operate as an NBFC-MFI throughout India on 24th
September, 2018 and commenced its business operations in January 2019.
The plaintiff has expanded its operations to 275 branches in about 153 districts
and 20,968 villages in various states across the country. The plaintiff has over
2,90,712 active loans and 2,48,163 borrowers and as of 31 st August, 2024, a
total loan book of INR 968 crores. The plaintiff was also assigned ‘CRISIL
A+/Stable’ rating by CRISIL.
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 8 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
18.4. The plaintiff has obtained trade mark registrations for the SVAMAAN
marks in various classes, including Class 36, a list of which is provided in
paragraph no.9 of the plaint and paragraph no.5 hereinabove. The registration
certificates have been filed along with the plaint (pages 60 to 75 of the
documents filed with the plaint). The earliest trade mark registration in favour
of the plaintiff for the word mark ‘SVAMAAN’ in Class 36 dates back to 8 th
October, 2018 with a user claim since 31st October, 2017.
18.5. The plaintiff’s goodwill and reputation is evident from the fact that its
total income in the financial year 2023-24 has reached over INR 169.84 crores
from the total income of a mere INR 0.39 crores in the financial year 2018-
19.
18.6. The plaintiff has a robust online presence and spends substantial
amount of money towards advertisement and promotional activities. The
plaintiff operates its website, accessible at https://www.svamaan.in, as well as
its profiles on social media platforms such as Instagram, Facebook and
LinkedIn.
18.7. The plaintiff’s services under the SVAMAAN marks have been widely
recognized and reported by third-parties across various print and online
forums, a list of which is provided in paragraph no.23 of the plaint. The
plaintiff has also received multiple awards owing to its reputation, goodwill
and quality of business operations, a list of which is provided in paragraph
no.27 of the plaint.
18.8. The defendants are a part of the INDIABULLS Group. Prior to July
2024, their corporate names included the word ‘INDIABULLS’. In or around
July 2024, the defendants changed their corporate names by removing the
word ‘INDIABULLS’ and adding the word ‘SAMMAAN’.
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 9 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
18.9. The defendant no.1 is inter alia engaged in the business of providing
loans for housing, loans against property, developer loans and lease rental
discounting and the defendant no.2 is engaged in the business of finance and
insurance. The business of the defendants no.1 and 2 is identical with that of
the plaintiff. The services of the defendants no.3 and 4 are also allied and
cognate to the plaintiff’s services.
18.10. In November 2023, it came to the knowledge of the plaintiff that the
defendant no.1 is intending to change its name and identity to ‘SAMMAAN
CAPITAL’, which is deceptively similar to the plaintiff’s SVAMAAN marks.
18.11. The plaintiff issued a cease-and-desist notice dated 20th November,
2023 to the defendant no.1 calling upon the defendant no.1 to refrain from
using the word ‘SAMMAAN’ either as a trade mark or as a corporate name.
The defendant no.1 sent an interim response to the aforesaid notice on 8 th
December, 2023, wherein it was stated that the defendant no.1 was merely
changing its corporate name to ‘SAMMAAN CAPITAL’.
18.12. The defendant no.1, however, proceeded with filing applications for
registration of the word mark ‘SAMMAN CAPITAL’ and the device marks
‘ ‘, ‘ ‘ and ‘ ‘
(hereinafter collectively referred to as ‘SAMMAAN marks’) in Class 36
between February 2024 and May 2024. On 16th July, 2024, the plaintiff filed
a notice of opposition against the aforesaid application for the mark
‘SAMMAN CAPITAL’ on the ground that the said mark is almost identical
with the plaintiff’s SVAMAAN marks and is sought to be registered in respect
of identical services.
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 10 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
18.13. The plaintiff sent emails dated 22nd November, 2023 to RoC and RBI
stating that the mark ‘SAMMAAN CAPITAL’ proposed to be used by the
defendant no.1 is deceptively similar to the plaintiff’s SVAMAAN marks and
any use thereof would result in a confusion in the minds of the general public.
However, the plaintiff did not receive any response to the aforesaid emails.
18.14. Since the defendants no.1 and 2 were permitted to change their
respective corporate names to the names including the word ‘SAMMAAN’,
the plaintiff filed applications on 19th July, 2024 and 25th July, 2024 with the
MCA under Section 16(1)(b) of the Companies Act, 2013 seeking
rectification/ change in the corporate names of the defendants no.1 and 2
respectively. These applications are currently pending adjudication with the
MCA.
18.15. The plaintiff also wrote letters to RBI and SEBI stating that the use of
the word ‘SAMMAAN’ by the defendants no.1 and 2 amounts to infringement
of the plaintiff’s SVAMAAN marks. However, the plaintiff did not receive
any response from the aforesaid bodies.
18.16. A senior functionary of the plaintiff, in August 2024, also reached out
to the senior officials of the defendant no.1 urging the defendants to cease and
desist from using the SAMMAAN marks, but the said efforts were in vain.
18.17. The defendants are habitual and compulsive offenders of law and on
multiple occasions in the past, have been found guilty of flouting statutory
norms during the course of their business.
19. Aggrieved by the aforesaid, the present suit has been filed.
CASE SET UP BY THE DEFENDANTS
20. The case set up by the defendants in their replies to the application for
interim injunction is as follows:
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 11 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
20.1. The defendant no.1 was originally incorporated in 2005 as ‘Indiabulls
Housing Finance Limited’. It was registered as a housing finance company
regulated by National Housing Bank.
20.2. In 2024, the defendant no.1 transformed from a promoter-led and
promoter-driven lender (housing finance company) to a mortgage-focused
non-banking financial company (hereinafter ‘NBFC’). Following this
transformation, the defendants rebranded themselves with SAMMAAN-
formative corporate names.
20.3. The defendant no.1 received a fresh certificate of incorporation dated
21st May, 2024 from RoC and a new certificate of registration as a Non-
Banking Financial Company – Investment and Credit Company (NBFC-ICC)
from RBI on 28th June, 2024.
20.4. The defendant no.1’s business primarily focuses on long-term secured
mortgage-backed loans. The defendant no.1 has a balance sheet size of INR
73066 crores as on 31st March, 2024 and has AA/Stable ratings issued by
lending rating agencies including CRISIL. Further, the defendant no.1 has 218
branches across the country and has served over 1.5 million customers. The
defendant no.1 has also received several awards, a list of which is provided in
paragraph no.6.2 of its reply to I.A. 41270/2024.
20.5. The defendant no.1 operates its website, accessible at
‘www.sammaancapital.com’ which domain was registered on 12th June, 2023.
The defendant no.1 also enjoys a strong presence on social media platforms,
such as Facebook, Twitter (now X), Instagram, YouTube and LinkedIn.
20.6. The defendant no.2, in its reply to I.A. 41270/2024, has stated that it
was incorporated in 2006 and changed its name from ‘Indiabulls Commercial
Credit Limited’ to ‘Sammaan Finserve Limited’ and received a fresh
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 12 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
certificate of incorporation on 21st June, 2024. The defendant no.2 is classified
as a ‘non-deposit taking systematically important’ (ND-SI) NBFC. The
defendant no.2 has further stated that the defendants have duly received
approvals from all the necessary statutory authorities to adopt their respective
corporate names including the word ‘SAMMAAN’.
20.7. The defendant no.3, incorporated on 1st June, 2006, is engaged in the
field of finance and insurance. The defendant no.3 changed its corporate name
from ‘Indiabulls Collection Agency Limited’ to ‘Sammaan Collection Agency
Limited’ and received a fresh certificate of incorporation dated 6th September,
2024.
20.8. The defendant no.4, incorporated on 2nd November, 2006, is involved
in trading activities on behalf of others through commission agents,
commodity brokers and auctioneers. The defendant no.4 changed its corporate
name from ‘Indiabulls Advisory Services Limited’ to ‘Sammaan Advisory
Services Limited’ and received a fresh certificate of incorporation dated 6th
September, 2024.
20.9. The SAMMAAN marks were bona fidely adopted by the defendants
after thorough primary and secondary research conducted in-house as well as
through a well-known global marketing communications agency and are
unique, arbitrary and distinctive in nature.
20.10. The mark ‘SAMMAAN’ is inspired from the deep-rooted values and
customer trust of the defendants as well as their long journey of growth and
innovation. The mark ‘SAMMAAN’ symbolizes a blend of tradition and
forward-thinking, ensuring each decision and service is infused with the
respect and excellence that customers deserve.
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 13 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
20.11. The portrayal of the defendants as habitual offenders of law by the
plaintiff is a deliberate attempt to distort facts and, in any case, is immaterial
and irrelevant in the present suit.
SUBMISSIONS MADE ON BEHALF OF THE PLAINTIFF
21. Mr. Neeraj Kishan Kaul and Mr. Sandeep Sethi, learned senior counsel
appearing on behalf of the plaintiff, have made the following submissions:
21.1. The plaintiff is the prior adopter, user and the registered proprietor of
the SVAMAAN marks. The adoption of the mark ‘SVAMAAN’ by the
plaintiff was in a bona fide manner. The SVAMAAN marks are arbitrary and
inherently distinctive, hence deserve higher standard of protection.
21.2. Prior to the adoption of the mark ‘SAMMAAN’, the defendants had
been using the mark ‘INDIABULLS’ for over two decades. The defendants
have not provided any explanation for adopting the SAMMAAN marks.
21.3. The dominant part of the marks adopted by the defendants is the word
‘SAMMAAN’, which is almost identical with the plaintiff’s SVAMAAN
marks. The competing marks are phonetically, visually and conceptually
similar and the only difference in the defendants’ SAMMAAN marks is the
absence of the letter ‘V’.
21.4. The parties are engaged in identical business of granting loans and have
received registration from RBI to operate as NBFCs. As per the registrations
received from RBI, both parties can grant various categories of loans
including housing loans. Hence, the competing businesses of the parties are
identical and, at the very least, there is a trade connection in the businesses of
the plaintiff and the defendants. In cases of infringement and passing off, the
courts must consider not only the present businesses of the parties but also
their future expansion plans.
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 14 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
21.5. The customers of the plaintiff are sedentary people and hence, cannot
be referred to as sophisticated. Further, the plaintiff carries out its business in
rural areas as well as in areas where the prospective customers are more
attuned to local languages.
21.6. As the competing marks are almost identical and the business of the
parties are also identical, confusion is to be presumed under the provisions of
Section 29(1)(c) of the Trade Marks Act, 1999. In any case, in cases of
infringement and passing off, there is no requirement to furnish actual proof
of confusion. The test in infringement/ passing off actions is of the ‘initial
interest confusion’ and mere likelihood of confusion is sufficient.
21.7. The defendants cannot claim that the mark ‘SVAMAAN’ is publici
juris, descriptive or common to trade as the defendant no.1 itself has sought
registrations for the SAMMAAN marks. The defendants, therefore, cannot be
permitted to approbate and reprobate.
21.8. The approvals granted by the regulatory bodies such as RBI and RoC
cannot amount to an adjudication that use of the defendants’ SAMMAAN
marks does not amount to infringement of the plaintiff’s SVAMAAN marks
or passing off of their services as those of the plaintiff.
21.9. As per the certificate of Chartered Accountants filed by the defendants
no.1, 3 and 4, expenses towards promotion of the SAMMAAN marks have
been incurred by the defendant no.1 only since July 2024 (page 100 of the
documents filed by the defendants no.1, 3 and 4 along with their reply to I.A.
41270/2024).
21.10. Since the defendants commenced use of the SAMMAAN marks only
in July 2024, it cannot be said that they have acquired any goodwill or
reputation in relation to the same. Merely because the defendants’ businessSignature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 15 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
size is larger than that of the plaintiff, it cannot be a ground to deny the relief
of interim injunction in favour of the plaintiff.
21.11. There is no delay in filing of the present suit. The plaintiff, in November
2023, came to know about the defendant no.1’s intention to adopt the mark
‘SAMMAAN CAPITAL’ and issued a legal notice as far back on 20 th
November, 2023. The plaintiff became aware of the defendant no.1 having
received approval from RoC to change its corporate name vide news article
dated 3rd July, 2024 (page 91 of the documents filed by the defendants no.1, 3
and 4 along with its reply to I.A. 41270/2024). Immediately thereafter, the
plaintiff filed its applications under Section 16(1)(b) of the Companies Act,
1956 as well as notice of opposition to the defendant no.1’s trade mark
application for the mark ‘SAMMAAN CAPITAL’ in July 2024. The present
suit was filed on 3rd October, 2024.
21.12. The defendants’ use of the SAMMAAN marks began only in July 2024.
Further, the defendant no.2 received its fresh certificate of registration from
RBI only on 4th October, 2024, which is subsequent to the institution of the
present suit. On the other hand, the plaintiff has been using the SVAMAAN
marks since the year 2017. Hence, it cannot be stated that balance of
convenience is in favour of the defendants.
21.13. In these facts and circumstances, permitting the defendants to use the
SAMMAAN marks would cause confusion among the public and would also
lead to irreparable loss, harm and injury to the plaintiff.
SUBMISSIONS MADE ON BEHALF OF THE DEFENDANTS
22. Mr. Mukul Rohatgi, Mr. Rajiv Nayar and Mr. Dayan Krishnan, learned
senior counsel appearing on behalf of the defendants, have made the
following submissions:
Signature Not Verified
Digitally Signed CS(COMM) 871/2024 Page 16 of 41
By:DINESH KUMAR
Signing Date:10.02.2025
16:13:11
22.1. Both the competing marks ‘SVAMAAN’ and ‘SAMMAAN’ are
common Hindi words which mean ‘self-respect’ and ‘honour’ respectively
and a monopoly cannot be claimed over common Hindi words. Therefore, the
registrations granted for the SVAMAAN marks in favour of the plaintiff are
erroneous.
22.2. Section 29(1)(c) of the Trade Marks Act, 1999 can be invoked only if
the competing marks are identical. In the present case, the defendant’s mark
‘SAMMAAN’ is not identical with the plaintiff’s mark ‘SVAMAAN’ and the
competing marks are also phonetically different. Further, the logos adopted
by the plaintiff and the defendants are entirely different.
22.3. Mere presence of a few common alphabets in the competing marks does
not render them similar to each other. The dissimilarity between the
competing marks is further evident form the fact that the SVAMAAN marks
were not cited in the defendant no.1’s trade mark applications for the
SAMMAAN marks.
22.4. Since the competing marks are not identical, the plaintiff ought to
establish the ‘likelihood of confusion’ with regard to the competing marks
under Section 29 of the Trade Marks Act, 1999. The plaintiff, however, has
failed to make out a prima facie case of confusion as it has not pointed out
even a single instance of actual confusion in the market.
22.5. The defendants have incurred huge expenditure to announce their
change of names from INDIABULLS to SAMMAAN-formative names and
in all such advertisements and promotional material, they have clearly
referred to themselves as ‘formerly known as INDIABULLS’. This eliminates
any likelihood of confusion in the market or association of the SAMMAAN
marks with the plaintiff. There also cannot be any confusion between theSignature Not Verified
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customers of the plaintiff and the defendants inasmuch as the scale of their
respective businesses are totally different.
22.6. The consumer base of the defendants consists of sophisticated and
literate consumers who possess high familiarity with the Hindi language and
are capable of distinguishing common Hindi words and their pronunciation,
meaning and usage. They would be able to differentiate between the plaintiff
and the defendants and are unlikely to get confused between the competing
marks. Further, the present case pertains to a specialized and niche sector of
financial services, where customers are accustomed to conduct thorough due
diligence before making any decision, which will rule out any likelihood of
confusion.
22.7. The nature of the businesses carried out by the plaintiff and the
defendants is different. The plaintiff is in the business of providing micro-
finance/ unsecured loans, whereas the defendant no.1 provides macro-
finance/ large mortgaged-backed loans. The defendant no.1 is also the 7 th
largest company among the 2300 NBFCs in India, whereas the plaintiff is a
small entity. Therefore, there is a huge difference in the average loan ticket
size of the plaintiff and the defendants.
22.8. The defendants have adopted the mark ‘SAMMAAN’ in a bona fide
manner after conducting primary and secondary research and fully complying
with the regulatory process.
22.9. The defendants have obtained all the regulatory approvals under their
SAMMAAN-formative corporate names including fresh certificates of
incorporation, GST registration certificates, RBI registrations and NSE/BSE
registrations. Therefore, balance of convenience is in favour of the defendants
and against the plaintiff.
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ANALYSIS AND FINDINGS
23. I have perused the material on record and heard the submissions made
on behalf of counsel for the parties.
24. The plaintiff was incorporated as ‘Svamaan Financial Services Private
Limited’ on 31st October, 2017. The plaintiff registered the domain
‘www.svamaan.in’ on 30th November, 2017. The plaintiff received its NBFC-
MFI license from RBI on 24th September, 2018 and soon thereafter,
commenced its operations of lending. The plaintiff has placed on record
documents to show that it has been using the SVAMAAN marks since it
commenced its business operations in 2019. The plaintiff is also the registered
proprietor of the SVAMAAN marks in classes 9, 16, 35, 36 and 42 with the
earliest registration with effect from 8th October, 2018, claiming use since 31st
October, 2017.
25. On the other hand, the defendants, incorporated in or around 2005, have
been doing business under the name of INDIABULLS. It was only in the year
2023 that the defendants decided to adopt the name ‘SAMMAAN’ and its
variants in respect of their services. The defendant no.1 applied for the
registration of the SAMMAAN marks on a ‘proposed to be used’ basis
between the period from February 2024 to May 2024. It was only in or after
May 2024 that the defendants received their fresh certificates of incorporation
with the word ‘SAMMAAN’ forming a part of their corporate names.
26. In light of the aforesaid undisputed facts, there cannot be any doubt that
the plaintiff is the prior adopter, user and the registered proprietor of the
SVAMAAN marks.
COMPARISON BETWEEN THE COMPETING NAMES/ MARKS
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27. The table below gives the previous corporate names of the defendants
along with their corresponding current corporate names:
Defendant No. Previous Corporate Name Current Corporate Name
1 Indiabulls Housing Finance Sammaan Capital Limited
Limited
2 Indiabulls Commercial Credit Sammaan Finserve Limited
Limited
3. Indiabulls Collection Agency Sammaan Collection Agency
Limited Limited
4 Indiabulls Advisory Services Sammaan Advisory Services
Limited Limited
28. From a perusal of the table above, it is evident that the word
‘SAMMAAN’ is common to the current corporate names of all the contesting
defendants.
29. Since both the plaintiff and the defendants are in the business of lending
and financing, the words/ phrases ‘CAPITAL’, ‘FINANCE’, ‘FINSERVE’
and ‘FINANCIAL SERVICES’ used as a part of their corporate names/
trademarks describe their services and are common to trade. The dominant
part of the plaintiff’s corporate name/ trademarks is the word ‘SVAMAAN’.
In a similar manner, it is the word ‘SAMMAAN’ which is the dominant part
of the defendants’ corporate names/ trademarks. It is, in fact, to be noted that
the defendants, in their replies, have stated ‘SAMMAAN’ to be their brand/
trade mark (paragraphs no.7, 7.2, 11.1 of the reply filed by the defendants
no.1, 3 and 4 and paragraphs no.9 and 11 of the reply filed by the defendant
no.2).
30. Therefore, in order to determine infringement, a comparison would
have to be made between the words/ marks ‘SVAMAAN’ and ‘SAMMAAN’.
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WHETHER THE COMPETING MARKS ARE IDENTICAL/ DECEPTIVELY SIMILAR
31. In Ruston & Hornsby v. Zamindara Engineering1, the Supreme Court
observed that in an infringement action, the only issue to be decided is
whether the defendant is using a mark which is the same as, or is a colourable
imitation of, the plaintiff’s registered trade mark. The competing marks in the
aforesaid case were ‘RUSTON’ and ‘RUSTAM INDIA’. It was held that the
competing marks are deceptively similar and therefore an injunction was
granted in favour of the plaintiff. The Supreme Court also held that the word
‘INDIA’ added to the impugned mark is of no consequence.
32. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical
Laboratories2, the Supreme Court, while highlighting the difference between
an infringement action and an action for passing off, observed where the
similarity between the plaintiff’s and the defendant’s marks is so close, either
visually, phonetically or otherwise, no further evidence is required to make
out a case for infringement. Any added material in the impugned mark would
be of no consequence where the essential feature of the plaintiff’s mark has
been adopted by the defendant. The relevant extract from Kaviraj Pandit
(supra) is set out below:
“28. …In an action for infringement, the plaintiff must, no
doubt, make out that the use of the defendant’s mark is likely
to deceive, but where the similarity between the plaintiff’s and
the defendant’s mark is so close either visually, phonetically or
otherwise and the court reaches the conclusion that there is an
imitation, no further evidence is required to establish that the
plaintiff’s rights are violated. Expressed in another way, if the
essential features of the trade mark of the plaintiff have been
adopted by the defendant, the fact that the get-up, packing and1
(1969) 2 SCC 727
2
1964 SCC OnLine SC 14Signature Not Verified
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other writing or marks on the goods or on the packets in which
he offers his goods for sale show marked differences, or
indicate clearly a trade origin different from that of the
registered proprietor of the mark would be immaterial; whereas
in the case of passing off, the defendant may escape liability if he
can show that the added matter is sufficient to distinguish his
goods from those of the plaintiff.”
[Emphasis is mine]
33. With this background, it is relevant to see the comparison of the
competing marks, which is provided at page 3 of the reply of the defendant
nos. 1, 3 and 4, and is set out below:
DEFENDANTS TRADE MARK/ PLAINTIFF'S TRADE MARK/
NAME NAME
SAMMAAN CAPITAL SVAMAAN
SAMMAN CAPITAL LTD. SVAMAAN FINANCIAL SERVICES
PVT. LTD.
34. The comparison above shows that the competing marks ‘SVAMAAN’
and ‘SAMMAAN’ are phonetically and structurally very similar to each other.
The only difference between the two marks is of a single letter, i.e., the letter
‘V’ has been removed and an additional ‘M’ has been added in the defendants’
mark, which, in my opinion, would not make any significant difference. The
aspect of phonetic similarity has to be assessed from the point of view of the
consumer, who is a person of average intelligence and imperfect recollection
and he cannot be treated as one who is over-familiar with either of the marks.
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35. In Corn Products Refining v. Shangrila Food Products3, the
competing marks were GLUCOVITA and GLUVITA and the Supreme Court
found the competing marks to be similar. The relevant extract from Corn
Products (supra) is set out below:
“18. …It is well recognised that in deciding a question of
similarity between two marks, the marks have to be considered
as a whole. So considered, we are inclined to agree with Desai,
J., that the marks with which this case is concerned are similar.
Apart from the syllable ‘co’ in the appellant’s mark, the two
marks are identical. That syllable is not in our opinion such as
would enable the buyers in our country to distinguish the one
mark from the other.
19. We also agree with Desai, J., that the idea of the two marks
is the same. The marks convey the ideas of glucose and life giving
properties of vitamins. The Aquamatic case (Harry Reynolds v.
Laffeaty’s Ld.) [1958 RPC 387] is a recent case where the test
of the commonness of the idea between two marks was applied
in deciding the question of similarity between them. Again, in
deciding the question of similarity between the two marks we
have to approach it from the point of view of a man of average
intelligence and of imperfect recollection. To such a man the
overall structural and phonetic similarity and the similarity of
the idea in the two marks is reasonably likely to cause a
confusion between them.”
[Emphasis is mine]
36. In K. R. Chinna Krishna Chettiar v. Shri Ambal4, the competing marks
were SRI AMBAL and SRI ANDAL. The Supreme Court upheld the decision
of the Madras High Court, wherein it was observed that a trade mark does not
only comprise the visual elements contained therein but also its descriptive
name, i.e., the word(s) forming a part of the trade mark. A copy or a colourable
3
1959 SCC OnLine SC 11
4
(1969) 2 SCC 131
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imitation of such descriptive name would, therefore, constitute an
infringement of the mark containing the name.
37. The aforesaid observations of the Supreme Court were also relied upon
by this Court in Institut Europeen D. Administration Des Affaires v.
Fullstack Education5, where the competing marks were composite marks
including the words INSEAD and INSAID and it was observed as under:
“38. Where, therefore, there is marked phonetic similarity
between INSEAD and INSAID, mere fact that, in the overall
logos of the two marks, there may be accompanying pictorial
representations or other features which may distinguish the
marks as device marks, cannot detract from the confusingly
similar nature of the two marks.”
[Emphasis is mine]
38. The defendants, therefore, cannot argue that their marks are visually
dissimilar from the plaintiff’s marks on account of the accompanying logo or
other visual elements, when the competing marks are structurally and
phonetically similar.
39. The word ‘SVAMAAN’ is a Hindi word which means ‘self-respect’ and
the word ‘SAMMAAN’ is also a Hindi word which means ‘honour’/ ‘respect’.
Since both the competing marks are based on the broader theme of ‘respect’,
they are also conceptually/ semantically similar to each other.
40. In Shree Nath Heritage Liquor v. Allied Blender & Distillers6, the
competing marks were OFFICER’S CHOICE and COLLECTOR’S
CHOICE. A Division Bench of this Court observed as under:
“31. …marks containing words with the same sense relation
(or falling in the same semantic field, or conveying the same or5
2023 SCC OnLine Del 3016
6
2015 SCC OnLine Del 10164Signature Not Verified
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similar idea in the mind) as that of previously existing marks
are likely to be considered so similar as to be refused
registration or deemed to constitute infringement of the
previously existing trademark.”
41. The Division Bench in the aforesaid case observed that the word
COLLECTOR is a hyponym of the word OFFICER and both are synonyms
of the phrase/ idea of ‘a person holding an office of authority’ and therefore,
despite the labels and get up of the competing products being dissimilar, held
that the two marks are similar and will lead to confusion.
42. Reliance has been placed on behalf of the defendants on the following
judgments in support of their submission that their mark ‘SAMMAAN’ is not
similar to the plaintiff’s mark ‘SVAMAAN’ so as to result in infringement or
passing off:
(i) F. Hoffmann-La Roche v. Geoffrey Manners7 – the competing
marks were PROTOVIT and DROPRVIT;
(ii) Fox & Co.8 – the competing marks were FILTRATE and
MOTRATE;
(iii) Mount Mettur Pharmaceuticals v. Ortha Pharmaceuticals9 – the
competing marks were UTOGYNOL and ORTHOGYNOL;
(iv) Living Media India v. Alpha Dealcom10 – the competing marks
were INDIA TODAY and NATION TODAY;
(v) Phonepe v. EZY Services11 – the competing marks were PHONEPE
and BHARATPE;
7
(1969) 2 SCC 716
8
(1920) 37 RPC 37 at 41
9
1974 SCC OnLine Mad 64
10
2014 SCC OnLine Del 768
11
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(vi) GUFIC v. Clinique Laboratories12 – the competing marks were
CLINIQUE and SKINCLINIQ.
43. I have given my anxious consideration to the aforesaid judgments relied
upon on behalf of the defendants. In all the aforesaid judgments, the first
word/ syllable/ alphabet in the competing marks were different, which is not
the case in the present suit. In the normal enunciation, the initial syllable(s) of
the words are the most important and the accentuation would be upon the
initial word/ syllable/ alphabet {refer Mount Mettur (supra), followed by this
Court in CFA Institute v. Brickwork Finance Academy13}. This is a
significant aspect that distinguishes the aforesaid judgments from the case at
hand.
44. The defendants have also relied upon the judgment in Vasundhra
Jewellers v. Kirat Vinodbhai Jadvani14, wherein the plaintiff claimed
exclusivity over the word VASUNDHRA despite having no registration for
the word mark VASUNDHRA. The Court held in favour of the defendant,
whose mark was visually different from the plaintiff’s marks. In the present
case, the plaintiff has valid registrations for the word mark ‘SVAMAAN’.
Therefore, the aforesaid judgment cannot come to the rescue of the defendants
in the present case.
45. The position that emerges from the aforesaid legal precedents is that
the impugned mark need not be completely identical with the registered trade
mark of the plaintiff and any minor difference therein would be of no
consequence. In view of the aforesaid, I am of the considered view that the
12
2010 SCC OnLine Del 2322
13
2020 SCC OnLine Del 2744
14
2022 SCC OnLine Del 2996
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competing marks are structurally, phonetically and conceptually so close to
each other, which renders the defendants’ SAMMAAN marks deceptively
similar to the plaintiff’s SVAMAAN marks and the added matters including
the words CAPITAL/ FINANCE/ FINSERVE, a different logo and other
visually different elements would not make any difference.
46. The defendants have further contended that in all their advertisements
and promotional material, they use the phrase ‘formerly known as
INDIABULLS’ and this addition distinguishes the SAMMAAN marks from
the plaintiff’s SVAMAAN marks. However, the reference to INDIABULLS
is during the transition phase and the usage of the aforesaid phrase is
temporary. The defendant no.2 in its reply has confirmed the fact that
reference to INDIABULLS along with the defendants’ SAMMAAN marks is
to comply with the requirements of Section 12(3) of the Companies Act, 2013.
Therefore, addition of the phrase ‘formerly known as INDIABULLS’ would
not distinguish the defendants’ SAMMAAN marks from the plaintiff’s
SVAMAAN marks.
WHETHER THE DEFENDANTS’ ADOPTION OF SAMMAAN MARKS WAS BONA
FIDE
47. It has not been pleaded by the defendants that they were not aware
about the plaintiff’s existence at the time of adoption of the SAMMAAN
marks. It is also an undisputed fact that the plaintiff, upon becoming aware of
the defendant no.1’s intention to change its identity to ‘SAMMAAN
CAPITAL’, which was reported in a news article dated 5th October, 2023, sent
a legal notice to the defendant no.1 on 20th November, 2023 claiming its
registrations for the SVAMAAN marks and calling upon it to refrain from
adopting and using the mark ‘SAMMAAN’ as the same would amount to
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infringement of the SVAMAAN marks. Therefore, the defendants cannot
possibly take the defence that they were not aware about the plaintiff’s
SVAMAAN marks prior to their change of corporate names and
commencement of use of the SAMMAAN marks.
48. Despite having been put to notice by the plaintiff, the defendants
proceeded to change their corporate names, obtained regulatory approvals
under the new names and applied for trade mark registrations for the
SAMMAAN marks. No satisfactory explanation has been given by the
defendants for adopting the mark ‘SAMMAAN’, despite being made aware
of the SVAMAAN marks used by the plaintiff in relation to its services.
49. In view of the aforesaid, I am of the considered opinion that the
defendants have failed to establish that their adoption of the SAMMAAN
marks was bona fide.
WHETHER THE SERVICES OF THE PARTIES ARE IDENTICAL/ SIMILAR
50. The plaintiff is the registered proprietor of the SVAMAAN marks, inter
alia, in Class 36 with respect to ‘financial affairs; monetary affairs;
insurance; real estate affairs; and consultancy in relation to the aforesaid
services’. The defendant no.1 has also applied for registration of the
SAMMAAN marks in Class 36 with respect to identical services, i.e.,
‘insurance; financial affairs; monetary affairs; real estate affairs’.
51. It is also true that the plaintiff and the defendants no.1 and 2 have been
registered by RBI to operate as NBFCs. The primary/ ancillary services of the
plaintiff and the defendants of granting loans, on a broad perspective, are
identical with each other. The defendant no.3 is engaged in the field of finance
and insurance, which services are also offered by the plaintiff.
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52. The defendants have contended that the plaintiff provides small ticket
loans for purposes such as setting up businesses, fulfilling working capital
requirements, education, wedding and medical emergencies. On the other
hand, the defendant no.1 provides large ticket sized housing loans, which are
mortgage backed. Even if that be so, it is an admitted position that both the
plaintiff and the defendant no.1 are essentially in the business of providing
loans. The defendant no.1 is, in fact, admittedly in the business of granting
both affordable home loans as well as mortgage-backed loans to micro,
medium and small businesses (pages 86-88 of the documents filed by the
defendants no.1, 3 and 4). It may be true that at this point of time, the plaintiff
is only providing loans of smaller amount as compared to those of the
defendants. However, nothing prevents the plaintiff to expand its business in
the future and provide big ticket loans, including housing loans, which is the
main business of the defendant no.1.
53. In Corn Products (supra), competing products were ‘biscuits’ and
‘dextrose (d-glucose powder mixed with vitamins) used as an ingredient in
food’. The Supreme Court observed that there exists a trade connection
between the competing products of the parties and held if a trade connection
can be established between the products bearing similar trademarks, there
exists a likelihood of confusion or deception among the consumers and the
members of trade and public.
54. The observations of the Supreme Court in Corn Products (supra) were
relied upon by me in Mayo Foundation for Medical Education & Research
v. Bodhisatva Charitable Trust15, wherein the plaintiff had a registration for
15
2023 SCC OnLine Del 3241
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the mark MAYO with respect to ‘medical journals and printed matter’ and
the defendant was engaged in the business of running hospitals and
disseminating education in the medical field. It was held as under:
“14. In the present case also, the plaintiff had registration under
Class 16. Applying the ratio of the aforesaid judgments to the
facts of the present case, in my view, ‘hospitals’ and ‘education
services providing courses of instruction in medicine and health
care’ would be allied and cognate to ‘medical journals and
periodicals’ as all of them relate to the healthcare and medical
education sector. Since, the defendants are using identical marks
in respect of services that are similar to the services of the
plaintiff, it is likely to cause confusion in the public and is also
likely show an association with the registered trademarks of the
plaintiff. Therefore, a prima facie case of infringement in terms
of Section 29(2)(a) of Trade Marks Act, 1999 is made out.”
55. I am, therefore, unable to accept the submission on behalf of the
defendants that their services are different from those of the plaintiff or that
they operate in different fields. It cannot be denied that there exists, at the very
least, a trade connection between the competing services of the parties.
56. In Laxmikant V. Patel v. Chetanbhai Shah16, the Supreme Court held
that the ground for the relief of injunction is not to be limited to the date of
the proceedings. In addition to the present businesses of the parties, regard
must be given to the scope of their expansion in the future.
57. Reliance is also correctly placed by the plaintiff on the judgment of a
Coordinate Bench of this Court in Somany Ceramics v. Shri Ganesh
Electric17. Relying upon the judgment of the Supreme Court in Laxmikant
(supra), it was held as under:
16
(2002) 3 SCC 65
17
2022 SCC OnLine Del 3270Signature Not Verified
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“61. Pertinent it is to mention, at this stage, that while the
Plaintiff started its business in ceramics tiles, it subsequently
expanded into sanitaryware and bath fittings and obtained
registrations in Class 11 on 05.01.2007. Later, Plaintiff also
expanded its business into selling water heaters/geysers and
obtained registration on 31.07.2018. This fact is important in
the context of the judgment of the Supreme Court in Laxmikant
(supra), where it was held that Courts have to be mindful of
future expansion of the business of a proprietor of a trademark.
Plaintiff is right in its contention that merely because a
trademark registration is applied for in a particular class, the
proprietor is forever bound to sell only those goods. Law
recognises the expansion of business into similar or cognate or
allied goods and this factor is relevant for determination of a
claim for passing off.”
[Emphasis is mine]
58. Therefore, the difference in the size and scale of businesses of the
parties would not be relevant in determining the identity/ similarity between
the competing businesses.
LIKELIHOOD OF CONFUSION
59. The defendants have contended that a consumer in the financial service
sector is not an average consumer with imperfect recollection, but is
sophisticated and literate, who will not get confused between the competing
marks.
60. I am unable to agree with the aforesaid submission made on behalf of
the defendants. Persons who avail loans may come from any background, be
it rural or urban, literate or illiterate, Hindi-speaking or non-Hindi speaking.
Both the plaintiff and the defendants operate on a pan-India basis. The
plaintiff has also filed newspaper publications/ advertisements in regional
languages such as Bengali, Odia and Marathi to substantiate its operations
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across India including in rural areas (pages 804-805, 889, 892-894, 896-898
of the documents filed with the plaint). There is a high probability that
consumers, who are illiterate, semi-literate or non-Hindi speaking, would find
the competing marks ‘SVAMAAN’ and ‘SAMMAAN’ very similar or nearly
identical and therefore get confused between the two. Therefore, I cannot
accept the submission that the class of consumer in the financial service sector
is sophisticated or is capable of differentiating between the competing marks.
61. In Shri Ambal case (supra), the appellant also contended that the words
AMBAL and ANDAL had distinct meanings and therefore the customers
would not get confused between the two marks. The Supreme Court however
rejected this contention and observed as under:
“.10. …The Hindus in the south of India may be well aware that
the words Ambal and Andal represent the names of two distinct
Goddesses. But the respondent’s customers are Christians,
Parsees, Muslims and persons of other religious denominations.
Moreover, their business is not confined to south of India. The
customers who are not Hindus or who do not belong to the
south of India may not know the difference between the words
Andal and Ambal. The words have no direct reference to the
character and quality of snuff. The customers who use the
respondent’s goods will have a recollection that they are known
by the word Ambal. They may also have a vague recollection of
the portrait of a benign goddess used in connection with the
mark. They are not likely to remember the fine distinctions
between a Vaishnavite goddess and a Shivaite deity.”
[Emphasis is mine]
62. The defendants, in support of their contention of potential consumers
being knowledgeable/ sophisticated, have relied on the judgments of this
Court in CFA Institute (supra) and Trustees of Princeton University v.
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Vagdevi Educational Society18. In both the aforesaid judgments, however, the
rival parties were running educational institutes and their target consumers
were students having at least a graduate qualification or seeking such
qualification, who would not qualify as ordinary persons on the street. As
noted above, persons availing loans may not be educated. Therefore, these
judgments do not advance the case of the defendants.
63. On behalf of the defendants, it is also contended that the plaintiff has
not produced any evidence to show actual confusion in the market. However,
the test to be established in cases of infringement and passing off is of
likelihood of confusion, and not actual confusion. It is settled that once a trade
connection is established between goods and/or services bearing similar
trademarks, there exists a likelihood of confusion or deception among the
consumers and the members of the trade and public. The use of the
SAMMAAN marks by the defendants is therefore likely to cause confusion
among the members of trade and public.
64. In view of the discussion above, the plaintiff has made a prima facie
case for infringement in terms of Section 29(2)(b) of the Trade Marks Act,
1999.
WHETHER THE PLAINTIFF’S MARK ‘SVAMAAN’ IS DESCRIPTIVE/ PUBLICI
JURIS/ COMMON TO TRADE
65. It is vehemently contended on behalf of the defendants that the
plaintiff’s mark ‘SVAMAAN’ is descriptive, publici juris and a Hindi word
common to trade and, therefore, is incapable of registration.
66. In my opinion, use of the mark ‘SVAMAAN’ in relation to financial
services is completely arbitrary and inherently distinctive in nature. It would
18
2023 SCC OnLine Del 5524
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be farfetched to assume that the word ‘SVAMAAN’, in any manner, suggests
or is indicative of the financial services rendered by the plaintiff or is common
to trade.
67. The aforesaid stand of the defendants is also at variance with their
statement that the mark ‘SAMMAAN’, which is conceptually similar to the
plaintiff’s mark ‘SVAMAAN’, is coined/ arbitrary (paragraphs no.11.1 and
11.2 of the reply to I.A. 41270/2024 filed on behalf of the defendants no.1, 3
and 4). It also contradicts their act of seeking trade mark registration for the
SAMMAAN marks. Therefore, it does not lie in the mouth of the defendants
to contend that the plaintiff’s mark ‘SVAMAAN’, which is based on a similar
theme of respect, is descriptive. Reference in this regard may be placed on the
judgment of a Division Bench of this Court in Indian Hotels Company v. Jiva
Institute of Vedic Science & Culture19. The Division Bench observed that the
appellant/ defendant itself applied for registration of the mark JIVA as a trade
mark and hence rejected its contention that the JIVA is a descriptive word and
cannot be protected as a trade mark by a civil court.
68. The defendant no.2, in its reply, has contended that there exist several
trade mark registrations in Class 36 containing the words ‘SAMMAAN’/
‘SVAMAAN’/ ‘SWABHIMAAN’/ other similar Hindi words. However, it has
failed to show any proof of use of such third-party marks. Mere existence of
a mark on the Register of Trade Marks is not sufficient to contend that the
same is publici juris or common to trade.
69. The defendant no.2 has also contended that several companies,
governments, organisations use various versions of the word ‘respect’
19
2008 SCC OnLine Del 1758
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including ‘SVAMAAN’ and ‘SAMMAAN’ as their names, marks,
promotional phrases or a part thereof. In support of its above contention, the
defendant no.2 has provided a list of schemes/ programs launched by banks/
Central and State Governments in India, which is set out hereinbelow:
a. Pradhan Mantri Kisan Sammaan Nidhi Scheme by Government of
India
b. Mahila Sammaan Savings Certificate Scheme by Government of India
c. Maiya Sammaan Yojana by Government of Jharkhand
d. Swabhimaan – State Financial Inclusion Plan by Government of India
e. Swabhimaan program for financial literacy launched by Rang De
70. I am unable to agree with the aforesaid submission. The schemes/
programs listed above, as rightly pointed out by the plaintiff, are government
welfare schemes and do not constitute the business of finance and lending.
Therefore, any use thereof cannot qualify to be use as a ‘trade mark’ within
the meaning of Section 2(1)(zb) of the Trade Marks Act, 1999.
71. The defendant no.2 has also failed show if any of the schemes/
programs listed above is in relation to granting loans. Therefore, the words
‘SAMMAAN’ or ‘SVAMAAN’ cannot be said to have become common to
the business of granting loans.
DELAY AND LACHES
72. The defendants have also contended that there has been a delay on the
part of the plaintiff in bringing the present suit as the plaintiff was admittedly
aware about their intention to adopt the mark ‘SAMMAAN CAPITAL’ at least
since November 2023, however, it instituted the present suit only in October
2024, i.e., after nearly a year.
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73. In Midas Hygiene Industries v. Sudhir Bhatia20, the Supreme Court
has held that in an action for infringement of trade mark, mere delay in
instituting the suit is not sufficient to deny the relief of injunction. The
relevant extract from the aforesaid judgment is set out below:
“5. The law on the subject is well settled. In cases of
infringement either of trade mark or of copyright, normally an
injunction must follow. Mere delay in bringing action is not
sufficient to defeat grant of injunction in such cases. The grant
of injunction also becomes necessary if it prima facie appears
that the adoption of the mark was itself dishonest.”
[Emphasis is mine]
74. In Hindustan Pencils v. India Stationery Products21, it has been
observed if the defendant uses an identical/ deceptively similar mark with the
knowledge about the plaintiff’s rights in its prior trademarks, the relief of
injunction, including an injunction at the interim stage, cannot be denied even
if there is an inordinate delay on the part of the plaintiff in taking action
against the defendant.
75. The aforesaid observations in Midas (supra) and Hindustan Pencils
(supra) are fully applicable in the present case. The plaintiff, as soon as it
became aware of the defendant no.1’s intention to adopt the name
‘SAMMAAN CAPITAL’, sent a legal notice to the defendant no.1 on 20th
November, 2023. The issuance of legal notice by the plaintiff itself clearly
communicated that it did not intend to permit the defendants to adopt and use
the SAMMAAN-formative corporate names and trademarks.
20
(2004) 3 SCC 90
21
1989 SCC OnLine Del 34
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76. In its interim reply to the aforesaid legal notice on 8th December, 2023,
while denying the contents of the said notice, the defendant no.1 stated that
‘SAMMAAN CAPITAL’ is proposed to be used as its corporate name.
77. Despite taking the aforesaid stand, the defendant no.1 applied for
registration of the SAMMAAN marks between February 2024 and May 2024.
78. Not only did the plaintiff send the aforesaid legal notice to the
defendant no.1, but it also sent emails to RoC and RBI calling upon them not
to grant registration to the defendants under the name incorporating the word
‘SAMMAAN’ on the ground that the same is deceptively similar to its
SVAMAAN marks.
79. Further, when the plaintiff came to know that the defendants no.1 and
2 have got approvals for their SAMMAAN-formative corporate names from
RoC, it immediately filed applications under Section 16(1)(b) of the
Companies Act, 2013 and intimated RBI and SEBI regarding the same. It also
filed notice of opposition against the trade mark application for the mark
‘SAMMAAN CAPITAL’ filed by the defendant no.1.
80. The defendants have placed reliance on the judgment in the case of
Intex Technologies v. AZ Tech22 wherein the plaintiff, without any plausible
explanation, filed the suit belatedly and allowed the defendant’s business to
grow. The plaintiff therein did not even issue a cease-and-desist notice to the
defendant therein prior to the institution of the suit. The Division Bench in the
aforesaid backdrop observed that an improper and unexplained delay in
instituting the suit allowing the defendant to build a large trade is fatal to an
application for an interlocutory injunction.
22
2017 SCC OnLine Del 7392
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81. In the facts and circumstances of the present case, the defendants’
reliance on the aforesaid judgment is misplaced as there is no improper or
unexplained delay in instituting the present suit. It cannot be said that the
plaintiff slept over its rights at any stage. The plaintiff, in fact, took prompt
actions and every possible corrective measure to prevent the defendants from
adopting and using the SAMMAAN-formative corporate names and
trademarks, including issuance of a cease-and-desist notice.
82. Therefore, in my considered view, it cannot be said that there was any
delay or laches on behalf of the plaintiff. In any event, the adoption of the
SAMMAAN marks by the defendants despite the plaintiff’s legal notice was
not bona fide and therefore disentitles them to take the defence of delay.
REGULATORY APPROVALS OBTAINED BY THE DEFENDANTS AND THEIR
AFFECT
83. It has also been contended on behalf of the defendants that the plaintiff
has raised the very same objections in the present suit which were raised
before the regulatory authorities such as RBI and RoC and the same have
already been rejected by the aforesaid authorities.
84. I do not find merit in the aforesaid submissions. The mandate of
determining infringement of trademarks is vested in a civil court. It, therefore,
cannot be argued that any decision taken by the aforesaid bodies with regard
to identity/ similarity between two marks would be binding on a civil court.
85. In K.G. Khosla Compressors v. Khosla Extrakting23, a Coordinate
Bench of this Court has observed that jurisdiction under the Companies Act,
2013 and the jurisdiction of civil courts operate in different fields. While
exercising jurisdiction under the Companies Act, 2013, the competent
23
1985 SCC Online Del 232
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authorities must act in terms of the guidelines laid down therein. There is no
such restriction or limitation on the exercise of the jurisdiction by a civil court.
86. It is also to be noted that RBI granted the Certificates of Registration to
the defendants no.1 and 2 upon an undertaking on their behalf that while
changing their corporate names, they have neither infringed nor will they
infringe the plaintiff’s registered trademarks under Section 29 of the Trade
Marks Act, 1999. Therefore, there has not been any adjudication whatsoever
by RBI regarding infringement of the plaintiff’s trademarks.
BALANCE OF CONVENIENCE
87. On behalf of the defendants, it has been strongly contended that the
plaintiff has failed to satisfy the criteria of balance of convenience in order to
be granted a relief of interim injunction. It is stated that the defendants have
obtained all regulatory approvals including the fresh certificates of
incorporation, GST registration certificates, RBI registration certificates and/
or NSE/ BSE registrations pursuant to their name change incorporating the
word ‘SAMMAAN’. Further, the defendants have also spent huge amount
towards advertising and promotion of the SAMMAAN marks and therefore
the balance of convenience would be in their favour and against the grant of
interim injunction.
88. The plaintiff has been commercially using the SVAMAAN marks at
least since 2019. Since the defendants have been using their old names at least
till June 2024 (pages 104-105 and 111-112 of the documents filed by the
defendants no.1, 3 and 4) and started advertising the SAMMAAN marks only
with effect from July 2024, clearly, they cannot claim to have acquired
goodwill and reputation in the said marks.
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89. The plaintiff had objected to the defendants’ adoption and use of the
SAMMAAN marks at every stage. Despite the same, the defendants went
ahead and adopted the SAMMAAN marks.
90. It is evident from the documents filed by the defendants no.1, 3 and 4
along with their reply that they received their fresh certificates of
incorporation only in or after May 2024 and incurred expenses on advertising
and promotional activities only since July 2024. Despite having been put to
notice and objections taken/ opposition filed by the plaintiff before RBI/ MCA
and the Trade Marks Registry, if the defendants still went ahead and spent
huge monies in advertising and promoting their SAMMAAN marks, it would
have to be at their own risk and peril.
91. Therefore, in my considered view, the plaintiff cannot be denied grant
of an interim injunction in its favour on the ground of balance of convenience.
CONCLUSION
92. In view of the aforesaid discussion, a prima facie case of infringement
is made out in favour of the plaintiff as the impugned mark ‘SAMMAAN’ is
deceptively similar to the plaintiff’s SVAMAAN marks and the competing
marks are used by the parties in relation to identical services, i.e., for granting
loans, which is likely to cause confusion in the market.
93. Balance of convenience is also in favour of the plaintiff and against the
defendants as any use of the deceptively similar marks ‘SAMMAAN’,
‘SAMMAAN CAPITAL’ and other word/ device marks containing the word
‘SAMMAAN’ is likely to cause confusion in the minds of the consumer. The
plaintiff shall continue to suffer irreparable loss, harm and injury if the
defendants are permitted to carry on their businesses under the impugned
marks.
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94. Accordingly, the defendants, their owners, proprietors, partners,
directors, shareholders, officers, servants, affiliates, associates, subsidiaries
and all others acting for and on their behalf are restrained from, directly or
indirectly, adopting, using, advertising, depicting or displaying in the course
of trade, in any manner, any mark/ name identical or deceptively similar to
the plaintiff’s SVAMAAN marks including the marks ‘SAMMAAN’,
‘SAMMAAN CAPITAL’, any other word/ device marks containing the word
‘SAMMAAN’ or any other deceptively similar trade mark or variant thereof,
including the domain name www.sammaancapital.com, till the final
adjudication of the suit.
95. Needless to state, any observations made herein are only for the
purposes of adjudication of the present application and would have no bearing
on the final outcome of the suit.
96. The present application stands disposed of in above terms.
CS(COMM) 871/2024
97. List before Joint Registrar on 27th March, 2025 for completion of
pleadings.
AMIT BANSAL
(JUDGE)
FEBRUARY 10, 2025
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