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Delhi High Court
Fdc Limited vs Palsons Derma Private Limited on 15 April, 2025
Author: Amit Bansal
Bench: Amit Bansal
$~17
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 15th April, 2025
I.A. 13241/2023
IN
+ CS(COMM) 487/2023
FDC LIMITED .....Plaintiff
Through: Mr. Prithvi Singh, Advocate.
versus
PALSONS DERMA PRIVATE LIMITED .....Defendant
Through: Mr. Mohan Vidhani, Mr. Saurabh
Kumar, Ms. Mokshita Gautam, Ms.
Nidhi Pandey and Ms. Urvashi Arora,
Advocates.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
AMIT BANSAL, J. (Oral)
1. Since 14th April 2025 was declared a Court holiday, the matters listed
on 14th April 2025 are being taken up today, i.e. 15th April 2025.
I.A. 13241/2023 (under Order XXXIX Rules 1 and 2 of the Code of Civil
Procedure, 1908)
2. 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 defendant.
3. Summons in the present suit and notice in the application for interim
injunction were issued and accepted on behalf the defendant in Court on 21st
July 2023.
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4. Pleadings in the suit stand completed. Written submissions have been
filed on behalf of the parties and submissions were heard on behalf of counsel
for the parties on 17th February 2025 and 26th March 2025.
CASE SET UP IN THE PLAINT
5. The case set up by the plaintiff in the plaint is as under:
5.1. The plaintiff, incorporated in 1940, started its operations with
marketing vitamins and a range of prescription formulations. The plaintiff has
a distinct presence in numerous therapeutic segments including
dermatological formulations under various trade marks including the mark
KROMALITE.
5.2. The plaintiff trades in over 300 products in India and exports several of
them to over 50 countries. The plaintiff’s annual revenue in 2022-23 in India
was Rs. 1,777.03 crores.
5.3. The plaintiff adopted the mark KROMALITE in December 2014. The
plaintiff is the owner and proprietor of the mark KROMALITE and uses the
same in relation to skin brightening creams. The plaintiff’s products under the
mark KROMALITE were commercially launched in April 2016 and have
been continuously and openly available in the market since then.
5.4. The mark KROMALITE is a coined term neither having any dictionary
meaning nor used in the pharmaceutical industry/ medical literature.
5.5. The plaintiff’s extensive distribution network ensures that its products
under the mark KROMALITE are widely available across India including at
leading e-commerce pharmacy stores such as PharmEasy, 1mg, Apollo
Pharmacy, NetMeds, etc. Further, all online references to the term
KROMALITE relate to the plaintiff and no one else.
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5.6. The plaintiff has done substantial business in relation to its products
under the mark KROMALITE. The plaintiff’s audited sales figures since the
financial year 2016-17 to 2022-23 are given as under:
Financial Year Net Sales (in Rs.)
2016-17 1,74,64,579/-
2017-18 1,57,91,416/-
2018-19 1,39,40,462/-
2019-20 1,39,92,513/-
2020-21 1,12,03,855/-
2021-22 98,39,585/-
2022-23 1,18,60,165/-
5.7. As a result of the tremendous sales and advertisement and promotional
activities undertaken by the plaintiff, the mark KROMALITE is associated by
the members of public and trade including dermatologists, chemists, etc. with
the plaintiff alone.
5.8. The plaintiff has registered the mark KROMALITE in class 5 on 23rd
December 2014 with respect to ‘medicinal, pharmaceutical and veterinary
preparations’. The plaintiff has also filed a trade mark application on 13th
March 2023 bearing no. 5845334 for the mark KROMALITE in class 3 in
relation to ‘cosmetic products, toiletries, skincare preparations, body cleaning
and beauty care preparations’ with a user claim since 25th April 2016. The
aforesaid application is currently pending registration.
5.9. In January 2023, the plaintiff came across the defendant’s registrations
for the mark CHROMALITE (hereinafter ‘impugned mark’), with effect fromSignature Not Verified
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26th December 2016 on a ‘proposed to be used’ basis, in classes 3 and 5 and
its products under the impugned mark on e-commerce platforms.
5.10. The plaintiff issued a cease-and-desist notice to the defendant on 13th
January 2023. However, it did not receive any reply from the defendant. The
plaintiff has also filed rectification applications against the defendant’s
registration for the impugned mark on 25th January 2023 before the Trade
Marks Registry, Kolkata and the defendant has failed to file its counter
statements within the statutory timeline.
5.11. Accordingly, the present suit was instituted by the plaintiff.
CASE SET UP IN THE WRITTEN STATEMENT
6. The case set up by the defendant in the written statement is as under:
6.1. The defendant, incorporated in 2008, is among the first few upcoming
pharmaceutical companies in India that have launched their skincare line with
absolute dermatologically tested products. The defendant adopted the mark
FAIRLITE in 2010 and launched products thereunder in 2014.
6.2. The defendant was unaware about the existence of the plaintiff’s
products under the mark KROMALITE and independently and honestly
adopted the impugned mark in 2016 in relation to skin lightening creams from
a GREEK word CHROMA which translates to ‘colour’ and LITE, shortened
for ‘lighten’.
6.3. The defendant launched its products under the impugned mark in
September 2022 after huge pressure from the practitioners, sellers,
dermatologists and consumers as there was a social uproar against the use of
the word FAIR in the cosmetics industry. The defendant, on its social media
profiles and all sale points, announced that it has switched from the mark
FAIRLITE to the impugned mark in relation to the impugned products.
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6.4. The defendant has five stock keeping units (SKUs) under the impugned
mark which come under tube/ spray pump bottle/ serum bottle formats.
6.5. The defendant, owing to huge expenditure incurred in advertisement
and promotion and voluminous sales, has high goodwill and reputation under
the impugned mark and need not trade upon the goodwill and reputation of
anyone else.
6.6. The defendant did not have any knowledge of the legal notice issued to
it by the plaintiff until the present suit as the same was not sent to its official
email address and thus the same could not be replied with. The email
[email protected], on which the plaintiff sent the legal notice to
the defendant, is seldom used by the defendant.
SUBMISSIONS ON BEHALF OF THE PLAINTIFF
7. Mr. Prithvi Singh, counsel appearing on behalf of the plaintiff, has
made the following submissions:
7.1. The plaintiff adopted the mark KROMALITE in December 2014 and
commercially launched its products in April 2016. On the other hand, the
defendant admittedly adopted the impugned mark in December 2016 and
commenced using the same in September 2022. Therefore, the plaintiff is the
prior adopter and user of the mark KROMALITE.
7.2. The defendant has dishonestly adopted the impugned mark, which is
phonetically identical with and structurally and visually similar to the
plaintiff’s mark KROMALITE, and is using the same in relation to identical
goods aimed at depigmentation and skin lightening.
7.3. Prior to using the impugned mark and packaging, the defendant was
selling the impugned products under the mark FAIRLITE in brown packaging
with FAIRLITE written in silver colour.
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7.4. The defendant deliberately changed its mark from FAIRLITE to the
impugned mark and adopted white and gold/ orange packaging, which is
similar to that of the plaintiff. This is liable to cause confusion among the
consumers who are likely to believe that the defendant’s products under the
impugned mark originate from the plaintiff.
7.5. The defendant ought to have known about the plaintiff’s products under
the mark KROMALITE prior to launching its products under the impugned
mark. Therefore, the defendant mala fidely adopted the impugned mark to ride
over the goodwill and reputation of the plaintiff and its use of the impugned
mark in relation to the impugned products amounts to infringement and
passing off.
SUBMISSIONS ON BEHALF OF THE DEFENDANT
8. Mr. Mohan Vidhani, counsel appearing on behalf of the defendant, has
made the following submissions:
8.1. The impugned mark is distinctive and dissimilar to the plaintiff’s mark
and the defendant’s trade dress/ packaging has a distinct geometrical signature
pattern (double helix) in a distinctive and distinguished colour scheme and is
different from that of the plaintiff’s products. Further, the impugned mark is
always used by the defendant along with suffixes such as day cream, NITE
cream, face wash, toner and serum.
8.2. The defendant is the registered proprietor of the impugned mark in
classes 3 and 5 respectively whereas the plaintiff has no registration for the
mark KROMALITE in class 3. Therefore, a suit for infringement does not lie
against the defendant.
8.3. The defendant’s goods are sold in medical stores by chemists and on
prescription. A chemist is a person skilled in the art and can easily distinguish
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between the rival marks and hence unwary consumers with imperfect
recollection are not likely to get confused or be deceived. Further, the
defendant’s products under the impugned mark are sold at a higher price
therefore it cannot be said to be passing off its goods as those of the plaintiff.
8.4. The plaintiff’s mark KROMALITE did not have any goodwill or
reputation at the time when the defendant adopted the impugned mark. In fact,
the plaintiff’s sale of its products under the mark KROMALITE is limited to
the city of Aurangabad, Maharashtra. On the other hand, the defendant has
high goodwill and reputation under the impugned mark. Resultantly, members
of the relevant trade channels and consumers associate the impugned mark
with the defendant.
8.5. The plaintiff has indulged in forum shopping as neither the plaintiff nor
the defendant resides within the territorial jurisdiction of this Court.
8.6. There are several CHROMA/ CHROMA-formative trade marks in the
Register of Trade Marks in classes 3 and 5.
8.7. The plaintiff cannot claim to be unaware about the defendant’s products
under the impugned mark until January 2023 as the parties have common sale
counters. Therefore, the present suit is suffering from delay, latches and
acquiescence and is liable to be dismissed.
ANALYSIS AND FINDINGS
9. I have perused the material on record and heard the submissions made
on behalf of the parties.
10. The present suit has been filed by the plaintiff seeking reliefs against
the defendant for infringement as well as passing off. The defendant is the
registered proprietor of the impugned mark in classes 3 and 5 and it is well
settled that a suit for infringement does not lie against a registered proprietor.
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However, a passing off action, within the meaning and scope of Section 27(2)
of the Trade Marks Act, 1999 (hereinafter ‘Act’), is maintainable despite
registration(s) in favour of the defendant. A reference in this regard may be
made to the judgment of the Supreme Court in S. Syed Mohideen v. P.
Sulochana Bai1, wherein the Supreme Court has held that the rights of a prior
user are superior to the rights of a subsequent user irrespective of trade mark
registration(s) in favour of the subsequent user. The relevant observations of
the Supreme Court in Syed Mohideen (supra) are set out below:
“31. Secondly, there are other additional reasonings as to why the passing off
rights are considered to be superior than that of registration rights.
31.1. Traditionally, passing off in common law is considered to be a right
for protection of goodwill in the business against misrepresentation
caused in the course of trade and for prevention of resultant damage on
account of the said misrepresentation. The three ingredients of passing off
are goodwill, misrepresentation and damage. These ingredients are
considered to be classical trinity under the law of passing off as per the
speech of Lord Oliver laid down in Reckitt & Colman Products
Ltd. v. Borden Inc. [Reckitt & Colman Products Ltd. v. Borden Inc., (1990)
1 WLR 491 : (1990) 1 All ER 873 (HL)] which is more popularly known as
“Jif Lemon” case wherein Lord Oliver reduced the five guidelines laid out
by Lord Diplock in Erven Warnink Besloten Vennootschap v. J. Townend &
Sons (Hull) Ltd. [Erven Warnink Besloten Vennootschap v. J. Townend &
Sons (Hull) Ltd., 1979 AC 731 at p. 742 : (1979) 3 WLR 68 : (1979) 2 All
ER 927 (HL)] (“the Advocaat case”) to three elements: (1) goodwill owned
by a trader, (2) misrepresentation, and (3) damage to goodwill. Thus, the
passing off action is essentially an action in deceit where the common law
rule is that no person is entitled to carry on his or her business on pretext
that the said business is of that of another. This Court has given its
imprimatur to the above principle in Laxmikant V. Patel v. Chetanbhai
Shah [Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65].
31.2. The applicability of the said principle can be seen as to which
proprietor has generated the goodwill by way of use of the mark/name in
the business. The use of the mark/carrying on business under the name
confers the rights in favour of the person and generates goodwill in the1
(2016) 2 SCC 683Signature Not Verified
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market. Accordingly, the latter user of the mark/name or in the business
cannot misrepresent his business as that of business of the prior right holder.
That is the reason why essentially the prior user is considered to be
superior than that of any other rights. Consequently, the examination of
rights in common law which are based on goodwill, misrepresentation and
damage are independent to that of registered rights. The mere fact that
both prior user and subsequent user are registered proprietors are
irrelevant for the purposes of examining who generated the goodwill first
in the market and whether the latter user is causing misrepresentation in
the course of trade and damaging the goodwill and reputation of the prior
right holder/former user. That is the additional reasoning that the statutory
rights must pave the way for common law rights of passing off.”
[Emphasis supplied]
11. The Supreme Court, in the aforesaid decision, affirmed that the remedy
of passing off is broader in its ambit than infringement. The factors to be
established to make out a case for passing off are three-fold, i.e., goodwill and
reputation attained by the plaintiff, misrepresentation by the defendant and
the damage caused to the plaintiff’s goodwill and reputation by the acts of the
defendant. The fact that both the ‘prior user’ and the ‘subsequent user’ are
registered proprietors of their respective trade marks shall be irrelevant while
deciding a passing off suit.
12. The judgement in Syed Mohideen (supra) was also followed recently
by the Division Bench of this court in Wipro Enterprises v. Himalaya
Wellness2.
13. The plaintiff has been using the mark KROMALITE in relation to skin
brightening creams since April 2016. This is evidenced by the plaintiff’s
invoices for its products under the mark KROMALITE (pages 40-64 of the
documents filed with the plaint). The plaintiff’s user claim since April 2016
has also not been denied by the defendant (refer paragraph no.6 at page 12
2
2024 SCC OnLine Del 6859
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of the written statement). On the other hand, the defendant admittedly
launched the impugned products under the impugned mark in September 2022
(refer paragraph no.12 at page 14 of the written statement). It is therefore
undisputed that the plaintiff is the prior user of the mark KROMALITE in
relation to its products.
14. The plaintiff has been continuously using the mark KROMALITE since
April 2016 and made its products thereunder widely available across India
including at leading e-commerce pharmacy stores. The plaintiff has also given
its sales figures, supported by a CA Certificate, for the financial years 2016-
17 to 2022-23, which show that the sales figures of the plaintiff under the
mark KROMALITE are significant. By virtue of the aforesaid, in my prima
facie view, the plaintiff has established its goodwill and reputation in the
market under the mark KROMALITE.
15. Mr. Vidhani contends that the plaintiff did not have any goodwill or
reputation in the mark KROMALITE at the time when the impugned mark
was adopted by the defendant. However, it is trite law that goodwill and
reputation need to be established prior to the date when the defendant started
using the impugned mark and not when the same was adopted by it. By the
time the defendant commenced use of the impugned mark in September 2022,
the plaintiff’s products under the mark KROMALITE had been in the market
for over six years.
16. In Cadila Health Care v. Cadila Pharmaceuticals3, the Supreme Court
laid down the following tests for determining deceptive similarity between the
3
(2001) 5 SCC 73
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competing marks. The relevant extract from the aforesaid judgment is set out
below:
“35. Broadly stated, in an action for passing-off on the basis of unregistered
trade mark generally for deciding the question of deceptive similarity the
following factors are to be considered:
(a) The nature of the marks i.e. whether the marks are word marks or label
marks or composite marks i.e. both words and label works.
(b) The degree of resemblance between the marks, phonetically similar
and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods
of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the
marks they require, on their education and intelligence and a degree of
care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the extent
of dissimilarity between the competing marks.”
[Emphasis supplied]
17. At this stage, it is relevant to compare the competing marks and the
trade dress of the competing products, which are reproduced as under:
Plaintiff’s mark/ trade dress Defendant’s mark/ trade
dress
KROMALITE CHROMALITESignature Not Verified
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18. Plainly, the impugned mark CHROMALITE used by the defendant is
phonetically identical and structurally similar to the plaintiff’s mark
KROMALITE. Only the letter ‘K’ has been replaced with the letters ‘CH’ in
the impugned mark which, in fact, does not make any difference in the
pronunciation of competing marks.
19. Mr. Vidhani submits that the impugned mark is always used by the
defendant along with suffixes such as day cream, NITE cream, face wash,
toner and serum. I do not find any merit in the aforesaid submission as these
suffixes are descriptive in nature and would not render the impugned mark
distinct and dissimilar to the plaintiff’s mark KROMALITE. Pertinently, the
defendant has also obtained registrations for the impugned mark without any
of the aforesaid suffixes.
20. In view of the phonetic identity and structural similarity between the
competing marks KROMALITE and CHROMALITE, the added geometrical
element of double helix in the packaging of the impugned products is also
irrelevant and does not distinguish the competing goods. Reference in this
regard may be made to the judgment of the Supreme Court in Kaviraj Pandit
Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories4, which was
followed by me in Mayo Foundation for Medical Education & Research v.
Bodhisatva Charitable Trust5 and Himalaya Wellness v. Wipro Enterprises6.
21. Both the plaintiff and the defendant use their respective marks in
relation to cosmetic products. Even though the impugned products of the
defendant include product SKUs such as facewash, toner and serums under
4
1964 SCC OnLine SC 14
5
2023 SCC OnLine Del 3241
6
2023 SCC Online Del 4035
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tube/ spray pump bottle/ serum bottle formats as opposed to the plaintiff
whose only product SKU comes in a tube format, all the competing products
are targeted at skin brightening and depigmentation. Therefore, the competing
products are identical and overlapping with each other. It is also admitted on
behalf of the defendant that the parties have common sale counters making
the trade channels of the parties also identical/ overlapping (refer paragraph
no.19 at page 23 of the written statement).
22. Mr. Vidhani further contends that the impugned products are sold only
on prescription and by chemists, who can easily distinguish between the rival
marks. Therefore, there is no likelihood of confusion among the average
consumers having imperfect recollection.
23. I am unable to accept this submission made on behalf of the defendant
as the impugned products are freely available on e-commerce platforms where
a purchase can be made for the impugned products by any person without a
prescription. This is evident from the sample purchase made by the plaintiff’s
representative for the impugned product on Flipkart.
24. Counsel for the defendant contends that the defendant was previously
using the mark FAIRLITE and switched therefrom to the impugned mark. He
further submits that the defendant’s adoption of the impugned mark is bona
fide as the defendant was not aware of the plaintiff’s products under the mark
KROMALITE and therefore an injunction against the defendant should not
be granted.
25. It cannot be disputed that the defendant was reckless in launching the
impugned products under the impugned mark as it did not carry out any due
diligence prior to its adoption. The defendant was expected to search for
conflicting marks on the Register of Trade Marks and should have done a
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market survey before adopting and commencing use of the impugned mark.
A simple due diligence exercise conducted by the defendant would have
informed it about the existence of the plaintiff’s products under the mark
KROMALITE. Reference in this regard may be made to my judgement in
Himalaya Wellness (supra), a case involving identical trade marks in respect
of cosmetic products, wherein, under similar circumstances, I had made the
following observations:
“66. It is intriguing for me as to why a reputed company such as the defendant
company would launch its product, also pertaining to female reproductive
hygiene, almost 22 years later, using the identical trade mark as that of the
plaintiffs. A simple due diligence exercise conducted on behalf of the
defendant would have informed the defendant about the existence of the
product of the plaintiffs with an identical trade mark. A google search or a
Trade Mark Registry search across various classes would have brought to
light the registered mark of the plaintiffs.
67. The reply of the defendant only indicates that the defendant conducted a
search only in Class 3 and found that there was no other registered pending
application in respect of mark “EVECARE”. It is not the case of the defendant
that they conducted a trade the mark search and came across the registration
of the plaintiffs under Class 5 and yet decided to adopt the identical trade
mark in respect of their product, which was under Class 3. Nor is it the case
that took a legal opinion before adopting an identical trade mark. The
defendant company is not a small time operator. It is a company with ample
resources and surely, resources.”
[Emphasis supplied]
26. The judgement in Himalaya Wellness (supra) has been upheld by the
Division Bench7.
27. In any event, the defence of innocent adoption is an irrelevant
consideration. Reference in this regard may be made to the decision in a
passing off action in Laxmikant V. Patel v. Chetanbhai Shah8, wherein the
Supreme Court made the following observations:
7
Wipro Enterprises v. Himalaya Wellness, 2024 SCC OnLine Del 6859
8
(2002) 3 SCC 65Signature Not Verified
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“8. …An action for passing-off will then lie wherever the defendant company’s
name, or its intended name, is calculated to deceive, and so to divert business
from the plaintiff, or to occasion a confusion between the two businesses. If this
is not made out there is no case. The ground is not to be limited to the date of
the proceedings; the court will have regard to the way in which the business
may be carried on in the future, and to its not being carried on precisely as
carried on at the date of the proceedings. Where there is probability of
confusion in business, an injunction will be granted even though the
defendants adopted the name innocently.
*** ***
***
10. A person may sell his goods or deliver his services such as in case of a
profession under a trading name or style. With the lapse of time such business
or services associated with a person acquire a reputation or goodwill which
becomes a property which is protected by Courts. A competitor initiating sale
of goods or services in the same name or by initiating that name results in injury
to the business of one who has the property in that name. The law does not
permit any one to carry on his business in such a way as would persuade the
customers or clients in believing that the goods or services belonging to
someone else are his or are associated therewith. It does not matter whether
the latter person does so fraudulently or otherwise. The reasons are two.
Firstly, honesty and fair play are, and ought to be, the basic policies in the
world of business. Secondly, when a person adopts or intends to adopt a name
in connection with his business or services which already belongs to someone
else it results in confusion and has propensity of diverting the customers and
clients of someone else to himself and thereby resulting in injury.”
[Emphasis supplied]
28. On behalf of the defendant, reliance has also been placed on various
CHROMA/ CHROMA-formative marks in classes 3 and 5 pre-existing in the
Register of Trade Marks. However, as rightly pointed out by counsel for the
plaintiff, the defendant has failed to show any commercial use of these marks,
especially in relation to identical/ similar goods, or that these marks have the
same degree of similarity as the impugned mark. The plaintiff’s mark
KROMALITE is a coined term and deserves the highest degree of protection.
29. To conclude, in my prima facie view, the competing marks are
phonetically identical and structurally similar and are used by the parties in
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relation to identical goods having identical and overlapping trade channels,
which is likely to cause confusion and deception among the consumers who
are ordinary persons of average intelligence and imperfect recollection.
30. Factors such as the defendant’s alleged goodwill and reputation under
the impugned mark and higher pricing of the impugned products under the
impugned mark as compared to those of the plaintiff under the mark
KROMALITE are irrelevant in deciding the present application.
Nevertheless, the defendant has failed to establish its alleged turnover under
the impugned mark for the period between October 2022 and June 2023 by
way of any documentary evidence. The CA Certificate filed on behalf of the
defendant vide index dated 24th March 2025, which is yet to be taken on
record, is irrelevant as the same is for the period subsequent to filing of the
present suit.
31. Counsel for the defendant places reliance on the judgment passed by
me in Vasundhra Jewellers v. Vasundhara Fashion Jewelry9. In the said
case, the defendant commenced using the impugned mark, which was her own
name, in 2001 and the plaintiff therein could not establish its goodwill and
reputation in the said year. Therefore, the aforesaid judgment does not apply
to the facts and circumstances of the present case.
32. Reliance on behalf of the defendant has also been placed on FDC v.
Faraway Foods10 wherein the competing marks were ‘MUMMUM’ and ‘The
MUMUM Co … very very very real’. A Coordinate Bench of this Court, in
the aforesaid case, denied granting an interim injunction in favour of the
plaintiff on the grounds that the competing marks are not deceptively similar
9
2023 SCC OnLine Del 4185
10
2021 SCC OnLine Del 1539
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and that the target customers of the rival parties are different. These
observations are not applicable to the facts and circumstances of the present
suit, therefore, the aforesaid judgment relied upon by counsel for the
defendant is also distinguishable.
33. Counsel for the defendant contends that the plaintiff does not have any
goodwill or reputation under the mark KROMALITE. He places reliance on
Ajanta Pharma v. Zuventus Healthcare11 in support of his contention
wherein an interim injunction in favour of the plaintiff was denied. However,
in the aforesaid case, the plaintiff was not doing any business in India and thus
had no corresponding goodwill in India, which is not the case in the present
suit.
34. Counsel for the defendant has also raised objections that the plaintiff
has engaged in forum shopping and is guilty of delay and latches in instituting
the present suit.
35. In my opinion, both these objections raised on behalf of the defendant
are devoid of merits. The plaintiff’s representative made a purchase for the
impugned product under the impugned mark from Flipkart and the impugned
product was delivered at the address of the plaintiff’s representative in Delhi.
Further, the impugned products continue to be listed on e-commerce platforms
and are available for sale all across the country. Therefore, on a prima facie
view, this court has the territorial jurisdiction to try and adjudicate the present
suit.
36. The defendant admittedly launched its products under the impugned
mark in September 2022. Soon thereafter, i.e. in January 2023, the plaintiff,
11
2020 SCC OnLine Del 2478
Signature Not Verified
Digitally Signed
By:DHARMENDER SINGH CS(COMM) 487/2023 Page 17 of 19
Signing Date:15.04.2025
14:48:34
upon having knowledge about the impugned products under the impugned
mark, issued a cease-and-desist notice to the defendant and filed rectification
applications against the defendant’s registrations for the impugned mark in
classes 3 and 5. However, neither did the defendant reply to the aforesaid
notice nor a counter statement was filed by it within the prescribed time.
Thereafter, the present suit was instituted in July 2023. Therefore, the plaintiff
also cannot be held guilty of delay and latches in instituting the present suit.
37. In view of the discussion above, a prima facie case of passing off is
made out on behalf of the plaintiff in its favour. The balance of convenience
is also in favour of the plaintiff and against the defendant inasmuch as the
plaintiff has been using the mark KROMALITE since April 2016 whereas the
defendant has admittedly launched its products under the impugned mark only
in September 2022. The plaintiff shall continue to suffer irreparable loss, harm
and injury if the defendant is permitted to carry on its business under the
impugned mark.
38. Accordingly, I.A. 13241/2023 filed on behalf of the plaintiff is allowed
and the defendant and all others acting in active concert with it are restrained
from manufacturing, marketing, offering for sale, selling, advertising, directly
or indirectly dealing in the impugned products or any other similar product
under the mark CHROMALITE or any other mark identical with or
deceptively similar to the plaintiff’s mark KROMALITE in any manner
whatsoever, till the final adjudication of the suit.
39. Needless to say, any observations made herein are only for the purpose
of adjudication of the aforesaid application and would have no bearing on the
final outcome of the present suit.
Signature Not Verified
Digitally Signed
By:DHARMENDER SINGH CS(COMM) 487/2023 Page 18 of 19
Signing Date:15.04.2025
14:48:34
CS(COMM) 487/2023
40. List before the Joint Registrar on 16th May 2025 for admission and
denial of documents.
AMIT BANSAL, J
APRIL 15, 2025
Vivek/-
Signature Not Verified
Digitally Signed
By:DHARMENDER SINGH CS(COMM) 487/2023 Page 19 of 19
Signing Date:15.04.2025
14:48:34
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