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Relaxo Footwears Limited v/s XS Brands Consultancy Private Limited & Others

    CS. (COMM). No. 917 of 2018 & IAs. No. 7650 of 2018 (u/O XXXIX R-1&2 CPC), 11487 of 2018 (of D-1&3 u/O XI R-1(4) CPC), 11515 of 2018 (of D-2 u/O I R-10 CPC), 11516 of 2018 (of D-5 u/O I R-10 CPC), 16352 of 2018 (of D-2 u/O VIII R-1 CPC), 16353 of 2018 (of D-5 u/O VIII R-1 CPC) & 187 of 2019 (for modification of order dated 5th October, 2018)

    Decided On, 11 March 2019

    At, High Court of Delhi

    By, THE HONOURABLE MR. JUSTICE RAJIV SAHAI ENDLAW

    For the Plaintiff: Saif Khan, Shobhit Agarwal, Ayush Sahay, Akshay Agarwal, Advocates. For the Defendants: C.M. Lall, Sr. Advocate, Ankur Sangal, Pragya Mishra, Advocates.



Judgment Text

I.A.No.2219/2019 of the plaintiff under Order VI Rule 17 of the CPC

1. Plaintiff seeks to enhance the valuation of the present suit for the purpose of court fee and jurisdiction.

2. The senior counsel for the defendants, under instructions, has no objection.

3. The application is allowed and is disposed of.

I.A.No.187/2019 of the plaintiff under Section 151 CPC for recall/modification of the order dated 5th October, 2018

4. This order is in continuance of the earlier order dated 10th January, 2019 on this application.

5. The senior counsel for the defendants has been further heard.

6. The defendant No.4 filed I.A. No.11649/2018 under Order 1 Rule 10 of the CPC for deletion from the array of the defendants in this suit for permanent injunction restraining passing off, infringement of copyright, etc. by the defendants of the mark/device “IMAGE” of the plaintiff, by adopting the mark/device “IMAGE” for marketing their goods through the brand “IMAGE”.

7. It was pleaded in the said application (i) that the defendant no.4 is just an actor, who is promoting the brand “HRX” and has some shareholding in the defendant no.1 company; the defendant No.4 however has no role to play in the defendant no.1 company and has no role in the day to day functioning of the defendant no.1 and does not undertake any actions in his personal capacity qua the defendant no.1 company which would render him individually liable in the present suit; (ii) that the averments in the plaint also are against the defendants no.1 to 3 only and not against defendant no.4; and, (iii) that all the applications for registration of the trademark have also been filed by the defendant no.1 and defendant no.4 has no relation to the said mark.

8. The senior counsel for the defendants, on 5th October, 2018, stated that the defendant no.4 “was only endorsing the brand and has no ownership interest in the impugned brand.”

9. In view of the said statement of the senior counsel for the defendants, the counsel for the plaintiff gave his no objection to the deletion of defendant no.4 subject to filing of an affidavit of defendant no.4 in this regard.

10. Accordingly, on 5th October, 2018, it was ordered that subject to filing of an affidavit of defendant no.4, defendant no.4 stood deleted from the array of the defendants.

11. Defendant no.4 filed an affidavit through his attorney, reiterating that defendant no.4 is only an actor/artist, who is promoting/advertising the defendant no.1’s brand “HRX” and also has some shareholding in the defendant no.1 company and otherwise has not played any role in the management/operation of the defendant no.1 and does not carry out any action so as to make him liable individually.

12. Plaintiff, on receipt of the aforesaid affidavit, filed this application, which as aforesaid came up before this Court on 10th January, 2019.

13. Counsel for the plaintiff, on 10th January, 2019 drew attention to pages 366 & 368 of Part III-B file, being the news articles in the Economic Times and Jagran newspapers, wherein it was reported that defendant no.4 had launched “his own” brand “HRX” and that “the brand is about fitness and fashion, the two key strengths of Hrithik Roshan”. It was further pointed out and noted in the order dated 10th January, 2019, that the said news articles did not find any mention of defendant no.1.

14. In the circumstance, observing that “considering the iconic status enjoyed by the defendant no.4, the representation to the public is of importance” and that defendant no.4 could not “take a stand before the Court contrary to what is otherwise represented to the public for commercial benefits”, hearing was adjourned to today.

15. Today, the senior counsel for the defendants has argued that the defendant no.4 has no ownership interest in the brand and merely on account of holding shares of defendant No.1 company does not become owner of the brand. It is further contended that if defendant no.4 is construed as having ownership, he will have to appear in various courts or wherever litigation with respect to the brand may arise.

16. I may notice, that though the defendants in I.A. No.11649/2018 also pleaded the factum of defendant no.4 holding shares in the defendant no.1 company but in the court, on 5th October, 2018, what was stated was that he was merely endorsing the brand and had no ownership interest in the brand and it was in lieu of the said statement alone that counsel for the plaintiff had given no objection to the deletion of the name of the defendant no.4. However, counsel for the plaintiff appears to have noticed the said fact for the first time from the affidavit, where the same was reiterated, and whereafter this application came to be filed.

17. Be that as it may, since the no objection of the counsel for the plaintiff was premised only on the submission made in the court, of the defendant no.4, that he was only endorsing the brand and having no ownership interest in the brand, it is felt that IA No.11649/2018 requires re-consideration.

18. The senior counsel for the defendants now contends that since IA No.187/2019 is for modification of the order, it ought to be listed before the same Hon’ble Judge.

19. This application had come up before this Bench first on 10th January, 2019, when no such request was made, though in para 1 of the order, it was observed that considering the nature of the application, it was not required to be listed before the same Judge.

20. The defend

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ants, on finding my view to be against them, are now changing their stand, in an attempt at bench hopping. 21. Counsel for the plaintiff also points out, that in the reply filed to this application also, it has not been stated that the application is in the nature of review, as is now being contended. 22. Be that as it may, since the senior counsel for the defendants insists, let IA No.187/2019 be listed before the same Hon’ble Judge who passed the order dated 5th October, 2018. 23. Subject to orders of Hon’ble the Chief Justice, list before Hon’ble Mr. Justice Yogesh Khanna on 2nd April, 2019.
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