Citizen Holdings Co Ltd v. Mr Chandrakant Vanmaldas Shah & ANR
$~57 * IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(COMM) 968/2016 & IA Nos. 8979-8980/2016, 8982/2016 CITIZEN HOLDINGS CO LTD ..... Plaintiff Through Mr Rajiv Nayar, Senior Advocate and Ms Pratibha M. Singh, Senior Advocate with Mr Sushant Singh, Mr Harsh Vardhan Pathak, Advocates and Mr Harsh Pathak, Advocates.
versus MR CHANDRAKANT VANMALDAS SHAH & ANR ..... Defendants Through Mr Rahul S. Sahay, Mr Ankur Sangal, Mr Adish, Mr Sarangan and Mr Sucheta Ray, Advocates.
CORAM:
HON'BLE MR. JUSTICE VIBHU BAKHRU
O R D E R
% 22.08.2016 1.
The Plaintiff - a company incorporated under the laws of Japan - has filed the present suit, inter alia, praying that the defendants be restrained from manufacturing, marketing, selling offering for sale, importing and exporting precision machines, precision measuring instruments, scales, balances, checking instruments, laboratory goods, machines and machine tools and other type of precision products and machines or any type of goods and services bearing the mark 'Citizen/Citizon/Citizan/Citizein' or any other trademark deceptively similar thereto. The Plaintiff further prays for a decree of permanent injunction restraining the defendants from using the
word Citizen/Citizon/Citizan/Citizein as a trademark, trade name/corporate name, domain name or as a part thereof and in any other manner which may infringe Plaintiff's registered trademark CITIZEN. 2.
The trademark 'CITIZEN' is registered in favour of the plaintiff in several classes as listed in the plaint. It is ex-facie apparent that the marks 'CITIZON' and CITIZEN being used by the defendant are deceptively similar to the registered trademarks of the plaintiff. 3.
Learned counsel for the defendant submits that the trademark CITIZON is also a registered trademark of the Defendants and the same is being used by the defendants since 2006. In addition, he submits that the defendants have also been using the CITIZEN as its trademark since 1987. 4.
Be that as it may, it is apparent that the trademarks used by the defendants are deceptively similar to the registered trade mark CITIZEN which was adopted by the Plaintiff in respect of measuring, signalling and checking apparatus and instruments in 1961. The word CITIZEN was also a part of corporate name of the Plaintiff's predecessor in 1930. The Plaintiff is not only the registered proprietor of the trademark CITIZEN but also the prior user thereof. Therefore, the defendants cannot be permitted to use the trademarks/tradename CITIZON, CITIZEIN or CITIZEN in any manner.
5.
The defendants realising the above position request that they be granted some time to change their trademarks and tradenames so that their business is not affected. The learned counsel for the plaintiff submits that they require licences from Legal Metrology Departments and change in the name of licences would take some time. He Further submits that the defendants are also registered with certain Government Departments and that it would take some time to inform the Government Department regarding change of their trademarks and tradename and therefore requests that the defendants may not be interdicted from using the trademarks at this stage. He however undertakes on instruction of the authorised representatives of the defendants (Mr Sanjay Shah and Mr B. Vyas) that the defendants shall dis-continue the use of the trademarks which are deceptively similar to the plaintiff's trademark within a period of nine months from today which would include the trademarks 'Citizen/Citizon/Citizan/Citizein'.
6.
The said statement is taken on record and the defendants are hereby bound down by the same. It is clarified that after a period of nine months from today, the defendants would not use the offending trademarks/names in any manner including for manufacturing, marketing, selling offering for
sale, importing and exporting of any product at the end of the period of nine months there would be no infringing products being dealt with by the defendants. It is also clarified that the defendants will also change the name of their websites/email addresses. Defendant No.2 shall also take steps to change its corporate name.
7.
The Learned counsel for the defendants confirms the above understanding.
8.
In view of the statement made on behalf of the defendants no further orders are required to be passed.
9.
The suit is decreed in terms of the statement on behalf of the defendants.
10.
Needless to mention that the defendants are at liberty to approach the Legal Metrology department and/or other government departments on the strength of this order and seek expeditious change in the trademark/brand name/model name/ of their products.
11.
The suit and all pending applications are disposed of. 12.
Let the decree sheet be drawn up.
VIBHU BAKHRU, J AUGUST 22, 2016 pkv