1. The appeal has been heard by way of video conferencing.

2. Present appeal has been filed challenging the order dated 11th February, 2021 passed in CS(COMM) 2138 of 2019, whereby the learned District Judge has dismissed the application under Order XXXIX Rule 4 CPC of the appellants filed for vacation of the ex-parte ad interim order dated 30th July, 2019 and has allowed the application under Order XXXIX Rule 1 & 2 CPC filed by the respondent/plaintiff.

3. Learned counsel for the appellants states that the competing marks VICTORINOX of the respondent and VICTORIA CROSS/VICTORIACROSS of the appellants are totally different and the cross as well as shield device of the respondent is strikingly different from the cross device of the appellants. He emphasises that the respondent in the present case has suppressed material facts as well as documents. He also submits that the suit is barred by acquiescence as the mark of the appellants had been registered abroad prior in time.

4. Learned senior counsel for the respondent raises a preliminary objection to the documents being referred to by the learned counsel for the appellants. He states that none of the said documents are a part of the Trial Court record. He contends that these documents have been filed for the first time in the present appeal and the appellants have had no occasion to controvert them. He emphasises that the Trial Court had refused to take additional documents filed by the respondent on record much earlier due to objections filed by the appellants.

5. Learned senior counsel for the appellants admits that the documents referred to and relied upon by him during the course of the present hearing are not a part of the Trial Court record. He, however, states that these documents are available online, and in any event, the ‘Court must endeavour to find out the truth shorn of technicalities’.

6. Prima facie finding merit in the submission advanced by learned counsel for the appellants, this Court permitted him to argue at length and refer to additional documents now placed on record.

7. During the course of hearing, learned counsel for the appellants stated that the respondent was well aware of registration of conflicting marks like VICTORY, VICTOR, VICTORIAN AND VICTORIA. He emphasises that the respondent never took any action against M/s Promoshirt SM S.A. in respect of the trade mark VICTORIA CROSS for which an application was filed in July, 2017 which clearly indicates that respondent was well aware about distinctiveness of VICTORIA CROSS against the trade mark VICTORINOX of the appellant.

8. He further states that the respondent concealed its filing of the trade mark application for trademark/label in Korea in 2018 in class-18 i.e. much after the trade mark application and copyright registration of the appellants bearing no.3044235 dated 31st August, 2015. Consequently, according to him, it is the respondent who had malafidely copied the trademark of the appellants and applied the same in Korea after being aware of the appellants’ trademark/label VICTORIA CROSS.

9. He also states that the respondent deliberately concealed email correspondence with Mr.Ashok Sawhney and its knowledge about the impugned trademark/label device at least since 2016 when the respondent was informed of the impugned trademark/label of the appellants. He points out that the appellant no.1 has registered its trademark VICTORIACROSS in New Zealand, which has not even been opposed by the respondent.

10. He further contends that the respondent deliberately concealed various emails exchanged between appellant no.1 and Elisabeth Ehrler and Bettina Linder of appellant starting at least since 09th February, 2019, while falsely claiming in the plaint that the cause of action to file the present suit had arisen in July, 2019. He submits that a party who approaches the Court for grant of a discretionary relief has to approach the Court with clean hands and with full disclosure of relevant and material facts.

11. Learned senior counsel for the respondent during his arguments has drawn this Court’s attention to the Assignment Deed dated 07th July, 2020 executed between the Promoshirt SM S.A thorough its President Mr.Ashok Sawhney and the respondent, whereby Promoshirt assigned its trademark VICTORIA CROSS to the respondent.

12. He also states that the appellant no.1 had suppressed the fact that he was an employee of Mr.Ashok Sawhney for nineteen (19) years, who had resigned on 31st December, 2016 only and who had declared as late as on 27th January, 2017 that he had not carried on any business activity under the mark VICTORIA CROSS and would not use the said mark for any kind of business whatsoever. The said declaration dated 27th January, 2017 reads as under:-

"DECLARATION

I, Dinesh Gupta s/o Sh. Roshan Lal Gupta R/o 75, Ashoka Town, New Rohtak Road, Delhi-110035, do hereby solemnly affirm and declare as under:

1. That was working with Mr. Ashok Sawhney and his group companies from past l9 years and I have resigned from his employment as on 1st May and was relieved on 31st December 2016 only after signing this declaration letter.

2. That I was not carrying any business activities under the brand " Victoriacross while I was in his employment and which is prejudicial to the interest of Mr. Ashok Sawhney

3. . That in consideration of employment of 19 years, faith shown, opportunities given and contribution made by Mr. Ashok Sawhney in my success, I hereby undertakes ·that I will not use the brand “Victoriacross” for any kind of business whatsoever.

4. That I will not use any trade name, logo, trade mark, design, copyright which is similar to the brand “Swiss Military”, Alpha Club of Switzerland any other brand used or to be used by Mr.Ashok Sawhney or his companies

5. That I will not use any name, logo, trade mark, design, copyright which contains the work Swiss/Switzerland or which is connected Switzerland in any manner whatsoever or which cause any injury to Mr.Ashok Sawhney’s business, reputation and goodwill

Signed at Gurgaon on this 27th day of January, 2017”

(emphasis supplied)

13. In rejoinder, learned counsel for the appellants points out that the appellant no.1 had written a letter dated 30th July, 2017 to the Police alleging mental harassment and threat by Mr.Ashok Sawhney, his former employer. He has even screen shared certain whatsapp messages exchanged between appellant no.1 and Mr.Ashok Sawhney to contend that the said Declaration was to be kept confidential/private and was to be torn ultimately. He also emphasises that in the opposition proceedings filed by his erstwhile employer, Mr.Ashok Sawhney with regard to the mark VICTORIA CROSS, the Declaration dated 27th January, 2017 had not been relied upon. Consequently, he submits that the Declaration dated 27th January, 2017 should not be considered by this Court.

14. This Court prima facie finds that the appellants have never challenged the authenticity of the Declaration or the averments made therein. On a harmonious reading of the complaint filed by appellant no.1 as well as the Declaration dated 27th January, 2017, this Court is of the prima facie view that the appellant no.1 was admittedly in service of Mr.Ashok Sawhney till at least 31st t December, 2016 and it is virtually impossible that he would have built a name or reputation in the mark VICTORIA CROSS on the date the injunction was granted by the Trial Court on 30th July, 2019.

15. Moreover, any private arrangement between Mr.Ashok Sawhney and the appellant no.1 to keep the Declaration confidential/private or to be destroyed/torn cannot prevent the Court from investigating the matter and finding the truth. After all, Courts are not meant to be used as a ‘forum for arm twisting’ and that too against the respondent, who had adopted the alleged trademark and device mark in 1884 in the country of its origin and in India since 1984-85 and that too, when the respondent has built a name and reputation for its trademark itself nationally and internationally over a considerable period of time.

16. It is settled law that trading must not only be honest but must not even unintentionally be unfair. A line must be drawn somewhere between honest and dishonest trading, between fair and unfair competition. (See: B.K. Engineering Co. vs. UBHI Enterprises (Regd.), 1984 SCC OnLine Del 288).

17. Moreover, if the submission of learned counsel for the appellants in rejoinder is accepted, it would mean that the Court due to technicalities is not entitled to find out the truth! It would also mean that a party who approaches the Court for grant of a discretionary relief has not to approach the Court with clean hands and with full disclosure of relevant and material facts. This Court is of the prima facie view that the argument of learned counsel for the appellants in rejoinder is contrary to the argument advanced by him at the initial stage of the hearing of this appeal.

18. In fact, this Court is of the opinion that the appellants in the present appeal, have tried to mislead this Court by telling half truths i.e. by not disclosing in the appeal that the appellant no.1 was an employee for nineteen years with Mr.Ashok Sawhney (President of M/s Promoshirt SM S.A.). Further, it was not mentioned in the lengthy list of dates and in the appeal upfront that Mr.Ashok Sawhney had assigned the trademark VICTORIA CROSS to the respondent vide Assignment Deed dated 07th July, 2020. The Declaration Deed wherein the appellant no.1 had declared as late as on 27th January, 2017 that he had not carried on any business activity under the mark VICTORIA CROSS and would not use the said mark for any kind of business whatsoever, had not been mentioned in the lengthy list of dates or in the prolix appeal which has grounds running into YY! In a bid to be clever by half, the appellants have annexed the Declaration and the police complaint without referring to them in the Appeal.

19. Since the gravamen of the appeal is prima facie falsified by the Declaration Deed 27th July,2021 without disclosing the same in the lengthy list of dates, prolix appeal and opening arguments, this Court is prima facie of the view that Section 340 of Cr.P.C is attracted to the present proceedings

20. Before this Court proceeds with the proceedings under Section 340 of Cr.P.C against the appellants, the appellant no.1 is directed to file his response to the aforesaid prima facie findings within two weeks.

21. On the next date of hearing, the appellant no.1 as well as his wifeappellant no.2 shall be personally present in Court by way of online video link

22. List on 23rd August, 2021.

23. The order be uploaded on the website forthwith. Copy of the order be also forwarded to the learned counsel through e-mail