| SooperKanoon Citation | sooperkanoon.com/976610 |
| Court | Delhi High Court |
| Decided On | Jul-01-2013 |
| Judge | MANMOHAN SINGH |
| Appellant | Eaton Corporation and anr. |
| Respondent | Bch Electric Limited |
1. By this order, I shall dispose of two applications under Order XXXIX, Rules 1 & 2, read with Section 151 CPC; first being I.A.No.1204/2012 filed by the plaintiffs, Eaton Corporation & Another in CS(OS) No.156/2012, and second being I.A.No.4318/2012 filed by the defendant BCH Electric Ltd. in its suit being CS(OS) No.575/2012. Both the applications are being decided by common order. In the order, Eaton Corporation & Another would be referred as Plaintiffs and BCH Electric Limited would be referred as Defendant.
2. The case of the plaintiffs is that plaintiff No.1, M/s Eaton Corporation is a company organized and existing under the laws of United States of America. The plaintiff No.2, Eaton Power Quality Pvt. Ltd., New Delhi is the subsidiary of plaintiff No.1.
3. The plaintiff No.1 (the expression whereof shall include its predecessors-in-interest and title) are engaged in the business of the manufacture and sale of electric apparatus for use in operating machines, engines and motor by current control and electrical supplies, consisting of; controllers for dynamoelectric machines to wit; starting, stopping, reversing, and speed regulating apparatus for motors, and voltage and current regulating apparatus for generators and like control apparatus for rotary convertors; current breakers; magnetic brakes for various types of machines; lifting and separating magnets and controls therefor; solenoids; electric panel boards and other goods included in Class 9.
4. It is alleged in the plaint that the plaintiff No.1 founded in 1911 and incorporated in Ohio in 1916 is a well known premier diversified fortune 200 industrial company having a manufacturing presence in Australia, Brazil, Canada, China, Costa Rica, Czech Republic, Dominican Republic, France, Germany, India, Indonesia, Ireland, Italy, Japan, Malaysia, Mexico, Monaco, Netherlands, Poland, Puerto Rica, Singapore, South Africa, South Korea, Spain, Switzerland, Taiwan, Thailand, United Kingdom and United States of America and has been selling their products under various well known trademarks. It is a global corporate being into business for more than 100 years, employing approximately 73,000 employees worldwide and selling its products to customers in more than 150 countries. During the year 2010, their market value is estimated to be $19.92 billion USD approx.
5. It is also alleged that the plaintiff No.1 mainly deals in four distinct industrial segments namely Electrical, Fluid Power, Truck and Automotive wherein they are considered to be the global leaders. Plaintiffs deals in the designs, manufacture, marketing and serving of electrical systems and components for power quality, distribution and control; fluid power systems and services for industrial, mobile and aircraft equipment; intelligent truck drive train systems for safety and fuel economy; and automotive engine air management systems, power train solutions and specialty controls for performance, fuel economy and safety.
6. The trade mark CUTLER-HAMMER was first adopted by Cutler- Hammer Inc., predecessor-in-interest and title of plaintiff No.1 in the year 1893 in respect of electric apparatus for use in operating machines and goods mentioned above.
7. The plaintiffs contention is that the predecessor-in-title of Cutler-Hammer Inc. first shipped the goods included in Class 9 under trademark CUTLER-HAMMER to India in the year 1919. Since that time, the plaintiffs predecessor-in-interest and title and then plaintiffs have continued to use the said trademark in respect of goods of its manufacture and sale so much so that the plaintiffs trademark CUTLER-HAMMER have come about to be exclusively identified and recognized by the purchasing public and the members of the trade with the goods of the plaintiffs and none else. The trade mark CH was first adopted by Cutler-Hammer Inc., predecessor-in-interest and title of plaintiff No.1 in the year 1954 in India in respect of goods falling in Class 9 and has been used in India initially by the plaintiffs predecessor-in-interest and title and then by plaintiffs from several years.
8. Plaintiffs trademarks CUTLER-HAMMER, CH Control and CH (label) are being used in several countries in the world. The list of countries in which products bearing the trademark CUTLER-HAMMER, CH Control and CH (label) has been filed.
9. Plaintiffs trademarks CUTLER-HAMMER, CH Control and CH (label) are also the subject matter of numerous registrations in number of countries of the world covering variety of goods falling in international Class 9. Copies of a sample of some of the registration certificates have been filed on record.
10. The registration of the trademark CUTLER-HAMMER under No.164435 was applied by Cutler-Hammer Inc. on 8th June, 1954 as per the provisions of the Trade and Merchandise Marks Act, 1958 in India. Plaintiff No.1 acquired the company Cutler-Hammer Inc. in the year 1978 whereby request on Form-24 dated 28th November, 1979 was filed. Pursuant to request on Form-24 and order dated 23rd January, 1980, plaintiff No.1 was registered as subsequent proprietor by virtue of Certificate of Merger.
11. The plaintiff No.1 also registered the trade mark(s) CH (label), CH Control and CH in respect of electric goods included in Class 9 under the provisions of Trade and Merchandise Marks Act, 1958 in India. The details of these trademarks are as follows: Sr. No. Registration No. Class Date of application 1. 20563”
03. 11.1975 2. 16443”
08. 06.1954 3.
12. Trademark 64270”
11. 10.1994 The registration of the abovementioned trademark CUTTER- HAMMER under No.164435 confers an exclusive right on the plaintiffs to the use of the said trademarks under Section 28 of the Trade Marks Act, 1999. The use of any mark which may be identical and/or deceptively similar thereto in respect of the same or similar description of goods or service constitute an act of infringement under Section 29 of the Trade Marks Act, 1999 as well as passing off.
13. The contention of the plaintiffs is that trademarks CUTLER- HAMMER, CH Control and CH (label) enjoys wide reputation, recognition and popularity in the Indian and world market for high quality of products sold under it. These trademarks have created its own identity in the market and have immensely contributed in generation of goodwill so much so that it has acquired the trans-border reputation which has spilled over to India.
14. The defendant, BCH Electric Limited having its office at 1101, New Delhi House, 27-Barakhamba Road, New Delhi-110 001 also at, Block 1E216, AJC Bose Road, Kolkata-700017 and 20/4, Mathura Road Faridabad-121 006, Haryana is also engaged in the business of manufacture and sale of electric goods falling in Class 9.
15. The defendant (the expression whereof shall include its predecessor- in-interest and title) was set up in the year 1965 as a result of the joint venture between the plaintiffs predecessor-in-interest and title, CutlerHammer Inc. and some Indian partners in the name of CUTLER-HAMMER INDIA LIMITED. The name of defendant Company was later changed to Bhartia Cutler-Hammer Ltd. In the year 1995, it was renamed as Bhartia Industries Limited. With effect from 25th October, 2007, the name was again changed to BCH Electric Limited, the present defendant herein.
16. From the year of its incorporation, defendant entered into various agreements with plaintiffs predecessor-in-interest and title, Cutler-Hammer Inc. to flourish Cutler-Hammer Inc.s business in India. These agreement included Sales Agreement and License and Technical Service Agreement dated 3rd June, 1974 whereby defendant has accepted the ownership of the Cutler-Hammer Inc. over the trademarks/trade names and further agreed to not to do anything which will impair Cutler-Hammer Inc.s ownership over these trademarks/trade names.
17. In the year 1979, Cutler-Hammer Inc. entered into trading name agreement with Bhartia Cutler-Hammer Limited (now defendant) whereby defendant was granted the right to use the words CUTLER-HAMMER as part of the corporate title by Cutler-Hammer Inc. The said agreement allowed defendant to use the words Cutler-Hammer as part of their corporate title in a limited way/manner and in connection with goods manufactured under the license from Cutler-Hammer Inc. The agreement specifically mentions that Cutler-Hammer Inc. is the owner of the words CUTLER-HAMMER when used as a registered or unregistered trademark, corporate title or trading style in the field of activity in which parties are engaged. On 19th February, 1979, a registered user agreement was executed 18. between Bhartia Cutler-Hammer Limited (now defendant) and CutlerHammer Inc. whereby defendant was granted non-exclusive right to use the following registered trademarks: Trademark C-H Monogram Border under No.164434. Trademark CUTLER-HAMMER under No.164435. Trademark CH Control under No.205632.
19. Defendant was allowed to use the trademark CUTLER-HAMMER under No.164435 in conjunction with the word Bhartia. Whereas the other two trademarks were allowed to be used along with the legend Made in India by Bhartia Cutler-Hammer Limited, a wholly Indian owned Licensee of Cutler-Hammer, Inc. U.S.A.
20. In the User Agreement, defendant acknowledged and admitted the Cutler-Hammer Inc.s title and proprietorship in the trademarks CUTLERHAMMER, CH & CH Control. The agreement clearly mentions in clause 7 that: User recognizes the Trade Mark Owners title to the said trade Marks and shall not at any time do or suffer to be done any act or thing which will in any way impair the rights of the Trade Mark Owner in or to said Trade Marks. It is understood that User shall not acquire and shall not claim any title to the said trademarks by virtue of the license granted to user or through users use of the said trademarks, it being the intention of the parties that all use of said Trade Marks by user shall at all times inure to the benefit of the Trade Mark Owner. The duration of the abovementioned agreement was for seven years which had expired in the year 1986.
21. The plaintiffs have set up their case against the defendant by making various allegations that the defendant is deliberately, fraudulently and with malafide intentions of trading upon the reputation and goodwill attached to plaintiffs trademark CUTLER-HAMMER, CH Control & CH (label), is using it without obtaining any consent, permission or valid license. The dishonest and malafide intentions of defendant are apparent from the fact that despite being aware of the reputation of plaintiffs trademark CH (label) worldwide including India and proprietorship of plaintiff No.1 over the trademark CH Control under No.205632 in Class 9 since 3rd November, 1975 in accordance with the provisions of Trade and Merchandise Marks Act, 1958 and having admitted rights of plaintiff no.1 in the Registered User Agreement, defendant applied for registration of the identical/deceptively similar trademark under No.582999 in Class 9 in the year 1992 and obtained registration thereof by playing fraud on the registry and making false claim of proprietorship and user thereof.
22. It is alleged in the plaint that the defendant taking advantage of this situation filed an application under No.582999 for registration of the trademark CH Control through the same service provider. The defendant has obtained the registration of the said mark wrongfully and in bad faith by committing fraud over the Registry.
23. It is also alleged against the defendant that by committing fraud, defendant applied for registration of the identical/deceptively similar trademark CUTLER-HAMMER (Device) under No.1189782 in Class 9 in the year 2003. The plaintiff No.1 filed notice of opposition opposing registration of the impugned mark subject matter of Application No.1189782 on/or around 23rd June 2004 with the Registrar of Trade Marks at New Delhi. The said opposition proceedings initiated by the plaintiffs are pending.
24. In the year 2007, defendant made another attempt to register identical and/or deceptively similar trademark BHARTIA CUTLER-HAMMER (Label) under application No.1562940 in Class 9 and the same is pending as objected by the plaintiffs.
25. It is submitted that defendant was aware of the reputation and proprietorship of plaintiff No.1 over trademarks CUTLER-HAMMER, CH Control and CH in respect of the goods of its manufacture and sale prior to its incorporation and has adopted and used the identical and/or deceptively similar trademarks with dishonest and malafide intentions to trade upon the reputation and goodwill of plaintiffs and to earn profits in an illegal manner. By committing such acts, defendant has not only infringed plaintiffs proprietary rights vested in their registered trademark CUTLERHAMMER and other abovementioned trademarks but also committed acts of passing off their inferior quality goods and business as and for the quality products and business of plaintiff. The defendant has no plausible reason to choose identical/deceptively similar marks CUTLER-HAMMER, BHARTIA CUTLER-HAMMER, CH (logo) and/or CH Control as a trade mark for their products.
26. The defendants products are bound to be falsely associated being part of range of products of the plaintiff. The use of identical and/or deceptively similar trademarks CUTLER-HAMMER, BHARTIA CUTLER-HAMMER, CH (logo) and/or CH Control on the part of the defendant is unlawful and constitutes violation of the plaintiffs rights as are protected under the provision of Section 29 of the Trade Marks Act, 1999 and under the common law.
27. On 19th December, 2011, plaintiffs published a caution notice announcing their statutory rights over the trademark CUTLER-HAMMER in Class 9 since the year 1954. In response to the caution notice, the defendant through their counsel sent a reply to the caution notice via email and registered post on 22nd December, 2011. By way of the said reply, defendant claimed proprietary rights in the trademark BHARTIA CUTLERHAMMER and CH Control. By way of the said reply; plaintiff came to know that defendant has also applied for registration of trademark BHARTIA CUTLER-HAMMER under No.1562940 in Class 9. It was revealed by the plaintiffs from the website of Registrar of Trademarks about the filing of application for registrations of the same very trademarks which were earlier used by the defendant under permissive use of the trademarks belonging to the plaintiffs.
28. The plaintiffs, thereafter, have filed the suit for permanent injunction restraining infringement of trademarks, passing of, unfair competition and renditions of accounts and damages against the defendant. Along with suit, the plaintiffs also filed an application being I.A. No.1204/2012 under Order XXXIX, Rules 1 & 2 CPC for grant of interim injunction against the defendant from using the trade marks CUTLER-HAMMER and CH in any manner by the defendant by passing off their goods as that of the plaintiffs. The abovementioned suit was filed in the month of January, 2012. The defendant filed its written statement and reply in the month of February, 2012.
29. The defendant also filed suit against the plaintiffs being CS(OS) No.575/2012 in the month of March, 2012 along with interim application being I.A. No.4318/2012 seeking injunction against the plaintiffs for issuance of groundless threats to the dealers of the defendants.
30. Both sides have made their submissions in their respective interim applications. As the facts in both matters are common, therefore, by this common order, the pending two interim applications are being decided by the single order.
31. Various defences have been raised by the defendant in its written statement and reply to the interim application filed by the plaintiffs. Mr.Sandeep Sethi, learned Senior counsel appearing on behalf of defendant has made his submission that no case of infringement of trademarks has been made out by the plaintiffs against his client as plaintiff No.1 has not acquired any rights in the mark CUTLER-HAMMER under No.164435 which was in the name of Cutler-Hammer, Inc. The said registration is not valid. The defendants application for rectification/removal/cancellation of the mark is pending with the Trade Marks Registry. The trade mark CUTLER-HAMMER is not being used by plaintiffs in India; abandoned by plaintiffs and, therefore, no goodwill/reputation vests in the said marks in favour of plaintiffs. The trade mark CUTLER-HAMMER is associated in India with defendant and its products/business. The trade mark (CH being the abbreviation of CUTLER- HAMMER) is registered under No.582999 in Class 9 in the name of defendant since the year 1992. Therefore, the plaintiffs have failed to establish even prima facie case of infringement of trademarks.
32. The second submission of Mr.Sethi is that the plaintiffs have also failed to make out any case of passing off as the plaintiffs are not using the marks CUTLER-HAMMER, , , , and/or variants thereof in relation to their business/products in India. No products of plaintiffs bearing any of the aforesaid trademarks are available for sale in India. The aforesaid marks have been abandoned by plaintiffs. In fact, no products bearing the said marks have been produced/filed in the Court. There is no goodwill/reputation vested in favour of plaintiffs in the said marks. The HAMMER, marks , BHARTIA CUTLER-HAMMER, CUTLER- are exclusively associated with defendant. The said products and are distinctive of its products/business by virtue of continuous and extensive use for several decades. There is no evidence of confusion and deception placed by the plaintiffs on record. There is no likelihood of confusion/deception as plaintiffs products bearing the said marks are not available in India. Therefore, no damage would be caused to plaintiffs on account of use of the said marks by defendant. On the contrary, defendant will suffer irreparable loss, damage and injury, if plaintiffs commence use of the said marks in India. Rather the plaintiffs have abandoned their trademarks in India who themselves have allowed removal of their following trade marks in India and other countries as admitted by the plaintiffs in their rejoinder due to non-payment of their renewal fee and have not taken any steps for restoration. The details are as under: Trade mark Registration No. Status CH LOGO 16443 Removed by the Trade Marks Registry CH LOGO 20563 Removed by the Trade Marks Registry 642706 Removed by the Trade Marks Registry (Hereinafter the abovementioned logos or variant thereof would be referred as CH logo, and logo of CUTLER-HAMMER as CUTLER-HAMMER) 33. Despite having incorporated a subsidiary in India i.e. plaintiff No.2 as far back as in the year 1996, plaintiff No.1 has not used the said marks in respect of its products/business and neither raised any objection against defendants activities in India. Plaintiffs products available in India do not depict/bear the trade marks CUTLER-HAMMER or CH or variants thereof. Products purchased by defendant on 22nd, December, 2011 which does not show use of the said marks. The invoice raised in respect of the said products also does- not show use of the marks. Plaintiffs have filed few purchase orders of 2009, 2010 and 2011 however, the same do not show any actual sale of the products in India under the mark CUTLER-HAMMER. Further, plaintiffs have relied on a catalogue of 2001 pertaining to Canada to correlate the product codes. No document has been placed on record by the plaintiffs establishing use of the marks in question post 1986, thereby confirming that plaintiff No.1 lost interest/rights in the marks CUTLERHAMMER, CH post 1986 and have commenced use only recently so as to ride on the goodwill and reputation vesting in the defendants marks.
34. The sales figures provided by plaintiffs for the years 2008-2011 in respect of their products are vague, misleading, unsubstantiated and scanty inasmuch as the same are neither indicative of sales in India nor discloses use of these trademarks. The sales figures of Rs.35 lac, which at any rate are vague, unsubstainated and denied, provided by plaintiffs towards sale of products in the year 2008 bearing the marks in question are no match to the sales generated by defendant in the year 2008 i.e. `1,94,82,68,813/-.
35. No document including promotional materials/advertisements has been placed on record by the plaintiffs establishing use of the marks in question post 1986. The Caution Notice published by the plaintiffs on 19th December, 2011 in the daily, The Times of India was confined to the trade mark CUTLER-HAMMER and there was no whisper of the marks CH and/or variants thereof.
36. Nothing on record to show that the Registered User Agreement dated 19th February, 1979 was recorded with the Trade Marks Registry as per Section 48 of the Trade and Merchandise Marks Act, 1958, thus, it does not lie in the mouth of the plaintiffs to say that use would accrue to the plaintiffs for the period 1979-1986.
37. It is also argued by Mr.Sethi that the present action of the plaintiffs suffers from long delay, laches, acquiesces and waiver on the part of plaintiffs. Therefore, the plaintiffs are entitled for the discretionary relief of injunction. It is admitted by the defendants that after the expiry of the Registered User Agreement in 1986, defendant continued to use, inter alia, the trademarks BHARTIA CUTLER-HAMMER, CUTLER-HAMMER, CH with the full knowledge, consent and encouragement of Plaintiff No.1 by way of addressing letters by the plaintiffs themselves and various meetings and discussions between the parties at least for the last 25 years.
38. Certain following illustrative instances have been given by the defendant in order to show the knowledge of the plaintiffs about the continuous user of trademarks in question: i) Plaintiffs have admitted to the fact that the letters exchanged between Plaintiff No.1 and Defendant reflected Defendants use of the trade marks BHARTIA CUTLER-HAMMER, CUTLER-HAMMER, CH on the letter head. ii) Plaintiff No.1 had entered into Sales Agreements on 13th July, 1988 and 4th September, 1990 with defendants affiliate viz. Bhartia International Private Limited (which later merged into defendant); License and Technical Service Agreements dated 10th April, 1990 and 11th December, 1992 with defendant and Export Agreement dated March 16, 1994 between plaintiff No.1 and defendant. iii) Plaintiff No.1 and Defendant exchanged various correspondences and visited each others offices/factories in India and the USA in connection with business as well as to explore new business opportunities. The letters addressed by defendant clearly reflected use of the trade marks BHARTIA CUTLER-HAMMER, CUTLER-HAMMER, CH on the letterhead. The product brochure forwarded to plaintiff No.1 also bore the trademarks/ names BHARTIA CUTLER-HAMMER and CH of the defendant. The representatives of plaintiffs who visited the office/factory of defendant could not have missed defendants use of the said marks.
39. Plaintiffs Indirect Knowledge i) When the plaintiff No.1 had filed fresh application seeking registration of the mark CUTLER-HAMMER under No.642706 on 11th October, 1994, the Examination Report issued by the Trade Marks Registry on 22nd October, 1999 cited defendants prior mark CUTLER-HAMMER under No.582999 against plaintiffs application. There was opposition from the plaintiffs side. ii) Mr.Jamshed Khurram, Director - Sales & Marketing PD, South Asia of plaintiff No.2 and Mr.Ajay Jain, President of plaintiff No.1s affiliate company Moeller HPL India Private Limited were employees of the defendant during 2004-2005 and 2001-2005 as Business Manager (OEM) and General Manager (Sales and Marketing) respectively. iii) Plaintiff No.2 was incorporated on 1st March, 1996 and has an office at Delhi. Defendant also has an office at Delhi. The Directors and other senior employees of Plaintiff No.2 have been in constant touch with Defendant and have visited its offices. iv) Being in the same line of business, Plaintiff No.2 is deemed to have been aware of Defendants business/products bearing the marks, BHARTIA CUTLER-HAMMER, CUTLER- HAMMER and CH. Defendant has been continuously and extensively using the marks, BHARTIA CUTLERHAMMER, CUTLER-HAMMER and CH in respect of its products/business for nearly half a century and products bearing the said marks are available in every nook and corner of the country. Therefore, the plaintiffs/their predecessor had waived their rights, if at all, in the trade marks CUTLERHAMMER, CH and variants thereof. It is not open now for the plaintiffs to exit from India and then return after lapse of a few decades and seek to restrain the defendant, an Indian company, which has, in the meantime, established a goodwill/reputation in its favour. Upon realizing the magnitude of defendants business and its reputation in the market vis--vis plaintiffs failure to gain market share in India, they are now attempting to usurp defendants business/trade marks in India.
40. Mr.Sethi argued that law assists those who are vigilant about their rights and not those who sleep over their rights Vigilantibus Non Dormientibus Acquitas Subveniunt. Plaintiffs are, therefore, estopped, both in law and equity from asserting rights over the statutory and proprietary rights of Defendant in the marks, BHARTIA CUTLER-HAMMER, CUTLER-HAMMER and CH.
41. It is also challenged by the defendant that the plaintiff No.1 has acquired the company Cutler-Hammer, Inc. in the year 1978, as it is the admitted position that the plaintiffs have made the application on 28th November, 1979 on Form TM-24 for recordal of change in ownership in the Trade Marks Registry, Kolkata. Pursuant to the said request and order thereon dated January 23, 1980, Plaintiff No.1 was registered as subsequent proprietor of the mark CUTLER-HAMMER by virtue of Certificate of merger. Plaintiffs have not filed any documents to show that the said registration and/or any other marks were part of the merger. On 31st May, 2010, plaintiff No.1 also filed a request on Form TM- 33 (for recordal of change of name) with the Registry indicating that Cutler- Hammer, Inc. is the subsequent proprietor of the said mark and that CutlerHammer, Inc. has, by virtue of Certificate of Amendment of Certificate of Incorporation dated 20th August, 2003, changed its name to Eaton Electrical, Inc. After raising objection by the defendant on 28th April, 2012, plaintiffs vide letter dated 2nd May, 2012 filed a request with the Trade Marks Registry, Mumbai withdrawing the said request. In the said letter, plaintiffs for the first time disclosed that there are two, Cutler-Hammer Inc. In view of above, the plaintiffs herein have no locus to seek an injunction against the defendant.
42. It is also alleged by the defendant that the balance of convenience exists in favour of defendant, as the defendant is a leading manufacturer and distributor of premium low voltage electrical and electronics products in India. The defendant presently employs approximately 1800 personnel and 150 engineers including a strong R&D department. It has over 30 sales offices with numerous Resident Engineer locations strategically spread all over India and over 500 dealers and thousands of sub-dealer network to better serve its customers. The defendants products are exported to over 25 countries, either directly, or through authorized distributors in jurisdictions such as Europe, Far East, Middle East, Africa and South-East Asia. In fact, on account of extensive and continuous use of the trade marks by the defendant in respect of its products/business for over 25 years, a prima facie case exists in favour of the defendant and against the plaintiffs. The following judgments are referred by the defendant in support of its submissions: (i) Ramdev Food Products Pvt. Ltd. Vs. Arvindbhai Rambhai Patel & Ors., AIR 200.SC 330.(para 105-110) (ii) Power Control Appliances & Ors. Vs. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 44.(Paragraphs 26-34) (iii) Atlas Cycles (Haryana) Ltd. Vs. Atlas Products Pvt. Ltd. & Anr., 101 (2002) DLT 32.(High court of Delhi- Single Judge) (Paragraphs 23, 24 &
26) (iv) Kirloskar Proprietary Limited & Ors. Vs. Kirloskar Dimensions Pvt. LTD. & Ors., AIR 199.KANT 1 (High Court of Karnataka-Single Judge) (Paragraphs 32 &
34) (v) Warner Bros. Entertainment Inc. & Anr. Vs. Harinder Kohli & Ors., 2008 (38) PTC 18.(High Court of Delhi- Single Judge) (Paragraph
30) (vi) Qrg Enterprises And Anr. Vs. Surendra Electricals And Ors., 2005 (30) PTC 471(Paragraph
36) (vii) S.P. Chengalvaraya Naidu Vs. Jagannath & Others, AIR 199.SC 85.(Paragraph
7) (viii) Prem Singh Vs.Ceeam Auto Industries, AIR 199.Delhi 233 (High Court of Delhi-Single Judge) (Paragraphs 22 and
23) (ix) ITC Limited and ITC Hotels Limited Vs. Punchgini Inc., United States Court of Appeals, Second Circuit. Docket NO. 05-0933-cv. (Page 3-6) (x) Vee Excel Drugs and Pharmaceuticals Ltd. Vs. Hab Pharmaceuticals and Research Lim., 2009 (39) PTC 67.(Del) (Paragraphs 10, 11, 12,13 &
16) (xi) Cluett Peaboy & Co. Inc. Vs. Arrow Apparals, 1998 PTC (Paragraphs 30 &
31) (xii) UTO Nederland B.V. & Anr. Vs. Tilaknagar Industries Ltd. MANU/MH/1827/2011(Paragraphs 66, 67, 70, 71, 82, 90, 92, 94 and
101) (xiii) Barcamerica International USA Trust Vs. Tyfield Importers, Inc., United States Court of Appeals for the Ninth Circuit D.C. No. CV-98-00206-FCD Pages 4,6 &7 (xiv) Freecycle Sunnyvale Vs.The freecycle Network, United States Court of Appeals for the Ninth Circuit D.C. No. 4:06-cv-00324CW Opinion Paragraph III [2] Page 18818 (xv) Wander Ltd. & Another Vs. Antox India Pvt. Ltd., 1990 Supplementary (1) SCC 72.(Supreme Court of India 3 Judges bench) Paragraph 5 (xvi) K.R. Jadyappa Mudaliar & Ors. Vs. K.B. Venkatachalam and Anr., (1990)1 MLJ 11.Paragrap”
43. The defendant in its case is seeking, inter alia, an injunction against plaintiffs from extending threats to its affiliates, customers, distributors, dealers, agents etc., as plaintiffs are wrongly claiming rights in the marks CUTLER-HAMMER and CH and issuing threats to defendants dealers, distributors and agents thereby hampering its business and creating confusion in the minds of the discerning members and also by issuing publication of the Caution Notice for the mark CUTLER-HAMMER. On 6th January, 2012, plaintiff No.1, through its lawyers, addressed a cease and desist letter to defendant calling upon it to refrain from using the marks CUTLER-HAMMER and CH (label) and/or any deceptive variation/s thereof and termed its products as counterfeit.
44. The defendant is the proprietor of the trade mark CUTLER- HAMMER registered in Class 9, registration of which dates back to 14th October, 1992. Plaintiffs use of the mark CUTLER-HAMMER which is identical/deceptively similar to defendants registered trade mark CUTLERHAMMER in relation to identical goods/products is tantamount to infringement of defendants statutory rights vesting in its registered and reputed trade mark CUTLER-HAMMER. Goodwill and reputation subsisting in defendants trademarks/logos, CUTLER-HAMMER, BHARTIA CUTLER-HAMMER and CH any use of the said marks and/or deceptive variations thereof would mislead and deceive the public/ consumers into believing that plaintiffs business/products originate from defendant. Thus, plaintiffs are guilty of passing off as plaintiffs are intentionally and blatantly violating defendants rights in the aforesaid trademarks and a case of misappropriation leading to deception amongst the members of trade and public is clearly made out against plaintiffs. The balance of convenience exists in favour of defendant, as due to long, continuous and extensive use of the marks/logos, BHARTIA CUTLER-HAMMER, CUTLER-HAMMER and CH in India for the last several decades, the same are well-known and deserve protection. On the other hand, the plaintiffs have recently commenced use of CUTLERHAMMER who had earlier abandoned the marks CUTLER-HAMMER and CH and variants thereof in India as well as internationally, thus they have no authority/justification to assert rights over the same. Use of the aforesaid mark by plaintiffs is with the sole intention of riding upon defendants fame and goodwill garnered over the years.
45. An irreparable harm and injury is being suffered by defendant by virtue of (i) publication of Caution Notice by plaintiff No.1 claiming exclusivity over the mark CUTLER-HAMMER; (ii) issuance of threats to Plaintiff/its dealers/distributors; and (iii) plaintiffs recent commencement of use of the mark CUTLER-HAMMER which is identical/deceptively similar to defendants registered and well-known trademarks, BHARTIA CUTLER-HAMMER, CUTLER-HAMMER and CH. Plaintiffs being in the same trade and business as defendant, it will cause irreversible damage to the goodwill, fair name, reputation and integrity of defendant, its businesses and the much renowned and well-known trademarks/logos BHARTIA CUTLER-HAMMER, CUTLER-HAMMER and CH.
46. In case, pleadings of both the parties are read, it is not disputed by the defendant that trademarks CUTLER-HAMMER and the device CH are well known trademarks, there would be confusion and deception if both the parties are allowed to use the same trademarks. The defendant has also not disputed the facts that two sets of trademarks are same and are being used by both parties in relation to same product. The defendant has also not denied that the defendant entered into an agreement Registered User Agreement bearing the said trademarks and the defendant has filed the applications for registrations of the same very trademarks which were earlier being used as a permissive-use under the licence agreements. The plaintiffs oppositions to the various applications for registration filed by the defendant are pending. The main case of the defendant is that after breaking relation between the parties, the defendant has been using the same very trademarks for the last 25 years within the knowledge of the plaintiffs. The defendant has acquired unique and independent goodwill and reputation of trademarks in India and abroad. The plaintiffs on the other hand abandoned their trademarks as some of trademarks are not renewed. The plaintiffs have not been using the trademarks in India and other parts of the world. The defendant is the registered proprietor of trade mark logo of CH in Class 9 as on 14 th October, 1992. The plaintiffs are unnecessary harassing the defendant by extending their threats by various ways. Therefore, the plaintiffs are not only entitled for injunction prayed for rather they should be restrained from extending their threat as prayed in the application for injunction filed by the defendant.
47. In order to decide these two applications, the following issues are to be considered by the Court: i) Whether the defendant is infringing the registered mark CUTLER-HAMMER. ii) Whether the defendant is passing off its goods as that of the plaintiffs. iii) Whether the defendant being earlier permissive user of trademarks are entitled to claim the proprietorship rights after the expiry of period of licence agreement and are entitled to use the same trademarks. iv) Whether the plaintiffs are entitled for interim injunction at this stage despite of delay, latches, acquiesces and waiver as per plea raised by the defendant. v) Whether the defendant who is also holding the registration of logo mark CH in Class 9 as of 14 th October, 1992 can be retrained by this Court. vi) Whether the defendant is entitled for injunction against the plaintiffs in its application being I.A. No.4318/2012 restraining the plaintiffs for extending the groundless threats to the dealers and other representatives of the defendant. vii) In whose favour balance of conveniences lies in view of the facts and circumstances of the present two actions filed by the parties.
48. Some relevant dates and events are necessary to mention here in order to deal with the submissions of the parties. As per the case of the plaintiff Cutler-Hammer Mfg. Co. incorporated in the year 1893. On 28th August, 1916 Eaton Corporation (plaintiff no.1) incorporated in Ohio. CutlerHammer, Inc. incorporated on 6th December, 1928. Trademark CUTLERHAMMER under No.164435 as of 8th June, 1954 in Class 9 applied by Cutler-Hammer, Inc. duly registered and renewed up to 08.06.2020. Eaton Corporation (plaintiff no.1) is recorded as subsequent registered proprietor vide order dated 23rd January, 1980. Trademark CH under No.164434 as of 8th June, 1954 in Class 9 applied by Cutler-Hammer, Inc. The mark was duly registered and Eaton Corporation (Plaintiff no.1) was recorded as subsequent registered proprietor by order dated 23rd January, 1980. The registration lapsed due to non-payment of renewal fee due for period 8th June, 1989 to 8th June, 1996. 48.1 Trademark CH under No.205632 as of 3rd November, 1961 in Class 9 applied by Cutler-Hammer, Inc. The mark was duly registered and Eaton Corporation (Plaintiff No.1) was recorded as subsequent registered proprietor vide order dated 23rd January, 1980. The registration lapsed due to non-payment of renewal fee due for period 3rd November, 1989 to 3rd November, 1996. 48.2 Joint venture set up between Cutler Hammer, Inc. and Indian promoters to form Cutler-Hammer India Limited in the year 1965. In February, 1974 Cutler-Hammer, Inc. agreed to terminate its equity interest in India and removed its foreign ownership. It is mentioned in Sales agreement dated 3rd June, 1977. Sales agreement executed between Bhartia CutlerHammer Limited and Cutler-Hammer World Trade, Inc., Cutler-Hammer International, Cutler Hammer Export Sales Corporation. The duration of Agreement was 10 years with restricted trademarks rights. On the day the License and Technical Service Agreement was executed between CutlerHammer World Trade Inc. and Bhartia Cutler-Hammer Limited. CutlerHammer World Trade Inc. is the subsidiary of Cutler Hammer, Inc. The duration of Agreement was 10 years with grant of restricted trademarks rights. On 19th August, 1978 Cutler-Hammer India Limited (defendant) changed its name to Bhartia Cutler-Hammer Limited. In February, 1978 Trading Name Agreement executed between Cutler-Hammer, Inc. and Bhartia Cutler-Hammer Limited where Bhartia Cutler-Hammer Limited was permitted to use the words CUTLER-HAMMER as part of the corporate title by Cutler-Hammer, Inc. in a limited way/manner and upon or in connection with goods manufactured under the license from Cutler-Hammer, Inc. 48.3 The Registered User Agreement was between Cutler-Hammer, Inc. and Bhartia Cutler-Hammer Limited. Duration of Agreement was 07 years. On 13th March, 1979 Certificate of ownership and merger merging CutlerHammer, Inc. into Eaton Corporation (plaintiff No.1). Sales agreement was executed between Bhartia International Private Limited and Eaton Corporation on 13th July, 1988. Duration of Agreement was 2 years with restricted trademark rights to the defendant. 48.4 On 10th April, 1990 License and Technical Service Agreement was executed between Eaton Limited and Bhartia-Cutler Hammer Limited. Foreign Collaboration Approval of 1988 was taken. Duration of Agreement was 10 years. On 4th September, 1990 another Sales agreement was executed between Bhartia International Private Limited and Eaton Corporation. Duration of Agreement was 5 years with restricted trademark rights to Bhartia. 48.5 On 14th October, 1992 Trademark CH Control under No.582999 in Class 9 by applied by Bhartia Industries Limited and is registered. 48.6 In December, License and Technical Service Agreement was executed between Eaton Limited and Bhartia-Cutler Hammer Limited. Duration of Agreement was 8 years. Foreign Collaboration Approval of 1992 is filed on record. Another Export Agreement was executed between Bhartia Cutler-Hammer Limited & Eaton Corporation on 16th March, 1994. Duration of Agreement was equal to the term of License and Technical Service Agreement, 1992. On 11th October, 1994 fresh Trademark CH (Label) under No.642706 in Class 9 applied by Eaton Corporation. Registration lapsed due to non-payment of renewal fee for the period 11th October, 2004 to 11th October, 2014. Interlocutory petition for restoration of registration is pending before the Registrar. 48.7 Bhartia Cutler-Hammer Limited changed its name to Bhartia Industries Ltd. w.e.f. 24th August, 1995. 48.8 On 1st March, 1996 Powerware International Private Limited was incorporated. Name was changed to Eaton Power Quality Private Limited on 10.11.2004. 48.9 On 4th April, 2003 Trademark CUTLER-HAMMER under No.1189782 in Class 9 applied by Bhartia Cutler-Hammer Limited. It is pending as opposed. Eaton Corporation filed Notice of Opposition under not DEL- 179395 to oppose registration of trademark CUTLER-HAMMER filed by Defendant under application No.1189782. TM-6 was filed on 9th March, 2005. 48.10 On 29th May, 2007 one fresh application of registration of Trademark BHARTIA CUTLER-HAMMER under No.1562940 in Class 9 applied by Bhartia Industries Limited (now Defendant). It is pending as objected by Registry itself. Bhartia Industries Limited also on 29th May, 2007 (now defendant) filed 21 other applications in the Trade Marks Registry to register trademark(s) BHARTIA CUTLER-HAMMER, CUTLER-HAMMER and CH and variants thereof in various Classes and the same are pending for registration. 48.11 Bhartia Industries Limited changed its name to BCH Electric Limited w.e.f. 25th October, 2007. Eaton Corporation obtained ex-parte injunction against BCH Electric Limited (Defendant) restraining them to use Eaton Corporations trademarks CUTLER-HAMMER and CH in Germany on 7th April, 2011. Caution Notice published in the newspaper by plaintiffs in respect of trademark CUTLER-HAMMER under No.164435 on 19th December, 2011 who has also issued Cease and Desist notice by plaintiffs on 6th January, 2012. 48.12 Caution Notice published by defendant in respect of mark CH CONTROL under No.582999 in Class 9 on 4th January, 2012. On 9th January, 2012, the defendant filed the application for cancellation in respect of trademark CUTLER-HAMMER under No.164435 before the Registrar of Trade Marks for removal of trademark on various grounds.
49. In view of the abovementioned facts stated in their pleadings, the plaintiffs filed the suit on 8th January, 2012 along with interim application against the BCH Electric Limited being CS(OS) No.156/2012. The defendant filed its written Statement and reply to interim application in suit CS(OS) No.156/2012 on 18th February, 2012. On 3rd March, 2012 the defendant also filed suit against Eaton Corporation and Eaton Power Quality Pvt. Ltd. being CS(OS) No.575/2012 in the High Court of Delhi along with I.A.No.4318/2012 (under Order XXXIX, Rules 1 & 2 CPC). It is also informed that the plaintiff No.1 also filed Rectification Petition for removal of Defendants trademark CH Control bearing No.582999 in Class 09 with the Intellectual Property Appellate Board, Chennai on 20th July, 2012 against the defendant.
50. The details and status of registrations of the parties which are gathered from their pleadings as well as from written submissions are mentioned below:- PLAINTIFFS TRADEMARKS i) : : : : : User : Appr. Off STATUS ii) TM Regd. No. Class Date Adopted : :
16443.”
08. 06.1954 1893 [Pg. 215/222, LOD:
19. 3.12 (Published Book)] 1919 [Pg. 22, LOD:
19. 3.12 (TMJ)] & [Pg. 24/ 28, LOD:19.03.12 (Affidavit]] Kolkata Registered (Legal Proceeding Certificate) TM Regd. No. Class Date Adopt User Appr. Off : : : : : : :
16443.”
08. 06.195”
1919. (Pg. 35, LOD:
14. 05.12) Kolkata iii) TM : Regd. No. :
20563. Class :
9. Date :
03. 11.1961 Adopted :
1960. User : Aug, 1960 (Pg. 36, LOD:
14. 05.12) Appr. Off : Kolkata CURRENT STATUS: Removed (TMJ 149.dated 23.08.2011) iv) TM Regd. No. Class Date Adopted : : : : :
64270.”
11. 10.1994 1994 User : Proposed to be used Appr. Off : Kolkata CURRENT STATUS: Removed. Notified in TMJ 144.(26.01.2010) DEFENDANTS TRADEMARKS i) TM Appln. No. Class Date User Appr. Off Status : : : : : : : TM Appln. No. Class Date User : : : : : Appr. Off Status : : CUTLER-HAMMER 11897