Full Text
HIGH COURT OF DELHI
Date of Decision: 7th August, 2023.
ROXTEC AB & ANR ..... Plaintiffs
Through: Mr. J.V. Abhay, Ms. Maidini Phul, Ms. Prakriti Sharma & Mr. Sushain Sobti, Advocates. (M:9910363383)
Through: Mr. Suhail Dutt, Senior Advocate with Mr. Rajesh Roshan, Mr. R.S.
Mittal, Mr. Azhar Alam and Ms. Vatsala Kaushik, Advocates.
JUDGMENT
34 WITH + CS(COMM) 1046/2016 and I.A. 9180/2017 ROXTEC AB & ANR..... Plaintiffs Through: Mr. J.V. Abhay, Ms. Maidini Phul, Ms. Prakriti Sharma & Mr. Sushain Sobti, Advocates.
VERSUS
S CHAKRAVARTY & ORS..... Defendants Through: Mr. Suhail Dutt, Senior Advocate with Mr. Rajesh Roshan, Mr. R.S. Mittal, Mr. Azhar Alam and Ms. Vatsala Kaushik, Advocates. CORAM: JUSTICE PRATHIBA M. SINGH Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode. I.A. 550/2017 in CS(COMM) 1045/2016
2. This is an application under Section 124 of the Trade Mark Act, 1999 seeking permission to file rectification/cancellation petitions in respect of the registered trademarks of the Plaintiffs.
3. The Plaintiff No. 2 - Roxtec India Private Limited is a wholly owned subsidiary of the Plaintiff No. 1- Roxtec AB and is responsible for carrying out the Roxtec group's business activities in India. The details of the Plaintiffs’ registered trademarks in India are as under: Trademark Registration No. Classes Date of Registration 1080575 6 14th February 1080577 19 14th February 1080578 17 14th February 1815482 6, 17, 19 6th May 2009 We Seal Your World 1794058 6, 17, 19 9th March Peeling Hands (Device Mark) 1296552 6, 17, 19 16th July 2004 ComSeal 1708762 6, 17, 19 9th July, 2008
4. The case of the Defendants is that the aforementioned trademarks are liable to be rectified/ cancelled as the same are attempting to monopolize the rubber module logo, the slogan ‘WE SEAL YOUR WORLD’ for a sealing product and ‘PEELING HANDS’ (DEVICE) mark to show how the central opening in the rubber module is to be opened.
5. Mr.Suhail Dutt, ld. Sr. Counsel for the Defendants submits that there cannot be any monopoly on the rubber module logo as the same is used by almost all manufacturers and sellers of cable sealing solutions. On the other hand, ld. Counsel for the Plaintiffs submits that the said logo cannot be termed as a rubber module logo as, it is a ‘BULLS EYE’ device mark which is exclusively associated with the Plaintiffs and is registered in India and Australia. He submits that the Defendants have copied the design of the Plaintiff and the ‘BULLS EYE’ device mark thereby, misrepresenting to the public that its products are as good or equivalent to the Plaintiffs’ product. It is further submitted by the Plaintiffs that the Defendants have also copied the drawings and presentations of the Plaintiffs.
6. The Court has perused the physical products of the parties which have been shown to the Court. It is seen that the rubber module logo is a circular device mark with concentric circles and the opening in the middle is meant for insertion of the cables. The said depiction is the subject matter of trademark registration no. 1815482.
7. Insofar as the slogan ‘WE SEAL YOUR WORLD’ bearing trademark registration no 1794058 is concerned, the said slogan would give a monopoly in respect of the entire slogan and not on the individual words which are registered as ordinary words from the English language. The position is clearly settled in FAO (OS) 131/2012 titled Colgate Palmolive Company & Anr v. Anchor Health & Beauty Care Pvt. Ltd., whereby the ld. Division Bench of this Court held that advertising expressions and slogans are registrable as trademarks: “13.….. The learned Single Judge in the present case felt that the fundamental ground on which the suit is based would remain the same even if the proposed amendment is allowed- because both were premised on Colgate's use of the term "All round". This court is of the opinion that this was a rather simplistic approach to the matter. The suit as framed complained that Colgate's description of the product was a problem, but not as a trademark. In other words, the complaint was that Colgate's highlighting that its toothpaste helped in All around decay protection trenched upon some vague undefined right that the plaintiff had in relation to the expression "All round" protection. When the suit was filed, Anchor itself was facing several suits preferred by Colgate. Anchor’s action was curious – it did not say that Colgate passed off Anchor’s products as their own but only that the description by which Colgate advertised its products was problematic for Anchor. Anchor significantly did not state a word about its pending claim for registration made in 2005 of the term “All round” (the tenability of which we shall desist from commenting upon). Nor did it bring up ever in any pleading or document, for long after the registration was granted on 26.08.2008. It only disclosed the fact of registration during the hearing of the interim injunction application before the Court.
14. Where the learned Single Judge went wrong, in our opinion, was in assuming that since the cause of action or controversy involved remained in respect of use of the term "All round"- which remained unchanged, no prejudice could be caused. But there is a world of difference between a claim to trade dress protection-not even passing off- where the defendant is alleged to be using certain words that can potentially be common to the trade, and an infringement action. The latter is based on a statutory right. If the plaintiff proves the essential prerequisites, i.e. deceptive similarity, infringement is presumed (Section 29 (3) of the Trademarks Act). Furthermore, infringement is also an offence punishable with fine or even a prison term. Here the plaintiff Anchor's amended suit claims infringement right from the time of the application- i.e. 2005, entirely based on the registration granted in 2008. By not seeking leave at the earliest point in time, and choosing to remain silent, the plaintiff Anchor in fact allowed the time prescribed for claiming injunction - in respect of the period between 2008 and 2011 to lapse. The learned Single Judge's assumption that infringement is a continuing cause of action in this context is entirely inaccurate. An infringement action was well within the reasonable contemplation of the plaintiff, which deliberately slept over its rights and woke up after the normal time prescribed for infringement action ended. Furthermore, Anchor did not claim only permanent injunction in the suit (as originally framed) it even sought a hefty amount in damages (5 crores). ……..
16. This court is of the opinion that the learned Single Judge, for the foregoing reasons, fell into error in holding that no prejudice was caused by the amendment to Colgate's defense; it was so prejudiced by the alteration of the nature of the suit to one of infringement, which is fundamentally and radically different from the original cause of action on which Anchor's suit was premised.”
8. Thus, if the Defendants wishes to use WE, SEAL, YOUR, WORLD in a disjunctive manner as words per se in a different combination in the form of a slogan, they are free to do so. The registration would be confined to the slogan as it is and there shall be no monopoly on the individual words per se.
9. The ‘PEELING HANDS’ (DEVICE) mark is an artistic expression made by the Plaintiffs for the purpose of showing how to peel the central portion of the rubber module device. It is submitted that this artistic expression has been copied in the presentation fully by the Defendant.
10. The peeling hands device mark, in the manner in which it represented, in the prima facie view of the Court, is incapable of distinguishing the Plaintiff’s goods from other goods. This is at best an artistic depiction.
11. Insofar as the other three trademarks bearing trademark registration nos. 1080575, 1080577 and 1080578 extracted above are concerned, they are used with the mark ‘ROXTEC’. One of the trademarks being registration nos. 1080577 consist of the following disclaimer: "Registration of this Trade Mark shall give no right to the exclusive use of the DEVICE". It is accordingly clarified that the said disclaimer shall also apply to the other two trademarks, namely, 1080575 and 1080578.
12. In view of the aforementioned discussion, the application under Section 124 is disposed of in the following terms: a. insofar as the rubber module logo and the ‘PEELING HANDS’ (DEVICE) mark bearing trademark bearing registration nos. 1815482 and 1296552 are concerned, prima facie, they are vulnerable and the Defendants are permitted to file cancellation/ rectification petitions. b. Insofar as the slogan ‘WE SEAL YOUR WORLD’ bearing trademark registration no 1794058 is concerned, the registration is confined to the entire slogan and there shall be no monopoly on the individual words per se. c. In respect of trademark registration nos. 1080575, 1080577 and 1080578, the disclaimer “Registration of this Trade Mark shall give no right to the exclusive use of the DEVICE” shall operate qua all three trade marks.
13. The Defendant may file the rectification/cancellation petitions within 8 weeks as per (a) above.
14. List before the Joint Registrar on 5th October, 2023 for completion of pleadings in the rectification/cancellation petitions and admission/denial. I.A. 14363/2015 in CS(COMM) 1045/2016
15. The present application has been filed by the Plaintiffs seeking adinterim injunction restraining the Defendants, from infringing the Plaintiffs' rights in the aforementioned registered trademark bearing nos.1815482, 1794058, 129552 1080575, 1080577 and 1080578.
16. List this application for hearing on 8th January, 2024. I.A. 9180/2017 (u/O 1 Rule 10 CPC) in CS(COMM) 1046/2016
17. The nature of the present suit is that Plaintiff No.1, a Swedish company has sought a permanent injunction restraining infringement of registered designs bearing nos. 214370, 214368 and 214371. The Plaintiff No.2 has been described as a wholly owned subsidiary responsible for carrying out the Roxtec group’s business activities in India.
18. This is an application under Order 1 Rule 10 CPC filed by the Defendants seeking deletion of Roxtec India Private Limited as Plaintiff No.2.
19. The submission of Mr. Suhail Dutt, ld. Senior Counsel for the Defendants is that the suit for infringement of design by the wholly owned subsidiary of the Plaintiff No.1 in India cannot be maintained under Sec. 22 as also Section 30 of the of the Designs Act, 2000 unless and until the assignment/licence is registered with the Design office. Thus, the suit at the instance of the Indian company i.e., Plaintiff No.2 would not be maintainable, and Plaintiff No.2 deserves to be deleted. Reliance is placed on the decision of this Court in Amit Jain v. Ayurveda Herbal & Ors. [2015:DHC: 3758] to argue that the registration of an assignment is mandatory in law.
20. On the other hand, Mr. Abhay, ld. Counsel appearing for the Plaintiff, points out that under Section 30 of the Designs Act, 2000 the discretion vests in the party whether to register the licence/ assignment or not. In any event, he submits that the Court can always permit any person to produce a licence as per Section 30(5) of the said act. He also highlights the fact that in Section 30(1) and Section 30(2), the language used is ‘may make an application’ and not ‘shall’.
21. The Court has heard the ld. Counsels for the parties and perused the record.
22. A reading of the plaint would show that the Plaintiffs have, apart from relying upon the design registrations in favour of the Plaintiff No.1 also given the sales figures of the Plaintiff No.1 globally and of Plaintiff No.2 in India including the promotional expenses.
23. It is not in dispute in the plaint that the Plaintiff No.1 is the owner of the registered designs which have now lapsed. In this background, the Defendants seeks deletion of Plaintiff No.2 from the array of parties. One of the reliefs sought in the plaint is for delivery up as also rendition of accounts of profits and damages. Plaintiff No.2 has been impleaded in its capacity not as the registered owner of the design but as the wholly owned subsidiary of the Plaintiff No.1 which may be required to establish its sales, promotional expenses and extent of business carried out in India in respect of the products in question. For the said purpose, it cannot be said that the suit by Plaintiff No.2 prima facie cannot be maintained. The Plaintiff No.2 could be a necessary and proper party in the present suit inasmuch as evidence and records from Plaintiff No.2 would be relevant in adjudicating the issues of damages and rendition of accounts.
24. Further, in the judgment of Amit Jain (Supra) cited by ld. Senior Counsel for the Defendants, the suit was filed by only one party which claimed to be the assignee of the design. It was in that context that this Court held that in case of an assignment of a design, in order to maintain a suit for infringement, the assignment ought to be registered mandatorily. In the present suit however, the registered owner of the design is Plaintiff no.1 and Plaintiff no.2 is supporting the case of Plaintiff no.1. The facts are thus clearly distinguishable.
25. In view thereof, at this stage, this Court is not inclined to delete Plaintiff No.2 from the array of parties. However, an issue is framed to the following effect: “Whether the Plaintiff No.2 is a necessary and proper party in the present suit? OPD”
26. The above issue shall be adjudicated at the final stage. Accordingly, this application is disposed of. CS(COMM) 1045/2016 CS(COMM) 1046/2016
27. List before the Joint Registrar for completion of admission/denial on 5th October, 2023.
28. List before the Court for case management on 8th January, 2024.
PRATHIBA M. SINGH JUDGE AUGUST 7, 2023 dj/rahul/kt