Thermax Limited v. Thermax Engineers Pvt Ltd

1. The Plaintiff – Thermax Limited has filed the present suit seeking permanent injunction restraining infringement of trade mark and trade name, passing off, etc. in respect of its trade name ‘THERMAX’. The case of the Plaintiff is that it had coined and adopted the mark ‘THERMAX’ in 1974 and the same is being used as a trademark, house mark and is also a distinctive and prominent mark of its corporate name. The changes in the constitution of the company – Thermax Ltd, from Thermax India Pvt. Ltd leading up to it becoming a listed company on 9th January, 1995, has been explained in paragraph 4 of the plaint.

2. The mark ‘THERMAX’ is also a registered trademark in India as detailed in paragraph 5 of the plaint in various classes of goods and services. The mark is also registered in several foreign countries such as Bahrain, China, CTM, Egypt, Hong Kong, Indonesia, Israel, Japan, Malaysia, Nepal, Pakistan, Philippines, Qatar, Saudi Arabia, Singapore, Thailand, Turkey, UAR, Vietnam, etc. The details of the said registrations have also been enumerated in paragraph 6 of the plaint. 2019:DHC:3482

3. The Plaintiff company has promoted its business through its website www.thermaxindia.com. It has several international offices across 75 countries and the sales turnover of the Plaintiff is more than Rs.4,000 crores per annum.

4. Sometime in May, 2014, the Plaintiff came to know that the Defendant had started using the corporate name ‘Thermax Engineers Pvt. Ltd’. Further enquiries revealed that the company was incorporated on 30th October, 2012 with the Registrar of Companies, Delhi (hereinafter „ROC‟). Its Memorandum and Articles of Association explain its business areas as being almost identical to that of the Plaintiff, i.e., installation, ducting, fitting, repairing and maintenance of air conditioners and refrigerators, technical consultation, engineering services etc. The Memorandum and Article of Association have been filed on record. According to the Plaintiff, the use of the word ‘THERMAX’ as part of the Defendant’s corporate name is violative of its statutory rights under the Trademark Act, 1999 as the mark ‘THERMAX’ is a well-known mark. The present suit was then filed for seeking reliefs of permanent injunction, delivery up and rendition of accounts. Vide order dated 23rd May, 2014, this Court had granted ex-parte ad-interim injunction in the following terms: “...The contention of the plaintiff‟s counsel is that the use of the identical name and corporate name which forms part of the trade mark THERMAX, which is a registered trade of the plaintiff, is amounting to infringement of trade mark and passing off. He states that it is a well known trade mark. The same is protected under Section 29(4) of the Act. Therefore, the said trade mark is protected in relation to the dissimilar goods. He further states that since the plaintiff‟s trade mark has been used in the defendant's corporate name, therefore, it is also the case of infringement of trade mark within the meaning of Section 29(5) of the Act. As far as delay is concerned, he states that it has come to the notice of the plaintiff only in the month of May, 2014. Therefore, there is no delay on the part of the plaintiff. Notice for the date fixed. Considering the overall facts and circumstances of the case, till the next date of hearing, the defendant is restrained from using the plaintiff‟s trade mark THERMAX as well as part of its corporate name.”

5. The Defendant, thereafter entered appearance and filed its written statement. Vide order dated 24th November, 2016, a submission was made before the Joint Registrar by the Ld. counsel for the Defendant that the Defendant has discontinued its trade name and has adopted a new name. The said order reads as under: “CS(OS) 1555/2014 and IA No.10119/2014 u/O XXXIX R.1&2 CPC moved by plaintiff Learned counsel for defendant has submitted that defendant has discontinued its trade name and has adopted the new name and requisite formalities in this regard have been completed. Learned counsel for plaintiff has stated that in case that be so, an appropriate application u/O XXIII CPC shall be moved shortly. Accordingly re-notify the matter for settlement or in the alternative for admission/denial of documents on 23.02.2017.”

6. Subsequent thereto, the Plaintiff conducted the admission/denial of documents. However, the Defendant failed to conduct the same. Since 14th November, 2018, the Defendant has not appeared before the Joint Registrar on four occasions. Under these circumstances, the case has been listed before this Court.

7. A perusal of the written statement filed by the Defendant shows that the primary defence raised therein is that the Defendant has been able to secure registration by the ROC and hence it is entitled to use the same. The Defendant has relied upon the provisions of the Companies Act, 1956 to state that since the ROC is expected to look into any objectionable name, the grant of registration shows that the ROC has conducted its due diligence before grant of registration of the corporate name.

8. Apart from this defence, the other defence raised is that there is no similarity between ‘Thermax Ltd.’ and ‘Thermax Engineers Pvt. Ltd.’

9. A perusal of the plaint shows that the Plaintiff is the prior user and adopter of the mark ‘THERMAX’ since 1974. The Plaintiff company has been in existence for more than 40 years and it has been using the impugned mark not only in India but in several foreign countries. The Defendant’s defence that the registration by the ROC legitimises the use of the word ‘THERMAX’ as part of its corporate name is no longer res integra. The same has been considered in several judgments including Montari Overseas Ltd. v. Montari Industries Ltd., (1996) 16 PTC 142, Kirloskar Diesel Recon (P) Ltd. v. Kirloskar Proprietary Ltd., AIR 1996 Bom 149, wherein it has been held that the registration by the ROC is not a defence to an infringement or a passing off action. The relevant paragraphs of Montari Overseas Ltd. v. Montari Industries Ltd. (Supra) are extracted below:

8. The view taken by the learned single Judge in that decision, if we may say so with respect, lays down the correct law. Accordingly, we find no force in the submission of the learned counsel for the appellant which is hereby rejected.” This settled legal position has been reiterated in various judgments. The fact that the corporate name of a company can be injuncted in a trade mark infringement and passing off action is conclusively settled in the judgment of the Supreme Court in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147.

10. The mark ‘THERMAX’ is extremely well-known. The services which the Defendant offers as per the Memorandum and Articles of Association are also identical to that of the Plaintiff. Further, as recorded in the order dated 24th November, 2010, the Defendant has already confirmed that it will change its name during the pendency of the present suit. Under these circumstances, no ex-parte evidence needs to be led. Under the provisions of the Commercial Courts Act, 2015, as also in view of the recent judgments of this Court in Everstone Capital Advisors Pvt. Ltd. v. Akansha Sharma, [CS (COMM) 1028/2016, Decided on 17th July, 2018], VRS Foods Ltd. v. Prem Chand, [CS (COMM) 365/2016, Decided on 30th August, 2018] and Super Cassettes Industries Pvt. Ltd. v. M/s. I-Vision Digital LLP, [CS (COMM) 905/2018, Decided on November 12, 2018], ex-parte evidence is not needed in all matters if the issues can be decided on the basis of the pleadings and documents. The relevant portion of Super Cassettes Industries Pvt. Ltd. v. M/s. I-Vision Digital LLP (Supra) is as follows: