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IN THE HIGH COURT OF DELHI AT NEW DELHI
BADAR DURREZ AHMED, VIBHU BAKHRU, JJ.
BCH Electric Limited - Appellant
Versus
Eaton Corporation & Anr. - Respondents
FAO(OS) 409/2013 & CM No. 14306/2013
FAO(OS) 488/2013 & CM No. 17017/2013 & 17020/2013
Decided On : 03-06-2016
Civil Procedure Code, 1908 - Order 39 Rule 1, 2 - Trademark and Merchandise Marks Act, 1958 - Section 30(1)(b) - Trademarks - Trade name - Violation - Interim injunctions - In terms of the "Licence & Technical Service Agreement" - No royalty or charges was payable by BEL for such use - BEL was obliged to discontinue such trademark on termination of the licence term - Prior to the expiry of the term of the "Licence & Technical Service Agreement" parties had negotiated other agreements - No clause was included relating to the trademarks in those agreements - Matter relating to trademarks would be governed by the earlier agreements - Parties were enjoying certain business relationship and BEL had confirmed that insofar as trademarks are concerned earlier agreements would govern their use - Eaton was aware that BEL had applied for registration of the trademark CH Control Black in 1999 and yet had not filed any opposition - There is delay on the part of Eaton to institute the action - Held, it does not follow that Eaton had encouraged infringement of its trademarks - Conduct of BEL deceitful - BEL had applied for registration of various trademarks - and had also obtained the registration of CH Control Black - on a misrepresentation as to its user - No reason to differ from that view.
Trade Marks and Merchandise Marks Act, 1958 - Section 30(1)(b) - Civil Procedure Code, 1908 - Order 39 Rule 1, 2 - Trade mark - Licensee - Right of licensee - Trade mark Cutler/Hammer was used by BEL as a licensee and not as a proprietor - As per agreements BEL was never the proprietor of the trade name Cutler Hammer - BEL was licensed to use the marks - In terms of the arrangement, had unequivocally accepted the ownership of the marks to be that of Eaton - BEL had used the trademarks belonging to Cutler-Hammer - Trademarks were important for its business - Even after the term of the "Licence & Technical Service Agreement" and the "Registered User Agreement" expired - BEL did not refrain from using the trademarks - Eaton did not object to such use - That would not constitute BEL as the owner of trademarks and any endeavour to claim their ownership at the material time would prima facie amount to usurping Eaton's property - Held, it is not possible to accept BEL's claim of ownership by way of its user even for the period when it was a licensee.
Vibhu Bakhru, J.
1. The appellant, BCH Electric Limited (hereafter 'BEL'), has filed the present appeals impugning a common order dated 01.07.2013 (hereafter 'the impugned order') passed by a Single Judge of this Court in I.A. No. 1204/2012 in CS(OS) 156/2012 captioned "Eaton Corporation & Anr. v. BCH Electric Limited" and I.A. No. 4318/2012 in CS(OS) 575/2012 captioned "BCH Electric Limited v. Eaton Corporation & Anr.". Both the said applications were filed under Order XXXIX Rule 1 & 2 of Code of Civil Procedure, 1908 seeking interim injunctions in relation to certain trademarks. CS(OS) No.156/2012, accompanied by the interim application I.A. No. 1204/2012, was filed on 18.01.2012 by Eaton Corporation and its Indian subsidiary Eaton Power Quality Pvt. Ltd. (Respondent nos.1 & 2 herein), inter alia, praying as under:-
"That a decree of permanent injunction restraining the defendant, their servants, agents, distributors, dealers, associates, representatives and all others acting for and on their behalf from manufacturing and selling, offering for sale, directly or indirectly dealing in electric goods included in class 9 and/or any other cognate or allied goods or the goods of the same description under the impugned arrangement and/or marks CUTLER-HAMMER, BHARTIA CUTLERHAMMER, CH(logo) or CH CONTROL or any other mark as may be identical and/or deceptively similar to the plaintiffs' trade mark CUTLER-HAMMER registered under no. 164435 in Class 9 amounting to infringement thereof."
2. BEL filed its written statement to the plaint and a reply to I.A. No. 1204/2012 in CS(OS) 156/2012 on 18.02.2012. Thereafter, BEL also filed a suit against respondent nos. 1 & 2 on 03.03.2012 being CS(OS) 575/2012, inter alia, praying as under:-
"(b) Pass and pronounce a decree of permanent/perpetual injunction restraining Defendants, its promoters, directors, assigns, successors-in-interest, licensees, franchisees, partners, representatives, servants, distributors, dealers, employees, agents etc. or anyone associated with it from using the mark/s CUTLER-HAMMER and/or any mark identical or deceptively similar to Plaintiff's trade marks/logos CUTLER-HAMMER, BHARTIA CUTLER-HAMMER, in any manner so as to pass off or enable others to pass off their goods or business as that of Plaintiff or in some way connected with Plaintiff;
(c) Pass and pronounce a decree of permanent/perpetual injunction restraining Defendants, its promoters, directors, assigns, successors-in-interest, licensees, franchisees, partners, representatives, servants, distributors, dealers, employees, agents etc. or any associated with it from claiming and representing itself as the proprietor of the trade marks CUTLER-HAMMER and variants thereof in India;”
3. The disputes involved in that present petition relate to the use of the following trademarks:-
CUTLER HAMMER
Registered by Eaton Corporation with registration No. 164435 (hereafter referred to as "Cutler/Hammer")
BHARTIA CUTLER-HAMMER
Registration applied for by BEL under application No. 1562940 (hereafter referred to as "Bhartia Cutler-Hammer")
CUTLER-HAMMER
Registration applied for by BEL under application No. 1189782 (hereafter referred to as
"Cutler-Hammer")
CUTLER-HAMMER (hereafter referred to as "CH Cutler-Hammer")
Registered by BEL under registration No. 582999 (hereafter referred to as "CH Control Black")
Registered by Eaton Corporation with under registration No. 205632 (hereafter referred to as "CH Control")
Registration applied for by BEL under an application number 1562938 (hereafter referred to as "Bhartia CH Control")
Registered by Eaton Corporation under registration No.164434 (hereafter referred to as "CH Label")
Registered by Eaton Corporation under registration No. 642706 (hereafter referred to as "CH Logo")
4. It is not in dispute that the trademarks Cutler/Hammer, CH Label and CH Control belonged to Eaton Corporation and/or its predecessor (hereafter, in certain context, Eaton Corporation including its predecessor and affi
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