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2017 Supreme(Del) 4089
IN THE HIGH COURT OF DELHI AT NEW DELHI
YOGESH KHANNA, J.
Helamin Technology Holding Sa & Anr. – Plaintiffs
Versus
Haribansh Rai & Ors. – Defendants
CS(COMM) 1492 of 2016 & IA No.26197 of 2015
Decided On : 13-11-2017
For the Plaintiffs :Mr.Pravin Anand, Ms.Abhilasha Nautiyal and Ms.Pankhuri Malik, Advocates
Trademark infringement and passing off of goods can lead to injunction and damages against the infringing party, as per the Trade Mark Act, 1999.
Headnote:
Trademark Infringement - Intellectual Property - [Trade Mark Act, 1999, Section 2(1)(zb), Section 29, Section 134] - The court discussed the provisions of the Trade Mark Act, 1999, particularly Section 2(1)(zb) defining 'trade mark', Section 29 regarding infringement of registered trade marks, and Section 134 regarding the burden of proof in certain cases. The court emphasized the protection and rights granted to the trademark owner, the definition of infringement, and the burden of proof in trademark infringement cases.
Fact of the Case:
The plaintiffs, a Swiss company and its subsidiary, were the world leaders in the development, production, and marketing of specific scale corrosion inhibitors. They had been using the trademark 'HELAMIN' since 1986 and had acquired tremendous reputation and goodwill. The defendants were found to be procuring, importing, and selling counterfeit HELAMIN products, misleading the public and causing damage to the plaintiffs.
Finding of the Court:
The court found that the defendants had taken unfair advantage of the plaintiffs' reputation and goodwill, passing off their impugned goods as those of the plaintiffs, and causing damage to the plaintiffs.
Issues: The issues involved trademark infringement, passing off, and seeking injunction against the defendants from using the HELAMIN trademark or any deceptively similar mark.
Ratio Decidendi: The court held that the defendants' actions constituted trademark infringement and passing off, causing damage to the plaintiffs' reputation and goodwill.
Final Decision: The court decreed in favor of the plaintiffs, granting injunction against the defendants from manufacturing, selling, offering for sale, distributing, importing/exporting, advertising products/service bearing plaintiff No.1's trademark HELAMIN or any deceptively similar mark, and awarded costs of the suit in favor of the plaintiff and against the defendants.
YOGESH KHANNA, J.
1. Brief facts of the case as per the plaint are:-
(a) that the plaintiff No.1 is a limited Company Incorporated under the laws of Switzerland and is the world leader in development, production and marketing of specific scale corrosion inhibitors used in water-steam and heating circuits/steam generators, warm and hot water networks, boilers, turbines, cooling systems etc. The plaintiff No. 1 began its commercial operations in 1986 when the trademark and the name 'HELAMIN' was first used in the course of trade;
(b) plaintiff No.2 is the wholly-owned subsidiary and the manufacturing and world export branch of plaintiff No.l and uses the trademark and trade name HELAMIN under the license from plaintiff No.l. Plaintiff No.2 was founded on 11th May, 1989 and is a limited Company incorporated under the laws of France;
(c) plaintiff No. 1 is the pioneer and inventor of a revolutionary polyamines filming technology to prevent scale and corrosion in water steam cycle systems (turbines included) as well as in cooling systems. The plaintiffs' products serve to form a continuous and hydrophobic protective film on metal surfaces, thus acting as a barrier between water and metal to prevent corrosion;
(d) the plaintiff No.l has a strong international commercial presence in over 40 countries across the world including India and has a leading share in its specific market segment within the global water treatment chemicals market. The plaintiff No.l's products are sold through an integrated distribution network supported by the plaintiff's international distributors in several countries;
(e) the plaintiffs have been using the trademarks HELAMIN 906 H and HELAMIN BRW 150 H since the year 1993 and the trademark HELAMIN 90 H-TURB since the year 2002. The plaintiff No.l's trademark HELAMIN is coined from 'Helvetia' (the Latin name for Switzerland) and 'Polyamin' which denotes a chemical compound comprising of multiple amino groups;
(f) the plaintiff No.l had applied for registration of the trademark HELAMIN in India under application No.1717404 in relation to chemicals used in industry and chemical products for the protection of metallic surfaces" in classes 1 and 2 respectively, as of 1st August, 2008;
(g) as a result of long and continuous use since the year 1986, coupled with extensive sales spanning over wide geographical area, the trademark/name HELAMIN has acquired tremendous reputation and goodwill amongst the customers and the members of the trade all over the world and has become distinctive of the plaintiffs. The well-known character of the plaintiffs' trademark/name HELAMIN is reflected from the plaintiffs' worldwide consolidated sales turnover from 2000 to 2011 which averaged approximately US $10,000,000 per year. The worldwide consolidated advertisement expenses for the plaintiff's HELAMIN products from 2000-2011 aggregates to approximately US$300,000;
(h) in 2001, defendant No. 3 began working with Helamin Technology Holding Group (HTHG) as a technical consultant for their UAE market. During his course of employment with the plaintiffs, he had access to confidential information as well as end user customer know-how and received technical training pertaining to the working and applications of HELAMIN water treatment chemicals;
(i) on 28th June, 2001, defendant No. 6 Helamin Impex Pvt. Ltd. was incorporated at the initiative of defendant No. 3 as the CEO. Thereafter, an informal agreement was arrived at between Filtro S.A. (international distributor of plaintiff No. 1 at the time) and defendant No.6 for supply of samples of original HELAMIN products for the purpose of trial tests only;
(j) defendant No. 6 reported additional trials and surreptitiously continued to obtain HELAMIN samples from Filtro S.A. to conduct further trial tests. Defendant No.7, who is the director of defendant No.8 i.e H20 Facilities SA left Filtro SA in December, 2006 and had misappropriated and forged letter heads and stamps of Filtro SA;
(k) in
