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IN THE HIGH COURT OF DELHI AT NEW DELHI
VALMIKI J. MEHTA, J.
Superon Schweisstechnik India Limited – Plaintiff
Versus
Modi Hitech India Ltd. – Defendant
CS(COMM) No.750 of 2018
Decided On : 02-04-2018
COMMERCIAL SUIT - DISMISSAL - NO REAL PROSPECT OF SUCCESS - PASSING OFF - DESCRIPTIVE TRADEMARK - INFRINGEMENT - SECTION 9, 30, 35 OF THE TRADE MARKS ACT, 1999 - ORDER XIII-A CPC.
Fact of the Case:
Plaintiff, a manufacturer of welding electrodes, filed a suit against the defendant for infringement of its trademark VAC-PAC and passing off. The plaintiff claimed that it had been using the trademark VAC-PAC since 2004 and that the defendant had recently started using an identical trademark for the same goods. The plaintiff also claimed that the defendant's packaging was similar to its own, and that this was likely to cause confusion among consumers.
Finding of the Court:
The court found that the plaintiff's trademark VAC-PAC was not distinctive and that it was merely a descriptive term for the plaintiff's product. The court also found that the defendant's packaging was not similar to the plaintiff's packaging. The court held that the plaintiff had no real prospect of succeeding in its claim for infringement or passing off, and it dismissed the suit.
Issues: 1. Whether the plaintiff's trademark VAC-PAC was distinctive and entitled to protection. 2. Whether the defendant's use of the trademark VAC-PAC was likely to cause confusion among consumers. 3. Whether the defendant's packaging was similar to the plaintiff's packaging.
Ratio Decidendi: 1. The court held that the plaintiff's trademark VAC-PAC was not distinctive and that it was merely a descriptive term for the plaintiff's product. The court relied on the provisions of Sections 9, 30, and 35 of the Trade Marks Act, 1999, which prohibit the registration of trademarks that are descriptive of the goods or services for which they are used. 2. The court held that the defendant's use of the trademark VAC-PAC was not likely to cause confusion among consumers. The court found that the defendant's packaging was not similar to the plaintiff's packaging, and that the defendant's trademark was used in a different manner than the plaintiff's trademark.
Final Decision: The court dismissed the plaintiff's suit for infringement and passing off.
VALMIKI J. MEHTA, J.
I.A. Nos.3994-95/2018 (exemption)
Exemption allowed subject to just exceptions.
I.A.s stand disposed of.
CS(COMM) No.750/2018 and I.A.Nos.3992/2018 (stay) & 3993/2018 (under Order XXVI Rule 9 CPC)
1. This suit comes up for admission today. By the suit plaintiff seeks the reliefs of injunction, delivery, rendition of accounts and damages by pleading that the plaintiff is the owner of the trademark VAC-PAC and that the defendant is using an identical trademark VAC-PAC and that too with respect to the same goods of the plaintiff being welding electrodes. As per the plaint the plaintiff is engaged in the manufacturing of conventional welding electrodes. Plaintiff is also as per the plaint engaged in the business of repair and reclamation of welding electrodes. The plaintiff is engaged in manufacturing in collaboration with Kjellberg Finsterwalde, Germany. Plaintiff is also engaged in manufacturing of fire suppression systems coatings, fire barriers, etc and various other products as detailed in para 5 of the plaint.
2 (i). As per para 8 of the plaint, the plaintiff company has its well known trademark of SUPERON under which the plaintiff sells its goods, and along with this trademark SUPERON the plaintiff also claims to have adopted from the year 2004 the trademark of VACPAC. The trademark VAC-PAC is said to have been coined, conceived and adopted by the plaintiff with respect to its products and which trademark is an arbitrary and fanciful trademark as per the plaintiff. Since the trademark is said to be an arbitrary and fanciful trademark, hence the plaintiff claims that plaintiff is entitled to high degree of protection.
(ii) As per para 9 of the plaint the plaintiff claims that plaintiff is using the trademarks in distinctive and unique get up, set up, lettering style etc. Plaintiff also claims to be the owner and proprietor of artistic work involved in trademark VAC-PAC. Plaintiff claims to be the owner of the trademark VAC-PAC along with its various other features contained in the label on account of prior adoption and continuous user of this trademark VAC-PAC.
(iii) As per para 17 of the plaint, plaintiff claims to be exporting its goods under the trademark VAC-PAC to about 70 countries. Para 17 of the plaint also gives the detail of various dealers appointed by the plaintiff in India which number to 35.
(iv) In para 18 of the plaint the plaintiff has given its year-wise details of sale from year 2004-2005 to the year 2016-2017. The sales of the plaintiff in the year 2004-2005 were said to be Rs.1,76,31,937/- and in the year 2016-2017 the sales became Rs.3,13,14,84,815/-.
(v) Plaintiff pleads that the defendant has dishonestly adopted an identical trademark VAC-PAC for the same goods being welding electrodes sold by the plaintiff and this adoption of the defendant of trademark VAC-PAC is completely dishonest. Hence, the plaintiff claims the following reliefs in the suit:-
“(a) For a decree of permanent injunction restraining the defendant by themselves as also through their directors, proprietors, partners (if any), agents, servants, assigns, representatives, successors, distributors and all others acting for and on their behalf from using, selling, offering for sale, advertising or displaying directly or indirectly or dealing in any other manner or mode in welding electrodes and all allied and cognate goods/products under the impugned trade mark/label VAC-PAC or any other trade mark/label identical with or deceptively similar to the plaintiff‘s trade mark/label amounting to or resulting in passing off and violation of the plaintiff‘s said trademark/label VAC-PAC;
(b) For an order for delivery up of all the defendant impugned goods and business bearing the impugned trade mark/label including packing material, pouches, carton boxes, carry bags, finished and unfinished goods, boxes, stickers, or any other incriminating material including display boards and sign boards and trade literature to the plaintiff f
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