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2015 Supreme(Del) 4626
IN THE HIGH COURT OF DELHI
Manmohan Singh, J.
Innovolt Inc. - Appellant
Versus
Kevin Power Solutions Ltd. - Respondent
I.A. No. 5018 OF 2013 in CS(OS) No. 573 OF 2013
Decided On : 23-11-2015
For the Appellant :Sudhanshu Batra, Senior Advocate, Amitabh Sen, Malyashree Sridharan and Shailesh Rana, Advocates
For the Respondent:Shailen Bhatia, Amit Jain and Priti, Advocates
Headnote:
INNOVOLT - PASSING OFF - INJUNCTION - TRADEMARK - [PLAINTIFF] - [DEFENDANT] - THE PLAINTIFF IS THE PRIOR ADOPTER AND USER OF THE MARK "INNOVOLT" IN THE FIELD OF VOLTAGE SURGE PROTECTORS AND VOLTAGE SURGE SUPPRESSORS IN INTERNATIONAL CLASS 9. THE DEFENDANT HAS ADOPTED THE TRADEMARK INNOVOLT FROM FEBRUARY, 2011 AND HAS STARTED USING THE SAME THEREAFTER. THE PLAINTIFF HAS BEEN ABLE TO MAKE OUT EVEN A CASE OF TRANS-BORDER REPUTATION AS WELL AS THE PRIOR USER OF THE MARK INNOVOLT. THE TWO LOGOS USED BY THE PARTIES ARE AS UNDER: PLAINTIFF’S LOGO DEFENDANT’S LOGO THE SAID LOGO WAS ADOPTED BY THE PLAINTIFF WAY BACK IN 2008. THE DEFENDANT HAS TAKEN THE SCRIPT OF THE "LIGHTNING BOLT' FROM THE PLAINTIFF'S LOGO/MARK. IT IS NOT IMPOSSIBLE THAT THE DEFENDANT COULD HAVE COINED THE WORD "INNOVOLT" AS WELL AS THE LOGO WITH THE EXACT PECULIAR/DISTINCT LIGHTNING BOLT DUE TO WHICH IT GETS ITS DISTINCTIVENESS. THE DEFENDANT IS NOT THE PROPRIETOR OF THE MARK. IT HAS USED THE TRADEMARK SUBSEQUENT TO THE USE OF THE PLAINTIFF. THERE IS NO FORCE IF THE APPLICATION FILED BY THE PLAINTIFF AFTER THE APPLICATION OF THE DEFENDANT AS PROPOSED TO BE USED. THE PLAINTIFF CANNOT MAKE THE INCORRECT STATEMENT IN THE APPLICATION. IN FACT, EARLIER THE PLAINTIFF WAS EXPORTING THE GOODS IN INDIA AGAINST THE ORDERS. THE PLAINTIFF IS TAKING THE ADVANTAGE OF PRIOR USER IN OVERSEAS COUNTRIES FOR WHICH THEY ARE ENTITLED UNDER THE LAW. THEREFORE, IT DOES NOT MAKE ANY DIFFERENCE IF IN INDIA THE USER CLAIMED AS PROPOSED TO BE USED. THE DECISION REFERRED BY THE COUNSEL IN THE CASE OF PIONEER NUTS AND BOLTS PVT. LTD.'S CASE (SUPRA) DOES NOT HELP HIM AS THESE FACTS OF FOREIGN USER WERE NOT AVAILABLE IN THAT CASE. IN THIS REGARD, IT IS SETTLED LAW FOR INJUNCTION OF PASSING OFF THAT WHILE CONSIDERING THE APPLICATION FOR INJUNCTION, THE COURT HAS TO SEE WHO IS THE PRIOR USER OF THE MARK IN QUESTION. THE PLAINTIFF ON THE FACE OF IT IS THE PRIOR ADOPTER AND USER OF THE MARK "INNOVOLT" IN THE FIELD OF VOLTAGE SURGE PROTECTORS AND VOLTAGE SURGE SUPPRESSORS IN INTERNATIONAL CLASS 9.
Fact of the Case:
THE PLAINTIFF HAS FILED THE SUIT FOR PASSING OFF ON THE BASIS OF PRIOR USER AND ADOPTER OF THE MARK "INNOVOLT". THE PLAINTIFF CLAIMS THAT THEY ARE THE PROPRIETOR OF THE MARK, AS IT IS A COINED MARK WHICH CANNOT BE APPROPRIATED BY THE DEFENDANT IN RELATION TO SAME DESCRIPTION OF ALLEGED AND COGNATE GOODS.
Finding of the Court:
THE PLAINTIFF IS THE PRIOR ADOPTER AND USER OF THE MARK "INNOVOLT" IN THE FIELD OF VOLTAGE SURGE PROTECTORS AND VOLTAGE SURGE SUPPRESSORS IN INTERNATIONAL CLASS 9. THE DEFENDANT HAS ADOPTED THE TRADEMARK INNOVOLT FROM FEBRUARY, 2011 AND HAS STARTED USING THE SAME THEREAFTER. THE PLAINTIFF HAS BEEN ABLE TO MAKE OUT EVEN A CASE OF TRANS-BORDER REPUTATION AS WELL AS THE PRIOR USER OF THE MARK INNOVOLT. THE TWO LOGOS USED BY THE PARTIES ARE AS UNDER: PLAINTIFF’S LOGO DEFENDANT’S LOGO THE SAID LOGO WAS ADOPTED BY THE PLAINTIFF WAY BACK IN 2008. THE DEFENDANT HAS TAKEN THE SCRIPT OF THE "LIGHTNING BOLT' FROM THE PLAINTIFF'S LOGO/MARK. IT IS NOT IMPOSSIBLE THAT THE DEFENDANT COULD HAVE COINED THE WORD "INNOVOLT" AS WELL AS THE LOGO WITH THE EXACT PECULIAR/DISTINCT LIGHTNING BOLT DUE TO WHICH IT GETS ITS DISTINCTIVENESS. THE DEFENDANT IS NOT THE PROPRIETOR OF THE MARK. IT HAS USED THE TRADEMARK SUBSEQUENT TO THE USE OF THE PLAINTIFF. THERE IS NO FORCE IF THE APPLICATION FILED BY THE PLAINTIFF AFTER THE APPLICATION OF THE DEFENDANT AS PROPOSED TO BE USED. THE PLAINTIFF CANNOT MAKE THE INCORRECT STATEMENT IN THE APPLICATION. IN FACT, EARLIER THE PLAINTIFF WAS EXPORTING THE GOODS IN INDIA AGAINST THE ORDERS. THE PLAINTIFF IS TAKING THE ADVANTAGE OF PRIOR USER IN OVERSEAS COUNTRIES FOR WHICH THEY ARE ENTITLED UNDER THE LAW. THEREFORE, IT DOES NOT MAKE ANY DIFFERENCE IF IN INDIA THE USER CLAIMED AS PROPOSED TO BE USED. THE DECISION REFERRED BY THE COUNSEL IN THE CASE OF PIONEER NUTS AND BOLTS PVT. LTD.'S CASE (SUPRA) DOES NOT HELP HIM AS THESE FACTS OF FOREIGN USER WERE NOT AVAILABLE IN THAT CASE. IN THIS REGARD, IT IS SETTLED LAW FOR INJUNCTION OF PASSING OFF THAT WHILE CONSIDERING THE APPLICATION FOR INJUNCTION, THE COURT HAS TO SEE WHO IS THE PRIOR USER OF THE MARK IN QUESTION. THE PLAINTIFF ON THE FACE OF IT IS THE PRIOR ADOPTER AND USER OF THE MARK "INNOVOLT" IN THE FIELD OF VOLTAGE SURGE PROTECTORS AND VOLTAGE SURGE SUPPRESSORS IN INTERNATIONAL CLASS 9.
Issues: WHETHER THE PLAINTIFF IS THE PRIOR ADOPTER AND USER OF THE MARK "INNOVOLT" IN THE FIELD OF VOLTAGE SURGE PROTECTORS AND VOLTAGE SURGE SUPPRESSORS IN INTERNATIONAL CLASS 9.
Ratio Decidendi: THE REAL TEST FOR ESTABLISHING PRIOR USE IS TO DETERMINE WHO IS FIRST IN THE WORLD MARKET. MERELY BEING FIRST PAST THE POST IN INDIA IS NOT ENOUGH AND WHAT IS REQUIRED TO BE SEEN IS WHO WAS FIRST PAST THE POST WORLDWIDE.
Final Decision: TILL THE FINAL DISPOSAL OF THE SUIT, THE DEFENDANT IS RESTRAINED FROM USING THE PLAINTIFF'S MARK INNOVOLT OR ANY OTHER MARK DECEPTIVELY SIMILAR TO THE MARK INNOVOLT IN RESPECT OF ANY SERVICES, IN THE COURSE OF BUSINESS OR OTHERWISE, EITHER PERSONALLY OR THROUGH ITS AGENTS, REPRESENTATIVES, EMPLOYEES, SERVANTS, AGENTS, ASSIGNS ETC. IN ANY MANNER WHATSOEVER DIRECTLY OR INDIRECTLY. HOWEVER, SINCE THE DEFENDANT HAS BEEN USING THE TRADEMARK INNOVOLT FOR THE LAST MORE THAN 4 YEARS, THE DEFENDANT IS GRANTED THREE MONTHS TIME TO AMEND THE MARK AND DISPOSE OF THE EXISTING STOCK UNDER THE NAME INNOVOLT. AFTER THE EXPIRY OF THE SAID PERIOD, THE INTERIM ORDER PASSED SHALL OPERATE AGAINST THE DEFENDANT.
JUDGMENT :
Manmohan Singh, J.
The plaintiff has filed the suit for passing off on the basis of prior user and adopter of the mark "INNOVOLT". The plaintiff claims that they are the proprietor of the mark, as it is a coined mark which cannot be appropriated by the defendant in relation to same description of alleged and cognate goods.
2. The main case of the plaintiff is that the plaintiff adopted the mark "INNOVOLT" for a wide range of products and services related to electronic and power saving since 2005 and 2007 in the United States of America and in India respectively. The mark "INNOVOLT" was first coined by the plaintiff. It has been using the mark "INNOVOLT" worldwide since 2005 and commercially since 2008.
3. The mark "INNOVOLT" is registered in USA vide Registration No. 4070632 since 13th December, 2011. The said mark of the plaintiff is presently pending registration in India vide Application No. 2231196 in class 9 for "VOLTAGE SURGE PROTECTORS and VOLTAGE SURGE SUPPRESSORS".
4. The reputation of the "INNOVOLT" name/mark is not limited only to electronics/appliance protection, but to other activities as well. The plaintiff has developed new products and services and expanded its market share with an ever growing range of branded goods and services. Substantial goodwill and worldwide reputation have accrued to the plaintiff as a result of continuous sales, sales promotion and advertising of products bearing the "INNOVOLT" trademark by the plaintiff.
5. The domain name of the plaintiff being www.innovolt.com was created on 8th March, 2001 as alleged which expires on 8th March, 2017.
6. It is also stated in the plaint that the defendant has adopted the identical and deceptively mark and "INNOVOLT (logo)" and filed for the same vide Application No. 2101609 in Class 9 for the following goods; "INVERTERS, UPS, POWER BACKUP SYSTEMS, POWER CONVERSION SYSTEMS, BATTERY CHARGERS, POWER SUPPLIES, BATTERIES, CELLS, SCIENTIFIC, ELECTRIC, PHOTOGRAPIC, OPTICAL, WEIGHING, MEASURING APPARATUS AND INSTRUMENTS".
7. Both goods are falling in Class 09. It is alleged by the plaintiffs that the defendant has even copied the "Lightning Bolt' which is a very peculiar/distinct feature of the plaintiff's mark.
8. The defendant has filed the written statement and reply. The defendant has denied each and every averment made in the plaint. It is stated that the defendant has adopted and used the mark since 2011. The adoption was bonafide. Thus, no injunction is liable to be granted.
9. The defendant in its written statement has claimed the prior user of the mark in India, it is alleged that the adoption of the mark is bonafide and honest. The defendant is now the registered owner of the trademark INNOVOLT in the following classes :
| S. No. | Trademark Registration No. and Class | Goods/Services |
| 1. | ‘INNOVOLT’ 2101609 IN CLASS 9 | Inverters, UPS, power backup systems, power conversion systems, battery charges, power supplies, batteries, cells, scientific, electric, photographic, optical, weighing, measuring, apparatus and instruments. |
| 2. | ‘INNOVOLT’ 2101610 IN CLASS 11 | Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying ventilating, water supply and sanitary purposes. |
| 3. | ‘INNOVOLT’ 2101611 IN CLASS 42 | Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software. |
10. The next plea of the defendant is that the plaintiff has claimed that he filed an application for registration of the alleged trademark INNOVOLT on 13th December, 2011 in USA. But the defendant's applications were filed on 17th February, 2011 before the Registrar of Trade Marks prior to the application filed by the plaintiff who even otherwise claimed user as proposed to be used.
11. The plaintiff has e
