JUDGMENT

Anish Dayal, J. -

IA, 19011/2022 (under Order XXXIX Rule 4 of CPC) & I.A. 12253/2022 (under Order XXXIX Rule 1 and 2 of CPC)

1. This judgment disposes of the application filed by defendants under Order XXXIX Rule 4 of Code of Civil Procedure, 1908 ('CPC') being I.A. No.19011/2022, as well as, application filed by plaintiffs under Order XXXIX Rule 1 and 2 of CPC being I.A. No.12253/2022.

2. The present suit has been filed by plaintiffs ('A.O. Smith Corporation' and 'A.O. Smith India Water Products Pvt. Ltd.', the US Parent Company and its Indian subsidiary) which claims rights in the mark 'A.O. SMITH'/

3. Plaintiffs claim that they have used the said mark since 1874 internationally and in India since 2006. 'A.O. SMITH' and 'BLUE DIAMOND' are marks used by plaintiffs in respect of geysers, water heaters, purification systems, boilers and other related equipment. Plaintiffs claim that they have huge turnover worldwide, to the tune of 3.5 billion dollars in 2021 and have extensive presence in various Indian cities. The trademarks registered in favor of plaintiffs are claimed to be as under:

4. Grievance was against defendants who had incorporated a company in the name of 'Star Smith Export Pvt. Ltd.' in August, 2020 and had filed a trademark application for registration of the word mark 'STAR SMITH' / 'STARSMITH'/on proposed to be used basis.

The said mark had been opposed by plaintiffs. Defendants had adopted the mark 'STAR SMITH' / 'STARSMITH'/for identical products such as geysers, purification systems, water purifiers, RO systems and the mark 'BLUE DIAMOND' for water heaters.

5. Taking into account these issues, this Court came to prima facie conclusion in favor of plaintiffs on ground of ex parte ad interim injunction on 3rd August, 2022, thereby restraining defendants from using the marks 'STAR SMITH'/ 'STARSMITH' and 'BLUE DIAMOND' or any other mark that was deceptively similar to plaintiffs' marks for geysers, purification systems, water purifiers, RO systems and other cognate and allied goods. The Court excepted out injunction of the corporate name of defendant no.1. Subsequently, this application (I.A. 10911/2022) under Order XXXIX Rule 4 of CPC was filed on behalf of defendants, to which counsels have submitted their respective arguments.

Submissions by Plaintiffs

6. On behalf of plaintiffs, counsel reiterated the adoption of the mark 'A.O. SMITH' in the 19th century and launch in India in 2000's. Plaintiff no.2, the Indian subsidiary, was incorporated in 2006 and plaintiffs entered the Indian Water Heater market in July, 2008. Plaintiff no.2 offers for sale its goods and services all over India through its website 'www.aosmith.india.com' and on other e-commerce portals. Its parent website 'www.aosmith.com' was registered in December, 1994. Further, the products of plaintiff no.2 are available through large retail stores including Croma, Vijay Sales, Reliance Digital and others and it was stressed that products of defendants are also available at the same stores. It was claimed that search for 'A.O. SMITH' on popular search engines, such as Google, shows plaintiffs' products as the top result and even a search for 'SMITH Water Heater' shows up results of plaintiffs' products. Therefore, it was contended that 'SMITH' was the dominant aspect of their mark. Attention was drawn to various awards which have been obtained by plaintiffs and registrations of the marks of plaintiffs, as already extracted above. Sales and promotional expenditure of plaintiffs in respect of these products was also adverted to in para 15 and 16 of the plaint.

7. Plaintiffs' counsel contended that aside from the international use since 1874, use in India since 2006 and a large amount of goodwill and reputation in the said mark, as well as continuous persistent use, the word itself was a coined mark from the names of two co-founders viz. Arthur Oliver Smith and C.J. Smith. Applying the anti-dissection rule, reliance was placed on M/s. South India Beve