J U D G M E N T

I.A. 13721/2019-Stay

1. The plaintiff vide the present application seeks grant of an interim injunction for restraining the defendants.

2. Succinctly put, based on the submissions made by the learned counsel for the plaintiff as also the pleadings and documents filed in support thereof, the following is the case of the plaintiff.

3. The plaintiff, SM Motorenteile GmbH, is a company incorporated under the laws of Germany having its registered office at Asperg, Germany and an office in Pune, India. The plaintiff is a highly reputed company and is known worldwide for manufacturing and supplying high quality original equipments for various reputed automobile companies CS(COMM) 553/2019 Page 1 of 12 Signature Not Verified Digitally Signed under the trade marks (“SM Logo-1”) and (“SM Logo-2”), (hereinafter referred to as ‘SM Logos’).

4. Initially, the plaintiff was only engaged in manufacturing gaskets, pistons and valves but later in 1995, it also started manufacturing a plethora of products under the trade mark ‘SM Logo-1’ and turned into one of the most trusted brands in the world in the field of vehicle spare parts. The plaintiff’s range of products includes gaskets, assemblies, hydraulic tappet, pistons, piston ring sets, universal joints, clutch release bearings, bearings, cylinder liners, camshafts, conrod bushings, valves guides, collets, steam seals, seat inserts and tappets, cylinder heads, aluminium die-cast and powder metal parts. All the aforementioned products are manufactured as per the international standards and can be applied to all kinds of engines, air compressors, transmission systems, pumps and attachment parts. Further, the plaintiff’s massive worldwide distribution networks in over 100 countries, including India, ensures the constant global supply of plaintiff’s products.

5. The plaintiff, being the global supplier of high precision engine and vehicle components, it also partners with many industrial enterprises in the automotive sector and the aftermarket industries and has notable CS(COMM) 553/2019 Page 2 of 12 Signature Not Verified Digitally Signed collaborations and tie-ups with reputed international brands such as Honda, Yamaha, Volkswagen, Skoda, Mercedes Benz, Bitzer, BPR-

Rotax, and General Motors, to name a few.

6. The plaintiff and the aforementioned ‘SM Logos’ dates back to the 1970s, starting with the year 1973, when the said SM Logos were first used as a branding for the products of a Joint Venture company named Schoettle Motorenteile GmbH. The said JV company was founded by Mr. Wolfang Schoettle who held 55% of the shareholding of the company, and the rest of the 45% of the shareholding was then held by a company called Nippon Piston Rings, Japan. Thereafter, in 1983, Mr. Wolfang Schoettle along with Ms. Giesela Schoettle bought another company, named MVI Motorenteile GmbH. Though the two aforesaid companies, Schoettle Motorenteile GmbH and MVI Motorenteile GmbH were separate entities, they both carried on business together under the brand of the ‘SM Logos’. Consequently, in the year 1998, both the aforesaid companies i.e. Schoettle Motorenteile GmbH and MVI Motorenteile GmbH together registered the brand ‘SM Logo-1’ with the German Trademarks Office, bearing registration no.39867330 and in 1999 both the companies obtained another registration from the World Intellectual Property Organization under Class 12 (for vehicle parts) for the ‘SM Logo-1’ under the registration no.715313.

7. Consequently, in the year 2004, Schoettle Motorenteile GmbH applied for the registration of the trade mark i.e. ‘SM CS(COMM) 553/2019 Page 3 of 12 Signature Not Verified Digitally Signed Logo-2’ in India. The said trade mark application bearing number 1278489 in Class 12 was granted registration and the same is valid and subsisting. It was mutually decided by both the aforesaid companies i.e. Schoettle Motorenteile GmbH and MVI Motorenteile GmbH that the said registered trade mark number 1278489 i.e. ‘SM Logo