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IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of Decision: 10^th October, 2022

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CS (COMM) 423/2022

SPP PUMPS LIMITED & ANR.

..... Plaintiffs

Through:

Mr. Tusha Malhotra and Ms. Yamini

Jaswal, Advocates. (M:9878096700)

versus

SP PARVATHY INDUSTRIES

..... Defendant

Through:

Mr.

Selvaraj

Premkumar,

Sole

Proprietor.

CORAM:

JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh, J. (Oral)

1. This hearing has been done through hybrid mode.

2.

The present suit has been filed for permanent injunction against

infringement of trademark, passing off, dilution and other reliefs. Plaintiff

No.1- SPP Pumps Limited is a company based in England which is the

owner and the registered proprietor of the mark ‘SPP PUMPS’. Plaintiff

No.1 was acquired by Plaintiff No.2 - Kirloskar Brothers Ltd. through an

Asset Purchase Agreement dated 6^th November, 2003. The Plaintiffs are

stated to be the leading manufacturers of centrifugal pumps and engineered

pumping solutions in the world with 140 years of experience. The mark

‘SPP PUMPS’ was adopted by the Plaintiffs in the year 1961. The Plaintiffs

have also used the mark in a logo form which is extracted below:

2022:DHC:4163

3.

The said mark was adopted in the year 1961 and it is an acronym of

‘Sigmund Pulsometer Pumps’. It is the case of the Plaintiffs that the said

mark is a coined word/abbreviation and is highly distinctive of its products.

The global annual sales of the Plaintiffs is to the tune of Rs.443 crores in the

year 2020. The sales in India for the corresponding period is to the tune of

Rs.10 crores. The Plaintiffs have registration for the mark ‘SPP PUMPS’ in

India since 2021 in class 9 with the user claim from November 2011. The

Plaintiffs have several trademark applications for the said mark in classes 37

and 7 which are pending registration. The Plaintiffs have used the mark

‘SPP PUMPS’ extensively in India and promoted the same including

through their websites www.spppumps.com and www.kirloskarpumps.com.

4.

The grievance of the Plaintiffs in the present suit is that the

Defendant- SP Parvathy Industries is a sole proprietary concern of Mr.

Selvaraj Premkumar who is located in Coimbatore. The Defendant started

using the mark ‘SPP PUMP’ for products including screw pumps. For the

said products, the Defendant had adopted the mark ‘SPP PUMP’ in different

logo forms which are set out below:

5.

The Plaintiffs issued a cease-and-desist notice dated 14^th October,

2021 upon acquiring knowledge of the Defendant’s use of the mark ‘SPP

2022:DHC:4163

PUMP’ asking the Defendant to cease all use and advertising of products

bearing the mark ‘SPP PUMP’ as a trade mark, trade name, part of domain

name, etc. Since then, several letters have been exchanged between the

Plaintiffs and the Defendant. In response to one of the letters dated 11th

January 2022 sent on behalf of the Plaintiffs, the Defendant sent a reply

through its counsel stating that it would be giving up the said mark/ name

and that the Defendant has initiated steps to change the mark and name

which would be effected in due course after complying with the registration

formalities in this regard. The relevant paragraphs of the said letter are

extracted herein below:

“5.

accordingly.”

6.

As per the above letter, the Defendant agreed to give up the mark,

however, no timeline was indicated within which the changes were to be

effected. The Plaintiffs’ counsel again wrote back to the Defendant on 22^nd

February, 2022 and sought an undertaking from the Defendant that the mark

be changed within a period of 30 days after completing the requisite

2022:DHC:4163

registrations and formalities. In response to this letter, on 17th March, 2022,

the counsel of Defendant wrote back assuring the Plaintiff that the

Defendant is in the process of honouring the commitment `in due course’

however, no specific deadline can be put in place. Sinc