Delhi High Court - Orders
M/S Alfa Laval Corporate Ab & Anr vs M/S Alf A Gea Phe Engineering And ... on 7 December, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~35
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 868/2023, I.As. 24210/2023, 24211/2023 &
24212/2023
M/S ALFA LAVAL CORPORATE AB & ANR. ..... Plaintiffs
Through: Mr. Nitin Khare and Ms. Hemlata
Rawat, Advs. (M. 9999689386)
versus
M/S ALF A GEA PHE ENGINEERING
AND SERVICES ..... Defendant
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 07.12.2023
1. This hearing has been done through hybrid mode. I.A.24212/2023 (for exemption)
2. This is an application seeking exemption from filing type/annexures with true translation. Exemption is allowed, subject to all just exceptions. Application is disposed of.
CS (COMM) 868/2023
3. Let the plaint be registered as a suit.
4. Issue summons to the Defendant through all modes upon filing of Process Fee.
5. The summons to the Defendants shall indicate that the written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendant shall also file an affidavit of admission/denial of the documents of the Plaintiffs, without which the written statement shall not be taken on record.
6. Liberty is given to the Plaintiffs to file a replication within 15 days of CS(COMM) 868/2023 Page 1 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/12/2023 at 00:48:12 the receipt of the written statement. Along with the replication, if any, filed by the Plaintiffs, an affidavit of admission/denial of documents of the Defendant, be filed by the Plaintiffs, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
7. List before the Joint Registrar for marking of exhibits on 24 th January, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
8. List before Court on 29th April, 2024.
I.A.24211/2023 (u/O XXXIX Rules 1 & 2 CPC) & I.A.24210/2023 (u/O II Rule 2 CPC)
9. Issue notice.
10. The present suit has been filed by Plaintiffs - M/s Alfa Laval Corporate AB & M/s Alfa Laval India Pvt. Ltd. against the Defendant- M/s Alfa Gea Phe Engineering & Services raising a grievance against the use of the name 'ALFA' and 'ALFA LAVAL'.
11. The case of the Plaintiffs is that Plaintiff no.1 was established in Sweden in the year 1937 and has been using the mark 'ALFA' and 'ALFA LAVAL' since then. It is averred that both the Plaintiffs are sister companies. The Plaintiffs' have been engaged in the business of design, manufacture and supply of industrial machinery, spare parts and industrial equipment's relating to heat transfer, separation and fluid handling. The Plaintiffs business have three divisions which covers Energy, Food & Water, and Marine.
12. The products of ALFA LAVAL have been used in respect of industrial equipment including plate heat exchanger, plates & gaskets, milk CS(COMM) 868/2023 Page 2 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/12/2023 at 00:48:12 chiller PHE, Gea Ecoflex PHE Gaskets, Tranter PHE Gaskets, Sondex PHE Gaskets etc. which are stated to be sold in more than 100 countries. The Plaintiffs also claim to have more than 42 production units spanning across Europe, Asia, USA and Latin America. The Plaintiffs aver to have more than 17000 employees across worldwide including Sweden, China, Denmark, USA and India. The Plaintiffs in the year 2020 had sales of more than Rs.1,000 Crore. It is further stated that more than 2.5% of total sales of the Plaintiffs are invested annually in R&D, which results in launch of 25-30 new products in a year.
13. The mark 'ALFA LAVAL' is registered in various jurisdictions including in India, USA, EU and other countries. Even in Sweden, the registration dates back to the year 1918. Some of the trademark registrations in different jurisdictions are as under:
14. As per the plaint the Plaintiffs became aware of the Defendant, sometime in September, 2020, that it is selling identical industrial equipment relating to heat transfer, separation and fluid handling under the trade mark/name 'ALFA LAVAL'. It is averred that Defendant also uses a domain name with the Plaintiffs' mark 'ALFA' i.e., CS(COMM) 868/2023 Page 3 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/12/2023 at 00:48:12 www.alfageaphegaskets.com.
15. The Plaintiffs' grievance in this suit is that the Defendant was earlier using the name 'ALFA GEA PHE Engineering & Services' as also the email addresses i.e., [email protected] and [email protected].
16. It is averred that initially a cease and desist notice was issued by the Plaintiffs to the Defendant on 8th September, 2020, to which the Defendant replied on 6th October, 2020 and acknowledged that they have been using images of Plaintiffs' name/mark on its products with similar qualities and specifications for marketing purposes. However, it is averred that the Defendant refused to stop using the prefix 'ALFA' in its trade name. Subsequent, to this a rejoinder was issued on 2nd November, 2020, to which the Defendant replied on 11th November, 2020 stating that 'ALFA' is a generic term and refused to cease the use of the name 'ALFA'. The Plaintiffs then filed CS(COMM) 374/2021 seeking an injunction against use of the mark 'ALFA LAVAL/ALFA'.
17. In the said suit, mediation proceedings were also undertaken. The suit was filed only by Plaintiff No.2, the Indian company and there was an objection that the main registered proprietor was not impleaded as the Plaintiff. Thus, in the said suit the following order was passed on 19th September, 2023.
"1. Ms. Hemlata Rawat, learned Counsel for the plaintiff seeks, on instructions, to withdraw the suit as she intends to be filed the suit in the name of the actual proprietor of the mark.
2. Mr. Praveen Kumar, learned Counsel for the defendant, submits that, in all possibility, the grievance of the plaintiff may not survive as the defendant is planning to change the mark to a non-infringing mark.CS(COMM) 868/2023 Page 4 of 8
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/12/2023 at 00:48:12
3. Be that as it may, in view of the request made by learned Counsel for the plaintiff, the suit is dismissed as withdrawn with liberty as aforesaid. The plaintiff shall be entitled to refund of court fees, if any, deposited by it."
18. In view of the fact that the earlier suit was withdrawn, the Plaintiffs have then taken the steps to file the present suit including the Sweden company as one of the Plaintiffs.
19. Submission of ld. Counsel for the Plaintiffs is that the Defendant had agreed to change the name during the proceedings in the earlier suit. However, though it changed the name 'ALFA' from the corporate name, it is continuing to use the name 'ALFA GEA PHE Engineering & Services' on its products and containers. Images of the said products bearing the name ALFA are extracted herein below:
CS(COMM) 868/2023 Page 5 of 8This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/12/2023 at 00:48:12
20. The Defendant continues to use the name 'ALFA' even on the social media websites i.e., https://www.alfageaphegaskets.com/alfa-laval.php etc.
21. The Court has perused the documents. There can be no doubt that the parties are in an almost identical space i.e., engineering goods and services. The use of the mark 'ALFA' either in the corporate name or trademark or inscription on the products, is bound to create confusion and deception considering the long and extensive use by the Plaintiff, internationally and in India. The Defendant already had an opportunity and had been cautioned of the Plaintiffs' rights in the earlier suit. However, it appears that the Defendant is clandestinely continuing to use the name 'ALFA GEA PHE'. Accordingly, the Plaintiffs have made a fair case of infringement.
22. Further, in Laxmikant v. Patel v. Chetanbhai Shah & Ors. (MANU/SC/0763/2001), the Supreme Court categorically observed that in cases where a prima facie case is made out, the Court ought to grant an immediate ex-parte injunction, and appoint Local Commissioner to ensure that the infringing products or services are not permitted to be sold or displayed. The relevant extract of the order is set out below:
"14. .....Once a case of passing off is made out the practice is generally to grant a prompt ex-parte injunction followed by appointment of local Commissioner, if necessary...."
17. We are conscious of the law that this Court would not ordinarily interfere with the exercise of discretion in the matter of grant of temporary injunction by the High Court and the Trial Court and substitute its own discretion therefore except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the order of the Court under scrutiny ignores the settled principles of law regulating grant or refusal of interlocutory CS(COMM) 868/2023 Page 6 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/12/2023 at 00:48:12 injunction. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion [(see Wander Ltd. v. Ant ox India P. Ltd.
MANU/SC/0595/1990 and N.R. Dongre v. Whirlpool Corporation and Anr.: MANU/SC/1223/1996 :
(1996)5SCC714 . However, the present one is a case falling within the well accepted exceptions. Neither the Trial Court nor the High Court have kept in view and applied their mind to the relevant settled principles of law governing the grant or refusal of interlocutory injunction in trade mark and trade name disputes. A refusal to grant an injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff as would not be capable of being undone at a latter stage. The discretion exercised by the Trial Court and the High Court against the plaintiff, is neither reasonable nor judicious. The grant of interlocutory injunction to the plaintiff could not have been refused, therefore, it becomes obligatory on the part of this Court to interfere."
23. Considering the above position, and also the judgment in Laxmikant Patel (supra), the Plaintiff has made out a prima facie case in its favour for grant of an ex-parte injunction. Balance of convenience also lies in favour of the Plaintiffs as the Defendant is encashing on Plaintiffs goodwill and CS(COMM) 868/2023 Page 7 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/12/2023 at 00:48:12 reputation by using the mark and name 'ALFA'. If an injunction is not granted in the present case, irreparable loss will be caused to the Plaintiffs.
24. Accordingly, the Defendant shall stand restrained from using the name 'ALFA' or 'ALFA LAVAL' or any other mark which is identical or confusingly similar to the Plaintiff's marks ALFA ad ALFA LAVAL in respect of its industrial and engineering services or products as also any cognate and allied services.
25. Compliance of Order XXXIX Rule 3 CPC, 1908 be made within one week.
26. Reply to the application be filed within four weeks from the service of the present order along with the paper book.
27. List before the Joint Registrar on 24th January, 2024.
28. List before Court on 29th April, 2024.
PRATHIBA M. SINGH, J.
DECEMBER 07, 2023/dk/ksm CS(COMM) 868/2023 Page 8 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/12/2023 at 00:48:12