Calcutta High Court
Srmb Srijan Private Limited vs Shreegopal Concrete Private Limited on 30 January, 2019
Author: Soumen Sen
Bench: Soumen Sen
ORDER
GA No. 261 of 2019
CS No.15 of 2019
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
SRMB SRIJAN PRIVATE LIMITED
Versus
SHREEGOPAL CONCRETE PRIVATE LIMITED
BEFORE:
The Hon'ble JUSTICE SOUMEN SEN
Date : 30th January 2019.
Appearance:
Mr. Tilak Kr. Bose, Sr. Adv.
Mr. Debnath Ghosh, Adv.
Mr. Partha Basu, Adv.
Mr.Sudhakar Prasad, Adv.
...for the petitioner.
Mr. Sayantan Basu, Adv.
Mr. Prithwiraj Sinha, Adv.
Mr. Tanmoy Roy, Adv.
...for the defendant.
In an action for passing off the plaintiff has filed an
interlocutory application for injunction restraining the defendant
from manufacturing, marketing, distributing selling, advertising
or otherwise dealing with products including TMT bars and rods by
applying X-ribs marks upon or in relation to the TMT bars and rods
as depicted in Annexure-A or any other colourable imitation of the
same.
The plaintiff claims to be manufacturer of construction
material including TMT bars. The predecessor of the petitioner,
SRMB Srijan Private Limited was incorporated in the year 1951 and
over 60 years has emerged as one of the forerunners of steel
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enterprise having business extending whole of India. The
plaintiff claims to be the pioneer in the steel industry and is
the first company in India to start collaboration with prominent
international companies lime Nippon Steel, Japan and HSE GmbH,
Germany. The suit is concerned with the trade dress rights in the
unique and distinctive pattern formed by way of artistic linings
subsisting on the concrete reinforcing bar (TMT bar) - Fe 500,
IS:1786 grade steel bars manufactured by the plaintiff which was
given name "X-RIBS" bars, since the year 2001 and blatant copying
of the distinctive surface pattern by the defendant no.1 on its
reinforcing bars (TMT bars) thereby exploiting the goodwill and
reputation of the plaintiff in the said trade dress rights when
the said pattern forms the distinctive indicia of the plaintiff's
product and acts as a source of their origin.
The petitioner contends that during the course of trade in
the year 2000, the plaintiff has conceived, created and
conceptualised an inherently distinctive surface patter for its
TMT bars in order to make its TMT bars different and distinctive
from other brands existing in the market and also to promote and
popularize its TMT bars under the said distinctive get-up so as to
make these products appealing and eye catching to the consumer for
ready market acceptance.
The plaintiff contends that the X-Ribs surface pattern of the
petitioner is also the trade dress and trade mark of the
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petitioner and is exclusively identified with the product of the
petitioner and none else. The said bars are used as a tension
device in reinforced concrete and reinforced masonry structures of
strengthen the concrete under tension. The TMT bars are of
cylindrical shape and are of various sizes and all have a distinct
surface pattern with embossed letter 'X' printed at regular
intervals on both sides. Each bar has two series of X pattern and
the two series are diametrically opposite to each other. On one
side of the series, the brand name "SRMB" is embossed in a regular
manner at the 'X' intervals and tensile strength and grade of Fe
415, Fe 500, Fe 550 or Fe 415D, Fe 500D, Fe 550D or Fe 600D is
embossed. The other X series embossed on the opposite side of the
bar is a running X series.
The petitioner contends that the X-ribs pattern/device being
used by the plaintiff on its TMT bars has no connection with the
natural shape of the article which in the instant case is thermo-
mechanically treated bar. The plaintiff adopted the X-rib surface
pattern to distinguish its concrete reinforcing bars from the
other TMT bars in the market and hence it is alleged that the
surface pattern/device of X-ribs pattern is inherently distinctive
of the plaintiff's product and of no one else on the date of its
creation and first use in the year 2000-2001.
The plaintiff has disclosed its turnover and the costs and
expenses incurred to advertise its product which runs into crores.
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The advertisement expenses and the annual turnover of the
plaintiff are disclosed in paragraphs 6, 7 and 8 of the petition.
The petitioner contends that on account of such long extensive
user of the X-ribs pattern on the TMT bars since the year 2000
coupled with its extensive marketing and promotional activities in
the form of nation-wise advertisement campaigns, voluminous sales
and extensive publicity, the X-ribs pattern as the trade dress in
relation to TMT bars has acquired a secondary significance in
course of the trade.
The plaintiff, in order to protect the design conceptualised
by the plaintiff, applied for registration of the said design
under the Designs Act. The said design was initially registered
on 4th April, 2003 but subsequently was cancelled by an order dated
3rd February, 2010 because of publication/advertisement of the
petitioner's X-ribs bars before the date of its application for
design registration. Subsequently, an application for registration
of the same X-ribs pattern TMT bars claiming use since 4th January,
2001 has been filed with the Trade Marks Registry on 8th November,
2016 bearing no.3406258 for registration. The petitoner refers to
an earlier proceeding between the petitioner and one Prime Gold
International Limited for passing off the product of the plaintt
as that of the defendant. In the said proceeding, an order was
passed on 1st March, 2018 by which Prime Gold International
Limited, its promoters, directors, assigns, sister concerns,
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affiliates, relatives, successor-in-interest, licensees,
franchisees, partners, representatives, servants, distributors,
employees, agents etc. or anyone associated with them were
restrained from using the aforesaid and others acting on their
behalf from manufacturing, marketing, selling products including
TMT bars and rods by applying the pattern of X-ribs upon or in
relation to the TMT bars and rods as depicted in Annexure-A to the
plaint or any other colourable imitation of the same including the
one which is depicted in Annexure-B to the plaint or any other TMT
bar containing similar pattern depicted on the TMT bars and/or
from advertising in any manner such products in the print form or
online which may create misrepresentation and lead to passing off
the defendant's goods as that of the plaintiff till the next date
of hearing.
The petitioner has also disclosed the terms of settlement
filed in the said proceeding on behalf of Prime Gold International
Limited which, inter alia, contains the following terms:
"(d) The Defendants further state, affirm and declare
that they shall not, at any time in future, use
and/or attempt to use X-Ribs Pattern/Cross-Ribs
surface pattern upon or in relation to its TMT Bars
which is identical or deceptively similar to the
Plaintiffs' X-Ribs Pattern/Shape of its TMT Bars
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which would in any manner violate the plaintiff's
intellectual property rights.
(e) That the Defendants agree and undertake they
themselves, their directors, their promoters,
assigns, sister concerns, affiliates, relatives,
successor-in-interest, licensees, franchisees,
partners, representatives, servants, distributors,
employees, agents and others acting on their behalf
shall not manufacture, market sell or offer for
sale, advertise or promote the products including
TMT bars and rods by applying pattern of X ribs
upon or in relation to the TMT bars and/or rods or
any other TMT bar containing similar pattern
depicted on the same leading to passing off
Defendant's goods as that of Plaintiff."
The petitioner submits that the respondent is a franchisee
and/or affiliate of Prime Gold International Limited as would be evident from the website of Shree Gopal Group disclosed at page 55 of the petition and as a franchisee and/or affiliate of Prime Gold International Limited, the defendant is bound by the said order. The petitioner has also referred to the cease and desist notice issued by the petitioner prior to the filing of the Delhi High Court suit and submits that the notice was also issued to the defendant and the said notice did not elicit any reply. In absence 7 of any satisfactory response from Prime Gold International Limited or its franchisee, the Delhi suit was filed in which the dispute was ultimately settled by filing a compromise petition.
Mr. Tilak Kumar Bose, learned senior counsel appearing on behalf of the petitioner has submitted that in view of a clear finding by the Delhi High Court recognizing the goodwill and reputation of the mark of the plaintiff, the defendant is not entitled to use TMT bars and rods by applying the pattern of X- ribs upon and/or in relation to the TMT bars and rods as depicted in Annexure-A to the plaint. Mr. Bose submits that the pattern has acquired a distinctive style and become a mark within the definition of Section 2(zb) of the Trade Marks Act as the particular pattern or shape of the goods is identifiable with the plaintiff and none else. Mr. Bose in this regard has relied upon a decision in Apollo Tyres Ltd. vs. Pioneer Trading Corporation & Anr. reported at 2017 (72) PTC 253 [Del] paragraph 75 and submits that on the strength of the said decision as well as in view of the decision of the Delhi High Court dealing with similar issues, similar protection may be given to the plaintiff.
Mr. Sayantan Basu, learned counsel representing the respondent has opposed the prayer for injunction. Mr. Basu submits that the respondent has no connection with Prime Gold International Limited. In fact, Prime Gold International Limited is seeking to review the order passed by the learned Single Judge 8 in CS(COMM) 672/2018, IA No.3014/2018. Mr. Basu has heavily emphasised on the findings of the Design Controller by which the registration of the design was revoked. It is submitted that once the design is in the public domain, it loses its inherent distinctive character and is open for use by the public in general. It is submitted that the judgment of the Delhi High Court is not binding on the defendant as the defendant is not a franchisee of Prime Gold International Limited. Moreover, the surface pattern as shown in the TMT bars and rods are common to the trade and are being used by other manufacturers as well. The X-ribs adds to functionality of the said TMT rods and bars and no one can claim an exclusive right over such pattern.
On consideration of the materials on record at this interim stage, I am of the view that the plaintiff has been able to make out a strong prima facie case for an order of injunction. The plaintiff has been able to show nexus between Prime Gold International Ltd. and the Defendant in the suit. Even prior to the institution of the suit at Delhi, ceased and desist notice was issued to the defendant. The defendant was aware that the suit has been instituted against Prime Gold International Ltd. and another for passing off its product as that of the plaintiff by applying the same surface pattern over which the plaintiff has claimed a superior right by long, extensive and continuous use. The learned Single Judge of the Delhi High Court on consideration of similar 9 objections has passed an interim order as recorded earlier. The revocation of the registered design on the ground of prior publication in the instant case does not defeat the right of the plaintiff to seek an order of injunction on the strength of trade dress and passing off as the considerations under the two Acts are different. In fact, the registered design of the plaintiff was revoked on the ground the plaintiff prior to the application for registration of its design had published such design by way of advertisements and sold its products prior to the date of the application for registration of the design. The ground for revocation was not that some other entities have published the same and/or similar design prior to the plaintiff's claim of novelty of such design. Moreover, as held in Apollo Tyres [supra], the non-registration of the design contained in the trade pattern does not take away the rights of the person who uses the said design contained in the trade pattern as a trademark to sue for passing off. The document at page 58 of the petition discloses that the defendant was selling the TMT Bar of Prime Gold International Ltd. which prima facie establishes that they were franchisee of Prime Gold International Ltd.. In view of the prima facie finding that X-Ribs marks on the TNT bar of the defendant are ex facie identical and slavish imitation of the plaintiff's trade dress and pattern, there shall be an order of injunction restraining the defendant from manufacturing, marketing, using 10 and/or selling TMT bars and/or rods by applying the pattern of X- Ribs upon and/or in relation to the TMT bars and rods as depicted in Annexure-A to the plaint. This interim order shall continue for a period of eight weeks or until further order whichever is earlier.
Affidavit-in-Opposition shall be filed within two from date; affidavit in reply, if any, within a week thereafter. The matter shall appear under the heading "Motion Adjourned" fairly at the top after four weeks.
(SOUMEN SEN, J.) B. Pal / S. Kumar