Delhi High Court - Orders
Rieter Ag And Ors vs Ariser Engineering Pvt. Ltd. And Anr on 28 August, 2024
$~42
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 730/2024, I.A. 37540/2024, I.A. 37541/2024, I.A.
37542/2024, I.A. 37543/2024, I.A. 37544/2024 & I.A. 37545/2024
RIETER AG AND ORS. .....Plaintiffs
Through: Ms. Shwetasree Majumder, Ms. Diva
Arora Menon, Ms. Devyani Nath, Mr.
Vardhaan Anand and Mr. Vivek
Shandaliya, Advs.
M: 9540132363
versus
ARISER ENGINEERING PVT. LTD. AND ANR. .....Defendants
Through: None
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
ORDER
% 28.08.2024 I.A. 37543/2024 (Exemption from filing original and clear copies of documents)
1. The present is an application under Section 151 of the Code of Civil Procedure, 1908 ("CPC"), on behalf of the plaintiffs, seeking exemption from filing original documents and filing clear/legible copies of documents with proper margin.
2. Exemption is granted, subject to all just exceptions.
3. Plaintiffs shall file legible, clear, and translated copies of the documents with proper margins, on which the plaintiffs may seek to place reliance, before the next date of hearing.
4. Accordingly, the present application is disposed of.
CS(COMM) 730/2024 Page 1 of 21This 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 02/09/2024 at 21:30:22 I.A. 37541/2024 (Exemption from Pre-Institution Mediation)
5. The present is an application under Section 12A of the Commercial Courts Act, 2015, read with Section 151 of CPC, seeking exemption from undergoing Pre-Institution Mediation.
6. Having regard to the facts of the present case and in the light of the judgment of Supreme Court in the case of Yamini Manohar Versus T.K.D. Keerthi, 2023 SCC OnLine SC 1382, and Division Bench of this Court in Chandra Kishore Chaurasia Versus RA Perfumery Works Private Ltd., 2022 SCC OnLine Del 3529, exemption from attempting Pre-Institution Mediation, is granted.
7. Accordingly, the application stands disposed of. I.A. 37542/2024 (Application seeking leave to file additional documents)
8. This is an application under Order XI Rule 1(4) read with Section 151 CPC as amended by the Commercial Courts Act, 2015, seeking leave to file additional documents.
9. The plaintiffs, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of Commercial Courts Act, 2015 and the Delhi High Court (Original Side) Rules, 2018.
10. The application is disposed of, with the aforesaid directions. I.A. 37545/2024 (Application for filing CD on behalf of the plaintiffs)
11. The present is an application under Section 151 CPC seeking leave to file CD on behalf of the plaintiffs.
12. Rule 24 of Chapter XI of the Delhi High Court (Original Side) Rules, 2018, make it clear that electronic records can be received in CD/DVD/Medium encrypted with a hash value. The said rule is extracted as below:
CS(COMM) 730/2024 Page 2 of 21This 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 02/09/2024 at 21:30:22 "24. Reception of electronic evidence - A party seeking to tender any electronic record shall do so in a CD/ DVD/ Medium, encrypted with a hash value, the details of which shall be disclosed in a separate memorandum, signed by the party in the form of an affidavit. This will be tendered along with the encrypted CD/ DVD/ Medium in the Registry. The electronic record in the encrypted CD/ DVD/ Medium will be uploaded on the server of the Court by the Computer Section and kept in an electronic folder which shall be labeled with the cause title, case number and the date of document uploaded on the server.
Thereafter, the encrypted CD/ DVD/ Medium will be returned to the party on the condition that it shall be produced at the time of admission/denial of the documents and as and when directed by the Court/ Registrar. The memorandum disclosing the hash value shall be separately kept by the Registry on the file. The compliance with this rule will not be construed as dispensing with the compliance with any other law for the time being in force including Section 65B of the Indian Evidence Act, 1872."
13. Accordingly, Registry may receive electronic record on CD, so long as it is encrypted with a hash value or in any other non-editable format. The video recordings containing in the CD be placed in the electronic record of the present suit, in a format which is non-editable, so that the same can be viewed by the Court during hearing.
14. Application is disposed of.
CS(COMM) 730/2024
15. Let the plaint be registered as suit.
16. Upon filing of the process fee, issue summons to the defendants by all permissible modes. Summons shall state that the written statement be filed by the defendants within thirty days from the date of receipt of summons. Along with the written statement, the defendants shall also file affidavit of admission/denial of the plaintiffs' documents, without which, the written statement shall not be taken on record.
17. Liberty is given to the plaintiffs to file replication within thirty days from the date of receipt of the written statement. Further, along with the CS(COMM) 730/2024 Page 3 of 21 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 02/09/2024 at 21:30:23 replication, if any, filed by the plaintiffs, an affidavit of admission/denial of documents of the defendants, 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 the documents, the same shall be sought and given within the timelines.
18. List before the Joint Registrar (Judicial) for marking of exhibits, on 21st October, 2024.
19. List before the Court on 19th December, 2024.
I.A. 37540/2024 (Application under Order XXXIX Rules 1 and 2 read with Section 151 CPC on behalf of the plaintiffs)
20. The present suit has been filed for permanent injunction restraining infringement of designs, trademarks, and patent along with damages etc.
21. It is submitted that the plaintiffs filed this common suit wherein plaintiff nos. 1 & 2 are the subsidiaries of plaintiff no. 3 ("plaintiff group"). The plaintiff no. 1 is a Swiss company and the proprietor of Indian Design registrations under nos. 264773, 264774, 264775, 2712521 and 294194. The plaintiff no. 2 is a German company and is the proprietor of Indian Patent registered under number IN 339930 and the registered proprietor of the Indian trademarks 'EliTe', 'ELITWIST' and 'Eli Te Yarn', registered under nos. 1826778, 1516066, and 879007 respectively. The plaintiff no. 3 is a Swiss company who is the proprietor of the trademarks 'RIETER' who has granted a worldwide license towards the said mark to plaintiff no. 1.
22. It is submitted that the defendants are Indian companies and engaged in the business of manufacturing and marketing textile machinery parts and accessories. The defendants are sister concerns and operate under the trade name 'ARISER'. The defendants are manufacturing spare parts for textile CS(COMM) 730/2024 Page 4 of 21 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 02/09/2024 at 21:30:23 machines such as plastic inserts, active cradle, suction nozzle, etc., which infringes the plaintiff no. 1's design registrations under nos. 264773, 264774, 264775, 294194, and 271521, plaintiff no. 2's patent IN 339930 and 'EliTe' trademarks along with plaintiff no. 3's 'RIETER' trademarks.
23. It is submitted that the plaintiff develops and manufactures machinery, systems and components used to convert natural, manmade fibres and their blends into yarns. Further, the plaintiff group has 18 manufacturing locations in ten countries and the company employs a global workforce of some 5100 persons.
24. The plaintiff group uses the trade name 'RIETER' which has global sales and service organization along with a strong presence in the core markets of China and India.
25. It is submitted that the suit is related to the following:
a. Design registrations for,
(i) "Insert for a Suction Tube in a Ring Spinning Device", commonly referred as "Plastic Inserts".
(ii) "Suction Tube for a Spinning Machine", commonly referred as "Pelican Suction Nozzle".
(iii) "A Rocker for a Ring Spinning Machine" commonly referred as EliTop (a type of transmission box to drive the lattice apron used in the compact spinning system).
b. Patent registration under no. IN 339930 titled "Cradle Aggregate for a Drafting Unit of a Textile Machine" commonly referred as "Active Cradle". c. The 'EliTe' and 'RIETER' trademarks, which all pertain to spare parts that are used in the plaintiff group's compact spinning systems.
Plaintiffs' Designs:
CS(COMM) 730/2024 Page 5 of 21This 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 02/09/2024 at 21:30:23
26. Plaintiff no. 1's design registered under no. 264773 dated 14th August 2014 with, titled "Insert for a Suction Tube in a Ring Spinning Device", is applied to plaintiffs' product Jetsert (Plastic Inserts), which is a component of the plaintiffs' EliTe Compact Spinning System. It is submitted that plaintiff no. 1 has also applied for renewal of the design registration on 26th March 2024.
27. It is submitted that plaintiff no. 1's product EliTe Compact Spinning System has been extensively advertised and promoted in various jurisdictions and the plaintiff group has also continuously invested in research and development of the compacting spinning machines and its spare parts.
28. Learned counsel appearing for the plaintiffs submits that in December, 2022 a representative of the plaintiffs came across the defendants' products at the India ITME (India International Textile Machinery Exhibitions) held at Greater Noida, Uttar Pradesh. The plaintiffs' representative observed that the defendants had exhibited various products, which appeared to be similar to the plaintiff's products. To ascertain this, the plaintiffs instructed their investigator to investigate the activities of the defendants. The infringing products were then ordered by the plaintiffs and upon inquiry it was found that four products, i.e. Plastic Inserts, Pelican Suction Nuzzle, Active Cradle and Spacer and Pins are infringing the plaintiff's designs and patent.
29. It is submitted that the plaintiffs' designs, i.e. 264773 and 264775 are infringed by the defendants' product of "Plastic Inserts" advertised under the heading "Gear end - Reinforcements for compact spinning" by the defendants. A comparative table showing the infringing product is CS(COMM) 730/2024 Page 6 of 21 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 02/09/2024 at 21:30:23 reproduced as below:
30. The plaintiffs' representative had also observed that the defendants' offer for sale "Pelican Head" led to the presumption that the defendants also deal with the product "Pelican Suction Nozzle". Consequently, the plaintiffs placed an order for the "Pelican Head" with the defendants and the same was delivered. The product delivered was observed to be identical to plaintiff no. 1's design 294194. A comparative table showing the infringing product is reproduced as below:
31. It is submitted that an analysis of the defendants' product "ComFACT Spinning System", showed that the defendants have also copied the plaintiff no. 1's design 271521 which is a rocker which forms part of the plaintiffs' "EliTe Compact Spinning system". A comparison of the plaintiff CS(COMM) 730/2024 Page 7 of 21 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 02/09/2024 at 21:30:23 no.1's design and defendants' product is provided below:
Plaintiffs' Patent:
32. The defendants were selling another product named "Active Cradle"
which is identical to the plaintiff's product to which plaintiff no. 2's patent IN'930 is applied. A comparative table showing the infringing product is reproduced as below:CS(COMM) 730/2024 Page 8 of 21
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 02/09/2024 at 21:30:23 CS(COMM) 730/2024 Page 9 of 21 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 02/09/2024 at 21:30:23 CS(COMM) 730/2024 Page 10 of 21 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 02/09/2024 at 21:30:23 Plaintiffs' Trade Dress:
33. It is submitted that the defendants have also copied the trade dress of the plaintiffs' product Active Cradle by adopting identical colour combination as the plaintiffs' products. A comparison is provided below:
CS(COMM) 730/2024 Page 11 of 21This 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 02/09/2024 at 21:30:23 Plaintiffs' Trademarks:
34. It is submitted that plaintiff no. 2 adopted the trademark "EliTe" in 1999 with the development of the plaintiff group's EliTe Compact Spinning System. In India, the plaintiff no. 2 started using the said trademark in 2002. The plaintiff no. 2 has various "Eli" formative trademarks which are also used to refer to other products of the plaintiffs in the textile spinning space. The plaintiff no. 2 is the exclusive proprietor of the trademark EliTe trademarks by virtue of being the first user/ adopter of the same.
35. The plaintiff no. 2 is also the registered proprietor of the EliTe in India and various other trademarks with 'Eli' as a prefix. A list of registered trademarks of plaintiff no. 2 is as under:
36. It is submitted that in relation to the mark 'RIETER', the plaintiff group has continuously used the trademark 'RIETER' for its business since its adoption in 1962. The plaintiff group is therefore, the exclusive proprietor of the trademark 'RIETER' as a standalone mark as also in the logo and other RIETER comprising trademarks by virtue of being the first user/ adopter of the same. Thus, 'RIETER' is not only the plaintiff group's house mark, but also forms part of its domain name www.rieter.com registered in 1996. The plaintiff group's website hosted on this domain also CS(COMM) 730/2024 Page 12 of 21 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 02/09/2024 at 21:30:23 showcases the 'RIETER' trademarks extensively.
37. The plaintiff no. 3 is the registered proprietor of the trademark 'RIETER' and 'RIETER' comprising marks in India. A list of the plaintiff no. 3's trademark registrations in India, is provided below:
38. It is submitted that the defendants have also infringed plaintiff no. 2's EliTe trademarks by using the identical trademark EliTe and adopting deceptively similar trademarks such as 'EliTop'. An advertisement of the defendants published on defendant no. 1's Facebook Page makes the said trademark infringement evident. The same is reproduced as below:
CS(COMM) 730/2024 Page 13 of 21This 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 02/09/2024 at 21:30:23 CS(COMM) 730/2024 Page 14 of 21 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 02/09/2024 at 21:30:23
39. The defendants are also using the plaintiffs' trademark along with its own mark on their promotional videos published on YouTube which gives an impression of association between the plaintiffs and the defendants. The same amounts to infringement of the plaintiff no. 3's 'RIETER' trademarks as well as passing off. Screenshot of the same is reproduced as under:
40.It is submitted that the defendants have also copied the proprietary product images as well as product description of various products of the plaintiffs and have published the same on their website. However, these images are no longer available on the defendants' website. A comparison of the product images/ photographs and description of the plaintiffs and defendants, is reproduced hereinbelow:
CS(COMM) 730/2024 Page 15 of 21This 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 02/09/2024 at 21:30:23 CS(COMM) 730/2024 Page 16 of 21 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 02/09/2024 at 21:30:23
41. It is submitted that the defendants being in the same industry as the plaintiffs, is well aware of the plaintiffs' products, its inventive technology, CS(COMM) 730/2024 Page 17 of 21 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 02/09/2024 at 21:30:23 and presence in India. The defendants have made no effort in developing their own novel products and have copied a market leader's designs and patented technology in order to secure higher sales by undue means. The plaintiffs have spent significant amount of time and resources on developing a novel and inventive product that is technologically cutting edge, ergonomic, comfortable and secure.
42. Therefore, it is submitted that the defendants are infringing the plaintiff no. 2's registered EliTe trademarks by the use of the said mark and deceptively similar mark EliTop to advertise their products. The said use of the plaintiff no. 2's EliTe trademarks is evidently with a view to ride upon the goodwill and reputation associated with the plaintiffs' trademarks and products. The defendants are also infringing the plaintiff no. 3's trademark by using the said trademark in conjunction with their mark to show an association between the plaintiffs and the defendants. The members of the industry are well-aware of the plaintiffs' repute and by using a deceptively similar/identical mark for their products, the defendants are infringing the plaintiffs' trademarks.
43. It is further submitted that the defendants are infringing the plaintiff no. 1's registered designs by unlawfully applying the plaintiff no. 1's design registration nos. 264773, 264775, 294194, and 271521 to its products and reproducing the surface pattern, ornamentation and visual representation of the plaintiff no. 1's said design registrations. Furthermore, the plaintiffs apprehend that since the defendants are infringing the design nos. 264773 and 264775, there is a high degree of likelihood that the defendants, may be infringing or may start infringing the plaintiffs' design no. 264774. The CS(COMM) 730/2024 Page 18 of 21 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 02/09/2024 at 21:30:23 plaintiff no. 1 has the exclusive right to use the said registered designs with respect to its products and to exclusively reap the commercial benefits of its innovative and creative registered designs and is statutorily protected against infringement by a third party's use of not merely identical, but substantially similar designs as those which are registered in its favour.
44. In regard to the patent infringement, it is lastly submitted that the defendants are manufacturing and selling products named 'Active Cradle' which infringe the plaintiff no. 1's registered Indian patent no. 339930. The plaintiff no. 1 has the exclusive statutory right to inter alia manufacture, sell or deal in products which are covered by the said registered patent.
45. It is submitted that the defendants, in an attempt to pass-off its products, as that of the plaintiffs and to depict an association with the plaintiffs, have copied the proprietary images of the unique and novel products of the plaintiffs and have published the same on their website. This reflects on the mala-fide of the defendants in attempting to mislead the public by unauthorizedly using the product images, product description, graphical representation. The use of plaintiff no. 3's 'RIETER' trademarks along with the defendants' own mark in the promotional videos and/or other advertisement material also amounts to passing-off the defendants' business and products as that of the plaintiffs.
46. In the above circumstances, the plaintiffs have demonstrated a prima facie case for grant of injunction and, in case, no ex parte ad interim injunction is granted, the plaintiffs will suffer irreparable loss. Further, the balance of convenience also lies in favour of the plaintiffs, and against the defendants.
47. Accordingly in view of the aforesaid, the following directions are CS(COMM) 730/2024 Page 19 of 21 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 02/09/2024 at 21:30:23 issued, till the next date of hearing:
i. The defendants, their proprietor, directors, heirs, successors-in- business, agents, affiliates, distributors, servants, representatives, affiliates or any other person claiming under or through them or acting in concert with them, are restrained from using the marks EliTe, EliTop, RIETER , or any other mark that is identical and/or deceptively similar to the plaintiff no. 2's and plaintiff no. 3's registered EliTe and/or RIETER trademarks, or do any action of passing off their goods and services, as those of the plaintiffs or doing business in a manner, as may suggest a connection or association with the plaintiffs. ii. The defendants, their proprietor, directors, heirs, successors-in- business, agents, affiliates, distributors, servants, representatives, affiliates or any other person claiming under or through them or acting in concert with them, are restrained from manufacturing, selling, offering for sale, advertising or in any manner dealing in any products, which are identical and/ or similar to the products to which the plaintiff no. 1's registered designs under nos. 264773, 264774, 264775, 271521 and 294194, have been applied, or any other products which are deceptively similar variants of registered design nos. 264773, 264774, 264775, 271521 and 294194. iii. The defendants, their proprietor, directors, heirs, successors-in- business, servants, agents, associates, representatives, affiliates or any other person claiming under or through them or acting in concert with them, are restrained from manufacturing, selling, offering for sale, advertising or in any manner dealing in products which infringe the plaintiff no. 2's registered patent no. IN 339930, in any manner.CS(COMM) 730/2024 Page 20 of 21
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 02/09/2024 at 21:30:23 iv. The defendants, their proprietor, directors, heirs, successors-in- business, servants, agents, associates, representatives, affiliates or any other person claiming under or through them or acting in concert with them, are restrained from using the proprietary images of the plaintiffs' products on their website or any other material available offline and/or online, resulting in passing-off the products of the defendants as that of the plaintiffs. v. The defendants are directed to take-down advertisements, brochures, videos and/ or any other content on defendants' website, social media pages, including but not limited to pages on Facebook and YouTube, and/or on any other third-party website/ platform bearing any of the plaintiffs' aforementioned designs, patent and trademarks.
48. Issue notice to the defendants by all permissible modes, upon filing of the process fees, returnable on the next date of hearing.
49. Reply be filed within a period of four weeks, from the date of service.
50. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.
51. Compliance of Order XXXIX Rule 3 CPC, be done, within a period of one week, from today.
52. List before the Court on 19th December, 2024.
MINI PUSHKARNA, J AUGUST 28, 2024/kr CS(COMM) 730/2024 Page 21 of 21 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 02/09/2024 at 21:30:23