Delhi High Court - Orders
A.O. Smith Corporation And Anr vs Star Smith Export Pvt. Ltd. And Anr on 3 August, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~51
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS (COMM) 532/2022
A.O. SMITH CORPORATION AND ANR. ..... Plaintiffs
Through: Mr. Ranjan Narula, Mr. Shashi Pratap
Singh and Ms. Deeksha Singh,
Advocates. (M:9891584230)
versus
STAR SMITH EXPORT PVT. LTD. AND ANR. ..... Defendants
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 03.08.2022 I.A.12256/2022 (for exemption)
1. Allowed, subject to all just exceptions. I.A.12256/2022 is disposed of. I.A.12254/2022 (additional documents)
2. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act'). The Plaintiffs, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act.
3. I.A.12254/2022 is disposed of.
I.A.12255/2022 (u/S 12A)
4. This is an application seeking exemption from instituting pre- litigation mediation. In view of the orders passed in CS (COMM) 132/2022 titled Upgrad Education v. Intellipaat Software, the I.A.12255/2022, exemption is allowed and I.A. 12255/2022 disposed of.
CS (COMM) 532/2022 Page 1 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:05.08.2022 10:30:42I.A.12257/2022 (exemption from court fees)
5. This is an application seeking exemption from depositing the court fees at this stage. Mr. Narula, ld. Counsel submits that Stock Holding Corporation of India Ltd. does not issue court fees to the counsel on behalf of a foreign company unless there is an order from the Court. This position would be contrary to the recent decision dated 01st, June, 2022 of the Committee of the Delhi High Court constituted by the Order of Hon'ble the Chief Justice, which reads as under:
S. No. Agenda of the Meeting Minutes
1 To consider the matter The matter was discussed
regarding procurement with the representatives of
of Court fee only by the Stock Holding Corporation
litigants/parties in terms of India Limited. It is
of an undated circular recommended that
issued by the Stockholding Corporation of
Stockholding India will accept payment
Corporation of India from the lawyers/law firms
w.e.f. 01.04.2021. for purchase of court fee on account of their litigant(s) provided the lawyers/law firms furnish copy of their PAN Card. The representatives of SHCIL also agreed to modify the notice in these terms.
6. The Stock Holding Corporation of India Ltd. is directed to ensure compliance of this order of the Committee and release the court fees to the counsels, who may be seeking court fees on behalf of their respective clients, so long as there is an email to this effect from the said client and the PAN card of the counsel is provided.
CS (COMM) 532/2022 Page 2 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:05.08.2022 10:30:427. The exemption sought by the Plaintiffs in the present application is allowed and the time for filing court fee is extended by one week. Let the Stamp be also deposited within two weeks.
8. I.A.12257/2022 is disposed of.
CS (COMM) 532/2022
9. Let the plaint be registered as a suit.
10. Issue summons to the Defendants through all modes upon filing of Process Fee.
11. The summons to the Defendants shall indicate that a written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.
12. Liberty is given to the Plaintiffs to file a replication within 15 days of the receipt of the written statement(s). Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiff, 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.
13. List before the Joint Registrar for marking of exhibits on 5th September, 2022. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
14. List before Court on 26th September, 2022.
I.A.12253/2022 (u/O XXXIX Rules 1 & 2 CPC)
15. The present suit has been filed by the Plaintiffs i.e., A.O. Smith Corporation - Plaintiff No.1 and A.O. Smith India Water Products Pvt. Ltd.-
CS (COMM) 532/2022 Page 3 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:05.08.2022 10:30:42Plaintiff No.2. Plaintiff No.1 is a US based company, which claims rights in the mark 'A.O. SMITH'. Plaintiff No.2 is a wholly owned subsidiary of Plaintiff No.1 which manufactures and markets its products in India through Plaintiff No.2. In the present suit, the Plaintiff seeks protection of its rights in the marks 'A.O. SMITH' and 'BLUE DIAMOND'. The case of the Plaintiffs is that the mark 'A.O. SMITH' has been used by them since 1874 internationally and in India since 2006. Both the marks are used by the Plaintiffs in respect of Geysers, Purification Systems, Water Heater, Boilers and other related equipment. The Plaintiffs claim that they have 20 global offices and its products are available in more than 60 countries across the world. The annual worldwide sale figures of Plaintiff No.1 is to the tune of 3.5 billion dollars in 2021. The Plaintiffs have been using the marks 'A.O. SMITH' and 'BLUE DIAMOND' in both word and device form. The US company started business in India in the year 2006 with the incorporation of Plaintiff No.2. The Plaintiffs claim to have extensive presence in various cities in India including Bangalore, Delhi, Chennai, and Goa. The Plaintiffs also operate the domain names www.aosmith.com and www.aosmithindia.com, which were registered by it in the year 1994 and 2008 respectively, through which the products and services of the Plaintiffs are marketed and promoted.
16. The Plaintiffs enjoy statutory rights in the marks 'A.O. SMITH', which is registered both in word form and logo form as also the mark 'BLUE DIAMOND' which is registered as a word mark. The details of the registrations of the Plaintiffs in the said marks are as under:
CS (COMM) 532/2022 Page 4 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:05.08.2022 10:30:4217. The grievance of the Plaintiffs in the present suit is that the Defendants have incorporated a company by the name 'Star Smith Export Private Limited' on 1st August, 2020, which is impleaded as Defendant No.1. Mr. Hitesh Goyal, who is promoter of Defendant No.1, is impleaded as Defendant No.2. Defendant No.2 filed a trademark application bearing no.4580404 for the registration of the word mark 'STARSMITH' on proposed to be used basis, which was granted registration during the COVID pandemic. However, owing to the order dated 18th May, 2022 passed by this Court in W.P.(C)-IPD 4/2022 titled Dr. Reddys Laboratories Ltd. v. Controller General of Patents Designs and Trade Marks, the Plaintiffs have now opposed the said mark on 7th April, 2022 and thus, the registration is under suspension. The Defendants are also stated to have registered the domain name www.starsmith.in on 27th July, 2020. It is the case of the Plaintiffs that the Defendants have not only adopted the mark 'STAR SMITH / STARSMITH' for identical products such as Geysers, Purification System, Water Purifiers, RO Systems but have also started using the mark 'BLUE DIAMOND' for water heaters. The Defendants have also started promoting their products on various e-commerce platforms CS (COMM) 532/2022 Page 5 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:05.08.2022 10:30:42 including Amazon.
18. Mr. Ranjan Narula, ld. Counsel appearing for the Plaintiffs submits that on a search being conducted on Amazon for 'STAR SMITH', the products of the Plaintiffs are also shown in search results, which shows there is clear chance of confusion, especially in online sales. The ld. Counsel further submits that when cease and desist notice was issued by the Plaintiffs to the Defendants on 9th April, 2021, a reply dated 21st April, 2022 was sent by the Defendants through email and justified the adoption of the mark 'STARSMITH' on the ground that the son of the Defendant is named Smith. However, in the reply to the legal notice, given by ld. Counsel for the Defendants on 10th May, 2022, a completely different defence has been taken, that the word 'SMITH' is a dictionary word which means 'a worker in a factory'. Mr. Narula, ld. Counsel, submits that the adoption of the mark is completely mala fide in nature and deserves to be injuncted by this Court.
19. Heard. The Court has perused the records as also the reply given by the Defendants. The Plaintiffs have a registration of the word mark 'A.O. SMITH' as also for logo form since 2008 in Classes 7 and 11. The mark 'BLUE DIAMOND' is also registered in class 11. The history of the Plaintiff companies and their businesses is set out in various documents including the website printouts. The products of the Plaintiffs are freely available both in brick-and-mortar shops and online platforms. The same are also promoted extensively through social media. The Defendants' products are also available on various online platforms including e-commerce platforms. The website of the Defendants www.starsmith.in clearly promotes the products under the mark 'STARSMITH' / 'STAR SMITH'. Reply dated 21st April, 2022 to the cease-and-desist notice sent by the CS (COMM) 532/2022 Page 6 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:05.08.2022 10:30:42 Plaintiff, which was sent by email is quite curious and reads as under:
'Dear sir/ma'am This is to inform you that we had registered the Star Group 32 years ago (since 1990) and we have various companies registered under the same. Some of them are Star Enterprises, Star Appliances, Aerostar and Star International. Also we have the legal proofs for the same.
Our all the buildings also contain the word STAR. We had done this registration at a time when A. O. Smith was not known to even a single individual in India.
Now, we have registered our trademark STARSMITH and company Star Smith Export Pvt. Ltd. under the Star Group. We have done so because we named our son Smith.
Thirdly, according to the law, the first 3-4 letters of two trademarks should not be the same. In this case, we have STAR which is absolutely different from your name.
Moreover, there are many other brand names in India that contain the word SMITH, for instance, John Smith, etc. We hereby declare that our company Star Smith Export Pvt. Ltd. and the trademark STARSMITH does not have any kind of relation to A. O. Smith and its subsidiaries.
So, now it is upto you if you wish to continue this objection or not.
For any further clarifications, feel free to contact the undersigned.
THANKS & REGARDS Hitesh Goyal Director'
20. In the reply to the legal notice issued by the ld. Counsel for the Defendants, the defence taken is that Smith is a worker in a factory, as per the dictionary. The relevant portion of the reply dated 10th May, 2022 reads CS (COMM) 532/2022 Page 7 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:05.08.2022 10:30:42 as under:
"15. With regards to point 1 under the title "Amicable Settlement", you have even asked us to immediately cease using a mark/name containing SMITH. It is stated that the word "SMITH" is generic word which has a definite meaning in the English dictionary. It is a well settlement principle of English jurisprudence that words such as "SMITH" are generic and common surname, and no one person can claim to be the sole proprietor of the either the word "SMITH" or its various variations. It is stated that the your clients mark is "A.O. SMITH", and not just "SMITH" and has to be viewed as a whole and shouldn't be dissected in its elements for comparison. Further, records of the Trademark register accessed via the Public search available on the official website of IP India reveals that there exists 19 other registered mark which consist the word "SMITH" in variation forms. It is further submitted that such other "SMITH" marks has been registered even prior to the registration of your client mark and have been actively registered even post the registration of your clients mark."
21. After considering the pleas taken by the Plaintiffs and reply given by the Defendants, this Court is convinced that the use of the mark 'STAR SMITH' / 'STARSMITH' and 'BLUE DIAMOND' for an identical set of products is completely dishonest, inasmuch as the Defendants could not have hit upon both the marks belonging to the Plaintiffs, which are registered trademarks. The Plaintiffs have a global reputation as also reputation in India. The adoption and use of the mark 'STAR SMITH'/ 'STARSMITH' which is deceptively similar to 'A.O. SMITH' and 'BLUE DIAMOND' which is identical to the mark of the Plaintiffs, would clearly lead to likelihood of confusion and infringement of trademarks of the CS (COMM) 532/2022 Page 8 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:05.08.2022 10:30:42 Plaintiffs as per Section 29(2) of the Trade Mark, 1999.
22. The Plaintiffs have, therefore, made out a prima facie case in their favour for grant of an ex-parte ad interim injunction and irreparable loss would be caused to the Plaintiffs, if the injunction is not granted. Balance of convenience lies in the favor of the Plaintiffs. Accordingly, till the next date of hearing, the Defendants shall stand restrained from using the marks 'STAR SMITH' / 'STARSMITH' and 'BLUE DIAMOND' or any other mark that is deceptively similar to the mark of the Plaintiffs for manufacture, distribution, sale of geysers, purification systems, water purifiers, RO systems and other cognate and allied goods. However, insofar as the corporate name of Defendant No.1 is concerned, so long as the same is only used as a corporate name, without giving an undue prominence to 'STAR SMITH', the same shall be continued till the next date of hearing and once the pleadings are completed in the matter, the same shall be finally considered by the Court. Relief qua the domain name shall also be considered after the Defendants have entered appearance in the matter.
23. In view of the findings of the Court, the products bearing the mark 'STAR SMITH' / 'STARSMITH' on various e-commerce platforms shall be taken down within a period of one week from the service of the present order.
24. Compliance of Order XXXIX Rule 3 CPC be done within 1 week.
25. List on 26th September, 2022.
PRATHIBA M. SINGH, J.
AUGUST 3, 2022/dk/sk CS (COMM) 532/2022 Page 9 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:05.08.2022 10:30:42