Delhi High Court - Orders
Wd 40 Manufacturing Company vs The Waxpol Industries Limited on 30 August, 2024
$~22
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 739/2024
WD 40 MANUFACTURING COMPANY .....Plaintiff
Through: Mr. Sudarshan Kumar Bansal, Mr.
Shivang Bansal, Mr. Rahul Sharma,
Mr. Arpit Dudeja and Mr.
Shweindra Pratap Singh, Advocates
versus
THE WAXPOL INDUSTRIES LIMITED .....Defendant
Through: None
CORAM:
HON'BLE MR. JUSTICE SAURABH BANERJEE
ORDER
% 30.08.2024 I.A. 37900/2024 (pre-litigation mediation)
1. The plaintiff vide the present application seeks exemption from instituting pre-litigation mediation.
2. Considering the averments made in the present application wherein the plaintiff seeks urgent ad-interim reliefs and in view of Yamini Manohar vs. T.K.D. Krithi 2023 SCC OnLine 1382 and Chandra Kishore Chaurasia vs. R. A. Perfumery Works Private Limited 2022:DHC:4454- DB, the plaintiff is exempted from instituting pre-litigation mediation.
3. Accordingly, the present application is allowed and disposed of. I.A. 37898/2024 (exemption)
4. Exemption allowed as sought, subject to all just exceptions.
5. The application stands disposed of.
I.A. 37899/2024 (exemption from advance service)
6. The plaintiff vide the present application seeks exemption from advance service upon the defendant.
CS(COMM) 739/2024 Page 1 of 13This 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 03/09/2024 at 01:13:16
7. For the reasons stated in the application as also taking into account the aforesaid factors and in the interest of justice, the plaintiff is granted exemption from effecting advance service upon the defendant.
8. Accordingly, the present application is allowed and disposed of. I.A. 37897/2024 (additional documents)
9. The plaintiff vide the present application seeks time of thirty days to file additional documents.
10. The plaintiff will be at liberty to file additional documents within thirty days, albeit, strictly as per the provisions of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules, 2018.
11. Accordingly, the present application is disposed of. CS(COMM) 739/2024
12. The plaintiff vide the present suit seeks permanent injunction restraining infringement of trade mark, passing off, delivery and rendition of accounts, etc. with respect to its trademark/ trade dress.
13. Let the plaint be registered as a suit.
14. Upon filing of the process fee, issue summons of the suit to the defendant through all permissible modes returnable before the Joint Registrar on 29.11.2024.
15. The summons shall state that the written statement be filed by the defendant within a period of thirty days from the date of the receipt of the summons. Written statement be filed by the defendant along with affidavit of admission/ denial of documents of the plaintiff, without which the written statement shall not be taken on record.
16. Replication thereto, if any, be filed by the plaintiff within a period of fifteen days from the date of receipt of written statement. The said CS(COMM) 739/2024 Page 2 of 13 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 03/09/2024 at 01:13:16 replication, if any, shall be accompanied by with affidavit of admission/ denial of documents filed by the defendant, without which the replication shall not be taken on record within the aforesaid period of fifteen days.
17. If any of the parties wish to seek inspection of any document(s), the same shall be sought and given within the requisite timelines.
18. List before the Joint Registrar for completion of pleadings on 29.11.2024. It is made clear that if any party unjustifiably denies any document(s), then it would be liable to be burdened with costs.
19. List before the Court on 13.01.2025.
I.A. 37896/2024 (u/Order XXXIX rule 1 & 2 CPC, 1908)
20. The plaintiff vide the present application seek ad interim injunction against the defendant.
21. As per pleadings before this Court and arguments addressed in support thereof by the learned counsel for plaintiff, the case of the plaintiff is as under:-
21.1. The plaintiff is a company established under the laws of United States of America and is engaged in the business of manufacturing and marketing of a wide range of chemical products for industrial use, lubricating sprays and penetrating oils and agents, rust prevention and corrosion control agents, protective and decorative coatings, cleaning, polishing, and scouring preparations and related allied/ cognate goods and offering services in connection therewith. The plaintiff is a market leader for its said goods and business and is one of the largest companies in the world engaged in the business of manufacture, distribution, and sale of its said products.
21.2. The plaintiff, through its predecessors in the year 1957 created, CS(COMM) 739/2024 Page 3 of 13 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 03/09/2024 at 01:13:17 conceived, coined, and adopted the word/ mark 'WD-40', word per se, and its stylized, artistic, and formative labels and in the year 1960, the plaintiff created, adopted, and conceived the distinctive trade dress bearing the 'shield device' and a combination thereof with colours blue, yellow and red in a unique placement and get-up along with the trademark 'WD-40'. This said 'shield device' and a combination thereof with the colours blue, yellow and red are individually and conjointly an essential and distinguishing feature of the plaintiff's goods and business. One of the plaintiff's 'WD-40' products relating to its goods and business is as under:
21.3. Since 1963, the plaintiff has been using its trade marks and trade dress in relation to its goods and business and has built up a globally valuable trade in India and overseas. The plaintiff's goods and business under the its trade marks and trade-dress are being used in India since 1986-87 in the course of trade and its trade marks and trade dress are duly registered in India. Few such trade marks like , , , CS(COMM) 739/2024 Page 4 of 13 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 03/09/2024 at 01:13:17 , and the variations thereof, details whereof are in paragraph 6 of the plaint are duly registered, valid and subsisting in the name of the plaintiff in Class(s) 1, 2, 3 and 4 before the Trade Marks Registry. Additionally, the applications for registration of its trade mark are either pending or have been allowed across more than 75 countries world over.
21.4. The plaintiff's goods and business under its said trade marks and trade dress reach customers in more than 176 countries across the globe and it enjoys transborder reputation and use.
21.5. The plaintiff has continuously used the its trade marks and trade dress through its proprietary domain names www.wd40.com and www.wd40company.com. In addition, the plaintiff's goods have been advertised on extremely popular social media sites such as Facebook, Twitter and Instagram and are extensively advertised and available on the internet and on many major websites also which are easily and readily accessible in India including Flipkart, Amazon, Jio Mart, India Mart, etc. 21.6. The artwork involved in the plaintiff's 'shield device' and the trade dress with combination of shield device and colours blue, yellow and red are original artistic works and the plaintiff is the owner and proprietor of the copyrights therein. The plaintiff has also obtained registrations of its below copyrights in India:-
CS(COMM) 739/2024 Page 5 of 13This 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 03/09/2024 at 01:13:17 21.7. The defendant is engaged in the business of manufacturing, wholesaling, and trading of rust removers, lubricants, maintenance sprays, penetrating oils, and related goods/ services. The defendant has adopted and is using in the course of trade the following marks/ trade dress upon and in relation to its impugned goods:-
a) A shield device in yellow colour represented as
b) A trade dress bearing the combination of shield device with
colours blue, yellow and red with a specific placement represented as 21.8. The plaintiff came to know of the defendant manufacturing the impugned goods and also engaging in advertising, soliciting enquiries, supplying, wholesaling, trading, marketing and dealing in the impugned goods in various markets of Delhi and across numerous cities and towns in CS(COMM) 739/2024 Page 6 of 13 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 03/09/2024 at 01:13:17 India in November, 2023.
21.9. Thereafter, the plaintiff bought one of the impugned goods and found that the defendant had also filed an application no. 6147625 in Class 4 for registration of the impugned mark/ trade dress, which has since been declared as 'Abandoned' by the Trade Marks Registry. The plaintiff then issued a Cease-and-Desist Notice dated 21.12.2023, which was followed up by various correspondences exchanged inter se the parties, elaborately detailed in paragraph 44 of the plaint. In few correspondences, though the defendant agreed to change the packaging and sought time for exhausting its pending impugned goods, however since there was no response from the defendant after sometime nothing fructified. Resultantly, the defendant is still continuing with offering and selling the impugned goods. 21.10. The impugned mark/ trade dress are all individually and conjointly identical with and/ or deceptively similar to the plaintiff's respective trade mark(s) and trade dress bearing the 'shield device' and a combination of the very same colours as the plaintiff. The same would cause confusion and deception in the market and amongst the customers resulting in the defendant gaining unfair advantage in trade and commerce and is presently resulting in the plaintiff suffering huge losses, both in business and reputation.
22. This Court has heard the learned counsel for plaintiff and also gone through the pleadings as also perused the documents filed along with it.
23. Since the present dispute is relating to the trade dress/ packaging of the competing parties, given below is the visual representations of both as under:-
CS(COMM) 739/2024 Page 7 of 13This 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 03/09/2024 at 01:13:17
24. A bare perusal of the above, especially from a distance, will lead for any man of average intelligence and a layman to infer that they are one and the same, especially since the defendant has adopted and used the same get-up, trade dress and style for the packaging of the product including the same shape and size of the container as also the cap above it CS(COMM) 739/2024 Page 8 of 13 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 03/09/2024 at 01:13:17 as that of the plaintiff. So much so, the manner of stylisation and choice of colour combination of blue, yellow and red in the very similar manner and the choice of their placement adopted and used by the defendant including the red cap of the container overall body as also the shape of the container including the placement of the cap are also same as that of the plaintiff. Since the defendant has very carefully taken the mirror image of the plaintiff, it has even incorporated the 'shield device' as it is, when this was/ is according to this Court a distinct and stand out feature of the trade dress/ packaging of the plaintiff.
25. Since the defendant has itself on 04.01.2024 in response to the Legal Notice dated 21.12.2023 by the plaintiff proposed to change the trade dress of its container and sought time of six months to sell its existing products as well as to withdraw its trade mark application no.
6147625 in Class IV in the mark as also shared the specimen of its new trade dress of the container on 19.01.2024 and also sought time for exhausting its existing products with the identically similar trade dress of the plaintiff, it reflects that the defendant admitted the case of the plaintiff then, which is the same as set up by the plaintiff before this Court as well.
26. Further, despite there being a lull from its end and despite repeated reminders by the plaintiff, defendant applied for registration of a different packaging before the trade mark Registry despite rejection of the revised CS(COMM) 739/2024 Page 9 of 13 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 03/09/2024 at 01:13:17 packaging by the plaintiff as also that it is continuing to offer and sell its products in the impugned trade dress, reflects that the defendant is deliberately trying to take benefit of the plaintiff by (mis)representing and hoodwinking to the general public at large into believing that its products in the impugned trade dress is the same as the plaintiff.
27. The same is/ cannot be true to the own knowledge of the defendant as being in the identically similar line of business of dealing, offering and selling the very same product as the plaintiff that too though identically similar trade channels for onward catering to the identically similar customers. All the more since the plaintiff is not a fly by night operator and is an existing established entity in the worldwide market, including in India, with a presence of more than 65 years when it has been offering and selling its product under the trade dress involved before this Court and is also having both trade mark and copyright registrations for it/ them as mentioned in paragraph(s) 6 and 18 of the present application in its favour.
28. In the aforesaid backdrop, both adoption and usage of the impugned trade dress for the very same product reflects the deceptive conduct of the defendant, more so, whence the plaintiff has never allowed/ authorised the defendant to do so. This shows that this is with a sheer ulterior motive to ride upon its long established goodwill and reputation of the plaintiff and its already existing trade dress which is/ are validly registered and subsisting in its name.
29. It cannot be disputed that the competing products of the parties, because of their identically similar get up/ trade dress is bound to leave the very same ocular itching on the minds of anyone from the members of the general public. Especially, since the competing products of the parties is CS(COMM) 739/2024 Page 10 of 13 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 03/09/2024 at 01:13:17 an off the shelf product, which have/ leave a more visual impact on everyone. The identically similar impugned product is also likely that such members of the general public commit mistake in buying the product of the defendant without being aware of the same. The identically similar impugned product, thus, can be a tool for the defendant to reap undue benefits of the plaintiff and its product.
30. Therefore, cumulatively taken the plaintiff has been able to make out a prima facie case with the balance of convenience in its favour and against the defendant for grant of an ex parte ad interim injunction. If the defendant is, thus, allowed to continue using the impugned trade dress, which is identically similar to that of the plaintiff, it will cause irreparable loss, harm and injury to it and confusion amongst the members of the trade.
31. Accordingly, till the next date of hearing, the defendant by itself as also through its business partners, associates, assignors, heirs, successors, distributors, dealers, whole sellers, stockists, agents, and all others acting for and on its behalf jointly and severally are:-
a. restrained from manufacturing, wholesaling, trading, advertising, exporting or otherwise using or dealing in rust removers, lubricants, maintenance sprays, penetrating oils or any other identical/similar and/or allied and cognate nature of goods as compared to the goods of the plaintiff, or any other type of goods or services, bearing the impugned mark 'shield device' per se and/or in a yellow colour represented as and/ or the impugned mark/ CS(COMM) 739/2024 Page 11 of 13 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 03/09/2024 at 01:13:17 trade dress and/ or any mark/trade-dress containing the 'shield device' or specific colour combination and placement of blue, yellow and red colours that may be identical with and/or deceptively similar to the plaintiffs said trade marks and trade-dress (represented in paragraph 3, 6 and 18 of the plaint) which would infringe the plaintiffs registered trademarks under registration numbers 473834, 473835, 536881, 1364403, 1364404, 1364405, 1364406, 1364407, 1495076, 534977 and 14995078 and adapting or dealing in the plaintiffs copyrights in its artworks subsisting in the said trademarks and trade dress (represented in paragraph 3, 6 and 18 of the plaint) or any other artwork which is a substantial reproduction thereof, including but not limited to the impugned mark/ trade dress and amounting to infringement of the plaintiff's artistic Copyrights in its trade dress registered under no. A-141505/2022 and/or A-l 41506/2022 and/ or subsisting in its 'shield device' per se or with a yellow colour and/ or the artistic copyrights subsisting in the trademark registrations 473834, 473835, 536881, 1364403, 1364404, 1364405, 1364406, 1364407, CS(COMM) 739/2024 Page 12 of 13 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 03/09/2024 at 01:13:17 1495076, 534977 and 1495078.; and b. directed to disable, block, take down the listings of the impugned goods or any other deceptively similar/ violative goods of the defendant from any ecommerce platforms, social media platforms, third party websites, the defendant's own website or any other online forums subsequently notified by the plaintiff where the impugned violative products may be found.
32. Upon filing of the process fee, issue notice to the defendant by all permissible modes returnable before the Joint Registrar on 29.11.2024.
33. Reply, if any, be filed within a period of thirty days from the date of service. Rejoinder thereto, if any, be filed within a period of fifteen days thereafter.
34. The provisions of Order XXXIX Rule 3 of the Civil Procedure Code, 1908 be complied within two weeks.
35. List before the Court on 13.01.2025.
SAURABH BANERJEE, J AUGUST 30, 2024/So CS(COMM) 739/2024 Page 13 of 13 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 03/09/2024 at 01:13:17