Bombay High Court
Ultra Tech Cement Ltd. And Another vs Kotai Mineral Products Pvt. Ltd on 25 October, 2018
Author: S.J.Kathawalla
Bench: S.J. Kathawalla
ssp nmcdl 2527 of 2018.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
NOTICE OF MOTION (L) NO.2527 OF 2018
IN
COMM. IP SUIT (L) NO.1431 OF 2018
WITH
LEAVE PETITION NO.329 OF 2018
UltraTech Cement Ltd. and Anr. ... Applicants/Plaintiffs
versus
Kotai Mineral Products Private Limited ... Defendant
Dr. Birendra Saraf along with Mr. Ashutosh Kane and Ms. Nadine Kolliyil instructed
by W.S. Kane & Co, Advocates for the Plaintiffs.
None for the Defendant
CORAM: S.J. KATHAWALLA, J.
DATE: 25th OCTOBER, 2018 P.C.:
1. Heard the Learned Advocate appearing for the Plaintiffs. The Plaintiffs have already tendered Affidavits of Service, dated 22 nd October, 2018 and 23rd October, 2018, which show that the Defendant has been served the papers and proceedings in the above matter as also in the matter of Petition No. 329 of 2018 taken out by the Plaintiffs for obtaining Clause XIV of the Letters Patent (Bombay) by courier as well by e-mail, respectively. It is submitted on behalf of the Plaintiffs that notice of today's ad- interim application has been given by e-mail to the Defendant on 24 th October, 2018. Print out of the said email is tendered on behalf of the Plaintiffs in Court. From the 1/12 ::: Uploaded on - 27/10/2018 ::: Downloaded on - 28/10/2018 00:48:09 ::: ssp nmcdl 2527 of 2018.doc aforesaid, prima facie it appears that though served and despite notice, the Defendant has chosen to remain absent.
2. The 1st Plaintiff is said to be originally incorporated under the name L & T Cement Limited as part of Larson & Toubro Limited's cement division. The 2 nd Plaintiff in or about 2001 is said to have acquired a 10% stake in Larson & Toubro Limited, which increased to around 20% by 2002. Larson & Toubro Limited in or about 2003 is said to have demerged its business into a separate cement company in the name of UltraTech Cemco Limited, in which the 2 nd Plaintiff acquired the controlling stake. The name UltraTech Cemco Limited is said to be changed to UltraTech Cement Limited in or about 14 th October, 2004. It is submitted that in or about 2010, the 2nd Plaintiff's cement division, Samruddhi Cement Limited, was demerged and amalgamated with UltraTech Cement Limited. The 1 st Plaintiff is therefore said to be the subsidiary of the 2 nd Plaintiff and is carrying on the business of manufacturing, marketing and selling of cement and other allied goods.
3. The Defendant is also carrying on the similar business of manufacturing, marketing and/or selling cement from the address mentioned in the cause title.
4. According to the Plaintiffs in or about early 2003, the 1 st Plaintiff introduced its goods under its flagship brand UltraTech in India with the view to distinguish the said goods from those of others. The 1 st Plaintiff has subsequently adopted various formative marks all containing the word UltraTech/ Ultra as their leading, essential 2/12 ::: Uploaded on - 27/10/2018 ::: Downloaded on - 28/10/2018 00:48:09 ::: ssp nmcdl 2527 of 2018.doc and memorable feature in relation to the said goods. The 1 st Plaintiff subsequently applied for and eventually secured registration of its various UltraTech and/or Ultra trade marks. A list containing the particulars of the 1 st Plaintiffs trade mark registrations is at Exhibit "A-1" to the plaint. It is submitted that the 2 nd Plaintiff has also applied for and eventually secured the registrations of various UltraTech trade marks. A list containing the particulars of the 2 nd Plaintiff's trade mark registrations is at Exhibit "A-2" to the plaint. It is submitted that in the meanwhile, vide a Deed of Assignment dated 30th September, 2009 the 1st Plaintiff assigned and transferred its aforesaid registrations as more particularly listed in Exhibit "A-1" to the plaint along with goodwill of the business thereof to the 2 nd Plaintiff. It is submitted that 2nd Plaintiff accordingly made the necessary application on Form TM-24 dated 1 st December, 2009 before the Registrar of Trade Marks to bring itself on record as the subsequent proprietor of the registered trade marks as more particularly listed in Exhibit "A-1" to the plaint. Subsequently, the Registrar of Trade Mark vide his order dated 7th October, 2017 allowed the aforesaid application on Form TM-24. It is therefore submitted that the 2nd Plaintiff is the (present) registered proprietor of the registered trade marks as more particularly listed in Exhibits "A-1" & "A-2" to the plaint. The Learned Advocate submits that pertinently, the 2 nd Plaintiff has also secured registration of the word mark UltraTech (in Devanagari) in Class 19, the particulars whereof have been detailed at Exhibit "A-2" to the plaint. Copies of the 3/12 ::: Uploaded on - 27/10/2018 ::: Downloaded on - 28/10/2018 00:48:09 ::: ssp nmcdl 2527 of 2018.doc registration certificates of the aforesaid trade mark registrations are at Exhibits "B-1"
to "B-30" to the plaint. It is submitted that the 2 nd Plaintiff is also the registered proprietor of the trade mark "UltraTech Cement" along with the tagline "The Engineer's Choice" in respect of the said goods, the details whereof are included in Exhibit "A-1" to the plaint. A picture of the Plaintiffs' cement bag bearing the trade mark "UltraTech Cement" along with the tagline "The Engineer's Choice" is at Exhibit "A-3" to the plaint. The aforesaid registered trade marks containing the words "UltraTech"/ "UltraTech Cement the Engineer's Choice"/ "Ultra" are hereinafter collectively referred to as "the said trade mark" for the sake of brevity and convenience.
5. The said trade mark is said to have been openly, continuously and extensively used by the 2nd Plaintiff as well as by the 1 st Plaintiff as the licensee of the 2nd Plaintiff. In support of their claim of user of the said trade mark, the Plaintiffs have furnished their sales volumes, Net Turnover and advertisement expenses figures between the years 2003-2004 to 2017-2018 certified by Chartered Accountant (Exhibit D to the Plaint), and copies of sales invoices (Exhibits E-1 to E-14 to the Plaint). The Plaintiffs claim that consequently, immense goodwill and reputation has been earned by them in the said trade mark. It is submitted that the tagline "The Engineer's Choice" is memorable and impactful, which lingers in the minds of consumers and has remained as an aftertaste of the Plaintiffs' various advertising campaigns. It is 4/12 ::: Uploaded on - 27/10/2018 ::: Downloaded on - 28/10/2018 00:48:09 ::: ssp nmcdl 2527 of 2018.doc submitted that the tagline "The Engineer's Choice" has therefore assumed significance in the minds of the consumers and consequently, immense goodwill and reputation has also been earned by the Plaintiffs in the tagline "The Engineer's Choice".
6. It is submitted that this Court, vide orders dated 12th December, 2011 and 30th January, 2012 in a Suit between the Plaintiffs herein and Dinesh Kothari & Anr., being Suit No. 443 of 2012 has held that the Plaintiffs' said trade mark is a well-known trade mark. Copies of the said orders dated 12 th December, 2011 and 30th January, 2012 passed in the aforesaid Suit are at Exhibits "F-1" & "F-2" to the plaint. It is submitted that the said trade mark has now been included in the list of well-known trade marks. An extract from the list of well-known trade marks from the official website of the Trade Marks Registry is at Exhibit "F-4" to the plaint.
7. It is submitted that the Plaintiffs have been vigilantly protecting their aforesaid intellectual property rights and have obtained various orders/ decrees from this Court in respect of infringement of their said trade mark and/or passing off against the various infringers. In support thereof, Learned Advocate for the Plaintiffs has tendered a Compilation of Orders of this Court wherein the Plaintiffs have been granted reliefs in respect of the said trade mark against various infringers.
8. It is submitted that in or about the fourth week of July, the Plaintiffs came across the Defendant's cement (hereinafter referred to as "the impugned goods") 5/12 ::: Uploaded on - 27/10/2018 ::: Downloaded on - 28/10/2018 00:48:09 ::: ssp nmcdl 2527 of 2018.doc packed in bags bearing the trade mark "Ultra" along with the tagline "the Ultimate Choice" (hereinafter collectively referred to as "the impugned trade mark"). A photostat copy of the Defendant's cement bag bearing the impugned trade mark is at Exhibit "G" to the plaint. It is submitted that aggrieved by the use of the impugned trade mark, the Plaintiffs through a notice dated 26th July, 2018 inter-alia informed the Defendant of their proprietary and statutory rights in the said trade mark and called upon the Defendant to cease and desist from using the impugned trade mark. A copy of the Plaintiffs' aforesaid cease and desist notice dated 26th July, 2018 is at Exhibit "H-1" to the plaint. It is submitted that in response thereto, the Defendant vide letter dated 9th August, 2018 inter-alia informed the Plaintiffs that it has applied for registration of the impugned trade mark under Application No. 3574840 in respect of "Chemicals" in Class 01 and that the goods covered under the aforesaid trade mark application are different from the Plaintiffs' said goods. A copy of the reply dated 9 th August, 2018 from the Defendant is at Exhibit "H-2" to the plaint. It is submitted that however, upon perusing the details of the aforesaid Application No. 3574840 on the official website of the Trade Marks Registry, the Plaintiffs noticed that the goods covered by the Defendant's aforesaid trade mark application are "Cement". A copy of the trade mark application filed by the Defendant is at Exhibit "I-1" to the plaint. It is submitted that the said trade mark application has since been abandoned vide an order dated 6th February, 2018 passed by the Registrar of Trade Marks. A copy of the order 6/12 ::: Uploaded on - 27/10/2018 ::: Downloaded on - 28/10/2018 00:48:09 ::: ssp nmcdl 2527 of 2018.doc dated 6th February, 2018 passed by the Registrar of Trade Marks abandoning the Defendant's aforesaid trade mark application is at Exhibit "I-2" to the plaint. It is submitted that at around the same time, the Plaintiffs came to learn that the Defendant has continued to manufacture, market and/or sell the impugned goods bearing the impugned trade mark.
9. Learned Advocate for the Plaintiffs submits that the rival trade marks, "UltraTech Cement" and "Ultra Cement" are closely and deceptively similar to each other. In support of this contention, Learned Advocate for the Plaintiffs has drawn my attention to the following observations of the Division Bench of this Court in the case of Alkananda Cement Pvt. Ltd. & Anr. v. UltraTech Cement Limited (Appeal (L) No. 463 of 2011 in Notice of Motion No. 1183 of 2009 in Suit No. 743 of 2009) :
"18. The similarity between the Plaintiff's mark and that being used by the Defendants is quite close both visually and phonetically. Both the marks start with the word "Ultra" and end with the word "Cement"......... We are of the prima facie opinion that the essential features of the trade mark of the Plaintiff have been adopted by the Defendants.........." Learned Advocate for the Plaintiffs submits that the dishonesty of the Defendant is even more apparent in the present case since the Defendant is not only using the trade mark "Ultra Cement" but is also using the expression/ tagline "The Ultimate Choice", which is deceptively similar to the Plaintiffs' tagline "The Engineer's Choice". Learned Advocate for the Plaintiffs submits that this will only add to the confusion and deception." 7/12 ::: Uploaded on - 27/10/2018 ::: Downloaded on - 28/10/2018 00:48:09 :::
ssp nmcdl 2527 of 2018.doc
10. I have heard the Learned Advocate appearing for the Plaintiffs and perused the relevant pleadings and documents annexed to the plaint as well as the Compilation of Orders tendered on behalf of the Plaintiffs. I have also perused the registration obtained by the Plaintiffs for the word mark UltraTech (in Devnagari) in Class 19 in relation to inter-alia cement. The Defendant's choice of the words "Ultra Cement" is hardly inspiring. I am in agreement with the submissions made on behalf of the Plaintiffs that mere deletion of the word "Tech" from "UltraTech" while retaining the word "Cement" fails to make the impugned trade mark dissimilar to the Plaintiffs' trade mark "UltraTech/ Ultra Tech Cement". In fact, a mere glance at the impugned trade mark at Exhibit "G" to the plaint makes it clear that the leading and essential features of the impugned trade mark are the words "Ultra Cement". The substitution of the tagline "The Engineers Choice" with the tagline "The Ultimate Choice" is no matter of coincidence. On the contrary, the Defendant's dishonesty is writ large through such conduct. This Court (Patel, J) has already observed in its order dated 7 th July, 2014 (in Notice of Motion No. 1398 of 2014 in Suit No. 713 of 201 filed by the Plaintiffs against ECI Limited) that merely replacing the words "The Engineer's Choice" with the words "The Ultimate Choice" is only likely to further the confusion and deception. Prima facie, the rival trade marks are deceptively similar. The rival goods are also identical/ similar.
11. Learned Advocate for the Plaintiffs, fairly, also tenders a copy of the order and 8/12 ::: Uploaded on - 27/10/2018 ::: Downloaded on - 28/10/2018 00:48:09 ::: ssp nmcdl 2527 of 2018.doc judgment of this Court (Gupte, J) in the matter of Ultratech Cement Limited v/s Dalmia Cement Bharat Limited reported in 2016(67) PTC 314 (BOM) as also a copy of the order in Ultratech Cement Limited v/s Dalmia Cement Bharat Limited (Commercial Appeal No. 11 of 2016 in Notice of Motion No. 76 in 2014 in Suit No. 42 of 2014). I have perused the said orders and judgment. Prima facie, the facts thereof are sufficiently distinguishable from the facts of the present case. Moreover, I observe from the order in Ultratech Cement Limited v/s Dalmia Cement Bharat Limited (Commercial Appeal No. 11 of 2016 in Notice of Motion No. 76 in 2014 in Suit No. 42 of 2014), that the Division Bench of this Court has referred the matter back to the Learned Single Judge to decide the Notice of Motion on its own merits uninfluenced by the observations as made by the Learned Single Judge in his order and judgment reported in 2016(67) PTC 314 (BOM). Further, as pointed out by the Learned Advocate for the Plaintiffs, the Plaintiffs have, after the date of the aforesaid order and judgment, obtained registration of the word mark UltraTech (in Devnagari) in Class 19 in respect of inter-alia Cement. Learned Advocate for the Plaintiffs submits that the aforesaid word mark registration does not have any condition or disclaimer. This, in my opinion, are significant facts which cannot be ignored or overlooked.
12. In the circumstances, I am satisfied that the Plaintiffs have made out a strong prima facie case for grant of reliefs for infringement of trade mark and passing off. There is a likelihood of confusion and deception amongst the public by use of the 9/12 ::: Uploaded on - 27/10/2018 ::: Downloaded on - 28/10/2018 00:48:09 ::: ssp nmcdl 2527 of 2018.doc trade mark "Ultra Cement" as also the tagline "The Ultimate Choice" by the Defendant. Unless the said reliefs are granted, the Plaintiffs are likely to suffer irreparable injury. The balance of convenience strongly tilts in the favour of the Plaintiffs. Accordingly, pending the hearing and final disposal of the above Notice of Motion, there shall be an ad-interim order in terms of prayer clauses (a), (b) and (c) of the above Notice of Motion which are reproduced as follows:
(a) "that pending the hearing and final disposal of the suit, the Defendant by itself, its directors, servants, employees, agents, stockists, dealers, distributors and all persons claiming under it be restrained by an order and temporary injunction of this Hon'ble Court from infringing the 2nd Plaintiff's registered trade mark bearing the registration numbers as more particularly listed in Exhibits "A-1"
& "A-2" to the plaint by using the impugned trade mark and/or any other trade mark deceptively similar to the 2 nd Plaintiff's registered trade marks bearing the registration numbers as more particularly listed in Exhibits "A-1" & "A-2" to the plaint in respect of the goods covered by the 2 nd Plaintiff's aforesaid registrations or similar goods or in any other manner whatsoever;
(b) that pending the hearing and final disposal of the suit, the Defendant by itself, its directors, servants, employees, agents, stockists, dealers, distributors and all persons claiming under it be restrained by an order and temporary injunction of 10/12 ::: Uploaded on - 27/10/2018 ::: Downloaded on - 28/10/2018 00:48:09 ::: ssp nmcdl 2527 of 2018.doc this Hon'ble Court from using the impugned trade mark and/or any other trade mark deceptively similar to the Plaintiffs' said well-known trade mark in relation to cement and/or similar goods so as to pass off or enable others to pass off the impugned goods as and for the Plaintiffs' said well-known goods or in any other manner whatsoever;
(c) that pending the hearing and final disposal of the suit, the Court Receiver, High Court, Bombay be appointed under Order XL Rule 1 of Civil Procedure Code, 1908, as the Receiver of the of the Defendant's goods bearing the impugned trade mark and other things and records in respect thereof with all powers to forcibly enter, along with the Plaintiffs' representative, upon the premises of the Defendant and/or its stockists, agents and/or dealers and/or any person claiming through it/ them at any time of the day or night without notice to the Defendant and with the help of police if necessary, to break open the lock/s if deemed necessary, to seize and take charge, possession and control of all the goods, bags, things, wrappers, dies, literature, blocks and packing material bearing / containing the impugned trade mark and/or any other trade mark which is deceptively similar to or a substantial reproduction of the Plaintiffs' said trade mark and also to take charge and possession of loose packing material, bags, labels and all other goods, wrappers, dies, literature, blocks, packing 11/12 ::: Uploaded on - 27/10/2018 ::: Downloaded on - 28/10/2018 00:48:09 ::: ssp nmcdl 2527 of 2018.doc material, records, account books or material pertaining thereto in possession and/or control of the Defendant and/or its agent, dealers and/or any person claiming through them;"
13. The Court Receiver is, for the present, only to make an inventory of the impugned goods bearing the impugned trade mark as also the invoices, books of accounts etc., bearing the impugned trade mark. The infringing material is to be sealed in the premises of the Defendant. The Court Receiver is directed to submit a report to this Court on 21st November, 2018. The Senior Police Officer(s) and/or any other concerned police authorities under whose jurisdiction the Defendant's address is located and directed to render all possible assistance to the Court Receiver to ensure effective implementation of this order.
14. List the above Notice of Motion, for further reliefs on 21 st November, 2018. Liberty to the Defendant to apply for variation of this order with 48 hours prior notice to the Plaintiffs.
15. All parties including the Court Receiver are directed to act on an ordinary copy of this order duly authenticated by the Associate/Personal Assistant of this Court.
( S.J.KATHAWALLA, J. ) 12/12 ::: Uploaded on - 27/10/2018 ::: Downloaded on - 28/10/2018 00:48:09 :::