Delhi High Court - Orders
Wd 40 Manufacturing Company vs H P Enterprises & Ors on 26 February, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~42
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 141/2024
WD 40 MANUFACTURING COMPANY ..... Plaintiff
Through: Ms. S. Janani, Senior Advocate with
Mr. Sudarshan Kumar Bansal,
Mr. Shivang Bansal, Mr. Saurabh
Arora, Advocates.
versus
H P ENTERPRISES & ORS. ..... Defendants
Through: Mr. Sanjay Rana, Mr. Akash Kumar,
Mr. Phillip Massey, Mr. Manish
Sharma, Mr. Yogendra Mohan Harsh,
Mr. Naveen Kumar and Mr. Pardeep
Kumar, Advocates for D-1 to 3.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 26.02.2024 I.A. 3590/2024 (for exemption from filing original, clear copies, legible copies and documents with proper margins)
1. Exemption is granted, subject to all just exceptions.
2. Plaintiffs shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
3. Accordingly, the application stands disposed of.
I.A. 3589/2024 (seeking leave to file additional documents)
4. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
CS(COMM) 141/2024 Page 1 of 7This 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 27/02/2024 at 22:49:39
5. If Plaintiff wishes to file additional documents at a later stage, they shall do so strictly as per the provisions of the said Act.
6. Accordingly, the application stands disposed of.
I.A. 3592/2024 (seeking exemption from invoking pre-institution suit mediation)
7. As the present suit contemplates urgent interim relief, in light of the judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.
8. Disposed of.
CS(COMM) 141/2024
9. Let the plaint be registered as a suit.
10. Issue summons. Mr. Sanjay Rana, Advocate, accepts summons on behalf of the Defendants. He confirms receipt of the suit paper-book and waives the requirement for formal service of summons by the Registry. Written statement be filed by the Defendant within 30 days from today. 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.
11. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement. 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.
CS(COMM) 141/2024 Page 2 of 7This 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 27/02/2024 at 22:49:39
12. List before the Joint Registrar for marking of exhibits on 30th April, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
13. List before Court for framing of issues thereafter.
I.A. 3588/2024 (under Order XXXIX Rules 1 and 2 read with Section 151)
14. Issue notice. Mr. Sanjay Rana, counsel for Defendants, accepts notice.
15. Ms. S. Janani, Senior Counsel for Plaintiff, has presented the following facts and contentions:
15.1. The Plaintiff is the registered proprietor of the trademark 'WD-
40'. In or about the year 1957, the Plaintiff, through its predecessors, had conceived, coined and adopted the word mark 'WD-40' as well as various stylized, artistic and formative labels of the said mark [collectively, "WD-40 Marks"].
15.2. The WD-40 Marks are utilized for manufacture and marketing of a wide range of chemical products for industrial use; lubricating sprays and penetrating oils and agents, rust prevention and corrosion control, cleaning, polishing, etc. 15.3. Plaintiff also asserts rights over the distinctive trade dress adopted by them in or about the year 1960 for the sale of their products, which bears, inter alia, the WD-40 Marks. Furthermore, the artwork involved in the Plaintiff's WD-40 Marks and trade dress are original artistic works of the Plaintiff, protected under the Indian Copyright Act, 1957.2 15.4. The Plaintiff's WD-40 Marks are unique and arbitrary in nature in relation to the Plaintiff's goods and business, and therefore work as a 1 2023 SCC OnLine SC 1382.
CS(COMM) 141/2024 Page 3 of 7This 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 27/02/2024 at 22:49:40 source identifier for them. A representation of one of the Plaintiff's products containing the WD-40 Marks and trade dress is extracted below:
15.5. In India, the WD-40 Marks are registered in favour of the Plaintiff under the Trade Marks Act, 1999 ["Act"]. The registration details are set out in Paragraph No. 6 of the plaint. Further, the Plaintiff also has trademark registrations in respect of the WD-40 Marks in several other countries. The Plaintiff has incurred substantial expenses for advertising and promotion of their WD-40 Marks and consequently, they have acquired formidable goodwill and reputation, which is evident from the global sales as well as sales in India, details whereof have also been delineated in the plaint.
15.6. Plaintiff's grievance arises from the Defendant's adoption of the stylized mark 'HP-40' and trade dress ["Impugned Marks"] in respect of identical goods as those produced by the Plaintiff. A representation of the Defendant's products utilising the Impugned Marks is extracted 2 Details of Plaintiff's copyright registrations have been set out at Paragraph No. 19 of the plaint.CS(COMM) 141/2024 Page 4 of 7
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 27/02/2024 at 22:49:40 hereinbelow:
15.7. The Defendants' Impugned Marks are deceptively similar to the Plaintiff's WD-40 Marks and trade dress. Defendants have deliberately and dishonestly adopted a new combination of two letters of the English alphabet as a prefix to the numeral '40' with the sole intention of riding on Plaintiff's goodwill and reputation in relation to the WD-40 Marks. Further, the fact that the Impugned Marks are used in respect of the same category of goods amplifies the likelihood of creating confusion for unwary customers.
Accordingly, the instant suit has been filed seeking protection of the Plaintiff's registered WD-40 Marks.
16. Mr. Sanjay Rana, counsel for Defendants, controverts the submissions advanced on behalf of the Plaintiff. At the outset, he contends that since the Defendants' brand name is 'HYSIL', which is distinctive from Plaintiff's products, there is no likelihood of confusion. He argues that the prefix 'HP', which is also used in Defendant No. 1's corporate name i.e. 'HP CS(COMM) 141/2024 Page 5 of 7 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 27/02/2024 at 22:49:40 Enterprises', is in fact an abbreviation comprising of the letters of the name of Defendant No.1's proprietor viz. Mr. Harpal Singh (Defendant No. 2). As regards the adoption of the numeral '40', Mr. Rana is unable to provide a cogent answer, yet he claims that numeral '40' is common to trade.
17. The Court has considered the aforenoted contentions. Upon comparing the competing marks, the Court is of the prima facie opinion that although the respective prefixes use two different letters of the alphabet, i.e., 'WD' as opposed to 'HP', yet the essential feature for consideration is the use of such a prefix in combination with the numeral '40'. The Defendants' mark 'HP-40' is thus phonetically and structurally similar to the Plaintiff's mark 'WD-40'. Furthermore, the Defendants are using the infringing marks in relation to same category of goods. The impugned products also utilise trade dress which is prima facie similar to the Plaintiff's trade dress, as reproduced above. Moreover, the Defendants' counsel has no explanation to offer for adopting the numeral '40', which is plainly arbitrary use in relation to the goods in question. Although they have claimed that such use is common to trade, however, upon a specific query of the Court to demonstrate the same, the counsel for Defendants are unable to present any material in support of their contention.
18. In view of the above, and considering the fact that the Impugned Marks are used in respect of the same category of goods as those produced by the Plaintiff, the Court finds a prima facie case in favour of the Plaintiff regarding the Defendant's mark being deceptively similar to Plaintiff's mark. The balance of convenience also lies in favour of the Plaintiff, and in case no injunction is granted, irreparable harm would be caused to them.
19. Accordingly, till the next date of hearing, the Defendants, and/or any CS(COMM) 141/2024 Page 6 of 7 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 27/02/2024 at 22:49:40 person acting on their behalf, are restrained from using the stylized mark 'HP-40' and/or any other trademark/ trade dress which is deceptively similar to the Plaintiff's WD-40 Marks and trade dress. It is however clarified that this injunction shall not apply to such goods which have already been manufactured as on the date of passing of the order. In order to ensure that there is no misuse of such a direction, the Defendants must positively file an affidavit within three days from today providing full details of the goods manufactured as on date, such as date of manufacture, batch number, etc. The Defendant shall also, within one from the date of uploading this order, take down the listing of the infringing products from their website.
20. Let a reply be filed within four weeks from today. Rejoinder thereto, if any, be filed within two weeks thereafter.
21. List on 14th May, 2024.
SANJEEV NARULA, J FEBRUARY 26, 2024 nk CS(COMM) 141/2024 Page 7 of 7 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 27/02/2024 at 22:49:40