Delhi High Court
Siemens Aktiengesellschaft vs Siemens Project India Pvt. Ltd. on 9 October, 2015
Author: Manmohan Singh
Bench: Manmohan Singh
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Order delivered on: 9th October, 2015
+ CS (OS) No.3785/2014
SIEMENS AKTIENGESELLSCHAFT ..... Plaintiffs
Through Ms. Manju Aggarwal & Mr. Surjeet
Singh, Advs.
Versus
SIEMENS PROJECT INDIA PVT. LTD. .... Defendant
Through Defendant is ex-parte
CORAM:
HON'BLE MR.JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J.
1. The plaintiffs have filed a suit for permanent injunction restraining infringement of the trademark, misuse of the trademark SIEMENS as a trading name, damages, delivery up etc. against the defendant.
2. The defendant is ex parte. No written statement has been filed by the defendant. The plaintiffs have filed the ex parte evidence by way of affidavit of Ms. Vandana Prabhu as PW-1. The same was tendered in evidence as PW-1/X. Certain documents were exhibited in the affidavit.
3. As per pleadings and affidavit, it has come on record that the plaintiff No. 1 is a company existing under the laws of Germany and having its registered office at Wittelsbacherplatz 2, Munich, Germany CS (OS) No.3785/2014 Page 1 of 14 who had executed a Power of Attorney dated 4th May, 2015, whereby PW-1 has been authorized to represent and give evidence on behalf of the plaintiff Company. The original Power of Attorney dated 4th May, 2015 has been exhibited as Ex.PW 1 /1.
4. The plaintiff No. 2 Company had passed a resolution on 4th May, 2015 authorizing PW-1 to represent and give evidence on behalf of the plaintiff No. 2 Company vide Power of Attorney dated 14th May, 2015. The original Board Resolution dated 4th May, 2015 has been exhibited as Ex.PW1/2 and original Power of Attorney dated 14th May, 2015 has been exhibited as Ex.PW 1/3.
5. This suit was instituted through the plaintiffs' constituted Attorney, Mrs. Laxmi Bisht who is duly authorized to do so on its behalf. The original Constituted Power of Attorneys executed by the plaintiff Nos. 1 and 2 in favour of Mrs. Laxmi Bisht have been exhibited as Ex.PW 1/4 and Ex.PW1/5.
6. The plaintiff No.1 is an old, well known, reputed and established company since over the past 150 years engaged in the manufacture and marketing of a wide range of mechanical and electrical goods including electrical consumer and industrial machines, apparatuses under its world renowned and reputed trademark SIEMENS.
7. The plaintiff No. 1 is registered proprietor of the trademark SIEMENS in the following classes:-
CS (OS) No.3785/2014 Page 2 of 14 Sl. No. Trademark Class Dated
Registration No.
1. 153597 07 19.04.1952
2. 153598 09 19.04.1952
3. 153599 10 19.04.1952
4. 153600 11 19.04.1952
5. 1598675 1,5,10,35 06.09.2007
8. The original legal certificates of above mentioned trademarks have been exhibited as Ex.PW1/6 to Ex. PW1/10.
9. The trademark SIEMENS was first adopted by the plaintiff in the year 1847 in Germany by the predecessors-in-title of the plaintiff in respect of the aforesaid goods and used continuously by its successor in title.
10. The trademark SIEMENS has been registered by the plaintiff in respect of its aforesaid goods in most countries of the world. List of the trademark registrations for the trademark SIEMENS in various countries of the world have been collectively exhibited as Ex.PW 1/11 (colly.) and Registration Certificates have been exhibited as Ex.PW1/12(colly.).
11. The word SIEMENS also constitutes an important feature of the trading name of the plaintiffs. The trademark and trade name SIEMENS was adopted from the surname of the founder of the plaintiffs. The plaintiff No.1 and its goods are often known and CS (OS) No.3785/2014 Page 3 of 14 referred to as SIEMENS. Plaintiff No.1 is the parent company to plaintiff No.2 and has permitted plaintiff No.2 to use the trademark and trade name SIEMENS.
The approximate sales of the goods of the plaintiff No.1 bearing the trademark SIEMENS worldwide for the year 2007 to 2013 (till March) are as follows:-
Year Net Sales Worldwide(in Mill.Euros) 2007 72 2008 77 2009 77 2010 76 2011 73 2012 78 2013 (upto March) 36
12. The plaintiff No.1 has considerably exported its goods bearing the trademark SIEMENS from Germany to various countries of the world. Besides the plaintiff No. 2 being a subsidiary of plaintiff No.1 in India, plaintiff No. 1 has also other subsidiaries or related companies in several countries of the world, and a few of such countries are listed in the book titled "150 years of Siemens". The catalogue has been exhibited as Ex.PW1/13. The said company has also with the permission of plaintiff No.1 has been using the trademark SIEMENS in respect of its various goods and services. The approximate sales CS (OS) No.3785/2014 Page 4 of 14 of the goods of the Indian subsidiary bearing the trademark SIEMENS for the year 2007 to 2013 (upto March) are as follows:-
Year Sales(Rupees in millions) 2007 76,778 2008 82,504 2009 83,367 2010 92,707 2011 118,936 2012 127,081 2013 (upto March) 53,696
True copies of invoices and Annual Report for the year 1982/83 have been exhibited as Ex.PW1/14 (colly.) and Ex.PW1/15 respectively.
13. The plaintiff No.2 has also considerably advertised the trademark SIEMENS in India in respect of its aforesaid goods and services. The approximate costs of such advertisements for the years 2007 to 2012 preceding are as follows:-
Year Advertisement & Publicity (Rupees
in millions)
2007 216
2008 128
2009 5
2010 98
2011 154
CS (OS) No.3785/2014 Page 5 of 14
2012 257
14. It is stated in the evidence of PW-1 that by virtue of the excellent quality of the products of plaintiff No.2, the trademark SIEMENS has acquired in all the markets of the country, a handsome and valuable reputation and intending purchasers identify and recognize the products of the plaintiffs by the trademark SIEMENS and the trademark SIEMENS is a well known trademark.
15. I have heard the learned counsel appearing on behalf of the plaintiffs. Apart from the facts stated above and documents proved by the plaintiffs, it is also a matter of fact that the plaintiffs have also registered the following domain names:-
i) www.siemens.com owned by plaintiff No.1 since 29th September 1986.
ii) www.siemens.co.in owned by plaintiff No.2 since 28th February 2009.
The plaintiffs' products have been promoted under the registered trademark Siemens in print, over the internet and mass media. The plaintiffs' Company advertises and provides information of their products and services on their websites www.siemens.com and www.siemens.co.in. The abovementioned websites are like virtual showrooms and a large number of prospective customers visit the website of plaintiffs.
Printout of the website www.siemens.com owned by plaintiff No. 1 has been exhibited as Ex.PW 1/16 (colly.) and printout of the CS (OS) No.3785/2014 Page 6 of 14 website www.siemens.co.in owned by plaintiff No. 2 has been exhibited as Ex.PW1/17 (colly.).
16. The defendant is using the trademark SIEMENS with respect to their trading name and also registered domain name www.siemensprojectindiapvtltd.com and running a website www.siemensprojectindiapvtltd.com which is infringing the plaintiffs registered trademark SIEMENS.
Printout of whois record showing details of the domain name www.siemensprojectindiapvtltd.com has been exhibited as Ex.PW1/18 and the website of the defendant www.siemensprojectindiapvtltd.com has been exhibited as Ex.PW1/19 (colly) respectively.
17. Admittedly, the plaintiffs issued a cease and desist notice dated 17th June, 2014 followed by a reminder dated 28th July, 2014 informing the defendant about its trademark rights in the trademark SIEMENS and also requesting them to discontinue the unauthorized use of SIEMENS. Pertinently, the defendant did not reply to this cease and desist notice. True copy of the cease and desist notice, reminder and original postal receipts have been exhibited as Ex.PW1/20 (colly).
18. Thereafter, to the utter shock of plaintiffs, on 10th November, 2014, a customer by the name of Abhijit Bhatacharjee on behalf of Rourkela Steel Corporation lodged an email complaint on the GSS portal of the website of plaintiff No. 2 which is as follows:-
CS (OS) No.3785/2014 Page 7 of 14"We supplied some Steel Plates to Siemens Project India Pvt. Ltd at plot no 171 C, N-3 CIDCO, MIDC Area, Aurangabad- 431001, Maharashtra amounting to Rs. 3,81,914.00. The cheque issued by them as payment against above supply was returned back(bounced) by their bank for insufficient fund"
And enquiring following query;-
"Q1. Is it your group Company Q2. How our payment will be realized"
Printout of an email complaint dated 10th November, 2014 on GSS portal ([email protected]) of the plaintiffs has been exhibited as Ex.PW1/21.
19. It is deposed in the testimony of PW-1 that on further inquiry plaintiff No. 2 came to know that the defendant under the name of SIEMENS Project India Pvt. Ltd. also released a purchase order dated 5th September, 2014 to Rourkela Steel Corporation and issued a cheque of Rs. 3,81,914 dated 7th October, 2014 to Steel Corporation which was dishonored by the bank for "Insufficient Funds". Copy of the purchase order has been exhibited as Ex. PW 1/22.
20. It is evident from the material available on record that the defendant has adopted the name of SEMENS in their trading name/corporate name merely to encash on the tremendous goodwill and reputation of the plaintiffs company and to defraud large portion of the population. The defendant has also registered the domain name www.siemensprojectindiapvtltd.com and running website www.siemensprojectindiapvtltd.com. The defendant has adopted trading name in respect of their products and services. The defendant CS (OS) No.3785/2014 Page 8 of 14 has also advertised that they are part of the SIEMENS GROUP. The defendant has also created deceptively similar email id [email protected] having name SIEMENS. The use of the deceptive similar email id by the defendant is to deceive the general public and cause confusion which in turn is and will continue to cause irreparable damages to the plaintiffs.
21. The said website of the defendant is offering services in relation to chemical plants, pharmaceutical plants, fertilizer, boiler plant, pipes lines, S.S. and M.S. tanks, chemical plant equipments and chemical machineries as well as pharmaceutical equipments and pharmaceutical plants, accessories and spares fertilizer etc. under the trademark and trade name SIEMENS. Extracts from the 'about us' page at www.siemensprojectindiapvtltd.com has been reproduced herein below:-
"The sphere of SIEMENS Project India Pvt. Ltd. activities encompasses VARIOUS Projects, Infrastructure, On-site fabrication of structures. Installation, Testing and Commissioning of Electrical and Mechanical Equipments, Piping etc. for large Industrial projects such as Power, Refineries, Steel, Cement, Fertilizer, Petrochemical and Desalination Projects. The Company enjoys pre-qualification credentials in Electrical Sub-station projects up to 400 KV in India. The Company also undertakes Overhauling and Maintenance of Operating Plants in varied Industries, both in India and Abroad. SIEMENS is also India's leading manufacturer of SIEMENS PSA Nitrogen Gas generators under technical collaboration with M/s. CHARLES GARPHS. We have in house facility and expertise for manufacturing of various Pressure Vessels, Reactors, Absorbers, Columns, Heat Exchangers, Tanks etc. At SIEMENS, we have a sound CS (OS) No.3785/2014 Page 9 of 14 quality assurance management system. Our mechanical fabrication facility consists of well equipped work shop for manufacturing of Pressure vessels, Reactors, Columns, Heat exchangers, Tank etc. So far we have executed a tonnage of 40,000 MT. Our products & services have found leading customers in India, Thailand, China, Bangladesh, Oman, Egypt, Iraq, Iran &Uzbekistan. At SIEMENS, we bring tried & tested engineering skills and experience to provide comprehensive engineering projects & services using most upto date &proven cutting technology".
22. It appears from the face of record that the defendant has deliberately used the valuable registered intellectual property rights of the plaintiffs Company intended to make the unsuspecting customers and advertisers to believe that the said website is owned by the plaintiff Company. This intention and/or intended act of the defendant are deliberate and malafide and for the sole purposes of encashing upon the reputation of the plaintiff.
23. The defendant's use of the domain name/website (www.siemensprojectindiapvtltd.com) is a calculated attempt to mislead, deceive, and confuse the relevant purchasing public and advertisers. The defendant's adoption of the domain names/website www.siemensprojectindiapvtltd.com creates an impression that the said website is owned by the plaintiffs or there is some kind of an association and/or nexus between the plaintiffs and defendant and thus trading upon the reputation and goodwill accruing to the plaintiff due to their websites www.siemens.com and www.siemens.co.in and trademark Siemens duly registered in India.
CS (OS) No.3785/2014 Page 10 of 1424. No doubt in view of the act of the defendant, the plaintiffs are aggrieved by the acts of commissions and omissions on the part of the defendant using in a deceptive and confusing manner, giving the general viewers of the impugned domain name/website and email ids, a categorical impression that the defendant is associated with the plaintiffs Company, which according to the plaintiffs constitutes a gross violation of the rights of the plaintiffs as registered proprietors of the domain name which is being used as business identifier. The domain names, therefore not only serves as an address for internet communication but also identifies it with the owner's products and information. It is clear that the defendant has adopted the trademark SIEMENS in relation to its goods/ services so as to trade upon the reputation and goodwill accruing to the plaintiff in their said trademark SIEMENS and further, to take advantage thereof the goodwill and earn undue profits.
The purchasing public and trade associate the trademark SIEMENS exclusively with the plaintiffs. The defendant's by use of the identical trademark SIEMENS will invariably deceive the trade and the public into a belief that the goods/ services of the defendant are those of the plaintiffs.
25. The defendant's use of the website www.siemensprojectindia.pvtltd.com dilutes the distinctive quality of the famous trademark Siemens of the plaintiffs whose goods are well known and the offending website www.siemensprojectindiapvtltd.com CS (OS) No.3785/2014 Page 11 of 14 and email ids of the defendant are severely detrimental to the distinctiveness and goodwill associated with the plaintiffs' trademark.
The plaintiffs Companies have overwhelming national and international reputation, with SIEMENS being registered as a trademark in several countries, including convention countries, to which this Court has international obligation and thus should be adjudged as a "well known trademark" against any acts of infringement from a deceptively or confusingly similar trademark and domain name.
26. The apprehension of the plaintiffs is that if the defendant's unauthorized use of the SIEMENS mark and deceptively similar domain names and email ids is allowed, it would cause and likely to cause confusion, mistake or deception to more people. The relevant unsuspecting public / customers and the people in the trade are likely to believe that defendant's websites originates or is associated with the plaintiffs, and the representations and misrepresentations made in the websites are authorized by the plaintiffs.
27. Therefore, the plaintiff is entitled to a decree for permanent injunction against the defendant restraining him, their servants, agents etc. from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in products or goods and offering services under the trademark SIEMENS or any other trademark deceptively and/or confusingly similar to the trademark SIEMENS of the plaintiffs, so as to infringe plaintiffs' registered trademark Siemens and trading name/corporate name SIEMENS or any other trademark CS (OS) No.3785/2014 Page 12 of 14 and trading name deceptively and/or confusingly similar to the trademark SIEMENS of the plaintiffs. They are also restrained from using website www.siemensprojectindiapvtltd.com and domain name www.siemensprojectindiapvtltd.com and/or any other website and domain name having name Siemens.
28. As far as the relief of damages of Rs.20,00,500/- on account of infringement by the use of the trademark are concerned, this Court has previously granted both exemplary and punitive damages against the defendants in ex-parte matters of similar nature. In Time Incorporated v. Lokesh Srivastava & Anr., 2005 (30) PTC 3 (Del.) while awarding punitive damages of Rs. 5 lakhs in addition to compensatory damages also of Rs. 5 lakhs, Justice R.C. Chopra observed that "time has come when the Courts dealing in actions for infringement of trademarks, copyrights, patents etc., should not only grant compensatory damages but also award punitive damages with a view to discourage and dishearten law breakers who indulge in violation with impunity out of lust for money, so that they realise that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay punitive damages also, which may spell financial disaster for them."
29. Further, this Court in Microsoft Corporation v. Rajendra Pawar & Anr., 2008 (36) PTC 697 (Del.) decided on 27th July, 2007 has held "Perhaps it has now become a trend of sorts, especially in matters pertaining to passing off, for the defending party to evade court proceedings in a systematic attempt to jettison the relief sought CS (OS) No.3785/2014 Page 13 of 14 by the plaintiff. Such flagrancy of the Defendant's conduct is strictly deprecatory, and those who recklessly indulge in such shenanigans must do so at their peril, for it is now an inherited wisdom that evasion of court proceedings does not de facto tantamount to escape from liability. Judicial process has its own way of bringing to tasks such erring parties whilst at the same time ensuring that the aggrieved party who has knocked the doors of the court in anticipation of justice is afforded with adequate relief, both in law and in equity. It is here that the concept of awarding punitive damages comes into perspective."
30. In view of the facts of the present case, this Court is of the opinion that in the present case Rs.3 lac as punitive damages be granted in favour of the plaintiffs and against the defendant in terms of prayer clause (d) of the plaint. Ordered accordingly.
31. The plaintiffs are also entitled to the costs. The relief clauses
(d) and (f) are accordingly disposed of. The relief clause (e) is not pressed by the plaintiffs.
32. Decree be drawn accordingly.
33. The suit and pending application also stand disposed of.
(MANMOHAN SINGH) JUDGE OCTOBER 9, 2015 CS (OS) No.3785/2014 Page 14 of 14