Delhi District Court
The vs Mitushi Enterprises Filed A Suit ... on 6 April, 2017
IN THE COURT OF SH. SANJAY KUMAR, ADDITIONAL
DISTRICT JUDGE-02, WEST, DELHI.
CS No. 77/2015
New No. 12174/16
Mukesh Trehan
vs.
RSR Retail Pvt. Ltd. & Anr.
ORDER
06.04.2017
1. The plaintiff Ms. Mukesh Trehan, proprietor of Mitushi Enterprises filed a suit through her husband/attorney Sh. Naresh Trehan against RSR Retail Pvt. Ltd., defendant no.1 and Sh. Rajesh Trehan, its Managing Director/defendant no.2 for infringement, passing off and damages under the Trade Mark Act.
2. In brief the facts are that the plaintiff's proprietorship concern is a leading manufacturer of agricultural and horticulture tools particularly sprayers and promoted by Sh. Naresh Trehan, who was originally promoter of HYMATIC AGRO and now manages day to day management and affairs of plaintiff's firm Mitushi Enterprises. It is stated that plaintiff's firm is leading manufacturer of all types of HYMAX brand agricultural sprayers, dusters, garden and horticulture tools, lawn mowers, sprinklers and other agricultural equipments. These are also certified by ISI and BIS marks. The plaintiff's firm has been manufacturing these agricultural and horticulture equipments and sprays since CS No. 77/2015 ( New No. 12174/16) Page No. 1/8 1995 and supplies almost in all places in India. The registered trademark HYMAX for the last many years has become well known to general public and through extensive, uninterrupted and continuous use, advertisements and excellent quality of the goods, the trademark HYMAX has become popular and identified with the goods of plaintiff alone.
3. It is stated that in 1974, a firm under the name of Hymatic Industries was started by Sh. Naresh Trehan as a sole proprietorship concern. In 1979, Sh. Naresh Trehan's father Sh. S. P. Trehan and younger brother Sh. Rajesh Trehan joined as partners. In December 1985, Hymatic Industries was incorporated into a private limited company. In 1992, Sh. S.P.Trehan, the father of Sh. Naresh Trehan passed away and in 1998, Sh. Naresh Trehan was illegally removed from the company. However, the dispute was amicably settled through mediation and Sh. Naresh Trehan established his own independent firm and the plaintiff is the sole proprietor of the said firm.
4. It is stated that the trademark HYMAX has been used by plaintiff exclusively, extensively and uninterruptedly and same has been recognized and associated with the plaintiff alone. The trademark HYMAX has been registered in the name of plaintiff under class 7 under registration No. 845438 for agricultural equipments, spraying machines, drip irrigation system. The plaintiff's firm has gross turn over since 2010 to 2015 in Crores. The turn over in the year 2015 is Rs. 5,14,23,569.75. The plaintiff's firm is also registered with the central sales tax authorities under the Central Sales Tax (Registration & Turnover) Rules.
CS No. 77/2015 ( New No. 12174/16) Page No. 2/85. It is stated that plaintiff came to know about the use of trademark HYNEXT by the defendant in August 2015 when Sh. Naresh Trehan, attorney of plaintiff was on a visit to Bhubaneswar on 21.08.2015 for participating in a tender notified by the Orrisa Agro Industry Corporation Ltd., Bhubaneswar, Orissa. The trade name HYNEXT is phonetically, visually and deceptively similar to the trademark of plaintiff. It is further found out by Sh. Naresh Trehan that defendant company also applied for registration of trademark HYNEXT under the application No. 2980327 dated 30.05.2015 in class 7 claiming user since 02.12.2014 in the same categories of goods as that of the plaintiff. The plaintiff immediately served a legal notice dated 03.09.2015 and 01.10.2015 upon the defendant company whereby called upon to immediately restrain, desist and all together avoid the use of trademark HYNEXT or any other deceptively similar trademark but defendant failed to reply till date. The defendant had adopted identical and deceptively similar trademark which phonetically, visually and is almost otherwise like the trademark of the plaintiff in order to intentionally misled the prospective consumer and purchasing public and creating confusion in the market since category of buyers are mostly illiterate and farmers who might be misled into believing the defendant's goods to be belong to the plaintiff. It is stated that to a man of average intelligence the phonetic similarity and affinity of sounds of the two trademarks HYMAX and HYNEXT will in all likelihood deceive and cause confusion. The defendant is attempting to illegally exploit the commercial goodwill acquired by the plaintiff in respect of trademark HYMAX by using alleged HYNEXT trademark.
CS No. 77/2015 ( New No. 12174/16) Page No. 3/86. It is stated that all the products marketed and manufactured by the plaintiff firm are of national and international specifications and in the present case, two trademarks are phonetically extremely similar and consumer may not verify minutely the literary contents of a product and will buy it thinking that the same belong to the manufacturing house of the plaintiff and the net effect is that the goods of the defendants are passed off as that of the plaintiff.
7. Plaintiff in the present application seeks that during the pendency of the present suit the defendants, their servants, agents, representatives, dealers and other persons on their behalf may kindly be restrained from infringing the registered trademark of the plaintiff by marketing and selling agricultural and horticulture tools and sprayers under the trademark HYNEXT, which is visually and phonetically similar to the trademark of HYMAX.
8. Defendants filed written statement. In the written statement, defendants stated that plaintiff/attorney Sh. Naresh Trehan is elder brother of defendant No.2 and both brothers with the help of their father Late Sh. S. P. Trehan, who was Patriarch of the family established HYMATIC trade name for their agricultural equipment manufactured and marketed by Hymatic Agro Equipment Pvt. Ltd. It is stated that plaintiff with oblique motive had made his wife to establish Mitushi Enterprises, a sole proprietorship concern and started manufacturing the same products as manufactured by Hymatic Agro Equipment Pvt. Ltd. by changing the prefix i.e. HYMAX. The plaintiff admitted that CS No. 77/2015 ( New No. 12174/16) Page No. 4/8 the attorney of plaintiff had used the trademark and goodwill of HYMATIC for his products named HYMAX thereby causing the infringement of the trademark. It is further stated that the intention of plaintiff from the beginning was to cheat Hymatic Agro Equipment Pvt. Ltd. where attorney of plaintiff firm Sh. Naresh Trehan was working as a Director till 1999.
9. It is stated that after the death of Late Sh. S. P. Trehan in the year 1992, there was disruption in the family and settlement was reached in the year 2005 on the intervention of Hon'ble High Court of Delhi. As per order of Hon'ble High Court of Delhi, defendant No.2 and his younger brother Sh. Rajan Trehan got control of Hymatic Agro Equipment Pvt. Ltd. and plaintiff's attorney Sh.Naresh Trehan was asked to sell share of his company to his two brother. It is stated that the right to transact the business by using family joint business concern 'HY' a prefix to the trade name HYMATIC. The plaintiff could not lay exclusive use of the word 'HY' of HYMATIC since it is a family business in the name of HYMATIC since 1985. It is stated that plaintiff secretly started using the name HYMAX which was deceptively similar to HYMATIC causing infringement to trade name of HYMATIC which is exactly similar.
10. It is stated that defendant No.1, the company manufactures hand operated agricultural implements, hand operated atomizers, augers, axes, diggers, ditchers, forks, fruit pickers, hand pumps, hand tolls, hoes, insecticides atomizers, insecticides sprayers, scraping knife, lawn clippers, machetes, pruning scissors, pruning shears, rakes, saws, scissors, scythe rings, scythe stones, scythes, secateurs, CS No. 77/2015 ( New No. 12174/16) Page No. 5/8 shear blades, shearers, shears, shovels, sickles, horticulture tools, tree pruners, trowels for gardening, garden tool set, gardener kit, choppers, knives, shredders, slicers which are class 8 instruments and also deals in class 7 equipments those are agricultural spraying machines, pesticides and fumigation and their spares and parts, machine, tools, motors and engines, machine coupling and transmission components, atomisers, blowing machines, water pumps, chaff cutters, chain machine for cleaning, compressed air pumps compressors, grain husking, grain separators, harrows harvesting, machine high pressure washers and reaping machines, diggers plough, pumps reapers, binders threshers, saw blades, cotton picker, straw cutter, fertilizer broadcaster, solar products, winnowers, tiller, fogger sorting and grading machine under the trade name HYNEXT owned by defendant No.1 company.
11. It is stated that defendant No.1 company had also got the BIS certification for these equipments under the trade name HYNEXT and maintains a website being www.hynext.in. It is further stated that neither there is any similarity in the trade names nor any confusion likely to arise in the said names. Trade origin and propounder of the mark 'HY' is HYMATIC and same has already been registered in the name of Hymatic Agro Equipment Pvt. Ltd. It is further stated that Section 35 of the Trade Mark Act gives statutory protection against interference by a proprietor or a registered user of the trademark to a person who makes bonafide use of registered trademark as its own wherein his predecessors in business.
CS No. 77/2015 ( New No. 12174/16) Page No. 6/812. It is stated that defendants have not caused any deception or passing of more so it is the plaintiff who had indulged in stealing, infringement and passing o the trade name HYMATIC and thus caused wrongful gains for himself and resultantly wrongful losses to the Hymatic Agro Equipment Pvt. Ltd. The plaintiff prima facie is not entitled to use exclusively trademark 'HY' of HYMATIC.
13. It is stated that HYMATIC trade name exists prior to trademark HYMAX and being prior in adoption, therefore there is no question of protection to the trademark HYMAX and it is well settled that prior use of trademark has rights even over later registered users. It is stated that suit is liable to be dismissed.
14. Vide order dated 08.09.2016 application under Order 39 Rule 1 & 2 CPC of the plaintiff was allowed and defendants were restrained from selling and marketing agriculture and horticulture products under the mark HYNEXT which is visually and phonetically similar to the trademark of the plaintiff HYMAX, till the final disposal of the main suit.
15. During the course of trial the matter has been settled between the parties before the Delhi High Court Mediation and Conciliation Centre vide settlement agreement dated 09.03.2017.
16. Accordingly, statements of Sh. Naresh Trehan - Attorney of plaintiff and Sh. Siddharth Trehan - AR of the defendant recorded.
CS No. 77/2015 ( New No. 12174/16) Page No. 7/817. In view of the statements of the parties and mediation agreement Ex. C-1, the suit of the plaintiff is disposed of as settled/compromised. Decree sheet be prepared in terms of Ex. C-1. As requested, court fee be refunded to the plaintiff as per Rules.
18. File be consigned to Record Room.
Announced in the open court today the 6th April, 2017.
(Sanjay Kumar) ADJ-02,West/Delhi 06.04.2017 CS No. 77/2015 ( New No. 12174/16) Page No. 8/8