Delhi High Court - Orders
Kubota Corporation vs Kaira Agros & Ors on 3 April, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~38
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 273/2024
KUBOTA CORPORATION ..... Plaintiff
Through: Mr. J. Sai Deepak, Mr. Gaurav Gogia,
Mr. Deepak Shrivastava and Mr.
Rishabh Gupta, Advocates.
versus
KAIRA AGROS & ORS. ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 03.04.2024 I.A. 7420/2024 (seeking exemption from advance service on the Defendants)
1. The Plaintiff seeks urgent interim relief against counterfeit products and for this purpose, an ex-parte appointment of Local Commissioner is also sought. Therefore, in the peculiar facts and circumstances of this case, exemption from effecting advance service upon the Defendants is granted.
2. The application is allowed and disposed of.
I.A. 7416/2024 (seeking exemption from invoking pre-institution mediation under Section 12A of the Commercial Courts Act, 2015)
3. As the present suit contemplates urgent interim relief, in light of the CS(COMM) 273/2024 Page 1 of 16 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 26/04/2024 at 21:23:26 judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.
4. Disposed of.
I.A. 7417/2024 (seeking leave to file additional documents)
5. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
6. If Plaintiff wishes to file additional documents at a later stage, they shall do so strictly as per the provisions of the said Act.
7. Accordingly, the application stands disposed of.
I.A. 7418/2024 (seeking exemption from filing original, clear copies, prayer copies and documents with proper margins)
8. Exemption is granted, subject to all just exceptions.
9. The Plaintiff shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
10. Accordingly, the application stands disposed of.
CS(COMM) 273/2024
11. Let the plaint be registered as a suit.
12. Upon filing of process fee, issue summons to the Defendants by all permissible modes. Summons shall state that the written statement(s) shall be filed by the Defendants within 30 days from the date of receipt of summons. Along with the written statement(s), the Defendants shall also file 1 2023 SCC OnLine SC 1382.
CS(COMM) 273/2024 Page 2 of 16This 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 26/04/2024 at 21:23:26 affidavit(s) of admission/denial of the documents of the Plaintiff, without which the written statement(s) shall not be taken on record.
13. Liberty is given to the Plaintiff to file replication(s) within 15 days of the receipt of the written statement(s). Along with the replication(s), if any, filed by the Plaintiff, affidavit(s) of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication(s) 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.
14. List before the Joint Registrar for marking of exhibits on 3rd July, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
15. List before Court for framing of issues thereafter.
I.A. 7414/2024 (u/Order XXXIX Rule 1 & 2 r/w Section 151 of the Code of Civil Procedure, 1908)
16. Mr. J. Sai Deepak, counsel for the Plaintiff, has presented the following facts:
16.1. The Plaintiff, Kubota Corporation, is a company founded in the year 1890, and is now headquartered at 2-47, Shikitsuhigashi 1-chome, Naniwa-
ku, Osaka 556-8601, Japan. Plaintiff is engaged in the business of manufacture, distribution and sale of a large variety of goods, including, inter alia, agriculture goods - such as cultivator machine for rice cultivation
- and construction equipment - such as power shovel for construction purposes.
16.2. Plaintiff has been using several logos and trademarks for their products, the details whereof have been set out in Paragraph No. 6 of the CS(COMM) 273/2024 Page 3 of 16 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 26/04/2024 at 21:23:27 plaint. Over the years, the Plaintiff's products have gained enormous reputation and goodwill globally, and the Plaintiff has steadily expanded their global operations. In the year 2012, they established the "Kubota Identity", a global corporate principle, and adopted a new brand statement logo/ trademark ' '. Furthermore, Plaintiff has also secured several registrations in India under the Trade Marks Act, 1999 ["TM Act"], details whereof are as follows:
16.3. Besides the Plaintiff has also applied for design registrations under the Designs Registration Act, 2000 ["Designs Act"]. Details of Plaintiff's design applications are set out as follows:CS(COMM) 273/2024 Page 4 of 16
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 26/04/2024 at 21:23:27 16.4. The Plaintiff's Indian subsidiary was founded in the year 2008 as 'Kubota Agricultural Machinery India Pvt. Ltd.' (KAI), which has emerged as one of the major players in the Indian agricultural machinery industry.
KAI has launched several products such as tractors, rice transplanters, combine harvesters and power tillers, as well as implements and attachments. The details of such products, which have been made specifically for Indian markets and tailored to suit India's agriculture needs, have been delineated in Paragraph No. 16 of the plaint. The Plaintiff asserts that they have copyright in respect of the product catalogues, drawings and images of these products.
16.5. Kaira Agros (Defendant No. 1) through its proprietor - Mr. Rajagopal Vasantha (Defendant No. 2), is engaged in similar goods, business and services as that of the Plaintiff, i.e., manufacturing of farming and CS(COMM) 273/2024 Page 5 of 16 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 26/04/2024 at 21:23:28 agricultural equipment such as rice transplanters, harvesters, etc. Defendant No. 2, who is a former employee of the Plaintiff, is alleged to have dishonestly connived with Defendant No. 1 and misused the confidential information of the Plaintiff, including but not limited to the industrial drawings of the Plaintiff's agricultural equipment/ machinery, such as rice transplanters.
17. The suit, as framed, asserts several intellectual property rights. However, at this stage when the Court is considering the issue of grant of ex- parte ad-interim injunction, Mr. J. Sai Deepak has confined the reliefs sought and accordingly advanced the following contentions:
17.1. The Defendants' use of the trademark ' ', comprising of the tagline "For Nature, For Future" placed along with the Defendants' mark 'Kaira', is deceptively similar to the Plaintiff's trademark ' ' and is highly likely to create confusion, thus amounting to infringement. While Plaintiff has no objection to the Defendants' use of their trademark/ tradename 'Kaira', however, Plaintiff's grievance pertains to the tagline "For Nature, For Future', which is deceptively similar to the Plaintiff's tagline, "For Earth, For Life". Furthermore, the deceptive similarity between the two marks is accentuated by use of the similar tagline in conjunction with the Defendants' mark 'Kaira', which deploys a similar colour combination and placement of the elements. Such stark resemblances between the two marks risk causing confusion among consumers and within trade circles, potentially leading to erroneous beliefs of association with the Plaintiff's brand. This constitutes infringement of the Plaintiff's registered CS(COMM) 273/2024 Page 6 of 16 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 26/04/2024 at 21:23:28 mark. In order to demonstrate the deceptive and conceptual similarities between the two competing marks, reliance is placed on the following comparison chart:
17.2. The Defendants' device mark ' ', which is embossed on Defendant No. 1's combine harvester, is deceptively similar to the Plaintiff's trademark ' '. The Defendants' use of a similar colour scheme, as well as an overlapping 'tick' mark, clearly evidences dishonesty on the part of Defendant No. 1. Considering the fact that these marks are used in respect of an identical category of goods, such use amounts to an act of passing off. A side-by-side comparision of the marks is represented as follows:
17.3. Defendant No. 1's product catalogue accompanying their rice CS(COMM) 273/2024 Page 7 of 16 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 26/04/2024 at 21:23:29 transplanter, when compared to the Plaintff's, is a blatant imitation and an exact replica. In fact, even the catalogue numbers on the Plaintiff's catalogue are exactly matched to that of the Defendant No. 1. A representation of this slavish imitation, which amounts to passing off as well as copyright infringement, is demonstrated as follows:
17.4. Defendant No. 1's intent to pass off their products as that of the Plaintiff is also evident from the fact that Defendant No. 1 has represented images of the Plaintiff Company's Ride-On rice transplanter of the Plaintiff company on their Indiamart page as well as on their website, which also amounts to infringement of the Plaintiff's copyright in the image of their Ride-On rice transplanter. Moreover, the Defendant No. 1's website and Indiamart page also depict the Plaintiff's trademark/ trade name 'Kubota', which further corroborates the Plaintiff's claims of infringement and passing off. In support of the aforenoted submissions, reliance is placed on screenshots of the Defendant No. 1's website and Indiamart page, which are reproduced hereunder:CS(COMM) 273/2024 Page 8 of 16
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 26/04/2024 at 21:23:29 "Image of Plaintiff Company's Product Image of Defendant No. l's Impugned Product "CS(COMM) 273/2024 Page 9 of 16
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 26/04/2024 at 21:23:30
18. On the basis of the various aforenoted acts of infringement and passing off, Mr. J. Sai Deepak asserts that the Defendants have clearly attempted to ride upon the Plaintiff's well-established goodwill and reputation. He argues that the manner of infringement and passing off, as elaborated above, is clearly indicative of the fact that the Defendant No. 2, who is a former employee of the Plaintiff, had access to the confidential information of the Plaintiff which they have now utilized for the manufacture of lookalike products. Such duplication could not have been CS(COMM) 273/2024 Page 10 of 16 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 26/04/2024 at 21:23:31 possible without access to the confidential information comprising of the Plaintiff's drawings of the products in question. Defendants are thus guilty of infringement under Sections 29(4) and 29(2)(c) of the TM Act, infringement under Section 55 of the Copyright Act, 1957, as well as passing off.
19. The Court has considered the foregoing contentions. The marks compared in Paragraph No. 17.1 above are prima facie deceptively similar. The phrases "For Earth, For Life" and "For Nature, For Future" are conceptually similar, emphasizing ecological responsibility and conveying a commitment to a better future. Both marks also use a parallel structure, employing with the word "For" followed by a natural element ("Earth"/ "Nature") and an aspirational term ("Life"/ "Future"). The words "For" and "For" in both marks are not only identical but also placed at the beginning of each phrase, giving them prominence. "Earth" and "Nature" are often used interchangeably in colloquial usage of the English language, as are "Life" and "Future" when referring to sustainability and environmental issues. This parallelism could cause consumers, who do not always have perfect recall, to confuse one mark with the other due to the similarity in construction, structure and message, especially if encountered shortly after one another. Since both companies operate in the same industries, the conceptual overlap in brand messaging could lead to confusion as to whether the services or products originate from a single source or affiliated sources. Accordingly, since Plaintiff's mark, as mentioned above, is registered, the Defendants' use of the impugned mark ' ' amounts to CS(COMM) 273/2024 Page 11 of 16 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 26/04/2024 at 21:23:32 infringement.
20. Likewise, the marks compared in Paragraph No. 17.2 employ a similar stylized font with a sweeping underline that could suggest motion or excellence. The colour red is a dominant feature in both marks, which may lead consumers to associate the marks with one another. The suffix "KING" in both marks is prominent and could lead consumers to believe that one brand is a sub-brand or a related service of the other. The likelihood of confusion is therefore substantially increased, since consumers could reasonably assume a common source or a partnership between the two brands, as both entities provide goods and services in related commercial fields or industries. Considering the fact that the Plaintiff has demonstrated prior use of their mark as well as goodwill in the same, the Defendants' adoption amounts to misrepresentation that is likely to cause harm to the Plaintiff. Therefore, the Defendants' use of the impugned mark ' ', prima facie amounts to passing off. Furthermore, the Plaintiff has also convincingly demonstrated copyright breach in their photographs and catalogues.
21. The Court is thus satisfied that the Plaintiff has made out a prima facie case in their favour, and in case no ex-parte ad-interim injunction is granted, Plaintiff will suffer an irreparable loss; balance of convenience also lies in favour of the Plaintiff and against the Defendants.
22. Accordingly, till the next date of hearing, an ex-parte ad-interim injunction is granted in favour of the Plaintiff in the following terms:
22.1. Defendants, and/or anybody acting on their behalf, are restrained from CS(COMM) 273/2024 Page 12 of 16 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 26/04/2024 at 21:23:32 using the tagline 'For Nature, For Future' as well as the impugned device mark ' '. It is, however, clarified that the Defendants would be permited to use the mark 'Kiara' on standalone basis but not along with the aforenoted tagline.
22.2. Defendants, and/or anybody acting on their behalf, are restrained from using ' ' or any other word mark/ trademark/ label which is identical or deceptively similar to the Plaintiff's trademark ' ' in relation to the impugned products, i.e., combine harvesters.
22.3. Defendants shall immediately remove any reference to the Plaintff's trademark 'Kubota' from their website and their Indiamart page, as well as from any other advertisement or promotional material. 22.4. Defendants, and/or anybody acting on their behalf, are restrained from using images of the Plaintiff's products as well as the catalogue Nos. PG101-029-10 and PG101-030-10 in relation to their impugned goods, including but not limited to Walk-behind rice transplanters, Ride-on rice transplanters and Combine harvesters.
23. Issue notice to the Defendants, by all permisible modes, upon filing of process fee, returnable on 4th September, 2024.
24. Reply, if any, be filed before the next date of hearing. Rejoinder thereto, if any, be filed before the next date of hearing.
25. Compliance of Order XXXIX Rule 3 of Code of Civil Procedure, CS(COMM) 273/2024 Page 13 of 16 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 26/04/2024 at 21:23:33 1908 be done within two weeks from today.
26. Re-notify on 4th September, 2024 I.A. 7415/2024 (for appointment of Local Commissioner) and I.A. 7419/2024 (for not uploading the order on the court website)
27. Mr. J. Sai Deepak, counsel for Plaintiff, submits that the Defendants are aware of the Plaintiff and their products, and are engaging in infringement and passing off in order to ride upon the goodwill and reputation of the Plaintiff. Accordingly, he asserts that upon service, the Plaintiff apprehends that the Defendants are likely to deny their involvement in the infringing activities. Thus, in order to preserve evidence of infringement, he presses for the appointment of a Local Commissioner to visit the premises of the Defendants located at No. 137, New Talk Office, Opp. NH-45, Indra Nagar, Madurathagam - 603306.
28. The Court has considered the above, and finds it appropriate to appoint a Local Commissioner to execute a commission at the aforenoted premises. Accordingly, the following directions are issued:
28.1. Ms. Surbhi Mehta, Advocate [Contact No. +91 9023623691] is appointed as the Local Commissioner to visit the aforenoted premises of the Defendants.
28.2. The Local Commissioner, along with a representative of the Plaintiff and its counsel, shall be permitted to enter upon the premises of the Defendants mentioned above and/or any other location/ premises that may be identified during the course of commission, in order to conduct the search, seizure and inventory.CS(COMM) 273/2024 Page 14 of 16
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 26/04/2024 at 21:23:34 28.3. The Local Commissioner shall conduct a search at the said premises and seize only the packaging, boxes, stickers, cut-outs, and promotional material bearing the Plaintiff's mark 'KUBOTA', and/or the impugned marks ' ' and/or ' ', and/or any other document infringing upon the Plaintiff's copyright in their catalogues No. PG101-029-10 and PG101-030-10 in relation to their impugned goods, including but not limited to Walk-behind rice transplanters, Ride-on rice transplanters and Combine harvesters. 28.4. After seizing the infringing material in terms of the above directions, the same shall be inventoried, sealed and signed by the Local Commissioner in the presence of the parties, and released on superdari to the Defendants on their undertaking to produce the same as and when further directions are issued in this regard.
28.5. Furthermore, the Local Commissioner shall also inventorise, but not seize or seal, any machines bearing the impugned marks/ labels. 28.6. Further, the Local Commissioner shall be permitted to undertake/arrange for photography/ videography of the execution of the commission. Both the parties shall render full assistance to the Local Commissioners for carrying out the aforenoted directions. 28.7. In case any of the premises are found locked, the Local Commissioners shall be permitted to break open the lock(s). To ensure an unhindered and effective execution of this Order, the Station House Officer (SHO) of the local police station is directed to render all assistance and protection to the Local Commissioner, if and when sought.
CS(COMM) 273/2024 Page 15 of 16This 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 26/04/2024 at 21:23:34 28.8. The fee of the Local Commissioner, to be borne by the Plaintiffs, is fixed at INR 1,50,000/-. The Plaintiff shall also bear expenses for travel and lodging of the Local Commissioner and other miscellaneous out-of-pocket expenses for the execution of the commission. Fee of the Local Commissioner shall be paid in advance by the Plaintiffs. 28.9. The Local Commissioner shall file their report within a period of four weeks from the date on which the commission is executed.
29. The Order passed today shall not be uploaded for a period of two weeks from today.
30. With the above directions, the above-captioned applications stand disposed of.
31. Dasti under the signatures of Court Master.
SANJEEV NARULA, J APRIL 3, 2024 as CS(COMM) 273/2024 Page 16 of 16 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 26/04/2024 at 21:23:35