Rockwool International A/S And 2 Ors vs Sana Traders And Anr on 11 January, 2021

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Bombay High Court

Rockwool International A/S And 2 Ors vs Sana Traders And Anr on 11 January, 2021

2. Plaintiff No. 1 is a company incorporated in Denmark. The 2nd Plaintiff is a sister concern of the 1st Plaintiff. It is incorporated in the Shephali Mormare Netherlands. The 3rd Plaintiff is an Indian subsidiary of the 2nd Digitally signed by Shephali Mormare Plaintiff.

Date: 2021.01.12 10:42:06 +0530

3. The Suit is an action in trade mark infringement combined with a cause of action in passing off.

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4. The Plaintiffs are claimed to be the world's largest producers of stone wool fibre products. These are insulating materials for temperature control and have various applications.

5. Defendant No. 2 is a manufacturer of products of which the 1st Defendant is the distributor. The 1st Defendant is based in Mumbai.

6. As to the question of jurisdiction for the cause of action in passing off, Mr Kamod submits that there is material to indicate that the rival products under the infringing mark are sold and available in Mumbai and, therefore, the cause of action has arisen in Mumbai. Consequently, this Court has jurisdiction.

7. The dispute is about the Plaintiffs registered and well-known trade mark or trade name 'ROCKWOOL'. This is a formative mark used in relation to thermal insulation products. The plaint says that the Defendants have adopted an identical mark for products in the same field, i.e. for thermal insulation.

8. The facts, briefly. Between them, the three Plaintiffs employ nearly 12,000 persons in different countries. They have a physical presence in 34 countries and they operate 45 manufacturing facilities. The 1st Plaintiff was founded in 1936. The Plaintiffs are global leaders in the insulation industry. They have extensive research and development capabilities. In India, the Plaintiffs have had a presence since 1980s and have expanded their operations country-wide. They have incorporated wholly owned subsidiaries or affiliates named Page 2 of 9 11th January 2021 17-IAL9995-2020 IN COMIPL9994-2020.DOCX Roxul Rockwool Insulation India Pvt Ltd incorporated in 2008 and, later, in 2010, Roxul Rockwool Technical Insulation India Pvt Ltd.

9. In 2011, the Plaintiffs' Indian subsidiary opened a greenfield factory in Gujarat for the manufacture and production of stone wool insulation products for industrial purposes. The total investment was said to be about Rs. 144 crores. The unit produces 30,000 tonnes per annum and employs 240 persons.

10. The Plaintiffs use the trade mark ROCKWOOL worldwide in relation to these insulation products. This is being used since mid- 1930s in Denmark and later internationally. There are also registrations in various jurisdictions around the world. These are in as many as 60 countries. The first registration was of 4th March 1937 in Denmark in Classes 17 and 19. Some instances of international registrations are provided in the plaint itself.

11. In India, the Plaintiffs' earliest registration of the trade mark ROCKWOOL is of the year 1989 in Classes 17 and 19. The principle formative mark ROCKWOOL was registered on 22nd February 1989 under registration No. 505844. This was in Class 19. There are derivative marks in classes 6, 17 and 19 that are pending registration from various dates. The proprietor of the registered mark is in the trade marks registry is ROCKWOOL Lapinus BV. On 27th March 2014 this name was changed. It was changed yet again to the name of the 2nd Plaintiff. There is no change in the actual proprietorship of the mark but merely a change in the name of the holding entity.

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12. All international registrations have been obtained in the name of the 1st Plaintiff. On 21st September 2020 the 1st and 2nd Plaintiff executed a Deed of Assignment to show the 1st Plaintiff as the registered proprietor.

13. ROCKWOOL is not just a registered mark. It is part of the Plaintiffs' trade and corporate name. It is a house mark and is an integral part of the Plaintiffs' corporate identities. It is reflected on the online websites such as rockwool.com, rockwool.co.in etc.

14. The Plaintiffs have expended a considerable amount in promoting their products under the ROCKWOOL mark. They have thus acquired considerable goodwill and reputation. They say this is established inter alia from their revenue, sales and expenditure figures, some of which are tabulated in summary form in paragraph 21 of the Interim Application. These figures are expressed in foreign currency (Danish Kroner). For the year 2019, the net sales were 20,705 million DKK and the expenses were 329.86 million DKK.

15. There is additionally information available for sales in India from the years 2000 up to 2017. In the last year 2016-2017 that is shown, the net revenue sales figures are over Rs. 88 crores. The external sales figures for the same period are nearly Rs. 25 crores.

16. The Plaintiffs have thus acquired valuable statutory and common law rights in the mark.

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17. Then there are appended to the plaint details of honours and awards that the Plaintiffs have received over a period of time. It is not necessary to detail these at this ad-interim stage. All these factors, taken together, do establish a prima facie case that the Plaintiffs have indeed acquired a valuable reputation and much goodwill, both entitled to protection in law.

18. In or about August 2020, that is to say very recently, the Plaintiffs learnt of the 1st Defendant's distribution and sale of thermal insulation products under an identical rival mark "ROCKWOOL". The Plaintiffs found that the 1st Defendant is an exclusive distributor for the 2nd Defendant.

19. Prima facie, there is a strong case made out. The word ROCKWOOL itself is clearly an adopted and invented word. On its own it means nothing. There is in addition the incontrovertible question of prior use both internationally and in India. There is no conceivable reason why the Defendants should have adopted an identical mark for products in the same segment. Prima facie, the Defendants' adoption of the mark is mala fide and without justifiable cause.

20. This is not a case of deceptive or confusing similarity. On the contrary, this is a case where the Defendants' rival mark is identical to that of the Plaintiffs for the same range of goods or goods and products in the same segment. The questions of similarity, confusion, deception and, therefore, infringement and passing off prima facie answer themselves. There is no manner of doubt in my mind that the Page 5 of 9 11th January 2021 17-IAL9995-2020 IN COMIPL9994-2020.DOCX balance of convenience is also with the Plaintiffs and that irretrievable injury will be caused to them unless the ad-interim reliefs as sought in the Interim Application are granted.

21. Permitting the Defendants to continue unhindered will cause significant damage and loss to the Plaintiffs including to the brand value embodied in the mark. The Plaintiffs are obviously a prior user of the mark in question.

22. The Plaintiff had earlier brought Commercial IP Suit (L) No. 2718 of 2020. This Suit and its accompanying Interim Application (L) No. 2719 of 2020 were permitted to be withdrawn on 4th September 2020 in view of certain errors in the plaint with liberty to file a suit afresh. The Plaintiffs then filed this suit and IA. They sought ad-interim reliefs without notice on 28th December 2020. However, the matter could not be taken up on that date and was adjourned to today. The Plaintiffs have in the meantime given notice and an Affidavit of Service will be filed, if not already done by 15th January 2021. This is noted for completeness.

23. In this view of the matter, there will be an ad-interim order in terms of prayer clauses (a), (b), (c) and (d), which read thus:

"a) That pending the hearing and final disposal of the suit, the Defendants by themselves, their agents and servants, be restrained by an order and injunction of this Hon'ble Court from in any manner manufacturing, packing or marketing or using in any manner in relation to 'Inorganic Mining Products and Insulating Material in the shape of Loose Fibers, Bats, Mats or Tubes used in Buildings, Page 6 of 9 11th January 2021 17-IAL9995-2020 IN COMIPL9994-2020.DOCX Portable Buildings, Stone Monuments and Chimney Pots or any other goods contained in Class 19' of the Fourth Schedule of the Trade Marks Act, 1999 and Rules framed thereunder, any mark identical with or deceptively similar to the Plaintiff No.1's trade mark ROCKWOOL registered under No. 505844 in Class 19 described in Exhibited-E to the Plaint so as to infringe the same;

(b) That pending the hearing and final disposal of the suit, the Defendants by themselves, their servants and agents be restrained by an order and injunction of this Hon'ble Court from in any manner using the mark ROCKWOOL and/or any mark identical with or deceptively similar to the Plaintiffs' trade mark ROCKWOOL in any manner whatsoever so as to pass off or enable others to pass off its business and/or goods as that of the Plaintiffs;

(c) That pending the hearing and final disposal of the suit, the Defendants by themselves, their servants and agents be ordered and directed by this Hon'ble Court to remove/take down/delete all references to the Plaintiffs' trade mark/delete all references to the Plaintiffs' trade mark/name ROCKWOOL/ROCKWOOL formative marks and/or any deceptive variation/s thereof as may be appearing on the internet/third party websites/e-commerce websites/social networking sites etc.;

(d) That pending the hearing and final disposal of the suit, this Hon'ble Court be pleased to appoint the Court Receiver, High Court, Bombay or such other fit and proper person as this Hon'ble Court thinks fit as Court Commissioner and representative of the Court Receiver, with all powers under O.XL Rule 1 of the C.P.C., 1908 in order to attend at and/or enter, any of the Defendants' premises including office, or other premises of the Defendants at any time, day or night, on any day, including Page 7 of 9 11th January 2021 17-IAL9995-2020 IN COMIPL9994-2020.DOCX holidays and Sundays, without notice to the Defendants, along with the Plaintiffs' representatives and experts, and if required, to use such force, break open any lock or remove any obstruction or barrier or otherwise, and to search, seize, destroy, erase, make inventory, take possession, custody and control of the impugned products/goods bearing the impugned trade mark and deceptive variants thereof of Plaintiff No.1's trade mark Registration No. 505844 and for that purpose the police are hereby directed to immediately provide all assistance to him."

24. The Court Receiver will not insist on hard-copy correspondence but will act on production by email of a digitally signed copy of this order.

25. The Court Receiver must immediately seize and seal all offending products found in the premises of the Defendant. The Court Receiver is empowered to break open, if necessary with police assistance, the locks and doors of all such premises belonging to the Defendant. The police authorities to act forthwith on production of a digitally signed copy of this order.

26. The Court Receiver to submit report to this Court by 9th February 2021.

27. Affidavit in Reply is to be filed and served on or before 29th January 2021. Affidavit in Rejoinder is permitted to be filed and served on or before 5th February 2021.

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28. List the Interim Application for hearing and final disposal on 9th February 2021.

29. Liberty to the Defendant/s to apply for a variation, modification or recall of this order after one weeks' written prior notice to the Advocates for the Plaintiff.

30. This order will be digitally signed by the Private Secretary of this Court. All concerned will act on production of a digitally signed copy of this order.

(G. S. PATEL, J) Page 9 of 9 11th January 2021

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