Document Fragment View

Matching Fragments

4. Plaintiff No. 1 are a company incorporated under the Indian Companies Act with their registered office at SPA-65A, Bhiwadi Industrial Area, Bhiwadi, District Alwar (Rajasthan). They are the sole distributor appointed by plaintiff No. 2 for distribution of batteries vide agreement for distribution of goods dated March 19, 1997. Pursuant to the said agreement they are marketing the products manufactured by plaintiff No. 2.

5. Plaintiff No. 2 are also a company incorporated under the Companies Act with their Registered Office at 34, Okhla Industrial Estate, New Delhi. A licence has been issued to Plaintiff No. 2 in respect of the trade mark Duracell granted to them by NV Duracell Batteries SA, a corporation organized under the Laws of Belgium with their principal office at Nijverheidslaan 7, B-3220, Aarschot, Belgium. Plaintiff No. 2 have been incorporated, inter alia, to design, develop, manufacture, produce, buy, sell, distribute, import, export, assemble, market and otherwise deal in all types of cells and batteries including alkaline batteries. Plaintiff No. 2 were incorporated on April 6, 1994. They commenced their business in the last quarter of 1994. Plaintiff No. 2 are a part of Duracell Inc., USA which are the leading Manufacturers and marketers of high performance alkaline batteries. Duracell batteries are sold all over the word under the trade mark Duracell. The Duracell range of batteries cover 90% of the total world's battery usage. Duracell Inc. currently manufactures more than 30 types of batteries including 13 types of alkaline batteries. Duracell batteries are the world leaders in the field. Plaintiff No. 2 have been importing all 13 varieties of alkaline batteries into India and have been selling them since August 1994.

6. Plaintiff No. 2 have also commenced manufacture of 'AA' pencil/pen like cells from December 1997 for the domestics as well as export market. Plaintiff No. 2 are leaders in the battery segment in India and hold the market share of approximately 48%. Duracell batteries have over a time built a strong brand equity, goodwill and reputation world-wide as well as in India for their products and have millions of satisfied consumers.

7. Defendant No. 1 on the other hand, are a conce inter alia, dealing in the products of defendant No. 2 i.e. BPL Ultra zinc chloride batteries. Defendant No. 2 are engaged, inter alia, in commercial manufacture marketing and selling of Excel range of alkaline batteries in India since August 1997 and have recently commence manufacturing zinc chloride batteries. The parent company of the plaintiff No. 2 is also using the trade mark Duracell batteries along with another trade mark Ultra in many countries all over the world. The trade marks Duracell as well as Ultra have acquired a reputation and goodwill throughout the world. The trade mark Ultra is being used by the parent company of plaintiff No. 2, Duracell Inc. USA. They have been using the same since February, 1998. Thus the trade mark Duracell and the mark Ultra have been exclusively associated with the goods of plaintiff No. 2 and none else. Plaintiff No. 2 have made huge sales of their batteries under the trade mark Duracell and Ultra hroughout the world. Plaintiff No. 2 however, have started using for the first time trade mark Duracell along with mark Ultra in respect of batteries of superior quality i.e. alkaline batteries from the second week of June, 1998 onwards. The application moved by the plaintiff for the registration of the said trade mark Ultra is pending. Plaintiff No. 2 have acquired world-wide reputation in respect of their trade mark Duracell along with mark Ultra. The consumer all over the world as such recognise the aforementioned trade mark Duracell as well as Ultra as that of plaintiff No. 2. Plaintiff No. 2 much prior to the launching of their products under the trade mark Duracell Ultra and initiated various actions to familiarise the customers and the market with regard to the intended launch of Duracell Ultra. These actions included publication of articles in different Journals and Newspapers. The purchasers in India have also got the knowledge with regard to the trans border reputatio of the said trade mark with the products manufactured and sold by plaintiff No. 2. Plaintiff No. 2 have also floated information with regard to Duracell on a website on internet wherein description and quality of Duracell Ultra batteries is available for general public. The above said trade mark in respect of the batteries denotes and connotes the goods manufactured by plaintiff No. 2. The Duracell Ultra batteries manufactured and sold by plaintiff No. 2 are alkaline batteries which are qualitatively superior to currently available alkaline batteries on the world market.

8. Defendant No. 2 introduced the batteries/pencil cell under the trade mark Ultra into market on June 24, 1998. The said batteries are zinc chlo-ride batteries which are much inferior to the batteries being sold by plaintiff No. 2 under the trade mark Duracell. The trade mark Ultra has been shown prominently on the said products. The words "BPL" have been mentioned on the products as their house mark but Ultra as their trade mark is shown on the said batteries. Defendant No. 2 by the use of the said trade mark Ultra are misleading the consumers to project as if their products are a substitute for the products of plaintiff No. 2 known as Duracell Ultra. This action of defendant No. 2 has caused irreparable loss and injury to the plaintiffs inasmuch as the goodwill of the plaintiff would be prejudicially affected and the right of the plaintiffs on carry to their business will be severely jeopardised. The practice of misrepresentation on the part of defendant No. 2 is culated to injure the interest of plaintiff No. 2 in trade and business. The use of the trade mark Ultra by the defendants amounts to infringement of the trade mark of plaintiff No. 2. Defendant No. 2 have thus intentionally and deliberately adopted the above said trade mark in order to take advantage of the goodwill and reputation of the trade mark of the plaintiff i.e. Ultra. The use of the trade mark Ultra by the defendant is identical/deceptively similar with the trade mark of plaintiff No. 2 i.e. Duracell Ultra. Defendant No. 2 have been using the said trade mark Ultra without any permission, license or consent of plaintiff No. 2 whatsoever Defendant No. 2 have dishonestly used the said trade mark Ultra with the full knowledge of the goodwill and reputation of the said trade mark Ultra all over the world. Plaintiff No. 2 are the prior user and adopter of the trade mark Ultra along with Duracell in India than the defendant. Defendant No. 2 have no justification whatsoever to use and adopt the trade mark Ultra in respect of identical goods.

10. Defendant No. 2 have got the legal and vested right to use the word 'Ultra' which is a brand descriptor. The said word is used by defendant No. 2 also with their trade mark BPL which is registered under trade mark registration No. 429393 dated November 7, 1984 in Class 9. The said registration is valid, subsisting and not an issue in the present proceedings. The idea of using the word 'Ultra' in relation to dry cell batteries was conceived wayback in September, 1997. A decision was taken to brand descriptor Ultra Power in December 1997. Defendant No. 2 launched BPL Ultra cell batteries in the open market in the second week of June 1998 i.e., on June 15, 1998. BPL Ultra cell batteries became extremely popular on account of their excellent quality and reasonable pricing and were quickly picked up by the consumers. The sale of batteries of the defendant was so rapid that it touched a figure of Rs. 30 lacs within a short span of two weeks which was matter of concern to the plainiffs. Hence they filed the present suit with ulterior motives. As for as Duracell, USA is concerned there is no commercial, bona fide and substantial sale made by them to plaintiff No. 2 admittedly prior to 4th week of June, 1998. Neither there is any prima facie case in favour of the plaintiffs nor does the balance of convenience lie in their favour. The balance of convenience is in favour of defendant No. 2 whose business worth Rs. 4 crores has come to a standstill on account of the impugned ex prate injunction order. It has therefore, been prayed that the application moved by the plaintiff being false and frivolous be dismissed and the ex prate injunction order dated July 1, 1998 be vacated.