S.J. Kathawalla, J@mdashThis is an action for infringement of trademark committed by the Defendants by using trademark ''KSB India'' which according to the Plaintiffs is identical and/or deceptively similar to the Plaintiffs'' registered trademark ''KSB'' in relation to pipes.
2. It is averred in the plaint that Plaintiff No. 1 is a Corporation organized, or incorporated and/or existing under the laws of Federal Republic of Germany. Plaintiff No. 2 is a company incorporated and registered under the Companies Act, 1956. Plaintiff No. 2 was incorporated on 11th day of April, 1960 in India. It is averred in the Plaint that Plaintiff No. 1 holds (through its subsidiary) 40.54% shares in the Plaintiff No. 2 and that Plaintiff No. 2 is an associate of the Plaintiff No. 1. It is averred in the plaint that Plaintiff Nos. 1 and 2 are constituents of the Multi National KSB Group.
3. The Defendants are a partnership/proprietary firm carrying on business of manufacturing, selling and/or marketing several types of pipes. It is averred in the Plaint that the constitution of the Defendants is not known to the Plaintiffs.
4. The Senior Manager - Direct Taxes and Legal of Plaintiff No. 2 and Authorized signatory Plaintiff No. 1 one Mr. Vijay Prabhakar Shindhaye has led the evidence by filing Affidavit in lieu of examination-in- chief. He confirms the correctness of the contents of the Affidavit. The Affidavit, inter alia, reiterates what is stated in the Plaint. Through the evidence, the compilation of documents is tendered in the Court which is taken on record and marked as Exhibit - X.
5. It is averred in the plaint that sometime in the year 1871, one Johannes Klein, Friedrich Schanzlin and Jakob Becker formed a company under the name ''Frankenthaler Maschinen - & Armatur-Fabrik Klein, Schanzlin & Becker". In the year 1887, the said company became a Public Limited Company. The name was changed to the present names incorporating the letters "KSB" being the first letters of the surnames of the three individuals mentioned hereinabove. The letters "KSB" form an essential part of the corporate name of the Plaintiff No. 1. The said letters/mark "KSB" were so adopted having reference to the surnames of the founders of Plaintiff No. 1. A statement giving the history of the Plaintiffs No. 1 from the year 1871 is set out at Exhibit ''A'' to the Plaint. It is averred in the plaint that Plaintiff No. 1 and their group companies including holding/affiliate/subsidiary/associate companies are worldwide known as "KSB" for the last more than 130 years.
6. It is averred in the Plaint that the Plaintiffs have 65 companies worldwide with the name "KSB", which forms the key essential and dominant component part of their incorporated names, a list whereof is set out in paragraph 3.3 of the Plaint. The said list reveals that the Plaintiffs have companies having ''KSB'' as prefix in various countries including Frankenthal (Pfalz), Schwedt, France, Italy, Austria, Netherlands, Luxemburg, Great Britain, Belgium, Switzerland, Portugal, Greece, Sweden, Spain, Czech Republic, Hungary, Poland, Slovak Republic, Finland, Russia, Serbia, USA, Canada, Venezuela, Brazil, Argentina, Mexico, Turkey, Japan, Thailand, Singapore, Pakistan, Saudi Arabia, Taiwan R.O.C., Indonesia, Hong Kong, Korea, China, U.A.E., South Africa, Australia and Algeria.
7. It is averred in the Plaint that Plaintiff No. 1 has permitted Plaintiff No. 2 to use the trade mark/name "KSB" in its corporate name and also as the trade marks. Plaintiff No. 2 has been manufacturing, marketing and selling their products bearing the trade marks "KSB", "KSB logo" and/or "KSB & logo" in India for the last more than four decades. Plaintiff No. 2 has been also exporting their products bearing the trade marks "KSB" and/or "KSB & logo" to several countries. The Plaintiffs have been using the name "KSB" as part of their business/corporate name, trading name, trading style, house mark and trade mark for past more than four decades in India.
8. It is also averred in the Plaint that the Plaintiffs have been globally amongst the leading manufacturer and dealer of inter alia variety of pumps, pipes, valves and spare parts thereof ("the goods"). The Plaintiffs also provide service of engineering, installation, repair, maintenance of pumps, pipes, valves, motors, planning, components testing, training and education of personnel etc ("the services"). It is averred that the products of the Plaintiffs are used in India by various organizations dealing in water supply, building construction, developing immovable properties, drip irrigation, cooling water circulation, industrial washing machine, sprinkling, air conditioning, paper industry, fire fighting system, water supply, sugar industry, food processing industry, petrochemical industry, chemical industry, mining industry, food process industry, hotels, power stations, refinery etc.
9. It is averred in the plaint that Plaintiff No. 1 has applied for and obtained registration of the trade marks "KSB", "KSB logo" and/or "KSB & logo" in various countries in various classes. The details of some of the international registrations are set out in paragraph 3.8 of the Plaint. Plaintiff No. 1 has also applied for and obtained registration of their trademarks "KSB" in respect of the goods and services falling in classes 6, 7, 9, 11, 16, 37, 41 and 42 in India as set out in paragraph 3.9 of the Plaint. The same is reproduced below for the sake convenience:
10. The Plaintiffs have produced legal proceeding certificates in respect of trademark KSB (word mark) registered under No. 726000 registered on 26th September, 1996, in class 6 for various products including metal pipes, base metals and their alloys, cast unmachined parts, semi-finished and finished metal products, moulds and patterns for cast iron production, metal valves, gate valves, butterfly valves, to be installed in pipelines are suitable for liquid or gaseous media. The said legal proceeding certificate is produced at Sr. No. ''P-3'' to the compilation of documents of the Plaintiffs. It appears from the said legal proceedings certificate at Sr. No. ''P-3'' that the registration of the mark which is subject matter of the certificate is valid upto 26th September, 2016. The Plaintiffs have produced legal proceeding certificates in respect of trademark KSB (label mark) registered under No. 768580 registered on 3rd September, 1997 in class 6 for various products including metal pipes, base metals and their alloys, cast unmachined parts, semi-finished and finished metal products, moulds and patterns for cast iron production, metal valves, gate valves, butterfly valves, to be installed in pipelines are suitable for liquid or gaseous media. The said legal proceeding certificate is produced Sr. No. ''P-4'' to the compilation of documents of the Plaintiffs. It appears from the said legal proceedings certificate at Sr. No. ''P-4'' that the registration of the mark which is subject matter of the certificate is valid upto 3rd September, 2017.
11. It is averred in the plaint that the said trademarks have been adopted and used by the Plaintiffs in India for the last more than four decades. It is averred in the plaint that the Plaintiffs have registered the domain name www.ksb.com and that the Plaintiffs have also been using the name "KSB" in their website and e-mail addresses.
12. It is averred in the Plaint that Plaintiff No. 1 has carried on business on an extensive scale all over the world; that the total turnover of the group companies of Plaintiff No. 1 is approximately Euro 8,55,949,000/- in the year 2013; that Plaintiff No. 2 has manufactured and sold the products and have carried on business on an extensive scale under the trademarks, the essential feature of which are the letters/name "KSB" in India; that the sales turnover of Plaintiff No. 2 is approximately INR 731.3 Crores for the year 2013; that Plaintiff No. 2 has also spent considerable amount by way of advertisement and publicity expenses for popularizing the suit trademarks. The Plaintiffs have produced a certificate issued by its Chartered Accountant wherein he has certified the sales of Plaintiff No. 2 from the year 1963 till the year 2012 which is at Exhibit P-7 to the compilation of documents. The Plaintiffs have also produced a certificate issued by its Chartered Accountant wherein the advertisement expenses of Plaintiff No. 2 from the year 1996 till the year 2012 have bee certified. The same is at Exhibit P-7 to the compilation of documents.
13. It is also averred in the plaint that in August 2014, the Plaintiffs came across an Application made by the Defendants for registration of trademark "K. S. B. INDIA" (hereinafter referred to as "the impugned mark") published in the Trade Marks Journal No. 1644 dated 19th June 2014 under No. 2006543 in Class 17. In the said Application, the Defendants have claimed user of the impugned mark from 1st April 2010. The print out of the status of the said Application which is available on the website of the Registrar of trademarks has been produced at Exhibit P-10 to the compilation of documents.
14. The Plaintiffs'' Advocates therefore issued a Cease and Desist notice/letter dated 19th August, 2014 to the Defendants by Speed Post A.D. which is annexed at Exhibit P -11. It is deposed by the Plaintiffs'' witness that the said letter was delivered to the Defendants on 26th August, 2014 as per the website of the India Post/the confirmation email of the Post Office. The witness also produced a copy of the confirmation letter dated 14th October, 2014 of the Stamp Office which is annexed at Exhibit P-12. Despite receipt, the Defendants failed to reply to the Plaintiffs and also failed to comply with the requirements as stated in the said Notice.
15. It is averred by the Plaintiffs that the Plaintiffs'' Advocates by their final reminder letter sent by Speed Post A.D. dated 5th November, 2014 finally called upon the Defendants to comply with the requirements stated in the said Notice dated 19th August, 2014 within a period of 3(three) days from the receipt of the same. The said reminder Notice was delivered to the Defendants on 10th November, 2014 as per the acknowledgment receipt duly signed by the representative of the Defendants. It is averred in the plaint that the Defendants have received the said reminder Notice but failed to reply to the Plaintiffs and also failed to comply with the requirements as stated in the said Notice.
16. Thus on 18th November, 2014, the Plaintiffs filed the present suit. The writ of summons was served on the Defendants. The Affidavit of service of writ summons is taken on record. Despite the service of the writ of summons, the Defendants have failed to remain present in court and/or enter an appearance through Advocate.
17. It is submitted on behalf of the Plaintiffs that the trade mark "KSB" has acquired worldwide goodwill and reputation including in India and worldwide on account of long and exclusive usage and premium quality parts and exclusive services. It is submitted on behalf of the Plaintiffs that by reason of open, long and extensive use of the trade mark "KSB" by the Plaintiffs it has become distinctive and exclusively associated with the Plaintiffs by the members of trade and public. It is submitted on behalf of the Plaintiff that the trade mark "KSB" thus falls in the category of "well known trademarks", and thus, requires protection of widest extent and beyond limitation or constriction of category of goods or services.
18. The Plaintiffs have relied upon a Judgment of this Court passed in favour of the Plaintiffs in the matter of KSB Aktiengesellschaft and Another v. KSB Real Estate and Finance Private Limited1. In the said judgment, after relying on section 29(4) of the Trademarks Act, 1999, this Court has held:--
"These provisions show that a registered mark may be infringed by the use of the mark in relation to goods or services which are not similar to those to which the mark is registered. The requirement under the law is that the registered trade mark must have a reputation in India and the use of the mark without due cause would take unfair advantage of or would be detrimental to the distinctive character or reputation of a registered mark. The provisions of Section 29(4) came to be introduced into the Trade Marks Act, 1999 in order to extend the protection that was available in an action for infringement. In view of the provisions of Section 29(4), it would be no defence to urge that the mark of the Defendant is being used in relation to goods and services which are not similar for those to which the mark of the Plaintiffs registered. The Plaintiffs have prima-facie established, a significant reputation in India. The use of the same mark by the Defendant would be detrimental to the distinctive character and repute of the mark of the Plaintiff."
19. The Plaintiffs have relied upon a Judgment passed by Hon''ble High Court of Delhi passed in favour of the Plaintiffs in the case of
"12.1 The defence taken by the Defendant that KSB is a derivative of a family name, assuming that to be true, the same is untenable. This for the reason that the plaintiffs'' trade mark KSB has gained both in India, and in several countries across the world, a reputation. The annual sales turnover of the KSB even in 1995 was several Rs. 100 crores. Therefore, the Defendant''s use of the mark KSB'' cannot be permitted as it is bound to create a confusion in the minds of the trading community as well as its customers. The products of the plaintiffs are used; amongst others, by agriculturists. At least a significant section of its customers are bound to associate the goods supplied by the Defendant as those originating from the plaintiffs."
20. It is submitted on behalf of the Plaintiffs that the impugned mark "K. S. B. INDIA" is deceptively and/or confusingly similar to the Plaintiffs said registered marks. It is submitted on behalf of the Plaintiffs that addition of mere word "India" will not make any difference. It is submitted that considering the striking identity and/or deceptive similarity of the rival marks, the use of the impugned mark is bound to lead to deception, confusion, and/or erosion of the Plaintiffs'' marks and that the use of the impugned mark by the Defendants is likely to mislead the members of trade and public into believing that their goods/products are original and/or they are the dealers or distributors and/or agent of Plaintiffs and/or their goods/products and/or their part/components, and/or that Defendants are in some way connected or associated with Plaintiffs, which in fact is not the case.
21. It was submitted that Plaintiff No. 1 is the registered proprietor of the trade marks "KSB" (word and logo) in respect of various goods falling in Classes 6, 7, 9, 11, 36, 37, 41, 42 and in particular metal pipes which falls in Class 6 of the Fourth Schedule annexed to the Trade Marks Rules, 2002. It is submitted that although the Defendants have filed an Application under class 17 for Rigid PVC Pipes, SWR Pipes, PVC Cassing Pipes, PVC Suction Pipes, PVC Plumbing Pipes, PVC HDPE Pipes, Sprinklar Pipes, Garden Pipes, and Rigid & SWR Fittings, but the same are agnate and/or cognate to the products for which the Plaintiffs'' trademark is registered i.e. metal pipes. It is further submitted that the Plaintiffs'' have established that their trademark is a well known mark and thus even if the Defendants use the same in other class, the same would amount to infringement of their registered trademark as per section 29(4) of the Trademarks Act, 1999.
22. In these circumstances, the Plaintiffs submit that they are entitled to a perpetual order and injunction of this Court restraining the Defendants by themselves, their partners, proprietors, officers, agents and servants from using the trademark "KSB India" and/or any other trade mark/s identical with and/or deceptively similar thereto in respect of products being Rigid PVC Pipes, SWR Pipes, PVC Cassing Pipes, PVC Suction Pipes, PVC Plumbing Pipes, PVC HDPE Pipes, Sprinklar Pipes, Garden Pipes, and Rigid & SWR Fittings and/or any products falling in Classes 6, 7, 9, 11, 36, 37, 41, 42.
23. I have perused the Plaintiffs'' registered trademarks and logo at Exhibits P-2 and P-3 and the Defendants'' trademark at Exhibit P-10. The Defendants have applied for registration of trademark in the class 17 for similar and/or agnate and/or cognate goods for which the Plaintiffs'' marks are registered. The Plaintiffs have established that their trademark KSB enjoys substantial goodwill and reputation in India. The Plaintiffs have established that their trademark KSB has substantial goodwill and reputation in India. It can be seen from Exhibit P- 2 that the Plaintiff''s mark has been on the register since 26th September 1996. The Defendants in their Application has claimed user since 2010. The Defendants are thus subsequent adopter of the trademark KSB. In my view, the Defendants'' trademark KSB India is deceptively similar to the Plaintiffs'' registered trademark KSB and that mere addition of word "India" is of no consequence. In my view, the Defendants have infringed the Plaintiffs'' registered trademarks.
24. There is nothing on record that militates against anything that has been averred in the Plaint and deposed by the Plaintiffs'' witness Mr. Vijay Prabhakar Shidhaye.
25. The Defendants have remained absent despite service of writ of summons by the Plaintiff..
26. In the circumstances, I am of the view that the Plaintiffs are entitled to a decree restraining the Defendants from infringing their trademarks in terms of prayer clause (a). The Suit is therefore decreed in terms of prayer clause (a) which is reproduced hereunder:
"(a) That the Defendants by themselves, their servants, agents, assignees, distributors, dealers and agents be restrained by a permanent order and injunction of this Hon''ble Court from manufacturing, selling, exhibiting for sale, marketing his goods/products/services bearing the impugned mark "K.S.B. INDIA'''' and/or any other mark similar to the trade marks "KSB" so as to infringe the Plaintiffs'' said registered marks, and in particular, trade marks bearing Nos. 726000/6, 768580/6, 309500/7, 309501/11, 653830/11, 726001/7, 726003/11, 768578/7, 187197/11, 187198/7, 726184/16, 726002/9, 768577/9, 768579/11, 1291428/42, 1291429/37, 1291430/41, 1291431/41, 1291432/42 and 1291433/37 and other marks referred hereinabove."
27. Defendants to pay costs to the Plaintiffs as quantified as per Rules.
28. The Plaintiff is pressing for punitive damages. I accordingly grant Rs. 1,00,000/- towards punitive damages suffered by the Plaintiffs due to acts of the Defendant.
29. The office shall return the original documents to the Advocates for the Plaintiffs upon the Advocate for the Plaintiffs handing over Photostat copies of the said documents duly certified by him as true copies.
1Passed on 11th February 2008 (Coram: Dr.D.Y. Chandrachud, J.) in Notice of Motion No. 4019 of 2007 in suit No. 2930 of 2007
