India: Delhi High Court dismisses suit against Modi Hitech India Limited

Source: delhihighcourt.nic.in

Recently, on April 02, 2018, the Delhi High Court in the case of Superon Schweisstechnik India v. Modi Hitech India Limited, held that a claim of passing off or infringement could not be entertained as there was no deceptive similarity between the two products at hand. In the said case, a suit was filed by Superon Schweisstechnik India Limited (hereinafter referred to as the ‘Plaintiff’) for permanent injunction and related reliefs against Modi Hitech India Limited (hereinafter referred to as the ‘Defendant’) for infringement and passing off of the Plaintiff’s mark VAC-PAC and SUPERON.

Brief Background 

• In the above case, the Plaintiff is engaged in the manufacturing of conventional welding electrodes and is in the business of repair and reclamation of welding electrodes. 
• The Plaintiffs got engaged in a manufacturing business with Kjellberg Finsterwalde, Germany and, also got engaged in manufacturing of fire suppression systems coatings, fire barriers, etc and various other products.
• Accordingly, it has given its year wise details of sales from year 2004-2005 to the year 2016-2017. Its sales in the year 2004-2005 were said to be INR 1,76,31,937 (26,44,064 USD approx.) and in the year 2016-2017, the sales became INR 3,13,14,84,815 (4,69,59,370 USD approx.).

 Issue

• Whether the Plaintiff’s claim that the Defendant used the word VAC-PAC and SUPERON infringed the Plaintiff’s work?          

Contentions by the Plaintiff

• The Plaintiffs claimed that its trademark SUPERON is Well-Known under which it sells its goods, and along with this trademark it also claims to have adopted the trademark VAC-PAC from the year 2004. 
• Further, the trademark VAC-PAC is said to have been coined, conceived and adopted by them with respect to its products and, is arbitrary and fanciful as per them and, hence entitled to high degree of protection.
• Plaintiffs claimed to be the owner and proprietor of the artistic work which is involved in the trademark VAC-PAC along with certain other features contained in the label on account of prior adoption and, continuous use. They also claim to be using the trademark in a distinctive and unique manner, with their own set up and lettering style, etc. 
• Through further claims, they are found to be exporting the goods under the trademark VAC-PAC in about 70 countries. 
• The Plaintiff also pleaded that the Defendant had dishonestly adopted an identical trademark VAC-    PAC for welding electrodes, which was sold by them and this adoption of the trademark VAC-PAC by the Defendants is completely dishonest. 

       Contentions by the Defendant 

• The Defendant prayed for dismissing of the commercial suit on the ground that the Plaintiff has no real prospect of succeeding in terms of the cause of action pleaded in the suit.
• In support of the argument, the Defendant relied upon the judgement given in the case of Marico Limited (supra) which held that abbreviation of descriptive words cannot and should not be given protection as a trademark.
• Further, the Defendant argued that whereas ordinary suits which are not commercial suits would require trial if there was a dispute in question of fact, the commercial suits because of the provision of Order XIII – A CPC as added in CPC for commercial suits, allowed the Court to dismiss the suit at once if there is no real prospect of the Plaintiff succeeding in the suit. 

         Observations by The Hon’ble High Court

•  The Court observed, that the Plaintiff was selling its goods by using two trademarks SUPERON and VAC-PAC, whereas the Defendant was selling its goods by using its trademark GMM/arc while adding VAC-PAC on its packaging.
• The Plaintiff was using the colour dark yellow while using two other colours blue and black as its colour combination on the main packaging, whereas the Defendant was using the colours blue and white along with red for the words _arc on its packaging which was the part of the trademark GMM/arc, along with the expression _Umesh Modi Group in red colour on its packaging.
• Also, the Court made two points in the case, firstly the trademark of the Plaintiff had SUPERON in addition to VAC-PAC, whereas the Defendant had GMM/arc in addition to VAC-PAC.
• This clearly shows that, there is no identity or deceptive similarity between the two and the different trademarks are necessary to distinguish the goods of the Plaintiff to that of the Defendant.
• Secondly, the packaging of both the Plaintiff and the Defendant, are completely different which could be made out by scanning of both the packaging.

Therefore the Court held that -

• The present suit is gross abuse of the process of law. And, the Plaintiff has chosen to file the same in spite of  the settled law laid down in the case of Marico Limited, which holds that there does not arise any issue of passing off not only because of use of primary trademarks as wordmarks being different of both the parties but also here is a complete difference in get up and packaging of the products of the respective parties, and finally w.r.t disentitlement of any person to claim descriptive wordmarks or their abbreviated forms for their exclusive entitlement in view of provisions of the Trade Marks Act, therefore this suit is dismissed with actual costs.
• Hence, the Court imposed the costs on the Plaintiff and, in favor of the Defendant by applying Section 35 of Civil Procedural Code, 1908 (herein after referred to as CPC). And, dismissed the suit with costs of INR 50,000 (USD 748 Approx.) 
• According to the Court, there was no provision in CPC for imposition of costs for abuse of process of law because Section 35 CPC is applicable only for awarding costs in favor of the successful party. Therefore, Section 151 CPC will be applied to impose the costs upon the litigant who has abused the process of law and unnecessarily wasted the time of the court.