Bombay High Court
Atomberg Technologies Private Limited vs Jogaram Sirvi on 14 December, 2023
Author: R.I. Chagla
Bench: R.I. Chagla
2023:BHC-OS:14649
908-COMIP-323-23.doc
Sharayu Khot.
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
COMMERCIAL IPR SUIT NO. 323 OF 2023
WITH
COURT RECEIVER'S REPORT NO. 477 OF 2023
WITH
INTERIM APPLICATION (L) NO. 30248 OF 2023
Atomberg Technologies Private Limited ...Applicant/
Plaintiff
Versus
Jogaram Sirvi & Ors. ...Defendants
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Mr. Hiren Kamod a/w Mr. Vaibhav Keni, Ms. Neha Iyer, Mr. Rohan
Lopes i/by Legasis Partners for the Plaintiff.
Mr. Rajesh S. Upadhyaya i/by RSU Legal for the Defendants.
Ms. Charushila M. Vaidya, 2nd Asstt. to Court Receiver.
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CORAM : R.I. CHAGLA J
DATE : 14 December 2023
ORDER :
1. At the outset, Mr. Rajesh S. Upadhyaya, the Ld. Advocate,
appearing for the Defendants submits that the Defendants have
no objection to this Court allowing the Leave Petition under
Clause XIV of the Letters Patent taken out by the Plaintiff by
granting leave in terms of prayer clause (a) of the said Leave
908-COMIP-323-23.doc
Petition under Clause XIV of the Letters Patent. Accordingly,
leave is granted and the Clause XIV Petition (L) No. 30212 of
2023 is allowed in terms of prayer clause (a).
2. Mr. Upadhyaya undertakes to file his Vakalatnama within a
period of two weeks from today.
3. The Plaintiff has filed the present suit seeking permanent
injunction restraining the Defendants from infringing the
Plaintiff's registered trademarks, copyright, passing off and
other reliefs. The Plaintiff has also sought a decree of
declaration that the Plaintiff's trade mark ATOMBERG is a
well-known trade mark in India. By an order dated 31st
October, 2023, this Court granted ex-parte ad-interim reliefs in
terms of prayer clause (a), (b) and (d) of the Interim
Application (L) No. 30248 of 2023 against the Defendants.
4. Mr. Upadhyaya, Ld. Advocate for the Defendants, tenders
Affidavit-cum-Undertaking of Mr. Jogaram Sirvi, Defendant
No.1 and sole proprietor / person managing and responsible
for running of Defendant Nos. 2 to 4 dated 8 th December, 2023
and states that the Defendants wish to submit to a decree in
terms of prayer clauses (a), (b), (c), (d) and (e) of the plaint.
The said Affidavit-cum-Undertaking is taken on record and
marked as 'X' for identification.
5. Mr. Hiren Kamod, Ld. Advocate for the Plaintiff submits that in
view of the averments made in the plaint and the documents /
material produced therewith, apart from decreeing the suit in
908-COMIP-323-23.doc
terms of prayer clauses (a), (b), (c), (d) and (e) of the plaint,
the Plaintiff is also entitled to a declaration that the Plaintiff's
trade mark ATOMBERG is a well-known trade mark in India.
He has made detailed submissions regarding the nature of
goods sold / services rendered / business done by the Plaintiff
under the trade mark ATOMBERG and the kind of wide
reputation and goodwill that has been acquired by the trade
mark ATOMBERG.
6. Mr. Kamod submits that the Plaintiff is a company engaged in
manufacturing and/or marketing and/or selling wide variety of
home appliances, such as ceiling fans, pedestal fans, wall fans,
exhaust fans, mixer grinder, smart door locks and accessories
thereof, such as fan remote, fan motor, fan canopy, fan blades,
fan downrod, etc. and has been carrying on business in respect
of the same under the trade mark / trade name ATOMBERG
since the year 2012. Mr. Kamod submits that the Plaintiff's said
trade mark / name ATOMBERG has two components, i.e.,
ATOM and BERG. "Atom" is the smallest unit of a matter, and
"Berg" comes from iceberg, which is at times bigger than
mountains. He submits that the journey of an organization
from the smallest building block (Atom) to that of a really big
global aspiration (Berg) is how the Plaintiff coined the said
trade mark / name. He submits that the said trade mark /
name ATOMBERG is coined and inherently distinctive.
7. Mr. Kamod submits that the Plaintiff's trading name and style
also contains the said trade mark ATOMBERG as its leading,
908-COMIP-323-23.doc
essential and prominent part/feature. Mr. Kamod submits that
the Plaintiff also uses the website bearing the domain name
www.atomberg.com, which provides the details of the
Plaintiff's said goods and business. Mr. Kamod submits that the
Plaintiff is present in over 60 cities across India.
8. Mr. Kamod submits that the Plaintiff has applied for and
secured registrations of the trade mark ATOMBERG (word per
se) and trade marks containing ATOMBERG as one its leading,
essential, prominent, distinguishing and distinctive feature /
part under the Trade Marks Act, 1999 in classes 11 and 7,
details whereof are set out at Exhibit A to the plaint. He
submits that the said trade mark ATOMBERG is prominently
displayed / depicted / used on all its products, packagings,
brochures, etc. Mr. Kamod submits that the Plaintiff's fans
under the brand / house mark ATOMBERG are the highest
rated on both Amazon and Flipkart. He submits that the
Plaintiff has earned substantial revenues running into crores in
respect of the said goods sold / business done under the said
trade mark / name ATOMBERG, including the said
packaging / trade dress. He submits that the Plaintiff's said
goods sold / business done under the said trade mark / name
ATOMBERG have also been widely promoted / publicized,
including on the Plaintiff's website www.atomberg.com. The
Plaintiff has been sponsors / one of the sponsors / fan partners
of several football and cricket matches, details whereof are set
out in paragraph 14 to the plaint. The Plaintiff has spent
substantial amount for promoting / advertising its said goods
908-COMIP-323-23.doc
sold / business done under the said trade mark / name
ATOMBERG / packaging / trade dress, through print and
electronic media, including circulating catalogues for the
benefit of the customers, etc. He submits that the Plaintiff has
been bestowed with the several awards, details whereof are set
out in paragraph 9 to the plaint, in particular, the National
Energy Conservation Awards - 2022 by the Hon'ble President of
India, Smt. Droupadi Murmu for the Plaintiff's ATOMBERG
Renesa ceiling fan. Mr. Kamod submits that the Plaintiff has
been vigilantly protecting its intellectual property rights by
initiating appropriate actions including obtaining restrain
orders from the Hon'ble Bombay High Court and Hon'ble Delhi
High Court.
9. Mr. Kamod submits that the recognition, reputation and
goodwill of the Plaintiff's said well-known trade mark
ATOMBERG is today no longer restricted to any particular class
of goods or services, but is associated with the Plaintiff across
all classes of goods and services. He submits that the Plaintiff's
said trade mark ATOMBERG has come to enjoy a personality
that is beyond the mere products/services sold / rendered
under the said trade mark ATOMBERG.
10. Mr. Kamod submits that the parameters that are required to be
taken into consideration for a well-known trade mark as per
Section 11(6) and 11(7) of the Trade Marks Act, 1999 are
fulfilled in the present case. He relied on the following orders /
judgments in support of his contentions:
908-COMIP-323-23.doc
a. Order dated 3rd December 2018 of this Court in ITC Ltd.
vs. Rani Sati Foods Pvt. Ltd. [Commercial IPR Suit
No.1469 of 2018]; and
b. Order dated 29th November, 2023 of the Delhi High
Court in Burger King Company LLC vs Virendra Kumar
Gupta & Anr. [C.O. (COMM.IPD-TM) 686/2022].
11. Mr. Upadhyaya submits that the Defendants have no objection
to this Court declaring that the Plaintiff's trade mark
ATOMBERG is a well-known trade mark in India as sought for
in terms of prayer clause (g) to the plaint.
12. I have heard the submissions made by Mr. Kamod and perused
the record. From the documents filed along with the Plaint, it
is evident that the Plaintiff's trade mark ATOMBERG has
garnered significant and enduring reputation and goodwill
throughout India. Further, the Plaintiff has diligently
safeguarded its rights in the ATOMBERG trade mark by
initiating appropriate actions including obtaining restrain
orders from the Bombay High Court and Delhi High Court. It is
a settled principle of law that a trade mark is capable of being
protected if either it is inherently distinctive or has acquired
distinctiveness. In this spectrum of distinctiveness, the first
category of marks is of arbitrary, fanciful, coined or invented
marks, which is of absolute distinctiveness. The marks falling
in this category deserve the highest degree of protection. Since
the trade mark ATOMBERG is a coined trade mark, the same is
908-COMIP-323-23.doc
inherently distinctive and therefore deserves a highest degree
of protection. The material also shows that the Plaintiff's trade
mark ATOMBERG has acquired immense and long-standing
reputation and goodwill throughout India. There can be no
doubt that the trade mark ATOMBERG is associated with the
Plaintiff and no one else.
13. In light of the above, it can be safely held that the trade mark
ATOMBERG has surpassed the scope of merely encompassing
products/services sold or rendered under the said trade mark.
The recognition, reputation, and goodwill of the Plaintiff's
well-known trade mark ATOMBERG, now extends beyond any
specific class of goods or services, encompassing all classes. It
is pertinent to note that the Defendants have no objection to
this Court declaring that the Plaintiff's trade mark ATOMBERG
as a well-known trade mark in India. Consequently, I am of the
opinion that the Plaintiff's ATOMBERG trade mark satisfies the
criteria and tests of a well-known trade mark as stipulated in
Sections 11(6), 11(7), and other provisions of the Trade Marks
Act, 1999. Therefore, I have no difficulty in affirming that the
Plaintiff's ATOMBERG trade mark qualifies as a 'well-known'
trade mark in India, as defined in Section 2(1) (zg) of the
Trade Marks Act, 1999.
14. In view of the Defendants' Affidavit-cum-Undertaking dated 8 th
December, 2023, the suit is decreed in terms of prayer clauses
(a), (b), (c), (d) and (e) of the Plaint. Further, since this Court
has come to the conclusion that ATOMBERG is a 'well-known'
908-COMIP-323-23.doc
trade mark, the Suit is also decreed in terms of prayer clause
(g) of the Plaint.
15. In view of the disposal of the Suit, the Interim Application (L)
No. 30248 of 2023 also stands disposed of. No order as to
costs.
16. The Court Receiver is discharged without passing up of
accounts but on payment of his costs, charges and expenses, if
any, to be paid by the Plaintiff.
17. The Court Receiver's Report No. 477 of 2023 is disposed of.
18. Drawn up decree/order is dispensed with unless the parties
seek drawn up decree/order, in which case they are entitled to
apply.
[R.I. CHAGLA J.]
