Ksb Aktiengesellschaft And ... vs Ksb Global Limited
2010 Latest Caselaw 2948 Del

                  THE HIGH COURT OF DELHI AT NEW DELHI

%                                       Judgment delivered on: 04.06.2010

                                    CS(OS) No. 1250/2008


KSB AKTIENGESELLSCHAFT & ORS.                         ..... PLAINTIFFS



                                              Vs


KSB GLOBAL LIMITED                                    ..... DEFENDANT


Advocates who appeared in this case:

For the Plaintiff :    Mr Hemant Singh, Mr Bharat Shah & Mr Sachin Gupta, Advocates
For the Defendant:     Mr Alok K Agarwal, Mr Naveen Chawla & Ms Myra Koicha, Advocates

CORAM :-
HON'BLE MR JUSTICE RAJIV SHAKDHER

1.

Whether the Reporters of local papers may be allowed to see the judgment ? Yes

2. To be referred to Reporters or not ? Yes

3. Whether the judgment should be reported in the Digest ? Yes

RAJIV SHAKDHER, J

1. The plaintiffs have instituted the present suit for permanent injunction against

infringement of their trade mark, passing off, damages and other consequential reliefs.

The core issue raised in the suit relates to the defendant using the letters ‗KSB' as part of

its corporate name which the plaintiffs aver violates their statutory rights under the Trade

Marks Act, 1999 (hereinafter referred to as ‗Trade Marks Act') and their common law

right that the defendant would not pass off its goods as those originating from the

plaintiffs.

2. PLAINTIFFS' CASE

2.1 In order to appreciate the import of the defendant's action, it may be relevant to

note the following averments which are relevant for the purposes of adjudicating upon

the case.

2.2 Plaintiff no. 1 is a corporation, incorporated under the laws of Federal Republic of

Germany. It is averred that the letters ‗KSB' was adopted as a part of its trading name

and style having regard to the surnames of its founders. The founders being Johannes

Klein, Friedrich Schanzlin and Jakob Becker. It is stated that in 1871, the three

gentlemen, whose names are referred to hereinabove, formed a company under the name

Frankenthaler Maschinen & Armatur-Fabrik Klien, Schanzlin & Becker. The

aforementioned company was converted into a public limited company in 1887. As

indicated above, the letters ‗KSB' were taken from the first letter of each of the surnames

of the three individuals mentioned hereinabove, i.e., Klien, Schanzlin & Becker. The

letters ‗KSB' evidently were adopted as a name in and around 16.09.1988. It is also

averred that plaintiff no. 1 is known as ‗KSB' in Germany for almost over 137 years.

Over a period of time, the plaintiff no. 1 has formed and promoted several companies

across the world with the letters ‗KSB' forming part of its corporate names. It is claimed

that plaintiff no. 1 has 27 manufacturing sites worldwide with subsidiaries and

representatives in 100 countries.

2.3 Plaintiff no. 2 was incorporated under the Indian Companies Act, 1956 on

11.04.1960. Plaintiff no. 1 holds in plaintiff no. 2, through its subsidiary, 40.54% of the

shareholding. Plaintiff no. 2, it is claimed, is associated with plaintiff no. 1 as the

registered user, in respect of some trade marks, owned by plaintiff no. 1; which is an

information filed with the Trade Marks Authority in India. It is also averred that plaintiff

no. 1 has incorporated a 100% subsidiary in India, by the name of KSB Tech Pvt. Ltd., on

23.11.2004. Plaintiff no. 2, it is stated, has been exporting goods under the trade mark

‗KSB' and/or under the ‗KSB & Logo' to several countries with the consent of plaintiff

no. 1. The plaintiff no. 1 has been importing products into India bearing the trade mark

‗KSB' and ‗KSB & Logo'.

2.4 Thus, in sum and substance, it is the case of the plaintiffs that the letters ‗KSB'

form an integral part of their business and trading name. In so far as plaintiff no. 2 is

concerned, it is said to be a leading manufacturer and dealer of variety of pumps, valves

and spare parts etc. In respect of these products, plaintiff no. 1 provides requisite

engineering services, which would include, installation, repair, maintenance, planning,

component testing as also training and education of personnel. It is also averred that the

products of plaintiff no. 2 are used by the various organizations in India dealing in: water

supply, drip irrigation, cooling water circulation, industrial washing machine, sprinklers,

air-conditioning, paper industry, fire fighting systems, water supply, sugar industry, food

processing industry, petrochemical industry, chemical, mining and hotel industries,

power stations and refineries.

2.5 Plaintiff no. 1, it is further averred, has obtained registration of its mark ‗KSB' in

respect of goods and services falling in classes 6, 7, 9, 11, 16, 37, 41 & 42. Only to be

noted that registration no. 726000 dated 26.09.1996, in respect of the mark ‗KSB', in

class 6 would include metal pipes, amongst other goods and services. This is also the

position vis-à-vis registration no. 768580 in respect of ‗KSB Logo'; which again falls in

class 6.

2.6 Plaintiff no. 2 claims to be a registered user in respect of six trade marks owned

by plaintiff no. 1. It is averred that the necessary application has been made to the Trade

Marks Authority; however, the issuance of formal orders is awaited. It is also averred

that plaintiff no. 2 manufactures and sells products under a mark which includes the

letters ‗KSB'. These letters form an essential part of its trade mark. There are also

averments to the effect that plaintiff no. 1 has obtained registration of its trade mark in

various countries across the world, i.e., Germany, U.K., Canada, USA, Australia, Japan

and Korea, wherein the letters ‗KSB' form an essential feature of its mark.

2.7 The total turnover achieved evidently by plaintiff no. 1 in the year 2006 is Euros

1556 million. Similarly, plaintiff no. 2 claims to have achieved in the same year a

turnover of Rs 400 crores. It has also claimed that a huge amount of money has been

spent by the plaintiffs in advertising its trade mark which include letters ‗KSB'.

Therefore, essentially the plaintiffs, based on the aforesaid facts, claim that their trade

mark, which consist of letters ‗KSB', is a well known mark, which has attained

transborder reputation, by its extensive use and advertisement in countries across the

world, including India.

2.8 In order to protect its proprietary rights in the trade mark, which consists of

‗KSB' letter, it has instituted several actions. The examples of some actions, which have

been instituted in India, have been alluded to in the plaint.

2.9 It is averred that the plaintiffs became aware of the defendant's infraction of the

law, on browsing the website of the Ministry of Corporate Affairs, i.e., www.mca.gov.in.

The website, it is claimed, became operative in September, 2006, and since then has been

updated from time to time. The plaintiff, it is averred, thus discovered that the defendant

is using ‗KSB' as part of its corporate name. This, it is stated, was brought to the notice

of the defendant by way of a cease and desist notice dated 27.10.2006 issued by the

plaintiffs through their advocates. It is alleged that the defendant did not respond to the

said notice. Therefore, by another notice dated 06.05.2008, once again issued through

their counsel, defendant was called upon to cease the usage of the letters ‗KSB' as part of

its corporate and trading name.

2.10 In these circumstances, it is the case of the plaintiff that the defendant in using

‗KSB' as part of its corporate name infringed the plaintiffs' registered mark. The

defendant's mark being identical to that of the plaintiffs', as also the fact that there is a

similarity in the goods and services dealt with by the plaintiffs and the defendant, a case

for infringement is quite clearly made out. It is also the case of the plaintiffs that since

their mark has acquired extensive reputation and goodwill, and consequent thereto,

distinctiveness in India, to an extent that, the letters ‗KSB' are associated by the members

of the public, as well as the trading community with the plaintiffs. It is thus alleged that

the defendant is attempting to pass off its goods and services as those of the plaintiffs. In

these circumstances, the plaintiffs have sought injunction against the defendant's use of

the letters ‗KSB' or any other mark which is deceptively similar to that of the plaintiffs as

part of its corporate name.

3. DEFENDANT'S CASE

3.1 The defendant on the other hand has asserted its right to use letters ‗KSB' on its

products on various grounds. These are as follows:

(i) It is averred in the written statement that the usage of the letters ‗KSB' by the

defendant in its corporate name has its genesis in the family partnership firm constituted

in 1960, bearing the name of Kuldip Singh & Bros. It is these very partners of the said

firm, who are the promoters of the defendant. These letters ‗KSB' have been adopted

from the initials of the partnership firm Kuldip Singh & Bros. It is stated that since

‗KSB' is a ―family name‖ the defendant is entitled to use the letters as part of its

corporate name; there being no embargo in law in the defendant doing so. It is to be

noted at this juncture that the partnership firm Kuldip Singh & Bros. continues to be in

existence.

(ii) Plaintiff no. 1 adopted its present name KSB AKTIENGESELLSCHAFT only on

16.09.1988, whereas the aforementioned partnership firm Messrs Kuldip Singh & Bros

has been in existence since 1960.

(iii) The letters ‗KSB' are in common usage, and thus plaintiffs cannot be permitted to

monopolise the use of the letters ‗KSB'. The defendant was incorporated on 22.03.1995

after obtaining approval of the name from the Office of Registrar of Companies, Delhi. It

is asserted that the letters ‗KSB' was not associated with the plaintiffs, and is therefore

available for use by others, including the defendant. As a matter of fact proceedings

under Section 22 of the Companies Act, pertaining to the objections raised by the

plaintiffs in the defendant using the letters ‗KSB' is, pending before the Regional

Director, Ministry of Corporate Affairs. The plaintiff has deliberately chosen not to refer

to this aspect of the matter. Consequently, the suit is barred and not maintainable. The

defendant's trade name, i.e., ‗KSB' is a well known name in trade and business circles of

Delhi as manufactures and sellers of pipes and pipes fittings and also for real estate. The

plaintiffs' plea that they came across the defendant's trade name only in 2006 is false

since the plaintiffs ought to have had public notice of the defendant's existence w.e.f.

1994, when it was incorporated. The plaintiffs for the reasons best known to them did

not object to the defendant's name which, in the meanwhile, acquired reputation in the

market. It is submitted that the defendant has neither infringed the registered trade mark

of the plaintiffs nor is there an attempt as alleged to pass off its goods as that of the

plaintiff.

(iv) The rival marks in issue except for the letters ‗KSB' are completely different, in

as much as, the latter part of the defendant's trade name includes use of the words Global

Limited whereas, the plaintiffs' trade name has in the latter part the words Pumps Ltd.

included in it. Therefore, there is no chance whatsoever of any confusion as there is no

structural or phonetic similarity in the trade names.

(v) The defendant is in business since 1960. The defendant had replied to the notice

dated 27.10.2006 issued by the plaintiffs. In the reply a demand was raised, that the

defendant be supplied with registration certificate by plaintiff no. 2, in order to ascertain

the classes in which it had obtained registration of the mark ‗KSB'. Plaintiff no. 2, it is

alleged, failed to send the details, and instead issued another notice dated 23.08.2008.

The said notice dated 23.08.2008 referred them to the trade mark authority for obtaining

the necessary information.

(vi) It is stated that, apart from the fact that incorporation by plaintiff no. 1 of 100%

subsidiary by the name of KSB Tech Pvt. Ltd. is not within the defendant's knowledge;

the very fact that it is incorporated in 2004, with the object similar to that of the

defendant, demonstrates the plaintiffs' malafide intentions. It is stated that most of the

trade marks which the plaintiffs allege infringement of are either unregistered, or have

come into existence after the incorporation of the defendant. Specifically, it is averred in

the written statement that trade mark bearing nos. 726000, 726001 and 726002 were

registered in the year 1996, and trade marks bearing nos. 1291428, 1291429 and

1291433, were registered in 2004. This, according to the defendant, establishes its prior

user of the letters ‗KSB' as part of its trade name.

(vii) It is denied that the plaintiffs' trade mark are either well known or have attained

reputation and goodwill in India or that defendant is using the letters ‗KSB' as part of its

corporate name without any due cause or with a view to take unfair advantage or cause

detriment to the distinctiveness, character or reputation allegedly attained by the

plaintiffs' registered mark. The defendant has also denied its liability to pay damages as

alleged or at all.

SUBMISSIONS OF COUNSELS

4. On behalf of the plaintiff Mr Singh made submissions which were largely in

support of what had been stated in the pleadings filed in court. It has been stressed by Mr

Singh that the word mark ‗KSB' are initials of its founders. The origin has been traced to

the company formed in 1871 which, carried the last name of three of its founders.

Reference in this regard was made to the pleadings (which has been noticed by me

hereinabove), as also to the affidavit of PW1. It was contended that since then plaintiff

no. 1 and its group companies have used the word mark ‗KSB' as part of their corporate

and trading name. It was contended that plaintiff no. 1 has spawned several subsidiaries

in over 100 countries, including India. Plaintiff no. 2, which is also a subsidiary of

plaintiff no. 1, stands incorporated under the Indian Companies Act, 1956 as far back as

in 1960. In order to buttress his stand in regard to the wide array of companies which are

part of the same group, Mr Singh once again referred to the affidavit of PW1, and

exhibits PW1/50-51. Mr Singh also alluded to the ―Agreement of Technical

Collaboration‖ dated 02.11.1960 executed between plaintiff no. 1 and 2. This agreement

he said was renewed from time to time. In this regard reliance was placed once again on

the affidavit of PW1 and the exhibit PW1/29.

4.1 Mr Singh in order to establish that ‗KSB' brand had acquired considerable

reputation adverted to the fact that Protos Engineering Company Pvt. Ltd. (in short

‗Protos') has been the sole selling agent of plaintiff no. 1 for several decades; and that

Protos had been importing ‗KSB' branded pumps into India since 1945. It was further

contended that the said company was the sole selling agent of plaintiff no. 2 between

1960-1979. To establish the import of ‗KSB' brand pumps into India, he referred to the

affidavit of PW1, and the shipping invoices for the period 1973- 1976 (Ex. PW1/38 and

PW1/45-48). In this regard, he also referred to the affidavit of PW2 who, evidently

worked as the Senior Sales Manager from 13.04.1969 to 31.12.1969.

4.2 It was asserted that in respect of trade mark ‗KSB' and ‗KSB Logo' plaintiff no. 1

had acquired several registration in various countries including Germany, U.K., USA,

Canada, Australia, Japan, Korea, China, Ireland, Singapore, Thiland and South Africa.

In so far as India is concerned it was pointed out that plaintiff no. 1 had obtained

registration, as far back as in 1958, in classes, 6, 7, 9, 11, 16, 37 and 41. In support of his

submission with regard to international registrations and registration in India reference

was made to exhibits PW1/13 and PW1/14-25 as also the affidavit of PW1. The learned

counsel specifically adverted to the fact that class 6 registration in India referred to pipes

which are also the class of goods dealt with and/or traded by the defendant. Only to be

noted that, as indicated hereinabove, the said registration in class 6 of the Trade Mark

‗KSB' has been acquired on 26.06.1996 (Ex. PW1/26). Mr Singh also stressed the fact

that plaintiff no. 2 has been using the trade mark ‗KSB' and ‗KSB Logo' in India under

the permitted user agreement dated 18.06.1963 executed with plaintiff no. 1. It was

submitted that an application for registration of plaintiff no. 2 as a registered user stands

filed, in the prescribed form TM-28, as far back as on, 18.06.1963. Reliance in this

regard was placed on Exhibit PW1/31-32 and affidavit of evidence of PW1. It is

asserted that even in the year 1995, when the defendant was first formed plaintiff no. 1

had an annual sales turnover of Rs. 225 crores, and spent nearly Rs 13 crores on

advertising its mark in the year 1996. Similarly, plaintiff no. 2 had an annual sales

turnover of Rs 106 crores in the year 1995, and an advertising spend of nearly Rs 50.08

lacs in India, in 1996. For this purpose my attention was drawn to exhibits PW1/40 and

PW1/43-44. The original sales invoices for the period 1996 to 2007, and the

advertisements in original for the period 1999-2000 were also referred to. In this regard

reliance was placed on exhibits PW1/42 and PW1/71. Reference was made to articles

published in various newspapers, as also to the prospectus issued in connection with

public issue of shares. In this regard my attention was drawn to exhibits PW1/35 and

PW1/70.

4.3 To demonstrate that the plaintiffs have shown alacrity in regard to protection of

their rights in the mark ‗KSB' reference was made to the legal notices issued,

undertakings received and court orders and decrees passed in their favour. Specific

reliance in this regard was made to exhibits PW1/58-69.

4.4 Mr Singh asserted that the plaintiffs became aware of the fact that the defendant

was using their mark ‗KSB' only in September, 2006 on browsing the website of the

Ministry of Corporate Affairs. It was the submission of the learned counsel that the

defendant has not been able to prove the fact that the adoption of the plaintiffs' mark

‗KSB' as part of their corporate name has its genesis in the partnership firm Messrs

Kuldip Singh & Bros., which evidently was set up in the year 1960. The learned counsel

submitted that the defendants, as per their own showing, are also in the business of

selling pipes and valves apart from being in the business of real estate; a business akin to

that of the plaintiffs. It was, therefore, contended by the learned counsel for the plaintiffs

that the defendants having adopted an identical, or in the very least, a deceptively similar

mark; being in the same line of business, and dealing with the same set of customers -

had within the meaning of the provisions of Section 29 of the Trade Marks Act

committed an infringement of its statutory rights which inhere in the mark ‗KSB' It was

submitted that the present case falls squarely within the provisions of Section 29(1) and

(2) of the Trade Marks Act. It was also contended that, in any event, even if it is

accepted for the purposes of argument that the defendant is not in the same line of

business even then: since there is an undoubted similarity between the rival marks and

given the fact that the plaintiffs' mark has a reputation in India the use of which has been

both unfair and detrimental of the distinctive character and the wide reputation enjoyed

by the plaintiffs' mark-- the impugned action of the defendant would constitute

infringement within the meaning of the provisions of sub-section 4 of Section 29 of the

Trade Marks Act. Towards this end the learned counsel referred to the cross-examination

of DW1 to drive home the point that the said witnesses of the defendant, who was both a

director of the defendant as well as a partner in Messrs Kuldip Singh & Bros., had not

been able to establish that they had carried out, what it purported to do, i.e., real estate

business. It was asserted that the defendant's business was in relation to pipes and valves

which is cognate to the business of the plaintiffs which deal in pumps parts which include

valves etc. It was contended that the use of the word ‗KSB' by the defendant as part of

their corporate name and trading style was dishonest and fraudulent. The sole motive,

according to the learned counsel, is to ride on the goodwill and reputation enjoyed by the

plaintiff. The learned counsel submitted that there being a trade connection between the

goods manufactured by the defendant (i.e., pipes and valves) and those manufactured by

the plaintiffs, there was a clear intent on the part of the defendant to pass off their goods

as those originating from the plaintiffs. In support of his submission the learned counsel

relied upon the following judgments:

Larsen & Toubro Ltd vs Lachmi Narain Trades & Ors. 2008 (36) PTC 223

(Del.); Corn Products Refining Co. vs Shangrila Food Products Ltd. AIR

1960 SC 142 (V 47 C 25) Sony Kabushiki Kaisha vs Mahaluxmi Textils

Mills 2009 (41) PTC 184(Cal.)

4.5 The learned counsel also submitted that the defendant cannot use the mark ‗KSB'

on the pretext that it is an abbreviation of its family name for the reason: that it is firstly,

not the name but initials; secondly, there is no demonstrable honesty of purpose when

one keeps in mind the fact that, the plaintiffs' mark has acquired a wide reputation in

India and therefore use of the letters ‗KSB', as part of the corporate name is bound to

create confusion in the minds of both the trading community, as well as the customers at

large. In this regard reliance was placed on the judgments of the Division Bench of this

court in B.K. Engineering Company vs UBHI Enterprises (Regd.) & Anr. AIR 1985

Del. 210, Sony Kabushiki Kaisha (supra) and Montari Overseas Ltd vs Montari

Industries Ltd. 1996 PTC (16) 142. The learned counsel submitted that since the

defendant was not a natural person, and the use of the mark ‗KSB' by the defendant was

not bonafide; the defence of Section 35 of the Trade Mark Act was not available to the

defendant.

5. In rebuttal the learned counsel for the defendant Mr Chawla stressed the fact that

the letters ‗KSB' were taken from the erstwhile family partnership firm Messrs Kuldip

Singh & Bros. which was established in 1960. The said firm, it is contended, was

constituted by the predecessor of the promoters of the defendant. Since the firm took the

name of the father of the promoters of the defendant on incorporation of the defendant by

the sons of the partner, the defendant included the initials ‗KSB' in its name. There was

thus, according to the learned counsel, complete honesty of purpose in including the

letters ‗KSB' as part of the defendant's name. It was the contention of the learned

counsel for the defendant that Section 35 of the Trade Marks Act entitles a person to

carry on business in the name of his family, and/or its predecessors. The definition of the

word ―name‖ which finds a mention in Section 2(1)(o) of the Trade Marks Act includes

―any abbreviation of a name‖, therefore, the submission of the plaintiffs that ‗KSB' was

not the family name of the promoters of the defendant ought to be rejected. Mr Chawla

also contended that the use of the letters ‗KSB' is confined to the corporate name, and is

not part of its trade name. The learned counsel asserted that the defendant was neither

manufacturing nor trading or selling any goods similar or identical to that of the

plaintiffs. According to the learned counsel even though the partnership firm Messrs

Kuldip Singh & Bros. trades in water meters, pipes and tubes of some companies, it does

not deal in products manufactured by the plaintiffs. It was, therefore argued, given the

fact that defendant does not trade in the goods in which the plaintiffs' trade while the

partnership firm Messrs Kuldip Singh & Bros. trades inter alia in pipes manufactured

under brands other than that of the plaintiffs'; no case was made out against the

defendant. This was especially so, according to the learned counsel, as the partnership

firm Messrs Kuldip Singh & Bros. was not a party to the present proceedings. The

learned counsel argued that even if it is accepted that the plaintiffs mark has acquired

distinctiveness and reputation, it cannot be the exclusive owner of the mark unless it is

able to show the use of the impugned mark as a trade mark by the defendant which

allegedly caused demonstrable injury to the plaintiffs. In support of his submission the

learned counsel relied upon the following judgments:

Shell Brands Internation & Anr. vs Pradeep Jain Proprietor Shell Exports

CS(OS) No. 639/2008 dated 01.02.2010; Sony Kabushiki Kaisha vs

Shamrao Maskar AIR 1985 Bom. 327 and Intel Corporation vs Anil Hada

& Anr. 2006 VIII AD (Del.) 841

5.1 Lastly, it was contended by the learned counsel for the defendant that where

combination of names is arrived at in the normal and natural course, the court should

consider that, as a good justification for adoption of the mark. The learned counsel next

contended that since the promoters of the defendant took the first letters of the name of

the partnership firm Messrs Kuldip Singh & Bros. as part of its corporate name the

combination was natural and hence, ought to be considered as a justifiable reason for

adoption of the mark ‗KSB' as part of defendant's corporate name.

REASONS

6. Let me first advert to facts in respect of which the plaintiffs' have been able to

establish their case. It has been adverted to, in the affidavit of PW1 that ‗KSB' is derived

from the name of its founders, i.e., Mr Johannes Klien, Friedrich Schanzlin and Jakob

Becker. The said gentlemen were instrumental in forming a company by the name of

Frankenthaler Maschinen & Armatur-Fabrik Klien, Schanzlin & Becker. This PW1

states happened 137 years ago, and that from the family name of each of the promoters,

i.e., Klien, Schanzlin and Jakob, the letters KSB were lifted, and made part of the name

of plaintiff no. 1, and various subsidiaries and associates, spawned by plaintiff no. 1.

(See Ex. PW1/6). In this regard it would be pertinent to advert to both the testimony of

PW1 as well as Exhibit PW1/6. It has also come through in the deposition of PW1 that

plaintiff no. 2 is a subsidiary of plaintiff no. 1 in which plaintiff no. 1 holds a

shareholding of 40.54% through another subsidiary by the name of Canadian K. Pumps

Ltd. It has also been adverted by PW1 that plaintiff no. 2 was incorporated on

11.04.1960. For this purpose reliance was placed on Memorandum and Articles of

Association of plaintiff no. 2, i.e., Ex. PW1/11 as well as a certificate of incorporation

being Ex. PW1/12. The fact that the solicitors of plaintiff no. 2 at the time of its

registration were accorded a no objection in their use of the letters ‗KSB' which were

derived from the name of Klien, Schanzlin and Jakob, is evident from Exhibit PW1/73.

What is also come through in the evidence of PW1 is the fact that plaintiff is in the

business of manufacturing pumps, valves, spares parts; as also the fact that plaintiff no. 2

is an associate, and a licensed user of plaintiff no. 1's trade mark(s) in terms of its

Agreement of Technical Co-operation dated 18.06.1963 (Ex.PW1/13). In the cross-

examination PW1 has not been confronted with respect to these aspects.

7. Furthermore, it has also come through in the evidence of PW1 that the plaintiff

no. 1 obtained registrations of the trade mark ‗KSB', ‗KSB Logo' and ‗KSB & Logo' in

various countries including India in several classes. PW1 once again has not been

confronted on this aspect of the matter with regard to the registration of the trade mark.

8. PW2, who is the other witness examined by the plaintiff, has adverted to the fact

that he was working for Protos between 13.04.1969 to 31.12.1979, at which point in time,

Protos has in its capacity as the sole distributor sold goods/products bearing the trade

mark ‗KSB'; manufactured and sold by the plaintiffs. He also adverted to the fact that

plaintiffs have sold a variety of pumps, process pumps, boiler feed pumps etc. through

Protos under the trade mark ‗KSB'. PW2 has deposed that plaintiff no. 2 is a leading

manufacturer and dealer in variety of pumps, spare parts, valves etc., in India since 1987,

and that plaintiff no. 2 enjoys a considerable goodwill and reputation in respect of its

products with the members' of the trade, and the public in general in India. PW2 has also

adverted to the fact that he joined plaintiff no. 2 as a Senior Sales Manager w.e.f.

01.01.1980 and was its employee till 31.03.2000; which is when he retired as the Branch

Manager of the Mumbai Branch of plaintiff no. 2. He also alluded to the fact that

plaintiffs' mark ‗KSB' is well known both in India and abroad. In the cross-examination,

PW2 asserted the fact that he was working with Protos, as also the fact that, he worked in

the sales department of the plaintiffs. It also come through in the evidence that till

March, 2000 plaintiff no. 2 was not manufacturing G.I./C.I. pipes. PW2 also adverted to

the fact that all government and private refineries in India such as HPCL, BPCL and IOC

were the customers of plaintiffs. PW2 also alluded to the fact that plaintiff no. 1 had a

shareholding in plaintiff no. 2, as also the fact that there was a technical collaboration

between them. Looking at the evidence produced by the plaintiffs in the form of oral

testimonies of PW1 and PW2, and the documentary evidence in the form of registration,

sales, invoices, advertisements, etc. the following aspects are clearly established:

(i) the plaintiffs have in their favour a registration for the trade mark ‗KSB' in

various classes;

(ii) the registration of the trade mark ‗KSB' in class 6 has been obtained only on

26.09.1996. This fact is not disputed by the plaintiffs;

(iii) plaintiff no. 1's goods have been imported in India at least since 1969, if not

before; and

(iv) lastly, plaintiff no. 2 has been in business in India since 1960.

9. The defendant in support of its case has relied upon the testimony of only one

witness i.e., DW1. DW1 adverted to the fact that the partnership firm Messrs Kuldip

Singh & Bros. was formed in 1960, and registered with the Registrar of Partnership in

1963. He further adverted to the fact that since inception Messrs Kuldip Singh & Bros.

was engaged in the business of wholesale trade in water meters (hot, cold and oil meters),

pipes of PVC and fittings etc. He alluded to the fact that Messers Kuldip Singh & Bros.

commenced the business by acquiring dealership of the following companies: Jain Tubes

Co. Ltd., Jindal Pipes Ltd for pipes and tubes and Dasmesh Water Meters. While the

business was thriving, they added to their line of business the following brands:

‗S' brand pipe and fittings; ‗Kranti' brand water meters; Apollo Brand

Pipes; and ‗BPS' and ‗Bajrang' brand PVC pipes.

10. DW1 adverted to the fact that Messrs Kuldip Singh & Bros. was recognized as

Export House under the Small Scale Industry in North India. DW1 has further testified

to the effect that due to a strong presence in their line of business for several decades it

was decided by the next generation of the partners in Messrs Kuldip Singh & Bros. that

they should have a corporate identity; and to achieve this end a decision was taken to

form a company, and transfer the business of partnership into the company. DW1 thus

deposed that, in 1995 the defendant was incorporated and given the name KSB Global

Limited by adopting the first letters from the name of the partnership firm Messrs Kuldip

Singh & Bros. DW1 further stated that the defendant has never manufactured or traded

in M.S. and G.I. and PVC Pipes. He further testified that even with regard to the real

estate business for which the defendant was essentially formed, its scale of business is

insignificant as compared to that of the partnership firm.

10.1. In the cross-examination DW1 accepted that in the pleadings he has adverted to

the fact that defendant is also in the business of pipe and fittings. This aspect was

however sought to be explained by saying that the averments made in the pleadings were

really in relation to the family business, which included the business of the partnership

firm Messrs Kuldip Singh & Bros. However, it was not denied by DW1 that in the

Memorandum of Association of the defendant one of the areas of business detailed out

therein, relates to pipes and fittings. DW1, however, denied that the defendant was in the

business of pipes and fittings. DW1 accepted the fact that pumps, pipes, fittings, valves

etc. are associated and form part of one genus.

11. On going through the testimony of DW1 what comes through is that the witness is

unreliable, and has made a dishonest attempt to explain what has been stated in the

pleadings. In the pleadings it has been accepted that the defendant is both in the business

of real estate, and pipes and fittings. In the examination-in-chief as also in the cross-

examination a vague attempt has been made to explain and distance the defendant from

the business of pipes and fittings. The contradiction is apparent, in as much as, in the

examination-in-chief DW1 has said that it was decided to incorporate defendant

specifically so that business could have a corporate identity, and that consequently the

partnership business was transferred to the defendant. The DW1 has also not been able to

establish the scale of real estate business which, it is said to have undertaken. On his own

showing DW1 in his examination-in-chief has clearly stated that the real estate business

is insignificant as compared to the business of the partnership firm.

12. Having regard to the evidence on record, it is clear that the defendant is

attempting to distance itself from the business of pipes and fittings so that it is not

accused of having either used the trade mark ‗KSB' or of being in the same line of

business. The evidence of the defendant that it is only in the real estate business is

neither credible nor believable.

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. The argument of the learned

counsel for the defendant that it is the partnership firm which is in the business of selling

pipes and fittings, and, therefore, no case can be made out against the defendant, is a

contention which will have to be rejected, in the facts and circumstances of this case; for

the reason that: the defendant's own pleadings and the evidence placed on record clearly

demonstrate that the line of demarcation of business between the two is completely

blurred. The submission of the learned counsel for the defendant that Section 35 of the

Trade Marks Act permits the defendant to use its family name, which includes any

abbreviation of a name, as part of its business, will have to be rejected in this particular

case, as the evidence on record demonstrates that the conditions stipulated therein that the

use of the name has to be bonafide is not established in the instant case. I am, however,

not in agreement with the submission of the learned counsel for the plaintiff that the

defence under Section 35 of the Trade Mark is restricted only to individuals and that a

juristic entity cannot take resort to the provisions of Section 35 of the Trade Marks Act.

There are no such limitation in Section 35 of the Trade Marks Act. However, for the

purposes of decision in this case, I need not elaborate on this point in view of my

conclusion that the use by the defendant of the initials ‗KSB' as part of its corporate

name is not bonafide. The submission of the learned counsel for the defendant that since

the letters ‗KSB' are being used only as part of the corporate name and not as trade mark,

and hence the suit should fail is also untenable in the facts of this case. From the

evidence on record, as noticed hereinabove, it is apparent that there is complete blurring

of the business of partnership firm and that of the defendant. The evidence, if any, in this

regard is solely in the possession of the defendant. None has been produced to shed any

light on this aspect of the matter. It cannot be said that the defendant is not using the

trade mark ‗KSB' in the course of trade.

14. In these circumstances, my specific conclusions with regard to the issues framed

in the suit are as follows:

Issue no. 1.

The same is found in favour of the plaintiff and against the defendant. The plaintiff is, in

my opinion, a registered proprietor of the trade mark ‗KSB'.

Issue no. 2 and 3

Both these issues are also found in favour of the plaintiff, in as much as the defendant is

guilty of both infringement of the registered trade mark of the plaintiffs' ‗KSB' as well as

commission of tort of passing off.

Issue no. 4

The defendant has submitted in support of their contentions regarding this issue that since

they had formed a limited company as far back as in 1995, the plaintiffs ought to have

had knowledge of their existence. In my view there is nothing placed on record to

disbelieve the contention of the plaintiff that they came to know of defendant's existence

only in September, 2006 on browsing the website of the Ministry of Corporate Affairs.

In any event defendant, on perusal of evidence, is found guilty of both infringement of

trade mark as well the commission of tort of passing off, the plaintiffs therefore, in my

view, cannot be non suited on the ground of delay and latches. The public have a right

to know as to who is the originator of the mark. Therefore, this issue is also found in

favour of the plaintiff and against the defendant.

There were no submissions made before me with regard to issue no. 5. It has not been

demonstrated by defendant as to how and in what manner there is misjoinder by the

parties. Plaintiff no. 1 is the owner of the trade mark ‗KSB' while plaintiff no. 2 is the

registered user of the trade mark ‗KSB'. Therefore, I do not see as to how there is any

case made out by defendant for misjoinder of parties.

15. The position in law as to how a person can or cannot use his name for his own

business which is common to the name of another person's business is best exemplified

by the observations made in Baume & Coy vs Moore (A.H.) Ld. 1958 RPC 226 by Lord

Justice Romer which in turn cited with approval his own observations in Joseph Rodgers

& Sons. Ld. Vs W.N. Rodgers & Coy. (1924) 41 RPC 277:

".....It is the law of this land, he said at P. 291 "that no man is entitled to carry on his business in such a way as to represent that it is the business of another, or is in any way connected with the business of another; that is the first proposition. The second proposition is that no man is entitled so to describe or mark his goods as to represent that the goods are the goods of another. To the first proposition there is, I myself think, an exception: a man, in my opinion, is entitled to carry on his business in his own name so long as he does not do anything more than that to cause confusion with the business of another, and so long as he does it honestly. It is an exception to the rule which has of necessity been established.... To the second rule to which I have referred, I think there is no exception at all; that is that a man is not entitled so to describe his goods as to lead to the belief that they are the goods of somebody else. It is not necessary that there should be an exception to that. It is perfectly legitimate for a man in the cutlery business to carry on business under his own name, whatever that name may be, but I can see no necessity for his marking his cutlery with a name (although to be his own name) which may have the effect of passing off those goods as the goods of the plaintiff."

15.1 In the instant case as well not only is the defendant attempting to use the initials

‗KSB' but as it appears quite clearly from the evidence on record the defendant is also

attempting to sell the goods under the impugned mark obliquely by using the device of

Messrs Kuldip Singh & Bros. The contention of the defendant that his mark ‗KSB'

carries the suffix Global Ltd., in my view, does not further the cause of the defendant.

This is so, as not only the rival marks are deceptively similar but both the plaintiff and the

defendant are in the similar line of business and also cater to the same set of consumes in

the market. Here again the explanation that the defendant is carrying on Real Estate

business is not believable. No worthwhile evidence is led in that regard. In fact it is his

own case that the Real Estate business is minuscule. In my opinion, from the evidence on

record, the ploy of Real Estate business is set up to give a false impression that the

defendant is not carrying business in metal pipes etc. therefore, the suffix of Global Ltd.

would not help in removing the confusion caused in the mind of a lay consumer. It is

quite apparent that the lay consumer would by association relate the origin of the

defendant's goods to that of the plaintiff. See observations in Bihar Tubes Ltd vs Garg

ispat Ltd. 166 (2010) DLT 109.

16. Let me also deal with certain other contentions raised by the defendant: It is the

stand of the defendant that the plaintiffs' suit is not maintainable in view of the fact that

proceedings before the Regional Director, Ministry of Corporate Affairs, under the

Companies Act, 1956 (in short ‗Companies Act') are pending. It was submitted that

these proceedings were initiated at the behest of the plaintiffs in regard to their objection

to the defendant using the letters ‗KSB' as part of its corporate name. It was further

submitted that both the fact that the proceedings are pending, and the fact that the

pendency of the suit was not disclosed to this court disentitles the plaintiffs to any relief

in the suit. In other words, it was contended that the suit is not maintainable. In my

view, this contention is without merit. The plaintiffs are seeking to enforce its statutory

rights under the Trade Marks Act, and also their common law rights dehors other

statutory rights, that may be available, including those under Section 22 of the

Companies Act. The relief that the Civil Court may grant under the aforementioned

statues to the plaintiffs are not the relief that the concerned authority, under Section 22 of

the Companies Act, will be in a position to grant. There is neither a pleading nor a

submission that the pendency of the proceedings under Section 22 of the Companies Act

would oust the jurisdiction of this Court. In any event, as observed above, there is no

such express or implied embargo under Section 22 of the Companies Act. Furthermore,

the fact that this aspect of the matter was not referred to in the pleadings by the plaintiff,

in my view, will not effect the maintainability of the suit. The court at the final stage of

adjudication is concerned with the fact that all material particulars are disclosed in the

pleadings which has relation to the relief sought. To my mind pendency of the

proceedings under Section 22 of the Companies Act were not material to the claim made

in the present suit. [See S.J.S. Business Enterprises (P) Ltd. Vs State of Bihar & ors.

(2004) 7 SCC 166 in paragraph 13 at page 173].

17. It was also contended by the learned counsel for the defendant that there was

delay in the plaintiff in approaching the court. In this connection it was averred that the

defendant in its reply to the notice dated 27.10.2006 issued by the plaintiff, had asked for

a copy of the registration certificate of the mark ‗KSB', which was not supplied by the

plaintiff. In my view, as is well settled, delay by itself is not the ground to disentitle the

plaintiff to relief, if it is otherwise entitled to it. See observations in Midas Hygiene

Industries (P) Ltd. & Anr. vs Sudhir Bhatia & Ors. (2004) 3 SCC 90 and Bihar Tubes

(supra). Moreover, since the evidence is already been led by parties it has been proved

by the plaintiffs that they have a registration of the mark ‗KSB'. This objection has lost

its efficacy. Therefore, it is, accordingly, rejected.

18. The defendant has laid a great stress on the fact that they are a prior user of the

mark ‗KSB' especially in relation to the goods falling in class 6. In this regard reference

has been made to the registration admittedly obtained by the plaintiff in 1996. It was

contended, in that behalf that, the defendant was incorporated in 1994 and hence, is a

prior user of mark ‗KSB'. There is also, in this connection, a reference made to the fact

that the partnership firm Messrs Kuldip Singh & Bros. has been in business since 1960,

and that the mark ‗KSB' is an adoption of the first three letters of the name borne by the

said partnership firm, that is, Messrs Kuldip Singh & Bros.

18.1 In my view, this objection is also without merit. The reason is that; it has come in

the evidence that plaintiff no. 1 has been using the name which bear the letters ‗KSB' for

the last 137 years. Plaintiff No. 2 was incorporated in India on 11.04.1960. Plaintiff no.

1, even before the incorporation of the plaintiff no. 2, had been importing goods into

India through Protos since 1945. Protos has acted as the agent of plaintiff no. 2 between

1960-79. Therefore, in so far as this contention of the defendant is concerned, the

plaintiffs, on a perusal of the evidence, appear to be undoubtedly prior users of the mark

‗KSB'. As noticed hereinabove, the defendant is taking contrary stand as regards the

class of goods for which it has used the mark. While on the one hand it says it has

nothing to do with trade in metal pipes etc., which is within the domain of the partnership

firm Messrs Kuldip Singh & Bros., on the other hand, in so far as pipes and metals are

concerned it seeks to rely upon the fact that Messrs Kuldip Singh & Bros. have been in

business since 1960. As indicated above, there is a complete dishonesty in the stand of

the defendant. Any which ways, in view of the fact that the marks are identical the fact

that the goods imported into India by the plaintiff with the mark ‗KSB' were pumps and

not pipes would not in any manner effect the claim of the plaintiffs which has attained a

wide reputation. Therefore, this objection is also, as indicated above, without merit and

hence rejected.

19. As regards judgments cited by the defendant, these are distinguishable on facts.

In none of these cases did a similar situation arise where a registered trade mark which

had acquired a reputation and goodwill in India had been used dishonestly. In the instant

case the defendant has failed to establish his bonafide in using the plaintiffs mark ‗KSB'

as part of its proprietary.

20. Resultantly, the suit has to be decreed in terms of prayer clause 32(a), (b) and (d).

In terms of prayer clause 32(c) the defendant shall furnish details of its accounts from the

date of its incorporation till today. In order to determine profits, if any, earned by the

defendant by use of the impugned trade mark, the Registrar General is appointed as the

court commissioner who will carry out an inquiry, and place a report in that regard before

the Court within four months from today. A decree sheet be drawn up accordingly. The

suit be placed before the Court on 11.11.2010.

RAJIV SHAKDHER, J JUNE 04, 2010 kk