Delhi High Court
M/S. Ecolab Inc vs M/S. Eaco Labs Ltd. on 28 November, 2011
Author: Manmohan Singh
* THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 28.11.2011
+ C.S. (OS). No.2248/2007
M/S ECOLAB INC .......Plaintiff
Through: Mr S.K. Bansal, Adv. with Mr Ajay
Amitabh Suman and Mr Harsh
Vardhan, Advs.
Versus
M/S EACO LABS LTD .....Defendant
Through: Defendant is ex-parte.
CORAM:-
HON'BLE MR JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J.
1. This is a suit under Section 134 and 135 of the Trade
Marks Act, 1999 for permanent injunction to restrain infringement,
passing off, damages and rendition of account.
CASE OF THE PLAINTIFF AS PER PLAINT
2. The plaintiff is a corporation under the Laws of United
States of America. It was incorporated in the year 1924 with the name
and style of Economic Laboratory and in the year 1986 it was
changed to M/s Ecolab Inc. Mr. Edward R. Courtney, Trademark
Attorney is the authorized signatory.
3. The plaintiff is into a business of manufacture and trade of
premium cleaning, pest elimination and repair products having wide
application in the hospitality, food service, healthcare and industrial
markets and other areas as well.
4. Apart from the above services the plaintiff manufactures
and markets numerous products which include detergents, instruments
care, skin care, surgical scrub, surface disinfectants and other things.
5. Since 1924, the plaintiff has been engaged in the said
business. In year 1986 the plaintiff bonafidely adopted and changed
its name or word mark "Ecolab" from "Economic Laboratories".
Since then the plaintiff has been using the said trade name and house
mark under the said style as an essential part of its corporate name
and a house mark in relation to its goods and business.
6. With the advent of e-commerce, the said Ecolab trade
name/trade mark has been used by the plaintiff in the domain of
www.ecolabs.com and has been since associated with good business
and goodwill.
7. The details of the said trade mark Ecolab is duly registered
in India in favour of the plaintiff. The details of the trademarks of the
plaintiff are herein mentioned below:-
1 Trade name Ecolab
Application No. 461913
Date 17th October 1986
Goods Chemical products used in industry,
detergents for use in industrial and
manufacturing process, cleaning
composition for industrial purposes,
chemical products used in laundries
and ware washing process, water
treatment chemicals, chemicals for
treating fabrics, chemical degreasing
agents, antistatic and anti fog
preparation; chemical oil and fuel
additives; surfactants; de-scalers;
catalysts; industrial solvents;
corrosives; metal conditions;
chemical machine fluids;
phocphatizres.
2 Trade name Ecolab
Application No 461914
Date 17th October 1986
Goods Bleaching preparation and other
substances for laundry use;
cleaning; polishing; scouring and
abrasive preparations; stain
removing preparation, paint
removing preparation; soaps,
detergents; fabric softeners; rising
agents; laundry starch; cleaning
solvents.
3 Trade name Ecolab
Application No 461915
Date 17th October 1986
Goods Preparation for killing weeds and
destroying vermins, herbicides,
fungicides, parasiticides,
bactericides, germicides,
insecticides, slimicides,, veterinary
and sanitary substance, disinfectants,
sanitizers, deodorants, air fresheners,
insect repellants.
4 Trade name Ecolab
Application No 461916
Date 17th October 1986
Goods Laundry and ware washing
machines, machinery for cleaning,
polishing and scrubbing parts and
accessories therefore are being
goods includes in class 7.
Journal 1001
5 Trade name Ecolab
Application No 461917
Date 17th October 1986
Goods Mechanical electric and electronic
apparatus to measure and/or
dispense liquid, powdered of solid
chemicals, detergents, cleaning and
rinsing agents, parts and accessories.
8. Plaintiff states that the above registrations are legal,
regular and in full force. By this registration the plaintiff has
exclusive rights over the said registered trade mark.
9. Plaintiff states that trade mark ECOLABS (word per se
stylized, logo or labels) are duly registered in favour of the plaintiff
for goods in class 1,3,5,6,7,9,11,35,40,42,47 in over 100 countries in
North & South America, Europe, Africa, Asia, Asia Pacific, Australia
and many other countries.
10. The plaintiff state that the art work involved in the
plaintiff's Ecolab stylized trade mark as also its various logo and label
is the original artistic work within the meaning of the Indian
Copyright Act 1957. Plaintiff is the owner and proprietor of the
copyright therein.
11. The goods of the plaintiff are well known, recognized,
demanded, sold and traded world over with reference to the trade
name/ mark/house mark/ domain name. The said domain name is well
known and recognized by the public at large. The plaintiff's trade
mark/trade name/domain name has a strong presence in India. Apart
from that, trans-border reputation is also relied upon by the plaintiff.
12. The plaintiff has been promoting the business through e-
commerce. The plaintiff initially offered its goods through an Indian
company. The plaintiff has already got the subsidiary of the Indian
company in the trade name of M/s Ecolab Food Safety & Hygiene
Solution Pvt. Ltd.
13. Plaintiff, apart from excellent quality of the said goods and
business, lays tremendous application on research and development
and spends a great emphasis on innovation. By 1960, the plaintiff had
more than 50 patents and 200 plus people are employed in the
research department. In 1962, plaintiff completed state of art Merit J.
Osborn Research & Development Center.
CASE AGAINST DEFENDANT AS PER PLAINTIFF
14. The defendant company is incorporated under Indian
Companies Act 1956 and is engaged in the business of manufacture
and trade of medical and pharmaceuticals preparations and allied
goods (hereinafter referred to as "impugned goods").
15. The defendant adopted the word Ecolabs as an essential
and distinguishing feature of its impugned trade name. The name
adopted by the defendant is phonetically, visually, structurally in its
basic idea and in its essential features.
16. The defendant has not only adopted the trade name/word
mark of the plaintiff but has also infringed the registered trade mark
under Nos. 461913 in Class 1, 461914 in Class 3, 461915 in Class 5,
461916 in Class 7 and 461917 in Class 9. Defendant is not exonerated
from these charges of falsification, unfair and unethical trade
practices.
17. Defendant is fully aware of the plaintiff's rights, goodwill,
reputation, benefits and user etc in the plaintiff inspite of this,
defendant is blatantly using the same mark. Due to the defendant's
unlawful and impugned activities there are losses suffered by the
plaintiff.
THE CASE OF THE DEFENDANT
18. The defendant states that plaintiff has filed the present suit
with dishonest intention and stated false facts.
19. Defendant states that the plaintiff could have easily
obtained proper verification from the ROC to ascertain the name of
M/s Eacolab Ltd. but plaintiff did not do that properly.
20. Defendant states that defendant is prior user of the name
and has adopted prior user. Defendant states that the plaintiff obtained
the name by furnishing false particulars.
21. In the amendment pertaining to change in name of plaintiff
for change of name of plaintiff from M/s Economic Laboratory Inc to
M/s Ecolab Inc was to be effective from 01.12.1986. But, the
applications for registration of trade mark Ecolab filed by plaintiff
bears the following dates.
Registration No. Date of filing Filed by
& Class
461316/1 October 1st ,1986 M/s Ecolab Inc
461913/1 October 17th ,1986 "
461914/3 " "
461915/5 " "
461916/7 " "
461917/9 " "
22. In all the above application/registration filed by M/s Eco
Lab Inc. the date of filing principally is the month of October 1986,
whereas as per the plaintiff, the alleged change of name of plaintiff
from M/s Economic Laboratory to M/s Ecolab came into operation
only in December 1986. In October 1986 there was no company
existing in the name of M/s Ecolab Inc and the aforesaid applications
are filed in the name of a non existing company. Hence, it is clear that
plaintiff deliberately furnished false, wrong details and concocted
facts. Because of these false facts the trademark is liable to be
dismissed and cancelled.
23. The suit is liable to be dismissed on the ground of delay
and latches. The plaintiff has known this fact since 21.10.1986 but till
now they have not come forward. It is only after a lapse of 10 years
that they have filed this suit and all these years they were sitting silent
on the matter.
24. Defendant denies that plaintiff is in numerous
manufacturing products. Defendant also denies that the plaintiff, since
1924 is engaged regularly (put from file) and defendant also denies
that plaintiff has bonafidely and honestly adopted the trade name
Ecolab from Economic Laboratories.
25. The plaintiff in addition to Ecolab trade mark/trade name
has been using numerous other trademarks/trade name, like Endure,
ASEPTI-Solid, Lapid-Zyme, Nature Mild, Bacti-Stat, Medi-Scrub etc.
The plaintiff pirated the name of the defendant.
26. Defendant submits that if the plaintiff has been doing
business bonafiely, openly, honestly, continuously, commercially then
why the plaintiff has not filed any proof along with the plaint to
establish their user.
27. The defendant also states that plaintiff has been carrying
on business in India. The plaintiff cannot show any effective sales in
India. The goods are also not available in the market and hence it is
inconsequential to the claims raised by the plaintiff in their plaint.
28. The defendant denies that plaintiff has been publicizing the
trade name through newspaper, magazines and other electronic form
about their product.
29. After the filing of the written statement, the defendant was
proceeded ex-parte vide order dated 18.08.2009. The defendant also
filed the counter claim which was also dismissed for non-appearance
on the said date. The plaintiff was given time to file the ex-parte
evidence which was filed by way of affidavit of Sh. Edward R.
Courtney, who has almost reiterated the statements made in the plaint.
30. The said trade mark ECOLAB (word per se) is duly
registered in India in favour of the plaintiff under Nos.461913 in
class 01, 461914 in class 03, 461915 in class 05, 461916 in class 07
and 461917 in class 09 in relation to the goods mentioned in para 7 of
the plaint. Legal Proceedings Certificate of the plaintiff's Registered
Trade Mark "ECOLAB" under Nos. 461917 in class 9, 461916 in
class 7, 461913 in class 1 and 461915 in class 5 are placed on record
as Exh. PW1/12, Exh.PW 1/13, Exh. PW 1/14 and Exh. PW 1/15 with
Index dated 02.05.2008.
31. The plaintiff's said Trade Mark ECOLAB (word per se,
stylized, logo or labels bearing the same) are duly registered in
relation to a wide range of goods falling in classes 1, 3, 5, 6, 7, 9, 11,
35, 37, 40, 42 and 47 in over 100 countries of the world and across
all regions and continents including countries in North and South
America, Europe, Africa, Asia, Asia Pacific, the Middle East,
Australia etc. Original list of registered Trade Mark of the plaintiff
company in different countries of the world are placed on record as
Exh. PW 1/7 with list of documents dated 11.10.2007.
32. The plaintiff's products and services reaches customers in
more than 160 countries including India wherein in addition the
plaintiff enjoys its trans border reputation and users thereof as
extending into India. The plaintiff's said goods and business are sold,
traded and marketed by the plaintiff directly or through its wide
network of associates and affiliates and through retail, internet and e-
commerce. Sales figure of the plaintiff is placed on record as Exh.
PW 1/6. Original documents downloaded from the internet,
pertaining to the history of the plaintiff company is placed on record
as Exh. PW 1/8 and showing the plaintiff's presence in India is
placed on record as Exh. PW 1/9. Original brochure of the plaintiff
company regarding plaintiff's product is placed on record as Exh. PW
1/10. The said exhibits are filed with the list of documents dated
11.10.2007.
33. Admittedly, in the present matter the defendant company
was incorporated on 21.10.1986 and the permission was given to
commence the business with effect from 11.12.1986. The defendant
has placed photocopies of some of the documents. However, no
original documents have been filed by the defendant. On the other
hand, the plaintiff's application for registration of the trademark
ECOLAB was filed on 17.10.1986. It is also a matter of fact that the
plaintiff's application for registration of the trade mark ECOLAB was
filed in United States Patent and Trademark Office on 12.05.1986.
All the above said trademarks are registered in India. Therefore, it
appears from the record that it is the plaintiff who has adopted and
used the trademark ECOLAB prior to the date of adoption and user of
the defendant. Therefore, the defendant is incorrect in saying that it is
the earlier user of the trademark and is the proprietor of the same.
The plea of the defendant, therefore, cannot be accepted in view of the
documents placed on record by the plaintiff.
34. Since the plaintiff's evidence has gone unrebutted as the
defendant has also failed to cross-examine the witness of the plaintiff,
the evidence filed by the plaintiff is liable to be taken as correct. The
defendant, on the other hand, has failed to produce any evidence in
support of its claim.
35. Admittedly, the plaintiff being the registered proprietor of
the trade mark, in case the defendant will use the mark ECOLAB as a
trademark and/or trade name, it would be infringing the trademark of
the plaintiff. The following judgments are relied upon by the
plaintiff:
(i) Ellora Industries, Delhi Vs. Banarsi Dass and Ors.
Delhi, 1981 PTC 46.
(ii) Montari Overseas Ltd. Vs. Montari Industries Ltd.,
1996 PTC 16
(iii) Midas Hygiene Industries P. Ltd. & Anr. Vs.
Sudhir Bhatia & Ors., 2004 (28) PTC 121 (SC)
(iv) Milment Oftho Industries & Ors. Vs. Allergan
Inc., 2004 (28) PTC 585 (SC)
(v) Century Traders Vs. Roshan Lal Duggar & Co.
and Ors., AIR 1978 Delhi 250.
36. After having gone through the above said decisions
referred to by the learned counsel for the plaintiff, I am of the
considered view that the plaintiff is entitled to a decree for permanent
injunction in favour of the plaintiff and against the defendant in terms
of para 36 (a) and (b) of the plaint. As regard the other reliefs are
concerned, the plaintiff has not been able to prove the same.
Therefore, the same are rejected. However, the plaintiff is entitled to
the costs of the suit. Decree be drawn accordingly.
MANMOHAN SINGH, J.
NOVEMBER 28, 2011
