Delhi High Court
Agilent Technologies Inc & Ors vs Agilent Steel Pvt Ltd on 8 April, 2015
$~A-22
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 571/2013
Date of decision: 08.04.2015
AGILENT TECHNOLOGIES INC & ORS ..... Plaintiffs
Through Mr.Subhash Bhutoria, Adv.
versus
AGILENT STEEL PVT LTD ..... Defendant
Through None.
CORAM:
HON'BLE MR. JUSTICE JAYANT NATH
JAYANT NATH, J. (ORAL)
1. Arguments have been heard in the suit. The Defendant no.1 was served
but none appeared on behalf of the defendant. Thus, Defendant no.1 is
proceeded ex parte vide Order dated 25.11.2013. Also vide Order dated
25.11.2013 proposed Defendants no.2 to 6 were issued notice. Further, as none
appeared on behalf of the proposed defendants even after issuance of notice,
vide Order dated 21.02.2014, the proposed defendants are impleaded. The
Defendants are ex-parte.
2. The present suit is filed by the Plaintiffs for permanent injunction
restraining the Defendants, its directors, affiliates, employees, agents,
distributors, franchises, representatives and assigns from using the impugned
trademark/corporate name "AGILENT STEEL PRIVATE LIMITED",
"AGILENT INFRASTRUCTURE PRIVATE LIMITED" and "AGILENT
BPO PRIVATE LIMITED" as well as their domain name
"www.agilentbpo.com" or any other deceptively similar mark amounting to
infringement of Plaintiffs‟ registered trademark/corporate name "AGILENT".
3. It is the contention of the Plaintiffs that they are one of the world‟s
premier measurement companies which designs and manufactures inter alia
bio-analytical and electronic measurement solutions to the communications,
electronics, life sciences and chemical analysis industries created in the year
1999. It is contended that Plaintiff has leadership in diverse industries with
more than 20,000 employees and presence in more than 100 countries
including India with over 1600 professionals engaged in marketing, sales and
customer support and transaction processing in India alone.
4. It is the further contention of the plaintiff that they are the owner of the
trademark and service mark AGILENT and other trademarks/service marks in
which the trade mark AGILENT is a component thereof. It is contended that
the said mark is a well-known mark of the plaintiffs and is derived from the
plaintiff‟s corporate name, Agilent Technologies Inc. which is coined word
with no independent meaning. Details of registrations of the said mark of the
plaintiff is provided in para 6 of the plaint, the earliest being in 1999. It is
further contended that the said mark of the plaintiff stands registered in 183
countries.
5. It is also contended that over the years the Plaintiffs have derived vast
revenues from the products sold and services provided under the Plaintiffs‟
registered and well-known trade mark AGILENT. The plaintiff‟s global
revenues from the Fiscal Years 1999 to 2011 are provided in para 13 of the
plaint.
6. The plaintiff contends that the mark AGILENT has been extensively
advertised and promoted on the internet through the plaintiff‟s website
www.agilent.com, besides other regional websites for other countries of the
world. The said website contains extensive information about the plaintiff and
the products marketed and sold by them.
7. It is the contention of the Plaintiffs that they came across the misuse of
its corporate name and registered trademark AGILENT by the Defendant in
and around September, 2012 when it became aware of the Defendant No.1
company under the name „AGILENT STEEL PVT. LTD.‟ having its registered
office in Ahmedabad, Gujarat. It is further contended that as per the records of
Ministry of Corporate Affairs the Defendant No.1 Company was registered
since February 07, 2012 and after the investigation into the Defendant No.1‟s
activities it was revealed that the Defendant is using the Plaintiff‟s trademark
AGILENT as its corporate name wherein the Defendant No.1 Company was
involved in manufacturing unbranded steel products. It was also revealed that
Mr. Narayan Rohitbhai Mistry, the Defendant no.4 is one of the Directors of
Defendant no.1 & 2 and is operating the impugned business from the
residential address B312 Aishwarya Apartments, Opposite Star India Bazaar,
Ahmedabad , Gujarat registered on the Ministry of Corporate Affairs, website.
8. It is also the contention of the Plaintiff that during the pendency of the
suit upon further investigation into the records of the Registrar of
Companies on the website of Ministry of Corporate affairs in April, 2013 the
Plaintiff‟s came across another company under the corporate name "AGILENT
INFRASTRUCTURE PRIVATE LIMITED" (Defendant No.2) and
"AGILENT BPO PRIVATE LIMITED" (Defendant No.3) as well as their
domain name "www.agilentbpo.com", Defendant no.2 is also having its
registered office at B3/2 Aishwarya Apartments, Opposite Star India Bazaar,
Jodhpur Cross Roads, Satellite Ahmedabad , Gujarat, i.e. same as Defendant
No.1. It was also ascertained that Defendant no. 4, 5 and 6 are Directors of
Defendant no. 2 and Defendant no.1.
9. The Plaintiff contends that the Defendant‟s adoption and use of the mark
"AGILENT" as a trade name/ corporate name constitutes infringement of its
registered trademark and that the Plaintiff also manufactures steel products
such as "Stainless Steel Metal Bonnet Sealed Tube Valves" and the adoption of
Agilent Steel by the Defendant is bound to make the public believe that there is
some nexus between the impugned trade mark/ corporate mark of the
Defendant and that of the Plaintiff.
10. It is also contended by the Plaintiffs that two cease and desist notices
were served to the Defendant dated September 11, 2012 and November 19,
2012. No response has been made to the Plaintiff.
11. The Plaintiff submits that the Defendants trade name contains the
Plaintiff/s mark "AGILENT" which is a well known mark in India by virtue of
Section (1) (zg) of the Trade Marks Act, 1999.The Plaintiff also states that the
Registrar of Trademarks has included the Plaintiff‟s corporate mark/trade mark
"AGILENT" amongst the list of well known trade marks in India. The
contention of the Plaintiff is that the infringing corporate name/ trademark
being used by the Defendants is visually, phonetically and structurally identical
to the trademark of the Plaintiff and that the adoption of the impugned mark by
the Defendants is bound to create confusion and deception in the minds of the
general public as the public will assume some association and nexus between
the Defendant‟s business and the Plaintiffs‟ business & services.
12. Mr. G. Phani Kumar, Constituted Attorney of the Plaintiffs has led
evidence on behalf of the Plaintiff as PW1. He states that the word „AGILENT‟
is derived from its corporate name Agilent Technologies Inc. and that it is
registered under various classes earliest registration being in the year 1999. The
certified copies of registrations are placed on record as Ex.PW-1/2. It is stated
that the corporate and trade mark AGILENT has been extensively advertised
and promoted on the internet through the website of the plaintiff,
www.agilent.com. A CD containing Plaintiff‟s website is placed on record as
PW1/2. The plaintiff operates in India in electronics, communications, life
sciences & chemical analysis market. It is stated that in or around September,
2012, the plaintiff came across the misuse of its corporate name AGILENT by
the Defendants under the name „Agilent Steel Pvt. Ltd.‟ The printout from the
Ministry of Corporate Affairs reflecting that the Defendant no.1 was registered
with the Registrar of Companies since 07.02.2012 is placed on record as
Ex.PW-1/13. It was found out that Defendant is using the plaintiff‟s trade mark
AGILENT in respect of business of manufacturing unbranded steel products. It
is stated that the plaintiff company sent a cease and desist notice to the
defendants on 11.09.2012 followed by a reminder letter. The cease and desist
notice is placed on record as Ex.PW-1/15.It is stated in the Affidavit that the
Plaintiff filed an Application for impleadment of Defendant no.2-6, being I.A.
No. 18540/2013 which was allowed and they were restrained from using
Plaintiff‟s trademark AGILENT vide order dated 21.02.2014. It is stated that in
April,2013 Plaintiff came across the corporate name „AGILENT
INFRASTRUCTURE PRIVATE LIMITED‟ on the records of the Registrar of
Companies. It is also stated that the addresses of Defendant No.1 and
Defendant no.2 is the same. The print out from Ministry of Corporate Affairs is
placed on record as Ex. PW1/18.It is stated that the Plaintiff also came across a
company under the name "AGILENT BPO PRIVATE LIMITED", Defendant
no.3. The print out from the Ministry of Corporate Affairs reflecting the same
is placed on record as Ex.PW1/22. It is further stated that as per the search
records of WHOIS for the domain name www.agilentbpo.com., Registrant of
the said domain name is Mr. Nayan Mistry, Defendant no.4.Print out stating the
same is exhibited as Ex. PW1/21. Moreover, in the records of Ministry of
Corporate Affairs it is also stated that Defendant no. 4,5 & 6 are Directors of
Defendant no. 1,2 & 3. A print out of the same has also been placed on record
as Ex. PW1/19 and Ex. PW1/23.
13. In view of the above averments made in the plaint and the un-rebutted
evidence filed by the Plaintiff, the Plaintiff has established that is it the
registered proprietor of the said trademark "AGILENT", thus has a statutory
right to the exclusive use of the same. The Plaintiff has also proved that use of
the mark by the Defendants "AGILENT STEEL PRIVATE LIMITED",
"AGILENT INFRASTRUCTURE PRIVATE LIMITED" and "AGILENT
BPO PRIVATE LIMITED" as well as their domain name
"www.agilentbpo.com" constitutes violation of the Plaintiff‟s statutory right as
it is structurally, visually and phonetically identical to the registered trademark
of the Plaintiff. The acts of the Defendants also appear to be lacking bonafide.
The infringing business activities and the deceptively similar trademark
enjoyed by the Defendants will lead to passing off of the services as that of the
Plaintiff.
14. Accordingly, a decree of permanent injunction is passed in favour of the
Plaintiff and against Defendants No.1 to 6 restraining the said Defendants from
manufacturing, selling, advertising, dealing in goods and using the impugned
corporate names "AGILENT STEEL PRIVATE LIMITED", "AGILENT
INFRASTRUCTURE PRIVATE LIMITED" and "AGILENT BPO PRIVATE
LIMITED" as well as the domain name "www.agilentbpo.com" and/or any
other mark similar or deceptively similar to the Plaintiff‟s trade mark
"AGILENT" as a trade mark or a part of a trade mark, trade name or corporate
name, or as a domain name or a part of the domain name, or as a metatag on
the internet , in any manner.
15. The Plaintiff shall also be entitled to costs. The present suit and all
pending applications are disposed off.
JAYANT NATH, J
APRIL 08, 2015
Nat/sh
