Delhi High Court
Helamin Technology Holding Sa & ... vs Haribansh Rai & Ors on 13 November, 2017
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on: 01st November, 2017
Pronounced on: 13th November, 2017
+ CS(COMM) 1492/2016 & IA No.26197/2015
HELAMIN TECHNOLOGY HOLDING SA & ANR
..... Plaintiffs
Through : Mr.Pravin Anand, Ms.Abhilasha
Nautiyal and Ms.Pankhuri Malik,
Advocates.
versus
HARIBANSH RAI & ORS
..... Defendants
Through : None being ex parte.
CORAM:
HON'BLE MR. JUSTICE YOGESH KHANNA
YOGESH KHANNA, J.
1. Brief facts of the case as per the plaint are:-
a) that the plaintiff No.1 is a limited Company Incorporated
under the laws of Switzerland and is the world leader in
development, production and marketing of specific scale corrosion
inhibitors used in water-steam and heating circuits/steam
generators, warm and hot water networks, boilers, turbines, cooling
systems etc. The plaintiff No. 1 began its commercial operations in
1986 when the trademark and the name 'HELAMIN' was first used
in the course of trade;
b) plaintiff No.2 is the wholly-owned subsidiary and the
manufacturing and world export branch of plaintiff No.l and uses
the trademark and trade name HELAMIN under the license from
plaintiff No.l. Plaintiff No.2 was founded on 11th May, 1989 and is
a limited Company incorporated under the laws of France;
c) plaintiff No. 1 is the pioneer and inventor of a revolutionary
polyamines filming technology to prevent scale and corrosion in
watersteam cycle systems (turbines included) as well as in cooling
systems. The plaintiffs' products serve to form a continuous and
hydrophobic protective film on metal surfaces, thus acting as a
barrier between water and metal to prevent corrosion;
d) the plaintiff No.l has a strong international commercial
presence in over 40 countries across the world including India and
has a leading share in its specific market segment within the global
water treatment chemicals market. The plaintiff No.l's products are
sold through an integrated distribution network supported by the
plaintiff's international distributors in several countries;
e) the plaintiffs have been using the trademarks HELAMIN
906 H and HELAMIN BRW 150 H since the year 1993 and the
trademark HELAMIN 90 H-TURB since the year 2002. The
plaintiff No.l's trademark HELAMIN is coined from 'Helvetia' (the
Latin name for Switzerland) and 'Polyamin' which denotes a
chemical compound comprising of multiple amino groups;
f) the plaintiff No.l had applied for registration of the
trademark HELAMIN in India under application No.1717404 in
relation to chemicals used in industry and chemical products for
the protection of metallic surfaces" in classes 1 and 2 respectively,
as of 1st August, 2008;
g) as a result of long and continuous use since the year 1986,
coupled with extensive sales spanning over wide geographical
area, the trademark/name HELAMIN has acquired tremendous
reputation and goodwill amongst the customers and the members
of the trade all over the world and has become distinctive of the
plaintiffs. The well-known character of the plaintiffs'
trademark/name HELAMIN is reflected from the plaintiffs'
worldwide consolidated sales turnover from 2000 to 2011 which
averaged approximately US $10,000,000 per year. The worldwide
consolidated advertisement expenses for the plaintiff's HELAMIN
products from 2000-2011 aggregates to approximately
US$300,000;
h) in 2001, defendant No. 3 began working with Helamin
Technology Holding Group (HTHG) as a technical consultant for
their UAE market. During his course of employment with the
plaintiffs, he had access to confidential information as well as end
user customer know-how and received technical training pertaining
to the working and applications of HELAMIN water treatment
chemicals;
i) on 28th June, 2001, defendant No. 6 Helamin Impex Pvt.
Ltd. was incorporated at the initiative of defendant No. 3 as the
CEO. Thereafter, an informal agreement was arrived at between
Filtro S.A. (international distributor of plaintiff No. 1 at the time)
and defendant No.6 for supply of samples of original HELAMIN
products for the purpose of trial tests only;
j) defendant No. 6 reported additional trials and surreptitiously
continued to obtain HELAMIN samples from Filtro S.A. to
conduct further trial tests. Defendant No.7, who is the director of
defendant No.8 i.e H20 Facilities SA left Filtro SA in December,
2006 and had misappropriated and forged letter heads and stamps
of Filtro SA;
k) in early 2007, Filtro SA was voluntarily liquidated,
consequent upon which plaintiff No.2 succeeded Filtro SA and
took over as the exclusive International Distributor of the
HEL_AMIN products. In the absence of a contract or signed
agreement between Filtro SA and defendant No.6 and in view of
the consistently poor results achieved by defendant No.6 inspite of
several trial tests conducted by it with the sample HELAMIN
products, plaintiff No.2 ceased the supply of the HELAMIN water
treatment chemicals to defendant No.6. While defendant No.6
stopped requesting for sample HELAMIN products for trial tests
from plaintiff No.2, defendant No.6 continued to unauthorisedly
import and supply water treatment chemicals under plaintiff No.l's
trademark HELAMIN and also continued to transact business
under the corporate name/trade name predominantly comprising of
HELAMIN;
l) thereafter, inquiries were conducted in the market by the
plaintiffs which revealed that defendant No.6 was selling water
treatment chemicals based on the 'Helamin' technology to fertilizer
companies in India and also created false impression that
defendant No.6's products originated from or were connected to
the plaintiffs. On further inquiries by the plaintiffs, it was revealed
that the products being sold by defendant No.6 were
procured/imported from defendant No.9, which is subsidiary of, or
is connected and/or related to defendant No.8 and is being actively
run and managed by defendant No.7;
m) defendant No.7 was unlawfully claiming to have obtained
the approval to grant manufacturing/blending rights to defendant
No.6 during his tenure at Filtro SA. It is stated that there was never
such an approval granted to defendant No.6 by Filtro SA,
especially since Filtro SA was never authorized to grant such
rights being merely an international distributor of HELAMIN
products and the only entity that was authorized to grant such
rights was plaintiff No.l.;
n) the defendants are extensively using plaintiff No.l's
trademark and name HELAMIN in relation to its products and
services, thereby, misleading the public into believing that the
defendants' products originate from or are connected to the
plaintiffs. It is also alleged that the defendants do not maintain
their own website, there are web pages hosted by other entities
which pertain to the defendants and their activities, wherein the
defendants have hyperlinked the plaintiff's website
www.helamin.com giving the impression that the defendants are
connected to or affiliated with the plaintiffs;
o) plaintiff No.1 (Helamin Technology Holding SA) is the
pioneer and inventor of a revolutionary polyamines filming
technology to prevent scale and corrosion in water-steam cycle
systems (turbines included) as well as in cooling systems (open or
closed), which was launched under the trade mark HELAMIN and
is patented;
p) the Plaintiffs have been using the trademark HELAMIN
since the year 1986, the trademark HELAMIN 906 Hand
HELAMIN BRW 150 H since the year 1993, and the trademark
HELAMIN 90 H-TURB since the year 2002;
q) the Plaintiff (which term includes its predecessors in title
and interest) and Defendant No. 6 entered into an informal
arrangement/ agreement in the year 2001 under which defendant
No. 6 acted as the plaintiffs' supplier of HELAMIN goods in India
from the year 2001 - 2006;
r) it is also an admitted position (as is evident from the stand
taken by Defendants No. 1 to 6 in their written statement) that the
informal arrangement/ agreement between the parties no longer
exists;
s) however, despite termination of said arrangement, it was
verily believed that Defendants No.1 to 6 were procuring/
purchasing/ obtaining/ importing counterfeit HELAMIN water
treatment chemicals from Defendants NO.7 to 9. Defendant No. 9
is a subsidiary of Defendant No.8, H20 Facilities. Defendant No.7,
Mr. Pierre Bezzoli is an ex-employee of Filtro SA (Plaintiffs'
erstwhile distributor) and the founder director of Defendant No.8;
t) plaintiff No.1 holds the title over the trademark HELAMIN
in India and in several countries across the world and has
accordingly obtained/ applied for protection for the trademark
HELAMIN across the world. The chain of title leading to the
Plaintiff acquiring rights in the trademark;
u) HELAMIN is given below;
Faborga SA
Helamin Holdings SA
Helamin Technology
Holdings SA (Plaintiff No.1)
(Plaintiff No.1)
2. The Plaintiffs placed reliance on the trademark assignment
agreement between trademark Faborga SA and Helamin Holdings
SA per the Convenience Compilation dated November 22, 2014).
The Plaintiffs has also placed reliance on the application (bearing
No. 1717404) for the Trademark HELAMIN. The said application
was originally filed in the name of Helamin Holdings SA and
subsequently a request was filed for recordal of change of name of
Helamin Holdings SA to Plaintiff No.1 per the Convenience
Compilation dated November 22, 2014). Similarly, plaintiff No. 1
has filed another trademark application bearing no. 2493382 for
the Trademark HELAMIN. Further, records of the plaintiff's
trademark registrations in countries such as Switzerland, Hungary,
Greece and Denmark have also been filed by the plaintiffs in the
present proceedings. These documents unequivocally establish the
plaintiff has title in the trademark HELAMIN.
3. Thus the Plaintiffs' trademark HELAMIN is a coined mark
being formed from two words HELVETIA' (the latin name for
Switzerland) and 'POLYAMIN' and thus enjoys a very high degree
of protection. Plaintiffs, through their predecessors in interest,
adopted the mark in the year 1986 and have been using the mark
worldwide since then. In order to establish its use of the trademark
HELAMIN before the year 2001, the Plaintiff has filed number of
brochures and promotional material evidencing using of the
trademark HELAMIN products before the year 2001 (Pages 40-59
of the Convenience Compilation).
4. The arrangement/ agreement between the Plaintiffs and
Defendant No.6 was terminated in the year 2006 as has been
admitted by Defendants No. 1 to 6, they have no right to use the
trademark HELAMIN after the termination of the relationship and
once the supply of the HELAMIN seed material had ceased.
5. However despite termination of said arrangement, Defendants
No. 1 to 6 were procuring/ purchasing/ obtaining/ importing
counterfeit HELAMIN water treatment chemicals from Defendants
NO.7 to 9. Defendant No. 9 is a subsidiary of Defendant No.8,
H20 Facilities. Defendant No.7, Mr. Pierre Bezzoli is an ex-
employee of Filtro SA (Plaintiffs' erstwhile distributor) and the
founder director of Defendant No.8.
6. Defendant No.7, who was an employee of Filtro SA at the time,
founded Defendant No.8 on October 17, 2006. Subsequently, in
December, 2006 Defendant NO.7 left Filtro SA and he allegedly
misappropriated letter heads and stamps of Filtro SA and erased
certain databases before his departure.
7. In early 2007, Filtro SA was voluntarily liquidated, consequent
upon which, Plaintiff No. 2 succeeded Filtro SA and took over as
the exclusive International Distributor of the HELAMIN products.
8. Inquiries by the Plaintiffs revealed that the products being sold
by Defendant No. 6 were procured/ imported from Defendant
No.9, which is a subsidiary of, or is connected and/or related to
Defendant No.8, and is being actively run and managed by
Defendant No.7.
9. Defendant No. 7 was unlawfully claiming to have obtained the
approval to grant manufacturing/blending rights to Defendant No.6
during his tenure at Filtro SA. There was never such an approval
granted to Defendant No.6 by Filtro SA, especially since Filtro SA
was never authorized to grant such rights being merely an
international distributor of HELAMIN products and the only entity
that was authorized to grant such rights was Plaintiff No.1.
10. Defendant No. 7 misappropriated letterheads from Filtro SA
before leaving the company, following which, he forged a letter
granting blending rights in favour of Defendant NO.6 and
backdated it to give an impression that it originated from Filtro
SA, presumably as a defence to the spurious nature of the
counterfeit HELAMIN products sold by Defendant No.6.
11. In a similar instance, Defendant No.7 unlawfully issued a fake
authority letter in favour of a company based in Iran, a copy of
which is filed in the present proceedings, clearly indicating that the
same was issued on September 10, 2007 i.e. 9 months after
Defendant NO.7 had left Filtro SA.
12. On 14.11.2011, Plaintiff No. 1 received an email from
Nagarjuna Fertilizers and Chemicals Ltd enclosing an email it
received from Defendant No. 7 (Page 115 of the Convenience
Compilation). In the said email Defendant No. 7 admits its
relationship with Defendant No. 9 and had claimed to have been
responsible for R&D and the global implementation of HELAMIN
during his tenure at Filtro SA and further claimed to have
formulated HELAMIN himself. Defendant No. 7 also claimed that
there was a "fake producer" of HELAMIN in France and further
informed Nagarjuna that Defendant No. 6 was an agent /blending
rights holder of Filtro SA before it was liquidated. Significantly,
Defendant No. 7 urged Nagarjuna to purchase their HELAMIN
products from Defendant No. 6 instead of importing it from
France.
13. In Defendant No.6's written statement, the answering Defendant
admitted the relationship between the said Defendant and
Defendants NO.7 an 8, per paragraphs 14 and 15 of the written
statement.
14. Therefore, the Defendants, including Defendants No. 7 to 9,
have taken unfair advantage of the Plaintiffs' reputation and
goodwill in the Helamin trademarks and have passed off their
impugned goods as those of the Plaintiffs, causing damage to the
Plaintiffs.
15. The Plaintiffs have filed the present suit for passing off, seeking
an injunction against the defendants from manufacturing, selling,
offering for sale, distributing importing/exporting, advertising
products/service, bearing plaintiff No.l's trademark HELAMIN or
any other mark deceptively similar thereto. The plaintiff seeks
reliefs as prayed in paras (a), (b) and (c) of para 55 of the plaint.
16. Plaintiffs have reached a settlement with defendants No. 1 to 6
and the suit was decreed qua said defendants on 12.10.2017.
17. An interim injunction was passed by order dated 09.12.2015
allowing, inter alia, plaintiffs' I.A. No. 10720/2012 under Order 39
Rule 1&2 of CPC.
18. Defendant No.7 (Mr. Pierre Bezzoli), defendant No.8 (H20
Facilities SA), and Defendant No. 9 (Fineamin Chemicals) have
been duly served in the present matter. Order dated 7.5.2013
records that defendants No.7 and 8 were duly served and order
dated 24.10.2013 records that defendant No.9 was duly served.
19. By order dated 18.11.2013, defendant No.9's right to file its
written statement was closed. By order dated 22.9.2014,
defendants No.7 and 8's right to file written statements was closed
and they were proceeded ex parte.
20. Now Rule 10 of order 8 of the CPC provides the procedure
where the defendants have failed to present their written statement
called for by the Court or where opportunity to file it also stands
closed. The provision read as under:-
"10. Procedure when party fails to present
written statement called for by Court.--
Where any party from whom a written
statement is required under rule 1 or rule 9
fails to present the same within the time
permitted or fixed by the Court, as the case
may be, the Court shall pronounce judgment
against him, or make such order in relation
to the suit as it thinks fit and on the
pronouncement of such judgment a decree
shall be drawn up."
21. As on 18.11.2013 the defendant No.9's right to file the written
statement was closed and as on 22.09.2014 the right to file the
written statement of defendant Nos.7 & 8 was closed, hence there
is no reason why this Court should not pronounce the judgment
against the defendant Nos.7, 8 and 9.
22. Even otherwise, Coordinate Bench of this Court in Satya
Infrastructure Ltd. and Ors. vs. Satya Infra & Estates Pvt. Ltd.
2013 III AD (Delhi) 176 has held as under:-
"4. I am of the opinion that no purpose will be
served in such cases by directing the plaintiffs to
lead ex parte evidence in the form of affidavit by
way of examination-in chief and which invariably
is a repetition of the contents of the plaint. The
plaint otherwise, as per the amended CPC, besides
being verified, is also supported by affidavits of the
plaintiffs. I fail to fathom any reason for according
any additional sanctity to the affidavit by way of
examination-in-chief than to the affidavit in
support of the plaint or to any exhibit marks being
put on the documents which have been filed by the
plaintiffs and are already on record........."
23. Hence, this Court is of the view that the plaintiff is even
otherwise, entitle to a decree under Order XIII-A of the
Commercial Courts, Commercial Division and Commercial
Appellate Division of the High Courts Act, 2015 as the said
provision empowers this Court to pass a summary judgment,
without recording evidence, if it appears that the defendant has no
real prospect of defending the claim. Thus in view of the above the
averments made in the plaint are admitted and a decree therefore,
is passed in terms of para Nos.(a), (b), and (c) of para 55 of the
plaint.
24. The costs of the suit is also awarded in favour of the plaintiff
and against the defendants. Decree sheet be drawn.
YOGESH KHANNA, J
NOVEMBER 13, 2017
DU
