Thermax Limited vs Thermax Engineers Pvt Ltd
2019 Latest Caselaw 3308 Del

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*     IN THE HIGH COURT OF DELHI AT NEW DELHI
                                Date of decision: 19th July, 2019
+             CS(COMM) 157/2017 & I.A. 10119/2014

      THERMAX LIMITED                                            ..... Plaintiff
                   Through:               Mr. N.K. Bhardwaj & Mr. Bikash
                                          Ghorai, Advocates (M-9810147174)
                   versus
      THERMAX ENGINEERS PVT LTD                                 ..... Defendant
                   Through: None.
      CORAM:
      JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1.    The Plaintiff - Thermax Limited has filed the present suit seeking
permanent injunction restraining infringement of trade mark and trade name,
passing off, etc. in respect of its trade name 'THERMAX'. The case of the
Plaintiff is that it had coined and adopted the mark 'THERMAX' in 1974
and the same is being used as a trademark, house mark and is also a
distinctive and prominent mark of its corporate name. The changes in the
constitution of the company - Thermax Ltd, from Thermax India Pvt. Ltd
leading up to it becoming a listed company on 9th January, 1995, has been
explained in paragraph 4 of the plaint.
2.    The mark 'THERMAX' is also a registered trademark in India as
detailed in paragraph 5 of the plaint in various classes of goods and services.
The mark is also registered in several foreign countries such as Bahrain,
China, CTM, Egypt, Hong Kong, Indonesia, Israel, Japan, Malaysia, Nepal,
Pakistan, Philippines, Qatar, Saudi Arabia, Singapore, Thailand, Turkey,
UAR, Vietnam, etc. The details of the said registrations have also been
enumerated in paragraph 6 of the plaint.



CS(COMM) 157/2017                                                       Page 1 of 8
 3.    The Plaintiff company has promoted its business through its website
www.thermaxindia.com. It has several international offices across 75
countries and the sales turnover of the Plaintiff is more than Rs.4,000 crores
per annum.
4.    Sometime in May, 2014, the Plaintiff came to know that the
Defendant had started using the corporate name 'Thermax Engineers Pvt.
Ltd'. Further enquiries revealed that the company was incorporated on 30th
October, 2012 with the Registrar of Companies, Delhi (hereinafter „ROC‟).
Its Memorandum and Articles of Association explain its business areas as
being almost identical to that of the Plaintiff, i.e., installation, ducting,
fitting, repairing and maintenance of air conditioners and refrigerators,
technical consultation, engineering services etc. The Memorandum and
Article of Association have been filed on record. According to the Plaintiff,
the use of the word 'THERMAX' as part of the Defendant's corporate name
is violative of its statutory rights under the Trademark Act, 1999 as the mark
'THERMAX' is a well-known mark. The present suit was then filed for
seeking reliefs of permanent injunction, delivery up and rendition of
accounts. Vide order dated 23rd May, 2014, this Court had granted ex-parte
ad-interim injunction in the following terms:
          "...The contention of the plaintiff‟s counsel is that the
          use of the identical name and corporate name which
          forms part of the trade mark THERMAX, which is a
          registered trade of the plaintiff, is amounting to
          infringement of trade mark and passing off. He states
          that it is a well known trade mark. The same is
          protected under Section 29(4) of the Act. Therefore, the
          said trade mark is protected in relation to the
          dissimilar goods. He further states that since the
          plaintiff‟s trade mark has been used in the defendant's



CS(COMM) 157/2017                                                     Page 2 of 8
           corporate name, therefore, it is also the case of
          infringement of trade mark within the meaning of
          Section 29(5) of the Act. As far as delay is concerned,
          he states that it has come to the notice of the plaintiff
          only in the month of May, 2014. Therefore, there is no
          delay on the part of the plaintiff.
          Notice for the date fixed.
          Considering the overall facts and circumstances of the
          case, till the next date of hearing, the defendant is
          restrained from using the plaintiff‟s trade mark
          THERMAX as well as part of its corporate name."

5.    The Defendant, thereafter entered appearance and filed its written
statement. Vide order dated 24th November, 2016, a submission was made
before the Joint Registrar by the Ld. counsel for the Defendant that the
Defendant has discontinued its trade name and has adopted a new name. The
said order reads as under:
          "CS(OS) 1555/2014 and IA No.10119/2014 u/O
          XXXIX R.1&2 CPC moved by plaintiff

          Learned counsel for defendant has submitted that
          defendant has discontinued its trade name and has
          adopted the new name and requisite formalities in this
          regard have been completed.
          Learned counsel for plaintiff has stated that in case
          that be so, an appropriate application u/O XXIII CPC
          shall be moved shortly. Accordingly re-notify the
          matter for settlement or in the alternative for
          admission/denial of documents on 23.02.2017."

6.    Subsequent thereto, the Plaintiff conducted the admission/denial of
documents. However, the Defendant failed to conduct the same. Since 14th
November, 2018, the Defendant has not appeared before the Joint Registrar
on four occasions. Under these circumstances, the case has been listed




CS(COMM) 157/2017                                                     Page 3 of 8
 before this Court.
7.    A perusal of the written statement filed by the Defendant shows that
the primary defence raised therein is that the Defendant has been able to
secure registration by the ROC and hence it is entitled to use the same. The
Defendant has relied upon the provisions of the Companies Act, 1956 to
state that since the ROC is expected to look into any objectionable name, the
grant of registration shows that the ROC has conducted its due diligence
before grant of registration of the corporate name.
8.    Apart from this defence, the other defence raised is that there is no
similarity between 'Thermax Ltd.' and 'Thermax Engineers Pvt. Ltd.'
9.    A perusal of the plaint shows that the Plaintiff is the prior user and
adopter of the mark 'THERMAX' since 1974. The Plaintiff company has
been in existence for more than 40 years and it has been using the impugned
mark not only in India but in several foreign countries. The Defendant's
defence that the registration by the ROC legitimises the use of the word
'THERMAX' as part of its corporate name is no longer res integra. The
same has been considered in several judgments including Montari Overseas
Ltd. v. Montari Industries Ltd., (1996) 16 PTC 142, Kirloskar Diesel
Recon (P) Ltd. v. Kirloskar Proprietary Ltd., AIR 1996 Bom 149, wherein
it has been held that the registration by the ROC is not a defence to an
infringement or a passing off action. The relevant paragraphs of Montari
Overseas Ltd. v. Montari Industries Ltd. (Supra) are extracted below:
          "6. The first ground of attack against the order of the
          learned single Judge is based on Sections 20 & 22 of
          the Companies Act. Learned counsel submitted that the
          Central Government had allowed the incorporation of
          the company as „Montari Industries Limited‟ and if the




CS(COMM) 157/2017                                                    Page 4 of 8
           respondent was aggrieved of the same, it could have

applied for rectification of the name of the appellant company to the Central Government and should have utilised the remedy under the Companies Act.

7. We have considered the submission of learned counsel but we have not been persuaded to accept the same. Section 20 of the Companies Act, 1956 provides that no company will be registered by a name which is similar or identical or too nearly resembles the name by which a company in existence has been previously registered. In case where a company has been incorporated with a name which is identical or too nearly resembles the name of a company which has been previously incorporated, Section 22 makes a provision for getting the name of the former altered. No doubt, Section 22 makes provision for rectification of the name of a company which has been registered with undesirable name but that does not mean that the common law remedy available to an aggrieved party stands superseded. The plaintiff will have two independent rights of action against the defendant who may be using the corporate name of a previously incorporated company, one under Section 22 of the Companies Act and the other for injunction restraining the defendant from using the corporate name of the plaintiff or from using a name bearing a close resemblance which may cause or which is likely to cause confusion in the minds of the customers or general public in view of the similarity of names. Both the remedies, one under Section 22 and the other under the common law operate in different fields. Under section 22 of the Companies Act, the Central Government has no jurisdiction to grant any injunction against the use of an undesirable name by a company whereas in a suit for permanent injunction the Court can pass an order injuncting the defendant from using the name which is being passed off by the defendant as that of the plaintiff. In K.G. Khosla Compressors

Ltd. v. Khosla Extraktions Ltd., AIR 1986 Delhi 181, the plaintiff filed a suit against the defendant for permanent injunction restraining the latter from using, trading or carrying on business under the name and style of Khosla Extraktions Ltd. on the ground that the plaintiff was incoporated as K.G. Khosla Compressors Ltd. prior to the incorporation of the defendant and it cannot be allowed to imitate or copy the trade name of the appellant. Alongwith the suit, the plaintiff had filed an application under Order 39 Rules 1 and 2 for temporary injunction restraining the defendant from using, trading and carrying on business and from entering capital market and making public issue under the name M/s. Khosla Extraktions Ltd. In that application, the defendant had taken the same plea which has been taken in the present case about the competence of the Court to grant relief in view of Sections 20 and 22 of the Companies Act, 1956. The learned single Judge after review of the case law held that the Court would have jurisdiction to grant injunction and Sections 20 and 22 of the Companies Act, 1956 in no way limit the jurisdiction of the Civil Court. In this regard, the Court observed as follows:-- "But, then in the present suit the plaintiff has also based its cause of action on passing off of the name of defendant No. 1 as that of the plaintiff. I would rather say that the jurisdiction of the Central Government under Ss. 20 and 22 of the Act and the jurisdiction of the Civil Court operate in two different fields. Further the Central Govt. has to act within the guidelines laid down under S. 20 of the Act, while there are no such limitations on the exercise of jurisdiction by the Civil Court."

8. The view taken by the learned single Judge in that decision, if we may say so with respect, lays down the correct law. Accordingly, we find no force in the submission of the learned counsel for the appellant which is hereby rejected."

This settled legal position has been reiterated in various judgments. The fact that the corporate name of a company can be injuncted in a trade mark infringement and passing off action is conclusively settled in the judgment of the Supreme Court in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147.

10. The mark 'THERMAX' is extremely well-known. The services which the Defendant offers as per the Memorandum and Articles of Association are also identical to that of the Plaintiff. Further, as recorded in the order dated 24th November, 2010, the Defendant has already confirmed that it will change its name during the pendency of the present suit. Under these circumstances, no ex-parte evidence needs to be led. Under the provisions of the Commercial Courts Act, 2015, as also in view of the recent judgments of this Court in Everstone Capital Advisors Pvt. Ltd. v. Akansha Sharma, [CS (COMM) 1028/2016, Decided on 17th July, 2018], VRS Foods Ltd. v. Prem Chand, [CS (COMM) 365/2016, Decided on 30th August, 2018] and Super Cassettes Industries Pvt. Ltd. v. M/s. I-Vision Digital LLP, [CS (COMM) 905/2018, Decided on November 12, 2018], ex-parte evidence is not needed in all matters if the issues can be decided on the basis of the pleadings and documents. The relevant portion of Super Cassettes Industries Pvt. Ltd. v. M/s. I-Vision Digital LLP (Supra) is as follows:

"5. ... It is now settled, in view of the provisions of The Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts (Amendment) Act, 2018 as also the Delhi High Court (Original Side) Rules, 2018, that it is no longer necessary in every matter, even when the Defendant is not appearing, that the Plaintiff has to lead evidence.

The filing of evidence can be exempted, if from the pleadings and documents relied upon, the suit can be decided. This is the settled position as held in by this Court in Everstone Capital Advisors Pvt. Ltd. v. Akansha Sharma, CS (COMM) 1028/2016, Decided on 17th July, 2018 and VRS Foods Ltd. v. Prem Chand, CS (COMM) 365/2016, Decided on 30th August, 2018."

11. The Plaintiff is thus entitled to a permanent injunction against the Defendant from use of the word/mark THERMAX. The suit is accordingly decreed in terms of paragraph 29 (i), (ii) and (iii) of the prayer in the plaint. None of the other reliefs are pressed.

12. Since the Defendant had agreed to give up the mark at an early stage of the proceedings, costs of Rs.1 lakh are awarded to the Plaintiff. Decree sheet be drawn accordingly. All pending I.A.s are disposed of.

PRATHIBA M. SINGH JUDGE JULY 19, 2019 Rahul